By Alessandro Pala and Elena Martini

With a judgement dated 19 December 2019 (C 263/18) the ECJ issued an important decision concerning the interpretation of Article 2 and Article 3 of Directive 2001/29/EC in relation to the sale of second-hand e-books.

The dispute at the basis of the decision was initiated by Nederlands Uitgeversverbond (NUV) and Groep Algemene Uitgevers (GAU) – two associations protecting the interests of Netherlands publishers – against the Dutch company Tom Kabinet, in connection with the provision by the latter of an online service selling  second-hand e-books. On 2015 Tom Kabinet created the Toms Leesclub (Tom’s reading club) whose members can share e-books directly purchased by Tom Kabinet or donated to the reading club by other club members. In the latter case, the club members, in addition to providing the e-book’s download link, must declare that they have not kept a copy of the book at issue.

The activity of this online marketplace has led NUV and GAU to bring an action before the Rechtbank Den Haag (The Hague’s district Court) in order to prohibit Tom Kabinet from the unauthorised making available and reproduction of its affiliates’ e-books, by claiming that the activities at issue constituted an unauthorised act of communication to the public. Tom Kabinet, by contrast, argued that the activities of Toms Leesclub fell within the scope of the right of distribution, which is subject to the rule of exhaustion (pursuant to which, once a copy of a protected work is lawfully put on the market, the rightholder cannot prevent the resale of such a copy by its buyer), since the e-books are sold by the rightholder or with his consent.

The ECJ, following the preliminary ruling by the Hague Court, found that articles 3 and 4 of Directive 2001/29 grant the authors, respectively, 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» and the right to «authorise or prohibit any form of distribution to the public by sale or otherwise».

Those provisions must be interpreted in accordance with international law, in particular with the WIPO copyright treaty of 1996 (WCT). It can be deduced from the interpretation of Article 6 of the WCT that the right of distribution to the public «refers exclusively to fixed copies that can be put into circulation as tangible objects». In the same vein, Recitals 28 and 29 of Directive 2001/29 state that the distribution right «includes the exclusive right to control distribution of the work incorporated in a tangible article». Conversely, the exhaustion does not concern services and in particular online services. Moreover, although the ECJ stated that the exhaustion of the distribution right of computer programs’ copies referred to in Article 4 (2) of directive 2009/24 makes no distinction according to the tangible or intangible form of the software’s copy, this provision does not apply beyond the peculiar matter of computer programs, considering that Directive 2009/24 constitutes a lex specialis in relation to Directive 2001/29.

The Court furthermore points out that the concept of “communication to the public” referred to in Article 4 of Directive 2001/29 must be understood in a broad sense so as to include «all communication to the public not present at the place where the communication originates».

In the present case, according to the Court the activity carried out by Tom Kabinet would represent an act of “making available to the public”, which forms part of the wider concept of “communication to the public”. In particular, such activity meets the requirements of the article 3 of Directive 2001/29, «namely that members of the public may access the protected work from a place and at a time individually chosen by them» and consists of an act of communication to an undetermined number of potential recipients that constitute a “new public” in relation to the public already taken into account by the copyright holder when he authorised the initial communication of his work to the public.

In this regard, the ECJ points out that the number of users that may have access to the protected works provided by Tom Kabinet is substantial and indefinite, since the Toms Leesclub is open to membership by any interested person and there are no technical measures «ensuring that (i) only one copy of a work may be downloaded in the period during which the user of a work actually has access to the work and (ii) after that period has expired, the downloaded copy can no longer be used by that user».

The public at issue is furthermore “new”, since the making available of e-books from the reading club is accompanied by a license authorising the user who has downloaded an e-book only to read from his own equipment and, for such reason, the communication to the public effected by Tom Kabinet is necessarily aimed at a new public, that was not already taken into account by the copyright holders.

Based on this considerations, the ECJ finally clarified that «the supply to the public by downloading, for permanent use, of an e-book is covered by the concept of ‘communication to the public’ and, more specifically, by that of ‘making available to the public of [authors’] works in such a way that members of the public may access them from a place and at a time individually chosen by them’, within the meaning of Article 3(1) of Directive 2001/29». For this reason, the activity of Toms Leesclub, configured as an act of communication to the public not subject to the principle of exhaustion, is covered by the exclusive right referred to in Article 3 of Directive 2001/29 and for that reason it is subject to the authorisation from the rightholder.