ORIGINAL vs. PLAGIARISM
Three questions to Philip M. Jakober

Anna Moldenhauer: Mr Jakober, when is a work considered plagiarism?

Philip M. Jakober: In order to be able to answer the questions posed about the topic of plagiarism, which is always present for creative professionals, in a useful and understandable way, we first need to be clear about what plagiarism actually is from the point of view of intellectual property law. In order to provide helpful and comprehensible answers to the questions raised about plagiarism, which is an ever-present topic for creative professionals, we first need to set out what plagiarism actually is in terms of intellectual property law. After that, the protective rights (intellectual property), which are regularly applied to design services, can be briefly outlined in order to then be able to answer the questions posed for designers in an informative and helpful manner on this basis.

We speak of plagiarism when there is an infringement of intellectual property. So-called intellectual property is understood to mean all property rights in works created by the human intellect. Such creations generally take the form of two- or three-dimensional designs. These are protected by intellectual property rights (property rights) – above all by copyright law, trademark law and design law/ design patent law – or can be protected by a corresponding register entry. A plagiarism is a plagiarism if such a property right is unlawfully interfered with and thereby infringed. In order to better understand when exactly an unlawful interference with an intellectual property right occurs, it is necessary to briefly discuss the origin and scope of these three intellectual property rights, i.e.., copyright law, trademark law and design/patent law.

Origin of the Property Rights
Copyright protection already arises with the creation of a work (design achievement). In contrast, trademark and design rights arise only upon registration of the brand name (trademark) or design in the respective official trademark or design register on the basis of a specific application (filing of an application). A design achievement that enjoys copyright protection can also be entered in the respective register as a trademark and/or as a design/registered design. These three protective rights (intellectual property rights) can therefore exist alongside each other.

Scope of Property Rights
Copyright law, trademark law and design law have different scopes of protection. In each case, the scope of protection is made up of three factors, namely the territorial, the temporal, and the substantive scope of protection.

1.) Territorial Scope of Protection
The territorial scope of protection of these three property rights is different.
– Copyright: A work protected by copyright (design performance) is automatically protected geographically in all countries in which copyright is enshrined in law.
– Trademark Law & Design Law: The registered design (design) as well as the registered brand (trademark) is only protected in the territories for which the respective protection is applied for and registered.

2.) Temporal Scope of Protection
There is also a not inconsiderable difference in the temporal scope of protection for all three types of property rights.
– Copyright: European copyright law grants authors (and subsequently their legal successors, especially heirs) protection of the work for a period of up to 70 years after the death of the author.
– Trademark law: Trademark law grants protection of the brand / designation (trademark) initially for ten years from the date of application. The protection can be extended indefinitely for a further ten years at a time.
– Design right: The design is initially protected for five years from the date of registration, which can be extended by five years at a time up to a maximum protection period of 25 years.

3.) Substantive Scope of Protection
What the three property rights have in common is that they create a monopoly position for the specific design performance in question. The owner of the property right can, as it were, largely prohibit others from using the design performance without his or her consent. This monopoly position extends not only to the identical design (exact copy) of the design performance, but also to a certain area of imitation/confusion. Thus, trademark law protects against the risk of confusion, copyright law protects against unauthorized adaptations, and design/patent law protects against similarity. For the existence of plagiarism, i.e., an infringement of a property right, it is important that the 1.) temporal as well as 2.) the territorial and 3.) the substantive scope of protection of at least one of the three property rights is infringed. The infringement must also be unlawful, i.e., there must be no contractual permission (e.g., license) and no legal legitimation (e.g., private use) for the use.

This means that whether plagiarism is present must be examined and evaluated in several steps in terms of protection law:

1.) Interference with the Temporal Scope of Protection
Only if the use of the possibly plagiarized performance takes place after the creation of the protection (creation of the original work protected by copyright or registration of the original identification/trademark and/or the original pattern/design) and the respective protection of the original is still valid, is there an interference in terms of time.

2.) Interference with the Territorial Scope of Protection
Whether the possibly plagiarized performance is used within the territory protected for the original (design performance) in a manner relevant under property law is to be judged according to the respective property right. Copyright: The decisive factor is whether there is statutory copyright protection in the country in which the plagiarized work is used, which is the case throughout the EU and in many countries outside the EU. Trademark law & design law: In the case of trademarks and designs, the decisive factor is whether the use of the possibly plagiarized performance takes place in the territory in which a relevant registration right has been recorded for the original.

3.) Interference with the Substantive Scope of Protection
An interference with the scope of protection of the content exists if the possibly plagiarized performance is identical with the protected original or if it is adapted such that there is confusion, similarity or it is otherwise a recreation of the original. In the case of it being identical, there is obviously an encroachment on the scope of protection of the content. On the other hand, it can sometimes be very difficult to assess when the plagiarized work interferes with the protection of the original (design) when it is a matter of recreation of the original, similarity or confusion. There are a large number of different court rulings on the borderline between an infringement of the substantive scope of protection and an authorized use of the protected original design performance, both in copyright law and in trademark law and in design/patent law. In principle, it is permissible to be inspired by existing creative achievements, so that even something borrowing from existing creative achievements does not constitute an infringement of a property right and is not therefore considered plagiarism. However, from a certain degree of adoption of the formative characteristics of the protected original design, this is to be regarded as plagiarized use or plagiarism. This particular degree of adoption is evaluated as follows for these three property rights

Copyright: In copyright law, the borderline between unauthorized (plagiarism) and unauthorized adaptation/use is drawn by the German Federal Court of Justice (BGH), among other things, by the so-called theory of fading/distance. According to the German Federal Court of Justice, the decisive factor is the distance between the new work and the borrowed personal features of the used work. Free use presupposes that, in view of the individual character of the new work, the borrowed personal features of the protected older work fade away. Fading is assumed if the personal features borrowed from the protected older work (original) recede in the new work (possibly plagiarism), so that the older work only appears as an intimation for the newer, independent work. The BGH speaks of the fact that the older work shines through only faintly in the new work. However, authorized use can also arise – even in the case of clear adoptions, particularly in the (external) design – if the new work is so far removed from the borrowed personal features of the older work that it must be regarded as independent in essence (e.g., in the case of a satire/parody). In such a case, the Federal Court of Justice also speaks of the fact that the borrowed individual features of the older work “fade away” in the newer work.

Trademark Law: According to established EU jurisdiction, there is a likelihood of confusion if the public could believe that the goods or services designated by the possibly plagiarized sign originate from the same company or from companies that are closely related in economic terms. The likelihood of confusion in trademark law therefore refers not only to the confusion of the signs (original design versus plagiarism), but also to the confusion of the goods and services for which the trademark was applied for and for which the possibly plagiarized design work is used. The likelihood of confusion under trademark law must be assessed taking into account all the circumstances of the individual case, in particular the interdependence between the similarity of the signs (original design work vs. plagiarism) and the similarity of the goods/services marked with them. Consequently, a lower degree of similarity of the designated goods or services can be compensated for by a higher degree of similarity of the signs (original design work versus plagiarism) and vice versa. When assessing the similarity of two signs (original design versus plagiarism), the signs in question must be compared as a whole (overall impression). In this context, one or more elements of a composite mark may be decisive for the overall impression created in the mind of the relevant section of the public.

Design/Design Patent Law: When assessing whether the plagiarized design work falls within the scope of protection of the original design performance protected under design law, the following standard, which the Federal Court of Justice always uses as a basis for its decisions in such situations, must be observed in particular. The decisive factor is the degree of freedom of design that exists in the development of a design patent. There is therefore an interaction between the scope of design and the scope of protection of the design. A high design density and a low scope of design can lead to a narrow scope of protection of the design with the consequence that even minor design differences are no longer covered by the scope of protection of the original design/registered design. Conversely, a low design density and thus a large scope of design creates a broad scope of protection of the design in terms of content, which may result in even larger design differences being covered by the scope of protection of the original design/design in terms of content.

Conclusion Regarding Interference with the Substantive Scope of Protection: Against this background, the question of whether there is an infringement of the respective substantive scope of protection is always a case-by-case assessment, which is to be evaluated with regard to the very specific original design work in comparison to the possibly plagiarized design work on the basis of the above criteria.

How can designers protect themselves against plagiarism?

Philip M. Jakober: It is almost impossible to prevent plagiarists from adopting original design achievements unasked – especially in the digital world of copy-paste. If an original design work is not made public, the likelihood of adoption is reduced, but then the success and attention, appreciation, the public impact and so on of the original design work is also forfeited. The more successful an original design work is and the more public attention and appreciation it receives, the more it is targeted by imitators. It is therefore essential that designers obtain the broadest possible protection for their original designs before they are published and that they are able to provide evidence of this protection. It may therefore make sense to apply for a trademark (rather expensive) or a design/design patent (less expensive) on the original design work in order to secure additional protection alongside the copyright protection. It is essential that protection for the specific original design performance exists and can be proven in order to be able to take successful action against adoptions, enabling, among other things, these adoptions to be eliminated and generated revenues from the plagiarized uses to be recovered. With regard to copyright protection, it is essential that the designer can prove that the specific original design service originates from him/her and at what time this original design work was done. Some plagiarists, often those who have acted out of ignorance and lack of knowledge, are deterred from making unwanted copies if a © mark or a ® or TM mark is recognizable on the object in question.

At what point does it make sense to seek the advice of a law firm?

Philip M. Jakober: In order to obtain the best possible protection for specific, distinctive design achievements – ideally prior to publication and/or licensing – it is often advisable to obtain advice from an experienced IP law firm. When applying for a trademark and/or a design/pattern, I would highly recommend an experienced IP law firm; that also goes for the proof of copyright protection. If a design work has been copied without authorization, the course of action against the plagiarist or the user of the plagiarized design work should be discussed with an experienced IP law firm before approaching the plagiarist. When examining the specific acts of infringement under intellectual property law and securing evidence for them, but also the possible claims that can be made, an IP law firm is a valuable support in finding the most sensible strategy including the most effective recommendation for action.