The First Civil Senate of the Federal Court of Justice, which is responsible, inter alia, for copyright law, today ruled that private individuals who offer for sale programmes for circumventing the copy protection of phonograms in contravention of Section 95a (3) UrhG can also be sued by phonogram producers for injunctive relief and reimbursement of warning costs.
The defendants are producers of sound recordings. They use technical protection measures to prevent copying of the CDs they produce. The plaintiff offered for sale on eBay a program with which copy-protected CDs can be duplicated. The defendants issued a warning to the plaintiff through a lawyer. At the same time, they demanded that the plaintiff make a cease-and-desist declaration and pay the lawyer's fees of € 1,113.50 incurred as a result of the warning. The plaintiff made the required declaration to cease and desist, but refused to reimburse the lawyer's fees incurred.
He applied for a declaration that the asserted payment claim does not exist.
The district court allowed the action. The court of appeal dismissed it. The Federal Supreme Court dismissed the plaintiff's appeal.
The Federal Court of Justice ruled that the plaintiff had violated Section 95a (3) UrhG. According to the Federal Court of Justice, the prohibition - which is unobjectionable under constitutional law - on advertising the sale of programmes to circumvent copy protection also applies to private and one-off offers for sale. Since the provision served to protect the producers of sound recordings, the defendants were entitled to claim injunctive relief against the plaintiff. As the Federal Court of Justice ruled following its judgment of 8 May 2008 (I ZR 83/06 - Abmahnkostenersatz), the claim for reimbursement of the lawyer's fees for the warning is not precluded by the fact that the defendants have their own legal departments.
The reimbursement of costs for warning notices for copyright infringements has now been expressly regulated in Section 97a (1) sentence 2, (2) UrhG in the version of the Act to Improve the Enforcement of Intellectual Property Rights of 7 July 2008 (BGBl. I No. 28 of 11 July 2008, p. 1191).
The new regulation enters into force on 1 September 2008 and was therefore not yet applicable in the case decided by the BGH.
Judgment of the Federal Court of Justice (BGH) of 17 July 2008 - I ZR 219/05
Previous instances: AG Köln - judgement of 6 April 2005 - 113 C 463/04; LG Köln - judgement of 23 November 2005 - 28 S 6/05 cf. also: CR 2006, 702 = MMR 2006, 412 = ZUM-RD 2006, 187
Source: Press release No. 138/2008 of the Press Office of the Federal Supreme Court of 17 July 2008, Herrenstr. 45 a, 76133 Karlsruhe, Tel. 0721-159-5013, Fax. 0721-159-5501, E-mail pressestelle@bgh.bund.de.
Goldberg Rechtsanwälte - Michael Ullrich, LL.M. (Information Law);
E-mail: m.ullrich@goldberg.de No. 138/2008
