Licence agreements in copyright law – an introduction (part 1) | Article

Agreements in copyright law are divided into:

o the proprietary copyrights are transferred to another person.

o the copyright remains with the right holder,

o the licensee (the other party to the agreement) obtains the right to use the work

If the intention of the parties to the agreement is to transfer the right, the provision stipulating this effect in the Agreement should be expressly stated. Otherwise, the law considers that a licence has been granted.

The parties have a fairly large degree of freedom in determining the terms of the copyright licence agreement. Remember that the creator is considered to be the weaker party to the agreement, which is why the Copyright and Related Rights Act contains protection mechanisms to safeguard the creator against the abuse of his or her position by the beneficiaries.

Among other things, the law[1] provides for solutions in case the parties omit certain elements of the agreement. In order to consciously create and understand licence agreements, it is necessary to know a few principles (to begin with).

There are two types of licence agreement. The choice of one depends on the objective the parties wish to achieve:

© Exclusive licence – implies the granting of exclusive use to the licensee. This means that the right holder will not be able to grant permission for his work to be used by other persons. The user thus obtains the assurance that other persons will not use the work.

© Non-exclusive licence – the granting of such a licence to one person does not restrict the author from authorising other persons to use the work in the same field of exploitation. This means that the licensee has to reckon with the fact that the creator may grant a licence of identical scope to many other entities.

The exclusive nature of the licence must necessarily be expressly stipulated in the agreement. If the parties have not made this stipulation, a non-exclusive licence is presumed.

Form of the licence agreement – the law sometimes requires a specific form (e.g. a notarial deed) for the validity of the agreement. What does this look like for licences?

o if the parties decide on an exclusive licence, they must conclude the agreement in writing - the document containing the right holder's declaration that the licence has been granted must be signed by hand

o equivalent to the written form is to make the declaration of intent in electronic form and to affix a qualified electronic signature (electronic form) Note! A special qualified electronic signature is required.

o the granting of the licence may be made in writing as well as in documentary, oral or implied form

o it will therefore be sufficient, for example, to exchange e-mails, text messages or messages on other communicators, to make telephone arrangements,

o it is worth remembering that conclusion of the agreement in a "weaker" form (e.g. oral) may cause evidentiary difficulties in proving the conclusion of the agreement and its content at the stage of possible court proceedings, so we recommend concluding the licence agreement at least in documentary form. This will also facilitate efficient verification of each other's rights and obligations in the course of the cooperation between the parties.

Fields of exploitation – what are they? What is their function in the agreement?

The Copyright and Related Rights Act requires that the fields of exploitation covered by the agreement be expressly mentioned in the licence agreement. The purpose of this regulation is to ensure that the permitted scope of use of the work by the licensee is precisely defined.

By 'fields of exploitation' we mean a technically and economically distinct way of using a work, so for example:

a) making a copy of a work, e.g. a graphic design, means reproducing it (there are, of course, different techniques),

b) the sale of copies of a work, e.g. books, is marketing,

c) exhibiting a painting in an art gallery is a public display,

d) posting a video on a website is making a work available to the public in such a way that everyone can access it from a place and at a time individually chosen by them.

For the sake of clarity and precision, it is advisable to use the terms defined in the Copyright Act. In a licence agreement, the parties may specify fields of exploitation narrower than those described in the Act or indicate fields not mentioned therein. Only those fields of exploitation which are known at the time of conclusion of the licence may be licensed

Duration of licence:

The parties to the licence decide for what duration it is concluded. However, it is important to bear in mind certain consequences of the decision and the limitations introduced by the law. The agreement may be concluded:

© for an indefinite period, in which case it remains in force until terminated. In such an agreement, the parties may specify a notice period. If they fail to do so, the agreement can be terminated by the creator one year in advance, at the end of the calendar year (so termination on 11 April 2024 would have legal effect on 31 December 2025),

© for a fixed term, with the law stipulating that an agreement concluded for a fixed term of more than 5 years is deemed, after the expiry of those 5 years, to be an agreement concluded for an indefinite term.

Territorial scope of the licence:

The parties are free to decide on the territory in which the licence agreement entitles them to use the work. It may be, for example, the whole world, several countries or a single country, or even a part of a country (e.g. a voivodeship in Poland).

If the parties do not indicate the territorial scope in the agreement, the licence is deemed to entitle the use of the work in the territory of the state in which the licensee is established (in the case of a natural person, this should be assumed to be the place of residence). An agreement concluded by parties residing in Poland in such a situation will relate to the territory of Poland.

Can a licence agreement relate to a work that does not yet exist?

Yes, it is permissible to conclude a licence agreement for a work to be created in the future. At first glance, such a solution may seem theoretical, but in practice there are often situations where it is useful to make use of this option.

Important! However, it is important to remember that the work must be specified to a certain extent. An agreement concerning all works or all works of a certain type by the same author to be created in the future is invalid in this part.

Licence agreements in copyright law – an introduction (part 1)

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