Court orders over 32 million rubles in compensation for copyright infringement

On April 10, 2024, the Cheryomushkinsky District Court of Moscow considered case number 02-0031/2024 (02-3140/2023),  filed by Kirill Alexandrovich Knyazev seeking compensation from TECHCUBE LLC and SL GROUP LLC for the unlawful use of his copyrighted design for the Intel Realsense D415 camera module case.

The case returned to court following the annulment of previous judicial acts by the cassation court. Detailed grounds for the case review can be found in our previous material.

Interests of the plaintiff Knyazev K.A. were represented by Zuykov and partners.

Evidence submitted by Knyazev indicated that in May 2018, he began creating the design for the camera module case (Intel Realsense D415), which was completed no later than September 26, 2018, as confirmed by the case materials. The authorship and ownership of the exclusive right to the design of the housing for the video module were established by the decision of the Intellectual Rights Court dated September 29, 2020 (case No. SIP-299/2020), left unchanged by the decision of the Presidium of the Intellectual Rights Court dated January 28, 2021, according to which Knyazev K.A. recognized as the author and patent holder of the Russian Federation patent for the industrial design “Housing for a video module” under application No. 2019500911, which protects the solution to the appearance of the product that is identical to the controversial design.

According to the evidence presented in the case file, TEKHKUB LLC supplied KHESON RUS LLC with 30,201 SLM-415-ATM USB cameras using the controversial housing design, and on the Internet site safe-logic.ru, whose administrator is LLC "ES EL GROUP" LLC, advertising, offering for sale and sale of products were carried out using the work owned by Knyazev K.A.

Since the defendants carried out actions to use the design without the consent of the copyright holder, and they avoided contractual use, Knyazev K.A. was forced to go to court to protect the violated right with a demand for joint and several recovery from the defendants of compensation in the amount of twice the cost of the counterfeit goods.

The defendants' objections boiled down to disagreement with the presence of Knyazev K.A. exclusive right to a work of design, since, in their opinion, the design of the housing for the Intel Realsense D415 camera video module, in principle, cannot be the subject of copyright. At the same time, TEKHKUB LLC believed that the plaintiff did not provide evidence of the illegal use of the controversial design in products, and the shipping documentation was obtained in violation of the law, and therefore cannot be recognized as admissible evidence. SL GROUP expressed the opinion that it was not subject to liability, since it did not know about the ownership of Knyazev K.A. exclusive right to the design and believed that the use was lawful, on the basis that Knyazev K.A. Previously, he was an employee of TEKHKUB LLC. In addition, the defendants expressed their disagreement with the amount of the claims presented, believing that the amount of the claimed compensation was calculated in violation of Article 1301 of the Civil Code of the Russian Federation, and also pointing out that the plaintiff’s actions cannot be satisfied, since filing this claim is an abuse of law.

Rejecting the defendants' arguments about the unprotectability of the controversial design and the plaintiff's choice of an inappropriate method of protecting the violated right, the court pointed out that the legislator has not established a ban on the protection of works of design, which also include decisions on the appearance of the product, at the same time as copyright (paragraph seven of paragraph 1 of Article 1259 of the Civil Code RF) and patent law, registered as an industrial design (clause 1 of Article 1352 of the Civil Code of the Russian Federation). In this case, copyright is subject to protection regardless of whether there is a registered industrial design. Moreover, based on the explanations set out in paragraph 63 of Resolution No. 10, if there are several results of intellectual activity or means of individualization belonging to one person that are interconnected (a work and a trademark in which this work is used, a trademark and an appellation of origin, trademark and industrial design), compensation for violation of rights to each object is determined independently.

At the same time, concluding that the fact of illegal use of the plaintiff’s design by the defendants was proven, the court took into account the evidence presented by the plaintiff, as well as the conclusion of a judicial patent and technical examination, according to the conclusions of which, according to the general visual impression of an informed consumer, the appearance of the video module housing in the images of patent No. 123714 and images of the external appearance of the SLM-415 ATM video module housing are identical (identical, to the point of confusion); it is also noted that the project presented by the plaintiff Knyazev K.A. contains signs of creative work.

In this regard, the court found that the evidence presented in the case files, taken together and in conjunction with each other, supports the plaintiff's argument that the defendants have illegally used the exclusive rights to design the housing for the Intel RealSense D415 video camera module, which belongs to Knyazev K.A.

Determining the liability of each of the defendants for the violation, the court came to the conclusion that it was necessary to hold jointly and severally liable, since SL GROUP LLC and TEKHKUB LLC are affiliated entities that are part of a group of companies controlled by one beneficiary, as of the date of the actions for the illegal use of the housing design for the video module of the Intel Realsense D415 camera, and on the date of the plaintiff’s filing of this statement of claim (02/18/2021), in connection with which illegal actions were committed by the defendants jointly in order to generate income from the sale of built-in cameras SLM-415- ATM, which used the Intel Realsense D415 camera video module housing.

As a result, the court came to the conclusion that the demands of Knyazev K.A. were partially satisfied, having recovered jointly and severally from TEKHKUB LLC and SL GROUP LLC in favor of Knyazev K.A. compensation in the amount of 32 million 461 242 rubles 84 kopecks, as well as the cost of paying the state duty in the amount of 2,340 rubles.