GERMANY Law and Practice Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
to Registration ), the claimant has not used its trade mark for a period of five years. Defences based on general civil law principles are also applicable (see 7.4 Prerequisites and Restrictions to Filing a Lawsuit ). 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) The fair use doctrine applicable in the USA does not apply in Germany. However, according to the new Section 23 sentence 2 CA, the consent of the rights- holder is not required if the newly created work main - tains a sufficient distance from the used work. A limitation of copyright for caricatures, parodies and pastiches was introduced in Section 51a CA. All three terms are autonomous concepts of EU law. Accord - ing to the ECJ, essential characteristics of a “parody” are to recall an existing work, but at the same time to show perceptible differences from it, and to represent an expression of humour or a mockery. It is likely to assume that a “caricature” is a sub-case of a parody or at least a closely related phenomenon, which usu - ally involves a figurative representation and to which the same principles apply. The BGH has recently requested a preliminary ruling of the ECJ to provide a binding definition of the term “pastiche”. Further limitations of copyright address the area of free speech and information. According to Section 52 CA, it is permitted to communicate to the public a published work if that communication serves a non- profit-making purpose for the organiser of an event, if participants are admitted free of charge and, in the case of a lecture or performance of a work, if none of the performers is paid special remuneration. 9.3 Exhaustion Under the TMA, the proprietor of a trade mark is not entitled to prohibit a third party from using the trade mark for goods that have been put on the market under this trade mark (either by them or with their con - sent) in any EU member state or in any other contract - ing party to the Agreement on the EEA. This does not apply if there are legitimate reasons for the proprietor of the trade mark to oppose the use of the trade mark,
in particular if the condition of the goods has been changed or impaired after being put on the market. Regarding copyright law, Section 17 paragraph 2 CA provides that where the original or copies of the work have been put into circulation by sale with the consent of the person entitled to distribute them within the territory of the EU or another Contracting Party to the Agreement on the EEA, their dissemination is permit - ted, except by means of rental. However, there is no general principle of exhaustion for digital content. The owner of a copyright, a trade mark or any other sign protected under the TMA may file for injunctive relief against the alleged infringer and also for a pre - liminary injunction if the infringement is likely and the prerequisite of urgency is met. This commonly requires that the action for preliminary injunction be filed not later than four weeks after the right-holder became aware of the potential infringement. The judge has no discretion to order the injunctive relief if the legal pre - requisites are met. In Germany, the posting of a bond to obtain an injunction is not needed. 10.2 Monetary Remedies 10. Remedies 10.1 Injunctive Remedies Any claim for damages requires a culpable infringe - ment – ie, intent or negligence. Otherwise, monetary claims can only be made based on unjust enrichment. As in other fields of IP in Germany, the calculation basis for damages may be: • actual damages suffered by the right-holder (including lost profits); • payment of reasonable royalties ( fiktive Lizenzge - bühr ); or • surrender of the profits actually generated by the infringer. German law does not recognise enhanced damages for intentional infringement. However, intentional trade mark infringements may constitute a criminal act. Cer - tain monetary remedies available only for registered trade marks do not exist in Germany.
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