Two recent decisions of the Hamburg Regional Court have decided that Google’s image search facility breaches German copyright law. The court granted rightholders an injunction to prevent Google from displaying protected images in thumbnail form on its online search results. The court held that the production of thumbnails was a breach of German copyright law. This decision may have far reaching consequences for Google’s image search facility in Germany.
In two recent judgments regarding parallel proceedings, the Hamburg Regional Court decided that Google's image search facility infringes German copyright law. One of these proceedings was against Google Inc. whilst the other was against Deutsche Telekom, HanseNet and Freenet ,which uses Google’s image search on its platforms (Reference numbers 308 O 42/06 and 308 O 248/07). The Regional Appeal Court in Jena used similar arguments in its judgment on 27 February 2008 (reference number 2 U 319/07). In this judgment, the Regional Appeal Court in Jena questioned the legitimacy of Google's image search facility. 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. It is expected that Google will appeal against this judgment and that this issue will be finally decided by the German Federal Court of Justice.
As part of its image search, Google provides 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 Google's image search 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 the 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 allow Google to continue to provide its image search facility in Germany.
Reasoning of the Hamburg Court
The Hamburg Regional 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 facility 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 restricted act under the German Copyright Act. The rightholders 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 Google undertakes a relevant act under the German Copyright Act when it makes the thumbnails, stored on its servers, 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 Google 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 being found by search engines and uploaded on the search engine's servers. It is considered that it can be assumed that it is in the interest of rightholders to be listed in Google's image search. Failure to use protection mechanisms (which are easily available) would confirm that in each individual case the righholder 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 had not put the images on the internet themselves. 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 mechanisms 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 the 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 Google 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 Google based its 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 interests in the image search (which it conceded existed with respect to Google’s image search) when considering rightholders’ rights.
Consequently, the court held that the rightholder had a claim against Google to cease and desist from providing pictures covered by its rights to the public in Germany via its image search engine. 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 Google's image search. 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; however, the parties are likely to bring the case to the Federal Court of Justice, although obtaining a 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 Justices 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, Google’s ability to provide its image search facility in Germany will be threatened - a situation which is arguably against the public interest.