Part II: 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

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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was enacted as early as 1926 which was superseded by the Copyright Act of 1952.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currently applicable statute which repealed the previous Copyright Act of 1952 is the Act of 4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.

69

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.

77

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.

***