Lubecka.Law Blog

The form of concluding the contract and the transfer of copyrights - why is it so important?

The German company and Adam’s company signed a collaboration agreement that outlines the specifics of their partnership, including their respective obligations. They agreed on how long the agreement will last, how it can be terminated, and rules about non-competition and keeping business information confidential. The agreement also states that Polish law will govern the contract. The transfer of economic copyrights to a work is regulated by a contractual provision, resulting from the cooperation of the parties.

The parties specify all contractual provisions relevant to them and the contract is ready to be signed. At the same time, they agree that the contract will be concluded by exchanging scans of handwritten copies of the contract, sent between the parties by e-mail.

The parties start cooperation, the contract has been valid for over a year. However, there is a dispute between the parties regarding the manner in which Adam’s company performs its duties. As a result of this dispute, the contract is terminated by the German company.

Adam claims that the transfer of copyright to works created at that time did not take place. The German company claims that the copyrights were transferred to it in accordance with the agreement.

Copyrights in international contracts - Who is right?

Let’s settle this dispute.

First, let's assess the impact of the contractual form selected by the involved parties.

The parties entered into an agreement and regulated issues related to transferring of economic copyrights to works that are to be created as a result of the parties’ cooperation. Each party signed one copy of the contract and sent a scan of the handwritten copy of the contract to the other party by e-mail.

What about the legal regulations?

The parties agreed that Polish law would be applicable to the contract.

According to the provisions of the Polish Act on Copyright and Related Rights, an agreement about transferring economic copyrights requires a written form under pain of nullity. In order to maintain the written form of a legal transaction, it is sufficient to sign the document containing the content of the declaration of intent. In order to conclude a contract, it is possible to exchange documents covering the content of declarations of will, each of which is signed by one of the parties.

A form equivalent to the written form is the electronic form. In order to preserve the form of a document in electronic form, i.e. a document saved in PDF format, it should be provided with a qualified electronic signature.

The judicature emphasizes that: “The requirement to keep a handwritten signature is not (…) kept when it is not an original mark, but only reproduced using tracing paper, photocopier, scanner, fax, etc.” (the judgment of the Supreme Court from August 24, 2009, file reference number: I PK 58/09).

Therefore, the exchange of scans of signed handwritten copies of the agreement, sent between the parties by e-mail, did not meet the requirement of a written form.

What about this situation? Is the copyright transfer agreement concluded in an incorrect form completely ineffective?

No. Although an agreement of transferring copyrights, concluded without the required form, does not have legal effects , it does not mean that it remains completely useless for the parties.

The doctrine and judicature allow a different legal classification of an invalid agreement of transferring copyrights to a non-exclusive license agreement covering the same scope of rights. A non-exclusive license agreement does not require a written form for its validity and may be concluded in any form. However, it is necessary to determine whether a non-exclusive license agreement, at least in part, achieves the goal that the parties wanted to achieve by concluding an invalid agreement of transferring copyrights.

Was Adam right?

In this case, in the dispute over copyright in an international contract, Adam is right. Due to failure to comply with the requirement of a written form, the agreement of transferring copyrights is invalid, and therefore their transfer did not actually take place. As a result, the German entrepreneur cannot dispose the copyrights that he was supposed to acquire under the contract. By using the works created as a result of the agreement, the User is exposed to liability for infringement of economic and moral copyrights.

Joanna Lubecka
attorney

02

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