The First Civil Senate of the Federal Court of Justice, which is responsible inter alia for copyright law, has ruled that the offer of the internet video recorders "Shift.TV" and "Save.TV" does interfere with the right of the television broadcasters RTL and Sat.1 to retransmit their radio broadcasts, but that it must be examined whether the providers of the internet video recorders can invoke against the television broadcasters that the latter must grant them a licence for this use.
The plaintiffs are the television channels "RTL" and "Sat.1". The defendants offer internet video recorders under the names "Shift.TV" and "Save.TV". Customers of the defendants can record free-to-air television programmes - including those of the plaintiffs - on these recorders via antennas and then watch or download them. The defendants forward the radio transmissions from the antennas to the customers' video recorders.
The plaintiffs consider the defendants' offer to be, inter alia, an infringement of their right under Section 87 (1) No. 1 UrhG to retransmit their radio broadcasts. They are suing the defendants in three proceedings for injunctive relief and - in preparation for claims for damages - for information.
The Regional Court and the Court of Appeal denied a violation of the plaintiffs' right of retransmission. Following the plaintiffs' appeals, the Federal Court of Justice overturned the judgments of the court of appeal in 2009 and referred the cases back to the court of appeal. The Court of Appeal then ordered the defendants to pay damages for infringement of the plaintiffs' right to retransmit their radio broadcasts. In response to the defendants' appeals, the Federal Supreme Court has now also overturned these decisions and referred the cases back to the Court of Appeal.
According to the Federal Court of Justice, the Court of Appeal was right to assume that the defendants had interfered with the plaintiffs' right to retransmit their radio broadcasts. However, in the reopened appeal proceedings, the defendants relied on the fact that the plaintiffs were required to grant them the right to retransmit by cable pursuant to Section 87 (5) UrhG. Under this provision, broadcasting organizations are obligated, under certain conditions, to enter into a contract with cable companies for cable retransmission. However, the defendants can only hold such an obligation against the plaintiffs by way of the so-called compulsory license defense if, among other things, they have paid or deposited the license fees resulting from such a contract. The Court of Appeal has so far failed to examine whether the requirements for raising this compulsory license objection are met.
If these requirements were met, the Court of Appeal would have to stay the litigation to allow the defendants to appeal to the Arbitration Board established at the German Patent and Trademark Office, which would then have to examine whether the defendants are entitled to conclude a contract for cable retransmission. In the case of disputes concerning the obligation to conclude a contract on cable retransmission, claims may only be asserted by way of action pursuant to Section 14 (1) No. 2, Section 16 (1) UrhWG after proceedings before the Arbitration Board have preceded. According to the Federal Court of Justice, such preliminary proceedings before the Arbitration Board are required not only when a cable company sues for the conclusion of such a contract, but also when it defends itself - as here - against an action for injunction by the broadcasting company with the objection that the latter is obligated to conclude such a contract.
Judgment of the Federal Court of Justice of 11 April 2013 - I ZR 152/11 - Internet Video Recorder II ("Shift.TV")
Previous instances:Leipzig Regional Court - Judgment of May 12, 2006 - 5 O 4391/05
ZUM 2006, 763 = CR 2006, 784
Dresden Higher Regional Court - Judgment of July 12, 2011 - 14 U 1071/06
and
Judgment of the Federal Supreme Court of 11 April 2013 - I ZR 153/11 ("Shift.TV")
Previous instances: Leipzig Regional Court - Judgment of May 12, 2006 - 5 O 4371/05
Dresden Higher Regional Court - Judgment of July 12, 2011 - 14 U 1070/06
and
Judgment of the BGH of 11 April 2013 - I ZR 151/11 ("Save.TV")
Previous instances: Leipzig Regional Court - Judgment of May 9, 2006 - 5 O 2123/06
Dresden Higher Regional Court - Judgment of July 12, 2011 - 14 U 801/07
GRUR-RR 2011, 413 = ZUM 2011, 913
Source: Press release of the BGH
Goldberg Attorneys at Law 2013
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law
E-mail: info@goldberg.de
