In Beechwood House Publishing v Guardian Products Ltd [2011] EWPCC 22, the Claimant’s database right was found to have been infringed when the Defendants extracted 6,000 records from the Claimant’s database of 43,000 records. Additionally, the judge found that a subsequent mass-mailing exercise also amounted to infringement as each extraction was systematic.

BACKGROUND

Beechwood House Publishing publishes a database consisting of the names and addresses of practice nurses and doctors. In collating the database, Beechwood planted “seeds”, which consisted of fictitious names attached to addresses corresponding to Beechwood’s staff.

In April 1997, a third company called Bespoke Database Organisation Ltd (BDOL) purchased a licence to use part of the database, which comprised 8,363 records, for one mail-out. Under the terms of the licence, BDOL was obliged to delete the records after the mail-out had been completed. In breach of the licence, BDOL incorporated the records into its own database. In 2006, the Defendants bought BDOL’s entire database and loaded it onto their computers. Of the 8,363 records they loaded, around 6,000 were found to be identical to records on Beechwood’s current database. The reason they were not all identical was because some had changed as a result of being updated.

The Defendants then entered into a contract with a client to conduct a mailing exercise. One of the mailings was sent to a seed, alerting Beechwood.

DECISION

His Honour Judge Birss QC found that the loading of the data onto the Defendants’ computers was an act of extraction within the meaning of the Copyright and Rights in Databases Regulations 1997. The main issue was only whether what had been extracted was a substantial part of Beechwood’s database such as to amount to infringement under Regulation 16(1). Also at issue was whether the mailing process, i.e., printing individual letters using data from Beechwood’s database, amounted to unlawful extraction as a repeated and systematic extraction of insubstantial parts, which may amount to extraction of a substantial part, as provided by Regulation 16(2) of the 1997 Regulations.

Substantial Part

To assess what amounted to a substantial part, HHJ Birss applied the test from British Horseracing Board v William Hill [2005] C-203/02 RPC 13 on quantitative and qualitative substantial parts. On the quantitative approach, he considered the volume of data extracted as against the volume of data in the database as a whole. On the qualitative approach, he considered the scale of investment in obtaining, verifying, or presenting the content of the database, regardless of whether it amounted to a quantitatively substantial part of the whole.

Evidence concerning the financial investment made by Beechwood led the judge to conclude that the 6,000 records, or the 4,783 identical records, amounted to a “significant human and financial investment” and thus a qualitatively substantial part of Beechwood’s database.

As for the quantitative question, HHJ Birss QC noted that a quantitatively substantial part should be assessed in relative terms. In his view, “quantitatively substantial” could not require the numerical majority of the records. Six thousand records out of 43,000 equalled around 14 per cent; 4,783 out of 43,000 equalled 11 per cent. In the judge’s view, 11 per cent or 14 per cent of the data was at the lower end of what could be regarded as quantitatively substantial. However, even 11 per cent represented a significant part of the volume of the database, as its creation had required substantial resources.

The Mailing Process

Here, the judge found that each individual letter sent out by the Defendants was only an insubstantial part of the whole database. However, the individual extractions were repeated, one after the other, and were systematic. Therefore, they fell within Regulation 16(2) and amounted to infringement.

COMMENT

Since cases on the sui generis database right are few and far between, the judge’s analysis of substantial part, in particular as regards the scale of investment in the database, is a useful one. Also of note is that the Defendants failed in their argument that they were not liable because they believed that they had purchased the data legitimately, as the question of infringement is one of strict liability. This emphasises the need for adequate contractual protections when acquiring intellectual property rights.