Ipsofactoj.com: International Cases [2002] Part 2 Case 6 [CAEW]


COURT OF APPEAL, ENGLAND & WALES

Coram

William Hill Organisation Ltd

- vs -

British Horseracing Board Ltd

LORD JUSTICE PETER GIBSON

LORD JUSTICE CLARKE

LORD JUSTICE KAY

31 JULY 2001


Judgment

Peter Gibson LJ

(giving the judgment of the court)

INTRODUCTION

  1. On 1 January 1998 a new form of intellectual property right came into existence, database right. It was introduced by the Copyright and Rights in Databases Regulations 1997 which implemented Directive 96/9/EC of the European Parliament and Council. It is common ground between the parties that (save possibly for one point on the definition of "re-utilisation") the Regulations duly implemented the Directive. In consequence the parties have presented their arguments by reference to the contents of the Directive and little attention has been paid to the Regulations.

  2. This case is the first to come before the English courts on database right. The Claimants, the British Horseracing Board Ltd. ("BHB"), the Jockey Club and Weatherbys Group Ltd. ("Weatherbys"), complain that the database right which they claim to own has been infringed by the Defendant, William Hill Organization Ltd. ("William Hill"). At the trial of the action Laddie J. upheld the Claimants' claim and granted them a permanent injunction against infringement of that right by William Hill. With the permission of the judge William Hill now appeals to this court.

    THE FACTS

  3. The background facts have been stated with exemplary lucidity by the judge in his judgment and we need only summarise the salient facts to make this judgment intelligible.

  4. BHB is the governing authority for the British horseracing industry. Its members (the Jockey Club, the Racecourse Association Ltd., the Racehorse Owners Association and the Industry Committee (Horseracing) Ltd.) are organisations representing various aspects of horseracing. It was set up in June 1993 to take over some of the administrative functions of the Jockey Club, but leaving the Jockey Club retaining the principal regulatory function within British horseracing. BHB is concerned with the creation of the fixture list for each year's racing, weight adding and handicapping, supervision of race programmes, producing various racing publications and stakesbooks and compiling data related to horseracing. In 2000 there were 1209 race meetings scheduled to be held at 59 racecourses on 327 days of the year with 7,800 races. That year there were 175,000 entries for races and 80,000 declarations to run and declarations of riders. At any one time there are 15,000 horses in training, 9,000 active owners and 1,000 trainers. Each owner must have registered unique racing colours in which his horses will run. In 1985 Weatherbys on behalf of the Jockey Club started to compile an electronic database of racing information comprising (amongst other things) details of registered horses, their owners and trainers, their handicap ratings, details of jockeys, information concerning fixture lists comprising venues, dates, times, race conditions and entries and runners. Since June 1993 the task of maintaining and developing the database has been carried out by Weatherbys on behalf of BHB in consequence of various assignments and agreements.

  5. The database is constantly updated with the latest information, and the scale and complexity of the data kept by BHB have grown with time. The judge said that there was no substantial challenge to the pleaded assertions by BHB that the establishment of the database, at considerable cost, has involved, and its maintenance and development continue to involve, extensive work including the collection of raw data, the design of the database, the selection and verification of data for inclusion in the database and the insertion and arrangement of selected data in the database, the annual cost of continuing to obtain, verify and present its contents being approximately 4,000,000 and involving approximately 80 employees and extensive computer software and hardware.

  6. There is a huge amount of data accumulated over the years in the database, including details of over one million horses. The database contains pre-race information for each race, covering the place and date on which the meeting is to be held, the distance over which it is to be run, the criteria for eligibility to enter the race, the date by which entries are to be made, the entry fee payable, the initial name of the race and the like. Close to the day of a race, that information is expanded to include the time at which the race is provisionally scheduled to start, the final name of the race, the list of horses entered, the owners and trainers and the weight each horse has been allotted to carry. The final stage of the pre-race information contained in the database includes the list of declared runners, their jockeys, the weight each will carry (which may differ from the allotted weight for a number of reasons), its saddlecloth number, the stall from which it will start and the owner's racing colours. After the race, details of the outcome are recorded. An estimated total of 800,000 new records or changes to existing records are made each year.

  7. A painstaking process of verification of the pre-race information is undertaken to ensure its complete accuracy and reliability. Thus in the case of declarations made by trainers by telephone, the conversations are tape-recorded and replayed and checked by an operator other than the one who took the call against an audit report produced by the computer.

  8. The cost of running the database is a little over 25% of BHB's total annual expenditure of 15,000,000. BHB is self-funding. Part of its income is derived from fees charged to third parties for use of information contained in the database, currently yielding an annual income of 1.2 million. Thus only a little over one third of the cost of maintaining the database is recouped by fees.

  9. The racing information contained in the database is of interest to a wide variety of persons. First, essential extracts are made available to the participating elements of the racing industry, such as racecourse owners, racehorse owners, trainers, jockeys and their agents, by way of a Weatherbys/BHB internet website, by a database site on the Prestel network and by BHB's official journal, the Racing Calendar. The information is of interest to radio and TV broadcasters, to publications such as the Racing Post and other newspapers, to information services such as Ceefax and Teletext and to members of the public who follow horseracing.

  10. The information, or selected parts of it, is also supplied to other interested parties such as bookmakers. Two methods of distribution are of relevance.

    • First, data are made available to Racing Pages Ltd., a company controlled and owned by Weatherbys and the Press Association jointly. On behalf of BHB Racing Pages Ltd. makes available to subscribers in electronic form, normally on the day before a race, a Declaration Feed containing a list of races, declared runners and jockeys, distances and names of races, race times and numbers of runners in each race together with other information.

    • Second, an independent company, Satellite Information Services Ltd. ("SIS"), is allowed to use data from the database for certain purposes including for transmission to SIS's own subscribers. SIS provides two relevant services. One is called FACTS (Full Audio and Captions Television Service) comprising television coverage, audio and captions for horserace meetings, the captions usually consisting of the race details and the racecard number of the runners in the first three places. The other is called Raw Data Feed ("RDF"), being information as to details of meetings, races and the list of runners and other related information, all supplied in electronic form.

  11. William Hill is one of the largest bookmakers in the United Kingdom operating some 1,526 licensed betting offices ("LBOs"), as well as telephone betting services and, more recently, internet betting services. In May 1999 it started internet betting on horseracing, originally in limited form, but a comprehensive service was offered on 3 February 2000 from an overseas site and from an English site on 13 March 2000.

  12. William Hill has a licence in writing dated 26 July 1996 from Weatherbys for the Declarations Feed, which it uses for its telephone betting and shop sampling systems and for publication on Ceefax, and pays a monthly fee for this service. It also has a licence in writing from SIS for SIS's FACTS service for which it pays SIS substantial fees. It uses FACTS in displays on TV screens in its LBOs, itself adding information such as betting odds which it produces. It also puts up on the walls of LBOs the betting office display edition of the Racing Post, containing even more information than is displayed on the TV screens. A copy of the news-stand edition of the Racing Post is also available in each LBO. It also pays SIS for and receives RDF. No formal contract has been entered into between SIS and William Hill, which pays SIS's invoices when presented to it. Thus there is no contractual term limiting the use to be made to William Hill of the RDF. However SIS has not purported to sublicense William Hill to use the RDF on its internet site and the judge recorded that it was not in dispute that SIS had no right so to sublicense William Hill.

  13. A very great deal of the information displayed or used by William Hill in its horseracing betting business conducted in its LBOs or through telephone betting is derived from the BHB database. BHB takes no objection to any such use, being of the view that such data are taken with BHB's express or implied consent and that it receives financial compensation, directly or indirectly, for all such data. But objection is taken by BHB to the use which is made by William Hill of certain information displayed on its internet site which comes from the RDF received by it from SIS. Whilst not all the information displayed on the site comes from that service (for example, the betting odds are William Hill's own product), the identity of all the horses in a race, the date and the time of the race and the identity of the racecourse where the race is to be held come from the RDF.

  14. BHB claimed that William Hill has been making use of data from the BHB database in its internet business for which it has no licence, and that such use each day is an extraction or re-utilisation of a substantial part of the contents of the database contrary to Article 7(1) of the Directive. Alternatively it claimed that if each day's use is of an insubstantial part of the contents of the database, William Hill has, by the repeated and systematic extraction and re-utilisation of insubstantial parts of the contents of the database, infringed Article 7(5).

  15. William Hill disputed these claims. Originally at a time when BHB was the sole Claimant, William Hill challenged BHB's title to the database. But with the joinder of the Jockey Club and Weatherbys that defence was not pursued before the judge. But William Hill challenged whether the information obtained from SIS and used by William Hill for its business derived from the BHB database, and it complains before us that the judge did not expressly deal with the arguments it advanced on this point. Its substantial defence was that it neither extracted nor reutilised any part of the contents of the database. It also said that if its activities infringed any rights, it had alternative ways of presenting the information on its internet sites which would avoid any infringement.

    THE DIRECTIVE

  16. At this point it is convenient to refer to the material provisions of the Directive. The mischief which it was designed to meet is clearly set out in the Recitals: databases were not sufficiently protected in all member states by existing legislation (Recital (1)), there were differences in that protection between member states which distorted the functioning of the internal market (Recitals (2) and (4)), and the making of databases involved the investment of considerable human, technical and financial resources, which investment required protection against the unauthorised extraction or re-utilisation of the whole or a substantial part of the contents of the database (Recitals (6), (8), (38) and (41)). The Directive's intention was to give protection to the structure of the database by copyright and to its contents against unauthorised extraction and re-utilisation or both by the new right called "the sui generis right" (Recital (58)).

  17. The scope of the Directive was set out in Article 1:

    1.

    This Directive concerns the legal protection of databases in any form.

    2.

    For the purposes of this Directive, 'database' shall mean a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means.

    The definition (and Recital (14)) make clear that non-electronic databases are included.

  18. Moreover in Recital (17) the intended width of the definition is made plain:

    Whereas the term 'database' should be understood to include literary, artistic, musical or other collections of works or collections of other material such as texts, sounds, images, numbers, facts, and data; whereas it should cover collections of independent works, data or other material which are systematically or methodically arranged and can be individually accessed.

  19. Further in Recital (21) it is stated that the materials which must have been arranged systematically or methodically need not be physically stored in an organised manner.

  20. Chapter II (Articles 3-6) relates to copyright. By Article 3:

    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.

    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.

  21. By 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 authorise:

    (b)

    translation, adaptation, arrangement and any other alteration;

    (e)

    any reproduction, distribution, communication, display or performance to the public of the results of the acts referred to in (b).

  22. Chapter III (Articles 7-11) relates to the new database right. Article 7 is in this form:

    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-utilisation 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-utilisation' 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 resale of that copy within the Community;

    3.

    Public lending is not an act of extraction or re-utilisation.

    4.

    The right referred to in paragraph 1 may be transferred, assigned or granted under contractual licence.

    5.

    The right provided for in paragraph 1 shall apply irrespective of eligibility of the contents of that database for protection by copyright or by other rights. Moreover, it shall apply irrespective of the contents of that database for protection by copyright or by other rights. Protection of databases under the right provided for in paragraph 1 shall be without prejudice to rights existing in respect of their contents.

    6.

    The repeated and systematic extraction and/or re-utilisation of insubstantial parts of the contents of the database implying acts which conflict with a normal exploitation of that database or which unreasonably prejudice the legitimate interests of the maker of the database shall not be permitted.

  23. Thus a condition of the database right is that there should have been a substantial (judged qualitatively or quantitatively or both) investment in the obtaining or the verification or the presentation of the contents of the database. By Recital (40) it is explained that the investment "may consist in the deployment of financial resources and/or the expending of time and effort and energy". Further by Recital (55) it is said:

    Whereas a substantial new investment involving a new term of protection may include a substantial verification of the contents of the database.

  24. Article 9 allows member states to stipulate that lawful users of a database which is made available to the public may extract or reutilise a substantial part of its contents in three cases, one of which is extraction for private purposes of the contents of a non-electronic database.

  25. Article 10 is also of importance, relating as it does to the term of protection. It provides so far as material:

    1.

    The right provided for in Article 7 shall run from the date of completion of the making of the database. It shall expire fifteen years from the first of January of the year following the date of completion.

    3.

    Any substantial change, evaluated qualitatively or quantitatively, to the contents of a database, including any substantial change resulting from the accumulation of successive additions, deletions or alterations, which would result in the database being considered to be a substantial new investment, evaluated qualitatively or quantitatively, shall qualify the database resulting from that investment for its own term of protection.

    The judge's judgment

  26. The judge in his judgment dealt first with the general issue whether the Claimants had proved that William Hill was misusing in a relevant manner parts of BHB's database rather than data obtained from some other, independent, source. The judge noted a concession that relevant information which William Hill had on its websites was derived from the RDF obtained from SIS. He observed that this was identical in content to some of the data supplied to SIS by BHB from the BHB database and that it was identical to the information supplied through Racing Pages in the Declaration Feed which William Hill uses for its telephone betting service. The judge referred to William Hill's argument that because it was possible that SIS obtained the same information from another source, its derivation needed to be proved by the Claimants. The judge thought it only necessary to consider the data relating to declared runners. He considered the evidence of two witnesses, one being Mr. Smith, SIS's company secretary, who confirmed that the data contained in the RDF came from Racing Pages and thus from BHB and concluded that it was virtually certain that the data in the RDF did derive directly or indirectly from the BHB database.

  27. Next the judge considered the issue of infringement by reference to the arguments of Mr. Mark Platts-Mills Q.C. for William Hill under four headings:

    1. What William Hill has used is not a part, in the relevant sense, of BHB's database.

    2. Even if a part, it is not a substantial part.

    3. The use does not amount to an extraction from the database.

    4. It is not a re-utilisation of the database.

  28. On A the judge referred to Mr. Platts-Mills argument that what is protected by the database right is the "database-ness" of the collection of information, that is that the materials are arranged in a systematic or methodical way and are individually accessible, and that any acts which do not make any use of the arrangement of the contents of the database nor take advantage of the way in which the maker has rendered the contents individually accessible cannot infringe the database right. In that sense Mr. Platts-Mills argued that what William Hill used could not be any part of the database. The judge rejected this argument. He said that nothing in the Directive supported Mr. Platts-Mills' submission relating to "database-ness" which ran together two entirely distinct concepts, namely the feature of form which has to exist before a database will be recognised as existing and the features of content or investment which are protected once a database is held to exist. The judge referred to Recitals (38), (39) and (58) as, in his view, making clear that infringement of the new right is not avoided by taking the contents and rearranging them and that what has to be protected is not primarily the form but the investment which went into obtaining, verifying and presenting the contents. He said that what are prohibited are certain kinds of use or manipulation of parts of the contents of the database and that in the absence of anything in the Directive to give "part of its contents" a special meaning, a collection of data taken from the database must be a part of its contents.

  29. On B the judge accepted that substantiality had to be assessed primarily by comparing what had been taken or used with what is in the database, but he said that the importance of the information to the alleged infringer was not irrelevant. He said that the data relating to the races themselves represented the ultimate and crucial information within the database and that William Hill was making use of the most recent and core information in the database relating to racing and taking advantage of the completeness and accuracy of the information taken from the RDF, which he described as "the product of BHB's investment in obtaining and verifying the data". Looking at the matter on both a quantitative and a qualitative basis, he concluded that it was a substantial part of the contents.

  30. On C the judge rejected an argument of Mr. Platts-Mills that extraction meant removal so that it could not be extracted again unless first put back. The judge said all that was required was that a substantial part of the contents be transferred to a new medium.

  31. On D the judge referred to Mr. Platts-Mills' argument that re-utilisation must include telling the public something it does not already know and that the right to restrain use of a substantial part of the database was lost once there was publication of that part to any member of the public. The judge rejected that argument, holding that if the draftsman had intended to cover only first publication, he would have said so explicitly, and that if he had done so it would have undermined the purpose of the Directive, the protection of the investment in making databases.

  32. The judge concluded that William Hill's actions of taking information form the RDF and loading it onto its own computer for the purpose of making it available on its website was an unlicensed act of extracting a substantial part of BHB's database and the subsequent transmission of that data onto its website for access by members of the public was a re-utilisation. Thus the Claimant's rights were infringed in both ways.

  33. The judge then considered the alternative claim under Article 7(5). In addition to William Hill's arguments such as on "database-ness" which the judge had already rejected he considered a further argument by Mr. Platts-Mills based on Article 10(3). The changes made daily to the database as it is updated caused, it was said, a succession of new databases to come into existence, each with its own term of protection. Accordingly, Mr. Platts-Mills submitted that Article 7(5), relating to the repeated and systematic extraction or re-utilisation of insubstantial parts of the contents of "the database", could not be occurring and what was done amounted to taking one insubstantial part of a sequence of different, though interrelated, databases. The judge rejected this argument saying that the Directive had to be construed to make sense, and that there was nothing in the Directive to suggest that it was not to apply to dynamic databases in just the same way as it applied to ones which were built and modified in discrete, well defined steps. He held that the database was a single database which is in a constant state of refinement and that the term of protection for it was constantly being renewed.

  34. The judge also dealt with an argument by Mr. Platts-Mills based on the final part of Article 7(5) that the extraction or re-utilisation by William Hill of insubstantial parts of the database does not conflict with normal exploitation of the database nor does it unreasonably prejudice the legitimate interests of BHB as the makers of the database. The judge rejected this too, saying that William Hill's activities clearly undermined a significant part of BHB exploitation of its database and unreasonably prejudiced its interests in being able to sell its racecard information to others. The judge therefore concluded that William Hill breached BHB's rights under Article 7(5).

  35. Finally the judge dealt with the question whether William Hill would breach BHB's database right if it modified its website in a manner which it had indicated in the evidence of Mr. Michael Ellis on its behalf. It proposed making two changes:

    • first, instead of the time of the race being stated, the number of the race at the meeting could be identified (e.g. "race 2 at Ascot"), and,

    • second, instead of the horses entered for a race being identified by name, they could be identified by their number.

    The judge said (para. 78 of his judgment):

    Database rights protect the unlicensed taking and use of information. What William Hill has in mind involves the manipulation of the same information but its presentation in a different manner . As long as substantially the same information is made available on the website, the same acts of extraction and re-utilization will have taken place.

  36. We are told that at a subsequent hearing the judge considered the form of the order which he would make to give effect to his judgment. He heard argument on whether it was appropriate to grant a permanent injunction in circumstances in which William Hill had agreed to take a licence from BHB conditional on William Hill losing the case, so that there was, it was said, no threat of infringement. But without giving reasons in a further judgment, the judge, by para. 1 of the order, ordered that William Hill "must not infringe the database right in the BHB Database". He also directed an inquiry as to damages for database right infringement and ordered William Hill to pay the Claimant's costs.

    THE APPEAL

  37. William Hill appeals to this court by an appellant's notice containing grounds of appeal in no less than 49 paragraphs supported by an expansive skeleton argument running to 66 pages.

  38. The first point which is taken by William Hill is one not dependent on the construction of the Directive and it is one which, Mr. Platts-Mills says, is determinative of the appeal in William Hill's favour. It is whether the information used by William Hill which it takes from RDF supplied by SIS was proved before the judge to derive from BHB's database. Mr. Platts-Mills complains that the judge merely records in para. 19 of his judgment that it is not in dispute

    1. that the information displayed on William Hill's internet sites (the identity of the horses in the race, the date and time of the race, the identity of the racecourse) is to be found in and comes from the RDF received from SIS and

    2. that the same information is supplied to SIS from the data stored on BHB's computer.

    Mr. Platts-Mills says that that is very different from a conclusion that the information comes from the data stored in the BHB database, let alone that it is data stored on the BHB database. He points out that although para. 4 of the Amended Particulars of Claim defines the BHB Database very widely ("a single collection of data, comprising details of registered horses, the dates that they were born, their individual identity, the names of their owners and trainers and details of their owners' colours and their official handicap ratings, together with information concerning jockeys and information concerning fixture lists, comprising race venues, dates, times, race conditions and entries and runners and other information arranged in a systematic and methodical way and individually available by electronic means"), by further and better particulars the Claimants limited the database by listing all the tables included in it. Mr. Platts-Mills says that there is no evidence that the information used by William Hill went into the database before the information is released to the public, no information technology expert having testified that it came from the identified tables or any one of those tables, and he suggests that the information could have been stored elsewhere.

  39. We cannot accept this very technical argument. Although the judge may not have dealt expressly with Mr. Platts-Mills' argument, there can be no doubt that he rejected it in concluding that William Hill by using the RDF from SIS was using information derived from the BHB Database. Moreover there was material before the judge which entitled him to conclude as he did. In his oral evidence, Dr. Khan, Weatherbys' Director of Racing, said of the information as to the runners in a particular race (Transcript 12 December 2000 p. 53):

    The information is being sent down from the call centre to update the database and it would emanate from the database once the database had compiled the information finally. It would not be possible for the call centre itself to send it off independently.

    As we understand that evidence, once the information as to the declared runners is received by operators at a call centre, it is entered in the database and the computer for the database in due course produces the list of runners for a particular race which is made available to persons like SIS. Thus the list which is produced must be in the database. That is plainly within the pleaded definition of the BHB database. There may be a question as to how the simultaneous creation and publication of the list, which prior thereto did not exist in the database, fit within the scope of the Directive. But that is a question of interpretation of the Directive.

  40. William Hill's arguments of substance go to whether the judge correctly interpreted the Directive. The judge has given a wide meaning to the database right and what it protects. Mr. Platts-Mills says that the effect of the judge's judgment is far-reaching and that it is capable of application to commercial activities far removed from the horserace betting context with which we are concerned. Information which might have been thought to have entered the public domain and to be freely usable might prove to be derived from a database the right in which was protected even though the user was unaware of that ultimate source and right. He drew our attention to certain decisions of the courts of other member states, which appear to have adopted a somewhat narrower approach to database right (notably Fixtures Marketing Ltd. v AB Svenska Spel, Gotland City Court, 11 April 2000, and in the Swedish Court of Appeal, 3 May 2001, and NV Holdingmaatschappij de Telegraaf v Nederlandse Omroep Stichting, Court of Appeal of the Hague, 30 January 2001). He pointed out that there has as yet been no ruling by the European Court of Justice on the interpretation of the Directive. He submits that this court cannot find the relevant provisions of the Directive actes clairs and should make a reference to the European Court of Justice under Article 234 of the Treaty of Rome on a number of matters. He produced 15 draft questions. We will not set them out because in our view many of them are in an inappropriate form for a reference, for example because they assume facts which have not been established or are too general and are not likely to produce a helpful answer. Thus one proposed question was "On what basis must a court of a member state decide whether part of the content of a database is a "substantial part" of the contents of that database, for the purpose of Article 7(1) of the Directive?" Such a question may well be met with the answer taken from the Article, "On a qualitative and/or quantitative evaluation".

  41. The substance of the questions which he suggests is as follows:

    1. Whether "database-ness" is an essential quality for any "part of the contents of the database"?

    2. Whether information in the form of the lists of runners created at the same time as they are published can be a relevant part of the contents of the database?

    3. Does "extraction" or "re-utilisation" involve having access to the database or a copy of it?

    4. Does "extraction" or "re-utilisation" extend to a person who is a subscriber to a service provided by a licensee of the database right owner and who thereby receives part of the contents of the database, and who makes available that part of those contents to the public in the course of his business?

    5. Where there is a constantly updated database, is there a new database separate from the previous database whenever any substantial change has occurred?

  42. Mr. Peter Prescott Q.C. for the Claimants adopted the judge's judgment as part of his submissions. He drew our attention to the high praise which that judgment received in an article by Dr. Jens Gaster, who is a Principal Administrator in the European Commission's Directorate General for the Internal Market and appears to have had a hand in the drafting of the Directive. But the views which Dr. Gaster expresses in that article are his personal views. In contrast Dr. Gaster was very critical of the decision of the Swedish first instance court in Fixture Marketing, and referred to other criticism of the implementation by Sweden of the Directive. However, Dr. Gaster acknowledged that the database right "draws from previous experience with the Nordic catalogue rule" and a Dutch precedent. Mr. Prescott also referred us to a paper which is entitled "The future of the judicial system of the European Union" and which he told us was written by the President of the European Court of Justice in 1998. This made clear the very considerable delays being experienced before references to that court were dealt with as a result of that court being overloaded with work. Mr. Prescott submitted that we should not refer any questions to Luxembourg, each of the relevant provisions of the Directive being acte clair.

  43. It is not in dispute that this court, not being a court of last instance, has a discretion, and we have been reminded of what the European Court of Justice said in CILFIT v Ministry of Health [1982] ECR 3415 at p. 3430:

    16.

    Finally, the correct application of Community law may be so obvious as to leave no scope for any reasonable doubt as to the manner in which the question raised is to be resolved. Before it comes to the conclusion that such is the case, the national court or tribunal must be convinced that the matter is equally obvious to the courts of the other Member States and to the Court of Justice. Only if those conditions are satisfied, may the national court or tribunal refrain from submitting the question to the Court of Justice and take upon itself the responsibility for resolving it.

  44. We have also been referred to the remarks of Sir Thomas Bingham MR in R v International Stock Exchange, ex p. Else Ltd. [1993] QB 534 at p. 545:

    I understand the correct approach in principle of a national court (other than a final court of appeal) to be quite clear: if the facts have been found and the Community law issue is critical to the court's final decision, the appropriate course is ordinarily to refer the issue to the Court of Justice unless the national court can with complete confidence resolve the issue itself. In considering whether it can with complete confidence resolve the issue itself the national court must be fully mindful of the differences between national and Community legislation, of the pitfalls which face a national court venturing into what may be an unfamiliar field, of the need for uniform interpretation throughout the Community and of the great advantages enjoyed by the Court of Justice in construing Community instruments. If the national court has any real doubt, it should ordinarily refer.

  45. If the interpretation question to which this case gives rise had to be determined without the luxury of a reference we think it likely that we would support the conclusions of the judge for the reasons which he explains. But we cannot say that we can resolve the issues with complete confidence nor that there is no scope for any reasonable doubt, still less that the matter is equally obvious to the courts of other member states. We have considered whether it is more appropriate to decide the appeal ourselves and give leave to appeal to the House of Lords so that that court can make the reference if it considers it appropriate. But we think it probable that the House of Lords would refer the interpretation questions to the European Court of Justice and that course would only delay the resolution of the dispute even longer. We add that the points raised are of wide importance and affect not only William Hill but all the other major bookmakers who, we are told, take the same line as does William Hill. We therefore conclude that there should be a reference.

  46. We have not attempted to settle the questions to be referred. We would ask Counsel to cooperate on this and to submit a draft to us, preferably one that is agreed; but if agreement cannot be reached we will have to resolve any dispute. We also ask that Counsel should consider whether the statement of facts in this judgment needs to be supplemented and, if so, to agree what further facts should be provided to the European Court of Justice. There will have to be a further hearing to settle the final form of reference.

  47. Finally, we have considered the question whether it is appropriate that, pending the determination by the European Court of Justice and the resolution by this court of the appeal once the answers to the referred questions have been obtained from Luxembourg, the injunction ordered by the judge should continue.

  48. Mr. Platts-Mills submits that the judge was wrong to grant a permanent injunction both because William Hill had taken the conditional licence with the result that there was no present threat by William Hill to infringe any right of the Claimants and because they are in effect seeking a monetary remedy. William Hill is a substantial company and there is no reason whatever to think that it would deliberately fail to comply with its obligations. For the time being the Claimants have the benefit of the judge's judgment in their favour. They also have the protection of the licence. If, whether because the licence expires and is not renewed or for any other reason, a threat to infringe the Claimants' rights emerges, they can readily return to court for a protective injunction. In the meantime we would discharge the injunction as unnecessary. It will be for consideration when the appeal is finally determined and if the Claimants succeed whether to reimpose the permanent injunction or whether some other remedy such as a declaration would suffice.


Cases

Fixtures Marketing Ltd. v AB Svenska Spel, Gotland City Court, 11 April 2000; Fixtures Marketing Ltd. v AB Svenska Spel, Swedish Court of Appeal, 3 May 2001; NV Holdingmaatschappij de Telegraaf v Nederlandse Omroep Stichting, Hague Court of Appeal, 30 January 2001; CILFIT v Ministry of Health [1982] ECR 3415; R v International Stock Exchange, ex p. Else Ltd. [1993] QB 534

Legislations

Copyright and Rights in Databases Regulations 1997

EC Directive 96/9: Recital (1), (2), (4), (6), (8), (14), (17), (38), (40), (41), (55), (58), Art.3, Art.5, Art.7(1), Art.7(5), Art.9, Art.10

Representations

Mr. Peter Prescott Q.C. and Ms. Lindsay Lane for the Respondents (instructed by Messrs Theodore Goddard of London)

Mr. Mark Platts-Mills Q.C. and Mr. James Abrahams for the Appellant (instructed by Messrs Allen & Overy of London)


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