Intellectual Property Protection in Poland

A review of the present situation of intellectual property rights and their enforcement in Poland

Prepared by

Aase Gundersen, Advokat, Oslo and Brigitte Lindner, Rechtsanwältin, Berlin

2 March 2002

TABLE OF CONTENTS

INTRODUCTION 8

SUMMARY 10 I Industrial Property 10 II Copyright and Neighbouring Rights 12 III Enforcement 15 IV Recommendations 17

DISCUSSION 20

PART I INDUSTRIAL PROPERTY 20

A. Legislative Framework for the protection of Industrial Property Rights 20

1. Laws dealing with Industrial Property Rights and related issues 20 2. International Conventions 20

B. Substantive Legal Issues of Industrial Property Protection 21

1. Patent 22 a) Patentability of invention 22 b) Exclusion from patentability 23 c) Beneficiary of Patent Rights 24 d) Patent application 24 e) Unity of invention 25 f) Priority 25 g) Publication of acceptance of the patent application 25 h) Examination, grant and maintenance of patent 26 i) International applications under the PCT 26 3

j) Exclusive right 27 k) Restriction of rights derived from a patent 27 l) Provisional legal protection 28 m) Exhaustion 28 n) Right of prior use 28 o) Duration of protection 28 p) License 29 q) Invalidation and lapse of patent 30 2. Utility Models 30 a) Definition and conditions for protection 30 b) Applications, priority and registration 30 c) Scope of protection 31 d) Term of protection 31 3. Industrial Design 31 a) Definition and conditions for protection 31 b) Exclusion from protection 32 c) Beneficiary of Industrial Designs Rights 32 d) Industrial design application 32 e) Examination and grant of right in registration 33 f) Exclusive right 33 g) Term of protection 33 4. Protection of Topographies of Integrated Circuits 34 a) Definition and conditions for protection 34 b) Scope of protection 34 c) Duration of protection 35 5. Trademarks 35 a) Definition of a trademark 35 b) Priority 36 c) Registration procedure 36 d) Grounds for refusal of a trademark registration 37 e) Earlier trademarks as grounds for refusal 37 f) Registration, publication and certificate 37 g) Duration and renewal 38 h) Exclusive right of the owner of a registered trademark 38 i) Exclusive right of the owner of a well-known mark 38 j) Prohibition of the use of trademarks 39 4

k) Restrictions of the exclusive rights 39 l) Exhaustion of rights 39 m) Lapse of protection for non-use 40 n) Transfer 40 o) Licensing 40 p) Invalidation of a trademark registration 40 q) Revocation 41 6. Geographical indications 41 a) General remarks 41 b) Registration 41 c) Scope of protection 42 d) Beneficiaries of protection 43 e) Duration of protection 43 7. Unfair competition 44 a) Definitions 44 b) Marking of enterprises (company names) 44 c) Marking of goods or services 44 d) Trade secrets 45 e) Advertising 45

C. Recommendations 46

1. Legal issues 46 2. Practical issues 47

PART II COPYRIGHT AND NEIGHBOURING RIGHTS 48

A. Legislative framework for the protection of Copyright and neighbouring rights 48

1. Laws dealing with the protection of copyright and neighbouring rights 48 2. International conventions 49 a) Berne Convention 50 b) Universal Copyright Convention 50 5

c) Rome Convention 50 d) TRIPS Agreement 51 e) Self-executing nature of international treaties 51 3. Bilateral agreements 52 4. Institutions dealing with the protection of copyright and neighbouring rights 53

B. Substantive legal issues in the field of copyright and neighbouring rights 54

1. Subject matter of protection 54 a) Copyright 54 b) Neighbouring rights 55 c) Sui generis rights 57 2. Conditions for protection 57 a) Eligibility for protection 58 b) Applicability in time 61 c) Compliance with formalities 65 3. Beneficiaries of protection 66 a) Works 66 b) Subject matters of neighbouring rights 70 c) Sui generis right 71 4. Scope of protection 71 a) Works in general 71 b) Computer programs 74 c) Works of fine art and manuscripts 75 d) Neighbouring rights 75 e) Sui generis right 79 5. Duration of protection 79 a) Copyright 80 b) Neighbouring rights 81 c) Sui generis right 83 6. Limitations and exceptions 83 a) Limitations and exceptions provided for in Articles 23-35 Copyright Act 83 6

b) Private copying royalty scheme 86 c) Computer programs 88 d) Sui generis right 88 7. Transfer and assignment of copyright and neighbouring rights 88 a) Moral rights 89 b) Economic rights 89 8. Administration of copyright and neighbouring rights 92 a) Legal provisions governing collecting societies 93 b) Practical rights management 95

C. Recommendations 96

1. International treaties 96 2. Points of attachment 97 3. Applicability in time 97 4. Scope of protection 97 5. Duration of protection 98 6. Limitations and exceptions 98 7. Miscellaneous legal policy considerations 99 8. Miscellaneous clarifications and definitions 99 9. Collective administration 100

PART III ENFORCEMENT 101

A. Legal tools for the enforcement of intellectual property rights 101

1. Civil remedies and procedure 101 a) Civil remedies 101 b) Procedural aspects 107 c) Provisional measures 109 2. Criminal sanctions and procedure 110 a) Criminal sanctions 110 b) Procedural aspects 115 3. Administrative sanctions and procedure 119

4. Border measures 121 a) Scope of the Regulation 122 b) Procedure upon application by the right owner 122 c) Ex officio procedure 124

B. Practical enforcement 125

1. Piracy affecting the various industries 126 a) Music industry 126 b) Software industry 128 c) Motion picture industry 129 2. Main obstacles to successful enforcement 130

C. Recommendations 132

1. Legal issues 132 2. Practical issues 133

INTRODUCTION

The Advisory Group on the Protection and Implementation of Intellectual Property Rights for Investment of the United Nations Economic Commission for Europe (UN/ECE) entrusted Aase Gundersen, Advocate in Oslo, and Brigitte Lindner, Rechtsanwältin in Berlin, with the preparation of a background paper as a basis for a consultative meeting to be held in March 2002 in Poland. While Aase Gundersen was given the task to study the situation of industrial property rights including unfair competition, Brigitte Lindner was to analyse the situation with regard to copyright and neighbouring rights and was given responsibility to finalise the report.

As a result, while Part I dealing with industrial property rights was prepared by Aase Gundersen and Part II on copyright and neighbouring rights by Brigitte Lindner. Part III addressing the enforcement of intellectual property rights constitutes a co-production of both consultants.

The background paper is based on the legislation in English translation, which was made available to the consultants as well as on information obtained in the discussions with the persons listed below. Often, it was necessary to rely on general information on the contents of laws, since many laws, in particular statutes governing enforcement such as the laws on civil, criminal and administrative procedures were not at the consultants’ disposal in English translation.

Meetings were held in Warsaw and Cracow from 7 to 10 January 2002 with the following representatives of both public and private bodies:

Public sector

Wojciech Dziomdzora, Acting Deputy Director, Legal and Legislative Department, Ministry of Culture and National Heritage Ins. Jan Hajdukiewicz, General Headquarters of Police Ms. Aleksandra Jakubowska, The Secretary of State in the Ministry of Culture and National Heritage Ms. Biruta Januszewska - Prosecutor, Mr. Wieslaw Kotarba - President of the Patent Office, Ms. Grazyna Lachowicz, Principal Specialist, Patent Office, 9

Mr. Zenobiusz Miklasinski, Vice President of the Patent Office, Ms. Gabriela Iwona Monko, Head of the Department of the Tariff and Non-Tariff Means in the Main Board of Customs, Mr. Marek Sadowski, Director of the Legal Department in the Ministry of Justice Mr. Wlodzimierz Ryms, President of the Main Administrative Court

Jagiellonian University in Cracow:

Prof. Janusz Barta, Mgr Marek Bukowski, Mgr Dawid Kot, Prof. Ryszard Markiewicz, Mgr Sybilla Stanislawska-Kloc, Prof. Janusz Szwaja,

Private sector

Mr Jerzy Andrzej Badowski, Deputy Director General, ZAIKS Mr. Marek Kaczmarek, President of FOTA, Ms. Iwona Sierzputowska, Patent Agent, Mr. Mikolaj Sowinski, Lawyer, Business Software Alliance, Mr. Marek Staszewski, Plenipotentiary/authorized agent of ZPAV (Polish Society of the Phonographic Industry), Mr. Wlodzimierz Szoszuk, Lawyer, Wardynski Law Firm, 10

SUMMARY

I Industrial Property

Protected Industrial Property Rights

The following industrial property rights are protected in Poland: patents, utility models, industrial designs, topographies of integrated circuits, trademarks and geographical indications. The entire regulations of these rights are now concentrated in the new act on Industrial Property Law of 30. June 2000, which came in to force in August 2001.

In addition, the combating Unfair Competition Act of 1993 provides a certain level of protection for trade names, trade secrets, imitation of goods as well as unfair advertising.

Scope of protection

Patent protection may be granted to inventions in any fields of technology, provided they are new, involve an inventive step and are industrial applicably. Novelty is absolute.

Utility model protection may be granted to any new un-useful solution of a technical nature affecting shape, construction or durably assembly of an object.

Protection for industrial design is available for the appearance of a product, which is new, original and capable of multiple reproductions.

Topographies of integrated circuits, defined as a three dimensional arrangement of elements, at least one of which is an active element, and of all or some interconnections in an integrated circuit, may be granted protection through registration.

A registrable trademark is any sign capable being representative graphically un-capable of distinguishing the goods and all services of one undertaking from those of other undertakings. Protection is also granted to well-known trademarks without registration, although the further conditions for and scope of such protection remains unclear.

A geographical indication is a designation of origin used to describe products, and may be protected through registration. 11

Exclusive right

A granted patent, right of protection or right in registration confers the exclusive right to exploitation for profit or professional purposes.

The owner of a patent or utility model has the exclusive right to use the invention. Third parties are not allowed to make, use offer or put on the market a product derived from the invention or to employ a patented process or use, offer, put on the market or import products made according to the patented process.

The owner of the industrial design is protected against third parties making, putting on the market or importing, for commercial purposes, products that are counterfeit of the design

The exclusive right of the trademark owner is given against the use of any identical trademark for identical goods or services (independently of any risk of confusion) and against the use of identical or similar trademark for the same or similar goods or services, where there exists a likelihood of confusion or association. An owner of a renowned trademark may prohibit the use of an identical or similar trademark which would bring unfair advantage or be detrimental to the other to its distinctive character or reputation.

Exhaustion of rights

All rights granted under the Industrial property act is are exhausted by putting goods on the market Poland or in any other state with which Poland has concluded an agreement for a free trade area.

Duration of protection

The term of protection for the various industrial property rights are as follows:

- Patents, 20 years - Utility models, 10 years - Industrial designs, 25 years - Topographies of integrated circuits, 10 years - Trademarks, 10 years periods that are renewable 12

- Geographical indications, unlimited

International Treaties

Poland is a member of the Paris Convention, of the PCT, the Budapest Treaty and the Madrid Agreement and Madrid Protocol as well as the Nice Agreement and the Strasbourg Agreement. The TRIPS provisions are binding as from 1 January 2000.

Licenses

All industrial property rights can be licensed. The Industrial property act contains a regulation of licence agreements. Compulsory licenses are provided under certain conditions.

Liability for infringement

All persons are liable for infringement of industrial property rights under civil law. Criminal liability are also provided with respect to marketing of goods bearing a counterfeit trademark.

II Copyright and Neighbouring Rights

Basis of copyright and neighbouring rights protection

The Copyright Act of 4 February 1994 as amended last by the Law on Databases of 8 May 2001 governs the protection of copyright, neighbouring rights and sui generis rights.

Copyright protects literary and artistic works in the sense of Article 2(1) Berne Convention. Computer programs enjoy protection as literary works. Databases are protected by copyright where they constitute the author’s own intellectual creation and if the selection made, the arrangement or the composition is creative in character.

Neighbouring rights protection is enjoyed by performers, producers of phonograms and videograms, broadcasting organisations and publishers of unpublished public domain material and of critical and scientific editions. 13

Sui generis right protection is granted to the maker of a database.

International Treaties

Foreign works and other subject matter enjoy protection on the basis of the Berne Convention, the Universal Copyright Convention, the Rome Convention and the TRIPS Agreement. Poland has not yet signed nor ratified the WIPO Copyright Treaty or the WIPO Performances and Phonograms Treaty.

Poland is further bound by bilateral agreements with the United States and the European Union. Similar agreements are in place with Lithuania and the Russian Federation.

Rights granted to owners of copyright, neighbouring rights and sui generis rights

Authors enjoy a large catalogue of moral rights as well as a general economic exploitation right which is not exhaustive and hence can be adapted to cover new rights such as the making available right under the WIPO Copyright Treaty. Broadly speaking, the Copyright Act therefore protects the minimum rights which are provided under the relevant international conventions and European Union Directives. This means that rights in respect of reproduction, adaptation, distribution, rental and lending, broadcasting, public performance, and communication to the public may be enjoyed by authors. The Copyright Act makes also provision for a so-called droit de suite, a remuneration for the resale of works of art.

In the neighbouring rights field, only performers enjoy moral rights. All neighbouring rights owners enjoy economic rights either in the form of exclusive rights in respect of, inter alia, reproduction, distribution, rental or as remuneration rights, for instance for broadcasting or communication to the public. Note however that neighbouring rights owners do not enjoy an exclusive broad exploitation right and the catalogue of rights granted is exhaustive. Consequently, the level of protection granted in the neighbouring rights field may not be extended by way of interpretation as this is the case in the authors’ rights field. As a result, there is no protection in the neighbouring rights field with regard to the making available over the Internet.

Makers of databases enjoy sui generis rights in respect of extraction and re-utilisation of the contents of a database. 14

As far as the exhaustion of the distribution right is concerned, the legal text is not very clear, but copyright officials confirmed that the principle of national exhaustion applies in the field of copyright and neighbouring rights.

Duration of protection

As a general rule, works are protected for a period of 70 years, subject matter of neighbouring rights for 50 years, and the sui generis protection of the maker of a database continues for 15 years. Exceptions to the general rule of 50 years exist for the protection of publishers who enjoy protection for 25 years in case of publication of unpublished public domain works and 30 years in the case of critical and scientific editions. Note that moral rights are unlimited in time.

Transfer and assignment of rights

Economic rights of authors, performers and owners of sui generis rights may be subject of an assignment or a license. An extensive chapter of contractual provisions may be found in the Copyright Act most of which are, however, not mandatory so that diverging contractual stipulations are possible. Nonetheless, there are a number of very restrictive rules dealing with the rights in future works and in future, yet unknown uses.

As in most other legal systems following the continental-European droit d’auteur system, moral rights are not transferable.

As far as neighbouring rights other than performers’ rights are concerned, there is no express rule that such rights are transferable. It is assumed that such rights may be transferred, however, but clarification would be helpful.

Transitional provisions

As a result of the amendments adopted in the year 2000, Polish copyright law now applies to all works and subject matter of neighbouring rights that are still protected in accordance with the terms of protection provided for under the Polish Copyright Act. This is an important achievement, in particular in the field of neighbouring rights where the protection of pre- existing repertoire was restricted. 15

Administration of copyright and neighbouring rights

Copyright and neighbouring rights are administered either by the right owner or by one of the 13 collecting societies. In certain cases specified by law, collective administration is mandatory. It would appear that collective administration is one of the weak points in the Polish copyright law system. Not only the slow and cumbersome procedure for reviewing tariffs but also the fact that collecting societies in the same fields of exploitation are competing with each other hampers the smooth exercise of copyright and neighbouring rights considerably.

III Enforcement

Infringements of copyright and neighbouring rights are subject to civil and criminal sanctions. Infringements of sui generis rights are subject to civil remedies and a fine in accordance with the Code of Procedure of Petty Offences. In the copyright field, administrative proceedings are of interest only where the decision of an administrative body is at stake, for instance in case of the review of remuneration tables. The infringement of a copyright or neighbouring right arises in a case where a person violates a moral right of the author or the performer or any of the economic rights protected under the Copyright Act. In addition, border measures are also available under Polish law.

Civil proceedings

Civil proceedings may be initiated before the general courts. The proceedings may result in an injunction, damages, award of assets acquired through the infringement or alternatively the amount of twice or three times the appropriate remuneration applicable at the time of assertion of the claim as well as the forfeiture of infringing material. In addition, a range of provisional measures may be obtained before the civil courts. Note that the law also makes provision for the protection of technical measures and rights management information, although only in a rather rudimentary manner.

Criminal proceedings

Criminal proceedings are available only against physical persons. The Copyright Act makes provision for a large catalogue of criminal sanctions which may be ordered by the Court including fines and imprisonment. There is also a civil annex procedure to the criminal case where the right owner may obtain civil remedies against the infringement by benefiting from the findings of the court in the criminal proceeding at no extra cost. Since the amendment introduced in the year 2000, criminal sanctions may be initiated ex officio. In addition, the amendment introduced the possibility for collecting societies to appear as injured party in criminal proceedings.

Administrative proceedings

As already indicated, administrative proceedings are not as important in the copyright field as they are in the industrial property sector. They are only of relevance where a decision by an official body is to be reviewed. In the field of industrial property law, all decisions by the Patent Office may now be subject to judicial review by the Supreme Administrative Court. This reform opens for the development of a case law in important areas of industrial property law, particularly with respect to trademark law, which over time should provide useful clarifications of legeal issues.

Border measures

Border measures are available against intellectual property rights infringements on the basis of a Regulation adopted by the Council of Ministers on 2 February 1999. Within the Polish Central Board of Customs, there is a specific intellectual property department and there are also intellectual property co-ordinators in the regional offices. The Regulation is modelled upon the relevant provisions in the TRIPS Agreement, and to a certain extent, takes into consideration the rules contained in the EU’s Regulation dealing with border enforcement. The Regulation provides for a procedure upon application by the right owner as well as for ex officio actions by the Polish customs officials.

Practical enforcement

Piracy on the Polish market affects all copyright industries. Counterfeit and pirate goods are either produced in Poland or imported to a large extent via the country’s eastern borders. The goods are sold on large markets, such as the notorious “Stadium” in Warsaw, but also in smaller outlets and kiosks. Reportedly, police and customs have benefited greatly from training and hence are meanwhile largely familiar with the enforcement of intellectual property rights.

The real obstacle, however, to successful enforcement is at judicial level. Although there has been apparently some improvement since the introduction of the new Copyright Act in 1994, judges and public prosecutors still do not seem to feel at ease with intellectual property cases and have a tendency to foremost continue with cases they are more familiar with. This leads to long delays in court procedures both at civil and criminal levels. It has been reported that it may take up to 5 years for obtaining a final judgment in a copyright case. In addition, sanctions which are applied by courts are rarely deterrent. Clearly, the situation at the courts requires urgent action. Where courts do not follow up enforcement efforts of the police or customs in a satisfactory fashion at judicial level, this may endanger the successful enforcement altogether.

IV Recommendations

Recommendations are provided in more detail at the end of each individual part, in Part I C with respect to industrial property rights, in Part II C as far as copyright is concerned and in Part III C with regard to enforcement. In order to avoid any repetitions, the purpose of this part is to outline the recommendations made for remedying the salient shortcomings:

Industrial property rights

The main problems are related to enforcement, particularly the need for training programs in the field of intellectual property rights. Certain improvements are also recommended with respect to legal issues, particularly in relation to well-known trademarks where the criteria for and scope of protection need to be clearer defined and strengthened.

The recommendations in the copyright field are threefold. They concern international matters, substantive copyright issues and the practice of collective administration:

• International matters

There are three important points:

o Poland should be encouraged to ratify the WIPO Treaties. o Poland should also consider to withdraw from the reservations with regard to the Rome Convention. o Poland should revise the points of attachment for phonograms and clarify the situation with regard to other subject matters of protection as indicated in Part II C 2 b-d.

• Substantive copyright issues

A great number of modifications and clarifications are required with regard to the scope and duration of protection in order to render the Copyright Act consistent with relevant international and regional legislation. In addition, a number of very broad limitations and exceptions require to be more narrowly confined. Finally, it should be considered to make the Copyright Act more investment-friendly by reviewing the specific provisions on audiovisual works as well as a number of restrictive norms on copyright contracts. The suggestions may be found in more detail in Part II C 3-8.

• Collective administration

A review of the current practice of collective administration should be carried out as a matter of urgency as it appears to hamper the enjoyment of rights considerably. The main causes are:

o competing collecting societies in the same fields of exploitation; o a cumbersome and slow procedure for reviewing remuneration tables; o absence of clear-cut conditions for the approval of collecting societies. 19

Enforcement

The salient recommendations in the enforcement field may be summarised as follows:

• Legal issues

o Review of the remedies available for infringements of technical measures and rights management information (Part III C 1a); o Introduction of legal provisions governing optical media production and distribution; o Review of the procedure with regard to the provision of expertise on ownership of rights.

• Practical issues

o Training of judges and public prosecutors in the field of intellectual property law generally; o Concentration of intellectual property disputes at certain courts to build up know how and expertise and to accelerate the proceedings; o Closure of the “Stadium” and similar markets; o Specific IT training for the police to be more proficient in the enforcement of computer-related crimes as well as provision with the relevant technical infrastructure.

DISCUSSION

Part I: Industrial Property

A. Legislative Framework for the protection of Industrial Property Rights

1. Laws dealing with Industrial Property Rights and related issues a) Act of 30 June 2000 on Industrial Property Law, which came into force 21 August 2001 (“Industrial Property Act”); b) Act of 16 April 1993 on Combating Unfair Competition (“Unfair Competition Act”)

2. International Conventions

Poland is a member of the following Treaties:

• The Paris Convention • The Patent Cooperation Treaty • The Budapest Treaty on the international recognition of the deposit of microorganisms for the purposes of patent protection • The Madrid Agreement • The Madrid Protocol • The Nice Agreement • The Strasbourg Agreement. • The TRIPS Agreement (coming into full effect 1 January 2000 after a transitory period of four years)

B. Substantive Legal Issues of Industrial Property Protection

General remarks

The Act of 30 June 2000 on Industrial Property Law brings together in one piece of legislation all relevant laws on the protection of industrial property. It replaces the Inventive Activity Act 1992, the Trademarks Act 1985, the Protection of Topographies and Integrated Circuits Act 1992 as well as the Patent Office Act 1962. The new statute includes the substantive and procedural regulation of patents, utility, models, industrial design, trademarks, geographical indications and topographies of integrated circuits. It also contains general provisions on the institutions, filing and registration processes and enforcement of industrial property rights.

The Industrial Property Act is a complex legislation in several respects. Its objective is threefold: adapting the industrial property protection to the conditions of a market economy, and implementing a number of international treaties as well as the acquis communitaire of the European Union. Its length and organisation render it less than easily accessible to non- lawyers. The main regulations on the various industrial property rights are dealt with in specific chapters, however many of the provisions are merely references to the applicability of provisions in other chapters. General issues such as beneficiaries of protection priority and scope of the exclusive rights are to some extent dealt with in general chapters and thus in general, rather than specific language. The legislative method of bringing together all aspects of industrial property regulation into one single act, achieves the advantage of uniformity of concepts and procedures. However, it leaves a challenge with respect to dissemination of information about industrial property rights and legal education, both for right owners and the various personnel involved in enforcing the Act.

The Act only came into force on 21 August 2001, after having been brought before the Constitutional Court over the issue of re-privatisation of IP rights (it was eventually signed by the President with the exception of Article 322). Thus, at the time of the consultancy visit, the Act had been in force less than five months. It follows from this that many of the questions on substantive legal issues arising from the statutory provisions, remain unanswered until clarified by practice. So far, there is very little practice under the new Act.

A general problem in this first phase, as related by several practitioners as well as the Patent Office, is that the Act entered into force without the relevant regulations having been passed. The Act calls for regulations in relation to patents, utility models, industrial designs, trademarks and geographical indications, containing i.a. the detailed requirements to be satisfied be the application, the detailed rules and procedures to be applied as well as the manner of disseminating the specifications of rights granted. At the time of our visit important regulations were still lacking, particularly in the fields of trademarks and industrial designs.

Article 4(1) of the Act states that the provisions of the act shall be without prejudice to the provisions of international agreements. According to Article 91 of the Constitution, international treaties to which Poland is a party, take direct effect as Polish law.

Acts of unfair competition are explicitly excluded from the scope of the Industrial Property Act, and remain governed by the Unfair Competition Act of 1993. This statute was not made available in English translation until after the consultancy visit, and was only touched briefly upon during the interviews. Its practical relevance in industrial property matters appears to have diminished after the entry into force of the Industrial Property Act, and it will be dealt with more briefly in this report.

Poland is a member of UPOV and apparently there is legislation on the protection of plant varieties. However, no information has been made available on this subject and it will not be discussed in this report.

1. Patent a) Patentability of invention

According to Article 24 a patent shall be granted for an invention which is new, involves an inventive step and which is capable of industrial application. Novelty is absolute. Article 25 contains detailed provisions on whether or not an invention will be considered new. An invention will be considered new if it does not form part of the state of art. This comprises everything made available to the public by means of a written or oral description by use, displaying or disclosure in any other way before the priority date, as well as the contents of earlier patent applications or utility model applications published in accordance with the Act.

Article 25(4) specifically provides for patentability of an invention concerning a new use of a substance comprised in the state of art or the use of such for obtaining a product for new use. This was unclear under the previous patent law, and the clarification of patentability of second use was welcome.

An invention shall be considered as involving an inventive step if it is not obvious to a person skilled in the art (Art. 26).

The condition of industrial applicability is fulfilled, if by means of the invention a product may be made or a process may be used, in a technical sense, in any kind of industry including agriculture (Art. 27).

Patent may be granted for an improvement or an addition to the invention, where such has the characteristics of an invention but cannot be applied separately (patent of addition) (Art. 30).

Practitioners we interviewed conveyed the opinion that the Patent Office follows a relatively strict practice with respect to patentability. The Patent Office has been quoted as wishing to issue “strong patents”, thus putting relatively high threshold on the novelty and/or inventive step requirement. In general, the practice of the Patent Office is said to be relatively coherent, although there are examples of inconsistencies from one examiner to the other. b) Exclusion from patentability

The following is not recognised as invention (Art. 28):

• Discoveries, scientific theories and mathematical methods • Aesthetic creations • Schemes, rules and methods for performing mental acts, doing business or playing games • Computer programs • Creations whose incapability of exploitation may be proved under the generally accepted and recognised principles of science • Methods of presenting information.

These exclusions apply only for the objects as such. If a computer program is part of a technical process, it will be accepted. However, computer programs are generally protected under copyright.

Furthermore patents are not granted for (Art. 29):

• Inventions whose exploitation would be contrary to public order or morality • Plant or animal varieties or essentially biological processes for the production of plants or animals; this provision does not apply to microbiological processes or to products which are obtained through such processes • Methods for treatment of the human or animal body by surgery or therapy or diagnostic methods applied on human or animal bodies; however, this does not apply to products such as substances or compositions applied in diagnostics or treatments.

The exact scope of the exceptions for software related inventions remains unclear, as does the patentability of essentially biotechnological inventions. The Patent Office is said to apply a stricter practice than that of the European Patent Office. c) Beneficiary of Patent Rights

The right to a patent belongs to the creator or his successor in title. Several creators of an invention own the patent jointly (Art. 11(1) and (2)). If several persons have created an invention independent of one another, the right to the patent belongs to the person who is the first to file an application with the Patent Office in accordance with the priority provisions (Art. 13).

The employer has the right to an invention created in the course of employment duties or in the execution of contract, unless otherwise agreed (Art. 11(3)). d) Patent application

The application shall contain a request for grant of the patent, a description of the invention, one or more claims, and drawings if necessary for the understanding (Art. 31).

The patent description must be sufficiently clear and complete for it to be carried out by a specialist. The technical level, as known by the applicant, must also be disclosed in the description (Art. 33(1)).

Article 33(2) contains specific provisions on additional requirements for microorganisms and substances which may be used as medicinal or veterinary products. e) Unity of invention

An application may include a request for the grant of a patent for one invention or for a group of invention united by a single general inventive concept. For further details see Article 34 (1) and (2). f) Priority

Priority is dealt with by way of common provisions for inventions, utility models and industrial design in Title II of the Act. Priority shall be determined according to the filing date of the application, which is the date when the Patent Office receives the application as specified in Article 13.

PCT applications are regulated only indirectly in the Act, as priority claims under international agreements are dealt with in Article 14 to 16.

According to Article 14, priority is granted from the date of application in an indicated country, provided the application is filed with the Patent Office within twelve months after the first application for the same invention in accordance with PCT. g) Publication of acceptance of the patent application

18 months after the filing date or from the earliest priority date the Patent Office publishes the particulars of the application (Art. 42). On request of the applicant made within 12 months from the priority date, the announcement may be published earlier.

After publication a third party has the right to inspect the application specification in the Patent Office and may, within 6 months from the date or publication, submit to the Patent 26

Office any observations as to the existence of grounds that may cause a patent to be denied (Art. 44). h) Examination, grant and maintenance of patent

The Patent Office conducts a full examination of whether the accepted application conforms with the requirements of Article 24 on patentability.

Where the Patent Office, after having examined the application ascertains that the statutory requirements are satisfied and the time limit of six months expired, a patent is granted (Art. 52). The grant of a patent shall be recorded in the Patent Register (Art. 53), and shall be evidenced by the issue of a letter patent.

The patent is granted subject to the payment of the prescribed fee. For each further year of protection a renewal fee must be paid.

The Patent Office estimates that the average time for processing a patent application is five years. The increasing number of applications in recent years has created a backlog, and the Patent Office lack sufficient resources to handle the case load effectively. In the year 2000, the Patent Office received in total 3504 patent applications under the national procedure, of which 1100 were from foreign applicants. The majority of the case load stems from international applications under PCT, as the Patent Office in 2000 received 45877 applications in which Poland was designated. i) International applications under the PCT

An international application, in which Poland is designated (Art. 4(1)(ii) PCT) or elected (Art. 31(4)(a) PCT), is equivalent to an application filed with the Patent Office in accordance with the provisions set out above. As of its international filing date it has the effect of a regular national application and this date is considered to be the filing date of the application with the Patent Office. The Patent Office conducts a full examination also with respect to PCT applications.

27 j) Exclusive right

The patent owner has the exclusive right to exploit the invention for profit or professional purposes. The scope of protection is determined by the patent claims (Art. 63(1) and (2)). Third parties shall not be allowed, without the consent of the patent owner (Art. 66):

• To make, use, offer or put on the market a patented product • To employ a patented process • To use, offer, put on the market or import for such purposes a product directly obtained by the patented process.

From the wording of this provision it appears that import of goods constitutes an infringement of a process patent, but not of a product patent. This is unfortunate and an amendment should be considered. k) Restriction of rights derived from a patent

The following shall not be considered an infringement of a patent (Art. 69):

• The exploitation of an invention concerning means of transport or their parts or accessories, temporarily located on the territory of the Republic of Poland, or concerning articles which are in transit through its territory • The exploitation of an invention for national purposes, to a necessary extent, without the exclusive right, where it has been found indispensable to prevent or eliminate a state of emergency relating to vital interests of the State, in particular to security or public order • Employing of an invention for search and experimental purposes, for the evaluation thereof, analysis or teaching • The exploitation of an invention to a necessary extent, for the purpose of performing the acts as required under the provisions of law for obtaining registration or authorisation, being, due to intended use thereof, requisite for certain products to be allowed for putting them on the market, in particular those being pharmaceutical products • The extemporaneous preparation of a medicine in a pharmacy on a physician’s prescription.

Furthermore, Article 68 limits the rights of the patent holder by prohibiting the abuse of the exclusive right, in particular by preventing the invention from being exploited by a third party if such exploitation is necessary for the purpose of meeting home market demands and is particularly dictated by public interest considerations, and consumers are supplied with the product in insufficient quantity or of inadequate quality, or at excessively higher prices. l) Provisional legal protection

Provisional legal protection is granted to an invention after the announcement of the application is published. This means that third parties who use the invention to be patented without the consent of the applicant must, after grant of the patent, pay to the owner reasonable compensation. Furthermore, after grant of the patent, the use of the invention must be interrupted or a license must be obtained form the patent owner (in order to avoid infringing the patent). m) Exhaustion

The exclusive right of the patent holder does not extend to acts concerning a product hat has lawfully been put on the market by the patent holder or with his consent, in the territory of Poland or a state with which Poland has a free trade agreement (Art. 70). In practice, this is close to a provision for international exhaustion. n) Right of prior use

A person who, before priority date, has exploited in good faith an identical invention in his enterprise, or has until that date been making the necessary serious preparations for such use, has the right to continue such use without compensation, provided the scope of the use of the invention is not expanded. Such rights of prior use may only be transferred together with the enterprise (Art. 71). o) Duration of protection

The term of patent expires 20 years from the filing date of the application (Art. 63(3)).

Provisions on Supplementary Protection Certificates for a medical product are not yet implemented. However, according to the Patent Office, there is a Government decision to implement the SPC regulations with effect for medical products with a marketing authorisation granted after 1 January 2000. This will require legislative action. p) License

Both exclusive and non-exclusive licenses may be granted. Articles 76 to 79 provide a detailed regulation of license contracts.

A so-called "open license" comes into force where the patent owner submits to the Patent Office a declaration of licenses of the right to exploit the invention. The license may thereafter be acquired by any interested party. After publication by the Patent Office of a corresponding announcement based on a written statement filed with the Patent Office, the annual maintenance fee for the patent is reduced by half (Art. 80).

A non-exclusive compulsory license may be granted, in accordance with Article 82 where:

• It is necessary to prevent or eliminate a state of national emergency, in particular in the field of defence, public order, the protection of human life and health, as well as the protection of natural environment, or • it has been established that the patent has been abused within the meaning of Article 68, or • it has been established that the patent holder enjoying the right of priority of an earlier application (the earlier patent) prevents, by refusing to conclude a license contract, the meeting of home market demands through the exploitation of the patented invention (the dependent paten), whose exploitation would encroach upon the earlier patent; in such case, the holder of the earlier patent may demand that an authorisation be given to him for the exploitation of the invention that is the subject matter of the dependent patent (cross-license).

The person granted a compulsory license shall be obliged to pay a royalty to the patent holder (Art. 84).

30 q) Invalidation and lapse of patent

The patent may be declared invalid in whole or in part at the request of any person having a legitimate interest therein, who is able to prove that the statutory requirements for the grant of a patent have not been satisfied (Art. 89).

Invalidation proceedings are brought before the Patent Office, who shall employ the litigation procedure set out in Title VII of the Act. The decision may ultimately be appealed to the Supreme Administrative Court.

Article 90 sets out the circumstances under which a patent will lapse. Apart from expiry of the patent period, surrender by the patent holder or failure to pay the renewal fee, the patent shall lapse if the invention becomes irreversibly unfeasible for exploitation due to the lack of access to the microorganism, which is needed for that purpose.

Patents of addition shall cease to have effect together with the basic patent (Art. 91).

2. Utility Models a) Definition and conditions for protection

Any new and useful solution of a technical nature affecting shape, construction or durable assembly of an object may be granted protection as a utility model. The novelty requirement is the same as for patens (Art. 100 which refers to Art. 25). The condition of useful solution is fulfilled if by means of that solution a practical effect is attainable, expedient in the process of manufacturing or exploitation of the product (Art. 94).

Articles 28 and 29 regarding exclusion from patentability apply accordingly to utility models and rights of protection for utility models (see above para. 1 b)). b) Applications, priority and registration

The provisions for filing of applications, priority and registration of a utility model equal those applicable to patents, save that a utility model application shall include drawings (Art. 97).

A right of protection shall be recorded in the Utility Model Register and shall be evidenced by a certificate of registration (Art. 98 and 99).

In year 2000, the Patent Office received 1.329 utility model applications, the majority of which were filed by national entities. 979 utility models were registered in 2000. Only one utility model application filed under the PCT procedure entered the national phase in year 2000. c) Scope of protection

For a utility model, a right of protection is granted. Such right confers the exclusive right to exploit the utility model for profit or for professional purposes. The scope of protection is determined by the claims contained in the utility model specification (Art. 96).

By way of reference, most of the provisions pertaining to rights derived from a patent apply accordingly to utility models (Art. 100). Reference is made to the discussion under section 1. d) Term of protection

The term of protection is 10 years from the date of filing with the Patent Office (Art. 95(3)).

3. Industrial Design

The new Act contains provisions on industrial design protection, which replace the previous regulations for protection of ornamental designs. However, as opposed to the provisions in the fields of patents and trademarks, the Act has not yet implemented the EU Design directive. a) Definition and conditions for protection

An industrial design is defined as any new, original and capable of multiple reproduction appearance of a product, which manifests itself in particular in the shape, the features of the outside surface, colours, lines or ornamentation (Art. 102).

An industrial design shall be considered new if before the date according to which priority to obtain a right in registration is determined it has not been made available to the public in such a way as to enable its reproduction, neither a design enjoying the earlier priority was applied for registration and subsequently denied (Art. 103).

An industrial design shall be considered original if it differs distinctly from any designs already known and its characteristic features do not result solely from the mere combination of the features of known designs (Art. 104). b) Exclusion from protection

Excluded from protection are industrial designs whose exploitation would be contrary to public order or morality. However, the fact that an industrial design is prohibited by law does not affect the right to protection. Furthermore, registration shall be refused for industrial designs which include certain signs such as national, religious or cultural symbols or officially recognized signs of quality etc. (Art. 106, with a reference to Art. 131 (2)(ii-v)). c) Beneficiary of Industrial Design Rights

The right to obtain a registration for an industrial design belongs to the creator or his successor in title. Several creators of a design have joint ownership (Art. 11(1) and (2)). If several persons have created a design independent of one another, the right to the patent belongs to the person who is the first to file an application with the Patent Office in accordance with the priority provisions (Art. 13).

The employer has the right to a right in registration for a design created in the course of employment duties or in the execution of contract, unless otherwise agreed (Art. 11(3)). d) Industrial design application

The application must include the drawing and may also contain photographs or samples of a textile fabric (Art. 108(2)).

33 e) Examination and grant of right in registration

As opposed to the examination of patents and trademarks, the Patent Office only conducts an examination as to the absolute grounds for refusal of registration of an industrial design.

For an industrial design a right in registration is granted. Granted rights shall be recorded in the Industrial Designs Register and shall be evidenced by a certificate of registration. The industrial design specification consitutes an integral part of the certificate of registration. The specification shall be made available to third parties and disseminated by the Patent Office.

The absence of a full examination with respect to prior designs means that it is left to the private parties to oppose to registrations that do not fulfil the criteria. A pre-search with respect to registered designs might indicate whether there are obstacles to registration in the form of prior rights. However, it was pointed out by the patent attorneys we interviewed that the search facilities are not developed in a manner that makes it possible to gain sufficient knowledge of the characteristics of the registered designs.

In 2000 the Patent Office received 1743 design applications, out of which 568 were filed by foreigners. In the same year, 1.101 applications were granted. f) Exclusive right

Registration if an industrial design confers the exclusive right to exploit the industrial design for profit or for professional use. Any act of making, putting on the market or importing,m for commercial purposes, of products that are counterfeit of the registered design, is considered an infringement of the exclusive right (Art. 115). g) Term of protection

An industrial design registration is issued for 25 years from the date of filing the application with the Patent Office (Art. 105(3)).

4. Protection of Topographies of Integrated Circuits a) Definition and conditions for protection

The Act contains provisions for the protection of topographies of integrated circuits in Title IV (Art. 196 to 221). Only one application concerning topographies was filed with the Patent Office in the year 2000. In light of the limited practical relevance, the rights in topographies are only dealt with briefly. Such topography is defined as any solution consisting of a three- dimensional arrangement of the elements, however expressed, at least one of which is an active element, and of all or some interconnections in an integrated circuit (Art. 196).

An integrated circuit shall mean any three-dimensional product having one or more layers, composed of elements of semiconducting material forming a continuous layer and of conducting interconnections and insulating spaces, inseparably interconnected, intended to perform electronic functions.

A topography shall be considered original if it is the result of its creator’s own intellectual effort and is not commonplace at the time of its creation.

A topography may be granted protection through a right in registration on the condition that it is original, and has not been commercially exploited for more than two years. However, protection is subject to the topography being commercially exploited within a period of 15 years from its fixation or encoding in any form (Art. 197).

Where the topography consists of elements that are commonplace, a right in registration shall be granted only to the extent to which the combination of such elements is original. b) Scope of protection

The right in registration shall confer the exclusive right to exploit the topography for profit or for professional purposes on the whole territory of the Republic of Poland

The right in registration shall be considered infringed by a party committing, without the right holder’s consent, an act of:

• Reproduction of the whole or of a part of the protected topography, except for the reproduction of that of its part, which fails to satisfy the requirement of originality referred to in Article 198, or • importation, selling or otherwise putting on the market of a copy of the protected topography, integrated circuits manufactured with the use of such copy or of the product embodying such integrated circuits.

Reproduction of a topography shall consist of its reproduction in an integrated circuit basing on the pattern, the documentation or analysis. c) Duration of protection

The term of protection for topographies of integrated circuits is ten years from the end of calendar year in which the topography was put on the market or from the end of the calendar year the topography was applied for registration with the Patent Office, whichever term expires first (Art. 220).

5. Trademarks

The Act governs the protection of trademarks and geographical indications, but not with trade names and business identifiers. a) Definition of a trademark

A trademark may consist of any sign capable of being represented graphically, provided it is capable of distinguishing the goods (and/or services) of the same kind of one undertaking from those of other undertakings (Art. 120). In particular trademarks may be:

• Verbal - consisting of words • Graphic - pictures, drawings, graphic symbols • Combinations of colours • Three-dimensional - three-dimensional shapes, the shapes of goods or their packaging • Melodies or other acoustic signals.

Any sign which falls under the definition may be registered. 36 b) Priority

Priority to obtain a right of protection is determined by the date of the filing of a trademark application with the Patent Office (Art. 123). In accordance with international agreements (the Madrid Agreement and the Protocol) priority is determined by the date of the first regular filing of the application, provided it is subsequently filed with the Polish Patent Office within 6 months (Art. 124). c) Registration procedure

Chapter 3 and 4 of the Act contain detailed provisions on the filing of an application for registration and on the examination and grant of registration by the Patent Office.

The goods or services must be classified in accordance with the Nice International Classification of which Poland is a member. The technical terminology of the application request must be in Polish.

The trademark application shall be published six months after the filing, allowing any interested party to acquaint themselves with the application and submit to the Patent Office their observations as to the existence of grounds that may lead to a refusal (Art. 143).

The Patent Office conducts a full examination and examines the trademark on all grounds for refusal, including prior registered and well-known marks.

The applicant shall receive notice where the statutory requirements are found not to have been satisfied in full or with respect to certain goods and/or services. The applicant may request the division of the application into two or more applications (Art 145).

The average time for processing an application for a trademark registration is three years. IN the year 2000, the Patent Office received 17705 applications inder the national procecdure, 14111 of which were from Poland, and 477 international requests for registration under the Madrid Agreement.

37 d) Grounds for refusal of a trademark registration

The absolute grounds for refusal in Article 129 refer to lack of sufficient distinctive character of the sign. According to Article 130, these grounds for refusal do not apply if, as a result of the use of the mark, it has acquired a distinctive character as a consequence of its use.

Registration shall be refused for signs whose use infringes third parties’ rights, is contrary to law, public order or morality or may mislead the public (Art. 131). Particular provisions regarding geographic elements are contained in Article 131(3) (wines and spirits) and Article 131(4).

Furthermore the trademark is refused registration if the application for registration was made in bad faith or incorporated official symbols as defined in Article 131(2). e) Earlier trademarks as grounds for refusal

The Patent Office conducts a full examination on earlier rights and shall refuse to register, in respect of the same goods, a trademark which is identical or similar to earlier trademarks, whether registered or well-known (Art. 132). A registered geographical indication also consitutes ground for refusal.

This protection of earlier trademarks against a new registration extends two years beyond termination of the registration. f) Registration, publication and certificate

If the statutory requirements are met, the right of protection shall be granted. Such granted right shall be recorded in the Trademark Register (Art. 149) and shall be evidenced by the issue of a certificate or protection (Art. 150).

The owner is expressly allowed to use the ®, or some other appropriate language, as warning of the registration of the mark (Art. 151).

38 g) Duration and renewal

The trademark registration is valid for 10 years from the filing date and it may be renewed for further periods of 10 years. h) Exclusive right of the owner of a registered trademark

According to Article 153(1), the right of protection shall confer the exclusive right to use the trademark for profit or for professional purposes. The further scope of protection is set out in Article 296 of the Enforcement chapter of the Act.

Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:

• A trademark identical to a trademark registered in respect of identical goods (Art. 296 (2)) • A trademark identical or similar to a trademark registered in respect of identical or similar goods, if the use of that mark is likely to mislead part of the public in particular by evoking associations between the marks concerned (Art. 296(2)(ii)) • A trademark identical or similar to a renowned trademark registered for any kind of goods, if such use without due cause would bring unfair advantage go the user or be detrimental to the distinctive character or the repute of the earlier trademark (Art. 296(2)(iii)). i) Exclusive right of the owner of a well-known mark

Unless the trademark is the subject of a right of protection, any party using a well-known trademark may demand the cessation of the use by another party of the identical or similar trademark in respect of identical or similar goods, if such use is likely to mislead the public. The provision of Article 296(2)(iii) shall apply accordingly to well-know trademarks having a reputation (Art. 301). However, marks only having a reputation enjoy no enlarged protection.

The regulation with respect to well-known trademarks remains unclear and somewhat unsatisfactory. First of all, it is not clear what the process is for determining that a mark is well-known or what the requirements are, nor the degree of protection. For example, at a level of enforcement, well-known marks may in practice not benefit from the protection 39 granted in the Act. The protection of well-known marks is one of the weak spots of the Act, and many questions remain unanswered. A pending lawsuit brought against the Main Board of Customs for failing to recognise a well-known mark, will clarify some of the issues both as to the conditions for and the scope of protection. j) Prohibition of the use of trademarks

The following actions are defined as use of a trademark (Art. 154), which the trademark owner may prohibit:

• Affixing the trademark to the goods or their packaging and putting the goods on the market • Using the trademark on business documents handled in putting the goods on the market or in rendering services • Using the trademark in advertising. k) Restrictions of the exclusive rights

The trademark owner is not entitled to prohibit a third party from using in the course of trade (Art. 156):

• Their names • Indications concerning the features and characteristics of the goods or services • The trademark or a similar mark, if necessary to indicate the intended purpose of the product, in particular the intended purpose of goods as accessories or spare parts, provided that such use is in accordance with fair industrial and commercial practice. l) Exhaustion of rights

The trademark owner is not entitled to prohibit the use of the trademark in relation to goods which have been put on the market under that trademark by the right owner or with his consent in Poland or in any other state with which Poland has concluded an agreement on the establishment of a free trade area (Art. 155(1)).

The provision of Article 155(1) does not apply, where the owner has legitimate reasons to prohibit further commercialisation of the goods, especially if the condition of the goods has changed or been impaired after having been put on the market (Art. 155(3)). m) Lapse of protection for non-use

If a trademark has not been in actual use for a continuous period of five years, and there are not sufficient reasons for non-use, its registration may, according to Article 169(1) and (2), on action brought by any interested person, be revoked by decision of the Patent Office.

Use of a trademark is construed as use on goods or their packaging, on any documentation accompanying the goods, in the advertising of the goods or services, or in relation to other business activities in connection with the relevant goods or services. Use solely for export purposes is recognised as use. Use of the trademark with consent of the owner is deemed to constitute use by the owner in the fulfilment of the user-obligations. n) Transfer

The right of protection granted by the Act may be assigned or be subject to succession. A trademark may only be assigned separately from the enterprise if there exists no risk of purchasers being mislead as to its origin, quality and other characteristics of the goods (Art. 162). o) Licensing

The trademark owner may license his right to use the trademark to another person for all or some of the goods or services for which the trademark is registered. Both exclusive and non- exclusive licenses may be granted, but the grant of sub-license is not permissible (Art. 163). The provisions pertaining to patent license contracts apply accordingly. p) Invalidation of a trademark registration

The right of protection may be invalidated in whole or in part at the request of any person having a legitimate interest therein, provided he can prove that the statutory requirements for the grant of that right have not been satisfied (Art. 164).

41 q) Revocation

A trademark registration may also be revoked for one of the following reasons:

• Because it has not actually been used for five years (above m) • Because it has, as a result of action or inaction of its owner, lost its distinctive features.

6. Geographical indications a) General remarks

Geographical indications may be protected by a right in registration in accordance with Articles 174-195 of the Act.

Geographical indications are defined as “word indications which in an explicit or implicit manner designate the name of a place, locality, region or country (territory), which identify a good as originating in that territory, where a given quality, reputation or other characteristic of the good is essentially a tributable to the geographical origin of that good” (Art. 174).

For the purposes of this part of the Act, any reference to goods shall not mean services (Art. 174(3)).

The following shall constitute geographical indications (Art. 175):

• Designations of origin used to describe products.

The further definition of what constitutes a geographical indication is set out in Article 175. b) Registration

An application for a right in registration concerning a geographical indication shall be filed with a patent office in accordance with Article 176 following. An application shall include:

• A detailed description of the indication and of the elements with which it is to be used in the course of trade, such as labels and the packaging 42

• The specification of the goods for which the indication is intended • The detailed delimitation of the area, to which it relates • A description of the characteristic features or properties of the products as originating in the defined area

The conditions of the use of the geographical indication, including:

• The production process • The characteristic features or properties of the products • Other requirements to be fulfilled by the persons wishing to use that indication and • Where applicable, the inspection arrangements • The specification of the undertakings which use or intend to use the indication • Indications which, although literally true as to the territory in which the goods originate, falsely represents to the public that the goods originate in another territory famous of given goods originating therein, shall not be eligible for registration (Art. 178).

Furthermore, a right of protection may not be granted for the indication, which in consequence of its wide use for marking a kind of goods became a generic name, unless it is in public interest or the protection of the indication follows from an international agreement (Art. 179).

(A foreign geographical indication may only be granted protection in Poland, if it enjoys protection in a country of its origin (Art. 174(3)).)

The Patent Office shall take a decision on a grant of a right in registration for a geographical indication provided the application fulfils the conditions for registration. A right in registration is granted subject to payment of a protection fee. Granted rights in registration shall be recorded in the Register of Geographical Indications, and shall be evidenced by the EC of Certificate of Registration (Art. 182). c) Scope of protection

The provisions of Articles 296-300 regarding the remedies available to a trade mark owner against infringements, shall apply accordingly to geographical indications (Art. 302). 43

However, any parties who, while operating on a given territory, earlier used a geographical indication in good faith, and whose products do not satisfy the requirements for the grant of a right in registration, may continue to use that indication for no longer than 1 year counted from the grant of the right in registration (Art. 186).

A party whose products satisfy the conditions for the use of the geographical indication, shall have a right to use it in the course of trade. d) Beneficiaries of protection

An application for a right in registration for geographical indication may be filed by an organisation entitled to represent interests of the producers running the business activities on a given territory (Art. 176(2)). An application may also be filed by a state or local administration agency competent in respect of the territory to which the geographical indication relates (Art. 176(4)).

The right to use the geographical indication, is extended to any party whose products satisfy the conditions for its use. Such party may also request the Patent Office to be entered in the Register as a party authorised to use that indication, subject to the furnishing of a written confirmation by the holder of the right in registration to the effect that the products of the requesting party satisfy the conditions for the use of the geographical indication, or on the basis of a court decision (Art. 187).

Rights in registrations for geographical indications may be transferred to another organisation or agency (Art. 189). Invalidation and lapse of the right in registration are regulated in Articles 191-195. e) Duration of protection

The term of protection for geographical indication commences at the date of its entry into the Register of Geographical Indications, and is unlimited (Art. 184(2)).

7. Unfair competition

The provisions on unfair competitions are contained in a separate Unfair Competition Act, and this area is explicitly excluded from the scope of the Industrial Property Act by its Article 2. a) Definitions

Acts of unfair competition against which the law offers protection, are in particular (Art. 3(2)):

• Misleading marking of the enterprise • False or deceitful marking of geographic origin of goods or services • Misleading marking of goods or services • Violation of trade secrets and confidential information • Inducing to dissolve or to fail to execute an agreement • Imitating of goods • Slander or unfair praising • Making difficulty in access to the market • Unfair or prohibited advertising. b) Marking of enterprises (company names)

Article 5 defines as an act of unfair competition, such marking of the enterprise which may be misleading for client as far as the enterprise’s identity is concerned by using the name or other characteristic symbol previously used, in accordance with the law, to denote another enterprise. If marking of the enterprise with a family name of the entrepreneur may be misleading with respect of the identity of another enterprise which previously used a similar marking, the entrepreneur should undertake measures to eliminate the threat of misleading third parties (Art. 6). c) Marking of goods or services

Article 8 declares it an act of unfair competition to mark goods or services with false or deceitful geographical mark, specifying (directly or indirectly) the country, region or town of the origin or using such mark and trade activities or advertising. 45

Article 10 declares as an act of unfair competition such marking of goods or services, or lack thereof, which may be misleading for clients with respect to place of origin, quantity, quality, components, manner of manufacturing, usefulness, application, repair, maintenance or other significant characteristics, as well as concealing risk connected with its use. d) Trade secrets

Article 11 declares it an act of unfair competition to transfer, reveal or use somebody else’s information which constitutes a trade secret, as well as acquiring such information from the unauthorised person, if it may threaten the significant interest of the entrepreneur. Trade secrets are defined are defined as technical, technological, commercial or organisational information of the enterprise, which were not disclosed to the public and in relation to which the entrepreneur undertook the operations necessary to keep the information confidential (an exception is made for persons who in good faith, acquired information from unauthorised persons). e) Advertising

In the area of advertising, the following are defined as acts of unfair competition (Art. 16):

• Advertising against the provisions of law, good manners, or defying human dignity • Advertising which is misleading and may influence a decision concerning purchase of goods or services • Advertising which appeals to clients’ emotions • Statement which appears to be a neutral information, while encouraging the purchase of goods or services, • Statement which constitutes interference in the privacy.

Comparative advertising used to be included as an act of unfair competition. However, the Act has been amended, so as to allow this form of advertising on certain conditions, in line with the EU Advertising Directive.

The Act combating unfair competition also introduced changes to legislation regarding cultivating tobacco and manufacturing tobacco goods, prohibiting the advertising of tobacco goods on television or radio, or in media targeted at children and teenagers. Likewise, the 46 legislation on pharmaceutics, medical materials, drug stores, pharmaceutical wholesaling and supervision, was amended to prohibit advertising of medicine sold only upon the prescription from a doctor of medicine, except in professional medical magazines.

C. Recommendations

1. Legal issues

The new Industrial Property Act provides an up-dated regulation of the entire field of industrial property, adapted to the current economic system of Poland and implementing the main international treaties as well as most of the relevant EU legislation. The level of protection for industrial property rights as provided for in the new statute, is generally satisfactory. As with all new legislation, certain aspects will need to be clarified through practice.

There are certain areas where the law could be more precise, or where the level of protection could be enhanced by a more coherent practice.

(i) The patentability of software-related inventions and inventions in the field of biotechnology has been pointed out as an area where the practice of the Patent Office is less predictable. It also appears that the Patent Office is more strict than the EPO. This area would benefit from a clarification and a closer adherence to the interpretations applied internationally, particularly by the EPO.

(ii) The wording of Article 66 of the Industrial Property Act offers protection against import on the basis of a process patent but not for product patents. The reasons for the differentiation remain unclear, and an amendment should be considered.

(iii) The conditions for the grant of a compulsory licence and public policy based other restrictions in the exclusive rights of the right owner should be reviewed.

(iv) The regulation of well-known marks appears unclear and could be improved. The Act differentiates between trademarks that are reputed, well-known and renowned, neither of which are defined clearly. Both the conditions for, and the extent of protection for unregistered trademarks should be clarified. 47

(v) In particular, there is a need to clarify the principle of protection of well-known trademarks at the level of border enforcement. It appears to be the practice of the customs authority to require proof of registration for the border measures to be made available to a trademark owner.

2. Practical issues

The main concern relates to the lack of sufficient knowledge about industrial property law at all levels, particularly in the enforcement agencies. This is dealt with further in part III. Suffice to say here that there is a clear need for training programmes and possibilities of exchange with international experts in the field. Also, academic research into industrial property law should be stimulated.

The Act on Industrial Property Law is a very comprehensive and complex piece of legislation, which it not readily accessible to non-experts. There is a clear need for measures to make the law accessible to target groups such as small and medium-size enterprises, such as:

– Dissemination of information about industrial property rights in a non-legal and non-technical language – Seminars or education programs in industrial property rights for non-experts.

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. 49

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. 50

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).

- 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 52 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]. 53

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.

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]. 55

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. 56

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.

- 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. 58

• 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. 59

(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. 60

(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.

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. 62

- 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).

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. 64

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.

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.

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).

(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.

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:

- 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 bypassing 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.

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.

(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]. 81

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:

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. 83

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. 84

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.

(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.

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, 87 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.

88 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. 89

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).

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. 91

(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 92

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.

93 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).

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. 95

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 96 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. 97

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. 98 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; 99

- 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. 105

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 106 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 107

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 108 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. 109

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 Sanctions provided for under the Industrial Property Act Industrial Property Act Unauthorised filing of another’s invention, A fine, utility model, industrial design or topography restrictions of liberty, or in order to be granted, a patent, right a imprisonment for a period of up protection or a right in registration (Art. 304 to 2 years 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

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Unintentional disclosure of prevention of right A fine being granted Marking goods with counterfeit trademark for A fine, restriction of liberty or imprisonment the purpose of placing them on the market or up to two years placing on the market such goods (Art 307)

Where the above act is of minor gravity A fine

When the above act is committed as a Imprisonment for a period from six months to regular source of income five years.

When the above act is committed in respect For feature to the fescue of the proceeding of goods of handsome value from the offence as all as the materials, tools and technical means employed Marking goods not protected by a patent, a - A fine or right to protection for a utility model or a right - detention (not specified) 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 Putting on the market goods sparing a A fine 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)

Violations of the Unfair Competition Act Sanctions provided for under Unfair Competition Act Disclosure of trade secrets, that causes significant damage. (Art. 23.1 Unfair A fine Competition Act) restriction of liberty or imprisonment up to two years Legal acquiring of a trade secret and disclosure of it to another person or use of it in own economic activities (Art. 23.2) Copying the outlook of a product and A fine introducing a product to turnovers, less Restriction of liberty creating the possibility of misleading the Imprisonment up to two years clients as to their identity of the producer or the product and causing significant damage to the entrepreneur (Art. 24 Unfair Competition Act)

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Misleading marking or failure to mark goods A fine or services, that is misleading the client as far Arrest 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.

(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 Sanctions provided for under the Copyright Act Copyright Act Violations of moral rights as follows: In all mentioned cases of moral rights violations in Article 115 Copyright Act, the False attribution of authorship or misleading sanctions available are: others as to the authorship of a whole or part of another person’s work or artistic - a fine; performance (Article 115(1) Copyright Act) - restriction of liberty; or - imprisonment up to 3 years. 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) General copyright and neighbouring rights - fine; infringement other than indicated in Article - restriction of liberty; 115(1) and (2) Copyright Act above in order - imprisonment up to 2 years to gain material benefits (Article 115(3) Copyright Act) Unauthorised dissemination of another’s - fine; work, performance, phonogram, videogram, - restriction of liberty; broadcast in the original or derivative version - imprisonment up to 2 years. (Article 116(1) Copyright Act)

Where the above act is committed in order to Imprisonment up to 3 years gain material benefits (Article 116(2) Copyright Act)

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Where the above act is committed as a Imprisonment from 6 months to 5 years regular source of income or manages a criminal activity of the same kind (Article 116(3) Copyright Act)

Where the above act is committed - fine; unintentionally (Article 116(4) Copyright Act) - restriction of liberty; - imprisonment up to 2 years.

Unauthorised fixation or reproduction of - fine; another’s work, performance, phonogram, - restriction of liberty; videogram, broadcast and giving consent to - imprisonment up to 2 years. their dissemination (Article 117(1) Copyright Act)

Where the above act is made as a regular Imprisonment up to 3 years source of income or where a criminal activity as above is managed (Article 117(2) Copyright Act)

Purchase or assistance in selling or accepting Imprisonment from 3 months to 5 years 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 Imprisonment from 1 year to 5 years 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 - fine; acts referred to in Article 118(1) and (2) could - restriction of liberty; have presumed that the object has been - imprisonment up to 2 years obtained through an illegal act (Article 118(3) Copyright Act) Preventing or impeding the exercise of an - fine; exclusive right with regard to a work, - restriction of liberty; performance, phonogram or videogram or - imprisonment up to 1 year. refuses to provide information on the amount of income received from the use of the work (Article 119 Copyright Act) Criminal sanctions for infringements against No translation available of the provision – technical measures and rights management hence no further details can be given. information appear to be available in Article 118¹ Copyright Act.

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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]. 116

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 120 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. 121

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:

122 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. 125

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 127 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 128 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 130 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. 131

- 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.

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