Directive 96/9 EC introduced legal protection for databases by the creation of the ‘Database Right’. The Directive was implemented in the
Databases
For protection under the Directive to apply, the database in question must fall within the statutory definition of a database, namely:
‘a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means.‘
The definition is very wide and the database right will subsist in all databases where there has been a ‘substantial investment in either the obtaining, verification or presentation of the contents of a database.’
The database right expires either at the end of 15 years from the end of the year in which the making of the database was completed or, if the database was published during that period, 15 years from publication. Because databases are revised and updated, the Directive provides that where there is a substantial change to the contents of the database then the 15-year period will commence again.
The owner of the database right has the right to prevent the ‘extraction’ or ‘re-utilisation’ of all or a substantial part of the content of the database. The Directive further provides that the repeated and systematic extraction or re-utilisation of insubstantial parts of the contents of a database may amount to the extraction or reutilisation of a substantial part of those contents.
The British Horseracing Case
As the governing body for horse racing in the
William Hill, the bookmaker, published certain information relating to horse races on its Web site so that its customers could make informed decisions when placing a bet. This information was sourced from newspapers and from an information service for subscribers, all of which, in turn, sourced their information from the British Horseracing Board’s database. Neither the newspapers nor the information service provider had the right to sub-license William Hill to use any information which came from the British Horseracing Board’s database on its site.
The British Horseracing Board claimed that William Hill was using information derived (via a third party) from its database and that such use was infringing the British Horseracing Board’s rights under the Directive. Specifically, the British Horseracing Board claimed that William Hill’s use of the data each day was an extraction or re-utilisation of a substantial part of the database or, in the alternative, that William Hill’s actions amounted to a repeated and systematic extraction or re-utilisation of insubstantial parts of the database.
After an initial injunction was granted to the British Horseracing Board by the High Court, William Hill appealed and the case went to the Court of Appeal. The case was then referred by the Court of Appeal to the European Court of Justice for a ruling on a number of questions arising from the interpretation of the concepts referred to above which are derived from the Directive.
The Advocate General’s Opinion
The data derived from the British Horseracing Board’s database, which was used by William Hill on its Web site, was not presented in the same layout as it appeared in the database. The Advocate General considered whether it would be the case that the Directive would only prohibit acts by William Hill if the data used by William Hill were arranged in as systematic or methodical a way and were individually accessible as in the original British Horseracing Board database. The Advocate General concluded that the protection afforded by the Directive would apply even to a database which is compiled in an altered or differently structured way from the original database (ie it is the content of the database rather than the form of the database that is protected).
As stated above, a database right will arise only if there has been a substantial investment in the ‘obtaining’, ‘verification’ or ‘presentation’ of the contents of a database. The Advocate General was asked to consider what was meant by ‘obtaining’. She concluded that, although the expression does not cover the mere production (or generation) of data, where the creation of the data takes place at the same time as its processing and is inseparable from it then such data would fall within the protection afforded by the Directive.
In respect of the term ‘verification’, the Advocate General was asked whether the term was limited to ensuring that from time to time information contained in a database is or remains correct. The Advocate General noted that the task of verification is essentially a matter of monitoring the materials of a database in respect of completeness and accuracy, which includes checking whether a database is up to date. Although the process of verification will generally apply to data which already form the contents of the database, the term could also include the obtaining of data and their entry in the database.
Although the Advocate General considered that it would be up to individual national courts to assess on the facts of a particular case what would amount to a ‘substantial’ or ‘insubstantial’ part of a database, she did offer guidance in making such an assessment on both qualitative and quantitative grounds. A quantitative assessment would not simply involve a relative assessment of the size of the affected part with the total size of the database. To do this, she observed, ‘would tend to disadvantage the makers of larger databases because the larger the total amount the less substantial the affected part.’ A ‘substantial part, evaluated quantitatively. of the contents of that database’ is to be interpreted as meaning that the affected part is relevant. In terms of a qualitative assessment of whether the data formed a substantial part of the database, it would be important to look at what a potential wrongdoer would save by extracting or re-utilising the particular piece of data without having to pay the owner of the database to do so. Thus, the technical or commercial value of the affected part must be taken into account.
An insubstantial part of a database, she concluded, would be any part that does not reach the threshold for a substantial part but was more than an individual piece of data.
The extraction and/or reutilisation of insubstantial parts of a database will be prohibited if such acts are repeated and systematic (ie they are carried out on a regular basis) so as to prevent the normal economic exploitation of the database by the owner of the right.
While ‘extraction’ of data includes only direct transfers from the database to another medium, ‘reutilisation’ can include data which is derived indirectly from a third party (as was the case with the data which William Hill was using).
In respect of dynamic databases, the Advocate General is of the opinion that, where there is a ‘substantial change’ to the contents of a database, this will result in a new separate database with a new 15-year term of protection.
Next Steps
The opinion offered by the Advocate General will be useful for legal practitioners and database managers alike in assessing the scope of protection afforded by the Database Right. Although the Advocate General’s opinion is not in itself binding, it is likely that it will be highly persuasive to the judgment which will eventually be given by the ECJ. Once the ECJ has given judgment, the case will be referred back to the Court of Appeal which will then apply the ECJ’s judgment on the principles concerned to the facts of the British Horseracing case.
Richard Waller is a solicitor in the Business IP Unit of Dechert LLP, 2 Serjeants’ Inn,
