The EU legal system for copyright and for the protection of databases ERA summer course on European IP law RA Prof. Dr. Martin Senftleben Trier, 2 July

The EU legal system for copyright and for

the protection of databases

ERA summer course on European IP law

RA Prof. Dr. Martin Senftleben

Trier, 2 July 2013

Page 2

Table of contents

sources of law

• EU Directives

• international treaties

copyright protection

• rationale of protection

• originality test

Page 3

Table of contents


• term of protection

• exclusive rights

• exceptions and limitations

• protection of technological measures

• enforcement

Page 4

Table of contents

sui generis database protection

• rationale of protection

• substantial investment

• exclusive rights

• exceptions and limitations

Sources of law

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cornerstone: Copyright Directive 2001/29/EC on

the harmonization of certain aspects of copyright

and related rights in the information society

●seeks to implement WIPO Copyright Treaty

●covers reproduction, communication to the

public and distribution right

●exceptions and limitations

●protection of technological protection measures

EU Directives

Page 7

1991: computer programs= Directive 2009/24/EC

1992: rental and lending right, neighbouring rights= Directive 2006/115/EC

1993: satellite broadcasting and cable retransmission●Directive 93/83/EEC

1993: term of protection= Directive 2006/116/EC

1996: protection of databases●Directive 96/9/EC

More specific Directives

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2001: resale right for original works of art●Directive 2001/84/EC

2012: orphan works●Directive 2012/28/EU●use privilege for libraries, educational

establishments, museums, archives, film heritage institutions, public broadcasting

●requirement of diligent search●unauthorised making available on the Internet and

reproduction for digitization and preservation purposes

●equitable remuneration of authors

More specific Directives

Page 9

The Berne Convention for the Protection of

Literary and Artistic Works (BC 1886/1967)

The Agreement on Trade-Related Aspects of

Intellectual Property Rights (TRIPS 1994)

The WIPO Copyright Treaty and the WIPO

Performances and Phonograms Treaty (WIPO

‘Internet’ Treaties 1996)

Relevant international treaties

Copyright

Page 11

books, writings, plays

musical compositions

choreography

drawings, paintings

sculptures, architecture

cinematographic works

photography

Literary and artistic works

Pablo Picasso, Guernica (1937)







The expression ‘literary and artistic works’ shall

include every production in the literary, scientific and artistic domain, whatever

may be the mode or form of its expression,…

Art. 2(1) Berne Convention

Charles and Ray Eames, Eames Lounge and Ottoman (1956)




Art. 1(1) Computer Programs Directive

In accordance with the provisions of this Directive, Member States

shall protect computer programs, by copyright, as literary works

within the meaning of the Berne Convention for the Protection of

Literary and Artistic Works. For the purposes of this Directive, the term ‘computer programs’ shall include their preparatory design material.


Rationale underlying copyright protection

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natural law argument (civil law)

●feelings of rightness and justice

●reward for creative labour

●civil law tradition

utilitarian incentive rationale (common law)

●stimulation of investment

●contribution to the overall welfare of society

●common law tradition

Different legal traditions in the EU

Utilitarian approach

‘A harmonised legal framework on copyright and related rights, through increased legal certainty and while providing for a high level of protection of intellectual property, will foster substantial investment in creativity and innovation, including network infrastructure,…’

Utilitarian approach

‘…and lead in turn to growth and increased competitiveness of European industry, both in the area of content provision and information technology and more generally across a wide range of industrial and cultural sectors. This will safeguard employment and encourage new job creation.’ (Recital 4, Copyright Directive 2001/29/EC)

Originality test

Page 29

work = materialization of the author’s individual personality

particular link between the author and the work

copyright is automatically acquired through the very act of creation

no formalities = no registration requirement

Originality

Page 30

CJEU, 16 July 2009, case C-5/08, Infopaq/Danske Dagblades Forening

Infopaq International

●active in the field of mediamonitoring and -analysis

●offers summaries of press articles

●uses specific procedure for capturing data: manual

registration, scanning, conversion to digital format,

indexing according to search terms

●procedure results in text fragments of 11 words

Danske Dagblades Forening

●association of Danish daily newspaper publishers

Page 31

introduction of an EU originality test

‘In those circumstances, copyright within the meaning

of Article 2(a) of Directive 2001/29 is liable to apply

only in relation to a subject-matter which is original in

the sense that it is its author’s own intellectual

creation.’ (para. 37)

derived by the Court from different sources

• international: Art. 2(5) and (8) Berne Convention

• EU: Art. 1(3) Computer Programs Directive, Art. 3(1)

Database Directive , Art. 6 Copyright Term Directive


Page 32

requirement of free and creative choices

‘Regarding the elements of such works covered

by the protection, it should be observed that they

consist of words which, considered in isolation,

are not as such an intellectual creation of the

author who employs them. It is only through the

choice, sequence and combination of those

words that the author may express his creativity

in an original manner and achieve a result which

is an intellectual creation.’ (para. 45)


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CJEU, 1 December 2011, case C-145/10, Painer/Der Standard

Page 34

free and creative choices can follow from various

circumstances of the production process

‘In the preparation phase, the photographer can

choose the background, the subject’s pose and the

lighting. When taking a portrait photograph, he

can choose the framing, the angle of view and the

atmosphere created. Finally, when selecting the

snapshot, the photographer may choose from a

variety of developing techniques the one he wishes

to adopt or, where appropriate, use computer

software.’ (para. 91)


Page 35

graphic user interface of a computer program may

be eligible for general copyright protection (para.

46)

but: no protection if the components of the

interface are dictated by their technical function

‘…where the expression of those components is

dictated by their technical function, the criterion of

originality is not met, since the different methods of

implementing an idea are so limited that the idea and

the expression become indissociable.’ (para. 49)

CJEU, 22 December 2010, case C-393/09, Softwarová

Term of protection

Term Directive 2006/116/EC

‘...shall run for the life of the author and for 70 years after his death, irrespective of the date when the work is lawfully made available to the public.’ (Art. 1(1) Term Directive)

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joint authorship (Art. 1(2))

●death of the last surviving author decisive

anonymous or pseudonymous works (Art. 1(3))

●making available to the public + 70 years

legal person designated as rightholder (Art. 1(4))

●making available to the public + 70 years

Term Directive 2006/116/EC

Exclusive rights

Page 40

exploitation rights• right of reproduction

• right of communication to the public

• distribution right

• harmonized in Arts. 2 to 4 Copyright Directive 2001/29

Two branches

moral rights• claim authorship

• object to any distortion, mutilation, modification or other derogatory action

• not harmonized in EU law, but in Art. 6bis of the Berne Convention

Page 41

authors (works)

performers (fixations of performances)

phonogram producers (phonograms)

producers of the first fixations of films

(original and copies of films)

broadcasting organisations (fixations of

broadcasts)

Rightholders of exploitation rights

copyright: author of a book

adaptation 1: translator

+ neighbouring rights adaptation 2:

scenarist

Copyright clusters

copyright: music composer

neighbouring right: singer

copyright: text

writerneighbouring

right: phonongram

producer

Copyright clusters

Reproduction right

‘Member States shall provide for the exclusive right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part.’ (Art. 2 Copyright Directive 2001/29/EC)

Right of communication to the public

‘Member States shall provide authors with the exclusive right to authorise or prohibit any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access them from a place and at a time individually chosen by them.’ (Art. 3 Copyright Directive 2001/29/EC)

Page 46

standard situation:

●flexible place, fixed time (broadcasting)

EU right covers also:

●flexible place, flexible time (Internet)

but not covered (not harmonized):

●fixed place, fixed time (public

performance)

Communication to the public

Page 47

criterion of ‘direct physical contact’

‘Thus, in order to exclude such direct public

representation and performance from the scope of the

concept of communication to the public in the context

of the Copyright Directive, recital 23 in its preamble

explained that communication to the public covers all

communication to the public not present at the place

where the communication originates.’ (para. 201)

not harmonized: opera, theatre etc. (direct contact)

harmonized: loudspeakers in bars etc. (no direct

contact)

CJEU, 4 October 2011, cases C-403/08 and C-429/08, FA Premier League

Page 48

Sociedad General de Autores y Editores de

España (SGAE)

●responsible for the collective management of

copyright in Spain

●seeks compensation for the use of television sets

and the playing of ambient music within hotels

Rafael Hoteles

●uses cable to send previously received satellite

or terrestrial television signals to television sets

in hotel rooms

CJEU, 7 December 2006, case C-306/05, SGAE/Rafael Hoteles

Page 49

‘public’ = indeterminate number of potential viewers

occupants of hotel rooms not to be taken separately

‘…a general approach is required, making it necessary

to take into account not only customers in hotel rooms

[…] but also customers who are present in any other

area of the hotel and able to make use of a television

set installed there. It is also necessary to take into

account the fact that, usually, hotel costumers quickly

succeed each other. As a general rule, a fairly large

number of persons are involved, so that they may be

considered to be a public...’ (para. 38)


Page 50

hotel = other organisation intervening to give

access to the protected work to its customers

‘…a communication made in circumstances such as

those in the main proceedings constitutes […] a

communication made by a broadcasting

organisation other than the original one. Thus, such

a transmission is made to a public different from the

public at which the original act of communication of

the work is directed, that is, to a new public.’ (para.

40)

communication to the public (+)


Page 51

Società Consortile Fonografici (SCF)

●acts as a collecting agency and manages,

collects and distributes the royalties of its

associated phonogram producers

●seeks to collect royalties from dentists for the

playing of music in waiting rooms

Marco del Corso

●dentist with private practice in Turin

●plays radio music in his waiting room and does

not want to pay

CJEU, 15 March 2012, case 135/10, SCF/Marco del Corso

Page 52

‘public’ = indeterminate number of potential viewers

here: patients in succession

but: number of patients listening to the same

phonogram at one particular point in time too small

‘…as regards, the criterion of ‘a fairly large number of

people’, this is intended to indicate that the concept of

public encompasses a certain de minimis threshold,

which excludes from the concept groups of persons

which are too small, or insignificant.’ (para. 86)

and: no impact on dentist’s income (patients unlikely

to come for the phonograms)

CJEU, 15 March 2012, case 135/10, SCF/Marco del Corso

Distribution right

‘Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise.’ (Art. 4 Copyright Directive 2001/29/EC)

Exhaustion

‘The distribution right shall not be exhausted within the Community in respect of the original or copies of the work, except where the first sale or other transfer of ownership in the Community of that object is made by the rightholder or with his consent.’ (Art. 4 Copyright Directive 2001/29/EC)

Page 55

copyright as a weapon against parallel imports?

(+) in case of national exhaustion

(-) in case of international exhaustion

solution in the EU: community-wide exhaustion

Netherlands: 100 EUR

Greece: 75

EUR

No internal market partitioning

Exceptions and limitations

Page 57

Art. 5 Copyright Directive 2001/29

mandatory exception:

● exemption of temporary acts of reproduction

optional exceptions:

● private copying

● use of copyrighted material by libraries, museums and

archives

● ephemeral recordings

● reproductions of broadcasts made by hospitals and

prisons

● illustrations for teaching or scientific research

● use for the benefit of people with a disability

Page 58



● press privileges

● use for the purpose of quotations

● use for caricature, parody and pastiche

● use for the purposes of public security

● use for the proper performance or reporting of administrative, parliamentary or judicial proceedings

● use of political speeches and public lectures

● use during religious or official celebrations

Page 59



● use of architectural works located permanently in public places

● incidental inclusions of a work in other material

● use for the purpose of advertising the public exhibition or sale of artistic works

● use in connection with the demonstration or repair of equipment

● use for the reconstruction of buildings

● additional national cases of use having minor importance

Page 60

Core rationales

freedom of expression and information

cultural participation: equal chances in the

information society (no ‘digital divide’)

• dissemination of information

• educational institutions, libraries, archives

regulation of industry practice (primary and

secondary markets, reconciliation of business

models)

Page 61

Harmonization?

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

quotations for purposes such as criticism or review, provided that they relate to a work or other subject-matter which has already been lawfully made available to the public, that, unless this turns out to be impossible, the source, including the author's name, is indicated, and that their use is in accordance with fair practice, and to the extent required by the specific purpose;…’ (Art. 5(3)(d) Copyright Directive 2001/29/EC)

Page 62

Permissible quotation?

Three-step test

‘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.’

(Art. 5(5) Copyright Directive 2001/29/EC)

Meaning of the testcertain special case

● specific form of use, limited number of beneficiaries

● room for considering policy justification?

no conflict with a normal exploitation

● currently exploited and potential future markets

● room for normative considerations?

no unreasonable prejudice to legitimate interests

● refined proportionality test

● unreasonable prejudice can be reduced to reasonable

level by providing for the payment of equitable

remuneration

broad exclusive

rights

exhaustive enumeration of exceptions

three-step test

Overview of EU regulation of exceptions

Page 66

exemption of temporary copying under Art. 5(1)

Copyright Directive invoked as a defence by Infopaq

standard for interpretation:

‘…the provisions of a directive which derogate from a

general principle established by that directive must

be interpreted strictly.’ (para. 56)

general principle here: right of reproduction

derogation: exemption of temporary copying


Page 67

impact of the three-step test:

‘This is all the more so given that the exemption

must be interpreted in the light of Article 5(5) of

Directive 2001/29, under which that exemption is to

be applied only 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.’ (para. 58)

always restrictive reading required?


Page 68

not necessarily, fair balance to be safeguarded

‘In accordance with its objective, [the exemption of

temporary copying under Article 5(1) of Directive

2001/29] must allow and ensure the development

and operation of new technologies and safeguard a

fair balance between the rights and interests of

right holders, on the one hand, and of users of

protected works who wish to avail themselves of

those new technologies, on the other.’ (para. 164)

CJEU, 4 October 2011, cases C-403/08 and C-429/08, FA Premier League

Page 69

particularly a fair balance with regard to

competing fundamental rights

‘Article 5(3)(d) of Directive 2001/29 [= right of

quotation] is intended to strike a fair balance

between the right to freedom of expression of

users of a work or other protected subject-matter

and the reproduction right conferred on authors.’

(para. 134)


Fair compensation

CJEU, 21 October 2010, case C-467/08, Padawan/SGAE

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

in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial, on condition that the rightholders receive fair compensation which takes account of the application or non-application of technological measures referred to in Article 6 to the work or subject-matter concerned;…’ (Art. 5(2)(b) Copyright Directive 2001/29/EC)

Page 72



Prejudicial question 4:

‘If a Member State adopts a private copying ‘levy’ system, is the indiscriminate application of that ‘levy’ to undertakings and professional persons who clearly purchase digital reproduction devices and media for purposes other than private copying compatible with the concept of ‘fair compensation’?’ (para. 19)

Page 74


Fair compensation is an autonomous concept of EU law which must be interpreted uniformely in all Member States. (para. 37)

Notion and level of fair compensation are linked to the harm resulting from the private copying. (para. 40)

= If exception does not cover downloading from illegal sources, then no compensation is due for this.

● private copying levy is not intended to provide general compensation for losses in the digital environment.

In principle, it is for the user to make good the harm related to the private copying by financing the compensation. (para. 45)

Page 75


However, given the practical difficulties in identifying and charging private users, a levy system can be introduced at the national level. (para. 46)

The industry can pass on the amount of the levy to private users so that the burden will ultimately be borne by them. (para. 49)

But: distinction between private/professional to be drawn

‘…the indiscriminate application of the private copying levy, in particular with respect to digital reproduction equipment, devices and media not made available to private users and clearly reserved for uses other than private copying, is incompatible with Directive 2001/29.’ (para. 59)

Page 76

what levy scheme for online use?


Protection of technological measures

© Bird & Bird LLP 2011 Subject matter | Client details Page 78



Page 81

concerns of the media industry (particularly music and film)

weapon against digital ‘piracy’ (particularly filesharing platforms)

stimulation of e-commerce

individual payment (pay-per-use)

hope that new business models will emerge (‘celestial jukebox’)

Background and rationale

Technological measures

‘…means any technology, device or component that, in the normal course of its operation, is designed to prevent or restrict acts, in respect of works or other subject matter, which are not authorised by the rightholder of any copyright or any right related to copyright as provided for by law or the sui generis right provided for in Chapter III of Directive 96/9/EC.’

Art. 6 Copyright Directive 2001/29/EC: protected against circumvention

Rights management information‘…means any information provided by rightholders which identifies the work or other subject-matter referred to in this Directive or covered by the sui generis right provided for in Chapter III of Directive 96/9/EC, the author or any other rightholder, or information about the terms and conditions of use of the work or other subject-matter, and any numbers or codes that represent such information…’

Art. 7 Copyright Directive 2001/29/EC: protected against removal and altering

Page 84

scope of copyright/related

rights = scope of protection

against circumvention

Underlying international concept (WIPO Copyright Treaty)

Page 85

prohibition limited to illicit

circumvention

prohibition extended to preparatory

acts

Feasible in practice?

Art. 6(2) Copyright Directive

‘…protection against the manufacture, import, distribution, sale, rental, advertisement for sale or rental, or possession for commercial purposes of devices, […] or the provision of services which:

(a) are promoted, advertised or marketed for the purpose of circumvention of, or

(b) have only a limited commercially significant purpose or use other than to circumvent, or

(c) are primarily designed […] for the purpose of enabling or facilitating the circumvention of,

any effective technological measures.’

Enforcement

Page 88

How to fight illegal filesharing?

Page 89

Measures against the platform itself?

Page 90

Measures against online intermediaries instead?

Art. 8(3) Copyright Directive

‘Member States shall ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe a copyright or related right.’

Page 92

CJEU, 24 November 2011, case C-70/10, Scarlet/Sabam

Scarlet

• internet access provider

• customers involved in illegal downloads from

P2P-platforms

Sabam

• seeks to impose filtering obligation on Scarlet

• namely making it impossible to send or

receive files containing musical works (deep

packet inspection)

Page 93

No obligation of deep packet inspection

• injunction against intermediaries possible on the

basis of Art. 8(3) Copyright Directive (para. 31)

• but: ‘fair balance’ required between IP rights

and freedom to conduct a business laid down in

Art. 16 of the Charter (para. 46)

• obligation of filtering system irreconcilable with

this requirement (para. 49)

= general monitoring obligation incompatible

with Art. 15(1) E-Commerce Directive (para. 40)


Page 94

No obligation of deep packet inspection

• potential infringement of protection of

personal data and right to receive

information of ISP customers (para. 50)

• also potential encroachment upon freedom of

information because of inadequate

distinction between lawful and unlawful

content: copyright exceptions may be

disregarded (para. 52)

• required ‘fair balance’ not ensured (para. 53)


filtering:

deep packet inspection goes too

far

blocking:

blocking of entire platform an alternative?


Databases

Database

‘For the purposes of this Directive, ‘database’ shall mean a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means.’ (Art. 1(1) Database Directive 96/9/EC)




Page 101


●original databases

●copyrighted material in the database

sui generis database protection

●in case of substantial investment

protection against unfair competition

Protection instruments

Rationale underlying sui generis protection

Stimulating investment

‘Whereas there is at present a very great imbalance in the level of investment in the database sector both as between the Member States and between the Community and the world’s largest database-producing third countries;…’ (Recital 11, Database Directive 96/6/EC)

Art. 7(1) Database Directive

‘Member States shall provide for a right for the maker of a database which shows that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents…’

Page 105

‘...fifteen years from the first of January of the year following the date of completion.’ (Art. 10(1))

if made available to the public prior to the expiry of the term following from the completion date (Art. 10(2))

●15 years calculated on the basis of the date of making available

constant investment makes evergreening possible (Art. 10(3))

●new term of protection results from substantial new investment in the contents of the database

Term of protection

Substantial investment

Page 107

British Horseracing Board

●manages the UK horseracing industry

●compiles and maintains an online database with

diverse information (races, horses, jockeys,

owners etc.)

William Hill

●provides off-course bookmaking services

● is a subscriber to the BHB-database

●uses BHB-data for his business

CJEU, 9 November 2004, case C-203/02, BHB/William Hill

Page 108

only relevant: investment in the database as such

• ‘...resources used to seek out existing independent

materials and collect them in the database…’ (para. 31)

irrelevant: investment in contents creation

• ‘The purpose of the protection by the sui generis right

[…] is to promote the establishment of

storage and processing systems for existing information

and not the creation of materials capable of being

collected subsequently in a database.’ (para. 31)

CJEU, 9 November 2004, case C-203/02, BHB/William Hill

Page 109

irrelevant ‘creation of materials’ comprises

●selection of the horses admitted to run

●establishing lists of these horses

●verification of information in that context

= no relevant investment in ‘obtaining’ or

‘verification’ of data in the sense of the sui

generis protection system (para. 38-41)

Substantial investment


CJEU recognizing spin-off theory?

Exclusive rights

Page 112

Infringement

extraction

(reproduction) or re-

utilisation (making available)

of a qualitatively or quantitatively

substantial part

Art. 7(1) and (2) DBD

extraction or re-utilisation:

insubstantial parts

repeated and systematic

normal exploitation/ unreasonable prejudice

Art. 7(5) DBD

Page 113

Albert-Ludwigs-Universität Freiburg:

●invested substantially (€ 34.900 sufficient, para. 24) in

‘Freiburg Anthology’, a collection of 1100 German

poems indicating author, title, opening line and

publication year

Directmedia:

●markets CD ‘1000 poems everyone should have’

●used Freiburg Anthology as a guide, but assessed that

guide critically, omitted certain poems, added others

●total overlap: 856 poems

CJEU, 9 October 2008, case C-304/07, Directmedia/Universität Freiburg

Page 114

‘extraction’ = act of transfer

‘The decisive criterion in this respect is to be found in the

existence of an act of ‘transfer’ of all or part of the

contents of the database concerned to another medium...’

(para. 36)

transfer (+): technical process of copying

transfer (+): simple manual process

transfer (+): adaptation of database contents (para. 39)

‘... the particular risk for database makers of the

increasing use of digital recording technology.’ (para. 49)


Page 115

transfer (+): irrespective of objective pursued (para. 46)

‘Thus, it is of little importance that the act of transfer

in question is for the purpose of creating another

database, whether in competition with the original

database or not, and whether the same or a different

size from the original, nor is it relevant that the act is

part of an activity, whether commercial or not, other

than the creation of a database .’ (para. 47)

protection of existing material impeding production of new databases?


Page 116

exclusive rights to data

as such?

Excessive sui generis protection?

Exceptions and limitations

Page 118


●extraction for private purposes of the contents of non-electronic databases

●extraction for purposes of illustration for teaching or scientific research

●extraction and/or re-utilization for the purposes of public security or administrative/judicial procedures

access to public documents (Art. 13 DBD)

Art. 9 Database Directive 96/9/EC

Free access to public databases

‘This Directive shall be without prejudice to provisions concerning in particular […] trade secrets, security, confidentiality, data protection and privacy, access to public documents, and the law of contract.’ (Art. 13 Database Directive 96/6/EC)

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Documents

The EU legal system for copyright and for the protection of databases ERA summer course on European IP law RA Prof. Dr. Martin Senftleben Trier, 2 July