13 July 2022
# German Trade Secrets Act: Injunctive relief, § 6; International jurisdiction, Sec. 15 para. 2 sentence 2 German Trade Secrets Act.
# Directive Art. 6 Measures, procedures and remedies, Art. 10 Provisional and preventive measures.
The protection of trade secrets starts with the perpetrator: Anyone who acquires them unlawfully may also neither use nor disclose them. The protection concept also offers help not only against the direct perpetrator, but also against downstream perpetrators who have obtained a trade secret that originates from a previous unlawful acquisition or disclosure by another. However, such downstream perpetrators are only liable if they, at the time of obtaining or disclosing the trade secret, knew or ought to have known of the prior illegal offense, Sec. 4 (3) German Trade Secrets Act, Art. 4 (4) Directive.
From a conceptual and economic point of view, such coverage is very important for effective protection: here you often get backers - such as competitors of the owner of the secret. Their actual exploitation possibilities can exorbitantly multiply the damage already caused by the direct perpetrator. Immediately after discovering the infringement, the owner will therefore have to try preventing such damage from occurring by taking legal action as quickly as possible. The Directive itself does not explicitly specify which courts may be seized for this purpose. If downstream infringers are located abroad – which is quite likely in an increasingly global economy in a digitalized world - legal protection for the owner quickly becomes more complicated. Provisions on international jurisdiction can be found in the Brussels I Regulation No 1215/2012, international treaties or autonomous national provisions.
Section 15 German Trade Secrets Act contains only provisions on local jurisdiction, from which - according to general principles - the international jurisdiction of German courts is to be derived: According to subsection 2, sentence 1, the court in whose district the defendant has its legal residence has exclusive jurisdiction. If, however, the defendant has no such residence in Germany, "only" the court in whose district the tortious act was committed has jurisdiction. The jurisdiction of the courts of the locus delicti is quite common for tort claims. Such concept is similarly contained, among others, in Section 32 of the German Code of Civil Procedure, Section 14 (2) sentence 2 of the German Unfair Competition Act, or Article 7 No. 2 of the Brussels I Regulation. According to general understanding, the locus delicti includes both the place where the perpetrator of the tort has acted and the place where the effect of the tortious act occurred.
The Karlsruhe Higher Regional Court (OLG) has rendered an important decision in this regard on March 31, 2022 (File No. 6 W 15/22): After discovering an infringement, the owner of a trade secret had evidence that the direct perpetrator had not only disclosed a certain file containing the trade secret to employees of his new employer in Germany, but had also sent it by e-mail to an employee of an affiliated company of the employer based in the US. Against the latter, the owner had seized the courts at his own place of business for an injunction by way of interim relief.
The relevant act in this case was the receipt and/or opening of the e-mail with documents attached containing the trade secrets. It was unknown, at which place such act had been committed. According to the owner of the secret, the effect hereof had occurred at his place of business: the protected legal asset was his trade secret located there, the secrecy of which had been violated by the unlawful act of the downstream perpetrator.
According to the OLG Karlsruhe, the effect of the tort is not the "infringement " of the trade secret in terms of an impact on the owner, thus a noticeable impairment of the secret. The effect of the tort is said to be already its acquisition, use or disclosure - regardless of an effect on its owner. According to the court, the effect of the tort occurs at the same place where the perpetrator is acting, i.e. receives or opens the e-mail containing the trade secrets. This alone qualifies as infringement of the prohibition of action. The place where the damage occurred is said to be irrelevant here, since it is not part of the statutory definition of the infringement asserted. For damages claims, it is different in this respect. For determining an infringement pursuant to Sec. 4 German Trade Secrets Act, the location of the protected legal asset is not relevant. The meaning and purpose of the provision is said to cover acts committed within Germany. In the case of acts committed abroad, the infringer could be sued at the place of action or at his legal residence. The fact that Section 15 (2) sentence 2 German Trade Secrets Act provides for exclusive jurisdiction is said to be no contradiction: it only deals with allocating jurisdiction amongst German courts, but does not prevent foreign courts from having jurisdiction.
Hence, the owner of the secret can only seize foreign courts for injunctive relief under Section 6 German Trade Secrets Act against downstream perpetrators who have obtained per e-Mail trade secrets stolen in Germany. The decision is diametrically opposed to a decision of the Higher Regional Court of Düsseldorf on a comparable setting, which, however, had to be assessed under Article 7 No. 2 Brussels Ia Regulation. Stay tuned.