The First Civil Senate of the Federal Court of Justice, which is responsible for copyright law, among other things, has ruled that the right of distribution under copyright law includes the right to offer the original or copies of a work to the public for purchase.
The plaintiff in the proceedings I ZR 91/11 is the owner of the exclusive copyright rights of use in furniture based on designs by Marcel Breuer and Ludwig Mies van der Rohe. The defendant is a company based in Italy which markets designer furniture throughout Europe by direct sales. On its website, which is available in German, and in daily newspapers, magazines and advertising brochures published in Germany, it advertises the purchase of its furniture with the statement: "You purchase your furniture in Italy, but only pay on collection or delivery by a forwarding agent authorised to collect (we can arrange this on request). The furniture also includes replicas of furniture designed by Marcel Breuer. The plaintiff is of the opinion that the defendant's advertising infringes the author's right under Section 17 (1) case 1 UrhG to offer copies of the work to the public. It sued the defendant for injunctive relief and damages. The Regional Court upheld the action. The defendant's appeal was unsuccessful. In its appeal, which was allowed by the Federal Court of Justice, the defendant continues to pursue its motion to dismiss the action.
The plaintiff in the proceedings I ZR 76/11 is the owner of the exclusive copyright rights to luminaires based on designs by Prof. Wilhelm Wagenfeld. It produces and sells the so-called Wagenfeld lamp. The defendant is the same company as the defendant in the proceedings I ZR 91/11. It puts replicas of the Wagenfeld lamp on the market. It advertises in German on the internet and in print media with literal or figurative references to the Wagenfeld lamp with the possibility of purchasing such a lamp in Italy. The advertisement contains the reference that German customers can have the lamp transferred directly or for the attention of a forwarding agent to take to Germany. The plaintiff is of the opinion that the defendant's advertising infringes the author's right to offer to the public within the meaning of Section 17 (1), first case, UrhG. It sued the defendant for injunctive relief and damages. The Regional Court upheld the action. The defendant's appeal was unsuccessful. In its appeal, which was allowed by the Federal Court of Justice, the defendant pursued its motion to dismiss the action.
The defendant in the proceedings I ZR 88/13 operates a sound carrier trade on the internet. On 30 November 2011, the DVD "Al Di Meola - In Tokyo (Live)" was posted on the defendant's internet sales site. The recording on the DVD had not been authorised by the performing artist Al Di Meola (so-called bootleg). The plaintiff, a law firm, issued a warning to the defendant on behalf of the artist. It is of the opinion that the offering of the DVD infringes the performing artist's distribution right under Section 77 (2) sentence 1 case 2 UrhG. The defendant removed the offer from its website and issued a cease-and-desist declaration with a penalty clause; however, it refused to reimburse the costs of the warning. The plaintiff sued the defendant for reimbursement of the warning costs. The district court upheld the action. The appeal was unsuccessful. With its appeal, which was allowed by the court of appeal, the defendant continues to pursue its motion to dismiss the action.
The Federal Court of Justice dismissed the appeal in all three cases. Since the author's distribution right is a harmonised right under Article 4(1) of Directive 2001/29/EC, the provisions of Section 17(1) UrhG must be interpreted in conformity with the Directive. The Court of Justice of the European Union, following a referral by the Federal Court of Justice, ruled that Article 4(1) of Directive 2001/29/EC must be interpreted as meaning that the holder of the exclusive distribution right in a protected work may prohibit offers to purchase or targeted advertising in relation to the original or copies of the work even if it is not proven that, as a result of such advertising, the subject-matter of the protection has been acquired by a purchaser from within the Union, provided that the advertising encourages consumers of the Member State in which the work is protected by copyright to purchase it. The same applies to the holder of the performer's exclusive right under Section 77(2), first sentence, UrhG (Article 9(1)(a) of Directive 2006/115/EC) to distribute the phonogram on which the performer's performance is recorded.
Accordingly, the contested advertising in the proceedings I ZR 91/11 and I ZR 76/11 infringes the exclusive right to distribute reproductions of the models of the furniture by Marcel Breuer, Ludwig Mies van der Rohe and the Wagenfeld lamp, which are protected in Germany as works of applied art. The advertising is targeted advertising in relation to reproductions of the furniture models and the lamp model which encourages consumers in Germany to purchase them. It can therefore be prohibited even if, as a result of this advertising, there was no purchase of such furniture by buyers from the Union. Similarly, in proceedings I ZR 88/13, the posting of the DVD on an internet sales platform inviting the purchase of the reproduction of a phonogram on which the performance of the performer Al Di Meola has been recorded constitutes an offer to the public infringing the performer's distribution right.
BGH, Judgment of 5 November 2015 - I ZR 91/11 - Marcel Breuer Furniture II
ECJ, Judgment of 13 May 2015 - C-516/13 - Dimensione and Labianca/Knoll
BGH, Order of 1 April 2013 - I ZR 91/11 - Marcel Breuer Furniture I
OLG Hamburg - Judgment of 27 April 2011 - 5 U 26/09
Hamburg Regional Court - Judgment of 2 January 2009 - 308 O 255/07
and
BGH, Judgment of 5 November 2015 - I ZR 76/11 - Wagenfeld-Leuchte II
OLG Hamburg, judgement of 30 March 2011 - 5 U 207/08
Hamburg Regional Court, judgement of 12 September 2008 - 308 O 506/05
and
BGH, Judgment of 5 November 2015 - I ZR 88/13 - Al Di Meola
LG Hamburg, judgement of 26 April 2013 - 308 S 11/12
AG Hamburg, judgement of 13 September 2012 - 35a C 159/12
Source: Press release of the BGH
Goldberg Attorneys at Law 2015
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law
E-mail: info@goldberg.de
