It is a common fact that due to the Berne Convention for the Protection of Literary and Artistic Works and thanks to the WIPO Copyright Treaty, copyrightable works, to which software belongs, do not require any registration whatsoever to enjoy legal protection as intellectual property. In other words, it is formality-free in countries party to the Berne Convention. However, Ukraine provides the possibility to register copyright as well, which is a totally voluntary process and does not influence the validity or eligibility of copyright.
Since it is formality-free the Berne Convention provides copyright protection almost automatically worldwide, or does it?
It is a common misconception that because of the formality-free approach copyright emerges “automatically” and “in all countries of the World”. This is not the way the international treaties work. According to Article 26 “Pacta sunt servanda” of the Vienna Convention on the Law of Treaties 1969, the states, as sovereign entities, shall perform a treaty “in good faith”. Unlike domestic law and regardless of the fact that this principle has been elaborated from Roman law of nations, the international law does not contain any definition or generally accepted approach towards what is a “good faith of a sovereign state”. In practice, this means that each country choses its own way to implement the obligations undertaken under the treaty in its own domestic law.
First rule: Copyright is not automatically valid worldwide and is actually limited to the borders of each country.
Some countries, among them Ukraine, chose to have the provisions of the international treaties a direct legal force as part of its domestic law. Additionally, provisions of international treaties have supremacy over contrary domestic legislation (Article 9 of the Constitution of Ukraine, though supremacy of international law is not envisaged there but most of the local laws do stipulate it). In other countries this may differ and domestic law may greatly influence the enforceability of the rights granted under the Berne Convention.
In other words, while copyright does not need any formalities to be followed it is by no means “automatic” as it still requires to meet certain criteria envisaged by domestic law.
Second rule: Protection depends on how the country implements its obligations under the treaty (and the country may not easily be sued for non-compliance).
For example, the only way for a company to own intellectual property rights is by acquiring it from other people.”. The reason is because copyright is the result of a creative work of a human being.
Companies must acquire copyright in some way, either by purchasing it directly from their creators or by having it “created” by their employees. And here the domestic law comes in as it clearly states how the IP rights shall be transferred or assigned. In fact, the employment law of Ukraine still stipulates that unless agreed otherwise the employer and employee shall be joint owners of a copyright. Luckily for software developers, according to the EU-Ukraine Association Agreement, the software shall be the property of the employer only (paragraph 4 of Article 181). This however does not apply to any other works that are software based but are not pure software by itself, e.g. computer or videogames, interactive lessons and basically any user interface (UI), as all of them heavily integrate literary, graphical and musical works. All of the above have some peculiarities regarding regulation.
Things are getting more complicated when we start talking about patent rights. Yes, copyright is formality-free but it only protects the expression of a certain idea or mathematical algorithm. If you want to protect the essence of your product you’ll have to either rely on trade secrets or file a patent. However, if you do not file a patent application within 6-months period from the time of the invention being discovered, the employee may do so according to the law! Consider this before your key developer or even CEO files an application and sues your company while still being your employee!
The most common mistake in such situations is that an agreement developed for common law countries is used for the regulation of IP rights between parties in a civil law country.
Third rule: Your rights will depend on whether you are compliant with domestic law.
So, why is copyright registration important?
You may have a lot of rights on paper but the important thing is how you use them and enforce them. That’s why tech giants invest a lot of their resources into enforcing their rights and even start “patent wars”. Yes, some patent trolls use this to their advantage as well but the point is that if you do not enforce your rights, or if you don’t have effective mechanisms to enforce your rights, you basically don’t have those rights.
A comparable example: You own property which has been stolen from you. Even in case you know who the burglar is and even if you have strong evidence, you might not get it back it in a legal way because either the domestic law requires such lengthy procedure that by the time the court rules in your favor, the property cannot be located anymore, or it is so expensive that you’d better forget about it.
Until recently, Ukraine has been deemed one of these countries, although intellectual property law disputes have never been cheap or very effective in developed states either.
In order to enforce your rights, you’ll have to either address the issue of copyright infringement before a regulator authority (typically an antitrust office and in Ukraine it is the Antimonopoly Committee of Ukraine) or a court.
The most popular workaround to avoid application of multiple jurisdictions including Ukraine to the relations between the parties, is by using choice of law and forum (place of dispute). This is a common approach in cross-border private agreements when parties are free to choose a legal system which would govern their relations. They may also choose which court will resolve their dispute, either it be a domestic court or an arbitration (and the arbitration may be easier to enforce thanks to the New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards 1958 to which Ukraine is a party as well).
So, what is the problem, you might ask
According to the Law of Ukraine on International Private Law, enforcement rules shall be determined by the law of the state in which protection is sought. This is logical and typically you’ll apply Ukrainian procedural law if you are enforcing your rights in Ukraine. However, the law specifically states that in cases when issues regarding the registration of intellectual property in Ukraine are involved the courts of Ukraine shall have exclusive jurisdiction over such disputes.
Thus, the problem here may not seem huge but it has vast potential. Imagine that your contractor or even employee files a copyright registration for a certain piece or work. If you failed to comply with the requirements of Ukrainian law this can be done in a totally legal way: The provisions of your agreement which contradict the mandatory norms of Ukrainian law shall be deemed void and no decision of a court is required to consider them as such. And if you decide to address this issue before the court of the chosen jurisdiction according to your formal agreement the contractor or employee may simply claim that this issue is not related to the agreement and must be addressed before the Ukrainian court on the basis of its exclusive jurisdiction and in accordance with Ukrainian law.
Beware of your rights to your product as it may be the most valuable asset you may have!
