1.

This request for a preliminary ruling concerns the interpretation of Article 5(3)(n) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society. ( 2 )

2.

The dispute in the main proceedings is between the Technische Universität Darmstadt (‘TU Darmstadt’) and a publisher, Eugen Ulmer KG, and stems from the fact that TU Darmstadt made available to the public, by terminals installed on the premises of a library, a scientific book which is contained in that library’s collection, the user rights to which are held by Eugen Ulmer KG.

3.

The questions referred for a preliminary ruling by the Bundesgerichtshof (Federal Court of Justice) concern a publicly accessible library and relate to the interpretation of the concept of a ‘work subject to purchase or licensing terms’, the digitisation of works held by libraries and the question whether users may not only view (read) digitised works, but also print them out on paper and save them on a USB stick.

4.

The main proceedings are a test case. TU Darmstadt is supported by Deutscher Bibliotheksverband e.V. (German Library Association) and by the latter’s European counterpart, the European Bureau of Library, Information and Documentation Associations (Eblida). Eugen Ulmer KG is supported by the Börsenverein des deutschen Buchhandels (German Publishers and Booksellers Association). This demonstrates the importance of the present case for libraries, authors and publishers, in particular scientific publishers. ( 3 )

5.

Recitals 31, 34, 36, 40 and 44 in the preamble to Directive 2001/29 read as follows:

...

...

...

...

6.

Article 2 of Directive 2001/29, entitled ‘Reproduction right’, requires, under point (a), that ‘Member States shall provide for the exclusive right to authorise or prohibit’ reproduction, inter alia ‘for authors, of their works’.

7.

Article 3 of that directive, entitled ‘Right of communication to the public of works and right of making available to the public other subject-matter’ requires, in paragraph 1 thereof, inter alia that ‘Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works’.

8.

Article 5 of Directive 2001/29, entitled ‘Exceptions and limitations’, provides in paragraph 2:

‘Member States may provide for exceptions or limitations to the reproduction right provided for in Article 2 in the following cases:

...’

9.

Article 5(3) of that directive stipulates:

‘Member States may provide for exceptions or limitations to the rights provided for in Articles 2 and 3 in the following cases: ...

...’

10.

Under Article 5(5) of that directive:

‘The exceptions and limitations provided for in paragraphs 1, 2, 3 and 4 shall only be applied in certain special cases which do not conflict with a normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the rightholder.’

11.

Article 52b of the Law on copyright and related rights (Gesetz über Urheberrecht und verwandte Schutzrechte, Urheberrechtsgesetz) of 9 September 1965, ( 4 ) in the version applicable at the time of the main proceedings (‘the UrhG’), is worded as follows:

‘Reproduction of works at electronic reading points in public libraries, museums and archives

So far as there are no contractual provisions to the contrary, it shall be permissible to make available published works from the holdings of publicly accessible libraries, museums or archives which neither directly nor indirectly serve economic or commercial purposes, exclusively on the premises of the relevant establishment at dedicated electronic reading points for the purpose of research and private study. 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. Equitable remuneration shall be paid in consideration of their being made available. The right in question may be asserted only by a collecting society.’

12.

TU Darmstadt operates a publicly accessible library. It set up on its premises electronic reading points at which it makes available certain works from its library holdings. As from January or February 2009 they included the textbook ‘Einführung in die neuere Geschichte’ [Introduction to Modern History] by Winfried Schulze, published by Eugen Ulmer KG.

13.

TU Darmstadt had digitised the book to make it available at the electronic reading points. ( 5 ) At the reading points it was not possible simultaneously to bring up more copies of the work than existed in the library’s holdings. Users of the reading points could print out the work on paper or store it on a USB stick in part or in full and take it from the library in that form.

14.

TU Darmstadt did not take up Eugen Ulmer KG’s offer of 29 January 2009 of an opportunity to purchase and use as electronic books (e-books) the textbooks which it published. The parties dispute whether the offer had been made to the defendant in the main proceedings at the time it digitised the textbook at issue.

15.

After the matter had been referred to it by Eugen Ulmer KG, the Landgericht (Regional Court) Frankfurt am Main held, by a judgment of 6 March 2011, that the rightholder and the establishment must have reached prior agreement on the digital use of the work for the application of Article 52b of the UrhG to be ruled out. The Landgericht also dismissed the application by Eugen Ulmer KG seeking to prohibit TU Darmstadt from digitising the contested textbook or having it digitised. It did, however, grant its application seeking a prohibition on users of the library at TU Darmstadt being able, at electronic reading points set up in the library, to print out that work and/or to store it on a USB stick and/or to take such reproductions from the library’s premises.

16.

After the TU Darmstadt had brought an appeal on a point of law before it, the Bundesgerichtshof decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

17.

Written observations have been submitted by TU Darmstadt, by Eugen Ulmer KG, by the German, Italian, Polish and Finnish Governments and by the European Commission, which were all represented at the hearing on 26 February 2014, except for the Polish and Finnish Governments.

18.

By its first question, the referring court essentially wishes to know whether a work is subject to ‘purchase or licensing terms’ within the meaning of Article 5(3)(n) of Directive 2001/29 where the rightholder offers to conclude licensing agreements for the use of that work on appropriate terms with the libraries, educational establishments museums or archives covered by that provision.

19.

All the parties which submitted written observations except for Eugen Ulmer KG propose that this first question be answered in the negative.

20.

The question therefore arises whether the mere offer of an appropriate licensing agreement means that the works concerned are ‘subject to purchase or licensing terms’ and an exception under Article 5(3)(n) of Directive 2001/29 is excluded or, if that is not the case, the rightholder and the establishment must be required to enter into a relevant agreement. According to the referring court, the answer to this question is not clear from the case-law of the Court of Justice.

21.

As TU Darmstadt rightly points out, some light is shed on the relationship between exploitation rights, on the one hand, and limitation rules, on the other, by a reading of recitals 45 and 51 in the preamble to Directive 2001/29. Those recitals state, inter alia, that ‘[t]he exceptions and limitations ... should not, however, prevent the definition of contractual relations designed to ensure fair compensation for the rightholders insofar as permitted by national law’ and that ‘Member States should promote voluntary measures taken by rightholders, including the conclusion and implementation of agreements between rightholders and other parties concerned, to accommodate achieving the objectives of certain exceptions or limitations provided for in national law in accordance with this Directive’. ( 6 )

22.

These two recitals plainly refer, in their German version, to existing contractual relations and the conclusion and implementation of existing contractual agreements, and not mere prospects of licences. The different language versions of those recitals also corroborate this view. ( 7 )

23.

The fact that voluntary agreements should be promoted does not therefore have any bearing on the requirement of the actual conclusion of such agreements for the purposes of the provision in question.

24.

Neither a schematic nor a teleological interpretation leads to a different conclusion. On the basis of a schematic interpretation, the scope of an exception relating to an author’s exclusive right must be interpreted strictly. ( 8 ) However, in the present case it is necessary to interpret the condition governing the application of an exception which defines the works to which the exception may be applicable. The balance sought by Article 5(5) of Directive 2001/29 is achieved either where the author and the user agree on the purchase or licensing terms or where the beneficiary of the exception complies with the restrictive conditions laid down by the national legislature when it transposes that directive. ( 9 ) With this in mind, being satisfied with a simple offer by the copyright holder would allow the application of that exception to be made subject to unilateral decisions, which would therefore deprive the exception of its effectiveness for the establishments concerned. A teleological interpretation also requires, in view of the general interest objective pursued by the Union legislature, namely to promote learning and culture, that the user is able to rely on that exception.

25.

I therefore propose that the Court answer the first question to the effect that Article 5(3)(n) of Directive 2001/29 must be interpreted as meaning that a work is not subject to purchase or licensing terms where the rightholder offers to conclude licensing agreements for the use of that work on appropriate terms with the establishments referred to therein.

26.

By its second question, the referring court is seeking to ascertain whether Article 5(3)(n) of Directive 2001/29 entitles the Member States to confer on establishments the right to digitise the works contained in their collections if that is necessary in order to make them available to the public on dedicated terminals.

27.

The referring court considers that this appears to be the case, but adds that if a corresponding power of the Member States does not already follow as an ancillary competence from that provision, it could be derived from Article 5(2)(c) of Directive 2001/29.

28.

All the parties which submitted written observations except for Eugen Ulmer KG take the view that Article 5(3)(n) of Directive 2001/29 entitles the Member States to confer on establishments the right to digitise the works contained in their collections in so far as that is necessary in order to make those works available on dedicated terminals.

29.

Article 5(3)(n) of Directive 2001/29 applies in the case of ‘use by communication or making available, for the purpose of research or private study, to individual members of the public by dedicated terminals on the premises of establishments referred to in paragraph 2(c) of works and other subject-matter not subject to purchase or licensing terms which are contained in their collections’.

30.

According to the first sentence of Article 5(3), the exceptions and limitations laid down in that paragraph concern the exclusive reproduction right and the exclusive right of communication to the public of works. In fact, some of the exceptions and limitations laid down in Article 5(3) of Directive 2001/29 refer to the exclusive reproduction right and the exclusive right of communication expressly (for example point (c)) or, at the very least, implicitly (point (b)), whilst others refer to just one right (point (d)).

31.

Article 5(3)(n) of Directive 2001/29 mentions communication and making available. These two concepts appear in Article 3 of that directive, and more specifically in each of its three paragraphs. There is no express reference to the reproduction right in Article 5(3)(n) of Directive 2001/29. I therefore conclude that the specific exception referred to in Article 5(3)(n) of Directive 2001/29 is primarily an exception to the exclusive right of communication under Article 3.

32.

As the Court has held, it follows from Article 3(1) of Directive 2001/29 that every act of communication of a work to the public has to be authorised by the copyright holder. It is thus apparent from that provision that the concept of communication to the public includes two cumulative criteria, namely, an ‘act of communication’ of a work and the communication of that work to a ‘public’. For there to be an ‘act of communication’, it is sufficient, in particular, that a work is made available to a public in such a way that the persons forming that public may access it, irrespective of whether they avail themselves of that opportunity. ( 10 )

33.

Accordingly, in circumstances such as those in the main proceedings, the provision of access to the public, consisting in users of dedicated terminals on the premises of public libraries and other establishments mentioned in Article 5(2)(c) of Directive 2001/29, to protected works must be regarded as ‘making available’ and therefore an ‘act of communication’ for the purposes of Article 3(1) of Directive 2001/29. ( 11 )

34.

However, along the same lines, the wording of Article 5(3)(n) of Directive 2001/29 in my view also covers reproduction which is incidental to communication, in this case in the form of the production of a digital copy of a work for the purpose of communicating it or making it available by dedicated terminals. Nevertheless, this does not constitute a transient or incidental act of reproduction forming an integral and essential part of a technological process within the meaning of Article 5(1) of Directive 2001/29, which would not be covered by the author’s exclusive right relating to the reproduction of the work. ( 12 )

35.

The necessary right to acts of reproduction can also be derived from another provision, namely Article 5(2)(c) of Directive 2001/29. That provision applies ‘in respect of specific acts of reproduction made by publicly accessible libraries, educational establishments or museums, or by archives, which are not for direct or indirect economic or commercial advantage’.

36.

The expression ‘specific acts of reproduction’ calls for two observations to be made.

37.

I consider that in this context it covers, among other things, measures to protect the originals of still protected works which are old, fragile or rare. Nevertheless, it also covers reproduction which is made necessary with a view to ‘use by communication or making available, for the purpose of research or private study … by dedicated terminals’, as provided for in Article 5(3)(n) of Directive 2001/29. This may be the case, for example, with works to be viewed by a large number of students in their studies, copying of which would be likely to cause disproportionate wear.

38.

However, in respect of ‘specific acts of reproduction’, neither Article 5(2)(c) of Directive 2001/29 nor Article 5(3)(n) of that directive, interpreted in the light of the general rule laid down in paragraph 5 of that article, ( 13 ) permit the general digitisation of a collection, and the object ‘specific acts of reproduction’ is thus limited to individual‘works and other subject-matter’. In my view, the requirement that the limitations under paragraph 5 of that article be proportionate means that the possibility of using dedicated terminals should not be exploited in order to avoid buying a sufficient number of physical copies of the work by, for example, establishing a rule such as that provided for in Article 52b of the UrhG, under which the number of copies of a work made available at electronic reading points may be no higher than the number held by the establishment.

39.

Where a digital copy of a protected work does not exist for the purposes of the application of Article 5(3)(n) of Directive 2001/29, it is therefore possible to make a copy subject to the conditions laid down in Article 5(2)(c) of Directive 2001/29. The subsequent communication of that copy of the work is itself subject to the conditions set out in Article 5(3)(n) of Directive 2001/29.

40.

I therefore propose that the Court rule that Article 5(3)(n) of Directive 2001/29, interpreted in the light of Article 5(2)(c) of that directive, does not preclude the Member States conferring on the establishments referred to in that provision the right to digitise the works contained in their collections, if that is necessary in order to make them available to the public on dedicated terminals.

41.

By its third question, the referring court is seeking to ascertain whether the rights which the Member States lay down pursuant to Article 5(3)(n) of Directive 2001/29 may go so far as to enable users of dedicated terminals to print out on paper or to download onto a USB stick in part or in full the works made available there.

42.

The referring court suggests that the first part should be answered in the affirmative and that the second part of that question be answered in the negative. TU Darmstadt proposes that both parts of the question be answered in the affirmative, whilst the Italian and Finnish Governments propose that the first part be answered in the affirmative and the second part in the negative. Conversely, Eugen Ulmer KG and the Commission propose that both parts of the question be answered in the negative. The German Government takes the view that the question is not governed by Article 5(3)(n) of Directive 2001/29, but by Article 5(2)(a) to (c) of that directive, whilst the Polish Government sets out some considerations but does not propose a specific answer.

43.

In examining the two situations mentioned in the question asked by the referring court, relating to the possibility for users of dedicated terminals to print out on paper or to download onto a USB stick in part or in full the works made available there, regard must be had to the concept of the right of communication. According to the Court’s case-law, a broad interpretation should be given to the concept of communication within the meaning of Article 3 of Directive 2001/29, ( 14 ) whilst any exception to that right is interpreted strictly. ( 15 )

44.

As I have just noted in connection with the second question, Article 5(3)(n) of Directive 2001/29 primarily sets out an exception to the exclusive right of communication provided for in Article 3 of that directive.

45.

In the context of Article 5(3)(n) of Directive 2001/29, the limitation to the right of communication consists in the use, without the authorisation of the author, of works on dedicated terminals by making them available to members of the public in such a way that the user can access them in the establishment as he likes.

46.

It must be ascertained whether such communication also covers saving on a USB stick and printing out on paper. I would note at the outset that the two situations envisaged are not acts of communication but acts of reproduction. In the case of a USB stick, there is the creation of a copy of the digital work and, in the case of a paper copy, a copy of the work on a physical medium.

47.

With regard, first, to saving on a USB stick, the interaction between a terminal and a USB stick involves the creation, on the USB stick, of a new digital copy of the digital copy made by the library. It is here that the notion of dedicated terminals comes into play. Nevertheless, Directive 2001/29 does not specify the meaning of that expression.

48.

In my view, the use of a protected work — such as a literary, phonographic or cinematographic work — on dedicated terminals involves an act of perception ( 16 ) by immediate reading, listening or viewing, which must, moreover, occur on the premises of the library. Thus, the notion of dedicated terminal refers to the equipment provided for that purpose, and not to a specific technical solution. ( 17 )

49.

Against this background, I consider that the concept of communication excludes from the scope of the exception in question the possibility of saving the work on a USB stick, as it does not constitute communication by the public library or other establishment within the meaning of the Court’s case-law, but the creation of a private digital copy by the user. Furthermore, such reproduction is not necessary to preserve the effectiveness of the exception in question, even though it might be helpful to the user. Such a copy may, moreover, be re-copied and distributed online. The exception envisaged for dedicated terminals does not cover the act by which the library makes its digital copy accessible to the user so that he can create a further copy and store it on a USB stick.

50.

The analysis of printing out on paper should follow the same logic. In my view, a process which culminates in a (partial) copy of a work goes beyond the exceptions and limitations laid down in Article 5(3)(n) of Directive 2001/29.

51.

I conclude that Article 5(3)(n) of Directive 2001/29 does not cover either saving on a USB stick or printing out on paper.

52.

However, for the sake of completeness, and with regard to printing out, I would also make the following points.

53.

The modern technical process of photocopying is largely based on the digitisation of the original and the printing of a copy. ( 18 )

54.

Under Article 5(2)(a) and (b) of Directive 2001/29, making photocopies of works within the library may be accepted under certain conditions. Current photocopiers digitise the original and print out on paper an analogue copy of the original work, which amounts to a physical reproduction of the original following digitisation.

55.

The Court held in VG Wort and Others that ‘the wording of Article 5(2)(a) of Directive 2001/29 refers not only to photographic technique but also to “some other process having similar effects”, namely any other means allowing for a similar result to that obtained by a photographic technique to be achieved, that is to say the analogue representation of a protected work or other subject-matter’. ( 19 )

56.

The Court added that ‘[a]s long as that result is ensured, the number of operations or the nature of the technique or techniques used during the reproduction process at issue does not matter, on condition, however, that the various elements or non-autonomous stages of that single process act or are carried out under the control of the same person and are all intended to reproduce the protected work or other subject-matter on paper or a similar medium’. ( 20 )

57.

On the basis of that approach, it is possible to print out pages from an already digitised work. This situation goes beyond the provisions of Article 5(3)(n) of Directive 2001/29, but may be covered by Article 5(2)(a), (b), and/or (c) of Directive 2001/29. Just as a user of a library may, within the limits laid down by national legislation, photocopy pages of physical works contained in the collection and a library may permit him to do so, the user may print out pages from a digital copy and the library may permit him to do so. Unlike a digital copy saved on a USB stick, where a library or other establishment referred to in Article 5(3)(n) of Directive 2001/29 permits the printing out of digitised works, this does not create a new situation compared with the situation where there is no dedicated terminal. The danger of large-scale unlawful distribution, which is present in the case of digital copies, does not exist either.

58.

In the light of the foregoing, I propose that the third question be answered to the effect that the rights which the Member States lay down pursuant to Article 5(3)(n) of Directive 2001/29 do not enable users of dedicated terminals to print out on paper or store on a USB stick the works made available there.

59.

In the light of the foregoing considerations, I propose that the Court answer the questions referred for a preliminary ruling by the Bundesgerichtshof as follows: