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Uncertainties with Sui Generis Database Right: Negative Interpretation of Feist

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Footprints of Feist in European Database Directive

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Abstract

The concern with the apparent negative effect as a result of the Feist judgment gave rise to the database right in Europe. This chapter observes such negative effect at the formative stage, stage of enactment and post-enactment stage. All these effects are associated with the structure of the database right. Although concern with the right can only be comprehended at the first two stages, ill-effects are truly visible in the post-enactment stage. The database right has led to considerable monopoly concerns, especially with single-sourced databases.

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Notes

  1. 1.

    Infra sections 7.1, 7.2, and 7.3.

  2. 2.

    Infra sections 7.2 and 7.3.

  3. 3.

    Infra section 7.3.

  4. 4.

    Infra section 7.3.

  5. 5.

    Commission, ‘Proposal for a Council Directive on the legal protection of databases’ COM (92) 24 final (COM (92) 24 final).

  6. 6.

    ibid, art 2(5).

  7. 7.

    ibid; In the final version, there was a shift from the first draft proposal, since the proposal recommended that database right should not apply to databases, if copyright or neighbouring rights subsisted in the contents of such database.

  8. 8.

    ibid, art 1(1) & 2(5).

  9. 9.

    COM (92) 24 final, art 8(1); In the opinion of Jane Ginsburg, the best balance in relation to non-original databases is through the compulsory licensing system whereby access to information is maintained, while there is less chance of appropriating the investment of publishers in such databases, Jane C Ginsburg, ‘Creation and Commercial Value: Copyright protection of works of Information’ (1990) 90(7) Colum. L. Rev. 1865, 1924–1927.

  10. 10.

    In the first draft proposal, there was no definite indication about the meaning associated with lawful user, although the explanatory memorandum to the first draft proposal suggests that a lawful user is a “person having acquired the right to use a database.” Further discussion on a lawful user will be considered in the next section. COM (92) 24 final, art 5(1).

  11. 11.

    COM (92) 24 final, art 8(4).

  12. 12.

    ibid, art 8(5).

  13. 13.

    Supra chapter 6.

  14. 14.

    ibid.

  15. 15.

    ibid, section 6.5.

  16. 16.

    ibid.

  17. 17.

    COM (92) 24 final, para [2.3.3].

  18. 18.

    ibid.

  19. 19.

    Feist Publications v Rural Telephone Service 499 US 340 (1991).

  20. 20.

    COM (92) 24 final, art 1[1].

  21. 21.

    ibid, art 2[5].

  22. 22.

    In practical terms it is difficult to scan each and every page of a printed database. On the other hand if someone manages to bypass the TPM, it is easier to copy data from an electronic database. The type of TPM includes both access control mechanisms and copy control mechanisms. User id/Password that comes under the access control mechanism may be breached, although this is not the only kind of access control mechanism that may be used by a database producer. Other forms of access control mechanisms are encryption technologies, digital signatures etc., Aashit Shah, ‘UK’S Implementation of the Anti-Circumvention Provisions of the EU Copyright Directive: An analysis’ (2004) Duke Law and Technology Review 3.

  23. 23.

    COM (92) 24 final, s 1.

  24. 24.

    ibid, para [1.2].

  25. 25.

    ibid, art 8[1].

  26. 26.

    Infra section 7.3.

  27. 27.

    ibid.

  28. 28.

    COM (92) 24 final, art 6 and 7.

  29. 29.

    ibid.

  30. 30.

    Supra section 4.3.

  31. 31.

    ‘DG Internal market and services working paper: First Evaluation of Directive 96/9/EC on the legal protection of databases’ (Commission of the European Communities, 12 December 2005) available at <http://ec.europa.eu/internal_market/copyright/docs/databases/evaluation_report_en.pdf> (accessed 31 October 2016) (First Evaluation of Directive 96/9/EC), para [5.3].

  32. 32.

    COM (92) 24 final, s 1 and 2.

  33. 33.

    ibid.

  34. 34.

    With protection in place the European database industry could not do much in terms of number of databases, First Evaluation of Directive 96/9/EC, para [5.3].

  35. 35.

    Mark J Davison, The legal protection of databases (Cambridge University Press Cambridge 2003) 60.

  36. 36.

    Feist Publications (n 19) 345.

  37. 37.

    Similarly, there was a gap in the US immediately after the Feist decision, Supra section 4.2.

  38. 38.

    Supra section 4.3.

  39. 39.

    Feist Publications (n 19) 349.

  40. 40.

    COM (92) 24 final, para [2.3.3] and section 3.

  41. 41.

    The fact that limited protection was offered in the background of the possible negative effect, COM (92) 24 final.

  42. 42.

    Council Directive of 1996/9/EC of 27 March 1996 on the legal protection of databases [1996] OJ L 77/20 (Council Directive 96/9/EC).

  43. 43.

    ibid, art 7(4).

  44. 44.

    COM (92) 24 final, art 2[5].

  45. 45.

    Council Directive 96/9/EC, art 9[a].

  46. 46.

    COM (92) 24 final, art 8[4] and 8[5].

  47. 47.

    Council Directive 96/9/EC.

  48. 48.

    ibid.

  49. 49.

    ibid.

  50. 50.

    ibid, art 6[2] [b].

  51. 51.

    As observed in the first draft proposal not much headway has been made in the final version of the Directive regarding the meaning associated to lawful user. According to the explanatory memorandum a lawful user is a person who has acquired the right to use a database. Varied interpretation has been given to the term, since the meaning has not been decided by the ECJ. There are three possible meanings attached to the term lawful user: user relying on statutory or contractual exceptions, license, or he is the lawful acquirer. Out of these, the option of lawful acquirer is the best choice in the opinion of commentators. It has been argued that the lawful user has got similar meaning as in the case of the Software Directive in EU 2009/24/EC. According to the Software Directive, a lawful user lawfully acquires the use of a database by a contract. For example, online databases obtained through subscription at libraries or research institutions. This interpretation seems to have some support, since Article 15 states that a database producer cannot contract out the lawful user from the rights offered under Article 8. Later in the thesis, the two possible meanings attached to lawful user will be analyzed in the context of access and infringement, Estelle Derclaye, The Legal Protection of Databases: A Comparative Analysis (Edward Elgar, Northampton 2008) 122–126.

  52. 52.

    Council Directive 96/9/EC, art 16[3].

  53. 53.

    ibid, art [10(1)].

  54. 54.

    ibid, art [10(3)].

  55. 55.

    ibid, Recital [55].

  56. 56.

    ECJ’s decision in C-46/2, Fixtures Marketing Ltd v. Oy Veikkaus Ab, [2005] ECDR 2, C-444/02 Fixtures Marketing Ltd v Organismos Prognostikon Agnon Podosfairou (OPAP) [2005] ECDR 3, C-338/02, Fixtures Marketing Ltd v. Svenska Spel AB [2005] ECDR 4, Case C-203/02 The British Horseracing Board Limited v William Hill Organisation Ltd [2005] ECDR 1, Case C-545/07 Apis-Hristovich EOOD v Lakorda AD [2009] ECDR 13, Case C-304/07 Directmedia Publishing GmbH v Albert-Ludwigs-Universität Freiburg [2008] ECR I-7565.

  57. 57.

    Minimalistic solution offered to tackle the lack of uniformity in the laws protecting databases, and was meant to stop commercial copying of the contents of databases if they were not protected by copyright, Davison (n 35).

  58. 58.

    Supra section 7.1.

  59. 59.

    ibid.

  60. 60.

    ibid.

  61. 61.

    Supra section 7.2.

  62. 62.

    This is similar to the substantial changes that occurred at the Common Position in case of computer programs Directive in Europe, Council Directive 91/250EEC. There was a major deviation from the proposed text in the context of Article 6 of the said Directive, dealing with de-compilation, Bridget Czarnota and Robert J Hart, Legal Protection of Computer Programs in Europe- A guide to the EC Directive (Butterworths London 1991) 23.

  63. 63.

    There was inaction in US, supra section 4.2.

  64. 64.

    The producers in US did invest towards database, supra section 4.3.

  65. 65.

    Miriam Bitton, ‘Exploring the European Union Copyright Policy through the lens of the Database Directive’ (2008) 23(4) Berkeley Tech LJ 1411, 1426.

  66. 66.

    First Evaluation of Directive 96/9/EC, para [4.1.2].

  67. 67.

    Supra section 3.3.

  68. 68.

    Davison (n 35) 83.

  69. 69.

    William Cornish and others, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (7th edn. Sweet & Maxwell London 2010) 877.

  70. 70.

    Derclaye (n 51) 73–75.

  71. 71.

    British Horseracing Board Limited (n 56).

  72. 72.

    Council Directive 96/9/EC.

  73. 73.

    ibid.

  74. 74.

    Supra section 51.

  75. 75.

    Derclaye (n 51) 75.

  76. 76.

    Council Directive 96/9/EC.

  77. 77.

    Supra section 4.3.

  78. 78.

    First Evaluation of Directive 96/9/EC; The scholars are concerned with the delimitation of substantial investment, since the concept of substantial is vague, Mathias Leistner, ‘The legal protection of telephone directories relating to the new database maker’s right’ (2000) 31(7/8) IIC 950.

  79. 79.

    LJN: AA8588, Rechtbank’s-Gravenhage, KG 00/949 and President District Court of Rotterdam, 22 August 2000, Media forum 2000, p. 344, [2000] AMI 205, note K.J. Koelman in P. Bernt. Hugenholtz, ‘The New Database Right: Early Case Law from Europe’, Int’l Intell. Prop. L. & Pol’y 70–1, 70–14 (2002).

  80. 80.

    See the ECJ’s judgement in C-203/2 where it was held that spin-off databases may be protected if there is a separate substantial investment.

  81. 81.

    baumarkt.de, Oberlandesgericht Düsseldorf 29 June 1999, [1999] Multimedia und Recht 729 in Hugenholtz (n 79); Federal Supreme Court (Bundesgerichtshof), 21 July 2005.

  82. 82.

    ibid.

  83. 83.

    ibid.

  84. 84.

    Derclaye (n 51) 75.

  85. 85.

    ibid 79.

  86. 86.

    In all likelihood, substantial investment would possibly carry a broad meaning. In addition to financial resource, which is an obvious example of substantial investment, the question of human investment with regards to spending time, effort and energy have been considered, Recital 40 Council Directive 96/9/EC; Juliet Jenkins, ‘Database rights’ subsistence: under starter’s order’ (2006)1(7) Journal of Intellectual Property Law & Practice, 467-477.

  87. 87.

    For instance, a non-copyrightable list of a list of permanent memory addresses of mobile phones to be used in forensic investigations has been found protectable under sui generis database right in Forensic Telecommunications Services Limited v The Chief Constable of West Yorkshire Police and others [2011] EWHC 2892 (Ch).

  88. 88.

    First Evaluation of Directive 96/9/EC, s 2.

  89. 89.

    ibid, para [4.1.2].

  90. 90.

    Supra (n 81).

  91. 91.

    ibid.

  92. 92.

    Council Directive 96/9/EC.

  93. 93.

    First Evaluation of Directive 96/9/EC, para [4.1.2].

  94. 94.

    Council Directive 96/9/EC, art 7.

  95. 95.

    ibid art 9.

  96. 96.

    Derclaye (n 51); Davison (n 35).

  97. 97.

    The thin protection limitation, Feist Publications (n 19) 349.

  98. 98.

    Article 8 in comparison to the rights of a lawful user under the first draft proposal, Council Directive 96/9/EC; supra section 7.1.

  99. 99.

    Derclaye (n 51) 124 –126; Lawful user is the person who has obtained the copy of a database in a lawful way, Vinciane Vanovermeire, ‘The concept of the lawful user in the database Directive’ (2000) 31(1) IIC 63.

  100. 100.

    Christopher M. Newman, ‘A License Is Not a “Contract Not To Sue”: Disentangling Property and Contract in the Law of Copyright Licenses’ (2013) 98 Iowa L Rev II01, 1104. The first draft proposal talks about shrink-wrap agreements, which are essentially drafted unilaterally by producers. COM (92) 24 final, para [4.2.9].

  101. 101.

    ibid; arguing against the proposition that a lawful user, under Article 8 is similar to the lawful user under copyright law. Under copyright law there is no need of contract for a lawful use, Davison (n 35) 77–78; Similarly, Grosheide states that they are similar but not identical, F W Grosheide, ‘Database Protection-the European Way’ (2002) 8(1) Wash U J L & Poly 39, 67.

  102. 102.

    ibid. Derclaye (n 51) 120.

  103. 103.

    Council Directive 96/9/EC Article 8[3].

  104. 104.

    COM (92) 24 final, art 8[4] and 8[5].

  105. 105.

    There are two categories of technological protection measures used. They are access control measures and copy control measures. Access control measures include cryptography, passwords and digital signatures. Copy control mechanisms are used in case of audio and video those are in electronic format, Shah (n 22).

  106. 106.

    ibid.

  107. 107.

    Derclaye (n 51) 197.

  108. 108.

    Supra section 4.1.2.

  109. 109.

    Derclaye (n 51) 197.

  110. 110.

    Supra section 4.2.

  111. 111.

    There is a general understanding that the cost towards the production of databases would act as a barrier for those who are interested in the manufacturing of similar databases, Jerome H Reichman and Pamela Samuelson, ‘Intellectual Property Rights in data?’ (1997) 50(1) V and L Rev 51, 81.

  112. 112.

    There is protection for regular updates under the database directive as long as it is substantial either quantitatively or qualitatively, Council Directive 96/9/EC, art [10(3)].

  113. 113.

    That is the reason why investment towards renewal is protected, ibid.

  114. 114.

    Supra section 3.2.2.

  115. 115.

    There is a barrier due to the cost factor towards the production of electronic factors, Reichman and Samuelson (n 111) 8.

  116. 116.

    The first draft proposal spoke on the issue of making European databases competitive COM (92) 24 final, s1 and 2.

  117. 117.

    Reichman and Samuelson (n 111) 81.

  118. 118.

    Competitive databases rarely emerge because of the barrier of high cost of making the database, Reichman and Samuelson (n 111) 81; The OECD published report concerning computerized database market stated that in the field of Science and Technology, there were only seven major International publishers. This number was sure to come down to four to five publishers in the future, Lydia Arossa, Economic and Trade Issues in the Computerized Database Market (Information Computer Communication Policy Paper (OECD 1993); This shows that database market is essentially monopolistic in nature and the market was performing even prior to the enactment of the database right.

  119. 119.

    First Evaluation of Directive 96/9/EC, para [4.3].

  120. 120.

    Even the exceptions provided in the copyright part of the Directive under Article 5(2(b)) are broad than the sui generis part; Matthias Leistner, ‘Legal protection for the database maker-initial experience from a German point of view’ (2002) 33(4) IIC 439,458.

  121. 121.

    First Evaluation of Directive 96/9/EC, para [4.3].

  122. 122.

    Feist Publications (n 19) 349.

  123. 123.

    This could be more problematic depending on how the exceptions are incorporated by the member states; A comparison with the copyright Directive of 2001 shows that such Directive has a long list of exceptions for the member states. A compulsory exception is there for temporary non-commercial acts of reproduction with a proposal for similar exception for extraction, Annemarie Beunen, Protection for databases: The European Database Directive and its effects in Netherlands, France and United Kingdom (Wolf Legal Publishers Leiden 2007) 228.

  124. 124.

    Council Directive 96/9/EC, art [9(1)].

  125. 125.

    Derclaye (n 51) 131.

  126. 126.

    The first draft thought of protecting only electronic databases, Database Directive proposal, COM (92) 24 final.

  127. 127.

    The fear is with perpetual protection of the contents of a database on every substantial change. If we go by the threshold of substantial investment, the word substantial may be misleading, Simon Chalton, ‘The Amended Database Directive Proposal: A Commentary and Synopsis’ (1994) 3 EIPR 94, 97; Mark Schneider, ‘The European Union Database Directive’ (1998) 13 Berkeley Tech LJ 551, 551 at available at <http://scholarship.law.berkeley.edu/btlj/vol13/iss1/35> (accessed 10 November 2010).

  128. 128.

    Supra section 7.2.

  129. 129.

    Comparing Article 10[1], Council Directive 96/9/EC with COM (92)24 final), Article 9[3].

  130. 130.

    Debra B Rosler, ‘The European Union’s proposed Directive for the legal protection of databases: A new threat to the free flow of information’ (1995) 10(1) High Tech L J 105, 118; Schneider (n 127) 556; Davide Mula and Mirko Luca Lobina, ‘Legal Protection of the Web Page’ in Hideyasu Sasaki (ed) Information Technology for Intellectual Property Protection: Interdisciplinary Advancements (Information Science Reference 2012) 214.

  131. 131.

    It has been suggested that it was extended as a result of the influence of publishers. However, there is no existing proof of such incident happening in EU, W Mathew Wayman, ‘International Database Protection: A multilateral Treaty solution to the United States Database Dilemma’ (1996–97) 37(2) Santa Clara L Rev 427, 439; Schneider (n 127) 556; Derclaye (n 51) 140.

  132. 132.

    For substantial discussion on the issue of term of protection, Derclaye (n 51) 137–144.

  133. 133.

    ibid.

  134. 134.

    The period may be too long for databases with short life span-stock exchange list, fixture list or job vacancy. On the other hand, it may be too short for low sales databases, NautaDutilh Final Report: The Implementation and Application of Directive 96/9/EC on the legal protection of databases (Study commissioned by European Commission) available at <http://ec.europa.eu/internal_market/copyright/docs/databases/etd2001b53001e72_en.pdf> (2002) (accessed 10 February 2010) 494; Beunen (n 123) 36.

  135. 135.

    Derclaye (n 51) 138.

  136. 136.

    ibid.

  137. 137.

    Infra section 7.3.

  138. 138.

    Derclaye (n 51) 138; Single-sourced database may result in absolute monopoly of downstream information of products and services, P Bernt Hugenholtz, ‘Abuse of database right: Sole-source information banks under the EU Database Directive’ in F. Lévêque & H. Shelanski (eds.), Antitrust, patents and copyright: EU and US perspectives (Edward Elgar Cheltenham 2005) 203 and 217.

  139. 139.

    Infra section 7.3.

  140. 140.

    Derclaye (n 51) 137 and 144.

  141. 141.

    These aspects have been explained lucidly by Derclaye (n 51) 139-141 and 147; First evaluation of Directive 96/9/EC.

  142. 142.

    Bitton (n 65) 1426.

  143. 143.

    The extension of the term of protection to fifteen years was without consulting any economic evidence, Derclaye (n 51) 147; There are several grey areas in the sui generis database right. Mainly, the criticisms have surrounded the scope, exceptions and term of protection with its renewal clause, Mark J Davison, ‘Proposed U.S. Database legislation: a comparison with the U.K database Regulations’ (1999) 21(6) EIPR 279; Mainly with its exceptions and renewal clause with the possible monopoly situation, Derclaye (n 51) paras [138-144]; It is one of the most complex rights and least balanced right to exist, Reichman and Samuelson (n 111) 81; Strong criticisms have been made against the sui generis database right part for being vague and uncertain, since it has left many areas open for interpretation, Irini A Stamatoudi, ‘The EU Database Directive: reconceptualising copyright and retracting the future of sui generis right’ (1997) 50 Hellenic Rev of Int’l L 435; The sui generis right is difficult to understand, First Evaluation of Directive 96/9/EC; On the other hand, despite of the criticisms concerning the database right, Jens Gaster is of the opinion that big problems have not resulted because of the database right, Jens Gaster, ‘The EC sui generis right revisited after two years: a review of the practice of database protection in the 15 EU Member States’ (2000) 5(3) Communications Law 87.

  144. 144.

    First Evaluation of Directive 96/9/EC.

  145. 145.

    The challenges with a novel right, Mark Powell, ‘The European Union’s Database Directive: An International Antidote to the side effects of Feist’ (1996-97) 20(4) Fordham Int’l LJ 1215, 1217; First Evaluation of Directive 96/9/EC.

  146. 146.

    First Evaluation of Directive 96/9/EC.

  147. 147.

    Jens L Gaster, ‘New EU Directive Concerning the Legal Protection of Databases’ (1997) 20(4) Fordham Int’l L J 1129, 1142.

  148. 148.

    Removal of compulsory licence was justified based on the argument that reliance must be placed on competition law, Recital 47. Instead a provision under Article 16 of the Directive was included in order to assess any abuse of dominant position in case of single-sourced databases. There is a difference between the economic concept of a dominant position and the legal monopoly granted by intellectual property right. The economic concept of a dominant position is scrutinised under the European competition law and mere ownership of intellectual property may not amount to a dominant position, Beunen (n 123) 236; On the issue of information monopolies, the ECJ in Case C 241–242/91P Radio Telefis Eireann and Independent Television Publications Limited (Intellectual Property Owners Inc. intervening) v E.C. Commission (Magill TV Guide Limited intervening) [1995] 4 CMLR 718.

    [The Magill case] commented that refusal to grant license on an intellectual property may under exceptional circumstances amount to abuse of dominant position. The main issue in this case was sole source database, and refusal to grant license on basic information. However, there is no clear guideline that refusal of license will always amount to an abuse of a dominant position Beunen (n 123) 241; The Directive, however, explicitly states that competition law is applicable to the databases protected under it, Council Directive 96/9/EC art [13] and [47].

  149. 149.

    The fear of monopoly in the absence of compulsory provision is real and competition law, as suggested under Recital 47 of the Directive may not provide adequate remedies, Reichman and Samuelson (n 111), Catherine Colston, ‘Sui generis Database right: Ripe for Review?” (2001) available at <http://www2.warwick.ac.uk/fac/soc/law/elj/jilt/2001_3/colston> (accessed 10 December 2009); Stephen M Maurer and others Europe’s database right experiment (2001) 294 Science (26 October 2001) 769–770; There are quite a few areas in the sui generis database right where the issue of monopoly can be raised. They include the term of protection, which currently is based at 15 years. However, this again can be said in the context of sole source databases and the possibility that data can be monopolised for a period of 15 years, Derclaye (n 51) 145; D Vaver has been a critique of extending term protection without respectable empirical foundation in D Vaver, ‘The Copyright Mixture in a Mixed Legal System: Fit for Human Consumption?’, (2001) available at <http://www.ejcl.org/52/abs52-3.html> (accessed 15 March 2011).

  150. 150.

    British Horseracing Board (n 56).

  151. 151.

    These are synthetic data in the sense they do not exist in natural form. Synthetic data need certain kind of construction, for example data concerning racing information and stock market quotes, Samuel E Trosow, ‘Sui Generis database legislation’ (2005) 7(1) Yale J of L & Tech 535, 541.

  152. 152.

    British Horseracing Board (n 56) 7.

  153. 153.

    ibid.

  154. 154.

    ibid.

  155. 155.

    ibid.

  156. 156.

    ibid.

  157. 157.

    ibid.

  158. 158.

    ibid.

  159. 159.

    ibid (n 56).

  160. 160.

    The British Horseracing Board Limited, The Jockey Club and Weatherbys Group Limited v William Hill Organization Limited [2001] ECDR 20, 270.

  161. 161.

    ibid.

  162. 162.

    ibid.

  163. 163.

    ibid.

  164. 164.

    ibid.

  165. 165.

    Opinion of Advocate General Stix-Hackl, on British Horse Racing Board v. William Hill (8 June, 2004) available at <http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en> (accessed 10 November 2008).

  166. 166.

    British Horseracing Board (n 56) 10.

  167. 167.

    ibid 3.

  168. 168.

    Supra (n 160).

  169. 169.

    British Horseracing Board (n 56) 3.

  170. 170.

    ibid 3 and 10.

  171. 171.

    There have been two recent decisions in England suggesting the right type of investment towards obtaining, British Sky Broadcasting Group Plc v Digital Satellite Warranty Cover Ltd [2011] EWHC 2662 (Ch), [2012] 14 FSR 407; Flogas Britain Limited v Calor Gas Limited [2013] EWHC 3060 (Ch).

  172. 172.

    Jens Gaster, “Obtinere of Data in the Eyes of the ECJ: How to interpret the Database Directive after British Horseracing Board Ltd et al. v. William Hill Organisation Ltd” (2005) 5(6) CLR Int’l 129; Commission’s intention was to protect non-original databases in widest possible sense, First Evaluation of Directive 96/9/EC; It was suggested previously that ECJ (prior to its decision) should interpret ‘obtaining’ to include both creation and collection of data, Tanya Aplin, The EU Database Directive: Taking Stock in Fiona Macmillan (ed) New directions in Copyright Law: Vol 2 (Edward Elgar, UK 2006) 126.

    In English, Italian, French, Portuguese, and Spanish, obtaining is derived from the Latin term obtinere. It yields the same result to receive. “…if we take the umbrella term creation, in other words the supplying of the database with content, as a basis, both existing and newly created data could be covered”., Opinion of Advocate General Stix-Hackl, on British Horse Racing Board v. William Hill (8 June, 2004) available at <http://curia.europa.eu/jurisp/cgi-bin/form.pl?lang=en > (accessed 10 November 2008); It is comprehensive term, Gaster (n 172).

  173. 173.

    ibid.

  174. 174.

    It is a term, which includes generation and collecting of data; Opinion of Advocate General Stix-Hackl, on British Horse Racing Board v. William Hill (8 June, 2004).

  175. 175.

    There are existing divergences between various language versions. For example in German language the term ‘Beschaffung’ used under Article 7(1) “…can only concern existing data, as it can only apply to something, which already exists. In that light Beschaffung is the exact opposite of Erschaffung (creation)”. Similarly there are narrow interpretations if one considers Finnish and Danish version, Opinion of Advocate General Stix-Hackl, on British Horse Racing Board v. William Hill (8 June, 2004).

  176. 176.

    Council Directive 96/9/EC.

  177. 177.

    British Horseracing Board (n 56) 3.

  178. 178.

    ibid.

  179. 179.

    Case C-604/10 Football Dataco Ltd v Yahoo! UK Ltd [2012] ECDR 10, 194 (Football Dataco) para [53].

  180. 180.

    ibid; British Horseracing Board (n 56) 3.

  181. 181.

    British Horseracing Board (n 56) and Football Dataco (n 179).

  182. 182.

    Council Directive 96/9/EC, Rectial 12.

  183. 183.

    COM (92)24 final.

  184. 184.

    The decision is a sign of an attempt to balance between “the database producers’ right and access to information”. Further, the decision also restricted the scope of database right, which provides intellectual property protection to one of the controversial subject matter, Estelle Derclaye, “The Court of Justice Interprets the Database Sui Generis Right for the First Time” (2005) 30(3) E L Rev 420, 420.

  185. 185.

    British Horseracing Board (n 56) 3 and 10.

  186. 186.

    Beunen (n 123) 126; it is difficult to show separate investments in financial databases, “since data are collected and aggregated at the source (stock exchange)”, Richard Kemp and others “Database Right and the ECJ Judgment in BHB v. William Hill: Dark Horse or Non-Starter?” (2005) 21(2) CLSR 108,109; This distinction is difficult to endorse in terms of practical circumstances, Andrew McGee and Gary Scanlan, “The Database Directive--Sui Generis and Copyright--A Practicable Distinction” (2005) July Journal of Business Law 413, 422.

  187. 187.

    First Evaluation of Directive 96/9/EC; ECJ’s decision also shows that unfair competition law may not provide complete solution in case of problems with single-sourced database; “the …decisio[n] offer a partial solution to … the absence of a regime of compulsory licensing to cure the anti-competitive effects of “sole-source” information monopolies”, Mark J. Davison and P. Bernt Hugenholtz, ‘Football Fixtures, Horseraces and Spin Offs: The ECJ Domesticates the Database Right’ (2005) 27(3) EIPR 11, 115; GM Hunsucker argues that with a compulsory licensing provision in place for single-sourced databases, the European database right can become an international model, GM Hunsucker, ‘The European Database Directive: Regional stepping stone to an International model’ (1996–97) 7(2) Fordham Intell. Prop. Media & Ent. L.J. 697, 763.

  188. 188.

    The possible monopolistic effect of sui generis database right has already been under consideration, since Article 16 of the Database Directive has acknowledged such possibility; Recently ECJ in the context of BHB dispelled some fear of over protection, Anna Koo, ‘Database Right decoded’ [2010] 32(7) EIPR 313.

  189. 189.

    First Evaluation of Directive 96/9/EC.

  190. 190.

    ibid.

  191. 191.

    Oy Veikkaus (n 56), Svenska Spel (n 56), Organismos (n 56), British Horseracing Board Limited (n 56).

  192. 192.

    Jorg Hladjk, ‘The protection of databases under EU and US law – the sui generis right as an appropriate concept? Part-II’ (2004) 20(5) CLSR 377, 380.

  193. 193.

    Multiple source databases may not be that problematic, Derclaye, (n 51) 148; However, creating a database is an expensive process and already creates a barrier, Reichman and Samuelson (n 111) 83.

  194. 194.

    Owing to the difference in creating and obtaining, a producer of a single-sourced database may be tempted to deny access to data by using technical means. ECJ’s decision is a not a foolproof solution and the producers must have access under non-discriminatory and fair grounds in case of impediments because of the technical measures, Davison and Hugenholtz (n 187); In the opinion of Simon Stokes, persons producing or commissioning databases must document the investment made at the stage of creating and obtaining. There must be documentation, while updating for the purpose of renewal, Simon Stokes, Digital Copyright: Law and Practice (3rd edn. Hart Publishing 2009) 69.

  195. 195.

    Beunen (n 123) 127–128.

  196. 196.

    Supra section 7.1.

  197. 197.

    Case-604/10 Football Dataco Ltd v Yahoo! UK Ltd [2012] ECDR 7, Opinion of AG Mengozzi, para [121].

  198. 198.

    British Horseracing Board (n 56) 10.

  199. 199.

    ibid.

  200. 200.

    A single-sourced database has the potential to grant a database maker legal and economic monopoly. The user in case of a single-sourced database must abide by the rules and conditions set up by the database maker. Unlike copyright monopolies given to expression, sui generis database right, in case of single-sourced databases gives monopoly on information, Derclaye (n 51) 179.

  201. 201.

    They will be for the year 2004, 2005 and 2006.

  202. 202.

    ‘Prudent Expenditure Reductions Agreed by BHB’ (British Horseracing Authority, 9 December 2004) available at <http://www.britishhorseracing.com/press_releases/prudent-expenditure-reductions-agreed-by-bhb/> (accessed 30 November 2016).

  203. 203.

    Beunen (n 123) 127– 128.

  204. 204.

    ibid.

  205. 205.

    Although for some poets creativity has a greater value than monetary incentives, the same is unlikely for “prosaic compositions”, Ginsburg (n 9) 1908; It may be the case that database producer will produce databases if there is a market for it. There may not be any additional incentives required to fundamentally initiate production of databases. This is clear from the annual reports and production of databases in US, supra chapter 4, section 4.1; This proposition is contrary to the thought that these works (compilation of facts) may require a prompt to their production, Jane C Ginsburg, ‘No “Sweat”? Copyright and the Protection of Works of Information after Feist v Rural’ (1992) 92(2) Colum L Rev 338.

  206. 206.

    ‘BHB Annual Review - Presentation by Chief Executive Greg Nichols’ (British Horseracing, 9 June 2005) available at <http://www.britishhorseracing.com/press_releases/bhb-annual-review-presentation-by-chief-executive-greg-nichols/> (accessed 30 November 2016); The current levy structure from the bookmaker works out a rate of 10.75%, ‘Horseracing levy increased to 10.77%’ (BBC News, 16th February 2011) available at <http://www.bbc.co.uk/news/business-12486813> (accessed 14 April 2011).

  207. 207.

    ‘BHB Annual Review – Presentation by Chairman Martin Broughton’ (British Horseracing, 9 June 2005) available at <http://www.britishhorseracing.com/press_releases/bhb-annual-review-presentation-by-chairman-martin-broughton/> (accessed 30 November 2016), The funding review was set up to look for alternative means of funding in the event Court of Appeals in England upheld ECJ’s decision. In fact, the Court of Appeals following the guideline set up by ECJ did find the matter against BHB’s favour. This funding review was set up in accordance with the phasing out of the levy system in 2009. The report considered two principal options - one based on picture rights and the other on having a pre-conditioned betting license. The report concluded by saying that there is no viable alternative to statutory levy system, Martin Broughton, ‘Governance Structure for British Racing- Letter to the Racing Industry’ (British Horseracing Board, 19 May 2006) available at <http://www.britishhorseracing.com/press_releases/governance-structure-for-british-racing/> (accessed 30 November 2016); In fact, the levy system still exists in the present day.

  208. 208.

    ibid.

  209. 209.

    ibid.

  210. 210.

    “The prosperity continued with British Horse Racing in 2005….despite the uncertainty caused by unforeseen legal setbacks’, ‘Berkshire racing industry backs changes to levy’ (BBC News, 22 July 2011) available at <http://www.bbc.co.uk/news/uk-england-berkshire-14236144> accessed 1 August 2011.

  211. 211.

    Broughton (n 207).

  212. 212.

    There are visible alternatives of funding available for databases comprising of information on racing and pre-race information. The levy system exists and currently it is at the rate of 10.75%. There are discussions in the government to change such system to improve British racing industry. On an overall note, there are incentives available for further publications, Roger Blitz, ‘Move to clear horserace funding hurdle’ available at <http://www.ft.com/cms/s/0/7967e164-773e-11e0-aed6-00144feabdc0.html#axzz1Unn2vGHA> May 5, 2011 (accessed 10 June 2011); In the recent years there have been reduction in the racing prize money, but it has nothing to do with incentive. There has been a shift from betting in racing to football and to some extent such fall could be attributed to online betting, ‘Berkshire racing industry backs changes to levy’ (BBC News, 22 July 2011) available at <http://www.bbc.co.uk/news/uk-england-berkshire-14236144> (accessed 1 August 2011).

  213. 213.

    Bitton (n 65) 1426.

  214. 214.

    The issues that were considered in the First Evaluation of Directive 96/9/EC.

  215. 215.

    Supra section 4.3.

  216. 216.

    It has been argued by commentators that in fact database right is nothing but what was sweat of the brow. Critiques have been concerned about the overall balance between the requirement for the producer and the final version of the database right, Davison (n 35); Beunen (n 123); over-protection of certain areas in the database right with the fear of monopolization for single source databases, Derclaye (n 51); question of giving property rights to data, Reichman and Samuelson (n 111); about the problems concerning sole source databases, Hugenholtz (n 138).

  217. 217.

    First Evaluation Report of Directive 96/9/EC para [1.1].

  218. 218.

    ibid para [5.3].

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    Indranath Gupta

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Gupta, I. (2017). Uncertainties with Sui Generis Database Right: Negative Interpretation of Feist . In: Footprints of Feist in European Database Directive. Springer, Singapore. https://doi.org/10.1007/978-981-10-3981-2_7

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