Swiss Supreme Court: document delivery service for scientific articles

This decision of the Swiss Federal Supreme Court is not the most recent, but may be interesting in connection with the discussion on private copying exception in the UK.

Switzerland knows a fairly substantial private copying exception. Art. 19 Copyright Act namely excepts the following uses from the exclusive rights of the copyright owner:

(1) Published works may be used for private use. Private use means:a. any personal use of a work or use within a circle of persons closely connected to each other, such as relatives or friends; b. [...] c.  the copying of a work in enterprises, public administrations, institutions, commissions and similar bodies for internal information or documentation.

(2) Persons entitled to make copies of a work for private use may also have them made by third parties subject to paragraph 3; [...].

(3) The following are not permitted outside the private sphere defined in paragraph 1 letter a: a. the complete or substantial copying of a work obtainable commercially; [...]

Based on art. 19(a) and (c), the Federal Institute of Technology in Zurich (ETH) offers a document delivery service for scientific articles. For small fee (approx. EUR 12 for private individuals and EUR 18 for commercial entities), it scans an individual article from any volume in its collection and sends the PDF per email to the requester (sorry, not available outside of Switzerland and Austria). In 2011, about 40,000 copies were made and sent to requesters. Unsurprisingly, the large scientific publishers Elsevier, Springer and Thieme did not like this, and they brought suit against ETH before the Commercial Court of Zurich. 

The Commercial Court found that the copying as such was permissible, but not the sending by email. On appeal, the Federal Supreme Court came to a different conclusion. It held that since the ETH was a third party in the sense of art. 19(2) Copyright Act, the restrictions of art. 19(3)(a) applied in any case where a third party made the copies, even for private use in the “inner circle” according to art. 19(1)(a). The key question was therefore whether ETH was copying “a [complete] work obtainable commercially”. The publishers argued that the individual articles were available for download from their electronic archives, and hence the individual article was “commercially obtainable”, and ETH copied the complete work.

The Supreme Court disagreed. It gave a number of reasons for its conclusion that it was the printed volume containing the individual article which was the “work obtainable commercially”. The two most important reasons given were that for the person copying from the printed volume, it was not evident whether the individual articles were available online, and it was hence not possible to ascertain whether there was a right to make the copy. Even more importantly, and probably carrying the day for ETH, was the insight that if making individual articles available online was sufficient to pre-empt the private copying exception for individual scientific articles, it was largely in the hands of the publishers whether this right had any meaningful application in the 21st century. This, said the Supreme Court, was against the balance struck between the interests of the copyright owners and the users.

Finally, sending the legally made copy by email to the end-user was encompassed in the exception. “Making a copy” included the right to grant access to the copy, including by email (this is different under European law, see Consideration (40) of the Copyright Directive 2001/29, and OLG Munich of 10 May 2007 on the harmonised German law, which only permits the analogue – postal or fascimile – delivery of individual scientific articles).

The Supreme Court also held that the exception permitting copying individual scientific articles from printed volumes and sending the scans by email passed the three-step balancing test according to art. 9(2) Revised Berne Convention. The publishers had not shown that they lost any revenue, and were compensated by a private copying levy (which amounts, for ETH, apparently to about EUR 12,000/year – substantially less than the revenues generated from the delivery service. Lest you want to cry for the publishers, ETH spends about EUR 9 million per year on subscriptions to scientific publications).

This Kat observes that the decision will leave all parties dissatisfied: ETH is forced to make copies from printed volumes, although it is also subscribed to the electronic databases containing these articles. This is highly inefficient (although probably creating some jobs for cash-strapped students). The publishers, on the other hand, failed to stop the document delivery service. Copyright continues to struggle with the realities of the 21st century (yes, says Merpel, and that’s part of the reason why open access is the future of scientific publishing).