Thursday, 4 March 2021

Sui generis database rights in the UK

I have been looking in detail at the legislation that deals with intellectual property rights in the context of Brexit, and finding it even more complicated than I had expected. So I thought I would share my new-found knowledge in this blog, starting (because it's the topic I have been looking at today) with databases.

Databases may be protected in two ways in the UK, copyright and database right (or, as it is known in the EU, sui generis protection). Both rights are .the subject of an EC directive, which was implemented in the UK by the Copyright and Rights in Databases Regulations 1997 (SI 1997 No. 3032).The whole point of the directive was to ensure that database operators received the same protection throughout the EEA, so that there was a single market in databases unhindered by differences in copyright protection (which was what started the whole thing: differences arose from the fact that some countries, in particular The Netherlands, gave copyright protection only if the work was its author's own intellectual creation, whereas the UK looked only to see whether the work was a copy of another work, so databases received little if any copyright protection in The Netherlands but much more protection in the UK, and that isn't good in a single market, which in those days was what was thought desirable).

Recognising that this would mean that databases had precious little intellectual property protection, the directive then gave them a new form of protection, and since it was one of a kind (and continental lawyers are less scared of Latin tags than we are required to be) it was called sui generis protection, which is actually pretty useless as a name if you expect it to tell you something about what the right does.

Copyright is therefore limited in its application to databases, because the directive makes clear that a database may only receive copyright protection if it is its author’s own intellectual creation: moreover, copyright only protects the selection or arrangement of material in a database, so any protection it does give is rather indirect.

Database right, on the other hand, protects the contents of the database and is much more concerned with unfair competition (unauthorised extraction and reutilisation of material from the database). On the face of the legislation, it gives 15 years' protection, but as a substantial change in the database will start that term of protection running again there is actually no reason why database right should ever expire.

Database right in the UK

A database does not have to be original for it to qualify for database right, but there must have been a substantial investment in obtaining, verifying or presenting the data. There is quite a body of case law exploring the question of when an investment in a database is directed towards one of these activities

Eligible databases received protection throughout all the EEA member states when the directive was introduced, and this of course included the UK. Following the UK’s departure from the EU, these reciprocal arrangements have ceased. Importantly, there are no international conventions in this field: the EU’s sui generis right was always a one-off, and the Directive contained all the rules and dealt exhaustively with international protection (which never extended beyond the EEA). However, the UK and EU agreed to continue the reciprocal recognition where those rights had already come into existence.

UK databases created before 1 January 2021 will continue to be protected in the EU, and vice versa, but only UK citizens, residents, and businesses are eligible for database rights in the UK for databases created on or after 1 January 2021. By the same token, UK databases will no longer receive protection in EEA countries. The changes to the legislation to achieve this are contained in the Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019 (SI 2019 No. 605).

Sui generis database rights in the EU

Under the Directive, databases made by EEA nationals, residents or businesses receive protection in all EEA member states. UK citizens, residents, and businesses are not eligible to receive or hold database rights in the EEA for databases created on or after 1 January 2021. UK database owners whose databases were created on or after 1 January 2021 might still be able to rely on copyright, which is governed by a completely difference set of rules (including international treaties and conventions): but the valuable tailor-made protection given by the Directive has been lost.

Existing sui generis database rights

Database rights that subsisted in the UK or EEA before 1 January 2021 (whether held by UK or EEA persons or businesses) will continue to subsist in the UK and EEA for the rest of their duration. These rights were guaranteed under the Withdrawal Agreement, and are preserved in the 2019 Regulations. Given the effectively perpetual nature of database right, this could be pretty handy for database publishers: so long as they keep on making substantial changes to their databases, they will get a rolling 15 year term of protection, and so long as they don't take the rather drastic step of dumping their old database and replacing it with a new one (which doesn't strike me as being how the database industry works) they shouldn't have to worry.

That said, database right doesn't only benefit the likes of Westlaw and Lexis Nexis. There are lots of databases around, not all of them provided for the benefit of subsribers (although the cases indicate that if the database has been put together for the internal purposes of its creator, it might be hard to convince a judge that the right sort of investment had taken place). Big commercial databases will carry on as if nothing has happened, on the basis that they are merely making substantial changes to an existing databases. Newcomers are going to face the problem that they don't have protection outside the UK any longer.



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