Enforcing Intellectual Property Rights in German Private Law: Mechanisms and Remedies, Slides of Civil Law

Download Enforcing Intellectual Property Rights in German Private Law: Mechanisms and Remedies and more Slides Civil Law in PDF only on Docsity!

Enforcement of Intellectual

Property Rights

under German Private Law

Intellectual Property

=

„geistige Eigentumsrechte“?

• In German, used to be a colloquial term

only

• Analogy to property was thought to be

inappropriate

• Renaissance of the term now via

American and European law

• Pure semantics? Yes and no...

The rightholder’s private law

remedies

• Injunction: order to
  • cease infringing and/or
  • stop interference with the right (prevent further infringements; provide information…)
• Restitution of the infringer’s unjust enrichment:

Reasonable licence fee

• Damages (in case of wilful or negligent

infringement)

• Lost profit or
• Reasonable licence fee or
• Account of the profit made by the infringer

Claims against third parties

• In some cases, someone who has made

possible an infringement is liable as infringer

himself

• Injunction available against a third party in case

of infringements that are “gross and easily

perceptible” (BGH, March 11, 2004 – I ZR

304/01).

• Content industry is currently lobbying for

information rights against internet service

providers in general

Sources of the applicable law

• Civil Procedure Act (Zivilprozessordnung)

• Statutes concerning the relevant IP right

(Patent Act, Copyright Act, etc.)

• Civil Code (Bürgerliches Gesetzbuch,

BGB)

• Case law

Fact-finding during civil litigation

Under the Code of Civil Procedure (ZPO)

• each party is obliged to comment on sufficiently detailed (“substantiated”) allegations by the other party, Section 138 (3) ZPO
• at the request of one party the court can order the other party or a third person to present documents or other evidence to the court (Sections 142 and 144 ZPO)

Rights to be informed under the BGB and IP laws

• against the infringer
• in some cases, against a third party who has made the infringement possible
• often balancing of interests by the courts

Rights to be informed

• Scope:
  • Extent of the infringing activities
  • Identity of other infringers (suppliers, commercial customers)
• Form:
  • Statement by the infringer; no access to infringer’s business files for the rightholder
  • Court can order confidential data to be disclosed only to a third party who is under a professional duty to secrecy (usually, an accountant)
• Time:
  • If the request for information is declined the rightholder usually needs to obtain a final court decision confirming his right to be informed
  • In exceptional cases the right to be informed can be enforced through an interim injunction

The European Directive „on the

Enforcement of Intellectual

Property Rights“ (2004/48/EC)

• To be implemented by 29 April 2006
• National provisions that are more

favourable for the rightholders remain

unaffected

Scope

• Private law, not criminal law
• Infringements of “intellectual property” rights
• Commercial and non-commercial infringements
  • Commercial infringements are those “carried out for direct or indirect economic or commercial advantage”; this is said to “normally” exclude acts carried out by end-consumers acting in good faith
  • More far-reaching measures in case of (alleged) infringement on a commercial scale
  • Member states have the option to extend the more incisive measures to non-commercial infringements

Directive 2004/48: An overview

• Injunctions mandatory; possibly extension of

third parties’ liability

• Computation of damages: few and

comparatively vague provisions, will probably

not entail any changes to German law

• Detailed provisions on the fact-finding process
• Other (codes of conduct for the industry,

publication of court decisions, et al.)

Evidence (Art. 6)

• Each party can file for the court to order

the other party to present evidence to the

court

• Infringements on a commercial scale:

Courts can order one party to present

bank, financial and commercial documents

Measures for preserving

evidence (Art. 7)

• Orders against the alleged infringer
• Rightholder needs to present “reasonably

available evidence to support his claims”

• Then „prompt and effective provisional

measures“, e. g., the seizure of infringing

goods, materials used for their production or

distribution and documents relating thereto

• Without the other party having been heard

beforehand if necessary, in particular

• if any delay is likely to cause irreparable harm
• or if there is a demonstrable risk of evidence being destroyed

Right of information (art. 8)

• Information about distribution channels, the amount of infringing goods and the prices charged
• From persons who were

a) Found in possession of the infringing goods on a commercial scale; b) Found to be using the infringing services on a commercial scale; c) Found to be providing on a commercial scale services used in infringing activities, or d) Indicated by a person referred to under a)-c) as being involved in the production, manufacture or distribution of the goods or the provision of the services.

• Balancing of interests by the courts (claimant’s request needs to be „proportionate“)

Provisional and precautionary

measures (art. 9)

• Preliminary injunctions against
  • the alleged infringer
  • „an intermediary whose services are being used by a third party to infringe an intellectual property right“ (except for infringements of copyright or related rights; for these, art. 8 of the directive 2001/29 remains authoritative)
• Seizure or delivery up of allegedly infringing goods
• Infringements on a commercial scale: order for the precautionary seizure of the alleged infringer’s assets and the communication of bank, financial and commercial documents possible
• In appropriate cases the concerned party does not need to be heard beforehand