Under the German Act on the Protection of Trade Secret (GeschGehG), only information that is not generally known or readily accessible can constitute a trade secret. This requirement roughly corresponds to the criterion of “(lack of) public knowledge” that case law had developed regarding Section 17 of the Unfair Competition Act (UWG) in its previous version. How this new legal element is to be interpreted in concrete terms remains largely unclear at this time.
Trade show presentation and YouTube video
In a ruling dated July 21, 2021 (Case No. 9 U 1382/13), the Higher Regional Court of Koblenz held that the depiction of an object in a YouTube video does not render the trade secrets embodied in that oöbject public knowledge. The Higher Regional Court of Düsseldorf appears to apply a different standard of assessment and, in its ruling of February 4, 2021 (Case No. 15 U 37/20), concludes that the presentation of a product at a trade show leads to the trade secrets embodied therein becoming public knowledge, although the provisions of the GeschGehG were not yet applicable in this regard.
Düsseldorf Higher Regional Court, 15 U 37/20: Trade show presentation leads to public knowledge
The Düsseldorf Higher Regional Court had to decide whether the information regarding the arrangement of drill holes in a floating bushing should still be classified as “know-how” within the meaning of a “know-how” protection agreement concluded between the parties, despite the product having been presented at a trade show in 2015. In the absence of specific contractual provisions, the court applied the standards developed in connection with Section 17 of the Unfair Competition Act (UWG) (old version) and stated:
Information is considered public knowledge if the fact is generally known […]. This is the case when the information in question – regardless of who discloses it, whether with or without the approval of the business owner – is made generally known and it can be expected that interested parties will become aware of it […]. This is presumed to be the case when the information is published in generally accessible media, such as (specialized) journals and reference books, on the Internet, or in databases […]. Furthermore, presentation at trade shows, promotional events, and in advertising brochures also leads to general public awareness […].
On this basis, the court assesses the depiction of the floating bushing in a product brochure and its presentation at a leading trade fair in 2015. With the exception of two specifications regarding the diameter of a large and a small bore, the design features of the floating bushing were made apparent by the product brochure. The floating bushing was displayed on a pedestal and was immediately accessible to every visitor. There were no barriers or other protective measures in place. Even if not all technical details were immediately apparent, a reasonable visitor could have drawn conclusions about the overall arrangement of the holes from the available information. Thus, according to the Senate, the information could no longer constitute know-how protected in favor of the original owner.
Higher Regional Court of Koblenz, 9 U 1382/13: Not common knowledge despite internet access (?)
The legal dispute before the Higher Regional Court of Koblenz concerned the alleged imitation of technical features of a hollow-fiber membrane spinning system, in particular its nozzle blocks. The defendants argued, among other things, that the plaintiff had published a promotional video on its company’s YouTube channel in which both the schematic representation of the interior of the spinning nozzle and the underside of the nozzle block were visible. Furthermore, an earlier decision by the Higher Regional Court of Koblenz, which contained additional design drawings and technical information, had been available for years in the beck-online database. According to the defendants, this information would have allowed a person skilled in the art to draw clear conclusions regarding the specific technical design of the nozzle blocks.
In its judgment of July 21, 2021, the Higher Regional Court held that the availability of this information on beck-online and YouTube did not preclude protection as a trade secret. Pursuant to Section 2 no. 1 a) of the GeschGehG, information qualifies as a trade secret only if it is not generally known or readily accessible – either in its entirety or in the precise arrangement and composition of its components – to persons in the circles who customarily deal with this type of information (emphasis in the original). In the case at hand, however, it was not argued that the relevant professional circles are specifically users of the legal database beck-online. Nor does the availability of the YouTube video result in a loss of trade secret protection.
The Higher Regional Court’s view is noteworthy but ultimately unconvincing. It is not apparent that the legislature intended to impose significantly stricter requirements for demonstrating public knowledge when it introduced the GeschGehG. Just as under the previous version of Section 17 of the Unfair Competition Act (UWG), it should suffice that a knowledgeable observer has the opportunity to obtain technical information by examining the product or its illustration. In the case of a YouTube video posted on the company’s own channel, this requirement should not really be in doubt. Regardless, there is clearly a lack of adequate confidentiality measures with respect to such information within the meaning of Section 2 no. 1 b) of the GeschGehG.
Practical tip
Demonstrating that something is “obvious” or “generally known” requires a precise and concrete presentation of the facts. The lenient approach taken by the Higher Regional Court of Koblenz – which rejects the notion of general public knowledge despite internet publication, should not lull secret holders into a false sense of security. Case law from the highest courts regarding the interpretation of the criterion of “general public knowledge” is still pending. Furthermore, information accessible on the internet is clearly not subject to adequate confidentiality measures.