Probably most of us have at least once ordered a particular work, for either private or professional purposes: a photo, architectural design, interior design, website, company logo or computer programme. In most such cases it is understood that we have received a work within the understanding of the Act of 4 February 1994 on Copyright and Related Rights (Polish J. of L. of 2019, item 1231 as amended, further referred to as “Copyright Act”).
Such an order for a particular piece of work is often verbal or made by e-mail, and the only document confirming that we have placed the order is the said e-mail or an invoice. Should the contractor or service provider suggest signing a written agreement, it rarely contains any detailed arrangements as regards the author’s rights to a given piece of work (design, photograph, picture, graphic design), including those concerning the rights for using the said piece of work. Yet, when ordering a piece work for ourselves, we would like to be able to use it freely, sometimes even on an exclusive basis.
What should be done then if we want to acquire the copyright to a piece of work (such as the photos from a family event or business photoshoot)? Is it possible at all and, if so, to what extent? Is it sufficient to include a note on the invoice that the price includes the transfer of certain rights onto us? Should we detail that in contracts at all?
Before answering these questions, we must clarify that copyright protects two types of authors’ rights: economic and moral, the latter being inalienable. In this article we only discuss the author’s economic rights.
Entering into a written contract, which clearly defines what is considered a piece of work and specifies the possible conditions of transferring the rights, is a prerequisite for the acquisition of the author’s economic rights to be possible and valid. We must bear in mind that the effective transfer of authors’ economic rights requires the other party to the contract to be the holder of those rights. Otherwise, even if we meet all the statutory requirements for such a contract, the transfer of rights will be ineffective, since the assigner can only transfer rights they actually own.
As regards the contract for the transfer of an author’s economic rights, the most important matters to include are:
- no time limits for acquiring the rights (e.g. 5 years after which the rights would return to the assigner),
- no territorial limitations (since rights may be transferred e.g. only on the territory of Poland),
- no limitations regarding the further transfer of these rights,
- indicating the fields of exploitation for which the rights transfer is effective,
- indicating that the transfer of rights also includes the right to exercising derivative copyright to the interpretations of this piece of work (if we would like to have the freedom to exploit the interpretations of this piece of work, excluding the assigner’s rights in this area),
- excluding the assignee’s responsibility to publish and/or disseminate the piece of work,
- specifying the remuneration,
- determining the moment of the transfer of rights,
- other elements, specified individually, depending on the type and purpose of a particular piece of work.
What requires special attention is the correct definition of the scope of the transferred rights, i.e. the fields of exploitation. Incorrectly specified fields of exploitation may cause much trouble and is often the main reason for the ineffectiveness of the rights transfer (apart from the cases when there is no written contract at all).
Over the years, I have come across numerous contracts incomplete in this respect. The main patterns employed by the authors of the contracts I have seen usually consisted in defining the scope of rights transfer in one of the following ways:
- the contract contained a clause for transferring onto the assignee „all author’s economic rights” or „author’s economic rights in all fields of exploitation”,
- the contract contained a clause for transferring onto the assignee author’s economic rights in all the fields of exploitation indicated in Article 50 of the Copyright Act (in the case of software – Article 74 para. 4 of the Act),
- the contract contained a list of the fields of exploitation for which the rights were to be transferred (detailed to a various extent).
The first model is undoubtedly incorrect and does not result in an effective transfer of the author’s economic rights onto the assignee. The second model is, in my opinion, effective, although opinions vary in this matter, hence I would recommend avoiding such a definition of the fields of exploitation. The third model is the recommended option. However, please bear in mind that the definitions of individual fields of exploitation should not to be overly detailed, because that makes the scope of the acquired rights limited (the risk of omitting certain fields of exploitation rises).
To sum up, the acquisition of the author’s economic rights to a piece of work requires a written contract, which includes the elements required by the Copyright Act. However, due to the complex nature of this matter, it is recommended to consult every new copyright contract with a specialist and to consider using professional model contract for standard cases.
author: Przemysław Barchan