Thursday 28 October 2010

Database right: proving infringement

A recent decision in the Patents County CourtBeechwood House Publishing v Guardian Products [2010] EWPCC 12 concerns the database right. We haven't seen very many database right cases, so I thought it was worth a short comment.

The claimant, who I shall call by their trading name "Binley's" maintain and sell a database of the names and addresses of people associated with GP practices (such as doctors and nurses) which is then sold to companies that wish to use the addresses for direct marketing. It costs, according to Binley's, roughly £110,000 a year to keep the database up to date.

In order to detect any infringement of their database right, Binley's include in their database a number of what they call "seeds". These are bogus entries, giving the address of Binley's staff. When any post is received addressed to a seed address, Binley's can then presumably check the source against their list of clients to check that the marketing comes from someone authorised to use their database.

In about August 2007 Binley's received a letter addressed to a seed. The letter was from Guardian Products (the first defendant) who had obtained their mailing database from the second defendant (Precision Direct Marketing Ltd) who had in turn obtain it from an organisation called Bespoke Database Organisation Ltd (or BDOL for short). Quite why BDOL were not also defendants is unclear. Perhaps they had already reached a settlement with Binley's but we do not know. But it was accepted that BDOL's database contained the offending seed.

Binley's sued the defendants for infringement of their database right. Presumably on the ground that the defendants must have "extracted" — which means (in English law at least) "the permanent or temporary transfer of [the contents of the database] ... to another medium by any means or in any form" (see regulation 12 of the Copyright and Rights in Databases Regulations 1997).

One assumes that Binley's felt their case was pretty strong, so they made an application for summary judgment. A summary judgment application is not a trial, to succeed Binley's needed to persuade the judge that the defendants had "no real prospect" of defending the claim.

On this point Binley's failed. The problem was, from the judge's point of view, that all the evidence he had was:

  • Binley's database contained one or more seeds
  • One of those seeds had turned up in BDOL's database
Clearly this was evidence of some copying, but extraction from a database is only unlawful if the extraction is all or a substantial part of the contents of the database (see regulation 16). It might seem highly improbable that the offending seed was the only item copied. Indeed the judge thought that it was "highly probable" the there had been the extraction of a substantial part, that that was not enough to grant summary judgment.

Binley's had not given evidence of the proportion of seeds in their database. Its evidence was there were "a few" but Binley's had refused to give a more precise figure, possibly for commercial reasons. If they had, that might have allowed some assessment of the degree of extraction and therefore whether it was not substantial.

Summary judgment was refused.

What is interesting about this case is that it may be very difficult in practice to prove merely by examining a database's contents that it has been copied from another, especially where the data is relatively regular and commonplace such as names and addresses, without recourse to seeds or some other form of watermarking. The more seeds or watermarking, the easier the task, but at the cost of poisoning the database owner's product with irrelevant or false information.

In some cases other evidence will be available that demonstrates extraction, but here the first defendant appears to have had no direct knowledge of how its database had been created (since it originated in BDOL). In such a situation a database owner may have difficulty proving that the extraction of a substantial part has taken place.

Note that a decision of the Patents County Court sets no precedent. Its value is merely illustrative, but I feel it is interesting nonetheless.

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