Intellectual property mediation

Intellectual property disputes are becoming increasingly common: businesses are highly active online, build brands, commission design work and software, and publish content on social media. When someone uses another person's logo, photograph, text, music or code without permission, a conflict arises that can turn into lengthy and expensive litigation. Mediation offers a different route: negotiations with an independent intermediary that help the parties agree on the future use of the work, compensation and the rules of cooperation.

In Kazakhstan, mediation is conducted under the Law of the Republic of Kazakhstan "On Mediation" and, where the dispute is already before a court, in accordance with the procedure laid down in the Civil Procedure Code. The rights in intellectual property themselves are governed by civil legislation and by specific laws on copyright and on trade marks.

Which disputes and situations are suitable

• use of photographs, texts, videos and music without the author's consent, including on websites and social media;
• disagreements between a client and a contractor over the rights to a design, software or advertising video that has been created;
• disputes over the similarity of trade marks, names or packaging;
• breaches of the terms of licence agreements: exceeding the permitted territory, term or methods of use, or failure to pay royalties;
• conflicts between co-authors and members of creative teams over the allocation of rights and income;
• disputes between bloggers and companies over advertising content and its reuse;
• disagreements between former partners over the right to use a shared brand after their cooperation has ended.

How the procedure works

1. Initial approach and consent of the parties. One party proposes mediation and the other agrees; the parties choose a mediator and conclude a mediation agreement, usually with separate confidentiality provisions.
2. Gathering information. The mediator establishes which work is the subject of the dispute, who owns the rights and on what basis, and how the work has been used.
3. Identifying interests. A demand to "take it down" or "pay up" often conceals other interests: recognition of authorship, protecting business reputation, or a wish to continue working together.
4. Developing options. Possible solutions are discussed: a licence for future use, a one-off payment of compensation, crediting the author, rebranding with a transition period, or dividing up the territories of use.
5. Agreeing and signing. The terms are set out in a written settlement agreement, to which a licence or other agreement is attached where necessary.

Advantages over litigation

Intellectual property litigation often requires expert examinations and complex evidence, and the public nature of the proceedings can harm the reputation of both parties. Mediation is confidential: the details of the negotiations, the commercial terms and information about technologies do not become public. The parties can reach solutions that a court has no power to order, such as entering into a new partnership agreement or agreeing on joint promotion. In addition, a swift settlement is particularly important where content and brands quickly lose their relevance.

The mediator's role

In disputes of this kind, the mediator needs to understand the specific nature of intellectual property, the particularities of the digital environment and of licensing, in order to help the parties discuss the issues in substance. At the same time, the mediator remains independent and impartial: they do not decide who the author is or whether an infringement has occurred, but help the parties weigh up the risks, assess the alternatives and work out a mutually acceptable solution. The legal assessment of the situation is provided to the parties by their own lawyers or patent attorneys.

The outcome and its legal effect

A written settlement agreement is binding on the parties and is performed by them voluntarily. It records specific actions: removing or replacing materials, paying remuneration, the procedure and period for further use, crediting the author, and waiving mutual claims to a defined extent. If the dispute was before a court, the agreement may be submitted to the court for approval in accordance with the procedure established by procedural legislation. The agreement cannot transfer rights that a party does not hold and must not infringe the rights of third parties, such as other co-authors.

Limitations: when mediation is impossible or inadvisable

• where an urgent interim measure is needed to stop large-scale infringement, which only a court can order;
• where the infringement is deliberate and systematic and the infringer has no intention of negotiating in good faith;
• where the dispute concerns the validity of a trade mark registration or another matter that can be decided only by the competent authority or a court;
• where the dispute affects the rights of persons who are not taking part in the mediation and without whom no solution is possible.

How to prepare

Gather evidence of your rights: source files, drafts, contracts, registration certificates, and correspondence with the client or contractor. Record the facts of use of the work: dates, places of publication and extent. Decide what you want: an end to the use, monetary compensation, licence fees or cooperation. Consider what information you are prepared to disclose, and discuss additional confidentiality safeguards with the mediator.

Example (hypothetical)

A photographer found his pictures in an advertising campaign for a local café. The café owner claimed to have received the images from a designer whom he had paid for the layouts. During a mediation involving all three, it emerged that the designer had taken the photographs from an openly available portfolio without checking the terms of use. The parties agreed that the café would receive a licence to use the pictures for an agreed period, the photographer would receive a fee and be credited as the author, and the designer would reimburse part of that amount. Litigation was avoided, and the photographer gained a new regular client.

How to choose a mediator on the portal

In the portal's registry of professional mediators, filter by city and by the "Intellectual property" type of mediation. If the parties are in different cities, look for specialists who work online. Review the mediator's experience in copyright, trade marks, IT or media. You can submit an application online without disclosing any commercial details at this stage.

This material is provided for general information only and does not constitute legal advice. Please check with a mediator whether mediation is suitable for your particular situation.