July 31, 2019
The claimant, The Kennel Club Ltd, a well-known organisation in relation to dog welfare, has, since the early 1990s operated the Petlog database. This holds data from animals that have been implanted with microchips supplied by various companies. The defendant, Micro-ID Ltd, is one such supplier. If a dog is lost, the microchip ID can be scanned and matched to information in the Petlog database so that the dog can be reunited with its owner.
The Kennel Club issued proceedings against Micro-ID for a debt of £123,843.03, alternatively for breach of a contract entitled the Reunification Database Management Agreement, entered into between the parties on 4 January 2010. There was no dispute as to the existence or amount of the debt.
Micro-ID put forward a defence of set-off, which alleged breach of the Agreement, alternatively infringement of database right under The Copyright and Rights in Databases Regulations 1997. Both claims related to the Petlog database.
This report focusses on the database right infringement claim, following the judge’s findings that there had been no breach of contract as a result of the sending of certain marketing emails, but that there had been a breach in respect of others.
It was not disputed that the Petlog database qualified for protection as a “database”, as defined in the Database Regulations.
The Recorder Mr Douglas Campbell QC found that The Kennel Club was the first owner of the relevant database right. It was The Kennel Club that had taken the initiative and assumed the risk of investment in the database, each within the meaning of regulation 14. The judge accepted Micro-ID’s argument that it supplied the relevant data to The Kennel Club for incorporation into the database, but said that this did not amount to taking the initiative or assuming the risk. Further, there was no evidence of figures from Micro-ID showing its investment in the Petlog database.
As to the question of ownership of the database right in the Petlog database, the following clause 6.1 of the Agreement was relevant:
“6.1 The Data on the Database in respect of animals’ [sic] microchipped with a Microchip manufactured/supplied by [Micro-ID] shall be jointly owned by [The Kennel Club] and the [Micro-ID]. [The Kennel Club] will not market this data without prior agreement from [Micro-ID].”
The Judge acknowledged that clause 6.1 did not expressly refer to ownership of the database right, but said that this was not determinative. Further, The Kennel Club did not advance any alternative theory as to what effect or meaning clause 6.1 might reasonably have that did not involve joint ownership of database right. In the Judge’s judgment the effect of clause 6.1 was that the parties agreed to be joint owners of the database right in so much of the Petlog database as derived from data supplied by Micro-ID. The database used data from a number of different suppliers and clause 6.1 could not affect the database rights of so much as the database was derived from data provided by other suppliers. Equally, the judge said, the existence of other suppliers had no effect on clause 6.1 as between The Kennel Club and Micro-ID. Since the other suppliers would have agreements in substantially the same terms and conditions then each of these other suppliers would have supplied data to the Petlog database and, as a result of their own equivalents of clause 6.1, they would be joint owners of the database right in so much of the Petlog database as derived from the data they had supplied.
The judge agreed with The Kennel Club that this was “a practically inconvenient conclusion”, particularly because its microchip suppliers came and went over time. However, the problem did not arise because of the Database Regulations, but because The Kennel Club had signed up to the Agreement, including clause 6.1, in those particular circumstances.
As for whether The Kennel Club had extracted or reutilised a substantial part of the contents of the Petlog database without the consent of Micro-ID, the judge had already found that sending certain emails to Petlog customers did not involve any breach of contract. This was because the underlying purpose of sending those emails was about encouraging people to update their contact details or purchase items (as permitted by the Agreement), not to market the data (as prohibited by clause 6.1). For the same reason, sending those emails did not involve any infringement of database right either; the joint owners of the database right had both agreed to this type of use by virtue of entering into the Agreement. Whilst one category of emails might poei
As for those emails that the judge had already found to give rise to a breach of contract, the question of whether there had been any infringement of database right turned on whether The Kennel Club had extracted or reutilised a substantial part of the contents of the relevant database in order to send them (i.e. that part of it in relation to which Micro-ID had joint ownership). However, the evidence at trial did not explore this issie, so the judge declined to find that The Kennel Club had infringed database right.
(The Kennel Club Ltd v Micro-ID Ltd  EWHC 1639 (IPEC) (25 June 2019) — to read the judgment in full, click here).