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Bulletins Story:
DATABASE PROTECTION NARROWED: BRITISH HORSERACING BOARD v
WILLIAM HILL
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Date:
10 .11.2004
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The Database Right, which was thought to provide wide-ranging
protection for databases far beyond that afforded by standard
copyright, has been narrowed. On 9 November 2004, the European
Court of Justice finally ruled in the case of British
Horseracing Board v William Hill by giving answers to some key
questions regarding interpretation of the Database Right, which was
created by an EU directive and implemented in the UK by the
Database Regulations 1997. The ECJ ruled in William Hill's favour
by finding no infringement of BHB's Database Right.
The case involved the accessing of data from BHB's database of
pre-race information by William Hill bookmakers (via an
intermediary subscription service), which was then displayed on the
William Hill website. Given the immense amount of information in
the original database, it was accepted by both sides that William
Hill had only displayed a small proportion of the total amount.
During the second stage of the case in 2001, several key
questions were put to the ECJ by the UK Court of Appeal
including:
i. Is publicly-available information coverable?
ii. Does "extraction or re-utilisation" of data necessarily
involve access?
iii. Does "extraction or re-utilisation" of data extend to
subscribers?
iv. Do constant updates create a new right?
Key points
The first and most important point made by the ECJ involved the
scope of what can be protected. The 1997 Regulations established a
"Database Right" to offer protection to those who had made a
substantial investment in the assembly of a database. The ECJ held
that, as a pre-requisite for protection, the database owner must
have substantially invested in the "obtaining, verification and
presentation" of the contents, rather than in the creation of the
content itself. To illustrate using the far-fetched question of
whether an album is a "database", an audio CD of a band's songs
represents the band's substantial investment in the creation of the
content (i.e. recording the music) and a far less substantial
investment in the assembly of the "database", so the band would be
unlikely to have an enforceable Database Right. In this case,
the court found that BHB had spent their time and money on creating
the data (i.e. deciding which horses could run and starting
line-ups) rather than on subsequently obtaining, verifying and
presenting the listed data. The ECJ did, however, clearly say that
this rule would not necessarily exclude the creator of the content
from protecting his own database, so long as a distinct substantial
investment in the collation can be shown. Arguably, a database of
publicly available information would then be protectable, provided
such an investment is established.
The owner of a protectable database has the right to prevent the
unauthorised "extraction or re-utilisation" of the data. The court
held that this covers "any unauthorised act of appropriation and
distribution to the public of the whole or a part of the contents
of a database." The fact that the contents of a database were made
accessible to the public by its maker or with his consent does not
affect his right to prevent "extraction or re-utilisation". The
court further held that such acts are infringements even if done
without "direct access", which suggests that an intermediary
subscription services would not absolve an end-user. It was made
clear, however, that "mere consultation" of a database will not
constitute infringement.
The court clarified the always-difficult question of what
amounts to a "substantial part" of a database by stating that this
must be "evaluated both quantitatively and qualitatively" and must
be "assessed in relation to the total volume of the contents of a
database". The 1997 Regulations state that it is also an
infringement to "make insubstantial parts ... available to the
public in a systematic and repeated manner", but the court
qualified this by stating that such a cumulative effect must amount
to the equivalent of a "substantial part", or at least to a serious
prejudice to the investment made by the database owner. Assuming
that any database worth plundering would be quite large, it seems
that the court has raised the threshold for infringement
considerably.
Finally, the court declined directly to address the question of
whether there is an "everlasting" Database Right which is renewed
for a further 15 years every time the database is updated with new
data. It might be inferred from this ruling, however, that if an
update represents a "substantial investment" - qualitatively and
quantitatively - then a fresh period of protection might be
afforded.
Conclusions
In the UK, a database can potentially be protected in three
ways:
- LITERARY COPYRIGHT: The Copyright, Designs and Patents
Act 1988 specifically protects the contents of a "database" as a
special kind of literary copyright work, but only if the database
constitutes the author's "own intellectual creation".
- DATABASE RIGHT (aka "SUI GENERIS"): Where a database
fails the normal copyright tests of "originality" and the special
test of "own intellectual creation", this is the protection
discussed in British Horseracing Board v William Hill above.
- NON-DATABASE LITERARY COPYRIGHT: Even where a database
fails the special test of "own intellectual creation", it may still
qualify for protection as a literary copyright work if it is a
"work...which is written...or a table or compilation", provided the
author can show that it is not actually a "database" as defined in
the Act. Of course this sounds bizarre but some literary works,
such as a poem or a free-form prose piece, may inhabit an uncertain
middle ground.
Of these three possible rights for a database, two are the Ugly
Sisters of copyright, while the sui generis Database Right is the
Cinderella, making it very unsafe to generalise about databases.
After the clarifications in British Horseracing Board v William
Hill however, database owners may be giving the Ugly Sisters a
second look.
The full text of the judgment can be accessed via: http://www.curia.eu.int/jurisp/cgi-bin/gettext.pl?lang=en&num=79958890C19020203&doc=T&ouvert=T&seance=ARRET&where
Tom Frederikse
229
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