Jurisdiction: Emission Theory and Database Right

November 20, 2010

The recent case of Football Dataco Ltd & Ors v Sportradar GmbH & Anor [2010] EWHC 2911 (Ch) involved preliminary rulings on applications to the court. Mr Justice Floyd had to consider, in addition to certain technical issues relating to pleadings, an application by the defendants, Sportradar GmbH and Sportradar AG, for an order declaring that the court had no jurisdiction to entertain the claim against them or should decline to exercise any jurisdiction it had. The proceedings concerned infringement of copyright and database right in the claimants’ Football Live service.

Jurisdiction in the case was governed by the Judgments Regulation (Council Regulation (EC) No 44/2001) and by the Lugano Convention. It was common ground that the claimants had to show a ‘good arguable case’ of copyright and/or database right infringement in order to establish jurisdiction. Otherwise the defendants would have to be sued in their states of domicile because that is the primary rule of jurisdiction under the Judgments Regulation and the Lugano Convention.

Copyright and database right are strictly territorial rights. Since no copyright or database right other than UK copyright or database right was claimed, the claimants had to show a good arguable case of an act in the UK which infringes those rights. The defendants submitted that they performed no infringing acts, or indeed any acts at all, in the UK.

Perhaps the most interesting aspect of this ruling concerns the jurisdictional point on database right. Floyd J ruled said that ‘re-utilization’ raised a question of law: ‘Where does “making available to the public all or a substantial part of the contents of a database by … on-line … transmission” occur? Does it occur where the server is situated? Or where the public are? Or in both locations?’ He went on to draw a parallel with rulings in broadcasting cases and ’emission theory’ which provides that the place where the act of broadcast occurs is where the signals are introduced under the control of the person making the broadcast into an uninterrupted chain of communication. Floyd J reached the conclusion that the act of making available to the public by online transmission is committed and committed only where the transmission takes place but the full arguments he weighed in the balance are worth reviewing.

‘Does the emission theory apply in the case of infringement of database right by making available to the public by online transmission? Mr Mellor [counsel for the claimants] submitted that it did not. He submitted firstly that the emission theory made sense in the context of satellite broadcasting, principally because of the approximate coincidence between the footprint of the satellite and the sphere of regulatory influence over the broadcasters, i.e. the European Union. With online transmission the server could be positioned anywhere – and in particular in states which are not party to any international obligations. He was, however, unable to point to any case or travaux preparatoires which indicated this as the basis for the emission theory as it applies to broadcasting. Moreover it is significant that the UK has adopted the emission theory for all wireless broadcasts, not solely satellite broadcasting: see section 6(4) of the Act.

Secondly Mr Mellor submitted that the emission theory would make the right to prevent online transmission worthless, as the server could be positioned in a state where there was no redress. I do not accept that this is the case. The right would prevent transmission or re-transmission in a state to which the Directive applies. Other restricted acts would prevent any further use of the database within the state of reception if the transmission originated from outside the EU.

Thirdly Mr Mellor submitted that the defendants were arguing for a theory which went beyond that which applies to satellite broadcasting, as the defendants need to contend that subsequent communication in the state of reception cannot be prevented. I do not think that is a necessary contention on the part of the defendants on this part of the case. They simply maintain there can be no primary infringement of database right by placing data on a server outside the United Kingdom.

Finally he submitted that to apply the theory would be tantamount to applying a rule of exhaustion as soon as a digital work was published. This was expressly prohibited by Article 3.3 of the Information Society Directive. I do not see how that is the case. There is no question of subsequent infringing acts ceasing to be actionable.

Mr Cuddigan [counsel for the defendants] had arguments the other way based on the wording of the Directives. He drew attention to the fact that it is making the data available which is the restricted act. The public do not in fact have to avail themselves of the database. The act is committed once the data is placed on a server from which it can be accessed.

That submission is supported by the authors of Copinger and Skone James on Copyright 15th Edition in their commentary on communication to the public under section 20 of the Act, at paragraph 7-117:

“Where does the act of making available take place? This will often be a vital point where the transmission has occurred across national boundaries. In principle it resurrects the arguments which existed as to the place where a broadcast should be regarded as occurring. Again, however, since the restricted act is defined by reference to the “making available” of the work, and not its actual transmission or reception, it is suggested that the place where the apparatus is situated and from where access to the work can be obtained is the place where the restricted act occurs.””

Although the words “may access it” add even more force to Mr Cuddigan’s submission, neither side suggested that there was or could be any sensible distinction between the interpretation of making available to the public of the work by an electronic or online transmission in section 20(2)(b) of the Act and Article 3.1 of the Information Society Directive on the one hand and Article 7(2)(b) of the Database Directive and paragraphs 12 and 16 of the Copyright and Rights in Database Regulations on the other.

I have come to the conclusion that the better view is that the act of making available to the public by online transmission is committed and committed only where the transmission takes place. It is true that the placing of data on a server in one state can make the data available to the public of another state but that does not mean that the party who has made the data available has committed the act of making available by transmission in the State of reception. I consider that the better construction of the provisions is that the act only occurs in the state of transmission.’

In the event, though rejecting jurisdiction on primary database infringement, Mr Justice Floyd determined that the court had jurisdiction over the claim for authorising, and joint liability for, copyright infringement and the claim for joint liability for database right infringement.