Study in support of the evaluation of Directive 96/9/EC on the legal protection of databases

ANNEX 6: Country Grids

A study prepared for the DG Communications Networks, Content & Technology by:

Digital Single Market

This study was carried out for the European Commission by

AUTHORS: Robbert Fisher Julien Chicot Alberto Domini Milica Misojcic

(as a JIIP member) AUTHOR: Gabriela Bodea

AUTHORS: Alfred Radauer María del Carmen Calatrava Moreno Anna Gkogka

INDIVIDUAL EXPERTS: Lionel Bently Estelle Derclaye

Internal identification

Contract number: 30-CE-0875109/00-61

SMART number 2017/0084

DISCLAIMER By the European Commission, Directorate-General of Communications Networks, Content & Technology. The information and views set out in this publication are those of the author(s) and do not necessarily reflect the official opinion of the Commission. The Commission does not guarantee the accuracy of the data included in this study. Neither the Commission nor any person acting on the Commission’s behalf may be held responsible for the use which may be made of the information contained therein.

ISBN: 978-92-79-84958-9 doi: 10.2759/955021

© , 2018. All rights reserved. Certain parts are licensed under conditions to the EU.

Reproduction is authorised provided the source is acknowledged.

Table of Content

Table of Content...... 1 1 Introduction ...... 3 2 In-depth country grids for 8 EU countries ...... 3 2.1 ...... 3 2.2 ...... 17 2.3 ...... 28 2.4 The ...... 42 2.5 ...... 51 2.6 ...... 61 2.7 ...... 69 2.8 ...... 81 3 Overview country grids for 20 EU countries ...... 99 3.1 ...... 99 3.2 ...... 103 3.3 ...... 107 3.4 Croatia ...... 112 3.5 ...... 117 3.6 ...... 123 3.7 ...... 128 3.8 ...... 133 3.9 ...... 141 3.10 ...... 145 3.11 ...... 149 3.12 Ireland ...... 166 3.13 ...... 172 3.14 ...... 180 3.15 ...... 185 3.16 ...... 190 3.17 ...... 195 3.18 ...... 199 3.19 ...... 211 3.20 ...... 220 4 Legal grids of non-EU countries ...... 225

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4.1 Korea ...... 225 4.2 Switzerland ...... 230 4.3 The United States ...... 237

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1 Introduction

The following annex provides tabular information on the implementation of the Directive 96/9/EC (DBD) in the EU-Member States, for eight countries in more in-depth form (particularly with respective case law), for 20 in a rather overview manner. For additional three countries outside of the EU, information is provided on how databases are protected there (one country with a sui-generis right, two without).

The information is based on desk research (in particular: NautaDutilh 2001 study; WIPO-Lex) and, especially for the eight countries, on interviews which also then convey personal/subjective assessments of national issues in relation to database protection. The interviews, with national IP experts, were also a means to review the information in the grids and as obtained through the desk research. However, it was not possible to find reviewers, in the given framework and time, for all countries.

While great care has been applied to ensure the factual correctness and up-to- dateness of the information provided – particularly through the external review process – it cannot be guaranteed that the information presented is always accurate and up to date. 2 In-depth country grids for 8 EU countries

2.1 Germany General comment: The Directive has been transposed into the German Act by Article 7 of the Information and Communication Services Act on the 1st of August 1997 and came into force on the 1st of January 1998.

General comment from a well-known German professor- The lack of case law may be due to the limited case law on the DBD overall. Even though in Germany there are cases on the DBD, the litigation is still relatively limited.

Issues with respect to the Country: GERMANY Database Directive

1. Can you give us examples of key  BGH GRUR 2005, 940 - Marktstudien landmark decisions The Federal Court of Justice held that diagrams, such as pie (case law) in charts etc., can constitute a protectable database if the conditions connection to the of protection are met. Concerning exhaustion, distribution of the Database Directive in your country, and database with the consent of the right holder leads to the why these cases have exhaustion of the distribution right whereas the right of had significance? reproduction and the right of communication to the public are not Please consider as exhausted. more relevant the impact of recent CJEU  BGH GRUR 2006, 493 - Michel-Nummern case law, e.g., The Federal Court of Justice seemed to come close to a Ryanair case, specification of mere consultative (justified) use in German case Innoweb, Freistaat law. More specifically, in this case a systematic number system Bayern v Verlag for the individualization of stamps (Michel-numbers) had Esterbauer GmbH. developed into a de facto standard in the relevant markets (of stamp collectors). Following that, a competitor developed and used his own systematic number system and offered an additional

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tool to transpose Michel-numbers into his own system (Philotax numbers) in order to export and import data; this also allowed to generate ‘concordance’ files which could also be transmitted to other users in order to make the data from the competing software compatible with the Michel number system. The Federal Court of Justice ruled that such use for “translating” the data into the de facto standard (and vice versa) did not violate the sui generis right since the users did in effect only automatically carry out a transposition which they could also carry out in an individual way (by individually adapting the numbers and noting them by hand) and that consequently such use was justified.

 The “Tele-Info-CD” case (BGH, 6 May 1999, I ZR 199/96) On 6 May 1999, the Federal Court of Justice (Bundesgerichtshof) issued the "Tele-Info-CD" ruling on telephone directory piracy. The defendants published CD-ROMs with the telephone directories of subscribers' data from Deutsche Telekom. The highest German Court ruled in favour of the plaintiffs for unfair competition infringements, it also recognised sui generis protection to telephone directories, but it refused copyright protection. The Court further confirmed the protection to the respective database, as foreseen in Article 1, par. 1 of the Directive, after confirming the substantial investment made by the plaintiffs.

 The “Automobil – Onlinebörse” case (BGH, 22 June 2011, I ZR 159/10) On 22 June 2011, the same Court issued the “Automobil – Onlinebörse” ruling on software providers enabling comparison of different websites with car ads. More specifically, the Court did not find the software provider liable for any violation of sui generis right about copying parts of protected databases. It was held that the provider would not use the data himself and thus cannot be held liable.1 Unlike the Federal Court of Justice, the CJEU took the position in Innoweb that the provider of software has infringed the sui generis rights by re-utilizing parts of the database. It remains to see how the comparison sites offering consumers full information and best comparisons might be impeded.

 Directmedia Publishing GmbH v. Albert-Ludwigs- Universität Freiburg and Professor Ulrich Knoop case (BGH, 13 August 2009 - I ZR 130/04) On 13 August 2009, the Federal Court of Justice after the preliminary ruling of CJEU defined the notion of ‘extraction’ broadly. A German University claimed sui generis right in a list of the names of ‘the 1 100 most important poems in German literature between 1730 and 1900’. They were arranged according to the frequency with which the poem is cited in various (14) anthologies, and setting out for each poem the author, title, opening line and year of publication for each poem. The University complained that Directmedia had extracted over 800 titles in producing a CD-ROM of 1000 poems everyone should read. The Court ruled that “the transfer of material from a protected database to another database following an on-screen

1 The end of (meta) search engines in Europe?, Martin Husovec, 14 Chicago – Kent Journal of , 2014, p. 159

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consultation of the first database and an individual assessment of the material contained in that first database is capable of constituting an ‘extraction’.’’

 Freistaat Bayern v Verlag Esterbauer GmbH case (BGH, 10 March 2016, I ZR 138/13) This case handled the concept of the database. The Federal Court of Justice after the preliminary ruling of the CJEU found that data on maps were independent materials so that maps could be protected as databases.

 Hit Bilanz (BGH 21 July 2005, I ZR 290/02) The Federal Court of Justice held that the organisation and implementation of a complex system to measure music charts data in selected shops can constitute a substantial investment and result in a protected database (hence measuring such data in the shops and organising the technology and network to record and transmit this data is regarded as collection of data and not as (excluded ‘generation’ of data).

Further, the Federal Court of Justice ruled that violation of sui generis right should be affirmed in cases where the music charts data has been extracted and reused in a different arrangement. In this case a market - and social research institute in collaboration with two newspapers published music charts data. A book publishing company extracted these data without any permission and republished them in a book and in a CD-ROM format in another arrangement that was used before. In this context, the Court decided that the different data arrangement still constitutes an extraction of database‘s substantial part, which is protected by the sui generis protection of databases.

 Elektronischer Zolltarif (BGH, 30 April 2009,I ZR 191/ 05) The Federal Court of Justice held that the data synchronisation with a competitive database is illegal. In this case, the maker of a custom tariffs database extracted some data set from a competitive database in order to update his own database. This conduct constitutes infringement of the sui generis right.

 Zweite Zahnarztmeinung II (BGH, 1 December 2010, I ZR 196/08) The Federal Court of Justice decided that an assessment portal in internet may be protected with sui generis right. It was further ruled that this right is infringed by the repeated and systematic extraction and/or re-utilization of data, even if taken together these did not take a substantial part, on the condition that such use was however ultimately aimed at taking a substantial part of or even the whole database and that it would therefore have to be expected that it would later add up to use of a substantial part.

 Autobahnmaut (BGH, 25 March 2010, I ZR 47/08) The Federal Court of Justice handled the notions of “database” and “substantial investment” It was held that unconsented online transfer of individualized toll data from the toll databank to customers of a toll system by a third party was infringement, despite the fact that each single customer had access to the individualized personal data concerning himself, as long as the entire group of users formed a relevant ‘public’. Also, the Court held that in a public private partnership, the investments of the private partner into the resulting database, can constitute

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substantial investments in the sense of the sui generis right even if there was also partial public funding. In particular, this will be the case if the industry partner relies on a mix of public funding and private exploitation to recoup his investments into the database.

2. Definitions

The German law offered protection for works of collection (Sammelwerke) prior to the Database Directive and this protection was preserved. In other words, the collections are protected under three different regimes, i.e. under the work of collection, under the copyright protection of databases and under the sui generis protection of non-original databases. Hence, German law protects some additional works of collection on top of the two categories of the Database Directive, like an art exposition2 or television programs3.

The German Copyright Act does not include any definition of database notion in general, instead it defines the three categories of databases. It proposes a definition for the broader sense of work of collection which is similar to the copyright protection of - Please describe databases, provided by the Directive However, the definition of how the notion of ‘work of collection’ does not include any provision for the database is systematic or methodological way of content arrangement and for defined in your the electronic or other individual access. These two elements are national legislation added to the definition of copyright protected databases. The sui and how it is interpreted by generis protection is also available in Germany and relates to the courts. contents of a database, independently of whether the copyright regime protects the database.4

The condition of individual access to the database was interpreted by the Federal Court of Justice in Germany, ruling that it is met for non-electronic databases even in cases of alphabetical arrangement for the data.5

The Courts of Germany ruled with regard to the independence of the data. More specifically the Court of First Instance in Munich held that collections, comprised of content-related elements, should not be considered as independent. Thus, a MIDI-file is not a legally protected database.6

Originality requires in Germany personal intellectual creation, meaning that the compilation of data either by virtue of their - How has originality selection or arrangement should reflect this minimum. It is been understood? further defined through court cases. More specifically in Bau- markt.de v. baumarkt.de case7, where the plaintiff objected to

2 Schricker, Urheberrecht, Kommentar, 2.Auflage, Beck, München, 1999, p.150. 3 Excluded from the scope of protection of the database by recital 17. 4 M Gruenberger, ‘Germany’, in Lionel Bently (ed), International Copyright Law and Practice (Lexis Nexis, 2017, forthcoming) 5 BGH, 6 May 1999, in: NautaDutilh study, reported above, p. 74. 6 LG München, 30 March 2000, CR, 6/2000, p. 389 7 OLG Düsseldorf, 29 June 1999, in: NautaDutilh study, reported above, p. 74.

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the use of frame hyperlinks from the defendant, it was held that the information used by the defendant was classified as facts with purely informative character and hence incompatible with the principle of originality. Another case8 that did not pass the threshold of originality was an inventory of professional companies classified into activities which did not demonstrate any personal choice. In “Tele-Info-CD” case it was also held that the selection or arrangement was not qualified as personal intellectual creation.9 Instead, in a different case a collection of poems passed the originality requirement, it was comprised by 1100 most important poems from 1790 to 1900 in Germany.10

Substantial investment in German law, according to Article 87a (1) of the GCA, is not limited to financial investment but includes also the use of human resources and the technical methods.11

Substantial investment has been interpreted through several court cases. The Düsseldorf Court of First Instance refused to grant a professional inventory the substantial investment - Does the requirement because the information was already available from legislation define other public sources.12 In another case, the substantial further the concept investment was refused again despite the fact that the owner had of “substantial employed 15 persons for the website because the published investment”, and information was given by the clients in a standardized format and how do the courts they had to pay to have it published.13 However, the sui generis interpret it in your country? What is protection was granted in another case, where a competing the threshold? website made use of an entire list of hyperlinks, contained the same errors with the original one.14 The Court held that the correspondence in relation to the database was a sufficient proof for the substantial investment of the plaintiff in obtaining and verification of the database´s content.15

Generally, the threshold for ‘substantial investment’ is set rather low by the German courts, in particular by the Federal Court of Justice.

The German Federal Court applied the CJEU rulings on the “Zweite Zahnarztmeinung II”, where the Court explicitly stated - How did the courts that the data generation falls not under the sui generis protection. apply the CJEU case law However, it is sometimes difficult to distinguish between concerning the substantial investment in the collection (and organization) of data difference between and investment in generation of data. In practice it is very creation and difficult to make the distinction. For example, if the structure of collection of data? the database is very elaborate, a lot of effort would have been put in the formulation of the categories of data. So, some courts

8 LG Düsseldorf, 7 February 2001, in: NautaDutilh study, reported above, p. 74. 9 BGH, 6 May 1999, I ZR 199/96. 10 BGH, 13 August 2009 - I ZR 130/04. 11 Prof. Wiebe, Der Schutz von Datenbanken – ungeliebtes Stiefkind des Immaterialgüterrechts, CR 1/2014, p. 4. 12 LG Düsseldorf, 7 February 2001, in: NautaDutilh study, reported above, p. 74. 13 OLG Düsseldorf, 29 June 1999, in: NautaDutilh study, reported above, p. 74. 14 LG Köln, 25 August 1999, in: NautaDutilh study, reported above, p. 74. 15 NautaDutilh study, reported above, p. 74.

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would consider this to be investment in the generation of data because categories are created, others would consider that this is investment in the (systematic) presentation of the data.

- Are the definitions/notions of the rights and Only in part. The German Copyright law makes the distinction exceptions in your between collections and database works (Section 4) as well as copyright between the exceptions and limitations among them. General provisions relating to databases provisions of Copyright (InfoSoc) are applicable as long as there aligned with the is an expressive reference to them, i.e. the ‘distribution right’ and same notions in ‘resale right’. your copyright law as amended by the Infosoc Directive? 3. Should the copyright provisions of the Database Directive be According to our interview partner, the exceptions to the sui standardised with generis right should at the very least be aligned with the those for the InfoSoc Directive, exceptions to the Information Society Directive. There should not 2001/29/EC? be narrower exceptions to the sui generis right in comparison to - on the definition of copyright law. Of course, it should also be considered whether rights some of these exceptions should designed in a mandatory way - on electronic which would have to be further specified. exhaustion - on exceptions (for example, transient copying, private copying) An author is considered the person who creates the work (Article 7 of the GCA). Legal persons are not attributed with the possibility of initial copyright authorship in Germany. 16 In contrast, sui generis protection might be attributed to legal entities or even public authority or administration.17 The ownership of telephone directories between monopolist telecom 4. In your practice (be it operator and 100% subsidiary is separate, as the first one as a defendant or a recorded and communicated the data and the latter edited the claimant), have you directories.18 In this case, the Federal Court of Justice held that had problems to determine who the both companies owned separated sui generis rights but they did 19 owner of copyright not establish joint authorship. Another sui generis case was was and/or sui generis between a database owner with event promotions and the event 20 right? promoters who introduced their events into the database. The Court did not consider them as co-makers because just the database owner invested in the used software and in processing of the data whereas the event promoters just completed the database without proceeding to any investment.21

In general, in many practical situations, where a large number of

16 NautaDutilh study, reported above, p. 69. 17 Schricker, reported above, p. 1339, n° 28. 18 BGH, 6 May 1999, p. 1059, in: NautaDutilh study, reported above, p. 75. 19 Ibid. 20 OLG Berlin, 9 June 2000, ZUM, 1/2001, p. 70. 21 NautaDutilh study, reported above, p. 75.

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persons or institutions have relevantly invested into the making of a database, the identification of the owner(s) of the sui generis protection right raises a lot of issues and difficulties. This problem is aggravated by the fact that often no clear contractual assignment of the right will have taken place so that in many situations multiple ownership will be the result which causes considerable practical problems.

As maker of a database is defined in Germany “the one who has made the investment” on the database.22

In the interviewee’s practice, situations of multiple ownership and the specific identification of right holders in larger networks have caused considerable difficulties. In certain multi-level cloud situations, it is difficult to identify who is baring the risk. In certain multi-level cloud situations, it is difficult to identify who is baring the risk. If there are contracts that assign data protection rights, then this is clear-cut situation. If there are no contracts, the problem in multi-player situation, the problem is to identify the person who was really baring the investment risk. Of course, - Have you employees are taken out. But if you take car producers, it might encountered be them who have put the sensors in the car, or the person who problems with the organizes car-sharing system and who also might have invested, definition of the and the driver (even though he will probably not be considered as “maker” of a he has not put effort in the database). But this illustrates that it is database? difficult to determine the who bears the risk – this might concern big data issues, cloud issues. Following this, there are other more specific problems – such as involvement of public bodies or authorities - which according to the interviewee are partly solved by case law. According to German case law, in general, publicly commissioned enterprises can benefit from database protection as they need to recuperate their investment.

However, the interviewee is not certain whether it is possible to further specify the rules on ownership. The real problem with multiple ownership is that we would need a contract law framework which helps to formulate the assignment of the right in contracts between the database makers and define the relationship with the users.

- Have problems arisen identifying the “maker” in The case indicated above, where the Berlin Court of Appeals did cases where the not attribute to the event promoters sui generis protection, person who takes the initiative is because they did not undertake neither the initiative nor the risk 23 different from the of investment. person that takes the investment risk?

22 Koščík & Matěj Myška (2017) Database authorship and ownership of sui generis database rights in data- driven research, International Review of Law, Computers & Technology, 31:1, 43-67, DOI: 10.1080/13600869.2017.1275119), at p 52-53.

23 NautaDutilh study, reported above, p. 75.

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The concepts of extraction and re-utilization are not used in Germany, instead the legislator continued with the terms of reproduction and distribution to the public also for the sui generis protection.24 The compliance with the Directive should though be answered in an affirmative way, as the purpose of the law is the same.25

The Karlsruhe Court of Appeal ruled that an extraction of several 5. Does the legislation thousand data from a telephone directory does not constitute define further the reproduction of a substantial part of the database.26 In the same concepts of extraction direction, the Berlin Court of Appeals ruled that the extraction of and re - utilization in data relating to one promoter out of 300 to 400 event promoters your country and how of a database, does not constitute a substantial part of the do the courts interpret 27 it? database.

Regarding the distribution right, the LG Köln condemned a search engine for deep-linking to job ads, meaning that the search results of the defendant presented a reference of the plaintiff’s work but did not lead to his homepage, instead the link directed the user to a subpage containing the job ad (deep-linking definition).28 The Court considered this act as temporary distribution because the user was able to “bypass” the plaintiff’s site, provoking a loss of revenues to the plaintiff.29

The substantiality is evaluated from both qualitative and quantitative point of view. However, it is difficult to identify whether substantial part of the database was taken, or - Could you provide insubstantial parts were taken in a systematic way. As substantial us with examples part of the database is considered quantitatively, an extraction or of what has been 30 perceived as re-utilization of more than 10% and less than 75%. “substantial part”? Alternatively, the importance may be measured in qualitative terms, i.e. important updates on the database, without which the database would not be operative.31

- Could you provide In Germany, repeated and/or systematic extraction/re-use of us with examples insubstantial parts was under the scrutiny of the sui generis right of what has been infringement, when the sum of all these extractions and/or re- perceived as utilisations was above the threshold of what has been perceived “repeated and/or as substantial part of the database.32 However, The German systematic Federal Court held recently in ”Zweite Zahnarztmeinung II”, that extraction/re-use the repeated and/or systematic extraction/re-use of insubstantial of insubstantial parts infringes the sui generis right also in cases, where the sum part”? of all these extractions and/or re-utilisations was below the

24 NautaDutilh study, reported above, p. 76. 25 Ibid. 26 OLG Karlsuhe, 11 November 1998, in: NautaDutilh study, reported above, p. 77. 27 OLG Berlin, 9 June 2000, ZUM, 1/2001, p. 70. 28 LG Köln, 28 February 2001, in: NautaDutilh study, reported above, p. 78. 29 NautaDutilh study, reported above, p. 78. 30 Prof. Wiebe, Der Schutz von Datenbanken – ungeliebtes Stiefkind des Immaterialgüterrechts, CR 1/2014, p. 6. 31 Ibid. 32 Ibid.

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threshold but it would have been above if these acts continue in the future.33

In Germany, the Copyright Act foresees the general limitations on copyright (Chapter 6), i.e. temporary reproduction, administration and public security, persons with disabilities, collections for religious, school or instructional use, school broadcasts, public speeches, newspaper articles and broadcast commentaries, reporting on current events, quotations, communication to the public, research, private use, order for dispatch of copies.

It implements also the exceptions on the sui generis right (§87c following):

“(1) The reproduction of a qualitatively or quantitatively substantial part of a database shall be permissible: 6. How far have exceptions been 1. For private use; this shall not apply to a database the implemented and how elements of which are individually accessible by have they been electronic means; interpreted by courts? 2. For the purposes of personal scientific use, if and to the extent that the copying for this purpose is necessary and the scientific use does not serve commercial purposes; 3. For personal use in teaching, in non-commercial institutions of education and further education and in vocational training in a quantity required for one school class. In the cases outlined in numbers 2, and 3, the source must be clearly acknowledged.

(2) The reproduction, distribution and communication to the public of a qualitatively or quantitatively substantial part of a database shall be permissible for use in proceedings before a court, an arbitration tribunal or a public authority as well as purposes of public security.”

The interviewee underlined that exceptions to the sui generis - In your view, right are too limited and too rigid. which exceptions The exceptions should be aligned with the exceptions to general are needed to the copyright law (according to the InfoSoc Directive) and they sui generis right? should be made mandatory.

- Do difficulties arise from the absence The issue of temporary reproduction and of online transmissions of a provision for both for copyright and sui generis protection was not expressly temporary copying 34 (Article 5(1) of addressed in legislation. Directive 2001/29/EC)? - How is the user’s “right of Section 55A , 87E consultation” secured in your

33 Ibid. 34 NautaDutilh study, reported above, p. 64.

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Member State?

- Do you think that the concept of The interview partner did not find that the lawful user concept is lawful user is sufficiently understood. He further stated that it is highly debated sufficiently in Article 5.1 of the InfoSoc Directive. understood in your country? The Federal Court of Justice held that the adoption of another’s achievement might be unfair in case of a reproduced work that has competitive individuality and any additional indication to this direction.35 In “Tele–Info–CD “case, the defendant copied the 7. In your Member State, subscriber data, which the public expected to be “official” data, are database creators i.e. first-hand data, on which they could rely and this behaviour free to rely on the law was characterized as competitive individuality. At the same time of unfair competition the defendants made use of the plaintiff’s reputation, which to protect databases? constituted the additional circumstance of unfairness. Thus, the Are there any plaintiffs were entitled to claim damages of unfair competition and problems with this as the Court granted injunctive relief and damages to the plaintiffs, an alternative to the whereas the destruction of copies and the request for publication sui generis right (were of the judgement were refused. the latter to be abolished)? Could you In fact, this cumulation of sui generis protection and unfair give us some competition protection leads to over-protection, to practical examples or indicate difficulties. Hence it should be clarified that the harmonisation of any court decisions? the sui generis protection right excludes further protection for databases under national unfair competition law.

However, according to our interview partners, the German courts in several judgements have applied both protections cumulatively. Other courts have excluded unfair competition protection when the sui generis right is applied. The aforementioned point to a serious problem and legal uncertainty.

8. Do the database producers rely on contract law in addition to the sui generis right to protect Contractual protection will be of increasing importance. However, the investment in their when the database presented to the general public and in an databases? Have there offline form, then contractual clauses will not help and will be been any problems very difficult to enforce. A case in point are the medical databases with the use of and the case with the maps when it was distributed in an offline contracts as either an form and then it is difficult to include license agreements. Usually alternative to the sui contractual clauses will be useful in cases on online databases generis right or an and possibly paired with technological protection. additional layer of protection? Could you give us some examples or indicate any court decision? 9. Do database makers When the DBD was enacted, technological protection was not use on technological considered, and a provision was not included. In our interviewee’s protection measures opinion there is no need for additional legal protection to be (TPMs) to protect their added. But there might be a need for limitations and control. So,

35 BGH, 6 May 1999, I ZR 199/96.

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databases and if so, do it might be necessary to clarify that technological protection they encounter measures must not be used to prohibit the user from accessing problems in doing so? the database which would be legal under the exceptions to the DBD. So TPMs must not be used to circumvent minimum rights of the user under the exceptions to the DBD and the rights of the lawful used. Certain limitation to possible contractual prohibitions might also be necessary. The exceptions to the DBD right and the rights of the lawful user should be mandatory as regards to possible contractual circumventions. They should be ‘contract- proof’. Of course, if there is no database protection, then there is no minimum right guaranteed but if there is a database and it is protected, the rights of the lawful user should be protected.

10. Have you encountered problems with the interaction between The interaction between these two instruments is obvious. From the Database Directive policy perspective, the trend is towards , as the and the PSI Directive? 36 Could you give us amendment of the PSI has been proven. some examples or indicate any court decision? 11. Have you encountered problems with the EU or national open access policies Yes, there are problems. For instance, the question of whether regarding research the researchers need to obtain the data by licenses or not. activities? Could you give us some examples or indicate any court decision? Data producer’s right’ would protect industrial data against the world. There must be no confusion between these two things. There are two separate issues; the protection of data as such and 12. Would there be more the protection of the data collection. or less need for sui generis right if the EU As explained in the Staff Working Paper that accompanies the recognised a “data Communication, this new right would create a transferable producers right” as property right in “non-personal or anonymised machine- proposed in the "Data generated data”. It would encompass “the exclusive right to Economy Package"? utilise certain data, including the right to licence its usage. This Could you give us some examples or would include a set of rights enforceable against any party indicate any court independent of contractual relations thus preventing further use decision? of data by third parties who have no right to use the data, including the right to claim damages for unauthorised access to and use of data.”

“Article 127a

(1) German nationals and legal entities whose principal place of business is located within the territory to which this Act applies 13. Who is eligible to enjoy protection according to section 87b. Section 120 (2) shall protection? apply.

(2) Legal entities with no principal place of business within the

36 Prof. Wiebe, Der Schutz von Datenbanken – ungeliebtes Stiefkind des Immaterialgüterrechts, CR 1/2014, p. 10.

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territory to which this Act applies which were established under German law or the law of one of the states designated in section 120 (2), number 2, enjoy the protection granted according to section 87b if

1. their head office or main office is located in the territory of one of the states designated in section 120 (2), number 2, or

2. their registered office is located in the territory of one of these states and there is an actual link between their activities and the German economy or the economy of one of these states.

(3) For the rest, foreign nationals and legal entities enjoy the protection granted according to international treaties, as well as agreements which the European Community concludes with third- party states; the Federal Ministry of Justice and Consumer Protection shall give notification of these agreements by publication in the Federal Law Gazette”

“Section 120

German nationals and nationals of another Member State of the EU or of another Contracting State to the Agreement on the EEA

(1) German nationals enjoy copyright protection for all their works, regardless of whether and where the works were released. Where a work was created by joint authors (section 8), it shall be sufficient for one joint author to be a German national.

(2) The following are deemed equal to German nationals:

1. Germans within the meaning of Article 116 para. 1 of the Basic Law who do not hold German nationality, and

2. Nationals of another Member State of the European Union (EU) or of another state party to the Agreement on the European Economic Area (EEA).”

14. Is it permitted to circumvent the lawful user exception and the No rights and obligations of lawful users by contract? 15. Do you consider – from your experience The specialised courts and the lawyers are sufficiently and observations – knowledgeable. judges and lawyers sufficiently trained /

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specialised in sui generis rights once litigation takes place? Are plaintiffs and defendants likewise sufficiently knowledgeable? 16. Please indicate other important legal issues in the context of There are no other important legal issues. Database Directive in the country. 17. Concluding question: Do you think that a) The Directive is an effective means for achieving its goal? b) Do you think that it is a cost-efficient means for achieving its goal (consider hereby the costs of legal representation, a) When it comes to the harmonization objectives, it is court fees, the effective. duration of cases, b) No answer etc.)? c) No answer c) Is it at all relevant d) No answer for the target e) The harmonization groups? d) Is it, in your view, coherent with other pieces of legislation at European and national levels? e) What is the added value of database protection being dealt with at European level?  The DBD should be changed to specify that national unfair competition rules must not be applied on top of the sui generis right. Otherwise, this leads to overprotection, and decarbonizations (due to the different unfair competition laws across Member States).  In the original proposals of the DBD compulsory 18. What do you regard as licenses were foreseen. This should be the major benefits of reconsidered. In the wake of the new big data the Database scenarios it should be considered whether for Directive? What are certain areas, compulsory licenses might be its major problems? needed (for example in cases where the Weighing these, which databases have developed into industry should be the next standards). steps?  One should also consider a possible contract framework of databases. So, it should be considered whether certain non-mandatory contact rules for B2B situations should be included in the Directive. Additional consideration should be given to whether or not certain additional protection rights for private persons in contract law will need to be included. So, whether

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mandatory contractual protection for the private persons beyond the rights of the lawful user is needed. The interviewee is not certain if this should be incorporated in the DBD though. Good practices are definitely needed with regard to database contracts. However, such best practices can also be included in the recommendations of the Commission or other legal instrument.  Protection term of 15 years should be re- considered. Most of the databases follow investment cycles which are much shorter than 15 years. Plus, there is the renewal and any substantial investment for the update will also be protected and these two factors make the term of 15 years protection over long.  In a recent paper, the interviewee has also argued that it should at least be considered whether a registration of the databases is appropriate. Registration might have certain advantages as it might further target the right to real investment databases, might solve some of the problems with the identification of the database maker, and thus it might simplify licensing of the databases because from the register one would know whom to ask for license. However, on the other hand, there might be a substantial danger that registration creates new administrative costs and public source effect and the situation might become worse than before. This topic needs to be considered but the interviewee does not have a conclusive answer to that and more research is needed.

Author: Anna Gkogka

Review and contributions: Two German experts

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2.2 France General comment: The Directive has been transposed into the French Intellectual Property Code by the law of the 1st July 1998.

Issues with respect to the Country: FRANCE Database Directive

 Pressimmo on Ligne v. Yakaz, Court of Cassation, 12 November 2015 Pressimmo sued Yakaz for extracting all its database of property ads. Pressimo also sued on the basis of slavish imitation (unfair competition) but the Court rejected its claim. In this case, the user had to go to Pressimmo to access relevant information (different from facts in Innoweb CJEU decision). The Court said Yakaz was just indexing content and was not committing an act of slavish imitation.

1. Can you give us  Précom, Ouest France Multimedia v Direct Annonces, examples of key Court of Cassation, 1st civ., 5 March 2009 landmark decisions The Court of Cassation followed the CJEU rulings and dealt with (case law) in the difference between the creation and the collection of data. connection to the Hence, it was held that the subsistence of the sui generis right Database Directive in depends on the collection of data rather than on their creation.37 your country, and why these cases have More specifically, as stated in the decision “a company cannot had significance? claim the benefit of the protection by the sui generis right for Please consider as investments linked with the creation of the content of a more relevant the database”. The Court further clarified that no parasitism could be impact of recent CJEU established, as the defendant indicated his source of information case law, e.g., and he did not undertake any risk of confusion for the user. Ryanair case, Hence, it rejected the negative overlap between unfair Innoweb, Freistaat competition law and the sui generis right. Bayern v Verlag Esterbauer GmbG.

 Metropole Télévision et al. v SBDS Active, CΑ Paris, 27 April 2011. The Paris court of appeal followed the same direction regarding the subsistence of the sui generis right, holding that sui generis protection should not be granted since the alleged investment is not linked to the obtaining, verification or presentation of the data. In other words, the database maker could not prove his investments on the database, either for the conception of the website, or for the classification, indexation, and selection of the data.38 The court further ruled that there was no parasitism due to the reduced advertising revenue since the user was redirected to the source side and he was able to make use of the normal navigation process including the advertisements.

37 Derclaye, E, ‘Recent French decisions on database protection: Towards a more consistent and compliant approach with the Court of Justice’s case law?’ European Journal for Law and Technology, Vol. 3, No. 2, 2012, p. 3. 38 Ibid, p. 4.

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 TAC UP v JTMM, CA Lyon, 8th ch. civ., 27 April 2010 The Lyon court of appeal further refused the sui generis protection to a database, stating that the investment is not related to the essence of the database, meaning any cost linked to the collection, verification or presentation of the data. In contrast, evidence for the investment on the database were invoices for newsletter forms or for the creation of ad banners, which did not pass the threshold of the substantial investment.

 Print Chain v. EDI process - CA Versailles 17/2/2010

The court of appeal held that spending 650 000 euros by the database maker to make its web site, on which it has a tool to calculate the market price using its database, is both a substantial investment in collecting and presenting data.

 Lectiel v France Télécom, CA Paris, 1st Ch., Section A, 30 September 2008, confirmed by Cass. (Chambre commerciale, financière et économique), 23 March 2010, (2010) 225 RIDA373 The Court of Cassation confirmed the decision of the appellate court and granted database protection to the France Télécom’s telephone directory since it has consisted of various information other than all the basic directories. However, it did not mention whether the substantial investment was related to the collection, verification or presentation of the data, leaving the Lectiel case inconclusive regarding the subsistence of the sui generis right.39

 News Invest v PR Line, CA Versailles, 11 April 2002 [2002] CCE, July-Aug. 2002, p. 20-22, comm. 98, comment Caron The court held that the extractions from the database were not quantitatively substantial. However, these data were further held as qualitatively substantial because they were used by the defendant for his database and thus infringing. This criterion to evaluate in function the use of the extracted data was reversed by the appellate court. It held as irrelevant the fact that the defendant enriched his database for the evaluation of the extraction as qualitatively substantial.40

 Jato Dynamics v Roadtodata, CA Versailles, 12th ch., section 2, 18 février 2010 The appellate court held that the database is protected by copyright but not simultaneously by unfair competition, since there has not been any additional harm not addressed from the copyright claim.

2. Definitions

39 Ibid, p. 4. 40 Ibid, p. 5.

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Article 112-3 protects anthologies or collections of diverse works or information which constitute “by the selection or arrangement of contents intellectual creations”.41 The database is referred as an example of protected compilation, and it is defined the same - Please describe way as in the Directive. The sui generis right is perceived as a how the notion of database is copyright-related right, and it protects the contents of the defined in your database. The French law does not call them neither 42 national legislation “neighbouring” rights nor “sui generis” rights. Protection has and how it is been further given to all databases, including databases on paper. interpreted by courts. The courts have refused to protect to protect compilations like the alphabetical listing of professionals,43 the graphic layout of annual tide tables,44 a map of France indicating wine regions,45 and a system of classification of bank notes and coins.46

Originality is important to determine which databases are protected by copyright. A database is original if it is “an intellectual contribution of the author”. 47 For example, the Court - How has originality of Cassation confirmed the refusal of copyright in an “inventory been understood? and compilation”, which was made to elaborate a screenplay for Niepce since the “research and documentation” did not pass the threshold of intellectual contribution. 48 Whereas a database consisted of addresses and websites just for children was held as copyright protectable.49

- Does the The Court of Cassation confirmed a decision, where the sui legislation define generis right was refused because the data had been generated further the concept before for other purposes.50 Moreover, the sui generis protection of “substantial was further declined for a database of an airline company investment”, and compiling information on flights, times, availability and prices.51 how do the courts However, the right was confirmed for a finding of sufficient interpret it in your 52 country? What is investment in an enriched telephone directory database. the threshold? Reseau fleuri v. L’Agitateur floral, Court of cassation, 19 June 2013: RF sued AF for infringement of sui generis right and unfair

41 As amended by the Law of December 16, 1996, to take account of the TRIPs Agreement, and the Law of July 1, 1998, to implement the Database Directive. 42 P Kamina & A Lucas in Lionel Bently (ed), International Copyright Law and Practice (Lexis Nexis, 2017, forthcoming), p.34. 43 Paris, 4e ch., 16 Jan. 1995, Expertises 1996, 40, obs. Bertrand, whereas as protected databases were held catalogues of exhibitions including alphabetically ordered information on each participant according to fields of activities and geographical zones (Paris, 4e ch., 12 Sept. 2001, J.C.P. 2002, II, 10000, note Pollaud-Dulian, Com. com. électr. 2001, comm. no. 121, note Caron, translated into English in E.C.D.R. 2003, 206). 44 Rennes, 1re ch., 16 May 1995, Juris-Data no. 047866. 45 Douai, 1re ch., 7 Oct. 1996, R.I.D.A. 1997, no. 172, 286, appeal rejected, Cass. civ. I, 5 Jan. 1999, R.I.D.A. 1999, no. 180, 353. 46 Paris, 4e ch., 30 March 2005, P.I. 2005, no. 16, 335, obs. Lucas 47 Cass. civ. I, 2 May 1989, J.C.P. 1990, II, 21392, note Lucas, R.I.D.A. 1990, no. 143, 309. 48 Cass. civ. I, 5 Oct. 1994, R.I.D.A. 1995, no. 163, 205. 49 Cass. civ. I, 13 May 2014, R.I.D.A. 2015, no. 244. 50 Cass. civ. I, 5 March 2009, R.I.D.A. 2009, no. 221, 339. 51 Cass. com., 10 Feb. 2015, R.I.D.A. 2015, no. 244, 352. 52 Cass. com., 23 March 2010, R.I.D.A. 2010, no. 225, 273, Com. com. électr. 2010, comm. no. 84, note Caron.

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competition. The Supreme Court rejected the claim that the CA did not justify its decision that RF’s database was not the result of a substantial investment. The investment which was made over 20 years in the collection, verification and updating of the data for 2 databases (180,000 euros and 388,279 euros respectively for each; nothing else in the decision) was held not to be substantial.

 Ryanair v Opodo, Court of cassation, 15 February 2015 Ryanair argued they had sui generis right on its database and that Opodo infringed it, but the CA rejected its claim. The CA ruled that it was a database but that the software Ryanair paid for is used to operate (manage) the database and thus cannot count towards the investment in making the database; the CA also rejected the sui generis right only on the basis that the investments were linked to the main activity of Ryanair i.e. selling tickets.

The French Supreme Court confirmed the CA decision.

CA decision

The CA gives a very long discussion on question of substantial investment. A computer program used to create data therefore does not count as a substantial investment nor does a computer program which is used to manage the database. Ryanair’s other types of investments were relating to commercial management and ticket sales and not to the creation of a database. Ryanair also does not prove that whatever investments it made were for the collection, verification or presentation of data.

In Print Chain v. EDI process, CA Versailles 17/2/2010, the court of appeal held that the defendant infringes and that the part of the database it took (51%) is a quantitatively substantial part.

As per the above, most of the courts including the C. Cass have decided their cases in conformity with the CJEU decisions.

The French courts do not verify whether the investments were made for data creation, but whether they were effectively made for data collection (and reject the sui generis right if this criterion - How did the courts is not fulfilled). apply the CJEU case law The most relevant judgement in this respect is Court of Cassation concerning the 5th March 2009 Précom, Ouest France Multimedia vs. Direct difference between Annonces. However, there has been some evolutions since then. creation and The judgement of Paris High Court (TGI de Paris) 1st Sep. 2017 collection of data? Le Bon Coin relates to a similar type of databases than in Ouest France. However, in this instance, the judge makes a distinction between the ads which had been created and the content of the ads that were pre-existing. In Ouest France, such distinction was not made: ads were the data considered. But, in Le Bon Coin, data are the contents of the ads. This revision of the case law was promoted by the doctrine. In this case, data were therefore pre- existing and investments for collecting them (including

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standardisation, verification etc.) were recognised.

The judgement, Paris Court of Appeal 30th Sep. 2008 Lectiel vs France Télécom, does not make a clear distinction between data collection and data creation.

In French law, there is no specific provision on copyright for database. The article L112-3 of the Code of IP states that - Are the databases could be protected via . The general definitions/notions provisions on copyrights (including exceptions) apply. of the rights and exceptions in your A few exceptions have provisions specific to copyrights in art copyright L122-5 of the Code of PI: electronic databases are not concerned provisions relating by the exception for private copies (L122-5 2°); copyrights do not to databases prevent acts required to access electronic databases whose aligned with the access is allowed by contracts (L122-5 5°), temporary same notions in reproduction is allowed except those of databases (L122-5 6°). your copyright law Furthermore, the Law of 7th Oct 2016 for a Digital Republic as amended by the introduced an exception for datamining. This exception is on the Infosoc Directive? legal protection of databases and not the legal protection of data though.

3. Should the copyright provisions of the Database Directive be standardised with There is no provision on copyright specific to databases in the those for the InfoSoc French law. Directive, 2001/29/EC? Because the provisions on copyright are general, there is no issue - on the definition of of standardisation. However, the conformity of the French rights exception for datamining with the European law is questionable. - on electronic Such an exception should be discussed, as it may have high exhaustion economic importance with impacts beyond (public) research. - on exceptions (for example, transient copying, private copying) Me Varet has barely encountered difficulties determining who the owner of copyright or SGR was. In a recent affair (to remain 4. In your practice (be it confidential), such problem has appeared, but it is not because of as a defendant or a the legal framework but because of the internal organisation of claimant), have you the claimant. The claimant, indeed, bought a database that had had problems to determine who the been developed by another company. The purchase was based on owner of copyright a contractual agreement with vague provisions. As the claimant was and/or sui managed to prove that its investment was substantial such that it generis right? could be granted SGR, the judge did not address the question of who the actual owner of the database was.

- Have you encountered None of the experts have encountered any difficulty in relation to problems with the the identification of database makers. However, the judgement definition of the Cass 5th March 2009 Précom, Ouest France Multimedia vs. Direct “maker” of a database? Annonces as relevant in this respect.

- Have problems arisen identifying None of the experts have encountered such problems, nor are the “maker” in aware of any related case law. cases where the person who takes

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the initiative is different from the person that takes the investment risk? The French law does not define what extraction and reutilisation mean. However, the French judges refer to the 2004 decision of the CJEU. 5. Does the legislation define further the Article 342-2 of the I.P. Code confers these two rights to the concepts of extraction database producer, and it foresees that any action that exceeds and re - utilization in the conditions of normal utilization of the database is prohibited. your country and how For instance, this was held in a case where a competitor website do the courts obtained via a search engine information from a job search interpret it? website. 53 According to article 342-3 of the I.P. Code, it is not contrary to extract insubstantial parts, if they are lawfully accessed.

Paris High Court (TGI de Paris) 5th Sept 2001 Caremploi vs Keljob et Colt Télécommunications France

This judgement is about the extraction by Keljob of job advertisements. Because only 20% of total ads had been extracted, the extractions could not be qualified as quantitatively substantial. However, as the ads extracted by Keljob were those for the vacancies that were the most searched and the most difficult to find, the extraction was found qualitatively substantial. In other words, the judges consider whether an extraction is qualitatively substantial in relation to the interest of the data extracted. A similar approach for financial data was adopted in the Nanterre Court of Commerce (Tribunal de commerce de - Could you provide Nanterre) 6th May 2000 PR Line. us with examples of what has been perceived as “substantial part”? In Cass. 13th May 2014 Affaire contrôle parental, the judge noticed that 35% of one category of data and 59% of another one, within the extracting database, had been extracted. Based on these figures, the judge qualified the extraction substantial. However, they measured the extraction in terms relative to the extracting database, i.e. not to the source database.

In the Paris Court of Commerce (Tribunal de commerce de Paris) 8th Dec. 2016, the judges noticed that the extracting database extracted 93% of the source database and concluded that the extraction was substantial.

- Could you provide Paris High Court (TGI de Paris) 1st Sep. 2017 Le Bon Coin vs us with examples EntreParticuliers of what has been perceived as Le Bon Coin includes property ads. They account for around 10% “repeated and/or of the total Le Bon Coin database. Therefore, their extraction systematic could not be considered substantial. However, the judges extraction/re-use recognized that the extracting company infringed the SGR, as it of insubstantial commissioned another company to extract five times per day all

53 TGI Paris, 3e ch., 5 Sept. 2001, Expertises 2001, 391.

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part”? property ads. This frequency and the fact that all property ads were concerned were enough to consider the extraction non- substantial but repeated and systematic.

Moreover, it could be noticed that the judges, in this case, considered Le Bon Coin had high expenditures in external communication, and included them in the investments for data collection (in addition to expenditures for the website moderation considered as ex-post verification).

The art. L342-3 of the Code of IP draws from the Database Directive. A few exceptions have been added in the French law: an exception for disabled peoples, and since the Law of 7th July 2016 an exception to SGR for education purposes. The latter exception is included in the Database Directive but has been transposed in French law only in 2016. 6. How far have exceptions been The French legislator went beyond the exceptions foreseen in the implemented and how Database Directive by introducing an exception for datamining. A have they been growing number of companies have their main activities based on interpreted by courts? . However, it should be investigated which problems they encounter in the conduct of their activities (if any) and whether such exception may be helpful. Most of these companies analyse the data of their clients and have therefore no problem in accessing the database they need. An exception for datamining may make more sense for research activities.

- In your view, Prof. Larrieu calls for exceptions for temporary copies (“copies which exceptions transitoires”) for easing consultation. Moreover, he is in favour of are needed to the exceptions for data mining for the purpose of research. sui generis right? - Do difficulties arise from the absence In French law, there is such exception for copyright. The absence of a provision for temporary copying of this exception for SGR does not create any difficulty in Me (Article 5(1) of Varet’s experience. Directive 2001/29/EC)? - How is the user’s The right of consultation does not exist in the French law and “right of there is no case law in this respect. consultation” secured in your Member State? - Do you think that There is no case law on the concept of lawful user. The law the concept of defines these users as those who benefit from an authorised lawful user is access. The related exception in the Database Directive has been sufficiently transposed in the French law. understood in your country? 7. In your Member State, are database creators free to rely Intellectual property and unfair competition relate to two different on the law of unfair and independent types of possible infringement. Database competition to protect producers may prosecute any organisation on both legal bases. databases? Are there Similarly, judge may recognise that SGR was infringed but not any problems with the unfair competition law, and the other way round. However, this as an alternative these infringements must be caused by different acts, e.g. data to the sui generis extraction from a website (SGR) and imitation of its structure and right (were the latter design (unfair competition law). to be abolished)?

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Could you give us some examples or indicate any court Supreme court case (12/11/2015, Pressimmo on Ligne v. Yakaz), decision? Pressimmo sued Yakaz for extracting all its database of property ads. Pressimo also sued on the basis of slavish imitation (unfair competition) but the CA rejected its claim. In this case, the user had to go to Pressimmo to access relevant information (different from facts in Innoweb CJEU decision). The CA said it was just indexing content and not an act of slavish imitation. The Supreme Court confirmed. The CA had said that since Pressimmo had no sui generis right it could not reconstitute a IP right by the back door by using slavish imitation; it must show risk of confusion which it does not.

Furthermore, it is possible to prosecute an organisation claiming infringement to unfair competition law without proving any infringement to intellectual property (as long as both claimed infringement related to different acts). The latter is not a condition for the former. See Créteil Court of Commerce (Tribunal de commerce de Créteil) 10th July 2013 Jestley (Propriété industrielle 2013, commentaire 74). Such practice is not restricted to SGR but concerns all IP rights. In fact, most lawyers have better knowledge of competition law, and therefore try to avoid IP specialized courts. However, IP experts complain.

However, if there was no SGR, it would be more difficult for database producers to claim infringement to unfair competition law, as its interpretation varies much and is uncertain. The French judges take their decision almost based on ethical consideration. SGR provides a more reliable and certain legal basis than ethics.

8. Do the database producers rely on contract law in Database producers use indeed contracts to protect their addition to the sui databases. However, such contractual protection does not create generis right to any difficulty, and there is no case law in this respect (except protect the CJEU RyanAir). investment in their databases? Have there been any problems with the use The use of contracts to protect database is nevertheless of contracts as either mentioned in Court of Cassation 12th November 2015 Pressimmo an alternative to the on Ligne vs. Yakaz. However, this reference might not be sui generis right or an appropriate because there is no investigation on whether the additional layer of absence of purchase means the absence of contractual protection? Could you responsibility. give us some examples or indicate any court decision? TPMs are allowed by art L342-3-1 of the Code of PI.

9. Do database makers TPMs are used by database producers. This does not create any use technological difficulty. However, in spite of these TPMs, it is very difficult for protection measures database producers to have open access websites while (TPMs) to protect preventing their competitors from extracting their data. The only their databases and if legal problem is, in fact, the collection of evidence of data so, do they encounter problems in doing so? extraction. It is often impossible to prove that the extraction was substantial or systematic.

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Conseil d’État, 8/2/2017, Notrefamille.com v. Département de la Vienne

Notrefamille.com sued to annul a decision of a department in France (that of Vienne, 86) to prevent the reuse of archives because it claimed it has sui generis right on them. The decision of the department forbids the collection, via software which collects and systematically indexes, data which are inside the online database of the department and which contain, the entirety of the public archives of the said department which relate to civil status. The department only authorises the transfer of its digital archives if it is necessary to accomplish a public service mission.

The administrative court and then the court of appeal of Poitiers rejected its claim and thus it appealed to the Conseil d’Etat (Council of State which is the highest administrative court in France).

The Council of State allowed the appeal. It said that French law prevents a public/administrative entity to claim the sui generis right on public information. This is because the 17/7/1978 act 10. Have you says that any person can reuse such data for any reason without encountered authorisation of the public entity. The only exception to this problems with the concerns third party IP-protected documents (not the case in the interaction between case at hand). [NB: this must be the act implementing the PSI the Database directive as from the decision it seems to closely match its Directive and the PSI wording] Directive? Could you give us some PS: interestingly the claimant wanted the Conseil d’Etat to ask examples or indicate questions to the CJEU any court decision? [NB: there was also another similar case involving the same claimant]

Conseil d’État, 12/7/2017: case N° 397403 - ECLI:FR:CECHR:2017:397403.20170712

In another case, the Council of State held that information on companies held by the French national registry (// Companies House in the UK) are not covered by the sui generis right BUT it held so because the database producer did not take the initiative and risk – so here it does not apply the act of 1978. So, if such conditions could be proven by implication the Council of State would say that they can benefit from the sui generis right. It is unclear from this decision whether such registry could ever be a database producer.

Council of State (Conseil d’État) 8th Feb. 2017 Notrefamille.com vs. Departement de la Vienne.

In this case, the Council of State recognized that the department (a public administration) could be a database producer. However, its rights as a producer are limited by the Law of 14th July 1978 (CADA). It means that the public administrations that are

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database producers can, at most, request a license fee or a license for the access to their databases.

11. Have you encountered None of the experts are aware of any related problem. However, problems with the EU the Law of 7th Oct. 2016 for a Digital Republic introduces or national open exception to the rights of database producers for datamining for access policies regarding research the purpose of research. The decree applying this disposition activities? Could you remains to be adopted. However, it might not be in conformity give us some with the European law. examples or indicate any court decision? 12. Would there be more Data producer’s right is the subject of debates in France, as some or less need for sui call for the recognition of right of ownership for the technologies generis right if the EU users who create data. However, in the opinion of Prof. Larrieu, recognised a “data such a concept is more a policy discourse than a legal discourse. producer’s right” as The Council of State (Conseil d’État) dedicated its annual report proposed in the "Data to this question in 2014. According to Prof. Larrieu, there should Economy Package"? be a right of control over data than a right of ownership on data. Could you give us some examples In the opinion of Me Varet, the recognition of a data producer’s or indicate any court right will create more difficulties. decision?

13. Who is eligible to Article 341-2 protection?

14. Is it permitted to No circumvent the lawful user exception and the rights and obligations of lawful users by contract? 15. Do you consider – Lawyers have good knowledge of and experience with sui generis from your experience rights. Judges are less knowledgeable and experienced, mainly and observations – because of the organisation of justice – judges must change judges and lawyers courts regularly. Additionally, judges consider databases as sufficiently trained / something very technical. The main problem is not related to the specialised in sui Sui generis right itself, but that cumulative rights increase generis rights once confusion. litigation takes place? Are plaintiffs and defendants likewise sufficiently knowledgeable? 16. Please indicate other The familiarity of Me Varet’s clients with sui generis rights important legal issues depends on their activities, their size and their maturity. It varies in the context of to a great extent. Database Directive in the country. 17. Concluding question: a) The Database Directive has been a real achievement as it Do you think that creates a reliable legal protection. The protection of a) The Directive is an database content is nevertheless maybe too strong, effective means for achieving its goal? whereas the protection of database structure via b) Do you think that copyright may be useless (what matters is data and not it is a cost-efficient the presentation of the databases) means for b) Yes, it is a cost-efficient means, but the damages to be achieving its goal

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(consider hereby paid could be higher. the costs of legal representation, c) No opinion court fees, the duration of cases, d) The Database Directive is consistent with other pieces of etc.)? legislation c) Is it at all relevant e) Prof Larrieu appraises that the Database Directive is a for the target groups? European initiative. Me Varet believes that the Database d) Is it, in your view, Directive has an added value, as it is stronger and more coherent with reliable than the unfair competition law. There are few other pieces of decisions where the recognition of SGR could be legislation at discussed afterwards. European and national levels? e) What is the added

value of database protection being dealt with at the European level? The Database Directive provides database producers with a better protection of their investments. By doing so, it has been encouraging the creation of databases and therefore improving and easing the access to information (no database, no 18. What do you regard information). as the major benefits of the Database However, an exception for consultation is needed as well as Directive? What are exceptions for temporary copies and datamining (beyond what its major problems? France did). Weighing these, which should be the Moreover, it is still difficult to prove infringements. Should a next steps? presumption of extraction be introduced? Once a pre-defined list of criteria is fulfilled, database producers may prosecute any organisation for the infringement of their SGR, and the defendants will need to prove that they do not infringe it.

Author: Estelle Derclaye & Anna Gkogka

Review: Jacques Larrieu & Vincent Varret

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2.3 Italy General Comment: The Directive has been transposed into the Italian Copyright Act with the legislative decree 169 on the 6th of May 1999.

Issues with respect to the Country: Italy Database Directive

- Court of Pavia 21/4/97, as one of the first decisions that affirmed the possibility to protect a phonebook, being the paper expression of a database, not as a work of authorship, but as an autonomous work, separated from the single data contained therein

- Supreme Court No. 16744/08, where it was established that a mailing list cannot constitute a work under copyright law for its lack of novelty and originality

- Milan Court of Appeal of 26/6/2015 in the Ryanair ltd.- Lastminute.com S.r.l. case, in which the Court denied any authorship and sui generis right over the database related to 1. Can you give us Ryanair's search engine for flights and prices because of lack examples of key of originality and lack of substantial investments. Indeed, landmark decisions according to the Court the investments were not made to (case law) in protect the database altogether but to avoid an improper connection to the commercialization of the flight tickets offered through the Database Directive database. in your country, and why these cases have had - Civil Cassation, section I, 13/08/2015, n. 16832, the case is significance? Please about the co-ownership of a lexicon-graphic database by two consider as more editors, UTET and PARAVIA. With a shareholder’s agreement relevant the impact the co-owners agreed that PARAVIA had the right to use the of recent CJEU case database only for a scholar use whereas UTET had the right law, e.g., Ryanair to use the database for commercial business. UTET acted case, Innoweb, versus PARAVIA claiming that it extracted the information Freistaat Bayern v from the database to produce a vocabulary and a dictionary Verlag Esterbauer which were sold in newsstand in addiction to a newspaper, GmbG. thus infringing the agreement, acting unfairly and violating the sui generis rights. The Court concluded that PARAVIA infringed the terms of the contract, as it was defined by shareholder agreement.

- Court of Appeal Milan 21/11/2011

R.C.B.F. acted versus S.A.G.I. (Heraldic books editor) questioning that it had extracted and re-utilized a substantial part of the “Gold book of Italian Nobility” (Cfr. Article 8 Database Directive). The Court rejected the claim, deeming that the “Gold book of Italian Nobility” did not qualify for a creative database because the structure and selection were not original, and that no sui generis right was granted because, if a relevant investment was proven in the past, there was no proof of an ongoing investment.

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- Milan Law Court 01/08/2016

The testing activity of a social network application performed by the platform operator in violation of Article 64-ter of Italian Copyright law concerning the analysis of a copy of a computer program and the consequent launch of an application identical to the first in functionality and purpose, infringes the copyright on the database recognized to the developer of the original application, producing an anti-competitive parasitic effect.

- Tribunal, Milan 27/05/2013

It was held that a glossary might be eligible for protection.

- Tribunal, Bologna 10/08/2011

It was held that the distinction between the collective work and the sui generis right will not be always easy, i.e. one court held that a collection of anonymous SMS is a literary work because they were selected and arranged to create a sequential plot.

- Tribunal, Milan 4/11/2008

It was held that a book with mythological stories dedicated to students qualifies as a collective work.

2. Definitions:

After the transposition of the Database Directive into the Italian Copyright Act, copyright was extended to databases, which constitutes creations of mind on the choice or organization of the material. Prior of the Directive, Courts in Italy did not find that compilation like weather forecasts, stock reports, price lists qualify 54 to copyright protection.

- Please describe The notion of database is mentioned in Article 1 of Italian Copyright how the notion law ("ICL", Law No. 633 of 22 April 1941), that provides for the of database is scope of protection of copyright in Italy. Said article establishes that defined in your the law protects the authorship over creative works, including national databases, and Article 2, paragraph 9, as amended by Decree No. legislation and 169/1999 (that implemented the EU Directive 96/9), states as how it is follows: "Databases are collections of works, data or of other interpreted by elements independent from each other, systematically or courts. methodically disposed, and individually accessible by electronic systems or other ways The protection of databases cannot be extended to their content and is without prejudice to any right that exists on them."

Worth mentioning is also that works which are similar to databases

54 V Falce, ‘Italy’, in Lionel Bently (ed.), International Copyright Law and Practice (Lexis Nexis, 2017, forthcoming).

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are also protected by the Article 3 of the Copyright Act, which are defined as “collective works”. They are created from the selection and coordination of other works or parts of works for particular intention, examples of which appear to be anthologies, magazines, dictionaries, encyclopaedias, newspapers.55

Databases are regulated also in articles 64 quinquies and 64 sexies (copyright database), and in Articles 102 bis and 102 ter (sui generis database) of ICL.

Databases are protected as to the choice or the disposition of the material constituting an intellectual creation of the author (Art.1, c. 2, l.d.a). The protection of database does not extend to their content and does not prejudice the existing rights related thereto (Art. 2, c.9).

Legislation does not solve the issue of legal protection of compilation works when they cannot be qualified as databases.

- With regards to the manner in which this is interpreted by the courts, it may be worth recalling the following two decisions: The Italian courts have not interpreted the provisions concerning databases in a consistent manner. In particular there have been different approaches as to when a collective work may be considered as a database considering that, said works, are not always considered to be systematically organized as required by the definition referred to above.

On this regard see, also,

 the decision of the Court of Milan dated 19/03/2007, according to which “The databases are expressly described as protected works pursuant to art. 1, § 2, law no. 633/1941 and 2, § 1 n. 9 of the same law and defined as collections of works, data or other independent elements systematically or methodically disposed and individually accessible by electronic means or otherwise. Such elements defining a database are: a) there are several data collected; (b) such data are systematically or methodically arranged; (c) they are individually accessible by electronic means, while not finding that the data is of particular originality or scientific merit, since the database is protected as such, irrespective of the nature of its content (in application of this principle the Court qualified as a database a complex of 326 dog breeds cards containing numerous data such as photo, name, information on breed's nationality and origin, physical description, character description, usage, feed, ...)”.

 the decision of the Court of Pavia of 22 March 1997, which ruled that “subscriber lists to the national telephone network are not a database capable of being protected by the sui generis right referred to in art. 7 of Directive No. 96/9 /EC” (and not even according to copyright law) that has been quoted over and over as an example of a database definition.

55 Ibid.

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The originality requirement is the same as in the Database Directive. It has a very low threshold in Italy, i.e. grouping of data in a way that organize them country per country or per sector, qualifies as a database. The creativity in choosing and organising of data qualifies as copyright work. It should also be noted that, for the purposes of the qualification of a database as “creative”, case- law does not require that the data is of particular originality or scientific merit.

Originality is intended as the capability of the work to be considered as an expression of the personality of its author and, as such, new and original. As to databases, said aspect may be found in the choice or arrangement of the selected works (Court of Milan, 4 June 2013; Court of Bologna, 9 February 2009). For example, choosing contents with a specific and unique criterion is more likely to create an "original" database rather than a database that is organized with a usual method. For example, use of an alphabetical or chronological order is likely to exclude the originality requirement for a database (Court of Bologna, 9 February 2009).

The Court of Pavia with decision of 22 March 1997 excluded creativity for a phonebook.

The Supreme Court with decision of 19 June 2006 established that list of client names is not original and may not be protected as a copyright database. - How has originality been Court of Bologna, 9 February 2009, established that a list of understood? companies divided for practice sector may not constitute an original database.

Court of Rome, July 13, 2004, decision in which the creative database is identified as a database containing a template of epidemics of health services.

Supreme Court, Sect. III., 1 March 2012, decision n. 8011,

- the work is creative when the author made its own by establishing that it would be understood that a complex set of information to make certain operation executed to a computer; - is protected by law, not only when it is completely new, but also when it constitutes a new contribution to the computer field and develops better solutions. Court of Milan, June 4, 2013, no. 7808, in which the Court pointed out that for the purpose of evaluating creativity, it is only the choice of data and their disposition within the database to be relevant, since it is necessary to look at the elements which build the structure.

According to the so-called sui generis right, the lack of creative character does not preclude inclusion in the database if the criteria used.

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Cfr. the Decision of the Milan Court of Appeal dated 21/11/2011 [Copyright - Database - Plagiarism - Defect of the creative and original nature of the organizational structure].

The Italian legislator does not further clarify what has to be intended with the wording “substantial investment”. The scholars have argued that a database should be constituted thanks to significant expenses (for collecting and elaborating), not only from an economic standpoint, but also from an intellectual and organizational one.

As to the threshold required for the "substantial" economic investment, this is usually determined in accordance with what may be considered the normal investment for a specific sector.

The qualitative investment, instead, is usually considered sufficient if the selected contents may be considered new and original. - Does the Qualitative investment may override the lack of an economic legislation define substantial investment. Although, a minority of commenters have further the established that, from a qualitative standpoint, a minimum concept of investment is sufficient to grant the "sui generis" protection, as “substantial anything more would probably grant a copyright protection. investment”, and how do the In any event, Italian case law and doctrine is consistent in courts interpret establishing that, as provided by CJEU case law, the protection of a it in your sui generis may only be granted when the investment (albeit not country? What is that to create the data) is apparent (Court of Milan 4/6/2013). the threshold? Court of Bologna, 9 February 2009, established that a list of companies divided by practice sector (with specific details for each company) may constitute a sui generis database.

Court of Rome on 10 December 2009, which considered that the job of inserting into a database 4,000 records and that of a subsequent revision, adaptation and homogenization of collected data, requiring a consistent use in economic terms of implementation and time, integrates the relevant notion of “investment” under art. 102-bis, l.d.a.

Although Art. 19 §2 l.d.a. stipulates that exclusive rights are conferred to the author in relation to the work as a whole and to each of its parts, the partial protection cannot be extended to the point of protecting elements and parts of the work which, if taken in isolation, would lack the requisite of protection of art. 1 and 2 l.d.a.

- How did the As mentioned above, the difference between "creation" and courts apply the "collection" of data, in the Italian case law, is to be identified in the CJEU case law traceability of the substantial investment required to create a concerning the difference database (Court of Milan 4/6/2013). between creation For example, the fact that data was collected and organized thanks and collection of to a procedure carried out for commercial purposes does not data? deprive the relevant database of the sui generis right provided that the work to collect the information implied a substantial investment. The database as an autonomous value from that of its data (Appeal Court of Milan 28/1/2014).

According to the decision of the Court of Catania 8 January 2001

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the fact that the documents included in a legal search database are "public" documents does not preclude that the database may be protected by law.

The definitions/notions of the rights in our copyright provisions relating to databases are aligned with the same notions contained in the copyright law, as a matter of fact the legislator has included the rules governing databases in the copyright law. Hence, they coincide with the changes made by the Infosoc Directive.

- Are the definitions/notio The adoption of the Infosoc Directive in Italy has resulted in an ns of the rights important revision of Italian copyright law since its entry into force. and exceptions D.lgs.68/2003, in line with the provisions of Directive 29/2001/EC, in your copyright introduces an important novelty: the difference between the provisions notions of permanent and temporary copies. relating to databases Moreover, in Article 64 sexies of ICL the legislator has introduced a aligned with the specific list of exceptions that concern sui generis rights, different same notions in from those provided for authorship works in general. This your copyright distinction has created doubts as to the exceptions that apply to law as amended databases. On the one hand, some have argued that databases are by the Infosoc only subject to exceptions specifically indicated for in Article 64 Directive? sexies, such as those provided for scientific and educational purposes, or for public security. Others, instead, consider that databases should be subject also to the exceptions provided under general copyright law. Indeed, the InfoSoc Directive has modified the exceptions provided for copyrighted works and, some of said rules, would appear relevant to also to sui generis rights (for example the exception made for people with disability or for transient copies).

Harmonisation of provisions between the InfoSoc and the 96/9 Directive would provide greater uniformity and result in more legal certainty. As said above, in Italy, some rules relating to exceptions 3. Should the provided in the InfoSoc Directive have already been extended to sui copyright provisions generis rights. of the Database More specifically, Directive be standardised with ⁃ on the definition of right: The definitions are not necessary those for the because the Infosoc Directive is more general and refers itself to InfoSoc Directive, the Database Directive definitions. Cfr. Article 6 (3) InfoSoc 2001/29/EC? - on the definition Directive about the expression “techno- logical measures”. The of rights Directive clarified that it means any technology, device or - on electronic component that, in the normal course of its operation, is designed exhaustion to prevent or restrict acts, in respect of works or other subject- - on exceptions matter, which are not authorized by the right holder of any (for example, copyright or any right related to copyright as provided for by law or transient the sui generis right provided for in Chapter III of Directive copying, private 96/9/EC. Technological measures shall be deemed “effective” where copying) the use of a protected work or other subject- matter is controlled by the right holders through application of an access control or protection process, such as encryption, scrambling or other transformation of the work or other subject-matter or a copy

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control mechanism, which achieves the protection objective.

⁃ on electronic exhaustion: About this point it would be necessary. Cfr. recital 29 in the preamble to Directive 2001/29 states that the question of exhaustion does not arise in the case of services and on-line services. This also applies with regard to a material copy of a work or other subject-matter made by a user of such a service with the consent of the right holder.

⁃ on exceptions (for example, transient copying, private copying): It would be necessary because the InfoSoc Directive is very specific and clear. In fact, it regulated even transient copy [Article 5 (1)] if private copy [Art. 10] which are both not mentioned in the Database Directive and it create some problems for the practice.

4. In your practice (be A maker of the database is regarded the person who invests in the it as a defendant or constitution, verification or presentation of the database. Issues a claimant), have regarding the ownership of a database have arisen, when the Court you had problems to determine who of first Instance held that a public administration does not qualify the owner of as a database owner, because the EU and national legislation copyright was mention that just companies and firms are eligible to database 56 and/or sui generis ownership. right? The rights and obligations of maker of a sui generis database are provided at Art. 102 bis and following of the ICL. Italian case law and practice is unanimous in recognizing as the maker whomever has made the required investments to create the database, this may be an individual person as well as a company. No issues have - Have you encountered been specifically identified in this respect. problems with In the decision of the Court of Catania 8 January 2001 the Judges the definition of established that there was no point in determining if the database the “maker” of a database? could be protected by copyright law as only the company that could be considered the maker of the database but not its author. It is important to note that the right related to the database maker is not admitted to public administrations, which have no right to prevent the extraction and the reuse of the information contained in the databases that they have set up.

- Have problems arisen identifying the “maker” in cases where the person who In the interviewee’s experience, it isn’t difficult to identify the takes the maker because there are always some tracks of the investment. initiative is different from the person that takes the investment risk?

56 Trib. Roma- Sezione IP- ordinanza 5 giugno 2008 – Edizioni Cierre s.r.l. c. Poste.

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Legislation does not define further the concepts of extraction and re - utilization in Italy and essentially maintains the definitions set out in Art. 8 of Directive 96/9/CE. In particular, according to Article 102bis of the ICL:

a) extraction is 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 is any form of making available to the public all or a substantial part of the contents of a database through distribution of copies, renting of contents or through transmission by any means.

Loans from libraries and record libraries belonging to the State or to public authorities, made exclusively for purposes of cultural promotion and personal study should not be considered as an extraction nor as a re-utilization.

Under Italian case law, in accordance with CJEU case law, "extraction" will breach a sui generis right if not authorized, regardless of how it occurred (i.e. even a simple "copy and paste" action will fall within the scope of "extraction"). Moreover, it is irrelevant that the extracted content has been arranged differently from the original. Finally, for the purpose of breach of sui generis 5. Does the legislation define further the rights for unauthorized "extraction", the objective of the act (i.e. if concepts of for profit or not) is irrelevant. extraction and re - The Court Bologna on 4 July 2017 established that an agent that utilization in your country and how do modifies or eliminates information on a database that includes a list the courts interpret of clients does not breach the sui generis right as a private it? database may not be protected as a sui generis right under ICL that provides a database should be made available to the public to be protected.

In the decision of the Court of Catania 8 January 2001 that related to copying a database for case law and law texts search it was established that the fact that the classification and categorization of the documents copied from the database was different was not relevant to determine the breach of the sui generis right.

The term “extraction” has been in front of the Court of Milan, 4/06/2013, no. 7808, argues that it should be understood in a broad sense, that is to say, in relation to any unauthorized attempt to appropriate all the contents of a database or part of it, where the nature and the form of the operating mode do not concern. This term would therefore include not only permanent transfer cases but also temporary transfer cases, which is to retain data for a limited duration on another support;

The term “re-utilization” means 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. On the matter, it does not seem to me that there is a contribution from national case-law. Domestic Courts tend to refer to European case-law (cfr. CJEU 9/11/2004, C-203/02 & CJEU 19/12/2013, C-202/12)

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In general, the meaning of "substantial part" is controversial. There are two main views:

 given that the objective of sui generis database protection consists in protecting the investment made for the construction of the database, the "substantial part" of the content of a database is identified with an extraction that represents a competing database, whose disclosure would diminish the value of the database covered by the right.  from a quantitative point of view, the "substantial part" of a database is a significant percentage of the data that would have been hard to collect in other way without a significant investment. Article 102ter ICL provides for a quantitative and qualitative analysis.

- Could you In general, Italian courts carry out the "substantial part" provide us with assessment through the assistance of Court expert to determine examples of how much has been copied. what has been perceived as “substantial part”? The Court of Catania (8 January 2001) held that the analysis should be carried out from two different standpoints: from a quantitative and a qualitative standpoint. According to the first criterion, extracting an insignificant percentage (no more detail is given) of the data contained in a database will amount to a "non-substantial extraction" if, from a qualitative standpoint, the data extracted would not be sufficient to diminish the value of the database covered by the sui generis protection. This instance would occur when the extraction would be insufficient to be defined as a database in itself as it did not recreate the organization/coordination structure of the database.

The Court of Genoa (7 February 2014) established that the extraction of one photograph included in a database of photographs, does not amount to a violation of sui generis right.

According to general principles, the extraction and/or re-utilization of insubstantial part are to be considered unlawful only when such acts are repeated and systematic and imply acts which conflict with a normal exploitation of that database or which unreasonably - Could you prejudice the legitimate interests of the maker of the database. provide us with Such provision is aimed at preventing the general rule (unlawful examples of what has been extraction and/or re-utilization of substantial part) from being perceived as emptied of its contents as also transfers of database’s non- “repeated and/or substantial contents, but repeated and systematic may become systematic detrimental to the investment of the database maker. extraction/re-use of insubstantial part”? In the data-driven economy, where many business models depend on the acquisition and elaboration of non-personal and anonymised data, each form of extraction and reuse of data falls within the definition of “repeated and/or systematic extraction/re-use of

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insubstantial part”.

The Court of Rome (19 September 2013) ruled that a company that managed paid databases for consultation of data relating to judicial sales had violated the sui generis right of a database through the unauthorised extraction, re-utilization, publication and use of documents and texts from the latter. Indeed, even though each individual extraction could not be considered as a "substantial part" of the database, the repeated violations together would amount to a breach of the rules in subject.

The Database Directive provided for exceptions to the copyright database and the sui generis database, but only the former exceptions were mandatory.

In this respect, Legislative Decree No. 169 of 6 May 1999 (which implemented Directive 96/9/CE) did not provide for specific exceptions just for the sui generis database, providing exceptions to copyright database rights (art. 64-sexies, parag. 1, lett. a) and b) of ICL).

Regardless, several scholars argue that the above-mentioned copyright exceptions would apply to both the copyright and the sui generis database as they are based upon general principles of our legal system and should therefore be applied by analogy.

6. How far have Under Art. 64-sexies of ICL, in line with the provision for copyright exceptions been database in the Directive, there is no need of the authorization of implemented and the database author, for: how have they been interpreted by a) access or consultation of the database for exclusive educational courts? and scientific purposes, as long as the source is indicated and to the extent justified by the non-commercial purpose to be achieved; b) utilization of a database for the purposes of public security or an administrative or judicial procedure.

There is no need for the authorization of the database author also in case of temporary or permanent reproduction by any means and in any form, in whole or in part; translation, adaptation, arrangement and any other alteration; any form of distribution to the public of the database or of copies thereof; any communication, display or performance to the public when such activities are necessary for the access of the database content or its normal use.

Whilst the protection of copyright is justified by constitutional principles, however, said rights, limit other constitutional. - In your view, Therefore, the scope they cover must be determined through a which exceptions balance with these rights. In this context, exceptions may serve a are needed to fundamental purpose (e.g. freedom of expression, public security, the sui generis research and study etc.), as long as carried out only to the extent right? necessary.

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Art. 5( 1) of Directive 2001/29 / EC provides that temporary acts of reproduction which are transient or incidental [and] an integral and essential part of a technological process and whose sole purpose is to enable:

(a) a transmission in a network between third parties by an intermediary, or

(b) a lawful use of a work or other subject-matter to be made, and which have no independent economic significance, shall be exempted from the reproduction right.

- Do difficulties The standard of such rule refers to a series of technical and arise from the functional conditions that have been applied by the jurisprudence of absence of a the Court of Justice. In the analysis of the Court, particular provision for emphasis was given to the transitional nature of the reproduction temporary that is the one most dependent on the contingencies of technology. copying (Article It seems, however, that beyond the technological characteristics of 5(1) of Directive reproduction, which in itself could be satisfied with the adoption of 2001/29/EC)? more advanced IT solutions suitable for ensuring temporariness and automaticity, attention should be paid to the function of the rule which is to exempt from the control of the holder acts that facilitate surfing the net and making cached copies; including the acts that facilitate the effective operation of transmission systems and therefore acts that are in mere relationship of "technological instrumentality" with legitimate use.

In this context, such an exemption could be useful also for database although, in our experience, no particular concerns have been raised in Italy in this respect.

- How is the user’s It is common ground that the sui generis right does not extend to “right of the prevention of consultation, to avoid infringing the right of consultation” access to information. The protection of said right would fall within secured in your the exceptions provided under Art. 64 sexies ICL. Member State? The concept of "lawful user" is referred to in Art. 64.2 sexies. The lawful user is considered as anyone who has acquired from the right holder a database whose initial release or reproduction took place on the initiative or with the consent of the author, but with the imposition of subjective or territorial constraints to alienation.

- Do you think In this respect issues usually arise not for who has obtained the that the concept work directly from the right holder (provided that the contract of lawful user is defines the legitimate use) but for whomever has acquired the work sufficiently from third subjects. Firstly, the rights of said third party may not be understood in determined with certainty. Secondly, the conditions of legitimate your country? use agreed to by the right-holder would not bind third parties.

The Court of Bologna further specified, with decision 9 February 2009, the legitimate use concept clarifying that this cannot refer to instances in which the extraction was made for the purpose of a new database to be placed on the market.

7. In your Member Italian case law is consistent in providing that the unauthorized use State, are database of database constitutes an act of unfair competition pursuant to Art. creators free to rely 2598 of the Italian Civil Code ("ICC") provided it was carried out by on the law of unfair a competitor (Court of Bologna, 9 February 2009). competition to protect databases? The decision of the Court of Pavia, 21 April 1997, affirmed the Are there any possibility to protect a phonebook as paper expression of a problems with this database, not as a work of authorship, but as an autonomous work,

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as an alternative to separated from the single data contained therein. The Court also the sui generis right established that the extraction and reutilization of said database (were the latter to amounted to a conduct of unfair competition. be abolished)? Could you give us some examples or indicate any court decision? 8. Do the database producers rely on contract law in addition to the sui generis right to protect the investment in their They can do it. For example, with judgment no. 16832 of 13 August databases? Have 2015, the Supreme Court ruled on a case of copyright infringement there been any on a lexical information database common to two publishers, whose problems with the use of contracts as exploitation had been governed by a special shareholders' either an agreement, with the prediction of their respective licenses (UTET alternative to the and PARAVIA case). sui generis right or an additional layer of protection? Could you give us some examples or indicate any court decision? 9. Do database makers use on technological The major types of TPM want to prevent illicit activities by a user protection who has access to the work but should also enable any legitimate measures (TPMs) to use provided by law. protect their databases and if so, do they encounter problems in doing so? 10. Have you encountered problems with the The sui generis right in Italy is applicable also to public sector and interaction between the public authorities and we have in Italy a peculiar provision in the Database Directive and the Antitrust law. According to Antitrust law, where a company of public PSI Directive? sector perform commercial activities have to make available all the Could you give us information to their competitors. some examples or indicate any court decision? 11. Have you encountered problems with the I have never encountered any problem with the EU or national open EU or national open access policies. Research activities are really well protected by access policies domestic and also European’ law. Moreover, the research activities regarding research are one of the exceptions foreseen by the directive. Of course, it activities? Could requires the references to be listed, otherwise we would fall into you give us some plagiarism. examples or indicate any court decision?

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"Data producer's right": A right to use and authorise the use of non-personal data could be granted to the "data producer", i.e. the owner or long-term user (i.e. the lessee) of the device. This 12. Would there be approach would aim at clarifying the legal situation and giving more more or less need choice to the data producer, by opening up the possibility for users for sui generis right to utilise their data and thereby contribute to unlocking machine- if the EU recognised generated data. However, the relevant exceptions would need to be a “data producer’s clearly specified, in particular the provision of non-exclusive access right” as proposed in the "Data to the data by the manufacturer or by public authorities, for Economy Package"? example for traffic management or environmental reasons. Where Could you give us personal data are concerned, the individual will retain his right to some withdraw his consent at any time after authorising the use. Personal examples or data would need to be rendered anonymous in such a manner that indicate any court the individual is not or no longer identifiable before its further use decision? may be authorised by the other party. Indeed, the GDPR continues to apply to any personal data (whether machine generated or otherwise) until that data has been anonymised"

13. Who is eligible to The provisions of the Database Directive apply. protection?

14. Is it permitted to circumvent the lawful user exception and the No rights and obligations of lawful users by contract? 15. Do you consider – from your The interview partners consider judges and lawyers highly experience and specialized due to the fact that modern times have brought lawyers observations – to focus on a specific topic and become more and more judges and lawyers knowledgeable to all branches related to the chosen topic. On the sufficiently trained / contrary the entire sui generis right case-law is quite recent and specialised in sui often changing, this could mean that plaintiffs and defendants are generis rights once not so informed and knowledgeable as they would be on different litigation takes topics. place? Are plaintiffs and defendants likewise sufficiently knowledgeable? 16. Please indicate One issue that is very important in Italy is antitrust law. Data have other important a great value and if you can collect the data and use them in a legal issues in the certain way then it is created a barrier to other competitors. context of Database Directive in the country. 17. Concluding question: Do you think that a) We had before the Directive, a protection for database eligible to f) The Directive is be perceived as copyright works. But there were many discussions an effective about it regarding various aspects, i.e. originality, etc. And the means for database directive made things clear and the most valuable thing is achieving its that. What the interview partners would prefer though is just the goal? copyright provisions. The sui generis right may enhance excessive g) Do you think and unnecessary barriers to competition in the data economy. On that it is a cost- top of that, we do not see any big difference between the US and efficient means the EU regarding the investment on databases. for achieving its goal (consider b) The interview partners claimed that the results are not that

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hereby the costs obvious and the impact not that important. of legal representation, c) Indeed, it is relevant, due to the fact that a change could mean a court fees, the more efficient and appropriate management of database duration of information and reductions in expenses. cases, etc.)? h) Is it at all d) Yes, but there is a debate of private use copy exception. relevant for the target groups? e) The added value of the Directive could be seen in relation to i) Is it, in your clarification of various notions, as previously expressed under (a). view, coherent with other pieces of legislation at European and national levels? j) What is the added value of database protection being dealt with at the European level?

The major benefits of the Database Directive are the standardization of the originality/creativity threshold.

There is no problem, if we see the case law in Italy it made things clear. It is important for the alignment of case law. The Database Directive is also very crucial for companies operating in more than 18. What do you regard one Member States. as the major benefits of the As for the next steps, it was proposed by the interview partners Database Directive? that copyright in databases should remain part of the Member What are its major States legislation. However, the sui generis right protection should problems? Weighing be reduced in order to avoid overprotection. Some other proposed these, which should next steps were: be the next steps? Introduction of compulsory licenses.

Introduction of registration for databases covered by the sui generis right.

Introduction of the CJEU case law in the Directive.

Author: Anna Gkogka

Review: Valeria Falce & Luigi Mansani

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2.4 The Netherlands General Comment: The Directive has been transposed into the Netherlands by a separate piece of legislation, the Dutch Database Act, which has been published on the 20th of July 1999.

Issues with respect to the Country: The Netherlands Database Directive

 Nederlandse Vereniging van Makelaars in Onroerende Goederen en Vastgoeddeskundigen NVM v Zoekallehuizen.nl (unreported July 4, 2006) (RB (Arnhem)) The appellate court confirmed the decision of the district court. It considered the database as a spin-off from their main activities since the main activity of the real estate agents is to conduct research on the available properties. It was held that the data were already collected, and the website is a tool of every respectable entrepreneur. In this respect, the database for which protection was sought did not meet the substantial investment criterion and the database was not eligible for copyright either.

1. Can you give us  Wegener CS v Hunter Select BV (Unreported, November examples of key 27, 2002) (Hof (NL)) landmark decisions It was held that the job vacancies advertisements section of a (case law) in connection to the newspaper is qualified as a database, and the individual parts of a Database Directive in database could be themselves regarded as a database, if fall your country, and within the definition of Art. 1 (1) (a) of the Directive. It was why these cases have further held that substantial investment has been made in the had significance? printed advertisements for “typesetting and data processing” and Please consider as “automation” with respect to the PCM newspapers and for the more relevant the “layout of the advertisements and the page plus inspection” and impact of recent CJEU of “typesetting” with respect to the Wegener newspapers. The case law, e.g., court considers also that 50 out of 90 advertisements constitute a Ryanair case, substantial extraction and reutilization within the meaning of Art. Innoweb, Freistaat 2 of the Database Act. Bayern v Verlag Esterbauer GmbG.

 NVM v Telegraaf NV (ElCheapo.nl) (Unreported, March 22, 2002) (HR (NL)) The Supreme Court clarified that it is not foreseen to involve a separate investment for each purpose of your database in order to qualify for protection under the sui generis regime. Moreover, it was held that the substantial investment is extended to investments in the collection and arrangement of data as such. Thus, the fact that the database was primarily used internally between the brokers does not mean that the same database is eligible for protection under the sui generis regime when it is made available online to the public.

 Innoweb B.V. v Wegener ICT Media B.V., Wegener Mediaventions B.V. (C-202/12) (19 December 2013) (CJEU)

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The Supreme Court decided to stay the proceeding and to refer to the CJEU for a preliminary ruling. The facts were the following, the operator of a web-site, www.autotrack.nl, advertising 40,000 second hand cars for sale, brought an action against a meta- search engine dedicated to car sales, www.gaspedaal.nl, which offered the user improved search facility over a number of sites that included the Autotrack site, and resulted in 100,000 searches per day. The CJEU found that this was a making available of the whole database, and thus a reutilisation, irrespective of the actual number of results actually found and displayed for every query keyed. In so holding, the Court recognised that the effect of the system was that users would not need to go to the claimant’s site, thereby reducing its attractiveness to advertisers, so the commercial effect was similar to creating “a parasitical competing product …, albeit without copying the information stored in the database concerned.”

 Ryan Air Ltd v PR Aviation BV (Case C-30/14) (15 January 2015) (CJEU) The Supreme Court decided to stay the proceeding and to refer to the CJEU for a preliminary ruling, relating to the application of the Directive to contracts governing use of unprotected databases. By the terms of its grant of access to its website, Ryan Air contractually prohibited third parties from scraping the website. While such a contract relating to a protected database might have been regulated by the Directive, the Court found that if the website was neither original nor a product of substantial investment, the Directive was inapplicable. As a result, though websites and other collections of material might fall within the definition of a database, if they (or parts of them?) are not intellectual creations or products of substantial investment, they are entirely outside the regulatory scope of the Directive.

 The Court of Appeal of Amsterdam decision on 22 November 2016 in the case of Pearson v Bar Software gives an example of potentially conflicting guidance. The decision appears to be a conflict with the earlier CJEU ruling in the Ryanair case (which ruled that the Database Directive does not apply to databases that are not protected by copyright or the sui generis right. In such a case it was suggested that the owner of a database could limit the rights of users under contractual terms without considering the provisions of Articles 6(1) and 8 of the Directive (which provisions give users of a database several rights that cannot be restricted by contract)). The Pearson decision appears to suggest that contractual provisions in a database manual requiring users to get consent from the owner for certain uses were not enforceable - even though the database in question was held to be an unprotected database in IP terms (because (a) the database lacked personal influence and no creative choices for selection of data had been made and (b) no protection was relevant under Article 7 - sui generis right, as no substantial investment had been made).’

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2. Definitions

In general, Dutch copyright law provided a special regime for written works, deriving from the Dutch Supreme Court and stands for the interpretation of the expression “other writings”.57 This regime covers non-original works which have been published or are destined to be published.58 The non - original databases, which do not fulfil the criteria for sui generis protection due to the lack of substantial investment in the obtaining, verification or presentation of the contents, have been included in the written - Please describe works regime.59 The EU conformity of this regime has been how the notion of questioned several times, as it is not in line with the European database is framework and it is now abolished. defined in your national legislation However, the Database definition is in full conformity with and how it is Directive, which stands for a “collection of independent works, interpreted by data or other materials arranged in a systematic or methodical courts. way and which are individually accessible by electronic or other means and for which the acquisition, control or presentation of the contents, evaluated qualitatively or quantitatively, bears witness to a substantial investment”.

The originality requirement is not defined in the Dutch Copyright law. However, it is defined in several court decisions by making use of a twofold test. According to the Dutch Supreme Court, the work must have an “own, individual character” and “bear the - How has originality personal stamp of the author”, in order to fulfil the originality been understood? threshold. 60

- Does the legislation define The Dutch Courts have tended to interpret the substantial further the concept investment requirements rather restrictively, elaborating the of “substantial spin-off doctrine.61 Under this doctrine, a database does not show investment”, and any substantial investment if it derived from an enterprise’s main how do the courts activity, e.g. telephone directory by a telecommunication service interpret it in your provider.62 country? What is the threshold?

57 Lucie Guibault and Andreas Wiebe (ed), Safe to be open; Study on the protection of research data and recommendations for access and usage, p. 60. 58 Ibid. 59 Ibid. 60 M. van Eechoud, P. Bernt Hugenholtz, S. van Gompel, L.Guibault, and B. van der Sloot, ‘Dutch report’, ALAI Study Days, Dublin, June 2011, p. 1. 61 Lucie Guibault and Andreas Wiebe (ed), Safe to be open; Study on the protection of research data and recommendations for access and usage, p. 65. 62 NVM v. De Telegraaf, decision of the Supreme Court of the Netherlands, 22 March 2002. Case C01/070HR.

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- How did the courts The Dutch Courts have followed the CJEU dichotomy between the apply the CJEU creation and collection of data and they ask for clear evidence in case law order to conclude that substantial investment has been made for concerning the the creation of the database.63 difference between creation and collection of data? - Are the definitions/notions of the rights and exceptions in your copyright All exceptions from the database directive are transposed into the provisions relating Dutch Database Act. to databases

aligned with the same notions in your copyright law as amended by the Infosoc Directive? 3. Should the copyright provisions of the Database Directive be standardised with those of the InfoSoc Directive, 2001/29/EC? Yes, it is very important to achieve this harmonisation. - on the definition of rights - on electronic exhaustion - on exceptions (for example, transient copying, private copying) 4. In your practice (be it as a defendant or a claimant), have you had problems to N/A determine who the owner of copyright was and/or sui generis right? The Dutch Database Act is referred to the “maker” and to the investment risk, defining as producer “the person who bears the - Have you risk of investment for the database”. Commentators in the encountered Netherlands state that the sui generis right: „should only be problems with the conferred as a reward for the risks taken by the innovating definition of the industry which actually produce the databases, not the “maker” of a commissioning parties”.64 However our interview partners database? underlined that there is an issue with commissioning situations and automated databases, which are addressed by contract law.

63 Lucie Guibault and Andreas Wiebe (ed), Safe to be open; Study on the protection of research data and recommendations for access and usage, p. 65. 64 A. Beunen, Protection for databases – The European Database Directive and its Effects in the Netherlands, France and the United Kingdom, Nijmegen, Wolf Legal Publishers, 2007, p. 150.

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- Have problems arisen identifying In the Netherlands, the “maker” is the person who takes the the “maker” in investment risk. The person who takes the initiative does not cases where the qualify for protection according to the current database act. person who takes However, it would be a good idea to regulate the commissioning the initiative is situations according to one interview partner. different from the person that takes the investment risk? 5. Does the legislation define further the concepts of extraction The Dutch Database Act just transposed the text of the Directive, and re - utilization in without amendments. your country and how do the courts interpret it?

- Could you provide us with examples There is not that much case law in the Netherlands on the topic. of what has been

perceived as “substantial part”? - Could you provide us with examples of what has been perceived as There is not that much case law in the Netherlands on the topic. “repeated and/or

systematic extraction/re-use of insubstantial part”? The Dutch Copyright Act contains a chapter devoted to exceptions from section 15 to section to section 25a. The most related to the Database Directive are the right of quotation (Article 15a), the right to use works communicated by or in behalf of a public authority (Article 15b), and the educational use exception (Article 16). More specifically, the educational use exception foresees three additional criteria:

“1. The work quoted from has been lawfully disclosed to the public; 6. How far have 2.The quotation is in accordance with what is generally regarded exceptions been as reasonably acceptable and the number and size of the implemented and how have they been quoted parts are justified by the purpose to be achieved; interpreted by courts? 3. Moral rights have to been observed

4. The source, including the author's name, is clearly indicated, insofar as this is reasonably possible.”

It is rather known though that educational users have always been permissible in the Netherlands, provided that they have paid a permissible remuneration to the rights owners.65

65 Lucie Guibault and Andreas Wiebe (ed), Safe to be open; Study on the protection of research data and recommendations for access and usage, p. 64.

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Moreover, the Dutch Database Act transposed the exceptions from the Database Directive into the Article 5 of the Act, as follows:

“The lawful user of a database which is made available in any way to the public is allowed without the permission of the producer of the database a substantial part of the contents of the database:

1. extraction for private purposes, provided that it is a non- electronic database; 2. retrieval purposes of illustration for teaching or scientific research, source and extent justified by the non- commercial purpose; 3. retrieval or reuse for public safety or as part of an administrative or judicial procedure.”

On top of these exceptions, the Database Act encompasses in Article 8(2) another one similar to Article 15b of the Dutch Copyright Act, which states that:

“The right, referred to in Article 2, paragraph 1 shall not apply to databases for which the public authority is the producer, unless the right is expressly reserved either in general by law, order or resolution or in a particular case as evidenced by a notification in the database itself or when the database is made available to the public.”

- In your view, which exceptions All the applicable exceptions in the InfoSoc Directive. are needed to the sui generis right? - Do difficulties arise from the absence of a provision for Yes, in the context of text and data mining. This exception should temporary copying be mandatory. (Article 5(1) of Directive 2001/29/EC)? - How is the user’s “right of consultation” N/A secured in your Member State? - Do you think that the concept of There is discussion among producers to include some clauses in lawful user is the terms of use. If so, it will be vague, and it is not clear if it is sufficiently desirable. understood in your country? 7. In your Member State, are database creators free to rely on the law Yes, they are free to rely on unfair competition, but the success of unfair competition rate is low. Most of the time, they use the unfair competition, in to protect databases? case that the sui generis right claim does not hold in court. Are there any

problems with this as an alternative to the sui generis right (were

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the latter to be abolished)? Could you give us some examples or indicate any court decision?

8. Do the database producers rely on contract law in addition to the sui generis right to protect the investment in their databases? Have there As we saw from the Ryan Air case, a lot of producers rely on been any problems with the use of contract law. Contract law could be a sufficient way to protect contracts as either an databases. alternative to the sui generis right or an additional layer of protection? Could you give us some examples or indicate any court decision?

9. Do database makers use on technological protection measures . Both interviewees consider the role of TPMs as important. (TPMs) to protect their databases and if so, do they encounter problems in doing so? An issue was created in the Netherlands regarding the interpretation of the public-sector information reuse, which was addressed by the District Court of Amsterdam. More specifically, a private company requested environmental information from local authorities, which contained among others a list of addresses where soil research had taken place. The arisen question was 10. Have you encountered whether the authorities could impose restrictions on the re-use of problems with the the list of addresses. According to the Public Administration Act interaction between (Article 11a sub 1a) are imposed two conditions on public bodies’ the Database Directive ability to rely on the reuse regulation: and the PSI Directive? Could you give us some examples or indicate any court (1) The existence of a database decision? (2) The public-sector body should be considered as the producer.

The Court held that the collection of data occurred in the performance of its public task and with the support of governmental subsidies, so the City Council did not qualify as a database producer, because it did not actually bear the risk of the

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investment. The intention of the database was to simplify the public task of the local authorities.66

11. Have you encountered problems with the EU or national open The interviewees think that protected material can be open if the access policies right holder permits this. However, the open license permits any regarding research reuse. Hence, the sui generis right and copyright provisions are activities? Could you an obstacle to this. give us some examples or indicate any court decision? 12. Would there be more or less need for sui generis right if the EU recognised a “data The ‘data producer’s right’ would go far beyond any protection producer’s right” as currently offered by EU copyright law, including the sui generis proposed in the "Data right. It would violate the idea of intellectual property law that Economy Package"? data as such are not protected by copyright. Could you give us some examples or indicate any court decision?

13. Who is eligible to Art. 7 protection?

14. Is it permitted to circumvent the lawful user exception and the No rights and obligations of lawful users by contract? 15. Do you consider – from your experience and observations – judges and lawyers sufficiently trained / Yes, in the Netherlands our interviewees do not see any problem specialised in sui generis rights once in that respect. litigation takes place? Are plaintiffs and defendants likewise sufficiently knowledgeable? 16. Please indicate other important legal issues in the context of They were covered by the questionnaire. Database Directive in the country.

66 ABRvS 29 April 2009, n 07/786, AMI 2009-6 (College B&W Amsterdam/Landmark; with annotation from M. Van Eechoud).

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17. Concluding question: Do you think that k) The Directive is an effective means for achieving its goal? l) Do you think that it is a cost-efficient means for achieving its goal (consider hereby a) Both interviewees were quite reluctant to see the the costs of legal effectiveness of the Directive. representation, b) As for the cost, they did not have a clear view. court fees, the c) They did not have a clear view on that either. duration of cases, d) They also did not consider the Directive coherent with the etc.)? other pieces of legislation. The basic issues are in relation m) Is it at all relevant to InfoSoc and DSM Directive. for the target e) The added value of the Directive is the harmonisation groups? across the EU. However, there was no consensus between n) Is it, in your view, the interviewees on whether the investment should coherent with continue to be perceived as important as copyright. other pieces of legislation at European and national levels? o) What is the added value of database protection being dealt with at the European level? 18. What do you regard as Apart from the harmonisation, the interviewees do not see any the major benefits of major benefit. As problems of the Directive has been perceived the Database the vague concepts like database maker, lawful user, substantial Directive? What are part, substantial investment and the exceptions. As for the next its major problems? steps, one interviewee stated that the database regime should be Weighing these, which abolished and the other one to keep it the way it is, since it has should be the next not created any important issues. steps? Author: Anna Gkogka

Review: Annemarie Beunen & Dirk Visser

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2.5 Poland General Comment: Poland implemented the Database directive through enactment of the Act on the protection of databases dated 27 July 2001 (hereinafter referred to as "APD")

Issues with respect to the Country: POLAND Database Directive

INITIAL REMARK:

Please see below, how Polish courts were developing and interpreting database notion as presented in point 1. of answer no. 2.

 Appellate Court 2.05.2012 r.,I ACa 105/12. The claims were based on Art. 6 ust. 1, Art. 8 ust. 2, Art. 11 ust. 1 of the Polish Law on databases protection. 1. The fact that both parties used the same selection criteria does not mean that the defendant took over a significant part of the plaintiff's database. Selection according to specific criteria is determined by the type of an offer. Because of the 1. Can you give us lack of the important elements of the sales offer the database examples of key used by the defendant was irrelevant and incomplete. The landmark decisions (case defendant was not able to create a competitive database to the law) in connection to the plaintiff’s databases. Thus, it is not possible to establish that Database Directive in significant part of database was used. It means that this part of your country, and why the database cannot be protected. these cases have had significance? Please 2. Despite the fact that the significant investment incurred by consider as more the database manufacturer is not subject to sui generis relevant the impact of protection, but it is its main objective. Therefore, when recent CJEU case law, interpreting the term "significant part" of the database, it is e.g., Ryanair case, justified to consider a significant investment, which however Innoweb, Freistaat does not mean that an equal sign should be automatically Bayern v Verlag placed between the meaning of "significant investment" and Esterbauer GmbG. "significant part of the database content" as essentially designating the same part of the database data.

3. Part of the contents of the database can be considered significant if unauthorized use threatens serious damage due to the amortization of expenses incurred by the producer. The use of an insignificant part can be considered as entering into the sphere of sui generis right, it must be contrary to normal use and, at the same time, cause unjustified violation of legitimate interests of producers, both of these conditions must be met jointly.

2. Definitions

Pursuant to APD, database is a set of data or any other a) Please describe how materials and elements gathered in accordance with a specified the notion of system or method, individually available in any way, including database is defined by electronic means, requiring significant investment outlays, in your national whether in terms of quality or quantity, in order to compile, legislation and how it verify or present its contents. is interpreted by

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courts. a) In judgement of 5 February 2015 (VI ACa 531/14), Appellate Court in Warsaw decided on the criteria to distinguish computer program (software) and database; it pointed out that these were separate, albeit functionally connected, intellectual goods, each of which might constitute an independent object of trade and protection. At the same time, it found it impossible to share the position of the regional court, which seemed to indicate that the computer program used to edit the database was a part of it.

◦ Another judgement of 4 December 2012 (I ACa 816/12) rendered by Appellate Court in Łódź also concerned the distinction between software and database. Court decided that there was no reason to assume that converting dictionaries from a classic version into a digital version caused them to lose the status of the database and transform into a computer program. To define the notion of "originality" prerequisite let me present a short overview of its meaning under Polish law.

The expression of creative activity is often referred to as "originality" and the requirement of individual character referred to as 'individuality', which together forms a notion of "creative work".

Creativity - so understood - is always a manifestation of the individual approach and consequently results in a unique result, regardless of the magnitude of the originality of the result and its usefulness or value.

As regards 'originality', Polish courts (following the approach taken by US Supreme Court in The Feist v. Rural decision), commonly assume that the condition of originality not only means that the given database was created independently by the author and not copied from someone else's work, but must also represent at least a certain level of creativity, i.e. the work of alphabetical arrangement of names, addresses and telephone numbers does not satisfy this requirement. Such choice of data does not appear to exhibit even the slightest b) How has originality 'creative spark' which shall exhibit particularly in selection, been understood? arrangement or composition of data. All the above-mentioned court decisions referred to the definition of database. The most significant one was rendered by Polish Supreme Court in 2009 (V CSK 337/08) where it decided that when assessing the degree of individuality of a particular product of the intellect, the type of work should be considered. The court assumed that other premises decide in case of a literary work (f.eg poetics of a language, selection of stylistic means and versioning), and others in reference to works of a reference nature. In the latter case, the choice of vocabulary and syntax should be considered, as well as the arrangement of individual issues presented in the framework of the study and the way of formulating the subheadings. For the evaluation of a particular reference work, the concept of the so-called statistical disposability, which assumes the examination whether the same or very similar work has already been created and whether it is statistically likely to produce the same work in the future by another person.

In 10 August 2007 (CSK 228/07), The Supreme Court (paying attention to the nature of the phone book as a database) aptly emphasized the possibility of flexible presentation of data when

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sorting and grouping. The obviousness of ordering data according to the alphabet, industry and location did not, however, allow assigning to such a system the feature of individual character and creativity. It could not also have been a creative activity to switch from local to national books, having been a simple implementation of the undertaking on a larger scale.

The Supreme Court in 25 January 2006 decided that the requirement of novelty was not an indispensable feature of creativity as a manifestation of intellectual human activity. A work within the meaning of art. 1 of the Act of 4 February 1994 on Copyright and might have been a compilation using data that was generally available, provided that the selection, segregation and presentation were original.

In 15 November 2002 (II CKN 1289/00), the Supreme Court was resolving on the creative character of Polish Dictionary. It eventually assumed that the development of the password grid, the mode of defining passwords and the composition of difficult words (lexemes) were a manifestation of the creative activity of the authors of the Polish dictionary within the meaning of art. 1 of the Act of 4 February 1994 on copyright and related rights.

Legal practitioners and legislators mostly rely on the EU development of this concept (primarily Fixtures Marketing case c) Does the legislation C-46/02 and C-444/02 or The British Horseracing Board case C- define further the 203/02), nevertheless the doctrine clarifies that the 'substantial concept of investment' as outlined in Art. 2 sec. (1) (1) of the APD does “substantial not refer to the costs of obtaining certain information. Hence, it investment”, and cannot be included, for example, in the funding of research how do the courts leading to a specific discovery or other scientific findings - later interpret it in your included in a database. country? What is the threshold? It is also assumed that each case should be assessed individually; no threshold or limit values were set out.

As is apparent from the research we conducted, the Polish courts have not yet approached this matter in the available body of law. d) How did the courts apply the CJEU case Nevertheless, the said CJEU cases (in particular The British law concerning the Horseracing Board case) have been subject to doctrine's difference between evaluation and critique, especially in respect of the disturbed creation and balance between the database producers and its users (since collection of data? the CJEU refused the protection for the database producers who bore costs of database creation instead of its collection – so called single-source database concept).

e) Are the The provisions concerning copyright protection of database are definitions/notions of included into the main legal act on copyright, i.e. Act on the rights and Copyright and Related Rights of 1994, which means that APD exceptions in your does not regulate copyright matters and merely stipulates copyright provisions provisions for sui generis right. relating to databases aligned with the same notions in your copyright law as amended by the Infosoc Directive? 3. Should the copyright  Polish legislator decided to incorporate the copyright provisions of the provisions of the Database Directive into the general act on Database Directive be copyright (see below). Nevertheless, even though the

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standardised with those definition of database copyrights and these of InfoSoc are for the InfoSoc Directive, corresponding, the decision to enclose in one legal act both 2001/29/EC? levels of database protection (copyright protection and sui - on the definition of generis rights), has clarified the status of database, allowed rights comparisons and regulated the database issues in - on electronic comprehensive and exhaustive manner. exhaustion  since the doctrine of exhaustion of digital works appears to - on exceptions (for be a matter of controversy, it is commonly postulated that example, transient the doctrine has been expressly regulated on the level of copying, private InfoSoc Directive in order to allay the legal uncertainty. copying)  the harmonization of the exceptions could surely contribute to its clarification and better understanding, especially for consumers who enjoy the privileges resulting from these exceptions on a daily basis. Notwithstanding an incontestable advantage of such "standardisation" for users, it should be emphasised that European legislator reasonably separately regulates certain subjects of copyright protection, in order to distinguish the divergences between particular modes of artistic creation.

4. In your practice (be it as We have not yet handled such case where the copyright owner a defendant or a was undetermined. claimant), have you had problems to determine who the owner of copyright was and/or sui generis right? In practice and legislation, it is recognized that a person who bears the investment risk shall be considered database maker (APD expressly states that database maker is a person who - Have you bears the investment risk, a provision which has been widely encountered criticized for incompliance with EU definition). problems with the definition of the The so called "co-production" in database making is also “maker” of a accepted, based on a conviction that the division of database? responsibilities cannot be excluded. However, if the individual stages of a given database are not co-ordinated by the

manufacturers of the various stages then each of them has a sui generis right to the relevant part of the database (and provided that such part is extracted from the entire database in accordance with the features specified in APD).

The doctrine puts emphasis on the prerequisite that "taking - Have problems initiative" or "contributing substantively" to database making arisen identifying the cannot in itself prejudge the recognition of database maker. “maker” in cases APD expressly requires for recognition of database maker to where the person bear the investment risk. who takes the initiative is different Moreover, APD states a legal presumption that manufacturer is from the person that a person whose name or company (name) is shown on the takes the investment copies of the database or whose name or business name risk? (name) is made public in any other way to distribute the database.

5. Does the legislation The doctrine only indicates that both extraction and re- define further the utilization do not apply to the single, disordered data. concepts of extraction and re - utilization in your country and how do the courts interpret it? ◦

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The concept of substantial (and the opposite: insignificant) parts of the database, by its imprecise nature (as well as the - Could you provide us notion of "substantial investment") entails considerable with examples of uncertainty as to the definition and to the scope of protection. what has been Let us note that the requirement to use a substantial part of perceived as database is sometimes compared to a copyright criterion of “substantial part”? acquisition of individual elements from work (which forms a legal line between the derived work and inspired work).

Primarily, the scholars accentuate that the application of this rule must be made considering the circumstances of a specific case.

- Could you provide us In general, the concept can be understood as such acts of with examples of exploitation of the whole or of significant part of the database, what has been which are not occasional or ad hoc (more broadly: not perceived as frequent). On the contrary, it occurs regularly or from time to “repeated and/or time, even at irregular intervals, but with certain intensity. It is systematic also characterized by regularity, i.e. logic and certain extraction/re-use of arrangement regarding: the subject they cover, the purposes insubstantial part”? they serve and finally; the means or methods of their implementation. Therefore, repeated and/or systematic extraction/re-use of data without the regularity of particular elements of these activities will not in itself constitute a violation of this principle.

In Polish Act on copyright, almost all of exceptions (as indicated in InfoSoc Directive) which apply to artistic work equally relate to database. Only two exceptions are excluded towards 6. How far have exceptions database, i.e. one which permits including disseminated minor been implemented and works or excerpts from larger works in textbooks, readers and how have they been anthologies for teaching or scientific purposes (Art. 271) and interpreted by courts? another which provides for permitted public use of works by libraries, archives and schools for non-commercial purposes (Art. 28).

Some jurists and specialists assert that the exclusion of so - In your view, which called "private use" towards electronic database was directly exceptions are taken from the similar regulation set for the protection of needed to the sui computer programs. Nevertheless, it turns out that in this area generis right? of operation, users' privileges suffer a substantial reduction compared to the use of other types of work.

- Do difficulties arise This issue has not yet been approached by doctrine or courts. It from the absence of may result from the fact that most of the matters related to sui a provision for generis right are regulated by license agreements which in temporary copying details determine the scope of users' rights. (Article 5(1) of Directive 2001/29/EC)? - How is the user’s Polish doctrine recognizes that one-off or occasional use of a “right of database to establish or verify certain information does not consultation” constitute sui generis right infringement as such action does not involve the need to multiply the entire database (including secured in your electronic database). Member State?

- Do you think that the At this point, it appears that Polish legislator was not fully concept of lawful consistent with EU Directive while defining a concept of lawful user is sufficiently user. Namely, art. 7 of APD provides the right of extraction and understood in your re-use of insubstantial part of database for "a user who lawfully country? uses such database", while subsequent art. 8 which provides

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for exceptions to sui generis right does not define lawful user, i.e. implicitly authorizes any user who satisfies the conditions set out in this article to benefit from these exceptions.

Therefore, the literature proposes that lawful user should be considered a person who meets at least one of the following criteria: owns a copy of the database, has obtained such a copy under a rental or lending agreement, is authorized to use the database on the basis of a contract with database producer or other person authorized by database producer, operates the database which was made available by the producer on computer network for common use (implicit license), or operates the database within the scope of "private use".

The firm protection of sui generis rights is provided in Polish Act of 16 April 1993 on combating unfair competition.

Art. 3 thereof stipulates that any action of taking over the contents of the database is contrary to good morals. The protection resulting from this article is not, however, only illusory. In 2004 Polish Supreme Court rendered a judgement confirming that "taking over an electronic database and selling it to recipients under a different name constitutes an act of unfair competition".

Art. 11 qualifies disclosure or transmission of data from database as an act of unfair competition consisting in violation of the trade secret. It is worth noting that any databases that 7. In your Member State, contain the aforementioned trade secrets may be covered by are database creators this protection, provided that an entrepreneur has acted in free to rely on the law of order to preserve the confidentiality of data. unfair competition to protect databases? Are The interviewee had a case in which the employer claimed that there any problems with his databases were taken by former employees who then this as an alternative to established a new company. He based all his claims on art. 11 the sui generis right of Unfair Competition Law. (were the latter to be abolished)? Could you Art. 11 “An act of unfair competition shall be a transfer, a give us some examples disclosure or a use of other parties’ information constituting or indicate any court business secrets, or acquiring such information from an decision? unauthorised person, provided that it poses a threat to or violates an entrepreneur’s interests.”

As you may see the claims was based on taking of business secrets in form of databases.

Surprisingly, some scholars and practitioners claim that unfair competition law may also protect the interest of lawful user of database. Namely, a lawful user can use the provisions on combating unfair competition in case when preventing or limiting his right to use the database is against law or morality and threatens the interests of entrepreneurs or consumers, i.e. it constitutes an act of unfair competition. Then a lawful user could raise claims under art. 18 of the Polish Act on combating unfair competition, and if he would be a consumer, ask for protection the relevant consumer protection authorities or institutions.

8. Do the database As practice shows, the license agreements are the most producers rely on common means to regulate the status of database use and the contract law in addition protection of database producers. to the sui generis right

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to protect the Moreover, the legislator has amended APD introducing a investment in their prohibition to exclude (through a relevant provision of license databases? Have there agreement) the legal user's right to extract and re-use been any problems with insubstantial part of database. the use of contracts as either an alternative to Nevertheless, since the 'insubstantial part' concept is regarded the sui generis right or highly ambiguous, the license agreements usually cover all an additional layer of database producers' rights even these which relate to protection? Could you extraction and re-use of insubstantial part of database. give us some examples or indicate any court decision? We have not yet come to encounter with any specific studies

showing the range of application of TPMs among database 9. Do database makers use makers. Nevertheless, some researchers claim that the impact on technological of the CJEU judgments on single-source database will affect the protection measures database makers deprived of sui generis protection, in a way (TPMs) to protect their that they may be forced to implement TPMs into their on-line databases and if so, do database in order to avoid the negative consequence of the they encounter problems exclusion from legal protection (and to prevent the uncontrolled in doing so? use of their database).

We have not yet come to encounter with any issues between Database and PSI Directive. Nevertheless, the PSI regulations have been widely criticized in Polish doctrine, mostly due to the fact that the relevant provisions have not been fully implemented into Polish legal system until 2016 when Act on the re-use of public data was adopted (by the way this matter was subject to CJEU judgement in which it supported the European Commission's reservations towards our non- 10. Have you encountered implementation of PSI Directive). problems with the interaction between the Nonetheless, the Act on the re-use of public data still contains Database Directive and some imperfections; the Polish legislator, transposing PSI the PSI Directive? Could Directive did not introduce the basis for the use of standard you give us some open licenses of the Creative Commons (CC) type. It also did examples or indicate any not establish a national license, as in case of some EU Member court decision? States. There were also repeated, with some modifications, the solution functioning until 2016 under the existing provisions, based on the concept of re-use conditions contained in the offer (which created a hybrid model combining the elements of offer from Polish Civil Code and administrative solutions on issuing the administrative decisions in case of opposition to the offer).

Many scholars and practitioners emphasise that access to data is critical for economic players and for the development of viable business models. The European Commission is already an important driver for Open Data and for Open Access to 11. Have you encountered scientific information. The discussed above Public Sector problems with the EU or Information Directive provides a framework enabling the re-use national open access of data held by the public sector. This has led to the public policies regarding sector making important investments for more data to become research activities? available. Could you give us some examples or indicate any With the publication of Horizon 2020 which includes European court decision? Commission's program on Open Access to Scientific Publications and Open Access to Research Data, this idea finally took a firm and possible form.

Some Polish scholars have been already postulating the introduction of obligatory open access to the results of research

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activities, especially these which were publicly founded.

But it appears to be clear that establishment of the obligation of open access, inevitably escalates the conflict of interest between editors, authors, producers and users who are interested in open access to their work.

While so far Polish doctrine has been contemplating the concept only in light of international open license agreements such as creative commons or open source, some have highlighted the need to adapt Polish law to emerging idea of introducing open access on European level.

The reform brought about by Horizon 2020 program would probably mark a turning point in the European copyright policy. At present, the results of some publicly funded research are not accessible to people outside universities and similar institutions without one-off payments, the planned program presumes that publications of the results of research supported by public and public-private funds would be freely available to and reusable by anyone. It could definitely affect the paid-for subscription model used by many scientific journals.

In 2015 Polish Ministry of Science and Higher Education issued its Guidelines to the Rules on Open Access to Scientific Publications in which the emphasis was put on the necessity to adapt Polish current system to forthcoming changes;

 there is an urgent need for modern IT tools in order to ensure dissemination of access to the results of scientific research;  it is necessary to carry out information and training activities by key institutions towards their academics and researchers;  in addition, it is advisable for the scientific units and institutes to create their own institutional repositories or create common repositories;  lastly, the authors should be encouraged to preserve their property rights and grant the publisher only the appropriate license. The Ministry underlined that useful solutions in this scope were provided by that international Creative Commons organization. In Polish jurisprudence the issue has not yet been explored. To put it on stress, from our point of view this new right that aims at creating a transferable property right in “non-personal or anonymised machine-generated data” would corrode IP’s mechanism of incentives by creating an undergrowth of rights 12. Would there be more or that automatically protects all data produced with the aid of less need for sui generis machines. It would extensively overlap with right if the EU recognised a “data producer’s right” other IP regimes, and thus create undue impediments for the as proposed in the "Data exploitation of existing rights, such as copyright and sui generis Economy Package"? right, and endanger user freedoms guaranteed under these Could you give us some regimes. It would also give rise to gross legal uncertainty. examples or indicate any court decision? Although the contours of this "data producer’s right" are rather sketchy, such a right would surely bring the protection of industrial data in the EU to a much higher level than the sui generis right. Whereas sui generis right protects data on the double condition that the data are structured in a ‘database’

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and the database is the result of ‘substantial investment’, the novel right would directly protect machine-generated data without any material prerequisite. A ‘data producer’s right’ would also go far beyond any protection currently offered by EU copyright law.

13. Who is eligible to protection? Art 7

14. Is it permitted to In general, there is a big ambiguity regarding the lawful user in circumvent the lawful Poland. user exception and the rights and obligations of lawful users by contract? In a nutshell, lawyer professionally advising on broadly- 15. Do you consider – from understood intellectual property cases have great confidence in your experience and their knowledge of copyright law and can take advantage of observations – judges interconnections between national laws, directive and CJEU and lawyers sufficiently judgements. trained / specialised in sui generis rights once The clients mostly rely on their attorney's competence, since litigation takes place? the publicly admissible sources (in particular media) rarely Are plaintiffs and address the issue of sui generis rights while specialists' rich defendants likewise comments and publications are considered an inclusive source, sufficiently dedicated to the closed environment, not very common and knowledgeable? widespread.

Some controversy arises from the ambiguity of definition of concept of "lawful user" (as already discussed) especially in the context of database sublicensing, i.e. when a person is granted further licenses from database licensee. Most scholars point out that in the light of exhaustion of right, such sublicensee should be considered lawful user.

Another issue refers to tax law; under Polish copyright act 16. Please indicate other authors have the right to deduct from their taxable income important legal issues in 50% of tax deductible revenues. Since the database sui generis the context of is not subject to copyright act regulations, this tax Directive in the country. advantage does not apply to database makers.

Last issue concerns the legal procedure. Generally, the disputes arising from copyright infringement are heard before reginal courts (which are the higher instance than district courts) but this attribution does not apply to the civil disputes based on sui generis rights, which is apparently an example of legislator's omission criticized by doctrine.

17. Concluding question: Do a) in the view of the above presented issues, it appears that you think that the level of incertitude amplified by the precedent character of p) The Directive is an CJEU rulings, only proves that the Directive in its existing form effective means for does not sufficiently protects the database investors and achieving its goal? producers in respect of their sui generis rights. q) Do you think that it is a cost-efficient b) in case of dispute most of the claims are based on Copyright means for achieving Law (databases as a work) or on Unfair Competition Law its goal (consider (databases as a business secrets) hereby the costs of

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legal representation, c) limiting the scope of the sui generis right based on the CJEU court fees, the judgements (according to the single-source database concept) duration of cases, has regrettably deprived a significant number of database etc.)? makers of the protection (f. ex estate and employment r) Is at all relevant for agencies) and of the gains resulting from database licensing the target groups? (see point 4 of answer no. 2) s) Is it, in your view, coherent with other d) since Directive regulates only one explicit subject of pieces of legislation protection, it does not interfere with other rights, f.eg. those of at European and computer programs or works covered by InfoSoc. Even if the national levels? dispersion of legislation can contribute to legal incertitude and t) What is the added doubts, as long as intellectual property generally remains value of database harmonised only in the most crucial aspects, the multiplicity of protection being directives and other legal acts should be justified. dealt with at the European level? e) each harmonization brings advantages in a form of clarity of borderless (within European territory) regulations. Since most producers are aiming at addressing their database to international users, the idea of covering database protection with single market concept is invaluable.

The Directive should provide for solution worked out with the aim of finding the proper balance between the interests of database makers and the need to ensure an adequate range of fair use for database users. Widening the scope of legal protection for database not amounting to the notion of work as defined by copyright provisions, undoubtedly enabled database makers to obtain a due compensation for sharing their data processing systems. Even though the purpose was commendable, further interpretation of the 'substantial investment' requirement developed by CJEU eventually contributed to limiting the scope of sui generis right. As a result, it turned out to be a contradiction to the primary 18. What do you regard as Directive objectives to positively stimulate investments in the major benefits of the database. Database Directive? What are its major Therefore, the revision of the Directive itself would be a problems? Weighing reasonable solution, non-deriving an initial problem of breach of these, which should be the principle of legal certainty. the next steps? This legal proposal, however, will require clear and adequate arrangements of Database protection rules that could be enforced in member states and could effectively contribute to stimulating production in a relevant market.

Notwithstanding the above, since the idea on building borderless European data economy is taking more and more "outlined" form, we will probably need to consider adjusting the legal framework in order to come to common standards on this level, possibly with reorganization of its current shapes of database protection.

Author: Anna Gkogka

Review: Two Polish practitioners

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2.6 Spain General Comment: The Directive has been transposed into the 1996 Spanish Intellectual Property Act67 through the Law 5/1998, of 5 March on the Legal Protection of Databases.

Issues with respect to the Country: SPAIN Database Directive

Euro Depot, S.A. y Kingfisher S.A.S. v. Bricoman S.L. (STS 357/2017, 2 February 2017): A catalogue of construction products which are classified by types of products is not protected by copyright because there is no originality on the selection or arrangement of the contents. Besides copyright protection does not allow the right holder to control uses by a third party of something different to the original characteristics of the selection or the arrangement of that database. The plaintiffs did not ask for sui generis protection.

‘Ryanair Limited’ v. price comparison sites:

 ‘Ryanair Limited’ v. ‘Atrápalo, S.L.’ (STS 7748/2012, 9 October 2012)

 ‘Ryanair Limited’ v. ‘Vacaciones Edreams, S.L.’ (STS 1. Can you give us 9153/2012, 30 October 2012) examples of key landmark decisions  ‘Ryanair Limited’ v. ‘Last Minute Network, S.L.’ (STS (case law) in 1955/2014, 7 May 2014) connection to the Database Directive in The Supreme Court of Justice of Madrid issued three rulings on your country, and why Ryanair’s database. Ryanair (the plaintiff) sued the site these cases have had comparison sites for extraction and misappropriation of data, as significance? Please well as unfair competition. The court ruled in favour of the consider as more defendants in each of the three cases. It refused both the relevant the impact of copyright and the sui generis protection of the database, as well recent CJEU case law, as the arguments of unfair competition. e.g., Ryanair case, Innoweb, Freistaat ‘Megakini’ v. ‘Google Spain, S.L.’ (STS 3942/2012, 03 April Bayern v Verlag 2012): Megakini, a betting website, calls for Google condemn and Esterbauer GmbG. cessation of operation of their search engine. The plaintiff argued that no authorisation had been given to Google for the incorporation and use of Megakini’s content, nor for the indiscriminate communication of its content to third parties. The sentence dismissed the claim in its entirety, reasoning that the amount and substantiality of the part reproduced, and exhibit is the minimum necessary for the user to discriminate if s/he is interested or not in the webpage listed among other search results. Moreover, the Court did not find any harm for the rights of the holder. Instead, was argued that Google’s indexing contributes to the original purpose of a website, which is to facilitate that information to Internet users.

‘Construdatos, S.L.’ & ‘Reed Business Information, S.A.’ v. ‘Aplicación de Técnicas de Telemarketing’ (AP, 29 February 2008): On 29 February 2008, the Provincial Court of Biscay

67 Spanish Intellectual Property Act: https://www.boe.es/buscar/doc.php?id=BOE-A-1996-8930

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issued the ruling on data owned by Construdatos, S.L. and ELSEVIER. The court recognised the sui generis to their database and ruled against the defendants for acts of unfair competition, behaviours objectively contrary to the requirements of good faith, imitation of benefits that entail an improper use of the effort of others, as well as acts of infringement of intellectual property rights.

‘Editorial Aranzadi S.A.’ v. ‘El Derecho Editores, S.A.’ (JPI, 24 July 2001, proc. 841/1998): The Lower Court n.13 in Madrid issued in 2001 a ruling on a database stored in a CD-ROM. The owner of the database and plaintiff was Editorial Aranzadi, S.A. and El Derecho Editores, S.A. the defendants. The court ruled against the defendants and recognized the sui generis right of the plaintiff.

2. Definitions

Article 12.1 of the text of the Intellectual Property Law defines databases in the same way as Directive 96/9 /EC.

In the case STS 7748/2012, the Spanish Supreme Court highlighted the sentence of the Court that ruled the case of Fixtures Marketing, C-444/02 (paragraph 29-32), in 9 November 2004, to dissect the

the concurrent requirements for the existence of a database:

“1) that there is a compilation of "independent elements", that is, - Please describe separable of each other without affecting the value of its content how the notion of regardless of its nature (informative, literary, artistic, musical or database is other); defined in your national legislation 2) that the independent constituent elements of the collection are and how it is arranged in a systematic or methodical fashion; interpreted by courts. 3) that is equipped with a technical instrument, such as procedures

electronic, electromagnetic or electro-optical, or other instrument, such as an index, summary, plan or mode of classification that allows the location of any independent element contained in it. This requirement distinguishes databases from a collection of elements that provides information but lacks any instrument of treatment of individual elements that compose it.”

Originality is recognized in terms of the selection and content of the information contained therein, but also the elements necessary for its operation and consultation, the thesaurus and the indexing systems.

The Supreme Court has stated that there is no originality when - How has originality the structure of the database uses common parameters, for been understood? example a database of companies arranged in alphabetical order or by regions (Judgement No. 886/1997 of 17 Oct 1997 (Ar. 1997\7468)). In judgment 357/2017, 2 February 2017, The Supreme Court stated that, in the case of catalogues, use of recycling paper is not an item to be considered. Classifying products of the catalogue as sections of construction products in a

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shop and using different colours in each section is no an original arrangement.

- Does the Spanish law does not define the concept of “substantial legislation define investment”, instead the substantial nature or not of the further the concept investment depends on each specific case. Nevertheless, the of “substantial concept of “investment” is extended to the expending of means of investment”, and similar nature than time, effort and energy. how do the courts interpret it in your country? What is the threshold? - How did the courts They apply the CJEU rulings. apply the CJEU case law concerning the difference between creation and collection of data? - Are the In the case of original selection and/or arrangement of the definitions/notions database, the Spanish legislature used the same notions, but of the rights and database protection has its own exceptions (the specific exceptions in your exceptions regulated in the Database Directive). However, copyright regarding sui generis right, the Spanish legislature used the same provisions relating language as the European Directive. to databases aligned with the same notions in your copyright law as amended by the Infosoc Directive? 3. Should the copyright Yes, and that standardization would reduce the doubts as to how provisions of the to apply the Law. Regarding exhaustion, being the characteristics Database Directive be of both product very similar, I think that the same judicial standardised with solution has to be applied to software and databases. In the case those for the InfoSoc of databases, licenses are usually for a limited period of time, so Directive, they do not fulfil the conditions for considering them sales of the 2001/29/EC? database. However, there is no reason as for extended all the - on the definition of exceptions to databases. rights - on electronic exhaustion - on exceptions (for example, transient copying, private copying) 4. In your practice (be it N/A as a defendant or a claimant), have you had problems to determine who the owner of copyright was and/or sui generis right? - Have you No, Spanish judges have understood it properly. encountered problems with the definition of the “maker” of a database?

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- Have problems No, since there is no Spanish judgment analysing this problem. arisen identifying the “maker” in cases where the person who takes the initiative is different from the person that takes the investment risk? The Law 5/1998 defines extraction as: “the permanent or temporary transfer of all or a substantial part of the content of a database to another medium, regardless of the medium used or 5. Does the legislation the way in which it is carried out”. define further the concepts of extraction and re - utilization in Reutilization is defined as: “any form of making available to the your country and how public all or a substantial part of the content of the base by do the courts interpret it? distributing copies in the form of sale or other transfer of ownership or rental, or by online transmission or in other ways.”

On interpreting it, the Spanish judges apply the CJEU rulings.

- Could you provide 210,000 dollars (Judgment of the Madrid Court number 13 of 24 us with examples July 2001, case Aranzadi v. El Derecho). of what has been perceived as “substantial part”? - Could you provide N/A us with examples of what has been perceived as “repeated and/or systematic extraction/re-use of insubstantial part”? Exceptions to the "sui generis" right have been implemented as follows in Law 5/1998:

“The legitimate user of a database, no matter how it has been made available to the public, may, without authorization from the base manufacturer, extract and / or reuse a substantial part of the content thereof, in the following cases:

6. How far have In the case of an extraction for private purposes of the content of exceptions been a non-electronic database. implemented and how have they been In the case of an extraction for illustrative purposes of teaching interpreted by courts? or scientific research to the extent justified by the non- commercial objective pursued and provided the source is indicated.

In the case of extraction and / or reuse for public safety purposes or for the purposes of an administrative or judicial proceeding.

These provisions may not be interpreted in such a way as to allow their application in a manner that causes unjustified harm to the

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legitimate interests of the right holder or that is detrimental to the normal exploitation of the protected object.”

There is no Spanish judgment interpreting or applying them.

Exceptions to the "sui generis" right have been implemented as follows in Law 5/1998:

“The legitimate user of a database, no matter how it has been made available to the public, may, without authorization from the base manufacturer, extract and / or reuse a substantial part of the content thereof, in the following cases:

In the case of an extraction for private purposes of the content of a non-electronic database.

In the case of an extraction for illustrative purposes of teaching or scientific research to the extent justified by the non- - In your view, commercial objective pursued and provided the source is which exceptions indicated. are needed to the sui generis right? In the case of extraction and / or reuse for public safety purposes or for the purposes of an administrative or judicial proceeding.

These provisions may not be interpreted in such a way as to allow their application in a manner that causes unjustified harm to the legitimate interests of the right holder or that is detrimental to the normal exploitation of the protected object.”

There is no Spanish judgment interpreting or applying them.

Exceptions to the "sui generis" right have been implemented as follows in Law 5/1998:

“The legitimate user of a database, no matter how it has been made available to the public, may, without authorization from the base manufacturer, extract and / or reuse a substantial part of the content thereof, in the following cases:

In the case of an extraction for private purposes of the content of a non-electronic database. - Do difficulties arise from the absence In the case of an extraction for illustrative purposes of teaching of a provision for or scientific research to the extent justified by the non- temporary copying commercial objective pursued and provided the source is (Article 5(1) of indicated. Directive 2001/29/EC)? In the case of extraction and / or reuse for public safety purposes or for the purposes of an administrative or judicial proceeding.

These provisions may not be interpreted in such a way as to allow their application in a manner that causes unjustified harm to the legitimate interests of the right holder or that is detrimental to the normal exploitation of the protected object.”

There is no Spanish judgment interpreting or applying them.

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- How is the user’s N/A “right of consultation” secured in your Member State? - Do you think that N/A the concept of lawful user is sufficiently understood in your country? 7. In your Member State, The provisions granted to databases complements rather than are database creators excludes other legal provisions that may protect the structure of free to rely on the law the content of the database. Therefore, any other provision of unfair competition concerning restrictive practices and unfair competition, trade to protect databases? secrets or data protection may serve to reinforce the protection of Are there any the structure and contents of databases. problems with this as an alternative to the The sentence of the case ‘Construdatos, S.L.’ & ‘Reed Business sui generis right (were Information, S.A.’ v. ‘Aplicación de Técnicas de Telemarketing’ the latter to be referred to unfair competition as a behaviour that constituted an abolished)? Could you additional circumstance of unfairness. give us some examples or indicate Unfair competition was also discussed in the case ‘Megakini’ v. any court decisions? ‘Google Spain, S.L.’, where the court decided that Google did not

harm the business activity of Megakini and ruled against the latter.

8. Do the database N/A producers rely on contract law in addition to the sui generis right to protect the investment in their databases? Have there been any problems with the use of contracts as either an alternative to the sui generis right or an additional layer of protection? Could you give us some examples or indicate any court decision? 9. Do database makers Yes. The same problems as in any other work or subject matter. use on technological protection measures (TPMs) to protect their databases and if so, do they encounter problems in doing so? 10. Have you encountered No problems. problems with the interaction between the Database Directive? Could you

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give us some examples or indicate any court decision?

11. Have you encountered No problems. problems with the EU or national open access policies regarding research activities? Could you give us some examples or indicate any court decision? 12. Would there be more N/A or less need for sui generis right if the EU recognised a “data producers right” as proposed in the "Data Economy Package"? Could you give us some examples or indicate any court decision?

13. Who is eligible to Art 167 protection?

14. Is it permitted to circumvent the lawful user exception and the rights and obligations of lawful users by contract? 15. Do you consider – This one is a really difficult issue and judges have more or less from your experience the same problems with databases and computer programs: the and observations – judgments are difficult to understand because sometimes they do judges and lawyers not explain in a proper way the object that has been used by the sufficiently trained / defendant, the object of protection, the investment, etc. specialised in sui generis rights once litigation takes place? Are plaintiffs and defendants likewise sufficiently knowledgeable? 16. Please indicate other N/A important legal issues in the context of Database Directive in the country. 17. Concluding question: Do you think that a) Databases production has not improved in economic a) The Directive is an effective means for terms, but there is more judicial uniformity. achieving its goal? b) These costs are the same as in case-law related to other b) Do you think that kinds of works or subject matter. it is a cost-efficient means for c) I do not think so. achieving its goal (consider hereby d) Not at all. More uniformity between computer programs

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the costs of legal and databases is needed. representation, court fees, the e) Uniformity, in particular between United Kingdom and duration of cases, Ireland and continental Member States. etc.)? c) Is it at all relevant for the target groups? d) Is it, in your view, coherent with other pieces of legislation at European and national levels? e) What is the added value of database protection being dealt with at European level? The main benefit is that Member States are no longer free for providing different kinds of protection. 18. What do you regard as the major benefits of The major problems are related to the technical character of this the Database protection and the lack of knowledge of Spanish judges about Directive? What are technical problems of computer programs and databases. its major problems? Weighing these, which Improving judges’ knowledge on copyright and sui generis should be the next protection of databases. steps?

Author: María del Carmen Calatrava Moreno

Review: Gemma Minero

Source: P. Letai (2014). Cyber Law in Spain

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2.7 Sweden General Comment: The Directive has been transposed into Swedish law by means of an amendment to the Act on Copyright in Literary and Artistic Works (Act 1960:729 of December 1960), “SCA”. The implementing Government Bill 1996/97:111 was enacted on 15 May 1997 and came into force on 1st January 1998.

Issues with respect to the Country: SWEDEN Database Directive

Answer: Where in your countries law is the Sui generis right/Sui Sweden had a catalogue right (Article 49 SCA, Chapter 5: Certain Generis right placed? Rights Neighbouring to Copyright) before the implementation of the Directive. As a result, in implementing the Directive the (1) as a standalone law Swedish legislator merely amended the catalogue right provision (2) alongside other related or in the SCA. The Swedish legislator noted in the Government Bill 68 neighbouring rights implementing the Directive that the Directive’s sui generis provisions are based on the principals of the Nordic catalogue (3) in the copyright law protection69, and that during the Nordic officials’ deliberations it was agreed upon that these provisions should be implemented by (4) elsewhere (please altering the catalogue protection, rather than by enacting a new specify)? law.

NJA 2005 s. 924, the Supreme Court, 28 December 2005 1. Can you give us In February 1999 Fixtures Marketing Limited brought an action examples of key against Svenska Spel before the District Court of Gotland, landmark decisions (case law) in Sweden, claiming reasonable compensation for the unlawful use connection to the of data, for the purpose of organising betting games, from their Database Directive in fixture lists for the English and Scottish football leagues. The case your country, and why ended up in the Supreme Court, which after a preliminary ruling these cases have had from the ECJ70 found that a database containing a fixture list for significance? Please the purpose of organising football league fixtures is not consider as more considered a result of a significant investment. The court also relevant the impact of found that even though Article 49 SCA also grants protection to a recent CJEU case law, catalogue in which a large number of information items have e.g., Ryanair case, been compiled, and which is not the result of a significant Innoweb, Freistaat investment, Svenska Spel’s actions cannot be considered the Bayern v Verlag making of copies or making available to the public of the whole or Esterbauer GmbG. of a substantial part of the fixtures.

2. Definitions

- Please describe According to our experts, article 1.2 of the Directive has not been how the notion of transposed in its entirety to the SCA. In fact, the word “database” database is (databas) is not mentioned at all in the SCA. The Swedish defined in your legislator noted in the Government Bill implementing the national legislation Directive71 that the use of the Swedish word databas (database) and how it is concerning copyright in Article 5 SCA would be misleading, since interpreted by it would imply that the protection would only cover compilations

68 Government Bill 1996/97:111. 69 The Nordic catalogue protection is, in essence, a protection for investments. Government Bill 1996/97:111. 70 Fixtures Marketing Ltd v Svenska Spel AB, Case C-338/02, EU:C:2004:696 (2004) 71 Government Bill 1996/97:111.

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courts. in digital form. The Article 5 SCA thus uses the wordings “a composite literary or artistic work” regarding copyright to databases. Regarding the sui generis right, Article 49 SCA uses the wordings “a catalogue, a table or another similar product in which a large number of information items have been compiled or which is the result of a significant investment”.

It is worth emphasising that, according to Article 49 SCA, “a catalogue, a table or another similar product” will receive protection if either “a large number of information items have been compiled” in it, or it “is a result of a significant investment”. The former is a remnant from the catalogue right, and the latter was added through the transposition of the Directive into Swedish law. The Swedish Supreme Court has noted72 that it has been much debated whether protection granted because a “large number of information items have been compiled”, alongside the Directive, is allowed in national regulation. On one hand the Member States can grant a stronger protection than the one granted by the Directive, but on the other hand the objective of the Directive is to ensure an appropriate and uniform protection of databases. The Swedish Labour Court has noted73 that it is presumable that the Member States are not allowed to grant a sui generis protection on other conditions that the ones stated in the Directive. The court did not, however, take a stand on whether Article 49 SCA in part contradicts the Directive.

Court decisions regarding copyright: The court viewed that a radio clip containing a mash-up of lines from different episodes of a popular children’s program did not constitute “a composite literary or artistic work” under Article 5 SCA.74

Court decisions regarding sui generis right: The court refused to grant protection to a database containing a fixture list for the purpose of organising football league fixtures75. The courts have viewed that databases containing customer information are protected under Article 49 SCA.76

The Swedish legislator noted in the Government Bill implementing the Directive77 that if the compiling of the composite work is of a purely technical nature, the requirements for originality would rarely be met, in which case the composite work would not be covered by copyright. - How has originality AD 2015 nr.39, The Swedish Labour Court, 17 June 2015 been understood? The case concerned a customer database that was constructed using the Oracles software CRM on Demand. The software contained a number of modules and fields, which could be altered to suit the plaintiff’s needs. The court noted that, according to CJEU case law, a database

72 NJA 2005 s. 924, the Supreme Court, 28 December 2005. 73 AD 2017 nr 12, The Swedish Labour Court, 1 March 2017. 74 NJA 2005 s. 905, The Supreme Court, 23 December 2005. 75 NJA 2005 s. 924, the Supreme Court, 28 December 2005. 76 See AD 2015 nr 39, The Swedish Labour Court, 17 June 2015, and AD 2017 nr 12, The Swedish Labour Court, 1 March 2017. 77 Government Bill 1996/97:111.

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should be covered by copyright if the structure of the database can be considered an intellectual creation. The term “structure” means how the author selects, collects and arranges the data contained in the database. The term does not extend to the data in itself, which is contained in the database, or the creation of the data. The term “intellectual creation” refers to the originality of the work. The criterion of originality is satisfied if the author, by selection or arrangement of the data contained in the database, has expressed his creative ability in an original manner by making free and creative choices and through this put his personal touch on the database. The systematization of the plaintiff’s database was, in part, a result of the alterations the plaintiff made to CRM on Demand concerning how the data contained in the database would be selected, collected and arranged. The court found that the alterations that the plaintiff had made to the structure of the database were conventional, and hence the plaintiff could not be considered as having expressed his creative ability or put his personal touch on the structure of the database. Consequently, the court found that the plaintiff’s database did not constitute a copyright protected work under Article 1 SCA.

The SCA does not define the concept of “substantial investment” further. In the Government Bill implementing the Directive78, however, the Swedish legislator concludes that “in assessing whether there has been a significant investment, consideration can be given to the economic and other efforts that are behind the acquisition, review and presentation of the data contained in the work” (unofficial translation).

The Swedish legislator also points out that the Swedish catalogue right (Article 49 SCA) grants protection to works where a large number of information items have been compiled (although these often have required a significant investment with regards to the - Does the amount of work and the costs required to collect and organize the legislation define information), which differs from the wordings of the Directive. further the concept The legislator however states that “it would be unsatisfactory if of “substantial there would no longer be any protection for such works, and since investment”, and the Directive allows for a more comprehensive legal protection, how do the courts the catalogue protection should continue to apply to works where interpret it in your a large number of information items have been compiled” country? What is (unofficial translation). It has thus been the Swedish legislator’s the threshold? intent to offer a more comprehensive sui generis protection than the Directive.

NJA 2005 s. 924, the Supreme Court, 28 December 2005

The court, after a preliminary ruling from the ECJ79, found that a database containing a fixture list for the purpose of organising football league fixtures is not considered a result of a significant investment. In line with the ECJ ruling, the court noted that “the expression 'investment in ... the obtaining ... of the contents' of a database (…) [Article 7.1 Directive] must be understood to refer to the resources used to seek out existing independent materials and collect them in the database. It does not cover the resources

78 Government Bill 1996/97:111. 79 See Fixtures Marketing Ltd v Svenska Spel AB, Case C-338/02, EU:C:2004:696 (2004)

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used for the creation of materials which make up the contents of a database. In the context of drawing up a fixture list for the purpose of organising football league fixtures, therefore, it does not cover the resources used to establish the dates, times and the team pairings for the various matches in the league”.

AD 2015 nr.39, The Swedish Labour Court, 17 June 2015

The case concerned the plaintiff’s customer database, which was established in 2008 and included information for approx. 200 customers. In total, the database contained approx. 20 000 information items. The information regarded e.g. information on the customers and their ERPs, contact information for key persons and business history. The information was gathered by the plaintiff’s salespersons in their contact with the customers. The salespersons invested approx. 1 hour per week in registering new information in the database. The court found that the work dedicated to acquiring, reviewing and presenting the information included in the database in the qualitatively or quantitatively respect constituted a substantial investment. The database was thus covered by the sui generis protection of the Directive and consequently also Article 49 SCA.

AD 2017 nr 12, The Swedish Labour Court, 1 March 2017

The case concerned the plaintiff’s databases, which contained a great amount of contact information to e.g. physicians in several countries. The databases had been constructed successively since 1999. The two biggest databases together contained approx. 160 000 contacts. The information was collected through phone calls to different hospitals and was continuously complemented and updated. Much of the information was added after personal contact with the physician in question. The investment costs were over SEK 10,8 million. The court found that the work dedicated to acquiring, reviewing and presenting the information included in the databases in the qualitatively or quantitatively respect constituted a substantial investment. The databases were thus covered by the sui generis protection of the Directive and consequently also Article 49 SCA.

NJA 2005 s. 924, the Supreme Court, 28 December 2005

The court, after a preliminary ruling from the ECJ80, found that a database containing a fixture list for the purpose of organising football league fixtures is not considered a result of a significant - How did the courts investment. In line with the ECJ ruling, the court noted that “the apply the CJEU expression 'investment in ... the obtaining ... of the contents' of a case law database (…) [Article 7.1 Directive] must be understood to refer concerning the to the resources used to seek out existing independent materials difference between and collect them in the database. It does not cover the resources creation and collection of data? used for the creation of materials which make up the contents of a database. In the context of drawing up a fixture list for the purpose of organising football league fixtures, therefore, it does not cover the resources used to establish the dates, times and the team pairings for the various matches in the league”.

80 See Fixtures Marketing Ltd v Svenska Spel AB, Case C-338/02, EU:C:2004:696 (2004)

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AD 2015 nr.39, The Swedish Labour Court, 17 June 2015

The court noted that the purpose of the sui generis protection, according to CJEU case law, is to promote the establishment of systems for storing and processing existing data, and not to promote the creation of data that can later be collected in a database. Consequently, the term “substantial investment” refers to the resources invested in establishing the database, i.e. to search for existing data and to collect them in the database. This includes arranging the data systematically or methodically in the database, ensuring that they are individually accessible and checking that they are correct during the entire period of time the database is in operation. Resources invested in the creation of the data are not considered. The court found that the work dedicated to acquiring, reviewing and presenting the information included in the plaintiff’s customer database in the qualitatively or quantitatively respect constituted a substantial investment. The database was thus covered by the sui generis protection of the Directive and consequently also Article 49 SCA.

- Are the definitions/notions of the rights and N/A exceptions in your copyright provisions relating to databases aligned with the same notions in your copyright law as amended by the Infosoc Directive? 3. Should the copyright N/A provisions of the Database Directive be standardised with those for the Infosoc Directive, 2001/29/EC? - on the definition of rights - on electronic exhaustion - on exceptions (for example, transient copying, private copying) 4. In your practice (be it Determining the owner of copyright or sui generis right has as a defendant or a seemingly not been an issue in the prominent Swedish court claimant), have you cases related to databases. had problems to determine who the owner of copyright was and/or sui generis right?

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A “maker of a database” (Article 7.1 Directive) is reflected as “anyone who has produced a catalogue, a table or another similar product” in Article 49 § 1 SCA.81 The Swedish legislator noted in the Government Bill implementing the Directive82 that the - Have you catalogue protection corresponds to the Directive in that encountered protection is granted to the one who has produced the work. problems with the definition of the The definition of the “maker” of a database seems to generally “maker” of a not have been an issue in Swedish court cases related to database? databases. For instance, in AD 2015 nr.39, the court noted that the defendants had not questioned that the plaintiff was the proprietor of the right provided by Article 49 SCA to the maker of the database, and did thus not take a position on the matter.

This has seemingly not been considered an issue in prominent - Have problems Swedish court cases related to databases. arisen identifying the “maker” in The Swedish legislator noted in the Government Bill implementing 83 cases where the the Directive that catalogue protection is granted to the one person who takes who has produced the work, which often is the company that has the initiative is organised the drafting (Swedish: utarbetande) of the product. different from the The legislator further notes that although it is not excluded that person that takes an individual employee has conducted a work that is entitled to the investment protection, the right to invoke the protection should in most cases risk? be transferred to the employer due to the employment contract.

The SCA uses traditional copyright terminology instead of the terms “extraction” and “re-utilisation”. The Swedish legislator noted in the Government Bill implementing the Directive84 that the use of a new terminology in the Directive is not intended to prevent Member States from applying the established terminology of the Member States when implementing the Directive.

The extraction right (Article 7.2 (a) Directive) is reflected by the 5. Does the legislation “exclusive right to make copies of the product” (Article 49 § 1 define further the SCA). Article 49 § 3 SCA cross-refers to Article 2 § 2 SCA, which concepts of extraction defines the “making of copies” in respect of copyright.85 Article and re - utilization in 7.2 (a) Directive has been transposed almost entirely into the your country and how SCA, except for the wordings “all or a substantial part”, which is do the courts interpret reflected in Article 2 § 2 SCA by “in whole or in part”. it? The re-utilisation right (Article 7.2 (b) Directive) is reflected by the “exclusive right (…) to make [the product] available to the public” (Article 49 § 1 SCA). Article 49 § 3 SCA cross-refers to Article 2 § 3 SCA, which defines the making available to the public in respect of copyright.86 Article 7.2 (b) Directive has been transposed almost entirely into the SCA, except for the wording “substantial part”. The exhaustion of the right to control the resale has been transposed into the SCA (Article 19 SCA, by

81 NautaDutilh-report, p.309 82 Government Bill 1996/97:111 83 Government Bill 1996/97:111 84 Government Bill 1996/97:111 85 NautaDutilh-report, pp.310-311 86 NautaDutilh-report, p.311

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virtue of Article 49 § 3 SCA).

The Swedish legislator noted in the Government Bill implementing the Directive87 that the wordings of the SCA makes the exclusive right slightly more extensive than what is required by the Directive, but that the Directive does not prevent the granting of a stronger exclusive right. The fact that the contents of the sui generis protection will, in great parts, resemble that of copyright protection is not regarded by the Swedish legislator as having any negative consequences. The legislator notes that this, on the contrary, will mean that it normally will not be necessary to decide whether a compilation is protected by copyright or sui generis right.

In NJA 2005 s.924, the court generally expressed that Article 49 SCA should be interpreted in accordance with the Directive. Although the court did not have to take a stand on whether “making copies” and “making available to the public” could be interpreted as corresponding to the terms “extraction” and “re- utilisation” of the Directive, it looks like the court would have been prepared to interpret the Swedish wordings of the law to correspond to the results of the Directive.88

In a verdict from December 2006, the District Court of Stockholm interpreted the terms “making copies” and “making available to the public” to correspond to their usual meaning within copyright.89

As noted above, the wording “substantial part” has not been transposed into the SCA, neither regarding the extraction right or re-utilisation right. The Swedish legislator noted in the Government Bill implementing the Directive90, that since the catalogue right (like the Directive) has long been considered protecting the whole or a substantial part of the work, it is not - Could you provide necessary to explicitly specify it in the SCA. us with examples of what has been In AD 2015 nr.39, one of the defendants had exported a “great perceived as amount” (4 568 information items) of data from the plaintiff’s “substantial part”? customer database to excel-files on his Dropbox account. Consequently, the court found that the defendant had, in conflict with Article 49 SCA, produced copies of the database. The court added that the defendant’s actions included the re-utilisation of substantial parts of the database, as stipulated in Article 7 Directive.

- Could you provide According to our experts, article 7.5 Directive has not been us with examples transposed into the SCA.91 The Swedish legislator noted in the of what has been Government Bill implementing the Directive92 that a repeated use perceived as of insubstantial parts of a work together can be considered being “repeated and/or use of a substantial part of the work. The legislator noted that systematic

87 Government Bill 1996/97:111 88 Axhamn, Johan, “Databasskydd”, Stockholm University 2016, p.302 89 District Court of Stockholm, verdict of 14th December 2006, case no.T 30270-05, as referenced in Axhamn, Johan, “Databasskydd”, Stockholm University 2016, p.302 90 Government Bill 1996/97:111 91 NautaDutilh-report, p.312 92 Government Bill 1996/97:111

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extraction/re-use insubstantial parts could be e.g. individual data items. of insubstantial part”? In NJA 2005 s.924, the court expressed that Article 49 SCA should be interpreted in light of Article 7.5 Directive, i.e. so that Article 7.5 is also given effect.93 In this case the court, however, found that the defendant’s repeated use of insubstantial parts of the fixtures had not had such a cumulative effect, which aims to recreate or make the whole or a substantial part of the content of the database available to the public without the authorization of the maker of the database.

The optional exceptions to the copyright as stipulated by Article 6.2 Directive have been transposed in most part to the SCA.94

Article 6.2 (a) concerning reproduction for private purposes is presumably found in Article 12 SCA. “Reproduction” in the Directive goes beyond “a single or a few copies” in the SCA. For private purposes appears in both the Directive and the SCA. The SCA a contrario permits the making of analogue copies of compilations in digital form, while the Directive only allows reproductions (whether digital or analogous) of non-electronic databases.

Article 6.2 (b) Directive concerning reproduction for teaching or scientific research is in parts transposed into SCA. Reproduction for teaching is presumably found in Article 21 SCA (where the non-commercial purpose is mentioned, but not indication of the source, which in turn is found in Article 11 § 2 SCA) and Article 42 (c) SCA (copies made for educational purposes under 6. How far have extended collective licenses). Copies for scientific purposes is not exceptions been mentioned in the SCA. implemented and how have they been Article 6.2 (c) Directive is found in Article 26 b § 2 SCA. interpreted by courts? The optional exceptions to the sui generis right as stipulated by Article 9 Directive are, in most part, transposed to the SCA. Worth noting is that the terms “extraction”, “re-utilization” and “substantial part” are not used in the SCA.95 By virtue of Article 49 § 3 SCA, the sui generis right exceptions are the same as for the copyright ones described above.

The Swedish legislator noted in the Government Bill implementing the Directive96 that the Swedish catalogue right is the kind of “right comparable to the sui generis right” mentioned in the recital 52 of the Directive. The baseline for exceptions to the catalogue right has always been that the same exceptions should apply to the catalogue right as to copyright, which is why this also should be the case after the implementation of the Directive.

The SCA also provides an exception for persons with a disability to copyright and sui generis right under Article 17 SCA (exception to the sui generis right virtue of Article 49 § 3 SCA).

93 Axhamn, Johan, “Databasskydd”, Stockholm University 2016, p.303 94 NautaDutilh-report, pp.315-317 95 NautaDutilh-report, pp.317-319 96 Government Bill 1996/97:111

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The Swedish legislator noted in the Government Bill implementing the Directive97 that the baseline for exceptions to the catalogue right has always been that the same exceptions should apply to - In your view, the catalogue right as to copyright, and that ”the more extensive which exceptions are needed to the exclusive right for the catalogue protection that the sui generis right? implementation of the Directive entails, should thus be offset by the same restrictions applicable to copyright” (unofficial translation).

- Do difficulties arise N/A from the absence of a provision for temporary copying (Article 5(1) of Directive 2001/29/EC)? - How is the user’s “right of consultation” N/A secured in your Member State? According to our experts, the concept of lawful user for copyright under Article 6.1 Directive has not been transposed in its entirety to the SCA. Article 26 g § 5 SCA, however, states, “Anyone who has a right to use a compilation is entitled to dispose of it in any way that is necessary in order for him to be able to use the compilation for its intended purpose”. As pointed out in the NautaDutilh-report98, there are however some differences between these provisions. The SCA’s wording “to dispose of it in any way” is wider than accessing and normally using the database as under the Directive, and “anyone who has a right to - Do you think that use” could extend to any user, whether authorised by contract or the concept of law. The Swedish legislator noted in the Government Bill lawful user is implementing the Directive99 that these cases should encompass sufficiently not only situations when someone has acquired the right to use a understood in your compilation, but also other instances when someone simply has country? the right to use a compilation.

The concept of lawful use of insubstantial parts (regarding the sui generis right, Article 8.1 Directive) has also not been transposed into the SCA, according to our experts. By virtue of Article 49 § 3 SCA, Article 26 g § 5 SCA (as mentioned above) also applies to the catalogue right. The SCA notably extends the right to the whole compilation, and not only insubstantial parts. The SCA’s wording “to dispose of it in any way” is wider than extracting and/or re-utilising the database as under the Directive.100

7. In your Member State, N/A are database creators free to rely on the law of unfair competition to protect databases? Are there any problems with this as

97 Government Bill 1996/97:111 98 NautaDutilh-report, p. 307 99 Government Bill 1996/97:111 100 NautaDutilh-report, p.313

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an alternative to the sui generis right (were the latter to be abolished)? Could you give us some examples or indicate any court decision? 8. Do the database N/A producers rely on contract law in addition to the sui generis right to protect the investment in their databases? Have there been any problems with the use of contracts as either an alternative to the sui generis right or an additional layer of protection? Could you give us some examples or indicate any court decision? 9. Do database makers N/A use on technological protection measures (TPMs) to protect their databases and if so, do they encounter problems in doing so? 10. Have you encountered N/A problems with the interaction between the Database Directive and the PSI Directive? Could you give us some examples or indicate any court decision? 11. Have you encountered N/A problems with the EU or national open access policies regarding research activities? Could you give us some examples or indicate any court decision? 12. Would there be more N/A or less need for sui generis right if the EU recognised a “data producer’s right” as proposed in the "Data Economy Package"? Could you give us some examples or indicate any court decision?

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13. Who is eligible to Art. 61 and Art. 62 protection?

14. Is it permitted to N/A circumvent the lawful user exception and the rights and obligations of lawful users by contract? 15. Do you consider – N/A from your experience and observations – judges and lawyers sufficiently trained / specialised in sui generis rights once litigation takes place? Are plaintiffs and defendants likewise sufficiently knowledgeable? 16. Please indicate other N/A important legal issues in the context of Database Directive in the country. 17. Concluding question: N/A Do you think that f) The Directive is an effective means for achieving its goal? g) Do you think that it is a cost-efficient means for achieving its goal (consider hereby the costs of legal representation, court fees, the duration of cases, etc.)? h) Is it at all relevant for the target groups? i) Is it, in your view, coherent with other pieces of legislation at European and national levels? j) What is the added value of database protection being dealt with at the European level? 18. What do you regard as N/A the major benefits of the Database Directive? What are its major problems? Weighing these, which

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should be the next steps?

Author: Hanna Engblom

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2.8 United Kingdom General Comments:The Directive has been implemented in the United Kingdom’s Copyright, Designs and Patents Act by The Copyright and Rights in Database Regulations 1997 (SI 1997/3032) which came into force on the 1st of January 1998. Further rights were granted to makers of databases in 2003 (to implement the Information Society Directive). Additional exceptions were added by the Legal Deposit Libraries Act 2003, s 8(2), s 9.

It is perhaps worth noting that the Courts have criticised this mode of implementation, and now very frequently refer directly to the Directive.101 However, it is a common practise for the UK courts to refer to the European legislation and not to the transposed UK act.

In Football Dataco Ltd v Yahoo! UK Ltd [2010] EWCA Civ 1380, commenting on the implementation of the Directive into UK law, at [6], Jacob LJ referred to the ‘complicated, and to our minds, unhelpful’ way the Directive had been implemented. ‘No-one suggests the amended Act means anything different from the Directive. So, it is easier and safer to work directly from that.’

In Football Dataco Ltd v Sportradar GmbH [2011] EWCA Civ 330, at [12] Jacob LJ observed that, ‘as is so depressingly common the draftsman has gone to a lot of trouble to rephrase and rewrite what he could and should have simply copied from the Directive. I do not bother with the rewrite.’

In Football Dataco Ltd v Sportradar & Stan James [2013] EWCA Civ 27, [19], the Court noted that ‘As is now standard practice counsel did not bother to refer to the UK Act implementing the Directive, for there is no point in doing so. All that matters is the language of the Directive itself.’ This was followed by Deputy High Court Judge David stone in in Technomed v Bluecrest Health Screening [2017] EWHC 2142 (Ch), [64].

In British Sky Broadcasting plc v Digital Satellite Warranty Cover Ltd [2011] EWHC 2662 (Ch), Arnold J took a similar (but slightly more nuanced approach). He stated

‘Since the 1997 Regulations must be construed, so far as possible, in the same way as the Database Directive and since it is not suggested that there is any difference in wording between the two which impedes such a construction, however, it is unnecessary to refer to the 1997 Regulations.’

Issues with respect to the Country: United Kingdom Database Directive

 British Horseracing Board v. William Hill 1. Can you give us British Horseracing Board is the governing body for British examples of key horseracing. It brought the first litigation of note under the landmark decisions Directive. (case law) in connection to the In British Horseracing Board v. William Hill [2001] ECDR 257, Database Directive in 283–5 (Laddie J), the question arose whether WH had infringed your country, and why sui generis right in BHB’s collection of data about horse-races these cases have had (7800 races a year, with 175,000 entries). The cost of running significance? Please the database and ensuring its accuracy was found to be in the consider as more region of £ 3 million per year. The defendant, it seemed, did not relevant the impact of dispute that there was sui generis right in the database ([21], recent CJEU case law, [24]) but argued that it was not infringing. The alleged e.g., Ryanair case, Innoweb, Freistaat infringement related to indirect use of data (for which it had a Bayern v Verlag limited licence permitting betting shop use) in its Internet service. Esterbauer GmbG. The data taken comprised the names of all the horses running in the race concerned, the date, the time and/or the name of the

101 British Horseracing Board v. William Hill [2001] ECDR 257, [1].

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race and the name of the racecourse. Laddie J rejected various arguments that there was no infringement (relating to the nature of the protected subject matter, the concept of substantial part, and the notions of extraction and reutilisation).

On appeal, the Court of Appeal indicated that it would have affirmed but recognised that real clarity could only be provided by a reference [2002] ECDR 41 (CA). In Case C-203/02, the Grand Chamber of the CJEU offered guidance (in the same terms as the three Fixtures Marketing cases). Although, at [66]-[67], the Court indicated that WH’s acts were ones of extraction and reutilisation, they did not involve use of a substantial part quantitatively or qualitative. In the latter respect, the CJEU noted at [79] that ‘the resources used for the creation as such of the materials included in a database cannot be taken into account in assessing whether the investment in the creation of that database was substantial.’ Importantly, earlier in the judgment, at [37]-[41], the Court addressed the question of whether investment identified by the referring Court was relevant. It held that

‘the resources used to draw up a list of horses in a race and to carry out checks in that connection do not represent investment in the obtaining and verification of the contents of the database in which that list appears.’

Therefore ‘it must be held that those materials do not represent a substantial part, in qualitative terms, of the BHB database.’ For the same reason, there could be not claim based on the repeated and systematic taking of insubstantial parts.

When the case returned to the Court of Appeal, [2005] RPC 883, it was disputed whether the CJEU decision had undermined the Claimant’s cases. The Court found that it had, and in effect, that no sui generis right subsisted in the final database. Key to this finding was that this was official data and only BHB could deem the list to be official.

The litigation did not bring to an end BHB’s exploitation of the database. Now unable to rely on sui generis right, the Board utilised contract instead. In Attheraces Ltd v BHB [2005] EWHC 3015(Ch), it was held to have abused its dominant position through excessive pricing. However, on appeal, the basis for this conclusion was found to be erroneous: [2007] EWCA Civ 38.

There has been subsequent discussion of a betting levy, and some speculation as to whether this is permissible. See Margoni.

 Football Dataco Ltd v Yahoo! UK Ltd and Brittens Pools Ltd [2010] EWHC 841, [2010] EWCA Civ 1380 The second important case in England and Wales was in fact a joint hearing of a preliminary issue in three separate actions brought by the organisers of football matches in England and Scotland. The issue was whether football fixture lists were protectable by copyright. The defendants reproduced those lists in their football pools coupons (Brittens); or betting offers (Stand James). It was admitted that the fixture lists were databases, but denied that there was copyright, sui generis right or any other copyright in them as literary works.

Reviewing the process of creation, Floyd J clearly considered the fixture lists a product of ‘very considerable labour and skill’: [41].

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Nevertheless, the three Fixtures Marketing decisions precluded the possibility that such fixture lists might be protected by sui generis right: [92]. What about copyright? First, Floyd J said he thought decisions about selection made before data was created could contribute: [82]. Second, he suggested there is both a quantitative and qualitative dimension to the originality test: [91]. As to quality, he equated ‘intellectual creation’ with ‘judgment, taste or discretion’: [91]. Applying this understanding to the facts, Floyd J found the lists to be protected by copyright.

On appeal, the ruling on sui generis right was affirmed, but that on copyright was referred to the CJEU. First, the Court of Appeal thought there was a ‘lingering doubt’ as to whether protection could be afforded to a database by literary copyright in general: [15]. More importantly, the Court was uncertain as to the relevance of skill, and particularly skill in creating the data. In Case C-604/10, the Third Chamber confirmed that selection and arrangement related to pre-existing data, not its creation: [32] and that ‘intellectual creation’ involved the expression of creative ability through free and creative choices: [38]. Labour and skill were, of themselves, irrelevant: [42]. On the basis of the procedures described by the referring court, the CJEU indicated that the lists would not be protected: [44]. Moreover, the Court indicated that databases could not be afforded copyright on any basis other than that harmonized in the Directive.

 Football Dataco Ltd v Sportradar GmbH and Stan James This litigation related to rights in a database – Football Live – of information about sports events (goals scored, goal scorers, penalties, yellow (caution) and red (sending off) cards and substitutions – and much more). The database was developed by Football Dataco, through a setup which involved sending analysts to games, creating live commentaries that were then input into a database. It appeared that Sportradar GmbH operated a similar database, supplying football data via the Internet (betradar) to two betting companies (Stan James, Bet365) which in turn made it accessible to their punters, the end users. This was done through a link on the betting websites that, if operated by the punter, led to a pop up (which downloaded the total Live Score database. Punters could look for details on specific games by activating a ‘magnifying glass’ function. Sportradar collected its data from various sources, some of which indirectly drew on Press Association data that Dataco had licenses. Dataco discovered that some errors and false seeds in its data appeared in Sportradar’s, leading it to conclude that Sportradar had extracted data indirectly from the Football Live database. It commenced action.

In Football Dataco Ltd v Sportradar GmbH [2010] EWHC 2911 (Ch), the Claimants argued that Football Live was protected by copyright and sui generis right. The Defendants, GMbH and AG were respectively a German company, offering live sports data to its customers via the Internet, and its Swiss parent. Its customers included Bet365 and Stan James in the UK. The Claimants argued that the Defendant’s data included data extracted from its database.

The initial issue concerned jurisdiction. Was an English Court the appropriate forum? The question turned on the place where the wrong occurred. In relation to copyright, the Judge took the view that the particulars identified acts in the UK, including authorising

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infringement in the UK and joint tortfeasance. As to sui generis right, for which there is no ‘authorisation’ liability, the Judge found that there was no extraction in the UK by GmbH, though there was by its customers. As for the ‘re-utilization’, the Judge held that this occurred at the place of transmission [72], so GmbH had not re-utilized ‘Football Live’, though its customers might have done.

On appeal, [2011] EWCA Civ 330, the Court held that whether the database comprising information about football matches was protected by copyright or not, what was extracted was mere data rather than a part sharing the originality: [16]-[17]. Left purely with sui generis right, the question of the location of the acts took on greater significance. The Court of Appeal referred the matter to the CJEU. In due course, in Case C-173/11, the CJEU indicated that re-utilization at the very least occurred in the place where the transmissions were targeted, so the action could be heard in England.

In Football Dataco Ltd v Sportradar [2012] EWHC 1185 (Ch), Floyd J heard the actions against Sportradar and its customer, Stan James. One set of issues related to infringement by Sportradar, which in turn required an assessment of the relevant investment of Football Dataco. Another related to infringement by punters, and joint tortfeasance between Sportradar, James and end users.

The argument about subsistence related to the distinction between creation and collection of data. Football Dataco spent £600,000 per annum sending ex footballers (FBAs) to observe games and communicate information by phone to sports information processors (SIPs) who enter the data into the database. The Defendants argued that this was investment spent creating data, or at least that the FBAs created the data. Floyd J rejected this: [59]-[60].

As to infringement, it was acknowledged that while Sportradar obtained some of its data from live broadcasts, some of it came from the FD’s database via the Press Association’s system. For example, Sportradar collected data from Sky Sports Super Saturday show, and this data in turn came from the PA and Football Live. This included the data on goals, own goals, penalties, scorers, cards, expulsions and substitutions – but not the other data. Floyd J held, at [75], that this was substantial, on the basis that the investment needed to collect this data was ‘of the same order as that required for the full data operation.’ However, he thought that the information about ‘goals and timings’ alone was not substantial, as this could be achieved without SIPs or FBAs ([76]).

With regard to the end-user, the evidence was that punters of Stan James uploaded all the Live Scores data onto their machines, even though they only accessed some parts of that data using an encryption key. Sportradar argued that it was these parts that were extracted, so that there was no infringement by extracting a substantial part of the database. The Court rejected that: [69]-[70]. Therefore, the punters extracted all the data in Live Score, and as this contained a substantial part of the data in Football Live, the punters infringed.

This brought the tribunal to the key question - the joint liability of

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Sportradar and Stand James with the punters. Floyd J held that Sportradar was not so liable, but that Stan James was. As regards Sportradar, the judge explained:

‘The mere making available, abroad, of the means whereby a right may or will be infringed is not sufficient to make the supplier a jointfeasor. Something more is required. I do not think that it is realistic to say that by making data available in Austria, Sportradar make the act of extraction of data in England their own. I bear in mind that they have agreements with Stan James and Bet 365 for information to be made available, but what those companies do with the permission so granted is a matter for them.’

On appeal, [2013] EWCA Civ 27, two main issues were in play. First, whether the Football Live database was a product of investment, given that much of the investment was in the creation of the data, and Dataco had not identified the separate investment in obtaining, verification or presentation. Second, whether Sportradar was jointly liable.

As to the first, the Court rejected the argument that most of the data was created, because data only exist once recorded, as absurd: [41]-[42]. It found the idea to be ‘metaphysical’ and one that would undermine the purpose of the Directive: [39]. The distinction between creating data and collecting it must be drawn pragmatically. The Court accepted that some data, e.g. subjective opinions of the Analysts, was created. However, it rejected the proposition that investment in creation needed to be separated out:

“Suppose a scholar created a database consisting of all Charles Dickens' references to law and lawyer. That would involve expenditure of significant resources and the database would qualify for protection. Now suppose the scholar added a commentary to the entries. Would he lose protection for his database? Obviously not."

Rather, Jacob LJ highlighted that sui generis right would not protect the subjective, created elements – in the Dickens example, the commentary; in Football Live, the Opinions of the Analysts.

On the issue of liability, the Court of Appeal affirmed Floyd J’s finding that the amount of material included in Live Scores from Football Live was substantial from a qualitative perspective. Jacob LJ reminded himself that

‘Even if only a small part is taken, it can be qualitatively a substantial part if it represents a significant investment’ ([85]).

Here, the investment was the total investment in the FBA, SIP and ‘the whole overall set up.’ The Court also reversed the lower court’s finding that mere use of ‘goals and timings’ would not be substantial. The question was not whether the data might have been obtained using less investment (though the Court doubted it could have been done much more cheaply), but whether it reflected the investment the maker had used.

The Court of Appeal then addressed the joint liability question. It found first that punters extracted the whole Live Scores database ([72]) and having found that Live Scores infringed, the punters

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necessarily infringed too. Jacob LJ saw no basis for differentiating between Sportradar and Stan James, in particular, suggesting the CJEU decision resolved the question: [93]. He held that Stanmd James caused and thus was responsible for the punters infringements: [97].

 Beechwood House Publishing v Guardian Products Ltd [2010] EWPCC 012, [2011] EWHC 22 (Admin) (Pats County Court) This case concerned a medical database, ‘Binley’s Database of GP Practices.’ The database comprises the names and associated data of persons working at GP practices. The Claimant had published the database since 1994 and was updated annually. The defendant had been identified as having used the database, having mailed (as it turned out) two false ‘seed entries.’ In two decisions (the first an application for summary judgment, the second a trial), HH Judge Birss QC held first that sui generis right subsisted in the database a second that the Defendant had extracted a substantial part.

In the first decision, Judge Birss held (at [64]) that the ‘full primary care database’, which it took 9 people full time to update, with 10 working on an ad hoc basis – equivalent to £110,000 per year – was protected on a ‘rolling basis.’ The Judge was not prepared to find infringement by extraction of a substantial part based only on the evidence of use of one seed entry.

In the second decision, it was found that the material that the defendants had used must have come from the 1997 edition of the Claimant’s database (‘edition 5’). The defendant had obtained access to this indirectly in 2006 when it paid a third party (BDOL) £113,000 for its GP practices database. In 1997, BDOL had obtained a one-off licence to use some of the data from the Claimant’s database, and in breach of those terms, had included the data in its own database. There was no suggestion that the Defendant knew this, but the Judge held this did not matter (at 32): ‘infringement of sui generis rights in a tort of strict liability. The state of mind of the defendants is irrelevant to the question of liability.’

The key question was ‘substantiality’, either quantitatively or qualitatively: [28]. The Claimant’s database contained 43,000 entries; the defendant’s database contained around 8000 of those, of which it had used around 6000. Quantitatively, this was around 11-14%. This was ‘at the lower end of what could have been regarded as quantitatively substantial’ though nevertheless was a significant part. In addition, to assess the qualitative significance, the Judge considered the evidence of the investment more closely than in the first hearing: there was evidence as to money spent on mailing, telephone research etc. Considering the matter qualitatively, the material used reflected a substantial amount of work: 1800 phone calls a year (from 1994-1997), a ‘significant human and financial investment’ [44]-[45]. The Court also concluded that sending 16,000 letters from the database was a systematic extraction: [52] One further interesting point was whether it mattered that the quality of the data ‘degraded’ – i.e. lost accuracy – over time, so that it was relevant that the Defendant used the data 10 years after its compilation. The Court ruled that this was not relevant: [42].

 British Sky Broadcasting plc v Digital Satellite Warranty

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Cover Ltd [2011] EWHC 2662 (Ch) In the case the well- known satellite broadcasting company supplied receiving equipment with a 12-month warranty, and the defendants offered services targeted at customers whose warranties had or were about to expire. Sky claimed that in doing so the defendants misused Sky’s databases and sought summary judgment. Sky’s central customer database, contained details (name, address, phone number etc) of almost 10 million of its subscribers which Sky had through its own 14,000 and third-party call centres and its website. Sky stated it cost £300 million per annum to obtain and verify the customer details in the databases, much of this money being spent on call centres. Extraction having been admitted, the Defendants offered two defences: that the investment lay in the creation rather than obtaining of the data; and that in so far as investment lay in the presentation of the data, they had not used that investment. The Court rejected the first argument. At [21] Arnold J found that Sky had not created new information when they entered a customer’s details rather they ‘simply record pre-existing information in a systematic way.’ The Judge observed that to accept the defence would ‘substantially deprive the contents of many databases of protection, contrary to the whole purpose of the Database Directive.’

 Forensic Telecommunication Services Ltd v The Chief Constable of West Yorkshire Police [2011] EWHC 2892 (Ch). The claimant offered mechanisms to recover data from mobile phones. One element was the development of a database of permanent memory absolute addresses (PM Abs) for Nokia phones, comprising 33 pairs of addresses covering 25 Nokia models ([75]). This was created by Seyton Bradford, who worked for FTS between 2003 and 2009. This database was supplied with the software (known as FTS Hex) which Bradford developed to clients of FTS, after its launch in 2006. West Yorkshire Police needed to be able to access mobile phones and had some contacts with FTS. It appeared that parts of the PM Abs list had appeared on the Police website. FTS brought proceedings claiming copyright, sui generis right and breach of confidence. Arnold J held that the collection of data was a ‘database’ [88], but was not original, so was not protected by copyright, as there was no selection and arrangement was ‘a matter of happenstance over time’ [90]. The Judge went on to hold, however, that sui generis right did subsist because of the effort that went into obtaining and verifying the data [123] referring back to [76], though he gave no abstract indication as to the threshold. The Court then concluded that Hirst (of the defendant police force) extracted and reutilised a substantial part, viewed ‘quantitatively or qualitatively’ [124], having found as a fact that Hirst had obtained from a licensee of FTS (the security service) 30 pairs of addresses ([104]). In turn the Court found the West Yorkshire Police was vicariously liable.

 Technomed v Bluecrest Health Screening [2017] EWHC 2142 (Ch) (Judge D Stone) Technomed claimed copyright and sui generis right in their electrocardiogram ("ECG") analysis system known as ECG Cloud. This database comprised a set of classifications of readings (e.g. heart rate) the pointed towards preliminary diagnoses: for example, for the heart rate there are a series of categories

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(normal, slow, fast) (called ‘options’), each associated with a risk status (traffic lights) and explanatory text (‘patient definitions.’) These were developed primarily by H, but with assistance from S, D and M. The database was subject to 184 modifications between 2013 and 2015. In 2012, T entered into a contractual arrangement to provide services to Bluecrest and in 20132 provided B with a pdf copy of the database. The relationship between the parties deteriorated, and eventually B started using Express’s services. In due course, it alleged that the defendants, Bluecrest and Express had infringed.

The defendant denied that the system was in law a database, given that it was I the form of a pdf. The judge rejected this: [69]-[71]. He explained:

‘Individual Classifications are accessible, either by reading the pdf with the human eye, or accessing the spread sheet electronically. By choosing an Option within a Classification, the relevant Traffic Light and Patient Definition are provided. The informative values are not affected. In my judgment, the use to which the Database can be put (and indeed was put by the defendants) is no different to a telephone book (where accessing a name carries with it an address and a phone number) or a list of football features. I do not accept that a pdf document cannot be a database for these purposes. Clearly, the contents of the pdf can be accessed, either through electronic conversion, through digital character recognition, or old-fashioned reading or re-typing.’

He found that the investment in obtaining and verifying the data was substantial ‘qualitatively’: [75]. The initial database ‘took Mr H many hours.’ In addition, the feedback tool enabled reviewing cardiologists to edit various aspects of the reporting data, which amendments were then reviewed, and alterations made to the database. The Judge said he did not need to decide whether compilation of ‘the database took hundreds of hours, or some lower number’ because, in his view, qualitatively the investment was ‘substantial’. Moreover, the Court concluded that the whole database was copied when the pdf was passed from B to E, and then used by E in Version 00, 01 and 02 of its system: [79].

Recognising the originality standard in the Database Directive for databases was ‘higher’ [89], the Court referred to the High Court decision in Football Dataco [2010] (oddly, given the matter was later referred to and decided by the CJEU). Judge Stone QC found that there was ‘considerable intellectual effort and creativity expended in choosing the contents of the Database’, including in selecting and arranging the classifications: [98]-[99]. Given that the whole database had been copied, the Court found infringement.

In addition to these cases, sui generis right has been relied on, alongside other claims, in a host of actions against ex-employees, who are alleged to have retained and used copies of customer or supplier lists which belong the employer. It is asserted that such lists are databases:

Pennwell Publishing (UK) v Ornstein & Ors [2007] EWHC 1570 (QB) (Judge Fenwick QC) (considering the status of a spreadsheet of contacts created by the Defendant, an ex-employee, who had

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set up in competition, and suggesting that while not original [107], the list was protected by SG right and, if created in the course of employment, that vested with the employer: [108])

Magical Marking Ltd v Holly [2008] EWHC (ch) 2428, where ex- director of firm raided and copied, inter alia, customer lists, Norris J found (i) this was protected by sui generis right and (ii) the sui generis right was infringed by unlawful extraction.

Berryland Books Ltd v BK Books Ltd [2009] EWHC 1877 (Ch) (Judge Hodge QC), rejecting database claim against ex-director and employee who set up in competition, grounded in wrongful retention of database of suppliers and customers, finding at [41] that the claim was not established on the facts

Pintorex Ltd v. Keyvanfar [2013] EWPCC 36, [11]–[13] (Alastair Wilson QC.) Where Defendant, ex-employee of C, a stationery business, loaded database onto his laptop and set up in competition, the Judge questioned why sui generis right (‘such troublesome allegations’) set up in competition and set up in competition and was pleaded in addition to breach of confidence

Flogas Britain Ltd v. Calor Gas Ltd [2013] EWHC 3060 (Ch), [108] (Proudman J) (where D employed X, former employee of Claimant, and X supplied C’s database of customer names and addresses, D was found vicariously liable for infringement of sui generis right by extraction, but no award of additional damages was made. Note [120] on substantial part.)

Capita plc v Richard Darch [2017] EWHC 1248 (Ch): sui generis right in particulars of claim, but not discussed in case where ex- employer sought interim relief against ex-employees who had set up in competition.

MPT Group v Peel et Ors [2017] EWHC 1222 (Ch) (in action by company that makes machinery and parts for mattress manufacture against ex-employees that set up in competition, finding serious issue to be tried with respect to sui generis right in list of customers and suppliers downloaded by the employees before departure, the Judge noting that this act infringed sui generis right (at [41])).

The UK courts are not concerned about the national legislation 2. Definitions apart from the cases where there is a margin for the Member

State, like in the exceptions.

Pre-Directive:

- Please describe UK law offered protection to original tables and compilations prior how the notion of the Database Directive. A wide range of subject matter had been database is protected as compilations. This included football pools coupons,102 defined in your a leaflet conferring information about herbicides,103 television national legislation schedules,104 directories listing the names and addresses of

102 Ladbroke v. William Hill [1964] 1 All ER 465, 471; Football League v. Littlewoods [1959] Ch 637 (fixture lists); Greyhound Services v. Wilf Gilbert (Staffs) [1994] FSR 723 (advance programme of greyhound races). 103 Elanco v. Mandops [1980] RPC 213. 104 Independent Television Publications v. Time Out [1984] FSR 64.

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and how it is solicitors,105 a compilation of computer programs,106 a timetable interpreted by index,107 trade catalogues,108 and street directories.109 courts.

Post-Directive

Since 1998, the definition of literary works, contained in section 3(1) of the CDPA 1988 covers:

. . . any work, other than a dramatic or musical work, which is written, spoken or sung, and accordingly includes (a) a table or compilation (other than a database), (b) a computer program, (c) preparatory design material for a computer program, and (d) a database.

Section 3(1)(d) of the CDPA 1988, corresponding to Article 1(2) of the Directive, defines a database very broadly as ‘a collection of independent works, data or other materials which (a) are arranged in a systematic or methodical way, and (b) are individually accessible by electronic or other means’.

Pre-Directive

Prior to the Directive, UK law recognised that as original if an author has exercised the requisite labour, skill, or judgment in producing the work. This characterization of the originality standard was adopted at the highest level in Ladbroke v. William Hill,110 a case in which the House of Lords treated football pools - How has originality coupons (tables of football matches arranged such that customers been understood? could gamble on the results in a certain number of matches) as original compilations because of the labour, skill, and judgment that had gone into devising the betting system that informed the coupon. The phrase ‘labour, skill, or judgment’ was not been deployed with great precision (and thus should not be viewed as if it were a statutory phrase). Sometimes, the courts have used the phrase disjunctively, referring to labour, skill, or judgment;111 sometimes cumulatively, as labour, skill, and judgment.112 On other occasions, the words ‘work’, ‘capital’, ‘effort’, ‘industry’,

105 Waterlow Directories v. Reed Information [1992] FSR 409; Waterlow Publishers v. Rose [1995] FSR 207; Kelly v. Morris (1866) LR 1 Eq 697. 106 Ibcos Computers v. Barclays Mercantile Highland Finance [1994] FSR 275 (335 program files, 171 record layout files, and 46 screen layout files were held to be a compilation). 107 Blacklock v. Pearson [1915] 2 Ch 376. 108 Purefoy v. Sykes Boxall (1955) 72 RPC 89. 109 Kelly v. Morris (1866) LR 1 Eq 697. 110 [1964] 1 All ER 465, 469 (Lord Reid). 111 Ibid, 469 (Lord Reid). 112 Ibid, 473f (Lord Evershed); Interlego v. Tyco [1988] RPC 343, 371.

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‘time’, ‘knowledge’, ‘taste’, ‘ingenuity’, ‘experience’, or ‘investment’ are used.113 The case-law suggested that the amount of ‘labour, skill, and judgment’ must be ‘substantial’—or at least not trivial.114 Although the British position was never completely clear, some of the case law suggested that where a work resulted from a great quantity of labour, it might fall to be protected. For example, where a compiler had spent a considerable amount of time and effort creating a chronological list of television programmes or an alphabetically ordered list of lawyers,115 the resulting work was treated as original. That is, even though, in creating the table or compilation, the author might not have exercised any ‘skill or judgment’, nonetheless the work might still have been treated as original if the process of compilation involved a sufficient amount of (mundane) labour. However, this would be the case only if the amount of labour was substantial. For example, where the process of compilation involves little effort or judgment and the effect is commonplace, the work will not be treated as original; thus, the selection of seven tables at the front of a diary, consisting of things such as days and dates of the year, tables of weights and measures, and postal information,116 was held by the House of Lords to be non-original. Similarly, in another case involving a local timetable showing a selection of trains to and from a particular town that was prepared from official railway timetables, the compilation was held to be non-original.117 In these sorts of cases, the difficult question was predicting how much labour was required for the resulting work to be original.

Post-Directive

Section 3A(2) states that

‘For the purposes of this Part a literary work consisting of a database is original if, and only if, by reason of the selection or arrangement of the contents of the database the database constitutes the author’s own intellectual creation.’

As already noted, following the CJEU decision in Football Dataco it was understood that the originality test precluded copyright in football fixture lists, as these merely involved skill.

In the Sportradar case, Jacob LJ held that the standard meant

113 Ladbroke v. William Hill [1964] 1 All ER 465, 475 (Lord Hodson: ‘work, labour and skill’), 478 (Lord Devlin, ‘skill, industry, or experience’), and 480 (Lord Pearce. ‘labour or skill or ingenuity or expense’). 114 Ibid, 478 (Lord Devlin), 476 (Lord Hodson). 115 BBC v. Wireless League Gazette Publishing Co. [1926] Ch 433; Independent Television Publications v. Time Out [1984] FSR 64; Waterlow Directories v. Reed Information Services [1992] FSR 409; Dun & Bradstreet v. Typesetting Facilities [1992] FSR 320; Football League v. Littlewoods Pools [1959] 1 Ch 637, 656–7 (Upjohn J). 116 Cramp v. Smythson [1944] AC 329. 117 Leslie v. Young [1894] AC 335.

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there was no copyright in factual material contained in reports of details of sports events (which was all the defendants were said to have reproduced): [2011] EWCA Civ 330, [16]-[17].

One British court has suggested that there might be a quantitative dimension to the requirement that a work be its author’s own intellectual creation. In British Horseracing Board, Laddie J stated:

Although there is no requirement to demonstrate aesthetic or qualitative criteria, there must be a quantitative baseline of originality before protection is acquired.118

There is no further definition. The Courts have not offered any explicit standard. £600,000 per annum was clearly enough: Football Dataco v. Sportradar and Stan James [2013] EWCA Civ - Does the 27, [69]. legislation define further the concept Clearview International v OWH Com [2008] EWHC 1494 (Ch) of “substantial “I should add that I have some doubts whether there is also a investment”, and cause of action under the 1997 Regulations, as it is not wholly how do the courts clear that, so far as the Company's database is concerned, there interpret it in your country? What is was a sufficiently "substantial" investment in obtaining, verifying the threshold? or presenting the contents of the database, as required by Reg 13(1).”

- How did the courts apply the CJEU The courts in the UK implemented the case law from the CJEU case law concerning the and there is no recent decision apart from the one of the sports difference between industry. creation and collection of data? - Are the definitions/notions of the rights and exceptions in your copyright It is hard to speak about the implementation of the InfoSoc provisions relating Directive in the UK, but inn general there is no alignment with all to databases the provisions of databases. aligned with the same notions in your copyright law as amended by the Infosoc Directive? 3. Should the copyright It would be good to be so, but there is no major issue with the provisions of the current situation either. My main concern regarding the copyright Database Directive be provisions of the database directive is that it is difficult to prove standardised with your claim under the copyright regime and as you have the sui those of the InfoSoc generis protection, there is no need to go for the copyright. Directive,

118 British Horseracing Board v. William Hill [2001] ECDR 257, 269 (Laddie J). For discussion of a claim by the Ministry of Sound to copyright in its compilation albums, see V. Barnet et al., ‘Compilation Album Copyright’ [2014] Ent L Rev 1 (the dispute described there was settled).

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2001/29/EC? - on the definition of rights - on electronic exhaustion - on exceptions (for example, transient copying, private copying) 4. In your practice (be it as a defendant or a claimant), have you had problems to determine who the owner of copyright was and/or sui generis right? Database Regs, reg. 15, states that the ‘maker’ of a database is the first owner of the sui generis right. Subject to an exception as regards employees in Reg 14(2), the maker of the database is the person who takes the initiative in obtaining, verifying, or presenting the contents of a database, and who assumes the risk of investing in that obtaining, verification, or presentation: Reg 14. The implication of this is that the maker must take the initiative and the risk of the investment. If one person takes the risk and another person takes the initiative, joint making may occur: Reg 14(5). Where a database is made by an employee in the course of employment, unless otherwise stipulated the employer is regarded as the maker of the database. Similar provision exists for databases made under the direction of the Crown, the House of Commons and House of Lords: Reg 14(3)- - Have you (4). encountered problems with the A number of presumptions simplify the task of proving ownership: definition of the Reg 22. Where a name purporting to be that of the maker “maker” of a appears on copies of the database as published or on the database? database when it was made, the person whose name appeared is

presumed to be the maker of the database and to have made it in an employment relationship. Where copies of the database as published bear a label or a mark naming a person as the maker of the database, the label or mark is presumed to be correct. Both presumptions are rebuttable.

The sui generis right is an assignable property right, and sections 90–93 of the 1988 Act apply to the sui generis right as they would to copyright works: Reg 23. It is also possible to license sui generis rights, and licensing schemes and licensing bodies are subject to supervision in accordance with Schedule 2: Reg 24. The jurisdiction of the Copyright Tribunal has been extended accordingly.

- Have problems arisen identifying the “maker” in cases where the person who takes I am not aware of any in this respect. the initiative is different from the person that takes the investment

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risk?

5. Does the legislation define further the concepts of extraction and re - utilization in Reg. 12 your country and how do the courts interpret it?

- Could you provide The Court of Justice took a very broad approach regarding the us with examples of what has been extraction and the reutilization, which extends to a broad idea of perceived as what is perceived as substantial part. “substantial part”? - Could you provide us with examples of what has been perceived as “repeated and/or There is not major case law in the UK. systematic extraction/re-use of insubstantial part”? Where a database has been made available to the public in any manner, the sui generis right is not infringed by a fair dealing with a substantial part of its contents if three conditions are satisfied: (i) if that part is extracted from the database by a person who is a lawful user of the database; (ii) if it is extracted for the purpose of illustration for teaching or research and not for any commercial purpose; and (iii) if the source is indicated: Reg 20. With respect to ‘text and data mining’, the government expressed the view that it was unnecessary to modify the exception to add something equivalent to the new section 29A 6. How far have (introduced in June 2014).119 In its view, the existing exception exceptions been was sufficiently broad to encompass acts falling within the new implemented and how copyright exception. have they been interpreted by courts?

An exception is also made for public lending: Reg 12(2). For lending to be ‘public’, it must take place through an establishment that is accessible to the public. Such an establishment is permitted to charge borrowers an amount that does not go beyond what is necessary to cover the costs of the establishment.120 However, permitting remote access is not deemed to constitute a lending. Bizarrely, the exception for public lending does not apply to the making of a copy of a database available for on-the-spot reference use. Even if the lending is

119 HM Government, Technical Review of the Draft Legislation on Copyright Exceptions: Government Response (2014), 13 (stating that the exception ‘will permit the extraction of whole works if required for text and data mining through the provision for “fair dealing with a substantial part” ’). 120 Database Regs, reg. 12(3).

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gratuitous and in a public establishment, the Regulations suggest that it may be an infringement.121

Defences also exist in relation to parliamentary and judicial proceedings, royal commissions and statutory inquiries, material open to public inspection or on an official register, material communicated to the Crown in the course of public business, public records, and acts done under statutory authority: reg 20(2), sched 1.122

Reg 20A (added by the Legal Deposit Libraries Act 2003)…

The Regulations also provide a defence where the extraction or reutilization occurs at a time when the identity of the maker could not be ascertained by reasonable inquiry, or in pursuance of arrangements made at a time when such identification was not possible. It must also be reasonable to assume that the sui generis right has expired: Reg 21.123

Competition law will also apply to the sui generis right in the same way as to other intellectual property rights.124

- In your view, The application of the exceptions in the UK have very little case which exceptions are needed to the law in the UK and we do not have a clear view on that. sui generis right? - Do difficulties arise from the absence of a provision for temporary copying I do not think that it creates any problem. (Article 5(1) of Directive 2001/29/EC)? - How is the user’s “right of consultation” I am not aware of any issue. secured in your Member State? - Do you think that the concept of There are not that many issues regarding the lawful user in lawful user is relation to the Database Directive. However, it has created issues sufficiently in relation to the computer programs directive. understood in your country?

121 Database Regs, reg. 12(4). 122 Database Regs, Sch. 1. These correspond to the provisions of CDPA 1988, ss 45–50, and Database Dir., Art. 9(c). 123 Database Regs, reg. 21(1). 124 Database Dir., Recital 47.

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7. In your Member State, are database creators free to rely on the law of unfair competition to protect databases? Are there any problems with this as There is no general law of unfair competition. We just use trade an alternative to the secret to deal with a number of issues. sui generis right (were the latter to be abolished)? Could you give us some examples or indicate any court decision?

8. Do the database producers rely on contract law in addition to the sui generis right to protect the investment in their databases? Have there Yes, they do rely on contracts. The producers are in favour of been any problems contract law. with the use of contracts as either an alternative to the sui generis right or an additional layer of protection? Could you give us some examples or indicate any court decision?

9. Do database makers use on technological They are important, since they are stopping access to people who protection measures are not entitled to use a database. (TPMs) to protect their databases and if so, do they encounter problems in doing so? 10. Have you encountered problems with the I am not aware of any big issue on that. There is a controversy interaction between regarding the freedom of information and the extent to which the Database Directive and the PSI Directive? they can disclose that, but I do not think that these issues are Could you give us related to the Database Directive. The UK is in general very open some examples or in this respect. indicate any court decision? 11. Have you encountered problems with the EU I do not see any issue with open access policies. The issues here or national open are regarding the confidentiality of the information, but I do not access policies see any link between open access policies and the database regarding research directive. activities? Could you give us some examples or indicate any court decision?

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12. Would there be more or less need for sui I would be against that. We have the sui generis right and generis right if the EU anything different is going to upset the users. On top of that, the recognised a “data right of “data producer’s” is going to abolish the basic distinction producer’s right” as proposed in the "Data on creation and collecting of data. However, if it were adopted Economy Package"? then, both rights could be on board as the current sui generis Could you give us right might appear useful with case law etc. to make the new some examples or right more understandable. indicate any court decision?

13. Who is eligible to Compliant with the Directive protection?

14. Is it permitted to circumvent the lawful user exception and the No rights and obligations of lawful users by contract? 15. Do you consider – from your experience and observations – judges and lawyers sufficiently trained / specialised in sui They are specialised and expertized enough. generis rights once litigation takes place? Are plaintiffs and defendants likewise sufficiently knowledgeable? 16. Please indicate other important legal issues in the context of I do not think so that there is any issue left to discuss. Database Directive in the country. 17. Concluding question: Do you think that a) The Directive is an effective means for achieving its goal? b) Do you think that it is a cost-efficient means for a) It has achieved most of the goals. But in case that achieving its goal international conventions were in place, the protection (consider hereby would be better. the costs of legal b) I think so. representation, c) I think so. court fees, the d) The Directive is internally clear and consistent duration of cases, e) It is hard to say that there is a great value, but it is bad etc.)? to abolish it. The interviewee from the UK spoke about c) Is at all relevant the “negative value”, where is it bad to abolish the for the target regime, but it is also hard to articulate any big value. groups? d) Is it, in your view, coherent with other pieces of legislation at European and national levels?

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e) What is the added value of database protection being dealt with at the European level? It is hard to articulate a major benefit of the Database Directive. 18. What do you regard as the major benefits of At the same point, it will be difficult to find any problem of the the Database Directive. Directive? What are its major problems? My suggestion is to leave the sui generis right the way it is. If we Weighing these, which would not have created this directive, the database industry should be the next would maybe not have any problem. However, since the regime steps? already exists, there is no reason to abolish it.

Author: Lionel Bently

Review: Trevor Cook

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3 Overview country grids for 20 EU countries

3.1 Austria Directive Question Answer 96/9/EC

What law governs Urheberrechtsnovelle 1997 of 8th of January copyright? (ACA).

How is subject matter The definition of database (Datenbank) in Art 1(2) defined? Sec 40 f (1) of the ACA fully complies with the directive. That the database may be “in any form” is not expressly stated.

Are recordings or an audio- Such recordings are not expressly excluded Rec 17 visual, cinematographic, from database protection under Austrian literary or musical work law. excluded?

How is originality of According to Sec 40 (2), Databases (as Art 3 databases defined? defined by Sec 40 f (1)) “ shall be protected by copyright as works of collection if they constitute original intellectual creations (database works) by reason of the selection or arrangement of the material”.

Sec 6 of the ACA defines works of collection (Sammelwerke) as “collections which constitute an original intellectual production resulting from the combination of individual contributions to form a homogeneous whole”.

Was this changed to Yes, the definition in Sec 40 (2) ACA has implement the directive? been created to implement the Directive. Previously, databases only enjoyed copyright protection if they fulfilled the criteria according to Sec 6 ACA.

Were pre-existing According to the Austrian legislator, this Art 14(2) databases protected? until precision would have been useless for when? Austria since the Directive has not strengthened its conditions for copyright protection of databases.

Are there special rules on Article 10 (1) of the ACA states that “the Art 4 database ownership? author of a work shall be the person who has created it”. Joint ownership is possible.

The ACA does not allow initial authorship to be granted to legal persons.

What rights does copyright Inter alia: Art 5 in a database confer? - Pursuant to Art 15 (1) of the ACA, the author has the exclusive right to reproduce his work. Temporary reproduction is not expressively reserved to the author by this

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provision; mere transient reproductions fall under the exception in Sec 41a ACA.

- Adaption (Sec 21 ACA)

- Distribution right (Sec 16 ACA)

- Communication (Sec 18, 18a, 40g ACA )

How is exhaustion treated? Sec 16 (3) ACA exhausts the right of distribution and is not limited to “ the right to control the resale”. It applies to copies of a work “which have been put into circulation by transfer of the property rights therein” , which may be considered as materially equivalent to “ the first sale”.

Are there exceptions for The lawful use exception is correctly Art6(1) lawful use? transposed by Sec 40h (3) of the ACA, except that the “ normal use” requirement is transposed by “use necessary for the use of the database for the intended purpose”. This condition was used for reasons of uniformity by the AT lawmaker.

Are contracts permitted to The provision has been made ius cogens, Art 15 limit this freedom? without prejudice to the validity of “ agreements concerning the extent of use in accordance with the intended purpose”. Again, this provision was added for reasons of uniformity with Sec 40d (4) of the ACA on computer programs. It is questionable whether Article 15 of the Directive allows for such exception to the ius cogens nature of the lawful use exception.

Are there exceptions for Yes (Sec 40h ACA). Art 6(2)(a) private use?

Are there exceptions for Yes (Sec 42 (6) ACA). Art 6(2)(b teaching?

Are there exceptions for Yes (Sec 41 ACA). Art 6(2)(c) public security/admin/judicial procedure?

Are there exceptions for Yes, e.g. reproduction for private use of Art 6(2)(d) other uses? collections (Sec 42 (4) ACA), academic citations (Sec 46 (2) ACA) and use of on audio-visual media in certain establishments (Sec 56 ACA) (see Woller in Kucsko/Handig (ed.), urheber.recht² (2017) § 40h recital 22).

What law governs sui Sec 76 ACA generis right? what is the protection A qualitatively and/or quantitatively Art 7 requirement? substantial investment. Correctly transposed by Article 76 c (1) of the ACA.

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Who is eligible? As regards natural persons, sui generis Art 11 protection is only granted to Austrian nationals or habitual residents in Austria pursuant to Sec 99c (1) of the ACA. As regards legal persons, the ACA transposes the Directive first correctly but then refers to ACA Sec 98 (2) indicating that legal persons require a headquarter in Austria to receive protection.

Therefore, the ACA treats Austrian nationals and legal persons with headquarters in Austria in a favourable manner.

Where Is extraction Austria has not used the terms “extraction” Art 7(2) defined? and “re-utilisation” but stuck to the traditional terms. Pursuant to Sec 76d (1) of the ACA, the database maker “shall, subject to the limitations of law, have the exclusive right to reproduce, distribute, broadcast and publicly communicate the database as a whole or a qualitatively or quantitatively substantial part of the database”. As regards the reproduction right, this provision complies with the Directive, except that temporary extraction is not expressly reserved to the database maker.

Where is re-utilization? See above. Art 7(2)

Is there a definition of No. Art 7(2) substantial part?

Is there a rule on repeated Yes, pursuant to ACA Sec 76d (1). Art 7(5) extractions?

How is exhaustion treated? By virtue of Article 76d (5), exhaustion of Art 7(2)(b) the sui generis right is submitted to the same regime as exhaustion of copyright under Sec 16 (3) of the ACA (see above).

Is the right assignable? Yes – there is no reference to the Art 7(3) prohibition of assignment in Sec 23 (1) and (3) ACA (see Woller in Kucsko/Handig (ed.), urheber.recht² (2017) § 76d, recital 51).

Is there an exception for Yes (Sec 76e ACA). Art 8(1) lawful use?

Are contracts permitted to Pursuant to Sec 76 e of the ACA, “any Art 15 limit this freedom? contract or agreement under which the lawful user of a published database has an obligation towards the maker to refrain from reproducing, distributing, broadcasting or communicating to the public qualitatively and quantitatively insubstantial parts of the database, shall be invalid where such acts neither conflict with a normal exploitation of the database nor unreasonably prejudice

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the legitimate interest of the maker of the database”. As it appears, this provision is limited to users authorised by agreement to use the database.

Are there exceptions for Yes, pursuant to Sec 76d (3). Art 9(1)(a) private use?

Are there exceptions for Yes, pursuant to Sec 76d (3). Art 9(1)(b) teaching?

Are there exceptions for Yes, pursuant to Sec 76d (5) in connection Art 9(1)(c) public with Sec 41. security/admin/judicial procedure??

How long does the sui 15 years from completion; 15 years from Art 10 generis right last? making available.

Is unfair competition law Yes. For example, “…it is possible for available? confidential databases to be protected as business or trade secrets and confidential information, in particular Section 11 of the Austrian Unfair Competition Act (Gesetz gegen den unlauteren Wettbewerb – “UWG”), which penalizes the disclosure of trade and business secrets by an employee, or Section 123 Austrian Criminal Code (Strafgesetzbuch – “StGB”), which penalizes spying on business or trade secrets for purposes of exploitation or publication. Furthermore, takeover of a competitor’s database may also constitute an unfair commercial practice under Section 1 UWG (as unfair use of a competitor’s asset).” (DLA Piper – IP in Data handbook; see also Woller in Kucsko/Handig (ed.), urheber.recht² (2017) § 76d recital 38).

Case law Austrian Supreme Court, 12. 6. 2007, 4 Ob 11/07g – EDV Firmenbuch III – “This decision is the third and in a row of Supreme Court decisions assessing the Austrian Companies’ Register as a sui generis protected database. According to the Supreme Court, since the on-going updating of the Companies’ Register is to be qualified as costs of “collection, review or presentation” of the contents of the database, the Companies’ Register is a database in which a material investment has been made and therefore subject to protection pursuant to Section 76d UrhG.” (DLA Piper – IP in data handbook)

Authors: Tobias Dudenbostel, Alfred Radauer

Review: Dr. Michael Woller

Sources: DLA Piper (2014): IP In Data Handbook; NautaDutilh (2001), pp. 17ff.

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3.2 Belgium Directive Question Answer 96/9/EC

What law governs Law of April 19, 2014, inserting Book XI 'Intellectual copyright? Property' to the Code of Economic Law, and specific provisions to the Book XI in Books I, XV and XVII of the Code

How is subject matter The definition of a database given in Article XI.186: Art 1(2) defined? “Les bases de données qui, par le choix ou la disposition des matières, constituent une création intellectuelle propre à leur auteur sont protégées comme telle par le droit d’auteur.

La protection des bases de données par le droit d’auteur ne s’étend pas aux œuvres, aux données ou éléments eux-mêmes et est sans préjudice de tout droit existant sur les œuvres, les données ou autres éléments contenus dans la base de données.”

The provision that a database may be in any form is expressly transposed only for the sui generis protection of databases in Article 3 of the Database Act, but Belgian literature considers that this provision applies to all databases, including those protected by copyright.

Are recordings or an Belgian literature confirms these exclusions (according Rec 17 audio-visual, to NautaDutilh). cinematographic, literary or musical work excluded?

How is originality of See above on subject matter Art 3 databases defined?

Was this changed to implement the directive?

Were pre-existing According to ND, not applicable in Belgium. Art 14(2) databases protected? until when?

Are there special rules on Art. XI.187 states: “Sauf disposition contractuelle ou Art 4 database ownership? statutaire contraire, seul l’employeur est présumé cessionnaire des droits patrimoniaux relatifs aux bases de données créées, dans l’industrie non culturelle, par un ou plusieurs employés ou agents dans l’exercice de leurs fonctions ou d’après les instructions de leur employeur.”

What rights does The author’s prerogatives are not expressly transposed Art 5 copyright in a database into Belgian law. Belgian literature and doctrine confer? considered it unnecessary because the prerogatives given to the author in Article 5 of the Directive correspond to those of the Copyright Act, which apply to all copyright subject matters, including on original databases.

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How is exhaustion Art. XI.165 states: “La première vente ou premier treated? autre transfert de propriété de l’original ou d’une copie d’une œuvre littéraire ou artistique dans l’Union européenne par l’auteur ou avec son consentement, épuise le droit de distribution de cet original ou cette copie dans l’Union européenne.“

Are there exceptions for Yes, Art. XI.188: “L’utilisateur légitime d’une base de Art6(1) lawful use? données ou de copies de celle-ci peut effectuer les actes visés à l’article XI.165, § 1er, qui sont nécessaires à l’accès au contenu de la base de données et à son utilisation normale par lui-même sans l’autorisation de l’auteur de la base de données.”

Are contracts permitted No. (Art. XI.188) Art 15 to limit this freedom?

Are there exceptions for Yes. XI.191.1 Art 6(2)(a) private use?

Are there exceptions for Yes. Art XI.191.2–4 Art 6(2)(b teaching?

Are there exceptions for Yes. Art XI.191.5 Art 6(2)(c) public security/admin/judicial procedure?

Are there exceptions for No. Art 6(2)(d) other uses?

What law governs sui Law of April 19, 2014, inserting Book XI 'Intellectual generis right? Property' to the Code of Economic Law, and specific provisions to the Book XI in Books I, XV and XVII of the Code,

What is the protection Art. XI.306 states, in line with the Directive: “Le droit Art 7 requirement? des producteurs de bases de données s’applique aux bases de données quelle que soit leur forme dont l’obtention, la vérification ou la présentation du contenu atteste un investissement qualitativement ou quantitativement substantiel.”

Who is eligible? The revised Art XI.315 states: “Le droit des Art 11 producteurs de bases de données s’applique aux bases de données dont le producteur est ressortissant d’un Etat membre de l’Union européenne ou a sa résidence habituelle sur le territoire de l’Union européenne.”

Where Is extraction According to Art. XI.307, the producer has the Art 7(2) defined? exclusive right to authorize the “extraction” of a substantial part of the content of the database. The new term of “extraction” is defined in accordance with Article 7.2 (a) of the Directive. The specification in Article 7.2 (a) of the Directive that the “substantial part” has to be evaluated either qualitatively or quantitatively is expressly taken up.

Where is re-utilization? Art XI.307: The Act recognizes the exclusive right of Art 7(2) “reutilization” of the producers of the database. The new term of “re-utilization” is defined in accordance

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with Article 7.2 (b) of the Directive.

Is there a definition of No, but case law (according to NautaDutilh): Art 7(2) substantial part? 1) The President of the District Court of Brussels stated that having two employees working since 1989 almost on a full-time basis on the database, making the inventory of data concerning 146 (in 1991) up to 187 (in 1998) associations collected by using several means (such as the Moniteur belge, the press, the associations themselves,… ), establishing questionnaires and sending them to collect these data and to keep them up-to-date, amounted to a substantial investment and gives rise to the sui generis protection of the database.

2) the President of the District Court of Brussels made clear that the substantial investment must be related to the elaboration of the database (and not to the designing and management of the website). The investment consisted in the elaboration of a procedure to collect the required data on a weekly basis, the development or acquisition of the necessary software and the weekly residual work of manual verification and data input, as well as the proactive management to cover the whole Belgian territory. The investment had to be substantial, the President stated, because the defendant had accepted to pay BEF 30,000 per month to benefit from this product. The fact that a major part of the investment does not exist anymore and that there is only a minor residual investment left, is immaterial in that respect.

Is there a rule on Art. XI.307 states: “Les extractions et/ou réutilisations Art 7(5) repeated extractions? répétées et systématiques de parties non substantielles du contenu de la base de données ne sont pas autorisées lorsqu’elles sont contraires à une exploitation normale de la base de données ou causent un préjudice injustifié́ aux intérêts légitimes du producteur de celle-ci.”

How is exhaustion Art. XI.307 transposes as follows: “La première vente Art 7(2)(b) treated? d’une copie d’une base de données dans l’Union européenne par le titulaire du droit ou avec son consentement, épuise le droit de contrôler la revente de cette copie dans l’Union européenne.”

Is the right assignable? Yes (Art. XI.308). Art 7(3)

Is there an exception for Yes. Art. XI.311: “Le producteur d’une base de Art 8(1) lawful use? données qui est mise à la disposition du public de quelque manière que ce soit ne peut empêcher l’utilisateur légitime de cette base d’extraire et/ou de réutiliser des parties, qualitativement ou quantitativement non substantielles, de son contenu à quelque fin que ce soit.”

Are contracts permitted No (Art.XI.314) Art 15 to limit this freedom?

Are there exceptions for Yes. Art. XU.310: “…extraire une partie substantielle Art 9(1)(a) du contenu d’une base de données non électronique

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private use? lorsque cette extraction est effectuée dans un but strictement privé”

Are there exceptions for Yes. Art. XI.310: “…extraire une partie substantielle du Art 9(1)(b) teaching? contenu de la base de données lorsque cette extraction est effectuée à des fins d’illustration de l’enseignement ou de recherche scientifique pour autant que cette extraction soit justifiée par le but non lucratif poursuivi.”

Are there exceptions for Yes. Art. XI.310: “…extraire et/ou réutiliser une partie Art 9(1)(c) public substantielle du contenu de la base de données à des security/admin/judicial fins de sécurité publique ou aux fins d’une procédure procedure?? administrative ou juridictionnelle.”

How long does the sui Art. XI.309 reads: “Le droit des producteurs de bases Art 10 generis right last? de données prend naissance dès l’achèvement de la fabrication de la base de données et expire quinze ans après le 1er janvier de l’année qui suit la date d’achèvement de la fabrication.

Dans le cas d’une base de données qui est mise à la disposition du public de quelque manière que ce soit avant l’expiration de la période prévue à l’alinéa 1er, la durée de la protection expire quinze ans après le 1er janvier de l’année qui suit la date à laquelle la base de données a été mise à la disposition du public pour la première fois.

Toute modification, qualitativement ou quantitativement substantielle, du contenu de la base de données, notamment toute modification substantielle résultant de l’accumulation d’ajouts, de suppressions ou de changements successifs, qui atteste un nouvel investissement, qualitativement ou quantitativement substantiel, permet d’attribuer à la base de données qui en résulte, une durée de protection propre.

Le producteur d’une base de données a la charge de prouver la date d’achèvement de la fabrication de la base de données et la modification substantielle du contenu de la base de données qui conformément à l’alinéa 3 permet d’attribuer à la base de données qui en résulte, une durée de protection propre.”

Is unfair competition law available?

Authors: Alfred Radauer, Tobias Dudenbostel

Source: NautaDutilh (2001), pp. 38ff.; WIPO-Lex

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3.3 Bulgaria Question Answer Directive 96/9/EC

What law governs Provisions of the DBD were implemented copyright? on January 1st 2003 (Official Gazette no. SG 77/02) and January 10th 2006 (Official Gazette no. SG 99/05). Law on Copyright and Related Rights 56/29, 1993, as amended up to 25/25, 2011, (hereinafter "Law").

How is subject matter Additional provisions Para 2 (13) Art 1(2) defined? Database means a collection of independent works, data or other materials, arranged systematically or methodically and individually accessible in electronic or other way.

Are recordings or an Additional provisions Para 2 (13) Rec 17 audio-visual, cinematographic, The creation of the recording of separate literary or musical audio-visual works, literary or musical work excluded? works, as well as collection of phonograms with musical performances on a compact disc shall not be database in the sense of this law;

How is originality of Additional provisions Para 2 (13) Art 3 databases defined? Originality requires that content in database is arranged systematically or methodically and that individually accessible in electronic or other way.

Was this changed to Additional provisions Para 2 (13) implement the directive? Yes, this provision is provided as amendment 77/02 as of 1.1.2003.

Were pre-existing Not necessarily, Art 14(2) databases protected? until when? Art 101 (a) amendments from 2003

This law shall apply to the makers of databases if they are citizens of the Republic of Bulgaria or have permanent address in it or are citizens of a Member State of the European Union or have permanent address in such state. Art 102 (2) The foreign makers of databases, except those referred to in Art. 101a, might have been protected under treaties to which the Republic of Bulgaria is a party before entering to force of the Law.

Are there special rules Art 4 on database ownership?

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What rights does Art149 (1) Art 5 copyright in a database confer? The law provides that owner is entitled to prohibit : (i) the extraction through permanent or temporary transfer of the contents of the database or its significant in quantitative or qualitative respect part to another carrier by any means or in any form, (ii) re-utilization of the contents of the database or a substantial in qualitative or quantitative respect part of it by making it available to the public by any means or in any form, including by distribution of copies, renting or by providing in digital way; (iii) right to prohibit the activities referred to aforesaid also regarding insubstantial part of its contents, when these activities are carried out repeatedly and systematically in a way conflicting with its normal exploitation or may prejudice the legitimate interests of the maker

How is exhaustion 93 (d) treated? Exhaustion of distribution rights covers

Reselling material copy on the territory of the Member States of the EU.

93 (d) (2)

If database is transferred in digital form, including in communication network, the right shall not exhaust regarding the materialised copies of the database made by the recipient with the consent of the owner of this right.

Are there exceptions Art. 93(f) Art6(1) for lawful use? “when this is necessary to access the contents of the database and for its normal use”

Art 93(g)

The Law provides exceptions: (i) reproduction for personal use of contents of a database of non-electronic form; (ii) reproduction without commercial purpose for illustration for teaching and scientific research to extent justified by the purpose as long as the source is indicated; (ii) reproduction or re- utilization for the purposes of the national security or in the administrative or court procedures.

Are contracts The Law does not provide such provision Art 15 permitted to limit this

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freedom?

Are there exceptions Art 93(g) Art 6(2)(a) for private use? The Law provides exception on reproduction of private

use of a database of non-electronic form.

Are there exceptions Art 93(g) (2) for teaching? Art 6(2) (b The Law provides lawful reproduction without commercial purpose for illustration for teaching and scientific research to extent justified by the purpose as long as the source is indicated

Are there exceptions Art 93(g) (3) Art 6(2)(c) for public security/admin/judicial The Law provides exception on procedure? reproduction or utilization of database for the purposes of the national security or in the administrative or court procedures.

Are there exceptions The Law provides only stated exceptions Art 6(2)(d) for other uses?

What law governs sui Copyright Law. Chapter 11 (but not listed generis right? as related rights in Art. 72) what is the protection Art 93 (b) (2) Art 7 requirement? Investment in collecting, verifying or using the contents of a database if it is significant in qualitative or quantitative respect

Who is eligible? Art 93 b Art 11

Owner of the right is maker of the database. Maker of database is defined as the natural or legal person, who has taken the initiative and the risk to invest in collecting, verifying or using the contents of a database, provided that investment is significant in qualitative or quantitative respect.

Art 101 (a) amendments from 2003

This law shall apply to the makers of databases if they are citizens of the Republic of Bulgaria or have permanent address in it or are citizens of a Member State of the European Union or have permanent address in such state. Art 102 (2) The foreign makers of databases, except those referred to in Art. 101a, shall be protected in compliance with the international treaties to which the Republic of Bulgaria is a party.

Art. 102(2): The foreign makers of

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databases, except those referred to in Art. 101a, shall be protected in compliance with the international treaties to which the Republic of Bulgaria is a party.

Where Is extraction Art. 93c Art 7(2) defined?

Where is re-utilization? Art. 93c Art 7(2)

Is there a definition of Substantial part is not defined further to Art 7(2) substantial part? what the Directive already provides

Is there a rule on Yes. Art 93c states that “…The maker of Art 7(5) repeated extractions? database shall have the right to prohibit the activities referred to in para 1 also regarding insubstantial part of its contents, when these activities are carried out repeatedly and systematically in a way conflicting with its normal exploitation or may prejudice the legitimate interests of the maker.” The adverb “unreasonably” which qualifies prejudice has not been integrated.

How is exhaustion Possible application referred to general Art 7(2)(b) treated? terms on Exhaustion as to 93 (d)

Is the right Referred to 93 (c) Art 7(3) assignable? The right of the extraction through permanent or temporary transfer of the contents of the database or its significant in quantitative or qualitative respect part to another carrier by any means or in any form may be transferred or granted to other persons.

Is there an exception Art 93 (f) Art 8(1) for lawful use? Where a database has been many available to the public in whatever manner, its maker may not prevent the extraction or re-utilization of insubstantial part of its contents for any purposes by a person, who has acquired in a lawful way access to it. Where the lawful user has right to extract or re-utilize only part of the database, this provision shall apply only to that part.

Are contracts Any agreement contradicting provisions Art 15 permitted to limit this 93 (f) shall be invalid. freedom?

Are there exceptions Possible application referred to general Art 9(1)(a) for private use? terms on Exceptions previously said 93 (g) (i)

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Are there exceptions Possible application referred to general Art 9(1)(b) for teaching? terms on Exceptions previously said 93 (g) (ii)

Are there exceptions Possible application referred to general Art 9(1)(c) for public terms on Exceptions previously said 93 security/admin/judicial (g) (iii) procedure??

How long does the sui Art 93 (h) (1) Art 10 generis right last? The rights referred to in Art. 93c shall expire after fifteen years. Term shall run from the first of January of the year following the year of completion of the making of the database.

Art 93 (h) (3)

Each new substantial investment in the database leading to significant change in the contents of the database shall qualify the part resulting from this investment for its new independent term of protection.

Is unfair competition Not found. law available?

Author: Pavle Tasic

Review: Alfred Radauer

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3.4 Croatia Question Answer Directive 96/9/EC

What law governs The DBD was implemented with copyright? amendments on Law on Copyright and Related Rights (Official Gazette no. NN127/2014) and set forth on November 6th 2014. Law on Copyright and Related Rights 167/03, 79/07, 80/11, 125/11, 141/13, 127/14, 62/17, (hereinafter "Law")

How is subject matter Art. 7 (3) Art 1(2) defined? Databases, under this Act, shall be collections arranged according to certain system or method, the elements of which are individually accessible by electronic or other means.

Are recordings or an Does not seem to be the case. Rec 17 audio-visual, cinematographic, literary or musical work excluded?

How is originality of Art 7 (1) Art 3 databases defined? Collections of independent works, data or other materials, such as encyclopaedias, collections of documents, anthologies, databases, and the like, which by reason of the selection or arrangement of their constituent elements constitute personal intellectual creations of their authors shall be protected as such.

Was this changed to implement the directive?

Were pre-existing Not necessarily, Art 202 (4) Art 14(2) databases protected? until when? This Law applies to databases as objects of protection of related rights that were produced after January 1, 1983.

Are there special rules Does not seem to be the case. Art 4 on database ownership?

What rights does Art. 18 (the same as for other Art 5 copyright in a copyrighted works) database confer? The author shall have the exclusive right to do with his copyright work and the benefits deriving from it whatever he likes, and to exclude any other person from it, unless otherwise provided for by the law. This right shall include in

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particular:

 right of reproduction (right of multiplication);  right of distribution (right to put into circulation);  right of communication of the work to (4) the public;  right of alteration

How is exhaustion Art. 20 Art5 (1)(c) treated? The first sale of the original or copies of the work or other form of transfer of ownership, by the author or with his consent, in the territory of the Republic of Croatia shall exhaust the right of distribution in respect of such original and such copies respectively, for the territory of the Republic of Croatia. The exhaustion of the distribution right shall not cause the right of rental of a copyright work to expire, the right of the author to authorize or prohibit the export to or the import from a certain country of the original or copies of the work, and the right to remuneration for public lending of the work under Article 33 of this Act. In respect of collections, the exhaustion of the distribution right shall refer only to further sale.

Are there exceptions Yes. Art. 97 Art6(1) for lawful use?? (1) A lawful user of a database or of a copy thereof shall be allowed to perform all acts of using if this is necessary for the access to the content of the database and its normal use.

(2) If a user is authorized only in respect of a part of the database, he shall be allowed to reproduce and alter only that part.

Are contracts Art. 97 (3) Art 15 permitted to limit this freedom? Any contractual provision contrary to the provisions of paragraphs (1) and (2) of this Article shall be null and void.

Are there exceptions Yes. Art. 82, but only for non-electronic Art 6(2)(a) for private use?? databases. Private use reproduction of electronic databases is prohibited, unless allowed by contract.

Are there exceptions Art. 88 provides for such exceptions, for teaching?? however does not expressly mention Art 6(2) (b databases and limits the exception to publicly perform a work or present it at stage in the form of direct teaching.

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Are there exceptions Art. 97 provides for such an exception Art 6(2)(c) for public for all copyrighted works but does not security/admin/judicial expressly mention databases. procedure?

Are there exceptions Yes. Quotations, for informing the public Art 6(2)(d) for other uses? on current events, for particular institutions like libraries and educational/scientific institutions (the latter limited to one copy)

What law governs sui The DBD was implemented with generis right? amendments on Law on Copyright and Related Rights (Official Gazette no. NN127/2014) and set forth on November 6th 2014. Law on Copyright and Related Rights 167/03, 79/07, 80/11, 125/11, 141/13, 127/14, 62/17, (hereinafter "Law"). Art. 1(2) is treated as neighbouring rights.

What is the protection Art 147 (1) Art 7 requirement? Either Achievement, either verification, either the presentation of content of database requires qualitative and/or quantitatively significant investment, for example in invested resources, spent time and effort.

Who is eligible? Art 147(2) Art 11

Pursuant Law owner is natural or legal person who took initiative and the risk of investment.

Art 194 (1)

Citizens of the Republic of Croatia and legal entities having headquarters in the Republic of Croatia.

Art 194 (2) Equally as persons referred above foreign natural or legal persons are protected within the scope of international treaties to which the Republic of Croatia is a party

Where Is extraction Extraction is not defined. Art 7(2) defined?

Where is re-utilization? Art. 148(1) states: “A subject matter of Art 7(2) protection shall, according to the provisions of this Chapter, include: … qualitatively and/or quantitatively insubstantial parts of the contents of a database, when these parts are used repeatedly and systematically, which conflicts with a normal use of the database or which unreasonably prejudice the legitimate interests of the

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producer of the database.”

Is there a definition of Substantial part is not defined further to Art 7(2) substantial part? what is stated in the Directive.

Is there a rule on Yes. Art 148 (see above on re-utilisation) Art 7(5) repeated extractions?

How is exhaustion Possible application referred to general Art 7(2)(b) treated? terms on Exhaustion previously said Art 149 (2): The exhaustion of the distribution right extends only to the resale.

Is the right Art 147 (4) Art 7(3) assignable? Database maker is free to dispose of it.

Is there an exception Art 151 (1) Art 8(1) for lawful use? Authorized user of the database that has been available to the public cannot be prevented in the use of minor parts

its content for any purpose. When authorized user is entitled to use only in respect of a part of the database, this rule applies only to that part.

Are contracts 151 (4) Art 15 permitted to limit this freedom? Any agreement contradicting exception provisions in Art 151 shall be invalid.

Are there exceptions Yes. Possible application referred to Art 9(1)(a) for private use? general terms on Exceptions 150 (i).

Are there exceptions Yes. Possible application referred to Art 9(1)(b) for teaching? general terms on Exceptions 150 (ii).

Are there exceptions Yes. Possible application referred to Art 9(1)(c) for public general terms on Exceptions previously security/admin/judicial said 150 (iii). procedure??

How long does the sui Art 152 Art 10 generis right last? The rights of the database maker last for 15 years since the completion of the database. If the database is legally published within that period, rights last 15 years from such first publication.

Art. 153

Any qualitative or quantitative substantial change of part of the contents of a database, which is a qualitative or quantitative substantially new investment in contents of the database, shall result with a new term of protection referred to in paragraph (1) of

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this Article*. A substantial change of the contents a database shall also include successive additions, deletions and alternation of the database.

Is unfair competition Trade Act 87/08 as amended up to law available? 30/14,

Art 63, 64 and 65

Trade Act provides judicial protection considering unfair competition.

Unfair competition is defined as any act of one trader which is contrary to fair business practices on the market.

Author: Pavle Tasic

Review: Alfred Radauer

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3.5 Cyprus Question Answer Directive 96/9/EC

What law governs The right of Intellectual Property Law No. copyright? 59/1976 (Basic Law) has been amended by various laws; the one that we are interested in, regarding the protection of databases is the reformative Law No.128(I)/2002 (Law of Intellectual Property and Closely Related Rights). The aforementioned Law was composed in order to amend the until then applicable Laws, regarding the intellectual property, and to harmonize the implemented Cypriot provisions with the Directive 96/9/EC.

How is subject matter 'Database' means a collection of works, Art 1(2) Art. 2(c) defined? data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means. The independence criterion is missing.

Are recordings or an No. Rec 17 audio-visual, cinematographic, literary or musical work excluded?

How is originality of Τhe database is original if it is a personal Art 3 Art. 2(b) databases defined? intellectual creation of the author and not copy of an already existing work or draft or template work. The recognition of protection does not depend on the application of any additional criterion.

Was this changed to No. implement the directive?

Were pre-existing Pre-Existing Databases are protected by Art 14(2) Note databases protected? the current Law; the protection is until when? provided in databases, the construction of 16 of Law 128 (I) which was completed within the 15 years, / preceding the date of entry into force of 2002/Declaration this Law, provided that on that date they of Law 128 (I) / fulfil the requirements laid down in Article 2002 7C; A database fulfils the requirements of originality if it is an intellectual creation, either because of the choice or the arrangement of its content. (1) This Law applies to works created prior to the entry into force of this Law in the same way as it applies to later works.

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(A) The protection provided for in Article 7C is also provided in databases the construction of which has been completed within 15 years preceding the date of entry into force of this Law, provided that on that date they meet the conditions laid down in Article 7c .However, contracts entered into and rights acquired before the effective date of this Law [CW: that of L.128 (I) / 2002] shall not be affected.

(b) Database protection, the construction of which has been completed within 15 years preceding the date of entry into force of this Law [i.e.: Law 128 (I) / 2002], expires 15 years after the 1st January following that date.

Are there special rules The beneficiary of databases, created in Art 4 Art. 4(a) (for on database the Cypriot Republic, or in the case of database ownership? more than one beneficiary, any of the copyright) and rights holders should be, at the time of Art. 4(b) (for the the birth of the right on the databases, a database sui qualified person that is: generis right)

(a) An individual, who is a citizen of the Cypriot Republic or has his/her regular residence in the Cypriot Republic (b) A legal person established under the laws of the Cypriot Republic (c) A citizen of a Member State of the European Union It is stated that the same provision applies to legal persons of the European

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Union, provided that they are effectively and continuously connected with the economy of the Member State of the European Union.

What rights does The author of databases, which fulfil the Art 5 Art. 7C(2)(a) copyright in a database requirements of originality, regardless of confer? whether it is an individual or a group of individuals on a jointly created basis or a legal person, has the exclusive right to carry out or to authorize the following acts:

(i) The temporary or permanent reproduction of the database by any means and in any form, in whole or in part; (ii) The translation, adaption, arrangement and any other alteration of the database; (iii) Any form of distribution of the database or copies thereof to the public; (iv) Any communication, display or performance to the public; (v) Any reproduction, distribution, communication, display or performance to the public of the results referred to in paragraph (ii). How is exhaustion (i) The first sale, within the European Art. 7(1)(b) treated? Union, of the material incorporation of the database or copy of it by the beneficiary or with his/her consent, exhausts the right to control the sale and distribution of the particular material incorporation or the particular copy within the European Union; (ii) The right to control subsequent leases and borrowings is not affected by the first sale provided for in subparagraph (i). (iii) The public lending of the protected database or its physical incorporation does not, in any case, involve the exhaustion, provided for in subparagraph (i). Are there exceptions ◦ Yes. Art6(1) Art. 7C(2)(i) for lawful use?? ◦ It is stated that the lawful user of the database or copies of it, may perform, without the authorization of the author, any of the acts, listed in paragraph (a), which are considered necessary for the access to the content of the database and the regular use of it. Are contracts permitted Agreement, which is opposed to the Art 15 Art. 7(2)(b)(iii) to limit this freedom? provisions of the current Law, is invalid.

Are there exceptions No. Art for private use? 6(2)(a)

Are there exceptions No. for teaching? Art 6(2) Art. 7C (2) (i) (b) and Art. 7 (2)

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Are there exceptions No. Art Art. 7C (2) (i) for public 6(2)(c) and Art. 7 (2) security/admin/judicial procedure?

Are there exceptions No. Art Art. 7C (2) (i) for other uses? 6(2)(d) and Art. 7 (2)

What law governs sui Law No.128(I)/2002 Art. 7C(3)(a) generis right?

What is the protection The substantial qualitative or quantitative Art 7 Art. 7C(3)(a) requirement? investment by the maker of the database constitutes the protection requirement of the sui generis right.

(The maker of the databases has the exclusive right, regardless of whether that database or its content may be protected as intellectual property or on the basis of other provisions, to prohibit its extraction or/ and re-utilization of all or a substantial part of the contents of the database, last evaluated either qualitatively or quantitatively; if either the acquisition or the control or the display of the databases’ content indicate substantial qualitative or quantitative investment.)

Who is eligible? Not stated explicitly; however, I suppose Art 11 that the proportionate application of Art. 4(a) takes place.

Where Is extraction Extraction is the permanent or temporary Art 7(2) Art. 7C(3)(d)(i) defined? transfer of the whole or a substantial part of the database’s contents to another medium by any means or in any other form.

Where is re-utilization? Re-utilization is the making available to Art 7(2) Art. 7C(3)(d)(ii) the public of the whole or a substantial part of the database’s content by means of copies’ distribution, rental, transmission with direct communication or other forms of communication.

Is there a definition of Νο. Art 7(2) substantial part?

Is there a rule on Yes. Art 7(5) Art. 7C(3)(c)(iii) repeated extractions? The lawful user of databases, that has been made available (released) to the public in any way, is not entitled to the repeatedly and systematically extraction or re-utilization of significant parts of the contents of the database, provided that the above act entails the carrying out of acts, which conflict with the normal exploitation of the database or which unreasonably prejudice the legitimate

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interests of its database maker.

How is exhaustion There are no specific provisions regarding Art treated? the exhaustion of sui generis right. 7(2)(b) Probably Art. 7(i)-(iii) implements in that case too.

Is the right assignable? Not stated. Art 7(3)

Is there an exception Yes. Art 8(1) Art. 7C(3)(c) for lawful use?

The lawful user of databases, that has been made available to the public in any way, is not entitled to:

(i) Perform acts, that conflict with the normal exploitation of that base or unjustifiably affect the lawfulness thereof interest of its manufacturer; (ii) Cause damages to persons with the right of creator or related rights in works or interpretations or executions included in the that databases; (iii) Repeatedly and systematically extract or re-utilize significant parts of the contents of the database, provided that the above act entails the carrying out of acts, which conflict with the normal exploitation of the database or which unreasonably prejudice the legitimate interests of its database maker. Are contracts permitted Agreement, which is opposed to the Art 15 Art. 7C(3)(b) to limit this freedom? provisions of the current Law, is invalid.

Are there exceptions Yes. Art Art. 7C(3)(b)(a) for private use? 9(1)(a)

The maker of the database, which is any way available to the public, cannot prevent the lawful user of the database, whether his/her rights are limited to a part of the database or not, for private use.

Are there exceptions Yes. Art Art. 7C(3)(b)(b) for teaching? 9(1)(b)

The maker of the database, which is any way available to the public, cannot prevent the lawful user of the database, whether his/her rights are limited to a part of the database or not, for educational or research purposes, provided that the source is not mentioned, and that the extraction and/or re-utilization does not exceed the limit, which is justified by the intended non- commercial purpose.

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Are there exceptions Yes. Art Art. 7C(3)(b)(c) for public 9(1)(c) security/admin/judicial procedure?? The maker of the database, which is any way available to the public, cannot prevent the lawful user of the database, whether his/her rights are limited to a part of the database or not, in the case of extraction and/or re-utilization for reasons of public security or for administrative or judicial purposes.

How long does the sui The duration of the sui generis right is 15 Art 10 Attached Board generis right last? years from the completion of the construction of the database, provided (Art. 5(1)(vi)) that (a) the database has been released to the public in any way before the expiry of the 15 years; the duration of the protection is estimated from the date on which the database was first released to the public; and (b) any substantial amendment of the content of the database, evaluated quantitatively or qualitatively, in particular due to the successive cumulation of additions, deletions or alterations, which is considered as a new substantive investment, evaluated quantitatively or qualitatively, grants the database, resulting from this investment, a new independent fifteen-year protection.

Is unfair competition Not stated. law available?

Author: Maria Papavasileiou

Review: Tatiana Synodinou

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3.6 Czech Republic Question Answer Directive 96/9/EC

What law governs copyright The Copyright Act No. 121/2000 protection of databases? Coll., as amended

How is subject matter Art 88 states that “a database Art 1(2) defined? shall mean a collection of independent works, data, or other items arranged in a systematic or methodical manner and individually accessible by electronic or other means, irrespective of the form of the expression thereof.”

Are recordings or an audio- Yes. According to Art 88, Rec 17 visual, cinematographic, a database comes into existence literary or musical work if there is “a collection of excluded? independent […] items”. It follows that a recording or an audio-visual, cinematographic, literary or musical work as such is not considered the database.

How is originality of databases Art. 2 (2) implies that a Art 3 defined? database is original if it is “by the way of the selection or arrangement of its content […] the author’s own intellectual creation”. It further states that no other criteria shall be applied to determine eligibility.

Was this changed to Yes, it was new. implement the directive? The Czech Republic is a Member State since 2004. It has been implemented by the Copyright Act from 2000.

Were pre-existing databases The previous 1965 Copyright Act Art 14(2) protected? until when? (No. 35/1965 Coll.) did not provide a special protection for databases.

On 1 December 2000, it was substituted by the Copyright Act. Its Art 106 (4) provides that “In accordance with this Act, protection shall also be provided to copyright-protected items that have not been hitherto protected according to existing provisions [[…] Article 2 (2) ]”.

Are there special rules on General rules apply (Art 5 – Art 4 database ownership? authorship; Art 8 – joint authorship; Art 59 – collective work).

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What rights does copyright in Art 12 states that “The author Art 5 a database confer? shall have the right to use his work […] and to grant authorisation on a contractual basis to any other person to exercise that right”. It further states that the right to use a work shall mean especially the right to reproduce a work, to distribute/rent /lend /exhibit an original or a copy of the work, to communicate the work to the public.

How is exhaustion treated? Art 14 (2) states that “The author’s distribution right , in the territory of a member state of the European Union or a state forming the European Economic Area, to the original or copy of a work, is exhausted by the first sale or any other first transfer of ownership to such an original or a copy of a work in a tangible form, that was performed by the author or with the author’s consent in the territory of a member state of the European Union or a state forming the European Economic Area; rental right to the work and lending right to the work shall remain unaffected.”

Are there exceptions for lawful Yes. Art 36 provides that Art6(1) use? “Copyright to a collection of works that is a database shall not be infringed by the legitimate user of the collection of works if he uses such work for the purposes of accessing its content and for the normal exploitation of its content.”

Are contracts permitted to No (although it is not expressly Art 15 limit this freedom? stipulated).

Are there exceptions for Yes. Art 30 (1)(3) exempts use Art 6(2)(a) private use? of a non-electronic database for personal needs by a natural person.

Are there exceptions for Yes. Art 35 (3) provides teaching? exceptions for teaching, and Art 6(2)(b) Article 31 (1) c for teaching and scientific research

Are there exceptions for public Yes. Art 34 (a) exempts Art 6(2)(c) security/admin/judicial purposes of public security, court procedure? or administrative proceedings from being infringement.

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Are there exceptions for other Art. 30a enables a printed Art 6(2)(d) uses? reproduction of a work on paper or other similar base by the photographic technique.

Art. 31 (1)(a)(b) enables to use excerpts from works of other authors in one's own work; and provides exemption for critique or review.

Art. 34 (b) exempts use for reporting on current events.

Art. 35 (1)(2) provides exceptions for use during civil or religious ceremonies or during official events organised by public authorities; and for a school performance.

Art. 37 provides a library licence for archiving; reproduction of a damaged or lost work; making available by terminals; and lending of a work.

Art. 38 provides exemption for the benefit of people with disability.

Art. 38a exempts temporary reproductions.

Art. 38c exempts an incidental use.

Art. 38g enables use for caricature and parody.

What law governs sui generis The Copyright Act No. 121/2000 right? Coll., as amended

What is the protection Art. 88a defines that a sui Art 7 requirement? generis right pertains to “the maker of the database, provided that the formation, verification or presentation of the content of the database represents a contribution, which is substantial in terms of quality or quantity, irrespective of whether the database or the contents thereof are subject to copyright protection or any other type of protection.”

Who is eligible? Art 107 (6) regulates Art 11 the applicability of the Copyright Act in relation to the Sui Generis right. In line with that, provisions of the Copyright Act shall apply to the makers of

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databases who are domiciled or resident in the territory of the Czech Republic; they shall also apply to the foreign makers of the databases where reciprocity is assured. Art 89 further states that “the maker of the database is the natural or legal person who, on his own responsibility, has compiled the database, or on who impulse is the database compiled by another person.”

Where Is extraction defined? Art 90 (2): “Extraction […] Art 7(2) means the permanent or temporary transfer of all the content of a database or a substantial part thereof to another medium by whatever means or in whatever form.”

Where is re-utilization? Art 90 (3): “Re-utilization […] Art 7(2) shall mean any form of making available to the public all the content of a database or a substantial part thereof by the distribution of copies, by rental or by the on-line or any other forms of transmission.”

Is there a definition of No. Art 7(2) substantial part?

Is there a rule on repeated Yes. Art 90 (5) states: Art 7(5) extractions? “Repeated and systematic extraction or re-utilization of insubstantial parts of the content of the database and any other acts that are not usual and adequate and that adversely affect the legitimate interests of the maker of the database is not permitted.”

How is exhaustion treated? See Art 94 in connection with Art 7(2)(b) 14 (2).

Is the right assignable? Art. 90(6) states that the right of Art 7(3) the maker of a database is transferable.

Is there an exception for Yes. Art 91 and 92 define Art 8(1) lawful use? exceptions for lawful use; First, “right of the maker of a database that has been made available in any way to the public is not infringed by the lawful user who extracts or re-utilises qualitatively or quantitatively insubstantial segments of the content of the database or any part thereof, doing so for

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whatever purpose, on condition that such a user uses the database in a normal and appropriate manner, not systematically or repeatedly, and without damaging the legitimate interests of the maker of the database, and that he shall not cause damage to the author or the rights holder of rights related to the copyright to the works or other protected items contained in the database.”

Second, the right of maker of the database is also not infringed by lawful users of personal nature or for scientific or educational purposes.

Are contracts permitted to No (although it is not expressly Art 15 limit this freedom? stipulated).

Are there exceptions for Yes. Art. 92 (see also above) Art 9(1)(a) private use?

Are there exceptions for Yes. Art. 92 (see also above) Art 9(1)(b) teaching?

Are there exceptions for public Yes. Art. 92 (see also above) Art 9(1)(c) security/admin/judicial procedure??

How long does the sui generis According to Art 93, “the right Art 10 right last? sui generis of the maker of the database shall run for 15 years from the making of the database. If, however the database is made available during that period, the right sui generis of the maker of the database shall expire 15 years from the date when the database is thus made available.”

Is unfair competition law Yes. Art 2976 (1) of the Civil available? Code No. 89/2012 Coll., as amended, states that “If, in business relations, a person gets into conflict with good morals of competition as a result of his conduct capable of causing harm to other competitors or customers, such a person has competed unfairly. Unfair competition is prohibited.”

Original author: Tobias Dudenbostel

Review, additions and corrections: Ava Bajáková and Denisa Assefova

Sources: WIPO lex: http://www.wipo.int/wipolex/en/text.jsp?file_id=186403#LinkTarget_554

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3.7 Denmark Question Answer Directive 96/9/EC

What law governs Copyright Law (DCA) – First transposed with copyright? Consolidated Act No. 706 of 29 September 1998 and the implementing Act No. 407 on 26 June 1998. It came into force on 1st July 1998. The Copyright Act has been amended since then (Currently: (Consolidated Act No. 1144 of October 23rd, 2014))

How is subject matter The statement of the NautaDutilh study still Art 1(2) defined? applies: “The all-embracing definition of a “database” enshrined in Article 1.2 Directive has not been transposed. Nor has the “in any form” qualification of Article 1.1 been transposed. The originality of the Directive’ s binding definition, which applies to both copyright and sui generis right, has been totally overlooked by the Danish draughtsman.”

Are recordings or an This sui generis right is about catalogues; it is Rec 17 audio-visual, mentioned that CDs cannot be a catalogue. So cinematographic, literary Yes. If a subject matter is protected by or musical work copyright, copyright prevails over sui generis excluded? right.

How is originality of The statements of the NautaDutilh study still Art 3 databases defined? apply: “Article 3.1 Directive defining copyright subject matter and originality has not been transposed. Article 3.2 LQLWLR Directive has not been transposed.

Albeit a provision on coexistence rather than an exclusion as such, the proviso “without prejudice to the rights in the individual works” in Article 5 DCA (see above) may have an equivalent side-effect.”

According to interview evidence, originality is as such not defined in law, but in a memorandum to the law there are references to the respective criteria. Plus, Denmark takes account of the criteria applied in CJEU rulings.

Was this changed to No. implement the directive?

Were pre-existing Catalogue protection existed before. Art 14(2) databases protected? Accordingly, already existing databases and until when? catalogues would continue to be protected.

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Are there special rules The statements in the NautaDutilh study still Art 4 on database ownership? apply: “Article 4.1 Directive (“the natural person who created the database”) is given a broader ambit in Article 1 DCA (“the person creating”). However, it seems that Danish case-law already applies a “natural person” qualifying test.

Article 6 DCA provides for joint authorship.

Article 7 DCA sets out a rebuttable presumption of authorship in favour of, roughly, the person whose name appears on copies of the work.”

What rights does The statements in the NautaDutilh study still Art 5 copyright in a database apply: There are therefore four noticeable confer? rights for reproduction, adaptation, distribution and communication with respective issues in relation to implementation:

“Reproduction Right: transposed, but: “Temporary or permanent reproduction” in Article 5(a) Directive has not been transposed; “By any means and in any form” is reflected by “into another literary or artistic form or into another technique”; “In whole or in part” is not reflected in the Act but is presumably so in case-law on infringement.

Adaptation right (Article 5(b) and 5(e)): Items 1 to 4 …are reflected in Article 2 (1) DCA. However, item 5 (Article 5(e) Directive) in relation to further acts with the results of such adaptation is nowhere reflected in the Danish Copyright Act.

Distribution right: yes

Exhaustion of the right to control the resale. Although Article 19 DCA does not expressly provide for Community (EEA)- wide exhaustion, it is not problematic as it is to be construed consistently with the ECJ jurisprudence.

Note that exhaustion here is not limited to the right to control the resale but applies to any further distribution.

Communication right: Article 5(d) Directive presumably needed no transposition.”

How is exhaustion According to interview evidence, Denmark treated? follows the general EU rule, according to which there is exhaustion if a copy is made available in the EU.

Are there exceptions for The statements of the NautaDutilh study still Art6(1) lawful use? apply:

“Unlike Sweden and Finland, Denmark has

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broadly transposed Article 6.1 and 15 Directive on access and normal use by the lawful user…In accordance with Article 15 Directive, Article 36 (4) DCA thus makes the lawful use exception ius cogens.”

Are contracts permitted No, according to Art 36(4) DCA Art 15 to limit this freedom?

Are there exceptions for According to interview evidence: Yes, as Art 6(2)(a) private use? described in section 12 of the DCA.

Are there exceptions for No. However, according to interview evidence, teaching? there are collective agreements with collecting Art 6(2) (b) societies.

Are there exceptions for Yes, as described in Section 28 of the law Art 6( public security/admin/judicial 2)(c) procedure?

Are there exceptions for According to interview evidence, the “normal” Art 6(2)(d) other uses? exceptions – those for general copyright – are also available for databases

What law governs sui Same as for copyright (DCA) generis right?

What is the protection The statements of the NautaDutilh study still Art 7 requirement? apply: “Almost properly transposed. “substantial investment” requirement has been transposed. Nevertheless, it is undermined by the conjunction “or” implying that a large number of information items suffices to qualify a catalogue for Article 71 protection, even if it shows no substantial investment. In addition, items 1 and 2 (“qualitatively and/or quantitatively”) have not been transposed. Although the “large number of information items” requirement mirrors the quantitative criterion, nothing reflects the qualitative criterion. Moreover, items 4 to 7 (“in either the obtaining, verification or presentation of the contents of the database”) qualifying that substantial investment have not been transposed, either.”

Who is eligible? The act states “(6) The provision of section 71 Art 11 shall apply to (i) catalogues, etc. made by persons who are nationals of or who have their habitual residence in a country within the European Economic Area; and (ii) catalogues, etc. made by companies which have their headquarters in a country within the European Economic Area.” Where Is extraction The statements of the NautaDutilh study still Art 7(2) defined? apply: “Denmark wrongly takes up traditional copyright terminology – such as reproduction, copying, communication to the public or making available to the public – instead of using the autonomous “extraction” and “re-

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utilisation” terms in Article 7.2 Directive”

Where is re-utilization? The statements of the NautaDutilh study still Art 7(2) apply: “Article 7.2 (b) Directive is partially reflected by the “exclusive right to control the product in question as a whole or an essential part thereof by (...) making it available to the public” laid down in Article 71 (1) DCA (see above).

Article 71 (3) unduly cross-refers to Article 2, §3 DCA defining the “making available to the public” in respect of copyright.

At least, Denmark has gone slightly further than Sweden and Finland in implementing “or of a substantial part” into “or an essential part thereof”.

Yet the following wordings have not been transposed: “evaluated qualitatively and/or quantitatively”, and “by on-line transmission or other forms of transmission”.”

Is there a definition of Not directly in the DCA, but in the Art 7(2) substantial part? accompanying explanatory memorandum there is – according to interview evidence – a reference to the Directive, plus the CJEU rulings are applicable.

Is there a rule on Yes. Section 71, paragraph 2 Art 7(5) repeated extractions?

How is exhaustion The statements of the NautaDutilh study still Art 7(2)(b) treated? apply: “Although Article 19 DCA does not expressly provide for Community (EEA)- wide exhaustion, it is not problematic as it is to be construed consistently with the ECJ jurisprudence.

Note that exhaustion here is not limited to the right to control the resale but applies to any further distribution.”

Is the right assignable? Unless otherwise specified in law, all rights Art 7(3) are assignable including the sui generis sui generis right

Is there an exception for The statements of the NautaDutilh study still Art 8(1) lawful use? apply: “Unlike Sweden and Finland, Denmark has not properly transposed Article 8.1 and 15 Directive vesting the lawful user with a right to extract and re-utilise insubstantial parts.

In accordance with Article 15 Directive, Article 36 (4) DCA thus makes the lawful use exception. At first glance, Article 36 (2) DCA reflects Article 8.1 Directive. Quite misleadingly so.

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First and foremost, this right under the Directive only applies to “insubstantial parts”, evaluated quantitatively and/or qualitatively, as opposed to the whole catalogue under the DCA. Secondly, it applies “for any purposes whatsoever”, not just to obtain access and make normal use. Thirdly, the wording “extracting and/or re-utilising” is not transposed.

The wording “the person who has the right to use” and “for the person”, reflecting “lawful user”, seems to extend to any such user, whether authorised by contract or by law.”

Are contracts permitted No (same as for copyright) Art 15 to limit this freedom?

Are there exceptions for Yes (same as for copyright) Art 9(1)(a) private use?

Are there exceptions for No (same as for copyright) Art 9(1)(b) teaching?

Are there exceptions for Yes (same as for copyright) Art 9(1)(c) public security/admin/judicial procedure??

How long does the sui The statements of the NautaDutilh study still Art 10 generis right last? apply: “15 years from completion (Article 10.1); 15 years from making available (Article 10.2). Article 10.3 Substantial new investment has not been transposed. This is yet another major flaw in the Danish transposition.”

Is unfair competition law Yes. available?

Author: Alfred Radauer

Review, additions and corrections: Peter Schønning

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3.8 Estonia Question Answer Directive 96/9/EC

What law governs copyright? Copyright Act125, passed 11.11.1992

How is subject matter “Database” means a Art 1(2) Copyright Act § 4 defined? collection of independent (3) (22) second works, data or other sentence economics arranged in a systematic or methodical way and individually accessible by electronic or other means.

Are recordings or an audio- No. Rec 17 Copyright Act § 4 visual, cinematographic, (2) literary or musical work excluded?

How is originality of A work is original if it is the Art 3 Copyright Act § 4 databases defined? author’s own intellectual (2) creation. For the purposes of the Copyright Act, “works” means any original results in the literary, artistic or scientific domain which are expressed in an objective form and can be perceived and reproduced in this form either directly or by means of technical devices.

Was this changed to No. implement the directive?

Were pre-existing databases Before the adoption of the Art 14(2) protected? until when? Databases Directive, there was no legal protection for sui generis databases.

The principles laid down in Directive 96/9/EC were introduced into the Estonian legal system by amending the Copyright Act and related laws entered into on 9 December 1999 and entered into force on 6 January 2000. Previously, databases did not include copyright- protected objects.

Are there special rules on No, general rules for the Art 4 Copyright Act § 28 authorship of copyright will (author of work)

125 Electronically available (in English): https://www.riigiteataja.ee/en/eli/519062017005/consolide

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database ownership? be implemented. and § 30 (joint authorship and co- authorship)

The moral and economic rights of an author shall initially belong to the author of a work unless otherwise prescribed by the Copyright Act with regard to the economic rights of the author. The author of a work is the natural person or persons who created the work. Copyright shall belong to a legal person only in the cases prescribed in the Copyright Act. Copyright shall belong to the state only in the cases prescribed in the Copyright Act.

What rights does copyright in Economic rights Art 5 Copyright Act § 13 a database confer?

How is exhaustion treated? The first sale of a copy of a Copyright Act § 13 database shall exhaust the (5) right to control resale of the copy of the database.

Are there exceptions for The lawful user of a database Art6(1) Copyright Act § 251 lawful use? or of a copy thereof is entitled, without the authorization of the author and without payment of additional remuneration, to perform any acts which are necessary for the purposes of access to the contents of the database and normal use of its contents. If the lawful user is authorized to use only part of the database, this provision shall only apply to the corresponding part of the database or of a copy thereof. Any contractual provisions which prejudice the exercise of the right are void.

Are contracts permitted to No. Any contractual Art 15 Copyright Act § 251 limit this freedom? provisions which prejudice last sentence the exercise of the right are void.

Are there exceptions for Electronic databases shall Art Copyright Act § 18 private use? not be produced for the 6(2)(a) (2) clause 1 purposes of personal use without the authorization of the author and without payment of remuneration.

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Are there exceptions for The following is permitted teaching? without the authorization of Art 6(2) Copyright Act § 19 the author and without (b) clauses 2 and 3 payment of remuneration if mention is made of the name of the author of the work, if it appears thereon, the name of the work and the source publication:

2) the use of a lawfully published work for the purpose of illustration for teaching and scientific research to the extent justified by the purpose and on the condition that such use is not carried out for commercial purposes;

3) the reproduction of a lawfully published work for the purpose of teaching or scientific research to the extent justified by the purpose in educational and research institutions whose activities are not carried out for commercial purposes.

Are there exceptions for The following is permitted Art Copyright Act § 19 public security/admin/judicial without the authorization of 6(2)(c) p 5 procedure? the author and without payment of remuneration if mention is made of the name of the author of the work, if it appears thereon, the name of the work and the source publication: reproduction of a work for the purposes of a judicial procedure or insurance of public security and to the extent justified by the purposes of a judicial procedure or insurance of public security.

Are there exceptions for Yes. The following is Art Copyright Act § 19 other uses? permitted without the 6(2)(d) clauses 1; 31; 4; 6 authorization of the author and 7. and without payment of remuneration if mention is made of the name of the author of the work, if it appears thereon, the name of the work and the source publication:

1) making summaries of and quotations from a work which has already been lawfully made available to

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the public, provided that its extent does not exceed that justified by the purpose and the idea of the work as a whole which is being summarised or quoted is conveyed correctly; 2) processing of an object of rights for the purposes of text and data mining and provided that such use does not have a commercial objective; 3) for the purpose of reporting current events, the reproduction in the press and communicating to the public of works seen or heard in the course of an event, to the extent justified by the purpose, in the form and to the extent required by the purpose of reporting current events; 4) the reproduction, distribution and communication to the public of a lawfully published work in the interests of disabled persons in a manner which is directly related to their disability on the condition that such use is not carried out for commercial purposes. Works created especially for disabled persons may not be reproduced, distributed and made available without the authorisation of the author; 5) the use of a lawfully published work in a caricature, parody or pastiche to the extent justified by such purpose.

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What law governs sui generis Chapter VIII1 (Rights of right? Makers of Databases) of Copyright Act, passed 11.11.1992 what is the protection The maker of a database is a Art 7 Copyright Act § 753 requirement? person who has made a (1) substantial investment, evaluated qualitatively or quantitatively, in the collecting, obtaining, verification, arranging or presentation of data which constitutes the contents of the database.

Who is eligible? The person, if: Art 11 Copyright Act § 753 (2) 1) the maker of a database or right-holder is a citizen or permanent resident of the Republic of Estonia;

2) the maker of a database or right-holder is a company which is founded in accordance with the law of the Republic of Estonia and has its registered office, central administration or principal place of business within the territory of the Republic of Estonia. If such company has only its registered office in the territory of the Republic of Estonia, its operations must be genuinely linked on an ongoing basis with the economy of Estonia;

3) a database must be protected in accordance with an international agreement of the Republic of Estonia.

Where Is extraction defined? In Copyright Act: Art 7(2) Copyright Act § 754 “Extraction” means the (2) (1) second permanent or temporary sentence transfer of all or a substantial part of the contents of a database to another medium by any means or in any form.

Where is re-utilization? In Copyright Act: “Re- Art 7(2) Copyright Act § 754 utilisation” means any form (2) (2) second of making available to the sentence public all or a substantial part of the contents of a

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database by the distribution of copies, by renting, by on- line or other forms of transmission.

Is there a definition of No. Art 7(2) substantial part?

Is there a rule on repeated No. Art 7(5) extractions?

How is exhaustion treated? The first sale of a copy of a Art Copyright Act § 754 database by the maker of 7(2)(b) (3) the database or with the latter’s authorization shall exhaust the right of the maker of the database to control the resale of the database or the copy as provided for in clause (2) 2) of this section (re- utilization).

Is the right assignable? The maker of a database Art 7(3) Copyright Act § 754 may transfer (assign) the (6) right provided for in subsection (2) of this section (extractions and re- utilization) or grant an authorization (license) for the exercise of such right. In such cases, the provisions of Chapter VII (Use of Works) of the Copyright Act shall apply.

Is there an exception for A lawful user of a database Art 8(1) Copyright Act § 755 lawful use? which is made available to (1) the public in whatever manner has the right to make extractions and to re- utilize insubstantial parts of its contents, evaluated qualitatively or quantitatively, for any purposes whatsoever. Where the person is authorized to use only part of the database in the manner provided for in this subsection, the provisions of this subsection shall apply only to that part.

Are contracts permitted to No, any contractual Art 15 Copyright Act § 755 limit this freedom? provisions which prejudice (4) the exercise of the rights provided for in this section by a lawful user of a database are void.

Are there exceptions for Yes, a lawful user of a Art Copyright Act § 756 database which is lawfully

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private use? made available to the public 9(1)(a) clause 1 in whatever manner may, without the authorization of its maker and without payment of remuneration, extract or re-utilize a substantial part of the database in the case of:

1) extraction for private purposes of the contents of a non-electronic database.

Are there exceptions for Yes, a lawful user of a Art Copyright Act § 756 teaching? database which is lawfully 9(1)(b) clause 2 made available to the public in whatever manner may, without the authorization of its maker and without payment of remuneration, extract or re-utilize a substantial part of the database in the case of:

2) extraction for the purposes of illustration for teaching or scientific research, as long as the source is indicated and to the extent justified by the non- commercial purpose to be achieved.

Are there exceptions for Yes, a lawful user of a Art Copyright Act § 756 public security/admin/judicial database which is lawfully 9(1)(c) clause 3 procedure?? made available to the public in whatever manner may, without the authorization of its maker and without payment of remuneration, extract or re-utilize a substantial part of the database in the case of:

3) extraction or re-utilization for the purposes of public security or an administrative or judicial procedure to the extent justified by the purposes of public security or an administrative or judicial procedure.

How long does the sui The term of protection of the Art 10 Copyright Act § 757 generis right last? rights of the maker of a database shall expire in fifteen years from the first of January of the year following the date when the database was completed. The rights of the maker of a database shall run from the date of completion of the database,

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which is the date on which the making of the database is completed.

If a database is made available to the public in whatever manner within the aforenoted period, the term of protection of the rights of the maker of the database shall expire in fifteen years from the first of January of the year following the date when the database was first made available to the public. If there is a substantial change, evaluated qualitatively or quantitatively, to the contents of a database, including any substantial change resulting from additions, deletions or alterations, which would result in the database being considered to be a substantial investment, evaluated qualitatively or quantitatively, the rights of the maker of the changed database shall expire in fifteen years from the making of corresponding changes. In such case, the term shall be calculated pursuant to the aforenoted procedure.

Is unfair competition law Yes, it is available. available?

Author: Taimsaar Kätlin

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3.9 Finland Question Answer Directive 96/9/EC

What law governs copyright Copyright Act (Act No. 1961/404 of July protection of databases? 8, 1961, as amended up to Act No. 2015/608 of May 22, 2015), “FCA” or “the Act”.

How is subject matter According to our experts, the definition of Art 1(2) defined? “database” has not been transposed. The Finnish definition of “database” seems to be “a literary or an artistic compilation work” (Section 5)

Are recordings or an audio- Rec 17 visual, cinematographic, literary or musical work excluded?

How is originality of The definition of originality has also not Art 3 databases defined? been transposed, according to our experts. Instead, originality seems to be defined as “combining works or parts of works” to create literary or an artistic compilation work (Section 5)

Was this changed to implement the directive?

Were pre-existing databases In regard to Art 14 (1), it is stated that Art 14(2) protected? until when? the act also applies to works created before the coming into force of the act. According to NautaDutilh (2001), Art 14(2) was not designed for Finland but for UK, Ireland and the NL.

Are there special rules on Using the definition in section 5, Art 4 database ownership? ownership is with a person.

What rights does copyright in - Reproduction right, with the exception Art 5 a database confer? of “temporary or permanent reproduction”. “In whole part” is also not reflected in the act but likely in case-law on infringement.

- Adaption right (5b), but not item 5 (Article 5(e) of the Directive) in relation to further acts with the results of such adaptation is nowhere reflected

- Distribution right

- Communication right and rental and lending right presumably did not need transposition

How is exhaustion treated? Article 19 FCA, entitled “Distribution of Copies of a work”, reads: “When a copy of a work has, with the consent of the

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author, been sold or otherwise permanently transferred, the copy may be further distributed. Whatever is provided in the first paragraph shall not apply to making a copy (…) of a computer-readable computer program available to the public lending. (…)” It should be noted that exhaustion is not limited to the right to control the resale but applies to any further distribution.

Are there exceptions for The transposition of Article 6.1 and 15 Art6(1) lawful use? Directive on access and normal use by the lawful user seems that has not been done properly, according to our experts. Following NautaDutilh, we assume that Article 25j entitled “Special provisions concerning computer programs and databases also applies to copyright. The article states that whoever has the right to use the database shall be entitled to make copies and perform all other acts necessary for accessing a database or for the common use of its contents. The lawful use provision is ius cogens. According further to NautaDutilh, the FCY does not properly reflect Article 6.2 of the Directive: “First, the entitlement “to make copies of it” under the FCA exceeds merely accessing and normally using the database as under the Directive. Secondly, the adjective “normal” in Article 6.1 Directive is not necessarily reflected by the adjective “common”. Indeed, normality may be defined by reference to either frequency (quantity) or a particular value (quality) whilst “common” only refers to frequency. The wording “whoever who has a right to use” and “for him”, reflecting “lawful user”, seems to extend to any such user, whether authorised by contract or by law.

Are contracts permitted to See above. Art 15 limit this freedom?

Are there exceptions for Only for databases which are not Art 6(2)(a) private use? computer-readable (Art. 12)

Are there exceptions for Yes (Art. 14) teaching? Art 6(2) (b

Are there exceptions for Yes (Art. 25d) Art 6(2)(c) public security/admin/judicial procedure?

Are there exceptions for A number of exceptions have been Art 6(2)(d) other uses? explicitly made for libraries.

What law governs sui generis Article 49 FCA right?

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What is the protection Art 49 states that a person that has Art 7 requirement? made “a catalogue, table, program or any other production in which a large quantity of data are compiled, or a database which shows that there has been a substantial investment in either the obtaining, verification or presentation of the contents, has the exclusive right to dispose of the whole or of a substantial part, evaluated qualitatively or quantitatively, of the production by making copies of it or by making it available to the public. “While all items have been transposed, the “substantial investment” requirement is undermined by the conjunction “or” implying that a large quantity of data suffices to qualify a catalogue for Article 49 protection, even if it shows no substantial investment.

Who is eligible? Art 11

Where Is extraction defined? Finland wrongly takes up traditional Art 7(2) copyright terminology – such as reproduction, copying, communication to the public or making available to the public – instead of using the autonomous “extraction” and “re-utilisation” terms in Article 7.2 Directive.

Where is re-utilization? See above Art 7(2)

Is there a definition of See below. Art 7(2) substantial part?

Is there a rule on repeated Art 7(5) was not transposed. The Finnish Art 7(5) extractions? lawmaker apparently equated the systematic use of non-substantial parts to the use of a substantial part.

How is exhaustion treated? By virtue of Article 49 § 3 FCA, Article 19 Art 7(2)(b) FCA applies to catalogue right and sui generis right as well. Therefore, see Exhaustion for Copyright above.

Is the right assignable? Art 7(3)

Is there an exception for According to our experts, article 8.1 Art 8(1) lawful use? vesting the lawful user with a right to extract and re-utilise insubstantial parts has not been transposed. Following NautaDutilh, we assume that Article 25j entitled “Special provisions concerning computer programs and databases” also applies to copyright. The article states that whoever has the right to use the database shall be entitled to make copies and perform all other acts necessary for accessing a database or for the common use of its contents. The lawful use

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provision is ius cogens.

Are contracts permitted to In accordance with Article 15 Directive, Art 15 limit this freedom? Article 25 j, § 5 FCA thus makes the lawful use exception ius cogens.

Are there exceptions for See above for copyright (explicitly Art 9(1)(a) private use? referenced from Art. 49.3 FCA)

Are there exceptions for See above for copyright (explicitly Art 9(1)(b) teaching? referenced from Art. 49.3 FCA)

Are there exceptions for See above for copyright (explicitly Art 9(1)(c) public security/admin/judicial referenced from Art. 49.3 FCA) procedure??

How long does the sui 15 years; while Art 10 (1) and 10 (2) Art 10 generis right last? have been transposed, Art 10 (3) has not been transposed.

Is unfair competition law available?

Author: Tobias Dudenbostel, Alfred Radauer

Source: NAUTADUTILH (2001): The Implementation and Application of Directive 96/9/EC on the Legal Protection of Databases, p. 115ff.; WIPO-Lex

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3.10 Greece Question Answer Directive 96/9/EC

What law governs copyright? Copyright Act enacted in 1993, as amended by Act No. 2819/2000

How is subject matter Copyright. Act, Art. 2(2a) Art 1(2) defined?

Are recording or an audio- There is no explicit exclusion Rec 17 visual, cinematographic, literary or musical work excluded?

How is originality of Copyright. Act, Art. 2(2a) Art 3 databases defined?

Some cases apply “statistical Some doubt might uniqueness test”: Court of First arise as to whether the Instance, Athens, Decision No. application of the 5810/2005. “statistical uniqueness test” is consistent with Court of First Instance, Rhodes, the CJEU case-law, in Decision No. 1259/2009: database for particular, Football all professionals of a specific Dataco, Case C- geographical region in Greece not 604/10EU:C:2012:115, regarded as original. The collection of [38]-[40]. the relevant information and the arrangement of the findings in general categories by an alphabetical order as well as the terms used therein did not render the work original.

Labour and effort insufficient: Court of First Instance, Athens, Decision No. 107/2014, Mass Media, Information and Communications Law, 2014, p. 67, (English-Greek dictionary of legal terminology not original: six years work in various libraries in order to locate, select and verify the entries of the dictionary did not render the work original.)

Maps regarded as original: Court of Appeal, Thessaloniki, Decision No. 1710/2011, Mass Media, Information and Communications Law, 2012, p. 74 because the author arranged the findings (streets, parks, cultural and sport centres etc) in a creative and unique way which demonstrated the laborious and long-term work, the creativity and the intellectual capability.

Supreme Court, Decision No.1993/2014, maps regarded as originals.

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Supreme Court, Decision No. 1051/2015, HCO Website (online) (‘hunting maps’ protected because author used his judgment to collect information from many different sources and arrange findings such that the resulting maps demonstrated a combination of intellectual work and capability as well as knowledge in interpreting maps, and in topography and natural science).

Was this Changed to Yes Implement the Directive?

Were pre-existing databases Art. 2(2) Copyright Act databases Art 14(2) protected? Until when? protected as a “collection of works.”

Court of First Instance, Athens, Decision No. 14106/1995, absence of originality of a database for calculation of taxes according to the “statistical uniqueness test” which was applied by the Court.

Are there special rules on No. Copyright Act, Arts. 6-11. Art 4 database ownership Copyright Act, Art. 7(2) collective work.

What rights does copyright Copyright Act, Art. 3(3) Art 5 in a database confer?

Exhaustion? Copyright Act, Art 3(3)

Are there exceptions for Yes. Copyright Act, Art. 3(3) Art6(1) lawful use?

Are contracts permitted to No. Copyright Act, Art. 3(3) Art 15 limit this freedom?

Are there exceptions for Not if electronic. Copyright Act, Art. Art 6(2)(a) private use? 3(4) (added by Art. 81 of Law No. 3057 of Oct. 10, 2002).

Are there exceptions for Copyright Act, Art. 20(1) (literary teaching? works in textbooks); art 21 Art 6(2) (b)

Are there exceptions for Copyright Act, Art. 24 Art 6(2)(c) public security/admin/judicial procedure?

Are there exceptions for Copyright Act, Art. 19 (quotations); art Art 6(2)(d) other uses? 22 (libraries and archives); Art 25 (reporting current events); Art 28A (disabled); Art 28B (transient copies under ISD Art 5(1))

What law governs sui Copyright Act as amended by Act No. generis right? 2819/2000.

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What standard is applied? Art 45A (1). Art 7

Court of Appeal, Athens, Decision No. 3001/2013, Mass Media, Information and Communications Law, 2013, p. 535 (map protected by the sui generis right by reason of effort, money, technical resources, work, labour and time invested).

Supreme Court, Decision No. 1051/2015, HCO Website (online) (holding that the hunting maps at issue were protected by the sui generis right because of effort involved in collecting information).

Court of First Instance, Athens, Decision No. 9313/2015, Mass Media, Information and Communications Law, 2016, p. 84 (legal database involved ‘substantial investment’).

Who is the beneficiary? Art 45A (1) (maker; not database Art 7(1) contractor)

Who is eligible? Art 45A (6) Art 11

Where is extraction defined? Art 45A(2)(a) Art 7(2)

Where is re-utilization? Art 45A(2)(b) Art 7(2)

Is there a rule on substantial Art 45A (2) Art 7(2) part?

Is there case-law? Court of First Instance, Athens, Decision No. 9313/2015, Mass Media, Information and Communications Law, 2016, p. 84 (extraction of cases from legal database and their inclusion into another legal database infringed the sui generis right).

Court of Appeal, Athens, Decision No. 3001/2013, extraction of maps from a database into another infringed the sui generis right.

Supreme Court, Decision No. 1051/2015, extraction of maps from a database into another infringed the sui generis right.

Is there a rule on repeated Art 45A (4) of ‘trivial parts’ Art 7(5) extractions?

How is exhaustion treated? Art 45A (2) Art 7(2)(b)

Is the right assignable? Art 45A (3) Art 7(3)

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Is there an exception for Art 45A (5) Art 8(1) lawful use?

Are contracts permitted to No. Art 45A (5) Art 15 limit this freedom?

Are there exceptions for No Art 9(1)(a) private use?

Are there exceptions for Yes. Art 45A (6) Art 9(1)(b) teaching?

Are there exceptions for Yes. Art 45A (6) Art 9(1)(c) public security/admin/judicial procedure?

How long does the sui 15 years. Art 45A (7) Art 10 generis right last?

Relationship with unfair Cumulation. Copyright Act, Art. 45 competition

Sources: WIPO-Lex; I Stamatoudi in Lionel Bently (ed) International Copyright Law and Practice (2017).

Author: Lionel Bently

Review: Leonidas Maravelis & Yannos Paramythiotis

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3.11 Hungary Question Answer Directive 96/9/EC

What law governs copyright? Act No. LXXVI of 1999 on copyright

How is subject matter The definition of ‘database’ Art 1(2) 2. For the purposes defined? essentially follows the of this Directive, wording of the Directive: 'database' shall mean a collection of independent works, data or other Art.60/A materials arranged in a systematic or (1) For purposes of this Act methodical way and database shall mean a individually collection of independent accessible by works, data or other material electronic or other arranged in a systematic or means. methodical way whose materials are individually accessible by computer devices or other means.

Are recordings or an audio- There is no specific clause on Rec 17 (17) Whereas the visual, cinematographic, exclusion in the Act, term 'database literary or musical work although these are governed should be excluded? by separate articles of Act. understood the Therefore, in practice the legal protection of provisions concerning computer databases do not interfere programs; to with the rules on audio- include literary, visual, cinematographic, artistic, musical or literary or musical works. other collections of works or collections of other material such as texts, sound, images, numbers, facts, and data; whereas it should cover collections of independent works, data or other materials which are systematically or methodically arranged and can be individually accessed; whereas this means that a recording or an audio-visual, cinematographic, literary or musical work as such does not fall within the scope of this Directive;

How is originality of The definition is by reference Art 3 Object of protection to the copyright protection of

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databases defined? the collection of works. 1. In accordance These are entitled to with this Directive, protection if they are of databases which, by individual and original reason of the nature. ‘Individual and selection or original nature’ is not defined arrangement of in the Act, although a their contents, general reference is made to constitute the this term in Art.1(3). author's own intellectual creation shall be protected as such by Art.61 copyright. No other criteria shall be (1) Copyright protection shall applied to apply to the database rated determine their as a collection of works eligibility for that (Article 7). protection.

2. The copyright protection of Art.7 databases provided for by this Directive (1) A collection shall be shall not extend to under copyright protection if their contents and the selection, arrangement shall be without or editing of its contents is of prejudice to any rights subsisting in individual and original nature those contents (collection of works). The themselves. protection shall apply to the collection of works even if its

parts or materials do not or may not enjoy copyright protection.

(2) Regarding the whole of the collection of works the copyright shall belong to the editor, however, this shall be

without prejudice to the independent rights of the authors of the individual works selected for inclusion in the collection as well as of the holders of rights in neighbouring rights covered achievements.

(3) The copyright protection of a collection of works shall not extend to the materials of the collection of works.

Art.1

(1) This Act shall provide protection for literary, scientific and art creations.

(2) All creations of literature,

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science and art - regardless whether or not specified by this Act - shall fall under copyright protection. Such creations are, in particular:

[...]

p) databases rated as collections of works.

(3) The creation shall enjoy copyright protection based on its individual, original nature originating from the intellectual activity of the author. The protection shall not be subject to any quantitative, qualitative and aesthetic characteristics, or to value judgements relating to the standard of the creation.

Was this changed to Art.61(1) of the Act has been implement the directive? in force since 1 January 2002. Prior to that date databases could be protected under the provisions related to “collections”. The reasoning of the Act amending the provision does not refer specifically to the Database Directive, although it is likely that the amendment was influenced by a need to implement the directive in preparation for Hungary’s accession to the EU.

Were pre-existing databases Yes, any database created Art 14(2) 2. Notwithstanding protected? until when? between 31 December 1982 paragraph 1, where and 1 January 2002 that met a database the conditions provided in protected under the relevant part of the Act copyright was entitled protection from arrangements in a between 1 January 2002 Member State on until 1 January 2013. the date of publication of this Directive does not fulfil the eligibility criteria for copyright protection laid down in Article 3 (1), this Directive shall not result in any curtailing in that Member State of the remaining term of protection

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afforded under those arrangements.

Are there special rules on Definition is provided Art 4 Database database ownership? regarding the “maker” of the authorship database. No specific reference is made to 1. The author of a collective works or joint database shall be ownership in relation to the natural person databases, although the or group of natural general provision on joint persons who authorship may be applied created the base or, here. where the legislation of the Member States so permits, the legal Art.84/A person designated as the rightsholder (6) The rights provided for in by that legislation. Paragraphs (1) to (3) shall apply to - as the maker of 2. Where collective the database - the natural or works are legal person or business recognized by the company without legal entity legislation of a at whose initiative, in whose Member State, the name and at whose risk the economic rights creation of the database shall be owned by occurred and who/which the person holding provided the necessary the copyright. resources therefor. 3. In respect of a database created by a group of natural Article 5 persons jointly, the exclusive rights (1) The authors of a joint shall be owned work, the parts of which jointly. cannot be used independently, shall enjoy the copyright protection jointly and - in case of any doubt - in equal proportions, however, any of the joint authors may take action independently in the event of the infringement of the copyright.

What rights does copyright in There is no special clause in Art 5 Restricted acts a database confer? the Act relating to copyright in databases specifically. In respect of the However, for this the general expression of the copyright provisions of the database which is Act can be used, which cover the rights mentioned in Art. protectable by 5 of the Directive. (No copyright, the separate mention is made of author of a Art.5(e)). database shall have the exclusive right to carry out or to authorize: Art.10 Divulgation of the (a) temporary or

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Work permanent reproduction by any (1) The author shall decide means and in any whether his work may be form, in whole or in made public. part;

(b) translation, adaptation, Art.18 The Right of arrangement and Reproduction any other alteration; (1) It shall be the author's exclusive right to reproduce (c) any form of his work and to grant distribution to the authorization therefor. public of the Reproduction shall be taken database or of to mean: copies thereof. The first sale in the a) the direct or indirect Community of a fixation of the work in any copy of the manner on a tangible carrier, database by the whether definitively or rightsholder or with temporarily, and his consent shall exhaust the right to b) the making of one or control resale of several copies of the fixation. that copy within the Community;

(d) any Art 23 The Right of communication, Distribution display or performance to the (1) The author shall have the public; exclusive right to distribute his work and to authorize (e) any others therefor. The making reproduction, distribution, accessible to the public of communication, the original copy or the display or reproduced copies of the performance to the work through putting into public of the results circulation or their offer for of the acts referred putting into circulation shall to in (b). be taken to mean distribution.

[...]

(5) If the copy of the work has been put into circulation by the rightsholder or by another person expressly authorized therefor by the rightsholder through sale or the transfer of proprietary rights in any other manner in the European Economic Area, the right of distribution – with the exception of the right of rental, lending and importation – shall further on be exhausted with regard to the copy of the work thus put into circulation.

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Art.24 The Right of Public Performance

(1) The author shall have the exclusive right to perform his work to the public and to authorize another person therefor. The making of the work perceptible to those present shall be taken to mean performance.

Art.29 The Right of Alteration

The author shall have the exclusive right to alter his work or to authorize another person therefor. The translation of the work, its dramatic or musical adaptation, its adaptation for a cinematographic production, the adaptation of the cinematographic creation, and any other alteration of the work as a result of which another work is derived from the original one shall be taken to mean alteration.

How is exhaustion treated? If the copy of the work has been put into circulation by the rightsholder or by another person expressly authorized through sale or the transfer of proprietary rights in the EEA, the right of distribution – with the exception of the right of rental, lending and importation – is exhausted with regard to the copy of the work thus put into circulation.

See above Art.23(5) of the Act.

Are there exceptions for Yes, there is an exception for Art6(1) 1. The performance lawful use? lawful use in line with the by the lawful user wording of the Directive: of a database or of a copy thereof of any of the acts listed in Article 5 Art.62 which is necessary for the purposes of (1) The performance of acts access to the necessary to get access to contents of the the contents of the database

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rated as a collection of works databases and normal use of the and to use the contents contents by the thereof in accordance with lawful user shall not the intended purpose by a require the person authorized to use the authorization of the database shall not be subject author of the to the author's authorization. database. Where the lawful user is (2) In case right has been authorized to use obtained only for the use of a only part of the specific part of the database, database, this the provision of Paragraph provision shall apply (1) only to that part.

shall apply to that specific part of the database.

Are contracts permitted to No, any such contract is null Art 15 Binding nature of limit this freedom? and void, as required by the certain provisions Directive. Any contractual provision contrary to Articles 6 (1) and Art.62 8 shall be null and void. (4) The stipulations of a contract on use contrary to the provisions set out in (1) and (2) shall be null and void.

Are there exceptions for For the exceptions, the Art (a) in the case of private use? general copyright provisions 6(2)(a) reproduction for are applicable, which cover private purposes of Arts 6(2)(a)-(c) of the a non-electronic directive: database;

Art.35

(1) A copy of the work may be made by a natural person for private purposes if it is not intended for earning or increasing income even in an indirect way. This provision shall not apply to architectural works, to engineering structures, to software and to databases operated by a computer device, as well as to the fixation of the public performance of a work on video or sound carrier. […]

Are there exceptions for There is no specific mention teaching? of databases used for Art (b) where there is teaching purposes in relation 6(2)(b) use for the sole to copyright databases in the purpose of

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General Part of the Act. illustration for However, there are teaching or exceptions for certain types scientific research, of work: as long as the source is indicated Art.34 and to the extent justified by the non- (2) Part of a literary or commercial purpose musical work or such a type to be achieved; of an entire work of a minor volume disclosed to the public

may be borrowed for the purposes of illustration for teaching and scientific research, with the indication of the source and the author named therein, to the extent justified by the purpose on condition that the borrowing work is not used for commercial purposes. Borrowing shall mean the use of a work in another work to an extent that goes beyond citation.

(3) The non-commercial reproduction and distribution of the borrowing work mentioned in paragraph (2) shall not be subject to the author's authorization where the borrowing work is, pursuant to the relevant legislation, qualified as

a textbook or a reference book and the school education purpose is indicated on its front page.

Are there exceptions for Exception in the General Part Art (c) where there is public security/admin/judicial of the Act: 6(2)(c) use for the procedure? purposes of public security of for the purposes of an Art.41 administrative or judicial procedure; (2) In court, public administration and other authority proceedings a work may be used for purposes of evidence, in a manner and to the extent consistent with the purpose.

Are there exceptions for Certain other exceptions Art (d) where other other uses? exist in the General Part of 6(2)(d) exceptions to the Act, although not all of copyright which are them might be directly traditionally applicable to databases. authorized under national law are

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involved, without prejudice to points (a), (b) and (c).

What law governs sui generis Act No. LXXVI of 1999 on right? copyright what is the protection The protection of the makers Art 7 Object of protection requirement? of databases is phrased in a way that the consent of the 1. Member States maker is required for the shall provide for a extraction or re-utilization of right for the maker substantial parts of a of a database which database. The rule on shows that there unreasonable prejudice is has been also taken over from the qualitatively and/or Directive. The rights are not quantitatively a dependent on copyright or substantial other rights being applicable investment in either (although this is not stated the obtaining, expressly). verification or presentation of the contents to prevent extraction and/or Art.84/A re-utilization of the whole or of a (1) Unless otherwise ruled by substantial part, legislation, the authorization evaluated of the maker of a database qualitatively and/or (Article 60/A) shall be quantitatively, of required, affecting the whole the contents of that or a substantial part of the database. contents of the database, for 4. The right a) its reproduction by provided for in making copies of it [Article paragraph 1 shall 18, Paragraph (1), Point (b)] apply irrespective of (hereinafter referred to as the eligibility of that extraction); database for protection by b) making it available to the copyright or by public through distribution of other rights. copies of the database or Moreover, it shall through communication to apply irrespective of the public - as provided for eligibility of the in Paragraph (8) of Article 26 contents of that - (hereinafter referred to as database for re-utilization). protection by copyright or by (2) The distribution referred other rights. to in (1) (b) shall be Protection of understood to cover the databases under the following cases of right provided for in distribution: release for paragraph 1 shall commercial circulation be without prejudice through sale or by the to rights existing in transfer of the right of respect of their ownership in a different contents. manner and import into the country for purposes of 5. The repeated and commercial circulation and systematic

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rental. The provision in extraction and/or Paragraph (5) of Article 23 re-utilization of shall apply, mutatis insubstantial parts mutandis, to the rights of the of the contents of maker of the database. the database implying acts which […] conflict with a normal exploitation (5) The rights provided for in of that database or Paragraphs (1) to (3) shall which unreasonably apply to the maker of the prejudice the database if obtaining, legitimate interests verifying or presenting the of the maker of the contents of the database database shall not have required the be permitted. investment of considerable resources.

Who is eligible? The rules on eligibility for Art 11 Beneficiaries of protection are those required protection under the by the Directive, i.e. makers sui generis of databases who are EEA nationals, persons having right their habitual residence in the EEA, companies having 1. The right the required connections provided for in with the EEA. Article 7 shall apply to database whose makers or rightsholders are Art.84/A nationals of a Member State or (9) Unless otherwise who have their provided by international habitual residence agreement, the maker of the in the territory of database shall enjoy the the Community. protection 2. Paragraph 1 shall provided for in this Act, if also apply to companies and a) he is a national of a firms formed in Member State of the accordance with the European Economic Area or law of a Member is regularly resident in the State and having territory of the European their registered Economic Area; office, central administration or b) it is a legal person or a principal place of business company without business within the legal entity registered in Community; accordance with the law of a however, where such a company or Member State of the firm has only its European Economic Area, registered office in and its seat, the place of its the territory of the headquarters or the main Community, its area of its business activity operations must be as named in its articles of genuinely linked on association is in the territory an ongoing basis of the European Economic with the economy of Area. a Member State. (10) In the case referred to in paragraph (9)(b), with the

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protection provided for by this Act shall apply to the legal person or business company without legal entity which has just its seat in the territory of the European Economic Area only if its activity is actually and continuously related to the economy of a Member State.

Where Is extraction defined? The term “extraction” is Art (a) 'extraction' shall equated with the term 7(2)(a) mean the “reproduction” in the Act and permanent or in the specific part on temporary transfer databases a reference is of all or a made to the General Part pf substantial part of the Act containing the rules the contents of a on reproduction: database to another medium by any means or in any form; Art.84/A

(1) Unless otherwise ruled by legislation, the authorization of the maker of a database (Article 60/A) shall be required, affecting the whole or a substantial part of the contents of the database, for a) its reproduction by making copies of it [Article 18, Paragraph (1), Point (b)] (hereinafter referred to as extraction);

Art. 18

(1) It shall be the author's exclusive right to reproduce his work and to grant authorization therefor. Reproduction shall be taken to mean:

a) the direct or indirect fixation of the work in any manner on a tangible carrier, whether definitively or temporarily, and

b) the making of one or several copies of the fixation.

(2) As reproduction of the work shall be rated in particular the fixation of the work in a mechanical, cinematographic or magnetic way and making copies of it by printing, the production of

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audio or video recording of the work, its fixation for purposes of communication to the public by broadcasting or by cable, the storage of the work in a digital form on electronic devices, and the production in a tangible form of the work transmitted by the computer network. In the case of architectural creations, the primary and secondary construction of a creation laid down as a design shall likewise be rated as reproduction.

Where is re-utilization? Re-utilization is defined in Art 7(2) (b) 're-utilization' the Act with reference to shall mean any making the work available to form of making the public. The latter is again available to the defined in the General Part of public all or a the Act. substantial part of the contents of a database by the distribution of Art.84/A copies, by renting, by on-line or other (1) Unless otherwise ruled by forms of legislation, the authorization transmission. The of the maker of a database first sale of a copy (Article 60/A) shall be of a database within required, affecting the whole the Community by or a substantial part of the the rightsholder or contents of the database, for with his consent […] b) making it available to shall exhaust the the public through right to control distribution of copies of the resale of that copy database or through within the communication to the public Community; - as provided for in Paragraph (8) of Article 26 - (hereinafter referred to as re-utilization).

Art 26

(8) The author shall further have the exclusive right to communicate his work to the public in a manner other than broadcasting or the means referred to in Paragraph (7) and to authorize another person therefor. This right shall in particular cover the case when the work is made available to the public by cable or any other means or in any other manner so that the members of the public

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can choose the place and time of the availability individually.

Is there a definition of No, the term “substantial Art 7(2) substantial part? part” is not defined in the Act. Instead it has to be decided by the court in each individual case. For example, in case no. Pf.I.20.738/2009/11. copying 1/6 of a database consisting of second hand car advertisements was deemed to constitute a “substantial part” of the database.

Is there a rule on repeated Yes, the rule contained in the Art 7(5) 5. The repeated and extractions? Directive has been taken systematic over by the Act: extraction and/or re-utilization of insubstantial parts of the contents of Art.84/A the database implying acts which (3) The repeated and conflict with a systematic extraction and/or normal exploitation re-utilization of even of that database or insubstantial parts of the which unreasonably contents of the database prejudice the implying acts which conflict legitimate interests with a normal exploitation of of the maker of the the database or which database shall not unreasonably prejudice the be permitted. legitimate interests of the maker of the database shall not be permitted in want of authorization therefor by the maker of the database.

How is exhaustion treated? The recent provision of the Art Special Part of the Act makes 7(2)(b) the general exhaustion rule mutatis utandis applicable to the makers of databases.

Art 84/A

(2) […] The provision in Paragraph (5) of Article 23 shall apply, mutatis mutandis, to the rights of the maker of the database.

Art.23

(5) If the copy of the work has been put into circulation

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by the rightsholder or by another person expressly authorized therefor by the rightsholder through sale or the transfer of proprietary rights in any other manner in the European Economic Area, the right of distribution – with the exception of the right of rental, lending and importation – shall further on be exhausted with regard to the copy of the work thus put into circulation.

Is the right assignable? Yes, the Act makes rights Art 7(3) 3. The right referred relating to databases to in paragraph 1 generally assignable: may be transferred, assigned or granted under contractual licence. Art.61

(2) The economic rights relating to databases shall be assignable.

Is there an exception for Yes, the exception for lawful Art 8(1) 1. The maker of a lawful use? use is provided in the Act, as database which is in the Directive. made available to the public in whatever manner may not prevent a Art.84/B lawful user of the database from (1) No authorization of the extracting and/or maker of the database shall re-utilizing be required for the extraction insubstantial parts or re-utilization – whether of its contents, repeated or regular - of an evaluated insubstantial part of the qualitatively and/or contents of the database by quantitatively, for a person authorized for the any purposes use of the database made whatsoever. Where public. the lawful user is authorized to (2) In case the right acquired extract and/or re- for the use of just a specific utilize only part of part of the database, the the database, this provision in (1) shall apply to paragraph shall only the part involved of the apply only to that database. part.

Are contracts permitted to No, any such contract is null Art 15 Binding nature of limit this freedom? and void, as required by the certain provisions Directive. Any contractual provision contrary to Articles 6 (1) and Art.62 8 shall be null and void. (4) The stipulations of a contract on use contrary to

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the provisions set out in (1) and (2) shall be null and void.

Are there exceptions for Yes, there is such as Art (a) in the case of private use? exception. It is conditional 9(1)(a) extraction for upon an absence of the private purposes of purpose of earning an the contents of a income directly or indirectly. non-electronic database;

Art.84/C

(1) An extract of even a substantial part of the contents of the database may be made by anyone for private purpose if it is not designed for earning or increasing income even in an indirect way. This provision shall not apply to databases operated by computer devices.

Are there exceptions for Yes, there is such as Art (b) in the case of teaching? exception. It is conditional 9(1)(b) extraction for the upon an absence of the purposes of purpose of earning an illustration for income directly or indirectly. teaching or scientific research, as long as the source is indicated Art.84/C and to the extent justified by the non- (2) A copy of even a commercial purpose substantial part of the to be achieved; contents of the database may be made - in a manner and to the extent consistent with the use involved - for purposes of school education and scientific research subject to the requirements of reference to the source and avoidance of earning or increasing income even in an indirect way.

Are there exceptions for Yes, there is such as Art (c) in the case of public security/admin/judicial exception. 9(1)(c) extraction and/or procedure?? re-utilization for the purposes of public security or an Art.84/C administrative or judicial procedure. (3) An extraction or re- utilization of even a substantial part of the contents of the database may be made - in a manner and to the extent consistent

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with the use involved - for purposes of evidence in court of justice, public administration or other authority proceedings.

How long does the sui The term of protection is 15 Art 10 Term of protection generis right last? years from either the year following the year in which 1. The right the database was first made provided for in public or the year in which Article 7 shall run the database was completed from the date of if it was not made public completion of the within that time. The restart making of the of the term is also provided database. It shall in case of substantial expire fifteen years alterations. from the first of January of the year following the date of completion. Art.84/D 2. In the case of a (1) The term of protection database which is applying to the rights made available to provided for in this Chapter the public in shall be as follows. It shall whatever manner run for fifteen years from the before expiry of the first day of the year following period provided for the year in which the in paragraph 1, the database was first made term of protection public, or for fifteen years by that right shall from the first day of the year expire fifteen years in which the database was from the first of completed in case it was not January of the year made public during the term following the date referred to. when the database was first made (2) The term of protection available to the applying to the database as public. calculated according to (1) shall recommence in case 3. Any substantial the contents of the database change, evaluated have undergone a qualitatively or substantial alteration as a quantitatively, to result of which the altered the contents of a database, as such, shall be database, including rated as one completed with any substantial substantial resources. A change resulting substantial alteration of the from the database may be the result accumulation of of successive additions, successive deletions and modifications. additions, deletions or alterations, which would result in the database being considered to be a substantial new investment, evaluated qualitatively or quantitatively, shall qualify the database resulting from that

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investment for its own term of protection.

Is unfair competition law There is no specific reference available? to unfair competition law in the Act.

Author: Gabor Soos

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3.12 Ireland Directive Question Answer 96/9/EC

What law Copyright and Related Rights Act 2000 (“CRRA” or “ the Act”), governs in force since 1 January 2001; amended in 2004 and 2007 copyright? (though the amendments do not seem to affect database protection – in which case the statements made in the NautaDutilh study are still applicable). Available at: http://www.irishstatutebook.ie/eli/2000/act/28/enacted/en/ht ml

How is subject Copyright subsistence is defined in s 17. This refers to Art 1(2) matter defined? “original databases”: s 17(2)(d)

Section 2 (1) CRRA. This states:

““database” means a collection of independent works, data or other materials, arranged in a systematic or methodical way and individually accessible by any means but excludes computer programs used in the making or operation of a database.”

Are recordings According to the NautaDulith study, “The exclusion for Rec 17 or an audio- recordings (recital 17…have not been expressly transposed. visual, This is not problematic since Irish law is to be construed cinematographic consistently with the Directive.” , literary or musical work excluded?

How is Under Section 17(2) CRRA databases are copyright subject Art 3 originality of matter. (Unlike under UK law, “database” is not a subset of databases “literary work”. Under Section 2 (1) CRRA defining “original defined? database” as “a database in any form which by reason of the selection or arrangement of its contents constitutes the original intellectual creation of the author” .

Interestingly, this definition expressly mentions the adjective “original”. However, why the adjective “ own” has been omitted remains unclear.” Art. 3.2 seems to be properly transposed.

Was this Yes. According the NautaDulith study, “…It should be noted changed to that prior to the CRRA, 2000, the Copyright Act, 1963 implement the protected the majority of databases, including non-original directive? databases, as literary works.” Now – in contrast to UK law – this is not the case

Were pre- Sched 1, para 2 (application to existing works) (general Art 14(2) existing principle) databases protected? until But para 4: copyright subsists after commencement if it existed before. This is qualified for databases by para 45, so

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when? as only to apply to those created on or before 27 March 1996.

Are there Yes. Section 21 (g) defines the author as “in the case of an Art 4 special rules on original database, the individual or group of individuals who database made the database” ownership? Section 23 Author is usually first owner, but allocates copyright to employer

What rights Section 37 Art 5 does copyright in a database Includes “or to undertake either of the acts referred to in confer? paragraph (a) or (b) in relation to an adaptation”

Section 39 (reproduction)

Section 40 (making available, includes distribution)

Section 41 (issuing/distribution

Section 42 (rental/lending)

How is Section 41(1)(a) Issuing means “the act of putting into Art 5(c) exhaustion circulation in a Member State of the EEA copies not previously treated? put into circulation in a Member State of the EEA by or with the licence of the copyright owner “

Section (2)(a) Issuing right does not include “any subsequent circulation of copies previously put into circulation”

Are there The lawful use exception of Article 6.1 has been implemented Art6(1) exceptions for by Section 83 CRRA: lawful use? “It is not an infringement of the copyright in an original database for a person who has the right to use the database or any part thereof, whether under a licence to undertake any of the acts restricted by the copyright in the original database or otherwise, to undertake, in the exercise of that right, anything which is necessary for the purposes of access to or use of the contents of the database or part thereof.”

Are contracts It was not possible to locate any statutory provision Art 15 permitted to implementing Art. 15 for copyright. The reviewer contemplates limit this that Art. 15 was mistakenly ticked off the to do list when freedom? section 327(2) was drafted without realising that the latter was in the sui generis part of the CRRA 2000.

Are there Section 50: “Fair dealing with a …non-electronic original Art 6(2)(a) exceptions for database, for the purposes of research or private study, shall private use? not infringe any copyright in the work.

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(4) In this Part, “fair dealing” means the making use of a … non-electronic original database … which has already been lawfully made available to the public, for a purpose and to an extent which will not unreasonably prejudice the interests of the owner of the copyright.”

Are there Section 53 does not apply. exceptions for Art 6(2)(b teaching? Section 54 (Anthologies for educational use) does

Section 57 (reprographic copying of 5% permitted in absence of licensing scheme) does

S 58 (lending by educational establishments) does

The exceptions for libraries in sections 59-70 apply to works, including databases.)

Are there The general provisions in ss 71-77 apply also to copyright- Art 6(2)(c) exceptions for protected databases. public security/admin/j udicial procedure?

Are there Yes, other provisions apply to all works, and thus include Art 6(2)(d) exceptions for databases. E.g. s 51 (fair dealing for criticism or review, other uses? reporting current events); s 87 (“The copyright in a work is not infringed by the making of a transient and incidental copy of that work which is technically required for the viewing of or listening to the work by a member of the public to whom a copy of the work is lawfully made available.”)

What law Same as above. governs sui generis right?

As part of copyright law, but in distinct part of Act, “Part V” what is the Section 321 defines subsistence. Investment and substantial Art 7 protection are defined in s 320 requirement?

Who is eligible? The maker in section 322 is “the person who takes the Art 11 initiative in obtaining, verifying or presenting the contents of a database and assumes the risk of investing in that obtaining,

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verification or presentation shall be regarded as the maker of, and as having made, the database.”

Section 322(5) states: “For the purposes of this Part, a database is made jointly where two or more persons acting together in collaboration take the initiative in obtaining, verifying or presenting the contents of the database and assume the risk of investing in that obtaining, verification or presentation.”

As regards natural persons, Article 11.1 has been transposed by Section 326(1) (a) and Art 11.2 by Section 326(1)(b) and (c) as well as Section 326(3)(a) to (c) CRRA.

Where Is Section 320: “extraction”, in relation to the contents of a Art 7(2) extraction database, means the permanent or temporary transfer of all or defined? a substantial part of the contents to another medium by any means or in any form

Where is re- Section 320: re-utilisation”, in relation to the contents of a Art 7(2) utilization? database, means making those contents available to the public by any means

According to the NautaDutilh study, properly transposed in Section 320(1) CRRA

Is there a Substantial part is defined in Section 320(1) CRRA as follows: Art 7(2) definition of "substantial", in relation to the investment, extraction or re- substantial part? utilisation, means substantial in terms of quantity or quality or a combination of both.”

Is there a rule Section 324(3): Art 7(5) on repeated extractions? “For the purposes of this Part, the repeated and systematic extraction or re-utilisation of insubstantial parts of the contents of a database which conflicts with the normal exploitation of the database or which prejudices the interests of the maker of the database shall be deemed to be extraction or re-utilisation of a substantial part of those contents.”

How is Section 320(5): Art 7(2)(b) exhaustion treated? “Where a copy of a database has been sold within the Member States of the EEA by, or with the consent of, the owner of the sui generis right in the database, the further sale within the Member States of the EEA of that copy for the purposes of this Part shall not be taken to constitute extraction or re-utilisation of the contents of the database.”

Is the right Section 321 defines the “database right” as a “property right”; Art 7(3) assignable? section 323 says the maker is the “first” owner. Section 338 makes applicable the copyright provisions on assignment (sections 120 ff)

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Is there an Section 327(1): Art 8(1) exception for lawful use? Without prejudice to section 324 (3), a lawful user of a database shall be entitled to extract or re-utilise insubstantial parts of the contents of the database for any purpose.

Article 8.1 has almost been properly transposed by Section 327(1) CRRA with the caveat that the terms “quantitatively and quantitatively” are solely – given the definition of ‘substantial’ – in relation to investment, extraction or re- utilisation, however not to lawful use of insubstantial parts.

Are contracts Section327(2) Where, under an agreement, a person has a Art 15 permitted to right to use a database, any term or condition in the limit this agreement shall be void in so far as it purports to prevent that freedom? person from extracting or re-utilising insubstantial parts of the contents of the database for any purpose.

Are there Section 329(1): the sui generis right in a non-electronic Art 9(1)(a) exceptions for database which has been re-utilised is not infringed by fair private use? dealing with a substantial part of its contents by a lawful user of the database where that part is extracted for the purposes of research or private study

(2) For the purposes of this Part “fair dealing” means the extraction of the contents of a database by a lawful user to an extent which will not unreasonably prejudice the interests of the rightsowner

Only for private study (fair dealings provisions)

Are there Section 330: “The database right in a database is not infringed Art 9(1)(b) exceptions for by fair dealing with a substantial part of its contents by a teaching? lawful user of the database where that part is extracted for the purposes of illustration in the course of instruction or of preparation for instruction and where (a) the extraction is done by or on behalf of a person giving or receiving instruction, and (b) the source is indicated.

Educational establishments may be “lawful users” (Section 330)

Are there Yes, for Parliamentary or judicial proceedings (Section 331), Art 9(1)(c) exceptions for for statutory inquiries (Section 332), for copying of material in public public records (Section 333), for material open to public security/admin/j inspection or on statutory register (Section 334), for udicial Databases communicated to Government or Oireachtas procedure?? (Section 335), for Acts done under statutory authority (Section 336). Eventually, there is also an exception for “orphan” databases (Section 337 – if it is not possible by reasonable inquiry to ascertain the identity of the maker of the database, and it is reasonable to assume that the sui generis right has expired.

How long does Section 325(1) The sui generis right shall expire 15 years from Art 10 the sui generis the end of the calendar year in which the making of the right last? database was completed.

(2) Where a database is lawfully re-utilised before the

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expiration of the period referred to in subsection (1), the sui generis right in the database shall expire 15 years from the end of the calendar year in which the database was first so re- utilised

Existing Sched 1, para 46: databases completed on or after 1 Jan databases 1983, in which sui generis right exists on commencement [1 January 2001] last for 15 years from 1 Jan 1999.

Is unfair No misappropriation law. Passing off would potentially apply in competition law situation involving deceptive misrepresentation (e.g. available? deceptively similar titles).

Miscellaneous The Irish Courts have been faced with a series of cases brought by Ryanair Ltd, objecting to screen scraping of flight data from its website. The basis for the claims appears to include infringement of sui generis right and breach of contract: see e.g. Ryanair Ltd v Bravofly [2009] IEHC 41, [1]. However, none of the cases have as yet been decided on these substantive matters, with much of the litigation turning on jurisdictional issues, in particular how far the terms of use of Ryanair’s website (which initially referred to the UK, but more recently Ireland) determine the appropriate forum. The Irish Supreme Court has now confirmed two High Court decisions which, for different reasons, held that the terms of use determined the forum (Ireland): Ryanair Ltd v Billigfluege GmbH and Ryanair Ltd v On the Beach Ltd [2015] IESC 11.

Authors: Alfred Radauer, Lionel Bently

Review: Paul Coughlan

Sources: NautaDutilh, WIPO-Lex, CRRA original text

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3.13 Latvia Question Answer Directive 96/9/EC

What law governs Autortiesību likums / Copyright law, see under: copyright? https://likumi.lv/doc.php?id=5138

How is subject matter A database – a collection of independent works, Art Section 1, defined? data or other materials, which are arranged in a 1(2) 3) systematic or methodical way and are individually accessible by electronic or other means.

Are recordings or an - Rec 17 - audio-visual, cinematographic, literary or musical work excluded?

How is originality of They are protected as Derivative Works. Art 3 Sect. 5 (1) databases defined? 2), (2) Section 5. Protected Derivative Works

(1) Without prejudice to the rights of authors as to the original work, the following derivative works shall also be protected: 1) [..] 2) collections of works (encyclopaedias, anthologies, atlases and similar collections of works), as well as databases and other compiled works which, in terms of selection of materials or arrangement, are the result of creative activity. (2) Derived works shall be protected irrespective of whether the works from which they are derived, or which are included within them can have copyright protection applied to them.

Was this changed to No. Copyright law of 1993 (likums “Par implement the autortiesībām un blakustiesībām”, Latvijas directive? Republikas Augstākās padomes un Valdības Ziņotājs, 1993, 22./23. nr.) contained provision which are almost the same as the above mentioned.

Were pre-existing Yes, they are. The rights of protection of a Art Transitional databases protected? database provided [..] shall apply also to such 14(2) Provisions until when? databases the creation of which was completed 5. Point. not earlier than 15 years before the coming into force of this Law and which are, on the day of the coming into force of the Law, in conformity with the provisions of Section 5, Paragraph two of this Law.

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Are there special rules No. General principles of copyrights. Art 4 on database ownership?

What rights does (3) With respect to the use of a database, the Art 5 Sect. 15 copyright in a author of a database has the following exclusive (3) database confer? rights to permit or prohibit:

1) the communication to the public or demonstration of the database;

2) the distribution of the database;

3) to make the database available to the public by wire or by other means, so that it is accessible in an individually selected location and at an individually selected time;

4) the temporary or permanent reproduction of the database;

5) the translation, adaptation or transformation in any other way of the database, as well as the reproduction, distribution, communication to the public, demonstration or display of the results of such activities.

How is exhaustion General rule of exhaustion: Sect. 32 treated? Section 32. Exhaustion of Distribution Rights Sect. 59(2)

The right to distribute a work shall be exhausted from the moment when such work is sold or otherwise alienated in the European Union for the first time if it has been done by the author himself or herself, or with his or her consent. This condition applies only to works embodied in concrete material objects or the copies thereof and which are sold or otherwise alienated.

Special rule for databases:

Section 59.

[..]

(2) The right of the maker of a database to control the resale of the database in the European Union shall be exhausted at the moment when the database is sold or otherwise alienated in the European Union for the first time, if it has been done by the maker of the database himself or herself, or if it has been done with his or her consent. This condition shall apply only to those objects included in concrete material media or the copies thereof, which are sold or otherwise alienated.

Are there exceptions Section 31. Restrictions with Respect to Art6(1) Sect. 31(1) for lawful use? Databases

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(1) A lawful user of a database or of a copy thereof may perform any action, which is necessary in order to access the contents of the databases and its use. If the lawful user is authorised to use only part of the database, the abovementioned provision shall apply only to that part.

Are contracts No: Section 31(2) Agreements, which are Art 15 Sect. 31(2) permitted to limit this contrary to the provisions of this Section, shall freedom? not be in effect.

Are there exceptions Yes: Section 59. Restrictions to Rights of Art Sect. 59 for private use? Protection of Databases 6(2)(a) (1) 1)

(1) Without the consent of the maker of a database which is available to the public the lawful users of a database may:

(2) extract the contents of a non-electronic database for personal use;

[..]

Are there exceptions Yes: Section 59. Restrictions to Rights of for teaching? Protection of Databases Art Sect. 59 6(2)(b) (1) 2) (1) Without the consent of the maker of a database which is available to the public the lawful users of a database may:

[..]

(2) extract a substantial part of the contents of a database for the purposes of education or scientific research, mandatorily indicating the source, moreover only to the extent necessary for the non-commercial purpose to be achieved; [..]

Are there exceptions Yes: Section 59. Art Sect. 59 for public 6(2)(c) (1) 3) security/admin/judicial (1) Without the consent of the maker of a procedure? database which is available to the public the lawful users of a database may:

[..]

(3) extract or r-use a substantial part of the contents of a database for the purposes of State security, as well as for the purposes of administrative or judicial proceedings.

Are there exceptions No. Art for other uses? 6(2)(d)

What law governs sui Autortiesību likums / Copyright law, see under: generis right? https://likumi.lv/doc.php?id=5138 , Chapter IX

Sections 57-62

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what is the protection Sect. 5(3): Art 7 Sect. 5(3) requirement? and Sect. (3) Databases, the creation, obtaining, 57 verification or presentation of which has required a substantial qualitative or quantitative investment (financial resources or consumption of time and energy), whether or not they are the objects of copyright, shall be protected in accordance with Chapter IX of [Latvian Copyright] Law.

Section 57. Rights of a Maker of a Database

(1) As the maker of such database, in the creation, verification, and formation of which there has been substantial qualitative or quantitative investment (Section 5, Paragraph two) shall be recognised the natural or legal person which has undertaken initiative and the investment risk regarding the making of a database.

(2) The maker of a database has the right to prevent the following regarding the entire contents of the database or such parts of which may be qualitatively of quantitatively regarded as substantial:

1) extraction, which means the permanent or short-term (temporary) transfer of all or a substantial part of the contents of a database to another location by any means or in any form;

2) reuse, which means 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 rental, by providing online or other forms of transmission.

(3) Public lending is not an act of extraction or reuse.

Who is eligible? Section 57(1) Art 11 Sect. 57(1) Sect. 61 1) As the maker of such database, in the creation, verification, and formation of which there has been substantial qualitative or quantitative investment (Section 5, Paragraph two) shall be recognised the natural or legal person which has undertaken initiative and the investment risk regarding the making of a database.

Section 61. Scope of Rights of Protection of Databases

(1) The rights of the maker of a database – a natural person – shall be recognised, if he or

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she is a Latvian citizen or a person who is entitled to a Latvian non-citizen passport, a citizen of another Member State of the European Union or if Latvia or another Member State of the European Union is their permanent place of residence (domicile) or if he or she has a permanent residence permit.

(2) The rights of a maker of a database – a legal person – shall be recognised, if such legal person has been established in accordance with the laws and regulations of Latvia or another Member State of the European Union, and its legal address, administration or principal place of activities is in the European Union. If a legal person has only its legal address in the territory of Latvia or another Member State of the European Union, the operations of such person must be linked on an ongoing basis with the economy of Latvia or the relevant Member State of the European Union.

(3) If a database is formed outside Latvia and the provisions of Paragraph one and two of this Section are not applicable to it, such database shall be protected on the basis of international agreements binding on Latvia.

Where Is extraction Section 57. Rights of a Maker of a Database Art Sect. 57(2) defined? 7(2) 1) (2) The maker of a database has the right to prevent the following regarding the entire contents of the database or such parts of which may be qualitatively of quantitatively regarded as substantial:

1) extraction, which means the permanent or short-term (temporary) transfer of all or a substantial part of the contents of a database to another location by any means or in any form;

2) re-use, which means 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 rental, by providing online or other forms of transmission.

Where is re- Section 57. Rights of a Maker of a Database Art Sect. 57 utilization? 7(2) (2) 2) [..]

(2) The maker of a database has the right to prevent the following regarding the entire contents of the database or such parts of which may be qualitatively of quantitatively regarded as substantial:

[..]

2) re-use, which means 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 rental, by providing online or other

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forms of transmission.

Is there a definition of Such parts which are “qualitatively of Art Sect. 57(2) substantial part? quantitatively regarded as substantial”. 7(2)

So only defining elements are quality and quantity.

Is there a rule on (4) The repeated and systematic extraction and Art Sect. 57(4) repeated extractions? reuse of non-essential parts of the contents of a 7(5) database if such is done by acts which conflict with a normal use of such database or which unreasonably prejudice the lawful interests of the maker of the database are not permitted.

How is exhaustion (2) The right of the maker of a database to Art Sect.59(2) treated? control the resale of the database in the 7(2)(b) European Union shall be exhausted at the moment when the database is sold or otherwise alienated in the European Union for the first time, if it has been done by the maker of the database himself or herself, or if it has been done with his or her consent. This condition shall apply only to those objects included in concrete material media or the copies thereof, which are sold or otherwise alienated.

Is the right General right of the author (not specifically for Art Sec. assignable? data base author): 7(3) t. 15(4) The author has the right to use his or her work in any manner, to permit or prohibit its use, receive remuneration for permission to use his or her work and for the use of the work except in cases provided for by law.

Is there an exception Section 58. Rights and Obligations of Users of a Art Sect. 58 for lawful use? Database 8(1)

(1) A lawful user of a database which is available to the public has the right to extract or reuse, for any purposes, parts of its content that may be regarded as qualitatively or quantitatively nonessential parts of its contents. This condition shall apply only to such part of a database which a lawful user is permitted to extract or reuse.

(2) A lawful user of a database, which is available to the public, shall observe the rights of the rightsholders related to the works or materials contained in the database.

(3) A lawful user of a database, which is available to the public, may not perform acts that conflict with the normal exploitation of the database or unreasonably prejudice the lawful interests of the maker of the database

Are contracts - Art 15 permitted to limit this freedom?

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Are there exceptions Section 59. Restrictions to Rights of Protection Art Sect. 59 for private use? of Databases 9(1)(a) (1) 1)

(1) Without the consent of the maker of a database which is available to the public the lawful users of a database may:

1) extract the contents of a non-electronic database for personal use;

[..].

Are there exceptions (1) Without the consent of the maker of a Art Sect. 59(1) for teaching? database which is available to the public the 9(1)(b) 2) lawful users of a database may:

[..]

2) extract a substantial part of the contents of a database for the purposes of education or scientific research, mandatorily indicating the source, moreover only to the extent necessary for the non-commercial purpose to be achieved; [..]

Are there exceptions (1) Without the consent of the maker of a Art Sect. 59(1) for public database which is available to the public the 9(1)(c) 3) security/admin/judicial lawful users of a database may: procedure?? [..]

3) extract or re-use a substantial part of the contents of a database for the purposes of State security, as well as for the purposes of administrative or judicial proceedings.

How long does the sui Section 60. Term of Rights of Protection of Art 10 Sect. 60 generis right last? Databases

(1) The rights specified in Section 57, Paragraph two of this Law shall be in effect for 15 years from the day when the formation of a database was completed. The term shall begin on 1 January of the year following the day of the formation of the database.

(2) If a database has been made available to the public before the expiration of the term specified in Paragraph one of this Section, the term of protection shall begin on 1 January of the year following the day when the database was first made available to the public and shall be in effect for 15 years.

(3) If any changes that may be regarded as qualitatively or quantitatively substantial are made in the contents of the database, as well changes in it resulting from the accumulation of successive additions, deletions or changes as a result of which it may be considered that a new investment which may be regarded as qualitatively or quantitatively substantial, has been made, such database has the right to its

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own term of protection, and the provisions of Paragraphs one and two of this Section shall apply.

Is unfair competition There is no unfair competition law available for law available? data bases protection.

Author: Laura Valtere

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3.14 Lithuania Question Answer Directive 96/9/EC

What law governs copyright Law on Copyright and Related Rights No. protection of databases? VIII-1185 of May 18, 1999 (as amended on 20 June 2000 - by Law No. VIII-1886; on 5 March 2003 - by Law No. IX-1355; on 12 October 2006 - by Law No. X-855; on 13 March 2008 - by Law No. X-1454, 19 January 2010 - by Law No. XI-656; on 21 December 2011 - by Law No. XI- 1833; on 15 May 2014 - by Law No. XII- 888; on 7 October - by Law No. XII- 1183; on 16 December 2014 - by Law No. XII-1460; on 20 September 2016 - by Law No. XII-2617; on 3 November 2016 - by Law No. XII-2708; on 2 June 2017 – by Law No. XIII-552)

How is subject matter According to the general provisions Art 1(2) defined?

Art.2(7) defines database as “a compilation of works, data or any other material arranged in a systematic or methodical way and individually accessible by electronic or other means, except for computer programmes used in the making or operation of such databases.”

Art. 3 (3) on the subject matter of copyright defines the following to be protectable by copyright “collections of works or compilations of data, databases (in machine readable form or other form), which, by reason of the selection or arrangement of their contents constitute of author’s intellectual creations”

Are recordings or an audio- Not specifically mentioned in the Law Rec 17 visual, cinematographic, literary or musical work excluded?

How is originality of Art. 4. (3)(2) would imply the following: Art 3 databases defined? “by reason of the selection or arrangement of their contents constitute of author’s intellectual creations”

Was this changed to Yes. implement the directive?

Were pre-existing databases There are general rules as regards Art 14(2) protected? until when? application of the law to the works created before the entrance of the law into force:

18 May 1999 No. VIII-1185 Vilnius

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Chapter VII FINAL PROVISIONS

Article 72. Transitional Provisions

1. This Law shall apply to authors and owners of related rights if at the moment of the entry into force thereof the term of protection of their rights in literary, scientific and artistic works or objects of related rights, which were effective before the entry into force of this Law, has not expired.

2. Any acts done before the entry into force of this Law and not infringing the provisions of the relevant legislation in force at that time shall not constitute the infringement of rights and shall not give rise to the right to obtain remuneration granted under this Law.

3. Agreements concluded before the entry into force of this Law shall be valid as long as they comply with the provisions stipulated by this Law.

Article 73. Entry into Force of the Law

1. Paragraph 3 of Article 16 and paragraph 4 of Article 23 of this Law shall enter into force on 1 July 2000.

2. Upon the entry into force of this Law, the following shall become invalid:

1) Chapter 4 “Copyright” and Chapter 5 of the Civil Code;

2) the Law on the Legal Protection of Computer Programmes and Databases.

Are there special rules on General rules on Copyright ownership: Art 4 database ownership? Art. 6 - 8

What rights does copyright in General rules apply: Art.14 on Moral Art 5 a database confer? rights and Art. 15 on Economic Rights of Authors

How is exhaustion treated? General rules apply: Art. 16. Distribution Art.5(3) of a Work after the First Sale or other Transfer of Ownership Rights in the Work

Are there exceptions for Yes. Art.32(1) Art 6(1) lawful use? Art. 32(3) Electronic databases are not encompassed in the general exception for personal use of copyrighted material (Art. 20), except for the cases outlined in Article 32. This articles introduces the concept of lawful user: “A lawful user of a database or a copy thereof shall have the

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right, without the authorisation of the author or other owner of copyright, to perform the acts set out in paragraph 1 of Article 15 of this Law, provided that such acts are necessary for the purposes of access to, and an appropriate use of the contents of the database by the legitimate user of the database.” Art. 32.2 is a transposition of the DBD Art.6(1) for parts of databases.

Are contracts permitted to No (Art. 32(3)) Art 15 limit this freedom?

Are there exceptions for Yes. Art. 20(3)(3). See above on Art 6(2)(a) private use? exceptions for private use

Are there exceptions for Yes. Art. 32(4) provides exceptions for teaching? teaching and scientific research Art 6(2) (b)

Are there exceptions for Yes. Art 32(4) identifies respectively “the Art 6(2)(c) public security/admin/judicial purpose of public and State security or procedure? for the purposes of an administrative or judicial procedure.”

Are there exceptions for No. Art 6(2)(d) other uses?

What law governs sui generis Law on Copyright and Related Rights No. right? VIII-1185 of May 18, 1999 (as amended on 20 June 2000 - by Law No. VIII-1886; on 5 March 2003 - by Law No. IX-1355; on 12 October 2006 - by Law No. X-855; on 13 March 2008 - by Law No. X-1454, 19 January 2010 - by Law No. XI-656; on 21 December 2011 - by Law No. XI- 1833; on 15 May 2014 - by Law No. XII- 888; on 7 October - by Law No. XII- 1183; on 16 December 2014 - by Law No. XII-1460; on 20 September 2016 - by Law No. XII-2617; on 3 November 2016 - by Law No. XII-2708; on 2 June 2017 – by Law No. XIII-552)

What is the protection Art. 61 defines: “The maker of a Art 7 requirement? database who shows that he has made a substantial qualitative and/or quantitative (intellectual, financial, organisational) investment in obtaining, arrangement, verification and presentation of the contents of that database”

Who is eligible? Art. 3(2) and (3) makers of databases Art 11 who are citizens of the Republic of Lithuania or natural persons permanently residing in the Republic of Lithuania, or legal persons the headquarters whereof is located in the Republic of Lithuania. In addition, “…makers of databases whose rights shall be protected in the Republic of Lithuania in accordance with the international agreements ratified by the

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Republic of Lithuania, and other legal acts binding on the Republic of Lithuania according to its international obligations.”

Where Is extraction defined? Not defined Art 7(2)

Where is re-utilization? Not defined Art 7(2)

Is there a definition of No. Art 7(2) substantial part?

Is there a rule on repeated Yes. Art 63(2) states: “Repeated and Art 7(5) extractions? systematic extractions and reutilization of small parts of the contents of a database shall be prohibited where such acts conflict with a normal exploitation of that database or unreasonably prejudice the legitimate interests of the maker thereof.”

How is exhaustion treated? Art. 61(4) states: “The right of Art 7(2)(b) distribution of copies of a database, with the exception of the rental right, shall be exhausted in respect of the copies of the database, which have been sold or otherwise transferred into the ownership by the maker of the database or with his consent, and which have been lawfully released into circulation within the territory of the countries of the European Economic Area.”

Is the right assignable? Art. 61(2) states: “The rights of makers Art 7(3) of databases referred to in paragraph 1 of this Article may be transferred to other persons under the agreement, hereditary succession or in accordance with other procedure prescribed by law.”

Is there an exception for Yes. Art 62(1) and (2) Art 8(1) lawful use?

Are contracts permitted to No. See Art. 62(5) Art 15 limit this freedom?

Are there exceptions for Yes. Art. 63(1), point 1) Art 9(1)(a) private use?

Are there exceptions for Yes. Art. 63(1), point 2) Art 9(1)(b) teaching?

Are there exceptions for Yes. Art. 63(1), point 3) Art 9(1)(c) public security/admin/judicial procedure??

How long does the sui Art. 64. 15 years from the date of Art 10 generis right last? completion of the making of the database. If the database is made available to the public in whatever manner within this period, the rights of the maker of the database shall expire 15

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years after the date of its making available to the public.

The term of protection of a database shall be calculated from the first day of January of the year following the date of completion or the date when the database was first made available to the public.

Is unfair competition law Yes. Art. 15-16 of the Competition Law available? (general rules on unfair competition, not specifically address the databases or sui generis rights)

Examples of notable case law: e.g. Decisions of the Lithuania Supreme Court: civ. case No. 3K- 3-112/2005; civ. case No. 3K-3-278-684/2015.

Author: Alfred Radauer

Review, additions and corrections: Edita Ivanauskiene

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3.15 Luxembourg Question Answer Directive 96/9/EC

What law governs copyright Act of 18 April 2001 (LCA), as protection of databases? amended by the Law of 18 April 2004 on copyright, neighbouring rights, databases and patents (LCPA)

How is subject matter The 2004 amendment, the LCPA, Art 1(2) defined? brings the definition of databases in line with Art. 1(2) and is described in Art. 1

Are recordings or an audio- Rec 17 visual, cinematographic, literary or musical work excluded?

How is originality of The 2004 amendment of the law Art 3 databases defined? brings the originality definition in line with that of Art. 3 of Directive 96/9/EC. Before that, there was – wrongly – a requirement of substantial investment for copyright protection; it was not expressly stated that the elements must be individually accessible; and it departed from the Directive by requiring a structured instead of a systematic or methodical arrangement

Was this changed to Yes – The previous 2001 law had a implement the directive? number of deficiencies with respect to complying with Directive 96/9/EC

Were pre-existing databases Art 14(2) protected? until when?

Are there special rules on The initial author is not defined in Art 4 database ownership? the LCA. In case of joint ownership, the exercise of the rights must be regulated by agreement. In the absence of such agreement, the co- authors may not exercise these rights separately without prior authorisation by the courts (Article 5.1). Infringement proceedings may be conducted separately, provided the other co-authors are being joined to the case (Article 5.2).

Initial authorship for legal persons is possible in case of “supervised works”. The LCA distinguishes “supervised works” from works of collaboration in Article 5.3. When a work is created by several authors at the initiative and under supervision of a natural or legal person who edits it, produces it and discloses it

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under its own name, and when the contributions of the participating authors to such work are conceived to be integrated into the larger whole, such natural or legal person is vested with the initial economic and moral rights on such work (Article 6).

These provisions have not been changed with the 2004 amendment and are therefore the same as in the 2001 LCA.

What rights does copyright in - The reproduction right is defined in Art 5 a database confer? Article 3.1, 3.2 and 3.3 of the LCA/LCPA. It covers reproduction by any means and in any form (Article 3.1 of the LCA).

- The adaptation right is included in the reproduction right by Article 3.2 of the LCA.

- The LCA grants a distribution right to the author (amendment of 2004, new Art. 3.5).

- The communication right has been adequately transposed in Article 4 of the LCA (unchanged compared to the 2001 LCA).

How is exhaustion treated? With the amendment of 2004, exhaustion is treated as follows: “This distribution right concerning the original or copies of a work shall not be exhausted within the European Union in the event of first sale or other transfer of ownership in the European Union this object by the right holder or with his consent.”

Are there exceptions for Yes. Art. 10bis of the 2004 LCPA Art6(1) lawful use? states that “acts performed by the legitimate user of all or part of a database or of copies thereof that are needed to access the content and for normal use by the latter of the whole or a portion thereof” may not be prohibited by the author of a database.

Are contracts permitted to Art. 10bis states that contracts Art 15 limit this freedom? cannot limit this freedom.

Are there exceptions for Yes – Art10bis, for non-electronic Art 6(2)(a) private use? databases

Are there exceptions for Yes teaching? Art 6(2) (b)

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Are there exceptions for Yes Art 6(2)(c) public security/admin/judicial procedure?

Are there exceptions for Yes – Art.10bis(5): “The author of a Art 6(2)(d) other uses? database may not prohibit… reproduction of all or part of a database owned by State provided that it is lawfully made public. The conditions of reproduction are determined by Grand-Ducal regulation.

What law governs sui generis Part 6 of the LCA/LCPA regulates the right? sui generis protection of databases.

What is the protection In the Law of 2004 amending law of Art 7 requirement? 2001, Article 67 defines the protection requirement, which is substantial qualitative or quantitative investment for obtaining, verification or presentation of the contents of the database.

As in the 2001 LCA, the other criteria required by the common definition of a database (independence of its elements, systematic or methodical arrangement, individual accessibility) are not expressly stated for non- original databases under the LCA/LCPA.

Who is eligible? In the Law of 2004 amending law of Art 11 2001, Article 70 is replaced as follows:

“The protection provided by this Part applies to databases whose producer or holder of the right:

- is a national of a Member State of the European Union or habitual residence in the territory of the European Union.

- is a company incorporated in accordance with the law of a Member State of the European Union, which has its registered office, central administration or principal place of business within the European Union. However, if such company has only its registered office in the territory of the European Union, its operations must have a real and continuous link with the economy of a Member State.

2. A Grand Ducal regulation under

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the agreements concluded by the European Community and third countries may extend the protection provided by this party to databases produced in third countries to the EU and not covered by the paragraph 1st. The duration of the protection granted to these databases cannot exceed that provided for in Article 69. " Where Is extraction defined? Pursuant to Article 67.1, §1 of the Art 7(2) amended 2004 LCPA, “…The producer of a database can prevent extraction or reuse of all or a substantial part, evaluated qualitatively or quantitative way, the contents of this database…. Is considered extraction, permanent or temporary transfer of all or a substantial portion of the contents of a database to another medium by any means or in any form whatsoever, except for public lending.”

Where is re-utilization? Pursuant to Article 67.1, §1 of the Art 7(2) amended LCPA, “…is considered extraction, permanent or temporary transfer of all or a substantial portion of the contents of a database to another medium by any means or in any form whatsoever, except for public lending.”

Is there a definition of There seems to be only a statement Art 7(2) substantial part? that the substantial part is “evaluated qualitatively or quantitatively”.

Is there a rule on repeated Pursuant to Article 67.1, §1 of the Art 7(5) extractions? amended LCPA, “The extraction or repeated and systematic reuse of insubstantial parts of the contents of a database, which would be contrary to the normal exploitation of that database or which unreasonably prejudice the legitimate interests of the database producer are not allowed.”

How is exhaustion treated? Pursuant to Article 67 §5 of the Art 7(2)(b) LCPA, the first sale of a copy of a database within the Community by the rights holder, or with his consent, exhausts the right to control the resale of such copy within the Community. This definition complies with the Directive.

Is the right assignable? Yes. Art. 67 §6 Art 7(3)

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Is there an exception for Yes. Art 67a. Art 8(1) lawful use?

Are contracts permitted to No. Art 67a.4 Art 15 limit this freedom?

Are there exceptions for Yes. Art.68a, for private purposes of Art 9(1)(a) private use? the contents of a non-electronic database

Are there exceptions for Yes. Art. 68b Art 9(1)(b) teaching?

Are there exceptions for Yes. Art. 68c Art 9(1)(c) public security/admin/judicial procedure??

How long does the sui Art. 69 states that “…The protection Art 10 generis right last? provided by this section expires 15 years after 1st January of the year following the date of completion of the database or, in the case of a database which has been available to the public in any way either before the expiry of the above named, the year following the date on which the base has been to the public for the first time.”

Is unfair competition law available?

Author: Alfred Radauer

Source: Wipo-Lex

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3.16 Malta Directive Question Answer 96/9/EC

What law governs copyright COPYRIGHT ACT (Chapter 415 of the Laws of protection of databases? Malta); ACT XIII of 2000, as amended by Acts VI of 2001, IX of 2003, IX of 2009 and VIII of 2011.

How is subject matter Art 2 (1) states: "database" means a Art 1(2) defined? collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means without it being necessary for these materials to have been physically stored in an organized manner but does not extend to computer programs used in the making or operation of a database accessible by electronic means comprised within the term "computer program";

Are recordings or an audio- Referring back to the definition in Art. 2(1), Rec 17 visual, cinematographic, which specifically refers to “collection[s] of literary or musical work independent works” such works may be excluded? covered by database protection only insofar as they might form part of a database (for instance; a musical album or a collection of literary works). The law is silent on whether audio-visual, cinematographic, literary or musical works as such fall within the scope of database protection. This has never been tested in jurisprudence

The directive merely states that such works “[do] not fall within the scope of [the] Directive”. But this does not mean that individual member states are not at liberty to grant database protection to independent works

How is originality of Art 3 (4) states “A database shall not be Art 3 databases defined? eligible for copyright unless by reason of the selection or arrangement of its contents, it constitutes the author’s intellectual creation. Moreover, the copyright conferred to a database shall not extend to its contents and shall be without prejudice to any rights subsisting in such contents themselves.”

Was this changed to This wording was included in the original 2000 implement the directive? version of The Copyright Act (Laws of Malta Chap. 415), which replaced the old 1967 Copyright Act (Laws of Malta Chapter 196, since repealed). The old law (Chap. 196) did not extend copyright protection to databases, nor did it provide for a sui generis right in databases.

Were pre-existing databases A. 60(3) states “No action may be taken Art 14(2); A. protected? until when? under this Act in respect of an action which 14(1); A. 16(1) took place prior to the commencement of this

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Act in respect of rights recognised by this Act but which were not recognised by the Copyright Act repealed by this Act.” …. Since databases were not protected under the precursor to Chap. 415 – namely the 1967 Copyright Act (Laws of Malta Chapter 196, since repealed) - one must conclude that under the current Copyright Act (Laws of Malta, Chap 415) there is no right of action against acts of infringement pertaining to databases which took place prior to the year 2000.

Are there special rules on A. 11 states “Copyright conferred by articles Art 4 database ownership? 4, 5 and 6 shall vest initially in the author or in the joint authors:

Provided that in the case of computer programs and databases where a work is made in the course of the author’s employment, in the execution of his duties or following the instructions given by his employer, the economic rights conferred by copyright shall be deemed to be transferred to the author’s employer, subject to any agreement between the parties excluding or limiting such transfer. In respect of other works eligible for copyright, in such circumstances, subject to any agreement to the contrary between the parties, the copyright shall always vest in the author or joint authors.

What rights does copyright in Art 7 (1) states copyright in a database shall Art 5 a database confer? be the exclusive right to authorise or prohibit the doing in Malta in respect of the protected material in its totality or substantial part thereof, either in its original form or in any form recognisably derived from the original. That could be among others a) direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part; b) the rental and lending; c) the distribution; d) the translation in other languages including different computer languages; e) the adaption, arrangement and any other alteration and the reproduction, distribution, communication, display or performance to the public of the results thereof; (f) the broadcasting or rebroadcasting or the communication to the public or cable retransmission; (g) display or performance to the public

How is exhaustion treated? Art 8 (1) states that “the first sale or other A. 5(c); A. 7(b) transfer of ownership in the market of the original work enjoying copyright or copies thereof, when such sale is effected by or with the consent of the copyright owner himself, shall exhaust the exclusive distribution right in respect of that work or its copy.”

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Are there exceptions for Yes. Art6(1) lawful use?

Are contracts permitted to No. Art 15 limit this freedom?

Are there exceptions for Yes, in Art 9 (1) c Art 6(2)(a) private use?

Are there exceptions for Yes, in Art 9 (1) h teaching? Art 6(2) (b)

Are there exceptions for Yes, in Art 9 (1) l Art 6(2)(c) public security/admin/judicial procedure?

Are there exceptions for Yes, libraries, educational establishments or Art 6(2)(d) other uses? museums, archives; see Art 9 (1) d

What law governs sui generis COPYRIGHT ACT (Chapter 415 of the Laws of right? Malta); ACT XIII of 2000, as amended by Acts VI of 2001, IX of 2003, IX of 2009 and VIII of 2011.

What is the protection The protection requirement is stated in Art Art 7 requirement? 25: “the maker of a database who can show that there has been qualitatively or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents of the database shall have, irrespective of the eligibility of that database or its contents for protection by copyright or by other rights, the right to authorise or prohibit acts of extraction or re- utilization of its contents, in whole or in substantial part, evaluated qualitatively or quantitatively.

Who is eligible? Eligible is a maker or rightsholder that at the Art 11 time when the database is made is 1) an individual who is a citizen of, or is domiciled or permanently resident in Malta or in a State in which such a sui generis right in respect of databases is protected under an international agreement to which Malta is also a party; or 2) a body of persons or a commercial partnership constituted, established, registered and vested with legal personality under the laws of Malta or of a State in which such a sui generis right in respect of databases is protected under an international agreement to which Malta is also a party;

Where Is extraction defined? Art 30 (1): "extraction" means the permanent Art 7(2) 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

Where is re-Utilization Art 30 (1) and (2): "re-utilization" means any Art 7(2) defined? form of making available to the public all or a substantial part of the contents of a database

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by the distribution of copies, by renting, by on-line or other forms of transmission; provided that public lending shall not be deemed to be an act of extraction or re- utilization.

Is there a definition of No. Art 7(2) substantial part?

Is there a rule on repeated Yes. Art 7(5); extractions? A. 9

The Copyright Act is here aiming to strike a balance between a fair dealing provision for the sui generis right (which member states are allowed to legislate for in terms of A. 9 of the Directive) and A. 7(5). It is very difficult to draw the line between the mere re- utilization of insubstantial parts and the systematic extraction or re-utilization of insubstantial parts in statute, which is most likely why the law has left this open to the interpretation of the courts. The law is necessarily unclear as to where precisely the line is to be drawn, but that the line exists is unambiguous. This seems to us to be in line with the Directive.

How is exhaustion treated? Art 31 states that “The first sale in Malta of a Art 7(2)(b) copy of a database by the rightsholder or with his consent shall exhaust the right to control the resale of that copy.”

Is the right assignable? Yes, Art 28 states that the right may be Art 7(3) assigned.

Is there an exception for Yes, “a licensed user may, without the Art 8(1) lawful use? authorization of the maker of a database made available to the public in whatever manner, extract or re-utilize a substantial part of its contents for the following purposes”: private use, teaching and research, public security (all see below).

Are contracts permitted to Most likely not (see above on extractions). Art 15 limit this freedom?

Are there exceptions for Yes, Art 26 (2) a: extraction for private use in Art 9(1)(a) private use? the case of a nonelectronic database;

Are there exceptions for Yes, Art 26 (2) b: extraction for the purposes Art 9(1)(b) teaching? of illustration for teaching or for scientific research to the extent justified by the non- commercial purpose to be achieved provided the source is indicated;

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Are there exceptions for Yes, Art 26 (2) c: extraction or re-utilization Art 9(1)(c) public security/admin/judicial for the purposes of public security or an procedure?? administrative or judicial procedure.

How long does the sui Art 27 transposes all three provisions of the Art 10 generis right last? Directive (Art 10 (1) – (3)) into national law.

Is unfair competition law No. available?

Examples of notable case law:

Yellow Pages (Malta) Ltd. v. Malta Directories Ltd. (Citazzjoni Numru. 552/2005, 17 June 2015)

The cited case concerned the extraction and reproduction of a substantial part of a telephone directory put together by Yellow Pages Ltd. Through the use of so-called “spikes” (fake contact numbers deliberately inserted in the original directory in order to identify unauthorised copies), Yellow pages was able to prove that the directories circulated by Malta Directories Ltd. were indeed copies and not independent works. In this case, the court determined that a telephone directory constitutes an “intellectual creation” of its author, for all intents and purposes of A. 3(4) of the Copyright Act (Laws of Malta, Chap. 415), and this in line with similar pronouncements made in Maltese cases such as that of Yellow Pages (Malta) Limited vs Jurgen Neumann et (24 March 2011) and the CJEU decision in Football Dataco Ltd and Others v Yahoo! UK Ltd and Others and the various cases cited therein, such as the Fixtures Marketing cases (C- 46/02, C-338/02 u C-444/02)

Author: Tobias Dudenbostel

Review, additions and corrections: Antoine Camilleri

Source: WIPO Lex: http://www.wipo.int/wipolex/en/text.jsp?file_id=355524

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3.17 Portugal General comment from a well-known IP specialist (not the reviewer): The Directive saw late implementation: A Decree Law 122/2000 of July 2000 (hereafter the Decree Law).’ ‘Neither the legislation nor the case law has clarified what substantial investment is in Portugal– there has not been a case involving sui generis right’ ‘there is very little jurisprudence in connection to database protection. There are about 9 cases. Not a single case was about sui generis right.’ In the copyright cases, ‘The only two issues that have been analysed have been on 1) originality/creativity to see if one can benefit from the copyright protection and 2) the second on ownership in the context of an employment contract.

Directive Question Answer 96/9/EC

What law governs Decree-Law No. 122/2000, of 4 July, on the legal copyright? protection of databases

How is subject matter Whilst Article 1.1 (“ in any form” ) has not been Art 1(2) defined? transposed, the definition of a database in Article 1.2 Directive has been so into Article 1.2 of the Decree- Law, which rightly applies to both copyright and sui generis right.

Are recordings or an audio- The exclusion for recordings (recital 17) and CDs Rec 17 visual, cinematographic, (recital 19) have not been expressly transposed. This literary or musical work is not problematic since Portuguese law is to be excluded? construed consistently with the Directive.

How is originality of The threshold for copyright protection (“the author’ s Art 3 databases defined? own intellectual creation by reason of the selection or arrangement of the database’s contents”) has almost been properly transposed by Article 4.1 of the Decree-Law. Article 4.2 confirms that this is the sole criterion to be applied.

However, why the wording “author’s own” has been omitted may look at first sight unclear. This is a language issue. In Portuguese no other interpretation is possible, the creation must be of the author.

Was this changed to This is a new rule, there was no pre-existing law implement the directive? applicable to databases

Were pre-existing There was no pre-existing law applicable to Art 14(2) databases protected? until databases, so unless databases qualified for general when? copyright protection no legal protection was available.

Are there special rules on By virtue of Article 5.1 of the Decree-Law, as a rule Art 4 database ownership? the general provisions governing authorship and copyright ownership apply to databases.

Article 5.2 of the Decree-Law as to collective works reflects Article 19 of the Copyright Code. Article 5.3 of the Decree-Law as to works made under an employment contract or works made for hire creates a presumption in favour of the employer or commissioner as opposed to the employee, thereby differing from Article 14.2 of the Copyright Code.

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Article 5.4 of the Decree-Law vests the employee with a right to special remuneration and cross-refers to Article 14.4 of the Copyright Code.

What rights does copyright - Reproduction right Art 5 in a database confer? - Adaption right

- Distribution right

- Communication

How is exhaustion treated? Article 5 (c) has, to the relevant extent, been transposed by Article 7.2 of the Decree-Law. This roughly states that acts of legitimate disposal exhaust the right to distribute a database within the European Community but do not affect the subsistence of the right to lease the database. This wording is not expressly limited to the sale of copies of the database, whereas under the Directive it is only with respect to such material copies (as goods) that exhaustion occurs. The offer on-line of electronic copies of the database (as provisions of services) can arguably lead to exhaustion under Article 7.2 of the Portuguese Decree-Law, though not so under the Directive. This conflicts with recital 33 of the Directive which makes it clear that the question of exhaustion of the right of distribution does not arise in the case of on-line databases.

Are there exceptions for The lawful use exception enshrined in Article 6.1 has Art6(1) lawful use?? been implemented by Article 9.1 of the Decree-Law, which roughly states that a legitimate user may, without authorisation from the owner of the database and the owner of the computer program,

engage in any acts listed in Article 5 of the Decree- Law with a view to accessing the database and using it. The adjectives “ necessary” (in relation to the purposes – see item 3 of the Framework for Analysis) and “ normal” (in relation to use of the contents – see item 6) in Article 6.1 have not been transposed into the Decree-Law. As a result, the lawful exception is more easily available under the Portuguese Decree-Law than it is under the Directive.

The wording “without authorisation from the author of the database” seems to indicate that lawfulness extends beyond a license and may encompass either the absence of any act restricted by law or an exception to such a restricted act.

Are contracts permitted to Article 15 making the lawful use exception binding Art 15 limit this freedom? has been properly transposed by Article 9.2 of the Decree-Law.

Are there exceptions for Yes Art 6(2)(a) private use?

Are there exceptions for Yes, provided the source is identified. teaching? Art 6(2)(b

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Are there exceptions for Yes Art 6(2)(c) public security/admin/judicial procedure?

Are there exceptions for The general exceptions available for copyright also Art 6(2)(d) other uses? apply to databases. These may be found in Article 75 of the Copyright Code.

What law governs sui Decree-Law No. 122/2000, of 4 July, on the legal generis right? protection of databases what is the protection Article 7.1 has been properly transposed by Article Art 7 requirement? 12.1 of the Decree-Law.

Who is eligible? As regards natural persons, Article 11.1 has been Art 11 properly transposed by Article 3.1 of the Decree-Law.

As regards legal persons, Article 11.2 has almost been properly transposed by Article 3.2 of the Decree-Law. A small flaw relates to the fact that the effective and permanent link with one of the MS is meant to apply not only to the seat, but also to the central administration or the principal establishment.

Where Is extraction Extraction is used as a term. Article 7.2 (b) has been Art 7(2) defined? perfectly transposed by Article 12.2 (b) of the Decree-Law.

Where is re-utilization? re-Utilization is used as a term. Article 7.2 (b) has Art 7(2) been perfectly transposed by Article 12.2 (b) of the Decree-Law.

Is there a definition of No. Art 7(2) substantial part?

Is there a rule on repeated Article 7.2 (a) has been perfectly transposed by Art 7(5) extractions? Article 12.2 (a) of the Decree-Law.

How is exhaustion treated? The Community (EEA) exhaustion rule for copies Art 7(2)(b) enshrined in Article 7.2 (b), 2nd sentence has been incorrectly transposed by Article 12.3 of the Decree-

Law. This roughly states that the first sale of a copy of a database shall exhaust the right of distribution within the European Community. Just as for copyright (see above A.2.c.iii.2), the Portuguese exhaustion rule here applies not only to the first sale of a copy – as under Article 7.2 (b) of the Directive – but further to on-line distribution and other forms of transmission. This contravenes recital 43 of the Directive, which makes it clear that in the case of on- line transmission, the right to prohibit re-utilisation is not exhausted either as

regards the database or as regards a material copy of the database or of part thereof made by the addressee of the transmission with the consent of the rightsholder.

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Is the right assignable? Yes. Art 7(3)

Is there an exception for The lawful use exception to sui generis right Art 8(1) lawful use? enshrined in Article 8.1 has been broadly transposed by Article 14.1 of the Decree-Law. However, the latter has a wider scope than the former since it permits all acts necessary for the lawful use, including, but not limited to, the extraction and re- utilisation of insubstantial parts of the contents.

Are contracts permitted to No, since Article 15 making this exception binding Art 15 limit this freedom? has been properly transposed by Article 14.3 of the Decree-Law.

Are there exceptions for Yes Art 9(1)(a) private use?

Are there exceptions for Yes Art 9(1)(b) teaching?

Are there exceptions for Yes Art 9(1)(c) public security/admin/judicial procedure??

How long does the sui 15y, as Article 10.1 has been properly transposed by Art 10 generis right last? Article 16.1 of the Decree-Law; as has been Article 10.2 by Article 16.2 of the Decree-Law.

Is unfair competition law Yes, under the general rules provided for in the available? Industrial Property Code.

Author: Tobias Dudenbostel

Review: Daniel Reis

Source: NautaDutilh (2001), pp. 266ff.; WIPO-Lex

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3.18 Romania General comment: The Directive has been transposed into Romanian law by means of ‘Legea 8/1996 privind dreptul de autor si drepturile conexe.’ (Law on Copyright and Neighboring Rights No. 8 of March 14, 1996).

The Law repealed the former Communist law on copyright in the form of: Statutory Decree No. 321 of June 21, 1956, on Copyright.

The Law came into force 90 days after its publication in Monitorul Oficial (Art 154(1)).

Unlike other countries, such as Greece, Romanian legislators decided not to keep two separate regimes for collections and databases as collections are being considered databases.

Being a civil law country, the courts in Romania simply applied the law to the cases, without providing caselaw breakthroughs.

Question Answer Directive 96/9/EC

What law governs Law on Copyright and Most of the piece copyright? Neighbouring Rights of legislation in the amended version (No. 8 of 14 March 1996) complies with the as amended by Law No. directive. Article 285 of 23 of June 2004) 122 of the legislation was amended to implement the directive.

How is subject matter Art 122 (2): For the Art 1(2): a The Subject-Matter defined? purposes of the present collection of is almost copy- law, database means a independent pasted from the collection of works, data works, data or directive. The main or of other independent other materials difference between elements, protected or not arranged in a the 2 articles is by copyright or systematic or that the Romanian neighbouring right, methodical way legislators refer to arranged systematically or and individually databases as methodically and accessible by collection of works individually accessible by electronic or which are electronic means or in any other means. protected or not other way. by copyright.

Are recordings or an audio- They are not specifically Rec 17 Recital 17 visual, cinematographic, excluded. therefore has not literary or musical work been transposed excluded? into national legislation. This is similar to the legislation in the UK, Portugal or Ireland.

How is originality of Art. 8. — Without Art 3 Yes, almost databases defined? prejudice to the rights of identical wording. the authors of the original 1. In The originality work, copyright shall accordance requirement for likewise subsist in derived with this databases is works created on the Directive, presented through basis of one or more pre- databases the ‘reason of the existing works, namely: which, by selection or reason of the arrangement of

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(a) translations, selection or their subject adaptations, annotations, arrangement of matter constitute documentary works, their contents, intellectual arrangements of music constitute the creations.’ The and any other author's own Romanian law transformation of a intellectual transposed the literary, artistic or creation shall directive words scientific work that be protected as including the themselves entail creative such by intellectual intellectual work; copyright. No creation other criteria requirement. The (b) collections of literary, shall be applied Romanian High artistic or scientific works, to determine Court emphasized such as encyclopaedias, their eligibility on the case C- anthologies and for that 604/10 Football collections and protection. Dataco compilations of protected (1/03/2012) to or unprotected material or show the data, including databases, importance of the which, by reason of the ‘selection or selection or arrangement arrangement of of their subject matter the data which it constitute intellectual contains amounts creations. to an original expression of the creative freedom of its author.’ The Supreme Court (Inalta Curte de Casatie si Justitie) also stated that when deciding upon the originality of a database, a court should not consider the amount of work or knowledge put into it, but the creative freedom of the author (955/2014 25.03.2014).

Was this changed to This was changed to implement the directive? modernise Romanian copyright law. The Act repealed the Statutory Decree No. 321 of June 21, 1956, on Copyright. In the elaboration of the legislation, the legislators tried to implement the Database Directive as well. They failed at first to include sui generis rights and this was implemented through a 2004 amendment.

Were pre-existing Art. 149. – (1) Legal acts Art 14(2) The legislation databases protected? until concluded under the does not former legislation shall specifically pre-

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when? produce all their effects existing databases, according to that but it mentions legislation, with the that all the works exception of clauses that protected under provide for the transfer of the previous the utilization rights in legislation shall any future works that the enjoy protection author might yet create. under the new one. (2) Works created prior to the entering into force of this Law, including the computer programs, performances, sound or audio-visual recordings, as well as the programs of television and radio broadcasting organizations, shall also enjoy protection under it, subject to conditions provided for in paragraph (1).

Are there special rules on Art 4 The The Romanian database ownership? author of a legislation database shall complies with the be the natural directive, but it person or does not mention group of more than one natural persons author for the who created creation of a the base or, database. where the legislation of the Member States so permits, the legal person designated as the rightsholder by that legislation. 2. Where collective works are recognized by the legislation of a Member State, the economic rights shall be owned by the person holding the copyright. 3. In respect of a database created by a group of natural persons jointly, the exclusive rights shall be owned

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jointly.

What rights does copyright Art. 1222. — (1) The Art 5 In respect The legislation in a database confer? maker of a database has of the complies with the the exclusive economic expression of directive but lacks right to authorize and the database the precision and prohibit the extraction which is the clarity of the and/or re-utilization of the protectable by directive. entire or of a substantial copyright, the part of the database, author of a evaluated qualitatively or database shall quantitatively. have the exclusive right to carry out or to authorize: (a) temporary or permanent reproduction by any means and in any form, in whole or in part; (b) translation, adaptation, arrangement and any other alteration; (c) any form of distribution to the public of the database or of copies thereof. The first sale in the Community of a copy of the database by the rightsholder or with his consent shall exhaust the right to control resale of that copy within the Community; (d) any communication, display or performance to the public;(e) any reproduction, distribution, communication, display or performance to the public of the results of the acts referred to in (b).

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How is exhaustion treated?

Are there exceptions for Art. 1223. — (1) The Art6(1) 1. The Yes, a lawful user lawful use? maker of a database performance by can use the which is made available to the lawful user database for the public through of a database ‘lawful use.’ As whatever manner may not or of a copy before, the prevent a lawful user of thereof of any Romanian Act the database from of the acts leaves room for extracting or re-utilizing listed in Article interpretation. insubstantial parts of its 5 which is contents, for any purposes necessary for of the use whatsoever. the purposes of Where the lawful user is access to the authorized to extract or contents of the re-utilize only part of the databases and database, the provisions normal use of of the present paragraph the contents by shall apply to that part. the lawful user shall not require the authorization of the author of the database. Where the lawful user is authorized to use only part of the database, this provision shall apply only to that part.

Are contracts permitted to Not mentioned Art 15 Binding Chapter VII of the limit this freedom? nature of legislation deals Art. 39. — (1) The author certain with contracts for or the owner of the provisions Any copyrighted copyright may transfer contractual products. There is only his economic rights provision no article by contract to other contrary to specifying that the persons. Articles 6 (1) contracts cannot and 8 shall be infringe the null and void. author’s rights.

Are there exceptions for Art. 1223. 4) A lawful user Art 6(2)(a) Yes, almost private use? of a database which is Member States identical wording. made available to the shall have the public through whatever option of manner may, without the providing for authorization of its maker, limitations on extract or re-utilize a the rights set substantial part of its out in Article 5 contents: in the following cases: (a) in (a) in the case of the case of extraction for private reproduction purposes of the contents for private of a non-electronic purposes of a database non-electronic database;

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Are there exceptions for Art 122 3 (b) in the case teaching? of extraction for the Art 6(2) (b Yes, identical purposes of illustration for where there is wording. teaching or scientific use for the sole research, as long as the purpose of source is indicated and to illustration for the extent justified by the teaching or non-commercial purpose scientific to be achieved; research, as long as the source is indicated and to the extent justified by the non- commercial purpose to be achieved;

Are there exceptions for (c) in the case of Art 6(2)(c) Yes, different public extraction or re-utilization where there is wording used, but security/admin/judicial for the purposes of public use for the the article procedure? order and national safety purposes of complies with the or an administrative or public security directive. jurisdictional procedure of for the purposes of an administrative or judicial procedure;

Are there exceptions for No Art 6(2)(d) The legislation other uses? where other does not provide exceptions to for any other copyright which exceptions, but the are traditionally ones mentioned authorized above. under national law are involved, without prejudice to points (a), (b) and (c).

What law governs sui Law on Copyright and Although the Law generis right? Neighbouring Rights on Copyright and Neighbouring (No. 8 of 14 March 1996) Rights as amended by Law No. 285 of 23 of June 2004) (No. 8 of 14 March 1996) was enacted after the Database Directive, the Romanian legislators failed to implement the sui generis rights. This was however rectified with the amendments brought by Law No 285 of 23 of June

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2004. what is the protection Art. 1222. — (1) The Art 7 Yes, although requirement? maker of a database has different wording the exclusive economic was used, the right to authorize and Romanian prohibit the extraction legislators provide and/or re-utilization of the with the right for entire or of a substantial the maker of the part of the database, database evaluated qualitatively or protection, if quantitatively. he/she ‘qualitatively and (2) For the purposes of quantitatively the present law: substantial investment for the (a) extraction shall mean obtaining, the permanent or verification or temporary transfer of all presentation of the or a substantial part, contents of a evaluated qualitatively or database.’ quantitatively, 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 quantitative or qualitative apprised database by the distribution of copies, by renting, or other forms, including by making available to the public of the contents of the database so that anyone may access it in a place and time individually chosen by them. The first sale, on domestic market, of a copy of a database by the rightsholder of sui generis right or with his consent shall exhaust the right to control resale of that copy.

(3) Public sale of a database is not an act of extraction or re-utilization.

(4) The right provided for in paragraph (1) shall apply irrespective of eligibility of the contents of that database for protection by copyright or by other rights. Protection of databases under the right provided for in paragraph (1) shall be

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without prejudice to rights existing in respect of their contents.

(5) The repeated and systematic extraction or re-utilization of insubstantial parts of the contents of the database implying acts which conflict with a normal use of that database or which unreasonably prejudice the legitimate interests of the maker of the database shall not be permitted.

Who is eligible? Art 122 - 1 (4) the maker Art 11 The national of a database is the legislation goes a natural or legal person 1. The right bit further than the that has made a provided for in directive and qualitatively and Article 7 shall provides that quantitatively substantial apply to protection will be investment for the database offered not only to obtaining, verification or whose makers Romanian presentation of the or rightsholders nationals but also contents of a database are nationals of to nationals of a Member countries which Art. 146. — The following State or who agreed to provide benefit from the have their the same protection provided for by habitual protection to this law: residence in Romanian the territory of nationals. It is a) works whose authors the submitted that the are Romanian citizens, Community. article was created even if they have not yet in this form been disclosed to the because Romania public; was not part of the Community at the b) works whose authors time of its are natural or legal creation. persons having the residence or headquarters in Romania, even if they have not yet been disclosed to the public;

Art. 147. — Foreign citizens or juridical persons, owners of copyright or neighbouring rights shall enjoy the protection provided by international conventions, treaties and agreements to which Romania is party, failing which they shall enjoy treatment equal to that accorded to Romanian citizens, on condition that the latter, in turn, are granted similar (national) treatment in the

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concerned countries.

Where Is extraction Art 122 2 (2) (a) Art 7(2) Yes, almost defined? extraction shall mean the 'extraction' identical wording. permanent or temporary shall mean the transfer of all or a permanent or substantial part, evaluated temporary qualitatively or transfer of all quantitatively, of the or a substantial contents of a database to part of the another medium by any contents of a means or in any form; database to another medium by any means or in any form;

Where is re-utilization? Art 122 2 (2) (b) re- Art 7(2) 're- Yes, almost utilization shall mean any utilization' shall identical wording. form of making available mean any form to the public all or a of making substantial part of the available to the contents of a quantitative public all or a or qualitative apprised substantial part database by the of the contents distribution of copies, by of a database renting, or other forms, by the including by making distribution of available to the public of copies, by the contents of the renting, by on- database so that anyone line or other may access it in a place forms of and time individually transmission. chosen by them. The first The first sale of sale, on domestic market, a copy of a of a copy of a database by database within the rightsholder of sui the Community generis right or with his by the consent shall exhaust the rightsholder or right to control resale of with his that copy. consent shall exhaust the right to control resale of that copy within the Community;

Is there a definition of Art. 1222. — (1) The Art 7(2) No, but it is a rule substantial part? maker of a database has of assessing the exclusive economic substantial part right to authorize and ‘quantitatively or prohibit the extraction qualitatively’ and/or re-utilization of the entire or of a substantial part of the database, evaluated qualitatively or quantitatively.

Is there a rule on repeated (5) The repeated and Art 7(5) The Yes, it has almost extractions? systematic extraction or repeated and the same wording. re-utilization of systematic The only difference insubstantial parts of the extraction is the use of

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contents of the database and/or re- ‘normal use of the implying acts which utilization of database’ in the conflict with a normal use insubstantial national of that database or which parts of the legislation, while unreasonably prejudice contents of the the directive the legitimate interests of database mentions ‘normal the maker of the database implying acts exploitation.’ shall not be permitted. which conflict with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database shall not be permitted.

How is exhaustion treated? Art. 1223. — (1) The Art 7(2)(b) The maker of a database first sale of a which is made available to copy of a the public through database within whatever manner may not the Community prevent a lawful user of by the the database from rightsholder or extracting or re-utilizing with his insubstantial parts of its consent shall contents, for any purposes exhaust the of the use whatsoever. right to control Where the lawful user is resale of that authorized to extract or copy within the re-utilize only part of the Community; database, the provisions of the present paragraph shall apply to that part.

Is the right assignable? Art. 39. — (1) The author Art 7(3) The The national law or the owner of the right referred specifies that the copyright may transfer to in paragraph right can be only his economic rights 1 may be transferred only by contract to other transferred, through a persons. assigned or contract. This is granted under applicable to all contractual types of works. licence.

Is there an exception for Art. 1223. — (1) The Art 8(1) 1. The Yes, it has lawful use? maker of a database maker of a identical wording. which is made available to database which the public through is made whatever manner may not available to the prevent a lawful user of public in the database from whatever extracting or re-utilizing manner may insubstantial parts of its not prevent a contents, for any purposes lawful user of of the use whatsoever. the database Where the lawful user is from extracting authorized to extract or and/or re- re-utilize only part of the utilizing

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database, the provisions insubstantial of the present paragraph parts of its shall apply to that part. contents, evaluated qualitatively and/or quantitatively, for any purposes whatsoever. Where the lawful user is authorized to extract and/or re-utilize only part of the database, this paragraph shall apply only to that part.

Are contracts permitted to Chapter Vii refers to Art 15 Any limit this freedom? contracts, but it does not contractual specifically deal with provision databases. contrary to Articles 6 (1) and 8 shall be null and void.

Are there exceptions for Art 122 3 (4) (a) in the Art 9(1)(a) Yes, identical private use? case of extraction for Member States wording. private purposes of the may stipulate contents of a non- that lawful electronic database; users of a database which is made available to the public in whatever manner may, without the authorization of its maker, extract or re- utilize a substantial part of its contents: (a) in the case of extraction for private purposes of the contents of a non-electronic database;

Are there exceptions for (b) in the case of Art 9(1)(b) in Yes, identical teaching? extraction for the the case of wording. purposes of illustration for extraction for teaching or scientific the purposes of research, as long as the illustration for source is indicated and to teaching or the extent justified by the scientific non-commercial purpose research, as

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to be achieved; long as the source is indicated and to the extent justified by the non- commercial purpose to be achieved;

Are there exceptions for (c) in the case of Art 9(1)(c) in Yes, identical public extraction or re-utilization the case of wording. security/admin/judicial for the purposes of public extraction procedure?? order and national safety and/or re- or an administrative or utilization for jurisdictional procedure. the purposes of public security or an administrative or judicial procedure.

How long does the sui Art. 1224. — (1) The Art 10 The sui generis generis right last? rights of the maker of right lasts for 15 database shall run from 1. The right years ‘from the the date of completion of provided for in first of January of the making of the Article 7 shall the year following database. The term of run from the the date of protection is fifteen years date of completion of from the first of January completion of database.’ Same of the year following the the making of wording as the date of completion of the the database. directive. database. It shall expire fifteen years from the first of January of the year following the date of completion.

Is unfair competition law Unfair competition is not available? mentioned in the legislation.

Author: Popa Razvan

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3.19 Slovakia Legal protection of databases as well as sui generis right to databases was firstly enacted in the Slovak legal system by Law No. 234/2000 of Slovak Digesta, effective since August 1st 2000, this legal Act was amending the Copyright Act effective at that time - Copyright Act No. 383/1997 of the Slovak Digesta.

Slovakia is EU member state since May 1, 2004. Nevertheless, the Directive was explicitly transposed by the Copyright Act No. 618/2003 of the Slovak Digesta effective already since January 1, 2004. Rights to databases were contained in sections 5 and 7 (copyright) and sui generis right was implemented in ss. 72-77 of the Copyright Act mentioned.

This means of transposition was replaced approx. one year ago by the completely new Copyright Act No. 185/2015 of the Slovak Digesta, effective since January 1, 2016. Database protection (copyright) is stipulated in sections 1, 2 and 131-134 and sui generis right to databases in ss. 135- 140 of the new Slovak Copyright Act. General clause with legal definition of databases is enacted in s. 130 of the Copyright Act quoted.

Question Answer Directive 96/9/EC

What law governs copyright? Copyright Act No. 185/2015 of Slovak Digesta

How is subject matter s. 130 Art 1(2) fully transposed - defined? also exclusion of subsection (further as ss.) (1) computer programs Database is a collection of is correctly mutually independent works, implemented. data or other mutually independent materials systematically or methodically arranged and individually accessible by electronic or other means, regardless of the form of its expression.

ss. (3) A computer program used to make or operate a database accessible by electronic means is not considered to be a database.

Are recordings or an audio- not expressly excluded Rec 17 not implemented visual, cinematographic, literary or musical work excluded?

How is originality of s. 131 - Copyright and the Art 3 implemented databases defined? Database

(1) If the method of selection or arrangement of the contents of the database is the result of the creative intellectual activity of the author, the second part of this Copyright Act shall be applicable to such database and its author, unless otherwise provided in Sections 132 to 140; The database is mainly an

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almanac, a newspaper, magazine, encyclopaedia, anthology, performance chain or an exhibition.

Was this changed to Originally the same wording implement the directive? as the Directive in the Copyright Act No. 383/1997 of the Slovak Digesta. But the Copyright Act No. 618/2003 as well as now effective Copyright Act 185/2015 added to the wording of the Directive also exemplary list of such databases that was deemed to be a so called "collection of works" such as an almanac, a newspaper, magazine, encyclopaedia, anthology, performance chain or exhibition.

Were pre-existing databases Were protected; those Art 14(2) protected? until when? databases that could be qualified as a collection of works of art - e.g. almanac, newspaper. etc. Term of protection according to the copyright. This stipulation was in our legal system, slightly modified, moved from one Copyright Act to another - former enacted as "collection of works of art" and holder of copyright - person who arranged it. The Copyright Act of 1997 did not enact as the prerequisite the author's own intellectual creation; but the later implementation tool (618/2003) effective since January 1, 2004 did enact creative attribute for these collective works. Until January 1, 2016, there were two regimes of copyright protection enacted - those to the "collection of works of art", i. e. collective works with creative input in their arrangement and the second in the copyrightable databases held just for a subcategory of a collective works. Nowadays, Legal Act No. 185/2015 of the Slovak Digesta clears the situation and defines these works explicitly just as databases with copyright (s. 131). They are protected during the life of their author, who arranged

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it as the result of his own intellectual creation and 70 years after his death. Collection of works of art (collective works) as a legal definition do not exist in the Slovak Legal Ordre any more.

Are there special rules on Regarding authorship of the Art 4 Implemented. database ownership? database with copyright - s. Collective works not 131 - just natural person. recognized any more since January 1, 2016.

What rights does copyright in s. 133 Art 5 not implemented as a database confer? such The author of the database has the right to use his / her - database database and the right to processing might by grant consent to the use of the legal the database. interpretation in connection with s. 8 (3) of the Copyright Act By using a database under include translation, adaptation and other the consent of the author of alterations the database according to paragraph 1 shall be - distribution to the understood public restricted to a) three forms to carry out a reproduction of - communication to a database (when interpreted the public also in connection with s. 21 restricted! reproduction shall be Art 5 (e) - not understood as any expressly reproduction - temporary or implemented. permanent, by any means (material, digital or others) of Just by the work as whole or of its interpretation - The part, result of a translated, altered b) work is regarded to be a completely new database processing, work - with rights of c) a new author, but rights of the author distribution to the public of of the original work the database itself or of the remain in force. (s. reproduction thereof by: 8 of the Copyright Act). 1.sale,

2.rental or

3. borrowing.

d)

technical presentation of the database,

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e)

communication to the public; does not include broadcasting and cable retransmission.

How is exhaustion treated? s. 22 ss. 2- applicable from implemented the copyright in general:

The author's right to authorize the public distribution of the original of a work or the reproduction thereof shall expire for the territory of a Member State or a Contracting State by the first authorized sale of the original or the reproduction thereof in the territory of a Member State or a Contracting State; thus, for the original work or the reproduction thereof, which was the subject of this first authorized sale.

Are there exceptions for Yes - s. 134 applies exception Art6(1) implemented lawful use? for the lawful user of a database or a copy thereof but not implemented for the purposes of access to the last sentence - the contents of the database regarding the lawful or for the purposes of the use of only the part normal use of the contents by of the database the lawful user.

There are other exceptions traditional for our copyright, but the limitation regarding the case of reproduction for private purposes (s. 42) shall touch just non-electronic databases. sections 34-57 of the Copyright Act

Are contracts permitted to not permitted, but also not Art 15 not expressly limit this freedom? explicitly prohibited implemented

Are there exceptions for yes - s. 42 + s. 134 but Art implemented private use? limited just to non-electronic 6(2)(a) databases, no direct or indirect commercial purpose

Are there exceptions for Yes - s. 44- use without the Art 6(2) implemented teaching? consent of the author - (b) reproduction, public performance or communication to the public for the sole purpose of illustration for teaching or scientific research if such a

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use does not result in direct or indirect commercial benefit.

Are there exceptions for Yes - s. 53 + additional for Art implemented public security/admin/judicial the purposes of criminal 6(2)(c) procedure? proceedings + for the purposes of proceedings of the National Council of the Slovak Republic and its committees, the municipal councils or the council of the higher territorial unit.

Are there exceptions for other yes - s. 37 - quotations Art implemented in uses? 6(2)(d) accordance with test s. 38 cartoon, parody, of pastiche

s. 39 information purposes

s. 40 record of broadcasting (temporary, for broadcaster's own purposes)

s. 41 reproduction of database displayed on the public space

s. 43 purposes of reprography

s. 45 school performances

s. 46 use for purposes of disabled people

s. 47 use in the church and civil ceremonies

s. 48 use via technical equipment in museum, archive, school, library for the purposes of end user in this institution

s. 49 archives

s. 50 public exposure of the work - by entity who regularly does such an activity and has bought the original of the work or has other right of use to the work (database)

s. 51 use of orphan work

s. 52 use of the work of architecture

s. 54 - temporary reproduction in the

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technological procedure

s. 55 use by coincidence - work by coincidence part of other work, cannot be extracted

s. 56 for maintenance purposes of the technological device

s. 57 for the purposes of the exhibition marketing/ auction marketing

What law governs sui generis Copyright Act No. 185/2015 right? of the Slovak Digesta - ss. 135-140 what is the protection s 135 (1) Database having a Art 7 implemented - requirement? qualitatively or quantitatively changed instead of substantial investment in qualitatively and/or quantitatively - just either obtaining, verifying or alternatives with presenting its content conjunction or used

Who is eligible? Regarding sui generis right to Art 11 not implemented the database - s. 135 - no limitation - maker of a - not linked to database is a person that nationals of EU or initiated and secured the residents of EU creation of a database. - extended by database maker international treaties (natural/legal person) - no Slovakia entered nationality clause - s. 2 of the into Copyright Act - this legal act applies to maker of such a database that was for the first time published/created in the territory of the Slovak Republic or from this territory. In case of reciprocity according to international treaties - this legal act also applies to maker of such a database that was published/created in the third country or from the third country, but used in the Slovak Republic, or used from the territory of the Slovak Republic.

Where Is extraction defined? s. 135 (3) Database Art 7(2) implemented extraction is the permanent or temporary creation of a database reproduction by transferring the entire contents of the database or the substantial part thereof to another medium by any

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means and in any form.

Where is re-utilization? s. 135 (4) Re-utilization of a Art 7(2) implemented database is any way of making the entire contents of - just not expressly the database or a substantial enacted online forms part thereof available to the of transmission public including distribution of its reproductions to the public by their sale and by renting.

Is there a definition of substantial part included in Art 7(2) implemented, not substantial part? definitions of extraction and defined in detail re-utilization what substantial part shall mean

Is there a rule on repeated Yes - s. 135 (5) - is Art 7(5) implemented extractions? prohibited

How is exhaustion treated? Analogy with rights of first Art implemented sale as in case of copyright to 7(2)(b) database - s. 22 subsections 2 of the Copyright Act:

when giving consent with making the copy of a database available to the public - exhausted by the first sale of this copy/reproduction.

Is the right assignable? yes - s. 137 rights of Art 7(3) implemented database maker are assignable

Is there an exception for yes - s. 138 subsections 3 Art 8(1) implemented lawful use? The sui generis right to the database is not infringed by the lawful user of the database making extraction or re-utilization, without consent of the database maker, of qualitatively or quantitatively insignificant parts thereof for any purposes.

Are contracts permitted to no - not allowed, but not Art 15 not expressly limit this freedom? expressly prohibited implemented

Are there exceptions for yes - s. 138 subsections 4 (a) Art implemented private use? - extraction of the contents 9(1)(a) of the database, that was already made available to the public, for private purposes, limitation applicable just to non-electronic databases

Are there exceptions for yes - s. 138 subsections 4 (b) Art implemented teaching? - extraction for the purposes 9(1)(b) of illustration for teaching or

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scientific research, if no direct or indirect commercial advantage shall be achieved and the indication of the database used, and source thereof shall be given.

Are there exceptions for yes - s. 138 ss 4 (c) - Art implemented and public security/admin/judicial extraction and re-utilization 9(1)(c) more detailed + procedure?? of the necessary extent for criminal proceedings the purposes of: and proceedings of political councils and 1) public security committees.

2) administrative, criminal or judicial proceedings

3) the proceedings of the National Council of the Slovak Republic and its committees, the municipal councils or the council of the higher territorial unit.

How long does the sui generis 15 years - s. 139 ss. 1 Art 10 implemented right last? The sui generis right of the however not defined database maker under by the beginning of section 135 subsection 1 the term of takes 15 years from the date protection but by the the database was created or date of its expiration from the date when made available to the public; Previous whichever was later. transposition tool- the Copyright Act s. 139 ss. 2 No. 618/2003 effective until The protection of the sui 31.12.2015 defined generis right of the database the term of maker under paragraph 1 protection for sui shall end on the last day of generis right exactly the calendar year in which as it is defined in the the term of protection Directive. referred to in paragraph 1 When recasting expires. Copyright legislation, the Slovak legislator's aim was to avoid any inconsistencies and misunderstandings when the term expires. The result - the duration of protection- is unchanged, just defined by its expiration date.

Is unfair competition law Yes, it is. Civil law recasting - available? preparatory works Enacted in the Commercial are ongoing in the

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Code. legislative as well as the academic circles sections 44 - 55 of the - unfair competition Commercial Code, Legal Act will probably no No. 513/1991 of the Slovak longer be contained Digesta - general clause of in Commercial Code unfair competition as a safe but will either form a harbour clause as well as part of the new Civil specific clauses of unfair Code or be enacted competition behaviour - in the solo Legal Act applicable also to databases on Protection against Unfair Competition.

Notable case law:

Supreme Court of the Slovak Republic - 3Sžf/78/2007 - decision of June 5th, 2008

The Panel of judges: JUDr. Ivan Rumana, JUDr. Ida Hanzelova and JUDr. Jana Zemkova, PhD.

Decision after the first transposition act - Copyright Act No. 618/2003 of the Slovak Digesta, effective since January 1, 2004

The only case that gave rise to a decision by the Supreme Court of the Slovak Republic since the entry into force of the transposition of the Directive into Slovak Law, concerns tax effects of IP subjects, actually their effects on income tax. According to the Legal Act No. 595/2003 of the Slovak Digesta on income tax; costs that are not related to taxable income and among others also costs for acquisition of intangible assets belong to this group, shall not be deemed as tax expenses for the purposes of income tax and thus cannot be used for optimizing the tax base. According to the legal act quoted, mainly subjects of intellectual property shall be deemed as intangible assets.

The claimant to the case however assessed his costs for processing of photographs as tax- deductible expenses; moreover, these expenses were categorized on the invoice as the expenses for the purposes of photo archive. The defendant to the case was the Tax and Revenue Office of the Slovak Republic, that did detect the plaintiff's tax arrears, because the expense was not tax- deductible according to tax law with the expense having been paid for the acquisition of a database that also belongs to the subjects of IP law, i. e. to intangible assets.

The Supreme Court decided this case as the court of appeal and did confirm the decision of the court of first instance in the administrative court proceedings - the decision of the Regional Court in Bratislava of May 17, 2007, file No. 1S/379/2006-66. The Supreme Court referred to the legal definition of a database as a collection of mutually independent works, systematically or methodically arranged and individually accessible by electronic or other means (s. 5 ss. 4 of the Copyright Act No. 618/2003 of the Slovak Digesta) and stated that also the set of photographic works (photographs), the authorship of which belongs to the claimant, and whose processing - retouching and scanning in the number of 2000 photos, the claimant ordered to have processed for archival purposes on a DVD media, shall be in this case deemed as a collection of independent works i. e. as a database.

Author: Sona Surmova

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3.20 Slovenia Directive Question Answer 96/9/EC

What law governs COPYRIGHT AND RELATED RIGHTS ACT of 30 - copyright? March 1995 (Official Gazette RS, no. 16/07 with changes and amendments)126 (the "Act")

How is subject matter Art 8 (3) states that “Databases as mentioned Art 1(2) defined? in paragraph 1 are collections of independent works, data or other materials in any form, arranged in a systematic or methodical way and individually accessible by electronic or other means.”

Are recordings or an audio- The Act does not specify whether recordings or Rec 17 visual, cinematographic, audiovisual, cinematographic, literary or literary or musical work musical works are excluded or not. excluded?

How is originality of Pursuant to Art 8 (1), databases shall be Art 3 databases defined? independent copyright works if they are deemed to be intellectual creations by virtue of selection, coordination or arrangements of their content.

Was this changed to Originality of databases as specified in Art 8 - implement the directive? (1) has been defined before the implementation of the Directive.

Were pre-existing Art 191 states: “Provisions of this Act Art 14(2) databases protected? until concerning computer programs and databases when? shall apply to computer programs and databases created before the date on which this Act becomes effective, unless such application shall be prejudicial to contracts entered into or rights vested to that date.”

Are there special rules on It seems Authorship is only possible for Art 4 database ownership? natural persons (see Art 10: “An author is a natural person who created the work”). Co- authorship is possible.

What rights does copyright - Right of reproduction (Art 23) Art 5 in a database confer? - Right of distribution (Art 24) - Right of transformation (adaption/alteration) (Art 33) - Right of making available to the public (Among others Art 17, 32a)

In general, an author has (i) moral rights (right to first disclosure; right to recognition of authorship; right to integrity of the work); (ii) economic rights (right of reproduction; right of distribution; right of public performance; right of public transmission; right of broadcasting;

126 Zakon o avtorski in sorodnih pravicah (Ofifical Gazette RS, no. 16/07 – official consolidated version, 68/08, 110/13, 56/15 and 63/16 – ZKUASP).

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right of transformation etc.); and (iii) other rights (right of access and of delivery of the original or copy of his work under certain conditions; public lending right where it is explicitly stated that lending of originals or copies of databases to the public is an exclusive right of the author; right to remuneration for making a sound or visual records, and for photocopying of his work). How is exhaustion treated? Art 43 (exhaustion of the right of distribution) Art 5 (c) states: "The right of distribution shall be exhausted within the European Union in respect of the original or copies of the work with the first sale or other transfer of ownership in the European Union of that object by the author or with his consent."

Are there exceptions for Yes. Art 53a (1) states: “A lawful user of a Art6(1) lawful use? disclosed database or of a copy thereof may freely reproduce or alter that database, if this is necessary for the purposes of access to its contents and the normal use of those contents. Where the user is authorized only to a part of the database, this provision

shall apply only to that part."

Are contracts permitted to Pursuant to Art 53a (2): no. Any contractual Art 15 limit this freedom? provision contrary to the Art 53a (1) above, is null and void.

Are there exceptions for Yes, “if made in no more than three copies and Art 6(2)(a) private use? provided that the conditions of paragraphs 2 or 3 are fulfilled.” Nevertheless, reproduction is not permitted with respect to electronic databases, unless otherwise provided by the Act or contract. (see Art 50).

Are there exceptions for Yes (see Art 49). teaching? Art 6(2)(b)

Are there exceptions for Yes (see Art 56). Art 6(2)(c) public security/admin/judicial procedure?

Are there exceptions for Free use is regulated under Subsection 2, Art 6(2)(d) other uses? Section 4 of the Act, where besides three exceptions described above, free use is also possible with respect to (provided that certain conditions are fulfilled) people with a disability; temporary reproduction; communication to the public on the screen; free reproduction and making available to the public orphan work; quotations; etc.

What law governs sui Chapter 5, Section VI of the Act - generis right? Rights of makers of databases (Art 141a – 141g)

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What is the protection Acc. to Art 141a (1), “a database shall mean a Art 7 requirement? collection of independent works, data or other materials in any form, arranged in a systematic or methodical way and individually accessible by electronic or other means, whereby either the obtaining, verification or presentation of its contents demands a qualitatively or quantitatively substantial investment.”

Protection applies to (i) the whole content of a database; (ii) every qualitatively or quantitatively substantial part of the database content; (iii) qualitatively or quantitatively insubstantial part of the database content, when they are used repeatedly and systematically, which conflicts with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database. (Art 141b)

Who is eligible? General provision of Art 176 states: "The Art 11 provisions of this Act shall protect the authors and holders of related rights who are citizens of the Republic of Slovenia or a European Union Member State or have their residence or seat in the Republic of Slovenia." Other foreign natural persons or legal entities enjoy the same protection in case this is provided in an international convention or in the Act or in the case of the factual reciprocity.

Where Is extraction It is not. The law uses traditional copyright Art 7(2) defined? terms when stating that the maker of a database shall have the exclusive right to (i) reproduce his database, (ii) distribute copies of his database, (iii) rent copies of his database, (iv) make available to the public his database and (v) other forms of communication to the public of his database (see Art 141c.

Where is re-utilization? It is not (see above). Art 7(2)

Is there a definition of No Art 7(2) substantial part?

Is there a rule on repeated The Act in Art 141b (3) establishes protection Art 7(5) extractions? of the qualitatively or quantitatively insubstantial part of the database content, when they are used repeatedly and systematically, which conflicts with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database. Moreover, Art 141d (2) states "a lawful user of a disclosed database or a copy thereof may not perform acts which conflict with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker

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of the database".

How is exhaustion treated? Under Chapter 5, Section VI of the Act the Art 7(2)(b) exhaustion is not defined.

Is the right assignable? Under Chapter 5, Section VI of the Act the Art 7(3) assignability of the right is not defined.

Is there an exception for Yes, three (pursuant to Art 141d): Art 8(1) lawful use? (1) A lawful user of a disclosed database or a copy thereof shall free to use qualitatively or quantitatively insubstantial parts of its contents for any purposes whatsoever. Where the user is authorized to use only a part of the database, this Article shall apply only to that part.

(2) A lawful user of a disclosed database or a copy thereof may not perform acts which conflict with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database.

(3) A lawful user of a disclosed database or a copy thereof may not cause prejudice to the copyright or related rights in respect of the works or subject matter contained in that database.

Are contracts permitted to No, since Art 141d (4) states “Any contractual Art 15 limit this freedom? provision contrary to this Article shall be null and void.”

Are there exceptions for Yes, see Article 141g. Art 9(1)(a) private use?

Are there exceptions for Yes, See Article 141g. Art 9(1)(b) teaching?

Are there exceptions for Yes, see Article 141g. Art 9(1)(c) public security/admin/judicial procedure??

How long does the sui Article 141f states: Art 10 generis right last? “(1) The rights of a maker of databases shall last for 15 years after the completion of the making of the database. If the database is lawfully disclosed within this period, the rights shall last 15 years from such first disclosure.

(2) Any qualitatively or quantitatively substantial change to the contents of a database, which results in a qualitatively or quantitatively substantial new investment,

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shall qualify the database resulting from that investment for a new term of protection. A substantial change of contents includes also the accumulation of successive additions, deletions or alterations of the database.”

Is unfair competition law Yes. The institute of unfair competition is - available? regulated by the Prevention of Restriction of Competition Act (ZPOmK-1).

Author: Tobias Dudenbostel

Review: Ursa Kranjc & Crnilec Matej

Original source: Unofficial translation of the Copyright Act as published by the Slovenian IPO: http://www.uil-sipo.si/sipo/addition/resources/legislation/legislation-slovenia/.

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4 Legal grids of non-EU countries

4.1 Korea Can you give examples of key landmark decisions in your country that relate to IP protection of databases, and why these cases have had significance?

 Case No. 2003Kahap1713 (Seoul District Court, Aug. 19, 2003)

The Digital-Contents Act offers the alternative to sui generis rights for data in digital form. The Court referred to this Act for this case, where the operator of the site www.wizwid.com , providing goods-delivery and sales-agency services, sued the operator of the site http://www.saywiz.com. The latter one provided similar services and copied the content from the plaintiff. According to the Seoul District Court, a preliminary injunction was issued banning this unauthorized copying of the online contents.

 Rigvedawiki v. Enhawiki Mirror (official reference is Seoul High Court 2015Na2074198 rendered on December 15, 2016; approved by the Supreme Court 2017Da204315).

The owner of the site used user generated content to put it in its encyclopedia. The defendant copied most of the encyclopedia. The first sentence court held that the database maker hadn’t written anything and therefore could not benefit from the sui generis right. The Court of appeal reversed because the web site invested significantly in maintaining the web site including technical support.

 Job Korea v. Saramin case (official reference is Seoul High Court 2016Na2019365 rendered on April 6, 2017; approved by the Supreme Court 2017Da224395).

The claimant is an online recruitment web site posting job ads. The defendant crawled all the information of the claimant’s web site and posted it on its own website. The defendant was a competitor which had scarce resources and wanted to follow the leader. The Court of appeal agreed that the claimant’s sui generis right was infringed, and the Supreme court upheld the decision.

There is currently a legal dispute concerning a price comparison site for hotels.

What are the means by which databases can be protected in your country? Please make a distinction particularly between protection provided by copyright, sui generis rights and other means?

Databases in South Korea are protected by the sui generis regime (Law 2003/04), the copyright regime and the Digital-Contents Act. In cases, where all the three regimes may apply, precedence is given to the Copyright Act, including

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the sui generis right, followed by the Digital-Contents Act.127 The Digital - Contents Act was created to provide incentives to producers and the developers and introduces a regime, where the digital content should bear a notice as an embodiment with the date of production, the name of the producer, and the terms and conditions of use of the contents.128 However, the Digital contents act is now a dead letter as people no longer rely on it. The act was there to fill the gap of not having a sui generis right and now that the sui generis right exists, it filled this gap, making the Digital content cat redundant.

The sui generis right is similar to the EU sui generis right. It is placed in the copyright act in a chapter following the chapter on neighbouring rights. It is not an unfair competition action. There was no industry pressure to adopt the sui generis right but rather governmental pressure via a government agency dedicated to the promotion of the database industry.

How can databases be protected in your jurisdiction?

How is ownership defined?

As owner of the database is considered the author unless it has been conducted within a work for hire. Regarding the sui generis right, the owner is the maker or producer which is defined as the person who has substantially invested in the verification, renewal or addition to the contents of the database. There is a provision similar to art 11. of the database directive. Thus, foreign databases are not protected by the Korean sui generis right if there is no equivalent right in their country, but foreign databases would benefit from unfair competition law.

What are the pre-conditions to obtain protection?

Copyright: The pre-conditions are that the work must be original, with a creative nature and fixed in a tangible medium of expression. For databases, originality means creativity in the selection or arrangement of data. The registration is not a pre-condition, nevertheless in case that the owner registered the copyright, he maintains a higher degree of certainty regarding the ownership and the term of protection.129 A voluntary registration system applies to copyright works in databases. The benefits are to give a presumption of authorship and creation date. There are about 10,000 registrations per year overall but not so many for databases. As part of the registration system, there is an obligation to deposit a copy of the work.

Sui generis: The substantial investment on human capital or on financial resources to produce the database.130 It can include creating data (though it is unclear).

127 Digital-Contents Act, Art. 21. 128 Jay Yang and CH Shin in Lionel Bently (ed), International Copyright Law and Practice (Lexis Nexis, 2017, forthcoming). 129 DLA Piper, IP rights in data handbook, September 2014, p. 73. 130 CA, Art 2.

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What is the scope of the protection?

The databases with a complex structure are more likely to be covered in comparison to basic structure, automatically generated.131 The owner of the copyright or sui generis right may prevent unauthorized use of the database, i.e. reproducing, distributing, broadcasting, and transmitting of the whole database or substantial part.132 There is a similar provision for insubstantial parts then in the EU i.e. taking insubstantial parts is not an infringement but repeated and systematic use reconstituting a substantial part is an infringement. There has been no infringement action against former employees.

What is the (maximum) term of protection?

The maximum term of protection foreseen in the Copyright Act for the sui generis right is a period of five (5) years from the year when the database is produced; nevertheless, where a considerable amount of investment is made for the renewal of a database, the sui generis right in the database continues for another five (5) years from the year of such renewal.133 So protection like in the EU can be perpetual. For Copyright, the protection lasts 70 years after the authors’ death.

Any other important features for the protection of databases worth mentioning

Specifically, how do these possibilities provide for protection in the case of extraction and re-utilisation of data and databases?

See above

To what extent are there exceptions to the possibilities to protect databases (e.g., fair use, etc.)?

There is a general fair use exception in the Korean copyright act which applies, along with all the other specific exceptions, to the sui generis right (this includes art 30 private copying) except: art 24 (critical speech), 25 (school purposes), 26 (news reporting) and 35 (reproduction or display of graphic design). There is no provision preventing contracting out of the exceptions in Korean law, but the courts would apply general principles to (most probably) prevent overriding the exceptions by contract.

To what extent are the notions of “databases”, “originality”, “substantial investment”, “maker”, “owner”, “substantial parts of databases” defined in your jurisdiction and in relation to database protection? What would be other key terms and their definition in relation to the possibilities to protect databases?

131 Ibid. 132 DLA Piper, IP rights in data handbook, September 2014, p. 74. 133 CA, Art. 95.

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As substantial investment is considered the investment either from a human capital or the financial one in the verification, renewal, or supplementing database contents.134

As original is defined “a database which is creative in nature in terms of selection, arrangement, or composition of its subject matters”.135

In your country, are database creators free to rely on the law of unfair competition to protect databases? Are there any problems with this as an alternative to the sui generis right (should the latter be abolished)? Could you give us some examples or indicate any court decisions?

Yes, it is possible to protect databases by unfair competition law and the two decisions from 2016 and 2017 mentioned above relied on unfair competition law. There is no need to prove (risk) of consumer confusion, only the misappropriation of the database maker’s profit.

Do database producers rely on contract law to protect the investment in their databases? Have there been any problems with the use of contracts? Are there any problems with this as an alternative to the sui generis right (should the latter be abolished)? Could you give us some examples or indicate any court decision?

Yes, one can protect its database via contract and of course privity of contract will apply.

Do database makers use technological protection measures (TPMs) to protect their databases and if so, do they encounter problems in doing so?

Yes, and the legal regime that protects TPMs applies to the sui generis right.

Have you encountered problems of the different ways to protect databases with the (national) open access policies regarding research activities? What is your opinion regarding the PSI (Public Sector Information) Directive? Could you give us some examples or indicate any court decision?

To what extent are the national means to protect databases fit for current and upcoming technological changes (bid data, unstructured data, sensor-created data, etc.)?

This is very new topic in Korea. It is not being talked about yet.

134 CA, Arts. 2(19), 2(20), and 93. 135 Law No. 11903; Amended 16 July 2013 (Copyright Act).

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How do you gauge the EU system of Database protection in comparison to your own legislation? What are advantages and disadvantages?

The sui generis right is still very new to courts in Korea. They would check foreign statutory and case laws even if they would not include references to them in their decisions.

Authors: Lionel Bently, Estelle Derclaye, Anna Gkogka

Interviews with two Korean IP experts

Sources: DLA Piper, IP rights in data handbook, September 2014, p. 74.

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4.2 Switzerland Can you give examples of key landmark decisions in your country that relate to IP protection of databases, and why these cases have had significance?

Case law refers primarily to unfair competition law invoked to protect databases, and only to an extent to copyright law. The following are key decisions:136

 Eurotax – Obergericht Kanton Zurich, 1992

The defendant in this case was a distributor for a computer programme for the car industry. The software used data that was manually extracted from commercially available lists of Eurotax AG. However, the ruling was that data compilation into lists is, even if this activity constitutes investment, effort and creates value, is not protected via copyright, as long as neither the arrangement nor the selection criteria meet the originality criterion. In addition, the plaintiff called on unfair competition law. However, it was also decided that manual input of data is not a technological procedure for reproduction as defined in Art. 5c UCA. It must be stressed that this case was not taken further to the high court.137

 Search Spider, 2013 (Bundesgericht BGW 131 III 384)

The defendant searched through real estate websites with its „search spider“ for indexing and obtaining advertisements for real estate. It subsequently placed the advertisements on its own homepage, where the respective ads were published. The court ruled that this was not unfair competition and reasoned as follows: Unfair behaviour is defined through the way the information is obtained and exploited. It is unfair if there is no own effort involved by the 2nd database-using party, neither for obtaining the information nor during exploitation. Furthermore, there must be a “market-ready” result, which is the case if – without further processing – the data obtained can be commercially exploited. Obtaining and exploiting must happen immediately consecutive. The court must therefore compare the appropriateness of the efforts of the defendant with the efforts and amortisation opportunities of the plaintiff. In assessing the level of efforts undertaken by the defendant, the court assessed: a) the efforts undertaken by the defendant in comparison to those of the plaintiff, b) the own efforts of the defendants vs. the hypothetical efforts of the plaintiff to achieve the same results than the defendant. The level of efforts of the defendant was assessed in terms of reproduction efforts as well as further development and variation possibilities. All in all, this assessment worked in favour of the defendant. While this ruling can be considered a “leading case”, a number of questions remain as the most central questions were not concretely answered: a) comparison of the efforts of plaintiff vs. defendant, b) the question of amortisation opportunities of the plaintiff in the context of providing a market-ready result, given that there is constant need to update and invest to maintain the website by the plaintiff, or c)

136 Bühlmann, L. (2013): Skimming, Scraping, Scratching – Verwertung fremder Datenbanken im Schweizer Recht. 137 Meitinger et al. (2004): Database protection at national level – Switzerland, AIPPI Study Committee Q182

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impairment of server performance through additional server load because of the unspecific “spider” activities (which would actually also call for a discussion on “property intrusion”).

 “Arzneimittel-Kompendium”, 2008 (engl: compendium of pharmaceutical medications) (BGW 131 III 384)

The defendant operated a database accessible on the internet with information on pharmaceutical drugs. This information was partly obtained from the “Compendium of Pharmaceutical Medications” published by the plaintiff. The plaintiff sued for copyright infringement and unfair competition. The ruling was on all counts in favour of the defendant. The reasoning was as follows: Art. 5c UCA is not meant to be a new form of Intellectual Property. It does not protect against imitation. It qualifies only a certain behaviour as “unfair”, whereby the respectively defining criteria have to be interpreted very narrowly. Most importantly, it was ruled that the plaintiff is not protected through Art. 5c UCA if the competitor obtains the information only after the plaintiff has recovered his/her investments for creating its service. This ruling therefore leads to the central finding that protection through unfair competition according to Art 5c UPC is limited in time, with protection ending when investments of the original database maker have been recovered.

 “Canal +”, 2012 (Bundesgericht BGE 139IV 17)

The defendant developed a system which allowed its subscribers, through technological means, to circumvent encryption of the pay-tv channel “Canal+” and to therefore freely receive this channel. In first instance, the defendant was found guilty for unfair competition as defined in Art. 5c UPC and sentenced with criminal sanctions. The high court denied unfair competition and lifted the verdict. The higher court reasoned that, in order for Art. 5c to be applied, the defendant must have obtained / taken over the service/data from the plaintiff. However, merely providing access to a foreign service – through the provision of technological measures for circumventing encryption – is not the same as “taking over” or “obtaining”. Therefore, Art. 5c cannot apply. This ruling re-iterates that that the UPC only protects fair competition, but not the product/service, which is the subject of the competition, in itself.

Overall, the case line underlines the principle of “freedom to imitate” as a very important concept in Swiss unfair competition law. Litigation risks for database makers can be therefore considered very high. In addition, the definition of concepts like “market-ready results” remains vague.

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What are the means by which databases can be protected in your country? Please make a distinction particularly between protection provided by copyright, sui generis rights and other means?

Overview

Switzerland does not have a law on databases or database protection.138 There is also no legal definition of “databases”, and – against this background – there is also no special protection in Swiss copyright law for databases. Nonetheless – as is also the case in other countries with no specific provisions for database protection – it is possible to obtain protection for certain characteristics of databases in different fields of law:139

 According to Art. 4 of the Swiss Federal Act on Copyright and Related Rights (Copyright Act, CopA140, of ), “…collections are protected as works in their own right insofar as they are intellectual creations with individual character with regard to their selection and arrangement.” Therefore, it is conceivable that databases, insofar as they can be considered to be collections of information, can be protected, if there is an original and individual character with regard to selection and arrangement of the information. There must be therefore an inner such structure within a collection / database, i.e. no arbitrary pulling-together of the data. This view was re-iterated in “Eurotax” case of 1992 (see section on case law).  Unfair competition law may, for limited instances, protect databases (see Swiss Unfair Competition Act (UCA, from 19 December 1986, amended 1 July 2016): o Art. 2 UCA prevents against imitation which is the result of deceptive business practice or of practice that in any other way infringes the principle of good faith.141 o More specifically, Art.5c protects against copying by means of technical reproduction processes.142 Art. 5c seems to be in practice one of the closest means one can get to actual database protection. However, it has severe limitations. We discuss the scope and conditions for protection under Art. 5c UCA in more detail below.  Virtual house rules (domiciliary rights): While theoretically possible, the application of house rules is neither a discussed nor litigation-proven approach for protecting databases. The approach would entail the possibility to lock-out users for not using a website in “normal” manner.  Terms of use / general terms of conditions: Here a problem is to clarify, whether an agreement has been actually reached consensually,

138 Bühlmann, L. (2013): Skimming, Scraping, Scratching – Verwertung fremder Datenbanken im Schweizer Recht. 139 Bühlmann, L. (2013): Skimming, Scraping, Scratching – Verwertung fremder Datenbanken im Schweizer Recht. 140 CopA of 9 October 1992 (Status as of 1 January 2017) 141 Art. 2 UCA reads: “Any behaviour or business practice that is deceptive or that in any other way infringes the principle of good faith and which affects the relationship between competitors or between suppliers and customers shall be deemed unfair and unlawful.” 142 Art. 5(c) UCA reads: “(Exploitation of the Achievements of Others)…shall be deemed to have committed an act of unfair competition, anyone who, in particular,… by means of technical reproduction processes and without a corresponding effort of his own, takes the marketable results of work of another person and exploits them as such.”

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particularly with respect to freely available/accessible databases. Therefore, the recommendation for such protection to work is to clearly define the mechanism of concluding a contract up-front and to communicate transparently that re-use / exploitation of the database is not allowed.  Property intrusion (“Besitzstörung”): As opposed to data, servers are subjected to the rules governing property intrusion as defined in Art. 928 ZGB. The “Such-Spider” case confirmed this view. However, interference trough scraping must be higher than a threshold (what can be reasonably accepted). The intrusion /disruption must be assessed case-by-case and respective proof must be provided.

Unfair competition law – Art. 5c UCA

In terms of litigation practice, it is in particular the unfair competition law that seems of some/most relevance. However, there is only limited case law even to this end.143 A landmark decision in this context was the “Such-Spider” (engl.: search-spider) case (see section on case law). Overall, the case law paints a picture in which the requirements to qualify for unfair competition are very narrowly defined, and the concept of “freedom to imitate” is held high. The actual requirements for protection of databases under Art. 5c are as follows:

 The data and database that is transferred from the maker is a “market- ready result”. This means that no protection is provided for mere ideas, methods and concepts; the data must not be freely accessible and generally known; the data can by itself / independently be exploited. For databases, a “market-ready result” is therefore also the database plus the raw data contained herein.  Data is obtained and transferred from the database maker in immediate manner. The data obtained is not changed. Merely providing access to data of the database maker – e.g., by providing a means to circumvent an encryption – is not unfair behaviour (“Canal +”-Case 2012, (Bundesgericht BGE 139IV 17))  Data must be transferred through a technological reproduction procedure. Manual input of data is not considered a technological reproduction procedure (Eurotax case 1992).  Exploitation follows the process of obtaining the data also in immediate consecutive manner.  All this is happening without adequate efforts of the party trying to transfer and use the database of the database maker. For the assessment of this criterion, two comparisons are made: a) the efforts of the original maker compared to that of the re-user (considering efforts for reproduction, further development and variation) and b) the efforts of the re-user with the hypothetical efforts of original database maker to achieve the same (“re-enactment”).  Protection is time-limited. Protection is only provided for the time where the investments of the database maker have not been yet recovered (“Arzneimittel-Kompendium” case, BGW 131 III 384).

143 Bühlmann, L. (2013): Skimming, Scraping, Scratching – Verwertung fremder Datenbanken im Schweizer Recht.

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How is ownership defined?

As there is no definition of databases, and within the remit of the extent to which databases can be considered original collections of data (see above), ownership is defined in copyright in the same way as for all copyrighted works. The initial copyright owner of a work is the author – a natural person who created the work. A commissioner will not automatically acquire ownership of the copyright created by an author, but copyrights are assignable. There is no “work for hire” regulation. Copyright therefore would rest with an employee, but the right can be assigned to the employer through contract.

What are the pre-conditions to obtain protection?

See above, section on overview.

What is the scope of the protection?

See above on the non-copyright means to protect databases. In terms of copyright, the general provisions for collections apply, if databases qualify for protection as “collections”:144

 The scope of protection does not extend to individual elements of the collection.  The owner of the collection has the right to determine whether, when and how the collection can be used – e.g., to print collections and put them on electronic storage media; to perform and present the collection (including making the database available on-line).

What is the maximum term of protection?

The maximum term of protection refers here, on the one hand, to the general maximum term of copyrighted works (collections) in the CopA – e.g., 70 years after the death of the author. The second-time limitation is given through the time-limited protection in unfair competition law (Art 5c), which provides protection only until the investment of the database maker has been recuperated (see above).

Specifically, how do these possibilities provide for protection in the case of extraction and re-utilisation of data and databases?

See above in section “overview”

144 Meitinger et al. (2004): Database protection at national level – Switzerland, AIPPI Study Committee Q182

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To what extent are there exceptions to the possibilities to protect databases (e.g., fair use, etc.)?

As far as regards copyright protection of collections, there are exceptions:145

 Private use and use within the circle of close relatives and friends (Art. 19(1)a CopA)  Educational use in schools (Art. 19(1)b CopA)  In firms, public administrations etc. for internal information and documentation (Art. 19(1)c CopA)

These rights are to be understood in such a way as the users of the copyrighted collections are allowed to make copies; however, only for the exception for private use there is no obligation to pay royalties. In relation to electronic databases accessible via the internet this does not mean that it is allowed to download and copy the full database. The take by the legislator is here that there is no ownership of the database, but only a right to use a database. In any case, full or practically full copying is only allowed for the private use exception.146

To what extent are the notions of "databases", "originality", "substantial investment", "maker", "owner", "substantial parts of databases" defined in your jurisdiction and in relation to database protection? What would be other key terms and their definition in relation to the possibilities to protect databases?

See above in section “overview”

In your country, are database creators free to rely on the law of unfair competition to protect databases? Are there any problems with this as an alternative to the sui generis right (should the latter be abolished)? Could you give us some examples or indicate any court decisions?

Yes. See above in section “overview”

Do database producers rely on contract law to protect the investment in their databases? Have there been any problems with the use of contracts? Are there any problems with this as an alternative to the sui generis right (should the latter be abolished)? Could you give us some examples or indicate any court decision?

Yes. See above in section “overview”.

145 Meitinger et al. (2004): Database protection at national level – Switzerland, AIPPI Study Committee Q182 146 Ibid.

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Do database makers use technological protection measures (TPMs) to protect their databases and if so, do they encounter problems in doing so?

Yes, and yes. See above in section “overview” and specifically the “Canal +” case.

Have you encountered problems of the different ways to protect databases with the (national) open access policies regarding research activities? What is your opinion regarding the PSI (Public Sector Information) Directive? Could you give us some examples or indicate any court decision?

How do you gauge the EU system of Database protection in comparison to your own legislation? What are advantages and disadvantages?

In Switzerland, there was a public consultation on a reform of copyright law, respectively the CopA. It lasted from 11 December 2015 to 31 March 2016. According to interview evidence, there was no discussion on and no demand to introduce a sui generis database protection in this consultation (or any other IP protection for databases). Sui generis database protection is seen as not relevant and the current protection possibilities are deemed as sufficient. The external view on the European regulation was that it would not be much in use and does not constitute a “must-have” for Switzerland.

Author: Alfred Radauer

Review: Estelle Derclaye

Sources:

Interview with anonymous Swiss IP specialist

Bühlmann, L. (2013): Skimming, Scraping, Scratching – Verwertung fremder Datenbanken im Schweizer Recht.

Meitinger et al. (2004): Database protection at national level – Switzerland, AIPPI Study Committee Q182

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4.3 The United States Can you give examples of key landmark decisions in your country that relate to IP protection of databases, and why these cases have had significance?

 Feist Publications, Inc. vs. Rural Telephone Service Co. (499 U.S. 340 (1991))

The Feist decision can be considered the centerpiece of U.S. case law in the context of database protection. In this case the U.S. Supreme Court held, as a matter of constitutional law, that copyright law cannot protect the contents of databases against extraction and copying. However, there is a modest level of protection for the original selection and arrangement of the data (see also below).

 ProCD v. Zeidenberg (86 F.3d 1447 (7th Cir. 1996))

This case is considered a landmark decision for the possibility to protect databases through contracts: “In ProCD, the Seventh Circuit Court of Appeals held that a contractual restriction against copying in a shrink-wrap license was enforceable and was not pre-empted by copyright. Here, the court found that state law was not pre-empted, finding the extra element in the contract claim was not a right equivalent to copyright. ProCDhas been criticized in the academic literature and in other circuits, but clearly the trend in the case law has sustained its basic principles. In some ways, it allows owners of non-original databases to circumvent the originality threshold of copyright law as articulated in Feist. “147

 eBay, Inc. v. Bidder's Edge Inc. (86 F.3d 1447 (7th Cir. 1996))

This case is a landmark decision in the context of the application of the trespass to property law for the purpose of database protection. A California district court provided eBay with a preliminary injunction on a claim of trespass to personal property. Bidder’s Edge had used automatic robots to access the eBay site hundreds of thousands of times every day in order to collect online auction information. The defendant invoked copyright pre-emption, but this was eventually denied by the court because “…the right to exclude others from using physical property is not equivalent to any of the rights protected under copyright.”

 Pollster v. Gigmania, Ltd (170 F. Supp. 2d 974 (E.D. Cal. 2000))

This case is an example for the application of unfair competition law and the misappropriation doctrine for the protection of databases. In this case, a California district court “…held that concert information on the Pollster web site

147 Marshall Leaffer, Database Protection in the United States is Alive and Well: Comments on Davison, 57 Cas. W. Res. L. Rev. 855 (2007) Available at: http://scholarlycommons.law.case.edu/caselrev/vol57/iss4/10

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was determined to be hot news and therefore protectable under the misappropriation doctrine.”148

 Authors Guild vs. Google (No. 13-4829-cv (2d Cir. Oct. 16, 2015))

This case centered around the fair use exception: “Defendant Google, Inc. collaborated with several major research libraries to digitize their collections for the Google Books project. Plaintiffs, the Authors Guild, Inc. and individual copyright owners, complained that Google scanned more than twenty-million books without permission or payment of license fees…[the issue was, ed.] whether it was fair use to digitally copy entire books from library collections, without permission or payment, and to make the digital copies available for library collections and for the public to search electronically using a search engine.”149 Fair use was affirmed by United States Court of Appeals for the Second Circuit. The case is seen by interview partners as one affirmation of the trend that copying huge material amounts of data / data mining in the web is an accepted case of fair use (see below).

In general, interview partners agree that there have been very few case laws on issues of database protection for the last ten years.

What are the means by which databases can be protected in your country? Please make a distinction particularly between protection provided by copyright, sui generis rights and other means?

There is no sui generis protection for databases in the U.S. Certain aspects of databases can be, however, protected with any (combination of) the following means:

 Copyright protection of compilations  Contract Law provisions  Computer Fraud and Abuse Act  Trade Secret Law  Trespass to Property Law  Misappropriation doctrine under unfair competition law  Technical Protection Measures (TPM) and Anticircumvention provisions of the Digital Millennium Copyright Act (DMCA)

In a paper of Leaffer, it is said: “My general proposition is that when one takes into account the multifaceted ways database owners can protect their creations, their ability to protect is robust and flourishing, even without a specialized sui generis protection. Database owners of all varieties are well taken care of under U.S. law.”150 We consequently discuss the various means by which databases can be effectively protected in the U.S.

148 Ibid. 149 https://www.copyright.gov/fair-use/summaries/authorsguild-google-2dcir2015.pdf 150 Ibid.

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Copyright protection of compilations

Databases can be considered to be compilations under U.S. copyright law and enjoy protection if either the selection and/or arrangement of the elements in the database is creative. The most influential case law for compilations is in this context Feist Publications, Inc. vs. Rural Telephone Service Co.

According to interview evidence, this landmark decision clarified first that the amount of creativity to support copyright protection is modest. If, for example, one would create a compilation of the best poems of an author, then this selection would be creative. If, however, one would select all poems (or an entire category of things) of an author there would be no copyright protection for the compilation as this way of selecting is not creative. Similarly, if one would use standard ways of arranging elements – e.g., alphabetically – this would also not be creative. Therefore, creativity must be examined independently for both dimensions of selection and arrangement.

Protection under the DMCA

Also, in the realm of copyright protection, the Digital Millennium Copyright Act (DMCA) can provide for substantial protection particularly for electronic databases. Section 1201(a) DMCA prohibits “…circumvention of devices or technologies that are used to control access to a copyrighted works.”151 In addition, there is liability for manufacturers and suppliers of instruments designed to circumvent access control devices.

According to interview evidence, there is an issue insofar with the Act, when one would circumvent TPMs to obtain access to facts, these facts would not be copyright protected but one would still be at odds with the DMCA. Interestingly, there do not seem to be a lot of cases invoking DMCA. An interview partner suggested that the reason may be that there are often not TPMs at play in the litigation – often, it is about the usage of passwords by employees, and using the password provided by the employer is not an act of copyright infringement.

Computer Fraud and Abuse Act

By using this Act, offenders can be made liable (criminal and civil liability), if the offending person knowingly and with intent to defraud, accesses a protected computer without authorization. The Act has been used with success in cases involving databases.152

151 Ibid. 152 Ibid. See also case: EFCultural v. Explorica, 274 F.3d 577 (1st Cir. 2001).

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Trespass to Property Law

According to Leaffer, trespass to property law can be particularly effective for protecting databases. The landmark case here is eBay, Inc. v. Bidder's Edge Inc. (see above).

Misappropriation doctrine (under unfair competition law)

The misappropriation doctrine, as part of unfair competition law, awards a "quasi-property right" to a person who invests "labour, skill, and money" for producing an intangible asset. The right functions against competitors "endeavouring to reap where it has not sown" by "misappropriating" the value of the asset (e.g., by copying). The misappropriation doctrine originated as federal law and is based on a famous landmark case in 1918.153 Since 1938, its status has changed to state law. The current viability of the misappropriation doctrine is not certain because subsequent developments in U.S. patent and copyright law "pre-empt" state law operating in the same legal field.

According to Leaffer, the misappropriation doctrine can be used also in selected cases for the purpose of database protection, where a) the material taken by the copier is time-sensitive, b) the free-riding is clear, and c) where injury has occurred. The doctrine was in this context successfully used in Pollster v. Gigmania, Ltd (see above).

How is ownership defined?

Copyright for compilations belongs to the author of the database, or if the database is created by an employee in the course of the employment, to the employer.

What are the pre-conditions to obtain protection?

The general pre-conditions for copyright protection of works also apply to compilations. Most notably, the compilations must be fixed in a tangible medium, e.g. in a printed document or software database. There are some instances too functional to be eligible for copyright protection of compilations. For example, if the arrangement is dictated by the function to be performed, there is no copyright protection. Another instance is when the selection is done via a systematic process (and if the creativity lies in the system rather in personal choice), there is also no copyright protection. The immediate consequence is that sensor-generated data is, if considered a compilation of such data, not copyright- protected.

What is the scope of the protection?

153 International News Service v. Associated Press, 248 U.S. 215 (1918)

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The scope of the protection provided under U.S. copyright law is thin. If the compilation contains foremost facts – i.e. not copyright-protected works in themselves –, meaning that the potential protection is ONLY in the arrangement and/or selection, it is sufficient to make small adjustments to the “copied” compilation’s arrangements and/or selection to not infringe copyrights. The Feist decision re-affirms that raw facts can be copied at will. Factual data within databases may, using the reasoning of this decision, neither be copyrighted as “…a matter of both U.S. constitutional…and statutory copyright law (federal Copyright Act 17 U.S.C. § 102(b)).”154

Overall, therefore, one can therefore consider that the possibility to protect databases via copyright is limited and other means to protect databases may be more important.

What is the (maximum) term of protection?

The term of copyright protection for compilations follows the general term of copyright protection for all protected works – i.e., 70 years from creation and in the case of works for hire 95 years from first publication.

Any other important features for the protection of databases worth mentioning

See above

To what extent are there exceptions to the possibilities to protect databases (e.g., fair use, etc.)?

Because compilations are a category of works, there are the same exceptions to copyright applying for compilation as for the other kinds of works – e.g., exceptions for libraries, classroom teaching, fair use.

According to interview evidence, there is hardly case law where copyright exceptions for compilations are invoked as defense. First, with respect to exceptions like classroom teaching, even if there would be truly an issue where the exception was wrongfully used, database owners would not sue because of fears to damage their image. Secondly, there are also hardly any fair use cases, because in most instances just selected “mere facts” would be extracted. Most of the (not so many) cases are in relation to copying the whole or substantial parts of compilations (which would not be “fair use” anyway).

It is noteworthy that U.S. case law has substantiated the view that copying large amounts of data for data mining purposes is fair use in this sense (see, e.g., above Authors Guild vs. Google).

154 DLA Piper (2013): IP in Data Handbook, p. 43.

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To what extent are the notions of “databases”, “originality”, “substantial investment”, “maker”, “owner”, “substantial parts of databases” defined in your jurisdiction and in relation to database protection? What would be other key terms and their definition in relation to the possibilities to protect databases?

In your country, are database creators free to rely on the law of unfair competition to protect databases? Are there any problems with this as an alternative to the sui generis right Could you give us some examples or indicate any court decisions?

See above on misappropriation doctrine and unfair competition law

Do database producers rely on contract law to protect the investment in their databases? Have there been any problems with the use of contracts? Are there any problems with this as an alternative to the sui generis right (should the latter be abolished)? Could you give us some examples or indicate any court decision?

There is a strong reliance on contract provisions. Main questions arise whether what is stated in contracts is actually enforceable. In terms of mass market licenses, these are mostly accepted and there is hence a body of mass market licensing terms that is enforceable.

Do database makers use technological protection measures (TPMs) to protect their databases and if so, do they encounter problems in doing so?

Database producers indeed use TPMs to protect databases. In practice, however, every TPM can be hacked, which poses therefore a risk. Interview partners have not heard of any commercial active databases that were hacked and for which copyright protection would be relevant. Hacking seems to be concentrated on obtaining access to personal data (credit card information, health information), which is not a copyright issue (and not discussed as such). Customer information may not enjoy copyright protection anyway (for the lack of creativity).

Have you encountered problems of the different ways to protect databases with the (national) open access policies regarding research activities? What is your opinion regarding the PSI (Public Sector Information) Directive? Could you give us some examples or indicate any court decision?

There have been no particular problems reported.

To what extent are the national means to protect databases fit for current and upcoming technological changes (bid data, unstructured data, sensor-created data, etc.)?

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The stance of interview partners is that the U.S. approach is someone of a “let’s see if we can adapt to the situation and if not let’s change the law” attitude. So far, there has not been any conversation about changes of U.S. (copyright) law for data in the cloud, big data, etc. Overall, the U.S. approach is a very reactive approach.

How do you gauge the EU system of Database protection in comparison to your own legislation? What are advantages and disadvantages?

According to interview evidence, bills for a U.S. sui generis database right were drafted and debated in the late 1990s. In 1998, a bill passed the House but was not adopted in Congress. Since then, there have been no substantial efforts to amend copyright law or to broaden the basis for database protection. Initially, the bill was modelled after the European approach but obtained hefty criticism from many different sources such as scientific societies, Bloomberg News, etc. Only a certain group of databases companies wanted the sui generis right.

The interview evidence is consensual in that the sui generis database right is hardly to not at all debated anymore and a dead subject. The European sui generis right is not regarded as something that the U.S. needs or what would be desirable. If such an approach were adopted in the U.S., the expectation would be for a considerable amount of litigation. For the interview partners, it seems sound to narrow the scope of sui generis protection in this light, and/or to contemplate other requirements to obtain protection. The idea of a registration system was received positively, “…partly because if one creates a lot of data, and if one does not put markers around it for people to know, people start using the databases and are then surprised if they run into a dispute.” (interview partner).

Very few papers are written on this topic in the U.S.

Author: Alfred Radauer

Review: Estelle Derclaye

Sources:

Marshall Leaffer, Database Protection in the United States is Alive and Well: Comments on Davison, 57 Cas. W. Res. L. Rev. 855 (2007) Available at: http://scholarlycommons.law.case.edu/caselrev/vol57/iss4/10 https://www.copyright.gov/fair-use/summaries/authorsguild-google- 2dcir2015.pdf

Band, J. (2012): OVERLAPPING FORMS OF PROTECTION FOR DATABASES, in: Wilkof and Basheer (2012): Overlapping Intellectual Property Rights.

Interviews with Jonathan Band and Pam Samuelson

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European Commission

Study in support of the evaluation of Directive 96/9/EC on the legal protection of databases (Annex 6) Luxembourg, Publications Office of the European Union

2018 – 247 pages

ISBN: 978-92-79-84958-9 doi: 10.2759/955021

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doi: 10.2759/955021 ISBN: 978-92-79-84958-9