GS Srividhya
Coordinator, Center for Intellectual Property Rights,
National Law School of India University, Bangalore-560072

Introduction

Database as a concept has undergone a change after Internet has narrowed the distances for transacting businesses. Databases were initially seen primarily as stored information, say, in the form of share prices, details of employees, products and such other information. This information was restricted in terms of the number of persons who could get access to it and the holder or the proprietor of the information had a control over the information by and large. Today the term database constitute data stored in the world wide web, CDs, multi media products, networks and so on.

Databases can be identified by two special features:

1. Accessibility to the data, and

2. the speed of accessibility

Accessibility of databases is no more limited to a few or a restricted number of people. Networking and eventually the Internet in itself has widened the horizon of accessibility of all the databases. Unlike earlier times when a document took days to reach the recipient across the country, it now takes just a few seconds to travel across the globe. The result is that the volume of data processed every day and the number of people get accecss have increased. A wide range of material is being accessed or is accessible to a much higher number of people through a wider medium for propagation.

Both the quality and quantity of the data has gained a lot of significance with the development of knowledge sharing which evolved with the computer era. Even governments publish what at one time would have been confidential information. Hence, data have become extremely important for all walks of life.

The voluminous information being created everyday, has highlighted the need for protection of databases. On account of this, adequate protection of databases has become very important. The consequences of inadequate protection have been emphasised by various fact situations that have affected huge corporations.

In order to provide such a protection, the first step is to analyze and devise the necessary protection that can be provided. The object of such a protection is to ensure: a) that the owner gets his right to protect the data adequately; b) accessibility of the data to all those who legitimately wish to use the same; and c) prohibition of unauthorized use of data.

One of the best ways of protection of databases is by adhering to Intellectual Property Rights (IPR). However, many issues may arise in the context of protection of the databases. IPR issues that may arise for the protection of a database are described below.

Copyright

Copyright is the monopoly right that vests on an author or the owner of a material/ literature to prevent copying by third parties. In databases, copyright vests as soon as a database or any data for that matter, is created. The issue in question is the prevention of infringement of already available work or the unauthorized use of a third party's work.

In India, copyright is available for the form and the substance of the matter. However, any infringer can intelligently change the arrangement of a preexisting database and reuse the same material thereby avoiding the copyright law. Sec 2 (v) of the Indian Copyright Act, 1957 as amended in 1994, defines "adaptation" in relation to any work as "any use of such work involving its rearrangement or alteration". Sec 52 specifically states that:

"the making of copies or adaptation of a computer program by a lawful possessor of the program to utilize the program for the purposes for which it is supplied" is not an infringement.

It should be noted that the form and manner of adaptation in itself can be the subject matter of a copyright. As per our laws today, compilations of data or documents, including materials from the public domain, can receive protection by copyright if the compilor can show originality in the selection and arrangement of the data. However, the author has to still prove originality in terms of the selection of the materials.

The protection under copyright law is not necessarily the best form of protection. Today e-commerce being the major business generator, varied data are stored in the world wide web. The wide accessibility to information is the advantage. The flip side is the misuse of such information for purposes other than those for which it is intended.

Today the Internet in itself has become a medium for varied violations of copyright of data. The control over net-based activities has become a major cause for concern. The American courts recently looked into a situation of copyright violations in the web. If X, a web site, links or copies something from another site, it becomes a blatant violation of copyright. However, if the same information including the substances and graphics are incorporated into the X site from the totally different site or from various sites, only as a hyperlink, then it does not amount to copyright violation.¹

Trademarks

Databases normally are not identified with trademarks or the trade names except in the case of domain names for the web site. However, issues relating to violations of trademarks arise when information or databases are stored by more than one company/proprietor, as the case is, in a particular name. In these cases also, the issue will be more of violation of the trademarks and may not focus on the database.

Domain names

With the increase in e-commerce and in the emergence of web-based solutions as alternative to all other forms of business practices, it has become important to protect not only the domain names but also the information stored in the site. In India, this issue assumed importance when the creation of a web site in the name of Yahoo India was opposed by Yahoo Inc. of America. The decision of the Supreme Court in this case has highlighted the importance of domain names and also of the information stored in the domain because the user associates the information in a domain with a value. Yahoo Inc. was successful in challenging the Indian site.

Trade Secrets

With the increase in the flow of trade, commerce, and technology, every transaction or company or customer has its unique system, manner of functioning, knowledge base and such other trade secrets important to their businesses. The protection of such secrets from the employees who can potentially work with a competitor in the future, and from the public in general has assumed importance. The fact that information in a database, say in a web site or even in a network, may pass through various servers and channels before reaching the recipient, thereby increasing the chances of infringement, has highlighted the importance of such a protection. Such trade secrets and confidential information may be stored, say, in a floppy disk or a CD-ROM or discussions can take place over the Internet. In such cases, confidentiality may be lost and there is an increased scope for unauthorized use of the material. WIPO has granted trade secrets the status of an intellectual property because of the importance of the data. WIPO has also highlighted the potential for the infringement of the data. American law has a specific statute called the Trade Secrets Act to enable the protection of trade secrets. However, in India there is no act or legislation that protects trade secrets. Trade secrets are essentially protected through the mechanism of civil laws here.

Patentability of databases

One of the most important debates of today is the issue of the patentability of softwares. Patenting gives more effective protection than copyright. If softwares can be patented, then most of the databases will be eligible for a patent protection. The issue has assumed more importance after the decision of the Court in the United States granting patents to software. Japan has also followed suit and announced plans to issue patents for programs on memory devices so long as the programs themselves comply with the general requirements for patentability. Normally memory devices bearing a computer program are considered unpatentable automatically.

Civil law issues

Related but important civil law issues also arise which could involve issues of privacy, issues of violation of local laws but not really the international, the issue of jurisdiction and so on.

International Protection

Internationally the principle of the full and open exchange of data and information has been accepted as vital to the protection of life, property, and for safeguarding issues that affect us globally. In particular it has been acknowledged that the free and unrestricted exchange of materials and related data should be assured to all human beings.

However, unauthorized use and claim of benefits should be prohibited. Hence, the impact of a possible sui generis system on the access to databases has been looked at seriously. However, the international opinions seem to favour the view that any protection so envisaged ensures that there is no restriction or that it should not result in restriction of certain non-commercial and important information.

USA

As far as the United States is concerned, the issue of protection of databases assumed importance after the decision of the Supreme Court in the case of Feist Publications, Inc. v. Rural Telephone Service². 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. However, there is copyright protection over the manner in which it is arranged. The decision rejected the "sweat of the brow" theory of copyright, which is still followed in India.

"Copyright treats facts and factual compilation in a wholly consistent manner. Facts, whether alone or as part of a compilation are not original and therefore may not be copyrighted. A factual compilation is eligible for copyright if it features an original selection or arrangement of facts but the copyright is limited to the particular selection or arrangement. In no event may the copyright extend to the facts themselves".

The Feist decision had a lot of impact on publishing houses like West Publishing Inc. which holds monopoly on the citations and corrected texts for many court decisions. 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 wanted to prevent others from using their page numbers or the corrected text of court opinions, and has often been to court trying to prevent its competitors from using their works. West felt that the Feist decision would have a particularly bad effect on their publishing house.

After this, other big publishers have also sought to canvas for a treaty to regulate the protection of database through the auspices of WIPO. The draft of the proposed Treaty was severely criticized as curtailing the right of access to public domain material stored in the database.

In 1998, the United States Congress was considering passing the, "The Digital Millennium Copyright Act of 1998", the object of which was:

"To amend title 17 of the United States Code, to implement the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty, to provide limitations on copyright liability relating to material online".

This Act sought to allow the invention of new technological devices which when added to the computer systems, detects and stops the infringement of copyright. The Act sought to restrict the circumvention of technological protection that effectively controls access to a work protected under the Act. This term is defined as:

"to circumvent protection afforded by a technological protection measure means avoiding, bypassing, removing, deactivating or otherwise impairing a technological protection measure".

This was considered and compared with a Second Bill bearing the name "The Internet Copyright Infringement Liability Clarification Act of 1998"³ before the US Congress. This is also another unique piece of legislation as it specifically states the limitations on liability for Internet copyright infringement. This sought to amend the US Copyright Law to include Internet copyright and the limitations on Internet copyright. The term of protection envisaged was 25 years.

International Conventions and Treaties

WIPO Treaty

Based on the recommendation by the publishing houses, a Treaty was envisaged by WIPO for the protection of databases. The object of the Treaty was to protect:

"any database that represents a substantial investment in the collection, assembly, verification, organization or presentation of the contents of the database."

This term was 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"⁴. This essentially 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.

The Treaty seeks to provide a minimum term of protection 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 problem that was envisaged in this model was that all sorts of data will be protected at the source under the database treaty, and may never enter the public domain. Problems also would arise relating to the costs of independent data collection. For example, 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.⁵

EU

As far as EU is concerned, protection of databases were envisaged as far back as 1995 through a Directive⁶. Article 3.1 of the Directive provides that "databases which, by reason of the selection or arrangement of their contents, constitute the author's own intellectual creation which are protected as such by copyrights". While the Directive will thereby harmonise the eligibility criteria for copyright protection, it is silent on what is actually protectable by copyright in the database. Therefore, this shall remain as a subject of the national law.

This silence is repeated in the definition in Article 5 that the object of the restricted acts is the expression of the database which is protected by copyright. Though not defined, the term `expression' is intended to ensure that copyright protection does not extend to ideas and principles such as selection and arrangement criteria. However, the fact still remains what may be protected in one nation may not be protected in another. This in itself can breed dispute potentially.

The EU Directive seeks a sui generis form of protection as an alternative for the protection of databases through copyright since the protection under the copyright regime is not very adequate. A sui generis model essentially is a model that is independent of the prevailing intellectual property regime though it seeks to provide the same protection.

EC's sui generis system was modeled on the lines of the draft treaty submitted in the Diplomatic Conference of December 1996. The system seeks to grant to any person who has made a substantial investment in creation of a database, exclusive rights to control extraction (including temporary storage in RAMs) and re-utilization of a quantitatively or qualitatively substantial part of the database, for the period of 15 or 25 years. The criticism, however, is that as the protection envisaged is very similar to the existing framework it cannot become "a new system".⁷

Since the sui generis property rights in a database extraction rights will not form a part of the copyright regime, the entire doctrine of fair use of data will not apply to data protected under the proposed database extraction rights treaty and legislation. If the right is retroactive, it will affect all the existing databases.

TRIPS

As early as in the Uruguay Round, TRIPS envisaged protection of the databases. Article 10.2 of TRIPS states as follows:

Computer Programs and Compilations of Data

1. Computer programs, whether in source or subject or object code, shall be protected as literary work under Berne Convention (1971).

2. Compilation of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such. Such protection which shall not extend to the data or the material itself, shall be without prejudice to any copyright subsisting in the data or material  itself. ⁸

The TRIPS Agreement basically provides for a copyright protection not only for the databases but also for the manner in which the databases have been arranged. Therefore, the protection will extend for the same data copied by a third party but arranged in a different manner. The provision in the Copyright Act of India relating to the protection of computer software is modeled on the above TRIPS principle.

Existing methods of protection

In view of the prevailing legal scenario, publishers and others have sought to protect their databases through various mechanisms as listed below:

1. Electronic database publishers have sought to protect their data through contracts with their customers. These contracts are often restrictive conditions on the reuse or redissemination of the data.

2. Contract and unfair competition laws have been used to provide the protection for the databases where intellectual property laws fail.

3. In some cases encryption is sought to be done for the database to ensure prevention of unauthorized use.

4. A key or a password provides restricted access to certain users only.

5. One of the methods of protection of intellectual property in databases is to create a database on intellectual property law and the protection that the legal system offers and make it available for the public. This database can have information facilitating search, registration, information relating to law reforms and importantly queries regarding IPR by companies to and by resource persons.

Databases in IPR have become a necessity on account of the following reasons:

1. Today knowledge of IPR laws have become absolutely essential internationally. Therefore, a mechanism for facilitating search for data relating to IPRs has become important.

2. With the advent of WTO, international trends have a bearing on individual countries.

3. There may be IPRs needing protection other than the ones identified by the West. Unless these are made available for public knowledge the importance of these will never get highlighted.

Today, there is a need to bring about the mono cultural system for effective functioning. This will help not only the individual nations but also the international regime as a whole.

References and Notes

1. The Washington Post Co. v Datapix, 97 Civ. 1190.

2. 499 US 340

3. Nagaraj, Manav. Copyright Violations on the Internet. Can the WTO Provide a Solution?; Essays on International Trade Law, NLSIU Publication, 1999

4. This definition is similar to the definition in Article 1.2 of the EU Directive

5. Love, James. A Primer on the Proposed WIPO Treaty on Database Extraction Rights, http://www.essential.org

6. Kaye, Lawrence. The Proposed EU Directive for the Legal Protection of Databases _ A cornerstone of the Information Society Readings on IP., Sweet and Maxwell, 1998

7. Supra n. 5

8. http://www.wipo.org

* Paper presented at ITT 99: Towards Information Content for Global Competitiveness, organized by NISSAT, and held during November 16-19, 1999 at IICT, Hyderabad.

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Information Today & Tomorrow, Vol. 19, No. 1, March 2000, p.3-p.6 & p.10
http://vkv.tripod.com/itt20001/iprdb.htm