Nora Keßler September 3 2012 Be careful what you wish for … in pre-trial proceedings for taking evidence Klinkert Rechtsanwälte PartGmbB | Intellectual Property - Germany Nora Keßler Intellectual Property BackgroundFactsDecisionCommentBackgroundGerman IP laws provide a pre-trial discovery proceeding through which a party can obtain evidence of an alleged IP infringement. The proceeding is initiated by a request for a court order to have the allegedly infringing product inspected by a court-appointed expert. If any further actions are required or if the product is unavailable to the public, the court order must be accompanied by a preliminary injunction in which the owner of the product is ordered, under threat of a penalty, to tolerate the inspection. The wording of the request for a preliminary injunction should be carefully drafted – otherwise, the entire proceeding can be futile, as shown in a Munich Higher Regional Court decision (6 W 2399/10).FactsThe case concerned software, the copyrights to which the respondent had allegedly infringed. The applicant filed a request for pre-trial inspection of the software. In its request, the applicant requested that the court conduct a discovery proceeding by obtaining a written expert opinion on the question of whether copies of the software could be found on the hard drives of personal computers (PCs), laptops, servers and/or back-up media. The applicant filed for an accompanying court order in which it was requested that the respondent tolerate this inspection of all such equipment "located at the premises of [the] Respondent".The request also listed in detail the measures which the expert should be authorised to carry out, in particular:running and connecting to a printer every PC, laptop and server; and viewing the contents of files and databases stored on hard drives and storage media.The order was issued as requested by the applicant and the expert conducted an inspection. During the inspection, however, the expert not only examined the PCs, laptops and servers on the premises of the respondent, but also considered data stored for the respondent on the server of an internet host.Once the expert report was finalised, the respondent filed a request that the opinion not be released to the applicant. The respondent argued that the examination of data stored outside the premises was not covered by the expert's mandate defined in the court order.The applicant opposed this request. It argued that the order that "all personal computers, laptops, servers and data storage media" should be inspected also covered data stored outside the premises on servers and storage media that were connected to PCs, laptops or servers on the premises.DecisionThe appeal court ruled in favour of the respondent. It held that the applicant was not entitled to receive the parts of the opinion that were not covered by the order for taking evidence. The court found that a broad interpretation of the order undermined the principle that court orders must be precise. It stated that it was not permissible to interpret broadly the court order by legitimising actions of the expert that went beyond the scope of the court order.The court emphasised that it is the applicant's responsibility to file a request that covers all actions which the expert is authorised to carry out. Therefore, those parts of the opinion that were obtained in violation of the court order could not be released to the applicant.CommentAs it is difficult to foresee where information to be obtained is stored, drafting a request for inspection can be hard. In some cases the courts have allowed a broad wording authorising the expert "to take all necessary means" for obtaining the evidence. However, considering the requirement that court orders must be precise, as highlighted by the Munich Higher Regional Court, such wording could be considered too imprecise – and thus impermissible – in the future. Therefore, it is advisable to cover all eventualities in the request; where appropriate, consulting a technical expert or even a private investigator can be a good idea before drafting a failsafe request.For further information on this topic please contact Nora Keßler at Klinkert Zindel Partner by telephone (+49 69 972 65 600), fax (+49 69 972 65 6099) or email ([email protected]).