A German Tale of Two Marks (neither Karl nor Groucho)
This post was written by Katharina Weimar and Joe Rosenbaum.
In 1904, the already acclaimed American novelist Jack London published The Sea-Wolf, a dramatic and powerful adventure story about a sea captain and the survivors he has rescued after an ocean collision. But then, that’s not news is it? What is news is the fact that two film producers in Germany, almost at the same time, recently produced films based on that novel, AND both used the German translation “Der Seewolf” as the title of their films. Really? Both of them? Yes, really.
Well it turns out that one of these producers had previously created a television production of Der Seewolf back in 1971. So that producer (we’ll call him Number 1) went to court in Munich demanding that the other producer (we’ll call him Number 2) relinquish the title and recognize the priority of the title in Number 1 - based on his earlier work and concerning the use of that name for his new film. But, as they say, the plot thickens. The defendant - producer Number 2 - had also applied for a German trademark registration after announcing his production in the film press in Germany.
Much like the psychological drama unfolding in the Jack London novel, the court decided that Number 2 must withdraw the trademark application and is prohibited from distributing the film using the name “Der Seewolf” or “Seewolf,” because Number 1 already has priority. You see, the 1971 work continues to enjoy re-runs and re-broadcasts so that, according to the court, copyright protection of the title “Der Seewolf” continues to exist for the benefit of Number 1. Not only that, but since the titles were identical and were based on the same novel, the court of course also concluded that there is a direct and clear likelihood of confusion - a key ingredient for a claim of trademark infringement. Following that logic, you might think that the requirements for both a copyright and a trademark infringement claim exist, so Number 2 is prohibited from using the title. However, quite unhappy about this state of affairs, Number 2 decided to appeal the ruling.
Now this is where truth becomes stranger than the underlying fiction, even though justice may well have been served in both the Jack London novel and this tale of two producers. The Higher Regional Court of Munich reversed the decision of the lower court, deciding that Number 2 is absolutely still entitled to publicize and distribute a cinematographic work using the title “Der Seewolf” or “Seewolf.” The court did not dispute that Number 1, as the legitimate user of the title dating back to 1971, had the right to bring an action against Number 2. You see in Germany, any legitimate user of the title of a work has the right to assert a claim to protect that title. Even further, the High Court agreed there indeed was a strong risk of confusion between the works given the 1971 title “Der Seewolf” and the new title “Der Seewolf” or “Seewolf,” since they were identical. So far so good.
BUT, the High Court didn’t stop there. You see, also under § 23, No. 2 of the German Trademark Act, the legitimate owner or user of a business mark (the title of a cinematographic work falls within the definition of business marks) cannot prohibit anyone else from also using an identical mark, as long as is it is used to describe the characteristics or properties of the goods or services (and, of course, unless there is some moral or public policy reason to create a restriction). Well, as you might have guessed, the Higher Court in Munich found no moral or public policy issue, AND it was their opinion that the titles were both descriptive: both films were adaptations of the same Jack London novel, The Sea-Wolf, and both titles were simply descriptive translations derived from that work.
So we end up with the curious situation (and result) in which it is true that Number 1 has the right to claim protection for the title “Der Seewolf” as an adaptation of the original Jack London novel based on the 1971 use of that title, but Number 1 also has to accept the legal conclusion that the exact same title may be used by anyone else producing an adaptation of that same novel!
What can we learn from this? First, intellectual property laws are different around the world, so don’t assume rights or protections without consulting legal experts and advisors who appreciate and understand the differences. Second, always remember that intellectual property, by definition, is a creature of specific laws and statutes. As with patents, rights in trademarks and copyright arise, and are interpreted and enforced under the specific laws of the jurisdiction involved. For example, aspirin is no longer a protected trademark in the United States, the United Kingdom and many other countries – the victim of “genericide.” But “Aspirin” remains a protected trademark in Germany, Canada and a host of other countries. Further, copyright laws protect against copying, not original creation, so two or more individuals, independently creating two identical works (without copying), would each be entitled to copyright protection, with neither able to stop the other – whether for paintings, novels or computer software programs. Besides, copyright protection is not forever. Jack London’s rights in The Sea Wolf copyright expired and his novel is publicly available. By adapting, translating or using a descriptive name to refer to these films, neither of the producers was able to claim exclusive rights to the use of the title, any more than Jack London’s heirs could claim the copyright still existed.
So when it comes to intellectual property rights, don’t assume, and do consult an expert. If you want to know more, just contact Katharina Weimer in Reed Smith’s Munich office or Joseph I. (“Joe”) Rosenbaum in New York, or any of the Reed Smith lawyers you work with. We are happy to help.
