Jane Lambert reports on a recent High Court judgment that has an impact on database rights and arguably extends the meaning of the term 'database'
Technomed Ltd and Another v Bluecrest Health Screening Ltd and Another  EWHC 2142 (Ch) was an action for infringement of database right and copyright in an electrocardiogram (‘ECG’) analysis and reporting system known as ECG Cloud.
The claimants, Technomed Ltd and Technomed Telemedicine Ltd, had developed the system. The companies supply ECG equipment and use the ECG Cloud to analyse ECG readings and report the results to doctors or health screening companies such as the first defendant Bluecrest Health Screening Ltd (Bluecrest). David Stone, sitting as a Deputy High Court judge, described the operation of the system as follows (at ):
‘the process of using ECG Cloud starts with a mobile ECG machine which takes a reading from a patient. The patient data are then inputted into ECG Cloud through a web-based processing system. The patient data are reviewed by a qualified cardiac physiologist who selects from a range of options from menus. The menus correspond to each ECG variable in a database.’
It was this database in which the claimants claimed copyright and database right. Mr Stone continued (at ):
‘The Database comprises a set of classifications of relevant physical characteristics shown by ECGs (“the Classifications”), such as ventricular rate or PR interval. Ventricular rate is the resting heart rate – with slow or fast heart rates potentially indicating cardiac abnormalities. PR interval is the time an electrical impulse takes to travel from the sinus node to the ventricles – readings outside the normal range for the patient's age can indicate cardiac abnormalities. For each Classification, the Database contains a number of options for how the characteristic tends to manifest in ECG readings (“the Options”). For example, with ventricular rate, the Options are listed as “normal”, “bradycardia” (slow), “tachycardia” (fast) and “uncertain”. Within ECG Cloud, Classifications are presented to users as a series of drop down menus, with the Options comprising the menu items. Associated with each Option is a risk status, or “Traffic Light”, which is intended to reflect best medical practice for ECG screening purposes, and some explanatory text to provide further information to the patient on the ECG reading (“the Patient Definitions”).’
ECG Cloud outputs data in XML in a standardized format that is used to generate a report for distribution to the patient or his or her GP in a graphical user interface with two diagrams of the heart. One of those diagrams shows the flow of blood through the heart while the other shows the flow of electricity through the organ. There is also a diagram of an ECG wave.
The Contract between Technomed and Bluecrest
On 31 Oct 2012, the claimants agreed to supply heart screening services to Bluecrest in a format in which they could be delivered directly to patients rather than their doctors as part of a comprehensive health check. At Bluecrest's request, Technomed emailed Bluecrest with electronic copies of the two hearts diagram, the wave diagram, and a pdf document containing the database, that is, to say the classifications, options, traffic lights and patient definitions described above.
The Breakdown of Relations
Towards the end of 2013, Bluecrest had fallen heavily into arrears and asked the claimants to reduce the costs of their services from £5.25 per ECG to £4.00. Technomed's response was to stop supplying ECG reports to Bluecrest for a while but they later offered Bluecrest a new contract with ECG reports at a lower price. By that time, however, Bluecrest had found the second defendant, Express Diagnostics Ltd, trading as ‘Cardio Analytics’ (Express) and had agreed to transfer its business to that company.
The learned judge noted (at ) that, although Express's system operated very differently from Technomed's, the output was almost identical. Express and Bluecrest made a conscious decision to match closely the wording used by the Technomed companies and early reports included verbatim or almost verbatim the two hearts diagram, the wave diagram, classifications, options, traffic lights and patient definitions relevant to that patient drawn from the materials that had been sent by Technomed. Following a letter from Technomed warning Express not to infringe its intellectual property rights, Express and Bluecrest began to rewrite their reports dropping the diagrams and much of the text.
Proceedings were issued in March 2015 in which the Technomed companies claimed infringement of:
They claimed the usual remedies for copyright and database right infringement including additional damages under s 97(2) of the Copyright, Designs and Patents Act 1997. Bluecrest and Express denied the subsistence of copyright or database right and, in some cases, infringement while Bluecrest also counterclaimed for breach of the 2012 contract.
At a case management hearing, Mrs Justice Proudman identified a list of issues for trial which were later reduced by agreement to 18. The counterclaim was severed from the claim with a direction for the intellectual property issues to be tried first and for the counterclaim to be heard on another occasion.
Subsistence of Database Right
The first question for the judge was whether the classifications, options, traffic lights, patient definitions and other matter that the claimants had emailed to Bluecrest constituted a database within the meaning of Article 1(2) of the Database Directive (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)).
and concluded that they did constitute a database.
Counsel for the claimants had submitted that a database need not have a complex structure or be large or have a sophisticated method of indexing. He submitted that the spreadsheet met the definition, as did the pdf form of that document. The defendants approached the question slightly differently. They focussed on the pdf form of the spreadsheet, arguing that whilst it is a collection of independent materials, those materials are not separable from one another without their informative values being affected. The defendants argued that a pdf can never be a database as it is more like a photograph than a database.
The judge disagreed. The spreadsheet importantly linked a classification, an option, traffic lights and a patient definition. Individual classifications were accessible, either by reading the pdf with the human eye, or accessing the spreadsheet electronically. As for the point that the pdf was static, there was nothing to prevent the recipient from re-typing the data into another spreadsheet.
He concluded (at ):
‘The Database is a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means. In my judgment, it is a database within the meaning of the Database Directive.’
That did not, of course, mean that database right automatically subsisted in those materials. Article 7(1) of the Directive requires substantial investment in the obtaining, verification or presentation of the contents of the database. Counsel for the claimants reminded the judge of the time and effort spent by their management on compiling the database which, the judge agreed, was substantial.
He held (at ):
‘There has been substantial investment in the obtaining and verification and presentation of the contents of the Database, assessed qualitatively. Technomed has sought to prevent extraction and/or re-utilisation of the whole or a substantial part of the contents of the Database. In my judgment, sui generis database right subsists in the Database.’
Infringement of Database Right
Mr Stone reminded himself that a database right is infringed when its contents have been extracted or re-utilized and that ‘extraction’ and ‘re-utilization’ are defined in Article 7(2) of the Directive. He found that the database had been copied in its entirety. As copying connoted the permanent or temporary transfer of the contents of the database to another medium, it followed that those contents had also been extracted. Moreover, each and every time those contents had been copied, there was also a repeated extraction of those contents within the meaning of Article 7(5). He, therefore, found that the database right subsisting in the materials that he had held to be a database had been infringed.
Copyright in the Database
Having found that those materials constituted a ‘database’ for the purposes of database right, it followed that they must also be a ‘database’ for the purposes of copyright. As he had also found that those contents had been copied, it followed that the copyright had been infringed unless he could be persuaded that they were not original (that is to say, the author's intellectual creation|) within the meaning of Article 3(1).
The judge reminded himself of Mr Justice Floyd's four-step test for database copyright in Football Dataco Limited v Brittens Pools Limited  EWHC 841 (Ch):
‘It seems to me that the task for the court is as follows:
i) Identify the data which is
collected and arranged in the database;
ii) Analyse the work which goes into the creation of the database by collecting and arranging the data so identified, to isolate that work which is properly regarded as selection and arrangement;
iii) Ask whether the work of selection and arrangement was the author's own intellectual creation and in particular whether it involved the author's judgment, taste or discretion;
iv) Finally one should ask whether the work is quantitatively sufficient to attract copyright protection.’
Applying that test and considering the evidence of the claimants on the collection and arrangement of the database, he was satisfied that the originality test had been cleared. It followed that the copyright subsisting in the database had been infringed.
The judge added (at ) that if he was wrong to find that copyright subsisted in the database as a database then copyright would subsist in the pdf file as a literary work and that such copyrights would be infringed.
Mr Stone found that copyright subsisted in the XML format not as a program but as a literary work, that it had been copied and had therefore been infringed. He was not, however, persuaded that the format or indeed the database was a preparatory work for a computer program.
Copyright in the Explanatory Materials
The judge found that the explanatory materials were a copyright work, that they had been copied and that the copyright subsisting in those works had been infringed. It had been argued that they had been copied from an antecedent work by Boston Scientific but, while there was indeed some similarities between those works, they were not enough to exclude a finding of originality.
Much the same arguments were made as for the explanatory materials and the decision was the same. Mr Stone found that copyright subsisted in those definitions and it was conceded that there had been copying, at least until July 2014. His lordship found that there had been several amendments and that the latest explanatory materials did not infringe.
The judge found that the diagrams were original artistic works in which copyright subsisted and they had been copied.
Finally Mr Stone held that the copying of the diagrams and explanatory materials had been flagrant within the meaning of s 97(2) of the CDPA since there was a deliberate decision to copy Technomed's work. There was, however, no other evidence of scandalous conduct or deceit to the same extent.
This is a very careful and thorough judgment. Its importance lies in the discussion of what constitutes a database for the purpose of Article 1(2) of the Directive. Mr Justice Arnold had cast the net quite wide in Forensic Telecommunications. In finding that a pdf file could be a database Mr Stone appears to have cast it even further. Having said that, the language of Article 1(2) is quite wide ranging and Fixtures Marketing invites a broad interpretation. In this case, the claimants were able to use database rights to protect a user interface for which purpose it could prove to be a very useful tool.
Jane Lambert is a barrister practising intellectual property, technology, media, entertainment and competition law from 4-5 Gray's Inn Square. This is an edited version of an article which first appeared as a blog post on the NIPC blog.