Transcript Subject-matter of protection computer programs

Copyright in the EU –
Computer programs and
databases
Prof. E Derclaye
Turin, 26 October 2012
The protection of computer programs
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The protection of computer programs
What is a computer program/software?
Why copyright for software?
International protection for computer
programs
EC Directive
US/UK case law
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What is software ? - I
Computer programs or software
Soft as opposed to hard – but…
“computer program” is not strictly
synonymous with software but
encompasses both software and firmware,
but generally terms computer programs
and software are used interchangeably
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What is software? - II
Several types: operating systems,
application programs, crippleware,
shareware, freeware, open source
Different languages (Basic, Pascal,
Fortran, Cobol, C, Perl, Java, HTML…)
Preparatory materials (diagrams, circuits),
source and object codes
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What is software ? - III
 Traditional computer program
- purpose or main function of program
Non-literal elements
- program structure or architecture
- data structures and algorithm(s)
“
“
- flow charts or diagrams (not always used)
- routines and subroutines (or part of code) “
“
- source code
- object code
literal elements
“
“
NOT GUI (result, output) (lit., artistic, audiovisual w)
nor documentation (lit w)
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Web sites
http://www.webopedia.com/
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Why copyright?
 Close to literature
 No new international instrument needed
 Right holder can sue the world >< contract
 Prohibits exact (piracy) and similar copies
(infringement)
 Protection of expression not ideas
 Some Member States had already followed this
path
 Criminal sanctions possible
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International protection for computer
programs
Not in Berne Convention
Art 10(1) trips, art. 4 WCT: are literary
works within the meaning of Berne art. 2.
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Structure of Directive
Directive 2009/24 (ex-Directive 91/250)
Directive’s main provisions: Articles 1-9
Idea/Expression dichotomy – art. 1.2 - // USA
Originality – art. 1.3 - // USA
Ownership and beneficiaries – art. 2 & 3
Rights - art. 4
Defences – art. 5-6
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Ownership and beneficiaries – art. 2 & 3
Natural or legal person
If joint creation => joint ownership possible
If created by employee in execution of
duties or under instruction of employer,
employer entitled to exercise all economic
rights unless provided otherwise by
contract
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Art. 4: restricted acts
permanent or temporary reproduction in
whole or in part, any means and any form
translation, adaptation, arrangement or
alteration
any form of distribution to the public,
including rental
Exhaustion with first sale in the
Community
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Infringement
No test in Directive
National laws apply
Not many cases in the Member States
UK: John Richardson, Ibcos and Cantor
US case law relied upon in the UK?
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Whelan v Jaslow
 “… the line between the idea and expression
may be drawn with reference to the end sought
to be achieved by the work in question… the
purpose or function of a utilitarian work would be
the work’s idea, and everything that is not
necessary to that purpose or function would be
part of the expression of the idea… Where there
are various means of achieving the desired
purpose, then the particular means chosen is
not necessary to the purpose; here there is
expression, not idea”.
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CA v Altai
The Altai test or "abstraction-filtrationcomparison test" (AFC test) consists of
three steps.
Abstraction involves dissecting the
allegedly copied program and isolate each
level of abstraction contained within it, i.e.
discover the program's structure.
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Filtration
 Filtration consists of examining the structural
components for each level of abstraction and
determining whether the particular inclusion at
that level was
an idea,
was dictated by considerations of efficiency,
required by external factors or
taken from the public domain.
 This enables to define the scope of the
claimant's copyright. After filtration has been
performed, one is left with the program's kernel
of protected expression.
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Comparison
Finally, the court compares this kernel of
expression with the alleged infringing
program to determine whether there is
substantial similarity between the two. If
the alleged infringing program is
substantially similar, it is infringing.
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UK case law
 John Richardson – screen display (relies on traditional SSJL
test)
 Ibcos – literal infringement of literal and non literal elements.
Traditional test for infringement: what is the work, was it
original, has a substantial part been copied – Altai test not
helpful nor merger doctrine
 Cantor – 2% code copied – infringement only if original parts
taken i.e. where SSJL subsists >< what is worth copying is
worth protecting. Architecture of program is protectable if it is
an original substantial part
 Mars – a computer program can include a database
 Navitaire v Easyjet (2004): GUI case: individual commands,
collection of commands not protected, screen layouts = LW or
AW
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SAS Institute v World Programming (2010)
 Copyright in manual (LW), computer program
(“SAS components”), but programming
language?
 HC: “Copyright in the computer program (…)
protects the skill and labour that went into
devising the form of expression of the
program,… that is to say its design and
source code” so skill etc expanded in creating
ideas, procedures, functions … of a program,
does not count
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SAS Institute v World Programming
Thus as WP reproduces in the main only
functions (eg names and procedures), it
doesn’t infringe
However many points are not clear => ref
to ECJ, mainly again asking whether
mathematical formulae, commands,
combination of commands, keywords,
syntax, etc. are protected by copyright
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SAS Institute v World Programming
(ECJ, 2012)
 Neither the functionality of a computer program nor
the programming language and the format of data files
used in a computer program constitutes a form of
expression of that program
 However, if one were “to procure the part of the
source code or the object code relating to the
programming language or to the format of data files
used in a computer program, and if that party were to
create, with the aid of that code, similar elements in its
own computer program, that conduct would be liable
to constitute partial reproduction”.
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SAS Institute v World Programming
 On the other hand, the ECJ says that “the
SAS language and the format of SAS's data
files might be protected, as works, by
copyright under Directive 2001/29 if they are
their author's own intellectual creation”.
 Contradictory bec. an original idea is not
protectable by copyright => data formats and
languages should never be protected by
copyright law
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Conclusion: infringement
Problem: copyright protects well against
piracy (exact copies) but not much against
similar but not identical copies
Thus attention has been drawn to
alternatives such as patents – failed
Software Patent Directive Proposal (2002),
case law EPO
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Art. 5: exceptions
 Art. 5.1 (s. 50C(1)): can perform restricted acts
of reproduction, adaptation, etc. but not
distribution to public + rental if
 necessary for the use of the computer program
+
 done by a lawful acquirer +
 in accordance with program’s intended purpose
e.g. including error correction
 NB: in the absence of specific contractual
provisions
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Art. 5: exceptions
 Art. 5.2 (s. 50A(1)): back-up right: 2 conditions
 By person having a right to use the program
 insofar as it is necessary for using the program
 Art. 5.3 (s. 50BA): lawful user’s right to observe,
study and test (3 conditions)
 Common condition to art. 5 = lawful acquirer
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SAS Institute v World Programming
 Question to ECJ on art 5(3):
 “Where a person has the right to use a copy of the First
Program under a licence, is Article 5(3) to be interpreting as
meaning that the licensee is entitled, without the authorisation
of the rightholder, to perform acts of loading, running and
storing the program in order to observe, test or study the
functioning of the First Program so as to determine the ideas
and principles which underlie any element of the program, if
the licence permits the licensee to perform acts of loading,
running and storing the First Program when using it for the
particular purpose permitted by the licence, but the acts done
in order to observe, study or test the First Program extend
outside the scope of the purpose permitted by the licence?”
 Very unclear answer
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SAS Institute v World Programming (ECJ)
 “[T]he owner of the copyright in a computer
program may not prevent, by relying on the
licensing agreement, the person who has obtained
that licence from determining the ideas and
principles which underlie all the elements of that
program in the case where that person carries out
acts which that licence permits him to perform and
the acts of loading and running necessary for the
use of the computer program, and on condition
that that person does not infringe the exclusive
rights of the owner in that program.”
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SAS Institute v World Programming
(ECJ)
“[C]opyright in a computer program cannot
be infringed where … the lawful acquirer
of the licence did not have access to the
source code of the computer program to
which that licence relates, but merely
studied, observed and tested that program
in order to reproduce its functionality in a
second program.”
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SAS Institute v World Programming
(ECJ)
 Court sets 2 apparently cumulative conditions which
would lead to the conclusion that WPL infringes
 ECJ ruling contradictory: on the one hand, say that
art. 5(3)’s purpose is to ensure that any licensee can
discover the ideas behind a program even if licence
agreement says otherwise and, on the other hand,
say that determination of ideas must be done within
the framework of the acts permitted by the licence.
 Allows patent-like protection by backdoor via
contract
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SAS Institute v World Programming
(ECJ)
 For ruling to make sense, what ECJ meant in
effect in paras [59] and [61] is that a copyright
holder cannot grant himself more rights than
what the Software Directive grants him or her
=> right holder cannot by contract prevent a
competitor from discovering the ideas and
principles behind a program so long as the
competitor does not infringe his or her
exclusive rights.
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Art. 6: decompilation (s. 50B)
 “reverse engineering”
 Decompilation always necessitates a translation
(and thus a fortiori a reproduction) of the object
code into the source code
 Decompilation is necessary for the
interoperability between programs : i.e.
possibility to connect computers of different creators so
that they can use the same software on different
hardware
Possibility for different programs to function together –
to ‘understand each other’
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Art. 6: decompilation
 Conditions: art. 6.1: no authorisation required for reproduction or
translation of code
 (1) if indispensable (>< necessary) to obtain the information
necessary to achieve the interoperability of an independently
created computer program with other programs
 (2) if done by ‘lawful user’: "these acts are performed by the
licensee or by another person having a right to use a copy of a
program, or on their behalf by a person authorised to do so"
 (3) "the information necessary to achieve interoperability has
not previously been readily available to the persons referred to
in subparagraph (a); and
 (4) "these acts are confined to the parts of the original program
which are necessary to achieve interoperability".
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Art. 6: decompilation
 Art. 6.2: "The provisions of paragraph 1 shall not permit the
information obtained through its application:
 (a) to be used for goals other than to achieve the
interoperability of the independently created computer
program;
 (b) to be given to others, except when necessary for the
interoperability of the independently created computer
program; or
 (c) to be used for the development, production or marketing
of a computer program substantially similar in its
expression, or for any other act which infringes
copyright."
 Art. 6.3: TST < Berne Convention art. 9(2) and 13 TRIPS (BUT not exactly Berne/TRIPS wording because says "or"
and not "and").
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Art. 7 - 8
Art. 6: strict conditions >< fair use USA
(Sega v Accolade)
Art. 7: Member States must provide
sanctions + anti-circumvention provision
Art. 8 – repealed (life + 50 years -> life +
70 years, see Term Directive)
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Art. 8 (ex 9): other legal provisions
Directive without prejudice to other forms
of legal protection including:
Patents
Trade marks
Trade secrets
Unfair competition
Contracts
contract terms contrary to Articles 5(2),
5(3) and 6 void – thus art. = imperative
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Areas left unharmonised by Directive
Moral rights – but all Member States must
respect Berne convention (art. 6 bis)
Ownership not fully harmonised (minimal
requirements only)
Contracts (licences, transfers) – but some
exceptions are rendered imperative,
thereby harmonising contractual relations
indirectly (see above)
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Commission’s Report on Implementation
of Directive
 submitted 10 April 2000
 Positive evaluation: Directive has
reduced piracy and sector has grown
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Softwarová – 22 Dec. 2010
 Bezpečnostní softwarová asociace – Svaz
softwarové ochrany v. Ministerstvo kultury
 Q1: is a computer program’s GUI a form of
expression of that program and therefore
protected as a computer program?
 No because the GUI does not enable
reproduction of program, but merely constitutes
one element of that program by means of which
users make use of the features of that program.
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Softwarová
 But GUIs can be otherwise protectable by
copyright: as long as the GUI constitutes the
author's own intellectual creation.
 Problem = may mean that any creation of the
mind, provided it is its author's own intellectual
creation, is protectable by copyright. However,
clear that Directive did not harmonize originality
criterion even less the concept of work.
 Ruling in Softwarová may be construed in a way
that eliminates the British and Irish system of
categorization of works.
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Softwarová
 Q2: is TV broadcasting of GUI communication to
the public of a work protected by copyright within
the meaning of Article 3(1) of Directive.
 No because in a television broadcast, GUI loses
its interactivity. Viewers only receive GUI in a
passive manner. => TV broadcasting of GUI is
not a communication to the public of a work
protected by copyright
 ?? Since when should a copyright work be
functional or perform a function (here
interactivity)?
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The protection of databases
History of database debate
 80’s-90’s – notion of originality + digitisation
 Feist case, other cases in Europe
 Commission launched Green Paper on
challenge of digital technology 1988
 Directive 1996
 Aborted Treaty 1996
 USA – several bills 1996-2004 all failed
 WCT art. 5 (copyright)
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Directive – main features
 (1) Harmonisation of copyright protection of
databases
 (2) Creation of an exclusive sui generis right
(SGR)
 SGR provides protection against unauthorised
extraction and re-utilisation of databases
Esp. where their originality is insufficient to qualify for
copyright protection
This enables database makers to protect their
investment of time, money and effort, irrespective of
whether the database is, in itself, creative.
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Main reasons for Directive
copyright only protects structure, not
content, at least in continental Europe,
protection not enough - originality
threshold difficult to reach for databases
law of unfair competition not the solution
mainly because of considerable
differences between MS => impossible to
harmonise law of unfair competition, thus
creation of SGR
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Structure of Directive
4 chapters, 60 recitals, 17 articles
Chapter I - Scope (art. 1 & 2) – definition
of database
Chapter II - Copyright (art. 3-6) –
continental author’s rights, provisions very
similar to software Directive, see above
Chapter III – Sui Generis Right (art. 7-11)
Chapter IV - Common Provisions (art. 12,
14-16)
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Content and structure
‘Containing’ = structure, architecture
(skeleton)
Content = data, elements (flesh)
4 types of databases:
 © + SGR
 © – SGR
SGR – ©
No © and no SGR
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Decisions Fixtures Marketing and British
Horseracing Board - ECJ
List of football matches and horseracing
fixtures organised by FM and BHB – are
they databases protected by the sui
generis right?
Decisions - 9 November 2004
Different notions interpreted by ECJ =>
harmonises protection in the 27 countries,
clarifies and restricts the scope of the right
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Definition of « database »
Any form – paper, tape, electronic (off ou
online)
« a collection of independent works, data
or other materials arranged in a systematic
or methodical way and individually
accessible by electronic or other means»
(art. 1).
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Definition of database
- Criteria of independence, arrangement
and accessibility
- Independence: elements must be
separable from each other and their
informative, literary, artistic, musical or
other value must not be affected =>
novels, films are not databases
- An independent element must have an
autonomous informative value
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Definition of database
 Arrangement: not necessary for the elements to
be physically stored in an organised way so long
that there is a table of contents, index or other
classification which allows the localisation of the
elements.
 Accessibility: not clear, redundant
 NB: computer programs used in the production
or operation of a database cannot be databases
but other computer programs yes (although will
be rare) and lists internal to a program (eg Mars
UK Ltd v. Teknowledge Ltd [2000] FSR 138)
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Fixtures Marketing and BHB – ECJ decisions
A football fixture is a database - Fixtures v
Opap
“The term database (…) refers to any
collection of works, data or other
materials, separable from one another
without the value of their contents being
affected, including a method or system of
some sort for the retrieval of each of its
constituent materials.”
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Examples of protectable databases
 collections of novels, poems, films, musical works
and of computer programs, lists of data within
computer programs, football fixtures lists (i.e. the
compilation of date, time and identity of teams in
particular matches), horse racing fixtures lists,
indexes, thesauruses, bibliographies, newspapers,
journals, reviews, customer lists, geographical
maps, collections of hyperlinks, web pages, web
sites (unless their several pages can be said to be
dependent on each other), libraries, results of sport
competitions, …
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Examples of protectable databases
 … commercial and legal information on
undertakings, timetables, cinemas listings,
list of self help groups, televisions listings,
telephone directories, classifieds, list of
properties for sale, lists of email addresses,
collections of recipes, lists of towns, weekly
hit parades, collections of legal texts, trade
fair catalogues, lists of financial reports and
data, lists of pharmaceutical products with
their notices.
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Examples of things which cannot be
databases
 novels, films, musical works, sound recordings, computer
programs used in the making or operation of a database (at
least those protected by copyright), collections in which the
contents are calculated from other contents (e.g. a stock
market database displaying averages of share prices
calculated from the individual share prices which form its
contents because elements are not independent), the genome
of plants or animals and genes (constituted by A, C, G and T
amino-acids) for lack of independence of their elements, the
Internet (because it lacks systematic or methodical
arrangement).
 “Multimedia works that feature dynamic interfaces or which
display their contents in a highly interrelated and integrated
way will have difficulty satisfying the definition of a “database”.
Whereas reference type multimedia works are far more likely
to fall within the definition of “database”.” Aplin 2005.
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Copyright – art. 3-6
Originality: “Databases which, by reason
of the selection or arrangement of their
contents, constitute the author's own
intellectual creation shall be protected as
such by copyright. No other criteria shall
be applied to determine their eligibility for
that protection.” (art. 3.1.)
No right in contents – art. 3.2
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Criterion of originality
Football Dataco v Britten pools et al (2010)
RPC 17, High Court, then CA
A football fixture can be protected by
copyright but not by the sui generis right
There is, even if a small amount, creativity
– the court uses the terms ‘judgement,
taste and discretion’ to describe the
requirement of the author’s own
intellectual creation
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Football Dataco v Yahoo UK!
CJEU, 1 March 2012
Football fixtures lists are not protectable
by copyright
See e.g.
http://kluwercopyrightblog.com/2012/03/01
/football-dataco-skill-and-labour-is-dead/
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Copyright – art. 3-6
“The author of a database shall be the
natural person or group of natural persons
who created the base or, where the
legislation of the Member States so
permits, the legal person designated as
the right holder by that legislation” – art.
4.1
Joint authorship => joint ownership
possible
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Art. 5 – rights
 “…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 rightholder 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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Art. 6 – exceptions
Art. 6.1. – mandatory exception
acts necessary for the purposes of access
to and normal use of the contents of the
database
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Art. 6 – exceptions
 Art. 6.2: Optional exceptions
 “(a) in the case of reproduction for private purposes of a
non-electronic database;
(b) where there is use for the sole purpose of illustration
for teaching or scientific research, as long as the source
is indicated and to the extent justified by the noncommercial purpose to be achieved;
(c) where there is use for the purposes of public security
of for the purposes of an administrative or judicial
procedure;
(d) where other exceptions to copyright which are
traditionally authorized under national law are involved,
without prejudice to points (a), (b) and (c).”
 + TST (“or”) – art. 6.3
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Sui Generis Right
Object of protection (art. 7)
Characteristic of SGR : art 7.3 – right can
be licensed or transferred => property right
criterion for a database to benefit from
SGR = substantial investment
Definition: quantitative or qualitative
substantial investment in obtaining,
verification or presentation of contents
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Substantial investment
Nature of investment = material, financial
or human (cons. 40) (para. 44 OPAP)
Level of investment : definition of
« substantial »: high, low? And of
« quantitatively » or « qualitatively »
Object of investment: obtaining, verifying
or presenting contents
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Fixtures Marketing and BHB
Substantial investment in obtaining…
 Obtaining means collecting not creating
 “The expression ‘investment in … the obtaining … of the
contents’ of a database must (…) be understood to refer
to the resources used to seek out existing independent
materials and collect them in the database, and not to
the resources used for the creation as such of
independent materials. The purpose of the protection by
the sui generis right provided for by the directive is to
promote the establishment of storage and processing
systems for existing information and not the creation of
materials capable of being collected subsequently in a
database.”
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Fixtures Marketing and BHB
Substantial investment in obtaining…
 “The expression ‘investment in … the … verification … of
the contents’ of a database must be understood to refer
to the resources used, with a view to ensuring the
reliability of the information contained in that database,
to monitor the accuracy of the materials collected when
the database was created and during its operation.”
 “The expression ‘investment in … the … presentation of
the contents’ of the database concerns, for its part, the
resources used for the purpose of giving the database its
function of processing information, that is to say those
used for the systematic or methodical arrangement of
the materials contained in that database and the
organisation of their individual accessibility.”
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Fixtures Marketing and BHB
Substantial investment in obtaining…
“Investment in the creation of a database
may consist in the deployment of human,
financial or technical resources but it must
be substantial in quantitative or qualitative
terms. The quantitative assessment refers
to quantifiable resources and the
qualitative assessment to efforts which
cannot be quantified, such as intellectual
effort or energy”
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Fixtures Marketing and BHB
Substantial investment in obtaining…
 “The resources deployed for the purpose of
determining, in the course of arranging the
football league fixtures, the dates and times of
and home and away teams playing in the
various matches represent an investment in the
creation of the fixture list. Such an investment,
which relates to the organisation as such of the
leagues is linked to the creation of the data
contained in the database at issue, in other
words those relating to each match in the
various leagues. It cannot, therefore, be taken
into account under Article 7(1) of the directive.”
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Fixtures Marketing and BHB
Substantial investment in obtaining…
“Finding and collecting the data which
make up a football fixture list do not
require any particular effort on the part of
the professional leagues”
“Obtaining the contents of a football fixture
list thus does not require any investment
independent of that required for the
creation of the data contained in that list.”
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Fixtures Marketing and BHB
Substantial investment in obtaining…
 “The professional football leagues do not need
to put any particular effort into monitoring the
accuracy of the data on league matches when
the list is made up because those leagues are
directly involved in the creation of those data”
 “The presentation of a football fixture list, too, is
closely linked to the creation as such of the data
which make up the list. It cannot therefore be
considered to require investment independent of
the investment in the creation of its constituent
data.”
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Substantial investment – level
 Not defined by ECJ - low level => easy to obtain protection
 Ex: UNMS c. Belpharma: two persons listed self help group, for
10 years, sent questionnaires to them and verified that data was
up to date
 Limit:
 Alphabetical classification – no substantial investment
 A small collection of addresses or of bons mots fortuitously
made (AG Rostock, 20.02.2001, Datenbankeigenschaft von
Hyperlinksammlungen)
 No protection: when a producer receives the content of the
database from its clients (he does not collect nor verifies nor
presents (or he presents the information but there is no
substantial investment) (Groupe Moniteur c. Observatoire des
Marchés Publics)
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Extraction and re-utilisation - I
Art. 7.2: Extraction:
temporary or permanent transfer of all or a
substantial part of the contents of a
database to another medium by any
means or in any form
Does not mean that the original must have
disappeared
Parallel to reproduction right in copyright
law
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Extraction and re-utilisation - II
 Art. 7.2: Re-utilisation:
 any form of making available to the public all or
a substantial part of the contents of a database
by distribution of copies, renting, on-line or other
forms of transmission
 Very broad: covers Internet, live communication,
basically any communication
 Parallel to communication right in copyright law
 Extraction and re-use do not cover the
consultation of a database
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BHB – substantial part
 “The expression ‘substantial part, evaluated …
quantitatively, of the contents of [a] database’ (…) refers
to the volume of data extracted from the database and/or
re-utilised and must be assessed in relation to the total
volume of the contents of the database. “
 “The expression ‘substantial part, evaluated qualitatively
… of the contents of [a] database’ refers to the scale of
the investment in the obtaining, verification or
presentation of the contents of the subject of the act of
extraction and/or re-utilisation, regardless of whether that
subject represents a quantitatively substantial part of the
general contents of the protected database.”
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Repeated and systematic use
Art. 7(5):
Repeated and systematic extraction or reutilisation of insubstantial parts of the
contents of the database (which conflict
with normal exploitation or unreasonably
prejudice the legitimate interest of the
maker) are prohibited
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BHB – art. 7(5)
“Article 7(5) (…) refers to unauthorised
acts of extraction or re-utilisation the
cumulative effect of which is to
reconstitute and/or make available to the
public, without the authorisation of the
maker of the database, the whole or a
substantial part of the contents of that
database and thereby seriously prejudice
the investment by the maker.”
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Exceptions
Copyright (art. 6)
SGR (art. 7, 8 & 9)
6 §1. Any act listed in art 5 that 8 §1 Extraction / re-utilisation
is necessary for access and
of insubstantial parts by
normal use
lawful user for any purpose (//
art. 6§1)
6 §2. (a) Reproduction for
private purposes of nonelectronic database
9 (a) Extraction for private
purposes of non-electronic
database (// art. 6§2(a))
6 §2. (b) Use for sole purpose
of illustration for teaching or
scientific research + source +
non commercial purpose
9 (b) Extraction for purposes
of illustration for research or
scientific research + source +
non commercial purpose (// art.
6 §2 (b)
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Exceptions
Copyright (art. 6)
SGR (art. 7, 8 & 9)
6 §2. (c) Use for purpose of
public security or admin or
judicial procedure
9 (c) extraction and/or reutilisation for purpose of public
security or admin or judicial
procedure (// art. 6 §2 (c))
6 §2. (d) Other national
traditional copyright exceptions
(without prejudice of points (b)
and (c))
8 §3 - lawful user cannot
prejudice the holder of a
copyright or related right in
respect of works of database
6 §3. Three step test: not
8 §2 // 6§3
unreasonably prejudice to right
holder's legitimate interests or
conflicts with normal
exploitation of the work (c) E. Derclaye 2000-2012
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Art. 10: term of protection
SGR = 15 years renewable: i.e.
additional 15 years if substantial
(qualitative or quantitative) change in
database which would be considered a
new substantial investment
Consequence: dynamic databases may
qualify indefinitely for protection
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Art. 11: beneficiaries (SGR)
 Database makers nationals of Member States or habitual
residence in the EU - see art. 11
 Database maker: copyright and rights in database
regulations 1997 reg. 14(1): “the person who takes the
initiative in obtaining, verifying or presenting the contents
of the database and assumes the risk in investing in that
obtaining, verification or presentation
 Employee in course of employment -> ownership to
employer (unless agreement to the contrary) reg. 14(2)
 Joint ownership if two or more persons collaborate to
initiate and assume risk (reg. 14(5))
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Misc.
 Art. 12: Member States must provide sanctions
to infringements
 Art. 13: other legal provisions - leaves intact the
protection by unfair competition, contracts, trade
marks, trade secrets, etc.
 Art. 15: art. 6(1) and 8 DBD are imperative – not
possible to derogate by contract
 British Horseracing Board v. William Hill (2004);
Directmedia v. Albert-Ludwigs-Univ.Freiburg
(2008) and APIS v Lakorda (2009, case C545/07)
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Apis v Lakorda
 Q 2. Which criterion is to be applied in
interpreting the concept ‘extraction of a
substantial part, evaluated quantitatively’ if
the databases are divided into separate
subgroups and are used in these subgroups,
which are independent commercial products?
 Determine if that module is a database itself
and is protected. If yes, then “the volume of
materials allegedly extracted and/or reutilised
from the module concerned must be
compared with the total contents solely of
that module”
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