Wallpaper With Copyright-Protected Images: Limits to "Expected Commercial Use" in Germany, France and the United Kingdom

Germany

Photo wallpaper enjoys increasing popularity. New technologies allow high-resolution large-scale realistic pictures to replace simple white or coloured walls.

There is no legal dispute that the images depicted on such wallpaper—photos or drawings—may be protected under copyright law, but are there limits to the use the rightsholder impliedly consented to by offering such photo wallpaper without further restrictions? And if so, where are those limits, particularly in the context of commercial use?

In the three cases at stake, the scenarios of such commercial use of wallpapers, showing copyright-protected images, were the following:

In the first case, the defendant is an individual who acquired such wallpaper and applied it to a wall in her home. Advertising her professional capabilities, she created videos which showed her elaborating on certain topics in her home, the photo wallpaper in the background, and these videos were later published on Facebook to promote her professional capabilities.

In the second case, the photo wallpaper was applied to a wall in the restaurant of a sports facility. Here, the defendant is the advertising agency which had created the website for the sports facility and which showed a picture of this restaurant as reference for its various projects.

In the third case, the defendant operates a hotel which applied a photo wallpaper to one of its rooms, and pictures of the room were taken and published on various websites to advertise the hotel.

The Court's Decision. The plaintiff in the three proceedings is a company founded by a professional photographer which markets photographs taken by the photographer for such wallpapers. It sued the three defendants for copyright infringement, arguing that the described use infringes the author's right of reproduction and of making available to the public. In the first and second instance, the lower German courts had dismissed the cases, arguing an implied consent of the rightsholder to such form of use.

Finally, the Federal Supreme Court for Civil Matters (Bundesgerichtshof), as the highest civil court for Germany, confirmed the findings of the lower courts in its landmark decisions of September 11, 2024, docket numbers I ZR 139 to 141/23.

The First Senate of the Court argued that, while the rightsholder undoubtedly enjoys copyright for the images depicted on the photo wallpaper, an infringement of the reproduction right and the right of making available to the public is justified since, in the described circumstances, showing everyday objects as part of general life experience, the defendants may have assumed an implied consent of the rightsholder.

To avoid this result, the rightsholder has to explicitly reserve its rights and attach a copyright notice which is clearly visible to third parties.

The Senate argued that the described forms of use are common and therefore within the scope of the contractual use of the photo wallpaper which is therefore foreseeable and to be expected by the rightsholder and to which he in return impliedly agreed. This is in line with Art. 2(a), 3(1) of the European Copyright and Information Society Directive 2001/29 (InfoSoc Directive), according to which an author may impliedly allow reproduction and making available to the public.

It is important to note that the Court regards such implied consent not only granted vis-à-vis the original contractual partner, i.e., the buyer of such photo wallpaper, but also vis-à-vis third parties making use of the copyright protected works. As long as the use by such third parties is common from an objective point of view, these third parties may rely on an implied consent as well.

Also, implied consent has priority over exceptions to copyright protection as stated e.g., in Art. 5. InfoSoc Directive and has to be examined first.

Outlook. While this landmark decision results in a certain limitations to copyright, authors and other rightsholders are certainly not without legal protection.

For one, as it is stated in the decision itself, they can explicitly reserve their rights by limiting the permitted use to non-commercial use and insisting on a copyright notice or other language to this respect, clearly recognizable for third parties. In return this may limit the marketability of the product.

But next to such clear cases, there is certainly a limit to what form of commercial use of photo wallpaper is common and must therefore be expected by the author or rightsholder. For example, a setting in which the photo wallpaper is no longer the mere background but plays a dominant role in the setting, creating a particular intended atmosphere might no longer be covered, and in such circumstances, the clearance of the rights prior to such commercial use is advised.

France

Under French law, the concept of implied consent in the context of copyright is recognized by the courts in specific instances. French copyright law requires consent, most of the times in written form, from the copyright holder for any transmission of rights covering the reproduction or public display of protected works. This approach means that the use of photo wallpaper in commercial settings, as described in the German Supreme Court decision, would likely be considered an infringement in France unless express permission is evidenced from the copyright holder.

However, French courts have occasionally recognized certain exceptions and limitations to copyright or allowed for the recognition of implied consent, such as the doctrine of "accessory use" (usage accessoire), where the copyrighted work is not the main subject of the reproduction but merely an incidental part of a larger scene. The French Supreme Court's decision of May 12, 2011 (Cass. civ. 1, 12 mai 2011, n° 08-20.651) provides further clarity on this doctrine. The Court identified three cumulative criteria for determining whether the representation of a copyrighted work is accessory: the interweaving of the work with the subject matter, the accessory nature of the work to the subject matter, and the accessory nature of the work to the represented subject. In the specific case, the Court found that the illustrations in question were only briefly shown by the camera, often in the background, with the main focus on the students and the teacher. This incidental inclusion was deemed a limitation to the author's monopoly under the Directive 2001/29/EC, as transposed into French law.

The German Supreme Court's holding stands in contrast to the more stringent French law, which tends to focus on express or written authorization for the commercial use of copyrighted works. French rightsholders are advised to clearly state the scope of permitted use, while users in France should seek explicit permission to ensure utmost compliance with French copyright law.

United Kingdom

If similar facts were applied by the English courts, the first consideration would be to assess whether there were explicit terms attached to the purchase of the artistic work. The second, and perhaps more realistic, evaluation would be to assess whether the defendant's acts were exempt from infringement via the incidental inclusion exception pursuant to section 31 of the United Kingdom's Copyright, Designs and Patents Act 1988. Such evaluations are customarily highly fact specific, and the likelihood of infringement will often turn on how prominently a copyright holder's work is featured within the commercial piece which is communicated to the public. 

Implied Licensing. Implied licensing is a well-established concept in English law and has been successfully deployed as a defence to UK infringement actions. However, the limits of implied licensing as a defence to infringement were outlined in Grisbrook v MGN [2009] EWHC 2520 (Ch). Here, the Court declined to imply a licence in favour of a newspaper which had published on its website photographs taken by a freelance photographer, despite the fact that the newspaper had paid for the photographs in order to print them in its hard copy editions. The judgment stated that in the absence of an express agreement, the burden will always fall on a defendant to justify the basis for implying a licence to cover what would otherwise constitute acts of infringement. It also emphasised that the Court will always determine the scope of an implied licence by reference to what the parties contemplated at the time the licence was allegedly granted.

Incidental Inclusion. In the absence of a commercial or implied licensing arrangement between the parties, defendants in such actions are likely to rely on section 31 of the UK's Copyright, Designs and Patents Act 1988.

Section 31 provides that copyright is not infringed in a work which is only incidentally included in an artistic work, sound recording, film or broadcast. It goes on to clarify that copying, playing, showing or otherwise communicating any work made under the exemption does not constitute infringement either.

The meaning of incidental inclusion was discussed in Football Association Premier League Ltd v Panini UK Ltd [2003] EWCA Civ 995. The Court held 'incidental' should be given its ordinary English meaning, indicating an aspect which was of secondary importance, or which lacked direct relevance. 

To the extent photographic wallpaper is prominently included in another work for commercial or aesthetic reasons, that later work is unlikely to benefit from the Section 31 exemption. However, where the original work appears as part of the background or setting to another primary subject, the defence may apply.