No Separate Protection for Underlying Data:
Although databases may be protected as compilations under U.S. copyright law, the underlying data is not automatically granted protection. The Copyright Act specifically states that the copyright in a compilation extends only to the compilation itself, and not to the underlying materials or data. 17 U.S.C. § 103(b). As a result, compilation copyrights cannot be used to extend copyright protection to ideas or facts that are otherwise unprotectable (it is a basic premise of copyright law that there is no copyright protection for ideas and basic facts, as is explained in the BitLaw section on unprotected works).
Thus, a database of unprotectable works (such as basic facts) is protected only as a compilation. Since the underlying data is not protected, U.S. copyright law does not prevent the extraction of unprotected data from an otherwise protectable database. In the example of a database of presidential quotations, it would therefore not be a violation of copyright law to extract (copy) a quotation from George Washington from the database. On the other hand, it would be violation to copy the entire database, as long as the database met the Feist originality and creativity requirements.
Feist: Originality and Creativity:
In the case of Feist Publications, Inc. v. Rural Telephone Service Company, Inc., the U.S. Supreme Court ruled that a compilation work such as a database must contain a minimum level of creativity in order to be protectable under the Copyright Act.
Rural Telephone Service Company, Inc. was a local telephone company in Kansas that published telephone directories based on data that it obtained from its subscribers. Feist Publications, Inc. was a publisher of area-wide telephone directories covering a much larger geographic range than Rural's directories. In order to publish its white pages, Feist needed to use the information Rural had in its telephone directories. Feist first tried to license the information in Rural's white pages directly from Rural. When Rural refused, Feist extracted the listings it needed from Rural's directory without Rural's consent. Although Feist altered many of Rural's listings, many were identical to listings in Rural's white pages. Rural sued Feist for copyright infringement in the compilation that made up its white pages. Two lower courts ruled in Rural's favor, holding that Feist's extraction of data from Rural's white pages infringed upon Rural's copyright interests.
The Supreme Court, however, held that Rural's white pages are not entitled to copyright protection, since the white pages did not meet the statutory requirement for originality under 17 U.S.C. §102(a). According to the Supreme Court, a compilation is not copyrightable per se, but is copyrightable only if its facts have been "selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship," citing the definition of a compilation in 17 U.S.C. §101. According to the Supreme Court, the statute envisions that some ways of selecting, coordinating, and arranging data are not sufficiently original to trigger copyright protection. In applying this originality requirement, the Supreme Court held that Rural's white pages were not selected, coordinated, or arranged in such a way as to create an original work of authorship. Rural's selection of listings--subscribers' names, towns, and telephone numbers--was obvious and lacked the modicum of creativity necessary to transform mere selection into copyrightable expression. Arranging names alphabetically in a white pages directory is so commonplace that it has come to be expected.
This holding overruled numerous lower courts that adopted a "sweat of the brow" or "industrious collection" test of copyrightability. Under this test, if a compilation was created as a result of a great deal of effort (such as the collection of thousands of names and addresses), copyright protection would extend to the compilation regardless of the creativity or originality in the selection, coordination, or arrangement of the facts. In fact, under this overruled doctrine, copyright protection extended to each fact contained within the compilation--no extraction of facts from a compilation was allowed. The Supreme Court expressly stated that this "sweat of the brow" analysis was faulty, and that copyright extended only to the original selection, coordination, and arranging of data, and not to any unprotected facts contained within the compilation.
Database Licensing and Preemption:
As a result of the Supreme Court's holding in Feist, it is clear that not all databases are protected by copyright law as compilations. In order to be protected, the database must be original in its selection, coordination, and arrangement. The mere alphabetic arrangement of data is not original enough for protection by copyright law unless there is some originality in the selection or coordination of the data. In addition, Feist makes it clear that even if a database is protected by copyright law as an original work, this protection will not prevent an individual from extracting factual data from the database (short of copying the selection and arrangement of the database as a whole).
The limited copyright protection provided to databases makes it imperative that database owners and developers protect their databases through contract law. Through an enforceable contract, typically in the form of a license to use the database, the end user can be prohibited from extracting data from the database for uses other than those intended by the database owner. For instance, a contract could prohibit the end user from making data extracted from the database available to third parties, or from including the extracted data in a new database.
Some have argued that contracts that protect databases beyond the protection available through copyright law should be "preempted" by the Copyright Act itself. The concept of preemption is a difficult one. Basically, preemption by the Copyright Act means that since the federal government has enacted the Copyright Act to govern the protection given to original works of authorship, individual states (i.e., New York or California) are prohibited from having contradictory laws. As a result of the ability of a federal statute to preempt state law, and the explicit preemption set forth in the Copyright Act at 17 U.S.C. § 301, no state may create rights that are equivalent to any of the exclusive rights provided under the Act. It is this concept of preemption that prevents copyright protection from varying depending upon the state where a work of authorship is created.
Since a contract is enforced under state law, some courts have refused to enforce contracts that provide copyright-like protection to "unoriginal" databases and facts under the theory that such contracts are preempted by the Copyright Act. However, the vast majority of recent court decisions have held that such contracts ARE NOT preempted and are enforceable. These courts generally find that since a breach of contract claim requires proof that the parties involved entered into a contract, the contract claim is not the equivalent of any of the exclusive rights provided under the Copyright Act and therefore is not preempted.
An example of the importance of database contracts can be found in the case of ProCD, Incorporated v. Matthew Zeidenberg and Silken Mountain Web Services, Inc. In this case, the court was faced with a situation where an end-user of a CD ROM phone database extracted a large portion of the database and made it available over the Internet on his web page. The database in this case was nearly identical to the type of data in the Feist case--names, addresses, and phone numbers. The lower court rejected all copyright claims and found that the shrinkwrap license that controlled the end user's right to use the data was both unenforceable (as a shrink wrap license) and preempted by the Copyright Act. As a result, there was no relief available to the creator of the phone database and the end-user was free to extract the data and use it as he saw fit.
On appeal to the Seventh Circuit, however, the lower court decision was reversed. The Seventh Circuit acknowledged that the database might not be sufficiently original to be protected by copyright. As a result, there was no copyright infringement by the end-user. However, the Seventh Circuit found the end-user to be guilty of breach of contract, since the shrink-wrap license for the CD ROM prohibited the end-user's conduct. As explained in BitLaw's discussion of shrink wrap licenses, the Seventh Circuit found the license to enforceable. In addition, the Seventh Circuit rejected the argument that the shrink wrap license must be considered preempted by the Copyright Act, finding that the enforcement of this contract was not equivalent to any of the exclusive rights provided by the Copyright Act. The court would not say that there could never be a time that a contract would be preempted, only that these kinds of licenses were not preempted.
European Database Directive and the Proposed WIPO Database Treaty:
As explained above, databases are protected by U.S. copyright law as compilations, but only if they are selected, coordinated, or arranged in such a way that they constitute an original work of authorship. This copyright protection extends only to the compilation itself, which means that some of the data can be extracted from a protected database without violating the copyright in the database. If the database is unprotected by copyright law, the entire database may be copied unless such acts are prohibited by contract.
Europe, however, provides much greater protection of databases. Under the Database Directive adopted by the European Parliament on March 11, 1996, a database can be protected in two ways. First, the Directive provides that databases shall be protected under copyright law where the selection or arrangement of the contents constitutes the author's own intellectual creation. This right is similar to that provided under U.S. law, in that it provides protection to a database (not the underlying data) and in that it is limited to databases containing a sufficient degree of creativity in the selection or arrangement of the data. The second right, however, provides for a sui generis right that prohibits the extraction or reutilization of any database in which there has been a substantial investment in either obtaining, verification, or presentation of the data contents. Under this second right, there is no requirement for creativity or originality. In effect, this right gives databases in Europe the type of "sweat of the brow" protection that was explicitly rejected by the Supreme Court in Feist. The sui generis right lasts for fifteen years from the date of the database's creation.
In a defeat for North American database interests, the sui generis right granted under the Database Directive applies only to databases created by companies based in countries that are members of the European Union. Thus, European companies (and European subsidiaries) will have greater protection for their databases than non-European companies.
Member states in the European Union must enact the Database Directive by January 1, 1998.
In a related development, the World Intellectual Property Organization considered approving a Treaty on Intellectual Property in Respect of Databases in its December 1996 Diplomatic Conference on Certain Copyright and Neighboring Rights Questions. The proposals for this Treaty focused on the creation of a sui generis right similar to that created in the European Database Directive. Although an agreement could not be reached on this Treaty, participants in the Diplomatic Conference agreed to continue developing the language for the treaty.
In the U.S., a bill to provide sui generis rights to databases was submitted to the House of Representatives on May 23, 1996 by Representative Moorhead. Given the current emphasis placed on protecting databases, it may only be a matter of time before sui generis protection for non-original databases is available throughout the world.