The question of whether databases can be protected by law has long been a contentious one. On the one hand the material in a database is often not original, but on the other hand the very act of putting together a database can involve considerable investment. In Europe databases are protected by the EU . However, four decisions issued on November 9 2004 by the European Court of Justice (ECJ) - Fixtures Marketing v OPAP (referred from Greece), Fixtures Marketing v Oy Veikkaus Ab (referred from Finland), Fixtures Marketing v Svenska Spel Ab (referred from Sweden) and British Horseracing Board v William Hill (referred from the United Kingdom) - have provided a new and, some would argue, narrower interpretation of the directive (see Ruling indicates a stumble for rights owners in the database game).
The four cases dealt with the sui generis rights of extraction and re-utilisation as applied to fixtures lists and racing information. Fixtures lists determine functional provisions with respect to sports information, such as the order in which teams will play and the coordination of national and international fixtures. Racing information includes the racing equivalent of fixtures lists, pre-race information (including the form) and the results. The compilation and making of fixtures lists and racing information involves a substantial investment of time and money, and thus potentially falls within the scope of the directive. Sui generis rights apply where a database maker has made a substantial investment in order to obtain, verify or present the contents of a database.
Advocate General Christine Stix-Hackl's opinions on the cases (see Advocate general defines nature and scope of database protection) suggested that the sui generis rights set out in the directive would be widely drawn and would protect these databases. However, the ECJ's judgments seem to have narrowed the scope of protection considerably. In brief the ECJ found that neither obtaining, verifying nor presenting the contents of a football fixtures list or a schedule of horse-racing information constitutes a substantial investment. As a result the databases cannot benefit from sui generis protection against the use of the data by third parties.
The conditions for protection
Article 7 of the directive imposes an obligation on member states to provide certain rights to database makers who qualitatively and/or quantitatively make a substantial investment in obtaining, verifying or presenting the contents of their databases.
In the cases referred from Finland, Greece and Sweden it was argued that the definition of 'obtaining' should also include the creation of data, so that the cost of programming an event could be taken into account when calculating whether an investment was 'substantial' - the so-called 'relevant investment'. The fixtures lists in question were made up of data deriving from another activity, namely the organisation of the leagues, which is when the data in the fixtures lists was created.
The ECJ took the view that the definition of 'substantial investment' only covers the work involved in seeking, collecting, verifying and presenting existing materials. This means that resources used to create the materials that make up a database may never form part of the relevant investment - at least not for that reason.(1)
What then is the rationale behind the ECJ's decision, which considerably narrows the scope of sui generis rights? The directive is designed to promote investment in and production of databases.(2) In these cases there was no economically independent incentive to make the databases, as they would have been made anyway in the course of achieving the main objective of organising the fixtures and leagues. The ECJ seems to have adopted a utilitarian reasoning according to which there is in principle no reason to protect databases that have not been specifically made for a purpose, but are merely a by-product of an activity with another purpose.
The line of reasoning goes to the heart of the so called 'spin-off theory'. According to this, databases that are merely by-products of the producer's main activity cannot benefit from sui generis protection. It also suggests that the Database Directive only protects investments that are directly attributable to producing the database itself.(3) The ECJ seems to have taken note of this doctrine when making its decisions as to what can be considered a relevant investment.
The arguments brought against the spin-off theory can also be advanced against the ECJ's decision - the main one being that it is difficult to distinguish between obtaining data and creating data. This argument has a certain force, and the ECJ's judgment in this regard will presumably cause national courts much deliberation when they come to implement it.
However, the ECJ has not adopted the spin-off theory in the strict sense, under which spin-off databases cannot be protected by the directive regardless of whether substantial investment has gone into the verification or presentation of their contents.(4) Instead, the ECJ has made it clear that a creator can still show that a substantial investment has been made in the presentation or verification of the database's contents and thereby earn sui generis protection under the directive,(5) the crux being that such investment must be independent from the investment that has gone into the creation of data.
None of the claimants in the cases at hand managed to prove that substantial investment had gone into the presentation or verification of the databases. The presentation of a football fixtures list was found to be too closely linked to the creation of the data, and the investment that had gone into monitoring the accuracy of the data during the season was found to consist merely of adapting certain data in those lists (eg, to take into account a match being postponed) and thus was not substantial. The advocate general interpreted the term 'verification' as not merely being limited to ensuring from time to time that the information in the database is correct, but also including monitoring activities that take place before the data is registered (where the product of that monitoring becomes part of the database). However, this view was rejected by the ECJ, which found that such acts are not independent of the data's creation.(6)
Thus, football fixtures lists now seem to fall outside the scope of the Database Directive. This is bad news for the makers of such lists but good news for those who want to use them. Makers of these and similar lists are no doubt now considering if and how they can arrange their business so that independent substantial investment is made in the verification or presentation of the lists, preferably by 'moving' the investment from the creation phase to a later stage and thereby making it relevant.
The scope of protection
In the William Hill Case it was not disputed whether the database was protected under the directive, but rather whether was carrying out acts prohibited by the sui generis rights. Article 7(1) of the directive imposes an obligation on member states to provide exclusive rights for makers of databases protected by the directive against the extraction and/or reutilisation of the whole or of a substantial part of the database, evaluated qualitatively and/or quantitatively.
First the ECJ made clear that acts of extraction (ie, transferring the contents of the database to another medium) and re-utilisation (ie, making available to the public) are subject to authorisation from the maker, even where it has made the database accessible as a whole or in part to the public, or has authorised a third party to distribute the database to the public.(7) Such acts are found to prejudice the database maker's investment just as much as acts of 'direct' extraction and re-utilisation of the database's contents itself. The ECJ found also that the purpose of the extraction and/or re-utilisation is not relevant; it need not even be commercial.(8) What is significant is whether the acts cause detriment to the database maker's investment when evaluated qualitatively or quantitatively (which follows from Recital 42).
What is not covered by the directive is a third party's right to consult the database. Although in this case the ECJ declared that a database maker is free to reserve exclusive access to the database so that it cannot be consulted by third parties,(9) this is not always so. As was demonstrated in IMS Health and Magill (C-241/91) (see ECJ rules that refusal to license competitor is an abuse), a sole source database maker with a dominant market position may, under certain circumstances, be forced to grant a compulsory licence to allow a third party to consult, extract and re-utilise the contents of its database.
Article 7 contains two different categories of rights for database makers. Paragraph 1 grants the right to prevent use of all or a substantial part of a database, whereas paragraph 5 prohibits certain acts relating to an insubstantial part of a database. Thus, in order to assess whether the maker's rights have been infringed, it must first be established whether those acts concern a substantial or an insubstantial part of the database.
In the William Hill judgment, the ECJ stated that:
"[i]t must be held that any part which does not fulfil the definition of a substantial part, evaluated both quantitatively and qualitatively, falls within the definition of an insubstantial part of the contents of a database."(10)
Thus, one individual piece of data is an insubstantial part. The crux therefore is to establish what constitutes a substantial part.
From the directive's wording it follows that what constitutes a substantial part may be evaluated qualitatively and/or quantitatively. The qualitative evaluation refers to the scale of the investment in obtaining, verifying or presenting the content. The quantitative evaluation may be interpreted in relative or absolute terms. A relative valuation would compare the amount in question to the whole of the database's contents, while an absolute valuation would focus on the amount of the affected part in itself. The ECJ opted for the relative approach. However, as is noted in the advocate general's opinion, this can disadvantage makers of large databases since the more data there is, the less substantial the affected part would be, relatively speaking.
In addition, the ECJ has narrowed the scope of protection even further. In William Hill the materials that had been extracted and re-utilised did not require investment independent of the resources required for their creation. Therefore, those materials were found not to constitute a substantial part of the contents of the database. The ECJ has thus made it clear that acts of extraction and/or re-utilisation must cause detriment to the relevant investment. This means that acts of extraction or re-utilisation of data that cause detriment to the investment that has gone into, for example, creating the data in the database do not infringe the maker's right to the database.
The directive, however, does not only protect against the extraction and/or re-utilisation of substantial parts of a database. Article 7(5) further prohibits the repeated and systematic extractions of an insubstantial part of a database. However, when insubstantial parts have been extracted and/or re-utilised repeatedly and systematically, the maker must additionally show that this (i) conflicts with the normal exploitation of the database, or (ii) seriously prejudices the database maker's legitimate interest (echoing the Berne three-step test).
However, when confronted with the question of what constitutes an act that conflicts with normal exploitation and what seriously prejudices the database maker's interest, the ECJ struck a further blow against sui generis rights holders. It held that the maker must show that the cumulative effect of the repeated acts must result in the potential infringer being able to reconstitute and make available to the public all or a substantial part of the database's contents. Otherwise the acts do not seriously prejudice the investment made in the database's creation.
This line of reasoning is based on Common Position 20/95.(11) According to this, Article 5 introduced a safeguard clause so that Article 1 could not be circumvented by repeated or systematic acts of extraction and/or re-utilisation. On this basis, the ECJ found that the motive of introducing Article 5 was not to make the scope of protection broader. Therefore it follows that the repeated or systematic acts need to cumulate to an infringement under Article 1. Otherwise, the exercise of the maker's rights under Article 5 would mean that the scope of protection was broadened.
The ECJ has maintained a sharp distinction between owning and controlling data per se - which it believes the directive should not protect - and protecting the investment that goes into data storage and processing systems - which it believes the directive should. Although the four judgments concern the scope and protection of sports data, they are likely to have a much broader implication. It is ironic to consider that while the sui generis rights were enacted largely because telephone directories were not protected by copyright in most EU member states, the ECJ's judgment in these cases would probably deny sui generis protection to such directories as they derive from another activity (ie, attributing phone numbers to subscribers' phones). The very object that lobbyists have historically been trying to protect may well now fall outside the scope of protection.
First published on World Copyright Law Report's website (21 April 2005)
(1) Fixtures Marketing v Svenska Spel AB, paragraph 37.
(2) Recitals 10 to 12.
(3) For further background and case law relating to the spin-off theory, see Estelle Derclaye, "Database "Sui Generis" Rights: Should we adopt the Spin-off Theory?"  EIPR, N402-413.
(4) Ibid, p N 408.
(5) Fixtures Marketing v Svenska Spel AB, paragraphs 29 and 30.
(6) British Horseracing Board v William Hill, paragraph 25.
(7) Ibid, paragraph 67.
(8) The Proposal for a Council Directive on the Legal Protection on Databases (OJ 1992 C 156, p 4) did restrict the scope of protection conferred by the sui generis right to unauthorised extraction/re-utilisation for commercial purposes. The ECJ acknowledged this fact but found that as no reference to such purpose is found in Article 7, whether or not there has been an commercial interest involved is in fact irrelevant - British Horseracing Board v William Hill, paragraph 48.
(9) Ibid, paragraphs 54 and 55.
(10) Ibid, paragraphs 73.
(11) Common Position (EC) 20/95 adopted by the council on July 10 1995 (OJ 1995 C 288, p 14).