In five parallel proceedings against Google and ISPs using search engines of different providers, the Hamburg Regional Court decided that an image search facility infringes German copyright law (308 O 42/06, 308 O 248/07, 308 O 115/06, 308 O 113/06, 308 O 404/06). The Regional Appeal Court in Jena used similar arguments in its judgment against Google on 27 February 2008 (Reference number 2 U 319/07). In this judgment, the Regional Appeal Court in Jena questioned the legitimacy of image searches. However, on the facts of the cases it did not accept the claims of the image rightholder. The Hamburg Court did grant the rightholders an injunction. However, the injunction is not immediately binding and is only enforceable against payment of a security of €100,000,000. Google has filed an appeal against this judgment and this issue is expected to be finally decided by the German Federal Court of Justice.

Background

As part of their image searches, Google and other providers provide thumbnails of pictures available on the internet to users searching for images by entering various search terms. In common with most copyright laws, the German Copyright Act does not include specific provisions covering search engine activities. Consequently, the legitimacy of the image searches has been discussed in Germany for quite some time. However, there have been few cases in this area. The scarcity of cases may be attributable to the view that search engines are generally in the public interest. Additionally, rightholders are less likely to complain of an infringement as they have chosen to provide their images on the internet. However, this issue has now been addressed by the recent judgments rendered by courts in Jena and Hamburg. If the opinion of the Hamburg Court is finally confirmed by the Federal Court of Justice, German copyright law may need to be changed to avoid the possibility of image search providers having to cease their services in Germany.

Reasoning of the Hamburg Court

The Hamburg Court held that it had jurisdiction to decide this case. It held that whether the actual upload of the thumbnails takes place in Germany is not decisive in establishing whether the Court has jurisdiction. As Google US was making its image search publicly available in Germany, the German Court had jurisdiction.

The Hamburg Court stated that copying and making a picture publicly available, even if only in a minimised form, was a relevant restricted act under the German Copyright Act. The rightholder’s rights in the original pictures extended to a right of relevant use in the thumbnail. This is because the characteristics of the original which are protected by copyright are still visible in a thumbnail. The Court stated that the image search provider undertakes a relevant act under the German Copyright Act when it makes the thumbnails stored on its server, publicly available in its lists of image search results. Providing an image when a user clicks on it is not a relevant act as individuals link to the actual images shown by the providers hosting the images in that situation. Although the sites appear within a Google frame, Google only provides links to the sites.

As a result of the Court’s decision that the provision of the search results (and thumbnails) is a relevant act, the image search will only be legal either if the rightholders consented to it or if a statutory exemption applies.

It has been argued that an implied consent must be assumed if rightholders provide content on the internet and do not use any mechanism to prevent pictures from being found by search engines and uploaded onto the search engine servers. It is considered that it can be assumed that it is in the interest of rightholders to be listed in image searches. Failure to use protection mechanisms (which are easily available) would confirm that in each individual case the rightholder was happy for their images to be searched. However, the Hamburg Regional Court did not follow this view. It argued that, at least in the case before it, no implied consent could be assumed as the rightholder did not put the images on the internet itself. The rightholder had instead allowed a third party to use them on its website. The Court argued further that the third party’s failure to use protection such as robots.txt file settings could not be seen as an indication of the rightholder’s implied consent.

In this respect, the decision of the Hamburg Court is specific to its facts, as it does not address cases where rightholders place the content on the internet themselves, where there would be more room to argue that an implied consent exists. However, there are still many situations where a third party, not the rightholder, will be providing the content on the internet. In these cases, the argument of the Hamburg Court would apply which may present image search providers with a problem if the decision is upheld.

The Hamburg Regional Court decided that no statutory exemption applied. When evaluating the application of statutory exemptions under the German Copyright Act, courts adopt a narrow interpretation of exemptions to protect the interests of the copyright owners. There are a few limited exceptions to this general principle. The Hamburg Court examined the various statutory exemptions on which the providers inter alia based their defence, but came to the conclusion that none of the exemptions applied in this case. Due to the narrow interpretation of exemptions, the court also refused to apply an exemption mutatis mutandis. As the German Copyright Act does not contain a general fair use or fair dealing exemption, the Hamburg Regional Court held that it could not take into account the public interest in the image search (which it conceded existed with respect to image searches) when considering rightholders’ rights.

Consequently, the Court held that the rightholder had a claim against the image search providers to cease and desist from providing pictures covered by their rights to the public in Germany via their image search engines. The Court expressly regretted that it “was obliged” to render such judgment, but stated that the German Copyright Act did not make it possible for it to render a different judgment. Its view was that the legislator, not the courts, must change the law to permit image searches. The court acknowledged that its judgment jeopardises the existence of Google’s image search in Germany and therefore only allowed enforcement of the cease and desist order against payment of a security of €100,000,000. In practice, the judgment will not be enforced. Furthermore, the case is currently on appeal to the Hamburg Appeal Court, although obtaining a final decision is likely to take a number of years.

Evaluation of the judgment and practical effects

German courts, in particular the German Federal Court of Justice, have in the past adopted a more creative approach, balancing the public’s and end users’ interests against the rightholders’ interests, than the Hamburg Regional Court has done in this case.

There are two cases where the German Federal Court of Justice has extended the limits of the normal application of copyright exemptions in relation to new forms of use and applied statutory copyright remuneration claims as compensation (judgments of 25 February 1999 “Kopienversanddienst”, reference number I ZR 118/96, and of 11 July 2002 “Elektronischer Pressespiegel”, reference number I ZR 255/00). In the Kopienversanddienst case, the Court invented a new copyright remuneration claim. In this case, the Federal Supreme Court allowed copies of books to be sent from public libraries to users under the private copying privilege, arguing that there was a public need for copies to be sent. The Court also argued that rightholders could be compensated by the application of a statutory copyright remuneration to be paid to copyright collecting societies. An image search is in fact closer to the private copying privilege than libraries sending copies of books to the public. Arguably, search engines are equally important for the general public and cause less harm to the rightholders. Considering both German copyright law and the general balancing of interests under the German Constitution, the Google image search seems to be a much clearer case for extending the law than the disputed judgments of Kopienversanddienst and Elektronischer Pressespiegel.

It is possible that the upper courts will not follow the view of the Hamburg Regional Court and instead allow the Google image search, or at least allow it against some form of statutory remuneration. However, if the decision of the Hamburg Regional Court prevails and if there is no change in the law, the ability to provide image search facilities in Germany will be threatened - a situation which is arguably against the public interest.