The CJEU: a threat to the development of e-books?

17 September 2014

The Court of Justice of the European Union ("CJEU") rendered its judgment on 11 September 2014 in case C-117/13 (ruling) relating to the copyright exception for the purpose of research or private study.

Factual background

The case opposes the Technische Universität Darmstadt ("University of Darmstadt") and the publisher Ulmer, regarding the digitisation of a textbook of Mr. W. Schulze.

More specifically, the University of Darmstadt digitised the works contained in its library collection and allowed the public to consult such works on site on electronic points installed in the library.

The possibility of consulting the collection presented some particularities. Although it did not allow for a greater number of digital copies of a work to be consulted at any one time than the number of hard copies owned by the library, it did however permitted users to make partial or full paper copies and/or store the copies on USB sticks.

Finally, in order to understand the first question, it shall be noted that the University of Darmstadt did not accept Ulmer's offer to purchase the e-books versions of certain textbooks contained in the library collection.

Legal background

The case relies on Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society (the “InfoSoc Direcive”), and more particularly on article 5(3)(n) which provides for an exception to the author's exclusive rights in certain limited cases. The exception may be broken down into the following five characteristics:

  • It is limited to the use by communication or making available;
  • It is restricted to the purpose of research or private study;
  • It only applies to individual members of the public;
  • It can be enjoyed only via dedicated terminals on the premises of certain limited establishments - i.e., publicly accessible libraries, educational establishments or museums, or archives (“libraries”); and  
  • It only concerns works not subject to purchase or licensing terms which are contained in their collections.

In short, libraries are entitled to digitise their collections without the authors’ consents in order to make them available at dedicated electronic reading points.  

Such provision is transposed in Germany under paragraph 52b of the German Copyright Law of 9 September 1965. Although the wording of the German exception is very similar to the one of article 5(3)(n) of the InfoSoc Directive, it adds that “the number of copies of a work made available at electronic reading points shall not, in principle, be higher than the number held by the establishment”. It also provides for a fair compensation in favour of authors.


A mere contractual offer cannot exclude the application of the exception

As mentioned above, the exception will not apply if the work (the textbook) is subject to purchase or licensing terms. The publisher therefore attempted to rely on its offer to the University of Darmstadt to purchase and use the textbooks it publishes as e-books.

Unfortunately the CJEU does not examine the meaning and the scope of the phrase “works (…) not subject to purchase or licensing terms”, contained in article 5(3)(n). For instance do general copyright disclaimers present in numerous books (e.g., “© - all rights of translation, adaptation and reproduction strictly reserved for all countries”) have an incidence on the exception? The CJEU disregards such question by only looking at the issue from the sole perspective of the offer made by Ulmer, missing thus on the opportunity of ruling on the interesting question of primacy of contractual terms over copyright exceptions.   

The CJEU finds especially that the mere act of offering unilaterally to conclude a licensing agreement is not sufficient. The exception under article 5(3)(n) is therefore only excluded in case of ‘existing’ contractual arrangements. According to the CJEU, concluding otherwise would imperil the public interest objective of article 5(3)(n) – i.e., promoting research and private study, through the dissemination of knowledge.

In addition, it should be noted that the CJEU justifies its conclusion in light of the triple test contained under article 5(5) of the InfoSoc Directive. According to the CJEU, the exception under article 5(3)(n) is accompanied by a number of restrictions that guarantee its applicability in (i) special cases, (ii) which do not conflict with a normal exploitation of the works, and (iii) do not unreasonably prejudice the legitimate interests of the rightholder.

Libraries may digitise the books from their collections

In the framework of the second question, the CJEU is compelled to determine whether the exception under article 5(3)(n) allows libraries to digitise the works contained in their collections.

Although the answer may seem straightforward, the confusion appears to derive from the wording of the exception of article 5(3)(n), which refers only to the “use by communication or making available (…) to individual members of the public”. Such exception therefore does not refer to the reproduction of works.

In its reasoning, the CJEU acknowledges the necessary act of reproduction when digitising works and further examines whether article 5(3)(n) permits the reproduction by libraries.

More specifically, the CJEU reminds that article 5(3) provides for exceptions to the rights provided under articles 2 and 3 of the InfoSoc Directive, and thus to both the exclusive rights of reproduction and of communication to the public.

The CJEU further rules that the right of communication of works recognised to libraries would be rendered meaningless or ineffective if they did not have an ‘ancillary right’ to digitise the works. By relying on a so-called ancillary digitization right, the CJEU follows Advocate-General Jääskinen and is once more taking a creative and purposive approach to copyright.

In order to ground such reasoning, the CJEU is compelled to broaden its analysis as the question appears to fall outside of the exception under article 5(3)(n). The CJEU therefore relies on another exception. Pursuant to article 5(2)(c), libraries are allowed to pursue “specific acts of reproduction”. The CJEU is, en passant, further delimiting the meaning of such phrase. According to the CJEU, it shall be understood as meaning that libraries are not entitled to digitise their “entire collections”. Remains then unclear which types of works may be digitised by libraries in order to remain within the meaning of article 5(2)(c), and thus also within the meaning of article 5(3)(n); as restricted by the triple test.

In addition, the CJEU examines “the scope of the ancillary right of digitisation” in light of the triple test.

Such an exercise may seem surprising mainly because the triple test aims at restricting exceptions and not to interpret an ‘ancillary right’ put forth by the CJEU in the framework of the exception under article 5(3)(n).

The CJEU applies nonetheless article 5(5) of the InfoSoc Directive in concreto. It concludes that the applicable national legislation takes due account of the triple test as (i) the digitisation of works by libraries does not lead to having the number of copies of each work available by dedicated terminals being greater than that which those libraries have acquired in analogue format; and (ii) the subsequent making available of that work in digital format, on dedicated terminals, is subject to an adequate remuneration.

Such application of the triple test by the CJEU may seem rather unusual for the CJEU. Indeed, it operates by itself, and not through the national court, an upstream analysis of German copyright law in light of the concrete facts it possesses. Should it therefore be concluded that the triple test is (now) intended for the CJEU and not for national legislators or courts, as it was previously thought? If that is the case, such approach would create legal certainty within the European Union.

However, the way the CJEU applies the test may be deemed unfortunate, and in particular with respect to the second test relating to the normal exploitation of the work. Indeed, the CJEU disregards the fact that when digitising a book, the library will have at least two copies accessible instead of one: the hard copy and the digital one. It therefore appears to omit looking at the business of e-books and more generally does not apply the triple test from an economic standpoint.

Could libraries permit to print the works or store them on USB sticks?

In a third and final step the CJEU is requested to rule on the question as to whether libraries are entitled to allow individuals, by the dedicated terminals, to (i) print the works on paper and/or (ii) store them on USB sticks.

Although such question led to diverging views (as highlighted by Advocate-General Jääskinen), the CJEU provides a relatively short answer.

The CJEU acknowledges that the acts of printing and storing on USB sticks lead to a reproduction of works, given that it involves the creation of a new copy of the work. It further concludes that its reasoning in the framework of the second question to legitimise the digitisation of works does not apply in the framework of this third question because:

  • Such reproductions (on paper or USB sticks) are not necessary for the purpose of making the work available to the users of the work; and
  • Such acts of reproduction are carried out by individual users and not by the libraries referred to in article 5(3)(n).

The CJEU nevertheless concludes that such acts may be authorised in accordance with other exceptions – i.e., the reprography and private copying exceptions under articles 5(2)(a) and/or 5(2)(b) of the InfoSoc Directive.

It shall nevertheless be reminded that such exceptions have been subject since 2008 to very heated debates across the EU and have already given rise to six judgments of the CJEU (Padawan (C-467/08); Thuiskopie (C-462/09); Luksan (C-277/10); ACI Adam (C-435/12); VG Wort (C-457/11); Amazon (C-521/11)). Also, the CJEU is further expected to rule in two additional cases (Copydan (C-462/12); and HP (C-572/13)).

The limits of the CJEU's judgment and the InfoSoc Directive

One may legitimately wonder what impact this judgment may have in the broader framework of digitisation of protected works.

Foremost, this first decision interpreting the exception under article 5(3)(n) seems to have a limited scope of application. This is mainly due to the limits of the legal regime of copyright exceptions under the InfoSoc Directive. Indeed, as demonstrated above, the conditions to benefit from the exception for the purpose of research or private study are very restrictive. Accordingly, it will only concern publicly accessible libraries, educational establishments or museums, or archives, wishing to digitise their collections; bearing in mind that only part of their collections may be digitised. One may therefore regret that this judgment does not provide answers for the digitisation of works by private entities.

In all likelihood, this judgment sheds some light, once more, on the limits of the InfoSoc Directive, which aimed at harmonising certain aspects of copyright in the information society, and its inability to adapt to ever-evolving technologies and needs. The Directive’s intention to be adapted to technological evolution does not alter such conclusion; except by adopting a contra legem interpretation.    

But even for those establishments referred to in article 5(3)(n), this judgment seems to have limits as it does not allow facing current practices by such establishments, such as inter-library loans, which are common practice between universities inside and outside a Member State. It probably also excludes the application of the exception for the purpose of research or private study in case of digital subscription and does not allow for the consultation of the digitised works outside the library’s premises.