30 April 2010
Mouth-watering footy fixtures may come as a matter of routine for sports fans, but their preparation involves very significant labour and skill, so the court found. The English High Court confirmed in a recent judgment (Football Dataco Limited & Others v. Brittens Pools Limited & Others  EWHC 841 (Ch)) that the football fixture lists of the English and Scottish football leagues are entitled to "database copyright" under the English law.
Although the Hong Kong copyright regime for databases and works of compilations is quite different from its English counterpart, the English decision casts light on several key common concepts which could be of high persuasive value to Hong Kong courts.
In England, a compilation of data may attract copyright (either as "database' or as "table or compilation other than a database") under the Copyright, Designs and Patents Act 1988 ("Act") and/or the sui generis database right under the European Database Directive. Hong Kong does not recognise the sui generis database right but gives copyright to a compilation of data, which by reason of the selection or arrangement of its contents constitutes an intellectual creation. The key criteria of "selection", "arrangement" and "intellectual creation" are borrowed from the Act.
In the Football Dataco case, the plaintiffs are the organisers of the English and Scottish football leagues and the creators of the fixture lists. The defendants utilise those fixture lists without a licence. The English High Court was asked to determine what if any rights subsist in those lists.
The judgment relates the many ground rules and considerations in setting the fixtures. For example, for the English leagues, no club shall play three consecutive home or away matches, and at all times during a season each club should ideally have played an equal number of home and away matches. Considerations must also be given to specific requests for geographical or security reasons.
In a nutshell, the court rejected that the fixture lists enjoyed the sui generis database right. The Database Directive requires a substantial investment in either the obtaining, verification or presentation of the contents. Although the preparation of the lists requires substantial efforts, those efforts go into the "creation" rather than the "obtaining, verification or presentation" of the contents of the database. The fixture lists are thus not protected in this way.
However, the court found that the lists are entitled to database copyright under the Act. To qualify for this copyright, the database has to be original by reason that the "selection or arrangement" of the contents constitutes the author's own "intellectual creation". The court found for the plaintiff:
- "Selection or arrangement" can include the creation of the data. The court found that there was undoubted selection and arrangement in the choice of dates and the decisions as to which match is played on which date.
- The selection and arrangement concerned amount to the author's own intellectual creation. Although the notion of "intellectual creation" entails some "subjective" contribution in the sense that the author must have exercised judgment, taste or discretion in the selection or arrangement, it does not require the reader of the database to be able to identify the author.
On the facts, the court was satisfied that there were numerous stages in the process where the responsible individuals exercised judgment and discretion in the allocation of matches to dates and the selection of dates. The court seemed to accept that although computers were used as a supporting tool, such use did not eliminate the exercise of judgment and discretion. Indeed the court found that the relevant individuals invested very significant labour and skill in balancing and prioritising the often competing requirements of setting the fixtures. The process is not something which everyone would come up with the same answer.
Implications to Hong Kong
Although the wording of the Copyright Ordinance is not identical to that of the Act, it is generally thought that the "intellectual creation" criteria is higher than the originality threshold for other literary work. However, there has not been much judicial guidance as to how much higher this standard is. The Football Dataco judgment gives good guidance to Hong Kong courts on what might suffice.
While the judgment is confined to English and Scottish football league fixtures, the underlying rationale can equally apply to other works of compilations, for example, financial indices, directories, betting coupons, credit databases, etc. This decision should therefore not just interest the football-mania but indeed all businesses which create or use databases.
Over the years, JSM has advised a broad range of clients, including those in the banking and entertainment sectors, on licensing matters involving works of compilations.
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