Access to Public Information, Content Regulation / Censorship, Licensing / Media Regulation
Esquivel v. Costa Rican Electricity Institute
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This was a dispute between the Technische Universität Darmstadt (TU Darmstadt) and Eugen Ulmer KG (Ulmer), concerning the right of TU Darmstadt’s to make available to the public works whose user rights were held by Ulmer. The European Court of Justice (ECOJ) upheld the right of public libraries to digitize works contained in its collection in order to make them available to users through specifically dedicated terminals on the premises – an action permitted by Article 5(3)(n) of Directive 2001/29/EC on the harmonization of certain aspect of Copyright and related rights in the information society (Directive). The ECOJ held that this right did not extend to the printing out of works on paper or their storage on a USB stick, but that such acts may, if appropriate, be authorized by the national legislation in Member States as permitted by Article 5(2)(a) or (b) of the Directive.
TU Darmstadt operates a regional and academic library with electronic reading points at which members of the public can consult works contained in the library’s collection. TU Darmstadt digitized a textbook published by Ulmer to make it available to users on their electronic reading points. At the reading points, users could not consult a greater number of copies of a work at any one time than the number of copies owned by the library, but users could print out the work on paper or store it on a USB stick, in part or in full, and take it out of the library in that form.
Ulmer sued in the Frankfurt Regional Court, which held that a right holder and an establishment must reach prior agreement on the digital use of a work, rejected Ulmer’s application to prohibit the digitization of the textbook at issue and granted the request to prohibit users of the TU Darmstadt library from being able to print out that work and/or store it on a USB stick and/or take such reproductions out of the library. On appeal, it was further held that printouts, stored copies, and downloads are related to the reproduction of a work and are not, in principle, covered by the limitation provided for in Article 5(3)(n). Nonetheless, the Court held that they would be permitted, as an extension of the communication or of the making available of a work by the establishment in question, under another limitation, namely, the “private copying” exception in Article 5(2)(b) of the Directive.
The appellate court considered whether the objectives of Article 5(3)(n) were consistent with an interpretation of that provision to the effect that the printing out of a work from a terminal should be permitted, whereas storage on a USB stick should not be as storage on a USB stick encroaches upon the rights of the author of that work more than printing it out on paper. The court decided to stay proceedings and refer three questions to the ECOJ:
“(1) Is a work subject to purchase or licensing terms, within the meaning of Article 5(3)(n) of Directive 2001/29, where the rightholder offers to conclude with the establishments referred to therein licensing agreements for the use of that work on appropriate terms?
(2) Does Article 5(3)(n) of Directive 2001/29 entitle the Member States to confer on those 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 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?” (para. 22).
Before the ECOJ, TU Darmstadt argued for an interpretation of the concept “purchase or licensing terms,” to be understood to mean that the rightholder and establishment concerned must have concluded a licensing agreement in respect of the work in question that sets out the conditions in which that establishment may use the work. Ulmer argued that the mere fact that the rightholder offers to conclude a licensing agreement with a publicly accessible library is sufficient for ruling out the application of Article 5(3)(n) of the Directive, provided always that such offer is “appropriate.”
Judges L. Bay Larsen, President of the Chamber, M. Safjan, J. Malenovský, A. Prechal, and K. Jürimäe delivered the opinion of the ECOJ. The ECOJ compared the language versions of Article 5(3)(n) of the Directive, particularly the English, French, German and Spanish versions — which used the words “terms,” “conditions,” “Regelung” and “condiciones,” and found that the EU legislature used the concepts of “terms” or “provisions” to refer to contractual terms actually agreed upon as opposed to mere contractual offers as argued by Ulmer. The ECOJ held that Ulmer’s interpretation implied that a right holder could at his or her own discretion unilaterally deny an establishment the right to benefit from that limitation in Article 5(3)(n), thereby preventing it from realizing its core mission to promote the public interest by making works available to users. In other words, Ulmer’s interpretation was difficult to reconcile with the aim pursued by Article 5(3)(n) of the Directive to maintain a fair balance between the rights and interests of right holders, on the one hand, and those of users of protected works who wished to communicate them to the public for the purpose of research or private study undertaken by individual members of the public, on the other hand.
The ECOJ’s answer to the first question was that the concept of “purchase or licensing terms” provided for in Article 5(3)(n) of the Directive must be understood as requiring that the right holder and the establishment, such as a publicly accessible library, must have concluded a licensing agreement in respect of the work in question setting out the conditions under which the establishment may use the work.
As to the second question, the ECOJ held that the digitization of a work, which converts a work from an analogue format into a digital one, constitutes reproduction of the work. Further the ECOJ held that the right of communication of works enjoyed by establishments as provided for in Article 5(3)(n) of the Directive would risk being rendered meaningless or ineffective without the ancillary right to digitize the works in question. The scope of that ancillary right of digitization, held the ECOJ, must be determined by interpreting Article 5(2)(c) of the Directive in the light of Article 5(5), which leads to the application of this right only in certain special circumstances that do not prejudice the normal exploitation of the work or other protected objects or cause any unjustified harm to the legitimate interests of the right holder. Thus, the answer to the second question is that Article 5(3)(n) of the Directive, read in conjunction with Article 5(2)(c), must be interpreted to mean that Member States are not precluded from granting to publicly accessible libraries covered by those provisions the right to digitize works contained in their collections, as long as such reproduction is necessary for the purpose of making those works available to users, by means of dedicated terminals, within those establishments.
Finally, the ECOJ held that it was undisputed that acts such as printing and storage on a USB stick are not acts of “communication,” within the meaning of Article 3 of the Directive, but rather of “reproduction,” within the meaning of Article 2, as users were creating a new analogue or digital copy of the work that an establishment made available to users by means of dedicated terminals. However, such acts, unlike acts involving the digitization of a work, cannot be permitted under an ancillary right stemming from the combined provisions of Articles 5(2)(c) and 5(3)(n) of the Directive, since they are not necessary for the purpose of making the work available to the users of that work, by dedicated terminals, in accordance with the conditions laid out by those provisions. This is because the acts of printing and USB storage are carried out not by the establishments referred to in Article 5(3)(n) of the Directive, but by the users of the dedicated terminals installed within those establishments, and, therefore, they cannot be authorized under that provision. Thus, the answer to the third question was that Article 5(3)(n) of the Directive must be interpreted to mean that it does not extend to acts such as the printing out of works on paper or their storage on a USB stick, carried out by users from dedicated terminals installed in publicly accessible libraries. However, the ECOJ also held that such acts may, if appropriate, be authorized under the national legislation of Member States.
Decision Direction indicates whether the decision expands or contracts expression based on an analysis of the case.
This decision of the ECOJ expands expression as it strikes an appropriate balance between upholding the right of establishments, such as public libraries, to digitize and make works in their collections available to the public for the purpose of research or private study subject to an agreement between the establishment, and any rights holder that has previously concluded creating any limitations on this right. Whilst it may be considered a contraction of expression that the ECOJ held that this right did not extend to the printing out of works on paper or their storage on a USB stick, an appropriate balance was struck by interpreting Article 5(2)(a) or (b) of the Directive to allow for such expansion to be authorized by the national legislation in Member States.
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