Of Coffee, Wallpapers, Thumbnails and a Giraffe – Implied Consent in German and EU Copyright Law

By Ansgar Ohly[*]Professor, Dr iur (Munich), LLM (Cantab), Chair of Private Law, Intellectual Property and Competition Law at the Ludwig Maximilian University of Munich, permanent Visiting Professor at the University of Oxford.

I. Introduction: wallpapers and copyright infringement

A photographer produced wallpapers with large-format motives such as coffee cups or mediterranean stonewalls. Once the wallpapers had been hanged, the motives dominated the rooms. Some of these rooms were photographed and posted online, for example on the website of a tennis centre, in a YouTube video recorded at home and in a hotel advertisement. The photographer sued for copyright infringement, based on his neighbouring right in non-original photographs, which EU law allows the Member States to provide[1]Article 6 of Directive 2006/116/EC on the term of protection of copyright and certain related rights, OJ L 372/12. and which the German[2]§ 72 Urheberrechtsgesetz (German Copyright Act). and Swedish[3]49 a § lagen (1960:729) om upphovsrätt till litterära och konstnärliga verk (Swedish Copyright Act). copyright laws grant. The case went up all the way to the German Supreme Court, the Federal Court of Justice (Bundesgerichtshof – ‘BGH’).[4]BGH, 11.9.2024, I ZR 140/23, GRUR 2024, 1528 – Coffee; see also the parallel judgments handed down on the same day in cases I ZR 139/23, ZUM 2025, 43 – Apulia Stonewall and I ZR 141/23, ZUM 2025, 59 – Wall of Granite.

Almost everyone agreed that the photographer should lose.[5]See the case-notes on the BGH judgment by R Brtka, GRUR-Prax 2024, 719; T Hoeren, MMR 2024, 1037; F Hofmann, jurisPR-WettbR 9/2024 Anm. 1; H Schack, ‘Fototapeten und Urheberrecht‘, GRUR 2024, 1698; in the same sense before the BGH judgment M Stieper, ‘Urheberrechtlich geschützte Werke in geteilten Bildinhalten: Digitale Dokumentation des Alltags als Kulturpraktik‘, ZUM 2024, 661, 669; M Wypchol, ‘Die Fototapete im Urheberrecht – Wi(e)der das vermeintliche Dogma enger Schrankenauslegung‘, ZUM 2023, 688, 692, 695. The Cologne District Court’s judgment, which was the only one in favour of the claimant,[6]LG Köln, 18.8.2022, 14 O 350/21 ZUM-RD 2023, 312. was criticised as a ‘symbol of the legitimacy crisis of copyright law’.[7]T Kraul and S Vetter, ‘Eine Fototapete als Sinnbild für die Legitimationskrise des Urheberrechts‘, ZUM-RD 2023, 318. But the exact doctrinal way to reach this result was ‘long and bumpy’,[8]H Schack (n 5), 1700. because several ways to rescue the defendants failed. Of course, the justification for the neighbouring right in simple photographs can be and has been doubted.[9]See the criticism by N Flechsig in VFF (ed), Urheberrecht im Wandel der Zeit (Nomos, 2018), 91, 108; A Ohly, Gutachten F zum 70. Deutschen Juristentag (Beck, 2014), F 37-38, F 126; Schack (n 5), 1699. But it is easy to imagine a hypothetical scenario in which a wallpaper design attracts (proper) copyright protection. Copyright exceptions are not easily at hand. One could think of the exception for incidental inclusions,[10]Article 5(3)(i) of Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society, OJ L 167/10 (‘InfoSoc Dir’), implemented in § 57 of the German Copyright Act. but the motives dominated not only the rooms but also the photographs.[11]The Düsseldorf District Court had considered the exception for incidental inclusion as inapplicable for this reason: LG Düsseldorf 27.9.2023, 12 S 24/22, ZUM-RD 2024, 595, 597. There may be good reasons for a broad interpretation of the term ‘incidental’,[12]See H Schack (n 5) and M Wypchol (n 5). but the application of the exception is far from self-evident. While taking the photograph may have constituted a private copy, the posting on the internet reached the public. The case is also reminiscent of exhaustion scenarios: the price paid for the purchase of the wallpaper should cover all subsequent ordinary uses. But in copyright law, only the distribution right is subject to exhaustion,[13]See Article 3(3) InfoSoc Dir. whereas the photographer’s case was based on reproduction and communication to the public. So, the only remaining possibility – unless the emergency brake of ‘abuse of rights’ was pulled[14]As considered by the Düsseldorf Court of Appeal: OLG Düsseldorf, 8.2.2024, 20 U 56/23, GRUR 2024, 626 para 35. – was to resort to an implied consent or licence. Indeed, in common law doctrine, the exhaustion effect used to be based on the implication that a seller intends to allow all reasonable uses of a product.[15]For an overview, see P Mysoor, ‘Exhaustion, Non-exhaustion and Implied Licence’, [2018] IIC 656. As will be discussed in more detail below, the BGH gave judgment for the defendant in the Coffee case and the related wallpaper cases, based on the doctrine of implied consent. But again, the objection is evident: the photographer sued, so he showed quite clearly that he had not given his consent.