Part II: Copyright and Neighbouring Rights · This part outlines the legal basis for the protection...
Transcript of Part II: Copyright and Neighbouring Rights · This part outlines the legal basis for the protection...
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Part II: Copyright and Neighbouring Rights
A. Legislative framework for the protection of copyright and neighbouring rights
This part outlines the legal basis for the protection of copyright and neighbouring rights and
gives an overview of the official institutions which play an important administrative role in this
domain.
1. Laws dealing with the protection of copyright and neighbouring rights
Poland has a long tradition in the protection of copyright. The country’s first Copyright Act
was enacted as early as 1926 which was superseded by the Copyright Act of 1952. The
currently applicable statute which repealed the previous Copyright Act of 1952 is the Act of 4
February 1994 on Copyright and Neighbouring Rights, effective 24 May 1994 (hereinafter
referred to as the “Copyright Act”)1. The 1994 Copyright Act raised the level of protection for
works and, in addition, introduced a protection for so-called neighbouring rights which was,
and to a certain extent is still, a novelty in Poland. The Copyright Act follows the continental-
European tradition and consequently distinguishes between the protection of works under
copyright and the protection of performers, producers of phonograms and broadcasting
organisations, as well as publishers of certain works since the amendments in the year 2000,
under a neighbouring right.
Since the early nineties, copyright and neighbouring rights legislation has undergone
significant changes both at the international and regional level. The Polish legislature
therefore intended to proceed to a comprehensive revision of the Copyright Act which had
already undergone minor changes in 1997. The work, which started in the second half of
1998, aimed at the implementation of international treaties, primarily the TRIPS Agreement,
but to a certain extent also the WIPO Treaties and the elimination of a number of
shortcomings which arose out of the application of the provisions introduced in 1994. The
undertaking turned out to be rather controversial and time-consuming and in view of the entry
into force of the TRIPS Agreement with regard to Poland on 1 January 2000, it was decided
to divide the law reform in two parts. The amendments which were required to bring Poland’s
1 The text of the Copyright Act of 1994 may be accessed on WIPO’s database of national IP laws at http://clea.wipo.int.
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Copyright Act in compliance with the TRIPS Agreement were included, together with a
number of amendments to other provisions of the copyright law, in the Act of 9 June 2000 to
revise the Act on Copyright and Neighbouring Rights, in force since 22 July 2000.
Further amendments, in particular the adjustment of the Polish Copyright Act to latest
developments in the law of the European Union in form of the so-called Copyright Directive2,
are left to future resolution.
Poland has also adopted sui generis protection for databases in a separate law, entitled Law
on the Protection Databases, which will enter into force on 10 November 2002 only. At the
same time, the Law also amends a number of provisions governing original databases in the
Copyright Act.
It may be worth adding that Poland is also in the process of introducing specific legislation on
electronic commerce. A draft law on electronic commerce had already been prepared for the
government by the Institute of Inventiveness and Protection of Intellectual Property of the
Jagiellonian University in Cracow. This draft included not only provisions on electronic
commerce on the basis of the relevant Directive of the European Union3, but contained also
rules on data protection and conditional access. Although the draft found the consent of the
competent Ministries and the Committee for EU Integration, a new draft was prepared after
the elections and submitted to the general director for the protection of data. The legislative
process in this matter is hence ongoing.
2. International Conventions At present, Poland is a member of four international conventions which govern the protection
of copyright and/or neighbouring rights:
- the Berne Convention for the Protection of Literary and Artistic Works;
- the Universal Copyright Convention;
- the Rome Convention; and
- the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
2 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, O.J. of 22 June 2001 L 167/10. 3 Directive 200/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (Directive on electronic commerce), O.J. of 17 July 2000 L 178/1.
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Poland has not adhered to the Geneva (Phonograms) Convention nor has the country so far
signed or ratified the WIPO Treaties.
In more detail, the following should be noted with regard to Poland’s membership in
international conventions:
a) Berne Convention
Poland has been a member of the Berne Convention since 28 January 1920. The country
ratified the Rome Act on 21 November 1935 by which Poland was bound until its accession
to the Paris Act in 1994. With effect from 4 August 1990, Poland adhered to the
administrative provisions of the 1971 Paris Act and subsequently ratified the substantive
provisions of said Act, effective 22 October 1994.
b) Universal Copyright Convention
Poland joined the Universal Copyright Convention with effect from 9 March 1977. The
country is bound both by the initial text of the Convention which dates from 1952 as well as
by the Paris Text of 1971.
c) Rome Convention
Poland deposited its instrument of accession to the Rome Convention on 13 March 1997 and
became bound by it on 13 June 1997. Upon adhesion to the Rome Convention, Poland
made a number of reservations in accordance with Articles 5(3), 6(2) and 16(1)(a)(i), (iii), (iv)
and (b) of the Convention4:
- As far as the points of attachment for phonograms are concerned, Poland does not
apply the criterion of publication (Article 5(3) of the Convention).
- Broadcasts are protected only if the headquarters of the broadcaster are located in
another Contracting State and the broadcast was transmitted from a transmitter
situated in the same Contracting State (Article 6(2) of the Convention).
4 Industrial Property and Copyright 1997, page 170.
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- With regard to broadcasters, Poland does not apply the provisions of Article 12 Rome
Convention in respect of the uses of a published phonogram (Article 16(1)(a)(i) of the
Convention).
- With regard to schools, Poland does not apply the provisions of Article 12 Rome
Convention as regards phonograms the producer of which is not a national of another
Contracting State and only on the basis of reciprocity (Article 16(1)(a)(iii) and (iv) of
the Convention).
- Poland does not apply the provisions of Article 13(d) of the Rome Convention and
hence excludes rights of broadcasting organisations in respect of the communication
of their broadcasts made in places accessible to the public against payment of an
entrance fee (Article 16(1)(b) of the Convention).
d) TRIPS Agreement
Poland also became a member of the World Trade Organisation and hence the TRIPS
Agreement with effect from 1 July 1995. Poland made use of the faculty provided in Article
65(3) of the Agreement to postpone the application of its provisions other than Articles 3-5
TRIPS for a further period of four years. Consequently, the TRIPS Agreement fully took
effect with regard to Poland only on 1 January 2000.
e) Self-executing nature of international treaties
It should be noted that Article 7 of the Copyright Act sets forth that in case international
agreements to which Poland is a party provide for a higher level of protection than envisaged
under the Copyright Act, the protection under the respective international convention
prevails. This rule is in compliance with the Polish Constitution which provides that
international treaties are self-executing (Article 91 Polish Constitution). It is worth noting that
the more beneficial rules arising out of international conventions do not only apply with
regard to beneficiaries under the relevant conventions, but also to works whose country of
origin is Poland.
Reportedly, the Polish Ministry of Culture and Art took the position on 21 June 1996 that the
level of protection provided for in international treaties and not the provisions of domestic
copyright law determine the standards of protection applied to foreign works and other
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protected subject matter of foreign origin5. Note that such a rule would not be in compliance
with Article 5(1) Berne Convention which requires that authors may in the countries of the
Union other than their country of origin enjoy the rights which their respective laws do now or
subsequently grant to their nationals as well as the rights under the Convention. The decision
could therefore only refer to reservations made under the Rome Convention as a result of
which the scope of protection granted to foreign beneficiaries would be lower than in the
case of Polish beneficiaries or the rule of comparison of terms (Article 7(8) Berne
Convention).
3. Bilateral agreements
Poland has concluded bilateral agreements in the field of copyright and neighbouring rights
with the European Union and the United States. Similar agreements have also been
concluded by Poland at the level of Ministers of Culture with Lithuania and the Russian
Federation.
As far as the Europe Agreement of 16 December 1991 with the European Union is
concerned, which entered into force on 1 February 1994, Article 66 required Poland to
incorporate the acquis communautaire in the intellectual property field and to adhere to the
relevant international conventions within five years from the entry into force of the
Agreement, i.e. by 1 February 1999.
The Trade Agreement with the United States of 26 July 1991 obliged Poland to reach a
certain level of copyright protection and, inter alia, to adhere to the Paris Act of the Berne
Convention. In this context, it is worth noting that, already in 1927, there had been an
exchange of notes between the US and Polish governments granting full national treatment
to works of US citizens in Poland and to works of Polish citizens in the United States6.
5 Barta/Markiewicz in Nimmer, International Copyright Law and Practice, Poland, para. 6[2] ). 6 Reported in Barta/Markiewicz in Nimmer, International Copyright, para. 6[3].
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4. Institutions dealing with the protection of copyright and neighbouring
rights Various institutions deal with the protection of copyright and neighbouring rights in Poland.
The key organisation in the copyright field is the Ministry of Culture and National Heritage.
The Ministry is competent for copyright policy and is involved in the preparation of the
relevant legislative framework for copyright and neighbouring rights protection. The Ministry
of Culture is also competent in the field of administration of rights. In particular, the Ministry
of Culture approves the establishment of and supervises collecting societies. In addition, the
Ministry appoints the members of the Copyright Commission and is competent for the review
of the Commission’s decisions on the remuneration tables. The Ministry of Culture and
National Heritage has no power insofar as enforcement is concerned. Note that the Minister
of Culture and National Heritage is entitled on the basis of Article 127¹ Copyright Act to
request from the Council of Ministers the appointment of a team to counteract copyright and
neighbouring rights infringements. Such a committee was established consisting of members
from the private and the public sector. The committee was entrusted with a detailed review of
the enforcement system. To this end, four working groups were established to deal with the
analysis of the market situation, legislation, education and the so-called “stadium”, a large
market with distribution of counterfeit and pirate goods. The main aim of the Committee is to
prepare a report which will be the first in depth review of the enforcement of copyright and
neighbouring rights.
As already indicated, the Copyright Commission is entrusted with the review of remuneration
tables and a number of other issues in the field of rights management.
As far as enforcement is concerned, which will be dealt with in more detail in Part III, the
Ministry of Justice overlooks the court system and the prosecutors. There are only informal
specialisations, no specific courts exist for intellectual property. However, both the police and
the customs administration internally have specialised services for intellectual property.
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B. Substantive legal issues in the field of copyright and neighbouring rights 1. Subject matter of protection As already indicated, the Polish Copyright Act protects works under copyright and other
objects under neighbouring rights. The rights of makers of databases are protected by a so-
called sui generis right in the Law on Databases.
a) Copyright
The protection of the Polish Copyright Act extends first of all to original works in the sense of
Article 2(1) Berne Convention. Pursuant to Article 1(1) of the Copyright Act, the subject
matter of copyright is any expression of creative activity having individual character and
manifested in any material form, regardless of the value, intended purpose and manner of
expression thereof. Note that in application of Article 2(2) Berne Convention, for a work to
enjoy protection, it appears to be a prerequisite that the work be manifested in some material
form. The work is protected from the moment it is made, even if incomplete, without having to
comply with formalities of any kind (Article 1(3) and (4) Copyright Act).
The Polish Copyright Act also contains a non-exhaustive list of works which is divided in nine
subcategories (Article 1(2) Copyright Act). The list contains first of all literary and artistic
works in the sense of Article 2(1) Berne Convention, such as works expressed in words,
mathematical symbols or graphic signs, three-dimensional artistic works, photographic and
architectural works, musical works and dramatic works as well as audiovisual works.
Computer programs are protected as literary works under Article 1(2) Nr. 1 Copyright Act and
hence fulfil the conditions set forth in Articles 10.1 TRIPS and 4 WCT. The Polish legislature
chose to protect industrial designs also by copyright (Article 1(2) Nr. 5 Copyright Act) which
is acceptable under Article 2(7) Berne Convention. In fact, it is possible that industrial
designs are protected cumulatively under the Copyright and the Industrial Property Act7. Note
one curiosity in the list of works: unlike in most other copyright laws of the world, string
instruments are protected as a category of works in Article 2(1) Nr. 4 Copyright Act. Whether
the protection concerns the shape of the instrument or the sound quality, is unclear8.
7 Barta/Markiewicz in Nimmer, International Copyright,, Para. 2[4][c]. 8 Barta/Markiewicz in Nimmer, International Copyright,, Para. 2[2].
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Protection extends also to derivative works which are made on the basis of the work of
another author, such as translations, transformations and adaptations (Article 2(1) Copyright
Act). Likewise, the Polish Copyright Act protects collective works, i.e. collections, anthologies
and selected pieces, including databases constituting the author’s own intellectual creation if
the selection made, the arrangement or the composition is creative in character (Article 3
Copyright Act). Article 3 could benefit from clarification if its language was adjusted to Article
10.2 TRIPS to express that “compilations of data or other material, whether in machine
readable or other form” also enjoy protection under the conditions of Article 3. In both cases,
the protection is of course without prejudice to the rights in the original work used in the
derivative or collective work.
Protection under the Copyright Act does not extend to normative texts and the drafts thereof,
official documents, documentary material, devices and symbols, description of patents and
other protection titles nor to mere news items. The exemptions of such creations from
protection appear to be justified on the basis of Article 2(4) and (8) Berne Convention.
b) Neighbouring Rights
The amendments to the Copyright Act as adopted on 9 June 2000 extended the subject
matters of neighbouring rights, which hitherto comprised performances, phonograms and
videograms as well as broadcasts, to cover also previously unpublished editions as well as
critical and scientific editions, similar to the protection provided for in Articles 4 and 5 of the
European Union’s Duration Directive9. The subject matters are defined in more detail as
follows:
- Performances
Both a work and an expression of folkore can be the subject of an artistic
performance. Artistic performances include the acts of actors, reciters, conductors,
instrumentalists, singers, dancers, mimes and other persons making a creative
contribution to the creation of a performance (Article 85 Copyright Act). This definition
appears to be rather broad. The enumeration of acts which may qualify as a
performance is non-exhaustive. In addition, any person making a creative contribution
to the creation of a performance is a performer. This would apply that a certain
9 Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights, O.J. No. L 290/9 of 24 November 1993.
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degree of creativity is required in order to qualify as a performance. To avoid any
unnecessary ambiguity about the scope of the notion of “performance” and/or
“performer”, it is suggested to adopt the definition as provided for in Article 2(a)
WPPT.
- Phonogram/Videogram
There is no definition of phonogram or videogram in the Copyright Act. As Poland is a
member of the Rome Convention, it is assumed that the notion of “phonogram” may
be understood, for the time being, in the sense of Article 3(b) Rome Convention.
However, it is recommended to add at least a definition of phonogram along the lines
of Article 2(b) WPPT to the Act.
- Broadcasts
As in the case of phonograms and videograms, there is no definition of the notion of
“broadcast” or “broadcasting” in the Copyright Act. Broadcasting has traditionally
been understood as the transmission for reception by the public of sounds or images
and sounds by wireless means including by satellite. This follows both from the Rome
Convention (Article 3(f)) and WPPT (Article 2(f)). Hence, under the Rome Convention
the concept of broadcasting does not cover cable. In view of Poland’s membership in
the Rome Convention, it is assumed that at least transmission for reception by the
public by wireless means is covered.
- Previously unpublished works
The Duration Directive of the European Union obliges Member States to protect the
publisher of a previously unpublished work which is already in the public domain
(Article 4 of the Directive). The Polish legislature implemented this feature of the
acquis communautaire by granting the publisher a neighbouring right in Article 99¹
Copyright Act.
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- Critical and scientific editions
Insofar as critical and scientific publications of public domain works are concerned,
Article 5 Duration Directive gives Member States of the European the option to grant
protection to such publications. The Polish legislature seemingly oriented itself at this
option when it introduced protection for critical and scientific editions under a
neighbouring right in Article 99² Copyright Act.
- Hitherto unprotected works
Article 99³ contains a curious provision which diverts from provisions in the Duration
Directive: the protection provided for in Articles 99¹ and 99² with regard to
unpublished public domain works and critical and scientific editions also apply to
“works and texts which because of their nature or time of creation have never been
covered by copyright protection”.
c) Sui generis rights
A national legislature can also decide to protect certain objects by a specific sui
generis right which is neither a copyright nor a neighbouring right. The most recent
example for this practice is the sui generis right of the maker of a database as
provided in the Database Directive of the European Union10. The Polish legislature
followed this approach by adopting a separate Law on Databases which provides for
an independent protection for makers of databases by means of a sui generis right.
2. Conditions for protection
There are different conditions which may need to be fulfilled in order to benefit from
protection under copyright law. These are:
10 Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal
protection of databases, O. J. of 27 March 1996 L 77/20, Art. 7 et seq.
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• Criteria of eligibility for protection or points of attachment, that means the question
whether foreign works and other subject matter may benefit from protection under
the Copyright Act;
• the question of applicability in time, ie. whether works and other protected subject
matter in existence prior to the enactment of the Copyright Act in 1994 and/or
prior to the accession to the relevant international conventions enjoy protection
under the Act; and
• the compliance with any formalities.
The situation under the Polish Copyright Act is as follows:
a) Eligibility for protection
The eligibility for protection varies depending on whether a subject matter of copyright,
neighbouring right or sui generis right is involved.
(aa) Works
Pursuant to Article 5 Copyright Act, works enjoy protection under the Copyright Act in
the following four cases:
• the author or one of the joint authors11 is a Polish national; or
• the work was first or simultaneously published in Poland or in the Polish
language; or
• the work enjoys protection on the basis of international treaties in the
copyright field to which Poland is a party, i.e. the Berne Convention, the
Universal Copyright Convention or the TRIPS Agreement at present.
There is no rule about authors who are not Polish nationals but have their permanent
residence in Poland. It is unclear whether such persons would be assimilated to
Polish authors (arg.e. Article 3(2) Berne Convention).
11 There is a controversy whether only one of the co-authors or all co-authors must be Polish nationals for a work to be protected under the Copyright Act. Barta/Markiewicz in Nimmer, International Copyright,, § 6 [1][b] concede that in view of the liberal interpretation of Article 5(1) it should be sufficient that only one co-author is a Polish national.
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(bb) Performances
According to Article 90 performances are protected under the Copyright Act if:
• the performer is a national of or is resident in Poland; or
• the performance took place in Poland; or
• the performance was published for the first time in Poland; or
• on the basis of international treaties, at present the Rome Convention or the
TRIPS Agreement.
cc) Phonograms and videograms
Phonograms and videograms are protected in accordance with Article 96 of the
Copyright Law only if:
• the producer has his residence or headquarters in Poland;
• on the basis of international treaties, i.e. the Rome Convention or the TRIPS
Agreement at present.
The criteria of publication or fixation are not taken into consideration. It should be
noted that Article 5 Rome Convention requires Contracting Parties to provide for the
criterion of nationality of the producer plus either the criterion of publication or fixation
or both. According to the WIPO Guide of the Rome Convention, no country may
exclude both criteria of fixation and publication at the same time. It is a case of one or
the other12. These criteria are also relevant for the eligibility for protection under the
TRIPS Agreement (Article 1(3)). As Poland has made a reservation with regard to the
criterion of publication when it acceded to the Rome Convention, at least the criterion
of fixation would have to be applied in addition to the criterion of nationality. In any
case, it is recommended to revisit the question of points of attachment for foreign
phonograms and to envisage an extension of the points of attachment to phonograms
and videograms first or simultaneously published or first fixed in Poland.
12 WIPO, Guide to the Rome Convention, 1981, para. 5.8, page 30/31.
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(dd) Broadcasts
Broadcasts are protected under the Copyright Act pursuant to Article 99 if:
• the broadcasting organisation has its headquarters in Poland; or
• on the basis of international treaties, i.e. the Rome Convention or the TRIPS
Agreement.
As already indicated, Poland has made a reservation on the basis of Article 6(2)
Rome Convention and hence demands that both criteria in Article 6(1) Rome, i.e.
headquarters of the broadcasters in a Contracting States plus broadcast transmitted
from a transmitter in a Contracting State, be met for a broadcast to enjoy protection
under the Copyright Act. It is therefore astonishing that the Polish legislature did not
retain this second point of attachment as a criteria for eligibility for protection under
the Copyright Act as well. It is therefore recommended to revisit this issue.
(ee) Databases
The specific sui generis protection for the maker of a database shall apply, according
to Article 5 Law on Databases:
• if the maker of the database is a national of or has his registered office in
Poland;
• if the maker of the database or his legal successor is an EU citizen or is
permanently resident in the EU;
• if the maker or his legal successor is a legal entity, established pursuant to
the laws of the respective Member State, having the registered office,
administrative management and the principal place of business in the territory
of the EU and its activity is connected with the economy of such Member
State;
• if international agreements so provide, whereby it must be noted that not
much progress has been made in WIPO with regard to a possible agreement
which would create an international protection for the rights of the maker of a
database.
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Note that the second and third alternative above will only be effective as of the date
when Poland will become a member of the European Union. On the same date, the
first alternative will cease to have effect.
(ff) Previously unpublished works and scientific and critical editions
It should be noted that there are no specific points of attachment for the remaining
categories of neighbouring rights, i.e. publishers of previously unpublished public
domain works and of critical and scientific editions. It could be considered to apply, by
way of analogy, the points of attachments which have been enacted with regard to
works generally above. This is for instance the solution the German legislature has
taken with regard to the points of attachment for scientific and critical editions in Sec.
124 German Copyright Act13. In any case, it is recommended that the legislature
clarify this point in the Copyright Act.
b) Applicability in time
The applicability in time is a complex question and will have to be discussed separately for
works, subject matters of neighbouring rights and sui generis rights.
(aa) Works
The applicability in time of the protection under the Copyright Act to works is, in view
of its complexity, examined best in two layers: first with regard to the entry into force
of the Copyright Law in 1994 and secondly with regard to the effect of the amending
provisions introduced in the year 2000.
(i) Rules introduced in 1994
In accordance with Article 124(1) Copyright Act, protection under the Act extends to:
- works created after the coming into force of the Act, i.e. after 24 May 1994;
- works in existence at the moment of entry into force of the Act, in respect of which the
protection had not yet expired under the provisions hitherto in force;
13 The German Copyright Act is accessible at WIPO’s database of national copyright laws at http://clea.wipo.int.
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- works that were not subject to copyright protection under the former rules, but which
would still enjoy protection under the rules of the Act introduced in 1994.
Note that the above third alternative leads to a revival of rights. Under Poland’s earlier
Copyright Statute, the Law No.234 on Copyright of 10 July 1952 and as amended last
in 1975, the term of protection for works was only 25 years (Article 26 of the 1952
Copyright Law). If that protection had expired at the time of entry into force of the
1994 Copyright Act, i.e. on 24 May 1994, the work revives in protection if on such
date the 50 years term of the newly introduced legislation had not yet expired with
respect to such work. The protection is, however, only revived with effect for the
future, which means that there is no protection for the time period between the lapse
of the 25 years term and the revival of the protection as a result of the 50 years term
as of 24 May 1994.
The revival of rights applies to foreign works only on the basis of reciprocity (Article
124(2) Copyright Act). This rule does, however, not affect Poland’s treaty obligations
with regard to the protection of pre-existing works arising out of Article 18 Berne
Convention and Article 9.1 TRIPS; but the latter rules do not require Poland to
provide for a revival with regard to works originating from another Berne Union or
WTO member. Broadly speaking, the treaty provisions require Poland to protect
foreign works protected under the Conventions that have not yet fallen into the public
domain through the expiry of the term of protection which was previously granted.
Protection in such cases cannot be conditional on reciprocity.
The Copyright Act also introduced rules with regard to the protection of acquired
rights in Article 127 Copyright Act. Where a use of a work took place prior to the entry
into force of the Law, i.e. 24 May 1994, such use may be completed on condition that
the right owner receives appropriate remuneration. It should be noted that such an
open-ended, rather broadly worded exception may be problematic with regard to EU
law. Although Article 10(3) Duration Directive requires that acquired rights of third
parties should be protected, the European Court of Justice clarified the conditions for
such a protection of acquired rights in a decision rendered 29 June 199914. The Court
confirmed that Member States are obliged to adopt the necessary measures to 14 Judgement of the European Court of Justice of 29 June 1999, Case C-60/98, Reference to the Court under Article 234 EC (ex Article 177) by the Tribunale Civile e Penale, Milan, Italy, for a preliminary ruling in the proceedings pending before that court between Butterfly Music Srl and Carosello Edizioni Musicali e Discografiche Srl (CEMED), Intervener Federazione Industria Musicale Italiana (FIMI).
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protect acquired rights of third parties, but such rules must not jeopardise the
application of the new terms of protection. This means that the protection must
necessarily be limited in time and is probably most easily afforded through a limited
sell off period. This also appears to be the opinion of the European Commission15. In
order to be in full compliance with Community law, it would be desirable to narrow
down the effects of this provision.
(ii) Amendments introduced in 2000
Moreover, the Act of 9 June 2000 extended the protection for works once again, this
time from 50 to 70 years. There are no specific transitional rules with regard to works
in the Amendment Act. It is assumed that on the basis of Article 2.1 of the
Amendment Act of 9 June 2000, the criteria set forth in Article 124 Copyright Act
apply likewise with the consequence that a revival of rights remains possible also with
regard to the 70 years term16. Note, however, that the Amendment Act 2000 does not
provide for specific rules on the protection of acquired rights with regard to works
whose protection revived. Whether Article 127 Copyright Act can be applied by way of
analogy is more than questionable17. Article 127 Copyright Act is an exception to the
revival in Article 124(1) Nr.3 Copyright Act and as such its application can hardly be
extended on the basis of analogy. In addition, it should be borne in mind that the
exception is rather broadly worded so that it would even not comply with the rules
established by the European Court of Justice with regard to the conditions of the
protection of acquired rights of third parties. The legal situation therefore would
benefit from clarification.
(bb) Subject matters of neighbouring rights
The amendments introduced in the year 2000 were of great importance for the so-
called “retroactive” protection of subject matters of neighbouring rights: under the
Copyright Act as introduced in 1994, performances, phonograms and videograms as
well as broadcasts were protected only if they had come into being no longer than 20
years before the entry into force of the Copyright Act. This means that only
15 Written question P-0841/98 of 11 March 1998 by MEP Anne-Marie Schaffner – Answer given by Mr Monti on behalf of the Commission on 5 May 1998, published in O.J. C 323/82 of 21 October 1998. 16 Barta/Markiewicz in Nimmer, International Copyright,, § 3 [2][b]; Badowski, Kleine Novelle zum polnischen Urheberrechtsgesetz von 1994, GRUR Int. 2001, 291(299). 17 Badowski, ibid., takes the view that the consent of the right owner will be required when continuing the prior use after the revival. On the other hand, Barta/Markiewicz in Nimmer, International Copyright, footnote 17, point out that the lack of an express rule on the protection of acquired rights of third parties may be questioned on the basis of constitutional law.
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performances and recordings made and programs broadcast after 24 May 1974 were
protected.
The Amendment Act of 9 June 2000 removed this restriction with the effect that as of
22 July 2000, protection applied to all performances and recordings made or
programs broadcast on or after 22 July 1950. In more detail, the rules under the new
legal provisions are as follows:
- performances enjoy protection under the Copyright Act, if they took place or if they
continued to enjoy protection after the entry into force of the Act (Article 125(1)
Copyright Act);
- phonograms and videograms enjoy protection if they were made or if they continued
to enjoy protection after the entry into force of the Act (Article 126(1) Copyright Act);
- broadcasts are protected under the new law if they were broadcast or continued to
enjoy protection after the entry into force of the Act (Article 126(1) Copyright Act).
Whereas the transitional provisions in Article 127 Copyright Act apply also to
performances, phonograms, videograms and broadcast, the Amendment Act of 2000
introduced specific transitional rules for the continued use of performances,
phonograms, videograms and broadcasts in its Article 2 Nr. 2 and 4. As in the case of
Article 127(1) Copyright Act, the use of a subject matter of copyright that occurred
before the entry into force of the Amendment may be completed provided that a
relevant remuneration is paid (Article 2 Nr.2 Copyright Amendment Act of 9 June
2000). This rule, in fact, corresponds to Article 127 Copyright Act and the same
criticism as above with regard to works applies. Nonetheless, it is important to note
that there is a specific rule for the continued sale of copies of phonograms and
videograms. The sale of copies of phonograms and videograms which commenced
before the entry into force of the Amendment Act may be completed within a period of
12 months from the entry into force of the Copyright Act, provided that such copies
have been notified with the Ministry of Culture and National Heritage within one
month from the entry into force of the amendments. Consequently, as far as the sale
of phonograms and videograms are concerned, the transitional rules are sufficiently
confined so as to comply with the rules established by the case law of the European
Court of Justice in the so-called Butterfly case.
65
Note that there are no specific rules with regard to the application in time of protection
of other subject matters of neighbouring rights, i.e. scientific and critical editions and
publications of previously unpublished works.
(cc) Sui generis rights
Pursuant to Article 15 of the Law on Databases, the legal protection shall apply to
databases that were made after the entry into force of the Law as well as to
databases existing on such date with respect to their utilization after such date and
without prejudice to the effects of legal actions undertaken prior to such date. As the
sui generis right lasts only for 15 years, it would appear that only databases made
less than 15 years from the entry into force of the law would enjoy protection as this is
the case under Article 14(3) of the EU’s Database Directive. It is further unclear
whether the 15 years protection in respect of existing databases would run from the
day of entry into force of the Law on Databases or from the date the database was
produced or made available to the public (Article 11 Database Law). Note that the
respective rule in Article 14(5) Database Directive is equally ambiguous. However, it
seems that Article 14(5) Database Directive may be interpreted in a way that the
period of protection with regard to pre-existing databases may run only from the date
the Directive was effective, i.e. 1 January 1998, for the sui generis right was a new
right, hitherto unknown in the Member States from which pre-existing databases
could not yet benefit, so that such extensive interpretation was justified18. Similar
considerations may also apply in Poland. Clarification of these issues in the Polish
Copyright Act would nonetheless be helpful.
(c) Compliance with formalities
As far as works are concerned, Article 1(3) Copyright Act provides that copyright protection
shall commence from the moment of the work is made, even in incomplete form. The author
enjoys the protection independently of the compliance with formalities. In the absence of any
rules to the contrary, the same principles seem to apply in the field of neighbouring rights.
It is worth noting that the Polish Copyright Act does not appear to contain any provisions with
regard to the use of the copyright notice © or the corresponding sign (P) for phonograms, but
such notices can of course be used in order to identify works and phonograms.
18 v.Lewinski in Walter (Hrsg.), Europäisches Urheberrecht, 2001, Art.14 Database Directive, note 7, page 829.
66
3. Beneficiaries of protection Copyright laws usually determine who may benefit from the protection under the law.
Generally, there are two groups of beneficiaries: the initial beneficiary, i.e. the person who is
the first owner of the rights, and the successor in title, the person to whom all or part of the
rights have been transferred by contract or operation of law.
In a nutshell, the rules under the Polish Copyright Act are as follows:
a) Works
As a general rule, copyright belongs to the author except where otherwise provided (Article
8(1) Copyright Act).
The Copyright Act further contains a presumption of authorship in Article 8(2): the person
who has been clearly named on the copies of a work or whose authorship has in any other
way been brought to the notice of the public in connection with the disclosure of the work is
deemed to be the author of the work (Article 8(2) Copyright Act).
Where the author has not revealed his identity, he will be represented in the exercise of his
economic rights by the producer or publisher or, in their absence, by the authors’ society
(Article 8(3) Copyright Act).
As Poland’s Copyright Act follows the continental-European “droit d’auteur” tradition, it would
appear that only natural persons can be authors19 and that legal entities would be generally
excluded from authorship.
There are also specific rules on authorship and initial ownership for different categories of
works which may be summarised as follows:
19 Barta/Markiewicz in Nimmer, International Copyright, § 4[1].
67
(aa) Joint or collaborative works
The notion of joint work is not defined in the Copyright Act. It is assumed that the
usual meaning of the term, i.e. a work that is created by two or more persons through
their joint creative activities, applies. In such a case, the joint authors enjoy the
copyright in the work jointly, however only as far as the economic rights are
concerned (Article 9(1) with (5) Copyright Act). The shares of the joint authors are
presumed equal, but each joint author may to apply to the courts with regard to the
determination of the size of his share in relation to the individual contributions made
to the joint work (Article 9(1) Copyright Act).
In principle, the joint authors exercise jointly the copyright in the whole work. If there
is no agreement, each joint author may have recourse to the courts which shall
render a decision taking into consideration the interests of all co-authors (Article 9(3)
Copyright Act). If the parts of the joint authors may be exploited separately, each of
the joint authors may exercise his copyright in his part separately, but without
prejudice to the rights of the other joint authors (Article 9(2) Copyright Act).
In case of a violation of the rights in the joint work, each joint author may bring an
action in relation to the whole work, with the gain of such action accruing to all the
joint authors according to the size of their shares (Article 9(4) Copyright Act).
(bb) Composite work
The abovementioned provisions in Article 9(2)-(4) Copyright Act apply also to so-
called composite works, i.e. a work in which several authors have assembled their
separate works with a view to common disclosure. Each author may request
permission from the other authors to disclose the whole work, except where there is a
valid reason for refusing such permission or where the contract provides otherwise
(Article 10 Copyright Act).
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(cc) Collective works
A collective work is a work which combines independent contributions by different
authors in one work, such as encyclopedia or periodicals. The economic rights belong
to the producer or publisher, whereas the rights in the separate parts used belong to
the respective authors. The right to the title is deemed to belong to the producer or
publisher (Article 11 Copyright Act).
Note that there is also a presumption for the producer/publisher in Article 15
Copyright Act which may be of importance in the context of collective works: the
person whose name or style is prominently displayed as such on the objects in which
the work is embodied or alternatively brought to the notice of the public in any manner
connected with the disclosure of the work is deemed to be the producer or publisher
of the work.
(dd) Works created in employment
The general rule with regard to works created in employment appears to be that the
employee enjoys the copyright in the work, but the economic rights in such work are
deemed to be transferred to the employer by way of a rebuttable presumption of
transfer within the limits of the purpose of the employment contract and the common
will of the parties at the moment the employer accepts the work (Article 12(1)
Copyright Act). It is further presumed that at the same time the employer acquires the
property right in the material object in which the work is embodied (Article 12(3)
Copyright Act). Specific rules are provided for employment contracts of employed
authors with scientific institutions with regard to the priority in the publication of a
scientific work (Article 14 Copyright Act).
(ee) Audiovisual works
The amendments to the Copyright Act of 9 June 2000 made considerable changes to
the legal regime with regard to authorship and ownership in audiovisual works, which
are detrimental to the functioning of the audiovisual industry.
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Under Polish copyright law, an audiovisual work is a work of joint authorship. Joint
authors of the audiovisual work are the persons who made a creative contribution to
its completion. These persons include “in particular” the director, the cameraman, the
authors of adaptation of a literary work, the author of musical or textual and musical
works created for the audiovisual work or the author of the screenplay (Article 69
Copyright Act). However, through the use of the expression “in particular” it would
appear that the catalogue of possible joint authors may be extended to cover other
persons who, as the case may be, make creative contributions to the audiovisual
work20. This non-exhaustive list of joint authors creates a high level of uncertainty with
regard to the authorship in an audiovisual work which ultimately is a risk for the
producer who needs to be in a position to overlook prior to the production of the
audiovisual work who his authors may be. Otherwise, the producer may be
confronted even years later with claims of participants in a production about their
possible authorship. The situation looks identical to the legal regime under German
copyright law where the open-ended authorship in audiovisual works creates similar
uncertainties for film producers21. It is therefore recommended to provide to close the
list of joint authors provided for in Article 69 of the Copyright Act.
A further significant change which is highly disadvantageous to the producer occurred
in Article 70 of the Copyright Act as a result of the amendments adopted on 9 June
2000. Whereas under the previous rules, the law allocated the economic rights in the
audiovisual work to the producer, this legal regime was replaced by the amendments
with a rebuttable presumption for the transfer of the exclusive economic rights to
exploit the works within the scope of the audiovisual work as a whole. Not only is it
unclear which are exactly the exclusive rights that have been transferred, it is also
uncertain whether any rights with regard to unknown means of exploitation were
passed to the producer. Even worse, the rights to remuneration which the producer
has to pay to the director, the author of the screen-play, the composer, the
performers, and after the 2000 amendments also to the cameraman, are now subject
to mandatory collective administration. In view of the difficulties in the field of
collective administration (see below under Part II B 8), this is a further impediment to
the exploitation of audiovisual works.
20 Barta/Markiewicz in Nimmer, International Copyright,, para. § 4 [1][a][ii] who equally concede that in view of the generality of the provision, other members of the production team may also qualify as joint authors of the audiovisual work. 21 A description of the situation may be found in Schricker-Katzenberger, Urheberrecht, 1999, Vor § 88 ff., paras. 57 et seq.
70
Clearly, the situation with regard to authorship and ownership of rights in audiovisual
works is far from satisfactory. The legal situation could be considerably improved if
the list of joint authors in Article 69 Copyright Act would be expressly exhaustive and
if the changes to Article 70 would be reversed.
Finally, it should be noted that Article 87 of the Copyright Act contains a rebuttable
presumption for the benefit of the producer of an audiovisual work with regard to the
transfer of the right to use the performance in the audiovisual work in all areas of
exploitation known at the time of the conclusion of the contract. Even this
presumption could be improved, for instance on the basis of French law which allows
for an irrebuttable presumption of the performer’s rights in respect of fixation,
reproduction and communication to the public (Article L.212-4 French Intellectual
Property Code).
(ff) Computer programs
Pursuant to Article 74(3) Copyright Act, it is presumed that the economic rights in a
computer program created by an employee in the course of duties under an
employment contract shall belong to the employer. This presumption is rebuttable.
As far as subsequent ownership is concerned, the following is to be noted:
Copyright may be transferable either by succession or by contract and may also be subject
of a license (Article 41(1) and (2) Copyright Act), except for moral rights. The Copyright Act
contains substantial rules on copyright contracts which are reviewed in more detail in Part II
B 7.
b) Subject matters of neighbouring rights
As a general rule, the performer, producer, broadcaster or publisher who qualifies for
protection under the law owns the neighbouring rights dealt with in Chapter 11 of the
Copyright Act. There are no rules on the question of transferability of neighbouring rights,
and the provisions contained in Article 41 Copyright Act are not included in the reference to
the applicable provisions in the part dealing with authors’ rights (Article 101 Copyright Act).
The application of Article 41 Copyright Act is only provided for in Article 92 with regard to
performances. Does this imply that rights of producers, broadcasters and publishers which
71
are equally protected under Chapter 11 would not be transferable ? Surely, in view of
business operations, this cannot be true, but a clarification of this situation, which is probably
a drafting error, would be recommended.
As far as phonograms and videograms are concerned, there is a presumption in the
Copyright Act which may reveal helpful in the fight against piracy: according to Article 102
Copyright Act, every copy shall mention in addition to the names of the author and the
performer, the titles of the works, the date of manufacture, the name or style of the producer
and, in the case of a fixation of a broadcast, the corporate name of the radio or television
organisation. Copies that do not meet such conditions are deemed to have been
manufactured illegally.
c) Sui generis right
Pursuant to Article 6 of the Law on Databases, the maker of the database is the owner of the
exclusive rights constituting the sui generis right protection. Article 8 of this Law confirms that
the right is transferable.
4. Scope of protection International conventions and regional legislation in the copyright and neighbouring rights
field make provision for minimum rights which should be granted to authors and owners of
neighbouring rights. This part of the Study reviews the rights granted under the Polish
Copyright Act to the different categories of right owners and examines whether the system is
in compliance with the rules which may be found at the international and regional levels.
a) Works in general
Poland follows the so-called dualist approach and grants authors both moral and economic
rights.
(aa) Moral rights
Article 16 Copyright Act contains a list of moral rights which are enjoyed by authors in
respect of their works:
72
- the right to be recognised as the author of the work;
- the right to sign the work with the author’s name or pseudonym, or to make it
available to the public anonymously;
- the right to inviolability and proper use of the work,
- the right to make the work available to the public for the first time (disclosure);
- the right to control the manner of using the work;
Polish copyright law hence contains not only the rights required as a minimum
standard under Article 6bis Berne Convention but also two further rights, a divulgation
right and the right to control the manner of using the work.
While the divulgation right may be found in a number of other national copyright laws,
the right to control the manner of using the work may cause problems as such right
comes close to an economic right. This is of practical importance as economic rights
are fully transferable, whereas moral rights may not be assigned or waived. In the
interest of legal certainty and of practical legal solutions, the legal situation with
regard to this moral right would benefit from final clarification by the national
legislature.
(bb) Economic rights
Polish copyright law grants the author a broad exploitation right. Pursuant to Article
17 Copyright Act, the author has the exclusive right to use the work and to dispose of
its use through all fields of exploitation and to receive remuneration for the use of the
work. In accordance with Article 50 of the Copyright Act, separate fields of
exploitation are, in particular:
- fixation;
- reproduction through a special technique;
- putting into circulation;
- storage in computer memory;
- public performance or communication;
- public exhibition;
- screen projection;
- rental;
- lending;
73
- broadcasting of a work by a ground station using visual or sound media and by wire
or wireless means;
- satellite broadcasting;
- simultaneous, integral broadcasting of a work broadcast by another radio or television
organisation.
This catalogue of fields of exploitation is not exhaustive in view of the “in particular”
language used22. This means that certain new uses, such as the making available to
the public as provided for in Article 8 WCT and Article 3 of the Copyright Directive,
would already be included in the protection on the basis of the broad economic
exploitation right and in view of the open-ended list of fields of exploitation.
Nonetheless an express enunciation of the making available right would be preferable
for the sake of legal certainty.
As far as the right with regard to putting into circulation is concerned, Article 51(2)
Copyright Act provides that the subsequent distribution of copies of a work, after they
have been initially distributed, shall not constitute an infringement of copyright, except
in the case of rental and lending. Although the text is not entirely clear as to where the
copy will have to be put in circulation for exhaustion to apply, the Polish authorities
assured that the rule of exhaustion is that of national exhaustion. Elements of regional
exhaustion may be found in Article 51(3) Copyright Act which contains the rule that
the importation of copies put into circulation within the territory of a state with which
Poland has concluded an agreement on the establishment of a free trade zone shall
not constitute an infringement of author’s economic rights. It would be advantageous
to clarify the legal language with regard to exhaustion by combining both rules and
stating that only the first sale of the original or a copy thereof by the right owner or
with his consent in Poland or in a country with which Poland has concluded an
agreement on the establishment of a free trade zone exhausts the right of putting into
circulation.
Note also that rights in respect of broadcasting of published musical works and small
literary works are subject to mandatory collective administration (Article 21(1)
Copyright Act). The same is true for cable retransmission (Article 21(4) Copyright
Act); note, however, that with regard to cable retransmission, there is also an
exception in Article 24(3) Copyright Act whereby the unabridged and simultaneous
22 Barta/Markiewicz in Nimmer, International Copyright,, § 8 [1][b].
74
cable retransmission of a broadcast is permitted without the consent of the author
against the payment of a remuneration. The relationship between Article 21(4) and
the exception in Article 24(3) Copyright Act appears to be inconsistent and should be
clarified23.
b) Computer programs
Specific rules must be taken into consideration as far as the protection of computer programs
is concerned:
According to Article 74(4) Copyright Act as amended last in 2000, the economic rights in a
computer program include the right to
- the permanent or temporary reproduction of a computer program in full or in part, by
any means and in any form; where it is necessary to reproduce a computer program
for its loading, displaying, running, transmitting and storing, consent of the right owner
shall be required;
- the translation, adaptation, arrangement or any other alteration of a computer
program, without prejudice to the rights of the person who made such
transformations;
- the distribution of the original or copies of a computer program to the public, including
through rental.
In addition, on the basis of Article 77¹ Copyright Act, which was introduced by the
amendments of the year 2000, the right owner may demand the user of a computer program
to destroy technical means possessed that are used only to facilitate illegal removal or by-
passing of technical security protections.
In essence, these economic rights correspond to the restricted acts in computer programs as
provided for in Article 4 of the EU’s Computer Programs Directive24. Note, however, that in
occasion of the amendments enacted in the year 2000, the exhaustion rule to the distribution
right was repealed. In this respect, Article 74(4) Nr.3 Copyright Act does not entirely
correspond to Article 4(c) Computer Programs Directive which makes provision for
23 Badowski, ibid., page 297; Barta/Markiewicz in Nimmer, International Copyright,, § 8[3]. 24 Council Directive 91/250/EEC of 14 May 1991on the legal protection of computer programs, O.J. of 17 May 1991 No. L 122/42.
75
Community, i.e. regional exhaustion of the distribution right. Presumably, the exhaustion rule
in Article 51 Copyright Act applies.
c) Works of fine art and manuscripts
Finally, authors of works of fine art, as well as of manuscripts of literary and musical works,
enjoy a right to remuneration (the so-called droit de suite) for the resale of the original in the
occasion of professionally performed sales (Article 19 Copyright Act). The remuneration
amounts to 5% of the sale price. Note that the droit de suite does not appear to be of
significant practical relevance. Not only are there problems in the field of collective
administration, but also is it difficult to control consistently sales of fine art and manuscripts.
It should also be noted that the legal regime is not in compliance with the provisions recently
adopted in the EU25 and if Poland is to implement the acquis communautaire, modifications
of the current system are required. Note, however, that the deadline for implementation is
only 1 January 2006.
d) Neighbouring Rights
As the scope of protection granted to the different categories of neighbouring right owners
varies considerably, it is necessary to proceed separately:
(aa) Performers
Performers are the only category of owners of neighbouring rights who enjoy both
personality and economic rights.
Pursuant to Article 86(1) Nr. 1 Copyright Act, performers enjoy the exclusive right to
the protection of personal interests concerning the artistic performance. In the
absence of any further details, the determination of the performer’s personality rights
is left to the courts26.
25 Council Directive 2001/84/EEC of the European Parliament and the Council of the European Union of 27 September 2001 on the resale right for the benefit for an author of an original work of art, O.J. of 13.10.2001 L 272, 32. 26Barta/Markiewicz in Nimmer, International Copyright, § 9 [1][a][i].
76
As far as economic rights are concerned, performers are granted the exclusive right
to the use of the artistic performance and the disposal thereof in the various fields of
exploitation as well as the right to receive a remuneration for the use of the
performance. Unlike in the field of copyright, performers do not have an open-ended
catalogue of rights, but do have an exhaustive list of exclusive rights in respective of
the following fields of exploitation:
- fixation;
- reproduction by a specific technique;
- putting into circulation;
- public performance, unless performed with a copy put into circulation;
- lending;
- rental;
- broadcasting, unless performed with a copy put into circulation.
In the case of broadcasting and public performance made on the basis of a copy put
into circulation, the performer is entitled to receive an equitable remuneration.
The above catalogue of rights gives rise to the following observations:
Since the adoption of the WPPT, performers also enjoy a broad reproduction right. It
would be preferable if the Polish legislature took into consideration the formula
adopted by the EU legislature in the Copyright Directive. Pursuant to Article 2 of the
Directive, the reproduction right extends to the direct or indirect, temporary or
permanent reproduction by any means and in any form, in whole or in part.
The express enunciation is particularly important in the neighbouring rights field,
where the list of rights is closed and not open to interpretation as in the field of
copyright. Nonetheless, the express enunciation of the rule could also be beneficial in
the field of copyright for the sake of clarity.
As far as the exhaustion of the right in respect of putting into circulation is concerned,
Article 51 Copyright Act applies by way of analogy on the basis of Article 101
Copyright Act. The comments made above in respect of exhaustion in the field of
copyright apply therefore accordingly.
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Finally, the catalogue of rights does not provide for a making available right as is
required by Article 10 WPPT and Article 3(2)(a) Copyright Directive. In the field of
neighbouring rights, it is even more important to provide right owners with a legal tool
to deal with online uses of their productions. Unlike authors, performers do not benefit
from an open-ended list of rights nor do they enjoy an exclusive transmission right in
respect of fixed performances which could serve temporarily as a legal basis dealing
with transmissions over the Internet until a final legal solution is found. The only way
out of this dilemma could be to consider online transmission as a kind of distribution
and to apply the distribution right by way of analogy. Incidentally, this solution has
been proposed for Germany, where the legal situation in this respect is similar to that
in Poland, in a study by members of the Max Planck Institute in Munich27.
In any, case the Polish legislature will have to introduce a specific making available
right in order to be in compliance with WPPT and the EU’s Copyright Directive. In this
context, the level of protection with regard to transmission rights covering other forms
of communication and broadcasting should be revisited. As the exploitation of
performances, and other subject matters of neighbouring rights as well, in various
kinds of transmissions becomes increasingly important, it should be considered to
replace the mere right of remuneration with regard to broadcasting and
communication to the public of fixed performances with an exclusive right.
(bb) Producers of phonograms and videograms
Producers of phonograms and videograms enjoy exclusive rights and rights to
remuneration. In accordance with Article 94(2) Copyright Act, the producer enjoys the
exclusive right to authorise or prohibit
- reproduction by means of particular technique;
- distribution;
- rental
- lending.
27 Gerhard Schricker (Hrsg)., Urheberrecht auf dem Weg zur Informationsgesellschaft; Baden-Baden
1997; Page 269.
78
The producer is also entitled to receive an appropriate remuneration for broadcasting
and communication to the public of a phonogram or a videogram that has been
distributed.
As in the case of performers’ rights, the catalogue of producers’ rights is exhaustive.
Therefore, the comments made above with regard to the reproduction and making
available rights as well as the exhaustion principle of the distribution right apply
accordingly (see above under (aa)). The catalogue of rights should be extended
accordingly so as to at least reach the level of protection granted in the European
Union.
(cc) Broadcasting organisations
Pursuant to Article 97 Copyright Act, broadcasting organisations enjoy the following
exclusive rights with regard to:
- fixation;
- reproduction by means of a particular technique;
- broadcasting, including broadcasting by another radio or television organisation.
Note that the catalogue of rights does not include a right in respect of the
communication to the public of a broadcast made in places accessible to the public
against payment of an entrance fee as provided for by Article 13(d) Rome
Convention.
In addition, the Copyright Act omits a number of rights which are already included in
the acquis communautaire, such as a distribution right or a broad reproduction and a
making available right. It is therefore recommended that the current list of rights be
reviewed appropriately and the comments made above under (aa) with regard to
reproduction and exhaustion apply accordingly.
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(dd) Publishers
The publishers of previously unpublished public domain works, as well as of critical
and scientific editions enjoy protection equivalent to the economic rights granted to
authors under Article 17 of the Copyright Act in all fields of exploitation. This follows
from Articles 99¹ to 99³ Copyright Act. The same is true with regard to works and
texts which have never been protected by copyright because of their nature or time of
creation.
e) Sui generis rights
As already indicated, the sui generis right protection is attributed to the maker of a database
in accordance with the Law on Databases. Pursuant to Article 6 of the Law on Databases,
the maker of a database enjoys an extraction right and a re-utilisation right which reflect the
requirements of the Database Directive.
Note that the repeated and systematic extraction or other re-utilization of insubstantial parts
of the contents of a database which conflicts with a normal exploitation of that database and
causes an unreasonable violation of legitimate interests of the maker of a database are not
permitted.
5. Duration of protection
The terms of protection have been substantially revised by the Amendment Act of 9 June
2000, particularly in order to meet the requirements set by the EU’s Duration Directive28. As a
result, the general term of protection for economic rights of works was extended from 50 to
70 years and the starting point for the term of protection was modified with regard to certain
works. The terms of protection which are currently in place are reviewed in the following in
more detail. However, in view of the different terms of protection, it is again important to
distinguish between copyright and neighbouring rights:
28 Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights, O.J. of 24 November 1993 L 290/9.
80
a) Copyright
Authors are granted moral and economic rights. While moral rights are not limited in time and
hence are perpetual on the basis of Article 16 Copyright Act, economic rights may be
enjoyed by the author only for a limited period of time. The general term of protection for
economic rights in a work is 70 years post mortem auctoris, ie. from the death of the author,
and in the case of a joint work 70 years from the death of the last surviving-co-author (Article
36 Nr.1 Copyright Act). Poland applies the rule of comparison of terms as provided for under
Article 7(8) Berne Convention, which means that in the case of a work whose country of
origin is a third country and the author is not a national of or permanently resident in Poland,
the term of protection of such work in Poland is determined by the rules of the country of
origin, but may not exceed 70 years.
There are several categories of works for which the starting point of the 70 years term differs
from the general rule. The terms of protection in these cases are as follows:
Pseudonymous and 70 years after the first dissemination of the work,
anonymous works unless the identity of the author is revealed or the
pseudonym leaves no doubt as to his identity
in which case the general rule will apply
(Article 36 Nr.2 Copyright Act).
Works in which all 70 years after the work has been first disseminated or, in the
economic rights vest in a absence of dissemination, after the work has been created
person other than the (Article 36 Nr.3 Copyright Act).
author29
Audiovisual works 70 years from the death of the last of the following persons to
survive: the main director, the screenwriter, the author of the
dialogue, the composer of the music for the particular
audiovisual work (Article 36 Nr.4 Copyright Act).
Works published in 70 years after the first dissemination to the public for each
instalments instalment (Article 37 Copyright Act).
29 Such works are in particular: collective works, works made in employment generally and for computer programs in case of Article 74(3) Copyright Act. Where a computer programme is however created outside an employment contract, the general term of 70 years pma. applies. On this issue see also Barta/Markiewicz in Nimmer, International Copyright,, § 3[1].
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Note that there is a specific rule for the duration of economic rights in industrial designs
where these qualify as well as a work protected by copyright. The protection for designs
under industrial property law lasts for 25 years from the end of the year in which the
application for registration is submitted to the Polish Patent Office. Pursuant to Article 116 of
the Industrial Property Act, products manufactured by means of an industrial design and put
on the market after the expiry of the design right will not benefit from the protection of the
authors’ economic rights in a work under copyright. It would thus appear that the term of the
design rights prevails the term of copyright protection with regard to the features of a work
that are protected under a design right.
Moreover, the term of protection is calculated in full years following the year in the course of
which the event triggering the above terms occurred (Article 39 Copyright Act).
The expiration of the 70 years term as described above does, however, not mean that a work
may be used freely in all cases. Article 40 Copyright Act contains provisions on the so-called
domaine public payant. This means that producers of copies of literary, musical, three-
dimensional, photographic or cartographic works in which the economic rights have expired
must pay a percentage of between 5 and 8% of the gross proceeds from the sale of the said
works to the Fund for the Promotion of Creation which is controlled by the Minister of Culture.
The provision concerns editions published on the territory of Poland and applies likewise to
copies of derivative works where the term of protection for such works has expired. The
benefits of such a provision are usually doubtful. In most cases, the use of public domain
material contributes to the financing of the promotion and development of younger and still
unknown authors. If a fee is charged for the use of such public domain material, this can well
hamper the future evolution of new works. Public domain payment obligations can therefore
produce adverse effects that were not initially taken into consideration when the principle
was established.
b) Neighbouring rights
With the exception of publishers’ rights, the general term of protection under neighbouring
rights is 50 years. In more detail, the terms of protection for the different categories of
neighbouring rights run as follows:
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Performers: 50 years from first performance or from publication or communication,
whichever is the earlier, where a fixed performance is published or
communicated within such a period (Article 89 Copyright Act).
Producers: 50 years from making of the phonogram or videogram (Article 95
Copyright Act).
Broadcasters: 50 years from first dissemination of the broadcast (Article 98 Copyright
Act).
Publishers: 25 years from first publication for unpublished public domain works
(Article 99¹ Copyright Act)
30 years from first publication for critical and scientific editions (Article
99² Copyright Act)
The above terms apply mutatis mutandis in the case of hitherto
unprotected works (Article 99-4 Copyright Act).
In addition, as already indicated, performers also enjoy personality rights on the basis of
Article 86(1) Nr.1 Copyright Act. It would appear that personality rights, like authors’ moral
rights, are protected eternally. This seemed to be the case at least under the former version
of Article 89 Copyright Act which expressly applied the 50 years term only to the exclusive
rights and the right to remuneration in Article 86(1) Nr. 2 and 3 Copyright Act. The revised
Article 89 now applies the 50 years term to the rights referred to in Article 89 paragraph 1
subparagraph 2 (i.e. the exclusive rights with regard to the various fields of exploitation) and
paragraph 3 (the right to remuneration with regard to broadcasting and public performance)
as well as paragraph 4 (however, Article 86 has no paragraph 4). In essence, this would
mean that the right to remuneration in Article 86(1) Nr. 3 also applies without limitation in
time, which would be rather surprising. This can only be a drafting or translation error and
should be corrected accordingly.
Moreover, the starting point of the term with regard to phonograms and videograms is not
compatible with Articles 3(2) and 3(3) Duration Directive. These provisions require that the
first publication or communication to the public of the phonogram or first film fixation must be
also taken into consideration.
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As in the case of copyright, the terms of protection from the year following that in the course
of which occurred the triggering event (Article 101 with 39 Copyright Act).
c) Sui generis right
The term of protection for rights of the maker of a database expires 15 years after the
completion or making available to the public of the database (Article 11.1 and 2 of the Law
on Databases). In case of substantial changes to the database which result in a substantial
new investment, the rights shall expire 15 years from the making of the corresponding
changes (Article 11.3 Database Law).
6. Limitations and Exceptions
The Polish Copyright Act makes provision for limitations and exceptions to copyright in
Articles 23 to 35 which are also made applicable to neighbouring rights (Article 100 Copyright
Act). In addition, there is a non-voluntary licence in Article 21 as well as an exception with
regard to ephemeral fixations in Article 22 and a private copying royalty scheme in Article 20
Copyright Act. In addition, the Law on Databases contains specific limitations to the sui
generis right of the maker of a database (Article 9 Law on Databases).
The Act does not contain an open-ended system of limitations and exceptions (such as the
fair use doctrine under US law or the concept of fair dealing under UK law), but following
other examples in continental-European laws, a closed list of limitations and exceptions
along the lines of the Berne Convention.
The salient points in the field of limitations and exceptions are as follows:
a) Limitations and exceptions provided for in Articles 23 to 35 Copyright Act
The catalogue of limitations contains a clause in Article 35 Copyright Act which reiterates the
requirements with regard to two steps of the so-called three step test as provided for in
Article 13 TRIPS, Article 9(2) Berne Convention and Article 10 WCT, namely that lawful use
must not be prejudicial
- to the normal exploitation of the work; nor
- to the legitimate interests of the author.
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In addition, Article 34 Copyright Act provides that it shall be lawful to make use of works
within the recognised limits of use on condition that the author and the source are expressly
mentioned. The author shall not be entitled to remuneration unless the law provides so.
The catalogue of limitations and exceptions, which is briefly summarised in the following,
reflects the examples which may be found in international and regional copyright law,
particularly in the Berne Convention. In a nutshell, the system of limitations and exceptions in
the copyright field is as follows:
(aa) Private use
According to Article 23 Copyright Act, it is permitted to make use free of charge, for
strictly private and personal purposes, of a work that has already been disclosed.
Personal or private use occurs within a circle of persons who are personally related or
who entertain social relations. This Article hence contains a very broad private use
exemption with the additional difficulty that the notion of “private” is rather wide as it
covers even general social relations. In essence, this provision contains a blanket
exception for all forms of private use which would give users a free ride on all works
and the like provided such use is for a private purpose. Particularly in view of online
uses, namely filesharing services, this exception will have to be reviewed as its
effects may be so far-reaching that the exception would not be in compliance with the
three- (or here two-) step test as provided for in Article 35 Copyright Act. There are
equally serious doubts whether the exception would be consistent with the respective
rules in Articles 9(2) Berne Convention, 13 TRIPS, 10(1) WCT and 16 WPPT.
Note that the provision does not cover works of architecture nor does it extend to
original electronic databases unless the use is made in the latter case for private
scientific purposes which is not related to any profit gaining activity. Moreover,
specific rules exist for computer programs in Article 75 Copyright Act which are
discussed below.
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(bb) Miscellaneous limitations and exceptions in other cases
Articles 24 to 33 Copyright Act make provision for various limitations and exceptions
to exclusive rights, some of which reflect examples which may be found in the Berne
Convention. Exceptions under these provisions exist in particular in respect of
- quotations, along the lines of Article 10(1) Berne Convention (Article 29(1) Copyright
Act);
- ephemeral fixations by broadcasting organisations (Article 22 Copyright Act);
- use of a work by scientific institutions and public education establishments for
teaching or research purposes similar to Articles 10(2) and 9(2) Berne Convention
(Articles 27 and 29(2), 30 Copyright Act);
- reproduction of published works by libraries, archives and schools in certain cases
(Article 28 Copyright Act);
- reporting of current events similar to Article 10 bis (2) Berne Convention and
reproduction of articles from the press for information on current events along the
lines of Article 10 bis (1) Berne Convention (Articles 25 and 26 Copyright Act);
- public performances of published literary and musical works where such performance
is not for profit-making purposes such as religious and State ceremonies, school and
similar public events with the exception of advertising or promotional events and
election campaigns (Article 31 Copyright Act);
- distribution of a broadcast work by small community antennas or cable networks as
well as simultaneous and unabridged cable retransmission (Article 24 Copyright Act);
- certain viewings of works of art and photographs (Articles 32 and 33 Copyright Act).
This catalogue of limitations and exceptions gives rise to the following observations:
First of all, the ephemeral recording exception is not compatible with Articles 11 bis
(3) Berne Convention and Article 15(1)(c) Rome Convention nor Article 5(2)(d)
Copyright Directive. The exception can only extend to “recordings made by a
broadcasting organisation by means of its own facilities and used for its own
broadcasts”. It is suggested to adjust the language of the provisions to this wording
which results from international law.
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The exceptions for the purposes of teaching and research are generally very wide
and it is at the very least doubtful whether the scope of the exceptions in Article 27
and 28 Copyright Act would be compatible with the Berne Convention.
Likewise, Article 31 Copyright Act contains a very broadly worded exception with
regard to the public performance of published works at events which are commonly
and freely accessible.This provision should be equally reconsidered.
b) Private copying royalty scheme
Polish copyright law provides for a private copying royalty scheme in Article 20 Copyright
Act. The Act provides for remuneration to be paid for private copying of video and sound
recordings as well as in the case of reprography. The royalty is based on blank recording
media and equipment and other similar means. For this reason, the private copying royalty
scheme is considered to apply also to the latest reproduction equipment and media, such as
CD-R, CD-RW, CD burners and most probably also computers and scanners. Such
interpretation has, however, not yet been confirmed by the courts.
As far as the amount of remuneration is concerned, Article 20(1) Copyright Act sets as the
upper level an amount not exceeding 3% of the selling price of the media and equipment
which may be used for copying. Pursuant to Article 20(3) Copyright Act, the Minister of
Culture, after consultation with the parties involved, shall specify by ordinance the amount of
the fees referred to in paragraph 1 and also the details of the manner of collection and
payment. It is also the Minister who designates the collecting society which will be competent
for the collection of the fees. At present, the fee is set at the upper level at 3% and the
importers and producers of recording equipment consider this amount as too high and try to
escape the payment. The shares in the remuneration are also fixed in the law: Article 20(2)
Copyright Act provides that 50% of the remuneration shall be allocated to the authors and
each 25% to performers and producers.
As far as sound and video copying is concerned, there are three collecting societies which
have been put in charge of the administration of the royalty: ZAIKS, the authors’ society,
SAWP, the performers’ society and ZPAV, the producers’ society. These three organisations
created one joint office which is administering the royalty. The Ministry of Culture supervises
all of these organisations. A problem in this context is the fact that there are numerous
competing societies which all want to be involved in the administration of the royalty scheme,
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such as the second performers’ association and the society representing audiovisual
authors.
In the field of reprography, a society called Copipol is in charge of the administration of the
royalty. The organisation was established 5 years ago by technical scientists. The
concentration on scientific authors seems to have as a consequence that other authors who
are also entitled to payments for reprography, such as photographers or authors of fine art,
are left out which causes some problems in the distribution.
Apart from the difficulties which stem from the fact that there are several competing
collecting societies, there is another, more legal problem in the field of private copying. It
should be noted that the private copying royalty scheme is not accompanied by a narrowly
confined private copying exception. It would rather look that the general private use
exception would permit the private user to make a copy for personal use. The problem in this
context is that neither the broadly worded Article 23 nor the provisions on the private copying
royalty scheme in Article 20 Copyright Act limit the number of copies which may be made.
This seems to be in particular a problem in the field of recorded music where countless
copies seemed to be made by private users which are afterwards exchanged within their
“general social relations” as permitted by the Act in Article 23.
It should be also noted that, while these provisions on private copying may have been a
reasonable compromise in respect of reproduction made in the analogue world, the
provisions require a careful review insofar as digital private copying is concerned. It is at the
very least doubtful whether these provisions could serve as a basis for a satisfactory and
balanced solution in this domain. With the emergence of easy to operate recording material
which makes rapidly best quality copies, the private copying regime, as it currently stands,
will lead to a situation where the general private copying habits of the users will interfere with
the normal exploitation of a work. It is therefore recommended to review the private copying
royalty scheme also with regard to Article 5(2)(b) of the Copyright Directive and with its
relationship to the application of technical measures as provided for under Article 6 Copyright
Directive.
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c) Computer programs
Specific exceptions exist for the use of computer programs in Article 75 Copyright Act with
regard to the making of indispensable back up copies, as well as in respect of research and
decompilation. These exceptions are to a large extent modelled on the basis of the Computer
Programs Directive.
However, it should be noted that Article 77 Copyright Act which eliminates the application of
the respective private use exceptions in the field of computer programs does not exclude the
application of the exception with regard to quotation. Whether this is a drafting error or an
intentional act of the legislature to open the otherwise narrowly confined catalogue of
limitations and exceptions in the field of computer programs, must remain open. In any case,
the application of the exception with regard to quotation would be doubtful under the
Computer Programs Directive.
d) Sui generis right
The sui generis right of the maker of a database is subject to restrictions in the following
cases where the lawful user may utilize the substantial parts of a published database:
- for personal use, but only for the non-electronic contents of the database;
- as an illustration for teaching or scientific research with indication of source unless
such use is justified by the non-commercial purpose to be achieved;
- for the purposes of public safety, legal or administrative proceedings.
Article 9 of the Law on Databases reflects the cases and narrowly confined conditions under
Article 9 Database Directive and therefore does not give rise to criticism.
7. Transfer and assignment of copyright and neighbouring rights
As is often the case in copyright laws which follow the continental-European authors’ rights
tradition, Polish copyright law contains a comprehensive set of provisions with a number of
rather restrictive rules governing contractual stipulations for the use of works protected by
copyright. In the field of neighbouring and sui generis rights no such ample rules may be
found, except for the case that the majority of rules on authors’ contracts apply also to
contracts with performers on the basis of Article 92 Copyright Act.
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In the field of copyright, a distinction must be first of all made between moral rights and
economic rights.
a) Moral rights
In most continental-European systems, moral rights are not assignable as they are
considered to be closely related to the personality of the author, or the performer, where
applicable. By contrast, common law systems often provide for a possibility to waive certain
moral rights in order to facilitate the use of the work, particularly in the field of audiovisual
production. The Polish Copyright Act provides in Article 16 that moral rights may not be
assigned nor waived.
b) Economic Rights
Article 41(1) and (2) Copyright Act states that economic rights may be assigned or licensed
to a third party. In principle, the acquirer of rights under an assignment may also assign such
rights to third parties, unless otherwise provided for in the contract. In the case of a license,
the licensee may not grant a sub-license, unless otherwise provided for in the contract; but
the exclusive licensee may at least make claims against violation of copyright (Article 67(3)
and (4) Copyright Act).
The contract must comply with the numerous requirements as set out in more detail in the
following:
(aa) Object of the contract
As already indicated, the contract can concern either an assignment or a license. In
the absence of any express clause to this effect, the author is deemed to have
granted a license (Article 65 Copyright Act). The assignment of rights as well as the
exclusive license agreement must be made on the basis of a written authors’ contract
(Articles 53, 67(5) Copyright Act).
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Under a license agreement, the author may authorise the use of the work in the
specific fields of exploitation with limitations to the extent, place and duration of such
use (Article 67(1) Copyright Act). In the case of a non-exclusive license, the author
may grant other non-exclusive licenses to third parties (Article 67(2) Copyright Act).
In principle, unless otherwise provided, a license contract is granted for a period of
five years for the territory of the State in which the licensee has his headquarters
(Article 66(1) Copyright Act). A license granted for a period of over five years is
considered a license granted for an indeterminate time. Where the license is granted
for an indeterminate time, the creator may terminate the license agreement with one
year’s notice to the end of the calendar year, unless otherwise provided for in the
contract (Article 68 Copyright Act).
The contract on the assignment of economic rights shall give the acquirer the right to
the exclusive use of the work in the fields of exploitation specified in the contract
(Article 64 Copyright Act). There is an exemplary enumeration of the fields of
exploitation in Article 50 of the Copyright Act. Where the extent of the use has not
been specified in the contract, it will be determined on the basis of the character and
the purpose of the work and on the basis of the recognized custom (Article 49
Copyright Act).
The assignment of the economic rights shall not constitute the transfer of ownership
rights in the copy of the work and vice versa, except as otherwise provided in the
contract (Article 52 Copyright Act).
Forms of exploitation that are unknown at the time of conclusion of the contract
cannot be assigned (Article 41(4) Copyright Act). This rule is probably modelled upon
a similar provision in German Copyright Law (§ 31(4) UrhG) which has proved to be
an impediment where the exploitation of works in a new technological environment is
at stake. Furthermore, just as in French law in Article L. 131-1 CPI, exploitation rights
with regard to future works may not be assigned as a result of Article 41(3) Copyright
Act. With the choice of these rules, the Polish legislature has introduced a cocktail of
the most restrictive provisions which may be found in other national copyright laws.
Such a system is certainly not investment friendly and the Polish legislature may wish
to reconsider certain provisions in order to establish a smoother procedure for the
exploitation of rights which is governed above all by the principle of contractual
freedom.
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(bb) Obligations of the assignee/licensee
The author is entitled to receive a remuneration for the use in every field of
exploitation, unless otherwise provided for by contract. The amount of remuneration
may be in the form of a lump sum or a proportionate remuneration. Where the
remuneration is not specified in the contract, it shall be determined in relation to the
extent of the rights granted and the profits resulting from the exploitation of the work
(Articles 45 and 43 Copyright Act). Note that the Copyright Act also provides for a so-
called “bestseller clause”: where the remuneration of the author is clearly out of
proportion to the profits of the acquirer of the economic rights or the licensee, the
author may apply to the court for an appropriate increase in the said remuneration.
In addition to the payment of remuneration and where appropriate, the author is also
entitled to receive author’s copies of his work the number of which shall be specified
in the contract (Article 63 Copyright Act).
Finally, there are a number of provisions, on the basis of which the author may claim
to make certain inspections of the work prior to disclosure. Such provisions may be
found in Articles 60 and 61 Copyright Act.
(cc) Obligations of the author
The author is obliged to deliver the work within the period specified in the contract or
immediately upon completion. Failure to do so entitles the commissioning party to set
the author an additional time limit by which he will have to deliver the work failing
which the commissioning party may withdraw from the contract (Article 54 Copyright
Act).
The same applies in the case where the work is deficient, unless this is due to
circumstances beyond the author’s control. Instead of withdrawal, a reduction of the
price may also be asked for. In any event, the author retains the right to the part of
the remuneration he has received which must, however, not exceed 25% of the
contractual remuneration. The claims lapse on acceptance of the work, i.e. at the
expiry of a period of six months (or another period specified by contract) following the
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delivery of the work in the absence of a refusal or claim for modification by the
commissioning party (Article 55(1), (3) and (4) Copyright Act).
In case, there are legal defects in the work, the commissioning party may withdraw
from the contract and claim indemnification for damages (Article 55(2) Copyright Act).
(dd) Termination of the contract
According to the Copyright Act, the author’s contract may be terminated:
- if the author terminates or withdraws from the contract in consideration of his
essential interests as an author (Article 56 Copyright Act);
- if the acquirer or licensee has not disclosed the work within the agreed period or
within a period of two years from completion, the author may withdraw from or
terminate the contract. In addition, he may claim damages or compensation in the
amount of twice the remuneration stipulated in the contract if within a further period of
6 months the work has still not been disclosed (Article 57 Copyright Act);
- if the work is made available to the public in a form that is not suitable or with
modifications to which the creator has good reason to object (Article 58 Copyright
Act).
Finally, the Copyright Act provides complex rules for the termination procedure in
each case whose details may be found in Articles 56 – 59 Copyright Act.
8. Administration of Copyright and Neighbouring Rights
Chapter 12 of the Copyright Act contains basic principles for the administration of rights by
collecting societies. There are legislative plans for the elaboration of a more detailed law on
collective administration in the near future. This part is to review first of all the legal
provisions governing the administration of copyright and related rights. Secondly, this part
gives information on the current practice of rights management in Poland.
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a) Legal provisions governing collecting societies
Under Polish law, collecting societies are organisations established in the form of
associations which represent owners of copyright or neighbouring rights, i.e. authors,
performers, producers or broadcasting organisations. The statutory purpose of collecting
societies is to administer collectively and to protect the rights that are entrusted to them by
the various right owners, as well as to exercise the specific powers given to them by the
Copyright Act (Article 104(1) Copyright Act). Since the amendments introduced in the year
2000, collecting societies can also be injured parties in criminal cases (Article 122¹ Copyright
Act).
Although there is no express rule, it would appear from the wording in Article 104(1)
Copyright Act that, in principle, right owners may decide whether to administer their rights
individually or collectively, except in cases where collective administration is mandatory, such
as under Articles 21 or 70 Copyright Act.
Collecting societies may only act as such if they have been approved by the Minister of
Culture who also is empowered to supervise the societies. The approval will be given by the
Minister of Culture only to societies which can guarantee the proper administration of rights
(Article 104(2) and (3) Copyright Act). Where the scope of the approval is exceeded by the
collecting society, the Ministry of Culture may request from the society to cease the abusive
behaviour. Failure to do so may result in the withdrawal of the approval (Article 104(4)
Copyright Act). The approval may be further withdrawn if the society fails to perform its duties
with regard to the administration of the entrusted rights or if the society infringes the law
within the scope of the granted permit (Article 104(5) Copyright Act).
Approved collecting societies benefit from a presumption that they are authorised to
administer and to protect the rights within the fields of exploitation covered by collective
administration and to participate in court proceedings. The presumption does, however, not
apply where several collecting societies claim to be entitled to administer the same work or
performance (Article 105 Copyright Act). Also, in cases where in a certain field of exploitation
there are several collecting societies, and an author or performer does not belong to any
collecting society or has not disclosed his ownership, the competent organisation will be
determined by the Copyright Commission (Article 107 Copyright Act).
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The collecting society is obliged to grant equal treatment to all affiliated members and non-
affiliated authors. Moreover, the society may also not refuse, without important reason, its
consent to the use of administered works nor the acceptance of certain works to collective
administration (Article 106 Copyright Act). Despite this obligation to contract, collecting
societies nonetheless seem to be subject to the provisions of antimonopoly law30. This is
rather surprising as, in general, the obligation to contract is the counterpart of the fact that
the collecting society is exempted from the effects of the antimonopoly legislation31.
The remuneration to be charged by the collecting societies is laid down in so-called
remuneration tables which are approved by the Copyright Commission (Article 108(3)
Copyright Act). The Copyright Commission is appointed by the Ministry of Culture. The
Commission consists of 40 arbitrators which are designated by the Copyright Commission in
due proportion from the candidates proposed by the various right owners’ and users’
organisations. Details about the functioning and the remuneration of the Copyright
Commission are set out in an Ordinance by the Ministry of Culture.
The Copyright Commission approves or refuses approval for a remuneration table in a
committee of six arbitrators and a chairman acting as referee designated by the Minister of
Culture (Article 108(3) Copyright Act). Such committee also decides on the competent
collecting society in cases where an author does not belong to a collecting society (see the
above case of Article 107 Copyright Act). The procedure is governed by the Code of
Administrative Procedure and appeals against decisions by the Copyright Commission may
in such cases be made to the Minister of Culture (Article 108(4) Copyright Act).
A committee of three arbitrators, two of them designated by the parties from the appointed
arbitrators and one co-opted as a referee by the two arbitrators shall settle disputes
concerning the application of the remuneration tables (Article 108(5) Copyright Act). The
procedure follows the Code of Civil Procedure and appeals against decisions may be
brought before a district court (Article 108(6) and (7) Copyright Act).
30 Barta/Markiewicz in Nimmer, International Copyright, § 9[2] with reference to the case law of the Supreme Court. 31 See for instance in German law where § 30 GWB exempts collecting societies from the scope of the prohibitions under the antimonopoly law and where at the same time § 6 UrhWG provides for an obligation to contract as under Article 106 Copyright Act.
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Contractual provisions that are less beneficial than the remuneration specified in the
remuneration tables are null and void and will be replaced by the remuneration specified in
the tables. The amount of remuneration charged by the collecting society must take into
account the revenues derived from the use of the work as well as the nature and the scope
of the use of such works (Articles 109, 110 Copyright Act).
b) Practical rights management
Collective administration of copyright and neighbouring rights has been identified as one of
the most significant problems in the copyright law field, apart from the piracy situation. This is
certainly an area where Poland can find help in exchanging practical experience with other
countries.
There are two main problems: the first is pluralism of the collecting societies which leads to
competing collecting societies in the same area. The second is the lengthy process with
regard to the appeal of remuneration tables.
As far as pluralism of collecting societies is concerned, it should be noted that at present
there are 13 collecting societies operating in the various fields of copyright and neighbouring
rights.
The oldest collecting society is ZAIKS which administers and protects authors’ rights with
regard to literary and musical works. ZAIKS is also the largest society with one main office in
Warsaw and 13 regional offices and 150 –170 staff. ZAIKS manages the rights of its
members on the basis of its own registration and identification system. ZAIKS has also
concluded over 100 reciprocal agreements so that the society can protect foreign authors in
Poland and that Polish authors are protected nearly throughout the world. ZAIKS is also
active in combating violations of the rights of its members by pursuing infringing users and
instituting immediate court proceedings and also participates in anti-piracy actions with other
right owners.
As already indicated, ZAIKS is not the only collecting society. Another well established
society is ZPAV, the organisation representing rights of producers of phonograms and
videograms. There is also a well established performers’ society. The problem does,
however, not stem from the fact that there are several societies for several categories of right
owners. The presence of several societies for the same fields of exploitation within one
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category of right owners is the reason for the uncertainty, such as the establishment of a
second performers’ society or of a further authors’ society representing film authors. It would
appear that the problem is particularly significant in the audiovisual sector where the
competing societies have started to provide for different tariffs. Needless to say, this creates
a situation of uncertainty which invites users to ignore their payment obligations. It has also
been suggested that this situation may have arisen because the approvals which were given
were not carefully enough considered. It may be also necessary to develop a complete new
set of criteria which require to be fulfilled for a society to be approved.
Another problem which has been indicated was the lengthy process for the review of the
remuneration tables. This is for instance a problem in the application of the right to
remuneration granted to performers and producers of phonograms and videograms with
regard to broadcasting and communication to the public. Where the remuneration is
considered too high and the user appeals against the decision, the procedure takes a very
long time as the decision will first of all be reviewed by the Minister and then be considered
by the National Administrative Court. It will therefore also be important to accelerate and
facilitate the procedure in reviewing the remuneration tables. In any case, it is hoped that
these issues will be addressed in occasion of the work on a new law governing the collective
administration of copyright and neighbouring rights.
C. Recommendations On the basis of the foregoing observations, a number of recommendations for improvements
are made in the following which may render the Polish copyright and neighbouring rights field
more investment-friendly. The majority of the suggestions concern legal issues. As far as
practical issues are concerned (points 1–8), the most urgent action required is in the field of
collective administration (point 9).
1. International treaties
a) Poland should consider the ratification of the WIPO Treaties following the example of
numerous other countries in the region.
b) Poland should also consider to withdraw the reservations made upon accession to
the Rome Convention.
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2. Points of attachment
a) The points of attachment for phonograms need to be reviewed as they are
inconsistent with the Rome Convention. First and simultaneous publication as well as
fixation of a phonogram in Poland should be considered as additional points of
attachment. Similar considerations apply with regard to videograms, without the
Rome Convention consistency problem though.
b) There are at present no points of attachment for publishers’ neighbouring rights. An
express rule in this respect would be helpful.
c) The points of attachment with regard to joint authors and authors with permanent
residence in Poland should be clarified.
d) Clarifications of the points of attachment are also required with regard to broadcasts.
3. Applicability in time
a) The situation with regard to the applicability in time with regard to publishers’
neighbouring rights requires to be addressed as, at present, there are no specific
rules in this regard.
b) The rules on application in time of the sui generis right in databases require
clarification.
c) The protection of acquired rights as addressed by the transitional provisions of the
Copyright Act is too broad, with exception of the sell off period for phonograms, and
unclear for the Amendment Act of the year 2000 as far as authors’ rights are
concerned.
4. Scope of protection a) The making available right in the sense of Articles 8 WCT and 10 and 14 WPPT
should be expressly introduced in the catalogue of separate fields of exploitation. In
addition, in the neighbouring rights field, it should be expressly granted at least to
performers and producers.
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b) The broad concept of the reproduction right should be clarified, particularly in the field
of neighbouring rights. Temporary and permanent, direct and indirect reproduction in
whole or in part should be covered by the right.
c) The exhaustion rule to the distribution right (“right of putting into circulation”) should
be clarified.
d) The catalogue of rights granted to broadcasters requires to be reviewed and
amended insofar as the communication to the public of a broadcast in places
accessible to the public against payment of an entrance fee is concerned. e) The level of protection for broadcasting and communication to the public of fixed
performances, phonograms and videograms should be reviewed.
f) The rules on the droit de suite will have to be adjusted to the requirements of the
European Union Directive.
5. Duration of protection a) The starting point of the term of protection for phonograms and videograms is not in
line with the European Union’s Duration Directive and requires to be adjusted
accordingly.
b) Clarifications are needed with regard to the term of protection for performers in Article
89 Copyright Act.
6. Limitations and exceptions a) The review of the following limitations and exceptions is required in view of
compliance with international copyright law:
- the private use exception in Article 23 Copyright Act which is too broadly worded;
- the ephemeral recording exception which appears not to be in line with the Berne and
Rome Conventions nor with the Copyright Directive;
- the broad limitations and exceptions for teaching and research in Articles 27 and 28
Copyright Act;
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- the exceptions with regard to free public performances in Article 31 Copyright Act;
- clarification is needed as to why the exception with regard to quotations seems to
apply to rights in computer programs (Article 77 Copyright Act);
- the relationship between Articles 24(3) and 21(4) Copyright Act should be clarified.
b) The private copying royalty scheme in Article 20 Copyright Act should be generally
reviewed. In particular, it will be necessary to provide for a limitation of the number of
copies which may be made for personal use.
7. Miscellaneous legal policy considerations a) In the field of audiovisual works, it should be considered to close the open-ended list
of film authors and to reverse the changes introduced in Article 70 Copyright Act to
create a more investment-friendly atmosphere for the audiovisual industry.
b) It should be envisaged to abandon the domaine public payant regime.
c) In the field of copyright contracts, it is suggested to review the very restrictive rules
with regard to the transfer of rights in unknown uses and in respect of the prohibition
to transfer rights with regard to all future works (Article 41(3) and (4) Copyright Act).
8. Miscellaneous clarifications and definitions a) The definition of performer should be revised in the light of Article 2(a) WPPT.
b) A definition for the term phonogram should be inserted along the lines of Article 2(b)
WPPT.
c) The issue of transferability of neighbouring rights should be clarified.
d) The scope of moral rights with regard to the control of the manner of the use In Article
16 Copyright Act should be clarified.
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9. Collective administration The practical collective administration needs to be urgently reviewed particularly with
regard to the following two aspects:
a) The detrimental competition between several collecting societies in the same field of
exploitation which hampers the stream of revenues to the right owners requires to be
addressed in an adequate way.
b) The process of the review of remuneration tables is too time-consuming as the
procedure is cumbersome and should hence be revised.
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Part III Enforcement
This part examines the enforcement of intellectual property rights infringements from two
different angles: it is first of all a stocktaking of the various bodies involved in enforcement
and of the legal tools which both the intellectual property legislation and related legal sources
grant right owners to defend their legal position (Section A). Secondly, the practical
application of these provisions on a day to day basis in the fight against piracy is outlined in
Section B. Finally, Section C contains recommendations for improvements in the field of
enforcement.
The majority of the relevant legal materials outside the laws governing the various forms of
intellectual property were not available in English translation. This applies in particular to the
Codes on Civil, Criminal and Administrative Procedure. As far as border measures are
concerned, an English translation of the Regulation of the Council of Ministers of 2 February
1999 on the procedure and operating principles for customs authorities for withholding goods
in case of suspected violation of provisions on the protection of intellectual, commercial and
industrial property was made available.
A. Legal tools for the enforcement of intellectual property rights
Infringements of intellectual property rights can be pursued in Poland in civil, criminal and
administrative proceedings. In addition, there are border measures available. Whereas civil
and criminal proceedings are of use in the case of both industrial property and copyright and
neighbouring rights infringements, administrative proceedings are of particular importance in
the field of industrial property. In the following, the various procedures are described in more
detail:
1. Civil remedies and procedure
a) Civil remedies
Both the Industrial Property Act and the Copyright Act and the Law on Databases contain
provisions dealing with civil remedies.
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(aa) Industrial Property rights
Cases involving civil law claims in the field of industrial property protection, not falling
within competence of other authorities shall be decided in civil law procedure in
accordance with the general principles of law (Industrial Property Act Art. 283).
The following cases, in particular, shall be decided in civil law procedure in
accordance with the general principles of law (Art. 284):
• for ascertainment of the right to a patent, a right of protection or a right in
registration,
• for infringement of a patent, a right of protection or a right in registration,
• for ascertainment of the right to exploit an invention, a utility model or an
industrial design in (Art. 71 and 75 of the Act),
• for remuneration for the exploitation of an invention, a utility model or a
topography for state purposes,
• for compensation for the transfer to the State Treasury of a right to a patent for
a secret invention or to a right of protection for a secret utility model,
• for ascertainment of the right to use, in a local-scale activity, a mark registered
on behalf of a third party as a trademark,
• for ascertainment of the right to use a geographical indication,
• for ascertainment of the loss of the right to use a geographical indication,
• for the transfer of a patent, a right of protection for a utility model or a right in
registration of an industrial design or a topography obtained by a person not
entitled thereto,
• for the transfer of a right of protection for a trademark (Art. 161 of the Act).
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A holder of any right granted under the Industrial Property Act , whose right has been
infringed or any person enjoying the same status, may, subject to certain conditions,
demand (Art. 287, 292, 293 and 296):
• the cessation of the infringement,
• the redress of its consequences,
• the surrender of the unlawfully obtained profits, and
• the compensation of damages
The right holder may also request that the infringer shall be required to publish an
appropriate statement in the press and, if he had acted intentionally, to pay adequate
amount of money to one of the organisations mentioned in Article 9 of the Act for the
purpose of encouraging inventive activity.
In case of products bearing a counterfeit trademark, the court, when deciding on
further disposal of the products, may only in exceptional cases recognise removal of
the trademark there from sufficient enough for putting the product into circulation (Art.
297). “A counterfeit trademark” in this respect means any trademark identical with or
indistinguishable in the course of regular trade from a registered trademark, and
unlawfully used in respect of the goods covered by the right of protection.
From the wording of this provision, it may appear that an unregistered, but well-known
trademark does not enjoy the same protection against counterfeit trademarks. This is
but one example of the need for further clarification of the scope of protection of well-
known marks.
In relation to claims for patent infringements, there is a statutory period of prescription
of three years (Art. 289). The period runs separately in respect of each individual
infringement, from the date where the right holder has learned about the infringement
of his patent and about the infringing person. However, in any case, the claim shall
become barred by prescription five years after the date, at which the infringement has
occurred. The period of prescription is suspended for the time between the filing of
the patent application with the Patent Office and the grant of the patent.
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A claim for infringement of the right to a pattern, utility model or industrial design will
often be defended by a claim that the right in question should be invalidated. The
Intellectual Property Act retains the previous system of split jurisdiction between
infringement cases and invalidation cases. The latter are brought before the Patent
Office and are subject to complaint to the Supreme Administrative Court. In practise,
the court hearing an infringement case will stay these proceedings pending the
ultimate decision in the invalidation suit.
Remedies under the Unfair Competition Act
The remedies against acts of unfair competition with respect to civil liability are
regulated in Chapter 3 of the Act.
The entrepreneur whose interest has been threatened or infringed by an act of unfair
competition, may demand the perpetrator to:
• Refrain from illegal acts
• Eliminate the results of illegal acts
• To make or several declarations of appropriate contents and form
• To compensate damage on general principles
• To issue unjustified benefits achieved on general principles.
(bb) Copyright and neighbouring rights
Where the author’s moral rights as set forth in Article 16 Copyright Act have been
violated, the author may have recourse to the remedies which are provided for in
Article 78 Copyright Act. On the basis of Article 78(1) Copyright Act the author may
ask for:
- an injunction;
- the performance of acts that are necessary to eliminate the consequences of
the infringement;
- a public statement of appropriate form and content;
- the payment of a compensation for the damage suffered or of a specified sum
of money to a charity in cases where the infringement was made deliberately.
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After the author’s death, his moral right and any claims on the basis of Article 78(1)
Copyright Act will be exercised by his spouse, and in the absence of a spouse, in the
following order by his descendants, ascendants and collaterals, and the descendants
of his collaterals, unless the author has expressed any other wish. Actions with regard
to infringements referred to under Article 78(1) Copyright Act, may also be brought by
the competent collecting society unless the author decided otherwise.
The civil remedies for infringements of economic rights are addressed by Articles 79
and 80 Copyright Act. The amendments adopted in the year 2000 also introduced a
protection for technical measures and rights management information as required
under Articles 11 and 12 WCT and Articles 18 and 19 WPPT. In essence, on the
basis of Article 80(1) Copyright Act, the author may claim in case of an infringement
of his economic rights:
- an injunction;
- the payment of any income received through the infringement or alternatively
the payment of twice or, in the case of deliberate infringements, three times
the amount of the appropriate remuneration applicable at the time of assertion
of his claim;
- the payment of damages where the infringer was culpable.
Independently of the foregoing sanctions, Article 80(2) Copyright Act empowers the
author to request that the infringer pay an appropriate sum to the Fund for the
Promotion of Creative Activity (Article 111 Copyright Act). Such sum may not be
inferior to twice the probable value of the benefits derived from the infringement. Note
however that this remedy only applies in the case of a deliberate infringement in
connection with an economic activity.
As already indicated, Articles 79(3) and (4) Copyright Act make provision for the
protection of technical measures and rights management information. As far as
technical measures are concerned, Article 79(3) Copyright Act provides that the
remedies enumerated above in the context of Article 79(1) Copyright Act apply to the
removal or bypassing of technical protections against access, reproduction or
dissemination of a work, if such acts aim at illegal use of the work. This provision is a
good first step in the right direction. Nonetheless, it omits important points and will
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have to be revisited if this provision is to be in compliance with Article 6 Copyright
Directive. Regrettably, the provision only covers the circumvention of technical
measures, but not preparatory acts as provided for in Article 6(2) Copyright Act. In
addition, the provision only applies where the circumventing act aims at illegal use of
the work. Consequently, the circumvention would be allowed in order to make use of
limitations and exceptions. Note, however, that in accordance with Recital 39 of the
Copyright Directive, exceptions should not inhibit the use of technological protection
measures. Admittedly, the careful balancing of rights and their protection by technical
measures against the benefit of users from limitations and exceptions under the law is
a rather difficult undertaking. Nonetheless, this should not discourage the Polish
legislature to solve this important aspect in occasion of the adjustment of the
Copyright Act to the requirements of the Copyright Directive. In fact, the Copyright
Directive in its Article 6(4) put in place a legal mechanism to ensure that, under
certain circumstances, users will not be prevented from the benefit of certain
limitations and exceptions.
Article 79(4) Copyright Act applies the above sanctions referred to in paragraphs (1)
and (2) of the same provision to the unauthorised removal or modification of any
information that identifies the work, the author, the subject of copyright to the work or
information about the terms of the use of the work, where such information is attached
to the copy of the work or exists in connection with the dissemination thereof, as well
as to cases of culpable dissemination of works with such information removed or
modified without authorisation. This provision also gives rise to criticism as far as
infringing acts with regard to the dissemination of rights management information
without the relevant information is concerned. The wording of Article 79(4) Copyright
Act merely refers to “dissemination” and thus appears to leave out acts such as the
broadcasting, communication and making available to the public as provided for in
Article 7 Copyright Directive. Again, in this context the provisions adopted by the
Community legislature can function as valuable guidelines.
As far as neighbouring rights are concerned, the protection of moral rights as
provided for in Article 78 also applies to artistic performances (Article 92 Copyright
Act). As far as economic rights are concerned, the provisions of Article 79(1) and (3)
Copyright Act apply on the basis of Article 101 Copyright Act. This means that the
provisions contained in Article 79(4) Copyright Act with regard to the protection of
rights management does not apply in the field of neighbouring rights. However, at
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least as performers and producers of phonograms are concerned, the protection of
rights management information must equally apply. Under the EU’s Copyright
Directive protection in Article 7 applies to all authors’ and neighbouring rights as well
as to the sui generis right of the maker of a database. It would therefore appear
appropriate to extend the protection accordingly also under Polish law.
As far as infringing copies and equipment used for the infringement are concerned,
Article 80(3) and (4) Copyright Act give the competent court the power to pronounce
the forfeiture to the Treasury of goods used for committing the offence or of illegal
copies which are presumed to belong to the person who violated the rights (Article
80(6) Copyright Act). The injured party may also request the court to order that such
equipment be handed over as an advance on payable damages.
(cc) Sui generis right
The Law on the Protection of Databases also contains a specific provision concerning
civil remedies for the infringement of the sui generis right of the maker of a database.
Pursuant to Article 12.1 of the Law, the maker of a database may request an
injunction, the restoration of the situation prior to the infringement, the return of
financial benefit gained illegally and damages according to general principles.
According to Article 12.2 of the Law, the court may also take a decision as to the fate
of the objects made illegally at the request of the right owner. Note that unlike in the
EU’s Copyright Directive, the sui generis right does not benefit from the protection of
technical measures and rights management information. This situation should be
remedied in view of the introduction of the acquis communautaire which Poland is
obliged to incorporate in its legislation on the basis of the Europe Agreement.
b) Procedural aspects
In the absence of an English translation of the Civil Procedure Code, only an overview of the
procedure can be given as it was learned from discussions with the interviewed parties:
According to Article 80(1) Copyright Act, the court of the place in which the infringer
exercises his activity or where he holds his assets is competent for copyright cases.
Infringements of neighbouring rights fall within the competence of the Regional Court (Article
103 Copyright Act) in first instance. The decisions of the Regional Court may be appealed to
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the Court of Appeal. If the value of the litigation exceeds 35.000 Zloty (which equals about
10.000 USD), recourse to the Supreme Court against the judgment rendered by the Court of
Appeal is possible. Note that, in practice, it appears that difficulties in determining the value
of the litigation are sometimes experienced.
Apart from the unwillingness of judges to take over intellectual property cases, the biggest
impediment against proper enforcement are the long delays that are experienced before
Polish courts. It has been reported that it takes about 2 to 3 years on average to obtain a
decision of a first instance court. The procedure before the Court of Appeal usually takes
between 6 months to 1 year. If the litigation continues before the Supreme Court, this may
take another year. Consequently, it may take up to five years to obtain a final judgment in a
trademark or copyright infringement case.
It has been indicated that intellectual property disputes in Poland may also be pursued
before the commercial courts. It would appear that these proceedings are less cumbersome.
It is, apparently, possible to render decisions ex parte and the courts decide mainly on the
basis of documentary evidence. It does, however, not appear that the procedure would be
much faster than before the ordinary Regional Courts.
Before the ordinary courts, the parties present the available evidence which, apart from
documents, can also be witnesses.
A considerable burden in the proceedings is increasingly the request by courts to present an
expert opinion as to the question of right ownership. This is one of the big problems as courts
have a tendency to recognise only expertise carried out by independent experts. However, in
general only the right owner has the pertinent knowledge of the situation of rights as to a
particular IP good. Therefore the expert will have to obtain the views of the right owners on
the basis of which he will give his opinion. In many cases, the expert will just add a covering
letter to the written information given by the right owners as to the ownership of rights in a
particular work or other protected subject matter. The procedure is therefore slow and
expensive and can be considered as overall cumbersome. It would be much easier to admit
proof by right owners rather than having to rely on the expertise of third parties who are not
entirely familiar with the situation.
Finally, in view of the cumbersome and time-consuming procedures before the ordinary
courts, it would appear that out of court settlements are of particular importance in Poland.
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c) Provisional measures
Preliminary relief is generally available in the form of interim junctions, which are regulated in
Art. 730 to 757 of the Civil Procedure Act. Interim junctions are granted on the balance of
probabilities and on the plaintiff proving the likelihood of a loss in the absence of an
injunction. It may also be granted in order to safe guard the execution of a judgement.
(Fiolka, Janusz, The Enforcement of Industrial Property Rights in Poland, iipr 8/2001: 929).
The Unfair Competition Act contains a special provision on preliminary relief in Art. 21. The
entrepreneur whose interest is threatened by infringement may apply for a preliminary
injunction to the court in the district where the property of the infringer is located or where the
act of unfair competition would take place. The court may decide to prohibit sale or
advertising.
The Copyright Act also makes provision for preliminary relief which may be granted before
legal proceedings have been initiated. Pursuant to Article 80(1) Copyright Act, within three
days from the given proof of a legal interest by the applicant, the competent court - as
referred to in the preceding paragraph - may order, eventually against payment of a security:
- the preservation of evidence, without there being any need to prove the risk of
the evidence becoming too difficult or even impossible to produce;
- placing the person violating the economic rights under the obligation to
communicate such information and supply such documentary material as may
be specified by the court and may be important in relation with claims referred
to in Article 79(1) Copyright Act;
- the preservation, by means of an appropriate provisional ruling, of the validity
of the claims assertable in connection with the violation of economic rights
under the pretext that it would be probable that without such a measure the
owner of rights risks being deprived of the possibility of obtaining satisfaction,
even if the provisional ruling is intended to ensure the fulfilment of the said
claims.
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It appears that a test case was brought last year with regard to obtain such measures ex
parte. Note that, in practice, it seems that the decisions on provisional measures rarely occur
within three days. More often, such decisions would appear to take up to a week, sometimes
even two weeks or one month. Where appeals have been lodged against provisional
measures as ordered by the court, the court shall consider these within a period of seven
days (Article 80(7) Copyright Act).
2. Criminal sanctions and procedure
a) Criminal sanctions
Criminal sanctions are available against the unlawful use of intellectual property in all forms,
be it objects of copyright and neighbouring rights, industrial property rights or acts of unfair
competition.
aa) Industrial Property Rights
Infringements of intellectual property rights can also be pursued in criminal proceedings. This
section therefore gives an overview of the criminal sanctions available and outlines the
course of the criminal proceedings.
The Industrial Property Act contains penal provisions in its Title X. Prosecution for these
offences are initiated at the injured person’s request only, which marks the difference to
violence of the Copy Right Act.
Violations covered under the Industrial Property Act
Sanctions provided for under the Industrial Property Act
Unauthorised filing of another’s invention, utility model, industrial design or topography in order to be granted, a patent, right a protection or a right in registration (Art. 304 Industrial Property Act) Disclosing information on another’s invention, utility model, industrial design or topography, or preventing another party from granted a patent, a right of protection or a right in registration
A fine, restrictions of liberty, or imprisonment for a period of up to 2 years
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Unintentional disclosure of prevention of right being granted
A fine
Marking goods with counterfeit trademark for the purpose of placing them on the market or placing on the market such goods (Art 307) Where the above act is of minor gravity When the above act is committed as a regular source of income When the above act is committed in respect of goods of handsome value
A fine, restriction of liberty or imprisonment up to two years A fine Imprisonment for a period from six months to five years. For feature to the fescue of the proceeding from the offence as all as the materials, tools and technical means employed
Marking goods not protected by a patent, a right to protection for a utility model or a right in registration for an industrial design, for topography or for a geographical indication, with statements or signs aimed at giving the impression that the goods enjoy such protection, (Art 307 Industrial Property Act) Putting on the market or preparing or stocking for that purpose the goods referred to above, or providing by announcements, communications or otherwise information calculated to give the impression that the goods enjoy legal protection, while being aware of they are being falsely marked
- A fine or - detention (not specified)
Putting on the market goods sparing a trademark accompanied by a discriminant which is intended to give the false impression that the goods enjoy such protection (Art. 308 of Industrial Property Act)
A fine
Violations of the Unfair Competition Act Disclosure of trade secrets, that causes significant damage. (Art. 23.1 Unfair Competition Act) Legal acquiring of a trade secret and disclosure of it to another person or use of it in own economic activities (Art. 23.2)
Sanctions provided for under Unfair Competition Act A fine restriction of liberty or imprisonment up to two years
Copying the outlook of a product and introducing a product to turnovers, less creating the possibility of misleading the clients as to their identity of the producer or the product and causing significant damage to the entrepreneur (Art. 24 Unfair Competition Act)
A fine Restriction of liberty Imprisonment up to two years
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Misleading marking or failure to mark goods or services, that is misleading the client as far as the identity, quantity, quality, components, manner of manufacturing, usefulness, application, repair, maintenance or other significant features of goods or services, or concealing of the risk related to their use, thus causing significant damage to the client. (Art. 25 Unfair Competition Act.
A fine Arrest
(bb) Copyright and neighbouring rights
Criminal sanctions against infringements of copyright and neighbouring rights are sanctions
for infringements against computer programs exist in Article 278 Criminal Code. The
sanctions have been considerably increased by the amendments passed in the year 2000.
The criminal offences enumerated in the Copyright Act are listed in the following overview:
Violations covered under the Copyright Act
Sanctions provided for under the Copyright Act
Violations of moral rights as follows: False attribution of authorship or misleading others as to the authorship of a whole or part of another person’s work or artistic performance (Article 115(1) Copyright Act) Dissemination of a work in the original or derivative version without the name or the pseudonym of the author or public distortion of such a work, performance, phonogram, videogram or broadcast (Article 115(2) Copyright Act)
In all mentioned cases of moral rights violations in Article 115 Copyright Act, the sanctions available are: - a fine; - restriction of liberty; or - imprisonment up to 3 years.
General copyright and neighbouring rights infringement other than indicated in Article 115(1) and (2) Copyright Act above in order to gain material benefits (Article 115(3) Copyright Act)
- fine; - restriction of liberty; - imprisonment up to 2 years
Unauthorised dissemination of another’s work, performance, phonogram, videogram, broadcast in the original or derivative version (Article 116(1) Copyright Act) Where the above act is committed in order to gain material benefits (Article 116(2) Copyright Act)
- fine; - restriction of liberty; - imprisonment up to 2 years. Imprisonment up to 3 years
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Where the above act is committed as a regular source of income or manages a criminal activity of the same kind (Article 116(3) Copyright Act) Where the above act is committed unintentionally (Article 116(4) Copyright Act)
Imprisonment from 6 months to 5 years - fine; - restriction of liberty; - imprisonment up to 2 years.
Unauthorised fixation or reproduction of another’s work, performance, phonogram, videogram, broadcast and giving consent to their dissemination (Article 117(1) Copyright Act) Where the above act is made as a regular source of income or where a criminal activity as above is managed (Article 117(2) Copyright Act)
- fine; - restriction of liberty; - imprisonment up to 2 years. Imprisonment up to 3 years
Purchase or assistance in selling or accepting or assisting in concealing objects which are carriers of works, performances, phonograms or videograms disseminated without authorisation or against its conditions (Article 118(1) Copyright Act) Where the act serves as a permanent source of income or where a criminal activity as above is managed or organised (Article 118(2) Copyright Act) Where the infringer committing one of the acts referred to in Article 118(1) and (2) could have presumed that the object has been obtained through an illegal act (Article 118(3) Copyright Act)
Imprisonment from 3 months to 5 years Imprisonment from 1 year to 5 years - fine; - restriction of liberty; - imprisonment up to 2 years
Preventing or impeding the exercise of an exclusive right with regard to a work, performance, phonogram or videogram or refuses to provide information on the amount of income received from the use of the work (Article 119 Copyright Act)
- fine; - restriction of liberty; - imprisonment up to 1 year.
Criminal sanctions for infringements against technical measures and rights management information appear to be available in Article 118¹ Copyright Act.
No translation available of the provision – hence no further details can be given.
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In addition to the above fines and sanctions with regard to restriction of liberty or
imprisonment, Article 121 Copyright Act also allows for the seizure of infringing copies as
well as for the seizure of equipment used for committing the offence and this even in cases
where the materials are not the property of the infringer.
Although the catalogue of sanctions for offences against intellectual property rights is already
impressive, there are nonetheless some other points which, if taken into consideration, would
strengthen the criminal enforcement against piracy even further:
- Closure of the business or revocation of a business licence (such a provision
could be based on Article L. 335-5 French Intellectual Property Code);
- Publication of the judgement (see the example in Article L. 335-6 French
Intellectual Property Code).
- Finally, the provisions in the Criminal Code would gain from a provision which
would clarify the criminal liability of legal entities. Such a provision could be
based on Article L. 335-8 French Intellectual Property Code.
(bb) Computer programs
As already indicated, specific provisions exist for criminal sanctions with regard to
infringements committed against rights in computer programs. In essence, the amendments
which were introduced in 1998 apply the criminal sanctions for theft (Article 278 Criminal
Code) and distribution of illegal materials (Articles 291 – 293 Criminal Code) to infringements
with regard to rights in computer programs.
Consequently, a person who obtains a computer program without authorisation of the right
owner for the purpose of deriving material gain, can be punished with imprisonment from 3
months to 5 years. In less serious cases, the sanctions can be a fine, restriction of liberty or
imprisonment up to 1 year (Article 278(1), (2) and (3) Criminal Code). Where the offence is
committed against property of significant value, the penalty is imprisonment from 1 to 10
years.
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As far as the distribution of and dealing in infringing objects is concerned, fines, restriction of
liberty and imprisonment from 3 months up to 5 years may apply as a result of Article 293 in
conjunction with Articles 291 and 292 Criminal Code. In specific cases involving property of
significant value, the imprisonment may be from 1 to 10 years. In addition, the court may
order the confiscation of the illegal copies which are distributed (Article 294 Criminal Code).
The criminal sanctions which apply to offences with regard to computer programs are
therefore much higher than in cases of the infringement of other works and the like protected
by copyright or neighbouring rights. The justification of higher penalties for computer
programs has been questioned in legal doctrine32. However, the fact that higher penalties are
available for one group of copyright infringements should be seen as a positive aspect: the
unlawful use of objects which are protected by copyright and neighbouring is nothing else
than theft. The legal regime for offences with regard to computer programs is therefore a
good first step in the right direction. The extension of this rule to offences with regard to other
objects of copyright and neighbouring rights should be taken into consideration on the basis
of the precedent in the field of computer programs.
(cc) Sui generis right
Article 13(1) Law on Databases provides for specific criminal sanctions for the infringement
of the sui generis right of the database maker. According to this provision, a fine will be
applied to whoever extracts or re-utilises the entire database or a substantial part thereof
without authorisation or contrary to the conditions of such authorisation. The decision will be
rendered on the basis of the “Code of Procedure regarding Petty Offences”, presumably a
specific procedure for minor offences, comparable most probably to the
“Ordnungswidrigkeitengesetz” in Germany.
b) Procedural aspects
As already indicated, there was no English translation of the Code on Criminal Procedure
available. For this reason, the criminal procedure can only be outlined on the basis of oral
information which was obtained during the consultants’ visit to Poland.
32 Barta/Markiewicz, in Nimmer, International Copyright, § 8[5][b].
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In a nutshell, the general course of criminal procedure in Poland appears to be no different
from the practice in other European countries, for instance in France or Germany. As soon
as the police has knowledge of a violation of intellectual property rights, the investigations will
start. Where enough evidence for a criminal offence in the field of intellectual property rights
has been gathered, the result of the investigations will be handed over to the public
prosecutor. The public prosecutor then decides whether or not a claim will be raised before
the courts. In the affirmative, the court will render its verdict on the intellectual property rights
offence on the basis of the evidence submitted by the prosecution and gathered in the court
hearing.
In more detail, the work of the different public bodies involved in the criminal prosecution may
be summarised as follows:
(aa) Police
The Economic Crime Department of the police has a specialised unit on Computer and IP
crimes which is involved in the enforcement of intellectual property rights violations. A
number of regional police offices have similar units and it is the aim to provide such a
structure at every major police office in Poland.
The special IP unit co-operates closely with the right owners, the collecting societies and in
particular the anti-piracy coalition established by BSA, ZPAV (the local IFPI group) and
FOTA (an anti-piracy organisation which was set up primarily by MPA). In view of the
specialised work of the unit, the number of pirate copies sold decreased considerably over
the past years. According to reports by the police, the levels of pirate and counterfeit goods
decreased from about 80-90% to regions between 20 – 40% today depending on the industry
involved. Also, the kind of infringements the police has to pursue have changed in the last
years. Whereas in the years following 1994, the police was mainly involved in liquidating
unlawful operations in Poland, the illegal product is now primarily entering into Poland via the
Eastern border from Ukraine, Lithuania or Belarus. Reportedly, over 80% of all counterfeit
product originate abroad, primarily in Russian speaking countries or the Far East. This
development requires close co-operation with the customs authorities. In the year 2000,
1300 preparatory proceedings were introduced by the police and 3.000.000 music carriers
were seized. The situation appears to be similar in the audiovisual, software and brands
sector.
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Increasingly, unlawful product is also distributed over the Internet which represents a major
challenge for the police as it does not appear to be satisfactorily equipped with the necessary
IT products.
As soon as the police obtains information on a possible IP violation, the investigative work
will start. Information can be provided by the right owners, but the police also carries out its
own market research. An important improvement in the copyright and neighbouring rights
field was introduced by the amendments passed in the year 2000 which enable the police
now to act ex officio (Article 122 Copyright Amendment Act).
When the police has to conduct a raid, it is necessary to request a search warrant from the
public prosecutor. However, in urgent cases the police may carry out search and seizure
without a search warrant. In such cases, the subsequent approval by the prosecutor is
sufficient.
Once infringing material has been seized, an expertise is necessary in most cases. As
already shown in the part on civil proceedings, this is a big problem as courts have a
tendency to recognise only expertise carried out by independent experts which renders the
procedure time-consuming and costly.
Once the police has finished the investigations, the findings will be handed over to the public
prosecutor who is to decide on the further course of proceedings, i.e. whether or not he will
raise a claim.
(bb) Public prosecutor
There is no specialisation of public prosecutors in the field of intellectual property rights. This
fact may explain the initial reluctance of public prosecutors to continue proceedings at the
judicial level. A number of copyright industries reported that in the years around 1994,
prosecutors would dismiss about 50% of the proceedings submitted to them, whereas
nowadays this happens only in 2 to 3% of the cases and with good reason. Still, the
procedure at public prosecutor level is reportedly slow, it can take several months until the
prosecutor decides to raise a claim. Where the prosecutor does not continue the
proceedings, the decision may be appealed to the Administrative Court. Where the
prosecutor decides to raise a claim, the procedure continues before the competent court.
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(cc) Courts
As intellectual property rights infringements are qualified as an offence, the district court is
competent for dealing with the case. Regional courts are only competent for crimes. There
are reportedly no specialised courts. Note, however, that as far as copyright and
neighbouring rights are concerned, Article 123 of the Copyright Act empowers the Minister of
Justice to appoint, by way of regulation, local courts competent to hear the criminal cases
provided for in Articles 115 – 119 Copyright Act within the jurisdiction of a given district court.
Although there is officially no specialisation, the courts in larger commercial centres are more
often confronted with IP infringements with the consequence that these judges have become
more familiar with the subject.
Courts seem to work as slowly as the public prosecutor. On average it takes several years
until the case is decided. The exact duration varies from court to court. As an example, in
Warsaw it takes usually more than 3 years to obtain a final judgment in a criminal case. This
is however not a specific problem in the intellectual property field, but a general shortcoming
of the Polish court system.
Another problem are the sanctions which are finally applied. On average, Polish courts order
only the minimum levels of fines in the region of 50 to 500 USD and imprisonment is mostly
suspended. Needless to say, such fines are no deterrent to piracy.
Note that it is also possible to bring a so-called annex procedure to a criminal case in which
the injured parties may obtain relief for damage suffered as a result of the infringement. The
views on the usefulness of this procedure are divided: whereas the motion picture industry
generally employs the annex procedure to obtain damages after a criminal case is decided,
others prefer to make an out of court settlement. One of the reasons which have been put
forward for this attitude appears to be the fact that a criminal procedure can only be directed
against a physical person and not a company. As the request for damages will in most cases
be directed against a legal entity, the annex procedure would be of no use as it could only be
directed against the offender sentenced in the criminal proceedings, i.e. the physical person.
The judgment of the district court may be appealed to the regional court. The decision of the
regional court can be further subject to cassation by the Supreme Court.
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3. Administrative sanctions and procedure
Administrative proceedings are of importance primarily in the field of industrial property rights
and will be reviewed in this context only. In the copyright field, administrative proceedings are
used in cases where the decision of an administrative body needs to be reviewed, such as in
the case of remuneration tables drawn up by the Copyright Commission. The new Industrial Property Act introduced for the first time judicial review of administrative
decisions taken by the Patent Office. All such decisions may be subject to complaint to the
Supreme Administrative Court. This judicial review replaced the appeal procedure under
previous legislation whereby decisions were reviewed by a special appeal committee within
the Patent Office (staffed, however, i.a. with Supreme Court judges). After the entering into
force of the new Act in August 2001, the Supreme Administrative Court took over the
pending caseload from the Appeal Committee, and is currently processing these cases as
well as admitting complaints of the decisions taken under the new Act. The caseload
transferred from the appeal committee consists of approximately 100 cases, of which more
than 90 % relate to trademark decisions.
The Supreme Administrative Court is divided into five specialised divisions, of which IP-
matters is allocated to one (but not exclusively). This division has 16 judges most of whom
were unfamiliar with this area of law. The procedural rules of the Supreme Administrative
Court was not available in English, and the following information is based solely upon an
interview with the Vice President of the Supreme Administrative Court and two of the judges
from the section that handles intellectual property matters.
The Supreme Administrative Court has competence over any decision taken by the Patent
Office. The right to file a complaint is granted to anyone with a legal interest in the outcome.
The extent to which third parties may have sufficient interest remains unclear. Interested
parties dearly encompass anyone who has unsuccessfully applied to the Patent Office,
whether for the grant of a right or to oppose the grant of one.
The Court shall establish whether the decision in question is made in accordance with the
law. The Court will primarily look into procedural issues such as how the case has been
handled and whether the relevant issues have been sufficiently clarified. In some cases, the
Court may find it necessary to review the case on its merits. However, there is no further
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evidential investigation involved in the Court procedure. The judicial review is conducted with
respect to the case as it was decided by the Patent Office.
The complaint is made in writing and submitted to the Patent Office, which is obliged to
respond in writing before the case is transferred to the Supreme Administrative Court. The
Court may decide to hold a hearing in which the parties are given an opportunity to present
their case. The Court may also decide to review the complaint in a closed meeting without
holding a hearing.
If the Court finds that the decision in question is not in accordance with the law, the decision
will be set aside and the case sent back to the Patent Office. The ruling will be accompanies
by written reasons indicating why the decision is not considered correct and how the case
should have been handled. The legal evaluation of the Supreme Administrative Court is
binding for the Patent Office.
In the short time of carrying out judicial review in industrial property matters, no line of
authority can yet be identified which helped to clarify the many unresolved issues in the
statutory provisions. However, there have been a few important decisions in the area of
trademark law, in which it has become clear that the Supreme Administrative Court will lean
heavily on the practice of the European Court of Justice and other EU sources where
applicable. It is the view of the judges who were interviewed, that the solutions of the ECJ
should be invoked as far as practical, since one of the main objectives of the new act has
been to implement the EU legislation in the field of intellectual property law.
One of the great advantages of introduction traditional review over patent office decisions, as
perceived by the Supreme Administrative Court judges as well as practitioners in the field, is
the opportunity this gives to develop a coherent case law through the issue of recent
judgements. The challenge, likewise perceived by the judges as well as the practitioners, lies
in the fact that this is a new field to most of the Supreme Administrative Court judges
assigned to handle the cases. However, a few of these judges have previously served on the
appeal committee of the patent office, and the court was joined by one academic expert in
the field. The court is in a course of implementing a training programme for the judges in the
field of the Industrial Property Law.
Average time from the filing of a complaint to a decision being headed on by the Supreme
Administrative Court, is twelve months.
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4. Border measures As the entry of counterfeit and pirate goods through Poland’s eastern borders appears to be
one of the major problems at present, a good border enforcement regime is of the utmost
importance. In 1996, a specific Intellectual Property Department was established within the
Central Board of Customs. In addition, there are on average 2 Intellectual Property co-
ordinators in the 17 regional offices of the Customs Board.
An important point in the work of the special Intellectual Property Department is training of
the customs officials, and this not only in Poland but also in the surrounding countries along
the eastern border, such as Ukraine at present and Lithuania and Belarus in the future. Of
course, co-operation with surrounding countries is of particular importance in view of the
large amounts of imported counterfeit and pirate goods. Internal training is organised as a
three monthly update on inspection activities and a special training twice every year for the
Intellectual Property co-ordinators. There are also locally organised regional courses and, to
a large extent, training is also carried out by right owners.
Border enforcement of intellectual property goods is carried out on the basis of a Regulation
of the Council of Ministers dated 2 February 1999 on the procedure and operating principles
for customs authorities for withholding goods in case of suspected violation of provisions on
protection of intellectual, commercial and industrial property. This Regulation empowers
customs officials to withhold infringing goods at the border either ex officio or upon
application by the right owners (for counterfeit trademarks, Art 299 of the Industrial Property
Act sets out the relevant conditions upon which a trademark owner may request suspension
of goods). In practice, it would appear that half of the procedures are initiated on the basis of
an application and the other half ex officio. The reason for the relatively low percentage of
procedures initiated on application is in the view of the customs officials that right owners do
not want to show that their products have been counterfeited or pirated or that the quantity
which could be seized is just too low. Sometimes, right owners also do not continue
proceedings where goods have been seized ex officio.
The procedure of border enforcement is set out in more detail in the following:
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a) Scope of the Regulation
It results from the definitions in §1 of the Regulation that both counterfeit and pirated goods
fall under the scope of the Regulation. The definition of “counterfeit goods” is designed along
the lines of the EU Regulation on border enforcement33. In essence, the notion of counterfeit
goods cover product carrying, without authorisation of the right owner, a trademark or
trademark symbol identical with a registered trademark or a trademark or trademark symbol
which cannot be in its essential aspects distinguished from such trademark. The same
applies under the same circumstances to packaging materials bearing said trademark. As far
as pirated goods are concerned, these comprise goods which are or embody copies made
without the consent of the holder of the copyright or related rights or of the holder of an
industrial design right, whether registered or not, and where the making of such copies
constitutes an infringement of such rights. Finally, any mould or matrix which is specifically
designed or adopted for the manufacture of counterfeit goods or of pirated goods are treated
as counterfeit or pirated goods.
The scope of application is thus congruent with Article 51 TRIPS which requires the
application of border measures with regard to counterfeit trademark or pirated copyright
goods. Note however that the Regulation does not appear to expressly extend to patents as
this is the case under Article 1(2)(a) EU Border Enforcement Regulation.
b) Procedure upon application by the right owner
On the basis of § 2 of the Regulation, a right owner or his agent may submit a written
application to the President of the Central Board of Customs for the protection of intellectual,
commercial or industrial property.
It remains unclear what the application for the protection of intellectual, commercial or
industrial property comprises. In view of the case law by the European Court of Justice34
interpreting the EU Border Enforcement Regulation, the protection should not only extend to
importation and exportation, but should also cover transits.
33 Regulation (EC) No 3295/94 laying down measures to prohibit the release for free circulation, export, re-export or entry for a suspensive procedure of counterfeit and pirated goods as amended by Regulation (EC) No 241/1999 of 25 January 1999, O.J. of 2 February 1999 L27/1. 34 European Court of Justice, Case C-383/98 Polo Lauren Co. v. PT Dwidua Langgeng Pratamva, Decision of 6 April 2000, GRUR Int. 2000, page 461/2.
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The application needs to provide for:
- information on the applicant;
- information on the right owner;
- a description of goods that are subject to protection allowing to identify the
goods including the code number of the customs tariff, the sending country,
the country of production and data on the producer.
- the assumed customs value of the goods to be withheld;
- the requested protection period.
The appendices to the application must contain:
- an original or an authorised copy of a proof of ownership of intellectual,
commercial or industrial property rights;
- an authorisation to request for the protection of intellectual, commercial or
industrial property rights if the applicant is not identical with the owner of these
rights;
- evidence to allow for the identification of the goods subject to the protection of
intellectual, commercial or industrial property rights.
The application may be further supplied with information on the import into the Polish
customs territory of counterfeit or pirated goods.
The President of the Central Board of Customs shall decide on the application (§ 3 of the
Regulations). Where the President dismisses the application, the applicant may appeal to the
administrative court. Where the President approves the application, the decision should
include in particular
- the specification of the object of protection;
- the period of protection which can be up to twelve months and which may be
renewed once;
- the amount of security;
- the period when the security should be delivered.
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The security is used to cover the costs related to customs custody of goods and to secure
claims of persons whose rights could be violated by withholding the goods. The amount of
security shall amount to 10% of the assumed customs value of the withheld goods, but no
less than 5000 Euro. In special cases, the President may decrease the value of the security
or renounce from it. In other instances where it turns out that the sum is not sufficient to
cover the costs of the procedure, the President may increase the level of the security to be
paid. Where the applicant fails to pay or increase the security, a decision with regard to the
expiration of the decision or their release will be ordered (§§ 4 – 6 Regulations). The security
or parts of it may be returned to the applicant, if only a part or none at all was used to cover
the costs of the procedure (§ 11 Regulation). It would appear that these conditions are in line
with the requirements set in Article 53 TRIPS.
According to § 7 of the Regulation, the customs authority shall provide written information to
the importer or exporter as well as to the applicant regarding the withholding of the goods.
The customs authorities may also notify the applicant upon request of the name and address
of the importer or exporter and the consignee so as to enable the applicant to organise the
launch of the proceedings before the competent authorities.
The procedure which follows the withholding of the goods is very similar to Article 55 TRIPS:
Within 10 working days after the applicant has been served with the notice of the
suspension, the applicant has to provide the customs authorities with a provisional court
order to secure the applicant’s claims or an order issued in criminal proceedings. Failure to
do so by the applicant will result in the release of the withheld goods by the customs
authorities. The period may be extended upon request from the applicant for a further 10
days in the case of the court’s failure to consider the motion to issue a provisional order or a
proper order which is issued in criminal proceedings.
c) Ex officio procedure
On the basis of § 9 of the Regulation, customs authorities may also act ex officio where it
appears evident that goods are counterfeit or pirated. In such a case the goods may be
withheld for three working days to enable the right owner to submit an application which will
follow the procedure described above. The customs authorities may also provide the right
owner with a sample of the withheld goods in order to conduct tests to determine the
characteristics of the withheld goods (§ 10 Regulations). If the right owner fails to submit an
application, the withheld goods will be released.
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B. Practical Enforcement
Piracy and counterfeiting on the Polish market affects all industries: trademark goods,
software, motion picture, books and music. Counterfeit and pirate goods are either
manufactured in the country or imported via the eastern border from Ukraine, Belarus or
Lithuania.
Illegal copies are sold in big quantities at public markets such as the notorious “Stadium” in
Warsaw, a large open market located at the outskirts of Warsaw. In view of the tight
schedule, it was not possible for the consultants to visit this market. Reportedly, large
amounts of counterfeit and pirate goods are distributed at this market. Pirated optical media
material is present in all forms affecting primarily the music, computer and entertainment
software industry but also the audiovisual sector. So far, it was not possible for the public
authorities for alleged political reasons to close down the Stadium or at least to eliminate the
sale of optical media materials from the market. There are also reports that enforcement
actions by the police are seriously hampered by loudspeakers on the market announcing the
start of enforcement actions so that a large majority of infringers is capable to escape the
police action. It also seems that to a large extent the happenings at the stadium involve
organised crime elements. Needless to say, piracy and counterfeiting cannot be successfully
defeated, as long as the Stadium continues to operate. Similar markets exist in Krakov and
other large centres in the country and their existence do not only affect the various industries
involved, but also causes significant losses to the Polish state in terms of revenues from VAT
and income tax. Consequently, it would be an important step if the Stadium and similar
markets elsewhere were closed down.
Right owners have also been active in the fight against piracy by creating in 1998 a special
Anti-Piracy Coalition involving three organisations, ZPAV (the Polish National Group of IFPI),
FOTA (for the audiovisual sector associated with the MPA) and the Polish branch of the
Business Software Alliance (BSA). The co-operation of the Coalition with the police and
customs appears to be very fruitful. The Coalition also gives an incentive for a successful
fight against piracy by honouring the best enforcement action with the so-called “golden
badge”.
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The real obstacle to practical enforcement may be found at judicial level. Although the
situation seems to have improved since 1994, the delays caused by public prosecutors and
judges are still important. It already can take several months for a public prosecutor to decide
whether a proceeding should be continued with the raising of a claim. Judges who are still
not very familiar with intellectual property disputes reportedly prefer to first of all continue with
cases in areas better known to them than intellectual property. This situation can only be
remedied with training for judges and prosecutors and a review of the court system.
1. Piracy affecting the various industries
Piracy in the various industry sectors appears in the following forms:
a) Music industry
Although significant progress was made in fighting music piracy since the introduction of
neighbouring rights protection in 1994, music is nonetheless badly affected by piracy.
Although pirate recordings are still produced by some of the 12 CD plants in Poland, a larger
part of pirate recordings is imported into Poland via its eastern borders. The international
recording industry estimates that piracy of sound recordings in Poland reaches a level of
30%. This assessment is confirmed by the police which also considers music piracy to be in
the region of 30-40%. The quality of the recordings is high, in most cases identical with the
legitimate recording.
Reportedly, 300.000 illegal CDs are smuggled through the eastern borders into Poland every
month. The imported recordings are mainly produced in Belarus or Ukraine, but some
originate from Russia, Lithuania or even the Far East. CDs are primarily produced and
distributed via an organised crime network. But police and customs regularly also seize
pirate CDs in personal luggage of travellers in private cars, buses and trains. The problem is
so important that ZPAV has to rent a warehouse where the seized pirate recordings are
stored before they are destroyed. Hence ZPAV is not only damaged by the acts of piracy as
such, but incurs cost for both storage and destruction. Border enforcement is therefore of
prime importance. The recording industry reports that the co-operation with customs is good
and that customs authorities have lately developed more sensitivity for the significance of
intellectual property rights infringements. In view of the problems at the eastern borders,
numerous officials had been moved from the western to the eastern borders. The situation
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requires of course also a co-operation of Polish customs with their counterparts in
surrounding countries, notably Ukraine, Belarus and Lithuania.
ZPAV also made a significant contribution to the training of customs officials. One of the
problems identified here is the flux of employees. As there is no continuity in staff, the
training efforts must be repeated very often to teach new officials which are moved from
other offices. This is a waste of time, effort and money and of course does not help the
authorities in building up in depth knowledge of their staff.
As far as pirate recordings produced in Poland are concerned, the specific CD plant
monitoring programme has led to four criminal investigations against CD plants. In order to
avoid further growth in the production of pirate CDs, Poland should take steps to regulate
optical media production. Before 1 January 2000, a special system of concessions for CD
replication was in place which, unfortunately, was subsequently abolished. Such a system
should be reintroduced. Apart from the concession for CD replicators, the law should
regulate the production, distribution and export of optical media as well as the importation of
raw materials. In addition, the plants should be required to adopt the Source Identification
(SID) Code. With the help of the SID Code illegal reproduction of recordings can be traced so
that the necessary steps against infringers can be more easily taken. At present, a voluntary
SID Code scheme is in place, but a legal obligation to use such a code would even enhance
its beneficial effects.
Pirate music does, however, not only exist in tangible form, there are also numerous Polish
websites offering pirate recordings for downloads. The majority of these sites could be closed
down on the initiative of ZPAV with good co-operation from the service providers, but the
danger remains imminent. This development also demonstrates the need for Poland to adopt
legislation which would facilitate the fight against infringements on the Internet. ZPAV
considers the ratification and the swift implementation of the WIPO treaties as important for
its anti-piracy work.
It would appear that the music industry is generally satisfied with the co-operation with the
police and the customs authorities. A serious disadvantage in the fight against piracy is
however the fact that courts increasingly request the submission of independent expertise
with regard to the rights ownership situation in the recording which is pirated. As independent
experts usually will have to request such information from the right owners, the record
companies finally pay for an expertise which, in essence, is established by themselves and
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only accompanied by a covering letter of the expert. This practice renders the procedure
costly and long.
b) Software industry
Software is also badly affected by piracy. Since the enactment of the Copyright Act, the
computer software industry could, however, obtain good results in fighting piracy, especially
in the field of business software. A number of important enforcement actions, including a test
case using ex parte measures on the basis of the Civil Procedure Code and the Copyright
Act, have reduced piracy considerably. These successes do, however, not mean that the
problem is solved. The level of business software piracy is still estimated at about 54%. In
the field of entertainment software, the level is much higher and reckoned to be at around
90%.
The problem continues particularly in the field of enduser piracy. Very often companies buy
one legal copy of software and then copy it several times for the various users within the
company. But illegal software is also sold in larger markets such as the Stadium. In smaller
towns, computer shops sell illegal software or preinstall licensed software without handing
out the respective CD-ROM. There are also numerous offers on the Internet both in the form
of mail order services and downloads. 19 websites offering such downloads or physical
copies were closed.
In Poland there are at least two replicators producing illegal software. In other cases, illegal
copies are imported via the eastern border from Ukraine, Lithuania and Belarus. The quality
of the illegal copies is so high that sometimes even experts have problems in identifying
illegal product.
In the fight against software piracy, it appears that there is a good co-operation between the
local BSA branch and the police. By contrast, it has been indicated that the relationship with
the customs authorities could benefit from improvement. Still, it was indicated that the police
did not dispose of the necessary tools for detecting computer crimes. In particular, police
appears to lack computers and also the relevant technical skills. Training in this regard is
necessary.
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Reportedly, in the early years of proceedings, there were problems with the prosecutors who
terminated most of the proceedings because of lack of interest and knowledge. In the last
two to three years, this attitude has however changed and only in few cases will the
prosecutors refuse to continue proceedings.
Problems exist however at the judicial level. There are long delays for trials and the penalties
are rarely deterrent. The same delays reportedly take place in civil proceedings. There is
definitely an overload of work for Polish judges and prosecutors which should be addressed
in a review of the current court organisation.
Finally, as in the music field, the request of independent expertise by courts renders the
procedure long and costly.
c) Motion picture industry
In the audiovisual field, video piracy continues to be the most significant form of piracy. The
amount of piracy is estimated at about 25%. The formats which are commonly distributed are
mainly videocassettes and VCDs, the latter mostly on CD-R. At the end of December 2001,
the first pirate DVDs were discovered. CD-recordable pirate product as well as DVDs are
usually copied at home and then sold at bazaars and street markets. As far as the Stadium is
concerned, about 10% of the supply there is reckoned to affect FOTA’s members
productions. The rental of pirate videos by smaller rental outlets is also apparent.
Pre-video-release as well as pre-theatrical release titles are also of a particular problem.
Usually they are copied from videos copied in local cinemas and then distributed in rental
outlets and street markets.
Cross border video sales along the Polish-German border also remains a problem. German
versions of videos are reproduced in good quality and are sold in street-markets and bazaars
along the border with Germany and sold to German tourists.
Illegal broadcasting of audiovisual works seems to be less of a problem. There is one TV
station which broadcasts without authorisation. By contrast, smart card piracy is an
increasing problem. However, it would appear that the new Article 118¹ Copyright Act which
was introduced in the course of the revision in 2000, has so far been efficient in practice. In
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the last 6 months, about 20-25 cable operators were impeded from using pirate smart cards
to distribute programs without license.
Finally, the distribution of pirate videos over the Internet is an increasing problem. The
distribution is organised in the form of mail order services. There are numerous websites
offering illegal videocassettes and VCDs. FOTA has encountered problems in pursuing this
form of piracy with the police, in particular because police is not well equipped for the
investigation of these kinds of infringements.
In the audiovisual field, piracy is usually pursued in criminal proceedings making use also of
the possibility to bring an annex procedure. Whereas the co-operation with the police
appears to be very good, problems exist at the prosecutor and court level because of long
delays and the absence of sanctions which could be a deterrent to piracy.
Like ZPAV, FOTA is also involved in training and equally criticises the fact that staff is
moving too fast to other departments so that they cannot benefit from the training sessions in
the long run.
2. Main obstacles to successful enforcement
The foregoing discussion of how piracy affects the various industry sectors leads to the
conclusion that the following problems hamper the successful practical enforcement :
- Court procedure: Civil and criminal proceedings are considered too slow. Because
of lack of knowledge and interest, judges and prosecutors often leave intellectual
property disputes aside and work on cases with which they are more familiar. In
addition, criminal proceedings may only be directed against physical persons. Finally,
the request of independent expertise concerning the rights ownership situation
renders the procedure unnecessarily costly and long.
- Judges/prosecutors: From both public and private sector, there have been remarks
regarding the professional competence of judges in the intellectual property field. On
the whole, training of judges and prosecutors was considered the most important
aspect in the copyright and neighbouring rights field. It could also be useful to
concentrate the competence for intellectual property rights disputes at certain courts
as this would ultimately result in the concentration of know how.
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- Punishments: Representatives from the various industries report that courts do not
apply deterrent penalties. Fines in criminal cases for copyright piracy range between
50 and 500 USD.
- Absence of regulation for optical media disk production: The absence of legal
provisions governing the production and distribution of optical media and the
importation of raw material should be remedied with the introduction of a regulation
requiring a concession for the operation of a CD plant and containing rules on the
operations of such a plant.
- Lack of technical equipment and experience: It also appears that police does not
dispose of the equipment nor technical experience which would be required to deal
efficiently with computer based crimes.
- Training: Although there are already numerous training programs for both police and
customs officials in place, optimal results can often not be obtained as staff is
frequently moved to different positions so that the training received cannot produce its
entire effects as the officials cannot build up the required in depth knowledge and
experience.
- Awareness: Both public and private sector take the view that a programme of
creation of awareness for the public is needed. The public is not conscious of the
detrimental effects of buying pirated goods both for the cultural industries and the
public interest at large.
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C. Recommendations 1. Legal issues
a) The civil remedies available for infringements against technical protection measures
and rights management information should be reviewed. It is recommended to make
the following modifications to Article 79(3) and (4) Copyright Act:
- Article 79(3) Copyright Act should cover also preparatory acts and not only the
circumvention of technical measures.
- The protection of rights management information should also apply in the field of
neighbouring rights. This is required on the basis of Article 19 WPPT for performers
and phonogram producers and for other categories of neighbouring rights and sui
generis rights on the basis of Article 6 Copyright Directive.
- The broadcasting, communication to the public and making available of works and
other protected subject matter without rights management information should be
equally covered by Article 79(4) Copyright Act.
- Sui generis rights should generally benefit from the protection of technical measures
and rights management information. This is also the case in Article 6 Copyright
Directive.
As there was no translation available of criminal sanctions that may apply to
infringements against technical measures and rights management information, no
comments in this respect are possible.
b) Criminal sanctions are recommended to be reviewed with regard to the following
issues:
- It should be considered to extend the higher penalties in the field of software piracy to
infringements of other works and protected subject matter. The provisions in the
software field are rightly based on the fact that copyright piracy is theft.
- It is further suggested to regulate the criminal responsibility of legal entities, maybe
similar to the provision in Article L.335-8 French Intellectual Property Code.
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- Criminal sanctions should be extended to include the possibility of a publication of the
judgment in the press as well as the closure of the business or revocation of a
business license.
c) Generally in civil as well as criminal proceedings, the provision of expertise on the
question of rights ownership should be reviewed. The present procedure which
seems to require the expertise from an independent expert, who in most cases does
not dispose of the relevant information and hence has to go back to the right owners
is too costly and cumbersome.
d) As far as border measures are concerned, these should expressly apply in the case
of transits and patents.
e) The Polish legislature should consider to introduce provisions on the production and
distribution of optical media and the importation of raw material as well as the
requirement of a concession for CD plants as a prerequisite for their operations.
2. Practical issues
a) As the main obstacles to enforcement are at judicial level, it is necessary to train and
sensitise public prosecutors and judges accordingly in the field of copyright and
neighbouring rights.
b) The concentration of intellectual property disputes at certain courts, for instance one
in each region, should be considered. This could accelerate the procedures and
accumulate know how in IP matters.
c) The application of punishments, which reportedly are too low, should be reviewed.
d) The problem with the “Stadium” in Warsaw, which seems to be the principal
marketplace for the distribution of counterfeit and pirate product in Warsaw, should be
addressed as a matter of urgency.
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e) It would appear that training of the police in new technology is required in view of the
increase in internet-based infringements. In addition, the police does not appear to be
appropriately equipped with the relevant information technology.
f) It should be investigated how the frequent staff rotation in police and particularly
customs could be avoided so that the training efforts both by the public and the
private sector are not in vain and do not need to be constantly repeated.
***