On August 29, 2024, the Hanseatic Higher Regional Court of Hamburg decided (ref. 5 U 116/23) in an appeal process between a publishing house and a stock media provider.
This involved trademark and copyright issues in connection with the unauthorized licensing of image material that contains the publishing house’s trademark. This decision sheds light on the distinction between commercial and editorial use of brands in digital media exploitation and has far-reaching consequences for the licensing practices of stock media providers.
Facts
The applicant, a German publishing house that publishes, among other things, the well-known “Bild” newspaper, is the owner of a word/image trademark and offers image material for licensing. The respondent is the operator of a stock media platform on which it offers photos, graphics and videos for sale. The images come from third parties who upload this content.
The dispute was whether the respondent was entitled to offer images with the applicant’s trademark, in particular those that depict well-known cover images of the “Bild” newspaper, for commercial use. Specifically, it was about photos that showed covers with headlines like “We are Pope” and whether this constituted unauthorized use of the trademark.
The applicant claimed that by offering commercial licenses there was a risk that third parties would use the trademark in a way that violated trademark law, for example on promotional items or in marketing campaigns.
Legal analysis
The court had to clarify several legal issues:
- Trademark use: The question arose here as to whether offering images that contain a protected trademark without the consent of the rights holder violates trademark law. The court made it clear that the commercial use of a trademark, as in this case by the respondent, constitutes an infringement § 14 Trademark Act is present. Licensing images that prominently display the brand may result in misleading use, such as in marketing or advertising purposes, that violate trademark law.
- Copyright infringement: In addition to trademark law, the question also arose as to whether the respondent was violating copyright law by offering images that show copyrighted content of the “Bild” newspaper. The court confirmed the infringement because publishing photos with protected content without the appropriate license constitutes a copyright infringement.
- Interim injunction: The interim injunction requested by the applicant was intended to prevent further unauthorized use of the images by the respondent. The Hamburg Regional Court had previously decided to partially revoke the order, which made the appeal process necessary. The Court of Appeal ruled that the injunction regarding commercial use should be upheld, while the injunction for editorial use was lifted.
Conclusion
The ruling by the Hanseatic Higher Regional Court of Hamburg confirms the rights of trademark owners in the digital space and sets clear limits for the use of trademarked images in commercial contexts. In particular, the distinction between commercial and editorial use plays a central role in this context. The decision makes it clear that stock media providers must be particularly careful when licensing content that contains protected brands in order to avoid trademark and copyright violations.
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