The Court of Justice of the European Union (CJEU) held on November 16, 2016, that the French law which allowed for the digital exploitation of out-of-print books is precluded by article 2(a) and article 3(1) of Directive 2001/29/EC, closing the door on a scheme which allowed orphan books and other out-of-print books to be accessible online. The case is Soulier and Doke, C-301/15.
The French Law Allowing For the Digital Exploitation of Out-of-Print Books
A French law, enacted on March 1, 2012, the Law No. 2012-287 on the digital exploitation of out-of-print 20th century books, added articles L. 134-1 to L. 134-9 to the French intellectual property Code (CPI). Its February 27, 2013 décret (decree) n˚2013-182 stated how the law should be implemented.
The law introduced a mechanism allowing for the digital exploitation of out-of-print books published between January 1, 1900 and December 31, 2000, and which were no longer available for sale. Some of them are still protected by copyright. Some of them are orphan books, that is, books for which right holder is no longer known. The law directed the creation of a public database indexing all of these books, which would be available to the public for free. The Bibliothèque Nationale de France, France’s national library, was put in charge to implement and update this database, which was named ReLIRE (to read again).
Article L. 134-4 of the CPI provided the author, and the editor holding the right to reproduce the book in print, the right to opt-out of that scheme. The opt-out right had to be exercised within six months after the book had been placed in ReLIRE. After six months, a collecting society was in charge of authorizing the reproduction and the performance in digital format of the book, in return for remuneration, on a non-exclusive basis for a renewable five year period. The remuneration was shared equitably between authors and editors.
The author could exercise her opt-out right even after six months if she believed that reproducing and representing the book was likely to harm her honor or reputation. The author could also opt-out any time if she could prove that she held the exclusive right to exploit the book in a digital form.
Facts and Procedure
Mr. Soulier and Ms. Doke, both authors, asked, in May 2013, the Conseil d’État, the Council of State, France’s highest administrative court, to annul the February 27, 2013, decree. They claimed that articles L.134-1 to L.134-9 of the CPI limited their exclusive right of reproduction provided by Article 2(a) of Directive 2001/29 (the InfoSoc Directive) but that this limitation was not included in the list of exceptions to this right listed by Article 5 of the same Directive.
The Council of State first asked the Conseil Constitutionnel, the Constitutional Council, to rule on the constitutionality of the law. On February 28, 2014, the Constitutional Council issued its decision. It found that the law did not violate the right of the copyright holders, that it did not prevent them from exploiting their works in other forms than the digital form and that the law did not violate the right of having a private property which is protected by article 17 of the 1789 French Declaration of Human Rights and Civic Rights.
The Council of State then stayed the proceeding and asked the CJEU for a preliminary ruling on the question of Article 2 and 5 of the InfoSoc Directive 2001/29 precluded articles L. 134-1 to L. 134-9. On November 16, 2016, the CJEU held that it does indeed.
Authors Must Be Able to Give Their Permission Prior of the Placement in the Database
The CJEU first noted that the exceptions provided by the French law do not fall within the scope of the exhaustive list of exceptions provided by Article 5 of the InfoSoc Directive, and thus Article 5 is irrelevant to this case. However, Article 2 (a) and 3(1) of the Directive both provide an exception on the rights of reproduction and communication to the public and are thus relevant to this case. They provide, respectively, that the Member States must grant authors an exclusive rights of reproducing their works or to prohibit their direct or indirect the reproduction by any means and in any form, and that the Member States must grant authors the exclusive rights to authorize or prohibit any communications to the public of their works.
For the CJEU, the rights given to authors by Article 2(a) and Article 3(1) require the consent of the author prior to the reproduction of his work. However, this consent can be implicit or explicit (Soulier at 35). The French scheme, while giving the author a right to opt-out, does not inform them that their works will be placed in the ReLIRE database prior to that placement.
As the French law does not offer “a mechanism ensuring authors are actually and individually informed…, it is not inconceivable that some of the authors concerned are not, in reality, even aware of the envisaged use of their works and, therefore, that they are not able to adopt a position, one way or another, on it. In those circumstances, a mere lack of opposition on their part cannot be regarded as the expression of their implicit consent to that use” (Soulier at 43).
While the CJEU admitted that the InfoSoc Directive cannot prevent Member States from implementing legislation allowing for the digital exploitation of out-of-prints books “in the cultural interest of consumers and society as a whole,” pursuing that objective “cannot justify a derogation not provided by the EU legislature to the protection that authors are ensured by [the InfoSoc Directive]” (Soulier at 45).
Authors Have the Exclusive Rights to Authorize the Reproduction and Communication of their Works
The CJEU was also troubled by the fact that the French law gave the editors of the books in printed format the right to authorize or not their reproduction in the digital database. For the CJEU, only authors have the right to exploit their works because the rights of reproduction and communication to the public provided to them by Article 2(a) and Article 3(1) of the InfoSoc Directive are exclusive rights. Also, Article 5(2) of the Berne Convention, to which the EU is a party and which the InfoSoc Directive is intended, in particular, to implement, requires that authors must be able to exercise their rights of reproduction and communication without any formalities.
However, if an author decided to terminate future exploitation of his work in a digital format, he had to secure, under French law, the agreement of the publisher holding the right of the work in a printed format (Soulier at 49). For all of these reasons, the CJEU held that Article 2(a) and Article 3(1) of the InfoSoc Directive preclude a national legislation such as the one implanted in France to allow the digital exploitation of out-of-print books.
What about Orphan Works?
While the CJEU recognized that exploiting such books is of value to society, it did not provide the Member States much clue as to how they could implement a scheme to make these books available to the public which would pass muster with the EU law.
Should Soulier be interpreted as only barring the commercial exploitation of out-of-print books which authors are known? The Court placed much weight on the importance of securing the consent of the author of the work prior of its placement into the database. Does that mean that orphan works can never be placed in such a database, since it is impossible to secure the consent of their unknown right holder, or, to the contrary, should Soulier be interpreted as meaning that only orphan books can be placed into the database, since it is not possible to secure the prior consent of their authors, and they are thus out of the scope of the Soulier decision?
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