On 20 April 2017, the draft law "On State Support of Cinematography in Ukraine" ("Law") was signed into law by the President of Ukraine. It entered into force on 6 May 2017. Besides its main goal to regulate and support funding and production of Ukrainian motion pictures, the Law also introduces, for the first time in Ukrainian history, secondary liability regime for third party copyright and related rights infringements and a set of rules aimed at easing online enforcement. Highlights of the new Law related to online intellectual property enforcement include:
- liability of websites, web page owners and hosting providers for third party infringements on certain types of copyrighted materials;
- caching providers may be liable for non-expedient removal of information deleted from its source or subject to a court ruling ordering termination access to such information;
- notice-takedown procedure for certain types of copyrighted materials;
- strict liability regime for repeat infringers;
- liability of website owners and hosting providers for non-provision of accurate information in the WHOIS database;
- liability for frivolous notice-takedown request;
- exclusive jurisdiction of the courts of the city of Kyiv for all online intellectual property infringement cases.
1. Intermediary liability The website, web page owner and hosting provider may be found liable for copyright and related rights infringement upon receipt of the notice ("Notice") and non-compliance with the notice-takedown procedure ("Notice-Takedown Procedure") established by the Law. In addition to the above noted civil liability, the Law also establishes administrative liability for website owners and hosting providers for non-compliance with the Notice-Takedown Procedure, including failure to terminate access to infringing materials, failure to respond to the Notice, untimely response to the Notice, provision of incorrect information in response to the Notice, and failure to provide accurate information in the WHOIS database. The Notice-Takedown Procedure is mandatory only for a limited number of materials protected by copyright and related rights:
- audiovisual works
- musical works
- computer programs
- videograms, phonograms
The Law provides that caching providers, otherwise immune from liability for any automatic, temporary and interim storage of infringing materials, may be found liable for failing to terminate access to such information upon receipt of a notice indicating that such materials have been deleted at the original source, access to such materials has been terminated, or that there is a court ruling ordering such deletion or access termination.
2. Notice The Law establishes a number of formal requirements for the Notice. It must be filed both electronically and in hard copy by an attorney-at-law admitted to practice law in Ukraine. The Notice must contain: (i) detailed contact information of the IP right owner; (ii) proof of IP rights ownership; (iii) a motivated claim of IP rights infringement; (iv) links to infringing materials; (v) a demand to terminate the access to infringing materials; (vi) contact details of the hosting provider hosting infringing materials; and (vii) confirmation of the attorney-at-law that all information indicated in the Notice is accurate. Failure to comply with these formal requirements provides a right to the website, web page owner or hosting provider to refuse to comply with the Notice-Takedown Procedure. The Law establishes administrative liability for the inclusion of false statements to the Notice.
3. Notice-Takedown Procedure There are two phases of the Notice-Takedown Procedure under the Law. Within phase one of the procedure, the IP rights owner must send a Notice to a website owner. Only if (i) the website owner did not comply with the Notice-Takedown Procedure, or (ii) there was insufficient information in the WHOIS database to identify the website owner, can the IP rights owner proceed to phase two of the Notice-Takedown Procedure and send the Notice directly to the hosting provider. Phase One of the Notice-Takedown Procedure Upon receipt of the Notice, the website owner must, within 48 hours of receiving the Notice, terminate access to the infringing materials on the website and provide the respective notice to the IP rights owner. The website owner also has a right to decline to comply with the Notice in the following cases:
- the website owner has a legitimate right to use the allegedly infringing materials
- the recipient of the Notice is the owner of the website in question
- the Notice does not comply with formal requirements ("Grounds for Non-Compliance")
The website owner or a recipient of the Notice must, within 48 hours, send to the IP rights owner a respective notification indicating reasons for non-compliance with the Notice, and provide contact details of the proper owner of website, details of the materials (access to which has not been terminated), and reference to a respective provision of the Law permitting non-compliance with the Notice. Where a website owner served with a Notice is not an owner of a web page containing infringing content, it must resend the Notice to the respective owner of a web page containing infringing materials within 24 hours of receiving the Notice and send a respective notification to the IP rights owner. The web page owner must remove access to infringing materials or provide notification to the website owner on the grounds indicated above within 48 hours. In case the web page owner does not comply with the Notice within 48 hours, the website owner must terminate access to the infringing materials and notify the IP rights owner within 72 hours. Phase Two of the Notice-Takedown Procedure During phase two of the Notice-Takedown Procedure, the IP rights owner can send the Notice directly to the hosting provider. Such Notice must overall comply with the formal requirements for the Notice discussed above and indicate grounds for phase two eligibility. Within 24 hours of receiving the Notice, the hosting provider must send it to the website owner and, within 48 hours, terminate access to the infringing materials. Alternately, the hosting provider can decline complying with the Notice in the following cases:
- the Notice does not comply with formal requirements
- the hosting provider does not render hosting services to the website in question
- the Notice does not comply with phase two eligibility requirements
The website owner can send a notification based on Grounds for Non-Compliance to the hosting provider, objecting to the termination of access to the allegedly infringing materials. The hosting provider resends this notification to the IP rights owner and restores access to the allegedly infringing materials on the 10th business day from the date of resending the notification to the IP rights owner, unless the IP rights owner provides the hosting provider with documents confirming initiated court proceedings. To see a graphical explanation of the Notice-Takedown Procedure established by the Law, please click here.
4. Strict liability regime for repeat infringers Website and web page owners complying with the Notices may be liable for copyright and related rights infringement if they allow two or more infringements related to the same infringing materials within three months on their web pages.
5. Requirements for website owners and hosting providers Subject to administrative liability, website owners and hosting providers must provide on their websites and/or in publicly available databases (WHOIS) the following information:
- the full name of the website owner and hosting provider
- the full address of residence or address of registration of the website owner and the hosting provider
- full contact information for the website owner and the intermediary service provider (including telephone number and e-mail)
There are no doubts that the adoption of the Law is a long-awaited and groundbreaking step in online IP rights enforcement in Ukraine. However, on the one hand, the Notice-Takedown Procedure seems to be overly regulated and complex. On the other hand, due to provisions of the Law, a wide range of online businesses are exposed to additional liabilities. Therefore, it remains to be seen whether this Law will be effective in online IP rights enforcement without inhibiting free speech or placing an additional burden on legitimate online businesses.