Winnetou´s Return at the Intersection of Copyright and Trademark Law
by Carolin Schosser, Tübingen, and Julia Gehrke, Rostock
First published: August 12, 2004
Like the United States Supreme Court, the German Supreme Court has had to
address the issue of surviving rights in a work whose copyright has expired. The
matter in Germany involved the movie "Winnetou´s Return" which became also the
common name for the decision.
II. Facts of the Case
The controversy which led to the German Supreme Courts holding, on January 23, 2003, began with a
suit filed by a book publisher against a producer who called her two-part movie
"Winnetou's Return." Winnetou is a fictional character invented by author Karl
May whose copyright expired in 1963. The plaintiff administers the rights to
May's works. May's novels include Winnetou I, Winnetou II, Winnetou III and
Winnetou´s Heirs. The plaintiff claimed that the defendant misrepresents May's
works as her own. The defendant not only named her movie "Winnetou´s Return,"
she also hired as the main character actor Pierre Brice who had played the role
of Winnetou in plaintiff's movies. The defendant´s film follows Winnetou, an
American Indian and chief of forest Indians. While he died in May's novel, the
movie depicts him as having survived in a coma. The plaintiff alleges that the
new movie infringes upon the trademarked titles of Karl May's novels and argued
that it may cause consumer confusion. The plaintiff also claimed that the
producer violates § 1 of the Unfair Competition Act by marketing Winnetou´s Return
as her own product without providing information about the plaintiff.
III. The Decision of the German Supreme Court
The court of the first instance and the court of appeals had granted the
desired judgment in order to clarify that the publisher owns the titles of May's
novels. They held that the defendant violated § 5 I, III of the
Trademark Statute, which protects the title of works, and § 15 III of the
Trademark Statute by using the title "Winnetou." With regard to copyright
law the court of the first instance and the court of appeals stated that a
formerly copyrighted title could retain protection even if the work had fallen
into the public domain. Therefore, any third party use of these titles requires
clarifying statements in order to distinguish them from the original titles and
to prevent consumer confusion.
The Supreme Court in Karlsruhe held, however, that there was no consumer
confusion in view of the distinctiveness of the new title. The Court noted that
a title has to be individualized relative to other works in order to be found
distinctive. In this case, the Court affirmed a similarity of the titles in view
of a relationship between the books and the movie. But very often, books serve
as masters for the production of movies. The Court noted also that the
comparable strength of the titles is below average because of the fame of the
fictitious figure Winnetou. The name Winnetou leads to a finding of resemblance.
Further, the audience could recognize in the movie hints of the origin of his
character from May's novels.
On the other hand, the Court found the defendant to have added to the
Winnetou features by naming the movie after his "Return." Return does not
possess any resemblance to the titles of the May novels. The Court reasoned that
under these circumstances, confusion is unlikely. Therefore, it denied a claim
for infringement based upon a likelihood of confusion. The Supreme Court noted
that the appellant was unable to support its claim under § 15 III of the
Trademark Act. In the view of the Court, the defendant´s title "Winnetou´s
Return" will not obviously impair the May titles as a matter of unfair
competition because of the low degree of distinctiveness of the titles. In
addition, the plaintiff failed to substantiate a claim under § 3 of the
Unfair Competition Act. The copyright had expired in 1963 and the titles had
fallen into the public domain. Therefore, anybody may use these titles, and the
issue of a risk of consumer confusion, becomes irrelevant. As a result, the
Court confirmed the dismissal.
1.) Copyright Protection of Titles
A title helps an author to identify his work. In many instances the title of
printed material or movies presents a summary of the content. Mostly, the title
serves advertising purposes. The use by an unauthorized third party of the same
title can affect the interests of the creator of the title by causing a risk of
consumer confusion which would impair, in turn, the public interest in the work.
German law offers two possible avenues to protect the title in a work: the
trademark law and the copyright law. In the matter of "Winnetou´s Return," the
plaintiff's copyright expired in 1963; therefore, the novels entered into the
public domain. Copyright protection is applicable only when --unlike here-- the
requirements of § 2 of the Copyright Act are met, see Haberstumpf, Handbuch des
Urheberrechts, 2nd ed. 2000, n. 15.
2.) The Title's Protection by Trademark Law
§ 5 I, III and § 15 I of the Trademark Act protect the titles of movies,
written acts, songs and other works provided that the title is distinguishable
from other works. In the context of titles, § 5 III of the Trademark Act offers
no definition of distinction. The courts interpret this term in different ways.
The protection of a distinguishable title begins with its first use. But if the
title shows a lack of distinction, the protection will depend on the high
profile of the work, see Eisenmann, Gewerblicher Rechtsschutz und Urheberrecht,
4th ed. 2001, n. 317. In this instance, the Supreme Court decided that the
titles "Winnetou I, II, III" etc. needed to be protected and that these titles
retain their original identity.
3.) The Public Domain's Influence on the Protection of Titles (§§ 5, 15
of the Trademark Act; § 2 of the Copyright Act)
The instant decision concludes an old dispute, see Hertin, WRP 2000, 889
(896), of whether the end of the period of protection for the copyright
influences the trademark protection of titles such as a concurrent expiration of
the trademark at the time of expiration of the copyright. The Court emphasized
that the right to titles would survive beyond the copyright term and the time
that the work falls into public domain. The justices explained this result with
the necessary distinction between protection of titles under copyright and
trademark law. The term "work" is used in § 2 II of the Copyright Act and in § 5
III of the Trademark Act. It is more difficult to meet the requirements of § 2
II of the Copyright Act than the requirements of § 5 III of the Trademark Act. A
work as understood by § 5 III of the Trademark Act, does not need to be a work
as defined in § 2 II of the Copyright Act. For this reason, copyright protection
cannot be determinative for the protection under trademark law.
In addition, the justices noted that everyone may use a work in the public
domain with the original title; any user may prohibit another person from using
that title for another work, see Ingerl/Rohnke, Kommentar zum Markengesetz, 2nd
ed 2003, § 5 of the Trademark Act, n. 99. The result is that the original owner
of the expired title retains no right to prevent its use as long as another
person uses the title for a work which is in the public domain. As a result, a
third party may establish uninterrupted own rights, which are rights against a
person who uses the title for another creation.
4.) Other decisions concerning the Risk of Confusion in the
Jurisprudence of the German Supreme Court and the US Supreme Court
In 1959, the Court decided the case "Lilli Marleen." The Court held that
consumers could likely be confused and believe the text of the song "Auf
Wiederseh´n Marleen" had been written by the same author as the song "Lilli
Marleen." The Court was of the opinion that the plaintiff could file suit
pursuant § 1 of the Unfair Competition Act. The name "Marleen" would indicate
the author, see BGH GRUR 1958, 404.
In the same year, the Court decided the case "Sherlock Holmes" concerning the
name of a movie. Author Conan Doyle's heirs claimed that there was confusion
because a film company called their production "Der Mann, der Sherlock Holmes
war." The judges denied that claim and found no likelihood of confusion in view
of the author, see BGHZ 26, 52.
The case Dastar Corporation versus Twentieth Century Fox Film Corporation
illustrates the view adopted by the United States Supreme Court in June 2003.
The Court had to decide what § 43(a)(1)(A) of the Lanham Act, 15
U. S. C. § 1125 means with the "origin" of "goods." The Court explained that
the Lanham Act not only protects the intellectual property but also the producer
of physical goods or a person which offers services. The problem was that Fox
had not renewed the copyright on the television series which expired in 1977. As
a result, the series fell into the public domain. The Court denied any liability
under the Lanham Act because it considered the Dastar production to constitute
Cite as: Schosser / Gehrke, Winnetou's Return at the Intersection of Copyright and Trademark Law, 13 German American Law Journal (August 12, 2004), http://www.amrecht.com/winnetousreturn.shtml
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