Territorial limitation of transfer of subjective intellectual property rights and their exhaustion in the European Union law (from the Polish law perspective)

Abstract

The article examines cases in which national intellectual property rights were voluntarily transferred by the right holder to an independent entity in one or more EU Member States, or, more broadly, the European Economic Area (EEA), while the transferor retained those rights in other countries. In earlier work, with particular reference to economic copyrights, the author argued that where subjective rights are territorially divided, their exhaustion presupposes the consent of the right holder in the country of importation to the placing on the market of copies of a work, including where this was done lawfully in another Member State. This position was criticized by Monika Czajkowska-Dąbrowska and Ryszard Markiewicz, who argue that the authorized person in the country of importation cannot oppose such importation. The aim of the article is to determine the territorial scope of exhaustion of subjective intellectual property rights within the EU/EEA and thereby to verify these two positions. Using the dogmatic-legal method and analysing the case-law of the Court of Justice of the European Union and doctrine, the author concludes that where a specific intellectual property right (including copyright) has been voluntarily transferred in one EEA Member State while being retained in another, the right holder in the country of importation may oppose the importation of relevant products, even if they placed on the market in another Member State by the right holder in that state, provided there is no identity of entities and no current legal or organizational link between them.