Protection of Databases in EU – Definition of the Subject Matter Still Waited from the ECJ

(IPRinfo 2/2009)

Sören Rieger
PhD candidate, DFG Graduate School ”Intellectual Property and the Public Domain” at the University of Bayreuth, Germany

The European Court of Justice did not seize the chance to clarify the definition of the subject matter of the database right.

The directive on the protection of databases (96/9/EC) has been in force over ten years, but the few preliminary rulings by the European Court of Justice have not brought much clarity in its interpretation.

The recent Green Paper on ”Copyright in the Knowledge Economy” also examines the legal protection of databases. In this article I try to give a review on some of the current controversies in European database law.

Sui generis protection of databases in crisis
The novel intellectual property right, sui generis protection for databases, faced a serious crisis in 2005. In its ”First evaluation of Directive 96/9/EC on the legal protection of databases”, the European Commission considered withdrawing the database right.

In the end of the evaluation process, however, nothing happened. Instead of changing the law, the Commission decided to wait and see the developments. Thus, it is up to the courts to refine the law by applying the rules given by the Database Directive.

The ECJ’s (the European Court of Justice) judgments in the cases ”Fixtures Marketing” and ”BHB v. Hill” in 2004 are regarded as landmark decisions, which clarified the conditions of asui generis protection of databases for the first time. Meanwhile, new cases dealing with the legal protection of non-original databases have been submitted to the ECJ for a preliminary ruling.

The subject matter of the database right
There has been a lot of discussion concerning the definition of the subject matter of the database right.

In the academic literature it has been identified as the investments of a database maker, the single contents of the database, the contents at large or the database itself consisting of its contents and its structure. The ECJ was given the chance to end the uncertainty in the case ”Direct Media./.Universität Freiburg” (2008).

In 2002, the defendant had produced and distributed a CD with the title ”1000 poems everyone should have”. 856 poems in this disk were the same as in a collection of the claimant (a professor of the University of Freiburg), which set out titles, authors, opening line and the year of publication. This verse list had been published in the Internet under the title ”The 1100 most important poems in German literature 1730-1900”.

The defendant had critically examined the professor’s collection. The texts of the poems had been taken from the defendant’s own digital resources. The Supreme Court of Germany, Bundesgerichtshof (BGH), held that an ”extraction” of the contents of a database within Art. 7 (2) of the Directive requires a physical transfer and therefore it denied an infringement of the sui generis right.

Even manual copying can be ”extraction” from a database
The ECJ did not agree. Although a consultation of a database would not infringe the database right, it approved an ”extraction” in cases of any unauthorised act of appropriation of contents of a database.

ECJ ruled that a transfer of data can consist of an electronic, electromagnetic, electro-optical or a simple manual process. A transfer of material from a protected database to another collection following an on-screen consultation and an individual assessment of the material in the database was capable of constituting an ”extraction” within Art. 7 (2).

At the first glance the case only deals with a specific problem concerning the definition of the exclusive rights of a maker of a database. But an ”extraction” and ”re-utilization” of the contents of a database in terms of Art. 7 (2) have to be assigned against the background of the subject matter of the database right.

The BGH has realized it in the precise database that is located on the precise data storage medium. That perception would have narrowed the scope of sui generis protection notably. The ECJ has not agreed on that point of view.

Unfortunately, ECJ did not seize the chance to clarify the definition of the subject matter of the database right in a more general meaning which would have simplified the application of the law in future cases.

The protection of official databases
In contrast to the rules concerning copyright protection for databases, Art. 9 of the Directive only provides few restrictions of the sui generis right. In particular, there is no rule comparable to Art. 6 (2) lit. d whereby traditional national exceptions are applicable to database protection.

As Section 5 of the German Copyright Act clarifies that official works are not protected by copyright, the ECJ was asked whether the rules of the Database Directive prohibit a legal provision of a Member State, according to which an official database which is published as a matter of general information for official purposes does not benefit from sui generis protection.

Thereupon that issue has often been discussed and several proposals have been submitted. For example Art. 13 of the Directive is supposed to offer a possible solution. Hereafter the Directive shall be without prejudice to provisions concerning access to public documents.

If the ECJ’s judgements in ”Fixtures Marketing” and ”BHB./.Hill” (2004) are applied strictly, many official databases will not be protected by the database right, either. According to the ECJ, investments in generating contents of a database are not able to establish a sui generis protection.

The British Court of Appeal had ruled that contents of an ”official” database are always ”generated” in terms of such a distinction made by the ECJ because they cannot be provided by a third person without losing their official character [(2005) EWCA Civ 863].

It has also been discussed whether the Directive on the Re-use of Public Sector Information affects the sui generis right of a governmental database or whether the restriction on copyright, that has been established in Art. 5 (3) lit. e of the InfoSoc Directive, can be applied to the database right.

The ECJ was supposed to end that discussion by delivering a preliminary ruling. Thus, it is a pity that BGH withdrew its question in May 2008.

The restrictions of the sui generis right
The problems caused by the limited number of restrictions of the sui generis protection for database have been identified by the European Commission, too. In its Green Paper on ”Copyright in the Knowledge Economy” it raises concerns about the fact that there is no exception provided for people with a disability.

According to the Commission, the exception in Art. 5 (3) lit. b of the InfoSoc Directive could be undermined by invoking database protection on the basis that a particular literary work is simultaneously protected as a database.

Ultimately, this example only illustrates that the InfoSoc Directive and the Database Directive are not matched to each other; Art. 1 (2) lit. d of the InfoSoc Directive rules that it should not affect the provisions of the Databases Directive.

However, the problem does not only affect people with a disability. For example, there is no exception for citation in Art. 9 of the Database Directive.

If the results of the latest research are ”substantial parts of a database”, they cannot be discussed without the permission of the maker of the database. And what happens to temporary acts of reproduction of contents of a database? The Database Directive does not include an exception comparable to Art. 5 (1) of the InfoSoc Directive.

The judgment of March 2009
In the case ”Apis-Hristovich EOOD./.Lakorda AD” the ECJ was given the chance to put things right. There the question arose to what extent a collection with official data included is granted sui generis protection by the Directive. Hence the case provided a new opportunity for a discussion of the scope of its exceptions.

Above all, the case also covered questions concerning the scope of the exclusive rights of the maker of a database. Therefore the ECJ was able to define the subject matter of the database right.

It delivered the judgement on March 5th 2009. But again it has only confirmed its previous decisions without bringing forward new solutions for the issues being discussed.

Thus, the Commission still has to wait for the desired clarification of the circumstances of sui generis protection for databases.

Judgments by the Court of Justice of the European Communities (ECJ)
C-46/02 (National Court / Finland: Fixtures Marketing Ltd v. Oy Veikkaus Ab)
C-338/02 (National Court / Sweden: Fixtures Marketing Ltd v. Svenska Spel AB)
C-444/02 (National Court / Creece: Fixtures Marketing Ltd v. Organismos prognostikon agonon podosfairou AE (OPAP))
C-203/02 (National Court / the United Kingdom: The British Horseracing Board Ltd (BHB) ym. V. William Hill Organization Ltd )
C-304/07 (National court / Germany: Direct Media v. Universität Freiburg)
C-215/07 (National Court / Germany: Verlag Shawe v. Sächsisches Druck- und Verlagshaus)
C-545/07 (National Court / Bulgaria: Apis-Hristovich EOOD v. Lakorda AD)

You can search for ECJ case on the web site of the Court
( or in Eur-lex:


EC legislation and documents

The web site ”Protection of Databases” on the home page of the European Commission / Internal Market / Copyright:

”InfoSoc Directive”:
Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society
OJ L 167, 22.6.2001, p. 10-19

Public Sector Information Directive (PSI)
Directive 2003/98/EC of the European Parliament and of the Council of 17 November 2003 on the re-use of public sector information
OJ L 345/90, 31.12.2003

Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases
OJ L 77, 27.3.1996, p. 20-28

The Commission of the European Communities: Green Paper – Copyright in the Knowledge Economy. (COM(2008) 466/3)