Try bombed—rugby league injunction application fails

Author: Stephanie Essey (Lawyer, Allens)

Sports Data Pty Ltd v Prozone Sports Australia Pty Ltd [2014] FCA 595, Federal Court of Australia, 6 June 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu143, first published online: August 11, 2014

Sports Data, the former statistics supplier to the National Rugby League (the NRL), sought and failed to secure an interlocutory injunction against what it saw as the misuse of copyright in its database and the confidential information in it by Prozone, the NRL's new statistics supplier.

Legal context

Sports Data v Prozone builds on recent case law addressing copyright in databases—most notably, IceTV Pty Limited v Nine Network Australia Pty Limited (2009) 80 IPR 451 and Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2010) 90 IPR 1. Against that backdrop, the decision emphasizes the importance of proving reproduction of a substantial part and causation, both of which can be influenced by the way the work is identified.

In determining whether to grant an interlocutory injunction, Wigney J applied the principles recently expounded by the Full Federal Court in Samsung Electronics Co Ltd v Apple Inc (2011) 217 FCR 238 (Apple v Samsung).

Facts

Sports Data served for several years as the official supplier of statistics to the National Rugby League (NRL), but its contract was terminated by the NRL and Prozone was appointed to the role. While collecting and providing statistics to the NRL, Sports Data had developed a database populated with fields which set out events in NRL games that were to be recorded. Sports Data alleged that Prozone copied confidential input criteria from the Sports Data database without consent in the process of creating its own event template. Sports Data also claimed that Prozone infringed its copyright in the input criteria by reproducing a substantial part of its copyright work in the Rugby League Definitions Guide 2014.

Analysis

Weak confidentiality case

The facts showed that Sports Data had failed to adequately particularize the information it claimed to be confidential. Sports Data asserted that the entire compilation of events in the database constituted confidential information, but Wigney J found that it was not possible to infer that Prozone had used the whole compilation rather than particular items contained within it.

Further, Sports Data did not succeed in proving that the information had the necessary quality of confidentiality. While the database contained a notice asserting confidentiality, it could be accessed by customers (including NRL clubs) without their viewing that notice. Although Wigney J drew the prima facie inference that Prozone had indeed received some information about Sports Data's input criteria, the circumstances in which Prozone received the information remained unclear to the court—most importantly, whether those circumstances identified an obligation of confidence. A purported notice of confidentiality provided by letter to Prozone was ineffective as it merely asserted copyright and did so at least a month after Prozone had received the information.

Weak copyright case

Wigney J found that Sports Data had, at best, demonstrated a very weak prima facie case of copyright infringement.

Wigney J emphasized the ambiguity in Sports Data's definition of the alleged copyright work; it was unclear whether the work comprised the input criteria (simply a list of rugby league event descriptions) or particular tables or fields from the database. Ultimately, Wigney J determined that the work constituted four tables drawn from the 50 tables comprising the database and that Sports Data employees had authored those tables, and there was enough mental effort and originality in the compilation such that the work may have been eligible for copyright protection.

However, Wigney J held that Sports Data had not established a prima facie case that Prozone had reproduced a substantial part of the copyright work. The absence of a substantial objective similarity between Sports Data's compilation and Prozone's Guide (whether considered with respect to quality or quantity) was instrumental. While some event descriptions had been reproduced, Sports Data had failed to demonstrate that the selection, structure and arrangement (which are critical when the work is simply a list of factual material) were substantially identical. Wigney J was also unpersuaded by Sports Data's evidence regarding causation, due to the lack of evidence that Prozone had actually obtained and copied all or a substantial part of the copyright work.

Wigney J briefly considered whether extracts from a much larger work (here, four tables from among 50) could legitimately comprise a copyright work. In particular, Wigney J expressed concern that allowing applicants to assert copyright in certain sections of a larger work might allow them to sidestep the substantiality requirement in an infringement claim. Wigney J found that it was not necessary to reach a conclusion on the question, but expressed the preliminary view that defining a copyright work in this manner might well prove impermissible at trial.

Balance of convenience not in Sports Data's favour

While it was strictly unnecessary to consider the balance of convenience, Wigney J addressed the arguments the parties had raised. He found that the balance of convenience did not fall in Sports Data's favour and that interlocutory relief would not have been awarded even if Sports Data had made out a prima facie case with regard to either of the causes of action (Apple v Samsung). The evidence led by Sports Data regarding its financial and business position was incomplete and therefore inconclusive, and Wigney J reasoned that its position would be unlikely to be improved by the grant of the injunctions it sought. For instance, there was no evidence that the NRL clubs would seek to engage Sports Data's services again. For that reason, Wigney J was not satisfied that damages would be an inadequate remedy for Sports Data or that Sports Data would suffer irreparable harm if interlocutory relief was not granted.

Further, Wigney J considered it possible that Prozone and its employees would suffer harm if an injunction rendered it unable to perform its obligations under its contract with the NRL. The NRL would also be inconvenienced, as it would need to retain an alternative statistics provider.

Three final factors cited by Wigney J in refusing to grant the injunctions were Sports Data's very weak prima facie case, its delay in seeking interlocutory relief and the fact that it sought unjustifiably broad injunctions without time limitations.

Practical significance

Sports Data v Prozone serves as a reminder to define carefully and specifically the literary work in a copyright infringement claim and highlights the complexities of proving reproduction of a substantial part and causation in the database context. It raises a broader question about whether copyright can justifiably be asserted over specific components of a larger work without compromising the substantiality threshold.

With respect to confidential information, the decision signals that it is crucial to flag confidentiality at the earliest possible opportunity (ideally before, or when, the information is imparted). It is strongly advisable to seek interlocutory relief in a timely manner and to ensure that proposed injunctions are framed with precision.

The author thanks Tim Golder and Lester Miller of Allens for their assistance with this article.