- This is a case about
a new type of intellectual property called database right. It was introduced
into our law by means of the Copyright and Rights in Databases Regulations
1997 (SI 1997/3032). This implements European Parliament and Council Directive
96/9/EC of 11 March 1996 on the Legal Protection of Databases ('the Directive').
The parties agreed that the Regulations have to be construed consistently
with the Directive and, for the purpose of these proceedings, attention was
only paid to the provisions of the latter.
- Originally, there was
only one claimant in this action, The British Horseracing Board Limited ("BHB").
However at the beginning of the trial, two other claimants, The Jockey Club
and Weatherbys Group Limited, were added by agreement, thereby disposing of
a minor issue concerning title which had been raised by the defendant, William
Hill Organization Limited ("William Hill"). As will be apparent from
the names of the parties, this case is concerned with horseracing and, in
particular, the extent to which, if at all, the claimants can prevent the
defendant from using, in a new part of its business and without their licence,
certain data which, according to the claimants, have been derived indirectly
from them. For the purpose of this judgment I will refer only to BHB and not
the other claimants, save where necessary.
BHB
and its Database
- As explained by Mr Paul
Greeves, its Racing Director, BHB, is the governing authority for the British
racing industry. The members of BHB comprise the Jockey Club, the Racecourse
Association Limited, the Racehorse Owners Association and the Industry Committee
(Horseracing) Limited. It is a company limited by guarantee and was formed
in June 1993 to take over part of the function formerly carried on by the
Jockey Club. After that date the Jockey Club retained the principal regulatory
function within British horseracing with responsibility for integrity, licensing,
discipline and security. Its concern is the application and operation of the
Rules of Racing. BHB took on the remainder of the administrative functions
of racing's governing body. Those functions, as set out in BHB's Memorandum
and Articles of Association include: (a) improvement of the financial position
of horseracing; (b) funding of the administration of horseracing; (c) encouraging
the maintenance and improvement of standards in horseracing, and exercising
regulatory control; (d) encouraging and improving the breeding of bloodstock;
(e) establishing the dates of fixtures and the programme content of fixtures;
(f) initiating and promoting improvements in the law and local rules, regulations
or practices; (g) making and publishing rules of practice and procedure for
horseracing; (h) creating the fixture list for each year's racing; (i) weight
adding and handicapping; (j) supervision of race programmes; (k) producing
various racing publications and stakesbooks; and (l) compiling data related
to horseracing.
- It will be appreciated
that the tasks undertaken by BHB are extensive. The scale of its operation
is a reflection of the size of horse racing in this country. For example in
the year 2000, there were a total of 1,209 separate race programmes and fixtures
in the calendar. There will be 1213 race programmes in 2001. These races are
held at 59 racecourses. In 2000, race meetings were scheduled on 327 days
of the year. At any one time there are 15,000 horses in training, 9,000 active
owners, and 1,000 trainers. Each owner must have registered racing colours
in which his horses will run. These colours must be unique.
- BHB undertakes a four
to five month annual process compiling, granting and publishing the Fixture
List. Publication of the fixture list in July of the preceding year marks
the start of the full process which culminates in weekly advertisement in
the Racing Calendar of the races for which entries are taken centrally under
the Orders and Rules of Racing. Some 7,800 races are run each year, the exact
number dependent upon race divisions and on the level of abandonments due
to poor weather. In 2000 there were 175,000 entries for races. This number
falls for a variety of reasons. For example sometimes trainers withdraw horses
from races and sometimes races are oversubscribed, resulting in some entries
being rejected. Shortly before a race, trainers must make "declarations"
of the horses which will actually run in a particular race. In 2000, there
were 80,000 declarations to run and 80,000 related declarations of riders.
- In support of its functions,
BHB maintains a computerised collection of information (which the parties
called the "BHB Database") which is constantly being updated with the
latest information. Computerisation began in 1964 when the Jockey Club had
the functions now controlled by BHB. The scale and complexity of the data
kept by BHB has grown with time. According to the particulars of claim:
"The
establishment of the BHB Database has involved, and its maintenance and development
continues to involve, extensive work, including the collection of raw data,
the design of the database, the selection and verification of data for inclusion
in the database and the insertion and arrangement of selected data in the
database. The cost of establishing the BHB Database was considerable. The
cost of continuing to obtain, verify and present its contents is approximately
£4 million per annum and involves approximately 80 employees and extensive
computer software and hardware."
There
has been no substantial challenge to the accuracy of this statement.
- There are a huge number
of records contained within the BHB Database including many which must be
accurately stored and processed each day. It covers not only all of the information
set out above but much more. It includes a collection of data accumulated
over many years by way of the registration of information supplied by owners,
trainers and others concerned in the racing industry. It contains the names
and other details of over one million horses, tracing back through many generations.
It contains details of registered owners, racing colours, registered trainers
and registered jockeys. It also contains pre-race information, that is to
say information relating to races to be run in Great Britain and made available
in advance of the race. This covers the place and date on which a race-meeting
is to be held, the distance over which the race is to be run, the criteria
for eligibility to enter the race, the date by which entries must be made,
the entry fee payable, the amount of money the racecourse is to contribute
to the prize money for the race, the initial name of the race and the like.
Close to the day of a particular race, the pre-race information is expanded
to include the time at which the race is provisionally scheduled to start,
the final name of the race including, where applicable, sponsor's name, the
list of horses entered in the race, their owners and trainers and the relative
weights these horses will carry. The final stage of pre-race information includes
the list of intended or "declared" runners, their riders, the absolute
weight each will carry, its saddle-cloth number, the stall from which it will
start and its owner's racing colours. The BHB computerised records contain
all of this information. After each race, details of the outcome are recorded.
An estimated total of 800,000 new records or changes to existing records are
made each year.
- Maintaining the BHB
Database does not consist only of receiving and entering data in BHB's computer.
It involves extensive checking of data obtained from a number of sources.
Evidence in relation to this issue was given by Dr Khan and Mr Peter Clarke
on behalf of BHB. No purpose would be served by setting out in this judgment
the detail of this collection and verification process, but some flavour of
it can gathered by reference to part of the process undertaken for or on behalf
of BHB in relation to declarations made by trainers. Such declarations have
to be made by a fixed deadline shortly before the race is due to be run. They
are normally made by telephone. As Dr Khan explained:
"All
the telephone conversations are tape-recorded. During the afternoon, they
are replayed and checked against an audit report produced by the computer.
The operator 'playing-back' will never be the same operator that took the
call. In this way, a double-check is carried out to ensure, as far as possible,
that the caller's wishes were correctly heard and actioned and that the issued
list of entries will be accurate."
- This typifies the care
taken to ensure that the data on the BHB computer are accurate. In relation
to pre-race information, for example, the unchallenged evidence of Dr Khan
was;
"The
pre-race information compiled for each race is the product of a painstaking
process of verification which is aimed to ensure that the information is wholly
accurate and reliable. Without there being virtually 100% accuracy in the
information presented for each race, the confidence of those involved in racing,
including bookmakers and their customers, could not be assured."
- As can be seen from paragraph
2 above, maintenance of the BHB Database is only part of BHB's function. It
currently costs BHB £15 million per year to carry out all of its functions
on behalf of the British horseracing industry. The cost of running the BHB
Database therefore accounts for about 25% of BHB's total expenditure. As Mr
Greeves explained, BHB is self-financing, obtaining its income primarily from
fees for registrations and licences, fixture fees from racecourses and entry
handling charges payable by owners and racecourses. Part of its income is
derived from fees charged to third parties for use of information contained
on the BHB Database. These fees currently yield an income of just over £1M
annually, thereby meeting somewhere in the region of 25% of BHB's costs of
maintaining the BHB Database. Mr Greeves said in his witness statement:
"The
racing information contained in the BHB database is of interest to a wide
variety of different users of the information. First, and foremost, essential
extracts from the database are made available to the participating elements
of the racing industry itself, including representatives of the different
racecourses around the country, racehorse owners, trainers, riders and their
agents, the Jockey Club, pedigree compilers and overseas racing authorities.
The information is made available to these parties each day by way of the
joint Weatherbys/BHB Internet website @ http://www.bhb-weatherbys.racingadmin.co.uk
and via a database site on the Prestel network, plus each week within BHB's
official journal, the Racing Calendar. In addition, the racing information
is of interest to radio and television broadcasters who cover different race
meetings around the country; similarly, it is used by publications such as
The Racing Post, Timeform and local and national newspapers who need to provide
to their readers information concerning forthcoming race meetings; information
services such as Ceefax and Teletext also need access to the racing information;
the information is also, of course, of interest to members of the public who
follow horseracing."
- The information, or selected
parts of it, is also supplied to other interested parties, including bookmakers.
Among the methods of distribution, two are relevant to the issues in this
case. First data are made available to a company called Racing Pages Ltd which
is controlled and owned by Weatherbys and the Press Association jointly. Racing
Pages Ltd forwards data to its various subscribers which include some bookmakers.
In particular Racing Pages, on behalf of BHB, makes available to subscribers
in electronic form, normally on the day before a race, what is called a Declarations
Feed. This contains an accurate, up-to-the-minute list of races, declared
runners and jockeys, distance and name of races, race times and number of
runners in each race together with other information. Secondly data are supplied
to a company, Satellite Information Services Limited ("SIS"), which is
allowed to use data from it for certain purposes including for onward transmission
to, and use by, its own subscribers. The supply from SIS to its own subscribers
takes the form of what is called a raw data feed ("RDF").
William
Hill
- For the purpose of this
action William Hill provided witness statements from two of its senior employees;
Mr William Haygarth, the Managing Director of its e-commerce division, and
Mr Michael Ellis, the Information Services Director of the William Hill Group
of which the Defendant in this action is a part. Neither witness was required
to attend for cross-examination and the content of the following paragraphs
is derived from their evidence.
- The William Hill business
is one of the leading providers of off-track bookmaking services in the United
Kingdom and elsewhere, to both UK and international customers. It and its
subsidiaries offer odds on a large number of events at any given time, providing
betting services to their customers through two principal channels: (a) a
nationwide network of Licensed Betting Offices ("LBOs") and (b) telephone
betting operations. In 1999 William Hill earned profits of £78.9 million.
William Hill's principal product is the taking of fixed-odds bets on sporting
and other events. The most popular event on which William Hill offers odds
is horse racing. William Hill is one of the UK's largest LBO operators with
currently 1,526 trading units. LBOs provide customers with comprehensive sports
information and betting services including horse racing, greyhound racing
and other significant sporting events. SIS provides live audio and video coverage
of horse and greyhound racing. William Hill provides additional pre-event
information for each race in the form of a text service displayed on television
screens, which includes the name, place and time of each race and the names
of the runners. During the course of the day the screens are regularly updated
with the latest betting odds and race results. The same information is also
available in each LBO in the form of pages from the "betting office"
display edition of the Racing Post, which are posted on the walls. The Information
in this form is far more comprehensive than that displayed on the screens
as it also includes details of the owner, trainer, weight carried and form
of each runner in every race and other information such as colours. A copy
of the news-stand edition of Racing Post is also available in each LBO.
- William Hill's LBOs and
its main operations headquarters in Leeds are connected via land-line communications
links that are used to transmit statistical and other information (such as
risk management information) between LBO managers and the William Hill headquarters.
William Hill subscribes to the SIS audio and video service for each of its
LBOs, which it augments by overlaying its own promotional audio material.
William Hill supplies its own text service to its LBOs via a satellite channel
provided by SIS. The text service contains information supplied by SIS, together
with William Hill's own material. The other principal channel for William
Hill's bookmaking services is via the telephone, by which it offers bookmaking
services from businesses established in the UK, in Antigua and in the Isle
of Man.
- It will be appreciated
that a very great deal of the information displayed or used by William Hill
in the horse-racing related business referred to above comes, directly or
indirectly, from the BHB Database. No objection is taken to any of such use.
In respect of all of it BHB takes the view that such data are all taken with
its express or implied consent and for all of it BHB receives, directly or
indirectly, financial compensation. For example, William Hill gets the essential
information for its telephone betting service from the Declarations Feed.
It is licensed to use the information in this way and for this purpose.
The
current dispute
- This action is concerned
with a form of business which has recently been commenced by William Hill
and a number of its competitors. It takes the form of providing betting services
over the Internet. At the moment it is a minor part of the defendant's business
in turnover terms. William Hill established its first Internet site in June
1996 to promote its telephone betting business. In May 1999 it started betting
on horseracing, limited initially to a small number of selected races each
day on which William Hill had produced its own odds. It developed this into
a comprehensive service covering the majority of horse racing, with real time
changes in the odds being offered. This enhanced service was launched on two
internet sites; the "International Site" on 3rd February 2000
and on the "UK Site" on 13th March 2000. Members of the public
can access these sites over the internet, see what horses are running in which
races at which racecourses and what are the odds offered by William Hill.
If they want, they can place bets electronically.
- William Hill formulates
and publishes its own betting odds for horse races, referred to as Early Bird
and ante-post odds. Early Bird odds are set by William Hill odds compilers
using their own skill and judgment and are generally offered by it at the
start of the day on selected races taking place the same day. William Hill
currently gives Early Bird prices for approximately 2000 horse races in the
UK each year. Ante-post odds are those offered by William Hill on a specific
race one or more days in advance of the race taking place. A number of examples
of what a user of William Hill's internet service will see on his computer
screen are to be found in the evidence used at the trial. Three of these are
annexed to this judgment. The first (Annex A) was taken off the website on
13 March 2000 at 12.20 pm. It relates to the 2.00 pm race at Plumpton to be
held on that day. The horses names are the declared runners. The second (Annex
B) was taken off the site on the same day and relates to the Grand National,
which was to be run on 8 April. The third (Annex C) was taken off the site
a week later, ie on 21 March, and also relates to the Grand National. Comparing
the last two shows how the list of runners and the total number of runners
can change as the date of the race approaches. In fact, not only the identity
and number of the horses can change, but so can the timing of the race. Annex
A is an example of a particularly small race with few runners. Some races
are much larger. For example, as at 13 March, the William Hill website showed
the Lincoln Handicap, a 1 mile race to be held at Doncaster on 25 March, had
58 proposed runners. By 23 March the site shows that the field had shrunk
to 46. The prints of the latter two website pages are not annexed to this
judgment but are to be found in Trial Bundle B.
- Between May 1999 and
February 2000, William Hill offered Internet betting on only selected races
(those races for which it offered Early Bird and ante-post odds). Between
9.00 am and 10.15 am each day the runners for Early Bird races were entered
manually together with their odds, with the relevant race data derived from
race cards published in the national press. Potential runners in ante-post
races were entered manually from published lists. In both cases runners were
displayed in the order of their odds with the shortest (lowest) appearing
first. It is since February 2000 that William Hill has offered Internet betting
on all mainstream horseracing in the UK. The relevant data for all races (including
races where Early Bird odds are offered) taking place that day are derived
from the RDF supplied to it by SIS and published between 5.00 am and 7.00
am depending on when the RDF comes through each day, with the runners listed
in alphabetical order. By the time William Hill publishes this data on its
Internet sites, it has been available from sources other than SIS since the
previous morning. For example it will have been published in the press and
on various teletext services.
- It is not disputed that
the information displayed on William Hill's internet sites, that is to say
the identity of all the horses in the race, the date and time of the race
and the identity of the racecourse where the race will be held, is to be found
in and comes from the RDF feed received by it from SIS. It is also not in
dispute that the same information is supplied to SIS from the data stored
on BHB's computer. It is information to be found in the Declarations Feed
made available through Racing Pages. It is not in dispute that SIS has no
right to sublicense William Hill to use any of BHB's data on its internet
site and has not purported to do so. As will be explained hereafter, it is
not admitted that the SIS information used by William Hill originated with
the information supplied to SIS from the BHB Database, even though it is identical
to it.
- BHB's case is that it
owns database right in the BHB Database and that William Hill is making unlicensed
use of that data in its internet business. It says that what William Hill
takes from the SIS RDF is derived by SIS from the BHB Database. It says that
William Hill's activities constitute breaches of BHB's database right in two
ways. First it says that each day's use by William Hill of data taken from
the SIS RDF is an extraction or re-utilization of a substantial part
of the contents of its database contrary to art 7(1) of the Directive. Second,
it says that, even if the individual extracts are not substantial, nevertheless
the totality of William Hill's actions amount to repeated and systematic extraction
or re-utilization of insubstantial parts of the contents of the database
contrary to art 7(5).
- William Hill advances
a number of defences to this claim. As I have already mentioned, that based
on lack of title is no longer pursued as a result of the addition of the second
and third claimants to the action. As I understand its position, William Hill
accepts that on, say, 13 March 2000, the BHB Database qualified as a collection
of data in respect of which database right exists. I do not understand it
to be disputed that the BHB Database as it was at, say, the same time on 21
March was also a collection of data in respect of which database right exists.
As we shall see later a potentially important point arises as to whether on
these two dates, taken by way of example only, the BHB Database is the same
database for the purposes of this area of law. William Hill also indicates
that if its current activities infringe any rights owned by BHB, it has alternative
methods of presenting the essential race data on its internet sites which
it believes would clearly avoid such rights. BHB disputes this. Therefore
the parties have addressed not only what William Hill currently is doing but
also what it threatens to do.
An
overview of database right.
- The reason for introducing
a new database right into the domestic law of the Member States of the European
Union is largely explained in the recitals to the Directive. Databases used
to be protected by copyright in all or most states. Unfortunately there existed
major differences between the relevant national laws. A collection of data
which could be protected in one State might not be protected at all in another,
or the scope of protection might be different. In an attempt to resolve some
of the difficulties created by this lack of uniformity in national laws, the
Directive does two things. First it requires Member States to implement certain
common features in their national copyright law insofar as they deal with
databases. These are set out primarily in arts 3 to 6 inclusive. Second, it
creates an entirely new kind of right, which it refers to as "sui
generis". This is dealt with primarily in arts 7 to 11 inclusive. This
is the database right. It is independent of any copyright or other intellectual
property rights which may exist in the database or in any of the individual
pieces of data or information collected together within the database. In this
case BHB say that it may well be entitled to copyright protection as well
as database right, but it is content to sue solely on the latter and the proceedings
are limited accordingly.
- The fact that database
right and copyright in databases can exist side by side and that the former
is described as sui generis is important. Although it is apparent that
there are some features of the database right which are similar to features
of copyright, it must not be assumed that the former is based upon or is to
be construed as a mere continuation or development of the latter and, in particular,
that it is a mere variation of United Kingdom copyright law. There may be
a natural tendency, particularly for those familiar with copyright, to look
at database through copyright eyes, but there are significant differences
between the two rights. They may have concepts in common, but, if so, that
is only because those concepts happen to fit both, not because database is
a species of copyright. This means that courts have to guard against the assumption
that principles which have become familiar in the copyright field automatically
apply to the new right. The existence and scope of the new right has to be
determined from the Directive itself, and any admissible preparatory texts.
The
nature and effect of database right
(a)
What is a database?
- Although William Hill
is now prepared to accept that database right exists in the BHB Database (subject
to the issues addressed in paragraph 65 et seq below), it is still necessary
to say something about the nature of a database which qualifies for protection
because this has an impact on the other issues between the parties.
- Originally, it had been
proposed that the Directive should only cover collections of information in
electronic form. This restriction was abandoned so as to extend protection
to databases in a non-electronic form (see Recital 14). Accordingly the expression
'database' is defined in art 1 as follows:
"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. Protection
under this Directive shall not apply to computer programs used in the making
or operation of databases accessible by electronic means."
- The breadth of this definition
is reinforced by Recital 17;
"Whereas
the term 'database' should be understood to include literary, artistic, musical
or other collections of works or collections of other material
such as texts, sound, images, numbers, facts, and data; whereas it should
cover collections of independent works, data or other materials which are
systematically or methodically arranged and can be individually accessed;
whereas this means that a recording or an audio visual, cinematographic, literary
or musical work as such does not fall within the scope of this Directive;"
…
- This is very broad. Any
two or more pieces of data put side by side could be said to be a collection
and, therefore, a database. This was not intended, hence the exclusion of
recordings, audio visual, cinematographic, literary or musical works. Although,
for example, a musical work may involve an arrangement and juxtaposition of
musical notes, it is treated as a single work and, for this reason, not a
collection. However not all databases are protected by copyright or database
right. In relation to copyright, this can be seen in Recitals 15 and 16;
"(15)
Whereas the criteria used to determine whether a database should be protected
by copyright should be defined to the fact that the selection or the arrangement
of the contents of the database is the author's own intellectual creation;
whereas such protection should cover the structure of the database;
(16) Whereas
no criterion other than originality in the sense of the author's intellectual
creation should be applied to determine the eligibility of the database for
copyright protection, and in particular no aesthetic or qualitative criteria
should be applied;"
- Therefore, for copyright
to subsist, it must be shown not only that there is a relevant collection
of information but that it is also original. Although there is no requirement
to demonstrate aesthetic or qualitative criteria, there must be a quantitative
baseline of originality before protection is acquired. This can be seen in
Recital 19 which also demonstrates an equivalent baseline requirement for
the existence of database right (a topic I will consider below);
"Whereas,
as a rule, the compilation of several recordings of musical performances on
a CD does not come within the scope of this Directive, both
because, as a compilation, it does not meet the conditions for copyright
protection and because it does not represent a substantial
enough investment to be eligible under the sui generis right;".
- The only 'condition for
copyright protection' which is not met must be one of sufficient originality.
There is another feature of the definition of database which needs to be considered
in view of some of the arguments advanced in this case. Art 1 refers to collections
in which the materials are "arranged in a systematic or methodical way
and individually accessible". This might be thought to mean that for all purposes
a database must be arranged systematically or methodically. However, if that
were right it might exclude many computerised databases. Recital 21 shows
that this cannot be what was intended;
"(21)
Whereas the protection provided for in this Directive relates to databases
in which works, data or other materials have been arranged systematically
or methodically; whereas it is not necessary for those materials to
have been physically stored in an organized manner;"
- It seems, therefore,
that the expression 'database' has a very wide meaning covering virtually
all collections of data in searchable form. On any view, the BHB Database
at a particular point in time, say 12.20 pm on 13 March 2000, is a 'database'
within art 1. Whether a database qualifies for protection by copyright, database
right or both depends upon how the database was made, that is to say whether
sufficient relevant effort was put into its creation. To determine this involves
understanding what is the purpose of the intellectual property rights granted
in a database.
(b)
The objective behind the creation of database right
- Understanding the objective
behind the creation of database right is important because, as both parties
agree, correctly in my view, the purpose throws light on what types of activity
amount to breaches. The Directive repeatedly refers to protecting and encouraging
investment in database creation. There are 11 such references in the Recitals
(see Recitals 1, 10 –12, 19, 39 – 42, 54 and 55) and it is also referred to
in arts 1 and 10, which are considered below. Further it is apparent what
type of investment is considered worthy of protection. Recital 40 and art
7(1) respectively provide:
"(40)
Whereas the object of this sui generis right is to ensure protection
of any investment in obtaining, verifying or presenting the contents
of a database for the limited duration of the right; whereas such investment
may consist in the deployment of financial resources and/or
the expending of time, effort and energy;"
and
"7. Object
of protection
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-utilization of the whole or of a substantial part, evaluated
qualitatively and/or quantitatively, of the contents of that database."
- In the light of this
it appears that for database right to exist, there must be investment in its
creation and, in particular, that investment must be directed at obtaining,
verifying or presenting the contents. As is apparent from art 7(1), the investment
must be substantial enough to justify protection. However the terms of Recital
19, set out at paragraph 28 above, indicate that the qualifying level of investment
is fairly low. In any event, whatever the level, it is not suggested that
the investment in the BHB Database falls below it.
- Of more significance
to this dispute is the type of investment involved. As one would expect, effort
put into creating the actual data which is subsequently collected together
in the database is irrelevant. This is confirmed by art 7(4) which draws a
distinction between rights in the database and rights in the data within the
database:
"The
right provided for in paragraph 1 shall apply irrespective of the eligibility
of that database for protection by copyright or by other rights. Moreover,
it shall apply irrespective of eligibility of the contents of that database
for protection by copyright or by other rights. Protection of databases under
the right provided for in paragraph 1 shall be without prejudice to rights
existing in respect of their contents."
- For this reason, the
costs and effort involved in BHB fixing the date of a racing fixture does
not count towards the relevant investment to which database right is directed.
On the other hand, the efforts which go into gathering all the data together,
including the dates of fixtures, is relevant. Such activities constitute "obtaining"
the data, one of the types of investment referred to in art 7(1) and Recital
40. In practice where one person both creates the underlying data and gathers
it together, as BHB does, it may be difficult to draw a sharp dividing line
between the two activities.
- Investment in 'verification'
is also relevant to the subsistence and protection of database right. Verification
consists of ensuring the accuracy of a collection of data. Thus even if the
content or form of the collection of data are substantially unchanged, effort
put into ensuring its accuracy, or continuing accuracy, is relevant and is
to be protected. This point is reinforced by Recital 55:
"(55)
Whereas a substantial new investment involving a new term of protection
may include a substantial verification of the contents of the database"
- The latter Recital indicates
that even if the contents of a database do not change substantially, if sufficient
investment is put into ensuring that it is up to date and accurate, it is
protected by the new right.
- Finally, investment in
'presentation' also counts. It appears to me that this must cover at least
the effort and resources put into making the data more readily accessible
by the user. Effort put into the design of the layout of the information should
count. It should be noticed that art 7(3), which is set out in paragraph 25
above, provides that protection under the Directive does not apply to computer
programs used in the making or operation of databases accessible by electronic
means. It is not entirely clear how one is to determine where the borderline
lies between investment put into presentation and investment put into designing
computer programs which make the data more readily searchable. Fortunately
that is an issue which does not arise in this case.
(c)
Breach of database rights
- As mentioned at paragraph
19 above, BHB puts is case on infringement in two ways. However before considering
each of those separately, one general issue has to be addressed. Breaches
under both art 7(1) or (5) of the Directive involve the claimant in proving
derivation. That is to say the claimant has to prove that the defendant is
misusing in a relevant manner parts of its database rather than data obtained
from some other, independent, source. This is a live issue in this case because
William Hill says that BHB has failed to prove derivation. I have already
explained that the information on the former's websites is admitted to be
derived from the SIS RDF. This is identical in content to some of the data
supplied to SIS by BHB from the BHB Database. It is also identical to the
information supplied through Racing Pages in the Declarations Feed which William
Hill uses for its telephone betting service. William Hill says that, although
this is so, it cannot be assumed and it is not proved that the information
it obtains from SIS is derived from the information supplied to SIS by or
on behalf of BHB because it is possible that SIS obtained the same relevant
information from another source. For the purpose of this action it is only
necessary to consider the data relating to imminent races, that is to say
information relating to the declared runners.
- William Hill argues that
some at least of the information it takes from the RDF may well have been
obtained by SIS directly from the various race courses up and down the country
and BHB has not proved otherwise. This argument is based upon the existence
and terms of an agreement between the Racecourse Association Limited and SIS
(the "RCA Agreement"), a copy of which is exhibited to the witness statement
of Mr Robert Ricketts. The Racecourse Association Limited is the representative
of the operators of racecourses throughout Great Britain. SIS, for the purpose
of supplying real-time broadcasts of race meetings to its subscribers, which
includes companies like William Hill, must be able to have broadcasting equipment
on site at each racecourse it intends to send race information from. To enable
it to do this, it has entered into the RCA Agreement, which, amongst other
things, allows it to send its employees and their transmitters to various
races. Clause 6.1.1. of that agreement obliges all Racecourse Association
Limited members, save in exceptional circumstances, to send to SIS three months
in advance details of race days, races and race times at each racecourse.
This, says William Hill, may be the source of much of the information on the
RDF which it uses on its internet site.
- It should be noticed
that even if this argument were valid, vital information in the RDF, namely
the identity of the runners, could not come from this source. The Racecourse
Association Limited members are under no obligation to supply that information
to SIS. But even in relation to the rest of the information, this argument
fails. The purpose of the RCA Agreement is to allow SIS to ensure that its
staff are at the right place on the right day. To enable it to do this, SIS
needs to know well in advance which racecourses are holding meetings on which
days. It is for that reason that Clause 6.1.1. requires Racecourse Association
Limited members to furnish SIS with this data three months in advance. Precise
details of which races will run at which times and with which runners is irrelevant
to this exercise and the RCA Agreement imposes on members no obligation to
supply them. It does not require any part of the information contained in
the Declarations Feed or the RDF to be supplied by such members. Furthermore,
all the information on the racing calendar eventually is derived from BHB.
This was explained by Mr Greeves during his cross-examination:
"Q.
Do you suggest, wearing your BHB hat, that the racecourses cannot without
your permission tell anybody what races they are running from time to time
and day to day? Is it a secret? Is it something that you go out of your way
to patrol and prevent?
A. That
is certainly not my intention to convey as the situation, but, as I said just
a moment ago, the information which is made up of race days, races, race times,
on each racecourse, can only be taken as official and correct and final and
absolute by any users once it has been through all the procedures that BHB
carries out with racecourses. We work with them to compile a fixture list
but we compile it, we take decisions on whether a fixture shall be placed
on a particular day or not, bearing in mind other applications. We take decisions
on whether races, which the racecourse may submit, is acceptable or not. It
might be against the orders and rules of racing and its content. It might
be possible that they wish to race on a day over two miles and it is a hurdle
and another course on that day has an identical race that we prefer for one
reason or another. There is a process of verification and compilation by BHB
as the racing authority, the governing authority, putting it all together.
So the racecourse, taking your point, would market its product, advertize
its races, but, even when it does so, for instance, they produce their own
individual fixture list, Haydock Park might extract from the fixture list
and publish its fixtures but you will see on any such fixture list copyright
of the British Horseracing Board.
Q.
Has that always been on there or is it just the last year or so?
A. It
has been on there for as long as I can remember, to my knowledge, and no reason
why racecourses would not do so.
JUDGE:
Just to help me, it has been there as long as you can remember. How
long can you remember?
A. I
think I mentioned yesterday I have been lucky enough to be involved in racing,
as my career, for nearly 30 years. I became involved in this area about four
years after I joined the industry when I was appointed as editor of the Racing
Calendar and I well remember back in those days the fact that the fixture
list was a copyright item. Anybody who wants to reproduce the fixture list
has to enter a copyright agreement with us. They may only pay a small charge
for it because we want them to advertize the fact that racing is on so we
do not make a prohibitive or go out of our way to make it difficult: quite
the opposite."
- In addition to this,
Mr Smith, SIS's company secretary, gave evidence of the source of the data
in the RDF. He confirmed that the data contained in it before the start of
racing comes from Racing Pages (ie from BHB). This is set out in the second
exhibit to his witness statement and was confirmed orally before me. Mr Smith
trained as a solicitor and does not profess to have technical knowledge but
he explained that his description of where SIS obtained its information from
was prepared in consultation with SIS's Software Development Manager. Although
Mr Platts-Mills challenged this on the ground that it was hearsay, there appears
to me to be no basis upon which to doubt the accuracy of what Mr Smith said.
William Hill never asked BHB to produce the Software Development Manager to
give direct evidence. Furthermore, on a balance of probabilities, it is most
unlikely that SIS, which was supplied with definitive up to the minute, accurate
data from BHB, would ignore that, and instead use only such race information
as it might receive from each of the 59 racecourses in Great Britain. In my
view it is virtually certain that the data in the RDF was derived directly
or indirectly from the BHB Database and it follows that the defendant's argument
on this issue fails.
Infringement
by extraction or re-utilization of a substantial part
- Art 7(1) provides that
one of the purpose of database right is "to prevent extraction and/or
re-utilization of the whole or of a substantial part, evaluated qualitatively
and/or quantitatively, of the contents of" the database. BHB argues that William
Hill's activities breach these rights in that the information they have taken
via the RDF represents a substantial part of the contents of the BHB Database.
It is, if anything, the most vital information. Although the BHB Database
contains much more, the identities of which horses are racing in which races
at what time at which racecourses are the core data to which everything else
is secondary. Furthermore it is BHB's investment in ensuring that this information
is up to date and accurate which William Hill is using for the purpose of
its new commercial operation. William Hill wants to ensure that its customers
can be confident that they are betting on horses which are racing at identified
races. Accuracy is what they want and this is ensured by taking data which
originates from the only definitive source, BHB.
- Although Mr Platts-Mills'
arguments are interrelated, they may be grouped under four headings. (1) What
William Hill has used is not a part, in the relevant sense, of the BHB Database,
(2) even if it is a part, it is not a substantial part, (3) the use does not
amount to an 'extraction' from the BHB Database and (4) it is not a 're-utilization'
of that Database. It is the first of these which is the most fundamental submission
and it goes to the very heart of what is protected by the new right.
- Mr Platts-Mills says
that one must distinguish between the data or information within a database
and the characteristics which give rise to the new type of protection. Database
right does not protect the information within a database per se. It is crucial
that BHB cannot use any database right which it may own to prevent William
Hill, or anyone else, from making use of any facts within its Database.
Taking the facts, and only the facts, can never infringe database right, whether
one fact is taken or all of them. What is protected is what he calls the "database-ness"
of the collection of information.
- "Database-ness"
he describes in the following way: The features of a database which make it
a database are described in art 1(2), namely
"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."
Since
no right is created in the works, data or other materials, the 'database-ness'
of a database must lie in the fact that the independent materials are arranged
in a systematic or methodical way, and are individually accessible. Following
from this he says that the acts amounting to infringement of a database must
in some way take unfair advantage of this "database-ness". Any acts which
do not make any use of the arrangement of the contents of the database, nor
take advantage of the way in which the maker has rendered the contents individually
accessible, cannot infringe the database right. It is in this sense that data
within a database is not part of the database for infringement purposes. The
defining characteristic of that which can be the subject matter of an infringement
action is form or structure which makes it accessible to a searcher. Echoing
the sentiments expressed by Lord Pearce in the well known copyright case,
Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR
273, Mr Platts-Mills says that that which would not attract database right
except by reason of its arrangement and/or individual accessibility will,
when robbed of that arrangement and/or individual accessibility, not be a
part of the database right and therefore the courts will not hold its unlicensed
copying or use to be an infringement. These propositions dovetail with a more
general point, namely that database right is to be construed so as to be narrower
than the protection which used to be afforded to compilations under English
copyright law.
- The first of these points,
namely that one must distinguish between database right on the one hand and
the rights in the individual pieces of data or information on the other, is
supported by a number of Recitals and Articles. For example arts 27, 45, 46
and 58 are respectively in the following terms:
"(27)
Whereas copyright in such works and related rights in subject matter thus
incorporated into a database are in no way affected by the existence of a
separate right in the selection or arrangement of these works and subject
matter in a database;
(45) Whereas
the right to prevent unauthorized extraction and/or re-utilization does not
in any way constitute an extension of copyright protection to mere facts or
data;
(46) Whereas
the existence of a right to prevent the unauthorized extraction and/or re-utilization
of the whole or a substantial part of works, data or materials from a database
should not give rise to the creation of a new right in the works, data or
materials themselves;
(58) Whereas,
in addition to the protection given under this Directive to the structure
of the database by copyright, and to its contents against unauthorized extraction
and/or re-utilization under the sui generis right, other legal provisions
in the Member States relevant to the supply of database goods and services
continue to apply;"
Similarly
art 13 provides:
"Continued
application of other legal provisions
This Directive
shall be without prejudice to provisions concerning in particular copyright,
rights related to copyright or any other rights or obligations subsisting
in the data, works or other materials incorporated into a database, patent
rights, trade marks, design rights, the protection of national treasures,
laws on restrictive practices and unfair competition, trade secrets, security,
confidentiality, data protection and privacy, access to public documents,
and the law of contract."
- However, in my view none
of this leads to Mr Platts-Mills' conclusion. A database containing, say,
a large number of poems does not thereby create an additional right in each
poem. Database right is concerned with collections of data. Furthermore nothing
in the Directive supports the second part of Mr Platts-Mills' submission relating
to "database-ness" which runs together two entirely distinct concepts,
namely the feature of form which have to exist before a database will
be recognised as existing and the features of content or investment
which are protected once a database is held to exist. Thus a database consists
of a collection of data brought together in a systematic or methodical way
so as to be individually accessible by electronic or other means. In much
the same way a literary work in copyright has to "written, spoken or
sung" before it is recognised as suitable for protection but infringement
is not restricted to acts of writing, speaking or singing. A collection of
data in the mind of an author does not qualify for protection until it is
put into a form where it is searchable. But the fact that it has to take this
form before database right can apply to it does not mean that the database
right protects that form. Indeed the Recitals to the Directive are quite explicit
that the form of a database is what is protected by copyright not by the sui
generis right:
"(38)
Whereas the increasing use of digital recording technology exposes the database
maker to the risk that the contents of his database may be copied and rearranged
electronically, without his authorization, to produce a database of identical
content which, however, does not infringe any copyright in the arrangement
of his database;
(39) Whereas,
in addition to aiming to protect the copyright in the original selection or
arrangement of the contents of a database, this Directive seeks to safeguard
the position of makers of databases against misappropriation of the results
of the financial and professional investment made in obtaining and collection
the contents by protecting the whole or substantial parts of a database against
certain acts by a user or competitor;
(58) Whereas,
in addition to the protection given under this Directive to the structure
of the database by copyright, and to its contents against unauthorized extraction
and/or re-utilization under the sui generis right, other legal provisions
in the Member States relevant to the supply of database goods and services
continue to apply;"
- These recitals make it
clear that infringement of the new right is not avoided by taking the contents
and rearranging them. On the contrary, what has to be protected is not primarily
the form but the investment which went into "obtaining, verifying or
presenting the contents" of the database as made clear, not only by art 7(1)
but also Recital 40 (see paragraph 31 above). It is for this reason that substantial
investment in verification (where the form is substantially unchanged) still
qualifies for database right in accordance with Recital 55 (see paragraph
36 above). In such a case, the infringer takes advantage of the relevant investment
if he makes use of the accuracy of the data in the database, not because he
takes it in a particular form. Furthermore Recital 42 also makes it clear
that infringement is not limited to activities which create competing databases:
"(42)
Whereas the special right to prevent unauthorized extraction and/or re-utilization
relates to acts by the user which go beyond his legitimate rights and thereby
harm the investment; whereas the right to prohibit extraction and/or re-utilization
of all or a substantial part of the contents relates not only to the manufacture
of a parasitical competing product but also to any user who, through his acts,
causes significant detriment, evaluated qualitatively or quantitatively, to
the investment;"
- In my view Mr Platts-Mills'
submission on this crucial issue is wrong. I would only add the following
points. First, Mr Platts-Mills' arguments lead inevitably to his submission
that taking all the contents of a database is not the taking of a 'part'
of the database if the contents are not taken in substantially the same arrangement
as in the claimant's product. There is nothing in the Directive which suggests
that this surprising result was what was intended by the legislature. Second,
the submission is made all the more unattractive in view of Mr Platts-Mills'
concession, rightly made in my view, that with modern software any collection
of data stored in computer memory is capable of being accessed and searched.
It does not need to be in any particular form or arrangement, yet many such
collections are undoubtedly databases. Third, I did not find it helpful or
meaningful to describe database right as being narrower than copyright. They
are different and have to be assessed individually. Fourth, this topic may
be approached in an altogether more simple way. What are prohibited are certain
kinds of use or manipulation of "parts of the contents" of the database.
If one asks the question, "is a collection of data taken from the database
a part of its contents?", the answer must be in the affirmative unless there
is something in the Directive to give the words "part of its contents"
a special meaning. There is nothing.
- This leads to the next
issue, substantiality. For the purpose of illustrating the arguments, it is
convenient to consider what was on the William Hill internet site on 13 March
2000. The trial bundle contains a printout of this material. As I understand
it, all horse racing on that and the following day is reported there as is
a selection of races to be run at different times in the more distant future.
For present purposes it is only necessary to consider the material derived
from the RDF. Again, for convenience, I shall only consider the data relating
to races to be run on 13 March itself. This covered the complete racing cards
at three racecourses; Plumpton, Stratford and Taunton. In total 20 races were
run, involving 192 different horses. The size of the individual races differed,
the smallest including the 3.00 pm at Plumpton with 6 runners, the largest
being the 4.20 pm at Stratford with 16 runners. It is noticeable that the
times of the various races are interleaved so that no two races commence at
the same time. Thus, for example, the 1.50 pm at Stratford is followed by
the 2.00 pm at Plumpton then by the 2.10 pm at Taunton, the 2.20 pm at Stratford
and so on.
- Art 7(1) requires substantiality
to be assessed "qualitatively and/or quantitatively". Mr Platts-Mills
says that the information used by his client cannot be regarded as substantial
on either basis. As far as quantity is concerned, he points to the fact that
there is a vast amount of information in the BHB Database. The question of
whether the defendant's use is quantitatively substantial must be looked at
by comparing what has been taken or used with what is in the claimant's database,
not by seeing how important the material is to the defendant. The same approach
must be adopted in relation to the qualitative assessment of what has been
taken. Once again, if one compares the totality of the important data held
on the BHB Database with what is on the William Hill internet site it can
be seen that the latter contains very little but the names of a few horses.
- I accept Mr Platts-Mills'
submission that this issue has to be assessed primarily by comparing what
has been taken or used with what is in the claimant's database. However the
importance of the information to the alleged infringer is not irrelevant.
In some cases, of which this is an example, the significance of the information
to the alleged infringer may throw light on whether it is an important or
significant part of the database. If one of the purposes of the database is
to service businesses of the same general type as that run by the alleged
infringer with the same type of information taken by him, then the collection,
verification and presentation of that type of information within the database
is likely to be an important or substantial part of its contents.
- Art 7(1) provides that
substantiality is to be assessed by looking at the quantity and quality of
what is taken but it does not require them to be looked at separately. It
contemplates looking at the combination of both. This exercise does not admit
of precision but, as Mr Prescott submits, in undertaking it the court must
bear in mind that one of the objectives of the Directive is to protect the
investment in obtaining, verifying or presenting the contents of databases.
I have set out at paragraph 3 above, some of the primary functions of the
BHB. At its heart, as its corporate name makes clear, is horseracing. The
ultimate purpose of the BHB Database is to help the BHB control and facilitate
horseracing and raise funds for horseracing derived from gambling. To this
end, one, if not the, major purpose of the BHB Database is to ensure that
all the relevant data relating to horse racing is accurately stored and available.
It is the data relating to the races themselves which represents the ultimate
and crucial information within the Database. Here what the defendant is doing
is making use of the most recent and core information in the BHB Database
relating to racing. William Hill is relying on and taking advantage of the
completeness and accuracy of the information taken from the RDF, in other
words the product of BHB's investment in obtaining and verifying that data.
This is a substantial part of the contents. No useful purpose would be served
by trying to assess this issue first on a quantitative basis and then, separately,
on a qualitative basis. They should be looked at together.
- However this finding
does not dispose of the dispute. William Hill only breaches BHB's database
right if its activities amount to an "extraction" or "re-utilization"
of a substantial part. These two words are defined in art 7(2) as follows:
"(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-utilization'
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 right holder 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-utilization."
- Mr Prescott says that
these are not difficult provisions to understand. Extraction means copying.
Re-utilization amounts to making the material available in one form or other
to the public. Mr Platts-Mills urges a much more restrictive meaning for each
expression. I shall take them separately.
- According to Mr Platts-Mills,
a thing which is extracted has to be extracted from somewhere. This involves
an act of 'taking away'. Once it has been extracted or taken away from somewhere
it cannot be taken away again (unless it is first put back there). Therefore
it is only the first removal of the data that amounts to extraction. To be
an infringement of database right, subsequent use of the extracted material
must amount to re-utilisation thereof, if anything. He also says that what
is removed has to have the same quality of 'database-ness' as the original.
This latter point is a repetition of the argument considered above and I do
not accept it for the reasons already given. I can therefore concentrate on
the suggestion that the definition means first removal. Mr Platts-Mills illustrates
this submission by reference to two examples. First he refers to what SIS
does. It will be recalled that every day SIS, under licence, receives a stream
of data from the BHB Database. This is pulled off the computer by Weatherbys.
Mr Platts-Mills says that the only extraction is committed by Weatherbys.
What SIS has got is a lot of data, but it is not the BHB Database and the
only person who has removed anything from the latter is Weatherbys. He says
that because this is so, there is nothing to prevent SIS making multiple copies
of the data supplied to it, because making such copies does not involve any
taking of information from the BHB Database. As shall be explained more fully
below, Mr Platts-Mills also says that if, without licence, SIS makes the totality
of what it receives from Weatherbys available to third parties, that is not
re-utilization either. Therefore SIS can do what it wants with the data supplied
to it by Weatherbys. Secondly he refers to the contents of Racing Post. This
is a daily newspaper which is devoted to racing. It is supplied, under licence,
with a vast amount of information about every race running on a particular
day. This does not cover just which horses are racing in which races at which
times at which racecourses. It also includes details of owners, colours, previous
performances of each horse, handicapping, jockeys, trainers and so on. The
vast majority of this information is then published in the newspaper for the
information of the public. Mr Platts-Mills says that not only can the Racing
Post make this available to anyone it likes, whether licensed or not, but
that anyone else can copy the Racing Post in full and without licence. Neither
activity would amount to an extraction.
- I am not even convinced
that these arguments are internally consistent. If, as suggested, extraction
means removal or taking away data from the database so that they are not left
behind, I can not see how what Weatherbys does when it supplies data to SIS
can be categorised as extraction either. What Weatherbys does is read data
from the BHB Database and pass that information on to SIS, it does not cut
the information out of the Database so that it is no longer there. In any
event, I have no doubt that these submissions are wrong. The Directive does
not require that extraction should be direct rather than indirect, nor does
the definition involve the concept of taking away. All that is required is
that a substantial part of the contents be transferred to a new medium. Thus
the definition refers to "transfer … to another medium". It says nothing
about the resultant state of the database from which the transfer has been
made. If someone takes a copy of the contents of a database and loads it onto
a new medium, it is no less transferred to the new medium because the same
data are left on the original database. In substance, therefore, I accept
Mr Prescott's argument on this issue. The only qualification to be noted is
the requirement that there be transfer "to another medium". A hacker
who accesses a database without a licence, looks at the data and memorises
it may well not be guilty of extraction if his actions do not involve the
making of a copy of the data in material form.
- As far as re-utilization
is concerned, Mr Platts-Mills says that particular attention must be paid
to the words "making available to the public" in the definition. He says
that this must involve telling the public something it does not already know.
In other words it only covers first publication. Once the contents have been
made public, for example through the Racing Post, there can be no re-utilization
because if the same information is supplied by an unlicensed source it is
not making anything available to the public. The public already has it. This
is of particular importance in this case because all the information available
on the William Hill websites is but a repetition of information which is published
in the Racing Post and, for example, in William Hill's own LBOs.
- By the end of his submissions
I was not sure whether Mr Platts-Mills adhered to this argument. In any event,
in my view it is incorrect. If it were otherwise the results would be bizarre.
For example, as soon as Racing Post published its daily edition, BHB would
be unable to protest if unlicensed copies of it were put on the market. Mr
Platts-Mills goes even further and says that the supply of all the relevant
information by SIS to his client in the RDF was itself a publication, since
his client is a member of the public. On this basis, if the whole of the BHB
Database were communicated to William Hill, say by BHB, the latter would immediately
lose any ability to restrain further use by the former. There is nothing in
the Directive which suggests that the right to prevent re-utilization is restricted
to secret data on a database, which would be the effect of this submission.
What it is concerned with is the unlicensed use of data derived without permission
from a database. Private use of such data are not treated as re-utilization
but any use which transmits or makes available the extracted information to
the public is covered by database right and can be restrained. If one asks
the question, "is the information on the William Hill website being made
available to the public by … on-line or other forms of transmission?" the
answer must be in the affirmative. The fact that some or all of the data are
available to the public from another source is irrelevant. There is no reason
why information cannot be made available to the public from more than one
source. If the draughtsman of the Directive had intended to cover only first
publication, he surely would have said so explicitly and, had he done so,
it would have undermined the very purpose of the Directive, namely the protection
of the investment which goes into making databases.
- It follows that William
Hill's actions of taking information from the RDF and loading it onto its
own computers for the purpose of making it available on its website is an
unlicensed act of extracting a substantial part of the BHB Database and the
subsequent transmission of that data onto its website for access by members
of the public is a reutilization. The defendant infringes BHB's rights in
both ways.
Infringement
by repeated use of insubstantial parts
- BHB also puts its case
in an alternative way. It says that even if the totality of what William Hill
takes from the RDF on a particular day is not, by itself, a substantial part
of the BHB Database, nevertheless it can rely on art 7(5) which is in the
following terms:
"The
repeated and systematic extraction and/or re-utilization 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."
- In this case, William
Hill extracts the details of races, horses and times for each race course
day by day and week by week throughout the racing season. The claimant argues
that such activities clearly and unreasonably prejudice its legitimate interests,
not least because a significant part of its income has historically been derived
from selling racecard information to bookmakers and newspapers. In this way
it derives an income from those who use that information to facilitate betting.
For example, William Hill, both prior to the commencement of its new business
and now, pays directly or indirectly for the racecard information derived
from BHB and used in its telephone betting operations and in its LBOs. I understand
that all other bookmakers in the country do likewise. The new internet business
is an alternative method by means of which bookmakers make their services
available to the public. Instead of a punter being required to walk into a
William Hill LBO, the betting shop is made available to him over the internet
on his own computer. The mechanics of allowing a punter to place a bet may
have changed but the same critical information is used by William Hill for
the same purpose. To allow it to use the information without payment on the
internet site would undermine this well established part of BHB's operations.
In the medium term this may well severely undermine the value of the licences
granted for use of data in LBOs and in telephone betting operations.
- Mr Platts-Mills advances
a number of arguments against this. He repeats his 'database-ness' argument,
saying that what his client has taken is not an insubstantial part, because
of its small size and its lack of necessary database quality it is not a part
at all. I have dealt with this above. He also runs the same arguments relating
to extraction and re-utilization which I have dealt with under art 7(1). There
are two other arguments which deserve separate consideration.
- First, Mr Platts-Mills
draws my attention to the wording of art 7(5). It is only repeated and systematic
extractions or re-utilizations of insubstantial parts of the contents of the
database which gives rise to this type of liability. He points to art
10(3) which reads as follows:
"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."
- He says that the evidence
of the enormous amount of work done by BHB in updating and continuous verification
of the BHB Database means that from week to week or, perhaps, day to day new
databases come into existence each of which is protected for its own new term.
On this basis, what William Hill is doing is not repeatedly and systematically
extracting or re-utilising insubstantial parts of the contents of one
database. Rather it amounts to taking one insubstantial part of a sequence
of different, though inter-related, databases.
- This argument can be
illustrated by the following example. A database is made up by weekly additions
of new data and the removal of some of its old data. On a particular week
the contents may be depicted pictorially as set out below:
- The data represented
by 1 + (a) is 5 weeks old, that by 2 + (b) is 4 weeks old and
so on. The most recent data are 5 + (e). Assume for the purpose of
illustration that (a), (b), (c), (d), and (e)
are, by themselves, each so small and individually trivial that they represent
insubstantial parts of the content of the database. For example in relation
to a database concerned with horseracing, each represents the name of a single
horse. The next week the contents of the database can be represented as follows:
- The oldest data, 1
+ (a), has been jettisoned but the most recent data, 6 + (f), has
been added. Once again the piece of data, (f), is an insubstantial
part of the contents of the database in this form. By the sixth week the database
looks like this:
By this
time, all of the data which had been in the database 6 weeks previously (as
depicted in paragraph 66 above) has been removed.
- The weekly additions
and subtractions are sufficient to justify a separate term of protection for
the database each week. Assume now that the unlicensed third party takes data
(e) in his first week, (f) in his second week and so on up to
(j). When he takes (a) he clearly is not taking anything from
the next week's or any subsequent collection of data. When he takes data content
(e) in the second week, again he is not taking it from any subsequent
week's collection of data, nor has he taken his data from the previous week's
collection. The same analysis goes all the way through to and including data
content (j). Here there has been no repeated and systematic extraction
re-utilization of insubstantial parts of a single database, rather there has
been a taking of a single insubstantial part of each of a sequence of databases.
This is not covered by art 7(3).
- Although this is an attractive
argument, I do not think it is right. The Directive has to be construed to
make sense. This argument starts from the assumption that all databases have
to be considered as discrete 'frozen' products, rather like separate editions
of a book, each with a discrete period of protection. So, a database which
is modified over time is to be broken down into a series of steps, each of
which is protected by database right. However that would cause serious difficulties.
If a database which is under constant revision is to be considered as a series
of discrete protected works, how is one to know where one ends and the next
begins? Presumably the size of the steps would be determined by the amount
of effort needed to trigger the operation of art 10(3), yet it will be virtually
impossible in any case either to determine where the starting point is in
the creation of the series of databases or to define the size of the steps.
In the case of the BHB Database, for example, are the steps to be measured
in seconds, hours, weeks or months? How many of the 800,000 entries made in
it each year create a new database? How many separate databases are created
each year? Furthermore, were this argument correct, in most if not all cases,
art 7(3) would have no application.
- It seems to me that there
is a false assumption underlying Mr Platts-Mills' argument. There is nothing
in the Directive which suggests that it was not to apply to dynamic databases
in just the same way as it applies to ones which are built and modified in
discrete, well defined steps. Many of the most valuable databases are those
which are under constant revision. If Mr Platts-Mills' argument were correct,
a database which was very large indeed and which involved very large additions
of data from moment to moment would have to be split into a myriad of databases,
each separated from its immediate predecessor and successor by a very short
time interval. Unless an unlicensed copyist took a significant amount of data
all of which happened to have been entered or verified virtually simultaneously
in the database, he could say that he had taken insubstantial amounts from
each member of a series of closely related databases and thereby had not infringed.
In fact this argument could be raised in this case in relation to, say, all
of the data relating to racing on 13 March which is to be found on the William
Hill website. As I have already said that this is a substantial part of the
BHB Database. As I have also said, the data reproduced by William Hill includes
the names of 192 horses in 20 races held at 3 racecourses. It is inconceivable
that all of this material was put on the BHB Database at the same time. It
was almost inevitable that each piece was entered at a different time. If
Mr Platts-Mills' argument were correct, it would be for BHB to prove that
these pieces of data were entered so close to one another that they should
be considered to be part of a single database. To do that, it would be necessary
to show that between the first and the last there had not been sufficient
effort put into the creation of the BHB Database to trigger art 10(3) one
or more times.
- In my view the BHB Database
is a single database which is in a constant state of refinement. It seems
to have been so regarded by all the witnesses. An attempt to split it into
a series of discrete databases, besides being impossible to do, would not
reflect reality. Its contents change with time and without any obvious break.
So too, the term of protection changes. As new data are added, so the database's
term of protection is constantly being renewed. However an unlicensed third
party who takes only older data from it only faces a database right which
runs from the date when all of that older data was present in the database
at the same time. This does not render art 10(3) meaningless. First it emphasises
that the term keeps being renewed as the database is renewed. Secondly it
makes clear that if someone takes an existing database and adds significantly
to it, he obtains protection for the database incorporating his additions.
This would be so even if the new author is not the same as the author of the
original database.
- For these reasons it
appears to me that the BHB Database is to be regarded as one database in a
state of constant revision. William Hill's borrowing from it from day to day
come within art 7(5) as repeated and systematic extractions and re-utilizations
of parts of its contents.
- The other argument advanced
by Mr Platts-Mills is based on the final part of art 7(5). The extraction
or re-utilization of insubstantial parts of a database does not infringe database
right unless it conflicts with normal exploitation of that database or unreasonably
prejudices the legitimate interests of the maker of the database. He says
that William Hill's activities do not so conflict.
- Each side has given me
examples of what it says would or would not count as a conflict with normal
exploitation or an unreasonable prejudice. It is not too difficult to think
of examples which would fall outside the scope of protection. For example
an author of fictional articles about horseracing which are published once
a week in a Sunday newspaper might decide to pick the names of the horses
in his stories from the list of names of runners published in the Racing Post
each week. In so doing, he would make no use of the investment made by BHB
in creating or verifying its database and such use would not conflict with
normal exploitation of it nor would it prejudice BHB's interests. What amounts
to normal exploitation or unreasonable prejudice to legitimate interests may
well be impossible to define with precision. In my view this is not a case
where it is necessary to try, because the defendant's activities here clearly
undermine a significant part of BHB's exploitation of its database and unreasonably
prejudices its interests for the reasons advanced by Mr Prescott and set out
at paragraph 62 above.
- For these reasons, I
have come to the conclusion that William Hill also breaches BHB's rights under
art 7(5).
- This only leaves one
other issue, namely William Hill's proposed modifications to its website if
it loses this action. These modifications were explained by Mr Michael Ellis,
a senior executive of the defendant:
"If
for any reason it was not possible to publish the runners' names or the race
names/times, two changes could be made to the Information used on the Internet
site. Firstly, instead of the time of the race being stated, the number of
the race at the meeting could be identified (e.g. "race 2 at Ascot").
Secondly, instead of the horses entered into the race being identified by
name, they could be identified by their number. If an injunction is granted
which stops William Hill from using the Information on its Internet site,
then (unless the injunction also forbids this) William Hill intends to make
one or both of those modifications, but otherwise intends to continue to use
the Information [as it currently does]".
- Database rights protect
the unlicensed taking and use of information. What William Hill has in mind
involves the manipulation of the same information but its presentation in
a different manner. This change would have no impact on the issue of extraction.
Substantially the same information, essential for enabling William Hill's
customers to place bets, would have to be extracted by William Hill from the
RDF or an equivalent source. Infringement of BHB's database right in this
respect would be unaffected. Furthermore, I do not see how the modified method
of presenting substantially the same data could avoid infringement by re-utilization.
If a database happened to be written in English, an unlicensed third party
who displayed a substantial part of it would not avoid infringement by doing
so in French, German or Chinese ideograms, nor would he avoid infringement
if he translated information in denary code to its binary equivalent. As long
as substantially the same information is made available on the website, the
same acts of extraction and re-utilization will have taken place.
