Database protection a reality? How the professional and fantasy sporting
world could benefit from a sui generis intellectual property right
By: Julia Johnson
Table of Contents
Introduction ................................................................................................................................... 3
The Rich Reality of the Fantasy Business ................................................................................... 5
Pro League Attempts to Own and Control data ........................................................................ 8
Canadian Approach to Copyright in Data Compilations ....................................................... 11
American Approach to Copyright in Data Compilations ....................................................... 13
The extent of Copyright protection in various types of compilations .................................... 15
Limitations to Copyright protection in sports data in Canada and US ................................. 18
Data in their own right: the sui generis database right in Europe ......................................... 20
Across the pond, sporting data highlights limits to database right ........................................ 22
Importing the sui generis right in Canada and US .................................................................. 26
Conclusion ................................................................................................................................... 29
2
Introduction
ESPN’s 2010 documentary entitled Silly Little Game portrays a bittersweet tale of the
fathers (and mother) of fantasy sports. The film chronicles the founding of Rotisserie League
baseball, the brainchild of Daniel Okrent now widely recognized as the first formal fantasy
sports league. In 1979, Okrent came up with a way for him and his fellow superfans to compete
against each other for the ultimate baseball bragging rights by drafting and managing fantasy
teams that followed the actual performance statistics of Major League Baseball’s National
League players. The name “Rotisserie” stems from a New York French bistro where the original
league met to obsess over their teams. 1 Born in the pre-Internet era, the Rotisserie owners would
meticulously follow box scores published in newspapers to track their team’s weekly
performances. Okrent’s Rotisserie game spread quickly, first to his contacts in the media
industry and eventually throughout the United States as national press attention encouraged
thousands of baseball fans in the US to found their own Rotisserie leagues. 2 Then, the web
revolution gave sports fans everywhere access to real-time statistics, fuelling an explosion of
fantasy followers and the present-day cultural obsession. 3
In the film, the original fantasy players fondly recount the hours spent scouring box
scores and news reports in preparation of the first Rotisserie League draft. But as the story
unfolds, the warm, celebratory tones of the interviewees subtly deteriorate as the plot turns to
modern day fantasy leagues at the core of a multi-billion dollar industry. The faces of the
Rotisserie originals are dimly lit as the gang is awarded a ceremonial “Proclamation” from the
1
ESPN, Silly Little Game 30 for 30 Series (aired 20 April 2010) written and directed by Lucas Jansen, Adam
Kurland, online: <http://www.firedrive.com/file/D9A538926132E950> [Silly Little Game].
2
Marc Edelman, “A Short Treatise on Fantasy Sports and the Law” (2012) 3 Harvard Journal of Sports &
Entertainment Law 1 at 8-9.
3
Zachary C Bolitho, “When Fantasy Meets the Courtroom: An Examination of the Intellectual Property Issues
Surrounding the Burgeoning Fantasy Sports Industry” 67 Ohio St LJ 911 at 912-913.
3
City of New York, formally recognizing their creation. The scene is juxtaposed with a discussion
of the modern lucrative fantasy sports culture. Okrent refused to attend the ceremony telling
ESPN it was humiliating. 4 While today’s fantasy sports games utilize a variety of customizable
rules and statistics, the basic structure of fantasy sports resembles the original Rotisserie
League. 5 As an aspiring intellectual property lawyer, I was left wondering if there was anything
the Rotisserie League founders could have done to protect their creation and reap some of the
ensuing profits.
Naturally, as fantasy industry revenues have ballooned, so too has litigation over rights to
the profit pies. At the centre of the fight is sports data. Actual performance statistics are the
lifeblood of the fantasy world because without the authentic stats and players, the game would
lose its appeal to fans seeking to prove their ability to select, own and manage a professional
sports team. Thus, the questions of whether performance statistics are proprietary and who, if
anyone, owns this intellectual property becomes paramount. 6 If some kind of intellectual
property right attaches to sporting data, any party seeking to utilize the data would have to
license it from the owner for a fee. 7 This potential monopoly on statistics has led to a battle
between online fantasy sports providers and the professional sports leagues and their players’
associations over whether the fantasy providers should pay licensing fees to use the players’
names and the statistics they generate. 8
4
Silly Little Game, supra note 1.
Bolitho, supra note 3 at 917.
6
Jack F Williams, “Who owns the back of a baseball card?: A baseball player’s rights in his performance statistics”
(2002) 23 Cardozo L Rev 1705 at 1708.
7
Estelle Derclaye, “Exploitation of databases, intellectual property, competition law and the sport industry: a missed
goal?” in Bouguszz et al, eds, The Regulation of Sport in the European Union (Cheltenham, Great Britain: Edward
Elgar Publishing, 2007) 206 at 207 [Derclaye, “Exploitation”].
8
Risa J Weaver, “Online Fantasy Sports Litigation and the Need for a Federal Right of Publicity Statute” 2010
Duke L & Tech Rev 2 at para 3.
5
4
Jurisdictions around the world take subtly different approaches to proprietary data. In
Canada and the United States, some compilations of data may be protected under copyright law
if the compilation meets a threshold originality requirement. In addition to copyright protection,
the European Union introduced a sui generis data base right attaching to those who invest in the
collection, verification and presentation of data. In this paper I will argue that the introduction of
a sui generis database right in North America will benefit the traditional and fantasy sports
industries without creating a monopoly on facts or stifling innovation. First, I will outline the
realities of today’s lucrative fantasy industry. Next, I will consider the current approaches to
database IP rights in Canada and the US and their limitations, with particular examination of
litigation involving sports data. Then, I will explore how European courts have considered and
applied the sui generis right since its introduction. Finally, I will conclude with explaining how a
similar right in North America would help settle an abstract area of law and benefit the players in
the fantasy sports industry.
The Rich Reality of the Fantasy Business
Recent reports estimate that fantasy sports are now a multi-billion dollar business in
North America, generating revenue from fantasy subscriber league fees, draft and scouting
reports, publication subscriptions, software, mobile apps and other products. 9 The bulk of the
fantasy industry is dominated by three platforms: Yahoo! Sports, ESPN.com and
CBSSports.com. However, these key players foster innovation in the industry by providing open
access to their platform’s application program interfaces (APIs), meaning developers can build
9
Christopher John Brej “A Fantastic ‘New National Pastime’: Copyright Preemption and the Public Domain”
(2007) 48 IDEA 1 at 1. Brej estimates in 2007 that the industry is worth $1-2 billion, while ESPN estimated $3-4
billion in 2010 in Silly Little Game, supra note 1.
5
add-on applications based on the main platform. 10 Indeed, a new sub-industry has sprouted off of
the mainstream fantasy applications. External developers are engineering new computer and
mobile apps to help fantasy owners draft and manage their teams. For example, Bloomberg
Sports Front Office is a fantasy management platform based off of the CBS Sports API to help
CBS fantasy owners manage their squads. It can be purchased for $19.99. Bloomberg Sports also
assists the pro leagues, providing more than two thirds of MLB club with evaluation and game
preparation software. 11
The surge of fantasy sports spurred the creation of the Fantasy Sports Trade Association
(FSTA) in 1998 to connect existing and emerging companies in the industry. 12 According to the
FSTA, 33.5 million Americans and 3.1 million Canadians played fantasy sports in 2013, each
spending an average of $111 on their fantasy games and materials. Roughly three quarters of
players use four or more sporting news websites to obtain relevant data to draft and manage their
fantasy teams. 13 Much like professional sports owners and general managers, fantasy owners
draft players, set game line-ups, add new players and release injured or underperforming players,
and execute trades to get the best possible outcome for their teams. Generally, fantasy seasons
last entire length of the professional season. 14 Fantasy participants spend an average of 17.89
hours per week consuming “real” sports and an average 8.67 hours per week playing fantasy
sports. 15
10
Kyle Chapman, “Fantasy sports becoming big business as popularity continues to rise”, Medill Reports Chicago
(14 May 2012) online: <http://news.medill.northwestern.edu/chicago/news.aspx?id=205473> accessed 15 March
2014. According to Chapman, Yahoo opened up its API to external developers in 2008 as part of its Yahoo Open
Strategy.
11
Ibid.
12
Fantasy Sports Trade Association, What is the FSTA?, online: Fantasy Sports Trade Association
<www.fsta.org/?page=WhatisFSTA> accessed 28 March 2014.
13
Fantasy Sports Trade Association, Industry Demographics at a Glance, online: Fantasy Sports Trade Association
<www.ftsa.org/?page=Demographics> Accessed 28 March 2014 [FTSA, “Industry Demographics”].
14
Bolthio, supra note 3 at 918.
15
FTSA, “Industry Demographics”, supra note 13.
6
Major League Baseball was the first professional league to license the use of its athletes’
names and statistics to a fantasy organization. However, a now-famous ruling by the Eight
Circuit Appeals Court in the United States (that will be discussed further below) held that the
first amendment right to free speech permits fantasy leagues to use player information and
statistics without a licence. 16 Even before the decision, 98 per cent of FTSA member leagues
were not licensed 17 and the trade association’s amicus curaie brief was instrumental in the
court’s decision.
Finally, it is worth noting that fantasy participation bolsters interest in professional sports
and helps pro leagues to grow revenues. 18 Fantasy sports participation increases the commercial
value of players because fantasy owners attend matches and tune into games they would not
otherwise follow to monitor the performance of their fantasy rosters. This increases revenues for
team owners and media distributors. 19 Research by the National Football League (NFL)
concluded that NFL fantasy players are the league’s best consumers. 20 Thus, pro leagues have an
interest in ensuring that any intellectual property rights associated with sporting data are not so
restrictive as to suffocate the burgeoning fantasy industry that promotes its product and propels
its profits. However, that has not stopped major leagues from attempting to build fences around
the information their organizations create.
16
CBC Distribution and Marketing v Major League Baseball Advanced Media LP, 505 F (3d) 818 (8th Cir 2007) at
824 [CBC].
17
CBC, (Brief of Amicus Curiae Fantasy Sports Trade Association at Statement of Interest) [FTSA, “Amicus Curiae
Brief”].
18
Adam L Sheps, “Swinging to the Fences: The Fallacy in Assigning Ownership to Sports Statistics and its Effect
on Fantasy Sports” (2006) 38 Conn L Rev 1113 at 1127.
19
FTSA, “Amicus Curiae Brief” at 3.
20
Chapman, supra note 10.
7
Pro League Attempts to Own and Control data
In 1977, years before the fantasy phenomenon took off, the NFL sought to assert property
rights in its games schedules and score results by claiming that Delaware Lottery
misappropriated the information for use in a gambling game based on football outcomes. 21 In
National Football League v Governor of Delaware 22, the court rejected the NFL’s
misappropriation claim based on the reasoning that the Delaware Lottery only utilized the
products of the League’s labour, the game results, after the league had disseminated the
information into the public domain and no longer had any expectation of profit. Justice Stapleton
of the District Court held: “While courts have recognized that one has a right to one’s own
harvest, this proposition has not been construed to preclude others from profiting from demands
for collateral services generated by the success of one’s business venture.” 23 This decision set a
precedent that sports organizations cannot stop fringe industries from using sports information in
the public domain and commercially benefitting from the promotion of a professional league.
Two decades later, the National Basketball League (NBA) launched a similar
misappropriation claim, as well as copyright infringement claim, against Motorola and a sports
data company. 24 In January 1996 Motorola began selling SportsTrax, a handheld pager that
displayed real-time NBA scores, to basketball fans for $200. Interestingly, the misappropriation
claim was struck out because the Second Circuit Appeals Court found that federal copyright
legislation pre-empted the state-level misappropriation laws. 25 As such, the Court focused its
analysis on the copyright claim. Even though the NBA’s recorded game broadcasts are covered
under copyright, the Court held that Motorola did not infringe the league’s copyright because the
21
Sheps, supra note 23 at 1147.
National Football League v Governor of Delaware 435 F Supp 1372 (D Del 1977) [Delaware Lottery].
23
Ibid at 1378.
24
National Basketball Association v Motorola Inc 105 F 3d 841 (2nd Cir1997) [Motorola].
25
Ibid at 851.
22
8
defendants reproduced only the facts from the game, not the broadcast as an expression of the
game. The Second Circuit noted: “the ‘fact/expression’ dichotomy is a bedrock principle of
copyright law that ‘limits severely the scope of protection in fact-based works.’” 26 As noted by
Sheps, the court was confident in its decision because Congress had specifically excluded
copyright in “events” when it added copyright protection to recorded broadcasts of live events
with the introduction of the Copyright Act of 1976. 27 The Motorola case determined that
copyright does not subsist in facts arising out of a live event, opening the door to the free use of
sports data by fantasy leagues.
Fantasy sports litigation climaxed in 2007 with an Eight Circuit appeals court ruling in
CBC Distribution and Marketing v Major League Baseball Advanced Media LP 28 that fantasy
operators do not require a license to use facts and statistics associated with professional leagues.
Between 1995-2004, CBC, an online fantasy sports company, paid licensing fees to the MLB for
use of “names, nicknames, likenesses, signatures, pictures, playing records, and/or biographical
data of each player.” 29 When its agreement expired, the MLB Players Association (MLBPA)
granted an exclusive license of the information to MLB subsidiary Advanced Media for
exploitation of league and player information via all interactive media. Advanced Media then
began operating its own fantasy game on the MLB website and offered CBC a commission to
promote the game. It refused to renew CBC’s license, leading CBC to sue for a declaration that it
could use unlicensed names and player statistics. 30
At trial, the MLB attempted to protect its right to license the information by way of the
players’ right to publicity, a common law action available in some states where the defendant
26
Ibid at 847.
Sheps, supra note 23 at 1122.
28
CBC, supra note 21.
29
Ibid at 821
30
Ibid.
27
9
used the plaintiff’s name as a symbol of his identity without her consent in an attempt to gain a
commercial benefit. 31 It is worth noting that players do not hold trademarks in their own
names. 32 Since the MLBPA granted Advanced Media an exclusive license, Advanced Media
argued it owned the player’s right to publicity. The appeals court rejected this argument on the
basis of first amendment considerations, noting that the information was all readily available in
the public domain. The court did not consider CBC’s alternative argument regarding the preemption of federal copyright over the State of Missouri’s right to publicity since it found the first
amendment rights trumped any right to publicity. 33
The jurisprudence shows that major professional sports leagues lost the prominent legal
battles over sports-related data that is readily available in the public domain. Courts have shown
an unwillingness to extend proprietary rights to sports leagues prior to and after the introduction
of modern copyright legislation in the United States. Further, leagues were unsuccessful in
demonstrating that use of information arising from live events in a new commercial venture
constitutes misappropriation. As characterized by Sheps, “[t]here is a distinct difference between
a ‘pirate’ who misappropriates information or a product wholesale and a contributor who
develops a completely new and different product. This distinction is especially important when
the two products are not in competition with one another.” 34 Since Rotisserie League baseball,
fantasy sports have remained in the public domain, resulting in innovative sports products and
the creation of a multi-billion dollar industry. An examination of copyright law in Canada and
the United States explains why legal protection does not extend to most sporting data.
31
Ibid at 822, citing Zacchini v Scipps-Howard Broad Co, 433 US 562 (1997).
Weaver, supra note 8 at 47
33
CBC, supra note 21 at 824.
34
Sheps, supra note 23 at 1151.
32
10
Canadian Approach to Copyright in Data Compilations
It is trite law in both Canada and the United States that no copyright can subsist in facts
because “facts do not owe their origin to an act of authorship.” 35 The policy reason behind
prohibiting intellectual property rights in facts is to ensure that factual information remains in
the public domain. 36 However, an author who arranges a factual compilation may be entitled
to copyright in an original selection or arrangement of facts. 37 As noted by Martino, “what
exists today is best described as ‘thin’ protection in a compilation of facts, such as a database,
if the compilation can be considered an original literary work itself.” 38 In Canada and the
United States, a degree of copyright may subsist in databases meeting the definition of a
“compilation” under relevant legislation. Two relevant international agreements, to which
both countries are party, 39 mandate copyright protection for compilations because they
constitute “intellectual creations.” 40 Importantly, copyright in a compilation protects the
author from reproduction of the whole or a substantial part of the compilation. 41 Thus, mere
consultation of a database in which copyright subsists would likely not constitute
infringement.
Canadian Parliament added compilations to list of protected works under the Canadian
Copyright Act in 1993. Under the Act, a compilation is defined as “(a) a work resulting from
the selection or arrangement of literary, dramatic, musical or artistic works or of parts thereof,
35
Feist Publications Inc v Rural Telephone Service Co 499 US 340 (1991) at 15 [Feist].
Ibid at 15.
37
Ibid at para 21.
38
Peter Martino, “© = NON-© + NON-©? Clarifying copyrightability in databases” (2006) 4 Geo J L & Pub Pol’y
557 at 559.
39
Agreement on Trade Related Aspects of Intellectual Property Rights, 15 April 2004, (entered into force 1 January
2006) [TRIPS]; North American Free Trade Agreement Between the Government of Canada, the Governent of
Mexico and the Government of the United States, 17 December 1992, Can TS 1994 No 2 (entered into force 1
January 1994) [NAFTA].
40
Elizabeth F Judge & Daniel J Gervais, Intellectual Property: The Law in Canada (Toronto: Thomson Carswell,
2011) at 121.
41
Ibid at 124
36
11
or (b) a work resulting from the selection or arrangement of data.” 42 Databases fall under this
category of copyrightable work as a collection of data arranged in such a way to enable a user
to consult and retrieve information according to certain criteria. 43
To attract copyright protection in Canada a work must be original to the author and
fixed in a tangible form. The crux of the protection for compilations is the originality
requirement; originality is assessed with respect to the selection or arrangement, but not
necessarily both, of the compilation and not the underlying content. The definition of
originality is not included in the Act and the standard of originality derives from the Supreme
Court of Canada’s decision in CCH Canadian Ltd v Law Society of Upper Canada, 44 which
applies to all types of copyright. 45 In CCH, the Supreme Court unanimously agreed
originality requires that the work originate from the author and is not a mere copy of another
work. Generally, this standard is met where the author exercised skill and judgment in
making the work. The court was firm in declaring the work need not be creative. 46 CCH
involved the copying of headnotes, case summaries, topical indexes and compilations of
reported judicial decisions. In considering the originality of the resulting compilation, the
court stated that a “purely mechanical” or “trivial” selection is not considered original. 47
The Supreme Court’s characterization of the modern originality standard followed a
controversial 1998 Federal Court of Appeal decision regarding copyright in databases, per the
addition of “compilation” as a protected work under the Copyright Act. In Tele-Direct
(Publications) Inc v American Business Information Inc 48 the Court held that copyright
42
Copyright Act RSC 1985, c C-42, s 2 [Canadian Copyright Act].
Judge & Gervais, supra note 45 at 124.
44
CCH Canadian Ltd v Law Society of Upper Canada, 2004 SCC 13, 1 SCR 339 [CCH].
45
Judge & Gervais, supra note 45 at 120.
46
CCH, supra note 49 at para 16.
47
Ibid.
48
Tele-Direct (Publications) Inc v American Business Information Inc, [1998] 2 FC 22 (FCA) [Tele-Direct].
43
12
subsisted in yellow pages directories. Justice Décary based his reasoning on the TRIPS and
NAFTA treaties that mandate copyright protections for compilations of data as “intellectual
creations.” In determining that originality requires a degree of creativity, Justice Décary
wrote: “One should always keep in mind that one of the purposes of the copyright legislation,
historically, has been ‘to protect and reward the intellectual effort of the author (for a limited
period of time) in the work’ (my emphasis). […] While not defined in the Act, the word
‘author’ conveys a sense of creativity and ingenuity.” 49 When the Supreme Court of Canada
clarified that creativity is not a requirement of originality in CCH, Canada’s copyright law
departed from the American standard.
American Approach to Copyright in Data Compilations
The US’s copyright protection in compilations is similar to that of Canada in that both
require originality in the selection of the contents to trigger the right. Under American copyright
legislation, a compilation is “a work formed by the collection and assembling of pre-existing
materials or of data that are selected, coordinated, or arranged in such a way that the resulting
work as whole constitutes an original work of authorship.” 50 However, the US standard for
originality maintains a requisite degree of creativity.
In the 1991 decision of Feist Publications Inc v Rural Telephone Service Co, the United
States Supreme Court simultaneously clarified the country’s originality standard for copyright
protection and set out the law for copyright in fact compilations. 51 In that case, the plaintiff Rural
was a telephone service provider seeking to sue Feist, a publishing company that specialises in
telephone directories, for copyright infringement. Feist used Rural’s White Pages listings in a
49
Ibid at para 29.
Copyright Act, 17 USC § 101 (1976) [US Copyright Act].
51
Feist, supra note 40.
50
13
directory publication. In holding that Rural’s white pages were not sufficiently original to trigger
copyright protection, the Supreme Court framed the modern American standard for copyright in
a work. “The sine qua non of copyright is originality. To qualify for copyright protection, a work
must be original to the author. … Original, as the term is used in copyright, means only that the
work was independently created by the author (as opposed to copied from other works), and that
is possesses at least some minimal degree of creativity.” 52 The court found that Rural’s selection,
co-ordination and arrangement of its White Pages did not satisfy the originality requirement.
With respect to data compilations, the creativity requirement is satisfied by the choices
made in selecting the appropriate facts. 53 In subsequent cases American courts have considered
and given weight to the subjective process of an author in selecting and arranging facts to
determine if copyright subsists in a compilation. For example, in CCC Information Services Inc v
Maclean Hunter Reports Inc, the Second Circuit Court found copyright in Maclean’s
“Automobile Red Book,” a compilation of projected valuations of used cars. The Court
distinguished the Red Book from the white pages listing in Feist because they represented
subjective predictions by the editors meeting the creativity threshold for originality 54; in Feist,
the author merely listed pre-existing facts, namely telephone numbers. Some scholars have
dubbed subjective valuations as “soft facts” or “soft ideas infused with taste or opinion,”
distinguishing them from “hard facts” that are truths, which can only be discovered. 55 As noted
by Denicola, North American jurisprudence suggests a departure from the longstanding principle
that facts are not protected by copyright. 56
52
Ibid at 10.
CD Freedman, “Should Canada enact a new sui generis database right?” (2002) 13 Fordham Intell Prop Media &
Ent LJ 35 at 67.
54
Robert Denicola, “News on the Internet” (2012) 23 Fordham Intell Prop Media & Ent LJ 68 at 86.
55
Ibid at 86, 91.
56
Ibid at 91.
53
14
The extent of Copyright protection in various types of compilations
There has been considerably more litigation in the United States than Canada over
database copyright. An examination of the types of data compilations in which American courts
have found copyright protection to subsist illustrates a seemingly inconsistent approach to the
application of the right (Figure 1).
Figure 1: US Case law concerning the copyrightability of database compilations 57
57
Based on David E Rigney, “What constitutes a ‘compilation subject to copyright protection — modern cases” 88
ALR Fed 151 (originally published in 1988) accessed 15 March 2014.
15
Compilation in which copyright subsists 58
Compilation in which
copyright does not subsist 59
o Real estate property listing
o Chemical products by
manufacturers/suppliers listing
o Directory of PR firms
o Telephone directory
o Scenes from a movie
o Wedding photographs
o Tax tables
o Table of load bearing data
o List of stock market indexes
o Volume of case law
o Bicycle race course maps
o Table of weekly averages of interest
rates
o Chart of personal injury settlements
o Mapping website directing users to
nearest appraiser
o Sport Americana Baseball Card Price
Guide (Book)
o Publisher’s equipment catalogue
o Selection of pitching data to evaluate
pitchers’ performances
o Horse racing data arranged in
functional grid
o Football scouting company's player
grades
As shown in Figure 1, some compilations of sporting data trigger copyright protection
under the modern American originality standard. In 2006, Martino identified six
“classifications” of cases evaluated by US courts for compilation copyrightability: 1)
taxonomies; 2) pricing data; 3) directories and reference guides; 4) compilations of statistics; 5)
58
In order of appearance: Metropolitan Regional Information Systems Inc v American Home Realty Network Inc,
888 F Supp 2d 691 (D Md 2012); JR O’Dwyer Co v Media Marketing, 755 F Supp 599 (SD NY 1991); Roy Export
Co. Establishment v Columbia Broadcasting System Inc, 672 F2d 1095 (2nd Cir NY 1982), cert den 459 US 826;
Marshall & Swift v BS & A Software, 871 F Supp 952 (WD Mich 1994); Dow Jones & Co v Board of Trade, 546 F
Supp 113 (SD NY 1982); West Pub Co v Mead Data Cent Inc, 799 F 2d 1219 (8th Cir Minn 1986); Wilson v
Brennan, 666 F Supp 2d 1242 (DNM 2009); Eckes v Card Prices Update, 736 F2d 859 (2nd Cir NY 1982) [Eckes];
Kregos v Associated Press, (937 F 2d 700 (2nd Cir NY 1991) [Kregos].
59
In order of appearance: American Chemical Soc v Dun-Donnelley Publishing Corp, 202 USPQ 459 (ND Ill 1979),
Feist, supra note 40; Monge v Maya Magazines Inc, 688 F 3d 1164 (9th Cir 2012); Banxcorp v Costco Wholesale
Corp, 2013 WL 5677225 (SD NY 2013); RBC Nice Bearings Inc v Peer Bearing Co, 676 F Supp 2d 9 (D Conn
2009); Matthew Bender & Co v Kluwer Law Book Publishers Inc, 672 F Supp 107 (SD NY 1987); Darden v Peters,
488 F 3d 277 (4th Cir 2007); Decker Inc v G & N Equipment Co, 438 F Supp 2d 734 (ED Mich 2006); Victor Lalli
Enterprises Inc v Big Red Apple Inc, 936 F2d 671 (2nd Cir NY 1991).
16
computer software and video games; and 6) literary compilations. 60 The fourth category,
statistics, is likely the most relevant to the sports industry.
Based on US case law, compilations of statistics attract copyright where the presentation
of the data is sufficiently original. Martino cited the case of Kregos v Associated Press in which
the Second Circuit Court of Appeals found copyright in an author’s compilation of pitcher
statistics. 61 In Kregos, the plaintiff accused the Associated Press of copyright infringement of his
daily pitching form, which includes four items of information about each day’s game — the
teams, the starting pitchers, the game time, and the betting odds, as well as nine stats for each
pitcher — grouped into three categories. The first category related to a pitcher’s performance
throughout the entire season and included the individual’s win/loss record as well as earned run
average (ERA); the second category was based on the pitcher’s overall performance against an
opposing team at the specific diamond and included win/loss record, innings pitched and ERA;
finally, the third category related to the pitcher’s performance in his three most recent starts and
included win/loss record, innings pitched, ERA and men on base average. 62 Associated Press
began publishing a form almost identical to Kregos’s. In holding that AP did infringe copyright
subsisting in Kregos’s pitching form the court noted: “There is no prior form that is identical to
his, nor one from which his varies in only a trivial degree. The validity of his copyright in a
compilation of facts cannot be rejected as a matter of law for lack of the requisite originality and
creativity.” 63
A more recent decision lends further guidance as to when the law will protect copyright
in sport statistics. In National Football Scouting Inc v Rang, the plaintiff was a scouting
60
Martino, supra note 43 at 564.
Ibid at 576.
62
Kregos, supra note 63 at 702.
63
Ibid at 705.
61
17
organization that compiles annual yearly scouting reports used by 21 NFL clubs in their drafts. In
its reports, National Football Scouting (National) includes information on each player, such as
injury history, the player’s family background, and college statistics and then assigns the
prospective draftees an overall “Player Grade.” The Player Grade represents “a numerical
expression representing National’s opinion of the player’s likelihood of success in the NFL.” 64
NFL clubs pay National $75,000 each year for the reports.
National sued Rang after the defendants published an article on Sports Exchange, a
website, discussing the Player Grades of 18 draft eligible prospects. The court relied on and
distinguished the case from Feist to determine that copyright did indeed subsist in the Player
Grades because they “are not just facts; they’re ‘compilations of data chosen and weighed with
creativity and judgment.’” 65 Ultimately, the defendant’s use of the Player Grades amounted to
fair dealing; however, the Player Grades were considered a protected compilation. This case
suggests scouting statistics or rankings may be covered under copyright where the author used
subjective values to determine the player’s value.
In summary, while pro leagues failed to exert ownership rights over the sporting data
their organizations produce, authors of certain types of compilations of sports data have been
able to establish copyright in Canada and the United States. The result of the cases decided thus
far is an unpredictable approach to originality amounting to uncertainty in the protection of
proprietary compilations.
Limitations to Copyright protection in sports data in Canada and US
As demonstrated, the law of copyright in compilations is a complicated, technical, and
highly fact-specific analysis leading to uncertainty over when copyrights will attach to a
64
65
National Football Scouting Inc v Rang, 912 F Supp 2d 985 (2012) at 988 [National Football Scouting].
Ibid at 990.
18
selection or arrangement of data. Freedman notes that the originality requirement for database
protection creates an uncertain and inconsistent level of protection. 66 Moreover, since the
copyright protection in data compilations focuses on originality, those who invest substantially in
the creation of a compilation may be nonetheless denied proprietary rights if the arrangement is
not sufficiently original. It is under this theory of investment that a professional organization or
the founders of Rotisserie League baseball may have been able to claim proprietary rights in
their fact-based innovations.
In addition, the fact that copyright attaches only to the structure of a database, as opposed
to the contents, limits the meaningfulness of right to the sporting industry. As explained by
Derclaye:
What is really important to many database producers, and especially the sport
industry, is not really to create an original structure for their database … What
matters is the database’s completeness, its ease of access (user-friendliness, that is,
an easy-to-understand alphabetical or chronological structure, for example) and the
information contained in it. 67
Mere protection of the structure of a database is therefore meaningless in many instances.
Finally, where copyright is found to subsist in a compilation, infringement is difficult to
prove even where the defendant borrowed a significant amount of information from a database. 68
For example, in a 2002 case the Eight Circuit Appeals Court found that a publisher’s table of
data on local public schools was considered a factual compilation to which copyright applies;
however, it was not infringed by a website publishing similar information in a different form
because the website expressed the idea in a way that was not substantially similar to the
66
Eckes, supra note 63 at para 11, citing R Denicola, “Copyright in Collections of Facts: A Theory for Protection of
Non-Fiction Literary Works” (1981) 81 Colum L Rev 516.
67
Derclaye, “Exploitation,” supra note 7 at 208.
68
Martino, supra note 43 at 560.
19
publisher’s table. 69 Works protected by copyright may also be freely used under the concepts of
fair use in the US and fair dealing in Canada, which permit use of copyright in specific
circumstances such as educational research, private use, and news reporting, 70 as was the case in
National Football Scouting. 71
In sum, copyright law in Canada and the United States does not provide significant
protection to databases because the originality threshold is a high hurdle to overcome and, if met,
the protection applies only to the database’s structure, not contents. Thus it is not a valid option
to protect the contents of a sporting organization or fantasy league database. 72 For these reasons,
the North American jurisdictions should consider adopting Europe’s approach of sui generis
intellectual property protection for databases.
Data in their own right: the sui generis database right in Europe
When Canada updated its copyright legislation in 1996 to include compilations as
protected works, the European Union concurrently introduced Directive 96/6/EC, the Database
Directive, which grants a sui generis in intellectual property right to databases. It defines
‘database’ for both the sui generis right and copyright at Article 1(2) as “a collection of
independent works, data or other materials arranged in a systematic or methodical way and
individually accessible by electronic or other means.” 73 The right prevents against the
unauthorized extraction and/or re-utilization of the contents of a database, making it distinct from
any copyright in Canada or the United States. “The point was to construct a protection for
databases that would be tied to their functional, rather than aesthetic nature, obviating the need
69
Schoolhouse Inc v Anderson, 275 F 3d 726 (8th Cir 2002) at 728, 731.
See generally Canadian Copyright Act, supra note 47, s 29; US Copyright Act, supra note 55 §107.
71
National Football Scouting, supra note 77 at 995.
72
Derclaye, “Exploitation,” supra note 7 at 218.
73
EC, Commission Directive No 96/9/EC of 11 March 1996 on the legal protection of databases [1996] OJ L 77/20
[“Database Directive”].
70
20
for an artificially weak construction of creativity.” 74 The database right is distinct from copyright
with respect to the threshold for protection, scope of protection and length of proprietary term.
The principal criterion for triggering the right is the investment in the database. To qualify for the
right, the database author must show she made a qualitatively or quantitatively substantial
investment in obtaining, verifying or presenting of the contents of the database. 75 Obtaining the
contents refers to the collection of information, rather than its creation. Verification of the
contents means both ensuring the reliability of the information and monitoring its currency.
Finally, investment in the presentation of the contents refers to resources spent for the purpose of
giving the database its function of organizing and processing information. 76
Contrary to the originality standard in copyright, the investment standard required for the
sui generis rights allows for some protection of discovered facts to the person who obtained
them, whereas copyright generally extends to created data that does not pre-exist in nature. 77
“Such an approach has the capacity to differentiate between compilations that are truly the result
of a principled view of authorship and worthy of full copyright and accompanying moral rights,
and compilations that are less worthy but still protectable based on the sufficiency of the
investment of labor and resources expended in their creation.” 78 With respect to the scope of
protection, the EU Database Directive protects the database creator from unauthorized extraction
or re-use of a substantial part of the database, as well as repeated extraction or re-use of
insubstantial parts of the database. 79 Under Article 7 of the Directive, the substantiality analysis
considers both quantitative and qualitative extraction or use of the contents. 80 “Users can
74
Freedman, supra note 58 at 89.
Jon M Garon, “The Implications of Informatics on Data Policy” (2010) 1 Media L Rev 16 at 19.
76
Derclaye, “Exploitation,” supra note 7 at 210.
77
Ibid at 212.
78
Freedman, supra note 58 at 38
79
Judge & Gervais, supra note 45 at 125.
80
Database Directive, supra note 89, Art 7.
75
21
therefore extract or reutilize insubstantial parts as long as they do not do this repeatedly and
systemically so that the accumulation of insubstantial parts becomes a substantial part.” 81
Finally, the length of protection under the database right is 15 years from the end of the calendar
year in which the database created, 82 which is a stark contrast to the author’s life plus 50 or 70
years provided by the copyright in Canada and United States respectively. However, the database
right is extended each time the database creator reinvests substantially in the obtaining, verifying
or presenting of the elements of its database resulting in a substantial change. Some scholars note
that this renewal right could effectively lead to a right ad vitam eternam, 83 that is, a right in
perpetuity.
Since the implementation by member states, scholars have raised some criticisms of the
application of these new rights. In 2002, the World Intellectual Property Organization (WIPO)
published a study identifying five concerns with the sui generis approach to database protection:
that it could remove information from the public domain; create perpetual monopolies; harm the
free flow of information; stifle the development of software and information systems; and
hamper access to intellectual property in the developing world. A follow-up study in 2005 was
inconclusive as to the Directive’s economic impact based on limited empirical data. Garon
echoed these concerns in 2010. 84 Notwithstanding these concerns, European case law regarding
sporting database rights indicates that the right is not as far-reaching as suggested.
Across the pond, sporting data highlights limits to database right
Given the value of sports data, it is no coincidence that the bulk of prominent litigation in
EU member states employing the database right occurs in the sports law arena. In 2004, the
81
Derclaye, “Exploitation,” supra note 7 at 213.
Database Directive, supra note 89, Art 15.
83
Derclaye, “Exploitation,” supra note 7 at 215
84
Garon, supra note 91 at 19-21.
82
22
Court of Justice of the European Union (ECJ) heard four references from four different EU
members now considered landmark cases regarding the application of the sui generis right. 85 In
British Horseracing Board Ltd (BHB) and others v William Hill Organisation Ltd, the plaintiff
failed to prove its Runners and Riders database of pre-race horse racing data was covered under
the database right. BHB is the organization that oversees horseracing competitions in the United
Kingdom. It maintains a database of the names, places and dates of the races, the distance over
which the race is to be run, the criteria for eligibility to enter the race, the date by which entries
must be received, the entry fee payable, and the amount of money the racecourse will contribute
to the prize money for the race. The Court rejected BHB’s argument that its information meets
the criteria to trigger the database right because BHB establishes the race parameters and
therefore creates the information itself. The ECJ clarified that only investment in the storing and
processing of underlying information in a database, and not the creation of that information, is
covered under the right. The Court stated that the right must be understood “to refer to the
resources used to seek out existing independent materials and collect them in a database, and not
to the resources used for the creation as such of independent materials.” 86
The ECJ reached a similar conclusion in the other three references, from Finland, Sweden
and Greece, concerning football (soccer) fixture lists to which Fixtures Marketing Ltd (FML)
claimed a database right. FML is a company responsible for exploiting fixture lists for the
English and Scottish soccer leagues outside of the UK and it brought actions in the three
jurisdictions against organizations using the fixture lists for betting games. 87 The Court held that
85
David Rose & Nina O’Sullivan, “Football Dataco v Yahoo! Implications of the ECJ judgment” (2011) 7:11
Journal of Intellectual Property Law & Practice 792 at 796.
86
Horseracing Board Ltd (BHB) and others v William Hill Organisation Ltd, C-203/02 [2004] at para 31.
87
Fixtures Marketing Ltd v Veikkaus (Finland) C-46/02 [2004] [Veikkaus]; Fixtures Marketing Ltd v Svenska Spel
AB (Sweden) C-338/02 [2004]; Fixtures Marketing Ltd v Organismos prognostikon agonon podosfairou AE
(OPAO) C-444/02 [2004] (Greece).
23
FML’s collection, verification and presentation of the fixture lists did not require sufficient
investment to merit database right protection. It noted that finding and collecting data for a
football fixture was inherently linked to the creation of those data, as the league sets the matches.
Further, the football leagues do not invest any real effort into monitoring the accuracy of the
data. Finally, the presentation of the data in the fixture is also inextricably linked to the creation
of data. 88 The effect of the ECJ’s 2004 tetralogy of decisions was to limit the overall scope of the
database right to eliminate protection for data that is predominantly created by an entity.
Football fixture lists came under scrutiny of the ECJ once again in 2012 when the Court
considered whether fixtures were protected under the Database Directive in Football Dataco v
Yahoo! in another bout of litigation with betting agencies. 89 Unlike the 2004 decisions, the Court
also considered both the copyright protection afforded to the “structure” of databases under
Article 3 of the Directive in addition to the sui generis database right under Article 7. The ECJ
first noted that both rights are distinct. 90 Under the copyright analysis, it stated “the criterion of
originality is satisfied when, through the selection or arrangement of the data which it contains,
its author expresses his creative ability in an original manner by making free and creative
choices.” 91 The Court then noted that procedures for creating the fixtures lists are not sufficiently
original because they do not employ to elements of originality in the selection or arrangement of
the data. 92
Most recently, and most significantly, in 2013 the England and Wales Court of Appeal
reconsidered the scope of the database right in the context of sporting data in Football Dataco
(FDC) Ltd & Ors v Stan James Plc & Ors. In an analysis that focused on protecting the
88
Veikkaus, supra note 103 at paras 44-46.
Football Dataco Ltd and others v Yahoo! UK Ltd C-604/10 [2012] [Yahoo!].
90
Ibid at para 28.
91
Ibid at para 38.
92
Ibid at para 44.
89
24
investment by the plaintiff into creating its database and the defendant’s extraction and use of
data for its own commercial purpose, the Court found sui generis database protection in FDC’s
Football Live database. Football Live was comprised of live information fed from reporters
present at a match. The court held that Football Live was indisputably a database under the
Directive, noting “[t]he considerable investment which goes into Football Live (of the order of
£600,000 per annum) clearly justifies Floyd J's decision that Football Live is a protected
database.” 93 The defendant Sportradar operated a large database of sports statistics, including
“Live Scores” extracted from FDC; co-defendant Stan James Ltd operates its own site that links
to and allows its users to download Live Scores. The Court found infringement in Sportradar’s
Live Scores data because a substantial proportion of data from individual matches was taken
directly or indirectly from Football Live, regardless of how much data an individual user actually
read. 94 According to the Court, the test for infringement depends on the scale of the investment
in obtaining verification or presentation of what was extracted. “Even if only a small part is
taken, it can be qualitatively a substantial part if it represents significant investment. The
question is what investment has gone into the data taken?” 95 Sportradar and Stan James were
found to be jointly liable since both made FDC’s protected data available to users.
The Football Dataco case provides the most comprehensive justification for a sui generis
database right. As noted by Lord Justice Jacob (as he then was), the right exists to promote the
incentive to create databases:
There are huge industries which consist of data collection and its provision in a
database […]. If they are not protected by the sui generis right the investment in
them will have no protection. Take the present case. Football Live is the product of
93
Football Dataco Ltd & Ors v Stan James Plc & Ors [2013] EWCA Civ 27 at paras 3-6, 30, 69 [Football Dataco].
Ibid at para 72, 73 & 81.
95
Ibid at para 84.
94
25
considerable investment in collecting the data within it. If it can be copied with
impunity would the investment be worthwhile? 96
Copyright protection extends only to the structure of a database and not its content. In
jurisdictions where no sui generis database right exists, there is no similar protection for the
investment into collecting and storing data. But modern industries are driven by data. “Vast and
sweeping developments in the fields of computers, telecommunications, and information
technologies have stimulated the formation of a new global market of electronic information
services and products, in which databases are principal components.” 97 With respect to the
sporting industry in North America, the absolute prohibition on intellectual property protection
in database contents severely decreases the incentive to create new databases. The sui generis
right should be considered in North American jurisdictions as a means to encourage such
incentive and protect those that invest in the data industry.
Importing the sui generis right in Canada and US
American legislatures have attempted to implement extended database rights in recent
years to no avail. In the years following the EU’s introduction of the database right, Congress
debated seven bills related to data rights and misappropriation of information. 98 Proponents of a
database right argued that copyright protection fails to encourage investment in research and
development in data because it does not protect the contents of a database. 99 However, the bills
all failed in the face of staunch opposition by some publishers and consumer groups. For
example, media conglomerate Bloomberg argued that extended protection could “kill electronic
commerce” by hindering a publisher’s ability to reproduce financial information from other
96
Ibid at para 44.
Daryl Lim Tze Wei, “Regulating Access to Databases through Anti-Trust Law: A Missing Perspective in the
Database Debate” (2006) Stan Tech L Rev 7 at para 7.
98
Martino, supra note 43 at 589-590.
99
Ibid at 561.
97
26
sources on their websites. 100 As noted above, Bloomberg is a large player in the fantasy sports
arena. Moreover, some scholars have expressed concern over the resulting monopoly from
assigning one owner to statistics and the method of recording or presenting those data, which
could in turn drive up the transaction costs for fantasy consumers. 101 Additionally, scholars such
as Sheps advocate for maintaining only the traditional copyright associated with data
compilations, noting that “by protecting only the original elements of a compilation, the
incentive to produce original works remains intact, while at the same time benefitting society,
but without granting the first producer a monopoly over the facts it has collected.” 102 So far, the
dissenters have been successful in keeping the sui generis right out of the United States. Canada
has not formally considered the right despite several years spent updating its copyright
legislation. Parliament introduced four bills between 2005 and 2011, culminating in an overhaul
of the legislation in 2012. The Copyright Modernization Act 2012 made no amendments to
clarify copyright in compilations of data.
Despite concerns by some industries, the North American jurisdictions would benefit
from a similar sui generis database right as means to bring more clarity to the protection of
compilations. Since the EU Database Directive has been in place for almost a decade, Canada
and United States will be able to rectify the concern over monopolies on information.
Monopolies can be prevented by competition regulation and anti-trust laws. Where an
entity rightfully owns unique data, others will be able to access that data through licenses.
Information owners will be prohibited from charging unreasonably high prices or refusing to
license the data by way of anti-trust law that prohibits abuse of an entity in a dominant market
100
Robert P Merges, “One hundred years of solicitude: intellectual property law, 1900-2000” (2000) 88 Cal L Rev
2187 at footnote 229.
101
Sheps, supra note 23 at 1115.
102
Ibid at 1118.
27
position where there are so few substitutes for the protected product in a relevant market. 103 As
Wei argued in 2007, “anti-trust law provides a useful tool for maintaining the ‘access-incentive’
balance, whatever the model of database protection is selection.” 104 Further, one of the purposes
of intellectual property rights is to grant a temporary monopoly on intellectual creations.
Potential monopolies on certain sets of data would be no different from the same protection
afforded to inventors under patent law. Lastly, the EU Database Directive includes defences and
exceptions that serve as internal protections against overly restrictive ownership of data. For
example, under Article 9 of the Database Directive, member states can provide an exception to
the sui generis right that allows substantial use or extraction of the database where it has been
made public with or without the authorization of the database owner. 105 Lastly, the concept of
fair use could also attach to a database in such a way that no infringement occurs where
extraction of the data is for non-commercial personal research.
Further, the creation of a database right in North America would help create certainty in
the law and harmonize international approaches to protection. As shown, the originality
requirement for copyright protection in the United States and Canada leads to unpredictable
decisions from the courts as to when copyright will subsist in a compilation. Importing the EU
database right would bring Canada and the United States up to the same standard of legal
protection as EU member states. Given that the information industry is inherently borderless as
more and more data is shared globally every day, harmonization of information law is necessary.
103
104
105
Wei, supra note 113 at paras 41-42.
Ibid at para 8.
Database Directive, supra note 89, Art 9.
28
Conclusion
Professional sports organizations have slowly come around to encouraging fantasy sports
participation and the growth of a sub-industry dedicated to servicing fantasy players. Very
recently, the MLB officially endorsed the fantasy world in a blog promoting its own fantasy
league ahead of the 2014 baseball season. 106 This attitude amounts to an almost-total reversal of
the league’s previous stance on the issue. One year prior, the chief executive of Advanced Media
publicly stated: “[Fantasy] becomes akin to a flip of the coin, which is the definition of
gambling.” 107 Likening the game to gambling was a low blow to the industry because gambling
is illegal almost everywhere in the United States. Since empirical research demonstrates a direct
correlation between those who consume professional sports and those who play fantasy sports, 108
it is no surprise that the owners have embraced the fantasy world. Today, the professional sports
industry and fantasy industry work more closely together than ever before. However, that has not
stopped sporting and data organizations from seeking to protect their ownership in statistics, as
demonstrated by the recent litigation.
To promote investment in discovering and processing new data, Canada and the United
States should consider a EU-style sui generis database right. Consider sports that have yet to
become mainstream, such as Ultimate and Ringette. Since being founded in 1967 at a high
school, Ultimate is now played in more than 50 countries, mostly in recreational settings. 109 In
106
Marc Edelman, “ League Baseball Reverses Course; Now Fully Endorses Daily Fantasy Sports” Forbes (25
March 2014) online: < http://www.forbes.com/sites/marcedelman/2014/03/25/major-league-baseball-reversescourse-now-fully-endorses-daily-fantasy-sports/> Accessed March 30, 2014.
107
Ibid.
Adam J Karg & Heath McDonald, “Fantasy Sport Participation as a Complement to Traditional Sport
Consumption” (2012) 14 Sport Management Review 327 at 339.
109
World Flying Disc Federation, “Major Steps in History of Ultimate” World Flying Disc Federation online:
<http://www.wfdf.org/history-stats/history-of-ultimate/168-major-steps-in-history-of-ultimate> accessed 30 March
2014.
108
29
2012, two professional leagues were formed in North America, each boasting eight teams. 110
However, since the sport is not yet mainstream, statistics on players are hard to find. Major
League Ultimate (MLU) and the American Ultimate Disc League track the stats of their own
players and MLU has launched a beta version of a fantasy ultimate game. Outside the
professional Ultimate in North America, statistics on players are generally not tracked. The
World Flying Disc Federation, the sport’s international organization, maintains rankings of
national teams, but not individual players. 111 Further, Ringette, and many other women’s sports,
are an even more underdeveloped than Ultimate. As these sports continue to grow and
professional league sprout up, demand for related data and statistics will grow. Their success will
require investment into all aspects of the sport, including data for scouting, media reporting and
fantasy leagues.
Current copyright legislation in Canada and the United States offers no protection for the
contents in any database, regardless of the investment employed to obtain, store, verify, update
and present the data. As the law stands, only the “structure” of a database is covered by
copyright if that structure is sufficiently original. However, unoriginal databases are still worthy
of some form of protection to provide an economic incentive to create and distribute
comprehensive and accurate databases. 112 These databases are central to the sporting and fantasy
sports industries. While these industries may benefit from the sharing of open data to promote
innovation, an absolute prohibition on intellectual property protection of data provides no
opportunity for innovators to protect their creations. The EU Database Directive and resulting
case law demonstrate a workable, fair approach to providing some protection to the contents of a
110
Major League Ultimate, “About MLU” Major League Ultimate online: <http://mlultimate.com/about-majorleague-ultimate-frisbee/> accessed 30 March 2014.
111
World Flying Disc Federation, “Ultimate — National Teams — Current World Rankings” World Flying Disc
Federation online: <http://www.wfdf.org/history-stats/world-rankings/175#Mixed> accessed 30 March 2014.
112
Freedman, supra note 58 at 99.
30
database. Canada and US should consider formulating a more data-friendly methodology to
intellectual property, especially to protect the players in the professional and fantasy sports
industries.
31