Exercise of intellectual property rights by several persons

авторское право на несколько лицWith the consent of the owner, one or more people may become co-owners of the patent/certificate. To do this, the owner must conclude an agreement with the future co-owner (s) on the transfer of ownership of the intellectual property object, which must be signed by the parties and contain their names, first name and patronymic (for an individual) or the full official name of the legal entity (according to their name in the Charter and seal) and its full address.

If one or more, but not all, co-owners wish, under any circumstances, to transfer their ownership of the property to the other co-owners, the deed of transfer is between the co-owners who relinquish their ownership and transfer their part of the rights and the co-owners who accept that part and remain the patent/certificate holders. The contract, in this case, is signed, on the one hand, by co-owners who refuse the patent/certificate, on the other, by those who remain.

If one or more, but not all, co-owners of the certificate/patent wishing to transfer their ownership to any other person (s), the agreement on the transfer of ownership of the industrial property is concluded between all owners and persons to whom the ownership of the co-ownership (s) is transferred. The contract should clearly state which of the co-owners transfers their right, to whom it is transferred, and who will own the patent/certificate after such transfer. In this case, the consent of those owners who remain in possession of the patent/certificate is required. Therefore, such an agreement, on the one hand, is signed by all owners of the patent/certificate, and on the other hand by successors, that is, owners who remain to own the patent/certificate, and persons who acquire ownership under the agreement.

In other words, those owners who did not transfer their ownership of the industrial property and who remain the owners of the patent/certificate sign the Contract twice – on behalf of the transferring party of the right, and the parties who accept.

This issue, outlined in the norms of chapter 35 of the Civil Code of Ukraine, in articles characterizing various forms of exercising the right of intellectual property, which belongs to several persons. However, first, we note which forms make it possible to assert the rights of intellectual property that belongs to several persons:

1) co-authorship (Civil Code of Ukraine and Art. 13 of the Law of Ukraine “On Copyright and Related Rights”);

 

Art. 436 GC of Ukraine Co-authorship:

“1. The co-authored work is copyrighted jointly by the co-authors, regardless of whether such a work constitutes one inextricable whole or consists of parts, each of which may also have independent significance. Part of a co-authored work is recognized as having independent significance if it can be used independently of other parts of that work.

  1. Each of the co-authors retains his copyright for the part of the work he created that has independent significance.
  2. The relationship between the co-authors can be determined by the contract. In the absence of such an agreement, copyright in the work is jointly exercised by all co-authors.”

Art. 13 Law of Ukraine “On Copyright and Related Rights” Co-authorship:

«1. Co-authors are persons whose joint creative work created the work.

The co-authored work is copyrighted by all co-authors regardless of whether such a work forms one inextricable whole or consists of parts, each of which has an independent meaning.

The relationship between the co-authors is determined by the agreement concluded between them.

The right to publish and other use of the work as a whole belongs to all co-authors.

If a co-authored work forms one unbroken whole, then none of the co-authors can, without sufficient reason, deny permission to others to publish, otherwise use, or modify the work.

In case of violation of common copyright, each co-author can prove his right in court.

1. If the co-authored work consists of parts, each of which has an independent meaning, then each of the co-authors has the right to use the part of the work created by him at his discretion, unless otherwise provided for by the agreement between the co-authors.
2.Co-authorship is also copyright for the interview. The co-authors of the interview are the person who gave the interview, and the face who took it.

The publication of the interview record is allowed only with the consent of the person who gave the interview.

3. The remuneration for the use of the work belongs to the co-authors in equal shares, unless otherwise provided in the agreement between them.”

2) official (labor) relations (Civil Code of Ukraine and Art. 16 of the Law of Ukraine “On Copyright and Related Rights”);

авторское право группаAccording to the law, personal non-property intellectual property rights to an object created in connection with the implementation of an employment contract belong to the employee who created this object. In cases provided for by law, individual personal non-property intellectual property rights to such an object may belong to a legal entity or an individual where or from whom the employee works. Personal non-property rights of intellectual property cannot be alienated (transferred), except for exceptions established by law.

The property rights of intellectual property to an object created under an employment contract belong to the employee who created this object and to a legal entity or an individual, where or from whom it works, jointly, unless otherwise established by the contract.

The Civil Code of Ukraine distinguishes two types of common property – common shared property and common joint property, and common property is considered partial if the contract or law does not establish that the specified property has the form of a common joint. If the agreements of the co-owners of intellectual property rights do not establish otherwise, then the shares of the co-owners in the total shared property are considered equal and the right of ownership will be exercised by them with their consent. The size of the share, if it is not established by agreements between co-owners or legislation, is determined taking into account the contribution of each of the co-owners to the creation of the object. The right of common partial ownership is exercised by the co-owners by their consent. Income from the use of property rights must be distributed among co-owners according to their share in the right of common ownership, although agreements between co-owners may establish a different distribution procedure.

That is, in the absence of other direct agreements, if an object of intellectual property is created by an employee in the order of fulfilling an official assignment, such an employee and his employer:

  1. acquire common equity ownership of such object;
  2. the shares of the worker and the employer in the total shared ownership are equal;
  3. the employer may dispose of property rights only with the consent of the employee;
  4. income from the sale of property rights will be distributed equally between the employee and the employer.

It is clear that such conditions are unlikely to satisfy the employer, therefore, the legal relationship between the worker and the employer is formalized by the relevant contracts. Taking this into account, when concluding an employment contract, the parties are not bound by obligations to belong to property rights in whole or in part to one party. Or by sharing rights by mutual agreement. Therefore, today it is extremely important for the parties to the employment contract to reflect in such a transaction exactly the aspects related to the intellectual property rights to copyright objects created in connection with the implementation of the employment contract, in which they must be fully, in detail and unequivocally defined, formalized and agreed by the parties.

Art. 429 Civil Code of Ukraine Intellectual property rights to an object created in connection with the implementation of an employment contract:

  1. “Personal non-property intellectual property rights to an object created in connection with the implementation of an employment contract belong to the employee who created this object. In cases provided for by law, individual personal non-property intellectual property rights to such an object may belong to a legal entity or an individual where or from whom the employee works.
  2. The property rights of intellectual property to an object created in connection with the fulfillment of an employment contract belong to the employee who created this object and to a legal entity or an individual where it works, together, unless otherwise established by the contract.
  3. The peculiarities of the exercise of property rights of intellectual property on an object created in connection with the implementation of an employment contract can be established by law.”

Art. 16 of the Law of Ukraine “On Copyright and Related Rights” Copyright for official works:

  1. “The copyright of a personal non-property right to a work of service belongs to its author.
  2. The exclusive property right to a work of service belongs to the employer, unless otherwise provided by an employment contract (contract) and (or) a civil law contract between the author and the employer.
  3. For the creation and use of an official work, the author owns the author’s remuneration, the amount and procedure for payment of which is established by an employment contract (contract) and (or) a civil law contract between the author and the employer.”

3) under the order agreement (fulfillment of the order);

авторское право для группы людейAs a general rule, intellectual property rights to an object created by order. Belong to the creator of this object and the customer jointly, unless otherwise established by the contract. That is, if an agreement was not concluded between the subjects or an agreement was concluded that did not directly provide for issues of intellectual property, then the rights belong jointly to the creator and customer. This situation is quite common in economic practice. For example, contracts are concluded for the creation of scientific and technical products or an agreement for the performance of work, the subject of which is the creation of an object of copyright, in which property copyright is determined. The provisions specified above for legal relations of joint ownership will apply to such agreements.

The original work of fine art, created by order, goes into the ownership of the customer. At the same time, the property rights of intellectual property to this work remain with its author, unless otherwise established by the agreement.

The terms of the contract on the creation by order and use of the object of intellectual property rights, which limit the right of the creator of this object to create other objects, are null and void.

According to the current legislation on copyright, the ownership of property copyrights for objects created by order is not directly due to the law. There is only a reference to the “author’s order agreement,” according to which the author undertakes to create a work in the future on the terms provided for in this agreement and transfer it to the customer. It is also established that the author’s contract of the order may also provide for the payment by the customer to the author of the advance as part of the author’s remuneration. The indicated provisions indicate that, firstly, in the case of creating a work by order, an appropriate authorship contract must be concluded, and secondly, the mandatory existence of any other, specific and separate transactions, except for the provisions that will be reflected in this agreement, are not expressly provided for by law.

Art. 430 Civil Code of Ukraine Intellectual property rights to an object created by order:

  1. “1. Personal non-property intellectual property rights to an object created by order belong to the creator of this object.
    In cases provided for by law, individual personal non-property intellectual property rights to such an object may belong to the customer.
  2. Intellectual property rights to an object created by order belong to the creator of this object and the customer jointly, unless otherwise established by the contract.”

4) Transfer of rights to the co-owner

Each of the co-owners has the right to use the rights of intellectual property separately, and it is possible to grant permission to use only jointly. As for filing lawsuits in court, this fact is possible for each of the co-owners separately in the part belonging to him.

Art. 421 defines the position regarding the subjects of intellectual property law:

“The subjects of intellectual property law are: the creator (creators) of the object of intellectual property law (author, executor, inventor, etc.) and other persons who own personal non-property and (or) property rights of intellectual property in accordance with this Code, other law or contract.”

Art. 422 determines the grounds for the emergence (acquisition) of intellectual property rights – intellectual property rights arise (are acquired) on the grounds established by this Code, another law or contract.

Art. 423 Personal Non-Property Intellectual Property Rights:

  1. авторское право“Personal non-property rights of intellectual property are: 1) the right to recognition of a person by the creator (author, executor, inventor, etc.) of an object of intellectual property right; 2) the right to prevent any encroachment on the right of intellectual property capable of damaging the honor or reputation of the creator of the object of intellectual property rights; 3) other personal non-property rights of intellectual property established by law.
  2. Personal non-property intellectual property rights belong to the creator of the object of intellectual property rights. In cases provided for by law, personal non-property rights of intellectual property may belong to other persons.
  3. Personal non-property intellectual property rights are independent of intellectual property rights.
  4. Personal non-property rights of intellectual property cannot be alienated (transferred), for exemptions established by law.”

Art. 426 Use of intellectual property rights:

  1. “The methods of using the object of intellectual property rights are determined by this Code and other law.
  2. A person who has the exclusive right to allow the use of an intellectual property right object may use this object at his discretion, while respecting the rights of others.
  3. The use of an object of intellectual property right by another person is carried out with the permission of a person who has the exclusive right to allow property, except for cases of lawful use without such permission, provided for by this Code and other law.
  4. The conditions for granting permission (issuing a license) to use an object of intellectual property rights may be determined by a license agreement, which is concluded in compliance with the requirements of this Code and other law.”

Art. 428 Exercise of intellectual property rights which belong to several persons:

  1. “The right of intellectual property belonging to several persons together may be exercised under an agreement between them. In the absence of such an agreement, the right of intellectual property, which belongs to several persons, is exercised jointly.”

Art. 432 Intellectual Property Protection by the Court:

  1. “Everyone has the right to apply to the court for protection of their intellectual property rights in accordance with Article 16 of this Code.
  2. The court, in cases and in the manner prescribed by law, may decide, in particular, on:
  • application of urgent measures to prevent violation of intellectual property rights and preservation of relevant evidence; 2) stopping the passage of goods through the customs border of Ukraine, the import or export of which is carried out in violation of the right of intellectual property; 3) withdrawal from civil circulation of goods manufactured or entered into civil circulation in violation of the right of intellectual property and destruction of such goods; 4) withdrawal from civil circulation of materials and tools that were used mainly for the manufacture of goods in violation of intellectual property rights or the seizure and destruction of such materials and tools; 5) the application of a one-time monetary penalty instead of compensation for damages for the unlawful use of an object of intellectual property right. The amount of the penalty is determined in accordance with the law, taking into account the guilt of the person and other circumstances of significant importance; 6) publication in the media of information about the violation of intellectual property rights and the content of the court decision regarding such a violation.”

Art. 1112 Order Creation Agreement and Use of Intellectual Property Rights:

  1. «Under the agreement on the creation by order and use of the intellectual property right object, one party (author – writer, artist, etc.) undertakes to create the intellectual property right object in accordance with the requirements of the second party (customer) and on time.
  2. An order creation contract and the use of an intellectual property right object must determine how and how the customer uses the object.
  3. The original work of fine art, created by order, goes into the ownership of the customer. At the same time, the property rights of intellectual property to this work remain with its author, unless otherwise established by the agreement.
  4. The terms of the contract on the creation of an order and the use of an object of intellectual property right, limiting the right of the creator of this object to create other objects, are null and void.”

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