Under UK law a database can be protected by copyright and/or by a sui generis database right. Litigation concerning the extent of database rights and the types of formats in which they may subsist are far and few between in English courts, which renders the recent decision Technomed Ltd vs. Bluecrest Health Screening Ltd [2017] EWHC 2142 in the High Court which focuses on database rights particularly interesting.

In Technomed, the High Court found that a cloud-based ECG screening system which was offered by the claimant, specialist healthtech company Technomed, was protected by a combination of copyright and database rights.

Background

Technomed supplied its licensee Bluecrest with a cloud-based ECG analysis and reporting system, which enabled ECG readings to be analysed remotely by a cardiologist, who would then generate a report (with the assistance of Technomed's technology) to be distributed to a medical professional or to the patient directly. When Bluecrest decided to move on to a different supplier, it requested its new provider to mirror key elements of Technomed's software, processes and reports; including PDF reports, XML format files, diagrams and explanatory material. Technomed claimed infringement of the database rights that subsisted in the ECG output report and copyright infringement in a number of more standard explanatory materials and images. Technomed argued that not only did clear database rights exist in the format of the PDF version of the report, but that copyright also subsisted in the XML format of the database and in the images and diagrams that accompanied the final product.

Decision

In its decision, the Court held that Technomed's sui generis database right and its copyright, in the database, or, alternatively, in any other literary work, of its ECG screening system were infringed when the database was passed on by its former licensee Bluecrest to a new competing supplier, which then used it to create new patient reports for Bluecrest's clients.

Sui generis database right

The standalone, sui generis database right under Article 1(2) EU Database Directive 96/9/EC is designed to protect the investment put into a database, as opposed to the creation of the database itself. For this purpose, a database is defined as "a collection of independent works, data or other materials arranged in a systematic way and individually accessible by electronic or other means" and the High Court held Technomed's database satisfied this definition. Citing earlier case law, the Court reiterated that it was "the policy of the Directive 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". Technomed had actioned 184 modifications to its ECG Cloud report via a specific feedback process. In the Court's view, this amounted to a substantial investment in the obtaining, verification and presentation of the contents of the database so that the sui generis right subsisted in the database.

Further, the court found that a PDF could amount to a database. The final output PDF report contained a clearly identifiable "classification" of data, including specific "options" and a distinguishable traffic light alert system; such classification could be identified by reading the PDF with the human eye or by accessing online. The Court identified that there had been a significant amount of investment in generating the format and content that made up the report and a clear database right could therefore be identified within it.

Sharing the database with a new supplier amounted to an 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 of Technomed's rights in the database under the Database Directive.

Copyright

The court noted that the existence of sui generis database right did not affect whether copyright might also additionally subsist in the database.

Given that Technomed had expended considerable intellectual effort and creativity in choosing, selecting and arranging its database, the Court held it also attracted copyright protection.

The Court found that the databases, the report and the diagrams produced by Bluecrest's new supplier were infringing Technomed's copyright. They had been slavishly copied by the new provider resulting in a near identical output, and this type of copying met the low threshold regarding "negligible or trivial effort" outlined in legislation and case law.

The Court also held that the XML format of the database was protected by copyright. The nature of the format, Technomed argued, meant that the compilation of the database using the XML computer "language" meant that it was protectable as a literary work. The judge found that the "intellectual creation test" was met by the process that underpinned the XML format (i.e. it contained content, not just structure, and was the product of its author's intellectual creation) and therefore infringement was a certainty as Bluecrest had offered no evidence that they had used any original code or "language" to generate the new version of the XML format with the new supplier.

For purposes of assessing damages, certain infringements were considered 'flagrant'.

Comment

The decision clarifies how the English courts are likely to address issues of database rights. Going forwards, there may well be a broader scope for the sui generis database right in the UK than had previously been thought. The decision places specific emphasis on the protection of the investment that Technomed had initially made in the databases and products, signalling an intention to stay true to the original concept of the database right as protected by EU law. The Court's approach also suggests that the courts will take a case-specific view as to the technical formats within which database rights can subsist. The XML precedent should also give encouragement to copyright and technology lawyers as establishing originality; it may now be less difficult to show that copyright as a literary work subsists in a given XML format, with case law having previously decided that the XML Format cannot be protected as a computer program under s.3(1)(b) CDPA.