The sui generis right of the maker of a database: a preliminary injunction order of the IP Court of Rome

Following a lawsuit between two companies specializing in the publication of judicial foreclosures, the IP Court of Rome, on appeal, upheld a first instance preliminary injunction based on the sui generis right granted by copyright laws to the maker of a database in order to protect its investments (IP Court of Rome, docket no. 65124/2013, order of 24 December 2013).

The applicant company had filed a motion for a preliminary injunction, claiming to own an online database of judicial foreclosures that was raided by a competing company, which allegedly extracted and re-published a substantial part of the same documents in a similar database, thus diverting traffic to its website. It argued that the extraction and re-utilization of these documents constituted a prima facie case of infringement of its sui generis right surrounding the relevant database and of unfair competition.

Specifically, the applicant complained that the obtainment, scanning and digitalization, privacy proofing and verification of the relevant contents, as well as their arrangement into the database, implied human, technical and financial investments that its competitor, by opportunistically extracting and republishing the same documents at no cost, did not experience, thus gaining an unfair competitive advantage.

The IP Court of Rome recognized a prima facie case of sui generis right infringement and free riding, and enjoined the defendant company from further extracting and re-using the contents of the database, subject to a monetary penalty.

The defendant filed an immediate appeal denying the very existence of the other party’s right, on the grounds – among others – that the relevant contents were publicly available documents owned by the judiciary, and that, in any event, prima facie evidence of the re-utilization of a substantial part of the database had not been provided by the applicant. The appellant also cited a lack of urgency, required under procedural law to grant urgent remedies, alleging to have been engaging in the activity in suit for years.

The appeal Court, however, rejected the appeal.

To begin with, the Court acknowledged the existence in the case at hand of a sui generis right, noting, on one hand, that the ownership of the single documents forming the database must be distinguished from the ownership of the database itself, and appreciating, on the other, the investments undertaken for the creation of the database in suit.

The Court then dismissed the quantitative argument, declaring that the sample test method chosen by the applicant to prove the scale of the alleged infringement was perfectly acceptable in the context of summary proceedings. It further observed that, even if the re-utilization was hypothetically limited to an insubstantial part of the database, such as the appellant argued, it would still constitute infringement of the sui generis right, recalling the rule that a systematic re-utilization which unreasonably prejudices the legitimate interests of the database owner is prohibited regardless of its scale.

On the issue of urgency, the Court held that the initial date of the alleged illegal activity had no relevance, as urgent protection in copyright matters is focused on pre-emption, including preventing the continuation of an infringement which has already gone on for some time.

On these grounds, the Court upheld the injunction granted in the first degree proceedings and ordered the appellant to pay the costs of the appeal proceedings.