European law firm Fieldfisher has won an important High Court victory on behalf of its clients, Ordnance Survey (OS) and GeoPlace, confirming the organisations' right to protect their data.
OS, which was founded in 1791 and is Great Britain's oldest and most significant provider of highly accurate geospatial data and printed maps, was in dispute with a company called 77M Limited, regarding their claim to have a right to use OS data, without a licence from OS.
77M initiated legal proceedings against OS in August 2016, seeking declarations from the Court that their product, known as Matrix, did not infringe OS' intellectual property rights.
OS defended the claim, and counterclaimed (together with co-defendant GeoPlace, an organisation (LLP) that oversees the production and maintenance of the national address and street gazetteers) for infringement by 77M of Crown/OS intellectual property rights.
The case was heard in the High Court in July 2019 over the course of a two-week trial.
In a judgment handed down today (8 November 2019), Mr Justice Birss held that 77M's use of OS data amounted to acts of infringement of database rights held by OS or Geoplace in mapping and address databases.
Specifically, Mr Justice Birss noted that:
"Someone who takes all or a substantial part of all the contents [of a third party's database], and transfers them to another medium so that they can use them, is appropriating to themselves a substantial part of the investment which went into creating the database (…) That is what 77M did."
The decision analyses the scope of infringement of database rights, in particular what is covered by acts of extraction of data and various statutory defences to claims for infringement.
Commenting on the outcome of the case, Nick Rose, Partner, IP and Technology, Protection and Enforcement at Fieldfisher, said:
"We are delighted to have brought this long-running and important case to a successful conclusion for our client.
"Today's judgment confirms that 77M's use of OS data when developing its Matrix product infringed OS's database rights and is an important decision for those businesses who make a significant investment in their databases and its contents."
Jon O'Meara, Head of Legal Services at Ordnance Survey, added:
"Ordnance Survey’s preference is to always seek to resolve disputes through discussion. However, Crown/OS intellectual property rights are extremely important to us, and we will take action where necessary to uphold these, both for the benefit of OS and our customers and other stakeholders."
A remedies hearing will now take place, which is expected in the next 2-3 months.
Background to the case
The case concerned a complex dispute between OS and a company called 77M Limited, in relation to intellectual property rights.
77M initiated legal proceedings against OS in August 2016 seeking declarations from the Court that their product known as Matrix did not infringe intellectual property rights of Ordnance Survey.
OS defended the claim, and counterclaimed (together with GeoPlace) for infringement by 77M of Crown/OS intellectual property rights.
The Court’s decision recognises and confirms the value of intellectual property rights (in particular, database rights) in OS and GeoPlace data, which both organisations invest significant resources in every year to ensure the quality of the information on which their customers rely.
The key question for OS and GeoPlace from the outset of the case was how 77M had been able to create a product on a national scale which included address data linked accurately to locations, without using OS and GeoPlace intellectual property rights.
The judgment confirms that 77M’s product used information and processes, which amounted to acts of infringement of database rights held by OS and GeoPlace.
In particular, the judgment states (at paragraph 123) that “Matrix in its current form would not be a viable dataset of addresses and accurate geospatial co-ordinates”, without using such infringing data.
The key elements of the judgement are as follows:
77M were found to have breached the terms of licences with HM Land Registry (HMLR) and Registers of Scotland (RoS), who are Ordnance Survey licensees, in relation to various information produced using OS data.
77M were found to have scraped 3.5 million addresses from HMLR’s Find a Property Service in breach of the applicable terms.
77M’s use of the above information obtained from HMLR and RoS amounted to acts of infringement of database rights held by OS and GeoPlace.
7M failed in their claim that OS had procured a breach of contract by HMLR.
77M were found not to have breached the terms of a licence known as the INSPIRE Download terms. (Note that the relevant terms were entered into by 77M in 2013 and have since been clarified).
77m's use of about 480,000 addresses manually downloaded from HMLR’s Find a Property Service was found not to infringe OS database rights, as the use fell within one of the statutory defences under the Database Regulations.
Ordnance Survey was represented by Fieldfisher, and Lindsay Lane QC and Jessie Bowhill from 8 New Square.
77M was represented by Laceys of Bournemouth, and Jaani Riordan, also of 8 New Square.
Fieldfisher is a European law firm with market leading practices in many of the world's most dynamic sectors. We are an exciting, forward-thinking organisation with a particular focus on energy & natural resources, technology, finance & financial services, life sciences and media.
The firm has one of the largest and most highly-regarded intellectual property practices in London and has a particular reputation for expertise in database rights.
Our network has more than 1,550 people working across 25 offices providing highly commercial advice based on an in-depth understanding of our clients' needs.
We operate across our offices in Amsterdam, Barcelona, Beijing, Belfast, Birmingham, Bologna, Brussels, Dublin, Düsseldorf, Frankfurt, Guangzhou, Hamburg, London, Luxembourg, Madrid, Manchester, Milan, Munich, Paris, Rome, Shanghai, Turin, Venice and Silicon Valley.
Fieldfisher was named as a highly commended firm by FT Innovative Lawyers Awards 2019.
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