Copyright - No higher level of originality for applied arts

According to the former case-law in Germany, copyright protection of works of applied arts had been considered to be available only for works with a level of originality clearly above an average level of creativity. The reason was that an essentially similar protection by registered designs was available for works with a level of originality above an average level of creativity such that the additional and longer-lasting copyright protection appeared to be justified only if the level of creativity substantially exceeds the level required for design registration.

This case-law has now been overruled in the decision "Geburtstagszug" I ZR 143/12 . The Ist Senate argues that the above reasons are no longer tenable since the law on registered designs has been reformed in 2004. Since then, the close relationship between copyright protection and design protection does no longer exist and originally is no longer required at all for a registered design. It is sufficient if the design has a different overall impression.

As a consequence, it is no longer allowable to impose conditions on the copyright protection of works of applied arts other than those imposed on non-applied works of fine arts, literature or music.
Rather, it is sufficient to reach a level of creativity justifying that the relevant public may speak of an "artistic" achievement (künstlerische Leistung). The relevant public is defined as a public with reasonable susceptibility to arts being familiar contemplations of arts.

This decision is a little revolution in the design protection in Germany for product or furniture designers, architects or the fashion industry.

Standard of Due Care in Patent Prosecution Matters

The 10th Senate of the Bundespatentgericht, responsible i.a. for appeals against decisions to refuse a request for re-instatement of rights in patent prosecution matters has raised interesting questions on the standard of due diligence in our field.

In general civil law, the rule established by the case-law is that the exercise of due care by the responsible attorney requires that upon deleting a time limit for one procedural step, the attorney should also check that other inter-related time limits in the same file are correctly noted.

In an earlier decision (10 W[Pat] 5/05 “Dreidimensionale Daten”, headnote here), the Senate had argued that this rule can be transferred to cases of  re-instatement of rights in patent prosecution matters only in certain parts.

The rule applies in particular for time limits pertaining to legal remedies such as appeals, wherein a longer delay for filing the grounds of appeal is considered to be interrelated with the delay for filing a statement of appeal. Failure to check the correct notation of the delay for filing the grounds upon deleting the delay for filing the statement of appeal is generally considered incompatible with due diligence.

However, the 10th Senate of the Bundespantentgericht had found that this requirement cannot be extended to each and every delay in a patent application procedure, where the number of more or less independent delays is considerably higher than in a general civil procedure.

In the case “Dreidimensionale Daten”, both a translation of the documents as originally filed and a copy of the priority document had to be filed within the pertinent delays respectively. When filing the translation, the attorney had not remarked, that the deadline for filing the priority document had not been correctly noted, and the DPMA had rejected the request for re-instatement by arguing that the obstacle (failure to note the time limit) would have been remarked at this earlier stage if the responsible attorney had exercised all due care required by the circumstances.

The Bundespatentgericht did not follow this argument by pointing out that a causal relationship between the two limits does not exist, and that the number of delays to be monitored in patent application procedures is considerably higher than in general procedures for legal remedies.

In the recent decision 10 W (pat) 22/09, this question has come up again. The Senate points out that a limited duty (“eingeschränkte Pflicht”) exists to check a file with regard to the correctness of calculations done upon noting the delays according to his  instructions. The reason is that the high number of delays to be noted and monitored would lead to excessive requirements. According to the senate , the attorney should be exempted from activities in relation to the deadline-management and checking in the interest of his activities dedicated to the administration of justice (“im Interesse seiner der Rechtspflege gewidmeten Tätigkeit”).

The question which kind of specific indications ("Anhaltspunkte") are sufficient to trigger the duty to double-check the noted deadlines is still to be clarified. In the case at issue in 10 W (pat) 22/09, this threshold finds its organisational counterpart in the question which degree of irregularities in the normal process flow should give rise to a duty of office clerks to notify the responsible attorney.

As this point of law has not yet been clarified by the highest courts, a leave to appeal on this point of law was granted.

 

Is offering a protected work for sale a distribution to the public by sale or otherwise?

Marcel Breuer 1957

Article 4 par. 1 of the Copyright directive 2009/29 provides that "Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorize or prohibit any form of distribution to the public by sale or otherwise".

In an earlier referral (C-256/06 Peek & Cloppenburg/Cassina), the BGH had to decide on a case were counterfeits of Copyright protected armchairs legitimately bought in Italy by the German clothing business Peek & Cloppenburg had been offered for use to tired husbands accompanying their wives at Shopping Marathons.

The armchairs belonged to the shop fitting and were not for sale. While it is clear that selling a product protected by Copyright infringes the author's rights, the ECJ had decided in the matter C-256/06 Peek & Cloppenburg/Cassina that the words"or otherwise" should be interpreted narrowly in the sense "that the concept of distribution to the public, otherwise than through sale, .... , applies only where there is a transfer of the ownership of that object" (cf. margin number 41 of the decision) such that the mere offering of a counterfeit for use would fall under the scope of this provision.

However, the interpretation of the ECJ relying on the WIPO Copyright Treaty (‘CT’) and the WIPO Performances and Phonograms Treaty (‘PPT’) is to be construed in the sense that not only the actual transfer of ownership infringes the copyright but rather “acts entailing the transfer of ownership” (cf. margin numbers 34 and 35 of Peek & Cloppenburg/Cassina).

The demarcation between acts entailing the transfer of ownership and acts which do not is still somewhat fuzzy.

In the new referral “Marcel-Breuer-Möbel” (I ZR 91/11), the BGH asks whether mere offering for sale is to be considered a distribution to the public in the sense of Art. 4 par. 1 of the directive. In the affirmative case, it is further asked whether this applies to strictly contractual offers only or rather to promotional measures as well and whether the offer for sale has actually entailed a transfer of ownership or not.

The BGH holds that the answers should be positive and cites its previous case law in this regard. However, the answers in the case Peek & Cloppenburg/Cassina came as a surprise as well and overruled the German case law such that a new surprise is not excluded here.

Burden of Proof for Non-Registered Community Design - BGH I ZR 23/12 "Bolerojäckchen"

The German BGH had to decide on an appeal in a point of law in an infringement matter relating to a non-registered community design (NRCD) protecting the "bolero jacket" shown on the right hand side.

Undisputed was the fact that the jacet was novel and had individual character. The plaintiff was the first one to make the design available to the public within the community by selling the jacket shown on the right-hand side.

However, the defendant argued that this does not prove that the plaintiff is the rightful owner of the NRCD.

According to Art. 14 (1) of the council regulation, the he right to the Community design shall vest in the designer or his successor in title. The plaintiff submitted the sketch shown on right hand side together with whitness statemens of employees who authored the sketch in order to prove that the plaintiff - a employer - was the rightful successor in title.

The BGH did not object to the finding of the court of 2nd instance tat essential features of the NRCD - in particular the circuferentially closed broad cuff running from the neck over the back and back to the back - could not be derived from the scetch.

Furhter, the court did not find any support in the council regulation for a legal presumption that the person having been the one to make the design available to the public is the rigtful owner. In the absence of such a legal presumption, the burden of proof is not reversed and remains with the plaintiff, who has to prove to be the rightful owner of the NRCD beyond any reasonable doubt.

The enforcement of NRCDs in Germany will become more complicated after this decision. In order not to loose the possibility to enforce their rights using NRCDs, enterprises should keep a complete documentation of the creation process of products put to the market.

How to Avoid Confusion in Keyword Advertising

This is not an advertisement for trademarks showing up on your screen

Google's Keyword Advertising service offers displaying advertisements in little boxes on the right-hand side of the search results if the search includes particular keywords while the keyword is still visible as typed in Google's search field. If the advertisements contain informations on goods and services available on clicking thereon and the keyword is a registered trademark, the trademark will be displayed togehter with the goods and services on the same screen. Captious trademark attorneys might argue that in the case the combined display on  the same screen consititutes an unallowed use of the trademark. In the decision "Bananabay II", the BGH had decided that this use did not constitute an identical use of the trademark (Art. 5(1)(a) of the trademark directive  89/104/EEC) as long as the advertisement itself is clearly separated from the search results, marked as advertisement and does not contain the the registered trademark or any hints to the products of the trademark owner but rather a link hinting towards a different commercial origin of the products or services.

The question whether or not this use might ocnstitute an infringement of (Art. 5(1)(b) of the trademark directive  89/104/EEC) in that a likelihood of confusion on a part of the public, which includes the likelihood of association between the sign and the trade mark is created, was still open.

In the decision MOST-Pralinen answered this question to the negative. Under the conditions develpoend in "Bananabay II" (advertisement in a separate box, advertisement itself does not contain the trademark), neither a likelihood of confution nor a likelikood of association exists.

Removing a Link Does Not Remove Infringement

The Upper District Court (OLG) in Karlsruhe was confronted with a case of infromgement of the copyright of a photography. The photography was used in an editorial context in the internet and the infringer had signed a cease-and-desist declaration obliging him to remove the infringing content and to pay a fixed contractual penalty immediately in each new case of violation.

The infringer removed the link but kept the photography on the server. The copyright owner, who presumably had bookemarked the URL in order to check whether the infringer would follow his duties, then claimed that a contractual penalty was due. 

The court found this claim to be valid and rejected the defence that the content was not practically accessible due to the lack of a link from the editorial part of the web pages. The court confirmed the established case-law that the fact that everybody who had stored the URL in advance (just as the copyright owner or his representative) could access the content was sufficient to make the content available to the public.

It goes without saying that similar arguments will apply to internet-based trademark- or patent infringements provided that the content qualifies as an offer for sale. The lesson to learn is that it is better to entirely delete any potentially infringing conent from the web server rather than relying on the non-accessibility after the deletion of a link.

The question whether it would have been sufficient to modify the URL in such a way that it would qualify as a kind of password.

The full text of the decision can be accessed via Justizportal Baden-Württemberg here.

Originality not Required

The latest part (I ZR 21/11) in the recent series of interesting decisions on design protection under German unfair competition (see e.g. (here) law relates to a toy set with a box having a glass bottom, a bag of sand and some tools to create patterns in the sand spread on the bottom.

The set had been protected by a utility model, which, however had expired when a competitor started to sell highly similar toy sets. The court in the 2nd instance had rejected the claims by arguing that the realization of a general idea using only basic shapes could not lend a "competitive character" to the design in the sense that the design could be construed as an indication of the commercial origin of the product by the public.

The BGH disagreed and argued that restriction to the use of basic shapes might lead to a puristic design which could be considered characterizing for the commercial origin of the goods such that copying the design could be an avoidable deception on the commercial origin of the goods.

Originality of individual features of the design is not required. Decisive is rather the overall impression.