Cease and Desist Letter – What to do?
From Ueli Grüter and Giedre Neverauskas
- Keep calm!
- Do not pay prematurely!
- Do not issue a cease-and-desist declaration prematurely!
- Consult a specialized Attorney-at-Law!
They operate in waves, the law firms, but also other companies whose business model consists of issuing warning letters to others for the unlawful use of photos, mainly on the internet, and charging sometimes horrendous fees. The law firms often operate from Germany because German Attorney-at-Laws can charge a fee just for warning letters. Our clients then ask us in bewilderment whether these warning letters are serious, whether they should effectively remove the photos and pay the fees.
In this article, lawyer and university lecturer Ueli Grüter and Attorney-at-Law Dr Giedre Neverauskas the protection of photos in Switzerland and Germany, explain to those affected how to react correctly in the event of Cease and Desist Letters and what to bear in mind. However, this article is for information purposes only and does not constitute legal advice. The authors therefore strongly recommend consulting an Attorney-at-Law.
How do the Cease and Desist Letters find the offending images?
Rights holders or service providers search the Internet with tools such as Pixsy or Copytrack to detect unauthorized use.
How photos are protected in Switzerland and Germany
Protection of photos in Switzerland
Since the last revision of the Swiss Copyright Act (URG) in 2019 (in force since 01.04.2020), all photos are protected, even if they do not achieve the individuality or originality otherwise required by Copyright Law. According to this law, photos are now generally protected (“tel quel”), even if they do not have an individual character(Art. 2 para. 3bis CopA), i.e. even if they are not particularly original. This means that so-called snapshots in particular are now also protected by copyright, i.e. photos whose subject is captured in the image just as it is found, such as the self-photographed pug shown here. This photo would probably not have been protected before the revision of the Copyright Act.
According to the revised Copyright Law, “reproductions made by a process similar to photography” are also generally protected by copyright. These include, for example, images produced by infrared and X-rays, micro and macro copies, prints from negative film and individual images from visual or audiovisual works, such as film stills.
The prerequisite for the general protection of photographs is that they depict a three-dimensional object. This means that there is no tel quel protection for photocopies, photos of photos, etc.
The provider of the chatbot ChatGPT, OpenAI, states in its General Terms and Conditions (GTC) that content, including photos, created by ChatGPT can be used freely (see digilaw.ch – 08.05.04 ChatGPT & Co. and Copyright Law).
Art. 2 CopA generally requires an “intellectual creation” for copyright protection. This can only be created by human hands. This rule still applies to photographs. This means, for example, that automatically produced photographs, such as radar photos, photos from surveillance cameras or speed traps, do not enjoy copyright protection. Photos created by Artificial Intelligence (AI) are only protected by copyright from this point of view if the parameters for the creation were predominantly set by humans (see juristenfutter.ch – No copyright protection for AI).
According to Art. 80 CopA, the tel quel protection of photos pursuant to Art. 2 para. 3bis CopA also applies to photos that were taken before its entry into force. However, if someone has used a photo that was taken before these new rules came into force and was not protected by copyright at the time without the consent of the rights holder, e.g. on a website or in a brochure, before the revised Copyright Law came into force, they do not have to remove it. However, re-use in a different context is no longer permitted without the consent of the owner of the relevant rights.
In practice, the duration of protection of photos is generally not relevant. Photographs are
According to Art. 19 CopA, the use of photos for personal use is explicitly permitted. This includes private use within the circle of family and friends (narrowly defined!), which is permitted without further ado. Use in schools (including colleges, universities) or within a business (company, organization) is also possible, but only in return for remuneration via the collecting societies. However, photos used in this way may not be published outside these circles, i.e. in particular not on the Internet (but IM intranet).
Protection of photos in Germany
The protection of photographs in Germany essentially corresponds to the Swiss regulation. In Germany, photographs can be protected as photographic works(Section 2 (1) No. 5 of the Copyright Act, UrhG) or as photographs (Section 72 UrhG). The main difference between a photographic work and a photograph lies in the level of creation. Photographic works are photos that represent a personal, intellectual creation of the photographer, i.e. have a certain artistic standard. Photographs are all other photos that do not reach this level of creation. This means that so-called snapshots (see above) are also protected in Germany. The difference in the practical effect of whether a photo is classified as a photographic work or as a photographic image lies in the length of the term of protection. Copyright Law protection of photographic works applies from their creation until 70 years after the death of the photographer. A photograph, on the other hand, is only granted an ancillary copyright with a term of protection of 50 years after publication, public reproduction or production of the photograph.
When does Swiss law apply and when does German law apply?
Whether Swiss or German law applies in a case of possible unlawful use of photos is determined according to the corresponding national, so-called conflict of laws.
In Switzerland, the competent Swiss court (see below) applies the law on private international law (IPRG). If a Lawsuit is brought before a Swiss court, under Swiss law intellectual property rights are subject to the law of the country for which protection of the intellectual property is claimed(Art. 110 IPRG). Cease and Desist Letters for photographs are governed by the law of the country for which Copyright Law protection is claimed.
If a Lawsuit is brought before a German court, Swiss or German law could apply depending on the plaintiff’s argument – the place of action or success is decisive(Art. 39, 40 Introductory Act to the German Civil Code, EGBGB).
Where are the rights to photos infringed, in Switzerland or in Germany?
In principle, the rights to photos are infringed where the infringing act takes place or where the success of the infringing act occurs. In the case of online publications, the infringement can occur worldwide (for details, see “Is there a risk of being sued in Germany?” below).
What should I bear in mind when receiving Cease and Desist Letters from German law firms?
Cease and Desist Letters from German law firms, even if they are issued in Switzerland, must fulfill certain regulatory requirements in order to be legally valid in Germany.
Formal requirements for Cease and Desist Letters
Cease and Desist Letters that do not meet the formal requirements pursuant to Section 97a (2) UrhG (see requirements there) are ineffective. Therefore, when receiving a Cease and Desist Letter from Germany, you should first check whether the formal requirements have been met.
Reimbursement of legal fees
German law firms regularly demand the reimbursement of legal fees for their warning letters. This demand is regulated by law and is generally permissible(Section 97a (3) UrhG). However, the amount is currently limited to around EUR 160 for a first warning letters to private individuals. In addition, the costs must actually have been incurred – it is therefore necessary to check whether the legal fees claimed are plausible and comprehensible.
Declaration to cease and desist with penalty clause
Cease and Desist Letters usually contain a request to sign a declaration to cease and desist with a penalty clause. “Subject to penalty” means that the person being warned undertakes to pay a contractual penalty in the event of a repeat offense. The person being warned basically has three options: to sign the declaration unchanged, to sign it in a modified form or to refuse to sign it. As the declarations are often worded more broadly than necessary, careful examination is particularly important. If a cease-and-desist declaration is issued, the risk of repetition no longer applies – a Lawsuit for injunctive relief is then no longer possible. However, anyone who continues despite a justified Cease and Desist Letter risks an accusation of willful misconduct and a fine or imprisonment of up to three years. Anyone who does not sign a justified Cease and Desist Letter risks an Injunction or Lawsuit. In Germany, this risk is higher than in Switzerland, as the legal costs are lower and the inhibition threshold for a Lawsuit is therefore lower. However, it should be noted that Lawsuits from Germany cannot simply be sent to Switzerland by post. In accordance with the
Is there a risk of being sued in Germany?
Whether you can be sued in Germany for the possible unlawful use of a photo depends on whether a Swiss or a German court has jurisdiction in a particular case. These questions are decided by both Swiss and German judges based on the Convention between Switzerland and the EU on Jurisdiction in Civil and Commercial Matters, the Lugano Convention (LugÜ). According to Art. 2 Lugano Convention, a defendant can always be sued at its domicile or registered office. This means that a German owner of Copyright Law on a photo can always sue the user of his photo in Switzerland. However, this case is also a special case of tort pursuant to Art. 5 para. 3 Lugano Convention. This means that a German holder of Copyright Law in a photo can bring an action before the court of the place where the harmful event occurred or threatens to occur. Depending on the situation, this may be in Switzerland or Germany in the case of an unlawfully used photo.
When a photo is used offline, this is easier to determine than when it is used online, as the websites are generally accessible everywhere – and therefore both in Switzerland and Germany. According to the relevant jurisprudence of the European Court of Justice (ECJ), the accessibility of the website at the place of the court seized is sufficient to establish the jurisdiction of that court. The website does not even have to be aimed at this place or this state(ECJ 03.10.2013, Case C-170/12, Pinckney/KDG Mediatech para. 39, 42; ECJ 22.01.2015, para. C-441/13 para. 32). However, the court only has jurisdiction to rule on the damage caused on the territory of the state to which it belongs (
How high are justified fees for illegally used photos?
If, in the opinion of a court, a photo has effectively been used unlawfully, the owner of the corresponding rights can demand compensation in addition to ceasing the use.
In this case, the courts apply the so-called license analogy. This means that a court asks itself
There is now also a first court ruling on this in Switzerland. In a decision, the Commercial Court of the Canton of Bern considered a fee of CHF 55 instead of the required CHF 3,500 to be appropriate for a drone photo of a location that was qualified as a snapshot(HG BE 22 35 of 13.02.2023; confirmed by the Federal Supreme Court BGer 4A_168/2023 of 21.04.2023), as the Lawsuit failed to prove that higher prices are paid for comparable photos on the free market. Photos that have artistic merit are likely to justify a significantly higher fee.
When calculating damages for the unauthorized use of photos, courts in Germany often base their calculations on customary industry tariffs (e.g. the tariffs of collecting societies or the Mittelstandsgemeinschaft Foto-Marketing, MFM). This applies in particular if there are no concrete indications of higher or lower rates that are actually customary in the market (see OLG Hamburg, 3 U 49/89, GRUR 1989, 912, 913 – Spiegel-Fotos). According to the jurisprudence of the OLG Düsseldorf(20 U 138/05, GRUR-RR 2006, 393 ff. – Informationsbroschüre), the usual amount according to the MFM tariff is approximately EUR 435 per photo. In addition, German courts take into account factors such as the reputation of the author, the scope of the publication, the circulation or the particular value of the photo. If unlawfully produced copies have been sold, license rates can be applied to the sales price – usually 5% to 10% of the turnover achieved. Higher rates can also be applied for particularly valuable photos.
Should you consult an Attorney-at-Law in the event of Cease and Desist Letters?
The examination of a Cease and Desist Letter raises numerous complex questions, the answers to which are decisive for the further course of events, so that consultation with an Attorney-at-Law is highly recommended. The question of how to react to the warning letter in a specific case depends on the effectiveness and merits of the Cease and Desist Letter, but also on the risks of legal action. In our opinion, it is therefore highly advisable to consult an Attorney-at-Law specializing in Copyright Law in the event of a photo warning letter.
Care must be taken to ensure that the costs for an initial, summary clarification remain proportionate even in the case of such a consultation.
If you have legal expenses insurance, you should clarify whether it may cover the costs of legal advice. Copyright cases are often excluded from legal expenses insurance. However, legal expenses insurers regularly make small cost credits of a few hundred francs for an initial summary clarification and consultation in such cases.
Are unjustified Cease and Desist Letters unlawful?
If affected parties are wrongly issued with warning letters, this warning letter could constitute an unfair act under Art. 3 para. 1 lit. b of the Unfair Competition Act (UCA), which in turn could even be punishable under Art. 23 UCA. This means that in this case, those affected could even file a criminal complaint or a criminal complaint against the person issuing the Cease and Desist Letter. In addition, if the warning letter was sent from Cease and Desist Letter and is unjustified or ineffective, the person concerned can demand reimbursement of the expenses necessary for their legal defense in accordance with Section 97a (4) UrhG, unless it was not apparent to the person issuing the warning letter at the time that the warning letter was unjustified.
Platforms for legal free photos
In our opinion, a good way to prevent photo warning letters as far as possible is to use legally free photos from the corresponding Internet platforms listed below, even if legal use cannot be guaranteed in the context of this article:
- Pixabay: Images under CC0 or own License, free to use, also commercial
- Unsplash: Free, high-quality photos, can be used very liberally
- Pexels: Free photos and videos, commercial use permitted
- Flickr: With filtering many free usable pictures
- Wikimedia Commons: Free entertainment und Öffentlicher Sektor with a clearly marked License, often CC BY or public domain
According to the general terms and conditions of the provider OpenAI, photos and images generated by ChatGPT are also free to use (but see digilaw.ch 08.05.04 ChatGPT & Co. and Copyright Law).
Important! If you use such photos, you should later be able to prove from which platform and under which conditions you downloaded the photos you used. In addition, some platforms require that the platform names the photographer when the photos are used.
Initial Assessment and support with Cease and Desist Letters by Keller Schneider Patent- und Markenanwälte AG with offices in Zurich/Bern/Munich
- Initial Assessment: Examination of the Cease and Desist Letter, legal estimate of success and specific recommendation for action for a flat fee of CHF 300 plus VAT.
- Individual letter (e.g. to the other party or to submit a modified cease-and-desist declaration) for a flat fee of CHF 250 plus VAT.
- Further support: by arrangement
The offer includes in particular an examination of the legal fees claimed and the cease-and-desist declaration and gives you a reliable basis for your further action.
Contact Attorney-at-Law Ueli Grüter or Dr Giedre Neverauskas.
This article first appeared on juristenfutter.ch.