The British Horseracing Board Ltd & Ots v. William Hill Organization Ltd(C-203/02); Fixtures Marketing Ltd v. Oy Veikkaus AB (C-46/02); Fixtures Marketing Ltd v. Svenska Spel AB (C-338/02); Fixtures Marketing Ltd v. Organismos Prognostikon Agonon Podosfairou (C-444/02)
The database right was created by the Database Directive 96/9/EC. It protects unoriginal databases in which there has been substantial investment. The Directive refers to this right as the sui generis right, meaning “of its own kind”, in order to distinguish it from copyright protection which is afforded to databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation.
The intention behind the database right was to encourage and protect the investment in databases from those who wanted to take advantage of the information, its accuracy and completeness. Indeed, the Directive refers to this aim no less than eleven times. However, one of the difficulties in interpreting the extent of protection of this right has been the lack of definitions contained in the Directive and the lack of case law.
On 9 November 2004, the ECJ gave judgment in the above cases, being its first on the database right. The judgments are very much in favour of William Hill and the other defendants. The effects on the owners of databases will be significant for two major reasons:
(1) The ECJ has underlined the requirement that, in order to qualify for protection, there must be substantial investment in the database. Resources spent in creating the data in the database cannot be taken into account. Thus, the owner must show that he has spent significant investment on the right sort of activities before the database right will attach to the database.
(2) If there is no relevant investment in the data for the reasons in (1) above, the extraction or reutilisation of that data will not be protected by the infringement provisions in either Articles 7(1) or (5). Further, the ECJ construed Article 7(5), relating to extracting or reutilising of insubstantial parts of the database, such that infringement will only be found where the cumulative effect of such actions enables the reconstruction of the whole or a substantial part of the database. The judgments mean that the protection afforded by the database right is significantly narrower than had been previously thought.
The British Horseracing Board (“BHB”) v. William Hill case involved the fixture lists and racing information known as the Stud Book, created and maintained by BHB. Mr Justice Laddie held ( RPC 612) that BHB’s database rights were infringed by William Hill’s use of data on its Internet betting site. On appeal, the Court of Appeal of England and Wales referred various questions to the ECJ.
The other three cases were referred to the ECJ from Sweden, Finland and Greece and all involved the same claimant, Fixtures Marketing Limited. Fixtures Marketing is backed by the Football Association and others and handles the exploitation of the football fixtures lists for the Premier League, the Football League and the Scottish Football League. Before the start of each season, the fixtures lists are drawn up. The fixtures lists are set out both chronologically and by reference to each team participating in the relevant league. In both Sweden and Finland, Fixtures Marketing objected to the defendant’s use of the data in the fixtures lists in pools betting. In Greece, the defendant used the data on its Internet site.
Advocate General Sitx-Hackl’s opinions were published on 8 June 2004. She gave a broad interpretation to the database right by maintaining that the entry requirements were low and interpreting the infringement provisions widely. To the surprise on many commentators, including this one, the ECJ did not follow her opinion in a number of significant points.
Judgment of the ECJ
What qualifies for protection as a database?
The ECJ held that the definition of a database should be given a very wide scope. It covers any collection of independent works, data or other materials, arranged in such a manner that each constituent piece of data can be retrieved. The requirement for independence refers to the need for the materials to be separable from one another without their informative, literary, artistic, musical or other value being affected.
The ECJ found that the football fixtures lists constituted databases within the meaning of the Directive, since the date of the matches, the time and identity of the teams were independent data. It was irrelevant that lots were drawn to decide which teams played each other. Consequently, not only those things which are normally thought of as databases will be covered by the definition, including contact lists, telephone directories and compilations of copyright works such as collections of poems, but websites, newspapers, magazines and training manuals will also qualify.
What does the database right protect?
In order to qualify for protection, the maker of the database must show that there has been “a qualitative and/or quantitative substantial investment in either the obtaining, verification or presentation of the contents” of the database (Article 7(1)).
The ECJ held that investment in the creation of the data in the database cannot be taken into account when considering whether there has been substantial investment in the database itself. Therefore, the investment in “obtaining” requires resources to be spent in seeking out independent materials and collecting them into the database, the investment in “verification” has to relate to ensuring the reliability of the information contained in the database and monitoring its accuracy and the investment in the “presentation” has to relate to the resources used to give the database its function, that is, the investment used in the arrangement of the data in the database. Further, the ECJ held that the requirement for “quantitative” investment refers to quantifiable resources whereas “qualitative” investment refers to efforts which cannot be quantified such as intellectual effort or energy.
The ECJ applied these principles to the facts in the cases. In the Fixtures Marketing cases, the Court was of the view that finding and collecting the data which made up a football fixture list did not require any particular effort on the part of the professional leagues as those activities were indivisibly linked to their responsibility to create those data. For the same reason, the Court was of the view that no particular effort was required in monitoring the accuracy of the data and its presentation was too closely linked to the data’s creation to be taken into account. Therefore, there was no independent investment in the database over and above that put into creating the data. In other words, the ECJ accepted the argument that the database was merely a spin-off of the work done in putting together the fixtures lists. Similarly, in the BHB case, the ECJ found that the resources deployed by BHB in the selection of the horses admitted to run in each race related to the creation of data and not the database, despite the fact that the process of entering a horse in a race required a number of checks as to the identity of the person making the entry, the horse, its owner and the jockey.
Following this judgment, distinguishing between monies spent on collecting data and monies spent on creating data may be very difficult for some companies such as BHB which do both and therefore they may fail to prove that they have a protectable database. Companies which do not create the data, merely collect them, as in telephone directories, will not have such a problem. Companies may, therefore, consider whether they need to restructure their organisation so that the functional aspects of creating data and creating the database are kept separate and are separately budgeted. In the BHB and Fixtures Marketing cases it will now be up to the national courts to consider how much, if any, of the £4 million or £11.5 million spent respectively on the databases amounts to investment in the database itself and, if so, whether that sum is substantial.
Extraction and reutilisation
Article 7(1) of the Directive states that the database maker has the right to prevent “extraction and/or re-utilisation of the whole or of a substantial part, evaluated qualitatively and/or quantitatively of the contents of the database”.
The ECJ held that the terms “extraction” and “re-utilisation” were to be given wide meanings such that they refer to any unauthorised act of appropriation or distribution to the public of the whole or part of the contents of a database and do not imply direct access to the database concerned. If it were otherwise, the maker would be unprotected from unauthorised copying from a copy of the database.
The ECJ pointed out that Article 7(1) does not stop third parties from consulting the database where either the maker or an authorised user has made it publicly available. However, because the maker’s rights are not exhausted by such actions, the maker can stop third parties from extracting or reutilising the whole or a substantial part of that database.
As a consequence, the contents of the database can be protected even if the infringer obtains the data from an intermediate source such as newspapers or the Internet where those media source the data from the database. Thus, in the BHB case, William Hill could not say that the database right had been exhausted and they were not liable because the data had already been published in the newspaper, The Racing Post. This aspect of the judgment may be of concern to those who promote freedom of information since its effect is to protect data contained in a single source, the database.
Infringement by using a substantial part of the database
The ECJ held that, under Article 7(1), the assessment of whether, in quantitative or qualitative terms, a part of the database is substantial refers to the investment in the creation of the database and the prejudice caused to that investment by the infringement. A “substantial part evaluated quantitatively” refers to the volume of data extracted and/or reutilised assessed in relation to the total volume of the contents of the database. A “substantial part evaluated qualitatively” refers to the scale of investment in the obtaining, verifying and presenting of the contents extracted and/or reutilised, regardless of whether in quantitative terms it amounts to a substantial part. A quantitatively negligible part of the database may yet require significant human, technical or financial investment.
The ECJ found that William Hill, by displaying the data including race details on its Internet site, had not taken a quantitative or qualitative substantial part of the database, despite the fact that the data were vital to the organisation of horse races. No account could be taken of the intrinsic value of the data. Further, since investment in this type of data was of the wrong sort because it was investment in the creation of data, the investment in that same data could not comprise, in qualitative terms, a substantial part of the database.
Finally, although the ECJ did not refer to the “databaseness” argument put forward by William Hill (i.e. the database right only prevents acts which make use of the arrangement of the contents of the original database), the Court indicated that it did not matter to what purpose the extracted or reutilised data was put. This would seem to dispose this argument.
Infringement by using insubstantial parts of the database
The Directive also prohibits “repeated and systematic extraction and/or reutilisation of insubstantial parts of the contents of the database implying acts which conflict with the normal exploitation of the database or unreasonably prejudice the legitimate interests of the maker of the database” (Article 7(5)).
The Court held that there would only be infringement if the cumulative effects of the extraction or reutilisation would lead to the reconstitution of the database as a whole or a substantial part of it and thereby seriously prejudice the investment made by the database maker.
The ECJ found that there was “no possibility” that through their actions of putting information relating to each day’s races on the Internet, William Hill might reconstitute the whole or a substantial part of BHB’s database. Furthermore, the data affected by William Hill’s actions was of the wrong sort in that it had not been the subject of investment independent from the data’s creation.
The database right is clearly intended to protect the data in the database. But the effect of the ECJ’s judgment is to rein in that right, particularly in relation to the need for investment to be of the right sort and the requirement that there will be no infringement unless that investment is prejudiced. As BHB have found, the Court will not protect small but intrinsically valuable pieces of data taken from the database.
Another difficulty arising out of the ECJ’s judgment is how to effectively protect large databases. One solution may be to chop a large database into a number of smaller databases, making it easier to prove that there has been a substantial taking of the whole, or a number of insubstantial takings which cumulative amount to a substantial part of the whole.
A further effect might be to turn attention again to whether a database can be effective protected by copyright. For example, there may be databases in which the investment has not been substantial, but the resulting database could not have been created by many others and therefore qualifies as the author’s own intellectual creation.
The cases will now be returned to their national courts at which point, the Court of Appeal will consider how to apply the judgment of ECJ in the BHB case. Unusually for the ECJ, it applied its construction of the Directive to the facts in the case. Those finding are in contrast to, for example, the following statement made by the Court of Appeal in its judgment:
“The judge said that there was no substantial challenge to the pleaded assertions by BHB that the establishment of the database, at considerable cost, has involved, and its maintenance and development continue to involve, extensive work including the collection of raw data, the design of the database, the selection and verification of data for inclusion in the database and the insertion and arrangement of selected data in the database, the annual cost of continuing to obtain, verify and present its contents being approximately £4,000,000 and involving approximately 80 employees and extensive computer software and hardware.”
The contrast between this statement and the findings of fact by the ECJ are marked. The Court of Appeal would be entitled to disregard any conclusions reached by the ECJ, in so far as they were based upon a factual background inconsistent with its judgment. No doubt this will be the subject of the parties’ submissions before the Court of Appeal, as it was in Arsenal Football Club v. Reed  RPC 39. In that case the Court of Appeal held that the conclusions of the ECJ were not inconsistent with the findings of fact and Mr Justice Laddie should have followed the ruling of the ECJ. The outcome of the Court of Appeal’s decision is awaited with interest.
Also published in the December 2004 issue of WIPR.