Football Dataco-v-Sportradar-ECJ ruling supports owners of database right

by Shanine Felix

A recent decision handed down by the Court of Justice of the European Union (ECJ) in the case of Football Dataco-v-Sportradar(1) gives helpful clarification for owners of database rights in pursuing infringement proceedings. The ECJ held that Sportradar's unauthorised usage of Football Dataco's data amounted to "re-utilisation" under Article 7(2)(b) of the Database Directive(2). Action could be taken against Sportradar in the UK because the website was targeted at UK consumers. The decision will be welcomed by rights holders, as it clarifies the circumstances under which foreign infringers can be pursued in local courts.

Sports data

Football Dataco is the owner and operator of Football Live, a database which contains statistics relating to UK football matches such as the number of goals scored, penalties, red/yellow cards and substitutions. Sportradar operates Sport Live Data, an internet-based service which provides similar statistics to the public. Football Dataco alleged that Sportradar was infringing its database right by using its sports information without consent.

Sportradar's servers are located in Germany and Austria, but Football Dataco issued infringement proceedings against Sportradar in England under the UK enactment of the Database Directive.(3)

Key provisions of the Database Directive - the sui generis right:

Article 7(1) - a database right exists if there has been " a substantial investment in either the obtaining, verification or presentation" of the contents of the database to prevent extraction and/or re-utilisation of the whole or of a substantial part of such contents.

Article 7(2) - infringement occurs if there is either:

• "extraction" - 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; or
• "re-utilisation" - any form of making available(4) to the public all or a substantial part of the contents of a database by on-line or other transmission, distribution of copies or renting.

Transmission vs. emission

In a hearing before the Court of Appeal, Football Dataco alleged that Sportradar had copied data from Football Live and then transmitted it to members of the public in the UK, thereby committing an act of primary infringement in the UK. They argued that in accordance with "transmission" or "communication" theory(5), the extraction and re-utilisation of the data had taken place both in the Member State from which the data was sent, and also in the Member State where the recipients were based. Sportradar denied this, arguing that in accordance with "emission" theory, the act of transmission only occurred in the Member State from which the data was sent and, therefore, the UK courts had no jurisdiction.

Questions before the ECJ

In March 2011, the Court of Appeal referred the following questions to the ECJ for a preliminary ruling: Where a party, located in Member State A, uploads data from a protected database onto its web server and, in response to a request from a user in Member State B, sends the data to that user:

• Is the act of sending the data an act of "extraction" or "re-utilisation" by that party?
• Does any act of extraction and/or reutilisation by that party occur:
  • in A only;
  • in B only; or
  • in both A and B?

Re-utilisation in UK

The ECJ held that Sportradar's usage of Football Dataco's data amounted to re-utilisation under Article 7(2)(b) of the Directive. While the ECJ accepted that mere accessibility of data on a website in a certain territory will not necessarily amount to infringement(6), it ruled that re-utilisation occurs at least in Member State B when the sender intends to target members of the public in Member State B. The court did not directly address the question of whether infringement would necessarily occur in Member State A.

In this case, the fact that the data related to English football and was accessible to the UK public in English was evidence of targeting. Further, Sportradar had contracted with companies offering betting services to the UK public. Where there is evidence of targeting, the ECJ held that a court could consider that re-utilisation had occurred in the territory of the recipient and not only that of the sender(7).

Looking ahead

This judgment is positive for owners of database rights and may also support copyright owners. As the act of "making available" under Article 7(2)(b) takes place at least in the Member State which receives the infringing data, the ECJ may by inference apply the same reasoning when deciding where the act of "making available" takes place under the Copyright Directive. If so, copyright owners could also be able to choose from a greater number of jurisdictions in which to issue infringement proceedings.

Please click on the links below for the other articles in the January 2013 IP/IT newsletter

• Sweet victory for Cadbury's purple colour trade mark
• Sky's NOW TV allowed to proceed as High Court rejects infringement claims
• World focus: Scandalous trade marks - an Australian perspective
• RFU succeeds in forcing disclosure of ticket resellers
• No property in email: High Court sets the record straight

_Notes:

_{(1) Football Dataco Ltd and Others-v-Sportradar GmbH and Another C173/11.
(2) Directive 96/9/EC.
(3) The Database Directive was enacted in the UK by the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032).
(4) Art.3(2) of the Copyright Directive (2001/29/EC) requires Member States to provide for the exclusive right of creators of original works to authorise or prohibit the making available of such works to the public.
(5) "Communication theory" was adopted by the Court of Justice in L'Oréal SA-v-eBay International AG (C-324/09) [2011] E.T.M.R. 52; [2011] R.P.C. 27.
(6) See Pammer-v-Reederei Karl Schlüter GmbH & Co KG (Joined Cases C-585/08 & C-144/09) [2012] All E.R. (EC) 34 at [69], and L'Oréal [2011] at [64].
(7) See Pammer [2012] at [75], [76], [80] and [92]; L'Oréal [2011] at [65]; and criminal proceedings against Donner [2012] E.C.D.R. 18 at [27]-[29].}