Katharina Ernicke

Die Entstehung der dreifachen Schadensberechnung im deutschen Immaterialgüterrecht

Volume 8 () / Issue 1, pp. 84-132 (49)

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This article looks into the origins of the so-called three methods of calculating damages used until today in German intellectual property law in the late 19th and the early 20th centuries, i.e., first, compensation for the pecuniary loss of the right holder (damages in a strict sense) including the loss of profits, second, the surrender of saved expenditures (e.g. a licence fee) of the infringer, third, the surrender of the profits made by the infringer. When the Reichsgericht (the Imperial Supreme Court) introduced these methods of calculating damages in the Ariston case in 1895, each individual method had already been in use in the courts for decades, however, in order only to estimate the pecuniary loss that the right holder had suffered. In other words, until 1895 the holder of a copyright or patent had not been allowed to choose freely between the three methods. In contrast to its previous practice in 1895 the Reichsgericht held that a copyright holder who is entitled to claim damages from the infringer of his right is allowed to choose freely between the three different methods to calculate his damages. The Reichsgericht implemented the two additional claims in the claim for damages arising from the infringements of copyrights and patents, because, according to the then existing copyright and patent laws dating from the 1870's, a right holder could only claim his damages (in a strict sense), when his right had been infringed. Copyrights and patents were merely considered to be exclusive rights to an undisturbed exploitation of the invention or the work. Consequently, the law was to protect the right holder only with respect to his individual acts of exploitation. In late 19th century, Josef Kohler developed the theory of rights to immaterial goods (Immaterialgüterrechte). According to this theory a patent or copyright did not give an exclusive right to exploit an invention or a work only, but an exclusive right to the invention or the work itself that implied a claim to all profits from any exploitation of the immaterial good. In the last decade of the 19th century Kohler's theory became the prevailing opinion in legislation and legal literature. Accordingly, legal literature called for the introduction of a claim for the surrender of profits as legal consequence of infringements of patents and copyrights. The existing patent and copyright law provided a claim for damages only. By implementing the additional claims in the claim for damages under the cloak of calculation methods, the Reichsgericht complied with the request and interpreted patent and copyright law according to the theory of the rights to immaterial goods. However, as to trademark law the Reichsgericht refuted to apply the three methods of calculating damages until the end of the court in 1945. The right holder could only claim the compensation of his pecuniary loss. This is due to that trademarks were not considered to be rights to immaterial goods until mid 20th century. It was not but in the 1960's that the Federal Supreme Court applied the three methods of calculating damages in trademark law, too.

Katharina Ernicke Geboren 1988; Studium der Rechtswissenschaft an der Universität Bayreuth; 2012 Erstes Juristisches Staatsexamen; Mitglied des DFG-Graduiertenkollegs 'Geistiges Eigentum und Gemeinfreiheit'; 2017 Zweites Juristisches Staatsexamen; 2019 Promotion; seit 2018 Rechtsanwältin in München.