Battakhov P.P.
Candidate of Law Sciences, senior research associate of the sector of enterprise and corporate law of Institute of the state and right of the Russian Academy of Sciences (IGP RAS)
CIVIL LIABILITY FOR VIOLATION OF INTELLECTUAL RIGHTS
Abstract
The article deals with the violation of intellectual rights and entails legal liability. But in addition to the fact of violation itself, it is necessary to have other conditions of prosecution, which depend on the type of liability. Responsibility for violation of intellectual rights is divided into several types depending on the essence of the violation.
Keywords: Liability, person, rights, protection, breach, activity, loss, contract, benefit
The main form of liability in civil law is liability in the form of damages. Losses, according to article 15 of the Civil Code of the Russian Federation, mean expenses that a person whose right has been violated has made or will have to make in order to recover the violated right, loss or damage to his property (real damage), as well as uncollected income that person would have received under normal conditions of civil turnover if his right had not been violated (loss of profit). If the person who violated the right has received income as a result, the person whose right is violated is entitled to claim compensation, together with other losses of lost profits, in the amount not less than such income.
Those methods of protection, the application of which results in additional adverse property consequences for the offender, form measures of civil liability. Therefore, such protection measures closely coincide with liability measures[1].
A person whose right has been violated may claim full compensation for the damages caused to him unless the law or contract provides for less damages.
The right holder can claim damages only if they were the direct result of a violation of his exclusive right. Such a violation will be the use of the result of intellectual activity without the consent of the right holder. However, it should be borne in mind that the Civil Code of the Russian Federation allows the possibility of restricting the exclusive right, in the interests of the State or in the interests of other persons. The general rules on cases and the procedure for establishing such restrictions are contained in Article 1229, paragraph 5. A specific case of such restrictions in patent law is the provisions of Article 1359 of the Civil Code of the Russian Federation, Which describes actions that do not violate the exclusive right to the invention, Utility model or industrial design, as well as the norms of Article 1360 of the Civil Code of the Russian Federation on the use of the invention, A useful model or industrial design in the interests of national security, according to which «the Government of the Russian Federation has the right, in the interests of defence and security, to authorize the use of the invention, A utility model or industrial design, without the consent of the patent holder, to notify him or her as soon as possible and to pay him or her proportionate compensation. «
It is also necessary to take into account what is meant by the use of the result of intellectual activity. Although the methods of use are listed in the Russian Civil Code in non-exhaustive lists, special rules should also be used for certain types of such results. On the basis of article 1358, paragraph 2, of the Civil Code of the Russian Federation, it can be concluded that the violation will be, for example, the import into the territory of the Russian Federation, the manufacture, use, offer of sale, sale, other introduction into civil circulation or storage for this purpose of a product in which the invention or useful model is used, or articles in which an industrial design is used, as well as the commission of similar actions:
- With respect to the product produced directly by the patented method. If the product produced by the patented method is new, the identical product is considered to have been produced by using the patented method, as it has not been proven otherwise;
- With regard to the device, in the course of operation (operation) of which according to its purpose the patented method is automatically carried out;
- With respect to the product to be used according to the purpose set forth in the claims, in the protection of the invention in the form of the use of the product for a particular purpose;
- Implementing a method in which the invention is used, including by using the method.
The invention will be deemed to be used illegally in a product or method if the product contains, and the method uses, each feature of the invention set forth in an independent paragraph of the patent, or a feature equivalent thereto, which has become known as such in the art prior to the priority date of the invention.
An industrial design will be deemed to be used illegally in an article if the article contains all essential features of the industrial design or a combination of features that give the informed consumer the same general impression as the patented industrial design, provided that the articles have a similar purpose.
Also, actions on the use of RID without the consent of the right holder will be qualified, If each feature is also used when using the invention or utility model, As set forth in an independent claim contained in the patent of another invention, Or a feature equivalent thereto that has become known as such in the art prior to the priority date of another invention, Or each feature set forth in the independent clause of the patent formula of another useful model, And when using an industrial pattern, each essential feature of another industrial pattern or a combination of features of another industrial pattern, Giving an informed consumer the same general impression as an industrial design, Provided that the articles have a similar purpose, another invention, other utility model or other industrial design is also recognized as being used.
According to Clause 3 of Article 1250 of the Civil Code of the Russian Federation, the measures of liability provided for by the Civil Code of the Russian Federation for violation of intellectual rights are to be applied in the presence of guilt of the offender, unless otherwise established in the Civil Code of the Russian Federation. The presumption of guilt of the offender applies, since the absence of guilt is proved by the person who violated intellectual rights.
Liability for the violation of intellectual rights may come regardless of guilt in individual cases. So in the same Clause 3 of Article 1250 of the Civil Code of the Russian Federation it is specified, Unless otherwise provided by the Civil Code of the Russian Federation, provided for in paragraph 3 of Clause 1 and Clause 3 of Article 1252 of the Civil Code of the Russian Federation measures of liability for violation of intellectual rights, Permitted by the offender in the course of his business activity, shall be applied regardless of the fault of the offender, If such a person does not prove that the violation of intellectual rights occurred due to force majeure, that is, extraordinary and unavoidable circumstances under these conditions.
Paragraph 4 of this article specifies cases in which a person who, in the absence of his or her guilt, is subject to intellectual rights protection measures, is entitled to file a recourse claim for damages incurred, including amounts paid to third parties.
It is noteworthy that with regard to the secret of production (know-how) there is a rule that a person, Which used the secret of production and did not know and should not have known about, That its use is illegal, including in connection with That it gained access to the secret of production by accident or mistake, Is not responsible for the violation committed, which, inter alia, resulted in the improper receipt of information, Components of the secret of production, disclosure or use of this information (Article 1472 of the Civil Code of the Russian Federation).
The Civil Code of the Russian Federation establishes joint liability of persons if one violation of the exclusive right to RID is committed by the actions of several persons together.
Special form of liability in the form of compensation for violation of the exclusive right to invention, A utility model or industrial design is installed in Article 1406.1. It specifies, That the author or other right holder, together with the use of other applicable means of protection and measures of liability, Established by the Civil Code of the Russian Federation in Art. 1250, 1252 and 1253, Is entitled to claim compensation from the offender of its choice instead of compensation for damages. Methods for determining compensation vary. It can, first, be determined by the court on the basis of the nature of the violation in the amount of ten thousand to five million rubles. Secondly, it can be calculated in double the cost of the right to use the invention, utility model or industrial design, determined based on a price that, under comparable circumstances, is usually charged for the legitimate use of the respective invention, utility model, industrial design in the manner used by the offender[2].
If there is a violation of the license agreement, that is, the binding rights of the counterparty are violated, along with the measures of protection and liability provided for in the rules of binding law (art. 393-406.1 of the Civil Code of the Russian Federation) and the liability established in such a contract applies to cases of violation of an exclusive right, which is an absolute right. Thus, if the licensee goes beyond the limits established in the license agreement (term, territory, type of license), or uses RID, not provided for in the contract in the way, the licensor has the right to claim instead of compensation for damages payment of compensation established in special norms of the Civil Code of the Russian Federation, in particular in Article 1406.1 of the Civil Code of the Russian Federation analysed above.
Intellectual rights protection methods (measures) can be divided into two groups. The first includes the methods listed in article 12 of the Civil Code of the Russian Federation, their application is possible in case of violation of any civil law (general civil methods of protection). The second group includes the methods listed in the fourth part of the Civil Code of the Russian Federation, which contains rules governing relations in the field of intellectual property (special methods of protection). In turn, special ways of protecting intellectual rights in relation to general civil ways of protecting these rights take the form of general and special ones depending on which intellectual rights, to which intellectual property objects and by whom are violated. In this case, the norms of the fourth part of the Civil Code of the Russian Federation, which define the methods of protection, are also divided into general ones (contained in chapter 69 «General provisions» of the Section of the UP «Rights to Intellectual Activity Results and Means of Individualization») and special ones (contained in subsequent chapters devoted to the regulation of individual institutions of intellectual property law).
Intellectual rights are the concept of ancestral, generalizing various kinds of rights. According to article 1226 of the Civil Code of the Russian Federation, depending on the legal nature, three types of intellectual rights are distinguished:
— Exclusive right, which is of a property and absolute nature, has negotiability (art. 129, para. 4, of the Civil Code of the Russian Federation), is characterized by integrity and indivisibility in relation to a certain object[3];
Personal non-property rights, which are also absolute but, unlike exclusive rights, cannot be alienated, are characterized by multiple species in relation to a particular object;
Other rights that include all property rights, including personal rights, and non-property rights that cannot be classified as exclusive or personal non-property rights (formed on a residual basis).
For the purposes of this study, attention is focused on the protection of exclusive rights only, although in some cases it is necessary to take into account their relationship with other rights, in particular with the right of pre-use and the right of post-use in the field of patent law, which restrict the exclusive right, and therefore cannot serve as a basis for the application of protective measures to subjects of these rights.
The right may be violated by the actions of another subject of civil law (citizen, legal entity, public legal entity), whose relations are based on the principle of coordination, as they are based on their equality, autonomy of will and property independence, as well as by the action (inaction) of the state authorities, in particular Rospatent, who denies the person the protection of his intellectual rights.
Civil protection of intellectual property can be exercised in various ways. Depending on their ratio among themselves and the place in the structure of the Civil Code of the Russian Federation, they can be divided into three groups:
- General civil remedies for the protection of rights;
- Special ways to protect intellectual rights;
- Special ways to protect intellectual rights to certain types of intellectual activity results.
Special ways of protecting exclusive rights are listed in article 1252 of the Civil Code of the Russian Federation. The list of these methods, as well as the list in article 12 of the Civil Code of the Russian Federation, is not exhaustive. These may be other ways, but they should be specified in the fourth part of the Civil Code of the Russian Federation. These methods include the requirements of:
- on recognition of the right — to a person who denies or otherwise does not recognize the right, thus violating the interests of the right holder;
- on the suppression of actions that violate the right or pose a threat of its violation — to the person who commits such actions or makes the necessary preparations for them, as well as to other persons who may suppress such actions;
- on compensation of damages — to a person who improperly used the result of intellectual activity or means of individualization without conclusion of an agreement with the right holder (non-contractual use) or otherwise violated his exclusive right and caused him damage, including violating his right to remuneration provided for in Article 1245, paragraph 3 of Article 1263 and Article 1326 of the Civil Code of the Russian Federation;
- on seizure of the material carrier in accordance with Clause 4 of Article 1252 of the Civil Code of the Russian Federation — to its manufacturer, importer, keeper, carrier, seller, other distributor, unscrupulous buyer;
- to publish the decision of the court on the committed violation with the indication of the actual right holder — to the offender of the exclusive right.
A special feature of the protection of exclusive rights is the possibility of the right holder choosing an alternative method of protection instead of a claim for damages. This follows from Clause 3 of Article 1252 of the Civil Code of the Russian Federation, which states that in cases provided for by the Civil Code of the Russian Federation for certain types of results of intellectual activity or means of individualization, in case of violation of an exclusive right, the right holder has the right to claim from the offender compensation for violation of the said right instead of compensation of damages. Compensation is subject to recovery if the fact of the offence is proved. At the same time, the right holder who applied for protection of the right is exempted from proving the amount of losses caused to him[4].
The amount of compensation shall be determined by the court within the limits established by this Code, depending on the nature of the violation and other circumstances of the case, taking into account the requirements of reason and fairness.
If the rights to several results of intellectual activity are violated by one action, the amount of compensation is determined by the court for each improperly used result of intellectual activity or means of individualization. At the same time, if the rights to the corresponding results belong to one right holder, the total amount of compensation for violation of the rights to them, taking into account the nature and consequences of the violation, may be reduced by the court below the limits established by the Civil Code of the Russian Federation, but may not be less than fifty per cent of the minimum amount of all compensation for the violations committed.
This article of the Civil Code of the Russian Federation defines counterfeiting and establishes a special sanction in this regard. If manufacture, distribution or other use, as well as import, transport or storage of material carriers, Which express the result of intellectual activity, lead to a violation of the exclusive right to such result, Such material carriers shall be considered counterfeit and shall, by court decision, be removed from circulation and destroyed without any compensation, If other consequences are not provided for in the Civil Code of the Russian Federation (Clause 4 of Article 1252 of the Civil Code of the Russian Federation). Also by the decision of the court are subject to removal from circulation and destruction at the expense of the offender of tools, equipment or other means, mainly used or intended to commit violation of exclusive rights to the results of intellectual activity, unless the law provides for their circulation to the income of the Russian Federation (article 1252, paragraph 5, of the Civil Code of the Russian Federation).
The article also provides for the possibility of securing an action in a case of violation of an exclusive right by taking interim measures proportionate to the scope and nature of the offence, Established by procedural legislation, including the seizure of material carriers, Equipment and materials, prohibition of related actions in information and telecommunication networks, If such material carriers, equipment and materials or acts are alleged to be in violation of the exclusive right to the result of intellectual activity[5].
It also establishes a mandatory claim procedure for the settlement of a dispute if the right holder and the offender of the exclusive right are legal entities and/or individual entrepreneurs and the dispute is under the jurisdiction of the arbitral tribunal. Prior to filing a claim for damages or compensation, the right holder must file a claim. A claim for damages or compensation may be brought in the event of a total or partial refusal to grant the claim or failure to receive a response to it within thirty days of the date of submission of the claim, unless otherwise provided for in the contract. At the same time, there are cases where such a procedure is not required by law.
In cases where the violation of the exclusive right to RID is recognized in accordance with the established procedure by unfair competition, the protection of the violated exclusive right may be carried out both by means provided for in this Code and in accordance with antitrust legislation.
Article 1406.1 of the Civil Code of the Russian Federation formulates a special rule clarifying the rule on the possibility to claim compensation instead of compensation for losses, and the procedure for its determination.
In article 1407 of the Civil Code of the Russian Federation, the patent holder has the right to demand the publication in the official bulletin of Rospatent of a court decision on the illegal use of an invention, a useful model, an industrial model or other violation of his rights.
References:
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