In this time of technological, media and e-commerce frenzy it seems that now, more than ever, businesses must become fully conversant with the suite of IP rights available to them. The protection of technology or the maintenance of a brand will often give businesses a highly significant edge over their competitors, and may determine the winners and losers in any particular market. With this continuing expansion in the importance of IP in mind, the courts and legislatures have been pressed to provide for the ever increasing demand for IP rights, while having to balance this against the needs of a free market and freedom of expression. We examine three recent cases in which the English courts have had to consider novel aspects of the scope of IP rights.
British Horseracing Board
v William Hill
British Horseracing Board (BHB) sued William Hill alleging that its use of BHB’s ‘runners and riders’ information on online betting sites infringed the new database right (created by Directive 96/9/EC). Infringement is established through the “extraction” or “re-utilisation” of the “whole or a substantial part” of the contents of the database. At the core of the legal argument were two points: what it was that the right protected, and how a constantly evolving database should be viewed.
William Hill asserted that the database right protects not the data but the ordering, structure and searchability of the database itself. This was referred to as the “databaseness”. It argued that the right was not infringed without taking advantage of this “databaseness”. William Hill contended that as it obtained its data from a data stream sent by BHB to an intermediary, all it was doing was using data from the database rather than its “databaseness”.
Justice Laddie however rejected these submissions, drawing a distinction between the properties of ordering, structure and searchability necessary for subsistence of the right, and the acts required to found infringement. He determined – we would suggest rightly – that all that was necessary was a misuse of sufficient data to represent a substantial part of the contents of the database.
William Hill’s second point was as follows. The BHB database was a “rolling database”, with new information being added continuously, and spent races deleted. William Hill claimed it used only small data parcels on a daily basis, each parcel not being a substantial part of the whole.
Even if this had been true, it would not have been the end of the matter as the directive expressly prohibited any repeated and systematic extraction or re-utilisation of insubstantial parts of a database.
William Hill sought to avoid this by ingeniously arguing that, as the BHB database was continually changing in content, and indeed over time was completely replaced, it was in fact a series of temporally distinct separate databases – from each of which there were but a few (insubstantial) extractions.
Laddie acknowledged this to be an attractive argument, but decided that this too was wrong. He noted that this would have made rolling databases virtually uninfringeable, and that there was nothing to suggest that the directive should be so limited. Rather he concluded that the BHB database was a single database in a state of constant refinement, and thus William Hill had infringed the right.
William Hill has appealed the judge’s decision and this will be considered this month. Bearing in mind that the definition of a database is broad enough to apply to things as diverse as magazines, anthologies and some CDs, much more than just the betting industry will await the outcome with interest.
