The Patents County Court of England and Wales (Beechwood House Publishing Ltd v Guardian Products Ltd & Ors  EWPCC 12) has refused an application for summary judgment by Beechwood in respect of its claim for infringement of its sui generis database right. His Honour Judge Birss QC held that, due to a lack of evidence as to the exact extent of the use of data from the database, Beechwood had failed to show that the Defendants had extracted a substantial part of its database.
Beechwood brought a claim for database right infringement under Regulations 12 and 16 of the Copyright and Rights in Databases Regulations 1997/3032 (which implemented the Database Directive (96/9/EC)). Proceedings were issued after lengthy open and without prejudice correspondence in an attempt to reach a settlement. The Defendants’ main defence to Beechwood’s claim was that the matter had already been settled. Beechwood applied for summary judgment on its claim and/or strike out of the Defendants’ defence.
The evidence Beechwood relied on was the use by Guardian of a fictitious entry, a so-called “seed”, which did not correspond to a real person, but which did correspond to the real addresses of one of Beechwood’s staff. A letter had been sent by Guardian to the address of the “seed”.
HHJ Birss decided that, a letter from Beechwood’s solicitors to the Defendants’ solicitors, which the Defendants had construed as an offer of settlement, was not such an offer as it was “subject to contract”.
HHJ Birss decided that the sui generis database right subsisted in its database and that Beechwood was the owner of that database right. Accordingly, HHJ Birss decided that the Defendants had no real prospect of defending the issues of subsistence and ownership.
As for infringement, the issue was whether the data in the form used by Guardian represented a “substantial part” of the contents of Beechwood’s database. HHJ Birss noted that there was no evidence as to how many entries used by Guardian had actually been derived from Beechwood’s database. Accordingly, he could not find that the “substantial part” hurdle had been cleared. Summary judgment on the issue of infringement was therefore refused.
It is interesting that Beechwood thought that it could get summary judgment on its claim in the absence of the crucial evidence as to exactly which, and how much, data had been “extracted”. Beechwood was essentially arguing that, based on the fact that one “seed” entry had been “extracted”, the Court should infer that a substantial part had been so extracted. This was an argument that simply could not be accepted in the absence of clear evidence.