In a judgment of 18 June 2018, case 24 U 146/17, the Berlin Court of Appeals (Kammergericht Berlin – Court of Appeals) held that collecting societies shall grant the right of use of their picture inventory as thumbnails even if these pictures can be ‘framed’ by third parties and the prospective licensee does not commit to prevent this use by technical means. This case will most likely now go to Germany’s Federal Supreme Court of Justice (Bundesgerichtshof – BGH).
The judgment is based on a legal conflict that occurred in 2013. A German collecting society and its prospective licensee negotiated the granting of the right to use works of visual arts on the licensee’s website as well as websites of the licensee’s partners. In 2014, when a license agreement was almost concluded, the collecting society refused to grant the licensee rights to use because of an earlier judgment of the Court of Justice of the European Union (CJEU) on framing (CJEU, BestWater International, judgment of 21 October 2014, case C-348/13). This judgment stated that framing a protected work that was made available on a publicly and freely accessible website did not constitute communication to the public under European copyright law.
The collecting society did not enter into the agreement as the licensee did not agree to provide appropriate technical measures to protect against framing on its website. The collecting society argued that authors shall be protected against the framing of copyrighted pictures on third parties’ websites without remuneration.
The licensee brought an action for a declaratory judgment in front of the Berlin Regional Court (Landgericht Berlin, 15 July 2017, 15 U 251/16) in 2016 on whether collecting societies may impose the obligation that licensees implement technical measures to prevent framing. The Berlin Regional Court dismissed the action as inadmissible in the first instance.
The Court of Appeals decision
The Court of Appeals held that the collecting society is obliged to grant the licensee a right of use to its inventory of copyrighted works for the purpose of posting these works publicly on its website without having to implement technical measures to prevent framing.
The collecting society argued that – from an economic point of view – framing would prevent it from reaping the benefits of the protected works in favour of the respective creators. However, the Court of Appeals agreed with the licensee’s arguments.
The Court of Appeals found that the collecting society is obligated to contract with the licensee according to section 34(1) of the German Collecting Societies Act (Verwertungsgesellschaftengesetz), which stipulates that collecting societies are obliged to grant rights of use to anyone under reasonable conditions. Therefore, the obligation to grant usage rights to the licensee cannot be conditional on the use of framing technology.
In its decision, the Court of Appeals referred to CJEU established case law (CJEU, Svensson, judgment of 2 February 2013, case C-466/12; CJEU, BestWater International, judgment of 21 October 2014, case C-348/13; and CJEU, GS Media, judgment of 8 September 2016, case C-160/15) on linking and framing as well as to the corresponding case law of the BGH (BGH, Die Realität II, judgment of 9 July 2015, case I ZR 46/12). According to these judgments, framing is not relevant under German copyright law as it does not constitute communication to the public under Section 15(2), (3) of the German Copyright Act (Urheberrechtsgesetz – UrhG). Communication to the public would only be made if the person who places the link makes the linked content available to a new audience (e.g., by illegally overcoming a paywall). Since the copyrighted works were already freely accessible to the public upon approval of the copyright owner and, therefore, framing the particular works will not constitute a usage that is protected under the UrhG, the rights holder does not need to be protected against such use. Therefore, the collecting society must not restrict the granting of license agreements to its repertoire to licensees who implement technical measures to ensure that third parties cannot frame such works on their websites.
Remarkably, in an obiter dictum, the Court of Appeals now rejects attempts by rights holders to restrict their consent on the availability on the original website, provided that the rights holders have made the particular work freely accessible to all internet users on the original website. Prior to the Court of Appeals’ decision, the BGH has yet not clarified this question.
The decision by the Court of Appeals is a logical continuation of CJEU case law on linking and framing. The next stop for this proceeding is the BGH. It is also likely that this case will be the next framing case to be referred to the CJEU.