The Court of Justice of the European Union (CJEU) has provided guidance on whether website use of the content of a database protected by the sui generis database right amounts to 'extraction' or 're-utilisation' for the purpose of assessing infringement. It has also confirmed where that use is to be regarded as having taken place.

The CJEU provided clarity on the subject following a reference from the Court of Appeal in a case concerning the sending of data from a website server in one country to a user based in another. The decision was handed down on 18 October in Football Dataco & others v Sportradar GmbH & another (Case C-173/11).

Background

Football Dataco Limited (Dataco), along with others, is responsible for drawing up data relating to professional league football matches which were organised by related companies and making this publicly available. The data comprises a compilation of goals scored, goal scorers, red and yellow cards given, penalties, fouls and substitutions which arise during live football matches and which are collected by football analysts - mainly freelance ex-professional football players for Dataco and others. Dataco owned and operated a database known as 'Football Live' which was made available to its customers via a website.

German company Sportradar GmbH and its Swiss parent company Sportradar AG operated the betradar.com website which competed with Dataco's website and offered a service called 'Sport Live Data'. This service, which provided live results and other English football league statistics, was operated via the defendants' website from servers based in Austria and Germany. Customers of the defendants included UK and Gibraltar-based companies who used the service and provided online betting services to their customers located in the UK. The companies had links on their own websites to betradar.com.

The legal proceedings

In April 2010, Dataco (and others) issued copyright and database right infringement proceedings in the High Court. They argued that in conducting their service, the Sportradar companies had copied data from the Football Live database to compile Sport Live Data. The claimants alleged the authorisation of, and/or joint liability for, infringement of copyright and joint liability for infringement of database right in relation to the reproduction of data by UK-based customers who were using the defendants' service. The defendants argued that the English court did not have jurisdiction in the matter.

Floyd J declared that the court did have jurisdiction to hear Dataco's claim in respect of establishing that Sportradar had authorised or was jointly liable for those of its customers that used the betradar.com website and accessed the data in the UK. However, detrimentally to Dataco, he also concluded that the infringing act of re-utilising database content and making it available to the public by online transmission occurred where the transmission takes place; that is, where the data-containing server was based (outside the UK in this case) rather than where the data was downloaded by website users (in the UK). Therefore the court had no jurisdiction in that respect. The parties appealed regarding the nature of 'extraction' and 're-utilisation' of data.

For the purpose of liability for infringement under the Database Directive (and corresponding UK provision pursuant to the Copyright and Rights in Databases Regulations 1997), the maker of a database in which the sui generis right subsists has the right to prevent extraction and/or re-utilisation in relation to a whole or a substantial part of the database in question. Article 7(2) of the Database Directive provides as follows:

  1. 'Extraction' shall mean the permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any form.
  2. 'Re-utilisation' shall mean any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by on-line or other forms of transmission. The first sale of a copy of a database within the Community by the rightholder or with his consent shall exhaust the right to control resale of that copy within the Community.

Dataco submitted that the defendants were 'making available' the data by copying Football Live Data onto their server located in Austria and then transmitting it to UK-based users. Their view of 'transmission' included hosting the website and the users' access of the site, analogous to the transmission theory used in connection with broadcasting law. The defendants submitted that 'transmission' took place from where the data emanated.

The Court of Appeal dismissed the claim of copyright infringement on the basis that what was alleged to have been copied was merely data; that is, the contents of the database as opposed to any part of its structure. Copyright cannot, since the implementation of the Database Directive, now subsist in a database's contents.

The court also issued a reference to the CJEU, in relation to the meaning and location of the infringing acts when data was transmitted via the internet from one territory to a user in another. The appeal court was of the view this issue was not 'acte clair'. Under Article 27 of the Brussels Regulation, the Court of Appeal therefore stayed the claim for primary infringement of database right by Sportradar until its jurisdiction was established.

In May 2012, the High Court however handed down its judgment in respect of those aspects of the claim which did not form part of the CJEU reference.

The reference to the CJEU

The question referred to the CJEU was as follows:

"Where a party uploads data from a database protected by sui generis right under Directive 96/9/EC ("the Database Directive") onto that party's web server located in Member State A and in response to requests from a user in another Member State B the web server sends such data to the user's computer so that the data is stored in the memory of that computer and displayed on its screen,

  1. is the act of sending the data an act of "extraction" or "re-utilisation" by that party?
  2. does any act of extraction and/or re-utilisation by that party occur
    1. i.in A only?
    2. ii.In B only; or
    3. iii.In both A and B?"

The Advocate General's opinion

On 21 June this year, the Advocate General issued his opinion and proposed that the CJEU's answer to the above should be:

  1. The uploading of data from a database protected by the sui generis database right onto a web server located in one member state and sent, upon request, to a user's computer in another member state, involves the web server sending such data to the user's computer so that the data is stored in the memory of that computer and displayed on its screen. The act of sending the data constitutes an act of 're-utilisation' within the meaning of Article 7(2)(b) of the Database Directive.

The Advocate General considered that this question had already been considered in the case of British Horseracing Board & others (Case C-304/07).

  1. The act of re-utilisation occurs as a result of a sequence of actions in a number of Member States and must be regarded as having taken place in each and every one of them - therefore in both A and B.

The Advocate General concluded that re-utilisation often involved a collection of acts, originating with the defendant sending the data and resulting in users' access to that data which may take place in different countries. The ultimate purpose was to make the data available to the public.

The CJEU's guidance

The Court ruled that "Article 7 of the Database Directive must be interpreted as meaning that the sending by one person, by means of a web server located in member state A, of data previously uploaded by that person from a database protected by the sui generis right under the Database Directive to the computer of another person located in member state B, at that person's request, for the purpose of storage in that computer's memory and display on its screen, constitutes an act of 're-utilisation' of the data by the person sending it. That act takes place, at least, in member state B, where there is evidence from which it may be concluded that the act discloses an intention on the part of the person performing the act to target members of the public in member state B, which is for the national court to assess".

This essentially means that that the sending of data via the internet which has been uploaded from a database protected by the sui generis right, amounts to re-utilisation by the website operator. The infringing act (re-utilisation) of the database right occurs in at least the place where the data is downloaded and where there is evidence of an intention to target the public there.

The CJEU's ruling differs from the Advocate General's opinion. The latter referred to re-utilisation taking place in all countries involved in the chain of activities originating with the sending of data and concluding with the public's access to that data.

The reasoning behind the guidance

The court referred to the British Horseracing Board case in responding to the nature of the act of sending data upon request by an end user. In that case, the court described re-utilisation as the making available to the public of the contents of a database, which it said would refer to any unauthorised act of appropriation and distribution to the public of the whole or part of the contents of a database. In the Dataco ruling, the court viewed the sending of data via the internet to a user as falling within the remit of distribution to the public.

However the court also held that just because data was accessible via a website, this in itself "is not a sufficient basis for concluding that the operator of the website is performing an act of re-utilisation". The national court must also determine that there is an intention to target the public. In the Dataco case, such evidence might include, for example, the fact that Sportradar granted a licence to use its server with companies offering betting services to the public.

Comment

The clarification by the CJEU means that legal proceedings can be brought in the UK by database owners against infringers who enable data to be accessed from a website located in another jurisdiction - provided that targeted users of that data are based within the UK. This is a helpful judgment as it will enable infringers who would otherwise seek to avoid liability by situating servers outside of the UK, to be pursued where they target the UK public.