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The Porsche 911 has been marketed since 1963 as the successor model to the Porsche 356 produced from 1950 to 1956. The dispute concerned the eighth series of the Porsche 911, known as the 991 series, which has been marketed since 2011. As the heir, the plaintiff demanded an appropriate share pursuant to Section 32a (1) sentence 1 UrhG from the sale of the 991 series because, in the plaintiff’s opinion, this model had taken over essential design features of both the Porsche 356 model and the first series of the 911 model. The Porsche 356 model was based on the so-called “Ur-356” designed by her father as the author, and the first model of the Porsche 911 was based on the model also designed by her father and internally designated as the Type 354 “T7”, which also had the quality of a work under copyright law (para. 4):
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The Regional Court of Stuttgart dismissed the action. The Stuttgart Higher Regional Court dismissed the appeal filed by the plaintiff. The Federal Supreme Court (BGH) has now overturned the appeal ruling and referred the case back to the Higher Regional Court (OLG) for a new hearing and decision.
2. The BGH first upheld the Upper District Court’s conclusion that the plaintiff was not entitled to a further equitable interest under Section 32a (1) sentence 1 UrhG insofar as it claimed that Porsche had used its father’s copyrights in the design of the Porsche 356 by marketing the 991 series. It is true that the plaintiff could base its claims on § 32a.1 sentence 1 UrhG. Moreover, the design of the Porsche 356 was a work of applied art within the meaning of § 2.1 no. 4, subsec. 2 UrhG, which had been created by the plaintiff’s father. However, the production and distribution of the 991 series of the Porsche 911 did not constitute a use of this work within the meaning of § 32a.1 sentence 1 UrhG (para. 15).
Pursuant to Section 32a (1) sentence 1 UrhG in the version applicable since 7 June 2021, the author who has granted a right of use to another on terms which result in the agreed consideration proving to be disproportionately low in comparison to the income and benefits from the use of the work, taking into account the author’s overall relationship with the other party, may require the other party to consent to an amendment of the contract granting the author a further fair share according to the circumstances.
The Federal Court of Justice first clarified that the claim to further equitable participation under Section 32a UrhG was not only due to the author himself, but also to his heirs. According to Section 28 (1) UrhG, copyright is heritable. It is in the author’s interest that his copyright benefits his heirs after his death for the period of 70 years specified in Section 64 UrhG (para. 23). Furthermore, the Upper District Court had rightly assumed that income or benefits from a use which did not encroach on the scope of protection of an author’s exploitation right could not give rise to a claim for further equitable participation by the author (para. 35).
The Upper District Court had assumed that the production and distribution of the Porsche 911 of the 991 series did not encroach on the exclusive right of the plaintiff’s father as author to reproduce (§ 16 UrhG) and distribute (§ 17 (1) UrhG) the design of the Porsche 356. The design of the Porsche 911 of the 991 series constituted a free use of the design of the Porsche 356 within the meaning of § 24 (1) UrhG old (para. 41).
According to § 24 (1) UrhG old, an independent work created in free use of another’s work could be published and exploited without the consent of the author of the work used. In this regard, the Upper District Court had stated that the particularly harmonious lines with a combination of flat and curved elements were decisive for the uniqueness of the external design of the body of the Porsche 356. Furthermore, the absence of hard edges in connection with the memorable front view of the vehicle resulting from the following design elements was decisive: the lack of a radiator grille, the windscreen divided in the middle, the round, slightly slanted headlights integrated into the raised wings and thus flanking the vehicle bonnet and cutting the line downwards in each case, and the round bonnet lying in between. However, according to the Upper District Court, the external design of the Porsche 356 had only a low level of design and thus a very limited scope of protection due to the previously known design vocabulary of motor vehicles. Only the body of the Porsche 356, which was designed in many details, had a sufficient level of creativity in its overall impression to be protectable as a work of applied art under § 2.1 No. 4, para. 2 UrhG. Since the uniqueness of the body design lay solely in the combination of these design possibilities, the scope of protection extended only to these or marginally deviating designs (para. 60).
Against this background, the Higher Regional Court of Stuttgart further assumed that the overall impression of the design of the Porsche 911 of the 991 series, which was decisive for the status of the Porsche 356 as a work under copyright law, faded to such an extent that it had at most served as an inspiration for the new design (para. 61).
The BGH does not agree with this argumentation of the Higher Regional Court, but comes to the same conclusion. According to the Federal Court of Justice, the decisive factor for the question of whether there is free use is the distance between the new work and the borrowed personal features of the used work. Free use under Section 24 UrhG old therefore required that, in view of the individual character of the new work, the personal features borrowed from the protected older work faded away (para. 43). § However, Section 24 UrhG aF was considered by the ECJ to be incompatible with Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society (para. 46 with reference to ECJ, judgment of 29.07.2019, C-476/17, reprinted e.g. in GRUR 2019, 929 – Metall auf Metall III).
The Federal Court of Justice therefore clarifies for the first time that the principles for distinguishing free use from (non-free) adaptation continue to apply in the matter, even taking into account the decision of the ECJ and with a view to the amendments to the law made because of this decision, with the proviso that the criterion of fading is to be understood in conformity with EU law in the sense of the criterion of a lack of recognisability of the creative elements giving rise to protection (para. 47). § Section 23 (1) sentence 2 UrhG nF now provides that there is no adaptation or transformation within the meaning of Section 23 (1) sentence 1 UrhG nF if the newly created work maintains a sufficient distance from the used work.
Against this background, the Federal Court of Justice held that the Stuttgart Upper District Court had assumed that the 991 series of the Porsche 911 was to be regarded as a free use of the design of the Porsche 356 within the meaning of Section 24 (1) UrhG old. However, it had not made any findings as to whether the Porsche 911 of the 991 series was a newly created work protected by copyright (para. 53). Since there was no interference with the author’s right of exploitation if the overall impression of the new design did not correspond to the overall impression of the work used, it was not relevant whether the new design was a work protected by copyright. The findings of the Court of Appeal thus supported the assumption that the overall impression of the design of the Porsche 911 of the 991 series did not correspond to the overall impression of the design of the Porsche 356 and that there was therefore neither an infringement of the reproduction right nor an infringement of the distribution right of the plaintiff’s father (para. 54).
The fact that the Higher Regional Court had not dealt with the plaintiff’s offer of evidence on her father’s authorship of the original model of the Porsche 911 (para. 64 et seq.) led to the reversal and remittal to the Court of Appeal for a new hearing and decision. The plaintiff had offered her husband as a witness to prove that he had visited his father-in-law and his workplace. There, her father had shown her husband the tare bar for “his” Porsche 911 and had made it clear that the 911 and its body had been “his car, his design” (para. 95). Although the plaintiff did not submit this offer of proof until after the deadline for filing the grounds of appeal had expired, the Stuttgart Higher Regional Court did not address the question of whether the plaintiff was therefore precluded from submitting its evidence (para. 96). The assessment of this question was reserved for the Court of Appeal, which had so far not made any statements on a preclusion of the evidence (para. 99).
The decision of the Federal Court of Justice provides clear guidelines for the assessment of a use of a copyrighted work not requiring consent within the framework of the new Section 23 (1) UrhG. In this respect, it is essentially possible to fall back on the case law on the previous Section 24 UrhG aF. The decision is ultimately based on a comparison of the overall impression of both works, in the context of which all adopted creative features are to be taken into account in an overall view.
