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LimeGreenIP News

German Court rules on Porsche design

The silhouette and outer appearance of the first Porsche is world famous. Up until today, we see the charismatic shaping mirrored in the current model series. It has been a remarkable and uncomparable success story ever since the first chief designer Erwin Komenda and his team worked out the initial Porsche design. Lately, Komenda’s heiress has taken the position that she should continuously participate in the revenues the car manufacturer generates with its current model series. Her reasoning is that – as mentioned above – the genuine shaping shines through.

The Regional Court of Stuttgart had to deal with the case. Komenda’s heiress based her motion on the so-called “bestseller” paragraph as set out in Sec. 32a of the German Copyright Act [Urheberrechtsgesetz – UrhG]. This provision allows for additional fairness compensation in cases where the author’s initial remuneration has proven to be inappropriate compared to the overall revenue generated with the work. However, the judges in Stuttgart denied the heiress such compensation (judgment of 26 July 2018, Ref. 17 O 1324/17, press release). In the court’s view, the current Porsche model series represent a free use within the meaning of Sec. 24(1) UrhG not triggering a right for additional compensation.

Facts

The plaintiff, Ingrid Steineck, is the daughter of the former Porsche chief designer Erwin Komenda. Until his death in 1966, Komenda worked for Porsche’s predecessor company. Among other things, he was involved in the development of the outer shaping of the famous chassis of Porsche’s 356 and 911. For his work, he received the ordinary salary of a chief design engineer in those days.

According to Ms. Steineck, the current model series, to a large extent, adopts and reflects her father’s original bodywork. Therefore, she sued for payment of the aforementioned fairness compensation. According to Sec. 32a(1) UrhG, the author – or his heirs – is entitled to such equitable on-top participation if the agreed remuneration must be considered “conspicuously disproportionate to the proceeds and benefits derived from the use of the work“.

This type of motion has been put forward on various occasions lately. For instance, in December 2017 the Higher Regional Court of Munich, based on the “bestseller” paragraph, granted the chief cameraman of the famous German movie “Das Boot” from 1981, an equitable on-top participation amounting to € 588,000 (cf. our German blog post). In the present case, the plaintiff aimed for substantially more than half a million Euros. She claimed an additional compensation up to € 20 million.

Decision Continue Reading

China IP litigation and prosecution statistics: taking a step back to see the bigger picture.

According to several recent publications by Chinese governmental authorities, both IP litigation and IP prosecution numbers in China continue to increase significantly. In this article, we provide an overview of those combined statistics, and analyze how this might have an impact on your business in China.

 

China IP litigation numbers Continue Reading

Global Products Law Summit: 3 October, London – Brexit, Artificial Intelligence, Class Actions and more…

Innovation, products & managing risk – Navigating global challenges for you and your products

Our 2018 Global Products Law Summit in London is brought to you this year in collaboration with our Global Insurance Team, and focuses on all things product safety, compliance, and product liability. Valerie Kenyon,  Matthew Felwick and Victor Fornasier, leading Products Law partners in our London office, along with London insurance lawyer Clare Douglas will provide insights on cyber security risks, the use of AI, its corresponding regulation, as well as practical implications for product manufacturers and overlapping issues.

Our Global Products Law Practice Head, Lauren Colton along with our New York Partner  Phoebe Wilkinson will present alongside our team to highlight the latest developments in U.S. and EU “hot topics” for product companies. Our team will be joined by guest speakers from the UK Office for Product Safety and Standards, techUK, Capsicum Re, Basis Technology and Canon for three interactive panel sessions:

  • Insights from the UK Office for Product Safety and Standards and industry – perspectives on Brexit (are your products ready for a possible ‘no deal’?) and what the future holds in the world of product safety.
  • How can we harness the capabilities of artificial intelligence to encourage innovation, while still providing adequate safeguards?
  • What’s happening in class actions and other ‘hot’ products law topics?

Join us from 3:00pm to 6:45pm – followed by drinks reception. Please contact Laura Pettit for registration or more information.


Related video interviewValerie Kenyon and Phoebe Wilkinson talk to James Nurton about the steps you should take to prepare for when a product liability disaster strikes to ensure that your brand comes out on top.

US: Authorized automobile dealerships drive discussion on patent venue in the Eastern District of Texas

In May 2017, the Supreme Court tightened the rule for venue over domestic defendants in patent infringement cases finding that, under 28 U.S.C. § 1400(b), venue is proper only “in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” TC Heartland LLC v. Kraft Foods Group Brands LLC (2017). TC Heartland did not explore the meaning of “where the defendant . . . has a regular and established place of business.” As such, U.S. district courts and the U.S. Court of Appeals for the Federal Circuit have since been developing this area of law. For example, the Federal Circuit has clarified that the place of business at issue must be “of the defendant.” In re Cray Inc. (Fed. Cir. 2017).

Nevertheless, district courts disagree over what constitutes a “place of business” in the context of automobile dealerships. In West View Research, the District Court for the Southern District of California concluded that independent automobile dealerships were not a basis for venue over domestic defendant BMW of North America, LLC (“BMWNA”). West View Research, LLC v. BMW of North Am., LLC et al. (S.D. Cal. Feb. 5, 2018). More recently in Blitzsafe, Judge Gilstrap in the Eastern District of Texas reached the opposite conclusion regarding BMWNA, finding that it “conducts its own business through the dealerships” via the exclusive distribution of new BMW automobiles and the provision of new purchase warranties and service. Blitzsafe Texas, LLC v. Bayerische Motoren Werke AG, et al. (E.D. Tex. Sept. 6, 2018).

Case Background Continue Reading

German Federal Court of Justice submits copyright dispute over YouTube to CJEU

This week, copyright is all over the place. After the European Parliament voted on proposed copyright reform in Europe last Wednesday (12 September 2018), the long-awaited decision of the German Federal Court of Justice (BGH) on the question to what extent video platforms such as YouTube carry out their own acts of use, i.e. a communication to the public, followed one day later. If it is only the user uploading the content, and not the platform, who carries out the copyright-relevant act, the platform can rely on the Safe Harbor provisions of the E-Commerce Directive 2000/31.

The German judges are keeping the tension high. With today’s decision (Case Ref.: I ZR 140/15, press release only available in German) they initially suspended the proceedings and submitted a series of questions to the European Court of Justice (CJEU) on the interpretation of Art. 3(1) of the InfoSoc Directive 2001/29. The provision contains the definition of a “communication to the public“. Particularly against the background of the legislative process currently underway in Brussels and Strasbourg, which also addresses the issue of the responsibility of so-called “online content sharing service providers” in Article 13 of the draft directive, the decision of the European Court of Justice is eagerly awaited. It is worth mentioning that the BGH has already indicated the way in which it thinks the questions should be answered.

The Background Continue Reading

Standard Essential Patent Update – August 2018

In the August 2018 edition of Hogan Lovells’ Standard Essential Patent (SEP) Update, we report on recent news and case decisions from China, Germany, the United Kingdom, and the United States. This bi-monthly newsletter summarizes the more notable SEP developments from key litigation arenas for owners and prospective licensees. This update can be accessed by clicking on one of the following languages: English; Japanese; and Korean.

For the August update, the spotlight article covers recent developments in the appeal of the TCL Communications v. Ericsson case, the first major U.S. top-down FRAND royalty decision.

The August update also covers eight additional developments across the globe. These developments include the following:

Global News and Notes:

  • Ericsson and LG Electronics announced a global patent license agreement to cross-license each other’s standard essential patents
  • Intellectual property consulting firm iRunway released a new study of global wireless LAN patents

China Updates:

  • The Beijing IP court determined that Xiaomi’s General Packet Radio Service headsets did not infringe a Chinese SEP patent

Germany Updates:

  • The District Court of Düsseldorf summarized the legal principles underlying the test to determine whether or not an alleged SEP confers a dominant market position
  • The Higher Regional Court of Düsseldorf developed requirements for the disclosure of information in SEP-related infringement proceedings

United Kingdom Updates:

  • The Patents Court in the U.K. found that confidentiality regimes allowing a disclosing party to designate documents as “external eyes only” are “wrong in principle”
  • In Conversant Wireless v. Huawei, the UK court handed down a further judgment, granting permission to appeal both justiciability of the claim and forum conveniens

U.S. Updates:

  • Judge Orrick of the Northern District of California upheld his preliminary injunction against Huawei to prevent enforcing Chinese patent injunctions against Samsung

For more information, please click on a link with the detailed newsletter (EnglishJapanese; and Korean) or contact partners Paul Brown, Zhen (Katie) Feng, Joe Raffetto, and Dr. Benjamin Schroeer.

CJEU: Castles, candy, candlesticks – no happy end at Neuschwanstein?

Court of Justice of the European Union, 6 September 2018, Case C-488/16 P BSGE v EUIPO/Freistaat Bayern

King Ludwig II. of Bavaria was without a doubt an architectural visionary. During his reign in the second half of the 19th century, he initiated the construction of various impressive buildings all across his kingdom which now form an important part of the German cultural heritage. His most breath-taking creation is the world-famous Castle Neuschwanstein (roughly translating to “New Swan Stone Castle”) in the small Bavarian village of Schwangau. Technically still unfinished, its fairytale appearance attracts around 1.5 million visitors a year and served as an inspiration for the “Sleeping Beauty Castle” which can be found in Disneyland theme parks all around the globe.

The saga of the Neuschwanstein marks

It was surely beyond Ludwig’s imagination that his famous castle would at one day be the subject of trademark proceedings with the potential to change the playing field for the European souvenir industry. The Free State of Bavaria, which owns and operates the castle as a museum, has registered the name “Neuschwanstein” through several German and EU trademarks for categories of goods which can serve as typical souvenirs for tourist locations, such as stationery, clothing, games and playthings, jewellery and sweets, as well as for certain services, such as insurance, real estate affairs, and services of an advertising agency.

The German Federal Supreme Court has been called upon first to decide whether or not the name Neuschwanstein can serve as a trademark or whether it refers to a geographic location relevant for the goods and services in question and therefore has to be kept free for all to use. In 2012, the Supreme Court took a balanced and well-reasoned decision, holding that the public would indeed associate the name with the location of the castle whenever goods were concerned which could also serve as souvenirs, or services of the tourism industry. In consequence, the mark remains registered only for unrelated goods and services, such as pharmaceutical preparations”, insurance, telecommunications, and agriculture (German Federal Supreme Court, judgment of 8 March 2012, I ZB 13/11).

One of the EU word marks filed by the State of Bavaria covered a similar range of goods and services as the older German mark, including articles of body and beauty care, jewellery, sweets, toys, as well as the class headings in class 36, telecommunication and beauty care services. This alerted a German trade association for the souvenir industry. Concerned about the industry’s ability to market products with the names of famous historical sites, it requested the cancellation of the EUTM for descriptiveness, arguing that it only designated the origin of the goods and services in question. The EU trademark instances thought otherwise, from the EUIPO to the AG, the General Court and now up to the CJEU.

The Decision of the CJEU Continue Reading

DSM Watch – New EU Copyright Directive: Parliament votes to retain controversial aspects

After weeks and weeks of debate and the failure to reach a parliamentary consensus in July, the European Parliament today paved the way towards the long-awaited start of the trilogue negotiations amongst the Parliament, the Council and the Commission. The copyright reform is therefore progressing, which is good news as such.

However, it was once again a rather close vote as regards Articles 11 and 13 of the draft directive, which concern the new neighbouring right for press publishers and the tightening of the liability scheme for online content sharing providers. In both cases close to 300 MEPs voted against the proposed language. However, in the end we can say that the Parliament is, by way of parliamentary majority, in favour of such a neighbouring right as well as of a stricter regime for content sharing platforms. Rapporteur Voss has ultimately succeeded in winning a majority for his ideas. Continue Reading

Hong Kong & cross-border IP disputes: Practical tips on arbitrating

While traditionally resolved through litigation, parties are now increasingly referring their intellectual property right (IPR) disputes to arbitration, especially in cases where there is a cross-border element.

Building upon our earlier guide to arbitration agreements for IP, this post provides an overview of the advantages and disadvantages of arbitrating IP disputes, addresses two main concerns (Arbitrability of the IPR and Effect of the award), and provides further practical tips on drafting arbitration agreements involving IPRs. Continue Reading

New Copyright Directive: Tension rises in anticipation of European Parliament’s vote

Once again, the debate regarding the controversial DSM Copyright Directive is picking up steam. Next week, the European Parliament will liaise about the various amendments that will be tabled by a number of different groups of parliamentarians from various political backgrounds.

As mentioned in our previous blogs and videos, on 5 July 2018, the European Parliament rejected by 318 votes against, 278 in favour and 31 abstentions the compromise position adopted a week earlier by the Committee on Legal Affairs (JURI). The attached negotiation mandate was thereby revoked, and the opening of the interinstitutional negotiations (trilogue) further delayed.

The still controversial debate focuses on basically two provisions of the original proposal (COM(2016) 593) and the corresponding recitals: Article 11, which holds a new neighbouring right for publishers of press publications, and Article 13, which is about to introduce new monitoring and filtering obligations for certain online platform providers. Continue Reading