Databases are of course normally computerised collections of data, but the definition of ‘database’ in European intellectual property law is much wider and – as in the recent case discussed in this article – does encompass more general collections of works; here, of poems. This case considered whether consultation of such a database when compiling a work is an infringement of those rights.
The European Court of Justice was invited to advise on the thorny issue of what constitutes the copying of a database compiled, at some cost, by another person. The case of Directmedia Publishing GmbH v Albert-Ludwigs-Universität Freiburg[1] came before the ECJ after the question was referred by the Bundesgerichtshof (German Federal Court of Justice). The issue for the Court to determine concerned the protection for database makers contained in Article 7 of the Database Directive.[2]
The Directive defines a database as ‘a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means’. By Article 7.1, the maker of a database who makes, ‘qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents [can] prevent extraction and/or re-utilisation of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database’.
The Directmedia referral concerned what amounts to ‘extraction’. Extraction is defined in Article 7.2(a) as the ‘permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any form’.
The policy of the right is clear; it seeks to prevent the independent copying of the database at a fraction of the cost incurred by the database maker. A problem is equally clear; what exactly amounts to ‘copying’?
Facts
Professor Ulrich Knoop of Albrecht-Ludwigs-Universität Freiburg directed a project that led to the publication of the Freiburg Anthology. The anthology was based on a list of poems drawn up by Professor Knoop entitled ‘The 1,100 most important poems in German literature between 1730 and 1900’ (the Protected Database). The Protected Database arranged the poems according to the author, title, opening line, year of publication and the frequency with which the poem is cited in various anthologies. The 1,100 poems were selected from a selection of approximately 20,000 poems. The project took two and half years, at a cost of EUR 34,900, which was borne by the University.
In 2002, Directmedia Publishing GmbH marketed a CD-ROM entitled ‘1,000 Poems Everyone Should Have’. Of the 1,000 poems on the CD-ROM, 856 were listed in the Protected Database. Directmedia acknowledged that it had consulted the Protected Database when compiling the CD-ROM and claimed that it had critically examined each poem before including it on the CD-ROM.
The action
The University (as the ‘maker’ of the Protected Database) brought an action for injunctive relief and for damages against Directmedia.[3] The first instance court in Germany found in favour of the University. Directmedia lodged an appeal before the German Federal Court of Justice, which in turn referred a point of law (on the meaning of the word ‘extraction’) to the ECJ.
The sui generis right
The ECJ accepted that the Protected Database was protected by the sui generis right in light of the investment expended in the collection, verification and presentation of the contents of that list was ‘substantial’ within the meaning of Article 7.1 of the Directive (in this regard the Court noted the expenditure of EUR 34,900).
Readers will recall the restrictive approach taken by the ECJ in the English referral of British Horseracing Board Ltd and others v William Hill Organisation Ltd.[4] In that case, the Court held that the sui generis right did not protect databases when the only ‘substantial investment’ was in the creation of the data (rather than in the database) itself. To many commentators this made it virtually impossible for companies that rely on compiling the data for a database to obtain protection under the Directive. In fact, it seemed that the protection of Article 7 would be available only where the compilation was of pre-existing materials. The circumstances of Directmedia was one such instance.
Having determined that the list was protected, the ECJ had to consider whether there had been an ‘extraction’.
Interpretation of ‘extraction’
Directmedia argued that for there to be an infringement there had to be some sort of mechanical copying (whether electronic or not). There had to be a ‘copy and pasting’ of the actual contents of an instance of the original work. That had not happened here. What had happened here was that reference (consultation) was made to the Protected Database and, without any copying of the individual database entries (the poems themselves), a new database had been compiled. The crux of this dispute was whether this process was ‘extraction’.
The Court rejected Directmedia’s arguments as an ‘arbitrary’ limitation. It stated that it is immaterial whether the transfer is based on a technical (for example, electronic) process of copying or on a simple manual process. It determined that the purpose of Article 7 was to ‘guarantee a person who has taken initiative and [made] a substantial investment…a return on his investment by protecting him against the unauthorised appropriation of the results of that investment…at a fraction of the cost needed to design it independently’.
Following Directmedia’s restrictive approach would mean that the purpose of Article 7 would be undermined.
The Court also adopted a substantive, robust approach to the formatting of an extracted database, stating that it is immaterial that a database presents information extracted from a protected database in a different way from the protected database itself.
Instead, the Court stated that the decisive criterion is whether there is a ‘transfer’ of all or part of the contents of the database to another medium. It is clear that the transfer may take any form.
Applying critical assessment
Directmedia also argued that there was no extraction as it had applied its own critical assessment prior to including information from the Protected Database in its CD-ROM. The ECJ considered that critical assessment was a further consideration to take into account on whether there had been a transfer, but that fact alone does not preclude a finding that there has been an extraction. Such an interpretation, the Court stated, would obviate the protection from harm that the Directive was seeking to provide to database makers.
The Court continued by stating that certain purposes behind creating a database were irrelevant when determining whether there has been an ‘extraction’, including whether:
- the database is in competition with the original database;
- the database is the same or a different size from the original database; and
- the creation of the database was a commercial activity or not.
Further arguments by Directmedia
Directmedia further submitted that the creation of a database should not confer ownership of the information. Therefore, it was claimed that adopting too broad a definition of extraction would amount to:
- infringing rights of free access to information. ; and
- promoting the emergence of dominant positions by databases makers.
In rejecting the first point, the Court differentiated extraction from the right to consult a database. The database was not protected from mere consultation (although it was stated that the maker of a database can physically reserve access to the database as he sees fit). It is only where there is a transfer of the contents of the database that on-screen consultation of the nature of Directmedia’s would be protected by the sui generis right.
On the second point, the Court noted that Article 13 of the Directive provides that provisions of the Directive ‘are without prejudice to the application of Community or national competition rules’. In addition, Article 16(3) requires the European Commission to draw up periodic reports on the application of the Directive in order to verify whether the sui generis right has in fact led to abuses of a dominant position or other interference with free competition.
Direction
Having given the guidance, the ECJ invited the German Federal Court of Justice to determine whether the actions of Directmedia amounted to an extraction in respect of a ‘substantial part’ of the Protected Database, or to extractions of insubstantial parts which, by their repeated and systematic nature, would have unreasonably prejudiced the University.
Conclusion
This case shows that protection under Article 7 of the Directive, once obtained, is potentially very broad. In particular, the use of material from a protected database following on-screen consultation of that database (even with an individual assessment of the material contained in that database) is capable of constituting an extraction. The crucial question is whether, in substance, there is a transfer of a substantial part, evaluated qualitatively or quantitatively, of the contents of a protected database, or a transfer of insubstantial parts which, by their repeated or systematic nature, result in the reconstruction of a substantial part of those contents.
In other words, Directmedia could have not referred to the original Protected Database and created its work of 1,000 best poems by making its own assessment as to critical merits. Taking shortcuts by referring (to some extent) to the Protected Database is not permitted if that constitutes an ‘extraction’. The difficulty is determining what constitutes an ‘extraction’. Any compiler of this type of work would be foolish (commercially) not to consult other works in its field; indeed Professor Knoop did here – consulting 14 other leading anthologies. It must be the case that an independent assessment made in good faith by any other person should not result in exactly the same list. If it did then we lead to the possibility of the first person to do so having a monopoly over such lists as 1000 best German poems, the 10 best Hollywood films, the 10 best Shakespeare sonnets.
If there is only one way (sensibly) of compiling such lists then it would seem – to misuse an often misused copyright maxim – that an attempt was being made to protect an idea rather than an expression, which must be a step too far. This is perhaps unrealistic but, if there really is only one way to compile such a list, would escaping of the undesirable creation of monopoly involve finding that there was no database right in the first place as there was not a substantial investment in its creation?
Renzo Marchini is Counsel in the IP/IT team of the London office of Dechert LLP. Tim Browning is a trainee solicitor at Dechert LLP.
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[1] (Case C-304/07), 9 October 2008
[2] Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases
[3] Professor Knoop also had a claim (which was successful, even after an appeal) under German copyright law, which is not discussed in the ECJ judgement.
[4] (Case C-203/02), 9 November 2004
