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Christian Wulff, a former German Federal President who resigned in February 2012, caught the attention of the public in May 2015 with his announcement that he was back together with his ex-wife Bettina Wulff. Following this, the press published a photograph of him pushing a cart at the parking lot of a supermarket next to his wife, Bettina Wulff. Mr. Wulff felt hurt in his right to privacy. He filed a lawsuit aiming to prohibit the publication of this private photo. In first and second instance Mr. Wulff was successful; the German Federal Court now overruled the previous decisions and decided that Mr. Wulff’s right to privacy were not infringed by the publication of the photo.

Legal Assessment

The German Constitution protects both individuals’ private sphere and the freedom of press. Moreover, the German Copyright Act for Art Work and Photography (“Kunsturhebergesetz”) stipulates that the press may publish photos where the depicted person has agreed with its publication (Section 22). Without such consent, publication is only allowed if the image refers to history, and where no legitimate interest of the depicted person is infringed (Sections 23(1) no. 1 and Section 23(2) of the same law). The German Federal Court thus had to decide between the principles of the German Constitution, and whether the legal conditions for the lawfulness of publication of the photo without consent of Mr. Wulff were fulfilled in the present case.

On 6 February 2018, the German Federal Court ruled that the publication of the photo is lawful. The image refers to a historic figure and could thus be published without his consent, pursuant to Section 23(1) no. 1 of the German Copyright Act for Art Work and Photography. The interest in Mr. Wullf’s person has not expired with his resignation in 2012, but instead, Mr. Wulff remains a public figure, still attends public events and is recognized in his position as a former Federal President of Germany. Moreover, no legitimate interest of Mr. Wulff exists in avoiding the publication of the photo. The picture was taken in a public space and is to be attributed to Mr. Wulff’s social sphere. It does not show Mr. Wulff in an unkind or private way, but would rather convey the image of a providing father.

Another key reason for the decision of the Federal Court was the fact that Mr. Wulff informed the public himself about his private and family life not only in the past but also in the present, which shows his content to having these issues publicly discussed. Furthermore, the journalistic worth of the article is the discussion about the distribution of roles between man and woman and especially between husband and wife, which is a discussion of public interest.

Conclusion

Once a show-off, forever prey of paparazzi? Can – or should – the past consent of famous people to public discussions about their private life lead to their every step being followed and photographed? Most people would probably tend to answer negatively. In the present case, however, Mr. Wulff was the one who released to the press very private news about his relationship with his wife. This was the trigger to the paparazzi, as considered by the Federal Court. The present decision sends a clear sign: there is already a general public interest in following public figures; their privacy is thus already limited when compared to other people that do not occupy public positions. If they show they are open to being on everyone’s tongue, they shall carry the consequences.

Back in 2015 Constantin Film AG, the production company of the German movie „Fack ju Göhte“, filed an European Union trademark application (“EUTM”) for its movie title „Fack ju Göhte“ with the European Union Intellectual Property Office (“EUIPO”). The EUTM application was refused by the EUIPO based on an alleged infringement of public policy and common decency. On top of that, EUIPO was of the opinion that the title of the movie is an offensive insult that would damage the German highly respected writer Johann Wolfgang von Goethe posthumously. Constantin Film’s appeal against this decision was also not successful, so that they now brought that case before the General Court of the European Union.

The Facts: Protection of Word Trademarks

Since Article 7(1)(f) of the European Union trademark regulation (“EUTMR”) prohibits the registration of trademarks which infringe public policy or morality, the core key was whether the General Court of the European Union classifies the movie title as immoral in the sense of Article 7(1)(f)  EUTMR.  The purpose of Art. 7 EUTMR is in particular to ensure the public interest that adolescents will be protected from being confronted with words that are offensive or disturbing. Therefore the question whether or not immorality is given depends on the relevant public and that is the average consumer who the EUTM is meant to address.

Trademark registrations are prohibited for all signs that are degrading, vicious or racial. Since “Fack ju” can be understood as a misspelling of the expression “Fuck you”, an offensive expression that insults the dislike for another person which is usually used with the intention to hurt or degrade someone, examiners of the EUIPO saw the movie title and EUTM-application as an offensive insult of the German writer Goethe. In this respect the word „Fuck“ had already been confirmed as a violation of European trademark law in several other judgments. The EUIPO rejected in the past EUTM- applications like “fucking freezing!” and “FUCK CANCER”.

Constantin Film contradicted that the decision of whether the movie title actually conflicts with good morals or not has to be determined as a whole and not only by analyzing one part of it. They argue that the expression “Fuck you” has neither a sexual meaning nor can be considered as insulting in the present case, but is used as a synonym for school frustration in context with the word “Göhte”. It further argued that this understanding is confirmed by the cheerful and entertaining character of the movie which in no way refers to the writer in a disrespectful way.

The Ruling

As expected, the General Court of the European Union denied protection to the expression “Fack Ju Göhte” as a word trademark on 24 January 2018 and once again confirmed that immoral and degrading expressions cannot be protected by European trademark law.

The Court stated that neither the special spelling nor the intended irony can mitigate vulgarity. Moreover, a breach of public order or morality must be determined by the trademark itself and in connection with the goods and services for which it is to be registered. The goods and services in question are those of daily use, e.g. games and clothes so that not only people who watched the movie, but rather any person shall be taken as reference, and it cannot be guaranteed that these people in general would recognize the trademark as a title of a successful film and as a joke. As a result, the average consumer will rather see the sign as the commonly used English expression “fuck you”, which is immoral and therefore cannot be registered as a trademark pursuant to Art. 7(1)(f) EUTMR.

 

 

 

On 1 March 2018, new arbitration rules of the German Institution of Arbitration (“Deutsche Institution für Schiedsgerichtsbarkeit“, “DIS”) will come into force. The revised DIS Rules are designed to suit the needs of both domestic and international parties. They also aim to enhance the efficiency of arbitration, providing proceedings that are non-bureaucratic, flexible and open to party autonomy.

IP arbitration is a growing trend. Parties to a licensing agreement, to a technology transfer agreement or even competitors fighting over the amount of FRAND royalties for a Standard Essential Patent may wish to refer their dispute to arbitration to keep the dispute confidential and to have IP experts solve the matter as arbitrators. The DIS arbitration rules are not specific to any sector or type of dispute and are also suitable for IP disputes.

View the key amendments to the DIS arbitration rules in the following article by our Arbitration experts Dr. Mark C. Hilgard, Dr. Jan Kraayvanger, Armineh Gharibian, Dr. Nadine Pieper und Ana Bruder:

https://www.mayerbrown.com/The-2018-DIS-Arbitration-Rules-02-08-2018/

Now that the time of the year has come, it seems like everything is all about finding the perfect gift, decorating your house in the most beautiful Christmas colors, baking Christmas cookies and of course, going to Christmas markets. But even while we are enjoying the peaceful and contemplative atmosphere – and obviously to drink one or the other mulled wines we are not spared from being confronted with the German trademark law. Insofar we would like to conclude this year with  a decision of the German Patent Court which dates back to 2006, but which perfectly fits into the advent and Christmas season.

The Case

“Christkindlesmarkt” was registered as a German trade mark with the German Patent and Trademark Office (GPTO) for, among others, non-alcoholic and alcoholic beverages. On 10 December 2003, the GPTO cancelled this trade mark based on absolute grounds after a third party had lodged a cancellation request with the GPTO. The examiner of the GPTO took the view that the mark was not eligible for trademark protection, as the relevant public would perceive the mark only as an indication of goods offered on Christmas markets, which are also known as Christkindlesmarkt. The lovely street markets associated with the celebration of Christmas during the four weeks of advent have their origin in the South of Germany, but are now being held all over Germany. Accordingly, the German public would perceive products labeled with the term Christkindlesmarkt only as products which are typically offered on such Christmas markets, but not as an indication of origin for a specific undertaking. Therefore the mark should never have been registered with the GPTO.

The owner of the mark disagreed and filed a complaint against this cancellation decision with the German Federal Patent Court. The owner took the view that although Christmas markets are called “Christkindlesmarkt” in the South of Germany, this could only prevent registration of the mark for services like organizing and performing such Christmas markets, but not for the so labeled goods in question.

The Ruling

According to Section 8 (2) No. 1 of the German trade mark law (MarkenG), trade marks shall be excluded from registration which are devoid of any distinctive character for the goods or services. Accordingly, only marks with a distinctive character by their nature or by the use made of them are capable of distinguishing their goods from the goods of other undertakings and thereby capable of registration.

In this regard the German Federal Patent Court shared the opinion of the GPTO, namely that the mark in question did not fulfill the requirements of distinctiveness. It held that the term “Christkindlesmarkt” represented only a common synonym for the word “Christmas market”. The German Federal Patent Court concluded that the mark lacked distinctive character as the relevant public (in this case, the average German-speaking consumer) understood the sign Christkindlesmarkt as referring to Christmas markets (particularly to products sold on such markets). There was however no evidence that the general public would perceive the trade mark as a source-related indication of the goods and services in question. Traditionally held in the town square, Christmas markets have food, drink and seasonal items from open-air stalls accompanied by traditional singing and dancing. Popular attractions at these markets are candied and roasted almonds, traditional Christmas cookies such as Lebkuchen and of course the famous German Bratwurst. One of the other highlights of these markets is the mulled wine called Glühwein. This means in effect that when foods and beverages are labeled with the name “Christkindlesmarkt”, the public will not perceive this as an individual indication of origin of an undertaking, but rather that these goods are typical goods offered on Christmas markets.

Conclusion

The decision is in line with settled case law, therefore it did not come as a surprise. The term “Christkindlesmark” is in itself descriptive and lacks of sufficient distinctive character.

We wish you all a Merry Christmas and Happy Holidays!

On 21 November 2017, the German Federal Patent Court decided about a license fee for the HIV-Drug Isentress for which it has granted a compulsory license in 2016.

Background of the Case

In 2016, Shionogi & Company Ltd, owner of the European Patent EP 1 422 218, accused Merck & Co. of violating this patent by selling the HIV drug Isentress. The drug has been generating worldwide sales of around USD 1.5 billion annually since 2012. Shionogi filed a lawsuit with the Regional Court of Düsseldorf. Merck opposed by applying for a compulsory license with the German Federal Patent Court and also requested a provisional allowance order under section 85 of the German Patent Act. In a preliminary ruling, the German Federal Patent Court ordered Shionogi to grant a compulsory license to Merck & Co. The German Federal Patent Court based its decision on the fact that Merck & Co. had made a license offer to Shionogi for a worldwide license and that there is a substantial public interest due to the paramount importance of the drug for patients with HIV infections – please see our previous post on this decision for more information (https://www.allaboutipblog.com/2016/11/german-federal-patent-court-grants-compulsory-license-on-hiv-drug-patent/). This preliminary ruling was confirmed by the German Federal Court of Justice in July 2017.

The Ruling

The German Federal Patent Court now decided about the amount of the compulsory license fee and held that Merck & Co. has to pay a license fee of 4% on the sales of the drug Isentress. The written reasons for this decision have not yet been published.

According to reports published on 11 June 2017, the German Federal Constitutional Court has requested the Federal President of Germany to refrain from signing the law that is necessary to ratify the Agreement on a Unified Patent Court (UPC). The president has agreed to comply with this request. The president’s signing is the last step required for a law to come into force after it has already passed both legislative chambers in Germany.

Reasons for the Request

The German Federal Constitutional Court has based its request on account of two challenges to the law ratifying the UPC, namely a constitutional complaint and a parallel request for expedited proceedings filed by the same complainant. The decision to ask the president to postpone the signing, indicates that the Federal Constitutional Court might not view the challenges as outright unsuccessful. The Court has not yet announced a date when its decisions will be issued.

Background

The reasons brought forward in both challenges are unknown. Reports suggest that the challenges are based on concerns that the contemplated proceedings before the UPC might not comply with due process of law. Some voices claim that the decisions of the opposition division of the European Patent Office (EPO) would not be subject to review by state courts, and that the boards of appeal of the EPO would not be sufficiently independent from the administration of the EPO.

A Look Ahead

It is unlikely that the president will sign the law before a decision of the Federal Constitutional Court will have been handed down. Accordingly, the ratification of the UPC in Germany will likely be postponed to an unknown date.

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

 

Gamer playing first person shooter game on high end pc

On 12 January 2017, the German Federal Court of Justice has handed down its second landmark decision on cheat software within three months. After clarifying the question under which conditions cheat software may constitute copyright infringement in October last year, the Federal Court of Justice has now decided that cheat software can constitute an act of unfair competition, too.

To be able to play online games, e.g. World of Warcraft (WoW) or Diablo III , it is necessary to download a client software and install it on the computer. Achieving progress within the game regularly takes several hours. To save time and to easily achieve the goals of the game some companies develop software, so-called cheat- or buddy-bots, allowing the player to overcome the challenges of the game automatically. Online game developers are not pleased by this fact, which is why they try to prevent the distribution of such cheat bots up front.

Cheat Software and Copyright

In October 2016, the Federal Court of Justice had already decided that the commercial downloading and copying of the client software to develop cheat software constitutes copyright infringement. According to the court, this act is neither permitted by the End User License Agreement (EULA), as it only allows private use of the client software, nor does it fall within the scope of § 69 Sec. 3 of the German Copyright Act, which in order to determine the ideas and principles which underlie any element of a software allows users to observe, study or test the functioning of the program without the authorization of the right holder. However, this exception only applies to computer programs and does not justify the reproduction of the audiovisual content.

Cheat Software and Unfair Competition

Three months later, the Court further decided that the distribution of such cheat bots can also amount to an illegal obstruction of a competitor. The court held that not the breach of contract as such constitutes an act of unfair competition. An act of unfair competition is rather to be seen in the development and distribution of cheat bots which are able to impair the business model by circumventing protective measures which were meant to avoid such impairment. According to the Court it shall remain up to the developer how the game should be played.

A Look Ahead

These decisions make the cheat software business model much more difficult. Due to the fact that for the development of such bots it is necessary to copy the client software, which automatically implies a copying of the audiovisual content, such acts always constitute copyright infringement.

Further, it was held that the development and distribution of cheat bots can constitute an act of unfair competition, if and to the extent the developer´s product is impaired. Therefore, these two decisions may affect the development of software bots beyond the gaming industry. So-called “social bots” used within social networks to automatically generate posts may also impair the business of the operator, and thus may be prohibited as well based on the reasoning of these decisions. How this will be assessed in detail remains to be seen.

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

German Reichstag in Berlin, GermanyThe future of the European Unified Patent Court (UPC) appears to look a bit clearer following recent ratification activities. On 16 January 2017, the Preparatory Committee for the UPC announced on its website that it is working under the assumption that the UPC can become operational in December 2017. However, the Committee stated that this timeline is conditional on a number of factors, with the most important being “the necessary ratifications of the [UPC Agreement] and accession to the Protocol on Provisional Application”. So far, twelve EU Member States have ratified the UPC Agreement, including France (14 March 2014) and Italy (10 February 2017).

The three countries with the highest number of patent applications in Europe (France, Germany and the UK) are mandatory ratifying countries of the UPC Agreement.

On 10 March 2017, the German Parliament, Bundestag, approved ratification of the UPC Agreement and related amendments to the German Patent Act. As a next step in the legislative process, the German Federal Council, Bundesrat, will need to approve the draft legislation. After approval by the Bundesrat, the resulting laws would then need to be signed by the newly elected Federal President Frank-Walter Steinmeier. The laws would take effect on the day following promulgation in the German Federal Law Gazette.

On 28 November 2016, the UK government issued a press release that, despite the UK’s planned leave from the EU, commonly known as “Brexit,” it still plans to ratify the UPC Agreement over the coming months. However, it is not clear how the ratification of the UPC agreement will play out with the UK’s heralded rejection of the supremacy of EU law and the jurisdiction of the Court of Justice of the European Union (CJEU). The UK government’s White Paper on exiting the EU specifies that “[the UK] will bring an end to the jurisdiction of the CJEU in the UK.”

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Women's running shoes and dumbbells for trainingThe question of whether a sequence of exercises, such as yoga poses or dance moves, can be copyrighted has occupied the attention of international courts, scholars and copyright offices for some time. In late 2015, the issue received some media attention when yoga guru Bikram Choudhur tried to gain a US copyright in a signature sequence of yoga poses but failed before the Court of Appeals for the Ninth Curcuit. Despite the effort of international copyright conventions, the question of copyrightability essentially remains a matter of national law.

On 2 February 2007, the Higher Regional Court of Cologne (Case 6 U 117/06), Germany, ruled that an acrobatic dance performance could, in principle, be considered a “work of dance art” subject to copyright protection under Sec. 2 para. 1 No. 3 of the German Copyright Act. The required threshold of originality could, however, only be achieved, if the performance went beyond a sequence of physical movements and conveyed a particular artistic message. Whether this ruling can, by analogy, be extended to yoga and exercise routines is not clear. Simple routines are, however, not likely to constitute “personal intellectual creations” within the meaning of Sec. 2 para. 2 of the German Copyright Act.

An Integrated, Coherent, and Expressive Whole

In a further example, in a Statement of Policy from 18 June 2012, the US Copyright Office took the position that “a selection, coordination, or arrangement of functional physical movements such as sports movements, exercises, and other ordinary motor activities” did not represent the type of authorship intended to be protected under the US Copyright Act as choreographic works. However, a “composition and arrangement of a related series of dance movements and patterns organized into an integrated, coherent, and expressive whole” could rise to the level of original choreographic authorship.

A Look Ahead

Even if simple yoga or exercise routines will likely not meet the minimum threshold of originality in most jurisdictions, a film or description of such routine may be copyrightable, as may a compilation of photographs of the routine’s individual movements. Additionally, exercise brands can make a profit from teaching their routines to others („train the trainer“) or from licensing their brand to fitness centers so that people familiar with the brand’s program know what to expect of the centers’ workout sessions.

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

Romantic DiningAccording to the code of ethics of the International Association of Culinary Professionals, a culinary professional must not knowingly “appropriate […] any recipe or other intellectual property belonging to another without the proper recognition.” And, in addition to the ethical, there are legal issues. While copying culinary creations might not sound like a big deal to millennial food bloggers and vloggers, lawsuits—sometimes with high stakes—have been filed over (mis)appropriated recipes. But whether claims to a signature dish will hold up in court is a different question and will likely depend on the scope of protection of the applicable copyright law(s).

The Literary Work

The written expression of a recipe (explanations and directions) is likely to be protected as a “literary work” in most jurisdictions. For example, the Court of Justice of the European Union (Case No. C‑5/08) held that even an 11-word newspaper article extract may be protected subject matter under the Copyright Directive (2001/29/EC), provided that it is original in the sense that it is the author’s own intellectual creation. One can, therefore, safely assume that quite a few recipes that were published online or in print could be considered literary works subject to copyright protection. However, the copyright in a literary recipe only prevents unlicensed copying of the text, not the functional means for achieving a culinary result. Whether the recipe itself could be eligible for protection is another matter entirely: ideas like the ingredients necessary to the preparation of a particular dish are generally not copyrightable.

The Mere Listings of Ingredients

The US Copyright Office, for example, issued a factsheet that “copyright law does not protect recipes that are mere listings of ingredients.” This view was backed by the US Court of Appeals for the Sixth Circuit in the non-precedential case Tomaydo-Tomahhdo, LLC v. Vozary, 629 F. App’x 658 (6th Cir. 2015). The court held that while there can be a copyright in the arrangement and creative expression contained in a recipe book, protection did not extend to the recipes themselves. A list of ingredients was “merely a factual statement, and […] not copyrightable.” However, a compilation of such facts could be eligible for protection, if it was an original selection. For example, on 28 March 2012, the Regional Court of Frankfurt am Main (Case No. 2-06 O 387/11), Germany, held that a selection of recipes suitable for certain pieces of cooking equipment was a “personal intellectual creation” within the meaning of sec. 2 para. 2 of the German Copyright Act. The US Copyright Office likewise stated that copyright protection could “extend to […] a combination of recipes, as in a cookbook.”

The Visuals and Other Things

Copyright law might also apply to photographs that accompany a recipe in a cookbook or to an elaborate food arrangement if it comprises elements that do not contribute to the utilitarian aspects of how food appears on a plate like coloring, textures and placement. There are, however, other avenues than copyright law that culinary professionals can pursue to protect their creations, such as secrecy or non-disclosure agreements.

Happy Valentine’s Day to all food and IP lovers!

 

This article was originally published on AllAboutIP – Mayer Brown’s  blog on relevant developments in the fields of intellectual property and unfair competition law. For intellectual property-themed videos, Mayer Brown has launched a dedicated channel available here.

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