“Der Novembermann” – An overview of the fee law principles and the relevance of the decision for practice

In the following, we provide a brief overview of the fee law principles and the decision “Der Novembermann” and then set out the criteria to be used to determine whether an overall value of the claim must be formed.

We would like to take this opportunity to thank Mathis Uhl, who joined us during his legal clerkship at HARTE-BAVENDAMM, for his significant contribution and his great support with this article.

1. Fee law principles: value of the claim, overall value of the claim and “the same matter” within the meaning of the RVG

Pursuant to Section 2 of the Acton the Remuneration of Lawyers (RVG), the amount of the warning fee is based on the value of the claim, i.e. the value of the subject of the lawyer’s professional activities.

If several warnings are issued to different addressees for similar infringements, the question arises as to how this value of the claim is to be calculated. This depends on whether the respective warning constellation concerns the same matter.

This is because, according to Section 15 (2) RVG, the lawyer may only claim the fees once in the same matter, whereby, according to Section 22 (1) RVG, the values of several claims in the same matter must in turn be added together (so-called overall value of the claim).

The matter must therefore be distinguished from the subject of the lawyer’s professional activities. The former comprises the entire transaction that the lawyer is to handle for the client, while the latter refers to the specific right or legal relationship to which the lawyer’s activity relates. In this respect, a matter may comprise several subjects. It determines the framework within which the lawyer acts.

Since the fee amount increases degressively according to the concept of the RVG, a broad understanding of “the same matter” leads to lower warning fees in the case of multiple, similar warning letters. This is because the degressive increase in the fee amount has the effect that a fee calculated on the basis of the overall value of the claim is lower than the sum of the fees for the individual values of the claims would be.

To illustrate this, let’s imagine that almost identical warning letters with a value of the claim of 50,000 EUR each have been issued to five different retailers for a trademark infringement in close temporal proximity. If different matters were assumed, this would lead to five 1.3 general fees from an value of the claim of 50,000 EUR (= 1,662.70 EUR) i.e. total legal fees of 8,313.50 EUR (plus flat-rate expenses and VAT). If, on the other hand, the same matter were assumed, the fees would only amount to 3,227.90 EUR (plus flat-rate expenses and VAT) for a one-off 1.3 fee from an overall value of the claim of 250,000 EUR (5 times 50,000 EUR). A substantial difference of 5,085.6 EUR. With ten warning letters, the difference in fees would already amount to a total of 12,026.3 EUR (ten 1.3 general fees from an object value of 50,000 EUR, i.e. a total of 16,627 EUR vs. one 1.3 fee from an overall value of the claim of 500,000 EUR, i.e. 4600.7 EUR). As the number of warnings increases, the difference in fees becomes increasingly higher due to the degressive fee model.

In this constellation, warning parties obviously have an interest in calculating the general fees on the basis of individual values of the claim, while warned parties will prefer to calculate only one general fee on the basis of an overall value of the claim.

The question of when the same matter must be assumed therefore has significant importance for the amount of the warning costs. However, despite its importance, the term “the same matter” is not defined in the RVG. In Sections 16 et seqq., the RVG deals with specific individual cases, but does not provide any further criteria for determining “the same matter” in general. Its definition is therefore left to the practitioner and case law.

According to BGH case law, legal services generally fall under to the same matter if

• they are based on a the same mandate
• their content and purpose coincide to such an extent that a uniform framework for the lawyer’s activities can be assumed and
• there is an internal connection between them

(see BGH GRUR-RR 2010, 269,271 para. 23 – Rosenkrieg; GRUR-RR 2012, 90, 92 para. 22 – Rosenkrieg II; BGH GRUR 2019, 1044, 1046 para. 24 – Der Novembermann).

2. The decision “Der Novembermann” of the BGH

Until the decision “TheNovembermann” of the BGH of 6 June 2019 (I ZR 150/18), practitioners in the IP field usually did not consider similar acts of infringement by several different infringers to be the same matter within the meaning of Section 15 (2) RVG.

In its decision “Der Novembermann”, the BGH recently took a different view and found that several warning letters for copyright infringements, even against different companies that are not legally or economically affiliated, are to be considered as the same matter under fee law under certain conditions. This case law is also transferable to other areas ofIP law (see Büscher, GRUR 2021, 162; Brau, GRUR-Prax 2022, 501).

In the case to be decided by the BGH, the plaintiff was the owner of exclusive usage rights to three films, including a film with the title “Der Novembermann”, for which it had granted license rights to various companies. After the plaintiff terminated the existing license agreements, they issued warning letters to a total of 13 to companies and individuals between August 2016 and September 2017 for the continued distribution of the films. In addition to ceasing the sale of the DVDs, the plaintiff also demanded reimbursement of the costs incurred for the warning letters, charging a 1.3 general fee from an value of claim of 15,000 EUR per infringement. For the defendant, this resulted in warning costs of 1,465.06 EUR plus interest.

After the first instance had upheld the claim, the BGH confirmed the decision of the second instance, which reduced the amount to be reimbursed to 341.56 EUR plus interest. The plaintiff was generally entitled to reimbursement of the legal fees. However, the eleven warning letters issued in December 2016 and January 2017 were connected in terms of time and subject matter in such a way that they were the same matter under fee law. On the other hand, the two warning letters issued in August 2016and September 2017 were not part of the same matter under fee law due to the lack of a temporal connection. The plaintiff was therefore only entitled to reimbursement of the pro rata legal fees from an overall value of the claim.

Despite the legal and economic independence of the warned parties and the time gap between the warning letters, the BGH saw an internal connection between the warning letters issued in December 2016 and January 2017. The wording of the warning letters was almost identical, they were directed against the unlawful distribution of the same films after termination of the license agreements with the sublicensor and were issued in the same period of time.

The decisive factor is therefore whether the lawyer can deal with the subjects of their professional activity by means of a uniform approach due to the factual and temporal connection. An internal connection and thus a uniform matter may be lacking if there is a large time interval between the individual warning letters (an interval of two months was not sufficient for this, whereas an interval of four months was).

The BGH found that the fact that the mandate on which the warning letters were based was successively expanded did not preclude the assumption of a uniform framework for the lawyer’s activities. The plaintiff had initially instructed its lawyers to search for infringements and infringers and only decided to issue further warnings after the new results of the investigation had been presented. The BGH considered this to be a successively expanded mandate within a uniform framework (see BGH GRUR 2019, 1044 para. 28 – Der Novembermann, with further references).

Following this decision, the Regional Court of Düsseldorf came to the conclusion that the principles established in “Der Novembermann” also apply if several trade levels in a distribution chain are affected. Even in such a case, several warning letters against economically and legally unrelated companies can constitute the same matter if they pursue the common goal of preventing the offer and distribution of infringing goods and thus similar infringements at different levels of trade (see LG Düsseldorf GRUR-RS2021, 14805 para. 44, 45 – Burberry-Check).

3. Practical relevance

The decision “Der Novembermann” cannot be applied generally to all cases of parallel warning letters for similar infringements by different companies. It must always be examined in each individual case whether the above-mentioned requirements for the assumption of the same matter are met, i.e. in particular an internal connection between the warning letters and a uniform framework for the lawyer’s activities.

In summary, in the case of parallel warning letters against several infringers, the same matter has to be assumed, if the following conditions are met:

• (Almost) identical warning letters due to similar legal infringements: Different legal infringements lead to different matters.
• Same objective: The warning letters must pursue the same objective.
• The same IP right: The warnings must relate to the same IP right.
• ‍Close temporal connection: The warnings must be closely connected in time if they are issued successively (a period of two months seems to be sufficient, but four months is no longer sufficient according to prevailing case law)

It should also be noted that a different reaction of the warned parties can subsequently turn an originally uniform matter into several matters if separate, differentiated handling by the lawyer is therefore necessary (see BGH GRUR-RR 2011, 389 para. 10 - www.bild.de; BGH GRUR-RR 2012, 90 para. 25 - Rosenkrieg II ). If, for example, individual meetings are held with the warned parties and possibly even different negotiation results are achieved, it can no longer be assumed that there is a uniform framework for the lawyer’s activities and thus a single matter (see BGH NJW 2005, 2927, 2928). In this case, there are (subsequently created) different matters under fee law. However, the emergence of different matters can only be assumed if the warned parties actually take different positions on the matter (e.g. one warned party submits a cease-and-desist declaration, while another negotiates a conversion period). In contrast, the granting of an extension of the deadline as such or the submission of a modified cease-and-desist declaration, insofar as it does not involve any additional examination effort, is not sufficient and therefore does not lead to different matters (see OLG Frankfurt a. M. BeckRS 2021, 34745 para. 57).

Apart from the question as to which cases constitute a single matter according to the decision “Der Novembermann” and thus an overall value of the claim has to be calculated, this decision poses further problems for practitioners. For example, the question arises as to how the claim for reimbursement of the warning costs should be asserted if the amount of the value of the claim cannot yet been determined and whether special information or reimbursement obligations exist. We will address these issues in another blog post.