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case summary: FTS v West Yorkshire Police

18 January 2012
Forensic Telecommunications Services Limited v (1) Chief Constable of West Yorkshire Police (2) Stephen Hirst [2011] EWHC 2892 (Ch), 9 November 2011

The High Court has given useful guidance on the relationship between copyright and the sui generis database right in a case concerning tables of data containing permanent memory absolute addresses for mobile phones. Arnold J found that copyright did not subsist in the tables as they were not a product of the authors own intellectual creation by reason of the selection or arrangement of their contents. The tables were however protected by database right and the defendants had infringed that right, and breached an obligation of confidence, by making unauthorised use of the tables.

Background

Forensic Telecommunications Services Limited (FTS) developed a method of extracting deleted data (e.g. SMS messages) from the non-volatile memory of mobile phones.

This method involved the use of a software program (FTS Hex) which required the permanent memory absolute addresses ("PM Abs Addresses") of the phone in question in order to operate. The PM Abs Addresses are unique to each make and model of phone, and although known to the phone manufacturers, are not disclosed.

FTS invested significant time and effort in obtaining the PM Abs Addresses for a number of Nokia handsets and created a list of those addresses ("the PM Abs List") which it provided to licensees of FTS Hex. FTS Hex was licensed to the security services, but not to the police.

A security service officer later supplied the PM Abs List to the defendants in order to assist in relation to an anti-terrorism investigation. The second defendant, Mr Hirst, along with one of his colleagues subsequently developed a competing software application and posted data obtained from the PM Abs List on a website which they operated as an information exchange for police officers.

Copyright

Arnold J held that copyright did not subsist in the individual PM Abs addresses, and referred to his judgment in SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch) in which it was held that literary works are only protected by copyright if the skill, judgement and labour is expended in devising the form of expression of the literary work. In the present case it was held that the skill, labour, and judgement exercised by FTS was in obtaining the information, not in devising its form of expression.

In determining whether the PM Abs List was capable of protection as a table or compilation other than a database, Arnold J considered s.3A of the Copyright Designs and Patents Act 1988 (CDPA) which provides that a database is original if, by reason of the selection and arrangement of its contents, the database is the authors own intellectual creation.

In this case the PM Abs List was held not to be the authors intellectual creation by virtue of the "selection and arrangement of its contents". The author had not selected the contents - they were acquired by happenstance during the course of FTS business. In addition, the arrangement was an obvious and basic one which did not require sufficient skill, labour and judgement.

Neither the individual entries, nor the PM Abs List as a whole were protected by copyright.

The Sui Generis Database Right

Regulation 13 of the Copyright and Rights in Databases Regulations 1997 provides protection for databases if there has been a substantial investment in obtaining, verifying or presenting the contents of the database.

It was held that obtaining the PM Abs Addresses and verifying them involved a substantial investment sufficient to warrant protection under regulation 13. Arnold J also found that the lists of PM Abs addresses compiled by the defendants re-used a substantial part of the PM Abs List and therefore infringed FTS database right.

Breach of Confidence

In applying the test for breach of confidence in Coco v A.N. Clark (Engineers) Limited RPC 41 Arnold J found that the PM Abs List had the necessary quality of confidence because it was commercially valuable information. He also found that the defendants should have been aware that the information passed to them by the security service officer gave rise to an obligation of confidence, and that their subsequent use of the information was a breach of that obligation.

Comment

This case provides some useful guidance on the relationship between copyright and the sui generis database right and highlights the different tests to be applied when assessing the originality, and therefore subsistence, of those rights.

The case also highlights the applicability of the sui generis database right in circumstances where the authors efforts are expended in obtaining and verifying the data, rather than in creating, selecting and arranging it.

This article was first published in The ITMA Review

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