Bundestag passes law on the protection of intellectual property

On 11 April 2008, the German Bundestag passed the law implementing the EU Enforcement Directive. The law facilitates the fight against product piracy and thus strengthens intellectual property.

"The protection of creative work is of outstanding importance, especially for the German economy, which has to hold its own in an environment poor in raw materials. Product piracy is constantly on the rise, causing considerable economic damage and destroying jobs. Counterfeit products can also pose a considerable safety risk, for example in the case of spare parts or medicines. Therefore, product piracy must be countered in many ways. One means is to improve the legal instruments," explained Federal Minister of Justice Brigitte Zypries. "For consumers, the law also brings a very significant improvement: By limiting the claim for reimbursement of costs to 100 euros for the first warning by a lawyer, we ensure that no one overshoots the mark in the prosecution of copyright infringements. Those who do not pursue commercial interests will be better protected from excessive warning costs in the future," Zypries continued.

The Act implements Directive 2004/48/EC by amending several laws on the protection of intellectual property: Patent Act, Utility Model Act, Trade Mark Act, Semiconductor Protection Act, Copyright Act, Design Act, Plant Variety Protection Act are amended with largely identical wording. Furthermore, the Act adapts German law to the new EC Border Seizure Regulation. This regulation provides for a simplified procedure for the destruction of pirated goods after seizure by customs. Furthermore, the Act contains an adaptation to an EC Regulation on the protection of geographical indications and designations of origin for agricultural products and foodstuffs and closes a criminal liability loophole with regard to the unauthorised use of geographical indications.

The content of the law in detail:

  • Warning notice for copyright infringement
    The law improves the situation of consumers who face high bills for a lawyer's warning notice for copyright infringement. In the future, in simple cases involving only a minor infringement outside the course of business, the recoverable attorney's fees for the warning letter should not exceed EUR 100.Example:
    The student S (16 years old) has included a city map on her private homepage so that her friends can find her better. This is a copyright infringement (§§ 19a, 106 UrhG). The investigation by the public prosecutor was discontinued due to insignificance. A law firm issued a warning to the student, demanded that she issue a cease-and-desist declaration, and requested an amount of €1,000 as a lawyer's fee. In the future, the law firm can only demand reimbursement of €100 from S for its legal services if the case is a simple one with only an insignificant infringement. This limitation does not affect the attorney's claim for remuneration against his client, i.e., the right holder. In the case of other intellectual property rights, such as trademark or patent law, this supplement is not necessary, since warnings can only be issued here anyway if the right has been infringed to a commercial extent.
  • Claims to information
    There is already a civil-law right to information of the rights holder against the person who infringes intellectual property (e.g. Section 101a UrhG). Very often, however, the information required to identify the infringer is held by third parties (such as Internet providers or carriers) who are not themselves infringers. In the future, the rights holder should also have a right to information against these third parties under certain conditions. This is intended to give the rights holder the opportunity to identify the infringer by civil law means in order to better enforce his rights in court. One of the prerequisites for the right to information is that the infringer has acted on a commercial scale. Access to the so-called retained data does not take place for civil law information claims.Examples:
    1. several containers of counterfeit brand-name sneakers are found at a freight forwarder's premises. In the case of such an "obvious infringement," the third party, i.e., the freight forwarder, can now also be held liable for immediate information about the "origin and distribution channel" of the goods.
    2. music publisher M discovers that someone is offering complete music albums of an artist under contract with him for download on the Internet. In addition, by inspecting the file list of provider A, M discovers that numerous other albums by other artists are also being offered. The name of the provider of these pieces of music is not apparent, M can only recognize the Internet Protocol (IP) address used by the computer of the download provider. This IP is assigned by A's Internet access provider (his access provider) when A goes online with his computer. In addition to A's IP address, M can also see which provider he uses to put the data on the Internet. M now wants to know from this provider which customer used the IP address in question. Until now, the provider has not been allowed to disclose this information to private individuals. Instead, M must file a criminal complaint and is dependent on the public prosecutor's office initiating criminal proceedings and obtaining information from the provider on which Internet user used the IP address in question by virtue of its right to information in criminal proceedings. Only when M has been granted access to the files in the criminal proceedings does he learn the result of this query and then knows against whom he can assert his civil claims. In the future, M can request that the provider be granted a right to information when filing an action in civil court for injunctive relief or damages. For this purpose, M must prove to the court that he is the owner of the copyright that has been infringed in a commercial manner under a certain IP address. The court issues an order and the provider then provides M with information about the name of the infringer. Now M can assert his civil claims against the infringer before the civil court - without detouring via the criminal proceedings. M reimburses the provider for the costs incurred for the information and claims them against the infringer as damages. According to the law, claims for information against third parties are not only provided for when legal proceedings have already been initiated. Even in advance, when an infringement is obvious, the entitled party will in future have a right to information. This will make it easier for those whose rights have been infringed to find out who they have to take legal action against in the first place. Until now, this was often difficult to determine; after all, the plaintiff cannot direct his action against "unknown" persons. However, in accordance with the Directive, the right to information only exists if the underlying infringement was committed on a commercial scale.
    A special provision is made for cases in which the third party can only provide the requested information using telecommunications traffic data. This is data on the circumstances of communication, such as the assignment of a number to a subscriber or the length of time a connection existed between two connections. In the future, access to this traffic data will also be possible under strict conditions. However, this information may only be provided on the basis of a court order.
  • Damages
    In line with previous case law, it is clarified that, at the choice of the infringed party, the profit of the infringer or an appropriate fictitious license fee - i.e. the remuneration that would have been payable for the lawful use of the right - can also serve as the basis for calculating damages, in addition to the actual damage incurred.Example:
    A counterfeiter imitates a patent-protected drug. The patent holder claims damages. Since it is difficult for him to calculate his specific damages, he demands an appropriate royalty from the counterfeiter. The amount of the license fee is based on what the patent holder would have received if he had previously concluded a license agreement on the use of the patent with the person who infringed the patent. Instead, however, the patent owner can also demand from the counterfeiter the profit that the latter has made by using the patent. Furthermore, in the case of an obvious or established claim for damages, the right holder obtains a claim against the infringer for the production of banking, financial and commercial documents, if without these documents the fulfillment of claims for damages would be questionable. In this way, he can gain knowledge in order to successfully enforce his claims.
  • Production and securing of evidence
    If an intellectual property right is infringed with sufficient probability, the right holder also has a claim against the infringer for the production of documents and the authorization to inspect objects, which goes beyond the possibilities already existing under the Code of Civil Procedure. If necessary, the claim also extends to the production of bank, financial and commercial documents. In order to avert the risk of their destruction or alteration, such evidence may also be secured by way of interim relief by the issuance of an interim injunction. Insofar as the infringer claims that confidential information (e.g. trade secrets) is involved, the court shall take the necessary measures to ensure confidentiality.
  • Border Seizure Regulation
    The EU Border Seizure Regulation, whose provisions are generally directly applicable, provides for measures to protect intellectual property directly at the EU's external borders. This is intended to prevent goods suspected of infringing intellectual property rights from being imported into the EU in the first place. This regulation also governs the destruction of seized pirated goods. However, the applicability of this regulation depends on Member States approving it, i.e. incorporating it into their law.Example:
    The manufacturer of automotive spare parts H notices that counterfeits of his products are increasingly appearing in Germany, infringing his right to the design, his trademark or a patent. In an application, he notifies the customs authority (in Germany, the Central Office for the Protection of Intellectual Property in Munich) of his intellectual property rights. During an import inspection of a container ship in the port of Hamburg, the suspicion arises that it has loaded goods that infringe one of these intellectual property rights. Customs detains the goods and informs H and the owner of the goods. Currently, the seized goods can only be destroyed if the infringement of the right has been established by a court. The new border seizure regulation provides for a simplified procedure, according to which destruction is possible even if the person entitled to dispose of the goods does not object within a certain period of time. His silence is then deemed to be consent. However, this provision, which was previously applicable in Germany, is now only applicable in the Member States if the respective national law expressly so provides. The law passed today provides for this.
  • Protection of geographical indications
    Civil enforcement of protection rights will also be facilitated for geographical indications in the manner described. In addition, the amendment to the Trademark Act is intended to create protection under criminal law for those geographical indications and designations of origin that are protected at European level under Council Regulation (EC) No. 510/2006 of March 20, 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs (OJ EU No. L 93 p. 12). These include the names of numerous agricultural products such as the famous "Spreewälder Gurken". Previously, such protection existed only for designations protected under purely domestic law.
  • Notice of Judgment
    The right holder can already request publication of the court judgment in case of infringement of a copyright or design right. This possibility is extended to all intellectual property rights.

 

Source:
Press release from the Press and Public Relations Department of theâ¨Bundesministerium der Justiz, Responsible: Eva Schmierer; Editors: Dr. Henning Plöger, Dr. Isabel Jahn, Johannes Ferguson, Ulrich Staudigl, Mohrenstr. 37, 10117 Berlin.
presse@bmj.bund.de
http://www.bmj.bund.de

Goldberg Attorneys at Law, Wuppertal-Solingen 2008
Attorney at Law Michael Ullrich, LL.M.(Information Law)
m.ullrich@goldberg.de

 

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