SECTION: PROPRIETARY RIGHTS; Vol. 14, No. 1; Pg. 17

LENGTH: 5782 words

HEADLINE: Proposed International Protection of Electronic Databases

BYLINE: By Jack E. Brown; Jack E. Brown is a member of Brown & Bain in Phoenix, Ariz., Tucson, Ariz., and Palo Alto, Calif. This article is adapted from an October 17, 1996, address at the Cumber-land School of Law in Birmingham, Ala.

BODY:

The term "One World" when it was employed by Wendell Wilkie in the 1940s, was, at best, a euphemism. Today, at least in the world of commerce and communications, it is much more of a reality. That reality has created some powerful centripetal forces toward a converging of national laws similar to or at least harmonious with one another in the protection accorded to intellectual property. The recent international proceedings relating to the protection of databases provides an instructive example.

U.S. Law

The United States Copyright Act defines a "compilation" as:

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. n1

The protection accorded is qualified by the statutory provision that protection:

extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work. n2

n1 17 U.S.C @ 101.

n2 17 U.S.C. @ 103(b).

A considerable body of jurisprudence was formed in decisions attempting to apply that statutory direction to fact-based works or works of information -- from a radiator catalog n3 to a compilation of baseball statistics n4 to an encyclopedia of trivia. n5 Generally speaking, those decisions held that such works were "fundamentally different from more artistic works." n6 In essence, the cases developed a two-pronged approach:

1. In order to protect only the "creative" contributions of authors and permit the ready use of facts that, in the nature of things, are not subject to creation but exist independent of the author, comparisons of accused works with copyrighted works were confined to the "creative" and "original" parts of the copyrighted work; and

2. In order to provide only "thin protection," the cases imposed an infringement standard of "virtual identicality" instead of "substantial similarity" for comparison of the works as a whole.

n3 Cooling Sys. & Flexibles, Inc. v. Stuart Radiator, Inc. 777 F.2d 485, 491 (9th Cir. 1985) (radiator catalog).

n4 Kregos v. Associated Press, 3 F.3d 656 (2d Cir. 1993). cert. denied, 510 U.S. 1112 (1994).

n5 Worth v. Selchow & Righter Co., 827 F.2d 569 (9th Cir. 1987). cert. denied, 485 U.S. 977 (1988). See also Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197 (9th Cir. 1989) (a compilation of forms and collections of data). Cf. Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485, 488 (9th Cir.) (denying protection to description of how to play winning Scrabble and stating. "factual works are different."), cert. denied, 469 U.S. 1037 (1984).

n6 Cooling Sys., 777 F.2d at 491 ("Copyright law considers factual works to be fundamentally different from more artistic works."). The distinction generally was endorsed by copyright scholars. See Robert A: Gorman, "Fact or Fancy? The Implications for Copyright," 29 J. Copyright Soc'y 560, 563 (1982) ("The basic distinction between fact works and works of fancy is, I believe, valid and of significance for copyright analysis."). But see Jane C. Ginsburg, "Creation and Commercial Value; Copyright Protection of Works of Information," 90 Colum. L. Rev. 1865, 1913-1916 (1990), explaining that the rationale supporting the distinction between ideas and expression, protecting only expression, does not necessarily support a similar distinction between facts and expression since a copyist can always acquire the facts from the public domain with no more difficulty than encountered by the first author.

Those cases culminated in the Supreme Court's 1991 decision in Feist Publications, Inc. v. Rural Telephone Service Co., Inc., n7 holding that the alphabetical listings in the white pages of telephone directories did not involve sufficient authorship to warrant copyright protection. Justice O'Connor's opinion for the Court recognized that factual compilations "may possess the requisite originality" provided by the compiler's selection and arrangement of material n8 but found that "garden-variety" alphabetical-by-surname listing of telephone subscribers lacked even the modicum of creativity necessary to transform mere selection into copyrightable expression. n9 In reaching that conclusion, the Court was instructed by both @@ 102(b) and 103(b) of the Copyright Act. n10 The opinion emphasized that "Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author." n11 The Court also emphasized that "Even if a work qualifies as a copyrightable compilation, it receives only limited protection" -- i.e., "copyright in a factual compilation is [inevitably] thin." n12

n7 499 U.S. 340 (1991).

n8 499 U.S. at 348: Even a directory that contains absolutely no protectible written expression, only facts, meets the constitutional minimum for copyright protection if it features an original selection or arrangement. The Court cited its decision in Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 547 (1985) (affirming protection of President Ford's description of events and personages, but not the historical facts themselves) as supporting authority.

n9 499 U.S. at 362.

n10 See 499 U.S. at 356 and 359. Section 102(b) provides that: In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. Section 103(b) is quoted in material part at n.2, supra.

n11 499 U.S. at 348.

n12 499 U.S. at 359 and 349.

Notably, Justice O'Connor used the occasion to emphatically reject any "sweat of the brow" doctrine to protect factual compilations that reflected the author's industry where his or her work did not reflect any literary skill or originality. n13 The doctrine was flawed, her opinion for the Court explained, in that it extended copyright protection to the unprotectable facts in a factual compilation. n14

n13 499 U.S. at 352-356.

n14 499 U.S. at 353-354.

Moreover, the court declared that the requirement of originality (independent creation plus a modicum of creativity) was "constitutionally mandated for all works." n15 Although that declaration was unnecessary to the decision, n16 the opinion stated the constitutional bases of the decision no fewer than 13 times n17 -- making the point virtually impossible to ignore.

n15 499 U.S. at 346-47, 351. The Constitution authorizes Congress to "secure for limited times to authors . . . . the exclusive right to their respective writings." U.S. Const. Art. 1, @ 8, cl. 8.

n16 See Jane C. Ginsburg, "No 'Sweat'? Copyright and Other Protection of Works of Information after Feist v. Rural Telephone," 92 Colum. L. Rev. 338, 382 n.206 (1992) (hereinafter referred to as "Ginsburg"). The Constitutional issue was not briefed or argued by either side. Id. at 379.

n17 Paul Goldstein, Copyright, 38 J. Copyright Soc'y 109, 119 (1991).

Professor Robert C. Gorman has pointed out that, in electronic data bases, the computer software utilized to search for and retrieve and arrange the data may qualify for protection apart from what protection may be available for the data in its immediate composition. n18 However, copyright protection for computer programs has itself been dramatically shrunk by recent decisions of lower courts which, notwithstanding the congressional direction that they should be treated as "literary works," have treated computer programs as mere "functional" constructs or "utilitarian" articles. n19 Those decisions have been enhanced in stature by the affirmance by an equally divided court of the decision of the First Circuit in Lotus v. Borland, n20 rejecting copyright protection for the Lotus 1-2-3 menu tree command structure of the Lotus spreadsheet computer program on the ground that it was a "method of operation" for which protection was precluded under @ 102(b) of the Copyright Act. n21

n18 See Robert A. Gorman, The Feist Case: Reflections on a Pathbreaking Copyright Decision, 18 Rutgers Computer & Tech. L.J. 731, 768 (1992) (hereinafter referred to as "Gorman").

n19 See, e.g., Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 704-05 (2d Cir. 1992), aff'g the copyright ruling in 775 F. Supp. 544 (E.D.N.Y. 1991) (computer programs are "essentially utilitarian" and their "ultimate function or purpose is the composite result of interacting subroutines"); Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1524 (9th Cir. 1992) ("Computer programs are, in essence, utilitarian articles -- articles that accomplish tasks" and that contain "many logical, structural, and visual display elements that are dictated by the function to be performed, by considerations of efficiency, or by external factors such as compatibility requirements and industry demands."); Apple Computer, Inc. v. Microsoft Corp., 799 F. Supp. 1006, 1023 (N.D. Cal. 1992) (a computer graphical user interface serves "a purely functional purpose in the same way that the visual displays and user commands of the dashboard, steering wheel, gear shift, brakes, clutch, and accelerator serve as the user interface of an automobile" or other "purely functional items or an arrangement of them for functional purposes."). aff'd, 35 F.3d 1435 (9th Cir. 1994), cert. denied. 115 S.Ct. 1176 (1995).

n20 49 F.3d 807 (1st Cir. 1995), aff'd by an equally divided court, 116 S. Ct. 804 (1966).

n21 The Court opined that a "method of operation," as that term is used in @ 102(b), refers to the means by which a person operates something, whether it be a car, a food processor, or a computer [49 F. 3d at 815] and explained [at 817] that "in many ways, the Lotus menu command hierarchy is like the buttons used to control, say, a video cassette recorder."

The methodological approach decreed in the leading lower court decision of Computer Associates v. Altai was to "break down the allegedly infringed program into its constituent structural parts" and then "sift out all non-protectable material" so as to protect only the "kernel, or possibly kernels, of creative expression [left] after following this process of elimination. n22 The consequence of such "dissection" analysis has been in effect to vitiate meaningful copyright protection for more than literal line-by-line copying of computer code. n23

n22 982 F.2d at 706.

n23 See, e.g. Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1446 (9th Cir. 1994) ("analytic dissection," filtering out "the vast majority of features" that defendants were held entitled to use by virtue of a license from Apple to Microsoft, led to holding that the appropriate infringement standard required the works to be "virtually identical"), cert. denied, 115 S. Ct. 1176 (1995); MiTeck Holdings v. Arce Eng'g Co., 864 F. Supp. 1568, 1584 (S.D. Fla. 1994) (where only five of eighteen elements were entitled to copyright protection when considered independently, that was held to be an insufficient number to warrant an infringement finding of substantial similarity), aff'd, 89 F.3d 1548 (11th Cir. 1996); and Mitel, Inc. v. Iqtel, Inc., 896 F. Supp. 1050, 1056 (D. Colo. 1995) (plaintiff's command codes could be copied with impunity because they had "become a common practice or industry standard in the call controller market," thus undermining prior decisions rejecting the need to achieve "compatibility" as a defense to copying).

The European Reaction -- EEC Directive 95

The forceful rejection of copyright in the Feist opinion, compounded by the near-hostility shown in other cases to the protection of computer programs as "literary works," was heard by the community of electronic database creators and users around the world. An early response of the European Economic Commission (EEC) was a proposal, introduced in 1992, designed to immunize European law against the Feist virus by establishing a 15-year sui generis right for the legal protection of electronic databases. That proposal resulted in the adoption on March 11, 1996, of a Directive by the European Parliament and the Council of the European Union. n24

n24 Commission Directive 7934195 of March 11, 1996, on the Legal Protection of Databases, 1966 O.J. (L077) 20.

The Directive was premised on a finding that:

an investment in modern information storage and retrieval systems will not take place within the Community unless a stable and uniform legal protection regime is introduced for the protection of the rights of database manufacturers. n25

n25 Id. at Clause 12.

It acknowledged that "protection by copyright should be confined to . . . . the selection or the arrangement of the contents of the database [that] is the author's own intellectual creation," but opined that "such protection [also] should cover the structure of the database." n26

n26 Id. at Clause 15.

In essence, the Directive was that:

Member States shall provide for a right for the maker of a database which shows that there has been qualitatively andor quantitatively a substantial investment in either the obtaining, verification, or presentation of the contents. n27

The "right" to be provided to the owner is:

to prevent acts of extraction andor re-utilization of the whole or a substantial part, evaluated qualitatively andor quantitatively of the contents of the database. n28

n27 Id. at Ch. III, art. 7, para. 1.

n28 Id.

The Directive specifically declares that the sui generis right to protection attaches "irrespective of the eligibility of [the database or its contents] for protection by copyright or by other rights." n29 Protection is accorded even to a database made available to the public against acts "which conflict with a normal exploitation of the database or unreasonably prejudice the legitimate interests of the maker of the database." n30

n29 Id. at Ch. III, art. 7, para. 4.

n30 Id. at Ch. III, art. 8, para. 2.

Another provision provides that:

A lawful user of a database which is made available to the public in any manner may not cause prejudice to the holder of a copyright or related right in respect of the works or services contained in the database. n31

n31 Id. at Ch. III, art, 8, para. 3.

Events Leading to the Proposed Treaty

In the United States

The threatened loss of legal protection for electronic databases also was noted in the United States. As the world's leading producer of computer software, the United States could hardly view with indifference a blossoming of the production and distribution of electronic databases in other countries and a withering of such activity at home.

On May 23, 1996, Representative Carlos Moorhead introduced the Database Investment and Intellectual Property Antipiracy Act of 1996, n32 designed, he explained, "to encourage continued investment in the production and distribution of valuable new databases." n33 Drawing for guidance on the European Directive, among other sources, the bill would (by both civil remedies and criminal penalties) prohibit any person to:

extract, use or reuse all or a substantial part, qualitatively or quantitatively, of the contents of a database subject to this Act in a manner that conflicts with the database owner's normal exploitation of the database or adversely affects the actual or potential market for the database. n34

n32 H.R. 3531, 104th Cong., 2d Sess. (May 23, 1996).

n33 Congressional Entry 1 of 8, May 23, 1996.

n34 Id., @ 4.

At the same time, representatives of the United States presented to the Committee of Experts of the World Intellectual Property Organization (WIPO) a proposal that included draft substantive provisions of a treaty calling for a harmonious approach to a sui generis protection of databases, supplementing whatever protection might be available by copyright or otherwise. n35 It differed substantively from the European proposal principally in proposing a 25-year, instead of a 15-year, term of protection. n36

n35 WIPO CRNRIDC16, Memorandum prepared by the Chairman of the Committees of Experts, at para. 5 (Aug. 30, 1996).

n36 Id. at Art.J, para. 1.10 (Aug. 30, 1996) ("The most significant difference between the United States bill and the European Directive is that the former proposes a 25-year term of protection.")

In WIPO

In February 1996, the European Community and its member states submitted a proposal, closely following Directive 95, to WIPO for the international harmonization of sui generis protection of databases.

On August 30, the Director General of WIPO published a draft text of a treaty to be considered by the governments and governmental organizations to be invited to a diplomatic conference scheduled for December 1996. Noting that it followed closely the substantive provisions of the Directive adopted by the European Parliament and the Council of the European Union, the WIPO proposed treaty defines a protected database as a:

collection of independent works, data, or other materials arranged in a systematic or methodical way and capable of being individually accessed by electronic or other means. n37

n37 Draft Treaty on Intellectual Property in Respect of Databases, WIPO CRNRIDC16, Art. 2(i) (Aug. 30, 1996).

It declares that the maker of a database eligible for protection under the treaty "shall have the right to authorize or prohibit the extraction or utilization of its contents." n38 The proposal presents 25- and 15-year terms of protection as alternatives. n39 Two alternative enforcement measures also are presented, one describing "expeditious remedies to prevent infringements . . . . and remedies which constitute a deterrent to further infringements," n40 and an alternative which incorporates the enforcement provisions of the TRIPs Agreements by reference. n41

n38 Id. at Art. 3.

n39 Id. at Art. 8.

n40 Id. at Annex on Enforcement of Rights, Art. 1.

n41 Id. at Art. 13, Alternative B. The World Trade agreement, a product of the Uruguay Round trade negotiations, includes certain agreements pertaining to Trade Related Aspects of Intellectual Property Rights (TRIPs).

Constitutionality and Enforcement

Constitutionality

In light of the Supreme Court's Feist opinion that the result in that case was mandated by the Constitution, it may well be asked whether the other branches of government, by legislation or treaty, can provide the protection to factual compilations that the Supreme Court's interpretation of the Constitution has denied.

Professor Gorman has concluded that, in light of Feist and the preemption doctrine incorporated in @ 301 of the Copyright Act (barring State claims "that are equivalent to any of the exclusive rights within the general scope of copyright"), the Copyright Act preempts the state tort of misappropriation of facts and compilations. n42 He has suggested, however, that a federal statute enacted under Congress' "plenary power" to regulate interstate and foreign commerce n43 might be sustained. n44 Professor Ginsburg has fashioned a persuasive argument that would support the constitutionality (under both the Patent-Copyright and the Commerce powers accorded to Congress) of a Congressional enactment of a misappropriation statute that would provide some anticopying relief. n45

n42 See Gorman, supra n. 18, at 760-762 (1992).

n43 U.S. Const. Art. I, @ 8 (granting to Congress the power to "regulate commerce with foreign nations, and among the several States").

n44 See Gorman, supra n. 18 at 765.

n45 Ginsburg at 341, 369-374 (1992).

A key decision in the required constitutional analysis is International News Service v. Associated Press. n46 In that case, the court affirmed the entry of a "lead time" preliminary injunction against the practice of INS to copy uncopyrighted news reports published by AP in its East Coast early edition members' newspapers, or posted on bulletin boards, and to transmit the reports by telegraph and telephone for publication in the INS members' newspapers (including some on the West Coast, published even earlier than the AP members' West Coast papers). n47

n46 248 U.S. 215 (1918). The parties are referred to as "INS" and "AP," respectively.

n47 There was no consideration by the Supreme Court of the injunction entered against the INS alleged practice of bribing employees of AP member newspapers to provide the AP reports to INS before any publication in an AP paper. See 248 U.S. at 231.

As to copyright (which was not claimed), the court pointed out that, although "no doubt news articles often possess a literary quality" and "such an article, as a literary production, is the subject of copyright," the "news element -- the information respecting current events contained in the literary production -- is not the creation of the writer, but is a report of matters that ordinarily are public juris; it is the history of the day." n48 However, the court held that "the case must turn upon the question of unfair competition in business." n49

n48 See 248 U.S. at 234.

n49 See 248 U.S. at 235.

As between the competing parties, the court said news matter was "stock in trade, to be gathered at the cost of enterprise, organization, skill, labor, and money," and therefore to be regarded as "quasi property, irrespective of the rights of either as against the public." n50 Thus, injunctive relief was appropriate against "misappropriation" of any AP reports '"until its commercial value as news . . . . had passed away"' -- a term which the Supreme Court suggested might be improved by being made more specific. n51

n50 See 248 U.S. at 236.

n51 See 248 U.S. at 232, 245-46.

Justices Holmes and McKenna concurred that INS's conduct had enough of the flavor of fraud as to the source that produced the report to warrant the granting of a remedy, but they would approve injunctive relief for a number of hours only if made subject to the conditional clause "unless [INS] gives express credit to [AP]." n52

n52 248 U.S. at 248.

Justice Brandeis dissented, finding no implied representation by INS other than its belief that the news transmitted was from a credible source n53 and opining that INS could not otherwise be held liable because the news, once published, was not property and its taking, even for competitive use, is not unlawful. n54 Justice Brandeis reasoned that "an essential element of individual property is the legal right to exclude others from enjoying it" and "the fact that a product of the mind has cost its producer money and labor, and has a value for which others are willing to pay, is not sufficient to ensure to it this legal attribute of property." n55 The general rule stated by Justice Brandeis as governing the case was that even "the noblest of human productions -- knowledge, truths ascertained, conceptions, and ideas -- become, after voluntary communication to others, free as the air to common use." n56

n53 248 U.S. at 261.

n54 248 U.S. at 257-258.

n55 248 U.S. at 250.

n56 Id.

INS was cited in Feist as "the best example" illustrating that decisions of the Supreme Court under the 1909 Copyright Act "did not permit the 'sweat of the brow' approach." n57 The Court did not so much as mention the INS holding granting protection against misappropriation of the plaintiff's reports except in a footnote (having the appearance of an afterthought) noting that "The Court ultimately rejected judgment for AP on non-copyright grounds that are not relevant here." n58

n57 499 U.S. at 353.

n58 Id. at 354.

Although the misappropriation holding of INS has been subjected to academic criticism n59 and was treated so circumspectly in Feist, it continues to be respected as authoritative by lower federal courts. See NBA v. Sports Team Analysis & Tracking Sys., Inc., n60 which applied New York common law to issue a permanent injunction against dissemination of real-time information concerning ongoing games (e.g., the score, the team in possession, and the game time remaining), which was described as the NBA's "most valued asset," n61 on the ground that defendants' appropriation of that data dilutes the commercial value of NBA's "proprietary interests in the NBA games" (also described as "its property rights in real-time information"). The court cited a number of cases, including the INS case. n62 Thus, it seems appropriate to view INS as a valid precedent supporting the constitutionality of the granting of some protection to a database consisting of unprotectable information where the equities between the parties calls for such protection.

n59 See Leo J. Raskind, The Misappropriation Doctrine as a Competitive Norm of Intellectual Law, 75 Minn. L.R. 875 (1991).

n60 939 F. Supp. 1071 (S.D.N.Y. 1996).

n61 Id. at 1105.

n62 Id. at 1098-1107.

Viewed analytically, there are several features that should sustain the proposed legislation or treaty under the Patent-Copyright and Commerce clauses with only limited assistance from the INS case.

First, either measure probably will -- and certainly can -- contain a clear and credible legislative finding that electronic databases should be considered as valuable works of authorship, and that the general welfare of the nation requires their protection in a highly competitive world marketplace; these are findings that most courts are likely to treat deferentially. n63

n63 See Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 431-32 (1984) (noting that it is the role of Congress, not the courts, to balance competing interests through copyright protection). See Ginsburg, supra n.16 at 375:

Congress' determination of what endeavors constitute the 'Writings' of 'Authors' should be viewed as an exercise of fact-finding by the body most competent to evaluate the efficacy of the means chosen to promote the constitutional goal. Supreme Court review of these kinds of congressional findings therefore should be extremely deferential.

See also Archibald Cox, "The Role of Congress in Constitutional Determinations," 40 U. of Cinn. L. Rev. 199, 207-11, 224-26 (1971) (arguing that Congress has authority to determine as legislative fact what activities constitute "Commerce").

Second, assuming any law or treaty is designed to protect the contents of an electronic database only insofar as its invasion "conflicts with the database owners' normal exploitation of the database or adversely affects the actual or potential market for the database," the user's "rights" will be grounded in marketplace expectations rather than a legal schematic of declared property rights. Of course, as Justice Brandeis explained so trenchantly, a right to exclude others is the essence of a property right and is the single remedy to which the Patent-Copyright Clause of the Constitution refers. n64 Nevertheless, the conflict may be perceived as more a rubbing against, rather than a clash with, the constitutional privilege described in Feist, and thus within the ambit of the INS misappropriation ruling. Analogously, Congress has been accorded a wide latitude to protect trademarks under the Commerce Clause in order to prevent confusion as to source or sponsorship of goods or false representations, notwithstanding denial of the power to protect trademarks under the Patent-Copyright Clause. n65

n64 Professor Ginsburg suggests that a compulsory license provision, confining the database owners' remedy to license fees, would assist in avoiding conflict with the Patent-Copyright Clause principle of "exclusive right." Ginsburg, supra at 383. She recognizes, however, that compulsory licensing, inevitably involving government or industry price-fixing, has been a disfavored mechanism for adjustment of commercial disputes.

n65 Compare Ferrari s.p.a. v. Roberts, 944 F.2d 1235 (6th Cir. 1991) (protection of trade dress and product design of unpatented articles under the Lanham Federal Trademarks Act does not conflict with design patent protection because purpose and scope of protection of trademark and patent laws differ), cert. denied, 505 U.S. 1219 (1992), with The Trade-Mark Cases, 100 U.S. 82 (1879) (defining "writings"), explained in Feist at 346.

It also may be of assistance that the term of the proposed protection is substantially reduced from the term of copyright protection. n66

n66 See Ginsburg, at 372. The duration of copyright protection is for the life of the author plus 50 years. However, in the case of a work for hire, the protection is for 75 years after publication or 100 years after creation, whichever occurs first. See 17 U.S.C. @ 302 (1988)

Third, if made the subject of a treaty, a sui generis protection accorded to electronic databases may be seen as primarily a permissible regulation of foreign commerce by virtue of our dependence on reciprocity as a condition of international protection for deserving American works.

Enforcement

Questions of international jurisdictional reach are equally intriguing. For example, could the owner of an electronic database protected under the EEC directive but non-protectible (under Feist) in the United States sue a United States publisher for a distribution of the infringing work on the Internet from the United States to various European locations? n67 The WIPO-proposed Draft Treaty on Protection of Literary and Artistic Works, also to be considered by the December 1996 Diplomatic Conference, has proposed to answer the question in advance by providing that the place of publication of a work be only the location of the source of the work. n68

n67 Compare CompuServe v. Patterson, 89 F.3d 1257 (6th Cir. 1996) (Ohio long-arm statute permitted Ohio suit for a declaration of non-infringement of a program transmitted via the Internet by a Texan from Texas) with Bensusan Restaurant Corp. v. King, No. 96 Civ. 3992 (SHS), 1996 WL 509716 (S.D.N.Y. Sept. 9, 1996) (no personal jurisdiction to entertain a suit for trademark infringement by a New York nightclub owner against a Missouri nightclub owner who promoted his club of the same name on a World Wide Web site).
Cf. United States v. Thomas, 74 F.3d 701 (6th Cir.) (obscenity prosecution in Tennessee for an Internet transmission from California), cert. denied, 117 S. Ct. 74 (1996) and State of Minnesota v. Granite Gate Resorts, Inc., No. C6-96-007227 (Minn. D. Ct., March 1996) (challenge to jurisdiction to prosecute for deceptive advertising an Internet communication from Nevada).

n68 Draft Treaty on Certain Questions Concerning the Protection of Literary and Artistic Works, supra at Art. 3.

Conclusion

The reaction to the Feist ruling, both in Europe and in the United States, indicates strong support for some legal protection for electronic databases. The proposed WIPO treaty recognizes the need for mutuality in the protection accorded among all countries in which such databases are in demand.

In the United States, the diminished copyright protection available, under the Computer Associates analytical dissection methodology, for all computer programs has enlarged the impact of Feist. Those seeking legal protection for their computer programs have had some consolation from the increased availability of patent protection. n69 It also has been suggested by some that, with the advent of the Internet, reliance on legal rights is a dubious economic strategy in any event and, instead, owners of intellectual property may eventually have to rely on the rendering of contractual services such as the providing of updates or advertising. n70 Meanwhile, however, American leadership in the production of electronic databases and some other computer programs remains in jeopardy and the need for a uniform law of protection is increasingly recognized.

n69 See In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (en banc) (invention of a way to vary the illumination of pixels in a waveform displayed on a CRT screen so that the curves of the waveform appear smooth rather than jagged held to be the invention of a patentable machine); In re Lowry, 32 F.3d 1579 (Fed. Cir. (1994) (data structures stored in computer memory held qualified for patent protection); In re Trovato, 60 F.3d 807 (Fed. Cir 1995) (en banc) (reversing rejection of claims relating to a method of calculating distances in order to assist navigation).

n70 See Esther Dyson, "Intellectual Value," Wired, July 1995 at 136.

Viewed overall, the American receptivity to the European initiative for the protection of electronic databases may be seen as a manifestation of the natural interplay among the laws of all countries affected by the availability of intellectual property protection. n71 The proposed WIPO treaty should be welcomed as a flower growing, with the aid of a fortunate catalyst, from an otherwise difficult environment.

n71 Illustratively, the copying permitted under the American "fair use" doctrine in Sega Enters. Ltd. v. Accolade, Inc., 977 F.2d 1510, 1525-26 (9th Cir. 1992) (copying for the purpose of "gaining access to the unprotected and functional concepts" of a computer program to produce a computer game usable on the plaintiff's computer held permissible as a "fair use") is analogous to the copying permitted in the EEC Directive on Legal Protection of Computer Programs [O.J. Eur. Comm. (No. L 122) 42 (1991)], providing that decompilation (disassembly) of a computer program's object code is permitted without permission of the copyright owner where reproduction and translation of the code is "indispensable to obtain the information necessary to achieve the interoperability of an interdependently created computer program with other programs" if (1) the information is not readily available and (2) copying is confined to parts of the program "which are necessary to achieve interoperability." Id. at Art. 6.

LANGUAGE:

ENGLISH
LOAD-DATE: February 10, 1997