European Business Law, the fourth volume in our series, shows how the European authorities simultaneously abolish all restrictions on access to and exercise of economic activities and support the growth of domestic markets, through the harmonization the internal legislation or the enactment of genuinely unified regulations.

European Business Law

Directive No 96/9 confers a dual protection on the author of a database: he is protected by copyright where the database is an intellectual creation which bears his own mark and by a sui generis right which allows him to protect the content of his database against fraudulent uses and/or extractions.
1) Copyright
The legal protection granted by Directive No 96/9 under copyright does not cover the c …

Dual protection

Directive No 96/9 confers a dual protection on the author of a database: he is protected by copyright where the database is an intellectual creation which bears his own mark and by a sui generis right which allows him to protect the content of his database against fraudulent uses and/or extractions.

The legal protection granted by Directive No 96/9 under copyright does not cover the content of the database, but the base itself which, by reason of the selection or arrangement of its contents, constitutes the author's own intellectual creation (Article 3) . The author of a database has exclusive rights of reproduction, distribution and communication to the public . Directive No 96/9 adds to the exceptions traditionally laid down regarding copyright, such as, in particular, a copy for private purposes, the use for purposes of illustration for teaching or scientific research , of public security, for the purposes of an administrative or judicial procedure, the possibility for the lawful user of a database or of a copy thereof to perform any of the acts normally subject to restrictions which are necessary for the purposes of access to the contents of the database and normal use of the contents without authorization (Article 6(1) and 2).

In accordance with the principle of exhaustion of rights, the first sale of a copy of a database in the EU by the rightholder or with his consent exhausts the right to control resale of that copy within the EU (Article 5(c)). On the other hand, the question of the exhaustion of the right of distribution does not arise in the case of online databases. In effect, unlike CD-ROM or CD-i, where the intellectual property is incorporated in a material medium, online databases come within the field of provision of services. Each online service may be subject to authorization (recital 33).

In accordance with Directive No 2006/116/EC of 12 December 2006, the term of copyright is set at seventy years as from 1 January following the death of the author .

The essential contribution of Directive No 96/9 consists in the creation of a “sui generis” right, a specific right of ownership granted to makers of databases in order to protect them against looting of the content of their database and protect the investments made to create it. As an exclusive right, the sui generis right allows the maker to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively or quantitatively, of the contents of a database, where the obtaining, verification or presentation of those contents shows that there has been qualitatively or quantitatively a substantial investment (Article 7(1)). With a term limited to fifteen years , this right may be transferred, assigned or granted under contractual license (Article 7(3)). However, once the maker has made its database accessible to third parties, even on a paid basis, he cannot prevent such third parties from consulting that database for information purposes, unless the consultation necessitates acts of extraction .

The concept of “extraction” is defined as 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 (Article 7(2)) . According to the European Court, the concept of extraction must be understood in a broad sense as referring to any unauthorized act of appropriation of the whole or a part of the contents of a database, irrespective in this respect of the nature and form of the process used . The decisive criterion to determine the existence of extraction is to be found in the existence of an act of “transfer” of all or part of the contents of the database concerned to another medium, whether of the same nature as the medium of that database or of a different nature. Thus, the fact that a search engine makes it possible to explore all the data contained in databases freely accessible on the internet and provides its users with access to the entirety of their content by a means other than that provided for by the creator of those databases, and that it can index and copy the content of the websites on its own server, is characterized as measures of extraction and re-utilization . It is irrelevant that the act of transfer is for the purpose of creating another database, whether in competition with the original database or not, or whether it is part of an activity, whether commercial or not, other than the creation of a database . Likewise, the existence of differences relating to the organizational structures of the two databases concerned does not preclude a finding that there has been extraction . Lastly, the duration of storage on another medium of materials extracted from the original database makes it possible to distinguish permanent transfer and temporary transfer .

The maker may claim the benefit of the sui generis right irrespective of eligibility of the database for protection by copyright or by other rights (Article 7(4)). Classification as a database may therefore be retained despite the fact that the materials brought together are official and publicly accessible. However, the fact that the physical and technical characteristics present in the contents of two databases are similar or the fact that their sources are inaccessible to the public, are mere indications of an extraction .

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. The first sale of a copy of a database within the EU by the rightholder or with his consent exhausts the right to control resale of that copy within the EU (Article 7(2)(b)) but not the right to control extraction and re-utilization of the contents of that copy . In effect, the person who has created the database cannot be left without protection from unauthorized copying from a copy of his database . Similarly, a dedicated meta search engine, which provides end users with a means of searching all the data in a protected database, whilst using the database's search engine and offering the same advantages as the database itself in terms of searches, constitutes the re-utilization of the whole or a substantial part of the contents of a database insofar as by drawing away users from the database maker's website, the operator of the meta search engine is depriving that maker of revenue, in particular the income from advertising, which should have enabled him to redeem the cost of his investment . 

Public lending is not an act of extraction or re-utilization (Article 7(2)). 

The purpose of the directive is to promote and protect investments in data “storage” and “processing” systems. The concept of investment in the obtaining, verification or presentation of the contents of a database refers to investment in the creation of the database as such  and not those implemented for the creation of materials . It must be understood to refer to the resources used to seek out existing independent materials, to collect them in the database, to monitor their accuracy when the database was created and during its operation, to the systematic or methodical arrangement of those materials, as well as the organization of their individual accessibility, and, lastly, the deployment of human, financial or technical resources or means of a qualitative and quantitative nature . Where the creator of the database is also the creator of the data, he may benefit from the protection if he establishes the independent character of his “database” investment in relation to his “data creation” investment . The quantitatively substantial part of a database refers to the volume of data extracted from the database and/or re-utilized, and is assessed in relation to its total volume .

The lawful user of a database must be able to extract and/or re-utilize insubstantial parts of the database. On the other hand, he cannot perform acts which conflict with normal exploitation of the database or unreasonably prejudice the legitimate interests of the maker (Article 8). These rights of extraction and/or re-utilization may be extended by the Member State to a substantial part of the database but within the limits of copyright. Thus, substantial extraction may be authorized only for private purposes or purposes of illustration for teaching or scientific research, public security or an administrative or judicial procedure (Article 9). Even if it has some resemblances with the right of reproduction and communication to the public, the right of extraction and/or re-utilization must be distinguished since its holder cannot oppose the use by a third party of data obtained in an independent manner and not from his database. 

Infringements of copyright or of the sui generis right are subject to remedies which are distinct from the breach of copyright or other rights, and determined by the Member States .

A database is protected by copyright only if the selection or arrangement of the data which it contains amounts to an original expression of the creative freedom of its author: Case C-604/10 Football Dataco Ltd, Judgment of 1 March 2012, LawLex201200000643JBJ.

Directive No 96/9, Article 5: "In respect of the expression of the database which is protectable by copyright, the author of a database shall 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 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)". On the other hand, the moral right of the natural person who created the database remains outside the scope of the directive (Directive No 96/9, recital 28).

Case C-545/07 Apis-Hristovich [2009] ECR I-1627, LawLex200900002320JBJ, point 48.

Case C-545/07 Apis-Hristovich [2009] ECR I-1627, LawLex200900002320JBJ: the transfer of data in the working memory of a computer is thus temporary by reason of its limited duration.

Case C-545/07 Apis-Hristovich [2009] ECR I-1627, LawLex200900002320JBJ, point 51.

Case C-203/02 The British Horseracing Board and others [2004] ECR I-10415, LawLex200900002213JBJ.

See also Directive No 96/9, recital 43, which states that "in the case of on-line transmission, the right to prohibit re-utilization 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 rightholder".

Case C-202/12 Innoweb BV, Judgment of 19 December 2013, LawLex201300001869JBJ, relative to a meta engine which provides the end user with a search form which essentially offers the same range of functionality as the search form on the database sites, translates queries from end users into the search engine for the database site "in real time", so that all the information on that database is searched through and  presents the results to the end user using the format of its website, grouping duplications together into a single block item but in an order that reflects criteria comparable to those used by the search engine of the database site concerned for presenting results.

Case C-444/02 Fixtures Marketing [2004] ECR I-10549, LawLex200900002204JBJ; C-203/02 The British Horseracing Board and others [2004] ECR I-10415, LawLex200900002213JBJ, the creator of a horse racing database was thus refused the benefit of the protection since the resources used to draw-up a list of horses taking part in a race and to verification which fell within that framework, were only used during the state of creation of the list.

Case C-444/02 Fixtures Marketing [2004] ECR I-10549, LawLex200900002204JBJ.

The term 'scientific research' covers both natural sciences and human sciences (Directive No 96/9, recital 36).

OJ L 372 of 27 December 2006, 12-18; Directive which repeals and replaces without changing the law Directive No 93/98/EEC of 29 October 1993 on the harmonization of the term of protection of copyright and certain related rights, OJ L 290 of 24 November 1993, 9 (Directive No 96/9, recital 25).

This right expires fifteen years from the first of January of the year following the date of completion of the making of the database (Directive No 96/9, Article 10(1)), date regarding which the burden of proof lies with the maker (Directive No 96/9, recital 53).

Case C-304/07 Directmedia Publishing [2008] ECR I-7565, LawLex201100000478JBJ, points 51 and 53. See also Directive No 96/9, recital 44, which indicates that "when on-screen display of the contents of a database necessitates the permanent or temporary transfer of all or a substantial part of such contents to another medium, that act should be subject to authorization by the rightholder".

See also Case C-304/07 Directmedia Publishing [2008] ECR I-7565, LawLex201100000478JBJ, which states that the transfer is based on a technical process of copying the contents of a protected database, such as electronic, electromagnetic or electro-optical process or any other similar processes.

Case C-203/02 The British Horseracing Board and others [2004] ECR I-10415, LawLex200900002213JBJ, points 45, 46 and 51; Case C-304/07 Directmedia Publishing [2008] ECR I-7565, LawLex201100000478JBJ, points 31 to 33.

Case C-762/19 CV-Online Latvia, Judgment of 3 June 2021, LawLex202100003511JBJ.

Case C-304/07 Directmedia Publishing [2008] ECR I-7565, LawLex201100000478JBJ, points 46 and 47.

European Business Law

275. Dual protection

Demandez un accès gratuit
au contenu exclusif Livv – juristes d’entreprise

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

275. Dual protection

Demandez un accès gratuit au contenu exclusif Livv – juristes d’entreprise

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

Demandez un accès gratuit
au contenu exclusif Livv – juristes d’entreprise