Germany

1. TRADE MARK

1.1. Sources of law

The principal sources of law and regulation relating to trade marks are as follows.

  National sources. The German Trade Mark Act (Markengesetz, GTA) contains the requirements for trade mark protection of a German trade mark, the legal framework for opposition and nullity proceedings and for determining trade mark infringement. Further details, particularly of application procedure and opposition proceedings, are set out in the German Trade Mark Regulation (Markenverordnung).

  European Community sources. The following Community Law is particularly relevant:

  • Community Trade Mark Regulation 207/2009/EC; 
  • Trade Mark Directive 95/2008/EC; 
  • Enforcement Directive 48/2004/EC; 
  • Customs Enforcement Regulation 608/2013/EC. 

  International sources. Germany is a party to, in particular, the following major treaties:

  • Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) of 15 April 1994; 
  • Paris Convention for the Protection of Industrial Property of 20 March 1883; 
  • Madrid Agreement concerning the International Registration of Marks of 14 April 1891; 
  • Protocol relating to the Madrid Agreement Concerning the International Registration of Marks, adopted at Madrid on 27 June 1989; 
  • Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957. 

  Court decisions. German law does not recognise the concept of binding precedents. However, the courts of the lower instances in practice usually follow the decisions of the courts of higher instances, in particular of the Federal Supreme Court (Bundesgerichtshof, BGH).

  The European Court of Justice (ECJ) decides on the interpretation of Community law in a binding manner. As the GTA implements to a great extent the Trade Mark Directive the German courts have to comply with the decisions of the ECJ regarding the interpretation of the GTA.

  In the event of a conflict, Council Regulations of the European Community have immediate effect in Germany and prevail against any national law. Community Directives need to be implemented into national law. Even if the national implementation act has not yet been passed, the national law has to be interpreted in accordance with the Directive.

  International treaties require national implementation acts which must be interpreted in accordance with the underlying treaty. The GTA prevails against the German Trade Mark Regulation

1.2. Substantive Law

German law does not distinguish between famous and well-known trade marks and trade marks with a reputation. The German Trade Mark Act provides for special provisions regarding the infringement of a trade mark with reputation in section 14(2) no. 3 and with regard to opposition and nullity proceedings in section 9(1) no. 3. The trade mark with reputation enjoys a broader scope of protection as a danger of confusion is no requirement to assume an infringement. The younger sign has to be identical with or similar to the trade mark with reputation in relation to goods or services which are not similar to those for which the trade mark is registered, and the use of the younger sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.

  According to the BGH, sections 9(1) no. 3 and 14(2) no. 3 of the GTA have to be applied accordingly in cases in which the other trade mark or sign is protected or used for goods or services which are similar to the goods or services for which the trade mark with reputation is protected.

  The "aura of luxury" of a trade mark created by its owner is a relevant factor to determine whether the use of the younger sign takes unfair advantage of, or is detrimental to, the reputation of the trade mark. 

1.3. Enforcement

The German Trade Mark Act does not contain a definition of 'reputation' of the trade mark. According to the ECJ and the BGH the trade mark has to be known by a 'significant' part of the public. The ECJ has so far refrained from defining the meaning of the term 'significant' and stated that the trade mark does not have to be known by a given percentage of the public. Hence, account must be taken not only of the degree of awareness of the mark, but also of any other factors relevant to the specific case, in particular the relevant public, the goods and services covered, the market share, the intensity of the trade mark's use (turnover), the geographic scope, the time and duration of its use, nature and size of promotional activities and the extent to which the mark is exploited through licensing, merchandising and sponsoring. Frequent reports about the trade mark in the media can also be one of the criteria.

  The trade mark owner might provide an opinion poll/survey to evidence the reputation of a trade mark. However, this is not a requirement and should not be the only piece of evidence. Other factors to establish the reputation of a trade mark can be evidenced by documents (for example, extracts from commercial documents, overviews of advertising expenditure, advertising material, press articles and so on), or an affidavit, but the trade mark owner has to offer oral testimony by a witness who can confirm the statements contained in the documents and the affidavit.

  The owner of an older trade mark can enforce its rights against a domain name provided that the owner of the domain name does not have a right to use such name, in particular a name right. The GTA does not protect a trade mark against a conflicting domain name which is registered but not used in the course of trade.

  There is no trade mark infringement if the contested sign is exclusively used as a trade or company name. The use of a trade name might under certain circumstances be considered as infringing use of a trade mark, for example, if the trade name is used on the goods or in the advertisement for goods or services.

  The protection of a trade mark against the use of other identical or similar distinctive signs depends on their sort. In most of the cases the use of an identical or similar sign as title for a work does not constitute trade mark infringement as the title for the work is not used as a designation of the origin.

  A trade mark can be enforced against a metatag.

  A trade mark can be enforced against its unauthorized use in social media provided that the general requirements to establish an infringement are fulfilled. In particular, the other sign has to be used as a trade mark, in the course of trade and not for private purposes.

  A trade mark can be enforced against its use in comparative advertising if the comparison takes unfair advantage of, or impairs, the reputation of a distinguishing mark used by a competitor. Unfairness requires more than the naming of the trade mark. Rather, there must be additional unfair circumstances. An impairment of the reputation requires that the trade mark is denigrated. However, if the unauthorized use of a trade mark satisfies the conditions for the lawlessness of comparative advertising the advertisement cannot be prohibited on the basis of trade mark law.

  A trade mark with reputation can be enforced against its use in parody provided that the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark. The fundamental right of artistic freedom and freedom of opinion of the other party has to be considered. However, it is not allowed to expose the trade mark to ridicule or to denigrate it.

 According to traditional court practice, the trade mark law pre-empted the unfair competition law. However, the Directive 29/2005/EC regarding Unfair Commercial Practices led to a change of the traditional German path so that in some cases trade mark law and unfair competition law are both applicable. This in particular applies with regard to a commercial practice vis-à-vis consumers that in connection with the marketing of goods or services, including comparative advertising, creates a risk of confusion with the trade mark or other distinguishing mark of a competitor. Therefore, in some cases it is possible to base a claim on trade mark infringement and unfair competition law in the same proceedings. 

2. COPYRIGHT

2.1. Sources of law

The principle source of copyright law in national German law is the German Copyright Code (Urheberrechtsgesetz, CC), accompanied by more specific acts such as the Publishing Act (Verlagsgesetz, dealing with publisher's licenses) and the Collective Licensing Act (Wahrnehmungsgesetz; laying down the regulatory framework for collecting societies).

  Several EU Directives cover various fields of copyright law, among them:

  • Information Society Directive 29/2001/EC, harmonising a great part of substantive copyright law; 
  • Enforcement Directive 48/2004/EC; 
  • other Directives for more specific subject matter, such as computer programs, databases, cable retransmission, performers' rights, broadcasters' rights, and so on.

The most significant international treaties are:

  • Berne Convention for the Protection of Literary and Artistic Works of 9 September 1886; 
  • WIPO Copyright Treaty of 20 December 1996; 
  • TRIPS agreement of 15 April 1994.

  EU and national law must in general be construed in line with these treaties, although they have no direct effect.

  As set out in 1.1, there is no strict concept of binding precedents, and courts interpretation of the CC usually follows the EU Directives. 

  The priority of law for copyright follows a similar order as set out for trade marks: National law must be interpreted in the light of EU Directives, which need to be implemented into national law. 

2.2. Substantive law

The CC sets out an open list of protected works. Copyrightable subject matter includes every "personal intellectual creation". This requires certain originality ("Schöpfungshöhe"). Such protected works include, for example, literary works (including speeches and computer programs), musical works, choreographic works, architectural works, works of fine arts, architecture, applied arts, photographic works, cinematographic works, scientific and technical works (including drawings, plans or maps).

The CC also confers related rights upon, for example, photographers, performing artists, phonogram, broadcast, database and film producers, and (just recently) publishers of press products. The exclusive rights granted for that subject matter are narrower than for copyright and exhaustive.

Objects of industrial design/applied arts are, in principle, copyrightable. While courts have previously set out a higher threshold for protection, under the new BGH approach such works follow similar rules as other copyrightable works. Their design must reach originality to consider them, in the view of circles of the public concerned with art, as "artistic". However, to the extent that a design is required by a technical or other function, it cannot confer originality. A low level of originality will normally result in a narrower scope of protection.

Copyright grants the author an exclusive right over all forms of the work's exploitation, including reproduction, dissemination, public performance, making publicly available, broadcasting, and new forms not yet mentioned in the CC. Exploitation rights for related rights are exhaustively listed.

  The CC also recognises moral rights, explicitly setting out the right to first publication, author's recognition and his work's integrity.

Only natural persons can be copyright holders. Copyright as such cannot be assigned but only transferred mortis causa. Any 'transfer' of copyright amounts to a full exclusive license. Legal entities therefore have to take licenses over all use rights, which always leads to a licence chain back to the author.

Copyrights in employees' works are commonly understood to be fully licensed to their employer by virtue of their employment contract and under statutory interpretation rules, unless the nature of the employment relationship indicates otherwise. For computer programs the CC explicitly sets out that the employer is exclusively entitled to exercise all commercial exploitation rights, unless agreed otherwise. However, there are no such general rules for consultants, freelancers, shareholders, directors or suppliers so a legal entity needs licensing clauses for safe exploitation. Courts are willing to read implied licenses into contracts whose clear purpose was the commercial exploitation of works. In case of uncertainty, however, such license will be construed narrowly and only to the extent necessary for the purpose of the contract. Therefore, a licensing contract should explicitly set out the scope of licenses and forms of use.

The CC does not set out special requirements for copyright licenses to be valid. Written form is only required for licences in unspecified future works and over currently unknown forms of use.

Moral rights cannot be transferred, but waived to some reasonable extent, although uncertainty remains to what extent this can be done. It is acknowledged that the author's naming right cannot prevail where the exploitation (for example, on the radio) would preclude the recognition of authors. The right to prevent distortion of works can also be waived to allow certain forms of use.

  Copyright protection lasts 70 years until the (last) author's death. 

2.3. Enforcement

Copyright is valid and fully enforceable without registration. The CC offers an official register only for anonymous or pseudonymous works (which will affect their term of protection), and for works that are out of print (which may facilitate their licensing by collecting societies). Individual enforcement of copyright does not depend on any registration. Neither is a copyright deposit or copyright notice required. Such a notice, however, affixed on the work may lead to a presumption of authorship that the infringing party has to rebut.

The enforcing party must establish and prove all requirements of copyright, including originality and entitlement as author or licensee. It is usual to introduce a work in the proceedings, for example, a picture or sample so that the court can form an opinion on whether its elements confer sufficient originality. In principle, all forms of evidence are permissible (see 1.3 above), but rather rarely used where courts themselves can assess originality (as a matter of law) on the basis of their own perception of the work's appearance (as a matter of fact). Where original elements cannot be ascertained by the court (for example, computer programs) or where originality is excluded by certain technical functions (for example, industrial design and applied art) or where only specific elements confer originality (for example, partial copying), the claimant must specifically establish where originality lies, which is usually done by expert evidence.

  To show copyright infringement, the claimant must establish and prove that at least original parts of the work have been copied, performed, broadcasted, made available and so on. If the infringing work was not actually copied but merely shows substantial similarity, the copied elements must be the ones that convey originality.

  Copyright can generally be enforced against all infringing uses of the works, regardless of whether they may be protected by other IP rights. It is possible that an author could enforce his copyright against a third party who has registered the work as a trade mark. However, given that short word combinations like typical word marks, domain names, trade names and pseudonyms are seldom copyrightable there is often no infringement in such cases.

Social media deserves no special treatment. If a work is made available over the internet and no limitation (for example, citation) applies, the uploading user can in theory be held liable as infringer. A secondary liability arises for the platform operator. Details will depend on the type of platform provider and are intensively litigated. As a rough guidance, a mere host provider enjoys safeharbour rules until he has received actual knowledge of the infringement, mostly by a notice-and-take down-letter. The regime for content providers is stricter. A host provider may, however, lose his privilege if he "appropriates" the content (for example, by presenting user's content as his own and assuming control over it, for example, by a license for full economic exploitation). The scope of duties to end the current infringement and prevent further infringements (for example, filtering) is also litigated.

Generally, copyright can also be enforced against the unauthorized use of works in comparative advertising. However, there may be some arguments (but no settled case law) that copyright cannot be used to prevent permissible comparative advertising if the use of a copyrighted work is required for that purpose.

Without parody as a specific limitation, courts taking into account the freedom of expression tend to accept parody as free use of a work which does not copy sufficient original elements, if the new work keeps an "inner distance" to the previous work so that the latter's original elements "fade away". That may be the case if the work is used in an "antithetic context" and the public acknowledges its character as parody.

The alleged infringer may rely on a broad scope of defences. While the CC does not acknowledge a general "fair use" or "fair dealing" defence, it sets out an exhaustive list of copyright specific defences including to mention the most significant ephemeral reproductions in online transmissions, use in legal proceedings and by authorities, use in churches, schools and education, public speeches, news reports, citations, some library, private copying, reproduction of works located in public places.

Only exceptionally, a valid copyright is unenforceable. Such cases may include, for example, abuse of dominant market power, misconduct of the copyright holder or, as a recently discussed case in the context of the internet, venire contra factum proprium (see BGH GRUR 2010, 628 Vorschaubilder: uploading images to the internet as implied consent to their use as thumbnails in search engines unless technically prevented). 

  Claims from copyright infringement are in general time-barred. Claims must be enforced within three years, such term beginning at the end of the year where the claim came into existence and the rightholder became or should have become (without gross negligence) aware of the infringement.

  It is possible to bring proceedings under various IP rights, which will require presenting a set of facts that meet the respective requirements for infringement. A mere copyright infringement will not necessarily (but may) be unfair competition under additional circumstances (for example, consumer confusion, abuse of reputation, or appropriation of trade secrets). 

3. DESIGN

3.1. Sources of law

The principal sources of law and regulation relating to designs are as follows.

  National sources. The German Design Act (Designgesetz) governs the requirements for the protection of German designs, their scope and for determining design infringement. The German Design Regulation (Designverordnung) governs details of the proceedings before the German Patent and Trade Mark Office (DPMA), for example, concerning design applications and cancellation actions.

  European Community sources. The following community law is particularly relevant:

  • Design Directive 98/71/EC; 
  • Community Design Regulation 6/2002/EC.

  International sources. The most important international treaties are the following: 

  • Hague Agreement of 6 November 1925; 
  • Common regulations under the 1999 Act, the 1960 Act and the 1934 Act of the Hague Agreement; 
  • TRIPS. 

  The order of priority of the relevant sources is independent of the respective IP right. For details please refer to 1.1. 

3.2. Substantive law

 A design is a two-dimensional or three-dimensional appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of the product itself and/or its ornamentation (section 1(1) Design Act). Section 3 of the Design Act sets out exclusions from the design protection, for example, designs cannot be protected with respect to features of appearance of a product that are dictated solely by the product's technical function.

Protection for designs can be obtained with regard to industrial or handcrafted products, including packaging, features, graphical symbols and typographical characters as well as with regard to single parts which may be assembled to a complex product. Protection further requires that the design is new and has individual character. The Design Act only recognizes registered designs.

In order to obtain a valid registered design right, the owner has to file a formal application with the DPMA containing certain minimal information and representations of the design. Applicants for designs can be private persons or legal entities.

  The review of the DPMA is limited to the fulfilment of the formal requirements and does not comprise the material requirements for design protection, that is, whether the design is new and has individual character.

  The right to the design belongs to the designer or his successor in title. As exception to this rule, section 7(2) of the Design Act provides that if a design is developed by an employee in the execution of his duties or following instructions given by the employer, the right to the design will be owned by the employer.

  If the designer is a consultant, shareholder, director or supplier the design belongs to the respective designer. However, the designer can freely assign the design rights to a new owner. The assignment of design rights or grant of a license to the principal can also be included in a contract for works and services.

  The assignment of designs does not require a particular form. The registration of the transfer of title in the design register of the DPMA is not constitutive but only of declaratory nature.

  In case of an assignment agreement with employees it would be prudent to stipulate that all design rights shall be assigned to the employer at the time of their creation. The assignment agreement should provide that the parties will make any declarations necessary in order to effect the registration of the transfer of the design in the design register.  The designer can freely assign the design rights.

  A registered German design can be protected for a total maximum term of 25 years from the date of filing. In order to extend the protection to the full term, it is necessary to renew the registered design by paying a renewal fee every 5 years. The German Design Act only protects registered designs. 

3.3. Enforcement

  Assessing whether there is an infringement is dependent on the overall impression created on the informed user by the registered design on the one hand and the attacked design on the other hand. There is a design infringement if the attacked design does not produce another overall impression on the informed user than the registered design so that a substantial similarity is sufficient to establish infringement. The degree of design freedom of the designer in the development of his design is taken into consideration in assessing the scope of protection. It is irrelevant whether the third party using the design without permission has knowledge of the registered design.

  A design can be enforced against a trade mark if the general requirements to assume a design right infringement are fulfilled. In this case, the design owner can claim the cancellation of the trade mark pursuant to the provisions of the GTA if the registered design has a better priority than the registered trade mark.

  A registered design can be enforced against another younger registered design.

  A claim against a patent would only be possible in case the patented invention is protectable as design. The patented invention would be excluded from design protection if the appearance of the product is solely dictated by the product's technical function. If the design protection is possible, the registered design can be enforced against a younger patent.

  The enforcement of a registered design against domain names, trade names or similar IP rights is not possible as the use of those rights do not constitute an infringing use as design.

  A design can be enforced against its unauthorized use in social media. However, a design owner cannot assert claims with respect to non-commercial acts or which are reproductions for the purposes of citation or teaching.

  A design can be enforced against its use in comparative advertising. In particular, the two-dimensional depiction of a design in advertising, for example, in a catalogue, might be considered as an infringing act. However, if comparative advertising fulfills the requirements to be considered as permissible there are strong arguments that the advertisement cannot be forbidden on the basis of design law.

  A design can be enforced against its unauthorized use in parody. However, the fundamental rights of artistic freedom and freedom of opinion of the other party have to be considered, so that the use of the design in parody might be permissible.

  An alleged infringer may raise the defence that there is no infringement due to a deviating overall impression of the registered and the attacked design.

  He may raise the defence of invalidity of the design by either applying for a declaration of invalidity before the DPMA or in case of a pending infringement claim by filing a counter-claim challenging the validity of the design.

  The alleged infringer may also bring forward a so-called "repair clause" (section 73 Design Act). Design rights may not be asserted in connection with acts that relate to the use of a component for the repair of a complex product with a view to recreating its original appearance. This repair clause only relates to so-called must match parts whereas so-called must fit parts are excluded from design protection anyway. Must fit parts are products which must necessarily be reproduced in the exact form and dimensions, and need not to be adjusted with regard to its design.

Apart from this distinction between certain spare parts, the Design Act provides that a design right cannot be enforced in respect to the importation of spare parts and accessories for repairs and for the carrying out of repairs to ships and aircrafts.

A valid registered design can be deemed unenforceable if the statutory limitation period of 3 years has passed or if there is an exhaustion or forfeiture of design rights following the long-time inactivity of the design holder in knowledge of the infringement.

The Design Act provides that claims based on other statutory provisions remain unaffected. Therefore, it is possible that a claim is based on design infringement and copyright infringement and/or unfair competition law in the same proceedings. 

4. RIGHT OF PUBLICITY

5. PRODUCT PLACEMENT

The legal framework for product placement is not entirely consistent, ranging from detailed sector-specific rules (especially for radio and TV broadcasts) to press publishing principles to general unfair competition law. While German courts have considered product placement as an illegal practice for a long time, the general approach has changed with the European Audiovisual Media Services Directive (AVMSD). Although the AVMSD only deals with audio visual media, its liberalising approach on product placement may arguably influence other media as well.

  For all media, German law requires a strict distinction between editorial content and advertising. Under some press laws, the newspapers must mark advertising as such. In the area of public electronic information and communication services, the Telemedia Act also requires advertising to be clearly separated from the rest of the service. Regardless of the form of media concerned, German unfair competition law (in line with Annex I no 11 of the EU Unfair Commercial Practices Directive) follows the same approach: using editorial content in the media to promote a product is unlawful where a trader has paid for the promotion without making that clear. This will in general preclude any form of product placement that gives consumers the false impression that they are seeing independent editorial content, such as producer-financed positive product "reports".

  Further requirements of permissible product placement vary with the specific circumstances and type of media concerned:

  A special set of detailed rules exists for broadcasting. Implementing the AVMSD and applicable to programs produced after 19 December 2009, the German Interstate Broadcasting Treaty (IBT) distinguishes between product placement (which must be marked as such) and surreptitious advertising (which is not marked and may confuse customers about the advertising nature). The non-advertising use of products for a real depiction of life without consideration and undue prominent placement is, in general, admissible.

  The legal framework for product placement in broadcasts distinguishes between public and private broadcasters and whether there is consideration or not:

  • For private broadcasters, identified product placement for consideration (that is, additional payment or high-priced goods) is permissible only in some specific broadcasting formats comprising, for example, films and series, sports and light entertainment, but not children's, consumer and other information programs. 
  • For public broadcasters, product placement for consideration is ruled out for programs produced by the broadcaster itself or affiliates, but only allowed in broadcasted third party productions (for example, cinema movies). 
  • Without consideration (that is, low-priced goods or services are provided without paying an extra amount, for example, prizes in quiz shows) the threshold is lower for both public and private broadcasters. Product placement is forbidden only in some programs such as news, current affairs, consumer advice, children's or religious programs. 
  • In all cases, the editorial responsibility and independence must be safeguarded, the product placement must not directly encourage a purchase and the product must not be unduly prominently placed, that is, the advertising purpose shall not dominate the broadcast. Most importantly, clear information on the placement must be given. For programmes produced by the broadcaster itself or affiliates, this is usually done by showing a "P" in the screen corner with a further explanatory note at the beginning, at the end and after advertising breaks of a programme. In case of third party productions, such information must only be given where product placement can be ascertained with reasonable efforts. 

Product placement in other media, for example, cinema, follows the general rules and must not conceal the advertising nature of commercial practices. Given that the general public arguably expects cinema movies to be less objective and is aware of common product placement practices, the requirements might be considered as less stringent than under the IBT. Problematic cases still involve prominent or massive placements, which may be to some extent dealt with by adequate information nowadays.

Product placement for some goods in audio visual media, among them tobacco and medicinal products under prescription, is prohibited.

As opposed to early case law, which considered product placement contracts illegal in some cases, nowadays a contract for lawful product placement is valid and enforceable. If the placing party fails to perform or performs poorly, the brand/product owner can in general claim specific performance or damages. He may also terminate or withdraw from such a contract in case of breach, which in general requires setting a cure period that may be dispensable for serious breaches. No case law exists on whether the brand owner can prohibit the use of the brand in that case. If the placing party places a product in its programme without a specific contract, such placing might be prohibited if such use harms the product, infringes IP or causes other detriments. 

6. . PROTECTION OF CORPORATE IMAGE AND REPUTATION

According to consistent German court practice, the rights of publicity and privacy extend to legal entities and civil law corporations but not to public law corporations.

The civil law corporation does not have to fulfil certain conditions to enjoy the right of publicity and privacy, but it is only protected in its function as business enterprise or employer against direct infringements, for example, against untrue statements with regard to the quality of its products or defamatory statements made by third parties which directly address the corporation. German law does not recognize a claim for pecuniary compensation of the corporation in cases of infringement of the non-commercial elements of its right of privacy/publicity.

It is generally possible to include specific clauses in agreements aimed at protecting the corporate image and reputation of the parties. However, such agreements have to comply with antitrust law and in particular should not run contrary to the ban on restrictive agreements under article 101(1) TFEU. Certain clauses might be block exempted under the Commission Regulation (EU) No. 330/2010 of April 2010 regarding vertical agreements. The European Commission provides additional guidance in the Guidelines on Vertical Restraints.

  In order to protect the corporate reputation during product distribution, producers would usually establish a system where the supplier undertakes to sell the contract goods only to qualified distributors selected on the basis of specified criteria and where these distributors undertake not to sell such goods or services to unauthorised distributors (in effect, a selective distribution system). Within a selective distribution system conforming to these basic criteria, certain restrictions are allowed that are otherwise considered problematic under EU competition law.

  In a selective distribution system, the resellers must be prohibited from selling products to other resellers that are not part of the system. However, they cannot be prevented from cross-supplying other resellers within the system.

  Even in selective distribution systems, it is strictly impermissible to prohibit a commercial customer from reselling products below a certain fixed price. Producers may, however, recommend sales prices but shall refrain from enforcing these prices through any kind of pressure or incentive.

  A prohibition to buy non-original spare parts would have to be assessed in accordance with the specific circumstances of the case. If such a clause is implemented by a producer with market power or if the clause amounts to a covenant not to compete or to a boycott of a specific producer, it may have anticompetitive effects and may, therefore, be illegal or require safeguarding duration limits.

  Generally, the permissible types of clauses protecting the reputation or corporate image of the other party may also be supported by stipulated penalties or liquidated damages. However, such clauses are usually embedded in agreements that are considered to be general terms and conditions and, in this case, shall not be disproportionate. Therefore, they should be precise with respect to the triggering events, should not be triggered by breaches of minor provisions and should not be excessive with respect to the amount of fines or damages.

4.1. Sources of law

  German law recognizes certain individual's rights such as the right to one's name, the right to one's image, the moral right as well as the protection of honour. In addition, the general right of personality is (under certain conditions and following a weighing of interests of others) protected; in particular against commercial use.


  The following sources of law are particularly relevant:

  • Section 12 German Civil Code -BGB (right to one's name); 
  • Section 12 - 14 CC (moral rights); 
  • Section 22 et seq. Copyright for Works of Art Act - KunstUrhG (right to one's image); 
  • Section 185 et seq. Criminal Code - StGB (protection of honor); 
  • Section 823 BGB (general right of personality). 

 

4.2. Substantive law

Each living human owns a right of publicity. When considering whether the right of publicity survives the death of the individual it has to be distinguished between infringements of non-commercial and commercially exploitable elements of publicity rights. The non-commercial elements are not transmissible mortis causa. However, the deceased remains protected against infringements of their human dignity and serious infringements of their honour or distortion of their image. The relatives of the deceased (and not the heirs) are entitled to claim for injunctive relief and revocation. Claims for damage compensation are excluded. A special provision with regard to the right to one's image is contained in section 22 s. 4 KunstUrhG which grants the relatives the right to consent to the usage of the image of the deceased for a period of ten years.

  The commercially exploitable elements of publicity rights, for example, the unauthorized use of the deceased's name or image for commercial purposes, are transmissible mortis causa to the heirs. The claims of the heirs also comprise claims for damage compensation. According to the BGH the commercially exploitable elements of publicity rights are protected for a period of 10 years following the death.

  The assignment of the right of publicity in whole is not possible under German law as it contains personality rights which are inseparable from the individual. However, as German courts acknowledge that the commercially exploitable elements of publicity rights can be inherited, it is intensely discussed whether this leads to the conclusion that the commercially exploitable elements of the right of publicity can be assigned to third parties. In an older decision of 1993 the BGH decided that an individual cannot assign their name to a third party. Until now, the BGH has not decided on the question whether the right to one's image, or any other commercially exploitable elements of the right of publicity, can be assigned.

  The non-commercial elements of the right of publicity cannot be licensed whereas a license of the commercially exploitable elements is possible. German law does not provide an explicit provision regarding the licensing. It is undisputed that an individual can grant non-exclusive licenses to use the commercially exploitable elements of their  name or image, in particular for advertising purposes. However, it is still under discussion whether the grant of an exclusive license is possible. Predominantly, an exclusive license of the name is considered not to be possible, but there is a strong body of opinion favouring exclusive licenses of the commercially exploitable elements of the image and the name.

  Any license agreements of certain elements of the right of publicity shall not unduly restrict the personality. Furthermore, the scope of the license must be sufficiently determined or at least determinable, in particular with regard to the licensed object (for example, the individuals name or image). A license agreement regarding the name right is invalid if the license grant misleads and disappoints the public which associates a certain quality with the name.

  The license agreement should be in written form and concretely define the scope of the merchandising or other exploitation of the right of publicity, in particular with regard to the business, the merchandising products, the territory and the duration of the license. The licensee should be obliged to provide the licensor with samples of the merchandising products for review and consent before series production and for quality control.

  Withdrawal of the licensor's consent is possible for serious cause, for example, in case of the change of the inner attitude so that the licensor cannot be reasonably expected to be further bound to its consent. All circumstances relevant for the case have to be considered.

  If not otherwise stipulated in the license agreement it does not automatically terminate with the death of the licensor and binds the successors.

  As described above, only the commercially exploitable elements of the right of publicity are heritable and can be licensed to a third party. However, the heirs are bound by the restrictions resulting from the non-commercial elements and have to respect the dignity of the deceased safeguarded by the deceased's relatives.

  According to the BGH the commercially exploitable elements of the right of publicity are protected for a period of ten years after the death. The term of protection of the non-commercial aspects can be longer and depends on the reputation of the deceased. 

4.3. Enforcement

Only the individual has the right to sue, but an authorization to the licensee is possible. With regard to the non-commercial elements an authorization of third parties to sue is not possible.

  The right of publicity is protected against commercial and non-commercial use. Regularly, an infringement can only be assumed following a weighing of the various interests concerned, for example, the freedom of opinion or the press or the artistic freedom of the infringer or the general interest of the public to receive information. The scope of protection is broader in cases of sole commercial use by a third party so that it is not allowed to use the individual's name or image in the advertisement without prior consent.

  The right of publicity of each individual is protected independently of its commercial value, so that each individual has a claim for injunctive relief and removal, including a claim for revocation, against the infringer. In case of severe infringements of the non-commercial elements of the rights of publicity (like infringements of a person's honour or dignity) the courts have imposed a pecuniary compensation.

  In case of a claim for damage compensation or unjust enrichment based on the infringement of the commercially exploitable elements (for example, the unauthorized use of a person's image), the concrete amount of damage compensation depends on the commercial value of the infringed right, so that celebrities can claim higher amounts than ordinary people.

  The commercial value can be evidenced by documents (for example, press articles about the person, merchandising or license contracts with third parties), and supported by oral testimony. Expert evidence is also possible. An affidavit is possible but can only replace a witness hearing in preliminary injunction proceedings and should be supported by documents.

  The defences depend on the infringed right of publicity. In case of the infringement of the right to one's image, the special provisions of section 22 et seq. KunstUrhG apply. The infringer might raise the defence that the person has (impliedly) consented to the publishing of the picture. The defendant can argue that one of the exceptional cases listed in sections 23 or 24 KunstUrhG applies, in particular that the picture relates to contemporary history.

  In case of the infringement of an individual's name the defendant might deny the infringement arguing that he has the older rights or that the name used by the defendant is not similar to the individual's name. Furthermore, each person has the right to use their own name. However, a fair balance of the interests has to be created so that the owner of the rights to the younger name might be obliged to add distinctive elements when using the name in business.

  In case of an encroachment on the general right of personality a balance of interests and all circumstances relevant to the case has to be undertaken in order to assume whether the encroachment is unlawful. Therefore, the defendant might raise the defence that the encroachment was not intense and/or that the freedom of opinion, the press, the science, the research or teaching or the artistic freedom prevail the protection of the general right of personality.