Tracking violations of Intellectual Property rights and their termination often requires considerable effort and high qualifications, as well as the use of certain technologies.
Senior Associate Vitaliy Kovalenko outlined the important aspects and nuances of using WIPO ALERT, or «the black list of torent websites», which is becoming more and more popular against the backdrop of Ukraine’s integration into the European Union.
Since the early 1990s, the copyright industry, including film, publishing, and software has been actively fighting the illegal copying and distribution of its works over the Internet. Copyright-infringing torrent websites host popular content, including movies, music, and books, without the permission of creators and other owners of intellectual property rights, thereby attracting large numbers of visitors. Their main goal is to make money from advertising or selling services such as subscriptions etc.
Internet resources with illegal content, but with high traffic, attract advertisers, even well-known brands, including for economic reasons, since the cost of advertising on torrent websites is usually lower. As a result, in addition to copyright infringement, there is unfair competition. It is worth noting that torrent websites often contain malicious software or content that does not meet ethical standards and poses a threat to the advertising industry and consumers.
Honest advertisers are careful about where they place their ads online to avoid being associated with torrent platforms, which could damage their reputation. However, it is often difficult to distinguish a torrent website from a legitimate one. This is because illegal resources have significant profits from advertising and paid services that are used to create a false impression of their legitimacy. For this purpose, the torrent website can also post certain advertising content on its own, without any consent, for example, advertising of household appliances, computers or jewelry under the trademarks of well-known brands. Other advertisers see that well-known brands are advertised on the site and also order advertising services. Violators are constantly improving their methods, for example, they hide the name or title of the website owner or hosting service provider, contact information or transfer the domain or website for service to foreign registrars or hosting providers, which we constantly encounter and successfully fight with, protecting the intellectual property rights of our clients. Tracking violations and their termination often requires considerable effort and high skill, as well as the use of certain technologies.
Some countries are taking measures to combat this phenomenon by collecting information about torrent websites and then providing information about such sites to interested parties in the advertising industry. Such measures are quite effective in reducing the number of advertisements on sites that violate copyright. However, international data exchange still needs improvement, and it is for this that the initiative of the World Intellectual Property Organization called WIPO ALERT, or in simple words – the international blacklist of torrent websites, was created.
For reference:
WIPO (World Intellectual Property Organization) is the oldest and most authoritative IP protection organization in the world. Since 1974, WIPO has been a specialized agency of the United Nations on intellectual property issues. More than 190 countries are members of WIPO. The headquarters of the organization is located in Geneva (Switzerland). Its main mission is to promote the protection of intellectual property (including copyright and related rights) throughout the world through international cooperation.
It is worth noting that Ukraine takes an active position in protecting intellectual property rights, in particular, countering copyright infringement. This is manifested in active communication and cooperation with international competent organizations and specialists, the creation of its own specialized bodies, for example, the Ukrainian National Office of Intellectual Property and Innovation (IP Office), which began to perform the functions of the national intellectual property body on November 8, 2022, the introduction of changes in national legislation or the complete replacement of old laws with new ones, as happened on December 1, 2022 with the Law of Ukraine «On Copyright and Related Rights». And Ukraine took its first steps back in 1970, joining the WIPO. As of today, Ukraine is a member of the main international unions on intellectual property issues and a signatory of the main international conventions and treaties.
Another European integration improvement of Ukrainian legislation in the field of intellectual property protection was the adoption on March 21, 2024 of the Order of the Ministry of Economy dated February 1, 2024 No. 2945 «On approval of the Procedure for the formation and maintenance of the national list of websites that cause concern regarding the observance of intellectual property rights» (hereinafter – the Procedure). The Procedure was developed in accordance with Part 10 (entered into force on October 2, 2023) of Article 8 of the Law of Ukraine «On Advertising», which prohibits placing advertising on the Internet on a website whose Internet address, according to WIPO ALERT, is included by Ukraine in the national list websites that raise concerns about intellectual property rights.
According to the definition posted on the official website of the World Intellectual Property Organization, WIPO ALERT is a secure online platform where authorized authorities in WIPO member states can upload information about websites or applications that have been found to be infringing copyright according to national rules.
Advertisers, advertising agencies and their suppliers can apply to become authorized users of WIPO ALERT to access aggregated lists of infringing websites from the whole world.
They may use this information in their automated advertising systems to avoid serving ads on such sites. In this way, they can avoid subsidizing copyright infringement and protect their brands from the negative reputational impact of illegal activity.
Therefore, the adoption of the Order «puts into operation» Part 10 of Art. 8 of the Law of Ukraine «On Advertising», as it empowers the Ukrainian IP Office (UKRNOIVI) to make conclusions about the existence of grounds for including a certain website in the national list of websites that cause concern regarding the observance of intellectual property rights. The existence of such a conclusion and the corresponding entry about the site in the national list is a reason for the Ministry of Economy to post information about such sites on the WIPO ALERT online platform.
The Order defines the procedure of:
According to Section I of the Procedure, an application for inclusion of a website in the national list (hereinafter referred to as an application) means a set of documents and materials that are submitted for consideration and adoption of a conclusion on the presence or absence of grounds for inclusion of a website in the national list, as defined by the Law of Ukraine «On Advertising».
The applicant is the subject of copyright and/or the subject of related rights, on whose behalf the appeal is submitted.
We remind you that according to the part 2 of Art. 5 of the Law of Ukraine «On Copyright and Related Rights», the primary subject of copyright is the author of the work. Subjects of property copyright may also be other natural or legal persons to whom the property rights to the work have been transferred on the basis of a deed or law.
According to Clause 1 of Section II of the Procedure, an appeal is filed with respect to one website on behalf of the applicant by his representative – a lawyer or a representative in intellectual property matters (patent attorney) (hereinafter – the applicant’s representative).
Ukrainian IP Office reviews documents and application materials regarding their compliance with the requirements of the Laws of Ukraine «On Copyright and Related Rights», «On Advertising» as well as the Procedure.
As we can see, the Procedure does not provide for independent appeals by copyright holders to Ukrainian IP Office, only through a lawyer or a patent attorney. First of all, this is related to preventive measures regarding the excessive workload of Ukrainian IP Office employees due to the submission of poorly executed documents.
The appeal consists of the following documents and materials:
In turn, para. 3-6 h. 10 st. 8 of the Law of Ukraine «On Advertising» establishes the following rules:
The website is included in the national list based on the results of consideration of the request of the representative of the applicant, provided that adequate evidence is provided that the owner of the website during the last 365 days has committed:
Provided that the owner of the website fulfills the requirements of Part 11 of Art. 56 of the Law of Ukraine «On Copyright and Related Rights» to the application for inclusion of the website in the national list, the representative of the applicant adds evidence confirming that the applicant has taken measures to stop violations of copyright and/or related rights using the Internet, provided for in Art. 56 of the Law of Ukraine «On Copyright and Related Rights», but these measures did not lead to the termination of the relevant violation, and at the same time the owner of the website complied with the requirements of Part 4 of Article 56 of the Law of Ukraine «On Copyright and Related Rights».
Therefore, both Clause 2 of Chapter II of the Procedure and para. 3-6 h. 10 st. 8 of the Law of Ukraine «On Advertising», when determining the grounds for applying and including a website in the national list, refer to the provisions of Art. 56 of the Law of Ukraine «On Copyright and Related Rights». We remind you that this article defines the procedure for stopping violations of copyright and related rights using the Internet.
The procedure establishes the requirements for the petition which should include:
The petition is written in Ukrainian with the date of its submission and can be submitted in paper or electronic form.
According to the application form (paper or electronic), the requirements for providing information on:
For example, for a photographic work, a copy of the work in the form of a photograph or drawing, published information about the work (including on the Internet), indicating the title of the work in the original language and the author of the work, is submitted. In the case of a paper application form – on a paper medium or an electronic medium with files in jpeg, tiff, png, pdf format (screenshot, photo, drawing, text etc.). In the case of an electronic application form – files in jpeg, tiff, png, pdf formats (screenshot, photo, drawing, text etc.).
Documents confirming the authority of the applicant’s representative must be drawn up in accordance with the law.
The review of the application is carried out by the Ukraininan IP Office on a free basis.
The Ukraininan IP Office reviews documents and application materials regarding their compliance with the requirements of the Law of Ukraine «On Copyright and Related Rights», «On Advertising» as well as the aforementioned Procedure.
Within 15 calendar days from the date of receipt of the application, the Ukraininan IP Office shall send to the e-mail address of the representative of the applicant requests to eliminate identified deficiencies in the documents and materials of the application or to provide documents and/or information necessary for consideration of the application in the event of:
Within 15 calendar days from the date of receipt of the relevant request, the representative of the applicant must provide Ukraininan IP Office with correctly prepared and appropriate information, documents and materials.
Until the date of adoption of the conclusion on the appeal by the Ukraininan IP Office, the representative of the applicant has the right, on his own initiative, to make changes and/or additions to the documents and materials of the appeal by submitting a corresponding petition to the Ukraininan IP Office or to withdraw the appeal by submitting a corresponding request to the Ukraininan IP Office.
At first glance, the procedure for accepting documents and application materials is quite clearly regulated, but only the practical implementation of the procedure will show its effectiveness and reveal shortcomings.
During the review of the appeal, the Ukrainian IP Office determines the possibility of identifying the current contact data (postal address, e-mail address) of the owner of the website in respect of which the appeal was submitted.
In the case of establishing such data, the Ukrainian IP Office sends a message to the website owner with a proposal to provide an explanation regarding the content of the submitted appeal, except in cases where the contact data, website internet address and/or contact data, open data about the website owner have signs of their connection with the aggressor state. The notification is sent to the Ukrainian IP Office together with a copy of the appeal and documents and materials attached to it.
The owner of the website can submit explanations, documents and materials regarding the content of the appeal to the Ukrainian IP Office within 10 calendar days from the date of receipt of the notification.
Such an approach will definitely contribute to ensuring the principle of competitiveness, as well as a full and objective investigation of the circumstances. At the same time, if it was not possible to establish sufficient up-to-date contact data and other sufficient information about the owner of the website during the review of the application, the specified message is not sent.
Application consideration period:
The Ukrainian IP Office considers the appeal within 30 calendar days from the date of receipt of the appeal.
If the applicant’s representative is sent a request to eliminate identified deficiencies in the documents and materials of the application or provide documents and/or information necessary for consideration of the application, consideration of the application is carried out by the Ukrainian IP Office within 30 calendar days from the date of sending the request.
Based on the result of consideration of the appeal, the Ukrainian IP Office adopts the conclusion:
A copy of the conclusion is sent to the Ukrainian IP Office to the applicant’s representative in paper or electronic form in accordance with the application submission form.
A copy of the conclusion can also be sent free of charge to the Ukrainian IP Office at the request of the owner of the website, in respect of which the conclusion was adopted, unless the contact data, Internet address of the website and/or contact data, open data about the website owner have signs of their connection with the aggressor state.
The conclusion that there are no grounds for including the website in the national list is adopted by the Ukrainian IP Office in relation to the submitted application, if:
In case of adoption of a conclusion that there are grounds for including the website in the national list, the Ukrainian IP Office sends a copy of the conclusion to the Ministry of Economy in electronic form within 10 calendar days from the date of adoption of the conclusion. The information, documents and materials submitted in the application, as well as the original of the conclusion, are stored in the Ukrainian IP Office.
On the basis of the conclusion of the Ukrainian IP Office that there are grounds for including the website in the national list of the Ministry of Economy, within 30 calendar days from the date of receipt of a copy of the conclusion from the Ukrainian IP Office, it enters information about the corresponding website into the national list and publishes them on the official website of the Ministry of Economy, as well as places information from the national list on the resource (platform) of the World Intellectual Property Organization called WIPO ALERT.
The owner of a website, which is included in the national list by the Ministry of Economy, has the right to submit an application to the Ukrainian IP Office to exclude the website from the national list (hereinafter – the application), along with documents and materials certifying:
Within five calendar days from the date of receipt of the application, the Ukrainian IP Office sends to the e-mail address of the applicant and the representative of the applicant who submitted the application (or another proper representative, about whom such applicant notified the Ukrainian IP Office) a notification of the receipt of the application, together with copies of the application and attachments to it documents and materials. In the notification of the Ukrainian IP Office, it is noted the proposal to the applicant to provide an explanation regarding the content of the submitted application of the website owner.
Within 10 calendar days from the date of receipt by the applicant’s authorized representative of the notification to the Ukrainian IP Office, the applicant or the applicant’s representative may submit to the Ukrainian IP Office explanations, documents and materials regarding the application submitted by the owner of the website.
The website owner’s application is considered by the Ukrainian IP Office free of charge within 30 calendar days from the date of its receipt.
The Ukrainian IP Office can refuse to consider the application if it is submitted by the website owner on the basis of «elimination on the date of submission of the application by the website owner of the violations that caused such website to be included in the national list», if the website owner previously applied with applications on the specified basis and following the consequences of consideration of these the website statement has already been excluded from the national list twice within three calendar years.
Thus, the order provided a certain safeguard against abuse of rights by the violator.
Based on the result of the review of the application, the Ukrainian IP Office adopts a conclusion on the existence of grounds for satisfying the application or a conclusion on refusal to satisfy the application, a copy of which is sent to the owner of the website (to the representative of the owner of the website, if the application is submitted through a representative) within 10 days from the date of adoption of the conclusion.
In the case of a conclusion that there are grounds for satisfying the website owner’s application, the Ukrainian IP Office sends a copy of the corresponding conclusion to the Ministry of Economy within 10 days from the date of the decision.
The Ukrainian IP Office can refuse to satisfy the website owner’s application if:
From the analysis of the Order, it can be seen that a prerequisite for the application of its provisions or in other words – for the inclusion of a certain website in the national and international registers of torrent websites – is compliance with the relevant provisions and the implementation of the procedures provided for by the Laws of Ukraine «On Advertising» and «On Copyright and Related Rights». The mechanism of protection of copyright and related rights provided for in Art. 56 of the Law of Ukraine «On Copyright and Related Rights» defines a clear procedure for the termination of relevant violations, starting with an appeal to the owner of the website, a provider of hosting services, and ending with an appeal to the Ministry of Economy. It is also worth considering that this procedure is relatively young, since it has been in existence for a little over a year, and the High Court on Intellectual Property, or IP Court, has not yet started. Therefore, the practice of its application is at the initial stage of formation, and currently it is not always formed by specialized bodies or specialists.
Despite this, in addition to other mechanisms for stopping violations of intellectual property rights, our team has repeatedly undergone the procedure provided for in Art. 56 of the Law of Ukraine «On Copyright and Related Rights». Currently, there is an expectation that the appearance of the Procedure will increase the effectiveness of the interaction of copyright subjects, in particular with the Ministry of Economy and some hosting providers, who, probably in order to preserve the client base, are trying in various ways to avoid the fulfillment of their duties to stop copyright infringement and /or related rights granted by the website owner. Unfortunately, the position of the Ministry of Economy, which has the right to consider the issue of holding the relevant website owner and/or hosting service provider to account, is quite passive. The current situation can be characterized as an «expectation effect», which can also arise for objective reasons, such as certain gaps or inconsistencies in the legislation, the lack of established practice etc., and therefore additional changes in national legislation, in particular the adoption of this Order, will definitely have a positive effect on the path to European integration of Ukraine.