The German Federal Court of Justice decided in its ruling of April 30, 2009, that the creator of a database can forbid third parties from detecting database modifications by means of data synchronization and from using them for a competitive product (file no. I ZR 191/05). The full text of the decision was recently published.

The plaintiff sold the so-called electronic customs tariff (ECT) based on the database TARIC of the European Commission. It contained tariffs and data required for an electronic customs declaration in the EU. The plaintiff provided the ECT online and on a CD-ROM, “Tariffs,” the latter with a specific kind of presentation. The defendants distributed an electronic database for the same purpose as ECT and the CD-ROM “Tariffs.” In 2001 and 2002, the plaintiff knowingly included some incorrect data in the CD-ROM “Tariffs.” This incorrect data together with some maintenance defects in the plaintiff’s product were later found in the database of the defendants.

The plaintiff claimed that the defendant took data on a considerable scale from ECT and the CD-ROM “Tariffs” in order to, by means of data synchronization, update their competitive product, and considered this to be an infringement of its database producer’s right under the German Copyright Act. The District Court dismissed the claim, while the Court of Appeals decided in favor of the plaintiff, though only with regard to the database “Tariffs.”

The Federal Court of Justice confirmed the decision of the Court of Appeals. Still, the fact that the plaintiff incurred expenses for the acquisition of a completed database or of a respective license does not constitute the database producer’s right. However, the plaintiff made considerable investments, according to the requirements of Sec. 87 a para. 1 sent. 1 German Copyright Act, while incurring high personnel costs for the program maintenance, permanent inspection and input of ECT data, as well as for the improvement of the content presentation. Furthermore, the products of the plaintiff and of the defendant can only be used in a reasonable way if they are constantly updated. Thus, the updates represent the actual economic value of the CD-ROM “Tariffs.”

The infringement does not consist of the fact that the defendants have saved the whole database “Tariffs” on their hard drive. This is not illicit copying pursuant to Sec. 97 para. 1 sent. 1, Sec. 87 b para. 1 German Copyright Act. The plaintiff gave his content for this saving since this is required for the normal use of a CD-ROM. Further, a lawful user is allowed to take out and/or make future use of qualitatively or quantitatively inessential parts of a publicly available database for any purpose. Yet, an infringement of plaintiff’s rights is on hand as the defendants took out, by means of data synchronization, qualitatively essential amended parts of the CD-ROM “Tariffs” in order to update the defendant’s competitive product. The determined takeover of particular files from the plaintiff’s CD-ROM to the product of the defendants was only possible by means of comprehensive data synchronization. Even a singular takeover of all amended data from a particular CD-ROM version by creating a list of modifications or through direct transfer is sufficient for violation of the database producer’s right.

Regarding the ECT database, the courts could not ascertain that the defendants used this database for the data synchronization. Insofar, the Federal Court of Justice confirmed the dismissal of action.