| Internet and Russian legal practice© 2001, Victor Naumov
Objects of intellectual property in Internet are vulnerable and are under constant threat of an unauthorized use. It is most vividly demonstrated by the cases, having been adjudicated in last two years in Russia: the current legal practice, as far as the disputes over the use of Internet are concerned, is fully concentrated on the intellectual property issues - the copyright infringement (the author's rights to the works of literature, music and the computer programs), and an infringement of exclusive rights to the means of identity (trademarks, marks of service and the company names). In Russia the rights to the means of individualization are violated by the domain name registration and usage. The domain name in Internet contains a certain kind of information, permitting Internet user to access an information resource. Choosing a domain name for the domain registration [1] completely on the discretion of the resource's owner; this choice is secondary, because the protocol TCP/IP and the addressing system of Internet provide a digital address to any information Internet resource which then receives the domain name according to the owners' choice. Upon registration of certain domain name an application for identical domain name will be automatically rejected: the hierarchical system of domain name in Internet will not let simultaneous existence of identical domain names. Therefore, the domain name is, as a matter of fact, a certain kind of means of brand indentity in wide sense, which gives customers and users an opportunity to find in a virtual area an information related to well-known trademarks and company names. The possibility of an independent choice of domain name breeds an illegal phenomenon - cybersquatting, which means the registration of the domain names identical or similar to the brand identity and its further use in bad faith either for one's own commercial purposes, or make to the owner of the trademark/company name an offer to sell. Art.138 of the Civil Code of the Russian Federation (RF) contains the recognition of a company's copyright on intellectual activities results and on means of identity, similar to them, like trademarks, service marks, company name. The basic rules of Russian legislation, regulating the mentioned institutes, are concentrated in the Civil Code, the Law of the Russian Federation on Trademarks, Service Marks and Appellations of Origin, the Federal Act "On Competition and Limitation of Monopoly at a Commodity Market". According to art.54 of the Civil Code ("The Title and the Principal Location of a Legal Entity") a legal entity has its own name, containing an indication of its legal form, and a company, which has registered its name according to the established procedure receives an exclusive right to use it, while an entity that misappropriated the same name and committed its unauthorized use, must stop this unlawful activity and cure the damage. Besides that, par.8 of an old Regulation "About the company name" (adopted by the USSR Central Committee and the USSR SPC Decree on August 17, 1927) which is still in power, states that "the right on the company name consists in exclusive right to use it in deals, signboards, announcement, advertisement, letterheads, invoices, manufactured goods, goods' package …etc." The legal protection for another kind of identity tool - a trademark is provided by the "Law of the Russian Federation on Trademarks, Service Marks and Appellations of Origin" (Trademark Law), dated 23.09.92 N3520-1, which states the following: "A trademark and a service mark (hereinafter - a trademark) - are the designations which are able to distinguish the goods and services of one entity (legal or physical) from similar goods and services (hereinafter - the goods), offered by other legal or physical entities" (art.1). "1. The legal protection of a trademark in the Russian Federation is provided through its public registration in the order, established by the present law or in pursuance of an international treaty which the Russian Federation is a party. "2. The right to a trademark is protected by the law" (art.2) "1. The owner of a trademark has an exclusive right to make use it, to dispose it and to prohibit its use by the others. Nobody can use a trademark, protected in the Russian Federation by the law without its owner's permission. 2. It is recognized as an infringement of the trademark owner's rights when one commits unauthorized manufacturing, application, import, offer, sale, and other kind of putting into business circulation or storage, with mentioned above purposes of a trademark or goods, identified by this trademark or by designation similar to the latter to the degree of confusion with relation to the similar goods" (art. 4 An exclusive right to a trademark). In disputes about an authorized use of the domain name the claims based on a trademark ownership are less arguable than those based on the rights to company name, because a company name consists of two elements - an indication of the legal form of business and the name itself, but Russian judicial practice, as well as the legislation, lacks a direct statement of what role the legal form plays in the identity means and whether the legal protection is granted to the name only or when both the legal form and properly the name are misused. Therefore, companies with the same name but with different legal forms are registered to the present time by the system of the registration offices, though art.6-bis of Paris Convention on the industrial property protection puts forward such a category as "essential part of a mark" and points on such a kind of violation as a use "with a degree of their confusion". Besides the legislation regulating the institute of identity means in Russia, there is in force the Act "On competition and limitation of monopoly at a commodity market", of 22.03.1991 N948-1 (revised by the Acts of RF of 24.06.1992 N3119-1, 15.07.1992 N3310-1; by the Federal Acts, of 25.05.1995 N83-FA, 06.05.1998 N70-FA, 02.01.2000 N3-FA). This Act defines as an unfair competition any actions of a business entity, directed to getting an advantage in business, which contradict current legislation provisions, commercial usage and requirements of good faith, reasonableness and justice, and present the threat of damage or have already caused a damage to another market participants - competitors and to their business reputation as well (art.4). Among the forms of prohibited activities are: "deceiving customers concerning a nature, methods and a place of manufacturing, consumer characteristics and quality of goods; sale of goods accompanied by illegal use of the intellectual activity's results and identity means of company, goods and services" (art.10 The forms of unfair competition). Table N1 shows a brief review of the legal precedents, relating to trademark, service mark and company name infringements through use of domain names, up to 10.05.2001 [2] (all dates in article are in Russian style). Table N1. Information about the cases, relating to trademark, service mark and company name infringements through use of domain names, up to 10.05.2001.
So in the majority of disputes about the domain names the court has recognized the use of a company name, identical or similar to confusion, as a violation of an owner's rights. Besides that, a registration of the domain name, similar to identity means itself is recognized as an infringement [4] . An exception is presented by a precedent, concerning the domain kamaz.ru, when the plaintiff failed to substantiate, that the purpose of the registration and the use of the domain was a bad faith advantage in the business.
Though the number of national cases, relating to the copyright infringements [5] in Internet, is far not high, it yet allows to recognize the types of violations and legal consequences well known abroad. In Russia there are precedents of an illegal use of materials placed at Internet for publication in books, and of an unauthorized placing at Internet of the materials, which become available outside the Web, and infringements by placing at Internet of music files, computer programs and databases. A brief information about on the mentioned practice is given below in Table 2. Table N2. Information about the cases on copyright infringements, up to 10.05.2001.
It is obvious that plaintiffs are yet unsuccessful in disputes over their copyright infringements. It can be explained, in particular, by failure to execute an assignment of a copyright to an object, as created in their job tasks performance ("Silmarill. Ltd" - "Softland.Ltd" case, "Businessman. Publishing Center. Co." - "Public library. Co.","Vector Info. Co." Case), thus the plaintiffs did not succeed in presenting their pieces of work before the court as created as their job tasks performance [7] ; the inherent defects of the contracts, which were the legal grounds for the transfer of exclusive copyrights to objects to the plaintiffs, and an objective difficulty of some objects attribution - first of all computer programs for their huge volumes of texts and codes are too complicated for comparing to decide whether they are similar or different. Typical cases put the problem of a status of an evidence received from Internet: Being placed on a server a file differs from the information received by the user's on-line visual representation of a resource.
There is one more peculiarity in the information resource's creation and placing at Internet, which should be taken into account. Usually, when placing the information, a person apply to the services of providers - companies, which offer the telematic services [8] . The reason is that a common person in commerce, who lacks a special knowledge in the sphere of telecommunications and Internet, finds it non-profitable to buy a special equipment (servers and channels) and have a trained stuff of his own. So the provider - the owner of the informational network gives to a resource's owner a possibility (usually for a charge) to create, to place and provide a public access [9] to the information; besides, the provider has the possibility of technical and organizational control of the access to the information, placed in Internet, with the help of his system [10] . As we know, the Federal Act N24-FA of 20.02.1995 "On information, informatization and protection of information" (hereinafter - the Act on information) is at the current moment the basic national legislative act regulating the relations in the sphere of information issued in connection with Internet use. Besides the number of important definitions [11] , as far as the sphere of informational relations is concerned, the act contains art.5 about information - Documentation of information. In accordance with it "a documentation of an information is an obligatory requirement for the information to be included into a resource", and the document, received from of an information system comes into legal force upon its signing by an official according to the procedure established by the Russian Federation legislation. However today there are no rules of the document's authorization or a fixation which according to art.5 it must be executed according to the order established by the authorities, responsible for office work organization, standardization of documents, safety of the Russian Federation [12] . Part 3 art.5 of the Act on information recognizes electronic digital signature as a tool which serves as the evidence of a legal power of a document, deposited and transferred through an automatic and telecommunication systems. But this rule is not valid for current judicial practice related to Internet, because up to date the precedents are concerned the creation and the use of the informational resources without using of electronic digital signature [13] . Nevertheless, the Act on information contains an important rule, defining the conception of documented information: "Documented information (document) is the one, fixed on a material repository with the requisites allowing its identification" (art.2). Since there is no legislative regulation of rules for documents [14] , we can conclude, that if an information is put on a material repository (Internet server) and can be synonymously identified by the addressing system, the information may be considered as a category of the documented one, in the same way, information resources in Internet (sites, pages, servers) can be considered as the source of documented information. Code of Arbitration Procedure of the Russian Federation confirms, taking into account the principle of evidence admissibility, a possibility to use data, documents and materials, received "by fax, electronic or another kind of communications" and classifies them as written evidence (part.1 art.60 CAP of RF). Besides, the Code stressed the point, that court's ability to be sure the presented documents are reliable - is the basic criteria of their admissibility. The basic rule of art.60 CAP of RF is added by Instructive Decree NE-1-4 of 29.07.1979 of the USSR State Arbitration "On the use of documents, drawn up by computer as an evidence in arbitration proceeding" (Instructive Decree) is effective to the present time; it clarifies that parties in the arbitration have the right to present documents prepared by a computer as an evidence before the Arbitration Court. Those documents must be considered by the Arbitration Court as a written evidence if they contain the data, material to the case (p.1). The Instructive Decree clarifies, that data, contained in their technical repository, can be introduced as evidence only after their transformation into a form, suitable for common comprehension and operation as an evidence (p.9), plus it must bear an indication on what time and what computer center they were made (p.4) [15] . As the Arbitrations Courts, Plenum of the USSR Supreme Court gave the similar interpretation in Resolution N3 of 03.04.1987 "About the exact adherence to the law practice in civil justice": "If it is necessary, the Court can admit as a written evidence documents obtained from a computer. Taking into account opinions of persons in case the court can examine presented audio and video records. Those materials shall be appraised along with other evidence". Concerning the presentation of evidences received with the help of information technologies and, Internet in particular, there exists one more theoretical problem: written evidence is introduced in original or in a form of a legalized copy, but, as was mentioned above, an information on the screen before eyes of user is not identical to one placed at Internet. Moreover, during printing out of the screen content [16] of a browser program the information on the date of printing out and the resource's address are added. Therefore, a copy printed on a sheet of paper and reliably indicating the content of an Internet page is not a copy in the full meaning of the word. Besides that, according to p.1 of the Instructive Decree, one must present the first copy to the court, if the original is material for the case. According to literal interpretation of this rule although in conflict with common sense, a server containing the file ought to be introduced before the Court for examination [17] . It would be wrong to state, the problem described above is material for legal practice, but it's necessary to take into account, when examining the evidence, that "copy" in such a situation has another meaning, different, for instance, from a copy of "paper document", made by copying machine. Despite an objective difficulty of judicial investigation of facts involving use of Internet, the absence of a proper legislative regulation of electronic documentation exchange and actual jurisdiction of offering the evidences obtained from Internet and their assess by parties and the court, all the mentioned problems show a certain progress in Russia. Table 3 presents information on materials and evidences examined in the judicial proceedings over disputes on violation of rights to objects of intellectual property at Internet. Table 3. The materials and evidences examined in the judicial proceedings over disputes on violation of rights to objects of intellectual property at Internet.
In the majority of cases, the court, while trying the testimony of the parties and other people, examined the written evidence introduced on paper medium. The court never used a possibility of a direct investigation of the facts, material to disputes over the violation of rights in Internet, using its own computer equipment and Internet: in every session there were used the paper copies of the information, being seen on the computer screen during the on-line access, presented by the parties and other people and examined as the evidence. Printings from the domain names data base of the Registrar of Russian area .RU SC "RosNIIROS" were introduced by the parties in every proceeding on dispute over violation of rights in Internet. During the proceedings the admissibility of such a kind of evidence proving the domain name's ownership, also confirmed by the parties' explanations, was not contested and was recognized as admissible. In each case relating the domain name, printings of the informational resource's content were also were applied, besides the information received from the domain names database. During examination of those objects difficulties and the debates on their expedience became obvious. In kodak.ru case, in particular, the plaintiff presented the printings from two different resources and explained, that one of them contained a hyper link to another one. So, became evident the deficiency of presentation of the evidence in printed form - the it does not provide enough reliable presentation of the Internet organization character based on hyper links. Thee defendant denied any organizational and technical connection between the printed copies provided by the link. The mentioned deficiency appeared in other cases as well: Sorokin V.G. and company of the public organization "Ad Marginem" vs. Chernov A.A., "Silmarill Ltd" vs. "Softland Ltd". In the last lawsuit, interesting for legal analysis, the plaintiff introduced the printings of the defendant's information resource at Internet as an evidence of his copyright infringement during the computer programs' downloading. Therefore, the court stated that "the printing of the screen images", containing the title of the program, the full name of a developer, the indication of the copyrights' affiliation with a company, can't be the evidence of the plaintiff's rights infringement by the defendant, because the plaintiff's statement that he received the evidence from the web-site at the defendant's address were not proved. Besides printed screen images, received by the plaintiff from the defendant's information resource, in that case there were used a record of the written evidence examination executed by the Notary of St.Petersburg, and the material of the expert examination, executed at his request by the Institute of Ministry of Justice. The record represented printings of the defendant's information resource and the printings of the interfaces' images of one of programs, obtained by the Notary himself from the defendant's site. Later was contested on the ground of its contradiction to the principle of evidence admissibility and relevancy. In order to affirm his position the defendant proposed that in spite of the record's title, indicating the only one notary action - a visual examination, its text contains the intimation on two actions: obtaining of the evidence and its further examination, though the record stresses only the latter, with the reference to the art. 102-103 of "Basics of General Notary Legislation". Besides that, during obtaining the evidence the Notary neither mentioned the parameters of his access to Internet during the examination, nor explained, what he had done for installing and setting up the program on his own computer. Therefore, the defendant stated that the Notary did not performed properly the examination of the evidence obtained by Notary himself and did not compare the printed information with the original one, located at Internet. Another evidence in that case was the act of visual expertise performed by the North-Western regional Center of Judicial Expertise. It contained an information about the access to the defendant's server and the installation of one of the programs at issue and a comparison between the obtained program's original and the program's copy, which was presented beforehand. In order to provide the experts with an access to the defendant's server, the plaintiff offered them the addresses, where the programs' modules were placed. However, those addresses, as the defendant stated, where the inner-ones of his server and they were not for public access since contained confidential information. Thus, the breaking up, committed at the plaintiff's request, had all the features of an offence, stipulated by art. 272 of Criminal Code of the Russian Federation "Illegal access to computer information" and the information obtained that way did not meet the requirement of admissibility as an evidence. Nevertheless, introduced evidences became decisive for the court's judgment, concerning two of the programs at issue, that "The defendant had committed the actions, directed to the programs' spreading" and "provided an illegal access to the plaintiff's program". An evidence of a certain interest had placed in "Promo-RU. Ltd" vs. "Informative book-Plus. Ltd" case. The printings of the log-files of a hosting provider supporting the plaintiffs' information resource and the printings of a popular searching base "Aport" (http://www.aport.ru), which had indexed the content of the plaintiff's resource before the defendant's book was sent to press, were presented by the plaintiff as an evidence at the hearing. During the proceeding in a court of the first judgment, the defendant argued that "the virtual" evidence fixed by the plaintiff as a proof that T. Bokarev had created objects of the copyright later assigned to the plaintiff could not be admissible. He referred to the blanket rule, contained in clause 2 art.5 of the Act "On Information": the document, received from the automatic information system comes into legal power after its signing by an official under established procedure. However, the court recognized those materials as relevant and admissible ones. This allows to conclude, that so far in judicial proceedings were used classical ways of obtaining and examination of evidences. Though the cases were tried by judges specialized on in copyright and non in property right issues, the lack of methods of system expertise for obtaining evidence and its examination turned the rather simple dispute (unlike the wide Western judicial practice, having thousands of cases concerning Internet) into dramatic and dragged out procedure. Nevertheless, methodical approaches, necessary for judicial judgment of the cases, related to the sphere of information relations are gradually developing. The parties and the court need to consider the following data: information on the domain name ownership obtained from the domain name database of .RU Area, printed copies of the resource's content, received not only from the parties and persons in case but also from other people (first of all, from the providers). Also a special technical expertise should be appointed by the court. Finally, studying a possibility direct examination of the evidence from Internet right at hearing, it is necessary to take into account, that the information safety precautions must be taken in order to prevent possible falsification as the result of the intervention into the court's information system.
[1] In Russian area .RU the registration is executed by a monopoly organization - Russian Institute for Public Networks (SA "RosNIIROS", http://www.ripn.net). [2] A detailed review of the "network" legal practice is contained in: Naumov V. B. Russian Internet: the first legal precedents // Arbitration disputes, N1(9), 2000, p.130-133; Naumov V. B. The protection of the intellectual property rights in Internet // Patents and licenses N4, 2001, p.20-27. The copies of every mentioned in article judicial acts are available at http://www.russianlaw.net/law/cases_list.htm. [3] Concerning this precedent, the proceeding was discontinued in the end of March 2001 after the defendant has deleted the site, stopped the domain name's "delegation", while remaining its "administrator": 16.05.2001 Moscow Arbitration Court sustained the complaint filed by "Kodak O.O.O." against the court bailiff and abolished the latter's act of the cessation of the enforcing procedure. [4] For example, in the case related to the domain quelle.ru the arbitration court decided in favor of the plaintiff and stated, with a reference to the "Law of the Russian Federation on Trademarks, Service Marks and Appellations of Origin" (Trademark Law) (art.4), that the first defendant had executed "another kind of putting into circulation of a trademark onto a commodity market" by the registration of the domain quelle.ru on his name, and that served as a proof of the infringement of the plaintiff's trademark rights. [5] Main legislative acts regulating the use and the legal protection of copyright objects in Russia are the Act of RF "On Copyright and Allied Rights" of 09.07.1993 N 5351-1 (amended by the Federal Act of 19.07.1995 N 110-FA) and the Act of RF "On Legal Protection of Computer Programs and Data Bases" of 23.09.1992 N3523-1. [6] Blockage of the defendant's site taken as a pretrial precaution to prevent the defendant from the change to the site's content later failed. [7] According to art.14 of the Act "On Copyright and Allied Rights" an employer has an exclusive right to use an employee's piece of work, created during the job performance, unless labor contract stipulates otherwise. The owner of copyright and allied rights is entitled by art.49 of the Act to require from an offender a behavior stipulated in the law- while others, including those having non-exclusive rights do not have such right. [8] According to the Order N11 issued by the Russian Ministry of Telecommunications on of 31.01.2000, affirmed by its License Committee (document N4 of 07.04.2000), a telematic service includes e-mail service, the service of an access to information resources, such as the booking office, telefax, comfax, burofax, an automatic processing of oral messages processing and oral information broadcasting. [9] According to art. 15 of the Federal Act N15-FA of 16.02.1995 ( revised by the Federal Act N8-FA of 06.01.1999, N176-FA of 17.07.1999) "On Telecommunications" the listed kinds of business must be licensed. [10] The problem of liability of a provider is very interesting: providers neither initiate a placing of an information nor they influence its contents, but they can block it. In what cases it becomes a provider's duty and when his inactivity or evasion will make him liable for an illegal placing and providing an access to the information? (See Naumov V.B. The problem of information provider's responsibility. The materials of the third Russian Conference "Law and Internet: Theory and Practice", of 28-29.11.2000, Moscow, p.77-79). [11] Documented information (document) - the one with fixed on a material medium requisites allowing its identity; [12] There is a number of subordinate legislative acts governing the problems of electronic documents transmission, but they are addressed to the limited group of subjects, specializing in certain fields of economy. For example, Regulations of the Central Bank of RF N20-p of 12.03.98 "On the Rules of Electronic Documents Exchange Between Bank of Russia, Credit Companies (Affiliated Organizations) and Other Clients Of Bank of Russia While Executing Payments Through the Network of Accounts of Bank of Russia" (amended by the Central Bank RF Direction N774-u of 11.04.2000). State Standard N6.10.4-84 "Legalization of Documents, Drawn up on a Machine Repository or a Machienegram and Drawn Up By Computer" (constituted on 01.07.87 by Decree of 09.10.84 of the USSR State Committee of standards), which "establishes the requirements to the bodies and the contents of the requisite, legalizing a document, drawn up on a machinery repository or a machienegram and those drawn up by computer, as well as the procedure of their alteration" (par.1). [13] Concerning the electronic digital signature, there is a substantial number of acts regulating its commercial use or giving recommendations on the topic. For example, there can be mentioned Letter of the Supreme Arbitration Court of the Russian Federation NC1- 07/op-587 of 19.08.94 "Some Recommendations, Affirmed at the Conference Dedicated to Legal Arbitration Practice", Letter of the Supreme Arbitration Court of the Russian Federation NC1-7/oz- 316 of 07.06.95. Besides the Government submitted to State Duma of RF the draft legislation N 78684-3 "On Electronic Digital Signature", which was enacted at the first hearing on 06.07.2001. [14] The Standard mentions that it is "mandatory for every enterprise, company and institute (hereinafter - companies), executing an information exchange through the documents, drawn up on a machinery repository or machienegram" (par.2) and its par.1.5 and 2.1 contain the mandatory requisites and a special guiding letter as the standards for a document, drawn up on a machinery repository or machienegram, the Standard is addressed to the owners and possessors of the information resources only ("companies - the document's creators") and documentation exchange between them, but it lacks a legal order of legalization of documents obtained from Internet. [15] We should take into account, that during the elaboration and enactment of the Instruction Decree an access to computers and telecommunications for commercial purposes was extremely limited that is why a resort to the computer centers was necessary. Today everyone can receive an access to information technologies, therefore we should give a broad interpretation of p.4 about the entities referred to as computer centers. [16] As it will be shown below in table 3, the materials received in such a way were introduced as an evidence in all the proceedings related to the use of Internet. [17] There was introduced a curious, but debatable solution to the problem at issue in art.11 "Originals and copies of electronic document" of the Act "On Electronic Trade" enacted by State Duma at the first reading on 06.08.2001: "Every copy of an electronic document, signed by an electronic digital signature in order, established by the Federal legislation, are recognized as an original. An electronic document can not have any copies in an electronic form.
Published: April, 12, 2002 Постоянный адрес этой страницы: www.russianlaw.net/en/ae01/ |
