The Enforcement Directive and German law: recognised methods for preserving evidence regarding copyright infringement

25 August 2005

Dr Alexander Duisberg, Dr Robert Berengeno


In response to the increase in copyright counterfeiting and piracy cases, the EU has stepped-up its efforts with the Directive 2004/48/EC April 2004 ("Enforcement Directive"). The Enforcement Directive focuses on the preservation of evidence and requires Member States to bring the necessary laws and regulations into force by the end of April 2006. Germany has not yet implemented the Enforcement Directive. However, case law shows that the preservation of evidence in intellectual property cases is already catered for under German law to a reasonable degree.

Court ruling on "Faxkarte"


In the leading copyright case, "Faxkarte" (2 May 2002) (cf. "Faxkarte" BGH NJW-RR 2002, p. 1617 seq.), the Federal Supreme Court ("BGH") defined the scope of inspection in relation to the source code of allegedly infringing software even before the main proceedings commenced. In this case, the Claimant asserted that its software (which is used to control facsimile transmissions) had been illegally copied by the Defendant. The Claimant alleged that the Defendant was producing a practically identical user interface. Further, the employee who had been responsible for the development of the software for the Claimant was now employed by the Defendant.

The lower courts had ruled that the Claimant had failed to prove copyright infringement because he was not able to show that the underlying source codes were identical (at least in part). The BGH overruled this decision. The BGH established that the law must enable the copyright-holder to preserve and demonstrate evidence of possible copyright infringement by suitable procedural measures (including disclosure of the Defendant's source code).

"In-camera procedure"

The BGH suggested that the lower courts should hold a special interlocutory proceeding (so called "in-camera procedure") to balance the interests of all parties involved. Firstly, a neutral expert (bound by confidentiality) should be instructed to inspect and prepare a report on the source code in question. Secondly, after considering the expert's report, the court should decide on whether it is necessary for the source code to be disclosed. On the one hand, this procedure ensured that the Defendant's trade secrets are protected. On the other hand, the Defendant cannot negate access to the source code by relying on trade secret protection.

Legal basis of Section 809 German Civil Code

The BGH's judgment is based on an extensive interpretation of Section 809 of the German Civil Code ("BGB"). This provision provides for inspection of material objects but not source code. However, the BGH allowed inspection of such a component of an object (even if not a material object, but rather source code) where it was essential to determine an alleged infringement. The BGH found that the Claimant therefore has a right to have the Defendant’s source code inspected, provided that there was no other means of establishing whether or not his copyright had been infringed.

This approach is in line with Art. 7 para. 1 Enforcement Directive where the "inspection may include detailed descriptions, the seizure of the infringing goods, and in appropriate cases, materials and implements used in the production and/or distribution of these goods and the documents relating thereto."

Notably, in previous German cases the BGH had elected to interpret Section 809 much more narrowly. Whilst the BGH’s decision in the Faxkarte case has generally lowered the requirements for the inspection of source codes, the BGH still stressed that the Defendant's right to have his trade secrets protected must be treated with the utmost respect, see also Art. 3 para. 2 Enforcement Directive which addresses the Defendant's protective interests.


German law already goes some way towards compliance with the Enforcement Directive. Nevertheless, it is clear – and this has been confirmed by the Ministry of Justice on an informal basis – that the German legislator will still need to take additional measures to implement the Enforcement Directive by the end of the April 2006.