Zuykov and partners succeeded in reviewing the case on the recovery of compensation of 696 million rubles for copyright infringement

On January 26, 2023, the Second Cassation Court of General Jurisdiction considered the cassation appeal of K.A. Knyazev filed against the decision of the Cheryomushkinsky District Court of Moscow dated September 22, 2021 and the appeal ruling of the Moscow City Court dated August 30, 2022 in case No. 02-3437 / 2021 on to the claim of Knyazev K.A. on the recovery from VIDEOSOFT LLC of compensation in the amount of 691,104,671.38 rubles, as well as on the recovery of compensation from LLC ES EL GROUP in the amount of 5,000,000 rubles for the illegal use of the copyright object - the design of the housing for the video module of the Intel Realsense D415 camera.

Earlier, the decision of the Cheryomushkinsky District Court of Moscow, left unchanged by the appeal ruling of the Moscow City Court in the same case, in satisfying the requirements of Knyazev K.A. was denied in full. Refusing to satisfy the claim, the court of first instance considered that the case design is not a work of science, literature, art, and therefore cannot be considered an independent protectable object of intellectual property. Judicial board for civil cases of the Moscow City Court found that Knyazev K.A. is the patent holder of the industrial design "Case for the video module " according to the patent of the Russian Federation No. 123714, while in the framework of this dispute, the plaintiff Knyazev K.A. declares the protection of exclusive copyright. The above, in the opinion of the court of appeal, indicates that the present claim is essentially aimed at deliberately artificial confusion of various legal categories in the field of copyright and patent legal relations, which are not identical.

The interests of the plaintiff Knyazev K.A. represented in the court of cassation by Zuykov and partners.

According to the cassation complaint, the plaintiff considered the decision and the appellate ruling in the case unlawful and subject to cancellation on the following grounds:

• Misinterpretation of the provisions of Chapter 70 of the Civil Code of the Russian Federation (without taking into account the explanations contained in paragraphs 63, 74, 80 of Decree No. 10) on the possibility of simultaneous protection of copyright and industrial design of the copyright holder.

According to paragraph 1 of Article 1259 of the Civil Code of the Russian Federation, design works are copyrighted, regardless of the merits and purpose of the work, as well as the method of expression. According to paragraph 1 of Article 1352 of the Civil Code of the Russian Federation, the solution of the appearance of an industrial or handicraft product is protected as an industrial design. Design works, which also include decisions on the appearance of a product, have a dual legal nature and can be simultaneously protected by copyright (paragraph 7, clause 1, article 1259 of the Civil Code of the Russian Federation) and patent law, being registered as an industrial design (clause 1, article 1352 of the Civil Code of the Russian Federation). At the same time, copyright in a work is subject to protection, regardless of whether or not there is a registered industrial design. The choice of protection method is the prerogative of the copyright holder, and compensation for violation of rights to each object is determined independently. Thus, the conclusion of the courts that the disputed case design meets only the signs of industrial design is erroneous, since this fact does not exclude that it is a work of artistic art (design) protected by copyright.

• Misinterpretation of articles 1228, 1257 and 1259 of the Civil Code of the Russian Federation on the recognition of design as an object of copyright

According to the doctrine of copyright, it is not the content that is protected by copyright, but the form in which that content is expressed. This doctrine follows from the provision of paragraph 3 of Art. 1259 of the Civil Code of the Russian Federation, which states that copyright applies to both published and unpublished works expressed in any objective form, including written, oral, in the form of an image, in the form of a sound or video recording, in a volume-spatial form.

According to the explanations given in paragraph 80 of Decree No. 10, the list of copyright objects contained in paragraph 1 of Article 1259 of the Civil Code of the Russian Federation is not exhaustive. When resolving the issue of attributing a specific result of intellectual activity to objects of copyright, courts should take into account that, within the meaning of Articles 1228, 1257 and 1259 of the Civil Code of the Russian Federation, such is only the result created by creative labor.

Thus, the current legislation establishes a presumption of the presence of creativity when creating an object of copyright. The plaintiff's representatives proved that the design of the housing for the video module of the Intel Realsense D415 camera was created by the creative work of K. Knyazev, expressed in an objective form in the form of images. This argument was not refuted by the defendants during the consideration of the case in the courts of first and appellate instances, in connection with which the courts came to the erroneous conclusion that the case design cannot be an object of copyright.

• Based on the foregoing, the failure by the courts to apply the law to be applied

As follows from the evidence presented in the case file, the defendants, in the absence of the consent of the copyright holder, used the case design belonging to the plaintiff in several ways, provided for in Article 1270 of the Civil Code of the Russian Federation:

• processing of the work;
• distribution of the work by sale or other alienation of its copies;
• bringing to the public attention by publishing images of a controversial design on the Internet.

In view of the foregoing, the courts of first and appeal instances had to apply the provisions of the Code concerning the establishment of the fact of using the exclusive right to a work without the permission of the copyright holder (Articles 1229, 1270 of the Civil Code of the Russian Federation), as well as the rules on the protection of exclusive rights to the results of intellectual activity (Article 1250, 1252, 1301 of the Civil Code of the Russian Federation).

• Violation of procedural law

The courts of the first and appellate instances, in violation of the provisions of the procedural legislation and clarifications of the highest court, did not establish all legally significant circumstances, in particular, regarding the protectability of the disputed work and its use by the defendants:

• the issue of appointing an examination to classify the case design as an object of copyright has not been resolved
• a full and proper assessment of the evidence presented in the case file has not been made
• no reasons are given for which the courts rejected the evidence and arguments of the persons participating in the case.

Thus, the court of first instance violated the requirements of Articles 67, 196, 198 of the Code of Civil Procedure. The Court of Appeal did not remedy these violations.

The Court of Cassation found the appeal to be well founded. At the same time, he additionally noted that the decisions in the case ignored the fact that there was a violation of the plaintiff's rights during the period from the development and creation of the design of the housing for the video module, including before filing an application for a patent for an industrial design.

In its ruling, the Judicial Collegium for Civil Cases of the Second Court of Cassation of General Jurisdiction came to the conclusion that the committed violations of the norms of substantive and procedural law are significant, in connection with which the judicial acts of the courts of the first and appellate instances are subject to cancellation, and the case is sent for a new consideration to the court of first instance. Thus, the requirements of the cassation appeal are satisfied in full.