Case C-604/10 Football Dataco Ltd v YAHOO! UK Limited - Court of Justice of the European Union

The Court of Justice of the European Union (CJEU) has provided guidance as to when copyright will subsist in a database under Directive 96/9/EC (the Database Directive). The judgment also provided clarification on whether the Database Directive completely harmonises the protection of databases by copyright, or whether national legislatures can provide protection additional to that provided by the Database Directive.

The facts

Football Dataco is responsible for drawing up and making public the fixtures for English and Scottish football leagues. Yahoo! used the information contained in the fixtures lists for profit. Football Dataco brought an action against Yahoo! in the High Court of England and Wales claiming that it infringed Football Dataco's rights in the fixtures lists. In particular, Football Dataco claimed that Yahoo! infringed:

  1. its copyright in the database as a whole. Article 3 of the Database Directive only provides copyright protection for databases which "by reason of the selection or arrangement of their contents, constitute the author's own intellectual creation". It also states that "no other criteria shall be applied to determine their eligibility for that protection";
  2. its sui generis database rights in the database. Article 7 of the Database Directive provides protection for the contents of a database, where "there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents". The database right prevents "extraction and/or reutilisation of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database"; and
  3. its copyright in the database as a literary work under the Copyright, Designs and Patents Act 1988 (the 1988 Act). Article 14 of the Database Directive states that "[w]here a database protected under copyright arrangements in a Member State on the date of publication of this Directive does not fulfil the eligibility criteria for copyright protection laid down in Article 3(1), this Directive shall not result in any curtailing in that Member State of the remaining term of protection afforded under those arrangements". However, the fixture lists in issue were created after the publication of the Database Directive.

The Court of Appeal, England and Wales, following the judgment of the Court of Justice of the European Union (CJEU), in case C-203/02 British Horseracing Board v William Hill, held that the sui generis database right did not subsist in the fixtures list. However, in relation to copyright in databases, both under the Database Directive and under the 1988 Act, the national court decided to refer several questions to the CJEU. Shortly before Christmas, Advocate General Mengozzi gave his opinion on those questions and on the 1 March 2012 the CJEU delivered its judgment.

The questions referred to the CJEU

The Court of Appeal referred the following questions to the CJEU:

  1. In Article 3(1) of Directive 96/9/EC on the legal protection of databases what is meant by "databases which, by reason of the selection or arrangement of their contents, constitute the author's own intellectual creation" and in particular:
    1. should the intellectual effort and skill of creating data be excluded;
    2. does "selection or arrangement" include adding important significance to a pre-existing item of data (as in fixing the date of a football match); and
    3. c.does "author's own intellectual creation" require more than significant labour and skill from the author, if so what?
  1. Does the Directive preclude national rights in the nature of copyright in databases other than those provided for by the Directive?

The CJEU's guidance

  1. In essence, the CJEU, following the Advocate General's opinion, answered the questions as follows:
    1.  he creative effort expended in the creation of data cannot be taken into account for the purpose of assessing whether a database is protected by copyright under Article 3. Only the creative effort expended in the selection and arrangement of data through which an author of a database gives the database its structure is relevant.
    2. Fixing the time, date and who the rival teams are for a football match involved creating data, not "selecting or arranging" it.
    3. For the structure of a database to be the "author's own intellectual creation" there must be some creative aspect to its creation. Skill and labour (or "sweat of the brow") is not sufficient. The database's structure must amount to an original expression of the creative freedom of its author. In other words if the setting up of a database expresses the author's "creative ability in an original manner by [reflecting his]... free and creative choices" in selecting and arranging the data within it, then it may attract copyright protection under the Database Directive.
  2. Article 14 of the Database Directive precludes protection of databases by copyright except:
    1. to the extent allowed by Article 3; and
    2. to the extent allowed by the transitional provisions explained below.

The reasoning behind the CJEU's judgment

Question 1(a): what is needed for copyright in the database to subsist? The CJEU (following the Advocate General) noted that databases can be protected by both or either of database right and/or copyright. The Advocate General had stressed that the Database Directive must be taken as having imposed a single EU wide definition of what constitutes a "database", following the criteria given in Article 1(2). Article 1(2) states that a database is:

"a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means".

Therefore if the fixtures lists in issue fulfilled this criteria whether or not they could be protected by copyright was to be determined by the Database Directive.  

The CJEU had already made clear (in the Fixtures Marketing cases) that "the phase in which the data are created" was not relevant to determining whether sufficient investment had gone into the creation of a database so as to entitle its contents to protection by database right. Furthermore, the purpose of the Database Directive (as recorded in its recitals) is to "stimulate the creation of data storage and processing systems" and an "information market" not to protect the creation of materials capable of being collected in a database. Therefore, the CJEU unsurprisingly confirmed that the creative effort expended in creating the data itself could not be considered when assessing whether the database was protected by copyright either.

Question 1(b): where is the line drawn between creating data and "selecting and arranging" it?

In the Advocate General's opinion, question 1(b) was "based on a mistaken premise" as "all the details relating to each match in a given league must be regarded as having been fixed by the time they are entered in the database". On this basis, fixing the date of a football match was the creation of more data, not the "selection or arrangement of its contents" as required to obtain copyright protection. The CJEU agreed.

Question 1(c): what effort is required to constitute the "author's own intellectual creation"?

The Advocate General had noted that prior to the entry into force of the Database Directive, common law countries required the creator of a database to expend a certain effort, or employ a certain degree of skill, for his work to be protected by copyright. In contrast, in continental countries, there must generally be some creative element in order for protection to arise.

The Advocate General thought that the level of originality required for copyright protection of a database was not that required in common law systems, but that required in the continental tradition. In particular, a work was likely to be an intellectual creation if it reflected the personality of its author, and is unlikely to be an intellectual creation if the features of the work are predetermined by its technical function. In other words, where the purpose the database was to serve provided no real freedom for creative choices as to what information was selected or how the database was structured or arranged, then the database was unlikely to be an intellectual creation and therefore would not attract copyright.

In contrast, in the Advocate General's view the sui generis database right would protect the individual entries in a database from being copied in circumstances more akin to those where copyright would have played this role in respect of a database under the common law tradition.

The CJEU did not consider the differences between the two traditions or the two rights, but it did agree that, when the structure of a database was dictated by technical considerations, rules or constraints, which leave no room for creative freedom, then the resulting structure of the database cannot be "the author's own intellectual creation".

Further guidance was also provided by the court on what exactly was meant by this concept of "own intellectual creation". The CJEU noted that it refers to "the criterion of originality" which is satisfied when the author "expresses his creative ability in an original manner by making free and creative choices" (emphasis added). Here, to be relevant, such choices needed to be in respect of the selection and the arrangement of data within the database.

The CJEU also confirmed that if the selection and arrangement of data within the database did not express the author's originality by being the "author's own intellectual creation" then the fact that it had involved significant labour and skill of another nature from the author (e.g. sweat of the brow) was irrelevant.

Question 2: Does "intellectual creation" copyright protection for databases under the Database Directive preclude additional "sweat of the brow" copyright protection for databases under national law?

Both the Advocate General and the CJEU stressed that the purpose of the Database Directive was to harmonise the protection available to "databases" in the European Union.

The Advocate General had noted that the transitional provisions:

"would make no sense if, after the entry into force of the Directive, national law could continue, without any limitation in time, to protect [by copyright] a database which does not meet the requirements [for protection by copyright] under the Directive".

The CJEU briefly concluded that, subject to the transitional provisions contained in Article 14, the Database Directive precludes national copyright protection for databases under different conditions to the originality criterion laid down in Article 3(1).

Comment

Following the guidance provided by the CJEU, the overall position in relation to the protection of databases is that:

  1. the individual entries in a database:

1.1 are protected only if:

  1. a.they are copyright works in their own right (for example, poems, in which case the protection afforded to them is independent of their inclusion in a database); or
  2. via the sui generis right, but only if there was a substantial investment in the obtaining, verification or presentation of them (for example, the PM Abs addresses in the Forensic Telecommunications Services Limited v West Yorkshire Police case); but

1.2 will not be protected by database copyright or the sui generis database right if the creative effort/investment expended related to their own creation (as happened in Case C-302/02 British Horseracing Board v William Hill);

  1. the database as a whole:

2.1 will be protected only if:

  1. looking only at the selection or arrangement of the contents of the database, the database's "structure" constitutes the author's intellectual creation; or
  2. it was created before the Database Directive and was protected under broader provisions of nation law which were preserved by the transitional provisions contained in article 14.

The CJEU stressed that it remained for the English court to assess whether the fixtures lists in question satisfied the originality criterion for copyright protection set out in Article 3(1) (as explained above). However, the judgment may well leave creators of fixture lists without any intellectual property protection for the structure and contents of those lists.

This is not to say that football fixtures lists will necessarily be without protection altogether - as the Advocate General noted:

"a football fixture list characterised by a particular manner of representing the matches, through the use of colours or other graphic elements, could certainly qualify for copyright protection..."

i.e. as an artistic work. However, that protection would extend only to the means of the representation, and not the data represented.