Background Edit

The international protection for databases and other collections of information raise legal issues relating to standards, scope, conditions, and duration of protection. The threshold issue is the standard of creativity required to justify protection under existing copyright laws and copyright treaties.

The Berne Convention for the Protection of Literary and Artistic Works ("Berne Convention")[1] is the preeminent treaty in the field of copyright protection. Countries bound by the 1948 Brussels text (and subsequent versions) of the Berne Convention are obligated to protect "[c]ollections of literary and artistic works such as encyclopedias and anthologies which, by reason of the selection or arrangement of their contents, constitute intellectual creations."[2]

The references to "literary and artistic works" and "intellectual creations" mean that the Berne Convention may protect certain creative databases but presumably does not extend to protection for noncreative databases. Moreover, the specific reference to "collections of literary and artistic works" may call into question copyright protection of databases that consist of noncopyrightable data elements. The specific examples of protected collections — encyclopedias and anthologies, which consist of individual copyrightable contributions — confirm the doubt about protection for collections of noncopyrightable material. In fact, however, the most valuable databases frequently comprise noncopyrightable data elements that are selected, arranged, or organized in a way that creates economic value.

As a consequence of the perceived deficiencies of the Berne Convention in the protection of databases, several avenues for additional protection for databases have been explored. Some of these efforts have led to new international agreements that clarify protection for databases under copyright laws. These efforts to clarify Berne Convention copyright standards or fashion new international protection for databases include:

  1. The creation of minimum standards of intellectual property protection under the auspices of the 1994 General Agreement on Tariffs and Trade (GATT) (which became the World Trade Organization).
  2. The creation of a new copyright treaty — the WIPO Copyright Treaty — which has links with the Berne Convention and essentially serves to update the Berne Convention with respect to the use of copyrighted works on the Internet and in digital, electronic environments in general, and
  3. The issuance of a Directive on Databases by the European Union, which both harmonizes copyright protection for databases within the EU and creates a new sui generis form of protection against the unlawful extraction or re-utilization of the contents of databases.

Database protection under the TRIPS agreement Edit

The first success in clarification of international database protection came in the form of intellectual property standards forged by the 1994 Uruguay Round Agreements under the GATT.

The issue of intellectual property standards was placed on the agenda of the Uruguay Round at the insistence of the United States. Prior to the Uruguay Round negotiations, the GATT, which deals with obligations related to trade in goods and to some extent trade in services, had not encompassed obligations related to intellectual property, which rights are intangible in nature.[3] The inclusion of IP standards on the GATT agenda recognizes the increased importance of intellectual property protection to the well-being of any modern economy in this digital, information age world. Effective and adequate IP standards translate into profits and growth for national and global enterprises.

Ultimately, the Ministerial Conference of the Uruguay Round reached an agreement after more than seven years of negotiation on minimum intellectual property standards and on enforcement of those standards. The Agreement, known as the TRIPS Agreement, was included in the 1994 Uruguay Round Agreements accepted by the governments representatives at Marrakesh on April 15, 1994.[4]

The 1994 GATT Agreements were submitted to the U.S. Congress, along with proposed implementing legislation, for acceptance or rejection of the entire package, under the fast-track trade negotiations procedure. The Congress agreed to the 1994 GATT Agreements, including TRIPS Agreement, and enacted implementing legislation on December 8, 1994, known as the Uruguay Round Agreements Act of 1994 (URAA).[5]

The TRIPS Agreement established minimum standards of protection in virtually all fields of intellectual property. With respect to databases, the TRIPS Agreement explicitly requires that "compilations of data or other material" must be protected against unauthorized copying if the selection or arrangement of the data or other material constitutes an "intellectual creation."[6]

The reference to "compilations of data or other material" improves the level of protection for databases under the TRIPS Agreement in comparison with the existing Berne Convention. The literal text of the Berne Convention protects only compilations of "works" — that is, material that is independently copyrightable, unlike data elements, which are frequently not independently copyrightable. This is a critical clarification of the obligation to protect databases since a high percentage of databases are not compilations of "works." If the obligation to protect databases extends only to those databases that constitute compilations of works, the protection accorded databases is seriously eroded from the viewpoint of producers and owners of databases.[7]

Copyright protection for compilations under the TRIPS Agreement does not extend to the data or other material itself,[8] nor does protection extend to "ideas, procedures, methods of operation or mathematical concepts as such."[9]

WIPO Copyright Treaty Edit

The WIPO Copyright Treaty originated in a WIPO work program to update the Berne Convention. This work program, which began in 1989, was known as the "Berne Protocol" process, since it was conceived as a mechanism to modernize the Berne Convention through a "protocol" without engaging in a full revision of the Convention.[10] The original purposes were to make explicit in the Berne Convention that computer programs and databases must be protected as copyrightable subject matter, and generally to update the Convention with respect to the use of copyrighted works in digital, electronic environments.

Ultimately, a decision was taken in 1992 to split the "Berne Protocol" process into two phases: an update of copyright protection, and preparation of a possible "new instrument" (i.e., treaty) concerning protection of the rights of performers and producers of phonograms (i.e., sound recordings). This dual copyright and "new instrument" work program culminated in the adoption of two new intellectual property treaties at a WIPO Diplomatic Conference in Geneva, Switzerland in December 1996.

The WIPO Copyright Treaty is both a special copyright agreement updating the Berne Convention for those Berne members who ratify or accede to the agreement[11] and a separate treaty, which must be ratified or acceded to in accordance with the treaty approval procedures of the respective countries. The Senate gave its assent to United States ratification of the WIPO Copyright Treaty on October 21, 1998. Congress passed the Digital Millennium Copyright Act of 1998 ("DMCA") to implement the changes in U.S. copyright law required by ratification of the WIPO Copyright Treaty and for other purposes, including clarification of U.S. copyright law in digital, electronic environments.

With respect to database protection, Article 5 of the WIPO Copyright Treaty essentially tracks the language of the TRIPS Agreement concerning creative databases. This new intellectual property treaty establishes an obligation to protect compilations of data that result from the application of intellectual effort. Copyright protection does not extend to the content itself unless the content is independently a work of the intellect, in which case the content enjoys a separate copyright.

The 1996 Geneva Diplomatic Conference also adopted an "agreed statement," whose purpose is to encourage consistent interpretation of the database protection obligations under the Berne Convention, the TRIPS Agreement, and the WIPO Copyright Treaty. The statement reads as follows:

The scope of protection for compilations of data (databases) under Article 5 of this Treaty, read with Article 2, is consistent with Article 2 of the Berne Convention and on a par with the relevant provisions of the TRIPS Agreement.

EU Database Directive Edit

As part of its program for harmonizing the laws of the members of the European Union, the European Community began a program of review, discussion, and proposals relating to database protection by issuing a Green Paper in 1988 on "Copyright and the Challenge of Technology."[12] After examining database issues in more detail in a 1991 "Follow-up to the Green Paper,"[13] the European Commission proposed issuance of a specific EU Database Directive in 1992.

The purpose of the Directive was both to harmonize the protection of databases within the European Union and also to create an additional, sui generis form of protection to exceed the protection available under copyright laws. The effect of the Directive was to narrow slightly the protection available for the structure of the database under the copyright laws of certain countries (especially, the United Kingdom and Ireland, and to a lesser degree, the Netherlands) and at the same time to create new protection for the rights to extract and re-utilize the contents of the database.

Harmonization of copyright protection for databases was identified as a major barrier to full development of an information market within the European Union. The United Kingdom and Ireland extended copyright protection to databases in general under the "sweat of the brow" or industrious effort standard. The Netherlands apparently applied a similar standard to directories. The remaining members of the EU apparently applied a higher standard of originality that required an "intellectual creation" to justify copyright protection. At least one EU member — Germany — may have been inclined to apply an even higher standard of originality than that ultimately adopted under the EU Database Directive.

The European Commission's review of database protection also led to the conclusion that copyright law alone was not an adequate vehicle for database protection since protection frequently does not extend to the contents of the database (where the contents consist of uncopyrightable data elements). Moreover, the amount of copying of the database's structural elements (selection or arrangement of the data elements) required to prove copyright infringement might be too burdensome under ordinary copyright principles.

The difficulty of proof seems compounded in the case of computerized databases. "Selection" may be arguably lacking since automated databases tend to be comprehensive in scope. "Arrangement" may not be a copyrightable feature of computerized databases since any arrangement or coordination is provided by search engine software systems, which are typically supplied by outside vendors to the database producer.[14]

Unfair competition law might have filled in some of the gaps in copyright protection for databases, but the Commission opted to propose a sui generis right to extract and re-utilize the elements of a database.

The final EU Database Directive was issued by the European Union in March 1996, with a required implementation date of January 1, 1998.[15]

References Edit

  1. The Berne Convention, which was first developed in 1886, has been revised several times. The most recent revision is the Paris Act of 1971. Different countries may be bound by earlier versions of the Berne Convention. The United States, which has been a member only since March 1, 1989, is bound by the 1971 Paris Act.
  2. Article 2(5) of the Berne Convention.
  3. Efforts to include trademark protection standards in the earlier Tokyo Round of the GATT were not successful. By the time of the Uruguay Round, the United States, with the support of the European Union, was able to make the case for inclusion of intellectual property standards because intellectual property has become a major part of modern, highly developed economies. Computer software and databases comprise essential components of modern economic systems.
  4. The TRIPS Agreement constitutes Annex 1C of the Marrakesh Agreement, which also established the World Trade Organization (WTO). The basic Agreements entered into force on January 1, 1995, but the TRIPS Agreement generally entered into force one year later on January 1, 1996. All members of the WTO are bound by the obligations of the TRIPS Agreement. The Agreement contains special exceptions for developing countries and for the former socialists countries, however, including the privilege of delayed implementation.
  5. Pub. L. No. 103-465, 108 Stat. 4809, Act of Dec. 8, 1994. The United States did not have to make any changes in its copyright law concerning the protection of databases, however, since the law was already consistent with the TRIPS database obligations.
  6. The full sentence of primary obligation of the TRIPS Agreement concerning databases reads: "Compilations of data or other material, which 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." Article 10(2) of the TRIPS Agreement.
  7. Some experts may argue that the existing Berne Convention can be interpreted to protect against copying of databases consisting of uncopyrightable data elements, notwithstanding the literal text of Article 2(b) of the Berne Convention. A 1982 Committee of Governmental Experts did conclude at an international meeting convened jointly by WIPO and UNESCO that "collections and compilations of information" could qualify for copyright protection. Second Comm. of Gov'tal Experts on Copyright Problems Arising from the Use of Computers for Access to or the Creation of Works (June 7-11, 1982), reprinted in 18 Copyright 239, 245 (1982). For those countries bound by the TRIPS Agreement, any doubt about the obligation to protect original, creative compilations of data has been settled.
  8. TRIPS Agreement, Art. 10(2).
  9. Id., art. 9(2).
  10. Implicit in the idea of a protocol was the likelihood that the Convention would be upgraded for some countries and not for others. While that option theoretically exists when the Convention is revised, the protocol device might have made it more feasible for a smaller number of countries to agree on the upgrade of the Convention. The Berne Convention was last revised at Paris in 1971.
  11. Article 20 of the Berne Convention permits such special agreements involving Berne members, but only if the agreement improves the level of copyright protection for authors.
  12. Doc. COM (88) 172 final, 7 June 1988.
  13. Doc. COM (90) 584 final, 17 Jan. 1991.
  14. Statement of Michael Kirk, Exec. Dir., American Intel. Prop. Law Ass'n, Hearing on H.R. 2652, the Collections of Information Antipiracy Act and H.R. 2696, the Vessel Hull Design Protection Act Before the House Subcomm. on Courts and Intel. Prop., 105th Cong,, 1st Sess. (Oct. 23, 1997) (unpublished statement, at 3).
  15. Directive 96/9/EC of the European Parliament and of the Council on the Legal Protection of Databases," adopted 11 Mar. 1996.

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