Franz Gernhardt, Chair of the MARQUES Copyright Team, discusses an interesting recent copyright case in Germany.

A German Court ruled that a photograph of wallpaper is considered a reproduction of the copyrighted work on the wallpaper in accordance with Section 16 of the German Copyright Act.

In its decision on 18 August 2022 (available here), the Regional Court of Cologne applied the so-called “Zweckübertragungslehre”. According to this legal theory, only the necessary rights that are required for the specific use of a copyrighted protected work are granted when acquiring a work.

This specific requirement should always be taken into account when granting exploitation rights or licences to copyright protected works for Germany.

Background

The background of the case was that the defendant bought wallpaper with pictures of flowers on it from the plaintiff for €13.50 and placed them on the wall of his holiday apartment.

The defendant offered this apartment for rent on websites. To show other people the apartment, the defendant put pictures of his apartment on his website (see photo).

In these pictures you could see the wallpaper he bought from the plaintiff. The plaintiff sued the defendant for copyright infringement.

The Court considered the action was well-founded. The photographs are reproductions of the flower pictures on the wallpaper. The reproduction is at least given at the time, when the photographs were uploaded to the server to upload it to a website.

The defendant had no right to upload the photographs of the wallpaper to this website. He had neither an oral nor a written agreement nor conduct implying permission to do so. Also a very specific exemption to the German Copyright Act with respect to insignificant accessory work was not given.

Important decision

The decision is of particular importance as the Court held that the mere purchase of the photo wallpaper, in the absence of a contractual agreement, contains neither a licence (even implied) for the reproduction of the of the photo wallpaper in the form of a photograph nor for making it available to the public.

According to the “Zwecksübertragungslehre”, only the necessary rights for the use of a work are granted, which in the present case do not include the rights of reproduction and making available to the public on the internet.

For Germany, this means that rights holders and the acquirers of rights must very carefully review all possible rights and include in a contractual relationship all those that are required for the exploitation of the right.

Franz Gernhardt is Senior Counsel with Bird & Bird in Munich and Chair of the MARQUES Copyright Team.

The MARQUES Designs Team will host a webinar on EU design law on Wednesday 3 May from 15.00 to 16.30 CET.

The webinar is titled “EU Design Law: Front Kit, Monz, Paper Dispenser – what the most recent ECJ rulings mean in practice”.

The Monz (bicycle saddle) case will be discussed in the webinar

It is organised by the Designs Team’s Case Law Task Force and will be presented by Eva Maierski of Lubberger Lehment in Germany and Hanna Held of Held IP in Germany.

Topics covered will include the visibility requirement for parts of a complex product, the protectability of designs having a technical function as well as the protection of component parts of unregistered Community designs.

The webinar will also give a brief update on the status of the EU design law reform and on possible changes to jurisdiction that the reform may bring.

Registration is €100 (MARQUES members) or €135 (non-members) and can be made on the MARQUES website here.

Sign up now to ensure you don’t miss out!

Demand for international designs grew significantly in 2022, with 25,028 designs included in international applications – according to data published by WIPO.

The 11.2% growth compared to 2021 was driven by the accession of China on 5 May 2022 . Applicants from the country sought protection for 2,558 designs putting it in second place behind Germany. Italy moved up to third place, followed by the United States and Switzerland.

The top filer was Procter & Gamble with 687 designs in published applications, followed by Philips Electronics; Samsung Electronics (which was number one in 2021); Wenko-Wenselaar GMBH; and I Paleohorinos Fotistika.

Six of the top 10 filers were in Europe, two in Korea and one each in China and the US.

The increase in design applications in 2022 contrasts with other international IP rights: PCT filings grew by just 0.3% in the year, and use of the Madrid System for international trade marks fell by 6.1%.

Read more, and view an animation about the data, on WIPO’s website here.

The latest episode of the Talking MARQUES podcast focuses on the proposed reforms to design protection in the EU.

The podcast is available to listen to on the MARQUES website and on Spotify.

In this podcast, three members of the MARQUES Designs Team – Mikas Miniotas, Eva Maierski and Oliver Nilgen – discuss the proposals to revise the Design Directive and Regulation, which were published by the European Commission in November last year.

They discuss the background to the proposals; the cooperation between MARQUES, ECTA and INTA; the main changes to design protection and procedures; the proposed repair clause; and the next steps.

The MARQUES Designs Team has monitored and provided input into the design reform process over several years, working closely with other associations. You can download their submissions, including the joint comments on the latest proposals, on the MARQUES Position Papers page.

Previous topics covered in the Talking MARQUES podcast include lookalikes, trade mark quality, trade marks and AI, brands and sustainability and influencers. All episodes are available to listen again here.

MARQUES has been involved in the debate on the reform of the European Union Design legislation since its inception, following the publication of the Legal Review on Industrial Designs Protection in Europe in 2016.

In the interest of designers and design right holders, MARQUES has advocated that the overall goals of the recast EU design law should be directed toward advancing a streamlined system of design protection at national, regional – in the European Union – and international levels.

MARQUES believes that design applicants should have full choice in that regard. A sound design protection system within Europe should be aimed at facilitating design owners in making their choice, by offering simplified and efficient procedures for design protection in a harmonised legal environment, which can ensure complementarity with the national design systems.

For these reasons, MARQUES welcomed the adoption by the European Commission of the two package proposals to modernise the legislation on design protection at the end of November last year. A summary of the draft legislative texts can be found in the December 2022 edition of HouseMARQUES here.

Working together with ECTA and INTA

As the Commission launched a public consultation on the draft legislative texts of the revised Design Law Directive and Regulation, MARQUES and the sister organisations ECTA and INTA have furthered their cooperation.

The advocacy efforts of the three organisations have proven impactful and efficient in the previous steps of the reform process. ECTA, INTA and MARQUES are the signatories of a further joint contribution that the three organisations submitted during the consultation of the European Commission on 31 January 2023: it can be downloaded from the MARQUES website here.

This input builds upon the recommendations provided to the Commission by the three organisations individually as well as jointly over the past years, in particular, through the Joint Paper on Legal Review of EU Designs System, submitted in July 2018, and the Joint Comments on the European Commission’s Inception Impact Assessment on the review of the Design Directive and Community Design Regulation submitted in January 2021. Both these documents are available on the Position Papers page on the MARQUES website.

New points raised

In this round of consultations, MARQUES, ECTA and INTA welcomed the efforts of the European Commission in attempting to achieve greater harmonisation in the area of industrial designs and taking on board some of the proposals and recommendations presented in the above-mentioned earlier joint statements.

A few other specific areas/points were identified when studying the draft documents (Directive, Regulation and Implementing Regulation) and have been addressed in this new joint paper to the Commission for due consideration.

The MARQUES Designs Team will share more information about the EU design law reform as it further develops. There will also be an episode of the Talking MARQUES podcast focusing on this topic available next month.

The European Commission adopted proposals for a revised Regulation and Directive on designs on 28 November.

The Proposal for a Directive on the legal protection of designs is available here and the Proposal for a Regulation on Community designs is available here.

In a press release, the Commission said the revisions “will make it cheaper, quicker and more predictable to protect industrial designs across the EU”.

The proposals aim to modernise the pan-EU framework and national regimes.

The revisions introduce a “repair clause” providing that designs can be reproduced for spare parts of complex products such as cars. This clause will have legal effect for future designs; designs already granted will remain covered for a transitional period of 10 years.

The repair clause is Article 19 of the proposed Directive and states:

1.    Protection shall not be conferred on a registered design which constitutes a component part of a complex product, upon whose appearance the design of the component part is dependent, and which is used within the meaning of Article 16(1) for the sole purpose of the repair of that complex product so as to restore its original appearance.

2.    Paragraph 1 cannot be invoked by the manufacturer or the seller of a component part of a complex product who failed to duly inform consumers, through a clear and visible indication on the product or in another appropriate form, about the origin of the product to be used for the purpose of the repair of the complex product, so that they can make an informed choice between competing products that can be used for the repair.

3.    Where at the time of adoption of this Directive the national law of a Member State provides protection for designs within the meaning of paragraph 1, the Member State shall, by way of derogation from paragraph 1, continue until …[OP please insert the date = ten years from the date of entry into force of this Directive] to provide that protection for designs for which registration has been applied before the entry into force of this Directive.

Paragraphs (1) and (2) appear in almost identical form in Article 20a of the proposed Regulation.

The proposals will be sent to the European Parliament and Council for adoption. Once adopted, EU Member States will have two years to transpose the Directive into national law.

Most amendments to the Community Design Regulation will become applicable three months after its entry into force, but some will only apply 18 months after.

EUIPO has published a short video showing the highlights of the DesignEuropa Talks, which were held in Alicante last month.

It can be viewed on the EUIPO website here. The full seven-hour stream of the event can also be viewed on the EUIPO YouTube channel.

The Office states: “The event celebrated design through a series of informative panel discussions led by distinguished experts on a wide range of subjects. Speakers included participants from the DesignEuropa community, previous winners, finalists, jury members and others. Topics discussed included the present and future of design, how it powers our economy and impacts society.”

The talks covered topics including the changing vision of design, the need to increase awareness of IP, design education and IP protection, challenges and opportunities in the design industry, the New European Bauhaus initiative, the impact of design on the value of your business and inspiring success stories.

2023 DesignEuropa Awards

Applications for next year’s DesignEuropa Awards are also now open until 10 March 2023.

You can apply or nominate a candidate in the three categories (Industry, Small and Emerging Companies and Lifetime Achievement) on the dedicated page on the EUIPO website here.

The winners will be announced in a ceremony in autumn 2023.