"Making available" only happens where it happens

On Wednesday Mr Justice Floyd handed down his keenly-awaited ruling in Football Dataco Ltd, The Scottish Premier League Limited, The Scottish Football League Limited and PA Sport UK Limited v Sportradar GmbH & and Sportradar AG [2010] EWHC 2911 (Ch), a sharply-contested battle that took place in the genteel surroundings of the High Court, Chancery Division, for England and Wales. The result: we now know something which many of us already suspected -- that where an alleged infringement consists of the act of making a work available to the public, "making available" by online transmission is committed (and only committed) where that transmission takes place.

So what happened in this case? The claimants ("FDC" for ease of reference) exploited certain data relating to English and Scottish football matches. This data, which was compiled in a database known as "Football Live", included goals scored, goalscorers, penalties, yellow and red cards and substitutions. That data was both updated and provided to third parties while matches were actually taking place. The defendants, Sportradar, were a German company and its Swiss parent. What did they do? They assembled data relating to live English and Scottish football matches from public sources and called it "Sports Live Data". Their data was stored on webservers in Germany and Austria but could be accessed via links from elsewhere, including the United Kingdom.

FDC launched proceedings in April 2010, alleging infringement of their UK copyright and database right. No, said Sportradar -- whatever they might be up to, they weren't doing it in the UK; nor were they domiciled in the UK. The courts of England and Wales therefore had no jurisdiction. The German Sportsradar then cunningly sued FDC in Germany in July, seeking negative declarations that its activities did not infringe any of FDC's IP rights.

Back in England, FDC then applied to amend their Particulars of Claim in order to clarify the nature of the acts which they alleged to constitute infringements and also to add some new ones.

Floyd J started by warning that it was important to examine with some care what, if any, claims were made in the original Particulars of Claim. This was because Sportradar argued that, by virtue of its application for declarations of non-infringement, the German Court was first seized of any claim which the English Court was not properly seized of before July. That exercise had to be carried out without the benefit of the amendments for which permission had not yet been granted. Jurisdiction with regard to the German company was governed by the EU's Judgments Regulation and, in the case of the [non-EU] Swiss company, by the Lugano convention. Could FDC show a "good arguable case" of UK copyright and/or database right infringement in order to establish jurisdiction in the UK? On the basis of the evidence, he said "no": Sportradar had not done any act of reproduction (in respect of copyright) or extraction (in respect of database rights) in the UK. As for re-utilization in respect of database right, Article 7(2)(b) of the Database Directive stipulated that

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.

This raised a question of law of where the act of "making available" occurred. The issue was closely related if not identical to an issue raised on the amendment application of where "making available" occurred for the purpose of section 20 of the Copyright Designs and Patents Act 1988.  He had to face this issue since, where a question of whether the Court has jurisdiction turns on a pure question of law, that question has to be decided.

Referring by way of analogy to the debate as to where a "broadcast" occurred (was it at the place of transmission or also at the place of receipt?) he pointed to the Satellite Broadcasting and Cable Re-transmission for broadcasts orginating within the EU. Under that directive, a broadcast occurs where the signals are introduced under the control of the person making the broadcast into an uninterrupted chain of communication (the "emission theory"). Said Sportradar, the emission theory should equally apply to the making available right and to re-utilization, since the act which statute deems to be the infringement is a "making available" and the public do not have to actually access the database to infringe. The judge agreed: that right would prevent transmission or re-transmission in a state to which the Directive applies and other restricted acts would prevent further use of the database within the state of reception. He said:

"... the better view is that the act of making available to the public by online transmission is committed and committed only where the transmission takes place. It is true that the placing of data on a server in one state can make the data available to the public of another state but that does not mean that the party who has made the data available has committed the act of making available by transmission in the State of reception. I consider that the better construction of the provisions is that the act only occurs in the state of transmission".

Though the point was not acte clair, Floyd J felt that he could still rule on it and therefore decided not to refer the point to the Court of Justice of the European Union, particularly since the issue was not determinative of whether the court had jurisdiction at all. This was because he interpreted the Particulars of Claim as alleging acts of reproduction and extraction by Sportradar's end users in the UK who downloaded the data from the their servers. Although the customers/end users were not party to the proceedings, the pleadings alleged that Sportradar had authorised and/or was jointly liable for, the acts of the end users/consumers.  On this basis, the English court had jurisdiction to rule on whether Sportradar had authorised, or was jointly liable for, the acts of reproduction, extraction and re-utilisation of a substantial part of the Football Live database.

Turning then to FDC's application to amend its application, he felt that he could not allow any amendment which raised a new cause of action if it was already within the scope of the German proceedings.  He therefore allowed the amendments which gave further particulars of joint tortfeasorship by Sportradar and which pleaded communication to the public by its customers --  but not an amendment alleging making available by Sportradar itself under the Copyright Designs and Patents Act 1988, section 20.

The IPKat reminds readers that the battle has only just begun.  We can expect some stunning litigation before two of the best squads judicial brains in the European Champions League -- the British and the Germans -- and even the prospect of a replay or two at appellate level.

Sportradar here
Cat radar here
Bat radar here

This note was prepared with the assistance of a press release from Bird & Bird, who acted for Sportsradar in these proceedings.