COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE CHANCERY DIVISION
The Hon Mr Justice Floyd
Strand, London, WC2A 2LL
B e f o r e :
THE RT HON LORD JUSTICE JACOB
THE RT HON LORD JUSTICE WILSON
| Football Dataco Ltd
The Scottish Premier League Ltd
The Scottish Football League
PA Sport UK Ltd
|- and -
(a company registered in Germany)
(2) Sportradar AG
(a company registered in Switzerland)
WordWave International Limited
A Merrill Communications Company
190 Fleet Street, London EC4A 2AG
Tel No: 020 7404 1400, Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
for the Claimants
Mr Henry Carr QC and Mr Hugo Cuddigan (instructed by Bird & Bird)
for the Defendants
Hearing dates: 1 & 2 March 2011
Crown Copyright ©
Lord Justice Jacob:
i) Rejected the defendants' application for an order declaring that the court had no jurisdiction to entertain the claim against them;
ii) In part allowed and in part refused amendments to the claim.
Object of protection
1. In accordance with this Directive, 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.
2. The copyright protection of databases provided for by this Directive shall not extend to their contents and shall be without prejudice to any rights subsisting in those contents themselves.
Object of protection
1. Member States shall provide for a right for the maker of a database which shows that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.
 Paragraph 22 of the particulars of claim alleges that the compilation of Football Live involves "considerable skill, effort and/or intellectual input by experienced personnel to generate, select and/or arrange its contents". There is also an allegation that a substantial part has been used: see paragraph 37. In the light of the law as stated above, those combined allegations must include the allegation that what is taken is a substantial part of the intellectual input of the authors. Those allegations are supported by a statement of truth from each claimant. Mr Cuddigan's argument that the part alleged to have been reproduced by his clients does not amount to an intellectual creation is not supported by any evidence. Whilst the court might have a view based on its own impressions, I do not think that it would be right to place those ahead of what is properly in evidence. In those circumstances, whilst there may ultimately prove to be force in the argument, I think the claimants have a good arguable case on this issue.
 The Defendants are engaged, inter alia, in the business of providing live scores, results, and statistics relating to football, to customers, including customers in the United Kingdom. Their customers include:
(i) Bet365 Group Limited, trading as Bet365, a UK company. Bet365 provides online betting services, inter alia, to customers located in the UK, through a website at bet365.com ("the Bet365 Website"); and
(ii) Stan James Plc, a company registered in Gibraltar, which provides online betting services, inter alia, to customers located in the UK, through a website at stanjames.com ("the Stan James Website")."
 From a date presently unknown to the Claimants but prior to the issue of the Claim Form in these proceedings, the Defendants have used the whole or a substantial part of Football Live, without the consent of the Claimants or any of them. Pending disclosure and/or evidence, the Claimants rely on the following facts and matters:
(i) The reproduction of data from Football Live on pop-up windows hosted on the Defendants' Website which are linked to from the Bet365 Website and the Stan James Website, during the 2008/2009 and 2009/2010 seasons. These pop-up windows appear when the "Live Score" option on the Bet365 Website and the Stan James Website is clicked on. [Screen prints of the windows from the two websites are then attached and referred to]. These screen prints show examples of the data displayed (at the end of each game) in relation to all of the games played in each of the Leagues, on the relevant dates. The data which is displayed for each game is left on the Defendants' Website until the end of the day on which the game is played.
(ii) By way of further illustration, attached as Annex 4 is a table showing the extent of types of live data displayed…
(iii) By reason of the matter is aforesaid, it is to be inferred that the defendants reproduce and/or authorise the reproduction of the following events for every game in every League…(a) goals; (b) goalscorers (shown by the player's name, and a football icon); (c) own goals (shown by the player's name followed by "(og)" and a football icon); (d) penalties (shown by the player's name followed by "(pen)"; (e) yellow cards (shown by the player's name, and a yellow card icon); (f) red cards (shown by the player's name and a red card icon); and (g) substitution (shown by the names of the players coming on and off, and an icon comprising two circular arrows). …
1. Where proceedings involving the same cause of action and between the same parties are brought in the courts of different Member States, any court other than the court first seised shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised is established.
2. Where the jurisdiction of the court first seised is established, any court other than the court first seised shall decline jurisdiction in favour of that court.
To prevent parallel proceedings before the courts of different contracting states and to avoid conflicts between decisions which might result therefrom. Those rules are therefore designs to preclude in so far as is possible and from the outset, the possibility of a situation arising such as that referred to in Art.27(3), that is to say the non-recognition of a judgment on account of its irreconcilability with the judgment given in a dispute in which recognition is sought (Gubisch )
 In particular, in a case such as this, involving the international sale of tangible moveable property, it is apparent that the action to enforce the contract is aimed at giving effect to it, and that the action for its rescission or discharge is aimed precisely at depriving it of any effect. The question whether the contract is binding therefore lies at the heart of the two actions. If it is the action for rescission or discharge of the contract that I brought subsequently, it may even be regarded as simply a defence against the first action, brought in the form of independent proceedings before a court in another contracting state.
 In those procedural circumstances it must be held at that the two actions have the same subject-matter, for that concept cannot be restricted so as to mean two claims which are entirely identical.
 If, in circumstances such as those of this case, the questions at issue concerning a single international sales contract were not decided solely by the court before which the action to enforce the contract is pending and which was seised first, there would be a danger for the party seeking enforcement that under Article 27(3) a judgment given in his favour might not be recognized, even though any defence put forward by the defendant alleging that the contract was not binding had not been accepted. There can be no doubt that a judgment given in a contracting state requiring performance of the contract would not be recognized in the state in which recognition was sought if a court in that state had given a judgment rescinding or discharging the contract. Such a result, restricting the effects of each judgment to the territory of the state concerned, would run counter to the objectives of the convention, which is intended to strengthen legal protection throughout the territory of the community and to facilitate recognition in each contracting state of judgments given in any other contracting state.
 For the purposes of Art. 21 of the Convention the "cause of action" comprises the facts and the rule of law relied on as the basis of the action.
 Consequently, an action for a declaration of non-liability, such as that brought in the main proceedings in this case, and another action, such as that brought subsequently by the cargo owners on the basis of shipping contracts which are separate but in identical terms, concerning the same cargo and transported in bulk and damages in the same circumstances
 The "object of the action" for the purposes of Art. 21 means the end the action has in view.
to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.
2. For the purposes of this Chapter:
(a) 'extraction` shall mean 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` shall mean 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 Community by the rightholder or with his consent shall exhaust the right to control resale of that copy within the Community;
The Claimants' Arguments
(1) Broadcasts are governed by the emission theory. So, for instance, you can only complain about the activities of a radio or TV broadcaster in the place from which he broadcasts. Mr Mellor described the notion that a broadcast only operates in the place of emission as a legal fiction. He submitted the fiction was one created by the legislation applicable to broadcasts. They are in effect express deeming rules. No such deeming rules apply to "transmission." It takes two to tango.
(2) The other forms of re-utilization mentioned as examples of transmission, particularly "distribution of copies" and "renting" supported the claimants. For unless and until copies are received by members of the UK public they will not have been distributed to them. Likewise when a member of the UK public "rents" (which must mean take a licence for) copies he does so in the UK. Thus "transmission" includes arrival as well as departure.
(3) The Directive also provides for a copyright right, by Art.3. The restricted acts for that right include (Art.5(d)) "any communication display or performance to the public." In context "communication" therefore must involve reception by the public. It would be absurd for the position to be any different for the sui generis database right.
(4) Recitals (7), (8), (38-44) are supportive. Thus, for instance Recital (7) sets out the fact that the making of a database requires considerable investment. Recital (8) says that unauthorized extraction or re-utilization can have serious consequences. There will be just such consequences to the UK database right if it can undermined with impunity by using a server abroad. Here it should particularly be remembered that the server might be anywhere in the world. It is by no means necessarily in the EU: enforcement only at the place of emission might be impractical.
(5) Recital (44) is particularly important. It provides:(44) Whereas, 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;
This recognises that the user uploads the content in his computer and says the database right should extend to cover that. Art. 7(2)(a) implements that.
(6) Cases C-203/02 BHB v William Hill, C-304/07 Directmedia v Albert-Ludwigs-Universität and Case C-545/07 Apis-Hristovich v Lakordia all show that the concept of extraction is wide and not confined to direct extraction. The defendants should be regarded as "extracting" not only in Austria and Germany but also in the UK. [Mr Mellor needed our permission to argue this point. It is a pure point of law. Mr Carr objected on the basis that he had not had time to research it – a point of no significance now since he will have plenty of time. No injustice is created by allowing the point to be taken].
(7) The whole history of the way copyright protection for broadcasts developed following the 1948 revision of the Berne Convention which provided for such protection for the first time shows that the emission theory applied only to broadcasts. Thus for instance the 1956 UK Copyright Act expressly so provided (by s.14(10)). The subsequent UK legislative history continued that, for instance the Cable and Broadcasting Act 1984 introduced copyright protection for cable programme services and did not provide that they were subject to the emission theory. It is unnecessary in this summary to follow the subsequent detail of UK legislation.
(8) EU legislation also consistently applies the emission theory to broadcasts but not to cable transmission. For instance Art.1.2 of Directive 93/83/EEC (concerned with harmonisation of certain rules concerning copyright and copyright related rights applicable to satellite broadcasting and cable retransmission) makes the emission theory apply to satellite broadcasting (the place of uploading being deemed to occur solely there, see Art. 2.B). But there is no corresponding provision as concerns cable retransmission. Further the Information Society Directive, 2001/29/EC, particularly recital (23) makes it clear that the author's right of communication to the public should be understood in a broad sense covering all communications to the public not present at the place where the communication originates. Recital 25 (dealing with on-demand transmission) nowhere suggests the transmission is to be treated as only taking place where it originates.
(9) The World Copyright Treaty 1996 (to which the EU was a party) provides by Art. 8 for a Right of Communication to the Public. It makes specific provision for on demand use, speaking of "making available to the public …. in such a way that members of the public may access those works from a place and at a time individually chosen by them". It is said this amounts to explicit recognition of the transmission theory – and particularly that it regards "making available to the public" as happening both at the place of origin and place of receipt. It is said that the travaux préparatoires for the WCT support this.
(10) Certain learned authors have written in favour of the transmission theory, albeit not in the specific context of the Database Directive. Reliance is placed particularly on The WIPO Treaties 1996, Reinbothe & von Lewinski, (2002), The Law of Copyright and the Internet – The 1996 WIPO Treaties, their Interpretation and Implementation, Ficsor (2002), International Copyright and Neighbouring Rights – The Berne Convention and beyond Ricketson & Ginsburg, 2nd Edition (2006) and World Copyright Law, Sterling 3rd Edn. (2008) at pp.469-472.
(11) Case-law supports the application of the transmission theory. Reliance is placed on the "thumbnail" case in the Landgericht, Hamburg, 05.09.2003 – 308 O 449/03; Republic of Chile v Florence G. & Clara (Cour d'Appel de Paris, 9th September 2009); Cassina SpA v La Fondation Le Corbusier (District Court of Amsterdam, 14th July 2010); International jurisdiction in the event of unauthorised public access to a work protected on the internet (Munich Regional Court, 30th July 2009, 7 O 13895/08); 800-Flowers Trade Mark  FSR 697 at 705 (in the context of trade marks); and the US and Canadian cases referred to by Sterling at pp.462, 472.
The Defendants' arguments
(1) It was the long-standing orthodox view under the Berne Convention that the "emission theory" applied. Moreover protection of authors' works by broadcasting goes back to the 1928 (Rome) Revision. Most importantly, when it came to the 1948 (Brussels) Revision the travaux explicitly intended the emission theory to apply not only to emission over the air but also "by means of a transmission by wire".
(2) The claimants wrongly interpret the UK legislation which has implemented Art. 11bis of the 1948 revision by maintaining the emission theory.
(3) Although the Director of WIPO, Dr Arpad Bogsch, in 1985 had favoured the theory that it was the law of the country of reception of a broadcast which should be applicable, after much discussion that view was rejected – and in particular the Commission in 1990 in a discussion paper Broadcasting and Copyright in the Internal Market recorded that the conventional view was that the emission theory applied to broadcasts and should be applied to satellite broadcasts.
(4) The policy reasons for that apply equally to internet use and accessing of servers across borders. Rights would have to be cleared everywhere which would generally be impractical, as has been pointed out by Dr Werner Rumphorst, Legal Director of the European Broadcasting Union, Copyright in the World of Satellites and the Internet (Moscow, November 2006). He said: "what is true for satellite broadcasting must apply, by the same logic, and indeed even more so, to the distribution of programmes via the Internet (streaming and simulcasting)".
(5) The travaux to the Database Directive, namely the Green Paper on Copyright and the Challenge of Technology and the Follow up Communication of 7 June 1988 and the Commission Proposal of 13 May 1992 do not support the claimants. On the contrary these documents – and recitals (31) to (34) make it clear that "on-line" transmission is regarded as an act of distribution, not of communication.
(6) The arguments based on the WIPO Copyright Treaty are misconceived. The Treaty post-dates the Directive and so cannot be of any help. And in any event it does not unambiguously support the communication theory. Moreover if the claimants' construction of the Treaty were correct the EU would be obliged to protect protection for copyright works including literary, artistic and musical works at the place of their reception. That it has not done. Yet no-one has suggested the Cable and Satellite Directive is deficient in that regard. And the Information Society Directive 2001/29/EC was specifically intended to implement the WIPO Treaty. The recitals to that (particularly 2, 3, 20 and especially 24) appear to exclude reception from the act of "making available". The travaux do not support the claimants as suggested. There are passages going the other way. And in the end Art. 3 is not materially different to Art. 8 of the WCT.
(7) As to the learned authors relied upon by the claimants, some do not, as the claimants assert, unambiguously say the transmission applies: they are equivocal. Admittedly Dr Reinbothe does, but he does so by assertion without reasoning. And other authors, e.g. Copinger and Skone James on Copyright 15th Edn. (2005) para 7-117 unequivocally support the defendants. In passing I note that the 16th Edn. (2011), contains a fuller discussion of the theories and is less certain as to the position. It correctly concludes at para. 7-135, "The whole topic seems likely to become the subject of a reference … in due course." Further, Bently and Sherman, Intellectual Property 3rd Edition (2009), discuss various theories at para 6.2 and conclude "this difficult issue will need to be resolved".
(8) As to the UK legislation it is not clearly in favour of the transmission theory and the UK Government did not think that it was.
(9) Policy favours the emission theory. If it were right a work would communicated to virtually every country. Website proprietors would have to comply (and thus know) the copyright laws of everywhere. Moreover there could be a real risk to freedom of expression via the internet. The suggested lacuna in protection is illusory in practice.
The Questions to be asked
Where a party uploads data from a database protected by sui generis right under Directive 96/9/EC ("the Database Directive") onto that party's webserver located in member state A and in response to requests from a user in another member state B the webserver sends such data to the user's computer so that the data is stored in the memory of that computer and displayed on its screen
(a) is the act of sending the data an act of "extraction" or "re-utilisation" by that party?
(b) does any act of extraction and/or re-utilisation by that party occur
(i) in A only
(ii) in B only; or
(iii) in both A and B?
The Future conduct of these proceedings
Lord Justice Wilson:
Lord Justice Laws: