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Battakhov P.P.
Senior Researcher of the Institute of Gnivartsva and Law of the Russian Academy of Sciences DOI: 10.24411/2520- 6990-2020-11622 LICENSE AGREEMENT AS A LEGAL INSTRUMENT OF TRANSFER EXCLUSIVE RIGHTS TO
INDUSTRIAL PROPERTY
Abstract
The article analyses one of the contractual structures provided for by civil law - the license contract, with special emphasis on the peculiarities of the conclusion of this contract taking into account the specifics of exclusive rights to certain objects of industrial property.
Keywords: license agreement, industrial property, exclusive rights, granting of exclusive rights.
It should be noted that the adopted part four of the Civil Code of the Russian Federation for the first time in the history of legislative regulation of intellectual property rights contains general provisions (chapter 69 of the Civil Code of the Russian Federation). At the same time, the entry into force of these norms of the Civil Code of the Russian Federation caused new theoretical issues. One such issue is the question of determining the legal nature of the license agreement, which, in fact, is not an innovation of the fourth part of the Civil Code of the Russian Federation.
A definition of the license contract is contained in Subparagraph 1 of Paragraph 1 of Article 1235 of the Civil Code of the Russian Federation according to which under the license contract one party (licensor) provides or undertakes to grant to other party (licensee) the rights of use of result of intellectual activity or means of individualization in the limits provided by the contract. At the same time, two varieties of such provision are identified: a simple (non-exclusive) license and an exclusive license.
On the basis of the legislative definition of the licensing contract, by its legal nature it can be built according to the model of a real or consensual contract, which led to a serious theoretical discussion. In the legal literature, the opinion is increasingly expressed about the error of the legislator with regard to the assignment of the license contract to real contracts on various grounds. Thus, M.V. Telyukin, referring to paragraph 3 of article 154 of the Civil Code of the Russian Federation, in according to which the expression of the agreed will of the parties is necessary for the conclusion of the contract, concludes that "Since the wording of this rule does not mention that something else is necessary for the conclusion of the contract (in addition to the agreed will), the rules on real transactions are in fact contrary to the said provision of the Code[1]."
According to E.P. Gavrilov, who also denies the possibility of concluding a real license contract, "such contracts, for the conclusion of which the delivery of any material object (thing, money) is required, are considered real. In order to deliver a material object, it is necessary to have the right to own this object. " At the same time, the author refers to the lack of competence of "possession" in the sphere of intellectual rights, as a result of which he concludes that there can be "no real contracts in terms of intellectual rights; All treaties in this area are consensual. " Furthermore, as one of the
arguments supporting his position, he points out that "the exclusive right to protected objects knows no right of possession and cannot know, because the objects in question are intangible, ideal[2]."
A similar position is taken by A. B. Babayev, who claims that it is sufficient to analyze their subject matter in order to classify a contract as real or consensual. In the case where the subject of a legal relationship is a work or service, the contract may be exclusively consensual, as the performance of such a contract implies a length of time. If the subject of the transaction is things, accordingly, the contract can be built according to the model of both real and consensual[3].
According to E.A, Krasheninnikov, it is already in the design of a real civil contract that such a contract is related to things that are transferred to temporary possession or ownership[4]. The same understanding of the real design of the treaty is contained in the works of V.N. Castalski. In his opinion, in solving this issue, attention should be paid to the intangible nature of the object of the contract[5].
In our opinion, the reference to the intangible nature of intellectual property objects, including the nature of industrial property objects, as a reason for the impossibility of building a real license agreement is erroneous.
If we refer to the literal interpretation of paragraph 2 of Article 433 of the Civil Code of the Russian Federation, we can conclude that the legislator, speaking about the transfer of property, understands not only objects of the material world, i.e. things, objects, as well as intangible objects of civil law, for example, securities, money. Moreover, article 128 of the Civil Code of the Russian Federation refers to property rights in the category "property." Therefore, limiting the object of transfer only to material objects necessary for the design of a real contract unduly limits the possibility of concluding the structures of civil law contracts provided for by law, as well as contradicts the principle of freedom to conclude a contract.
As can be seen from the presented positions of the authors, we note that some of them (for example, E.P. Gavrilov) by the property that needs to be transferred for the execution of the license agreement, understand the objects of intellectual property themselves, i.e. the results of intellectual activity and the means of individualization equated to them. We believe that this is their mistake, since this position does not take into account
the fact that the object of competence is not the result of intellectual activity or the equivalent means of individualization, but the right to use it. As a result, an intellectual property object cannot be the "object" to be transferred. In the event that the subject matter of the contract is an essential object of intellectual property, it will be transferred pursuant to the transaction, but in such a case we are entitled to talk about the transfer of such object, as the material carrier is the thing to which the right of ownership arises. That is why we should qualify such relationships as buying and selling things with the transfer of ownership to them or as relationships involving the transfer of things to use and/or possession.
With regard to the license agreement, the legislator has established the enforcement of exclusive rights in respect of the intellectual property object by transferring the right to use the object within certain limits, i.e. granting the right to use, rather than transferring (alienating) the object (original or copy) of intellectual rights. On the basis of this understanding of the nature of the licensing relationship, it can be concluded that the inability to exercise ownership of such a specific object of law cannot be the basis for classifying the licensing contract as real or consensual.
We believe that such reasoning is wrong. It should be noted once again that the existence of a real model of a licensing contract is provided for by law. In one of his works, M.I. Braginsky, considering the motives of the legislator in choosing a particular model of the treaty, notes the following: "The need for the design of a real treaty arises when the legislator considers it necessary to protect the party to which the thing is to be transferred to the other party. This is due to the fact that under a consensual contract, a party may have the counterparty perform in kind this obligation assumed by him (to transfer the thing)[6]. "
A similar position is taken by I.S. Chuprunov, who notes that the real model of the contract is primarily aimed at protecting the interests of the transmitting party in the contract, as before the transfer the buyer has not yet been entitled to claim it[7].
The second question was what was meant by the transfer of law. It is known that "law" is an ideal category. At the same time, it should be noted that the legislator uses the term "provision" instead of "transfer" in the construction of the license contract. "Transfer of right" as a term is used by the legislator in the design of the treaty on alienation of the exclusive right to intellectual property objects. At the same time, it should be agreed with the view expressed in the legal literature that the transfer of the right implies its termination from the transferring right holder and the emergence of the right of the same name for the benefit of another person - the buyer under the contract[8]. If, in accordance with the contract, the right holder grants the corresponding right of the user without alienating the exclusive right, the legislator uses the concept of "granting the right."
One of the issues that we believe needs to be addressed is the mechanism for transition or the granting of subjective rights. However, the term "subjective rights," in its classical sense, should be understood as "a measure of possible conduct assigned to a competent
person in order to satisfy his interests, ensured by the assignment of duties to others[9]." This issue constantly attracts the attention of many scientists.
In particular, O.A. Handsome and N.I. Matuzov, considering the category "possibility" used in the construction of subjective law, refer to its philosophical character - it is meant to be based on the law, legal pos-sibility[10], the permissibility, the permissibility and the permissibility of any action on the part of the State[11].
K.I. Sklovsky came to an interesting conclusion when considering the possibility of transferring the right. In his opinion, the right is not transferred at all, it ceases in one person and arises in another person. This follows from the substance of the law, with respect to which there is no need to design the mechanism for its transfer. Moreover, the author concludes that not only is the right not transferred, but there is no obligation to transfer the right itself[12].
A.S. Yakovlev also believes that "the right cannot, unlike a thing, be handed over... Because of its intangible nature. A transfer of a right does not require the same actions as a transfer of a thing, or more precisely, no action is required at all except to reach agreement on that transfer itself[13]. "
Having reached this conclusion, the author also highlights a feature such as the onetime of the transfer of rights: "The act of transfer of rights means the simultaneous termination of the relevant right on the party of the person transmitting and its occurrence in the person receiving[14]."
Some of ardent opponents of the concept of "transition of the right" V.A. Belov notes what can be transferred (to hand) a thing, and the right cannot be transferred neither physically, nor symbolically. As a result, the transfer cannot have a right of other external manifestation than the agreement of the parties[15].
If such a position is adopted, it turns out that if the contract does not indicate a certain fact to which the transfer of the right is timed, the right passes at the moment of conclusion of the contract and it is not necessary to oblige the right holder to such transfer. First, the right has already arisen from the successor, and second, the original right holder, at all his desire, is unable to take any action to transfer the right, including in view of his lack of an obligation to do so.
A different view is that the transfer of a claim and the transfer of a right do not always coincide in time. Thus, L. Chegadze notes that "reaching an agreement on the transfer of the right is not always the simultaneous transfer of the right... For although the right is ideal, the claim it confirms (and transmitted with it) is material^]. "Another supporter of the transition of law V.V. Rovny points out that in itself property rights cannot be the subject of a contract, the subject of the right have a specific thing, which is subject to transfer. And when a thing is alienated, it automatically follows it and passes from one person to another at the time of such transmission and the actual right to it itself[17]. With regard to intellectual property objects, he notes: "In such cases it is impossible to alienate the most ideal object, instead of it the exclusive right (to this object) is alienated[18]."
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We are closer to the second position, which provides for the transition of law. First, based on the analysis of the current rules of law, we can conclude that the legislator is based on the possibility of transition and granting the right, such terms are used in many articles of the Civil Code of the Russian Federation (E.g. articles 58, 79, 111, 129, 131, 142, 216, 353, etc.)Sec-ond, based on the position of the supporters of the first point of view that it is impossible to pass/grant the right, the natural question arises: Where do the rights and obligations of the successors come from, how do they arise? Representatives of this position do not answer the question posed. If we consider the emergence of a law in isolation from its succession, in practical terms, such a break in the unity of rights and obligations may lead to violations of the rights of both third parties and of the right of the holder himself.
There is no doubt that by the transition of rights we cannot mean any physical transfer of the right or the commission of certain acts for the purpose of such transfer. Through the establishment of a transition/grant of a right, the legislator establishes an enforcement mechanism. In addition, because the term is very conditional, it symbolizes the interdependence of the legal capacity of the assignor from that of the grantor.
On the basis of this understanding of the transfer/granting of the right, the design of the real license contract loses any legal meaning if the parties have not defined in the contract some legal fact with which the granting of the right is related.
Essential terms of the license agreement are its subject matter, indication of specific ways of its use. There is a rule that if any use is not specified in the contract, it is not considered permitted to the licensee. The latter is entitled to use the relevant object only within the limits and in the ways expressly provided for in the contract. In addition, the essential terms of the license agreement are the condition on the territory within which the use of the intellectual property object is permitted, as well as the period for which the license agreement itself is concluded.
The nature of the exclusive right to certain objects of industrial property determines the peculiarities of the corresponding licensing relations.
When a contract determines the granting of the right to use the secret of production (know-how), both parties have the same duty to preserve its confidentiality, which must be respected until the exclusive right to the relevant know-how is terminated.
In turn, the license agreement granting the right to use the computer program or database may be concluded in the form of an accession agreement, the terms of which are set out on the purchased copy (on the natural object) of such objects or on their packages. The beginning of the use of such programs or databases by the user, as defined by these conditions, means his consent to the conclusion of the contract. This type of license agreement is known as the wraparound license. It should be noted that such an opportunity to conclude mass contracts was provided for in the previous legislation. In particular, the provisions of article 32, paragraph 2, of Russian Law No. 5351-1 of 9 July 1993 "On
Copyright and Related Rights" allowed for the sale of copies of computer programs and databases and the mass granting of access to them to apply a special procedure for concluding contracts. This procedure was provided for in special Law of the Russian Federation of 23 September 1992 No. 3523-1 "On Legal Protection of Programs for Electronic Computers and Databases."
It is noteworthy that, taking into account the need to develop legislation providing for a simplified procedure for the conclusion of such contracts, the Draft Civil Code of the Russian Federation has developed provisions on the wrapping license in more detail (paragraph 5 of Article 1286 of the Civil Code of the Russian Federation in the version of the Draft) compared to the current version of the Civil Code of the Russian Federation. The project defines the type of license agreement in question as a license agreement with the user of the computer program or database, concluded in a simplified manner, at the same time, taking into account its specificity, establishes a rule according to which the rules of Article 1235 of the Civil Code of the Russian Federation on the license agreement will not apply to this contract in full. The draft contains special rules establishing the subject matter of the contract, requirements to its form, methods of conclusion, term of validity.
In the license agreement granting the right to use the trademark, the licensee has an important obligation arising from the legal essence of the said objects of industrial property - the obligation to ensure compliance with the quality of goods produced or sold, on which the licensee places the corresponding individualizing mark. Such a requirement is justified because the consumer is used to trusting (or not trusting a sign) based on his own preferences and requirements for the quality of products or services. That is why the legislator has established a rule on the joint liability of the licensee and the licensor in case the consumer demands the licensee as the manufacturer of the goods with defects, as the consumers have purchased the goods with the so-called "common" trademark.
The license agreement on the use of intellectual property objects as part of a complex object also has its own features as a general rule. In particular, in accordance with paragraph 3 of paragraph 1 of Article 1240 of the Civil Code of the Russian Federation, such a contract is concluded for the whole duration of the exclusive right to such an object and in respect of the whole territory of its validity. The rule set out in this form allows the licensee to make the most effective use of the relevant exclusive right to the complex object as a whole. However, it should be borne in mind that this rule is dispensative, that is, otherwise may be provided for in a specific license contract.
The same applies to the right to use the exclusive right to use an object of intellectual property as part of a single technology, as in most cases the basis for the creation of a single technology is the relevant contracts with the right holders of rights to the objects included in it (art. 1550 of the Civil Code of the Russian Federation). However, such a treaty has its own characteristics. Thus, one of its essential conditions is the plan for the implementation of a single technology, and its non-
implementation is the basis for the termination of the contract in court and the transfer of rights to a single technology to the Russian Federation or its subject (paragraphs 2 and 7 of article 10 of the Federal Law "On the Transfer of Rights to Single Technologies") [19].
The list of the used literature:
1. Telyukin M.V. Concept of transaction: theoretical and practical aspects//Lawyer. 2002. № 8. Page 27.
2. Gavrilov E.P. General Provisions of Intellectual Property Law: Short Comment to Chapter 69 of the Civil Code of the Russian Federation/Economy and Law, 2007, No. 9.
3. Babayev A.B. Agreement on Innovation, Provision of Derogation and Debt Forgiveness//Legisla-tion 2001. № 9. Page 16.
4. Krasheninnikov E. Comment on article 409 of the Civil Code of the Russian Federation//Economy and law. 2003. № 9. Page 102.
5. Castalski V.N. Pledge of exclusive rights. M.: Statute, 2008. Page 62.
6. Braginsky M.I., Vitryansky V.V. Contract law. Book Two: Contracts for the Transfer of Property. M.: Statute, 2000. Page 632.
7. Chuprunov I.S. Contract on Alienation of Exclusive Right and License Contract as a Form of Disposal of Exclusive Right/Journal of Civil Law, 2008, No. 1.
8. Lomidze O. Alienation of binding rights//Economy and law. 2002. Appendix No. 6. Page 21.
9. Tolstoy Yu.K. To the theory of legal relations. L.: Izdat-vo Leningr. un-that, 1959. C. 45 - 46.
10. Beautiful O.A. Civil legal relationship as a legal form of public legal relationship//Civil legal relations and their structural features: Sat. Posted/Sverdlov. ropng. in-t. Sverdlovsk: SYuI, 1975. Page 18.
11. Matuzov N.I. Personality. Rights. Democracy: Theoretical problems of subjective law. Saratov: Sarat publishing house. un-that, 1972. Page 100, 127.
12. Sklovsky K.I. Transfer of Right and Obliga-tion//VAS Gazette of the Russian Federation. 2008. № 7. C. 6 - 15.
13. Yakovlev A.S. Property Rights as Objects of Civil Legal Relations: Theory and Practice. M.: Axis-89, 2005.
14. Yakovlev A.S. There. P. 62.
15. Belov V.A. Singular succession in obligation. The 3rd prod. M, 2002. Page 150.
16. Chegadze L. To the question of the mechanism of law transition (requirements)//Economy and law. 2002. № 6. Page 72.
17. Rovny V.V. Sale of property rights: Referring to Rule 4 of Article 454 of the Civil Code of the Russian Federation//Law. 2003. № 1. Page 84-98.
18. Level V.V. There.
19. Federal Law No. 284-®3 of 25.12.2008 "On Transfer of Rights to Unified Technologies"//Russian Gazette, No. 266, 30.12.2008.
