IPEC dismisses a claim for database right infringement where the Defendant did not submit sufficient evidence to show that the Claimant extracted or reutilised a substantial part of the contents of the database. 

What's it about?

The Kennel Club Limited (the Claimant) operates the Petlog database, which holds data supplied by various companies (including the Defendant Micro-ID Ltd) of animals that have been microchipped (the Database).  

As a defence to a debt claim brought by the Claimant, the Defendant raised a defence of set-off, alleging breach by the Claimant of a database management agreement (Agreement) and infringement of a database right under the Copyright and Rights in Databases Regulations 1997 (CRDR). 

To assess the alleged database right infringement, the IPEC considered who owned the database right in the Database, accepting that the Claimant was the maker of the Database for the purposes of Regulation 14 CRDR. This was because the Claimant had taken the initiative and assumed the risk of investment in the database. On that basis, absent any contractual term to the contrary, the Claimant would be the first owner of the database rights in the Database. 

The Agreement stated "the Data on the Database…shall be jointly owned by the [Claimant] and [Defendant]". Accordingly, the IPEC found there was such a contractual term. It held that the Claimant and Defendant were joint owners of the parts of the Database derived from data supplied by the Defendant, as the Database was made up of data supplied by a number of suppliers.  

Why does it matter?

IPEC considered whether marketing emails sent by the Claimant without the Defendant's consent to members of the Database constituted an infringement of the Defendant's database right. Under Regulation 16 CRDR, such use only amounts to infringement of a database right if a substantial part of the contents of the Database had been extracted or reutilised by the Claimant. As the Defendant's evidence did not explore the extent to which this requirement was satisfied, the Defendant's set off claim for database right infringement failed.   

Now what? 

This is a helpful reminder that when alleging infringement of a database right, it is important to provide sufficient evidence to allow the courts to assess whether an infringement has taken place, so the claim does not fall at the first hurdle. Those drafting database management agreements should also be wary of the impracticalities of the drafting highlighted by this case, given that the Agreement provided that the Claimant and Defendant were joint owners of the Database, despite there being numerous other suppliers to the Database.   

The Kennel Club Ltd v Micro-ID Ltd [2019] EWHC 1639 (IPEC)