Can a company use the EU’s Database Directive 96/9 to stop minute parts of its website turning up on a rival website?
The defendant, Wegener, runs a car-advert website called AutoTrack. The website’s content changes daily. On any given day, 200 000 second-hand cars may be offered for sale. The sellers are private individuals, car showrooms or garages. Most of the adverts are however also available on other websites. Only about 40,000 adverts are exclusive to Wegener’s website. To help its online visitors find the right car, Wegener’s website has its own search-engine.
The claimant company, Innoweb, runs a website known as GasPedaal. Visitors to the GasPedaal website also use a search-engine to find the car they want. However, the GasPedaal search-engine is different. It is a ‘dedicated meta search-engine’. That is to say, it is ‘dedicated’ in so far as it searches only through specific websites. And it is ‘meta’ in so far as it gets the search-engines of those specific websites to do the searching, and supply the results to the GasPedaal search-engine.
GasPedaal’s search-engine proceeds to take the first page of results from each dedicated website (about 15 adverts from each site). It collates the results. It recognises any results common to other websites and condenses these into one result. It breaks down this slimmed-down information supply into the specific criteria of a car’s model, year, price, and mileage. The GasPedaal search-engine subsequently builds a webpage of results, which it stores for about 30 minutes on the server, and sends a copy of the results to GasPedaal’s end-user.
Of the 300 000 adverts taken from the various websites, GasPedaal only makes available to the user a very small amount of AutoTrack’s database with every search command - the content of the data being determined by the search terms used by GasPedaal’s end-user. On a daily basis, about 100,000 search commands from GasPedaal pass through the AutoTrack website. Approximately 80% of the various combinations of make and model are searched through at least once, and the details of the searched adverts are made available to the end-user.
This use of technology initially prompted Wegener to seek an injunction to stop what it claimed was GasPedaal’s infringement of its ‘sui generis database right’ – a right which exists by dint of the EU’s Database Directive 96/9. On appeal, however, The Hague Court of Appeal had more difficulty in deciding the case. The Hague Court of Appeal assumed that Wegener’s collection of adverts on its website was a database for the purposes of Article 1(1)(a) of the Dutch Database Act, the Act implements the EU Directive.
The Hague Court of Appeal also assumed that:
i. there was no ‘extraction’ here of the whole or a substantial part of the contents of Wegener’s sui generis database within the meaning of Article 7(1) of the EU Directive;
ii. the repeated extraction of insubstantial parts of the content of Wegener’s sui generis database did not constitute an infringement for the purposes of Article 7(5) EU Directive;
but that there was,
iii. a repeated re-utilisation of insubstantial parts of the contents of Wegener’s sui generis database – the cumulative effect of which was that a substantial part of the contents of the database was made available to the various users of GasPedaal’s search-engine when taken together.
However, The Hague Court of Appeal was unsure how to apply the EU Database Directive and the CJEU’s attendant case law. It therefore decided to ask 9 detailed Questions. In essence they relate to:
• in circumstances such as these, was there a re-utilisation of the whole or a substantial part of Wegener’s database?
• what did Article 7(5) of the Directive mean when it used the word ‘systematic’?
• did the prohibition in Article 7(5) of the Directive not apply where only insubstantial parts of the content of the database were made available to individual users, notwithstanding that the cumulative effect of the repeated re-utilisation of insubstantial parts was that a substantial part of the contents of the database was made available to different users when taken together?
• and what did the CJEU mean in Case C-203/02 British Horseracing Board when it was talking about unauthorised actions and Article 7(5) of the Directive, but then uttered the phrase in para 89: ‘which thus seriously prejudice the investment made by the maker of the database’. Was that the case here?
Update: 29 June 2012
The website of the UK Intellectual Property Office indicates that The Hague Court of Appeal has asked these Questions:
1. Is Article 7(1) of the Directive to be interpreted as meaning that the whole or a qualitatively or quantitatively substantial part of the contents of a database offered on a website (on line) is re-utilised (made available) by a third party if that third party makes it possible for the public to search the whole contents of the database or a substantial part thereof in real time with the aid of a dedicated meta search engine provided by that third party, by means of a query entered by a user in ‘translated’ form into the search engine of the website on which the database is offered?
2. If not, is the situation different if, after receiving the results of the query, the third party sends to or displays for each user a very small part of the contents of the database in the format of his own website?
3. Is it relevant to the answers to Questions 1 and 2 that the third party undertakes those activities continuously and, with the aid of its search engine, carries out daily a total of 100 000 queries received from users in ‘translated’ form and makes available the results thereof to various users in a manner such as that described above?
4. Is Article 7(5) of the Directive to be interpreted as meaning that the repeated and systematic re-utilisation of insubstantial parts of the contents of the database which conflicts with normal exploitation or unreasonably prejudices the legitimate interests of the maker of the database is not permissible, or is it sufficient for there to be repeated or systematic reutilisation?
5. If repeated and systematic re-utilisation is a requirement,
(a) what does ‘systematic’ mean?
(b) Is re-utilisation systematic when an automated system is used?
(c) Is it relevant that a dedicated meta search engine is used in the manner described above?
6. Is Article 7(5) of the Directive to be interpreted as meaning that the prohibition for which it provides does not apply if a third party repeatedly makes available to individual users of a meta search engine belonging to that third party only insubstantial parts of the contents of the database in response to each query?
7. If so, does that also apply if the cumulative effect of the repeated reutilisation of those insubstantial parts is that a substantial part of the contents of the database is made available to the individual users together?
8. Is Article 7(5) of the Directive to be interpreted as meaning that, if conduct which has not been approved and which is such that, as a result of the cumulative effect of re-utilisation, the whole or a substantial part of the contents of a protected database is made available to the public, the requirements of that provision are satisfied, or must it also be claimed and proved that those acts conflict with the normal exploitation of the database or unreasonably prejudice the legitimate interests of the maker of the database?
9. Is it assumed that the investment of the maker of the database is seriously prejudiced in the event of the aforementioned conduct?
Should a website owner be allowed to use a sui generis concept of EU (copyright) law to stop search-engines from copying insubstantial parts of a website? Here the technology of a website’s search-engine ‘translates’ a user’s search-commands in order that that search-engine can ‘talk’ to other search-engines so as to provide the user with a more efficient way of searching through information. If the CJEU views a website’s search engine as a social construct, then could this trigger a development of sui generis EU copyright law? And should the CJEU not just restrict the scope of the sui generis database right? After all, one of the reasons for creating the sui generis database right in the first place was the desire to increase the EU’s rate of producing databases – a desire which has not been borne out in practice. Indeed, even the EU Commission has remarked: ‘Is ‘sui generis protection therefore necessary for a thriving database industry … the empirical evidence, at this stage, casts doubt on this necessity’ (2005 DG Internal Market and Services Working Paper; First Evaluation of Directive 96/9/EC on the legal protection of databases, 12 December 2005, p.5).
Innoweb is one of a couple of references to the CJEU involving the linkages between the economic base of E-Commerce and the concepts of IP law. A similar tension, this time between the economic base of E-Commerce and the concepts in advertising law and perhaps EU trade mark law, arises in the case of Belgian Electronic Sorting Technology. That case also involves a website and in particular a website’s name. It will be interesting to see if the CJEU views the website through the lens of technology or whether it will view website technology as a social construct. For whereas a website name is devised for humans to be able to remember a site, the website’s name masks a technological reality that a website’s address is merely a series of numbers designed for machine processing. If the CJEU views a website not in terms of its technology but as a social construct then will its ruling in Belgian Electronic Sorting Technology set about a new evolution in the concepts of trade mark and advertising laws?
Update – 25 November 2013
The judgment of the Fifth Chamber is due out on 19 December 2013.