The objects of copyright are works in the field of science, literature, and art. These can be computer programs, music with and without text, fine art, photography, jewelry, and more. An exhaustive list of works is enshrined in Article 8 of the Ukrainian Law “On Copyright and Related Rights.” Let’s understand: when copyright arises, whether it is necessary to carry out registration, fixation of rights, and features of transfer of property rights.
Register rights or not? Examples of Ukraine and the USA
By Part 2 of Art. 11 of the Law of Ukraine “On Copyright and Related Rights,” copyright to work arises due to the fact of its creation. The creation and exercise of copyright do not require registration of the work or any other unique design and the implementation of any other formalities. That is, such a procedure is not mandatory.
However, at his request, the author may apply for registration of copyright and agreements relating to the author’s right to the work. As a result, information on such registration will be published. The author will receive a certificate of registration of copyright to the job. Information on registration of copyright to work will be entered in the State Register of copyright registration certificates.
What may a certificate be needed for? For example, as evidence in court cases on recognizing copyright to work. Also, it is necessary to confirm copyright when entering the work in the customs register or to certify authorship when adding the object of copyright to the authorized capital. The certificate confirms the person who is entitled to receive royalties and may cooperate with other persons (producers, customers, etc.). Such a document may be presented to the buyer/purchaser of property rights to the work upon their alienation.
On the territory of Ukraine, copyright registration is carried out by the National Intellectual Property Authority. It is essential that the National Intellectual Property Authority does not examine the work and does not establish authorship during the application’s consideration.
The registration procedure is defined in the Resolution of the Cabinet of Ukraine’s “On State Registration of Copyright and Agreements Concerning the Author’s Right to a Work” of December 27, 2001, № 1756.
Depending on which object of copyright the application for registration is submitted, it is determined what material from a copy of the work is presented. For example, literary written works in printed form on paper or electronic media, computer programs – in the form of code (source text); works of fine art on electronic media or paper.
Consideration of the application and decision-making on the registration of copyright to work is carried out within a month from the date of receipt by the National Intellectual Property Authority of properly executed application documents.
In addition to copyright registration in Ukraine, it is possible to consider registration and confirmation of rights in other countries. This may be appropriate for international projects and work with foreign participants. For example, let us consider copyright registration in the United States through the Office of Copyright Registration at the Library of Congress.
The registration process required preparing a copy of the work, filling out the application form, paying the fee.
Our recommendation is to apply electronically through the Electronic Copyright Office platform, which speeds up the registration process. The fee is paid before uploading copies of the works to an electronic file (Electronic Copyright Office provides a list of acceptable types of electronic files.
An electronic copy of the work can be downloaded if one of the following conditions is met: the work is not published; the result is published only in electronic format; use of group registration parameters for unpublished works, series, newspapers, bulletins, photographs, short literary works on the Internet, contributions to periodicals or protected test items; use of a pilot program to register a group of database updates, consisting mainly of photos; The Copyright Office agrees to accept electronic copies following a special discount.
As a rule, it is probable to register only one work for each application, but there are exceptions to this rule. Each exception has eligibility requirements. Suppose you do not meet these requirements or do not comply with them. In that case, the Copyright Office may contact you and notify you of the registration decision’s postponement or may refuse registration.
The Electronic Copyright Office offers several options for registering multiple works using a single program, including a collective work as defined by copyright law; a group of up to 10 unpublished works created by the same author or co-authors; a group of published photos or a group of unpublished images created by the same author; a group of issues of the same serial publication, the same newspaper or the same mailing; a group of short literary works on the Internet, a group of posts by the same person that was first published in a periodical, several pieces first published in one section of the publication and belonging to one applicant.
In the application form, it is reasonable to specify both the actual author’s name and nickname. Keep in mind that when you register your copyright with the Electronic Copyright Office, you are making a public record. The information you provide when reporting copyright is publicly available on the Internet.
The time required by the Copyright Office to process an application varies depending on the number of applications that the Office receives and processes at the time of submission. The current time can be tracked in the Electronic Copyright Office. The average registration time is 6-8 months if the application is submitted electronically and 8-10 months (according to the usual procedure in sending documents by postal services).
If the package of documents is executed correctly, the decision on the certificate will be made. It will be a completed application for registration.
The advantage of copyright registration in the USA is establishing copyright ownership. Third parties are considered to be notified of the registration. The registration data is open and made public; the certificate is proof of authorship in courts of different world countries. It is also an opportunity to defend the interests in court, as the publication will be made in open sources. The potential ignorance of the violator will be leveled. Besides, compensation and court costs are allowed after registration.
In addition to registration, an extra guarantee of copyright is the fixation of authorship of the work by publishing the work with the author, sending by mail (e-mail, postal services) a copy of the work to your address, concluding agreements (license, copyright), using online services to record, saving results for a specific date (type, dates, etc.)
What rights cannot be transferred?
Inalienable rights inseparable from the author’s person are private and cannot be transferred to third parties. For example, only the person who created the work has the right to demand recognition of his authorship (by indicating the author’s name on the job and its copies and any public use of the work, if practicable). The author has the right to choose a pseudonym and demand its indication or prohibit mentioning his name during the work’s general use if he wishes to remain anonymous. Inseparable is the right to request the preservation of the work’s integrity and to oppose any distortion, misuse, or other alteration of the work or any further encroachment on the work that may damage the honor and reputation of the author.
The author’s property rights to work are the exclusive right to use the work, the exclusive right to allow or prohibit using other persons’ work. By Part 1 of Art. 31 of the Ukrainian Law “On Copyright and Related Rights,” the author may transfer his property rights to any other person in whole or in part.
The copyright agreement makes out the transfer of property rights of the author. The property rights transferred under the copyright agreement must be defined in it. Property rights not specified in the copyright agreement as alienable are considered as not assigned.
Features of the copyright transfer agreement
We pay special attention to the form of the contract and its terms. The agreement on the transfer of property rights of the author is concluded in writing form. It must provide the following conditions: the subject of the contract, methods of use of the work, the territory covered by rights, the amount and procedure of royalties, the term of the agreement, and other conditions agreed by the parties.
The contract must agree on the type and nature of the rights transferred under it and the issue of which work these rights apply. It is necessary to detail the work features that allow it to be identified in the contract. Also, it is required to indicate which rights are transferred – exclusive or non-exclusive.
According to Part 3, Article 4. 32 of the Ukrainian Law “On Copyright and Related Rights” under the copyright agreement on the transfer of the exclusive right to use the work, the author gives the right to use the work in a certain way and within the established limits only to one person to whom these rights are transferred, provides this person with the right to allow or prohibit such use of the work by other persons. In this case, the person who shares the exclusive right to use the work retains the right to use this work only in part of the rights that are not transferred.
Under the copyright agreement on the transfer of the non-exclusive right to the work use, the author transfers to another person the right to use the work in a certain way and within the established limits. In this case, the person who shares the non-exclusive right retains the right to use the creation and transfer the non-exclusive right to use it.
Significant terms of the contract
One of the most critical conditions of the contract is the way the work is used. Among which:
The list is defined in Part 3 of Art. 15 of the Ukrainian Law “On Copyright and Related Rights” is not exhaustive. The contract’s text must specify both the list of rights granted under it and how to use the work, which is allowed to exercise under the contract.
How work is used directly depends on the type or kind of copyright object. For example, consider how to use an object such as a computer program. The computer program can be played in any way and any form without the restriction of use for a direct functional purpose, to write down on any material or virtual carrier (flash drives, disks, data storage servers), to duplicate, to copy, to provide an objective form that allows its practical use. The software is used and distributed on any online platform for mobile devices and other devices (App Store, Google, Play station store, XBox, Wii shop, etc.).
The territory to which the transferred right applies should be specified in the text of the contract. The territory of Ukraine, the territory of a particular country, several countries, groups of countries (for example, the territory of EU countries), and the territory of all countries of the world can be defined as the copyright agreement’s territory.
The copyright agreement must also specify the forms of royalties: one-time (lump sum) payment, deductions for each copy sold, or each use of the work (royalties), or a combined cost.
The following essential condition is the term of the contract. The parties to the agreement may determine any period of its validity. Still, it may not exceed the copyright time (copyright is valid throughout the author’s life and 70 years after his death).
When a person who transfers property rights to work has not created a specific piece and has not acquired property rights, it is not its complete author. This situation is risky for the right holder of property rights to the work. Obtaining property rights from a person who is not the author may invalidate the contract.
The primary way to reduce the risk of acquiring property rights to work from a person to whom they do not belong – to provide in the contract conditions for guarantees. The author must guarantee that only the author owns the work’s exclusive property rights when transferring property rights to the job. They are not shared (not alienated) with third parties. They are not in joint partial or joint ownership. The author must undertake to participate in resolving disputes if the right holder receives claims or lawsuits from third parties regarding property rights to the work.
Therefore, the article describes the terms of the copyright agreement, which, in my opinion, are the main ones and must be agreed upon by the parties to the contract. In addition to the above, the author and the transferee may provide other conditions, such as liability in case of non-payment of royalties or lack of originality of the work, the order of transfer of property rights, the confidentiality of information.
Rights to works created to order and official works
In the legal relationship between the author (performer) and the customer, it is crucial to regulate both the creation of the work and to whom it will belong, to what extent the property rights to the piece.
In the contract, we recommend mentioning the scope of property rights, ways of using the work, the moment of transfer of the work, the period for which the customer transferred the worker’s rights, and the valid territory. That is, to determine which rights will belong to the customer, in whole or in part, whether the performer will be able to use the work in a certain way, whether he will be deprived of such a right.
There is a conflict in the legislation on determining the ownership of works created within the employment contract framework. Let’s consider features of belonging to service work on an example of making the computer program.
By Part 2 of Art. 429 of the Civil Code of Ukraine: “Intellectual property rights to the object created in connection with the employment contract belong to the employee who made the object, and the legal or natural person where or in which he works, jointly, unless otherwise provided by the agreement. “
The Law of Ukraine “On Copyright and Related Rights” (Part 2 of Article 16) stipulates: “The exclusive property right to the official work belongs to the employer unless otherwise provided by the employment contract (contract) and (or) civil contract between the author and the employer.”
A Special law determines the ownership of exclusive property rights to an official work to the employer, the Civil Code of Ukraine – to the employee and the employer.
The Civil Code of Ukraine has the highest legal force in the system of sectoral legal acts. Today, the court resolves the relevant issue in favor of the Civil Code of Ukraine provisions. The appropriate position is stated in paragraph 24 of the Plenum’s decision of the Supreme Court of Ukraine of June 4, 2010, № 5 “On the application by courts of the law in cases of protection of copyright and related rights.”
A similar issue is regulated by the Association Agreement between Ukraine and the European Union, the European Atomic Energy Community and their Member States, on the other hand, which was ratified by a statement of Law № 1678-VII of 16.09.2014 (hereinafter – the Association Agreement).
According to Article 181, Section 9 of the Association Agreement, “if a computer program is created by an employee for the performance of his or her duties or by the employer’s instructions, the employer should have all exclusive property rights to the computer program thus created, unless otherwise provided by the contract. “
Since the Association Agreement is an international agreement ratified by the Verkhovna Rada of Ukraine and is the highest act in the hierarchy of national legislation (part of which are international agreements), the conflict should be resolved in favor of the Association Agreement. It means that the employer owns all exclusive property rights computer programs within the scope of work responsibilities.
To avoid legal conflicts, we recommend that the employment contract prescribe who owns the exclusive property rights to intellectual property created by the employee in the duties’ performance.
Copyright registration is not required by law. However, our position on this issue is unequivocal – to register. The primary purpose of such recommendations is to obtain additional proof of authorship, protect the work, indemnify in violation of copyright, and simplify the proof process.
Copyright can be registered both under the national procedure in Ukraine and other countries, for example, in cooperation in international projects with foreign partners.
If the author transfers property rights to another person or the developer ordered the particular work, enter into a contract. Take into account all the critical conditions such as the scope of property rights, ways of using the work, the territory covered by the transferred right, the form of royalties, the term of the contract, the conditions of guarantees. Sett the rights that are transferred to the right holder or the customer, determine whether the author or performer will be able to use the work in a certain way or be deprived of such a right.
Sergiy Barbashin, Lawyer, Managing Partner of Trustme Law Firm, Intellectual Property Expert
Iryna Siroid, Trustme Law Firm, Dispute Resolution Division