The Court of Justice of the European Union has delivered its judgment in the highly anticipated database case of Football Dataco Ltd and others v Yahoo! UK Limited (Case C-604/10), on a reference from the English Court of Appeal which was made in December 2010.
Background
Football Dataco is the football fixture licensing arm of the English and Scottish Premier and Football Leagues. Dataco generates revenue by licensing the fixture lists to commercial entities that use the database to provide news information and to facilitate gambling activities. Dataco objected to the unlicensed use of its fixture lists by Yahoo!, Brittens Pools and Stan James and sued for infringement of its rights.
The fixture lists are prepared in accordance with several ‘golden rules’. The rules include:
(a) no club shall have three consecutive home or away matches;
(b) in any five consecutive matches no club shall have four home matches or four away matches;
(c) as far as possible, each club should have played an equal number of home and away matches at all times during the season; and
(d) all clubs should have as near as possible an equal number of home and away matches for mid-week matches.
As well as honouring these rules, the individual requests of the clubs concerned are analysed and taken into account. Questionnaires are sent to the clubs and the responses can include date requests and requests for two, or more, clubs not to play at home on the same day. Around 200 requests are made per season.
In the case of the English football leagues, an individual, Mr Thompson, then prepares a draft fixture list which aims to comply with the golden rules and accommodate, as far as possible, the clubs’ requests. Although partly automated, the process also requires Mr Thompson to input and arrange many of the fixtures manually in order to comply with these numerous rules and requirements. Finally, Mr Thompson consults with the police and league representatives in order to find solutions to any remaining issues and to finalise the fixture list.
The Decisions of the English Courts
In the High Court, Dataco argued that one, or more, of three forms of protection should extend to the fixture lists:
· database copyright protection (under the Copyright, Designs & Patents Act 1988, ss 3 and 3A, giving effect to Article 3 of the Database Directive (96/9/EC));
· sui generis database protection (under the Copyright and Rights in Databases Regulations 1997/3032, giving effect to Article 7 of the Database Directive); and/or
· other literary copyright protection.
Article 3 of the Database Directive protects databases which, by reason of the selection and arrangement of their contents, constitute the author’s own intellectual creation. It was held that creating the databases required the exercise of Mr Thompson’s skill and judgement, and an undoubted selection and arrangement in the fixture lists as to the choice of dates and the decisions as to which match was played on which date. As such, Floyd J held that the lists qualified for database copyright protection.
However, applying previous ECJ case law (Case C-46/02 Fixtures Marketing [2004] ECR I-10365; Case C-203/02 The British Horseracing Board and Others [2004] ECR I-10415; Case C-338/02 Fixtures Marketing [2004] ECR I-10497; and Case C-444/02 Fixtures Marketing [2004] ECR I-10549), Floyd J held that no sui generis database right subsists in fixture lists because the creation of those lists involves insufficient investment in collecting and verifying data as required under Article 7 of the Database Directive. The High Court also determined there is no alternative means by which copyright protection could be afforded to the lists, over and above that granted by virtue of the lists being protected as databases under Article 3.
On appeal, the Court of Appeal stayed proceedings in order to obtain clarification from the ECJ as to the conditions which must be satisfied in order for Article 3 protection to apply. The questions referred to the ECJ were as follows:
1. In Article 3(1) of the Directive, what is meant by ‘databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation’ and in particular:
(a) Should the intellectual effort and skill of creating data be excluded?
(b) Does ‘selection or arrangement’ include adding important significance to a pre-existing item of data (as in fixing the date of a football match)?
(c) Does ‘author’s own intellectual creation’ require more than significant labour and skill from the author, and if so, what is that additional requirement?
2. Does the Directive preclude national rights in the nature of copyright in databases other than those provided for by the Directive?
Advocate General Mengozzi provided his opinion on these questions, on 15 December 2011, with which the ECJ largely agreed when it passed down its judgment on 1 March 2012.
The ECJ Judgment
Article 3(1) provides that database copyright protection is afforded to ‘databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation’.
The ECJ elaborated on this wording by stating that a database can be protected by copyright under Article 3 only if ‘the selection or arrangement of the data which it contains amounts to an original expression of the creative freedom of its author’. Databases will not be protected where there is no such creative freedom (and there is quite a clear implication from the wording of the judgment that the ECJ does not think that the creation of fixture lists constitutes such an act).
The ECJ made clear that the Directive provides protection only for the ‘structure’ of the database and not its ‘contents’, ie the data itself, without prejudice to any copyright subsisting separately in that data. As a result, in answer to question 1(a), the intellectual effort and skill expended to create the data contained in a database is not relevant when assessing the eligibility of that database for copyright protection under the Database Directive.
The ECJ held that the intellectual resources utilised by Mr Thompson were deployed for the purpose of determining the date, the time and the identity of teams corresponding to each fixture of the leagues, in accordance with a set of rules, parameters and organisational constraints as well as the specific request of the clubs concerned. These resources were therefore deployed for the creation of the data, ie. the content not the structure of the database, and, as a result, are not a relevant consideration when determining if copyright protection is available for the database.
What is required, for the purposes of Article 3, in respect of the database is an ‘original expression of creative freedom in selecting or arranging‘. The ‘originality’ requirement was not, according to the ECJ, satisfied where the setting up of the database was ‘dictated by technical considerations, rules or constraints which leave no room for creative freedom‘. Further, in answer to question 1(b), it is irrelevant whether or not the ‘selection or arrangement’ adds important significance to data already included in the database, so long as it is an ‘original expression of the creativity of the author of the database‘.
As to question 1(c), it was not disputed that the setting up of the database, aside from the creation of the data, required significant labour and skill. However, ‘significant skill and labour’ in itself, does not justify copyright protection. The key criterion in assessing whether a database will be afforded copyright protection is that the skill and labour expresses originality in the selection or arrangement of the data.
The national court must now determine whether the football fixture list satisfies the requirements laid out by the ECJ, however the decision will leave the courts of England and Wales in no doubt that the selection or arrangement of the data contained in the database must amount to an original expression of the creative freedom of its author, in order for the database to qualify for protection under Article 3.
Finally, and in reference to question 2, the ECJ confirmed that the Database Directive precludes Member States from affording copyright protection to databases that do not meet the requirements of Article 3. In other words, if a database created after the Database Directive was implemented in the UK (1 January 1998) is not protected under Article 3, it cannot instead be protected as a literary work under the CDPA 1988.
Comment
Traditionally UK law has granted copyright protection to a wider range of products or creations than those protected under civil law regimes, on the basis of the ‘significant skill and labour‘ expended on their creation. This case allowed the ECJ to clarify the meaning of ‘intellectual creation‘, as contained in Article 3(1) of the Database Directive.
The ECJ ruled that database copyright and, in particular, the concept of ‘intellectual creation‘, will protect databases only where ‘the selection or arrangement of the data which it contains amounts to an original expression of the creative freedom of its author’. The ruling highlights the fact that the originality of the selection or arrangement of the data containing in the database, not the data itself, is key in determining if the database is protected by the Database Directive. The notion of ‘significant skill and labour’ is no longer, in itself, enough to constitute ‘originality’.
It is now up to the Court of Appeal to apply the ECJ ruling to the facts of this case. However, the ECJ has set the bar high and the ruling seems to quite clearly lead national courts down the road of ruling that fixture lists are not protectable under the Database Directive.
This more stringent requirement of ‘originality’ is good news for bookmakers and news providers in the sports arena and also potentially for information providers in other fields (such as financial services and music). However, commercial entities that make money through creating and distributing data, such as Dataco, will need to carefully consider how their business models can best be protected through utilising the other tools available to safeguard their investment in creating and exploiting databases.
David Cran is a Partner in the IP, Technology & Outsourcing Group at RPC (Reynolds Porter Chamberlain LLP). Paul Joseph is a Senior Associate there: www.rpc.co.uk
