Marcin Krajewski License Agreements in Polish Civil Law
	The Faculty of Law and Administration, The Warsaw University
	This article was translated thanks to the grant received from the Open Society Institute

The text was translated from the tape of a talk presented during the conference : Licensing E-stock (National Library , Warsaw, 20-21 September 2001).

1. Introduction

My lecture will be devoted to license agreement in civil law or rather in intellectual property law that is a part of civil law. I am aware that the subject of your workshop is licensing of e-stock (e-publications, e-databases) and that is why I will refer specifically to these problems in relation to the copyright law. I would like to add here, that the law regulating license agreements does not refer to e-publications specifically. Thus what I am going to say about the license agreements generally will also be applicable to e-publications , except some less important things I will discuss.

I know that my lecture is a part of a bigger whole, devoted to the law and particularly the practice of law in other countries. You will probably notice the difference between what you have heard earlier on foreign practice and that what I will say on Polish law. There are several reasons for these differences. First, Polish intellectual property law is following European law very slowly. An example is the problem of database protection. The EU some time ago introduced a directive concerning database protection, respected in nearly all EU countries. The protection concerns databases regardless of whether they are the subjects of a work in the understanding of copyright law or not. In Poland, an act on database protection was passed only recently. Until it comes into force, databases, except those that fulfill the criteria of a work under Polish copyright law, are not protected. It is the first of the possible differences between the content presented to you by Mrs Tuula Haavisto-a guest from Finnland and my lecture.

The other difference is the fact that even western law concerning intellectual property does not follow the existing practice there in a satisfactory way. The practice has created a number of new products of human mind, which should be, laymen think, protected. The license agreements concerning such products are signed. However, if we look at the current law system, in fact, the products are not protected. In most cases this concerns audiovisual, film and TV production. Unfortunately , I have not found examples from the sphere of your interest , but I suspect that similar situation exists.

2. The nature of a licence agreement

To begin with an essential side of my lecture I would like to introduce to you what the license agreement is, firstly not relating it to any particular sphere of intellectual property. Commonly speaking, a license agreement is associated exactly with an intellectual property, particular items, such as the work (which is a subject of copyright law), inventions (the subject of law on inventive activity), trademarks ect. Generally and unfortunately the lawyers who do not work with intellectual property make a mistake of identifying license agreements with any license concerning intellectual property. I am sorry to say that the awareness of some lawyers in this matter is no higher than common awareness among people. So listening to this lecture you are in a similar situation as some lawyers are. The reason for this is the fact that intellectual property law is neglected a little. It is not a subject discussed during civil law lectures. If one wants to choose such narrow specialization, he/she can, but I know how few people do it - that is why there is so much confusion in practice.

As a matter of fact we have here two groups of agreements: transfer of intellectual property laws (the most popular example is sale); the other group is license agreements. To describe the differences between these two groups we can use the example of circulation of goods. If we want somebody to use a flat or a house, we have two ways to do it. We can sell it or transfer the property on the basis of another agreement (exchange, donate, etc.) or we can hire out this flat (house). The former situation regarding intellectual property conforms to the laws of transferring intellectual property (sale of work). The latter situation (regarding hire) enabling use of intellectual property in a way that the subject of the law does not sell out but only allows use of certain rights for a limited time, corresponds to a license agreement. So, under intellectual property law we have transferring laws and license agreements. Or, in the sphere of circulating properties, better known to you, we have an act of sale or any other act of transferring laws and act of hire. A license agreement suits the act of hire regarding material things; with one difference - a long time ago in the 19th century it was noticed that intellectual property, comparing to the usual property - material property - characterized particular features. In a material world, when one person uses the house (flat) the other cannot. Regarding this, the law concerning the material things, has an exclusive character (one person can use one thing at the same time). It is different in the intellectual property "world". If we have a work or an invention, it is obvious, that it can be used by an unlimited number of people.

The first question we have to answer regarding license agreements, is where to search for appropriate rules. Unfortunately we cannot find them either in a civil code (well discussed during the law studies) or in any act of a general character. The features of license agreements regarding the subject of intellectual property law are similar, but regulated in different acts. The basic act is an industrial property right where we can find separate rules regarding license agreements to use inventions, patents. Also included under this right are utility models or trademarks and later - exotic for you - the intellectual property right of the topography of integrated circuits. All these topics are regulated in an industrial property right but not in one group. The license agreements are regulated in the Act on copyright and related rights dated February 1994. These are only four rules of this Act: Article 65 through 68.

3. The subject of a license

Because the theme of our meeting is intellectual property, property of electronic holdings, I have to say a few words about what can be regarded as a subject of a license. We are interested in two themes: works, in a copyright understanding, and so called databases. In a Chapter 1, Article 1.1 of the Act on copyright we can read: "The scope of Copyright encompasses any manifestation of creative activity of an individual nature, no matter in what form it comes into being and regardless of its value, purpose or manner of its expression (the work)". A lot of volumes were devoted to it .I would like to pay attention to the fact, that work may be established in any shape. It can also be an electronic product that does not have any particular features to discuss, but I would like to point two aspects of electronic products disseminated by public nets, that is, on the Internet first of all. The Act concerning copyright defines so called disseminated and published products. The qualification of a product belonging to this group causes certain results. The definition of a disseminated product is included in Article 6, paragraph 3 of the Act on copyright and related rights: "A disseminated work is a work that was made available to the public, with its creator's permission". Several essays were written on the theme: is it enough if the product will be accessible on the Internet? Can it be regarded as disseminated ? It seems that the answer should be positive.

More controversial is a definition of a published work. According to the Article 6, paragraph 1 of the Act on copyright : "A published work is a work that was reproduced in copies with its creator's permission and whose copies were made publicly available". Here we can have some doubts as the definition refers to traditional publications e.g. books. On the one hand a work on the net is multiplied, as there is at least one copy on the server to download, on the other hand there are many copies available for the public. It seems that a work has to have "a material shape", not just an electronic format.

If one presumes that a work accessible only on the net is not a published work, this will have consequences for library work. As you know library activity as far as copyright is concerned, is based on Article 28 of this law. This article permits use of protected works and the creator of the work cannot object. According to it libraries, archives and schools may (paragraph 1) make available without charge, within the scope of their statutory purpose, copies of published works. Without this article the activity of these institutions would be illegal. But the law concerns the published works. If it is used only on a public net - as Internet and there is no publication in a traditional way, this kind of a permitted use is illegal and cannot be allowed without signing a special license agreement. Similar regulation affects the making of single copies of this work. Article 28, paragraph 2 says that the libraries may prepare a commission preparation of single copies of published works that are not available on the market- for the purpose of complementing or preserving their collections, and for making them available free of charge. This right to prepare single copies does not apply to works accessible only in an electronic form (e.g. on the Internet). If ones wants to provide access a suitable license agreement should be signed. A similar situation exists in Article 30. According to it scientific and technical information and documentation centers may prepare and disseminate their own documentary studies as well as single copies of fragments, no longer than a single editorial sheet from published works. This entry does not concern works that are exclusively electronic and are available exclusively on a public accessible net.

4. Databases

Databases are also the subject of librarians' interest. What the databases are, we all know more or less. These can be telephone books, time tables or library catalogues ect. The present law distinguishes two categories of databases. The first group is described in Article 3 of the Act on copyright. According to it, collections anthologies, selections and databases are subject to copyright, even if they contain unprotected material, if their selection, arrangement or compilation is of a creative nature, without prejudice to the rights in works contained in them. Thus, in typical databases, the most useful arrangement or list may not have a creative nature at all. If you take a telephone book or an alphabetical catalogue, you will see that their character is not creative. The catalogue shows all books available in a library and a telephone book - all subscribes, and the criterion is alphabetic. These databases do not have a creative nature and are not protected. If someone wants to arrange a telephone book by people he likes or hates - this book would have a creative nature. Similarly with a catalogue. Each of these databases would have a creative nature and would be protected. But as you know, nobody does it. So to avoid inconvenience of this kind a new directive concerning special databases, protection of databases, as such that introduced in EU, and resolved in Poland. The criterion which lets us decide whether the subject is protected or not, is expenditure of work or expenditure of money which is necessary to create database. As was said, in EU a suitable directive was introduced - databases are protected there in a specific way. In Poland we are preparing legislative work, luckily we are coming to the end. An Act of 27th June 2001 on databases protection was resolved that has not been published in Dziennik Ustaw ^[1], but once it is published, shall enter into force twelve months after publication. So far the databases that are electronically or traditionally created are not protected.

5. Standardized regulation of license agreement

To finish my lecture - as I promised - I would like to say a few words concerning a detailed regulation referring to license agreements. Two most interesting for you acts are: Copyright and related rights and Databases protection.

I start from the latter act. Although there is not any regulation concerning database license agreements, that does not mean that it cannot be entered into. While entering into an agreement, the subject, who enters into the license is the producer of a database, similarly as in a case of copyright, the subject is an author. When license agreements are taken into consideration, there are not any regulations and we can talk about freedom. The producer can easy give a license for using databases. In a Copyright law and related rights we have only four regulations devoted to the subject of license agreements. The article 65 determines whether a license concerning intellectual property is a transfer of rights agreement or a license agreement. Firstly decides a good will of the parties. If the parties do not decide anything, it is regarded that the agreement is a license agreement. In the case of libraries, you will not own the copyrights but you will enter into license regarding these rights. Article 67, paragraph 1 contains the definition of a license agreement. The license agreement as such is a contract which contains the producer`s authorization to use an intellectual work. On the other hand the regulation says that the creator may authorize the use of his or her work in the fields of exploitation indicated in the contract. What are these fields of exploitation? Simply speaking it means the way in which the work is used. Article 50 which covers fixation, reproduction, entry into computer memory, rental, lease, broadcasting, states everything we can do with the work. What does it mean for us if the Act requires that the license agreement includes the fields of exploitation. If you acquire a license to use a work in any way, even reproduction of a work in a printed form, it does not mean you can record it electronically. It must be clearly said: we have a license only for such use that is indicated. If there is not a separate paragraph concerning electronic recording, one can do that. It is a separate field of exploitation devoted electronic downloading. The rules of Copyright law and related rights concerning license agreement determine the exclusiveness of the license - parties can state it freely in a license, but if the parties did not foresee it or decided in a different way, the license would not be an exclusive one. Probably nobody is going to give a library an exclusive license to use the work, because such a license means that nobody can use this work simultaneously. For an exclusive license the contract reserves the special form - exclusive license agreement must be in writing under the penalty of invalidity. Special privileges are connected with exclusive licenses and may be claimed under the exclusive license if the third person infringes copyright. If the license is nonexclusive, you cannot claim directly in case of infringement of copyright. You can only inform the owner of a copyright and then he can claim.

The Act deals also with so called subcontract. It is an authorization given by the licensee. It can be clause in a license agreement that the licensee is authorized to transfer the license and use the product to another party. Such authorization for a subcontract is possible only when there is explicit wording in a license agreement, that it is specially authorized. If there is no special authorization, the library - as a party of a license agreement - may only use the license but not to authorize anyone to use it.

The Act regulates the period the license lasts; it can be limited or indefinite. If the license is for a limited period, it terminates after that time (it cannot be denunciated, unless there are special reasons, authorized in an license agreement). If the license is signed for an indefinite period it can be denunciated any time, but according to the copyright, if other denunciated terms were not authorized (it means that priority belongs to the agreement), the agreement is denunciated a year ahead, the end of a calendar year. There are some limitations. If the license is granted for an specified period of time, longer than five years, it is regarded as granted for an unspecified time. In practice it means that if a license is granted for ten years, it is not completely efficient; during the first five years it cannot be denunciated but after that five years it can be denunciated as any other concluded for an unspecified period. It in end, if not otherwise stated, it is said that the license is granted for a specified period of time and permits to use the work for five years in the territory of a country in which the licensee resides.

Normative regulations

1. Copyright law and related rights

a) a relation of license agreements and contracts regarding transfer of rights- art. 65: Article 65: In the absence of a clearly specified transfer of a right it is assumed that the creator has granted a license .^[2]

b) definition ; a problem of the fields of exploitation; dissemination on computer nets as a new field of exploitation- art.67 paragraph 1:

Article 67.1.The creator may authorize the use of his or her work in the fields of exploitation indicated in the contract, specifying the scope, place and the time of the use.

c) nonexclusive and exclusive license, subcontract- art.67 paragraphs 2-5:

Article 67.2. If the contract does not provide for exclusivity of the use in a particular manner (exclusive license), the grant of a license does not preclude the creator from authorizing others to use his or her work in the same field of exploitation (nonexclusive license).
3. A licensee may not authorize another person or entity to use a work under the obtained license, unless the contract specifies otherwise.
4. Unless otherwise provided in the contract, the holder of an exclusive license may pursue actions for infringement of economic rights within the scope of the license .
5. An exclusive licensing agreement must be in writing under the penalty of invalidity.

d) license term- art. 66-68:

Article 66. 1. Unless otherwise provided in the contract, a licensing agreement shall be deemed to permit use of a work for five years in the territory of a country in which the licensee resides.
2. Upon the expiry of the period of time referred to in Paragraph 1,the right obtained under the licensing agreement expires.
Article 68. 1. Unless otherwise provided in the contract, if the license was granted for an unspecified period of time, the creator may renounce it within the time set in a contract, or if no such time was provided for, the creator may renounce it with a year`s notice, at the end of the calendar year.
2. A license granted for a period longer than five years is considered to be granted for an indefinite time following the expiration of that period.

Footnotes

[1]  An Act on databases protection was published in Dziennik Ustaw 2001 no 128, and shall enter into force on 10th November 2002.

[2]  The English translation of the Act on copyright by Bianka Kortlan.

Translated by Jolanta Wróbel