In a decision dated May 31, 2012, the Federal Court of Justice (BGH) had to make a decision that dealt with the validity of the general terms and conditions of a magazine publisher. The relevance of this decision for the IT sector is not immediately apparent. However, both journalists and programmers are authors under copyright law. Experience has shown that the well-organized journalists' associations are the first to question unpopular general terms and conditions of larger companies before the other sectors "catch up", so it is safe to say that the results of this legal dispute will also find their way into the IT sector in the foreseeable future.
In a series of recent decisions (OLG Hamburg, judgment of June 1, 2011; OLG Munich, judgment in summary proceedings of April 21, 2011; LG Mannheim judgment of December 5, 2011), the courts had to deal with the effectiveness of buy-out clauses in general terms and conditions. Once you know what buy-out clauses are, you also know why knowledge of the effectiveness of these clauses can be essential for IT.
In principle, buy-out clauses state that the author transfers all rights of use for all conceivable types of use to the purchaser for a lump sum for all time, regardless of how often and how intensively the use is actually made. These clauses may be effective according to the US doctrine of "work made for hire", but according to the German interpretation they are the subject of very controversial discussions. The thinking of the German customer is that he "buys" a certain work and can do whatever he wants with it. The purchase price as a lump sum is the maximum he owes the author. This view is wrong. According to German copyright law, which is now explicitly stated in § 11 para. 2 and § 32ff. UrhG, the author is always to be remunerated appropriately for the exploitation of the work to which he has transferred the rights of use. Or in other words, transferred to the world of IT: Even if the programmer has received a lump sum, he may later be entitled to further remuneration if the software was actually remunerated to a greater extent than that which resulted from the purpose of the contract. Particularly in subcontractor agreements, there is always the problem that the customer wants a comprehensive granting of rights with a lump sum and the general contractor therefore makes a provision with the subcontractor that says: "You transfer all rights to me to everything that arises within the scope of this agreement, for a lump sum.
In the aforementioned decision, the BGH has now said two things that are important to remember: Firstly, the general rule by means of which all rights of use are transferred for all types of use and every form of exploitation is effective. The BGH rebuffed decisions to the contrary by saying that it is beyond judicial review if the parties agree on which rights are transferred and to what extent. The consequence is that the transfer of rights to the customer remains effective and the customer can continue to work with the software. The programmer is not entitled to prohibition rights against the customer by means of which payment claims could be linked. That is the good news.
However, the author, i.e. the programmer, retains a claim to appropriate remuneration in any case, even if the contract provides for the agreement of a lump sum. If, for example, it turns out that the customer initially only wanted a specific application for his business operations in Germany in accordance with the purpose of the contract and was granted the worldwide rights to use the software in the general terms and conditions, he cannot be prohibited from using the software in China, for example: But the programmer can claim reasonable additional compensation in this case. This results precisely from §§ 32 ff. UrhG. And this right cannot be taken away from the programmer by contract. The IT company therefore always runs the risk that the programmer will subsequently assert claims. This will probably only happen as part of the separation from the programmer, but will make the separation from programmers more expensive.
