The First Civil Senate of the Federal Court of Justice, which is responsible, inter alia, for design law, has ruled that the reproduction of a design is not permissible "for the purpose of quotation" under Section 40 No. 3 GeschmMG if it serves exclusively advertising purposes.
The defendant, Deutsche Bahn AG, is the owner of designs which it uses for trains of the type ICE 3. The plaintiff, the Fraunhofer-Gesellschaft, operates an institution for applied research dealing with railway vehicle technology, which developed a wheelset testing facility for the train type ICE 1 for the defendant. In the exhibitor catalogue of a trade fair, the Fraunhofer-Gesellschaft advertised its services by presenting its range of services and research needs in rail vehicle technology, depicting the railcar of an ICE 3. The defendant pointed out to the plaintiff that it was the proprietor of the design patents relating to the ICE 3 and demanded payment of a licence fee of € 750. The plaintiff then filed a negative declaratory action, i.e. it sought a declaration that the defendant was not entitled to any claims due to the contested depiction of the ICE 3 in its range of services.
The action was unsuccessful in the lower courts. In response to the plaintiff's appeal, the Federal Supreme Court overturned the court's decision and referred the case back to the court of appeal for a new hearing and decision.
According to the Federal Court of Justice, the Court of Appeal did not sufficiently examine whether the contested illustration of the ICE 3 infringes the designs used by the defendant for the ICE 3. For such an examination, the overall impression of the illustration and the overall impression of the design would have had to be determined and compared. In doing so, not only similarities but also differences would have had to be taken into account. In contrast, the Court of Appeal based its assumption of a design infringement solely on certain similarities in the lines. Therefore, the appeal judgement could not be upheld. The case had to be referred back to the Court of Appeal for reconsideration.
However, the Federal Court of Justice endorsed the Court of Appeal's view that the plaintiff cannot rely on grounds of justification in the event of design infringement and, in particular, unsuccessfully argued that the illustration of the ICE 3 in its catalogue was permitted "for the purpose of citation" under Section 40 No. 3 GeschmMG. The illustration of a design for the purpose of quotation would - according to the Federal Court of Justice - have presupposed that there was a connection between the design depicted and the plaintiff's activity depicted in the catalogue and that the design thus served as evidence for the citator's own remarks. This is not the case in the dispute, as the range of services described by the applicant in the catalogue does not refer to the ICE 3, but to the ICE 1. The illustration of the ICE 3 thus only served marketing purposes and cannot be understood as a quotation serving to illustrate the applicant's own activities.
Judgment of the Federal Court of Justice of 7 April 2011 - I ZR 56/09 - ICE
Lower courts:
LG Berlin - Judgment of 21 March 2006 - 16 O 541/05
Berlin Appellate Court - Judgment of 3 March 2009 - 5 U 67/06
Source: Press release of the BGH
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law (IT law)
E-mail: info@goldberg.de
