BGH and the death blow for sampling

The Federal Court of Justice has once again ruled on the question of the conditions under which the rights of the phonogram producer are infringed by sampling. See my articles here and here.

Facts of the case:

The plaintiffs are members of the music group “Kraftwerk”. The latter released a record in 1977, on which the musical piece “Metal on Metal” can be found. Defendants 2 and 3 are the composers of the title “Nur mir” (“Only Me”), which defendant 1 recorded with singer Sabrina Setlur on recordings released in 1997. To produce the title, the defendants had electronically copied (“sampled”) two seconds of a rhythm sequence from the title “Metal on Metal” and added it to the title “Only Me” in continuous repetition.

The plaintiffs see this as an infringement of their rights as producers of sound recordings. They have filed a claim against the defendants for an injunction to produce and market sound recordings with the recording “Nur mir”. They also demanded a declaration that the defendant was liable for damages, the provision of information, and the surrender of the sound recordings for the purpose of destruction.

Process to date:

The district court upheld the action. The defendant’s appeal has been unsuccessful. On appeal by the defendant, the Federal Court of Justice reversed the judgment on appeal and referred the case back to the Higher Regional Court for a new hearing and decision. The Higher Regional Court again dismissed the defendant’s appeal. The Federal Court of Justice rejected the defendant’s renewed appeal. The Federal Constitutional Court overturned the appeal judgments and the second appeal judgment and referred the case back to the Federal Court of Justice. The latter then referred questions to the Court of Justice of the European Union on the interpretation of Directive 2001/29/EC on the harmonization of certain aspects of copyright and related rights in the information society and Directive 2006/115/EC on rental right and lending right and on certain rights related to copyright in the field of intellectual property, which the Court answered in its judgment of July 29, 2019.

Decision of the Federal Court of Justice:

The Federal Court of Justice has now overturned the first appeal judgment and referred the case back to the Higher Regional Court.

With the reasoning given by the Higher Regional Court, the claims asserted by the plaintiffs can be awarded neither with regard to the production nor with regard to the marketing of sound recordings.

1. with regard to the production, an infringement of the plaintiffs’ right of reproduction as producers of phonograms pursuant to § 85 para. 1 sentence 1 case 1 UrhG to be examined. In this respect, in view of the fact that Directive 2001/29/EC, which in Art. 2 lit. c the reproduction right for phonogram producers with regard to their phonograms and in Art. 5 para. 2 and 3 regulates exceptions or limitations in relation to this right, according to its Art. 10 applicable to acts of exploitation as of December 22, 2002, to distinguish between the making of phonograms containing the recording “Only Me” before December 22, 2002 and as of the aforementioned date.

a) For acts of reproduction prior to December 22, 2002, an infringement of the plaintiffs’ right of reproduction as producers of phonograms pursuant to Section 85 (1) of the German Civil Code can be established. 1 sentence 1 case 1 UrhG on the basis of the findings made in the first appeal judgment. As a result of the annulment by the Federal Constitutional Court, it is not possible to consider the findings in the second appeal judgment. However, the Senate has indicated in its instructions for the new appeal proceedings that the plaintiffs’ right of reproduction is not likely to be infringed because it is obvious that the defendants can invoke free use within the meaning of Section 24 UrhG, which applies accordingly here. With the piece of music “Nur mir” (Only me), they are likely to create an independent work within the meaning of § 24 para. 1 UrhG have created. Since the rhythm sequence taken by the defendants is not a melody within the meaning of § 24 para. 2 UrhG and a corresponding application of this provision is out of the question, the conditions for free use are likely to be met. In view of the fact that, in the view of the Federal Constitutional Court, it would not take sufficient account of the artistic creative process if the permissibility of the use of samples of a sound carrier that can be played back in an equivalent manner were generally made dependent on the permission of the sound carrier producer, the Senate does not adhere to its view that a corresponding application of Section 24 (2) of the German Civil Code (Bürgerliches Gesetzbuch) is not permissible. 1 UrhG is excluded if it is possible to record the sound sequence recorded on the sound carrier oneself.

b) On the other hand, an infringement of the plaintiffs’ right of reproduction can be considered for acts of reproduction from December 22, 2002 onwards.

aa) Since that date, the right set forth in sec. 85 para. 1 sentence 1 case 1 UrhG to reproduce the phonogram with a view to Art. 2 lit. c of Directive 2001/29/EC to be interpreted in conformity with the Directive. Art. 2 lit. c of Directive 2001/29/EC constitutes a measure for the full harmonization of the substantive content of the law governed by it, which does not leave the Member States any room for maneuver in transposing it, but instead imposes mandatory requirements, so that the provision of Section 85 (1) of the German Civil Code transposing this provision is not binding. 1 sentence 1 case 1 UrhG is, according to the case law of the Federal Constitutional Court, in principle not to be measured against the standard of the fundamental rights of the Basic Law, but solely against Union law and thus also against the fundamental rights guaranteed by Union law. According to the decision of the Court of Justice of the European Union following a referral by the Senate, the reproduction of an audio fragment – even a very short one – of a phonogram by a user is in principle to be regarded as a partial reproduction within the meaning of Art. 2 lit. c of Directive 2001/29/EC. This interpretation is consistent with the objective of the Directive to achieve a high level of protection for copyright and related rights and to protect the substantial investments that phonogram producers must make in order to offer products such as phonograms. A reproduction within the meaning of Art. 2 lit. c of Directive 2001/29/EC does not exist, according to the case law of the Court of Justice, if a user, in the exercise of artistic freedom, extracts an audio fragment from a phonogram in order to use it in a new work in an altered form which is not recognizable upon hearing. From a balancing of the freedom of art (Art. 13 EU Charter of Fundamental Rights) and the guarantee of intellectual property (Art. 17 (2) EU Charter of Fundamental Rights), it follows that in such a constellation there is no sufficient impairment of the interests of the phonogram producer.

bb) According to these standards, the extraction of two bars of a rhythm sequence from the plaintiffs’ phonogram and their transfer to the defendant’s phonogram constitutes a reproduction within the meaning of Art. 2 lit. c of Directive 2001/29/EC and thus also § 85 para. 1 sentence 1 case 1 UrhG. When examining the question of whether an audio fragment taken from a sound carrier is used in a new work in an altered form that is not recognizable upon hearing, the listening comprehension of an average music listener must be taken into account. According to the findings of the Court of Appeal, the defendants included the rhythm sequence in their new sound recording in a slightly modified form, but one that was recognizable on hearing.

cc) In this respect, the defendants cannot rely on free use within the meaning of Section 24 para. 1 UrhG (German Copyright Act). The Court of Justice of the European Union has ruled, on a reference from the Senate, that a Member State may not provide in its national law for an exception or limitation in respect of the phonogram producer’s right under Art. 2 lit. c of Directive 2001/29/EC which is not provided for in Article 5 of that Directive. Art. 5 of Directive 2001/29/EC does not provide for any (general) exception or limitation with respect to the rightholders’ exploitation rights under Art. 2 to 4 of Directive 2001/29/EC in the case that an independent work has been created in free use of a rightholder’s work or performance. Accordingly, it is no longer permissible to assume in such a case, irrespective of whether the conditions of one of the exceptions or limitations provided for in Art. 5 of the Directive in relation to the rightholders’ exploitation rights under Art. 2 to 4 of Directive 2001/29/EC exist, that the scope of protection of an exploitation right is excluded by Sec. 24 (2) of the Directive. 1 UrhG in such a way (immanently) limited that an independent work created in free use of the work or performance of a right holder may be exploited without his consent.

dd) The defendants also cannot successfully invoke a barrier regulation. The requirements of a citation within the meaning of Section 51, sentences 1 and 2 no. 3 UrhG in conjunction with Art. 5 para. 3 letter d of Directive 2001/29/EC are not present, because there is no indication that the listeners – as required for a quotation – could assume that the rhythm sequence underpinning the musical piece “Nur mir” was taken from another work or sound recording. The adopted audio fragment is also not an insignificant accessory within the meaning of Section 57 UrhG in conjunction with Art. 5 para. 3 letter i of Directive 2001/29/EC. The requirements of a caricature or parody within the meaning of Section 24 para. 1 UrhG in conjunction with Art. 5 para. 3(k) of Directive 2001/29/EC are also not present because there is no indication that the musical piece “Nur mir” constitutes an expression of humor or a mockery. The barrier for pastiches within the meaning of Art. 5 para. 3(k) of Directive 2001/29/EC is not relevant because the German legislator has not made use of the possibility to provide for an independent exception for the use of works or other subject matter for the purpose of pastiche.

ee) However, the Federal Court of Justice is precluded from making a final assessment because the Higher Regional Court did not make any findings as to whether the defendants carried out acts of reproduction or dissemination from December 22, 2002 onwards or whether such acts were seriously and specifically to be expected. The fact that the defendants reproduced and distributed the sound recordings complained of by the plaintiffs prior to December 22, 2002 does not readily suggest that there was a serious threat of such conduct after that date in the sense of an initial threat. This applies in particular if – as was to be assumed in the appeal proceedings due to the lack of findings by the Higher Regional Court that could be taken into account – the reproduction and distribution was lawful before December 22, 2002. The justification of a risk of first infringement by a past permissible conduct of the claimant, which has only become impermissible due to a subsequent change in the law, can only be considered if there are additional circumstances which give rise to the concrete expectation of an infringement in the future. The Higher Regional Court will have to make findings on this in the newly opened appeal proceedings.

2. with regard to the placing on the market, an infringement of the distribution right of the plaintiffs as producers of phonograms pursuant to Section 85 (1) of the German Civil Code is not possible. 1 sentence 1 case 2 UrhG as well as a prohibition according to § 96 para. 1 UrhG in connection with § 85 para. 1 sentence 1 case 1 UrhG to be examined.

a) An infringement of the plaintiffs’ right of dissemination pursuant to Section 85 para. 1 sentence 1 case 2 UrhG, which is the implementation of Art. 9 para. 1(b) of Directive 2006/115/EC is not given. The Court of Justice of the European Union has ruled, on a referral from the Senate, that a phonogram containing musical fragments transmitted from another phonogram is not a copy of that other phonogram within the meaning of Art. 9 para. 1 letter b of Directive 2006/115/EC.

b) Insofar as, with regard to acts committed as of December 22, 2002, the reproduction right of the plaintiffs as producers of phonograms pursuant to Section 85 (1) of the German Civil Code (Bürgerliches Gesetzbuch – BGB) is not affected, the plaintiffs’ right to reproduce is excluded. 1 sentence 1 case 1 UrhG has been infringed, a prohibition of marketing pursuant to Section 96 (1) of the German Copyright Act (UrhG) may apply. 1 UrhG cannot be relied upon. This provision is inapplicable in the dispute because it leads to an extension of fully harmonized exploitation rights under EU law and is thus contrary to the Directive. If only an infringement of the principle set forth in Art. 2 lit. c of Directive 2001/29/EC and § 85 para. 1 sentence 1 case 1 UrhG, the protection granted by these provisions may not be extended beyond an application of Section 96 (1) of the German Copyright Act. 1 UrhG into the area covered by Art. 9 para. 1 letter b of Directive 2006/115/EC and § 85 para. 1 sentence 1 of the German Copyright Act (UrhG). In the case in dispute, there is at most an infringement of the plaintiffs’ right of reproduction as producers of phonograms, but not an infringement of their right of distribution.

The Federal Court of Justice is also precluded from reaching a final decision because the plaintiffs alternatively base their claims on their ancillary copyright as performing artists (Section 77 (2) sentence 1 UrhG, Article 2 letter b of Directive 2001/29/EC; Article 9 (1) letter a of Directive 2006/115/EC). a of Directive 2006/115/EC), in the further alternative on the infringement of the first plaintiff’s copyright in the musical work (§ 15 (1) nos. 1 and 2, §§ 16, 17 (1) UrhG; Art. 2 (a), Art. 4 (1) of Directive 2001/29/EC) and in the further alternative on protection of ancillary copyright under competition law (§ 4 no. 9 UWG aF, § 4 no. 3 UWG). In this respect, the findings of the Higher Regional Court have also been lacking up to now and must now be made by the latter. The Senate also provides some guidance in this respect: For claims based on the ancillary copyright as a performing artist, nothing else is likely to apply than for claims based on the ancillary copyright as a phonogram producer. With regard to claims under copyright law, it is already questionable whether the rhythm sequence taken meets the requirements of a copyrighted work. In any case, it may be assumed that the defendants also rely on the right of free use under Section 24 (1) for all acts of use prior to December 22, 2002. 1 UrhG can be invoked. Claims based on the protection of intellectual property under competition law are likely to be more remote.