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:
- Is publicly-available information coverable?
- Does “extraction or re-utilisation” of data necessarily involve access?
- Does “extraction or re-utilisation” of data extend to subscribers?
- 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.