Evidence in disputes about the use of product photos on the Internet

Advertising of goods on the Internet is often accompanied by images (photos) of the goods. According to paragraph 1 of Art. 1259 of the Civil Code of the Russian Federation [1], photographs are subject to copyright, and as a general rule, third parties cannot use them without the consent of the copyright holder.

So, the company - the owner of trademarks in the process of monitoring on the Internet revealed a site where goods marked with its trademarks were offered for sale. In the opinion of the copyright holder, the photographs depicting the goods posted on the website were copied from its websites.

The copyright holder made a test purchase through the site, received a sales receipt and a cash receipt in confirmation of the purchase, from which he established the name, TIN and email address of the seller, the domain of the email address of which matches the name of the seller's website.

Considering that the seller was illegally using the company's intellectual property, the latter filed a lawsuit demanding compensation from the seller for the illegal use of photographs and an obligation to stop using them.

The court noted [2] that in the case of copyright protection, the plaintiff must prove the right to claim - that he has the exclusive right to the work. At the same time, he can be the author (original copyright holder) or the copyright holder who received the exclusive right on the basis of an agreement.

The company pointed out that the disputed photographs are official works, because were created by its employees as part of their work activities in the performance of official duties. In confirmation of the status of the copyright holder, it submitted agreements on service works and protocols on the transfer of exclusive rights.

However, the court decided that these documents did not confirm the fact that the plaintiff had exclusive rights to the photographs. In particular, the agreement establishes that employees create works within the framework of their job duties, however, no documents were presented that testify to the job duties of these persons (employment contract, job description, etc.). In addition, there are no documents confirming the existence of orders (service assignments) for the creation of specifically controversial works, just as there are no acts of acceptance and transmission of the results of the execution of orders.

Based on the foregoing, the court came to the conclusion that the company did not prove the fact of possessing exclusive rights to the disputed photographs.

To confirm the fact of violation of the plaintiff's rights, the company presented a sales receipt and a cash receipt for a control purchase of goods and a printout from the seller's website.

The law does not establish a list of admissible evidence on the basis of which the fact of a violation is established, and the court has the right to accept any means of proof provided for by the procedural legislation, including printouts of materials posted on the Internet (screenshots) [3].

However, the court noted that the printout presented by the plaintiff only indicates a list of legal entities and individual entrepreneurs who are partners of the company and sell goods. In addition, other legal entities and individual entrepreneurs are listed as sellers of goods on the defendant's website. At the same time, the plaintiff has not proven that the defendant is the administrator and (or) owner of the site on which the disputed photos were used, it has not been proven that it was the defendant who posted them on the site, and it has not been proven that the photos were copied from the plaintiff's network addresses.

Upon the purchase, the court noted that the seller does not manufacture the goods, but only sells the original products already put into circulation on the open market, and the image of the goods itself, on which a designation similar to the trademark of the copyright holder is placed, cannot violate its exclusive rights, since it is the implementation of the seller's obligation to ensure the consumer's right to information about the product.

Sources:

1."Civil Code of the Russian Federation (Part Four)" dated 12/18/2006 N 230-FZ (as amended on 12/05/2022) // SPS "ConsultantPlus"

2.Ruling of the Court for Intellectual Property Rights dated December 22, 2022 N C01-2153/2022 in case N A40-237306/2021 // ConsultantPlus SPS

3.P.55 of the Resolution of the Plenum of the Supreme Court of the Russian Federation No. 10 dated April 23, 2019 "On the application of part four of the Civil Code of the Russian Federation" // ATP "ConsultantPlus"