Oracle America, Inc. v. Google Inc.
Filing
1118
RESPONSE to re #1062 Order, #1088 Order, #1057 Order Oracle's May 10, 2012 Brief Responding to Court's Questions on Copyrightability by Oracle America, Inc.. (Attachments: #1 Exhibit A)(Jacobs, Michael) (Filed on 5/10/2012)
ATTACHMENT A
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JUDGMENT OF THE COURT (Fourth Chamber)
16 July 2009 (*)
(Copyright – Information society – Directive 2001/29/EC – Articles 2 and 5 – Literary and
artistic works – Concept of ‘reproduction’ – Reproduction ‘in part’ – Reproduction of short
extracts of literary works – Newspaper articles – Temporary and transient reproductions –
Technological process consisting in scanning of articles followed by conversion into text file,
electronic processing of the reproduction, storage of part of that reproduction and printing out)
In Case C-5/08,
REFERENCE for a preliminary ruling under Article 234 EC from the Højesteret (Denmark),
made by decision of 21 December 2007, received at the Court on 4 January 2008, in the
proceedings
Infopaq International A/S
v
Danske Dagblades Forening,
THE COURT (Fourth Chamber),
composed of K. Lenaerts, President of the Chamber, T. von Danwitz, R. Silva de Lapuerta, G.
Arestis and J. Malenovský (Rapporteur), Judges,
Advocate General: V. Trstenjak,
Registrar: C. Strömholm, Administrator,
having regard to the written procedure and further to the hearing on 20 November 2008,
after considering the observations submitted on behalf of:
–
Infopaq International A/S, by A. Jensen, advokat,
–
Danske Dagblades Forening, by M. Dahl Pedersen, advokat,
–
the Austrian Government, by E. Riedl, acting as Agent,
–
the Commission of the European Communities, by H. Krämer and H. Støvlbæk, acting as
Agents,
after hearing the Opinion of the Advocate General at the sitting on 12 February 2009,
gives the following
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Judgment
1
This reference for a preliminary ruling concerns, first, the interpretation of Article 2(a) 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 (OJ
2001 L 167, p. 10) and, secondly, the conditions for exemption of temporary acts of
reproduction within the meaning of Article 5 of that directive.
2
The reference was made in the context of proceedings between Infopaq International A/S
(‘Infopaq’) and Danske Dagblades Forening (‘DDF’) concerning the dismissal of its application
for a declaration that it was not required to obtain the consent of the rightholders for acts of
reproduction of newspaper articles using an automated process consisting in the scanning and
then conversion into digital files followed by electronic processing of that file.
Legal context
International law
3
Under Article 9(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights
(‘the TRIPs Agreement’), as set out in Annex 1C to the Marrakesh Agreement establishing the
World Trade Organisation, which was approved by Council Decision 94/800/EC of 22
December 1994 concerning the conclusion on behalf of the European Community, as regards
matters within its competence, of the agreements reached in the Uruguay Round multilateral
negotiations (1986-1994) (OJ 1994 L 336, p. 1):
‘Members shall comply with Articles 1 through 21 of the Berne Convention (1971) and the
Appendix thereto. …’
4
Article 2 of the Berne Convention for the Protection of Literary and Artistic Works (Paris Act
of 24 July 1971), as amended on 28 September 1979 (‘the Berne Convention’) reads as follows:
‘(1)
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,
such as books, pamphlets and other writings; …
…
(5)
Collections of literary or artistic works such as encyclopaedias and anthologies which, by
reason of the selection and arrangement of their contents, constitute intellectual creations shall
be protected as such, without prejudice to the copyright in each of the works forming part of
such collections.
…
(8)
The protection of this Convention shall not apply to news of the day or to miscellaneous
facts having the character of mere items of press information.’
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Under Article 9(1) of the Berne Convention, authors of literary and artistic works protected by
that convention are to have the exclusive right of authorising the reproduction of those works, in
any manner or form.
Community law
6
Article 1 of Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer
programs (OJ 1991 L 122, p. 42) provided:
‘1.
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. …
…
3. A computer program shall be protected if it is original in the sense that it is the author’s
own intellectual creation. No other criteria shall be applied to determine its eligibility for
protection.’
7
Article 3(1) of Directive 96/9/EC of the European Parliament and of the Council of 11 March
1996 on the legal protection of databases (OJ 1996 L 77, p. 20) provides:
‘In accordance with this Directive, databases which, by reason of the selection or arrangement
of their contents, constitute the author’s own intellectual creation shall be protected as such by
copyright. No other criteria shall be applied to determine their eligibility for that protection.’
8
Directive 2001/29 states the following in recitals 4, 6, 9 to 11, 20 to 22, 31 and 33 in the
preamble thereto:
‘(4)
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 ...
(6)
Without harmonisation at Community level, legislative activities at national level which
have already been initiated in a number of Member States in order to respond to the
technological challenges might result in significant differences in protection and thereby
in restrictions on the free movement of services and products incorporating, or based on,
intellectual property, leading to a refragmentation of the internal market and legislative
inconsistency. The impact of such legislative differences and uncertainties will become
more significant with the further development of the information society, which has
already greatly increased transborder exploitation of intellectual property. This
development will and should further increase. Significant legal differences and
uncertainties in protection may hinder economies of scale for new products and services
containing copyright and related rights.
…
(9)
Any harmonisation of copyright and related rights must take as a basis a high level of
protection, since such rights are crucial to intellectual creation. …
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(10)
If authors or performers are to continue their creative and artistic work, they have to
receive an appropriate reward for the use of their work …
(11)
A rigorous, effective system for the protection of copyright and related rights is one of
the main ways of ensuring that European cultural creativity and production receive the
necessary resources and of safeguarding the independence and dignity of artistic creators
and performers.
…
(20)
This Directive is based on principles and rules already laid down in the Directives
currently in force in this area, in particular Directives [91/250] … and [96/9], and it
develops those principles and rules and places them in the context of the information
society. The provisions of this Directive should be without prejudice to the provisions of
those Directives, unless otherwise provided in this Directive.
(21)
This Directive should define the scope of the acts covered by the reproduction right with
regard to the different beneficiaries. This should be done in conformity with the acquis
communautaire. A broad definition of these acts is needed to ensure legal certainty within
the internal market.
(22)
The objective of proper support for the dissemination of culture must not be achieved by
sacrificing strict protection of rights or by tolerating illegal forms of distribution of
counterfeited or pirated works.
…
(31)
A fair balance of rights and interests between the different categories of rightholders, as
well as between the different categories of rightholders and users of protected subjectmatter must be safeguarded. …
…
(33)
9
The exclusive right of reproduction should be subject to an exception to allow certain
acts of temporary reproduction, which are transient or incidental reproductions, forming
an integral and essential part of a technological process and carried out for the sole
purpose of enabling either efficient transmission in a network between third parties by an
intermediary, or a lawful use of a work or other subject-matter to be made. The acts of
reproduction concerned should have no separate economic value on their own. To the
extent that they meet these conditions, this exception should include acts which enable
browsing as well as acts of caching to take place, including those which enable
transmission systems to function efficiently, provided that the intermediary does not
modify the information and does not interfere with the lawful use of technology, widely
recognised and used by industry, to obtain data on the use of the information. A use
should be considered lawful where it is authorised by the rightholder or not restricted by
law.’
According to Article 2(a) of Directive 2001/29:
‘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:
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for authors, of their works.’
Article 5 of the same directive provides:
‘(1)
Temporary acts of reproduction referred to in Article 2, which are transient or incidental
[and] an integral and essential part of a technological process and whose sole purpose is to
enable:
(a)
a transmission in a network between third parties by an intermediary, or
(b)
a lawful use
of a work or other subject-matter to be made, and which have no independent economic
significance, shall be exempted from the reproduction right provided for in Article 2.
…
5. 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
According to Article 6 of Directive 2006/116/EC of the European Parliament and of the
Council of 12 December 2006 on the term of protection of copyright and certain related rights
(OJ 2006 L 372, p. 12):
‘Photographs which are original in the sense that they are the author’s own intellectual creation
shall be protected in accordance with Article 1 [which specifies the duration of the rights of an
author of a literary or artistic work within the meaning of Article 2 of the Berne Convention].
No other criteria shall be applied to determine their eligibility for protection. Member States
may provide for the protection of other photographs.’
National law
12
Articles 2 and 5(1) of Directive 2001/29 were transposed into Danish law by paragraphs 2 and
11a(1) of Law No 395 on copyright (lov n°395 om ophavsret) of 14 June 1995 (Lovtidende
1995 A, p. 1796), as amended and consolidated by, inter alia, Law No 1051 (lov n°1051 om
ændring af ophavsretsloven) of 17 December 2002 (Lovtidende 2002 A, p. 7881).
The dispute in the main proceedings and the questions referred for a preliminary ruling
13
Infopaq operates a media monitoring and analysis business which consists primarily in drawing
up summaries of selected articles from Danish daily newspapers and other periodicals. The
articles are selected on the basis of certain subject criteria agreed with customers and the
selection is made by means of a ‘data capture process’. The summaries are sent to customers by
email.
14
DDF is a professional association of Danish daily newspaper publishers, whose function is inter
alia to assist its members with copyright issues.
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15
In 2005 DDF became aware that Infopaq was scanning newspaper articles for commercial
purposes without authorisation from the relevant rightholders. Taking the view that such
consent was necessary for processing articles using the process in question, DDF complained to
Infopaq about this procedure.
16
The data capture process comprises the five phases described below which, according to DDF,
lead to four acts of reproduction of newspaper articles.
17
First, the relevant publications are registered manually by Infopaq employees in an electronic
registration database.
18
Secondly, once the spines are cut off the publications so that all the pages consist of loose
sheets, the publications are scanned. The section to be scanned is selected from the registration
database before the publication is put into the scanner. Scanning allows a TIFF (‘Tagged Image
File Format’) file to be created for each page of the publication. When scanning is completed,
the TIFF file is transferred to an OCR (‘Optical Character Recognition’) server.
19
Thirdly, the OCR server translates the TIFF file into data that can be processed digitally.
During that process, the image of each letter is translated into a character code which tells the
computer what type of letter it is. For instance, the image of the letters ‘TDC’ is translated into
something the computer can treat as the letters ‘TDC’ and put in a text format which can be
recognised by the computer’s system. These data are saved as a text file which can be
understood by any text processing program. The OCR process is completed by deleting the
TIFF file.
20
Fourthly, the text file is processed to find a search word defined beforehand. Each time a match
for a search word is found, data is generated giving the publication, section and page number on
which the match was found, together with a value expressed as a percentage between 0 and 100
indicating how far into the text it is to be found, in order to make it easier to read the article.
Also in order to make it easier to find the search word when reading the article, the five words
which come before and after the search word are captured (‘extract of 11 words’). At the end of
the process the text file is deleted.
21
Fifthly, at the end of the data capture process a cover sheet is printed out in respect of all the
pages where the relevant search word was found. The following is an example of the text of a
cover sheet:
‘4 November 2005 – Dagbladet Arbejderen, page 3:
TDC: 73% “a forthcoming sale of the telecommunications group TDC which is expected to be
bought”’.
22
Infopaq disputed the claim that the procedure required consent from the rightholders and
brought an action against DDF before the Østre Landsret (Eastern Regional Court), claiming
that DDF should be ordered to acknowledge that Infopaq is entitled in Denmark to apply the
abovementioned procedure without the consent of DDF or of its members. After the Østre
Landsret dismissed that action, Infopaq brought an appeal before the referring court.
23
According to the Højesteret, it is not disputed in this case that consent from the rightholders is
not required to engage in press monitoring activity and the writing of summaries consisting in
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manual reading of each publication, selection of the relevant articles on the basis of
predetermined search words, and production of a manually prepared cover sheet for the
summary writers, giving an identified search word in an article and its position in the
newspaper. Similarly, the parties in the main proceedings do not dispute that genuinely
independent summary writing per se is lawful and does not require consent from the
rightholders.
24
Nor is it disputed in this case that the data capture process described above involves two acts of
reproduction: the creation of a TIFF file when the printed articles are scanned and the
conversion of the TIFF file into a text file. In addition, it is common ground that this procedure
entails the reproduction of parts of the scanned printed articles since the extract of 11 words is
stored and those 11 words are printed out on paper.
25
There is, however, disagreement between the parties as to whether there is reproduction as
contemplated by Article 2 of Directive 2001/29. Likewise, they disagree as to whether, if there
is reproduction, the acts in question, taken as a whole, are covered by the exemption from the
right of reproduction provided for in Article 5(1) of that directive.
26
In those circumstances, the Højesteret a decided to stay the proceedings and to refer the
following questions to the Court of Justice for a preliminary ruling:
‘(1)
Can the storing and subsequent printing out of a text extract from an article in a daily
newspaper, consisting of a search word and the five preceding and five subsequent words,
be regarded as acts of reproduction which are protected (see Article 2 of [Directive
2001/29]?
(2)
Is the context in which temporary acts of reproduction take place relevant to whether they
can be regarded as “transient” (see Article 5(1) of Directive 2001/29)?
(3)
Can a temporary act of reproduction be regarded as “transient” where the reproduction is
processed, for example, by the creation of a text file on the basis of an image file or by a
search for text strings on the basis of a text file?
(4)
Can a temporary act of reproduction be regarded as “transient” where part of the
reproduction, consisting of one or more text extracts of 11 words, is stored?
(5)
Can a temporary act of reproduction be regarded as “transient” where part of the
reproduction, consisting of one or more text extracts of 11 words, is printed out?
(6)
Is the stage of the technological process at which temporary acts of reproduction take
place relevant to whether they constitute “an integral and essential part of a technological
process” (see Article 5(1) of Directive 2001/29)?
(7)
Can temporary acts of reproduction be an “integral and essential part of a technological
process” if they consist of manual scanning of entire newspaper articles whereby the latter
are transformed from a printed medium into a digital medium?
(8)
Can temporary acts of reproduction constitute an “integral and essential part of a
technological process” where they consist of printing out part of the reproduction,
comprising one or more text extracts of 11 words?
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(9)
Does “lawful use” (see Article 5(1) of Directive 2001/29) include any form of use which
does not require the rightholder’s consent?
(10)
Does “lawful use” (see Article 5(1) of Directive 2001/29) include the scanning by a
commercial business of entire newspaper articles, subsequent processing of the
reproduction, and the storing and possible printing out of part of the reproduction,
consisting of one or more text extracts of 11 words, for use in the business’s summary
writing, even where the rightholder has not given consent to those acts?
(11)
What criteria should be used to assess whether temporary acts of reproduction have
“independent economic significance” (see Article 5(1) of Directive 2001/29) if the other
conditions laid down in the provision are satisfied?
(12)
Can the user’s efficiency gains from temporary acts of reproduction be taken into
account in assessing whether the acts have “independent economic significance” (see
Article 5(1) of Directive 2001/29)?
(13)
Can the scanning by a commercial business of entire newspaper articles, subsequent
processing of the reproduction, and the storing and possible printing out of part of the
reproduction, consisting of one or more text extracts of 11 words, without the
rightholder’s consent be regarded as constituting “certain special cases which do not
conflict with a normal exploitation” of the newspaper articles and “not unreasonably
[prejudicing] the legitimate interests of the rightholder” (see Article 5(5) of Directive
2001/29)?’
The questions referred for a preliminary ruling
Preliminary observation
27
It should be noted as a preliminary point that the need for uniform application of Community
law and the principle of equality require that where provisions of Community law make no
express reference to the law of the Member States for the purpose of determining their meaning
and scope, as is the case with Article 2 of Directive 2001/29, they must normally be given an
autonomous and uniform interpretation throughout the Community (see, in particular, Case
C-245/00 SENA [2003] ECR I-1251, paragraph 23, and Case C-306/05 SGAE [2006] ECR
I-11519, paragraph 31).
28
Those considerations are of particular importance with respect to Directive 2001/29, in the light
of the wording of recitals 6 and 21 in the preamble to that directive.
29
Consequently, the Austrian Government cannot successfully contend that it is for the Member
States to provide the definition of the concept of ‘reproduction in part’ in Article 2 of Directive
2001/29 (see, to that effect, with respect to the concept of ‘public’ as referred to in Article 3 of
the same directive, SGAE, paragraph 31).
The first question
30
By its first question, the national court asks, essentially, whether the concept of ‘reproduction
in part’ within the meaning of Directive 2001/29 is to be interpreted as meaning that it
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encompasses the storing and subsequent printing out on paper of a text extract consisting of 11
words.
31
It is clear that Directive 2001/29 does not define the concept of either ‘reproduction’ or
‘reproduction in part’.
32
In those circumstances, those concepts must be defined having regard to the wording and
context of Article 2 of Directive 2001/29, where the reference to them is to be found and in the
light of both the overall objectives of that directive and international law (see, to that effect,
SGAE, paragraphs 34 and 35 and case-law cited).
33
Article 2(a) of Directive 2001/29 provides that authors have the exclusive right to authorise or
prohibit reproduction, in whole or in part, of their works. It follows that protection of the
author’s right to authorise or prohibit reproduction is intended to cover ‘work’.
34
It is, moreover, apparent from the general scheme of the Berne Convention, in particular
Article 2(5) and (8), that the protection of certain subject-matters as artistic or literary works
presupposes that they are intellectual creations.
35
Similarly, under Articles 1(3) of Directive 91/250, 3(1) of Directive 96/9 and 6 of Directive
2006/116, works such as computer programs, databases or photographs are protected by
copyright only if they are original in the sense that they are their author’s own intellectual
creation.
36
In establishing a harmonised legal framework for copyright, Directive 2001/29 is based on the
same principle, as evidenced by recitals 4, 9 to 11 and 20 in the preamble thereto.
37
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.
38
As regards the parts of a work, it should be borne in mind that there is nothing in Directive
2001/29 or any other relevant directive indicating that those parts are to be treated any
differently from the work as a whole. It follows that they are protected by copyright since, as
such, they share the originality of the whole work.
39
In the light of the considerations referred to in paragraph 37 of this judgment, the various parts
of a work thus enjoy protection under Article 2(a) of Directive 2001/29, provided that they
contain elements which are the expression of the intellectual creation of the author of the work.
40
With respect to the scope of such protection of a work, it follows from recitals 9 to 11 in the
preamble to Directive 2001/29 that its main objective is to introduce a high level of protection,
in particular for authors to enable them to receive an appropriate reward for the use of their
works, including at the time of reproduction of those works, in order to be able to pursue their
creative and artistic work.
41
Similarly, recital 21 in the preamble to Directive 2001/29 requires that the acts covered by the
right of reproduction be construed broadly.
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42
That requirement of a broad definition of those acts is, moreover, also to be found in the
wording of Article 2 of that directive, which uses expressions such as ‘direct or indirect’,
‘temporary or permanent’, ‘by any means’ and ‘in any form’.
43
Consequently, the protection conferred by Article 2 of Directive 2001/29 must be given a broad
interpretation.
44
As regards newspaper articles, their author’s own intellectual creation, referred to in paragraph
37 of this judgment, is evidenced clearly from the form, the manner in which the subject is
presented and the linguistic expression. In the main proceedings, moreover, it is common
ground that newspaper articles, as such, are literary works covered by Directive 2001/29.
45
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.
46
Words as such do not, therefore, constitute elements covered by the protection.
47
That being so, given the requirement of a broad interpretation of the scope of the protection
conferred by Article 2 of Directive 2001/29, the possibility may not be ruled out that certain
isolated sentences, or even certain parts of sentences in the text in question, may be suitable for
conveying to the reader the originality of a publication such as a newspaper article, by
communicating to that reader an element which is, in itself, the expression of the intellectual
creation of the author of that article. Such sentences or parts of sentences are, therefore, liable to
come within the scope of the protection provided for in Article 2(a) of that directive.
48
In the light of those considerations, the reproduction of an extract of a protected work which,
like those at issue in the main proceedings, comprises 11 consecutive words thereof, is such as
to constitute reproduction in part within the meaning of Article 2 of Directive 2001/29, if that
extract contains an element of the work which, as such, expresses the author’s own intellectual
creation; it is for the national court to make this determination.
49
It must be remembered also that the data capture process used by Infopaq allows for the
reproduction of multiple extracts of protected works. That process reproduces an extract of 11
words each time a search word appears in the relevant work and, moreover, often operates using
a number of search words because some clients ask Infopaq to draw up summaries based on a
number of criteria.
50
In so doing, that process increases the likelihood that Infopaq will make reproductions in part
within the meaning of Article 2(a) of Directive 2001/29 because the cumulative effect of those
extracts may lead to the reconstitution of lengthy fragments which are liable to reflect the
originality of the work in question, with the result that they contain a number of elements which
are such as to express the intellectual creation of the author of that work.
51
In the light of the foregoing, the answer to the first question is that an act occurring during a
data capture process, which consists of storing an extract of a protected work comprising 11
words and printing out that extract, is such as to come within the concept of reproduction in part
within the meaning of Article 2 of Directive 2001/29, if the elements thus reproduced are the
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expression of the intellectual creation of their author; it is for the national court to make this
determination.
Questions 2 to 12
52
If the acts at issue in the main proceedings do come within the concept of reproduction in part
of a protected work within the meaning of Article 2 of Directive 2001/29, Articles 2 and 5 of
that directive make it clear that such reproduction may not be made without the consent of the
relevant author, unless that reproduction satisfies the conditions laid down in Article 5 of that
directive.
53
In that context, by questions 2 to 12, the referring court asks, essentially, whether acts of
reproduction occurring during a data capture process, such as that at issue in the main
proceedings, satisfy the conditions laid down in Article 5(1) of Directive 2001/29 and,
therefore, whether that process may be carried out without the consent of the relevant
rightholders, since it is used to draw up summaries of newspaper articles and consists of
scanning those articles in their entirety to produce a digital file, storing an extract of 11 words
and then printing out that extract.
54
Under Article 5(1) of Directive 2001/29, an act of reproduction may be exempted from the
reproduction right provided for in Article 2 thereof only if it fulfils five conditions, that is,
where
–
the act is temporary;
–
it is transient or incidental;
–
it is an integral and essential part of a technological process;
–
the sole purpose of that process is to enable a transmission in a network between third
parties by an intermediary of a lawful use of a work or protected subject-matter; and
–
the act has no independent economic significance.
55
It must be borne in mind that those conditions are cumulative in the sense that non-compliance
with any one of them will lead to the act of reproduction not being exempted pursuant to Article
5(1) of Directive 2001/29 from the reproduction right provided for in Article 2 of that directive.
56
For the interpretation of each of those conditions in turn, it should be borne in mind that,
according to settled case-law, the provisions of a directive which derogate from a general
principle established by that directive must be interpreted strictly (Case C-476/01 Kapper
[2004] ECR I-5205, paragraph 72, and Case C-36/05 Commission v Spain [2006] ECR
I-10313, paragraph 31).
57
This holds true for the exemption provided for in Article 5(1) of Directive 2001/29, which is a
derogation from the general principle established by that directive, namely the requirement of
authorisation from the rightholder for any reproduction of a protected work.
58
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
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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.
59
In accordance with recitals 4, 6 and 21 in the preamble to Directive 2001/29, the conditions laid
down in Article 5(1) thereof must also be interpreted in the light of the need for legal certainty
for authors with regard to the protection of their works.
60
In the present case, Infopaq claims, first, that the acts of reproduction at issue in the main
proceedings fulfil the condition relating to transient nature, since they are deleted at the end of
the electronic search process.
61
The Court finds, in the light of the third condition referred to in paragraph 54 of this judgment,
that a temporary and transient act of reproduction is intended to enable the completion of a
technological process of which it forms an integral and essential part. In those circumstances,
given the principles set out in paragraphs 57 and 58 of this judgment, those acts of reproduction
must not exceed what is necessary for the proper completion of that technological process.
62
Legal certainty for rightholders further requires that the storage and deletion of the
reproduction not be dependent on discretionary human intervention, particularly by the user of
protected works. There is no guarantee that in such cases the person concerned will actually
delete the reproduction created or, in any event, that he will delete it once its existence is no
longer justified by its function of enabling the completion of a technological process.
63
This finding is supported by recital 33 in the preamble to Directive 2001/29 which lists, as
examples of the characteristics of the acts referred to in Article 5(1) thereof, acts which enable
browsing as well as acts of caching to take place, including those which enable transmission
systems to function efficiently. Such acts are, by definition, created and deleted automatically
and without human intervention.
64
In the light of the foregoing, the Court finds that an act can be held to be ‘transient’ within the
meaning of the second condition laid down in Article 5(1) of Directive 2001/29 only if its
duration is limited to what is necessary for the proper completion of the technological process in
question, it being understood that that process must be automated so that it deletes that act
automatically, without human intervention, once its function of enabling the completion of such
a process has come to an end.
65
In the main proceedings, the possibility cannot be ruled out at the outset that in the first two
acts of reproduction at issue in those proceedings, namely the creation of TIFF files and text
files resulting from the conversion of TIFF files, may be held to be transient as long as they are
deleted automatically from the computer memory.
66
Regarding the third act of reproduction, namely the storing of a text extract of 11 words, the
evidence submitted to the Court does not permit an assessment of whether the technological
process is automated with the result that that file is deleted promptly and without human
intervention from the computer memory. It is for the national court to ascertain whether the
deletion of that file is dependent on the will of the user of the reproduction and whether there is
a risk that the file might remain stored once the function of enabling completion of the
technological process has come to an end.
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67
It is common ground, however, that, by the last act of reproduction in the data capture process,
Infopaq is making a reproduction outside the sphere of computer technology. It is printing out
files containing the extracts of 11 words and thus reproduces those extracts on a paper medium.
68
Once the reproduction has been affixed onto such a medium, it disappears only when the paper
itself is destroyed.
69
Moreover, since the data capture process is apparently not likely itself to destroy that medium,
the deletion of that reproduction is entirely dependent on the will of the user of that process. It is
not at all certain that he will want to dispose of the reproduction, which means that there is a
risk that the reproduction will remain in existence for a longer period, according to the user’s
needs.
70
In those circumstances, the Court finds that the last act in the data capture process at issue in
the main proceedings, during which Infopaq prints out the extracts of 11 words, is not a
transient act within the meaning of Article 5(1) of Directive 2001/29.
71
There is, moreover, nothing in the case-file submitted to the Court – and nor has it been
pleaded – that such an act is liable to be incidental in nature.
72
It follows from the foregoing that that act does not fulfil the second condition laid down in
Article 5(1) of Directive 2001/29; accordingly, such an act cannot be exempted from the
reproduction right provided for in Article 2 thereof.
73
It follows that the data capture process at issue in the main proceedings cannot be carried out
without the consent of the rightholders and, consequently, it is not necessary to consider
whether the four acts which make up that process fulfil the other conditions laid down in Article
5(1).
74
Consequently, the answer to questions 2 to 12 is that the act of printing out an extract of 11
words, during a data capture process such as that at issue in the main proceedings, does not
fulfil the condition of being transient in nature as required by Article 5(1) of Directive 2001/29
and, therefore, that process cannot be carried out without the consent of the relevant
rightholders.
Question 13
75
In the light of the answer given to questions 2 to 12, it is not necessary to answer question 13.
Costs
76
Since these proceedings are, for the parties to the main proceedings, a step in the action
pending before the national court, the decision on costs is a matter for that court. Costs incurred
in submitting observations to the Court, other than the costs of those parties, are not
recoverable.
On those grounds, the Court (Fourth Chamber) hereby rules:
1.
An act occurring during a data capture process, which consists of storing an extract
of a protected work comprising 11 words and printing out that extract, is such as to
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come within the concept of reproduction in part within the meaning of Article 2 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, if the elements thus reproduced are the expression of the
intellectual creation of their author; it is for the national court to make this
determination.
2.
The act of printing out an extract of 11 words, during a data capture process such as
that at issue in the main proceedings, does not fulfil the condition of being transient
in nature as required by Article 5(1) of Directive 2001/29 and, therefore, that process
cannot be carried out without the consent of the relevant rightholders.
[Signatures]
* Language of the case: Danish.
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