[Guest post] New Ukrainian Law on Copyright and Related Rights

The IPKat has received and is pleased to host the following legislative update on the new Ukrainian Copyright Law from Kateryna Militsyna and Liubov Maidanyk (both Taras Shevchenko National University of Kyiv).

Here's what Kateryna and Liubov write:

New Ukrainian Law on Copyright and Related Rights

by Kateryna Militsyna and Liubov Maidanyk

Last year, the Ukrainian copyright reform got on its fast track. In July the Ukrainian parliament approved one of the legislative proposals on copyright and related rights as a basis. This prompted intensive work on the text of the draft law. A new Ukrainian Law on Copyright and Related Rights was adopted in December, to enter into force on 1 January 2023. See here for the timeline of the draft proposal, here Kat Anastasiia Kyrylenko's post on the draft Law, and here for the new law (Ukrainian only). See also here for the previous law. 

Since the new law is too rich with new provisions to cover them all in one post, we have cherry-picked major legislative changes that we consider to be the most interesting. Now, let’s stop beating around the bush or, as Ukrainians would put it, pulling a cat by its tail and get straight to the point. 

We got new rules, we count them 

Among other things, changes covered the basics – the very requirements for copyright protection. The law introduced a definition of a work. According to it, a work is an original intellectual creation of an author (co-authors) in the scientific, literary, artistic or other domain, expressed in an objective form. In case of authorship the provisions remained virtually unchanged. Like the previous law, the new one equates an author to a human being. Here our attention turns to expression and originality requirements where it gets more interesting.

Though no one challenged the existence of the expression requirement, the previous law led to this conclusion only through its interpretation. The current law with its definition of a work makes the requirement of the objective form explicit. Article 9 of the new law mentions a non-exclusive list of mediums of expression that fall under this category. It includes written, corporeal and electronic (digital) forms.

The lawmakers did not stop halfway. It appears that they sought to dot all the i’s and cross all the t’s in the copyrightability requirements. Hence, the originality requirement was also explicitly enshrined in the law. The lawmakers went even further and introduced its definition. Based on it, a work has to be the result of an author’s own intellectual creation, as well as to reflect the creative choices made by the author at the time of its creation. 

There are three conclusions we can draw from this definition. First, the definition links originality and authorship which reinforces the anthropocentric basis of the Ukrainian copyright law. Second, obviously, the legislator was inspired by the EU originality requirement harmonised by the CJEU case law [Katposts here]. Third, in deciding on the originality standard, the drafters opted for the subjective one. However, it is too early to infer that the threshold has been raised. It has been over 10 years since Ukrainian judicial practice articulated a presumption of originality. It states that the result of the intellectual activity shall be deemed to have been performed with creative efforts until proven otherwise. See here (para 25) and here (para 18) for the consolidated judicial practice (Ukrainian only). Over the past years, this presumption contributed to the abuse of the law and quite often discouraged the persons concerned from enforcing their rights. We believe that, unless overturned, the presumption may undermine the lawmakers’ intentions. 

As in the previous law, the list of subject-matter protected by copyright remained open. This means that, though not in the list, works that meet the copyrightability requirements are eligible for copyright protection. Nevertheless, the list of protectable subject matter was amended too to expressly include works of artistic blacksmithing as an example of works of applied art, fonts as an example of works of fine art, light and music shows, circus shows, theatrical productions and landscape creations. In the case of databases, the current law specifies that only those databases that represent the result of intellectual activity by reason of the selection or arrangement of their constituent parts are subject to copyright protection. The list of objects falling outside copyright protection was changed as well. In addition to the provisions of the previous law, the current law excludes from copyright protection drafts of official acts, abbreviations and non-original photographs. There are also such categories as non-original databases and non-original computer-generated objects (CGOs). Copyright is not extended to them but the new law envisages sui generis regimes for them. We cover these regimes further below.

Orphan works 

The new law provides for orphan works permitted uses covering copyright and related rights subject matter published in Ukraine – works, phonograms, videograms and recorded performances. The purpose of this legislative provision is the digitisation and distribution by educational, scientific and other institutions of the subject-matter prescribed by the law for which it is impossible to identify or find the rightholder. 

In the EU the very concept of an ‘orphan work’ and limitations on economic rights are envisaged in the EU Orphan Works Directive [Katposts here] which Ukraine implements. The new law provides that a special procedure for recognition and loss of the orphan work status lies with the Ukrainian government. Acquisition of the orphan status by a work gives grounds for non-commercial institutions (libraries, museums with open access for visitors, archives or organisations for the preservation of audio and video recordings) to apply special cases of copyright limitations to such works. In case of works, part 1 of Article 29 permits the limitation of economic rights to reproduction for the purpose of digitisation, indexing, cataloguing, preservation or restoration of a copy. In case of the related rights subject matter, the lawmaker did not explicitly indicate the limitations of economic rights. We may assume that these provisions will be further supplemented in terms of the rights, namely reproduction and making available. 

New moral rights 

Unexpectedly, the Ukrainian legislator expanded the list of moral rights by adding the right of the author to give a title to the work or leave it untitled, as well as the right to dedicate the work to a person(s), event or date. Obviously, such an approach is dictated by the national doctrine. It also once again confirms the strong protection of moral rights in Ukrainian copyright law. However, the justification of such provisions remains to be tested by time and practice. 

Communication to the public right 

The new law introduces a streamlined notion of ‘communication to the to the public’, taking into account the EU InfoSoc Directive and other EU acts, and defines it as broadly as possible, namely as the dissemination of objects of copyright and/or related rights by means of public performance, public display, public exhibition, public broadcasting, interactive access and cable retransmission. In addition, an attempt was made to bring order to the terminology, as the EU-Ukraine Association Agreement in the Ukrainian language contains somewhat contradictory provisions regarding ‘communication to the public’, ‘making available’ and ‘disclosure of a work’. Thus, apparently, ‘making available’ in its content was defined through the concept of ‘interactive access’. 

Public licences 

The Ukrainian legislator introduced the concept of a ‘public licence’ for copyright and related rights, which in its content allows the rightholder to grant a non-exclusive permission for use by placing the conditions on the Internet. This provision eliminates the long-standing doubt about the lawfulness of royalty-free Creative Commons-type permissions under the Ukrainian copyright law. 

New exceptions and limitations 

The new law introduces more exceptions and limitations. Here we will outline two of them – the freedom of panorama and the exception for text and data mining (TDM). 

Freedom of panorama 

The updated list of general exceptions and limitations provided in Article 22, for which the concept of ‘general cases of free use’ is used, includes the Ukrainian version of ‘freedom of panorama’. Thus, it is allowed to create images of works of architecture and fine art, that are permanently located in places accessible to the public on the street, free of charge and without permission, provided that such actions do not have independent economic value. This provision somewhat truncates the granted freedom, as it does not directly permit the following use of such images. 

Text and data mining exception 

The new law provides for the TDM exception. Here again, the lawmakers were inspired by the EU law, namely the Digital Single Market [Katposts here]. Yet, we would call the Ukrainian legislator’s approach ‘similar but different’. The exception permits making copies of works which are included in academic publications or related to them. The copies have to be made from a lawful source for the purpose of text and data mining. The law does not specify the beneficiaries of the exception. The important factor is the objective. The exception applies only to research purposes. The provisions have already attracted criticism for being too narrow and failing to meet the existing needs. It seems that the major debate on the TDM exception remains ahead, but one can already feel it in the air. 

Non-original computer-generated objects (CGOs)

Here comes one of the most debated parts of the new law. The law introduced a new sui generis right for non-original CGOs. It defines a non-original CGO as the object that differs from the existing similar ones and is created by the functioning of a computer programme without the direct involvement of an individual in its creation. No moral rights apply to CGOs. The economic rights arising out of the sui generis right are equal to the economic rights of the author. Those who are entitled to the sui generis right include the persons who own the economic rights or who have the licensing rights to a computer programme by which the object was generated. These can be authors of a computer programme, their heirs, persons to whom economic rights to a computer programme have been transferred (assigned), or legitimate users of a computer programme. The term of protection is 25 years. 

Ukrainian scholarly circles were divided on this regime. Some considered these provisions to be premature. Some viewed them as a great prospect. As you may see, the proponents of the regime won. Now the ball is on the court of practice. 

In fact, with this provision, which is very ambitious and controversial at the same time, the Ukrainian legislator primarily intends to provide protection for AI output. We wonder how this legislative approach may affect the creative industries and authors in particular? 

Non-original databases 

It would be wrong to say that the new law introduced a sui generis right for non-original databases. The previous law mentioned the right with respect to traffic schedules, TV and radio timetables, telephone directories and other similar databases that fail to meet the originality requirement. But that was it. The law had nothing except for the mention of the right. The lawmakers decided to fill this void. 

The new law provides for the sui generis right for the maker of a database which made qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents of that database to prevent extraction and/or re-utilization – any provision to an indeterminate number of persons of the whole or of a substantial part, evaluated qualitatively or quantitatively, of the contents of that database. The regime does not extend to databases created to systematise data qualifying as public under the Ukrainian Law on Access to Public Information. The right can be transferred (assigned). The term of protection is 15 years from the date of completion of a database or, in the case of a database which is made available to the public, from the date when the database was first made available to the public. Any substantial change, evaluated qualitatively or quantitatively, to the contents of a database, including any substantial change resulting from the accumulation of additions, deletions or successive alterations, which would result in the database being considered to be a substantial investment, evaluated qualitatively or quantitatively, qualifies the database resulting from that investment for its own term of protection. The right does not depend on the eligibility of a database and its contents for protection by copyright or by other rights. Protection of a database is without prejudice to the exercise of rights existing in respect of the contents of that database. 

No, you are not reading the EU Database Directive. It is still the new Ukrainian Law on Copyright and Related Rights. Yet, it is true that the Ukrainian lawmakers were inspired by the EU Database Directive and now the EU and Ukrainian database sui generis rights have a lot in common. Against the backdrop of criticism of the database sui generis right and warnings about the difficulty, if not impossibility, of scaling back the adopted regimes, the introduction of this right in the Ukrainian copyright law raises concerns. However, it would be futile to expect that there might be use to lock the door straight away. The horse… Sorry. The cat already left the condo to have a closer look at the new law. We hope that curiosity will not kill the cat. 

The gift is unpacked. Let’s see what lies ahead 

The law is there. All changes it brought can be divided into two groups: those that were driven by the European integration processes of approximating the Ukrainian law with the EU law, and those that were designed to take into account the national needs of practice, doctrine and technical development of society. Since there is still no dynamics of the ‘life’ of the legal norms, now it is difficult to predict how the new provisions will develop. Most likely, the Ukrainian copyright law will see further changes to improve the provisions in the context of approximation to the EU law. It is safe to say that we are at the point of the most ambitious changes the Ukrainian copyright law has ever seen. They will definitely determine for many years to come the way the practice in this area will develop.

Photos courtesy: Liubov Maidanyk.