Requirements regarding a second cease and desist declaration after infringement of the first declaration

By signing a cease and desist declaration with a contractual penalty, the infringer disproves the assumption that there is the actual danger of repetition of the infringing act and therefore the necessity for injunctive relief. However, in case of a second, identical, infringement, the owner of the infringed right has a new claim for injunctive relief. In its judgement of 05 December 2014 (6 U 57/14) the Higher Regional Court of Cologne (OLG Köln) held that the assumption of the danger of repetition with regard to the new injunctive relief can only be disproved by signing a second cease and desist declaration with a penalty clause that grants a much higher penalty than the first declaration.    

In the underlying case both the parties are competitors operating online-shops selling cosmetic products. The plaintiff took photos of its products and uploaded those photos on its website. The defendant used one of those pictures taken and uploaded by the plaintiff on its own website. After a receiving a cease and desist letter by the plaintiff, the defendant signed a cease and desist declaration with a contractual penalty. After a shot while, regardless of this declaration, the defendant started using the same picture again. After a further warning letter, the defendant signed a second cease and desist declaration with an identical content to the first. The plaintiff argued that such declaration was insufficient and demanded injunctive relief.

As the plaintiff did not only sue the company infringing its copyright, but also its managing director, the Court set off its reasoning by stating that the BGH’s new test regarding the liability of the managing director in the field of unfair trade competition law (I ZR 242/12; cf. article of 16 January 2015) does not apply in cases of infringement of absolute rights like copyright.

Further, the OLG Köln held for the plaintiff and granted the claim for injunctive relief. It held that for disproving the assumption of a repeated infringement there should not be any doubt with regards to the seriousness of the party signing the cease and desist declaration. According to the OLG, this is not the case if the second declaration not grant any further rights to the owner of the infringed copyright. The Court argued that the defendant already showed that the obligations deriving from the first cease and desist declaration did not prevent him from infringing the copyright a second time. Thus, there is no reason, why a second, identical declaration would have this effect. Hence, it is doubtful whether the defendant showed the necessary seriousness regarding his obligations as derived from the second cease and desist declaration.