LIA3033 DIGITAL COPYRIGHT LAW

TUTORIAL QUESTIONS I

WEEKS 3-5

 Read the case of Chuah Aik King v Keydonesoft Sdn Bhd [2018] MLJU 530 and
discuss the following-

Brief facts:

- In a case of Chuah Aik King (hereinafter referred to as the “Plaintiff”) filed a suit against
Keydonesoft Sdn. Bhd. (hereinafter referred to as the “Defendant”) at the High Court of
Malaya at Kuala Lumpur claiming that the he, the Plaintiff, owns the copyright in two
computer programmes, (1) “B3 Café Internet Café Billing Management with MyCard
Solution Software” programme (hereinafter referred to as the “B3 Programme”) and (2)
“Coin River Net Café Management System” (hereinafter referred to as the “Coin River
Programme”). The Plaintiff claims that the Defendant’s software, “Keybilling Management
System” (hereinafter referred to as “Keybiling Program”) has infringed the Plaintiff’s
copyright to B3 Programme and the Coin River Programme.

- The Plaintiff is the sole proprietor of “B Three Technology”. The Plaintiff provided evidence
that he has created the “MyCard Solution” software (hereinafter referred to as the “MyCard
Solution Programme”). However, the main engine to run the programme was created by ZYS,
a company based in China. The Plaintiff claims that he has “created” the MyCard Solution
Programme by advising and given his ideas and then commissioned ZYS to create the
aforementioned programme. To support his claim, the Plaintiff relies on a Copyright
Agreement between him and ZYS dated 13 January 2009. The Plaintiff further provided the
sources codes to the two programmes and the author to these source codes is one Mr. Feng
Jiang (hereinafter referred to as Mr. Feng) from ZYS, China. The Plaintiff also added that he
sold the B3 programme to many entities except the Defendant. The Plaintiff alleges that the
Defendant has infringed the two programmes and this has led to the raid of the Defendant’s
premises. The Plaintiff further claims that the infringement has resulted him to suffer a loss
amounting to RM1,100,00/approximately USD27, 6073.00

- The Defendant appointed ZYS to provide customised software to be used by cybercafé

operators. The Keybilling Programme was the software customized by ZYS and the copyright
to the programme vest in ZYS. It was further pointed out that there are differences between
the graphic user interface of B3 programme and the Keybiling programme. The Defendant
further testified that the Selangor State Government had required all cybercafé operators in
Selangor to install the B3 programme and that the Plaintiff was the sole distributor to the
software giving the Plaintiff the leverage to impose an exorbitant fee.

- The Court was of the view that the Plaintiff cannot claim copyright in any function of a
computer programme. Under Section 7(2A) of the Copyrights Act, a function of a computer
programme constitutes as an idea and therefore is not entitled to copyright protection. The
Plaintiff therefore cannot rely on the functions of the two programmes to support his suit
against the Defendant. It is the legal burden of the Plaintiff to adduce oral and documentary
evidence to prove that copyright subsists in the two programmes and that they belonged to
him. However, the Court is of the view that the Plaintiff has failed to do so on several
grounds. The Plaintiff has testified that the author to the source codes of both programmes
was Mr. Feng.

- The Plaintiff has not provided any evidence regarding his qualification, training, experience
or achievements in the creation and development of a software. The Court further ruled that
the Plaintiff has caused an adverse interference for not calling Mr. Feng to testify in this suit
and that the Plaintiff is not a credible witness. According to Section 37(1) of the Copyrights

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TUTORIAL QUESTIONS I

Act, only an owner of a copyright may file a suit for copyright infringement. For the reasons
elaborated above, the Court has found that the Plaintiff has failed to discharge the legal and
evidential burden to prove that copyright subsists in the two programmes and that he is the
owner of the copyright.
-
- Thus, the Court ruled that the Plaintiff has no right to institute this suit for copyright
infringement and dismissed the suit with cost.

a. How does the idea/expression dichotomy operate in the context of computer

programs?
The definition of a “computer program” in s 3 CA refers to an “expression, in any language,
code or notation, of a set of instructions (whether with or without related information)
intended to cause a device having an information processing capability to perform a
particular function”. It is the “expression, in any language, code or notation, of a set of
instructions” in a computer program (not its function) which attracts copyright protection.

It was decided in Petraware Solutions, at paragraphs 5 and 12, as follows: “[5] By this
definition [s 3 CA], the core elements will be the source code (the technical outwardly
readable programme of instructions in computer language) and the object code (the
converted and machine-readable set of instructions), which in combination generates the
software for use by the end-user. …
- Soft code is a code that is readable by the computer.
- You have no monopolized over the function of the computer software.
- Expression of instrcution – could be in a form of command but could be some of it is
protected.
- Not all commands will be protected

b. Is graphic user interface protectable as part of a computer program?

No. Because [para 19, (2)] - documents evidencing computer screen images and graphic user
interface (from the use of a computer program) may constitute “graphic work” [please see
the definition of “graphic work” in s 3(a) CA which includes a “diagram”] which falls within
the definition of “artistic work” in s 3(a) CA - please see Petraware Solutions, at paragraphs
8, 10 and 26. An artistic work is eligible for copyright under 7(1)(c) CA.

- Computer programmed is – literary work

- Where are the similarity between the code made by the pf and the defendant? - this
is what the pf has failed to prove
- Need to identify what is the actual complain, regards to which aspect
- The pf claim it under wrong definition
-

c. How was the question on copyright subsistence in the disputed two computer
programs decided in this case? To what extent do you agree/disagree with the
approach adopted in addressing the said question?

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Conditions:
 Can it be entitled to copyright? (s7, 8, 9)
 Qualification (s10) - need to fulfill at least one
o But in this case its Burne Convention so it should be entitled but in this case
they did not bring this matter up.
 Novelty (originality) - S7(3)(a) sufficient effort
 Reduce to material form - s7(3)
- Pf did not present the true copies of the computer software hence the court rejected
it.
- Dr Sik opinion “counsel fault” cause did not bring it up.

d. What do you think about the determination of the copyright ownership in the said
two computer programs in this case?
- There were 2 assignement agreements that the court are in doubt why there are 2
diff agreements. The court did not believe that this is the real agreement.
- This is question of evidence.

e. Discuss the elements to be considered in deciding copyright infringement and how

do they apply in the context of computer programs? (correct dy)

Infringements

[36](1) Copyright is infringed by any person who does, or causes any other person to do,
without the licence of the owner of the copyright, an act the doing of which is controlled
by copyright under this Act.” (emphasis added).

[44]Section 36(1) CA has two limbs - please see Motordata Research Consortium Sdn
Bhd v Ahmad Shahril bin Abdullah & Ors [2017] 7 AMR 560, at paragraphs 49 and 50.

The two limbs of s 36(1) CA are -

(1) when a person (X) does an act which is controlled by copyright under CA (1 st Limb);
and

(2) when a person causes X to do an act which is controlled by copyright under CA (2 nd

Limb).

[45]Sub-paragraph 1(b) in Annexure A of the Plaintiff’s FBP alleges that the Defendant
has copied the 2 Computer Programs in their entirety. Sub- paragraphs 3(b) and (c) in
Annexure A of the Plaintiff’s FBP further aver that the Defendant has copied the source
codes of, among others, certain modules in MyCard Solution. This Suit therefore
concerns only the 1st Limb (not the 2nd Limb), namely whether the Defendant has done
an act which is controlled by the Plaintiff’s copyright under CA.

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This concerns the issue of whether the Keybilling Program is a “reproduction” (as
defined in s 3 CA) in a “material form” (please see its definition in s 3 CA) of - (1) the 2
Programs in their entirety; or (2) a substantial part of the 2 Programs within the meaning
of s 13(1) read with the 1st Limb

Regarding the 1st limb the court here refers to the case of Syarikat Faiza Sdn Bhd & Anor
v Faiz Rice Sdn Bhd & Anor [2017] 1 LNS 1648, where it states the 3 elements of
copyright infringement under the 1st Limb.

1st element: a plaintiff has to prove sufficient objective similarity between - (a) the
plaintiff’s copyright work or a substantial part of the copyright work, and (b) the alleged
infringing work (Impugned Work) [1 st Element (1st Limb)].

How to prove 1st element : look at para 48 - can only be decided by the court with the
assistance of evidence from an expert on computer programs under s 45(1) EA.

2nd element: the plaintiff must prove that there is a causal connection between the
copyright work and Impugned Work, namely, the Impugned Work is proven to have
been copied from the copyright work, whether directly or indirectly [2 nd Element (1st
Limb)]

How to prove: [51] Based on Elster Metering and Megnaway Enterprise, the second
element of 1st Limb is fulfilled when the Plaintiff proves a causal connection between
the 2 Programs and the Keybilling Program, namely, the Plaintiff must prove that the
latter has been copied from the former, whether directly or indirectly (2 nd Element).

3rd element: what has been copied in the Impugned Work must constitute a substantial
part of the original work [3rd Element (1st Limb)]

How to prove: [52]The third element of 1st Limb, according to Elster Metering and
Megnaway Enterprise, is that the Plaintiff must satisfy the Court that what has been
copied in Keybilling Program, constitutes the whole or a substantial part of the 2
Programs (3 rd Element). In this case, sub- paragraph 1(b) in Annexure A of the Plaintiff’s
FBP alleges that the Defendant has copied the 2 Computer Programs in their entirety.
Once again, the court can only decide the 3rd Element based on expert evidence. The
Plaintiff’s failure to call an expert on computer programs to testify regarding the 3rd
Element, is fatal to This Suit.

 Read the case of Pelham GmbH, Moses Pelham and Martin Haas v Ralf Hütter and
Florian Schneider-Esleben Case C-476/17 (CJEU 29 July 2019) and discuss the
following- https://curia.europa.eu/juris/document/document.jsf?
text=&docid=216552&pageIndex=0&doclang=EN

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a. Briefly explain ‘sampling’.

Para 35 - the technique of ‘sampling’, which consists in a user taking a sample from a
phonogram, most often by means of electronic equipment, and using the sample for the
purposes of creating a new work, constitutes a form of artistic expression which is covered
by freedom of the arts, as protected in Article 13 of the Charter.

b. Was the use of a sound sample held to be a reproduction of the relevant

phonogram? Was sampling held to be necessarily infringing?

- Para 25-26
- 30

- Para 39 - In the light of the foregoing considerations, the answer to the first and
sixth questions is that Article 2(c) of Directive 2001/29 must, in the light of the
Charter, be interpreted as meaning that the phonogram producer’s exclusive right
under that provision to reproduce and distribute his or her phonogram allows him or
her to prevent another person from taking a sound sample, even if very short, of his
or her phonogram for the purposes of including that sample in another phonogram,
unless that sample is included in the phonogram in a modified form unrecognisable
to the ear.

c. According to the court, was a phonogram containing sound samples from other
phonogram a ‘copy’ of that phonogram?

Article 9(1)(b) of Directive 2006/115 must be interpreted as meaning that a phonogram

which contains sound samples transferred from another phonogram does not constitute a
‘copy’, within the meaning of that provision, of that phonogram, since it does not reproduce
all or a substantial part of that phonogram.

Under Article 9(1)(b) of Directive 2006/115, Member States are to provide phonogram
producers with the exclusive right to make available to the public, by sale or otherwise, their
phonograms, including copies thereof.

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 There is no provision in EU directive on these issues. Hence, they refer to the Geneva
Convention.
 Hence can get info's etc from the international treaties

d. Explain the applicability of the exception of making quotations to music sampling

as discussed in this case.

- Can apply to music sampling only on certain circumstances

- If not recognisable then not fulfil the requirement of the music sampling
- Para 62-64
- If u quote smtg then need to elaborate more on the quote – as in do the
explanations on why u quote it.

ACTIVITY

Work in 3 groups. Assume the government is considering making amendments on our

Copyright Act 1987 to deal with out-of-print books published before 2000, namely,
which are no longer commercially distributed by publishers and not currently published
in print or digital form. The proposed law would allow commercial exploitation of these
books in digital form by a collective management organization to be appointed by the
Ministry. The collective management organization shall first develop and maintain a
database of out-of-print books, freely accessible by the public on the internet. Any
person or body may apply to the collective management organization to digital exploit
any book which has been entered into the database for more than 6 months. The
collective management organization may grant a non-exclusive license to the applicant
for remuneration. The author or publisher of the book may however object to the digital
exploitation of the book.

Group 1 representing the authors/publishers, and Group 2 representing the public, are
required to present their concerns with respect to the proposed law and to explain the
arguments for their stand on the matter. Group 3 representing the government shall
make the final decision supported with sound reasons.

 Read the case of Wright v BTC Core [2023] EWHC 222 (Ch); 2023 WL 01800960 and
discuss the following-

a. Why is the ‘fixation’ requirement (and the not very different EU requirement of
sufficient identifiability) important for copyright protection?

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b. Summarize the discussion of the following case law relating to copyrightability of file
formats:

i. SAS cases
ii. Technomed Ltd v Bluecrest Health Screening Ltd [2017] EWHC 2142
iii. Software Solutions Ltd v 365 Health and Wellbeing Ltd [2021] EWHC 237

c. How was the ‘fixation’ requirement in respect of the Bitcoin file format decided in
this case?

 Read Stichting Brein v Wullems (t/a Filmspeler) (C-527/15) [2017] ECDR 14 and
discuss the following-

Elements of comm right in Art 3(1) – para 29

“Act of communication” of the work

 Must be made available to a public in such a way that the persons forming that public
may access it, irrespective of whether they avail themselves of that opportunity
 Factors to consider in whether there was an act of communication
 Para 31 – role of the user: The user makes an act of communication when he
intervenes, in full knowledge of the consequences of his action, to give access to a
protected work to his customers and does so, in particular, where, in the absence of
that intervention, his customers would not, in principle, be able to enjoy the broadcast
work << highly-emphasised by the court
 Work is communication to a “public”
o ‘public’ refers to an indeterminate number of potential viewers and implies,
moreover, a fairly large number of people
o Work must be communicated to a “new public”; not those considered in initial
communication by CR owners
o The communication’s profit-making nature is not irrelevant/is relevant

Issue Notes

a. Briefly explain the Para 15 to 17 –

‘filmspeler’ player - a device which acts as a medium between, on the one
sold by Wullems in hand, a source of visual and/or sound data and, on the
this case. other hand, a television screen
- installed an open source software on that player,
which makes it possible to play files through a user-
friendly interface
- Integrated into the software unaltered, third-party
add-ons from the internet. some of the add-ons
specifically link to websites on which protected
works are made available to internet users without the
consent of the copyright holders

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- The add-ons then connect users to 3rd-party

streaming websites that allow access to CR works,
both w and w/o consent of the CR owners — function
is to retrieve the desired content from streaming
websites and make it start playing, with a simple
click, on the multimedia player sold by Mr Wullems
connected to a television screen.

b. Was the ‘filmspeler’ It is true, as recital 27 of Directive 2001/29 states, that the
a mere physical mere provision of physical facilities for enabling or making a
facility or a kind of communication does not in itself amount to ‘communication’
communication to within the meaning of that directive.
the public of - Example of physical facilities; unaltered tv sets
copyright works?

No sbb (para 41) Mr Wullems installed add-ons to the

filmspeler that allows access to otherwise inaccessible CR
works.

c. How was the ‘new Para 46 – Svensson case held that new public is “ a public
public’ requirement which was not taken into account by the copyright holders
addressed by the when they authorised the initial communication”
court in this case?

Para 48 and 49 – CR owners consenting to publication of

works on the internet means that the public refers to all
internet users; and posting hyperlinks to such works is not
communicating to a new public. Inversely, if there was no
consent to the work’s publication, there was no comm to the
public or if the link allows circumvention of the works’
digital protections which limit access to a certain group of
people (subscribers etc)

d. Briefly explain the Para 60 — Exception only applies when 1) the act is
exception in article temporary; 2) it is transient or incidental; 3) it is an integral
5(1) of Directive and essential part of a technological process; 4) the sole
2001/29. purpose of that process is to enable a transmission in a
network between third parties by an intermediary or a lawful
use of a work or protected subject matter; and 5) that act does
not have any independent economic significance.
- Temporary ?
- Transient or incidental ?

Para 61 — elements are cumulative so all must be fulfilled

Para 63 — is subj to art 5(5); to be applied only in certain

special cases which 1) do not conflict with a normal

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exploitation of the work or other subject matter and 2) do not

unreasonably prejudice the legitimate interests of the right
holder

Para 65 — “lawful use”: recital 33 of Directive 2001/29 —

where it is authorised by the right holder or where it is not
restricted by the applicable legislation

e. Was the exception in Transmission: Para 64 — one-liner on how the player was
art 5(1) of Directive not intended to transmit
2001/29 applicable to
the conduct of
‘filmspeler’ users? Lawful use: Para 65 and 66 — no as there was no consent of
the CR owners

No independent economic significance: Got economic

significansbb the player was sold at a price and deemed to be
profit-making

Conclusion: no

f. Assume art 5(1) is No sebab para 70 — It must also be held that, as a rule,
applicable, did the temporary acts of reproduction, on a multimedia player such
‘filmspeler’ player as that at issue in the main proceedings, of copyright-
fulfil the conditions protected works obtained from streaming websites belonging
laid down in art 5(5)? to third parties offering those works without the consent of
the copyright holders are such as to adversely affect the
normal exploitation of those works and causes unreasonable
prejudice to the legitimate interests of the right holder,

 Read The Football Association Premier League Ltd & Anor v Bar Theory Sdn Bhd &
Ors [2022] MLJU 2950 and discuss the following-

a. Discuss the main “Whether the acts of showing, playing, screening, streaming to
issue arising in this the public and/or communicating to the public in a business
case with premises or otherwise, copyrighted works of the whole, or a
reference to the substantial part thereof and/or causing the aforementioned,
facts. without the consent of the copyright owners, is an act of
copyright infringement pursuant to Section 36 of the Copyright
Act, 1987?”
b. Summarize the [13]Section 13 of the Act prescribes the Plaintiffs’ exclusive

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case law on the rights of control of the Copyrighted Works in Malaysia. Here,
right of the Plaintiffs contend that, the Defendants have infringed that
communication to exclusive control under limbs (aa) and (b) of subsection (1) to
the public as s. 13, namely: “(aa) the communication to the public; (b) the
referred to by the performance, showing or playing to the public of the whole
court in this case. work or a substantial part thereof, either in its original or
derivative form..

- whether the showing by the Defendants of the

Copyrighted Works on a set-top box set up in their
restaurant bar on those dates was a communication to
the public and/or the performance, showing or playing
to the public.

Section 3 of the Act provides that “communication to the

public” means: “the transmission of a work or performance
through wire or wireless means to the public, including the
making available of a work or performance to the public in
such a way that members of the public may access the work or
performance from a place and at a time individually chosen by
them1 ’

Article 3(1) of EC Directive 2001/29 which requires member

states to: “provide authors with the exclusive right to authorize
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”

The EC Court of Justice in the case of Socidedad General de

Autores y Editores de espana (SGAE) v Rafael Hoteles SA
held that, while merely providing physical facilities like
television sets etc. does not of itself constitute a
communication to the public within the meaning of that
Directive, if by means of those facilities the hotel distributes
the signal to its guests staying in its rooms, then
communication to the public takes place, irrespective of the
technique used to transmit the signal. In other words, it is the
transmission that counts.

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- Refer to the EC Court of Justice held under para 21

c. Explain whether The court held that the defendants’ acts of showing, playing,
the defendants’ screening, streaming the Copyrighted Works on a set-top box
conduct of set up in the establishment to its patrons was a communication
showing, playing, to the public under s. 13(1)(aa) of the Act. Performance,
screening, and showing or playing to the public
streaming the
copyright works
via Astro box to its
Reasons for the court decision:
patrons
constituted a
- the Defendants had communicated the Copyrighted
communication to
Works to the public and had performed, showed and
the public. Your played the Copyrighted Works for the public without
explanation shall the Plaintiffs’ license and consent, then the irresistible
be supported with conclusion is that they had infringed the Plaintiffs’
the cited copyright of the Copyrighted Works.
authorities. -

 Read Nederlands Uitgeversverbond and another v Tom Kabinet Internet BV and

others (Case C-263/18) and discuss the following-

a. Briefly explain the services made available on the defendant’s website.

 Tom Kabinet operates a website that has the online service consisting virtual
market for 2nd hand ebooks
 COA of the Amsterdam upheld the decision of the District Court of Amsterdam
that there is no prima facie breach of copyright but they prohibited Tom
Kabinet from offering online service that allowed the sale of unlawfully
downloaded ebooks.
 Then they upgraded the services to “the reading club” - TK is an ebook trader
whereby they offer their members ‘second-hand’ ebooks which have either
been purchased by TK or donated to TK for free of charge by the members of
the club. Those members that donated the books need to provide the
download link for the books and declare that they have not kept the copy of
the book.

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 After that TK will reupload the ebook from the retailer’s website and put their
own digital watermarks as a confirmation that they legally acquired the copy.
 There is also membership payment for the reading club which is based on
monthly subscription and if the member provided free of charge e-book the
member will be entitled for a discount on the following month’s subscription.

 So basically services made by the df’s (TK) is virtual market for 2nd hand
books. Later on they expand it to whereby the members of the reading club
can purchase the ebooks and also resell it back to the TK.

b. Discuss whether the right of distribution was applicable to e-books and

explain the implications if it was.

Whether the right of distribution was applicable to e-books.

 Short answer: the right of distribution was not applicable to e-books.

Reason 1: Interpretation of the EU provision + WIPO Copyright Treaty (WCT)

 [38] According to settled case-law, the interpretation of a provision of EU laws
requires that account to be taken not only of its wording, but also of its
context, the objectives pursued by the rules of which it is part and, where
appropriate, its origins. Moreover, it must so far as possible be interpreted in
a manner that is consistent with international law, in particular where its
provisions are intended specifically to give effect to an international
agreement concluded by the EU.
 Hence, when we want to discuss the distribution right, we will need to refer to
both Art 4 of the Directive and also Art 6(1) of the WIPO Copyright Treaty
(WCT).
 ‘Distribution right’ according to Art 4 of Directive 2001/29:
 (1) Member States shall provide for authors, in respect of the original
of their works or of copies thereof, the exclusive right to authorise or
prohibit any form of distribution to the public by sale or otherwise.
 (2) The distribution right shall not be exhausted within the Community
in respect of the original or copies of the work, except where the first
sale or other transfer of ownership in the Community of that object is
made by the right holder or with his consent.'
 ‘Right of distribution’ according to Art 6 of the WCT, provides in para 1:
'Authors of literary and artistic works shall enjoy the exclusive right of
authorising the making available to the public of the original and copies of
their works through sale or other transfer of ownership.'
 [40] from the wording of the Agreed Statements concerning Art 6 and 7 of the
WCT: the expressions ‘copies’ and ‘original and copies’ being subject to
the right of distribution and the right of rental under the said Articles, refer
exclusively to fixed copies that can be put into circulation as tangible
objects. Hence, Art 6(1) cannot cover the distribution of intangible works
such as e-books.
 Result of reading together: Original works and copies under Art 4(1) of the
Directive will then only refer to physical copies, and hence does not cover e-
books.
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Reason 2: It should be covered under the right of communication to the public

 [43] the Commission noted that interactive on-demand transmission was a
new form of exploitation of intellectual property, in relation to which the
Member States were of the view that it should be covered by the right to
control communication to the public, while stating that it was generally
accepted that the distribution right, which applies exclusively to the distribution
of physical copies, does not cover such transmission.
 [44] In short, communication to the public will cover any communication other
than the distribution of physical copies, as it can be put into circulation as
tangible objects are covered by the distribution right.
 Conclusion: it will not be appropriate to include e-books under the distribution
right as it is intended to be covered under the right of communication to the
public. By covering e-books under the distribution right, it will cause
redundancy in both rights. Also, it will not serve the purpose to have this right
of communication to the public as to adapt and supplement the current law on
copyright and related rights in order to respond to technological development,
which has created new ways of exploiting protected works (para 47).

Reason 3: Reading provisions of the EU Directive together

 [52] As interpreted by the Court in relation to exhaustion of that right, the
Court having ruled that the EU legislature, by using the terms 'tangible article'
and 'that object' in recital 28 of that directive, wished to give authors control
over the initial marketing in the European Union of each tangible object
incorporating their intellectual creation.
 Conclusion: the phrases used do actually show that it is to refer to tangible
objects, hence it will not cover e-books which is an intangible object.

Implications if the right of distribution was applicable to e-books

 Implication: no one can distribute the e-books without authorisation or
permission from the copyright owner. However, it is subject to the application
of the ‘first sale doctrine’ as provided under Art 4(2) of the Directive.
 Then we will need to discuss the issue as to whether the first sale doctrine will
be applicable to digital copies.
 First sale doctrine: Distribution right will be exhausted in respect of the original
or copies of the work = copyright owner will not have the right to control the
distribution of the copies after it was produced under his authorisation. E.g.
you can resell the books you bought to any person without the consent of the
copyright owner.
 In determining whether this first sale doctrine should be applicable to digital
copies, we will look at the nature of the copies itself.
 [58] The supply of a book on a material medium and the supply of an e-book
cannot be considered equivalent from an economic and functional point of
view. E-books do not deteriorate with use, and used copies are therefore
perfect substitutes for new copies. Also, exchanging such copies requires
neither additional effort nor additional cost, so that a parallel second-hand
market would be likely to affect the interests of the copyright holders in
obtaining appropriate reward for their works much more than the market for

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second-hand tangible objects, contrary to the objective referred to in

paragraph 48 of the present judgement (to establish a higher level of
protection of authors, allowing them to obtain an appropriate reward for the
use of their works). Hence, the first sale doctrine should not be applicable in
order to protect the right and benefit that can be enjoyed by the copyright
owner.
 Conclusion: if the right of distribution was applied to e-books, it will not be
exhausted due to the first sale doctrine.

c. How did the court distinguish the supply of computer programs from the
supply of e-books? Why was the distinction made?
 In Article 4(2) of the European Union Computer Programs Directive, it did not
specify that the principle of exhaustion is limited to the copies of material
computer programs on material medium but it can be tangible or intangible
form as stated in the case of UsedSoft
 However, an ebook is not a computer program and therefore the provision
shall not be applicable to ebooks.
 The court also referred to the UsedSoft case to point out that from the
economic point of view, the sale of computer programs on a material medium
or by downloading as software from the internet are similar as they are both
functionally equal. Furthermore, the fact that Article 4(2) did not specify the
method of transmission shows that both manners should be treated equally.
 However, the supply of a printed book in material medium and an ebook
cannot be considered to be similar economically or functionally.
Dematerialised digital copies i.e. the ebooks do not deteriorate over time with
use and therefore used copies are perfect substitute for new books (it cannot
even be considered to be secondhand given its condition) and exchanging
such copies does not require additional effort or cost
 Therefore, a parallel second hand market for ebooks is likely to affect the
interests of the copyright holders in obtaining appropriate reward for their
works compared to a second market for physical copies of the books.
 It can be argued that the ebook is a combination of both a protected literary
work and a computer program, but such a program is only incidental as the
ebooks are protected for their content and the program only functions to
enable it to be read and therefore cannot result in the application of the said
provision.

d. Was the supply of e-books an instance of communication to the public and

why so? How was the ‘public’ requirement addressed by the court in deciding
this issue?
 The ECJ ruled that the supply to the public by the downloading, for permanent
use, of an e-book was covered by the concept of communication to the public
within the meaning of the Directive, specifically by the concept of the making
available to the public of authors’ works in such a way that members of the
public might access them from a place and at a time individually chosen by
them under Article 3(1).
 The concept of communication to the public should be understood in a broad
sense. The concept involves two cumulative criteria: an act of communication
of a work; and the communication of the work to a public.

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 The critical act was the making available of the work to the public by the
offering of a work on a publicly accessible site, which preceded the stage of
its actual on-demand transmission: it was irrelevant whether any person
actually retrieved it or not.
 Therefore, the making available of the works concerned to anyone who was
registered with the reading club’s website must be considered a
communication of a work, irrespective of whether the person concerned
availed themselves of the opportunity by retrieving the e-book from the
website.
 Account should be taken not only of the number of persons able to access the
work at the same time, but also of how many of them might access it in
succession. Here, the number of persons who might have access, at the
same time or in succession, to the same work via the reading club’s platform
was substantial. Consequently, the work was being communicated to the
public.
 Finally, to be categorised as a communication to the public, a protected
work must be communicated using specific technical means, different from
those previously used or, failing that, to a new public, that is, to a public that
was not already taken into account by the rights holders when they authorised
the initial communication of their work to the public. Here, as the making
available of an e-book was generally accompanied by a user licence
authorising the user who had downloaded the e-book only to read that e-book
from their own equipment, the communication was made to a public that was
not already taken into account by the rights holders and, therefore, to a new
public.
 BASICALLY, court ruled Tom Kabinet’s offer was directed to a public within
this definition (Article 3(1)), since any interested person could enrol in the
reading club, and no technical measure ensured that e-books were
downloaded only by one user at a time or that users lost access to the copies
once they sold them back to the platform. The fact that e-book licence
agreements tend to exclude the possibility of resale was also considered
enough to qualify Tom Kabinet’s members as a new public not envisioned by
rightholders on the occasion of the first commercialization of their works.
 The effect of this decision is that the exhaustion principle does not apply to
the supply of e-books by downloading online for permanent use.
 Therefore, rights holders can, in principle, stop the reselling of their e-books
that have been supplied in this way.
 The decision demonstrates the court’s willingness to adapt and supplement
the law on copyright and related rights in response to technological
developments which have created new ways of exploiting protected works,
and to ensure that rights holders obtain an appropriate reward for the use of
their works.

e. Why did the court rule that the right of reproduction also denied the
application of the rule of exhaustion of the distribution right in this case?
 The ECJ had to consider whether the online resale of lawfully-acquired e-
books amounted to an infringement of the copyright holder's distribution and
reproduction rights.

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 The ECJ held that the distribution right of a copyright holder is exhausted
when the first sale of a copy of a work is made within the European Union.
However, in the case of digital works, such as e-books, the Court ruled that
the right of reproduction is not exhausted by the first sale of a copy.
 This means that an individual who legally acquires an e-book cannot resell it
online without the permission of the copyright holder. Unlike physical books,
which can be resold without infringing the copyright holder's reproduction
right, e-books are subject to the exclusive right of reproduction, and their
resale requires the authorization of the copyright holder.
 The ECJ held that the digital exhaustion of the distribution right would
undermine the objective of copyright law, which is to ensure that authors are
rewarded for their creative effort. Allowing the resale of e-books without the
authorization of the copyright holder would reduce the incentives for authors
and publishers to invest in the creation and dissemination of literary works in
digital form.
 In summary, the Court ruled that the right of reproduction is not exhausted by
the first sale of an e-book, and therefore, the rule of exhaustion of the
distribution right does not apply to the online resale of e-books.

f. Summarize the deliberations expressed in the AG’s opinion for this case
relating to balance of interests.
a) It state that the provisions of Directive 2009/24 has made it clear that the
intention of the EU legislature to assimilate, for the purposes of the
protection laid down by that directive, tangible and intangible copies of
computer programs, so that the exhaustion of the distribution right
under Article 4(2) of Directive 2009/24 concerns all such copies. The
court also refer to the European Commision to made a clear distinction
bwteen the electronic and tangible distribution of protected material
where the commission noted that the interactive on-demand was a new
form of exploitation of IP which need to be covered by the right to
control communication to the public
 which then the expression ‘communication to the public’ of a work covers
acts of interactive on-demand transmission, thereby confirming that the
right of communication to the public is also pertinent when several
unrelated persons, who are members of the public, may have individual
access, from different places and at different times, to a work which is on a
publicly accessible website, while making clear that that right covers any
communication ‘other than the distribution of physical copies’, since
physical copies which can be put into circulation as tangible objects are
covered by the distribution right.
 thus follows from that explanatory memorandum that the intention
underlying the proposal for the directive was that any communication to
the public of a work, other than the distribution of physical copies of the
work, should be covered not by the concept of ‘distribution to the public
b) From economic POV - The supply of a book on a material medium and the
supply of an e-book cannot, however, be considered equivalent from an
economic and functional point of view.
 dematerialised digital copies, unlike books on a material medium, do not
deteriorate with use, and used copies are therefore perfect substitutes for

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new copies. In addition,exchanging such copies requires neither additional

effort nor additional cost, so that a parallel second-hand market would be
likely to affect the interests of the copyright holders in obtaining
appropriate reward for their works much more than the market for second-
hand tangible objects
 Even if the ebook comprises both a protected work and a computer
program eligible for protection under Directive 2009/24, it would have to be
concluded that such a program is only incidental in relation to the work
contained in such a book.
i. An e-book is protected because of its content,which must
therefore be considered to be the essential element of it, and the
fact that a computer program may form part of an e-book so as
to enable it to be read cannot therefore result in the application
of those specific provisions.
ii. In this case the supply of the ebook does not satisfy the
condition set by the Court for classifications as a communication
to the public - there is no no communication of the actual
content of the protected work in the offer of sale of the e-book
on the reading club platform, there can be no question of an act
of communication. Moreover, there would be no public, the e-
book being made available only to a single member of the
reading club.
iii. the Court has held that, in order to be classified as an act of
making available to the public, an act must meet,cumulatively,
both conditions set out in the provision, namely that members of
the public may access the protected work from a place and at a
time individually chosen by them irrespective of whether the
persons comprising that public avail themselves of that
opportunity

 In order to be categorized as a ‘communication to the public’ within the

meaning of that provision, the protected works must in fact be
communicated to the public
 first, that the concept of ‘public involves a certain de minimis threshold,
which excludes from that concept a group of persons concerned that is
too small, and, second, that in order to determine that number, the
cumulative effect of making a protected work available, by
downloading, to potential recipients should be taken into consideration.
Account should therefore be taken, in particular, of the number of
persons able to access the work at the same time, but also of how
many of them may access it in succession
 that any interested person can become a member of the reading club,
and to the fact that there is no technical measure on that club’s
platform 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 must be concluded that the number of
persons who may have access, at the same time or in succession, to
the same work via that platform is substantial. Consequently, subject to

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verification by the referring court taking into account all the relevant
information, the work in question must be regarded as being
communicated to a public, within the meaning of Article 3(1) of
Directive 2001/29.

 in order to be categorised as a communication to the public, a protected

work must be communicated using specific technical means, different
from those previously used or,failing that, to a new public, that is to say,
to a public that was not already taken into account by the copyright
holders when they authorized the initial communication of their work to
the public
 the making available of an e-book is, as NUV and GAU have
noted,generally accompanied by a user licence authorising the user
who has downloaded the e-book concerned only to read that ebook
from his or her own equipment, it must be held that a communication
such as that effected by Tom Kabinet is made to a public that was not
already taken into account by the copyright holders and, therefore, to a
new public within the meaning of the case-law cited in the preceding
paragraph of the present judgment.

 * the court answer the first question whether the supply by downloading,
forpermanent use, of an e-book is covered by the concept of ‘communication
to the public’ within themeaning of Article 3(1) of Directive 2001/29, or by that
of ‘distribution to the public’, as referred to inArticle 4(1) of that directive.

 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.

BY SIK CP