- On 1 January 1998 a new
form of intellectual property right came into existence, database right. It
was introduced by the Copyright and Rights in Databases Regulations 1997 which
implemented Directive 96/9/EC of the European Parliament and Council. It is
common ground between the parties that (save possibly for one point on the
definition of "re-utilisation") the Regulations duly implemented the Directive.
In consequence the parties have presented their arguments by reference to
the contents of the Directive and little attention has been paid to the Regulations.
- This case is the first
to come before the English courts on database right. The Claimants, the British
Horseracing Board Ltd. ("BHB"), the Jockey Club and Weatherbys Group Ltd.
("Weatherbys"), complain that the database right which they claim to own has
been infringed by the Defendant, William Hill Organization Ltd. ("William
Hill"). At the trial of the action Laddie J. upheld the Claimants' claim and
granted them a permanent injunction against infringement of that right by
William Hill. With the permission of the judge William Hill now appeals to
this court.
The facts
- The background facts
have been stated with exemplary lucidity by the judge in his judgment and
we need only summarise the salient facts to make this judgment intelligible.
- BHB is the governing
authority for the British horseracing industry. Its members (the Jockey Club,
the Racecourse Association Ltd., the Racehorse Owners Association and the
Industry Committee (Horseracing) Ltd.) are organisations representing various
aspects of horseracing. It was set up in June 1993 to take over some of the
administrative functions of the Jockey Club, but leaving the Jockey Club retaining
the principal regulatory function within British horseracing. BHB is concerned
with the creation of the fixture list for each year's racing, weight adding
and handicapping, supervision of race programmes, producing various racing
publications and stakesbooks and compiling data related to horseracing. In
2000 there were 1209 race meetings scheduled to be held at 59 racecourses
on 327 days of the year with 7,800 races. That year there were 175,000 entries
for races and 80,000 declarations to run and declarations of riders. At any
one time there are 15,000 horses in training, 9,000 active owners and 1,000
trainers. Each owner must have registered unique racing colours in which his
horses will run. In 1985 Weatherbys on behalf of the Jockey Club started to
compile an electronic database of racing information comprising (amongst other
things) details of registered horses, their owners and trainers, their handicap
ratings, details of jockeys, information concerning fixture lists comprising
venues, dates, times, race conditions and entries and runners. Since June
1993 the task of maintaining and developing the database has been carried
out by Weatherbys on behalf of BHB in consequence of various assignments and
agreements.
- The database is constantly
updated with the latest information, and the scale and complexity of the data
kept by BHB have grown with time. The judge said that there was no substantial
challenge to the pleaded assertions by BHB that the establishment of the database,
at considerable cost, has involved, and its maintenance and development continue
to involve, extensive work including the collection of raw data, the design
of the database, the selection and verification of data for inclusion in the
database and the insertion and arrangement of selected data in the database,
the annual cost of continuing to obtain, verify and present its contents being
approximately £4,000,000 and involving approximately 80 employees and extensive
computer software and hardware.
- There is a huge amount
of data accumulated over the years in the database, including details of over
one million horses. The database contains pre-race information for each race,
covering the place and date on which the meeting is to be held, the distance
over which it is to be run, the criteria for eligibility to enter the race,
the date by which entries are to be made, the entry fee payable, the initial
name of the race and the like. Close to the day of a race, that information
is expanded to include the time at which the race is provisionally scheduled
to start, the final name of the race, the list of horses entered, the owners
and trainers and the weight each horse has been allotted to carry. The final
stage of the pre-race information contained in the database includes the list
of declared runners, their jockeys, the weight each will carry (which may
differ from the allotted weight for a number of reasons), its saddlecloth
number, the stall from which it will start and the owner's racing colours.
After the race, details of the outcome are recorded. An estimated total of
800,000 new records or changes to existing records are made each year.
- A painstaking process
of verification of the pre-race information is undertaken to ensure its complete
accuracy and reliability. Thus in the case of declarations made by trainers
by telephone, the conversations are tape-recorded and replayed and checked
by an operator other than the one who took the call against an audit report
produced by the computer.
- The cost of running the
database is a little over 25% of BHB's total annual expenditure of £15,000,000.
BHB is self-funding. Part of its income is derived from fees charged to third
parties for use of information contained in the database, currently yielding
an annual income of £1.2 million. Thus only a little over one third of the
cost of maintaining the database is recouped by fees.
- The racing information
contained in the database is of interest to a wide variety of persons. First,
essential extracts are made available to the participating elements of the
racing industry, such as racecourse owners, racehorse owners, trainers, jockeys
and their agents, by way of a Weatherbys/BHB internet website, by a database
site on the Prestel network and by BHB's official journal, the Racing Calendar.
The information is of interest to radio and TV broadcasters, to publications
such as the Racing Post and other newspapers, to information services such
as Ceefax and Teletext and to members of the public who follow horseracing.
- The information, or selected
parts of it, is also supplied to other interested parties such as bookmakers.
Two methods of distribution are of relevance. First, data are made available
to Racing Pages Ltd., a company controlled and owned by Weatherbys and the
Press Association jointly. On behalf of BHB Racing Pages Ltd. makes available
to subscribers in electronic form, normally on the day before a race, a Declaration
Feed containing a list of races, declared runners and jockeys, distances and
names of races, race times and numbers of runners in each race together with
other information. Second, an independent company, Satellite Information Services
Ltd. ("SIS"), is allowed to use data from the database for certain purposes
including for transmission to SIS's own subscribers. SIS provides two relevant
services. One is called FACTS (Full Audio and Captions Television Service)
comprising television coverage, audio and captions for horserace meetings,
the captions usually consisting of the race details and the racecard number
of the runners in the first three places. The other is called Raw Data Feed
("RDF"), being information as to details of meetings, races and the list of
runners and other related information, all supplied in electronic form.
- William Hill is one of
the largest bookmakers in the United Kingdom operating some 1,526 licensed
betting offices ("LBOs"), as well as telephone betting services and, more
recently, internet betting services. In May 1999 it started internet betting
on horseracing, originally in limited form, but a comprehensive service was
offered on 3 February 2000 from an overseas site and from an English site
on 13 March 2000.
- William Hill has a licence
in writing dated 26 July 1996 from Weatherbys for the Declarations Feed, which
it uses for its telephone betting and shop sampling systems and for publication
on Ceefax, and pays a monthly fee for this service. It also has a licence
in writing from SIS for SIS's FACTS service for which it pays SIS substantial
fees. It uses FACTS in displays on TV screens in its LBOs, itself adding information
such as betting odds which it produces. It also puts up on the walls of LBOs
the betting office display edition of the Racing Post, containing even more
information than is displayed on the TV screens. A copy of the news-stand
edition of the Racing Post is also available in each LBO. It also pays SIS
for and receives RDF. No formal contract has been entered into between SIS
and William Hill, which pays SIS's invoices when presented to it. Thus there
is no contractual term limiting the use to be made to William Hill of the
RDF. However SIS has not purported to sublicense William Hill to use the RDF
on its internet site and the judge recorded that it was not in dispute that
SIS had no right so to sublicense William Hill.
- A very great deal of
the information displayed or used by William Hill in its horseracing betting
business conducted in its LBOs or through telephone betting is derived from
the BHB database. BHB takes no objection to any such use, being of the view
that such data are taken with BHB's express or implied consent and that it
receives financial compensation, directly or indirectly, for all such data.
But objection is taken by BHB to the use which is made by William Hill of
certain information displayed on its internet site which comes from the RDF
received by it from SIS. Whilst not all the information displayed on the site
comes from that service (for example, the betting odds are William Hill's
own product), the identity of all the horses in a race, the date and the time
of the race and the identity of the racecourse where the race is to be held
come from the RDF.
- BHB claimed that William
Hill has been making use of data from the BHB database in its internet business
for which it has no licence, and that such use each day is an extraction or
reutilisation of a substantial part of the contents of the database contrary
to Article 7(1) of the Directive. Alternatively it claimed that if each day's
use is of an insubstantial part of the contents of the database, William Hill
has, by the repeated and systematic extraction and reutilisation of insubstantial
parts of the contents of the database, infringed Article 7(5).
- William Hill disputed
these claims. Originally at a time when BHB was the sole Claimant, William
Hill challenged BHB's title to the database. But with the joinder of the Jockey
Club and Weatherbys that defence was not pursued before the judge. But William
Hill challenged whether the information obtained from SIS and used by William
Hill for its business derived from the BHB database, and it complains before
us that the judge did not expressly deal with the arguments it advanced on
this point. Its substantial defence was that it neither extracted nor reutilised
any part of the contents of the database. It also said that if its activities
infringed any rights, it had alternative ways of presenting the information
on its internet sites which would avoid any infringement.
The Directive
- At this point it is convenient
to refer to the material provisions of the Directive. The mischief which it
was designed to meet is clearly set out in the Recitals: databases were not
sufficiently protected in all member states by existing legislation (Recital
(1)), there were differences in that protection between member states which
distorted the functioning of the internal market (Recitals (2) (4)), and the
making of databases involved the investment of considerable human, technical
and financial resources, which investment required protection against the
unauthorised extraction or reutilisation of the whole or a substantial part
of the contents of the database (Recitals (6) (8), (38) (41)). The Directive's
intention was to give protection to the structure of the database by copyright
and to its contents against unauthorised extraction and reutilisation or both
by the new right called "the sui generis right" (Recital (58)).
- The scope of the Directive
was set out in Article 1:
"1. This
Directive concerns the legal protection of databases in any form.
2. For
the purposes of this Directive, 'database' shall mean a collection of independent
works, data or other materials arranged in a systematic or methodical way
and individually accessible by electronic or other means."
The definition
(and Recital (14)) make clear that non-electronic databases are included.
- Moreover in Recital (17)
the intended width of the definition is made plain:
"Whereas
the term 'database' should be understood to include literary, artistic, musical
or other collections of works or collections of other material such as texts,
sounds, images, numbers, facts, and data; whereas it should cover collections
of independent works, data or other material which are systematically or methodically
arranged and can be individually accessed."
- Further in Recital (21)
it is stated that the materials which must have been arranged systematically
or methodically need not be physically stored in an organised manner.
- Chapter II (Articles
3 6) relates to copyright. By Article 3:
"1. In
accordance with this Directive, databases which, by reason of the selection
or arrangement of their contents, constitute the author's own intellectual
creation shall be protected as such by copyright.
2. The
copyright protection of databases provided for by this Directive shall not
extend to their contents and shall be without prejudice to any rights subsisting
in those contents themselves."
- By Article 5:
"In respect
of the expression of the database which is protectable by copyright, the author
of a database shall have the exclusive right to carry out or to authorise:
(b) translation,
adaptation, arrangement and any other alteration;
(e) any
reproduction, distribution, communication, display or performance to the public
of the results of the acts referred to in (b)."
- Chapter III (Articles
7 11) relates to the new database right. Article 7 is in this form:
"Object
of protection
1. Member
States shall provide for a right for the maker of a database which shows that
there has been qualitatively and/or quantitatively a substantial investment
in either the obtaining, verification or presentation of the contents to prevent
extraction and/or re-utilisation of the whole or of a substantial part, evaluated
qualitatively and/or quantitatively, of the contents of that database.
2. For
the purposes of this Chapter:
(a) 'extraction'
shall mean the permanent or temporary transfer of all or a substantial part
of the contents of a database to another medium by any means or in any form;
(b) 're-utilisation'
shall mean any form of making available to the public all or a substantial
part of the contents of a database by the distribution of copies, by renting,
by on-line or other forms of transmission. The first sale of a copy of a database
within the Community by the rightholder or with his consent shall exhaust
the right to resale of that copy within the Community;
Public
lending is not an act of extraction or re-utilisation.
3. The
right referred to in paragraph 1 may be transferred, assigned or granted under
contractual licence.
4. The
right provided for in paragraph 1 shall apply irrespective of eligibility
of the contents of that database for protection by copyright or by other rights.
Moreover, it shall apply irrespective of the contents of that database for
protection by copyright or by other rights. Protection of databases under
the right provided for in paragraph 1 shall be without prejudice to rights
existing in respect of their contents.
5. The
repeated and systematic extraction and/or re-utilisation of insubstantial
parts of the contents of the database implying acts which conflict with a
normal exploitation of that database or which unreasonably prejudice the legitimate
interests of the maker of the database shall not be permitted."
- Thus a condition of the
database right is that there should have been a substantial (judged qualitatively
or quantitatively or both) investment in the obtaining or the verification
or the presentation of the contents of the database. By Recital (40) it is
explained that the investment "may consist in the deployment of financial
resources and/or the expending of time and effort and energy". Further by
Recital (55) it is said:
"Whereas
a substantial new investment involving a new term of protection may include
a substantial verification of the contents of the database."
- Article 9 allows member
states to stipulate that lawful users of a database which is made available
to the public may extract or reutilise a substantial part of its contents
in three cases, one of which is extraction for private purposes of the contents
of a non-electronic database.
- Article 10 is also of
importance, relating as it does to the term of protection. It provides so
far as material:
"1. The
right provided for in Article 7 shall run from the date of completion of the
making of the database. It shall expire fifteen years from the first of January
of the year following the date of completion.
3. Any
substantial change, evaluated qualitatively or quantitatively, to the contents
of a database, including any substantial change resulting from the accumulation
of successive additions, deletions or alterations, which would result in the
database being considered to be a substantial new investment, evaluated qualitatively
or quantitatively, shall qualify the database resulting from that investment
for its own term of protection." The judge's judgment
- The judge in his judgment
dealt first with the general issue whether the Claimants had proved that William
Hill was misusing in a relevant manner parts of BHB's database rather than
data obtained from some other, independent, source. The judge noted a concession
that relevant information which William Hill had on its websites was derived
from the RDF obtained from SIS. He observed that this was identical in content
to some of the data supplied to SIS by BHB from the BHB database and that
it was identical to the information supplied through Racing Pages in the Declaration
Feed which William Hill uses for its telephone betting service. The judge
referred to William Hill's argument that because it was possible that SIS
obtained the same information from another source, its derivation needed to
be proved by the Claimants. The judge thought it only necessary to consider
the data relating to declared runners. He considered the evidence of two witnesses,
one being Mr. Smith, SIS's company secretary, who confirmed that the data
contained in the RDF came from Racing Pages and thus from BHB and concluded
that it was virtually certain that the data in the RDF did derive directly
or indirectly from the BHB database.
- Next the judge considered
the issue of infringement by reference to the arguments of Mr. Mark Platts-Mills
Q.C. for William Hill under four headings:
(1) What
William Hill has used is not a part, in the relevant sense, of BHB's database.
(2) Even
if a part, it is not a substantial part.
(3) The
use does not amount to an extraction from the database.
(4) It
is not a reutilisation of the database.
- On (1) the judge referred
to Mr. Platts-Mills argument that what is protected by the database right
is the "database-ness" of the collection of information, that is that the
materials are arranged in a systematic or methodical way and are individually
accessible, and that any acts which do not make any use of the arrangement
of the contents of the database nor take advantage of the way in which the
maker has rendered the contents individually accessible cannot infringe the
database right. In that sense Mr. Platts-Mills argued that what William Hill
used could not be any part of the database. The judge rejected this argument.
He said that nothing in the Directive supported Mr. Platts-Mills' submission
relating to "database-ness" which ran together two entirely distinct concepts,
namely the feature of form which has to exist before a database will be recognised
as existing and the features of content or investment which are protected
once a database is held to exist. The judge referred to Recitals (38), (39)
and (58) as, in his view, making clear that infringement of the new right
is not avoided by taking the contents and rearranging them and that what has
to be protected is not primarily the form but the investment which went into
obtaining, verifying and presenting the contents. He said that what are prohibited
are certain kinds of use or manipulation of parts of the contents of the database
and that in the absence of anything in the Directive to give "part of its
contents" a special meaning, a collection of data taken from the database
must be a part of its contents.
- On (2) the judge accepted
that substantiality had to be assessed primarily by comparing what had been
taken or used with what is in the database, but he said that the importance
of the information to the alleged infringer was not irrelevant. He said that
the data relating to the races themselves represented the ultimate and crucial
information within the database and that William Hill was making use of the
most recent and core information in the database relating to racing and taking
advantage of the completeness and accuracy of the information taken from the
RDF, which he described as "the product of BHB's investment in obtaining and
verifying the data". Looking at the matter on both a quantitative and a qualitative
basis, he concluded that it was a substantial part of the contents.
- On (3) the judge rejected
an argument of Mr. Platts-Mills that extraction meant removal so that it could
not be extracted again unless first put back. The judge said all that was
required was that a substantial part of the contents be transferred to a new
medium.
- On (4) the judge referred
to Mr. Platts-Mills' argument that reutilisation must include telling the
public something it does not already know and that the right to restrain use
of a substantial part of the database was lost once there was publication
of that part to any member of the public. The judge rejected that argument,
holding that if the draftsman had intended to cover only first publication,
he would have said so explicitly, and that if he had done so it would have
undermined the purpose of the Directive, the protection of the investment
in making databases.
- The judge concluded that
William Hill's actions of taking information form the RDF and loading it onto
its own computer for the purpose of making it available on its website was
an unlicensed act of extracting a substantial part of BHB's database and the
subsequent transmission of that data onto its website for access by members
of the public was a reutilisation. Thus the Claimant's rights were infringed
in both ways.
- The judge then considered
the alternative claim under Article 7(5). In addition to William Hill's arguments
such as on "database-ness" which the judge had already rejected he considered
a further argument by Mr. Platts-Mills based on Article 10(3). The changes
made daily to the database as it is updated caused, it was said, a succession
of new databases to come into existence, each with its own term of protection.
Accordingly, Mr. Platts-Mills submitted that Article 7(5), relating to the
repeated and systematic extraction or reutilisation of insubstantial parts
of the contents of "the database", could not be occurring and what was done
amounted to taking one insubstantial part of a sequence of different, though
interrelated, databases. The judge rejected this argument saying that the
Directive had to be construed to make sense, and that there was nothing in
the Directive to suggest that it was not to apply to dynamic databases in
just the same way as it applied to ones which were built and modified in discrete,
well defined steps. He held that the database was a single database which
is in a constant state of refinement and that the term of protection for it
was constantly being renewed.
- The judge also dealt
with an argument by Mr. Platts-Mills based on the final part of Article 7(5)
that the extraction or reutilisation by William Hill of insubstantial parts
of the database does not conflict with normal exploitation of the database
nor does it unreasonably prejudice the legitimate interests of BHB as the
makers of the database. The judge rejected this too, saying that William Hill's
activities clearly undermined a significant part of BHB exploitation of its
database and unreasonably prejudiced its interests in being able to sell its
racecard information to others. The judge therefore concluded that William
Hill breached BHB's rights under Article 7(5).
- Finally the judge dealt
with the question whether William Hill would breach BHB's database right if
it modified its website in a manner which it had indicated in the evidence
of Mr. Michael Ellis on its behalf. It proposed making two changes: first,
instead of the time of the race being stated, the number of the race at the
meeting could be identified (e.g. "race 2 at Ascot"), and, second, instead
of the horses entered for a race being identified by name, they could be identified
by their number. The judge said (para. 78 of his judgment):
"Database
rights protect the unlicensed taking and use of information. What William
Hill has in mind involves the manipulation of the same information but its
presentation in a different manner …. As long as substantially the same information
is made available on the website, the same acts of extraction and re-utilization
will have taken place."
- We are told that at a
subsequent hearing the judge considered the form of the order which he would
make to give effect to his judgment. He heard argument on whether it was appropriate
to grant a permanent injunction in circumstances in which William Hill had
agreed to take a licence from BHB conditional on William Hill losing the case,
so that there was, it was said, no threat of infringement. But without giving
reasons in a further judgment, the judge, by para. 1 of the order, ordered
that William Hill "must not infringe the database right in the BHB Database".
He also directed an inquiry as to damages for database right infringement
and ordered William Hill to pay the Claimant's costs.
The appeal
- William Hill appeals
to this court by an appellant's notice containing grounds of appeal in no
less than 49 paragraphs supported by an expansive skeleton argument running
to 66 pages.
- The first point which
is taken by William Hill is one not dependent on the construction of the Directive
and it is one which, Mr. Platts-Mills says, is determinative of the appeal
in William Hill's favour. It is whether the information used by William Hill
which it takes from RDF supplied by SIS was proved before the judge to derive
from BHB's database. Mr. Platts-Mills complains that the judge merely records
in para. 19 of his judgment that it is not in dispute (1) that the information
displayed on William Hill's internet sites (the identity of the horses in
the race, the date and time of the race, the identity of the racecourse) is
to be found in and comes from the RDF received from SIS and (2) that the same
information is supplied to SIS from the data stored on BHB's computer. Mr.
Platts-Mills says that that is very different from a conclusion that the information
comes from the data stored in the BHB database, let alone that it is data
stored on the BHB database. He points out that although para. 4 of the Amended
Particulars of Claim defines the BHB Database very widely ("a single collection
of data, comprising details of registered horses, the dates that they were
born, their individual identity, the names of their owners and trainers and
details of their owners' colours and their official handicap ratings, together
with information concerning jockeys and information concerning fixture lists,
comprising race venues, dates, times, race conditions and entries and runners
and other information arranged in a systematic and methodical way and individually
available by electronic means"), by further and better particulars the Claimants
limited the database by listing all the tables included in it. Mr. Platts-Mills
says that there is no evidence that the information used by William Hill went
into the database before the information is released to the public, no information
technology expert having testified that it came from the identified tables
or any one of those tables, and he suggests that the information could have
been stored elsewhere.
- We cannot accept this
very technical argument. Although the judge may not have dealt expressly with
Mr. Platts-Mills' argument, there can be no doubt that he rejected it in concluding
that William Hill by using the RDF from SIS was using information derived
from the BHB Database. Moreover there was material before the judge which
entitled him to conclude as he did. In his oral evidence, Dr. Khan, Weatherbys'
Director of Racing, said of the information as to the runners in a particular
race (Transcript 12 December 2000 p. 53):
"The information
is being sent down from the call centre to update the database and it would
emanate from the database once the database had compiled the information finally.
It would not be possible for the call centre itself to send it off independently."
As we
understand that evidence, once the information as to the declared runners
is received by operators at a call centre, it is entered in the database and
the computer for the database in due course produces the list of runners for
a particular race which is made available to persons like SIS. Thus the list
which is produced must be in the database. That is plainly within the pleaded
definition of the BHB database. There may be a question as to how the simultaneous
creation and publication of the list, which prior thereto did not exist in
the database, fit within the scope of the Directive. But that is a question
of interpretation of the Directive.
- William Hill's arguments
of substance go to whether the judge correctly interpreted the Directive.
The judge has given a wide meaning to the database right and what it protects.
Mr. Platts-Mills says that the effect of the judge's judgment is far-reaching
and that it is capable of application to commercial activities far removed
from the horserace betting context with which we are concerned. Information
which might have been thought to have entered the public domain and to be
freely usable might prove to be derived from a database the right in which
was protected even though the user was unaware of that ultimate source and
right. He drew our attention to certain decisions of the courts of other member
states, which appear to have adopted a somewhat narrower approach to database
right (notably Fixtures Marketing Ltd. v AB Svenska Spel, Gotland City Court,
11 April 2000, and in the Swedish Court of Appeal, 3 May 2001, and NV Holdingmaatschappij
de Telegraaf v Nederlandse Omroep Stichting, Court of Appeal of the Hague,
30 January 2001). He pointed out that there has as yet been no ruling by the
European Court of Justice on the interpretation of the Directive. He submits
that this court cannot find the relevant provisions of the Directive actes
clairs and should make a reference to the European Court of Justice under
Article 234 of the Treaty of Rome on a number of matters. He produced 15 draft
questions. We will not set them out because in our view many of them are in
an inappropriate form for a reference, for example because they assume facts
which have not been established or are too general and are not likely to produce
a helpful answer. Thus one proposed question was "On what basis must a court
of a member state decide whether part of the content of a database is a "substantial
part" of the contents of that database, for the purpose of Article 7(1) of
the Directive?" Such a question may well be met with the answer taken from
the Article, "On a qualitative and/or quantitative evaluation".
- The substance of the
questions which he suggests is as follows:
1. Whether
"database-ness" is an essential quality for any "part of the contents of the
database"?
2. Whether
information in the form of the lists of runners created at the same time as
they are published can be a relevant part of the contents of the database?
3. Does
"extraction" or "reutilisation" involve having access to the database or a
copy of it?
4. Does
"extraction" or "reutilisation" extend to a person who is a subscriber to
a service provided by a licensee of the database right owner and who thereby
receives part of the contents of the database, and who makes available that
part of those contents to the public in the course of his business?
5. Where
there is a constantly updated database, is there a new database separate from
the previous database whenever any substantial change has occurred?
- Mr. Peter Prescott Q.C.
for the Claimants adopted the judge's judgment as part of his submissions.
He drew our attention to the high praise which that judgment received in an
article by Dr. Jens Gaster, who is a Principal Administrator in the European
Commission's Directorate General for the Internal Market and appears to have
had a hand in the drafting of the Directive. But the views which Dr. Gaster
expresses in that article are his personal views. In contrast Dr. Gaster was
very critical of the decision of the Swedish first instance court in Fixture
Marketing, and referred to other criticism of the implementation by Sweden
of the Directive. However, Dr. Gaster acknowledged that the database right
"draws from previous experience with the Nordic catalogue rule" and a Dutch
precedent. Mr. Prescott also referred us to a paper which is entitled "The
future of the judicial system of the European Union" and which he told us
was written by the President of the European Court of Justice in 1998. This
made clear the very considerable delays being experienced before references
to that court were dealt with as a result of that court being overloaded with
work. Mr. Prescott submitted that we should not refer any questions to Luxembourg,
each of the relevant provisions of the Directive being acte clair.
- It is not in dispute
that this court, not being a court of last instance, has a discretion, and
we have been reminded of what the European Court of Justice said in CILFIT
v Ministry of Health [1982] ECR 3415 at p. 3430:
"16. Finally,
the correct application of Community law may be so obvious as to leave no
scope for any reasonable doubt as to the manner in which the question raised
is to be resolved. Before it comes to the conclusion that such is the case,
the national court or tribunal must be convinced that the matter is equally
obvious to the courts of the other Member States and to the Court of Justice.
Only if those conditions are satisfied, may the national court or tribunal
refrain from submitting the question to the Court of Justice and take upon
itself the responsibility for resolving it."
- We have also been referred
to the remarks of Sir Thomas Bingham MR in R v International Stock Exchange,
ex p. Else Ltd. 1993] QB 534 at p. 545:
"I understand
the correct approach in principle of a national court (other than a final
court of appeal) to be quite clear: if the facts have been found and the Community
law issue is critical to the court's final decision, the appropriate course
is ordinarily to refer the issue to the Court of Justice unless the national
court can with complete confidence resolve the issue itself. In considering
whether it can with complete confidence resolve the issue itself the national
court must be fully mindful of the differences between national and Community
legislation, of the pitfalls which face a national court venturing into what
may be an unfamiliar field, of the need for uniform interpretation throughout
the Community and of the great advantages enjoyed by the Court of Justice
in construing Community instruments. If the national court has any real doubt,
it should ordinarily refer."
- If the interpretation
question to which this case gives rise had to be determined without the luxury
of a reference we think it likely that we would support the conclusions of
the judge for the reasons which he explains. But we cannot say that we can
resolve the issues with complete confidence nor that there is no scope for
any reasonable doubt, still less that the matter is equally obvious to the
courts of other member states. We have considered whether it is more appropriate
to decide the appeal ourselves and give leave to appeal to the House of Lords
so that that court can make the reference if it considers it appropriate.
But we think it probable that the House of Lords would refer the interpretation
questions to the European Court of Justice and that course would only delay
the resolution of the dispute even longer. We add that the points raised are
of wide importance and affect not only William Hill but all the other major
bookmakers who, we are told, take the same line as does William Hill. We therefore
conclude that there should be a reference.
- We have not attempted
to settle the questions to be referred. We would ask Counsel to cooperate
on this and to submit a draft to us, preferably one that is agreed; but if
agreement cannot be reached we will have to resolve any dispute. We also ask
that Counsel should consider whether the statement of facts in this judgment
needs to be supplemented and, if so, to agree what further facts should be
provided to the European Court of Justice. There will have to be a further
hearing to settle the final form of reference.
- Finally, we have considered
the question whether it is appropriate that, pending the determination by
the European Court of Justice and the resolution by this court of the appeal
once the answers to the referred questions have been obtained from Luxembourg,
the injunction ordered by the judge should continue.
- Mr. Platts-Mills submits
that the judge was wrong to grant a permanent injunction both because William
Hill had taken the conditional licence with the result that there was no present
threat by William Hill to infringe any right of the Claimants and because
they are in effect seeking a monetary remedy. William Hill is a substantial
company and there is no reason whatever to think that it would deliberately
fail to comply with its obligations. For the time being the Claimants have
the benefit of the judge's judgment in their favour. They also have the protection
of the licence. If, whether because the licence expires and is not renewed
or for any other reason, a threat to infringe the Claimants' rights emerges,
they can readily return to court for a protective injunction. In the meantime
we would discharge the injunction as unnecessary. It will be for consideration
when the appeal is finally determined and if the Claimants succeed whether
to reimpose the permanent injunction or whether some other remedy such as
a declaration would suffice.