Private International Law Intellectual Property Law St Petersburg State University, 28 Oct 2013 Dr. Thomas Hoffmann, LL. M. , Attorney at Law (GER) DAAD-Lecturer in Law, University of Tartu Part I of this presentation is partly based on a presentation by Justus Gaden, research assistant at the University of Kiel.
A. Private International Law • Case: See handout
B. Intellectual Property Law Part 1: What is Intellectual Property? Part 2: Case study
Intellectual Property Patent Trade Mark Copyright
What is copyright? • Creative work – Fixed in a material form • Automatic legal protection – Unlike Trade Marks or Patents • Absolute Right – Monopoly
• „Author‘s Right“ – Continental Europe (Germany, France) – No Formalities for Protection – `Personal Intellectual Creation` – Focus: The Author („Moral Rights)“ • „Copyright“(Traditional) – Anglo-Saxony/American (USA, England) – Traditionally: Formal Registration needed – Today: No Registration – `Original Work` (No Creativity needed) – Focus: The Work („Economic aspects“)
WHY SHOULD AUTHORS OF CREATIVE WORKS BE PROTECTED?
• General public interest – Cultural promotion – Encouragement of learning • Interests of the Author – Reward for creativity – Incentive for creativity
Primary Sources (Overview) • Universal Copyright Convention – Low Protection Level – 101 States signed (Not signed by Estonia) • Berne Convention – Protection of Literary and Artistic Works – 166 States signed (Estonia 1994, also: China, USA, Russia) • Rome Convention – Protection of Performers and Broadcasters – 89 States signed (Estonia 2000) • National Acts (Germany: `Author’s Rights Act`)
Primary Sources (Overview) • European Copyright? – No Community Copyright • Unlike Trade Marks – Harmonization • Minimum Standards of Berne Convention – European Acts on the field of copyright: • • Computer Programs Directive Rental Right Directive Satellite and Cable Directive Term Directive Database Directive Information Society Directive Artist’s Resale Right Directive
2. Copyright Protected Works / Economic Rights / Violations / Free Uses
WHICH WORKS ARE PROTECTED?
a. Protected Works = Personal Intellectual Creation + Fixed in some material form (The idea itself is not protected!)
a. Protected Works • Literary Works (Article 2 (1) Berne. C) – Books, Articles in Newspapers, Speeches, Lectures etc. – Creativity is necessary! Example - Article in Newspaper: • Simple summary of facts -> Not protected • Statement or commentary -> Protected – Length is irrelevant. But short texts need more creativity.
a. Protected Works • Artistic Works – Paintings, Drawings, Photos, Illustrations, Sculptures etc. – Not Protected: Simple images or drawings without any individual insertion. Example: Not Protected
a. Protected Works • Artistic Works – Photographic works • Not only a picture of the environment • But individual accentuation or display of the environment e. g. • Does the photographer want to make a statement with the picture?
a. Protected Works • Musical Works – Songs, Melodies, Compositions, Themes – Can be fixed in various forms: • Written, Recorded, Filmed etc. – Single tones can not be protected – Case “I’m loving it” (District Court Munich 2010) • Mc. Donalds jingle • Personal Intellectual Creation? • DC Munich: Not creative enough!
a. Protected Works © • Traditional US-Law: No Copyright without © • Today: Not necessary, but evidence for a protected work
WHO IS PROTECTED?
b. Protected Authors • Nationality – Member States of Berne/Rome Convention • Country where the work first was published – If the author is from a member state of the Rome/Berne Convention
WHAT IS PROTECTED BY COPYRIGHT LAW?
c. Economic Rights • Reproduction – Copies or duplications in any form: – Paper, CD, DVD, any data on the computer etc. • Adaption – Transformation of the work into another type of presentation • Book Screen Play Movie – Translation • Art. 8 Berne. C
c. Economic Rights • Distribution – The author can control where and how many copies of his work will be sold. – Export of legal copies (Except EC market) • Broadcasting – Public performance, wireless transmission, cabling etc. • Performing a song on stage • Uploading a music video on youtube • Showing a movie on TV • Showing a painting in a museum
d. Licensing • Economic Rights = Author’s Rights • Author can transfer economic rights • A license is needed for every single economic right • Example: – Author writes a novel. – Transfers the right of reproduction and broadcasting to a publishing company. – This license does not include the right of adoption. – The right to adopt this novel into a movie can be sold to a different company.
d. Licensing A Reprodu ction o udi A ook B D ovie M Author Of Written Novel B TV Broadcast Inte rnet C Adaption Example for licensing different rights
d. Licensing • Possible Restrictions of Licenses: – Territory • Example: A TV station has the right to show an American movie, but only in Germany. – Time • Example: A museum has the right to show a popular painting, but only for a month.
e. Moral Rights • Claim of Authorship – Credits at the end of a movie eg. • Object modifications of the work – Examples: Special Problems: - Location as part of the work (Sculptures e. g. ) - Cutting scenes from a movie. (TV)
e. Moral Rights • Object derogatory actions against the work – Bolero-Case (Germany): The work Bolero of the French composer Maurice Ravel was used as background music in a pornographic movie. The film maker had a license from the collecting society. – Violation? – No violation of economic rights. – But violation of moral rights! • Moral Rights can not be transferred!
e. Moral Rights • Case “Astra” (High Court Hamburg 2000) Protected? Astra Tower, Hamburg
e. Moral Rights • Creativity: Yes! Astra advertising
e. Moral Rights • New design:
e. Moral Rights • Property Vs. Moral Rights • High Court Hamburg: – Designer transferred all his economic rights. – Moral rights remain! – The designer can object modifications of his work. Problem: Modification or destruction? HC Hamburg: Destruction! No moral rights violated. OTHER RESULTS POSSIBLE The Principle of moral rights varies in different states!
f. Violation of Economic Rights • Any use of licencable work Reproduction • Copy of a music CD, downloading music • Example: Making copies in library? ! – Adaption – Distribution – Broadcasting • No violation: Playing a music-CD at home • Violation: Playing a music-CD in public for an audience
f. Violation of Economic Rights Internet issues: • Peer-to-peer file sharing – Upload? Broadcasting – Download? Reproduction • Streaming – Upload? Broadcasting – Watching? Reproduction?
f. Violation of Economic Rights Who is the violator? • Example: – Unpublished novel copied by Mr. X – Mr. X finds a publishing company – Book gets printed and published • Violators: – Mr. X – Publishing Company – Book Store
f. Violation of Economic Rights • Host Provider = Violator? – Germany: “Notice and Take Down” – Examples • File Sharing Network – Napster = Violator • Video Communities (youtube) – German Youtube denies access to many music videos.
g. Free Use • Quotations (Art. 10 (1) Berne. C) – Using parts of another persons work in order to illustrate or prove a statement. – Parts of works which are not individual. • Education (Art. 10 (2) Berne. C) – School Books, Teaching Material • News reporting (Art. 10 bis Berne. C) – Public interest on current events – Example: “The Walking Man I” sold for highest price in history. The news on TV may show a picture of the sculpture.
g. Free Use • Case “Song Text” (German High Court 1987) A popular German singer/songwriter died. City of Berlin sets up a public memory tablet for her. A German newspaper publishes an article about this event. The article includes a picture of the memory tablet and the complete text of her most popular song. Is this legal?
g. Free Use ü Protected work? Song text = literary work (Art. 2 (1) Berne. C) ü Violation of rights? Reproduction (Art. 9 (1) Berne. C) Ø Free Use? - Quotation? Does the song text prove a statement? -> NO! - News Reporting? Current event: Set up of the memorial tablet. The song text was not part of that event. No Free Use Result: Illegal violation of copyrights!
g. Free Use Google Street View
g. Free Use Other free uses in national copyright acts: • Germany – Pictures of buildings (architectural works) • Postcards • Google Street View? – TVs and audio players in electronic stores – Reproduction for own private use • Russia?
HOW CAN I DEFEND MY COPYRIGHT?
h. Enforcement – Destruction and Prohibition of Use – Compensation (Civil Law) • Actual loss based on the violation • Figurative license • Account of profits – Criminal Law • Unauthorized copies or broadcasting Up to three years prison sentence • Industrial violation of copyrights Up to five years prison sentence
h. Enforcement Only few provisions in the Berne. C: • Art. 13 (3), 16 Seizure on imported copies – Unauthorized import – Unauthorized copies • Art. 15 (1) Presumption of authorship – Difficult to prove authorship – Name on work = Presumption of authorship
i. Term of protection • Art. 7 (1) Berne. C – 50 years after authors death • Longer or shorter terms in national law – Germany: 70 years after death – Russia?
j. Collecting Societies Economic Rights Musician Money License Money Collecting Society License Money Radio Disco License Money Concert
3. RELATED RIGHTS
3. Related Rights • Persons who present creative work to the public • Own rights granted! • No creative gratification – Unlike copyright • Just commercial gratification!
a. Broadcaster’s Right • Rome Convention – Art. 13: Minimum Rights • Prohibit re-broadcast • Fixation of their broadcast – Not relevant if broadcasted work is protected • Satellite and Cable Directive (EC)
b. Film Producer’s Right • Problem: – Film Producers invest enormous amounts of money • “Avatar” = 300 million Dollars (without advertisement) – Lots of different works and authors in each movie • Story, music, screen, animations, pictures etc. – Producers need every single license (contracts) – Contracts can be invalid – High risk for film producer • Solution: Own economic right on “the film” • Acts in most European states, but no international treaty
b. Publisher’s Right • No international treaty • Only some national acts – No publisher’s right in Germany
4. Summary • Copyright = Intellectual Property • Protected works – Intell. creativity + fixed in material form • Economic and moral rights • Monopoly – License every or single economic rights – Moral rights can not be transferred • Related Rights – Commercial benefit
Part II: Case study Part I: I. Claim W R acc. to sec. 97 I, 23, 14 Urh. G for cease and desist of the CD
Section II: Case Part I I. Claim W R acc. to sec. 97 I, 23, 14 Urh. G for cease and desist of the CD 1. Protected work, sec. 2 Urh. G? Does not necessarily have to be music, sec. 2 I nr. 2; it just has to be an individual intellectual act of creativity, sec. 2 II 2. Standing to sue W is author of the composition and therefore may sue himself, sec. 7.
Section II: Case Part I 3. Infringement of Copyright: a) Adapation A protected work may only be adaptated with consent of the author, sec. 23, 1 Urh. G. Here: R did take only the melody of „Romanze“ Are parts of works protected as well acc. to 2 II? Yes, if „unusual“ and „discernible“ Here: For the Melody adaptation (+)
Section II: Case Part I 3. Infringement of Copyright: a) Adapation But: Maybe case of Free Use, sec. 24 I? The original character must have stepped back in favour of new creation Here: R replaced W’s contemplative approach with hot Samba rhythms
Section II: Case Part I 3. Infringement of Copyright a) Adapation But: Maybe case of „Free Use“, sec. 24 I? The original character must have stepped back in favour of new creation Here: R replaced W’s contemplative approach with hot Samba rhythms But: Melodies are protected if discernibly taken from existing compositions. Here: (+)
Section II: Case Part I 3. Infringement of Copyright: a) Adapation There will be only an infringement if the adaptation has been published or exploited (sec. 23 I). Here: (+), see sec. 15 III (publication), se. c 16 I, 17 I (exploitation). There is a copyright infringement, sec. 23 I.
Section II: Case Part I 3. Infringement of Copyright: b) Missing recognition of the author Acc to sec. 13, W is entitled to be identified as the author of the work. Here: W is not mentioned on R’s CD; Copyright infringement, sec. 13
Section II: Case Part I 3. Infringement of Copyright: b) Distortion of the work, sec. 14 The integrity of the author’s is violated if - the work is distorted, - the author’s interest are effected and - the balance of interest results in favour of the author’s interest in the integrity of his work.
Section II: Case Part I 3. Infringement of Copyright: b) Distortion of the work, sec. 14 The integrity of the author’s is violated if - the work is distorted, - the author’s interest are effected and - the authors’ integrity interests prevail. Here: Result is controversial: Extensive market success (charts); obviously, R provided a „quality distortion“. No infringement of sec. 14
Section II: Case Part I 4. Risk of repeated infringement, sec. 97 I 1 The risk of repeated infringement is assumed in cases of an already existing infringement.
Section II: Case Part I 4. Risk of repeated infringement, sec. 97 I 1 The risk of repeated infringement is assumed in cases of an already existing infringement. 5. Interim Result: W is entiteld to claim from R to cease and desist of the CD acc. to sec. 97 I, 23, 14 Urh. G. Damages (e. g. 97 II) have not been claimed.
Section II: Case Part I II. Claims W P for „related rights infringement“ acc. to sec. 97 I, 16, 19 a, 77 II, 78 I Nr. 2 Urh. G 1. Protected rights Not only the author’s rights, but also related rights of the performing artist and the producer may be violated.
Section II: Case Part I II. Claims W P acc. to sec. 97 I, 16, 19 a, 77 II, 78 I Nr. 2 Urh. G 1. Protected rights Here: W did not only compose the melody, he also performed it himself. He is performing artist acc. to sec. 73 Urh. G. (He is not Producer, sec. 85 I Urh. G; this is the Bavarian Broadcasting Cooperation).
Section II: Case Part I II. Claims W P acc. to sec. 97 I, 16, 19 a, 77 II, 78 I Nr. 2 Urh. G 2. Infringement of protected rights There could be an infringement in form of - copies, sec. 16 I Urh. G, and by - making available to the public, sec. 19 a Urh. G.
Section II: Case Part I II. Claims W P acc. to sec. 97 I, 16, 19 a, 77 II, 78 I Nr. 2 Urh. G 2. Infringement of protected rights Here: sec. 16 I Urh. G: P saved „Romanze“ on his PC. copy (+) making available to the public, sec. 19 a Urh. G: Providing for download infringement (+)
Section II: Case Part I II. Claims W P acc. to sec. 97 I, 16, 19 a, 77 II, 78 I Nr. 2 Urh. G 3. Eventual justification? - sec. 44 a, Temporary acts of reproduction? No, saved on harddrive; not temporarily (as on buffer) - sec. 53, Private Use? No - sec. 17 II, Distribution? No consent by W - sec. 52, 52 a, Non-profit Communication? No, done for commercial purpose
Section II: Case Part I II. Claims W P acc. to sec. 97 I, 16, 19 a, 77 II, 78 I Nr. 2 Urh. G 4. Legal consequences: claim for cease and desist acc. to sec. 97 I 1 Damages, sec. 97 II: Even if he did know positevely that he was not entitled to donwload, he did not act in due diligence, sec. 276 II Amount: Calculation by licence analogy, 97 II 3, i. e. € 500
Section II: Case Part I II. Claims W T acc. to sec. 97 I, 16, 77 II Urh. G 1. Infringement of protected rights: Yes, as above 2. Justification Protection of W restricted by sec. 53 I Urh. G?
Section II: Case Part I II. Claims W T acc. to sec. 97 I, 16, 77 II Urh. G 1. Infringement of protected rights: Yes, as above 2. Justification Protection of W restricted by sec. 53 I Urh. G? No commercial purpose of T But counterexception „obviously unlawfullyproduced model“? yes
Section II: Case Part I II. Claims W T acc. to sec. 97 I, 16, 77 II Urh. G 2. Justification But counterexception „unlawfully-produced model“? yes But „obvious“? Here: (+) „Technical Copy protection“ printed on cover (sec. 95 a Urh. G) (-) Made available by professional dealer Final result: Obvious unlawfully produced (+)
Section II: Case Part I II. Claims W T acc. to sec. 97 I, 16, 77 II Urh. G 3. Legal consequences: A claim for cease and desist requires a risk of repeated infringement, sec. 97 I. Here: Obviously T will not download it a second time, but German jurisdiction keeps strict line: An effected infringement assumes risk of repetition.
Section II: Case Part I II. Claims W T acc. to sec. 97 I, 16, 77 II Urh. G 3. Legal consequences: Claim for cease and desist, sec. 97 I. Besides: Claim for damages, sec. 97 II Urh. G And: Duty to destroy illegal copy, sec. 98 I Urh. G.
Section II: Case Part II Trademark Law Claims S P for cease and desist of using the domain www. steinhuber. de I. Sec. 14 V, II Marken. G 1. Standing to sue: „Steinhuber“ is a registered trademark, sec. 4 Nr 1 Marken. G. S may sue.
Section II: Case Part II Claims S P for cease and desist of using the domain www. steinhuber. de I. Sec. 14 V, II Marken. G 2. Infringement of a trademark: a)General conditions for infringement, sec. 14 II: • P uses the domain as address in commercial use, sec. 14 III Nr. 2 Marken. G. • He also uses steinhuber as a trademark, i. e. in order to distinguish his product by a name on the market. • Finally, S did not declare his consent.
Section II: Case Part II I. Sec. 14 V, II Marken. G 2. Infringement of a trademark: b) Collision acc. to sec 14 II Marken. G: • „Double identity“, sec. 14 II Nr. 1: „using a sign which is identical to the ev. violated trade mark“ Here: No, there is www. (. . . ). de
Section II: Case Part II I. Sec. 14 V, II Marken. G 2. Infringement of a trademark: b) Collision acc. to sec 14 II Marken. G: • „Double identity“, sec. 14 II Nr. 1: „using a sign which is identical to the ev. violated trade mark“ Here: No, there is www. (. . . ). de • „Likelihood of confusion“, sec. 14 II Nr. 2: The offered goods (pianos) are partly identical, (+)
Section II: Case Part II I. Sec. 14 V, II Marken. G 2. Infringement of a trademark: b) Collision acc. to sec 14 II Marken. G: • „Double identity“, sec. 14 II Nr. 1: „using a sign which is identical to the ev. violated trade mark“ Here: No, there is www. (. . . ). de • „Likelihood of confusion“, sec. 14 II Nr. 2: The offered goods (pianos) are partly identical, (+) • Extended protection for standing reputation, 14 II Nr. 3: „Steinhuber“ enjoys reputation, but no data about intensity, (-)
Section II: Case Part II I. Sec. 14 V, II Marken. G 3. Justification: a) By authorisation of P? aa) Exhaustion, sec. 24 Marken. G? „put on the market by P under trade mark designation by S“ Here: P sells S’ pianos, but not exclusively
Section II: Case Part II I. Sec. 14 V, II Marken. G 3. Justification: a) By authorisation of P? aa) Exhaustion, sec. 24 Marken. G? P sells S’ pianos, but not exclusively Besides: No sec. 24 I if the practice „opposes the use of the trade mark in connection with further commercialisation“? Here: S cannot use www. steinhuber. de any more
Section II: Case Part II I. Sec. 14 V, II Marken. G 3. Justification: a) By authorisation of P? bb) use of TM as indication of characteristics, 23 Nr. 2? Use of a trademark itself does not „describe“ characterists, but name the producer Besides: Same balance of interests as under aa) Here: (-)
Section II: Case Part II I. Sec. 14 V, II Marken. G 3. Justification: b) By authorisation of Sven Steinhuber? Acc. to sec. 23 Nr. 1 Marken. G, the use of the proper name is generally permitted, even if it is identical with a registered Trademark.
Section II: Case Part II I. Sec. 14 V, II Marken. G 3. Justification: b) By authorisation of Sven Steinhuber? Acc. to sec. 23 Nr. 1 Marken. G, the use of the proper name is generally permitted, even if it is identical with a registered Trademark. Anyhow, sec. 23 Nr. 1 has to be interpreted according to the principles of good faith; Sven is only a kind of „dummy“. P has littel interest in the person of Sven himself. Sec. 23 Nr. 1 (-)
Section II: Case Part II I. Sec. 14 V, II Marken. G 4. Legal consequences: a) Claim for cease and desist: As P already runs the domain successfully, the danger of recurrence acc. To sec. 14 V 1 Marken. G exists.
Section II: Case Part II I. Sec. 14 V, II Marken. G 4. Legal consequences: b) Transfer of domain: NO! • S would have a better position than before; • eventually third parties have effective rights in the domain: A domain is no absolute right which is attributed exclusively to one person
Section II: Case Part II I. Sec. 15 IV, II Marken. G „Steinhuber“ is not only a registered trademark, but also a registered commercial designation referring to Steinhuber as a company. The designation has been used by P; there is an infringement. The legal consequences are the same as in sec. 14 II.
Section II: Case Part II III. Sec. 12 BGB The Bürgerliches Gesetzbuch (BGB) provides protection of unauthorized use of names as well. Anyhow, 15 Marken. G is lex specialis to sec. 12; No claim
Section II: Case Part II IV. Claims due to unfair competition S could be entitled to claims based on UWG (Unfair Competetion Act), especially on • cessation and desistance, sec. 8 I, 3 I UWG and due to • misleading commercial practices, sec. 5 II UWG.
Section II: Case Part II IV. Claims due to unfair competition 1. Standing to sue: S is a competitor of P and may therefore sue himself, sec. 8 III Nr. 1 UWG. 2. Use in commercial practice, sec. 2 I Nr. 1 UWG: S uses www. steinhuber. de for advertisement, (+)
Section II: Case Part II IV. Claims due to unfair competition 3. Unfairness a) Misleading consumer by using the domain www. steinhuber. de, sec. 5 II UWG?
Section II: Case Part II IV. Claims due to unfair competition 3. Unfairness Trademark Law has no general priority over Unfair competetion Law in the field of consumer law! Also the scope of examination is different: The impact of the average consumer’s perception is decisive. Anyhow, here, also from a consumer’s perspective the use may be misleading; he may expect that the domain refers to Steinhuber directly. Risk of misguidance (+)
Section II: Case Part II IV. Claims due to unfair competition 3. Unfairness b) Deliberate Obstruction of Competitors, sec. 4 nr. 10? Generally, there mere use of a domain is an issue of Trademark law. In cases of deliberately harming acts, UWG may be applied: Here, P does not (only) intend to lock out S from the domain, but intends to use it for advertisment reasons No deliberate obstruction
Section II: Case Part II IV. Claims due to unfair competition 4. Tangibility, sec. 3 I, II UWG There must be an tangible impairment of the consumers ability to decide autonomously. Here: (+)
Section II: Case Part II IV. Claims due to unfair competition 4. Tangibility, sec. 3 I, II UWG There must be an tangible impairment of the consumers ability to decide autonomously. Here: (+) 5. Legal Consequence, sec. 8 I UWG: Cease and desist (+)
Section II: Case Part III Patent Law I. Claim P S acc. to sec. 139 I, 9 s. 2 Nr. 1 Pat. G 1. Existing Patent? Yes, the patent has been successfully granted acc. to sec. 49, 58 Pat. G. Even if the grant was effected unlawfully, the patent is still effective
Section II: Case Part III 2. Standing to sue Yes, P holds the patent 3. Patent infringement: P uses the same mechanism, sec 9 S. 2 Nr. 1 Pat. G 4. Justification by previous use? S is not barred to use the mechanism if he verifiably used it before P applied for the patent. Here: (+)
Section II: Case Part III II. Procedural means against P’s patent 1. Objection There is a three-months-deadline for objection after granting a patent, sec. 59 I Pat. G, which here expired already. 2. Action for nullification a) Admissibility: Conditions are ample, sec. 81 Pat. G: S will claim that the conditions of sec. 3 Pat. G (lack of novelty) were not given.
Section II: Case Part III II. Procedural means against P’s patent 2. Action for nullification b) Substantial legal grounds Nullity according to sec. 22 I 1. Alt, 21 I 1 Nr. 1 Pat. G? Eventually missing novelty, sec. 3 I Pat. G? Here: P told his friend about the invention secretly; the invention was not made explicitly available to public. But: The mechanism was in use and was generally easily discernible by trained professionals. The invention lacked novelty.
Section II: Case Part III II. Procedural means against P’s patent 3. Interim result S may successfully file an action for nullification against P’s patent. III. Result P is not entitled to any claims against S. On the contrary, he may face nullification of his patent on request by S.
IV. Contact Dr. Thomas Hoffmann, LL. M. , Attorney at Law (Ger) DAAD-Lecturer in Law Tartu University Näituse 13 a 50409 Tartu, Estonia Tel +372 5919 6614 Home www. rechtintartu. ee
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