Prawo18 września, 2017

Zeszyty Naukowe Uniwersytetu Jagiellońskiego 3(137)/2017

Five Years After Its Modernisation: Canadian Copyright Law Poised for Its Review.

Ysolde Gendreau
Université de Montréal

Five Years After Its Modernisation: Canadian Copyright Law Poised for Its Review

When Canada implemented the WIPO treaties in 2012, it mandated a parliamentary review to be done every five years. As the end of 2017 approaches, this paper looks at a number of court decisions that interpret provisions that were specifically included at the time to govern Internet uses of works. Because they directly affect the working of copyright law in the country, this paper also looks at some procedural developments that have taken place in response to the growing awareness of the international dimensions of copyright regulation.

Keywords:  copyright, Canada, internet, digital technology, copyright revision, WIPO treaties, international dimensions

Susy Frankel
Professor of Law, Chair in Intellectual Property and International Trade, Victoria University of Wellington, President International Association for the Advancement of Teaching and Research of Intellectual Property (ATRIP) 2015-2017

The Dynamic and Unsettled Evolution of Parallel Importing

This article discusses the dynamic and unsettled evolution of intellectual property rules relating to parallel importing. It focuses on the changes in the United states policy as a result of Supreme Court decisions that now allow for the parallel importation of copyright and patented goods into the United States and compares this to the approaches in the European Union and elsewhere. The article explains how and why the international rules allow for jurisdictional variations and why those variations can be both desirable and problematically complicated.

Keywords:  parallel importing, exhaustion, international intellectual property, territoriality, TRIPS Agreement

dr hab. Joanna Banasiuk
University of Białystok, Faculty of Law

Orphan Works as a Twentieth Century Black Hole – Is There a Need for the Adoption of Legal Solutions at International Level?

Despite the fact that the orphan works problem is an international issue, neither the European Union nor the United States have been trying to find a legal compromise in order to implement a minimal legal provision common for both Europe and the U.S. In this context it is doubtful whether legal solutions concerning orphan works at EU level can be considered effective. At the same time, the attempts to create legal norms across the Atlantic will not lead to fully restoring copyright rules in the context of orphan works. The postulates presenting the relevance of adopting legal solutions with respect to orphan works at international level seem to be justified based on the following circumstances: 1) the phenomenon of orphan works exists all over the world and is subject to legislation in numerous states, hence the proposal to regulate the issue in question at international level seems to be justified; 2) the problem of orphan works is directly linked to the creation and development of digital libraries; 3) the intangible and cross-border nature of the works and the fact that they may be exploited in many places simultaneously, given the global nature of the Internet, raises some doubts as to whether regional solutions can provide efficient protection of particular interests in the information technology era; 4) international agreements on intellectual property affect both domestic laws of the contracting states who are parties to the treaty and shape European Union law on the matter; 5) the existing body of international conventions leads to the formation of copyright law or similar rights on a global scale; 6) the copyright protection of works under Directive 2012/28/EU is global in nature; 7) fragmented regulations are not favourable in the view of legal certainty as a particular work may be considered an orphan work according to the provisions of one country but may not be granted the same status under the law of another; 8) access to works of scientific and cultural significance would be facilitated, which would promote further scientific and cultural development as well as enhance public access to items of scientific and cultural interest, thus achieving the aims of legislators on the issue of orphan works.

Keywords:  orphan works, copyright, intellectual property law

Halyna Dovhań
Department of Intellectual Property, Corporate and Information Law, Ivan Franko National University of Lviv

The Development of Copyright Legislation in the Russian Empire and its Enforcement on Ukrainian Lands

The history of intellectual property of Ukraine is closely linked to the historical processes in those states in which Ukrainian lands had been included. This issue is neglected by Ukrainian scholars. A few of them have addressed this, but in a fragmentary way. This article focuses on the analysis of the formation of copyright legislation in the Russian Empire during the XVIII and XIX century. For this purpose legal acts of the Russian Empire as well as works of the representatives of the legal doctrine of that time have been studied. Special attention was paid to the search for and analysis of archive materials from the collections of the Central State Historical Archive of Ukraine and the State Archive of the Kyiv Oblast. It enabled highlighting the law enforcement practice within Ukrainian lands. The author comes to the conclusion that the development of copyright law in the Russian Empire followed the same path as it had done in Europe, but somewhat later. The main feature of copyright legislation in the Russian Empire was its close link to censorship legislation. From 1828 until 1887 provisions regulating authors’ rights were part of the latter. The first legal act concerning authors’ rights was included in the 1828 Censorship Statute. The Russian Empire separated itself from legal integration in the fi eld of copyright, namely in terms of the development of international cooperation in this sphere. The Russian Empire did not become a party to the Berne Convention. In the XIX century the most widespread theory in the Russian Empire was the theory of property of the results of intellectual activity. Authors’ rights were considered to be a type of ownership right. Ukrainian civil law specialists held more progressive views, similar to those dominant in the European legal doctrine. They called in question the reasonability of using the theory of property to authors’ rights. A separate place was distinguished for these rights in the system of civil law. Specialists emphasised moral rights as a component of authors’ rights. It was the 1911 Law that provided not only the protection of the economic rights of authors, but also of their moral rights. The1911 Copyright Law is considered to be the most progressive legal act in this sphere in the Russian Empire. Its provisions as well as the provisions of prior legislation are analysed in this article.

Keywords:  copyright, history of intellectual property, the Russian Empire, censorship

Marek Świerczyński
Uniwersytet Kardynała Stefana Wyszyńskiego w Warszawie

Second Medical Use Patents and the Substitution of Medicinal Products

This paper discusses the legal problems of second medical use patents and the substitution of medicinal products. It is inspired by two recent rulings of the English and Dutch courts. These courts have considered whether the sale of generic drugs may be regarded as an infringement of a patent on second medical use when the facts of the cases showed that these drugs have actually been used based on the indications covered by this patent (i.e. off-label use). The author of this paper wishes to give an answer to the following question – whether it is appropriate to limit the scope of the patent on second medical use, where medicinal products based on the substance are subject to public reimbursement, in order to provide a wider access to these products. The author proposes to consider whether the following solutions should be adopted. First, it seems reasonable to allow patent holders, in case of a risk of direct or indirect infringement of their patents on second medical use, to agree with their competitors (manufacturers of generic products) on what safeguards and measures should be taken to minimise the risk of patent infringement. Second, education of physicians, pharmacists and administrative staff of hospitals is needed in order to ensure that specific products are the only ones that can be used based on a particular indication because of second medical patent existence. Third, Patent Law may include a specific exemption from physician liability in case of the off-label use of a product.

Keywords:  invention, second medical use patent, medicinal products, reimbursement

Marlena Jankowska
Assistant professor in the Department of Private and Private International Law, Faculty of Law and Administration, University of Silesia in Katowice; president of the board of the IIP foundation in Katowice

Geodata – A New Object of Intellectual Property?

Recently the EU lawmaker has given a great deal of attention to European data economy, which can be seen in the documents of 10 January 2017: Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions, “Building a European Data Economy” accompanied by the Staff Working Document. Thereby, a wider debate on the legal protectability of data is essential. The discussion related to the need for protection of the contents of a work (in particular, of an informational work) is not new, but the rapid development of new technologies and the phenomenon of big data took the problem of protectability of data to a new dimension. In this regard, there is a wide range of views, from advocating for securing a new legal construct for data protection, to critical ones. The analysis of the legal nature of a digital map, taken by this author, proved that the legal protection of digital informational works (by example of a digital map) is vague with regard to both the work as a whole and its components. The analysis of the premises of copyright protection led her to raise a postulate de lege ferenda to cover geodata with a new neighbouring right. The legal regulation of the right has been modelled by her in a two-fold way. The first model was drafted after phonograms/videograms or broadcasting rights based on Polish legal regulations, which provide an enumeration of the fields of exploitation of non-material goods. The second model was drafted in a synthetic manner characteristic of rights to first editions and critical editions. One of the two options should be adopted.
Option 1. introduces the definition of a signal and the exemplification of the fields of exploitation. It can be modelled as follows:
1. A signal shall be the first fixing of the spatial data layer, raw or enhanced, irrespective of its copyrightability.
2. A producer of a signal shall be deemed to be the one under whose name or business name such signal has first been made. If no such information is given, it is deemed that the producer is the owner of the devices recording the spatial data.
3. Without detriment to the rights of authors of spatial data, the producer of the signal shall have the exclusive right to manage and use the signal within the scope of:
1) fixation;
2) reproduction by a specific technique;
3) broadcasting by another person;
4) rebroadcasting;
5) making the fixation of the signal available on the market;
4. The right shall expire… years following the year in which the signal was made.
1. Provisions of this Act shall apply to signals:
1) whose producer has its residence or seat in the territory of... (the Republic of Poland); or
2) whose producer has its place of residence or seat in the territory of the European Economic Area; or
3) which are protected on the basis of international agreements, within the scope off protection which results from such agreements.
Option 2. is modelled after the synthetic construction of the provision and may be drafted as follows:
The publisher who was the first to disseminate a signal carrying spatial data, raw or enhanced, irrespective of its copyrightability and of whether the signal has been disseminated in public, shall have the exclusive right to manage and use the signal across all fields of exploitation for a period of... years from the first date of making available or disseminating.
This author is aware of the fact that the above introduced concept is at its early stage of drafting and needs a wider in-depth analysis (possibly related to technological issues) with regard to: 1) the choice of the right legal construct on which to model the regulation; 2) estimation of the kind of data the regulation should refer to along with the explicit ratio legis as to why this kind of data deserves protection when other kinds do not; 3) explanation of the terms and introduction of definitions (e.g. signal, spatial data, raw data and enhanced data); 4) estimation of the fields of exploitation legally relevant for spatial data signal stream; 5) duration of protection (given the life span of data it may be 15 or 25 years); 6) adjustment of other provision of the Copyright Law (e.g. permissible use).

Keywords:  geodata, spatial data, geoinformation, GIS, digital maps, European data economy, signal, vector data

dr hab. Paweł Podrecki
Uniwersytet Jagielloński
dr hab. Janusz Raglewski, prof. UJ

Uniwersytet Jagielloński

Karnoprawna ochrona unijnego znaku towarowego na podstawie art. 305 prawa własności przemysłowej

Przedmiotem artykułu jest odpowiedź na pytanie, czy prawnokarna ochrona na podstawie art. 305 ustawy prawo własności przemysłowej obejmuje de lege lata w polskim systemie prawnym unijny znak towarowy (wcześniej „wspólnotowy znak towarowy”). Zasada ochrony praw do unijnego znaku towarowego nie powinna budzić kontrowersji ponieważ z Rozporządzenia Rady Unii Europejskiej Nr 207/2009 z dnia 26 lutego 2009 r. w sprawie znaku towarowego Unii Europejskiej wynika, że ochrona takiego znaku towarowego jest bezpośrednio skuteczna na terytorium Rzeczypospolitej Polskiej. Rozstrzygnięcia wymaga więc kwestia, czy dopuszczalna jest możliwość odpowiedniego stosowania przepisów polskiego prawa własności przemysłowej, w tym także przepisów karnych, w wypadkach, gdy regulacje międzynarodowe bądź wspólnotowe dopuszczają unormowanie określonych zagadnień w systemach prawa krajowego poszczególnych państw. Argumentem za dopuszczalnością szerokiej ochrony znaku unijnego jest potrzeba zrównania sytuacji prawnej zarejestrowanych unijnych znaków towarowych na warunkach określonych w przepisach Unii Europejskiej ze znakiem towarowym zarejestrowanym w procedurze krajowej. Przyjęcie takiej wykładni przepisów będzie w konsekwencji potwierdzać wniosek, że nabycie prawa z rejestracji znaku unijnego wywołuje jednolite skutki prawne na całym terytorium Unii Europejskiej.

Słowa kluczowe:  znak towarowy, prawo własności przemysłowej, prawo karne, rozporządzenie Rady Unii Europejskiej 207/2009 z 26.02.2009 r. w sprawie znaku towarowego Unii Europejskiej

Criminal law protection of EU trade marks under Art. 305 of the Industrial Property Law

This articles seeks to answer the question whether criminal law protection under Art. 305 of the Industrial Property Law coveres, de lege lata in the Polish legal system, an European Union trade mark (previously a Community trade mark). The principle of protecting the rights in a EU trade mark should not give rise to controversies, because Council Regulation (EU) 207/2009 of 26 February 2009 on the European Union trade mark provides that protection of such trade marks is directly effective in the Republic of Poland. Thus it must be decided whether in such a case it is permissible to apply mutatis mutandis the Polish Industrial Property Law, including also the criminal provisions in the cases when international or Community regulations permit regulating certain issues in the national legal systems of individual Member States. An argument in favour of permitting broad protection of EU trade marks is the need to equate the legal situation of registered EU trade marks, as provided for in EU legislation, with that of trade marks registered in accordance with the national procedure. Adopting such an interpretation of provisions will, as a consequence, confirm the conclusion that acquiring the rights from registration of an EU trade mark produces the same legal effects across the EU.

Keywords:  trade mark, industrial property law, criminal law, Council Regulation (EU) 207/2009 of 26 February 2009 on the European Union trade mark

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