Copyright 2017 (Chapter Ukraine)

1 Copyright Subsistence

1.1       What are the requirements for copyright to subsist in a work?

Copyright subsists in original works of authorship fixed in some material form from its creation, without the requirement for registration or any other formalities.  Copyright protection covers both published and unpublished works.  Copyright does not protect any ideas, theories, principles, methods, procedures, processes, systems, techniques, conceptions and discoveries regardless of the form in which they are expressed, described, explained, and illustrated in the work.  Copyright also protects a part of a work that can be used individually and the original name of a work.

1.2       On the presumption that copyright can arise in literary, artistic and musical works, are there any other works in which copyright can subsist and are there any works which are excluded from copyright protection?

Copyright can also subsist, inter alia, in computer programs, software, databases, and compilations of works resulting from creative work.

Copyright legislation stipulates works that are excluded from copyright protection, including:

A.    daily news that refers to press information;

B.    folklore;

C.    administrative, political, or legislative documents executed by state authorities (laws, rulings, decrees judgments, state standards, etc.) and translations thereof;

D.    state symbols, state awards, symbols and signs of authority, military forces, symbols of local authorities, symbols and signs of enterprises, organisations and institutions;

E.    banknotes; and

F.    transport schedules, TV schedules, telephone directories and other databases that do not meet the requirement of sui- generis.

Drafts of works mentioned in clause D and E are protected by copyright before official approval.

1.3       Is there a system for registration of copyright and if so what is the effect of registration?

Copyright can be registered with the State Intellectual Property Service of Ukraine in order to certify the existence and the date of publication of a work or a copyright agreement.  An applicant should pay an official fee for the certificate of copyright registration in the amount of approx. EUR 7.30 for legal entities and EUR 2.30 for individuals.  A registered copyright serves as prima facie evidence of the validity of a copyright.  Failing to register a copyright does not deprive a copyright owner of the right to enforce a copyright.

1.4       What is the duration of copyright protection? Does this vary depending on the type of work?

Copyright begins from the date of creation; in other words, it begins when the work is fixed in some material form.  The duration of copyright protection is 70 years after the death of an author or the death of the last co-author.  The duration of performers’ rights is 50 years from the date of the first record of the performance.  The duration of sound/video recordings producers’ rights is 50 years from the date of first publication of the sound/video recording or first record, if the record was not published during this period.  Broadcast organisations’ rights last 50 years from the first public transmission of the broadcast.

1.5       Is there any overlap between copyright and other intellectual property rights such as design rights and database rights?

If a work meets the requirements for copyright, it can subsist in other IP objects such as in a design or database.

1.6       Are there any restrictions on the protection for copyright works which are made by an industrial process?

If a work created by an industrial process meets the requirements for copyright, it can be protected by copyright.  No such restrictions are envisaged by the law.

2 Ownership

2.1       Who is the first owner of copyright in each of the works protected (other than where questions 2.2 or 2.3 apply)?

The first owner of copyright is the author.  If other circumstances are not proved by means of evidence, it is considered that the author is prima facie the person indicated on the original or sample of a work.  In some situations, two or more people may be joint authors and joint owners of the copyright.  For example, it is considered that the principal director, scriptwriter, production designer, author of the music specially made for a film, or the director of photography together are the joint authors and first owners of the copyright in a film.

2.2       Where a work is commissioned, how is ownership of the copyright determined between the author and the commissioner?

If a work is commissioned, economic rights are owned by the author and the commissioner jointly, unless it is otherwise prescribed by an agreement between them.  Economic rights to an artistic work belong to the author, unless it is otherwise prescribed by an agreement between the author and the commissioner.

Conversely, the moral rights accorded to authors of works remain with the author or pass to his or her heirs upon his or her death.

2.3       Where a work is created by an employee, how is ownership of the copyright determined between the employee and the employer?

Economic rights to a work created by an employee belong to the author and the employer jointly, unless it is otherwise agreed in writing.  The employer should pay to the employee an author’s fee for the creation and use of a copyright.  The amount and terms of such payment are prescribed by an agreement between the employee and the employer.

2.4       Is there a concept of joint ownership and, if so, what rules apply to dealings with a jointly owned work?

Joint ownership arises if a single work is created by more than one author and the contribution of each author is not distinct from that of the other(s).  Relationships between co-authors can be regulated by an agreement between them.  Copyright to a jointly owned work belongs to each author regardless of whether a jointly created work is inseparable or not.  If a jointly owned work is inseparable, neither author can forbid the other to publish, amend or otherwise use a work.  If a jointly owned work consists of independent parts, each co-author has a right to use his part at his discretion unless it is otherwise agreed.  Copyright royalties are equal unless it is otherwise agreed.  Each co- author has a right to bring proceedings for copyright infringement.

3 Exploitation

3.1       Are there any formalities which apply to the transfer/assignment of ownership?

The owner of a copyright has a right to transfer/assign economic rights to any person.  Copyright is transferred on the ground of a copyright agreement.  The scope of rights that are subject to transfer should be prescribed in the agreement; otherwise such rights are not transferred.  The law does not prescribe any formalities which apply to the transfer/assignment of copyright.

3.2       Are there any formalities required for a copyright licence?

A copyright licence is granted on the grounds of a copyright licence agreement, which must be concluded in written form.  A licence can be exclusive or non-exclusive.  A copyright licence agreement concerning the publication of work in periodicals (newspapers, magazines, etc.) can be concluded in oral form.  Rights that are not valid at the moment of agreement cannot be subject to a copyright licence agreement.  The scope of economic rights that are subject to the licence should be specified in the agreement; otherwise such rights are reserved by the licensor.

3.3       Are there any laws which limit the licence terms parties may agree (other than as addressed in questions 3.4 to 3.6)?

No laws limit the licence terms which parties may agree.  Meanwhile, parties should agree at least the following terms: the licence period; ways the work may be used; the licence territory; the amount and terms of a payment; and other terms upon request of a party.

3.4       Which types of copyright work have collective licensing bodies (please name the relevant bodies)?

All types of copyright work and related rights have collective licensing bodies.  Currently, there are 16 collective licensing bodies, namely the following:

• Ukrainian Union of Copyright and Related Rights Owners “Oberig”.
• State Organisation “Ukrainian Agency of Copyrights and Related Rights”.
• Enterprises Union “Ukrainian Musical Alliance”.
• Enterprises Union “Ukrainian League of Musical Works”.
• Association “Musical Authors’ House”.
• Ukrainian Public Organisation “The Author”.
• Association “Guild of Videograms and Phonograms Producers”.
• Ukrainian Public Organisation “Ukrainian Agency of Copyright and Related Rights”.
• Ukrainian Public Organisation “Ukrainian Agency of Copyrights”.
• Ukrainian Public Organisation “Agency of Protection of Performers’ Rights”.
• Private Organisation “Collective Licensing Body for Copyrights and Related Rights”.
• Ukrainian Public Organisation “CINEMA”.
• Ukrainian Public Organisation “Music Authors’ Treasury”.
• Ukrainian Public Organisation “Ukrainian Authors’ League”.
• Private Organisation “Ukrainian League of Copyrights and Related Rights”.
• Citizens Association Society “Film Managing Association “ARMA-Ukraine”.
• Ukrainian Public Organisation “Management of Intellectual Property”. 

3.5       Where there are collective licensing bodies, how are they regulated?

Collective licensing bodies should be registered with the State Intellectual Property Service of Ukraine and act on the grounds of their statutes and authorities entitled by copyright owners.  Collective licensing bodies cannot conduct commercial activity or use copyright objects entrusted by copyright owners.  Authorities concerning management of copyright should be entrusted by copyright owners on the grounds of a written agreement.  Collective licensing bodies are entitled to provide non-exclusive licences, collect royalties and bring civil actions on behalf of copyright owners.

3.6       On what grounds can licence terms offered by a collective licensing body be challenged?

Such licence terms can be challenged if a collective licensing body is not authorised by the copyright owner, or licence terms offered by a collective licensing body overstep the powers granted by the copyright owner.

4 Owners’ Rights

4.1       What acts involving a copyright work are capable of being restricted by the rights holder?

The rights holder is entitled to restrict the following acts with regard to the copyright work:

1. reproduction;
2. public performance, broadcast, demonstration and public display;
3. any repeated promulgation of works, if carried out by an organisation other than the one that carried out the first promulgation;
4. translations;
5. versions, adaptations, arrangements and other similar alterations to works;
6. inclusion of works as components into collections, databases, etc.;
7. distribution of originals of works by first sale or by transferring for property lease prior to the first sale of specimens of a work;
8. general notification of the public of the works in such a manner that the works can be accessed at any place and at any time at their own discretion;
9. transfer for property lease and/or commercial rental after the first sale of the original or specimens of audiovisual works, computer software, databases, musical works such as sheet music, as well as works on a phonogram, videogram or in a computer-readable form;
10. import of specimens of a work; and
11. other acts. 

4.2       Are there any ancillary rights related to copyright, such as moral rights, and if so what do they protect, and can they be waived or assigned?

The author has the following moral rights related to copyright (personal non-proprietary rights):

1. to require recognition of his authorship by indicating the author’s name on a work and its specimens and during any public use of the work, if practicable;
2. to prohibit the mentioning of his name during a public use of a work, if the author wishes to remain anonymous;
3. to choose a pseudonym or to indicate and require the indication of a pseudonym instead of the author’s real name on a work and its specimens and during any public use thereof; and
4. to require preservation of the integrity of a work, and to counteract any twisting, distortion or other alteration of a work, or any other encroachment thereon that may prejudice the author’s honour and reputation.

 The author’s personal non-proprietary rights cannot be assigned to other persons and shall be protected in perpetuity.

4.3       Are there circumstances in which a copyright owner is unable to restrain subsequent dealings in works which have been put on the market with his consent?

If specimens of a lawfully published work are legally put on the market through their first sale in Ukraine, further sale, gift thereof, etc., they shall be allowed without the consent of the author (or other copyright owner) and without remunerating the author, except for the leasing or commercial rental of such work.  In the case of transferring a work of fine art, the author shall be entitled to demand access to such a work for the purpose of using it for reproduction, provided that this does not prejudice the legitimate rights and interests of the owner of the work of fine art.

5 Copyright Enforcement

5.1       Are there any statutory enforcement agencies and, if so, are they used by rights holders as an alternative to civil actions?

There are a number of agencies in Ukraine charged with copyright law enforcement:

1. the police bodies, which prosecute infringements that constitute administrative or criminal offences;
2. the bodies of the Antimonopoly Committee, which pursue infringements that constitute an act of unfair competition; and
3. the State Inspectors of the State Intellectual Property Service of Ukraine, which act on matters of copyright enforcement such as distribution, storage, transportation, and circulation of specimens of audiovisual works, computer software and databases. 

5.2       Other than the copyright owner, can anyone else bring a claim for infringement of the copyright in a work?

According to Ukrainian legislation, only copyright owners are entitled to bring a claim for copyright infringement.  In certain cases, the collective licensing bodies (or other persons) may claim infringement on behalf of a copyright owner on the basis and within the scope of authorities provided by the power of attorney or respective agreement.

5.3       Can an action be brought against ‘secondary’ infringers as well as primary infringers and, if so, on what basis can someone be liable for secondary infringement?

Primary and secondary infringements, as specific types of copyright infringement, are not determined in Ukrainian legislation.  Thus, no actions explicitly related to primary or secondary infringement are available.

An action for copyright infringement can be brought provided that the fact of infringement is established according to the relevant laws.

It is possible that the fact of infringement, as specified by relevant laws, may relate to secondary infringement.

5.4       Are there any general or specific exceptions which can be relied upon as a defence to a claim of infringement?

Ukrainian copyright law provides for a number of exceptions and limitations to the exclusive rights of the copyright owner.

For instance, the following uses of works of copyright are permitted without obtaining the consent of the right-owner, provided that the author’s name and the source of reference is duly indicated:

1. Free use of works for purposes other than commercial use:
   • use of quotations (excerpts) from published works to the extent justified by the intended purpose;
   • use of literary works or works of art to the extent justified by the intended purpose as illustrations in publications, broadcasts and recordings of an educational nature;
   • reproduction in the press and carrying out public performances or broadcast of previously published newspaper or magazine articles provided that it has not been specially prohibited by the author;
   • reproduction with the purpose of presenting current events to the extent justified by the informational purpose;
   • reproduction of works displayed at exhibitions and other fairs open to the public in catalogues for coverage of these events, without use of the catalogues for commercial purposes;
   • issuing of works for the blind, published in Braille characters;
   • reproduction of works for court and administrative proceedings, to the extent justified by this purpose;
   • public performance of musical works during official and religious ceremonies and funerals, to the extent justified by the nature of these ceremonies; and
   • reproduction for informational purposes in newspapers and other periodicals, and transmission by air or other broadcast of publicly delivered speeches, addresses, reports and other similar works, to the extent justified by the intended purpose.
2. Reprographic reproduction by libraries and archives of non-commercial activities, if:
   • reproduction is not performed on a regular basis, and is made upon request of the private individual for non-commercial purposes.  The present exception does not apply to computer software and databases; or
   • reproduction is performed with the aim of replacing or substituting other specimens of work which have been lost, damaged, or otherwise cannot be used, and if such a reproduction is a one-time event.
3. Reproduction of excerpts of works for educational purposes and one-time (not regular) reprographic reproduction by educational establishments to the extent justified by the intended purpose.
4. Use of computer software, if no damage is caused by the use of the software and the right-owner’s rights and legitimate interests are not violated by:
   • making changes in order to ensure its operation with the user’s technical equipment, including recording and storing such software in computer memory and correcting evident errors;
   • making one software copy for archival purposes;
   • decompiling the software with the aim of obtaining the information required for the achievement of its interaction with independently developed software; or
   • studying software functioning.
5. Reproduction of works for private use, except for:
   • works of architecture (buildings and facilities);
   • computer software, except in aforementioned cases; and
   • reprographical reproduction of books, sheet music and original works of fine art, except for the use previously mentioned.
6. Reproduction of works and performances on phonograms, videograms, audiovisual works and specimens thereof, at home for private purposes or for use within the family circle, subject to remuneration of the author.

The laws also provide for limitations of related rights, allowing certain uses of works without obtaining authorisation from the right-holders, but subject to payment of equitable remuneration, such as:

• the use of excerpts;
• use for informative purposes, training, or scientific research;
• private use; and
• the public performance, broadcasting and cable broadcasting for commercial purposes, of phonograms and videograms published for commercial use.

5.5       Are interim or permanent injunctions available?

Ukrainian copyright legislation provides for interim injunctions that may be applied by the court upon the plaintiff’s solicitation prior to or immediately after the claim is submitted.

The interim injunctions may include:

• an order for inspection of the premises of the alleged location of the infringing activities;
• the arrest and taking into protective custody the specimen of possible counterfeit works, materials and equipment used for unauthorised manufacturing or reproduction of works;
• the arrest and taking into custody of documents that may serve as evidence of copyright infringement or actions creating such an infringement (or intention to infringe);
• an order to prohibit certain activities of the suspected party, such as manufacturing, reproduction, sale, rental, importation, etc. of specimen of work, as well as transportation, storage, etc. of specimen of works for the purpose of issuing into civil turnover; and
• in the case the copyright infringement may invoke administrative or criminal liability, the state authority (investigative body or the court) may issue an order for the search and arrest of specimens of possibly counterfeit works, materials and equipment used for unauthorised manufacturing or reproduction of works, or documents that may serve as evidence of copyright infringement.

Permanent injunctions can be granted by a final decision of the court, such as orders to do or cease from doing certain activities; for instance, prohibiting unauthorised publishing, performance, staging of works, making the specimen of works, their distribution, etc.

5.6       On what basis are damages or an account of profits calculated?

Proprietary and non-proprietary damages are calculated with due regard to the merits of an infringement, the damages suffered by the rights holder, and the estimated income that could have been derived by this person.  Additionally, the damages may include the state fees and other court expenses of the rights-holder.

As an alternative, the right-owner may request the collection of profits from the infringer derived from the copyright infringement.

Otherwise, compensation may be claimed instead of damages or collection of profit.  The compensation can be calculated on the merits of an infringement and/or the intentions of the infringing party.  The amount of compensation should be no less than the equivalent of approx. EUR 621 and should not exceed the equivalent of approx. EUR 3,108,000.

5.7       What are the typical costs of infringement proceedings and how long do they take?

The amount of state fees for submitting the civil claim on the grounds of copyright infringement depend on the nature and amount of stated claims, as well as the chosen court (general jurisdiction court or commercial court).  The state fees are paid for each stated claim.

In the case of monetary claims, the state fees amount to 1 or 2 per cent of the claimed amount.  The state fees for non-monetary claims amount to approx. EUR 20 to EUR 50.

Additional state fees are paid for applying for injunctions, submitting appeal or second appeal and certain other actions related to court proceedings.

There are no fees for bringing the administrative or the criminal action on the ground of copyright infringement, in the case of enforcement before the Antimonopoly Committee or application to the State Inspector of Intellectual Property. 

The civil proceeding in the court takes approx. between six months and one year in the first instance, between two and four months in the appeal court, and between two and four months in the cassation appeal court.

The criminal proceeding takes approx. between three months and one year.

The administrative proceeding as well as the proceeding before the Antimonopoly Committee bodies takes up to six months.

The proceeding before the State Inspector of Intellectual Property takes up to three months with possible further administrative action before the court.

5.8       Is there a right of appeal from a first instance judgment and if so what are the grounds on which an appeal may be brought?

In the case of disagreement with the rendered decision (i.e. if the rendered decision is not considered well-grounded and/or lawful), appeal can be submitted by the party of the proceeding or any party whose rights and interests are determined by the rendered decision.

The court accepts the appeal for consideration if all procedural requirements, as to its submission and content, are duly met.

The second appeal can be submitted in the case of disagreement with the rendered decision of the first instance and/or appeal courts.  The ground for submitting the second appeal is claimed non-conformity of the rendered decision with the substantive and/or procedural laws.

The third appeal to the Supreme Court of Ukraine can be submitted only in cases where:

• there is non-conformity in applying the same laws by the court and this results in rendering sufficiently different decisions on similar matters; or
• the rendered decision violates the international obligations of Ukraine, when the relevant international judicial body establishes such a fact.

5.9       What is the period in which an action must be commenced?

The period in which civil action can be commenced is three years from the date of the infringement.  It is calculated from the date when the person became aware, or should have become aware, of the fact of infringement of his rights.

The period for bringing the action on the ground of unfair competition is six months from the date when the person became aware of the fact of infringement.

The decision for administrative action on the ground of copyright violation can be rendered within one to three months from the date of commencement of the administrative violation, and in the case of repeated violation – from the date of detection of the administrative violation. 

The period for commencement of the criminal action may vary from two to ten years, depending on the gravity of the crime, and is calculated from the date of the crime’s commencement until the date of the verdict.

In certain cases, the extension or renewal of specified periods is possible.

6 Criminal Offences

6.1       Are there any criminal offences relating to copyright infringement?

Illegal reproduction, distribution or other illegal use of a work protected by copyright can be defined as a crime according to the Criminal Code of Ukraine.

6.2       What is the threshold for criminal liability and what are the potential sanctions?

Criminal liability occurs in cases where copyright infringement causes damages in the amount of at least the equivalent of approx. EUR 740.

The penalty for such illegal actions can be a fine from the equivalent of approx. EUR 207 to EUR 3,150, correctional works for up to two years or imprisonment for up to six years.

If damages caused by copyright infringement are lower than the equivalent of approx. EUR 740, an administrative responsibility occurs.

The penalty for such administrative offence is a fine of the equivalent of approx. EUR 11 to EUR 207 and the confiscation of goods, tools and equipment used in the production of the goods.

7 Current Developments

7.1       Have there been, or are there anticipated, any significant legislative changes or case law developments?

Currently, the Cabinet of Ministers of Ukraine has approved a Concept of Reforming of the State System of Intellectual Property Protection in Ukraine.  According to the Concept, it is a stipulated two-tier state system of intellectual property protection.  Thus, as a result of prospective changes, the Ministry of Economic Development and Trade will ensure formation and realisation of the state policy in the sphere of intellectual property, and the newly created National Agency of Intellectual Property belonging to the sphere of administration of the Ministry of Economic Development and Trade will perform separate public functions of state policy implementation.  The State Intellectual Property Service will be liquidated.  Within the forthcoming judicial reform, by fall 2017 it is also expected the establishment of the High Court on Intellectual Property Issues as a court of the first instance for copyright, trademark and patent disputes.

7.2       Are there any particularly noteworthy issues around the application and enforcement of copyright in relation to digital content (for example, when a work is deemed to be made available to the public online, hyperlinking, etc.)?

Ukrainian copyright legislation does not contain specific provisions with regard to copyright for digital content.  Placement of works on the Internet which are available for public use is regarded as reproduction thereof, and, according to the provisions of the effective copyright legislation, such reproduction can be prohibited by the copyright owner of such works.

The main issues relating to the enforcement of copyright in the digital environment concern the technical possibility of providing enforcement authorities with relevant and legal evidence of the fact of copyright infringement as well as identification of the person responsible for such infringement (owner of the website).  Thus, simple prints of webpages cannot be regarded as legal evidence, unless they are certified by the competent authority.  Confidential information on the individual that is the owner of the respective domain name can be disclosed according to a court request only.