Among other things, the Federal Court of Justice had to address the question of the extent to which the risk of repetition arising from a copyright infringement committed at one school extends to other schools.
Uli Stein Cartoon Published in Violation of Copyright on School Website
The licensee of the artist Uli Stein discovered that one of his cartoons had been published on a school website in violation of copyright. Consequently, the state, as the operator of the public school, received a warning notice for the copyright infringement and was requested to submit a cease and desist declaration subject to penalty. The cartoon was then removed from the school's homepage. The deputy headmaster of the school submitted the requested cease and desist declaration, but manually inserted "Albert Schweizer Gymnasium" instead of "the State of Baden-Württemberg, represented by the Ministries of Education, Youth and Sports".
The Stuttgart Regional Court deemed the submitted cease and desist declaration insufficient and ordered the State of Baden-Württemberg to cease the infringement, pay damages, and reimburse the warning notice costs. The State of Baden-Württemberg appealed the Stuttgart Regional Court's judgment to the Stuttgart Higher Regional Court. The Stuttgart Higher Regional Court considered the submitted cease and desist declaration sufficient and granted the appeal.
School's Cease and Desist Declaration Deemed Insufficient
The Federal Court of Justice has now ruled in the revision proceedings that the cease and desist declaration submitted by the school was insufficient. The State of Baden-Württemberg, not the school as such, was the obligated party. However, this was not evident from the cease and desist declaration's heading "Albert Schweizer Gymnasium".
Infringement by One School Establishes Risk of Repetition for All Schools in the Federal State
Furthermore, the Federal Court of Justice clarified that the risk of repetition established by the initial intellectual property infringement extends not only to the school where the infringement occurred but also to all schools in the respective federal state. An infringing act establishes the presumption of a risk of repetition not only for the identical form of infringement but for all fundamentally similar infringing acts that express the characteristic features of the specific infringement. It is contrary to experience to assume that this is an isolated incident, even if 4,500 schools exist in a federal state and each individual school maintains its own internet presence. This suggests that a recurrence of the objectionable infringing act is to be expected. This is also not precluded by the fact that the objectionable cartoon was used to illustrate and enliven a school's internet presence, and that the subject matter, the humorous engagement with the challenges of the digital world, is directly related to the affected medium and its users, namely adult and young school members. It is plausible that other schools would proceed similarly in designing their internet presences and commit copyright infringements, such as the one in dispute. In the absence of a sufficient declaration of submission, the risk of repetition persists – specifically at all 4,500 public schools in Baden-Württemberg.
Source: Federal Court of Justice (BGH), Judgment of September 22, 2021, File reference I ZR 83/20
GoldbergUllrich Attorneys at Law PartG mbB is readily available to assist you with all matters concerning the infringement of industrial property rights. We reliably and competently represent you in cases of intellectual property infringements and warning notices regarding alleged infringements.
Our advisory expertise explicitly extends to legal consulting and enforcement for public clients. The aforementioned decision by the Federal Court of Justice clearly demonstrates that public entities should absolutely seek legal advice in the context of digitalization. The repercussions of a single copyright infringement are immense and can, as shown in this case, extend to all public institutions.
Please feel free to contact us.
Attorney Christopher Pillat, LL.M (Intellectual Property Law)
