Conclusions
OPINION OF ADVOCATE GENERAL
STIX-HACKL
delivered on 8 June 2004(1)
Case C-444/02
Fixtures Marketing Ltd
v
Organismos prognostikon agonon podosfairou (OPAP)
(Reference for a preliminary ruling from Monomeles Protodikio Athinon (Greece))
(Directive 96/9/EC – Databases – Legal protection – Sui generis right – Beneficiaries – Substantial investment – Obtaining, verification and presentation of the contents of a database – (In)substantial part of the contents of a database – Extraction and re-utilisation – Normal exploitation – Unreasonable prejudice to the legitimate interests of the maker – Substantial change to the contents of a database – Sport – Betting)
I – Preliminary observations
1.
This reference for a preliminary ruling is one of four parallel sets of proceedings
(2)
concerning the interpretation of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the
legal protection of databases
(3)
(‘the Directive’). Like the other cases, this case concerns the so-called sui generis right and its scope in the area of
sporting bets.
II – Legal background
A –
Community law
2.
Article 1 of the Directive contains provisions on the scope of the Directive. It provides inter alia:
- ‘1.
- This Directive concerns the legal protection of databases in any form.
- 2.
- For the purposes of this Directive, “database” shall mean a collection of independent works, data or other materials arranged
in a systematic or methodical way and individually accessible by electronic or other means.’
3.
Chapter III regulates the sui generis right in Articles 7 to 11. Article 7, which concerns the object of protection, provides
inter alia:
- ‘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. The first sale of a copy of a database
within the Community by the rightholder or with his consent shall exhaust the right to control resale of that copy within
the Community;
-
Public lending is not an act of extraction or re-utilisation.
- 3.
- The right referred to in paragraph 1 may be transferred, assigned or granted under contractual licence.
-
…
- 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.’
4.
Article 8, which governs the rights and obligations of lawful users, provides in paragraph 1:
- ‘1.
- The maker of a database which is made available to the public in whatever manner may not prevent a lawful user of the database
from extracting and/or re-utilising insubstantial parts of its contents, evaluated qualitatively and/or quantitatively, for
any purposes whatsoever. Where the lawful user is authorised to extract and/or re-utilise only part of the database, this
paragraph shall apply only to that part.’
5.
Article 9 provides that Member States may provide for exceptions to the sui generis right.
6.
Article 10, which concerns the term of protection, provides in paragraph 3:
‘Any substantial change, evaluated qualitatively or quantitatively, to the contents of a database, including any substantial
change resulting from the accumulation of successive additions, deletions or alterations, which would result in the database
being considered to be a substantial new investment, evaluated qualitatively or quantitatively, shall qualify the database
resulting from that investment for its own term of protection’.
B –
National law
7.
The Directive was implemented in Greek law by Law No 2819/00. According to Article 7B of the explanatory report to that Law
‘the need for protection of databases stems from the fact that the making of databases requires the investment of considerable
human, technical and financial resources while such databases can be copied or accessed at a fraction of the cost needed to
design them independently.’ Under Article 7E of the explanatory report, in addition to the right of intellectual property
a sui generis right is recognised in favour of the maker of the databases in order to prevent the extraction or re-utilisation
of a substantial part of the content of the database without its permission.
III – Facts and main proceedings
A –
General facts
8.
In England professional football in the top divisions is organised by The Football Association Premier League Limited and
The Football League Limited and in Scotland by The Scottish Football League. The Premier League and the Football League (comprising
Division One, Division Two and Division Three) cover four leagues in total. Before the start of each season, fixture lists
are drawn up for the matches to be played in the various divisions during the season. The data are stored electronically
and are accessible individually. The fixture lists are set out inter alia in printed booklets, both chronologically and by
reference to each team participating in the relevant league. The pairs are indicated as X v Y (for example, Southampton v
Arsenal). Around 2 000 matches are played during each season over a period of 41 weeks.
9.
The organisers of English and Scottish football retained a Scottish company, Football Fixtures Limited, to handle the exploitation
of the fixtures lists through licensing etc. Football Fixtures Limited, in turn, assigned its rights to manage and operate
outside the United Kingdom to Fixtures Marketing Limited (‘Fixtures’).
B –
Specific facts
10.
Fixtures brought a number of actions against the limited company Organismos Prognostikon Agonon Pododfairou AE (‘OPAP’). It
claims that OPAP unlawfully and without the permission of the English and Scottish associations which are the makers and
the operators of lists of football fixtures in England and Scotland, repeatedly extracts a substantial number of pairings
of football teams playing against each other and transfers them to its internet sites ‘Pame Stoichima’, ‘Podosfairo Kathe
Mera’, ‘Chryso Podosfairo’ and ‘Propo’ which distribute them and make them available to the Greek public, thereby infringing
the sui generis right of the companies represented by Fixtures. They cite the urgency of the situation in support of their
application for interim measures specifically to prohibit OPAP, on pain of a fine for any future infringement, from infringing
their rights over the lists of football fixtures in question in England and Scotland, together with publication at the defendant’s
expense of the decision in the Athens daily press.
IV – The questions referred
11.
The Monomeles Protodikio Athinon (Single-Judge Court of First Instance, Athens) seeks a preliminary ruling from the Court
of Justice on the following questions:
- 1.
- What is the definition of database and what is the scope of Directive 96/9/EC and in particular Article 7 thereof which concerns
the sui generis right?
- 2.
- In the light of the definition of the scope of the directive, do lists of football fixtures enjoy protection as databases
over which there is a sui generis right in favour of the maker and under what conditions?
- 3.
- How exactly is the database right infringed and is it protected in the event of rearrangement of the contents of the database?
V – Admissibility
12.
In the view of the Finnish Government the order for reference does not fulfil the criteria laid down in the case-law of the
Court of Justice for the admissibility of questions referred for a preliminary ruling. For instance, insufficient details
are given of the position under national law. Moreover, reference is made to Article 3 rather than Article 7 of the Directive
which is the relevant article here. Further the facts were given only in the summary of Fixtures’ arguments. There is thus
no description of OPAP. Nor is the connection between the legal provisions and the facts made clear. The information given
was so inadequate that the Finnish Government could not give a detailed opinion.
13.
The Commission merely observes that the the information provided by the national court did not allow the provisions of the
Directive to be applied to the specific facts. However, the Commission expressed no doubts regarding admissibility.
14.
According to settled case-law, it is solely for the national courts before which actions are brought, and which must bear
the responsibility for the subsequent judicial decision, to determine in the light of the special features of each case both
the need for a preliminary ruling in order to enable them to deliver judgment and the relevance of the questions which they
submit to the Court. Where the questions referred involve the interpretation of Community law, the Court is, in principle,
obliged to give a ruling.
(4)
15.
The Court may refuse to rule on a question referred for a preliminary ruling by a national court only where it is quite obvious
that the interpretation of Community law that is sought bears no relation to the actual facts of the main action or its purpose,
where the problem is hypothetical, or where the Court does not have before it the factual or legal material necessary to give
a useful answer to the questions submitted to it.
(5)
16.
In the present case it is not clear that the questions referred by the national court meet one of those descriptions. First,
it cannot be assumed that the interpretation of Community law that is sought bears no relation to the actual facts of the
main action or its purpose since the decision in the main proceedings turns inter alia on the the meaning of the term database
in Article 1 of the Directive. Second, the referring court has given the Court of Justice – albeit in summary form – all
the material it needs to give a useful answer to the questions referred to it.
17.
According to settled case-law, the need to provide an interpretation of Community law which will be of use to the national
court makes it necessary that the national court define the factual and legal context of the questions it is asking or, at
the very least, explain the factual circumstances on which those questions are based.
(6)
Given that it is the role of the national court to apply the law to the facts, the information about the factual and legal
framework is sufficient to enable the Court of Justice to give a useful answer to the questions referred. The order for reference
even gives information which is not contained in the order for reference in the parallel Case C-46/02, which is not criticised
by the Finnish Government, that is to say information on the relationship between Fixtures and Football Fixtures Limited.
The information given about the activities of OPAP is sufficient.
18.
The information provided in orders for reference must not only be such as to enable the Court to reply usefully but must also
enable the governments of the Member States and other interested parties to submit observations pursuant to Article 23 of
the Statute of the Court of Justice. It is the Court’s duty to ensure that that possibility is safeguarded, bearing in mind
that, by virtue of the abovementioned provision, only the orders for reference are notified to the interested parties.
(7)
19.
It is clear from the many observations submitted – not least by the Finnish Government – under Article 23 of the Statute of
the Court of Justice, that the information in the order for reference amply enabled those submitting them to give a useful
opinion on the questions referred to the Court.
20.
The Court has also held that it is essential that the national court should give at the very least some explanation of the
reasons for the choice of the Community provisions which it requires to be interpreted and of the link it establishes between
those provisions and the national legislation applicable to the dispute.
(8)
21.
According to the case-law of the Court, it is sufficient if, on the facts as described by the national court, it appears likely
that the facts of the main proceedings may be governed by the provisions of which an interpretation is sought. The Court can
provide an interpretation of Community law which may assist the national court in deciding the case in the main proceedings
and it may therefore deem it necessary to consider provisions of Community law to which the national court has not referred
in the text of its question.
(9)
22.
In the light of the foregoing observations, the questions referred by the Monomeles Protodikio Athinon are in principle admissible.
23.
In many respects the questions referred do not so much concern the interpretation of Community law, in other words the Directive,
as the application of the directive to a specific set of facts. That being so, I must endorse the Commission’s view that,
in proceedings on a reference for a preliminary ruling under Article 234 EC, that is not the role of the Court of Justice
but that of the national court and that the Court of Justice must confine itself to interpreting Community law in the case
before it.
24.
According to the settled case-law of the Court of Justice, in proceedings under Article 234 EC, which is based on a clear
separation of functions between the national courts and the Court of Justice, any assessment of the facts in the case is a
matter for the national court.
(10)
25.
The Court therefore has no jurisdiction to give a ruling on the facts in the main proceedings or to apply the rules of Community
law which it has interpreted to national measures or situations, since those questions are matters for the exclusive jurisdiction
of the national court. The analysis of individual events in connection with the database at issue in these proceedings thus
requires a factual assessment, which it is for the national court to make.
(11)
That apart, the Court has jurisdiction to answer the questions referred.
VI – Assessment of the merits
26.
The questions referred for a preliminary ruling by the national court relate to the interpretation of a series of provisions
of the Directive and in the main to the construction of certain terms. The matters addressed fall within different fields
and must be dealt with accordingly. While some of the questions concern the scope
ratione materiae of the Directive, others relate to the requirements for granting the sui generis right and its content.
A –
Scope ratione materiae
: the term ‘database’ (first and second questions)
27.
Many of the parties submitting observations referred in their written observations on the term ‘database’ within the meaning
of Article 1(2) of the Directive to criteria which are relevant only to the determination of the object of sui generis protection.
28.
The interpretation of the term ‘database’ within the meaning of Article 1(2) constitutes one of the fundamental requirements
for the application of the Directive and thus for its scope
ratione materiae altogether. That scope must be distinguished from the scope
ratione materiae of the sui generis right, that is to say the ‘object of protection’ provided for by Article 7 of the Directive. Although
that provision is connected with the legal definition of ‘database’ it lays down a series of additional conditions regarding
the object of the sui generis protection. That means that not all databases within the meaning of Article 1(2) are at the
same time objects of protection within the meaning of Article 7 of the Directive.
29.
That distinction is also made in the recitals in the preamble to the Directive. The 17th recital concerns the term database
and the 19th recital the sui generis right. Admittedly, the examples given there were not the best ones to illustrate the
different meanings: a recording of certain artistic musical works does not even constitute a database, while a compilation
of musical recordings does not fall within the objects of protection covered. However, that is clear from the very fact that
a database does not even exist in such a case.
30.
Falling within the definition of a ‘database’ is thus a necessary, but not a sufficient, condition for the grant of the sui
generis right laid down by Article 7.
31.
An initial reference point for the interpretation of the term ‘database’ lies in the rules of international law which serve
to provide guidance. The first such rule is Article 10(2) of the Agreement on Trade-related Aspects of Intellectual Property
Rights (TRIPs Agreement),
(12)
although that provision does not contain all the criteria in Article 1(2) of the Directive. Then there is Article 2(5) of
the Berne Convention as revised. On the other hand rules of international law which are more recent than the Directive cannot
provide an adequate yardstick. That is true, for example, of Article 5 of the WCT WIPO Copyright Treaty, which was not adopted
until 1996. As is clear from the background to the adoption of the Directive and the Commission’s documents in particular,
the Directive was intended primarily to reflect the Berne Convention.
32.
However, an interpretation in the light of the above rules of international law is not of much further use as regards the
construction of the term database because Article 1(2) of the Directive contains a legal definition which, while not very
precise, lays down several requirements. Their significance will be examined in greater detail below. However, it must be
borne in mind that, although the Court of Justice can provide the national court with useful information for the solution
of the case, it remains the task of the national court to apply the provisions of Community law or the provisions of national
law transposing them, as interpreted by the Court of Justice, to the facts of the individual case.
33.
The very structure of Article 1 of the Directive, which contains various rules on databases, points to a wide interpretation.
Thus, Article 1(1) expressly provides that the Directive applies to ‘databases in any form’. Moreover, the fact that Article
1(3) provides for an exception, namely for computer programmes, reinforces the case for a wide interpretation of the term
‘database’.
34.
The intention of the Community legislature, as demonstrated by the background to the adoption of the Directive,
(13)
can also be cited in support of a wide interpretation.
35.
However, fulfilment of the three requirements laid down in Article 1(2) is essential for the definition of the term ‘database’.
36.
First ‘a collection of
independent works, data or other materials’ (emphasis added) is required. The question whether the main proceedings concern data or materials
need not be considered in greater depth, because in practice they concern either data, in the sense of combinations of signs
representing facts, that is to say, elementary statements with potentially informative content,
(14)
or materials as recognisable entities.
37.
In the absence of a clear provision to that effect in the Directive it is not necessary for a significant number of data or
materials to be involved. A demand for such a provision by the Parliament was not taken up by either the Council or the Commission.
Requirements of a quantitative nature, namely for ‘a substantial investment,’ are laid down only by Article 7(1) of the Directive.
38.
Rather, in the present proceedings, it must be ascertained whether the requirement of independence of the data or materials
is fulfilled.
39.
That criterion should be understood as meaning that the data or materials must not be linked or must at least be capable
of being separated without losing their informative content,
(15)
which is why sound or pictures from a film are not covered. One possible approach to interpretation is to focus not only
on the mutual independence of the materials from one another but on their independence within a collection.
(16)
40.
Second, the Directive only covers collections which have been arranged systematically or methodically. In the 21st recital
it is made clear that it is not necessary for those materials to have been physically stored. That requirement serves to exclude
random accumulations of data and ensure that only planned collections of data are covered,
(17)
that is to say, data organised according to specific criteria.
(18)
It is sufficient if a structure is established for the data and they are organised only following application of the appropriate
search programme,
(19)
and thus essentially through sorting and, possibly, indexation. Both statistical and dynamic
(20)
databases are covered.
41.
Thirdly, Article 1(2) of the Directive requires that the data be ‘individually accessible by electronic or other means.’ Thus,
mere storage of data is not covered by the term ‘database’ within the meaning of Article 1(2) of the Directive.
42.
Accordingly, the term ‘database’ in Article 1(2) must be interpreted widely. However, the conditions regarding the object
of protection laid down in Article 7(1) of the Directive entail limitations.
43.
Certain Governments express the view that the selection or organisation of the contents of a database on sporting bets does
not constitute an independent intellectual creation. In that connection it must be observed that creativity is not a defining
characteristic of a database within the meaning of Article 1 of the Directive. Even in the light of the object of protection
of the sui generis right it must be doubted whether creativity is a defining characteristic. In contrast, it is an essential
condition for protection of a database by the copyright provided for in Chapter II of the Directive (Article 3 et seq.) that
a database should be the author’s own intellectual creation. Article 7(4) of the Directive provides that the sui generis right
is to apply irrespective of the eligibility of that database or its contents for protection by copyright.
44.
The object of protection of the sui generis right is different from that of copyright. The newly created right is intended,
unlike copyright, which protects creative input, to protect investment.
(21)
Thus, there is a difference as regards the proprietor of the right. While the sui generis right protects the maker of a database,
copyright – as the term itself (in German) indicates – protects the author of a work.
45.
Some Governments have pointed out in their written observations that the database at issue in the proceedings is not systematically
or methodically organised, because the teams are paired by drawing lots. In that connection it must be observed that the contents
of the database do not only consist in data derived from drawing lots but that additional entries are made, such as place
and time of the match.
B –
Object of protection: Conditions (first and second questions referred)
46.
In order to be covered by the sui generis right under Article 7 of the Directive a database must fall within the defining
elements laid down by that provision. These proceedings concern the interpretation of some of those criteria.
47.
In that connection, reference should be made to the legal debate on the question whether the sui generis right covers the
creation, in the sense, essentially, of the activity of creating a database, or the outcome of that process. On that point,
it must be observed that the Directive protects databases or their contents but not the information they contain as such.
Ultimately it is thus a matter of protecting the product, while at the same time indirectly protecting the expenditure incurred
in the process, in other words, the investment.
(22)
48.
The requirements laid down by Article 7 of the Directive must be read in conjunction with those laid down by Article 1(2).
The resulting definition of the object of protection is narrower than that of ‘database’ in Article 1.
49.
The sui generis right introduced by the Directive derives from the Scandinavian catalogue protection rights and the Dutch
‘geschriftenbescherming’. However, that background must not mislead us into importing the thinking on those earlier provisions
developed in academic writings and case-law into the Directive. Rather, the Directive should serve as a yardstick for the
interpretation of national law, even in those Member States which had similar provisions before the Directive was adopted.
In those Member States, too, the national legislation had to be brought into line with the precepts of the Directive.
1. ‘Substantial investment’
50.
A key term for the definition of the object of protection of the sui generis right is the expression ‘substantial investment’
in Article 7(1) of the Directive. The criterion is further qualified by the requirement that the investment be ‘qualitatively
and/or quantitatively’ substantial. However, the Directive does not lay down legal definitions of those two alternatives.
Academic legal writers have called for clarification of that point by the Court of Justice. That demand is entirely justified
since only such clarification will ensure an autonomous and uniform Community interpretation. It must, of course, not be forgotten
that the application of the criteria for interpretation is ultimately a matter for the national court, which entails a risk
of differing applications.
51.
As is clear from the structure of Article 7(1) of the Directive, the term ‘substantial investment’ is to be construed in relative
terms. According to the preamble to the Common Position, in which that provision was given its final version, the investments
used to draw up and compile the contents of a database were to be protected.
(23)
52.
The investment must thus relate to certain activities connected with the making of a database. Article 7 lists the following
three activities: obtaining, verification and presentation of the contents of a database. As those defining elements are the
subject of another question referred, their meaning will not be considered in detail here.
53.
It is made clear what type of investments may be covered by the 40th recital, the last sentence of which reads: ‘such investment
may consist of the implementation of financial resources and/or the expending of time, effort and energy.’ According to the
seventh recital, it is a matter of ‘the investment of considerable human, technical and financial resources.’
54.
Further, the term ‘substantial’ must also be construed in relative terms, first in relation to costs and their redemption
(24)
and secondly in relation to the scale, nature and contents of the database and the sector to which it belongs.
(25)
55.
Thus it is not only investments which have a high value in absolute terms that are protected.
(26)
On the other hand the criterion ‘substantial’ cannot be construed only in relative terms. The Directive requires an absolute
lower threshold for investments worthy of protection as a sort of
de minimis rule.
(27)
That is implied by the 19th recital, according to which the investment must be ‘substantial enough.’
(28)
However that threshold should probably be set low. First, that is the implication of the 55th recital
(29)
in which there is no clarification as regards level. Secondly, it can be inferred from the fact that the Directive is intended
to bring different systems into line. Thirdly, a lower limit that was too high would undermine the intended purpose of the
Directive, which is to create incentives for investment.
56.
Many of the parties submitting observations based their observations on the so-called ‘spin-off theory’ according to which
by-products are not covered by the right. It is only permissible to protect profits which serve to repay the investment. Those
parties pointed out that the database at issue in the proceedings was necessary for the organisation of sporting bets, that
is to say, it was made for that purpose. The investment was for the purpose of organising bets and not, or not exclusively,
for that of creating the database. The investment would have been made in any event, as there is an obligation to undertake
such organisation. The database is thus merely a by-product on another market.
57.
In the present proceedings it must thus be clarified whether and in what way the so-called ‘spin-off theory’ can be of relevance
to the interpretation of the Directive and in particular of the sui generis right. In the light of the reservations expressed
in these proceedings regarding the protection of databases which are mere by-products, a demystification of the ‘spin-off
theory’ seems called for. This theory, leaving aside its origins at national level, can be traced back, first, to the purpose
implied by the 10th to 12th recitals of the Directive, which is to provide incentives for investment by improving the protection
of investment. However, it is also based on the idea that investments should be repaid by profits from the principal activity.
The ‘spin-off theory’ is also bound up with the idea that the Directive only protects those investments which were necessary
to obtain the contents of a database.
(30)
All these arguments have their value and must be taken into account in the interpretation of the Directive. However that must
not result in the exclusion of every spin-off effect solely in reliance on a theory. The provisions of the Directive are and
remain the decisive factor in its interpretation.
58.
The solution to the legal issue in these proceedings turns on whether the grant of protection to a database depends on the
intention of the maker or the purpose of the database, where these are not the same. In that connection, one could simply
point out that the Directive makes no reference to the purpose of a database in either Article 1 or Article 7. If the Community
legislature had wanted to lay down such a requirement, it would surely have done so. For both Article 1 and Article 7 demonstrate
that the Community legislature was perfectly prepared to lay down a number of requirements. According to those requirements
the purpose of the database is not a criterion for the assessment of the eligibility for protection of a database. Rather,
the requirements laid down by Article 7 are decisive. The position is not altered by the 42nd recital which many of the parties
submitting observations cite. First, that recital concerns the scope of the sui generis right and, secondly, here too, what
is important is that the investment is not harmed.
59.
However, even in the other recitals of the Directive which refer to investment and emphasise its importance, such as the 12th,
19th and 40th recitals, there is no suggestion that the protection of a database depends on its purpose.
60.
Moreover, in practice there may be makers of databases who are pursuing several purposes in making a database. It may be that
the investments made cannot be attributed to a certain single purpose or are not separable. In such a situation, the criterion
of the purpose of a database would not provide an unequivocal solution. Either the investment would be protected independently
of another purpose or it would be wholly unprotected because of the other purpose. The criterion of purpose thus proves either
impracticable or irreconcilable with the purpose of the Directive. Excluding the protection of databases which serve several
purposes would run counter to the objective of providing incentives for investment. That would prove an enormous obstacle
to investments in multifunctional databases.
61.
The database at issue in the main proceedings is an example of a situation where the database is created for the additional
purpose of organising fixture lists. Creating a separate – possibly almost identical – database would be contrary to fundamental
economic principles and such a requirement cannot be inferred from the Directive.
62.
It is to be determined whether there was a substantial investment in the main proceedings by the application of the above
criteria to the specific facts. According to the distribution of responsibilities in a reference for a preliminary ruling
under Article 234 EC, that is the task of the national court. In any event, the assessment of investments in the database
must include the circumstances to be taken into account in drawing up the fixture lists, such as the attraction of the game
for spectators, the interests of the bookmakers, marketing by associations, other events in the area on the planned date,
the appropriate geographical distribution of the games and the avoidance of public order issues. Finally, the number of games
must be taken into account in the assessment. The burden of proof of the investment made is on the party invoking the sui
generis right.
2. ‘Obtaining’ within the meaning of Article 7(1) of the Directive
63.
One issue in the present case is whether there was any ‘obtaining’ within the meaning of Article 7(1) of the Directive. That
provision only protects investment in the ‘obtaining’, ‘verification’ or ‘presentation’ of the contents of a database.
64.
We must base our discussion on the thrust of the protection conferred by the sui generis right, in other words the protection
of the creation of a database. Creation can then be seen as an umbrella term for obtaining, verification and presentation.
(31)
65.
The main proceedings deal with an often discussed legal problem, that is to say whether, and, if so, under what conditions,
and to what extent the Directive protects not only existing data but also data created by the maker of a database. If obtaining
is only to relate to existing data, the protection of the investment would only cover such data. Thus, if we take that interpretation
of obtaining as a basis, the protection of the database in the main proceedings depends on whether existing data were obtained.
66.
However, if we take the umbrella-term creation, in other words the supplying of the database with content,
(32)
as a basis, both existing and newly created data could be covered.
(33)
67.
A comparison of the term ‘obtaining’ used in Article 7(1) with the activities listed in the 39th recital in the preamble to
the Directive might shed some light. However, it must be pointed out at the start that there are divergences between the various
language versions.
68.
If we start with the term ‘Beschaffung’, used in the German version of Article 7(1), it can only concern existing data, as
it can only apply to something which already exists. In that light
Be schaffung is the exact opposite of
Er schaffung (creation). Analysis of the wording of the Portuguese, French, Spanish and English versions, which are all based
on the Latin ‘obtenere’, to receive, yields the same result. The Finnish and Danish versions also suggest a narrow interpretation.
The wide interpretation of the English and German versions advocated by many parties to the proceedings is therefore based
on an error.
69.
Further assistance with the correct interpretation of ‘obtaining’ in the terms of Article 7(1) of the Directive might be provided
by the 39th recital in the preamble, which is the introductory recital for the subject of the sui generis right. That recital
lists only two activities in connection with the protected investments, that is to say ‘obtaining’ and ‘collection’ of the
contents. However, here too, problems arise over the differences between the various language versions. In most versions,
the same term is used for the first activity as that used in Article 7(1). Moreover, although the terms used do not always
describe the same activity, they essentially concern the seeking and collecting of the contents of a database.
70.
The language versions which use, in the 39th recital, two different terms from those used in Article 7(1) of the Directive
are to be construed so that the two activities listed are viewed as subspecies of obtaining within the meaning of Article
7(1) of the Directive. Admittedly, that raises the question why the 39th recital only defines obtaining but not verification
or presentation more precisely. The latter two terms appear first in the 40th recital.
71.
On the other hand, the language versions which use the same term in the 39th recital as in Article 7(1) of the Directive will
have to be construed so that the term obtaining in the 39th recital is understood in a narrower sense, whereas the term used
in Article 7(1) of the Directive is to be understood in a wide sense, in other words as also encompassing the other activity
listed in the 39th recital.
72.
All the language versions thus allow of an interpretation according to which, although ‘obtaining’ within the meaning of Article
7(1) of the Directive does not cover the mere production of data, that is to say, the generation of data,
(34)
and thus not the preparatory phase,
(35)
where the creation of data coincides with its collection and screening, the protection of the Directive kicks in.
73.
In that connection, it should be pointed out that the so-called ‘spin-off theory’ cannot apply. Nor can the objective pursued
in obtaining the contents of the database be of any relevance.
(36)
That means that protection is also possible where the obtaining was initially for the purpose of an activity other than the
creation of a database. For the Directive also protects the obtaining of data where the data was not obtained for the purposes
of a database.
(37)
That implies that an external database, which is derived from an internal database, should also be covered by protection.
74.
It is the task of the national court, using the interpretation of the term ‘obtaining’ set out above, to assess the activities
of Fixtures. It is primarily a matter of classifying the data and its handling from its receipt to its inclusion in the database
at issue in the proceedings. That entails the assessment of the drawing up of the fixture lists, in other words, essentially
tying up the pairings with the place and time of the individual games. The fact that the fixture list is the outcome of negotiation
between several parties, in particular, the police, associations and fan clubs, suggests that the present case is concerned
with existing data. The fact that, as many of the parties have pointed out, the data were obtained for a purpose other than
the creation of a database similarly suggests that these are existing data.
75.
However, even if those activities were classified as the creation of new data, there might be ‘obtaining’ within the meaning
of Article 7(1) of the Directive. That would be the case if the creation of the data took place at the same time as its processing
and was inseparable from it.
3. ‘Verification’ within the meaning of Article 7(1) of the Directive
76.
The usefulness of the database for betting and for its economic exploitation depends on continuous monitoring of the contents
of the database at issue in these proceedings. According to the case-file, the database is constantly checked for correctness.
If such a check reveals the need for changes, the necessary adjustments are made.
77.
The fact that some of those adjustments do not constitute verification of the contents of the database is not detrimental.
In order for there to be an object which is covered by the sui generis right it is only necessary that many of the activities
undertaken can be classified as verification within the meaning of Article 7(1) of the Directive and that the substantial
investment should at least concern inter alia the part of the activities covered by Article 7.
4. ‘Presentation’ within the meaning of Article 7(1) of the Directive
78.
The object of protection of the sui generis right is constituted by ‘obtaining’ and ‘verification’ of the contents of a database
and also by its ‘presentation’. That entails not only the presentation for users of the database, that is to say, the external
format, but also the conceptual format, such as the structuring of the contents. An index and a thesaurus are generally used
to assist with the processing of data. As is clear from the 20th recital, such materials relating to the interrogation of
the database can enjoy the protection of the Directive.
(38)
C –
Content of the protected right
79.
It must first be observed that, strictly speaking, the introduction of the sui generis right was intended not to harmonise
existing law but to create a new right.
(39)
That right goes beyond previous distribution and reproduction rights. That should also be taken into account in the interpretation
of prohibited activities. Accordingly, the legal definition in Article 7(2) of the Directive assumes particular importance.
80.
At first sight Article 7 of the Directive contains two groups of prohibitions or, from the point of view of the person entitled,
that is to say the maker of a database, two different categories of right. Whereas paragraph 1 lays down a right to prevent
use of a substantial part of a database, paragraph 5 prohibits certain acts relating to insubstantial parts of a database.
On the basis of the relationship between substantial and insubstantial, paragraph 5 can also be understood as an exception
to the exception implied by paragraph 1.
(40)
Paragraph 5 is intended to prevent circumvention of the prohibition laid down by paragraph 1,
(41)
and can thus also be classified as a protection clause.
(42)
81.
Article 7(1) provides for a right of the maker to prevent certain acts. That entails a prohibition on such preventable acts.
The preventable and thus prohibited acts are, first, extraction and, second, re-utilisation. Legal definitions of the terms
‘extraction’ and ‘re-utilisation’ are given in Article 7(2) of the Directive.
82.
However, the prohibition laid down by Article 7(1) is not absolute, but requires the whole or a substantial part of a database
to have been affected by a prohibited act.
83.
The two defining elements must therefore be examined on the basis of the criterion determining application of Article 7(1)
and (5): ‘substantial’ or ‘insubstantial’ part as the case may be. Thereafter the prohibited acts under Article 7(1) and (5)
are to be considered.
1. Substantial or insubstantial parts of a database (first and second questions referred
a) General observations
84.
It was contended in the proceedings that Article 7(1) of the Directive only prohibits acts which entail that the data are
arranged in as systematic or methodical a way and are as individually accessible as in the original database.
85.
That argument must be understood as laying down a condition for the application of the sui generis right. Whether there is
in fact any such condition must be determined on the basis of the provisions on the object of protection and in particular
on the basis of the legal definition laid down in Article 7(2) of the acts prohibited under Article 7(1).
86.
Neither Article 7(1) nor Article 7(5) of the Directive lays down the above condition expressly or makes any reference to it.
Rather, the fact that express reference is made in Article 1(2) to arrangement ‘in a systematic or methodical way’ whereas
no such reference is made in Article 7 suggests the opposite conclusion, that is to say, that the Community legislature did
not intend to make that criterion a condition for the application of Article 7.
87.
Moreover, the very purpose of the Directive precludes such an additional criterion.
88.
The protection provided for in Article 7 would be undermined by such an additional criterion because the prohibition laid
down by that article could be circumvented by simple alteration of parts of the database.
89.
The 38th recital in the preamble to the Directive demonstrates that the Directive was also intended to prohibit possible breaches
consisting in the rearrangement of the contents of a database. That recital refers to that risk and to the inadequacy of copyright
protection.
90.
The purpose of the Directive is precisely the creation of a new right, and even the 46th recital cannot refute that as it
concerns another aspect.
91.
Even the 45th recital, according to which copyright protection is not to be extended to mere facts or data, does not support
the argument for an additional criterion. That, of course, does not mean that the protection covers the data themselves or
individual data. The object of protection is and remains the database.
92.
Accordingly it must be considered that the fact of having the same systematic or methodical arrangement as the original database
does not constitute a criterion for the determination of the legality of the actions taken in connection with the database.
Therefore, the view that the Directive does not protect data which are compiled in an altered or differently structured way
is fundamentally mistaken.
b) The expression ‘substantial part of the contents of a database’ within the meaning of Article 7(1) of the Directive
93.
This question seeks an interpretation of the term ‘substantial part of the contents of a database’ in Article 7(1) of the
Directive. In contrast with other key terms in the Directive there is no legal definition of this term. It was removed in
the course of the legislative procedure, at the stage of the Common Position of the Council, to be precise.
94.
Article 7(1) of the Directive provides for two alternatives. As is clear from the wording a part may be substantial in quantitative
or qualitative terms. The wording chosen by the Community legislature must be interpreted as meaning that a part may be substantial
even when it is not substantial in terms of quantity but is in terms of quality. Thus the argument that there must always
be a minimum in terms of quantity must be dismissed.
95.
The quantitative alternative must be understood as requiring the amount of the part of the database affected by the prohibited
act to be determined. That raises the question whether this must be assessed in relative or absolute terms. In other words
whether a comparison must be made of the amount in question with the whole of the contents of the database
(43)
or whether the affected part is to be assessed in itself.
96.
In that connection, it must be observed that a relative assessment would tend to disadvantage the makers of large databases
(44)
because the larger the total amount the less substantial the affected part. However, in such a case, a qualitative assessment
undertaken at the same time could balance out the equation where a relatively small affected part could none the less be considered
substantial in terms of quality. Equally, it would be possible to combine both quantitative approaches. On that basis even
a part which was small in relative terms could be considered substantial because of its absolute size.
97.
The question also arises whether the quantitative assessment can be combined with the qualitative. Of course, it only arises
in cases where an assessment in terms of quality is possible in the first place. If it is, there is nothing to prevent the
affected parts from being assessed according to both methods.
98.
In a qualitative assessment, technical or economic value is relevant in any event.
(45)
Thus, a part which is not large in volume but is substantial in terms of value may also be covered. Examples of valuable characteristics
of lists in the field of sport would be completeness and accuracy.
99.
The economic value of an affected part is generally measured in terms of the drop in demand
(46)
caused by the fact that the affected part is not extracted or re-utilised under market conditions but in some other way.
The affected part and its economic value can also be assessed from the point of view of the wrongdoer, that is to say in terms
of what the person extracting it or re-utilising it has saved.
100.
In the light of the objective of protecting investment pursued by Article 7 of the Directive, the investment made by the maker
will always have to be taken into consideration in the assessment of whether a substantial part is involved.
(47)
According to the 42nd recital, the prohibition on extraction and re-utilisation is intended to prevent detriment to investments
.
(48)
101.
Thus, investments, and in particular the cost of obtaining data, can also be a factor in the assessment of the value of the
affected part of a database .
(49)
102.
There is no legal definition in the Directive of the point at which a part becomes substantial. The unanimous view expressed
in legal writings is that the Community legislature intentionally left such demarcation to the Courts.
(50)
103.
However, the question whether a substantial part is affected may not be allowed to depend on whether there is significant
detriment .
(51)
Mere reference to such detriment in a recital, that is to say at the end of the 42nd recital, cannot be sufficient to cause
the threshold for protection to be set so high. It is, moreover, debatable whether ‘significant detriment’ can be relied on
as a criterion for defining substantialness at all since the 42nd recital could also be construed as meaning that ‘significant
detriment’ is to be seen as an additional requirement in cases in which a substantial part is affected, that is to say in
cases where substantialness has already been established. Even the ‘serious economic and technical consequences’ of prohibited
acts referred to in the eighth recital cannot justify too strict an assessment in relation to detriment. Both recitals serve,
rather, to emphasise the economic necessity for protection of databases.
104.
As regards the assessment of the affected parts of the database, it is not disputed that the acts take place weekly. That
raises the question whether, if a relative approach is taken, the affected parts are to be compared with the database as a
whole or with the whole in the relevant week. Finally, it would be possible to aggregate all the parts affected each week
over the whole season and then compare the resulting quantity with the database as a whole.
105.
An interpretation geared to the objective of the sui generis right thus simply amounts to a comparison of the affected part
and of the whole over the same period of time. That comparison can be made either over a week or over the season. If more
than half of the games are involved, the affected part can be described as substantial. However, a proportion of less than
half the games altogether may be sufficient if the proportion is higher in some categories of game, for example in the Premier
League.
106.
If the assessment is made in absolute terms, the affected parts would have to be aggregated until the threshold above which
the affected parts were substantial was reached. The period of time over which substantial parts can be said to have been
affected can thus be assessed.
2. Prohibitions relating to the substantial part of the contents of a database (second question and first part of the third question)
107.
The right of the maker enshrined in Article 7(1) of the Directive to prevent certain acts implies a prohibition on such acts,
namely extraction and/or re-utilisation. Such acts are therefore described as ‘unauthorised’ in a series of recitals.
(52)
108.
I now turn to the interpretation of the terms ‘extraction’ and ‘re-utilisation’. In that connection the corresponding legal
definitions in Article 7(2) of the Directive must be analysed. Here too, the objective of the Directive of introducing a
new form of right must be borne in mind. Reference will have to be made to that yardstick for guidance in the analysis of
the two terms.
109.
The principle applies, with regard to both prohibited acts, that the objective or intention of the user of the contents of
the database is not relevant. Thus, it is not of decisive importance whether the use is purely commercial. Only the defining
elements of the two legal definitions are of relevance.
110.
Again, with regard to both prohibited acts, and in contrast to the position under Article 7(5), it is not only repeated and
systematic acts which are covered. As the acts prohibited under Article 7(1) have to concern substantial parts of the contents
of a database, the Community legislature has less stringent requirements of such acts than those applicable in respect of
insubstantial parts under Article 7(5).
111.
In that connection, an error in the structure of the Directive must be pointed out.
(53)
As the legal definition of Article 7(2) also focuses on the whole or a substantial part, it duplicates the requirement laid
down by Article 7(1) unnecessarily. In combination with Article 7(5), the legal definition laid down in Article 7(2) even
entails a contradiction since Article 7(5) prohibits the extraction and re-utilisation of insubstantial parts. Analysis of
extraction and re-utilisation according to the legal definition in Article 7(2) yields the odd result that Article 7(5) prohibits
certain acts in relation to insubstantial parts only when such acts concern the whole or substantial parts.
112.
Several parties also raised the question of competition. This aspect should be considered in the light of the fact that the
final version of the Directive does not contain the rules on the distribution of compulsory licences originally planned by
the Commission.
113.
Opponents of extensive protection for the maker of a database fear that extensive protection gives rise to a danger of the
creation of monopolies, particularly in the case of hitherto freely accessible data. For instance, a maker who has a dominant
position on the market could abuse that position. In that connection it must be borne in mind that the Directive does not
preclude the application of the competition rules in primary law and in secondary legislation. Anti-competitive conduct by
makers of databases is still subject to those rules. That is clear both from the 47th recital and from Article 16(3) of the
Directive, under which the Commission is to verify whether the application of the sui generis right has led to abuse of a
dominant position or other interference with free competition.
114.
In these proceedings the issue of the legal treatment of freely accessible data was also addressed. In that connection, it
was those governments submitting observations in the proceedings which expressed the view that public data were not protected
by the Directive.
115.
On that point, it must first be emphasised that the protection covers the contents of databases and not of data. First, the
risk that the protection might extend to the information contained in the database can be countered by interpreting the Directive
narrowly in that respect, as proposed here. Second, recourse to the national and Community instruments of competition law
where necessary is mandatory.
116.
As regards the protection of data which make up the content of a database of which the user of the data is unaware, it must
be pointed out that the Directive prohibits only certain acts, that is to say, extraction and re-utilisation.
117.
Although the prohibition of extraction laid down in the Directive presupposes knowledge of the database, that is not necessarily
the case as regards re-utilisation. I will come back to that issue in connection with re-utilisation.
a) The term ‘extraction’ in Article 7 of the Directive
118.
The term ‘extraction’ in Article 7(1) of the Directive is to be interpreted on the basis of the legal definition in Article
7(2)(a).
119.
The first element is the transfer of the contents of a database to another medium, such transfer being either permanent or
temporary. The wording ‘by any means or in any form’ implies that the Community legislature gave the term ‘extraction’ a wide
meaning.
120.
It thus covers not only the transfer to a data medium of the same type
(54)
but also to one of another type.
(55)
That means that merely printing out data falls within the definition of ‘extraction’.
121.
Furthermore, ‘extraction’ clearly cannot be construed as meaning that the extracted parts must then no longer be in the database
if the prohibition is to take effect. Nor, however, must ‘extraction’ be so widely construed as also to cover indirect transfer.
Rather, direct transfer to another data medium is required. In contrast to ‘re-utilisation’ it does not require any public
element. Private transfer is also sufficient.
122.
As regards the second element, that is to say the affected part of the database (‘whole or substantial part’), reference can
be made to the arguments on substantialness.
123.
It is the task of the national court to apply the above criteria to the specific facts of the main proceedings.
b) The term ‘re-utilisation’ in Article 7 of the Directive
124.
According to the legal definition in Article 7(2)(b) of the Directive, re-utilisation involves making data publicly available.
125.
By deliberately using the term ‘re-
utilisation’ rather than ‘re-
exploitation’ the Community legislature wanted to make clear that the protection was to cover acts by non-commercial users too.
126.
The means of ‘re-utilisation’ listed in the legal definition such as ‘the distribution of copies, by renting, by on-line …
transmission’ are to be understood simply as a list of examples, as is clear from the additional words ‘or other forms of
transmission’.
127.
In cases of doubt, the term ‘making available’ is to be construed widely
(56)
as the use of the additional words ‘any form’ in Article 7(2)(b) suggests. On the other hand, mere ideas
(57)
or a search for information as such using a database
(58)
are not covered.
128.
Many of the parties expressed the view that the data were in the public domain. Whether that is so can be determined by examination
of the specific facts, which is a matter for the national court.
129.
However, even if the national court reaches the conclusion that the data are in the public domain that does not preclude parts
of the database containing data in the public domain from also enjoying protection.
130.
In Article 7(2)(b) of the Directive there are also rules on the exhaustion of the right. The right is exhausted only under
certain conditions. One of those conditions is described as ‘the first sale of a copy of a database’. That suggests that there
can be exhaustion of the right only in respect of such physical objects. If re-utilisation happens in some other way than
though a copy, there is no exhaustion. As regards on-line transmission that principle is expressly laid down in the 43rd recital.
The sui generis right thus does not only apply on the first ‘making available to the public’.
131.
As the Directive does not mention the number of transactions following the first ‘making available to the public’ that number
cannot be relevant. Thus, if a substantial part of the contents of a database is involved that is protected even if it was
obtained from an independent source such as a print medium or the internet and not from the database itself. Unlike extraction,
‘re-utilisation’ also covers indirect means of obtaining the contents of a database. The defining element ‘transfer’ must
therefore be interpreted widely.
(59)
132.
It is for the national court to apply the above criteria to the specific facts of the main proceedings.
3. Prohibitions concerning insubstantial parts of the contents of a database (second question and first part of third question)
133.
As already pointed out, Article 7(5) of the Directive lays down a prohibition on the extraction and/or re-utilisation of insubstantial
parts of the contents of a database. This provision differs from Article 7(1) firstly in that not every extraction or re-utilisation
is prohibited but only defined instances. ‘Repeated and systematic’ acts are required. Secondly, the prohibition in Article
7(5) differs from that in Article 7(1) as regards its subject-matter. This prohibition applies even to insubstantial parts.
Thirdly, to offset this lesser requirement of the affected part in comparison with Article 7(1), Article 7(5) requires unauthorised
acts to have a specific effect. In that regard, Article 7(5) provides for two alternatives: the unauthorised acts must either
conflict with a normal exploitation of that database or unreasonably prejudice the legitimate interests of the maker of the
database.
134.
The provision on the connection between the act and its effect must be understood to mean that it is not necessary for every
individual act to have one of the two effects but that the overall result of the acts must have one of the two prohibited
effects.
(60)
The objective of Article 7(5) of the Directive and of Article 7(1) is the protection of the return on investment.
135.
However, the interpretation of Article 7 generally raises a problem in that the German language final version of the Directive
was formulated rather more weakly than the Common Position. It is now sufficient for the act to ‘imply’ (‘hinausläuft’) rather
than ‘have the result of’ (‘gleichkommt’) one of the effects described. The other language versions are formulated more directly
and essentially concern extraction and/or re-utilisation which conflicts with a normal exploitation of that database or which
unreasonably prejudices the legitimate interests of the maker of the database.
136.
In this connection related international law should be discussed. Both the effects mentioned in Article 7(5) of the Directive
are modelled on Article 9(2) of the Berne Convention as revised and in fact on the first two stages of the three-step test
laid down therein. However, that does not mean that both provisions must be interpreted in the same way.
137.
First, Article 9 of the Berne Convention as revised serves a different purpose. That provision gives the parties to the Convention
the authority to derogate from the strict rule of protection under the conditions in the three-step test. Provision is made
for that sort of construction (that is to say, the option of exceptions for Member States) in Article 9 of the Directive.
138.
Secondly, Article 9 of the Berne Convention as revised differs in that it does not formulate ‘conflict with a normal exploitation’
and ‘unreasonable prejudice’ as alternatives but as two of three cumulative defining characteristics.
(61)
139.
Other international rules similar to Article 7(5) of the Directive are to be found in Article 13 of the TRIPs Agreement and
certain WIPO agreements. However, as the latter were adopted after the Directive they should be left out of account.
140.
As regards the interpretation of Article 13 of the TRIPs Agreement, similar reservations can be raised as in connection with
the Berne Convention as revised. For Article 13, like Article 9 of the Berne Convention as revised, regulates the limits on
and exceptions to the exclusive rights imposed by the Member States. However, unlike Article 9 of the Berne Convention as
revised, both effects, that is to say ‘conflict with a normal exploitation’ and ‘unreasonable prejudice’, are given as alternatives
as in the Directive.
141.
These considerations demonstrate that the interpretation of the above rules of international law cannot be transferred to
Article 7(5) of the Directive.
142.
The acts of extraction and re-utilisation prohibited under the Directive and the effects of such acts regulated by it have
in common that the purpose of the acts is not of decisive importance. Article 7(5) of the Directive cannot be interpreted
in that way in the absence of any rule concerning purpose. If the Community legislature had wanted purpose to be taken into
account it could have used in Article 7 of the Directive a formulation like that in Article 9(b) of the Directive.
a) ‘Repeated and systematic extraction and/or re-utilisation’
143.
The requirement for ‘repeated and systematic’ acts is intended to prevent the undermining of protection by successive acts
each concerning only an insubstantial part.
(62)
144.
On the other hand, it is unclear whether Article 7(5) lays down two alternative or two cumulative requirements. Any interpretation
should begin with the wording of the provision. However, that does not yield any unequivocal result. Some language versions
link the two requirements with ‘and’,
(63)
others with ‘or’.
(64)
Most of the language versions and the objective of the Directive, however, indicate that the two characteristics are to be
understood as cumulative requirements.
(65)
A repeated but not systematic extraction of an insubstantial part of the contents of a database is therefore not covered.
145.
There is a repeated and systematic act when it is carried out at regular intervals, for example, weekly or monthly. If the
interval is less and the affected part small, the act will have to be carried out more frequently for the part affected overall
to fulfil one of the two requirements laid down by Article 7(5) of the Directive.
b) The expression ‘normal exploitation’ in Article 7(5) of the Directive
146.
The term ‘normal exploitation’ in Article 7(5) of the Directive must be interpreted in the light of the objective of that
protective clause. That is clear in particular from the preamble to the Directive. In the 42nd recital the prevention of detriment
to investment is cited as a reason for the prohibition of certain acts. In the 48th recital the objective of the protection
enshrined in the Directive is expressly described ‘as a means to secure the remuneration of the maker of the database’.
147.
That indicates a wide interpretation of the term ‘normal exploitation’. Thus ‘conflict with … exploitation’ must be understood
not only in the technical sense that only effects on the technical usability of the affected database are covered. Rather,
Article 7(5) also relates to purely economic effects on the maker of a database. It is a matter of protecting the economic
use made of it under normal circumstances.
(66)
148.
Thus, Article 7(5) is applicable not only in relation to acts which result in the creation of a competing product which then
conflicts with the exploitation of the database by its maker.
(67)
149.
In individual cases Article 7(5) may cover the exploitation of potential markets not exploited by the maker of the database.
Accordingly, it is, for example, sufficient, if the person extracting or re-utilising the data fails to pay licence fees to
the maker of the database. If such acts were allowed, that would provide an incentive for other persons to extract or re-utilise
the contents of the database without paying licence fees.
(68)
If there were thus the possibility of exploiting the database without charge, that would have serious implications for the
value of licences, resulting in reduced income.
150.
The rule is not limited to cases where the maker of the database wishes to use its contents in the same way as the person
extracting or re-utilising the data. Nor is it relevant either that the maker of a database cannot exploit its contents in
the same way as the person extracting or re-utilising it because of a statutory prohibition.
151.
Finally ‘conflict with … exploitation’ must not be interpreted so narrowly that only a total ban on exploitation would be
prohibited. According to all the language versions other than the German the prohibition is applicable as soon as there is
any conflict with exploitation, that is to say, even in the case of negative effects on a limited scale. That is also where
the threshold lies above which detriment to the maker of the database can be assumed, thus triggering the prohibition.
152.
As many of the parties have pointed out, it is for the national court to assess the specific acts and their effect on the
database at issue in the proceedings on the basis of the above criteria.
c) The expression ‘unreasonably prejudice’ in Article 7(5) of the Directive
153.
As regards the interpretation of the term ‘unreasonably prejudice’ in Article 7(5) of the Directive it must first be recalled
that there had already been discussion, in connection with the Berne Convention as revised, as to whether such an unspecific
legal term was usable at all. Reference to the ways in which it differs from ‘normal exploitation’ is also crucial to the
interpretation of the expression ‘unreasonably prejudice’.
154.
As regards the scope of protection the provision at issue makes lesser demands of the expression ‘unreasonably prejudice’
than of ‘normal exploitation’ in so far as in the former case ‘legitimate interests’ are protected. The protection therefore
goes beyond legal position and also covers interests, that is to say ‘legitimate’ and not only legal interests.
155.
To offset this, Article 7(5) lays down stricter requirements as regards the effect of the unauthorised acts. They must ‘unreasonably
prejudice’ and not merely prejudice. However, the term ‘unreasonably’ must not be interpreted too strictly. Otherwise the
Community legislature would have required damage or even significant damage to the maker here too.
156.
In the light of the language versions other than the German, it will have to be interpreted as requiring the acts to have
damaged interests to a certain extent. In that connection the Directive focuses, here as elsewhere, on detriment to the maker.
The main proceedings show very clearly that the protection of the maker’s rights affects the economic interests of others.
However, that does not mean that great importance can be attached, in the interpretation of Article 7(5) of the Directive,
to the effects of the sui generis right on the interests of other persons or to any possible ‘damage’ to the relevant Member
State as a result of possible effects on income from taxation. The Directive is intended to prevent detriment to makers of
databases. Unlike the other effects, this objective is expressly enshrined in the Directive.
157.
The maker’s investments and the return on them constitute the core interest referred to in Article 7(5). Thus, here too, the
economic value of the contents of the database is the starting point for assessment. The focus of the assessment is the effects
on the actual or anticipated income of the maker of the database.
(69)
158.
We can use the expression ‘normal exploitation’ as a basis for assessing the extent of protection. If we interpret that term
narrowly, as not covering the protection of potential markets, such as new ways of exploiting the contents of a database,
(70)
we will at least have to describe the impact on potential markets as prejudice to legitimate interests. Whether such prejudice
is unreasonable, will depend on the facts of the individual case. However, the fact that the person extracting or re-utilising
the data is a competitor of the maker of the database cannot be decisive.
159.
In this connection, too, it must be recalled that it is for the national court to investigate the specific facts and to ascertain
whether they must be considered to ‘unreasonably prejudice’ the legitimate interests of the maker of the database at issue
in the proceedings.
D –
Change to the contents of a database and term of protection (second part of the third question referred)
160.
In the present case the issue is how the database right is protected in the event of change to the contents of the database.
161.
Under Article 10(3) of the Directive any substantial change – under certain conditions – qualifies the database for its own
term of protection. One of those conditions, namely the criterion ‘substantial change to the contents of a database’, and
the consequences it entails will be examined below. In the present case the issue is to be investigated from the perspective
of ‘repeated and systematic extraction and/or re-utilisation’ within the meaning of Article 7(5) of the Directive.
162.
Essentially this question concerns the object of the extended term of protection. In that connection, it must be clarified
whether substantial changes result in the creation of a new database. If it is concluded that a new database exists alongside
the existing database what is decisive is which database the prohibited acts relate to.
163.
In response to various submissions, the question whether Article 10(3) of the Directive is to be interpreted as meaning that
it governs only the term of protection and not the object of protection is to be considered at the same time.
164.
The wording of Article 10(3), according to which a substantial change, under certain circumstances, ‘shall qualify the database
resulting from that investment for its own term of protection’, suggests that the Community legislature assumed that such
a change resulted in a separate database. That conclusion is confirmed by the other language versions.
165.
Nor can the systematic interpretation be adduced in refutation. For instance, although the title of Article 10 is ‘term of
protection’ that does not mean that that Article merely regulates the period of time and not also the object of that protection.
166.
The view taken by the Community in the context of the WIPO also supports the argument for a new database in the event of a
substantial change under certain circumstances.
(71)
167.
It is obvious that the new term of protection laid down by Article 10(3) can only relate to a specific object. It is clear
from the background to the drafting of this provision that the result of the further investment was meant to enjoy protection.
(72)
Limiting the object of protection to the resulting database is consistent with the objective of providing for a new term
of protection.
(73)
168.
It should be recalled, here, that the database at issue in these proceedings is what is known as a dynamic database, that
is to say, a database which is constantly updated. It must be borne in mind that not only deletions and additions but also,
as is clear from the 55th recital, verifications are to be considered changes within the meaning of Article 10(3) of the Directive.
169.
It is characteristic of dynamic databases that there is only ever one database, namely the most recent. Previous versions
‘disappear’. That raises the question of what the new term of protection covers, in other words, what the object of protection,
that is to say, the new one, is.
170.
The point of departure must be the objective of the changes, which is to bring the database up to date. That means that the
whole database is the object of the new investment. Thus, the most recent version, that is to say, the whole database, is
always the object of protection.
(74)
171.
The background to the drafting of the Directive also supports that interpretation. Although Article 9 of the original proposal
(75)
still made provision for extension of the term of protection of a database, in its explanatory statement to the proposal
the Commission expressly referred to a new ‘edition’ of the database.
(76)
A clarification as regards constantly updated databases was then included in an amended proposal.
(77)
In the legal definition in Article 12(2)(b) the successive accumulation of small changes typical of dynamic databases is
expressly mentioned.
172.
Viewed in that light Article 10(3) of the Directive provides for a ‘rolling’ sui generis right.
173.
Ultimately, the solution proposed here for dynamic databases reflects the principle that it is always the result, that is
to say, the new and not the old database, which is protected. Dynamic databases differ from static databases simply in that,
in the case of dynamic databases, the old database ceases to exist because it is constantly transformed into a new one.
174.
Further, the fact that in the case of dynamic databases the whole database and not only the changes as such enjoy a new term
of protection can, regardless of the objective and subject-matter of the new investment, be justified by the fact that only
an assessment of the whole of the database as such is practicable.
175.
The objective of protecting investments and of providing an incentive for investment lends further support to the argument
for assessment as a whole. In the case of dynamic databases these objectives can only be attained if updates are also covered.
(78)
Otherwise investment in dynamic databases would be disadvantaged.
176.
It is for the national court to assess the specific changes to the database in the main proceedings. In the course of that
assessment the national court must take account of the fact that even insubstantial changes in sufficient number are to be
classified as substantial changes. As is clear from the 54th recital in the preamble to the Directive, the burden of proof
that the criteria in Article 10(3) exist lies with the maker of the new database.
177.
It is for the national court to judge at what point the threshold above which a part becomes substantial has been crossed.
In that connection it must be ascertained whether the new investment is substantial. The assessment of the substantial nature
of a part must be based on the requirements in Article 7 of the Directive. The relevant conditions with regard to investment
must also be observed. That is so, regardless of the fact that Article 10(3) refers expressly to ‘new investment’, whereas
Article 7 concerns initial investment.
(79)
VII – Conclusion
178.
I therefore propose that the Court should answer the questions referred as follows:
- 1.
- The term ‘database’ in Article 1 of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the
legal protection of databases is to be interpreted as meaning that it can also cover lists of football fixtures.
- 2.
- Article 7(1) of the Directive must be interpreted as meaning that a database containing lists of football fixtures can be
the object of protection, if qualitatively or quantitatively a substantial investment in the obtaining, verification or presentation
of the contents is necessary. The maker of such a database has the right 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.
- 3.
- Article 7(5) of the Directive prohibits 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.
-
- Article 7 in conjunction with Article 10(3) of the Directive must be interpreted as meaning that extraction and/or re-utilisation
is also prohibited in respect of a database to the contents of which there has been a substantial change, evaluated qualitatively
or quantitatively, which is thus the result of a substantial new investment, evaluated qualitatively or quantitatively.
- 1 –
- Original language: German.
- 2 –
- Proceedings are also before the Court in Cases C-46/02, C-203/02 and C-338/02, in which I am also delivering my Opinion today.
- 3 –
- OJ 1996 L 77, p. 20.
- 4 –
- Case C-18/01 Korhonen Oy [2003] ECR I-5321, paragraph 19, Case C-390/99 Canal Satélite [2002] ECR I-607, paragraph 18, and Case C-379/98 PreussenElektra [2001] ECR I-2099, paragraph 38.
- 5 –
- Case C-268/01 Agrargenossenschaft Alkersleben [2003] ECR I-4353, paragraph 46, and Case C-379/98, cited in footnote 4, paragraph 39.
- 6 –
- Case C-207/01 Altair Chimica v ENEL Distribuzione [2003] ECR I-0000, paragraph 24, and Joined Cases C-115/97 to C-117/97 Brentjens’ [1999] ECR I-6025, paragraph 38.
- 7 –
- Case C-207/01, cited in footnote 6, paragraph 25, Joined Cases C-128/97 and C-137/97 Testa and Modesti [1998] ECR I-2181, paragraph 6, and Case C-325/98 Anssens [1999] ECR I-2969, paragraph 8.
- 8 –
- Case C-318/00 Bacardi-Martini SAS and Cellier des Dauphins [2003] ECR I-905, paragraph 44, and order in Case C-116/00 Laguillaumie [2000] ECR I-4979, paragraph 16.
- 9 –
- Case C-439/01 Libor Cipra and Vlastimil Kvasnicka [2003] ECR I-745, paragraph 22, and Case C-304/00 Shawson and Gagg & Sons [2002] ECR I-10737, paragraphs 57 and 58.
- 10 –
- Judgments in Case 36/79 Denkavit [1979] ECR 3439, paragraph 12, Joined Cases C-175/98 and C-177/98 Lirussi and Bizzaro [1999] ECR I‑6881, paragraph 37, Case C-318/98 Fornasar and Others [2000] ECR I‑4785, paragraph 31, and Case C-421/01 Traunfellner [2003] ECR I-0000, paragraph 21 et seq.
- 11 –
- See Case C-448/01 EVN [2003] ECR I-0000, paragraph 59.
- 12 –
- OJ 1994 L 336, p. 214.
- 13 –
- Jens-Lienhard Gaster, Der Rechtsschutz von Datenbanken, 1999, paragraph 58 et seq.
- 14 –
- Josef Krähn, Der Rechtsschutz von elektronischen Datenbanken, unter besonderer Berücksichtigung des sui-generis-Rechts, 2001, 7.
- 15 –
- Matthias Leistner, ‘The Legal Protection of Telephone Directories Relating to the New Database Maker’s Right’, International Review of Industrial Property and Copyright Law 2000, 950 (956).
- 16 –
- Simon Chalton, ‘The Copyright and Rights in Databases Regulations 1997: Some Outstanding Issues on Implementation of the Database
Directive’, E.I.P.R. 1998, 178 (179).
- 17 –
- Matthias Leistner, Der Rechtsschutz von Datenbanken im deutschen und europäischen Recht, 2000, 53 et seq.
- 18 –
- Silke von Lewinski, in: Michel M. Walter (Ed.), Europäisches Urheberrecht, 2001, paragraph 20 on Article 1 of the Database Directive.
- 19 –
- Herman M. H. Speyart, ‘De databank-richtlijn en haar gevolgen voor Nederland’, Informatierecht – AMI 1996, 151 (155).
- 20 –
- Von Lewinski (cited in footnote 18), paragraph 6 on Article 1.
- 21 –
- Von Lewinski (cited in footnote 18), paragraph 6 on Article 1.
- 22 –
- Malte Grützmacher, Urheber-, Leistungs- und Sui-generis-Schutz von Datenbanken, 1999, 329; Georgios Koumantos, ‘Les bases de données dans la directive communautaire’, Revue internationale du droit d’auteur 1997, 79 (117). On the other hand, many writers see the investment as the object of protection (see, for example, von Lewinski
(cited in footnote 18)), paragraph 3 on Article 7, and the writings cited by Grützmacher on page 329 in footnote 14.
- 23 –
- Common Position (EC) No 20/95, adopted by the Council on 10 July 1995, No 14.
- 24 –
- Von Lewinski (cited in footnote 18), paragraph 9 on Article 7.
- 25 –
- Koumantos (cited in footnote 22), 119.
- 26 –
- Von Lewinski (cited in footnote 18), paragraph 11 on Article 7.
- 27 –
- Krähn (cited in footnote 14), 138 et seq.; Leistner (cited in footnote 15), 958.
- 28 –
- Gunnar W. G. Karnell, ‘The European Sui Generis Protection of Data Bases’, Journal of the Copyright Society of the U.S.A., 2002, 994.
- 29 –
- J. van Manen, ‘Substantial investments’, in Allied and in friendship: for Teartse Schaper, 2002, 123 (125).
- 30 –
- For more detail, see P. Bernt Hugenholtz, ‘De spin-off theorie uitgesponnen’, Tidschrift voor auteurs-, media- & informatierecht 2002, 161 et seq.
- 31 –
- Giovanni Guglielmetti, ‘La tutela delle banche dati con diritto sui generis nella direttiva 96/9/CE’, Contratto e impresa. Europa, 1997, 177 (184).
- 32 –
- Andrea Etienne Calame, Der rechtliche Schutz von Datenbanken unter besonderer Berücksichtigung des Rechts der Europäischen Gemeinschaften, 2002, 115 FN 554.
- 33 –
- Grützmacher (cited in footnote 22), 330 et seq.; Leistner (cited in footnote 17), 152.
- 34 –
- Leistner (cited in footnote 17), 152.
- 35 –
- Guglielmetti (cited in footnote 31), 184; Karnell (cited in footnote 28), 993.
- 36 –
- As regards the views put forward, see Hugenholtz (cited in footnote 30), 161 (164 FN 19).
- 37 –
- Von Lewinski (cited in footnote 18), paragraph 5 on Article 7.
- 38 –
- Calame (cited in footnote 32), 116.
- 39 –
- Common Position (EC) No 20/95 (cited in footnote 23), No 14.
- 40 –
- Gaster (cited in footnote 13) , paragraph 492.
- 41 –
- Oliver Hornung, Die EU-Datenbank-Richtlinie und ihre Umsetzung in das deutsche Recht, 1998, 116 et seq.; Leistner (cited in footnote 17), 180; von Lewinski (cited in footnote 18), paragraph 16 on Article 7.
- 42 –
- Common Position (EC) No 20/95 (cited in footnote 23), No 14.
- 43 –
- See inter alia von Lewinski (cited in footnote 18), paragraph 15 on Article 7.
- 44 –
- Grützmacher (cited in footnote 22), 340.
- 45 –
- Gaster (cited in footnote 13), paragraph 495; Grützmacher (cited in footnote 22), 340; von Lewinski (cited in footnote18),
paragraph 15 on Article 7.
- 46 –
- Krähn (cited in footnote 14), 162.
- 47 –
- See Guglielmetti (cited in footnote 31), 186; Krähn (cited in footnote 14), 161, and Leistner (cited in footnote 17), 172.
- 48 –
- In that regard, on some views, a theoretical likelihood of detriment is sufficient, see Leistner (cited in footnote 17), 173;
see Speyart (cited in footnote 19), 171 (174).
- 49 –
- Carine Doutrelepont, ‘Le nouveau droit exclusif du producteur de bases de données consacré par la directive européenne 96/6/CE
du 11 Mars 1996: un droit sur l’information?’, in: Mélanges en hommage à Michel Waelbroeck, 1999, 903 (913).
- 50 –
- Doutrelepont (cited in footnote 49), 913; Gaster (cited in footnote 13), paragraph 496; Leistner (cited in footnote 17), 171;
von Lewinski (cited in footnote 18), paragraph 15 on Article 7.
- 51 –
- See, however, Karnell (cited in footnote 28), 1000; Krähn (cited in footnote 14), 163.
- 52 –
- See, for example, the eighth, 41st, 42nd, 45th and 46th recitals.
- 53 –
- See Koumantos (cited in footnote 22), 121.
- 54 –
- Von Lewinski (cited in footnote 18), paragraph 19 on Article 7.
- 55 –
- Gaster (cited in footnote 13), paragraph 512.
- 56 –
- Von Lewinski (cited in footnote 18), paragraph 27 on Article 7.
- 57 –
- Von Lewinski (cited in footnote 18), paragraph 31 on Article 7.
- 58 –
- Grützmacher (cited in footnote 22), 336.
- 59 –
- Von Lewinski (cited in footnote 18), paragraph 38 on Article 7.
- 60 –
- Leistner (cited in footnote 17), 181; von Lewinski (cited in footnote 18), paragraph 18 on Article 7, FN 225.
- 61 –
- Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886-1986, 1987, 482.
- 62 –
- Gaster (cited in footnote 13), paragraph 558.
- 63 –
- Most of the Romance languages, and the German, English and Greek versions.
- 64 –
- The Spanish, Swedish and Finnish versions.
- 65 –
- Leistner (cited in footnote 17), 181; von Lewinski (cited in footnote 18), paragraph 17 on Article 7.
- 66 –
- That is also consistent with the interpretation of Article 13 of the TRIPs Agreement by a WTO Panel (WT/DS160/R of 27 July
2000, 6.183).
- 67 –
- Leistner (cited in footnote 17), 181.
- 68 –
- See WT/DS160/R of 27 July 2000, 6.186.
- 69 –
- See WT/DS160/R of 27 July 2000, 6.229.
- 70 –
- Leistner (cited in footnote 17), 182.
- 71 –
- Standing Committee on Copyright and Related Rights (19 May 1998), SCCR/1/INF/2.
- 72 –
- Common Position (EC) No 20/95 (cited in footnote 23), No 14.
- 73 –
- Von Lewinski (cited in footnote 18), paragraph 5 on Article 10.
- 74 –
- Simon Chalton, ‘The Effect of the E.C. Database Directive on United Kingdom Copyright Law in Relation to Databases: A Comparison
of Features’, E.I.P.R. 1997, 278 (284); Hornung (cited in footnote 41), 173 et seq.; Leistner (cited in footnote 17), 209; see St. Beutler, ‘The Protection
of multimedia products under international law’, UFITA 1997, 5 (24); Guglielmetti (cited in footnote 31), 192; Speyart (cited in footnote 19), 171 (173).
- 75 –
- COM(92) 24 final.
- 76 –
- Explanatory Statement to Proposal COM (92) 24, No 9.2.
- 77 –
- COM(93) 464 final.
- 78 –
- Grützmacher (cited in footnote 22), 390 et seq.
- 79 –
- See, on that point, at greater length, Leistner (cited in footnote 17), 207 et seq.
