Judge Joachim Bornkamm began his career as a young magistrate in the German judicial system before transferring to the Federal Ministry of Justice, where he worked in the copyright department. “From then on I was always linked to intellectual property,” says Mr. Bornkamm. Though he had no IP experience prior to becoming a judge, Mr. Bornkamm then spent more than two decades delving into IP issues, first at the German Court of Appeal, where he focused on IP and competition law, and then at the Federal Court of Justice, Germany’s highest court for civil jurisdiction. The last eight years of his term were spent as Presiding Judge on the Federal Court of Justice. He retired in 2014, and this year will be joining INTA for its Digital World Conference in Brussels, Belgium, from December 1 through December 2 to participate in a panel examining enforcement in the digital age.
Here, Mr. Bornkamm shares some of the challenges he faced as a judge in the early years of the Internet, how he approached the learning curve, and what he thinks about pending legislation that is meant to help fix some of today’s biggest challenges in this realm.
What issues around enforcement in the digital world were most challenging during your time on the Court?
There have been so many cases in the EU on keyword advertising, and the decisions have been quite different among courts in Austria, Germany, France, and the U.K., so that has been quite an interesting evolution. There were lots of discussions among judges about how to approach these cases, and then there was a decision from the European Court of Justice [Google France, Case C-236/08], which didn’t make things much clearer. The very first encounters with the Internet were via domain name cases, however. When I first came on the Court, there was not one decision in this area, and there was a strong opinion that the legislator would have to step in. But then cases came to us which had to be decided without any support by statutory law. Five years later, there was a clearly structured, comprehensive law in place to solve all possible conflicts relating to domain names. It was all created by case law. That was quite a challenge, to shape the law within 12 or 15 decisions, which now comprise the case law in these matters.
It must have been a challenge also because these issues were so new?
Yes. From a technical perspective, it’s very important to go out and discuss developments and learn from industry how things are functioning. You have to understand what’s happening.
How did you do that?
Talking to the industry is difficult; you don’t want to be compromised, so instead we would attend conferences. Judges shouldn’t be too hesitant about talking to people because you’ll never know what’s going on otherwise. With keyword advertising cases, we had to learn the technical background—at first, we knew nothing about the economic importance, why it was so valuable for the advertising industry, or what the dangers were. That, I think, I only learned by dealing with the cases.
Did comparing notes with other judges help?
We have very good contacts with the U.K. judges. They are very interested in our judgments and sometimes they would have them translated. I had good contacts with Austrian colleagues as well, which is good because they write in German, too, and also with the Dutch. The Austrians and Dutch have a similar way of reasoning, whereas it’s more difficult with the French judges, for instance, because they write rather short, formalized judgments and, just like the Court of Justice of the European Union, they only quote their own precedents, but never judgments from other Member States, and the reasoning is very apodictic.
What were some of the most challenging issues you were dealing with toward the end of your term on the Court?
We had a number of decisions on Internet service provider liability dealing with who is responsible for infringement online. We developed a theory that the Internet platform is never the infringer, but an intermediary: an entity that is doing something that constitutes a causal link to the infringement, but is not acting directly. That’s very difficult to make feasible and practical because private use of another’s trademark is not a trademark infringement, and it is extremely hard to tell whether an offer on an Internet platform is made privately or commercially. Hence, it is very difficult to provide injunctive relief in such cases. It’s still an issue, not only in German case law but in other jurisdictions as well.
What legislative or other changes do you think could help judges today?
There’s legislative activity that’s going to happen along the lines of the European Commission’s Digital Agenda, which mostly deals with copyright. I’m not confident that that’s going in the right direction. I think that IP rights will be easier to infringe and there will be no adequate remedy for infringements. Of course, the interest of the Commission is to have a free Digital Single Market and the more traffic the better. That, of course, can be very much against the interests of the rights holders. I’m not always convinced that the Commission strikes the right balance.
At the same time, at first trademark rights holders were very much concerned about keyword advertising, but after a while they saw that there are also advantages when the name of their product is being used as a guide for finding other products, so some of these issues may be resolved by the market eventually.