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.

BerlinThe former governing mayor of Berlin, Klaus Wowereit, a member of the German Social Democratic Party, SPD, has suffered a legal defeat in his year-plus battle with the German publishing house Axel Springer. On 27 September 2016 (VI ZR 310/14), the German Federal Court of Justice ruled that pictures of Wowereit in a Berlin bar on the eve of a vote of no confidence against him could be published in Springer’s daily magazine BILD without the former mayor’s consent.

The Facts of the Case

With the caption “Before the vote of no confidence, he ended up in the Paris Bar…” (“Vor der Misstrauensabstimmung ging´s in die Paris-Bar …“), BILD published three pictures of Wowereit and some friends at Berlin’s Paris Bar, a well-known meeting place for VIPs and celebrities in Berlin, on 11 January 2013, the evening before a parliamentary vote of no confidence against him. The vote was initiated in response to increasing criticism over delays and cost overruns for the city’s new Berlin Brandenburg Airport. The pictures accompanied an article on Wowereit’s political career titled “From partying mayor to crash pilot” (“Vom Partybürgermeister zum Bruchpiloten“).

No Legitimate Interests of the Depicted Have Been Harmed

Upon the appeal by Springer, the German Federal Court of Justice dismissed Wowereit’s claim for a cease-and-desist order. The court ruled that the pictures were all part of the “sphere of contemporary history” (section 23 para. 1 no. 1 of the German Art Copyright Act) and, therefore, could be published by Springer without Wowereit’s consent (section 22 of the German Art Copyright Act). In connection with the press coverage of a significant political event (here, a vote of no confidence), the publication of photographs, while showing the then-governing mayor in a rather private situation, could be justified with serving the general public’s interest in political information. The contested publication also did not harm the legitimate interests of the depicted ex-mayor (section 23 para. 2 of the German Art Copyright Act). In view of what was happening in Wowereit’s political career at the time, Wowereit could not have expected to be shielded from the prying eyes of the press or the public.

 

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.

Divorce - Sad young couple holding billboard sign with break love heart, concept for divorce

On 13 October 2015, the German Federal Court of Justice (VI ZR 271/14) ruled that ex-lovers can demand the deletion of intimate or revealing photographs and videos once a relationship is over. In the case concerned, a man, a professional photographer, had taken several erotic photos and videos of his female partner, to which she had consented at the time. The pictures and videos showed the woman naked both during and after sexual intercourse. She had also taken some of the pictures herself. After their relationship ended, the woman demanded that all of the intimate media be deleted, but the man refused to do so.

Even though the woman had consented to the pictures being taken at the time, and the man, to date, had shown no intention of reproducing the pictures or putting them online, the Federal Court of Justice ruled that the man still did not have the right to keep copies of those pictures and videos. Most notably, the Court held that the woman’s consent to create the photos in question did not rule out her withdrawing that consent in the future because intimate photographs were related to the core of her personality right (“intimate sphere”) as protected by the German Constitution (“Grundgesetz”) under Articles 1(1) and 2(1). The protection afforded to the intimate sphere outweighed any copyright protection or other professional or artistic freedoms afforded to her ex-partner photographer.

However, the Federal Court of Justice denied the woman’s request to force her ex-boyfriend to delete other, non-erotic photographs he had taken of her during their relationship. The Court could not see a personality right infringement with regard to everyday type or holiday photographs, since the woman’s reputation would not be lowered in the view of third parties in case such photographs were to be made public.

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On 5 November 2015, the German Federal Court of Justice ruled that a copyright holder’s right to distribute its work to the public (Section 17 para. 1 of the German Copyright Act) includes the right to offer the original, or a copy, of a protected work to the public for sale. Thus, any unauthorized advertisement of the original or a copy of that work constitutes copyright infringement.

Background

The case before the Federal Court of Justice covers three separate proceedings: In the first two proceedings, the defendant, a company resident in Italy, offered for sale reproductions of certain furniture designs which enjoy copyright protection in Germany but not in Italy. The company made online and print advertising in German (directed at German citizens) to come to Italy to buy those pieces and take them home. In a third proceeding, the defendant offered for sale a DVD with a non-authorized live recording of the musician Al Di Meola performing in Tokyo.

In all three proceedings, the plaintiffs sought to prevent the advertisement of works (or copies thereof) which are protected by copyright, or, in the latter case, a neighboring right of the performing artist (section 77 para. 2 of the German Copyright Act). The plaintiffs argued that included in the exclusive right of the copyright holder to distribute its work to the public (Section 77 para. 2 of the German Copyright Act) is the right to advertise the original, or any copy of that work.

Reference for a Preliminary Ruling

The Federal Court of Justice stayed the proceedings and asked the Court of Justice of the European Union (CJEU) whether the distribution right established in Article 4(1) of Directive 2001/29 includes the right to offer the original or a copy of a protected work to the public for sale. If that question was answered in the affirmative, then the Federal Court of Justice asked first, whether the right to offer the original of a work or copies of it also includes the exclusive right to advertise those objects and, second, whether the distribution right is infringed where no purchase of such an original or such copies takes place on the basis of the offer for sale of them.

In its ruling on 13 May 2015, the CJEU (C-516/13) responded in the affirmative to all questions and held that Article 4(1) of Directive 2001/29 must be interpreted to allow a holder of an exclusive right to prohibit any form of distribution to the public by sale or otherwise. This shall include the right to, inter alia, prevent an advertisement of the original or a copy of that work, even if it is not established that that advertisement gave rise to the purchase of the protected object by an EU buyer. It was sufficient that the advertisement invites consumers of the Member State in which that work is protected by copyright to purchase it.

Decision of the Federal Court of Justice

The Federal Court of Justice followed the CJEU’s ruling and held that a copyright holder has the right to prevent the unauthorized advertising of copies of a protected work, or the work itself, even if no actual sales have taken place. It is sufficient that the advertisement invites consumers in Germany – where the work enjoys copyright protection – to purchase it. The same rights shall be conferred to the holder of a neighboring right of the performing artist (section 77 para. 2 of the German Copyright Act).

iStock_000074680895_LargeOn 21 October 2015, the German Federal Court of Justice ruled that a bank cannot refuse to disclose personal data of a client if that client’s bank account was used to receive payments ‎for the sale of counterfeit trademark goods. In this case, the fundamental right of the trademark holder to protect its intellectual property prevailed over the banks’s right to secrecy.

Plaintiff is Coty Germany GmbH, a licensee for the production and sale of “Davidoff” perfumes. Defendant is the German bank Stadtsparkasse Magdeburg. A seller offered on eBay a knock-off of the “Davidoff Hot Water” perfume while using the wordmark “Davidoff” to advertise its sale‎. Plaintiff made a trap purchase and wired the money to the bank account that the seller had indicated on eBay. However, because the seller used a pseudonym, its identity remained unkown to Plaintiff. Plaintiff thus asked the bank to disclose the name and address of the bank account holder, pursuant to Section 19(2) No. 3 of the German Trade Mark Act (MarkenG) (right to information). The bank refused this request, arguing that because it was obliged to keep this information confidential, it was allowed to refuse disclosure, pursuant to Section 383(1) Nr. 6 of the German Code of Civil Procedure (ZPO) and to Section 19(2) of the German Trade Mark Act (right to refuse disclosure of information)‎.

The Directive 2004/48/EC on the enforcement of intellectual property rights (“the Directive”) contains a provision concerning the right to information (Sections 8(1)(c)). Nevertheless, according to Section 8(3)(e) of the Directive, the right to information is without ‎prejudice of statutory norms for the protection of confidentiality of information or personal data. The Federal Court of Justice sought guidance from the Court of Justice of the European Union (“CJEU”) on how to interpret these provisions (C-580/13). The latter decided that a statutory provision allowing banks to generally and unconditionally refuse requests for disclosure of information would go beyond the content of what is necessary to achieve the purpose underlying Section 8(3)(e) of the Directive. Such a statutory provision would  contradict other basic principles and rights, as it would not leave any room for the analysis of whether in a particular case there was an intentional misuse of a third party’s right. Whether the provisions of national law contain such a right to unconditionally refuse disclosure is to be decided by the national courts on a case-by-case basis.

On this basis, the Federal Court of Justice decided that in the case at hand, given that the bank account had been used specifically for the IP-infringing activity, the bank is not entitled to evoke its confidentiality obligation in order to refuse disclosing the information requested. The right of the bank account holder of having its personal data protected must recede behind the right of the IP right holder of protecting its intellectual property.

Analysis

The provisions of the Directive and of ‎German law establish a priority of confidentiality of information and protection of personal data as opposed to an IP right holder’s right to information. In the case at hand, interestingly, the decision of the Federal Court of Justice went the opposite way and granted priority to the right to information. The rationale behind the decision is that in this particular case, the person whose personal data would have been protected by confidentiality had infringed a third party’s IP right. The infringer’s right to protection of its personal data was thus no longer on an equal footing with the IP right holder’s right to information. In these conditions, the generic legal rang between right to confidentiality and right to information could not be followed by the Federal Court of Justice.

The colors of the letters, written with chalk on blackboard

On 5 March 2015, the German Federal Court of Justice (I ZR 161/13) issued a ruling that two wordmarks that consist of the same three letters, albeit in a different order (here: IPS and ISP), might lead to confusion as to the origin of goods and services sold under these marks. In particular, the Court noted that the pronunciation of the individual letters in their given order had the same sequence of vowels (here: i-e-e, German pronunciation). Thus, the Court found there to be a likelihood of confusion between the two wordmarks that were both used for IT services.

Pursuant to section 14 para. 2 No. 2 of the German Trademarks Act (MarkenG), “a third party shall be prohibited, without the consent of the proprietor of the trademark in the course of trade, from using a sign if the likelihood of confusion exists for the public because of the identity or similarity of the sign to the trademark and the identity or similarity of the goods or services covered by the trademark and the sign, including the likelihood of association with the trademark”. The question whether a likelihood of confusion exists between two marks must be assessed globally, taking into account all factors relevant to the circumstances of the case. According to the German Federal Court of Justice, the Hamm Court of Appeal was right, therefore, to consider that the two marks share a first identical vowel, “i”, that both are formed according to the pattern “vowel-consonant-consonant”, that they have the same number of syllables and have a similar sequence of vowel sounds in German (“i-e-e”).

The relevant factors to be considered in the assessment of similarity between two marks are phonetic similarity, graphic similarity and similarity in meaning. Under established case law, it is, in principle, sufficient to show similarity between two marks in one of these areas. Thus, in the present case, the fact that the sequence of vowels is identical led the Court to conclude that the (German) pronunciation of the two marks may lead the public to believe that the IT services at issue derive, at the very least, from economically linked undertakings. In the Court’s opinion, a likelihood of confusion in the perception of the targeted public could therefore not be ruled out, despite differences in the consonant pattern.

 

iStock_000060997176_Large_BBTaking pictures of food and sharing them online through social media has become a new cultural phenomenon. The trend has become so popular that entire blogs and YouTube channels are now devoted to food photography. A recently published article in the German Daily Newspaper Die Welt has, however, spawned some debate whether taking a picture of an elaborately arranged dish and posting it online might be illegal in the sense that it infringes copyright. According to a lawyer cited in that article, food arrangements are, in principle, copyrightble. If this was in fact the case, posting food images to social media without permission could constitute an unauthorized derivative use of a copyrighted work.

The assumption that elaborate food arrangements are liable to fall within the scope of copyright protection is based on some recent German jursidprudence. In its 2013 decision “Birthday Train” (Geburtstagszug), the German Federal Court of Justice (I ZR 143/12) lowered the threshold of originality traditionally required for obtaining copyright protection in the applied arts. Since that decision, the requirements to be placed on the copyright protection of works expressing both aestheticism as well as utilitarian aspects are no different from works of purpose-free art (i.e. museum type art), literature or music. The Court concluded that in order for works of applied art to be protected under copyright law, they require a degree of creativity that would allow the piece to be called an “artistic” performance from the point of view of a public open to art and sufficiently skilled in ideas of art. Consequently, the decisive question when judging copyrightability is whether an elaborate food arrangement came into being through personal intellectual creation, section 2 para. 2 of the German Copyright Act (UrhG).

A personal intellectual creation, in turn, requires freedom that the creator uses for expressing his creativity in an original manner. Even though, food is ultimately meant to be eaten, not all features of its appearance are dictated by its intended purpose. Rather, food arrangements may comprise elements that do not contribute to the utilitarian aspects of how food appears on a plate. For example, chefs can exercise a certain amount of freedom when it comes to choosing color combinations, along with textures, layering and placement. Because not all features of appearance are dictated by the utilitarian aspects of food design, elaborate food arrangements might constitute an original work, provided, they are perceived as artistic by the relevant public.

Conclusion

While the majority of everyday food preparations will most likely not enjoy copyright protection, the possibility may not be ruled out that, in limited circumstances, copyright may subsist in a food presentation or plating arrangement. Thus, posting photographs which merely depict artistic food arrangements without contributing an element of creativity on their own might infringe upon the exclusive rights of the copyright holder. It goes without saying, however, that it can be difficult to draw the line between an artistic dish and one that is simply well presented.

 

iStock_000002675037_Large (2)In Germany, questions of patent infringement and validity are (somewhat controversially) tried separately in different courts. While the Federal Patent Court has exclusive jurisdiction over actions for nullity (section 81(4) of the Patent Act) with a possible appeal to the Federal Court of Justice, infringement proceedings are dealt with by the civil divisions of Continue Reading Patent Claims Must Be Reviewed Independently by Infringement and Nullity Courts According to the German Federal Court of Justice

Color SwatchTwo recent judicial decisions in Germany have the potential to limit the scope of protection conferred by color trademark registrations. Since color marks lack inherent distinctiveness and are, therefore, not per se registerable, the issue, in both proceedings, turned on whether the applicant had submitted actual evidence of acquired distinctiveness.

Back in 2013, the Federal Patent Court referred to the CJEU for a preliminary ruling several questions on the interpretation of Art. 3 of the Trademarks Directive (2008/95/EC). One of the questions was whether a 70 percent brand recognition was necessary to acquire distinctive character through use. In its response to this question, the CJEU (C-217/13 and C‑218/13) held, inter alia, that it was not possible to merely refer to predetermined percentages to support the conclusion that a distinctive character has been acquired through use. While a consumer survey may be one of the factors considered, it was not the only decisive criterion.

Following the CJEU’s decision, the Federal Patent Court (25 W (pat) 13/14) ruled on 8 July 2015 that a certain shade of red is to be deleted from the trademark register. It did so mainly because the Court deemed survey evidence presented by the proprietor of the mark to be of insufficient quality – even though a 67,9 percent figure was not a ground for exclusion per se. In the Court’s opinion, the conductors of the survey used so-called “leading questions” which may have suggested the desired answer. An appeal against this decision is pending before the Federal Court of Justice and is expected to further clarify to what extent surveys conducted by the parties themselves (or party-hired expert witnesses) may be suitable means to demonstrate the necessary degree of association.

In a second case, the question once again turned on the issue of whether survey evidence presented by a party was of sufficient quality to prove a color mark’s acquisition of distinctive character through use. While, on 9 July 2015, the Federal Court of Justice (Press Release No. 112/2015) stated that, in principle, a particular type of blue could have acquired distinctiveness through use if 50 percent of the relevant public associated it with the goods and services for which it has been registered, a party-submitted survey, showing a degree of association of 58 percent, was considered insufficient proof and methodologically flawed. According to the Court, since the packaging of the goods concerned is typically a combination of white and blue, all test persons should have been presented with a sample showing only the blue color instead of a blue card framed in white.

Lessons Learned

While the importance of colors in corporate branding remains undisputed, these decisions illustrate the problems that go along with registering (and enforcing) color trademarks. Even though the Federal Court of Justice stated that 50 percent, in principle, may be sufficient to demonstrate the necessary degree of association among the relevant public, the qualitative requirements that need to be placed on survey evidence (e.g. design, methodology) have not yet been established with sufficient clarity. The German rules of civil procedure are somewhat silent on that matter.

iStock_81284397_XXLARGEDer BGH hat mit Urteil vom 9. Juli 2015 (I ZR 46/12 – Die Realität II) entschieden, dass die Verlinkung eines auf einer Online-Videoplattform verfügbaren Werkes unter Verwendung der sog. Framing-Technik grundsätzlich keine Urheberrechtsverletzung darstellt – jedenfalls dann nicht, wenn die urheberrechtlich geschützten Inhalte
mit Zustimmung des Rechteinhabers auf der Videoplattform eingestellt wurden. Continue Reading Die Einbindung von fremden Inhalten mittels „Framing“ kann Urheberrechte verletzen