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.

iStock_000056364480_Large (2)Mit Urteil vom 25. Februar 2015 entschied das LG Düsseldorf (12 O374/14), dass der Inhaber eines Anspruchs aus §§ 17, 18 UWG, der den Verletzer mittels einer einstweiligen Verfügung ohne vorherige Abmahnung in Anspruch nimmt, seinen Kostenerstattungsanspruch nicht verliert, wenn die vorherige Abmahnung unterblieben ist, um den Erfolg einer Strafanzeige gegen den Verletzer nicht zu gefährden.

In dem zugrundeliegenden Sachverhalt stritten die Parteien um die Pflicht zur Tragung der Kosten eines einstweiligen Verfügungsverfahrens, in dem den Antragsgegnern untersagt wurde, Unternehmensgeheimnisse des Antragstellers zu verwerten. Die Antragsgegner legten einen sogenannten Kostenwiderspruch ein, d.h. sie gingen nur gegen die im Beschluss des einstweiligen Verfügungsverfahrens enthaltene Kostenentscheidung vor, weil eine vorherige Abmahnung von Seiten des Antragstellers unterblieben war. Zwar stellte das LG Düsseldorf zunächst fest, dass in einem solchen Fall der Inhaber des Unterlassungsanspruchs – selbst bei Erfolg im Hauptsacheverfahren – grundsätzlich die Kosten des einstweiligen Verfügungsverfahrens zu tragen habe. In Fällen, in denen die mit der Abmahnung verbundene Warnung des Verletzers den Rechtsschutz des Anspruchsinhabers allerdings unverhältnismäßig gefährden würde, sei eine Abmahnung entbehrlich. Trotz unterbliebener Abmahnung steht dem Gläubiger des Unterlassungsanspruches somit in diesem Fall deshalb ein Kostenerstattungsanspruch zu.

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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).