Author: Eleonora Rosati (e-LAWnora and University of Southampton)
Technische Universität Darmstadt v Eugen Ulmer KG, Court of Justice of the European Union, Case C-117/13, ECLI:EU:C:2014:2196, 11 September 2014
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu215, first published online: November 10, 2014
In this decision, the Court of Justice of the European Union (CJEU) ruled that Article 5(3)(n) of Directive 2001/29 (the ‘InfoSoc Directive’), read in conjunction with Article 5(2)(c) of the same directive, must be interpreted as allowing Member States to grant publicly accessible libraries the right—under certain conditions—to digitize the works contained in their collections.
Is use subject to purchase or licensing terms within the meaning of Article 5(3)(n) of the InfoSoc Directive where the rightholder offers to conclude with the establishments referred to therein licensing agreements for the use of works on appropriate terms?
Does Article 5(3)(n) of the InfoSoc Directive entitle the Member States to confer on the establishments the right to digitize the works contained in their collections, if that is necessary in order to make those works available on terminals?
May the rights which the Member States lay down pursuant to Article 5(3)(n) of the InfoSoc Directive 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?
As regards the first question, the CJEU 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 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 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 digitize the work in question. Such a right would exist under Article 5(2)(c) of the InfoSoc Directive, 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 digitize 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 or making available to the public. As such, they fall outside the scope of the 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 via 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.
This decision, which largely follows the Opinion of Advocate General Jääskinen in Technische Universität Darmstadt v Eugen Ulmer KG, C-117713, ECLI:EU:C:2014:1795, shows how interdependent are the exceptions and limitations in Article 5 of the InfoSoc Directive. 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 be under Article 5(3)(n) in a Member State that did not also provide in its national law for an exception under Article 5(2)(c)? Publicly accessible libraries would only have the ‘right’ to communicate or make available digitized works in their collections to the public, but would lack the pre-requisite to that, ie the ‘right’ to digitize 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, indeed, wonder 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 overly specific as regards possible permitted uses to be misleading as to the actual importance of the individual exceptions, if considered (and adopted) on their own.
Significantly, 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 Verwertungsgesellschaft Wort (VG Wort) v KYOCERA Document Solutions Deutschland GmbH and Others and Hewlett-Packard GmbH v Verwertungsgesellschaft Wort (VG Wort), Joined Cases C-457/11 to C-460/11, ECLI:EU:C:2013:34). The court spoke of an ‘ancillary right’ to digitize works, which would stem from the exception in Article 5(3)(n). Whether the use of the term ‘right’ alongside, or instead of, ‘exceptions’, ‘limitations’, ‘permitted use’, etc, has any practical implications is as yet unknown. Yet it is not excluded that it may have a bearing in future interpretations of the three-step test under Article 5(5). In this case, the court ruled that the three-step test prevented the ‘right’ to digitize from being intended as allowing digitization 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 should not be unduly compressed.