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If databases are not protected by copyright (and most are not), and if they should be protected, should they be protected by a paracopyright law, that is, a sui generis law? A definition: A computer database is an automatic compilation capable of being manipulated and retrievable by an appropriate search engine. LEXIS is an example. Subscribers to LEXIS access the system through a computer, and may search for articles by author, subject, data, publication, key term or other criteria. Responding to a search command, LEXIS scans the database and informs the user of the number of articles meeting the user’s search criteria. [FOOTNOTE 1] Until 1991, directories, the databases of its time, were protected by copyright. [FOOTNOTE 2]The justification for protecting factual compilations was either “sweat of the brow” or “industrious collection.” [FOOTNOTE 3]Copyright was the reward for the hard work that went into compiling facts. And then in 1991 came Feist. [FOOTNOTE 4]Justice Sandra Day O’Connor stated that “copyright rewards originality, not effort.” The industrious compilation of white page telephone listings in that case lacked originality. Justice O’Connor stated that “Others may copy the underlying facts, but not the precise words used to present them.” And copyright in a factual compilation is thin. Notwithstanding a valid copyright, a subsequent compiler remains free to use the underlying facts. What about the investment in databases? What about copycat duplicators? Could a subscriber make unauthorized derivative uses? Would protection of databases substantially harm the scientific and academic community? What about the public domain? The European Union (EU), in 1996, instituted a Database Directive, [FOOTNOTE 5]protecting EU databases. Notwithstanding various bills introduced for more than six years in Congress, (but not last session), U.S. databases are unprotected. Is there harm to U.S. databases? EU DIRECTIVE In addition to a copyright right, for noncopyrightable data, the EU has created a sui generis right, with a duration of 15 years. A maker with a substantial investment can prevent the extraction or re-utilization of a substantial part of the contents of the database. The repeated and systematic use of insubstantial parts may be actionable. There is a reciprocity requirement for the sui generis right for third parties. So far, the United States cannot utilize the sui generis right because we have no similar protection. Such a requirement may not seriously deter U.S. database companies from operating in Europe. Europeans seem to have gone out of their way to recognize alternative grounds of protection available from unfair competition and copyright laws. These forms of protection remain available to all U.S. companies even if they are denied access to the sui generis database regime. But, certainly, a counterpart U.S. bill would be better. The directive provides exclusive rights and, to some critics, bestows the strongest intellectual property right to those who contributed nothing more to the public good than investments in noncopyrightable compilation of information. Professor Jerome H. Reichman, Bunyan S. Womble Professor of Law at Duke University, a vocal opponent, says: [FOOTNOTE 6] The EU case law, to date, confirms the existence of all the hard problems that the literature has so far identified — the prevalence of sole-source providers; unreasonable restrictions on licensing; barriers to entry; and impediments to follow-on applications of data — without a scintilla of evidence that the Directive has satisfactorily resolved any of these problems. TWO HOUSE BILLS In the last five or six years, two bills [FOOTNOTE 7]have been considered by various House and Senate subcommittees, H.R. 354 and 1858. • H.R. 354, the Judiciary version, concerns predatory acts, making available or extracting to make available all or a substantial part of a database maintained through substantial investment. There are many permitted acts: “reasonable uses,” certain nonprofit education, scientific or research uses, et al. H.R. 354 is an exclusive right model. Liability derives from material harm to the market. • H.R. 1858 is an unfair competition or misappropriation bill, prohibiting duplicates of databases in competition. Again, there are many permitted acts and exclusions; enforcement is by the Federal Trade Commission. The bill began as a liability bill. The effort was to prohibit market destructive conduct rather than an exclusive property right as such. Such bills rely on the Commerce Clause. Query: Since the Supreme Court has declared that one cannot copyright facts, whether legislation to accomplish a form of protection for facts under the Commerce Clause would be constitutional. Under the Commerce Clause, database protection legislation would (i) create a tort-based cause of action that prohibits only economically harmful conduct; (ii) reach databases affecting interstate or foreign commerce; and (iii) protect non-original data that, like trademarks, are not the subject of copyright. Be that as it may, the bills did not pass because of opposition by, among others, the consumer, science, research, university and library communities, and the U.S. Chamber of Commerce! The list of supporters is also large, including Reed Elseveir, McGraw-Hill and the American Medical Association. Since U.S. databases are generally unprotected by copyright, such companies rely on self-help mechanisms — contracts and technological devices to protect the compilation. The very depth of the database also provides some protection. Is this sufficient? OUTLOOK Has protection in the EU harmed research? In the U.S., with no protection, has research been aided? There are no easy answers. The EU, under Article 16 of the Database Directive, is examining the consequences of the sui generis right, particularly concerning competition policy. It is hard to get a handle on harm. European databases, as a share of all databases, have increased from 22 percent to 34 percent, while North American databases have decreased from 69 percent to 60 percent. [FOOTNOTE 8]There has been a sprinkling of bad cases for databases, such as Schoolhouse, Inc. v. Jeff Anderson. [FOOTNOTE 9] The opposition considers that any new legislation must have an anti-commons effect. Professor Reichman of Duke University Law School would favor a minimalist approach to ban only wholesale duplication so as to avoid market failure. He writes: Another question of capital importance is the role that databases currently play in both basic and applied sciences. Pre-existing legal regimes have treated scientific data as a common resource available from the public domain, and the ethos of science has been premised on a commitment to the free and open exchange of data to support scientific hypotheses and published findings. The traditional and customary practice is accordingly for scientists to recombine data from existing databases into new databases to be used as electronic information tools to solve hard new problems. Any proposed regulatory solution must take these practices into account and avoid disrupting the worldwide scientific networks that depend on the sharing of essential data. From a related but still broader perspective, vast quantities of technical information have always been freely available from the public domain, as a basic input of the knowledge economy, where the technology-exporting countries’ comparative advantages are most deeply rooted. In other words, information is both an input and an output of the information economy. This economy has grown to its present magnitude under conditions in which entrepreneurs can only obtain exclusive rights in downstream aggregates of information that rise to the level of patentable inventions or copyrightable works of authorship. [FOOTNOTE 10] The advocates fear piracy. Even with Republicans in charge of both houses, I am not sure how the parties will line up on this type of legislation. The public domain folks will not like such legislation, but neither will the Republicans who do not want the government to enfranchise and legislate favored business models. David S. Korzenik of Miller and Korzenik says that the legislated licensing franchise approach is really a very European thing to do, and there are some Republicans who may be troubled by the potential proliferation of litigation between data owners. In an Oct. 2, 2002 letter to the House leadership, Representative Jim Sensenbrenner, R-Wis., chairman of the House Judiciary Committee and Representative Billy Tauzin, R.-La., chairman of the House Energy and Commerce Committee, declared that there was insufficient time to complete database negotiations in 2002. The letter stated, “each of us believes that the other has made a good faith effort at contributing to the development of a compromise bill” and “progress has been made in furtherance of this end over the past two years.” At this moment, the Senate is deferring to the House. Any proposed bill will start from scratch. The legislative calendar is often late and will depend on whether a new bill can be fitted in the legislative agenda. Please note that two House committees have jurisdiction of any proposed database protection law. If there is a new law, and to avoid controversy, it will be narrow. But, the opposition may be very spirited and may again carry the day. Alan J. Hartnick is a partner of Abelman, Frayne & Schwab ( www.lawabel.com) and an adjunct professor of law at Fordham Law School. If you are interested in submitting an article to law.com, please click herefor our submission guidelines. ::::FOOTNOTES:::: FN 1 N.Y. Times Company v. Tasini, 533 U.S. 483 (2001) FN 2 Leon v. Pacific Telephone & Telegraph Co., 91 F.2d 484 (9th Cir. 1937). FN 3 Jeweler’s Circular Publishing Co. v. Keystone Publishing Co., 281 F.83 (2nd Cir. 1922). FN 4 Feist Publications, Inc. v. Rural Telephone Service Company, Inc., 499 U.S. 340 (1991). FN 5Directive 96/9/EC of March 11, 1996, 1996 O.J. (L77) FN 6Reichman, “Database Protection in a Global Economy,” Revue Internationale de Droit Economique, 2002/2-3, 455, 481. FN 7U.S. House of Representatives, House Comm. on the Judiciary, 104th Cong., 1st Session, H.R. 354, The Collections of Information Antipiracy Act, Jan. 19, 1999 [hereinafter H.R. 354]; U.S. House of Representatives, House Committee on Commerce, 106th Cong., 1st Session, H.R. 1858, Consumer and Investor Access to Information Act of 1999, May 19, 1999 [hereinafter H.R. 1858]. FN 8Williams, “State of Databases Today,” Gale Directory of Databases, 2002, Table 4, p. xxv. FN 9 Schoolhouse Inc. v. Anderson, 2002 US App. LEXIS 63 (8th Cir. 2002). With a modicum of creativity, arrangement and selection, a database can gain protection under existing law. Key Publications v. Chinatown Today, 945 F2d 509 (2nd Cir. 1991) and CCC Information Services v. Maclean Hunter Market Reports, 44 F.3d 61 (2nd Cir. 1994). FN 10Reichman, supra, at n.6, 461, 462.

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