The First Civil Senate of the Federal Court of Justice, responsible, among other things, for copyright law, has ruled that while the offering of the internet video recorders 'Shift.TV' and 'Save.TV' infringes upon the right of television broadcasters RTL and Sat.1 to retransmit their broadcasts, it must be examined whether the providers of the internet video recorders can assert against the television broadcasters that the latter are obliged to grant them a license for this use.
The plaintiffs are the television broadcasters 'RTL' and 'Sat.1'. The defendants offer internet video recorders under the names 'Shift.TV' and 'Save.TV'. Customers of the defendants can record freely receivable television programs – including those of the plaintiffs – on these recorders via antennas and subsequently view or download them. The defendants retransmit the broadcasts from the antennas to the customers' video recorders.
The plaintiffs consider the defendants' offering to constitute, among other things, an infringement of their right under Section 87 (1) No. 1 of the Copyright Act (UrhG) to retransmit their 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 Higher Regional Court denied an infringement of the plaintiffs' retransmission right. Upon the plaintiffs' appeals on points of law, the Federal Court of Justice had overturned the appellate judgments in 2009 and remanded the cases to the Higher Regional Court. The Higher Regional Court subsequently convicted the defendants as requested for infringing the plaintiffs' right to retransmit their broadcasts. Upon the defendants' appeals on points of law, the Federal Court of Justice (BGH) has now also overturned these decisions and remanded the cases to the Higher Regional Court once again.
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 (BGH) of April 11, 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 Court of Justice (BGH) of April 11, 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 Federal Court of Justice (BGH) of April 11, 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 Federal Court of Justice
Goldberg Attorneys at Law 2013
Attorney Michael Ullrich, LL.M. (Information Law)
Specialist Attorney for Information Technology Law
Email: info@goldberg.de
