Football Dataco Ltd & Ors v Sportradar GmbH & Anor

There are two application notices before the court. The first, the jurisdiction application, is an application by the defendants, Sportradar GmbH and Sportradar AG (“GmbH” and “AG” respectively) for an order declaring that the court has no jurisdiction to entertain the claim against them (alternatively that any such jurisdiction should not be exercised) and setting aside service of the claim form accordingly. The second, the amendment application, is an application by the claimants to amend their particulars of claim, as they would put it, to clarify existing alleged acts of infringement and add new ones.

The first claimant is owned by The Football Association Premier League Limited, the Football League Limited and the second and third claimants, all of whom are engaged in the business of organising professional football matches in various leagues and competitions in England and Scotland respectively. The first claimant is engaged in the business of creating and exploiting certain data and rights, including intellectual property rights, relating to the playing of football matches organised by the Leagues. The fourth claimant is engaged by the first claimant as a sub-contractor to assist it in the creation and exploitation of the data and rights referred to above. For the purposes of these applications there is no need to distinguish between the various claimants.

GmbH is a German company. AG is a Swiss company. AG is the holding company of the Sportradar group of companies and is the parent company of GmbH. GmbH provides live scores, results and other statistics relating to football and other sports, including UK football matches, to customers via the internet. They have a website at betradar.com. The extent of involvement of AG in these acts is one of the issues on the jurisdiction application.

The proceedings are for infringement of (a) copyright and (b) database right. The rights are alleged to subsist in a database known as Football Live compiled by the claimants which comprises the statistics from UK football matches. Examples of these statistics are goals scored, goalscorers, penalties, yellow (caution) and red (sending off) cards and substitutions. The data is referred to as “live data” as it is both updated and provided to third parties while matches are taking place.

GmbH provides a competing service to the claimants. This data is called “Sport Live Data”. The data is stored on webservers in Germany and Austria, but can be accessed via links from elsewhere, including from the United Kingdom. The claimants say that, in assembling their data, GmbH and AG are copying data from Football Live, and are therefore liable for infringement of UK copyright and database right. The allegation of copying is denied.

These proceedings were commenced by the claimants by the issue of a claim form on 23^rd April 2010. It is relevant to note that, no doubt prompted by the present claim, further proceedings were issued against the claimants by GmbH on 14^th July 2010 in the Landgericht Gera in Germany seeking, amongst other things, negative declarations that the activities of GmbH do not infringe any intellectual property rights of the claimants. GmbH contend that, for any claim of which the English court was not properly seised before 14^th July 2010, the German Landgericht was the court first seised. It is therefore of importance to examine with some care what, if any, claims were made in the proceedings in the original particulars of claim, over which the English court has jurisdiction. That exercise must be done without the benefit of the amendments which the claimants now wish to make, which were applied for only when the Landgericht was already seised of the declaratory claim, and for which permission is required which has not yet been granted.

Because jurisdiction is governed in the case of GmbH by the Judgments Regulation (Council Regulation (EC) No 44/2001) and in the case of AG by the Lugano Convention, it is common ground that the claimants must show a “good arguable case” of copyright and/or database right infringement in order to establish jurisdiction in this country. In default, GmbH and AG would have to be sued in their states of domicile, that being the primary rule of jurisdiction under those instruments. Moreover, copyright and database right are strictly territorial rights. No copyright or database right other than UK copyright or database right is asserted in the action. It follows that it is necessary for the claimants to show in both cases that there is a good arguable case of an act in the UK which infringes those rights. GmbH and AG submit that they perform no infringing acts, or indeed any acts at all, in the UK. They submit accordingly that the particulars of claim fail to make out a good arguable case against either of them of an act in the United Kingdom.

Parts of the case advanced on behalf of GmbH and AG are based on arguments that the particulars of claim simply do not make the relevant allegation. Those questions are susceptible of a “yes” or “no” answer. Other parts are based on an examination of the evidence in relation to issues which are properly raised by the pleading. These latter issues have to be decided according to the principles set out by Waller LJ in Canada Trust v Stolzenberg [1998] 1 WLR 547 and subsequently approved on appeal at [2002] 1 AC 1 at 12, and then in the Privy Council in Bols Distilleries v Superior Yacht Services [2007] 1 WLR 12. At the risk of over-compression, those principles are that I must come to a view, within the limits of the interlocutory process, as to which party has the better of the arguments on the available material. That is what is meant by “a good arguable case”.

Sometimes a question of whether the court has jurisdiction turns on a question of law. In Chellaraum v Chellaram (No 2) [2002] 2 All ER 17 Lawrence Collins J, as he then was, indicated the approach to be taken where the court has to decide an issue of law for the purposes of deciding whether to accept jurisdiction, at [136]:

In addition to the fundamental point about acts in the jurisdiction, GmbH and AG run a series of further points as to why the court has no jurisdiction. They submit:

that the claims to subsistence of copyright and database right are either liable to be struck out or very weak;

the claim for a reproduction of a substantial part of the copyright work cannot be maintained;

the particulars of joint tortfeasorship do not support an arguable case against AG;

the reliance on a customer, Bet 365, accessing the data is misplaced in the light of the terms of a licence between the claimants;

GmbH and AG have the better argument on whether there has been copying.

The particulars of claim, from paragraph 24 onwards, identify the rights relied on. In summary, Football Live is alleged to enjoy the following rights, some of which are said to be cumulative and others alternatives:

Copyright as a database pursuant to sections 1(1)(a), 3(1)(d) and 3A(2) of the Copyright Designs and Patents Act 1988 (“the Act”) (paragraph 25);

Database right pursuant to Regulation 13 of the Database Regulation, by which is meant the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032) the domestic legislation enacted to give effect to European Parliament and Council Directive 96/9/EC on the Legal Protection of Databases (“the Database Directive”);

Copyright in a table or compilation other than a database pursuant to sections 1(1)(a) and 3(1)(a) of the Act;

Copyright in a literary work pursuant to sections 1(1)(a) and 3(1)(a) of the Act.

Paragraphs 32 to 36 of the particulars of claim are headed “The Defendants”. Paragraphs 32 and 33 identify GmbH and AG as companies organised and existing under the laws of Germany and Switzerland respectively and that AG is the holding company of the Sportradar group and the parent company of GmbH. Much stress is laid by the claimants on paragraph 34 which describes the business of AG and GmbH, so I set it out here:

I read this paragraph as a general description of the nature of the businesses of GmbH and AG, identifying two commercial customers for their data, and asserting that the two identified customers provide data to a further level of customers in the UK, through the two identified websites.

Paragraph 35 alleges that AG and GmbH advertise their services through a website at betradar.com.

Paragraph 36 is a generalised allegation of joint and several liability for infringement of copyright and database right:

There is an issue between the parties as to the adequacy of that plea as a basis for implicating AG. However, it is clear that the persons to whom joint and several liability is sought to be attached are AG and GmbH. Further, the acts for which they are said to be jointly and severally liable are “the acts of copyright and/or database right infringement about which complaint is made herein”. These are yet to be identified. It is at least possible at this stage of the pleading that the “acts of which complaint is made” will be, or include, acts of third parties, such as customers of AG and GmbH in the United Kingdom. Alternatively, the plea may be limited to acts of AG and GmbH, the objective being to show joint liability of the defendants amongst themselves. To determine which is intended, it is necessary to read on.

Paragraph 37 is therefore the crucial paragraph, at least so far as copyright infringement is concerned. It is headed “Infringement of the Claimants’ rights". It reads, so far as material, as follows:

Sub-paragraphs (i) to (v) are intended to be matters relied upon in support of the principal allegation that AG and GmbH have “used the whole or a substantial part of Football Live”. Use, of itself, is not one of the acts restricted by copyright: see section 16(1) of the Act. Copyright is infringed by any person who does, or authorises another to do, any of the restricted acts in relation to the work or a substantial part of it: see section 16(2) and 16(3)(a). By virtue of section 16(1)(a) “copying” the work is a restricted act. “Copying” is defined in section 17(1), as reproducing the work in any material form. I shall refer to committing a restricted act as “primary infringement” to distinguish it from authorising.

Because the main part of the plea is not expressed in the statutory language, recourse must be had to the sub-paragraphs of the plea to see what restricted act or acts are in fact relied upon. The first sentence of sub-paragraph (i) makes clear that “reproduction” is relied on. Mr Cuddigan, who appeared on behalf of GmbH and AG, submitted that the “overarching plea” in paragraph 37 was of acts committed by GmbH and AG. The act of reproduction pleaded in sub-paragraph (i), and by implication the other sub-paragraphs, was one by GmbH or AG or both of them and committed abroad. The sub-paragraph stresses that the pop-up windows are hosted on the website of GmbH and AG, and that the data displayed is left on their website until the end of the day. These are events occurring on GmbH’s webserver in Vienna. Sub-paragraph (iv) makes good this impression by drawing the inference that all the data is reproduced and stored by the defendants in an “underlying electronic database”. There was accordingly, so he submitted, no act of reproduction in the UK by any customer alleged against him.

Mr Mellor QC who appeared for the claimants with Ms Lindsay Lane, submitted that the act of reproduction relied on is, or at least includes, that which occurs when someone clicks on the Live Score option on the Bet365 or Stan James Websites. That is an act which is committed by the customer of Bet 365 or Stan James when the option is clicked. He relies on the fact that paragraph 34, which precedes this paragraph, has already made clear that there are two levels of customers, and customers of Bet 365 and Stan James will cause the reproduction to be made on the screens of their computers. He also relies on the fact that, given the territorial nature of copyright, one should approach the exercise of interpretation of the pleading on the basis that it is likely that it would be restricted acts occurring in the United Kingdom which would be the intended subject of complaint.

Despite the contents of paragraph 36 of the pleading, which specifically alleges that each of the defendants carried out the acts of which complaint is made, Mr Mellor expressly disavowed at the hearing any reliance on an allegation that GmbH and AG had themselves reproduced anything in the United Kingdom. That had not always been the claimants’ position. The witness statement of Ruth Hoy, the claimants’ solicitor, summarised the case of copyright infringement in paragraph 8 of her witness statement on the jurisdiction application as:

That paragraph asserts primary infringement by reproduction, because copying means reproducing. Similarly, in paragraph 38 of their skeleton argument, the claimants maintained that GmbH and AG:

Mr Mellor warned me against too literal an interpretation of paragraph 37(i), without taking account of the context of paragraph 34. He reminded me that to allege a cause of action a pleading needs only to plead the necessary material facts. Mr Mellor accepted that the particulars of claim in the present case could have been improved upon. Nevertheless he submitted that the claimants had clearly pleaded that when the customer in the UK clicks on the “Live Score” option he or she would cause a reproduction of the whole or a substantial part of Football Live to be made on their computer.

Mr Cuddigan, for his part, drew my attention to the judgment of Gloster J in National Navigation Co v Endesa Generacion SA [2009] EWHC 196 (Comm) (unreported, 1^st April 2009) in which she decided to award costs against a claimant on the indemnity basis when a claim had been struck out as failing to make out a case under the Judgments Regulation. She summarised the position in this way at [72](v) and (vi):

There is no suggestion in the present case that the claim form and particulars of claim asserted jurisdiction without reasonable belief. Moreover it is the facts supporting the basis of jurisdiction which must be clearly pleaded: there is no requirement for anything more than that.

I did not find this a particularly easy question. However, I have in the end come to the conclusion that paragraph 37(i) does allege, amongst other things, an act of reproduction of the whole or a substantial part of Football Live by a customer in the UK. I think Mr Mellor is right that, read in the context of the pleading as a whole, that is the meaning which the pleading conveys.

Nevertheless, as the customers are not parties, and as primary infringement is no longer alleged, it is necessary to consider the case on authorisation and joint tortfeasance before one could conclude that there is an adequate plea of an act of infringement over which the court has jurisdiction.

It is common ground that, where authorisation of an act of infringement of United Kingdom copyright is relied on, the act of authorisation does not have to occur in the United Kingdom, provided that the primary act of infringement so authorised does: see ABKCO Music and Records Inc v Music Collection International Ltd [1995] RPC 657 at 660.

As to authorising, the law is helpfully summarised by Kitchin J in Twentieth Century Fox Film Corp v Newzbin Ltd [2010] FSR 21 at [85]-[90]. In short,

There is no allegation of authorisation in the primary plea in paragraph 37. The word “authorise” appears for the first time in paragraph 37(iii), where it is alleged, amongst other things, that GmbH and AG have reproduced or authorised the reproduction of certain “events”. Accordingly, Mr Mellor submits that, if one accepts, as I have, that sub-paragraph (i) pleads a case of reproduction on the screens of a user, paragraph (iii) must be pleading a case of authorisation of that act by GmbH and AG. It matters not that that authorisation occurs from abroad, as the act of primary infringement – reproduction – occurs here.

Mr Cuddigan’s primary submission was that, given that there is no act of any customer sufficient to amount to infringement properly pleaded against his clients, there is equally no case of authorisation of any relevant act. I am bound to reject that submission because I have found that such an act is pleaded in sub-paragraph (i). In the alternative he submitted that, even if he was wrong and sub-paragraph (i) did plead an act of a customer, there was no adequate plea of authorisation. He referred me to two cases where allegations of authorisation had been held to have been inadequately pleaded or made out: A&M Records v Audio Magnetic [1979] FSR 1, a decision of Knox J; and Philips Domestic Applicances and Personal Car BV v Salton Europe and another [2004] EWHC 2092 (Ch).

In A&M Records the defect in the pleading was that no specific act of infringement was identified as having been authorised. In the present case, on the finding I have made about sub-paragraph (i), that is not the case. In Philips Laddie J, after citing a passage from the speech of Lord Templeman in CBS Songs Ltd v. Amstrad Consumer Electronics Plc [1988] AC 1013, said this at [44] of his judgment:

In the present case, although the matters relied on are not conveniently pulled together in the form of a set of particulars, it is clear that complete control is exercised by GmbH over the content of the pop-up windows. This is not a case of a mere supply, leaving it to the customer to choose what use is made of the data.

Mr Cuddigan submitted that the reference to authorisation in sub-paragraph (iii) was merely to authorisation of the defendants amongst themselves. I think there would have been force in that submission had I rejected the claimants’ case on sub-paragraph (i). But once it is accepted that sub-paragraph (i) pleads a case of reproduction by a customer, then it follows in my judgment that sub-paragraph (iii) is pleading a case of authorisation of that act as well.

I conclude that the claimants have adequately pleaded a case of authorising reproduction by customers in the UK.

As indicated above, paragraph 36 of the particulars of claim alleges the joint and several liability of GmbH and AG for the acts about which complaint is made, which fell to be identified. Mr Cuddigan submitted that paragraph 36 is an allegation of joint liability of the defendants amongst themselves only, not an allegation of joint liability of each defendant with the customer in the UK. He points to the fact that the particulars given certainly do not explain how GmbH and AG might be individually or jointly liable with customers in the UK.

I first consider the case of the alleged joint liability of GmbH and AG with customers in the UK. In connection with copyright infringement, a case that GmbH and AG are jointly liable with customers is an alternative way of putting the authorisation case. There would be no need for GmbH or AG to do any act in the jurisdiction. The pleading asserts that GmbH has procured etc. the acts of which complaint is made, which include the act of reproduction by a customer. As I have held that there is an adequate plea of an act of infringement of copyright by a customer in the UK, there is also an adequate plea of joint infringement between GmbH and AG with the customers.

Mr Cuddigan had a separate point about AG. He relied on the following principles derived from the cases, which were not in dispute:

In order to be jointly liable for another's torts, a party must have conspired with that other party or procured or induced his commission of the tort or he must have joined in the common design pursuant to which the tort was committed: it is not sufficient that a party merely knew of or facilitated another party’s tortious acts - see Credit Lyonnais Bank Nederland NV v Export Credit Guarantee Department [1998] 1 Lloyd's Rep 19, at p29;

The mere fact that a holding company has overall control of its subsidiaries in the sense that it could, if necessary, override the decisions of the boards of directors of the subsidiary companies by the exercise of financial or voting control, is not sufficient to establish an arguable case of joint tortfeasance - Unilever Plc v Chefaro Proprietaries Ltd [1994] FSR 135;

A case of joint tortfeasance will not be made out simply by showing that a parent company looked on its subsidiaries' infringing acts with approval. The fact that a company asserted a strong proprietorial claim to all the assets and activities of its subsidiaries was neutral as to joint liability - The Mead Corporation v Riverwood [1997] FSR 484.

The fact that one company owns an intellectual property right such as a copyright or trade mark which another company uses does not make the rights owner an infringer. At all times the courts are looking to see whether there is a credible case made out that the joint tortfeasor has really become involved in some way with the tort which is the subject of the action - Napp v Astra [1999] FSR 370.

In the light of those principles Mr Cuddigan submitted that the fact that the Defendants’ website bore a copyright notice with the name AG and that the office from which the Live Scores service is operated is part of AG (even if correct) did not amount to a case of joint tortfeasance. He relied on the evidence of Mr Koerl, the CEO of AG, who stated in paragraph 6 and 7 of his second witness statement:

The General Terms and Conditions of the Sportradar Group are available online, and were produced in evidence by Ms Hoy. These show that it is AG who undertakes to deliver the relevant products/services to the customer and that the customer may use them in return for payment to AG.

On the material before me I think that the claimants have shown a good arguable case of joint tortfeasance between AG and the customers and between the defendants amongst themselves. I do not accept that the terms and conditions can be properly reconciled with Mr Koerl’s evidence to reach a conclusion that AG are not involved in the distribution of the data.

I have held that there is an adequate plea of authorisation of copyright infringement in the jurisdiction (or the joint commission of such an act). I still need to decide the further issues raised by GmbH and AG, which go to the merits of the copyright claim.

Mr Cuddigan first took an unashamedly technical point. He submitted that the particulars of claim did not make out a case of subsistence of copyright. That is because, he said, the particulars of claim did not plead that the authors were “qualified persons”. He drew attention to paragraph 25 of the particulars which merely states that

None of the “matters aforesaid” included the relevant qualification of the authors. He submitted, therefore, that the conclusion does not follow from any of the premises.

I reject that submission. The reason Mr Cuddigan recognises that it is a highly technical submission is that the overwhelming likelihood is that the authors are qualified persons. There is therefore a good arguable case of subsistence of copyright.

Mr Cuddigan combined his next two points. He relied on the decision of the CJEU in Infopaq International A/S v Danske Dagblades Forening Case C-5/08; [2009] ECDR 16, at [38]-[39]. In that case the Court of Justice said:

This approach was summarised by Arnold J. in SAS v World Programming [2010] EWHC 1829 at [244] as follows:

Mr Cuddigan submitted that there could be no infringement unless there was a good arguable case that what the defendants were alleged to have taken by reproduction was itself protectable as a copyright work, in the sense that it could be described as the author’s own intellectual creation. Although he accepted that there might be data fields where that criterion might be satisfied, he submitted that there was no possibility of such a finding in relation to the fields identified in paragraph 37 of the pleading. Matters such as goals, goalscorers, and red and yellow cards left no room for judgment or discretion. They were simply collected mechanically by an observer according to a fixed rule.

Paragraph 22 of the particulars of claim alleges that the compilation of Football Live involves “considerable skill, effort and/or intellectual input by experienced personnel to generate, select and/or arrange its contents”. There is also an allegation that a substantial part has been used: see paragraph 37. In the light of the law as stated above, those combined allegations must include the allegation that what is taken is a substantial part of the intellectual input of the authors. Those allegations are supported by a statement of truth from each claimant. Mr Cuddigan’s argument that the part alleged to have been reproduced by his clients does not amount to an intellectual creation is not supported by any evidence. Whilst the court might have a view based on its own impressions, I do not think that it would be right to place those ahead of what is properly in evidence. In those circumstances, whilst there may ultimately prove to be force in the argument, I think the claimants have a good arguable case on this issue.

The next point concerns the terms of a contract with Bet 365. This point would not in any event be conclusive, because of the alternative contract with Stan James. I therefore need say no more about it in relation to copyright.

The claimants place reliance on what they claim are errors copied from Football Live which have appeared in the defendants’ data as evidence of copying. One of these errors would appear to be inapplicable as the defendants’ operative logged it before the claimants. GmbH and AG submit that the remaining errors would need to be viewed against the totality of errors, particularly as some of the errors may have a common source such as incorrect attribution of goals by announcement at the ground. At the moment, however, on the evidence before me, I consider that the claimants have a good arguable case.

No additional acts are relied upon in support of the allegation of database right infringement. The allegations are contained in paragraphs 40 to 42 of the particulars of claim:

“Extraction” and “re-utilization” are the rights which Art. 7(1) of the Daatabase Directive requires member states to give to the owner of the right. The pleading tracks the definitions of “extraction” and “re-utilisation” in the Database Directive which are made part of our law by paragaph 12 of the Copyright and Rights in Database Regulations 1997. “Extraction” is defined by Art 7(2)(a) of the Database Directive as:

“Extraction” can be direct or indirect: British Horseracing Board Ltd. v William Hill Organisation Case C-203/02 [2005] RPC 13. Extraction includes downloading: Directmedia Publishing GmbH v Albert-Ludwigs Universität Freiburg Case C-304/07; [2009] RPC 10.

“Re-utilization” is defined by Art 7(2)(b) as:

In domestic law this has become:

The Database Directive also has a “little and often” provision which applies where what is being transferred or transmitted is not enough to constitute a substantial part of the whole database. Article 7(5) provides:

Unlike copyright, there does not appear to be any provision corresponding to section 16(2) of the Act which prevents “authorising”. So the claimants must show that GmbH or AG have done the acts in question, or plead some act of extraction or re-utilization by someone else and rely on joint tortfeasorship.

So far as “extraction” is concerned I can see no basis on which it has been alleged that GmbH or AG extracted the data in the UK. Mr Mellor’s skeleton contains the following paragraph 52:

In my judgment it is the end users in the UK who would carry out any act of extraction in the UK. They would do so by downloading information necessary to allow the pop-up windows to appear on their screen. GmbH’s acts of extraction occur abroad, not here.

Nevertheless I consider that, despite the absence of a specific allegation to that effect in paragraph 40, the particulars of claim, viewed as a whole, do allege sufficient facts for the claimants to be able to maintain that customers have extracted the data in the UK. The pleading is far from tidy in this respect, but paragraph 40 does refer back, amongst other things, to paragraph 37 which is a general paragraph concerned with infringement of the claimants’ rights. It is clear from 37(i), read in context, that customers in the UK are alleged to be downloading a substantial part of Football Live.

Mr Cuddigan had a rather refined point here concerning the allegation in paragraph 41 about repeated and systematic extraction of insubstantial parts. He submitted that there was no good arguable case that any individual end user repeatedly and systematically does anything. This point did not feature in Mr Cuddigan’s skeleton. No evidence was adduced relating to it. There was no sustained argument about what was meant by “repeated and systematic”, or as to whether the threshold is low or high. I am left therefore to form my own impression of whether there is a good arguable case that the sort of downloading an end user does is properly characterised as repeated and systematic. Whilst there may be range of different uses, it seems to me that there are bound to be users whose downloading would be properly described as repeated and systematic. That is after all what the defendants are hoping to achieve by providing the data from every match, every week. I would be reluctant to hold that they had not succeeded in what is evidently their objective. I consider the claimants have a good arguable case on this issue.

“Re-utilization” raises a question of law. Where does “making available to the public all or a substantial part of the contents of a database by … on-line … transmission” occur? Does it occur where the server is situated? Or where the public are? Or in both locations?

The issue is closely related if not identical to a question raised in the amendment application. One of the amendments sought is to plead a further case of copyright infringement under section 20 of the Act, relying on “communication to the public”. Under section 20(2)(b), communication to the public includes:

Section 20 derives from Article 3.1 of the Information Society Directive (Directive 2001/29/EC) which provides:

The debate in relation to both these provisions is similar to that which occurred in relation to “broadcasting”. That debate has now been resolved, so far as the European Union and satellite broadcasts are concerned, by the Directive on Satellite Broadcasting and Cable Re-transmission, Directive 93/83 EC, and by amendments made to section 6 of the Act by the Copyright and Related Rights Regulations 1996 (SI 1996/2967) for all wireless broadcasts. By those provisions the place where the act of broadcast occurs is where the signals are introduced under the control of the person making the broadcast into an uninterrupted chain of communication. This is known as the “emission theory”. There is no corresponding definition for either of the restricted acts in issue here.

Does the emission theory apply in the case of infringement of database right by making available to the public by online transmission? Mr Mellor submitted that it did not. He submitted firstly that the emission theory made sense in the context of satellite broadcasting, principally because of the approximate coincidence between the footprint of the satellite and the sphere of regulatory influence over the broadcasters, i.e. the European Union. With online transmission the server could be positioned anywhere – and in particular in states which are not party to any international obligations. He was, however, unable to point to any case or travaux preparatoires which indicated this as the basis for the emission theory as it applies to broadcasting. Moreover it is significant that the UK has adopted the emission theory for all wireless broadcasts, not solely satellite broadcasting: see section 6(4) of the Act.

Secondly Mr Mellor submitted that the emission theory would make the right to prevent online transmission worthless, as the server could be positioned in a state where there was no redress. I do not accept that this is the case. The right would prevent transmission or re-transmission in a state to which the Directive applies. Other restricted acts would prevent any further use of the database within the state of reception if the transmission originated from outside the EU.

Thirdly Mr Mellor submitted that the defendants were arguing for a theory which went beyond that which applies to satellite broadcasting, as the defendants need to contend that subsequent communication in the state of reception cannot be prevented. I do not think that is a necessary contention on the part of the defendants on this part of the case. They simply maintain there can be no primary infringement of database right by placing data on a server outside the United Kingdom.

Finally he submitted that to apply the theory would be tantamount to applying a rule of exhaustion as soon as a digital work was published. This was expressly prohibited by Article 3.3 of the Information Society Directive. I do not see how that is the case. There is no question of subsequent infringing acts ceasing to be actionable.

Mr Cuddigan had arguments the other way based on the wording of the Directives. He drew attention to the fact that it is making the data available which is the restricted act. The public do not in fact have to avail themselves of the database. The act is committed once the data is placed on a server from which it can be accessed.

That submission is supported by the authors of Copinger and Skone James on Copyright 15^th Edition in their commentary on communication to the public under section 20 of the Act, at paragraph 7-117:

Although the words "may access it" add even more force to Mr Cuddigan's submission, neither side suggested that there was or could be any sensible distinction between the interpretation of making available to the public of the work by an electronic or online transmission in section 20(2)(b) of the Act and Article 3.1 of the Information Society Directive on the one hand and Article 7(2)(b) of the Database Directive and paragraphs 12 and 16 of the Copyright and Rights in Database Regulations on the other.

I have come to the conclusion that the better view is that the act of making available to the public by online transmission is committed and committed only where the transmission takes place. It is true that the placing of data on a server in one state can make the data available to the public of another state but that does not mean that the party who has made the data available has committed the act of making available by transmission in the State of reception. I consider that the better construction of the provisions is that the act only occurs in the state of transmission.

The point of law does not however dispose of the question of jurisdiction. In my judgment, for the same reasons as in the case of “extraction”, namely the reliance on paragraph 37(i), the particulars of claim do allege sufficient facts to make out a case of re-utilisation by Bet 365 and Stan James.

Here, it is necessary to consider an argument that Bet 365 were licensed by the claimants. Stan James are not said to be operating their server within the jurisdiction: it is in Gibraltar. If Bet 365’s activities are licensed by the claimants, then their acts are not infringements on which the claimants can rely either.

In October 2006 the first claimant entered into a licence agreement with Bet 365 which permitted Bet 365 to reproduce football match data online covering football seasons 2004/5 up to 2010/11. The agreement was contained in a letter from Bet 365 countersigned on behalf of the claimant. It is framed as an agreement not to sue Bet 365 provided they comply with certain conditions. It contained an undertaking as follows:

"The Licence" in this undertaking is defined as the "attached new media betting licence" (“NMBL”). Clause 3.1 of the NMBL requires the licensee to acquire the Data from an Approved Supplier. GmbH and AG are not Approved Suppliers.

Mr Cuddigan submits that Bet 365 have only undertaken to observe the NMBL in relation to reproduction and use of the data. They have given no undertaking in relation to its acquisition. He draws attention to aspects of the NMBL which are inconsistent with the terms of the letter, such as the acceptance of the existence of the claimants’ rights. So not all of the NMBL should be taken as applying to Bet 365.

Mr Mellor answers this point by submitting that use by Bet 365 is not in accordance with the NMBL if the data which is used is acquired from a non-Approved supplier. The letter obviously takes precedence where there is a conflict with the NMBL, but otherwise the two should be construed together.

This is not a point of construction of the kind which can be decided on an interim application. Much will depend on the factual matrix which existed at the time that the claimant and Bet 365 entered into the agreement. For present purposes I consider that the claimants have the better of the arguments. The most plausible reason why the NMBL regulates the source of the data is to ensure that control is maintained over the data which is used. I think the better interpretation of the NMBL is therefore that use on data from non-Approved suppliers is not use in accordance with the NMBL Such use is precisely the sort of use which the NMBL is seeking to avoid.

This point can be disposed of quite shortly. Paragraph 36 alleges joint and several liability for procuring etc the acts of which complaint is made. These include, on the view which I have taken, acts of extraction and re-utilisation by customers.

It follows that the claimants have not made out a good arguable case of primary infringement of database right, but have made out a good arguable case of joint liability with customers.

It is first necessary to consider the principles applicable when permission is sought to amend proceedings in this country when proceedings are pending in another Convention country involving the same subject matter.

The background is Art.27 of the Judgments Regulation:

The term “cause of action” has an autonomous meaning in EU law. It includes both the same cause and the same objet. The cause is the facts and the rule of law relied upon. The objet is the end in view or the objective. These principles were established in The Tatry [1994] ECR-I 5439 at [38]-[45].

These principles have been considered in the case of amendment in a number of cases. In Lloyd’s Underwiters v Sinco [2008] 2 CLC 187 the claimant syndicates sought to amend to add a claim for breach of an exclusive jurisdiction clause to an existing contractual claim. The Greek court was already seised of a challenge to its jurisdiction. Beatson J held that the Greek case did not raise the same cause as the amended claim for breach of the exclusive jurisdiction clause. However he went on to a reject a claim that the English court was already seised of the amended contract claim at the date of its original claim form, not least because there had been no breach at that date. At [67], page 209 he said this:

Other authorities have looked at the appropriate level of generality to assess identity of cause and objet between proceedings here and in the rival jurisdiction. In J P Morgan Europe Ltd v Primacom AG [2006] I L Pr 11 Cooke J said at [45]:

Having considered an approach suggested in Briggs & Rees, Civil Jurisdiction and Judgments, at 2.189, he added this at [47]:

In the circumstances of the present case I should not allow any amendment which raises a new cause of action in this sense if it is within the scope of the proceedings in the Landgericht Gera. In such a case it would be the Landgericht Gera which was first seised, and I would have to stay or strike out the amendment accordingly.

The amendments sought are the following:

An amendment to paragraph 36, expressed to be for the avoidance of doubt, to assert that the allegation includes joint liability (a) for the acts of the customers located in the UK of reproduction and/or extraction carried out by customers located in the UK accessing the pop-up windows and re-utilisation which are relied on and (b) for the acts of reproduction, communication to the public, extraction or re-utilisation by Bet 365 and Stan James as set out in paragraph 37(1) and 40.

An amendment to paragraph 36 to add a further sub-paragraph (iii) placing reliance on passages from the evidence in support of joint tortfeasance by AG.

An amendment to sub-paragraphs (i) and (iii) of paragraph 37 to place reliance on “communication to the public” as an additional restricted act as provided for by section 20 of the Act.

I can see no objection to the first category of amendments. I have held that there is an adequate basis in the pleading for the allegation of joint infringement of copyright and database right with customers. On this basis the amendments merely make that clear.

In the light of my findings I can also see no objection to the second category of amendment, which would give further particulars of joint tortfeasance with AG. Mr Cuddigan pointed out, rightly in my view, that the suggested amendment would more closely conform to the rules if it were pleaded by reference to the facts relied upon rather than passages from the evidence. Mr Mellor did not resist the suggestion that this should be done, and, subject to that, I allow the amendment.

The third category of amendment places reliance on communication to the public. The position here is a little more complicated. I consider that the reliance on section 20 to plead that acts of customers communicate the data to the public is allowable. It is based on facts already pleaded in support of the reproduction, extraction and re-utilization claims. At the appropriate level of generality it has the same cause and objet.

However as I have held that there cannot be primary liability of GmbH and AG for this act, I should not give permission to amend to allege primary infringement by communication.

The issue of law which I have decided concerning the place where the act of making available by online transmission occurs is a question of some importance, not merely to the parties to this case. Whilst I have felt able to decide the point, it is fair to say that it is not acte claire. I therefore would have jurisdiction to refer the matter to the CJEU for a preliminary opinion under Art 267. I am not, however, bound to do so.

If I were to refer questions on the Database Directive and the Information Society Directive to the CJEU I would have to delay reaching a decision on jurisdiction and amendment until after the answers to those questions had been received. Such a course might be justified in a case where such a reference would be determinative of whether the court has any jurisdiction at all. It may however be a disproportionate step where the question referred goes to only a minor part of the pleaded claim.

I have decided not to refer any question to the CJEU. The causes over which the court has jurisdiction seem to me to be adequate, if any prove to be justified, to achieve the object the claimants have in view. Moreover, even if primary infringement of database right and copyright were permitted to be in issue, it might not prove necessary for the court to decide the issue of law. The case might fail on a variety of other grounds, such as absence of copying. A reference to the CJEU in the circumstances of this case is, in my judgment, unnecessary.

I have come to the conclusion that the court has jurisdiction over the claim for authorising, and joint liability for, copyright infringement and the claim for joint liability for database right infringement. I will allow the amendments save for those raising the case of primary infringement under section 20 of the Act. The particulars of claim should be amended to make it clear that the case is limited to the claims over which I have held there to be jurisdiction, and otherwise to bring them into conformity with this judgment.

I will hear counsel as to the form of order.