Empty transfer

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When idle transmission is known in the law the sale or licensing of intellectual property , legal position, not later turns out to be nonexistent because the requirements for protection were materially never met.

example

The protection under intellectual property law is sometimes dependent on conditions, the fulfillment of which cannot be determined with certainty before a license agreement is concluded. One example is copyright protection: it is granted - completely independently of the will of the author - under certain legal requirements, in particular when the so-called height of creation is reached . Whether a product is protected by copyright is not decided by party disposition, but by the (real) act of the creation process itself.

If, for example, the furniture manufacturer M wants to manufacture a piece of furniture designed by the author U and sell it to his customers, there is a certain uncertainty for both parties about the copyright protection of the piece of furniture. If M assumes that the piece of furniture is subject to copyright protection, he will try to have U grant him the necessary rights of use for his intended exploitation . In a license agreement , M and U then stipulate which acts of use M is allowed and what remuneration he has to pay U in return. Since the copyright protection of the piece of furniture is not based on the will of the party, there is the possibility that the piece of furniture - contrary to what M assumed - is in truth not protected at all. In truth, U could not have granted any rights of use. In the example case, the knowledge of the inability to protect can come at the end of judicial proceedings decided after years of use. Such a case of the granting of a license is called an empty transfer : in the license agreement no rights are actually granted because such rights do not actually exist - the rights portfolio that has apparently been granted turns out to be actually "empty".

Legal situation in Germany

Manifestations

In patent law , an empty transfer can result from the fact that a patent holder grants a patent license to a third party, but the granted patent then expires through revocation upon objection ( Section 21 Patent Act) or through a declaration of invalidity ( Section 22 Patent Act). In both cases, the effects of the patent and its application are deemed not to have occurred from the beginning ( ex tunc ) from the entry into force of the revocation decision or the nullity judgment, i.e. they cease to apply retrospectively and with effect against everyone. In the event that the patent only lapses ex nunc (e.g. as a result of a waiver or late payment of the annual fee), one would not speak of an empty transfer, because the right in these cases very well existed originally. In order to reduce the risk of extinction, patent license agreements often contain non-challenge agreements that at least forbid the licensee to attack the patent by bringing an action for nullity. However, such agreements are often problematic in terms of antitrust law and are regularly to be assessed as inadmissible and ineffective in purchase and license agreements.

If a trademark registration is deleted as a result of invalidity, i.e. due to absolute or relative obstacles to protection ( Sections 50 (1), 51 (1) MarkenG), this deletion has retroactive effect ( Section 52 (2) MarkenG); the constitutive effects of the trademark registration are not considered to have occurred from the start. This can also result in an empty transfer in trademark law. In contrast, the deletion of the trademark due to forfeiture ( Section 52 (1) of the Trademark Act) does not have an ex-tunc effect, but basically only an ex-nunc effect - the original defenselessness is accordingly lacking here.

A copyright license agreement can turn out to be the granting of a mere semblance of (usage) right if the object proves not to be protected by copyright. In contrast to register rights, copyright as a material property right does not require any retroactive regulation; According to German law, it is understood from the nature of copyright law that the protection requirements cannot “cease to exist” after a certain point in time. The situation is basically similar in the area of related property rights ; Even where protection is granted sui generis, as in the case of databases ( Sections 81a ff. UrhG) , these are essentially indefinite legal terms, so that the protection status under ancillary copyright law will not be entirely clear in many cases either.

Legal consequences

General

Even before the modernization of the law of obligations (2002), the Federal Court of Justice - like the Reichsgericht - did not judge license agreements, the underlying legal position of which subsequently ceased to exist ex tunc , as null and void according to Section 306 of the old version of the German Civil Code (BGB) In case of doubt, no liability for the future existence of the property right; after all, the existence of the legal position can only be assumed with certainty in very few cases. In addition to patent law, the relevant case law was also transferred to “unexamined” register rights such as utility and design rights. In contrast, the case law on legal purchases is inconsistent.

Since the modernization of the law of obligations, it has been expressly regulated that a contract aimed at an impossible performance remains effective ( Section 311a (1) BGB). In the opinion of large parts of the literature, the problem of empty transfer under license law has thus been defused; They usually rate empty transfers as cases of initial impossibility, with the consequence that the licensor is released from his obligation to perform according to Section 275 (1) BGB, but the license contract itself remains effective.

copyright

License agreements on bogus rights of use to materially non-copyrightable objects are assessed as described above in case law and literature in accordance with Sections 275 (1), 311a (1) BGB. In principle, the licensor can claim the agreed remuneration as long as the license agreement exists and it provides the licensee with an economic preferential position; The Federal Court of Justice affirms such a preferential position, for example, if the licensee aims less with the license agreement to acquire a legal position than to actually be able to use the licensed object; the license removes an otherwise existing uncertainty about the legality of your own (permission-free) use. This is to be determined in detail by interpreting the declarations of intent aimed at the conclusion of the contract . The only option left to the licensee is to withdraw from the license agreement with effect ex nunc . This is usually done by withdrawing from the contract ( § 323 BGB), whereby a prior deadline is dispensable ( § 326 para. 5 BGB). If the license agreement contains elements of the law of permanent obligations , an extraordinary termination is possible instead of withdrawal . If the licensor was aware of the lack of protectability or should have known about it, he may be liable to pay damages or reimbursement of expenses ( §§ 311a Paragraph 2, 284 BGB).

literature

  • Claus Ahrens: Performance disruptions . In: Christian Berger and Sebastian Wündisch (eds.): Copyright contract law . 2nd Edition. Nomos, Baden-Baden 2015, ISBN 978-3-8487-0580-1 , p. 151-179 .
  • Jan F. Hoffmann: The so-called “empty transfer” in intellectual property law . In: Journal of Intellectual Property . tape 6 , no. 1 , 2014, p. 1-47 , doi : 10.1628 / 186723714X14016951400190 .
  • Albert Preu: The influence of the nullity or non-granting of patents on license agreements . In: Commercial legal protection and copyright . tape 76 , no. 10 , 1974, p. 623-636 .
  • Patrick Zurth: contractual obligations . In: Eva I. Obergfell and Ronny Hauck (eds.): License agreement law . De Gruyter, Berlin 2016, ISBN 978-3-11-034256-7 , pp. 95-115 .

Remarks

  1. ↑ Cf. Hoffmann, The so-called “Empty Transfer” in Immaterialgüterrecht, 2014, op. Cit., P. 1.
  2. ↑ For Germany see about § 2 UrhG, cf. instead of many only Schulze in Dreier / Schulze, Copyright Act, 5th edition 2015, § 2 Rn. 245 ff. In some cases, certain additional formalities have to be fulfilled (but not in the scope of the revised Berne Convention , Art. 5 Para. 2 RBC), only certain types of work are generally protected (such as already in the Statute of Anne and still today in the British Copyright, Section 1 (1) (a) CDPA, see Laddie / Prescott / Vitoria, The Modern Law of Copyright and Designs, Vol. 1, 4th Edition 2011, Section 3.21) or creations must meet certain moral norms ( see Alexandra Sims, The denial of copyright protection on public policy grounds, in: European Intellectual Property Review, 30, No. 5, 2008, pp. 189-198 with evidence from legislation and case law).
  3. ↑ See Schack, Copyright and Copyright Contract Law, 8th edition 2017, Rn. 252; Patry, Patry on Copyright, as of: 3/2016, § 1: 1.
  4. ↑ Keukenschrijver in Busse / Keukenschrijver, Patent Law, 8th edition 2016, §§ 20 marginal no. 6, 21 marginal no. 125 ff.
  5. ↑ See Keukenschrijver in Busse / Keukenschrijver, Patent Law, 7th edition 2013, § 20 Rn. 6th
  6. ↑ See Hoffmann, The so-called “Empty Transfer” in Immaterialgüterrecht, 2014, op. Cit., P. 3.
  7. ↑ Cf. Rogge / Kober-Dehm in Benkard, Patent Law, 11th edition 2015, § 22 marginal no. 39 ff .; Hoffmann, The so-called “empty transfer” in intellectual property law, 2014, op. Cit., P. 34 f.
  8. ↑ For more details, see Keukenschrijver in Busse / Keukenschrijver, Patent Law, 8th edition 2016, § 81 Rn. 87; Rogge / Kober-Dehm in Benkard, Patent Law, 11th edition 2015, § 22 marginal no. 42.
  9. ↑ Cf. Ingerl / Rohnke, Markengesetz, 3rd edition 2010, § 52 Rn. 1, 12; Fezer, Markenrecht, 4th edition 2009, § 52 Rn. 7th
  10. ↑ See Hoffmann, The so-called “Empty Transfer” in Immaterialgüterrecht, 2014, op. Cit., P. 3.
  11. ↑ See Kopacek in Kur / von Bomhard / Albrecht, BeckOK MarkenR, as of February 1, 2016, § 52 Rn. 1; Ingerl / Rohnke, Markengesetz, 3rd edition 2010, § 52 Rn. 5. See, however, restrictive § 52 Abs. 1 S. 2 MarkenG.
  12. ↑ See Schricker / Loewenheim in dies., Copyright, 4th edition 2010, § 31 Rn. 29; Ahrens in Berger / Wündisch, Copyright Contract Law, 2nd edition 2015, § 3 Rn. 5; Hoffmann, The so-called “Empty Transfer” in Intellectual Property Law, 2014, op. Cit., P. 3.
  13. ↑ See also the example above .
  14. ↑ See Scholz in Mestmäcker / Schulze, copyright, status: 55th AL 2011, § 31 marginal no. 20; Ahrens in Berger / Wündisch, Copyright Contract Law, 2nd edition 2015, § 3 Rn. 8th.
  15. ↑ In detail on the extensive case law Hoffmann, The so-called “empty transfer” in Immaterialgüterrecht, 2014, op. Cit., Pp. 4-6.
  16. ↑ See for example BGH, judgment of April 12, 1957, I ZR 1/56 = GRUR 1957, 595, 596 - Transformation table for patent law. Critical to this Maximilian Haedicke, purchase of rights and liability for defects of title, Mohr Siebeck, Tübingen 2003, ISBN 3-16-147975-0 , p. 197 ff .; Hoffmann, The so-called “empty transfer” in intellectual property law, 2014, op. Cit., P. 18 f.
  17. ↑ See illustrative BGH, judgment of September 28, 1976, X ZR 22/75 = GRUR 1977, 107, 108 - advertising mirror; BGH, judgment of July 13, 1977, I ZR 102/75 = GRUR 1978, 308, 308 - menu advertising .
  18. ↑ See Hoffmann, The so-called “Empty Transfer” in Immaterialgüterrecht, 2014, op. Cit., P. 6.
  19. ↑ See for example Wandtke / Grunert in Wandtke / Bullinger, Copyright, 4th ed. 2014, Before §§ 31 ff. Rn. 124 f. In addition, critically and with further evidence on the doctrine of Hoffmann, The so-called “Empty Transfer” in Immaterialgüterrecht, 2014, op. Cit., P. 7.
  20. ↑ See Scholz in Mestmäcker / Schulze, copyright, status: 55th AL 2011, § 31 marginal no. 20; Ahrens in Berger / Wündisch, Copyright Contract Law, 2nd edition 2015, § 3 Rn. 9; Schack, Copyright and Copyright Contract Law, 8th edition 2017, Rn. 1072; Wandtke / Grunert in Wandtke / Bullinger, copyright, 4th edition 2014, before §§ 31 ff. Rn. 124; JB Nordemann in Fromm / Nordemann, copyright , 12th edition. 2018, before §§ 31 ff. UrhG Rn. 171, 174.
  21. ↑ BGH, judgment of February 2, 2012, I ZR 162/09 = BGHZ 192, 285 = GRUR 2012, 910 - Delcantos Hits , Rn. 17th
  22. ↑ See BGH, judgment of February 2, 2012, I ZR 162/09 = BGHZ 192, 285 = GRUR 2012, 910 - Delcantos Hits , Rn. 18th
  23. ↑ See Scholz in Mestmäcker / Schulze, copyright, status: 55th AL 2011, § 31 marginal no. 21st
  24. ↑ See Ahrens in Berger / Wündisch, Copyright Contract Law, 2nd edition 2015, § 3 Rn. 12; Scholz in Mestmäcker / Schulze, copyright, status: 55th AL 2011, § 31 marginal no. 23.
  25. ↑ See Ahrens in Berger / Wündisch, Copyright Contract Law, 2nd edition 2015, § 3 Rn. 14th
  26. ↑ See JB Nordemann in Fromm / Nordemann, Copyright , 12th edition. 2018, Before §§ 31 ff. UrhG Rn. 173; Ahrens in Berger / Wündisch, Copyright Contract Law, 2nd edition 2015, § 3 Rn. 10; Schack, Copyright and Copyright Contract Law, 8th edition 2017, Rn. 1072.