© Springer-Verlag Berlin Heidelberg 2015Roberto Caso and Federica Giovanella (eds.)Balancing Copyright Law in the Digital Age10.1007/978-3-662-44648-5_2
Online Exhaustion and the Boundaries of Interpretation
Department of Legal Studies, University of Bologna, Bologna, Italy
5.2 Second Step: Challenging the Conventional Wisdom on the Nonexhaustion Rule Set Forth in Article 3(3) of the InfoSoc Directive
It is a common perception that copyright has been struck by a serious crisis of legitimacy. This crisis can be traced to a variety of causes, but the main one would seem to lie in the (over)protectionist drift by which copyright legislation has been affected, and which has led to a radical shift in the balance of interests that has been achieved over time. However, the balancing of interests is not an activity exclusively entrusted to lawmakers, for it also involves judges and legal scholars. This essay explores the ability of the three “legal formants” to ensure that the EU copyright regulatory framework stays fit for purpose in the digital environment by referring to the widely debated question whether the digital marketplace is an appropriate context into which to expand the principle of exhaustion of the distribution right. In the first place, a few considerations on the interests protected by the principle of exhaustion are proposed, arguing that there is no reason why this principle should become any less necessary in the online distribution. In the second place, it is considered the way lawmakers and judges have addressed the question of whether and under what conditions a principle of online exhaustion can be recognized. In the third place, it is discussed how some solutions based on a nonformalistic and nontextualist interpretation of the norms can make it possible to overcome the objections that have so far prevented the principle of online exhaustion from being recognized for digital works other than computer programs.
1 Technological Evolution, Balancing of Interests, and the Three Drivers of Legal Innovation
According to an account that seems to afford an accurate picture of the situation,1 the phenomenon of rampant copyright infringement on the Internet—a practice that poses a serious threat to the full development of digital markets2—can be explained at least in part by pointing to the crisis of legitimacy that has struck copyright, in particular,3 and intellectual property, in general.4
Indeed, copyright is increasingly being perceived by users as a legal scheme far removed from common sense,5 a device aimed not at guaranteeing a “fair balance of rights and interests between the different categories of rightholders, as well as between the different categories of rightholders and users,” as the idea is ecumenically stated in Recital 31 of Directive 2001/29 (InfoSoc Directive),6 but rather at making sure that some right holders (i.e., the copyright industry) can reap monopolistic profits on the backs of other right holders (i.e., authors),7 as well as against the interests of users.8
This crisis of legitimacy can probably be traced to a variety of causes, but the main one would seem to lie in the (over)protectionist drift by which copyright legislation has been affected,9 and which has led to a radical shift in the balance of interests that has been achieved over time.10 The roots of this protectionism go back a long way, but the phenomenon picked up speed only in the latter half of the 1990s, when lawmakers found themselves having to adapt the copyright system to the challenges brought about by the digital revolution,11 a process that, for the most part, has resulted in a progressive extension of the scope12 and term13 of copyright protection,14 with an accompanying restriction of the exceptions and limitations to the exercise of exclusive rights. In this sense, the crisis of legitimacy affecting copyright can be said to reflect the larger credibility gap for the political class, often accused of being more receptive to the lobbying of the copyright holders than to the claims advanced by society.15
It is worth recalling, even so, that the balancing of interests in copyright legislation is not an activity exclusively entrusted to lawmakers, for in different ways and to different degrees it also involves other subjects. Indeed, no less important, particularly but not only in common law countries, is the role of the judges, who are tasked with shaping into concrete relations the abstract designs by which the lawmakers have sought to balance the different interests at stake. The balancing of interests done by the judges can, in this sense, be regarded as second-order balancing (or metabalancing, as it has been described by legal theorists),16 since it works on the basis of the balancing the lawmakers have designed, and of course this latter design cannot be ignored without violating the democratic principle and, no less importantly, the principles of legality and legal certainty.17 The need for judges to respect these basic principles, however, may promote a natural tendency toward interpretive formalism and, more broadly, toward judicial deference.18 This is particularly true when major technological shifts are involved,19 and as much as these attitudes may be understandable, the risk is that they may undermine the ability of judges to find the best balancing of the interests at stake.20
A useful contribution, in light of this background, can thus come from the interpretations put forward by legal scholars, who can exert an indirect influence on the law in force by persuading judges21 that the lawmakers’ balancing of the interests ought to be reconsidered in response to the new socioeconomic and technological context.22
It is worth considering in some depth the ability of the three “legal formants”23 to “ensur[e] that the EU copyright regulatory framework stays fit for purpose in the digital environment.”24 But since the discussion can easily branch out in too many directions, it will be best to focus on one specific issue that, as has been rightly pointed out, “is integral to the balance between authors and the public that lies at the heart of […] copyright law.”25 To this end, I will restrict my view to the widely debated question whether the digital marketplace26 is an appropriate context into which to expand the principle of exhaustion of the distribution right—i.e., the principle under which, once a copy of a protected work has been legally purchased, the copyright holders will be limited in their ability to control any further distribution of that copy.
I will thus start out with a few considerations on the interests protected by the principle of exhaustion, arguing that there is no reason why this principle should become any less necessary in the online distribution of intangible copies. I will then consider the way lawmakers and judges have addressed the question of whether (and, if so, under what conditions) a principle of online exhaustion can be recognized.27 And, finally, I will discuss how some solutions based on a nonformalistic and nontextualist interpretation of the norms can make it possible to overcome the objections that have so far prevented the principle of online exhaustion from being recognized for digital works other than computer programs.28
For the sake of brevity, I will confine my analysis to the EU legal framework, so as to then be able to expand that analysis in future works.
2 The Interests Protected by the Principle of Exhaustion and Their Persistence in Digital Markets
Since the landmark decision of the Court of Justice of the European Union in the Deutsche Grammophon case,29 the judicial and legislative recognition30 of the principle of exhaustion has been a basic element on which to ensure that the protection of intellectual property rights is consistent with the free movement of goods31 in such a way as to avoid an unjustified and artificial partitioning of the common market, an outcome that would be repugnant to the essential purpose of the EU Treaty.32
As much as the Community origin of the principle of exhaustion is closely related to the regulation of the internal market and to the general interest in ensuring its competitive functioning,33 the principle is often regarded as a device aimed at achieving a balance among essentially individual interests: on one hand, the copyright holder’s interest in controlling the number of copies of the work brought to market and, on the other, the purchaser’s interest in retaining the ability to resell any individual copy he may own.34
There are important outcomes that follow once right holders are legally prevented from controlling the further circulation of the copies put on the market by the right holders themselves or indirectly with their consent,35 and among these consequences are those that affect the interest of consumers in having access to protected works under favorable economic conditions, as well as stably over time.36 The first point here is that, throughout the time that the work is still being distributed by the right holder, the secondary markets will generally make lower prices available, thus making the work accessible to consumers with less purchasing power.37 The second point is that (unlike trademark and, to some extent, patent protection) copyright protection does not lapse just because the protected work is no longer being distributed by the right holder, and so in the interim period, in a situation where the work is no longer being distributed but has not yet passed into the public domain, the secondary markets may facilitate access to the work by those who are interested in it.38
However, in order to protect copyright holders from an excessive curtailment of their rights,39 the principle of exhaustion has traditionally been subjected to specific conditions and limitations: on one hand, the principle is deemed to be applicable only when a tangible copy40 of the work has had a transfer of ownership41 by the right holder or with his consent42; on the other hand, exhaustion only affects the right to distribute the single copy put on the market43 and only applies within the EU market.44
One can easily appreciate, however, that the conditions and limitations just described saddle digital markets with problems not amenable to easy solutions, in that
(i) the copies of the work put out in the marketplace are not embodied into tangible objects45;
(ii) the agreements for the use of intangible copies are typically qualified by right holders as licenses rather than sales,46 from which it should follow that ownership of those copies does not transfer to the user;
(iii) even if we set aside the question of the proper legal characterization for an act through which the right holder put an intangible copy on the market over the Internet—that is, whether this should be characterized as an act of distribution or as one of making available to the public47—any transfer of the work the lawful purchaser may make to a third party will require that purchaser to perform one or more acts of reproduction of the work, and those acts do not fall within the scope of the principle of exhaustion; and
(iv) the geographic limits imposed on the principle of exhaustion cannot easily be enforced on the Web, which by definition is a worldwide network.48
Aside from the problems just outlined, the very opportunity of extending the principle of exhaustion to the online distribution of intangible copies has been called into question.49 One of the reasons for this objection is that, whereas the first purchaser’s resale of a tangible copy deprives that person of any ability to use that copy, quite the opposite is the case with the resale of intangible copies: here, it would be difficult, without adopting technological protection measures,50 to prevent resellers from keeping and using a copy of a work after they have resold it. On the other hand, it has been argued, while markets for tangible copies are based on goods that deteriorate over time, online markets for intangible copies are based on copies of perfect quality that never deteriorate.51 The two aforementioned factors, it is believed, would unreasonably undermine the economic interests of copyright holders52 and would conflict with the specific subject matter of copyright protection, which, as has been rightly pointed out by the EU Court of Justice, protects the right of copyright holders to receive an “appropriate” remuneration for each use of the protected work, that is, a remuneration reasonable “in relation to the actual or potential number of persons who enjoy or wish to enjoy” the work.53
Ultimately, according to those who object to online exhaustion, the likely benefits from any expansion of the principle would not outweigh the likely increase in harm.54
Even though this position may proceed from true premises, it only takes into account the individual interests involved in the principle of exhaustion, neglecting to consider that, as was previously pointed out, this principle plays a fundamental role, in combination with competition rules, in maintaining the competitive structure of the European single market.55 Much progress has been made in this last respect by moving closer toward integration among national markets within the EU, but certainly there is still much to be done in the context of digital markets, at least according to the European Commission, which has recently expressed its concern about the fact that, while the Internet is borderless, online markets in the EU are still fragmented by multiple barriers.56
It bears pointing out in this regard that many sectors of the online markets for digital goods show a high degree of concentration, which is likely to distort competition and lead to the charging of supracompetitive prices.57 As Advocate General Kokott has pointed out in the FAPL case, “it forms part of the logic of the internal market that price differences between different Member States should be offset by trade.”58 From such a perspective, the principle of exhaustion can serve as a fundamental tool in putting downward pressure on the prices of copyrighted works,59 in such a way as to forestall ex ante those market distortions that antitrust measures are designed to drive back only ex post.
For the reasons outlined above, we ought to at least recognize that, subject to certain conditions, there is still merit for the principle of online exhaustion to be carefully considered.
3 The International Legislator’s (Purported) Clarity in Rejecting Online Exhaustion
Despite clearly being one of the most trade-related aspects of intellectual property rights,60 the principle of exhaustion has not been specifically addressed in the TRIPS agreement. That is because the negotiating parties could not find a common perspective on such a fundamental topic,61 especially as concerns the question whether the principle should apply internationally. It is for this reason that Article 6 TRIPS charts a strictly neutral course on this question, by providing the basic freedom of each contracting party to establish its own exhaustion regime, so long as there is no violation of Article 3 (on national treatment) and Article 4 (on the most-favored-nation treatment).
In light of the same need to bridge the gap among different national approaches to the exhaustion rule, the contracting parties are recognized as having a similar freedom under Article 6(2) of the WIPO Copyright Treaty of 1996 (WCT),62 under which nothing in the treaty may be construed in such a way as to affect the freedom to determine “the conditions, if any, under which the exhaustion of the distribution right applies after the first sale or other transfer of ownership of the original or a copy of the work with the authorization of the author.”63 It is worth noting that neither the exhaustion rule contained in Article 6(2) nor the very definition of the distribution right contained in Article 6(1) excludes their applicability to digital copies. However, the agreed statement concerning Article 6 WCT, which is an essential instrument for interpreting the provisions of the Treaty, make it clear that “the expressions “copies” and “original and copies,” being subject to the right of distribution […], refer exclusively to fixed copies that can be put into circulation as tangible objects.”64
In this way, the international legislator for the first time appears to take a clear position65 in the multifaceted debate on which right the online distribution of intangible copies of a work should be made to fall under:66 this form of distribution, the WCT unambiguously states, is protected under the right to make the work available to the public, which would foreclose (at least on a prima facie basis) any possibility of expanding the principle of exhaustion to intangible copies distributed on online markets.67
The principle finally set forth in the WCT seems to have deeply influenced the approach of the Community legislator on the question of online exhaustion. And indeed the analysis of EU copyright legislation shows that the very year the WCT was approved marks a turning point in the way this question has been treated.
To see this, we can start out from Directive 91/250/EEC (Software Directive),68 noting that—even though the 1988 Green Paper on copyright and the challenge of technology had specified some caveats69 and the CJEU had already singled out cases in which the principle of exhaustion did not apply to the exploitation of a work in an intangible form70—no such concerns are reflected in the directive, where the Community legislator did not yet take care to distinguish tangible copies of computer programs from intangible ones in stating how the principle of exhaustion was to apply. This can probably be explained by looking at the specific structure of the software market in the early 1990s. Indeed, while the commercial exploitation of protected products such as cinematographic works71 and sound recordings was seen to depend importantly on the ability to protect those objects in an intangible form, the software market in the pre-Internet era was still fundamentally based on the sale of tangible items. In other words, when the Software Directive was adopted in 1991, the time of software as a service was yet to come.72
For this reason, Article 4(1)(c) of the directive provides a very broad definition of distribution,73 a definition in which, as was just mentioned, no distinction is made between tangible and intangible copies; and without further specification, the same article states that “the first sale in the Community of a copy of a program by the right holder or with his consent shall exhaust the distribution right.” As some scholars have pointed out, absent any indication to the contrary in the Software Directive, the exhaustion rule set forth in Article 4(1)(c) is broad enough to apply to intangible copies distributed online.74
The same approach is adopted in Directive 92/100/EEC (Rental and Lending Rights Directive).75 The landscape begins to change, however, with the 1995 Green Paper on copyright and related rights in the Information Society,76 in which the European Commission appears to take a broader view on the issue of the digital dissemination of works and on the exhaustion of the relative right. This was a time, in the mid-1990s, when the Internet was beginning to shape up as a network carrying huge potential for commerce, and the Commission accordingly felt it necessary to distinguish the sale of goods from the supply of services, including online services, in treating the question of how the principle of exhaustion was to apply, observing in that regard that
[w]hether a distribution right is capable of being exhausted by an exploiting act of the rightholder […] depends upon the form in which the protected work or related matter is exploited. If it is incorporated in a material form it is subject to the rules on free movement of goods and, in consequence, to the principle of Community exhaustion. […] On the other hand, if the work or related matter is not incorporated in a material form but is used in the provision of services, the situation is entirely different. […] In fact, given that the provision of services can in principle be repeated an unlimited number of times, the exhaustion rule cannot apply.
One year after the release of the Green Paper of 1995, the policy direction the Commission set out in that document can be seen to be reflected in Directive 96/9/EC (Database Directive),77 which is quite unlike the Software Directive of 1991 in its treatment of online exhaustion. Even without specifying that the right of distribution only applies to tangible copies of a database, thus leaving open the question of which exclusive right online distribution should be made to fall under,78 Recital 33 of the Database Directive explicitly states that “the question of exhaustion of the right of distribution does not arise in the case of on-line databases, which come within the field of provision of services,” and this “also applies with regard to a material copy of such a database made by the user of such a service with the consent of the rightholder.”79
The EU legislator seems here quite straightforward in framing the rule that the principle of exhaustion does not apply to digital copies distributed online. However, the language of Recital 33 is less clear than would appear at first sight. For example, on a literal interpretation of the second sentence of Recital 33, users who have legitimately downloaded a permanent copy of the database on their hard drive cannot resell the hard drive without first deleting the database from it80—but one could seriously doubt that it was really the legislator’s intent to arrive at such a conclusion. In more general terms, if on one hand there is no doubt that the principle of exhaustion does not apply to the provision of services, on the other hand there is no bright-line rule on which basis to unambiguously state what is covered by the definition of online databases and so what the circumstances are under which a database ought to be qualified as a service. More to the point, it is not clear whether the provision of services ought to include those cases in which the right holder allows purchasers of a database to download a copy on their hard drive so as to enable them to consult the database offline.
A similar ambiguity can also be found in the InfoSoc Directive of 2001. Indeed, on one hand, this directive seems clearer than the Database Directive in providing that the right of distribution only applies to copies of the work incorporated in a tangible item,81 but, on the other hand, Recital 29—apart from offhandedly confirming that “the question of exhaustion does not arise in the case of services and on-line services in particular”—is set up in a way almost identical to Recital 33 of the Database Directive, with the consequence that we are left with the same interpretive doubts just pointed out with respect to the latter directive. And, as we will see, despite the apparent clarity of the relevant norms, the very same doubts have been raised by the CJEU in the UsedSoft case.
4 The More Reflective Attitude of the Court of Justice
As much as there may have been only a handful of occasions so far in which European judges have been asked to rule on the validity of the principle of online exhaustion, their position, as expressed in the case law, seems to be more nuanced than the legislator’s apparent stark rejection. Indeed, although some German courts initially expressed doubts in regard to that question,82 the landscape seems to be changed after the landmark decision the CJEU rendered in 2012 in the UsedSoft case,83 finding that the authorized downloading from the Internet of a copy of a computer program can actually give rise to the exhaustion of the right of distribution of that copy within the EU.84
The Court’s reasoning is based on a rigorous interpretation of Article 4(2) of Directive 2009/24/EC (which codifies the Software Directive of 1991), under which, as we saw earlier, “the first sale in the Community of a copy of a program by the right holder or with his consent shall exhaust the distribution right within the Community of that copy,” regardless of whether the copy is tangible or intangible.
The CJEU has laid out the rationale behind its decision by offering both a consequentialist argument and an economic one. In the former respect, the Court argued that without a broad interpretation of the term sale,85 the effectiveness of the principle of exhaustion would be undermined, since right holders could contract around the rule by merely designating the contract a license rather than a sale.86 In the latter respect, the Court argued that the sale of a copy incorporated in material objects is fully analogous, from an economic perspective, to the sale of a copy downloaded from the Internet, since transmission of a copy over the Internet is functionally equivalent to the supply of a material object.87
The CJEU does not fail to notice that the moment the principle of exhaustion is extended to intangible copies, the act of making such copies available over the Internet must necessarily be qualified as an act of “distribution” within the meaning of Article 3(1) of the InfoSoc Directive and not as an act of “making available to the public,” this in deliberate contrast to the position taken by the European Commission.88 Even so, we saw earlier that the exclusive rights provided under the Software Directive recognize the right holder as having not only a reproduction and a modification right but also an all-embracing exploitation right inclusive of “any form of distribution to the public,” and this inclusion led the CJEU to include the online distribution of a work within the definition of distribution set forth in Article 4(1)(c) of the Software Directive of 2009, with the obvious and inevitable consequences that follow as concerns the applicability of the exhaustion rule under that directive.89
In this regard, however, the CJEU takes care to point out that its decision is grounded in the nature of the Software Directive as a lex specialis relative to the InfoSoc Directive.90 At the same time, however, the Court does not explicitly say that the principle of exhaustion does not apply to the online distribution of works subject to the InfoSoc Directive. Quite the contrary, the language used by the Court to say that the InfoSoc Directive excludes online exhaustion for the works within its scope is at best dubitative.91 So the proposition that in the UsedSoft decision there is to be found an implied obiter dictum barring the principle of exhaustion in connection with works other than computer programs should at least be closely scrutinized.
That view is borne out by the doubts raised in the opinion delivered by Advocate General Bot. Indeed, as the Advocate General argues, Recitals 28 and 29 of the InfoSoc Directive are neither clear nor unambiguous in excluding that the principle of exhaustion can apply to online transmission,92 a view that runs contrary to a widely accepted interpretation of those two recitals that are commonly taken as evidence that the principle of exhaustion by contrast applies only to forms of distribution mediated by a tangible object.
Unfortunately, the CJEU does not specifically address on the merits the Commission’s argument that EU law does not provide for exhaustion of the distribution right where services are concerned, and in particular the Court fails to clarify whether the act of enabling users to download a work from the Internet, in such a way as to grant them a right to use their copy in perpetuity, should properly be characterized as a provision of services or as a sale of goods. Indeed, the Court, with specific regard to computer programs, confines itself to finding that
to limit the application […] of the principle of the exhaustion of the distribution right under Article 4(2) of Directive 2009/24 solely to copies of computer programs that are sold on a material medium would allow the copyright holder to control the resale of copies downloaded from the Internet and to demand further remuneration on the occasion of each new sale, even though the first sale of the copy had already enabled the right holder to obtain an appropriate remuneration. Such a restriction of the resale of copies of computer programs downloaded from the internet would go beyond what is necessary to safeguard the specific subject-matter of the intellectual property concerned.
It is not clear whether that reasoning of the court can also be made to apply to works other than computer programs. Indeed, while the aforementioned nature of the Software Directive as a lex specialis would suggest a negative answer, it must also be mentioned, on the other hand, that the principle of proportionality set forth in Article 52(1) of the Charter of Fundamental Rights of the EU—a principle implicitly invoked by the CJEU—should apply in an analogous way to all works of authorship, from which it follows that those norms that restrict the resale of a user’s legitimately purchased copies should be subjected to a test of validity based on the same interpretive criteria.
Somehow, though, the CJEU appears to have deliberately left open an interpretative window on the question whether the principle of online exhaustion can be extended to works and other materials protected under the InfoSoc Directive.93 This window, however, has promptly been closed by the Regional Court of Bielefeld in a case decided in March 2013 concerning the online distribution of e-books and audiobooks.94 Indeed, the German court, seizing precisely on the lex specialis nature of the Software Directive, found that the principles set out by the CJEU in the UsedSoft case cannot be applied to digital contents governed under the InfoSoc Directive.
The Court of Bielefeld stated, in this regard, that a contract under which a copyright holder grants users the right to use an intangible copy of a work for personal use—including by downloading a copy from the Internet—and in which a clause is contained that expressly prohibits resale of the copy or its transfer to third parties may not be interpreted as granting users a right comparable to that granted to owners of a material good.95 More than that, the German court, ignoring the concerns expressed in this regard by the Advocate General and the CJEU in the UsedSoft case, is unambiguous in holding that the act by which a copyright holder grants users a perpetual right to use copies downloaded from the Internet amounts to an act of making the work available to the public pursuant to Article 3 of the InfoSoc Directive and so that, even in light of Recitals 28 and 29 of the same directive, the principle of exhaustion does not apply.96 Even while recognizing that the principle of exhaustion has been deemed by some German legal scholars to be applicable to online distribution,97 the Court of Bielefeld clearly gives greater weight in this case to a textual interpretation of legislative sources,98 arguing that ubi lex voluit dixit: if the legislator had actually wanted to generally extend the principle of exhaustion to acts of online distribution, such an extension would have been expressly stated in the InfoSoc Directive. And since no such express recognition can be found in that directive, any analogical interpretation of the principle of exhaustion is thereby ruled out.99
The Court of Bielefeld further specifies that, even if we recognized a general principle of online exhaustion, its applicability would in any event be paralyzed by the impossibility of transferring files to third parties without violating the exclusive right of reproduction. This problem had been solved by the CJEU in its finding that a secondary purchaser of a copy of a computer program is a “lawful acquirer” of that copy within the meaning of Article 5(1) of the Software Directive of 2009 and so that the secondary purchaser is allowed to reproduce the work without the right holder’s consent where the act of reproduction is necessary for the use of the computer program in accordance with its intended purpose. No comparable rule, however, can be found in the InfoSoc Directive,100 with the consequence that the principle of online exhaustion would in any event be precluded on a practical level even if it were to be recognized on a theoretical one.
On a deeper analysis, the discrepancy between the CJEU and the Court of Bielefeld can be explained by pointing not only to the different laws applicable in the two cases and the different outcomes such application brings about but also to the different approaches the two courts took to the principle of exhaustion. While the CJEU, in line with its well-established case law, lays emphasis on the importance of this principle as a tool with which to protect the general interest in avoiding the partitioning of the market,101 the German court takes a more individualistic perspective through an analysis narrowly focused on the conflicting interests of the copyright holder and the purchaser of a digital copy of the work,102 arguing (quite apodictically) that while the right holder’s economic interest can only be satisfied by preventing the work from finding its way in the highly elusive secondary digital markets, the purchaser’s interest is satisfied merely by enabling him to use a digital good at a lower price than the one at which the corresponding material good is available. This appears to be, however, a rather superficial application of the proportionality test set forth in Article 52(1) CFR. Indeed, in order to properly assess whether the principles of necessity and proportionality “in the narrow sense”103 are a valid and sufficient basis on which to restrict purchasers to the right to transfer their copies, the German court should have followed the CJEU104 in taking due account that different technological solutions can, and in the future increasingly will,105 guarantee for right holders that if a legitimate purchaser should redistribute a digital copy, the originally purchased copy will be automatically deleted, thus reinstating a proper balance between the different interests at stake.
5 A Three-Step Argument for Recognizing the Online Exhaustion Principle
As was noted earlier, the claim that the InfoSoc Directive rules out the possibility of recognizing a general principle of online exhaustion is based on a reading of Articles 3 and 4 of the same directive, especially in light of Recitals 28 and 29. In short, and summing up the argument so far made:
(i) online distribution always entails the supply of a service (not the sale of a good), an activity in regard to which Recital 29 states that the question of exhaustion simply “does not arise”; and
(ii) online distribution must always be construed, not as an act of distribution but as one of making the work available to the public under Article 3 of the directive, and under paragraph 2 of the same article, the latter activity expressly excludes exhaustion of the right.
On top of these two critical questions, as we have seen, there comes another that has been worked out in two contrary ways by the CJEU and the Regional Court of Bielefeld, namely:
(iii) online distribution in any event entails the need to reproduce the work through a series of acts that never exhaust the copyright holder’s right.
Each of the three critical issues just listed will now be taken up in turn in an attempt to show how a nonformalist and nontextualist approach to the InfoSoc Directive makes it possible to overcome at least some of the obstacles that come in the way of our recognizing a general principle of online exhaustion.
5.1 First Step: Distinguishing Between Services “as Services” and Services “as Goods”
The principle under Recital 29 of the InfoSoc Directive—stating that the question of exhaustion does not arise in connection with services, and online services in particular—is fully established in EU law, at least since the landmark decision that the CJEU rendered in the Coditel I case.106 It is therefore crucial to understand whether online distribution of a copyrighted work should be characterized as the supply of a service or as the sale of a good107—a question that the CJEU did not clarify in the UsedSoft case.108
As Advocate General Bot has rightly observed,109 Recital 29 is far from clear in that regard, since it offers no general definition of the two concepts, choosing to instead illustrate their meaning by example, namely by characterizing as “services by nature” the rental and lending of original and copies of a work and as an “item of goods” a CD-ROM, “where the intellectual property is incorporated in a material medium.”110 It would thus appear that under EU law, the goods/services dichotomy corresponds to the tangible/intangible objects dichotomy already pointed out in the Coditel I case. But that such correspondence does not accurately describe the application of the principle of exhaustion can be appreciated in Recital 29 itself, considering that under this recital, the principle does not cover also material copies of a work made by a user of a service with the consent of the right holder.111 Furthermore, in stating that the question of exhaustion does not arise in connection with “online services,” Recital 29 fails to provide for that term a definition suitable for this specific context, considering as well that the definition of “online services” one should want to look to here, in view of the ratione materiae—the definition offered in Recital 18 of Directive 2000/31/EC112—includes the activity of “selling goods on-line” within the scope of “services” and so is much too broad to be usefully brought to bear on the problem of exhaustion.113
The arguments just outlined bring out the substantial fallacy where the criterion for applying the principle of exhaustion is sought by uncritically superimposing the dichotomy between tangible and intangible objects on top of the dichotomy between good and services. To this end, as has been rightly underscored in the legal literature,114 we have to attempt a “coherent theory of when to treat online offerings of copyrighted works as “services” and when to still treat them as “goods,” in spite of their intangible and immaterial nature.”
There is no space here to enter into such a theory in any depth, but one thing can definitely be pointed out: it cannot but proceed from an acknowledgment of the economic rationale according to which the principle of exhaustion will eventually be excluded where the supply of services is concerned. As the Court of Justice has commented in the Coditel I case, the economic assumption at the basis of the principle is that the right holder “receives his remuneration upon the sale of the protected product” (so-called criterion of marketing). What calls for scrutiny is the correctness of the Court’s conclusion that “if there is no material medium the criterion of marketing cannot be used to determine the extent of the exclusivity of the right.”115
It is worth noting that in the Coditel I decision, exhaustion is expressly excluded for “performing rights,” or what the Court describes as “copyrights where there is no material medium.” What does not seem entirely convincing in the Court’s reconstruction is exactly the equivalence between “performing rights” and “copyrights where there is no material medium,” as well as the consequent implicit claim that there can be no sale of a protected product absent a material medium. Indeed, the validity of the Court’s conclusion appears to be conditional on the contingent fact that, at the time of the Coditel I judgment, the only commercially viable solution for selling a copy of a work was by fixing that copy in a material medium. But, as is known, the scenario has radically changed with the development of the Internet as a medium for distributing digital copies. It would seem, therefore, that the concept of “performing rights”—where the right holder’s remuneration is indeed not based on an act of sale in such a way as to make it impossible to apply the “criterion of marketing”—should properly be understood under the heading of “non-copy related rights”116 rather than under that of rights “where there is no material medium,” considering that a work no longer needs to be fixed in a material medium since the beginning in order for it to be exploited by exercising copy-related rights, and likewise, as the UsedSoft case clearly shows, even a copy not fixed in a material medium can be the object of a sale.117
Therefore, taking the CJEU’s reasoning to a higher level of abstraction, and adjusting to the Internet era the nonexhaustion principle stated in Coditel I, it would be more accurate to conclude that the principle of exhaustion does not apply where no copy is sold,118 since it is only in that circumstance that “the criterion of marketing cannot be used to determine the extent of the exclusivity of the right.” In fact, in all cases where a copy is sold by the right holder or with his consent, he receives a remuneration consistent with the specific subject matter of intellectual property protection,119 regardless of whether the copy is fixed in a material medium,120 and thus the economic criterion for applying the exhaustion rule (i.e., the “criterion of marketing”) is fully satisfied.121
So the dichotomy we should match to the one between goods and services in applying the principle of exhaustion is not that between tangible and intangible objects, as Recital 29 of the InfoSoc Directive would suggest, but rather that between selling a work and making it available (through an act other than a sale) or, on a more general level, that between forms of exploitation that entail a transfer of ownership of a copy of the work and forms that do not.122 Indeed, as was just observed, the copyright holder’s legally protected interest in obtaining an appropriate remuneration for the use of a copy is satisfied the moment that copy is sold, and so there is no reasonable basis on which the he should be able to further profit from subsequent transfers of ownership—provided, of course, that these subsequent transfers do not increase “the actual or potential number of persons who enjoy”123 the work.
The interpretive problem thus shifts to a different issue. The problem will be how to determine that there has actually been a transfer of ownership of a copy from the right holder to a user and, in particular, that a sale has taken place. Here it seems to me that there is no compelling reason why the definition of a sale offered in UsedSoft ought to apply exclusively to software and cannot be generalized to other copyright-protected works.124 Now, it bears recalling here the CJEU’s view that the applicability of the principle of exhaustion must be considered on a broad interpretation of the term sale
as encompassing all forms of product marketing characterized by the grant of a right to use a copy of a [work], for an unlimited period, in return for payment of a fee designed to enable the copyright holder to obtain a remuneration corresponding to the economic value of the copy of the work of which he is the proprietor.
In this way, the CJEU points out that, regardless of the legal terms the parties use in a contract,125 the contract will be deemed a sale (not a license) if through it i) the right holder receives a remuneration corresponding to the economic value of the copy of the work and (ii) the user is granted a right to freely use the copy for an unlimited (or, I would add, for a substantially unlimited)126 time.127
So, from the standpoint of the way the contract frames the rights acquired by the parties, what distinguishes the sale of a good from the supply of a service is the user’s ability under the contract to enjoy a copy of the work without time limits and without the right holder’s further intervention or, otherwise stated, without encroaching on the user’s autonomy as to when and how he may use the copy.128
This view finds support as well in the opinion that Advocate General Kokott delivered in the FAPL case, where the difference is rightly pointed out between services that “differ from goods in that they cannot be re-used per se” and services that “do not differ significantly from goods” insofar as they can be “downloaded from the Internet [and] can easily be passed on in electronic form.” Whereas services in the first class (i.e., services properly enjoyed “as services”) “cannot be passed on as such,” such that “there is actually no scope for an “exhaustion” of the right to the service,” services in the second class (i.e., those enjoyed “as goods”) should be treated as tangible goods. In other words, one can hardly disagree here with the Advocate General’s view that, under the basic principles on the free movement of goods enshrined in the EU Treaty, it would be arbitrary to apply to “services as goods” a set of rules different from those that govern tangible goods,129 since that would wind up restricting the freedoms guaranteed by the principle itself to a degree not justified by the need to protect the specific subject matter of intellectual property rights.130
The approach suggested here—on which the goods/services dichotomy is best rendered through the dichotomy between forms of according as they do or do not entail a transfer of ownership of a copy of the work, regardless of whether that copy is tangible or intangible—brings with it, too, an additional benefit, in that on this basis the principle of exhaustion, as framed in the Software, Database, and InfoSoc Directives, can be reduced to unity by doing away with what appears to be an untenable distinction between different types of copyright works.131 And, after all, when the CJEU in the Donner decision found that “the protection of the right of distribution cannot […] be deemed to give rise to a disproportionate or artificial partitioning of the markets”132 unless necessary to protect the specific subject matter of copyright, it also pointed out that this holds not only for the distribution of tangible goods but also for the delivery of services enjoyed “as goods,” as is the case with “the sale of computer software, musical works, e-books or films via the Internet,” since the “restrictions on the fundamental freedoms must, as a rule, be justified by reference to the same principles.”133
5.2 Second Step: Challenging the Conventional Wisdom on the Nonexhaustion Rule Set Forth in Article 3(3) of the InfoSoc Directive
A second critical point in regard to the question of recognizing a general principle of online exhaustion lies in the circumstance previously considered that, after the adoption of the WIPO Copyright Treaty,134 the online distribution of intangible copies of a work is mostly deemed to be an act of making the work available to the public and so is subject to the nonexhaustion rule set forth in Article (3)3 of the InfoSoc Directive. I will not be trying to poke holes in this legal construction.135 Nevertheless, I will be trying to show that the Court of Justice, despite the unambiguous rendering of Article 3(3) of the InfoSoc Directive, has at least implicitly recognized as well that the right of making a work available to the public is subject to a limited form of exhaustion of the right itself.136
Indeed, it is now an established principle of Community case law that the right of communication (including the right of making works available) to the public can be deemed to have been infringed only on condition that an unauthorized third party has made the work available to a “new” public, that is, to a range of potential users broader than the group to which the original act of communication of the work was directed,137 assuming as well that the second act of communication to the public was carried out using the same techniques as the first.138
This principle—which the CJEU developed in EGEDA 139 and SGAE 140 by interpreting Article 11bis(1)(ii) of the Berne Convention in light of the explanatory guide published by the WIPO in 1978141—is based on the premise that “the decisive factor for determining whether a communication is “to the public” lies in the extent of the circle of potential recipients of the communication and [emphasis mine, on] its economic significance for the author.”142 Indeed, when a copyright holder carries out or authorizes the first communication to a given public, any further acts of communication directed at the same public (and using the same techniques) do not amount to an independent economic exploitation of the work143 and so do not require the right holder’s authorization.
That principle has just recently been upheld by the CJEU in the Svensson case,144 involving an action against third parties who were linking to protected contents published online without the right holder’s authorization. Although the Court in this case held that providing clickable links to protected works must be characterized as an act of communication to the public within the meaning of Article 3(1) of the InfoSoc Directive,145 it also acknowledged that where such an act concerns “the same works as those covered by the initial communication and [is] made […] by the same technical means [it] does not lead to the works in question being communicated to a new public,”146 so long as the users enabled to access the works through the links provided by the unauthorized third party could access those works independently147 by logging directly onto the website on which the same content had initially been communicated. Indeed, in this case, such users
must be deemed to be potential recipients of the initial communication and, therefore, as being part of the public taken into account by the copyright holders when they authorised the initial communication. Therefore, since there is no new public, the authorisation of the copyright holders is not required for a communication to the public such as that in the main proceedings.
Now, it seems to me that, as much as Article 3(3) of the InfoSoc Directive may appear unambiguous, the CJEU doctrine of the “new public” requirement makes it possible to advance the theory that a limited principle of exhaustion can also be applied to the right to communicate a work to the public. That is because the two rules appear to rest on the same underlying economic rationale. Indeed, as was noted earlier, the background economic assumption forming the basis of the principle of exhaustion is that a right holder who sells a copy of a work receives a remuneration consistent with the specific subject matter of intellectual property protection. Therefore, enabling a right holder to control the further circulation of that copy would go beyond the scope of the exclusive rights (and in particular beyond the scope of the right to distribute the work). Similarly, when a right holder communicates or authorizes a third party to communicate a work to a quantitatively and qualitatively determined (or determinable) public, then he receives (or has the chance to receive) a remuneration that can be deemed “appropriate” under the normative standard the CJEU introduced in its FAPL decision. Therefore, allowing a right holder to control further acts of communication to the same potential recipients would go beyond the scope of the exclusive rights (and, in particular, beyond the scope of the right to communicate the work or make it available to the public).