FREE DOWNLOAD: Recent German decision echoes the Perfect 10 and Parker cases, as well as ISP immunity.

FREE DOWNLOAD: Recent German decision echoes the Perfect 10 and Parker cases, as well as ISP immunity.

On April 29, 2010, in the case of I ZR 69/08, the German Federal Supreme Court examined whether Google thumbnail images violated German copyright law. The decision echoes the cases of Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. Cal. 2007) and Parker v. Google, 242 Fed. Appx. 833 (3d Cir. Pa. 2007).

 

German Federal Supreme Court - File Number I ZR 69/08

Making works posted by third parties on the internet accessible to the public as thumbnails by the operator of a search engine -- quotation purpose as condition of the exploitation of a protected work as a quotation -- consequences of the disposition of the right holder on rights of utilization under copyright law for the assessment of the infringement of rights under copyright law -- consent to the infringement of an exclusive right of exploitation as an act leading to the exclusion of unlawfulness of the infringement -- requirement of a legal declaration of intent for a consent excluding unlawfulness of an infringement

Court:

Federal Supreme Court (BGH)

Date:

29 April 2010

File Number:

I ZR 69/08

Form of decision:

Judgement:

LexisNexis reference:

LNR 2010, 15417

References:

BB 2010, 1161-1162 (press release)

Legal bases: 

 Art. 2 Subsec. 1 No. 4 Copyright Act (UrhG)

 Art. 15 Subsec. 2 Copyright Act

 Art. 19a Copyright Act

 Art. 23 Copyright Act

 Art. 44a Copyright Act

 Art. 51 Copyright Act

 Art. 53 Copyright Act

 Art. 58 Subsec. 1 Copyright Act

 Art. 97 Subsec. 1 Copyright Act

 Art. 242 German Civil Code (BGB)

Course of proceedings:

1. Regional Court of Erfurt - 15 March 2007 - File No.: 3 O 1108/05

2. Higher Regional Court of Jena - 27 February 2008 - File No.: 2 U 319/07

3. Federal Supreme Court - 29 April 2010 - File No.: I ZR 69/08

Subject matter of the
litigation:

Thumbnails

 

Official guiding principle:

a)         An operator of a search engine who enlists pictures of works posted by third parties on the internet in the form of preview images (so-called thumbnails) in the hit list of his search engine makes the works shown accessible to the public according to Art. 19a Copyright Act.

b)         As ever, the utilization of a protected work as a quotation still requires a purpose of the quotation within the meaning of a connection between the work or part of work of a third party used and the own thoughts of the person quoting it.

c)         An unlawful infringement of rights under copyright law is not only to be negated when the right holder has either legally disposed of his right by granting respective rights of utilization or has permitted the user to utilize the work accordingly under the law of obligations. Unlawfulness of an infringement of an exclusive right of exploitation rather is also excluded when the right holder has consented to the act infringing the right. Such consent does not require a legal declaration of intent aiming at the occurrence of this legal consequence.

-- -- -- -- --

The Ist Division for Civil Matters of the Federal Supreme Court,

 based on the oral hearing on 10 December 2009,

 by

 Prof. Dr. Bornkamm, Presiding Judge, and

 Mr, Pokrant, Dr. Schaffert, Dr. Bergmann and Dr. Koch, Judges,

 has found as follows:

 

Operative provisions:

The appeal on questions of law against the judgement of the 2nd Division for Civil Matters of the Thuringian Higher Regional Court of Jena of 27 February 2008 is rejected at the Plaintiff's expense.

Facts of the Case

1

The Plaintiff is a visual artist. Since 2003, she has maintained, under the internet address m .de, a website on which pictures of her works of art are posted. On the individual pages, there is a copyright note with the artist's name.

2

The Defendant operates the internet search engine google that disposes of a text-controlled picture search function. With its help, a user, by entering search words, can search for pictures that third parties have posted on the internet in connection with the search word entered. The pictures found by the search engine are shown in the hit list as preview images (so-called thumbnails) reduced in size and pixel number as compared with the pictures provided on the original pages. The thumbnails include an electronic reference (link) by which one can get, via a further reference, to the website that contains the respective picture. The search engine obtains the information required for the search process by using computer programs (so-called "robots" or "crawlers") that search the internet at regular intervals. The pictures found in that process are stored and kept available as thumbnails on servers of the Defendant in the USA in order to accelerate the search process and the display of the respective thumbnail on the hit list when a search word has been entered.

3

In February 2005, upon entering the Plaintiff's name as a search word, the hit list showed pictures of works of art that the artist had posted on the internet.

4

The Plaintiff objected to the presentation of her works of art as thumbnails in the search engine of the Defendant as an infringement of copyright and finally pleaded for enjoining the Defendant, under penalty of administrative measures specified in detail,

to reproduce pictures of works of art of the Plaintiff or have them reproduced and/or to make them accessible via the internet and/or to edit or transform them as it had been done in the form of so-called thumbnails within the framework of the picture search engine of the Defendant.

5

The Defendant opposed the action. First, it was not a user of the works. An infringement of copyright was moreover not applicable because the legal regulations on limitations and exceptions would take effect. In any case, there existed an implied consent of the Plaintiff because she had posted her pictures on the internet in a freely accessible manner.

6

The Regional Court dismissed the action. The appeal lodged by the Plaintiff remained unsuccessful (OLG Jena GRUR-RR 2008, 223).

7

With her appeal on questions of law that was admitted (by the court of appeal), the Plaintiff further pursues her demand for relief. The Defendant pleads for

dismissal of the appeal on questions of law.

 

Reasons for the Decision

8

 I.

The court of appeal considered the action to be unfounded because the assertion of the claim for injunctive relief due to the Plaintiff under Art 97 Subsec. 1 Copyright Act (UrhG) was in abuse of law (Art. 242 German Civil Code). In that connection, it set forth:

9

The Plaintiff's pictures painted on canvas or produced by other techniques were protectable works of visual art within the meaning of Art. 2 Subsec. 1 No. 4 Copyright Act (UrhG). That protection by copyright was not lost by the fact that the Plaintiff herself posted pictures of those works in a digitized form on the internet. It could be left open whether the Defendant, when showing the thumbnails in the hit list of its search engine, infringed the right of the Plaintiff to make them accessible to the public according to Art. 19a Copyright Act. In any case, the thumbnails were other transformations of the Plaintiff's works within the meaning of Art 23 Copyright Act. Their display in the hit list of the search engine was a utilization that was covered by the rights reserved to the author according to Art. 15 Subsec. 2 Copyright Act. In so far, the Defendant was also a user of the works responsible under copyright law and did not only make technical devices available.

10

Legal regulations on limitations and exceptions did not take effect. The provision of Art. 44a Copyright Act was not relevant. The display of the thumbnails was not a merely volatile or accompanying act of reproduction without independent economic significance. The display rather was made permanently and offered the exploiting party a variety of earning opportunities, in particular by advertisement. The Defendant was also not the organizer of an exhibition of the Plaintiff within the meaning of Art. 58 Subsec. 1 Copyright Act. Furthermore, thumbnails were not private copies admissible under Art. 53 Copyright Act because they served (also) profit-making purposes. Art. 51 Copyright Act did not take effect because a justified quotation purpose was lacking.

11

The utilization activities of the Defendant were not justified on the basis of a consent of the Plaintiff. An express declaration of consent did not exist. From the fact that the Plaintiff had posted her pictures on the internet without taking technically possible protective measures, there did not result a tacit consent.

12

However, the assertion of the claim for injunctive relief under Art. 97 Subsec. 1 Copyright Act by the Plaintiff was in abuse of law (Art. 242 German Civil Code). The Plaintiff acted in an inconsistent manner when she, on the one hand, facilitated the access of search engines to her website by a respective shaping of the source code and thereby gave to understand that she was interested in the access by search engines and, on the other hand, objected to the process of transformation of pictures into thumbnails as it is usual in the picture search of search engines.

13

 II.

The attacks by the appeal on questions of law directed against the above assessment are not successful. As a result, the court of appeal rightfully negated claims of the Plaintiff for injunctive relief under Art. 97 Subsec. 1 Sentence 1 Copyright Act for infringement of her rights of exploitation under copyright law.

14

 1.

The court of appeal correctly proceeded from the fact that, with her action, the Plaintiff only asserted acts of infringement committed within the country with regard to the copyright due to her within the country in the works of art mentioned in the statement of claim (cf. BGH, judgement of 8/7/2004 - I ZR 25/02, GRUR 2004, 855, 856 = WRP 2004, 1293 - Hundefigur; judgement of 24/5/2007 - I ZR 42/04, GRUR 2007, 691 Item 18 f. = WRP 2007, 996 - Staatsgeschenk) and therefore, according to Art 32 Code of Civil Procedure (ZPO), the international competence of German courts - to be checked in the instance of appeal ex officio also by application of Art. 545 Subsec. 2 Code of Civil Procedure - was given. The pictures of the Plaintiff's works of art can be seen, as intended, as thumbnails in the Defendant's search engine (also) in Germany (cf. BGHZ 167, 91 Item 21 - Arzneimittelwerbung im Internet, with further proof). Since the subject matter of the action is only the infringement of rights of exploitation under copyright law for which the Plaintiff claims protection within the country, there is to be applied German copyright law in case of a dispute, as the court of appeal assumed, too (cf. BGH GRUR 2007, 691 Item 22 - Staatsgeschenk, with further proof).

15

 2.

The court of appeal rightfully assumed that the asserted claim for injunctive relief was not due to the Plaintiff just because the Defendant infringed the exclusive right of the Plaintiff to exploit her works in a physical form (Art. 15 Subsec. 1 Copyright Act)

16

a)

The pictures painted by the Plaintiff on canvas or produced by other techniques are, which was also rightly assumed by the court of appeal, works of visual art protected by copyright within the meaning of Art. 2 Subsec. 1 No. 4 Copyright Act. The pictures of those works of art posted by the Plaintiff on her website are physical representations of those works in respective storage media of that website and therefore are reproductions within the meaning of Art. 16 Subsec. 2 Copyright Act.

17

b)

Since, according to the findings of the court of appeal, the thumbnails of the Picture search engine of the Defendant only reduce the size of the Plaintiff's works, but otherwise represent them without essential changes, identically with their creative features, in a well visible manner, they are - irrespective of whether they are subject to Art. 23 Copyright Act as adaptations or transformations - reproductions within the meaning of Art. 16 Subsec. 2 Copyright Act, too. The right of reproduction of the author covers also such transformations of the works - even when they are more distant from the original - that do not dispose of own creative expressiveness and therefore, despite a transformation made, are still in the scope of protection of the original because its distinctiveness is maintained in the reproduction and there is a corresponding overall impression (BGH, judgement of 10.12.1987 - I ZR 198/85, GRUR 1988, 533, 535 - draft II, with further proof). According to the further findings of the court of appeal not attacked by the appeal on questions of law, the underlying physical fixing of the thumbnails is made on storage media located in the USA. Any acts of infringement in the USA, however, are not a subject matter of the present proceedings, as explained above. Any other acts of reproduction of the Defendant or acts of reproduction by third parties assignable to it that would have been committed within the country are not visible. For this reason already, the court of appeal rightfully negated a claim for injunctive relief as far as it is directed at the prohibition of reproductions.

18

 3.

As a result, the court of appeal also rightfully denied a claim for injunctive relief of the Plaintiff for infringement of the Plaintiff's right of exploitation under copyright law to represent her works in a non-physical form (Art. 15 Subsec. 2 Copyright Act). With the fact that, upon entry of the Plaintiff's name as a search word, her works of art are represented in the thumbnails of the Defendant's picture search engine, the Defendant has infringed the Plaintiff's right of making her works of art accessible to the public (Art. 15 Subsec. 2 Sentence 2 No. 2, Art. 19a Copyright Act). Contrary to the opinion of the court of appeal, however, the Defendant did not act in an unlawful manner in that connection because, based on the Plaintiff's consent, it was entitled to the utilization of the works in the thumbnails complained about.

19

a)

The right of making the work accessible to the public (Art. 19a Copyright Act) reserved to the author under Art. 15 Subsec. 2 Sentences 1 and 2 No. 2 Copyright Act is the right to make the work accessible to the public in such a manner that it is accessible to members of the public from places and at times of their choice. A making accessible within the meaning of this regulation does only require that access to the protected work located in the access sphere of the person providing it is opened up to third parties (cf. BGH, judgement of 22/4/2009 - I ZR 216/06, GRUR 2009, 845 Item 27 = WRP 2009, 1001 - Internet-Videorecorder; judgement of 20/5/2009 - I ZR 239/06, GRUR 2009, 864 Item 16 = WRP 2009, 1143 - CAD-Software; Dreier in Dreier/Schulze, UrhG, 3rd edition, Art. 19a marg. note 6; Schricker/v. Ungern-Sternberg, Urheberrecht, 3rd edition, Art. 19a Copyright Act, marg. note 43). With the display as thumbnails of the hit list of a search engine, the operator of a search engine who keeps said thumbnails available on an own computer makes the represented works available to the public (Gey, Das Recht der öffentlichen Zugänglichmachung i.S. des § 19a UrhG, 2009, p. 169; Nolte, Informationsmehrwertdienste und Urheberrecht, 2009, p. 246; Dreier in Dreier/Schulze loc. cit. 19a marg. note 6; the same., Festschrift für Krämer, 2009, p. 225, 227; Dustmann in Fromm/Nordemann, Urheberrecht, 10th edition, Art. 19a Copyright Act, marg. note 22; Schricker/ v. Ungern-Sternberg loc. cit. 19a Copyright Act marg. note 46; v. Ungern-Sternberg, GRUR 2009, 369, 372; Leistner/Stang, CR 2008, 499, 502; Ott, ZUM 2009, 345; Roggenkamp, K&R 2007, 328; Schack, MMR 2008, 414 f.).

20

Since the Defendant keeps the thumbnails available on its computer - and therefore independently from the original source - it fulfils the facts of Art. 19a Copyright Act by own act of utilization. It does not only make the technical means available, but, by searching the thumbnails by its "crawlers" and keeping them available on its computers, exercises control of the keeping available of the works. The fact that only the individual internet user, by entering a respective search word, causes the thumbnails kept available by the Defendant to be retrieved does not change the capacity of the Defendant as user of the works within the meaning of Art. 19a Copyright Act. The is making accessible that is controlled by the Defendant forms the act of utilization under Art. 19a Copyright Act.

21

b)

The court of appeal assumed free from legal errors that the Defendant cannot plead that, in case of dispute, the Plaintiff's right of making her works accessible (Art. 19a Copyright Act) was limited by act of the regulations on limitations and exceptions of the Copyright Act.

22

aa)

The Defendant is not entitled to use the works of the Plaintiff as thumbnails of its picture search engine already because it regards the creation of adaptations or other transformations of the respective works of the Plaintiff within the meaning of Art. 23 Sentence 1 Copyright Act - that is permissible also without the author's consent -. The Defendant cannot invoke such (legal) right of utilization because it has made the Plaintiff's works accessible within the meaning of Art. 19a Copyright Act and its infringement of her copyright therefore exceeds the mere creation (that may be free from consent according to Art. 23 Sentence 1 Copyright Act). Moreover, contrary to the opinion of the court of appeal, the thumbnails are not adaptations or other transformations of works of the Plaintiff within the meaning of Art. 23 Copyright Act. According to the findings of the court of appeal, the thumbnails show the Plaintiff's works only reduced in size, but otherwise identically. A representation that shows a work reduced in size, but shows its essential creative features just as well as the original is not a transformation within the meaning of Art. 23 Copyright Act (cf. Dreier, Festschrift für Krämer, p. 225, 227; Schack, MMR 2008, 415; a.A. Roggenkamp, jurisPR-ITR 14/2008 note 2; Schrader/Rautenstrauch, UFITA 2007, 761, 763). The assumption of a free utilization within the meaning of Art. 24 Subsec. 1 Copyright Act is even more excluded because the representation of a thumbnail reduced in size does not create an own work independent from the original work.

23

bb)

It may be left open whether, by way of reversal conclusion, there can be gathered a regulation on limitation and exception with regard do the content from the provision of Art. 12 Subsec. 2 Copyright Act, namely that a description of the content is admissible after the publication of a work. Since the thumbnails completely represent the respective works of the Plaintiff, they are not only a public communication or description of their content within the meaning of Art. 12 Subsec. 2 Copyright Act. They rather do already allow to enjoy the work. Even when the works of the Plaintiff were already published with her consent, it is not possible for this reason alone to regard pictures of those works as admissible by way of reversal conclusion from Art. 12 Subsec. 2 Copyright Act (cf. Nolte loc. cit. p. 252 f.; as well as Leistner/Stang, CR 2008, 499, 503 f.).

24

cc)

The limitation and exception regulation under Art. 44a Copyright Act according to which certain temporary acts of reproduction are admissible does not take effect already because it only refers to the exploitation of the work in a physical form (Art. 15 Subsec.1, Art. 16 Subsecs. 1 and 2 Copyright Act); this case, on the other hand, regards an infringement of the Plaintiff's right of making the works accessible (Art. 19a Copyright Act). A respective application of the limitation and exception regulation under Art. 44a Copyright Act to the right of making accessible under Art. 19a Copyright Act is out of the question because the legal limitation and exception regulations form the result of a basically final balancing of legally protected rights made by the legislator (BGHZ 150, 6, 8 - Verhüllter Reichstag, with further proof). For a taking effect of the limitation and exception regulation under Art. 44a Copyright Act, there is moreover lacking the condition that the act of utilization must not have an independent economic relevance. The display of the Plaintiff's works as thumbnails in the picture search engine of the Defendant forms, as the court of appeal rightly assumed, an independent possibility of utilization with economic relevance.

25

dd)

The court of appeal correctly assumed that the act of utilization of the Defendant is not to be regarded as an admissible quotation according to Art. 51 Copyright Act, neither in the version of that provision that has been in force since the Second Act Regulating the Copyright in the Information Society (Act of 26 October 2007, BGBl. I p. 2513; in the following: new version) nor in the version in force at the point of time of the commission of the act of infringement early in 2005 (in the following: old version). According to that limitation and exception regulation, a reproduction, distribution and communication to the public of a published work for the purpose of quotation shall be admissible to the extent justified by that purpose. Irrespective of whether the admissibility of the quotation according to Art. 51 Sentence 1 Copyright Act new version does not require a taking over into a work protected as such any more (see Dreier in Dreier/Schulze loc. cit. Art. 51 marg. note 24; of the same, Festschrift für Krämer, 2009, p. 225, 232 f.; a.A. Dreyer in HK-UrhR, 2nd edition, Art. 51 Copyright Act, marg. note 9; Lüft in Wandtke/Bullinger, Urheberrecht, 3rd edition, Art. 51 Copyright Act, marg. note 8; Schack, MMR 2008, 414, 415; Schmid/Wirth in Schmid/Wirth/Seifert, Urheberrechtsgesetz, 2nd edition, Art. 51 marg. note 3), the new version of that limitation and exception regulation has not changed the fact that the acts of exploitation mentioned under Art. 51 Subsec. 1 Sentence 1 Copyright Act new version now are only admissible to the extent they are made for the purpose of the quotation.

26

For the purpose of quotation, it is required that there is created an internal connection between the works or parts of works of a third party used and the thoughts of the person quoting them (BGHZ 175, 135 Item 42 - TV Total, with further proof). Quotations shall serve as a reference or basis of explanation for independent arguments of the person quoting for the purpose of facilitating the intellectual argumentation (BGH, judgement of 23/5/1985 - I ZR 28/83, GRUR 1986, 59, 60 - Geistchristentum). Therefore, it is not sufficient when it is the only purpose of the utilization of the third party's work to make it more easily accessible to the end user or to save oneself respective explanations (cf. Dreier in Dreier/Schulze loc.cit. Art. 51 marg. note 3 at the end).

27

The court of appeal rightly assumed that these requirements of the limitation and exception regulation of Art. 51 Copyright Act were not met in the dispute. The presentation of the thumbnails in the hit list of the picture search engine of the Defendant serves the purpose of bringing the work for its own sake to the attention of the public. Thumbnails are inserted into the hit list by an automatic process, which process as such shall not serve an intellectual analysis of the work taken over. The hit list generated by the search engine is only a tool for a possible retrieval of contents in the internet. Accordingly, the display of the thumbnails is limited to the mere proof of the pictures found by the search engine. Also under the new version of the limitation and exception regulation of Art. 51 Copyright Act, that is not sufficient for the assumption of a quotation purpose (cf. Leistner/Stang, CR 2008, 499, 502; Schack, MMR 2008, 414, 415; a.A. Dreier in Dreier/Schulze loc. cit. Art. 51 marg. note 24; of the same, Festschrift für Krämer, 2009, p. 225, 234 ff.). This applies even more because the limitation and exception regulations of Arts. 45 et seq. Copyright Act based on the social tie of intellectual property generally are to be interpreted in a narrow way so as to give the author a reasonable share in the economic utilization of his works and therefore not to excessively restrict the exclusive rights due to him with regard to the exploitation of the work (BGHZ 150, 6, 8 - Verhüllter Reichstag; 151, 300, 310 - Elektronischer Pressespiegel). An interpretation of Art. 51 Copyright Act extending it beyond the quotation purpose is neither required due to the further technical developments in connection with the information procurement in the internet nor in view of the interests of the persons involved that are basically protected by these limitation and exception regulations. Neither the freedom of information of other internet users nor the freedom of communication or the freedom of trade of the search engine operators require such an extending interpretation. There is generally no room for a general weighing of legal rights and interests outside the authority of exploitation under copyright law as well as the limitation and exception regulations of Arts. 45 et seq. Copyright Act (BGHZ 154, 260, 266 - Gies-Adler).

28

c)

An infringement of a right of exploitation under copyright law is moreover excluded when the author or the right holder has granted, by disposition under copyright law, the person acting the right to use the work in the respective way and manner (Art. 31 Subsecs. 1 to 3 Copyright Act). The court of appeal assumed free from legal errors that the Plaintiff did not grant the Defendant, whether expressly or implicitly, a respective right of utilization within the meaning of Art. 31 Copyright Act and that an infringement by the Defendant of the right due to the Plaintiff to make her works accessible to the public therefore is not to be negated for this reason already.

29

aa)

The Plaintiff has not expressly granted the Defendant a respective right of utilization. The right to use a work in a certain way (Art. 31 Subsec. 1 Sentences 1 and 3 Copyright Act), however, can also be granted to a third party by an implied declaration of the Author (cf. BGH, judgement of 20/11/1970 - I ZR 50/69, GRUR 1971, 362, 363 - Kandinsky II, with further proof). Since the (express or implied) grant of a (simple or exclusive) right of utilization under copyright law has a real character (cf. BGHZ 180, 344 Item 20 - Reifen Progressiv, with further proof), the (implied) declaration of intent by which the author grants a third party a right of utilization has to fulfil the requirements on (real) dispositions of rights. Accordingly, the respective declaration of intent requires in particular, taking into account all of the accompanying circumstances, that it has been unambiguously expressed by the objective content of the declaration that the person giving the declaration wanted to dispose of his copyright in such a manner that he grants a third party a certain right of utilization in it (cf. BGH GRUR 1971, 362, 363 - Kandinsky II, with further proof).

30

bb)

The opinion of the court of appeal that the Plaintiff has not granted the Defendant, by implied declaration, a right to use her works as thumbnails within the scope of the Defendant's picture search engine does not show any error of law. The court of appeal assessed, free from legal errors, the fact that the Plaintiff applied a copyright notice in connection with the posting of pictures of her works in the internet in such a way that there cannot be gathered from it a declaration of the Plaintiff that she wanted to permit the utilization activities with regard to these pictures. The fixing of the copyright notice does rather express the Plaintiff's intent that she wanted to keep the rights under copyright with regard to her works posted on the internet for herself and to generally assert them towards third parties. That assessment is moreover in line with the general rule of interpretation that the authorities under copyright law tend to be kept by the author so that he will get a reasonable share in the proceeds from his work (cf. BGH, judgement of 22/4/2004 - I ZR 174/01, GRUR 2004, 939 f. = WRP 2004, 1497 - Comic-Übersetzungen III).

31

According to the legally accurate findings of the court of appeal, the Plaintiff's intent to transfer required for the implied grant of a right of utilization cannot be unambiguously gathered from the other concomitant circumstances either. The mere posting of works protected by copyright on the internet expresses, as the court of appeal assumed free from legal errors, only the intent that these pictures can be viewed by other internet users. The circumstance that the use of search engines is generally known to internet users and that, according to the findings of the court of appeal, the Plaintiff even facilitated the access of search engines to her site by including certain word lists into the source code of her website in the case under consideration is also not sufficient, as the court of appeal further assumed in a legally unobjectionable way, for the assumption that this would necessarily include the objectively recognizable declaratory intent of the Plaintiff to grant especially also a right to use the Plaintiff's works (free of charge) in the form of thumbnails of the search engine of the Defendant. The fact that certain texts or words shall be found by the search engine does not unambiguously express the intent that the operator of the search engine shall be granted the right to show also pictures that are found by the search engine on the website in connection with such words in a reduced form as thumbnails. Therefore, there cannot be found any infringement of law when the court of appeal has come to the conclusion that a transfer of rights of utilization to the Defendant cannot be found with sufficient certainty.

32

d)

A permission of the utilization of the works (only) under the law of obligations does also require the conclusion of a legal transaction and thus the making of a legal declaration by the Plaintiff with the content that the Defendant shall be granted a respective right (under the law of obligations) to make the respective act of utilization. For the above-explained reasons, such an intent to be legally bound (under the law of obligations) cannot be assumed either.

33

e)

The Defendant's infringement of the Plaintiff's right to make her works accessible (Art. 19a Copyright Act), however, is not unlawful because, according to the findings of the court of appeal, there is to be assumed a (simple) consent of the Plaintiff to the Defendant's act of utilization that excludes unlawfulness. The assessment of the court of appeal to the contrary is based on its incorrect opinion that a consent of the author excluding unlawfulness could only be assumed when the consent satisfied the requirements to be made on the grant of a respective right of utilization according to the general principles of the theory of legal transactions, taking into account the particularities of the idea of the purpose of transfer under copyright law. The Plaintiff is also not entitled to the claim for injunctive relief asserted by her when she, as explained above, has not granted the Defendant a respective right of utilization and has not allowed it to use the works under the law of obligations either, but the objective declaration that it agrees with the utilization of her pictures by the picture search engine of the Defendant can be gathered from her (conclusive) behaviour. On the basis of the findings made by the court of appeal, the conditions of such a (simple) consent of the Plaintiff to the infringement of rights complained about are given.

34

aa)

The court of appeal did not sufficiently take into consideration that an unlawful infringement of rights under copyright law is not only to be negated when the right holder either has legally disposed of his right by making legal declarations and by granting respective rights of utilization or has permitted the user to utilize the work accordingly under the law of obligations. Apart from that, there does rather also exist the possibility that unlawfulness of an infringement of an exclusive right of exploitation is excluded due to the existence of a simple consent of the right holder (cf. Haberstumpf in Büscher/Dittmer/Schiwy, Gewerblicher Rechtsschutz Urheberrecht Medienrecht, Art. 31 Copyright Act marg. note 1; J. B. Nordemann in Fromm/ Nordemann loc. cit. Art. 97 Copyright Act marg. note 24 f.; Schricker/Schricker loc. cit. before Arts. 28 ff. Copyright Act marg. note 27, Art. 31 Copyright Act marg. note 1a; v. Ungern-Sternberg, GRUR 2009, 369, 371; cf. also Ohly, "Volenti non fit iniuria" - Die Einwilligung im Privatrecht, 2002, p. 276 f.). The simple consent to the infringement of copyright differs from the (real) transfer of rights of utilization and from the permission under the law of obligations in so far as it leads, as a permission, to lawfulness of the act, but the recipient of the consent acquires neither a real right nor a claim under the law of obligations nor any other right enforceable against the will of the right holder (cf. Ohly loc. cit. p. 144). Therefore, it does not require a legal declaration of intent related to the occurrence of such a legal consequence.

35

In this connection, it is not of relevance whether the consent is to be considered an act (only) similar to a legal transaction that, however, is mainly subject to the rules applicable to declarations of intent (cf. Wandtke/ Grunert in Wandtke/Bullinger loc. cit. Art. 31 Copyright Act marg. note 37; v. Ungern-Sternberg, GRUR 2009, 369, 370; Schricker/Schricker loc. cit. before Arts.28 ff. Copyright Act marg. note 27 with further proof; generally on the consent to the infringement of an absolutely protected right or legal right, cf. BGHZ 29, 33, 36; 105, 45, 47 f.; Ahrens in Prütting/Wegen/Weinreich, BGB, 3rd edition, before Art. 116 ff., marg. note 8; Schaub in Prütting/ Wegen/Weinreich loc. cit. Art. 823 marg. note 16; Erman/Schiemann, BGB, 12th edition, Art. 823 marg. note 147), or whether one wants to classify it as a declaration of intent with particularities (cf. more or less Ohly loc. cit. p. 201 ff. with further proof). Independent from this legal classification, there must be taken into account in the interpretation that the (simple) consent does not have to express an intent of a legal consequence in such a manner that the declarant would aim at the establishment, the alteration of the content or the termination of a private legal relationship in such a sense that he would grant the recipient of the declaration a real right or at least a right under the law of obligations to do the (permitted) act (c. also v. Ungern-Sternberg, GRUR 2009, 369, 372). So, contrary to the opinion of the court of appeal, the declaration, in case of a dispute, does not need to have the purpose that the Plaintiff wanted to grant the Defendant a respective right of utilization or wanted to permit the Defendant the utilization (under the law of obligations).

36

bb)

In another connection - when examining whether the Plaintiff acted in abuse of law -, the court of appeal assumed free from legal errors that the text-based picture search with the display of the pictures found as thumbnails forms a commonly used method of picture search engines. It further assumed that the Plaintiff has either put herself, with her claim for injunctive relief, into an insoluble contradiction to her earlier behaviour of facilitating the use of search engine by the design of her website or, by the "optimization for search engines", has aroused a confidence meriting protection on part of the Defendant in such a way that it could be expected that the Plaintiff, if she did not want a picture search, would also have effected a possible blocking of the search-engine indexing of pictures. It does result ipso jure from the above that the Plaintiff's behaviour to make the content of her website accessible to search engines, without making use of possible technical facilities for exempting the pictures of her works from the search and display by picture search engines in the form of thumbnails, could be objectively understood on part of the Defendant, as the operator of a search engine, as a consent that the pictures of the Plaintiff's works can be used to the extent usual in picture search. A right holder who makes texts or pictures freely accessible on the internet without restrictions must expect the acts of utilization usual under the given circumstances (cf. BGH, judgement of 6/12/2007 - I ZR 94/05, GRUR 2008, 245 Item 27 = WRP 2008, 367 - Ducker und Plotter). Since it is the objective content of the declaration from the point of view of the recipient of the declaration that matters, it is irrelevant whether the Plaintiff had known what individual acts of utilization are connected with the usual picture search by a picture search engine (as a result like here Gay loc. cit. p. 172; Nolte loc. cit. p. 250; Barbaric, MMR 2005, 145, 147 f.; Leistner/Stang, CR 2008, 499, 504 f.; Meyer, K&R 2007, 177, 182 f.; the same, K&R 2008, 201, 207; Ott, ZUM 2007, 119, 126 f.; the same, ZUM 2009, 345, 346 f.; v. Ungern-Sternberg, GRUR 2009, 369, 372; a.A. Roggenkamp, K&R 2007, 325, 329; Schack, MMR 2008, 414, 415 f.; Schrader/Rautenstrauch, UFITA 2007, 761, 776 ff.). Accordingly, by posting the pictures of her works on the internet without protecting them against being found by search engines, the Plaintiff declared her consent to the display of her works in thumbnails of the Defendant's search engine.

37

cc)

The Plaintiff is also not entitled to the claim for injunctive relief asserted because she opposed the utilization of her works in thumbnails of the Defendant's search engine complained about for the future after she had got knowledge thereof early in February 2005. A consent can be revoked with effect for the future (cf. Art. 183 Sentence 1 German Civil Code (BGB)). Since the consent is explained by the posting of the pictures of the respective works on the internet without appropriate protection against being found by picture search engines, a legally relevant revocation, however, does generally require an opposite behaviour, i.e. the implementation of the respective protection against a finding of the pictures posted by picture search engines. If the right holder, however, continues to expose her works to an access by picture search engines although she has got knowledge of their presentation in thumbnails, the declaratory content of her behaviour remains unchanged. The opposition expressed only towards the operator of one single picture search engine (here: the Defendant) not to agree to the finding of the pictures by the picture search engine is without relevance to the interpretation of the declaration of consent given by posting the pictures on the internet without appropriate protection against being found by picture search engines already because that declaration of consent as such is addressed to an indeterminate circle of persons. Therefore, only generally recognizable circumstances can be taken into account in its interpretation; any circumstances only known to or recognizable by individual parties involved have to be left out of consideration (cf. BGHZ 28, 259, 264 f.; 53, 304, 307; Palandt/ Ellenberger, BGB, 69th edition, Art. 133 marg. note 12). Accordingly, when a consent to the acts of utilization usually connected with the operation of picture search engines continues to result from the declaration addressed to the general public, the contrary protest towards the Defendant is not to be taken into account also under the aspect of protestatio facto contraria (cf. BGHZ 21, 319, 334 f.; 23, 175, 177 f.; 95, 393, 399). The Plaintiff can be absolutely expected to effect appropriate protective measures against the finding of its works by picture search engines in general or especially by the picture search engine of the Defendant if she wants to prevent such acts of utilization. Otherwise, the Defendant would need to individually check, for every picture that its search engine can technically capture in thumbnails, whether, apart from the implementation of a technical protection, a right holder may have otherwise raised a relevant objection to the respective act of utilization. Such a check in individual cases cannot be reasonably expected from the operator of a picture search engine designed for the provision of an immense number of pictures.

38

dd)

The effect of the simple consent of the Plaintiff excluding unlawfulness has also not ceased to exist to the extent she asserted that the hit list of the picture search engine of the Defendant showed also thumbnails of works of her that she had already removed from her website. The consent refers to the fact that the operator of the picture search engine may do the acts of utilization usual in picture search. The Defendant replied to the Plaintiff's argument that she had removed the pictures of her works from her website, i.e. deleted the link between the storage location of the respective picture and the website, that it did not necessarily result therefrom that the picture was not at its original storage location anymore and could not be found by the search engine there. Moreover, the technology used by its "crawlers" and the searching at intervals would cause that completely removed pictures would not be found anymore as soon as possible and would also not be shown on the hit lists anymore then. The court of appeal assumed free from legal errors that, according to that submission that was not opposed by the Plaintiff in a substantiated manner, the Defendant was taking the steps that currently are technically possible for updating its search result and that, therefore, the consent had also not become ineffective as far as, according to the Plaintiff, individual pictures still shown in the thumbnails of the picture search had already been removed from her website.

39

 4.

When thumbnails of picture search engines capture pictures of works that - as in the case in dispute - were posted on the internet by the respective author or with his consent, that takes account of the general interest in the activity of picture search engines to the required extent in the interpretation of the declarations made towards the general public in connection with the posting of such pictures on the respective websites. In the case - not to be decided here - that pictures are posted by unauthorized persons, the operator of the picture search engine cannot derive, from their behaviour, an authorization for an infringement of copyrights of third parties. In such a case, however, it can be taken into account that the liability of the operator of the search engine is limited to such infringements that are committed after he was made aware of a clear infringement of a right (cf. BGHZ 158, 236, 252 - Internet-Versteigerung I; 173, 188 Item 42 - Jugendgefährdende Medien bei eBay; BGH, judgement of 19/4/2007 - I ZR 35/04, GRUR 2007, 708 Item 45 = WRP 2007, 964 - Internet-Versteigerung II; judgement of 30/4/2008 - I ZR 73/05, GRUR 2008, 702 Item 51 = WRP 2008, 1104 - Internet-Versteigerung III). The possibility of such a limitation of liability in the provision of information in search engines for the access by third parties follows from Art. 14 Subsec. 1 of the Directive 2000/31/EC on Electronic Commerce. Art. 14 Subsec. 1 of the Directive 2000/31/EC is applicable to the provision of the services of search engines when the respective activity of the operator of the search engine is of a merely technical, automatic and passive nature and he has neither knowledge nor control of the information stored or transmitted by it (ECJ, judgement of 23/3/2010 - C-236/08 to C-238/08 Item 114 - Google France/Louis Vuitton). When these conditions exist, the finding of which - incumbent on the national court (ECJ loc. cit. Item 119 - Google France/Louis Vuitton) - is not required in the case of dispute with regard to the picture search of the Defendant for lack of relevance to the decision, liability of the operator of the search engine is only to be taken into account after he has obtained knowledge of the unlawfulness of the information stored (ECJ loc. cit. Item 109 - Google France/Louis Vuitton). Such a notice of an infringement of copyright triggering liability must also provide him with sufficient clarity about the entitlement of the parties involved under copyright law.

40

 III.

Accordingly, the appeal on questions of law of the Plaintiff is to be rejected with the consequence as to costs according to Art. 97 Subsec. 1 Code of Civil Procedure (ZPO).

 

Bornkamm

Pokrant

Schaffert

Bergmann

Koch

 

Ex officio

Pronounced on: 29 April 2010

Note: The document was editorially prepared and, in this form, is subject to special protection under copyright law. Any utilization exceeding the terms of the utilization agreement - in particular any commercial further processing outside the limits of the terms of contract - is not permitted.