Background
The plaintiff (who is identical in all cases) marketed pictures of a photographer as wallpapers.
In the first case, the defendant (a consultant) applied the wallpaper in her home, made several videos there, which also showed the wallpaper, and published the videos on Facebook.
In the second case, the wallpaper was applied to the wall of a restaurant of a tennis club. The defendant was an online and media agency, which created the tennis club’s website. A photograph of the restaurant with the wallpaper was shown on this website. The defendant used the photograph on its own website as an example of the projects it completed.
In the third case, the defendant operated a hotel and applied the wallpaper to one of the rooms. Pictures of the room were taken and published on various websites to advertise the hotel.
The plaintiff sued the defendants for copyright infringement. The claims were rejected by the first and second instance courts. The plaintiff appealed to the German Supreme Court.
The German Supreme Court dismissed the appeals.
Reproduction and making available to the public
It was undisputed that the plaintiff owned the copyright to the pictures on the wallpapers, that the taking of photographs/videos constituted a reproduction and that the publication of the photographs/videos online amounted to making them available to the public.
The German Supreme Court denied an infringement because of a simple implied consent by the plaintiff to the defendants’ uses. Such a consent is granted if a right holder makes its work available without restriction, the defendant’s use is customary and the right holder had to expect such use to occur.
The judges considered a simple implied consent to be a general legal concept, which is not limited to specific and narrowly defined cases, such as the use of pictures as thumbnails on Google Search (IPKat here and here). The decisive question is rather if, from an objective point of view of the user of the copyright-protected work, the right holder’s conduct must be interpreted as consent to the specific use in question. It is not necessary for a simple consent that the right holder exposes its work actively to third party use in a particular way.
The fact that the exception of incidental works in Art. 5(3)(i) InfoSoc Directive could potentially apply in the present case was deemed irrelevant. The existence and the conditions of exceptions to copyright protection are distinct from the question whether a right holder consents implicitly to the use of the work. A right holder may consent to more than what a copyright exception allows.
The Court held that a simple consent does not grant any rights to the user (unlike a license or a contract regarding the use of the work). It only has the effect of legitimizing the specific use.
The judges found these principles to be in line with Art. 2(a) and Art. 3(1) InfoSoc Directive. According to these provisions, the right holder may not just prohibit the reproduction and making available of a work but also allow these acts, even implicitly (see Court of Justice of the EU, C-301/15, Soulier and Doke at para. 35; IPKat here).
Turning to the facts of the cases, the German Supreme Court confirmed the lower courts’ finding that the customary use of rooms, in which a wallpaper is applied permanently to a wall, includes the taking of pictures and videos for various purposes, regardless of whether these rooms are for private or commercial use. It has also become normal to publish such pictures and videos online.
A physical removal of the wallpaper would be contrary to its purpose. A physical or digital redaction of the wallpaper would give a wrong impression of the room.
The German Supreme Court noted that the right holder’s consent need not be declared vis-à-vis the actual user or indeed any person. Therefore, not only the purchaser of the wallpaper but any third party (e.g. tenants, realtors) can rely on the consent.
The Court held that its decision does not unduly restrict copyright owners’ rights. Right holders may limit the allowed use, e.g. by adding a copyright notice or other language to the wallpaper in which they reserve their rights. Such notice must be visible to third parties.
Right of attribution
The German Supreme Court also denied an infringement of the photographer’s right to be named as the author (Sec. 13 sentence 2 German Copyright Act), although the wallpapers and the pictures/videos taken thereof did not indicate the photographer.
The judges agreed with the lower courts, which held that the photographer tacitly waived the right to be named as the author. The wallpaper did not contain any indication that naming the photographer was necessary.
Comment
Does the Supreme Court’s decision introduce a fair use defense, which is not provided for in German and EU copyright law? Based on the court’s judgment, copyright holders arguably consent to any use of their works that is customary and reasonably foreseeable. Does this principle not render some or even many of the exceptions in Art. 5 InfoSoc Directive redundant?
The Court is in good company with its concept of an implied license. In 2020, a US court held that a tattoo artists grants an implied license to its tattoos on NBA athletes (IPKat here).
When the German Supreme Court closes a door for copyright owners, the judges open another – in the form of copyright notices. Such notices can prevent a simple implied consent. The question is, what such a notice must look like. Does it have to be permanently visible on the wallpaper (or other work)? This would certainly be an unattractive solution. And maybe even a violation of Art. 5(2) Berne Convention? It provides that the enjoyment and exercise of copyright may not be subject to formalities. The German Supreme Court could argue that it is not the exercise itself but the prevention of an implied consent that requires a formality.
Or would it be sufficient to sell the wallpaper with a separate copyright notice on paper obliging the purchaser to inform any subsequent owner or user of the wallpaper (or room to which it is applied) that copyright is reserved?