I. INTRODUCTION

The convergence of digital computing and telecommunications technologies has greatly expanded the already bright economic prospects for information goods of all kinds, but it has also unsettled the legal architecture on which the free market economies have previously been grounded. n1 Information products behave differently from the tangible, physical products of the Industrial Revolution; n2 and the legal paradigms that we have applied to balance incentives to create against both public good uses of information and the discipline of free competition are stretched past the breaking point. n3 We are thus challenged to rethink how best to structure competition for information goods in the emerging, worldwide information economy. n4

The technological convergence that creates promising new markets for information goods also opens new opportunities for scientific and educational uses of data and information. However, a powerful movement to commodify data and information previously treated as a public good - that is, as an inexhaustible, indivisible, and ubiquitous component of the public domain n5 - could limit the ability of the scientific, technical, and educational communities to capitalize on such opportunities. The momentum generated by that movement would eventually have faced these communities with serious challenges even in the absence of a new intellectual property right in collections of data. The adoption of a strong property right in noncopyrightable collections of data by the European Union n6 - in a haphazard manner, with little serious economic or empirical investigation n7 - thus precipitated a crisis that was already well under way.

This article explores the potentially adverse impact that the emerging legal infrastructure could have on scientific, technical and educational users of factual data and information (as well as on other sectors of the information economy) unless suitable adjustments are made. Parts I and II explain how efforts to accommodate the networked environment to the publishers' and database makers' fears of market failure will impose a daunting array of legal and contractual restraints on the ability of scientists and engineers to access factual data and information in the near future. Part III examines the most recent efforts to devise a sui generis intellectual property right in noncopyrightable collections of data that would suitably balance public and private interests. Part IV emphasizes the need to reconcile legal protection of databases with fundamental constitutional mandates concerning free speech and the progress of science. It ends with a warning that overly protective initiatives could compromise the research-based institutions that currently ensure the technological predominance of U.S. industry in the global marketplace.

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II. POTENTIAL IMPACT OF THE DATABASE PROTECTION LAWS ON SCIENCE AND TECHNOLOGY

Let us suppose that a scientist or engineer lawfully obtained a printed copy of a chemical handbook or of a scientific article, with appended data, that was published in a peer-reviewed journal. These works currently attract copyright protection, and we shall assume that they meet the eligibility criteria of that body of law. n25

A. The User-Friendly Rules of Copyright Law

The rules of copyright law constitute a balanced regime of public and private interests. In retrospect, we are struck by the friendly treatment this body of law gives to users and competitors alike, notwithstanding the powerful bundle of exclusive rights it vests in authors and artists in order to stimulate the production and dissemination of creative works. n26

For example, any scientist or engineer who lawfully obtained the book or article mentioned above could immediately re-use all the data and all the ideas disclosed in them because copyright law does not protect ideas or data, n27 nor does it protect against use of expression as such, but only against certain specified uses. n28 Indeed, another scientist or engineer could independently rewrite his or her own version of the same article and disseminate it because copyright law allows independent creation, and all the unprotected data are spread out before the second comer's eyes. n29

A second scientist or engineer who needed to duplicate even the first author's creative selection and arrangement of data (if any) for non-profit research purposes could normally fall back upon the "fair use" provisions of current law. n30 A later researcher could also produce a follow-on article or book that borrowed the originator's unprotected factual information and data, but not his or her stylistic expression. n31 To be sure, the norms of world copyright law (but not necessarily U.S. law) favor attribution in such a case, as do the ethics of science. n32 But plagiarism is not the same as copyright infringement; the reuse of facts and data is clearly permitted in copyright law; and another author's popularized version of a prior researcher's factual findings remains perfectly legal. n33

Most important, later scientists could combine the published data and factual information with other data and information into a multiple or complex interdisciplinary database without permission or additional payment to the originators. n34 This follows in part because only ineligible matter is at issue and in part because copyright law does not prohibit use as such, but only certain uses, such as reproduction or adaptation of protected expression, and it is also buttressed by the doctrine of fair use. n35

Even if scientists, engineers, or educators made classroom use of the protected expression for nonprofit purposes, these uses might well be fair or privileged uses under U.S. copyright law n36 and would possibly become subject to compulsory licensing under E.U. copyright laws. n37 Finally, having once purchased the book or the article, a scientist or engineer could sell it, lend it, or give it to others (first sale doctrine), n38 borrow it from a library, n39 use it as often as he or she liked for virtually any purpose, and make photocopies of it for scientific purposes under the fair use doctrine of U.S. law n40 or the private use doctrine of E.U. law. n41

B. Unbalanced Rules of the Sui Generis Model

Now, let us suppose that the contents of the same chemical handbook or of the aforementioned scientific article were disseminated online and surrounded by technical fences as previously described. Suppose further that the contents of the book or article were protected by laws implementing the E.U.'s sui generis exclusive property right in noncopyrightable collections of data or by the U.S. version of that right, as set out in H.R. 2652, the Collections of Information Antipiracy Act (March 1998). n42 The House of Representatives adopted H.R. 2652, and the Subcommittee on Courts and Intellectual Property then attached it to the Digital Millennium Copyright Act, which became H.R. 2281, as sent to the Senate. n43 The database portion was dropped prior to Congressional enactment of that bill, however, and it was reintroduced with some modifications as H.R. 354 in January 1999. n44

1. Basic Substantive Principles

The sui generis provisions of the E.U. Directive n45 protect the contents of any noncopyrightable database that is the product of substantial investment against extraction or reutilization of the whole or of any substantial part (evaluated quantitatively or qualitatively). n46 Hence, this law could protect the noncopyrightable data appended to the hypothetical article in question or collected in the handbook, which the publishers might eventually disseminate online, with or without an accompanying print version. n47

Such protection lasts as long as new investments are made in updates or maintenance; hence perpetual protection of dynamic databases becomes a likely result, despite a nominal fifteen-year term. n48 There are no exceptions for "reutilization" by scientific and educational bodies, and there are no mandatory exceptions for "extraction" for scientific and educational purposes (although states may adopt this exception for noncommercial purposes). n49 The member states implementing the Directive must permit extraction or use of an insubstantial part of a protected database. n50 However, the risks of invoking even this exception are high, because a would-be user has no way of knowing in advance whether a court will later find that the amount used was in fact qualitatively or quantitatively insubstantial. n51

U.S. bill H.R. 2652, later H.R. 2281 as part of the Digital Millennium Copyright Act, used different language to accomplish essentially the same result. It protected against use or extraction in commerce of all or a substantial part of a protected collection of information that is the product of substantial investment if such use or extraction would "cause harm to the actual or potential market" for a product or service that incorporated the collection. n52 For this purpose, the term "collection of information" was very broadly defined, n53 and during face-to-face negotiation in the Senate (in which the authors of this article participated directly), n54 the publishers claimed that a single lost sale would fit within this standard of harm to the market. Any substantial new investment in updates or maintenance would prolong protection beyond fifteen years, with no limit to the number of renewals. n55 The bill initially recognized no exceptions for science and education as such, but, at the last minute, a provision tacked onto H.R. 2281 held scientists and educators liable only for harm to "actual markets," and not for harm to "potential markets" for their nonprofit uses of protected information. n56

The situation was further complicated in January, 1999, when Chairman Howard Coble of the House Committee on the Judiciary's subcommittee dealing with intellectual property rights introduced a new version of the database protection bill, H.R. 354, n57 which modified the previous bill in at least two important respects. First, a serious effort was made to limit the term of protection to fifteen years, with little or no possibility of extension even in dynamic databases that are continuously updated. n58 Second, a new provision established an exemption for "additional, reasonable uses" by educational, scientific and research organizations, n59 which was loosely based on the "fair use" provisions of copyright law. However, this ambiguous provision would limit the proposed exception to "an individual act of use or extraction of information done for" specified purposes, n60 which apparently placed the burden of proof on the otherwise infringing researcher. n61

Because one can read the new exception for scientific and educational uses set out in H.R. 354 broadly or narrowly, depending on how one interprets its latent ambiguities, it is instructive to assess the likely impact of the proposed legislation on science and technology as it stood at the end of 1998. We can then factor the proposed amendments into the analysis and compare them to certain promising proposals that emerged from face-to-face negotiations between stakeholders, held in the Senate under Senator Hatch's auspices in late summer of 1998. n62 Accordingly, if Congress had adopted H.R. 2281 at the end of 1998, and that law had subsequently been applied to online delivery of the data contained in the book or article that were previously discussed in connection with the workings of copyright law, n63 the following results would have been likely to occur.

2. The Resulting Legal and Practical Constraints

In principle, a second scientist or engineer could not make any uses of the information or data that were not permitted by the form-contract site licenses that regulated access to the online database from which they were extracted. n64 The site license could charge one price for accessing or consulting the database, a second price for downloading it, and a third price for using it or reusing it in other contexts. n65

Even though the second scientist or engineer normally would have paid to access the data and information (and they are not copyrightable by definition), he or she could not use them in ways not permitted by the terms and conditions of that site license, which, in turn, would now be supported by a duly enacted federal intellectual property law. n66 Absent some constitutional override, the second comer could not, therefore, independently generate a similar article or study based on the same material without permission, even though the relevant data were now revealed to the public. n67 Because the data no longer entered the public domain, n68 he or she would need to obtain a new grant or substitute funding to repeat the collection process, in which case scarce funds would have been used to duplicate the creation of knowledge already in existence. This, of course, contradicts the norms of science, which favor building on previous discoveries and the sharing of research results. n69

In many instances, the data will be based on one-time events that later scientists and engineers could not physically regenerate, in order to fall within the permitted acts of independent creation under the database protection laws. n70 Even when regeneration remained feasible, the cost in relation to the niche market of likely users would normally be so high that few second comers would willingly regenerate the data. n71 Hence, sole-source providers are likely to remain a dominant feature of the database landscape, real competition will continue to be the exception, and the strong property rights given database proprietors would potentiate existing barriers to entry. n72

Later scientists and engineers could not combine data legitimately accessed from one commercial database with data extracted from other databases to make a complex new database for addressing hard problems without obtaining additional licenses and permissions. This remains, perhaps, the single most critical problem for scientific and technical research. n73 Despite reassurances to the contrary from leaders of the international publishing community to leaders of the scientific community at a recent meeting in Paris, n74 lawyers representing publishers at face-to-face negotiations held in the Senate late in 1998 continued to insist that this customary and traditional scientific practice would, in principle, violate their redistribution rights. n75 Another critical factor is that there would never be a sale that exhausted the publisher's rights, only a license, which the proposed model laws of computerized information transactions would make perpetual. n76

No one could combine "substantial" amounts of data or information into a more efficient follow-on product without a license; the licensor would labor under no duty to grant such a license: and the sole-source provider would not want any competition from follow-on products. n77 This also suggests, however, that the price would not be set so high as to encourage independent creation of the same data, when otherwise feasible. If so, and potential producers of follow-on products tended to invest in other activities, it would further discourage competition and innovation. n78

So long as natural and artificial barriers to entry remained high, scientists and engineers must pay artificially high prices to access commercial databases in the absence of competition. The enactment of strong exclusive property rights (complemented by strengthened contractual rights if the proposed model law were also adopted n79) thus seems likely to reinforce the pervasive sole-source character of the marketplace and exert further upward pressure on prices. n80

Meanwhile, scientists and engineers who paid to access protected databases could not routinely lessen overall transaction costs by lending, borrowing, or transferring the data they extracted to others working on a common problem. This follows because there would never be a sale or transfer under some equivalent of the "first sale" doctrine of the copyright (and patent) laws, n81 only a license that would logically restrict further transfers without any time limit. n82 Scientists and engineers who continued to share data once acquired without obtaining permission and without paying additional fees for such heretofore traditional or customary uses would "harm the market" that the database proprietor presumably secured by dint of the proposed legislation. n83

The data would not enter the public domain for at least fifteen years, and possibly never, if the private party were to continue to invest in maintenance or updates of a dynamic database. n84 Even data that nominally entered the public domain at expiry of the fifteen year term could remain unavailable in practice if would-be users lacked means to identify and isolate those data within the larger mix of protected and unprotected data comprising a dynamic collection. n85 If such data were rendered technically identifiable, nothing would prevent the proprietor from using electronic fencing devices and standard form contracts to further preclude extraction even after the intellectual property right had expired. n86

Moreover, unless proper precautions are taken, there is considerable risk that data generated or funded by the U.S. government would become privatized in ways that unduly restricted access on onerous terms and conditions. n87 If this were allowed to happen, taxpayer-financed data would be sold back to science and education at monopoly prices, with the likelihood that additional state subsidies would be needed to defray the costs. In the European Union, where governments intend to commercialize publicly funded data, insufficient thought has been given to this problem in general and to the impact on science and technology in particular. n88

A common thread uniting all the foregoing observations is the lack of any limits on the power of providers who benefit from legal protection of databases to impose any licensing terms or conditions they wish on access to, and use of, their products. In principle, the database provider could override by contract even the few exceptions and limitations contained in the bill, including the public's right to use insubstantial parts of a database. n89

The net result, as Professors Reichman and Samuelson pointed out in an earlier article, is that, under the U.S. database proposals, as under the E.U. Directive, the most borderline and suspect of all the objects of protection ever to enter the universe of intellectual property discourse - raw data, scientific or otherwise - paradoxically obtains the strongest scope of protection available from any intellectual property regime except, perhaps, for the classical patent paradigm itself. n90  When the provisions added to the latest bill, H.R. 354, n91 are factored into the analysis, the end result is only slightly improved, at least in appearance if not in practice.

The first significant change mentioned above, which would more clearly inject protected data into the public domain after fifteen years, n92 is of course a move in the right direction. However, the drafters still ignore the difficulties of identifying and accessing data whose term of protection had technically expired, an issue that was widely discussed last year. n93 The bill also ignores the power of database providers to override formal access to data that nominally entered the public domain by combining adhesion contracts with electronic fencing devices. n94

The second major change is a good faith effort to address some of the concerns of the scientific and educational communities by means of new, "fair-use-like" provisions. n95 However, these provisions are both ambiguous and too narrowly drawn. n96 By placing the burden of proof on scientists and engineers, whose "individual acts" of "reasonable" use remain subject to scrutiny case by case, n97 they would continue to exert the chilling effect on research n98 that seems inherent in any "fair use" approach to a database law that does not otherwise provide the many other safeguards familiar from copyright law. Hence, as we explain below, a different kind of approach, one not strictly linked to the "fair use" concept, will be needed to ensure that a sui generis database regime does not harm customary and traditional scientific activities. n99

Even if a satisfactory legal formula to avoid harm to science and education were found, that formula would remain largely ineffective if database providers could simply override it by contract or, in the alternative, if the publishers could just charge more for access if they knew that the state would require them to charge less for extractions and reuse by scientific and educational bodies. n100 In short, unless the bill expressly and adequately immunizes traditional scientific and technical pursuits, the only limit on the database providers in most instances is what a monopoly market will bear.
 

*J.H. Reichman, Professor of Law, Vanderbilt University School of Law and Paul F. Uhlir, National Research Council, Washington, DC. An early version of this paper was presented to the Symposium on The Changing Character, Use, and Protection of Intellectual Property, German-American Academic Council in Cooperation with the U.S. National Academy of Sciences and the Max Planck Institute for Foreign and International Patent, Copyright and Competition Law, Washington, D.C., Dec. 3-4, 1998, and to the Conference on Law in the Information Society, Istituto per la Documentazione Giuridica, Comitato Nazionale della Ricerca, Florence, Italy, Dec. 2-5, 1998. The views expressed in this article are the authors' and not necessarily those of the National Academy of Sciences or the National Research Council. (return to text)

n1.See, e.g., Julie E. Cohen, Lochner in Cyberspace: The New Economic Orthodoxy of "Rights Management," 97 Mich. L. Rev. 462 (1998); Trotter Hardy, Property (and Copyright) in Cyberspace, 1996 U. Chi. Legal F. 217 (1996); Robert P. Merges, The End of Friction? Property Rights and Contract in the "Newtonian" World of On-line Commerce, 12 Berkeley Tech. L.J. 115 (1997); Henry H. Perritt, Jr., Property and Innovation in the Global Information Infrastructure, 1996 U. Chi. Legal F. 261 (1996). (return to text)

n2.See, e.g., Kenneth J. Arrow, Economic Welfare and the Allocation of Resources to Invention, in The Rate and Direction of Inventive Activity 609, 616 (National Bureau of Economic Research ed., 1962) (stressing that optimal utilization occurs when information is free, while optimal information production occurs only when producers expect to appropriate the economic value of their investments); see also Mark A. Lemley & David McGowan, Legal Implications of Network Economic Effects, 86 Calif. L. Rev. 479, 591-608 (1995) (describing the economics of networks as "still under construction"). (return to text)

n3.See generally, J.H. Reichman, Legal Hybrids Between the Patent and Copyright Paradigms, 94 Colum. L. Rev. 2432 (1994) [hereinafter Reichman, Legal Hybrids]; J.H. Reichman, Charting the Collapse of the Patent-Copyright Dichotomy: Premises for a Restructured International Intellectual Property System, 13 Cardozo Arts & Ent. L. J. 475 (1995) [hereinafter Reichman, Charting]; Pamela Samuelson, Randall Davis, Mitchell D. Kapor & J.H. Reichman, A Manifesto Concerning the Legal Protection of Computer Programs, 94 Colum. L. Rev. 2308 (1994) [hereinafter Samuelson et al.]. (return to text)

n4.See, e.g., Charles R. McManis, Taking TRIPS on the Information Superhighway: International Intellectual Property Protection and Emerging Computer Technology, 41 Vill. L. Rev. 207 (1996). (return to text)

n5.See Robert Cooter & Thomas Ulen, Law and Economics 40-41 (2nd ed. 1997) (noting that public goods are both non-excludable and non-rivalrous). (return to text)

n6.See Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the Legal Protection of Databases, 1996 O.J. (L 77) 20 [hereinafter E.U. Directive]. (return to text)

n7.See J.H. Reichman & Pamela Samuelson, Intellectual Property Rights in Data?, 50 Vand. L. Rev. 51, 72-95 (1997) (tracing legislative history of the E.U. Directive). For different perspectives, see, for example, Robert C. Denicola, Copyright in Collections of Fact: A Theory for the Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516 (1981) and Jane C. Ginsburg, Copyright, Common Law, and Sui Generis Protection of Databases in the United States and Abroad, 66 U. Cin. L. Rev. 151 (1997); G.M. Hunsucker, The European Database Directive: Regional Stepping Stone to an International Model?, 7 Fordham Intell. Prop. Media & Ent. L.J. 697 (1997). See also Wendy J. Gordon, On Owning Information: Intellectual Property and the Restitutionary Impulse, 78 Va. L. Rev. 149 (1992). (return to text)

n25.See 17 U.S.C. 101 (1994) (defining literary works), 102(a) (1994) (requiring original works of authorship), 103(b) (1994) (protection limited to original and expressive material added by author to a compilation); Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (limiting copyright protection of factual compilation to creative elements of selection, arrangement, and coordination). (return to text)

n26.See 17 U.S.C. 106 (1994). See generally L. Ray Patterson & Stanley W. Lindberg, The Nature of Copyright: A Law of Users' Rights 47-56, 191-224 (1991); Joel Shelton Lawrence & Bernard Timberg, Fair Use and Free Inquiry: Copyright Law and the New Media (2d ed. 1989). (return to text)

n27.See supra note 25; Harper & Row v. Nation Enterprises, 471 U.S. 539 (1985) (stressing First Amendment interest in unrestricted availability of facts). (return to text)

n28.See 17 U.S.C. 106, 106A (1994); Baker v. Selden, 101 U.S. 99 (1879); Ralph S. Brown, Jr., Eligibility for Copyright Protection: A Search for Principled Standards, 70 Minn. L. Rev. 579, 588-89 (1985) (noting that the Copyright Act, unlike the Patent Act, does not confer any exclusive right to use the protected work, which helps explain why copyrights are so casually granted). (return to text)

n29.See, e.g., Paul Goldstein, Copyright 7.2.2 (2d ed. 1998) (noting that "conveying evidence" of independent creation constitutes a perfect defense to an infringement action). (return to text)

n30.See 17 U.S.C. 107 (1994) (codifying fair use provisions); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 564, 574-594 (1994) (stressing desirability of promoting transformative, preambular uses under the fair use provision of 107); William F. Patry, The Fair Use Privilege in Copyright Law 178-84, 416-17 (1985). However, the wholesale duplication of a creative selection and arrangement for commercial purposes is not permitted. See, e.g., CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc., 44 F.3d 61 (2d Cir. 1994); Reichman & Samuelson, supra note 7, at 63 (citing authorities). But see Warren Publishing Inc. v. Microdos Data Corp., 115 F.3d 1509 (11th Cir. 1995) (en banc) (allowing massive extraction and re-use of commercial compilation for competitive purposes and finding no eligibility for copyright protection). (return to text)

n31.See 17 U.S.C. 102(b), 103(b) (1994); Harper & Row v. Nation Enters., 471 U.S. 539 (1985); Key Publications, Inc. v. Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 514 (2d. Cir. 1991) (stressing "thin" copyright protection doctrine of Feist). See also Reichman & Samuelson, supra note 7, at 63 (citing authorities). (return to text)

n32.See Berne Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886, as last revised at Paris, July 24, 1971, 828 U.N.T.S. 4, art. 6bis (obliging member states to respect moral rights of authors); Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853 (1988) (implementing this obligation only indirectly). (return to text)

n33.See Hoehling v. Universal City Studios, Inc., 618 F.2d 972 (2d Cir. 1980); supra notes 31-32 and accompanying text. However, if a second comer were to pass off his article as that of the first scientist, grounds for invoking relief in unfair competition law might also exist. See Lanham Act 43(a), 15 U.S.C. 1125 (1998). (return to text)

n34.For the importance of this practice, in conjunction with the sharing ethos of science, see J. H. Reichman, Why Science is Concerned About an Intellectual Property Right in Databases, in AAAS Science and Technology Policy Yearbook 1998 (Albert H. Teich et al. eds., 1998), at 291, 301; see also International Council for Science (ICSU), Position Paper on Access to Databases, paper presented to the World Intellectual Property Organization (Sept. 1997) (unpublished manuscript, on file with authors). (return to text)

n35.See supra notes 26-31 and accompanying text. (return to text)

n36.See 17 U.S.C. 107, 110(1) (1994); but see Princeton Univ. Press v. Michigan Document Servs., Inc., 99 F.3d 1381 (6th Cir. 1986) (en banc), cert. denied, 520 U.S. 1156 (1997) (limits on copies for classroom use). (return to text)

n37.See, e.g., Berne Convention, supra note 32, arts. 9(2) (limits on reproduction right), 10(2) (use for teaching purposes when consistent with fair practice); Guy Tritton, Intellectual Property in Europe 191 (1996). See also Lucie Guibault, General Report to the ALAI Annual Meeting (1998) (unpublished manuscript, on file with authors) (discussing exceptions and limitations in European copyright law). (return to text)

n38.See 17 U.S.C. 109(a) (1994) (first sale doctrine). (return to text)

n39.See id.; see also 17 U.S.C. 108 (1994) (reproduction by libraries and archives). (return to text)

n40.See 17 U.S.C. 107 (1994); supra note 30. However, scientists and engineers working at for-profit institutions have lesser photocopying privileges, at least when secondary markets for photocopies and reprints are operational. See American Geophysical Union v. Texaco, Inc., 60 F.3d 913, 926-931 (2d. Cir. 1994); Patry, supra note 30, at 190-94. (return to text)

n41.See European Commission Green Paper on Copyright and Related Rights in the Information Society, reprinted in 43 J. Copyright Soc'y USA 50, 91 (1995) ("Most member states have introduced special legal arrangements for <elip> private copying<elip>."). But see William R. Cornish, Copyright in Scientific Works (Scientific Communications, Computer Software, Data Banks): An Introduction, in European Research Structures - Changes and Challenges: The Role and Function of Intellectual Property Rights 50 (Max Planck Gesellshaft ed., 1994) (despite case for a measure of free reprography for purposes of academic research, "academic institutions are regarded as relatively soft targets by publishing interests [in U.K.], which <elip> [have been] inserting initial wedges."). (return to text)

n42.See E.U. Directive, supra note 6; H.R. 2652, 105th Cong. (1998). (return to text)

n43.See H.R. 2281, 105th Cong. (1998) (including the database protection bill as Title V). (return to text)

n44.See H.R. 354, 106th Cong. (1999). (return to text)

n45.See E.U. Directive, supra note 6, arts. 7-10. Besides a list of sixty "Recitals" or premises that underlie the legislation and a small set of definitional articles that apply across the board (arts. 1-2), the E.U. Directive also harmonizes the treatment of copyrightable databases in the member states' domestic laws. See id. arts. 3-6; Reichman & Samuelson, supra note 7, at 76-79. There is a final group of "common provisions" that apply to both copyrightable and noncopyrightable databases (arts. 12-16). While the provisions harmonizing the protection of copyrightable databases approximate the rules in the U.S., see supra notes 26-41 and accompanying text, they lie beyond the scope of this article.  (return to text)

n46.See E.U. Directive, supra note 6, art. 7(1). (return to text)

n47.For the very broad definition of databases, see E.U. Directive, supra note 6, art. 1. For example, Reed Elsevier, Inc. has been buying up scientific journals and has recently begun to deliver scientific communications online. (return to text)

n48.See E.U. Directive, supra note 6, art. 10; Reichman & Samuelson, supra note 7, at 85-86.(return to text)

n49.See E.U. Directive, supra note 6, arts. 9, 9(b) (authorizing member states to allow extractions (but not reutilization) "for the purposes of illustration for teaching or scientific research, so long as the source is indicated and to the extent justified by the non-commercial purpose to be achieved"). (return to text)

n50.See E.U. Directive, supra note 6, art. 8(1). Member states may allow a broader exception for "extraction for private purposes of the contents of a non-electronic database." Id. art. 9(a) (emphasis added). (return to text)

n51.See Reichman & Samuelson, supra note 7, at 90-91. See also id. at 87-95 (finding that the scope of protection under the E.U. Directive exceeds that of copyright law because 1) no idea-expression distinction is observed and no evolving public domain is generated, 2) the equivalent of a "derivative work" right in dynamic databases is not limited to new matter, and 3) the public interest exceptions are very narrow). (return to text)

n52.H.R. 2652, 105th Cong. 1202 (1998); H.R. 2281, 105th Cong. 1302 (1998). (return to text)

n53.See H.R. 2281, 105th Cong. 1301(1) (1998) (defining "collection of information" to mean "information that has been collected and <elip> organized for the purpose of bringing discrete items of information together in one place or through one source so that users may access them"); id. 1301(2) (defining "information" to mean "facts, data, works of authorship, or any other intangible material capable of being collected and organized in a systematic way"). See also id. 1301(3) (defining "potential market" to mean "any market that a person claiming protection <elip> has current and demonstrable plans to exploit or that is commonly exploited by persons offering similar products or services incorporating collections of information"). (return to text)

n54.See infra text accompanying notes 143-47. (return to text)

n55.See H.R. 2281, 105th Cong. 1308(c) (1998). The interpretation in the text was confirmed by the position that the publishers took during face-to-face negotiations in the Senate. See infra text accompanying notes 143-47. (return to text)

n56.See H.R. 2281, 105th Cong. 1303(d) (1998). An article attacking the proposed legislation that appeared in Science magazine focused particular attention on the harm to science from a "potential market" test. See William Gardner & Joseph Rosenbaum, Database Protection and Access to Information, 281 Science 786-87 (1998). (return to text)

n57.H.R. 354, 106th Cong. (1999). See also Hearings on H.R. 354, the "Collections of Information Antipiracy Act" before the House Subcomm. on Courts and Intellectual Property of the House Comm. of the Judiciary, 106th Cong. (1999) [hereinafter Hearings] (statement of the Honorable Howard Coble, Chair of the Subcommittee on Courts and Intellectual Property). (return to text)

n58.See H.R. 354, 106th Cong. 1408(c) (1999) (limiting the term of protection to 15 years). (return to text)

n59.Id. 1403(a)(2) (listing "Additional Reasonable Uses"). (return to text)

n60.Id. 1403(a)(2)(A) (allowing individual act of use or extraction "for the purpose of illustration, explanation, example, comment, criticism, teaching, research, or analysis, in an amount appropriate and customary for that purpose <elip> if [such an act] is reasonable under the circumstances") Criteria for determining reasonable use, and the limits thereon, are also set out. See id. 1403(a)(2)(A)(i)-(iv). (return to text)

n61.See infra text accompanying notes 95-99 . (return to text)

n62.See infra text accompanying notes 140-65. (return to text)

n63See supra text accompanying notes 26-41. (return to text)

n64.While this constraint could occur under existing law, the validity of such standard form contracts remains in doubt at the present time, with some courts upholding them and other courts invalidating them either on contracts grounds or under the doctrine of preemption. See Reichman & Franklin, supra note 9, at 876 n.1 (citing cases). The adoption of a model law governing computerized information transactions (like the previously proposed Article 2B of the U.C.C.), see supra note 14, would validate virtually all such contracts. See id. at 899-914 (criticizing this approach and proposing a new doctrine of "public interest unconscionability" to allow courts to reconcile freedom of contract with public-good uses of information). However, most opportunities to challenge the validity of such contracts as applied to either copyrightable or noncopyrightable databases on existing grounds would vanish if Congress adopted a database law along the lines of H.R. 2281, unless some other countervailing doctrine, such as the proposed "public interest unconscionability doctrine" became available. See Reichman & Franklin, supra note 9, at 947-51 ("Contracts Restricting the Use of Noncopyrightable Collections of Data").

If, instead, H.R. 354 were adopted, or a variant thereof that included a substantial exception for traditional scientific purposes, see infra text accompanying notes 148-52, the opportunities to challenge the validity of such contracts would depend on 1) the extent to which the database law itself restricted contractual overrides (none yet proposed, and all vigorously resisted by the publishers), and 2) the availability of ancillary doctrines in contracts law, such as the proposed "public interest unconscionability" doctrine. See infra text accompanying notes 163-64 (discussing the doctrine of misuse); see generally Reichman & Franklin, supra note 9, at 929-38 ("validating non-negotiable terms that respect the balance of public and private interests"). (return to text)

n65.Cf. Reichman & Samuelson, supra note 7, at 117-24 ("Retarding the Progress of Science").

 The electronic publisher's growing capacity to charge for each and every use of online data (or at least for every "hit" that accesses such data), and to track and monitor every user <elip> means that it becomes increasingly capable of serving <elip> as its own collection society, subject to no consent decrees <elip> and no external regulation.  Id. at 153. At a recent conference on database protection in Italy that Professor Reichman attended, an Italian professor related that the European Commission had charged him a high price per page to consult official texts concerning antitrust laws and regulations and about double that price per page to download the same information for research purposes. See Tito Ballarino, Remarks at the University of Pavia Conference on "Le banche dati (anche su Internet)," Pavia, Italy, Oct. 2-3, 1997; cf. Jessica Litman, The Exclusive Right to Read, 13 Cardozo Arts & Ent. L. J. 29 (1994). (return to text)

n66.See supra note 64. (return to text)

n67.See H.R. 2281, 105th Cong. 1303(b) (1998) (declining to "restrict any person from independently gathering <elip> or using information gathered <elip> by another person through the investment of substantial monetary or other resources"); id. 1305(e) (allowing unrestricted licensing agreements). See also H.R. 354, 106th Cong. 1403(c), 1405(e) (1999) (the same in this respect, but attenuated in impact owing to fair-use-like provisions set out in 1403(a)). For possible constitutional overrides, see infra text accompanying notes 182-97. (return to text)

n68.Cf. Reichman & Samuelson, supra note 7, at 84-90 ("Abolishing the Public Domain"). Under H.R. 354 , however, data would enter the public domain after fifteen years. See supra note 58 . (return to text)

n69.See National Research Council, Bits of Power: Issues in Global Access to Scientific Data 1, 132 (1997) (stressing importance of scientific norms that favor the sharing of data and the cumulative process of acquiring scientific knowledge) [hereinafter Bits of Power]. (return to text)

n70.See supra note 67. (return to text)

n71.See, e.g., Bits of Power, supra note 69, at 114-24. (return to text)

n72.See id.; Reichman & Samuelson, supra note 7, at 90-95 ("Establishing Legal Barriers to Entry"), 124-30 ("Impeding Competition in the Market for Value-Adding Products and Services"). But see Laura D'Andrea Tyson & Edward F. Sherry, Statutory Protection for Databases, in Hearing on H.R. 2652 Before the Subcomm. on Courts and Intellectual Property of the House Comm. on the Judiciary, 105th Cong. (1997) (testimony of Laura D'Andrea Tyson, Consultant, Reed-Elsevier, Inc.) (contesting the strength of barriers to entry in database industry). New studies by the National Research Council later in 1999 will attempt to cast further light on these issues. (return to text)

n73.See ICSU Position Paper, supra note 34; infra notes 110-14 and accompanying text. (return to text)

n74.Trip report by Ferris Webster, Chair, ICSU/CODATA Group on Access to Data and Information, International Council for Science (1998) (on file with authors). (return to text)

n75.Whether the new exceptions proposed in H.R. 354 would alter this result remains to be seen. See supra notes 58-60, and accompanying text. See also infra text accompanying notes 140-46. (return to text)

n76.See U.C.C. 2B-502 (Feb. 1999 Draft) (allowing prohibition of any transfer of mass-market licensed goods); Karjala, supra note 20, at 538; Reichman & Franklin, supra note 9, at 965. Unless otherwise restrained, such licenses could override the limited duration clause that H.R. 354 finally introduced. See supra note 58. (return to text)

n77.See Reichman & Samuelson, supra note 7, at 124-30. Cf. Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (sole-source proprietor of telephone directory denied permission to another directory compiler who wished to combine the data in the former's directory with data from numerous others whose owners had given their consent). (return to text)

n78.See supra notes 71-72. (return to text)

n79.See supra notes 14 -15 and accompanying text. (return to text)

n80.Cf. Bits of Power, supra note 69, at 121-23 (chronicling failed attempt to privatize Landsat data in the 1980s, when prices of Landsat images rose from about $ 400 per image to $ 4,400 per image, a price at which the joint venture "was able to attract some commercial and federal customers, but few academic or independent researchers"). (return to text)

n81.See supra notes 38, 76.(return to text)

n82.See Reichman & Franklin, supra note 9, at 964-65. (return to text)

n83.See H.R. 2281, 105th Cong. 1302 (1998). (return to text)

n84.See id. 1308(c).(return to text)

n85.See Jane C. Ginsburg, U.S. Initiatives to Protect Works of Low Authorship, paper presented to New York University Conference on "Intellectual Products: Novel Claims to Protection and Their Boundaries," Engelberg Center on Innovation Law and Policy, La Pietra, Italy (June 25-28, 1998) (unpublished manuscript, on file with authors) (arguing that publishers should identify the expired components of protected compilations). (return to text)

n86.See Reichman & Franklin, supra note 9, at 897-913, 947-51. (return to text)

n87.See, e.g., Hearings, supra note 57 (statement of Andrew J. Pincus, General Counsel, U.S. Department of Commerce), at 13-20 (arguing for broad exemptions for government-funded data and warning about the "potential for "capture" of government-generated data) [hereinafter Statement of Pincus]. (return to text)

n88.See, e.g., Peter N. Weiss & Peter Backlund, International Information Policy in Conflict: Open and Unrestricted Access versus Government Commercialization, in Borders in Cyberspace 300, 303 (Brian Kahin & Charles Nesson eds., 1997). See also supra note 65. (return to text)

n89.See H.R. 2281, 105th Cong. 1303(a), 1305(e) (1998). But cf. E.U. Directive, supra note 6, art. 8(1). This E.U. privilege may not be overridden by contract, see id. art. 15. United States publishers opposed the ban on contractual overrides of this provision in the E.U. Directive, and indicate that they intend to override it when permitted. See Mark Powell, The European Union's Database Directive: An International Antidote to the Side Effects of Feist, paper presented to the Fourth Annual Conference on "International Intellectual Property Law & Policy," Fordham University School of Law (Apr. 11-12, 1996) (unpublished manuscript, on file with authors). (return to text)

n90.Reichman & Samuelson, supra note 7 at 94. (return to text)

n91.H.R. 354, 106th Cong. (1999). See supra notes 58-61 and accompanying text. (return to text)

n92.See id. 1408(c) (1999) (limiting the term of protection to 15 years). (return to text)

n93.See supra note 85 and accompanying text; Statement of Pincus, supra note 87, at 25-27 (questioning ability of users "to distinguish unprotected data entries from protected data entries" and fearing "de facto perpetual protection"). (return to text)

n94.See H.R. 354, 106th Cong. 1405(e) (1999) (allowing freedom of contract); Reichman & Franklin, supra note 9, at 899-914. (return to text)

n95.See H.R. 354, 106th Cong. 1403(a) (1999). (return to text)

n96.See, e.g., Hearings, supra note 57 (statement of James G. Neal, Dean, University Libraries, Johns Hopkins University) ("Exemption for education and research <elip> remains far too narrow.") [hereinafter Statement of Neal]; id., (testimony of Charles E. Phelps, Provost, University of Rochester, for AAU, ACE, and NASULGC) ("Exception for non-profit educational activities contains a broad, vague condition that vitiates its protection.") [hereinafter Testimony of Phelps]. (return to text)

n97.See id. (return to text)

n98.See, e.g., Hearings, supra note 57 (testimony of Joshua Lederberg, Nobel laureate, on behalf of NAS, NAE, IOM and American Association for the Advancement of Science (AAAS)) [hereinafter Testimony of Lederberg]. (return to text)

n99.See infra text accompanying notes 151-55. (return to text)

n100.See, e.g., Reichman & Franklin, supra note 9, at 947-51; McManis, supra note 4. (return to text)