U.S. Legal Protection for Databases
Presentation at the
Technology Licensing Forum
September 25, 1996
FENWICK & WEST LLP
Two Palo Alto Square, Suite 800
Palo Alto, CA 94306(650) 494-0600FAX (650) 494-0674
Status of U.S. Copyright Protection for Databases
- Feist Decision
- Practical Implications of Feist
- Examples of the Feist Decision as Precedent
- Pro CD v. Zeidenberg Decision
Overview of Database Investment and Intellectual Property Antipiracy Act of 1996
U.S. LEGAL PROTECTION FOR DATABASES
PURPOSE OF THIS PAPER:
To examine U.S. legal protection of databases, particularly with emphasis on applicability to the Web and interactive media.
Status of U.S. Copyright Protection for Databases
Feist Decision (Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991))
"A 'compilation' is 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." 17 U.S.C.§ 101. The terms selected, coordinated and arranged are alternatives. Therefore, the work is protected if any one of these elements are original. Such protection extends only to the original elements of the compilation and not to the work as a whole.
Factual Background [back]
Rural Telephone Service Company is a telephone company that serves part of Kansas. A state regulation mandated that Rural publish an annual telephone directory. Rural alphabetically listed the names of its subscribers in its white pages. Rural also tabulated the towns and the telephone numbers of those subscribers. Feist published "area-wide telephone directories" that listed telephone numbers in broader geographic areas, "reducing the need to call directory assistance or consult multiple directories." Feist copied most of Rural's directory after Rural refused to license its white page directory.
Prior to this 1991 decision, some courts found copyright protection if the compiler labored over his work, whether or not the work involved originality. This is known as the "sweat of the brow" position. Conversely, other courts followed the "creative selection" theory, which required an author to show at least a minimum amount of originally for copyright protection. The Feist Court chose a originality requirement for compilations.
The Court held that Feist had not infringed Rural's copyright because Rural's alphabetized white page directory was not original and, therefore, was not copyrightable. The Court determined that "original" means only that the work was independently created by the author and that it possesses at least some minimal degree of originality. The Court noted that Rural's white pages were prepared by "simply tak[ing] the data provided by its subscribers and list[ing] it alphabetically by surname. The end product is a garden-variety white pages directory, devoid of even the slightest trace of creativity." "There is nothing remotely creative about arranging names alphabetically in a white pages directory. It is an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course. It is not only unoriginal, it is practically inevitable." "[T]he selection and arrangement of facts cannot be so mechanical or routine as to require no creativity whatsoever."
In summary, Feist held:
Practical Implications of Feist[back]
- 1. Fewer compilations/data bases are protected by copyright because of the originality requirement. Industry norms, practices and functionality may be considered in determining whether a work has any originality.
An original work of authorship in a compilation means there is (1) an independent collecting and assembling of particular preexisting material or data (2) from which a selection, coordination, or arrangement is made (3) in such a way that the resulting work as a whole has some minimal degree of originality. The key to the statutory definition is the second requirement, the ways in which the compiler's selection, coordination, or arrangement may satisfy the standard of originality.
- 2. Even if a compilation is protected under copyright law, such protection is generally "thin." Infringement is less likely to be found in another work because the original element must be copied. Just as the standard is low for originality in the plaintiff's authorship, "if someone else displays the requisite creativity by making a selection that differs in more than a trivial degree, [the plaintiff] cannot complain."
Examples of the Feist Decision as Precedent[back]
No Originality Found[back]
Victor Lalli Enters., Inc. v. Big Red Apple,. Inc., 936 F.2d 671 (2d Cir. 1991).
The court held that a horse-racing chart did not merit copyright protection. The chart of horse racing numbers was arranged according to "purely functional grids that offer no opportunity for variation". The chart listed the days of the month on one axis and the last thirteen months on the other. This arrangement was considered standard to all horse-racing charts and, therefore, failed to meet the minimal originality requirement.
Budish v. Gordon, 784 F. Supp.1320 (N.D. Ohio 1992).
The plaintiff wrote a book about Medicaid which included tables that he created from information derived from a Governor's report. The tables condensed the report into a clearer and more readable format. The defendant admitted he copied the tables, but claimed that, since the information originated from a Governor's report, the tables consisted of public domain facts and were not copyrightable. The court agreed that the facts were not copyrightable but held the plaintiff's arrangement, selection and coordination provided originality to justify copyright protection. The defendant infringed by copying the tables.
Nester's Map & Guide Corp. v. Hagstrom Map Co., 796 F. Supp. 729 (E.D.N.Y. 1992).
This case involved two taxi drivers' guides to New York City which contain mileage rates, public services, restaurants and similar information. The plaintiff alleged infringement of its guide. The court held that most of the information, represented as facts, could be freely copied. The defendant admitted that portions of its guide were taken from the plaintiff's work. The court applied Feist's requirement that infringement occurs only with respect to elements that are original. The selection of the most important and helpful cross streets and assignment of address numbers for the streets was found to be original. Finding this "streets most useful to a taxi driver" portion to meet the originality standard, the court issued an injunction preventing the defendant from copying only that portion of the guide.
As noted, the infringement test also has changed since the Feist decision. Several cases found minimal originality but no infringement where the original elements were not copied. Even courts finding no originality have pointed out that even if there was originality, the "thin" scope of protection would have precluded a finding of infringement.
Bell South Advertising & Publishing Corp. v. Donnelley Infor. Publishing, Inc., 999 F.2d 1436, (11th Cir. 1993), cert. denied, 114 S. Ct. 943 (1994).
The issues were whether a yellow pages directory met the minimal originality requirement and, if so, whether the second directory copied original parts of the first. The court held there was minimal originality in the text, graphics and positioning of the individual advertisements, as well as textual material designed to assist the user. That is, there was originality in the coordination and arrangement. The court also found that the elements of the directory copied, primarily the individual business listings, were not sufficiently original to merit protection. The court found no infringement because the defendant did not copy "text or graphic material from the advertisements, . . . positioning of these advertisements, . . . or textual material."
Key Publications, Inc. v. Chinatown Today Publishing Enters., Inc., 945 F.2d 509 (2d Cir. 1991).
The works in this case were two classified business directories for the Chinese-American community in New York City. Both were similar in format to a typical yellow page directory; however, each utilized headings directed toward the particular audience, for example, "Bean Curd & Bean Sprout Shops." The plaintiff's directory also excluded businesses the compiler did not think would remain open very long. The defendant's directory contained substantially fewer listings and headings than the plaintiffs. The court held the plaintiff's directory was protected by copyright but that the defendant's publication did not infringe.
Other Examples of Selectivity[back]
Selection "implies the exercise of judgment in choosing which facts form a given body of data to include in a compilation." As a general principle, the greater the amount of material from which to select, coordinate, or arrange, the more likely it is that a compilation will be protectible. On the other hand, where less material is available, it is less likely that a compilation , will be protectible, since de minimis selectivity is not likely to be original.
The key factor is the exercise of some editorial judgment in the selection of the data. Where the entire universe of particular data is included, there can be no selection, and absent some original coordination or arrangement, there is no copyright protection. Even where there are a large number of items to choose from, functional, commercial, or legal constraints may limit, or even bar, protectibility.
Examples of selectivity include:
- 4. Ideas Exception
The prohibition on copyright protection for ideas, systems, methods of operation, and the like will deny protection to compilations that represent mere ideas, systems, or methods of formatting unselected data. 17 U.S.C. § 102(b).
ProCD v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996)[back]
- 1. District Court: National directory of residential and business telephone listings not copyrightable on authority of Feist. Shrinkwrap license not enforceable. (908 F. Supp. 649 (W.D. Wisc. 1996)).
- 2. 7th Circuit Court of Appeals: National directory of residential and business telephone listings not copyrightable on authority of Feist but shrinkwrap license enforceable. License protected both the software and the databases/compilations on the CD. Rights created by contract are not preempted by copyright laws because they are not equivalent to any of the exclusive rights of copyright protection.
- 3. Contractual Protection
- a. No preemption under Section 301 of the Copyright Act
- b. ProCD decision supports the electronic form of acceptance. If shrinkwrap is enforceable where there is no opportunity to view terms prior to consummation of the transaction then on-line contracting offer and acceptance works.
Overview of Database Investment and Intellectual Property Antipiracy Act of 1996[back]
Status of Legislation[back]
- Legislation was introduced by Congressman Moorhead on May 23, 1996 and referred to the Judiciary Committee where it remains. No action beyond introduction has occurred.
The Act specifies that a database is protected if it is the result of a substantial investment of human, technical, financial, or other resources in the collection, assembly, verification, organization, or presentation of the database contents and the database is used or reused in commerce.
In a Congressional Record statement, Moorhead said the legislation is in response to court decisions that "have underscored that copyright cannot stop a competitor from lifting massive amounts of factual material from a copyrighted database to use as the basis for its own competing product." In addition, he said, the bill will provide reciprocity for the EU database directive that otherwise will not protect U.S. databases and also responds to developments in technology that allow for easier and cheaper copying through cyberspace.
Section by Section Summary[back]
Short TitleDefinitions 'Commerce' means all commerce that may lawfully be regulated by Congress.
'Database' means a collection, assembly or compilation, in any form or medium now or later known or developed, of works, data or other materials, arranged in a systematic or methodical way.
'Insubstantial part' of a database means any portion of the contents of a database 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.
Databases Subject to the Act
A database is subject to the Act if it is the result of a qualitatively or quantitatively substantial investment of human, technical, financial or other resources in the collection, assembly, verification, organization or presentation of the database contents, and (i) the database is used or reused in commerce; or (ii) the database owner intends to use or reuse the database in commerce.
(1) extracting, using, or reusing all or a substantial part of the contents of a database in a manner that conflicts with the owner's normal exploitation of, or that adversely affects the actual or potential market for, the database;
(2) engaging in the repeated or systematic extraction, use, or reuse of insubstantial parts of the contents in a manner that cumulatively conflicts with the owner's normal exploitation; or
(3) procuring, directing, or committing any such prohibited act.
Exceptions to Prohibited Acts
Allows a lawful user of a database made available to the public or placed in commercial use to extract, use, or reuse insubstantial parts of its contents, subject to specified limitations.
Duration of Prohibitions
(1) a database becomes subject to this Act when the necessary investment has been made to qualify its maker as such, and shall remain subject to this Act for a 25-year period; and
(2) any change of commercial significance to a database shall make the resulting database subject to this Act for its own 25-year term ("rolling right" concept).
Civil Remedies for Violation of Section 4
- Civil Actions
- Temporary and Permanent Injunctions
- Monetary Relief
Criminal Offenses and Penalties for Violation of Section 4
Sets penalties for willfully violating Section 4 for direct or indirect commercial advantage or financial gain, or thereby causing loss or damage to an owner aggregating $10,000 or more in any one-year calendar period.
Relationship to Other Laws
- The remedies against violations hereunder shall be without prejudice to any remedies under any copyright that may subsist in the database, any contents of the database, or the selection, coordination or arrangement of such contents. Such remedies shall not limit, impair, or otherwise affect the existence, scope or duration of protection under any such copyright.
- Nothing in this Act shall restrict the rights of parties freely to enter into licenses or any other contracts with respect to database or their contents.
- Nothing in this Act shall prejudice provisions concerning copyright, rights related to copyright or any other rights or obligations in the database or its contents, including laws in respect of patent, trademark, design rights, antitrust or competition, trade secrets, data protection and privacy, access to public documents, and the law of contract.
Circumvention of Database Protection Systems
Prohibits circumventing, without the authority of the owner or the law, database protection systems.
Integrity of Database Management Information
(1) providing, or publicly distributing or importing for public distribution, false database management information; and
(2) removing or altering database management information without authority of the owner or the law.
Civil Remedies for Violations of Sections 10 or 11
Criminal Offenses and Penalties for Violation of Section 11
Limitations on Actions
Bars any action unless commenced within three years after the owner knew or should have known of the claim.