Leaffer, Marshall

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Case Western Reserve University School of Law

Case Western Reserve Law ReviewVolume 57 | Issue 4February 2016Database Protection in the United States is Aliveand Well: Comments on DavisonMarshall LeafferFollow this and additional works at: https://scholarlycommons.law.case.edu/caselrevPart of the Law CommonsThis Symposium is brought to you for free and open access by the Student Journals at Case Western Reserve University School of Law ScholarlyCommons. It has been accepted for inclusion in Case Western Reserve Law Review by an authorized administrator of Case Western Reserve UniversitySchool of Law Scholarly Commons.Recommended CitationMarshall Leaffer, Database Protection in the United States is Alive and Well: Comments on Davison, 57 Case W. Res. L. Rev. 855 ()Available at: https://scholarlycommons.law.case.edu/caselrev/vol57/iss4/10DATABASE PROTECTION IN THEUNITED STATES IS ALIVE AND WELL:COMMENTS ON DAVISONMarshall LeaffertI would like to thank Professor Lipton for putting together thisexcellent conference and for the opportunity to comment on ProfessorMark Davison's comprehensive and interesting paper on the databaseissue.1 I was hoping to take issue with Professor Davison's position. Icannot because I heartily agree that the cost of a sui generis databaselaw outweighs its benefits. Moreover, I believe that such protectionwould be inappropriate in the American context. As ProfessorDavison has stated, the United States just barely missed going downthe European path, coming close to passing database law legislation.For the moment, the sui generis database project seems to be a deadissue, but I do not think we have heard the last word on the subject. Ipredict that the project will be revived sooner rather than later. Whenit does come back, I hope that the U.S. will be informed by theEuropean experience, particularly by the European report that throwsinto doubt the rationale and efficacy of sui generis protection. ForEurope, however, it seems too late to go back in time. Europeandatabase protection is a fait accompli. This proves once again theadage that once a law is on the books-even a bad one-it is difficultto get rid of.One justification for passing a sui generis database protection isthat Feist Publications, Inc. v. Rural Telephone Service Co.2 created at Distinguished Scholar in Intellectual Property Law and University Fellow at IndianaUniversity School of Law, Bloomington. B.A. and J.D. University of Texas; M.A. University ofIllinois; L.L.M. New York University.Mark Davison, Database Protection: Lessons from Europe, Congress and the WIPO,57 CAsE W. REs. L. REV. 829 (2007).2 499 U.S. 340 (1991).CASE WESTERN RESERVE LAW REVIEWgap in protection by excluding those databases that do not manifestthe requisite but low level threshold of originality. Now, this "gap inprotection" argument has always been a justification for passing morerobust, more inclusive intellectual property laws. Of course, theimplicit assumption here is that air tight legislation in the intellectualproperty field is what we should be striving for. I disagree with thisattitude. In general, there should be a presumption-if not a healthyskepticism-against any extension of property rights in information.And I would hope that we apply this skepticism not only to anyrenewed attempt at passing a sui generis database law but to anyextension of intellectual property rights. Maybe if we are going to dothe world over again, we would take databases, and for that mattercomputer software, outside of copyrights. But it is too late becausethat would not comport with our international obligation under theBerne Convention. 3Recognition of compilations of facts has been a part ofinternational copyright norms for some time. Article 2(5) of the BerneConvention requires protection as to their selection or arrangement,but not necessarily as to their miscellaneous facts. 4 So, we have toprotect compilations of facts. We protect them in the United States solong as the compilation manifests originality as to the selection andarrangement of the factual material. Once we acknowledge protectionof compilations of fact within copyright, a tension is created. Factualcompilations are works of utility comprising public domainmaterials-individual facts-that are excluded from protection underSection 102(b) of the Copyright Act.5 Copyright law works well formore imaginative works of art, literature, and music but operates lesswell when works of utility, such as factual compilations and computersoftware, are concerned. Legislative attempts to add layers ofprotection to such works of utility under copyright law have not had agood track record. Our experience in the United States supports thisview.In his article, Professor Davison has effectively reviewed thevarious legislative projects in the United States for sui generisprotection. As he points out, these legislative proposals have run thegamut from those based on the European model to other versionsmore congenial to the scientific and educational community. I wouldlike to briefly examine the latest legislative version of sui generis3 Berne Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886, 25U.S.T. 1341, 828 U.N.T.S. 221 (as revised at Paris, July 24, 1971).4 Id.17 U.S.C. § 102(b) (2006).6 Davison, supra note 1.[Vol. 57:4DATABASE PROTECTION ALIVE AND WELLprotection of compilations of fact in the Database Collections ofInformation Misappropriation Act.7 This Act, supported by a portionof the educational and scientific community, was based on amisappropriation principle. The Act prohibits making available incommerce a qualitatively substantial part of a database withoutauthorization if the database was generated through a substantialexpenditure and if the taking occurs in a time sensitive manner,inflicts injury on its owner, allows others to free ride, and results in areduced incentive to produce the product. The prohibition would notapply to nonprofit, educational, scientific, and research institutionsprovided a court determines that the activity is reasonable.Another Bill, House Bill 3872,8 was introduced as a counterpart toHouse Bill 3261, providing that misappropriation is an unfair methodof competition under Section 5 of the Federal Trade CommissionAct.9 House Bill 3261 was a watered down version of databaseprotection, which may seem inoffensive and a laudable attempt toreconcile all interests under a misappropriation banner. Indeed, somein the educational and scientific communities argued that if we weregoing have database protection, it was better to coalesce around amoderate proposal rather than one based on the European Unionmodel. Ultimately, these two bills went nowhere because theysatisfied no one. Database owners were uncomfortable about havingto prove time sensitivity among other key terms incorporated in thelegislation. I would agree with the database owners, at least to theextent that the basic terms incorporated into the proposed Act defyaccurate definition. Because of its inherent vagueness, I believe thatpassage of this legislation would have imposed costs on everyonewithout rendering property rights any more certain. Bad legislation isworse than none at all.My general proposition is that when one takes into account themultifaceted ways database owners can protect their creations, theirability to protect is robust and flourishing, even without a specializedsui generis protection. Database owners of all varieties are well takencare of under U.S. law. These modalities of protection encompasscauses of action under civil and criminal law and include a panoply ofstate and federal remedies. One of these legal strategies that operateoutside of copyright law is the Computer Fraud and Abuse Act,'0which prohibits certain access to computers without authorization.7 H.R. 3261, 108th Cong. (2004).8 H.R. 3872, 109th Cong. (2005).9 15 U.S.C. § 45(a)(2) (2006).10 18 U.S.C. § 1030 (2006).2007]CASE WESTERN RESERVE LAW REVIEWThe Act imposes civil and criminal liability on persons who,knowingly and with intent to defraud, access a protected computerwithout authorization. The Act has been used with success in casesinvolving databases.'State law remedies, in particular contract law remedies, are analternative form of protection in the age of shrink-wrap and click-onlicenses. The leading case sustaining the efficacy of the contractremedy is ProCD v. Zeidenburg.12 In ProCD, the Seventh CircuitCourt of Appeals held that a contractual restriction against copying ina shrink-wrap license was enforceable and was not preempted bycopyright. Here, the court found that state law was not preempted,finding the extra element in the contract claim was not a rightequivalent to copyright. ProCD has been criticized in the academicliterature and in other circuits, but clearly the trend in the case law hassustained its basic principles. In some ways, it allows owners ofnon-original databases to circumvent the originality threshold ofcopyright law as articulated in Feist.Other state law remedies are at the disposal of database owners,including trade secret law. But the bigger news is successful claimsunder the trespass to property theory. In eBay, Inc. v. Bidder's EdgeInc.,'3 a California district court granted eBay's request for apreliminary injunction on a claim of trespass to personal property.The defendant had used automated robots that queried eBay's website about a hundred thousand times a day to collect information aboutonline auctions. The court rejected the defendant's copyrightpreemption argument, reasoning that the right to exclude others fromusing physical property is not equivalent to any of the rights protectedunder copyright. Other California cases have also favorably appliedthis cause of action in the database context. 14Review of state law remedies would not be complete withoutmentioning the misappropriation doctrine, which has enjoyed acheckered career, to say the least, but it is still conceivably availableto database owners. A misappropriation cause of action would hardlybe a mainstay for database protection, but it nonetheless has beeneffective in circumstances where the material taken by a competitor istime sensitive, the free riding is clear, and injury has occurred. Forexample, in Pollster v. Gigmania, Ltd.15 a California district courtI' See, e.g., EFCultural v. Explorica, 274 F.3d 577 (1st Cir. 2001).12 86 F.3d 1447 (7th Cir. 1996).13 100 F. Supp. 2d 1058 (N.D. Cal. 2000).14 See Ticketmaster Corp. v. Tickets.com, Inc., No. CV99-7654-HLH (BQRx), 2000 U.S.Dist. LEXIS 12987 (S.D. Cal. Aug. 10, 2000); Intel v. Hamidi, 71 P.3d 296 (Cal. 2003).15 170 F. Supp. 2d 974 (E.D. Cal. 2000).[Vol. 57:4DATABASE PROTECTION ALIVE AND WELLheld that concert information on the Pollster web site was determinedto be hot news and therefore protectable under the misappropriationdoctrine.' 6 In similar fashion, a Florida district court held that a real-time scoring system could be protected against free riding undermisappropriation principles.'7Turning to copyright, the anticircumvention provisions of theDigital Millenium Copyright Act (DMCA) 18 create substantialprotection, particularly for electronic databases. Section 1201(a) ofthe DMCA prohibits the circumvention of devices or technologiesthat are used to control access to a copyrighted works. In addition,Section 1201(b) of the DMCA imposes liability on manufacturers andsuppliers of instruments designed to circumvent access controldevices. The DMCA provisions are particularly useful in the world ofelectronic databases.Of course, the database controversy is largely a function of theholding in Feist.19 In Feist, the Supreme Court held that the whitepages of a telephone book did not meet the originality standardrequired for copyright protection. Originality, as defined by theSupreme Court, meant that a work was created independently andpossessed some minimal degree of creativity. Facts themselves arenot original and a compilation of facts will meet the standard oforiginality only if the facts are selected and arranged in an originalway. Significantly, the Court stated that the threshold of originality islow.What has happened since the Feist case? Has it been the disasterpredicted by databases after the famous 1991 decision was handeddown? Some database owners were quite worried that the courtswould zealously refuse to protect their creations but their fears wereexaggerated. We saw this first soon after Feist in the KeyPublications, Inc. v. Chinatown Today Publishing Enterprises, Inc.2°In Key Publications, the Second Circuit applied the Feist threshold oforiginality to justify copyright protection for the selection andcoordination of yellow pages data in a classified business directoryfor New York's Chinese-American community. Other courts haveheld that the originality standard of Feist is met where the compiler'sclaimed "original" contribution is subjective and evaluative. In CCC16 Id.17 See Morris Commc'ns. Corp. v. PGA Tour, Inc., 235 F. Supp. 2d 1269 (M.D. Fla.2002), aft'd, 364 F.3d 1288 (11 th Cir. 2004).18 Pub. L. 105-304, 112 Stat. 2860 (codified in scattered sections of 5, 17, 28, and 35U.S.C. (2006)).19 499 U.S. 340 (1991).20 945 F.2d 509 (2d Cir. 1991).20071CASE WESTERN RESERVE LA W REVIEW21Information Services v. Maclean Hunter Market Reports, Inc., theplaintiff Maclean published the Red Book of used car values invarious versions including a computer database and republished themin various forms to its customers. The court rejected defendant'sargument that the data were historical prices or mechanically derived.Rather, the court found that the originality standard was satisfied inthe selection of data where the complier's claimed originalcontribution is subjective and evaluative, making the distinctionbetween soft facts, which are infused with the author's taste orevaluative judgment, and hard facts, which are denied protectionunder copyright. Because so much that one could characterize as factis infused with the authors' taste and judgment, CCC InformationServices expands significantly the range of copyrightability in therealm of databases.One might gather from the above that all varieties of databasesenjoy de facto inclusive protection under copyright law. This is notthe case. Feist imposes a modest originality requirement, but it mustbe met. The dilemma for creators of databases that do not meet theFeist threshold is that they may be out of luck. Doctrinal problems doexist that have not been worked out in a satisfactory way. One suchissue concerns the dilemma of the electronic database. Often the valuein a database lies in its comprehensiveness rather than its originalselection or arrangement. Unlike databases that exist in print form,many electronic databases are designed to be accessed by softwarethat permits the user to choose from a number of possiblearrangements. In other words, an electronic telephone book isdynamic and can take some forms due to the interplay of softwarethat might meet Feist originality, while other arrangements may not.Thus, arranging the information in a database that is sufficientlycreative to qualify for copyright protection may detract from theusefulness of many databases. Only by the application of state lawremedies, anticircumvention protection under the DMCA, or simplytechnological self-help (i.e., technological means that impede access)can a database owner vindicate his rights.Perhaps a minor legislative fix may be justified to remedy theelectronic database dilemma. But I would go no farther than a minorlegislative fix, and a sui generis provision should be out of thequestion. Until we find with relative certainty that a morecomprehensive statutory mechanism would be justified from aneconomic standpoint, I would strongly argue to keep the status quo.Unfortunately, very little empirical research demonstrating that lack21 44 F.3d 61 (2d Cir. 1994).[Vol. 57:4DATABASE PROTECTION ALIVE AND WELLof protection of non-original databases has undermined optimalincentives for their creation is ambiguous at best. I would reaffirmone of Professor Davison's conclusions on the subject.2 2 So far thebenefits of database protection are exceeded by their costs. TheUnited States not long ago avoided a European style sui generis lawthrough legislative gridlock. Three cheers for legislative gridlock.22 Davison, supra note 1.2007]

Database Protection in the United States is Alive and Well: Comments on Davison

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Database Protection in the United States is Alive and Well: Comments on Davison

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