In the new edition on the "Intellectual Environment" topic IP practice lawyers Elena Berger and Vladislav Scherbatykh comment on how to use copyrighted content.

Most content creators, from YouTube bloggers to major TV channels, use items subject to copyright belonging to others in their videos and broadcasts in one way or another. This can be background music, pictures or fragments of videos. Unfortunately, not everyone uses such items lawfully. Why does using any content require obtaining the copyright holder’s consent, and what might happen when such consent is neglected? Let’s examine two recent cases. 

The first case is based on the claim of the Ninu company (owner of the platform representing copyright holders of various videos) against Channel One. According to the media, the subject matter of the company’s claim (see https://rns.online/it-and-media/amerikanskaya-kompaniya-podala-isk-k-Pervomu-kanalu-iz-za-filma-Poznera-i-Urganta-2020-02-03/) is as follows. Channel One showed two episodes of the documentary series “Best. Best. Best” with Ivan Urgant and Vladimir Pozner. According to the company, these series used 13 videos about Norwegian nature the exclusive rights to which belong to Ninu. The company did not give its consent to using the videos, so it sued Channel One for almost 3.5 million rubles for copyright infringement (case No.А40-3980/2020, see http://kad.arbitr.ru/Card/ee96715f-f4c1-4017-bc25-a3e8a8f4c876).

It might seem that the risk of claims from the copyright holder was low. The author of the video was most likely a foreigner who most likely didn’t watch Channel One. The chance that they would see their video in the program and file a claim in a Russian court, was close to zero.

However, they did see. This once again confirms that nobody should neglect copyright. Firstly, you need to remember that each work (video, photo, text) generally has a copyright holder. Only the copyright holder can permit or forbid others to use its work, and in case of infringement, it is entitled to request a ban on the use and compensation in court. Exceptions to this rule are rarely found, especially when it concerns works created in the last 70 years. The fact that the work is publicly available (for example, a video is posted on YouTube) does not change the fact that nobody can use it without the copyright holder’s consent.

Secondly, do not hope that a copyright holder is far away and is unlikely to see that their content is being used without their consent. As in the Channel One case, the copyright holder may have a representative company which specializes in copyright monitoring, has a vast range of tools to track the infringement, wherever it occurs, and can file claims on behalf of the copyright holder.

The second case is about YouTube blocking a post with a fragment of the Voice.Kids program with the Grass by the Home song. According to the media (https://ria.ru/20200228/1565345394.html), at the end of February, this post, which gained 2.5 million views by that time, was blocked by YouTube due to a copyright infringement complaint (currently the post is available on the Channel One web site, as well as on YouTube channels of several users).

The media did not immediately learn who filed the complaint. Both the performer of the original song and the copyright holder of the music said that they had not filed any complaint. Only later did it become clear that it was filed by the composer Eduard Artemyev.

It turned out that the song started with an arrangement which was a slightly modified composition by Artemyev (music from the Sibiriada movie). Artemyev did not give his consent to using his composition (especially in a modified form). Therefore, after having heard it in the program, the composer sent a complaint to the YouTube administration through his representatives. The video was deleted.

 

What should you do not to infringe copyright?

The above mentioned cases are just a small illustration of what could happen when you neglect copyright. How to avoid such risks?

First, get prior consent of the copyright holder to use its content.

This is required regardless of whether the content is to be posted on the Internet, whether you are planning to use only a small piece in a modified form, or you suppose that the copyright holder will never see you using it.

When it comes to the procedure for obtaining consent, initially, two types of situations may occur:

 

Situation 1. The copyright holder has already consented to everyone using the work on certain conditions

First, in relation to many works posted on the Internet, copyright holders have already consented to anyone intending to use them on certain conditions.

For example, many web sites (“photo stocks”) post images that are offered for free or by subscription. However, before using such images, we strongly recommend reading the license agreement posted on the web site. Such agreements frequently contain important restrictions on the use of content, for example, images are not to be used in advertising or in commercial activities at all, or using them requires specifying the author and providing a link to the service.

Videos uploaded to YouTube may also be used, but generally, their use is limited by the standard YouTube license. Some authors allow using their content on more “loyal” conditions (the so-called CC BY license), which are indicated under a video, but such conditions also have their limits. As a rule, the use of user content from other services and social media (VKontakte, Facebook, etc.) is also regulated by special license agreements of these services.

In this regard, before using the content posted on any public service, you must carefully read the license agreement of this service in order to understand what is allowed in respect to the content and what requires obtaining a separate permission.

 

Situation 2. Obtaining and formalizing a separate consent of the copyright holder

Now let’s examine the second situation when there is no consent from the copyright holder to using the content you need. This case requires searching for the copyright holder on your own and obtaining a separate consent from them. What steps do you need to take?

Step 1. Search for the copyright holder

First, find the copyright holder of the work that you intend to use. Almost any content has a copyright holder. If you didn’t succeed in finding them quickly, this does not mean that they don’t exist; most likely, you just need to search better.

Unfortunately, Russia has no comprehensive copyright register that anyone could open to find out the name of a copyright holder and their contact phone number. You will have to search for the copyright holder on your own.

What ways exist to find the copyright holder besides searching the Internet? Here are some general tips. For example, if you are planning to use someone else’s music, try to find the author in the register of the Russian Authors’ Society (see http://rao.ru/information/reestry/). By contacting the author, you can find out who the copyright holder of the music is (if the author and copyright holder are not the same).

Generally, in order to contact the copyright holder of a YouTube video it is enough to contact the channel author. However, please remember that videos are often re-uploaded, so you need to find the copyright holder of the “original” video.

In the last few years, some popular images (including memes) have been registered as trademarks. For example, recall the story of Zhdun, which was registered as a trademark by a Russian company that acquired the rights to the character image from a Dutch artist (https://www.rbc.ru/society/28/08/2018/5b8544b99a79473bac2e5654). In this regard, when you plan to use an image, checking the register of trademarks will be useful.

If the copyright holder you found is not the author, but some other entity (for example, a company), we strongly recommend requesting documents confirming their rights (for example, a contract under which the author transferred to the copyright holder their rights to the work).

Step 2. Reaching an agreement with the copyright holder

Once you find the copyright holder, you will need to come to an agreement with them. Please note there is no approved “price list”; some copyright holders agree to give their permission free of charge, others demand considerable remuneration. The main thing at this stage is to clearly agree on all relevant aspects in order to avoid further trouble: the timeframes of the consent, its scope, the ways the work is to be used, etc.

It is important to remember that a work can only be used in the manner that has been expressly agreed. Using it in any other way will be illicit.

Step 3. Formalizing the agreement

When the conditions are agreed, it is time to formalize the agreement reached. Strictly speaking, the law provides no single form of consent. In practice, the following forms are used:

1. License agreement. Bilateral agreements (for example, when a work is used for a fee) are better to formalize as a license agreement signed by both parties. It is crucially important to specify explicitly the main terms and conditions in the license agreement: remuneration, if any, a very detailed description of the work, methods and the scope of use of the work, timeframes and type of the license (exclusive/non-exclusive).
2. Letter of consent. A unilateral consent of a copyright holder in practice is frequently formalized as a letter of consent signed by the copyright holder. It also requires specifying in detail all the terms and conditions for the use of a work (methods, timeframes, scope, etc.).If you decide to sign a license agreement or obtain a letter of consent from a copyright holder, remember to obtain not only a scan of the signed document, but also the original. If you have an original with the handwritten signature of the copyright holder, in the event of a dispute it will be much more difficult for them to prove that no consent was granted.
3. Electronic correspondence. Since there are no mandatory requirements regarding form, a consent can also be contained in electronic correspondence in a messenger or e-mail. We understand that such a form greatly simplifies life, but be aware of possible risks.

The most significant risk is that in the event of a dispute, it could be very difficult to prove that a particular email or message from a particular account was sent by the copyright holder rather than someone else who had access to a computer (a friend, colleague, or even a fraud). Therefore, it is extremely important to have evidence that such “electronic” consent was given by the copyright holder himself.

If it is impossible, we recommend considering a consent formalized through options 1 or 2 above, which are much more reliable.

 

Specifics of obtaining consent for reworking

If you intend to change a work (for example, make an arrangement using it), take double caution by obtaining, if possible, the consent of not only its copyright holder, but also the author (which could be different from the copyright holder).

First, the right to alter a work (called “reworking” in the laws) must be expressly specified in terms and conditions of the consent. This is a separate authority, meaning that if consent is given, for example, to reproduce a work, it does not mean that you have the authority to amend it.

The consent of the copyright holder, however, will be insufficient, if the copyright holder is not the author of the work. In this case, obtaining the author’s consent for a particular change in the work is also required. This is tied to the so-called right to inviolability of a work. If an author considers that a change in their work, for example, distorts the creative idea, they can file an independent claim demanding, inter alia, compensation for non-pecuniary damage.

That is why you must obtain the author’s consent stipulating that the author agrees to the specific changes you intend to make in the work. And while it is sufficient to obtain a general consent for any changes from the copyright holder, the author must “approve” each particular change confirming that it does not distort their creative idea. We also recommend formalizing such a consent of the author in writing in form of an agreement or a letter of consent signed personally by the author.

 

When can a work be used without the copyright holder’s consent?

Sometimes a work can be used without its copyright holder’s consent. However, the problem is that these cases require meeting a number of requirements, which, in the meantime, are often so vague and unclear that it is much more reliable and easier to reach an agreement with the copyright holder and get their permission.

See below the list of the main cases of “free use” provided by law, which most often occur in practice:

• Citing;
• Parody;
• Free use of images of architectural objects located in places with free access;
• Use of works to cover current events;
• Use in periodicals of articles on current political, economic and social issues.

Each of these exceptions can be applied only when dozens of conditions and criteria are met, many of them being extremely uncertain.

For example, the law allows citing works without the consent of the copyright holder. By citation, the law means the reproduction of a work in whole or in part for “scientific, polemical, critical, informational, educational or scientific purposes, in order to describe the author’s creative idea,” provided the author’s name is cited. In a dispute between blogger Ilya Varlamov and the Archi.ru portal, the Supreme Court commented that citing applies not only to text, but also to any other works (including photos).

However, one of the main issues is that the scope of citation must be justified by its purpose. This criterion is very vague, since it is completely unclear whether the scope of citation is justified in a particular case or not (see, for example, the dispute between BadComedian blogger and KinoDanz, https://www.5-tv.ru/news/253112/badcomedian-protiv-kinodelov-cto-govorit-zakon/). The law provides no additional guidelines, while the judicial practice is contradictory, as courts sometimes recognize almost the same percentage of citation as legal in some cases and illegal in others. Therefore, you shouldn’t rely on citing without obtaining permission from the copyright holder, since it is impossible to predict whether the court will recognize a citation legal in the event of a dispute.

In general, ways of free use provided by law should not be regarded as a universal “loophole” allowing not asking the copyright holder for permission. Given the vagueness of their criteria and rather limited practice, finding the copyright holder and getting their permission is much more reliable in almost all cases.

 

What could happen if a work is used without the copyright holder’s consent?

“Forgetting” about copyright means putting yourself at risk of serious financial and reputational losses. For example, the copyright holder could demand compensation of up to 5,000,000 rubles or of double the cost of a license (the amount of which is difficult to predict). In addition, they could demand not only that the infringement be ceased, but also that the relevant court decision be published, which can cause significant damage to reputation, especially for a major TV channel.

You must keep in mind that the liability of commercial organizations for copyright infringement does not depend on guilt. Therefore, even if a commercial organization did not know that the work has a copyright holder, or tried to find them, but failed, this will still be deemed an infringement. Meanwhile, the degree of guilt may determine the amount of compensation claimed.

Of course, in many cases it is possible to agree with copyright holders even after a claim is received; however, the terms of such agreements will likely be much less favorable than if you were to obtain prior consent.