High Court upholds claim for infringement of database right

Businesses offering patient-facing software solutions will be encouraged by the High Court finding that various materials generated in the provision of the ECG Cloud service are protected by copyright and database right (and these rights had been infringed), in particular:

• a pdf document could amount to a database as its contents could be accessed through electronic conversion, digital character recognition, reading or re-typing, and
• an independently designed extensible mark-up language (XML) format that represented the intellectual creation of its author, contained content that was capable of copyright protection as a literary work.

Background

Technomed Limited and Technomed Telemedicine Limited (Technomed) supply ECG equipment, systems and services, including the ECG Cloud. The ECG Cloud enables ECG readings to be analysed remotely. A mobile ECG machine takes a reading from a patient which is inputted into the ECG Cloud through an online processing system and reviewed by a cardiac physiologist, who assesses a set of physical characteristics by reference to a number of "drop-down" menu options and associates each option with a risk status or traffic light, and some "patient-friendly" explanatory text. Technomed asserted it had created a database of physical characteristics, menu options, "traffic light" coded risk statuses and explanatory text (Database). In addition, to enable patients to access their ECG results, the ECG Cloud outputs an extensible mark-up language (XML) file with a standardised format. The XML file is used to generate a patient report by inserting information in the XML format into a template, together with further explanatory text about ECG screening and diagrams of the heart and an ECG wave.

In 2012, Technomed entered into a two-year contract with Bluecrest Health Screening Limited (Bluecrest) under which Technomed agreed to provide certain heart screening services. On request, Technomed also provided Bluecrest with a pdf copy of its Database and an electronic copy of the diagrams. After protracted contract renewal negotiations, relations between Technomed and Bluecrest subsequently deteriorated, causing Bluecrest to terminate its existing contract and switch to one of Technomed’s competitors, Express Diagnostics Limited, which started providing replacement services in January 2014. Technomed claimed that reports generated thereafter by Bluecrest included verbatim, or almost verbatim, extracts from the Technomed’s Database, as well as text from the patient reports generated from the XML template and diagrams.

Technomed issued proceedings for infringement of copyright and database right against Bluecrest and Express Diagnostics on 06 March 2015 in the Intellectual Property Enterprise Court, which were later transferred to the Chancery Division General List in January 2016. The IP issues were tried in July 2017, but the defendants’ counterclaim for breach of contract was stayed.

High Court’s findings

Summarising Deputy High Court Judge David Stone’s conclusions:

• A sui generis database right subsists in the Database and was infringed by the defendants until November 2016. A 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. Databases did not need to have a complex structure. There was an interesting debate between the parties about whether the pdf form of the Database (instead of the spreadsheet) was akin to a photo of the database rather than the database itself. The Judge found that a pdf document could amount to a database since its contents could be accessed through electronic conversion, digital character recognition, or reading or re-typing (like a telephone directory). Technomed’s investment in compiling the Database was substantial and a sui generis database right subsisted in it. This database right was infringed when Express Diagnostics took the pdf copy of the Database from Bluecrest and used it to reproduce the screening reports.
• Copyright also subsists in Technomed’s Database, as it was sufficiently original and Technomed’s employees had expended considerable effort and creativity in choosing the contents of the Database. The copyright was infringed by the defendants until November 2016.
• Alternatively, copyright subsists in Technomed’s pdf copy of the Database as a literary work, and was infringed by the defendants until November 2016.
• Copyright subsists in the XML format as a literary work and was infringed by the defendants until at least 11 December 2015. XML is a standard computer language, but it allows for flexibility such that an independently created XML format would show signs of distinctiveness. The ECG Cloud’s XML format exhibited the personal stamp and intellectual creation of a Technomed employee, which was protected by copyright. The copyright had been infringed as there were 16 common characteristics between Technomed’s XML format and the defendants’ XML file, which were not coincidental.
• Copyright subsists in the explanatory materials, text and diagrams in the reports generated from the XML format. These materials were literary and artistic works respectively, that were the author’s own intellectual creation (even though one of the diagrams had been generated from stock images).
• The infringement of the diagrams and explanatory materials was flagrant within the meaning of section 97(2) of the Copyright, Designs and Patents Act 1988, based on email correspondence between the defendants which showed they were aware that copyright likely subsisted in the explanatory materials, text and diagrams.

Comment

This case involved an interesting assessment of (1) what constitutes a "database" under Article 1(2) of the Database Directive, centred around Technomed’s argument that a database need not have a complex structure or be large or have a sophisticated method of indexing; and (2) the protection of XML formats as literary works (instead of as a computer program in light of SAS Institute Inc v World Programming Ltd [2012] RPC 31).

While aspects of this decision may be at odds with recent CJEU jurisprudence, this case is a good example of the Court seeking to do justice between the parties. It was clear from the evidence that Bluecrest provided Express Diagnostics with a pdf document containing the Database and an XML format file from Technomed. Bluecrest asked Express Diagnostics to replicate Technomed’s screening reports and deliberately extended its contractual negotiations with Technomed in order to allow Express Diagnostics sufficient time to do this. Once Express Diagnostics had a rival product in place, Bluecrest terminated its existing contract with Technomed and Express Diagnostics started providing ECG screening services on the same day despite Technomed asserting its IP rights. In the circumstances, the Court’s finding on flagrancy of infringement is also unsurprising.

Technomed Ltd and another v Bluecrest Health Screening Ltd and another [2017] EWHC 2142 (Ch), 24 August 2017.