STIX-HACKL PRONOUNCES ON DATABASE PROTECTION: BUT WILL THE ECJ FOLLOW HER ADVICE?

Directive 96/9 on the legal protection of databases (“the database directive”)introduced a sui generis right that was designed to protect the contents of organised collections of data, even if the compilation of data fell far short of a work of authorship that was entitled to copyright protection. The nature of the sui generis right is defined by Article 7 of the database directive, which provides:

Article 7
Object of protection
1. Member States shall provide for a right for the maker of a database which shows that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.
2. For the purposes of this Chapter:
(a) 'extraction` shall mean the permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any form;
(b) 're-utilization` shall mean any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by on-line or other forms of transmission. The first sale of a copy of a database within the Community by the rightholder or with his consent shall exhaust the right to control resale of that copy within the Community; Public lending is not an act of extraction or re-utilization.
3. The right referred to in paragraph 1 may be transferred, assigned or granted under contractual licence.
4. The right provided for in paragraph 1 shall apply irrespective of the eligibility of that database for protection by copyright or by other rights. Moreover, it shall apply irrespective of eligibility of the contents of that database for protection by copyright or by other rights. Protection of databases under the right provided for in paragraph 1 shall be without prejudice to rights existing in respect of their contents.
5. The repeated and systematic extraction and/or re-utilization of insubstantial parts of the contents of the database implying acts which conflict with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database shall not be permitted.

Today Advocate General Christine Stix-Hackl has delivered Opinions concerning the interpretation of the database directive in no fewer than four cases that have been referred to the European Court of Justice (ECJ) for preliminary rulings. Three deal with databases of football fixtures, while the fourth deals with a database of horse-racing data. All of these cases raise issues concerning the true import of Article 7. The cases are:

* Case C-46/02 Fixtures Marketing Ltd v Oy Veikkaus Ab (referred from Finland)

* Case C-444/02 Fixtures Marketing Ltd v Organismos Prognostikon Agonon Podosfairou (referred from Greece)

* Case C-338/02 Fixtures Marketing Ltd v Svenska Spel AB (referred from Sweden)

* Case C-203/02 British Horseracing Board Ltd and others v William Hill Organization Ltd (referred from the United Kingdom)

The questions referred to the ECJ are too lengthy and complex to relate here, but the summary of the Advocate General’s Opinion goes as follows (all references to Articles are to provisions of the database directive):

1. Whether the works, data or other materials derived from the database have the same systematic or methodical arrangement and individual accessibility as in the original database is not relevant to the interpretation of the expressions ‘a substantial part … of the contents of that database’ or ‘insubstantial parts of the contents of the database’ in Article 7 (BHB).

2. The expression ‘obtaining’ in Article 7(1) must be interpreted as meaning that it also covers data created by the maker if the creation of the data took place at the same time as its processing and was inseparable from it (BHB).

3. The term ‘verification’ in Article 7(1) is to be interpreted as meaning that it is not limited to ensuring from time to time that information contained in a database is or remains correct (BHB).

4. The expression ‘a substantial part, evaluated qualitatively ... of the contents of that database’ in Article 7(1) is to be interpreted as meaning that the technical or commercial value of the affected part must be taken into account. The expression ‘a substantial part, evaluated quantitatively ... of the contents of that database’ in Article 7(1) is to be interpreted as meaning that the amount of the affected part is relevant. However, in both cases it is not solely the relative amount of the affected part as a proportion of the contents as a whole that is relevant (BHB; Svenska Spel).

5. The expression ‘insubstantial parts of the contents of the database’ in Article 7(5) is to be interpreted as meaning that such parts are more than individual data and less than ‘substantial parts’ within the meaning of Article 7(1) (BHB).

6. The term ‘extraction’ in Article 7 covers only the transfer of the contents of the database directly from the database to another data medium (BHB).

7. The term ‘re-utilisation’ in Article 7 covers not only the making available to the public of the contents of the database directly from the database, but also the making available to the public of works, data or other materials which are derived indirectly from the database, without having direct access to the database (BHB).

8. Acts which prevent the economic exploitation of the sui generis right by its proprietor even on potential markets are to be considered to be ‘acts which conflict with a normal exploitation of that database’. Acts which damage the legitimate economic interests of the maker to a degree which exceeds a certain threshold are to be considered to be ‘acts which unreasonably prejudice the legitimate interests of the maker of the database’ (BHB).

9. Article 10(3) is to be interpreted as meaning that any ‘substantial change’ to the contents of a database which qualifies the database for its own term of protection, entails that the resulting database must be considered to be a new, separate database, including for the purposes of Article 7(5) (BHB).

10. In assessing whether a database is the result of a ‘substantial investment’ within the meaning of Article 7(1), the purpose of the investment is not material. Investment for the purpose of drawing up the fixture lists in a databank must also be taken into account (Svenska Spel).

11. The protection granted by Article 7(1) and Article 7(5) against the ‘extraction’ of the contents of a database is confined to practices which entail direct exploitation of the database. The protection granted by Article 7(1) and Article 7(5) against ‘re-utilisation’ also covers the exploitation of the contents of a database where those contents are available from another source (Svenska Spel).

12. The expression ‘normal exploitation’ in Article 7(5) of the Directive must be interpreted as meaning that economic exploitation can be prevented by the owner of the sui generis right on potential markets too. The expression ‘unreasonably prejudice’ in Article 7(5) must be interpreted as referring to damage to the legitimate economic interests of the maker which goes beyond a certain threshold (Svenska Spel).

13. The term ‘database’ in Article 1 is to be interpreted as meaning that it can also cover lists of football fixtures (Organismos).

14. Article 7(1) must be interpreted as meaning that a database containing lists of football fixtures can be the object of protection, if qualitatively or quantitatively a substantial investment in the obtaining, verification or presentation of the contents is necessary. The maker of such a database has the right to prevent extraction and/or re-utilisation of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database (Organismos).

15. Article 7(5) prohibits the repeated and systematic extraction and/or re-utilisation of insubstantial parts of the contents of the database implying acts which conflict with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database (Organismos).

16. Article 7 in conjunction with Article 10(3) must be interpreted as meaning that extraction and/or re-utilisation is also prohibited in respect of a database to the contents of which there has been a substantial change, evaluated qualitatively or quantitatively, which is thus the result of a substantial new investment, evaluated qualitatively or quantitatively (Organismos).

17. The requirement in Article 7(1) for a link between the investment and the making of the database must be interpreted in the sense that the obtaining referred to in Article 7(1) and the investment directed at it refers, in a case such as that in the main proceedings, to investment which is directed at the determination of the dates of the matches and the match pairings themselves and the drawing up of the fixture list also includes investment which is not relevant to the appraisal of the criteria for granting protection (Oy Veikkaus).

18. The protection provided for by the Directive against extraction and/or re-utilisation must be understood as meaning that persons other than the authors of the fixture list may not, without authorisation, use the data in that fixture list for betting or other commercial purposes (Oy Veikkaus).

19. A substantial part, evaluated qualitatively and/or quantitatively, of the contents of a database may also be affected where, of the data in the fixture list, on each occasion only data necessary for one week is used in the weekly pools coupons, and where the data relating to the matches is obtained and verified from sources other than the maker of the database continuously throughout the season (Oy Veikkaus).

The IPKat will need a little time to digest all this. What he can say, though, is two things.

* One area of controversy is the result of updating an existing database: does it become a new database in respect of which a fresh period of 15 years protection may be enjoyed? The Advocate General advises that any ‘substantial change’ to the contents of a database which qualifies the database for its own term of protection means that the resulting database must be considered to be a “new, separate database”. This may be impossible to ascertain in practice: you can keep amending data on a database and it may change a great deal in terms of new content -- but can it ever be said to be “separate”? If incremental amendments are not adequately protected, however, the incentive to make databases available may be greatly reduced.

* The Advocate General has also advised that the requirement for a link between an investment and the making of the database must be interpreted in the sense that it refers, on the facts of the main proceedings, to investment which is directed at the determination of the dates of the matches and the match pairings themselves. This advice will be greatly welcomed by those who spend a lot of time on effort creating or ascertaining data which costs little or nothing to draw up in its final form.