Database Dilemma Part 1

The Database Dilemma UPDATED

Databases are not copyright protected in most cases. New Proposed U.S. Laws may Change All This.

How to Protect Databases and Laws of the Year 2000: PART 1

By the year 2000, databases will become more important commercially. ``Databases'' are generally defined as collections of information stored in machine readable form. Of course, they can take on paper form such as the phone book. Databases present a different type of challenge than other types of intellectual Property. This is because, though databases are becoming more valuable, pervasive and more types of things can be put in to them, they are under siege.

Originally, going back over 100 years, it was taken for granted that if someone put a database together, through the "sweat of their brow" then it was a work capable of being bought, licensed, used, reproduced in whole or part and the like. It was thought that a database was like any other work of authorship, and was subject to copyright protection. Others believed that there should be no copyright in a mere gathering of facts. Yet a third school of thought is that because the database was created "by the sweat of the brow" and effort was made to put it together, though it consisted of "facts" that are not normally copyright protected it should be. There developed a "split" in the courts of the various U.S. districts as to the nature of potential copyright protection for databases.

This was the case in the U.S. until the 1991 case of Feist v. Rural Telephone 111 S. Ct. 1282, 1290 (1991). The U.S. Supreme Court held that the old sweat of the brow doctrine was not what it used to be. Databases are based on a mere gathering of facts that exist in nature, the world or are somehow out there for everyone to have and use. The issue came up about a phone book. Yes, the phone book a government mandated white pages, that familiar and detailed listing of every person; that invader of privacy (excluding those who paid not be listed). Feist blatantly copied (aghast, the audience gasped) the entire thing. Rural Telephone sued for copyright infringement. The defendant argued that since the "work" consisted of "facts" that were not the property of anyone, then the work was merely an assembly of those facts and could not claim enough originality to be copyrightable. So the fact that it was copied was not important; the important factor was that the work was not protected because it is not "original." The Court referred to originality as "[t]he sine qua non of copyright," "the touchstone of copyright protection," and the "bedrock principle of copyright." Copyright protection for a factual compilation is not eliminated but it is considered "thin."

This proposition has been the law of the U.S. on databases ever since. The EU has taken a different tack, and though also believing basically that an assemblage of facts is not subject to copyright protection even with a "sweaty brow", there became a basic agreement called the Database Directive of June 23, 1993. This defined a database as: "a collection of a large number of data, works or other materials arranged, stored and accessed by electronic means, and the materials necessary for the operation of the database such as its thesaurus, index or system for obtaining or presenting information...." The Directive provided that there was a "sui generis" or copyright-like protection, under certain conditions, for databases. It provided:

"...3. A database shall be protected by copyright if it is original in the sense that it is a collection of works or materials which, by reason of their selection or their arrangement, constitutes the author's own intellectual creation. No other criteria shall be applied to determine the eligibility of a database for this protection. 4. The copyright protection of a database given by this Directive shall not extend to the works or materials contained therein, irrespective of whether or not they are themselves protected by copyright; the protection of a database shall be without prejudice to any rights subsisting in those works or materials themselves. 5. Member States shall provide for a right for the owner of a database to prevent the unauthorized extraction or re-utilization, from the database, of its contents, in whole or in substantial part, for commercial purposes. This right to prevent unauthorized extraction of the contents of a database shall apply irrespective of the eligibility of that database for protection under copyright. It shall not apply to the contents of a database where these are works already protected by copyright or neighbouring rights."

Under the terms of the EU Database Directive which was to be implemented in the various EU nations by 1998, protection would be afforded foreign-owned (i.e., U.S.) databases only if their home nations afford similar protection. The EU were scheduled to put into place the Directive in October, 1998.

New proposed laws are continually making database protection "sui generis" a reality, and may affect the Feist ruling and how we look at data. See HR 354, pending now in the 106th Congress. This proposal, hailed by database owners who want protection and cursed by many scientists who want the free flow of data, the bill really has many things for all arguments.

The Bill states, "....Sec. 1402. Prohibition against misappropriation..Any person who extracts, or uses in commerce [meaning usually, in commerce that congress may regulate] all or a substantial part, measured either quantitatively or qualitatively, of a collection of information gathered, organized, or maintained by another person through the investment of substantial monetary or other resources, so as to cause harm to the actual or potential market of that other person, or a successor in interest of that other person, for a product or service that incorporates that collection of information and is offered or intended to be offered for sale or otherwise in commerce by that other person, or a successor in interest of that person, shall be liable to that person or successor in interest for the remedies..." The remedies include civil penalties, injunctions, impounding and damages. This reflects the 1999-2000 trend to protect valuable data and the investment that goes into organizing and arranging the data.

Other proposed legislation has failed. In 1996, Rep. Carlos Moorhead (R-Cal.) introduced non-copyright legislation (H.R. 3531) that would provide "sui generis" protection for databases. Last year the U.S. Congress, the Copyright Office and the Commerce Department grappled with the idea that databases deserve SOME form of protection. There are many proposals, and none of them are about to become law. In the 105th Congress was HR 2281, 3048 and others that might have strayed from court decisions about compilation databases, copyrights and their use, sale, contracting and royalties on the Internet. See these important bills presented by the U.S. Copyright office in the Links page.

HOW then to protect this valuable item?

Argue that the database is a compilation of things that might have sufficient originality to qualify for copyright protection. See the Copyright Office Link, go to Publications > Information Circulars > 65 - Copyright Registration for Automated Databases.
Then there is the mainly European notion that sui generis protection can be accorded. This means a new form of quasi copyright protection that entails registration of the database, trade secrets protect for unpublished data, and means of identifying when it is being infringed.
The idea that the database can be misappropriated, or stolen creates a right to a claim against the thief, ex-employee or new employee, so that the private and secret information is thus infringed by the misappropriation, for uses it was not intended. Likewise the mis publishing of the database could weaken it as a marketable commodity. If some or all of a database were taken for improper uses, (such as hacking) information about the theft could injure the reputation of the database and damage its custodian as a whole.
There is, of course contractual protection, but the plaintiff would only generally be able to enforce this against the party who breached the contract itself or to a known third party with whom the was once at least, a relationship.
There could be "trade secret" to the database. This has a basic problem: it does not take into consideration that the "secrets" for the database are available to the public. However, if a database of otherwise known facts is made for use by a business, and if that business derives some competitive advantage over others because of the way it arranged and gathered the database, and IF it were kept under lock and key see article on Trade Secret Basics; it may still be considered a trade secret if done right.
There can be broad protection in the use of databases by means of patents. A number of patents that afford such protection have issued, for are functional databases, that go through a process to arrive at a tangible result and not the mere gathering of facts. For databases that have a relatively short shelf life since a patents take a long time to obtain, copyright may be quicker and more practical. See Patents Basics.

This debate will go on. Scientists say that to allow copyright or "sui generis" protection would choke their methods of openness and sharing of data; that it could stunt the growth of science and the progress of useful arts if all databases were so controlled that their use of other's expression of ideas or facts contained within them leads to infringement liability or court action. Business say that they use databases as trade secrets, as a commodity to sell and to foster their advertising and other plans, and to leave them unprotected could allow spies and adversaries to get away with theft of all or parts of a company's data. If you are concerned with this issue, write to me via E-mail: to phil@iplegal.com and/ or your representatives in congress. See the links page for more information on this.