In 2008, the German legislator introduced a statute which was meant to protect particularly individuals from overreaching claims being asserted in standardized warning letters. Upon multiple criticism, the provision, Sec. 97a of the German Copyright Act, received a first revision in 2013. However, the question of how to interpret the law remained in dispute. Last week, Hogan Lovells obtained a first ruling of a second instance court clarifying various aspects of the section in question (Higher Regional Court of Frankfurt, Case Ref.: 11 U 73/14).

the right holder may, to some extent, go beyond what was the actual infringement that gave rise to the dispute

First, the appeal judges made it clear that in a warning letter the right holder may, to some extent, go beyond what was the actual infringement that gave rise to the dispute. The threshold to look at is the substantive scope of claim he may put forward. In this context, it must be noted that any copyright infringement does not only bring about the risk of repetition. Rather, it sets cause for the risk that related infringements will occur. For instance, the offering of a counterfeit work also triggers the risk of the sale of such counterfeit. Therefore, a warning letter and accompanying cease and desist letter may rightfully address not only the offering but also the sale even if the right holder has no proof of actual sales yet. Thus, such a scenario would not constitute an overreaching warning letter.

Further, despite the ambiguous wording of Sec. 97a (2) No. 4 of the German Copyright Act, the right holder is not required to make any explicit statement clarifying that there is no overreaching element in the warning letter. Fortunately, the appeal court of Frankfurt makes it perfectly clear that such interpretation of the law would be adequate and fair in spite of certain commentaries which had previously argued that such negative statements were mandatory.

Finally, the court emphasizes that there is no explicit language the right holder must use when issuing a warning letter. Rather, the overall message needs to be adequately clear in terms of;

  1. what is the infringing action at issue?
  2. what is the infringer required to do?
  3. what will be the consequence of the infringer completely disregarding the warning?

In conclusion, it is fair to say that the now rendered decision is an important step towards more legal certainty and predictability in litigious copyright matters. The position of right holders is fostered and guidance is given on how warning letters need to be drafted in order to address the infringing matter in due course.