Although the Act of February 4, 1994, on Copyright and Related Rights (hereinafter referred to as the “Copyright Act”) has been in force for over 26 years, only recently has there been a noticeable increase in legal awareness regarding the principles governing the use of works under this legislation. Until recently, not everyone realized that copyright issues must be considered in many common activities, such as building a house, ordering business cards, or expanding a website.
Currently, this knowledge is becoming increasingly widespread, and both entrepreneurs and private individuals are more frequently demanding the transfer of economic copyright from authors. Due to the specific nature of these rights, their effective transfer requires compliance with statutory conditions, which, unfortunately, are not as widely known.
So what should be done to ensure that our intended acquisition or transfer of economic copyright is effective to the extent we require?
WORK – DOES IT APPLY TO ME?
The subject of a copyright transfer agreement is the acquisition of economic copyright to a “work” within the meaning of the Copyright Act (personal copyright cannot be transferred). Therefore, the necessity of concluding such an agreement should be considered in every case of acquiring a creation that can be classified as a work.
According to the Copyright Act, a work is defined as “any manifestation of creative activity of an individual character, established in any form, regardless of its value, purpose, or mode of expression.” This definition implies that a work must be the product of human creativity, expressed externally in any form. It must also possess an individual character, meaning it bears the so-called “imprint of the author,” resulting from their unique personality.
The Act includes an exemplary list of works subject to copyright protection, encompassing, among others, photographic, visual, audiovisual, musical, architectural, and industrial design works.
However, determining whether a given creation, even if classified within one of the aforementioned categories, qualifies as a work subject to copyright protection always requires an individual analysis of the circumstances of its creation and the outcome of the author’s work in terms of originality and creative character.
For instance, a business card design featuring an original text layout complemented by graphic elements will likely be subject to copyright protection. However, a business card design consisting solely of text, created using commonly available fonts without an original typographic arrangement, may not meet the criterion of individual character and, therefore, may not be protected. In case of doubt about whether a specific creation requires copyright regulation, it is advisable to consult a lawyer beforehand.
To ensure the effective transfer of copyright, the agreement must precisely define the work to which the rights are being acquired, enabling its clear identification.
FORM OF THE AGREEMENT
The transfer of copyright through an agreement requires a written form under pain of nullity.
Maintaining the written form entails affixing a handwritten signature to a document containing the contractual provisions. Concluding an agreement in this form requires the exchange of original documents bearing handwritten signatures between the parties. Merely sending scanned copies of documents does not constitute the execution of an agreement in written form—thus, regardless of the content of the documents exchanged via email, such an exchange does not result in the transfer of copyright.
Pursuant to Article 781 of the Civil Code, an electronic statement signed with a qualified electronic signature using a valid certificate is equivalent to a written declaration. Therefore, concluding an agreement using such a signature will also enable the effective transfer of copyright.
FIELDS OF EXPLOITATION
“Fields of exploitation” is a statutory term encompassing the areas in which a work can be used, as well as the forms and methods of such use. For example, if a work is textual (a book) or graphic (a poster), the fields of exploitation may include, among others, display, public performance, online distribution, and reproduction using printing techniques.
A copyright transfer agreement must specify the fields of exploitation on which the acquirer will be entitled to use the work. Article 41(2) of the Copyright Act stipulates that the agreement covers only the fields of exploitation explicitly listed therein.
In practice, agreements often contain clauses stating that rights are transferred on “all known fields of exploitation” or “all fields of exploitation listed in Article 50 of the Copyright Act.” Such wording may be deemed insufficient to meet the requirement of “explicit specification” of the fields of exploitation. A strict interpretation of this provision is recommended, and the agreement should include a precise list of the fields of exploitation on which the acquirer may exercise copyright to the work.
Omitting certain fields of exploitation or failing to define them precisely may result in the acquirer being unable to use the work in such an omitted scope.
For example, if an agreement for the design of product packaging does not explicitly specify the field of exploitation of “introducing the work into commerce,” the business owner may be deprived of the ability to sell the product for which the packaging was designed.
AUTHOR’S REMUNERATION
The author is entitled to remuneration for the transfer of copyright. If a copyright transfer agreement does not specify remuneration and does not explicitly state that the transfer is gratuitous, the author has the right to demand remuneration corresponding to the scope of the rights transferred. Unless otherwise stipulated in the agreement, the author is entitled to separate remuneration for each field of exploitation.
This means that merely stating the purchase price of the work in the agreement is insufficient. It is also necessary to specify the price for acquiring the copyright, which can be indicated by stating that it is included in the purchase price of the subject matter. If this is not explicitly stated in the agreement, the acquirer risks being required to pay the author additional remuneration for the copyright transfer.
AUTHORIZATION TO EXERCISE DERIVATIVE RIGHTS
Acquiring copyright to a work to the fullest extent possible does not include the right to use works derived from modifications, such as adaptations, translations, or alterations.
This means that upon acquiring copyright to a website, one generally obtains the right to use the site in the form created by the author. However, one cannot commission another entity to expand or modify the website and then use the altered version.
Similarly, if one acquires copyright to an architectural design, they have the right to construct a building according to that design. However, if modifications are desired, such as sealing window openings, adding or removing floors, etc., these changes generally require the author’s consent.
To obtain the rights to commission modifications to a work and use the modified creations, the copyright transfer agreement must include an additional authorization to exercise derivative rights, as well as an authorization to exercise personal copyright on behalf of the author.
SUMMARY
Regulating copyright issues concerning a work is still often perceived as a secondary matter that does not require special attention in an agreement. However, as demonstrated above, the failure to properly transfer economic copyright, as well as the lack of authorization to exercise derivative and personal rights, may prevent the acquirer from using the work for its intended purpose.
Copyright infringement, even if committed in good faith, carries financial and criminal sanctions.
The above discussion highlights only the most important aspects to consider when drafting a copyright transfer agreement. However, depending on the circumstances and the specific subject matter of these rights, additional provisions may be necessary to ensure full use of a given type of work.
This topic is complex, and this publication does not allow for an exhaustive discussion. Nevertheless, we will address specific issues in future articles. Regardless, to safeguard against the negative consequences of copyright infringement, whether acquiring rights privately or for business purposes, it is advisable to consult a lawyer before signing an agreement to ensure that the acquired work can be used in accordance with its intended purpose.
