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Online publishers liable for database infringement in target countries not just country of data host, says CJEU

Publisher liability for database infringement extends to countries where the information is meant to be used and not just countries where it is stored, the Court of Justice of the European Union (CJEU) has ruled.18 Oct 2012

The Court said an EU national court will have jurisdiction to rule that a company is guilty of primary infringement of database rights if there is "evidence" that the publisher intended for the information to be viewed in that country.

"Where such evidence is present, the referring court will be entitled to consider that an act of re-utilisation ... is located in the territory of the Member State of location of the user to whose computer the data in question is transmitted, at his request, for purposes of storage and display on screen," the CJEU said in its ruling.

Intellectual property (IP) law expert Helyn Mensah of Pinsent Masons, the law firm behind Out-Law.com, described the CJEU's finding as "pragmatic".

Three distinct protections can apply to databases and their contents. The information in a database can be protected by copyright; the database structure itself can be so creative that it is protected by copyright, and the whole database can be protected by the 'sui generis' database right.

This was created by the European Union to encourage the development of database-dependent digital systems and it allows a creator to stop others using a database or the information in it if the investment of time, money and skill in that original database was large enough. Under copyright law alone such protection would not necessarily apply if the database contained merely facts, as only the expression of facts and not the facts themselves can be copyrighted.

Under the EU's Database Directive database creators that have made "qualitatively or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents" can "prevent extraction and/or re-utilization of the whole or a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database".

EU law only allows for rights holders to enforce their 'sui generis' database rights against unauthorised "extraction" or " acts of re-utilisation which take place in that territory". The CJEU said that it will be up to national courts to determine on a case-by-case basis whether databases were re-utilised in their country.

The CJEU was ruling on a case referred to it from the UK's Court of Appeal. The UK court had asked the CJEU whether it has jurisdiction to rule on whether Swiss-based company Sportradar is guilty of "primary infringement of UK database rights" belonging to Football Dataco. Football Dataco commercialises match data on behalf of football authorities in Scotland and England.

Sportradar has argued that the UK courts are not competent to rule on the issue because it 'sends' football data to the UK from servers based in Austria and that therefore no re-utilisation of Football Dataco's data takes place in the UK. Sportradar provided UK betting firm Stan James with statistics about Scottish and English football games.

The UK High Court previously said that Sportradar re-utilised some information that the Press Association, acting under licence from Football Dataco, provided about the games for use in its own service. However, it ruled that the company was not jointly liable for database rights infringement by users of that service because it was merely making the data available from its servers in Austria.

The High Court determined that organisations are responsible for 'making available' internet-hosted material in the country where its host server is based and not in the country where the material is read or used. On that basis it said that it had no jurisdiction to rule on whether Sportradar was guilty of primary infringement of Football Dataco's database rights.

However, the CJEU's ruling suggests that the High Court's process for determining jurisdiction was wrong.

"The argument put forward by Sportradar that an act of re-utilisation ... must in all circumstances be regarded as located exclusively in the territory of the Member State in which the web server from which the data in question is sent is situated cannot be accepted," the CJEU said.

If Sportradar's view of the legal position was affirmed, the CJEU said rights holders may not be able to enforce their database rights. This is because location of servers cannot always easily be determined, it said.

Because database rights infringements are generally enforced on a national basis, rights holders would not be able to establish that infringements had taken place within the jurisdiction of a national court in the circumstances where infringers' servers were "located outside the territory of that state" in another EU country, the CJEU said.

It added that the objectives of EU law in providing for sui generis database right protection would, generally, be "compromised" if Sportradar's argument was adopted, in circumstances where "acts of re-utilisation aimed at the public in all or part of the territory of the European Union" were said to have occurred on servers based outside of the trading bloc.

The CJEU said that just because websites containing infringing data are accessible in a country is not, on its own, sufficient for "concluding that the operator of the website is performing an act of re-utilisation caught by the national law applicable in that territory concerning protection by the sui generis right".

Merely because data on Sportradar's Austrian servers are sent to UK internet users when those individuals "request" cannot justify, on its own, a finding that Sportradar re-utilised the data on UK territory, the CJEU said.

However, if the Court of Appeal deems that there is sufficient evidence that Sportradar intended for UK internet users to access the data then the "act of re-utilisation" could be said to have taken place in the UK and Sportradar could be found primarily liable for infringement of the database rights, the CJEU said. The EU court provided examples of "evidence" that the Court of Appeal could consider.

"The circumstance that the data on Sportradar’s server includes data relating to English football league matches, which is such as to show that the acts of sending at issue in the main proceedings proceed from an intention on the part of Sportradar to attract the interest of the public in the United Kingdom, may constitute such evidence," the CJEU said.

"The fact that Sportradar granted, by contract, the right of access to its server to companies offering betting services to that public may also be evidence of its intention to target them, if – which will be for the referring court to ascertain – Sportradar was aware, or must have been aware, of that specific destination," the Court added. "It could be relevant in this respect if it were the case that the remuneration fixed by Sportradar as consideration for the grant of that right of access took account of the extent of the activities of those companies in the United Kingdom market and the prospects of its website betradar.com subsequently being consulted by internet users in the United Kingdom."

Helyn Mensah of Pinsent Masons said: "The CJEU has confirmed that the concept of ‘re-utilisation’ under the Directive is to be considered broadly. The focus must be on whether data has been made available to the public - in other words, any unauthorised act which has the effect of distributing the whole or part of a database to the public is captured. The technical nature or process by which this is achieved is irrelevant. An act of sending data is therefore captured within the meaning of the term 're-utilisation'."

Mensah said that although the CJEU had outlined a different way to determine the question of whether an act of re-utilisation took place on a nation's territory from the method suggested by an Advocate General to the Court in an opinion issued in June, both the opinion and the judgment led "to the same result".

"The focus remains firmly on the operation of the internal market and the users or public targeted, not on the location of business servers," she said.

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