The First Civil Senate of the Federal Court of Justice (BGH), which is responsible for copyright law among other things, ruled on 18 December 2008 that a licence from GEMA is normally sufficient for the use of a musical work as a ringtone for mobile phones.
The defendant offers the musical piece "Rock my life" as a ringtone for mobile phones. The plaintiff is the composer of this work. The plaintiff has granted GEMA the administration of his rights of use to the piece of music. The defendant is of the opinion that GEMA is thus entitled to license the use of the piece of music as a ringtone. It has claimed to have acquired a corresponding licence. The plaintiff is of the opinion that a licence from GEMA is not sufficient to use a musical work as a ringtone. Rather, the consent of the composer was always required in addition. He therefore demanded that the defendant refrain from offering the musical work "Rock my life" as a ringtone.
The Regional Court sentenced the defendant as requested. The defendant's appeal was unsuccessful. The Federal Supreme Court (BGH) confirmed the appeal ruling.
The Federal Court of Justice (BGH) has ruled that the composers do not grant GEMA all the rights required for the use of musical works as ringtones for mobile telephones by concluding a rights contract in the 1996 version, but they do grant GEMA all the rights required for the use of musical works as ringtones for mobile telephones by concluding a rights contract in the 2002 or 2005 version (the rights contract in the currently most recent version of 2007 is the same as the rights contract of 2005 in this respect).
According to the Federal Court of Justice, no additional consent of the author is required if the musical work - as is usually the case - is transformed into a ringtone in a way that was customary and foreseeable when the rights of use were granted. It is customary and foreseeable that the use of a musical work as a ringtone melody requires its shortening and digital editing or transformation. Similarly, it goes without saying that a piece of music used as a ringtone is used as a signal tone and that the playing of the ringtone is interrupted by the acceptance of the call. Finally, it is generally known that the ringtone can consist of a constant repetition of a small partial section and does not necessarily reproduce the beginning of the musical work.
Although the BGH did not confirm the plaintiff's view that GEMA and the composer must always agree to the use as a ringtone, the action was successful. The plaintiff had concluded the rights contract with GEMA in the version of 1996 or earlier, which had not yet granted any rights to ring tones. The amendments to the Deed of Assignment adopted by GEMA's General Meeting in 2002 and 2005 did not change the scope of the rights granted earlier. The provision in the rights contract concluded by the plaintiff granting GEMA a right to unilaterally amend the contract was deemed invalid by the Federal Court of Justice.
Judgment of the Federal Court of Justice of 18 December 2008 - I ZR 23/06 - Ringtones for mobile phones
Lower courts:
LG Hamburg - Judgment of 18 March 2005 - 308 O 554/04 ; OLG Hamburg - Judgment of 18 January 2006 - 5 U 58/05 ; GRUR 2006, 323 = ZUM 2006, 335
Source: Press release of the Federal Supreme Court No. 237/2008 of 18 December 2008
Goldberg Attorneys at Law, Wuppertal-Solingen 2008
Attorney at Law Michael Ullrich, LL.M.(Information Law)
m.ullrich@goldberg.de
