Ahoy there! Pirates going legit

The German Pirate Party has won 14 of the 130 available seats in the recent local parliament elections (see link). Normally the IPKat wouldn’t be reporting German elections, but the interest lies in the manifesto of the Pirate Party. These modern progressive Pirates are not interested in pillaging, plundering and keeping all the booty for themselves. Rather, they want everyone to share their ill-gotten profits: more Robin Hood than Long John Silver. Their manifesto is along the same lines as the UK Pirate Party, previously reported by the IPKat here and available here and includes the abolition of pharmaceutical patents and reduction of copyright protection to ten years. Ignoring whether the Pirate Party could make these changes (which would presumably require Germany to resign from a number of international treaties and organisations) how would Germany look if the Pirate Party gets its way?

Immediate thoughts are that no innovator pharmaceutical company would want to sell their products there, but of course this wouldn’t really matter to Germany because any generic company could set up shop and manufacture and sell their own versions. So the health of the population may not necessarily suffer, quite the reverse: the availability of cheap drugs could make Germany a go-to medical destination. Would pharmaceutical research departments and innovator companies move out of Germany? If they were still able to file for European Patents designated for other countries at the EPO then presumably there would be no mass exodus of R&D. Just a lot of healthy researchers filing GB etc designated patents.

Cultural life? Music, films and books are all easily transferred across the border on the internet and in print, so I don’t suppose the German people would lack for material being imported.

Gadgets, tools and machinery? Would Mercedes, Porsche and BMW continue to push the boundaries of automotive design and invention? The same logic as for pharmaceutical patents applies – companies could continue to be based in Germany (availing themselves of the cheap pharmaceuticals) and file non-DE designated EPs. In any event, the Pirate Party is not advocating the abolition of all patents, only threatening to roll back the “ever-growing tide of trivial, incomprehensible, overreaching patents”. They will do this by:

(1) “raising the bar on how innovative an idea has to be before it can be patented” [Merpel thought absolute novelty was already required…]
(2) “prohibiting patents on software, business methods, concepts, colours and smells.” [Good idea, says Merpel, but she is sure she’s seen rules like that before…]
(3) “We will require a working model to be provided to the patent office before a patent is granted” [Merpel thinks it will be a lucky business that wins the warehousing contract for the patent office]
(4) “we will strictly enforce the current rule that patents are invalid if they are "obvious to someone skilled in the art". [Merpel recommends revoking the patent]
(5) “We will allow more competition in the manufacture of patented devices by introducing a system of compulsory patent licensing, and we will provide exemptions to patent law for non-commercial use, personal study and academic research.” [Good idea, says Merpel, but she is sure she’s seen rules like that before…]

Interestingly, there is no talk of how the Pirate Party would handle infringement of IP rights - perhaps the easiest way to achieve their aims would be to disband the IP courts (come the revolution, the Dusseldorf court would surely be first up against the wall! See here)

So Germany might be a land of cheap generic drugs, counterfeit fashion goods, low quality electronic goods, familiar-looking restaurants serving food tasting not quite as anticipated…. hang on – I know a country like that! As China drags its IP laws and practice into the 21st century, Germany is on course to take its place.

We should note that the international Pirate Party is a moderate force in the world of anti-copyright activists, recently calling for members of Operation Payback to cease their attacks.

AVM, Cybits tussle over SurfSitter, GPL

Several (German) news sites (see here, here and here) report on a dispute between AVM Computersysteme Vertiebs GmbH and Cybits AG. AVM, it seems, has been trying to stop Cybits modifying AVM's Linux-based Fritzbox firmware (a DSL terminal). If this Kat has understood the dispute correctly, it appears that Cybits’s SurfSitter DSL filter software downloads AVM-produced Fritzbox software on to a user's computer, modifies the software and afterwards re-installs it on the AVM-produced Fritzbox. SurfSitter is a child protection software program.

What makes this dispute so interesting is that part of the AVM-produced and Cybits-modified software falls under the General Public License (GPL). AVM reportedly bases its claim on copyright, trade mark law as well as unfair competition law and appears to argue, inter alia, that it holds the copyright for the overall product (Gesamtwerk), which in AVM’s own view does not fall within the scope of the GPL.

This dispute dates back to 2010, when AVM had initially obtained an interim injunction to stop distribution of Cybits' software. This case has now moved forward to full trial with Harald Welte having joined Cybits' camp in the proceedings as “intervener” (Streihelfer). Harald Welte is behind gpl-violations.org and is, according to Heise.de’s report, also supported by the Free Software Foundation Europe. Welte, who owns the copyright in part of the Linux Kernel, which is included in AVM’s as well as Cybits products, argues that AVM’s effort to prevent third parties like Cybits from distributing modified firmware violates the GPL which allows any third party to modify, recompile, re-install and run modified versions of the respective GPL licensed program (copyleft).

A hearing in this case has now taken place at the Landgericht Berlin on 21 June 2011. For more information on this case, from the view point of the Free Software Foundation Europe, click here. To read Harald Welte’s blogpost summarising with information on this case, click here. Meanwhile, if any of our readers has a link to website that explains AVM's view of the case, can he or she please let the Kat know, so that the links are not too one-sided.

UPDATE: please click here to read AVM's comment on this case (in English). As always, many thanks to readers for their comments. Once the court has handed down a decision, the Kats will of course let you know.

Bundesgerichtshof on the "lawfulness of a press report"

The German Federal Supreme Court (Bundesgerichtshof) this week had to decide on the lawfulness of a press report about a book presentation by former news reader, journalist and author Eva Herrman (shown to the left), in particular whether this report was an infringement of Ms Herrman’s general personality right under the German constitution (case reference VI ZR 262/09 of 21 June 2011).

Eva Herrmann used to present the main news show Tagesschau on German television and is a somewhat controversial person with decisive views on various topics. While presenting her book “The Noah’s arc principle - why we have to save the family” (Das Prinzip Arche Noah - warum wir die Familie retten müssen) to journalists in 2007, Ms Herrman elaborated that traditional family values were again needed today, such as those that supported a higher regard for the role of the mother. Unfortunately, these family values had been abolished with the German student movement of 1968. She also referred to the Nazi time and said while most things had been dreadful during and Adolf Hitler had been a “totally crazy and highly dangerous politician”, the regard for families had been one of the very few good things during that time.

For those who are interested in what exactly Ms Herrman had to say, the Bundesgerichtshof’s press release includes a transcript of Ms Herrman’s actual comments as well as the wording of the press report (see here , in German).

The press report in dispute summarised Ms. Herrman’s various musings albeit in an ironic way, inter alia, referring to the fact that she was already married for the fourth time. The report also mentioned her comments on the Third Reich and ended with the words, that "thankfully" the book launch presentation ended after her comments on this topic. Ms Herrman objected to the report. She felt that its tone wrongly alluded that she was a supporter of the Nazi ideology. She further argued that the she was incorrectly quoted, which amounted to an infringement of her general personality right as protected under Articles 1(1) and 2(1) of the German constitution.

The lower courts, the Regional and Higher Regional Courts of Cologne, agreed with Ms. Herrman. The Bundesgerichtshof however agreed with the view of the defendants who had argued that Ms Herrman’s general personality right had not been infringed. In its press release of 21 June 2011 the Bundesgerichtshof clarified that the general personality right not only provides protection against being wrongly quoted (Fehlzitat), but also protects against other incorrect or falsified or distorted representations of statements. More particularly, the court stressed that the general personality right included the right to “one’s own word” and protected the individual from having statements attributed to them which have not made and which may compromise their self-defined claim to social respect (“selbst definierter sozialer Geltungsanspruch”). Upon a review of the press report in question, the court then found that Ms Herrman’s comments and theses had been correctly reflected as regards to the “choice of words, context, the thought process and general purport (Stoßrichtung)”.

The Bundesgerichtshof's press release can be found here (in German).

Merpel thinks that the court got it right and is pleased with this victory for free speech. This Kat however has some sympathy for Ms Herrman. Noone wants to be seen as having views that even remotely resemble those of the Nazi ideology and this Kat can understand why she took the matter to the courts to set the record straight.

Eminem vs Audi: Audi's ad "imported from Detroit"?

From Germany comes the news that US rapper Eminem is suing German car manufacturer Audi for allegedly using parts of Eminem's song "Lose Yourself" in an ad for the Audi A6 Avant car without the singer's permission. A spokesperson for Audi is quoted by German media as having said that the spot was only used "once" at the car's recent launch party in Berlin. Obviously this was once too often for Eminem's taste.

The spot in dispute is available on YouTube and you can have a look and listen by clicking here.

What appears to make the situation slightly more awkward for Audi is that a rather similar spot for US car maker Chrysler using "Lose Yourself" (with Eminem's permission) was recently shown during the US Super Bowl event. This ad is also available via YouTube and you can retrieve it by clicking here.


German website n-tv.de today cites a spokesperson for the Regional Court of Hamburg (Landgericht Hamburg) who confirmed that a law suit has been filed by Eminem's publisher Eight Mile Style (case reference 310 O 185/11). US website Billboard.com cites a spokesperson for Eight Mile Style who reportedly said that Audi's spot "actually feels inspired by elements of Chrysler's commercial campaign." According to the same report Eight Mile Style is seeking a cease and desist order with regard to use of Eminem's music as well as damages. Whether Chrysler is bringing its own claim has not been reported.

Merpel muses: with Chrysler's spot being so well-known, isn't it a trifle surprising that Audi just "imported from Detroit"?

Copyright infringing maps: "remove absolutely everything"

Several German websites report on an interesting case decided by the District Court of Munich (AG München, case reference 161 C 15642/09 of 31 March 2011). According to the court’s helpful press release of 26 April 2011 (please click here), the Munich court held that the use of a copyright protected map on a website without paying licensing fees to the claimant falls foul of Article 19a German Copyright Act.

By way of background: similar to Article 3 Copyright Directive, Article 19a German Copyright Act states as follows: ‘the right to make available to the public is the right of making a copyright work accessible to the public “on a wired or wireless basis” (in German: 'drahtgebunden oder drahtlos') in a way that members of the public may access the work from a place and at a time individually chosen by them’.

The claimant, an online map service provider, had objected to the defendant’s use of its copyrighted map on the defendant’s website since the defendant had not paid any licensing fees. The claimant had previously contacted the defendant and asked him to remove the map. The defendant had agreed and even paid damages to the claimant but while the defendant had deleted the direct link to his homepage, the map was nonetheless still available on the defendant’s server and could be found by third parties via Internet search engines. The court found that third parties still had access to the map in the sense of Article 19a German Copyright Act so that the defendant was liable for damages. Deleting the link from the defendant’s website in itself was not enough to prevent liability. The defendant had argued that he had removed the direct link and even had paid damages. He had not, however, known that he also had to delete the map from the server. The judge decided that the defendant’s behaviour amounted at least to negligence. The damages awarded amounted to fictitious licensing fees and the defendant also had to reimburse the costs for the cease and desist letters ('Abmahnungen') sent by the claimant’s lawyer.

Merpel is rather impressed with the court’s press release, which ends with an “excursion” explaining that unlawful use of third party copyright works can be 'very costly' and that in cases of infringement users should ensure that ‘absolutely everything has been removed’. Who says courts can’t explain things clearly?

ICE, ICE.... - the BGH and the citation of a design

Those of our readers that have been travelling by train in Germany may be familiar with the Intercity-Express or ICE high speed trains. The German Federal Supreme Court (Bundesgerichtshof) last week had to decide on a design right case relating to the depiction of an ICE type 3 (see left) train in a marketing brochure. On 7 April 2011 the Bundesgerichtshof held that depictions of designs are not permissible under § 40 (3) of the German Design Act (GeschMG) if they are merely used for advertising purposes (case reference I ZR 56/09). The claimant, Fraunhofer-Gesellschaft, had been seeking a declaratory judgement that German railway company Deutsche Bahn AG had no claims against it for having used photographs of ICE trains in an advertising brochure published by Fraunhofer-Gesellschaft. The relevant provision in the German Design Act § 40 (3) of the German Design Act (GeschMG) relating to the right of citation provides as follows: the rights conferred by a design right can not be exercised in respect of acts of reproduction for the purposes of making citations or for teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that the source is mentioned. By way of background: § 40 (3) GeschMG is shaped according to Article 13 (1)(c) of the Design Directive 98/71/EC and an equivalent provision can also be found in Article 20 (1) (c) of the Design Regulation (EC) 6/2002 as regards to Community Designs.

The Bundesgerichtshof took the view that § 40 (3) GeschMG required that there was a connection between the depicted design and the operations of Fraunhofer-Gesellschaft and that the photographs of the ICE trains that were used in the brochure had served as a quotation for statements made by Fraunhofer-Gesellschaft. Pure marketing however did not meet the requirements of a citation in the sense of § 40 (3) GeschMG. The information provided by the claimant in its brochure referred to the ICE train type 1 but a photograph of an ICE train type 3 was used. Consequently, the Bundesgerichtshof found that the depiction of the ICE train type 3 had only served marketing purposes and could not be seen as a permissible citation that served to illustrate the operations of the claimant.


The court’s press release relating to this case can be found here (in German). The moral of this story according to Merpel is rather more simplistic: use a photo of ICE type 1 when you are writing about ICE type 1. Use a photo of ICE type 3 when writing about ICE type 3, otherwise, do not try to invoke § 40 (3) GeschMG.

German Federal Patent Court decides in Neuschwanstein castle trade mark dispute

News in the trade mark dispute surrounding the German castle Neuschwanstein (see the IPKat's report here) .

By way of reminder: the Bavarian Castle Department (which is part of the Bavarian state government)has the task of regulating the souvenir trade connected to the famous Bavarian fairy tale castle and its surrounding area and registered the word mark "Neuschwanstein" in 2005. The German Federal Association Bundesverband Souvenir Geschenke Ehrenpreise e.V. (BSGE) - which describes itself as "a network of producers, wholesalers, exporters, retailers and trade representatives from the souvenir, sports clubs, trophy and festive items (industry)" - objected to this. Arguing that the Bavarian Castle Department's trade mark registration was akin to "censorship" of the Neuschwanstein souvenir trade, the BSGE filed for an invalidity of this mark at the DPMA. The DPMA (see IPKat report here) decided in the BSGE's favour and invalidated the mark, according to media reports, the DPMA found that "Neuschwanstein" was an "often used", non-distinctive term" and thus not capable to indicate trade origin of the goods and services marketed under the sign.

The German Federal Patent Court has now decided this matter and issued a press release confirming that it has upheld the DPMA's decision to cancel the "Neuschwanstein" trade mark. In its press release of 8 February 2011 concerning "Neuschwanstein" (case reference 25 W (pat) 182/09 of 4 February 2011) the court has provided the following information which this Kat has translated and summarised below.

The sign "Neuschwanstein“had been registered as a trade mark in 2005 for a multitude of goods and services. On 20 November 2007 the German Patent and Trademark Office decided on an invalidity application concerning this mark holding that the mark should be invalidated because it fell foul of § 8 (2) No. 1 German Trademarks Act (MarkenG) since it had lacked distinctiveness at the time of registration and still lacked distinctiveness now.

Upon appeal, the 25th Senate of the German Federal Patent Court upheld this decision and, inter alia, decided that the term "Neuschwanstein" described the castle Neuschwanstein which was commissioned by Kind Ludwig II in the municipality of Schwangau in the state of Bavaria with the castle being a world famous landmark of high (cultural-)historical importance.

As regards to services such as "travel services; catering/hospitality services and accommodation services", the term "Neuschwanstein" does not qualify for trade mark registration since the term could be seen as describing the characteristics of the services in the sense of § 8 (2) No. 2 MarkenG, that is their intended purpose or the geographical origin of rendering the services.

Designations of well-known tourist attractions such as "Neuschwanstein" furthermore lack the necessary distinctiveness under § 8 (2) No. 1 MarkenG concerning such goods that are usually offered in the proximity of such tourist destinations as souvenir articles or to satisfy the demands of tourist with regard to foods, drinks or further articles. This equally applies to services that are usually rendered and offered in a close proximity or in the context of such tourist attractions.

The court stressed that the term "Neuschwanstein" not only described a tourist sight but also a building that is a significant part of the national cultural heritage. The judges further held that designations of cultural sights that are of high importance and/or that are part of the national or international world cultural heritage are common property and as such cannot be monopolised or commercialised through trade mark laws. The court added that these sights usually are not distinctive enough for trade mark registration in the sense of § 8 (2) No. 1 MarkenG, even without a factual reference to claimed goods and services

Given that several aspects of this decision have fundamental importance, the Federal Patent Court allowed a further (partial) appeal to the German Federal Supreme Court (Bundesgerichtshof). On balance, this Kat believes that the court got it right but cannot help but thinking that the general idea of wanting to control the souvenir output surrounding the Neuschwanstein castle is not a bad one. How about having some kind of licensing committee when it comes to merchandise of such historical sights. Merpel, who likes her newly bought Neuschwanstein t-shirt (left), disagrees and thinks that this German Kat is nothing but a snob.... why not let the tourists decide what the want to spend their money on, rather than the Bavarian state?

Case reference : Bundespatentgericht, 25 W (pat) 182/09, delivered on 4 February 2011.

The court's press release can be found here.
The decision can already be retrieved in its entirety (German, PDF) by clicking here.

New German court to try chocolate rabbit disputes

While felines usually take pride of place on this weblog, and indeed most other places when the chance is there, it must be concluded that today was unquestionably Rabbit Day. One IPKat team member swiftly posted this item on the dispute between Lindt and Riegelein on the IPKat weblog, while another -- anxious to spread the word beyond the borders of Katland -- posted this analysis on MARQUES' Class 46 weblog, heavily read by leading confectionery brand-owners and their representatives. Rabbits, it seems, are in the air!

Given the gravity of this situation, and the acute pressure on its courts, the German government has decided to institute a new top-tier court for final determination of chocolate rabbit disputes: the Bunniesgerichtshof. This court will hear expedited appeals from the Bunniespatentgericht. Says the IPKat, this should keep the German judicial system more than a mere hare's-breadth from the threat of overload leading to chocolate rabbit meltdown. Asks Merpel, which has more hops? A Bunnie Court or a Kangaroo Court?

This bunny (litigation) never dies

The dispute between Lindt and their competitor Riegelein in Germany goes in the n-th round after the Bundesgerichtshof just overturned a decision by the Oberlandesgericht Frankfurt which did not find any likelihood of confusion between Lindt's 3-D bunny trade mark and Riegelein's chocolate bunny (and this is not even the litigation that led to the ECJ "bad faith bunny" decision; that one is in Austria between Lindt and an Austrian competitor, Hauswirth).

The parties are at it since 2002. Both the first instance court and the Oberlandesgericht (OLG) Frankfurt had denied Lindt's request for an injunction, basically arguing that the word mark "Lindt" visible on the 3-D trade mark precluded any likelihood of confusion between the mark and Riegelein's bunny. In a decision of October 2006, the BGH reversed for the first time: the overall impression of the mark was relevant, not the word mark alone. The case was sent back to the OLG Frankfurt.

Lindt submitted a sample of a Riegelein bunny in the second oral proceedings, and requested that the sale of bunnies "such as the one submitted" be enjoined. The OLG Frankfurt, in its second decision, still did not find any likelihood of confusion, comparing the mark with the Riegelein bunny and noting that the colour of the bunnies was different, Riegelein's bunny was lacking the red ribbon and the facial expression of Riegelein's bunny was "cheerful", while Lindt's bunny was "dignified" (I couldn't make this up if I wanted to).

Lindt appealed again to the BGH. It turned out that the bunny submitted in the second oral hearing was lost (hungry court clerk?). The BGH was not amused, noting that it could not examine whether the OLG's decision had been correct if the basis for the decision was not in the file. More importantly for trade mark law, it also held that the OLG had insufficiently explained why, in view of a demoscopic survey that showed that a large majority of the public associated a gold bunny in the shape of the mark without a red ribbon and without any facial features with Lindt, the lack of ribbon and the smiling face of the Riegelein bunny could exclude any likelihood of confusion.

So here we go again. Back to OLG Frankfurt for the third round. I don't think they are cheerful like a Riegelein bunny in Frankfurt right now.

Some culinary IP news....

Some culinary IP news....


First from Sweden: Swedish online publication "The Local" reports that Lindahls dairy in Jönköping, Sweden, has paid a 77 year old Greek man the settlement sum of about two million Swedish kronor (about £180.000) after it had transpired that the dairy company had used the Greek gentleman's photograph to advertise its Turkish style yogurt in Sweden for about 8 years without him knowing anything about it. It appears that an advertising agency had used the photo of Minas Karatzoglis without his knowledge or consent.

Minas Karatzoglis, who lives in Greece, was made aware of the use of his image on the yogurt through a friend who lives in Sweden and who had recognised him. Mr Karatzoglis had initially sued the dairy company for a higher sum in damages and had stressed that he was not Turkish, but Greek and also lived in Greece so that the use of his photograph on a Turkish yogurt was clearly misleading. Mr Karatzoglis, we learn from the German paper Stern, will use the settlement sum to supplement his pension and support his children. Stern also reports that Mr Karatzoglis often travels within Greece and visits markets where tourists regularly take photos of him due to his beautiful beard. One of these photos obviously made its way to Sweden. The dairy company is now trying to recover damages from its advertising agency.


In other culinary news, this time from Germany, we learn about a potential trade mark skirmish between fast food giant McDonald's and the guild of butchers (Fleischerinnung) from Nuremberg Germany over the use of the mark "Nürnburger" for fast food burgers with sausages. This delightful story is featured in the online publication version of the Roth-Hilpoltsteiner-Volkszeitung. So,"Nürnburger" is clearly a pun on "Nürnberg", the German name of the city of Nuremberg which is famous for its grilled sausages ("Nürnberger Rostbratwürste"). While McDonald's is using the mark legitmately, the Fleischerinnung has also been using "Original Nürnburger" and "The Original Nürnburger" on sausages and wanted the brand for itself.

Unfortunately for the butchers, Bratwurstfabrik HoWe am Hafen, the sausage manufacturers who are producing the sausage burgers for McDonald's, have acquired the trade mark rights in the mark "Nürnburger" from another sausage giant, Hans Kupfer KG. Hans Kupfer KG had already filed a German trade mark for "Nürnburger" in 2000 (German trade mark No. 30017329 “Nürnburger” of 6 March 2000 covering sausages in class 29) and Bratwurstfabrik HoWe itself has now also filed for a German trade mark for "Nürnburger" (German trade mark application No. 3020100377003 “Nürnburger” covering class 30 and filed on 23 June 2010). Hans Kupfer KG itself also produces Nueremberg sausages after the traditional recipe.

There is also "The Society for the Protection of the Nürnberger Rostbratwürste" (Schutzverband Nürnberger Rostbratwürste) which monitors that the sausages are made in Nueremberg, have the correct size (8 cm) and are made of the correct ingredients to ensure that only legitimate sausages are sold as original Nueremberg sausages. Interestingly, both trade mark owners, Kupfer und HoWe (the one supplying McDonald's with the sausages), are members of this society and so might not be much help for the Fleischerinnung.

So will the brand "Nürnberger Rostbratwürste" be damaged by the use of "Nürnburger" on fast food?

Difficult to tell - but Manfred Seitz, a spokesperson for the Nuremberg Fleischerinnung, who is not happy about the fastfood version of the traditional Nuremberg sausages very much fears that this "unique" brand could be "diluted". Mr Seitz is quoted as saying: "... this is as if you pass off an Opel as a Mercedes". (Opel being the German version of a Vauxhall.) Surely the wurst case possible ...

DSS' patent out of the money in Germany, too

Regular IPKat readers will already be familiar with Document Security Systems (DSS), which has been attempting to enforce their European patent (EP 455 750) relating to anti-forgery measures, and in particular against the European Central Bank, who DSS would argue are either already using or at least will want to use their patented technology in banknotes. The ECB has responded by attempting to have the patent revoked in each state in which it is in force. It has, so far, succeeded in the UK (noted here), in France (noted here) and in Austria (not noted), but failed in the first instance in the Netherlands (noted here) and Germany (noted here).

The ECB can claim another (and final) victory in Germany now, the BGH having overturned the decision of the Bundespatentgericht. In its judgment of 8 July 2010, the BGH comes essentially to the same conclusion as the English and Dutch courts, i.e. that the patent as granted contains added matter over the application as originally filed (the grounds for the decision are not yet available; press release here). The judgment is interesting insofar as the BGH has lately mostly overruled decisions of the Bundespatentgericht invalidating patents. Yes, adds Merpel, but mostly if the invalidity was based on lack of inventiveness; this challenge succeeded on other grounds.

As another Kat has noted earlier, these types of disputes involving the same facts in several jurisdictions, with courts coming to opposite conclusions, really are an argument in favour of centralised patent litigation. And, if I may add, sorry, Germans, but taking three years for an appeal (the Bundespatentgericht judgment dates of 27 March 2007) is too long.

Germany: liability for an unsecured private WiFi network

An interesting case has been decided by the German BGH on 12 May 2010. A private individual left his home WiFi router unsecured (on factory default settings). Someone downloaded a copyright protected piece of music using the unsecured WiFi spot. The owner could show that he was, at the time of the download, on vacation and could therefore not have been the one downloading. The owner of the copyright in the song sued for copyright infringement, asking for an injunction and financial damages.

The first instance court both issued an injunction and found the owner of the WiFi spot liable to pay damages. The second instance court reversed and dismissed the claim of the copyright holder.

The German Supreme Court (BGH) distinguished between the injunction and the financial damages: the owner of the WiFi spot could be enjoined, but was not liable for financial damages. He was not required to use the latest, state of the art security technology to secure his WiFi router, but at the time of the installation common precautions against the use of the WiFi spot by unknown third parties had to be taken (this means using the WEP encryption option, I guess). The defendant could be forced to take the necessary precautions and has to bear the legal costs for the lawyer's letter by the copyright owner (Abmahnkosten). He was a "Störer", but not a "Täter", i.e. not personally committing the infringement. He also was not an abetter to copyright infringement, because he lacked the necessary intent to support the infringement. Therefore, he could not be held liable for financial damages.

Whether you should leave your WiFi home network open is hotly debated (it could also be against the terms of use of your ISP). Some advocate that the openness of the Internet and the sharing culture speak for leaving WiFi networks unsecured. Others warn against the dangers this might expose your computer to. In Germany, there is now another reason for switching on the encryption.

Press release of 12 May 2010 here.

BGH: Google's image search is no copyright infringement

While Google had a bit of bad press in Germany over the last week or so due to it collecting publicly available (!) W-LAN data for its Google Street View product, the search engine provider will be pleased with the German Federal Supreme Court (Bundesgerichtshof, BGH) decision of today's date holding that Google's image search does not amount to copyright infringement (case reference I ZR 69/08 – Vorschaubilder of 29 April 2010). Please find below this Kat's translation and summary of the BGH's press release of today's date.

The first civil senate of the BGH, which is inter alia responsible for copyright matters, has today decided that Google is not liable for copyright infringement where copyright protected works are displayed as preview pictures (thumbnails) in Google's image search results.

Google's Internet search engine includes a text driven image search function which allows users by using search terms to search for images, which third parties have published on the Internet in connection with the search term. The images revealed by the search engine are displayed in the search results as scaled down preview pictures (so-called thumbnails) which have a smaller pixel size than the images shown on the original website. The preview pictures include a link which allows the user to access the website which displays the original photo. To shorten the search process, Google searches the Internet in regular intervals for images and then stores these images on its own servers. This makes it possible that a search result including such preview pictures can be displayed promptly after an Internet user conducts a Google image search using a search term.

The claimant in the proceedings is an artist who maintains a website which displays her own works. She complained that Google had displayed her works as thumbnails whenever her name had been entered as a search term into Google's search engine.

The lower instance courts decided in Google's favour. While the appeal court found that Google was infringing the claimant's copyright in her works, it nonetheless found that the artist's claim was an abuse of rights under Article 242 German Civil Code (BGB). On further appeal the BGH also decided in Google's favour. The BGH went one step further than the court of appeal and took the view that Google did not even infringe the artist's copyright. The BGH agreed with the court of appeal that the claimant had neither made an express nor an implied legal declaration ("rechtsgeschäftliche Erklärung") in which she had authorised Google's use of her works as preview pictures via Google's image search. However, the BGH held that the reproduction of the images as preview pictures, while encroaching on the artist's right of presentation of her works under Article 19a German Copyright Act (UrhG), was nonetheless not unlawful ("rechtswidrig") because the defendant (Google) could interpret the claimant's actions (even without a legal declaration) as consent to the display of her works in Google's image search results. The court came to this conclusion since the claimant had made the content of her website accessible to search engines and had not made use of the technical possibilities available to her that would have allowed her to except her works from being searched and displayed by search engine providers.

For those cases where the images found and displayed by a search engine had been posted by unauthorised third parties, the BGH referred to the ECJ's recent guidance in its AdWord decisions in Google France/Louis Vuitton (23 March 2010, C-236/08 - C-238/08, para. 106 pp) where the ECJ had held that the liability of a referencing service provider, such as Google, may be limited under the E-Commerce Directive 2000/31. In light of the ECJ's guidance, the BGH ruled that a search engine provider may only be liable (for copyright infringement) once it had obtained knowledge of the unlawful nature of the data it had stored (IPKat addition: and then did not act expeditiously to remove or to disable access to that data).

This is certainly a good day for Google in Germany. At the same time, this decision may serve as a reminder to website owners to learn more about the technical possibilities available to them to protect the content of and images displayed on their websites, even though the court seems to ask for quite a lot here. Does everyone who has his own website know how to work with meta-tags etc? Can you really ask owners of websites to actively engage themselves in preventing search engines from accessing their content?

After its decision in the Beta Layout AdWord case last year (see the IPKat's report here), where the BGH had taken the view that the average internet user was rather technology savvy and familiar with Google's layout and search functions, the BGH has yet again adopted a technology friendly approach. Having said that, this Kat is very interested to see the full decision and in particular the court's arguments. I cannot help but thinking that the BGH has adopted a very broad definition of consent here. It remains to be seen how this decision will sit within the wider context of personality right and data protection laws.

To read the BGH's press release in its German entirety, please click here.

Friday frivolity: Beyonce's pirated bikini

In what has to be one of the more bizarre copyright disputes, the underwear manufacturer Triumph sued Sony because Beyoncé was wearing copyright infringing underwear in her music video "Video Phone". Seriously.

The design in question by Bulgarian designer Iskren Lozanov is shown on the right, the music video below (the infringement occurs at about 0.50'). This week, the 7th Civil Chamber of the Landgericht Munich upheld an ex parte injunction barring Sony from distributing the "Video Phone" clip in Germany.

Triumph argued Beyoncé was wearing an unauthorized reproduction of the Iskren Lozanov design. Sony countered that both designs were inspired by Picasso, but otherwise, there were few similarities. The slips, in particular, were wholly different. The judge disagreed: the Lozanov design was highly original and enjoyed a wide scope of protection, and was therefore infringed by the underwear worn by Beyoncé.

Sony's lawyer announced that, after consultation with Beyoncé, he would most likely appeal the decision.

The IPKat thinks that studying the file for this case must have been more fun than your average pharma patent case. Merpel adds, if you weren't a cat, I'd call you a chauvinist pig.



German news article here

Copyright struggle about "Mein Kampf"

Some of our readers may recall the IPKat's reports on the Zeitungszeugen case which concerned a copyright battle between the Bavarian State government and a British publisher relating to the re-publication of historical Nazi newspapers in an educational reprint series. (see the IPKat's earlier posts here, here and here). In that case, the Regional Court Munich I (Landgericht München I) - partly - rejected the Bavarian state government's attempt to use copyright laws to prevent educational reprints of Nazi newspapers 'Voelkischer Beobachter' and 'Der Angriff'.

It appears like history is repeating itself: according to numerous media reports, the Institut für Zeitgeschichte (Institute of Contemporary History, "IfZ"), a German history institute based in Munich, has announced that it is preparing an annotated version of Adolf Hitler's controversial book "Mein Kampf" (in English: "My Struggle") for publication in Germany after 2015. Edith Raim , a historian with the IfZ is quoted as saying that an annotated version of Hitler's book would help to inform this and future generations about the evils of the dictator's racist ideologies.

It should be noted that "Mein Kampf" can only be re-published when the copyright held by the Bavarian State government (more precisely the Finance Ministry) will expire in 2015 - 70 years after Hitler's death. The Bavarian State government took over the rights of the main Nazi party publishing house Eher-Verlag after the end of World War II as part of the Allies' de-Nazification programme.

Not surprisingly, the Bavarian State government already announced in a statement that it will take a "restrictive position" and that it had not given the IfZ institute any permission to re-print the book. The statement says that in its view "...following the expiration of the copyright in 2015, the spreading of National-Socialist ideas in Germany will remain forbidden and punishable under the Criminal Code...". It further appears that the Bavarian State State government would seek to ban the re-publication in court. According to a report by the Bavarian Broadcasting Corpration, Bayerischer Rundfunk, Prof. Horst Möller, who is the Director of the IfZ, hopes to have completed his academic annotation before the copyright expires. He appears to hope that this would then allow further discussions with the Bavarian State government.

Looking at the Bavarian State government's strategy in the Zeitungszeugen case, this Kat wonders whether Prof. Möller might be a little too optimistic.

This Kat personally has a rather uneasy feeling about re-publishing any kind historic Nazi content which can be spread further - potentially without any annotations or comments, so why not allow an annotated scholarly version by an academic institution, in particular since the book can be bought in other countries? Looking at the outcome of the Zeitungszeugen case - where it appears that the Bavarian State government did not bring any criminal proceedings after the Munich Court's civil law decision - the question remains whether this matter should really be decided by the courts?

PS: The illustration shows the cover of the English translation of the book.

Liability for links and adwords, German style -- and a visit to Google Translate

From the IPKat's talented German friend Uli Hildebrandt (of Juve’s No.1 IP law firm of the year Lubberger Lehment) comes news of a new decision from the Bundesgerichtshof -- that's the top German appellate court -- of 7 October 2009. Affectionately known to German lawyers by its citation BGH (I ZR 109/06 - Partnerprogramm), the Court has ruled as follows:

"(a) Erscheint bei der Eingabe eines Suchbegriffs in der Trefferliste einer Suchmaschine ein Text, dem der Verkehr eine markenmäßige Benutzung des für einen Dritten als Marke geschützten Begriffs entnimmt, so genügt der Markeninhaber mit dem Vortrag dieses Geschehens im Regelfall seiner Darlegungslast für eine markenmäßige Benutzung seines Zeichens durch den Inhaber der unterhalb des Textes angegebenen, über einen elektronischen Verweis (Link) zu erreichenden Internetadresse. Macht dieser geltend, er benutze den betreffenden Begriff auf seiner Internetseite nur in einer beschreibenden Bedeutung, trägt er hinsichtlich der dafür maßgeblichen konkreten Umstände die sekundäre Darlegungslast.

(b) Unterhält ein Unternehmen ein Werbepartnerprogramm, bei dem seine Werbepartner auf ihrer Website ständig einen Link auf die das Angebot dieses Unternehmens enthaltende Internetseite bereitstellen, so sind diese Werbepartner jedenfalls dann als Beauftragte des Unternehmens i.S. von § 14 Abs. 7 MarkenG anzusehen, wenn ihnen für jeden Besucher, der über diesen Link zu dem Unternehmen gelangt und mit diesem einen Geschäftsabschluss tätigt, eine Provision gezahlt wird und der betreffende Werbepartner erst nach einer Überprüfung durch den Unternehmer selbst, der den Werbepartnern eine Auswahl für die Gestaltung der Werbemittel vorgibt, in das Partnerprogramm aufgenommen wird. Die Haftung nach § 14 Abs. 7 MarkenG beschränkt sich dabei auf das Handeln des Beauftragten auf eine bestimmte zum Partnerprogramm angemeldete Website, wenn nur über diese Website getätigte Links abgerechnet werden und der Auftraggeber auch nicht damit rechnen muss, dass der Beauftragte noch anderweitig für ihn tätig wird".

Since, says Uli, this all sounds a bit complicated even for Germans, he has kindly fed it through Google Translate, which renders it thus:

"(a) appears when entering a search term in the results of a search engine a text, the traffic being a trade mark be used for a third party removes the trademarked term, the trademark owner, with the presentation of this event is sufficient as a rule, his explanation of his load for a trade mark be used sign by the owner of the given below the text, an electronic reference (link) to reach Internet. Makes this claim, he used that term on its website only in a descriptive meaning, it adds to the relevant factors regarding the specific presentation of the secondary load.

(b) If the company has an affiliate program, providing its advertisers with the constant on its website a link to the website containing the offer of this company, these advertisers are in any case be considered as representative of the company in view of § 14 paragraph 7 MarkenG if them for each visitor who passes through this link to the company and makes a deal with this, a commission is paid and the relevant advertisers only after a review by the entrepreneur himself, the advertising partners a selection for the design of advertising claims to be included in the partner program. Liability under § 14 paragraph 7 MarkenG is limited to the actions of the agents to a particular Affiliate registration site if made only through this website links are settled and the client does not expect to be that the agent or otherwise for him will operate."

There are two interesting points here, Uli tells us:

(a) Despite several proceedings pending at before the Court of Justice of the European Communities, the BGH still dares to rule in cases involving adwords. If a third party’s trade mark appears (as a trade mark) in the advertising text under the link address, the advertiser commits a trade mark infringement.

(b) The BGH clarifies an issue concerning liability for links. A company that pays commission to another company which has a link to the first company’s offers and infringes a trade mark with this concrete link is itself liable for the link.

"Am I clearer than the BGH?", he asks. Yes, comes the answer, but that's not difficult ...

The IPKat doesn't have problems with national courts daring to decide issues which are, explicitly or by implication, awaiting rulings by the European Court of Justice: if a national court were bound to suspend judgment until the ECJ had ruled, the strategic reference of questions for preliminary rulings could fast became a popular strategic tool among litigants (particularly in multi-jurisdictional disputes) that needed way of stalling for two years or thereabouts. However, he's uncomfortable at the thought of a case being wrongly decided where an earlier dispute has been referred for a preliminary ruling but that ruling does not come out until after a later, non-referred and non-suspended action has been determined. This offends his Aristotelian sense of distributive justice which leads him to prefer that similar disputes are resolved in a consistent manner. Merpel says, at least there's not much worry that the ECJ will be greatly influenced by the jurisprudence of the Bundesgerichtshof, or indeed of any other respected appellate court in Europe ...

Translation for dummies here

Translation for humans here

Copyright snippets

Yodelling copyright victory

The IPKat learns from the Daily Telegraph that a Munich court has decided that the heirs of Karl Ganzer, who wrote Kufstien Song, a German yodelling song containing the yodel "Holla-räe-di-ri, di-ri, di-ri" and once voted the best German song of all time, are entitled to the royalties, and not the song's publisher. The publisher argued that he 'jazzed up' the song, and therefore was entitled to a cut. What clinched it was a 1980s document where the publisher admitted that Ganzer was the author of the song.

The IPKat wishes he'd been a fly on the wall at the trial. All that yodelling... He notes though that even though this may be a highly popular song, the royalties only seem to amount to £3,000 per annum.

Author's own music taken down by YouTube

Proof that the silly season is upon us - the Mirror reports that the music producer Calvin Harris is not a happy bunny after the BPI arranged for YouTube to remove his own music from his YouTube account , citing copyright infringement. He has not kept his feelings to himself, but the IPKat won't report precisely what he said.

Oh dear..says the IPKat

Bad news for Lego in Germany

The IPKat's scholarly friend Guido Westkamp has drawn his attention to a decision last week by the Bundesgerichtshof (the German Supreme Court) that Lego toy bricks can no longer be registered as three-dimensional trade marks (Decision of 16.7. 2009 – I ZB 53/07 and 55/07). The full text of the decision is not yet available, but you can read all about it in German via this press release.

Right: Mona Lisa in Lego, by the talented and imaginative Italian artist/photographer Marco Pece. Would works like this have constituted trade mark use? And would they be regarded as taking unfair advantage, without due cause, of the reputation or distinctive character of the Lego brick trade marks? Perhaps now we shall never know.

Says Guido:

"The court asserted that, in assessing registrability as a three dimensional trade mark under Article 3(2)of the Trade Marks Act, the square form of the bricks must be disregarded altogether (this being the basic form of any such product in the respective class for toys), whereas the 'pimples' on the brick's upper side were purely functional. This rulng confirmed an earlier decision of the Patent Office which ordered revocation of the mark. Effectively,this means that Lego can rely neither on trade marks nor on unfair competition (the latter point having been decided in 2004) in seeking to protect its brick shapes".

Exciting things to do with Lego bricks here and here

Lego city of the future here
An impossible Lego model? Click here

How Lego bricks work here

File sharing site RapidShare vs GEMA

The IPKat last week reported on a decision of the Regional Court of Hamburg in which the court fined the file sharing site RapidShare AG 24 million Euro for copyright infringement in respect of 5,000 tracks which had been shared through the site.


The Hamburg court had taken the view that it was the legal "duty" of the hosting service (not the copyright owners) to ensure that no copyright infringement was taking place via the site. In its decision, the court apparently referred to a statement by GEMA, the German performance rights association, which had claimed that the necessary 'scanning' software (which can detect copyright infringing material) was already available.

RapidShare has now issued a press release in which it announces that it will appeal the Hamburg court's decision and if necessary (and/or possible) take this matter to the German Federal Supreme Court and the ECJ. RapidShare disagrees with the court's and GEMA's view and seriously questions how a file sharing site can practically fulfil its legal "duty" to monitor its site for potentially infringing content, particularly when it comes to monitoring hidden data files, checking links and content on an internet forum. Furthermore, RapidShare claims that GEMA did not allow RapidShare to test the scanning software.


The cat on the right attempts to scan the IPKat for infringing content. Image taken from www.catster.com

An interesting case, with potentially far reaching consequences.

German file-sharing site fined 24m euros

The Register reports that a German court has fined file-sharing service Rapidshare 24 million euros for copyright infringement in respect of 5,000 tracks which were shared through the site. The court has held that it is the responsibility of the hosting service, and not the copyright owners, to ensure that copyright infringement was not taking place.

The IPKat has relatively little sympathy for file-sharing websites when they know that the main use for their websites is to exchange copyright material. However, he wonders what this judgment means for services like UTube where some files may infringe but others may either be completely original, or at least involve transformative use.