German Federal Court says that libraries have a right to digitise their collections

Last September this blog reported [here and here] on the decision of the Court of Justice of the European Union (CJEU) in TU Darmstadt v Ulmer, C-117/13, a reference from the Bundesgerichtshof (German Federal Court of Justice) seeking clarification as to the interpretation of relevant exceptions in the InfoSoc Directive - these being Article 5(2)(c) and Article 5(3)(n) - that allow, amongst others, publicly accessible libraries to digitise works in their collections and make them available for users to view at dedicated terminals.

Among other things the CJEU ruled that, while the exception in Article 5(3)(n) relates to Articles 2 and 3 of the InfoSoc 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. 

Katfriend Nils Rauer (Hogan Lovells) represented TU Darmstadt in the German litigation, and has contacted this Kat to let the readers of this blog know that, following the CJEU judgment, the Bundesgerichtshof has now issued its decision [not yet available] in this case, ruling completely in favour of TU Darmstadt. 

According to the press release issued by Hogan Lovells:

"Since 2009, German libraries and German publishers have been arguing about the scope and reach of Sec. 52b of the German Copyright Act (UrhG). The said section holds a statutory limitation of copyright allowing privileged institutions (public libraries, museums, and archives) to make available to individual members of the public works physically contained in their collections. The dispute went up all the way to the Court of Justice of the European Union (CJEU) which rendered its preliminary ruling in September 2014 ...

An important example of how
the right to digitise may be exercised

The judges decided 100% I favour of TU Darmstadt and dismissed the publisher's complaint. In consequence, public libraries may now digitise their physical collections and may make available to their users the digitized works through terminals located in the respective reading rooms. They may do so irrespectively of whether the publisher offers a digital version of the book or not. Further, the library users may not only read the digitized works, they may also print out parts thereof or save those parts to USB sticks. Such reproduction, however, must stay within the boundaries of private or academic use according to Sec. 53 UrhG. In return, the publishers are entitled to receive fair compensation.

The current German decision needs to be seen against the background of Article 5(3)(n) of theInfoSoc. The said provision allows the Members States to provide for very specific exemption or limitations to the concept of copyright. Privileged institutions may be empowered to make works (and other subject-matter not subject to purchase or licensing terms which are contained in their collections) available, for the purpose of research or private study, to individual members of the public by dedicated terminals on their premises. The German legislator made use of this right and implemented section 52 b UrhG with effect of 1 January 2008. Due to the somewhat unfortunate language the legislator used, debates amongst publishers and librarians commenced immediately. The litigious dispute that eventually led to the current decision started in 2009.

The publishers' first concern was that the law in question does not refer to a right of digital reproduction of physical works. They put forward that exceptions and limitations are to be interpreted narrowly. Accordingly, one should read an implied right to digitize into Sec. 52 b UrhG. The German Federal Court now takes a different view on this. Without a permission to digitize, the exception aimed at would run empty. Thus, the libraries must have the right to transform their physical collections into digital data.

The publishers further argued that privileged institutions should not be entitled to rely on a statutory limitation if the respective work could be obtained via a license form the publisher on fair terms. Again, the judges ruled in favour of TU Darmstadt. They refer to the wording of the InfoSoc Directive and point out that only in cases where license arrangements already exist can they take priority over the statutory law.

A different type of 'dedicated terminal'

A further major concern on the publishers' side was the question of what the library users may actually do with the work displayed at the library terminal. They argued that read-only access was feasible. TU Darmstadt responded that thorough academic research requires the possibility to print out and/or save the relevant parts of the book. Reference was made to the fact that Article 5 (2) (b) of the InfoSoc Directive does not differentiate between analogue and digital reproduction. The German Federal Court once more followed the university's line of argument. The judges state that the library user may rely on Sec. 53 UrhG when using the library terminal. Thus printouts and digital copies are allowed within the boundaries of private and academic studies.

Now that the German Federal Court ruled in favour of TU Darmstadt, it may be assumed that a great member of libraries will start offering respective terminals. Given that Sec. 52 b UrhG is now furnished with a clear and transparent scope and reach, adequate legal security allows for such development. However, publishers and libraries still need to sit together and to agree on what may be deemed an adequate compensation for the publishers. The details of the respective copyright levies should be fixed on short notice in order to safeguard full compliance with EU law."