Ekaterina Gorbunova

Civil legislation identifies a number of ways to protect violated rights. Due to the specific nature of relations in the sphere of intellectual property, legislation establishes special ways to protect violated rights.In accordance with the provisions of Article 1252 of the Civil Code of the Russian Federation, the protection of exclusive rights to the results of intellectual activity and to means of individualization is carried out in the following ways:Recognition of the right;Prevention of actions that violate or threaten to violate the right;Compensation for damages;Seizure of material carriers;Publication of the court’s decision regarding the infringement with an indication of the rightful owner.This article proposes to consider such a method of protecting the violated exclusive right as a demand for publication of the court decision. It is worth noting that this method of protecting the right cannot be called "unpopular". An analysis of judicial practice in cases of violation of intellectual property rights shows that this requirement is often stated by plaintiffs in conjunction with a demand for compensation or other material claims. However, the satisfaction of the stated requirement does not always occur, in connection with which this article proposes to consider the reasons for refusing to satisfy such a requirement, as well as this institution as a whole.Publication of a court decision as a way of protectionIt is worth noting that the method of protecting a violated right under consideration is “auxiliary” and is most often presented in addition to material methods of protecting a violated right.The institution existed in the previously effective Law of the Russian Federation of 23.09.1992 No. 3520-I “On Trademarks, Service Marks and Appellations of Origin of Goods”, in the Patent Law of 23.09.1992 No. 3517-I, and was aimed at restoring the damaged business reputation of the victim.In general, it can be said that even at present the method is more aimed at restoring damaged business reputation and is often used by plaintiffs to publish decisions on the defendants’ websites, where the honor and dignity of the plaintiff was somehow defamed, for example, when selling counterfeit goods.What should the plaintiff consider?Let us consider the main questions that arise before the plaintiff planning to choose this method of protection:Where should the decision be published?What font should be used, and where should the decision be placed?For how long should the decision be displayed?What are the consequences if the defendant does not comply with the court’s publication order?Since civil legislation does not contain specific requirements for the format of publication of the decision, let us turn to the provisions of paragraph 58 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated 23.04.2019 No. 10:When filing a claim for publication of a court decision on a violation committed, indicating the actual copyright holder (subparagraph 5 of paragraph 1 of Article 1252 of the Civil Code of the Russian Federation), the plaintiff must indicate where the relevant publication is required and justify the reasons for his choice. The defendant has the right to present his objections regarding the place of publication of the decision. When assessing the arguments of the plaintiff and the objections of the defendant regarding the proposed place of publication, the court has the right to determine the place of publication of the decision based on the fact that the choice of such a place should be aimed at restoring the violated right (for example, in the same printed publication where inaccurate information about the copyright holder was published; in the official bulletin of the federal executive body for intellectual property; in a source, the place of distribution of which is determined by the place of production and distribution of counterfeit goods or the place of implementation and nature of the plaintiff's activities.As can be seen from the above resolution, the plaintiff must indicate the location of the decision; there are no requirements regarding the font size or the specific location of the text.Meanwhile, Resolution No. 10 directly states that the choice of location must be aimed at restoring the violated right. As an example, let us consider several recent cases in which the court satisfied the plaintiff's demand for publication of the court decision.Thus, in case No. A54-10980/2022, the Intellectual Property Court, when considering the case as a court of cassation, overturned the acts of lower courts in terms of refusing to publish the decision (Resolution of the Intellectual Property Court dated 01.04.2024 in case No. A54-10980/2022). The plaintiff had filed a claim to oblige the defendants to publish information about the violation of the exclusive right to a trademark on the websites they use.By the decision of the court of first instance, left unchanged by the ruling of the court of appeal, the plaintiff was denied satisfaction of the stated claim in connection with the following circumstances: the plaintiff did not substantiate the reasons for choosing this method of protecting his rights, and did not motivate the choice of the relevant sources.The court of cassation did not agree with the arguments of the court of first instance, noting that the justification for the method of protection under consideration indicated by the plaintiff corresponds to the subject of the dispute and the circumstances of the case, is aimed at preventing the further threat of confusion of the designation used by the defendants with the plaintiff's trademark, and therefore meets the principle of restoration of violated rights.The Intellectual Property Court also noted that when establishing the fact of the defendants’ violation of the plaintiff’s exclusive right to the disputed trademark, the court had no legal grounds for refusing to satisfy the request to publish the court’s decision on the violation.In addition, the court of cassation, when referring the case for a new trial in this part, indicated to the court of first instance the need to establish the source for the publication of the court decision, the period of publication, and other circumstances related to the fulfillment of this obligation (in particular, the font size, the website page), which are necessary when considering the requirement to publish the court decision on the violations of the plaintiff's exclusive right to the trademark committed by the defendants.In another case, No. A56-65573/2023, the Intellectual Property Court, acting as a court of cassation, upheld the decisions of the lower courts, which satisfied the plaintiff’s request for publication of the court’s decision.The case is noteworthy for the way the plaintiff approached the formulation of its demands: “...to oblige, within five days from the moment the court decision comes into legal force, to publish at its own expense the operative part of the court decision on the violation committed at the top of the main page of the website located at www.cbb.ru, as well as in the form of a pinned post on the “wall” of the “Weider College” community on the social network “VKontakte” (https://vk.com/weidercollege) with the following accompanying text: “The decision of the arbitration court has satisfied the demands of the Russian Bodybuilding Federation against the Ben Weider College of Fitness and Bodybuilding for the protection of the exclusive right to the Federation’s trademark No. 917608”, - in text format and in the font usually used in other publications on the relevant Internet resource, without the right to remove such publication for one year.” (Resolution of the Intellectual Property Court dated 06.05.2024 in case No. A56-65573/2023).In essence, the plaintiff took into account all the issues, namely: the period during which the decision must be published; the period for which the decision is published; the place of publication; the format of publication, as well as at whose expense the publication is made and what text must be published.It is also necessary to remember that the requirement alone is not enough, the plaintiff should justify the reasons for choosing this method of protecting the right and take into account that when deciding to satisfy the stated requirement, the court also considers the defendant's objections. This position is reflected in the ruling of the Intellectual Property Court in case No. A40-194068/2016 (Resolution of the Intellectual Property Court of 18.09.2017 in case No. A40-194068/2016). The Intellectual Property Court, considering the case as a cassation instance, upheld the decision of the court of first instance and the ruling of the court of appeal appealed by the plaintiff, which denied the plaintiff's stated claims, including the requirement to publish the judicial act in a number of information resources, due to the fact that the plaintiff did not substantiate the reasons for choosing this method of protecting the right.It is also worth noting separately the possibility for a patent holder to demand publication in the official executive authority on intellectual property (Rospatent) of a court decision on the illegal use of an invention, utility model, industrial design or other violation of his rights. To do this, it is necessary to submit an application to the Office in the form with the attached documents and pay the state fee.What are the drawbacks of this method?An obvious disadvantage of this method is the potential for the defendant to fail to comply with the court decision.In such a case, it is possible to turn to the institution of "astrent" - a fine for failure to comply with a judicial act in kind, which can be imposed in a fixed amount or as a percentage for each day, week or month of inaction of the debtor. That is, if the plaintiff has filed a demand for the publication of the court decision by the defendant within a certain period (for example, within five days from the date of entry into force of the court decision, as in the above case No. A56-65573/2023) and this demand is satisfied, then after the expiration of the specified period, the plaintiff has the opportunity to use such an instrument as astrent.In conclusion, we would like to note once again that such a method of protecting the violated exclusive right as the publication of a court decision is effective and can be used in addition to the plaintiff's material claims or as an independent tool for protecting the right. However, it is worth considering that when making this claim, it is necessary to justify the reasons for choosing this method, as well as clarify the details of the publication.

Methods of free useThe Civil Code of the Russian Federation in its fourth part, dedicated to rights on the results of intellectual activity and means of individualization equated to them, explicitly enshrines the right to free use of objects of copyright and related rights.According to Article 1259 of the Civil Code of the Russian Federation, objects of copyright include works of science, literature, and art, regardless of the merits and purpose of the work, as well as the method of its expression (literary, musical, audiovisual works, etc.), and computer programs. Objects of related rights include performances, phonograms, broadcasting or cable transmission messages, databases (in terms of their protection from unauthorized use of content), and the rights of publishers of works that have passed into the public domain (Article 1304 of the Civil Code of the Russian Federation). It should be noted that unlike the open list of objects of copyright, the list of objects of related rights is closed.Free use of works and objects of related rights means such use that does not require obtaining the author's consent and payment of remuneration but with obligatory indication of authorship.The list of types of free use is closed, meaning that only the use explicitly named in the Civil Code will be recognized as free, namely in Articles 1273, 1274, 1277, 1278, and 1279 of the Civil Code of the Russian Federation. These articles specify various ways of free use of objects of copyright and related rights, but the main purposes of such use can be highlighted as:Personal;Informational, scientific, cultural, educational;Law enforcement.Personal goals and reproductionPersonal use of works, according to the provisions of Article 1273 of the Civil Code of the Russian Federation, means the use of works by a citizen "when necessary and for personal purposes." The Supreme Court of the Russian Federation in Plenary Resolution No. 10 dated April 23, 2019 noted that "personal purposes" mean the use of a work not for commercial purposes, to meet one's own needs or the needs of the "ordinary family circle." The "ordinary family circle" means the immediate environment of a person, determined by the court in each specific case, considering the circumstances of the case.One type of free use of works for personal purposes is reproduction, i.e., the creation of one or more copies of a work or part of it in any material form (Article 1270 of the Civil Code of the Russian Federation). However, the provisions of the previously mentioned Article 1273 of the Civil Code of the Russian Federation specify a direct prohibition on the reproduction of architectural structures, databases, computer programs, books, and musical scores, audiovisual works during public performance or using professional equipment. This provision must also be considered for the lawful use of objects of copyright and related rights.Informational and scientific purposes of useArticle 1274 of the Civil Code of the Russian Federation is dedicated to the free use of works for informational, scientific, cultural, and educational purposes. It defines the main types of such use:Quotation in the original and translation;Illustration;Reproduction in a periodical publication and subsequent distribution of articles on current economic, political, social, and religious issues, as well as publicly delivered political speeches, appeals, reports, and similar works;Reproduction and distribution in reviews of current events of works recorded during such events;Public live performance of works in educational, medical, social organizations;Recording on an electronic medium and making available to the public abstracts of dissertations;Creation and distribution of copies of works for the blind and hearing-impaired, as well as sign language translation of works;Creation of parodies and caricatures.Special mention should be made of use for law enforcement purposes, namely the reproduction of a work for the conduct of administrative offense proceedings, for the conduct of inquiry, preliminary investigation, or court proceedings to the extent justified by this purpose (Article 1278 of the Civil Code of the Russian Federation).Quotation as a type of free use of a workIt is necessary to dwell in more detail on quotation as a type of free use of a work. The fact is that Article 1274 of the Civil Code of the Russian Federation does not explicitly define either the concept of quotation or the permissible volume of such quotation. Moreover, until recently, it was considered that only text could be quoted.The approach to understanding quotation was changed in 2017 when the Intellectual Property Court in case No. A40-142309/2015 established that any works, including photographs, can be quoted. This approach was due to the fact that, by its meaning, quotation is the use of a work or fragment as an inclusion in another object of copyright. In accordance with this understanding of quotation, the Court indicated that "Since a photograph can be included in another work, including a text, becoming an integral part of it, such inclusion can be recognized as quotation." The Supreme Court put an end to this controversial issue in paragraph 98 of PRSC No. 10, indicating that "the possibility of quoting any work is allowed."In addition to the objects subject to quotation, questions also arise regarding the volume of quotation and the ways to determine it. Article 1274 of the Civil Code of the Russian Federation indicates that the volume should be justified by the purpose of the quotation. Due to the fact that a more detailed definition is not provided in the law, the determination of the volume of quotation justifying the purposes of such quotation is established by the court.Thus, in case No. A40-69432/2015, Prospekt Publishing House LLC filed a claim for compensation from Moscow Technological Institute for violation of exclusive rights to a work. According to the plaintiff, the defendant violated its exclusive rights as the part of the work placed on the defendant's website amounted to 511 authorial sheets, which in relation to the volume of the entire work is 146%.The courts of the first and appellate instances concluded that the quotation was lawful as the rules of attribution and conformity to the purposes of quotation were observed. However, the cassation court, represented by the Intellectual Property Court, did not agree with the conclusions of the lower courts, indicating that quotation should not dominate the volume of the author's text and should complement the author's own text rather than replace it. In this case, it was established that the defendant quoted more than 80 pages of the textbook, which can be regarded not as quotation but as copying the author's text. Nevertheless, judicial practice is known for an example with an opposite approach where the courts of the first, appellate, and cassation instances recognized the quotation in the volume of 13% as lawful (case No. A40-48760/2016).Thus, courts determine the lawfulness of free use of a work and its volume based on the specific circumstances of the case, which once again indicates the absence of a unified approach in the law and judicial practice to determining the concept and volume of quotation. However, it should not be forgotten that the purpose is not the only condition for lawful use since there are often cases when the court refuses to recognize the lawfulness of free use if other conditions, such as attribution, are not met.Therefore, before using a work without paying the author remuneration and obtaining their consent, it is necessary to ensure that all conditions of free use are met and that the specific use relates to the type of free use to avoid violating the author's exclusive rights and the consequences of such a violation.