Article 28 MÖHUK – Contracts on intellectual property

Article 28 of Turkish Law No. 5718 on Private International Law and International Civil Procedure (MÖHUK) determines the law applicable to contracts concerning intellectual property rights (fikrî mülkiyet hakları). The parties may choose the law freely; without a choice, the law of the place of business of the party transferring the right or its use applies, or that party’s habitual residence if it has no place of business. The article matters to you if you live abroad and sign a copyright or licence contract with a publisher, a producer or a company in Turkey as an artist, author or software developer.

Article 28 MÖHUK – text

Unofficial translation:

Contracts concerning intellectual property rights
Article 28 – (1) Contracts concerning intellectual property rights are governed by the law chosen by the parties.
(2) Where the parties have made no choice of law, the contractual relationship is governed by the law of the place of business, at the time the contract was concluded, of the party transferring the intellectual property right or its use, or, if there is none, by the law of that party’s habitual residence. However, where it appears from all the circumstances that the contract is more closely connected with another law, the contract is governed by that law.
(3) Contracts between employee and employer concerning intellectual property rights in intellectual creations made by the employee within the scope of his or her work and in the course of performing it are governed by the law applicable to the employment contract.

Turkish original:

Fikrî mülkiyet haklarına ilişkin sözleşmeler
MADDE 28 – (1) Fikrî mülkiyet haklarına ilişkin sözleşmeler, tarafların seçtikleri hukuka tâbidir.
(2) Tarafların hukuk seçimi yapmamış olmaları hâlinde sözleşmeden doğan ilişkiye, fikrî mülkiyet hakkını veya onun kullanımını devreden tarafın sözleşmenin kuruluşu sırasındaki işyeri, bulunmadığı takdirde, mutad meskeni hukuku uygulanır. Ancak hâlin bütün şartlarına göre sözleşmeyle daha sıkı ilişkili bir hukukun bulunması hâlinde sözleşme bu hukuka tâbi olur.
(3) İşçinin, işi kapsamında ve işinin ifası sırasında meydana getirdiği fikrî ürünler üzerindeki fikrî mülkiyet haklarıyla ilgili işçi ve işveren arasındaki sözleşmelere, iş sözleşmesinin tâbi olduğu hukuk uygulanır.

Legislative reasoning

According to the reasoning of the government bill, the article is a new provision with no counterpart in the old law. The reasoning states that the term “intellectual property” was chosen, following the WIPO and TRIPS rules, so that it covers both literary and artistic works and industrial property rights. The choice of law is recognised without restriction. Without a choice, the party transferring the right or its use is treated as the party providing the characteristic performance (karakteristik edim). For inventions by employees and other intellectual creations of employees, paragraph 3 refers to the law applicable to the employment contract, on condition that the creation came about within the scope of the work and in the course of performing it.

Explanation

The article covers contracts for the transfer of rights such as copyright, trade marks, patents and designs, or for permission to use them (a licence, lisans).

The choice of law is free. Unlike consumer contracts (Article 26) and employment contracts (Article 27), there is no minimum-protection rule here that limits the choice. The overriding mandatory rules of Turkish law remain applicable in every case (Article 6 MÖHUK).

No choice: the transferring party. The contract is governed by the law of the place of business of the party granting the right or its use, as it was when the contract was concluded, or by the law of that party’s habitual residence if it has no place of business. For an author working on his or her own account, this will often be the law of the country where he or she lives. Moving to another country later does not change the applicable law. If all the circumstances show that another law is more closely connected, that law applies.

The contract and the right itself are separate. Article 28 only determines the law governing the contractual obligations. Whether the right exists, its scope and its infringement are governed by the law of the country for which protection is sought (Article 23 MÖHUK; see Article 23 MÖHUK). For example, even if German law governs a licence contract, unauthorised copying of the work in Turkey is assessed under Turkish law.

What this means if you live abroad

Author in Germany, publisher in Turkey. If no law was chosen and the author works on his or her own account in Germany, the publishing contract is as a rule governed by German law, because the author is the transferring party. The parties can write into the contract that Turkish law applies (Article 28(1)). For the content of German law, you need to consult a lawyer admitted in Germany.

Software developed while working for a company in the Netherlands. For software an employee creates within the scope of the work and in the course of it, the contract between employee and employer is governed by the law applicable to the employment contract (Article 28(3)). Which law that is follows from Article 27 MÖHUK.

Licensor and licensee. If a company in Turkey grants a licence to use its trade mark in Germany and no law was chosen, the law of the place of business of the Turkish company granting the licence, that is, Turkish law, applies.

For other contract matters, see the commercial and contract law page.

Frequently asked questions

Can a copyright contract contain a choice of law?

Yes, without restriction (Article 28(1) MÖHUK). The overriding mandatory rules of Turkish law remain applicable (Article 6 MÖHUK).

Which law governs a licence contract if no law was chosen?

The law of the place of business of the party transferring the right or its use, at the time the contract was concluded, or of its habitual residence if it has no place of business (Article 28(2) MÖHUK).

Which law governs software developed by an employee?

The contract between employee and employer is governed by the law applicable to the employment contract (Article 28(3) MÖHUK).

Sources

Questions about your case

If you would like to know which law a Turkish court would apply to your copyright or licence contract with a publisher, a producer or a company in Turkey, or what writing a choice-of-law clause into the contract would achieve, you can book a video call, a phone call or a meeting in Düsseldorf on the appointment page, or send a written question through the contact form. Consultations are held in Turkish and cover Turkish law only (§ 206 BRAO); for the position under German or Dutch law, please consult a lawyer admitted there. Useful to have ready:

the contract or the draft,
the country where each party had its place of business or lived when the contract was concluded,
the countries in which the work, trade mark or software will be used.