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6

Legal and Policy Issues

MR. PERLMAN (moderator): The theory behind this workshop is that we have tried to provide a background relative to the scientific data community, including analysis of economic factors relevant to protecting databases and some discussion of technological approaches to database protection. The purpose of this session is to give you a background on the variety of ways that law could or does approach the problem of database protection.

We are fortunate to have with us, to give us an overview of the legal possibilities, Marybeth Peters, who is Register of Copyrights, United States Copyright Office. Following her presentation, we will hear from Justin Hughes, an attorney with the Patent and Trademark Office, who will provide a brief summary of federal government information law and data policies.

SUMMARY OVERVIEW OF EXISTING AND PROPOSED INTELLECTUAL PROPERTY RIGHTS REGIMES FOR DATABASES

Marybeth Peters

This overview summarizes key elements of the following existing and proposed intellectual property regimes: the status quo (copyright, unfair competition law, contract law, technical protection); the sui generis property rights model; and the unfair competition/misappropriation model.

Because there are different laws in different jurisdictions relating to the regimes listed below, one particular version of each is used as the model for that regime:

  • Unfair competition law. The version of state misappropriation law explicated by the Second Circuit, in National Basketball Association v. Motorola, Inc., 105 F.3d 841 (2d Cir. 1997).

  • Sui generis property rights model. Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases (the E.U. Directive) .

  • Unfair competition/misappropriation model. Title V of H.R. 2281 as passed by the United States House of Representatives on August 4, 1998.

Subject Matter Scope
The Status Quo
Copyright
  • Protects compilations, which reflect a modicum of creativity, required by the constitutional provision empowering Congress to enact copyright laws (Feist Publications, Inc. v. Rural



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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS 6 Legal and Policy Issues MR. PERLMAN (moderator): The theory behind this workshop is that we have tried to provide a background relative to the scientific data community, including analysis of economic factors relevant to protecting databases and some discussion of technological approaches to database protection. The purpose of this session is to give you a background on the variety of ways that law could or does approach the problem of database protection. We are fortunate to have with us, to give us an overview of the legal possibilities, Marybeth Peters, who is Register of Copyrights, United States Copyright Office. Following her presentation, we will hear from Justin Hughes, an attorney with the Patent and Trademark Office, who will provide a brief summary of federal government information law and data policies. SUMMARY OVERVIEW OF EXISTING AND PROPOSED INTELLECTUAL PROPERTY RIGHTS REGIMES FOR DATABASES Marybeth Peters This overview summarizes key elements of the following existing and proposed intellectual property regimes: the status quo (copyright, unfair competition law, contract law, technical protection); the sui generis property rights model; and the unfair competition/misappropriation model. Because there are different laws in different jurisdictions relating to the regimes listed below, one particular version of each is used as the model for that regime: Unfair competition law. The version of state misappropriation law explicated by the Second Circuit, in National Basketball Association v. Motorola, Inc., 105 F.3d 841 (2d Cir. 1997). Sui generis property rights model. Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases (the E.U. Directive) . Unfair competition/misappropriation model. Title V of H.R. 2281 as passed by the United States House of Representatives on August 4, 1998. Subject Matter Scope The Status Quo Copyright Protects compilations, which reflect a modicum of creativity, required by the constitutional provision empowering Congress to enact copyright laws (Feist Publications, Inc. v. Rural

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS Telephone Service Co., 499 U.S. 340 (1991)). The compiler's effort and investment (or “sweat of the brow”) is not a basis for protection. Scope of protection is therefore “thin,” covering only the original elements of a compilation's selection, coordination, or arrangement. Definition. 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. Unfair Competition Law Protects time-sensitive information generated or gathered at a cost. Contract Law Protects subject matter specified by contract, which may be a database. Technical Protection Available to protect databases in electronic form. Sui Generis Property Rights Model Protects databases in which there has been qualitatively and/or quantitatively a substantial investment in the obtaining, verification, or presentation of the contents. Definition. A database is “a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means.” Unfair Competition/Misappropriation Model Protects collections of information gathered, organized, or maintained through the investment of substantial monetary or other resources. Definitions. (i) A collection of information is “information that has been collected and has been organized for the purpose of bringing discrete items of information together in one place or through one source so that users may access them.” (ii) Information means “facts, data, works of authorship, or any other intangible material capable of being collected and organized in a systematic way” (Title V of H.R. 2281, Section 1401, as passed by the United States House of Representatives on August 4, 1998). Term of Protection The Status Quo Copyright As works made for hire, most databases will be protected for the shorter of 95 years from first publication, or 120 years from the year of creation. For databases not made for hire, term is life of the author plus 70 years.

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS Unfair Competition Law Protection continues for as long as the information is timely and is incorporated in a product or service being offered in the market. Contract Law Protection continues for the duration agreed to. Technical Protection Protection continues for as long as the technological measures are in place. Sui Generis Property Rights Model General term. Protection runs from the date of completion of the making of the database. For published databases, the protection expires 15 years from the beginning of the year following the date when the database was first made available to the public. For unpublished databases, protection expires 15 years from the beginning of the year following the date of completion. Additional term resulting from new investment. Any substantial change, evaluated qualitatively or quantitatively, which would result in the database being considered to be a substantial new investment, qualifies the resulting database for its own term of protection. Unfair Competition/Misappropriation Model Fifteen years from the investment of resources that qualified the portion of the collection of information for protection that is extracted or used. Type of Protection/Standard of Harm The Status Quo Copyright Grant of exclusive rights to do and to authorize reproduction, preparation of derivative works, distribution, public performance, and public display. Standard of harm: Exercise of one of the exclusive rights without authorization. Unfair Competition Law Prohibition on the unauthorized use by a Competitor of time-sensitive information generated or gathered at a cost. Standard of harm: Free-riding by a direct competitor resulting in a reduction of incentives to produce the original product or service. Contract Law User of database agrees not to engage in certain acts. Standard of harm: Material breach of a contractual obligation.

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS Technical Protection Technical protection measures may restrict access to database or particular types of uses. Standard of harm: Not applicable. Sui Generis Property Rights Model Grant of right to prevent the extraction and/or reutilization of the whole or a substantial part, evaluated qualitatively and/or quantitatively, of the contents of the database. Standard of harm: Exercise of right without authorization. Unfair Competition/Misappropriation Model Prohibition on the extraction, or use in commerce, of all or a substantial part, measured either quantitatively or qualitatively, of the collection of information, so as to cause harm to the actual or potential market for a product or service that incorporates that collection. Standard of harm: Harm to the actual or potential market. Who Is Protected? The Status Quo Copyright Owner of any of the exclusive rights. Unfair Competition Law Person whose efforts are the subject of the harmful free-riding. Contract Law Party to contract harmed by breach of that contract, or third party beneficiary. Technical Protection Not applicable. Sui Generis Property Rights Model Makers or rights holders of a database who are: nationals of a European Community member state or who have their habitual residence in the territory of the European Community. companies and firms “formed in accordance with the law of a Member State and having their registered office, central administration or principal place of business within the Community” (Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases, Recital 56). nationals or residents of a third country, where comparable protection is provided in that country to European Community databases.

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS Unfair Competition/Misappropriation Model Person offering a product or service incorporating a collection of information whose market is harmed by the use or extraction. Jurisdictional Scope/Where Protection Is Provided The Status Quo Copyright In the United States, exclusively federal law without extraterritorial effect. Protection under national laws of other countries with which United States has treaty relations. Unfair Competition Law In the United States, state law. Contract Law In the United States, state law, with other countries recognizing contractual relations but applying own rules regarding choice of law and contract interpretation. Technical Protection Potentially worldwide protection. Sui Generis Property Rights Model None in the United States. Provided in the European Community through national laws of member states, governed by terms of E.U. Directive. See the sui generis property rights model under the section “Who Is Protected” above for conditions of protection for non-European Community databases. Unfair Competition/Misappropriation Model In the United States, would be exclusively federal law. Permitted Acts The Status Quo Copyright Exceptions set out in §§ 107-121 of the Copyright Act, including exceptions for fair use, library copying, and instructional broadcasting.

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS Unfair Competition Law No specific exceptions. Contract Law Those acts permitted under the terms of the contract. Technical Protection Those acts not prevented by the particular technology used. Sui Generis Property Rights Model Mandatory exception for extraction or and/or reutilization by a lawful user of insubstantial parts of a database, evaluated qualitatively and/or quantitatively, for any purpose. Such extractions and/or reutilization may not conflict with normal exploitation of the database or unreasonably prejudice the legitimate interests of its maker. Optional exceptions that may be enacted by European Community member states for the benefit of lawful users. Extraction for private purposes from a nonelectronic database. Extraction for purposes of illustration for teaching or scientific research, as long as the source is indicated and to the extent justified by the noncommercial purpose. Extraction and/or reutilization for the purposes of public security or administrative or judicial procedure. Unfair Competition/Misappropriation Model Extraction or use of an individual item of information, or other insubstantial part of a collection of information, in itself (barring repeated or systematic extraction or use so as to circumvent the law). Independent gathering or use of information obtained by means other than by extracting it from the collection. Extraction or use within an entity or organization for the sole purpose of verifying the accuracy of information independently gathered, organized, or maintained. Extraction or use for not-for-profit educational, scientific, or research purposes, in a manner that does not directly harm the plaintiff 's actual market. Extraction or use for the sole purpose of news reporting. Sale or other disposition of a particular lawfully made copy of a collection by the owner of that copy. In discussions in the Senate regarding the Senate counterpart of H.R. 2281, additional exceptions were considered: Fair use-type exception for purposes such as illustration, explanation, comment or criticism. Extraction or use of genealogical information for not-for-profit, religious or private purposes. Complete Exclusion

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS The Status Quo Copyright Government works. Ideas, procedures, processes, systems, methods of operation, concepts, principles, or discoveries. Unfair Competition Law No specific exclusions. Contract Law No specific exclusions. Technical Protection Not applicable. Sui Generis Property Rights Model Computer programs used in the making or operation of databases accessible by electronic means. Unfair Competition/Misappropriation Model Government collections of information. Computer programs. Products or services incorporating a collection of information used to accomplish digital online communications. Relationship to Other Laws The Status Quo Copyright Preempts equivalent state rights in protected subject matter. Unfair Competition Law Possible partial preemption by copyright. Contract Law Parties may agree to vary rights and privileges under other bodies of law, such as copyright. While questions have been raised about the validity of such contractual terms, case law has so far upheld them. SeeProCD v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996). Technical Protection Does not affect legal rights.

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS Sui Generis Property Rights Model Does not affect other laws concerning information, specifically including copyright, rights related to copyright, or any other rights or obligations subsisting in the data, works or other materials incorporated into a database, patent rights, trademarks, design rights, the protection of national treasures, laws on restrictive practices and unfair competition, trade secrets, security, confidentiality, data protection and privacy, access to public documents, and the law of contracts. Unfair Competition/Misappropriation Model Preempts equivalent state laws. Does not affect other laws concerning information, specifically including copyright, or any other rights or obligations relating to information, including laws with respect to patent, trademark, design rights, antitrust, trade secrets, privacy, access to public documents, and the law of contract. Specifically states no effect on antitrust laws, Communications Act, Securities Exchange Act, or Commodity Exchange Act. Remedies (Civil/Criminal) The Status Quo Copyright Civil Remedies Damages and profits or statutory damages ($500-$20,000 per work, or up to $100,000 for willful infringements). Temporary and final injunctions. Impounding and destruction or other disposition of infringing copies or devices or equipment used in their manufacture. Costs and attorneys' fees. Criminal Penalties Imprisonment for up to 5 years for a first offense, and up to 10 years for a subsequent offense. Fines of up to $250,000. Forfeiture and destruction of all infringing copies or devices or equipment used in their manufacture. Unfair Competition Law Injunctions are the standard remedy. Possibility of recovery of money damages. Contract Law

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS Monetary damages. Specific performance rarely available. Technical Protection In the case of databases protected by copyright, circumvention of technological measures will in some circumstances be illegal under newly enacted §1201 of Title 17, with an array of remedies for breach. Sui Generis Property Rights Model As provided by each European Community member state. Unfair Competition/Misappropriation Model Civil Remedies Damages and profits. Up to three times actual damages, at court's discretion. Reduction or remission of damages where a defendant believed and had reasonable grounds for believing that his/her conduct was permissible, if the defendant was an employee of a not-for-profit, educational, scientific, or research institution, library, or archives acting within the scope of his or her employment. Temporary and permanent injunctions. Impoundment, and as part of final judgment, remedial modification or destruction of all copies and articles by which copies reproduced. Costs and attorneys' fees to the prevailing party, at the court's discretion. Costs and attorneys' fees required where action brought in bad faith against a not-for-profit educational, scientific, or research institution, library, or archives. Criminal penalties. For cases of willful violation, done for direct or indirect commercial advantage or financial gain, or causing loss or damage aggregating to $10,000 or more in any 1-year period. Fine of up to $250,000 or imprisonment for up to 5 years, or both. Fine of up to $500,000 or imprisonment for up to 10 years, or both for subsequent offenses. Criminal penalties not applicable to not-for-profit educational, scientific, or research institution, library, or archives. Deposit Requirements The Status Quo Copyright None required to secure protection.

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS For U.S. compilations, however, registration is a prerequisite to a suit for infringement. Application for copyright registration must include a deposit as follows: For automated databases published only in machine-readable copies (other than CD-ROM), one copy of identifying portions of the work reproduced in a form visually perceptible without the aid of a machine or device. For automated databases fixed in CD-ROM, one complete copy. For other compilations, two copies of the compilation. Unfair Competition Law None. Contract Law None. Technical Protection Not applicable. Sui Generis Property Rights Model None. Unfair Competition/Misappropriation Model None. In discussions in the Senate, a deposit system was considered in order to establish what a given collection of information consisted of at the beginning of the 15-year period of protection. This deposit system would not have been a mandatory requirement, but would have provided strong incentives to deposit. SUMMARY OF FEDERAL GOVERNMENT INFORMATION LAW AND DATA POLICIES Justin Hughes There is a unique, special process in the Constitution that bears on our situation today. I have never conducted any focus groups, but I think if I went out and asked American citizens what kind of data gathering activities the federal government engages in, the first thing that would roll off their tongues is the census. The census is not a perfect model, and it is by no means the only model of how the government gathers data today. It is important because it speaks to the spirit of enlightenment that guided the founding fathers and that I hope, and I think everyone in this room hopes still, guides federal policy in terms of gathering information, collecting information, and disseminating information. During the past year, I spent a lot of time going through practically every document I could find about federal policy on government information, and how that information is to be

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS collected and disseminated. I found that there were two general principles that seemed implicit in all the regulations and all the rules. One of those principles was that the government has a role in gathering socially valuable information and seeing that it is disseminated. The second principle, to put it starkly, is that if citizens have paid for data once, they should not have to pay for it again. This summer, when the Administration was working on its own policy, or formulating its own viewpoint on the database issue, we had that very much in mind. A National Economic Council-led effort, which included Brian Kahin from the Office of Science and Technology Policy, Chris Kelly from the Justice Department, and several others of us, worked on formulating the Administration 's policy on database protection issues and possible legislation. We formulated six principles, the third one of which I am going to read to you, and it is available in a letter from Andy Pincus, general counsel of the Commerce Department, that was written to Senator Hatch. The third principle of our six is that, consistent with Administration policies expressed in relevant Office of Management and Budget (OMB) circulars, databases generated with government funding generally should not be placed under the exclusive control, de jure or de facto, of private parties. Now, that is very, very important to the research community. But behind that general principle, there are very, very complex issues. I want to outline and sketch out for you three areas that this group and all groups thinking about data protection need to consider. The first one is the incredible complexity of the question of what constitutes government data or government-funded data. The second one is, What do we mean when we say that government information should not be captured by private parties? The third one is to talk a little bit about the international context, where I really do believe that the guiding principles that inform things like the decision to include a census in our Constitution may make our society and our government 's approach very different from that of other developed countries. As for the incredible complexity of government-funded data collection and dissemination, first, there is the question that was raised immediately this morning: Are we talking about federal, are we talking about state, or are we talking about local? That is an issue that has been discussed, and will be discussed, probably often, in the legislative process. It is an issue on which there were differences between House and Senate efforts on the database proposals. A second question that was raised by Ms. Singer from ISI is, What should the government do? She raised it in the context of not wanting to compete against government agencies as disseminators of information. That is a very difficult question. It is not easy to come up with what principles should govern where the government should be supplying information and where the government should not be supplying information, or in what format. Todd Dickinson said that the Patent and Trademark Office has taken the viewpoint that we now will be disseminating huge amounts of information over the Internet. Well, as you can imagine, there are private parties who are very unhappy with that, because a niche market of the information industry that they supplied now has a government competitor. The third area of enormous complexity is evident when we say that government information generally should not be captured by private parties but at the same time recognize that the government funds the collection or the dissemination of information through a whole variety of mechanisms. There are at least four main categories: when it does it itself, when it does it by contract, when it does it by grant, and when there is a cooperative research and development agreement.

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS Each of these categories has different pieces of federal regulations or OMB circulars that govern them. By themselves, the government 's data collection and dissemination policies should be governed by OMB Circular A-130. A-130 sets out the general, strong government policy that we have a role in disseminating information at minimal cost to the public. Aside from that, then you get into other areas like acquisition of information through contract. When the government goes out and contracts with a private party to render some service to the government, and the result is a database, that is generally governed by the Federal Acquisition Regulations (FAR). On the grant side, there is OMB Circular A-110. The best statement I have found is the National Science Foundation's (NSF's) grant policy manual, which sets out the division of property rights in terms of intangible goods and the highly desirable goal that investigators, under NSF grants, need to disseminate their information as quickly and as widely as possible. When we say government information should not be captured, I want to clarify that we are not saying there shouldn't be organizations like West Publishing, for example. West Publishing goes to courthouses and gets law reports and puts them online. Lexis does the same thing. That is how Lexis competes with West. If anybody in this room really wanted to form an entity to publish law cases, they could do so. So, capture doesn't mean only that you are a well-known or a main conduit through which information gets to the public, because there can be much competition in that area. The final thing I want to point out about government information policy is the international context. I really do believe that a lot of those problems we are talking about today are coming from Europe. You see that those problems may come from societies and from governments that are less informed, by an abiding principle that there is an enlightened role for the government in generating and disseminating information. There is a process going on at the international level. Professor Gilbert talked about an international property war. It has not reached the level of a war yet, but there are lots of skirmishes going on. The Europeans have a clear model of data protection, or database protection, which they would like to foist upon the rest of that world. Part of that model includes the ability to create exclusionary rights over government data. I think that there is a very important opportunity, and a very important duty, for those of us who care about the free dissemination of government-generated data to help create a counterpoise, another positive model, to meet that E.U. Directive model that says, yes, some protection is needed for commercial database producers, but government-generated data should not be subject to that type of exclusionary regime. What we really need to work for is an enlightened model that says, yes, there are commercial realities to be dealt with, but we will not back down from our idealism that the government will collect a lot of information and will disseminate it as a public service. GENERAL DISCUSSION MR. MAURER: Is it true that before Feist nobody complained about the regime of sweat-of-the-brow copyright protection? Do we have any indication whether people want to continue it, or if it has been litigated? There are always allegations from that group. MS. PETERS: Actually, in our report (see U.S. Copyright Office, 1997, Report on Legal Protection of Databases, A Report of the Register of Copyrights, Washington, D.C., August) we have a summary of the cases, and there were a fair number where sweat of the brow was, in fact, upheld, especially in certain circuits. You yourself mentioned the West case in Minnesota, which

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS has been overturned after Feist. Perhaps because the cases were brought only where there was, in fact, an equivalent of piracy, substantial commercial economic harm, you didn't see that much complaint, because it really was so unfair. DR. KOSLOW: Steve Koslow from National Institute of Mental Health. One question about copyright. As a government employee, I was funded by the government, and I published something that is not copyrighted. When government grants are given to university people for the purpose of disseminating their findings, the Pincus letter to Senator Hatch indicated that exclusive rights would not be given to any outside or private companies. The question is, Why aren't the results of grants given the same sort of copyright exclusion? MR. HUGHES: Let me address that. You need to be very clear that granting someone a copyright in their scientific journal article is not granting them any exclusive rights of any sort over the data, which may be explained and explicated in that scientific article. It is federal policy that people can have copyrights on the results of their grant-supported work. You occasionally see copyright symbols in data. There is no such thing as copyright for data. So, it is not incompatible to say that a scientist or a researcher or an investigator gets a copyright over the expression that they produce, their writings. They don' t have any exclusive rights over the data that results from their government-funded work. MR. REICHMAN: I just wanted to clarify something in regard to Marybeth 's fair-use question there. I think it was a little more complicated than that. Fair use means many things to different people. Fair use in copyright law comes at the end of a whole long list of other exceptions and exemptions that we didn't go into. It is kind of a safety net. We really didn't get anywhere in the Senate negotiations on the database bill last year until we arrived at the understanding that we could get something different from fair use. The principle was that science and education should be left no worse off than they were before, and that science and education should recognize that there were commercial needs that had to be respected, lines that couldn't be crossed. That is what was meant by the advanced fair use concept on which there was, at the very end, some considerable degree of agreement. That is very different from the one you mentioned here. MS. PETERS: I actually didn't go into what Mr. Coble is planning to introduce in his new database legislation; and I just quoted the words that he used in a press release, which were extreme shorthand. I think you will find that his new version is more like what you are talking about, but my recollection is it may not be limited just to scientific education. In other words, it is a principle, a permitted, reasonable use, when certain criteria are met and the court finds that it is, in fact, reasonable. PARTICIPANT: When the Copyright Office came out with its report in 1997 (see U.S. Copyright Office, 1997), that was shortly after the Warren Publishing decision (Warren Publishing, Inc. v. Microdos Data Corp., 52 F.3d 950 [11th Cir. 1995]) came down, as I recall. Everyone was worried that this was going to cause a sea change in copyright law because the scope of protection that was awarded in that case was so narrow, and many of us in this room felt that the Eleventh Circuit Court got it all wrong. Now here we are 18 months later and it seems to me that there are two changed circumstances. One is that there have been a lot of cases that have followed the narrow scope of protection awarded by the courts. More important, we now have the Digital Millennium Copyright Act. Given those changed circumstances, it has really been the concern that Warren would cause the opening of the floodgates of piracy or misappropriation, and also the fact that we now have this new form of protection that if a person uses data that are under technological

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS protection, it is going to be unlawful to circumvent it. Do those changed circumstances maybe change your opinion about the existing gap, or suggest that maybe the gap is narrower than it was then? MS. PETERS: My initial reaction is no; with regard to Warren Publishing, I was not thrilled with what the Eleventh Circuit court did, certainly, but I can't say that it was totally wrong, and that that might not be what other courts will do. The fact that a court came out that way may mean that others don't bring lawsuits, because the likelihood of loss is out there with the opinion in the Eleventh Circuit. With regard to the Digital Millennium Copyright Act, I am not sure what the changed circumstances are, because the technological protection measure only goes to copyrightable works. Is that what you were referring to? PARTICIPANT: Yes, but you yourself were saying that these compilations were protected and it was an issue of scope. MS. PETERS: Many of them are. We actually file them in registration and they just don't send them to us. We found that the more comprehensive a compilation is, the more complete it is, then the less likely it is to be copyrightable. For example, a compilation of all the restaurants in Washington, D.C., may not be copyrightable. One of the 10 best would be. The incentive for making a compilation copyrightable is preserved, that is, that you have to make selective choices. I don 't think that changes. Certainly, most compilations still are protected by copyright. We don't know how the exception to the technological protections will work with respect to the rulemaking that the Copyright Office has to do within two years. I am not sure. DR. ALEXANDER: You mentioned earlier both the federal and other nonfederal entities. Are you also proposing that the policy enunciated should apply to, say, the state governments? MR. HUGHES: Let me just give the legislative background and then try to answer that. H.R. 2652 originally included local and state government-generated data in its definition of government-generated data, and then excepted state-supported universities on the rationale that state-supported universities should not be treated differently than private universities. So, the University of California at Los Angeles should not be treated differently than the University of Southern California. If you take as your animating idea that citizens shouldn't pay for data twice, it seems to me that you reach the same conclusion for local and state data. For example, if the citizens of Texas have already paid for data, then the citizens of Texas and the citizens of Oklahoma ought to be able to get to them. Our proposition has not been limited to federal government-generated data. MS. PETERS: But with copyright, the federal is the only one that is excluded. Certainly the states take full advantage of the copyright, law with regard to their maps or promotional material. MR. HUGHES: Absolutely, sometimes with interesting repercussions. MR. PERLMAN: You do have the problem of the Oklahoma citizen who hasn't paid for the stuff that the University of Texas does. MR. HUGHES: We talked about that problem, but it seems too difficult. DR. LEDLEY: What if an investigator gets a grant to develop a database, which he does, and then wants to go into business with funding from a Small Business Innovation Research grant? MR. HUGHES: The devil is in the details in all these situations. If a person simply takes

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS only data that were generated with the government grant, does nothing more to them, puts them up on the Internet and charges for access to them, and if someone then hacks into the data and is then sued, I would say that that hacker should have as a defense that that was purely federal information with nothing added to it, arguably. Then there is a question of what happens when value is added. Usually, government data are in a very raw form. They are not in a very presentable form for the public or an understandable form. A lot of the information industry is taking public-domain information and adding value, in its format, its presentation, or its delivery system to the public. This presents a different issue, where, although the government-generated information should remain available to everyone, the value-added information should be subject to a system where that investment can be protected. Let me say that the problem with government capture is not only the behavior of the private entity, but also the behavior of the government. The situation we worry about is one where every federal agency is under budgetary pressures, and an agency decides not to concern itself with continuing to disseminate its information because a private corporation is disseminating that information. Then what happens, that is the capture problem—when the information is no longer available from a public-domain source, even in a very rough form, and it is only available from a private entity. So, the capture problem is not just the question of what private actors do. It is also the question of what the government can be expected to do in different areas. MR. MILES: This is to take a point that had been made earlier. I am not sure that government data are unique in this. If we start with the proposition that you can't copyright or own facts, then perhaps the same kind of separation between the vessel and the information in the vessel will play out, whether it is privately developed or developed with government funds. MR. HUGHES: You are trying to create a system that rewards investment and does so by identifying what really are expressions of fact. That is what a database is. It is a set of expressions of facts. We say they are facts, but it is really just a representation of facts. We want to protect that investment, while not letting anyone exclude the underlying facts. The only approach that everybody agrees is workable, but it may not be complete, is to say that you can extract some or you can extract an insubstantial amount, or you can go find the fact independently. Practically everyone agrees on those principles. The broader problem is separating the kind of platonic form of the fact from the representation that exists in a database. PARTICIPANT: Ms. Peters, when you reached a conclusion that there probably needed to be a legislative remedy following Feist , did you rule out technical solutions on the basis that they are fundamentally not workable or that they take too long to be practical? MS. PETERS: The technological solutions could well be a very important piece of the whole puzzle. We concluded in our report that technological solutions were not well-enough developed with respect to databases or, frankly, at the time we wrote the report, they weren't with respect to other things either. We heard today that databases are still lagging behind other types of work with regard to technological solutions. DR. OSTELL: I think your comments about the tradition of the role of government in the free exchange of information and the acquiring of information are actually at the root of some of the concern about this issue of the European Union ruling on databases. We certainly see a trend, in the case of Europe, of government wanting less and less to fund basic research at all. So, in Europe there is mounting pressure for the institutions that are getting the data to recover money for them, and to hold the rights to the products they produce, even though they are

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PROCEEDINGS OF THE WORKSHOP ON PROMOTING ACCESS TO SCIENTIFIC AND TECHNICAL DATA FOR THE PUBLIC INTEREST: AN ASSESSMENT OF POLICY OPTIONS distributed, so that money returns to them. The Japanese, explicitly in a number of cases, are teaming companies with government-sponsored institutions and holding the results of that research, I guess, as trade secrets or something. They keep the information secret and then try to apply for patents on it prior to releasing it. I don't see any way that the United States could influence those aspects of the problem in those countries. Were you suggesting there was a way to do that? MR. HUGHES: I am certainly not suggesting, and would not suggest, that we have any prospect of seeking any reversal of the E.U. Directive. I know that there was, in the meteorological data area, an effort to get the E.U. Directive amended to exempt meteorological data. Even that limited effort did not succeed. What everyone in this room needs to understand is that, at the World Intellectual Property Organization (WIPO), the question of database protection is on the table. It will continue to be on the table. The Europeans have a clear model. If we do not like that model, then we need to do our best to formulate a model that meets our principles as a society and that is persuasive with the Latin American, African, and Asian countries. That is where the question of an international regime will be decided, if there are a couple or two or three competing models from developed economies. MS. PETERS: I would add that at the WIPO, I think it is much more likely that if the United States came up with a misappropriation-type model that met the needs here, then more countries would line up behind us than behind the Europeans. MR. HUGHES: In the absence of the United States doing anything, those undecideds are ripe for the picking or ripe for persuasion by the European Union. That is a danger that we have to face. As long as everyone is cognizant of that, that is a danger that should have some impact on our domestic discussions. MR. PERLMAN: I would just suggest that the problem that we are seeking a solution for, and that we will be seeking a solution for in the breakout sessions, depends on how you define the problem. If the problem is how we protect databases, then we have a wide variety of options to consider. If the problem is how to develop a balance between protection and use, then I would suggest that technological measures are not a solution but another problem, just as contractual remedies may also be another problem rather than a solution.