On 01.03.2021, the European Patent Office published a new revised version of the Guidelines for Examination in the European Patent Office (EPO). These Guidelines for Examination contain the instructions to be followed by the EPO in all first instance proceedings with regard to the practical and procedural aspects of the examination of European patent applications and patents under the European Patent Convention (EPC) and its Implementing Regulations (Rules). The new version of the Guidelines for Examination has already been announced in the Notice from the European Patent Office dated 25 January 2021. In the following, we summarize the changes that we consider most important for practice.

Part A of the Guidelines for Examination, concerning the formal examination of patent applications, now clarifies (see Section A-IV.1) that the term “earlier application” in Article 76(1) EPC and Rule 36 EPC is to be understood as a patent application filed at least one day before the divisional application. Thus, a divisional application cannot be filed on the same day as its parent application.

In Part C of the Guidelines for Examination, concerning procedural aspects of substantive examination, the Guidelines for Examination have been adapted, inter alia, to the abolished the possibility of waiving the right to receive a further communication under Rule 71(3) EPC(cf. Notice from the European Patent Office dated May 26, 2020), and chapters referring to the now unavailable waiver have been deleted.

With regard to Euro-PCT applications in which the applicant has subsequently corrected an erroneously filed element (description or claims) or parts thereof under Rule 20.5bis PCT during the international phase, and the international filing date has not been postponed, it is clarified that the EPO as designated/elected Office will consider as filing date only the date on which the complete correct documents were filed (cf. SectionC-III. 1.3). This rule will be particularly relevant for Euro-PCT applications for which the EPO was not itself competent as International Filing Office or International Searching Authority.

Due to the significance of this practice for any priority claims and the relevant state of the art in the examination procedure, the applicant concerned will in future be given the opportunity to file a written statement within 2 months after being requested to do so and to decide either:

• to continue with the original international filing date and to base the examination procedure also on the documents originally filed partially erroneously, or
• to proceed with the date on which the correct application documents were filed as the filing date, as well as to recognize the correct application documents as the original application documents for further proceedings.

This request can also be made proactively by the applicant within the 31-month period to avoid delaying the application process in the regional phase.

Further changes relate to telephone and personal consultation with the examination department, or the first examiner. These previously represented different categories with different regulations, which have now been combined and standardized into a single category “consultation” (cf. Section C-VII.2). A consultation should preferably be held as a videoconference, which allows, if necessary, the presentation of documents, the participation of other persons, and – in case of doubt – the verification of the identity of the persons participating. However, at the request of the applicant, consultations may also be conducted by telephone if the situation so requires.  Oral statements made during a consultation that substantively address objections raised in an earlier communication may result in the examiner cancelling any running time limit. Furthermore, documents admissibly submitted by emailduring the consultation (see Section C-VII.3) may in fact be sufficient to preserve an ongoing deadline.

Another change in the Guidelines for Examination of practical importance concerns the treatment of requests for decisions according to the state of the file. Section C-IV.15.1 of the Guidelines now provides that if a request for oral proceedings is pending at the time the applicant files a request for decision according to the state of the file, the Examining Division will interpretthe request for decision according to the state of the file as an implicit withdrawal of the pending request for oral proceedings. Section C-IV.15.2 emphasizes that in a decision according to the state of the filefreshly presented arguments of the applicant in response to a communication of the Examining Division must be considered by the Examining Division by issuing either a regular reasoned decision or a further communication. The minutes of a consultation does not meet the standards of a communication under Article 94(3) and thus cannot be the basis of a decision according to the state of the file.

Part E of the Guidelines for Examination, concerning general procedural matters, has been updated, inter alia, with regard to conducting oral proceedings as a videoconference. In the light of theDecision of the President of the European Patent Office dated 17 December 2020 concerning oral proceedings by videoconference before examining divisionsare to be held by videoconference (see Section E-III.1). Oral proceedings before the Examining Division shall be held in person at the premises of the EPO only if there are serious reasons against holding the oral proceedings by videoconference.

For oral proceedings in opposition proceedings, oral proceedings may be held as a videoconference if the parties agree (see Section D-IV.3.2). However, due to the Decision of the President of the European Patent Office dated 10 November 2020 concerning the modification and extension of the pilot project for oral proceedings by videoconference before opposition divisions, oral proceedings before opposition divisions will be held by videoconference as ofJanuary 4, 2021 until at leastSeptember 15, 2021. Only if there are serious reasons against holding a videoconference in opposition proceedings, the oral proceedings will be postponed until after September 15, 2021.

However, serious reasons are likely to militate against a hearing by videoconference only in very exceptional cases. The Guidelines for Examination emphasize that such serious reasons include reasons relating to a participant to the oral proceedings as an individual (e.g. a proven visual impairment that prevents a representative from following oral proceedings on screen) and reasons related to the nature and subject-matter of the proceedings (e.g. where they involve the demonstration or inspection of an object where the haptic features are essential, to the extent that this is possible in accordance with the applicable provisions). Sweeping objections against the reliability of videoconferencing technology or the non-availability of videoconferencing equipment will, as a rule, not qualify as serious reasons in this regard.

If, exceptionally, applicants wish oral proceedings to be held before the Examining Division on the premises of the EPO, such a request must be filed as early as possible, preferably together with the request for oral proceedings. However, whether such a request is granted is at the discretion of the competent division. A rejection of such a request must be (briefly) substantiated by the Examining Division – irrespective of the time of filing the request. A rejection is not appealable (see Section E-III.2.2).

Furthermore, Section E-III.8.5.2 has been added to the Guidelines for Examination. This section concerns the filing of written submissions duringoral proceedings held as a videoconference. If oral proceedings are held as a videoconference, documents filed subsequently as referred to in Rule 50 EPC must be filed by emailWhere filed documents require signature, this signature may be applied to the attached document or to the text of the accompanying email. The signature must take the form of a string of characters or a facsimile signature. The string of characters which is selected by the signatories to provide evidence of their identity and of their intent to authenticate the message in question must clearly indicate the person’s name and position. The documents are to be sent to the email address indicated during the videoconference by the competent department.

Amended application documents must be submitted as attachments in PDF format and comply with the WIPO Standard for Filing and Processing in Electronic Form (Annex F). Where an attachment containing these amended application documents is not in PDF format or does not comply with the WIPO Standard or is illegible or incomplete, the party must be promptly informed during the videoconference. Where the deficiencies cannot be remedied during the videoconference or within the time limit set, that document (or that part of the document which is illegible or incomplete) is deemed not to have been received.No paper documents need be filed to confirm documents filed by email. All submissions made by email during a videoconference must be annexed to the minutes unless the exceptions under Rule 144 EPC apply.

Section E-III.11, concerning the technical aspects of oral proceedings held as a videoconference, has also been revised. In order to prepare for oral proceedings by videoconference, in addition to the summons, participants will receive an email confirming the date, time and the videoconference contact details to be used to establish the connection (in the form of a link or by other suitable means) and containing any further appropriate information, including on the organization of the videoconference. If the videoconference does not start at the agreed time, the Examining Division or Opposition Division will contact the representative or his/her office by telephone. If the connection cannot be established for technical reasons, the videoconference shall be terminated and a new summons to oral proceedings shall be issued.

Section E-VIII.1 of the Guidelines for Examination, which concerns the calculation of time limits, hasalso been restructured and supplemented. The Guidelines for Examination deal with extensions under Rule 134 EPC in a separate section, E-III.1.6.2, taking into account the contents of the Notice from the European Patent Office dated 22 October 2020 concerning the procedures and safeguards which apply under the EPC and the PCT in the event of outages of means of electronic filing and other online services. Accordingly, the extension of time limits under Rule 134(1) EPC also applies in cases where one of the means of electronic filing provided by the EPO under Rule 2(1) (currently Web-Form Filing, Online Filing (OLF), New Online Filing (CMS), ePCT and fax) is not available, regardless of any restrictions on the documents which may be filed by the means of electronic filing that suffered the outage. Also, Rule 134(2) EPC (general dislocation in the delivery or transmission of mail in a Contracting State) may now apply to a general breakdown of any of the means of electronic communication accepted by the EPO for the filing of documents. Furthermore, Section E-III.1.6.2.3explicitly lists the time limits falling within the scope of Rule 134 EPC and also mentions the cases in which the extension of time limits under Rule 134 EPC is not available.

Another practically relevant change in Part F of the Guidelines for Examinationhas found its way into Sections F-IV.4.3 and F-IV.4.4, whichconcern inconsistencies between the description and the patent claims (Article 84 EPC). Here, the practice of the examining divisions concerning the adaptation of the description to amended claims – which varies considerably across the divisions and also the fields of technology – has now been fundamentally revised. The Guidelines for Examination now explicitly require in Section F-IV.4.3that in cases where part of the subject-matter of the description and/or drawings is not covered by the claims, the description must be adapted to the claims in order to avoid inconsistencies between claims and description. Embodiments in the description which are no longer covered by the independent claims must be deleted (for example if the description comprises an alternative for at least one feature which is no longer covered by the amended claims) unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (T 1808/06). Section F-IV.4.4 now clarifies that claim-like clauses must be deleted or amended prior to grant, in particular if the clauses are inconsistent with the claimed subject-matter or if it merely repeatonly repeat the claimed subject-matter in a very literal manner, which is now explicitly considered to be “an irrelevant and unnecessary reduplication […]” that do not fulfil the requirements ofRule 48(1)(c).

In Part G of the Guidelines for Examination, which concerns patentability, the sections on computer-implemented inventions and on inventions in the field of biotechnology have been revised and further clarified.

In Section G-II.3.6, which concerns computer programs excluded from patentability as such under Article 52(2) EPC, adjustments have been made in the light of recent case law. Section G-II.3.6.3 of the Guidelines for Examination now explains more clearly under which circumstances a data structure or data format may contribute to the technical character of the invention. Furthermore, the new section G-II.3.6.4 has been included, which concerns database management systems and information retrieval. There, the Guidelines for Examination include a remarkably clear statement that database management systems are technical systems installed on computers to perform the technical tasks of storing and retrieving data using various data structures for efficient data management. Thus, technical means are used in a process performed by a database management system, so that these processes are not excluded from patentability under Article 52(2) EPC.

The now well-established case law abouthuman stem cells that can be obtained without the consumption of human embryos are patentablehas found its way into the guidelines. Section G-II.5.2 now clarifies that pluripotent human stem cells including human embryonic stem cells, the use of such stem cells, or products derived therefrom, do not fall under the patenting prohibition of Article 53(a) and Rule 28(1)(c), if the application has a filing- or priority date on or after June 5, 2003, and if the technical teaching of the invention allows the use of parthenogenetically activated human oocytes(G-II.5.3).

Furthermore, sections G-II.5.3 and G-II.5.4 have been adapted to the recent case law on the exclusion of patentability of plant- and animal material, which can be produced exclusively by essentially biological processes (G 3/19). The new guidelines clarify that any material allowing regeneration of whole plants, such as cells, seeds, cuttings, etc., are also subject to the exclusion of patentability under Article 53b EPC, provided that the plants from which this material is derived can be exclusively obtained by means of an essentially biological process. However, this exclusion does not apply to patent applications and patents with a filing or priority date prior to July 1, 2017 (see G 3/19, OJ EPO 2020, A119).

In addition, a new Section G-II.5.6on patentability and examination of inventions in the field of antibody technology has been added to the new Guidelines for Examination. Here, an EPO internalantibody focused examination practice had been established, which is now enshrined in the new Guidelines for Examination. The Guidelines for Examination deal in particular with admissible structural/functional antibody definitions in claims, as well as the basis for an examination of inventive step in this field.A structural definition of a claimed antibody must reference at least all 6 CDR regions, which are the main mediators of antibody-antigen binding. Otherwise, the antibody patent claim would be objectionable under Article 84 EPC because it lacks an essential technical feature. Broader structural definitions of antibodies must be supported by experimental evidence.

To the extent that an antibody is defined by its target antigen or an epitope, the corresponding antigen/epitope must be referenced without open-ended formulations (such as definitions by broadsequence identity regions or open terms such as “comprising”), although negative features, in the sense of antigens or epitopes that are not bound by the antibody in question,are possible.

If solely functional features are used to claim an antibody, and the prior art discloses an antibody binding to the identical antigen, it is clarified that the burden of proof of novelty of the claimed antibodies lies with the applicant. It is also possible to define an antibody by means of product-by-process features, insofar as the general requirements of this claim category are fulfilled. However, to the extent that the referenced method is directed to an immunization of an animalwith an immunogen comprising a sequence that is not 100% identical to a defined sequence of the alleged antigen bound by the antibody, the claim does not meet the requirements of Article 84 EPC.

In section G-VI.7.1.1with regard to inventions of a second medical indication, the Guidelines for Examinationindicate the requirement whether a substance or a mixture of substances has a direct therapeutic effect as an active ingredient for a specific medical use due to its chemical properties. If it is a merely a physical property, such as a shielding effect of a substance of the use of a substance as a filler to protect sensitive tissue, such substance or mixture of substances is to be regarded as a device and not amenable to patenting under Article 54(5) (T 1758/15).

In its decision in Cases C-720/18 and C-721/18 of October 22, 2020, the Court of Justice of the European Union (CJEU) further defined the requirements for “genuine use” of a trade mark. In addition to various important questions regarding the use of a trade mark, the court also commented on the burden of proof in cancellation proceedings due to non-use.

Background

The Regional Court and the Higher Regional Court of Düsseldorf had to decide on the revocation of the word/device trade marks TESTAROSSA registered for the Italian car manufacturer Ferrari. The Regional Court upheld the actions for cancellation on grounds of non- use, essentially stating that Ferrari has not sold any new cars under the trade marks  TESTAROSSA for 25 years. Ferrari only sells used cars and spare parts under the trade mark and provides maintenance services for such vehicles. The Higher Regional Court of Düsseldorf suspended the cancellation proceedings and referred various questions to the CJEU on the interpretation of the concept of “genuine use”.

Decision

First of all, the CJEU confirms that a trade mark registered in respect of a category of goods and replacement parts thereof must be regarded as having been put to „genuine use“, in connection with all the goods in that category and the replacement parts thereof, if it has been so used only in respect of some of those goods or only in respect of replacement parts or accessories of some of those goods. It should be otherwise only if it is apparent from the relevant facts and evidence that a consumer who wishes to purchase those goods will perceive them as an independent subcategory of the category of goods in respect of which the mark concerned was registered. The fact that the trade marks are used only for high-priced goods from the luxury segment is not an appropriate criterion for the formation of an independent subcategory.

Furthermore, the CJEU states a trade mark is capable of being put to genuine use by its proprietor when that proprietor resells second-hand goods put on the market under that mark. Thus, the exhaustion of the trade mark right by putting the goods on the market for the first time does not affect the question of “genuine use”.

Next, the CJEU confirms that a trade mark is put to genuine use by its proprietor where that proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark. The use of the mark for the services is a necessary condition to conclude that the mark has been put to „genuine use”.

Finally, the CJEU comments on the burden of proof in cancellation proceedings due to non-use. In this respect, the court confirms that the proprietor of a trade mark bears the burden of proof that the trade mark has been put to „genuine use”. Indeed, it is the proprietor of the mark at issue which is best placed to adduce evidence in support of the assertion that its mark has been put to genuine use. Member states may not deviate from this allocation of the burden of proof.

Conclusion

The decision is favourable for trade mark proprietors who have stopped selling new goods under their trade mark and limit their acts of use to the sale of second-hand goods and the provision of maintenance services. In the future, such acts can still be classified as “genuine use” of the trade mark. Accordingly, acts of use must be carefully documented, also with regard to resales and maintenance services, in order to be able to prove “genuine use” of the trade mark if necessary.

On 29 September 2020, the Federal Court of Justice (FCJ) ruled on the admissibility of identifying photojournalism on the occasion of the riots at the meeting of the group of twenty leading industrial and emerging countries at the beginning of July 2017 in Hamburg (G20 summit) (cf. FCJ, ruling of 29 September 2020 – VI ZR 449/19).

Facts of the case

The plaintiff, a private individual, brought an action for an injunction against a major tabloid on the basis of an identifying report. The background was the extensive reporting of the tabloid in connection with the G20 summit in Hamburg, during which there were also numerous demonstrations with considerable riots, which still occupy the criminal and civil courts today.

On 10 July 2017, the defendant published a report announced on its front page with the headline  “WANTED! Who knows these G20 criminals?”.
In the article it reads: “WITNESSES WANTED! Please contact the police

[…] What is going on in these serious criminals? They claim that they want to demonstrate against the G20 summit. Then they shoot steel bullets at police officers, which even penetrate the armour of a water cannon. They accept the death of people. […] Two helicopter pilots were blinded by laser pointers, one helicopter was fired at by a flare. The list of crimes committed by rioters in Hamburg is much longer. […]. Pictures from a police helicopter show how hooded guards hurl burning Molotov cocktails from house roofs at approaching officers. Other hooligans fired flares into the crowd, smashed windows, set cars on fire, built barricades, set fires right next to houses, looted shops or marched armed in groups through the city – all acts that can be punished as a serious breach of the peace (at least six months in prison). […] The Hamburg police are calling on people to upload pictures of the rioting on the website […] – or to contact the nearest police station. The investigators assure that all information will be treated anonymously. Only in urgent emergencies call the 110th [newspaper] supports the police, asks: Who knows the people in these pictures? They are strongly suspected of having committed serious crimes at the G20 summit”.

The verbatim report is accompanied by a total of thirteen pictures framing the text and showing various people in connection with the riots. The captions briefly describe and in some cases comment on the photographically documented behaviour (mainly throwing objects and stealing goods from shops). In some cases, details of the heads of these people are also shown enlarged. The following photographs of the plaintiff were taken in the context of this photojournalism, whereby the plaintiff in the large picture is the person photographed from behind, not wearing a mask, in a slightly stooped posture and with his head lowered, and in the small picture the person photographed from the front and diagonally above with his face covered about halfway.

(Source: https://juris.bundesgerichtshof.de/cgi-bin/rechtsprechung/document.py?Gericht=bgh&Art=en&sid=7a8fc385f67b93f4644342755d0e9cf9&nr=110997&pos=1&anz=9)

Preliminary proceedings initiated against the plaintiff were discontinued pursuant to § 153 (1) StPO, i.e. on the grounds of insignificance. The Regional Court of Frankfurt am Main, which was initially seized of the case, ordered the defendant to refrain from making the plaintiff recognisable in connection with the search for the G20 criminals by distributing her portrait. The Appeal Court of Frankfurt am Main dismissed the tabloid’s appeal, but allowed the appeal to the FCJ.

Grounds for the decision of the FCJ

The Federal Court of Justice decided – in contrast to the two lower courts – that the plaintiff has no claim against the tabloid under Section 1004 (1) sentence 2 by analogy, Section 823 (1) and (2) of the German Civil Code (BGB) in conjunction with Sections 22, 23 of the German Copyright Act (KUG), Art. 2 (1), Art. 1 (1) of the German Constitution (GG) to refrain from reproducing the image in the context of reporting. The FCJ based its decision on the following argumentation:

Portraits of a person may in principle only be disseminated with that person’s consent, which is not available in this case (Section 22 sentence 1 KUG). There are, however, exceptions to this principle under Section 23 (1) KUG, provided that the dissemination of the portrait does not violate the legitimate interests of the person depicted (Section 23 (2) KUG).

A portrait within the meaning of the KUG only exists if the person depicted is recognisable, about which there were some doubts due to the poor picture quality. However, the plaintiff in the present case could rightly rely on the fact that she could be recognised by her friends and acquaintances and in combination of both photographs on the basis of her body shape and posture, hairstyle and facial features.

As the next point, the Federal Court of Justice had to examine whether the photographs were portraits from the field of contemporary history (Section 23 (1) no. 1 KUG), for whose dissemination the consent of the plaintiff in favour of the defendant would have been dispensable. In the context of this examination point, a weighing had to be made between the rights of the plaintiff under Article 2 (1), Article 1 (1) of the Basic Law, Article 8 (1) of the ECHR on the one hand and the rights of the press, i.e. of the defendant, under Article 5 (1) of the Basic Law, Article 10 (1) of the ECHR on the other. The FCJ must therefore weigh up the general right of personality against the freedom of the press.

Within the framework of this weighing, the Federal Court of Justice initially confirmed that the interest in information is always the primary consideration for daily reporting on criminal offences or similar misconduct. According to the Federal Court of Justice, anyone who breaks legal peace and attacks or injures fellow human beings or the legal interests of the community through this act and its consequences must in principle tolerate the public interest in information, which he himself has aroused, being satisfied in the usual ways. The Federal Court of Justice then went on to point out, however, that the impairment of the right of personality must be in reasonable proportion to the seriousness of the misconduct and its other significance for the public, for which, of course, some doubts existed in the present case due to the discontinuation of the plaintiff’s criminal proceedings. However, according to the Federal Court of Justice, a lower public interest in information on minor misconduct in individual cases could be increased to such an extent by special features, for example in the person of the perpetrator, the type of misconduct or the course of the offence, that the interest of the perpetrator in protecting his or her personality would take second place. This is precisely what the Federal Court of Justice rightly assumed in the present case constellation:

The massive riots in public space on the occasion of the G20 summit in Hamburg and the circumstances surrounding them were “of very high social interest and subject of public discussion from various perspectives“. This concerned in particular “the aspects addressed by the defendant, which persons took part in them, how they behaved, what effects this had and that the police asked for the support of the public in clearing up the event“. Even the additionally enlarged head of the plaintiff does not change the factual content and the information value of the reporting, as it is only used as an editorial design and stylistic device.

On the plaintiff’s side, the FCJ assumed that the plaintiff could only be identified by a comparatively small circle of persons and that the plaintiff had been portrayed in public, i.e. in her social sphere. Even if the publication of the picture incriminates the plaintiff, it does not lead to stigmatisation, exclusion or pillory. Finally, the tabloid’s appeal is limited to supporting the police by providing clues, which means that the “call for information” is essentially an editorial stylistic device.

In conclusion, the Federal Court of Justice thus assumed that no legitimate interest of the plaintiff was infringed by the dissemination of the portrait.

Significant strengthening of freedom of the press

Despite the lurid headline “WANTED! Who knows these G20 criminals?” on the front page and the call for a search documented, among other things, by portraits of the plaintiff, the Federal Court of Justice decided that the plaintiff’s general right of personality must take second place to the basic right to freedom of the press. Decisive factors in this decision were the public interest that existed due to the massive riots and the fact that the plaintiff was only identifiable by a small circle and, in addition, had, as it were, voluntarily entered the media attention. The judgement must therefore be seen as strengthening the freedom of the press in the context of identifiable photojournalism.

Recently, on October 19, 2020, the criminal proceedings against the operators of the so-called “cyberbunker” started at the Regional Court of Trier (file no. 5 Js 30/15.2a KLs). The defendants are accused of operating a so-called “bulletproof hoster”, i.e. offering third parties web hosting services with the promise that the hosted content is anonymous and inaccessible to state authorities. Accordingly, the servers were allegedly used for all kinds of illegal activities, from drug trafficking to murder for hire. The defendants claim that they deliberately did not acquire any knowledge of the contents on the servers and did likewise not receive it. The public prosecutor’s office claims to have evidence to the contrary. This means that the operators could be deemed accomplices (by aiding and abetting) to the respective crimes.

What does this have to do with intellectual property?

Art. 14 E-Commerce Directive

At the European level, Art. 14 of the E-Commerce Directive (Directive 2000/31/EC) stipulates that the provider of a service that stores information provided by users is not “responsible” for this information if he has no “actual knowledge” of it (whereby grossly negligent ignorance may suffice with regard to claims for damages).

This provision is implemented in German law in the correspondingly drafted Sec. 10 of the German Telemedia Act. The prevailing view is that “responsible” refers to all areas of law, including criminal law. The German Federal Supreme Court (BGH) has further recognized that criminal law standards must be interpreted in conformity with EU directives (BGH, NJW 2014, 2595, para. 25).  Sec. 27 of the German Criminal Code, which regulates the criminal liability of aiding and abetting, must therefore be interpreted within the scope of the E-Commerce Directive in such a way that the so-called “double intent to assist” (intent with respect to the offence and intent with respect to aiding and abetting) can only be assumed in the case of “actual knowledge” within the meaning of Article 14, which does not necessarily mean the same as “dolus eventualis” of German legal doctrine, i.e. the so called approving acceptance which is usually sufficient to constitute intent to assist in the legal sense.

The case thus raises overarching questions, namely to what extent hosting providers must take note of their customers’ actions in a legal sense. Are you allowed to look the other way? Or not? And if so, how exactly?

These questions affect all hosting providers in a similar way, even though on closer inspection they may be answered (slightly) differently depending on the area of law.

Who acts in bad faith?

In the joined cases C-682/18 and C-683/18 pending before the ECJ concerning the copyright liability of the video service “YouTube” and the sharehoster “Uploaded”, the Advocate General, in his Opinion of 16 July 2020, makes some considerations on how the E-Commerce Directive relates to various copyright directives, but also makes it clear that the E-Commerce Directive can always apply even if an infringing act has already been constituted under another provision (Opinion, para. 138). Contradictions should be avoided by a consistent interpretation of such provisions on the one hand and Art. 14 of the E-Commerce Directive on the other (Opinion, para. 140).

However, “actual knowledge” means in principle actual knowledge in the literal sense (Opinion, para. 179).

Must such actual knowledge of the operators of the “cyberbunker” now be proven by the public prosecutor’s office regarding each individual act? If the ECJ follows the Advocate General, it may well be able to breathe a sigh of relief, since this could mean that “actual knowledge” could also be had by anyone who deliberately facilitates or invites unlawful uses (Opinion, para. 191), which might e.g. be the case with models of sharehosters who pay remuneration to those of their users whose files are downloaded particularly frequently (Opinion, footnote 186 in conjunction with para. 131).

However, it is not yet clear whether the criminal courts can assume such bad faith in the legal sense re the “cyberbunker”, because – according to the Advocate General – the promise of anonymity should not in itself lead to bad faith (Opinion, footnote 186 in connection with margin no. 129).

The operators’ defense attorneys have already announced that they will take this case up to the BGH. But perhaps the BGH will even (have to) call upon the ECJ. So come back to IP-Update in a few years if you want to know how the case resolved!

What is valid today may be outdated tomorrow – or even the day after tomorrow

The case thus refers to a – depending on the point of view – fundamental “problem”, namely that in harmonized EU law, certainty about legal issues can only arise through a judgment of the ECJ, but that it takes many years before a suitable case reaches this court and that its statements on the application of the law often only concern a limited section of a matter relevant to practice.

Will the criminal courts, for example, be able to refrain from a referral to the ECJ in the probably upcoming proceedings against the operators of the sharehoster “share-online” or will the requirements of the ECJ in the “uploaded” proceedings and its other case-law be sufficient for them? One will see, but doubt is in order.

The detailed questions that can arise in such cases are practically unforseeable. For example, the Regional Court of Hamburg recently had to decide in parallel proceedings against the sharehoster “uploaded” whether it would have an effect on its liability if it deletes links reported by right holders, which violate the law, but does not terminate the corresponding customer accounts at the same time, if these are excessively often conspicuous with violations of the law (Regional Court of Hamburg, judgement of 14 July 2020, Az. 310 O 339/18, para. 85 – quoted according to juris). The Regional Court was able to reject a corresponding submission to the ECJ with reference to the lack of a duty of referral for instance courts (para. 88). If an appeal is lodged, the BGH will in the end have to justify why the answer to this question is derived from the already existing ECJ case law. In doing so, it always risks that the German Federal Constitutional Court will see this differently and force it to make a referral.

In this context, it is possible that the fact that in the past there was no referral to the ECJ in questions of sharehoster liability just suspended the relevant questions. One might have thought, for example, that the ground for such liability had been laid out with the decisions “Alone in the Dark” (BGH, GRUR 2013, 370) and “Der Vorleser” (GRUR-RS 2013, 15390). Now, however, the decision of the ECJ in the “Uploaded” case will shatter old certainties.

Complete legal certainty (even if the DSM Directive is not taken into account) will therefore not be achieved in the foreseeable future, neither for rights holders nor platform operators, even though the E-Commerce Directive has now been in place for over 20 years. In the foreseeable future, it will probably be replaced by the Digital Services Act  – and then many questions that had once been answered might be open again.

Legal starting position

With the Enforcement Directive (Directive 2004/48/EC), the European legislator instructed the member states to provide right holders in intellectual property matters with the possibility of enforcing rights to information in court, if necessary, not only directly against the infringers of property rights, but also against platforms that were used to infringe IP.

Specifically, Art. 8 para. 1 c) and para. 2 a) of the Enforcement Directive stipulates that information on the “name” and “address” of the infringer may be requested from persons who demonstrably provide services on a commercial scale used for infringing activities. The German legislator has implemented this requirement in the various laws on intellectual property (e.g. Section 101 (2) sentence 1 no. 2 German Copyright Act, Section 140b (3) no. 1 German Patent Act, Section 19 (3) no. 1 German Trademark Act, etc.). ).

A typical example of a service in the sense just mentioned is the provision of an Internet platform which end users can use for various purposes, in particular to post their own content on the platform, in particular the video platform “YouTube”.

Often, however, the provider of the platform is not aware of the “name” in the sense of the civil name and the “address” in the sense of the postal address of a user who infringes intellectual property. At best, the posting of content on the platform is only possible via a user account created on the platform, for the creation of which data such as an e-mail address may be provided.

It is therefore questionable whether “name” and “address” within the meaning of Art. 8 (2) a) of the Enforcement Directive and the German transposition laws can also be other data than the civil name and the postal address.

Submission of the BGH

The German Federal Supreme Court (BGH) had to deal with this in the case “YouTube third party information” (order dated February 21, 2019, case no. I ZR 153/17, available at bundesgerichtshof.de). Specifically, the issue was whether the owner of rights to a film work that had been illegally uploaded by a user to his YouTube account can demand that the platform provide him with the user’s e-mail address, telephone number and dynamic IP address (once at the time of upload and once the last known). The BGH discusses various arguments for and against this and refers in particular to the possibility that there could be a claim for further information, in particular the civil name and the postal address, against the providers of the e-mail address and the telephone number.

However, it finally acknowledges that the answer to this question ultimately depends on the interpretation of Article 8(2)(a) of the Enforcement Directive and therefore submits it to the ECJ.

Decision of the ECJ

In its decision, the ECJ (judgement of 7 July 2020, Case C-264/19, ECLI:EU:C:2020:542, available at curia.europa.eu) also weighs up various arguments, but finally comes to the conclusion that “name” and “address” are in fact to be understood only as civil name and postal address. At the same time, however, and with reference to the merely minimum harmonising character of the Enforcement Directive and its Art. 8 para. 3 a), it leaves it up to the member states to grant rights holders further rights to information, as long as the various relevant fundamental rights and the principle of proportionality are sufficiently taken into account.

How will the BGH decide?

From a purely legal-doctrinal point of view, there are good arguments for and against the extension of the information rights envisaged by the BGH. For a forecast of how the BGH will actually decide, it is therefore worth taking a look into the past: in an earlier decision, the BGH had already interpreted “name” and “address” broadly and subsequently also included the so-called user ID, which is relevant for the provision of information by Internet access providers in reseller constellations (decision of July 13, 2017, Case No. I ZR 193/16).

However, a differentiation is also conceivable to the effect that dynamic IP addresses are excluded from the right to information, especially in view of the recent “Bestandsdaten II” decision of the Federal Constitutional Court, in which the latter once again emphasized the special sensitivity of dynamic IP addresses to fundamental rights (decision of 27 May 2020, case no. 1 BvR 1873/13 and 1 BvR 2618/13, available at bundesverfassungsgericht.de).

The decision of the Federal Court of Justice will also be followed by the question as to what the rights holder can do with the information, i.e. in particular whether it can subsequently request further information from the providers of the e-mail address and the telephone number as well as from the Internet access provider. Here, too, numerous legal questions remain open.

Conclusion

It is difficult to gatherpersonal data of an infringer on the Internet. At the same time, his civil name and postal address are required for the judicial enforcement of rights. Which service providers have to provide which information is still unclear in many aspects. The decision of the BGH will probably clarify at least some of these.