Digitized images of works in the public domain: what rights vest in them? Analysis of the recent BGH Reiss-Engelhorn judgment - Part 2
A few days ago the German Federal Court of Justice (BGH) released the full text of its recent judgment concerning protection of digitized versions of public domain images. The IPKat is delighted to host, in two posts, the analysis provided by Tobias Lutzi (Research Fellow at the University of Cologne) [here], and John Weitzmann (General Counsel at Wikimedia Deutschland e. V. in Berlin), respectively.
Here’s what John writes:
"Note: The German Wikimedia Chapter had also been defendant in this case, but was acquitted by the court of first instance, while parallel proceedings against the US-based Wikimedia Foundation as service provider of the Wikimedia Commons platform are still on-going at the High Court of Berlin.
The rem case, an unintended sweeping swipe at the Public Domain, rights holders, and fellow judges
From the perspective of the Wikimedia Movement, the most disappointing aspects of the judgment are its treatment of § 72 UrhG, putting additional means of control over public domain works in the hands of those cultural heritage institutions, that regard control as an integral part of their public mission. As mentioned by Tobias here, it is highly questionable whether publicly funded museums should even consider using injunctions to go after digital copies of public domain works they hold in their collections.
If private owners of artworks are involved, there might be an argument for control on behalf of such private interests, in order to get the respective works into museums and before the public’s eye in the first place. But to limit the visibility of publicly owned works of art in any way, to leverage related rights in photographic depictions even with public domain works, can hardly be anything but a gross misunderstanding of the role and mission public cultural heritage institutions have. Such institutions must do anything within their power to hold as much of our cultural heritage in the public’s awareness, including on the internet, and therefore must not hide or withdraw public domain works from the public’s conscious perception.
But the present judgment does more. It drives an illogical interpretation of the German Copyright Code further into an argumentative dead end, and puts an interpretative burden back onto courts that the law in question was actually meant to relieve them of. It does so by badly handling a procedural glitch that nobody had seen coming, one that will haunt all future proceedings dealing with photography.
An otherwise cautious Federal Court stepping on the legislator’s statutory contact mine
The German Federal Court of Justice is not known for starting revolutions. To the contrary, it is a court of law that tends to stick to the things that always were, to predictability, quasi precedent, and if at all possible sticks to the lawmaker’s intentions as understood in the most conservative way. In the now decided Reiss Engelhorn case (or rem case), however, they unearthed an explosive charge buried in the German Copyright Code. This contact mine has the form of a statutory norm that was intended to quench the flames of dispute over what is art in photography and what isn’t. Thanks to the Federal Court of Justice, the same statutory norm will from now on do the opposite and fuel the flames of that difficult question immensely for all German courts that will in the future have before them rights in photography.
In all this, the judgment in the rem case almost tragically brings to bear the fundamental flaw of the hybrid rule that the German legislator produced by legally synching the neighbouring right in photographs, § 72 UrhG, to the proper copyright in photographic works, § 2 UrhG, in the 1960s. The intention behind this synching was a well-meaning one at the time: Parliament wanted to relieve judges of the close-to-impossible task of discerning non-original photographs from those that are actual works of art. Thus, § 72 was amended to let the same rules that apply to photographic works of art simply also apply to non-original photos – with the one exception of the protection term, which is shorter for non-original photos, lasting only 50 years after publication, whereas photographic works are protected until 70 years after the death of the photographer.
How far-reaching this hybrid nature of the protection of photographs under the German Copyright Code really is, doesn't jump at the reader too much from the text of the judgment, though. It is spelled out explicitly only in para 16 as part of the procedural question, whether the claims of the museum are a single matter in the formal sense, or rather two different ones. Usually, to claim copyright and related rights in the same content would be two separate subject matters. In this verdict, however, the Federal Court of Justice draws on the reasons given when § 72 was amended, in order to solve what they call a "special feature" (in German “Besonderheit”) of combined claims of copyright and related rights in photographs. The court invokes the legislator’s intention of relieving courts from making the difficult distinction between photographic works and mere non-original photographs. This spelled-out intention, the Court argues, would also prohibit any separation into two subject matters. In this the 1st Senate follows, quite expectedly, one of its previous judgments.
One small step for a Federal Court, one giant mess for all disputes to come
Bystanders might wonder, how this reasoning would work in a case where the shorter protection term for related rights has already expired while the longer term of copyright hasn't, but in the present case both had not yet expired, thus a classic situation where a court can usually leave a detail untouched. The definition of the subject matters being a procedural necessity, however, the Court couldn’t leave it undecided, and – drawing on said “special feature” of § 72 UrhG produced by the legislator – it decided to procedurally treat both copyright claim and neighbouring rights claim in a photograph as a single subject matter. And that could be it with this mixture of a neighbouring right enhanced with all but one features of copyright proper. Only, it isn't. The decision towards a unified subject matter is the precise instant when the Court stepped on the mine.
The explosive nature of this comes from the precluding effect that judgments have on further matters concerning the same procedural subject matter. Once a verdict becomes final, its subject matter cannot be successfully be put on trial again within the same jurisdiction. Now, to treat the two claims brought forward in the rem case as one subject matter means that any future claimant of rights in a photograph will have to instantly decide whether to argue originality instantly or never be able to do it again. To first only sue based on the neighbouring right of § 72 UrhG and later bring separate proceedings based on § 2 UrhG is no longer an option. And, given the substantial difference in protection term between the two claims, all future claimants of rights in photographs will be well advised to actively argue originality, in order to explicitly get the status of a work in the meaning of § 2 UrhG established in their title and benefit from the longer protection term. This in turn means that the opponent will have to counter the originality argument and that the court will need to deal with it and decide whether the photograph is in fact original or not. So here explodes the very charge that § 72 UrhG was intended to defuse.
Easy solutions backfire, in IP law just as in politics
How deeply inscribed the illogical and inconsistent thinking behind the presumably easy solution of mingling neighbouring rights and copyright through § 72 really is in German copyright jurisprudence, becomes apparent a bit further down in para 22 of the judgment, but somewhat hidden in reasoning by the previous instance court, reiterated by the Federal Court of Justice: The second instance court, the High Court of Stuttgart had argued that even the meticulous reproduction photos in question (i. e. the ones made by the museum's photographer for a catalogue that had later then been scanned by the defendant and uploaded to the Wikipedia's media archive Wikimedia Commons) were not "mere technical reproductions", but represent ...
 (...) an independent new fixation into a new work form [and are photographs] initially made with creative intention. [own translation]
Now, one does not need to share the infamous fondness of dogmatic detail present in German civil law to find it odd that a second instance court introduces terms like "work" and "creative intention" (in German: “Schöpfungswillen”) when actually speaking about a neighbouring right in photographs. Usually, under German copyright law the term work (“Werk”) is much more narrowly than in the Anglo-American tradition reserved for works of authorship. That is the very reason de être of all those neighbouring rights in "non-works" in the first place. There’s a whole universe of arguments about the special bond between the work and its creator, and why that bond is so very special and valuable, even producing unwaivable moral rights. This prompts two questions:
Is there still a legally significant difference between a “personal intellectual creation” (“persönliche geistige Schöpfung”) in the meaning of § 2 UrhG and a “personal intellectual contribution” or “achievement” (“persönliche geistige Leistung”) in the meaning of § 72 UrhG, or are they in effect the same? (The difficulty to translate “Leistung” properly adds to a certain feeling of suspicion)
And secondly, can there actually be such a personal intellectual contribution or achievement in a photograph if the subject of the photograph is entirely fixed?
It can’t be stated enough: The content of reproduction photos is fixed in all thinkable ways. By definition they must as exactly as possible give the same impression as the works they depict, nothing added and nothing taken away. How can those repro photographs be more than "mere technical reproductions" if all the photographer can work with are shutter time, light, aperture and such – all of which go beyond technical in nature only if and where they are tools for creative expression? It must be emphasised yet again that any kind of creative expression is forbidden for repro photographers, who in this role strictly have to limit themselves to replicating the visual impression the object reproduced makes on viewers.
Either, these photographs do go beyond the limits just mentioned, of reproducing impression, making the photographer’s influence not necessarily creative in the meaning of § 2 UrhG, but at least more than technical and thus eligible for a neighbouring right under § 72 UrhG. In that case, the pictures can hardly qualify as exact depictions, meaning that the photographer didn't deliver what was asked.
Or, the pictures are indeed limited to getting the technicalities right to carry the exact impression of their object, being repro photographs in the proper sense. In that case, however, they can’t qualify as more than technical reproductions – very elaborate reproductions, one might add, that require a lot of expertise to make, but still reproductions.
|Another (happy) Kat in the public domain|
(by Nathaniel Hone the Elder)
Who needs logic if added factors do the trick?
So, how can a tech-and-expertise-only reproduction photo still be covered by a neighbouring right that does not cover mere technical reproductions? The apparent contradiction is solved by invoking an additional criterion. The Court itself, turning to legal scholarship, established in 1989 (I ZR 14/88) the notion that only the first-stage exact photographic depiction taken of any subject is legally worthy of a neighbouring right protection, while further photos taken of this first photo are not and are seen as mere reproductions. This so-called "Urbildtheorie" has no explicit foundation in the wording of the German Copyright Code. It is purely a development of the law (in German "Rechtsfortbildung") through judicial deduction and interpretation. The Court reiterates it in para 23 of the judgment:
(...) Following this [wording of § 72 UrhG], purely technically speaking any procedure is to be considered in which a picture is made by using radiant energy. But the technical process of reproduction alone does not give rise to picture protection. Rather, some basic level of – albeit not creative, but still – personal intellectual contribution is necessary, which usually is already achieved in simple photographies, however is missing in case of pictures that present themselves as mere reproductions of other pictures, which thus only reproduce (copy) a pre-existing picture as precisely as possible. Picture protection requires that the picture be created originally, meaning as an Urbild. [own translation; especially tricky regarding “contribution” for “Leistung” ...]
This theory produces the very unintuitive outcome of the present rem case, at least regarding the photos of paintings, later scanned for upload.
There are paintings made by artists a long time ago, and exact photographic depictions of those paintings, protected under a neighbouring right because they are taken directly from the public domain works in the museum. However, had those artists of old used photography instead of brush and canvas to express their creativity, equally exact photographic depictions of such works of photography would not be covered by related rights. In other words, an exactly matching photo of a painting is protected, while an equally exactly matching photo of a photographic work is not. The logic here, if you want to call it that, provides the dogmatic basis for reaching a decision, but one that in effect undermines the ending of copyright protection terms as defined by § 64 of the German Copyright Code. The depicted works of course remain out-of-copyright works, but all depictions taken directly from them, even the painstakingly exact ones that contain the entire artistic essence and nothing else, are rights protected for decades.
The Federal Court of Justice refers to the legislative materials again when explaining this in paras 26 and 27. Indeed, the lawmaker in the 1960s intended also
 (...) a purely technical contribution [of a photographer to suffice as basis for an exclusive neighbouring right under § 72 UrhG] even if it doesn't require special skills. [own translation]
But that part of the legislative materials did not relate to reproduction photos. And the notion of mere technical reproductions being exempt from rights protection is an empty one if any technical contribution by a person leads to photographic rights. The court was asked by the defendant to teleologically reduce § 72 UrhG accordingly, which means to limit the effect of the statutory rule to what was actually intended by the lawmaker, following the legislative materials. It was unlikely, though, that the court would do this, as it is seen as something like a measure of last resort.
The teleological reduction being so unlikely, the defendant argued in the oral hearing that the photographer must at least be able to make a decision on the subject her photo shows, for neighbouring rights protection to be justified. This central subject decision is one that is by definition not possible with reproduction photos. Instead of a reduction, this would have required a classic interpretation of the term “photography” in the meaning of § 72 UrhG, just as the interpretation leading to the notion that mere technical (though photographic) reproductions are not covered by it. But the court wasn’t prepared to follow this argument either.
A blow for the digital Public Domain and the return of the originality question
All in all, the judgment is perpetuates and deepens the inner contradictions of the "Urbildtheorie", maximises the effect of contractual interdictions in house rules against taking pictures in museums, ignores the European dimensions of harmonised protection terms, and severely hurts the visual public domain in the digital era.
And it puts the decision between un-original and original back on the agenda of future disputes around photographs, which is most probably an unintended outcome.
The only positive feature of the judgment is what makes Tobias call this a pyrrhic victory in his above contribution. The judgment does not reinforce tendencies by the Fifth Senate of the Court to develop a kind of depiction right in property (which in German would be called "Recht am Bild der eigenen Sache"). Such an IP position would wreak havoc in today’s visual public sphere. It would, of course, have been better still, had this judgment sided with scholarship and actively countered those tendencies. That, however, would have put the First Senate in open opposition to the Fifth Senate, which would have called for putting the matter before the Court’s Great Senate, being the forum to solve contradictions between Senates. And there, in the Great Senate, the golden rule is: The Senate that puts the matter forward will lose. So, it’s probably for the better that the First Senate didn’t take this road."
Digitized images of works in the public domain: what rights vest in them? Analysis of the recent BGH Reiss-Engelhorn judgment - Part 2 Reviewed by Eleonora Rosati on Tuesday, February 19, 2019 Rating: