Download Table of Contents Editorial 5 Joanna Banasiuk The requirement of a

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Editorial ................................................................................................................................ 5
Joanna Banasiuk
The requirement of a diligent search for the rights-holder
as a central element of the institution of orphan work .................................................... 7
Diligent search for rights-holders constitutes a key element in the concept of orphan works due
to the fact that granting the status of orphan work, pursuant to the conditions stipulated by the
European Union legislator, is conditioned upon the outcomes of the diligent search carried out
in good faith. Nevertheless, the analysis of the discussed problem is hindered owing to the laconic character of the Union regulations, a certain margin of discretion left to the Member
States and the lack of possibi-lity to refer to the case law. A diligent search should be a flexible
process where changing scientific knowledge and technological advancement are taken into consideration; the process in which the diligent search is adjusted to particular conditions. As
a consequence, it might be presumed that the standards of diligent search will be affected by
technological and information technology developments. It seems justifiable to include the criteria of diligent search in the Act on Copyright Law and Related Rights, as the quality of diligence
might be different depending on the category of work, the conditions in a particular case and
access to the desired information, and as it is the court that will mostly decide whether
a particular search was conducted diligently. Assessing whether a particular action is “reasonably likely” would depend on the evaluation of the circumstances present before the diligent
search is conducted as well as on the data that is revealed during the search for rights-holders.
Moreover, it needs to be highlighted that the fulfilment of the requirement for a diligent search, if
there are no institutions that might certify the diligent search, will be assessed at the moment of
adjudicating whether or not the authorised institution infringed the copyright to a particular
work. Nevertheless, in the case of litigation it might be costly to prove that a diligent search was
conducted and, consequently, it might discourage a potential user from using the orphan work. It
might be reasonable to entrust collective societies with conducting a diligent search given the
following circumstances. Firstly, it is practical because the list of sources for a diligent search
refers to databases of the collective socie-ties. Secondly, it is grounded in the necessity to guarantee certainty and security of legal transactions as well as to ensure a uniform procedure within
the European Union, which could be accomplished by entrusting a relevant collective society
with carrying out a diligent search, as particular collective societies cooperate with relevant
organisations in other Member States. Thirdly, competent collective societies have
well-developed collective management systems with the databases that concern both the work
itself and its rights-holder. Fourthly, collective societies conclude agreements on the representation of entities from other Member States, which is of importance as it enables searching for
rights-holders more efficiently and facilitates the mutual recognition of the orphan work status,
which is referred to in Art. 4 of Directive 2012/28/EU. Fifthly, collective societies might maintain a register of diligent searches particularly due to the fact that they possess experience in the
scope of maintaining databases of works. Sixthly, it is worth stressing that on 26 February 2014
the European Parliament and the Council submitted the Directive of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in
musical works for online use in the internal market, which lays down the conditions to ensure
proper management of copyright and related rights by collective societies as well as the requirements that must be met by collective societies to grant multi-territorial licences.
Lavinia Brancusi
The functionality of three-dimensional trade marks in the Polish practice ................... 20
The present article aims to discuss the Polish case law covering the period from the year 2000
and pertaining to trade mark protection conferred on shapes, which was passed mainly in invalidity actions by focusing on legal grounds related to the functional exclusions, descriptiveness,
lack of distinctiveness or even lack of abstract capability of being a trade mark. A major part of
the case law is based on a previously binding law, namely the Trade Mark Act; to a much narrower extent it is based on the new body of law implementing Directive 89/104/EEC, i.e. the Industrial Property Law Act, due to specific transitional provisions of the latter. Therefore, following a short introduction in the first place, the article discusses the main provisions of the
Trade Mark Actwhich were invoked to deny trade mark protection to three-dimensional signs. An
interesting fact was that this law did not refer either to functional exclusions – apart from one
provision similar to Art. 6 quinquies(B)(2) of the Paris Convention – or to the possibility for
a sign to acquire distinctiveness by use. However, arguments related to the refusal of registration
on account of freedom of competition, although not expressly based on the law but promoted by
the doctrine, were frequently raised against any three-dimensional sign.
The subsequent part of the article deals with a few cases where objections related to a shape
determined by the nature of goods, a shape necessary to obtain a technical result or a shape
giving substantial value to the goods constituted an autonomous invalidity ground. The last part
of the article, in turn, concentrates on the issue of the lack of distinctiveness. There were cases
where arguments related to the lack of abstract distinctiveness of a sign were raised in connection with trade marks displaying an atypical structure, such as get-up and position signs. However, the objection of a sign failing to show inherent or acquired distinctiveness in concreto was
the main ground to deny trade mark protection for such shapes as the Lego brick, the Danone
packaging for yoghurt, or the Lindt chocolate rabbit. Some additional examples of unsuccessful
enforcement in infringement cases prove the uncertain character of three-dimensional trade
marks.
The final remarks express criticism towards the Polish practice to date due to the tendency to
mix different legal grounds in order to deny trade mark protection for shapes. Having in mind
the newly adopted Directive 2015/2436/EU and Regulation No. 2015/2424, it seems important
for the future practice to be able to draw a clear line between different absolute grounds for refusal, and especially between the functional exclusions and the grounds related to distinctiveness, descriptiveness and genericness.
Krzysztof Felchner
Variety denomination as an impediment to trade mark registration ............................. 32
The collision of prior trade mark with posterior (filed) variety denomination is regulated in the
UPOV Convention since it was adopted in 1961. A similar rule is stipulated by Regulation No.
2100/94, which was adopted in 1994. This collision is regulated in the majority of national laws
on plant variety protection in EU Member States, including Poland. What especially evokes controversy, is the possibility of acquiring the plant breeder’s right by the breeder, who is the proprietor of the trade mark identical to the variety denomination and conversely, the possibility of
acquiring the right to trade mark by the breeder, who is entitled to the variety. Due to the fact
that the usage of variety denomination in the course of trade of seed material is obligatory even
after the expiration of the plant breeder’s right (right being timely restricted), covering variety
denomination with the right to trade mark causes the right to trade mark to become a substitute
for the expired breeder’s right.
The collision of prior variety denomination with posterior (filed) trade mark has been explicitly
regulated in EU law provisions only after the trade mark law reform of 2015, namely in Art. 7
paragraph 1 letter m of Regulation No. 207/2009 and in Art. 4 paragraph 1 letter l of Directive
2015/2436/EU. The new impediment was introduced to the catalogue of absolute grounds for
refusal of trade mark right, although an analysis of the provision can lead to the conclusion that
it refers to the criterion of the identity or the close relationship of the species, thus this impediment resambles rather the relative ground for refusal. National acts on variety protection law
usually do not regulate this collision. However, an appropriate regulation has been introduced
to the Polish law at the end of 2015.
The collision of prior variety denomination with posterior (filed) geographical indication (designation of the origin) had already been regulated in the repealed Regulation No. 510/2006, and
currently in Regulation No. 1152/2012.
The foregoing analysis allows to formulate a thesis, according to which variety denomination
constitutes a type of distinctive sign, protected by the exclusive right, which is connected to and
at the same time separated from the plant breeder’s right to the variety as such, being the quasi
technical solution.
Daria Katarzyna Gęsicka
Much ado about the levy schemes ................................................................................. 43
Private copying and reprography levies have been on the target of the European Commission’s
on-going initiatives as well as the cause for quite a turmoil in the realm of copyrights and related
rights for quite some time now. The reason for the ado is that the foundations on which the levy
system was built in the 1960s are getting weaker and weaker with the advancement of new technologies and social changes. First and foremost, the manner in which users exploit works has
changed significantly over the years. The production of copies on tangible objects is becoming
exotically rare. More and more users are making digital copies, at times stored in the cloud as
part of cloud-computing services, or obtaining access to works by means of streaming services.
Second, the storage capacity of electronic devices applied to reproduce copies of works is getting
bigger and bigger. Third, the electronic devices no longer have one or two pervasive functions
but they are multifunctional. Fourth, the devices are getting more and more technologically advanced, and as such, are used to produce user-generated content. As a result, authorised collective management organisations collect lower sums of money as part of the levy schemes. Smaller
remunerations paid to the right-holders have been a subject of debate between the three groups
of interest: right-holders, users, and the producers and importers of the devices. The discussion
concerns the following subjects: private copying exception in the United Kingdom and the close
relation between the exception and fair remuneration as well as the recent changes of the levy
scheme in Portugal, or the possible role of the State in the levy scheme in Spain or the list of devices within the scheme and the double-payment return mechanism in Poland, and proves that
there is an urgent need for a better levy scheme.
The article analyses the private copying and reprography exceptions equation, brings the current
levy schemes into focus and seeks for the best remedy to numerous deficiencies of the schemes. In
order to do so, the article first presents the historical and economic background and evolution of
the schemes, second, it places the current schemes within the existent European legal framework,
including the prolific decisions of the Court of Justice of the European Union on the legal nature
of the levies, the return mechanism or multifunctional devices, and delineates their fundamental
ingredients, and third, it analyses the alternative solutions, beginning with the most conservative
ones, and their potential to become the most efficient and satisfactory levy scheme. The criteria
taken into consideration in the analysis are as follows: consistency with the body of the EU law,
potential to bring welfare to the right-holders and users, thus to stimulate creativity, and consideration of the postulates of the user-oriented organisations and movements. The results of the
analysis show that none of the proposals are devoid of imperfections or elements that would require further research or improvement. However, the alternative copyright compensation system
might be seen as a promising alternative solution, inasmuch as it accounts for technological and
social changes, and might resolve the online piracy problem.
Marlena Jankowska
Cartographic work as a database after the Court of Justice judgment
of 29 October 2015 ....................................................................................................... 56
This paper identifies areas of confusion in the practice of applying database law, specifically in
the areas of cartographical content and digital map data. The increasing prevalence of digital
technology in the creation and consumption of maps has required map makers wishing to protect
their content legally and to do so in new ways. The paper demonstrates that both the law and the
courts that apply it have difficulty keeping pace with these developments. The close interplay
between a finished map and the underlying digital data leads many to characterise their maps as
databases and to invoke database law to protect them. However, it is seen that, even when applying the EU Database Directive intended to be uniform across all Member States, different
courts routinely interpret the Directive very differently. With respect to the same dispute and its
underlying facts, to the extent that, depending what ruling one consults, both a set of digital map
data and a traditional paper map can be eligible to qualify as a database as defined under the
Directive or to be ruled ineligible for this classification. As it seems, diametrically different interpretations, taken by the courts, are driven by a concerning subjectivity in many of the prerequisites for qualification as a database.
The key qualification criterion that causes difficulty is that of “independence”. The paper discusses whether the criterion of independent elements, data and other works is not sufficiently
clear in regard to existing law. To this end, the author investigates the evolved understanding of
this criterion, which allows her to present her opinions and remarks. The conflicting interpretation in case law in this area is described. An interesting point of difference between court judgments relates to whether the value of individually depicted map elements should be assessed
based on a “typical” use of the map or on an actual emerging use of the map as devised by the
user. The paper provides examples of how map content can be represented as data using different technologies and how two different methodologies for handling map data can lead observers
to two different conclusions of whether independence can be established, notwithstanding that
both are describing identical map content.
Given the economic value of digital maps and their pervasiveness in modern society, this level of
legal uncertainty is surprising and concerning, and it is very much to be desired that a strong
consensus should emerge. As advocated in the paper, there may be value in changing some of the
basic assumptions that underpin the legal definition of a database. The author proposes a new
definition and offers two alternatives to amend the existing and binding definition without removing the whole definition.
Fanny Koleva
Intellectual property crediting: a case study of Bulgarian experience ........................... 77
Intellectual property is among the most important assets for development nowadays, which
makes it crucial for its holders to have access to credit resources based on it. This can be realised using different instruments – assignments or pledges. Various variants are possible – assets
themselves can serve as collateral, independently or together with intellectual property revenues
or with other assets. Bulgarian legislation, which recognises this possibility, is analysed from the
perspective of the requirements for non-possessory pledges filing, the function of this filing and
the date from which it can be opposed to third parties. The very practice of intellectual property
crediting in the country is also analysed based on the discussed filings. The following characteristics of this practice are subject to analysis – intensity, variants of realisation, term, participating parties and branches. As a result of the analysis, the paper concludes that the country is
aware of the necessity of such deals, as well as of the value of intellectual property as credit collateral, and that what is needed for a better diffusion and results of this instrument is simply
time, experience and more confidence.
Ewa Laskowska, Grzegorz Mania
Copyright as a service: how does the development of the music business
indicate the shape of copyright? .................................................................................... 91
This article aims to introduce a discussion on the influence of the changes in the music business
and digital environment on the copyright law regime. The starting point is a historical review of
the copyright paradigm. Particular attention is paid to the problems with the construction of an
object of protection (work). We discuss the notion that copyright reflects the property (dominium) structure, based on the example of the material copy (original, carrier) perspective by the
interpretation of a work construction. The paper also includes particular judgments of the CJEU
and the construction of domestic legal systems of the Member States (e.g. the Polish construction
of the technical protection measures in copyright law). In the next part of the discussion we present different copyright perspectives and problems arising from technological changes. In our
opinion, the key role is played by the spread of the Internet and social media with more and more
different and varied methods of work exploitation, which implicates the necessity to adapt previous dogmatic concepts to the new reality. Based on the example of the cross-licensing model and
musical work we emphasise the possible idea of copyright being considered a service construct
(as opposed to a property structure) with a non-material protection object.
Vadim Mantrov
Recent legislative developments in the regulation of IGOs at the EU level:
towards a system ......................................................................................................... 104
The present article discusses the currently effective regulation of indications of geographical
origin (IGOs) as unitary rights in the European Union (EU) law from the point of view of recent
legislative developments at the EU level. At the beginning, this article discusses the current system of regulation of IGOs by providing an overview of the protection system of IGOs in EU law
and characterises the direct protection system and indirect protection system. Furthermore, the
present article reviews the legislative developments which were introduced to both these protection systems by the recent changes in EU law for the regulation of IGOs. One the one hand, legislative developments within the direct protection system were adopted in relation to IGOs in
respect of wines and aromatised wines.
The most important one is the legislative development in the field of IGOs in relation to aromatised wines, which introduced the same legislative approach as already exploited for the regulation of IGOs for other agricultural products and foodstuffs. It allows to ground registration and
protection of IGOs in the whole field of agricultural products and foodstuffs on similar criteria.
On the other hand, the article analyses the legislative developments in the EU trade mark law
within the indirect protection system by reviewing the regulation of IGOs through special types
of trade marks (collective marks, guarantee or certification marks) that could serve for the registration and protection of IGOs. The author argues that, notwithstanding recent legislative de-
velopments which led to the grounding of the regulation of IGOs on common principles for the
whole field of agricultural products and foodstuffs, further efforts should still be made to shape
the system of regulation of IGOs at the EU level.
Vytautas Mizaras
The influence of the European Union Law on the Lithuanian Copyright Law ........... 114
The article analyses the main characteristic of the Lithuanian Copyright Law, the existing issues
of the implementation of the directives of the European Union. The feature most characteristic of
the copyright regulations in Lithuania throughout the entire history of the State and law is that
Lithuanian copyright has had no traditions of its own. Copyright regulations in Lithuania have
been determined by the legislation of other states and, presently, in the times of the reinstated
independence – by international agreements and EU legal acts. The paper focuses on the analysis on relevant provisions related to subject matter, copyright ownership, economic rights, limitations of economic rights and enforcement of copyright and neighbouring rights.
The definition of “work” substantially corresponds to the description of works provided for in
paragraph 1 of Art. 2 of the Berne Convention for the protection of literary and artistic works.
Any work should be the result of personal creative activities for it to be eligible for copyright
protection under the Lithuanian Copyright Law. All criteria for protection are in line with the
jurisdictional traditions of continental Europe.
The national legislative provisions on the economic rights of authors and neighbouring rights
have been influenced by the related provisions as embodied in international treaties and in the
relevant EU Directives. The regulation of the limitation of copyright and related rights is based
on two main principles: the rules of the “Three-Step-Test” and numerus clausus. The list of individual limitations of authors’ economic rights and related rights is oriented towards the provisions of the Berne Convention and the Directive on the Information Society.
The legal remedies and measures set forth in the Copyright Law could be classified as: legal
remedies ordered by the court when passing a decision on the merits; copyright protection
measures possible in the course of judicial proceedings before any decision on the merits is
passed; and procedural measures. The first group covers: injunctions, corrective measures, alternative measures and the publication of judicial decisions, whereas the second group covers all
possible ways of compensating for damages. The Law also provides for the right of access to
information, which as a copyright protection measure is applied in the course of judicial proceedings and facilitates the application of other measures and remedies.
Miglena Molhova
Intellectual property protection and reverse engineering of computer programs
in the European Community and Bulgaria .................................................................. 134
Reverse engineering is the process of analysing a product and working backwards to discover
how it works. Even if long-accepted, the practice in the manufacturing industries, when it comes
to the software industry, is still a controversial practice, consisting of actions that are often regarded as unlawful. The paper argues that considering the nature of computer programs to be
intellectual products and fitting them into the existing legislative framework, has the potential to
create more problems in the markets than to successfully regulate the economic relations arising
from the development and commercial use of the programs as a product, specifically when it
comes to reverse engineering, which in its nature is aimed more at securing interoperability rather than creating another product with similar characteristics, to be offered in the market at
a cheaper price. European law may seem clear on the issues of reverse engineering, but even if
some parts of the process are regulated in copyright law, this is not done in patent law, which is
definitely a gap in the legislation, considering the fact that computer programs can also be protected under patent law. In this paper it is analysed how patent law and copyright law interact
when it comes to the protection of computer programs, with a special focus on reverse engineering. The paper investigates the European law, also discussing this type of protection in Bulgaria,
and the EU law applied in one of the Member States considerably recently.
Justyna Ożegalska-Trybalska
The Bolar exemption: broad or narrow scope of safe harbour in European
patent law? .................................................................................................................. 143
Patent laws, both in US and Europe include so called “Bolar exemption” (“regulatory exemption”), which permits third parties to use patented inventions for clinical studies and trials necessary to obtain regulatory marketing authorisation for a medical product to enter the market,
without infringing patent. It is of special importance for generic companies allowing them for the
purpose of regulatory requirements to test patented active substance of innovative drugs.
The Bolar exemption provided by Art. 10(6) of Directive 2001/83/EC was implemented by the
EU Member States in different (broad or narrow) manner, thus national Bolar provisions and its
interpretation by national courts varies throughout the EU. Main differences related to the material scope of the exemption focus on whether the safe harbour applies to activities related to obtaining approval not only for generic but also innovative drug, covers research tools patents, and
extends to activities such as production and submission together with the application for the
marketing authorisation of samples of a medical product. The scope of the Bolar exemption in
Europe differs also in terms of the geographical location of privileged activities. Even more controversial problem relates to personal scope of the Bolar exemption and the question about parties eligible for benefiting from it. Even though some guidelines in this regard have been provided by national courts in Germany and Poland, the question in this regard is still open. While the
Polish Supreme Court in the milestone decision from 23 October 2013 has excluded activities of
third parties producing and supplying active ingredients to generic companies for regulatory
authorisation, the German appeal court resolving the same case was not as definitive in its approach and decided to ask CJEU for further clarification. Unfortunately, since the questions
were withdrawn by the German court from the CJEU register and the case was closed, there will
be binding interpretation on the scope of Bolar exemption under the EU law.
Current legislative developments in some countries (UK, Ireland) extend the scope of activities
covered by the exemption for those related to innovative products and the case law of other
countries (Poland) limiting personal scope of the exemption confirm opposite trends in determining legal bounders boundaries of the safe harbour. The different scopes of the national Bolar-type provisions create uncertainty for the EU pharmaceutical companies. One and the same
activity could be either encompassed by it or considered as patent infringement depending on the
territory where it is performed and the kind of activity in question. The Agreement on the Unified
Patent Court that is supposed to ensure better uniformity of patent system in the EU may (when it
will be ratified) not solve this problem, but will be even more influential when it comes to the
decisions of generic companies where to hold clinical trials in order to benefit from the Bolar
exemption.
Thus a further harmonisation of this form of patent limitation in the EU is required to ensure
a uniform interpretation of the Bolar provisions by national courts as well as the CJEU. From
one hand it should consider the aim of the exemption which was to strengthen the generic industry in Europe and allow immediate market entry of cheaper generic products after expiry of patent protection for innovative medical products. From the other hand, the scope of the exemption
should not favour third parties using patented products over the patent holders and not to diminish the role of exemptions in the patent system. Because of crucial importance for generic companies, it should be clarified, whether or not activities may be covered by the Bolar privilege if
they are objectively and functionally connected with the actions of a party involved in
a marketing authorisation procedure.
Sybilla Stanisławska-Kloc
“Ab origine”: the ninetieth anniversary of enacting the first Polish Copyright Act ....... 157
The 90th anniversary of enacting the first Polish Copyright Act of 29 March 1926 provides an
occasion to describe the evolution and changes that have already been introduced or are to be
introduced to the Polish copyright regulations and opens up an opportunity to make an attempt
to evaluate them.
At the beginning the author presents a short history of the enactment of copyright acts in Poland,
from the act of 1926, through the act of 1952 and finally the now biding act of 1994. Six years
before the first Polish copyright act was enacted the Polish government had entered the Berne
Convention, in order to fulfil its obligations under art. 19 of I Treaty of Versailles of 1919. Cracow was a cradle of the Polish copyright law; the draft of the first copyright act was prepared at
the Jagiellonian University; it is here that the first Polish academic research unit working on the
intellectual property law was established and the so called “Cracow school of copyright law”
was born.
The act of 1926 introduced a novelty on global scale – the regulation of authors moral rights as
a perpetual (whose protection is not limited in time), and that served the creators (Polish and
foreigner) regardless of the existence (duration) of economic rights. At that time the Berne Convention did not contain such regulation. Article 6 bis of the Berne Convention (that provides
protection of moral rights) was adopted during the Rome revision in 1928. The Polish provisions, at the time already in force, were given as an example of a model regulation.
In the next part author compares the act of 1926 and the act of 1994. The currently biding act is
almost three times more extensive than the original one. The act of 1926 had no implementing
acts (executive regulations) and the act of 1994 has a dozen of them.
Following the contents of the copyright act the author presents some interesting copyright issues.
As regards the subject matter of protection, the author criticises liberal court decisions introducing a very low standard of creativity. Another criticism concerns a tendency to interpret the
notion of “official material” (one of the category of works excluded from protection) in an extensive manner.
The author also presents the special regulation contained in the act on the protection of the heritage of Fryderyk Chopin. Obviously Chopin’s works are in the public domain, but the act authorises the Ministry of Culture to seek remedies for violation of moral rights to the works of the
deceased composer (attribution and integrity rights).
The issues of employees’ works, which due to the changes in social relationships and creative
process enjoy great practical importance, are also discussed.
The author pays particular attention to the practical aspects of the regulation of licence agreements. It is because the current act states that a license granted for a period longer than five
years may be terminated after the lapse of that period. This regulation causes uncertainty on the
side of the licensee who may be deprived of the right to use the copyright work and eventually
will have to re-negotiate the contract. The attempts to overcome this obstacle by introducing
long notice periods have been criticised as aiming to circumvent the law. This state of affairs is
particularly onerous for users who use the works “permanently” (e.g. via websites, electronic
archives). The latest legal literature and the recent decision of the appeal court in Warsaw try to
reasonably interpret the provision on the duration of licences.
The last amendment of the copyright act has brought changes to the provisions on fair use e.g.
introducing a use of orphan works, and library public lending rights. The author focuses on the
modified regulation of fair use concerning scientific and educational activities.
One of the recently most hotly debated aspects of the copyright law in Poland concerned the redress of the damage for infringement of the author’s economic rights. Compared to the first regulation of 1926, the act of 1994 did not simply extend the number of remedies for infringement,
but also provided „preferential” treatment for authors as regards the principles of repairing the
damage (double and triple license fees). In the decision of 2015 the Polish Constitutional Tribunal ruled that the right to request as damages the amount of a triple appropriate remuneration is
contrary to Art. 64 and 31 of the Polish Constitution. Furthermore, because of the preliminary
question asked by the Polish Supreme Court the CJEU will examine the compliance of the Polish
regulation (C-367/15) with the directive 2004/48/EC.
At the end author discusses the legal provisions related to copyright mostly the right of authorship, but existing outside the copyright act. In order to prevent and fight plagiarism the act on
higher education and the act on academic degrees and academic titles have been amended. Under the current regulation it is possible to deprive a person who infringed the right of authorship
of his/her masters title (plagiarism in master thesis), PhD, or the title of professor (for plagiarism or breach of good academic practice in a PhD or postdoctoral thesis).
Marek Świerczyński
Intellectual property and private international law: high time for a dedicated
EU Rome IP Regulation? ............................................................................................ 176
In the international context, legal certainty and predictability of the outcome of an IP dispute is
even more important than in purely domestic situations. For the proper development of the digital economy it is also of ultimate importance that the EU legislator makes conflict-of-law rules
as easy and user-friendly as possible. However, the majority of IP issues are still subject to divergent domestic conflict-of-law rules. The only exception relates to IP obligations that are governed by EU uniform rules of the Rome I and Rome II Regulations. Unfortunately, the scope of
application of the relevant rules following from domestic or EU legal acts on private international law is becoming more difficult to determine and they sometimes overlap. It is also symptomatic that the Rome I Regulation does not include any dedicated rules for IP contracts and the
Rome II Regulation is unable to provide correct solutions for infringements in the digital world.
As a result, they fail to maintain the predictability of the outcome of litigation. Recent ECJ
judgments prove that this leads to major problems in determining the applicable law. In view of
the above, one should consider adopting a separate EU Regulation focused on conflict-of-law
issues of intellectual property rights (the so-called Rome IP Regulation), consisting of
a comprehensive set of rules for international jurisdiction, applicable law and the recognition of
foreign judgments in IP disputes. This paper recommends selected solutions for applicable law to
be included in such a Regulation. In the author’s view, the proposed model should not be revolutionary. This is why it seems reasonable to build the proposed Rome IP Regulation on the principle of territoriality, being understood in a modern, flexible way and aligned with the digital
world.
Kinga Wernicka
Preliminary rulings of the Court of Justice of the European Union concerning
unregistered Community designs ................................................................................ 187
This article relates to the procedure of preliminary ruling in the matter of unregistered Community designs. The article consists of 4 parts (including introduction and final remarks). In the first
part, the author characterizes the procedure based on the Art. 267(1) TFEU and indicates its
role. The second part concerns the protection of unregistered Community designs. The Author
enumerates some provisions that concern the unregistered Community designs and indicates
some questions concerning the way of their interpretation. In the third part of article, the Author
summarizes two preliminary rulings concerning unregistered Community designs and gives some
comments about them.
Andreas Wiebe
Geo-blocking – permitted under European Law? ....................................................... 199
Geo-blocking is a technical measure to support territorial restrictions comparable to the means
of encryption at stake in the Murphy case decided by the CJEU in 2011. However, the legal
evaluation hints in a different direction as, unlike Murphy, the distribution of works on the internet does not follow the principle of the country of origin but rather the country of destination
combined with the principle of territoriality, leaving more space for territorial restrictions. Justifications for geo-blocking in the context of Art. 56 and Art. 101 of the TFEU may be found on the
ground of sophisticated remuneration systems as well as cultural and language specifics. Also,
the media windows marketing tradition may still hold under European law. However, market
specifics can only give a justification in certain cases. While alternative approaches seem to be
less appropriate, European case law shows the way to providing a proper balance between the
interests of rightholders, intermediaries and consumers. The European legislator is bound to act
on geo-blocking in the adjacent field of e-commerce soon.
Petra Žikovská
Current trends in the development of copyright from the viewpoint
of the European Commission, taking account of the needs
of the phonographic industry ...................................................................................... 212
The article deals with two areas. The first one consists of: a) the European Commission Communication of 6 May 2015 entitled “A Digital Single Market Strategy for Europe”, b) the European
Commission Communication of 9 December 2015 entitled “Towards a modern, more European
copyright framework”, and c) the proposal for a Regulation of the European Parliament and of
the Council on ensuring the cross-border portability of online content services in the internal
market of 9 December 2015. The communications focus, among other things, on the area of copyright and its future development within the European Union. These documents also provide us
with at least some general information about future legislative proposals for various areas and
actual topics.
The author of this article focuses on topics related to the music industry, which can also be found
in the four main “copyright areas” of the aforementioned documents. These are: ensuring wider
access to content across the EU; adapting exceptions to the digital and cross-border environment; achieving
a well-functioning marketplace for copyright and ensuring an efficient, effective and balanced
enforcement system.
The second part of the article deals with the decisions of the Court of Justice of the European
Union. The author comments on filtering and blocking orders against ISPs, the liability of ISPs
and furthermore, the issues of linking and embedding content protected by copyright.
Finally, the author presents a conclusion based on the functioning of the CJEU, the decisions of
the CJEU and the European Commission´s present steps and possible legislative proposals,
which will in many various ways affect the field of copyright and rights related to copyright and
also the music industry as such.