In a Judgment handed down today the European Court of Justice (ECJ) has clarified the circumstances in which a database may be protected by copyright under Article 3 of the Database Directive (Directive 96/9/EC) and restated the existing law determining when a database may be protected by the ‘sui generis’ database right under Article 7 of the Directive.
Data-rich companies will not welcome the clarification in this judgment that the investment in creating data may not be taken into account in determining whether such companies may own intellectual property rights in their databases.
The ECJ ruling relates to questions posed by the English Court of Appeal in the case of Football Dataco Limited, Football Association Premier League Ltd, Football League Limited, Scottish Premier League Limited, Scottish Football League and PA Sport UK Limited v Yahoo! UK Ltd and others.
The Claimants set the fixtures for the English and Scottish football leagues and create lists comprising the fixtures. The Defendants use the Claimants’ lists without paying licence fees to the Claimants. The Claimants issued proceedings in the English High Court for infringement of their copyright in the lists as databases under English law, infringement of their copyright in the lists as databases under Article 3(1) of the Database Directive, and infringement of their ‘sui generis’ or standalone database right under Article 7 of the Database Directive. The Defendants claimed that no such rights exist at law and that they were entitled to use the lists in the conduct of their business without having to pay licence fees to the Claimants.
High Court Judgment
At first instance, the English High Court held that the fixture lists were eligible for protection under Article 3 of the Database Directive on the ground that the preparation of the lists requires a substantial amount of creative work. The finding that the lists could not be protected by the ‘sui generis’ database right was consistent with the earlier decisions of the ECJ in the Marketing Fixtures and British Horseracing Board cases where it held that the investment in creating data should not be taken into account when determining whether a database would be protected by the database right. The only investment that may be considered is the “substantial investment in either the obtaining, verification or presentation of the contents”.
Court of Appeal
The parties appealed and the English Court of Appeal upheld the High Court’s judgment that the fixture lists could not be protected by the ‘sui generis’ database right. However, the Court of Appeal questioned whether the lists could be protected by copyright under Article 3 of the Directive. The Court of Appeal also questioned whether the lists could be protected by copyright pursuant to UK legislation when the conditions for protection under that legislation differ from the conditions for protection under Article 3 of the Directive.
Questions referred by the Court of Appeal to the ECJ
The Court of Appeal referred the following questions to the ECJ:
1. In Article 3(1) of the Database Directive … what is meant by “databases which, by reason of the selection or arrangement of their contents, constitute the
author’s own intellectual creation” and in particular:
(a) should the intellectual effort and skill of creating data be excluded;
(b) does “selection or arrangement” include adding important significance to a pre-existing item of data (as in fixing the date of a football match), and
(c) does “author’s own intellectual creation” require more than significant labour and skill from the author, if so what?
2. Does the Database Directive preclude national rights in the nature of copyright in databases other than those provided for by the Database Directive?
Judgment of the European Court of Justice dated 1 March 2012
The ECJ followed the Opinion of Advocate General Mengozzi dated 15 December 2011.
In answering question 1(a) the ECJ found that:
• Article 3(1) of the Database Directive is intended to provide copyright protection to the structure of a database and not its contents.
• Therefore, the concepts of ‘selection’ and ‘arrangement’ within the meaning of Article 3(1) refer to the selection and arrangement of data, through which the author of the database gives the database its structure.
• Crucially, those concepts do not extend to the creation of the data contained in the database, meaning that the effort in creating the data will not be taken into account when determining whether a database is protected by copyright under Article 3(1).
When will the structure of a database be protected by Article 3(1)?
The ECJ held that the structure of a database will be protected when it is “original”. In determining what is meant by “originality” in the context of Article 3(1), the CJEU stated:
1. As regards the setting up of a database, that criterion of originality is satisfied when, through the selection or arrangement of the data which it contains, its author expresses his creative ability in an original manner by making free and creative choices.
2. By contrast, that criterion is not satisfied when the setting up of the database is dictated by technical considerations, rules or constraints which leave no room for creative.
As a consequence, in response to question 1(c) the ECJ ruled that expending significant labour and skill in compiling a database will not be sufficient to give rise to copyright protection under Article 3(1) unless the author has also expressed originality in the selection or arrangement of the data contained in that database. The CJEU did not seek to explain what the threshold for originality might be, stating that this question “is a matter for the national court to determine”, which, in due course, the Court of Appeal will do.
In defining “originality” by reference to “creative ability”, the ECJ appears to have introduced a requirement for copyright protection (albeit limited to the protection of databases) that has not existed previously in this country.
The ECJ’s judgment on questions 1(b)
The ECJ ruled that it is irrelevant whether the selection or arrangement of the data includes the addition of important significance to that data.
Where does this leave the protection of databases?
In short, the ECJ has confirmed that the protection of databases is a narrow concept. It is now for the English Court of Appeal to determine whether the Claimants’ fixture lists contain the necessary degree of originality to be afforded protection under Article 3(1).
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