Head of Department
The participation of a detective in the cases on the defense of the rights to the subject matters of intellectual property
It seems that when we hear the word “detective,” we immediately imagine Hercule Poirot – a character from the novels of Agatha Christie or a mysterious man hiding himself under a raincoat and a wide-brimmed hat, hiding his eyes behind the dark glasses, tracking down an oligarch’s wife, who has started an affair with another man.
At the same time, it is quite difficult to imagine at first glance what role a detective can play in the judicial proceedings, and particularly in the cases regarding the defense of the rights to the subject matters of intellectual property.
In addition, the question arises whether the evidences and the information collected by the detective are recognized by the courts as the admissible evidences? And indeed, what is a procedural status of the detective in the judicial proceedings?
First of all, it is worth noting that the detective can play a fairly important role in the formation of an evidentiary basis.
For example, using the help of the detective, it is possible to carry out a test purchase of the product that is allegedly counterfeit, to collect other evidences confirming the fact of an illegal use of the subject matters of intellectual property or the means of individualization equated to them, to carry out an inspection of the material evidences in the presence of a notary, to collect the information about the persons and organizations directly or indirectly exercising control over an organization-violator, to identity and to detect the contacts of an administrator of the domain name and many other things.
The practicing lawyers will say that the above list of the tasks that can be solved with the help of the detective, is quite possible to be implemented independently, without resorting to his help.
Of course, one is capable of doing a lot himself and one can carry out the test purchase and a search in the Internet for the information about the persons, who are the beneficiaries of the illegal business, as well as one can send an advocate’s letter of enquiry to the domain registrar in order to identify an owner of the domain name.
But there are good reasons why the humanity came to the division of labour at one of the steps of its evolutionary development. Some people became good hunters, another people – farmers, still others – merchants, and the different ones became, for example, builders.
After all, when a printer or a computer breaks down in the office, we call a specialist. Many people will say most certainly that the collection of evidences is our job, our clients pay us for it, it is related directly to running the judicial case.
Meanwhile, I would dare not to agree with such point of view, because I believe that the efficient office equipment is also an important aspect of a successful case. After all, when the computer is “running slow” or the printer refuses printing, one has to think about how to fix the problem instead of thinking about a strategy of the case.
In this regard, I believe that it is the specially trained people, who have the necessary knowledge, techniques, equipment for collecting the information and forming the evidentiary basis, who should be engaged in collecting the evidences for judicial disputes.
Of course, this process should take place under the control of the lawyer, who is directly running the case, and the case will be prepared much better for filing to the court, if the lawyer does not deal with the trips to a notary or to trading establishments in order to identify the counterfeit products, but devotes his time to writing a statement of claim or to an analysis of the judicial practice.
Moreover, it is quite difficult to prove in some categories of the disputes that in the course of carrying out the test purchase the right holder has purchased exactly the product that is represented in the judicial case materials as a material evidence, since the name or the article of the product that has been purchased from the defendant may be not indicated on a cashier’s check.
In such a situation, the evidence of the purchase of the counterfeit products along with the cashier’s check will be a video recording of the purchase process. But, you know, it will be quite strange, when you come to a store and start shooting openly the process of purchasing a product, the seller will most likely have doubts in this regard and he will refuse to sell you the product.
It is obvious that hidden shooting requires certain skills in order to capture not a ceiling or your shoes, but exactly the counterfeit product and the process of its transfer from the seller to the buyer, this is the case, when you will need the detective.
You will probably say that making hidden shooting without obtaining a permission of the person in respect of whom shooting is being made or the owner of the premises, in which shooting is made, is inadmissible.
However, I suggest that we should refer to the Arbitration Procedural Code of the Russian Federation, which Part 2 of Article 64 and Part 2 of Article 89 allow the audio and video recordings as an evidence in the case.
However,the Arbitration Procedural Code of the Russian Federation does not contain a requirement for the consent of the person in respect of whom shooting is being made. Making the video recording (including by a hidden camera) in the places, which are apparently and explicitly open for public visits and which are not excluded due to the law or the legal custom from being used for video recording is a self-defense element of the civil law, what corresponds to Article 14 of the Civil Code of the Russian Federation and Part 2 of Article 45 of the Constitution of the Russian Federation, according to which everyone shall be entitled to defend their rights and freedoms by all methods that are not prohibited by the law (the Resolution of the Intellectual Property Court of 03.06.2015 in case No. A56-27546/2014).
Thus, involving the detective to collecting the evidences of the distribution of the counterfeit products, one should not worry that in the future his hidden shooting of carrying out the test purchase will be rejected by the court as made in a violation of the law.
However, according to the explanations set out in Paragraph 2 of the Review of the Practice of the Consideration by the Arbitration Courts of the Cases Connected with the Application of the Legislation on Intellectual Property, approved by Information Letter of the Presidium of the Supreme Arbitration Court of the Russian Federation of 13.12.2007 No. 122, taking into account the provisions of Article 494 of the Civil Code of the Russian Federation, offering for sale a copy of the phonogram made by the person engaged in the business activity for selling the products at retail shall be the use of the exclusive rights in the form of a distribution. The evidences of the illegal distribution of the counterfeit products by the way of retail sale may be a cashier’s check, a private detective’s report, witness statements, a counterfeit disc with a record and which is different from a license disc in the appearance of the cover and in the availability of the stickers on the disc, in that it lacks the means of individualization and the information on the right holder and the manufacturer.
Although the said Information Letter of the Presidium of the Supreme Arbitration Court of the Russian Federation mentions also the CDs that already sunk into oblivion ten years ago, however, the principles relating to the evidences of the illegal distribution of the counterfeit products by the way of retail sale formed by the supreme judicial instance back in 2007 have been applied by the courts up to the present time.
Among other things, we see that the private detective’s report is among the evidences. The detective’s report is a document that is prepared by the detective according to the results of the investigation made, which displays the tasks set by the customer, the circumstances established by the detective, the evidences collected in the course of carrying out the investigation, as well as the conclusions reached by the detective.
In addition, it should be noted that the private detective’s report provided that the detective has a license and a certificate confirming a status and the powers of this person, shall be recognized by the courts as the admissible evidences by virtue of Articles 64, 65, 67 and 68 of the Arbitration Procedural Code of the Russian Federation and Paragraph 6 of Information Letter No. 122.
Meanwhile, in the case of any doubts regarding the authenticity of the content of these documents, the court is entitled to satisfy the petition to call to the court the private detective as a witness and to warn him about the criminal liability for making false statements intentionally by virtue of Article 56 of the Arbitration Procedural Code of the Russian Federation.
Thus, by virtue of Part 1 of Article 56 of the Arbitration Procedural Code of the Russian Federation, The witness shall be a person having the information on the actual circumstances of importance for the consideration of the case.
It is obvious that the detective can be a person having the information on the actual circumstances of importance for the consideration of the case, that is, he may be a witness in the case.
At the same time, in accordance with Part 5 of Article 56 of the Arbitration Procedural Code of the Russian Federation, The following shall not be subject to be interrogated as the witnesses: the judges and other persons involved in the administration of justice – about the circumstances that have become known to them in connection with the participation in the consideration of the case, the representatives in the civil and other case – about the circumstances that have become known to them in connection with the performance of the obligations of the representatives, as well as the persons who, because of mental deficiency are not capable to understand correctly the facts and to give the statements about them.
In this connection, if the representative collects the evidences independently, he will not be able to speak in the court as a witness, that is, the party in the case will be deprived of an opportunity to represent to the court one of the evidences in support of its legal position.
Summing up my article, I believe that it is worth considering the issue of the involvement of the detective to collect the evidences in the case due to the following factors:
- the detective has special skills, techniques, equipment to collect the evidences in the case;
- the release of the lawyer running the case from uncharacteristic tasks;
- the use of the detective’s report and his statements given to the court as an evidence.