ECJ clarifies approach to infringement of database right - DirectMedia and Apis

In two recent decisions of the ECJ, the ECJ has clarified what will and what will not amount to an infringement of database rights under the Database Directive. In doing so, the ECJ have, as was done  in British Horseracing Board, adopted a wide, inclusive, approach to what acts amount to infringement.

In C-304/07 Directmedia GmbH v Albert-Ludwig Universitat Freiburg, the central issue was whether consultation and use of a database amounted to infringement even if where was no physical transfer of the contents of the database. Thus, the defendant, Directmedia, who had marketed a CD-ROM of an anthology (collection) of poems in the German language, admitted using the claimant's anthology as a guide as what to include and what not to include. However, it took the actual texts from its own digital resources and conducted its own critical analysis.

The ECJ rejected the technical submission that the "extraction right" must involve actual physical transfer of the content of the database. Rather, it said that a broader approach is called for, namely whether the defendant's acts harm the interests of the maker of the database "in a manner comparable to the act of extraction based on such a process". Thus, the ECJ emphasised that what is important is whether, evaluated quantitatively and qualitatively, a substantial part of the database has been extracted.

From the author's view, the interesting part of this case is that an anthology of poems is generally accepted as being protected by the law of copyright as well as database right because such plainly satisfies the condition of "originality" for databases, namely that "by reason of the selection or arrangement of their contents, they constitute the author's own intellectual creation" (Art.3(1)). Yet, it is less obvious that a database right subsists in an anthology because of the need to show a "substantial investment" in "obtaining, verification or presentation". Thus, a list of "100 best poems" may take the author 30 minutes to come up without expenditure of any financial investment at all. In the Directmedia case, the evidence established that EUR 34,900 had been spent on creating the Claimant's anthology so such appears not to have been in issue. Equally, it plainly is no defence to an allegation of infringement of copyright in an anthology of poems that one has not physically copied the poems. This is because copyright subsists not in the contents of the anthology but in their selection or arrangement. Thus, a defendant who "copies" the selection but sources the poems themselves from third parties is plainly infringing. In Directmedia, the Court upheld a claim based on copyright. It is not clear from the authority what additional protection or remedies under German law the claim for infringement of database added to that of the copyright claim.

Finally, the Court emphasised that the above analysis was not affected by the fact that it was not an infringement merely to consult a database. Directmedia had argued that was ultimately all they had done. The Court disagreed because they had plainly taken the additional step of transferring such to another database.

In C-545/07 Apis-Hristovich v Lakorda A/S, the Bulgarian courts referred to the ECJ various questions concerning how the Database Directive (96/9) should be interpreted. Proceedings had been brought by the owner of a legal legislation and case law database against a company (Lakorda) who, it was claimed, had extracted without its consent, much of the contents of its database. Lakorda claimed that its database was the fruit of a substantial, independent investment. Thus, the defence was one of independent creation. The Bulgarian court referred a number of questions concerning the interpretation of the directive.In many respects, by the nature of the questions, the court was seeking "hands on" help in how to decide the issue of infringement. The ECJ took the opportunity to provide guidance on the interpretation of Art.7 of the directive (the infringement provisions). In some respects, such guidance appears to have been the statement of the obvious.

Thus, the Court held the distinction between "permanent transfer" and "temporary transfer" lay in the duration of storage on another medium of materials extracted from the original database. A temporary transfer indicated that the materials were stored for a limited period on another medium such as the operating memory of a computer whereas a permanent transfer was whether the materials are stored in a permanent manner.

The Court confirmed that the purpose of the transfer is immaterial for determining whether an infringement has taken place or not. It did not matter whether it was for the purpose of creating another database or not.

The ECJ also confirmed that the existence of common physical and technical characteristics in the databases may be evidence of extraction unless such a coincidence can be explained by other external factors. This echoes the approach taken to infringement of copyright in computer software where evidence of the replication of redundant or non-functional features is often seen as good evidence of copying because such features are not dictated by specifications.

Many readers may think that the above is not exactly ground-breaking. Perhaps more interestingly is the Court's observations on whether the evaluation of the concept of extraction of a "substantial part" should be interpreted by reference to the entire database of the claimant's database or by reference to modules within that database. The Court confirmed its previous case law that the determination of whether a substantial part has been extracted is by reference to the claimant's database and not the defendant's database. The Court then said that if the modules themselves constitute a database within the meaning of the directive, then the issue is whether there has been extraction of a substantial part of that module. If the module did not itself qualify for database protection, then the comparison would be of the whole database. Thus, it is plainly in the interests of database owners to rely upon and plead infringement of database rights in modules as it would be easier for them to establish extraction of "a substantial part". However, if the modules are very small, the claimant may run the risk that such does not qualify for database right. The database owner is thus advised to plead infringement of the entire database and relevant modules.

Finally, the Court emphasised that when considering whether there had been extraction of a "substantial part", such was not affected by considerations relating to whether the contents of the database were accessible from the public domain or not. However, as the COurt said, the fact that such material is not accessible from the public domain will affect the assessment as to whether there has been a substantial investment in "obtaining" the material and such will consequently influence whether a substantial part, evaluated qualitatively, of the contents has been extracted. Thus, as was discussed in Fixtures Marketing, the concept of "substantial investment" and "substantial part" are two sides of the same coin. This has echoes in the case law in English copyright law, where it has often been said that there will be infringement where a substantial part of the skill, labour and effort of the author which went into creating the copyright work has been incorporated by the defendant into the alleged infringing work.

Although not ground-breaking, the ECJ's decision in Apis is to be welcomed as providing another valuable layer to the case law on database rights.