Ownership of employee-created rights and commissioned work

Copyright in Russia

Copyright takes effect in Russia from the moment a work is created. Copyright registration is not required unless the copyrighted work was created in a country where copyright registration is mandatory, such as the United States.

The author of a copyrighted work enjoys non-proprietary (moral) and proprietary rights from the moment the work is created. Moral rights are inalienable and non-transferable, while proprietary rights can be assigned and provide the owner of the work with the exclusive right to remuneration. They also provide the right to control the various ways in which the copyrighted work is used. The term of copyright protection is valid during author’s lifetime and continues 70 years after their death.

Copyright objects in logos and stylised marks

Almost any type of logo or stylised mark (including painting, graphics, design or fictional character) can be considered a trademark. If this work is the result of intellectual creativity (ie, it is original and unique), then this work can be protected by copyright.

Legal risks

When filing a trademark application, it is important to consider the legal consequences associated with the regime of protection of copyrighted work in the trademark. If a trademark includes a copyrighted work, the trademark owner may face complicated legal matters as the legal protection required is doubled, which can lead to a clash of rights.

The following general principles of copyright protection should always be taken into account:

• Copyright protects only original, creative work – because of its originality, it cannot be recreated by another person.
• Copyright does not need to protect the entire work; any part of the work (eg, an excerpt or fragment) is subject to legal protection, provided that this is also original or unique.
• Exclusive right to a copyrighted work originates when the work is created.
• An inseparable part of copyright is the prohibition of any third party using the work in any way or form.
• It is necessary to obtain written consent from the author to use the copyrighted work. The only instances when such consent is not required are when the work is not protected by copyright in Russia or if the term of the exclusive copyright has expired.

The rights of the copyright owner in case of infringement

If a trademark application is filed or even granted without the consent of the copyright owner, such actions may be recognised as copyright infringement.

The copyright owner may challenge the trademark registration by filing a post-registration opposition with the Chamber of Patent Disputes within a limited period of time (ie, within the whole period of validity of the trademark). The copyright owner may initiate actions against the copyright infringement in the court, but these cases are uncommon.

Practical tips

When preparing a trademark application, the following safety measures are recommended:

• It is important to check whether the application contains any copyrighted work. For instance, if the trademark was created by an individual person (a copywriter) or a design firm, it is important to ensure that the trademark was created originally and that it was not borrowed from any public source.
• It is highly advisable to obtain a signed agreement with an individual person (a copywriter) or a design firm on:
  • the transfer of proprietary rights; and
  • the settlement of issues related to copyright. These agreements are not the subject to state registration.
• If the copyrighted work was created by a design firm, it is important to remember that only individuals can be considered original copywriters. These may be the employees of a design firm as well as persons performing this work under civil law contracts that they signed to work with the firm.
• If the trademark created during this work is the copyrighted work, the applicant must either obtain copyrights from the authors/individuals or ensure that the design firm has properly acquired copyrights from the authors. Only after obtaining such evidence may the applicant acquire these rights from the design firm.
• If the trademark was created by an employee of the trademark applicant, a special agreement must also be made with the employee, even if the creation was a part of its work duties.

The agreement resolves issues relating to moral rights and should include the:

• terms for mentioning the author's name in the company's products and the rights and the mechanism for their transfer in the event of early termination of the contract;
• trademark applicant’s permission to publish and use the copyrighted work with the necessary changes and without any mention of the author's name;
• trademark applicant’s permission to use the work, their names, fragments and/or characters.