StephanesDatabases

01 November 2002

Stéphane Lemarchand





CA Versailles ch.12, sect.1, April 11, 2002, PR Line c/ NewsInvest.

Case law concerning the sui generis regime created by law n° 98-536 on July 1, 1998 is too rare for an appeal decision to not be carefully examined. In this particular case, this examination is more useful than the order rendered by the Court of Appeal of Versailles on April 11, 2002 principally concerning the notion of a qualitatively substantial extraction, a notion whose outlines were left to the judges’ evaluation by the legislator.[1]

A quick review of the facts is necessary. PR Line and NewsInvest both distribute financial information such as annual reports and press releases on companies, from their respective Internet sites. While accessing PR Line’s site in a completely lawful manner, NewInvest took some of the information contained on the site, in order to then distribute it on its own site. PR Line seized the Commercial Court of Nanterre for this matter, after having been dismissed in a summary procedure[2], to see it said that that such extraction was unlawful within the meaning of Articles 342-1 and following of the Intellectual Property Code.

In its decision rendered May 16, 2000[3], the Court of Nanterre issued a first response to the doctrinal examinations regarding the meaning of the notion of a qualitatively substantial extraction, by considering that such was the case when the extractions enriched a competitor’s database.

The Court of Appeal of Versailles annulled this judgement and concluded the opposite ruling. According to the Court, the qualitatively substantial nature of an extraction is not evaluated in consideration of the person of the company that performs the extraction, nor in consideration of the use of the data. In this particular case, the Versailles judges therefore considered that NewsInvest’s taking of information could not have attained the rights of the database producer, PR Line.

The fore-mentioned order was intended to specify the regime of the sui generis right, by giving it a limit of range. For the first time, among the decisions that outline[4] this special right, a Court of Appeal refused the protection of the database producer, on the grounds that the litigious extraction was not qualitatively substantial.

Obviously, this decision will satisfy the authors who doubted the relevance of creating such a sui generis right, whether for the risk of appropriating information itself[5] or for the integrity of intellectual property[6].

It is true that upon a first analysis, it appears that the judges were trying to specify the boundary between what is forbidden and what is lawful within the meaning of Article L. 342-1 of the Intellectual Property Code. It was perfectly demonstrated that although the legislator had been specific regarding the forbidden acts themselves, he legitimately left to the judges the evaluation for each case based on such criteria as “substantial”, “qualitatively” or “quantitatively”[7]. It is true that the declared foundation of the regime of the sui generis right is that of the protection of investments against any unfaithful or parasitic dealings, for which the cases are multiple and hardly predictable.

In this particular case, after having easily dismissed the quantitatively substantial nature of the extraction in question by a simple mathematical analysis[8], the Court withheld the absence of a substantially qualitative extraction, on the grounds:

  • that it is not significant that the extraction was performed by a competitor,
  • that the concerned data does not reveal, in itself, a topical or strategic nature at the time of the events;
  • that it is not necessary to verify whether the extractions were « repeated or systematic» or that they « …exceeded the normal conditions of use of the database», since NewsInvest benefits from the exception provided in Article 342-3 of the Intellectual Property Code for databases made available to the public, which provides that a non-substantial extraction cannot be forbidden since the access to the litigious data was lawful.

Let’s consider each of these points:

1) The extraction and reuse of the data by a competitor is not in itself sanctionable.

The judgement undertaken[9] withheld that the « …extractions are acts of a competitor while the press releases and annual reports concern the business activity of the two parties » and that they had allowed NewsInvest « …to enrich its own database» in order to qualify the qualitatively substantial nature of the extraction and reuse carried out by NewsInvest.

By doing this, the consular judges delivered the first jurisprudential indications on the matter to apprehend this criteria, which is subjective by nature[10]. One could also conclude from this decision, on the one hand, that the criteria could be evaluated based on the nature of the data (considered as « concerning the business activity of the two parties »), as well as in consideration of the individual of the company (a competitor) that commits the extraction. According to the Commercial Court of Nanterre, it was then necessary to agree on a protection of the database producer against any enrichment of a competing database.

From an economic point of view, the solution is justified. PR Line made numerous investments, in order to create and operate its database, but also to collect the information from the companies. PR Line saw the distribution of this information. Declaring that a directly competitive business does not make the same investments and commercially profits from the results, is clearly prejudicial.

From a legal point of view, the solution is not so shocking if we start with the idea that, although it concerns an exclusive right[11], the sui generis right exists a priori to provide protection against disloyal competition acts. We are not forgetting that in the early versions of the directive, the law of forbidding aimed at « disloyal extraction » of the withheld text which cites « non-authorized extraction». It is true, in this regard, that Article L. 342-2 of the Intellectual Property Code (which forbids, by exception, any repeated or systematic extraction or use of non-substantial portions of the database’s content since these uses obviously exceed the normal use conditions of the database) is not justified in regards to the principles of disloyal competition and parasitism.

In our opinion, the special right is perfectly a matter of the derived right since the law created a law of forbidding, but it is however certain in all cases, that it can have influence essentially, in the presence of a competitive situation.

Therefore, contrary to the Court of Appeal of Versailles, we think that a competitor’s intervention should be examined more than indicated, in the evaluation of the substantially qualitative character of an extraction or reuse. How can one not consider that the captured information is more seductive in the competitor’s eyes than in the eyes of a normal user of the website in question? How can one not presume, if not conclude, an unlawful extraction when the extraction includes elements which with it conducts business, when the tradesman in question has not made human, material, or even financial investments in order to collect them, for example?

This is not to suggest hindering the free circulation of information, nor to « mistreating the public domain »[12]. Indeed, nothing forbids the competitor, quite the contrary, from collecting the unrefined concerned information directly from the reference source. It is only when the database producer is the sole holder of unrefined information and refuses the circulation of it, that the sui generis regime would hinder the principle of free access to the public domain. In this case, we know that the law of competition plays its role as regulator[13].

Presuming the unlawful nature of an extraction and/or reuse of information by an author who is a direct competitor can seem extreme in the eyes of the scrupulous jurist who has not seen such reference in the texts. This analysis seems to us, however, to arise from practical common sense. It must be put to the test of particular cases, and our intention is obviously not to establish it in general rules, which would be absurd in the matter.

Other decisions should be rendered in any event in order to develop this type of criteria more precisely, in particular in the presence of two competitors.

We will note furthermore that, under the form of an examination, in all likelihood the judges of appeal would not have concluded the lawful nature of the enrichment of a competitor’s database, if other « circumstances » existed, « such as the particularly strategic nature or topicality of the concerned data, at the time of the litigious events».

What is the meaning of this specification?

2) The «other circumstances»

The fore-mentioned order confirms that the data itself should be examined to conclude whether the extraction was of a qualitatively substantial nature or not. In order to conclude the absence of a qualitatively substantial extraction, the Court considered that the concerned data did not in itself take on any strategic nature or topicality. The subjective dimension of the evaluation of the criteria is exaggerated here.

This as much as the motivation lacks. It was useful to know more about what specifically lead the judges in appeal to this conclusion. The lack of motivation is all the more bothersome since we believe the annulled judgement withheld the opposite. When the consular judges emphasized that « the press releases and annual reports concern the same business activity of the two parties », they recognized that at least for the parties of this case, the litigious data was significant, even crucial. How can we judge today that it is not strategic? Furthermore, in the eyes of who must these “circumstances” exist? Those of the dishonest competitor? Those of the database producer, or finally, those of the user of the Internet site in question? Unfortunately, the order does not provide any information on this issue.

3) The exception of the lawful access

The judges of the second degree thought it useful to complete their motivation by resorting to the exception of Article 342-3 of the Intellectual Property Code. For memory, this article specifies that a database producer cannot forbid an extraction or reuse of a non-substantial portion of the database content when the database is made available to the public and when these operations are performed by someone having lawful access to the database.

The commentators[14] of the law of July 1, 1998 demonstrated very early on that this article was of no use. Since the principle establishes the forbidding of substantial reuse, one can logically consider, a contrario, that non-substantial extraction cannot be forbidden, in particular by an agreement.

In reality, however, the use derived from this exception seems questionable to us. The Court resorted to this provision to dismiss Article 342-2 of the Code mentioned above. It specifies, after having emphasized that this last provision was of nature to contest the lawfulness of these litigious acts, « that it is not necessary, however, to linger on this point… » since the exception of Article L. 342-3 would apply.

Two observations:

(i) Nothing in the texts leads to considering that Article L. 342-3 forbids Article L. 342-2. How can one legally justify, therefore, that it is unnecessary to verify the conditions of Article L. 342-2 since those of Article L. 343-3 are fulfilled? It seems to us, within the meaning of Article L. 342-2 of the Intellectual Property Code, that a non-authorized repeated and systematic extraction of non-substantial elements of the content of a database made available to the public by a person having lawful access to it would be unlawful. By refusing to verify the application of the conditions of Article 342-2 mentioned above, the Court seems to consider that such a case cannot exist.

(ii) It seems, however, that in this particular instance, the case of Article L. 342-2 of the Intellectual Property Code does not apply. Indeed, it does not appear from the description of the facts that a repeated or systematic extraction was established. In our opinion, it would therefore be difficult for PR Line to benefit from the specific protection regime in the event of abnormal use of the database. The Court could therefore have dismissed this means without another trick.

The jurisprudential work relating to the sui generis right regime has hardly begun. In any event, this order constitutes a major axis since it concerns a condition that is still too rarely submitted to the judges’ evaluation. The occasion was therefore a good one to say a few words on the conditions and limits of the implementation. Another time perhaps…

Footnotes

[1] P. Sirinelli : Lamy. droit des médias et de la communication, 2000, n° 136-60.
[2] T. com. Nanterre, ord. réf., 4 oct. 1999 : Com. com. électr. janv. 2000, comm. n° 1, obs. C. Caron.
[3] T. com. Nanterre, 16 mai 2000 : Expertises 2000, p. 273.
[4] To use C. Caron’s terms: « The special right, still in outline while waiting for other decisions , will not be able to completely oust the common law », Note sous CA Paris 4e ch. B, 18 juin 1999, SA Groupe Moniteur et autres c/ Sté des Observatoires des marchés publics : JCP éd. Comm. comm. électr. nov. 1999, p. 16.
[5] P. Gaudrat : RTD com. 1999, p. 398.
[6] A. Françon RTD com. 1999, p. 869.
[7] P. Sirinelli : Lamy droit des médias et de la communication, 2000, n° 136-60.
[8] Only ten press releases and financial reports were extracted and reused over 6 months, out of, according to the Court, fifteen put on-line each day by PR Line.
[9] T. com. Nanterre, 16 mai 2000 : Expertises 2000, p. 273.
[10] P. Gaudrat, précit., n° 401.
[11] The authors consider that the « sui generis right» concerns a privative right, which is separate from a simple application of the theory of disloyal competition: A. Lucas, Droit de l’Informatique et de l’Internet, PUF, n° 594, p. 366, who sees there fees of performers, record manufacturers and broadcasting organisations; but also P. Sirinelli, précit., n° 136-60 : regarding the qualitative nature « […] we are closer to a privative right on the elements than a right to fight against certain uses relating to the content in general ». For his part, P.-Y. Gautier withholds the exclusive right by qualifying this special right of « disloyal super-competition » : P.-Y. Gautier, Propriété littéraire et artistique, PUF, 3e éd., 1999, n° 114.
[12] As C. Caron emphasizes in his commentary report on the decision rendered in the first instance: Com. com. électr. sept. 2000, p. 13.
[13] V.particularly, V.-L. Benabou Propriétés intellectuelles 2002, n° 3, p. 117 concerning the IMS case.
[14] Surtout P. Gaudrat, précit., p. 413.