Today, the First Civil Senate of the Federal Court of Justice, which is responsible, among other things, for copyright law, ruled that private individuals who offer programs for bypassing the copy protection of sound carriers for purchase, contrary to § 95a para. 3 of the Copyright Act (UrhG), can be sued by sound carrier manufacturers for an injunction and reimbursement of warning costs.
The defendants are phonogram producers. They employ technical protection measures to prevent the copying of CDs they produce. The plaintiff offered a program for sale on eBay that could duplicate copy-protected CDs. The defendants issued a warning to the plaintiff through a legal counsel. Concurrently, they demanded that he submit a declaration to cease and desist and pay the legal costs incurred by the warning, amounting to €1,113.50. The plaintiff submitted the requested declaration to cease and desist but refused to reimburse the accrued legal fees.
He sought a declaratory judgment that the asserted claim for payment was unfounded.
The Local Court granted the claim. The appellate court dismissed it. The Federal Court of Justice rejected the plaintiff's appeal on points of law.
The Federal Court of Justice ruled that the plaintiff had violated Section 95a (3) of the Copyright Act. The Federal Court of Justice stated that the prohibition – which is constitutionally unobjectionable – against advertising the sale of programs designed to circumvent copy protection also applies to private and one-off sales offers. Since this provision serves to protect phonogram producers, the defendants were entitled to seek an injunction against the plaintiff. The claim for reimbursement of legal costs for the warning, as decided by the Federal Court of Justice following its judgment of May 8, 2008 (I ZR 83/06 – Reimbursement of Warning Costs), is not precluded by the fact that the defendants have their own legal departments.
The reimbursement of costs for warnings regarding copyright infringements has now been explicitly regulated in Section 97a (1) sentence 2, (2) of the Copyright Act, as amended by the Act to Improve the Enforcement of Intellectual Property Rights of July 7, 2008 (Federal Law Gazette I No. 28 of July 11, 2008, p. 1191).
Thenew regulation came into force on September 1, 2008 and was therefore not yet applicable in the case decided by the Federal Court of Justice.
Judgment of the Federal Court of Justice (BGH) of July 17, 2008 – I ZR 219/05
Lower Courts: Cologne Local Court – Judgment of April 6, 2005 – 113 C 463/04; Cologne Regional Court – Judgment of november 23, 2005 – 28 S 6/05 see also: CR 2006, 702 = MMR 2006, 412 = ZUM-RD 2006, 187
Source: Press Release No. 138/2008 from the Press Office of the Federal Court of Justice dated July 17, 2008, Herrenstr. 45 a, 76133 Karlsruhe, Tel. 0721-159-5013, Fax. 0721-159-5501, E-Mail pressestelle@bgh.bund.de.
Goldberg Attorneys at Law – Attorney Michael Ullrich, LL.M. (Information Law);
E-Mail: m.ullrich@goldberg.de No. 138/2008
