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We are lawyers specializing in matters such as copyrights, trademarks, patents, it law and personal rights. In our practice we provide assistance to Polish and foreign clients who create solutions protected by intellectual property rights, or use such solutions i.e. clients from IT, media and advertising sectors as well as other entrepreneurs involved in innovative projects requiring adequate legal security.

We advise both the authors, inventors and representatives of the business environment, producers as well as investors on issues related to the protection and management of intellectual property.

We support technology startups and advise them on company formation, intellectual property, contractual matters and other business issues. We negotiate, prepare and draft founders’ agreements, non-disclosure agreements and investment agreements.

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Reproduction of out-of-print books

The copyright directive precludes national legislation authorising the digital reproduction of out-of-print books in breach of the exclusive rights of authors. National legislation must guarantee the protection accorded to authors by the directive and ensure, in particular, that they are actually informed of the envisaged digital exploitation of their work, while being able to put […]

CJEU ruling – reselling of a computer program to a new acquirer

The initial acquirer of a copy of a computer program, accompanied by an unlimited user licence, may resell that copy and his licence to a new acquirer. However, where the original material medium of the copy that was initially delivered has been damaged, destroyed or lost, that acquirer may not provide his back-up copy of […]

Dynamic IP address can be personal data

The operator of a website may have a legitimate interest in storing certain personal data relating to visitors to that website in order to protect itself against cyberattacks. The dynamic internet protocol address of a visitor constitutes personal data, with respect to the operator of the website, if that operator has the legal means allowing […]

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Reproduction of out-of-print books

The copyright directive precludes national legislation authorising the digital reproduction of out-of-print books in breach of the exclusive rights of authors. National legislation must guarantee the protection accorded to authors by the directive and ensure, in particular, that they are actually informed of the envisaged digital exploitation of their work, while being able to put an end to it without formalities.

In France, ‘out-of-print books’ are defined as books published before 1 January 2001 which are no longer commercially distributed or published in print or in a digital format. According to the French legislation, an approved collecting society, the SOFIA, is responsible for authorising the reproduction and communication, in digital form, of out-of-print books, it being understood that the authors of those books or their successors in title may oppose or put an end to the exercise of those rights under certain conditions.

Two French authors (Marc Soulier, who is better known as Ayerdhal and has since died, and Sara Doke) requested the annulment of a decree specifying certain aspects of the French legislation, claiming that that decree is not compatible with the copyright directive.1 In particular, those authors submit that the French legislation establishes an exception or limitation, not provided for in the directive, to the exclusive rights guaranteed to authors by the directive. The Conseil d’État français (French Council of State), before which the case has been brought, has referred a question to the Court of Justice on this subject.

In today’s judgment, the Court of Justice notes that, subject to the exceptions and limitations expressly provided for in the directive, authors have the exclusive right to authorise or prohibit the reproduction and communication to the public of their works.

However, it holds that the prior consent of an author to the use of one of his works can, under certain conditions, be expressed implicitly. For the existence of such consent to be accepted, the Court considers, in particular, that every author must be informed of the future use of his work by a third party and of the means at his disposal to prevent it if he so wishes.

The French legislation, as it currently stands, provides that the right to authorise the digital exploitation of out-of-print books is transferred to the SOFIA when the authors do not oppose it within a period of six months after the registration of their books in a database established to that effect.

The Court states that the Conseil d’État has not shown that this legislation included a mechanism ensuring authors are actually and individually informed. It is not therefore inconceivable, according to the Court, that some of the authors concerned are not aware of the envisaged use of their works and, consequently, are not able to adopt a position on it. In those circumstances, a mere lack of opposition on their part cannot be regarded as the expression of their implicit consent to the use of their works, especially since it cannot reasonably be presumed that, without opposition on their part, every author of ‘forgotten’ books is in favour of the ‘resurrection’ of those works, in view of their commercial use in adigital format. The Court adds that the pursuit of the objective enabling the digital exploitation of out-of-print books in the cultural interest of consumers and of society, while compatible with the directive as such, cannot justify a derogation not provided for by the EU legislature from the protection that authors are ensured by the directive.

Furthermore, the Court states that the French legislation enables authors to put an end to the commercial exploitation of their works in digital format either by mutual agreement with the publishers of those works in printed format or alone, on condition that they provide evidence that they alone hold the rights in their works.

The Court declares, in this respect, that the right of the author to put an end to the future exploitation of his work in a digital format must be capable of being exercised without having to depend on the concurrent agreement of persons other than those to whom the author had given prior authorisation to proceed with such a digital exploitation and, thus, on the agreement of the publisher holding only the rights of exploitation of that work in a printed format. Moreover, the author of a work must be able to put an end to the exercise of rights of exploitation of that work in digital format without having to submit beforehand to any additional formalities.

Source: Court of Justice of the European Union Press Release, No 126/16, 16 November 2016

CJEU ruling – reselling of a computer program to a new acquirer

The initial acquirer of a copy of a computer program, accompanied by an unlimited user licence, may resell that copy and his licence to a new acquirer. However, where the original material medium of the copy that was initially delivered has been damaged, destroyed or lost, that acquirer may not provide his back-up copy of that program to that new acquirer without the authorisation of the rightholder.

In Latvia, criminal proceedings have been brought against Mr Aleksandrs Ranks and Mr Jurijs Vasiļevičs, who are charged with, inter alia, the unlawful sale, as part of a criminal organisation, of objects protected by copyright and intentional unlawful use of another person’s trade mark. They are alleged to have sold various copyright-protected computer programs published by Microsoft (such as versions of the Microsoft Windows software and the Microsoft Office suite) on an online marketplace in 2004. It is estimated that they sold more than 3 000 copies of programs and the material damage caused to Microsoft by the activities of Mr Ranks and Mr Vasiļevičs has been evaluated at €265 514.

In those circumstances, the Rīgas apgabaltiesas Krimināllietu tiesu kolēģija (Criminal Law Division of the Riga Regional Court, Latvia), before which the case has been brought, asks the Court of Justice whether EU Law must be interpreted as meaning that the acquirer of a back-up copy of a computer program, stored on a non-original material medium, may, under the rule of exhaustion of the rightholder’s distribution right laid down in an EU Directive, resell that copy where (i) the original material medium of that program, acquired by the initial acquirer, has been damaged and (ii) that initial acquirer has erased his copy or ceased to use it.

In today’s judgment, the Court considers that it follows from the rule of exhaustion of the distribution right that the holder of the copyright in a computer program (in the present case, Microsoft) who has sold, in the EU, a copy of that program on a material medium (such as a CD-ROM or a DVD-ROM) with an unlimited user licence can no longer oppose the subsequent resale of that copy by the initial acquirer or subsequent acquirers of that copy, notwithstanding the existence of contractual terms prohibiting any further transfer.

However, the questions referred concern the resale of the used copy of a computer program, stored on a non-original material medium (‘back-up copy’), by a person who acquired it from the initial acquirer or from a subsequent acquirer.

The Court notes that the directive grants the holder of the copyright in a computer program the exclusive right to do or to authorise the permanent or temporary reproduction of that program by any means and in any form, in part or in whole, subject to the specific exceptions laid down in the directive. The lawful acquirer of a copy of a computer program, placed on the market by the rightholder or with his consent, may therefore resell that copy, provided that that sale does not adversely affect the rightholder’s exclusive reproduction right and that any acts of reproduction of that program are authorised by that rightholder or are covered by the exceptions laid down in the directive.

In that respect, the Court points out that the directive provides that the making of a back-up copy by a person having a right to use the computer program may not be prevented by contract in so far as it is necessary for that use. Any contractual provisions contrary to that rule are to be null and void.

The making of a back-up copy of a computer program is therefore subject to two conditions. That copy must (i) be made by a person having a right to use that program and (ii) be necessary for that use.

According to the Court, that rule, which lays down an exception to the exclusive reproduction right of the holder of the copyright in a computer program, must be interpreted strictly.

It follows that a back-up copy of a computer program may be made and used only to meet the sole needs of the person having the right to use that program and that, accordingly, that person cannot — even though he may have damaged, destroyed or lost the original material medium — use that copy in order to resell that program to a third party.

The Court therefore holds that the directive must be interpreted as meaning that, although the initial acquirer of a copy of a computer program accompanied by an unlimited user licence is entitled to resell that copy and his licence to a new acquirer, he may not, however, in the case where the original material medium of the copy that was initially delivered to him has been damaged, destroyed or lost, provide his back-up copy of that program to that new acquirer without the authorisation of the rightholder.

Source: Court of Justice of the European Union Press Release, No 110/16, 12 October 2016

Dynamic IP address can be personal data

The operator of a website may have a legitimate interest in storing certain personal data relating to visitors to that website in order to protect itself against cyberattacks. The dynamic internet protocol address of a visitor constitutes personal data, with respect to the operator of the website, if that operator has the legal means allowing it to identify the visitor concerned with additional information about him which is held by the internet access provider.

Mr Patrick Breyer has brought an action before the German courts seeking an injunction to prevent websites, run by the Federal German institutions that he consults, from registering and storing his internet protocol addresses (‘IP addresses’). Those institutions register and store the IP addresses of visitors to those sites, together with the date and time when a site was accessed, with the aim of preventing cybernetic attacks and to make it possible to bring criminal proceedings.

The Bundesgerichtshof (Federal Court of Justice, Germany) has made a reference to the Court of Justice asking whether in that context ‘dynamic’ IP addresses also constitute personal data, in relation to the operator of the website, and thus benefit from the protection provided for such data. A dynamic IP address is an IP address which is different each time there is a new connection to the internet. Unlike static IP addresses, dynamic IP addresses do not enable a link to be established, by means of files accessible to the public, between a specific computer and the physical connection to the network used by the internet service provider. Therefore, only Mr Breyer’s internet service provider has the additional information necessary to identify him.

Furthermore, the Bundesgerichtshof asks whether the operator of a website must, at least in principle, have the possibility to collect and subsequently use visitors’ personal data in order to ensure the general operability of its website. It observes, in that regard, that most academic commentators in Germany interpret the relevant German legislation as meaning that those data must be deleted at the end of the consultation period unless they are required for billing purposes.

By today’s judgment, the Court replies, first of all, that a dynamic IP address registered by an ‘online media services provider’ (that is by the operator of a website, in the present case the German Federal institutions) when its website, which is accessible to the public, is consulted constitutes personal data with respect to the operator if it has the legal means enabling it to identify the visitor with the help of additional information which that visitor’s internet service provider has.

The Court observes, in that regard, that in Germany there appear to be legal channels enabling the online media services provider to contact the competent authority, in particular, in the event of cyberattacks, so that the latter may take the steps necessary to obtain that information from the internet service provider and subsequently bring criminal proceedings.

Second, the Court states that EU law precludes the legislation of a Member State under which an online media services provider may collect and use a visitor’s personal data, without his consent, only to the extent that it is necessary to facilitate and invoice the specific use of services by that visitor, so that the objective aiming to ensure the general operability of those services cannot justify the use of such data after those services have been accessed.

The Court recalls that, according to EU law, the processing of personal data is lawful, inter alia, if it is necessary to achieve a legitimate objective pursued by the controller, or by the third party to which the data are transmitted, provided that the interest or the fundamental rights and freedoms of the data subject does not override that objective.

The German legislation, as interpreted by the majority of legal commentators, reduces the scope of that principle, by excluding the possibility of balancing the objective of ensuring the general operability of online media against the interest or the rights and freedoms of visitors.

In that context, the Court emphasises that the Federal German institutions, which provide online media services, may have a legitimate interest in ensuring the continued functioning of their websites which goes beyond each specific use of their publicly accessible websites.

Source: Court of Justice of the European Union Press Release, No 112/16, 20 October 2016