Is offering a protected work for sale a distribution to the public by sale or otherwise?

Marcel Breuer 1957

Article 4 par. 1 of the Copyright directive 2009/29 provides that "Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorize or prohibit any form of distribution to the public by sale or otherwise".

In an earlier referral (C-256/06 Peek & Cloppenburg/Cassina), the BGH had to decide on a case were counterfeits of Copyright protected armchairs legitimately bought in Italy by the German clothing business Peek & Cloppenburg had been offered for use to tired husbands accompanying their wives at Shopping Marathons.

The armchairs belonged to the shop fitting and were not for sale. While it is clear that selling a product protected by Copyright infringes the author's rights, the ECJ had decided in the matter C-256/06 Peek & Cloppenburg/Cassina that the words"or otherwise" should be interpreted narrowly in the sense "that the concept of distribution to the public, otherwise than through sale, .... , applies only where there is a transfer of the ownership of that object" (cf. margin number 41 of the decision) such that the mere offering of a counterfeit for use would fall under the scope of this provision.

However, the interpretation of the ECJ relying on the WIPO Copyright Treaty (‘CT’) and the WIPO Performances and Phonograms Treaty (‘PPT’) is to be construed in the sense that not only the actual transfer of ownership infringes the copyright but rather “acts entailing the transfer of ownership” (cf. margin numbers 34 and 35 of Peek & Cloppenburg/Cassina).

The demarcation between acts entailing the transfer of ownership and acts which do not is still somewhat fuzzy.

In the new referral “Marcel-Breuer-Möbel” (I ZR 91/11), the BGH asks whether mere offering for sale is to be considered a distribution to the public in the sense of Art. 4 par. 1 of the directive. In the affirmative case, it is further asked whether this applies to strictly contractual offers only or rather to promotional measures as well and whether the offer for sale has actually entailed a transfer of ownership or not.

The BGH holds that the answers should be positive and cites its previous case law in this regard. However, the answers in the case Peek & Cloppenburg/Cassina came as a surprise as well and overruled the German case law such that a new surprise is not excluded here.