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Thursday, 15 March 2018

Spanish Supreme Court puts an end to a “sui generis” case concerning database “sui generis” right

(Probably) *Not* a
database right-inspired band
The Database Directive has been around for a while, yet it is arguable that one of its crucial aspects, this being the sui generis (database) right, has remained somewhat ambiguous.

Katfriend David Serras Pereira (SPAutores) reports on a recent SPanish decision concerning indeed the sui generis right.

Here’s what David writes:

A long time ago in a galaxy far, far away....

The Database Directive was adopted in March 1996, and not so often we hear of national landmark decisions based on the national laws implementing the Directive, giving us clues on the best practices and guidance when dealing with databases cases.

Quoting the IPKat’s last post (Technomed v Bluecrest) covering national “newsfeed” on this topic (here) “Database right is an infrequent visitor to the IPKat's pages”! 

Now, again, two medical industry players, offer reasons to highlight it again!

How many times as the Article 7 sui generis right infringement resulted in EUR 5 million fine? None? Not anymore, Spanish judges have decided.

In a very recent decision the Spanish Supreme Court (here) has dismissed an appeal for annulment and upheld the judgments issued by the lower courts which imposed a fine of EUR 5 million on IMS Health to be paid to Infonis for having copied the latter’s database.

This decision puts an end to this case and shows a good and interesting approach to the sui generis right by Spanish judges in what looks like a landmark decision, especially if one takes into account the (ok… I’m tempted to use it here) “sui generis” amount of the damage award related to the “sui generis” right and the interesting evidence considered by the court.

Article 7 of the directive states:

“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-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.”

Spain has transposed this provision by means of Articles 133 - 137 of Real Decreto Legislativo 1/1996, de 12 de abril (here).

The case

In 2010, Infonis (a Spanish company) sued IMS Health claiming that the latter had infringed its database rights. Basically, Infonis claimed that ZBSales, its pharmaceutical marketing database, had been copied by IMS Health and resulted in the creation of a competing and suspiciously similar database (Sanibricks),

INFONIS devoted three years to the making of ZBSales (a database tracing the health map of all the Spanish autonomous communities) which was presented to the pharmaceutical market in 2006. In the same year, a 10-year marketing agreement was also reached between Infonis and IMS Health. Yet 3 months later IMS was said to have put an end the agreement and extracted the data contained in Infonis database.

Both at first instance and in appeal the claimant succeeded. Both courts found that INFONIS had made a substantial investment in connection with its database. What is interesting is also the evidence relied upon to prove infringement of the database right …

Just don’t copycat the errors… they said…

So, speaking of evidence, how have the courts reached the conclusion that there had been copying of the ZBSales database?

By comparing the two databases (and analyzing more than 20.000 items as reported here) it was found that the Sanibricks database included the same errors of of the ZB Sales these being errors in the names of the basic health zones.

It was found that it would very strange (impossible) that the exact same errors present on the claimant database, would be also present in the database created by IMS Health.

This is an interesting decision, not only in terms of the uncommon amount of the awarded damages for the infringement of this “sui generis” right, but in understanding how evidence (regarding the infringement, and not the other requirements, eg effort, investment…etc…) should be gathered and produced in similar cases. 

Above all, this decision is proof that the database sui generis right is applicable, not “dead lex”, and that the protection of the efforts and investment carried out by undertakings in such cases has now one more favorable decision strenghtening its effectiveness.”

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