1.  Directmedia Publishing GmbH v Albert-Ludwigs-Universität Freiburg
  1. Magical Marking Ltd and other v Holly and others [2008] EWHC (Ch) 2428

Two recent decisions of the courts dealing with the sometimes taxing issue of database rights appear to have boosted the prospects of database owners against infringers.

  1.  In the first of these the European Court of Justice (ECJ) examined an appeal from Germany in relation to a database that although not directly copied had been referred to extensively by the defendant as a source of information for creating its own database.

Professor Knoop was compiler of an anthology of German poems. The professor spent two and a half years at a cost of EUR 34,900 to his University, in researching and producing the database, which was published on the Internet under the heading 'The 1100 most important poems in German literature between 1730 and 1900.' The University had a sui generis database right where it could show that it had made a "qualitative and/or quantitative substantial investment in either the obtaining, verification or presentation of the contents."

Directmedia produced and marketed a CD-ROM entitled "1000 poems everyone should have." Of those 1000 poems, 876 were written between 1720 and 1900 and of those 876, 856 were contained in the University's database. Directmedia did not deny that it had used the University's database as a point of reference, but argued that this did not constitute "extraction" under the Database Directive 96/9/EC, as no mechanical reproduction of the University's database had occurred – it had simply transcribed some of the content.

The ECJ focused not on what constituted a database for the purposes of establishing the University's right (which has been a source of controversy since the case of British Horseracing Board v William Hill [2001] RPC 612) but what constituted an "extraction" (triggering infringement).

Is copying by reference infringement?

A database right is infringed if someone, without the consent of the owner, extracts or re-utilises all or a substantial part of the contents of a database. "Extraction" means the permanent or temporary transfer of a database's content to another medium by any means, or in any form. 'Re-utilisation' means making the contents of a database available to the public by any means. A 'substantial part' can include the repeated extraction or re-utilisation of an insubstantial part of a database and can be assessed on a quantitative or qualitative basis.

The ECJ confirmed that manual copying or "the transfer of material from a…database to another database following an on-screen consultation…and an individual assessment…" of a protected database could be "extraction" for the purposes of the Database Directive, as that concept should be construed broadly and therefore could infringe the sui generis database right. In other words, infringement is not just limited to technical extracting such as cutting and pasting.

  1. The Magical Marking case in the High Court looked at database right infringement in the context of a dispute between a company (which supplied playground games to schools) and a director whose contract was being terminated and who wanted to be bought out. Here, the exiting director ,Mr Holly, who had become impatient with the valuation process in respect of his shares, instructed an IT expert to enter his company, Magical Marking's, premises with him and others (including a solicitor and two large security guards) in order to copy all of its business records including its customer database. The IT expert Mr Canavan, who was also defending the company's claim of copyright and database infringement argued that he could not be liable because he had either actual, implied or ostensible authority to undertake the work as a director had instructed him and he could rely on Mr Holly's representations.

The High Court ruled that Mr Canavan was still liable, as the unusual circumstances must have raised in the mind of any reasonable IT consultant questions as to whether he was truly undertaking work for the company or was simply aiding the exiting director in his personal interests. It did not help that Mr Canavan was also found to have lied about what he did and also changed the system passwords effectively locking other Magical Marking staff out of the company's IT system.

While Mr Canavan was entitled to be indemnified by Holly, the case highlights that some level of care is required when undertaking database extraction work that is out of the ordinary on behalf of someone who holds himself out as having the requisite authority.