Among other things, the Federal Court of Justice had to deal with the question of the extent to which the risk of repetition from a copyright infringement committed at one school extends to other schools.
Uli Stein cartoon published on school homepage in breach of copyright law
The licensee of the artist Uli Stein discovered that one of his cartoons had been published on a school homepage in breach of copyright. The state, as the operator of the public school, was then warned about the copyright infringement and requested to submit a declaration to cease and desist with a penalty clause. The cartoon was then removed from the school's homepage. The deputy headmaster of the school issued the requested cease-and-desist declaration, but added "Albert Schweizer Gymnasium" in handwriting instead of "the State of Baden-Württemberg, represented by the Ministries of Education, Youth and Sport".
The Regional Court of Stuttgart considered the declaration of cease and desist to be insufficient and ordered the State of Baden-Württemberg to cease and desist, to pay damages and to reimburse the warning costs.The State of Baden-Württemberg appealed against the decision of the Regional Court of Stuttgart to the Higher Regional Court of Stuttgart. The Stuttgart Higher Regional Court considered the declaration of cease and desist to be sufficient and allowed the appeal.
Cease-and-desist declaration of a school is insufficient
In the appeal proceedings, the Federal Court of Justice now decided that the declaration to cease and desist submitted by the school was insufficient. The state of Baden-Württemberg, and not the school as such, was obligated. However, this was not clear from the declaration to cease and desist under the heading "Albert Schweizer Gymnasium".
Violation by one school creates a risk of repetition for all schools in the state
Furthermore, the Federal Court of Justice clarified that the risk of repetition created by the first infringement of an IP right does not only extend to the school where the infringement was committed, but also to all schools in the respective federal state. An act of infringement gives rise to the presumption of a likelihood of repetition not only for the identical form of infringement, but for all essentially similar acts of infringement in which the characteristic of the specific form of infringement is expressed. It was contrary to experience that this was an individual case, even if 4,500 schools existed in a federal state and if each of the individual schools maintained its own website. This suggested that the infringement in question could be expected to occur again. This was also not excluded by the fact that the cartoon in question had been used to illustrate a school website and that the subject matter, the humorous discussion of the challenges of the digital world, was directly related to the medium in question and its users, the adults and young people at school. It was obvious that other schools would proceed in the same way in order to design their websites in an appealing manner and would commit copyright infringements such as the one at issue. In the absence of a sufficient declaration of submission, the danger of repetition continued to exist - at all 4,500 public schools in Baden-Württemberg.
Source: BGH, judgement of 22 September 2021, file number I ZR 83/20
GoldbergUllrich Rechtsanwälte PartG mbB will be pleased to assist you with all questions relating to the infringement of industrial property rights. We represent you reliably and competently in the event of infringements of industrial property rights and warnings due to alleged infringements of industrial property rights.
Our advisory expertise expressly extends to legal advice and legal enforcement for public contracting authorities. The above decision of the Federal Court of Justice makes it clear that public bodies should definitely seek legal advice in the context of digitisation. The consequences of a single copyright infringement are enormous and, as shown in the present case, can extend to all public bodies.
Please feel free to contact us.
Attorney at Law Christopher Pillat, LL.M (Intellectual Property Law)
