CHECK CDR regulation vs design directive
Question Q231
National Group:
Germany
Title:
The interplay between design and copyright protection for industrial products
Authors:
Prof. Dr. Christian DONLE (Attorney at Law in Berlin);
Hanna Karin HELD (Attorney at Law in Cologne);
Dr. Anke NORDEMANN-SCHIFFEL, maître en droit (Attorney at Law in Potsdam);
Prof. Dr. Jan Bernd NORDEMANN, LL.M. (Attorney at
Law in Berlin)
Reporter in
Working Committee:
Prof. Dr. Jan Bernd NORDEMANN
Date:
May 31, 2012
AIPP60008 / 29.606
I. Analysis of current law and case law
Cumulative Protection
1. Can the same industrial product be protected by both a design right and
a copyright? In other words, is the cumulative protection of the same industrial product by copyright and design law allowed in your country?
It is fundamentally possible in German law for an industrial product as is meant in this
question to enjoy protection both through a design right and through copyright law –
in particular as a work of applied art, Sec. 2 Par. 1 No. 4 German Copyright Act (Urheberrechtsgesetz, UrhG). Since the Design Directive1 came into effect, this has
been mandatory under EU law. Art. 17 sentence 1 Design Directive stipulates:
A design protected by a design right registered in or in respect of a Member
State in accordance with this Directive shall also be eligible for protection under the law of copyright of that State as from the date on which the design was
created or fixed in any form.
In this context, Recital 8 of the Design Directive should be mentioned. It states,
“it is important to establish the principle of cumulation of protection under specific registered design protection law and under copyright law.”
The Member States of the European Union therefore have no discretion to,
“exclude works of applied arts and industrial designs and models, such as the
items here in issue, from the scope of copyright protection. This is so because
of Directive 98/71/EC on the legal protection of designs which binds the Member States to afford copyright protection in this area.”2
In the case of a designer lamp which was eligible for protection as a design, the European Court of Justice considered the statutory shortening of the term of protection
1
Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection
of designs Official Journal L 289, 28/Oct/1998 p. 0028 - 0035.
2
According to Advocate General Niiljo Jaaskinen in the Opinion of 29/Mar/2012 in the case C-5/11, Criminal
Proceedings against Titus Donner.
2
of the prior existing copyright protection in Italy as contravening European law and
ruled that
“copyright protection must be conferred on all designs protected by a design
right registered in or in respect of the Member State concerned”
(CJEU GRUR 2011, 216 marg. no. 37 - Flos)
However, the requirements for protection differ between those according to German
Design Act (Geschmacksmustergesetz, GeschmMG) on the one side and those according to the German Copyright Act (UrhG) on the other. We also refer to the answers to questions 4 and 5 below.
Art. 2 (7) RBC
2. In your country, has copyright protection for applied art ever been refused for a work with a foreign country of origin pursuant to Article 2(7)
RBC?
Yes. The Higher Regional Court of Hamm denied copyright protection in its judgement of 25 June 19923 to a floor lamp by Eileen Gray, first “published” in Italy, citing
Art. 2 (7) RBC. The Higher Regional Court of Karlsruhe agreed with this opinion in its
decision of 22 September 19934.
However, the Higher Regional Court of Hamm had already rejected the application of
Art. 2 (7) RBC to works of authors who are citizens of the European Union in its decision of 11 January 19945, specifically citing the prohibition of discrimination of the
(then) Art. 7 (1) EC Treaty. The court thereby affirmed copyright protection as per
Sec. 2 par. 1 no. 4 German Copyright Act for a side table, again by Eileen Gray.
We are not aware of any other decisions.
3
NJW 1993, 1479 et seq. – Tube Light.
GRUR 1994, 283 et seq. – Eileen Gray.
5
4 U 190/93, available from juris.
4
3
Registration/Examination
3. In order to enjoy design right protection for industrial products, is registration of a design necessary? In order for the design to be registered, is
a substantial examination necessary?
In order to answer this question a differentiation has to be made. In Germany, there
exist two protection systems for designs: the national German design on the one side
whose protection effect is limited to Germany and the so-called Community design
on the other side which offers EU-wide protection.
In order to enjoy protection by a design under national German law, a registration of
the design at the German Patent and Trademark Office is fundamentally required, as
per Sec. 27 Par. 1 German Design Act (GeschmMG).
In the case of the Community Design, however, registration is not mandatory. Under
Art. 12 CDR6, the maximum term of protection of a registered design is 25 years from
the day of filing the application. In addition, Art. 11 CDR also grants non-registered
designs protection, specifically for a period of 3 years from the day the design was
first made available to the public within the Community (Art. 11 Par. 1 CDR).
According to both German (Sec. 2 Par. 1 GeschmMG) and European law (Art. 4
CDR), a design must be new and demonstrate originality or (in European law) individual character (more details under question 4). These requirements are, however,
not checked in the registration procedure. In the case of the national German design,
the responsible German Patent and Trademark Office only examins whether the design in question constitutes a design as per Sec. 1 no. 1 GeschmMG or is fundamentally excluded from protection as it contravenes public policy or morality or represents
an abuse of an object of public interest (Sec. 3 Par. 1 No. 3 and 4 GeschmMG). Other than this, the Office only examins the fulfilment of the formal requirements of the
6
Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Designs, amended by Council Regulation (EC) 1891/2006 of 18 December 2006.
4
application, Sec. 16 GeschmMG. On a European level, the Office for Harmonisation
in the Internal Market also only examins, in relation to European design applications,
the fulfilment of formal requirements, Art. 35, 36, 45 CDR.
As far as registered designs are concerned, there is an assumption that they are legally valid (Sec. 39 GeschmMG, Art. 85 Par. 1 CDR). Any lack of eligibility for protection can, in the case of registered community designs, only be asserted through a
counterclaim for invalidity.
Hence, the registered community design may only be cancelled from the register on
the basis of an invalidity claim which must be made in the form of a counterclaim in
infringement proceedings. Furthermore, an application for cancellation can be filed
with the Office for Harmonisation in the Internal Market (Art. 24 Par. 1 CDR). A registered German design can, only be removed from the register following a respective a
claim, however, in contrast to the Community design, anyone is entitled to file such a
claim (Sec. 33 GeschmMG).
Requirements
4. What are the requirements to obtain industrial design protection or copyright protection respectively, for industrial products in each country?
What are the differences between these requirements?
A design can be afforded protection as such according to both German law as well
as Community law, if it is new and has individual character (Sec. 2 par. 1 GeschmMG, Art. 4 Par. 1 CDR).
A registered design is considered “new” if no identical design has been made available to the public prior to the date of filing of the application (Sec. 2 Par. 2 sentence 1
GeschmMG, Art. 5 CDR). In the case of non-registered Community designs, the important factor is that no identical design has been made available to the public prior
to the date on which the design in question was first made available to the public.
5
Designs are considered identical if their features differ in immaterial details (Sec. 2
Par. 2 sentence 2 GeschmMG, Art. 5 Par. 2 CDR).
A design possesses “individual character” if the overall impression it produces on the
informed user differs from the overall impression produced on such a user by any
design which has been made available to the public prior to the date of filing of the
respective application (Sec. 2 Par. 3 GeschmMG; Art. 6 Par. 1 CDR). The degree of
freedom for the designer in developing the design is also to be taken into consideration. On the one hand, large numbers of existing designs in a particular market segment and little freedom for the designer can lead to only small deviations in design
creating a different overall impression on the informed user. On the other hand,
where fewer designs exist and thus a higher freedom for the designer is possible,
even large differences in design can produce the same overall impression on the informed user.7 Whether or not the design in suit possesses the necessary individual
character must be ascertained through an individual comparison with already existing
designs.8
The novelty and individual character of registered and non-registered designs are
determined by the same criteria; there are no differences in respect of protectability.
Copyright protection is afforded in Germany – in contrast to protection for registered
designs – without registration or compliance with any other formalities. The protection
comes into effect upon creation. It is thus not possible to lose or restrict copyright
protection by disclosure prior to registration unlike the case is for registered design
protection.
Eligibility for copyright protection of designs has not been harmonised in EU law. Art.
17 sentence 2 Community Design Directive stipulates:
7
C.f. Explanatory notes to Government Bill on German Design Reform Act (Geschmacksmusterreformgesetz)
BT Printed Paper 15/1075, p. 34 on § 2 GeschmMG; also BGH GRUR 2011, 1112 part. no. 32 - Schreibgeräte;
BGH GRUR 2011, 142 part. no. 17 - Untersetzer; Steinberg in Büscher/Dittmer/Schiwy, Gewerblicher Rechtsschutz Urheberrecht Medienrecht, 2nd ed., Art. 6 GGV marg. no. 9; Ruhl, Gemeinschaftsgeschmacksmuster, 2nd
ed. year 2009, Art. 6 marg. no. 17; Koschtial GRUR Int. 2003, 973, 977.
8
BGH GRUR 2010, 718 Tz. 33 - Verlängerte Limousinen.
6
“The extent to which, and the conditions under which, such a protection is
conferred, including the level of originality required, shall be determined by
each Member State.”
Sec. 2 Par. 2 German Copyright Act (UrhG) requires, for the copyright protection of a
design, that the design constitutes a “personal intellectual creation”. According to
prevailing opinion9 the following four criteria must be met for a “personal intellectual
creation”:
– the work must have been personally created,
– have found a perceivable form and
– individual character, and
– the necessary threshold of originality.
Designs generally represent works of applied art which can enjoy copyright protection under Sec. 2 Par. 1 No. 4 UrhG. This is because works of applied art differ from
works of fine art in that they have an intended functional use.10 They include utensils
and articles of daily use with an artistic form or a graphic design serving an intended
use. According to German case law, works of applied art can, for example include all
types of ornament11, furniture12, fashion products13 or climbing frames for children14.
Thus, the term applied art in copyright law, typically also covers designs eligible for
design protection.
In respect of the question as to whether a personal-intellectual creation exists, a distinction must be made between design features determined by technical considerations and artistic features; in particular, individuality can only exist where the design
9
Siehe nur A. Nordemann in Fromm/Nordemann, Urheberrecht, 10. Auflage 2008, § 2 Rn. 20; Schricker/Loewenheim/Loewenheim, Urheberrecht, 3. Auflage 2010, § 2 Rn. 9.
10
BGH GRUR 2012, 58, 60 marg. no. 17 – Seilzirkus; BGH GRUR 2011, 803, 805, marg. no. 31 – Lernspiele.
11
BGH GRUR 1995, 581, 582 – Silberdistel.
12
BGH GRUR 1987, 903,904 et seq. – Le Corbusier-Möbel.
13
BGH GRUR 1984, 453, 454 – Hemdblusenkleid.
14
BGH GRUR 2012, 58 – Seilzirkus.
7
is not prescribed by technical requirements but where freedom for artistic input exists.15 In the case of articles of daily use, the individuality cannot arise from the technical features themselves but only from how they are additionally artistically designed. This artistic design can also be created through “clear lines without ornamentation”.16
Up until now, German case law has required a high threshold of copyright originality
of works of applied art. The threshold of originality is apparently only reached if a
work far exceeds the average designer input.17 It is from this that the “Stufentheorie”
(approx.: “doctrine of levels”) mentioned in the AIPPI instructions on Q231 are derived: no protection for the first degree (average level of designer skill) nor for the
second degree (exceeding average level of designer skill) but only for the third and
last degree of substantially exceeding the average level of designer skill. In its reasoning, the German Federal Court of Justice stated that with the industrial design a
protection right exists beneath copyright through which the protection of works which
do not attain the third degree is also afforded in the area of applied art.18 In this way,
the vast majority of design output in Germany does not receive copyright protection.
Up to 97.5% of all design work remains unprotected19, whilst, for example, photographs enjoy copyright protection almost without exception (as photographic works
as per Sec. 2 Par. 1 No. 5 UrhG or as simple photographs as per Sec. 72 UrhG.) The
German Federal Constitutional Court did not object, from a constitutional point of
view, to the increased requirements for protection which the case law had placed on
works of applied art because they were in accordance with the constitutional provisions on protection of property under Art. 14 Par. 1 German Constitution (GG) and no
15
BGH GRUR 2012, 58, 60 marg. no. 19 et seq. – Seilzirkus.
BGH GRUR 2012, 58, 60 marg. no. 22 et seq. and 62, part no. 36 – Seilzirkus.
17
BGH GRUR 1995, 581, 582 – Silberdistel.
18
BGH GRUR 1995, 581, 582 – Silberdistel; OLG Köln GRUR-RR 2010, 139 – Weißbierglas mit Fußballkugel;
OLG Nürnberg GRUR-RR 2001, 225, 227 – Dienstanweisung; Dreier/Schulze/Schulze, Urheberrecht, 3rd ed.
2008, § 2 marg. no. 160; Schulze in Loewenheim, Handbuch des Urheberrechts, 2nd ed. 2009, § 9 marg. no. 98.
19
See here in detail, A. Nordemann/Heise ZUM 2001, 128, 137 et seq.
16
8
arbitrary discrimination was being applied, in contravention of Art. 3 Par. 1 GG,
through lower barriers to protection for other types of work. 20
In more recent decisions, the German Federal Court of Justice left the question open
as to whether it will continue to adhere to the Stufentheorie. The criterion of significantly exceeding the average level of design skill (Stufentheorie) is at least no longer
in the forefront. Rather, copyright protection should be assumed for works of applied
art where “a creation with individual character, whose aesthetic content has achieved
such a degree that, in the opinion of those receptive to art and familiar with how art is
viewed, the object can be considered an “artistic” creation”.21 In its Seilzirkus decision, the German Federal Court of Justice expressly left the question open as to
whether it will continue to adhere to the Stufentheorie as this was not relevant in the
case in dispute; copyright protection was already denied to the climbing frame on
which the decision was based, due to the fact that its aesthetic effect was due to the
intended use and determined by technical considerations.22 The lower courts – such
as the Higher Regional Court of Cologne – have, however, expressly applied the
Stufentheorie also in more recent decisions.23
5. Are the requirements for copyright protection for industrial products different from the requirements for copyright protection for other ordinary
artistic products (fine arts)?
Yes. The required threshold of originality is fundamentally much lower for fine arts
than for applied arts, at least insofar as the “Stufentheorie” (approx.: “doctrine of levels”) is still applied in German law (see question 4). In this case, as far as works of
applied art are concerned, only creations which demonstrate a considerably above
average design skill can be protected under copyright law as applied art. In contrast,
there are no such increased protection requirements for fine arts. For fine art, the socalled “Kleine Münze” (work of minimal creativity, literally “small coin”) is also copy-
20
BVerfG GRUR 2005, 410, 411 – Das laufende Auge.
BGH GRUR 2012, 58, 60 part no. 17 – Seilzirkus; see also BGH GRUR 2011, 803, 805, part no. 31 –
Lernspiele.
22
BGH GRUR 2012, 58, 62 part no. 33-36 – Seilzirkus.
21
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right protected, that is to say creations which demonstrate a lower level of individual
character. Simple drawings and plain designs may also enjoy protection under the
doctrine of “small coins”.24 Hence, the crucial factor determining copyright protection
is the intended use which distinguishes applied art from the non-functional fine art.
This raises, in part, difficult questions of delimitation. Furniture25, fashion products26
or climbing frames for children27 do have a clear intended function and thus constitute applied art. However, the German Federal Court of Justice also characterised
ornaments of all types28 as applied art; this seems dubious as ornaments in themselves only serve an aesthetic purpose and should thus be classified as fine art. In
contrast, a signet (logo/graphic) has a functional purpose, namely designating a
company, a product or a service and could thus qualify as applied art although as a
graphic it generically belongs to fine art. A successful, original, memorable and attractively designed signet thus does not fulfil the requirements of level of originality of
applied art29. The Higher Regional Court of Hamburg nevertheless wanted to protect
a signet which only “noticeably [exceeded] a mere reproduction of nature” as a “small
coin” but not as a work of applied art but as a work of fine art.30
Scope of Protection and Assessment of Infringement
6. Is the scope of the copyright protection for industrial products different
than that for other ordinary artistic products (fine arts)? If so in what
ways?
In answering questions 4. and 5. it has been shown that the case law from the highest German court on the eligibility for copyright protection of products which serve an
intended functional purpose and for which industrial design protection is available
23
OLG Köln ZUM 2012, 52 – Cremetiegel bei QVC.
BGH GRUR 1995, 581, 582 – Silberdistel; Wandtke/Bullinger/Bullinger, Urheberrecht, 3rd ed. 2008, § 2
marg. no. 84; A. Nordemann in Fromm/Nordemann, Urheberrecht, 10. Aufl. 2008, § 2 Rn.145.
25
BGH GRUR 1987, 903,904 et seq. – Le Corbusier-Möbel.
26
BGH GRUR 1984, 453, 454 – Hemdblusenkleid.
27
BGH GRUR 2012, 58 – Seilzirkus.
28
BGH GRUR 1995, 581, 582 – Silberdistel.
29
BVerfG GRUR 2005, 410, 410 – Das laufende Auge.
30
OLG Hamburg GRUR-RR 2005, 181, 182 – Weinlaubblatt.
24
10
has always been subject to higher requirements than the protectability of works of
fine art. Utensils are only covered by copyright protection in cases where there is a
considerable exceeding of the average degree of design skill.31 As shown, the German Federal Court of Justice left it open in its 2011 decision as to whether it intends
to continue applying the so-called Stufentheorie.32
Insofar as industrial products fulfil these requirements and they are available for copyright protection, the criteria for assessing the scope of protection are fundamentally
not different from those for other conventional artistic objects (objects of fine art).
The scope of protection of copyright for all work categories eligible for copyright protection is determined for a particular product according to the individuality and complexity of the work. The more individual and complex a work is, that is the higher the
creative content, the wider the scope of copyright protection. A simple work with low
creative content possesses a narrow scope of protection and is often only protected
against direct adoption (imitations). In contrast, works with a high creative content are
also protected against adaptations which are further removed and more in the area of
similarity.33
For products with an intended use, it is significant that the scope of protection of copyright only refers to the individual work elements characterised by the author themselves. Technical elements and elements which belong to the prior art as well as elements without any particular peculiarity are not considered.34 Utensils which are
eligible for copyright protection are thus only protected against such product imitation
which not only adopts the functional and technical elements but specifically those
elements which make up the copyright protection. However, these requirements apply, as mentioned above, for all categories of works and not only for works of applied
31
BGH GRUR 1995, 581, 582 – Silberdistel; GRUR 1982, 305, 307 – Büromöbelprogramm, GRUR 2004, 941,
942 - Metallbetten, BVerfG GRUR 2005, 410 – Laufendes Auge.
32
BGH GRUR 2012, 58, 64 – Seilzirkus.
33
Schricker/Wild, Urheberrecht, 4th ed. 2010, § 97 marg. no. 8 et seq.; Dreier/Schulze/Dreier, Urheberrechtsgesetz, 3rd ed. 2008, § 97 marg. no. 11.
34
BGH GRUR 1995, 581, 582 – Silberdistel, GRUR 2012, 58, 64 – Seilzirkus; Schricker/Wild, Urheberrecht, 4th
ed. 2010, § 97marg. no. 8 et seq.; Dreier/Schulze/Dreier, Urheberrechtsgesetz, 3rd ed. 2008, § 97 marg. no. 11.
11
art with an intended functional use. Naturally, the question of the technical and functional determination of design elements plays a larger role in relation to articles of
daily use. Therefore, in infringement proceedings concerning the infringement of
copyrights in articles of daily use, the question of delimitation is regularly key, namely
whether the copied design elements are of a purely technical and functional nature or
whether they are elements individually designed by the original designer, which are
contributory factors to the eligibility for copyright protection.35
7. Are the criteria for assessing infringement of copyright protected industrial products different from the criteria for assessing infringement of a
design right?
The differing requirements for protection in copyright and design law have already
been laid out in the response to question 4. The differing legal nature and the differing requirements for protection of the rights arise naturally also from the differing requirements for the existence of rights infringements which are not supposed to be
comprehensively described here.
A substantial difference lies in the underlying intention of the protection rights. Rights
from an industrial design can generally only be asserted in the commercial sphere
and not against acts undertaken in the private sphere for non-commercial purposes
(Sec. 40 No. 1 GeschmMG, Art. 20 CDR). In contrast, private acts are generally also
covered by copyright protection whereby some acts are expressly permitted in exceptional cases (e.g. private copy as per Sec. 53 Par. 1 UrhG).36 In the case of rights
infringements by industrial products, the relevant act is likely to be for commercial
purposes in any case, hence differentiation in relation to this assessment is of little
significance.
An act is considered an infringement of copyright where the author’s moral rights
(Sec. 12-14 UrhG) or the author’s exploitation rights (Sec. 15 et seq. UrhG) are vio-
35
36
C.f. e.g. BGH GRUR 2012, 58, 64 – Seilzirkus.
Schricker/v.Ungern-Sternberg, Urheberrecht, 4th ed. 2010, § 15 marg. no. 13.
12
lated. As explained under question 6, copyright protection does not only exist against
identical copies but also against adapted imitations insofar as the fundamental artistic
features which give the work its individual character and thus its copyright protection
are identical. It is also significant to examine the extent to which the infringed work
possesses originality. For this, a comparison with the previously known work protection is necessary. In the examination of the infringement, case law does not look at
the differences between the works but at their similarities.37 Thus, a work which does
differ from another, copyright protected work in its overall impression but has also
adopted the creative elements thus infringing the rights in the original work. 38 A (permitted) free use applies if, in light of the individual character of the new work, the creative elements borrowed from the older work pale into insignificance (so-called
Blässetheorie).39
An infringement of a design right is considered to have been committed where a third
party has used the design without the consent of the right holder. The protection covers not only identical imitations but also adaptations where these do not produce a
different overall impression on an informed user. In assessing the scope of protection
of the design right, the degree of freedom of the designer when developing the design shall be taken into (Sec. 38 GeschmMG, Art. 10 and 19 Par. 1 CDR). As with
copyright, the scope of protection of the design is thus dependent on its level of originality and degree of individual character. When examining alleged infringement, not
only the similarities but also the differences in the designs in question have to be
considered, according to case law, when assessing an identical overall impression.40
This assessment measure differs from the approach in copyright law where – as described above – only similarities and not differences are analysed in the assessment
of an infringement. As far as can be seen, however, these different assessment
measures have in practice, in particular in the area of protection of articles of daily
use, as yet not led to different conclusions.
37
BGH GRUR 1981, 267, 269 – Dirlada; Dreier/Schulze/Dreier, Urheberrechtsgesetz, 3. Auflage 2008, § 97 Rn.
11.
38
Dreier/Schulze/Dreier, Urheberrechtsgesetz, 3rd ed. 2008, § 97 marg. no. 11.
39
Most recently BGH GRUR 2011, 134 part. no. 33 – Perlentaucher, with further refs. from case law.
40
BGH ZUM-RD 2012, 17, 24 – ICE; GRUR 2011, 142 – Untersetzer.
13
Like copyright law (see question 6) design law also provides for protection not applying to such elements which are required by technical or functional considerations
(Sec. 3 Par. 1 No. 1 GeschmMG, Art. 8 Par. 1 CDR). When assessing an infringement under design law, functional and purely technically determined design elements
are thus not considered. In the area of articles of daily use, the dispute about the
rights infringement is thus often focussed, just as in copyright law (see question 6),
on the question as to whether the similar elements are of a purely technical or functional nature as well as whether the degree of freedom of the designer and thus the
scope of protection are restricted.
8. Is it a relevant defence under copyright or design law that the industrial
product was created independently of the older work or design?
In copyright law, the industrial product having been created independently of an older
work is a relevant defence. If two creators working independently of one another
come to the same result, both results can enjoy copyright protection. This constitutes
a so-called double creation with the consequence that both authors have rights in
their works and are not entitled to claims against one another but apparently against
third parties.41 In copyright law, there exists no absolute notion of novelty. It protects
the personal intellectual creation and does not, unlike the industrial protection right,
follow the principle of priority. Double creations are in practice, however, very rare. In
the case of substantial similarities between the works, one can usually assume that
the author of the newer work consciously or subconsciously utilised the older work.
Case law thus assumes prima facie evidence which the owner of the younger work
can then disprove by describing events which show an explanation for the similarities
other than his having drawn on the older work. 42
In contrast, an industrial product eligible for protection under German design law
must be objectively new. An industrial design is considered new if no identical design
41
Dreier/Schulze/Dreier, Urheberrechtsgesetz, 3rd ed. 2008, § 2 marg. no. 17; A. Nordemann in
Fromm/Nordemann, Urheberrecht, 10th ed. 2008, §§ 23/24 marg. no. 64 et seq.
42
BGH GRUR 1988, 810, 811 – Fantasy; in detail A. Nordemann in Fromm/Nordemann, Urheberrecht, 10th ed.
2008, §§ 23/24 marg. no. 64.
14
has been made available to the public prior to the date of filing of the respective application. German design law follows the principle of priority. If the industrial product
conflicts with an older design, the right is decided according to who first fulfilled the
criteria for obtaining the right. Such criteria include, in respect of registered designs,
the date of application i.e. the priority date. For non-registered designs, the relevant
time is the date of first making available to the public. Thus, it follows that rights are
only considered equal and therefore not grounds for claims against one another if
they have equal priority.
In the case of German designs and registered Community designs, the special situation applies that a third party acting in good faith can assert the so-called objection of
prior use (Sec. 41 GeschmMG, Art. 22 CDR). This means that rights of prohibition
against a third party who had in good faith begun using an identical design, that had
been developed independently of the registered design, in Germany prior to the date
of filing or who had made real and serious preparations for such use, cannot be asserted. The third party is entitled to exploit the design. The third party is not entitled to
issue licenses. Furthermore, the right of prior use is not transferable unless the transfer is undertaken together with a part of the company in whose scope the use was
undertaken or the preparations were made.
For the non-registered Community design, Art. 19 Par. 2 CDR confers upon the owner of the non-registered design only a right to prevent use if the contested use results
from copying the protected design. The contested use is not considered the result of
copying the protected design if it is the result of an independent design by a designer
of whom it can be assumed that he was not aware of the design disclosed by the respective owner. Vice versa, an imitation is deemed to exist where the user has had
knowledge of the earlier design at the time of development of his design. It is irrelevant, however, whether the user was conscious of such knowledge or not as a subconscious use is also covered.43
43
Ruhl, Gemeinschaftsgeschmacksmuster, 2nd ed. 2010, Art. 19 marg. no. 72.
15
Duration of Protection
9. How long is the duration of industrial design protection or copyright protection for industrial products, respectively?
Under Sec. 27, 28 GeschmMG and Art. 12 CDR, the maximum term of protection of
a registered national design or a registered community design is 25 years from the
date of filing the application. The entry initially applies only for 5 years but can then
be extended in a series of 5 year steps to 25 years.
Furthermore, Art. 11 CDR provides protection also to non-registered designs for a
period of 3 years from the date on which the design was first made available to the
public within the Community (Art. 11 Par. 1 CDR).
Copyright is protected in Germany – as in the rest of the EU – up to 70 years after
the death of the author (Sec. 64 German Copyright Act, UrhG). If more than one designer created a work as co-authors, the copyright expires 70 years after the death of
the last surviving author (Sec. 65 UrhG). Under Sec. 69 UrhG, the term is calculated
from the 31 December of the relevant year of death.
10. What happens upon expiration of the IP right having the shorter term? In
other words, after the term for industrial design protection expires, does
the copyright protection continue?
Yes. Under EU law there is even an obligation for Germany to provide such copyright
protection (c.f. question 1).
16
Measures for adjustment
11. In your country, is there any measure for adjustment so that the same
industrial product may not be protected by both a design right and a
copyright or, by a copyright after the design right expires?
No. On the contrary: EU law bindingly prescribes for Germany the coexistence of design and copyright protection (see question 1).
II. Proposal for Harmonisation
12. For industrial products, should there be any cumulative protection by
industrial design rights and copyright?
Yes. Under the current legal situation, a cumulative protection for industrial products
through design rights and copyrights exists. This dual protection system has not led
to disadvantageous effects and the cumulative protection must be maintained. As
mentioned above in answer to question 1, Germany is obligated under EU law anyway, to provide cumulative protection.
13.If so, should there be any measures to resolve this overlap? What
measures should be taken? For example, once a certain artistic work
has enjoyed industrial design protection, should copyright protection be
denied for the same work?
In the case of a cumulative protection system of the hitherto existing industrial design
protection, overlaps are in conformity with the system. The overlaps should not and
may not be replaced by an alternative system of protection under European law as
this would lead to numerous difficult and discriminatory delimitation issues and ultimately a worsening of protection.
17
The CJEU clearly explained in its decision, C-168/09 Flos SpA v Semeraro Casa e
Famiglia SpA that works of applied art must be afforded copyright protection and that
there was no room for discretion for the Member States:
“37
Indeed, it is clear from the wording of Article 17 of Directive 98/71, and
particularly from the use of the word ‘also’ in the first sentence thereof, that
copyright protection must be conferred on all designs protected by a design
right registered in or in respect of the Member State concerned.
38
The intention of the European Union legislature to confer that protection also emerges clearly from recital 8 in the preamble to Directive 98/71, affirming, in the absence of harmonisation of copyright legislation, the principle
of cumulation of protection under specific registered design protection law and
under copyright law.”
It is also desirable that industrial designs and copyright exist alongside one another
for works of applied art and industrial products.
Within industrial property there are numerous other constellations which lead to overlaps in areas of law but which also coexist without problems. An example would be
“logos” and similar graphics which can be cumulatively protected as trademarks and
as industrial designs and often are.
The cumulative protection through a design right and copyright has as yet not led to
negative effects and should be maintained. Furthermore, an elimination of the overlap would not be legally permissible (c.f. 12. above).
14. National Groups are invited to comment on any additional issue concerning the relationship between design and copyright protection for industrial products that they deem relevant.
As explained under question 5. above, the requirements in respect of copyright as to
the level of creativity in the area of applied art and for industrial products as per German case law, are stricter than for other works.
18
We see this as being problematic. It does not seem to be either politically desirable
nor legally justified. Advocate General Niiljo Jaaskinen, in the opinion of 29 March
2012 in the reference case C-5/11 before the CJEU, criticised the fact that in Italy
there is a stubborn refusal to apply copyright protection to works of applied art. This
also applies, slightly weakened, in part also for German case law.
Whilst (German) case law has a relatively low threshold for attaining work quality in
all other work categories (“small coin”, “kleine Münze”), this only does not apply to
applied art, according to hitherto applicable case law. The German Constitutional
Court44 states in this context:
“This does not apply, however, according to the judicature of the BGH, in the
area of applied art, namely to articles of daily use with artistic design and thus
to works which are not only intended to be viewed but which also serve an intended functional purpose. In this case, case law sets stricter requirements in
terms of the threshold of originality and demands a significant exceeding of
the average level of design for work quality and thus copyright protection. This
is justified due to the possibility for industrial design protection which exists
here as per the German Design Act (Geschm-MG).”
Despite the fact that the German Constitutional Court did not see any violation of the
principle of equality, because industrial design protection is specifically available and
provided for in the area of applied art and no practical problem was demonstrated in
the specific constitutional complaint, we nevertheless consider the case law to be in
need of correction.
Industrial design protection is, namely, also available to most other types of work.
Sculptors, painters, illustrators, programmers of software user interfaces etc. apply
for and receive design protection for their works. Simultaneously, they receive, quickly and with a relatively low entry level, copyright protection through the case law under the doctrine of “small coin”.
Only so-called applied art, commonly therefore product design, is treated differently,
specifically with a per se correct reference to the possibility of design protection. This
19
reference is, however, systematically unjustified as it could be countered with countless other art genres (just one example being sculpture) – but it is not countered.
There is no justification for this – this matter is also not discussed in case law.
The argument used to justify the strict requirements as to the level of originality,
namely that the possibility of design protection exists, also does not hold for other
reasons. Design protection has in part other requirements for protection than copyright protection45. Design protection also requires formalities to be fulfilled in German
law and Community law if the designer wishes to exploit the maximum term of protection of 25 years. The registration of industrial designs also incurs costs (application and extension fees, possibly cost of patent attorney or attorney at law). Finally,
the design protection is much shorter (maximum 25 years). The strict requirements
for the eligibility for protection of works of applied art also lead to considerable legal
uncertainty amongst the relevant persons as prior to a legal dispute it cannot be reliably determined whether the respective design is copyright protected or not.
The German approach also appears to lack justification under European law. The
thresholds for protection for “works” have been explicitly reduced through a process
of harmonisation under European law, at least for photographs, software and databases through term of protection, software and database directives. According to Art.
6 of the Term of Protection Directive 93/98/EEC, for example, photographs are already considered copyright protected works if they are “original”. They must merely
be the result of the author’s own intellectual creation. No other criteria may be applied to determine their eligibility for protection. Thus, the thresholds for copyright
protection in this genre have been considerably reduced, something which was confirmed by the CJEU Painer decision (C-145/10). As photographs can also be registered and protected under design law, it does not seem fair, that applied art is structurally disadvantaged compared to other categories of work. The possibility of design
protection alone cannot offer sufficient justification as this protection possibility also
44
BVerfG, Decision of 26 Jan 2005 - 1 BvR 157/02 -, GRUR 2005, 410- Laufendes Auge.
Novelty and individual character; see also LG Hamburg GRUR-RR 2009, 123, 127 – Gartenstühle and LG
Hamburg GRUR-RR 2009, 211, 212 - Bauhaus-Klassiker.
45
20
exists for numerous other work categories for which the copyright related consequences do not apply.
Until now, one could deduce, from the regulatory practice of the EU, a requirement
not to set too high requirements for copyright protection not to demand any other criteria aside from the originality, in particular no qualitative or aesthetic criteria. The
CJEU has also applied the low protection requirements of the three EU directives on
computer programs, databases and photographs to works of speech and the user
interface of a computer program.46
Following this regulatory and jurisprudent practice of the European Union, the respective German literature came to the opinion that the “small coin” should also be
protected in respect of designs47. However, the Community Design Directive was
passed after the software, protection term and database directives. The Design Directive explicitly leaves it to the Member States to determine the scope of copyright
protection and its requirements for the area of applied art (c.f. question 4). It has
therefore as yet not been clarified as to whether works of applied art are excluded
from the European law notion of “works” according to the CJEU. Nevertheless, a
harmonisation effect, in the sense of completing the internal market, can only be
achieved through the reduction of the strict German protection requirements.
Against lowering the threshold of originality in the area of applied art, it is argued that
this would disproportionately restrict the creative freedom of third parties for the very
long time period of the copyright protection term (70 years after the death of the author). Whether this objection can be relevant depends on which scope of protection is
afforded to protected works of applied art. This depends upon the number of works in
46
CJEU GRUR Int. 2010, 35, 39, part. no. 33-37 – Infopaq; CJEU GRUR Int. 2011, 148, 151, part no. 45 –
Benutzeroberfläche.
47
Zentek WRP 2010, 73; Koschtial GRUR 2004, 555, 559 et seq.; Axel Nordemann/Heise ZUM 2001, 128, 137
et seq.; Schricker GRUR 1996, 816, 818 et seq.; A. Nordemann in Fromm/Nordemann, Urheberrecht, 10th ed.
2008, § 2 marg. no. 150; HK-UrhR/Dreyer, Urheberrecht, 2nd ed. 2008, § 2 marg. no. 61 et seq.; Loewenheim in
Loewenheim, Handbuch des Urheberrechts, 2nd ed. 2009, § 6 marg. no. 19 et seq.; Schulze in Loewenheim, loc.
cit., § 9 marg. no. 99; Schricker/Loewenheim/Loewenheim, Urheberrecht, 3rd ed. 2010, marg. no. 33 and esp.
160; different opinion Rehbinder, Urheberrecht, 16th ed. 2010, marg. no. 186; Schack , Urheber- und Urhebervertragsrecht, 5th ed. 2010 marg. no. 232.
21
the relevant market segment: works with a low aesthetic surplus only receive, in extreme cases, protection against identical reproduction. If the author has created
something artistically exceptional, for example provided the impulse for a new artistic
style, copyright protection can go far beyond protection against identity. Experiences
from other EU countries which set a much lower threshold of originality than Germany have shown that dealing with the scope of protection in this way means the creative freedom of third parties is not disproportionately restricted. Furthermore, the third
party is still entitled to the defence that his (later) design was created independently
from the earlier design48.
In light of the significance and evaluation of “product design” today, a correction of
the past German case law seems necessary. Objects of applied art are increasingly
being exhibited in large museums and art collections and form a serious part of such
collections. Experts in the field of art and culture have examined intensively applied
art and there is no doubt that it constitutes a significant part of modern art and culture. The public is intensely aware of this discussion and the assessment so that a
differentiated treatment of the works of applied art and of fine art seems unjustifiable.
Politically and economically speaking, a differentiation in the sense of a discrimination against works of applied art is not desirable or justifiable. European design is
held in high regard and considered of great value without which the successes of the
European economies would not have been possible. A discriminatory treatment of
this work category in comparison to other work categories is also impossible to justify
under copyright law or on politico economic grounds. The notion of work under copyright law should thus demand a uniform threshold of originality for all genres of work,
without specifically excluding design or applied art.
It does have to be “art”, however, for copyright protection to seem appropriate. Hence, the
BGH’s Seilzirkus decision seems to be correct. It requires that a sufficient aesthetic quality is
present so that in the opinion of those receptive to art and familiar with how art is viewed, the
48
C.f. BGH GRUR 1971, 266, 268 - Magdalenenarie, complaint of double creation.
22
object can be considered an “artistic” creation.49 The aesthetic effect can consequently not
be due to the functional purpose or determined by technical considerations. This thus
equates works of applied art with works of fine art which are also only protected if they constitute “artistic creations”. Other hurdles – such as the Stufentheorie – should, however, not
apply in respect of copyright protection of works of applied art, for these artistic creations in
comparison to the requirements of protection for fine art. With this solution, the numerous
difficulties in delimiting applied art and fine art would also be solved, at least for the part of
the work of applied art which is not due to its intended functional use or technically determined (see question 5.). It would be, for example, irrelevant, whether an ornament (silver
jewellery) such as a Carline thistle (Silberdistel) should be classified as a work of applied or
fine art (see question 5 above). The aesthetic effect of such an ornament is not a consequence of its intended purpose or determined by technical considerations. Only inasmuch as
an aesthetic effect is caused by the intended purpose or technical considerations must a
differentiation be made between applied art and fine art as applied art in such cases (in respect of these characteristics) remains copyright free.
Summary
Under German law, an industrial product can in general be protected by both a design right
as well as copyright. In Germany, two systems of protection are available: the national German design right on the one side and on the other, the so-called community design which
offers EU-wide protection. According to both German law and community law, any design can
be protected provided it is new and demonstrates originality. In order to be eligible to copyright protection, it must be a “personal intellectual creation”. Up until now, German case law
has required a high threshold of originality of works of applied art. The threshold of originality
is apparently only reached if a work far exceeds the average designer input. In more recent
decisions, the German Federal Court of Justice left the question open as to whether it will
continue to adhere to that principle however it demanded as a basic tenet that, in the opinion
of those in the relevant art circles, the work can be considered an “artistic” creation. Differing
requirements for the confirmation of a rights infringement exist due to the differing legal nature and the differing conditions for protection of copyright and design rights. Under copyright
law, for instance, a relevant objection would be that the industrial product was created independently of the older work. The maximum term of protection of a registered national design
or a registered community design is 25 years from the date of filing of the application. A non-
49
BGH GRUR 2012, 58, 60 part. no. 17, 19 et seq. – Seilzirkus.
23
registered design is afforded protection for a period of 3 years from the day the design was
first made available to the public within the Community. Copyright in Germany is protected
until 70 years after the death of the author. The cumulative protection through design rights
and copyright has so far not led to negative effects and should be retained. The report sees a
problem in the fact that the threshold of originality for attaining copyright protection for applied
art and industrial products is higher than for other works.
Résumé
En droit allemand, un produit industriel peut être en principe protégé aussi bien par dessin ou
modèle qu'au titre du droit d'auteur. Il existe deux systèmes de protection pour les dessins et
modèles en Allemagne : d'une part, la protection nationale allemande des dessins ou
modèles, d'autre part la protection communautaire des dessins ou modèles qui protège les
produits industriels dans toute l'Union Européenne. En tant que droit de dessin ou modèle, un
modèle qui est nouveau et qui a un caractère particulier est aussi bien protégé par le droit
allemand que par le droit communautaire. Pour pouvoir bénéficier de la protection par le droit
d'auteur, il faut que le modèle soit une "création personnelle et intellectuelle", les exigences
posées par la jurisprudence allemande au niveau de la créativité la création étant
actuellement élevées en ce qui concerne les œuvres des arts appliqués. Pour que le niveau
de créativité requis soit atteint, il faut que la création soit supérieure à l'activité créatrice
moyenne. Dans des décisions récentes, la Cour de cassation allemande (Bundesgerichtshof)
n'a pas précisé si elle y attache de l'importance, mais a cependant exigé, comme point de
départ, que l'on puisse parler d'une création "artistique" selon la conception des cercles artistiques en la matière. En raison de la nature juridique et des conditions de protection différentes du droit de protection des dessins et modèles et du droit d'auteur, les conditions sont
différentes pour qu'il y ait violation des droits. En droit d'auteur, il est par exemple possible
d'objecter que le produit industriel a été fabriqué indépendamment de l'œuvre plus ancienne.
La durée de protection maximale d'un dessin ou modèle enregistré, à l'échelle nationale ou
communautaire, s'élève à 25 ans à partir de la date d'enregistrement. Un dessin ou modèle
non enregistré est protégé pour une période de 3 ans à partir du jour où il a été pour la première fois accessible au public dans la Communauté. En Allemagne, le droit d'auteur est
protégé jusqu'à 70 ans après la mort de l'auteur. La protection cumulative par le droit des
modèles et le droit d'auteur n'a jusqu'à présent pas eu d'effets négatifs et doit être maintenue.
L'exposé considère qu'il est problématique que les exigences du droit d'auteur posées au
niveau de la créativité soient, selon la jurisprudence allemande, plus strictes dans le secteur
des arts appliqués et des produits industriels que pour les autres œuvres.
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Zusammenfassung
Im deutschen Recht kann grundsätzlich ein gewerbliches Produkt sowohl durch ein Geschmacksmuster als auch durch das Urheberrecht geschützt sein. In Deutschland stehen zwei
Schutzsysteme
für
Geschmacksmuster
zur
Verfügung:
Das
nationale
deutsche
Geschmacksmuster einerseits und das sog. Gemeinschaftsgeschmacksmuster andererseits,
das EU-weiten Schutz bietet. Als Geschmacksmuster wird sowohl nach deutschem Recht als
auch nach Gemeinschaftsrecht ein Muster geschützt, das neu ist und Eigenart hat. Für einen
urheberrechtlichen Schutz muss es sich um eine „persönlich-geistige Schöpfung“ handeln.
An die urheberrechtliche Gestaltungshöhe von Werken der angewandten Kunst werden
bislang
von
der
Gestaltungshöhe
deutschen
soll
erst
Rechtsprechung
dann
erreicht
hohe
sein,
Anforderungen
wenn
eine
die
gestellt.
Die
durchschnittliche
Designertätigkeit deutlich überra-gende Leistung vorliegt. In einer neueren Entscheidung hat
der Bundesgerichtshof offen gelassen, ob er daran festhält, jedoch als Ausgangspunkt
gefordert, dass nach Auffassung der einschlägigen Kunstkreise von einer ‚künstlerischen’
Leistung gesprochen werden könne. Aus der unterschiedlichen Rechtsnatur und den
unterschiedlichen Schutzvoraussetzungen von Geschmacksmuster- und Urheberrecht
ergeben sich unterschiedliche Voraussetzungen für das Vorliegen von Rechtsverletzungen.
Im Urheberrecht ist es z.B. ein relevanter Einwand, dass das gewerbliche Produkt
unabhängig von dem älteren Werk erstellt wurde. Die maximale Schutzdauer eines
registrierten
nationalen
Geschmacksmusters
bzw.
des
registrierten
Gemeinschaftsgeschmacksmusters beträgt 25 Jahre ab Anmeldetag. Einem nichteingetragenen Geschmacksmuster wird Schutz gewährt für einen Zeitraum von 3 Jahren ab
dem Tag, an dem das Geschmacksmuster der Öffentlichkeit innerhalb der Gemeinschaft
erstmals zugänglich gemacht wurde. Das Urheberrecht ist in Deutschland bis 70 Jahre nach
dem Tod des Urhebers geschützt. Der kumulative Schutz als Geschmacksmuster und als
Urheberrecht hat bislang nicht zu negativen Effekten geführt und ist beizubehalten. Der
Bericht sieht es als problematisch an, dass die urheberrechtlichen Anforderungen an die
Schöpfungshöhe im Bereich der angewandten Kunst und bei gewerblichen Produkten nach
der deutschen Rechtsprechung höher als bei anderen Werken sind.
25