BGH: hyperlinks, freedom of expression and copyright infringing software

Already decided on 14 October 2010, even though only published in its entirety now, has been a decision (case reference: I ZR 191/08; 'AnyDVD') by the German Federal Supreme Court (Bundesgerichtshof) concerning a lawsuit brought by several music companies against Heise Verlag, an online publisher specializing in IT and computer news. The claimaint's took objection to reports published on Heise’s website which included links to a third party website (SlySoft) that offered software that allowed circumventing copy protection for DVDs.

While the lower courts, the Regional and Higher Courts of Munich I, had held that Heise's online reports were itself copyright infringing, the First Civil Senate of the Bundesgerichtshof took the view that adding the links on Heise's website which linked to SlySoft's website (where SlySoft offered copyright right infringing software) was covered by the constitutional right of freedom of press and freedom of opinion under Article 5(1) German Constitution (Grundgesetz). Further, in cases where the actual text of a report was protected by freedom of expression and freedom of press, the included links would also be afforded equal protection. The judges stressed that the purpose of the links on Heise's website was not only to technically facilitate to access the SlySoft's website but the links were to be regarded as part of Heise's reporting because they were complementing and 'backing up' what was reported with additional information. The fact that the Heise was aware that the software offered on SlySoft's website was copyright infringing did not change this and so could not be blamed on Heise since the information interest of the general public was of higher importance.

The judges also argued that reports on illegal conduct (here: that SlySoft offering copyright infringing software) could be of particular public information interest. It was also important that Heise had clearly indicated in its report that SlySoft's software was copyright infringing. In this context the Bundesgerichtshof explained that protection of Article 5(1) Grundgesetz encompassed freedom of expression and freedom of media in all its aspects and was thus not limited to the content of the report, but it also included the (outer) form of this reporting. As such, it was up to Heise itself, as the subject entitled to the fundamental right under Article 5(1) Grundgesetz, to decide which form of presentation it chose for its reporting. This also encompassed the decision whether additional information about a company and its products (here: SlySoft) should be expressly used in the report and it could include the decision to publish links to SlySoft's website.

The court, inter alia, based its decision on Article 95 a German Copyright Act which is based on Article 6 of the Copyright Directive (Directive 2001/29/EC) (“Obligations as to technological measures”). Intriguingly, the Bundesgerichtshof interpreted Article 95 a German Copyright Act not only in the light of Article 5(1) Grundgesetz but also in light of Article 11 (1) of the Charter of Fundamental Rights of the European Union which stipulates as follows “(e)veryone has the right to freedom of expression. This right shall include freedom to hold opinions and to receive and impart information and ideas without interference by public authority and regardless of frontiers.” Article 11 (2) provides that “(t)he freedom and pluralism of the media shall be respected.” Referring to the ECJ's precedent in Connolly/Commission (C-274/99 P), the Bundesgerichtshof also stressed that content and quality of a report are irrelevant when it comes to the application of Article 11 of the Charter of Fundamental Rights of the European Union.

This interesting decision can be retrieved from the Bundesgerichtshof's website here (in German).

ICE, ICE.... - the BGH and the citation of a design

Those of our readers that have been travelling by train in Germany may be familiar with the Intercity-Express or ICE high speed trains. The German Federal Supreme Court (Bundesgerichtshof) last week had to decide on a design right case relating to the depiction of an ICE type 3 (see left) train in a marketing brochure. On 7 April 2011 the Bundesgerichtshof held that depictions of designs are not permissible under § 40 (3) of the German Design Act (GeschMG) if they are merely used for advertising purposes (case reference I ZR 56/09). The claimant, Fraunhofer-Gesellschaft, had been seeking a declaratory judgement that German railway company Deutsche Bahn AG had no claims against it for having used photographs of ICE trains in an advertising brochure published by Fraunhofer-Gesellschaft. The relevant provision in the German Design Act § 40 (3) of the German Design Act (GeschMG) relating to the right of citation provides as follows: the rights conferred by a design right can not be exercised in respect of acts of reproduction for the purposes of making citations or for teaching, provided that such acts are compatible with fair trade practice and do not unduly prejudice the normal exploitation of the design, and that the source is mentioned. By way of background: § 40 (3) GeschMG is shaped according to Article 13 (1)(c) of the Design Directive 98/71/EC and an equivalent provision can also be found in Article 20 (1) (c) of the Design Regulation (EC) 6/2002 as regards to Community Designs.

The Bundesgerichtshof took the view that § 40 (3) GeschMG required that there was a connection between the depicted design and the operations of Fraunhofer-Gesellschaft and that the photographs of the ICE trains that were used in the brochure had served as a quotation for statements made by Fraunhofer-Gesellschaft. Pure marketing however did not meet the requirements of a citation in the sense of § 40 (3) GeschMG. The information provided by the claimant in its brochure referred to the ICE train type 1 but a photograph of an ICE train type 3 was used. Consequently, the Bundesgerichtshof found that the depiction of the ICE train type 3 had only served marketing purposes and could not be seen as a permissible citation that served to illustrate the operations of the claimant.


The court’s press release relating to this case can be found here (in German). The moral of this story according to Merpel is rather more simplistic: use a photo of ICE type 1 when you are writing about ICE type 1. Use a photo of ICE type 3 when writing about ICE type 3, otherwise, do not try to invoke § 40 (3) GeschMG.

German Federal Patent Court decides in Neuschwanstein castle trade mark dispute

News in the trade mark dispute surrounding the German castle Neuschwanstein (see laden ladenfam's report here) .

By way of reminder: the Bavarian Castle Department (which is part of the Bavarian state government)has the task of regulating the souvenir trade connected to the famous Bavarian fairy tale castle and its surrounding area and registered the word mark "Neuschwanstein" in 2005. The German Federal Association Bundesverband Souvenir Geschenke Ehrenpreise e.V. (BSGE) - which describes itself as "a network of producers, wholesalers, exporters, retailers and trade representatives from the souvenir, sports clubs, trophy and festive items (industry)" - objected to this. Arguing that the Bavarian Castle Department's trade mark registration was akin to "censorship" of the Neuschwanstein souvenir trade, the BSGE filed for an invalidity of this mark at the DPMA. The DPMA (see IPKat report here) decided in the BSGE's favour and invalidated the mark, according to media reports, the DPMA found that "Neuschwanstein" was an "often used", non-distinctive term" and thus not capable to indicate trade origin of the goods and services marketed under the sign.

The German Federal Patent Court has now decided this matter and issued a press release confirming that it has upheld the DPMA's decision to cancel the "Neuschwanstein" trade mark. In its press release of 8 February 2011 concerning "Neuschwanstein" (case reference 25 W (pat) 182/09 of 4 February 2011) the court has provided the following information which this Kat has translated and summarised below.

The sign "Neuschwanstein“had been registered as a trade mark in 2005 for a multitude of goods and services. On 20 November 2007 the German Patent and Trademark Office decided on an invalidity application concerning this mark holding that the mark should be invalidated because it fell foul of § 8 (2) No. 1 German Trademarks Act (MarkenG) since it had lacked distinctiveness at the time of registration and still lacked distinctiveness now.

Upon appeal, the 25th Senate of the German Federal Patent Court upheld this decision and, inter alia, decided that the term "Neuschwanstein" described the castle Neuschwanstein which was commissioned by Kind Ludwig II in the municipality of Schwangau in the state of Bavaria with the castle being a world famous landmark of high (cultural-)historical importance.

As regards to services such as "travel services; catering/hospitality services and accommodation services", the term "Neuschwanstein" does not qualify for trade mark registration since the term could be seen as describing the characteristics of the services in the sense of § 8 (2) No. 2 MarkenG, that is their intended purpose or the geographical origin of rendering the services.

Designations of well-known tourist attractions such as "Neuschwanstein" furthermore lack the necessary distinctiveness under § 8 (2) No. 1 MarkenG concerning such goods that are usually offered in the proximity of such tourist destinations as souvenir articles or to satisfy the demands of tourist with regard to foods, drinks or further articles. This equally applies to services that are usually rendered and offered in a close proximity or in the context of such tourist attractions.

The court stressed that the term "Neuschwanstein" not only described a tourist sight but also a building that is a significant part of the national cultural heritage. The judges further held that designations of cultural sights that are of high importance and/or that are part of the national or international world cultural heritage are common property and as such cannot be monopolised or commercialised through trade mark laws. The court added that these sights usually are not distinctive enough for trade mark registration in the sense of § 8 (2) No. 1 MarkenG, even without a factual reference to claimed goods and services

Given that several aspects of this decision have fundamental importance, the Federal Patent Court allowed a further (partial) appeal to the German Federal Supreme Court (Bundesgerichtshof). On balance, this Kat believes that the court got it right but cannot help but thinking that the general idea of wanting to control the souvenir output surrounding the Neuschwanstein castle is not a bad one. How about having some kind of licensing committee when it comes to merchandise of such historical sights. Merpel, who likes her newly bought Neuschwanstein t-shirt (left), disagrees and thinks that this German Kat is nothing but a snob.... why not let the tourists decide what the want to spend their money on, rather than the Bavarian state?

Case reference : Bundespatentgericht, 25 W (pat) 182/09, delivered on 4 February 2011.

The court's press release can be found here.
The decision can already be retrieved in its entirety (German, PDF) by clicking here.

Atari vs. RapidShare: Higher Regional Court of Düsseldorf decides

Several German websites report (here, here, here) that Swiss file- and share-hosting service RapidShare has been victiorious in a copyright infringement lawsuit brought by video game maker Atari before the Higher Regional Court of Düsseldorf concerning illegal copies of the game "Alone in the Dark" which had been shared on RapidShare's site. Case reference: OLG Düsseldorf, I-20 U 59/10 of 21 December 2010). The appeal decision comes after the Regional Court of Düsseldorf had recently decided in Atari's favour. On appeal, the Higher Regional Court of Düsseldorf has now overturned this decision holding in RapidShare's favour.

What had happened? The claimant in the proceedings, Atari, had taken objection to the distribution of the game via the RapidShare site, and argued that the hosting service had a legal responsibility to block downloads. Ataria had, inter alia, demanded that the RapidShare had a duty to automatically retrieve, filter and delete all files which included certain keywords. RapidShare responded by, inter alia, arguing that this would be taking its duties too far and could lead to a deletion of perfectly legal files which just happened to include the respective keywords.

The Higher Regional court appears to have been swayed by RapidShare's arguments. While the court agreed that there was copyright infringement under Article 97 German Copyright Act, it nonetheless found that a giving RapidShare a duty to filter the content under "disturbance liability" principles ("Störerhaftung") would be “arbitrary” since a keyword was not compelling evidence that a file included infringing material. The court apparently also found that a manual check of potentially infringing files was too work intensive to be feasible.

The court allowed a further appeal since the question as to what duties a file sharing service had to fulfil in order not to be caught by "disturbance liability" had yet to be decided by the Bundesgerichtshof.

Helpfully, openjur.de has published the court's decision here. The decision certainly warrants some closer scrutiny and it will be interesting to see whether this matter will make its way to the Bundesgerichtshof.

Merpel wonders whether other Higher Regional Courts, such as the OLG Hamburg, may have decided this case differently but has, shall we say, an inkling that the Bundesgerichtshof would uphold the Higher Regional Court's decision if Atari decided to file a further appeal.

The BGH and the photographs of Prussian castles

laden ladenfam almost missed these three "copyright-related" cases, which were decided by 5th Civil senate of German Bundesgerichtshof, which is the senate that is, inter alia, responsible for property law.

On 17 December 2010, the 5th Civil senate of German Bundesgerichtshof decided in three cases brought by the Prussian Palaces and Gardens Foundation Berlin-Brandenburg ("Stiftung Preußische Schlösser und Gärten Berlin-Brandenburg", "SPSG") against third parties that had taken and/or distributed pictures of the SPSG's gardens and palaces without the foundation's permission. The Bundesgerichtshof held that public foundations, such as the SPSG, which curate palaces, gardens, etc., own the exploitation rights for photographs taken of these facilities from within the property boundaries as well as for photographs which have been taken of the facilities for commercial use and exploitation.

Please click here to retrieve the court's detailed press release which laden ladenfam has translated and summarised below.

The first case (case reference: V ZR 45/10 of 17 December 2010) dealt with a law suit the SPSG had brought against a photo agency. The SPSG had claimed that the photo agency had commercially exploited photos of the SPSG's parks and palaces without. The court of appeal, the Higher Regional Court of Brandenburg had dismissed the SPSG's claim and taken the view that taking photographs and making films of the parks and palaces did not infringe the SPSG foundation's property right since the SPSG had allowed free access to the parks and palaces. As such, the exploitation rights for the photographs and films rested with the actual copyright owners rather than the SPSG.

On appeal, the Bundesgerichtshof saw things differently and referred the case back to the court of appeal. In its decision the curt referred to two precedents of the Bundesgerichtshof's 1st Civil Senate, which is the senate responsible for copyright matters: "Schloss Tegel" (case reference: I ZR 99/73) and "Friesenhaus (case reference: I ZR 54/87). In these decisions the Bundesgerichtshof's 1st Civil Senate had legally differentiated between pictures had been taken from outside the property boundaries and those that had been taken from within the property boundaries. The latter ones can be prohibited by the property owner since it is he who can determine the use of the land. The 5th Senate applied these precedents and took that the view that despite the fact the SPSG's legal interests were different to those of a private owner of a real estate property, since the SPSG was a public foundation and so had to pursue the common good ("Gemeinwohl") as its main interest, the SPSG nonetheless had no (public) duty to allow third parties to use the parks and palaces for their commercial purposes. The Higher Regional Court now has two decide the case again applying these legal principles to the facts of the case.

A second case dealt with the SPSG's claim against a film producer who was distributing DVDs of films about the city of Potsdam (case reference: V UR 45/10 of 17 December 2010). Since the (real estate property) rights of SPSG were obvious in this case, with the films having clearly been made from within the property of the SPSG, the Bundesgerichtshof was able to decide the case in favour of the SPSG without having to refer it back to the Higher Regional Court.

As regards to the SPSG's third lawsuit (case reference: V ZR 44/10 of 17 December 2010), a claim against an Internet platform which allowed the exploitation of third party photographs by photographers and photo agencies on its virtual forum, the Bundesgerichtshof referred to its recent precedent concerning Wireless Lan networks in the "Sommer unseres Lebens" (case reference: I ZR 121/08) and held that the claimant only had a duty of care in those cases where there was an obvious infringement of third party rights. Hence, an Internet portal which publishes photos was free from liability unless it has positive knowledge of the infringement. The mere fact that someone had shared the photos on the forum was not enough to constitute knowledge since it was impossible for the forum owners to determine whether the photos had been taken with permission and/or from within our outside the property boundaries.

Merpel summarises these three cases as follows: the decisions clarify that public proprietors of real estate property enjoy the same rights as private property owners: while neither can prevent that photos are being taken from outside the property boundaries, public and private owners alike nonetheless have identical rights to control photography which takes place within the property's boundaries.

The SPSG's website (picture top left) can be found here - it does include some very beautiful photographs of the respective parks and gardens.

The BGH, the "circulation" of images and a "psychogram of a murderer"

In a decision of 7 December 2010, the German Bundesgerichtshof has decided that an image archive agency which provides images from its archives to an (external) press outlet has no duty to examine the lawfulness of a final press report which uses these images as illustration, (case references: VI ZR 30/09 and VI ZR 34/09 of 7 December 2010)

What had happened? The Bundesgerichtshof's press release of 7 December 2010 tells us as follows (summary and strictly unofficial translation by laden ladenfam).

The defendant in the proceedings operated a commercial image archive which press and media outlets used for sourcing images. The claimant, who had been convicted for several killings and murders, has been serving a life imprisonment sentence since 1983. German media had extensively reported about the claimant's crimes in the 1950s, 1960s and early 1980s. Upon a request by German Playboy magazine, the defendant provided the magazine with one image depicting the claimant in the 1950s and two images showing the claimant in the 1960s. Playboy magazine then used the images to illustrate a feature article about the claimant under a title which roughly translates into "The file ….psychogram of one of the murderers of the century" ("Die Akte … Psychogramm eines Jahrhundertmörders").

The claimant objected to this, stating that the defendant had circulated the images without his prior consent and as such had infringed his "right to his own image" under § 22 of the German Act on the Protection of the Copyright in Works of Art and Photographs (Kunsturhebergesetz, KUG). The claimants were of the view that their actions were protected by the human of right of freedom of the press under Article 5(1)(2) German constitution.

By way of background: The so-called ‘‘right to one’s own image’’ (Recht am eigenen Bild) under § 22 KUG is a special manifestation of the general personality right, as protected by the German constitution in its Articles 1(1) and 2(1). Under § 22 KUG, an ‘‘image’’, which includes any kind of presentation that reproduces the appearance of a person, so as to be identifiable by third parties, may only be circulated in public with the consent of the person depicted. §§ 22 and 23 KUG contain detailed provisions concerning the protection of an individual’s image.

The claimant's law suits aimed at preventing the circulation of the images. The court of first instance, the Regional Court of Frankfurt, decided in favour of the defendants (case references: LG Frankfurt am Main, 2/3 O 129/07 and 2/3 O 90/07 of 17 April 2008. On appeal, the Higher Regional Court of Frankfurt, found - partly - in favour of the claimant (case references: OLG Frankfurt am Main, 11 U 22/08 and 11 U 21/08 of 23 December 2008).

Upon further appeal, the VI Civil Senate of the Bundesgerichtshof, which is, inter alia, responsible for personality right cases, has now dismissed the claims. In its decision of 7 December 2010, the Bundesgerichtshof reiterated that the exchange/provision of lawfully archived images is protected by (the human of right of) freedom of the press as protected under Article 5(1)(2) of the German constitution. Further, in accordance with established precedents, freedom of the press not only protects the distribution of news and opinions but also protects the process of preparing the process of publication, which in particular includes the gathering of information. The court took the view that this legal background had to be taken into consideration when interpreting the terms "circulating of images" as set out in § 22 KUG. A quasi "press-internal" passing on of images by an image archive could hence not be made dependant on the owner of the image archive having to assess whether or not the press publication using of the images was lawful. It was entirely the responsibility of the actual press publisher to examine whether the use of the images was in accordance with §§ 22, 23 KUG. The depicted individual, here the claimant, did not suffer any "tangible disadvantage". The quasi "press internal" passing on of images at most affected his personality rights in a negligible way.

Merpel, who is familiar with the KUG, notes that the court of appeal, the Higher Regional Court of Frankfurt, had interpreted § 22 KUG more broadly than the Bundesgerichtshof. The Higher Regional Court had held that the defendants had a duty (akin a duty of care) by which they had to examine the lawfulness of the final publication using the images, even in cases where this was "difficult" or "unusual" . While there are good arguments to support the Frankfurt court's stricter view, this Kat feels inclined to agree with the Bundesgerichtshof's approach, which appears is little closer to reality when it interprets "circulation" as an external process, with the crucial moment being once actual publication has taken place rather than the moment when an image is sourced from an archive and passed on to another press outlet. So while this decision strengthens the scope of freedom of press it also appears to confirm that interim injunctions are the instrument of choice when it comes to potential personality right infringements.

The Bundesgerichtshof's press release of 7 December 2010 can be retrieved from the court's website by clicking here, where the lovely picture of the court top left has also been taken from.

German Federal Patent Court decides in "POST II"

A slightly delayed delivery (to our readers) of some good news for Deutsche Post, Germany's equivalent of the Royal Mail. Several German websites recently reported that the German Federal Federal Patent Court (Bundespatentgericht) decided in favour of the Deutsche Post's appeal against the cancellation of its trade mark for "POST".

The background: back in 2003 Deutsche Post had applied for a trade mark registration for the mark "POST" covering different services in connection with postal services. Several of Deutsche Post's competitors later filed for a cancellation of the mark, inter alia, citing descriptiveness objections under § 8 (2) No. 2 MarkenG (German Trade Mark Act). The German Trade Mark and Patent Office (DPMA) subsequently cancelled the mark. After the Federal Patent Court had initially confirmed the cancellation, Deutsche Post appealed this matter all the way to the German Federal Supreme Court (Bundesgerichtshof). The Bundesgerichtshof, however, decided in favour of Deutsche Post's appeal and sent the case back to the Federal Patent Court for a final decision which in turn has now decided the case in Deutsche Post's favour.

Trying to find the actual decision, this Kat has found a press release issued by the Federal Patent Court concerning this case which consists of the headnotes of "POST II" as the case has been aptly named. Please find this Kat's strictly unofficial translation of the headnotes below.

1. To prove 'use as a trade mark' for a service mark, it can suffice to apply a work mark in and on a business premise.

2. The application of the word "POST" at the entrance of a business premise and on sale counters inside a business premise does not only constitute use as a business name (firmenmäßige Benutzung) but also constitutes use as a trade mark in relation to the delivery and transport services offered [at that business premise].

3. Having regard to the Bundesgerichtshof's precedent (GRUR 2009, 669 pp., No. 28 - POST II) a degree of more than 75% attribution in a market survey to the business of the trade mark owner concerning transport and delivery services is to be regarded as sufficient for proving acquired distinctiveness of the sign POST in the sense of Article 8 (3) German Trade Mark Act, which was per se capable of being descriptive.

4. If the deciding senate is convinced that there are no legal or factual doubts concerning the correct method and content of a market survey that has been commissioned, then that survey is suitable to prove acquired distinctiveness of a trade mark in trade. In such a case there is no need - also not according to the principle of official investigation - to commission a further market survey during cancellation proceedings. Rather, the cancellation applicant has to adduce counter-evidence concerning the falsity of the market survey and, where appropriate, has to commission and submit a further market survey.

Case reference 26 W (pat) 24/06 "Post II", order of 28 October 2010. Case references of parallel proceedings 26 W (pat) 25/06, 26 W (pat) 26/06, 26 W (pat) 27/06, 26 W (pat) 29/06 and 26 W (pat) 115/06.

BGH decides in "Hartplatzhelden.de" case

The first civil senate of the German Bundesgerichtshof, which is, inter alia, responsible for competition law matters, decided yesterday in the "Hartplatzhelden.de" case (28 October 2010, case reference I ZR 60/09) that a football association has to accept it when video film clips of amateur football games held by its member clubs are made publicly accessible via the Internet. While the full decision has not been published, the court has issued a press release which is summarised below and which can be accessed by clicking here (in German). In case you wondered: Hartplatzhelden is German for hart court heroes...

On the its website "www.hartplatzhelden.de" the defendant operates an Internet portal that is financed by advertising. Users of the website can upload their on clips of amateur football games showing excerpts from such games that are up to 1 and 1.30 minutes long. Other Internet users can access and watch these videos free of charge. The claimant, the Württembergischer Fußballverband e.V. (the football association of Württemberg), which organises the football games, is of the view that it should have the exclusive commercial exploitation rights in relation to the games. As such, it asked the defendant to cease publication of the video clips and based its claim on 'misappropriation' ("unzulässige Leistungsübernahme"), anti-competitive obstruction and an unlawful interference with its right to an established and operative business ("Recht am eingerichteten und ausgeübten Gewerbebetrieb"). The Regional Court of Stuttgart (Landgericht Stuttgart) decided in favour of the claimant. On appeal, the Higher Regional Court (Oberlandesgericht Stuttgart) agreed but allowed a further appeal to the Bundesgerichtshof, Germany's highest court in civil matters.

The Bundesgerichtshof in turn denied an exclusive exploitation right of the football association of Württemberg and dismissed the claimant's case. The Bundesgerichtshof disagreed with the Higher Regional Court in some points and held that the publication of the video clips could not be considered as an unfair imitation of someone else's protected work (geschütztes Leistungsergebnis) in the sense of § 4 No. 9 letter b UWG (German Act of Unfair Competition). The court stressed that the claimant's work in the form of organising and executing football games also did not require this type of protection. The judges took the view that claimant could adequately ascertain its commercial exploitation of the football games held by its member clubs through prohibiting under its house rules (Hausrecht) that visitors make video recording of such games. Finally, the court also did not accept the claimant's further arguments concerning a exclusive exploitation right of sport associations.

The claimant, the Württembergischer Fußballverband e.V., has issued a press release on its website stating that it will wait for the full decision and the court's detailed reasoning before deciding how to proceed in the future as a "football family". Well, the association clearly appears to be a good sport about it... for now. Hartplatzhelden.de has also commented about the decision stating that they are "happy and relieved" and that it has been a tough game for them. This Kat can't help but whether the Württembergischer Fußballverband e.V. should perhaps just regard the short 1 minute fan videos as free advertisement for its games? Or is this a little naive of me? Thanks go to follow blogger Mark Schweizer... why do I think you may have a comment or two to make here....?