The Federal Supreme Court decision of April 7 2011 in ICE(1) relates, among other things, to the question of the circumstances in which the use of a registered design is considered to be an "act of reproduction for the purpose of making citations or of teaching" (Article 20(1)(c) of the EU Community Designs Regulation (6/2002); Section 40(3) of the Design Act). Subject to certain requirements, the use of a design in terms of an "act of reproduction" is permissible and therefore cannot be prohibited by the design owner.
The defendant, Deutsche Bahn AG, was the owner of various registered designs for Inter City Express (ICE) high-speed trains. The claimant was a research facility in the field of railway technology, which developed a testing facility for wheel sets for the ICE 1 train. The claimant had advertised its services in an exhibition catalogue and had shown the locomotive of an ICE 3 train for that purpose. Deutsche Bahn accused the claimant of infringing its registered designs and demanded that the claimant pay a licence fee. The claimant refused payment of the licence fee and filed a negative declaratory claim, arguing that the defendant was not entitled to any claims against it. The district court rejected the claim and the claimant´s appeal was unsuccessful.
Among its reasons,(2) the Federal Supreme Court stated that the court of appeal had correctly concluded that the two-dimensional representation of a design in the form of a catalogue illustration constituted an act of use requiring the consent of the design owner. This statement is notable since the two-dimensional rendering of a three-dimensional design is not specifically mentioned as an "infringing act" in Article 19(1) of the EU Community Designs Regulation or Section 38(1) of the Design Act.
Moreover, the court found(3) that the claimant´s representation of the design in the form of a catalogue illustration did not constitute an "act of reproduction for the purpose of making citations or of teaching" and was therefore not covered by the citation right. In that case, the use of the design would not constitute an infringement. The court argued(4) that use of the design "for the purpose of making citations" would require:
- an inner connection between the reproduced design and the thoughts of the person making the citation; and
- the reproduction of the design to have served as a reference or basis for discussing the person's own citations.
However, this was not the case for the following reasons:
- The claimant did not use the design in question to substantiate its own statements, but instead with the sole aim of promoting its range of services.
- The claimant had developed a testing facility for wheel sets only for the (much older) ICE 1 train, but not for the ICE 3 train – hence, there was a lack of "inner connection".
- The claimant, in the court's view,(5) was not compelled to use a representation of a protected design in order to market its services; on the contrary, the claimant was free to use a picture of a non-protected high-speed train or the image of an imagined product.
The decision has far-reaching consequences for advertising practice in particular, but also for press and publishing companies. Products protected under design protection law are frequently used to illustrate advertisements, brochures, catalogues or newspaper and magazine articles. In most cases there is no apparent connection between the reproduced design and the thoughts of the person. Hence, the use of the design is not exempt and may constitute an infringement.
For further information on this topic please contact Philipp H Günther at Klinkert Zindel Partner by telephone (+49 69 972 65 600), fax (+49 69 972 65 6099) or email ([email protected]).