His Honour Judge Birss QC has handed down a landmark ruling in the Patents County Court, with positive and important implications for the protection and enforcement of sui generis database right.
The claimant in this case publishes a database called Binleys Database of GP Practices, consisting of the names and addresses of individuals, such as practice nurses and doctors, associated with GP practices. As is common practice amongst owners of large databases, Binleys ‘seeds’ the database. Seeding involves including fictional dummy contacts (in this case, Binley’s staff) and unique indicators within a database to enable the owner to monitor whether someone is using its data unlawfully. Binleys finds out if someone is using data from its database because a letter will be sent to one of its seed addresses.
In August 2007, one of the Binleys ‘seeds’ received a mailing from a rival company, the first defendant Guardian Products. Guardian had acquired the data including the seed from the second defendant, Precision Direct Marketing Limited, which had acquired it from a third party, Bespoke Database Organisation Limited, in March 2006.
Following a summary judgment hearing at which the claimant successfully established title and subsistence of sui generis database right, the sole issue to be decided at trial was infringement, and in particular, whether the defendants had extracted and/or reutilised a ‘substantial part’ of the database, as required by Regulation 16 of the Copyright and Rights in Databases Regulations 1997 SI 1997/3032, implementing Directive 96/9/EC, the Database Directive. The defendants pointed out that all that had been shown was the presence of a single seed entry in their data. They denied there was evidence of a substantial part of the claimant’s database having been taken.
Binleys were able to identify the exact source of the seed data as a dataset licensed to Phillip Bothwell, a director of Bespoke, in April 1997. Following disclosure, it emerged that Binleys had planted only two seeds in the database in 1997, both of which appeared in the defendants’ 2007 data. Further analysis showed that between 11% and 14% of the records in the claimant’s database had been extracted and were contained in the defendants’ database. Applying the tests set down in British Horseracing Board v William Hill C-203/02  RPC 13, Judge Birrs QC found that both on a quantitative approach (considering the volume of data extracted as against the volume of data in the database as a whole) and a qualitative approach (considering the scale of the investment in obtaining, verifying or presenting the contents of the database, regardless of whether that amounts to a quantitatively substantial part of the whole), 11% represented a substantial part of the claimant’s database and that therefore the defendants had infringed the sui generis right in the claimant’s database.
This decision will be welcomed by database owners, as it provides long-awaited clarity on the approach that the Courts are likely to adopt when considering how a single fictitious seed entry can be used to prove extraction of a substantial amount of data, and confirms the vital role that seeding can play in protecting and enforcing the sui generis database right.