For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 23 September 2014

Never too late! If you missed the IPKat last week ...

It has been another busy week for Katpost aggregator Alberto Bellan, whose compilation of substantive blogposts from Kat contributors and their guests over the past week reflects both his dedication and theirs.  So here's the twelfth in our series of weekly round-ups, designed to help you spot if you were away from your computer last week and want to know which items are still worth your while to pursue:

In the context of a proceedings between the Dutch Association of Public Libraries and a collection agency dealing with payments for borrowings, the Court of First Instance of The Hague (Rechtbank Den Haag) decided to seek guidance from the Court of Justice of the European Union (CJEU) on a couple of copyright-related matters of topical interest, these being e-lending and digital exhaustion. This might not be the only referral coming from the Netherlands, Eleonora explains, as she seizes the opportunity to recap on what e-lending and digital exhaustion are about and why they are so hot now in the beloved European Union legal system. 

* AIPPI Congress Report 1: A new era of IP collaboration and harmonization

“‘What do you do?" asked the Canadian immigration official at Toronto's international airport.  ‘I'm an IP litigator’, replied the Amerikat”. So starts Annsley’s adventure at this year's AIPPI Congress. This first post of the series focuses on the Supreme Court of Canada’s Justice Marshall Rothstein’s speech upon collaboration, harmonisation, and coordination of the law between domestic courts. The Canadian Justice believes that domestic courts should consider judgments of other foreign domestic tribunals. Do you?

* AIPPI Congress Report 2: Second medical use heats up a Sunday morning


The AmeriKat's colleague Eibhlin Vardy reports on the deliberations of Working Committee Q238, the topic being "Second medical use and other second indication claims". At the outset, the Committee expressed an ambition to pass a resolution that went further than merely endorsing the status quo. Will it succeed in its purpose?


* AIPPI Congress Report 3: Biosimilars - into the great unknown?

The third post of the AIPPI Congress series features Annsley’s reports from the Pharma Day sessions, which focused  on the hot topic of "Biosimilar pharmaceutical products". Key speeches were given by Masahisa Yamaguchi (Chugai Pharmaceutical Co, Japan), who provided a concise and helpful summary of the biosimilars landscape from both US and EU standpoints, Agnes Klein (Health Canada), who explained the regulatory framework for drugs and biologics in Canada under the Food and Drugs Act, Mary Padbury (Ashurst, Australia) who spoke of the need of some context for the current slow growth rate of biosimilars in the global market, and Dominic Adair (Bristows, UK), who brought the audience back to the present market conditions of low market penetration.

* AIPPI Congress Report 4: Should Europe embrace a patent linkage system?

Again from the Pharma Day, Annsley’s colleague Eibhlin Vardy reports on what was a lively discussion on the topic of "Early Resolution Mechanisms for Patent Disputes Regarding Approved Drug Products", the speakers being Warren Sprigings (Sprigings IP Law, Canada), Young Kim (Kim & Chang, Korea), and David Rosenberg (GSK, UK). This post offers a comparative take on patent linkage and early resolution mechanisms. Does the EU need one?

* AIPPI Congress Report 5: 'A' stands for "Arbitration" and "Aereo"

Annsley’s colleague Lorraine Neale brings the details of two workshops that took place during the AIPPI Congress, namely “IP Arbitration” and "Aereo – copyright lessons for the US and beyond”.

* AIPPI Congress Report 6: The big privilege problem

Annsley’s colleague Lorraine Neale reports this time on the workshop "Client Attorney privilege – issues for harmonisation”, which focused on the crucial issue of the protection from forced global disclosure afforded to confidential client-IP adviser communications. During the workshop, she had the pleasure to hear the takes of Steven Garland (Smart & Biggar, Canada and Chair of the AIPPI Standing Committee on Privilege), Pravin Anand (Anand and Anand, India), who gave an overview of the common law doctrine of privilege, focusing his presentation primarily on India, Professor John Cross (University of Louisville, USA), who adumbrated on the attorney-client and the litigation privileges existing in the US, and Michael Kompter (Senior Patent Counsel, IP Awareness and Enforcement, Boehringer Ingelheim, Germany) who considered the issue of privilege from the standpoint of a civil law jurisdiction, as well as providing an in-house counsel’s perspective.

* AIPPI Congress Report 7: The one where the second medical use resolution is adopted

This time Eibhlin Vardy reports on the fate of the plenary session on Q238, entitled “Second medical use and other second indication claims”, that being held by ClaireBaldock (Boult Wade Tennant, UK), who introduced the session by outlining the tremendous patient benefit that can be achieved from incremental innovation such as a second medical use discovery, Sarah Matheson (Allens, Australia), who gave an overview of the 43 national reports that were submitted on Q238, and Andri Hess (Homberger, Switzerland), who chaired the working committee and explained the resolution in detail.

* IP Publishers and Editors Lunch 2014

The IPKat can now confirm that we have all the necessary ingredients for the IP Publishers and Editors Lunch 2014. We have a date, Tuesday 25 November, at 12.30 pm to 2.30 pm. We have a venue, this being the London offices of law firm Bircham Dyson Bell.  This year’sguest speaker is the ever-challenging Ashley Roughton (barrister, one of the General Editors of The Modern Law of Patents, published by LexisNexis and now in its third edition) In the best IPKat’s tradition, this event is free of charge. Want to join [and 27 good souls already have]? Just read the post to know how!

* Deadmau5 and the new Batmobile: is there any synergy?

The first official photo of the new Batmobile, which will be featuring in the forthcoming movie Batman v Superman: Dawn of Justice has just been posted on Twitter. The latter might appeal Deadmau5 [the one of the Ferrari/Purrari case, with Lucy Harrold's guest post here], speculates Jeremy, and also trigger some copyright issues -- eg, would it fall within the CJEU’s concept of Deckmyn-parody [on which see Eleonora’s post here]?

* Of Welsh love spoons, patents and trains: Brits and Chinese still get on just fine

Last week this weblog hosted the first of two instalments of the adventures of the members of the British IPO/FCO-led Expeditionary Force that headed for the Far East to do their bit for China-UK Intellectual Property Week (a.k.a. #UKChinaIP).  Between UKIPO’s Deputy Director gaving a discussion of quality control measures and new training programs at PESC for examiners’, here are Katfriends Gwilym Roberts (CIPA, Kilburn & Strode) and Catherine Wolfe (ITMA, Boult Wade Tennant), sharing their further experiences on the Chinese mission.

* Puss In (Infringed?) Boots

Deckers Outdoor Corporation v J.C. Penney (No. 2:14-cv-02565) is a case held by the Central District of California. As Marie-Andreé explains, it concerns the the design of the famous UGG® boots, which had their fashion moment in the early 21st century, and the very subject matter of IP, between idea and aesthetic appearance.

* The KatChat (or was it a PatChat?): Christopher Rennie-Smith and Darren Smyth discuss EPO proceedings

Jeremy offers a surprisingly detailed summary of the KatChat that took place on 4 September between the redoubtable Christopher Rennie-Smith, now returned from a lengthy tour of duty in the European Patent Office's Boards of Appeal, and our blogging colleague, practising patent attorney and Darren Smyth (EIP).

* BREAKING NEWS: Spanish court refers new case to CJEU on private copying levies

Via Katfriend Fidel Porcuna (Bird&Bird) comes the news that the Spanish Supreme Court has just referred two questions to the Court of Justice of the European Union (CJEU), in the context of an administrative appeal filed by a number of collecting societies (VEGAP, EGEDA and DAMA) and concerning the legitimacy of Spanish system of private copying levies. Eleonora expatiates on what this is about and provides some context concerning copyright levies in the EU legal system.

* Does Twitter portend the demise of IP protection for advertising?

The myriad of small businesses, all of whom have sought to promote their goods and services, both in print and over the air, in text and through visuals and sound, have provided a rich reservoir of issues for generations of IP practitioners. Does Twitter threatens to put paid to this cozy relationship, asks Neil?

* Copyright exceptions and user rights in Case C-117/13 Ulmer: a couple of observations

Last week this blog reported on the latest addition to the copyright collection of the CJEU, this being the decision in Case C-117/13 Technische Universität Darmstadt v Eugen Ulmer KG, where the CJEU ruled that Article 5(3)(n) of the InfoSoc Directive, read in conjunction with Article 5(2)(c) of the same directive, must be interpreted as allowing Member States to grant – at certain conditions – publicly accessible libraries the right to digitise the works contained in their collections. Eleonora analyses the decision in light of two questions, these being to which extent Member States are allowed to choose from the exceptions provided by the Directive and whether those are exceptions or, rather, rights.

* Litigating patents? It's conference time ...

 IBC's 6th Annual International Patent Litigation Conference takes place on 4 and 5 December in the amenable atmosphere of the Melia White House Hotel, LondonSome great personalities, for example Michael Fysh QC, former Patents County Court judge and now reborn as an arbitrator and mediator, Ken Adamo (Kirkland & Ellis LLP), and Katfriends Morag MacDonald (Bird & Bird, left), Richard Vary (Nokia), Sally Field (Bristows) and the eponymous Mehmet Gün are there too, not to mention EPLAW Honorary President Pierre Véron, Margot Fröhlinger (all the way from Eponia), knowledgeable Kevin Mooney (Simmons & Simmons). The organisers are offering a 15% registration fee reduction for readers of this weblog who follow the procedure outlined in this Jeremy’s post. 

Monday, 22 September 2014

Monday miscellany

A press release late last week happily announced the launch of WIPO Pearl, a new database which, it is promised, will provide free access to a wealth of multilingual scientific and technical terminology. As it explains, in relevant part:

"Through its web-based interface, WIPO Pearl promotes accurate and consistent use of terms across different languages, and makes it easier to search and share scientific and technical knowledge. The database initially includes terms found in applications filed via WIPO’s Patent Cooperation Treaty (PCT) and will eventually include collections from other areas of WIPO, such as trademarks, industrial designs, and terminology found in other treaties administered by WIPO.

The 90,000+ terms and 15,000 concepts in 10 languages have all been entered and validated by WIPO-PCT language experts and terminologists, who have experience working with technical documents in multiple languages. Regular additions to the data are planned.

WIPO Pearl offers powerful search features, including the ability to select source and target languages, search by subject field as well as with abbreviations, and “fuzzy,” “exact” and Boolean search functions. Users can obtain a quick list of results, which can be expanded, while browsing via “concept maps” that show linkages among related concepts by language and subject field -- for example, showing concepts that are broader or narrower in scope than other concepts.
You can access it via WIPO's Reference page here. Enjoy!

Around the weblogs.  Keith Mallinson writes on stacking the deck in the analysis of smartphone patent licensing costs on IP Finance, here, while the same blog notes that a chunk of this year's CIPA Congress has been given over to issues of patent commercialisation.  The MARQUES Class 99 design law blog offers a neat analysis by Henning Hartwig of some recent German litigation between Levi Strauss and German company New Yorker under the even neater title "Black eye for selling blue jeans". PatLit's David Berry regales us with a warning from the US that delay in re-examination of a patent can result in litigation laches. Finally, Laetitia Lagarde posts a two-part thriller on the Battle of the Polo Players in the General Court (here and here), far more exciting for trade mark lawyers than for members of the sports fraternity [Merpel is still a little surprised that the image on the left was held similar to the Polo/Lauren man-on-horse logo. In future she will take great care not to feed hay to her bicycle ...].

"Heads, we reform;
tails, we leave it
to the EU ..."
The copyright legislation in the United Kingdom is, so far as this Kat is aware, the longest, the most confusing and the hardest to navigate in the world. If they were giving medals for Legislative Nasties, the Copyright, Designs and Patents Act 1988, together with its attendant amendments and subordinate legislation, would surely win Gold, Silver and Bronze. Bearing this in mind, the title of this year's Herchel Smith Intellectual Property Lecture, "The Need for a New Copyright Act: a Case Study in Law Reform", suggests a topic on which no speaker is likely to run short of words, or inspiration. Given that the speaker is none other than Sir Richard Arnold, Patents Court judge and the source of some of the most interesting IP matters referred to the Court of Justice of the European Union -- including the copyright behemoth of Case C‑406/10 SAS Institute Inc. v World Programming Ltd (finished off by Arnold J here) -- the event should be a real treat. Emeritus Kat and Queen Mary IP Professor Jo Gibson is in the chair.  The date is 13 October and the venue is the Derek Willoughby Lecture Theatre, Queen Mary University of London, Charterhouse Square, London EC1M 6BQ. Click here to reserve your place.

Another Richard,
to boot!
Another judge with his speaking boots on, as it were, is Judge Richard Hacon who, in his own quiet way, has been industriously judging away  as specialist circuit judge of the Intellectual Property Enterprise Court (IPEC) for England and Wales and now has a sufficient abundance of war stories to be warmly welcomed wherever he goes.  As we mentioned back in July, Judge Hacon speaks on 30 September 2014 at the BioHub at Alderley Park, Cheshire.  This is a networking event masterminded by Appleyard Lees and it's free to all comers. The venue is the conference centre by Appleyard Lees' office at the BioHub. The fun starts at 4.30 pm which, despite the northerly location, is still daylight.  To attend, email Sara Baines at to register your interest.

The Great British Vanishing Act: where has home-grown patent filing gone?

Considering that cats spend most of their time fast asleep,
they can be remarkably productive.  If only they could be
persuaded to file more UK patent applications ...
Katfriend, patent attorney and IP enthusiast Peter Arrowsmith (a partner in London-based patent attorneys Cleveland) has recently become interested in patent statistics. Having penned a brief article on the topic for our friends at Patently-O in relation to EPO statistics (cited in the piece below) Peter thought it might be interesting to look at UK Intellectual Property Office (UK IPO) filing statistics too. The figures reveal a downward trend in the number of UK patent applications filed by UK applicants. Peter, with whom this Kat agrees, thinks that this trend is not widely appreciated [in both senses of the word, suspects Merpel] in the profession and merits discussion.

This is what Peter says:
The puzzle of the British invention: where have all our patent applications gone?

What is the state of innovation in the UK?  The general sentiment seems to be that innovation and patent filings are on the rise.  Indeed, it is not hard to find newspaper articles describing the pace of development of technology by dynamic British businesses.  Such opinions are supported by research like the Taylor Wessing Global IP Index, which ranks the UK at number 2.  
Additionally, initiatives like the Patent Box [on which see here and here] have been credited with a general increase in the appetite of UK industry for filing patent applications.  An analysis of the past ten years’ data from the UK IPO reveals a contrary story: a weakening interest in UK patent applications.

Summary of filing statistics 
The graph below sets out the number of UK patent applications (including direct UK applications, and national phase entries of PCT applications) that have been filed by UK applicants in the past ten years.  These data have been put together from the ‘Facts and Figures’ publications by the UK IPO.

It doesn't look too good, folks ...
The graph reveals a steady year-on-year reduction in the number of UK patent applications filed by UK applicants.  In fact, the figures for 2013 are around 25% less than those of 2003.  In contrast, the figures for European and Patent Cooperation Treaty (PCT) applications filed by UK applicants remain reasonably stable over the same period: European Patent Office (EPO) data are available here and PCT data can be downloaded here 
As an aside, it is necessary to treat the figures from the EPO in particular with great care.  These figures can give a misleading first impression since the EPO defines the number of European patent applications as the number of direct European applications plus the number of PCT applications, whether or not these PCT applications subsequently enter the European regional phase.  More on this subject can be found in this post on the Patently-O blog, and in the April 2014 edition of the CIPA Journal. 
In the graph above, UK nationality is defined by the address of the first named applicant.  It will be appreciated that this will not always be an accurate indication of a ‘British’ invention because many foreign companies have R&D facilities in the UK.  Additionally, complex corporate structures mean that a non-UK applicant address is sometimes used, despite the fact that the invention was developed entirely in the UK and the applicant would otherwise appear to be a UK company.  On the other hand, UK companies with overseas R&D departments will sometimes be ‘credited’ with inventions developed elsewhere.  While these factors mean that the statistics must be treated with some care, the definition of applicant nationality has not changed over the period under consideration so it is still possible to pick out general trends. 
The reason for the decline in the number of UK patent applications filed by UK applicants is not immediately clear, especially since the corresponding numbers of European and PCT applications remain relatively stable over the same period.  I have discussed this issue with the UK IPO, but they have been unable to provide any official explanation, other than to suggest that it may be linked to general economic conditions.  This explanation, however, seems unlikely since there was a dip in the UK economy in 2008/09, which is not replicated in the filing statistics.  Moreover the number of applications filed was declining even in the period before 2008, at a time when the UK economy was generally growing. 
We can speculate on a number of alternative explanations.  One possibility is a general decline in British innovation, not linked to the economy.  This is possible, but it is difficult to reconcile with the stability in the figures for European and PCT applications, unless there was some counter-trend causing a relative increase in the number of European and PCT applications.  This is possible, but it seems an unlikely coincidence. 
Another possibility is a reduction in the number of UK applications that are filed by industry for more ‘incremental’ inventions.  This could perhaps be explained by a trend towards outsourcing of patent drafting from in-house departments.  In cases where patent drafting is undertaken by in-house attorneys one could postulate that more patent specifications may be prepared and filed as UK patent applications for trivial inventions, since there would be a low marginal cost for the company.  Where trivial patent applications are filed they may be filtered out at the stage of filing European or PCT applications, since the relevant official fees are higher.  On the other hand, in cases where drafting is outsourced, the cost of engaging an external patent attorney may drive down the number of applications for trivial inventions.    
A further possibility could be a decline in the number of private applicants.  These applicants may be more interested in UK patent protection than in filing European and PCT applications.  Such a reduction could perhaps be explained by a diminished appetite in courting this type of work by UK patent attorneys and/or unattractive fee structures.  Although possible this explanation is difficult to verify since private applicants cannot be readily identified in the data from the UK IPO.

The real explanation for this effect may be due to a combination of the factors above or yet other reasons that I have not considered.  Over to you dear reader: do you have a better explanation?
Merpel notices that the decline seemed to reach a plateau in 2006, but started up again in  deadly earnest in 2007 -- the very year in which the UK IPO teamed up with Wallace & Gromit to promote the latter's Cracking Ideas

Sunday, 21 September 2014

Litigating patents? It's conference time ...

It's not actually true to say that Europe, having first been afflicted by a new, complex and idiosyncratic patent system, has now been smitten by a plague of patent conferences in its wake. However, there do seem to be a few of them around at this time of year -- and there also seem to be a lot of people, especially Europeans, who are determined to attend them.  The reasons for this are not hard to find. For example, and not entirely flippantly, one might suggest the following:
  • In the first place, there's an old saying that, among the blind, the one-eyed man is king [Merpel wants to know about the prospects of one-eyed women being queen ...]. There are a few people who, on the basis that they feel that they do genuinely know something about the new patent litigation scheme for Europe, get the urge to tell everyone else about their real or imagined expertise. Conferences are great places for doing so but, at the onset of the largest upheaval in patent law and patent litigation that Europe has ever seen, hardly any of us has that comforting degree of knowledge gained through experience to be able to claim to be anything other than one-eyed.
  • Then there are people who genuinely want to find about about the new parameters for patent litigation in Europe, the United States and indeed beyond, and who consider that it is more efficient to derive their understanding of the subject from a focused conference than by randomly searching the web, reading blogs or anxiously devouring the newsletters sent to them by law firms, trade organisations and, where appropriate, lobby groups.
  • Others who attend are creatures of habit. Their commercial or professional success has depended on their unerring consistency. Being averse to change, they attend patent law events in the hope of receiving comfort from speakers who say things like "while the substance of the law is changing, things will remain much the same in practice" -- words that one rarely hears in patent conferences at this juncture.
  • Finally there are the people who enjoy networking. They pick up the conference pack, skim the photocopied PowerPoint frames for useful statistics and signs of intelligibility, and then save themselves for the tea, coffee and lunch breaks when they can glean some really useful information, such as what other ordinary folk are making of the sea of change in which all good patent people are tossed.
Putting a patent case together will usually
involve a blend of knowledge and experience
There are also some more solid legal reasons for patent litigation conferences.  Patents are infringed on a daily basis in a world where global marketing strategy, international trade and outsourcing to foreign countries means that regular bog-standard patent infringement actions increasingly have an international dimension.  Accordingly it's good to learn how others put their cases together, how they deal with jurisdictional and enforcement issues, and how they propose to do so in a world of institutional change.

Looking further afield, readers of both this blog and IP Finance will know that there has been an extensive and ongoing debate as to whether patent litigation, and in particular United States patent litigation, has had the effect of depressing patent values, thereby damaging the prospects of patents being firmly recognised as a respectable asset class; investigation of patent litigation in general, bearing in mind its points of intersection with standard essential patents and FRAND arrangements, is thus a worthwhile course of action.  And now that the America Invents Act is losing that glossy sheen of novelty that attended its arrival, many people who resisted events that dealt with it in its embryonic stages are now prepared to lend their ear to practitioners' perspectives on how they live and work with it.

So what is the best that anyone can hope for, when the conference programme that spans the known, the known knowns and the unknown knowns as this one does [Merpel doubts that many patent dispute resolution experts would admit at this stage to there being many, or indeed any, unknown unknowns]? For one thing, one should hope speakers who can look at the new laws -- and the new problems which they cause -- clearly and objectively, measuring them against their personal experience of the old laws; speakers who can interact with their audience, answer questions and, where appropriate, bounce them back at their inquisitors. An event that furnishes such speakers, this Kat is pleased to say, is IBC's 6th Annual International Patent Litigation Conference which takes place on 4 and 5 December in the amenable atmosphere of the Melia White House Hotel, London [for some personal reminiscences concerning this venue, see below].  Several of his friends are speaking, and the organisers are offering a 15% registration fee reduction for readers of this weblog [to claim the 15 % discount, register using this link and be sure to quote the VIP KatCode FKW82525IPKB]

Among the participants is Michael Fysh QC, former Patents County Court judge and now reborn as an arbitrator and mediator. Michael has been a veritable font of kindness for the many youngsters who have approached him for career advice, guidance and experience in the course of his long career. Also on the programme is seasoned veteran Ken Adamo (Kirkland & Ellis LLP), whose lucid lectures have the persuasive flavour of advocacy about them.  Katfriends Morag MacDonald (Bird & Bird, left), Richard Vary (Nokia), Sally Field (Bristows) and the eponymous Mehmet Gün are there too, not to mention EPLAW Honorary President Pierre Véron, Margot Fröhlinger (all the way from Eponia), knowledgeable Kevin Mooney (Simmons & Simmons), the dashing Justin Turner QC and, well, you can see for yourself who else is there ...


The Melia White House Hotel, just round the corner from London's Regents Park, holds many happy childhood memories for this Kat, who in the late 1950s and early 1960s was just a curious kitten. Most of these memories relate to the fact that his mother worked there for several years in the hotel's pharmacy.  The hotel, which offered a mixture of regular rooms for short-term guests and suites for long-term inmates, was favoured by numerous celebrities of the day whose autographs were assiduously solicited and then shown around at school, to the general envy of all concerned. Many were tennis players, including the nearly forgotten Wimbledon winners Tony Trabert, Chuck McKinley, Lew Hoad and Rod Laver. Other notable White House celebrities who ended up in the autograph book included the tragically depressive comedian Tony Hancock (right, whose sketches The Blood Donor and The Lift are in places cringingly and almost unwatchably funny) and the West Indies Cricket tour team of 1963, including the incomparable Sir Garfield Sobers whose batting and bowling were definitely better than his handwriting.

Saturday, 20 September 2014

Copyright exceptions and user rights in Case C-117/13 Ulmer: a couple of observations

Should you have the right
to digitise your cat's paws?
Last week this blog reported on the latest addition to the copyright collection of the Court of Justice of the European Union (CJEU), this being the decision in Case C-117/13 Technische Universität Darmstadt v Eugen Ulmer KG.

In this case the Court ruled that Article 5(3)(n) of the InfoSoc Directive, read in conjunction with Article 5(2)(c) of the same directive, must be interpreted as allowing Member States to grant – at certain conditions – publicly accessible libraries the right to digitise the works contained in their collections.


This reference for a preliminary ruling was made in proceedings between the Technical University of Darmstadt (TU Darmstadt) and publisher Eugen Ulmer KG (Ulmer). 

In 2009 a library of TU Darmstadt scanned a book whose rights were held by the publisher, Ulmer. The library did so to allow its electronic consultation from dedicated terminals, where users could also print out on paper or store on a USB stick – in part or as a whole – the works made available for consultation there on a one-book-one-user basis. Having unsuccessfully offered the university the possibility of purchasing its own ebooks, Ulmer started proceedings for copyright infringement over unauthorised scanning of that book and other works.

Following partial victory before the Landgericht of Frankfurt am Main (Frankfurt District Court), both parties appealed before the Bundesgerichtshof (Germany's Federal Court of Justice). It was uncertain whether TU Darmstadt could actually rely on the exception pursuant to Article 52b UrhG, by which Germany had transposed Article 5(3)(n) of the InfoSoc Directive into its own copyright law and that reads as follows:

"So far as there are no contractual provisions to the contrary, it shall be permissible to make published works available from the stocks of publicly accessible libraries, museums or archives, which neither directly nor indirectly serve economic or commercial purposes, exclusively on the premises of the relevant institution at terminals dedicated to the purpose of research and for private study. In principle, reproduction of a work in excess of the number stocked by the institution shall not be made simultaneously available at such terminals. Equitable remuneration shall be paid in consideration of their being made available. The claim may only be asserted by a collecting society."

The court decided to stay the proceedings and refer the following questions to the CJEU:

1. Is use subject to purchase or licensing terms within the meaning of Article 5(3)(n) of Directive 2001/29/EC where the rightholder offers to conclude with the estab­lishments referred to therein licensing agreements for the use of works on appropriate terms? 

2. Does Article 5(3)(n) of Directive 2001/29/EC entitle the Member States to confer on the 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/EC 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? 

Mere offer is not enough --
acceptance is also needed
The Court's assessment

As regards the first question, the Court compared the language versions of Article 5(3)(n) and concluded that the EU legislature used the concept ‘terms’, which refers to contractual terms actually agreed, not mere contractual offers (as it was the case of Ulmer). It then recalled the rationale of Article 5(3)(n), which is to promote the public interest in encouraging research and private study through the dissemination of knowledge, this being the core mission of publicly accessible libraries. From these considerations it follows that the mere act of offering to conclude a licensing agreement does not rule out the application of Article 5(3)(n).

Turning to the second question, the CJEU noted that, while the exception in Article 5(3)(n) relates to Articles 2 and 3 of the directive, this provision limits the use of works to their ‘communication or making available’. An establishment that gives access to a work contained in its collection to a ‘public’, namely all of the individual members of the public using the dedicated terminals installed on its premises for the purpose of research or private study, communicates that work for the purposes of Article 3(1). The exception in Article 5(3)(n) would be meaningless if such an establishment did not also have an ancillary right to digitise the work in question. Such right would exist under Article 5(2)(c) the InfoSoc Directive 2001/29, provided that ‘specific acts of reproduction’ are involved. This means that, as a general rule and also in compliance with the three-step test in Article 5(5) of the same directive, the establishment in question may not digitise its entire collection.

With regard to the final question, the Court noted that acts such as the printing out of a work on paper or its storage on a USB stick are acts of reproduction, not communication/making available to the public. As such they fall outwith the scope of Article 5(3)(n) exception. They are not allowed under Article 5(2)(c) either, as they are not necessary for the purpose of making a certain work available to the users by dedicated terminals. However, such acts may be allowed under national legislation transposing the exceptions or limitations within Article 5(2)(a) or (b) of the InfoSoc Directive. In any case, the conditions set out in Article 5(5) must be respected.

Kurt is puzzled:
how can Article 5(3)(n) exception
be effective if a Member State does
not also transpose Article 5(2)(c)?
Can you have one and not the other? The fragmented system of EU exceptions

This decision, which largely follows the Opinion [here -- finally available in English] of Advocate General Jääskinen on 5 June 2014, shows how interdependent exceptions and limitations in Article 5 of the InfoSoc Directive are. 

Yet, their optional nature allows Member States to determine the actual shape and scope of any given resulting national exception. In a case like the one at hand, how effective would a national exception pursuant to Article 5(3)(n) be in a Member State that did not also provide in its national law for an exception pursuant to Article 5(2)(c)? Publicly accessible libraries would only have the ‘right’ to communicate/make available digitised works in their collections to the public, but would lack the pre-requisite to that, ie the ‘right’ to digitise them in the first place. 

When there are exceptions and limitations that are so closely linked that they depend on each other to be effective, one may wonder indeed whether it makes sense to maintain a system of exceptions and limitations like that in Article 5 of the InfoSoc Directive. The list contained in this provision is so fragmented and über-specific as regards possible permitted uses to be misleading as to the actual importance of individual exceptions, if considered (and adopted) on their own. 

Exceptions or rights?

It is also interesting to note that in this decision the CJEU employed a language which is not really that of exceptions or limitations (provided that exceptions are actually different from limitations, as both Advocate General Sharpston and the CJEU appeared instead to suggest in VG Wort). 

The Court spoke in fact of an ‘ancillary right’ to digitise works that would stem from the exception in Article 5(3)(n). 

Whether use of the term ‘right’ together or instead of ‘exceptions’, ‘limitations’, ‘permitted uses’, etc, has any practical implications remains to be seen. 

Yet, it is not excluded that it may have a bearing in future interpretations of the three-step test pursuant to Article 5(5). 

In this case the Court ruled that the three-step test prevented the ‘right’ to digitise from being intended as allowing digitisation of the entire collection of a library, in that this would be against the first step, ie ‘special cases’. 

However in future cases the reference to ‘right(s)’ may be used to achieve more relaxed interpretations of – in particular – the final step of the three-step test, which mandates upon exceptions and limitations not to cause an unreasonable prejudice to the legitimate interests of the rightholder. This is because also the legitimate interests ('rights' as opposed to mere 'exceptions'/'limitations') of users relying should not be unduly compressed.

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