“Infringer’s profits from the unlawful use of photographs”
The plaintiff in the proceedings is a renowned fashion photographer. On the basis of a licence agreement concluded with the defendant, he took photographs of models which the defendant used for the design of product packaging for hair dyes. The defendant used these photographs without the consent of the plaintiff even after the termination of the license agreement.
The photographs were in accordance with § 72 Para. 1 i. V. m. § 2 Abs. 1 Nr. 5 Copyright Act. The photographer was therefore entitled to the claims under the Copyright Act for the photographs still used after the termination of the licence agreement, thus also a claim for damages pursuant to § 97 (2) Copyright Act.
In the case of an unlawful use of photographs, the appropriate licence fee is usually demanded as compensation, whereby the infringed party can in this respect, for example, rely on the recommendations of the Mittelstandsgemeinschaft Foto-Marketing (Association of Small and Medium-Sized Enterprises for Photo Marketing) (cf. Dreier/Schulze, Commentary on the Copyright Act, on § 72, marginal no. 29). However, in assessing damages, the profit which the infringer has made from the infringement of the right may also be taken into account, § 97(2) sentence 2 Copyright Act.
Profit is sales minus costs. The defendant had not sold the photos here, but hair care products and thus made a profit. Therefore, first of all the question arose whether the profit which the defendant had made with the hair dyes should be taken into account in the infringer’s profit for the unlawful use of the photos. The Higher Regional Court of Frankfurt am Main answered this question in the affirmative on the grounds that in principle any causal connection between the infringement of the property right and the profit obtained was sufficient. It could not be ruled out that the photos depicted on the product packaging also played a role in the customer’s decision to purchase the product (hair dye). The plaintiff did not know what profit the defendant had made with the hair dyes. In order to prepare the claim for damages, the plaintiff had a claim for information against the defendant, according to which the defendant had to provide information about the turnover achieved with the hair dyes, the costs and the profit. The costs which were without exception attributable to the products in question (hair dyes) were then to be deducted from the turnover (see in particular BGH WRP 2001, 276 – Gemeinkostenanteil; BGH WRP 2007, p. 533 – Steckverbindergehäuse). In the case of the resulting profit, the extent to which the profit is based on the infringement of the property right must be further examined in the context of causality (see BGH GRUR 2009, p. 856 – Tripp-Trapp-Stuhl), the so-called causality share. According to the information provided by the defendant, the profit which the defendant had made with the hair dyes after the termination of the license agreement amounted to approximately EUR 2.45 million according to the findings of the Higher Regional Court of Frankfurt am Main. The defendant paid the plaintiff a lump sum of € 65,000.00 for the damages to which he was entitled. In the lawsuit, the plaintiff valued the causality share of the photos he had taken at 30 % and thus demanded 30 % of the profit. The first instance (Frankfurt am Main Regional Court) took a causality share of 10 %. The Higher Regional Court of Frankfurt am Main, however, came to the conclusion, with detailed justification, that the causal element of the photos for the customers’ decision to buy the hair dye was only 2.5 %. This resulted in damages to which the plaintiff was entitled, which were just below the payment of € 65,000.00 already made by the defendant. Accordingly, the Higher Regional Court of Frankfurt am Main dismissed the action.
The author or the person entitled to use the work – like the owners of industrial property rights such as patents, trademarks, designs, etc. – has the right to choose in accordance with § 267 German Civil Code whether he calculates the damages to which he is entitled on the basis of an appropriate licence fee or on the basis of the infringer’s profit. How he exercises this option depends on the information provided by the infringer. In principle, the entitled party can first of all demand all information which may be of importance for the determination of the damages, and in the case of the unlawful use of photos in question here, accordingly also the information on the turnover and profit which the infringer has achieved with the products depicted.
