This article was included in the winter 2011/12 issue of snIPpets - the intellectual property newsletter.
Advocate General Opinion narrows the range of databases eligible for copyright protection
Advocate General Mengozzi issued his Opinion on 15 December 2011 on a number of questions about the copyright protection afforded to databases under the Database Directive ("Database Copyright"). The Opinion clarifies that, when assessing whether a database is eligible for protection, the courts should not take into account effort spent creating the raw data from which the database is compiled, but only the effort spent selecting or arranging the contents of the database. Businesses that create their own data and compile that data into databases will be concerned that, if the Court of Justice of the European Union (CJEU) follows the Opinion, a large proportion of their effort and investment must be disregarded. The remaining effort may not be sufficient or may not be of the right type to allow the database to qualify for Database Copyright. From the user-perspective, the Opinion confirms that Database Copyright is not a back-door route for protecting content that would not otherwise qualify for copyright protection.
The Database Directive affords two types of protection to databases:
(i) Database Copyright, which in broad terms gives the rights-holder exclusive rights to copy, translate, adapt and distribute the database, and
(ii) a separate, exclusive right to prevent extraction and/or re-utilization of the whole or a substantial part of the database contents ("Database Right").
The criteria for Database Copyright and Database Right differ. Database Copyright protects databases that "by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation", while Database Right subsists if there has been substantial investment in obtaining, verifying or presenting the database contents. The two rights are entirely independent, so that a database might be protected by both rights, or by one only, or by neither.
The Advocate General's Opinion flows from questions referred to the CJEU by the Court of Appeal in Football Dataco Ltd & Others v Yahoo! UK Limited & Others . Football Dataco and the other claimants ("Dataco") organise the English and Scottish football leagues, drawing up and publishing fixture lists. The defendants use those fixture lists to provide news and information and to organise betting activities. Dataco argued in the UK High Court and in the Court of Appeal that the defendants should pay for the right to use the fixture lists, on the basis that the lists are protected by Database Copyright and by Database Right. Both the High Court and the Court of Appeal followed earlier decisions of the CJEU and held that there was no Database Right in Dataco's football fixture lists. However, although the creation of the fixture lists involved considerable skill and labour, it was not clear whether this was this right kind of skill and labour to qualify for Database Copyright. Dataco argued that by selecting the matches to be played on a particular day, it was "selecting the contents" of the database. The defendants argued that the data that is "selected or arranged" must be pre-existing data. The Court of Appeal decided that the issue should be determined by the CJEU.
Selecting and arranging the contents: creating the data v creating the database:
In 2004  , the CJEU dealt a blow to businesses that compile databases from their own data. The CJEU effectively tightened the criteria for Database Right protection in such a way that these types of database were far less likely to qualify for Database Right protection. In its 2004 ruling, the CJEU stated that, when assessing whether a database was protected by Database Right, the courts should not take into account resources and effort spent creating the contents. The Advocate General's view is that the same principle should apply when assessing whether a database qualifies for Database Copyright. In other words, effort expended in creating the contents of the database is not relevant and should be disregarded; rather it is the arrangement of the contents that counts,
In reaching this view, the Advocate General considered the purpose of the Directive. He concluded that Database Copyright protects the structure of the database, in other words, "the way that it has actually been put together through the selection of the data to be included or the way in which they are presented", whilst Database Right protects and is intended to encourage investment in collecting data. The Directive is not concerned with protecting the contents of the database as such, although those contents might nonetheless be protected by copyright if they are copyright works in their own right. It was therefore logical that "data creation" should be disregarded for the purposes of assessing Database Copyright.
In practice, the distinction between "data creation" and "database creation" is easy to draw where the database is populated with pre-existing data or with data created by someone other than the compiler of the database. The distinction will be less clear where the two activities are carried out by the same entity in a single or continuous process.
Intellectual creation – more than just skill and labour
The Advocate General also gives his opinion on what is meant by the requirement under the Directive that a database must constitute the author's "own intellectual creation". Effort and skill are not sufficient. The database must be characterised by a "creative" aspect. Whether that creative aspect is present will be a matter for the national courts to decide based on the facts in each case. Nonetheless, the Advocate General suggests that this creative aspect might be present in the means of representation of the data in the database, for example, through colours or other graphic elements or if its inclusion in the database adds value to the basic data.
No other form of copyright applies to Databases
The Advocate General also confirmed that the Database Directive does not leave room for Member States to apply their national copyright laws to protect databases that do not qualify for Database Copyright. To permit Member States to protect "non-qualifying" databases in this way would undermine one of the main purposes of the Directive, namely the harmonisation of copyright protection for databases across the EU.
Although the Advocate General comes close, he does not quite shut the door on copyright protection for databases compiled from a business's own data. If the CJEU follows the Advocate General Opinion, organisations that create these types of databases and that want to have some control over their exploitation by others will need to consider:
- how the database might be structured so as to "add value" to the basic data
- how the data is represented, and whether there is scope for "creativity".
Even if Database Copyright subsists, it is important that the limitations of this right are recognised. The Advocate General emphasises that Database Copyright protects the structure of the database, not the data itself. It is therefore of limited benefit to rights-holders who want to prevent unauthorised use of the raw data within the database. In that sense, the horse bolted in 2004, with the CJEU rulings in the Fixtures Marketing and British Horse Racing Board decisions.
Emily Parris, Senior Associate (PSL), IP and Technology, Technology and Outsourcing at Fieldfisher.
  EWCA Civ 1380, on appeal from  EWHC 841 (Ch)
 Fixtures Marketing v Oy Veikkaus (C-46/02); Fixtures Marketing v Organismos Porgnostikon etc (C-444/02); Fixtures Marketing v Svenska (C-338/02); British Horseracing Board & Others v William Hill (C-203/02)