Provisional text
OPINION OF ADVOCATE GENERAL
EMILIOU
delivered on 23 April 2026 (1)
Case C‑176/25 [Steizer] (i)
IU
v
BT
(Request for a preliminary ruling from the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany)
( Reference for a preliminary ruling – Area of freedom, security and justice – Judicial cooperation in civil matters – Law applicable to civil and commercial matters – Regulations (EC) Nos 593/2008 (Rome I) and 864/2007 (Rome II) – Exclusive licence over a copyright granted by A to B through a verbal agreement – Claim for infringement of the copyright concerned brought by B against C – Defence, raised by C, that B has no standing on the ground that the contractual licence
granted to B is invalid for failure to comply with
certain formal requirements – Law governing the issue of the formal validity of
that
contractual licence)
I.      Introduction
1.        The present request for a preliminary ruling
has been submitted by the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany).
By its two questions, the referring court seeks, in essence, to ascertain
the law applicable to
the formal validity of a contractual
licence or assignment
of copyright, (2) where that validity is contested by a third party in the course of infringement proceedings.
2.        More specifically, the Court is invited to clarify whether
the relevant conflict-of-law rules in that respect are (a) those laid down in Regulation (EC) No 593/2008 on the law applicable to contractual obligations (3) (‘the Rome I Regulation’), (b) those under
Regulation (EC) No 864/2007 on the law applicable to non-contractual obligations (4) (‘the Rome II Regulation’), or (c) those provided in the national laws of the Member States with respect to copyright. For the reasons that follow, I am of the view that the first of those options should be preferred.
II.    Legal framework
A.      The Berne Convention
3.        Article 5 of the Berne Convention for the Protection of Literary and Artistic Works (Paris Act of 24 July 1971), as amended on 28 July 1979 (‘the Berne Convention’), entitled ‘Rights Guaranteed:
1. and 2. Outside the country of origin; 3. In the country of origin; 4. “Country of origin”’, provides, in the relevant parts:
‘(1)      Authors shall enjoy, in respect of works for which they are protected under this Convention, in countries of the [Berne Union] other than the country of origin, the rights which their respective laws do now or may hereafter grant to their nationals, as well as the rights specially granted by this Convention.
(2)      The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.’
B.      The Rome I Regulation
4.        Article 1 of the Rome I Regulation, entitled ‘Material scope’, provides, in paragraph 1, that ‘this Regulation shall apply, in situations involving a conflict of laws, to contractual obligations in civil and commercial matters’.
5.        Article 3 of that regulation, entitled ‘Freedom of choice’, provides,
in paragraph 1, that ‘a contract shall be governed by the law chosen by the parties’.
6.        According to Article 4 of the same regulation, entitled ‘Applicable law in the absence of choice’:
‘1.      To the extent that the law applicable to the contract has not been chosen in accordance with Article 3 …, the law governing the contract shall be determined as follows:
…
(b)      a contract for the provision of services shall be governed by the law of the country where the service provider has his habitual residence;
…’
7.        Pursuant to Article 11 of the Rome I
Regulation, entitled ‘Formal validity’:
‘1.      A contract concluded between persons who, or whose agents, are in the same country at the time of its conclusion is formally valid if it satisfies the formal requirements of the law which governs it in substance under this Regulation or of the law of the country where it is concluded.
2.      A contract concluded between persons who, or whose agents, are in different countries at the time of its conclusion is formally valid if it satisfies the formal requirements of the law which governs it in substance under this Regulation, or of the law of either of the countries where either of the parties or their agent is present at the time of conclusion, or of the law of the country where either of the parties had his habitual residence at that time.
…’
8.        Article 12 of that regulation, entitled ‘Scope of the law applicable’ provides, in paragraph 1, that:
‘The law applicable to a contract by virtue of this Regulation shall govern in particular:
(a)      interpretation;
(b)      performance;
(c)      within the limits of the powers conferred on the court by its procedural law, the consequences of a total or partial breach of obligations …;
…
(e)      the consequences of nullity of the contract.’
C.      The Rome II Regulation
9.        Article 1 of the Rome II Regulation, entitled ‘Scope’, provides, in paragraph 1, that:
‘This Regulation shall apply, in situations involving a conflict of laws, to non-contractual obligations in civil and commercial matters. ….’
10.      Article 8 of that regulation, entitled ‘Infringement of intellectual property rights’, states, in paragraph 1, that:
‘The law applicable to a non-contractual obligation arising from an infringement of an intellectual property right shall be the law of the country for which protection is claimed’.
11.      According to Article 15 of the same regulation, entitled ‘Scope of the law applicable’:
‘The law applicable to non-contractual obligations under this Regulation shall govern in particular:
(a)      the basis and extent of liability, including the determination of persons who may be held liable for acts performed by them;
(b)      the grounds for exemption from liability, any limitation of liability and any division of liability;
…
(f)      persons entitled to compensation for damage sustained personally;
…’
D.      The German law on copyright
12.      Paragraph 29 of the Urheberrechtsgesetz (German Law on copyright; ‘the German law on copyright’), entitled ‘Transfer of copyright’, provides:
‘(1)      Copyright is not transferrable, unless it is transferred in the execution of a testamentary disposition or to co-heirs as part of the partition of an estate.
(2)      The granting of rights of use (Paragraph 31), contractual authorisations and agreements based on exploitation rights, as well as contracts on the moral rights of authors as regulated under Paragraph 39 are permitted.’
13.      Paragraph 34 of the German law on copyright, entitled ‘Transfer of rights of use’, provides, in subparagraph 1, that ‘a right of use may only be transferred with the author’s consent …’.
E.      The Polish law on copyright
14.      Article 53 of the Ustawa z dnia 4 lutego 1994 r. o prawie autorskim i prawach pokrewnych (Law
of
4 February 1994 on copyright and related rights; ‘the Polish law on copyright’) provides that ‘for the economic rights of the authors to be assigned, a contract must be concluded in writing under penalty of invalidity’.
III. Facts, national proceedings, the questions referred and the procedure before the Court
15.      BT
markets, from Germany,
accessories for motor vehicles, including floor mats, via
online platforms such as eBay.
To that end, on several occasions between April 2014 and April 2018,
she
repeatedly commissioned a Polish photographer
(‘the photographer’) to produce
photographs of those
floor mats. On each occasion, BT’s husband
transported the mats to the photographer’s studio in Poland. Following each session, the photographer delivered the photographs
on
a USB storage device to BT’s husband. It appears that the parties verbally agreed
that BT
could use those photographs in her online sales offers.
However, no written contract was concluded between them. (5)
16.      Between February and March 2018, another trader
of accessories for motor vehicles, IU,
reproduced those photographs to illustrate her own offers of floor mats on eBay, without seeking prior authorisation from BT.
17.      BT subsequently
brought proceedings
against IU before the competent Landgericht (Regional Court, Germany),
alleging infringement of the copyright subsisting in
the photographs under the German law on copyright and seeking,
inter alia, an injunction prohibiting
the continuation of the alleged infringement.
18.      The Landgericht (Regional Court)
upheld the action. It found, in particular,
that the photographs at issue were protected under the German law on copyright and that the photographer had transferred
to BT
exclusive rights of use. IU had infringed those rights by reproducing
the photographs in her own offers without
BT’s authorisation.
19.      IU lodged an appeal against that judgment before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany). In his appeal, IU contended
that BT lacked standing to bring the action, since the exclusive right to use the photographs
had not been validly transferred to her by the photographer. In
her view, the verbal
agreement
between BT and the photographer was
invalid for failure to comply with the requirement of written form, under Polish law (which, she argued, governs the
formal validity of that
agreement under Article 11 of the Rome I Regulation).
20.      In response, BT maintained that she has standing, as the exclusive rights to use
the photographs, as protected
under the German law on copyright, had been validly transferred to her. In her view, the question of the formal validity of the verbal agreement to that effect
must be distinguished from that of the formal validity of the ‘act of disposal’ of the copyright
in itself.
She submits that under Article 8(1) of the Rome II Regulation,
the second
issue is governed by the law of the country for which protection is claimed (lex loci protectionis), namely German law,
and that law does not impose a requirement of written form for such a transfer.
21.      It is in those circumstances that the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:
‘(1)      Is Article 8(1) of the Rome II Regulation to be interpreted as meaning that the law of the State for which protection is claimed also applies to the question of the (formal) validity of the assignment of exclusive rights to use photographs from the author to the assignee?
(2)      If Question 1 is answered in the negative, is the question of the (formal) validity of the assignment of exclusive rights to use photographs from the author to the assignee governed by the lex loci contractus and, consequently, are Articles 4 and 11 of [the Rome I Regulation] applicable?’
22.      Written observations have been submitted by BT and the European Commission. IU and the Commission were represented at the hearing that took place on 15 January 2026.
IV.    Analysis
23.      As indicated in the introduction, by its two questions, which it is appropriate to examine together, the referring court seeks, in essence, to determine
the law applicable to
the issue of the formal validity of
a contractual
licence
or assignment of copyright, where that validity is contested by a third party in the course of infringement proceedings.
24.      In order to be as illustrative as possible, I shall begin by outlining the substantive issue and conflict of laws in discussion (A),
before turning to
the relevant rules of private international law (B).
A.      The substantive issue and conflict of laws in discussion
25.      It
should be recalled, at the outset, that copyright is a form of ‘intellectual property’ granted by States under
their respective
national laws (laws which, nevertheless, have been significantly harmonised by various international instruments, most notably the Berne Convention
and, within the
EU, several directives). (6)
26.      In essence,
copyright vests in
the creator (or ‘author’) of an intellectual creation (or ‘work’),
under certain conditions, (7) a set of exclusive economic and moral
rights (8) over its use, enforceable erga omnes.
However, that
legal monopoly is
territorially limited: it exists only within the jurisdiction of the State that grants it (something generally referred to as the ‘principle of territoriality’ of copyright). (9)
27.      In the main proceedings, it does not appear to be disputed that the photographer, as ‘author’ of the photographs at issue, enjoys copyright protection over those ‘works’, inter alia, under German law. (10)
28.      Authors
may
exploit their copyright in various ways. In particular, they may
grant licences to third parties, thereby authorising acts which would otherwise infringe their exclusive rights. Alternatively, authors may
assign their copyright
to third parties, thus transferring the ownership
over the right itself, usually
against remuneration. Such voluntary copyright licences
or assignments may be embodied either in stand-alone contracts or in clauses forming part of broader contractual arrangements, such as service, publishing or distribution contracts. (11)
29.      In the present case, it likewise seems undisputed that the photographer intended to transfer to BT the copyright subsisting in the photographs
under German law. Although the referring court provides only limited detail, it would appear that such transfer formed part of the series of verbal contracts for
photographic services concluded between those two parties. Under those contracts, the photographer undertook not only to produce those photographs, but also to deliver them to BT. The transfer of the copyright in question was an ancillary aspect of the latter obligation. Indeed, without some form of a licence or assignment of that copyright, BT could not have exploited the photographs
(by
publishing them
in sale offers on eBay)
legally in Germany.
30.      The precise legal characterisation of that copyright arrangement
remains uncertain. While the referring court indicates that the photographer
assigned the copyright in question to BT, the latter
maintains that he granted her, in fact, an
exclusive licence over that copyright. The second characterisation appears more in line with the German law on copyright, which prohibits authors to assign their (German) copyright per se, but allows them to transfer the ‘rights of use’ over the ‘work’ concerned through such an exclusive licence.
Nevertheless, a licence of that kind authorises the licensee
to use the ‘work’ to the exclusion of
all others, including the author, and thus produces effects functionally equivalent to those of an assignment. (12) Accordingly, I will not dwell on that distinction (which,
in any event, is not decisive for the purposes of the present analysis).
31.      That being clarified, it is common for national legal systems
to impose certain
restrictions on
contractual licensing and/or assignment of copyright. In particular, they frequently
set out certain requirements as to form, such as the requirement that the licence be granted, or the assignment done, through a written document. (13)
32.      Difficulties arise, however, where such transactions take place in a cross-border context. In such situations, the laws of the various States connected to the transaction may impose divergent or even conflicting requirements.
That is precisely the case here.
The transaction at issue is connected, in particular, to Poland (by virtue of the photographer’s habitual residence and the place of origin of the ‘works’ concerned)
and to Germany (by virtue of BT’s habitual residence and the place of exploitation of the copyright). While Polish law requires a written form, German law, according to the referring court, does not.
33.      That conflict of laws lies at the heart of the infringement proceedings brought by BT, pending before the referring court. In those proceedings, IU contends that
the
exclusive contractual licence over the copyright, on which BT’s claim rests, is formally invalid under Polish law (since there was
no written agreement between her and the photographer on the matter). In the absence of a valid licence or assignment of that copyright, in IU’s view, BT had no standing to initiate those proceedings in the first place.
By contrast,
BT relies on German law to assert the validity of that licence and, accordingly, her entitlement to enforce the copyright
in question.
34.      In those circumstances, the decisive
question is which of the
competing
national laws
the referring court should apply to determine whether the exclusive contractual licence at issue is formally valid and, by extension, whether BT has standing to bring infringement proceedings against a third party such as IU. That question falls to be resolved by reference to the relevant
conflict-of-law rules, to which I shall now turn.
B.      The law applicable to the formal validity of a contractual licence or assignment of copyright under the relevant conflict-of-law rules
35.      Where infringement proceedings are brought before a court of a Member State by an alleged beneficiary of a copyright licence or assignment (such as BT) against a third party (such as IU), there is not one, single conflict-of-law
rule, which designates a given substantive law, to be followed with respect to all the issues that may be raised in such proceedings.
On the contrary, different conflict-of-law rules, associated
with various categories known in private law, and designating (potentially) distinct substantive laws, may be relevant depending on the nature of the specific issue(s)
concerned (1). (14) Therefore, to determine the rules
that are relevant with respect to the formal validity of a contractual licence or assignment of copyright and, ultimately, the applicable law, it is crucial to
properly
characterise that issue, that is, to determine in which category it adequately fits (2).
1.      The conflict-of-law rules ‘in competition’
36.      As mentioned in the previous point, in infringement proceedings before a court of a Member State, different conflict-of-law rules
are relevant with respect to issues relating to non-contractual liability (a), to the licencing or assignment contract (b), and to the copyright as such (c).
(a)    Non-contractual liability
37.      First, the conflict-of-law rules laid down in the Rome II Regulation are relevant (15) with respect to the issues (regarded as) relating to the potential non-contractual liability (or, to use the terms of that regulation, ‘non-contractual obligation’) of the alleged infringer towards the claimant. (16) Pursuant to Article 15 of that
regulation, the law applicable to the ‘non-contractual obligation’ concerned governs such ‘non-contractual liability’ issues.
38.      Under Article 8 of the Rome II
Regulation, the law applicable to a
‘non contractual obligation’ arising from an infringement of an intellectual property right, including copyright, (17) is the ‘law of the country for which protection is claimed’ (or lex loci protectionis). (18)
39.      Accordingly,
if
the formal validity of a contractual licence or assignment of copyright were to be regarded as relating to ‘non contractual liability’, German law would govern that issue
in the main proceedings, under Article 8 of the Rome II Regulation, read together with Article 15 thereof, since BT claims copyright protection for Germany.
(b)    Contract
40.      Secondly,
the conflict-of-law rules laid down in the Rome I Regulation are relevant (19) with respect to the issues (regarded as) relating to the ‘contractual obligations’ arising from a licence or assignment contract (or clause), binding the parties. (20) Pursuant to Article 12 of the Rome I Regulation, the law applicable to the contract
concerned (the
‘lex contractus’) governs such
‘contractual’
issues.
41.      Under Article 3(1) of the Rome I Regulation, the law applicable to a contract (including for licensing or assignment of
copyright)
is the  law chosen by the parties. (21)
42.      In the absence of such a choice (which appears to be the case here (22)), Article 4 of the Rome I Regulation lays down objective rules to determine the law applicable to the contract concerned. Those rules are rather complex. For the present purposes, suffice to explain that Article 4(1) contains a closed list of connecting factors dedicated to certain categories of contracts. Although contracts relating to intellectual property rights do not feature as such therein, (23) Article 4(1)(b) provides such a connecting factor with respect to ‘contract[s] for the provision of services’, a category which obviously includes agreements such as the ones concluded between the photographer and BT. (24)
43.      Pursuant to that provision, the law applicable to such a contract is ‘the law of the country where the service provider has his habitual residence’. In the main proceedings, it appears to be common ground that the ‘service provider’, namely the photographer, has his ‘habitual residence’ in Poland. (25) Accordingly, Polish law
is the relevant lex contractus. (26)
44.      It should, however, be added
that, in respect of certain ‘contractual issues’, the Rome I Regulation does not merely designate the lex contractus, deferring the answer
to the latter, but lays down
quasi-substantive (or ‘result oriented’) rules. Article 11 of that instrument includes such rules concerning the ‘formal validity’ of a contract. Those rules differ depending on whether or not the parties (or their agents) were in the same country at the time of conclusion of the contract concerned. Here, the referring court seems to assume that BT (or rather, her ‘agent’, that is, her husband) and the photographer were in the same country, namely Poland, at the time of conclusion of their agreements (and, thus, that the contracts were concluded there).
Since that is a factual question, I will proceed on the basis of that assumption. (27) In such a scenario, Article 11(1) provides that the contract is formally valid (hence the ‘result-oriented’ nature of the rule) if it satisfies the formal requirements of either (1) the lex contractus or (ii) the law of the country where the contract was concluded (or lex loci contractus). Here, for the reasons explained above, that should be Polish law on both accounts.
45.      Accordingly, if the formal validity of a contractual licence or assignment of copyright were to be regarded as a ‘contractual’ issue,
Polish law would govern the matter in the main proceedings, under Articles 4 and 11 of the Rome I Regulation.
(c)    Copyright as such
46.      Thirdly, in the absence of relevant conflict-of-law
rules
at EU level (28) or in the Berne Convention, (29) the national conflict-of-law rules of the Member States are relevant with respect to matters (regarded as) concerning copyright as such, that is to say,
the intrinsic
characteristics
of
that
‘intellectual property’ right. (30)
47.      There are some divergences between those national conflict-of-law rules. Nevertheless, given the nature of copyright
(a monopolistic protection granted by a State, by operation of its own law, for its territory only) those rules usually provide,
like the German conflict-of-law rules here, that
such ‘proprietary’ matters (31) are governed (also) by the lex loci protectionis. (32)
48.      Accordingly, if the issue of the formal validity of a contractual licence or assignment of copyright were to be regarded as relating to the copyright as such, German law would govern that issue in the main proceedings, pursuant to the German conflict-of-law rules, since BT claims copyright protection for Germany.
2.      The proper characterisation of the issue of the formal validity of a contractual licence or assignment of copyright
49.      Given that diversity of conflict-of-law rules, the determination of the rules which are relevant with respect to the formal validity of a contractual licence or assignment of copyright (and, ultimately, of whether German or Polish law governs the matter in the main proceedings) depends on the proper characterisation of that issue, that is,
whether it should be regarded as relating to ‘non-contractual liability’, ‘contract’, or ‘copyright as such’.
An incorrect characterisation would entail a misconstruction of those rules, and the application of an inapposite substantive law. (33)
50.      For the purposes of that classification, the scope of the categories of ‘non-contractual liability’ and ‘contract’ must be defined autonomously, in the light of the objectives pursued by the Rome I and Rome II Regulations, in particular the need to ensure legal certainty as to the law applicable and the ‘predictability of the outcome of litigation’. (34) Were that not the case, the classification of a given issue (and, with it, the potential application of those instruments)
could vary depending on the forum seised. (35) Furthermore, the scope of the residual category, namely that relating to copyright as such, must be delineated correspondingly within national conflict-of-law systems. Indeed, those various categories should not overlap. If a single issue were to fall simultaneously within two categories, the result could be the concurrent designation of different, potentially conflicting, substantive laws. Such an outcome would undermine the very function of conflict-of-law rules and deprive the Rome I and Rome II Regulations of their effet utile.
51.      In what follows, I shall explain, first, why the formal validity of a contractual licence or assignment of copyright
does not relate to ‘non contractual liability’ (a). I shall then set out the reasons why, notwithstanding certain difficulties, that issue should not be classified as ‘proprietary’, but rather as ‘contractual’ (b).
(a)    The formal validity of a contractual licence or assignment of copyright does not relate to ‘non-contractual liability’
52.      One thing is clear. As the Commission observes, the issue of the formal validity of a contractual licence or assignment of copyright,
even where
it
arises in the context of infringement proceedings,
does not relate to ‘non-contractual liability’. Accordingly, the conflict-of-law rules laid down in the Rome II Regulation are irrelevant.
53.      Indeed,
at the level of substance, there is no link between that issue and the (alleged) liability of the (alleged) infringer.
Obviously, without a valid
contractual licence or assignment of the copyright concerned, BT may not
be entitled to bring infringement proceedings in the first place. (36) However, the issue of the validity of that contractual licence or assignment
is preliminary to (and, thus, must logically be resolved by the court seised before) any discussion on whether the defendant infringed the copyright. (37) The absence of substantive link between that issue and liability is further illustrated by the fact that the validity of a contractual licence or assignment may arise in entirely different procedural contexts (such as proceedings having as their object the determination of ownership, the validity of a contract for copyright licence or assignment, and so on).
54.      Against that background, the argument of BT
that that validity issue should nevertheless be subsumed under the ‘non-contractual liability’ category when it arises in infringement proceedings, because
it would be simpler for the court
seised to determine the whole of the proceedings under the single substantive law designated by Article 8(1) of the Rome II Regulation,
is misguided. In accordance with
the general principles underpinning characterisation in conflicts of law, summarised in point 35 above, the conflict-of-law rules and, by extension, the law governing a given issue
depend on the nature of that issue, not the procedural context in which it is raised. The contrary approach
would entail the risk that, for instance, a given contractual licence or assignment be considered valid, under one set of substantive rules, when contested in infringement proceedings, but invalid, under another set of substantive rules, in the context of
proceedings for determination of ownership (or counterclaim for invalidity of the assignment, and so on), and vice-versa. Such an outcome would be incompatible with the objectives of legal certainty and predictability underpinning the Rome I
and Rome II Regulations. (38)
(b)    The formal validity of a contractual licence or assignment of copyright is not a ‘proprietary’, but ‘contractual’ issue
55.      It remains to be determined whether the issue of the formal validity of a contractual licence or assignment falls to be characterised as ‘contractual’ or ‘proprietary’ in nature. That question calls for a more substantial explanation, not least because it has given rise to divergent views among the courts of the Member States
and in the academic literature.
56.      As a general rule, with respect to such contractual arrangements related to copyright, a clear distinction must always be drawn between ‘proprietary’ and ‘contractual’ issues. Matters concerning the copyright concerned ‘as such’ should always be reserved for the law governing that right, as determined under the national conflict-of-law rules (typically, the lex loci protectionis) irrespective of the law applicable to the contract under the Rome I Regulation. Such a distributive classification is justified, beyond the reasons indicated in point 49 above, by policy considerations: while the parties should be free, pursuant to that regulation, to choose the law applicable to their ‘contractual obligations’, they should not, by contrast, be able to do so with respect to the intrinsic characteristics
of the copyright itself. (39)
57.      The ‘proprietary’ category undoubtedly includes the primary issue of the transferability of the copyright concerned – that is, whether that right may be transferred
from its initial owner (the author) to another person,
in particular by means
of a contract.  Indeed, transferability  (and the extent thereof) constitutes an intrinsic
characteristic of the right concerned.
Accordingly, a copyright licence may only be granted, or assignment occur, through a contract if the law governing the right concerned permits it, irrespective of the law applicable to that contract. (40)
58.      By contrast, where (and to the extent that)
the law governing
a copyright allows its transfer by means of a contract (which is the case here since, while German law excludes the assignment of copyright, it does allow exclusive licences
such as the present one), the subsequent issue of whether a
contractual licence or assignment
of that copyright needs to comply with certain requirements as to form (including, here, the requirement of a written document) relates, in substance,
not to the right ‘as such’, but to the underlying contract. (41)
59.      Indeed, those requirements do not derive from the nature of
copyright. Rather, they are imposed in order to
protect the author, who is often regarded as the weaker party in contracts related to copyright (as opposed to intermediaries such as publishers). Specifically, those requirements are designed to ensure the informed consent of the author to any obligation,
arising from such a contract, to licence or assign his/her copyright, and transparency as to the precise content of any such obligation. (42)
60.      It is therefore unsurprising that such requirements are frequently imposed under penalty of
nullity of the licence or assignment contract (or contractual clause) in question (as is the case, for instance, under Article 53 of the Polish law on copyright). Where that is the case, the requirements in question plainly concern the ‘formal validity’ of that contract (or clause) within the meaning of Article 11 of the Rome I Regulation. (43) Even where such requirements are framed in evidentiary terms (for example, where a written document is required as the sole admissible means of proof of such a contractual licence or assignment)
their practical effect is comparable: licences or assignments which cannot be established cannot be enforced. (44) Accordingly, the nature of the issue is not fundamentally different, and the rules of the Rome I Regulation still apply (specifically Article 18(2), which
refers to Article 11). (45) In sum, whatever the precise nature of such requirements (formal or evidentiary) in national law, they inherently relate to
(the validity or proof of) the ‘contractual obligations’ binding the parties.
61.      That such requirements as to form relate not to
copyright ‘as such’, but to the contract through which the right is to be licensed or assigned, is further supported by the fact that similar requirements are encountered in national legal systems with respect to
contracts and clauses
over various subject matters (for instance, with respect to non-competition clauses in employment contracts, international choice-of-court agreements, and so on), (46) typically for analogous protective purposes. The fact that, in the present case, such requirements concern
contracts relating to copyright does not alter the inherently ‘contractual’ nature of the underlying issue. (47)
62.      That interpretation is not called into question by the line of argument advanced by
BT and the Commission. In the view of those interested parties, one should distinguish (i) the formal validity of the contract for licence or assignment from (ii) the formal validity of the ‘act of transfer’ of the copyright.(48) While the former is, indeed, a ‘contractual matter’ (since it only concerns the ‘contractual obligations’ binding inter partes), the latter is a ‘proprietary matter’ instead (because the transfer of the copyright in itself affects third parties). Furthermore, since the main proceedings oppose not the parties to the contract, but one of those parties
to a third party, only the latter aspect is relevant. Indeed, the real issue is whether BT was transferred ownership over the copyright and, thus, can enforce that right against such a third party.
Accordingly, the formal requirements laid down, in that regard, in the
lex loci protectionis (here, German law) should apply. (49)
63.      That line of argument rests, in my view, on a confusion as to the nature of the issue in discussion. Some explanation is called for to understand the fallacy.
64.      The distinction suggested by BT and the Commission between ‘the formal validity of the contract’ and ‘the formal validity of the act of transfer’, which is heavily influenced by German private law (50) (and which, at first sight, may be confusing for lawyers of a different tradition), refers, in my understanding, to what is usually understood, in other legal systems, as the distinction between (i) the validity of a contractual licence or assignment
of intellectual property and (ii) the opposability to third parties of that licence or assignment.
65.      Specifically, once a valid assignment or exclusive licensing contract over an intellectual property right has been concluded between two persons, a separate question may arise as to whether the assignee or licensee can invoke
the transfer of that right
(or, stated differently, the consequences of that contract) against third parties, including in infringement proceedings (like BT did with respect to IU). In certain legal systems, that is only possible once certain formalities have been fulfilled, typically the
registration
of the licence or assignment concerned
in a dedicated public register. At this stage, I wish to underline that, besides the fact that they are usually not imposed with respect to contractual transfers of copyright, (51) the formalities in question are fundamentally different from the requirements as to form discussed in the present case. Those formalities are, in essence, administrative steps, exterior
to the contract,
involving public authorities, which are imposed not to protect (one of) the contractual parties, but to ensure publicity, information and transparency and, ultimately, legal certainty with respect to the status of intellectual property, in the interest of the community. Obviously, that particular issue of opposability to third parties (including the potential application of those formalities)
is an inherently ‘proprietary’ matter. It concerns the intrinsic erga omnes characteristic of the intellectual property right concerned. (52)
66.      However, the question raised in the main proceedings is not linked, in substance, to that issue of opposability to third parties. IU does not contest that an exclusive contractual licence over copyright may, under German law, be invoked against third parties, including in infringement proceedings, without any formalities being required in that respect. Rather, I recall, IU contests the very existence of a valid contractual licence between the photographer and BT (without which BT would have
no standing), on account of the alleged failure to comply with the requirements as to form discussed above. For the reasons given above, that validity issue, and those requirements, inherently relate to the contracts between BT and the photographer. (53) Obviously, if there is no valid licensing or assignment contract (or clause) between the parties, there cannot possibly be any
consequential transfer of the copyright to
invoke against a third party. Nevertheless, that validity issue is preliminary to any discussion on opposability to third parties. The fact that that issue happens to be raised as a defence by such a third party attempting to escape infringement proceedings cannot change its
‘contractual’ character. Again, the characterisation of a legal issue depends on its objective nature, not on the identity of the party invoking it. (54)
67.      The interpretation
that I suggest, according to which the issue of the formal validity of a contractual licence or assignment of copyright should be characterised as ‘contractual’ and, hence, falls under the conflict-of-law rules laid down in the Rome I Regulation, in particular Article 11 thereof, is consistent with the objective of legal certainty and predictability pursued by that regulation.
68.      Indeed, that interpretation facilitates cross-border transactions related to copyright. Under Article 11, a contractual licence or assignment of copyright will normally (55) be considered valid and effective if it satisfies the requirements of either the lex contractus or the lex loci contractus. That gives the parties legal certainty as to the (formal) validity and effectiveness of their agreements, particularly where those concern several national copyrights,
governed by as many national laws: the parties do not have to fear the (partial or complete) ineffectiveness of their transaction for failure to meet the various requirements that those national laws may contain.
69.      By contrast, the approach advocated by BT and the Commission would mean that the parties would need to comply both
with the requirements as to form of the lex contractus and/or the lex loci contractus (as provided under Article 11 of the Rome I Regulation) and with those laid down in the law governing the right as such (or laws, should the contract concern several national copyrights). Such an approach would increase the risk of ineffectiveness of contracts relating to copyright on the ground of a formal defect, thus depriving Article 11 of much of its effet utile with respect to that category of contracts. (56)
70.      Finally, I understand that the characterisation of the issue discussed as ‘proprietary’ is sometimes justified, in reality, not by the objective nature of that issue, but by the concern that parties might otherwise be able, under Article 11 of the Rome I Regulation, to circumvent the requirements as to form laid down in the law governing the copyright (again, typically the
lex loci protectionis),
by choosing, as the law governing their contract, a more permissive law, whereas those requirements are often regarded as particularly important by States, given the objective of protection of the author that they pursue.
71.      However, that concern is not specific to contracts relating to copyright. It arises anytime
national laws impose
requirements as to form with respect to certain contracts or clauses. In that respect, I must observe that the EU legislature, well aware of the importance that national legislatures may attach to the requirements in question,
chose to favour, under Article 11 of the Rome I Regulation, the formal validity of contracts over the strict application of those requirements, in order to ensure legal certainty for the parties, in line with the general objectives of the Rome I Regulation. (57)
72.      In the absence of any specific provision to the contrary, I fail to see why Article 11 of the Rome I Regulation, and the policy choice that it embodies, should be set aside with respect to contracts relating to intellectual property rights, by artificially (re)characterising
the requirements discussed in this Opinion as a ‘proprietary’ issue. Whether it would be desirable, as a matter of policy, for the formal requirements
laid down in the lex loci protectionis
always to apply under penalty of invalidity of the underlying contract is for the EU legislature to assess. Should it consider such an approach warranted, it could amend Article 11 accordingly, for example by introducing specific rules tailored to contracts relating to intellectual property rights. (58)
73.      In any event, the Rome I Regulation, in its current state, already incorporates mechanisms to accommodate those considerations. In particular, Article 9 of that regulation leaves some discretion to the court seised of a dispute to apply, notwithstanding the law(s) governing a contract under the normal rules of that regulation, the ‘overriding mandatory provisions’ (or lois de police) laid down in its own law (Article 9(2)) or in the law of the ‘country where the obligations arising out of the contract have to be or have been performed’ (Article 9(3)).
74.      Thus, to the extent that the requirements as to form
laid down in the law governing the copyright are regarded by the
country concerned as sufficiently ‘crucial’ to qualify as ‘overriding mandatory provisions’, (59) and provided that law coincides with (i) the law of the forum or (ii) the law of the country where the contractual obligations are to be performed, (60) those rules may be enforced (and a contract considered invalid on formal grounds), irrespective of the rules laid down in Article 11 of the Rome I Regulation. (61) That assessment, however, must necessarily be carried out on a case-by-case basis. (62)
75.      In the main proceedings, since the issue of formal validity of the exclusive contractual licence invoked by BT is ‘contractual’ in nature, the conflict-of-law rules laid down in the Rome I Regulation apply. Under Article 11 thereof, the underlying contracts may be formally invalid, as they do not comply with the requirements as to form laid down in Polish law. Accordingly, in the absence of a valid licence or assignment of copyright in her favour, BT may have no standing before the referring court, as IU submits. Nevertheless, that would be for that court to verify. (63)
V.      Conclusion
76.      In the light of all the foregoing considerations, I propose that the Court of Justice answer the questions referred by the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany) as follows:
Article 1(1), Article 10, Article 11 and Article 18(2) of Regulation (EC)
No 593/2008 of the European Parliament and of the Council of 17 June 2008 on the law applicable to contractual obligations  must be interpreted as meaning that, in a situation involving a conflict of laws, the issue of the potential requirements as to form with which a contractual licence or assignment of copyright needs to comply in order to be regarded as valid or evidenced is governed by the substantive law(s) designated by the rules laid down in that regulation.
1      Original language: English.
i      The name of the present case is a fictitious name. It does not correspond to the real name of any party to the proceedings.
2      See, for more details, points 25 to 34 below.
3      Regulation of the European Parliament and of the Council of 17 June 2008 (OJ 2008 L 177, p. 6).
4      Regulation of the European Parliament and of the Council of 11 July 2007 (OJ 2007 L 199, p. 40).
5      Or, at least, not at the time (see footnote 63 below). Nor was any agreement ever concluded on the law applicable to the commissioning of the photographer or
the transfer of the
copyright.
6      See, in particular, Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10).
7      In particular, a ‘work’ is only protected if it is ‘original’ (see, to that effect, Article 2(3) and Article 14bis(1) of the Berne Convention and judgment of 16 July 2009, Infopaq International (C‑5/08, EU:C:2009:465, paragraph 37).
8      See, on the one hand, Articles 9 to 14ter of the Berne Convention and Articles 2 to 4 of the Directive 2001/29 and, on the other hand, Article 6bis of the Berne Convention.
9      See Article 5(2) of the Berne Convention, and judgment of 22 January 2015, Hejduk (C‑441/13, EU:C:2015:28, paragraph 22 and the case-law cited).
10      And probably in other States, under their respective laws. Nevertheless, those other national copyrights are not claimed by BT before the referring court. Therefore, they are irrelevant in the main proceedings.
11      See, further, Guibault, L., Hugenholtz, P.B., van Eechoud, M.M.M., van Gompel, S.J., and
Helberger, N., The Recasting of Copyright & Related Rights for the Knowledge Economy, Institute for Information Law, University of Amsterdam, The Netherlands, 2006, §§ 3.2.1 and 3.2.2; and
Fawcett, J.J., and Torremans, P., Intellectual Property and Private International Law, Oxford Private International Law Series, 3rd ed.,
2024, §§ 14.01
and
14.02, 14.14 and 14.107
and
14.108.
12      Compare Paragraph 29(1) and (2) of the German law on copyright. See, further, Guibault, L., Hugenholtz, P.B.,
et al. footnote 11, op. cit., § 3.2.2.
13      In addition, those laws sometimes require that each related clause be signed by the author, that the rights concerned, together with the scope and duration of the licence or assignment, be clearly indicated therein, and so on. See, for instance, in France, Articles L-131-2 and L-131-3 of the code
de la propriété intellectuelle (Intellectual Property Code); in the UK, Copyright, Designs and Patents Act 1988, Section 90(3). See, generally, for a comparative analysis of the laws of States in that regard, Guibault, L., Hugenholtz, P.B.,
et al., footnote 11, op. cit.; and Kono, T. (ed.), Intellectual Property and Private International Law: Comparative Perspectives, Hart Publishing, Oxford, 2012.
14      See, to that effect, judgments of 21 January 2016, ERGO Insurance and Gjensidige Baltic (C‑359/14 and C‑475/14, EU:C:2016:40, paragraphs 47 to 62); and of 28 July 2016, Verein für Konsumenteninformation (C‑191/15, EU:C:2016:612, paragraphs 35 to 60). See also Opinion of Advocate General Saugmandsgaard Øe in Verein für Konsumenteninformation (C‑191/15, EU:C:2016:388, point 51); Fawcett, J.J., and Torremans, P., footnote 11,
op. cit., §§ 14.15 to 14.17, and
15.09, 15.32 to 15.35; and Plender, R., and Wilderspin, M., The European Private International Law of Obligations, Sweet & Maxwell, 4th edition, London, 2015, §§ 2-069 to 2-075, and 22-041 to 22-047. A necessary implication is that a court often has to apply different substantive laws to a single set of proceedings.
15      Indeed, the ‘non-contractual obligations’ (see, for that concept,
judgment of 21 January 2016, ERGO Insurance and Gjensidige Baltic,  C‑359/14 and C‑475/14, EU:C:2016:40, paragraph 46) arising from infringements of intellectual property rights come within the scope of ‘civil and commercial matters’ within the meaning of Article 1(1) of the Rome II Regulation (see, by analogy, judgment of 8 September 2022, IRnova,
C‑399/21, EU:C:2022:648, paragraph 30). Furthermore, those ‘obligations’ are not excluded from the scope of that regulation under Article 1(2).
16      See, to that effect, Article 1(1) and Article 15 of the Rome II Regulation. The latter provision indicates that that category
include, in particular,
issues such as the basis and extent of liability, the grounds for exemption from liability,
the existence, the nature and the assessment of damage or the remedy claimed (and so on).
17      See, in that respect, recital 26 of the Rome II Regulation.
18      See recital 26 of the Rome II Regulation.
Such a conflict-of-law rule is consistent with Article 5(2) of the Berne Convention, which provides, in relevant parts, that ‘the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed’.
19      Indeed, the ‘contractual obligations’ (see, for that concept, judgment of 21 January 2016, ERGO Insurance and Gjensidige Baltic, C‑359/14 and C‑475/14, EU:C:2016:40, paragraph 44) arising from a copyright licence or assignment contract come within the scope of ‘civil and commercial matters’ within the meaning of Article 1(1) of the Rome I Regulation (see, by analogy, judgment of 8 September 2022, IRnova,
C‑399/21, EU:C:2022:648, paragraph 30).
Furthermore, those ‘contractual obligations’ are not excluded from the scope of that regulation under Article 1(2).
20      See, to that effect, Article (1) and Articles 10 to 12 of the Rome I Regulation. It follows notably from Articles 10 to 12 thereof that that category includes, in particular, issues
such as the validity (both material and formal) of those ‘obligations’, their interpretation, performance, the consequences of a breach thereof (and so on).
21      As the matter has been touched upon by the Court during the hearing, I wish to underline that that possibility of choice is, in no way, contrary to the Berne Convention. Besides the fact that the Berne Convention does not contain rules
with respect to contracts related to copyright, the ‘protection’ of the right, as contemplated in Article 5(2) of that convention, is not affected where
that right is the subject of a contract governed, at the choice of the parties, by a law different than the lex loci protectionis
(see, further, Fawcett, J.J. and Torremans, P., footnote 11,
op. cit., § 14.41; and Raynard, J., Droit d’auteur et conflits de loi : essai sur la nature juridique du droit d’auteur, Litec, Paris, 1990, pp. 526 and 527).
22      See footnote 5 above.
23      Such a dedicated rule featured in Article 4(1)(f) of the
proposal of 15 December 2005 for a Regulation of the European Parliament and the Council on the law applicable to contractual obligations (Rome I) (COM/2005/0650 final). However, that rule was not retained in the final version of the Regulation, probably because contracts relating to intellectual property rights are too diverse in practice (see point 28 above) to be reasonably subject to a single connecting factor
(see, to that effect, REPORT on the proposal for a regulation of the European Parliament and of the Council on the law applicable to contractual obligations (Rome I), 21.11.2007 – (COM(2005)0650 – C6‑0441/2005 – 2005/0261(COD)), Committee on Legal Affairs, Amendment 43).
24      Specifically, pursuant to the Court’s case-law, the concept of ‘contract for the provision of services’ within the meaning of
Article 4(1)(b) of the Rome I Regulation
covers any agreement under which a person is to
‘carry out a particular activity’ for another
‘in return for remuneration’ (see, inter alia, judgment of 3 October 2019, Verein für Konsumenteninformation (C‑272/18, EU:C:2019:827, paragraph 46 and the case-law cited). Clearly, the taking of photographs is ‘a particular activity’, carried out by the photographer for BT ‘in return for remuneration’.
25      In that regard, Article 19(1) of the Rome I Regulation provides, in the relevant part, that ‘the habitual residence of a natural person acting in the course of his business activity shall be his principal place of business’. Here, presumably, that would be the studio in Poland mentioned above.
26      It is understood that Article 4(3) of the Rome I Regulation provides an ‘escape clause’ pursuant to which ‘where it is clear from all the circumstances of the case that the contract is manifestly more closely connected with a country other than that indicated in paragraphs 1 …, the law of that other country shall apply’. Nevertheless, I see no reason for that clause to be used in the main proceedings. Indeed, in the light of the circumstances of the case, the contracts at issue are not ‘manifestly more closely connected’ with, for instance, Germany than Poland.
27      See, nevertheless, footnote 63 below.
28      In particular, matters concerning copyright as such are outside the scope of the Rome I and Rome II Regulations (see, to that effect, Report on the Convention on the law applicable to contractual obligations by Mario Giuliano, Professor, University of Milan, and Paul Lagarde, Professor, University of Paris I (OJ 1980 C 282, p. 1; ‘the Giuliano-Lagarde Report’), p. 10, and Fawcett, J.J., and Torremans, P., footnote 11,
op. cit.,
§ 14.10). Furthermore, the EU directives on copyright, mentioned in point 25 above, do not provide conflict-of-law rules in that respect.
29      See, to that effect, judgment of 30 June 2005, Tod’s and Tod’s France (C‑28/04, EU:C:2005:418, paragraph 32).
30      It is generally accepted that that category includes matters such as the
existence, creation, validity, nature and scope of the prerogatives granted and their exceptions, duration (and so on).
See, inter alia, Fawcett, J.J. and Torremans, P., footnote 11,
op. cit.,
§§ 13.46 to 13.74; Plender, R., and Wilderspin, M., op. cit., footnote 14, §§ 22-001 to 22-047; Basedow, J., ‘Article 3.102: Lex protectionis’, in Basedow, J.,
et al. (eds), Conflict of Laws in intellectual Property – The CLIP Principles and Commentary – European Max Planck Group on Conflict of Laws in Intellectual Property, Oxford University Press, 2013, § 3:12.C07.
31      As the issue was touched upon by the Court during the hearing, I must specify that there is debate regarding certain matters concerning copyright ‘as such’, in particular the issue of initial ownership (that is,
who is to be regarded as the ‘author’ of a work). Certain
national conflict-of-law
rules, decisions and/or commentators leave that specific matter to the lex loci protectionis, while others refer to the law of the country of origin of the work in question (lex originis). The country of origin is defined, in Article 5(4) of the Berne Convention, as referring, in essence, to the country of first publication of the work. In the case in the main proceedings, the lex originis would be polish law because the photographs
have been created in Poland. Those divergences
result from the ambiguity of the Berne Convention on the issue of initial ownership, and there are arguments supporting both solutions (see, further, Fawcett, J.J., and Torremans, P., footnote 11,
op. cit., §§ 13.75 to 13.91). Nevertheless, I will leave that debate aside.
Indeed, there is no need to take a position on it in the present case, as it does not concern the issue of initial ownership.
32      Indeed, where someone claims intellectual property protection in a State, the law of that State should logically determine whether that protection actually exists, the
nature
and scope of that monopoly, its
duration, and so on. Such a conflict-of-law rule
is, here again, consistent with Article 5(2) of the Berne Convention, which provides that ‘the extent of protection ...
shall be governed exclusively by the laws of the country where protection is claimed’.
The application of the lex loci protectionis is sometimes provided in statutes dedicated to private international law. Other times, national courts derive that application from Article 5(2) of the Berne Convention directly. See, further, Fawcett, J.J. and Torremans, P., footnote 11,
op. cit., §§ 12.22 to 12.28, 13.13 to 13.45 and 14.06 to 14.09; and
Kono, T. (ed.), footnote 13,
op. cit.
33      Admittedly, here, since the conflict-of-law rules associated with the ‘non-contractual liability’ and ‘proprietary’ categories designate, both, the lex loci protectionis, distinguishing between the two is less important in practice. Nevertheless, it is still relevant at the level of principles.
34      See recitals 6 and 16 of the Rome I Regulation and recitals 6 and 14 of the Rome II Regulation.
35      Indeed, the Member States may have, in their own private law, different views as to the scope of the categories in question.
36      See, further, point 66 below.
37      See, by analogy, my first Opinion in BSH Hausgeräte (C‑339/22, EU:C:2024:159, point 44). See also Fawcett, J.J., and Torremans, P., footnote 11,
op. cit., §§ 13.74, 15.32 to 15.35; Plender, R., and Wilderspin, M., footnote 14,
op. cit., §§ 22-041 to 22-047; and Dickinson, A., The Rome II Regulation – The Law Applicable to Non-Contractual Obligations, Oxford, 2010, §§ 3.88 to 3.90, 8.18.
38      See Fawcett, J.J. and Torremans, P., footnote 11,
op. cit.,
§ 13.74. In the light of the questions asked by the Court
during the hearing, I wish to underline that, given the explanation given above, the reference to the ‘basis … of liability’ in Article 15(a) of the Rome II Regulation cannot possibly be
interpreted as covering the issue of the validity of the contractual licence or assignment on which the claimant relies. That reference is designed to cover the ‘intrinsic factors of liability’, such as the issues of ‘the nature of liability (strict or fault-based); the definition of fault, including the question whether an omission can constitute a fault; the causal link between the event giving rise to the damage and the damage; the persons potentially liable’ (and so on) (see proposal for a Regulation of the European Parliament and of the Council on the Law applicable to non-contractual obligations (COM(2003) 427 final, p. 13), explanatory memorandum, p. 23). Again, that validity issue has nothing to do with those ‘factors’. Similarly, the reference, in Article 15(f) of the Rome II Regulation, to ‘persons entitled to compensation for damage sustained personally’ cannot possibly be understood as covering that issue either. This arguably obscure reference concerns the issue of
‘whether a person other than the “direct victim” can obtain compensation for damage sustained on a “knock-on” basis, following damage sustained by the victim … such … as in the loss sustained by the children or spouse of a deceased person’ (ibid.,
p. 24; see also, in that respect, judgment of 10 December 2015, Lazar (C‑350/14, EU:C:2015:802, paragraphs 25 to 28)). Such an issue is inherently distinct from the issue of whether the claimant is the beneficiary of a valid licence or assignment.
39      Indeed, as explained in footnote 32 above, those intrinsic characteristics can only be governed by the national law which confers the protection, in accordance with Article 5(2) of the Berne Convention (or, with respect to initial ownership, maybe by the lex originis).
40      See Lucas, A., ‘Droit international privé et droit d’auteur’, Les Cahiers de propriété intellectuelle, Vol. 22, No 3, pp. 761 to 775, especially
pp. 769
and
770; Fawcett, J.J. and Torremans, P., footnote 11, op. cit., §§13.41, 13.99 to 13.104, 14.08 and 14.15 to 14.17; Raynard, J., op. cit, footnote 21, p. 594; Plender, R. and Wilderspin, M., footnote 14, op. cit., §§ 22-041 to 22-047;
Drexl, J.,
‘Article 3:301: Transferability’, in Basedow, J.,
et al.
(eds), footnote 30, op. cit. See, by analogy, Article 14(2) of the Rome I Regulation, pursuant to which the assignability of a contractual claim is an issue reserved for the law governing the claim in question. With respect to transferability, there are differences in the laws of States. First, while most States follow a ‘dualistic’ approach, pursuant to which economic rights can be assigned, whereas moral rights cannot, certain States (such as Germany, as explained in point 30 above) follow a ‘unitary’ approach, pursuant to which authors cannot assign their copyright, but only grant exclusive licences over their economic rights (which leads to essentially the same result). Secondly, the extent of a possible transfer may vary: certain States only allow the total assignment of copyright, while other allow the (partial) assignment of only certain exclusive rights, for a limited period (and so on) (see, for a comparative analysis of the laws of the Member States, Guibault, L., Hugenholtz, P. B., et al., footnote 11, op. cit.).
41      See, for the same view, Lucas, A., footnote 40,
op. cit., pp. 761 to 775, especially
pp. 769 and 770; Fawcett, J.J. and Torremans, P., footnote 11,
op. cit., §§ 13.104, 14.182 and
14.183; Plender, R. and Wilderspin, M., footnote 14,
op. cit., §§ 22-041 to 22-047; Drexl, J.,
footnote 40,
op. cit., § 3:301.C02; Heinze, C., ‘Article 3:504: Formal validity’, in Basedow, J., et al. (eds), footnote 30,
op. cit.,
§ 3:504.C02. Furthermore, the ‘contractual’ characterisation seems to be followed in the vast majority of the Member States (see, for a comparative analysis, Kono, T., footnote 13,
op. cit.).
42      Indeed, a written document usually ensures that the author is properly informed about what he/she is agreeing to. See Guibault, L., Hugenholtz, P. B., et al., footnote 11, op. cit., pp. 31 and 67; van Eechoud, M.M.M., ‘Choice of Law in Copyright and Related Rights: Alternatives to the Lex Protectionis’, Kluwer Law International, 2003, pp. 196, 197, 203 to 205; and
Raynard, J., footnote 21, op. cit., pp. 641 to 654.
43      Specifically, while Article 11 of the Rome I Regulation does not define the term ‘formal validity’, the Giuliano-Lagarde Report indicates that the concept of ‘form’, for the purpose of that provision, refers to ‘every external manifestation required on the part of a person expressing the will to be legally bound, and in the absence of which such expression of will would not be regarded as fully effective’ (ibid, p. 29). Obviously, that includes a requirement for a copyright licence or assignment contract to be in writing under penalty of nullity.
44      See, for instance, Article L-131-3 of the French Intellectual Property Code.
45      Pursuant to Article 18(2) of the Rome I Regulation, ‘a contract ... may be proved by any mode of proof recognised by the law of the forum or by any of the laws referred to in Article 11 under which that contract ... is formally valid, provided that such mode of proof can be administered by the forum’.
46      See, respectively, the Giuliano-Lagarde Report, p. 31, and Article 25(1) of the Brussels I bis Regulation.
47      The fact that the requirements discussed in the present case often appear in the copyright laws of States (rather than in their contracts code) and sometimes are drafted
as if they relate not to the contract, but to the copyright ‘as such’ (compare, for instance, Section 90(3) of the British Copyright, Designs and Patents Acts, pursuant to which ‘an assignment of copyright is not effective unless it is in writing …’ (emphasis added) and Article 53 of the Polish law on copyright, pursuant to which
‘a contract [for assignment of copyright] must be concluded in writing …’ (emphasis added)) is immaterial. Characterisation, for the purpose of determining the relevant conflict-of-law rules, cannot depend on the formal classification or precise wording of certain rules under the putative applicable law(s). It must be done independently of those considerations, in the light of the autonomously defined categories and of the nature of the underlying issue. For the reasons explained above, for conflict-of-law purposes, when national legislatures lay down such requirements in their copyright laws, they leave the ‘copyright as such’ category, and step into the ‘contract’ one.
48      See point 20 above.
49      Accordingly, the Commission explained that, in its view (i) the contract for exclusive licence is formally valid, under Article 11 of the Rome I Regulation, because the general rules on contracts laid down in Polish law permit verbal contracts; (ii) there would be no assignment of Polish copyright, because the Polish law on copyright requires a written form for an assignment to be valid; (iii) however, the German copyright has been validly transferred under that contract, because no such requirement exists in the German law on copyright.
50      Specifically, that approach is heavily influenced by the ‘Trennungs- und Abstraktionsprinzip’ known in German civil law, with respect to the sale of property, pursuant to which a single operation of sale should be analysed, from a legal point of view, as two distinct ‘acts’, namely (i) the ‘act giving rise to the obligations’ binding seller and buyer only, including the obligation on the part of the seller to transfer property to the buyer (that is, the contract for sale) and (ii) the ‘act of disposal of property’, consisting in the effective change of ownership over the right, from the seller to the buyer, with erga omnes effects.
This led a part of the German case law and academic literature to endorse, in the field of conflicts of law, a Spaltungstheorie (splitting theory), pursuant to which the first ‘act’ should be governed by the lex contractus, and the other ‘act’ by the law applicable to the property right as such (in case of intellectual property, the lex loci protectionis). That theory is, in essence, defended by BT and the Commission in the present case.
51      See, in that respect, Article 5(2) of the Berne Convention, pursuant to which ‘the enjoyment and the exercise of [copyright] shall not be subject to any formality’.
52      See further, on those formalities, and how they differ in nature from the requirements in discussion, Fawcett, J.J. and Torremans, P., footnote 11, op. cit., §§ 14.01 and 14.02, 14.08, 14.15 to 14.17; Raynard, J., footnote 21, op. cit., pp. 591 to 600, 635, 637, 644; the Giuliano-Lagarde Report, p. 29; Plender, R. and Wilderspin, M., footnote 14, op. cit., § 14-071; Drexl, J.,
footnote 40, op. cit., § 3:301.C07; and Heinze, C., footnote 41, op. cit., § 3:504.C02.
53      Accordingly, to avoid further confusion on the matter, the German Spaltungstheorie (splitting theory), should, in my view, be abandoned with respect to contracts relating to intellectual property right. Article 14(1) of the Rome I Regulation confirms this. That provision does not apply to the assignment of property right (in rem), but to the voluntary assignment of claims. Nevertheless, by analogy, it provides that the
‘relationship’ between assignor and assignee is governed by the law that applies to the contract between the assignor and assignee under that regulation. It derives from Recital 38 thereof that the term ‘relationship’ was used by the legislator to cover, in the few Member States that make that distinction, both ‘the contract’ and ‘the act of disposal’. Thus, the EU legislature rejected, for the purposes of the Rome I Regulation, the notion that a single transaction should be analysed as two separate legal ‘acts’, the ‘formal validity’ of which could be governed by two different laws. By contrast, the legislature distinguished between the validity of the assignment and the opposability to third parties of that assignment (a matter left to the national conflict-of-law rules).
54      Of course, that raises the separate question of whether a third party such as IU is entitled to raise the invalidity of a licence or assignment contract (or clause) for failure to meet such requirements. Often, the nullity (or inexistence) flowing from such a failure is relative, that is to say, can be raised only by the party who benefits from the protection of those requirements, namely the author. That separate question is obviously also a ‘contractual’ issue
in nature, governed by the relevant lex contractus.
55      See Fawcett, J.J. and Torremans, P., footnote 11,
op. cit.,
§ 14.183. See, nevertheless, points 73 and 74 below.
56      Such an unfortunate result would not be imposed by the Berne Convention. Indeed, the issue discussed is entirely outside the scope of that convention. It has nothing to do with the ‘protection’ enjoyed by the author under copyright, as envisioned under Article 5(2) of that convention, but with the information and consent of the author in his or her
contractual relationships with other persons.
57      See the Guiliano-Lagarde Report, pp. 29 and 30.
58      Such special rules already exist, in Article 11(5) of the Rome I Regulation, with respect to ‘contract[s] the subject matter of which is a right in rem in immovable property or a tenancy of immovable property’. See, for proposals to that effect,
van Eechoud, M.M.M., op. cit., footnote 42,
pp. 196 and 205.
59      Article 9(1) of the Rome I Regulation defines the concept of ‘overriding mandatory provisions’ as ‘provisions the respect for which is regarded as crucial by a country for safeguarding its public interests, such as its political, social or economic organisation, to such an extent that they are applicable to any situation falling within their scope’. The fact that the requirements at issue protect, above all, private parties (namely authors) does not necessarily exclude the finding that they pursue a ‘public interest’ within the meaning of that provision (see, by analogy,
judgment of 5 September 2024, HUK-COBURG-Allgemeine Versicherung II, C‑86/23, EU:C:2024:689, paragraphs 46 and 47)).
60      Often, the contract will have to be performed in the country of protection, and it is at least arguable that not respecting the requirements as to form laid down in the law of that country makes the performance of the contract (notably, the obligation to licence or assign copyright) unlawful.
61      See Fawcett, J.J. and Torremans, P., footnote 11,
op. cit., §§ 14.164 to 14.174; § 14.156, and the Giuliano-Lagarde Report, p. 31. Admittedly, since this is not an obligation, but merely a discretion, Article 9 of the Rome I Regulation creates a degree of uncertainty as to whether the requirements as to form laid down in the lex protectionis could apply as ‘loi de police’. However, that degree of uncertainty is inherent to the Regulation as it stands. To remove it, the EU legislature would need to either (i) exclude entirely the possibility to apply ‘loi de police’ related to form or (ii) make the application of the requirements as to form laid down in the lex protectionis compulsory under Article 11.
62      See, further, for the method to identify a ‘loi de police’ and the conditions of its application, judgment of 5 September 2024, HUK-COBURG-Allgemeine Versicherung II, C‑86/23, EU:C:2024:689, paragraphs 39 to 46. In addition, when the author happens to be an employee or a consumer, special protective rules apply, which limit the possibility of the parties from choosing the applicable law, and may allow the author to invoke the protection of the law of its habitual residence (which, often, will correspond to the lex loci protectionis) (see, for more detail, Articles 6, 8 and 11(5) of the Rome I Regulation)). Finally, that regulation also provides safeguards for ‘false’ international situations, namely where parties habitually resident in the same State, regarding copyright granted in that State, in an otherwise purely ‘internal’ context, would choose a foreign law solely in order to circumvent the mandatory provisions, including as to form, laid down in their common law. While such a choice of foreign law is, in principle, valid under Article 3(1), Article 3(3) provides that that choice shall not prejudice the application of those mandatory provisions.
63      In fact, several matters should be verified by the referring court in that regard. First, that court should verify whether the relevant contracts
had indeed been concluded in Poland in the presence of the parties (or their representative), as it seems to assume (see point 44 above). Indeed, it would appear from the explanation of the facts that BT commissioned the photographer, in advance, and maybe from Germany, to take the photographs. Maybe the contracts were concluded at that moment. However, where parties are in different countries at the time
of conclusion of a contract, Article 11(2) provides that the contract is formally valid if it satisfies the formal requirements of (i) the lex contractus or (ii) the ‘law of either of the countries where either of the parties or their agent is present at the time of conclusion’, or (iii) ‘the law of the country where either of the parties had his or her habitual residence at that time’. One cannot exclude, thus, that German law applies on account of points (ii) or (iii). If that is so, then the contracts at issue would be formally valid under Article 11(2), since German law seemingly does not contain a requirement for such a contract to be in writing. Secondly, assuming that the validity of the contracts is governed solely by Polish law, it would be for the referring court to clarify whether exclusive licence contracts fall within the scope of Article 53 of the Polish law on copyright and whether a third party such as IU is entitled to invoke, under polish law, the nullity of those contracts for breach of the requirement laid down in that provision (see footnote 54 above). Finally, BT has submitted, before the Court, that the photographer later confirmed the assignment in writing. It would be for the referring court
to determine what
effect, under polish law, that confirmation has on the validity of the contracts.