The ECJ surprised many when delivering its judgment in the long-awaited joint cases concerning horse racing and football fixtures.
In contrast to the Advocate General's Opinion published in July this year, the European Court of Justice (ECJ) has given a much narrower than expected interpretation of the database right relied upon by BHB.
Background
The original claim brought by BHB concerned the publication by William Hill of data concerning the runners and riders in British horse races on its website. At the English High Court, William Hill was held to have infringed the BHB's database right. The Court of Appeal appeared to agree in principle with the findings of the High Court, but acknowledging that the database right is a new right only recently introduced, referred a number of questions to the ECJ for guidance.
Judgment narrows scope of protection
The ECJ accepted that the BHB's central database falls within the criteria for protection by the Database Rights Directive. However, it called into question whether William Hill's activities amount to an infringement of those rights.
To infringe the database right, a person must extract or re-utilise a substantial part of the database. The ECJ looked at the data William Hill had published on its website, namely the date, time, place and name of the races, with the list of runners and riders. Since the BHB obtained this information in the course of its functions in co-ordinating races, the money spent constituted investment in this purpose, rather than in a database.
In addition, since the verification of this data took place at the time of creation, and not at a subsequent stage, the cost of the verification exercise also related to the creation of the data, and not to the creation of a database. The ECJ held that since the data extracted and re-utilised by William Hill had not required substantial investment by the BHB independent of the costs of creating the data, the data did not constitute a substantial part of the contents of the database.
In the original case, BHB had relied on an alternative claim: that William Hill had infringed by the repeated and systematic extraction and re-utilisation of insubstantial parts of the BHB's database. Here again, the ECJ came to a different conclusion than the UK High Court and the Advocate General. The ECJ held that the reasoning behind this provision of the Database Right Directive was to prevent repeated and systematic extractions of data, the cumulative effect of which would be to reconstitute or make available the whole or a substantial part of the contents of the database, and prejudice the investment made by the maker.
William Hill had only taken insubstantial parts of the BHB database, but had done this on a daily basis. However, the ECJ held that there was no possibility that the cumulative effect of William Hill's insubstantial extractions could lead to the taking and making available of the whole or a substantial part of the BHB's database. William Hill's activities were not therefore seriously prejudicing the BHB's investment in its database.
The English Court of Appeal will now have to apply the ECJ's findings to the facts of the case. No doubt, this judgment will be welcomed by William Hill, who many believed were fighting a lost cause. However, the effect of this ruling is far more widespread than simply the parties to the case.
Even though the English courts have sometimes been reluctant to follow ECJ rulings, the judgment in this case seems to allow little room for manoeuvre. The BHB may then have to fall back on copyright, where English law has historically provided protection for fixture lists (although even this may be challenged). In the meantime, there may be renewed efforts to prolong the life of the Levy Board.
Football Fixture Lists
Similar issues are being faced by football as a result of the ECJ's ruling, save that in a sense they have fared even worse.
The ECJ gave judgment also on three related football fixture cases all brought by a company known as Fixtures Marketing Limited in relation to cases in Sweden, Finland and Greece. The cases related to similar issues to the William Hill case.
The ECJ has held that finding and collecting the data that make up a football fixture list does not require any particular effort on the part of professional leagues.
Therefore, obtaining the contents of a football fixture list does not require any investment independent of that required for the creation of the data contained in that list.
The Court has therefore ruled that football fixture lists do not qualify for protection of the sui generis right of database protection, even though the list itself does constitute a database within the meaning of Article 1 (2) of the Directive.
Conclusion
Three important principles emerge from these cases in respect of database rights.
1. For the purposes of establishing a database right, there must be substantial investment in the collation of the data - investment in the creation of the data does not count.
2. The investment in collation must be primarily directed towards the database itself, not some other purpose (such as the organising of horse races) to which the database is ancillary.
3. Whether a substantial part of the database has been utilised should be seen in light of those parts of the database which are protectable, for example because there has been substantial investment in the collation of the database.
Copyright
The focus in terms of the protection of this type of information may now return to the question of copyright and the degree of originality required on the part of the author to give rise to such protection.
For further information please contact Susan Aslan at susan.aslan@olswang.com or Dan Tench at dan.tench@olswang.com
The information contained in this update is intended as a general review of the subjects featured and detailed specialist advice should always be taken before taking or refraining from taking any action.
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