By Laurence Kaye, Laurence Kaye Solicitors, Specialist in digital media law
Abstract: The purpose of the EU Directive on the legal protection of databases of 11 March 1996 (the Database Directive), which has now been implemented by all member states, was to create a harmonised legal regime for the protection of databases in Europe.
It did this in two ways. First, by inventing a new right – the database right (also known as the ‘sui generis’ right) – to protect substantial investment made by database producers in obtaining, verifying and presenting database contents. Second, it harmonised the rules governing copyright in databases. Whereas the database right protects investment, database copyright only arises where the structure of the database, including the selection and arrangement of the database’s contents, meets a test of intellectual creativity on the part of the individuals who designed it.
The database right has proven to be a useful tool in protecting valuable corporate data. But it has its critics too, who accuse it of potentially ‘locking up’ factual information. (In fact, it does not restrict the irregular use of insubstantial amounts). Furthermore, a number of decisions of the European Court of Justice have caste doubt over the true scope of the database right.
In my view, the database right has often been misunderstood. Databases are ubiquitous in the digital world and the database right has an important role to play in protecting substantial investment in databases.
Ahead of the game?
Usually, the law plays ‘catch up’ in the digital world, as each technological development raises novel legal questions. With that in mind, can you think of a law in Europe which pre-dates search and social media and yet was ahead of its time, digitally speaking?
There is one – the 1996 Directive on the legal protection of databases. Its origin dates back to the European Commission’s far sighted ‘Green Paper on Copyright in the Information Society’ which was published in 1988, before the Internet had emerged from the worlds of the military and academia and before Tim Berners-Lee had developed the Web. Whilst the Green Paper’s focus was on copyright, it correctly foresaw the significance of ‘databases’ as the storehouses of content in the information age, and the need to encourage and protect database investment. Just substitute “website” for “database” and you will immediately see the point.
Before the Directive was introduced, there was a mixed bag of legal protection for databases. In the UK and Netherlands, databases were protected by literary copyright as ‘sweat of the brow’ works such as tables or compilations. But in other European Union countries, such as Germany, they were often unprotected because they did not meet the higher threshold of authors’ ‘intellectual creativity’ that those countries required for copyright protection.
So the solution adopted by the Database Directive was to introduce a two tier level of protection for databases. It raised the threshold for copyright in a database to a higher level of ‘author’s own intellectual creation’ in the ‘selection and arrangement’ of the database’s contents. It also introduced the new 15 year, renewable database right (also known as the ‘sui generis’ right) to protect ‘substantial investment’ made by a European database producer in obtaining, verifying and presenting the database’s contents.
The database right is therefore an entirely new creature of European law and has no direct counterpart outside the European Union. The Database Directive was eventually adopted by the European Council in 1996 and has been implemented by all member states. The UK implemented it by Regulation in 1998.
A chequered history
However, despite this legislative foresight, the Database Directive has had a chequered legal career since it hit the statute books. In my view, the fundamental reasons are confusion about the precise scope of the legal protection given by the Directive, not helped by the often contradictory case law. Also, the European Court of Justice’s decisions in the ‘Fixtures Marketing’ and ‘William Hill’ cases, which are discussed below, punctured a hole in the scope of protection.
The Database Directive was conceived in the 1990’s and modelled on large business databases which acted as giant storehouses of data gathered from other sources, where the investment lay not in the creation of the data but in gathering, checking and presenting data. Now fast forward to today where the database right finds itself at the meeting point between technology and the law. Search engines, web scrapers, data aggregation tools, API’s and a range of other Internet/Web-based technologies automate the ways in which data and other content is taken and re-used without any human intervention. One of the functions of the Database Directive – and this is no easy task – is to draw the legal boundary between activities which need permission and those which do not.
European legislators remain ambivalent about the database right, The European Commission carried out carried out its first Evaluation Report of the Database Directive in 2005. It concluded that the economic impact of the database right was unproven, but opted to maintain the status quo and to leave the right unaltered. Database publishers and other rights holders shared no such doubts and believe that it remains a valuable right.
Despite these doubts, I believe that the database right has an important role to play in protecting commercially valuable data such as marketing databases, metadata and other ‘added value’ information on the network. Furthermore database copyright will, I believe, grow in importance as means of protection for classification systems and other ‘information building blocks.
To test that assertion, in the remaining parts of this article I will examine what is (and is not) protected by the Database Directive, how the Courts have interpreted it and then make some predictions about its future.
What kinds of databases are protected under the Database Directive?
The answer is – virtually any form of collection, whether in print, fixed electronic media or online.
The Database Directive defines a ‘database’ very widely 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’. Case law since around 2000 has shown that websites with collections of jobs, real estate data, classified ads, directories, collections of website links and poems are all protected, as are collections in CD-ROM and paper formats too.
THE DATABASE RIGHT
What is protected by the database right?
Database right arises if there is” substantial investment….in obtaining, verifying or presenting [database] contents”. “Substantial” can be in terms of quality or quantity or both and “investment” includes any investment whether of financial, human or technical resources. The substantial investment can be in obtaining content or verifying it or presenting it or in any combination of all three elements.
The right lasts for fifteen years from the end the year in which the database was completed. This fifteen year term can be renewed if a “substantial change” to the database contents, judged qualitatively or quantitatively, results in the database being considered to be a substantial new investment.
It is therefore easy to see that a dynamic, regularly updated database would almost undoubtedly qualify for a fresh term of protection. However, this would not be the case with databases consisting of works which do not change e.g. an anthology containing all English love poetry of the 19th Century.
However, as we will see later on, the decisions of the European Courts of Justice in the 2004 decisions in the Fixtures Marketing cases and the William Hill case created a hole in the protection given by the database right. Essentially, they excluded from protection data which was newly created by the database owner as distinct from pre-existing data gathered from third party sources.
What rights does the database right give?
The owner of the database right can prevent the whole or substantial part of the content of the database being “extracted” or “re-utilised” without permission. So taking ‘insubstantial parts’ of a database does not infringe the right.
“Extraction” is a broad concept. It means “permanent or temporary transfer of [database] contents to another medium by any means or any form”. Subsequent case law has shown that ‘extraction’ happens as soon as material is taken from a database and stored elsewhere and that infringement does not depend on the use to which someone wants to put the information. Also, data is treated as being ‘extracted’ from a database where data it is re-keyed into another database. Physical copying, by technical means or otherwise, is not required for the right to be infringed.
“Re-utilisation” means “making contents available to the public by any means”. So, for example, posting content onto a web site would involve “re-utilisation”.
Who owns the database right?
The database right is a producer’s right. The “maker” of the database is the first owner of the database right. The “maker” is defined as: “the person who takes the initiative in obtaining, verifying or presenting the contents of a database and assumes the risk of investing in that obtaining, verification or presentation shall be regarded as the maker of, and as having made, the database”.
If the database has been made by an employee in the course of employment, then his employer would be regarded as the maker of the database, subject to any agreement to the contrary.
To qualify for database right, the maker must be an individual resident in the European Economic Area (“EEA”) or, in the case of a company, incorporated in an EEA country when the database was made.
Exceptions to the Database right
The exceptions apply to the “lawful user” of a database. The most important exception is for fair dealing with a substantial part of its contents if it is extracted for the purpose of illustration for teaching or research and not for any commercial purpose and the source is indicated.
The hole in the database right
This was created by four decisions of the European Court of Justice (ECJ) in 2004. The first three involved Fixtures Marketing which, on behalf of the UK football leagues, licenses the fixture lists outside the UK for pools betting and other uses. The fourth was a referral by the UK Courts of the British Horseracing Board (BHB) v. William Hill case. This involved the use of information from the BHB database on the William Hill internet site for online betting.
The common theme of all these decisions by the ECJ was to deny database right protection where a database contains data created by the database producer as a ‘spin off’ of other activities – the compiling of football fixtures list in the case of BHB and horse racing fixtures in the other cases.
In all cases, the database owner alleged infringement of its database right in its database by the unauthorised use of its data. In all four cases the ECJ ruled that the “investment in the obtaining, verification or presentation of the contents” of the database refers to “the resources used to seek out existing independent materials and collect them into the database and not to the resources used for the creation of such independent materials”.
Put simply, the ECJ decided that if a database is a by-product of the database maker’s principal activity and that the investment goes into that activity and not into the gathering together of pre-existing materials, then no sui generis protection is available! So in BHB’s case, the ECJ decided that its investment went into the creation of the lists for racing, checking the identity of the person making the entry for the race and other information about the race and its entrants. All of this was part of its principal activity of organising horseracing and took place before the database was created. A similar line of reasoning appears in the three cases involving Fixtures Marketing.
The purpose of the database right is to protect the investment made in the production of the data. In contrast, copyright in a database protects “originality” on the part of the individual author(s) who created it. The test is whether: “…by reason of the selection or arrangement of the contents of the database, the database constitutes the authors’ own intellectual creation”.
This sounds very literary and a world away from XML, API’s, feeds and all the other technologies used to extract data from one digital resource and display it in another. It probably is. But essentially, it’s about protecting originality and creativity reflected in the design and structuring of the database (e.g. as reflected in a website) and in the selection of its contents.
Take the example of online City Guide containing factual information, illustrations (maps of a city and plans of museums), commentary and listings. If the author or authors of the guide have used skill and creativity in choosing the contents from a large range of information, and/or in the presentation and arrangement of the contents in the guide, then it is likely to meet the originality test. Essentially, it is the structure of the database which is protected by copyright. This point is expressly made in the Directive.
If the database is “original”, and therefore qualifies for protection, it will have the same term of protection as other literary works i.e. 70 years from the date of death of the author or, in the case of several authors, the last surviving author. Generally speaking, it is also subject to the same exceptions as other literary works.
THE FUTURE FOR THE DATABASE DIRECTIVE
The Database Directive undoubtedly has its critics and the continuing uncertainty about its scope, especially in the light of the William Hill and Fixtures Marketing cases, does not help. It would certainly benefit database producers and users if these could be clarified. Furthermore, the database right is at the moment only a creature of European law. That is a challenge in a globally networked world.
But notwithstanding those reservations, I firmly believe that this legal ‘problem child’ will mature. The reasons that led to the introduction of the database right remain as valid today as they were when the right was first conceived in the late 1980’s. There is huge value invested in databases as networked-based resources of all types of content, whether as collections of valuable business data, copyright materials or hybrids.
The database right was designed to protect substantial investment and does not prevent the irregular taking of insubstantial parts of a database. It does not ‘lock up’ data as some critics maintain and, in my view, strikes an appropriate balance. For these reasons, the Database Directive deserves to come of age in the 21st century.
Laurence Kaye Solicitors
© Laurence Kaye 2010.
 Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases
 The Copyright and Rights in Databases Regulations (as amended), Statutory Instrument 1997 No. 3032
 First evaluation of Directive 96/9/EC on the legal protection of databases December 2005
 Fixtures Marketing Ltd v. Organismos etc; Case C-444/02; together with two other cases involving Fixtures Marketing Ltd.
 British Horseracing Board v. William Hill Organisation; Case C-203/02
 ECJ in Apis-Hristovich v. Lakorda AD
ECJ in Directmedia Publishing GmbH v. Albert-Ludwigs-Universitat Freiburg (Case C-304/07)
In the independently-researched Chambers UK Guide to the Legal Profession 2008, Laurence Kaye is top ranked for publishing law and highly ranked for technology law.
Laurence was recently appointed as a member of the Copyright Expert Panel established by SABIP, the body which advises the UK Government on intellectual property policy.
“Laurence kaye is described as a “real publishing expert” (Chambers’ Guide 2009) and he recently acted on copyright, database right, privacy and e-commerce legal issues for the European Publishers Council.
He now runs a niche UK legal practice specialising in digital media, technology and intellectual property law, combining in-depth industry experience with very competitive legal rates.
Clients range from listed companies to individual entrepreneurs.
He was one of the first lawyers in the UK to work in the field of Internet and E-business law and advises on both traditional media and ‘Web 2.0/Law2.0″ issues.