For the libraries and other similar establishments, two core issues have arisen: the production of digital copies of materials held in the libraries’ collections and the electronic delivery of these copies to users. Digitisation of books, audiovisual material and other content can serve a twofold purpose – preservation of content for future generations and making it available for end users online.
Under the current legal framework, libraries or archives do not enjoy a blanket exception from the right of reproduction. Reproductions are only allowed in specific cases, which arguably would cover certain acts necessary for the preservation of works contained in the libraries’ catalogues. On the other hand, the library exception and national rules implementing it are not always clear on issues such as “format-shifting” or the number of copies that can be made under this exception. Detailed regulations in this respect result from legislative policy decisions undertaken at the national level. Some Member States have restrictive rules with respect to reproductions that can be made by libraries.
In recent years libraries and other public interest establishments have become increasingly interested not only in preserving (digitising) works but also in making their collections accessible online. If that were to take place, libraries argue, researchers would no longer have to go to the premises of libraries or archives but would easily be able to find and retrieve the required information on the Internet. Also, publishers state that they are digitising their own catalogues with a view to setting up interactive online databases where this material can be easily retrieved from the user’s desktop (For example, Elsevier, a publisher of 2200 journals has set up ScienceDirect, a service through which 10 million scientists and researchers are granted desktop access to a service offering 8.7 million journal articles. In 2004, Elsevier launched the “Scopus” database which covers 16,000 journals from all key publishers in the areas of scientific, technological and medical publishing. They also provide an online service called “MD Consult” which targets health care professionals by bringing together the leading medical resources.). These services require payment of a subscription fee.
Under current copyright legislation, publicly accessible libraries, educational establishments, archives and museums benefit from two exceptions in the Copyright Directive:
– an exception to the reproduction right for specific acts of reproduction for non-commercial purposes (Art. 5(2)(c) of the Directive) and
– a narrowly formulated exception to the communication to the public right and the making available right for the purpose of research or private study by means of dedicated terminals located on the premises of such establishments (Art. 5(3)(n) of the Directive).
The exception from the reproduction right is limited to “specific acts of reproduction”. Article 5(2)(c) thus stands out as the only exception explicitly referring to the first limb of the “threestep test”, as codified in Article 5(5) of the Directive, which requires that exceptions be confined to “certain special cases”. Accordingly, and as recital 40 of the Directive points out, this exception should be limited to certain special cases and not cover uses made in the context of online deliveries of protected works or phonograms.
The careful wording of this exception would thus imply that it does not provide libraries or other beneficiaries with a blanket exception from the right of reproduction. Reproductions are only allowed in specific cases, which arguably would cover certain acts necessary for the preservation of works contained in the libraries’ catalogues. On the other hand, this exception does not contain clear rules on issues such as “format-shifting” or the number of copies that can be made under this exception. Detailed regulations in this respect result from legislative policy decisions undertaken at the national level.
Some Member States have restrictive rules as to the reproductions that can be made by libraries. The UK government is currently conducting a consultation (http://www.ipo.gov.uk/about/about-consult/about-formal/about-formal-current/consultcopyrightexceptions.htm) with a view to amending Section 42 of the Copyright, Designs and Patents Act (CDPA) which allows libraries or archives to make a single copy of a literary, dramatic or musical work held in their permanent collection for the purpose of preservation and replacement. The government proposes to expand the exception so as to allow for copying and format shifting of sound recordings, films and broadcasts and to allow for more than a single copy where successive copying may be required to preserve permanent collections in an accessible format.
As regards preservation of works, it is libraries, archives and museums that preserve works in a durable format. But to an increasing extent, private entities, such as search engines, are also involved in large scale digitisation efforts. As an example, the Google Book Search project was launched in 2005 with the aim of making the content of books searchable on the Internet (http://books.google.com). Google concludes agreements with European libraries which cover digitisation of public domain works (See the information provided by the Oxford Library: http://www.bodley.ox.ac.uk/librarian/CNIGoogle/CNIGoogle.htm). Publishers are also experimenting with free online access to parts or even full texts of books and are developing tools enabling users to browse the content of books (For example, HarperCollins has recently launched a number of such initiatives, namely: the “full access” programme (full texts of selected books are available for free for a limited time), a “Sneak Peek” programme (readers are able to view 20% of the content of many books two weeks before their publication) and the “Browse Inside” programme (readers can browse 20% of the content of books after their publication). These are available at www.HarperCollins.com.).
It must be stressed that activities of private entities, such as search engines, cannot benefit from the exception contained in Article 5(2)(c) which is limited to publicly accessible libraries, educational establishments museums or archives and only covers acts which are not for direct or indirect economic or commercial advantage. Digitisation involves the reproduction right (See the agreed statement concerning Article 1(4) of the WCT: “The reproduction right, as set out in Article 9 of the Berne Convention, and the exceptions permitted thereunder, fully apply in the digital environment, in particular to the use of works in digital form. It is understood that the storage of a protected work in digital form in an electronic medium constitutes a reproduction within the meaning of Article 9 of the Berne Convention”.) because changing the format of a work from analogue to digital requires a reproduction of the work. For example, a book has to be scanned before it can be digitised. If this scanning is undertaken by entities and in circumstances not covered in Article 5(2)(c), rightholders have to give prior permission for such a reproduction to take place. Similarly, making a digitised work available online requires the prior consent of the rightholder(s).
The scanning of works held in libraries for the purpose of making their content searchable on the Internet is commonly distinguished from linking, deep linking, interlinking or indexing which are activities that relate to works that are already available online. For example, with respect to hyperlinks (an electronic connection to a file placed on the Internet), the German Supreme Court held that works are not reproduced by linking or deep-linking (a link that leads the Internet user to another webpage within a website) (BGH, 17th July 2003, case I WR 259/00, Paperboy (case decided before the implementation of the Directive).). In the American case of Perfect 10 v. Google and Amazon (Case 06-55405, 9th Cir., May 16, 2007.), the court held that in-linking to the full-size image on another website, which does not require a reproduction of the original images, doesn’t infringe the reproduction right. While some courts deem thumbnails, i.e. reproductions of small images to facilitate links to other websites on the Internet, to infringe the exclusive right of reproduction (Bielefeld Regional Court, 8 November 2005, JurPC Web-Dok. 106/2006 and Regional Court of Hamburg, 5 September 2003, JurPC Web-Dok 146/2004.), the Erfurt Regional Court (Erfurt Regional Court, 15 March 2007, 3 O 1108/05 – Bildersuche Suchmaschine Haftung.) held that using thumbnails to establish links would not give rise to copyright liability if the work had been posted on the Internet by the rightholder or with his consent (Following a similar line of argument, search engines are not asking for prior permission from copyright owners to index content of web pages. Search engines argue that, if a content owner does not want the content of the web page to be indexed, he can encode the message in a text file called “robots.txt” in order to opt-out and block the search engine from copying content. If no such technology is applied, they believe that this is tantamount to an implied licence for a search engine to copy and index.).
It is often argued however that the Google Book Search project goes further than the search engine at issue in the German Supreme Court’s Paperboy (BGH, 17th July 2003, case I WR 259/00, Paperboy.) or the Perfect 10 cases. The search engine in the Paperboy case established links to websites which contained protected works that were made available online with the rightholders consent. The Paperboy service relied on works made available by others and would no longer be able to create a link to a work that had been withdrawn by the rightholder. The service also did not entail the caching of the work as the link would no longer function once the original was withdrawn.
The making available of digitised works
Under current copyright legislation, publicly accessible libraries, educational establishments or museums and archives benefit from a narrowly formulated exception to the right of communication to the public or to making available to the public works or other subject matter, if this is done for the purpose of research or private study by means of dedicated terminals located on the premises of such establishments (Art. 5(3)(n) of the Directive). This exception would arguably not cover the electronic delivery of documents to end users at a distance. As regards electronic delivery of materials to end users, recital 40 of the Directive states that the exception for libraries and archives should not cover “uses made in the context of online delivery of protected works or other subject matter”.
An issue which came to the fore in large scale digitisation projects is the so-called orphan works phenomenon. Orphan works are works which are still in copyright but whose owners cannot be identified or located. There is a significant demand for the dissemination of works or sound recordings of an educational, historical or cultural value at a relatively low cost to a wide audience online. It is often claimed that such projects are held up due to the lack of a satisfactory solution to the orphan works issue. Protected works can become orphaned if data on the author and/or other relevant rightholder(s) (such as publishers or film producers) is missing or outdated. This is often the case with works which are no longer exploited commercially.
Apart from books, thousands of orphan works such as photographs and audiovisual works are currently held in libraries, museums or archives. The lack of data on their ownership can constitute an obstacle to making such works available online to the public and can impede digital restoration efforts. This is particularly the case with orphan films.
The issue of orphan works is mainly a rights clearance issue i.e. how to ensure that users who make orphan works available are not liable for copyright infringement when the rightholder reappears and asserts his rights over the work. Apart from liability concerns, the cost and time needed to locate or identify the rightholders, especially in the case of works of multiple authorship, can prove to be too great to justify the effort. This appears to be especially true for rights in sound recordings and audiovisual works that are currently kept in broadcasters archives. Copyright clearance of orphan works can constitute an obstacle to the dissemination of valuable content and can be seen as hampering follow-on creativity. However, the extent to which orphan works actually impede uses of works is not clear. There is a scarcity of the necessary economic data which would allow the problem to be quantified on the pan- European level.
The orphan works issue is currently being considered both at the national (E.g. in the UK “Gowers Review of Intellectual Property”, there is a recommendation that the Commission amends Directive 2001/29/EC and introduces an exception for orphan works. Denmark and Hungary have developed solutions to orphan works (the Danish solution is based on extended collective licences and the Hungarian one on licences issued by a public body).) and at the EU level. The US (The US Copyright Office published a report on orphan works in January 2006. Two bills were tabled on 24 April 2008 at the Senate and the House of Representatives (the “Shawn Bentley Orphan Works Act” and the “Orphan Works Act of 2008”, respectively). Both bills are proposals to amend title 17 of the US Code by adding a section on “limitations on remedies in cases involving orphan works”.) and Canada (The Canadian solution is based on non-exclusive licences issued by the Copyright Board of Canada.) have also taken initiatives regarding orphan works. While approaches to this issue differ, the proposed solutions are mostly based on a common principle; a user has to perform a reasonable search in order to try to identify or locate the rightholder(s).
The Commission adopted a recommendation (Commission Recommendation of 24 August 2006 on the digitisation and online accessibility of cultural content and digital preservation, 2006/585/EC, L 236/28.) in 2006 encouraging the Member States to create mechanisms to facilitate the use of orphan works and to promote the availability of lists of known orphan works. A High Level Expert Group on Digital Libraries was established bringing together stakeholders concerned by orphan works. The Group adopted a “Final Report on Digital Preservation, Orphan Works and Out-of-Print Works” and a “Memorandum of Understanding on orphan works” was signed by representatives of libraries, archives and rightholders (http://ec.europa.eu/information_society/activities/digital_libraries/hleg/hleg_meetings/index_en.htm). The memorandum contains a set of guidelines on diligent search forrightholders and general principles concerning databases of orphan works and rights clearancemechanisms. Detailed solutions are to be developed at the national level.
The majority of the Member States have not yet developed a regulatory approach with respect to the orphan works issue. The potential cross-border nature of this issue seems to require a harmonised approach.
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