The protection of IP rights online has become a matter of interest for more and more countries. In addition to the recent trend of the European Court of Justice (ECJ) in relation to the liability of intermediaries for a breach of IP rights, countries such as Ukraine and Turkey are taking active steps in this regard and are enacting legislation on the liability of intermediaries such as website and webpage owners as well as hosting providers.
On 26 April 2017, the Law of Ukraine No. 1977-VII dated 23 March 2017, amending Ukrainian copyright legislation, came into effect. This Law introduces the liability of intermediaries – website and webpage owners and hosting providers (“Intermediaries”) – for third-party infringements, together with a new procedure for the enforcement of IP rights on the Internet.
This kind of legislation is becoming the trend also outside of the EU. In the region, Turkey also has in place and enforces similar provisions protecting IP works on the Internet and the potential for the civil and criminal liability of Intermediaries, depending on the circumstances of the breach.
This topic has also been on the radar in the EU for some time. The ECJ has rendered several notable decisions on the liability of Intermediaries, including the case of links to copyrighted works located on other servers. In these decisions, the ECJ analysed, among other things, the existence of a communication to the public of the respective copyrighted works and also the knowledge of Intermediaries concerning such breaches of IP rights.
The key aspects of the new legislation in Ukraine are described below.
A. Scope of legislation
Breach notification: IP rights owners may send a breach notification (also known as “take-down notice”) to Intermediaries together with a request to remove the respective materials breaching their rights (the “Breaching Materials”). Failure to address such a request may result in liability for the Intermediaries, as discussed below.
Types of IP rights concerned: The new Ukrainian Law is applicable only to a limited number of IP works protected by copyright and related rights, namely audio-visual works, music, computer programs, videograms, phonograms and broadcasts.
Extraterritorial reach: The Law may also be seen to have extraterritorial reach and to apply to Intermediaries located outside Ukraine.
B. Compliance requirements for Intermediaries
Information obligations: Website owners and hosting providers are now required to provide detailed information about themselves on their websites and/or in publicly available domain name database (WHOIS).
Existing agreements: Hosting providers have to amend existing hosting services agreements and their standard hosting services agreement in order to reflect the additional obligations of their clients with respect to the protection of copyright and/or related rights. No grace period is provided for complying with the Law.
C. Liability under the Law
a. Liability of Intermediaries
Civil liability: Namely, copyright and related rights owners may bring a court action against Intermediaries seeking to recover damages in accordance with Ukrainian civil law caused by:
(i) the Intermediaries’ failure to remove materials in accordance with the Law; or
(ii) their action to permit two or more publications of the same Breaching Materials on their websites within a three-month period, even though they have also complied with the notices and removed the Breaching Materials.
Administrative fines: Website owners and hosting providers, if they are physical persons, or the officers of legal entities, may be subject to a fine if they fail to act upon receiving breach notifications or fail to comply with the foregoing information obligation.
Criminal liability: In extreme circumstances, website owners and hosting providers, if they are physical persons or the officers of legal entities, may be subject to criminal liability, including imprisonment, if their actions are held to constitute distribution or reproduction of IP protected works.
b. Liability of caching providers
A caching provider (i.e. a company that provides services of automatic, temporary and interim storage of information) may be liable for damages caused by its services if it fails to promptly terminate access to information or materials protected by Ukrainian copyright law.
The caching provider must terminate the access upon finding out that such information or materials were removed from the original source or access to them was terminated, or upon the entering into force by a court decision on such removal or termination of access.
c. Liability for inaccurate data in breach notifications
A person may be subject to a fine for providing false information about its copyright and/or related rights ownership in the notice demanding the termination of the breach by an Intermediary.