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IP court: making available is different from public performance

The Russian television channel (The First Channel) produces a television program famous in Russia. The program is called “What? Where? When?” where the experts answers the questions asked by the viewers. The program consists of certain amount of rounds. Between these rounds there is musical pause. In one episode of this program, during musical pause, the group of musicians has performed the song. The programs has been broadcasted and then uploaded to the web-site of the channel.

In order to clear copyright in music for broadcasting the channel has concluded the framework blanket licence agreement with Russian accredited collecting society RAO. After a while, when the program has been uploaded to the channel’s web-site the other company has accused the channel in copyright infringement claiming that it is owner of the copyright in musical work performed during the musical pause in program. The channel answered the pre-trial claim and explained that it has agreement with RAO, therefore it has not conclude agreement with claimant, but it has taken down the program from web-site.

The claimant has filed a copyright infringement lawsuit to the Moscow commercial court. In the lawsuit the claimant stated that the channel has infringed its copyright in musical work by way of performing the musical work, including the musical work in complex object (tv program), broadcasting and making such program available at the channel’s web-site without agreement or permission granted by the complainant. The complainant and the author of musical work in question has concluded copyright assignment agreement in 2000. But it was not clear whether the complainant has withdrawn its copyright from CMO’s management, as it is required by law, in order to collect royalties directly from users without CMO participation.

The channel argued it has received from RAO blanket license and it is enough. Under the current Russian copyright law, there is state accreditation for collecting rights management organisations (CMOs). The CMO with state accreditation has the right to collect royalties for public performance in the name of those who even did not authorize it to do so unless they did not withdrawn their rights from management. In other words the accredited CMO can collect royalties almost for world repertoire. But there is one very important detail. State accreditation for public performance covers only offline, in other words it does not include online rights.

The court of first instance, as well as complainant, has mentioned that the agreement concluded between defendant and RAO provides only broadcasting and retransmission rights without any hint on making available right allowing defendant to upload the program to its web-site. Therefore, as the court concluded, the defendant has infringed complainant’s copyright in musical works by way of uploading the program to its web-site. The other causes of actions have been denied. The court also has reduces the sum of compensation for copyright infringement required by the right holder. The right holder, as well as the channel, have not agreed with the court’s decision and filed appeal.

The appeal was very interesting. First of all, the court of second instance “did not find” the infringement of complainant’s copyright. The court has found that the musical work in question has been wrote by two authors. Therefore the agreement (very likely on assignment of copyright, concluded between complainant and one of the authors in 2000) “can’t cover such musical work” in question. The subject matter of agreement provides assignment of exclusive copyright in author’s musical works. In other words, from the court’s decision and logic it follows that there is no such thing as share in copyright, namely in copyright and co-author is prevented from assignment (or any other disposal) of his share in copyright without consent (very likely in writing) given by the rest of co-authors.

If to paraphrase the court’s wording the disposal of copyright is possible only when the person holds “in his hands” all 100% of share in copyright. The court of second instance also did not differ the public performance right and making available right and decided that the agreement covering only public performance and concluded between defendant and RAO is enough and therefore there is no copyright infringement. The channel was happy with appeal’s decision, but the right holder has filed cassation to the Russian intellectual court. The Russian IP court was very wonder of the appeal’s logic and law interpretation.

First of all the IP court has underlined that defendant must prove absence of copyright infringement (the court of appeal, among other details, that there are not so enough evidence, presented by the complainant, to establish infringement of right – if the right holder did not prove the program has been available in the internet, there is no copyright infringement). The IP court also did not say anything about the share in copyright, it has only stated that the court of appeal, when ruled the agreement does not cover musical work in question, did not specified the provisions of substantive law to be applied and the object of rights belonging to each of the authors (music or lyrics) and ability of authors to exploit their objects independently from each other.

As a result the IP court has referred the case to the review de novo by the court of appeal. The court of appeal in its turn has stated that “producer of program has not right to use musical work, included in complex object, if it has only agreement with RAO”. But the court did not specified again what it implies under the word “use” – any use of work, or particular one? Anyway the court of appeal affirmed the decision made by the court of first instance and leaved without amend the sum of compensation to right holder.

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