IPKAT GUEST BLOG, AUGUST 2003

Our ever-so-slightly belated guest blogger for August 2003 is Naomi Gross. Naomi, a solicitor in the Intellectual Property Department of London solicitors Herbert Smith, has made a name for herself with some recent articles in the European Intellectual Property Review on exhaustion of rights. But in this blog Naomi tackles another subject entirely -- hypertext links and infringement of database right. Naomi writes:

"In hypertext linking the interface between law and technology requires consideration of several different intellectual property rights –copyright, passing off and database right. It is now some six years since the Scottish Court of Session found an arguable copyright infringement and granted an interim interdict preventing the Shetland News from creating hypertext links on its website to news stories on the Shetland Times website (Shetland Times v Wills). How has the law evolved since then? There has been a disappointing dearth of further guidance from the English or Scottish courts. In fact, Lord Hamilton’s decision remains the only decided UK case. However, a number of cases have been brought in other European countries, mostly based on infringement of database right.

In January 2001 StepStone announced it had obtained an injunction in Germany against OFiR.com, the Danish media group, preventing OFiR deep linking to StepStone’s website. Both companies offered online recruitment portals in several European countries, including Germany and the UK. StepStone sought the injunction because OFiR used the link to substantiate a claim about the large number of jobs available at OFiR’s website, and because the deep links meant that visitors to StepStone’s site via the links bypassed the banner advertising on the home page. This case was hailed as the first (or virtually the first) time a web proprietor had used the Database Directive to prevent hypertext linking to its website. While the German judgment is confidential, the likely rationale for the decision is that the links created by OFiR were a reutilisation of a substantial part of StepStone’s website, as these links made certain of StepStone’s web pages available to the public.

In another German case, the Landgericht Cologne held that the framing of poems from an online database of poems maintained by the claimant was an infringement of the database right (Derpoet.de v. *.de). The infringement consisted of the defendant allowing access to the claimant’s database via its own servers. Similarly, the Tribunal de Grande Instance de Paris ordered a defendant to pay damages to a web publisher for infringement of the database right as a result of deep linking to an employment agency website (Keljob v. Cadremploi ).

By contrast, in Kranten.com, the District Court of Rotterdam upheld the right of a news search engine (Kranten.com) to display the headlines of newspaper articles on the claimant’s website as links to the full articles (Algemeen Dagblad v Eureka Internetdiensten [2002] ECDR 1). The Dutch court found that the data used by the defendant did not qualify as a database because the claimant newspapers had not made the requisite substantial investment in the headlines themselves. The court also commented that the claimants could have prevented the deep links by technical means. As far as arguments regarding lost advertising revenue were concerned, the court was unimpressed. The claimants showed no real damage and the amount of traffic to their site probably increased as a result of the defendant’s links.

While no UK court has dealt directly with infringement of database right in the linking context, the decisions of Mr Justice Laddie in the High Court and of the Court of Appeal in British Horseracing Board Limited v. William Hill [2001] ECDR 257 and [2002] ECDR 41 suggest that the English courts are inclined to interpret the provisions of the Database Directive very broadly. It can only be a matter of time before a UK court may be prepared to entertain the possibility that certain unauthorised links infringe the database right".