1. Database Protection The Database Maker Right
Dr Guido Westkamp

2. Background to Database Protection
Copyright Systems (UK; USA) – protection for compilations
Sweden; Norway; Denmark – catalogue rule
Netherlands – “geschriftenbescherming”
Unfair Competition / Misappropriation
Different standards of protection (UK vs. Germany)
1988 EC Green Paper recommends harmonisation
First proposal 1993  copyright plus ‘unfair extraction right’

3. US Position – H.R. 3261
SEC. 3. PROHIBITION AGAINST MISAPPROPRIATION OF 22 DATABASES. 23 (a) LIABILITY
Any person who makes available in 24 commerce to others a quantitatively substantial part of the 25 information in a database generated, gathered, or maintained by another person, knowing that such making available in commerce is without the authorization of that other person (including a successor in interest) or that other per- son's licensee, when acting within the scope of its license, shall be liable for the remedies set forth in section 7 if–
(1) the database was generated, gathered, or 7 maintained through a substantial expenditure of financial resources or time;
(2) the unauthorized making available in commerce occurs in a time sensitive manner and inflicts injury on the database or a product or service offering 12 access to multiple databases; and
(3) the ability of other parties to free ride on the efforts of the plaintiff would so reduce the incentive to produce or make available the database or the product or service that its existence or quality would be substantially threatened.

4. US Position – H.R. 3261
(b) INJURY.--For purposes of subsection (a), the term ``inflicts an injury'' means serving as a functional equivalent in the same market as the database in a manner that causes the displacement, or the disruption of the sources, of sales, licenses, advertising, or other revenue. (c) TIME SENSITIVE.--In determining whether an unauthorized making available in commerce occurs in a time sensitive manner, the court shall consider the temporal (b) INJURY.--For purposes of subsection (a), the term 19 ``inflicts an injury'' means serving as a functional equivalent in the same market as the database in a manner that 21 causes the displacement, or the disruption of the sources, 22 of sales, licenses, advertising, or other revenue.
(c) TIME SENSITIVE.--In determining whether an un- 24 authorized making available in commerce occurs in a time 25 sensitive manner, the court shall consider the temporal value of the information in the database, within the context of the industry sector involved

5. EU Database Protection
Directive 9/96 – background and aims:
Harmonisation between Copyright and Author’s Right Systems
Creation of High Level of Protection
Background: Feist (1991)

6. US position
2) COMMERCE.--The term ``commerce'' means all commerce which may be lawfully regulated by the Congress.
(3) COMPILATION.--The term ``compilation'' means a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work 2 of authorship. The term ``compilation'' includes collective works.
(4) DATABASE (A) IN GENERAL.– […] the term ``database'' means a collection of a large number of discrete items of information produced for the purpose of bringing such discrete items of information together in one place or through one source so that persons may access them.

7. EU Database Directive Creation of two tier system
“sui generis” right as IP right??
Important:
Definition of database (for purposes of both copyright and SGR)
Collection
Indepnedet elements
Indivdiually accessible
Copyright  originality is selection and /or arrangement of items
SGR – an IP right? In what?

8. Article 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.
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-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 rightholder or with his consent shall exhaust the right to control resale of that copy within the Community; Public lending is not an act of extraction or re-utilization.
3. The right referred to in paragraph 1 may be transferred, assigned or granted under contractual licence.
4. 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.
5. 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.

9. Judicial Freedom of Movement ?
Relationship between object of protection and underlying rationale
Under general IP law, usually assumptions apply as to protectability for enlisted subject matter
Basic problem: uncertainty as to (1) object of protection and (2) meaning of
What constitutes a database?
What is substantial investment
What is “substantial taking” (obtaining, verification or presentation of data)
How do the individual elements relate to each other?

10. Database Protection before Courts
“First wave” disputes –
No true resemblance of “Feist” situation
In a number of cases, concerns the taking of insubstantial parts over a period of time / use of hyperlinks
Typical judicial assessment – reflecting “rigid” dogmatic IP/Copyright approach
Database as Subject Matter  Assumption as to Substantial Investment
Investment = primarily obtaining, but also presenting data
But value or extent of actual investment not taken into account for determining infringement

11. Database Infringement
Taking of substantial part
Evaluated EITHER qualitatively OR quantitatively
Effect: A Property Right in Data:
With respect to the data taken rather than the investment
Cf. approach by UK courts – substantial taking is determined primarily by the quality of the portion taken (i.e. the copyrightable expression). Competitive relationship taken into account.

12. Object of Infringement
ECJ, British Horseracing v William Hill: protects obtaining of data not creation
BGH, Request for Preminary Ruling to ECJ (pending)
Professor P has collected list of poem headings
X has taken these headings to be used in different compilation
Question  is it a requirement under Art. 7 that copying from database is proven, or do rights subsist in the content as such?

13. Types of Infringement Wide coverage Consequences: OR
Extraction (copying – includes transient copies; RAM- copies)
Re-utilisation – includes making available
No need for technical copying (ECJ Directmedia 2008)
Consequences:
Quantity: to be evaluated by reference to the amount of data and forces to set absolute thresholds OR
Quality: Quality of information? (“most recent data”). Dangerous approach – likely to sanction the sheer possession of data once third party expresses an interest in access

14. Article 7 (5) Consequences for Article 7 (5):
Repeated and systematic extraction
Repeated: more than once?
Systematic: use of any technical device sufficient (i.e. search engines)
Legitimate interest – interest in not having data taken away? Interest in potential license fees? (circular argument)
Causes specific problems in relation to dynamic databases –
The smaller the original database is, the less likely infringement can be affirmed.

15. Consequences
Redundancy of the entire IP spectrum (by creating a notion of exclusive rights in data/information for the sheer fact of some investment)

16. Approximation to Misappropriation
ECJ – rationale for protection is substantial investment and this must be reflected when assessing infringement
No “spin off” efforts – distinction between markets
Quality and Quantity to be taken into account
Open issues: exact consequences for relationship between investment and taking

17. Investment Problem (1): the role of the market
Problem (2): the meaning of “repeated and systematic” taking

18. Investment Example: BHB v William Hill [2001] AllER 1
Existing license for satellite transmission
License covered use in William Hill outlets on TV screens
Use of data on internet web site not licensed
Substantial taking – “databaseness” not necessary – but extraction and re-utilisation of data – some investment in verifying etc. – taking of data from entire database amounts to quantitatively substantial taking – taking of recent data = qualitative substantial taking – but each portion taken (per week) insubstantial – legitimate interest = potential license fees

19. New” approach: investment (yes) – infringing act (yes, taking still present) – nexus between investment and taking
Taking must refer to a portion of the database which reflects a substantial investment
This excludes an approach purely based on quality OR quantity
If substantial investment has preceded, substantial taking is to be evaluated according to the key rationale – [at least] jeopardy for the investment .

20. .
Problem: definition of investment  level of competition (guidance: “Feist” scenario) and issues such as markets (actual or reserved), goodwill created, proximity of markets.
More difficult to maintain in relation to harmonisation (common lowest denominator solution easier to apply; move towards unfair competition notion will cause disparate judicial responses, according to individual member states notions of unfair competition.

21. .
Advantages: level of investment determines scope of public domain information
In relation to dynamic databases, the complexity is reduced because the notion of a database is rather irrelevant
Also clarifies the status of Article 7 (5) – “legitimate interest”
 Effectively not an IP right

22. Readings Westkamp [2003] IIC Derclaye [2005] IIC 2
Derclaye [2005] European Law Review 420
Please see also collection of database decisions under