Under German copyright law, injunctive reliefs are subject to the condition of danger of repetition. Such danger is assumed once a copyright infringement occurred, but it is eliminated, if the infringer signs a declaration of discontinuance with a penalty clause (in German “strafbewehrte Unterlassungerklärung”) within the set deadline. The Higher Regional Court of Hamburg (OLG Hamburg, decision of October 16, 2014 – file number: 5 U 39/13) now held that such declaration of discontinuance is insufficient, if it includes a so-called potestative clause, i.e. the declaration is subject to the claimant proving his authorship.
Claims for injunctive relief depend on fulfilling numerous conditions under German copyright law. For once, to successfully assert a claim for injunctive relief, the injured party first has to notify the infringer by naming the act, which infringes the injured party’s copyrights and demanding that these acts be suspended; see Article 97a of the German Copyright Act (an English translation can be found here). Without such notification, claims for injunctive relief are neither inadmissible in court nor groundless. However, if taken to court without being notified first, the infringer can avoid having to bear costs by immediately acknowledging the cause of action. Against this background, the notification aims at preventing long and extensive lawsuits.
They are prevented, if the infringer signs a declaration of discontinuance with a penalty clause within the set deadline. Signing such declaration excludes the danger of repetition, which is a precondition for the injunctive relief. However, the danger of repetition is not excluded, if the declaration is given under a condition, as it does not satisfy the injured party’s claims. An exception is only made for conditions that only repeat the substantive law (e.g. time limits, if discontinuance can only be claimed for a certain period of time) if industrial property rights are concerned.
The defendant in the case laid before the Higher Regional Court of Hamburg argued this to be the case for potestative clauses as well. Declaring discontinuance under the condition the claimant proved his authorship, he argued, was just repeating the substantive law. After all, the injunctive relief depended on the claimants authorship under substantive law.
The Higher Regional Court of Hamburg dismissed this argument. The potestative clause, they held, questioned the injunctive relief entirely by making the declaration vague and unclear. The claimant does not have to rely on such vague and unclear declaration, as it leaves doubts about the defendant’s seriousness.
The court further questioned, if the exception made for conditions that only repeat the substantive law, can be made for copyrights. Unlike other industrial property rights such as trademarks, copyrights are not registered in Germany. Thus, their existence and term – for example – cannot be looked up in a register. This, however, is the justification for the exception.
The court’s decision clarified that declarations of discontinuance are not sufficient, if they are subject to the condition of the claimant proving his authorship.
It also points to other conditions being inadmissible in such declarations. This however, was only obiter dictum.