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In a dispute between the compilers of football fixtures lists in England and Scotland and a number of betting companies and Yahoo!, a UK judge last month ruled that the lists are subject to database copyright protection, meaning that third parties will have to pay to license them. Mr Justice Floyd said the process of preparing the lists involves "very significant labour and skill in satisfying the multitude of often competing requirements of those involved". But he also followed earlier European court decisions in finding that the lists cannot be protected by the EU sui generis database right, as the effort in obtaining, verifying and presenting data is trivial. The case raises questions about how to protect fixture lists and what they are worth commercially. Correspondents in five jurisdictions review the law and recent cases, and highlight unresolved questions.

Questions

Are there any sui generis rights (such as database protection) in your jurisdiction? If so, could these be used to protect information such as sports fixture lists, timetables or other collections of data? Are there any decisions on the scope of protection and/or what can be protected? Could such information be protected under copyright law and, if so, how? Has this protection been tested in any cases? If the information can be protect in any way (either copyright or sui generis rights), what measures should the owners/creator take to ensure protection? What, if anything, would risk the loss of protection? If the information can be protected, what would be the typical licensing arrangements and royalty rates for other parties who want to use or reproduce the information? Are there any questions regarding protection of information such as fixture lists that remain unresolved in your jurisdiction? if so, what are they and what are the possible resolutions?

Australia

There is no sui generis protection of databases in Australia. However, there is likely to be more attention paid to the issue following two important copyright cases.

Under Australian law, a database of information is either protected by copyright as a literary work, or not protected at all.

A "literary work" under the Copyright Act 1968 (Act) is defined to include "a table, or compilation, expressed in words, figures or symbols" (information presented in symbolic form may also be protected as an artistic work, but the distinction is not relevant here).

There have been two recent cases concerning the protection of information as literary works protected by copyright: IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14 and Telstra Corporation Limited v Phone Directories Company Pty Limited [2010] FCA 44.

IceTV was decided by the High Court; Telstra by a single judge of the Federal Court.

This case concerned information about television programme schedules. The information was contained in programme guides published by the Nine free-to-air television network. The guides identified Nine programmes and when they are scheduled to be broadcast – so-called time and title information. IceTV provided an electronic program guide to its subscribers, which included information from Nine's guide.

There were two questions: whether the information compiled by Nine was a literary work protected by copyright and, if so, whether IceTV's use of that information in its electronic programme guide infringed Nine's copyright.

The primary judge decided that Nine's schedules were copyright works, because sufficient authorial "skill and labour" went into creating them. However, she found that IceTV had used only "slithers" of the information contained in the works and that this did not constitute reproduction of a substantial part of the relevant work – and was therefore non-infringing.

The full court of the Federal Court reversed the decision on appeal and Nine appealed to the High Court.

The High Court restored the decision of the primary judge.

The High Court did not express a view on whether Nine's guides were protected by copyright (because IceTV had admitted that copyright subsisted in the works). However, the Court found that the part taken by IceTV was not "substantial" because Nine's skill and labour in compiling its guides was not directed to the matter protected by copyright, the form of expression of the work. As with many databases, the form in which they appear is dictated (at least to some extent) by the nature of the information.

The unresolved question was the extent to which the creation of Nine's work must involve a "creative spark" in order to be protected by copyright. It was this question that the Federal Court confronted in Telstra.

Telstra concerned the White Pages and Yellow Pages telephone directories owned by Telstra. The offending directory contained similar information.

On the underlying reasoning in IceTV, the Court found that the making of the White Pages and Yellow Pages did not involve the exercise of "independent intellectual effort", or "sufficient effort of a literary nature" of the kind required for the subsistence of copyright. Furthermore, Telstra failed to identify the authors of the relevant works.

Most directories of information, such as the White Pages and Yellow Pages, are compiled with the aid of computers. The Court reasoned that even if persons had been identified, they were not in a copyright sense "authors" of the necessary ingredient – the form of expression of the information.

The most important thing for copyright owners is to be able to identify the creators of the works they seek to protect. Owners must record, in detail, what each creator/author has done, and when, and what material they relied on, if any. These records must be retained and be readily accessible.

In circumstances where the work involves judgments, such as making a selection from alternatives, the records should reflect the process. Those involved should be identified by name and also by the relationship they bear to the person claiming to own the copyright; for example, whether they were employed (and if so when) or contracted (and if so, on what terms).

The licensing of information is complex. There are no universal templates. Typically, however, the arrangements take the form of copyright licensing generally, with limitations such as territory, time or purpose. Royalty rates are not necessarily related to the nature of the information the databases contain; in most cases, rates are set bearing in mind the replacement cost.

The unresolved question in IceTV and Telstra is whether the "skill and labour" required for copyright protection needs to include a "creative spark"; in effect, a higher level of originality than previously thought. If that is the case, databases will be vulnerable.

Databases invariably require the computer generation of compilations of information. This means – if the analysis in Telstra and IceTV prevails – authors of the critical ingredient of "form of expression" may be difficult to identify. However, courts may not go as far as saying that such difficulties are fatal.

So long as persons can be identified as "authors" at some stage of the process, and the work those persons made can be identified with sufficient particularity, copyright may continue to protect a database compiled from that work.

Compilations aside, the level of originality required for copyright protection has always been very low; in effect, that the work is the work of the author (not some other person). The quality of the work has not been relevant. Profound works are protected in the same way as drivel.

Telstra has been appealed to a full court of the Federal Court, and may yet come before the High Court. That may give the High Court an opportunity to consider the requirements for subsistence of copyright in the wake of IceTV.

If these cases do lead to a requirement for a "creative spark", the bigger question may be how "creative" the spark needs to be.

Peter Banki, Banki Haddock Fiora, Sydney

Germany

Database protection in Germany is governed by a bipolar regime. Following the Community-wide harmonisation through the database directive 96/9/EG of 1996, Germany has introduced a new copyright-based database work as well as neighbouring rights protection in the German Copyright Act.

The classical protection of a database work since the adoption of the database directive is accompanied by a neighbouring right, called sui generis protection of databases in sections 87a and following of the German Copyright Act. This protection is very different to the database work protection and was, at the time of its introduction, a novelty in German Copyright Law.

What is protected here is the content of the database as a result of a certain effort, and, not necessarily, the creation as such. If a substantial investment was put into the database that can be financial means, but also use of time, working power or energy, and the general requirements, such as the methodical and systematic arrangement of independent elements, are fulfilled, such sui generis protection comes into existence. The producer of such a database can control the extraction and/or re-utilisation of the whole or of a substantial part of the database.

These rights, as determined in the European database directive, were transformed into the German system, namely the rights of reproduction, dissemination and making data publicly available. As for other works, in Germany the heavily debated question of whether or not works made available online only are exhausted is, for database works, not yet finally resolved. Databases that were rented or leased are not exhausted.

The most interesting new aspect of the sui generis database protection is the term of protection, which expires 15 years after the publication of the database. Since a database in this context is considered as new if it was changed substantially with respect to its character or its scope, German practice considers every significant update of such a database as a new creation of a database resulting in a further term of protection of 15 years. The District Court of Munich decided that even the actualisation, respectively the examination whether the old data of a database were still accurate, represented such a new investment that triggered a new term of protection. This can lead to never-ending period of protection for such databases, a concept which was heavily criticised by German scholars in the past.

As in other fields of creativity, like photography or protection of performance-related expressions of music or movies, German law distinguishes between copyright protection for certain works representing as such an individual personal creation of a certain level and neighbouring rights which protect a creative performance relating to certain works. Due to their close relation to copyright works, they are also governed by the German Copyright Act, but follow different rules in several aspects.

Section 4 of the German Copyright Act governs collections and database works which are similar in certain aspects. A database work requires a collection of works, data or other independent elements being collectively a personal individual creation on the basis of the selection or the arrangement of these elements. The data must be put in order systematically or methodically, be detectable and made available by electronic means or in another way. Elements can be wording, sounds, pictures, numbers, facts or data as well as works of art, music or literature or other works. The required arrangement must have some logic with regard to content whereas the physical placement in the database is considered to be irrelevant. Pure data collections (data cluster) without any order or where the order is produced accidentally are not protected. Electronic and non-electronic databases can be subject to protection.

Copyright protection requires a creative selection and arrangement. Although copyright protection requires generally a personal individual creation of some level, it is acknowledged for most types of works in Germany that also creations of an existing, but relatively low level are protected ("kleine Münze"). Certain medical databases or even encyclopaedias have been considered protectable. Denied was a protection for telephone directories or stock data due to the lack of individual arrangement and the necessary – according to their nature – completeness (no selection) of such collections of data.

The classification as a copyright-based database work and the consequential protection of the creator (author) of the database makes it necessary to transfer related rights to the employer as far as possible and intended, since the copyright-protected work with all related rights cannot be transferred as a whole to the employer or to a customer in accordance with German Copyright Law. In particular, the creator's personality right cannot be transferred or waived in its entirety at all. Other exploitation rights must be transferred, if necessary, and do not come into existence originally with the employer or the customer ordering the work.

Rights derived from such database works are inter alia the rights of reproduction of the database, that is a complete hardcopy or complete downloading, but not necessarily single queries or the use of the database, and the right of distribution. As in other fields of copyright law, the question of exhaustion for database works is not finally resolved. Further rights are the right to adapt (such as full translations but also modifications, amendments or even actualisations of the data pool), the right to publicly communicate the work and making the work available.

The owner of both rights is the producer/manufacturer of the database, that is the individual or company who has produced the essential investment, and if it is a German citizen or a citizen of the European Community or of the European marketing area member states, or a legal entity with residence in Germany or the European marketing area. The same applies for legal entities that were founded in accordance with German Law or the law of a member state of the European Community or of the European marketing area.

Limitations on this database protection apply for the use of a legitimate user as well as for the use of the database which was introduced into the market with the consent of the creator by sale. Further limitations can be derived from general German copyright law such as a certain use for private or archive purposes and use by schools and universities. The duration of the time of protection, in accordance with General German Copyright Law, is 70 years after the death of the author (creator).

The number of cases in Germany on database protection is increasing quickly, which is an indication that after some time the effectiveness of enforcing rights derived from database protection is finally understood by the producers of databases.

Dietrich Beier, Bardehle Pagenberg, Munich

India

Presently India has no exclusive legislation dedicated to data protection, however, protection to databases is accorded under the Copyright Act 1957 and IT Act 2000. Under the scope of the Copyright Act, "literary works" include computer programs, tables and compilations including computer databases.

In Burlington Home Shopping Pvt Ltd v Rajnish Chibber, 1995 IVAD (Delhi) 732, a petition was filed seeking an interim injunction restraining the defendant from using its database consisting of compilation of the addresses of clients/customers developed over a period of time. It was held that if the defendant is permitted to make use of this database, it is likely to cause irreparable injury. An interim injunction was granted.

The IT Act 2000 penalises "cyber contraventions" section 43 (a) to (h) and cyber offences (section 65-74) vis-à-vis collections of information. The former category includes gaining unauthorised access and downloading or extracting data stored in computer systems or networks, which may entail civil prosecution. The later category covers serious offences such as tampering with computer source code, hacking with intent to cause damage and breach of confidentiality and privacy all of which attract criminal prosecution. The IT Act also prescribes penalties for hacking, which is tempering with computer source code and any breach of confidentiality and privacy obligation will attract a penalty of up to Rs100,000 ($2,195) and/or imprisonment of up to two years (section 72).

In Himalaya Drug Company v Sumit, 126 (2006) DLT 23, 2006 (32) PTC 112 Del, the court restrained an Italian company that had copied the plaintiff's online herbal database onto its website, hosted by an American ISP. Pursuant to the Delhi High court restraining order, which was brought to the notice of the concerned ISP, it removed the infringing content on its own accord and furnished the complete details of the infringer, who had rented space on the ISP's website.

In Suhas Chakma v South Asia Human Rights 2008 142 CompCas 902 CLB, the petitioner conspired with his accomplices and committed theft of the computer database and unauthorised hacking of the information and cyber systems of the SAHRDC Trust. Aggrieved with the illegal and unlawful act of the petitioner, the SAHRDC Trust filed a compliant under various provisions of the Copyright Act, Information Technology Act and IPC against the petitioner and his accomplices.

In Just Dial v Infomedia (network 18 group)(CS (OS) 1890/2008( Pending), the Delhi High Court in January granted an ex parte injunction against Infomedia 18 Limited (one of the group companies of media group TV18), restraining it from running the website askme.in until the next date of the hearing. JustDail, one of India's leading local search engines filed the case, alleging that the defendants had infringed the copyright of JustDial with respect to its extensive database, which according to the plaintiff is a literary work. Just Dail alleged that askme.in copied its database and that there were identical spelling mistakes in both the databases. The Court, in addition to granting the injunction, also appointed two officials in Delhi and Mumbai to take into custody the computer hardware and any other storage media, which had been used by askme.in to store any data, and developed by Just Dial.

In Naukri v Bixee, the Delhi High Court recently granted an interim injunction to Naukri against Bixee in what is being reported as India's first deep linking case. The court has, based on a prima facie finding that Naukri has suffered significant financial loss on account of a diversion of readers away from the advertisements on its site, have issued a temporary injunction against Bixee.

In American Express Bank Ltd v Ms Priya Puri, Delhi High Court (2006) IIILLJ 540, the plaintiff established a prima facie case in respect of the rights in the material taken away by the defendants. The defendants were told that they were free to carry on their profession, utilise the skills and information they had mentally retained and were restrained only from using the copied material of the plaintiff in which the plaintiff alone has a right.

In Tata Press Ltd v Mahanagar Telephone, Nigam Ltd & Ors 1995AIR 2438, the court held that Tata could not publish any "list of telephone subscribers" without the permission of the telegraph authority. The court restrained the publication of "Tata Press Yellow Pages" which contained entries similar to those, printed in the telephone directory published by the telephone authorities.

As regards sports fixture lists, timetables or other collections of data, these can be protected under the Copyright Act 1957 as compilations of information and hence are treated as a literary work as long as the same has original authorship.

Such information can be protected under the copyright law. In terms of databases, copyright can exist at two levels, at the level of the individual works contained in the database and at the level of the database itself as a form of work in its own right. The cases set out above have all been a result of challenges in court.

In Diljeet Titus Advocate v Mr Alfred A Adebare and Ors, 130 (2006) DLT 330, 2006 (32) PTC 609 Del, it was held that copyright exists not only in what is drafted and created but also in the list of clients and addresses especially by an advocate or a law firm. The relationship between the plaintiff and the defendants was one of contract of service and a prima facie case was established by the plaintiff. The defendants were restrained from utilising the material of the plaintiff and from disseminating it for their own benefit.

Copyright registration, although not essential under the law should be undertaken to help an IP owner enforce his rights. In the alternative, a statement stating the ownership of copyright must be made.

Civil remedies and criminal remedies are available in case any risk to the copyright exists. Civil remedies for enforcement of copyright include injunction, damages, account of profits, and delivery of infringing marks and damages for copyright owners.

Criminal penalties under the Copyright Act includes imprisonment, which may extend from a mandatory punishment of six months to maximum of three years and with a fine of not less than Rs50,000 and extending to Rs200,000. For the second and subsequent conviction the minimum term of imprisonment is increased to one year and the minimum fine is Rs100,000. All infringing copies of a label held or plates which are used for the purpose of making such copies can be ordered by the court to be delivered to the owner of the copyright.

Royalty rates are essentially a profit sharing mechanism between brand owner and licensee. To determine an appropriate royalty rate a number of factors need to be considered: benchmarked royalty rates already in existence; operating profitability of the brand; amount of turnover that can be attributed to the brand alone; brand strength and the potential revenues that the licence will generate.

There are no such pending issues regarding protection of information such as fixture lists in India. The most significant was the issue of the recent Indian Premier League (IPL), which have been resolved.

Abhai Pandey, Clairvolex Knowledge Processes, New Delhi

United Kingdom

The United Kingdom adopted Council Directive 96/9 on the Legal Protection of Databases, which provided for a sui generis right. Under Article 7, this right arises in databases that show that there has been qualitatively or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or reutilisation of the whole or a substantial part of the contents of that database. The sui generis right was introduced into domestic law by the Copyright and Rights in Databases Regulations 1997 SI 1997/3032. This right applies irrespective of the eligibility of the database in question or its contents for copyright protection.

The scope of protection under the sui generis right is limited. The European Court of Justice (ECJ) considered its application in three references for actions commenced by Fixtures Marketing Limited in Finland, Sweden and Greece, seeking to enforce rights in the football fixtures lists. In Case C-46/02 Fixtures Marketing Limited v Oy Veikus AB, Case C-338/02 Fixtures Marketing Limited v Svenska Spel AB, and Case C-444/02 Fixtures Marketing Limited v Organismos Prognostikon Agonon Podos Fairou, the ECJ uniformly rejected the claim to subsistence of the Article 7 right. The ECJ held that the investment in the fixture lists was not of the sort recognised under Article 7, as it was not in the obtaining, verification or presentation of the contents, but in the creating of the contents in the first place.

The ECJ further confirmed its position in Case C-203/02 British Horseracing Board Limited v William Hill Organisation Limited, and held that the sui generis right did not subsist in the claimant's horseracing fixture database. According to the ECJ, the investment in the obtaining and verification of the contents of a database referred to the resources used to seek out existing independent materials and collect them in the database, and also monitor the accuracy of the materials once collected. It did not cover the resources used for the creation of materials that make up the contents of a database, or the verification of those materials at creation. In short, the "obtaining" and "verifying" requirements only applied to materials already in existence, and did not include the creation of data. Accordingly, the ECJ appears to recognise the sui generis right for those databases where significant effort has gone into the compilation of the data, and not the creation of the data itself.

This approach has recently been followed in Football Dataco Limited and others v Brittens Pools Limited and others [2010] EWHC 841 (Ch), where the High Court held that the fixture lists for the English and Scottish football premier leagues and football leagues were not protected by the sui generis right. This was due to the fact that the investment on the part of the claimant was primarily in creating the data, and not into the obtaining, verifying or presenting the data in the fixture lists, which was considered to be trivial.

The High Court in Football Dataco held that the fixture lists were protected by database copyright, but not the sui generis right or copyright itself. Article 3 of the Directive provides that databases which, by reason of the selection or arrangement of their contents, constitute the author's own intellectual creation, shall be protected as such by copyright. This right was incorporated into English law by way of amendments to the Copyright, Designs and Patents Act 1988.

The judge in Football Dataco considered the process of preparing the fixture lists, and concluded that it involved very significant labour and skill in satisfying the multitude of often competing requirements of those involved, and that the work was not mere "sweat of the brow". Further, the judge was of the opinion that the selection or arrangement necessary for database copyright was not confined to selection or arrangement performed after the data is finally created, but could commence before all the data is created.

The judge analysed how the fixture lists were created, in order to assess the degree of skill and labour that went into the selection and arrangement of the contents. He was of the opinion that the process was quantitatively sufficient, and concluded that the fixture lists were the subject of database copyright. He dismissed the claim of copyright by stating that the lists could only attract copyright by virtue of the collection and arrangement of the data contained in them, and therefore there could not be any scope for the subsistence of copyright by any other route.

The standard for copyright protection for the contents of a database is quite high, as it would have to satisfy the requirement of originality. An author will need to make detailed notes explaining the creation process, which will need to establish the requisite degree of skill and labour. With regard to database copyright, detailed notes will need to show sufficient originality in that the selection or arrangement of the contents of the database constitutes the author's own intellectual creation in order to qualify. The sui generis right is designed to protect the investment made into the compilation of the database itself, and not the creation of the data. Protection could be lost by failing to establish that the creation of the data was sufficient to attract either copyright or database copyright, or that the creation of the database lacked sufficient investment to qualify under the sui generis right.

In view of the fact that in recent years rights in fixture lists have not been recognised, there is no current precedent for parties to utilise. However, a likely scenario would be a non-exclusive arrangement with a royalty of 5% of net sales being a standard licensing arrangement. The parties may well negotiate a higher rate in view of the scope for higher profits.

Following the Football Dataco decision, it is unclear where the threshold for originality stands with respect to what qualifies for database copyright. It is anticipated that the decision will be appealed, with a possible reference to the ECJ for clarification.

Colin Sawdy, Edwards Angell Palmer & Dodge, London

US

In the US, sui generis rights exist in only a few limited areas, including the protection of semiconductor chips and boat hulls. No law exists that explicitly provides protection to databases and collections of data. Although legislators have introduced bills in the United States Congress to protect databases, Congress has never enacted any of these bills into law. Without sui generis rights, collections of data only receive protection under copyright law. Among other requirements, to be protected under copyright law, the work has to be original, meaning that the work is independently created and not copied from other works. The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the pre-existing material employed in the work, and does not imply any exclusive right in the pre-existing material. Thus, there is no copyright protection in the underlying facts or data in a compilation. In addition, the United States Copyright Office has issued regulations prohibiting the use of copyright to protect "information that is common property containing no original authorship", such as "schedules of sporting events[] and lists or tables taken from public documents or other common sources".

The US Supreme Court has also rejected protection for collections of data that lacked originality, explaining that "[f]acts, whether alone or as part of a compilation, are not original and therefore may not be copyrighted. A factual compilation is eligible for copyright if it features an original selection or arrangement of facts, but the copyright is limited to the particular selection or arrangement. In no event may copyright extend to the facts themselves (Feist Pubs, Inc v Rural Telephone Serv Co, 1991). The plaintiff had claimed that the defendant had violated copyright law by copying the names, towns and telephone numbers in a published telephone directory. The Court denied copyright protection to this collection of facts because "there is nothing remotely creative about arranging names alphabetically". The Supreme Court also specifically rejected protection based on "sweat of the brow" to compile sets of facts without any originality in the compilation. The Court stated that "originality, not 'sweat of the brow', is the touchstone of copyright protection in directories and other fact-based works" and while it may not be a high standard, "the selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever".

Since this Supreme Court decision, lower courts have therefore analysed collections of facts and data for at least minimal originality in the selection and compilation. Based on this standard, courts have found, for example, that projected automobile valuations satisfied the test for originality because "they represented predictions by the Red Book editors [and] were based not only on a multitude of data sources, but also on professional judgment and expertise" (CCC Info Servs v MacLean Hunter Market Reports, Inc [2d Cir 1994]) and a taxonomy of dental procedures, including "the short description and the number", was subject to copyright because "[c]lassification is a creative endeavor" (American Dental Assoc v Delta Dental Plans Assoc, [7th Cir 1997]). Conversely, other courts have refused to grant copyright protection (1) to the selection and arrangement of information concerning court opinions, such as data regarding the identity of the parties, the court, the date of decision, the identity of counsel, subsequent procedural developments, and opinion citations (Matthew Bender & Co v West Publishing Co [2d Cir 1998]); (2) to a table concerning high school sports because "there is nothing original about simply selecting all of the generally available sports" (Schoolhouse, Inc v Anderson [8th Cir 2002]); and (3) to a taxonomy because "[t]he mere fact that numbers are attached to, or are a by-product of categories and descriptions that are copyrightable does not render the numbers themselves copyrightable", and that "the design, ordering, and sorting of transmission parts" was "practically inevitable" (ATC Distribution Group, Inc v Whatever It Takes Transmissions & Parts, Inc [6th Cir 2005]).

Some database owners have attempted to protect their uncopyrightable compilations via contractual licensing terms. At least one court has held that that copyright law does not preempt the enforcement of a shrinkwrap license that prohibited the copying of an uncopyrightable database of telephone directories (ProCD, Inc v Zeidenberg [7th Cir 1996]). However, one of the leading scholars on copyright law has roundly criticised this decision in his book, Nimmer on Copyright, as leading to a "parade of horribles" if parties could use contract law to circumvent the limitations of copyright law.

Since the US does not offer sui generis protection to databases and the information could only be protected if it qualified for copyright protection, the typical licensing arrangement and royalty rates would be based on what is customary in that area. It is simply not possible to make generalisations about reasonable royalty rate because what would be considered reasonable for one type of information could be considered unreasonable for another type of information.

Because copyright law in the US is generally decided on a case-by-case basis within the courts rather than through strict statutory authority, each case must be analysed on its own facts. Although the compilation of information within a database requires only a bare minimum of originality to be eligible for copyright protection, courts considering similar facts have reached opposite conclusions about the copyrightability of databases. For example, although a number of courts have upheld contracts prohibiting the copying of databases, other courts have questioned this position. In short, this area of the law in the US is still in a state of flux.

Peter Toren is an attorney in New York