A. Introduction
1 The Creative Commons licence is used millions of times over for the licensing and distribution of works of all kinds, not only by private individuals, but also by institutions, public broadcasters, etc. The basic idea behind the Creative Commons licence and thus also behind the respective authors who use it is that works should be as easily accessible as possible and thus find wide distribution . On the other hand, the author's decision to use a Creative Commons licence does not mean that they waive all their rights arising from the creation of the work and that the licensees can do whatever they want with the work . On the contrary, the free granting of rights of use is not unconditional; rather, the Creative Commons licence sets certain framework conditions that become binding on the licensee upon conclusion of the licence agreement. The author (and licensor) regularly grants the licensee a certain marginal benefit of the doubt by releasing their work to the public in conjunction with an offer to conclude a licence agreement, usually without further restrictions and without knowing the identity of future licensees. This means that, unlike in most other (legal) areas, As a result, unlike in most other (legal) areas, it is normal for Creative Commons licences that the licensors do not initially know their licensees and therefore have virtually no control over how their work is used and utilised.
I. Framework conditions
2 However, this finding does not stand alone, because the Creative Commons licence, as a contract between the licensor and the licensee, imposes certain requirements on the manner of use, such as the attribution of the author (see section 3.a). The respective requirements differ fundamentally depending on which licence the author has chosen. For example, a CC BY licence gives the user more freedom than, for example, a CC BY-NC-ND (Non-Commercial, No-Derivatives) or CC BY-SA-NC (ShareAlike, Non-Commercial) licence. Nevertheless, what all licences have in common is that the licensee is not completely free to use the work as they wish.
3 This raises the question of how the licensor can respond to violations of the terms of the Creative Commons licence: Are they completely powerless in this regard, or can they enforce compliance with the licence terms? And if so, how, with what goal, and with what prospects of success?
4 The answer to this question can be found, on the one hand, in contract law, since the licensor and licensee have entered into a contract with the Creative Commons licence (see CCPL Einl Rn. 5). On the other hand, the Creative Commons licence is based on experience with open source licences and grants the licensor more extensive rights that derive directly from their work. The second pillar of legal enforcement is therefore copyright law, which is particularly relevant in this case because the licensee automatically and immediately loses the right of use originally granted to them under Section 31(1) sentence 1 UrhG (German Copyright Act) in the event of a breach of the terms of the licence agreement right of use granted to it under Section 31 (1) sentence 1 UrhG automatically and immediately (see section 6 margin numbers 2, 11, 14, 20),
II. Enforcement and CC Enforcement Principles
5 As we have seen, the licensor does have claims and can also enforce them. In principle, it can assert its claim directly in court if it has first gathered all the necessary information, in particular the identity of the licensee (who has violated the licence terms). In practice, however, this will tend to be the last resort. It is more common to address the licensee directly before taking legal action, It is more common to contact the licensee directly before taking legal action, either informally by pointing out the use in violation of the licence terms or – possibly as a further escalation step – by means of a warning letter from a solicitor, which, however, already incurs costs, whereby it may then be disputed who is to bear these costs (on warning letters, see paras. 23, 61, 69).
6 In this regard, the licensor should note that in many cases a breach of the licence terms is not based on malicious intent. It may be that the licensee was not even aware that they were only permitted to use the work under the terms of the licence, for example because they found it "somewhere on the internet" and did not give any further thought to the conditions for its use.
B. Enforcement in detail
7 As described above, Creative Commons licences attach certain conditions to the use of the works. If these are violated, this constitutes a breach of contract on the one hand and, on the other hand, due to the link between the right of use and compliance with the licence conditions (section 6, margin note 11), gives rise to legal claims under the Copyright Act (UrhG). As a result, even in the event of a breach of conditions to which there is only a contractual claim, e.g. the obligation to add a link in addition to the attribution and to include a reference to the licence conditions, the claims under Sections 97 et seq. UrhG can be asserted. Since these are usually more effective, only the statutory claims and their enforcement will be discussed in detail here, and not the contractual claims.
I. Claims
8 A violation of rights under the UrhG gives rise to a series of statutory claims pursuant to Sections 97 et seq. UrhG. The most relevant in practice (including for Creative Commons licences) are discussed below. 1.
1. Injunction and removal
9 By far the most important claim (in the entire field of industrial property rights) is the claim for cessation and removal, which arises in particular from Section 97 (1) UrhG. The author can thus ensure that the further use that is complained of as infringing the law is no longer continued. Violations of a corresponding court decision can be enforced by coercive measures pursuant to Section 890 ZPO (German Code of Civil Procedure). However, the claim for cessation does not only include the (pure) cessation of the infringing act, but also the removal of a disruptive situation.
10 Risk of repetition. The injunction claim is directed towards the future; it does not cover past infringements. One element of the injunction claim is therefore the risk that the infringement will be committed again, the so-called risk of repetition. If the licensee commits an infringement, the risk of repetition is is generally presumed. This presumption is only ruled out under special circumstances. In particular, it cannot generally be dispelled by the cessation of the infringement. Rather, it is necessary for the licensee or infringer to issue a (sufficiently) penalty-backed cease-and-desist declaration.
11 Risk of repetition and revival clause. The influence of the revival clause (Section 6.b) introduced in version 4.0 of the Creative Commons licence on the risk of repetition required for a claim for injunctive relief remains unclear. On the one hand, according to Section 6.a, the right of use granted expires as soon as the terms of the licence agreement are violated (see Section 6, margin note 14 et seq.). On the one hand, according to Section 6.a, the granted right of use expires as soon as the terms of the licence agreement are violated (see Section 6, margin note 14 ff.). On the other hand, the right of use is to be automatically revived if the licensee remedies the infringement within 30 days of becoming aware of the infringement. The licensee can therefore legalise its future use by ceasing the infringement. However, it was already possible in the previous versions to accept the licensor's offer (which still existed and was linked to the work) to conclude a licence agreement again after ceasing the infringement and thus regain the right of use (for more details, see section 6 margin note 28). It is questionable whether this also eliminates the risk of repetition. This could be contradicted by the provision in section 6.b, subparagraph 2 of the CCPL, according to which the licensor's rights to demand compensation for the infringement of rights should not be restricted. However, it is unclear whether an injunction can be regarded as "compensation" in this sense. In our opinion, as is otherwise the case in industrial property law, the risk of repetition should only cease to exist if the infringement is discontinued.
2. Attribution
12 A very important part of (continental European copyright law) is the right to attribution under Section 13 (1) of the German Copyright Act (UrhG), which exists as a consequence and special manifestation of the right of authors to recognition of their authorship of the work.
3. Damages
13 In addition to injunctive relief, the most important claims are those for damages under Section 97(2) UrhG. Both are usually asserted together.
14 Triple calculation of damages. A special feature of copyright claims, which is also important when using Creative Commons licences, is the method of calculating damages. In copyright law (as in many areas of industrial property law), the so-called triple damage calculation applies. The author infringed by a third party can choose to calculate their claim in three different ways: They can (1) demand the infringer's profit, i.e. what the unauthorised user has gained from the exploitation of the work, or (2) the damage actually suffered, in particular in the form of lost profits, and (3) finally, the author can calculate the damage according to the principles of licence analogy.
15 When calculating damages according to the licence analogy, all aspects that would also have influenced the amount of remuneration in free licence negotiations must be taken into account in accordance with the case law of the Federal Court of Justice.
16 Licence analogy for Creative Commons licences. Based on these principles and assuming the usual licensing practice for a work under a Creative Commons licence, it must be noted that it is precisely the nature of Creative Commons licences that the right of use is granted free of charge . The obvious licence fee based on the above case law of the Federal Court of Justice is therefore initially zero, which is the view taken by the Higher Regional Court of Cologne, among others.
17 Nevertheless, it should not be assumed that the licence damage incurred when using a work licensed under Creative Commons in violation of the licence terms or, where applicable, even only one part thereof, should always and in all cases be set at zero. This is because, even if the right of use is granted free of charge under the Creative Commons licence, the granting of the right of use is subject to certain conditions, which may have an economic value of their own, but which is difficult to quantify.
18 The examples show that the quantification or estimation of the damage within the framework of the licence analogy would not be without foundation if it were higher than zero would not be without foundation and – assuming a corresponding submission – would not be "up in the air". Accordingly, it is also argued that in principle, a certain, albeit relatively low, value should be set for damages in the event of a breach of the Creative Commons licence terms .
19 In practice, it will ultimately depend largely on the licensor's submission.
20 Damage and cure clause. As outlined above, section 6.b of the Creative Commons licence from version 4.0 onwards contains a clause according to which the licence granted, which has been revoked due to a previous infringement, is reinstated if the infringement is remedied within 30 days of becoming aware of the infringement. However, section 6.b does not preclude the assertion of claims for damages, as section 6.b (2) does not restrict the licensor's rights to compensation. 4.
4. Information
21 Creative Commons licences do not contain any special provisions regarding the licensor's right to information. Therefore, statutory claims must generally be relied upon. In conjunction with § 242 BGB, however, the licence agreement also provides a basis for claims for information.
22 Section 101 UrhG stipulates that in the event of a copyright infringement on a commercial scale, the author may demand information about the extent of the infringement. In cases of obvious infringement pursuant to Section 101 (2) UrhG, this claim also applies against third parties, e.g. host providers or access providers, and, according to Section 101(7) UrhG, even by way of interim legal protection (marginal no. 46 ff.). Since Section 101 UrhG does not affect other claims for information,
5. Reimbursement of warning costs; cease-and-desist declaration
23 In the case of industrial property rights, warning letters are often issued in order to remedy an infringement before legal proceedings are initiated, thereby avoiding time-consuming and costly proceedings. Whereas in the past, reimbursement of the costs of the warning letter could be demanded on the basis of the principles of agency without authority pursuant to Sections 683, 670, 677 of the German Civil Code (BGB),
The [name of the infringer] undertakes – without acknowledging any legal obligation, but nevertheless in a legally binding manner – towards [name of the rights holder] to refrain from any culpable infringement, to refrain from [specification of the infringement].
[specification of the infringement].
a) Requirements
24 According to Section 97a (2) sentence 1 UrhG, the warning letter must clearly and comprehensibly (No. 1) state the name or company name of the injured party if the rights holder is not issuing the warning itself but through a representative, (No. 2) describe the infringement in detail,
b) Capping of warning costs
25 In principle, according to Section 97a (3) sentence 1 UrhG, the costs of the warning letter are to be reimbursed if it is justified, i.e. to the extent of the legal fees, which are usually calculated according to the RVG and depend on the value of the matter in dispute (cf. on the value in dispute, see below, para. 62). However, if the warning is issued to a natural person who does not use the work for their commercial or self-employed professional activity – as will often be the case with the use of works under a Creative Commons licence – and if the person receiving the warning is not obliged to refrain from further use, for example by virtue of a cease-and-desist agreement, then the claim for compensation is capped at a claim based on a value in dispute of 1,000,- € for the cease-and-desist claim. Again, there is an exception to this rule in cases where the capped value in dispute is unreasonable under the specific circumstances of the individual case.
c) Defence
26 If the warning letter is unjustified or invalid pursuant to Section 97a (2) sentence 2 UrhG, the person who received the warning letter may demand reimbursement of the costs incurred for legal defence against the warning letter pursuant to Section 97a (4) sentence 1 UrhG.
d) Response to warning letter in case of infringement; cease-and-desist declaration; CC BY 4.0
27 If the licensee was rightly warned by the licensor, i.e. if there was a breach of the licence, it goes without saying that this breach should be stopped immediately. In the case of a Creative Commons licence version 4.0, if the licensee ceases the infringement no later than 30 days after becoming aware of the infringement, i.e. as a rule 30 days after receiving the warning letter, they will benefit from a renewed licence in accordance with section 6.b . However, as explained above (para. 11), this remedy should not eliminate the risk of repetition, meaning that a cease-and-desist declaration with penalty clause may still be required. 6.
6. Contractual penalty for breach of cease-and-desist declaration
28 If the licensor has issued a warning to the user due to a breach and the user has issued a cease-and-desist declaration with penalty clause in order to avoid a legal dispute, the licensor may, in the event of a (repeated and culpable) breach, demand payment of the agreed contractual penalty. This also applies to Creative Commons licences and irrespective of the fact that the licence-related damage is usually zero.
29 In principle, the licensor can demand payment of the agreed contractual penalty for each individual repeat infringement. What exactly constitutes a single infringement must be considered on a case-by-case basis, with the criminal law principles of unity of action and plurality of actions applying in essence. Put simply, an act exists when action is taken on the basis of a decision to act. The same applies to commission by omission. In the case of infringement of rights via the internet, particularly by omission, there will usually only be a single act of infringement in a single act, even if the work has been offered on the internet over a longer period of time and downloaded by several people.
7. (No direct) influence of the enforcement principles
30 The Creative Commons Enforcement Principles outlined above have not yet been discussed in relevant case law, which may be due to the fact that they are still relatively new. Regardless of this, however, they are unlikely to have any (direct) influence on the enforcement of rights or the relationship between licensor and licensee. On the one hand, they are not part of the licence agreement and are not otherwise directly included in the agreement. However, they also have no indirect effect on the agreement. Case law has, for example, assumed an indirect effect with regard to eBay's terms and conditions, which were agreed for buyers and sellers only in relation to eBay itself. [47]
II. The court proceedings
1. Jurisdiction and applicable law
31 If a claim is to be enforced in court, the competent court must first be determined.
a) International jurisdiction
32 First, it must be clarified whether the German courts have international jurisdiction. Of particular importance for international jurisdiction in the case of tortious jurisdiction for copyright infringements are Section 32 of the German Code of Civil Procedure (ZPO) and EU Regulation 1215/2012 (Brussels Ia Regulation), which applies to cases where the defendant has their place of residence or business in the European Union. According to Art. 4 (1) Brussels Ia Regulation, legal action must generally be brought in the country where the defendant is domiciled. However, the special tortious jurisdiction under Art. 7 No. 2 Brussels Ia Regulation, according to which legal action can also be brought at the place of success and the place of action Brussels Ia Regulation, according to which legal action may also be brought at the place of success and action, i.e. at the place where the damage occurred and at the place where the event causing the damage occurred. In this respect, it is not necessary for a website to be directed at a specific country or for a website to be "intended" to be accessed there .
b) National local jurisdiction
33 The determination of the nationally competent court is governed by the general rules (for local jurisdiction, see Sections 12 et seq. ZPO). According to these rules, actions must generally be brought at the place of residence of the defendant (Section 12 ZPO). If contractual claims (e.g. for payment of an agreed contractual penalty
c) Subject-matter jurisdiction
34 It must then be clarified whether the claim is to be brought before the local court or the regional court (so-called subject-matter jurisdiction). In this respect, the jurisdiction based on the value in dispute jurisdiction pursuant to Sections 71(1) and 23(1) of the German Courts Constitution Act (GVG): up to a value in dispute of 5,000,- € the local courts have jurisdiction, above that amount the regional courts have jurisdiction (for the determination of the value in dispute, see margin note 62 f.), although there are plans to raise this limit to 8,000,- €.
d) Applicable law
35 The next step is to determine which law is applicable to the specific case. It cannot be ruled out that a German court may apply foreign law and not only German law. The starting point for the examination is Art. 3 EGBGB, which primarily refers to provisions of European Union (in particular the Rome I Regulation (EC) 593/2008 for international contract law and the Rome II Regulation (EC) 864/2007 for non-contractual obligations) and international treaties. If there are no such provisions, Art. 3–49 EGBGB must be applied. Specifically with regard to international copyright law, which is primarily relevant here, there is no comprehensive regulation to date. However, according to Art. 8 (1) Rome II Regulation, infringements of intellectual property rights and the resulting legal consequences are to be governed uniformly throughout Europe by the law of the state for which protection is claimed. This so-called country of protection principle ultimately leads (at least for tortious claims such as copyright infringements) to German (copyright) law being applicable if copyright protection is sought before a German court for the territory of the Federal Republic of Germany.
36 For contractual claims, on the other hand, the so-called contract statute applies. According to Art. 3 of the Rome I Regulation, the parties are in principle free to choose the law to which they wish to subject their contractual relationship. The Creative Commons licences do not generally provide for a choice of law clause. This is sometimes different for ported licences (see Einl Rn. 43, 48; VorCCPL Rn. 36), e.g. the CC BY Attribution 2.0 DE, which stipulates the application of German law in Section 8.f. It is also conceivable that a choice of law may be made in the context of a cease-and-desist agreement following an infringement. However, such a choice of law may be excluded vis-Ã -vis consumers pursuant to Art. 6 of the Rome I Regulation, at least insofar as the application of German law on general terms and conditions is concerned.
2. Right to sue
37 The right to sue, i.e. the (procedural) right to bring legal proceedings, is rarely problematic. As the copyright holder and injured party, the author undoubtedly has this right. [66] The same applies to a foreign copyright holder.
3. Formulation of the application
38 An important decision in any (civil) court proceedings is the filing of the application, because it determines – together with the underlying facts – what specifically is being disputed. Formulating this application is not always easy, because the application must comply in particular with the requirements of Section 253 (2) No. 2 ZPO, namely the principle of specificity.
a) Payment
39 If only the payment of a specific amount of money is sought, for example, damages for copyright infringement, this does not pose a major problem. The application seeks to order the defendant to pay the claimant an amount X.
b) Injunction
40 The wording becomes significantly more complex if a specific behaviour is to be prohibited. In principle, the application is for a specific infringing act to be prohibited under threat of legal sanctions.
41 An example of such an application could read as follows:
It is requested that the defendant be ordered to refrain from any further infringement, under penalty of a fine to be determined by the court for each case of infringement of up to 250,000,- € or alternatively, imprisonment for up to six months or imprisonment for up to six months (administrative fine in individual cases not exceeding 250,000,- € administrative detention not exceeding two years) to refrain from using the [work/image/video, etc.]
[ Insertion of (original) image or similar; alternatively "according to Annex K2" ]
publicly accessible without naming the plaintiff with the designation "XYZ",
if this occurs as shown in Annex K1.
c) Damages and information
42 If a specific amount is claimed as damages, this must be specified in the application. Since, in the case of infringement of industrial property rights, damages can be calculated in three different ways (see margin note 13 ff.) and, on the other hand, the amount is often not yet determined when the action is brought, it is customary to file an application for a declaration of liability for damages, usually in accordance with Section 254 of the German Code of Civil Procedure (ZPO), combined with a request for information by way of a staged action,
It is requested that
1. [Application for an injunction]
2. that the defendant be ordered to provide information on the period during which the work referred to in application 1 was made publicly available,
3. to declare that the defendant is obliged to compensate the claimant for the damage caused by the action referred to in application 1. .
43 Once the requested information has been provided, the next step is to quantify the claim in claim 3.
d) Negative declaration
44 If a warning letter has been issued that may be (partially) unjustified, the person who received the warning letter may defend themselves against it by bringing an action for a negative declaration (see para. 55 f.). The application is directed in each case to the fact that the conduct demanded in the warning letter (e.g. cessation, damages, reimbursement of warning costs) is not owed. An application could therefore read as follows, for example :
It is requested
1. to declare that the plaintiff is not obliged to refrain from making the work [insertion of the image] publicly available on the internet without the appropriate permission ,
2. that the plaintiff is not obliged to pay the defendant an amount of X‚¬ € as damages,
3. to declare that the plaintiff is not obliged to reimburse the defendant for the costs of legal proceedings in the amount of a 1.3 business fee based on a value in dispute of Y,- €.
45 If the conduct demanded by the party issuing the warning in the warning letter is not sufficiently specific, it is advisable to refer to the warning letter – which is, of course, attached – in the application.
4. Preliminary injunctions
a) Interim injunction proceedings
46 In the case of infringement of industrial property rights, it is not unusual for infringing acts to be challenged in summary proceedings pursuant to Sections 936, 916 ff. ZPO (German Code of Civil Procedure). In this respect, preliminary injunction proceedings serve to remedy infringements of rights at short notice and by way of a provisional ruling in a somewhat simplified procedure. Since summary proceedings only serve to make provisional rulings, they almost exclusively concern injunction applications. However, claims for damages cannot be asserted due to the prohibition of anticipating the main issue (in summary proceedings). In the case of an obvious infringement of rights pursuant to Section 101 (1), (7) UrhG, it is also possible to a certain extent to assert claims for information. However, since further information is generally required to calculate the claim for damages pursuant to Section 242 BGB, However, since more detailed information is usually required for the calculation of the claim for damages pursuant to Section 242 BGB, this is usually not done in summary proceedings unless – as in the case of product piracy, for example – the aim is to quickly uncover distribution networks.
47 Usually – and this will be the normal case for infringements of works under Creative Commons licences – the infringer will first be made aware of the unlawful use, for example by means of a warning letter. Only if the infringing activity is not then discontinued and a cease-and-desist declaration with penalty clause is issued should summary proceedings be initiated. Under certain conditions, the court seized may decide by order, i.e. without oral proceedings, in accordance with Section 937 (2) of the German Code of Civil Procedure (ZPO). If necessary, it must first hear the other party (usually in writing).
b) Urgency
48 In addition to a claim, which is of course also required in the main proceedings (referred to as a claim for an injunction in summary proceedings, cf. Sections 936, 916 ZPO), a so-called reason for the injunction is required for the issuance of a preliminary injunction, cf. Sections 935, 940, 917 ZPO. This is the case if, without the urgent order, the claim would be thwarted or made significantly more difficult. It is therefore necessary to ask whether the applicant would suffer any disadvantages if the case were referred to the (possibly time-consuming) main proceedings. This is also referred to as urgency. It is particularly important to determine whether the applicant reacted sufficiently quickly after becoming aware of the infringement and initiated the urgent proceedings. In the case of specialised courts (due to the concentration of jurisdiction in the federal states), so-called standard periods are assumed for this purpose, which range from four weeks to two months from the time the infringement became known. If this period is exceeded for good reason, this should be explained directly in the urgent application. In all other respects, too, the applicant must proceed swiftly at all times in order to show that the matter is urgent .
49 A distinction must be made between the question of urgency and the risk of repetition (see para. 11 above). While the risk of repetition can in principle only be eliminated by submitting a cease-and-desist declaration with a penalty clause, this does not automatically apply to the question of whether there are grounds for an injunction. This is because urgency requires a continuing infringement or a repetition in the near future.
c) Urgency and revival clause
50 Another problem for the grounds for the injunction may be the resurgence clause included in section 6.b.1 since version 4.0 of the CCPL (see above, para. 11 and section 6, para. 14 et seq.), whereby the legalisation of future conduct was probably already possible in the older versions of the Creative Commons licences (see section 6, para. 14 et seq.). This is because if the licensee can legalise further use by ceasing to violate the licence terms, it could be assumed, in view of the provisions expressly provided for in the licence terms, that this also affects urgency and that the licensor – similar to the "Trainerfoto" case of the Higher Regional Court of Cologne
51 If the urgent application was filed while the period under Section 6.b.1 was still running and the licensee then ceases the licence infringement, it should be considered – in view of the possible lapse of the grounds for the injunction – to declare the declare the urgent application pursuant to Section 91a ZPO to be settled and to submit the application to impose the costs of the urgent proceedings on the licensee.
52 Another aspect of the ongoing proceedings after the expiry of the 30-day period in Section 6.b.1 is the provision in Section 6.b.2, which allows the licensor to "reinstate the licensee's licence", which essentially means granting the right of use again under the terms of the licence agreement (for more details, see Section 6.b.2 margin note 20 f.). This option is available at any time during ongoing proceedings, for example as part of a settlement agreement between the parties.
d) Substantiation
53 Another special feature of interim injunction proceedings is the change in the admissible evidence and the standard of proof. According to Section 294 (1) ZPO, on the one hand, prima facie evidence can be provided by means of an affidavit, and on the other hand, contrary to Section 286 ZPO, it is sufficient for prima facie evidence that there is a predominant probability that the respective assertion is true.
e) Proceedings
54 The summary proceedings are initiated by a corresponding written application (for the wording of the application, see above para. 41 ff.). The court's decision must be served by the applicant itself on the respondent (in accordance with Sections 191–195 ZPO) within one month (in full and effectively) (Sections 936, 929 (2) ZPO). If it fails to do so, the interim injunction must be lifted for this reason alone. If the court has decided by means of a ruling, the respondent may lodge an objection against this (Sections 936, 924 ZPO), which the court must hear orally.
5. Negative declaratory action
55 If the licensor has issued a warning to the licensee for a possible breach of the licence terms, the licensee may defend itself with legal representation and demand reimbursement of costs if the warning was unjustified or invalid (see above, para. 23). In addition or independently of this, if the user believes that the warning letter was (possibly partially) unjustified, they may bring a negative action for a declaratory judgment. This is aimed at establishing that the person issuing the warning is not entitled to the claim asserted. The interest in a declaratory judgment required for this pursuant to Section 256 (1) of the German Code of Civil Procedure (ZPO) exists due to the warning previously issued (for the wording of the application, see above para. 38 ff.).
56 In the case of a negative declaratory action, there is another special feature to be noted: it is subsidiary to the positive action for performance, i.e. the action aimed at the respective performance (asserted in the warning letter ). It is therefore not unusual for the person who has received the warning to first bring an action for a negative declaration and then for the person issuing the warning (possibly even at another court with jurisdiction under Section 32 of the German Code of Civil Procedure (ZPO)) to sue for performance. In this case, the interest in a declaration under Section 256 (1) ZPO for the negative declaratory action ceases to apply. The person who has been warned (and is bringing a negative action) will then have to declare their legal dispute settled in accordance with Section 91a ZPO to the extent that the positive action for performance and the negative action for a declaratory judgment coincide, i.e. usually in full.
6. Burden of proof and presentation
a) Principle of production
57 German civil proceedings are structured as adversarial proceedings. According to the principle of production, the parties must therefore present the facts to the court. For this purpose, civil procedure law provides for a complex system of burden of presentation and burden of proof, the specific form of which often determines the outcome of a case because difficulties in providing evidence ultimately burden the party concerned .
b) Right to sue
58 In particular, the plaintiff must first demonstrate its standing to sue, i.e. the circumstances under which it claims to be able to assert a right. In the case of the licensor, it must therefore demonstrate and prove that the work licensed to the licensee under a Creative Commons licence originates from it, i.e. that it is the author or holder of an exclusive right of use. This is made considerably easier by the presumption rules under Section 10(1) UrhG (presumption of authorship) and Section 10(3) UrhG (presumption of an exclusive right of use), which apply if a copyright notice is affixed to the work in the usual manner. Section 3.a.1.A.ii of the CCPL expressly stipulates that any existing © notice must be retained. In the case of texts, this copyright notice will usually be the author's name or corresponding designations in the imprint (as is also the case with websites). In the case of images and photographs, it depends on the image credits (e.g. the © notice),
c) Passive legitimacy
59 The passive legitimacy, i.e. essentially the infringing act, must also be demonstrated and proven by the plaintiff. In the case of acts committed via the internet, this is usually done by submitting corresponding screenshots.
d) Rights of use and defences
60 If the defendant invokes the granting of a right of use, for example by concluding a Creative Commons licence, they bear the burden of proof and presentation both for the alleged granting and for its scope and extent.
e) Capping of warning costs
61 If the person who has received the warning letter asserts that the costs of the warning letter are capped in accordance with Section 97a (3) sentence 2 UrhG (see margin note 25 above), they bear the burden of proof and presentation.
7. Amount in dispute and fees
62 The costs of legal proceedings are determined in particular by the value of the claim to be assessed for the proceedings. In the case of claims for payment (e.g. for damages or payment of a contractual penalty), the amount claimed in each case is to be assessed. For copyright injunctions, a value of several thousand euros is often assumed.
63 For claims for information and damages, a fraction of the value in dispute for the injunction is usually set. If the costs of the warning letter are claimed, these have no effect on the value in dispute if they are claimed in addition to the injunction claim. In this case, it is a secondary claim within the meaning of In this case, it is an ancillary claim within the meaning of Sections 4 ZPO, 43 GKG. Otherwise, the specific amount is set. The value in dispute of the preliminary injunction proceedings is usually set at 2/3 of the value in dispute of the main proceedings.
III. Defence
64 If you are confronted with injunction proceedings, a lawsuit or a warning letter, the question arises as to how to deal with this appropriately. If the claim is justified in terms of the matter and the amount, immediate acknowledgement in accordance with § 93 ZPO (German Code of Civil Procedure) in order to minimise costs; in the case of a warning letter, immediate cessation of the infringing activity and the submission of a timely cease-and-desist declaration with a penalty clause, together with reimbursement of the justified costs (see above: Requirements for warning letters; reimbursement of warning costs) in accordance with § 97a UrhG (German Copyright Act), can avert legal proceedings . By submitting a cease-and-desist declaration, one enters into a contract with the licensor that provides for a contractual penalty if the infringement is repeated. The risk of repetition ceases as soon as the declaration is received by the party issuing the warning.
1. Abuse of rights
65 As already explained above (see section 6, para. 19), it cannot be ruled out that copyright claims may be used in a manner that is not in accordance with the legal system, i.e. that constitutes an abuse of rights. Such Such an abuse of rights is often considered when a right is asserted multiple times, e.g. by issuing many warnings in a short period of time. However, this alone is not sufficient, because if a right is infringed multiple times, the right holder may, in principle, defend itself against all these infringements.
66 Abusive behaviour generally means that compensation for the costs of the warning letter is not owed, because in this case the warning letter is not considered justified.
67 Whether conduct constitutes an abuse of rights depends on the individual case. Competition law contains a specific provision on when an abuse of rights can be assumed (Section 8c UWG, formerly Section 8(4) UWG). However, Section 8c UWG is not applicable to copyright law, not even by analogy . On the other hand, the general prohibition of the unlawful exercise of rights under Section 242 BGB also applies in this respect, whereby the legal principles developed in competition law can (nevertheless) be invoked here for the assertion of copyright claims.
68 These principles can be applied to warnings for violations of Creative Commons licences. In cases involving a Creative Commons licence, the Würzburg Local Court assumed that the rights holder in that case had to reimburse the costs of defending against a warning letter pursuant to Sections 826, 249 of the German Civil Code (BGB) because it was convinced that the rights holder systematically wrote to users of its images in order to make excessive claims against them in the form of damages.
2. Defence against warning letters
69 If a warning letter has been issued, the licensee can licensee can (successfully) defend themselves against it if the warning letter is unjustified, e.g. because the Creative Commons licence conditions have not been violated or the warning letter is invalid for other reasons, e.g. because it does not meet the requirements of Section 97a (2) UrhG (see margin note 24 above). In this case, the warning letter can simply be rejected. According to Section 97a (4) UrhG, if the warning letter is unjustified or ineffective, the user can even demand reimbursement of the costs of their own legal counsel engaged in response to the warning letter.
a) Immediate acknowledgement
70 If a warning letter has been issued and no response has been received, the next possible step for the licensor is to file a lawsuit or initiate preliminary injunction proceedings. As explained above (para. 23), issuing a prior warning letter in accordance with Section 97a (1) UrhG is not mandatory, but it is recommended. If the licensor has waived a prior warning letter, the licensee may – provided that the claim is justified or the licensee does not wish to defend itself – acknowledge the claim (immediately) in the court proceedings (i.e. main proceedings as well as preliminary injunction proceedings) within the response period and thus trigger the legal consequence of Section 93 ZPO. According to this provision, if the defendant has not given cause for a lawsuit (or preliminary injunction proceedings), the plaintiff must bear the costs. This is typically the case if no warning letter was issued before the legal proceedings were initiated.
b) Negative declaratory action
71 If the licensee who has received the warning letter considers the claims to be unfounded, it can reject them in a pre-trial procedure and, if necessary, reimbursement of legal fees. Alternatively, or in addition, it may bring an action for a negative declaration in order to obtain a court ruling on the (non-)justification of the claims asserted in the warning letter (see para. 55 f. above).
3. Criminal proceedings
72 An exception, but ultimately still a possibility of defence, could be that the licensee who has been warned files a criminal complaint against the alleged licensor for (attempted) fraud pursuant to Section 263 (1) StGB, for example if a non-existent right is asserted in an abusive manner. However, this option should only be used as a last resort. This is because, on the one hand, such criminal proceedings are rarely successful because proving fraudulent conduct in such cases is extremely difficult.
Creative Commons License
Open Access Kommentar, Commentary on A. Law enforcement is licensed under a Creative Commons Attribution 4.0 International License.
