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WIPO Database Proposal - PTO To Accept Email Comments (fwd)

  Info-Policy-Notes - A newsletter available from listproc@tap.org
  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
                           email: love@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 
  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@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.
  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.
  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.  
  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 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.
  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.  
  "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 
  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 
  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 
  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.
  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 
  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.  
  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 
  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 
  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.
  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 
  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: 
  As noted above, you can send comments by electronic mail to: 
  pdiploconf@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
  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 
  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 
  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.
  Bruce Alberts, National Academy of Sciences 
  Wm. A. Wulf , National Academy of Engineering
  Kenneth I. Shine, Institute of Medicine 
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