New research on legal aspects of exception for text and data mining in DSM directive – IP paradox

The concept of exceptions and imitations to copyright serve a critical role in the so-called intellectual property – and copyright – paradox. The paradox of intellectual property lies in a “system that promotes, or at least, aspires to promote knowledge by restricting it”.

The paradox explicates the tension between access and protection – or public and private interest – which is intrinsic in intellectual property policy. In this respect, exceptions and limitations allow for copyrighted works to be used without a license from the copyright owner because that use serves some important public interest.

In EU law, exceptions and limitations are usually implemented by Member States under a voluntary scheme, with very few exceptions provided as mandatory. The application of exceptions and limitations in EU law – and elsewhere – does occur according to the general principles set out in international law by the “three-step test”. According to this test, exceptions and limitations would be permitted (1) in certain special cases (2) which do not conflict with a normal exploitation of the work or other subject-matter and (3) do not unreasonably prejudice the legitimate interests of the rightholder.

Obviously, application of exceptions and limitations to TDM techniques when they are invasive enough to trigger intellectual property infringement – either copyright or sui generis database rights – have been repeatedly claimed. A balanced approach to the implementation of the three-step test would especially support such application of exceptions and limitations to TDM to foster “public interest, notably in scientific progress and economic development”. Under current EU copyright law, TDM might be possibly covered by exceptions and limitations available, however their application is uncertain.

(1) The mandatory exception for temporary acts of reproduction might apply to limited TDM techniques. Application of temporary reproduction exception remain limited to residual cases for the large number of specific requirements that must be fulfilled, apparently in a cumulative manner according to the CJEU. All in all, the sole mandatory exception available to researchers in Directive 2001/29/EC has a very limited scope that would hardly cover most TDM activities and offers insufficient legal certainty.

(2) In some Member States, depending on whether it is implemented or not, the research exception may cover some TDM-relevant acts infringing upon intellectual property rights. As per the copyright in a database, the same research exemption would also be available. This scenario would refer to the case where a TDM process does reproduce the whole or substantial parts of a database, thus possibly infringing a copyright in its original arrangement.  A research exception is also provided for the sui generis database right. This exception would apply to a lawful user of a database for extracting or re-utilizing a substantial part of the database’s contents for non- commercial scientific research purposes, as long as the source is indicated.

(3) The private copy exception might potentially cover some uses by individual researchers, in particular in Member States that do not have a research exemption, thus allowing reproductions done for research purposes. First, no direct or indirect commercial uses will be covered, leaving out most TDM research, which even if done by research organisation can have at least an indirect commercial end. Second, researchers might have to face the argument that the use for TDM might not be private if the use is not strictly for his own purpose, for example if the results are used by a collective group of researchers or by his institution. Again, the application of this exception implies fair remuneration to be given. This remuneration must be calculated on the basis of the criterion of the harm caused to rightholders, which would need to be demonstrated in the context of TDM.

(4) A potential candidate, but rather unsuccessful, for serving as a limitation for TDM is the so-called “normal use of a database”. It provides that a lawful user can perform any reproductions of the database without additional authorization from the rightholder, if they are necessary for accessing the contents of a database and making a normal use of them.

(5) Finally, the right of the lawful user to extract and/or re-utilize without the authorization of the rightholder insubstantial parts from a database protected by sui generis right might also narrowly apply to TDM. According to this provision, extraction and/or re-utilization might be done for any purpose whatsoever. The notion of insubstantiality of a part must be evaluated through quantitative and qualitative criteria. The CJEU has clarified that this assessment must consider the investment in the creation of the database and the prejudice that the extraction or re-utilization cause to that investment. Put it bluntly, harming the investment implies the infringement of the sui generis database right.

Apparently, if TDM does not harm that investment, and as such it should not, Art. 8(1) of Directive 1996/9/EC might serve to avoid liability for extractions from a database for TDM purposes. In addition, the repeated and systematic extraction of insubstantial parts would still be lawful as long as it does not reconstitute the whole or substantial parts of the database, therefore damaging the investment of the rightholder. Apparently, researchers could extract repeatedly and systematically insubstantial parts of database for TDM purposes, if that extraction does not reconstitute the whole or substantial parts of the database or, more generally, harm the investment for constituting the database.

Research and database providers often contractually override exceptions and limitations. “Take it or leave it” contractual conditions make access conditional upon accepting providers’ terms, while obtaining specific permission from various publishers to carry out TDM research can be extremely complex. Contractual and technological override might also prevent TDM of materials not protected by IPRs. Actually, the CJEU has stated that if a database is not protected either by copyright or by the sui generis right, the author is not precluded for laying down any contractual limitations on its use by third parties, apparently including also those preventing TDM.