Database Rights and Copyright: Technomed v Bluecrest Health Screening

Jane Lambert











High Court, Chancery Division, Technomed Ltd and Another v Bluecrest Health Screening Ltd and Another   [2017] EWHC 2142 (Ch) (24 Aug 2017)  Coram David Stone sitting as a judge of the High Court

This was an action for infringement of database right and copyright in an electrocardiogram ("ECG") analysis and reporting system known as ECG Cloud.

The System

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").

Mr Stone, who tried the action, described the operation of the system as follows at para [26] of his judgment:

"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 [26]:

"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 (extensible markup language) 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 while the heart while the other the flow of electricity through the organ.












There is also a diagram of an ECG wave with the following text:












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.

Express's System

The learned judge noted at para [44] of his judgment 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.

The Claim

Proceedings were issued in March 2015 in which the Technomed companies claimed infringement of:
  • the sui generis database right in the classifications, options, traffic lights, patient definitions and other matter the claimants had emailed to Blucrest;
  • copyright in those materials, either as a database or other type of literary work;
  • copyright in the claimants' software (although this claim has been narrowed to a claim of:
    • copyright in the XML Format as a literary work; and
    • copyright in the XML Format and/or the Database as preparatory design material for a computer program);
  • copyright in the explanatory materials as a literary work;
  • copyright in the patient definitions as a literary work, taken either together with the associated classification and option or each patient definition individually; and
  • copyright in the two hearts diagram and in the wave diagram as artistic works.
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 his lordship was whether the classifications, options, traffic lights, patient definitions and other matter that the claimants had emailed to Blucrest constituted a database within the meaning of art 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)).

He considered 
and concluded that they did.  

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 spread sheet 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 spread sheet 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 [71]:

"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. Art 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 compling the database which, the judge agreed, was substantial. 

He held at para [77]:

"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 art 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 art 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 art 3 (1).  

The judge reminded himself of Mr Justice Floyd's four step test for database copyright in Football Dataco Limited and Others v Brittens Pools Limited and Others [2010] EWHC 841 (Ch), [2010] ECC 31, [2010] RPC 17, [2010] 3 CMLR 25 at para [91]:

"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.

At para [102] the judge added that if he was wrong to find that copyright subsisted in the database as a database then they would subsist in the pdf file as a literary work and that such copyrights would be infringed.

XML Format

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 and there was indeed some similarity between those works but they were not enough to exclude a finding of originality.

Patient Definitions

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 Diagrams

The judge found that the diagrams were original artistic works in which copyright subsisted and they had been copied.

Flagrancy

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 before the judge of scandalous conduct or deceit to the same extent.

Comment

This is a very careful and thorough judgment.  Its importance lies in the discussion of what constitutes a database for the purpose of art 1 (2) of the Directive.  Mr Justice Arnold had cast the net quite wide in Forensic Telecommunications which I had considered in my case note on that decision of 8 Jan 2012. 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 art 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.

Conclusion
Should anyone wish to discuss this case or database right generally, call me on 020 7404 5252 during office hours or send me a message through my contact form.

Further Reading
Jane Lambert  Database Right 2 Sept 2017

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