In Football Dataco v Sportradar (C-173/11) the Court of Justice of the European Union (CJEU) has held that where data has been uploaded from a database in Member State A which is protected by sui generis database right and sent to the computer of a person in Member State B at that person's request, for the purposes of storage in that computer's memory and display on its screen, this constitutes an act of "re-utilisation" of the data by the person sending it.
The act of re-utilisation, which is an infringement of the sui generis right under the Database Directive (96/9/EC), takes place "at least" in Member State B, where there is evidence that there is an intention on the part of the sender (in Member State A) to target members of the public in Member State B.
- Those sampling data from others' databases and hosting it on servers outside the UK may be held directly liable for infringement of UK sui generis rights if they intended UK customers to access the data supplied from those servers; the "target" theory (as previously applied in trade mark law and in the recent copyright infringement decision of the CJEU in Titus Donner (C-5/11)).
- In the past it has been necessary to establish joint liability with individual users in the UK in order to extend liability to data suppliers outside the UK. Where there was not sufficient unity of purpose between supplier and user, claims of joint tortfeasorship failed. The CJEU's decision will therefore now make liability much more straightforward to prove.
- There could also be an impact on copyright infringement. Under the Database Directive, re-utilisation is defined as "any form of making available to the public of all or a substantial part of the contents of a database by the distribution of copies by renting, by on-line or other forms of transmission …". The CJEU's interpretation followed the "transmission" or "communication" theory of copyright – that the acts involved must be regarded as taking place not only in the Member State from which the data had been sent by Sportradar but also in the Member State in which the persons receiving those sending are located (in this case, the UK). If the interpretation of "making available to the public" is followed in the CJEU's interpretation of "communication to the public" then infringers of copyright works will also be easier to pursue for the effects of their activity in the UK.
The CJEU stated that it was for the national court to decide whether a UK audience has been targeted but that certain elements could be taken into account when considering whether there was the requisite intention to target UK users such as:
- Use of the English language where this is not a language of the Member State hosting the allegedly infringing database.
- Whether contracts with third parties allowing linkage to and use of the allegedly infringing database by such parties' customers take into account the territory of the UK and numbers of likely UK customers in the financial terms agreed for the contract.
- The grant of such contracts in itself to companies serving the needs of UK customers.
Sportradar was alleged to have extracted data from the Football Dataco database of live football facts "Football Live" into a website, betradar.com, hosted on a server in Austria, which was accessed by betting websites that linked to it through their pages so that their UK customers could access the data.
However, the fact that at the request of the internet user in the UK, data on Sportradar's web server was sent to that internet user's computer for technical purposes of storage and visualisation on screen, is not in itself a sufficient basis for concluding that act of re-utilisation performed by Sportradar takes place in the territory of the UK. The localisation of the act of re-utilisation in the UK is dependent on there being evidence that discloses an intention on the part of its performer to target a person in that territory.
Factors which may be taken into account by the national court in assessing whether the potentially infringing database was intended to target customers in the member state where the allegedly infringed sui generis rights were held included, in this case:
- the fact that Sportradar granted, by contract, a right of access to its server to companies offering betting services to the UK public may be evidence of its intention to target them, if Sportradar were aware of the destination of the data supply. This is for the national court to assess;
- the price fixed by Sportradar with the betting companies as consideration for the grant of the right of access to the data it had extracted from Football Dataco's database, if this took into account the extent of activities of the betting companies in the UK market and the prospect of betradar.com subsequently being consulted by internet users in the UK;
- the fact that the data placed online by Sportradar is accessible to UK internet users who are customers of the betting companies, in their own language, which is not the same as the languages commonly used in the Member States from which Sportradar carries on its activities.
Where such evidence is present, the referring court (here the Court of Appeal) will be entitled to consider that an act of re-utilisation is located in the territory of the Member State of the user to whose computer the data is transmitted.
The CJEU said it could not accept Sportradar's argument that an act of re-utilisation within the meaning of Article 7 of the Database Directive must in all circumstances be regarded as located exclusively in the territory of the Member State in which the web server from which the data in question is sent is situated. Such an interpretation would mean that infringement could be escaped simply by locating a server outside the territory of that Member State which would "have an impact on the effectiveness of the protection" of databases under the national law concerned. Further the objective of protection of databases by the sui generis right would be "compromised" if acts of re-utilisation aimed at the public in all or part of the territory of the EU were outside the scope of the Database Directive and the national legislation transposing it, merely because the server of the website used by the person doing that act was located in a non-Member State.
Article 7 of the Database Directive provides:
1. Member States shall provide for a right for the maker of a database which shows that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilisation of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.
2. For the purposes of this Chapter:
(a) “extraction” shall mean the permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any form;
(b) “re-utilisation” shall mean any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by on-line or other forms of transmission. …
5. The repeated and systematic extraction and/or re-utilisation of insubstantial parts of the contents of the database implying acts which conflict with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database shall not be permitted.’
The Database Directive was implemented in the United Kingdom by the Copyright and Rights in Database Regulations 1997, creating specific protection for databases via database copyright (a new type of literary copyright with its own standard of originality) and sui generis database right - a new intellectual property right protecting the investment in the obtaining, verification and/or presentation of data.