Linking for profit, technical means and burden of proof - German BGH applies CJEU case law to Google’s Image Search

A few months ago this blog reported on the very interesting decision of the German Federal Court of Justice (BGH), that refused the idea of having to apply the GS Media [Katposts here] presumption of knowledge for for-profit link providers to search engines.

The German court did so on consideration of the particular importance of search services for the functioning of the internet. According to the BGH, the provider of a search function cannot be expected to check the lawfulness of the images automatically retrieved from publicly accessible websites.

At last the reasons for the judgment have been made available, and Katfriend Mirko Brüß (Waldorf Frommer Rechtsanwälte) has had a chance to analyze them.

Here’s what Mirko writes:

“Google’s Image Search has been the subject of copyright-related decisions of Germany’s Federal Court of Justice in 2010 (case I ZR 69/08) and 2011 (case I ZR 140/10).

In September 2017, the BGH had a chance to revisit the subject and used this opportunity to provide clarification on a number of issues, referencing several of the latest decisions of the Court of Justice of the European Union (CJEU). 

The written reasons are now available (case I ZR 11/16).

Background

The claimant in this case operated a website that provided member-only access to erotic images. The defendant operated another website, where users could use an integrated search function to search images. This search function was “powered by Google”, as was pointed out in the search results. The claimant noticed that several of his copyright-protected images were presented as thumbnails in the search results. They were indexed by Google on third websites where they had been uploaded by members of the claimant’s website without his consent. The claimant requested the defendant to cease and desist from such activities, submitting that the availability of the images infringed his right of communication to the public.

The courts at first instance and on appeal in Hamburg rejected the claims. This result was now confirmed by the BGH, but with a different legal approach.

Rated R: Restricted

An act of communication to the public

First off, the BGH rejected the idea that the images had been made available to the public by the defendant. The court found that such use of the works would require the defendant to store copies of the images on his own servers, which was not the case here. The thumbnails were stored on Google’s servers instead, and then embedded on the defendant’s website. According to the BGH, this does not constitute an act of making the images available to the public, even when a visitor of the website could have the impression that the images are actually stored on the defendant’s servers.

Next, the court provided a thorough analysis of the right of communication to the public (Art. 3(1) of Directive 2001/29, which is implemented in § 15 para 2 UrhG (Urheberrechtsgesetz, the German copyright code).

Referring to the CJEU decisions in GS Media, Filmspeler [here] and Ziggo [here], the BGH explained that the concept of ‘communication to the public’ requires an individual assessment and has two main components: an act of communication and a public that is addressed by this act.

Looking at the facts at hand, the BGH found that the defendant had committed acts of communication. According to the judges, the defendant had deliberately provided access to copyright works by integrating Google’s Image Search into his website, thus enabling users to access works that were freely available on third-party websites. Referring to Filmspeler and Ziggo, the court pointed out that actual knowledge of the availability of the specific images of the defendant is not required when assessing this question.

A communication to a ‘public‘ was also affirmed by the BGH. While the defendant had claimed that his users accessed the images as the result of individual searches, the judges pointed out that subsequent views of the images would be sufficient to be considered a communication to a  ‘fairly large’ number of persons.

It was undisputed between the parties that the images in question were already available not only on the claimant’s website, but on other websites as well, which Google’s search engine subsequently indexed. It remained uncertain whether such uploads had been made with the claimant' consent (via his website's TOS).

Because the images were already available elsewhere, the BGH turned to the next two criteria for a ‘communication to the public’ - either specific technical means that are different from those previously used or, failing that, a ‘new public’ (citing SGAE/Rafael, Murphy, ITV Broadcasting, Svensson/Retriever, BestWater and others).

The court went on the state that both technical means are identical when the original and the subsequent communication are made ‘on the internet‘. This is an astonishingly broad definition, unless the court had the intention to refer to the “http” protocol or the “world wide web” when using the term ‘internet‘. For the case at hand, it does not really make a difference, because in both cases the works were used on ‘regular‘ websites.

GS Media

Lacking a communication using different technical means, the court addressed whether a ‘new public‘ was reached by the defendant’s website. Referencing Svensson/Retriever and Filmspeler, the BGH defined a new public as one that that was not already taken into account by the copyright holder when he authorised the initial communication to the public. When the work is freely available on a website with the consent of the copyright holder, a subsequent communication to the public is not restricted.

The burden of proof

The Higher Regional Court of Hamburg had dismissed the claimant’s action on these grounds. According to the Higher Regional court, the claimant had the burden of proving that the images were only available in a restricted area of his website and also that the site’s TOS forbid the uploading of images to third websites. This concept was rejected by the BGH, which saw the burden of proof the other way around: it is up to the defendant to demonstrate (and prove) that the images were accessible in an unrestricted (not password-protected) area of the claimant’s website.

This burden of proof also extends to the question whether the claimant’s TOS allowed users to upload the images on another websites. The BGH pointed out that it was upon the defendant to prove such consent in the TOS existed.

Up to this point, it was looking good for the claimant, as the BGH generally agreed that the defendant had made an act of communication to the public.

Internet addiction

The GS Media presumption

However, the court dismissed the claims on other grounds than the previous instances. Again looking at GS Media and Filmspeler, the BGH stated that an act of communication can only be considered unlawful when the person knew or ought to have known that the hyperlink he posted (or provided via his search engine) provides access to a work unlawfully placed on the internet. Furthermore, such knowledge can generally be presumed when the posting of hyperlinks is carried out ‘for profit‘.

It has been unclear what exactly constitutes a posting of hyperlinks ‘for profit‘. The BGH took a very broad approach and sided with the Regional Court of Hamburg [overview of other countries here]. According to the judges, a profit-making intention can be assumed for any link that is posted on a website that is operated for profit, e.g. that shows advertising.

(Non-)Applicability of the presumption to search engines

This would apply to the defendant and Google as well. However, the BGH decided that the presumption of knowledge of infringement cannot be applied in cases where the infringement is made by a search engine. The judges stated that the defendant could not reasonably be expected to know that the pictures indexed by Google were made available unlawfully. Making the necessary individual assessment, the judges highlight the importance of search engines and hyperlinks for a working internet. Search engines play an essential role for the use of the internet, according to the judgment. A general obligation to monitor the indexed content would result in unreasonable obligations for the operators of search engines and endanger their business model. It would also conflict with the intention to foster the development of the information society as laid down in recital 2 of the Directive 2001/29/EC.

As a result, under the circumstances at hand, an unlawful act of communication to the public by the defendant (or Google, for that matter), can only by found once the defendant knew or should have known of the unlawful nature of the work that is linked to. Such knowledge would be present once the defendant was expressly informed by the rightholder of the unlawful nature of the information appearing on the site.”