Everything but the kitchen sink?

Can a dishwasher be a database? This was the despairing proposition put forward by the attorney for the defendant in a recent Netherlands case bemoaning the inclusive approach taken by the courts. He pointed out that a dishwasher is also “a systematic collection” of porcelain plates and cups that somebody has made an investment in.

Now that there have, in the years since Directive 96/9/EC took effect, been a number of cases across the EU it is possible to discern with greater clarity both the outline of the sui generis database right and the areas of dispute. Initially it was unclear how important a right it would prove to be. Early notions that most databases would continue to enjoy copyright protection and that the new sui generis right would provide only a limited additional protection have been dispelled.

Courts have displayed a widespread willingness to recognise entities as databases falling within the definition of “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 approach taken has not been entirely consistent so that, for example, in the Netherlands case referred to in the introduction the court held that a newspaper was not a database, whereas a Danish court accepted that it was.

Identifying a particular entity as a database is the least demanding hurdle to be overcome to obtain protection under the sui generis right. The main issues which have arisen have been has there been substantial investment, and has there been substantial extraction and/or re-utilisation?

Three cases have now been referred to the European Court of Justice, British Horseracing Board Limited and Others v William Hill Organisation Limited (BHB) with which readers are likely to be familiar and two Scandinavian cases, a Finnish case Fixtures Marketing Limited v OY Veikkaus AB (Oy Veikkaus) and a Swedish case Fixtures Marketing Limited v AB Svenska Spel (Svenska Spel). The questions posed in these references cover investment and extraction as well as other points and the answers should go someway to determine just how powerful a right the sui generis database right is.

The sui generis protection arises where there has been qualitatively and/or quantitatively a substantial investment in either obtaining, verification or presentation of the contents. The Directive provides no guidance on what constitutes substantial investment beyond stating that “as a rule, the compilation of several recordings of musical performances on a CD does not come within the scope of this Directive…because it does not represent a substantial enough investment to be eligible under the sui generis right” The BHB case did not consider the issue of substantial investment it being accepted that whatever the level the investment in the database did not fall below it. Laddie J did observe that the terms of Recital 19 (quoted above) indicated that “the qualifying level of investment is fairly low”. This is consistent with the view taken in a number of decisions in other EU member states. Both French, and German courts have accepted that telephone directories are databases that involve sufficient investment to qualify. The German courts in particular seem to have been very willing both to accept that a particular entity is a database and that it has received the necessary investment to qualify for the protection of the database right. German courts have recognised a website which was a collection of web pages as a database, a catalogue of 251 hyperlinks, and a chronologically arranged collection of lyrical texts have all been recognised as protected databases.

It has been left to the Netherlands, with its pre-existing protection for non-original writings, and some of the Nordic countries with their Nordic Catalogue Rule inheritance (which provided the initial model for the database right) to consider the spin off doctrine. In essence the spin off doctrine confronts the issue of the extent to which, for example, a railway company, which is compelled to produce a timetable for the proper and safe operation of its trains, can plead that investment as part of its investment in protecting the published timetable as a database. This spin off aspect of substantiality is a key element in both the Oy Veikkaus and Svenska Spel cases.

The maker of a database is enabled to “prevent extraction and/or re-utilisation of the whole or of a substantial part” of the database contents. No guidance is given as to what constitutes a “substantial” part except that the evaluation of this may be qualitative and/or quantitative. Extraction is defined as “the permanent or temporary transfer of all or a substantial part of the contents of the database to another medium by any means or in any form”. It has been left to the courts to determine questions of substantiality. The issue of substantiality arose in all three of the cases now before the European Court of Justice.

In BHB, Laddie J while acknowledging the importance of comparing what was taken with what was in the database, also stressed the need to consider the importance to the alleged infringer of the information taken. The defendant also put forward an ingenious defence to the claim of systematic extraction and re-utilisation of insubstantial parts in terms of Article 7.5 by arguing that a new database was being created by BHB on a weekly or even daily basis and that therefore William Hill were not systematically extracting or re-utilising insubstantial parts of a single database but were extracting and/or re-utilising insubstantial parts of a series of distinct although related databases. The court while terming this argument “attractive” rejected it on the grounds that it would make the Directive unworkable when applied to dynamic databases. Instead the court took the view that the BHB database was a single database “in a constant state of refinement” with a term of protection which is being constantly renewed. This reasoning provided BHB with the best and William Hill the worst of all possible worlds. Similar issues in relation to extraction arise in the two Scandinavian cases.

All three cases also deal with the position where the data has been obtained from another source and not directly from the database. Indeed in the Svenska Spel case Svenska Spel contend that they had no knowledge of the databases and obtained the information from elsewhere. In BHB Laddie J was clear that “the Directive does not require that extraction should be direct rather than indirect”

A note of caution should be sounded. Although the questions put forward in the BHB case are posed in general terms and appear to invite a detailed textual analysis of Article 7 of the Directive all three cases are concerned with time critical sporting information and the Scandinavian cases have couched their questions in very specific terms. The Court may discern particular issues peculiar to databases of this nature. Nevertheless if the Court upholds the approach taken by Laddie J in BHB in its key essentials, database publishers and their advisers will want to look after this very powerful right with great care.

Adam More