Block 1. Key Takeaways
- Infringement of Exclusive Rights through Commercial Use of an Image: Posting an online advertisement for the sale of confectionery products decorated with the image of the character "Krosh" without the consent of the right holder was qualified by the court as an infringement of exclusive copyright.
- Distinction Between Intellectual Property Objects: The court clearly differentiated the protected objects: exclusive copyright in the character image belongs to Smeshariki LLC, while rights to the corresponding trademark belong to Marmelad Media LLC.
- Principle of Separate Recovery of Compensation: Despite a single act of infringement (sale of a cake bearing the image), the court awarded compensation in favor of each of the two independent right holders separately, setting the amount of payments at 2,500 rubles to each (5,000 rubles total).
- Proving Online Infringement: The fact of posting a public offer (or invitation to make offers) on the information and telecommunications network was deemed sufficient grounds to establish the use of the intellectual property object in civil circulation.
Block 2. Legal Analysis
Commentary on Judicial Practice: Liability for Unauthorized Use of Characters in Small Business
The Voroshilovsky District Court of the city of Volgograd heard a case concerning the protection of exclusive rights to intellectual activity results and means of individualization. The subject of the dispute was the unauthorized use of the image of the animated character "Krosh" (from the animated series "Smeshariki") in the manufacture and sale of confectionery products.
The court established that the defendant had posted a commercial offer on the information and telecommunications network "Internet" containing a visualization of the said character. At the same time, there were no legal grounds for such use (a license agreement or other consent of the right holder).
Differentiation of rights holders and IP objects
During the judicial proceedings, the legitimacy of the claimants' rights was confirmed. The exclusive copyright to the image itself (a work of fine art/character) belongs to Smeshariki LLC. At the same time, the rights to the trademark that is identical or confusingly similar to said image are registered to Marmelad Media LLC. Thus, the defendant's actions constituted an infringement of the rights of two distinct intellectual property subjects.
Legal qualification under Articles 1229, 1301, and 1515 of the Civil Code
Guided by the provisions of Article 1229 of the Civil Code of the Russian Federation (CC RF), pursuant to which a citizen or legal entity holding the exclusive right to an intellectual activity result or to a means of individualization has the right to use such result or such means at their own discretion in any manner not contrary to law, the court found that the elements of an offense were present. Any use of an intellectual activity result or a means of individualization, including introduction into civil circulation by way of sale, is permitted only with the consent of the right holder.
In determining the amount of compensation, the court applied the provisions of Article 1301 of the CC RF (for copyright infringements) and Article 1515 of the CC RF (for trademark infringements). Taking into account the nature of the infringement, its duration, the degree of the infringer's fault, as well as the proportionality of the compensation to the consequences of the infringement, the court partially granted the claims, ordering the defendant to pay 2,500 rubles to each of the right holders.
Online evidence and enforcement approach
This ruling illustrates the law enforcement practice whereby courts do not limit themselves to protecting only one intellectual property object if the infringer's action is seen as encroaching upon a bundle of rights (copyright and rights to a means of individualization). It is important to note that the very fact of posting information on the internet offering the sale of goods using another's designation is regarded by courts as an act aimed at using the intellectual property object for commercial purposes, even if the actual sale has not yet taken place or was of a one-off nature.
Block 3. Commentary by A.V. Leonov, Patent Attorney
The Risks of "Confectionery Copyright": Why Saving on a License Costs More
The case heard by the Voroshilovsky District Court of Volgograd is a textbook example of underestimating intellectual property risks in the small business and self-employment segment. At first glance, the awarded amount of 5,000 rubles may seem insignificant; however, the legal and reputational consequences for the entrepreneur are systemic.
1. Cumulative Effect of Claims.
- The key aspect of this case is the involvement of two right holders. In practice, this means that a business using popular images (film, animation, or game characters) risks receiving claims not only from the content-producing studio (copyright) but also from the trademark owner.
- In such instances, compensation is awarded independently from each. Had the claims been asserted in full (at the minimum statutory threshold of 10,000 - 100,000 rubles per object), the claim amount could have exceeded 20,000 - 200,000 rubles, excluding court costs and expert examination expenses.
2. Proving Online Use.
- Courts consistently recognize the posting of product photographs featuring others' characters on social networks, aggregator websites, or classified boards (e.g., Avito, Yarmarka Masterov) as a public use of an intellectual property object.
- A screenshot of the web page, certified by a notary (or via a web archiving service), constitutes sufficient evidence of infringement.
- Deleting the post after receiving a cease-and-desist letter does not relieve liability for the period during which the information was publicly available.
3. Recommendations for Business.
- Conduct a preliminary verification of the images used for protectability (Rospatent registers, author databases).
- Refrain from using well-known characters ("Smeshariki," "Masha and the Bear," Marvel/DC heroes, etc.) without entering into a license agreement.
- Develop their own original designs or use images that have fallen into the public domain or are under free licenses (complying with the terms of such licenses).
- Upon receiving a cease-and-desist letter from the right holder or their representative, promptly enter into dialogue for pre-trial dispute resolution, as court costs will inevitably exceed the cost of a potential license or nominal compensation.
The prospect of appealing this ruling appears low, since the fact of using another's intellectual property object for commercial purposes without an agreement is indisputable in the presence of properly documented evidence (screenshots, test purchases).
Related Materials
Further IPPRO analysis on character rights protection, trademark enforcement, and judicial practice: