Database extraction and Internet Copyrights
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[http://www.essential.org/cpt/ip/cpt-dbcom.html]
A PRIMER ON THE PROPOSED WIPO TREATY ON
DATABASE EXTRACTION RIGHTS
THAT WILL BE CONSIDERED IN DECEMBER 1996*
October 29, 1996
Revised November 10, 1996
James Love
Consumer Project on Technology
http://www.essential.org/cpt
email: love@tap.org
*This is my first take on the treaty, and I would appreciate comments
and corrections. This is a very important matter that hasn't received
much attention. jl
INTRODUCTION
The World Intellectual Property Organization (WIPO) will consider in
December 1996 a new treaty that would require most countries
(including the United States) to severely curtail the public's rights
to use pubic domain materials stored in "databases." Some experts say
it is the "least balanced and most potentially anti- competitive
intellectual property rights ever created." The U.S. Patent and
Trademark Office (PTO) is accepting public comments on this treaty,
and a digital copyright treaty that is also troubling. Comments are
due by November 22, 1996, and can be submitted by electronic mail to:
diploconf@uspto.gov . Copies of the treaty, commentary, and the PTO
federal register notice is available from
http://www.public-domain.org. This memorandum provides background
information on the treaty and the problems it presents.
BACKGROUND
The database treaty is being pushed by large publishing companies, in
response to the 1991 U.S. Supreme Court decision in Feist
Publications, Inc. v. Rural Telephone Service . In Feist , the Court
rejected a claim of copyright for data from a telephone directory's
white pages, saying that facts cannot be copyrighted, and that obvious
items such as listing names, addresses, and telephone numbers in
alphabetical order, are not sufficiently creative to qualify for
copyright protection. The decision rejected the "sweat of the brow"
theory of copyright.
Compilations of data or documents, including materials from the public
domain, can receive protection under copyright if the creator of the
compilation can show originality in the selection and arrangement of
the data. Comprehensive databases, which can be expensive to create,
confront problems under copyright laws because (almost by definition)
they are not original in terms of the selection of the
materials.
Electronic database publishers have sought to protect their data
through contracts with their customers. These contracts often place
restrictive conditions on the reuse or redissemination of the data.
See Pam Samuelson, "Legally Speaking: Legal Protection For Database
Contents," 39 Communications of the ACM (Nov. 1996), for a discussion
about this approach. In other cases, database vendors permit online
searching, but do not distribute the complete database itself.
Publishers are looking for stronger protection, and are lobbying hard
to obtain a new "sui generis" (this is Latin for "one of a kind," and
is a term used to describe statutory protections which are not defined
under patent, copyright or trademark laws) property right to protect
the contents of databases. The publishers' first success was the
adoption of a controversial proposal for database extraction rights in
the European Union (EU), and by gaining the support of the Clinton
Administration and the EU to propose a very similar measure as an
amendment to the Berne Copyright Convention. Legislation to implement
this form of data use regulation was introduced in the 104th Congress
[HR 3531], but there were no hearings on the measure. [On November 6,
1996 we were told by the White House that the Clinton Administration
did not support the language of HR 3531.]
Despite the controversial and far reaching nature of the database
protection proposal and the lack of discussion on its impact in the
United States, the Clinton Administration is asking for quick approval
of the database treaty at a December 1996 meeting in Geneva hosted by
the World Intellectual Property Organization (WIPO). The main
Administration advocate in support of the publishers' position is
Bruce Lehman, Chair of the Patent and Trademark Office (PTO), a person
widely considered an intellectual property rights zealot.
THE COMPLEXITIES (AND DANGERS) IN CREATING A NEW PROPERTY RIGHT FOR DATA
While many persons are sympathetic to the general idea of a sui
generis form of protection for databases, there is enormous concern
about the complexities of creating a new property right that has the
potential to create private monopolies on data and documents that have
traditionally been in the public domain. It is often said that "the
devil is in the details," and this is certainly true for the database
protection proposal. A handful of database vendors have quietly
crafted a proposed treaty and law that creates a nightmare for
researchers and value added publishers. In discussing the development
of the EU database proposal, J. H. Reichman and Pamela Samuelson say
that "lobbying pressures converted the final version into one of the
least balanced and most potentially anti-competitive intellectual
property rights ever created." [ "Intellectual Property Rights In
Data: An Assault On The Worldwide Public Interest In Research And
Development , forthcoming in Vanderbilt Law Review, 50 ].
The database vendors have sought to vastly expand the ability of
database owners to regulate and restrict the public's rights to use
data, without the types of safeguards which exist in copyright law
today. In this respect, it is important to understand that as a "sui
generis" property right, the database extraction rights are not part
of the of the copyright regime, and the entire doctrine of fair use of
data will not apply to data protected under the proposed database
extraction rights treaty and legislation. Moreover, under the WIPO
proposal these new data rights would be retroactive, affecting
countless databases already in existence.
DIGRESSION ON WEST PUBLISHING AND THE DEFINITION OF A DATABASE
The Feist decision was particularly troubling for West Publishing, a
company that wants to maintain its monopoly on the citations and
corrected text for many court decisions. (See:
[http://essential.org/cpt/legalinfo/legalinfo.html ) West is the
only comprehensive publisher of federal circuit and district court
opinions and state court opinions from all 50 states. The page numbers
of the West court reporters are the basis for authoritative citations
used by scholars and lawyers. As a reporter of decisions, West also
makes corrections to the text of court opinions, typically after
working with the judge who wrote the opinion. West wants to prevent
others from using their page numbers or the corrected text of court
opinions, and it is often in court trying to prevent its would be
competitors from doing so.
West is now involved in at least two law suits over its assertions of
copyright of the page numbers, and one law suit over the issue of the
copyright to the text of the corrected court opinions. [See
http://www.hyperlaw.com for background on this]. Most copyright
experts think that West will lose its court case on the issue of its
page numbers, and West will also be hard pressed to claim it can
copyright the corrections to the text of court opinions --
particularly for the US federal courts, since U.S. copyright laws
exclude the works of federal employees.
Most people think that the corrected text of court opinions, and the
citations to those opinions, should be in the public domain, and that
the West monopoly has delayed the development of new information
products and services for legal researchers. No one seriously argues
that the court opinions would not be published without a West
monopoly. West is among the private sector publishers who have
successfully lobbied the EU and the Clinton Administration to extend
the database protection proposals to print products by defining a
database so broadly that it will include any collection of facts,
data, or documents regardless of the media. If the database protection
proposals are enacted, West will have a firm monopoly on decades of
judicial citations and corrections to judicial opinions.
THE DATABASE EXTRACTION RIGHTS PROPOSAL
The August 30, 1996 version of the WIPO treaty is available on the Web
at http://www.loc.gov/copyright/wipo6.html, and it is worth reading
since it represents the most radical change in intellectual property
rights in data, ever.
WHAT IS A DATABASE? WHAT ISN'T A DATABASE?
The treaty would protect "any database that represents a substantial
investment in the collection, assembly, verification, organization or
presentation of the contents of the database." This term should be
understood "to include collections of literary, musical or audiovisual
works or any other kind of works, or collections of other materials
such as texts, sounds, images, numbers, facts, or data representing
any other matter or substance" and "may contain collections of
expressions of folklore." The "protection shall be granted to
databases irrespective of the form or medium in which they are
embodied. Protection extends to databases in both electronic and
non-electronic form" and "embraces all forms or media now known or
later developed. . . Protection shall be granted to databases
regardless of whether they are made available to the public. This
means that databases that are made generally available to the public,
commercially or otherwise, as well as databases that remain within the
exclusive possession and control of their developers enjoy protection
on the same footing."
In other words, a lot of water will go under this bridge.
WHAT ARE EXTRACTION AND UTILIZATION RIGHTS?
"The maker of a database eligible for protection under this Treaty
shall have the right to authorize or prohibit the extraction or
utilization of its contents." What is "extraction"? Extraction is
defined as, "the permanent or temporary transfer of all or a
substantial part of the contents of a database to another medium by
any means or in any form." "Extraction . . . is a synonym for
`copying' or `reproduction' . . . by `any means' or `any form' that is
now known or later developed."
"Utilization" is defined as "making available to the public all or a
substantial part of the contents of a database by any means, including
by the distribution of copies, by renting, or by on-line or other
forms of transmission," including the right to control the use of the
data "at a time individually chosen by each member of the public."
WHAT IS A "SUBSTANTIAL PART" OF THE DATABASE?
The treaty sets out tests for determining if an extraction is
"substantial," and these tests are both highly anticompetitive, and
extremely broad in scope.
The "substantiality" of a portion of the database is assessed against
the "value of the database," and considers "qualitative and
quantitative aspects," noting that "neither aspect is more important
than the other. . . This assessment may also take into account the
diminution in market value that may result from the use of the
portion, including the added risk that the investment in the database
will not be recoverable. It may even include an assessment of whether
a new product using the portion could serve as a commercial substitute
for the original, diminishing the market for the original."
Then the treaty adds that a "substantial part" means any portion of
the database, "including an accumulation of small portions . . . In
practice, repeated or systematic use of small portions of the contents
of a database may have the same effect as extraction or utilization of
a large, or substantial, part of the contents of the database."
In the US implementing legislation, the only types of data use that
would not be regulated would be "insubstantial" parts, "whose
extraction, use or reuse does not diminish the value of the database,
conflict with a normal exploitation of the database or adversely
affect the actual or potential market for the database." Under this
language, a database owner could say that it might in the future want
to charge for each transmission of a fact or an element of a database
as part of its "normal exploitation" of the database. With the
Internet and digital cash this claim is likely to be made. The public
would not have "fair use" rights, since fair use is only defined in
matters involving copyright.
FOR HOW LONG? 15 YEARS, 25 YEARS, OR FOREVER?
The Treaty would require a minimum term of protection (15 years in the
EU proposal, and 25 in the United States proposal) for the database.
But this is extended each time the database is revised or enhanced.
According to the draft treaty, "any substantial change to the
database, evaluated qualitatively or quantitatively, including any
substantial change resulting from the accumulation of successive
additions, deletions, verifications, modifications in organization or
presentation, or other alterations, which constitute a new substantial
investment, shall qualify the database resulting from such investment
for its own term of protection."
The provision on revisions raises the specter that protection for many
databases will be perpetual. This could indeed be the case if the
original versions of the database are only "licensed" by the vendor
for a limited period of time, so that the only available versions
would be the new ones, which would have a new term of protection.
[Database vendors write these restricted use licenses now].
WHO WILL "OWN" FACTS?
The supporters of the Treaty note that persons can independently
collect data for a rival database, and the US legislation says
"nothing in this Act shall in any way restrict any person from
independently collecting, assembling or compiling works, data or
materials from sources other than a database subject to this Act."
Unfortunately, this will only be helpful in those cases where there
will be a separate non-protected source for the data or documents.
If the entity which creates the initial data or documents qualifies
for the database extraction right, the data itself will be
monopolized. The example given above regarding the West Publishing
reporters of court decisions is one example, where the citations
(which are based upon the West page numbers) and the corrections to
opinions (which are only reported by West) cannot be obtained from any
third parties. But the problem is much broader than court opinions.
All sorts of data will be protected at the source under the database
treaty, and may never enter the public domain.
There are also the practical problems relating to the costs of
independent data collection. The telephone companies obtain directory
information when you become a subscriber, and it is practically
impossible to independently collect this data. Databases of IP
addressees collected by Network Solutions will be covered, giving
Network Solutions broad new rights in how that data is utilized by
ISPs.
WHAT ABOUT GOVERNMENT INFORMATION?
Much of the lobbying for the sui generis database proposal is designed
to enable database vendors to protect collections of government
documents. The treaty would permit countries to have special rules for
"databases made by governmental entities or their agents or
employees." However, this exemption will not include cases such as the
West Publishing reporting of court decisions, where West is acting as
an unofficial agent for the courts.
In the US enabling legislation, protection is not given to a database
made by a governmental entity, but protection could not be excluded
from companies if a database's "contents have been obtained from a
governmental entity." There is no provision to exempt databases
created by private parties; like West, LEXIS, and literally thousands
of other firms; when they act as contractors to government agencies.
For example, West is a contractor for some courts in receiving
electronic filing of briefs. Under the U.S. legislation, the database
of briefs collected by West for the Courts would be protected.
Likewise, the SEC EDGAR public disclosure filings which are managed by
LEXIS would be covered.
The Clinton Administration has gone to court in at least two cases
avoid releasing documents under the Freedom of Information Act (FOIA)
when West Publishing has asserted intellectual property rights claims
to elements of the data. In the FLITE case, the Clinton administration
successfully argued that it did not have to release U.S. Court
opinions collected by the Air Force at public expense that contained
West "corrections" and enhancements. (See:
http://www.essential.org/listproc/info-policy-notes/0185.html, and
the Tax Analysts page on this topic, at http://www.tax.org/pal). It
appears as though government entities will be permitted to avoid FOIA
completely if they use private contractors, and write contracts which
permit agency access to data (extraction), but do not permit
disclosure to the public. [For a discussion of an earlier legislative
initiative by West Publishing to achieve a similar result, that was
defeated after citizen protests, see:
http://www.essential.org/listproc/info-policy-notes/0137.html, and
http://www.essential.org/listproc/info-policy-notes/0139.html]
WHAT ABOUT FAIR USE RIGHTS?
As noted several times, the public has rights, often taken for
granted, under the copyright "fair use" doctrine. This includes
commercial and non-commercial fair use. The fair use rules involve
public interest balancing tests. The sui generis database proposal
doesn't include or incorporate public fair use rights. It is difficult
to know how this will play out in practice.
Under the treaty language, governments "may, in their national
legislation, provide exceptions to or limitations of the rights
provided in this Treaty in certain special cases that do not conflict
with the normal exploitation of the database and do not unreasonably
prejudice the legitimate interests of the rightholder." The key terms
here are "normal exploitation of the database," and "legitimate
interests" of the rightholder.
In the U.S. legislation, "a lawful user of a database made available
to the public or placed in commercial use is not prohibited from
extracting, using or reusing insubstantial parts of its contents,
qualitatively or quantitatively, for any purposes whatsoever." But as
noted earlier, the term "insubstantial" is constrained by the scope of
the business opportunities that are perceived by the database vendor.
Not only is "insubstantial" limited to those uses which do not
diminish the value of the database, but insubstantial must also not
"conflict with a normal exploitation" of the database, or adversely
impact the "actual or potential" market of the database. Moreover, the
"normal exploitation" of the database seems to be defined in such a
way that the vendor can assert that a transmission of a database
element on the Internet would be an infringement if the company has a
mechanism or even aspirations to charge for the information, and the
cumulative impact of many small transactions would diminish the value
of that service.
RETROACTIVE PROTECTION
The treaty would require countries to provide protection prospectively
for databases already on the market. Countries could exempt older
databases from protection for up to two years.
PROHIBITIONS ON TECHNOLOGIES TO DEFEAT PROTECTION
As in the proposed Internet copyright treaty and legislation, the
database proposal is accompanied by very strict prohibitions against
the "importation, manufacture or distribution of protection- defeating
devices." This is defined as "any device, product or component
incorporated into a device or product, the primary purpose or primary
effect of which is to circumvent any process, treatment, mechanism or
system that prevents or inhibits any of the acts covered by the rights
under this Treaty." The US legislation contains similar provisions,
plus a whole section which would make it a federal crime to interfere
with "database management information." Persons would face up to 5
years in jail and a $500,000 file for doing such things as providing
or disseminating false database management information, or removing or
altering any such information. It would seem that simply tearing the
cover off a telephone book (a protected database under the treaty) be
a violation of this provision.
WHAT CAN YOU DO?
If you think this proposal needs more debate before it is forced upon
us and the rest of the world, contact your member of Congress and
submit comments to the PTO asking that the database treaty be taken
off the WIPO agenda for this December. You should point out that there
have been zero public hearings before the Congress on this
far-reaching proposal. You also might read the attached October 9,
1996 letter in opposition to the treaty by the Presidents of the
National Academy of Sciences, the National Academy of Engineering, and
the Institute of Medicine. You will also find good background
materials at Brian Kahin's web page for the State Department Advisory
Committee on International Communications and Information Policy.
As noted above, you can send comments by electronic mail to:
diploconf@uspto.gov. They must be in by November 22, 1996. Copies of
the treaty, commentary, and the PTO federal register notice is
available from http://www.public-domain.org. Public-Domain is an
independent citizen's organization being formed to fight this treaty,
and more generally to protect the public domain in matters concerning
intellectual property.
James love
love@tap.org
http://www.essential.org/cpt
_________________________________________________________________
APPENDIX
Letters of Presidents of National Academy of Sciences, National
Academy of Engineering, and Institute of Medicine in opposition to the
database treaty.
October 9, 1996
The Honorable Michael Kantor
Secretary of Commerce
Department of Commerce
14th Street and Constitution Avenue
NW Washington, D.C. 20230
Dear Mr. Kantor:
We are writing to express our serious concern about pending changes to
international and domestic intellectual property law that are being
supported by the Department of Commerce. Although we understand that
the wide availability and easy transmittal of digital databases can
present difficulties for database vendors, we believe that the August
30, 1996 Draft Treaty on Intellectual Property in Respect to
Databases, which was prepared under the World Intellectual Property
Organization (WIPO), has the potential to undermine our nations
progress in scientific and technical research and education if
appropriate exceptions and limitations are not clearly articulated. As
you may know, the proposed WIPO treaty contains major provisions,
intended to do the following.
Prohibit unauthorized extraction, use, or reuse of any database, or
any substantial portion of a database (as defined by the database
vendor), and effectively establish the basis for a pay-per-use system;
- Make perpetual protection the norm for databases, by making a
15-year initial term of protection renewable with every substantial
change or addition to a database, actions that occur frequently with
most electronic databases; - Apply to all privately generated data, or
repackaged U.S. government data (outside the United States, government
databases would be protected by this law as well); and - Include
strong civil and criminal penalties, including provisions for
third-party liability (e.g., liability incurred by the unwitting
intermediary or disseminator).
While we certainly do not dispute the right of database compilers and
vendors to obtain reasonable protection of their products, the
proposed law fails to provide for any public-good exceptions, such as
the fair use exemption traditionally enjoyed by the research and
education communities for their limited use of copyrighted works.
Database publishers would effectively obtain an absolute and perpetual
monopoly in their data compilations, including preexisting data sets.
The proposed changes would significantly inhibit researchers seeking
to reuse and combine data for publication or for research (an
especially acute problem for researchers using large, continuously
updated observational data sets), as well as educators wishing to use
portions of data sets for instructional purposes. The new law also
would overturn a series of Supreme Court cases that limit intellectual
property rights in the interest of free competition.
We believe that these changes to the intellectual property law, if
enacted in their present form, would seriously undermine the ability
of researchers and educators to access and use scientific data, and
would have a deleterious long-term impact on our nations research
capabilities. Moreover, the proposed changes are broadly antithetical
to the principle of full and open exchange of scientific data espoused
by the U.S. government and academic science communities, and promoted
internationally. We are aware that these and additional concerns
regarding changes to the intellectual property law, have been
communicated to the President and Vice President by the Digital Future
Coalition, the American Society for Information Systems, the
Association of Research Libraries, and the American Association of
Universities.
What is especially disconcerting is that these radical legal changes
have been proposed by the Department of Commerce for formal discussion
and negotiation at the WIPO Diplomatic Conference this December,
without any debate or analysis of the laws potentially harmful
implications for our nations scientific and technological development.
Indeed, although the unintended consequences appear very grave to
those studying these issues, very few individuals at the science
agencies or in the academic community appear even to be aware that
such changes are about to take place, nor has there been any effort
made to solicit their views.
If the current Draft Treaty on Intellectual Property in Respect of
Databases is adopted by WIPO, these changes will move substantially
toward becoming the new international norm in intellectual property
law by the end of this year. Therefore, we request that no precipitous
action be taken at the planned WIPO Diplomatic Conference before the
range of consequences of the proposed changes is fully understood and
appropriate modifications are made.
The underlying issues that have given rise to the potential changes in
intellectual property law will also be described in a report to be
published by the National Research Council later this fall. The study
committee that prepared that report plans to hold a one-day symposium
at the National Academy of Sciences to explore these issues in greater
detail with key officials from the Administration and Congress. In the
meantime, we hope that you will take the steps necessary to avert what
could otherwise become an unnecessarily damaging and contentious
development in intellectual property law.
Sincerely,
Bruce Alberts, National Academy of Sciences
Wm. A. Wulf , National Academy of Engineering
Kenneth I. Shine, Institute of Medicine
______________________________________________________________
This primer was first published in INFORMATION POLICY NOTES , a free
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