Technomed Ltd and another v Bluecrest Health Screening Ltd and another  EWHC 2142 (Ch), 24 August 2017 It's not often that a case features successful claims for both copyright infringement and database right infringement but this is one of those cases.
The Claimants (together "Technomed") supplied an internet-based electrocardiogram (ECG) analysis and reporting product system called "ECG Cloud". ECG Cloud enabled ECG readings to be analysed remotely by reporters who were not themselves carrying out the readings.
In developing the ECG Cloud, Technomed built up an underlying database comprising a set of classifications of relevant physical characteristics shown by ECGs, together with a list of options (eg "normal"), and for each option, a risk status or "traffic light", intended to reflect best medical practice for ECG screenings (the "Database"). ECG Cloud produced an XML file with a standardised XML format to generate a report for distribution to the patient or doctor by inserting the information held in the XML format into a template containing a general explanatory text and diagrams about ECG screening. The report included certain diagrams (such as the "Two Hearts" diagram and the "Wave" diagram in which copyright was separately asserted) and various explanatory materials, for distribution to patients using software developed and modified by Technomed.
The Claimants had provided ECG Cloud to the First Defendant ("Bluecrest") under a two-year contract and, during the first few months of the contract, provided Bluecrest with an electronic pdf of the Database and various materials used to prepare the ECG Cloud reports.
Half way through the contract term, Bluecrest switched its heart screening services to the Second Defendant ("Express"), one of the claimants' competitors. At that time, Bluecrest sent emails to Express attaching an XML format file for the report and copies of the electronic pdf, the "Two Hearts" diagram, the "Wave" diagram and explanatory materials to Express (one email with the subject "report goodies"). Express started providing ECG screening services to Bluecrest which essentially replicated the service provided by Technomed.
Technomed brought a claim against the Defendants for infringement of several rights including (i) the sui generis database right in the Database; (ii) copyright in the Database; and (iii) copyright in the diagrams and explanatory materials. Bluecrest counterclaimed, contending that the move away from Technomed was due in part to quality concerns. The contractual aspects of the claim were to be heard separately from the IP issues.
Sui generis database right
The court noted that the Database was a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means and, as such, was a database within the meaning of the Database Directive (96/9/EC). It was noted however, that Technomed also needed to establish that a sui generis database right subsisted in the Database.
With reference to Sir Robin Jacob's comments in the Football Dataco case that "the policy of the Directive is that databases which cost a lot of investment and can readily be copied should be protected. The right is created to protect the investment which goes into the creation of a database", the court noted that the Database had been modified by Technomed since its creation in 2009, using a feedback tool which allowed users to request edits to various aspects of the product. Between January 2013 and January 2015, there were 184 modifications to ECG Cloud as a result of feedback. The court considered that Technomed had made substantial investment in the obtaining and verification and presentation of the contents of the Database and that sui generis right therefore subsisted in the Database.
The court held that Bluecrest had a full copy of the Database which was provided to and copied by Express – amounting to infringement of the database right. Further, in accessing the database contents to produce XML files for the purpose of Bluecrest's technical reports, the repeated and systematic extraction and/or reutilisation of insubstantial parts of the database amounted to further infringement under the Database Directive.
Technomed claimed copyright in four types of work: (i) Artistic works (the "Two Hearts" diagram and "Wave" diagram); (ii) Literary works including the explanatory materials, patient definitions, XML format and Database); (iii) Literary works in the Database; and (iv) Preparatory design material for a computer program (the XML format and/or Database).
The court noted that the existence of sui generis database right did not determine whether copyright might also subsist in the Database. However, considerable intellectual effort and creativity were expended in choosing, selecting and arranging the Database and it attracted copyright protection. The representations of the "Two Hearts" and "Wave" diagrams, whilst standard concepts, were the result of the creators' intellectual effort and were held to be original artistic works for the purposes of copyright law.
The court also held that data formats written in the XML language were entitled to copyright protection as the examples of the XML format shown to the court contained personal content created by its author, not just structure dictated by the XML standard.
Bluecrest and Express had therefore infringed a number of Technomed's intellectual property rights and, for the purposes of assessing damages, certain infringements were considered flagrant.
This judgment demonstrates that information collated in a fixed format – in this case, a pdf of a spreadsheet – is not precluded from attracting database protection. The judge commented that the pdf tied together different items of information which could be accessed through electronic conversion, digital character recognition or re-typing. Of course, it was also necessary to demonstrate that there has been a substantial investment in obtaining, verifying or presenting the contents.
It is also worth highlighting the issues arising from the flawed instruction of Bluecrest's expert witness. During cross-examination it came to light that (i) the expert's company was in commercial discussions with the second defendant, Express and (ii) the manner in which he was instructed was not in accordance with Part 35 or as set out in his written report. He could not be considered an independent expert appointed to the court on matters within his expertise and the court could attach no weight to his evidence. Expert evidence must be and be seen to be the independent product of the expert – failure to do this not only risks expert evidence being rejected but also puts a party's credibility in doubt.