Intellectual Property

The area of intellectual property is our specialitè de la maison. For years, we have specialised in the protection of intellectual property. We work for well-known film and television producers, major advertising and marketing companies, media houses, video producers, event agencies and large-scale event organisers, as well as creators and artists. Apart from the creative industry, our clients are mostly well-known brands and corporations, for which issues such as management and brand protection, fair competition and new technology are an important part of everyday business reality. For our clients, we negotiate and draft agreements, represent them in court disputes, arbitrations and mediations; we help carry out complex transactions. We issue opinions on artistic, technological, event or marketing ventures to help implement the most innovative projects. Thanks to an interdisciplinary exchange of experience, our team of experts can also advise the creative industry on financial issues (LSW Taxes and LSW Accounting), indicating the best solutions.

 

Media and movie

• We support clients in the media industry, including television, radio, the press and the internet.
• We cooperate with broadcasters, all entities involved in the production of media content (including producers, authors, artists and journalists), industry organisations, and regulators.
• We prepare contracts and represent clients when negotiating, creating and broadcasting programmes, operating television formats, and publishing press releases
• We represent film producers, commercials and series producers, as well as directors. With our support, more than 100 audiovisual projects have been created (movies, TV series, TV shows)
• We conduct lectures and trainings for the film industry, among others, with the support of the Polish Audiovisual Producers Chamber of Commerce
• Two LSW partners are arbitrators of the Court of Arbitration of the Audiovisual Market (SARA)

New technologies, software and IT

• We advise on drafting and negotiating agreements for the creation, implementation, testing, servicing and operation of computer programmes and information systems, designing and maintenance of websites and other multimedia services
• We are involved in creating the legal infrastructure for the operation of websites or online shops, and issues related to the protection of Internet domains and privacy on the Internet
• We provide legal support to producers of multimedia and computer programmes, including computer games, portal administrators, hosting providers, bloggers, Internet shop owners and other virtual sales platforms, interactive marketing agencies, and e-PR, as well as entities and institutions that are interested in creating and acquiring rights or obtaining licences for all IT solutions and systems
• We conduct lectures, trainings and workshops on new technologies law
• Our lawyers have been involved in dozens of computer law transactions (including computer software implementations)

Advertising

• We provide ongoing legal support to advertising agencies, production houses, media houses, PR firms, creative boutiques, full service agencies, and other entities on the widely understood advertising and marketing market, as well as advertisers (including well-known stock listed companies)
• We issue opinions on marketing concepts and strategies, as well as on individual activities and advertising materials (copy clearance) in terms of their legal compliance, fair dealing, good practice and restrictions on advertising of sensitive products (including pharmaceuticals, financial services, cigarettes, alcohol, gambling). We draft dozens of advertising consultations and opinions
• We advise on pre-litigation and court cases related to the creation and exploitation of advertising content
• We create a legal framework for marketing and promotional activities such as promotional lotteries, competitions, bonus sales and online promotions
• We advise on extraordinary projects at the intersection of advertising, art, design and business. We support our clients in rebranding, brand refreshment, product and corporate visualisation, creation of new products, brands, sub-brands and packaging, as well as interior design, and business and public space
• We cooperate with industry organisations – such as the Marketing Communication Association (SAR), MediaRun, Proto.pl. We are regular auditors of the most important advertising industry competitions, such as Effie, KTR, Media Trendy, etc.
• We give lectures on advertising law at the SAR Advertising University, for the MediaRun Academy, the Hugo Grotius Intellectual Property Law Centre in Kraków, and others

Industrial property, including trademarks

• The LSW areas of expertise include almost all aspects of intellectual and industrial property protection, with a particular emphasis on the protection of trademarks (including famous and well-known trademarks), industrial designs and utility models
• We advise clients on successful and effective commercialisation of intangible assets
• We represent clients in disputes related to exclusive rights before the Patent Office, as well as common and administrative courts and law enforcement and customs authorities
• We regularly cooperate with patent attorneys in various fields of science and technology
• Our lawyers are lecturers at the Hugo Grotius Intellectual Property Law Centre and speakers at conferences dedicated to intellectual and industrial property
• Maciej Kubiak is a co-author of the Commentary to Industrial Property Law published by C.H.Beck

Fashion and design

• We support fashion and other designers in protecting their designs and intellectual property from unauthorised copying, and work to counteract illegal imitation of their designs
• We provide assistance with all legal matters and issues that arise in connection with running a fashion business. We support our clients at the start of their business activity – helping them choose the optimal legal form and create a legal framework for running a business – and at a later stage. We provide on-going legal services, including drafting and negotiating agreements necessary for everyday business operations, such as agreements with co-workers, subcontractors, models, sponsors, etc.
• We represent clients in (court and out-of-court) disputes regarding the rights to designs and patterns in the field of fashion and broadly understood design
• We develop optimal strategies for the protection of intellectual property

Personal data

• We perform analyses, create opinions and consult analytical, technical and marketing projects related to data acquisition and processing, or use of large data sets, including assessing their compatibility with the provisions of personal data protection regulations, the right to privacy, advertising law, regulations on combating unfair competition, consumer protection, as well as industry regulations
• We provide comprehensive services in the area of personal data security, including audits of data processing mechanisms in companies, preparing practical recommendations and comprehensive documentation, assistance in the implementation of personal data security policies and instructions for managing IT systems
• We conduct trainings on personal data protection
• We advise at the stage of creating data sets, registering them, entrusting their processing, and any other operations on personal data sets
• We have experience in outsourcing the function of the Information Security Administrator. It is a popular form of assuming the entrepreneur’s obligations regarding personal data protection. Thanks to our experience, we can offer the most optimal forms of support for personal data protection processes in enterprises

E-commerce and consumer law

• We provide comprehensive services to business entrepreneurs who run their operations on the Internet
• We consult consumer communications, including labelling of food products
• We prepare and consult privacy regulations and policies of social networking sites, online stores, and mobile applications in terms of their compliance with legislative changes and consumer regulations
• We create comprehensive documentation necessary to provide services or sell goods on the Internet
• We consult the terms of promotions and consumer competitions, lotteries, consumer loyalty programmes and marketing communications, as well as any other materials advertising online companies and their services
• We help apply the rules of personal data protection on the Internet
• We provide support in relation to applying the food law
• We conduct trainings in e-commerce and consumer protection law
• Our clients include entrepreneurs planning to expand their e-commerce business operations, as well as those who already run commercial operations on the Internet, e.g. online stores selling cosmetics, food, luxury goods, household appliances, clothing, as well as auction sites and providers of mobile applications

Muzyka i eventy

• We specialise in supporting creators, performers and artists, as well as entities using other people’s musical creativity in their own business or promotional activities.
• We advise on how to regulate matters concerned with the functioning of bands, and when disputes arise, we also assist in settlement negotiations or court proceedings
• We represent musical performers in negotiations with record labels
• We provide comprehensive legal services to support the organisation of concerts and other events
• We help clients acquire copyrights and related rights to music to the extent necessary for them to carry out their business or marketing projects
• We prepare publications in professional magazines related to the event industry (i.e. THINKMICE)

Nauka i komercjalizacja badań naukowych

• We advise on successful and effective commercialisation of intangible assets
• We advise investors and representatives of the scientific world on developing legal forms that enable the collaboration between the worlds of business and science, and the commercialisation of scientific research. We help create special purpose vehicles, consortium agreements and investment agreements that allow for additional investment in science and commercialisation of research results
• In cooperation with patent attorneys, we support investors, institutes and universities in obtaining intellectual property protection regarding research results
• We support scientists and institutions in the implementation of educational, scientific and popular science projects
• Our lawyers are lecturers at the Hugo Grotius Intellectual Property Law Centre and speakers at conferences dedicated to intellectual and industrial property

Zwalczanie nieuczciwej konkurencji

• We represent clients in disputes concerning the violation of principles of fair competition, infringement of consumer interests, infringement of personality rights of entrepreneurs in the pre-trial phase, in the course of proceedings to secure claims, as well as in court proceedings before commercial and criminal courts
• We issue opinions on projects for business solutions, advertising campaigns, promotional campaigns and competitions to establish their compliance with law, principles of fair competition, good practice, principles of social interaction, as well as consumers’ rights and interests
• We prepare drafts of regulations, approvals, permits and declarations concerning the protection of confidentiality, know-how and trade secrets
• Our lawyers are speakers at conferences on intellectual property and combating unfair competition

Presidential Campaign

The LSW team of lawyers advised an advertising agency preparing election materials connected with the 2010 Presidential election campaign. The task of LSW was to review the promotional spots to be aired on TV and the Internet.

Reputation of a TV station

The LSW law firm represented one of Poland’s biggest TV stations in a lawsuit regarding the protection of its personal interests. The subject of the dispute was a publication in a well-read journal. The station management and the journalists were accused of acting unethically and outside of the law. The case was settled according to the demands made by the LSW Client.

Media Crisis

LSW gave legal counsel to one of the banks regarding the handling of a media crisis. The situation was brought about when materials, which allegedly described illegal actions taken by employees and partners of the Bank against its Clients, were made public. 

Protecting the freedom of expression of the press 

LSW experts have many times effectively represented the media, which were accused of infringing upon personal interests without merit. The stakes in these lawsuits were not only potential damages to be paid but primarily damaging the reputations of the editors. 

Public cultural institution vs. a popular opinion-making weekly magazine

The LSW lawyers defended the good name of a leading public cultural institution. An article in the press accused the organization of conducting a non-transparent financial policy and using unclear criteria in evaluating projects applying for financing. The trial court ruled in favor of the LSW client and the defendant was made to issue a correction, publish an apology and make a contribution to a charity.

Hollywood stars in advertising

The LSW law firm represented advertising agencies and their clients in negotiating and signing contracts with celebrities form the worlds of cinema, television and music, regarding their appearance in advertisements. The LSW lawyers provided legal services for the agencies throughout the negotiations and cooperation with 4 A-listed Hollywood celebrities, who appeared in TV commercials, in the press and on billboards in Poland.

"In darkness" Polish Academy Award nominee.

For the Polish co-producer, Film Studio Zebra, LSW offered comprehensive legal services for the Polish-Canadian-German co-production titled “In Darkness”, directed by Agnieszka Holland. In 2012 the film was nominated for an Oscar in the Best Foreign Motion Picture category. Within this project, the LSW lawyers negotiated the co-production agreement, rules of recoupment, the contract with the director, the contract for global distribution, the contract with the collective agent, in addition to preparing the contracts with actors and crew and finally, verified the documents concerning chain of title. They also supplied the Polish producer with ongoing advice concerning various legal issues regarding the development process, production, post-production of the film and its exploitation. 

Media and movie

New model of digital television for a prominent press publisher

LSW’s involvement in that matter consisted in issuing an opinion on the compliance with Polish law and European law, developing solutions to mitigate legal risks and preparing documentation related to the creation of legal and organisational structure of the television.

TV formats

LSW lawyers provided opinions and negotiated agreements in relation to the use of foreign TV formats, negotiated agreements on the purchase and use of additional rights (e.g. merchandising, interactive, telephone-related); they also advised on the creation and protection of the elements of such formats, on the production of television programmes and organisation of related competitions, as well as the creation of legislative framework for such media projects. LSW assisted with such formats introduced in Poland as the “Voice of Poland,” “Top Model,” “Jak Oni Śpiewają” (Polish version of the Soapstar Superstar), “Kocham Cię Polsko” (I love you Poland), “Szymon Majewski Show” and many others.

Film co-productions

LSW lawyers supported one of the most successful Polish animation studios on the creation of cooperation principles in relation to three international co-productions, including a project on the Warsaw Uprising.

“In Darkness” – Polish Oscar candidate

LSW provided comprehensive legal advice to Studio Filmowe Zebra, a Polish co-producer, in relation to a Polish-Canadian-German co-production titled “In Darkness,” directed by Agnieszka Holland. In 2012, the film was an Oscar nominee for the best foreign language production. Within the framework of this project, LSW lawyers negotiated, inter alia, the co-production agreement, recoupment rules, agreement with the director, agreement on the worldwide distribution of the film, agreement with the collective agency, as well as prepared contracts with the actors and producers, and verified the documents composing the chain of title. They also provided on-going advice to the Polish producer on various legal issues related to the development, production, and post-production of the film, as well as its exploitation.

Food company sponsoring

LSW lawyers provided legal advice to a food company in relation to an innovative sponsorship project involving, inter alia, a television programme of a total value of PLN 30 million.

Google Books

LSW lawyers represented numerous Polish book publishers in the settlement related to the Google Books project. The aim of the settlement negotiated by US publishers and authors with Google, and then expanded as a result of class actions of publishers and authors from around the world, was to bring the whole collection of the world books within the scope of the rights to digitise. Due to the objections and doubts raised in relation to the effectiveness of the settlement in international relations, and fears of excessive preference for Google on the e-book market, the settlement was not approved, as per the claims of LSW’s clients.

Limitations to copyright and fair use

LSW participates in a landmark – for the Polish market – dispute between one of the largest interactive agencies and a press publisher. The subject of the dispute is the possibility to use reprints from printed mass media in the Internet for information purposes. The issues considered by the court include, among others, the limitations regarding the copyright protection with respect to simple press news, and the principle of fair use.

Providing comprehensive legal advice to a leading book publishing house

LSW was tasked with drafting, issuing opinions to and negotiating agreements with authors, Polish and foreign translators, representing the publisher before foreign copyright agencies and publishers and representing the publisher in disputes concerning copyright infringements on civil and criminal basis.

“13th of December” – a social and educational campaign

On behalf of Wydawnictwo Literackie and its author, LSW cooperated with the Institute of National Remembrance and the National Centre for Culture with regard to the organisation of the “13th of December” campaign. This involved a wide variety of the social and educational activities. Our legal support consisted primarily in the preparation and negotiation of copyright agreements with the creators and the campaign’s partners.

New technologies, software and IT

Dispute with the client’s former partner on the rights to source codes

We represented a software company developing specialised software, inter alia for the army, in a dispute with a former partner, where the main issue concerned the rights to source codes and databases.

Dispute between competitors concerning software copyright and unfair competition

We advised an IT company, dealing with software development and implementation, in a dispute with its competitor – an international group, which made a false accusation against our client regarding the copyright infringement, while performing acts of unfair competition against our client.

IT solutions for the food industry

We supported a group of fruit and vegetable producers, trading annually approx. 10 thousand tonnes of fruit, in agreement negotiations for the creation and implementation of a dedicated computer system (software and hardware) for a comprehensive inventory management and preparation of goods and their sale.

Supporting computer games producers

LSW lawyers draft, comment on and negotiate agreements necessary for creating and using computer games, including programmers, graphic designers, scriptwriters, and animation studios – with respect to rights to fictional characters – distributors, advertisers, sponsors and media partners.

Supporting an innovative IT start-up

We supported an IT start-up in developing a business model and preparing agreements necessary for running business operations based on the innovative and comprehensive provision of IT support for business (including such issues as widely understood IT services, software licensing, equipment rental, etc.).

IT implementations

We drafted and negotiated agreements for the creation, implementation and maintenance of various IT systems and computer programmes for the following types of clients: book publishing houses, newspaper publishers, advertising agencies, cultural institutions, manufacturing companies and service providers.

Box licences

We drafted and commented on standard licence agreements for the use of computer programmes distributed in boxes.

Portals and websites

We drafted, commented on and negotiated agreements for the creation and acquisition of rights to IT solutions underlying the websites, internet portals and web pages.

Scientific social service

LSW provided regular legal services to Index Copernicus International S.A., which ran a unique international social service devoted entirely to the people of science. The company is also the author and owner of a unique algorithm, enabling the assessment of research achievements.

Protection of anonymity on the Internet

LSW lawyers handled a case with regard to disclosing the identity of a well-known political blogger against one of the Polish newspapers A Polish newspaper, Dziennik, tried to persuade the blogger to disclose her identity, but when she refused, they published the information which allowed for her identification.

Personal interests vs internal Internet forum

LSW handled probably the first case in Poland where the court had to decide on the violation of personal interests by the statements of Internet users within an internal online discussion forum or lack thereof. As a result of LSW’s actions, the defendant was ordered by the court to send emails to all forum members with apologies to the plaintiff for publishing harmful content.

World Cyber Games

LSW lawyers provided comprehensive legal advice in relation to the tenth edition of the largest and most prestigious international eSports tournament – the World Cyber Games.

Advertising

Advertising support of the largest bank in Poland

Acting on behalf of the largest bank in Poland, the LSW lawyers created a system of innovative agreements on a comprehensive advertising support by selected advertising agencies. The team also supported the bank during negotiations of these agreements.

Principles of cooperation between advertising agencies and actors for the SAR

Acting on behalf of Stowarzyszenie Komunikacji Marketingowej SAR (an advertising agencies association), the LSW lawyers created a specimen agreement stipulating the scope and principles of mutual relations of advertising agencies with actors appearing in ads. Such an agreement streamlines and standardises the cooperation, and ensures the security of trading rights with regard to related intangible assets.

Copyright protection and fair use limitations

LSW participates in a landmark – for the Polish market – dispute between one of the largest interactive agencies and a press publisher. The subject of the dispute is the possibility to use reprints from printed mass media in the Internet for information purposes. The issues considered by the court include, among others, the copyright protection limitations with respect to simple press news, and the fair use doctrine.

Withholding tax in advertising production

The LSW lawyers successfully represented clients from the advertising industry in a dispute with the Fiscal Control Office regarding the necessity to collect withholding tax on royalties paid to entities established outside Poland.

Industrial property, including trademarks

Protection of the name and identifying marks of an association

We represented an American association, with more than 1.5 million members around the world, in matters related to violation of trademarks, rights to the name and identifying marks. In line with the client’s expectations, the dispute was resolved at the stage of pre-trial proceedings.

Industrial design protection

We represented an inventor of the design of an ultrasound device enclosure against a company that used the work without regulating the copyright issues with the creator. The case involved issues of the copyright protection limitations in terms of industrial designs and the principles for drafting licensing agreements. A cassation complaint was filed to the Supreme Court, which upheld the claims we raised in their entirety. The client received an appropriate compensation for a culpable and unlawful use by the defendant of the industrial design in its business operations.

Visual identification of group companies

We developed a licensing agreement for the use of trademarks within the capital group of one of the largest companies in the energy sector in Poland. The aim was to use – as part of a group – a uniform and harmonised visual identification with regard to trademarks.

Trademark infringement in the name of a company

Thanks to our lawyers’ effective actions, we managed to change the name of our client’s competitor and delete a word element constituting a protected trademark.

Trademark registration

LSW prepares complete application documentation necessary for the registration of our clients’ trademarks, both in the Polish Patent Office, as well as the EU’s Office for Harmonisation in the Internal Market (OHIM) in Alicante. We annually register dozens of trademarks for our clients.

Cybersquatting

We represented a client in relation to the protection of a trademark which was unlawfully used in the Internet domain. Our efforts led to the effective blocking of the web page at the stage of pre-trial proceedings.

Motion trademarks

We drafted a legal opinion on the possibility of filing an application for an effective registration of a motion trademark in the form of an animated film. This necessitated the analysis of the practice of patent offices in this regard and identification of potential legal risks with respect to such a non-conventional form of trademark.

Industrial design protection

We represented an inventor of the design of an ultrasound device enclosure against a company that used the work without regulating the copyright issues with the creator. The case involved issues of the copyright protection limitations in terms of industrial designs and the principles for drafting licensing agreements. A cassation complaint was filed to the Supreme Court, which upheld the claims we raised in their entirety. The client received an appropriate compensation for a culpable and unlawful use by the defendant of the industrial design in its business operations.

Fashion and design

Infringement of rights of a famous fashion designer

The LSW Team advised a famous Polish fashion designer concerning the matter of shirts which very closely resembled ones designed by him, being sold on an online auction website. Thanks to the action taken by LSW, the sale of the shirts imitating the designers’ work was stopped, and the two parties came to an agreement regarding damages.

Collaboration between a famous fashion designer and a popular clothing brand 

The LSW Team participated in preparing contracts, which enabled collaboration between one of the most recognized Polish designers and a popular clothing brand. Thanks to the suport of LSW a limited collection of clothes by the designer was created for the famous brand.

Licensing contract with heirs of a famous Polish designer of furniture.

The LSW lawyers helped in arranging a licensing agreement with the heirs of a famous Polish designer of furniture who worked in the 1950’s. Thanks to this collaboration, one of the companies on the Polish market began the production of chairs designed by the artist, which are also greatly appreciated today. 

Personal data

System for analysis of consumer behaviour

The LSW lawyers drafted general terms and conditions, as well as templates for performance agreements on the implementation and maintenance of an IT system to analyse consumer behaviour in stationary retail outlets. The agreements included both the general conditions for the implementation of the system, e.g. a pre-sales analysis of electronic equipment, and determination of the scope of copyright and required anonymization of personal data, as well as guarantee issues and IT maintenance.

Behavioural data targeting

At the request of a client (one of the largest advertising network agencies in Poland), LSW consulted the assumptions for a marketing campaign aimed at promoting services of a leading international financial intermediary nationwide. The assumed advertising activities provided for behavioural data targeting by the financial intermediary with regard to people using its services and, based on that, matching individual marketing activities to selected consumers.

Transfer of data to third countries

We advised an association and an organiser of an international computer games competition in terms of a lawful transfer of personal data to the USA and Asian countries.

Targeted bank marketing

We provided legal support in relation to a project involving a large chain of stores joining a bank’s promotional programme, covering the issues of matching offers to groups of clients.

Privacy infringement by state bodies

We represented Mr Bogdan Wróblewski, a Gazeta Wyborcza journalist, in the case against the Central Anticorruption Bureau (CBA). The case concerned the infringement of the journalist’s personal interests through the CBA’s acquisition of the telecommunications data (e.g. billings) in the years 2005–2007. Following our reasoning, the courts of first and second instance decided that CBA’s actions had been unlawful and acceded to, e.g. the request for removal of the data from the CBA’s system. We handled the case pro bono. A party to the proceedings was the Helsinki Foundation for Human Rights.

E-commerce and consumer law

System for analysis of consumer behaviour

The LSW lawyers drafted general terms and conditions, as well as templates for performance agreements on the implementation and maintenance of an IT system to analyse consumer behaviour in stationary retail outlets. The agreements included both the general conditions for the implementation of the system, e.g. a pre-sales analysis of electronic equipment, and determination of the scope of copyright and required anonymization of personal data, as well as guarantee issues and IT maintenance.

Behavioural data targeting

At the request of a client (one of the largest advertising network agencies in Poland), LSW consulted the assumptions for a marketing campaign aimed at promoting services of a leading international financial intermediary nationwide. The assumed advertising activities provided for behavioural data targeting by the financial intermediary with regard to people using its services and, based on that, matching individual marketing activities to selected consumers.

Transfer of data to third countries

We advised an association and an organiser of an international computer games competition in terms of a lawful transfer of personal data to the USA and Asian countries.

Targeted bank marketing

We provided legal support in relation to a project involving a large chain of stores joining a bank’s promotional programme, covering the issues of matching offers to groups of clients.

Privacy infringement by state bodies

We represented Mr Bogdan Wróblewski, a Gazeta Wyborcza journalist, in the case against the Central Anticorruption Bureau (CBA). The case concerned the infringement of the journalist’s personal interests through the CBA’s acquisition of the telecommunications data (e.g. billings) in the years 2005–2007. Following our reasoning, the courts of first and second instance decided that CBA’s actions had been unlawful and acceded to, e.g. the request for removal of the data from the CBA’s system. We handled the case pro bono. A party to the proceedings was the Helsinki Foundation for Human Rights.

Muzyka i eventy

Phonography

LSW prepared the release of a record by one of the most famous creators and producers of the Polish entertainment scene. This necessitated the creation of a legal framework for the project, including agreements with contractors, with a distributor, and with sponsors, agreements on the acquisition of rights, as well as handling the relations with all relevant collective management organisations.

Copyright for the Polish Radio

The LSW lawyers drafted and negotiated a set of general agreements with collective management organisations (CMOs) for copyright and related rights, developed a new model of cooperation with CMOs within the scope of traditional broadcasting and using the works and performances on the Internet, and other new areas of exploitation.

Polish concert in London

The LSW team advised a Polish agency – STX Jamboree – in organising a concert of Polish artists in London. The lawyers took part in full scope negotiations – from preparing an agreement with the sponsor to the conclusion of agreements on promoting, organising and performing the concert. The team’s tasks included also drafting the stadium lease agreements and agreements with artists.

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