The copyright subject matters in advertising

In order to increase the demand for products and services, to attract new customers, the owners of the business use various marketing tools, including advertising.

In the struggle for the consumer attention and recognizability in the market, caution and prudence often give way to an original advertising concept. As a consequence, after the launch of an advertising campaign the information about the violations committed becomes known. As a rule, such violations are the violations of intellectual rights of third parties, as in the advertising industry, as the practice shows, the use of the results of intellectual activity has become a mass phenomenon.

The common violation in the advertising field are the situations, when the works protected by the norms of the copyright (photographs, slogans, logos, musical works, etc.), which are posted at free access in the Internet are used in the advertising campaign. The persons, who use or intend to use such subject matters, believe mistakenly that in order to use the subject matters from the Internet, it is not necessary to observe any formalities, such as an indication of the author’s name and a payment of remuneration.

Despite the fact that the cases of a free use (without consent of the author or other right holder and without a payment of remuneration) of the work, which is always in the place available for free visits are established by the legislator in Article 1276 of the Civil Code of the Russian Federation (hereinafter referred to as the C.C.R.F.), a free use of the works published in the Internet for the advertising purposes shall not be allowed.

 As the Supreme Court of the Russian Federation stated in Paragraph 13 of the Judicial Practice Review on the Cases Related to the Settlement of Disputes on the Intellectual Rights Defence of September 23, 2015, “the Internet is not a place, which is open to free visits within the terms of Article 1276 of the C.C.R.F.”

One of the reasons for the above violations is that the registration of the works and observance of any formalities are not required for the emergence, exercise and defence of the copyright. With this regard, the person, who is interested in using the copyright subject matter does not have a possibility to address to the registry (by an analogy with the trademarks or the subject matters of the patent right). Taking into account the fact that the independent legal protection may also be extend to a part of the work, the use in the advertising campaigns of, for example, the characters may also be a violation.

On the legislative level, the provisions of Federal Law of March 13, 2006 No. 38-FZ “On Advertising” (hereinafter referred to as the FL “On Advertising”) shall be extended to the relations in the field of the manufacture, placement and dissemination of advertising.

In accordance with Paragraph 1 of Article 3 of the FL “On Advertising,” advertising shall be the information disseminated in any way, in any form and using any means, which is addressed to an indefinite circle of people and aimed at drawing attention to the advertising subject matter, forming or maintaining an interest to it and promoting it in the market. The form of an objective expression of the information in relation to the advertising subject matter can be advertising banners, video or audio clips.

The FL “On Advertising” distinguishes the concepts ‘advertising’ and “an advertising subject matter.” Thus, the advertising subject matter shall be understood as “the product, the means of individualization of a legal entity and (or) a product, a manufacturer or a seller of the product, the results of intellectual activity or an event (including a sporting competition, a concert, a pageant, a festival, risk based games, wagers), which are the aims of drawing attention to by way of advertising” (Paragraph 2 of Article 3 of the FL “On Advertising”). Despite the fact that the results of intellectual activity may be an advertising subject matter, the use in advertising of the results of intellectual activity of third parties without their consent may be recognized as an unfair competition act.

According to Paragraph 11 of Article 5 of the FL “On Advertising,” “at the manufacture, placement and dissemination of advertising, the requirements of the legislation of the Russian Federation shall be observed, including those of the civil legislation... .” The analysis of the said norm allows us extending the action of the Fourth Part of the C.C.R.F. to the relations in the field of the manufacture, placement and dissemination of advertising.

When using the results of intellectual activity in advertising, the key point is to determine the procedure for using the protected subject matters. However, this does not mean that another work not named in the said list can not be protected as the copyright subject matter.

The list of the copyright subject matters is defined in Article 1259 of the C.C.R.F. and it is not exhaustive. However, this does not mean that another work not named in the said list can not be protected as the copyright subject matter.

 According to Paragraph 1 of Article 1259 of the C.C.R.F., “The copyright subject matters shall be the works of science, literature and art, regardless of the merits and the purpose of the work, as well as the way of its expression.”

According to Paragraph 3 of Article 1259 of the C.C.R.F., “The copyright shall be extended to both promulgated and non-promulgated works, which are expressed in any objective form, including in a written, oral form (in the form of a public pronouncement, a public performance and in other similar form), in the form of an image, in the form of a sound or video recording, in a three-dimension spatial form.”

In order to recognize the created subject matter to be a result of intellectual activity, it is necessary for such subject matter to meet the novelty and originality criteria, that is, they must have a creative nature. For the purposes of determining the protectability of the subject matter that is not directly named in Paragraph 1 of Article 1259 of the C.C.R.F., one should be guided by the presumption of a creative nature of the result of intellectual activity. As it follows from Paragraph 28 of Plenum No. 5/29 of March 26, 2009, “the lack of novelty, uniqueness and (or) originality of the result of intellectual activity can not indicate to the fact that such result has been created not by creative labour, and, therefore, it shall not be the copyright subject matter.”

For the purposes of the legitimate use of the copyright subject matter in advertising, it is necessary to identify the person by whose creative labour the subject matter of intellectual property has been created.

According to Article 1257 of the C.C.R.F., “the author of the work of science, literature or art shall be the citizen by whose creative work it has been created.” For the purposes of identifying an author of the work, there is also a presumption of authorship, according to which the author of the work shall be the person who is indicated on an original or a copy of the work, until otherwise is proved.

            As it follows from Article 1257 of the C.C.R.F., the author of the work can be only a citizen – the individual by whose creative labour the work has been created. However, in practice there are often the situations, when the advertiser (the manufacturer or the seller of products or another person who has determined an advertising subject matter and/or a content of advertising, Article 3 of the FL “On Advertising”) addresses a specialized company – an advertising agency, in order to create an advertising concept or to create a ready-made promotional product. As a rule, the relationship between the executing company and the advertiser (the customer) is formalized by an agreement on rendering services on a paid basis, in which the parties agree the requirements for the advertising product, the terms and a procedure for paying remuneration. When concluding an agreement with advertising agencies, a special attention should be paid to the presence in the agreement of a paragraph, according to which the advertising agency guarantees that the result transferred to the customer will not violate the third parties intellectual rights to the results of intellectual activity.

Additionally, in order to reduce a risk of claims on the part of authors or rights holders, it is recommended to conduct the preliminary monitoring of the market of the products and services and to study not only the competitors’ products, but advertising as well. A special attention should be paid to the logos, the texts of the advertisements, the slogans and other individualizing designations that distinguish the products of the competitors.

The civil (Articles 1250, 1251, 1252, 1253, 1290, 1301 of the C.C.R.F.), administrative (Articles 7.12, 14.3 of the Code of the Russian Federation on Administrative Offences) and criminal responsibility (Article 146 of the Criminal Code of the Russian Federation) is stipulated for the violation of the copyright.

In cases on the violation of the copyright, along with the ways of defence established in Articles 1250, 1252 and 1253 of the C.C.R.F., an author or a right holder has the right to claim from the violator at his discretion a payment of compensation instead of reimbursement for the losses: either in the amount of 10,000 roubles to 5,000,000 roubles, or in double the value of the right to use the work. The amount of compensation shall be determined by the court based on the nature of the violation.