Hidden IP: Rights in databases

Every day, businesses generate valuable intellectual property ("IP") - often without realising it. In this new blog series, Andrew McDonald draws attention to some of the IP being created by businesses, which might be overlooked, undervalued or not utilised. 

This blog covers the importance of database IP rights and the various types of IP protection available for your database. 

It is hard to think of any business which doesn’t require some form of database to operate, whether that is to collate customer/client information or where the database actually is the business – such as recruitment platforms. Many will recognise the importance of the data which makes up the database, but perhaps not that the database itself might attract rights. This is for good reason. After all, if valuable data is not accessible or properly categorised, then its value cannot be realised.

Understanding what rights might affect your database is important for ensuring:

• Your IP assets are properly valued; and
• Adequate protection of those assets from, for example, copycats or departing employees/business partners.

IP rights which might affect databases

So, what types of IP rights might a database attract?

• Copyright in databases: under s.3(1)(d) of the Copyright Designs and Patents Act 1988, a database is recognised as a form of literary work, separate to any copyright in the data contained within it. In order for the database to qualify for protection under copyright, the database must be original – i.e. it must not be copied from elsewhere. The content of the database must be “arranged in a systematic or methodical way”.
  
  The benefit of protection under copyright is that the owner has the exclusive right to copy, make adaptations, publish and communicate to the public of the database. In the case where there has been infringement of the copyright, the owner can seek interdict against the infringer, delivery up of any copies of the infringing material, as well as damages arising from any losses suffered by the infringement.
  
  
• UK sui generis database right: The sui generis database right sits alongside copyright. While copyright protection in a database requires some element of originality, the sui generis database right applies only to databases for which there has been “a substantial investment in obtaining, verifying or presenting the contents of that database”.
  
  Infringement of this right specifically includes extraction and reutilisation of a substantial part of the database. This can include repeated extraction/reutilisation of small parts of the database. While such acts might in some cases amount to ‘copying’ or ‘adaptation’, acts which are protected under copyright, this protection is much more specific in its terms and as such, can be easier to prove. The right exists for 15 years from the date of completion of the database, or the date on which it is made available to the public, whichever is earlier.
  
  Post Brexit, only databases in the UK are protected. Databases in the UK created to 1 January 2021 will also be protected in the EU under the reciprocal EU sui generis database right.
  
  
• Confidential information/trade secrets: the database, or the information contained within it, will be deemed confidential information if it has the necessary qualities of confidentiality – i.e. that it is not publicly available. Unlawful disclosures of such information would give rise to a basis of a claim for breach of confidence. 

Who owns it?

The first owner of the copyright in a database will usually be the maker, but where an employee makes the database in his/her employment, then the database will belong to the employer. There is no such protection for an employer for the EU Database Right.

Getting the most out of your database rights

The time and effort which can go into the preparation of databases is reflected in their protection as IP. Parties seeking to value their IP assets should not consider just the underlying data or work product contained in the database, but the actual database itself. Equally, in an enforcement context, for example where a former employee or competitor has unlawfully made copies of a database, claims under copyright and, in more limited circumstances, the EU Database Right can present another route to remedy.

If you would like advice on database IP rights, do not hesitate to get in touch with our specialists.  

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