The United States Legislative Proposals for a Sui Generis Right - A Brief Overview and Commentary

To date three separate pieces of legislation have been brought before the United States' Congress for its consideration with regards to the creation of a sui generis right in relation to databases.  Starting with the Database Investment and Intellectual Property Antipiracy Act, HR 3531 104th Cong. (1996), which was drafted in response to the European Union's Database Directive, two other Bills, the Collections of Information Antipiracy Act, HR 2652 105th Cong (1998) and most recently the Collections of Information Antipiracy Act, HR 354 106th Cong. (1999) have been considered by Congress. For the most part, these Bills are substantially similar to one another providing broad protections for "collections of information" and then carving out some limited exceptions to the rights granted to database owners.  Nevertheless, there are some differences of substance between the Bills which make the most recent Bill our primary object of consideration.  Accordingly, unless otherwise indicated, this overview is limited to the Collections of Information Antipiracy Act, HR 354 106th Cong. (1999) and all references to "the Bill" are to this Bill.

The Bill applies to all "collections of information" which are marketed within the United States.  For the purposes of the Bill, a "collection of information" is defined as ' information that has been collected and has been organized for the purpose of bringing discrete items of information together in one place or through one source so that persons may access
them.'  Information is then further defined to mean any facts, data, works of authorship, or any other intangible material capable of being collected and organized in a systematic way.  Individual works which, taken as a whole, are works of narrative literary prose are excluded from this definition, but collections of such works are not.  This definition is virtually identical to that contained in the Collections of Information Antipiracy Act, HR 2652 105th Cong (1998), but differs slightly from the definition of a "database" in the Database Investment and Intellectual Property Antipiracy Act, HR 3531 104th Cong. (1996) which is defined to mean a 'collection, assembly or compilation, in any form or medium now or later known or developed, of works, data or other materials, arranged in a systematic or methodical way.'  From the outset then, it is worth noting how the proposed sui generis right is wider than that in the European Database Directive as the element of "intellectual creation" is removed and replaced with the simple requirement of organization in a single place or source.

Once a collection of information has been created, the Bill prohibits two different activities in relation to the collection.
In the first place, the making available, or the extracting to make available, of all or a substanial part of a collection of information is prohibited where such activity would cause material harm to the primary or related market of the collection owner.  This is subject to a number of provisos, however, in that the collection must have been gathered, organized or maintained through the investment of substantial monetary or other resources, and the collection must have been offered or intended to be offered in commerce either by itself or as part of another product or service.  The second activity which is prohibited in relation to a collection of information is the extraction of all or a substantial part of such a collection which is gathered, organized, or maintained by another person.  The Bill does not define what a "substantial part" is, leaving the elaboration of this to the courts at a later date, although it does deem an individual piece of information not to be a substantial part.  It does, however, define a "primary market" to mean all markets in which a product or service incorporating a collection of information is offered and in which the owner derives or reasonably expects to derive revenues from, either directly or indirectly.  The definition of "related market" extends the scope of the Bill by covering products or services which are similar to the products or services offered in the primary market and which the owner derives or reasonably expects to derive an income, or products or services incorporating a collection of information which the owner has taken demonstrable steps to offer in commerce with the reasonable expectation to derive revenues.

Having set up the prohibitions, the Bill then establishes a number of exceptions and permitted uses of collections of information.  Collections of government information, except those prepared under license or contract by private parties, computer programs and digital online communications are all excluded from the protections afforded by the Bill.  Similarly, the Bill enumerates a number of permitted uses which includes, inter alia, reasonable uses for purposes such as illustration, explanation, example, comment, criticism, research or analysis; certain non-profit educational, scientific or research uses; gathering or using information obtained through other means; verification; news reporting; and investigative, protective or intelligence activities.  Protection for collections of information lasts for an initial period of 15 years, with an additional 15 years protection available each time the owner invests substantial monetary or other resources in the maintenance of the collection.  Such extension, however, does not apply to the original collection of information which falls into the public domain after the expiration of the initial 15 year period.

As with the European Database Directive, the clear advantage of the Bill is that it is expressly concerned with protecting the underlying commercial value of the relevant information.  Indeed, if anything, the Bill is more explicit in this regard, prohibiting any activities which infringe on the primary or related markets for collections of information.   Once again, however, the failing with the Bill is that it confers too much protection on the database owners at the expense of the public.  Indeed, whilst the Bill ostensibly provides for greater exceptions to the collection owner's  rights than in the European Database Directive,  these exceptions are limited in practice due to the uncertainty as to their precise scope and the fact that the onus of proof is on the infringer to demonstrate the legitimacy of their activities.  Accordingly, the formation of a public domain in information is effectively precluded under the Bill such that a perfect monopoly over information appears to be conferred on the producers of collections of information.   As a model for the legal protection of information, therefore, the Bill could be said to be lacking an appropriate balance between the conflicting interests of the users and producers of information.