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Database Protection: When is it Merely "Sweat of the Brow" and When is Protection Available?by Bruce D. Sunstein1 Intellectual Property Conference '98 © 1998 Bruce D. Sunstein I. Feist and its predecessors In 1887, the publisher of The List - which provided New Yorkers with a selection of 6,000 names of New York City's most fashionable people - was justifiably concerned when a competing publisher charged into the market with a rival publication, The Social Register. To speed entry into the market, the publisher of The Social Register helped himself to entries from The List. Of 3500 entries in The Social Register, more than 2800 appeared in The List.2 In addition, 39 errors in The List, such as misprints, erroneous addresses, as well as names of non-existent and deceased persons, were reproduced in The Social Register.3 Fortunately for the publisher of The List, there was a legal remedy for this activity under the copyright law of the day. The federal court granted an injunction.4 The court said this:
On these facts, how would a court rule today? I submit that although the language of a court opinion announcing the ruling might not be so expansive today, the ruling itself would not be different.6 Yet this language was quoted and followed in a case, Jeweler's Circular Pub. Co. v. Keystone Pub. Co.7 that was said to be overruled on this point by the Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co,, Inc., 499 U.S. 340, 111 S.Ct. 1282, 113 L.E.2d 358 (1991). What the Court sought to do in Feist was to preserve the realm of facts - as opposed to the realm of expression, which is protected by copyright - as a domain that is open to the public.8 The Rural Telephone Company published a directory that included both white pages and yellow pages listings for its individual and business subscribers respectively; unsurprisingly, the white pages listings were arranged alphabetically, and included the name, town, and telephone number of each telephone subscriber.9 The yellow pages included advertisements, which provided a revenue source to the phone company. Feist Publications, Inc. published a rival directory that included white pages and yellow pages listings and covered a larger geographical area than served by the Rural Telephone Company; since Feist was only a publisher and not a phone company, it typically paid money to phone companies for the subscriber information to be included in Feist's white pages.10 When the Rural Telephone Company refused to give Feist permission to include Rural's white pages data in Feist's directory, Feist used the data anyway.11 Rural's directory had 7,700 names; Feist culled from this list those names that fell out of the geographical area covered by Feist's directory, leaving 4,935 listings.12 Feist's employees verified Rural's data and sought additional information, with the result that a typical Feist listing included the street address, whereas most of Rural's listings lacked this information.13 Feist's directory, covering a larger area, had 46,878 listings in comparison to Rural's 7700; 1309 of Feist's listings were identical to Rural's listings, and four of these listings were fictitious listings that Rural used to detect copying.14 Rural sued Feist for copyright infringement, and the trial court found Feist liable.15 The Feist Court reversed, holding that the copyright law does not grant protection against copying "to a collection of facts that are selected, coordinated, and arranged in a way that utterly lacks originality."16 The requirement of originality, said the Court, is rooted in Article I, § 8, cl. 8 of the Constitution, which grants Congress the power to enact the copyright law.17 Furthermore, "no one may claim originality as to facts", which are in the public domain.18 Factual compilations, are protectable under the copyright law, but only to the extent that the selection and arrangement in the compilation are original, and the facts themselves in the compilation are unprotectable.19 The Feist Court took pains to criticize cases like Jeweler's Circular Publishing Co. v. Keystone Publishing Co., 281 F. 83 (2d Cir. 1922), which includes this statement:
The Court expressly disapproved this "sweat of the brow" approach with an analysis covering many pages.21 The Court noted that its holding in the hot news case, International News Service v. Associated Press, 248 U.S. 215, 39 S.Ct. 68, 63 L.Ed. 211 (1918), denied protection under the 1909 Copyright Act to the news gathered by a wire service.22 It pointed to language of the Copyright Act of 1976, the current statute23, that underscores the requirement of originality. Under section 102(a), the statute grants protection only to "original works of authorship".24 Additionally, the term "compilation" is defined in section 101 as "a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship."25 So the selection or arrangement in a compilation must be original in order to be protectable under the copyright law. In this regard, the Court stated that
As to the selection in the Rural telephone directory, Rural simply took the data provided by its subscribers and listed it alphabetically; moreover Rural was required by its franchise to publish the names and telephone numbers of its subscribers, and so the selection was dictated by state law.27 The alphabetical coordination and arrangement are also unoriginal.28 Thus Feist was free to publish its directory utilizing information obtained from Rural's directory. II. What is left of protection in databases under present law after Feist?
In what position is the compiler of facts after the Feist case? A typical telephone directory of white pages listing in alphabetical order the name, address, and telephone number of each subscriber will not be protected under the copyright law. Feist holds precisely this. What about yellow pages? Key Publications, Inc. v. Chinatown Today Publishing Enterprises, Inc., 945 F. 2d 509 (2d Cir. 1991) held that a yellow pages directory exhibited sufficient originality to warrant protection under the copyright law, where the author testified that she excluded certain businesses from the directory. The court noted that the author of the yellow pages utilized various categories for businesses, and exercised creativity "in deciding which categories to include and under what name," even though some of the categories had "been used in other classified directories."29 Nevertheless, it was found that the defendant's publication did not infringe.30 On the other hand, directories other than white pages also face barriers to copyright protection. In Warren Publishing, Inc. v. Microdos Data Corp., 115 F.3d 1509 (11th Cir. 1997), it was conceded that the directory, called the Television & Cable Factbook, was entitled to copyright protection.31 Nevertheless, the question was whether the material copied by defendant from the directory involved the original selection, coordination, or arrangement of the copyright holder. If the material copied did not satisfy this condition, then there would be no copyright infringement, since copying of factual material of a compilation is not infringement.32 A divided court found that nothing original to the copyright claimant was copied.33 It is in this context that the Feist Court opined that "the copyright in a factual compilation is thin."34 The copyright will protect the original selection and arrangement of the compiler but it will not protect the facts and ideas that have been compiled.35 Another case illustrating this dilemma is Kregos v. Associated Press, 3 F.3d 656 (2d Cir. 1993). Kregos provided a number of newspapers with a selection of statistics on baseball pitchers arranged into what are called "pitching forms."36 Thereafter, the Associated Press came out with a form, after consulting various other forms including the Kregos form.37 The court had held, in a prior appeal, that the Kregos form exhibited sufficient originality as to be entitled to copyright protection. Kregos v. Associated Press, 937 F.2d 700 (2d Cir. 1991). The first version of the Associate Press form was "nearly identical" to the Kregos form38, but it was held that the copyright infringement claim of Kregos as to this form was barred by the statute of limitations.39 The copyright infringement claim as to a later version of the Associated Press form was not time barred.40 However, the later version of the Associated Press form differed considerably from the Kregos form. Four of the 10 statistics on the revised Associated Press form were different from those on the Kregos form.41 Moreover, "much of the similarity between the AP and the Kregos forms is necessitated because there are a limited number of statistics generally considered outcome-predicitive by those familiar with the sport."42 Consequently the forms were found not to be substantially similar and no copyright liability was present.43
If copyright will not protect an unoriginal selection or arrangement of factual information, like the telephone white pages, is there another way to get similar protection? The case of ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996) paved one route to protection. In this case, ProCD published on CD-ROM, under the SelectPhone trademark, a compilation of information from more than 3,000 telephone directories.44 The court assumed that as a result of Feist, the compilation was not protectable by copyright.45 The SelectPhone CD-ROMs are packaged with a license, which is printed in the manual and which appears on a user's screen every time the software runs, limiting use of the program and listings to non-commercial purposes.46 Zeidenberg bought a SelectPhone package, and ignoring the license, made the content available on the World Wide Web at a price lower than charged by ProCD.47 The ProCD court found that the license was an enforceable contract.48 While that holding is itself of interest, it is more interesting to note that in order to reach this result, the court also found that the enforcement of contract rights in the license was not preempted by section 301(a)49 of the copyright law.50 The question of preemption also arose in another recent case, National Basketball Ass'n v. Motorola, Inc., 105 F.3d 841 (2d Cir. 1997). Motorola sold a handheld pager that displays current information of professional basketball games in progress. The National Basketball Association ("NBA") had obtained an injunction, against Motorola from transmitting this information over its pagers, on the basis of the hot news case, International News Service v. Associated Press, 248 U.S. 215, 39 S.Ct. 68, 63 L.Ed. 211 (1918).51 It will be recalled that the International News Service case was cited by Feist for the proposition that copyright law does not protect against copying facts.52 Indeed, agreeing with the trial court, the Second Circuit held that, as a result of Feist, Motorola did not infringe NBA's copyright in broadcasts of the basketball games, because Motorola reproduced only facts from the broadcasts.53 Despite the absence of protection under copyright law against Motorola's activity, the trial court had held that the current basketball game information could be protected under New York state law cases following the holding of the International News Service case.54 In other words, the current basketball game information constituted hot news that could be protected from misappropriation in the same manner as hot news over a wire service was protected from misappropriation by rival wire service in the International News Service case. The Second Circuit drew the line, however, against an expansive reading of these misappropriation cases, finding that federal copyright law preempts all but a narrowly drawn exception for hot news.55 The elements that are necessary to establish a hot news claim that is not preempted are "(i) the plaintiff generates or collects information at some cost or expense ...; (ii) the value of the information is highly time-sensitive ...; (iii) the defendant's use of the information constitutes free-riding on the plaintiff's costly efforts to generate or collect it ...; (iv) the defendant's use of the information is in direct competition with a product or service offered by the plaintiff ...; (v) the ability of other parties to free-ride on the efforts of the plaintiff would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened ...."56 There is no preemption, the court held, because several elements are present in this type of claim that are not present in a copyright claim, namely "(i) the time-sensitive value of factual information, (ii) the free-riding by a defendant, and (iii) the threat to the very existence of the product or service provided by the plaintiff."57 The Second Circuit found no evidence of free-riding by Motorola and no evidence of a competitive effect on the NBA's business of producing basketball games and licensing broadcasts of those games.58 As a result the injunction was vacated. In the course of its preemption analysis, the Second Circuit had the occasion to mention that other preemption case, ProCD v. Zeidenberg, discussed at the beginning of this section.59 An issue in the NBA v. Motorola case was the analysis by the trial court of the preemption issue in such a way that it was "possible for a plaintiff to assert claims both for infringement of its copyright in a broadcast [of the basketball game] and misappropriation of its rights in the underlying event."60 The Second Circuit concluded that the preemption analysis could not be atomized in this fashion, and it cited the preemption analysis of the Seventh Circuit in ProCD v. Zeidenberg with approval.61 In ProCD v. Zeidenberg, the Seventh Circuit had found that the preemption analysis for the software program used in SelectPhone should likewise apply for the telephone listing data. The result of the Seventh Circuit's analysis was that the contract claims based on breach of the license were different in nature from the copyright claims. Citing, among other cases, Aronson v. Quick Point Pencil Co., 440 U.S. 257, 99 S.Ct. 1096, 59 L.Ed.2d 296 (1979) for the proposition "that promises to pay for intellectual property may be enforced even though federal law (in Aronson, the patent law) offers no protection against third-party uses of that property"62, the court found no preemption by the copyright law of the breach of contract claims. As in Aronson, the court noted, enforcement of the contract would "not withdraw any information from the public domain. Everyone remains free to copy and disseminate all 3,000 telephone books that have been incorporated into ProCD's database. Anyone can add SIC codes and zip codes."63 This case, criticized in Nimmer on Copyright64, in fact exhibits a sophisticated approach to thorny questions. Given the widespread nature of the issues it tackles, it is certain to remain III. The legislative response
We have seen from the above discussion that under Feist and in fact under predecessor and succeeding cases, copyright will protect a compiler's original selection and organization of factual information, but copyright law will not protect the factual information itself that has been gathered by a compiler, nor will it protect an unoriginal selection or organization of factual information. Should there be something to protect against misappropriation of the compiled factual information itself? - ProCD v. Zeidenberg offers one possible mechanism where a license agreement can be implemented. On the other hand, legislative solutions have also been advanced. By far, the most developed approach has taken place in the European Union. On March 11, 1996, following a number of years of activity, the European Parliament and Council approved Directive 96/9/EC concerning the legal protection of databases.65 Despite limitations in prior versions, the Directive as adopted "concerns the legal protection of databases in any form."66 The E.U. Directive includes a provision on copyright protection of databases that conforms closely to Feist: "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."67 Moreover, "[t]he copyright protection of databases provided for by this Directive shall not extend to their contents and shall be without prejudice to any rights subsisting in those contents themselves."68 Copyright protection of databases is thus available under the Directive under terms that are similar to U.S. law. The Directive also provides a form of sui generis protection69 to database owners that is independent of the availability of copyright protection for either the database or the contents of the database.70 A database is entitled to protection if it can be shown that there has been a substantial investment in obtaining, verification or presentation of the contents.71 The protection granted to the database owner is the right "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."72 In this fashion, a competitor would be precluded from wholesale copying of a protected database. Exceptions may be provided for extraction for private purposes from a non-electronic database, for non-commercial teaching or scientific research, for public security or an administrative or judicial procedure.73 The sui generis protection lasts for a period of 15 years after the database is first made publically available.74 In an instance wherein the contents of the database have substantially changed (including as a result of the accumulation of successive modifications) with result that the database is considered to be a substantial new investment, the resulting database will qualify for its own 15-year term.75 The Directive requires members of the European Union to have laws in effect to implement its provisions before January 1, 1998.76 Although the Directive is not self-executing, requiring the enactment of legislation in each member country, the principle of "interpretation in conformity with community law" requires national legislation and particularly that implementing a Directive to be interpreted in accordance with Secondary Community Laws.77 Moreover under the Francovich case, a party having a claim that is precluded on account of the failure of a member state to enact legislation implementing a Directive may recover damages from the member state, a factor providing motivation to the member state to implement the Directive.78 The E.U. Directive on databases is obviously important to (among other groups) U.S. owners of databases that are licensed for use in Europe. A reciprocity provision in the Directive precludes granting owners from the U.S. (or any other third country) any protection of databases in Europe until and unless European owners have comparable rights in the U.S.79 Such a provision has the clear and intended effect of motivating U.S. database owners having a European presence to seek enactment of legislation granting comparable protection in the U.S.
In response to the E.U. activities, U.S. and E.U. representatives submitted proposals in 1996 to the World Intellectual Property Organization (WIPO) for an international treaty for the protection of databases. A draft treaty80 was prepared by the Chairman of the Committees of Experts of WIPO, with a view to having the draft considered at the December, 1996 WIPO Diplomatic Conference81. However, some opponents in the U.S. argued that the treaty negotiations were being used to bypass normal Congressional debate on the subject. Accordingly, HR 3531 was introduced in May, 1996 by Rep. Moorhead to create a sui generis form of protection for databases analogous to the E.U. protection.82 No hearings were held on this bill, and the draft WIPO treaty itself was not discussed in substance at the December, 1996 WIPO Diplomatic Conference.83
On October 9, 1997, Rep. Coble introduced HR 2652, another bill designed to provide sui generis protection of databases.84 Following hearings, the bill was approved on March 24, 1998 by the House Judiciary Committee in an amended form, and passed by the House on May 19, 1998; the May 19, 1998 version is reproduced in the Appendix.85 The bill would add a new chapter 12 to title 17 of the United States Code (which contains U.S. copyright law) entitled "Misappropriation of Collections of Information". The actual protection granted by the bill is quite similar to that of the E.U. Directive. Section 1202 provides to the database owner protection against "[a]ny person who extracts, or uses in commerce, 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". Civil and criminal liabilities are established under sections 1206 and 1207 respectively. The duration of protection is effectively established at 15 years by the wording of section 1208(c):
Where a database has been updated this statute of limitations provision has the effect of giving protection for a period of 15 years from the update to the portion of the database that has been updated, but the term of protection of the unmodified portion of the database lasts only 15 years from its inception. A series of exceptions to liability are provided in section 1203, including for independent gathering of information, for verification, for nonprofit, educational, scientific, or research purposes, and for news reporting. Under section 1204, government databases are excluded from protection. Copyright protection is unaffected, as a result of section 1205(c). The bill passed by the House was received in the Senate on May 20, 1998 and referred to the Senate Judiciary Committee. Its progress bears watching.86 1 This section is ©1998 Bruce D. Sunstein. The author's E-Mail address is: bsunstein@bromsun.com 2 List Publishing Co. v. Keller, 30 F. 772, 774 (C.C.S.D.N.Y. 1887). 3 Id. 4 Id. 5 30 F. 772, 773-774. 6 Compare CCC Info Servs., Inc. v. Maclean Hunter Market Reports, Inc., 44 F.3d 61 (2d Cir. 1994)(the Red Book compendium of projections of used car valuations is the result of predictions and professional judgement of the editors and is protectable under copyright law). 7 281 F. 83, 92 (2d Cir. 1922). 8 499 U.S. 340, 361-363 (white pages listings including name, town, and telephone number of each telephone subscriber, in alphabetical order are not protectable under copyright law because beyond the factual information present in the listings the amount of selection involved was insufficient to meet the minimal Constitutional requirement for originality). 9 499 U.S. at 342. 10 499 U.S. at 342-343. 11 499 U.S. at 343. 12 499 U.S. at 343. 13 499 U.S. at 343-344. 14 499 U.S. at 343-344. 15 499 U.S. at 344. 16 499 U.S. at 363-364. 17 499 U.S. at 346. 18 499 U.S. at 347. 19 499 U.S. at 348-349. 20 499 U.S. at 352-353, quoting Jeweler's Circular Publishing Co., 281 F. at 88, and adding the emphasis. 21 499 U.S. at 353-360. 22 499 U.S. at 353-354. The Court did not point out, however, that this case did grant relief, on a theory of misappropriation. Compare National Basketball Ass'n v. Motorola, Inc., 105 F.3d 841, 845 (2d Cir. 1997), which held a misappropriation claim going beyond the facts of International News to be preempted by section 301 of the Copyright Act of 1976, 17 U.S.C. Sec. 101. 23 17 U.S.C. Sec. 101 et seq. Further references to section numbers are to 17 U.S.C. 24 499 U.S. at 355. 25 499 U.S. at 356. Emphasis added by the Court. 26 499 U.S. at 358-359. 27 499 U.S. at 362-363. 28 499 U.S. at 363. 29 945 F.2d at 514. Compare BellSouth Advertising & Publishing Corp. v. Donnelley Information Publishing, Inc., 999 F.2d 1436, 1446 (11th Cir. 1993)(en banc), holding that the defendant "[b]y copying the name, address, telephone number, business type, and unit of advertisement purchased for each listing" in a yellow pages classified business directory "copied no original element of selection, coordination or arrangement". 30 In this respect the holding is similar to that in BellSouth, supra, n. 29. 31 115 F.3d at 1516. 32 115 F.3d at 1515-1516. 33 115 F.3d at 1517-1521. Compare BellSouth Advertising & Publishing Corp. v. Donnelley Information Publishing, Inc., supra, 999 F.2d 1436, 1446 (11th Cir. 1993). 34 499 U.S. at 349. 35 499 U.S. at 350-351. 36 3 F.3d at 659. 37 3 F.3d at 659-660. 38 3 F.3d at 659. 39 3 F.3d at 661-662. 40 3 F.3d at 662. 41 3 F.3d at 664. 42 3 F.3d at 664. 43 Id. 44 86 F.3d at 1449. 45 Id. 46 86 F.3d at 1450. 47 86 F.3d at 1450. 48 86 F.3d at 1449. 49 17 U.S.C. Sec. 301(a). 50 86 F.3d at 1453-1455. 51 105 F.3d at 843. 52 See text accompanying footnote 21 above. 53 105 F.3d at 847. 54 105 F.3d at 851. 55 105 F.2d at 850-852. 56 105 F.3d at 852-853 (citations omitted). 57 105 F.3d at 853. 58 105 F.3d at 853. 59 National Basketball Ass'n v. Motorola, Inc., 105 F.3d 841 at 849-850. 60 105 F.3d at 848, quoting the trial court. 61 105 F.3d at 849-850, citing ProCD v. Zeidenberg, 86 F.3d at 1453. 62 86 F.3d at 1454. 63 86 F.3d at 1455. 64 Nimmer on Copyright Sec. 3.04[B](3) (1998). 65 39 O.J. L77/20 (March 27, 1996). Reproduced at http://www2.echo.lu/legal/en/ipr/database/database.html 66 Article 1, Sec. 1. 67 Article 3, Sec. 1. 68 Article 3, Sec. 2. 69 Chapter III, Articles 7-11. 70 Article 7, Sec. 4; moreover, pursuant to Article 13 the Directive is without prejudice to other intellectual property rights including copyright. 71 Article 7, Sec. 1. 72 Article 7, Sec. 1. 73 Article 9. 74 Article 10, Sec. 2 (15 years from the first of January of the year following the date when the database was first made available to the public). If not made available to the public, then 15 years from the first of January of the year following the date of completion. 75 Article 10, Sec. 3. 76 Article 16, Sec. 1. 77 F. Marino, "Database Protection in the European Union," appearing at http://www.gelso.unitn.it/card-adm/Review/Students/Marino1.html 78 Marino, supra, citing Cases C-6 and C-9/90, Francovich and Bonifaci, 1991 ECR I-5357. 79 Preamble, recitation (56), taken with Article 11, Sec. 3, providing that agreements extending the right of Article 7 to databases made in third countries shall be concluded by the Council acting on a proposal from the Commission. 80 This document is available on the Copyright Office web site: http://lcweb.loc.gov/copyright/wipo/100dc.html 81 See, also, for example, Patent and Trademark Office, Transcript of Briefing on Request for Comments on the Chairman's Text of the Diplomatic Conference on Certain Copyright and Neighboring Rights Questions, to be held in Geneva from December 2 to 20, 1996. November 12, 1996. Available on the Web site of the Patent and Trademark Office: www.uspto.gov 82 See 52 BNA Patent, Trademark & Copyright Journal 141, 156. 83 See, for example, "Executive Summary of Copyright Office Report on Database Protection," 54 BNA Patent, Trademark & Copyright J. 369, 371 (8/28/97). 84 See 54 BNA Patent, Trademark & Copyright J. 599 (10/23/97). 85 55 BNA Patent, Trademark & Copyright J. 469 (3/26/98). 86 By early 1999, similar legislation (HR 354) had been reintroduced in Congress. The Library of Congress Web site will produce status information concerning this legislation: http://thomas.loc.gov © 2005 Bromberg & Sunstein LLP |
