Instead, the infringer must combine its new cease-and-desist declaration with a stricter sanction, for example by stating a corresponding minimum amount of the contractual penalty (Regional Court of Cologne, judgement of 6 February 2014 – 14 O 383/13 – not final).
The facts of the case
The legal dispute arose from a number of incidents in which our client discovered that an online shop was regularly making use of its product images and using them to advertise its own product range without the necessary authorisation.
The first takeovers took place in August and December 2012 and, following the involvement of our law firm, were settled almost completely by mutual agreement by issuing corresponding cease-and-desist declarations, removing the images and largely settling the financial claims.
In April 2013, however, there was a further unauthorised use of our client’s image material in the same online shop. Following a corresponding warning, the other party again undertook, subject to penalty, to refrain from making the image in question publicly accessible and/or making it publicly accessible without our client’s consent and to pay our client a contractual penalty to be determined by our client at its reasonable discretion and, in the event of a dispute, to be reviewed by the competent court (contractual penalty in accordance with the so-called new Hamburg custom) for each case of future culpable infringement.
The additional claims for damages and reimbursement of costs were rejected. However, in breach of its obligations under this cease-and-desist declaration, the other party did not cease the unauthorised use of the image of our client referred to.
After this behaviour was again criticised by a lawyer, the other party repeated the cease-and-desist declaration it had previously issued with the same wording. However, this now had to be rejected as inadequate, as the previous penalty defence was clearly not suitable to deter the other party from further infringements. Our client therefore felt compelled to secure his new claim for injunctive relief by means of a preliminary injunction and then to bring it to a final judicial clarification together with all claims for damages and reimbursement of costs that had accumulated up to that point as part of the main proceedings.
Repeated cease-and-desist declaration according to new Hamburg custom is not sufficient
The Cologne Regional Court ruled in favour of the claim in its entirety except for a fraction of the interest claim.
The court initially found that the action did not lack the necessary legal protection with regard to the claim for injunctive relief. If a debtor commits an identical or essentially similar infringement after submitting a cease-and-desist declaration with a penalty clause, with which the risk of repetition has been eliminated, a new (statutory) injunctive relief claim arises with the infringement, which is not affected by the continuing promise of punishment. In the event of a new offence, the creditor is therefore not obliged to demand the promised contractual penalty alone, but can also base the action on the new claim for injunctive relief.
The claim for injunctive relief is also justified on the merits. The repeated, identical cease-and-desist declaration issued by the other party does not contradict this. This is because it was not suitable for eliminating the risk of repetition indicated by the further infringement:
‘Rather, this can at best be eliminated by a further declaration to cease and desist with a significantly higher penalty compared to the previous declaration to cease and desist (BGH, GRUR 1990, 534 – Abruf-Coupon). A second, identical declaration is not suitable for eliminating the risk of repetition, as it does not grant the creditor any further rights or does not provide for any more severe sanctions for the debtor than those which he must expect from the outset in the event of an infringement (BGH, loc. cit.; judgement of the Chamber of 11 July 2013 – 14 O 61/13 – juris para. 28, 31).
The view of the defendants that the declaration to cease and desist issued by them with the same wording in accordance with Hamburg custom on 9 July 2013 was sufficient to eliminate the risk of repetition, as the plaintiff was not prevented from imposing a higher contractual penalty, is incorrect, as the plaintiff would already have had the opportunity to assert a higher contractual penalty for each new case of infringement on the basis of the first declaration to cease and desist and this consequence did not prevent the defendant from infringing the law again. In order to eliminate the risk of repetition, the defendants should rather have issued a declaration to cease and desist with a penalty clause with a more severe sanction, such as that demanded by the plaintiff, stating a minimum amount of the contractual penalty. However, the defendants refused to do so.’
Liability of the managing director of a GmbH alongside the company
The liability for injunctive relief, damages and reimbursement of costs established by the Regional Court of Cologne applies not only to the GmbH operating the online shop in question, but also to the managing director of the company against whom a claim has also been made, because he caused the infringement through his own actions. This is to be assumed in particular in cases such as the present one, in which a managing director has culpably failed to take the necessary measures to prevent any infringements of rights by third parties (see BGH, GRUR 1985, 248, 250 – Sporthosen; OLG Köln, decision of 29 March 2007 – 6 U 244/06):
‘Defendant 2) is liable as the perpetrator of the infringement, as he was aware at the latest since the submission of the cease-and-desist declaration with a penalty clause regarding the photographs […] that the defendant had used photographs of the plaintiff in an infringing manner. From this point in time at the latest, the defendant 2), as the sole managing director of the defendant 1), would have been obliged to ensure that there were no further infringements of the plaintiff’s neighbouring rights, which nevertheless occurred several times in the subsequent period despite the submission of cease-and-desist declarations.’
The defendants have appealed against this decision to the Cologne Higher Regional Court. We will also report on the outcome of the appeal proceedings. (pu)
(Bild: © Lina – Fotolia.com)
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