Even before the amendment of the Copyright Act (UrhG), it was generally accepted that in the case of a justified warning, an IP right holder can demand the costs of this warning from the person being warned. Since the amendment of the Copyright Act, Section 97a UrhG now legally regulates that in the case of a justified warning, the warned party must reimburse the warned party for the necessary legal fees incurred by the warning. With the introduction of Section 97a UrhG, a "cap" on the warning costs was also introduced in Section 97a (II) UrhG. In some cases, the lawyer's fees to be reimbursed in the case of a justified warning notice are now limited to €100.00.
Especially in file sharing cases (copyright infringements on the Internet), the question thus arises as to whether Section 97 a II UrhG is applicable to these cases.
The cap under Section 97 a (II) UrhG only applies if the warning notice is a first-time warning notice concerning a "simple case with an only insignificant infringement outside thecourse of trade". Only if all these requirements are met together is the IP right holder's claim for reimbursement limited to € 100.00 pursuant to Section 97 a (II) UrhG. This amount then also includes all taxes and expenses, such as the postage for sending the warning notice. However, the burden of presentation and proof for the existence of the elements of the offence lies with the warned party who invokes the reduction of the amount to be refunded (Wandtke/Bullinger, Urheberrecht, § 97a para. II, marginal no. 43, 3rd edition 2009).
The law firms issuing the cease-and-desist letters are of course of the opinion that Section 97 a II UrhG is generally not applicable to file-sharing cases, as the aforementioned requirements of Section 97 a II UrhG are not fulfilled in the case of copyright infringements on the Internet / file-sharing.
It is not clear from the explanatory memorandum whether file-sharing cases are intended by the legislator to be covered by Section 97a (II) UrhG.
As far as the individual requirements of Section 97a (II) Copyright Act are concerned, it must be decided separately for each individual case whether the requirements of the offence are fulfilled or not. In principle, the individual requirements of the offence are to be defined as follows:
A First warning is deemed to exist if the party concerned sends a warning notice to the warned party for the first time in relation to a specific infringement. This requirement is therefore only fulfilled if the warned party has not previously committed any identical or essentially similar acts of infringement. in relation to the right holder issuing the warning notice essentially the same. Since the provision of Section 97a (2) represents a deviation from the rule, namely the full reimbursement of the necessary expenses, the burden of proof lies with the person who has been warned and who claims that the amount to be reimbursed has been reduced (Wandtke/Bullinger, Urheberrecht, Section 97a (II), marginal no. 43, 3rd edition 2009).
A Simple case case within the meaning of the law exists if it presents no difficulties either in fact or in law, i.e. the infringement is quasi obvious (cf. Wandke/Bullinger, Urheberrecht-Kommentar, 3rd ed. 2008, Section 97 a (II) UrhG, marginal no. 35). Since, according to the official explanatory memorandum to the Act, costs incurred for the investigation of the infringement (such as for the determination of the infringer behind an IP address) are not to be covered by the €100.00, according to the literature the reverse conclusion must be drawn that a possibly necessary investigation does not necessarily make a case more complicated (Dreier/Schulze, Urheberrechtskommentar, 3rd ed. 2008, Section 97a (2) UrhG, marginal no. 16). This argument of the warning lawyers is therefore not valid in file-sharing cases.
A Insignificant infringement requires a "low degree of infringement in qualitative and quantitative terms" (Dreier/Schulze, Urheberrechtskommentar, 3rd ed. 2008, Section 97a (2) UrhG, margin no. 17). An insignificant infringement is only to be assumed if the nature and extent of the infringements are limited to a rather minor encroachment on the rights of the person issuing the warning notice and their consequences can be eliminated by simply ceasing and desisting (cf. Wandke/Bullinger, Urheberrecht-Kommentar, 3rd ed. 2008§ 97a para. II UrhG, marginal no. 36). In this case, it should be examined for each file sharing warning to what extent (a song, a music album, an audio book, a film, etc.) the person being warned is accused of a copyright infringement.
The infringing act must also outside the course of trade have taken place. According to the official statement of reasons, acting in the course of trade means any economic activity on the market which is intended to promote one's own or another's business purpose. The concept of commercial activity is therefore to be interpreted broadly and does not presuppose commercial activity (Dreier/Schulze, Urheberrechtskommentar, 3rd ed. 2008, Section 97a (2) UrhG, marginal no. 18). As a result, this means that Section 97a (2) UrhG only covers actions in the purely private sphere. Thus, only private individuals who commit an infringement for non-commercial purposes benefit from the provision of Section 97a (2) UrhG.
The courts of instance have so far judged the applicability of Section 97a (II) UrhG to file sharing cases / copyright infringements on the internet very differently.
The Frankfurt a.M. District Court. (judgement of 01.02.2010, file no. 30 C 2353/09-75) affirmed the applicability of Section 97a (II) UrhG in one case and therefore limited the warning costs to 100.00 €. In other cases, however, the Frankfurt a.M. District Court, together with other district and regional courts, denied the applicability of Section 97a (II) UrhG. In this context, the Regional Court of Hanover ruled that the refusal to pay warning fees combined with legal objections to the warning already triggered an increased examination effort, so that the cost-related privilege under Section 97a (II) UrhG could no longer be applied for "simple cases" for this reason. The Regional Court of Cologne ruled in its decision of 21 April 2010 - File No.: 28 O 596/09 - that Section 97a (II) UrhG only applies in the case of insignificant infringements.
In the press release on its decision of 12 May 2010 - I ZR 121/08 - Sommer unseres Lebens - the Federal Court of Justice noted that Section 97 a (2) UrhG would have been applicable to the case decided there if it had already constituted applicable law in the period in dispute. However, in the judgment itself, the BGH unfortunately made no statement as to whether and, if so, under what conditions Section 97 a (2) UrhG should be applicable to file-sharing cases. A supreme court clarification of this legal issue is therefore still pending. However, the BGH's press release can be interpreted to mean that the first civil senate of the BGH considers Section 97 a (II) of the German Civil Code to be applicable at least in certain cases.
However, it must be waited for a corresponding decision of the Federal Supreme Court whether the Federal Supreme Court actually assumes a general applicability of Section 97 a (2) UrhG to file sharing cases / copyright infringements on the Internet. If this is the case, we will also have to wait and see whether the Federal Court of Justice considers Section 97 a (2) UrhG to be applicable to every reported infringement in the context of file sharing, regardless of whether illegal downloading/uploading of individual pieces of music, music albums, audio books, films, software, etc. is being complained about. It is only to be hoped that the Federal Supreme Court will make a clear statement on all of the aforementioned points in a timely manner and thus clarify the legal situation.
Since the case law of the courts of instance on the applicability of Section 97a (II) UrhG to file-sharing cases / copyright infringements on the Internet is inconsistent, a supreme court ruling is still pending and it must first be examined on the basis of each individual warning notice whether the entire requirements of Section 97a (II) UrhG are met at all, you should urgently contact a specialised lawyer / specialist solicitor in the event of a warning notice received, who will safeguard your legal interests accordingly.
A general reference to the provision of Section 97a (II) UrhG and the mere payment of an amount of € 100.00 to the warning lawyers is by no means sufficient as a reaction to a warning notice received. If you proceed in this way, you risk serious financial and procedural consequences, which can be avoided by proper legal representation by a specialised lawyer.
Please do not hesitate to contact us if you have any further questions or would like legal advice and representation.
Goldberg Attorneys at Law 2011
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law (IT law)
Tel.: 0202-450036 / 0202-450037