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Defending in numbers: Claiming database rights

12/11/2020

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United Kingdom

Information is lucrative currency in many industries, from sports fixtures and betting organisations to mapping, but protecting the investment that goes into collecting and presenting this data is proving a major intellectual property challenge. Nick Rose and Miryam Boston examine the difficulties of claiming database rights.

 
In a world increasingly driven by data, intellectual property (IP) rights to the storage, organisation and presentation of information have become extremely valuable assets.

A number of companies have set up specifically to collect and distribute data – for example, for live sports media groups and betting companies – creating a thriving new industry.

Although not new or unique to sport, the growth of data aggregation as a revenue-generator is particularly prominent in professional sport and has sparked fierce disputes over database rights, in the UK and internationally.

The law

Under EU law, the contents of a database may be protected by a database right.

The EU's Database Directive, implemented in the UK by the Copyright and Rights in Databases Regulations 1997, was passed to harmonise legal protection given to databases in EU member states.

The Directive defines a database as "a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means".

It provides for two separate forms of IP protection for databases: copyright and a sui generis right.

Copyright protection for databases, outlined under Article 3(1) of the Directive, provides:

"Databases which, by reason of the selection or arrangement of their contents, constitute the author's own intellectual creation shall be protected as such by copyright. No other criteria shall be applied to determine their eligibility for that protection."

Database copyright is essentially about how creative the structure of the database is, and is notoriously difficult to claim, due to the dual challenges of proving originality in a database structure and evidencing infringement.

The sui generis right is defined under Article 7 of the Directive as:

"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-utilisation of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database".

The UK regulations define a database in exactly the same terms as the Directive.

While establishing the necessary components (i.e., independent works, arranged in a systematic or methodical way, that are individually accessible) sounds straightforward, in practice, claiming the sui generis database right can be highly technical.

For database right to subsist, the UK regulations also echo the Directive in stating that there must be "substantial investment in obtaining, verifying or presenting the contents of the database".

The Directive's provision that investment can be made "qualitatively and/or quantitatively" means this is not limited to financial investment and can include human or technical effort.

It is essential for anyone claiming this right to demonstrate that their investment has been in the obtaining, verification or presentation of the contents, rather than in the creation of the data.

In 2004, the European Court of Justice (CJEU) clarified this point in the case of British Horseracing Board v William Hill (C-203/02), which concerned a database developed by the British Horseracing Board (BHB) containing, among other things, extensive pre-race information which the database makers had gone to great lengths to put together.

BHB attempted to claim the sui generis right for its database and show that this had been infringed by William Hill, which was using the database to sell bets. Even though BHB had invested considerable resources in its database, the CJEU found that the investment was in the creation of the data and therefore not the type of investment required for the sui generis right to subsist.

This case underscored that the right under the Directive protects investment in seeking out and collecting existing independent materials and presenting them in a database, but does not protect investment in the creation of data.

A sporting chance of success?

As the William Hill case illustrated, just because something is called a database, this does not necessarily mean it automatically qualifies for protection under the Database Directive.

When it comes to meeting the legal criteria for a database, the sports sector presents good opportunities to create qualifying products, as long as they meet the necessary criteria.

Significantly, there is a difference between (a), fulfilling the EU Directive's definition of a database (see components 1-3 below); and (b), qualifying for the database right by proving the appropriate allocation of investment (see component 4 below).

Fulfilling the Directive's definition of a database

1. Independent works

The results of sports games are regarded as independent works, as a database maker does not have any control over them and many people could conceivably access the exact same information.

Fixture lists, as the William Hill case illustrated, may or may not be independent works.

The question a judge will ask is: Could anyone else have gone through a similar process to create those lists? If not, then the data is likely to be regarded as created, rather than independent, and will not be an independent work.

Case law indicates that recording existing facts, such as goals scored, is not creating new information, and these are treated as independent. For anyone seeking to claim rights over data therefore, it is important to keep the exercise and investment in creating the database structure separate from obtaining and verifying its contents.

Evaluating the quality of a move, shot or performance is a greyer area, and a decision about whether the recorded information was obtained or created will depend on the facts. Even if such information is created, if it then goes through a process of being collated and verified, its inclusion in the database could still be protected by the sui generis right.

This is one of the areas many people find confusing about database rights, since in general, the concept of IP seems designed to protect creativity.

With database rights, however, the law seeks to reward the endeavour of collecting and organising information and making it available to others. This is something that is made clear in the Directive itself and is also central in the minds of judges when determining cases regarding database rights.

The creation of data can attract protection in the form of copyright, if the information is particularly original. And, as more companies employ data scientists to help them handle the way they structure data, it is possible that the scope for arguing database copyright will increase.

However, there can be a tension between arguing both copyright and database right, as the sui generis right argument may be jeopardised by claims of creativity.

2. Systematic or methodical

The requirement for data to be presented in a systematic or methodical way is fairly easy to satisfy, given that there are relatively few ways of usefully ordering information and sports helpfully tend to have numerous existing statistical categories.

For example, in 2004, a company called Fixtures Marketing, which is backed by the English Football Association, and maintains lists of fixtures resulting from pre-season match draws for the Premier League, Football League and Scottish Football League, claimed that its database rights had been infringed by a Greek company, which used the data in pools betting in three other EU countries.

The defendant argued that Fixtures Marketing's information was not protectable as a database because the data was not systematically or methodically organised, since the football teams were paired by drawing lots to create the fixtures.

The CJEU rejected this argument, on the grounds that the lists also contained data such as the time and date and fixtures, which qualified as systematic or methodical parameters.

Claiming copyright for particularly original ways of structuring databases has proved equally challenging, as it is almost impossible to prove whether a structure has been copied.

3. Individually accessible

The criterion that a database must be individually accessible is relatively simple to satisfy, given that anything written down, manually or electronically, can be accessed individually by a person reading it.

In the case of Technomed Limited and another v. Bluecrest Health Screening Limited, UK High Court, [2017] EWHC 2142 (Ch), the High Court found that something as simple as a PDF of a document (in this case, the PDF contained a copy of Technomed's database of patient data), can be considered a database, as a PDF can be accessed individually "by reading the PDF with the human eye". Thus, the information contained in a PDF can be protected by database right under the Directive.

The Directive does however explicitly exclude recordings, audiovisual, cinematographic, literary or musical works, on the basis that the components that combine to make up these works cannot be individually accessed (see Article 17).

Qualifying for sui generis database right

Substantial investment

Although the "substantial investment" criterion does not sound difficult to demonstrate in financial terms, it can be hard to show precisely where money has been spent and even tougher to prove how much time and effort has been expended.

Even if a budget has been allocated to the development of a database, the claimer of the right must show how much of it was spent on obtaining, verifying and presenting the data, as opposed to other outlays that may have been involved. It is essential therefore to keep accurate records of the investment and exactly what activities are covered.

Eligibility

In order to qualify for database right, the maker of the database must also be an eligible entity.

Natural person

Unlike database copyright, where the first owner will be the "natural person" who created the database, the sui generis database right is only available to the person (usually the corporate entity) who takes the initiative and assumes the risk of obtaining and verifying the contents.  

EU-based

For the purposes of the Directive, to qualify for the sui generis database right, the database maker must be an EU-based business.

After the transitional period for Brexit, in the absence of any agreement to the contrary, the implementation of the Directive in the UK will change, so the right is only available to UK-based makers (although existing database rights of entities based in other EU Member States will continue) and UK-based entities will no longer be eligible for the EU right.

Assumption of risk

Unlike copyright, if a database has been commissioned, for example, if a betting company has outsourced its sports data collection and processing to another company, the person or entity that commissioned the work is usually the one that assumes the risk and puts in the investment and therefore qualifies for the database right.

Licenced rights holder

As with all IPRs, it is possible to assign and/or licence database rights from the maker of the database to another entity. Although the legislation is unclear on whether any subsequent owner needs to also be an EU-based business, it is generally prudent to ensure that it is to avoid any unnecessary issues.

The owner or exclusive licensee of the database right can initiate proceedings for infringement of database right, so it is important to check that any potential claimant is the correct holder of the relevant right at the time.

When disputes over ownership arise, who can claim the right will come down to which party has done which aspect of work, favouring whoever can show they have assumed risk in obtaining, verifying and presenting a database's contents.

Increasingly, infringement of database rights are likely to affect more than one right holder. As databases become more complicated and interconnected with data sources and distributors, it is helpful to be able to map data flows – showing where the data has come from and which organisations it may have passed through – to ascertain a complete picture of possible rights.

The issue is further complicated by the growing use of artificial intelligence (AI) to obtain and process data; as things stand, the person who invested in the development of the AI tool is likely to attract the sui generis right, although the position is less clear for database copyright.

Infringement

Assuming a claimant can prove that (a) a database right exists and (b) that they own that right, they are in a position to claim that the right has been infringed.

Infringement of database right can occur on three levels: extraction and/or re-utilisation of the whole or substantial part of the database, or by repeated and systematic extraction/re-utilisation of an insubstantial amount of the database.

Extraction is 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.

Re-utilisation is any form of making available to the public all or a substantial part of the contents of the database by distribution.

Crucially, making available requires the infringer to have targeted the public in the relevant jurisdiction with the data, as simply allowing access is not sufficient.

Whether or not a database has been infringed will be evaluated qualitatively and/or quantitatively, in a similar way to copyright.

Given that infringement is protected by EU law, the location where the infringing act (either the extraction and/or the re-utilisation) happened is important and can be complicated – especially where a server is located (and the data is held) in a different country to the potential infringer.

The future for database rights

It is likely that litigation around alleged database right infringement will increase in all areas. There are certain industries such as sporting data where this is likely to be more rapid, as seen from the trend in case law. 

Demands by stakeholders to police database infringement could be an opportunity to develop new kinds of technology, and there is scope for increasingly comprehensive commercial agreements around the licensing of data.

Given the considerable and growing value of data, the stakes are high and how the law in this area evolves will be watched closely.
 
A version of this article was first published by Global Data Review.
 
This article was authored by Fieldfisher IP partner Nick Rose and associate Miryam Boston, both of whom specialise in IP and technology, protection and enforcement. For more information on the firm's IP expertise and its particular specialism in database rights, please visit the relevant pages on the Fieldfisher website.
 

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