By their very nature, the exact scope of protection of sui generis rights in the field of intellectual property is hard to determine. Even more so if they are based in a European Community directive and thus subject to different implementation and interpretation regimes throughout the member states. The right to prohibit "extraction" and "re-utilisation" of database contents established more than a decade ago by the Community legislator – which was implemented outside the Copyright, Designs and Patents Act 1988 (CDPA) through the special Copyright and Rights in Databases Regulations 1997 in the UK, but incorporated into the German Copyright Act ("Urhebergesetz") in Germany – has been one of these somewhat unchartered rights. With its decision of October 9, 2008 (C-304/07) the European Court of Justice (ECJ) has now given a more definite shape to the rights of database makers under Article 7 of Directive 96/9/EC. In rejecting a rather narrow interpretation put forward by the German Supreme Court ("Bundesgerichtshof"), the Court confirmed that right holders enjoy a broad protection of their databases against copying.

Background

The case concerned the use of data compiled by Professor Knoop of the Albrecht-Ludwigs-Universität Freiburg as part of the University's "Klassikerwortschatz" ("Vocabulary of the Classics") project. Applying certain selection criteria such as the frequency of citation in reference publications, this project led to the publication of the "Freiburger Anthologie".

"Freiburger Anthologie" is a collection of German language verse from 1720 to 1933 based on a list of verse titles drawn up by Professor Knoop and published on the internet under the heading of "Die 1100 wichtigsten Gedichte der deutschen Literatur zwischen 1730 und 1900" ("The 1100 most important poems in German literature between 1730 and 1900"). The compilation had taken a considerable amount of time and money on the university's and Professor Knoop's side.

The defendant, Directmedia Publishing GmbH, marketed a collection of verse entitled "1000 Gedichte, die jeder haben muss" ("1000 poems everyone should have") on CD-ROM. The vast majority of these poems, 856 in total, were also mentioned in the list of verse titles drawn up by Professor Knoop. It was undisputed that in selecting the poems to be included on its CD-ROM, Directmedia had used that list as a guide. Directmedia omitted some poems and added others. In respect of each poem, it critically examined the selection made by Professor Knoop. The actual texts of the poems were then taken from Directmedia's own digital resources.

Freiburg University and Professor Knoop brought action against Directmedia claiming infringement of their copyright and database protection rights. Through the lower instances courts, Professor Knoop's copyright claim was upheld. On further appeal the Bundesgerichtshof, however, raised the question of whether the facts established in this case justify the application of the exclusionary rights conferred on the maker of a database by Article 7 Section 2 (a) of Directive 96/9/EC as implemented into German law by way of Section 87b of the German Copyright Act ("Urhebergesetz"). The question raised for preliminary ruling by the ECJ was whether those facts amount to an "extraction" of the content of the protected database or whether this presupposes the physical copying of the data from one medium to another by technical means.

The implementation of Directive 96/9/EC into the German law does not use the term "extraction" ("Entnahme"), but rather sticks to the established copyright terms of "copying" ("vervielfältigen"), "issuing copies to the public" ("verbreiten") and "performing, showing or playing in public" ("öffentlich wiedergeben"). Making reference to the definition of the concept of "extraction" under the Directive, several recitals in the preamble of the Directive which cite "copying" as a means of "extraction" and certain passages of the ECJ's decision in the earlier British Horseracing Board and Others case from the UK, the Bundesgerichtshof saw room for a narrow interpretation of Article 7 of the Directive. This interpretation would leave the use of the database as a source of consultation, information and critical inquiry outside the scope of protection, even if these acts resulted in the gradual recopying and incorporation of substantial parts of the protected database in a different database.

Outcome

The ECJ clearly rejected any attempt to construe the rights of the database makers narrowly. In doing so, the Court made reference to the wording "by any means or in any form", used in Article 7 Section 2(a). This wording clearly seeks to give the sui generis as a whole and the concept of "extraction" a wide definition.

The Directive's objective is to reward the initiative and investment of human, technical and/or financial resources on the side of the maker of a database by protecting him against the unauthorised appropriation of the results of his work. This legislative aim must be achieved independently of the nature and form of the transfer of the database content to another medium and the mode of operation used. A simple manual process, such as the manual recopying of the protected content to another medium, fulfils the requirement of "extraction" in just the same manner as electronic, electromagnetic or electro-optical processes do.

What is decisive according to the ECJ's ruling is whether or not, on a qualitatively or quantitatively-evaluated basis, a substantial part of the contents of the protected database has been transferred from it to another data carrier. Alternatively, have insubstantial parts been taken which, by their repeated or systematic nature, amount to the reconstruction of such a substantial part of the protected database? This can also be done by an onscreen consultation and the subsequent individual assessment of the content before manually copying the information as in the present case.

Comment

The ECJ's decision confirms the interpretation taken earlier in the British Horseracing Board and Others case. The decision also brings the protection conferred in Germany on the makers of databases by the sui generis right of Directive 96/9/EC in line with the broad concept underlying this piece of Community legislation. It will give right holders a considerably stronger position in the German courts.