What is a creative work and what types of creative works are there?
Under copyright law, a creative work is any manifestation of creative activity of an individual nature, fixed in any form, irrespective of its value, designation or manner of expression. Anyone, irrespective of his or her education, skills or age may be a work author. Creative works may also include works created by children.
Creative works include (examples):
- Works expressed by words, mathematical symbols, graphic signs (literary, journalistic, scientific and cartographic works, as well as software);
- Plastic art works;
- Photographic works;
- Industrial design works;
- Architectural, architectural/city-planning (combined), and city-planning works;
- Musical works and works composed of words and music;
- Stage works, stage/musical works, choreographic and pantomime works
- Audiovisual works (including motion pictures).
Can a work available on the internet be used without limitation?
Generally, no, unless they are used for own personal use (the so-called permitted personal use). Permitted personal use does not apply to entrepreneurs, even if works are used on a non-commercial basis. Software and electronic databases having features of creative works are excluded from such use.
Can a company freely use a report prepared on its request?
The use of a commissioned report depends on provisions of a relevant agreement between parties. If the report contains, for example, a research methodology that has a nature of a creative work, the extent to which research results from the report can be used should be regulated in an agreement. Absence of such provisions results in the author’s economic rights being vested in the contractor and the options to use such report are very limited.
The party ordering a report should make sure that the agreement with the contractor contains provisions concerning acquisition of the author’s economic rights in the report to the broadest extent possible.
Can a commercial (or an advertising slogan) be a creative work?
Generally, an advertising slogan may be a creative work provided that it is distinguishable by its individual and original nature. The length of a slogan is of no fundamental importance. Since it is difficult to ensure protection of a slogan under copyright laws, it may be more advantageous to register it as a trademark and ensure protection under the intellectual property law.
According to case law, advertising slogans such as “Cukier krzepi”, “Serce jak dzwon” or “Think different” (Apple) were not found to be creative works.
How are creative works protected?
Creative works are protected under the Copyright Law irrespective of whether any formalities have been met, and no registration is required.
Rights in a creative work are generally vested in its creator, who has the right to use such work, dispose of it and receive fees for the use of such work by third parties.
Is every creative work protected?
Protection under the Copyright Law extends to cover any work of a creative nature. The Copyright Law does not protect ideas, discoveries, procedures, methods and rules of operation.
The following items are not considered as creative works:
- statutory legislation and official bills;
- official documents, materials, signs and symbols;
- published patent or protection descriptions;
- simple press information.
What are moral rights and what are the author’s economic rights?
Moral rights express a bond between a creator and a work that is manifested in particular in the right to attribute authorship of the work or to publish it anonymously. They also include the right to keep the content and form of a work intact and the right to its fair use, the right to decide on the first provision of a work to the public and supervision over how the work is used.
The author’s economic rights relate to the economic aspect of the use of a work. Within this category of rights, a creator is vested with an exclusive right to use and dispose of a work on all fields of permitted use and to receive fees for the use of such work.
Can the author’s economic rights or moral rights be waived?
Moral rights are unlimited in time and are cannot be waived. An author may, however, freely dispose of or waive the author’s economic rights.
Even though it is impossible to waive moral rights, their holder may undertake in a contract not to exercise them or may authorize a third party to exercise such rights on his or her behalf.
Does protection of a creative work depend on its registration?
No, creative works do not have to be registered or filed for registration in Poland to be protected. Protection is afforded to creators irrespective of whether any formalities have been completed.
For how many years are creative works protected?
The author’s economic rights in a creative work are vested for seventy years from the death of its creator, and if a number of creators contributed to the work, this time is counted from the death of the last one. The duration of protection of audiovisual works is calculated from the death of the last of the following persons: a motion picture director, a scriptwriter, an author of dialogues, a composer of score (music) composed for an audiovisual work.
Moral rights are unlimited in time but they change their nature after a creator dies.
Works of certain creators are under special protection. This applies, for example, to works by Frederic Chopin.
How can rights to use a creative work be acquired?
There are two ways to acquire rights to use a creative work: obtain a license (a permit to use a work) or acquire the author’s economic rights.
By granting a license, the licensor consents to the use of his or her creative work on specific terms, but he or she does not forfeit ownership rights to the work. A license agreement must be executed in writing for evidentiary purposes, but may also be granted in any other form. An agreement granting an exclusive license must have a written form, otherwise it is null and void.
The acquisition of the author’s economic rights has further consequences: the transferee acquires the author’s economic rights within a certain extent and the transferor loses the rights in a work to that extent. An agreement of acquisition of the author’s economic rights must be made in writing otherwise it is null and void.
What is a derivative work?
A derivative work based on an original work includes in particular its translation, modification and adaptation. It consists in giving a new form to an existing work. The original work is recognizable in the derivative work. Consent of the author of an original work must be obtained to disseminate a derivative work, to use it or transfer rights in a derivative work. The creator of the original work may withdraw his or her consent to the use of such work, if within five years of his or her consent being granted, the derivative work has not been disseminated. The creator of a derivative work is obligated to state on its copy the name of the creator and the title of the original work.
Do you need to obtain consent to a translation of a creative work of a third party?
Translation is a derivative work based on a work of a third party and if it is to be used, consent of the author of the original work must be obtained. Translations of menus or theatre programs are not considered derivative works. No consent is required, either, for any translation made “for the desk drawer”, if the translator does not intend to publish the translation. As any derivative work, a translation is a separate creative work the rights in which are vested in its creator, that is the translator. The name of the author of the original work must be stated on a translation copy.
What is permitted use of a creative work?
Permitted use is the right to use a creative work gratuitously, without its creator’s consent. Such use is legal if a single copy of a work is used by a circle of people in a personal relationship, in particular relatives by blood, relatives by marriage or friends (the so-called permitted personal use). It is possible to use a creative work without the right holder’s consent on account of important public interest and cultural and educational needs. The right to quote, i.e. to include a fragment of a work in another creative work is a form of permitted use.
What is a work for hire?
A work for hire is a work created by an employee as part of his or her duties. Such duties may result from an employment contract or a superior’s orders provided that additional duties fit within the scope set out in an employment contract.
Works for hire created as part of an employment contract will not include works created during working hours but not connected with the scope of an employee’s duties.
Who acquires rights to a work for hire?
Unless an employment contract stipulates otherwise, the employer whose employee created a work as part of his or her job will acquire the author’s economic rights to such a work. The acquisition is automatic, without either party having to make any statements in this respect. If an employer, for two years from the date of accepting the work, does not proceed to disseminate it, the creator (employee) may give the employer, in writing, an appropriate time limit to disseminate it, with such a result that after an ineffective lapse of the time limit, the rights acquired by the employer—including the ownership of an item on which the work was fixed—will revert to the employee.
Is an employee entitled to additional remuneration for creating a work for hire?
Generally, no. Remuneration for creating a work for hire is included in the remuneration set out in an employment contract, unless the parties agree otherwise in that contract. Under certain conditions, the parties may agree on separate remuneration for creation of works with the employee able to take advantage of creative work tax deductions.
Who holds rights to a work created by an employee during their work hours but outside the scope of their duties?
The author’s economic rights in such a work are vested in an employee. Works created incidentally, without a connection with the employee’s scope of duties, are not treated as works created as part of a job. It is irrelevant that an employee used the company’s equipment, the employer’s materials or took advantage of skills acquired while working for that employer, or that the employer tolerated such a situation.
If the employer is interested in acquiring rights to such a work, the employer and the employee should sign a separate contract which will regulate the issue of additional remuneration and transfer of the author’s economic rights onto the employer. An extension of the scope of the employee’s duties by a termination notice amending the terms of an employment contract will not result in an acquisition of rights in works created prior to the amendment of such terms.
Do works for hire include works created under a mandate contract or a specific work contract?
No, works for hire are exclusively works created under an employment relationship. Works created under a mandate contract or a specific work contract are not works for hire, so the author’s economic rights in them will be vested in the contractor (author). If the principal would like to acquire the author’s economic rights in such works, he or she should remember to include relevant provisions in a contract with the contractor.
Parties to a contract may agree that the principal will acquire the author’s economic rights in all works created by the contractor while performing such a contract and for the consideration due for the contract performance. The parties must stipulate the rights to what work are transferred and on which fields of permitted use.
Is software a creative work?
Yes, software may be a creative work provided that it has all features required to treat a work as a creative work, namely such software must be of an individual and original nature.
How is software protected?
In line with copyright laws, generally software should be treated as a literary work. It may be roughly assumed that a computer program is fully protected and may not be copied without the consent of the holder of the author’s economic rights to the software. An exception to this rule is making backup copies for a user’s own purposes. Importantly, even though software is legally protected, underlying ideas and principles are not subject to protection.
How does the use of software differ from the use of other works?
From a practical perspective, rules for the use of software are more stringent than those for the use of other works. In everyday situations, software may not be used as part of the so-called permitted personal use. Making copies (apart from backup copies) is mostly restricted. With respect to software, also excluded are other statutory licenses, such as the use of a work for teaching purposes, gratuitous lending by libraries and scientific or educational institutions, or the use of a work in connection with hardware presentation or repair.
Who holds rights in software?
Rights in software are generally vested in its creator. If the creator develops a program while employed under an employment contract, these rights are vested in his or her employer. Rights in software may be also vested in a person who acquires them from the holder of such rights.
What does a license to use software authorize you to do?
A license sets out the scope of the permitted use of software by the licensee. The license specifies the number of computers and the area on which software may be used, whether it may be used for commercial operations, transferred or sublicensed.
Should a website development agreement regulate the issue of copyrights?
Yes, a website contains many elements that are protected by copyright laws, such as a graphic layout, individual elements of graphics or content, scripts or software elements that control the website. Depending on the degree of the website’s complexity and the degree to which it is customized, the issue of copyrights will be more or less complex.
What is the difference between a copyright acquisition contract and a license?
By acquiring the author’s economic rights, the buyer gains rights to use a work in a specific field of permitted use and the seller forfeits such rights. The buyer may therefore exercise the author’s economic rights alone, and, in particular, grant licenses for a consideration. The transfer of the author’s economic rights is unlimited in time and may not be terminated.
A license is merely a right to use a work for a definite term on an exclusive basis or with no exclusivity (which means that other licensees may use the work simultaneously). A license may be terminated.
What are the most important elements of a contract transferring the author’s economic rights?
A contract transferring the author’s economic rights must clearly describe the work and the fields of permitted use on which such rights are transferred. If the transfer of the author’s economic rights is to be gratuitous, it must be clearly spelled out in the contract.
What are the key elements of a license contract?
A license contract must clearly specify its subject (the work) and fields (scope) of permitted use, the place (territorial extent) and the duration of such use. If a licensee is to be able to grant further licenses, for example to subcontractors, a relevant permission must be included in the license contract. It should be also clearly spelled out whether the license holder is entitled to receive any royalties.
What is the difference between an exclusive and non-exclusive license?
A non-exclusive license gives the licensee a right to use a work in a way that does not prevent other licensees from using the same work (not to be confused with a copy). An exclusive license grants the licensee the right to use the work without anyone else simultaneously using that work on the same fields of permitted use.
Must a contract of acquisition of the author’s economic rights be made in writing?
Yes, a contract of acquisition of the author’s economic rights has to be made in writing, otherwise it is invalid.
An acquisition of the author’s economic rights on the basis of an invoice alone is invalid.
Must a license be made in writing?
Only an exclusive license contract must be made in writing. A much more common non-exclusive license may be granted in any form.
What is a sublicense and can it be freely granted?
A sublicense is a right to use a work granted by the licensor who is not the holder of the author’s economic rights. A sublicense may be granted only by a licensee who is permitted to do so in a license contract.
Is a receipt and payment of an invoice sufficient to acquire the author’s economic rights or a license?
No, a receipt and payment of an invoice is not sufficient to acquire the author’s economic rights or a license. A license contract that will specify at least fields of permitted use must be signed.
In the absence of express contractual provisions, can a company be deemed to have acquired copyrights or a license?
Generally, in the absence of express contractual provisions concerning copyrights, a company may not be deemed to have acquired rights or obtained a license. An exception to this rule is when the employer acquires rights to a work, including software, created by its employee under an employment contract.
Who holds rights in a domain name?
Rights in a domain name are vested in an entity for which the domain name is registered. The entity registering a domain name does not become its owner but only a user and has the right to use it for a limited time.
How can rights in a domain name be acquired?
Rights in a domain name are acquired upon its registration for an entity concerned. A domain name may be also acquired from its existing owner, e.g. under a contract of sale, exchange or donation. Such contract must be made in writing to be valid and the new owner of the domain name must be disclosed in the register kept by NASK (a Polish research and development organization and data networks operator).
Where are domain names registered?
Domain names are registered by NASK’s accredited partners whose list can be found at https://www.dns.pl/porozumienie/partner.html.
Domain name registration rights are granted for a limited time. Users must remember to pay fees for the use of a domain name and the server hosting their website(s); otherwise, after the lapse of the paid period, these rights will expire.
Can rights in a domain name be transferred?
The holder of rights in a domain name may transfer them by an assignment of rights and duties. To do so, it should be checked what procedure is applied by the entity through which the domain name was registered.
Where can users of domain names be checked?
Users of domain names can be checked in the National Domain Name Register at www.dns.pl.
What is an invention and how is it protected?
An invention is a solution to a technical problem that can be applied in manufacturing. Patents are granted for inventions that are new (are not the state of the art), have an inventive step (meaning that for an expert an invention does not obviously result from the state of the art) and are capable of industrial application (if a specific product may be obtained using the invention or if it may be used, in a technical meaning, in an industrial activity).
Software is not an invention but a creative work and enjoys protection afforded to creative works within the meaning of the Copyright Law.
What is a patent?
A patent is a right to use an invention on an exclusive basis, for a specific time and for profit, on a selected territory, granted by an authority appointed for this purpose.
The use of a patented invention includes all forms of patent application, deriving profits from the invention and disposal thereof (e.g. sale of patent rights).
Where can patents be obtained and is it mandatory?
Depending on the territory where an invention is to enjoy patent protection, a rights holder may apply for patent protection to the Patent Office of the Republic of Poland (protection in Poland), the European Patent Office (protection in all European Union member states) or in the International Office of the World Intellectual Property Organization (protection in selected countries).
A patent for an invention does not need to be obtained, but an invention will enjoy protection only once a patent is granted.
A rights holder may apply for a patent directly or may use the assistance of a patent agent. The procedure of application processing is similar in all offices.
Can an invention without a patent be used?
It is not necessary to obtain a patent for an invention to use it, but doing so will ensure that the rights holder has more rights.
In line with the patent procedure, an applicant must describe the invention, and the description will be disclosed by a publication of the invention application. In some situations a rights holder intentionally opts out from privileges warranted by a patent to avoid having to disclose information about the invention. In such case, the invention may be protected as a business secret by provisions on suppressing unfair competition.
When does patent protection start and how long does it last?
If a competent office issues a final and non-appealable decision granting a patent for an invention, protection will start on the date of filing an application with that office.
Patent protection lasts for up to 20 years from the date of filing an application provided that all fees connected with granting and maintaining invention protection are paid on time.
When can a third party’s invention be used?
A third party’s invention may be used only with the rights holder’s permission. The rights holder may grant a license to use his or her invention in a certain way, but the license may grant the licensee a right to an exclusive use of the invention (an exclusive license) or may stipulate that others may also use the invention (a non-exclusive license).
Industrial property law provides for cases of the so-called permitted personal use, including the use of an invention for research, experimental purposes, invention assessment or analysis, or for teaching.
What are sanctions for the use of a third party’s invention without permission?
A holder of patent rights whose rights have been violated may demand that the violator cease the violation, return any unjustly obtained benefits and, if the violation is through his or her fault, also repair caused damage:
- On general terms of the Civil Code;
- By payment of a sum of money in an amount of a license fee or any other appropriate remuneration which, at the time of its enforcement, would be due for the rights holder's consent to use the invention.
Is software an invention?
No, software is not considered an invention but it enjoys protection as a creative work, on terms set out in the Copyright Law.
What are employee inventions?
Employee inventions are inventions that were made in the course of fulfilling duties under an employment relationship. Apart from the remuneration provided for in an employment contract, an employee (inventor) is not entitled to any additional remuneration for creating the invention.
Any invention created by an employee during his or her working hours or using the employer’s equipment but outside of the employee’s scope of duties is not an employee invention.
It is not necessary to include any provisions on employee inventions in an employment contract unless the parties want to introduce provisions other than those arising from the Industrial Property Law.
Who is vested with rights in an employee invention?
In accordance with Article 11 Section 3 of the Industrial Property Law, rights in an employee invention are vested in an employer unless the parties agree otherwise in the employment contract.
The employer acquires rights in an invention by operation of law and no statements in this respect have to be made. For evidentiary purposes, however, it is advisable to accept an invention by signing a formal acceptance document.
Who holds rights in an invention developed under a specific work contract or a mandate contract?
As in the case of an employment contract, when an invention is created in performance of any other contract (e.g. specific work or mandate contract), it is the principal (client) who has the right to obtain a patent for an invention unless the parties agreed otherwise.
Must any remuneration be paid for the use of an invention?
Yes, a rights holder is entitled to receive remuneration for the use of an invention. The parties may freely agree on the amount of remuneration or decide that the invention may be used free of charge.
Remuneration for the use of an invention may be payable on a one-off basis or periodically, e.g. monthly or annually.
What is a trademark?
A trademark may include any sign capable of being represented graphically if the sign is capable of distinguishing goods of one undertaking from those of another. The most frequent type of trademarks are word marks (a word or sentence written in any way), figurative marks (drawings) and combined word and figurative marks (a combination of a word and a picture).
Recently registration of sound or scent trademarks has been admitted.
Does a trademark have to be registered and can an unregistered trademark be used?
Trademark registration is not mandatory and trademarks that have not been registered may be used. If rights in a registered trademark are violated, the rights holder will have better means of protection than in the case of a violation of rights in an unregistered trademark.
Where are trademarks registered?
A trademark may be registered in the following offices:
- The Patent Office of the Republic of Poland or any other national office – the trademark will be protected on the territory of one country;
- The European Union Intellectual Property Office (EUIPO) – the trademark will be protected in all European Union member states;
- The International Office of the World Intellectual Property Organization – the trademark will be protected in selected countries.
If an entrepreneur intends to carry on an activity within the European Union, it is advisable to register a trademark with the EUIPO. Registration fees are higher than those in Poland, but in practice the registration process is smoother and protection is secured in a larger area.
When can a third party’s trademark be used?
To use a third party’s trademark it is necessary to obtain permission of the rights holder, e.g. a license. The industrial property law indicates instances when a rights holder’s permission to use a third party’s trademark is not required. This applies to entities that run a small-scale local business activity and used in good faith a designation that was later registered as a trademark for a different person. These entities may still use such designation free of charge but to an extent that is not broader than the previous one.
What are sanctions for the use of a third party’s trademark without permission?
A person whose trademark protection right has been violated may demand that the violator ceases the violation, returns unjustly obtained benefits and, if the violation is through his or her fault, also repair caused damage:
- On general terms of the Civil Code;
- By payment of a sum of money in an amount of a license fee or any other appropriate remuneration which, at the time of its enforcement, would be due for the rights holder's consent to use the trademark.
What is the difference between registration with the Polish Patent Office and the European Union Intellectual Property Office (EUIPO, formerly OHIM)?
A trademark protection right granted by the Patent Office of the Republic of Poland is effective on the territory of the Republic of Poland only. Registration of a trademark with the European Union Intellectual Property Office guarantees its protection in all European Union member states.
How long does the trademark registration take?
Registration of a trademark takes about six months. The procedure is longer when objection is filed by a third party (e.g. a holder of rights in an identical or similar trademark); in such case the procedure may take as long as two or three years.
Can a company file an application to register a trademark on its own?
Yes, a company may file an application to register a trademark on its own, and completing necessary documents should not be difficult. Entrepreneurs may also use the assistance of a patent agent, or a lawyer who may represent them in offices in trademark-related matters.
A trademark registration application may be filed in person, by post, fax or on-line. To file an application on-line with the Patent Office of the Republic of Poland, applicants must have an ePUAP account and a trusted profile.
What are the costs of trademark registration?
Costs of filing and registration of a trademark depend on the number of classes (categories of goods or services to be marked with a trademark).
The Patent Office of the Republic of Poland charges an application fee of PLN 450 per application in one class and PLN 120 for each subsequent class. Once a conditional registration decision is received, a fee of PLN 400 for the first protection period must be paid per class and in addition PLN 90 for publication of information about granting a protection right.
The European Union Intellectual Property Office charges a fee of EUR 850 per application of a trademark for one class, EUR 50 for the second class, and EUR 150 for each next class. In this case, no additional fee for trademark registration is paid.
Watch out for operators that fraudulently attempt to extort payments for registration or publication of trademarks. Any correspondence from suspicious senders requesting registration payments should be checked carefully, preferably with the office with which trademark registration applications were filed.
How long are trademark protection rights valid?
Protection rights for a trademark are valid for 10 years from the application date provided that such protection rights have been granted.
Can trademark registration protection be renewed?
Yes. To renew protection for another 10-year period, a renewal application must be filed and relevant fees must be paid.
This must be done before the end of the expiring of the protection period but not earlier than one year before its expiry. The application may be also filed within 6 months after the end of the protection period, but in such case an additional fee of 30% of the protection fee must be paid.
The office will not notify rights holders about the expiry of the protection period. All entrepreneurs must track validity periods for their rights in a trademark.
Can a number of entrepreneurs jointly register a trademark?
Yes, pursuant to Article 122 of the Industrial Property Law, it is possible to agree that a trademark may be used simultaneously by a number of people who filed an application for such a trademark jointly, if such use is not contrary to the public interest and is not intended to mislead consumers, in particular as to the nature, intended purpose, quality, properties or origin of goods.
The rules for the use of a joint trademark must be set out in by-laws agreed by all persons filing the application.