WIPO World Intellectual Property Organisation Treaty

Leonard Krishtalka kris at FALCON.CC.UKANS.EDU
Fri Nov 1 13:40:23 CST 1996


Following is additional information on the proposed WIPO treaty on the
copyright of data in databases.  There is serious concern about
the impact of this on scientific databases as is evident from the letter
from the US National Academy of Sciences, below.  This position paper is
a quick introduction to concerns about the treaty and has pointers to
other sources of information.

 Krishtalka

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Info-Policy-Notes - A newsletter available from listproc at tap.org
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INFORMATION POLICY NOTES
October 29, 1996

              A Primer On The Proposed WIPO Treaty On
                    Database Extraction Rights
             That Will Be Considered In December 1996*

                        October 29, 1996

                            James Love
                  Consumer Project on Technology
                  http://www.essential.org/cpt
                         email: love at tap.org

   *HTML version at http://www.essential.org/cpt/ip/cpt-dbcom.html
    Ascii version formatted with 11 pt courier with 1 inch margins.
    This is my first take on the treaty, and I would appreciate
    comments and corrections.  This is a very important matter that
    hasn't received much attention. jl


        INTRODUCTION

The World Intellectual Property Organization (WIPO) will
consider in December 1996 a new treaty that would require most
countries (including the United States) to severely curtail the
public's rights to use pubic domain materials stored in "databases."
Some experts say it is the "least balanced and most potentially anti-
competitive intellectual property rights ever created."  The U.S.
Patent and Trademark Office (PTO) is accepting public comments on
this treaty, and a digital copyright treaty that is also troubling.
Comments are due by November 22, 1996, and can be submitted by
electronic mail to: diploconf at uspto.gov.  Copies of the treaty,
commentary, and the PTO federal register notice is available from
http://www.public-domain.org.  This memorandum provides background
information on the treaty and the problems it presents.


BACKGROUND

The database treaty is being pushed by large publishing
companies, in response to the 1991 U.S. Supreme Court decision in
Feist Publications, Inc. v. Rural Telephone Service,
[http://www.law.cornell.edu/supct/classics/499_340v.htm].  In Feist,
the Court rejected a claim of copyright for data from a telephone
directory's white pages, saying that facts cannot be copyrighted, and
that obvious items such as listing names, addresses, and telephone
numbers in alphabetical order, are not sufficiently creative to
qualify for copyright protection.  The decision rejected the "sweat
of the brow" theory of copyright.

Compilations of data or documents, including materials from the
public domain, can receive protection under copyright if the creator
of the compilation can show originality in the selection and
arrangement of the data.  Comprehensive databases, which can be
expensive to create,  confront problems under copyright laws because
(almost by definition) they are not original in terms of the
selection of the materials.

Electronic database publishers have sought to protect their data
through contracts with their customers.  These contracts often place
restrictive conditions on the reuse or redissemination of the data.
See Pam Samuelson, "Legally Speaking: Legal Protection For Database
Contents," 39 Communications of the ACM (Nov. 1996),
http://ksgwww.harvard.edu/iip/datacon.html, for a discussion about
this approach.  In other cases, database vendors permit online
searching, but do not distribute the complete database itself.

Publishers are looking for stronger protection, and are lobbying
hard to obtain a new "sui generis" (this is Latin for "one of a
kind," and is a term used to describe statutory protections which are
not defined under patent, copyright or trademark laws) property right
to protect the contents of databases.  The publishers' first success
was the adoption of a controversial proposal for database extraction
rights in the European Union (EU), and by gaining the support of the
Clinton Administration and the EU to propose a very similar measure
as an amendment to the Berne Copyright Convention.  The Clinton
Administration also supported domestic legislation to implement this
form of data use regulation in the 104th Congress [HR 3531], but
there were no hearings on the measure.

Despite the controversial and far reaching nature of the
database protection proposal and the lack of discussion on its impact
in the United States, the Clinton Administration is asking for quick
approval of the database treaty at a December 1996 meeting in Geneva
hosted by the World Intellectual Property Organization (WIPO).  The
main Administration advocate in support of the publishers' position
is Bruce Lehman, Chair of the Patent and Trademark Office (PTO), a
person widely considered an intellectual property rights zealot.

THE COMPLEXITIES (AND DANGERS) IN CREATING A NEW PROPERTY RIGHT
FOR DATA

While many persons are sympathetic to the general idea of a sui
generis form of protection for databases, there is enormous concern
about the complexities of creating a new property right that has the
potential to create private monopolies on data and documents that
have traditionally been in the public domain. It is often said that
"the devil is in the details," and this is certainly true for the
database protection proposal.  A handful of database vendors have
quietly crafted a proposed treaty and law that creates a nightmare
for researchers and value added publishers.  In discussing the
development of the EU database proposal,  J. H. Reichman and Pamela
Samuelson say that "lobbying pressures converted the final version
into one of the least balanced and most potentially anti-competitive
intellectual property rights ever created."  [Intellectual Property
Rights In Data: An Assault On The Worldwide Public Interest In
Research And Development, forthcoming in Vanderbilt Law Review, 50,
on the Web at http://ksgwww.harvard.edu/iip/reisamda.html].

The database vendors have sought to vastly expand the ability of
database owners to regulate and restrict the public's rights to use
data, without the types of safeguards which exist in copyright law
today.  In this respect, it is important to understand that as a "sui
generis" property right, the database extraction rights are not part
of the of the copyright regime, and the entire doctrine of fair use
of data will not apply to data protected under the proposed database
extraction rights treaty and legislation.  Moreover, under the WIPO
proposal these new  data rights would be retroactive, affecting
countless databases already in existence.

        DIGRESSION ON WEST PUBLISHING AND THE DEFINITION OF A DATABASE

The Feist decision was particularly troubling for West
Publishing, a company that wants to maintain its monopoly on the
citations and corrected text for many court decisions.
[http://essential.org/cpt/legalinfo/legalinfo.html]  West is the only
comprehensive publisher of federal circuit and district court
opinions and state court opinions from all 50 states.  The page
numbers of the West court reporters are the basis for authoritative
citations used by scholars and lawyers.  As a reporter of decisions,
West also makes corrections to the text of court opinions, typically
after working with the judge who wrote the opinion.  West wants to
prevent others from using their page numbers or the corrected text of
court opinions, and it is often in court trying to prevent its would
be competitors from doing so.

West is now involved in at least two law suits over its
assertions of copyright of the page numbers, and one law suit over
the issue of the copyright to the text of the corrected court
opinions.  [See http://www.hyperlaw.com for background on this].
Most copyright experts think that West will lose its court case on
the issue of its page numbers, and West will also be hard pressed to
claim it can copyright the corrections to the text of court opinions
-- particularly for the US federal courts, since U.S. copyright laws
exclude the works of federal employees.

Most people think that the corrected text of court opinions, and
the citations to those opinions, should be in the public domain, and
that the West monopoly has delayed the development of new information
products and services for legal researchers.  No one seriously argues
that the court opinions would not be published without a West
monopoly.  West is among the private sector publishers who have
successfully lobbied the EU and the Clinton Administration to extend
the database protection proposals to print products by defining a
database so broadly that it will include any collection of facts,
data, or documents regardless of the media. If the database
protection proposals are enacted, West will have a firm monopoly on
decades of judicial citations and corrections to judicial opinions.

        THE DATABASE EXTRACTION RIGHTS PROPOSAL

The August 30, 1996 version of the WIPO treaty is available on
the Web at http://www.loc.gov/copyright/wipo6.html, and it is worth
reading since it represents the most radical change in intellectual
property rights in data, ever.

        WHAT IS A DATABASE?  WHAT ISN'T A DATABASE?

The treaty would protect "any database that represents a
substantial investment in the collection, assembly, verification,
organization or presentation of the contents of the database."  This
term should be understood "to include collections of literary,
musical or audiovisual works or any other kind of works, or
collections of other materials such as texts, sounds, images,
numbers, facts, or data representing any other matter or substance"
and "may contain collections of expressions of folklore."   The
"protection shall be granted to databases irrespective of the form or
medium in which they are embodied. Protection extends to databases in
both electronic and non-electronic form" and "embraces all forms or
media now known or later developed. . . Protection shall be granted
to databases regardless of whether they are made available to the
public.  This means that databases that are made generally available
to the public, commercially or otherwise, as well as databases that
remain within the exclusive possession and control of their
developers enjoy protection on the same footing."

In other words, a lot of water will go under this bridge.

        WHAT ARE EXTRACTION AND UTILIZATION RIGHTS?

"The maker of a database eligible for protection under this
Treaty shall have the right to authorize or prohibit the extraction
or utilization of its contents."  What is "extraction"?  Extraction
is defined as, "the permanent or temporary transfer of all or a
substantial part of the contents of a database to another medium by
any means or in any form."  "Extraction . . . is a synonym for
`copying' or `reproduction' . . . by  `any means' or `any form' that
is now known or later developed."

"Utilization" is defined as "making available to the public all
or a substantial part of the contents of a database by any means,
including by the distribution of copies, by renting, or by on-line or
other forms of transmission," including the right to control the use
of the data "at a time individually chosen by each member of the
public."


      WHAT IS A "SUBSTANTIAL PART" OF THE DATABASE?

The treaty sets out tests for determining if an extraction is
"substantial,"  and these tests are both highly anticompetitive, and
extremely broad in scope.

The  "substantiality" of a portion of the database is assessed
against the "value of the database,"  and considers "qualitative and
quantitative aspects," noting that "neither aspect is more important
than the other. . . This assessment may also take into account the
diminution in market value that may result from the use of the
portion, including the added risk that the investment in the database
will not be recoverable. It may even include an assessment of whether
a new product using the portion could serve as a commercial
substitute for the original, diminishing the market for the
original."

Then the treaty adds that a "substantial part" means any portion
of the database, "including an accumulation of small portions . . .
In practice, repeated or systematic use of small portions of the
contents of a database may have the same effect as extraction or
utilization of a large, or substantial, part of the contents of the
database."

In the US implementing legislation, the only types of data use
that would not be regulated would be "insubstantial" parts, "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."  Under this
language, a database owner could say that it might in the future want
to charge for each transmission of a fact or an element of a database
as part of its "normal exploitation" of the database.  With the
Internet and digital cash this claim is likely to be made.  The
public would not have "fair use" rights, since fair use is only
defined in matters involving copyright.

        FOR HOW LONG?  15 YEARS, 25 YEARS, OR FOREVER?

The Treaty would require a minimum term of protection (15 years
in the EU proposal, and 25 in the United States proposal) for the
database.  But this is extended each time the database is revised or
enhanced.  According to the draft treaty, "any substantial change to
the database, evaluated qualitatively or quantitatively, including
any substantial change resulting from the accumulation of successive
additions, deletions, verifications, modifications in organization or
presentation, or other alterations, which constitute a new
substantial investment, shall qualify the database resulting from
such investment for its own term of protection."

The provision on revisions raises the specter that protection
for many databases will be perpetual.  This could indeed be the case
if the original versions of the database are only "licensed" by the
vendor for a limited period of time, so that the only available
versions would be the new ones, which would have a new term of
protection.  [Database vendors write these restricted use licenses
now].

        WHO WILL "OWN"  FACTS?

The supporters of the Treaty note that persons can independently
collect data for a rival database, and the US legislation says
"nothing in this Act shall in any way restrict any person from
independently collecting, assembling or compiling works, data or
materials from sources other than a database subject to this Act."
Unfortunately, this will only be helpful in those cases where there
will be a separate non-protected source for the data or documents.

If the entity which creates the initial data or documents
qualifies for the database extraction right, the data itself will be
monopolized.  The example given above regarding the West Publishing
reporters of court decisions is one example, where the citations
(which are based upon the West page numbers) and the corrections to
opinions (which are only reported by West) cannot be obtained from
any third parties. But the problem is much broader than court
opinions.  All sorts of data will be protected at the source under
the database treaty, and may never enter the public domain.

There are also the practical problems relating to the costs of
independent data collection.  The telephone companies obtain
directory information when you become a subscriber, and it is
practically impossible to independently collect this data.  Databases
of IP addressees collected by Network Solutions will be covered,
giving Network Solutions broad new rights in how that data is
utilized by ISPs.

        WHAT ABOUT GOVERNMENT INFORMATION?

Much of the lobbying for the sui generis database proposal is
designed to enable database vendors to protect collections of
government documents.  The treaty would permit countries to have
special rules for "databases made by governmental entities or their
agents or employees."  However, this exemption will not include cases
such as the West Publishing reporting of court decisions, where West
is acting as an unofficial agent for the courts.

In the US enabling legislation, protection is not given to a
database made by a governmental entity, but protection could not be
excluded from companies if a database's "contents have been obtained
from a governmental entity."  There is no provision to exempt
databases created by private parties; like West, LEXIS, and literally
thousands of other firms; when they act as contractors to government
agencies.  For example, West is a contractor for some courts in
receiving electronic filing of briefs.  Under the U.S. legislation,
the database of briefs collected by West for the Courts would be
protected.  Likewise, the SEC EDGAR public disclosure filings which
are managed by LEXIS would be covered.

The Clinton Administration has gone to court in at least two
cases avoid releasing documents under the Freedom of Information Act
(FOIA) when West Publishing has asserted intellectual property rights
claims to elements of the data.  In the FLITE case, the Clinton
administration successfully argued that it did not have to release
U.S. Court opinions collected by the Air Force at public expense that
contained West "corrections" and enhancements.  (See:
http://www.essential.org/listproc/info-policy-notes/0185.html, and
the Tax Analysts page on this topic, at http://www.tax.org/pal). It
appears as though government entities will be permitted to avoid FOIA
completely if they use private contractors, and write contracts which
permit agency access to data (extraction), but do not permit
disclosure to the public.  [For a discussion of an earlier
legislative initiative by West Publishing to achieve a similar
result, that was defeated after citizen protests, see:
http://www.essential.org/listproc/info-policy-notes/0137.html, and
http://www.essential.org/listproc/info-policy-notes/0139.html]

      WHAT ABOUT FAIR USE RIGHTS?

As noted several times, the public has rights, often taken for
granted, under the copyright "fair use" doctrine.  This includes
commercial and non-commercial fair use.  The fair use rules involve
public interest balancing tests.  The sui generis database proposal
doesn't include or incorporate public fair use rights.  It is
difficult to know how this will play out in practice.

Under the treaty language, governments "may, in their national
legislation, provide exceptions to or limitations of the rights
provided in this Treaty in certain special cases that do not conflict
with the normal exploitation of the database and do not unreasonably
prejudice the legitimate interests of the rightholder."  The key
terms here are "normal exploitation of the database," and "legitimate
interests" of the rightholder.

In the U.S. legislation, "a lawful user of a database made
available to the public or placed in commercial use is not prohibited
from extracting, using or reusing insubstantial parts of its
contents, qualitatively or quantitatively, for any purposes
whatsoever."  But as noted earlier, the term "insubstantial" is
constrained by the scope of the business opportunities that are
perceived by the database vendor.  Not only is "insubstantial"
limited to those uses which do not diminish the value of the
database, but insubstantial must also not "conflict with a normal
exploitation" of the database, or adversely impact the "actual or
potential" market of the database.  Moreover, the "normal
exploitation" of the database seems to be defined in such a way that
the vendor can assert that a transmission of a database element on
the Internet would be an infringement if the company has a mechanism
or even aspirations to charge for the information, and the cumulative
impact of many small transactions would diminish the value of that
service.

        RETROACTIVE PROTECTION

The treaty would require countries to provide protection
prospectively for databases already on the market.  Countries could
exempt older databases from protection for up to two years.

        PROHIBITIONS ON TECHNOLOGIES TO DEFEAT PROTECTION

As in the proposed Internet copyright treaty and legislation,
the database proposal is accompanied by very strict prohibitions
against the "importation, manufacture or distribution of protection-
defeating devices."  This is defined as "any device, product or
component incorporated into a device or product, the primary purpose
or primary effect of which is to circumvent any process, treatment,
mechanism or system that prevents or inhibits any of the acts covered
by the rights under this Treaty."  The US legislation contains
similar provisions, plus a whole section which would make it a
federal crime to interfere with "database management information."
Persons would face up to 5 years in jail and a $500,000 file for
doing such things as providing or disseminating false database
management information, or removing or altering any such information.
It would seem that simply tearing the cover off a telephone book (a
protected database under the treaty) be a violation of this
provision.

        WHAT CAN YOU DO?

If you think this proposal needs more debate before it is forced
upon us and the rest of the world, contact your member of Congress
and submit comments to the PTO asking that the database treaty be
taken off the WIPO agenda for this December.  You should point out
that there have been zero public hearings before the Congress on this
far-reaching proposal.  You also might read the attached October 9,
1996 letter in opposition to the treaty by the Presidents of the
National Academy of Sciences, the National Academy of Engineering,
and the Institute of Medicine. You will also find good background
materials at Brian Kahin's web page for the State Department Advisory
Committee on International Communications and Information Policy at:
http://ksgwww.harvard.edu/iip/intellec.html.

As noted above, you can send comments by electronic mail to:
diploconf at uspto.gov.  They must be in by November 22, 1996.  Copies
of the treaty, commentary, and the PTO federal register notice is
available from http://www.public-domain.org.  Public-Domain is an
independent citizen's organization being formed to fight this treaty,
and more generally to protect the public domain in matters concerning
intellectual property.

    James love
    love at tap.org
    http://www.essential.org/cpt

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                            APPENDIX

Letters of Presidents of National Academy of Sciences, National
Academy of Engineering, and Institute of Medicine in opposition to
the database treaty.


October 9, 1996
The Honorable Michael Kantor
Secretary of Commerce
Department of Commerce
14th Street and Constitution Avenue
NW Washington, D.C. 20230

Dear Mr. Kantor:

We are writing to express our serious concern about pending changes
to international and domestic intellectual property law that are
being supported by the Department of Commerce. Although we understand
that the wide availability and easy transmittal of digital databases
can present difficulties for database vendors, we believe that the
August 30, 1996 Draft Treaty on Intellectual Property in Respect to
Databases, which was prepared under the World Intellectual Property
Organization (WIPO), has the potential to undermine our nations
progress in scientific and technical research and education if
appropriate exceptions and limitations are not clearly articulated.
As you may know, the proposed WIPO treaty contains major provisions,
intended to do the following.

Prohibit unauthorized extraction, use, or reuse of any database, or
any substantial portion of a database (as defined by the database
vendor), and effectively establish the basis for a pay-per-use
system; - Make perpetual protection the norm for databases, by making
a 15-year initial term of protection renewable with every substantial
change or addition to a database, actions that occur frequently with
most electronic databases; - Apply to all privately generated data,
or repackaged U.S. government data (outside the United States,
government databases would be protected by this law as well); and -
Include strong civil and criminal penalties, including provisions for
third-party liability (e.g., liability incurred by the unwitting
intermediary or disseminator).

While we certainly do not dispute the right of database compilers and
vendors to obtain reasonable protection of their products, the
proposed law fails to provide for any public-good exceptions, such as
the fair use exemption traditionally enjoyed by the research and
education communities for their limited use of copyrighted works.
Database publishers would effectively obtain an absolute and
perpetual monopoly in their data compilations, including preexisting
data sets. The proposed changes would significantly inhibit
researchers seeking to reuse and combine data for publication or for
research (an especially acute problem for researchers using large,
continuously updated observational data sets), as well as educators
wishing to use portions of data sets for instructional purposes. The
new law also would overturn a series of Supreme Court cases that
limit intellectual property rights in the interest of free
competition.

We believe that these changes to the intellectual property law, if
enacted in their present form, would seriously undermine the ability
of researchers and educators to access and use scientific data, and
would have a deleterious long-term impact on our nations research
capabilities. Moreover, the proposed changes are broadly antithetical
to the principle of full and open exchange of scientific data
espoused by the U.S. government and academic science communities, and
promoted internationally. We are aware that these and additional
concerns regarding changes to the intellectual property law, have
been communicated to the President and Vice President by the Digital
Future Coalition, the American Society for Information Systems, the
Association of Research Libraries, and the American Association of
Universities.

What is especially disconcerting is that these radical legal changes
have been proposed by the Department of Commerce for formal
discussion and negotiation at the WIPO Diplomatic Conference this
December, without any debate or analysis of the laws potentially
harmful implications for our nations scientific and technological
development. Indeed, although the unintended consequences appear very
grave to those studying these issues, very few individuals at the
science agencies or in the academic community appear even to be aware
that such changes are about to take place, nor has there been any
effort made to solicit their views.

If the current Draft Treaty on Intellectual Property in Respect of
Databases is adopted by WIPO, these changes will move substantially
toward becoming the new international norm in intellectual property
law by the end of this year. Therefore, we request that no
precipitous action be taken at the planned WIPO Diplomatic Conference
before the range of consequences of the proposed changes is fully
understood and appropriate modifications are made.

The underlying issues that have given rise to the potential changes
in intellectual property law will also be described in a report to be
published by the National Research Council later this fall. The study
committee that prepared that report plans to hold a one-day symposium
at the National Academy of Sciences to explore these issues in
greater detail with key officials from the Administration and
Congress. In the meantime, we hope that you will take the steps
necessary to avert what could otherwise become an unnecessarily
damaging and contentious development in intellectual property law.

Sincerely,

Bruce Alberts, National Academy of Sciences
Wm. A. Wulf , National Academy of Engineering
Kenneth I. Shine, Institute of Medicine


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__________________________________________

Just as we hit water when we dig in the earth, so we discover the
incomprehensible sooner or later.

                G. C. Lichtenberg (1742-99)


Trend is not destiny

        Anonymous


Leonard Krishtalka
Director                                                phone:  913/864-4540
Natural History Museum and              fax:       913/864-5335
      Biodiversity Research Center
The University of Kansas                        e-mail:  krishtalka at ukans.edu
Lawrence, KS 66045




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