Tenor
The defendant’s appeal against the judgment of the 6th Civil Chamber of the Regional Court of Frankfurt am Main delivered on April 25, 2018 (case no. 2-6 O 351/17) is dismissed.
Orders the defendant to pay the costs of the appeal proceedings.
This judgment and the contested judgment are provisionally enforceable without the provision of security. The defendant may avert the plaintiffs’ enforcement by providing security in the amount of 110% of the amount enforceable on the basis of the judgment, unless the plaintiffs provide security in the amount of 110% of the amount to be enforced in each case prior to enforcement.
The appeal is not permitted.
Reasons
I.
The plaintiffs are defending themselves by way of a negative declaratory action against the assertion of copyright claims by the defendant to an advertising logo.
Plaintiff 1) has been manufacturing audio products for the automotive sector (so-called car hi-fi) since 1990. The parties came into business contact in 2011. Plaintiff 1) had developed so-called “plug and play” audio products for the automotive sector. Plug and play components are characterized by the fact that they can be easily and quickly connected by means of a plug connection, so that music can be played quickly and easily without replacing the factory-fitted speakers. The defendant, which among other things trades in audio products, offered to distribute and market these products.
In an email dated March 3, 2011, the managing director of the defendant, Mr. A, suggested to the plaintiff (1) to use the name “Match” for the new product line (Exhibit B 10, p. 132 of the file). In the context of audio products, the English word “to match” stands for the German verb “passen” or “zusammenpassen” and, according to Mr. A’s idea, should symbolize the above-mentioned matching of the “Plug and Play” products to the acoustic conditions of different vehicle models.
Mr. A commissioned the graphic designer B employed by him to develop a design for a logo with the designation “Match”. In an email dated March 17, 2011, Mr. B sent the draft of a logo created in various formats to employee C of plaintiff 1). He stated that he had used the orange color “Pantone 152” from the “Pantone” color system as the font color for the word “Match” and that he had used the font “Porscha (911)”, which he had modified and corrected due to imperfections (Annex B 11, p. 134 of the file). This font is freely available on the Internet at the website “(…)”. Reference is made to the comparison of the logos produced with the typefaces (Annex K 7 – p. 49 of the file).
The original plan of the plaintiff 1) to use the logo for the Plug and Play products was initially not realized. In February 2012, the plaintiff 1) returned to the logo. The plaintiff 1) initially considered spinning it off as an independent line under the umbrella brand “powered by D”. In this context, Mr. C suggested to Mr. B that the logo should be “minimally extended in terms of font height, as it is otherwise a rather wide and flat logo”. He asked Mr. B for a proposal in an e-mail dated February 2, 2012 (Annex K 8). The background to this request was to make the font easier to read even with smaller images of the logo. Mr. B sent the plaintiff 1) corresponding graphic samples. In one of these samples, the word “Match” is already preceded by a black double triangle pointing to the right (Annex B 12 – p. 142 of the file).
Later, the plaintiff (1) decided to use the sign with a reference to its company (“by Audiotec”). At his request, Mr. B sent Mr. C the logo “Match” on 24 May 2012 as a vector graphic, i.e. including the double triangle in front (Annex K 9 p. 102 of the file).
The second plaintiff registered this logo as part of the word/figurative mark “Match by Audiotec X” at the German Patent and Trademark Office with priority dated September 17, 2012 and extended this registration to other countries by means of an IR trademark (Annex K 3). The plug-and-play products of the plaintiff 1) were subsequently labeled with the trademark.
The parties worked closely together in the marketing and distribution of the “Match” products of plaintiff 1). The defendant used the trademark-protected logo in its advertisements and pointed out that “Match” was a trademark of the first plaintiff and that it exclusively distributed these products (Exhibits B 5 and B 6 – p. 78 of the file). In addition, the plaintiff 1) advertised its products with the logo independently in brochures and advertisements (Annex K 10).
The business relationship between the parties ended in 2017. In an email dated 28. 3. 2017, the managing director of the defendant proposed to the plaintiff 1) to pay an amount of € 100,000 for the transfer of the logo. The entitlement to claim was confirmed in further legal letters from the defendant’s representative dated 4. 7. 2017 and 28. 9. 2017 (Annex K 4). After rejecting this claim, the defendant sent the plaintiffs a warning letter dated October 20, 2017 and requested them to submit a cease-and-desist declaration (Annex K 6).
The plaintiffs have taken this as an opportunity to bring an action seeking a declaration that they are not obliged to refrain from using, distributing, reproducing, advertising and/or making publicly accessible in any other form the “Match” logo depicted in the application alone or in combination with other lettering and/or logos without the defendant’s consent. They denied the copyrightability of the logo and also stated that they had been granted a free right of use for an unlimited period. With regard to the facts of the case, reference is also made to the factual findings in the contested judgment (Section 540 I 1 ZPO).
The Regional Court upheld the action. The action for a declaratory judgment was admissible and well-founded. It could be left open whether the logo in question was eligible for copyright protection, as the defendant had in any case granted the plaintiff (1) an unlimited right of use for an indefinite period and the right to sublicense.
The design of the logo was based on the work of witness B, who was employed by the defendant as a graphic designer. If copyrights had been created by him in this respect, the defendant had acquired the exclusive rights of use. Insofar as the employment contract did not contain an express grant of rights, this was in any case to be derived from § 43 UrhG.
The defendant then had to pay the costs in accordance with. § 31 para. 5 UrhG, the defendant then granted the plaintiff (1) an exclusive right of use for an unlimited period of time. For this to be the case, it was necessary that a corresponding intention of the parties was unambiguously expressed at least in the accompanying circumstances and the conclusive conduct of the parties. In the present case, all parties had assumed that the logo was to serve the sole purpose of identifying the products of plaintiff 1). The defendant had not shown that it had objected to the use of the logo on the products of the plaintiff 1) since 2012 before the termination of the business relationship. The defendant had at least partially taken over the distribution of the plaintiff’s match products in Germany; it was recognizable to it that the logo was intended to serve as manufacturer identification. The granting of rights was unlimited in terms of content and time, as the plaintiff 1) would otherwise always have had to fear that it would not be allowed to continue distributing its products.
In its appeal, the defendant challenges the view of the Regional Court that the defendant had transferred an exclusive and unlimited right of use to the plaintiff 1). According to the defendant, the district court assumes incorrect facts for a tacit transfer/agreement, which is the only possible assumption; it also contradicts the interests of the parties.
The logo was not intended to identify the products of the plaintiff 1), but the defendant fulfilled its task within the framework of the joint business relationship by creating and providing it to ensure the marketing of the products. It had not only taken over the complete marketing in the contractual territories, but also the distribution of the products in Germany and other European countries. The logo therefore served the joint purpose of the parties to successfully market the “match” brand products and the brand itself. The “match” logo was also used on numerous merchandising articles, the creation, purchase and sale of which was the sole responsibility of the defendant. Of course, it did not ask the plaintiff for permission to do so, as the copyright to the logo remained with the plaintiff.
Moreover, even after the termination of the joint business relationship, the plaintiff (1) could sell its products under the previous name (as it had done before), but not with the logo.
The assumed implied granting of rights also does not correspond to the interests of the parties. The defendant’s interest, which was also recognizable for the plaintiffs, was from the outset that the logo would only be used by the plaintiff 1) for the duration of the joint business relationship. All of the defendant’s investments were aimed at ensuring that it would at least profit from the sale of the products. Therefore, the granting of rights was limited to the duration of the business relationship. The right of use therefore expired with the termination of the business relationship on 30.9.2017, but at the latest with the termination of the right of use in the statement of 11.1.2018.
In addition, the defendant expands on its statements on the copyrightability of the logo. The development of the lettering took more than a year. It is not the individual elements that are decisive, but the overall impression that gives this graphic the required level of creativity.
The defendant claims,
to amend the judgment of the 6th Civil Chamber of the Regional Court of Frankfurt am Main delivered on April 24, 2018 and to dismiss the action with costs.
The plaintiffs request,
dismiss the defendant’s appeal.
The plaintiffs defend the contested judgment, repeating and expanding on their arguments at first instance:
The logo does not reach the level of design required for copyrightability. The word “match” is not eligible for protection; the font is the well-known font “911 Porscha”, with only marginal, technical changes (in particular the height of the letters). The use of the frequently used color orange and the prefixing of a double arrow also did not lead to protectability, especially since the latter was a well-known sign for “fast forward” in the audio sector and had been taken over from the plaintiff’s earlier trademark D. Moreover, contrary to the opinion of the Regional Court, the defendant had at no time been granted exclusive rights of use to the logo. The logo had been produced for the purposes of the plaintiffs and the Regional Court had therefore correctly found that the defendant had transferred any rights of use to the plaintiff 1).
II.
The defendant’s appeal is admissible, but not well-founded, because the Regional Court rightly found that the defendant is not entitled to injunctive relief against the plaintiffs for the use of the “Match with double vector” logo.
The plaintiffs’ interest in a declaratory judgment required for the action for a negative declaratory judgment arises from the defendant’s warning letter of September 28, 2017 (Annex K 6, p. 43 of the file).
The warning was not justified because the defendant cannot prohibit the plaintiffs from using the disputed logo. This is already the case because the logo is not eligible for copyright protection (hereinafter para. 1.). Irrespective of this, the Regional Court also correctly deduced from the parties’ submissions and the documents submitted by them that the plaintiff 1) was granted a right to use the logo free of charge and for an unlimited period of time (hereinafter para. 2.).
1.
The logo in dispute is to be classified as applied art within the meaning of Section 2 I No. 4 UrhG, as it is a graphic design that is used to identify and advertise the plaintiff’s products.
The protectability of works of applied art is to be assessed according to the principles established by the Federal Court of Justice in its decision of November 13, 2013 (case reference: I ZR 143/12 – Geburtstagszug I = GRUR 2014, 175). Accordingly, it is sufficient that they reach a level of design which, in the opinion of circles receptive to art and reasonably familiar with art appreciation, justifies speaking of an “artistic” achievement (BGH loc. cit., para. 15; OLG Hamburg ZUM 2004, 386 – Handy-Logos).
An author’s own intellectual creation presupposes that there is scope for design and that the author uses it to express his creative spirit in an original way (BGH loc. cit., para. 41). However, the aesthetic effect of the design can only justify copyright protection if it is not owed to the purpose of use, but is based on an artistic achievement.
Therefore, in the case of works of applied art and, in particular, commercial art, it is necessary to examine in detail what is dictated by the purpose of use and therefore cannot justify copyright protection (see Schulze in: Eichmann / Kur, Praxishandbuch Designrecht, 2nd ed., chapter 4, para. 34 to § 4 Urheberrecht; Nordemann in: Fromm/Nordemann, UrhG, 12th ed., para. 150 to § 2 UrhG).
An individual creation is ruled out if the product merely repeats existing forms of expression without giving the work personal traits. Formal elements that are based on known models can therefore only be taken into account if their combination constitutes a creative achievement sufficient for art protection (OLG Schleswig, judgment of 11.9.2014 – 6 U 74/10 – Geburtstagszug II, para. 19 = GRUR-RR 2015, 1). The defendant has the burden of presentation and proof for this, as it is aware of the property right.
a)
The defendant claims that both the naming of the logo (by Mr. A) as well as the graphic design (by the graphic designer employed by the company B) were “created” in-house. However, neither the naming nor the graphic design itself nor the overall impression of the logo reach the level of creation required for protection as “small coin” in § 2 II UrhG.
The defendant itself has conceded that the verb “match”, which is familiar from English vocabulary, is associated by the public with the German translation “passen” or “zusammenpassen” in connection with audio products, among other things, and should therefore merely symbolize the characteristics of the new “plug-and-play” capable devices. The name is therefore derived directly from the intended purpose of the product name for the product line and cannot therefore be regarded as a creative achievement.
The graphic designer B was then given the task by Mr. A to graphically implement the designation “Match” to design a logo in such a way that it could be used to identify the product line and to advertise and market the plaintiff’s hi-fi devices. Mr. B’s activity was oriented towards this purpose. Moreover, it did not go beyond the merely technical or routine services of a graphic designer and did not contain any “surplus” of his own creativity.
b)
The logo created by Mr. B consists of the word “Match” preceded by a black double triangle aligned in the direction of writing. For the color selection, the graphic designer used a previously known standard color, namely the color “Pantone 152”, and for the font, the typeface “911 Porscha”, which is available in the publicly accessible font collection “www.dufont.com” and was developed by a well-known German vehicle manufacturer to identify its products. The comparison of the logo with the spelling in the “original typeface” proves that only minor changes were made to the font height of the letters, which, according to the plaintiffs’ submission, can be achieved with the “Photoshop” software product commonly used by graphic designers without considerable effort.
The defendant has not countered this in a substantiated manner, because it has not explained which creative or development steps that go beyond the purely technical were taken to change the font. In addition, the changes made by Mr. B to the original font were based on the intended use of the logo, which should also be easily legible in smaller images (BB p. 13 – p. 235). In this respect, reference is also made to the email from the plaintiff 1) dated February 2012 with corresponding suggestions (Annex K 8).
The double triangle preceding the word cannot lend the logo an original artistic touch either. Here, the graphic designer has made use of a previously known symbol that is freely available in public collections of signs and frequently used in the audio sector, which is equated with the term “fast forward” (Annex K 2).
Even when viewed together with the term “match”, the graphic implementation here does not achieve the minimum degree of aesthetic content required for a work of art. A sign has been created which, in accordance with its purpose, is distinctive within the meaning of § 3 I MarkenG, but lacks an artistic claim that exceeds the purpose of use (see OLG Cologne GRUR 1986, 889, 890 – ARD-1; OLG Hamm, judgment of August 24, 2002, 4 U 51/04, para. 22 – Web-Graphiken = ZUM 2004, 927; OLG Hamburg ZUM 2004, 386 – Handy Logos).
Finally, it does not matter that the development of the logo took over a year until its release and included multiple changes and additions, because this does not mean that Mr. B’s work went beyond a purely technical and graphic implementation of the change requests.
c)
If the defendant argues in the grounds of appeal that Mr. B wanted to create associations with the origin of the mark “Made in Germany” and the car hi-fi sector, with the topicality and modernity and the ease of use of the products through the design of the logo, this may be true. The only decisive factor is the aesthetic effect the design has on the viewer and this does not go beyond a compilation of previously known design elements for product identification.
The defendant cannot rely on the decisions of the OLG Munich of July 16, 2014 (29 U 4823/13) and the OLG Naumburg of April 7, 2005 (10 U 7/4) on the copyright protectability of lettering/characters cited by it, because the cases decided there are not comparable with the present case in factual terms. In particular, it is clear from the grounds of the Munich decision that the graffiti lettering to be judged there had individual features that went beyond an established graffiti style.
2.
Even if one wanted to see it differently, the defendant’s warning fails in any case because it has granted the plaintiff 1) a free, perpetual and exclusive right to use the logo.
a)
It can be assumed that the defendant is entitled to pursue any copyright claims. In view of the job description of the graphic designer B, the Regional Court comprehensibly stated that a grant of the employee’s rights of use to the defendant can be derived from Section 43 UrhG. The complete employment contract of the defendant with Mr. B submitted in the appeal proceedings does not contain any provisions that could justify doubts about the findings of the court of first instance (Annex BB 6). Ultimately, this does not matter because the plaintiff 1) is entitled to unlimited and exclusive use of the logo.
b)
The parties have not reached an express agreement on the conditions for the use of the logo by the plaintiff 1). There is also no written agreement on the content of the defendant’s sales activities. However, it is undisputed that the logo in dispute was made available to the plaintiff in May 2012 to identify its products (with the addition “by Audiotec X”). An overall view of the documents submitted and the meaning and purpose of their agreements derived from them leads to the conclusion reached by the Regional Court that a free, unlimited and exclusive right of use was granted at this time at the latest.
c)
If the parties – as in this case – have not expressly stipulated when concluding a contract whether the party entitled to copyright grants its contractual partner a right of use to the work, Section 31 V sentence 2 UrhG determines whether and to what extent a right of use has been granted according to the purpose of the contract on which both parties are based. According to the transfer purpose concept on which this provision is based, in case of doubt, an authorized user only grants rights of use to the extent that the purpose of the contract absolutely requires. This means that, in general, only those rights of use are tacitly granted which are indispensable for achieving the purpose of the contract (BGH, judgment of April 29, 2010, I ZR 68/08 – Restwertbörse I Tz. 20 = GRUR 2010, 623).
The defendant must be admitted that the principle of limiting rights of use to the common contractual purpose standardized in § 31 V UrhG pursues the legislative goal of ensuring the greatest possible participation of the author in the economic fruits of his work (BGH, judgment of 27. 9. 1995, I ZR 215/93, para. 19 – Pauschale Rechtseinräumung = GRUR 1996, 121). As a result, the exploitation rights remain with the author in case of doubt, unless the purpose of the contract absolutely requires this (see Wandtke/Bullinger/Grunert, UrhG, 4th edition, para. 58 to § 31 UrhG). However, according to the convincing findings of the Regional Court, the exploitation rights have been transferred to the plaintiff without limitation:
d)
The Regional Court correctly worked out that the logo designed by Mr. B was intended to identify the new plug-and-play product line of the plaintiff 1) and thus serve as a manufacturer identification. This was the contractual purpose of the development and the granting of the rights of use.
The defendant had agreed from the outset that the logo should be used as a manufacturer’s mark for the benefit of the plaintiff’s products. This is also shown by the correspondence of February 2012, which still concerned the use of the design with the plaintiff’s umbrella brand “D” ((powered by D) – Annex B 12 – p. 139/142 d. A.). A.).
This is not precluded by the fact that the defendant, as the plaintiff’s distribution partner, also pursued its own economic interests with the use of the logo. Insofar as the defendant has taken on further tasks in the context of its distribution partnership with the plaintiff, such as the development of marketing concepts, the production of merchandising articles or the printing and use of advertising material with the logo (example BB 1), the labeling with the disputed logo always referred to the plaintiff’s products themselves and not to any services of the defendant that could be separated from them.
After the plaintiff re 1) had decided in May 2012 to establish “Match” as an independent product line, the defendant consequently also accepted that the logo could be used as part of a trademark, i.e. to identify the plaintiff’s products in favor of the plaintiff to 2) with the addition “by Audiotec X”, i.e. the company name of plaintiff no. 1) has been registered. The indispensable content of the agreement was therefore that this marking could also be used permanently and exclusively on and for the plaintiff’s products. The Regional Court also rightly derived a right to sublicense in favor of the plaintiff re 2). Reference can be made to the considerations of the Regional Court (p. 8-9 of the judgment), which the Senate agrees with.
In addition, the following points should be noted:
According to the purpose of the contract, it is not apparent that the defendant (had) an economic interest in the use of the logo that went beyond its sales interest at the time and that could argue in favor of limiting the use of the logo to the duration of the parties’ business relationship. The defendant sold and sells its products under different own brands and was therefore never dependent on the sign for its business activities (Exhibit B 9, p. 125 et seq. of the file). In contrast, it was always clear to the defendant that the plaintiff 1) had an elementary economic interest in the sign because it had decided to use this logo for the labeling of its new product line. The defendant respected this interest by always (only) presenting itself as the plaintiff’s distribution partner (Exhibits B 5 and B 6).
Insofar as the defendant “raises the issue” that it is to be regarded as a co-manufacturer of the products due to its extensive marketing activities, this cannot be inferred from the factual submission. The technical development and the responsible manufacture of the products (possibly also with the help of subcontractors) was indisputably the sole responsibility of the plaintiff 1), which also assumed the guarantee function under trademark law with its label “Match by Audiotec X”.
Since the defendant’s appeal is unsuccessful, it must bear the costs of the appeal proceedings (Section 97 I ZPO).
The decision on provisional enforceability follows from Sections 708 No. 10, 711 ZPO.
There is no reason to allow the appeal. The matter is not of fundamental importance. The Senate’s decision is based on a case-by-case assessment of the facts of the case and the matter in dispute on the basis of supreme court guidelines.