November 11, 1997

SPICES AND SILKS, OR THE RIGHT TO USE ELECTRONIC COMPILATIONS

by Andy Oram
American Reporter Correspondent

CAMBRIDGE, MASS.—If you bought a CD-ROM of census information and published one fact from it in an academic paper, should you go to jail? What if you copied the whole CD and sold it as your own? Here’s a case that lies somewhere between the extremes: what if you extracted several thousand facts and used them to generate a chart in your paper?

Congress has been wrestling with these kinds of questions recently under pressure from large database providers who want to create a new intellectual property right to prevent copying. Nobody has a problem allowing the extraction of isolated facts. On the other side, most observers agree that the manufacturer should be protected against massive extractions by others to make a competing product. The hard part is drawing the line so as to prevent abuses by either side.

Databases used to be called compilations, and existed only as unwieldy tomes or microfilm on dusty library shelves. Then they moved to sleek, easy-to-copy CDs, and now are turning up on electronic networks where copying is even easier.

Vendors are worried by a 1991 Supreme Court decision (Feist Publications v. Rural Telephone Service Co.) that compilations are not protected from copying unless some creativity went into them. After all, facts cannot be protected from copying—if they could be, research and news reporting would come to a screeching halt. The criterion of creativity was just upheld by a court ruling against Warren Publishing, which accused Microdos Data Corporation of copying its compilation of information on cable TV stations. Yet the Copyright Office points out that it still copyrights most compilations, because they show sufficient originality.

Database vendors are not satisfied by copyright protection. They want an entirely new right—in legal terms, a sui generis right—that would let them sue or even criminally prosecute people who engage in what the companies consider inappropriate copying.

The vendors lost twice in 1996—once in the U.S. Congress and once in the World Intellectual Property Organization—but won once, in a European Union directive to its member countries. Now the vendors are trying again in the U.S. to create the sui generis right, in a bill called the

Major forces promoting the database bill include West Publishing, which prints court citations in a format needed by every lawyer, by Lexis-Nexis, who provide many collections of data including popular periodicals and legal information, and by another group of organizations that formed the Coalition Against Database Piracy. In opposition are arraigned a broad range of scientists, librarians, and others engaged in research, supported by respected legal scholars in the arena of digital technology.

Intellectual property disputes up to now have been settled through civil suits. In introducing H.R. 2652, which includes criminal penalties, representatives are showing a great deal of generosity to database vendors. Now taxpayer funds must be spent on the police and the prosecutors, the judges and the juries, to track down and punish infringements. The same trends can be found in several other bills currently in Congress, such as the No Electronic Theft (NET) Act (passed by the House on November 6) and the WIPO Copyright and Performances and Phonograms Treaty Implementation Act of 1997 (H.R. 2281 and S. 1121).

Worries about the future of research would be much less intense if supporters of the bill restricted their prosecutions to those who release competing products. But they will not do that. Marybeth Peters, Registrar of Copyrights, testifies that “non-competitive uses can seriously harm the market for a database.” The CADP backs this assertion with the claim that “commercial harm can be caused by competitors and non-competitors alike, and one need not have a commercial motive to inflict such market damage.” This naturally leads professors and scientists to worry that they can be arrested just for publishing a report based on facts from a database.

So how much copying can trigger a prosecution? Database bills merely distinguish between “substantial” copying, which would become illegal, and “insubstantial” copying, which be considered OK. Peters again says, “The term ‘substantial’…probably cannot be more precisely defined in a statute.”

So in short, Congress is proposing to create a right that never existed before, with no expiration date, no clear boundaries, and severe penalties for infraction. All of us should be worried. A database can be anything—even a book or a Web site.

H.R. 2652 allows non-profit educational, scientific, and research institutions to use databases freely—but only if they do not “harm the actual or potential market for the product or service,” a broad phrase that brings the threat to them right back. Luckily, a blanket exemption from the law is granted for news reporting. Government agencies cannot use the law to restrict the use of their information, but private companies that offer government information—like West Publishing—can do so.

Opponents of the bill point out that there is no evidence that copying is hurting the database industry—which has sales in the billions of dollars each year—and that many other mechanisms exist for protecting databases, such as copyright law and contracts between vendors and users. Law professors Paula Samuelson and J.H. Reichman suggest that the laws covering unfair competition could be applied.

Interestingly enough, database vendors have plenty to worry about—but not because of copying. With the spread of fast, robust Internet connections, the premise for their industry is eroding. The American Bar Association, for instance, recommended in July 1996 that court citations be offered online, making them much easier to find and research than they are in books produced by West Publishing. As cable modems or other technologies make it convenient to log in and surf the Internet, people will cut out the middlemen and go directly to the sources of information.

The position of database vendors can be compared to companies that set up “shopping malls” on the Web, like Jim Manzi’s Industry.Net. The online malls have failed because people find it easier to go directly to the manufacturers’ or distributors’ Web sites.

Database vendors are still delivering spices and silks on camel, while the age of the Internet offers supersonic transport. But enough data is still produced by private interests in a monopoly environment that we need to protect the public and research community against attempts to lock down information.

This work is licensed under a Creative Commons Attribution 4.0 International License.

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