Thu 20. Mar 2025, 15:04
The Federal Court of Justice (BGH) has confirmed in a ruling that the question of copyright infringements under German law on the internet depends on a sufficient domestic connection, in the assessment of which domain endings are also taken into account.
The dispute between a group of companies that manufactures and sells clothing and the defendant based in Germany revolved around 318 images of models wearing clothing and images of clothing that were available as thumbnails via Google image search using the “Site Search” function in 386 cases. The thumbnails led to websites ending in .kz for Kazakhstan and .ua for Ukraine. However, the thumbnails were no longer displayed on these pages. The texts on the websites were written in Cyrillic, although the item descriptions and the reference to the missing images were written in German. During a test order in Kazakhstan, articles were sent there by the defendant. The plaintiff's action for injunctive relief was dismissed at first instance (LG Hamburg, judgment of 16.09.2022, Ref.: 310 O 443/20) and second instance (hOLG Hamburg, judgment of 07.03.2024, Ref.: 5 U 101/22). She appealed to the BGH.
The BGH dismissed the plaintiff's appeal and confirmed the appeal decision of the hOLG Hamburg (BGH, judgment of 05.12.2024, Ref.: I ZR 50/24). The hOLG Hamburg had ruled that German law was applicable (Art. 8 (1) of Regulation (EC) No. 864/2007, Rome II Regulation), as the plaintiff was claiming the infringement of domestic property rights. However, she is not entitled to injunctive relief under Section 97 (1) of the German Copyright Act (UrhG), as there are no acts of making available to the public (Section 19a UrhG) or communication to the public (Section 15 (2) UrhG in conjunction with Section 15 (3) sentence 1 UrhG, Art. 3 (1) of Directive 2001/29/EC on the harmonization of certain aspects of copyright and related rights in the information society) relating to domestic use. The territoriality principle applies, which presupposes an act of use infringing the trademark right in Germany. This must be determined in an overall assessment of the circumstances. The hOLG Hamburg made this assessment without any legal error. In the overall assessment, in particular language, presentation, contact addresses, advertised products, top level domain, area of activity of the provider, users, sales and business contacts in Germany, advertising banners and links to external sites of certain national classification as well as disclaimers can be taken into account.
With reference to previous decisions, the BGH made it clear, among other things, that the mere fact that a website can be accessed in Germany and the consideration that there is always the possibility that non-German-speaking interested parties based in Germany could prefer a foreign website primarily aimed at the non-German market does not constitute a sufficient domestic connection. The top level domains .kz and .ua already indicated that the websites in question were aimed at a public in Kazakhstan or Ukraine and not in Germany. In addition, the information on accessibility by telephone and email had no reference to Germany. The plaintiff had also made a test purchase in Kazakhstan and received a delivery from Germany via the corresponding website. However, the fact that the defendant delivered the ordered goods from Germany abroad said nothing about the orientation of the websites. The German language remnants on the websites also did not lead to any relevant domestic reference. The BGH dealt with further points of the hOLG decision and finally came to the conclusion that there was no domestic connection. Ultimately, it also saw no reason to refer the case to the Court of Justice of the European Union in accordance with Art. 267 (3) TFEU. The BGH therefore dismissed the appeal and ordered the plaintiff to pay the costs.
You can find the judgment (in German) of the BGH of 05.12.2024 (Ref.: I ZR 50/24) at:
https://juris.bundesgerichtshof.de/cgi- ... lank=1.pdf