The Spanish Supreme Court has dismissed the appeal filed by the Spanish subsidiary of the American group IMS HEALTH against the ruling of the Madrid Provincial Court, which ordered it to pay 5 million euros in damages for misappropriating and marketing part of the content of a database developed by the plaintiff.
INFONIS, SL and IMS HEALTH, SA are both companies that operate in the medical information technology sector. As a result of a business relationship, IMS had access to a database developed by INFONIS between 2004 and 2006—ZBSales—which contained valuable information on the geographic distribution of medical centers in Spain. According to the account of the facts, after terminating the business and contractual relationship in 2007, IMS allegedly continued to use the database developed by INFONIS to create its own product—Sanibricks—
which it sold to third parties.
In 2010, INFONIS filed a civil lawsuit against IMS based on infringement of the sui generis right to its database and acts of unfair competition. Madrid Commercial Court No. 2 upheld the plaintiff’s claims, ordering IMS to withdraw the Sanibricks product from the market and to compensate INFONIS in the amount of more than 5 million euros, corresponding to 65% of the revenue obtained from the sale of the infringing product. IMS filed an appeal, but the Madrid Provincial Court again dismissed IMS’s claims, with the exception of the obligation imposed by the lower court’s judgment to uninstall the product even if it had been acquired by third parties in good faith.
IMS then filed an appeal with the Supreme Court, which dismissed the appeal on the grounds of lack of justification and lack of standing to appeal.
However, what is particularly interesting about this case are the rulings of the Provincial Court of Madrid—later upheld by the High Court—which address issues such as the concept of “substantial investment” and “data extraction or dumping,” both of which are highly relevant in the field of “sui generis” database law.
With regard to the concept of “substantial investment,” the Court considers that this must lie not so much in the creation of the database itself as in the collection of the data that make up its content. In this regard, it finds that an investment of 2,700,000 euros in compensation for the individuals who worked on searching for and compiling the data—as demonstrated by the defendant at first instance—must be classified as substantial.
With regard to the criteria for determining whether an infringement exists, beyond the high degree of similarity between the two databases (estimated by the plaintiff at 86%), the Court finds that a decisive factor is the presence in the defendant’s database of numerous spelling errors, typographical errors, and inaccuracies that are also present in the original database.
N.B. Spanish version of the article published on the Kluwer Copyright Blog