In a decision dated 23 March 2010, the French Supreme Court (“Cour de cassation”) confirmed two principles of importance for both competition law and copyright law. The first principle is that France Telecom’s “orange” directory database (the “orange list”) constitutes a database protected by copyright and the sui generis database right. The second is that France Telecom is therefore entitled to charge for access to the database. The decision arose from a dispute that began several years ago between the French telecoms incumbent, France Telecom, and Lectiel, a company selling file updates and improvements for use in telemarketing and direct advertising. France Telecom had created a separate database based on information contained in its directory of subscribers. This database, known as the “orange list” (“liste orange”), lists France Telecom subscribers who refuse to receive direct advertising.
France Telecom refused to disclose data extracted from the database to Lectiel for free. Instead, it suggested that Lectiel use France Telecom’s paying service “Marketis”, which grants access to data from the orange list in return for a fee.
However, Lectiel decided to download the orange list without France Telecom’s prior authorization and used it for its own commercial purposes without compensating France Telecom.
Lectiel claimed to have acted on the following bases:
1. Pursuant to Article L.341-1 of the French Intellectual Property Code, the producer of a database is the entity or person who takes the initiative and risk of the corresponding investments. Such entity or person may therefore have the content of the database protected by a sui generis right if the constitution, verification or presentation of the database required substantial financial, technical or human investment.
Lectiel considered that the orange list did not meet these criteria. It maintained that France Telecom’s directory (i) is by its very nature a public database because it was created pursuant to a legal obligation of France Telecom, and that (ii) France Telecom took no risk in building and updating it, because the costs were mostly borne by subscribers.
However, the Supreme Court confirmed that the orange list is a database protected by a sui generis right. The judges considered that the orange list was a structured whole, specifically operated by France Telecom and distinct from France Telecom’s mere directory. The Supreme Court stressed that the database was not made up only of information provided by subscribers but was substantially based on additional information provided mostly by France Telecom. The judges also mentioned that the database had required “intellectual input” from France Telecom valued by an expert at €10.6 million between 1992 and 2000.
2. Lectiel also argued that a directory constitutes an “essential facility” within the meaning of French competition law, whose downloading should not require prior consent or the payment of any access fee. The Supreme Court, however, held that France Telecom was entitled to include in its fees compensation for its rights (i.e., the sui generis right relating to the database) provided that (i) access to the database was granted transparently, objectively and in nondiscriminatory fashion, and (ii) the fee for access was costoriented, i.e. reflected the costs borne by France Telecom in disclosing the requested data to an unrelated company.