(Sept. 4, 2008) On July 7, 2008, the German legislature adopted the Act on Improving the Enforcement of Intellectual Property Rights (Gesetz, Bundesgesetzblatt (BGBl) 2008 I at 1191), which transposes the European Union Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council on the Enforcement of Intellectual Property Rights, Apr. 29, 2004, OFFICIAL JOURNAL OF THE EUROPEAN UNION (L157) 45), available at http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:32004L0048:EN:NOT). The Directive requires the member states to harmonize the measures, remedies, and procedures to protect against infringements of intellectual property rights and is designed in particular to combat piracy and counterfeiting. The German Act lives up to this mandate by providing virtually identical measures and remedies for infringements of patents, utility models, trademarks, copyrights, plant varieties, and semiconductor products by amending the respective acts.
Article 13 of the Directive leaves the member states much leeway in the shaping of damages, by referring to the payment of damages “appropriate to the actual prejudice suffered” – which should take into account aspects such as losses suffered by the injured party and even “moral prejudice” caused by the infringement – while also allowing for the awarding of payments equal to royalties that would have been due for the infringement. The German Act adopts all these remedies and gives the injured party a right to choose among them, while not allowing their cumulative application. These principles had already been developed in German case law before the Directive was adopted (V. Kitz, Rechtsdurchsetzung im geistigen Eigentum, 61 NEUE JURISTISCHE WOCHENSHRIFT 2374 (2008)). In keeping with European and German public policy, however, neither the Directive nor the German Act allow for the awarding of punitive damages.
Both the Directive and the German legislation introduce strong information rights to uncover infringements. In the recent German Act, the German Copyright Act was amended to grant information rights not only against infringers and users of their products, but against providers of services that facilitated the infringement (Urhebergesetz, Sept. 9, 1965, BGBl I at 1273, as last amended by Gesetz, BGBl I at 1191, §101). While these information rights appear to be especially well-suited to discover Internet infringements, their effectiveness may be somewhat hampered by privacy protections afforded under both German and European Union law (Kitz, supra).