Protection by the sui generis right of databases

Almost two years after the study carried out by the European Commission for the evaluation of Directive 96/9 /CE raising the question of its abolition because of the legal uncertainties it would create, this judgment implements the legal regime, in a clear and didactic way, and thus restores a certain vigor to the sui generis right of database producers.

Following a partial contribution of assets agreement  of June 28, 2011 concluded with the company SCM France (now Schibsted France), the LBC France company operates the Internet site "leboncoin.fr" on which can be published small online ads, including real estate, listed and classified by regions, as well as by categories. The company Entreparticuliers.com operates a website that offers individuals an advertisement hosting service mainly for real estate. Within the framework of its activity, the latter has subscribed to a real estate freelance service from a service provider, who collects and transmits daily to its professional subscribers new real estate listings published by individuals, especially online.

Believing that the implementation of this process was a total, repeated and systematic extraction from the database properties of its website about which many users had complained, the LBC company invoked a bailiff's report of the “entreparticuliers.com” website relating to the proportion of advertisements selected at random. The LBC company then filed a suit against the company Entreparticuliers.com prohibiting these practices and compensation for the damage suffered, on the basis of the infringement of the sui generis right of database producers of Articles L. 341-1 and L.342-2 of intellectual property code.

The Paris Tribunal de Grande Instance granted its requests: the court considered that (i) the website "leboncoin.fr" constituted a database in the sense of article L.112-3 of the intellectual property code of which LBC France is the producer, and (ii) that by proceeding with the extraction or the repeated and systematic reuse of qualitatively or quantitatively substantial parts of the LBC database content, the company Entreparticuliers.com had infringed its right as producer of the database.

On appeal, in addition to requesting the inadmissibility of the requests made by LBC France for the “real estate” sub-database, the Entreparticuliers.com company attempted to deny to LBC France the two essential criteria for recognition of the right of database producers, which are the initiative and the risk taken by the producer and the substantial financial, material or human investment.

Moreover, they denied any extraction or reuse of disputed data. The court did not agree.

The quality of database and sub-database producer

Article L. 341-1 of the Code of intellectual property defines the database producer as "the person who takes initiative and risk of the corresponding investments ”. In the present case, the company Entreparticuliers.com contested the quality of database producer of the company LBC France, on the grounds that the company LBC France would not have taken any initiative, nor run the slightest risk in producing the database, since it had been constituted by the SCM France company prior to the registration of LBC France. The Entreparticuliers.com company claimed that LBC France had a purely technical, automatic and passive role, which would be incompatible with that of a database producer.

The court refutes this argument and considered that although the database had been created by another company, all risks have been assumed and all related investments were supported by the company LCB France since August 2011 following the conclusion of a partial contribution of assets agreement. In addition, the court affirms that the quality of host of the company LBC France is not incompatible with the protection of the sui generis right of the database producer since the operations of verification of the announcements carried out at the time of the constitution of the database and its operation can be established. Consequently, the court considers that the LCB France company can take advantage of the quality of database producer according to article L. 341-1 of the intellectual property code, provided that it can prove a substantial investment.

Thus, several owners may claim protection by the right of a database producer on the same basis as long as they can demonstrate that each has made substantial investments on that basis. In addition, there is no incompatibility between the quality of host and that of a database producer.

If the quality of host within the meaning of article 6-I-2 of the law of June 21, 2004 implies that it exercises a role that is “neutral, and that its behavior is purely technical, automatic and passive , implying the absence of knowledge or control of the data it stores”, this role does not exclude verification operations intended “for ensuring the reliability of the information contained in the database, for the control of the accuracy of the elements searched, during the constitution of this database as well as during its operation period”.

On the contrary, the databases protection by the sui generis right would probably be excluded if the LBC France company had played an active role during the creation of the database, since the protection is excluded when the verification operations are carried out “during the creation phase of elements subsequently collected in a database do not fall under this notion”.

Substantial financial, material or human investment

In addition to the quality of producer, the protection by the sui generis right offered by Article L. 341-1 of the Intellectual Property Code is based on the notion of investment: the producer "benefits from content protection when its constitution, verification or presentation attests to a substantial financial, material or human investment”. In application of this text, the investment must be assessed at several levels.

In the present case, the court successively examines whether the constitution, verification or presentation of the database contents actually attests to a financial investment.

Investments related to the constitution of the content of the database

Firstly, the substantial investment may be related to obtaining the database contents. As the court noted, the CJUE clarified the notion of investment linked to obtaining the database content in four judgments delivered on November 9, 2004.

Thus, the CJEU indicated that "the notion of investment linked to obtaining the content of a database should be understood as referring to the means devoted to the search for existing elements and their gathering in said database". The substantial investment to be taken into consideration is therefore distinct from "the means implemented for the creation of the constituent elements of a database".

The court held in this case that the elements produced by the LBC France company - namely investments in communication and investments for the storage of content - constitute "financial, material and human investments, which contribute to the collection of data, allow their sorting and storage in order to promote their accessibility when they are put online”. They therefore deserve to be taken into account under Article L. 341-1 of the Intellectual Property Code.

Investments related to the verification of the database content

The substantial investment may then be made to verify the content of the database. The notion of investment linked to the verification of the content must thus, according to the court adopting the interpretation given by the CJUE, "be understood as targeting the means devoted, in order to ensure the reliability of the information contained in the database, to check the accuracy of the elements sought, during the constitution of this database as well as during the period of operation of this one”. The substantial investment to be taken into consideration is therefore distinct from the checks related to the creation of the data.

In the present case, the court considered that the company LBC France had made a substantial investment concerning the verification of the contents of the database and the sub-database, consisting in the establishment of technical teams made up of employees and service providers carrying out moderation and reporting activities, notably through software support.

Investments related to the presentation of the contents of the database

Finally, the substantial investment may lie in the presentation of the contents of the database. In this context, the investment corresponds to "means aimed at giving said database its information processing function, namely those devoted to the systematic or methodical arrangement of the elements contained in this database as well as to the organization of their individual accessibility”.

In the present case, the court considered that the company LBC France justified substantial investments concerning the presentation of the database and the sub-database, because of the establishment of a team and the use of service providers responsible for the definition, maintenance and development of categorization rules.

The successive analysis of the financial, material and human investments made by the company LBC France concerning the constitution, the verification and the presentation of the database allowed the court to conclude that they are "substantial within the meaning of the Articles L. 341-1 and L. 342-5 of the Intellectual Property Code, due to their nature and their amounts”. It therefore confirmed the judgment that the "leboncoin.fr" website constituted a copyrightable database. In addition, the court held that the company LBC France justified specific investments in the constitution of the "real estate" sub-database, linked in particular to the purchase of an online real estate advertisements site, thus allowing it to benefit from protection by the sui generis right.

The distinction between the different types of investments by the court follows on from the "Ouest France" judgment rendered by the Court of Cassation in 2009 in light of the decisions of 9 November 2004 of the CJEU11. Since this judgment, the French judges have verified, as in the present case, that the criteria laid down by European case law are rigorously respected. As previously recalled, the Court of Justice considers in particular that the investments devoted to the creation of data are not relevant in determining the eligibility of a database for protection by the sui generis right. Consequently, the sui generis right does not make it possible to protect so-called "spin-off" databases, that is to say those which are the sole result of a main activity, which has a considerable impact on the data economy and raises the question of a clarification of the sui generis right.

In addition, it is interesting to put the present case into perspective with the aforementioned "Ouest France" judgment, since these two judgments are rendered in the area of ​​real estate advertisements. In the “Ouest France” judgment, the Court of Cassation had in fact ruled in favor of the Court of Appeal for having decided that the company which created the ouestfrance.com site on which real estate advertisements are published could not benefit from the provisions relating to the sui generis right in the absence of substantial investments in the constitution, verification or presentation of the contents of the database: "after having first of all noted that the investments invoked, if they were significant, also concerned sectors other than that of real estate and other entities, so that they could not be assigned to the single sector of the database, the judgment notes that the latter consists of announcements formalized by the Precom company when entering them for the purposes of publication and according to the indications that the advertisers have been invited to provide to allow their use and classification, that no verification of the content of these advertisements, except manifest illegality or inconsistency, is not and cannot be carried out, the said company not being authorized to do so; that in view of these findings and assessments showing that the resources devoted by the company Precom for the establishment of real estate advertisements published in the various editions of the newspaper Ouest France did not correspond to an investment linked to the constitution of the database in which they were integrated but to the creation of the constituent elements of the content of this database and to purely formal verification operations during this creation phase”. Likewise, in a “Seloger.com” judgment rendered in 2015 also relating to real estate advertisements, the Court of Cassation quashed the judgment appealing to the visa of article 455 of the code of civil procedure for having determined "by a reason which does not allow to define whether it considered that the investments related to the collection of data and their dissemination, as collected, fell within the creation of the constituent elements of the content of its database and therefore should not be taken into consideration or if, on the contrary, they were part of the "specific" investments of which the company Pressimmo had to provide proof in order to justify the protection it requested".

By characterizing the substantial investments of the company LBC France in the constitution, the verification or the presentation of the contents of the database and the sub-database and not in the creation of the constituent elements of the contents of this database, the court of appeal of Paris thus meets the requirements set by the CJEU and the Court of Cassation to determine the eligibility of a stocking data protection under the sui generis right.

Substantial extracts and re-uses of the content of a sub-database

Article L.342-1 of the Intellectual Property Code gives the database producer the power to prohibit two types of acts: the extraction or re-use of a qualitatively or quantitatively substantial part of the content of a database.

In application of the code, the extraction is carried out "by permanent or temporary transfer of all or a qualitatively or quantitatively substantial part of the content of a database on another medium, by any means and in any form".  As recalled by the court in the commented judgment, the CJEU specified that the extraction corresponds "to the transfer of a substantial part, evaluated qualitatively or quantitatively, of the content of the protected database or to transfers of non-substantial parts which, by their nature repeated and systematic, would have led to reconstituting a substantial part of this content”. The proof of extraction can be based on the constitution of a body of corroborating clues.

Reuse is achieved "by making available to the public all or a qualitatively or quantitatively substantial part of the content of the database, whatever the form". The CJEU, cited by the court, was able to specify that reuse “is characterized by a series of successive operations, going, at the very least, from the posting of the data concerned on the said site for the purposes of their consultation by the public to the transmission of this data to interested members of the public”.

Finally, the prohibitions provided for in Article L.342-1 of the Intellectual Property Code imply that the extraction or reuse relates to a qualitatively or quantitatively substantial part of the content of a database. As such, the CJEU considers that the notion of "substantial part" assessed quantitatively must be assessed with regard to the volume of data extracted and / or reused from the database compared to the total volume of the database. At the same time, it considers that the notion of "substantial part" assessed qualitatively must be assessed in relation to the importance of the investment linked to the constitution, the verification or the presentation of the content of the base object of the extraction or reuse.

In the present case, the company LBC maintained that the company Entreparticuliers.com engaged in qualitatively substantial extractions and re-uses of its database and of its “real estate” sub-database, both because of the contract concluded by the latter with its provider only of the extraction with indexing of the practiced advertisements. On the contrary, Entreparticuliers.com maintained that it had neither extracted nor reused the data.

The court considered, in the light of a bundle of concordant clues, that the company Entreparticuliers.com had indeed proceeded to the extraction and the reuse of a qualitatively substantial part of the contents of the "real estate” sub-database of the company LBC France, justifying its order to cease these acts and repair the damage suffered by the company LBC France.

The judgment handed down by the court of appeal thus confirms the protection by the sui generis right of sub-databases. The CJEU indeed affirmed in the Apis-Hristovitch judgment that a "sub-group" of a database could be eligible for protection by the sui generis right subject to meeting the conditions set out in Article 7., paragraph 1, of Directive 96/9 - that is to say, on condition of demonstrating a qualitatively or quantitatively substantial investment in the constitution, the verification or the presentation of the sub-database. As soon as a sub-database is eligible for protection by the sui generis right, the volume of elements allegedly extracted and / or reused from this sub-database must then be compared to the volume of the total content of this sub-database to be considered as relating to a quantitatively substantial part. In the absence of protection of the sub-database, the volume of elements extracted and / or reused must be compared to the total database.

The possible protection of a sub-database on the basis of the sui generis right is thus confirmed by this judgment. This decision also condemns an increasingly widespread practice on the internet, web scraping, which consists of extracting content from websites, via a script or a program, in order to reuse it in another context, such as SEO. However, information accessible on the Internet is not necessarily freely reusable. In addition to contractual mechanisms linked to the general conditions of use of the site, it can also be protected by intellectual property law on the basis of the sui generis right of database producers.

Charles Bouffier, counsel attorney and Antoine BOULLET, lawyer at August Debouzy

To learn more about ways to protect your digital assets, you can read our previous article: Registering a logo: an essential step in any business strategy

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