*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
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.
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.
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.
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 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.
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.
"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."
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.
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].
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.
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]
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.
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.
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.
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.cptech.org
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
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