CJEU in TU Darmstadt v. Eugen Ulmer: Books’ digitization by public libraries is fine but printing and storing can be restricted

By Béatrice Martinet Farano

In a landmark decision issued on September 11, 2014 in case C-117/13 Technische Universität Darmstadt v. Eugen Ulmer KG, the CJEU clarified the scope of the copyright exception for the purpose of research or private study under article 5(3)(n) of Directive 2001/29 (the research or private study exception), thereby upholding the practice of book digitization by public libraries in Europe.

Technische Universität Darmstadt (“Darmstadt“) operates a regional and academic library in which it installs electronic reading points that allow the public not only to consult online works contained in the collection of that library, but also to make partial of full paper copies and/or store such copies on USB sticks. Amongst the books digitized by this library was a scientific textbook written by M. Schulze and published by Ulmer, which was part of this library collection but for which the library had refused Ulmer’s offer to purchase the e-books version of his work.

Under the research and private study exception, a public library can, for the purpose of research or private study, communicate or make available to its users, via dedicated terminals on its premises, copyrighted works contained in their collection, provided these works are not subject to purchase or licensing terms.

Ulmer argued that the digitization of his book was not covered by the exception since it had offered the library to purchase the e-book version of his work and the library had declined to accept his offer. The library, on the other hand argued that the digitization was covered by the exception since Ulmer’s unilateral offer to conclude a license agreement on the digital version of his book did not amount to contractual terms.

The CJEU was therefore asked to determine whether the research and private study exception applied:

(1) to the digitization of a book even where the right holder had offered the library to purchase the digital rights over his work,

(2) to the reproduction involved in the digitization of a book, rather than merely the communication rights of a right holder, as mentioned in the exception,

(3) to the printing and storage of a work on a USB key by libraries users without the author’s authorization.

The Court answered the two first questions in the affirmative and the third in the negative.

A mere contractual offer to conclude a licensing agreement does not amount to purchase or licensing terms

With regard to the first question, the Court first held that a mere contractual offer to conclude a licensing agreement did not amount to purchase or licensing terms. The Court observed that if any author could rule out this exception by means of a “unilateral and essentially discretionary action” (e.g. unilaterally submitting a licensing agreement), this would actually go against the aim of this exception, which is to promote the public interest through the dissemination of knowledge, a core mission of publicly accessible libraries. Absent express contractual terms to the contrary, the author or the publisher could therefore not deny the digitization of their work by the library.

Public libraries are authorized to digitize books under the research and private study exception

The Court was then asked whether public libraries were authorized to digitize books under the research and private study exception, knowing that this exception only refers to the “communication” and “making available” (rather than reproduction) right of the author.

The Court first observed that the digitization of a work, which essentially involves the conversion of the work from an analogue format into a digital one, did constitute an act of reproduction of the work.

The Court however observed that according to the first sentence of article 5(3) of the copyright Directive, the exceptions and limitations set out under this section relate to both the reproduction and communication rights of the author. The Court further noted that libraries do have a reproduction right under article 5(2) (c) of the Copyright Directive and finally observed that the right of communication of works recognized to libraries would be rendered meaningless or ineffective if they did not have an “ancillary right” to digitize the works. The court concluded that under a combined application of article 5(3) and 5(2)(c) of the copyright Directive, member states could grant to public libraries the right to digitize the works contained in their collection, if such act of reproduction was necessary for the purpose of making those works available to users by means of dedicated terminals, within those establishments.

Printing and storing, on the other hand, may be restricted

The Court finally answered the question as to whether libraries were entitled to allow individuals to print the works on paper and/or store them on USB sticks.

Here, the Court ruled that such acts – which clearly involved the reproduction of the works – were not covered by the research and private study exception since they did not appear “necessary for the purpose of making the work available to the users of that work, by dedicated terminals”. The Court therefore concluded that these acts were not covered under the research and private study exception and could therefore be restricted. The Court however observed that these acts may be authorized under the reprography and private copy exceptions under 5(2) (a) or (b) of the copyright Directive, provided a fair compensation was paid to the right holder.

This EU case, which have major implications for copyright law in the digital area, is particularly interesting to read and contrast with the decision issued in the US in Authors Guild Inc v. Google (SDNY 2013) (see TTLF Newsletter No 5-6/2013 p.17), where the Court of New York reached a similar finding that Google’s massive scanning of millions of books did not need any authorization from the right holders, but this time under the US doctrine of fair use.

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