Opinion of the Advocate General — ECLI:EU:C:2021:918
Date: 2021-11-11
Language of the case: German
Subject matter: Right of establishment;Internal market - Principles;Intellectual, industrial and commercial property;Approximation of laws;Freedom to provide services
Procedure: Reference for a preliminary ruling
Origin: Germany

Summary of the request for a preliminary ruling pursuant to Article 98(1) of 
the Rules of Procedure of the Court of Justice 
Date lodged: 
26 October 2020 
Referring court: 
Landgericht Saarbrücken (Germany) 
Date of the decision to refer: 
6 October 2020 
Applicant and appellant: 
Koch Media GmbH 
Defendant and respondent: 
FU 
  
Subject matter of the main proceedings 
Reimbursement of lawyers’ fees for a warning notice relating to file sharing; 
Ceiling on the recoverable amount  
Subject matter and legal basis of the reference 
Interpretation of EU law, Article 267 TFEU, in relation to the compatibility of the 
ceiling on the recoverable amount of costs associated with a warning notice with 
the following provisions of EU law:  
Directive 2004/48/EC of the European Parliament and of the Council of 29 April 
2004 on the enforcement of intellectual property rights (OJ 2004 L 157, p. 45), 
(‘Directive 2004/48’ or ‘the Enforcement Directive’) 
Directive 2001/29/EC of the European Parliament and of the Council of 22 May 
2001 on the harmonisation of certain aspects of copyright and related rights in the 
information society (OJ 2001 L 167, p. 10) (‘Directive 2001/29’ or ‘the Copyright 
Directive’) 
EN 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-559/20 
 
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Directive 2009/24/EC of the European Parliament and of the Council of 23 April 
2009 on the legal protection of computer programs (OJ 2009 L 111, p. 16) 
(‘Directive 2009/24’ or ‘the Computer Program Directive’) 
Questions referred 
1. a) Is Article 14 of the Enforcement Directive to be interpreted as meaning that 
the provision covers necessary lawyers’ fees as ‘legal costs’ or as ‘other expenses’ 
incurred by a holder of intellectual property rights within the meaning of Article 2 
of the Enforcement Directive by virtue of the fact that he asserts, out of court, a 
right to apply for a prohibitory injunction against an infringer of those rights by 
way of a warning notice? 
b) In the event that 1a) is answered in the negative: Is Article 13 of the 
Enforcement Directive to be interpreted as meaning that the provision covers the 
lawyers’ fees referred to in 1a) in the form of damages? 
2. a) Is EU law, particularly with regard to 
– Articles 3, 13 and 14 of the Enforcement Directive,  
– Article 8 of the Copyright Directive, and 
– Article 7 of the Computer Program Directive 
to be interpreted as meaning that a holder of intellectual property rights within the 
meaning of Article 2 of the Enforcement Directive is in principle entitled to 
reimbursement of the full amount of the lawyers’ fees referred to in 1a), or at least 
a reasonable and substantial proportion of those fees, even if 
– the alleged infringement has been committed by a natural person outside his 
trade or profession, and  
– a national provision provides, for such a case, that such lawyers’ fees are 
generally recoverable only after the value in dispute has been reduced? 
b) In the event that Question 2a) is answered in the affirmative: Is the EU law 
referred to in Question 2a) to be interpreted as meaning that an exception to the 
principle referred to in 2a), according to which the rightholder must be reimbursed 
the full amount of the lawyers’ fees referred to in 1a), or at least a reasonable and 
substantial proportion of those fees, 
taking account of other factors (such as, for instance, how current the work is, the 
period of publication and the infringement by a natural person outside the interests 
of his trade or profession), 
is to be considered 
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even if the infringement of intellectual property rights within the meaning of 
Article 2 of the Enforcement Directive consists in file sharing, that is to say 
making a work available to the public by offering it for free download to all users 
on a freely accessible exchange platform that has no digital rights management? 
Provisions of Community law cited 
Articles 2, 3, 10, 13 and 14 and recitals 14, 17 and 26 of Directive 2004/48  
Article 8 of Directive 2001/29  
Articles 1 and 7 of Directive 2009/24 
Provisions of national law cited 
Gesetz über Urheberrecht und verwandte Schutzrechte (Law on copyright and 
related rights, ‘the UrhG’) 
Gesetz über die Vergütung der Rechtsanwältinnen und Rechtsanwälte (Law on the 
remuneration of lawyers, ‘the RVG’) 
Zivilprozessordnung (Code of Civil Procedure, ‘the ZPO’) 
Facts and procedure 
1 The applicant and appellant (‘the applicant’) distributes computer games on a 
commercial basis. The defendant and respondent (‘the defendant’) is a natural 
person who does not pursue any professional or commercial interests.  
2 The applicant is the holder, within the territory of Germany, of the exclusive 
ancillary copyrights for making a professionally developed computer game 
available to the public. 
3 On at least 13 occasions between 26 November 2014 and 28 November 2014, the 
defendant offered this computer game to others, via his internet connection, for 
download on a file-sharing platform. He infringed the applicant’s rights as a result 
of this file sharing.  
4 In order to assert its rights, the applicant instructed a law firm, which sent a 
warning letter to the defendant on behalf of the applicant. In that letter, the 
defendant was asked to undertake, by way of an undertaking to desist from 
unlawful activities, coupled with a penalty clause, not to make the computer game 
in question accessible to the public and offer it for download any longer. He was 
also asked to pay damages. 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-559/20 
 
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5 As a result of having instructed the law firm, the applicant incurred costs of 
EUR 984.60, which were made up of the following: a fee for assuming 
responsibility for the conduct of the case, charged at 1.3 times the statutory rate 
based on a value in dispute of EUR 20 000, that is to say, EUR 964.60, plus 
disbursements of EUR 20.  
6 In the subsequent court proceedings, in which the applicant sought to recover this 
sum, the dispute concerned, inter alia, the amount of the lawyers’ fees to be 
reimbursed.  
7 At first instance, by judgment of 12 March 2019, the Amtsgericht Saarbrücken 
(Local Court of Saarbrücken) ordered the defendant to pay EUR 124 plus interest 
and dismissed the action as to the remainder. The sum of EUR 124 is composed of 
the following: a fee for assuming responsibility for the conduct of the case, 
charged at 1.3 times the statutory rate based on a value in dispute of EUR 1 000, 
that is to say, EUR 104, plus disbursements of EUR 20.  
8 In its grounds, the Local Court of Saarbrücken relied on the first sentence of 
Paragraph 97a(3) UrhG, pursuant to which the recoverable value in dispute is 
limited to EUR 1 000 in specific cases, provided that such an outcome would not 
be inequitable. 
9 By the appeal brought before the referring court, the applicant is pursuing its 
request to be reimbursed the lawyers’ fees in full.  
Grounds for the reference 
10 The outcome of the dispute hangs on a decision of the Court of Justice on the 
interpretation of the Treaties.  
11 The background to the questions of law that are the subject of these proceedings is 
set out below. Pursuant to Paragraph 97a in conjunction with Paragraph 97(1) 
UrhG, the injured rightholder has a right to obtain a prohibitory injunction against 
the infringer, in addition to other rights, such as damages.  
12 Generally, rightholders initially assert their rights to obtain a prohibitory 
injunction, as is the case here. In order to do so, they instruct a lawyer, for a fee, 
who issues a warning notice pursuant to Paragraph 97a(1) UrhG. The purpose of 
this warning notice is to make the infringer sign a so-called undertaking to desist 
from unlawful activities, coupled with a penalty clause. The signing of such an 
undertaking eliminates the risk of repetition and satisfies the right to obtain a 
prohibitory injunction. It is then no longer necessary and no longer possible to 
assert the right before the courts. The warning notice therefore serves to avoid 
court proceedings. 
13 If the rightholder brings an action for a prohibitory injunction without issuing a 
warning notice in advance, he may incur the costs of the proceedings if the 
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defendant immediately acknowledges the right pursuant to Article 93 ZPO. The 
warning notice therefore also serves to protect the applicant. 
14 Pursuant to Article 97a(3) UrhG, a rightholder whose copyright has been infringed 
may, in principle, be compensated by the infringer for the ‘necessary expenses’.  
15 The term ‘necessary expenses’ refers to the RVG: under German law, recoverable 
lawyers’ fees are generally governed by the RVG and the scale of lawyers’ fees 
laid down in that law. Costs that are higher than those defined in the RVG are 
generally not deemed by the courts to be recoverable. 
16 Pursuant to the RVG, the fees that a lawyer can demand from his client depend on 
the value in dispute. The higher the value in dispute, the higher the fees.  
17 According to the case-law of the highest courts, the value in dispute for a 
rightholder’s right to obtain a prohibitive injunction in respect of current films, 
music or DVDs is at least EUR 10 000.  
18 By virtue of the fourth sentence of Paragraph 97a(3) UrhG, however, the 
recoverable value in dispute is generally limited to EUR 1 000, if the person to 
whom the warning notice is addressed (i) is a natural person who does not use the 
protected work or subject matter for his commercial or self-employed activity, and 
(ii) is not already obliged to cease and desist due to a right of the person who 
issued the warning notice by virtue of a contract, on the basis of a final judicial 
decision or on the basis of an interlocutory injunction. 
19 This ceiling on the value in dispute applies only to the relationship between the 
rightholder and the infringer. The lawyer of the rightholder charges the latter on 
the basis of the higher actual value in dispute.  
20 This can result in significant differences. In a case in which the value in dispute is 
EUR 10 000, for example, this may mean that the rightholder must pay lawyers’ 
fees of EUR 745 to his lawyers, plus VAT, if applicable, but receives only 
EUR 124, plus VAT, if applicable, in compensation from the infringer. This 
means that he must bear the significant difference of EUR 631 himself.  
21 The fourth sentence of Paragraph 97a(3) UrhG contains an exception allowing the 
ceiling to be dispensed with in individual cases if a value in dispute of EUR 1 000 
would be ‘inequitable’ under the circumstances.  
22 This exception appears to be critical in the light of Directives 2004/48, 2001/29 
and 2009/24. The question of how EU law influences the interpretation of that 
provision lies at the heart of this request for a preliminary ruling. 
23 The referring court points out that the questions raised here are raised in a large 
number of its proceedings. In addition, there are a wide range of decisions with 
different outcomes in German case-law. There is therefore a significant interest in 
obtaining clarification from the Court of Justice.  
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-559/20 
 
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First question referred 
24 By the first question referred, the referring court seeks to ascertain whether the 
lawyers’ fees for the warning notice are covered by the legal costs or other 
expenses pursuant to Article 14 of Directive 2004/48 or by the damages pursuant 
to Article 13 of the directive, or are not actually covered by the directive. 
25 In its judgment of 28 July 2016, United Video Properties (C-57/15, 
EU:C:2016:611), the Court of Justice interpreted Article 14 of Directive 2004/48 
in relation to, inter alia, a system of flat rates.  
26 It has not interpreted Directive 2004/48 in relation to the question of whether out-
of-court lawyers’ fees incurred to enforce a right to obtain a prohibitive injunction 
are covered by Article 13 of Directive 2004/48, Article 14 of Directive 2004/48, 
or neither provision. 
27 As German courts have reached different conclusions on this issue, this question 
of interpretation with regard to the Enforcement Directive requires clarification 
from the Courts of the European Union. 
Second question referred 
28 By the second question referred, the referring court seeks to ascertain which 
provisions of EU law are applicable to the ceiling on the value in dispute and to 
the exception to that ceiling. In particular, it asks whether the relevant directives 
are to be interpreted in such a way that, even in the case of infringements by a 
natural person who does not act in a commercial or professional capacity, the 
costs of a warning notice must in principle be reimbursed in full. Moreover, it 
seeks clarification as to whether the costs are not to be reimbursed in full and, if 
that is the case, what factors lead to that outcome.  
29 In the United Video Properties judgment (C-57/15), the Courts of the European 
Union also took a position on this question, namely the extent to which 
reimbursement of only a small part of the costs of the warning notice is 
compatible with EU law, in particular with the second sentence of Article 3(1) of 
Directive 2004/48. The Court of Justice ruled, inter alia, that legislation intended 
to exclude the reimbursement of excessive costs may be justified under certain 
circumstances.  
30 For the assessment of the present case, however, it is decisive whether the 
principles developed in that judgment also apply if the party against whom the 
claim is asserted is a natural person who does not act in a commercial or 
professional capacity. 
31 With the provision in the fourth sentence of Paragraph 97a(3) UrhG, the German 
legislature has reversed the rule/exception relationship of Article 14 of Directive 
2004/48. According to the wording of the provision of German law, if the party 
against whom the claim is asserted is such a natural person, full reimbursement of 
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the costs can therefore be considered only in the event that the outcome would be 
inequitable. 
32 Opinions in the case-law in Germany also differ on the question of how the 
exception in the fourth sentence of Paragraph 97a(3) UrhG should be interpreted 
in a way that conforms with the directive. The referring court takes the view that it 
follows from this that the present decision-making practice of the Court of Justice 
has yet to provide adequate clarification on the legal situation.