Reform of existing database legislation and future database legislation strategies: towards a better balance in the database law.

Author:Tian, Yijun

    With the dramatic development of information technology, the Internet has become a major source for the dissemination of intellectual property. In recent years, the development of digital technology has greatly enhanced the development of the electronic database industry. (1) More and more database producers (or information service providers) have started to run businesses and directly benefit from the commercial exploitations of the databases they have developed. (2)

    Ever-improving technology enables users to efficiently access and sort through vast quantities of data by selecting proper databases and search parameters, (3) but it also facilitates data piracy. (4) Database producers often face the risk of unauthorized parties gaining access to, misappropriating and/or disseminating the contents of their databases without financial compensation. (5) Furthermore, current intellectual property law and other relevant legislation may not adequately protect the commercial needs of database producers. (6) Thus, there is pressure on legislatures worldwide to enact new legislation to create sui generis rights to protect the contents of valuable databases. (7)

    In Europe, the EU Database Directive has established a sui generis protection for database contents. (8) However, in the United States, debates in Congress still continue on numerous sui generis database protection bills that have been proposed. (9) At the international level, a draft database treaty proposal was submitted to the World Intellectual Property Organization (WIPO) diplomatic conference in Geneva in December, 1996. (10) Although the proposal was circulated for discussion, it was not debated. The WIPO is most likely waiting for the United States's position on the proposed treaty's details. (11)

    This article will first examine database protection provisions in traditional copyright law at both the international and domestic levels (especially focusing on U.S. copyright law). It will identify the impact of digital technology on database industries, the limits of current copyright law, and explain why sui generis legal protection of databases is necessary. Then, the article will examine the development of sui generis database protection legislation in the world, focusing, in particular, on the legislation in the EU and the United States. After that, the article will explore some specific problems of current sui generis database protection legislation in both the EU Database Directive and the U.S. bills, and make some specific legal suggestions for each. Finally, going beyond making suggestions for solving the specific legal problems, the author will provide some suggestions for the United States and other nations at the strategic level. This article argues that the interest of a nation is only best served by tailoring its intellectual property regimes to its particular economic and social circumstances. It also argues for establishing a new rationale for international digital legislation: the leadership of digital legislation should always belong to the country that makes the best law rather than the country that made the law first.


    2.1. Database Protection in the Existing International Intellectual Property/Copyright Treaties

    Databases have been of concern in the international arena for many years. Major international treaties relating to copyright protection have included provisions for protecting databases, such as the Berne Convention for the Protection of Literary and Artistic Works ("Berne Convention"), the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and the WIPO Copyright Treaty (WCT). But the protections under these treaties seem very narrow and far from perfect; none of them has provided enough protection to unoriginal databases. (In the terminology of copyright, a database is often referred to as a "collection" or "compilation." (12))

    Specifically, the Berne Convention (Paris Text 1971) requires all member countries to protect "collections of literary or artistic works ... which, by reason of the selection and arrangement of their contents, constitute intellectual creations." (13) TRIPS requires all "developed" WTO member countries to protect "[c]ompilations 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...." (14) It further explicitly states such protection "shall not extend to the data or material itself." (15) A similar obligation can also be found in the WCT, which was concluded in Geneva in December 1996. The treaty also requires member countries to provide protection for "compilations of data or other material, in any form, which by reason of the selection or arrangement of their contents constitute intellectual creations." (16) Like TRIPS, it also explicitly provides that such protection "does not extend to the data or the material itself ... in the compilation." (17)

    In the above provisions, each treaty contains virtually identical language laying down originality and creativity requirements for a database to be eligible to obtain copyright protection--the database (collection/complication) must constitute an "intellectual creation." In other words, the protection is limited to the database with originality, and all unoriginal databases will not be protected under these treaties. Moreover, such protection only applies to protecting the format of database (structure and integrity of database), and does "not extend to the data or the material itself' (the content of database). Consequently, many factual databases might not be able to get effective protection. This is obviously not effective in protecting the incentives of database producers for continuous investment in the factual databases. (More details about the consequence will be discussed later).

    2.2. A Quick Review of U.S. Copyright Law on Database Protection

    At the domestic level, copyright has been the customary form of database protection in the United States. (18) Over the course of the nineteenth century, two theories developed to protect compilations under copyright. (19) One was the common law "sweat of the brow" doctrine. (20) Under this view, the courts treated the database maker's effort and investment as the basis for copyright protection. (21) Once a compilation was determined to be copyrightable, the protection not only applied to the format (structure and integrity) of databases, but also applied to the contents inside these databases. (22) The other theory was the "originality" doctrine, which was generated in the late nineteenth century (23) and was codified in the Copyright Act of 1976 ("1976 Act"). (24) The 1976 Act explicitly provides that, in order to receive copyright protection, a compilation must be "an original work of authorship." (25) As with the international treaties introduced above, protection under the 1976 Act only applies to the format of the database, and does not extend to the contents contained in the databases. (26) Although the originality doctrine was codified by the 1976 Act, in practice, courts remained divided in their treatment of compilations when applying the statute to the Feist case in 1991. (27) In other words, two approaches co-existed during this period. (28)

    In 1991, in Feist Publications v. Rural Telephone Service Co., (29) the Supreme Court formally abolished the "sweat of the brow" doctrine, (30) and held that "creative originality" is the sole basis for protection under U.S. copyright law. (31) Like the 1976 Act, the Court reemphasized the "fact/expression" dichotomy of copyright law. (32) The copyright protection under Feist only applied to the author's original components in the selection and arrangement of databases (format of databases), but does not generally apply to the facts and contents in the databases. (33) Moreover, the Court pointed out that the requisite level of creative originality for a copyrightable compilation is very "low" (34) and the protection to a factual compilation is very "thin." (35)

    Indeed, many cases subsequent to Feist demonstrated that although the Court found most databases copyrightable, (36) wholesale copying of information from these databases was often held not to constitute an infringement of copyright. (37) For example, in Key Publications, Inc. v. Chinatown Today Publishing Enterprises Inc., (38) the Court held that the plaintiffs, Key Publications, Inc., business directory was sufficiently creative to obtain copyright protection, (39) but ultimately concluded that the defendant Chinatown Today Publishing Enterprises, Inc. had not infringed the copyright of the plaintiff, (40) because the Court found that the defendant did not reproduce the original selection and arrangement of the plaintiffs directory. (41)

    2.3. Development of Technology & Needs for Sui Generis Database Protection

    The Court's decisions in Feist have arguably provided clear guidelines for lower courts to both examine the creative originality of compilations and to determine the scope of protection. In particular, it makes "creative originality" the sole basis for approving copyright protection to databases. However, such approach was developed with the "printed databases" focus, and may not be suitable for protecting "electronic databases." The article will next examine the impacts of technology developments on the database industries and database protection legislation. It will try to explore the limits of current U.S. copyright law on protecting electronic databases. This article will also explore why it is necessary to develop a sui generic database legislation.

    2.3.1. Growth of Electric Database Industries, & Shift of Database Source

    After Feist, with the development of digital technology, the electronic database industry has also...

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