Crown Copyright ©
Lord Justice Jacob:
1. This appeal and cross-appeal is from a judgment of Floyd J of 17th
November 2010, [2010] EWHC 2911 (Ch). Floyd J:
i) Rejected the defendants' application for an order declaring that the
court had no jurisdiction to entertain the claim against them;
ii) In part allowed and in part refused amendments to the claim.
2. The parties each appeal the findings adverse to them. Having heard
all he argument on point (i) and the claimants' argument on point (ii) we
decided to inform the parties of our decision. It was in part to allow and
in part to refuse the defendants' jurisdiction appeal. As to the claimants'
appeal we decided that the main point should be referred to the Court of
Justice of the European Union. These are my reasons for these decisions.
3. The claimants between them say they own (a) UK copyright and (b)
UK database rights in a database called Football Live. Football Live is a
compilation of data about football matches in progress. It includes things
like goals and when they were scored, the goalscorers, yellow and red
cards and who and when they got them, penalties and when they were
awarded, and substitutions (who was substituted, when and by whom).
The data is said to be collected mainly by ex-professional footballers
engaged by the claimants on a freelance basis who attend the relevant
matches for this purpose. It is claimed that not only is there substantial
investment in the obtaining and/or verification of the data but that the
compilation of Football Live involves "considerable skill, effort, discretion
and/or intellectual input by experienced personnel to generate, select
and/or arrange its contents."
4. There are two defendants, GmbH (German) and AG (Swiss). AG is the
holding company of the Sportradar group of companies and is the parent
company of GmbH. GmbH provides live scores, results and other statistics
relating to football and other sports, including UK football matches to the
public via the internet, although it appears that the betting companies
actually contract with AG. The service is called "Sport Live Data." The
defendants have a website, betradar.com.
5. In particular the defendants have customers called bet365 (a UK
company) and Stan James (a Gibralterian company) who provide betting
services for and aimed at the UK market. If one goes to the website
of either of these companies a link is provided to betrader.com. If you
click on the "Live Score" option the data appears under a banner across
the screen saying bet365 or Stan James as the case may be. Clearly
therefore members of the public in the UK form an important target for
the defendants.
6. The claimants say that GmbH and its parent, AG act in concert with
each other. They point to the fact that AG is not a mere passive holding
company, for it claims copyright in the context of the betradar.com
website (and so by necessary implication licences GmbH to use the
data on betradar.com), that betradar.com says that "Our Live Scores
department is mainly operated from our office in Gera, Germany" and
says that office is part of the First Defendant. The claimants intend to
supplement this allegation by showing that the actual contracts with
bet365 and Stan James are with AG rather than GmbH.
7. The claimants say that the defendants are getting their data not by the
exercise of independent compilation but by taking it from Football Live.
They say this can be proved by "telltales" - from time to time an error
(or something like it) on Football Live has appeared on Sport Live Data
and that this could only have happened by copying. The defendants deny
copying: they say they generate the data on betradar.com independently
without reference to Football Live. They say the "telltales" are explicable
– as for instance coming from a common source such as an incorrect
goal attribution by way of an announcement at the ground. Who is right
will be an issue at any trial, whether that trial takes place in the courts
of England and Wales or Germany. Copying will be a central issue. For
obvious reasons it would be undesirable for it to be tried both here and in
Germany.
8. On 23rd April 2010 the claimants commenced the present proceedings.
By way of retaliation and in an admittedly forum shopping exercise,
on 14th July 2010 GmbH alone commenced proceedings against the
claimants in the Landgericht, Gera claiming negative declarations that its
activities did not infringe any intellectual property rights of the claimants.
The defendants contend that the April proceedings do not disclose a "good
arguable case" against them and so the Landgericht is the court first
seized with the dispute. Moreover they say, the proposed amendments
to the claim would add a fresh "cause of action" (within the meaning of
Art. 27 of the Brussels Regulation EC 44/2001) and thus would not be
allowable (or at least would have to be stayed) pursuant to the provisions
of that Article.
9. Before examining what the April proceedings did allege I should briefly
set out the legal basis of the claimed rights. These are provided for by the
Database Directive (96/9/EC).
10. Art. 3 provides for copyright. It says:
Object of protection
1. In accordance with this Directive, 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. No other
criteria shall be applied to determine their eligibility for that protection.
2. The copyright protection of databases provided for by this Directive
shall not extend to their contents and shall be without prejudice to any
rights subsisting in those contents themselves.
11. Chapter III provides for what the Directive inelegantly and rather
unapproachably calls a "Sui Generis Right." Informally people generally
call it the "database right" and I shall use that word for it. Art 7 sets out
what it is:
Object of protection
1. Member States shall provide for a right for the maker of a database
which shows that there has been qualitatively and/or quantitatively a
substantial investment in either the obtaining, verification or presentation
of the contents to prevent extraction and/or re-utilization of the whole or
of a substantial part, evaluated qualitatively and/or quantitatively, of the
contents of that database.
12. The UK has implemented the Directive, amending the Copyright
Designs and Patents Act 1988 by the Copyright and Rights in Database
Regulations 1997 (SI 1997/3032). Both sides were agreed that nothing
turns on the Act as amended: that it means exactly whatever is meant
by the Directive, no more and no less. As is so depressingly common the
draftsman has gone to a lot of trouble to re-phrase and re-write what he
could and should have simply copied from the Directive. I do not bother
with the re-write.
13. It is to be observed that the Directive does not create a Community
wide right. Both copyright and database rights created by implementation
of the Directive are national rights even though each right has the same
scope in each Member State. Thus, for instance, in this case there is
a UK database right and a corresponding German database right. We
are concerned only with claims based on alleged infringement of the UK
copyright and the UK database right.
14. I turn first to the copyright claim. The criteria for subsistence
of copyright in a database are that "by reason of the selection or
arrangement of their contents, it constitutes the author's own intellectual
creation". The defendants contend that the data collected by the
claimants' agents is not of that sort – it involves no intellectual creation.
Therefore, they submit, there is no copyright right at all. Alternatively,
they submit, the data alleged to have been copied (namely goals,
goalscorers, own goals, penalties, yellow and red cards and substitutions)
are matters of pure fact. Such data is merely the contents of the alleged
copyright and is precluded from protection by way of copyright by virtue
of Art. 3.2.
15. I accept the latter submission. The Judge was obviously sympathetic
to it (and to the attack on copyright subsistence as a whole) for he said:
[49] Paragraph 22 of the particulars of claim alleges that the compilation
of Football Live involves "considerable skill, effort and/or intellectual
input by experienced personnel to generate, select and/or arrange
its contents". There is also an allegation that a substantial part has
been used: see paragraph 37. In the light of the law as stated above,
those combined allegations must include the allegation that what is
taken is a substantial part of the intellectual input of the authors. Those
allegations are supported by a statement of truth from each claimant. Mr
Cuddigan's argument that the part alleged to have been reproduced by
his clients does not amount to an intellectual creation is not supported
by any evidence. Whilst the court might have a view based on its own
impressions, I do not think that it would be right to place those ahead of
what is properly in evidence. In those circumstances, whilst there may
ultimately prove to be force in the argument, I think the claimants have a
good arguable case on this issue.
16. Unlike the Judge I think the point can be dealt with now. The
statement of truth really adds nothing. It may be that some of the
information collected for the claimants includes matter which involves
intellectual creation. So there may be copyright in Football Live. But what
is alleged to have been copied is mere data on any reasonable view. Its
recording may sometimes involve some skill (who scored in a goalmouth
scramble) but it is not creative skill.
17. Nor, speaking more technically, do I think it matters that there is no
evidence saying that the matter taken does not amount to intellectual
creation. For I cannot imagine any credible evidence to the effect that it
does. And actually, although the particulars of claim are supported by a
statement of truth (so are a sort of evidence) there is no assertion that
what was taken amounted to the taking of work involving intellectual
creation.
18. It follows that when the proceedings started the court was not seized
of a claim in copyright to the necessary standard. From that it follows
that the argument we heard about "authorising" an act restricted by
copyright (which by s.16(2) of the Act constitutes an infringement)
becomes irrelevant. I say no more about it other than I saw considerable
force in it.
19. I turn to the database claim. The defendants do not contend that the
claimants do not have database rights. Their point is that the claim as
formulated in April does not properly identify any cause of action which
is justiciable in the English Courts. They accept that their activities are
carried out abroad, in Germany, Austria (where their server is located)
and Holland (where their back-up server is) but, they say, none of that
has anything to do with infringement of UK database rights in Football
Live.
20. The claimants say not so, that their complaint in April contains
sufficient allegations to amount to a claim that the defendants are joint-
tortfeasors with people here. It is accepted that if there are sufficient such
allegations then the court has got jurisdiction and to that extent at least
the English Courts are first seised of the dispute.
21. So it all depends on what the claim was in April. To that I now turn.
One must concentrate on what facts are actually alleged.
22. Subsistence and ownership of database rights in Football Live are
alleged in the early part of the pleading. It then comes to the defendants.
Paragraphs 32 and 33 identify the two defendants and states that AG is
the parent of GmbH.
23. Paragraph 34 reads:
[34] The Defendants are engaged, inter alia, in the business of providing
live scores, results, and statistics relating to football, to customers,
including customers in the United Kingdom. Their customers include:
(i) Bet365 Group Limited, trading as Bet365, a UK company. Bet365
provides online betting services, inter alia, to customers located in the UK,
through a website at bet365.com ("the Bet365 Website"); and
(ii) Stan James Plc, a company registered in Gibraltar, which provides
online betting services, inter alia, to customers located in the UK, through
a website at stanjames.com ("the Stan James Website")."
24. Paragraph 37 reads so far is material:
[37] From a date presently unknown to the Claimants but prior to the
issue of the Claim Form in these proceedings, the Defendants have used
the whole or a substantial part of Football Live, without the consent of
the Claimants or any of them. Pending disclosure and/or evidence, the
Claimants rely on the following facts and matters:
(i) The reproduction of data from Football Live on pop-up windows hosted
on the Defendants' Website which are linked to from the Bet365 Website
and the Stan James Website, during the 2008/2009 and 2009/2010
seasons. These pop-up windows appear when the "Live Score" option on
the Bet365 Website and the Stan James Website is clicked on. [Screen
prints of the windows from the two websites are then attached and
referred to]. These screen prints show examples of the data displayed (at
the end of each game) in relation to all of the games played in each of
the Leagues, on the relevant dates. The data which is displayed for each
game is left on the Defendants' Website until the end of the day on which
the game is played.
(ii) By way of further illustration, attached as Annex 4 is a table showing
the extent of types of live data displayed…
(iii) By reason of the matter is aforesaid, it is to be inferred that the
defendants reproduce and/or authorise the reproduction of the following
events for every game in every League…(a) goals; (b) goalscorers (shown
by the player's name, and a football icon); (c) own goals (shown by
the player's name followed by "(og)" and a football icon); (d) penalties
(shown by the player's name followed by "(pen)"; (e) yellow cards (shown
by the player's name, and a yellow card icon); (f) red cards (shown by
the player's name and a red card icon); and (g) substitution (shown by
the names of the players coming on and off, and an icon comprising two
circular arrows). …
25. One of the screen prints attached to and forming part of the pleading
show what a UK punter sees when he or she clicks on the bet365 website
"live scores". It is a screen showing live data for a particular match.
Although it is provided by betradar it carries a big banner saying bet365.
It is clearly the result of co-operation between the defendants and
bet365.
26. Now if the claimants are right about copying, it is obviously clearly
arguable that the two defendants and bet365 are acting in concert to
enable UK punters to access the data copied by the defendants. There
may be an infringement (issues of sustainability and "little and often"
remain live) of the database right (albeit innocent) by the actual punter
who gets copies of the data loaded onto his computer and displayed
on his screen. bet365 and the defendants jointly cause that – in the
language of the pleading "authorise the reproduction." I would add that
given the allegation that bet365 is a customer of the defendants, it is also
reasonable to infer that the defendants permit their customer to access
the data – which they may well wish to do to help them set odds.
27. English procedural law says that if you allege in your pleading facts
which, if proved, would establish a cause of action, that is sufficient to
support claim for that cause of action, see e.g. Letang v Cooper [1965]
1 Q.B. 232 and re Vandervell's Trusts (No.2) [1974] Ch 269 at 321. You
do not have to spell out precisely the legal basis of the cause of action.
"Pleadings" in England have a technical meaning. They are the documents
which contain the assertions of fact which the party intends in due course
to prove by evidence. They do not need to include arguments of law and
seldom do. I have no doubt that sufficient facts are alleged here to cover
a claim of joint tortfeasorship both with bet365 and with ultimate UK
punters.
28. But, says Mr Henry Carr QC for the defendants, English procedural law
standards as to what is enough to plead a cause of action are irrelevant.
"Cause of action" has an autonomous meaning in Art. 27 of the Brussels
Regulation. This provides:
1. Where proceedings involving the same cause of action and between
the same parties are brought in the courts of different Member States,
any court other than the court first seised shall of its own motion stay its
proceedings until such time as the jurisdiction of the court first seised is
established.
2. Where the jurisdiction of the court first seised is established, any court
other than the court first seised shall decline jurisdiction in favour of that
court.
29. Mr Carr submitted that the autonomous meaning comprises not only
the facts, but also the rule of law relied on and the object, ie the relief. He
said all three things must be set out before one can say a court is seised
of a cause of action.
30. He drew attention to Metall & Rohstoff v Donaldson [1990] 1QB
391. That was not a case under the Regulation (or its predecessor, the
Brussels Convention). It was under the former Order 11(1) of the Rules
of the Supreme Court. The Court held that the Rule required more than
a pleading of the facts to justify service out of the jurisdiction. This was
because both the court and the defendant needed to know the nature
of the claim, the court so as to be sure that it was proper to assert
jurisdiction over a foreign defendant and the defendant so that he could
know the nature of the claim in case he wished to challenge jurisdiction.
Mr Carr said the same reasons apply under the Regulation. Unless the
legal nature of the claim was spelt out in the proceedings before the Court
said to be first seised, a second court could not know whether it was or
not.
31. Mr James Mellor QC for the claimants accepted that "cause of action"
has an autonomous meaning. But, he submitted, that does not help the
defendants because the autonomous meaning of "cause of action" in Art.
27 covers the present case, being wider than that the English procedural
rule. He took us to ECJ cases which indeed establish that. They were
Gubisch Maschinenfabrik v Giulio Palumbo Case 144/86 and The Tatry
Case C-406/92.
32. These cases show that for Art. 27 to apply you indeed need three
identities: the same parties, the same cause (la même cause) and the
same object (objet). But the cases also show that these do not have
narrow meanings for which Mr Carr contended. On the contrary the
meanings are wide.
33. The purpose of the Brussels Convention (now the Regulation) is:
To prevent parallel proceedings before the courts of different contracting
states and to avoid conflicts between decisions which might result
therefrom. Those rules are therefore designs to preclude in so far as is
possible and from the outset, the possibility of a situation arising such
as that referred to in Art.27(3), that is to say the non-recognition of a
judgment on account of its irreconcilability with the judgment given in a
dispute in which recognition is sought (Gubisch [8])
34. The wide meaning of cause and objet is illustrated by the very facts of
those cases. In Gubisch an action to enforce a contract and an action to
have it declared inoperative or rescinded or dissolved had the same cause
and objet. The Court said:
[16] In particular, in a case such as this, involving the international sale
of tangible moveable property, it is apparent that the action to enforce
the contract is aimed at giving effect to it, and that the action for its
rescission or discharge is aimed precisely at depriving it of any effect. The
question whether the contract is binding therefore lies at the heart of the
two actions. If it is the action for rescission or discharge of the contract
that I brought subsequently, it may even be regarded as simply a defence
against the first action, brought in the form of independent proceedings
before a court in another contracting state.
[17] In those procedural circumstances it must be held at that the
two actions have the same subject-matter, for that concept cannot be
restricted so as to mean two claims which are entirely identical.
[18] If, in circumstances such as those of this case, the questions at
issue concerning a single international sales contract were not decided
solely by the court before which the action to enforce the contract is
pending and which was seised first, there would be a danger for the
party seeking enforcement that under Article 27(3) a judgment given
in his favour might not be recognized, even though any defence put
forward by the defendant alleging that the contract was not binding had
not been accepted. There can be no doubt that a judgment given in a
contracting state requiring performance of the contract would not be
recognized in the state in which recognition was sought if a court in that
state had given a judgment rescinding or discharging the contract. Such
a result, restricting the effects of each judgment to the territory of the
state concerned, would run counter to the objectives of the convention,
which is intended to strengthen legal protection throughout the territory
of the community and to facilitate recognition in each contracting state of
judgments given in any other contracting state.
35. In The Tatry shipowners had claimed a declaration in the courts of
the Netherlands that they were not liable for damage to a cargo they had
carried. In England they were sued for damages for damage to the cargo.
It did not matter that separate contracts were involved or that the one
action was in personam and the other in rem. The Court said:
[38] For the purposes of Art. 21 of the Convention the "cause of action"
comprises the facts and the rule of law relied on as the basis of the
action.
[39] Consequently, an action for a declaration of non-liability, such as that
brought in the main proceedings in this case, and another action, such as
that brought subsequently by the cargo owners on the basis of shipping
contracts which are separate but in identical terms, concerning the same
cargo and transported in bulk and damages in the same circumstances
[40] The "object of the action" for the purposes of Art. 21 means the end
the action has in view.
36. There is no trace of the kind of reasoning in Metall & Rohstoff in any
of these cases. The emphasis is on avoiding conflicting decisions.
37. I turn to consider how these principles apply here. There is clearly
identity of parties. As to cause, the pleadings make it plain that the
claimants are suing the defendants in respect of breaches of database
right. It is true that the detail about joint tortfeasorship is not spelt out
particularly well, but I do not see that as affecting the cause. The "heart"
of the claim (to use the Court's word in Gubisch)is database infringement.
The English court was first seized of that cause. Likewise the objet – the
end in view – is clear. It is to claim damages from the defendants and an
injunction to restrain "the acts complained of."
38. Accordingly I would dismiss the defendants' appeal concerning
jurisdiction over the database infringement claims.
39. That makes it unnecessary to say much about the claimants' point
based on Art.5 (3) of the Convention. They say they can sue here because
this is where the harmful events complained of occur. Given that joint-
tortfeasorship is adequately pleaded (as I have held), then jurisdiction on
this basis follows too.
40. I turn therefore to the claimants' appeal. This turns on the meaning of
the definition of infringement in the Database Directive. The right is:
to prevent extraction and/or re-utilization of the whole or of a substantial
part, evaluated qualitatively and/or quantitatively, of the contents of that
database.
41. Both extraction and re-utilization are defined terms (by Art. 7.2):
2. For the purposes of this Chapter:
(a) 'extraction` shall mean the 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;
(b) 're-utilization` shall mean any form of making available to the public
all or a substantial part of the contents of a database by the distribution
of copies, by renting, by on-line or other forms of transmission. The first
sale of a copy of a database within the Community by the rightholder
or with his consent shall exhaust the right to control resale of that copy
within the Community;
42. In the case of the UK database right, the claimants say that this
means making available to the UK public. That they say the defendants
do by copying (re-utilizing) Football Live on their Austrian server and
transmitting the copied data to those members of the UK public who
click on "live scores". "Transmission," they say, in the case of provision
of data over the internet or indeed otherwise by wire involves both the
acts of hosting the website (Austria and Holland in this case) but also the
act of the user in accessing it. It is not transmitted unless and until it is
received. Before there can in reality be a transmission there must be a
transmittor and a transmittee. This I will call the "transmission theory" or
the "communication theory".
43. The defendants say not so, that acts of "transmission" occur only in
the place from which the data emanates. This was called the "emission
theory." The Judge thought that the "better view" was that the defendants
were right about that though it was not acte clair.
44. Before us the parties deployed considerable arguments in support of
their respective positions. Mr Mellor contended that the argument was so
strong in the claimants' favour to be acte clair. After we had heard him we
were not satisfied of this. Mr Carr did not dispute that position or that the
point was important and could be decisive. He did not, therefore, oppose
a reference to the CJEU.
45. We decided it was not appropriate for us to form our own view about
this very important and difficult question. So all I do here is to briefly
summarise the respective arguments.
The Claimants' Arguments
(1) Broadcasts are governed by the emission theory. So, for instance,
you can only complain about the activities of a radio or TV broadcaster
in the place from which he broadcasts. Mr Mellor described the notion
that a broadcast only operates in the place of emission as a legal fiction.
He submitted the fiction was one created by the legislation applicable to
broadcasts. They are in effect express deeming rules. No such deeming
rules apply to "transmission." It takes two to tango.
(2) The other forms of re-utilization mentioned as examples of
transmission, particularly "distribution of copies" and "renting" supported
the claimants. For unless and until copies are received by members of the
UK public they will not have been distributed to them. Likewise when a
member of the UK public "rents" (which must mean take a licence for)
copies he does so in the UK. Thus "transmission" includes arrival as well
as departure.
(3) The Directive also provides for a copyright right, by Art.3. The
restricted acts for that right include (Art.5(d)) "any communication display
or performance to the public." In context "communication" therefore must
involve reception by the public. It would be absurd for the position to be
any different for the sui generis database right.
(4) Recitals (7), (8), (38-44) are supportive. Thus, for instance Recital
(7) sets out the fact that the making of a database requires considerable
investment. Recital (8) says that unauthorized extraction or re-utilization
can have serious consequences. There will be just such consequences
to the UK database right if it can undermined with impunity by using a
server abroad. Here it should particularly be remembered that the server
might be anywhere in the world. It is by no means necessarily in the EU:
enforcement only at the place of emission might be impractical.
(5) Recital (44) is particularly important. It provides:
(44) Whereas, when on-screen display of the contents of a database
necessitates the permanent or temporary transfer of all or a substantial
part of such contents to another medium, that act should be subject to
authorization by the rightholder;
This recognises that the user uploads the content in his computer
and says the database right should extend to cover that. Art. 7(2)(a)
implements that.
(6) Cases C-203/02 BHB v William Hill, C-304/07 Directmedia v Albert-
Ludwigs-Universität and Case C-545/07 Apis-Hristovich v Lakordia all
show that the concept of extraction is wide and not confined to direct
extraction. The defendants should be regarded as "extracting" not
only in Austria and Germany but also in the UK. [Mr Mellor needed our
permission to argue this point. It is a pure point of law. Mr Carr objected
on the basis that he had not had time to research it – a point of no
significance now since he will have plenty of time. No injustice is created
by allowing the point to be taken].
(7) The whole history of the way copyright protection for broadcasts
developed following the 1948 revision of the Berne Convention which
provided for such protection for the first time shows that the emission
theory applied only to broadcasts. Thus for instance the 1956 UK
Copyright Act expressly so provided (by s.14(10)). The subsequent UK
legislative history continued that, for instance the Cable and Broadcasting
Act 1984 introduced copyright protection for cable programme services
and did not provide that they were subject to the emission theory. It
is unnecessary in this summary to follow the subsequent detail of UK
legislation.
(8) EU legislation also consistently applies the emission theory to
broadcasts but not to cable transmission. For instance Art.1.2 of Directive
93/83/EEC (concerned with harmonisation of certain rules concerning
copyright and copyright related rights applicable to satellite broadcasting
and cable retransmission) makes the emission theory apply to satellite
broadcasting (the place of uploading being deemed to occur solely there,
see Art. 2.B). But there is no corresponding provision as concerns cable
retransmission. Further the Information Society Directive, 2001/29/
EC, particularly recital (23) makes it clear that the author's right of
communication to the public should be understood in a broad sense
covering all communications to the public not present at the place where
the communication originates. Recital 25 (dealing with on-demand
transmission) nowhere suggests the transmission is to be treated as only
taking place where it originates.
(9) The World Copyright Treaty 1996 (to which the EU was a party)
provides by Art. 8 for a Right of Communication to the Public. It makes
specific provision for on demand use, speaking of "making available to
the public …. in such a way that members of the public may access those
works from a place and at a time individually chosen by them". It is said
this amounts to explicit recognition of the transmission theory – and
particularly that it regards "making available to the public" as happening
both at the place of origin and place of receipt. It is said that the travaux
préparatoires for the WCT support this.
(10) Certain learned authors have written in favour of the transmission
theory, albeit not in the specific context of the Database Directive.
Reliance is placed particularly on The WIPO Treaties 1996, Reinbothe
& von Lewinski, (2002), The Law of Copyright and the Internet – The
1996 WIPO Treaties, their Interpretation and Implementation, Ficsor
(2002),International Copyright and Neighbouring Rights – The Berne
Convention and beyond Ricketson & Ginsburg, 2nd Edition (2006) and
World Copyright Law, Sterling 3rd Edn. (2008) at pp.469-472.
(11) Case-law supports the application of the transmission theory.
Reliance is placed on the "thumbnail" case in the Landgericht, Hamburg,
05.09.2003 – 308 O 449/03; Republic of Chile v Florence G. & Clara (Cour
d'Appel de Paris, 9th September 2009); Cassina SpA v La Fondation Le
Corbusier (District Court of Amsterdam, 14th July 2010); International
jurisdiction in the event of unauthorised public access to a work protected
on the internet (Munich Regional Court, 30th July 2009, 7 O 13895/08);
800-Flowers Trade Mark[2000] FSR 697 at 705 (in the context of trade
marks); and the US and Canadian cases referred to by Sterling at pp.462,
472.
The Defendants' arguments
46. These I summarise as follows:
(1) It was the long-standing orthodox view under the Berne Convention
that the "emission theory" applied. Moreover protection of authors'
works by broadcasting goes back to the 1928 (Rome) Revision. Most
importantly, when it came to the 1948 (Brussels) Revision the travaux
explicitly intended the emission theory to apply not only to emission over
the air but also "by means of a transmission by wire".
(2) The claimants wrongly interpret the UK legislation which has
implemented Art. 11bis of the 1948 revision by maintaining the emission
theory.
(3) Although the Director of WIPO, Dr Arpad Bogsch, in 1985 had
favoured the theory that it was the law of the country of reception of a
broadcast which should be applicable, after much discussion that view
was rejected – and in particular the Commission in 1990 in a discussion
paper Broadcasting and Copyright in the Internal Market recorded that the
conventional view was that the emission theory applied to broadcasts and
should be applied to satellite broadcasts.
(4) The policy reasons for that apply equally to internet use and accessing
of servers across borders. Rights would have to be cleared everywhere
which would generally be impractical, as has been pointed out by Dr
Werner Rumphorst, Legal Director of the European Broadcasting Union,
Copyright in the World of Satellites and the Internet (Moscow, November
2006). He said: "what is true for satellite broadcasting must apply, by the
same logic, and indeed even more so, to the distribution of programmes
via the Internet (streaming and simulcasting)".
(5) The travaux to the Database Directive, namely the Green Paper
on Copyright and the Challenge of Technology and the Follow up
Communication of 7 June 1988 and theCommission Proposal of 13 May
1992 do not support the claimants. On the contrary these documents
– and recitals (31) to (34) make it clear that "on-line" transmission is
regarded as an act of distribution, not of communication.
(6) The arguments based on the WIPO Copyright Treaty are misconceived.
The Treaty post-dates the Directive and so cannot be of any help. And in
any event it does not unambiguously support the communication theory.
Moreover if the claimants' construction of the Treaty were correct the
EU would be obliged to protect protection for copyright works including
literary, artistic and musical works at the place of their reception. That it
has not done. Yet no-one has suggested the Cable and Satellite Directive
is deficient in that regard. And the Information Society Directive 2001/29/
EC was specifically intended to implement the WIPO Treaty. The recitals to
that (particularly 2, 3, 20 and especially 24) appear to exclude reception
from the act of "making available". The travaux do not support the
claimants as suggested. There are passages going the other way. And in
the end Art. 3 is not materially different to Art. 8 of the WCT.
(7) As to the learned authors relied upon by the claimants, some do not,
as the claimants assert, unambiguously say the transmission applies: they
are equivocal. Admittedly Dr Reinbothe does, but he does so by assertion
without reasoning. And other authors, e.g. Copinger and Skone James
on Copyright 15th Edn. (2005) para 7-117 unequivocally support the
defendants. In passing I note that the 16th Edn. (2011), contains a fuller
discussion of the theories and is less certain as to the position. It correctly
concludes at para. 7-135, "The whole topic seems likely to become the
subject of a reference … in due course." Further, Bently and Sherman,
Intellectual Property 3rd Edition (2009), discuss various theories at para
6.2 and conclude "this difficult issue will need to be resolved".
(8) As to the UK legislation it is not clearly in favour of the transmission
theory and the UK Government did not think that it was.
(9) Policy favours the emission theory. If it were right a work would
communicated to virtually every country. Website proprietors would have
to comply (and thus know) the copyright laws of everywhere. Moreover
there could be a real risk to freedom of expression via the internet. The
suggested lacuna in protection is illusory in practice.
The Questions to be asked
47. Following the hearing the parties entered a debate about the
questions. They could not agree. We have settled upon the following
which, we think, are non-tendentious and fully raise the points in dispute.
They read as follows:
Where a party uploads data from a database protected by sui generis
right under Directive 96/9/EC ("the Database Directive") onto that party's
webserver located in member state A and in response to requests from
a user in another member state B the webserver sends such data to
the user's computer so that the data is stored in the memory of that
computer and displayed on its screen
(a) is the act of sending the data an act of "extraction" or "re-utilisation"
by that party?
(b) does any act of extraction and/or re-utilisation by that party occur
(i) in A only
(ii) in B only; or
(iii) in both A and B?
The Future conduct of these proceedings
48. Because we are making a reference, those aspects of the claim which
allege that the defendants are directly liable for breach of database right
must be stayed. But we see no reason for staying the claim in joint-
tortfeasorship which in no way depends on resolution of the questions
asked.
Lord Justice Wilson:
49. I agree.
Lord Justice Laws:
50. I also agreee.