by Szymon Gogulski and Marek Oleksyn
Cross-border, mostly worldwide, assignment and licensing of copyrights has been a significant part of IP lawyers' practice for decades. In fact, worldwide copyright transactions preceded globalization of the world's economy. This was possible due to international treaties, e.g. the Berne Convention, TRIPS and WIPO Treaties, which contributed to increasingly common standards of copyright protection. At the same time, due to the territorial character of economic copyrights, their existence and protection is based on numerous national laws, which for obvious reasons, cannot be all well known to the contract drafter. Even though national laws try to implement ideas incorporated in international conventions, such attempts do not always lead to equal effects and a number of significant differences in copyright systems still exist. The discussion below focuses on some of the practical aspects of copyrights assignment and licensing which should be taken into account while drafting this type of contract, i.e.: the importance of the distinction between the "law applicable to copyrights" and the "law applicable to copyrights contract", applicable copyright law regardless of the parties' choice, the issue of author's moral rights, the possible impact of shaping a copyright contract under a jurisdiction following the monistic concept of copyrights, possible local requirements regarding the form of the agreement, scope of disposal of copyrights, etc. Law applicable to copyrights vs. law applicable to copyrights contracts The first necessary step in drafting a copyright license or assignment agreement is to choose the applicable law. At the same time, one should determine which law is applicable to such licensed/assigned copyrightable work. This task is vital as those copyrights aspects which fall within the scope of "law applicable to copyright" may not be changed or derogated contractually regardless of the law governing the agreement. Yet, this is not an easy task since neither international conventions nor available literature give a uniform definition or clarify the actual meaning and scope of the 'law applicable to copyrights' or provide precise guidelines on how such law should be established.
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Szymon Gogulski graduated from Poznan University in 1994. He has worked with SK&S since July 1994, and became partner in January 2002. He was admitted to the Poznan bar in 1998.His areas of interests include industrial property law, unfair competition law and copyrights. He specializes in disputes concerning trademarks (e.g. leading car producers, leading world's software producers, Far East producer of watches and many more), unfair advertising (e.g. leading multinational chain of stores, leading national wholesaler), and industrial designs (e.g. leading regional building materials industry, FMCG producers). He has also been in charge of first biotech patent disputes in Poland. Marek Oleksyn graduated Warsaw University with Post-graduate Studies in Intellectual Property Law in 2005, and from the joint Warsaw University and Poitiers University Post-graduate Studies DESS French and European Commercial Law program in 2004, and Warsaw University with his Master of Laws in 2004. He joined SK&S in 2004. He specialises in issues relating to trademark law, unfair competition law, patent law and intellectual property protection on the Internet. He is a frequent speaker at training courses on intellectual property rights conferences.