A few days ago the German Federal Court of Justice (BGH) released the full text of its recent judgment concerning protection of digitized versions of public domain images. The IPKat is delighted to host, in two posts, the analysis provided by Tobias Lutzi (Research Fellow at the University of Cologne), and John Weitzmann(General Counsel at Wikimedia Deutschland e. V. in Berlin), respectively.
Here’s what John writes:
Note: The German Wikimedia Chapter had also been defendant in this case, but was acquitted by the court of first instance, while parallel proceedings against the US-based Wikimedia Foundation as service provider of the Wikimedia Commons platform are still on-going at the High Court of Berlin.
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From the perspective of the Wikimedia Movement, the most disappointing aspects of the judgment are its treatment of § 72 UrhG, putting additional means of control over public domain works in the hands of those cultural heritage institutions, that regard control as an integral part of their public mission. As mentioned by Tobias here, it is highly questionable whether publicly funded museums should even consider using injunctions to go after digital copies of public domain works they hold in their collections.
If private owners of artworks are involved, there might be an argument for control on behalf of such private interests, in order to get the respective works into museums and before the public’s eye in the first place. But to limit the visibility of publicly owned works of art in any way, to leverage related rights in photographic depictions even with public domain works, can hardly be anything but a gross misunderstanding of the role and mission public cultural heritage institutions have. Such institutions must do anything within their power to hold as much of our cultural heritage in the public’s awareness, including on the internet, and therefore must not hide or withdraw public domain works from the public’s conscious perception.
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In all this, the judgment in the rem case almost tragically brings to bear the fundamental flaw of the hybrid rule that the German legislator produced by legally synching the neighbouring right in photographs, § 72 UrhG, to the proper copyright in photographic works, § 2 UrhG, in the 1960s. The intention behind this synching was a well-meaning one at the time: Parliament wanted to relieve judges of the close-to-impossible task of discerning non-original photographs from those that are actual works of art. Thus, § 72 was amended to let the same rules that apply to photographic works of art simply also apply to non-original photos – with the one exception of the protection term, which is shorter for non-original photos, lasting only 50 years after publication, whereas photographic works are protected until 70 years after the death of the photographer.
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[T]he High Court of Stuttgart had argued that even the meticulous reproduction photos in question (i. e. the ones made by the museum’s photographer for a catalogue that had later then been scanned by the defendant and uploaded to the Wikipedia’s media archive Wikimedia Commons) were not “mere technical reproductions”, but represent …
 (…) an independent new fixation into a new work form [and are photographs] initially made with creative intention. [own translation]
Now, one does not need to share the infamous fondness of dogmatic detail present in German civil law to find it odd that a second instance court introduces terms like “work” and “creative intention” (in German: “Schöpfungswillen”) when actually speaking about a neighbouring right in photographs. Usually, under German copyright law the term work (“Werk”) is much more narrowly than in the Anglo-American tradition reserved for works of authorship. That is the very reason de être of all those neighbouring rights in “non-works” in the first place. There’s a whole universe of arguments about the special bond between the work and its creator, and why that bond is so very special and valuable, even producing unwaivable moral rights.
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[C]an there actually be such a personal intellectual contribution or achievement in a photograph if the subject of the photograph is entirely fixed?
It can’t be stated enough: The content of reproduction photos is fixed in all thinkable ways. By definition they must as exactly as possible give the same impression as the works they depict, nothing added and nothing taken away. How can those repro photographs be more than “mere technical reproductions” if all the photographer can work with are shutter time, light, aperture and such – all of which go beyond technical in nature only if and where they are tools for creative expression? It must be emphasised yet again that any kind of creative expression is forbidden for repro photographers, who in this role strictly have to limit themselves to replicating the visual impression the object reproduced makes on viewers.
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[T]he pictures are indeed limited to getting the technicalities right to carry the exact impression of their object, being repro photographs in the proper sense. In that case, however, they can’t qualify as more than technical reproductions – very elaborate reproductions, one might add, that require a lot of expertise to make, but still reproductions.
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So, how can a tech-and-expertise-only reproduction photo still be covered by a neighbouring right that does not cover mere technical reproductions? The apparent contradiction is solved by invoking an additional criterion. The Court itself, turning to legal scholarship, established in 1989 (I ZR 14/88) the notion that only the first-stage exact photographic depiction taken of any subject is legally worthy of a neighbouring right protection, while further photos taken of this first photo are not and are seen as mere reproductions. This so-called “Urbildtheorie” has no explicit foundation in the wording of the German Copyright Code. It is purely a development of the law (in German “Rechtsfortbildung”) through judicial deduction and interpretation.
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There are paintings made by artists a long time ago, and exact photographic depictions of those paintings, protected under a neighbouring right because they are taken directly from the public domain works in the museum. However, had those artists of old used photography instead of brush and canvas to express their creativity, equally exact photographic depictions of such works of photography would not be covered by related rights. In other words, an exactly matching photo of a painting is protected, while an equally exactly matching photo of a photographic work is not.
Link to the rest at IPKat
Here’s a link to the first part the IPKat summary.
PG agrees with the criticism of the decision contained in the commentary (although he claims no expertise in German law).
The fundamental structure of copyright law in the US and, via international treaties, many other places, is based upon the proposition that the creator of an original intellectual property (painting, book manuscript, sculpture, for example) should have the exclusive ability control the exploitation of that property via copying or creation of derivative works for a period of time. An author can prevent someone from replicating the contents of a manuscript without the author’s permission, for example.
Once the copyright term has expired, the creator’s rights under copyright law expire as well.
The rationale for providing an ability to prevent a non-author from simply copying the work of an author, then exploiting it commercially or otherwise is that society in general is benefitted if creators are encouraged to create and share their creations by allowing them the exclusive right to profit from those creations. If there were no effective right for a creator to profit (monetarily, through enhanced reputation, etc), he/she would have to take a job at McDonalds flipping burgers for material support and thus would have less time to create and could well give up the creative activity altogether. Or a great artist would make paintings and never allow anyone to see them so the artist would avoid having others make copies of the products of the artist’s works of genius.
In exchange for a creator being permitted to prevent others who admired a work from simply making a copy of it for their own enjoyment or for commercial exploitation (a natural human instinct) and bring the creations into the public sphere for the artist’s exclusive benefit, the creator’s right to prevent the public from making knockoffs or derivative works was time-limited. Society would protect the creator’s work from reproduction for a period of time so the author could profit and society would benefit from being able to enjoy the work right away, but eventually, the creator’s exclusive rights would expire so other creators or non-creators could use the work for all sorts of new and interesting purposes.
However, intellectual property must have a meaningful element of originality to be protected. If I pick up a rock and paint it red, then seek to prevent anyone else from commercially exploiting rocks painted red, I’ve done something unoriginal and obvious, not truly new or unique or creative. The same analysis would prevent me from copyrighting the words, “and they lived happily ever after.”
With that rambling foundation, why was the German court so wrong?
The artist who created the painting that is now in a German museum owned the copyright to the original painting. The clock was ticking on the copyright’s exclusive period of protection. Presumably, when the artist sold or gave the painting to someone else, the person who acquired the painting acquired the associated copyright, including the right to exercise the rights granted under copyright law in the same manner as the original artist could.
(It is possible for the artist to retain the copyright, while only selling the painting itself, but absent some sort of clearly documented agreement to that effect, the copyright is presumed to go with the painting. This is why authors should only license their copyrights rather than assigning them to publishers unless the publishers pay a large lump sum (not an advance against royalties) up front. If the publisher fails to pay royalties and the publisher owns the copyright, the author has a more difficult time reverting rights to him/herself. An artist who creates a painting is more likely to sell a painting to someone who wants to own it and who pays to acquire the painting rather than agreeing to pay the artist a certain amount for each copy of the painting the purchaser might or might not make.)
What (in PG’s inarticulately expressed opinion) can a museum that has just acquired a painting for which the artist’s copyright has expired do if the museum wants to profit from selling copies of the painting?
The museum could do what the original artist could do, not show the painting to anyone to prevent copying.
Or, the museum could prohibit anyone from bringing a camera into the museum and search pockets/purses, etc., to make certain everyone complies. Or a museum could bind visitors to a contract under which visitors agreed they would not take photos of the painting and further agreed that they would pay the museum $1 million in damages if they violated the contract.
In the German case, the court held that the museum could make a photograph — a copy — of a painting that is no longer protected by copyright, claim a copyright in the photo, then use its copyright of the photo to prevent other people from making, publishing, selling, etc., copies of the original painting because doing so would be the same as making a copy of the museum’s photo of the painting.
In addition to the arguments cited in the OP (a perfect copy of the painting made via a camera does not include elements of creativity to sufficient for the photo to be entitled to copyright protection), PG suggests permitting a photo of an original painting that is not protected by copyright to be copyrighted as if the photo were its own separate creative work, thus starting a new period of copyright protection that prohibits copies of the painting to be made and sold without the permission of the museum is the most slippery of slippery slopes.
When the copyright on the photo is nearing expiration, could a future technology that is not like a camera be used to make another copy of the painting, thus generating a new period of copyright protection that would continue to prevent anyone other than the museum from making copies of the then way, way, way out of copyright painting?
How about using the new technology to make a new copy of the previous copy of the museum’s copyrighted photo and claim a new period of copyright protection on the same basis the court recognized a perfect copy of the original painting to form the basis for a separate copyright – that the operator of the new technology made adjustments necessary for the use of that technology to make another perfect copy?
The museum claimed all of the things the photographer did in order to make a perfect copy – setting the camera properly, lighting the painting just so, etc., represented new creativity that was incorporated in the perfect copy of the painting.
In the United States, this argument would be termed as a claim of copyright based upon “sweat of the brow” activity. See Genesis 3:19 – “In the sweat of thy face shalt thou eat bread, till thou return unto the ground”
According to this doctrine, an author gains rights through simple diligence during the creation of a work, such as a database, or a directory. Substantial creativity or “originality” is not required.
Under a “sweat of the brow” doctrine, the creator of a copyrighted work, even if it is completely unoriginal, is entitled to have his effort and expense protected, and no one else may use such a work without permission, but must instead recreate the work by independent research or effort. The classic example is a telephone directory. In a “sweat of the brow” jurisdiction, such a directory may not be copied, but instead a competitor must independently collect the information to issue a competing directory. The same rule generally applies to databases and lists of facts.
Link to the rest at Wikipedia
This argument was rejected by the US Supreme Court in Feist Publications v. Rural Telephone Service, 499 U.S. 340 (1991).
Discussing the principle that facts are not copyrightable, but that compilations of facts can be, the Court said,
Article I, § 8, cl. 8, of the Constitution mandates originality as a prerequisite for copyright protection. The constitutional requirement necessitates independent creation plus a modicum of creativity. Since facts do not owe their origin to an act of authorship, they are not original, and thus are not copyrightable. Although a compilation of facts may possess the requisite originality because the author typically chooses which facts to include, in what order to place them, and how to arrange the data so that readers may use them effectively, copyright protection extends only to those components of the work that are original to the author, not to the facts themselves. This fact/expression dichotomy severely limits the scope of protection in fact-based works.
Applied to the German case, if the photographer’s objective and accomplishment was to make as perfect a copy of the original painting as is possible using current technology, then, if copyright protection extends, per Feist, only to those components of the photograph that are original to the photographer, not to the components of the photograph that are original to the artist who created the original painting, there is no copyright to a perfect copy of the painting.
If the photographer had used the camera to make a photo that looked different from the original painting, substituting red for blue, for example, an argument for originality might be reasonable and anyone else making a copy of the red/blue photo might be violating the museum’s copyright on the photo.
But a perfect copy of the original painting includes nothing original to the photographer. Anything the photographer might have done that isn’t reflected visually in the resulting photograph doesn’t indicate anything original to the photographer is protected in the perfect copy. PG would argue that even trivial differences between the photo and the painting that result from the transfer of the image from one medium to another don’t constitute originality necessary for copyright protection.
Following is an English version of the German Court decision (per Google translate – PG does not speak German, so he can’t vouch for any level of accuracy)
A1 - BUNDESGERICHTSHOF