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Problems with an implied license

Apr 11, 2019

It is a principle of the copyright law that there is no need for a written form of license agreements (except for the exclusive license). As a consequence, and in accordance with a principle of interpretation of declarations of will of the parties (Article 65 of the Civil Code), in the doctrine and jurisprudence, a category of so-called implied license has been worked out, i.e. a license, the provisions and content of which results from the actions taken by the parties.

In practice, it often happens in business transactions that the parties do not complete the formalities, either because of acting in confidence or by postponing the issue of formalities for later. In such a situation, there is undoubtedly a worse situation for an entity using someone else’s work. It is exposed to the allegation of infringement of economic copyrights.

Therefore, the concept of an implied license is, in a sense, an escape for the user of the work without a properly demonstrated authorization to use a third party’s work. In order to say that a license agreement exists, the fact of concluding a license, as well as its content, must result from factual circumstances, without raising any doubts. A principle of taking sensible actions should also be taken into account. If, therefore, someone sends his own poem to a magazine or a television station, then in principle he must assume that the poem will be used in the activities typical for these entities, and so that it will be published or used in one of the programs (see the Supreme Court’s judgment, no. III CSK 124/05), while the remuneration for such use has to be determined in accordance with the principles set out in art. 43 section 2 of the Copyright Act, i.e. taking into account the scope of the license and benefits drawn by the licensee.

A recent judgement (Circuit Court in Poznan, case no. XII C 220/16) is related to the following facts of case. A person for whom kitchen furniture was made, who was also a professional photographer, took pictures of the furniture and sent them to the firm which designed and made the furniture. These photos were then used by the firm in printed advertising materials. The photographer sued the firm for an infringement of its copyrights, and the court of first instance, admitting the infringement, awarded damages calculated by a court expert. The court stated that the firm did not show that a license agreement had been concluded, and that the burden of proof in this regard rested on the firm.The court awarded damages without considering the scope of the use of the work and ignored the aspect of a potential implicit license that could have resulted from the  facts of the case.

The facts of the case were quite straightforward. It cannot be argued that the photographer was not aware of the purpose of sending the photographs to the firm. There was not other need to send professional photos for other aims than using them in the firm’s portfolio. Therefore, the court should determine an appropriate remuneration for granting such a license in relation to the actual use of the photos, and not damages in the amount corresponding to the rate for a full use of the work.

Full text of the judgment under here.

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