Facts
This case was reported in the last edition of Masons Computer
Law Reports ([2001] Masons CLR 79). In the High Court Laddie
J. held that William Hill had infringed the database rights of the
British Horseracing Board (“BHB”), in that William Hill’s use of
the information contained in BHB’s annual fixture database for its
website business was an extraction or re-utilisation of a
substantial part of the database, contrary to Article 7(1) of the
directive on the legal protection of databases (“the
Directive”). Alternatively, William Hill’s actions were held
to be infringing by virtue of its repeated and systematic
extraction or re-utilisation of insubstantial parts of the contents
of the database, contrary to Article 7(5) of the Directive.
BHB was granted an injunction restraining William Hill from using
the content of the database for its internet business.
William Hill appealed against the decision. The appeal was
on the basis, amongst others, that (1) the Court had not considered
the fact that William Hill only used the information contained
within the database, it did not copy or use the form of
the database (i.e. the “database-ness”) in any way; and,
(2) the interpretation of the database right by the High Court gave
an excessively wide protection to databases. William Hill
made specific reference to other EU jurisdictions (Sweden and the
Netherlands) where a narrower approach to the Directive had been
adopted.
Judgment
The Court of Appeal overturned the injunction granted to BHB as
a result of William Hill’s acquisition of a licence allowing it to
use the database information for its website business.
Further, the case was referred to the European Court of Justice
(“ECJ”), by way of an Article 234 reference, for its interpretation
of the Directive. This is the first time the ECJ will be
required to consider the Directive.
The specific questions to be referred to the ECJ are due to be
drafted shortly.
Commentary
This is a good opportunity to set out the procedure involved in
an Article 234 reference (formerly an Article 177 reference).
This article of the Treaty of Rome permits any court or tribunal
of a Member State to make a reference to the ECJ if it believes
that a decision on (a) a question of interpretation of the Treaty
of Rome, (b) an act of an institution of the European Union, or (c)
an act of those statutory bodies established by the Council, is
necessary to enable it to give judgment.
Once a court makes an Article 234 reference it is usual for the
proceedings to be stayed pending the ECJ judgment. The
specific questions are agreed between the parties to the action and
are forwarded, along with the Court Order, to the Registrar of the
ECJ. Information regarding the reference is published in the
Official Journal of the European Communities and the matter is
translated into the various community languages. Once
translated the reference is assigned to a Judge Rapporteur and an
Advocate General. Interested parties are then invited to
submit written observations suggesting how the ECJ should deal with
the reference.
In a Preliminary Report, the Judge Rapporteur questions whether
the procedural formalities of referral have been satisfied, in
which event a Report for Hearing is prepared which includes a
summary of the facts/history of the case and any written
observations received. An Oral Hearing takes place
subsequently where the parties remind the ECJ of key arguments,
respond to arguments put forward in the written submissions, and
reply to questions/concerns raised by the ECJ/Advocate General.
Approximately 1-3 months after the Oral Hearing the Advocate
General will publish his Opinion which sets out a fully discursive
analysis of the issues but which is non-binding. Subsequent
to this (approximately 1-4 months later) the ECJ will deliver its
judgment in open Court. The judgment merely provides guidance
on the law for the national court to apply.
The matter is then referred back to the national court for it to
decide how to apply the ECJ judgment to the facts, and ultimately
make a ruling.
