For most mailing lists, qualifying for “database right” has been the best hope of protection from unauthorised use ever since copyright for lists was largely abolished. A recent case illustrates the importance of database right for marketers, as Stephen Groom reveals in his speed read “bullet report”.
Topic: Direct marketing
Who: Beechwood House Publishing Ltd v Guardian Products Ltd & Anor
Where: Patents County Court, England
Law stated as at: 5 September 2011
- Medical supply specialist Guardian ("GP") obtains from Precision Direct Marketing ("PDM") 8,363 records of practice nurses in UK (the "List")
- PDM got the List from Bespoke Database Organisation ("BDO")
- BDO got the List from Binley's by way of a single usage licence
- The List contained "seed" names planted by Binleys
- The seeds received the GP mailing
- Binley's sued for database right infringement
- Was the Binley's list protected by database right under the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032)?
- If so, had GP and PDM infringed that right?
- the work involved in compiling the database including sending 13,000 questionnaires fulfilled the "substantial investment" requirement
- 6000 nurse records in the List which came from the 43,000 records in Binley's list were a substantial part of Binley's list
- database right infringed by
- PDM and GP loading the List onto their computers and
- GP printing nurse names and addresses in the List onto letters for the GP mailing
Why this matters:
Since the "sui generis" database right was introduced in the UK in 1997 by way of the Copyright and Rights in Databases Regulations 1997, cases in which databases have been held by UK judges to jump the high hurdle set by the Directive and qualify for the EU-created "database right" have been few and far between.
With the vast majority of databases also deprived of copyright protection, this has not looked good for the marketing industry, but this case shines a ray of hope and confirms that protection will be available if evidence can be produced that sufficient investment in terms of expense and effort has gone into creating the database in question.
The judgment does not deal with the level of damages awarded, which may be left to a further hearing. We will monitor developments and report any news on this if and when it materialises.