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Author
Roman Larshin

Senior lawyer

28 September 2017

Protection of rights to a computer program

This article will be devoted to the topic of protection of rights to a computer program. In this article we will consider the main problems and acute moments that arise when courts consider the cases involving the protection of exclusive rights to a computer program, with references to court cases.

 

A bit of theory.

As follows from paragraph 1 of Article 1229 of the Civil Code of the Russian Federation (hereinafter referred to as the “RF CC”), a citizen or a legal entity possessing an exclusive right to the result of intellectual activity or to a means of individualization (the rightholder) is entitled to use such a result or such a means at his/her/its discretion using any method that is not in conflict with the law.

The rightholder may, at his/her/its discretion, authorize other persons or prohibit them to use the result of intellectual activity. The absence of a prohibition is not considered to be a consent (permit).

Other persons cannot use the respective result of intellectual activity or means of individualization without the consent of the rightholder, except for the cases provided for by the said Code. The use of the result of intellectual activity or means of individualization (including their use applying the methods provided for by the Civil Code of the Russian Federation), if such use is carried out without the consent of the rightholder, is illegal and involves liability established by the Civil Code of the Russian Federation, other laws, except the cases when the use of the result of intellectual activity or means of individualization by any persons other than the rightholder, without his/her/its consent, is allowed by the Civil Code of the Russian Federation.

It is mentioned in paragraph 1 of Article 1259 of the RF CC that the copyright items also include computer programs, which are protected as literary works. The copyright to all kinds of computer programs (including operating systems and software packages) that can be expressed in any language and in any form, including the source text and object code, are protected in the same way as the copyrights to literary works (Article 1261 of the RF CC).

In accordance with paragraph 1 of Article 1270 of the RF CC, the author of the work or another rightholder has the exclusive right to use the work in accordance with Article 1229 of the RF CC in any form and using any method which is not in conflict with the laws (the exclusive right to the work), including using the methods indicated in paragraph 2 of Article 1270 of the RF CC. The rightholder may dispose of the exclusive right to the work.

On the basis of subparagraph 9 of paragraph 2 of the said article, the legislator includes the following in the methods of use, inter alia: translation or another processing of the work. In this case, the processing of a work means creation of a derivative work (processing, creation of a film version, acoustic backing, staging, and the like). The processing (modification) of a computer program or database is understood as any of their changes, including the translation of such a program or such a database from one language into another language, with the exception of the adaptation, that is, making changes that are implemented solely for the purposes of the functioning of the computer program or database using specific technical tools of the user or controlled by specific programs of the user. At the same time, the recording of a work on an electronic medium, including recording into the computer memory, is also considered to be reproduction (subparagraph 1 of paragraph 2 of the said article).

Article 1301 of the RF CC stipulates that in cases of violation of the exclusive right to a work, the author or another rightholder, along with the use of other applicable methods of protection and liability measures established by the RF CC (Articles 1250, 1252 and 1253), may, in accordance with paragraph 3 of Article 1252 of the Code demand at its/her/his choice payment of compensation from the offender instead of recovery of losses: in the amount equaling from ten thousand rubles to five million rubles, which is determined at the discretion of the court; in the twofold amount of the value of the copies of the work or in the twofold amount of the value of the right to use determined on the basis of the price, which under comparable circumstances is usually charged for the lawful use of the work.

As follows from the clarifications contained in paragraph 14 of Resolution No. 15 of the Plenum of the Supreme Court of the Russian Federation of 19.06.2006 "On the issues that arose in courts when considering the civil cases involving the application of the copyright and related rights law", when clarifying which party is required to prove the circumstances relevant to the case of protection of copyright or related rights, the court must take into account that the claimant must confirm the fact that it/he/she owns copyright and (or) related rights or the right to their protection, as well as the fact of the use of these rights by the defendant.

Consequently, in respect of the lawsuits regarding the protection of the exclusive right to computer programs, the circumstance in proof includes the presence of the claimant’s exclusive rights to the relevant intellectual property item, the fact of the use of these rights by the defendant and the legality of the use of such an item by the defendant. The first is included in the claimant’s burden of proving, the latter is included in that of the defendant.

The main purpose of my article is the desire to draw the reader’s attention to the most crucial moments that are important to understand and take into account when applying to the court for the protection of the exclusive right to a computer program. Moreover, these points will be examined through the perspective of the judicial practice, using the examples of particular court cases.

 

The issue of proving the right.

It often happens that a person who considers itself/himself/herself to be the rightholder of exclusive rights to a computer program, as a rule, a legal entity, applies to court for the protection of the violated right, and the first question the court asks is: “Who are you and on what authority has you applied to the court?”

The claimant, being at a loss, begins to explain that he is the rightholder, since his staff - the most qualified programmers in the world – have written such a wonderful and top-requested program, and a bad defendant downloaded his program illegally from the forbidden website, bypassing all locks and paying nothing, uses it in its economic activities and receives multimillion profits.

And the judge asks to provide documents confirming the transfer of the exclusive right from the authors (programmers) to the claimant, which is due to the following.

By virtue of Part 3 of Article 1228 of the RF CC, "the exclusive right to the result of intellectual activity created by creative labor, isinitially acquired by its author. This right may be transferred by the author to another person under the contract, and may also pass to other persons on other grounds established by the laws."

As explained in paragraph 13 of the Review of the Judicial Practice in respect of the Cases Involving the Resolution of Disputes on the Protection of Intellectual Property, approved by the Presidium of the Supreme Court of the Russian Federation on September 23, 2015, when considering the demands for the copyright protection, it is necessary to establish who is the author of the result of intellectual activity and whether this result is considered as such (that is, whether it was created by the creative labor of the author).

At the same time, when determining the pertaining of exclusive rights to the work, the court should establish the pertaining of the copyright to the items that are part of a complex work, to the individual whose creative labor created these items, and establish the legitimacy of the alienation of the exclusive rights to it with the help of the forms prescribed by the applicable civil law: the exclusive right alienation contract (Article 1285 of the RF CC), the custom work contract (Article 1288 of the RF CC), the license contract (Article 1235 of the RF CC), the works made for hire (Article 1295 of the RF CC), etc.

At the same time it should be noted that the essential terms are represented by the subject matter of the contract, that is, the computer program (indicating the number and date of issue of the certificate, if it was registered, or indicating a detailed description of the program (purpose, functions, programming language, etc.) if it was not registered), and the methods of its application.

Besides, in accordance with paragraph 3 of Article 1234 of the RF CC "Under the exclusive right alienation contract, the acquirer undertakes to pay to the rightholder the remuneration provided for by the contract, unless otherwise stipulated by the contract.

In the absence of a condition on the amount of the remuneration or the procedure for its determining in the non-gratuitous exclusive right alienation contract, the contract is considered not concluded. At the same time, the price determination rules provided for in paragraph 3 of Article 424 of this Code do not apply.

Payment of remuneration under the exclusive right alienation contract can be envisaged in the form of fixed one-time or periodic payments, interest deductions from income (revenue) or in another form.

It should also be noted that paragraph 3.1. of Article 1234 of the RF CC states that "Gratuitous alienation of the exclusive right in relations between commercial organizations is not allowed unless otherwise provided for by this Code".

It follows from the above rules of law that the claimant must present the evidence of payment of the remuneration to the previous rightholder which is provided for by the contract (payment orders) as proof of creation of the exclusive right in his respect to the computer program in the materials of the case, in addition to the alienation contract.

Otherwise, if the contract is considered not concluded, this does not entail any legal consequences, including does not give rise to the right to the computer program for the new rightholder.

This position is confirmed by the position stated in the ruling of the Intellectual Property Rights Court of 11.12.2014 under case No. A40-184777/2013.

Thus, it is important to take a responsible approach to the issue of proving the right to a computer program.

 

The issue of proving the fact of use.

Let us assume that everything is all right with the documents of title, because the courts have repeatedly assessed them in other processes, these documents have stood fire from opponents, and the court has appointed an expert examination to verify the application on fraud, and in all instances you have been recognized as the rightholder of the computer program. In fact, you have a little left to do - to prove the fact of the use by the defendant. At first glance it seems that everything has been settled. But is that so? Let's look at it.

As I pointed out above, paragraph 14 of Resolution No. 15 says that the claimant, in addition to confirming the fact of the copyright and/or related rights or the right to their protection pertaining to it, must also confirm the use of these rights by the defendant.

Thus, the defendant's duty to prove that he complies with the requirements of the laws on the protection of copyright and (or) related rights arises in case only if the claimant proves that it was that very defendant that used the item of intellectual property.

 

Proving the fact of the right violation by way of comparing the two computer programs by means of conducting a computer forensic expert examination

It may happen that one day you will learn that your computer program is being distributed by another legal entity under a different name. You go to court, and opponents object in every way in the court and say that they are not violators, they have created the program on their own and has nothing to do with your program.

The judge is unlikely to be an expert in the field of computer technologies and the protection of computer programs, his deepest knowledge in this field ends with a call to the information support department with a cry: "The computer does not respond!!!". What should you do in this situation?

In this case, in order to establish the fact of violation in the defendant’s actions, it is necessary to resolve the question of the correlation of the opposing computer programs in terms of the field of application, principle of operation, as well as presence of borrowings in their source codes, in connection with which, according to this category of disputes, the courts appoint a computer forensic expert examination.

As indicated above, the violation of the exclusive rights of the rightholder (illegal use), by virtue of subparagraph 9 of paragraph 2 of Article 1270 of the RF CC includes, inter alia: translation or another processing of the work. In this case, the processing of a work means creation of a derivative work (processing, creation of a film version, acoustic backing, staging, and the like). The processing (modification) of a computer program or database is understood as any of their changes, including the translation of such a program or such a database from one language into another language, with the exception of the adaptation, that is, making changes that are implemented solely for the purposes of the functioning of the computer program or database using specific technical tools of the user or controlled by specific programs of the user. At the same time, the recording of a work on an electronic medium, including recording into the computer memory, is also considered to be reproduction (subparagraph 1 of paragraph 2 of the said article).

Consequently, if during the research the expert comes to a conclusion that the computer program of the defendant is a processing of the computer program of the claimant, the court will have to recognize that you are right.

This legal position is shown in the judicial acts of the Intellectual Property Rights Court, including in the order of 21.11.2016 under case A56-21040/2015.

Next, I propose to examine a number of mistakes made by the claimants in collecting evidence of the illegal use of computer programs by the defendants, which resulted in refusal to satisfy the claims.

The claimant did not prove to the court that the system blocks, where the disputed computer program had been found with the signs of its illegal use bypassing the defense system belonged to the defendant.

Article 1270 of the RF CC does not contain the provisions that the use of a computer program means its practical application, including by a person who is not the rightholder of the personal computer, in the memory of which the program was recorded.

In addition, according to paragraph 3 of Article 1270 of the RF CC, the practical application of the provisions constituting the content of a work, including the provisions representing a technical, economic, organizational or another decision, is not the use of the work in relation to the rules of this Article, except for the use provided for in subparagraph 10 of paragraph 2 of this article (the implementation of an architectural project).

In such a manner, the practical application of computer programs by a person who did not record these programs in computer memory and is not the owner of a computer (personal computer) does not fall within the concept of using the work, which is set forth in Article 1270 of the RF CC.

At the same time, finding of files in the memory of personal computers (created with the help of computer programs), in which the name of the defendant is mentioned, cannot indicate that the latter used the computer programs in its business activities, without related proper evidence (computer hardware hire or lease contract, etc.).

This legal position is set out in the judgments of the Intellectual Property Rights Court of 01.07.2015 under case No. A53-37035/2012 and of 19.08.2015 under case No. A60-36433/2014.

 

Be careful when collecting evidence through an application to the police.

 

The epopee on most cases on the protection of rights to a computer program, as a rule, begins with the rightholder's turning to the law enforcement agencies with a statement.

Police officers, on the basis of the rightholder’s statement, conduct special investigation operations in the premises belonging to the alleged infringer, during which they seize the system blocks, with software products recorded on their hard disks that have the signs of counterfeiting. The police make out procedural documents, such as the inspection protocol, protocols for the seizure of documents, items, decision on the appointment of an expert in the performance of the computer forensic expert examination on the materials of the verification, and others.

At this stage, it is important that these documents are drafted as thoroughly, clearly and correctly as possible, since they materially influence the fact whether the court acknowledges the violation.

Thus, in the course consideration of case No. A76-26067/2014, the judgment of the Eighteenth Arbitration Appeal Court of August 4, 2015, which was left unchanged by the judgment of the Intellectual Property Rights Court of October 30, 2015, canceled the ruling of the Arbitration Court of the Chelyabinsk Region of May 25, 2015, the claims of the Closed Joint-Stock Company "ASCON" were dismissed, because the court of the appeal instance, during the consideration of this case, found defects in the procedural documents drawn up by police officers, which were expressed in the inaccuracies and inconsistencies in respect of the content of the procedural documents with each other, while the on-site inspection report presented in the case files was 50% non-readable.

In addition, the court found noteworthy the valid arguments of the defendant's appeal to the effect that the examination of the scene of the incident where the system blocks of the computers described in study No. 29/14 of 18-20.03.2014 were seized, on which the court of the first instance is based, was held with the illegal participation of the expert A.A. Polyanko, who is currently the representative of the claimant, i.e. who is a person interested in the outcome of the case.

Thus, since negative was not proved by the claimant, the totality of the above circumstances were recognized by the courts of the appeal and cassation instances, indicating that the court of the first instance had no legal grounds to satisfy the claimant’s claims to recover compensation from the defendant for violating the exclusive right to the software computer product in view of the lack of evidence of such a violation.

Besides, the candidacy of an expert is very important: he will be appointed by the police to investigate the system blocks seized from the alleged infringer containing counterfeit copies of the program.

During the consideration of case No. A56-28786/2014, the court of the first instance decided to dismiss the claims because of the impossibility, based on the evidence provided by the claimant, to reliably determine the fact of the assumption of the violations the defendant is accused of. The courts of the appeal and cassation instances upheld the findings of the court of the first instance.

Refusing to satisfy the claim, the court of the first instance recognized opinion No. 60LS-2013 of the expert M.L. Ivanov of 28.11.2013 as inadmissible evidence under the case, in view of holding the expert examination in a manner different from that stipulated by Article 82 of the Arbitration Procedure Code of the Russian Federation, as well as due to the fact the it was not proved that the expert M.L. Ivanov had respective diplomas, certificates and licenses confirming his competence and the right to participate in conducting such examinations.  

 

Having considered the issues outlined in this article, we can summarize that you can and should apply for the protection of the violated right to a computer program, but it is important to remember the following before submitting a statement of claim to a court.

In accordance with Part 1 of Article 65 of the Arbitration Procedure Code of the Russian Federation, each person participating in the case must prove the circumstances to which he/she/it refers as the basis for his/her/its demands and objections.

Under the rule of Part 1 of Article 66 of the Arbitration Procedure Code of the Russian Federation, evidence is submitted by the persons participating in the case.

The persons participating in the case bear the risk of ensuing of the consequences resulted from implementation of procedural actions by them or failure to implement them (Part 2 of Article 9 of the Arbitration Procedure Code of the Russian Federation).

Thus, the person who decided to apply for the judicial protection must very carefully approach the process of gathering evidence and only then file a statement of claim.

I will complete my article with the folk wisdom "You must measure seven times before you start cutting."

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