England and Wales High Court (Chancery Division) Decisions

2.             As regards this data, paragraph 3 of the Amended Particulars of Claim pleads as follows:

“The aforesaid data is arranged in a systematic or methodical way, and is individually accessible by electronic or other means such that the database is a “database” within the meaning of Article 1(2) of the Database Directive (Directive 96/9/EC) (the Directive) and Regulation 6 of the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032) (the Regulations). It is the Claimants’ primary position that the aforesaid database is a single database, alternatively there are separate and individual databases comprising the data for each sport, each of which contain data which is arranged in a systematic or methodical way and which is individually accessible by electronic or other means. For convenience, the aforesaid database or databases are referred to hereinafter as the Database. Many sports leagues have appointed one of the Claimants as their official data partner.”

3.             Genius Sports has entered into a significant number of Data Rights Agreements - in excess of 200 - governing the use and ownership of the data entered into the Database. Paragraph 28 of the Amended Particulars of Claim pleads as follows:

“The Claimants have each entered into [Data Rights Agreements] with numerous leagues, including basketball leagues which are members of FIBA (the Basketball Leagues), football leagues which are members of the UEFA, CONMEBOL, FIFA and FAPL, FLL and the SPFL (through Football Dataco Limited) (the Football Leagues), and volleyball leagues which are members of the FIVB (the Volleyball Leagues). Pursuant to the Data Rights Agreements, the Claimants have obtained, collated, checked and entered into the Database, data relating to basketball, football and volleyball fixtures (as the case may be) for those leagues and continue to do so. Data so obtained, collated, checked and entered is and has been distributed to the leagues and Genius Sports’ customers for their respective purposes…”

4.             I shall refer to the parties with whom Genius Sports contracts to form the Data Rights Agreements as the Counterparties and the leagues to which the Data Rights Agreements relate as the Leagues.

5.             It is necessary to explain in a little greater detail the diversity that differentiates the various Data Rights Agreements. They are in no sense standard form agreements. This diversity may be described under a number of heads:

6.             Genius Sports contends that the above-named Defendants have infringed the Claimants’ intellectual property rights in the Database. The nature of these alleged infringements are irrelevant for present purposes. It is sufficient to note that Genius Sports claims (amongst others) the following remedies against the Defendants in its prayer for relief:

“(1)      A declaration that database right subsists in the Database and that the Claimants are the owners and/or the exclusive licensees of that right;

(2)        Injunctions prohibiting the continuation of each of the wrongful acts aforesaid, including injunctions to restrain the Defendants…from infringing database right in the Database;

(3)        An order for delivery up and subsequent destruction (in the case of electronic materials by deletion) of all data, materials, documents or articles the use, retention or distribution of which by any of the Defendants might contravene the foregoing injunction;

(4)        An inquiry as to damages or, at the Claimants’ option, an account of profits;

…”

B.      THE PROPER PARTIES TO THE CLAIM AND THE APPLICATION

8.             Further, section 102 of the Copyright, Designs and Patents Act 1988 - as applied by regulations 5 and 23 of the Regulations - materially provides:

“Exercise of concurrent rights

(1)        Where an action for infringement of copyright brought by the copyright owner or an exclusive licensee relates (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the copyright owner or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.

(2)        A copyright owner or exclusive licensee who is added as a defendant in pursuance of subsection (1) is not liable for any costs in the action unless he takes part in the proceedings.

…”

9.             An exclusive licensee, whilst only enjoying personal rights in the property in question, is given the right to claim in his or her own name by section 101 of the Copyright, Designs and Patents Act 1988. Hence the reference, in section 102(1), to exclusive licensees.

10.         Although paragraph 29 of the Amended Particulars of Claim asserts in terms that “[u]nder the Data Rights Agreements…Genius Sports was the owner of the intellectual property rights in the data relating to games in the leagues”, this plea of sole ownership is not tenable in all cases:

(1)          It is obvious from the first paragraph of the prayer - quoted above - that Genius Sports does not necessarily claim as sole owner, but potentially as only an exclusive licensee.

(2)          It is also obvious from the alternative pleas of right set out in paragraphs 29A to 29F of the Amended Particulars of Claim. The point of potential concurrent ownership is expressly conceded in paragraphs 4 and 5 of Genius Sports’ written submissions in support of the application to which I now turn.

11.         By an application dated 16 November 2021, Genius Sports seeks permission to join five Counterparties to the proceedings as “representative and non-participating defendants to the Claimants’ database right infringement claim” (the Application). The Application is supported by a statement from a Mr Nicholas Rose of Fieldfisher LLP, Genius Sports’ solicitors. This is Mr Rose’s sixth statement in these proceedings (Rose 6). There is a further statement - Rose 7 - to which I will also have regard. Additionally, the Application comes with a Draft Re-Amended Claim Form and Draft Re-Amended Particulars of Claim, describing the consequential amendments to be made if the Application were to succeed.

12.         Rose 6 appears to accept that prima facie all of the Counterparties ought to be joined to the proceedings, if not as claimants, then as defendants. Paragraph 13 of Rose 6 then goes on to state:

“Amended Annex 2 to the [Amended Particulars of Claim] lists over 220 [Data Rights Agreements] which are relevant to these proceedings. It is plainly not sensible, proportionate, nor realistic to join each and every counterparty as an additional party, and that would waste both sides’ legal costs and considerable court time. The Claimants therefore consider that a proportionate and sensible approach would be to join to the [proceedings] a selection of counterparties as representative parties…”

13.         The rest of the statement seeks to justify the approach of Genius Sports and - specifically - the selection of representative Counterparties. Rose 6 also explains why the Defendants’ counter proposals as to Counterparty representation are “disproportionate, excessive and contrary to the overriding objective”. It is important to note that the Defendants’ objections to the course suggested by Genius Sports operate at two levels:

(1)          First, the Defendants say that the representative Counterparties are not sufficiently representative of the diversity of interest amongst the totality of the Counterparties, and that a larger number of representative Counterparties is required. The Defendants thus do not go so far as to say that Genius Sports must join all Counterparties. However, they do contend that the number of representative Counterparties must be increased so as to cover certain classes of Counterparty.

(2)          Secondly, the Defendants submit that Genius Sports’ proposed level of engagement with the Counterparties (both those joined as representatives and those not joined) falls far short of what is desirable. More specifically:

14.         Before I turn specifically to determine the Application, it is necessary:

(1)          To consider the relative rights to the Database of Genius Sports and its Counterparties. That will require a consideration of the Directive and the Regulations, as well as a consideration as to how the law has changed because of the United Kingdom’s withdrawal from the European Union.

(2)          To consider the law of joinder of claimants and defendants and, in particular, the law regarding joinder of representative parties.

15.         These matters are considered in turn in the following Sections.

C.      DATABASE RIGHTS SUBSISTING IN THE DATABASE

(1)     The law “pre-Brexit”

17.         Database right is a property right, whose object is to protect the investment undertaken in obtaining, verifying and presenting the contents of a database. The Directive says this in its recitals:

“(38)    Whereas the increasing use of digital recording technology exposes the database maker to the risk that the contents of his database may be copied and rearranged electronically, without his authorisation, to produce a database of identical content which, however, does not infringe any copyright in the arrangement of his database;

(39)      Whereas, in addition to aiming to protect the copyright in the original selection or arrangement of the contents of the database, this Directive seeks to safeguard the position of makers of databases against misappropriation of the results of the financial and professional investment made in obtaining and collection the contents by protecting the whole or substantial parts of a database against certain acts by a user or competitor;

(40)      Whereas the object of this sui generis right is to ensure protection of any investment in obtaining, verifying or presenting the contents of a database for the limited duration of the right; whereas such investment may consist in the deployment of financial resources and/or the expending of time, effort and energy;…”

19.         Prior to the withdrawal of the United Kingdom from the European Union and the expiry of the transition period (laid down in the Withdrawal Agreement) at midnight on 31 December 2020, two conditions had to be met in order for database right to subsist:

21.         As a property right, database right can be transferred, assigned or granted under a licence. We have seen the right to bring proceedings accorded to an exclusive licensee, but this is only one way in which the bundle of rights that comprise what we call “ownership” can be partitioned.

22.         Article 11 of the Directive requires the “maker or rightholder” to comply with the qualification requirements described in paragraph 19(1) above, such that the qualification requirements affect not merely the subsistence of database right, but also any transfer of that right. In other words, the restriction on persons capable of owning database right - described in paragraph 19(1) above - is one that affects not merely the creation of database right (i.e., who is the original owner) but also its transfer. Genius Sports accepted - indeed, as we shall see it is explicitly a part of Genius Sports’ pleaded case - that if there was a transfer of database right to a non-qualifying individual or corporation, then that transfer was ineffective. That - for non-EEA Counterparties - is a significant point to which I will revert.

(2)     The law “post-Brexit”

23.         The “post-Brexit” period begins at the end of the transistion period agreed between the United Kingdom and the European Union in the Withdrawal Agreement, which occurred at midnight on 31 December 2020.

24.         The “post-Brexit” law is substantially the same as the “pre-Brexit” law, save that the restriction on persons capable of being the “maker” has been narrowed and there is no reference to the rightholder. Thus, according to the Intellectual Property (Copyright and Related Rights)(Amendment)(EU Exit) Regulations 2019, the maker must now be a United Kingdom national or body incorporated in the United Kingdom. Thus, the qualification for new database rights is now limited to United Kingdom-based entities.

(3)     Transition

25.         The transition between the two regimes - “pre-Brexit” and “post-Brexit” - is governed by Article 58 of the Withdrawal Agreement. This provides that the holder of a database right which arose before the end of the transition period will continue to maintain an enforceable intellectual property right provided that the right-holder complies with Article 11 of the Directive. Article 58(2) of the Withdrawal Agreement provides that nationals of the United Kingdom and undertakings established in the United Kingdom are deemed to comply with the requirements of Article 11.

26.         Thus, in order to continue to benefit from protection, the holder of the right must be either a United Kingdom or an EEA national or body established in the United Kingdom/EEA with operations genuinely linked to the economy of the United Kingdom or an EEA State.

(4)     Postscript: database entries, not databases

27.         During the course of submissions, it was made clear to me by counsel for the Claimants that database right subsists in relation to work done in seeking out, verifying and presenting individual data elements in a database rather than in relation to the database as a whole. One must, therefore, be careful in equating a single database to a single database right, rather than focussing on the manner in which the individual entries in a (unitary) database came to be made. Whilst database right is a unitary property right, as I have described, the work that it protects is not necessarily what a user would regard as a single database.

28.         The differentiation between investment going to the database as a whole as opposed to investment going to specific entries in a database is one that I can see might be evidentially complex. It is a difference that I consider I need to be aware of, but I explicitly do not seek to further articulate the law in this regard.

D.      JOINDER AND CPR PART 19

(1)     The general rule

29.         CPR 19.3 provides, so far as material:

“(1)      Where a claimant claims a remedy to which some other person is jointly entitled with him, all persons jointly entitled to the remedy must be parties unless the court orders otherwise.

(2)        If any person does not agree to be a claimant, he must be made a defendant, unless the court orders otherwise.”

I have already made reference to the related section 102 of the 1988 Act.

30.         It was Genius Sports’ position that the interests (in the broadest sense) of the Claimants and the Counterparties were aligned, in the sense that both the Claimants and the Counterparties had an interest in ensuring that database right in the Database was not infringed. That, as it seems to me, is very likely to be right, and I proceed on that basis.

31.         Of course, a Counterparty might very well have an interest in database right in the Database being enforced even if the sole proprietor of the database right was Genius Sports. Genius Sports contended that this was the case as regards a number of Counterparties, where database right vested solely in Genius Sports. I am in no position to assess the correctness of this assertion but, clearly, to the extent it is correct, no joinder under CPR 19.3 or section 102 would be required.

32.         I propose - from this point on in this Ruling - to focus on those Counterparties that do prima facie need to be joined under CPR 19.3, and I shall refer to these Counterparties as Interested Counterparties.

33.         The starting point under CPR 19.3 is that the Interested Counterparties should (unless the court orders otherwise) be joined, as claimant if they consent, and as defendant if they do not. I obviously cannot “order otherwise” without a proper reason. Prima facie, as it seems to me, unless a proper reason can be shown by Genius Sports, all Interested Counterparties should be joined.

35.         I also take the point that it is - tactically speaking - in the Defendants’ interests to make the process of joining Interested Counterparties as extensive and so as time-consuming and expensive as possible. Whilst I found Mr Roberts, QC’s submissions on behalf of the Defendants measured and reasonable, and so very helpful, I nevertheless bear in mind that the number of Counterparties makes this litigation challenging for Genius Sports and such challenges ought - where possible and consistent with the overriding objective - to be minimised so that property rights can efficiently and cost-effectively be vindicated in this jurisdiction.

37.         CPR 19.6 is the procedural rule dealing with representative parties with the same interest. There is no equivalent provision in the 1988 Act. The rule provides:

“(1)      Where more than one person has the same interest in a claim –

(a)        the claim may be begun; or

(b)        the court may order that the claim be continued,

by or against one or more of the persons who have the same interest as representatives of any other persons who have that interest.

(2)        The court may direct that a person may not act as a representative.

(3)        Any party may apply to the court for an order under paragraph (2).

(4)        Unless the court otherwise directs any judgment or order given in a claim in which a party is acting as a representative under this rule -

(a)        is binding on all persons represented in the claim; but

(b)        may only be enforced by or against a person who is not a party to the claim with the permission of the court.

…”

(b)     Lloyd v. Google

42.         The following specific points need to be mentioned:

43.         Genius Sports submitted that the discretionary factors that I have described - in particular the right of the judge managing the case to impose notification requirements on the represented class - could have the effect of softening the rigours of the “same interest” requirement.

44.         I do not accept this submission. It seems to me that the “same interest” requirement, purposively regarded, is a not overly rigorous requirement, particularly in the way it accommodates divergent, although not conflicting, interests. It seems to me that if the members of a class have conflicting interests, then it would be an error to permit a representative action to proceed on the basis of that class, whatever requirements as to notice were imposed. Of course, that does not mean to say that the problem cannot be avoided by having multiple classes. But I do not consider that the use of, e.g., rigorous notice requirements can cause the “same interest” test to be re-defined, stretched or widened.

E.      THE PRESENT APPLICATION

(1)     The nature of the relationship between the Claimants and the Interested Counterparties

45.         The relevant class here under consideration is that of Interested Counterparties, as I have defined that term. It is necessary, at the outset, to appreciate that the interests of the Claimants and those of the Interested Counterparties are, essentially, in opposition.

46.         Although I quite accept that - in the broadest of terms - the interests of the Claimants and the Interested Counterparties as against the Defendants are basically aligned, in the sense that neither the Claimants nor the Interested Parties want any database right in the Database to be infringed by the Defendants, as between themselves the Claimants and the Interested Counterparties are in opposition.

48.         On all these difficult questions of fact, the Claimants will be minded to maximise their “investment” at the expense of that of the Interested Counterparties. This will increase Genius Sports’ interests at the expense of the Interested Counterparties. That is nowhere clearer than in the case of the non-EEA (and, post-Brexit, non-United Kingdom) Interested Counterparty. So far as these Counterparties are concerned:

49.         It might be said that this opposition between the interests of the Claimants and the interests of the Interested Counterparties is nothing to the point. The Application, after all, merely seeks to join a certain number of Counterparties as “representative and non-participating defendants” (to quote from the Application notice).

50.         That is precisely the problem. I do not see how this court can - by its own order - at one and the same time order certain parties to be both representative and non-participating. Yet, to quote from paragraph 1 of the draft order accompanying the Application notice, Genius Sports seeks an order joining “representative and non-participating defendants to the Claim”.

51.         Of course, a defendant, properly joined, may choose to be non-participating and will have to bear the consequences of such non-participation, whatever those might be. But it is not for the court to impose such a status. Indeed, it is quite hard to think of something more antithetical to the overriding objective than this.

52.         The Application essentially seeks to tie-in and bind to the outcome of these proceedings all Counterparties, without making clear (either to the court or to the Counterparties) the full extent of the conflict of interest that might subsist between the Claimants and the Counterparties.

54.         A number of concerns arise in relation to this communication:

(1)          First, the nature of Genius Sport’s case - certainly so far as non-EEA Counterparties are concerned - clearly has not been explained to the League. The passages that I have underlined demonstrates a gulf between what the League thinks Sports Genius’ case is and what that case in fact is.

(2)          Secondly, the notion that one can “contract out of” the CPR is not one that is recognised in this jurisdiction. If a party is properly joined, whether as a claimant or a defendant, then that party is subject to the proper rigour of litigation in this jurisdiction, and the status of “non-participating defendant” is one that does not exist.

(3)          Thirdly, the status of the League as a representative party does not appear to have been explained to the League.

55.         It seems to me that the Application is a fatally flawed one, and that the Application must be refused - without going into the detail of representatives of the class - because the proposed way forward is so at variance with CPR 19 and the overriding objective.

(3)     The way forward

56.         I have given anxious consideration as to whether there is anything that I can do, at this stage, to “cure” the deficiencies in the Application, so as to enable the Interested Counterparties to be regularly and properly joined without further application. As I have indicated, I have some sympathy with the logistical difficulties that Genius Sports has in dealing with a large number of Interested Counterparties, many of whom will (for reasons that I will not go into, but which I accept) be disinclined to participate actively, particularly if that involves the expenditure of time and money.

57.         It was suggested that, provided the Claimants’ solicitors wrote to the Counterparties, or some of them, explaining the position, the position might be regularised. I do not consider that that can be right. Whilst it may be possible to secure some form of joint representation by the Claimants of the Counterparties, it seems to me that that will involve further work and effort on the part of the Claimants, which it would be unwise for me to anticipate. Certainly, there is nothing in the Application that can be “cured” by a tweak or ruling on my part. As I have stated, the Claimants’ approach raises a number of quite fundamental concerns, and these must, in the first instance, be addressed by Genius Sports.

58.         I say the following by way of non-binding indication for any future joinder application. Since the proceedings have been docketed to me, such guidance may assist:

(1)          It seems to me that the range of Interested Counterparties before the Court needs to embrace:

(a)              Representatives from each sport.

(b)             Non-EEA and non-United Kingdom representatives.

(c)              A Sports Counterparty and a Data Counterparty.

This number of parties needs to be before the Court in some form so that the nature of the database rights in issue can properly be explored, in particular supported by relevant disclosure. I am not saying that one representative party cannot meet multiple requirements in terms of characteristics that need to be before the court, and I do not consider that it is helpful for me to be explicit in terms of laying down what the Claimants should or should not do.

(2)          Whilst - for the reasons I have given - the interests of the Claimants and those of the Counterparties are in opposition (because they have, or may have, concurrent interests in the Database), my present thinking is that inter se the representative parties described in sub-paragraph (1) above have divergent and not conflicting interests. Whilst, as it seems to me, it is necessary to have all of them before the court, that is really so as to enable the Defendants to test the case made against them and in particular to enable disclosure. For my part, I can see little difficulty in these representatives being represented by a single legal team acting in co-operation with (but not the same as) the Claimants’ team.

(3)          Again, the extent to which the Interested Counterparties not joined are informed of what is going on is a matter for the Claimants. My own view is that this is a matter that correlates closely to the parties that are joined, and the manner in which they are represented.

(4)     Disposition

59.         Paragraph 58 above is entirely without prejudice to what may be said and/or determined on a future occasion. It is written in the hope that it will assist the efficient progress of these proceedings. However, it does not form any part of my determination of this Application, nor does it bind anyone in relation to any future application.

60.         For the reasons I have given, the Application is dismissed.

ANNEX 1

TERMS AND ABBREVIATIONS USED IN THE JUDGMENT

(paragraph 1, footnote 1)

Term/abbreviation	First use in the Judgment
Application	§11
Basketball Leagues	§3 (in quotation)
CONMEBOL	§1(2)
Counterparties	§4
Counterparty 1	§5(4)(a)
Counterparty 2	§5(4)(b)
Counterparty 3	§5(4)(c)
CPR	§7
Database	§2 (in quotation)
Data Counterparties	§5(3)
Data Rights Agreements	§3
Directive	§2 (in quotation)
EEA	§5(1)
FAPL	§1(2)
FFL	§1(2)
FIBA	§1(1)
FIFA	§1(2)
FIVB	§1(3)
Football Leagues	§3 (in quotation)
Genius Sports	§1
Interested Counterparties	§32
Leagues	§4
Official Data	§5(4)(a) (in quotation)
UEFA	§1(2)
Regulations	2 (in quotation)
Rose 6	§11
Rose 7	§11
SPFL	§1(2)
Sports Counterparties	§5(3)
Volleyball Leagues	§3 (in quotation)
Withdrawal Agreement	§5(4)(c)