In his June 5 opinion, Advocate General Niilo Jääskinen said that libraries and other institutions can digitize books and other copyrighted works in their collections without separate permission to do so from the rights holders, though his opinion limits the public’s ability to access digitized works for personal use.

The case, Technische Universität Darmstadt v. Eugen Ulmer KG, stems from a disagreement between a German university and a publisher, after the former digitized a book without authorization from publisher Eugen Ulmer, the copyright owner. Although the number of simultaneous readers of the digital version could not exceed one, analogous to the number of hardcopies in the library, the digitization allowed users to print or save on flash drives whole copies of the electronic version.

Eugen Ulmer offered the university a contract for rights to the e-book of the work in question. The school declined and the publisher sued for copyright infringement. Neither party could claim complete victory in district court, so the case was appealed to the Bundesgerichtshof (German Federal Supreme Court), which suspended proceedings and requested a preliminary ruling from the CJEU, sending three questions to the Court for clarification.

Purchase or licensing terms for digitized copies

Advocate General Jääskinen first considered whether use of copyrighted materials was subject to purchase or licensing terms under Directive 2001/29/EC (the InfoSoc Directive), where the copyright owner offers to conclude with the institution licensing agreements for the use of works on appropriate terms.

In the opinion of the advocate general, if an institution has no licensing contract with the copyright holder for electronic publication, but does have an agreement on the rights to the hardcopy version, the institution should be allowed to make the content available in electronic format via terminals. Furthermore, the publisher cannot oblige the institution to enter into an e-book contract.

The right of member states to allow their institutions to digitize works

The second question the German Supreme Court sent the CJEU dealt with member states’ rights: are they able to grant institutions within their borders the right to print or store digitized copies of hardcopy works in their collections?

Referring to CJEU case law, the advocate general underscored that an “act of communicating to the public” occurs when actions are taken that give the public access to works, whether they make use of this access or not. Mr. Jääskinen determined that making copyrighted works available via terminals should be considered an act of communicating to the public, as specified under the directive, and is therefore the prerogative of the member states.

The advocate general argued that because of this, the provisions of the directive should be no obstacle for member states to grant given institutions the right to digitize the works from their collections and make them publically available through terminals.

The right of making available and the right to reproduce

The last issue dealt with by the advocate general concerned the actual act of reproducing copyrighted material, either by printing or saving copies to external devices (e.g., USB sticks), and whether or not the rights conferred to member states in answering the previous question extended as far as to allow users to print and save works on personal devices.

Here Mr. Jääskinen concluded that the directive does not extend member states the right to regulate their laws in such a way that would allow for the personal saving of digital copies of the works. Copying works onto an external drive is not included in the boundaries of “making available” and should be deemed “reproducing,” wrote the advocate general, as it is an action of creating more copies of the work.

“In the given context, the notion of making available excludes from the limits of mentioned exception the possibility of copying the work to a flash drive, because the given case is not about a public library making works available … but creating a private digital copy for a single user,” wrote the advocate general. “Moreover, such reproduction is not necessary to ensure the utility (effet utile) of the mentioned exception, even if it is useful for the user. Such a copy can also be copied again, and reproduced on the Internet.”

Mr. Jääskinen did note that the provisions of the directive make it possible to photocopy works in a library, and the nature of this reproduction could rightfully be extended to digitized versions. If a library or other institution, working within the limits of the law, entitles users to photocopy pages of a hardcopy work, it is a reasonable extension of this to allow them to print pages of a digitized version.

The opinion of Advocate General Jääskinen gives both hope and concern to those desiring more liberal EU copyright laws. His responses to the first two questions argue for greater freedoms for member states and their institutions to digitize works for which they own only hardcopy rights. His overall opinion on the third question, however, does set limits to personal use. His reasoning for not allowing the digital copes to be saved on external drives is based on the assumptions that the user will not use the copy for his or her own needs, but will instead illegally publish copies of the work on the Internet. It is certain that such risks do exist, but it is disappointing for those seeking liberalization of the law that this slim possibility is enough to restrict the rights of individuals to use such copies for personal use.