Cycle: Fields of exploitation in copyright law | part 4

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At this point, it is worth mentioning examples of new unnamed fields of exploitation that have entered the market as a result of the action of various economic operators, i.e., e.g. the use of a work

• or alterations thereof as a trade mark or industrial design[1];
• as a telephone ringtone[2];
• in a database hosted on cloud computing, e.g. Xbox Game Pass, MS Office 365[3];
• for the purpose of advertising, promotion or marketing of the trader, its goods and services[4].

What about a situation in which a new field of exploitation arises within the term of the Parties’ agreement?

Pursuant to Article 41(4) of PrAut, “an agreement may relate only to fields of exploitation which are known at the time of its conclusion“.

This raises the question of what action to take in the situation of the emergence of a new field of exploitation in which the Parties would like to use a given work during the course of the legal relationship formed by them, and which they could not previously concretise.

The answer to the question thus posed comes from the provision in Article 41(5) of PrAut, which states as follows:

“The author of a work used or included in an audiovisual work and a work forming part of a collective work, after the creation of new ways of exploitation of the works, may not, without a valid reason, refuse to grant permission to use this work within an audiovisual work or a collective work in fields of exploitation unknown at the time of concluding the agreement“.

It means that the provisions of PrAut provide only in relation to a work used or included in an audio-visual work and a collective work, an exception consisting in the fact that its author cannot, without a valid reason, refuse to use this work within an audio-visual work or collective work in fields of exploitation unknown at the moment of concluding the agreement.

However, the above still makes it necessary to obtain the prior authorisation of the creator, which means that the right holder cannot freely use such a work, with the proviso that the creator cannot refuse without a valid reason. “Valid reason” is, however, not defined by the legislator, but its classic examples may be, e.g. depletion of artistic value, damage to the reputation of the creator[5].

However, the principle of freedom of contract does not preclude the Parties from unanimously agreeing that if a new field of exploitation is created, they undertake to take measures resulting in an appropriate transfer or authorisation to use the work also in a new field of exploitation unknown to them at the time of concluding the agreement.

What about remuneration then?

As a general rule, the author is entitled to separate remuneration for the use of the work in each separate field of exploitation. However, this may be otherwise specified by the Parties in their contract[6].

The above means that, as a rule, the Parties should in the agreement either separate the remuneration received for the use of the work in a given field of exploitation or establish an aggregate remuneration which will cover the use of the work in all fields of exploitation.

Therefore, when concluding a new agreement in addition to the existing one, or an annex or agreement with regard to regulating the issue of using a hitherto unknown field of exploitation, the Parties should also determine the manner of remuneration.

On the other hand, the possible fact that the entitled entity does not use and does not intend to use the work in one of the fields of exploitation listed in the agreement does not preclude the author from demanding remuneration for it[7].

However, the parties may also exclude the issue of an additional remuneration charged by the author for authorising the use in a new field of exploitation.

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[1] Judgment of the Supreme Court of 25 October 1988, ref. II CR 143/88.

[2] W. Machała [in:] Copyright and Related Rights. Commentary, ed. by R. M. Sarbiński, Warsaw 2019, Article 50.

[3] A. Niewęgłowski [in:] Copyright Law. Commentary, Warsaw 2021, Article 50.

[4] W. Machała [in:] Copyright and Related Rights. Commentary, ed. by R. M. Sarbiński, Warsaw 2019, art. 50.

[5] A. Flegel, The emergence of new fields of exploitation of works and their impact on the content of copyright contracts in a comparative legal perspective [in:] Folia Iuridica Universitatis Wratislaviensis 10, no. 2.

[6] Art. 45 PrAut.

[7] A. Niewęgłowski [in:] Copyright Law. Commentary, Warsaw 2021, art 45.