Intellectual property rights – Database rights – Infringement

Football Dataco Ltd and other companies v Sportradar GmbH and another company: Court of Justice of the European Union (Third Chamber) (Judges Silva de Lapuerta, Acting as President of the Third Chamber, Lenaerts (Rapporteur), Arestis, Malenovský, Šváby; Advocate General: Cruz Villalón): 18 October 2012

Directive (EC) 96/9 of the European Parliament and of the Council (on the legal protection of databases) provides, so far as material: ‘1(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... 7(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 online or other forms of transmission... 5. The repeated and systematic extraction and/or re-utilisation of insubstantial parts of the contents of the database implying acts which conflict with a normal exploitation of the database or which unreasonably prejudice the legitimate interests of the maker of the database shall not be permitted.’

The claimant companies in the main proceedings were responsible for organising football competitions in England and Scotland. The first claimant managed the creation and exploitation of the data and intellectual property rights relating to those competitions. The claimants claimed to have, under UK law, a sui generis right in the ‘Football Live’ database. Football Live was a compilation of data about football matches in progress (goals and goalscorers, yellow and red cards and which players had been given them and when, penalties and substitutions).

The data was said to be collected mainly by ex-professional footballers who work on a freelance basis for Football Dataco and others and attend the matches for that purpose. The claimants submitted that the obtaining and/or verification of the data requires substantial investment and that the compilation of the database involved considerable skill, effort, discretion and/or intellectual input. The first defendant in the main proceedings was a German company which provided results and other statistics relating inter alia to English league matches live via the internet. The service was called ‘Sport Live Data’.

The first claimant had a website, betradar.com. Betting companies which were customers of the first defendant entered into contracts with the Swiss holding company Sportradar AG (the second defendant), which was the parent company of the first defendant. Those customers included bet365, a company incorporated under the law of the United Kingdom of Great Britain and Northern Ireland, and Stan James, a company established in Gibraltar, which provided betting services aimed at the UK market. The websites of both those companies contained a link to betradar.com.

When an internet user clicked on the ‘Live Score’ option, the data appeared under a reference to ‘bet365’ or ‘Stan James’ as the case might be. On 23 April 2010, the claimants brought proceedings against the first defendant in the Chancery Division of the High Court of England and Wales, seeking, inter alia, compensation for damage linked to an infringement by the first defendant of their sui generis right. On 9 July 2010, the first defendant challenged the jurisdiction of the High Court to hear the case.

On 14 July 2010, the first defendant brought proceedings against the claimants in the Landgericht Gera (Regional Court, Gera) (Germany), seeking a negative declaration that its activities did not infringe any intellectual property right held by the claimants. By judgment of 17 November 2010, the High Court declared that it had jurisdiction to hear the claimants' action in so far as it concerned the joint liability of the first defendant and its customers using its website in the UK for infringement of their sui generis right by acts of extraction and/or re-utilisation.

By contrast, it declined jurisdiction over the action brought by the claimants in so far as it concerned the primary liability of the first defendant for such an infringement. Both parties appealed against that judgment to the Civil Division of the Court of Appeal of England and Wales. The claimants submitted that the first defendant obtained its data by copying it onto its server from Football Live and then transmitting the copied data to the members of the public in the UK who click on Live Score.

In their view, in accordance with the ‘transmission’ or ‘communication’ theory, the acts at issue in the main proceedings should be regarded as taking place not only in the member state from which the data has been sent by the first defendant but also in the member state in which the persons receiving them were located, in the instant case, the UK. The claimants submitted that the data on the betradar.com website was generated independently. It added that, in accordance with the ‘emission’ theory, an act of transmission occurred only in the place from which the data was sent, so that the acts which it was said to have committed were not within the jurisdiction of the courts of the UK. In those circumstances, the Court of Appeal (the referring court) decided to stay the proceedings and to refer a question to the Court of Justice of the European Union for a preliminary ruling.

By part (a) of its question, the referring court essentially asked whether article 7 of Directive (EC) 96/9 of the European Parliament and of the Council (on the legal protection of databases) (the Directive) should be interpreted as meaning that the sending by one person, by means of a web-server located in member state A, of data previously uploaded by that person from a database protected by the sui generis right under that directive to the computer of another person located in member state B, at that person’s request, for the purpose of storage in that computer’s memory and display on its screen, constituted an act of ‘extraction’ or ‘re-utilisation’ of the data by the person sending it. If so, it asks, by part (b) of its question, whether that act should be regarded as taking place in member state A, in member state B, or in both those states.

The Court ruled: The objective of the Directive was, by approximating national laws, to remove the differences which had existed between them in relation to the legal protection of databases, and which had adversely affected the functioning of the internal market, the free movement of goods and services within the European Union and the development of an information market within the EU. To that end, the Directive required all the member states to make provision in their national law for the protection of databases by a sui generis right.

In that context, the protection by the sui generis right provided for in the legislation of a member state was limited in principle to the territory of that member state, so that the person enjoying that protection could rely on it only against unauthorised acts of re-utilisation which took place in that territory. Further, the localisation of an act of re-utilisation in the territory of the member state to which the data in question was sent depended on there being evidence from which it might be concluded that the act disclosed an intention on the part of its performer to target persons in that territory.

Where such evidence was present, the referring court would be entitled to consider that an act of re-utilisation was located in the territory of the member state of location of the user to whose computer the data in question was transmitted, at his request, for purposes of storage and display on screen (see [25]-[27], [39], [43] of the judgment).

The answer to the question was that article 7 of the Directive should be interpreted as meaning that the sending by one person, by means of a web server located in member state A, of data previously uploaded by that person from a database protected by the sui generis right under that directive to the computer of another person located in member state B, at that person’s request, for the purpose of storage in that computer’s memory and display on its screen, constituted an act of ‘re-utilisation’ of the data by the person sending it.

That act took place, at least, in member state B, where there was evidence from which it might be concluded that the act disclosed an intention on the part of the person performing the act to target members of the public in member state B, which was for the national court to assess (see [47] of the judgment).