Case C-604/10, Football Dataco Ltd v Yahoo! UK Ltd, Stan James (Abingdon) Ltd and others

Back in the mists of time - as long ago as an expedition to Luxembourg takes - I wrote about the early rounds of this litigation (The Trouble with Databases). The Court of Appeal decided, on the basis of the BHB case, that the fixture lists in suit were not protected by database right (or sui generis protection, as it would be known to the ancient Romans were they still with us), but asked the Sages of Kirchberg whether they might be protected by copyright. Well, I always thought that the directive had all but done away with copyright in databases, and replaced it with the Latin right, but one must always expect the unexpected. (Be aware that the sui generis right is also the subject of a reference to the Court of Justice in another Football Dataco case, C-173/11, also from the Court of Appeal.)

Of course, we cannot expect a straight answer from Luxembourg - not because the judges are unreliable in any way, but because they are there to interpret the law for us and it is definitely not for them to apply it to the facts. They say that a database will be protected by copyright if the selection or arrangement of the data which it contains amounts to an original expression of the creative freedom of the author, which of course is a matter for the national courts. The intellectual effort and skill used in creating the database are not relevant, and neither is whether the selection and arrangement includes 'the addition of important significance to the data' [sic] - what that means is anyone's guess. Finally, 'the significant labour and skill required for setting up that database cannot as such justify such a protection if they do not express any originality in the selection or arrangement of the data which that database contains.'

I'd take that as a 'no'.

No EU Rights in Fixtures Lists -- Court of Justice Judgment

The long-running claim by the English and Scottish professional football leagues, Football DataCo, and its sub-contractor PA Sport has finally come to an end, four years after it started: Football Dataco Ltd & Ors v Yahoo! UK Ltd [2012] EWCA Civ 1696 (12 November 2012). The Claimants told the Court of Appeal that, following the Court of Justice's decision, they accepted they did not have rights in the fixture lists.

The Court of Appeal declared that neither database copyright nor sui generis database rights subsists in the EU in fixtures lists. It ordered the claimants to post this message on their respective websites for a month clarifying the position:

Following the decision of the Court of Justice of the European Union dated 1 March 2012 in Case C-604/10 Football Dataco Ltd v Yahoo! UK Ltd & Others, it has been determined that neither copyright nor sui generis database rights subsist in the EU in fixture lists for the English and Scottish football leagues."

The claimants suggested at the hearing before the Court of Appeal that they might find a way to create fixture lists in a new way in future that attracted protection, but they do not seem to have any concrete ideas at present. Given that the Court of Justice found that the activity conducted by the Claimants in creating the fixtures should be disregarded when assessing whether the fixture lists merited protection, they sound very optimistic indeed.

Presumably now there will be rather a lot of claims for repayment of licence fees - especially for the period since the Court of Justice decided that there were no rights to support the claimants' licensing activities.

An Australian Feist

Copyright in compilations remains a thorny issue, and if I needed reminding of it the other week explaining it to Russian law students certainly worked. Databases that aren't compilations, and vice versa - we are into the realm of metaphysics here.

Feist, SCOTUS's last word (as far as I know) on the subject of copyright in compilations (in suit, an alphabetical telephone directory for part of rural Kansas where I imagine telephones are few and far between, people likewise), was the death-knell for the "sweat of the brow" test, one of those graphic expressions that American lawyers use to the delight of legal dictionary-writers. In Telstra Corporation Limited & Anor v Phone Directories Company Pty Ltd & Ors [2011] HCATrans 248 (2 September 2011) the High Court of Australia has taken what seems to be a similar step, and given the close connection between Australian and English law this might be more important for us than Feist was.

The case raises interesting points about the need to identify the author or authors, and about the effect of using a computer. It has always struck me that making an alphabetical list using a computer is extremely unlikely to result in any sweat on one's brow. Read the interesting review of the points on Mallesons' IP Whiteboard blawg.

Database protection in Argentina

There are criminal sanctions attached. I get worked up about the offences that have been bolted onto our IP laws, but they don't come close to this. Perhaps some businesses would like them to.

According to a newsletter from Marval O'Farrell & Mairal, a recent case was brought by a corporate event planning company against two former employees who had made off with the database and set up in competition. This database, among other things, contained the distilled wisdom and experience of the organisation on how to organise such events. The Court of First Instance indicted both defendants on charges of intellectual property fraud, pursuant to Section 71 of Intellectual Property Law No.11,723 (which covers databases by virtue of Law No. 25,036). They appealed, arguing that they were only re-using ideas not expression, but the Court of Appeals upheld the trial court. This database, far from being a mere compilation of information, was the result of careful data selection and classification, designed to support a specific working methodology, tailored to the specific needs of a particular company.

Intellectual property fraud. A concept to conjure with.