CLASS 99
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THURSDAY, 21 JULY 2011
Infringement by depiction - right to cite derailed in Germany
Is it an infringement of the design of a three-dimensional product (such as a train) to depict the product in a two-dimensional illustration?
In some jurisdictions, infringement occurs only where the design is reproduced on the same article for which it is registered. However, in Europe, "use" of the design in a general sense is an infringement, unqualified by reference to any particular article.
We are therefore grateful to Birgit Clark at the IPKat, and even more so to Juliane Diefenbach and the rest of the good folks at Hogan Lovells, for drawing our attention to the Deutsche Bahn's case against the Fraunhofer Institute (BGH, Decision of 8 April 2011, I ZR 56/09 (ICE)) for infringement of their designs of the ICE 3 high speed train by depiction in a Fraunhofer brochure. Frankly, it is always a pleasure to see two serious players fighting tooth and nail over a pretty picture and a nominal licence fee of 750 €.
Fraunhofer sought to rely on the statutory citation defence provided by Art. 13(1)(c) of Directive 98/71, and Art. 20(1)(c) CDR - that permit "acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source". Their use of the depiction was to illustrate their train wheel inspection apparatus. However, their apparatus was to inspect the wheels of the ICE 1 train, not the depicted ICE 3 train, so the Supreme Court held that the citation defence did not apply and there was infringement.
It is rare to see a 2D/3D crossover case of this kind. The Hogan Lovells report is here. Can any kind reader provide a link to the asserted German design? Posted by: David Musker @ 17.17
Tags: citation, depiction, germany, train,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA262
Infringement by depiction - right to cite derailed in Germany
In some jurisdictions, infringement occurs only where the design is reproduced on the same article for which it is registered. However, in Europe, "use" of the design in a general sense is an infringement, unqualified by reference to any particular article.
We are therefore grateful to Birgit Clark at the IPKat, and even more so to Juliane Diefenbach and the rest of the good folks at Hogan Lovells, for drawing our attention to the Deutsche Bahn's case against the Fraunhofer Institute (BGH, Decision of 8 April 2011, I ZR 56/09 (ICE)) for infringement of their designs of the ICE 3 high speed train by depiction in a Fraunhofer brochure. Frankly, it is always a pleasure to see two serious players fighting tooth and nail over a pretty picture and a nominal licence fee of 750 €.
Fraunhofer sought to rely on the statutory citation defence provided by Art. 13(1)(c) of Directive 98/71, and Art. 20(1)(c) CDR - that permit "acts of reproduction for the purpose of making citations or of teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that mention is made of the source". Their use of the depiction was to illustrate their train wheel inspection apparatus. However, their apparatus was to inspect the wheels of the ICE 1 train, not the depicted ICE 3 train, so the Supreme Court held that the citation defence did not apply and there was infringement.
It is rare to see a 2D/3D crossover case of this kind. The Hogan Lovells report is here. Can any kind reader provide a link to the asserted German design? Posted by: David Musker @ 17.17
Tags: citation, depiction, germany, train,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA262
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