The British Horseracing Board Ltd and Others v William Hill Organization Ltd.
Date: 2004-11-09
30. Under the 9th, 10th and 12th recitals of the preamble to the directive, its purpose, as William Hill points out, is to promote and protect investment in data ‘storage’ and ‘processing’ systems which contribute to the development of an information market against a background of exponential growth in the amount of information generated and processed annually in all sectors of activity. It follows that the expression ‘investment in … the obtaining, verification or presentation of the contents’ of a database must be understood, generally, to refer to investment in the creation of that database as such.
31. Against that background, the expression ‘investment in … the obtaining … of the contents’ of a database must, as William Hill and the Belgian, German and Portuguese Governments point out, be understood to refer to the resources used to seek out existing independent materials and collect them in the database, and not to the resources used for the creation as such of independent materials. The purpose of the protection by the sui generis  right provided for by the directive is to promote the establishment of storage and processing systems for existing information and not the creation of materials capable of being collected subsequently in a database.
32. That interpretation is backed up by the 39th recital of the preamble to the directive, according to which the aim of the sui generis  right is to safeguard the results of the financial and professional investment made in ‘obtaining and collection of the contents’ of a database. As the Advocate General notes in points 41 to 46 of her Opinion, despite slight variations in wording, all the language versions of the 39th recital support an interpretation which excludes the creation of the materials contained in a database from the definition of obtaining.
45. The terms extraction and re-utilisation must be interpreted in the light of the objective pursued by the sui generis  right. It is intended to protect the maker of the database against ‘acts by the user which go beyond [the] legitimate rights and thereby harm the investment’ of the maker, as indicated in the 42nd recital of the preamble to the directive.
46. According to the 48th recital of the preamble to the directive, the sui generis  right has an economic justification, which is to afford protection to the maker of the database and guarantee a return on his investment in the creation and maintenance of the database.
47. Accordingly, it is not relevant, in an assessment of the scope of the protection of the sui generis  right, that the act of extraction and/or re-utilisation is for the purpose of creating another database, whether in competition with the original database or not, and whether the same or a different size from the original, nor is it relevant that the act is part of an activity other than the creation of a database. The 42nd recital of the preamble to the directive confirms, in that connection, that ‘the right to prohibit extraction and/or re-utilisation of all or a substantial part of the contents relates not only to the manufacture of a parasitical competing product but also to any user who, through his acts, causes significant detriment, evaluated qualitatively or quantitatively, to the investment’.
48. It must also be pointed out that, although the Proposal for a Council Directive on the legal protection of databases (OJ 1992 C 156, p. 4), presented by the Commission on 15 April 1992, restricted the scope of the protection conferred by the sui generis  right, under Article 2(5), to unauthorised extraction or re-utilisation ‘for commercial purposes’, the absence of any reference in Article 7 of the directive to such purposes indicates that it is irrelevant, in an assessment of the lawfulness of an act under the directive, whether the act is for a commercial or a non-commercial purpose.
50. The reference to ‘a substantial part’ in the definition of the concepts of extraction and re-utilisation gives rise to confusion given that, according to Article 7(5) of the directive, extraction or re-utilisation may also concern an insubstantial part of a database. As the Advocate General observes, in point 90 of her Opinion, the reference, in Article 7(2) of the directive, to the substantial nature of the extracted or re-utilised part does not concern the definition of those concepts as such but must be understood to refer to one of the conditions for the application of the sui generis  right laid down by Article 7(1) of the directive.
51. The use of expressions such as ‘by any means or in any form’ and ‘any form of making available to the public’ indicates that the Community legislature intended to give the concepts of extraction and re-utilisation a wide definition. In the light of the objective pursued by the directive, those terms must therefore be interpreted as referring to any act of appropriating and making available to the public, without the consent of the maker of the database, the results o f his investment, thus depriving him of revenue which should have enabled him to redeem the cost of the investment.
54. However, it must be stressed that the protection of the sui generis  right concerns only acts of extraction and re-utilisation as defined in Article 7(2) of the directive. That protection does not, on the other hand, cover consultation of a database.
55. Of course, the maker of a database can reserve exclusive access to his database to himself or reserve access to specific people. However, if he himself makes the contents of his database or a part of it accessible to the public, his sui generis  right does not allow him to prevent third parties from consulting that base.
61. It follows from the foregoing that acts of extraction, in other words, the transfer of the contents of the database to another medium, and acts of re‑utilisation, in other words, the making available to the public of the contents of a database, which affect the whole or a substantial part of the contents of a database require the authorisation of the maker of the database, even where he has made his database, as a whole or in part, accessible to the public or authorised a specific third party or specific third parties to distribute it to the public.
67. In the light of the foregoing, the seventh, eighth and ninth questions should be answered as follows:
– The terms ‘extraction’ and ‘re-utilisation’ in Article 7 of the directive must be interpreted as referring to any unauthorised act of appropriation and distribution to the public of the whole or a part of the contents of a database. Those terms do not imply direct access to the database concerned.
– The fact that the contents of a database were made accessible to the public by its maker or with his consent does not affect the right of the maker to prevent acts of extraction and/or re-utilisation of the whole or a substantial part of the contents of a database.
The first, fourth, fifth and sixth questions, concerning the terms ‘substantial part’ and ‘insubstantial part’ of the contents of a database in Article 7 of the directive
69. In that connection, it must be borne in mind that protection by the sui generis  right covers databases whose creation required a substantial investment. Against that background, Article 7(1) of the directive prohibits extraction and/or re-utilisation not only of the whole of a database protected by the sui generis  right but also of a substantial part, evaluated qualitatively or quantitatively, of its contents. According to the 42nd recital of the preamble to the directive, that provision is intended to prevent a situation in which a user ‘through his acts, causes significant detriment, evaluated qualitatively or quantitatively, to the investment’. It appears from that recital that the assessment, in qualitative terms, of whether the part at issue is substantial, must, like the assessment in quantitative terms, refer to the investment in the creation of the database and the prejudice caused to that investment by the act of extracting or re-utilising that part.
70. The expression ‘substantial part, evaluated quantitatively’, of the contents of a database within the meaning of Article 7(1) of the directive refers to the volume of data extracted from the database and/or re-utilised, and must be assessed in relation to the volume of the contents of the whole of that database. If a user extracts and/or re-utilises a quantitatively significant part of the contents of a database whose creation required the deployment of substantial resources, the investment in the extracted or re-utilised part is, proportionately, equally substantial.
71. The expression ‘substantial part, evaluated qualitatively’, of the contents of a database refers to the scale of the investment in the obtaining, verification or presentation of the contents of the subject of the act of extraction and/or re-utilisation, regardless of whether that subject represents a quantitatively substantial part of the general contents of the protected database. A quantitatively negligible part of the contents of a database may in fact represent, in terms of obtaining, verification or presentation, significant human, technical or financial investment.
72. It must be added that, as the existence of the sui generis  right does not, according to the 46th recital of the preamble to the directive, give rise to the creation of a new right in the works, data or materials themselves, the intrinsic value of the materials affected by the act of extraction and/or re-utilisation does not constitute a relevant criterion for the assessment of whether the part at issue is substantial.
73. It must be held that any part which does not fulfil the definition of a substantial part, evaluated both quantitatively and qualitatively, falls within the definition of an insubstantial part of the contents of a database.
78. However, it must be observed, first, that the intrinsic value of the data affected by the act of extraction and/or re-utilisation does not constitute a relevant criterion for assessing whether the part in question is substantial, evaluated qualitatively. The fact that the data extracted and re-utilised by William Hill are vital to the organisation of the horse races which BHB and Others are responsible for organising is thus irrelevant to the assessment whether the acts of William Hill concern a substantial part of the contents of the BHB database.
86. It follows that the purpose of Article 7(5) of the directive is to prevent circumvention of the prohibition in Article 7(1) of the directive. Its objective is to prevent repeated and systematic extractions and/or re-utilisations of insubstantial parts of the contents of a database, the cumulative effect of which would be to seriously prejudice the investment made by the maker of the database just as the extractions and/or re-utilisations referred to in Article 7(1) of the directive would.
87. The provision therefore prohibits acts of extraction made by users of the database which, because of their repeated and systematic character, would lead to the reconstitution of the database as a whole or, at the very least, of a substantial part of it, without the authorisation of the maker of the database, whether those acts were carried out with a view to the creation of another database or in the exercise of an activity other than the creation of a database.
88. Similarly, Article 7(5) of the directive prohibits third parties from circumventing the prohibition on re-utilisation laid down by Article 7(1) of the directive by making insubstantial parts of the contents of the database available to the public in a systematic and repeated manner.
89. Under those circumstances, ‘acts which conflict with a normal exploitation of [a] database or which unreasonably prejudice the legitimate interests of the maker of the database’ refer to unauthorised actions for the purpose of reconstituting, through the cumulative effect of acts of extraction, the whole or a substantial part of the contents of a database protected by the sui generis  right and/or of making available to the public, through the cumulative effect of acts of re-utilisation, the whole or a substantial part of the contents of such a database, which thus seriously prejudice the investment made by the maker of the database.