Federal Court of Justice
Press Office Announcement
No. 169/2021 of 09.09.2021
The I. Civil Senate of the German Federal Court of Justice, which is responsible for copyright law, among other things, has ruled that a collecting society may make the conclusion of a contract for the use of digital copies of copyrighted works on the Internet dependent on the user taking effective technical measures against so-called "framing." "Framing" is understood to mean the embedding of content stored on a user's server and posted on his website on the website of a third party.
The plaintiff, the Stiftung Preußischer Kulturbesitz, is the owner of the German Digital Library. The library offers an online platform for culture and knowledge that links German cultural and scientific institutions. On the library's website, digitized content stored in the web portals of these institutions can be accessed via electronic references ("links"). The library stores thumbnails of this digitized content. Some of this content, such as works of visual art, is protected by copyright.
The defendant, Verwertungsgesellschaft Bild-Kunst, exercises the copyright rights of its affiliated authors in works of visual art. The plaintiff demands that the defendant conclude a contract granting it the right to use these works in the form of thumbnails. The defendant makes the conclusion of such a user agreement conditional on the inclusion of the following provision in the agreement:
"The Licensee undertakes to apply effective technical measures to protect the works and subject matter of protection covered by the Agreement against framing when using them."
The plaintiff rejects such a contractual provision and has filed a lawsuit seeking a declaratory judgment that the defendant is obligated to enter into a user agreement without this provision.
Course of proceedings to date:
The Regional Court dismissed the action as inadmissible. On appeal by the plaintiff, the Court of Appeal found that the defendant was obliged to conclude a user agreement without this clause.
By order of April 25, 2019, the Federal Court of Justice stayed the proceedings and referred a question to the Court of Justice of the European Union on the interpretation of Article 3(1) of Directive 2001/29/EC on the harmonization of certain aspects of copyright and related rights in the information society (see press release No. 54/2019 of April 25, 2019).
Decision of the Federal Court of Justice:
The Federal Court of Justice annulled the judgment on appeal and referred the case back to the Kammergericht for a new hearing and decision.
As a collecting society, the defendant is obligated under Section 34 (1) sentence 1 of the German Collecting Societies Act (VGG) to grant rights of use to anyone upon request under reasonable conditions on the basis of the rights it administers. However, it is also obliged to protect and enforce the rights of the authors affiliated with it. In weighing the interests of the parties involved, the Court of Appeal wrongly assumed that the rights of the authors were not affected if the preview images of works of visual art used by the plaintiff became the subject of framing by circumventing technical protection measures. Such framing infringes an unnamed right of communication to the public to which the authors are entitled and which arises from Section 15 (2) UrhG, which must be interpreted in conformity with the Directive in view of Article 3 (1) of Directive 2001/29/EC. The Court of Justice of the European Union, following a referral from the German Federal Court of Justice, ruled that embedding a work available on a freely accessible website with the consent of the rightholder in the website of a third party by way of framing constitutes a communication to the public of the work within the meaning of Art. 3 (1) of Directive 2001/29/EC if it takes place by circumventing protective measures against framing that the rightholder has taken or caused to be taken (ECJ, Judgment of March 9, 2021 - C-392/19, GRUR 2021, 706 = WRP 2021, 600 - VG Bild-Kunst/Stiftung Preußischer Kulturbesitz).
For the assessment to be made again by the Court of Appeal, the Federal Court of Justice pointed out that it is not the interest of individual authors who agree to framing by third parties that is to be taken into account, but rather the typical interest situation of the copyright holders represented by the defendant, which is aimed at safeguarding rights.
Berlin Regional Court - Judgment of July 25, 2017 - 15 O 251/16
Kammergericht - Judgment of June 18, 2018 - 24 U 146/17.
Art. 3 (1) of Directive 2001/29/EC.
Member States shall provide that authors shall have the exclusive right to authorize or prohibit the communication to the public, by wire or wireless means, of their works, including making the works available to the public in such a way that they are accessible to members of the public from places and at times of their choice.
Section 15 (2) sentence 1 UrhG
The author also has the exclusive right to publicly reproduce his work in incorporeal form (right of communication to the public).
Section 34 (1) sentence 1 VGG
On the basis of the rights administered by it, the collecting society is obliged to grant rights of use to anyone upon request and on reasonable conditions.
Karlsruhe, September 9, 2021
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Press release of the Federal Court of Justice of 09.09.2021 (translated, the original press release is in German)