Unlike the UK, Hong Kong does not have any specific legislation relating to databases. In the absence of such legislation, what protection is there for databases. At present in Hong Kong, databases enjoy protection as literary works under section 4 (a) of the Copyright Ordinance, and are defined as: "A compilation of data or other material, in any form, which by reason of the selection or arrangement of its contents constitutes an intellectual creation, including but not limited to a table."
As is the case in the UK, for such a compilation to be protected, the selection or arrangement of the content of the database must constitute "an intellectual creation." This would imply that the work must be original, and must also satisfy the criteria that some form of intellectual ingenuity was used in the creation of the compilation.
As a result, a number of works, for example computer-generated databases or simple databases of names and addresses of clients, do not qualify for copyright protection because they do not meet the intellectual creation criteria. Such databases would still represent a substantial investment in terms of time and resources, but would have no protection.
The UK and EU position
The European Directive on the Legal Protection of Databases, implemented in the UK under the Copyright and Rights in Databases Regulations 1997, was created to protect those databases that do not qualify for protection under the existing copyright legislation, and to harmonise the treatment of databases throughout the EU.
The types of databases intended to be covered under the European Directive are defined as including: "a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means."
Two types of right are conferred under the new regulations, which, in point form, consist of the following:
- The database must be original, and have involved selection and arrangement in its creation;
- in addition to existing copyright provisions applicable to literary works, database copyright gives the owner the right to carry out or authorise the reproduction, translation, distribution of copies to the public and communication of the database;
- compilations which are separately protected under copyright are specifically excluded;
- the definition of a database includes collections of other copy-right works such as a database of musical works, video clips, artistic works etc., but a collection of several musical works on a CD will still be protected as a compilation;
- permitted acts include private reproduction (for electronic databases only), use for teaching or scientific research, public security, administration and judicial procedure. There is no express exclusion of computer programs from definition of a database.
- for databases, which fail the test of intellectual creation for copy-right subsistence, and to prevent the making of parasitic competing products;
- gives owner a right in action against anyone who without the owner's consent extracts or reutilises all or a substantial part of the database;
- to qualify for protection, there has to have been substantial investment in obtaining, verifying, or presenting the contents of the database;
- database right does not compromise the rights of copyright holders;
- gives lawful users the limited right to extract or reutilise insubstantial parts;
- permitted acts include extraction from publicly available databases for private purposes, teaching or scientific research, extraction and/or reutilisation for public security;
- administration or judicial procedure.
The British Horseracing Board v William Hill case
This recent decision was the first database right case to be decided by an English court.
The plaintiff collates, processes and stores on a daily basis information relating to horse racing fixtures on a database acknowledged as the official source of such information. The defendant was using information derived from the plaintiff's database and supplied by a company called Satellite Information Services for its online betting services. The plaintiff claimed that the defendant had infringed its database right by extracting or reutilising a substantial part of the contents of its database and that even if the extracts taken were not substantial, the total sum of such insubstantial parts extracted or reutilised amounted to extraction or reutilisation of a substantial part. In support of the plaintiff's argument, the court held that "extraction" meant copying and that "reutilisation" meant making the material available to the public, as the defendant had done through its web site. Extraction of small amounts of data systematically on a daily basis by the defendant was held by the court to be an infringement of the database right. The plaintiff's claim was upheld by the court.
Do we need a database law in Hong Kong?
The present legislation fails to cover databases which do not meet the "intellectual creation" criteria. In such cases, owners of such databases have no redress against unauthorised users of the information taken from their databases. The British Horseracing Board case illustrates how the database right can protect such databases from unauthorised exploitation. Whilst the UK legislation was introduced in 1997 and has therefore been in existence as long as our own Copyright Ordinance, it has only recently been tested. However, it is clear that the database right is of great benefit in cases where claims under copyright are weak or non-existent. It remains to be seen whether owners of databases in Hong Kong perceive any shortcomings in the current level of protection to the extent that a new database law is required.
First published in e-lawasi@ in July/August 2001.