Compiling
Databases calls for a Copyright—the blurred Image
Prateek
Shanker Srivastava
[1]
INTRODUCTION
Database
protection is traditionally the prerogative of copyright. Copyright aims at
fostering creativity by the grant of exclusive rights for a limited term for
authors of literary, artistic or musical works. Compilations or databases are
species of literary work; which are protectable by copyright if the requisite
minimum-originality threshold is satisfied. The originality criterion is
designed to sift ideas, facts and other public-domain materials from the
creative expression of such ideas or facts. The idea/expression dichotomy is
central to copyright philosophy. However, determining what elements of
databases should be considered in applying the weight of the originality
criterion is as problematic as it is controversial. In the United States, the
originality criterion is applied very strictly.
However,
in the United Kingdom and Australia, courts lean more in favour of protecting
the labour involved in the selection, arrangement or collation of the contents
of databases. This is known as “sweat-of-the-brow’’ database protection. The
European Union came up with an answer in the form of the sui generic EC
Database Directive. It is designed to protect investments in commercial
databases as a means of encouraging more investments in database ventures. An
attempt to internationalize the Database Directive through the World
Intellectual Property Organization (WIPO) did not catch on in 1996. The
international apathy towards the sui generis regime is due to many
reasons, ranging from alternative forms of protection such as unh- competition
and technological measures, i.e. encryption, to protests from the civil society
which perceives the sui generis regime as an enclosure of the common or
the public domain.
THE
CONCEPT OF COPYRIGHT
Copyright
is the exclusive legal right vested in the authors of literary, artistic and
musical works, sound recordings, photographs and cinematograph films, to make
their works available to the public by way of reproduction, sale, or transfer.
Copyright allows authors of literary, artistic and allied works to prevent
anyone from performing any of the exclusive rights conferred without their
permission. Copyright is also known as droit moral or rights of paternity in
Continental Europe. Copyright does not protect ideas per se, but the expression
of ideas in a fixed medium. “Idea” belongs to the public domain, and is free
for anyone to tap into and employ for intellectual creativity, which could be
copyrightable. Copyright is a negative right designed to prevent the doing of
certain prohibited acts, such as copying or making available to the public
protected works without the consent of the right owner. The classic works of
authorship are “literary, dramatic, musical and artistic works.” These now
include a garden-variety of purely secondary works, better known by the generic
term of “neighbouring rights”. Unlike patents and trademarks, copyright does
not require a formal registration. Moreover, there is no legal prerequisite of
quality for copyright protection.
CRITERIA FOR PROTECTION
The
arrangement is also flexible enough to allow for the copyright protection of
final works, reproduced from sources that are the subject of copyright protection,
provided that the permission of the right owner is secured. This is especially
true for copyright in databases whose contents could be copyright-protected
materials from different sources. The fractious arguments in ascertaining the
originality threshold revolves on whether it suffices if there is evidence of
“labour, skill, and judgment” or whether some elements or sparks of creativity
must be present in the compilation. Copyright, like most intellectual property
rights,’ is usually limited in time, and constrained by other statutory
exceptions such as fair-use. The Beme Convention and the WTO Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS) provide that
minimum protection should be for the life of the author and fifty years or not
less than fifty years, respectively, after his death. Nevertheless, there is no
cap on the number of years per se as most countries (especially in Europe
following the EC Directive on copyright protection) protect literary and
artistic works during the life of the author plus seventy years after his
death.
Article
20 of the Berne Convention allows for bilateral agreements for stronger
protection than that granted under the Convention. The lack of a real
enforcement mechanism under the Convention highlights its vulnerability. The
WTO 1994 TRIPS agreement introduced a uniform minimum standard for copyright
protection and, for the first time, commodified intellectual property and made
non-compliance by Member countries subject to dispute declaration and settlement,
with the real possibility of sanctions on defaulting Members. Although TRIPS
represents significant progress in international copyright protection compared
to the Berne Convention in enforcement terms, achieving uniformity in
protection standards is still a major long-term challenge.
GUARDING DATABASES
Article
l0(2) of the TRIPS agreement makes provision for the protection of compilations
of data or other material as follows:
“Compilations
of data or other material, whether in machine readable or other form, which by
reason of the selection or arrangement of their contents constitute
intellectual creations shall be protected as such. Such protection, which shall
not extend to the data or material itself, shall be without prejudice to any
copyright subsisting in the data or material itself.”
Article
l (2) of the EC Database Directive defines a database as “a collection of
independent works, data or other materials arranged in a systematic or
methodical way and individually accessible by electronic or other means.”
In
essence, the protectable element of a database is the selection or arrangement
of the content, provided that the selection or arrangement constitutes
intellectual creation. “Intellectual creation” in this context would connote
originality. For instance, Sections 102-103 of the U.S. 1976 Copyright Act
provides that copyright subsists in a “compilation” if it qualifies as an
“original work of authorship”. The key to copyright protection of databases is
without doubt the nature and threshold of originality required.
Article
10 (2) of the TRIPS agreement will protect data or other material in “machine
readable or other form”. This connotes databases in either print or electronic
form. The standard of protection for both forms of databases is basically the
same except that electronic databases present a problem regarding ascertaining
originality in their selection and arrangement of factual compilations that are
electronically stored. The same underlying principles of economic, moral and
philosophical justifications for protecting the broad field of intellectual
property would serve as the basis for copyright protection of databases
ELECTRONIC DATABASE
PROTECTION
Article
10(2) of the TRIPS agreement appears to make no distinction between the criteria
for the protection of traditional databases and electronic databases. As noted
above, the requirement that the selection and arrangement of factual
compilations should constitute intellectual creations raises a peculiar problem
in the digital environment, because in a computerized database, the arrangement
of data is hatched not so much by the ingenuity or creativity of the compiler
as by the search-and-retrieval-system software, whose author might not even be
the database compiler. Even if the
database compiler were the creator of such software the software is
protectable, and is better protected by copyright or patent.
DATABASE FORTIFICATION
ACROSS JURISDICTIONS
a)
United
States
In
the United States, copyright does not protect facts but the expression of
facts. This fact/expression dichotomy finds support in Section 102(b) of the
1976 Copyright Act. A compilation of facts is an expression of facts. A
compilation is defined as:
“A
work formed by the collection and assembling of pre-existing materials or data
that are selected, co-ordinated, or arranged in such a way that the resulting
work as a whole constitutes an original work of authorship.”
SS 102-103 of the U.S Copyright Act provide
that copyright shall subsist in a compilation if it qualifies as an “original
work of authorship”. This was the focus of interpretation in the Supreme Court
case of Feist Publications, Inc. v. Rural
Telephone Sewice Co. Herein the court held that “In determining whether a
fact-based work is an original work of authorship, [the courts] should focus on
the manner in which the collected facts have been selected, co-ordinated, and
arranged. This is a straightforward application of the originality requirement.
Facts are never original, so the compilation author can claim originality, if
at all; only in the way the facts are presented. To that extent, the statute
dictates that the principal focus should be on whether the selection,
co-ordination and arrangement are sufficiently original to merit protection.”
The Court held further that the sweat of the brow violated the basic copyright
principle of originality, which has its roots in the U.S. Constitution.
It
would appear; therefore, that the only means of protecting electronic databases
is through unfair-competition principles and technological measures such as
encryption this misappropriation or unfair-competition principle was put to the
test in the case of the National
Basketball Association (NBA) v. Motorola, Inc. Herein, Motorola
manufactured and marketed the SportsTrax paging device while STATS supplies the
game information that is transmitted to the pagers. The Court opined that
Motorola and STATS expend their own resources to collect purely factual
information generated in NBA games to transmit to SportsTrax pagers. They have
their own network and assemble and transmit data themselves.”
It
is clear from the NBA case that factual compilation of data in electronic form
or otherwise would be protected in the United States by unfair-competition or
misappropriation of property principles other than copyright
b)
United
Kingdom
The
term “compilation” is not defined in the U.K. Copyright Act, It is, however,
identified as a “literary work” which could be protected by copyright. While the U.S courts, as
exemplified by the Feist decision, would not protect sweat of the brow, some
English cases dating back to the nineteenth century had been favourably
disposed to the doctrine. In Kelly v.
Morris, the defendant could not take a single line of the plaintiffs
Directory for the purpose of saving him self labour and trouble in getting his
information.” This passage quite clearly supports the sweat-of-the-brow
concept. The defendant would be liable for copyright infringement even if all
he did were to reproduce the plaintiff’s factual compilation. The protectable
elements are the pieces of information, and not the selection and arrangement
of the information itself. In recent times, cases decided based on the U.K.
1988 Copyright Act have favoured the sweat-of-the-brow disposition.
c)
European
Union
The
1996 EC Database Directive is a sui generis regime contrived to protect
databases in any form which fail the copyright originality test. However, the
Directivedoes not entirely preclude copyright in database protection. Its
Chapter 11 deals with circumstances in which copyright would be applicable;
Article 3(1) sets the conditions for copyright protection as follows:
“Databases
which, by reason of the selection or arrangement of their contents, constitute
the author’s own intellectual creation shall be protected as such by copyright.
No other criteria shall be applied to determine their eligibility for that
protection.”
THE SCOPE OF EXCLUSIVE
RIGHTS
The
owner of the database right has the right to prevent extraction, and/or
re-utilization of the whole or of a substantial part of the database in which
there has been qualitatively or quantitatively a substantial investment.
“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.”
Re-utilization
is defined as: “... any form of making available to the public all or a
substantial part of the contents of a database by the distribution of copies,
by renting, by online or other forms of transmission.” To establish
infringement, the plaintiff must prove that the defendant derived the alleged
infringing data from his database and that it was not a product of the
defendant’s independent relation. Furthermore, the alleged infringing data
taken from the plaintiff’s database must be qualitatively and/or quantitatively
substantial. The taking of insubstantial parts of the plaintiff’s database may
not constitute an infringement.
SUI GENERIS PROTECTION-
Form and Prospects
Copyright’s
failure to protect investments in databases was the primary reason for the 1996
EC Database Directive.
“Member
States shall provide for a right for the maker of a database which shows that
there has been qualitatively and/or quantitatively a substantial investment in
either the obtaining, verification or presentation of the contents to prevent
extraction and/or re-utilization of the whole or of a substantial part,
evaluated qualitatively and/or quantitatively, of the contents of that
database.”
In
1996, the WIPO Diplomatic Conference deliberated on the possibility of adopting
a model for a sui generis regime for international database protection,
but it was never implemented.
CONCLUSION
This
article has examined electronic database protection and the limitations
confronted by copyright. As there is no special rule or principle for
differentiating electronic databases from print databases, the article treats
the topic in the light of the general statutes, case-law and treaties on
database protection in the United States, the United Kingdom and European
Union. In the database protection context, there must be a modicum or spark of
creativity in the selection or arrangement of the data to merit copyright
protection. Courts have been divided for years on whether or not to protect evidence
of labour, skill and judgment in the selection, arrangement and collation of
information in the database. This is known as “sweat of the brow”. Both
Australia and the United Kingdom favour sweat-of-the-brow protection. On the
other hand, the United States maintains that sweat of the brow would not
substitute for originality, and therefore mere labour, skill and judgment in
data selection, arrangement or collation would not be rewarded by copyright.
The main rationale for holding sweat of the brow suspect is the fundamental
principle of the copyright originality criterion. The principle is premised on
the public policy aim of safeguarding the public domain. Herein lies the
inherent limitation of copyright protection of databases. The sui generis
database protection regime is designed to protect investments in commercial
databases that would not qualify for copyright protection due to lack of
originality. The European Union has adopted the regime while the United States
has not. The United States appears to prefer to protect databases through the
instrumentality of unfair competition and other means, for example, industry
control through technological measures such as encryption.
REFERENCES
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