On the 9 November 2004, the ECJ handed down its decisions in four cases dealing with the database sui generis right (Fixtures Marketing v Veikkaus, Fixtures Marketing v OPAP, Fixtures Marketing v Svenska Spel and The British Horseracing Board v William Hill).

Fixtures is a company retained by the English and Scottish football leagues to handle the exploitation of fixtures lists outside the UK. Fixtures has the right to represent the holders of intellectual property rights in the lists. The defendants organise betting games, and took all information from Fixtures’ lists. Fixtures brought actions in the Greek, Swedish and Finnish Courts alleging that the defendants had infringed the sui generis right in the lists under article 7 of the Database Directive.

A factually similar situation arose in the British Horseracing Board (‘BHB’) case. BHB organises horse races and maintains a database which comprises a lot of information includi ng the names of the horses, the date, place and time of each race. William Hill (‘WH’), a UK bookmaker, took information from BHB’s database for use on its betting web site. BHB brought an action in the English Courts for infringement of its sui generis right in its database and the Court of Appeal referred questions to the ECJ.

The ECJ held that the definition of a database should be construed widely. A database’s materials will be independent when the materials are separable from each other without their informative, literary, artistic, musical or any other value being affected. The Court found that a football fixtures list was a database under article 1 of the Directive.

The Court also held that the substantial investment, which is the requirement that must be fulfilled in order to be protected by the database right, must be in the obtaining, verification or presentation of the contents of a database and not in the creation of the data. This substantial investment can be evaluated quantitatively or qualitatively. The quantitative assessment refers to quantifiable resources. The qualitative assessment means the efforts which cannot be quantified, such as intellectual effort or energy. The Court found that neither a football fixture list nor a list of competitors, dates, places and times of races require a substantial investment because the investment was in the creation of the data. There was no subsequent substantial investment in obtaining, verifying or presenting the data either.

However, in relation to infringement, the ECJ construed the rights of the sui generis right holder of extraction and re-utilisation (article 7(2) of the Directive) widely to include an indirect act. Extraction and re-utilisation will not cover mere consultation of the database, rather the test of infringement is whether the defendant has extracted or re-utilised a substantial part of the contents of the database. The Court held that the substantial part evaluated quantitatively refers to the volume of the data extracted or re-utilised from the database and it must be assessed in relation to the volume of the contents of the whole of the database. The expression ‘a qualitatively substantial part’ refers to the scale of investment in the obtaining, verification or presentation of the contents of the act of extraction and/or reutilisation, regardless of whether that subject (or part) represents a quantitatively substantial part of the contents. The Court found that the data taken by WH was too small to be a quantitatively substantial part and was not a qualitatively substantial part either.

In other words, the meaning of article 7(5) is that extractions and re-utilisations which, because of their repeated and systematic character, would reconstitute the database as a whole or at least a substantial part of the database are prohibited.

Whereas the ECJ construed the subject-matter and rights rather widely, it construed the scope of the right and the test of infringement restrictively. The consequence is that BHB’s and Fixtures’ databases are not protected by the sui generis right and therefore the betting companies do not need to pay licences to extract or re-utilise the data. The Court appears to have exceeded its jurisdiction by applying its ruling to the facts of the case. The Court has clarified a lot of the vague terms used in the Directive but some aspects remain unclear such as the scope of the exceptions and what exactly in a database is protected when there is a renewal of the term.

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