The First Civil Senate of the Federal Court of Justice (BGH), responsible inter alia for copyright law, ruled on December 18, 2008, that, as a rule, a GEMA license is 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 assigned the administration of his exploitation rights for the musical piece to GEMA. The defendant is of the opinion that GEMA is therefore entitled to license the use of the musical piece as a ringtone. She claimed to have acquired a corresponding license. The plaintiff is of the view that a GEMA license alone is not sufficient for the exploitation of a musical work as a ringtone. Rather, the composer's consent is always additionally required. He therefore demanded that the defendant cease offering the musical work “Rock my life” as a ringtone.
The District Court ruled against the defendant as requested. The defendant's appeal was unsuccessful. The BGH upheld the appellate judgment.
The BGH ruled that composers grant GEMA all rights necessary for the use of musical works as ringtones for mobile phones, not through the conclusion of an authorization agreement in the 1996 version, but rather through the conclusion of an authorization agreement in the 2002 or 2005 versions (the authorization agreement in the currently latest 2007 version is consistent in this respect with the 2005 authorization agreement).
According to the Federal Court of Justice (BGH), no additional consent from the author is required if a musical work – as is normally the case – is transformed into a ringtone in a manner that was customary and foreseeable when the usage rights were granted. It is customary and foreseeable that using a musical work as a ringtone necessitates its truncation and digital processing or adaptation. Similarly, it is self-evident that a musical piece utilized as a ringtone functions as an alert signal and that its playback is interrupted upon answering the call. Furthermore, it is generally known that a ringtone may consist of a continuous repetition of a small excerpt and does not necessarily reproduce the beginning of the musical work.
Despite the Federal Court of Justice (BGH) not confirming the plaintiff's assertion that GEMA and the composer must always consent to a work's use as a ringtone, the lawsuit was successful. The plaintiff had previously concluded an authorization agreement with GEMA, specifically the 1996 version or earlier, which did not encompass rights for ringtones. The amendments to the authorization agreement, adopted by GEMA's general assembly in 2002 and 2005, did not modify the scope of the rights previously granted. Furthermore, the BGH declared the provision in the plaintiff's authorization agreement, which granted GEMA the unilateral right to amend the contract, to be invalid.
Judgment of the Federal Court of Justice (BGH) of December 18, 2008 – I ZR 23/06 – Ringtones for Mobile Phones
Lower Courts:
Hamburg Regional Court (LG Hamburg) – Judgment of March 18, 2005 – 308 O 554/04; Hamburg Higher Regional Court (OLG Hamburg) – Judgment of January 18, 2006 – 5 U 58/05; GRUR 2006, 323 = ZUM 2006, 335
Source: Press release of the Federal Court of Justice (BGH) No. 237/2008 of December 18, 2008
Goldberg Attorneys at Law, Wuppertal-Solingen 2008
Attorney at Law Michael Ullrich, LL.M.(Information Law)
m.ullrich@goldberg.de
