V.K. Gupta

National Institute of Science, Technology and Development Studies, New Delhi-110 012

Databases play an important role in the development of information market and its products. A large number of databases are available online from foreign vendors which are finding an increasing market in the country. Over the past few years, India is gradually building up capability in the database field and initiatives are taken by domestic vendors and institutions to commercialise databases and related services in a number of fields. The vast expertise and capabilities in computer softwares, that are available in the country, provide excellent opportunities for the establishment and development of a strong commercial base for databases in the country.

Business in databases and related services involves both financial as well as manpower investments. In development of databases, there are considerable investments in computer equipment, software, technical data/expertise and their operations. However, given the technological means, it is quite possible to copy full or substantial part of the database at a fraction of the costs involved in developing the same. This leads to a conflict of interests between the developers and authors of the databases, on the one hand and the users of the databases, on the other hand. Authors or developers are interested to receive remuneration from databases which are based on their intellectual and skill inputs; thus, they want to restrict copying from databases while the users are keen to make use of the information either without paying for it or would like to have copying rights at relatively lesser cost. Restriction on copying without permission and without making payments to the authors of the database is one of the central questions in the protection of databases.

There are no well established guidelines for the protection and use of databases as such. The legal systems in various countries are developing their own responses. The definitions and interpretations are considerably varied. This paper considers the concepts of intellectual property and the current issues and trends in the protection of the intellectual property involved in databases.

What is Intellectual Property

The concepts of intellectual property protection have been developed over a wide range of intellectual activities. Loosely defined, intellectual property is a product of the mind. It is similar to the property consisting of movable or immovable things like a house or a car, wherein the proprietor or owner may use his property as he wishes and nobody else can lawfully use his property without his permission.

The Convention establishing the World Intellectual Property Organisation in 1967, one of the specialized agencies of the United Nations System, provided that `intellectual property' shall include rights relating to:

(i) Literary, artistic, and scientific works
(ii) Performance of performing artists, phonograms and broadcasts
(iii) Inventions in all fields of human endeavour
(iv) Scientific discoveries (No national laws or international treaties give any property rights to scientific discoveries)
(v) Industrial designs
(vi) Trademarks, service marks and commercial names and designations.
(vii) Protection against unfair competition and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.

Various forms of protection of intellectual property include patents, copyright, trademarks, service marks, protection of integrated circuits and knowhow.

Computer software and database are protected under copyright. In some countries, patent protection is also given for computer software. There is no patent protection for software in India.

Legislations for Protection of Intellectual Property

The intellectual property is protected and governed by appropriate national legislations and international treaties.

The main national legislations are :

* The Indian Patents Act, 1970

* The Designs Act, 1911

* The Trade and Merchandise Act, 1958

* The Copyright Act, 1957 with amendments to the Act in 1994

For the protection of databases, it is the Copyright Act that is most important. The key International Treaties on copyright are :

* WTO Agreement on Trade Related Aspects of Intellectual Property Rights.

* Berne Convention for the Protection of Literary and Artistic Works.

* Universal Copyright Act.

Meaning of Database

The term`database' generally refers to an aggregate of information systematically arranged and stored in a computer system or in any other form. In the Indian Copyright Act, there is no specific meanings attached to the expression databases or computer databases. Compilations including databases are defined as literary works(1).

In contrast, the latest version of the draft European Commission Directive on Databases Copyright states "Database means a collection of works, data or other materials arranged in a systematic and methodical way and capable of being accessed by electronic or other means. It includes the materials necessary for the operation and consultation of a database, such as a thesaurus and indexing".

This definition does not include the computer programmes used in the making or operation of databases(2). However, the term compilation is more sharply defined in the U.S. Copyright Act :

"A compilation is a work formed by the collection and assembling of pre-existing material, or of data that are selected, co-ordinated or arranged in such a way that the resulting work as a whole constitutes an original work of authorship".

Incidentally, in the U.S. law the term compilation as defined above refers only to databases comprising non-copyrightable items; there is separate copyright protection defined under the terms `collective works' and `derivative works' for compilations made up of copyrightable items (3).

One, therefore, notes that there are ambiguities and the concept of database is not always clearly understood. This ambiguity implies that there is scope to debate what are the best means of protecting databases.

Protection of Databases

The key questions that are raised in the protection of databases are :

How best the intellectual property in databases is to be protected? Whether or not the efforts put in establishing a database qualify the basic conditions for being protectable under the copyright laws? Is it essential to seek stricter control measures for the protection of databases or somewhat lesser control measures are better? Although protection of databases under copyright is the most sought after arrangement yet there are alternative opinions preferring lesser control in the database area in the interest of creating a strong database industry.

Generally, three broad approaches are followed in the protection of databases. These are :

(i) Firstly, steps have been taken to incorporate database protection in the copyright laws.

(ii) Secondly, in addition to copyright protection, additional restrictions are put on the use of databases through `Contracts'.

(iii) Thirdly, legislative measures should be enacted for a sui generis system of protection for databases.

The salient aspects relating to each of these approaches are described in the following sections.

Protection of Databases Under Copyright Laws

Most national systems have gradually moved in the direction of providing protection to computer software and databases under copyright law. In principle, it is the skill, labour and judgement of the author that is protected irrespective of the form in which the product appears e.g. whether one types a book on a old-fashioned typewriter or transforms it in a digitized form or in handwritten form. Any reproduction of the work including translations is considered a reproduction of the original.

A work is copyrightable if described as being fixed in a tangible medium of expression when its embodiment in a copy or phonorecord, or otherwise communicated for a period of more than transitory duration. In other words, if a work is created on a word processor so that it is projected briefly on screen or captured only momentarily in the memory of a computer that work is not fixed and cannot be protected by copyright.

Computer databases, which are electronic files of information "formed by the collection, assembly, and arrangement of pre-existing materials or data" are thus, considered protected, provided the resulting work as a whole constitutes original authorship.

Provisions under WTO Agreement

The GATT negotiations led to the conclusion of the agreement on trade related intellectual property rights which include substantial provisions relating to protection of computer software and databases under copyright law. The newly constituted World Trade Organisation (WTO) will be the responsible body for the implementation of the agreement. Two basic principles put forth in the Agreement for the protection of databases are :

1. The copyright protection of compilation of data or other material in machine-readable or other form is given to the intellectual creations of the selection or arrangement of the contents as such.

2. The protection is not extended to the data or material itself and is without prejudice to any copyright subsisting in the data or material itself.

Provisions under the Indian Copyright act

The Indian Copyright Act, 1957 was amended in 1994 to extend more effective protection to owners of copyright by making provision for the special nature of computer programmes as literary works and for the protection of computer generated works. The amendments included in the meaning of `Literary Work' the works such as computer programmes, tables and compilations including computer databases. Salient aspects of the amendments are given in the Annexure.

Key Issues in Copyright Protection of Databases

Some countries offer easy protection. For example, in the Netherlands, copyright protection for compilations is granted if the compilation is intended for publication. This is deliberately designed to protect publications such as telephone directories, timetables, and catalogues against unauthorized reproduction. Similarly, Scandinavian countries allow limited copyright protection (only lasting for ten years) to catalogue type material such as telephone directories and timetables (their so-called catalogue rules.)

In theory, databases may be protected per se under copyright within a national law. Key issues in copyright protection of databases are concerned with

1. Individual records within the database are recognized as literary works and are thus individually and separately have their own proprietary value.

2. Mode of compilation of database may be protected solely as compilations because skill and effort were extended in making the collection.

There is a view that taking a database and simply rearranging the data, creates something new and is not infringement of the original database copyright. The alternative view is that now a days the data in a database are not placed in the computer memory in any particular order, and are simply available for retrieval so the former view implies an infringement of the original database.

Another view states that if there was no skill in selecting the individual items that go in a compilation or database and if there is no skill in the arrangement (no addition of keywords or indexing terms, simply a listing), then such a compilation should not justify copyright protection.

In contrast, recently, the Delhi High Court in a case held that even if only labour had gone into the making of a database, it is good enough and a copyright subsists in the compilation. A US court in a similar case involving copying of telephone directory refused copyright protection on the grounds that it was not an intellectual task as it did not involve special skills (4).

However, what is important is that compilation of databases do need classification systems to organise data. The intellectual skills of `data organisation' facilities quick retrieval and a variety of analyses of data(5).

Databases - whether in online form, CD-ROM form, or any other form _ are thus treated as a standard copyright work. Such compilations should not be downloaded or copied in any other way without prior permission (except for small portions only for fair use such as research or private study). They should not be distributed around local or wide area networks to multiple key stations without prior permission.

Databases of Abstracts of Published Articles

A lot of debate has ensued whether a database of abstracts infringes copyright of original authors. In this case, two questions are asked :

(i) do the abstracts simply report facts;

(ii) do the abstracts act as substitutes for the original texts?

In case of (i), there is no copyright in a fact or set of facts. So if an original article reports such facts, and the abstract simply extracts the facts themselves, then there can be no infringement. If, on the other hand, the original item included some legthy text, which is faithfully reproduced in the abstract, then it is likely to be considered a copyright infringement. The abstract should be significantly shorter than the original text, and should not act as a substitute for it.

It is important to recognize that just because an article has been published, it is not then in the public domain so that anyone can lift portions from it to reproduce in an abstracting service. The abstracting service must both shorten the item significantly and make significant changes to the original. Author's abstract or use of an abstract accompanying an article in a periodical is not an infringement of a copyright.

Protection of Databases Through Contracts

Many in the field of database services have believed that contracts may provide an effective method of controlling access to and use of a database. Contracts permit an user to use the database under a license from the database owner on payment of a fee based upon the amount of usage and or royalty. Such a license does not pass the ownership of the database to the user. Licenses are negotiated in good faith between the owner (the licensor) and the organization that wishes to exploit the database (the licensee). A contract may be used in addition to the protection of the database under the copyright laws.

Characteristic Features of a Contract

The characteristic features of a contract for the supply and use of a database can be described as follows:

1. The grant of license to the user is in respect to load and maintain on its computer system the database owned by the licensor (wherever possible, online access is provided to the licensor's database, which does not necessarily include access to the database through optical media). Licensee is granted for specific activities like access to databases, search services or information retrieval activities.

2. An important safeguard from the user's point of view in a contract is that no part of the database provided by the owner should be in violation of any patent, trademark, copyright trade secret or other proprietary right of any third party. It should be the responsibility of the licensor to defend the user from any such claims by third parties.

3. Copyright on the databases are retained expressly by the owner. No rights to property on the databases are passed onto the user. All the intellectual property rights are owned by the supplier of the database in the manuals and other user documentation supplied alongwith the databases.

4. Proprietary restrictions are placed on the users to ensure the integrity of the databases and to safeguard them from unauthorised (in total or part) access, copying, changing, translation, adaptation and use.

5. Examples of some of the restrictions that may be put on the use of databases are :

• No additional data may be added to the database supplied by the licensor.

• User does not prepare any subset of the data from the database by extracting any data from the original database.

• No data derived from the original database is added to any other database.

6. In the specific circumstances, user is permitted to keep a back up copy of the original database as a protective measure with the condition that the same shall be destroyed in the event of termination of the agreement.

7. Specific terms are set to claim damages by the licensor in case the deatabase or any part thereof is found in the possession of an unauthorised persons due to the omissions on the part of the user.

Establishing a Sui Generis System

Draft EC Directive

The European Commission has proposed a sui generis system for the protection databases. The latest version of the draft directive on database copyright was issued in April 1995 (2). The directive is yet to become the final directive. The objective of the draft directive is to harmonise the law on database copyright throughout the European Union. The draft includes paper as well as electronic databases, and also multimedia products. Protection for databases is proposed to last for fifteen years from the end of the year when the database was completed or from when it was first made available to the public.

The new sui generis system proposes to apply to listings such as telephone directories and share price listings, but it could potentially apply to other collections of data, such as electronic dictionaries, for which the individual units of information do not merit copyright in their own right.

Possible Protocol to Berne

The Berne Convention for the protection of literary and artistic works provides a common international understanding for the protection of works under copyright. Deliberations have been made under the aegis of WIPO to incorporate amendments to the provisions of International Copyright treaties like Berne Convention in the context of changes taking place in the field of copyright protection of computer software and works like databases(6).

A Committees of Experts was established to deal with the possible Protocol to the Berne Convention. Of the ten issues identified for consideration by the Protocol Committee, two related to computer programs, and databases. One of the conclusions concerning databases was that the question of protection of databases should be dealt within the context of a proposed Protocol; and that it would be desirable to study the protection of databases which contained large amounts of data or information but which did not meet the criterion of originality.

New Technologies : Issues and Trends

Cyberspace

By cyberspace, one means the sum total of all electronic messaging and information systems including commercial data services, research data networks, electronic publishing, networks and network nodes, E-mail systems, electronic data interchange systems, and electronic funds transfer systems. In principle, the databases and compilations are protected under the copyright laws even if these enter the cyberspace, the fact that they are easily accessible tends to make such protection rather meaningless. The ease of copying and distribution make such copyright enforcement difficult.

CD-ROM Technology

CD-ROM technology dates back to the late 1970s when Phillips and Sony introduced compact disc audio. Later CD-ROM (compact disc/read-only-memory) was introduced. The CD-ROM format provides reliable access to a wide variety of media, such as computer data, text, audio and video. A CD-ROM is made of plastic and the data stored on each disc are digitally recorded on one track that begins at the centre of the disk and extends about 3 miles to the outer edge of the disc. The strength of CD-ROM format is its ability to provide access to large amounts of data through powerful search and downloading functions. The storage capacity of CD-ROM is phenomenal.

During the late 1980s the kind of databases available on CD-ROM were mostly indexes and reference sources. In the early 1990's this changed to almost half the CD-ROM products being source databases that contained a variety of information sources such as full-text materials (eg. almanacs), numeric data (eg. census data), computer software, images (eg. maps) or sounds (music).

Digital technology has posed a dilemma for the copyright works including databases. The key issue is, should downloading be permitted?

Multimedia

The most recent trend in CD-ROMs is the growth of multimedia databases. These databases, which incorporate text and images, audio, video or animations (or a combination) represent a fundamental change in the way information is presented. The multimedia titles on CD-ROM, have doubled from 40 in 1989 to 1435 in 1993. The copyright implications of multimedia are more complex than those for databases. This newly coined term refers to the use of DIP (document image processing) equipment, which is being increasingly used by large organizations to scan in and achieve internal documentation, typically onto WORM (write once read many times) discs. These discs, or other storage media, can then be accessed from multiple locations within the organizations using local and wide area networks to retrieve and inspect the original documents.

Issue of Downloading

Downloading is the electronic transfer of information from one database to another including that from an online database service through one's own local microcomputer. Many publishers accept the idea that there are legitimate reasons for the temporary retention of data obtained from an online search, and they are willing to give such permission. Normally, downloading from a database shall amount to copyright infringement. However, in view of more and more users wanting to retain records permanently to make them part of their own local electronic library, a need is felt to give attention to such user needs.

Users want and need information that is timely and cost effective. From the user's point of view, the downloading is considered a way of life. One possible way to minimise losses to the authors of databases in such a case is to work out ways to pay reasonably for the use and reuse of the information resource.

Remote Access Through Telecommunications Links

Access through telecommunication links is also becoming important for commercial online databases. This technology gives users remote access to a database stored in a central computer system. There are copyright issues involved in transmission of data through satellites which are not yet settled.

Computer Generated Works

Ownership of the works that are generated by computers is an important issue. Are these works proper subject matter for copyright? If so, who owns the copywright : the person who runs the computer program or the person who developed the software? WIPO model laws defined computer generated works as those wherein the work is produced by means of computers in a manner such that it is not possible to identify the authors of the various creative contributions because of the indirect nature of those contributions and that such contributions are merged in the totality of the work. The Indian definition of author states categorically that the author of a computer generated work will be the person who causes the work to be recorded. It needs to be reconciled in view of other prevailing interpretations.

Regarding the ownership of copyright in computer generated works the following observations are made(7):

1. If the program is capable of producing one work only, then the author who has given instructions or the composer and the programmer who not only provides technical assistance in utilization of the computer but whose contribution is a creative one should be considered the author or co-authors of the resulting work, as the case may be;

2. If the program is capable of producing different results and the author has himself made a choice among these results, he should be regarded as the author of the resulting work. If he has asked a programmer or another person to choose the elements for the composition of the final version, then this programmer or another person and the author himself should be normally regarded as co-authors to the extent that they make a creative contribution;

3. If the program is capable of producing different results but the final choice is made by a third party, the mere choice by itself should not be regarded as creative contribution.

Protecting Personal Information in Databases

These days many databases are established which contain the personal information about individuals e.g. members of a library or business card holders. Such databases have raised issues regarding protection and misuse of personal information of individuals. Misuse may occur wherein unwanted mail is dumped to individuals whose addresses are obtained from the computerised databases. Alternatively, if a database service misspelled the name of an author in reference to one of the author's papers then the evaluated performance of the author measured in terms of the number of articles published may be lowered.

Many countries have responded to privacy concerns of such databases by introducing data protection legislation(2). The legislation allows individuals who are the subject of such databases the right to know what records there are about them and the contents of those records. Now a days leading libraries like British Council Library obtains a declaration from the members to the effect whether their personal information can be made availbale to other databases or not.

The issue whether data protection applies to data on CD-ROM is not yet settled. As an user of CD-ROM, one has no say in the content of the CD-ROM and cannot amend it. One is not liable to data protection law. Alternatively, it is argued that as one could download CD-ROM database onto magnetic tape and then amend it, one is subject to the law about the data.

Future

The practice of storing and retrieving copyrighted works in computer systems and maintenance and operation of database is likely to grow. In view of the development towards international computerized information systems and the increase of transborder data flow, it is highly desirable to have international cooperation in reaching common and practical solutions to problems of database protection.

References

1. Indian Copyright Act with amendments in 1994, 1994.

2. LISLEX : Legal Issues of Concern to the Library and Information Sector. J Inf Sci 1995,21 (4), 300-4

3. Samuels, J. M. ed: Patent, Trademark & Copyright Laws, USA, 1989.

4. Sathyanarayana, NV: Copyright for Database : India vs USA, U&I Newsletter, Bangalore, November 1995.

5. Warshofsky F: The Patent Wars. John Wiley, New York, 1994.

6. Freegard, MJ: The Impact on Copyright of Emerging Technologies: New Technologies of Reproduction and Communication and Possible new International Instruments, presented at WIPO Regional Training on Intellectual Property for Developing Countries of Asia and the Pacific, Colombo, 1993.

7. Polansky, BF: International Recommendations for Handling Copyright Questions about Computer Generated Works : What are our Concerns? J. Chem. Inf. Comput. Sci. 1983, 23, 168-71.

Annexure

Indian Copyright Act — Salient Aspects Relating to Protection of Databases

Amendments to the Indian Copyright Act have been incorporated to extend more effective protection to owners of copyright and related rights in the context of technological developments affecting the reproduction of works. Key amendments related to make adequate provisions for the special nature of computer programmes as literary works and for the protection of computer generated works.

• `Copyright' means the exclusive right to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely

(a) In the case of literary, dramatic or musical work (not being a computer programme) :

1. to reproduce the work in any material form including storing of it in any medium by electronic means;

2. to issue of copies of the work to the public not being copies already in circulation;

3. to make any translation of the work.

4. to make any adaptation of the work.

(b) In the case of computer programme :

1. to do any of the acts specified in (a) above

2. to sell or give on hire or offer for sale or hire any copy of the computer programme, regardless of whether such copy has been sold or given on hire on earlier occasion.

• The meaning of `Literary work' includes computer programmes, tables and compilations including computer databases.

• The definition of computer includes any electronic or similar device having information processing capabilities. Computer programme means a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result.

• Duplicating equipment means any mechanical contrivance or device used or intended to be used for making copies of any work.

• The meaning of publication is making a work available to the public by issue of copies or by communicating the work to the public.

Author

• In relation to any literary, dramatic or artistic work which is computer generated, author means the person who causes the work to be created.

• The author of a work is the owner of the copyright herein provided that in the case of a work made in the course of author's employment under a contract of service or apprenticeship. The employer shall, in the absence of any agreement to the contrary be the first owner of the copyright therein.

• In the case of a work made or first published by or under the director or control of any public undertakings, such public undertaking shall in the absence of any agreement to the contrary be the first owner of the copyright therein.

• Public undertakings means an undertaking owned or controlled by government or a government company under the Companies Act or a body established by or under any Central, Provincial or State Act.

Duration

• Copyright subsists in the literary work published within the life time of the author until (sixty years) from the beginning of the calendar year next following the year in which the author dies.

• In the case of Governemt work, where Government is the first owner of the copyright therein, copyright shall subsist until sixty year from the beginning of the calendar year next following the year in which the record is first published.

Exemption

• In the following cases it does not constitute an infringement:

— a fair dealing with a literary work (not being a computer programme) for the purposes of private use and research and preparation of criticism or review.

— the making of copies of adaptation of a computer programme by the lawful possessor of a copy of such computer programme from such copy.

1. in order to utilise the computer programme for the purpose for which it was supplied; or

2. to make backup copies purely as a temporary protection against loss, destruction of damage in order only to utilise the computer programme for the purpose for which it was supplied.

• Purposes of teaching research or scholarship includes (i) purposes of instructional activity at all levels in educational institutions including schools, colleges, universities and tutorial institutions, (ii) purposes of all other types of organised educational activity.

• Purposes of research does not include purposes of industrial research, or purposes of research by bodies corporate (not being bodies corporate owned or controlled by government) or other association or body of persons for commercial purposes:

• An owner of copyright in his individual capacity continue to have the right to grant the licenses in respect of his own works consistent with his obligation as a member of the registered copyright society.

• A copyright society can validly function without getting itself registered. It shall frame a scheme for payment of remunerations to individual copyright owners.

Assignment & Licensing

• Exclusive licence means a licence which confers on the licensee or on the licensee and the persons authorized by him, to the exclusion of all other persons (including the owner of the copyright) any right comprised in the copyright in a work, and "exclusive licensee", and `exclusive lincensee' shall be construed accordingly.

• No assignment of the copyright in a work shall be valid unless it is in writing signed by the assignor or by his duly authorised agent.

• The assignment of copyright in any work shall

1. Identify such work

2. Specify the rights assigned, the duration, territorial extent of such assignment and the amount of royalty payable and

3. Be in writing signed by the assignor or by his duly authorised agent.