No injunction against other language versions of a film

When a licensee obtains an exclusive right of use for a film work for a territory, it seeks to exploit the exploitation potential existing there for its benefit. If the licensee is granted the right to exploit the film only for certain language versions, the question arises whether it also has the right to take action against the exploitation of other language versions that are exploited within its licensed territory. The Higher Regional Court (OLG) Cologne had to address this question.

A licensee with an exclusive right to exploit the German, Flemish and Dutch language version of a film work in Germany requested disclosure before the Regional Court (LG) Cologne of the data of users who had illegally obtained a Russian language version of the film on a file-sharing website. This was granted. Subsequently the complainant was sent a cease-and-desist letter by the licensee. However, the recipient of the letter disputed the licensee's active standing and filed an appeal against the disclosure of his user data with the Higher Regional Court (OLG) Cologne.

Court decision

The court (OLG Köln, Beschluss vom 23.09.2013, 6 W 254/12) granted the appeal. Although the applicant was the holder of an exclusive right to exploit the English original version, as well as the German, Flemish and Dutch version of the film in the cinema, video and online sectors. However, the court concluded that this did not confer the right to prohibit other language versions, such as the Russian version in this case.

A right to prohibit would only exist if the license agreement with the licensor had expressly stipulated that no further language versions may be exploited. The reason is in particular the principle of transfer of purpose, from which it follows that copyright is only ever transferred to the extent that this is expressly agreed.

Although the licensee could in certain cases take action against use of the work that goes beyond the right granted to it by the license, if the exploitation has an impact on its economic interests that are to be protected by the exclusive license, the court also rejected this on the grounds that the number of persons in Germany who speak Russian is negligibly small and that persons interested in a Russian language version because they do not master the German language sufficiently would not normally resort to a German, Dutch or Flemish version of the film instead.

The licensee therefore has no right to prohibit the exploitation of the Russian language version. The decision of the Regional Court (LG) Cologne, which enabled the applicant to obtain information about the data of the complainant, was therefore unlawful.

Conclusion

The decision of the Higher Regional Court (OLG) Cologne has important implications for contract design. If a licensee wishes to ensure that it can take action in its licensed territory against unlawful uses of the subject matter of the license that go beyond the scope of protection of its own license, this must already be regulated in the license agreement.