The First Civil Senate of the Federal Court of Justice (BGH), responsible inter alia for copyright law, ruled on november 20, 2008, that even extracting the smallest sound fragments from another's phonogram constitutes an infringement of the phonogram producer's rights.
The plaintiffs are members of the music group “Kraftwerk.” In 1977, they released a phonogram that included the track “Metall auf Metall.” Defendants 2 and 3 are the composers of the track “Nur mir,” which Defendant 1 recorded with singer Sabrina Setlur on phonograms released in 1997. In doing so, the defendants electronically copied (“sampled”) an approximately two-second rhythm sequence from “Metall auf Metall” and continuously looped it under the track “Nur mir.” The plaintiffs contend that the defendants thereby infringed their rights as phonogram producers. They sought an injunction against the defendants, a declaration of their liability for damages, disclosure of information, and the surrender of the phonograms for destruction.
The appellate court granted the claim. The Federal Court of Justice overturned the appellate judgment and remitted the case to the appellate court for a new hearing and decision.
The appellate court, according to the Federal Court of Justice, correctly assumed in its outcome that the defendants infringed the plaintiffs' phonogram producer rights. Section 85 (1) of the Copyright Act protects the economic, organizational, and technical performance of the phonogram producer required for fixing the sound sequence on the phonogram. Since the phonogram producer provides this entrepreneurial performance for the entire phonogram, there is no part of the phonogram that would not entail a portion of this effort and thus not be protected. Therefore, an infringement of the phonogram producer's rights occurs even when the smallest sound fragments are extracted from another's phonogram. However, the appellate court, the Federal Court of Justice continued, failed to examine whether the defendants could invoke the right of free use. According to Section 24 (1) of the Copyright Act, an independent work created through the free use of another's work may be published and exploited without the consent of the author of the used work. Accordingly, the use of another's phonogram may also be permissible without the consent of the rights holder if the new work maintains such a significant distance from the sound sequence borrowed from the used phonogram that it is to be considered independent. However, free use is excluded from the outset in two cases:
1. If the person wishing to use the sounds or tones recorded on another's phonogram for their own purposes is capable and authorized to record them themselves, there is no justification for adopting the entrepreneurial performance of the phonogram producer.
2. Furthermore, free use is not applicable if the sound sequence recognizably taken from the used phonogram and forming the basis of the new work constitutes a melody (Section 24 (2) of the Copyright Act).
The appellate court will now have to examine whether the defendants can invoke the right of free use regarding the infringement of the plaintiffs' phonogram producer rights.
Judgment of the Federal Court of Justice dated november 20, 2008 – I ZR 112/06 – Metall auf Metall
Lower Courts: Regional Court of Hamburg – Judgment dated October 8, 2004 – 308 O 90/99; Higher Regional Court of Hamburg – Judgment dated June 7, 2006 – 5 U 48/05, GRUR-RR 2007, 3 = ZUM 2006, 758
We will inform you about the decision of the Higher Regional Court of Hamburg in this matter at the appropriate time.
Source: Press release of the Federal Court of Justice No. 214/2008 of november 20, 2008
© Goldberg Attorneys at Law, Wuppertal-Solingen 2008
Attorney at Law Michael Ullrich, LL.M.(Information Law)
m.ullrich@goldberg.de
