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Saturday, 20 September 2014

Copyright exceptions and user rights in Case C-117/13 Ulmer: a couple of observations

Should you have the right
to digitise your cat's paws?
Last week this blog reported on the latest addition to the copyright collection of the Court of Justice of the European Union (CJEU), this being the decision in Case C-117/13 Technische Universität Darmstadt v Eugen Ulmer KG.

In this case the Court ruled that Article 5(3)(n) of the InfoSoc Directive, read in conjunction with Article 5(2)(c) of the same directive, must be interpreted as allowing Member States to grant – at certain conditions – publicly accessible libraries the right to digitise the works contained in their collections.


This reference for a preliminary ruling was made in proceedings between the Technical University of Darmstadt (TU Darmstadt) and publisher Eugen Ulmer KG (Ulmer). 

In 2009 a library of TU Darmstadt scanned a book whose rights were held by the publisher, Ulmer. The library did so to allow its electronic consultation from dedicated terminals, where users could also print out on paper or store on a USB stick – in part or as a whole – the works made available for consultation there on a one-book-one-user basis. Having unsuccessfully offered the university the possibility of purchasing its own ebooks, Ulmer started proceedings for copyright infringement over unauthorised scanning of that book and other works.

Following partial victory before the Landgericht of Frankfurt am Main (Frankfurt District Court), both parties appealed before the Bundesgerichtshof (Germany's Federal Court of Justice). It was uncertain whether TU Darmstadt could actually rely on the exception pursuant to Article 52b UrhG, by which Germany had transposed Article 5(3)(n) of the InfoSoc Directive into its own copyright law and that reads as follows:

"So far as there are no contractual provisions to the contrary, it shall be permissible to make published works available from the stocks of publicly accessible libraries, museums or archives, which neither directly nor indirectly serve economic or commercial purposes, exclusively on the premises of the relevant institution at terminals dedicated to the purpose of research and for private study. In principle, reproduction of a work in excess of the number stocked by the institution shall not be made simultaneously available at such terminals. Equitable remuneration shall be paid in consideration of their being made available. The claim may only be asserted by a collecting society."

The court decided to stay the proceedings and refer the following questions to the CJEU:

1. Is use subject to purchase or licensing terms within the meaning of Article 5(3)(n) of Directive 2001/29/EC where the rightholder offers to conclude with the estab­lishments referred to therein licensing agreements for the use of works on appropriate terms? 

2. Does Article 5(3)(n) of Directive 2001/29/EC entitle the Member States to confer on the establishments the right to digitise the works contained in their collections, if that is necessary in order to make those works available on terminals? 

3. May the rights which the Member States lay down pursuant to Article 5(3)(n) of Directive 2001/29/EC go so far as to enable users of the terminals to print out on paper or store on a USB stick the works made available there? 

Mere offer is not enough --
acceptance is also needed
The Court's assessment

As regards the first question, the Court compared the language versions of Article 5(3)(n) and concluded that the EU legislature used the concept ‘terms’, which refers to contractual terms actually agreed, not mere contractual offers (as it was the case of Ulmer). It then recalled the rationale of Article 5(3)(n), which is to promote the public interest in encouraging research and private study through the dissemination of knowledge, this being the core mission of publicly accessible libraries. From these considerations it follows that the mere act of offering to conclude a licensing agreement does not rule out the application of Article 5(3)(n).

Turning to the second question, the CJEU noted that, while the exception in Article 5(3)(n) relates to Articles 2 and 3 of the directive, this provision limits the use of works to their ‘communication or making available’. An establishment that gives access to a work contained in its collection to a ‘public’, namely all of the individual members of the public using the dedicated terminals installed on its premises for the purpose of research or private study, communicates that work for the purposes of Article 3(1). The exception in Article 5(3)(n) would be meaningless if such an establishment did not also have an ancillary right to digitise the work in question. Such right would exist under Article 5(2)(c) the InfoSoc Directive 2001/29, provided that ‘specific acts of reproduction’ are involved. This means that, as a general rule and also in compliance with the three-step test in Article 5(5) of the same directive, the establishment in question may not digitise its entire collection.

With regard to the final question, the Court noted that acts such as the printing out of a work on paper or its storage on a USB stick are acts of reproduction, not communication/making available to the public. As such they fall outwith the scope of Article 5(3)(n) exception. They are not allowed under Article 5(2)(c) either, as they are not necessary for the purpose of making a certain work available to the users by dedicated terminals. However, such acts may be allowed under national legislation transposing the exceptions or limitations within Article 5(2)(a) or (b) of the InfoSoc Directive. In any case, the conditions set out in Article 5(5) must be respected.

Kurt is puzzled:
how can Article 5(3)(n) exception
be effective if a Member State does
not also transpose Article 5(2)(c)?
Can you have one and not the other? The fragmented system of EU exceptions

This decision, which largely follows the Opinion [here -- finally available in English] of Advocate General Jääskinen on 5 June 2014, shows how interdependent exceptions and limitations in Article 5 of the InfoSoc Directive are. 

Yet, their optional nature allows Member States to determine the actual shape and scope of any given resulting national exception. In a case like the one at hand, how effective would a national exception pursuant to Article 5(3)(n) be in a Member State that did not also provide in its national law for an exception pursuant to Article 5(2)(c)? Publicly accessible libraries would only have the ‘right’ to communicate/make available digitised works in their collections to the public, but would lack the pre-requisite to that, ie the ‘right’ to digitise them in the first place. 

When there are exceptions and limitations that are so closely linked that they depend on each other to be effective, one may wonder indeed whether it makes sense to maintain a system of exceptions and limitations like that in Article 5 of the InfoSoc Directive. The list contained in this provision is so fragmented and über-specific as regards possible permitted uses to be misleading as to the actual importance of individual exceptions, if considered (and adopted) on their own. 

Exceptions or rights?

It is also interesting to note that in this decision the CJEU employed a language which is not really that of exceptions or limitations (provided that exceptions are actually different from limitations, as both Advocate General Sharpston and the CJEU appeared instead to suggest in VG Wort). 

The Court spoke in fact of an ‘ancillary right’ to digitise works that would stem from the exception in Article 5(3)(n). 

Whether use of the term ‘right’ together or instead of ‘exceptions’, ‘limitations’, ‘permitted uses’, etc, has any practical implications remains to be seen. 

Yet, it is not excluded that it may have a bearing in future interpretations of the three-step test pursuant to Article 5(5). 

In this case the Court ruled that the three-step test prevented the ‘right’ to digitise from being intended as allowing digitisation of the entire collection of a library, in that this would be against the first step, ie ‘special cases’. 

However in future cases the reference to ‘right(s)’ may be used to achieve more relaxed interpretations of – in particular – the final step of the three-step test, which mandates upon exceptions and limitations not to cause an unreasonable prejudice to the legitimate interests of the rightholder. This is because also the legitimate interests ('rights' as opposed to mere 'exceptions'/'limitations') of users relying should not be unduly compressed.

What do readers think?


Malcolm Bain said...

Dear Eleanor,
I would have thought that the limitation of Art. 5.3(n) to dedicated terminals within publically accessible libraries is in itself a sufficient "special case" (wrt three step test) in the context of exploitation of works as a whole. So limiting that exception to only certain works of the library (and not its entire collection) is a special case within a special case - and thus overly restrictive.

Eleonora Rosati said...

Hi Malcolm,

Thanks for your comment. It seems to me that the limitation set by the CJEU might prove controversial to apply in practice: what books is a library allowed to digitise? How many books can it digitise? Etc

Anonymous said...

Malcolm Bain,

Does not the ability of the user - withing the constraint of dedicated terminals - to do whatever the user wants with the content, include making a personal copy and taking that copy with them on a portable memory device, eviscerate the constraint?

Anonymous said...


I do not understand your questions. If the decision is that the digitisation is allowed on the book in question (as an allowable action in the total digitisation of the work), then what would prompt a different result for ANY book in question, and why would you think that - book by book - some different result in the aggregate would be reached?

There is no super-rights holder for the aggregate collection that speaks to a legal issue of digitising the entire works, is there?

Eleonora Rosati said...

@Anonymous on Monday, 22 September 2014 14:27:00 BST: My concern is that the CJEU has interpreted "specific acts of reproduction" as meaning digitisation is OK but not of one's own entire collection. My question is how national courts will determine when "specific" is too much?

As to the point of "super-rights holder", you are right but take the case of Ulmer: it sued the German library over unauthorised digitisation of the history book *and* other books. Do you think that in this case the national court would say that the library undertook "specific" acts of reproduction or went beyond what is allowed under the relevant exception?

Anonymous said...

I guess I do not fully understand the translation (I am in the US) of the notion of standing and how one party can even sue on this "and other books" prong.

I read the decision as having force only on the parties involved -and those related issues. If I lack standing, I cannot enforce or even argue on the merits of what I lack standing to.

If I parlay that understanding and the ability to digitise a specific work that is the issue over which the court has jurisdiction to render a decision, then it only follows that the right to digitise is not - and cannot be - fettered or shackled and that since there is indeed a lack of "super-rights holder" or any restriction based on this absence of an entity that would hold such a right, that there can be no such limit under law.

I realize that we may be coming to the same mental state through different paths, and that my path may be stated in more definitive tones. I take the case you mention (Ulmer) and limit the case to what I understand the issue which can be judged to be. If the German library has won the right to digitise one book - any book, then there is no principle to limit which any one book that one book may be, and by pure logic, there can be no limit as to how many other "one book" can then have the right applied to. Since there is no party that has rights overall there can be no challenge to the overall result of the allowed digitise-this-one-book.

Or perhaps I am missing a piece of law that stops this logic...

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