Infringement of German copyright only if there is a sufficient domestic connection

Cross-border copyright infringements occur frequently in practice, naturally above all in internet cases. An action for such a copyright infringement always raises questions of procedural law, private international law and substantive law: Does the German court seized have international jurisdiction to decide the dispute? Is the legal dispute to be judged according to German copyright law? If both are the case, the question arises as to whether the disputed use infringes German copyright law.

In recent years, German lower courts have repeatedly had to decide on these questions (most recently, for example, the Regional Court of Berlin II, judgment of August 28, 2024, Ref. 15 O 260/22, see our blog post at https://www.lausen.com/blog/urheberrecht-im-internet-verletzt-schadensersatz-in-deutschland-fuer-die-welt/. There is already case law from the Federal Court of Justice and the European Court of Justice on international jurisdiction and the applicable law, as EU law is decisive in this respect.

Now, in its ruling of December 5, 2024, case no. I ZR 50/24 – Product Photographs, the Federal Court of Justice has also made a landmark decision on the infringement of German copyright by an act of use with a foreign connection: German copyright is only infringed if there is a domestic connection; in the case of an act of use on the internet, mere retrievability in Germany is not sufficient for this.

Facts of the case

The plaintiff asserts exclusive rights of use to a series of product photographs. The defendant, which has its registered office in Germany, operates various online stores.

The plaintiff found preview images of its product photographs in the Google image search. The thumbnails each led to a landing page on which the image was not (or no longer) available. The landing pages belonged to two online stores operated by the defendant with the top-level domains .ua and .kz for Ukraine and Kazakhstan respectively; they contained text in Cyrillic script with the exception of the German-language article descriptions and the note that no product photographs could be displayed (“Sorry, an error has occurred.”). Following a test purchase in the online store with the Kazakh top-level domain, the goods were shipped from Germany to Kazakhstan.

Following an unsuccessful warning, the plaintiff filed an action with the Hamburg Regional Court to prohibit the defendant from making the product photographs publicly available in the Federal Republic of Germany via internet search engines; it also requested that the defendant be ordered to pay the warning costs and to provide information, and that the defendant’s liability for damages be established. The Hamburg Regional Court and the Hanseatic Higher Regional Court held that the action was unfounded as there was no infringement of German copyright law.

Decision of the court

The Federal Court of Justice affirmed the international jurisdiction of the German courts. This already arises here from the defendant’s registered office in Germany pursuant to Art. 4 para. 1 in conjunction with Art. 63 para. 1 Brussels I. Art. 63 para. 1 Brussels Ia Regulation (Regulation (EU) No. 1215/2012). The place of performance pursuant to Art. 7 No. 2 Brussels Ia Regulation was therefore not relevant (incidentally, a place of performance in Germany would have existed, since according to the case law of the European Court of Justice, in the case of copyright infringements on the Internet, it is sufficient for a tortious “success” within the meaning of this provision that a work is available in one place).

The applicable law is to be determined in accordance with Art. 8 Para. 1 Rome II Regulation (Regulation (EC) No. 864/2007), as was already the case under previous German case law, in accordance with the so-called country of protection principle: According to this principle, claims arising from an infringement of intellectual property rights are to be governed by the law of the state for which protection is claimed, in this case German copyright law.

However, the Federal Court of Justice did not recognize an infringement of German copyright law either: A relevant act of infringement in Germany is required for an infringement of German copyright law by an act with a foreign element. In the opinion of the Federal Court of Justice, as with other intellectual property rights, this only exists if the act has a sufficient domestic connection, i.e. if an online offer can be accessed in Germany as intended.

The Federal Court of Justice derives this restriction from the principle of territoriality that applies throughout intellectual property law. Since, for example, German trademark law only extends to the territory of the Federal Republic of Germany, not every internet offer for services or goods from abroad that can also be accessed in Germany can trigger claims under trademark law in the event of identity or likelihood of confusion with a domestic trademark. If the conduct of which the claimant is accused has its focus abroad, a relevant act of infringement in Germany must be determined on the basis of an overall assessment of the interests and circumstances involved. Otherwise, there is a risk of an unbridled extension of the protection of national trademark rights; this could lead to an unreasonable restriction of the economic development of foreign companies. According to the Federal Court of Justice, these considerations apply to copyright law in the same way.

On the one hand, the effects of the act on the domestic interests of the rights holder must be taken into account in the necessary balancing of interests. On the other hand, it must be considered whether “the infringement is an unavoidable side effect of technical or organizational circumstances” over which the claimant has no influence, or whether he “purposefully benefits from the domestic accessibility”. The mere possibility that non-German-speaking interested parties based in Germany might prefer a foreign website does not constitute a sufficient domestic connection. The fact that the trader refrains from making it more difficult to access its online offering from Germany based on the IP address of the user (geo-blocking) is not sufficient either. The Federal Court of Justice emphasizes that the case law on international jurisdiction – which, as mentioned above, depends on mere accessibility – is not transferable to the question of infringement of German copyright law.

The Federal Court of Justice confirms the factual assessment of the circumstances of the individual case carried out by the Hanseatic Higher Regional Court. In summary, it refers to the criteria used by the Hanseatic Higher Regional Court as “language, presentation, contact addresses, advertised products, top-level domain, area of activity of the provider, users, sales and business contacts in Germany, advertising banners and links to third-party sites of certain national classification as well as disclaimers”.

• The defendant’s registered office and order processing in Germany did not establish a sufficient domestic connection.
• The delivery of goods from Germany (to Kazakhstan) says nothing about the orientation of the offers.
• The information on availability by telephone and e-mail does not indicate any connection to Germany.
• The top-level domains of the online stores indicated a focus on Ukraine or Kazakhstan.
• The German “language remnants” in the displayed article descriptions can be explained by the use of identical product photographs, without this giving rise to a relevant domestic reference. The German-language error message also does not establish a domestic connection, as it appears when it is not possible to place an order.
• The fact that, according to the Kazakh online store’s terms and conditions of sale, “the regulations at the seller’s registered office” and thus German law should apply has no influence on the attractiveness of the online offers for users, but primarily serves the seller’s own interests; this is therefore not an indication of the website’s orientation.
• The content and language of the terms and conditions of sale and the Kazakh and Ukrainian currency used argue against a focus on Germany.

As a result, the online stores were aimed at Kazakhstan and Ukraine, but not Germany.

Practical advice

The decision of the Federal Court of Justice has considerable significance for proceedings against copyright infringements on the internet. The plaintiff must present evidence of the intended retrievability of the unlawfully used intellectual property in Germany. To apply for a preliminary injunction, the applicant must substantiate the facts on which the injunction is based. He must therefore submit screenshots to the court seized of the matter, from which the domain name, language of a website, the currency used for price information, the contact options according to the imprint and, if applicable, other indications of the orientation towards Germany can be seen, as means of establishing credibility.

Unfortunately, according to the ruling of the Federal Court of Justice, it remains unclear in which sense the “orientation” towards the country of protection is to be understood, namely as a purely negative demarcation or as a positively ascertainable prerequisite. In concrete terms:

• Does sufficient domestic reference already exist if a website is not primarily aimed at other countries (i.e. no recognizable foreign reference can be established, so to speak) and is therefore – also – aimed at Germany?
• Or is a website that is completely “neutral” with regard to regional references (for example, with content of interest to an international audience, in English, under a generic top-level domain such as .com or .org, and with the simple indication of an e-mail address as a contact option) not “aimed” at any country in the world – not even Germany?

Depending on which side you look at the demarcation criterion from, the requirement of a sufficient domestic connection could make it more difficult to take action against copyright infringements online in the future. We will have to wait and see how case law develops in this regard.