Reform of existing database legislation and future database legislation strategies: towards a better balance in the database law

1. INTRODUCTION

With the dramatic development of information technology, the Internet has become a major source for the dissemination of intellectual property. In recent years, the development of digital technology has greatly enhanced the development of the electronic database industry. (1) More and more database producers (or information service providers) have started to run businesses and directly benefit from the commercial exploitations of the databases they have developed. (2)

Ever-improving technology enables users to efficiently access and sort through vast quantities of data by selecting proper databases and search parameters, (3) but it also facilitates data piracy. (4) Database producers often face the risk of unauthorized parties gaining access to, misappropriating and/or disseminating the contents of their databases without financial compensation. (5) Furthermore, current intellectual property law and other relevant legislation may not adequately protect the commercial needs of database producers. (6) Thus, there is pressure on legislatures worldwide to enact new legislation to create sui generis rights to protect the contents of valuable databases. (7)

In Europe, the EU Database Directive has established a sui generis protection for database contents. (8) However, in the United States, debates in Congress still continue on numerous sui generis database protection bills that have been proposed. (9) At the international level, a draft database treaty proposal was submitted to the World Intellectual Property Organization (WIPO) diplomatic conference in Geneva in December, 1996. (10) Although the proposal was circulated for discussion, it was not debated. The WIPO is most likely waiting for the United States’s position on the proposed treaty’s details. (11)

This article will first examine database protection provisions in traditional copyright law at both the international and domestic levels (especially focusing on U.S. copyright law). It will identify the impact of digital technology on database industries, the limits of current copyright law, and explain why sui generis legal protection of databases is necessary. Then, the article will examine the development of sui generis database protection legislation in the world, focusing, in particular, on the legislation in the EU and the United States. After that, the article will explore some specific problems of current sui generis database protection legislation in both the EU Database Directive and the U.S. bills, and make some specific legal suggestions for each. Finally, going beyond making suggestions for solving the specific legal problems, the author will provide some suggestions for the United States and other nations at the strategic level. This article argues that the interest of a nation is only best served by tailoring its intellectual property regimes to its particular economic and social circumstances. It also argues for establishing a new rationale for international digital legislation: the leadership of digital legislation should always belong to the country that makes the best law rather than the country that made the law first.

2. TRADITIONAL COPYRIGHT LAW ON DATABASE PROTECTION & NEEDS FOR SUI GENERIS DATABASE LEGISLATION

2.1. Database Protection in the Existing International Intellectual Property/Copyright Treaties

Databases have been of concern in the international arena for many years. Major international treaties relating to copyright protection have included provisions for protecting databases, such as the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”), the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and the WIPO Copyright Treaty (WCT). But the protections under these treaties seem very narrow and far from perfect

Specifically, the Berne Convention (Paris Text 1971) requires all member countries to protect “collections of literary or artistic works … which, by reason of the selection and arrangement of their contents, constitute intellectual creations.” (13) TRIPS requires all “developed” WTO member countries to protect “[c]ompilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations….” (14) It further explicitly states such protection “shall not extend to the data or material itself.” (15) A similar obligation can also be found in the WCT, which was concluded in Geneva in December 1996. The treaty also requires member countries to provide protection for “compilations of data or other material, in any form, which by reason of the selection or arrangement of their contents constitute intellectual creations.” (16) Like TRIPS, it also explicitly provides that such protection “does not extend to the data or the material itself … in the compilation.” (17)

In the above provisions, each treaty contains virtually identical language laying down originality and creativity requirements for a database to be eligible to obtain copyright protection–the database (collection/complication) must constitute an “intellectual creation.” In other words, the protection is limited to the database with originality, and all unoriginal databases will not be protected under these treaties. Moreover, such protection only applies to protecting the format of database (structure and integrity of database), and does “not extend to the data or the material itself’ (the content of database). Consequently, many factual databases might not be able to get effective protection. This is obviously not effective in protecting the incentives of database producers for continuous investment in the factual databases. (More details about the consequence will be discussed later).

2.2. A Quick Review of U.S. Copyright Law on Database Protection

At the domestic level, copyright has been the customary form of database protection in the United States. (18) Over the course of the nineteenth century, two theories developed to protect compilations under copyright. (19) One was the common law “sweat of the brow” doctrine. (20) Under this view, the courts treated the database maker’s effort and investment as the basis for copyright protection. (21) Once a compilation was determined to be copyrightable, the protection not only applied to the format (structure and integrity) of databases, but also applied to the contents inside these databases. (22) The other theory was the “originality” doctrine, which was generated in the late nineteenth century (23) and was codified in the Copyright Act of 1976 (“1976 Act”). (24) The 1976 Act explicitly provides that, in order to receive copyright protection, a compilation must be “an original work of authorship.” (25) As with the international treaties introduced above, protection under the 1976 Act only applies to the format of the database, and does not extend to the contents contained in the databases. (26) Although the originality doctrine was codified by the 1976 Act, in practice, courts remained divided in their treatment of compilations when applying the statute to the Feist case in 1991. (27) In other words, two approaches co-existed during this period. (28)

In 1991, in Feist Publications v. Rural Telephone Service Co., (29) the Supreme Court formally abolished the “sweat of the brow” doctrine, (30) and held that “creative originality” is the sole basis for protection under U.S. copyright law. (31) Like the 1976 Act, the Court reemphasized the “fact/expression” dichotomy of copyright law. (32) The copyright protection under Feist only applied to the author’s original components in the selection and arrangement of databases (format of databases), but does not generally apply to the facts and contents in the databases. (33) Moreover, the Court pointed out that the requisite level of creative originality for a copyrightable compilation is very “low” (34) and the protection to a factual compilation is very “thin.” (35)

Indeed, many cases subsequent to Feist demonstrated that although the Court found most databases copyrightable, (36) wholesale copying of information from these databases was often held not to constitute an infringement of copyright. (37) For example, in Key Publications, Inc. v. Chinatown Today Publishing Enterprises Inc., (38) the Court held that the plaintiffs, Key Publications, Inc., business directory was sufficiently creative to obtain copyright protection, (39) but ultimately concluded that the defendant Chinatown Today Publishing Enterprises, Inc. had not infringed the copyright of the plaintiff, (40) because the Court found that the defendant did not reproduce the original selection and arrangement of the plaintiffs directory. (41)

2.3. Development of Technology & Needs for Sui Generis Database Protection

The Court’s decisions in Feist have arguably provided clear guidelines for lower courts to both examine the creative originality of compilations and to determine the scope of protection. In particular, it makes “creative originality” the sole basis for approving copyright protection to databases. However, such approach was developed with the “printed databases” focus, and may not be suitable for protecting “electronic databases.” The article will next examine the impacts of technology developments on the database industries and database protection legislation. It will try to explore the limits of current U.S. copyright law on protecting electronic databases. This article will also explore why it is necessary to develop a sui generic database legislation.

2.3.1. Growth of Electric Database Industries, & Shift of Database Source

After Feist, with the development of digital technology, the electronic database industry has also experienced dramatic development. According to O’Neil’s research, the number of files in electronic databases has increased nearly two hundred percent, from some four billion in 1991 to over eleven billion in 1997. (42) Similarly, the number of searches from such information centers grew roughly doubling during any five-year period during the past decade. (43) Nowadays, a large number of database producers (or information service providers) have begun to run businesses, either online or offline, and directly benefit from the commercial exploitations of the databases they have developed. (44) Lipton gives some examples of online businesses or services that rely on the value of databases including: electronic libraries such as LEXIS and Westlaw

Moreover, it should be noted that the source of databases, and the balance between commercial databases and non-profit databases, has also shifted dramatically in past decades. Again, according to O’Neil’s study, in the late 1970’s seventy-eight percent of databases were produced by government, academic and other non-profit providers, while the commercial sector produced only twenty-two percent. But by 1997 the numbers were exactly reversed and the nonprofit sector accounted for barely twenty percent of all databases. (47) “Commercial databases” created by private producers are now playing dominant roles in the market.

Under the context of the database commercialization, it is not hard to understand why database producers (driven by economic benefits) have strong incentive to lobby the Congress in order to strengthen the database legislation and prevent data piracy.

2.3.2. Digital Technology v. Data Piracy

Although printed databases, such as the telephone directory, remain important in certain industries, electronic databases have far greater utility. (48) Electronic databases can be navigated more efficiently than printed publications and enable users to efficiently sort through vast quantities of data by selecting search parameters. (49) Most electronic databases are now available on the Internet. As mentioned above, this affords many advantages such as access and ease of subsequent modifications, but it also facilitates data piracy. (50)

In comparison to printed databases, electronic databases seem to be more vulnerable and more easily pirated, especially in the online environment. The dramatic development of digital technology increases this risk. For example, according to the figures provided by McManis, “in 1991 (the year Feist was decided), it would have taken the average modern, working 24 hours a day, 154 days to copy an average sized database,” while the same database can now be copied in 1.7 minutes with current moderns and the advent of DSL technology. (51) As some commentators stated, it is now possible for people to copy substantial amounts of material and nearly instantaneously disseminate it via the Internet using only their home computers by a simple “click of a mouse.” (52)

Traditionally, because copying a large printed compilation was time consuming, producers of printed databases could enjoy natural “lead-time” with which to exploit their product and recoup their investment of research and development costs. (53) For online electronic database, such “lead-time” does not exist. (54) As discussed above, the wholesale copying of an electronic database can be completed by competitors within a few minutes with 100% accuracy. This discourages database producers, (55) and may even reduce their incentive to continue investing in their existing databases or create new ones. (56)

In fact, besides harming database producers, widespread data piracy may also harm consumers and end users. In 2001, Sullivan provided an example of Research Information Services, Inc. (“Bloodstock”). (57) At one time, Bloodstock published a Comprehensive Trainer Record. (58) This information is so comprehensive and valuable that competitors would regularly copy the information and resell it in different forms. This discouraged Bloodstock because those investment costs could not be recouped. (59) Ultimately, publication of this record was discontinued. As a result, consumers were deprived of the right to obtain potentially valuable information about trainers. (60)

In recent years, in order to protect databases from unauthorized access and misappropriation, some producers have started to apply technological encryption measures to their databases. However, technological measures are not 100% effective and are often cracked by experienced software technicians. As one commentator pointed out, “as soon as the copyright industry seals its products under a protective wrap, hackers will restore free access.” (61) Thus, technology alone seems insufficient to achieve complete control of protected content. (62)

All of the above suggests that a strong legal protection to databases seems increasingly necessary in order for producers to get corresponding compensation from their investment and for consumers to continuously enjoy high-quality data services.

2.3.3. Digital Technology v. “Thin” Copyright Protection

After Feist, the database producer must demonstrate that she “typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers,” in order to pass the original test for factual compilations/databases. (63) Further, these choices as to selection and arrangement should be “made independently by the compiler and involve a minimum degree of creativity.” (64) As a result, massive factual databases intended to be comprehensive may be found uncopyrightable due to the lack of the minimum level of originality. (65) This is especially true for electronic databases on the Internet. (66)

The development of digital technology has greatly changed traditional working models of databases, including the ways in which people search for information. The application of database software greatly facilitates the tedious task of data selection, arrangement, and coordination. (67) For example, by applying search engine technology, users could make their own selection and arrangement of the contents of mega-databases, and transform mega-databases into smaller, more manageable, individually tailored databases. (68) Currently, the commercial value of a database seems to lie more in its comprehensiveness and ease of use rather than the arrangement or format of its contents. (69) As one commentator pointed out, in the case of an electronic database, “arrangement and location are, for the most part, meaningless, with retrieval frequently accomplished by means of a complementary computer program.” (70)

However, as introduced above, the protection to databases that the Court set forth in Feist only applies to the format (selection and arrangement) of a database rather than the contents themselves. (71) As a result, as many post-Feist cases have demonstrated, competitors may copy and distribute the facts or data contained in original databases (even in substantial portions) without infringing copyright, as long as they superficially re-selected and/or rearranged these facts or data. (72)

A typical example may be found in EPM Communications, Inc. v. Notara, (73) in which the plaintiff alleged that defendant Notara had infringed its copyright in the 1999 EPM Licensing Letter Sourcebook (“the Sourcebook”). (74) In that case, the District Court found that the Sourcebook was sufficiently original and entitled to copyright protection. (75) It was also undisputed that Notara used the Sourcebook as a basis for obtaining factual information in its online database directory at www.notara.net. (76) However, as in Key Publications, the Court concluded that there was no copyright infringement, mainly because the search engine is the main means for Notara’s subscribers to search its database for information, (77) and EPM could not show that the format (selection and arrangement of data) of Notara’s database was “substantially similar” to that of EPM’s Sourcebook. (78)

From this case, the Feist decision, which was developed with the “printed database” focus, becomes very problematic when it is applied to “electronic database” protection. With current digital technologies (such as search engine or database management software), it is very easy to make re-selection or re-arrangement of the contents of an electronic database. Thus, it is increasingly necessary to develop new sui generis legislation to strengthen the protection to database contents, especially the contents of electronic databases on the Internet. (79)

3. EXISTING SUI GENERIS DATABASE LEGISLATION & GENERAL CRITICISMS

In the past few years, legislators in many countries have attempted to establish sui generis protection for databases in order to deal with the limits of traditional copyright law on database protection and the challenges brought by new technology. This article will next examine the current development of sui generis database legislation at both international and domestic levels, focusing on the EU and the United States.

3.1. The EU Database Legislation

In March 1996, the European Parliament issued a directive to European Union member states on the legal protection of databases (“EU Database Directive”), (80) and required all member states to implement the directive in their domestic legislation by January 1, 1998. It is the first legislation in the world that explicitly provided sui generis protection to databases.

3.1.1. Background: Technology, Trade, Development Strategies & Legislative Reform

There are many external and internal reasons that push the EU to pass sui generis protection legislation, including both economic and political reasons. Most of them can be found in the preamble of the EU Database Directive.

First, the EU realized that, along with the development of information technology, the Electronic Commerce (“EC”) has become an increasingly crucial area for future growth and competitiveness. (81) It also realized that the “U.S. has built a substantial lead over Europe” in developing Internet commerce, and believed that “a similar lead is opening up in the strategic sector of electronic commerce tools–products and technologies which underpin the future development of electronic commerce.” (82) Japan and the Asia/Pacific region were also enjoying rapid developments in both Internet connectivity and electronic commerce, and their EC revenues might catch up with Europe by 2000. (83) As such, it is very necessary for EU to take effective measures to secure its position in the increasingly intense international competition in the EC market.

Second, the EU recognized that “databases” are playing increasingly significant roles in the EC. It believed that databases are an increasingly valuable and profitable product, (84) and “a vital tool in the development of an information market within the Community….” (85) Nevertheless, the EU Database industry was not very optimistic. According to statistics, although EU database producers produced almost half the world total of databases in 1990, their revenues from these databases accounted for only one-quarter of the total revenue in the world. (86) One of the reasons for the discrepancy may be the proportion of commercial databases versus non-profit databases. The majority (54%) of European databases were produced by non-profit producers (i.e., governments), (87) while, in the United States the commercial sector accounts for nearly 80% of all databases (as introduced above). (88) Thus, in order to change this situation, it is very important for the EU to take effective measures to enhance the “private investment” on “commercial database” market.

Third, the EU realized that inconsistencies of database legislation in different member states will have direct negative effects on the functioning of the internal European market as regarding databases, and, in particular, will hinder the free movement of online database goods and services throughout the EU. (89) It believes a stable and uniform legal regime for database protection is significant to prevent widespread data piracy and to enhance the private investments in database industries. (90)

The above factors combined to drive the EU to pass its Database Directive in 1996. In summary, by enacting this directive, the EU intended to harmonize EU database laws, strengthen the protection on database contents, get rid of the barrier of free movement of database goods and service, enhance private investment on the commercial databases, and especially tries to secure its position on international EC market and establish its world leading position in database legislation in the world. Although the Directive is far from perfect, it had arguably achieved the above goals. This article will next examine the details of the Directive and how said goals were achieved.

3.1.2. General Structure of Protection

The EU Directive defines a database as “a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means.” (91) Thus, it covers compilations of data in any form, including both traditional “hard copy databases” and “electronic databases.” (92) Moreover, the Directive explicitly states the protection to databases would not apply to “computer programs used in the making or operation of databases accessible by electronic means.” (93) Such exclusion makes it clear that the protection under this Directive only focuses on the databases structure and the contents contained therein.

In general, the EU Database Directive requires member states to establish a dual system for database protection: (1) copyright protection for the structure of the database (covering creative databases), and (2) a sui generic protection for the contents of the database (covering non-creative databases). (94)

3.1.3. Copyright Protection Under the Database Directive

Specifically, the copyright portion of the Directive, Chapter II, requires member states to provide copyright protection for creative database. (95) Furthermore, it explicitly indicates such protection shall only apply to the structure of the database (the original selection and arrangement of the database contents), but not extend to contents themselves in the database. (96) In this portion, the EU legislators tried to harmonize the criteria and scope of copyright protection for databases throughout the EU. (97)

First, they established a uniform standard of originality. Consistent with Article 10 of TRIPS, the Directive specified that copyright protection is only available to “databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation.” (98) Like the U.S. Supreme Court’s position in Feist, creative originality becomes the sole criterion to determine the eligibility of databases for copyright protection. (99) Once a database qualifies for copyright protection, it would obtain the same term of copyright protection as for any other literary work (100)–the life of author plus seventy years.

Second, the Directive established a uniform list of “restricted acts” (exclusive right of database owner) and “exceptions for restricted acts.” (101) The restricted acts (exclusive rights for database owners) under the Directive are quite similar with exclusive rights for owners of other copyright works. The rights include reproduction, adaptation, distribution, communication, and display or performance to the public. (102)

Third, like traditional copyright law, the Directive provided some exceptions to limit said rights, including both mandatory and non-mandatory exemptions. Mandatory exemption in article 6.1 allows lawful users to engage in any restricted act “which is necessary for the purposes of access to the contents of the database and normal use of the contents.” (103) Article 15 of the Directive explicitly provides any contractual provision contrary to this exemption (article 6.1) shall be “null and void.” (104) The EU Directive also provides some non-mandatory exceptions for member states, mainly including: (1) reproduction for private purposes of a non-electronic database, (2) illustration for teaching or scientific research, (3) use for the purposes of public security or an administrative or judicial procedure, and (4) other traditional exceptions authorized under national law. (105) In addition, the Directive also provides a general limitation for the application of all above exemptions (both mandatory and non-mandatory exemptions). It provides that the application of these exemptions should not “unreasonably prejudice the rightholder’s legitimate interests or conflict with normal exploitation of the database.” (106)

In comparison with the U.S. copyright law, it is arguable to say these exemptions in the EU Database Directive are quite similar with, but seem narrower (107) than, the fair use exemptions in the U.S. Copyright Act. (108) For example, there is no exception for criticism, comment and news reporting. Also, it does not have an explicit exception for private purposes of an “electronic database.”

3.1.4. Sui Generis Protection Under the Database Directive

In addition to the copyright portion, the EU Database Directive includes a “sui generis right” portion. It requires member states to provide a new form of intellectual property right that grants “proprietary protection” over valuable database contents. (109) Under this chapter, the sui generis proprietary protection is available to any database producer, so long as he/she could show that “there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents.” (110) In other words, there is no creative originality requirement, and “substantial investment” is the sole basis for such protection. (111)

Once qualified, database producers will have a right “to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.” (112) The right would continue for a fifteen-year period, (113) but it may be renewed if the database producer makes a “substantial new investment” to the database. (114) Moreover, the Directive defines “extraction” as “the permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any form

On the other hand, the Directive also sets up some exceptions to limit the sui generis rights (again including both mandatory and non-mandatory exceptions). (119) As to mandatory exceptions, the Directive first set up an overall limitation for the sui generis rights and provided the application of the rights should not prejudice other existing rights in the contents of the database, which are permitted by other laws. (120) It then set up a more specific exception and provided that the producer of a public database “may not prevent a lawful user of the database from extracting and/or reutilizing insubstantial parts of its contents, evaluated qualitatively and/or quantitatively, for any purposes whatsoever.” (121) In addition, the Directive also established some limits when applying the said exceptions. It explicitly provides that “the repeated and systematic extraction and/or re-utilization of insubstantial parts of the contents of the database” would not be allowed, if such acts (extraction/reutilization) “conflict with a normal exploitation of that database” or “unreasonably prejudice the legitimate interests of” database producers. (122) Article 8 further requires that the acts of a “lawful use” should not “conflict with normal exploitation of the database or unreasonably prejudice the legitimate interests of” database producers, (123) the user should not prejudice the rightholder with respect to the contents contained in the database. (124) Moreover, the Directive explicitly provided that no contractual provision could preempt the limitation provisions in article 8. (125) In addition to mandatory exemptions, the Directive also provided a list of “nonmandatory exceptions” for member states, (126) including: (1) extraction for private purposes of the contents of a non-electronic database

Like the counterpart in the copyright portion, the said exceptions (for sui generis rights) arguably resemble the fair use exemptions in the US Copyright Act. (128) One of the typical differences from copyright law may be that they are too narrow. The sui generis right under the EU Directive has no exception for criticism, comment and news reporting, and the right is not subject to compulsory licensing arrangements. (129) Nevertheless, we can still see the efforts that the EU legislators have made in order to balance the benefits between database producers and public users (although the effects of such efforts may not be desirable). (130) Through the said exemption/limitation provisions, they tried to strike a good balance between making information accessible for “lawful users” and protecting the benefits of database producers against the increasingly widespread data piracy, and tried to prevent the “contract” from being abused to break such balance. (131)

3.1.5. Comparable Protection of EU Non-Member Databases

As to beneficiaries of the sui generis protection, the EU Database Directive explicitly states that the protection is only applicable to databases whose producers are nationals or habitual residents of the EU (132) or to those produced by companies and firms that have a business presence in the EU. (133) The Directive also allows member states to extend the sui generis protection to databases owned by individuals or business entities in third countries, but only if such third countries offer “comparable protection to databases” produced by EU member states. (134) In other words, the sui generis protection is available to non-EU databases only on the basis of “reciprocity.” (135)

The implementation of the above provisions will arguably force foreign database producers to establish or expand operations in the EU, (136) so that they could obtain the sui generis protection under the EU Database Directive. This would not only enhance the development of the EU database market, but also might increase employment in the EU database industries. (137) In addition, the comparable/reciprocal protection provision of the Directive arguably also provides “the EU with leverage in negotiations with its trading partners.” (138) It places foreign database producers in a difficult position within the European market, (139) and forces other countries to pass comparable legislation to protect databases made by EU producers.

Applying the United States example, according to the said provisions, reciprocal treatment (sui generis protection under the EU Directive) is only available for U.S. databases when the United States has an equivalent law to protect the EU databases. (140) But, as introduced above, U.S. copyright law (after Feist) only provides protection for the structures/formats of creative databases, and does not contain any “sui generis” provisions for protecting the contents of the databases. As a result, U.S. databases are not able to receive the reciprocal protection in the EU Database Directive. (141) This obviously places U.S. database service companies in a very difficult position within the European database market. (142) It arguably also strengthens the pressures of the U.S. Congress on passing a corresponding legislation in order to allow U.S. databases to obtain adequate protection in the EU. This argument is true for other countries.

3.2. Proposed WIPO Database Treaty

The EU also tried to introduce its database model on international forums. A draft of a database treaty was submitted to the World Intellectual Property Organization (WIPO) diplomatic conference in Geneva in 1996.

The drafted treaty closely followed the model of the EU Database Directive, (143) combined with the proposed language submitted by the United States, and intended to make sui generis database protection become an international norm. (144) According to this proposal, all member states are required to provide protections to “any database that represents a substantial investment in the collection, assembly, verification, organization or presentation of the contents of the database” (145) and to “prohibit the extraction or utilization of its contents.” (146)

Thus, it is clear that the treaty tries to extend the protection to the contents of databases, including non-creative database, since “substantial investment” is the sole basis for a database qualifying for such a protection. However, ultimately the WIPO failed to persuade delegates to adopt this proposed treaty. One commentator pointed out that the main reason is “most likely because the [U.S.] had not yet taken a position on the proposed treaty’s details.” (147) The commentator quoted the words from WIPO official Francis Gurry, stating “there will be no action [for WIPO] until the [U.S.] clarifies its position….” (148)

Thus, it is clear that U.S. opinions and the development of the U.S. domestic legislation on sui generis database protection will have a significant impact on the development of international database legislation, especially the formulation of WIPO database protection treaties in the future. This article will next examine the development of the sui generis database legislation in the United States.

3.3. Development of Database Legislation in the United States.

3.3.1. In General

After the EU enacted its database directive in 1996, various Bills have been drafted in the United States, but none of them have been enacted into law. (149) Put simply, there are two basic models proposed for the form of new databases legislation: (1) an exclusive property right

3.3.2. H.R. 354: The Collection of Information Antipiracy Bill of 1999

House Report 354 was introduced before the U.S. Congress on January 19, 1999, and was amended on October 8, 1999. It broadly followed the model of EU Database Directive and provided database producers an “exclusive property right” protection (sui generis protection) against misappropriation of their databases. (152)

According to section 1402 of H.R. 354, “[any] person who “extracts all or a substantial part of a collection of information gathered, organized, or maintained by another person through the investment of substantial monetary or other resources,” so as to cause “harm” to the “primary market” of that other person, or a successor in interest, shall be liable to that person or successor in interest for the civil remedies set forth in this bill. (153) Section 1402(a) prohibits similar acts by any person who makes available to others, or extracts to make available to others the protected information in a database. Through these provisions, it is clear that, like the EU Database Directive, the “investment of substantial resources” becomes the sole basis for such protection. Thus, one commentator observed that this bill recreated a limited form of the “sweat of the brow” protection rejected in Feist and provided database producers a broad right in factual compilations. (154) It is also clear that the prohibition in H.R. 354 consists of three basic elements. As one commentator summarized, the bill imposes liability on any person who “extracts or uses in commerce” (element I) all or a substantial part of a database so as to cause “harm” (element II) to the “actual or potential market” (element III) of the database producer. (155) The protection scope of H.R. 354 is arguably much narrower than that of the EU Database Directive (introduced above), (156) because the EU Database Directive does not require the claimed “extractions or/and re-utilizations” must cause “harm” (element II) to the “actual or potential market” (element III) of the database producer. Thus, to some degree, H.R. 354 seems to evidence a greater awareness than the EU Directive in terms of striking a balance between protecting fair competitions of different database producers and protecting the rights of the public to access information. As to the terms of protection, like the EU Directive, H.R. 354 also created a fifteen-year term of protection for a database. (157) Such protection is also subject to extension in order to protect cumulatively substantial updating of the database. (158)

On the other hand, like the counterpart of the EU Database Directive, the application of the right in section 1402 of H.R. 354 is also subject to some specific exceptions analogous to the fair use doctrine/exceptions in copyright. Among these exceptions, the most important one may be the exception for “reasonable uses” in section 1403(a). Like fair use provisions in the U.S. Copyright Act of 1976, section 1403(a) of the Bill provides some specific factors that should be considered in determining whether a particular use is a “reasonable use.” (159) Inclusion of reasonable use privileges makes the scope of exceptions for sui generis rights in H.R. 354 arguably broader than that of the EU Database Directive. In addition, H.R. 354 also provides many other specific exceptions for public users to use the information in a database (a non-exhaustive list of permitted acts), such as fair use measures for non-profit educational, scientific or research purposes

3.3.3. H.R. 1858: Consumer and Investor Access to Information Bill of 1999

Although H.R. 354 included much broader exceptions than the EU Database Directive, it still incurred huge criticism from information users groups, such as educational institutes, pubic libraries, and consumer groups. (162) These opponent groups proposed an alternative bill–H.R. 1858, the Consumer and Investor Access to Information Act, on May 19 of 1999. (163) Unlike the EU Database Directive and H.R. 354, H.R. 1858 did not take “proprietary rights” approach, but took an approach analogous to the common-law tort of “hot news” misappropriation. (164) This approach bases the protection of a database on the economic impact caused by a competitor in a market “free riding” on the original database, and aims to prevent unfair market conduct without expressly creating “property rights” in database contents. (165) So it is also referred to as “unfair competition law” approach. (166)

Specifically, the Bill provided two-layer protection for database producers. (167) Title I of the Bill gave database producers a right to prohibit any person or entity, by any means or instrumentality of interstate or foreign commerce or communications, from selling or distributing to the public a database that is “a duplicate” of another database and is sold or distributed in commerce in “competition” with the original database. (168) Title II provided a market information processor (169) with a right to prohibit any person or entity from obtaining, selling, distributing, redistributing, or otherwise disseminating real-time market information (170) without the authorization. (171) But the Bill is silent about the terms of protection.

Like its counterpart H.R. 354, H.R. 1858 also provides some specific exceptions (a list of permitted acts) to the application of each right. The exceptions for the right in Title I (section 102) mainly include (1) collecting or use of information through other means

In comparison with H.R. 354, the exceptions in H.R. 1858 are arguably overbroad and have reached well beyond the scope of fair use exceptions/doctrines in traditional copyright law. (175) Thus, some researchers criticize that “the bill’s exceptions overshadow its protection rendering it effectively meaningless,” (176) as ineffective in protecting incentives for database producers and investors. (177)

3.4. Criticisms and Compromises (Property Right Model v. Tort Law/Unfair Competition Law Model)

Although H.R. 354 and H.R. 1858 adopted different approaches in protecting databases–one took the EU-style “property right model,” the other took the “tort law/unfair competition law” model

3.4.1. General Criticism to Sui Generis Database Legislation & the EU Model

Some general arguments that the opponents of sui generis database legislation (especially the opponents of EU-style “property right” model) often include: (1) the EU model has arguably provided overbroad database rights for database owners

First, opponents often argue that the EU’s approach makes the protection of databases overly broad, and this could “inhibit the production of transformative databases by raising barriers to entry and costs associated with gathering, verifying and maintaining compilations.” (178) Consequently, this will have a very negative impact on the public’s right to access information, and may impede “the progress of science.” (179) McManis further summarized other opposition from some major database user groups, and stated:

The scientific research community claims that sui generis database legislation of the sort mandated by the EU Database
Directive and embodied in legislative predecessors of H.R. 354will increase costs for future research projects…. Some sectors of the information technology industry itself also … claim thatthe imposition of increased business costs will drive the entire information technology industry offshore and heighten the dangers of incipient monopoly…… Technologically orientedcompanies also predict rising costs associated with world wide web industries due to monopoly pricing…. (180)

Second, opponents highlight the different situations in the United States and the EU. Indeed, if we compare the different situations in Europe and the United States, it would not be too hard to understand why sui generis database legislation could be relatively easy to pass in the EU, but not in the United States. As discussed above, there are many internal and external reasons to push the EU to enact the Database Directive. (181) By enacting the EU Database Directive, the EU sought to harmonize database laws, overcome the barrier of free movement of database goods and service throughout the EU (internal reasons), and in particular, try to change its disadvantageous position in the EU market and digital legislation area (external reasons). There were also less complex goals: to strengthen the protection of database and to protect the incentives of private investors in the commercial database market. In contrast, the external and internal environments in the United States are quite different from those in the EU. Before the EU Database Directive was enacted, the U.S. database industries already had the leading position in the international database market (especially commercial databases). (182) The United States has built a substantial lead over Europe in Internet commerce, as a strategic sector of electronic commerce tools products, and relevant digital technologies. (183) As such, some commentators argue sui generis database legislation (whether in the EU model or H.R. 1858 model) is not necessary, and argue that “no further economic incentive is needed in the Unites States, as its database industry is not only thriving, but dominating the global market place under current U.S. law.” (184)

Thirdly, many opponents believe that believe current U.S. laws (such as copyright law, unfair competition law, and contract law) and technological protection measures have already provided adequate alternative forms of database protection, (185) especially the anti-circumvention provisions in the DMCA and contract law. In the United States, the database owner could adopt technological self-help measures to protect their databases, because the DMCA included anti-circumvention provisions and provided very strong (maybe overly strong) protection on these technological measures. The anti-circumvention provision under the DMCA not only prohibits acts of circumvention, (186) but also forbids the trafficking or distribution of devices that facilitate circumvention of technological measures. (187) In fact, such provisions have incurred huge criticism. (188) Many commentators believe that the protection provided by such provisions is overly broad and greatly threaten the public’s right to access information and make fair use. (189) Thus, even without database legislation, so long as database owners have applied certain technical protection measures to their databases, they could still obtain enough legal supports/remedies from anti-circumvention law in order to prevent database misappropriation. In addition, H.R. 354 allows rightholders to enter into licenses or any other contracts with respect to making available or extracting collections of information. (190) Unlike the counterparts of the EU Directive, H.R. 354 even allows contract to be used to override any exceptions under the Bill. (191) Thus, by using contracts, the database owners could arguably obtain enough protections for their databases. (192) As such, some American commentators argue that “the combination of sui generis database protection, copyright law, unfair competition law, contract law and encryption measures may overprotect databases” and may even cause database producers to “dominate markets and extract monopoly profits.” (193)

3.4.2. General Criticisms to the Tort/Unfair Competition Law Model

The opponents of H.R. 1858, in which the tort/unfair competition law model is adopted, often argue that the Bill contains two major flaws: (1) the Bill does not provide adequate protection for database producers to prevent data misappropriation

First, as to the scope of database right, the supporters of H.R. 1858 often argue that, by “limit[ing] the rights granted in a database to those related to commercial activities that compete with commercial uses of the database by the database owner,” H.R. 1858 successfully avoids a key “flaw” of the EU-style sui generis protection approach–defining data right too broadly in the first place and then carving out too narrow and vague exceptions (such as fair use or permitted act). (194) By contrast, the opponents of H.R. 1858 model often criticize that the database rights under this Bill as too narrow. (195) It only prohibits the misappropriation of data by a direct competitor, and creates a private cause of action, but does not provide adequate legal action for database producers. (196) They believe that the narrow database right and the overly broad exceptions to data right under this Bill makes it hard for database owners hard to get effective protection from data misappropriation. (197)

Second, many commentators argue that the tort law/unfair competition law approach hinders the development of a unified international database treaty in the future. This is one of the main reasons why the EU did not adopt an unfair competition approach. In 1999 Bastian gave two reasons why the EU adopted a sui generis property right approach rather than an unfair competition approach: (1) logistical difficulty of harmonizing unfair competition laws in different EU member states

The above analysis is also useful for assisting U.S. legislators to choose the right approach to make database protection law. The development of the Internet and globalization of commerce has made database protection a global issue. One can argue that digital legislation would be more harmonized, and a unified international database treaty should be established in the near future.

As such, adopting the EU-style database protection model would arguably not only save the trouble of harmonizing the unfair competition laws in different countries, but also facilitate the adoption of an international database treaty in the future. As one commentator pointed out, “with comparable laws the United States and the EU [both countries adopt the sui generis property right approach], it is far more likely that an international database protection treaty will be passed.” (199) (More details of the reform of H.R. 354 and future international database law will be introduced later). Nevertheless, it is hard to draw a simple conclusion as to which model is better.

3.4.3. Fruitless to Make Distinction between These Two Models & Compromised Proposal

As introduced above, both H.R. 354 (which gives strong protection based on the EU’s property rights model) and H.R. 1858 (which offers weak protection based on tort/unfair competition law) harbor major shortcomings. (200) Although the two database protection models they adopted seem to vary substantially in type and degree, both of them acknowledge “the economic desirability of protecting substantial investment in the development of databases with or without attendant creative merit” and intend to establish a new sui generis protection to database contents. (201)

As a matter of fact, as one commentator observed, the distinction between these two database legislation models is “somewhat spurious.” (202) Although the tort/misappropriation model does not expressly create a “property right” in database contents, it arguably implies some sort of “property rights.” (203) As one commentator argued, “[i]t is impossible to have a tort law based on misappropriation of property without accepting in the first place the existence of the property.” (204) On the other hand, the implementation of the “property right” model seems also to imply some sort of “unfair competition law” thought. For example, as introduced above, H.R. 354 defines and limits the liability only to the person who misappropriates “in commerce” the contents of a database so as to cause “harm” to the “actual or potential market” of the database producer. (205) This provision arguably demonstrates that H.R. 354 has realized the significance of a “fair competition order” on protecting database contents, and it attempts to strengthen the protection to database contents by regulating the conduct of would-be competitors in the market.

Thus, as one commentator pointed out, a debate that focuses on choosing between these two models is often “fruitless” or meaningless, and will likely “only lead to inadequate draft legislation.” (206) Future legislators should focus on solving specific problems in these two bills rather than choosing between the two models, and try to work out a more feasible “compromise proposal.” Such proposal should try to strike a proper balance of benefits for all parties. Specifically, as one commentator suggested, “[it should] be designed to encourage the creation of innovative databases in the United States without impeding the access of data by the scientific community and the public in general, while ensuring that the United States does not fall behind other countries in the new global information-based economy.” (207)

This article will compare some specific provisions in the EU Database Directive and bills in the United States, and try to explore the specific legal problems of this legislation and provide some specific suggestions for future reforms.

4. SPECIFIC PROBLEMS OF SUI GENERIS DATABASE LAW AND RECOMMENDATIONS

4.1. Specific Legal Problems In These Two Bills & Recommendations

Put simply, major problems in the U.S. bills usually include: (1) poor balance of benefits for all parties caused by the vague database rights definitions and exception provisions

4.1.1. Poor Balance in Sui Generis Database Law v. Broad Fair Use Doctrine

As introduced above, both database protection models have failed to strike a good balance of benefits to all parties. The EU Directive and H.R. 354 are arguably in favor of database producers and seem to offer too much protection for database makers. H.R. 1858, on the other hand, is arguably more supportive of data user groups and seems to fail to provide sufficient legal protection for database makers. (208)

One of the main reasons for such an imbalance may be that these sui generis database statutes all lack an effective “balance measure” such as the “fair use doctrine” in copyright law. As discussed before, under current database legislation regimes, the format and structure of a database (original selection and arrangement of data) is usually subject to the protection of traditional copyright law, while the content of a database is subject to the protection of the new sui generis database legislation. (209) As a result, the “fair use doctrine” under copyright law is only applicable to the structure of a database rather its contents. (210)

Thus, legislators have to adopt some alternative approaches to balance the benefits between database content owners (database producers) and database users. Both the EU Database Directive and the U.S. bills have provided some specific exceptions for users to make lawful use of database contents (as introduced above), but it seems that none have struck a balance between the benefits and the “fair use doctrine” of copyright law.

Put simply, narrow mandatory exemptions and vague non-mandatory exceptions under the EU Database Directive provide too much protection for database owners (211) and greatly increase the difficulties, uncertainties and costs for pubic users (especially scientific researchers) to access and make fair use of the data in databases. (212) The U.S. Bill H.R. 354, which closely follows the EU model, also contains similar shortcomings. McManis gave a specific example in the U.S. legislation to illustrate the harm caused by strong database protection. (213) He said following privatization of data from the Landsat series of remote-sensing satellites, the prices of Landsat data increased from approximately $400 to $4,400 per image. (214) Such prices obviously go beyond the affordability of most academics and independent researchers. This would clearly have a negative influence for academic research and the progress of science. In contrast, the exceptions specified in H.R. 1858 (a list of permitted acts) are arguably too broad. The “narrowed database right” and the “overly broad exceptions to data right” under this Bill make it hard for database owners to find adequate legal arguments/supports to prevent data misappropriation. (215) This is obviously not good for achieving one of original purposes of sui generis database legislation–protecting the incentive of database producers to continuously develop and invest in databases. (216)

Although it seems that none of the current legislation or bills have achieved a desirable balance between database producers and database users, the U.S. Bill H.R. 354 seems to strike a little bit better balance than the two others. This is mainly because it took an approach (“the reasonable use” approach) analogous to the “fair use” approach in traditional copyright law and created a “reasonable use privilege” for the public to access and make a lawful use of database content. (217) By adopting a “specific exceptions plus court’s discretion” legislative model, H.R. 354 evidences a greater awareness than the EU Directive of the problem of preserving the information access right of public users. (218)

Sound legislation should always strike a good balance of the benefits to all parties. The “fair use” provisions under copyright law have arguably provided a very effective approach/legal mechanism (“specific exceptions plus court’s discretion” approach) for balancing the benefits to all stakeholders in the copyright law under various circumstances. (219) So this article argues that future legislators may apply the fair use doctrine more broadly, but not through the lens of copyright law. It may also be applicable for database protection and serve as a balance measure/tool to balance the benefits of database content owners and data users. (220) Future legislation may explicitly provide that the “fair use” provision (in section 107 of DMCA) also apply to database content. Even going further, the congress may provide the court the discretion in determining the scope of the “fair use” doctrine. This article believes that, although H.R. 354 is far from perfect, it may serve as an example of imitating (or drawing on experiences from) the “fair use” approach in copyright law to protect the access information right of the public.

4.1.2. Different Approaches on Term of Protection Versus Public Domain

As mentioned before, both the EU Directive and H.R. 354 provide a fifteen-year term of protection for database/information collection, (221) and both provide that such protection may be extended in some circumstances. Nevertheless, they adopted different approaches to regulate the extended protection.

The EU Database Directive takes a “dynamic protection approach” and applies the extended protection (renewed additional fifteen-year protection) to the new edition of a database in its entirety. (222) Article 10 of the EU Database Directive provides any qualitatively or quantitatively “substantial change” to the contents of a database, including one resulting from the accumulation of successive additions, deletions or alterations, “which would result in the database being considered to be a substantial new investment,” shall qualify the resulting database–and not simply the new material–for its own 15 year term of protection. (223)

By contrast, H.R. 354 adopts a “variable term of protection approach” and only applies the extended protection to the new material of the updated database. (224) Section 1409(c) of the H.R. 354 provides that no action may

[B]e maintained for making available or extracting all or a

substantial part of a collection of information that occurs more

than 15 years after the portion of the collection that is made

available or extracted was first offered in commerce following

the investment of resources that qualifies that portion of the

collection for protection. (225)

Moreover, H.R. 354 explicitly stated that the person claiming protection has the obligation to distinguish what data in that database is new and what has been previously protected. (226)

These two approaches have advantages and disadvantages. Because the “dynamic protection approach” of EU grants a new term of protection for each new edition of the database, it is obviously good for encouraging database producers to make further revisions and developments of their databases. But a problem that arises when applying this approach is that the term of protection may “effectively be perpetual” for some frequently updated online databases. (227) Moreover, because the extended protection would be applied to updated databases in its entirety, this means that the old materials (over 15 years old) would also get the extended protection and could not enter the public domain. This is obviously not good for protecting the public’s rights to access information.

By contrast, HR. 354’s “variable protection approach” seems to provide a better solution for such a problem. The United States’s variable protection model provides a fixed term of protection to the original materials of the database, and protects new entries in future editions of the database for a similar term. (228) Because it makes a distinction between old materials and new entries, and the extended protection only applies to new entries, this model is obviously good for old material entering the public domain, and protects the public’s benefits. Thus, it may serve as a good model for future database legislation in terms of defining the scope of extended protection.

But some commentators criticize that the said model may be impractical, because it is hard for both database producers and data users to distinguish the old materials and new entries (those modifications that were made after the initial term expires). (229) Under current H.R. 354, both database producers [plaintiffs] and data users [defendants] may have to bear the potential burden of proving the nature/protectionability of the claimed materials. (230) As McManis summarized, “either the database developer [plaintiff] would have to provide notice, which would create unnecessary bulk and complexity within the database, or the user [defendant] would incur the burden of identifying which entries were protected and which were not.” (231)

Nevertheless, this article suggests that database producers should bear a greater burden of proof than data users. This is so for several reasons: First, producers of data collection have more technical advantages (facilities, experiences, special knowledge) than common data users to prove the nature of data/material in their database. Second, since sui generis database legislation in general is arguably in favor of protecting database producers’ (especially the producers of commercial databases) benefits, in order to strike a good balance between benefits of all stakeholders, database producers should pay counter-price for it–bear more of a burden of proof. Third, this enterprise (database producers) should assume social responsibility under the Constitution, and enhance the public’s access for information, and progress of science.

Specifically, the article suggests that future legislation may provide, in certain circumstances, that if a data user could not, or has difficulty providing enough evidence to prove the nature of claimed materials, then the court would have a discretionary right to reverse the burden of proof and place the burden on the database producers. It may also explicitly obligate the database owner to periodically release expired data/materials to the public domain, such as by establishing separate databases. Nevertheless, it might be volunteer-based at the beginning stage. The Government may also provide funds and good policy to encourage the database producers to do so.

4.1.3. Problems of Contractual Provisions & Proposed Limitations

The H.R. 354 explicitly provides that the law of contracts is not affected by the database protection provided under the Bill, (232) and it allows rightholders freely to enter into licenses or any other contracts with respect to making available or extracting collections of information. (233) This means that contract law can even be used to override exception provisions under H.R. 354. As a result, as some commentators have criticized, the exceptions listed in H.R. 354, designed to protect lawful uses, becomes “less helpful than they initially appear” because database producers may be able to “force consumers to contract around these exceptions.” (234)

By contrast, the EU Directive seems to provide a good model for solving this problem. As introduced above, the Directive explicitly provides no contractual provision could preempt the limitation provisions in article 8–the provisions on “rights and obligations of lawful users.” (235) Through this provision, the Directive avoids the risk that users may be forced to contract away their rights of making lawful use of data under the statutory exceptions in article 8.

A similar approach could also be adopted in the amendment of H.R. 354. Amended H.R. 354 may explicitly provide that any contractual provision contrary to section 1403 “permitted acts,” or section 1404 “exclusions,” is “null and void.”

The main purpose of the proposed provision is not to prevent database producers from restricting the access and use of database contents through contracts, but to prevent them from overriding statutory exceptions through forced contracts. (236) Database producers would still have a right to freely enter into licenses or any other contracts with respect to the use of information in the databases, but they could not force data users to contract away their rights under the statuary exceptions to H.R. 354.

4.1.4. Strengthening Controls on Database & Strengthening Database Registration and Administration Mechanism

In order to improve the enforceability of database legislations, this article believes it is necessary to establish a set of effective legal mechanisms to strengthen the controls to databases, for example, establishing a new database registration mechanism. Amended bills could encourage all database producers to register their databases in an appointed government agency. (This could be on a volunteer-basis at the beginning stage.)

One commentator has said that “maximum copyright protection is often only available if the copyright is registered.” (237) It is the same with database protection. As a matter of fact, the current U.S. Copyright Office Circular 65 [hereinafter “Circular 65”] has included a specific instruction on “copyright registration for automated databases,” (238) although it was mainly designed for protecting the original format/structure of a database rather than the database contents. Circular 65 provided that all “automated databases” that meet the threshold originality requirement may be registered with the U.S. Copyright Office. (239) Moreover, it provides that automatic databases may be registered individually or by group (with accompanying updates and revisions). (240) And the updates and revisions to a database may also be registered separately. (241) Such a division would obviously encourage users to distinguish between the materials in the original database and new materials in the updated database. This would also greatly facilitate the enforcement and implementation of H.R. 354’s “variable protection term” approach in practice, and consequently strengthen the protection to the public domain.

Moreover, in 2003, Lipton provided some specific suggestions on how to establish a new database law, including how to establish both registration and administration mechanisms. (242) Although Lipton made suggestions from the perspective of applying unfair competition law, and the scope of database protection was only limited to “commercial databases,” some of her suggestions are still very valuable, and could be applied more generally in both amended H.R. 354 and amended H.R. 1858. These suggestions include:

* Under a new database law, a databases register administered by a new body should be set up to investigate database registration applications (as with patent)

* The administering body should ensure that “no similar databases are already registered for the same or similar markets,” and the applicant would be required to submit a business plan that “evidences a bona fide intention to commercialise the database in the identified market(s)

* The new law should include provisions to protect the public domain, and the administering authority should have the power to investigate whether information contained in a certain database should be released into the public domain or whether a compulsory license should be issued

* The administering body might ultimately be entitled to hear certain disputes relating to databases, along the lines of mediation or arbitration. (246)

Having said that, when establishing a new legal/administrative mechanism for strengthening the control of databases, future legislators should always take into account the current provisions and mechanisms in Circular 65. In fact, Circular 65 has provided a good model for regulating database registration (in particular, its “group registration mechanism” introduced above).

Moreover, it may not be necessary to set up a completely new body to administrate the databases. The special government agency (for database registration and administration) could still be in the U.S. Copyright Office, such as in a special working unit of the Copyright Office. Nevertheless, an amended bill should strengthen the power of such working units by entitling them to hear certain database disputes, (247) and take necessary measures to defend the public domain. The amendment should also clarify the major duties and objectives of this working unit. Its duties or objectives may include:

* strengthening control of Databases in general (enlarge the scope of registration)

* enhancing the enforcement of database legislation (amend Circular 65)

* enhancing the competition order of database market

* reducing repeated development of similar databases

* balancing benefits between public users and right holders

* facilitating evidence collection (such as distinguish old and new materials in updated databases)

* relieving the court’s burden on database disputes.

4.2. Reexamining the EU Reciprocal Protection Provision & Establishing Proper Legislative Strategies & New Order and Rationale of Digital Legislation

Going beyond providing specific legal suggestions, this section reexamines the impact of the “reciprocal protection provisions” of the EU Database Directive on the database law-making in other countries, and make some suggestions for other nations to formulate proper legislative and development strategies or policies with their own features. It also argues for establishing a new order or rationale of international digital legislation–the leadership of digital legislation should always belong to the country that is best able to make laws that balances the interests of all parties.

4.2.1. Impacts of the EU Reciprocal Protection Provision & A Shift of the Legislative Focus

As introduced above, the EU Database Directive included a highly protectionist “reciprocity protection provision,” which allows EU member states to extend sui generis protection to a foreign database only if the foreign country also offers comparable protection to EU databases. (248) Many critics note that such a provision is in conflict with the basic principle of TRIPS, the Berne Convention and the Paris Convention–National Treatment. (249)

The implementation of such a provision not only places database producers of other countries (both developed and developing countries) in a difficult position within the European market, but also arguably creates pressure for other countries to follow the EU’s leadership in the database legislation area. (250) As such, one critic noted that the EU had created a “dangerous precedent” that industrialized nations with sufficient market power can use reciprocity provisions to “influence the public policy choices of other countries,” and “force sui generis intellectual property provisions on other countries,” especially in developing countries. (251)

Actually, the EU reciprocity provisions have even influenced the legislative policy of advanced industrialized nations like the United States. Many commentators and database producers in the United States now seem to focus more on whether the U.S. database legislation could meet the requirement of EU “reciprocity provision,” (252) rather than focus on how to make a good database law that strikes a balance beneficial to all parties, thus enhancing scientific progress. Critics worry whether the provisions of the term of protection in H.R. 354 could be considered to be comparable with the EU Directive. (253) They also worry about whether exception provisions in U.S. bills would be considered broader than the EU’s counterpart.

As a matter of fact, many provisions in the U.S. bills, such as the “variable protection model” for defining the terms of protection, and the “fair use” style exception mechanism in H.R. 354, have arguably evidenced greater awareness than the EU Directive in terms of balancing the needs of commercial database producers and the needs of the public to access information. (254)

Thus, future U.S. legislators and commentators should shift the debate away from a focus on the Bill’s comparability to the EU Directive. More attention should be paid to how to make a law in which better balance could be struck, and should always bear in mind the original purposes of sui generis database legislation and the requirements of the U.S. Constitution: strengthening the protection for collections of information/databases

and data users

4.2.2. Formulating New Database Legislation Strategy & Establishing New Legislation Order in the Digital Age

Going beyond making suggestions for solving the specific problems in the current U.S. bills, this article also provides some suggestions on a strategic level. It suggests that future legislators should attempt to apply various methods and strategies to cope with the disadvantages caused by the EU Database Directive, such as establishing an international database treaty.

As discussed before, the Internet declared the coming of the digital age, and the development of digital technology makes accessibility to databases outside one’s home country increasingly easier. (258) This also makes database protection and anti data-piracy into an international issue. This issue cannot be solved by individual countries

This article appreciates and acknowledges the contribution that the EU Database Directive has made–it provides a fundamental model of database legislation for the United States and the rest of the world, and could serve as a good source of law. But this does not mean the EU Directive is prefect and all other countries must follow it completely. (259) What the United States and all other countries should learn from the EU is not just its database legislation model, but its legislative strategy in general. One of the most significant features of the EU Database Directive is that it “suits the specific situations in the EU.” (260) The Directive provided a good example of how a country can use advanced legislation to change its disadvantageous situation in international database and the EU market, to increase the competitiveness of its enterprises, and even influence policy and law making in other countries.

This article argues that the correct strategy the U.S. government should take is not just to draw on the successful experiences of the EU, but try to get back its leadership in international database legislation by introducing alternative models (261) which would be a better balance for all parties. (262) So long as the amended U.S. bill can maintain its advantages and overcome its potential problems (by the methods proposed above), then it will arguably be able to achieve improved benefits for database owners and the public users than did the EU Directive. Subsequently, the United States may propose its amended bill to the WIPO, in an attempt to make it a model for future international database treaty. Future database treaties should consider the benefits to all parties, and even balance the benefits of all countries. It should not serve as a tool for industrialized nations with sufficient market power to impose their Intellectual Property legislation model on other countries, especially on developing countries.

By doing this, the United States government will not only contribute to establishing a better database legislation, but will also contribute to a new order of international digital legislation in general. Namely, that the leadership of international digital legislation should not always be taken by the country that first makes the law, but by the country that makes the best law. Although the above legislative strategies are mainly suggested for U.S. legislators, they are arguably also applicable to other countries. The reestablishment of values and a new order of international legislation in a digital era is not just the responsibility of the United States, but the responsibility of every country in the world.

5. CONCLUSION

In 1756, Voltaire told us that “[t]he true conquerors are those who know how to make laws. Their power is stable

The EU Database Directive not only provided a fundamental model for the database legislation in the world, but also provides us with an example of how a country can use advanced legislation to change its disadvantaged situation in the international database and EC market, and even influence policy and law making in other countries. All countries, including developing countries, should always bear in mind the words of Voltaire, that they may increase their international competitiveness and change their disadvantaged situations by making good laws, thus becoming the “true conquerors” of the world.

This article argues that “the interest of a nation is only best served by tailoring its intellectual property regimes to its particular economic and social circumstances.” (264) As such, the establishment of a new digital legislation in a country should always be based on the specific situations in that country, and should be consistent with that county’s development policy, trade need, legislative development, and judical practices. Countries, especially industrialized nations with sufficient market power, should not try to use their legislation to influence the law-making and the public policy choices of other countries (especially developing countries). (265)

Nevertheless, the achievement of these goals must be based on sound international legislation. The following rationales should be established: the leadership of digital legislation should always be taken by the nation that makes the best law

(1.) Jacqueline Lipton, Databases as Intellectual Property: New Legal Approaches, 2003 EUR. INTELL. PROP. REV. 139, 139 (2003) [hereinafter Databases as Intellectual Property].

(2.) Id.

(3.) Amy C. Sullivan, When the Creative is the Enemy of the True. Database Protection in the U.S. and Abroad, 29 AM. INTELL. PROP. L. ASS’N. Q.J. 317, 324 (2001).

(4.) Under current technologies, as one commentator stated, “the click of a mouse may result in the theft of large amounts of information with nearly instantaneous, widespread dissemination.” See id. at 323-324.

(5.) Lipton, Databases as Intellectual Property, supra note 1, at 139.

(6.) Id.

(7.) Id.

(8.) Sullivan, supra note 3, at 353.

(9.) See Database Proposals and Legislation: 106th–108th Congresses, available at http://www.arl.org/info/frn/copy/database.html (last visited Mar. 23, 2005) (on file with the Rutgers Computer and Technology Law Journal).

(10.) Sullivan, supra note 3, at 355.

(11). Id.

(12.) Comparing these three treaties, a database is classified as “collection” by the Berne Convention, but is classified as a “compilation” by the TRIPS and the WCT. Nevertheless, according to the WIPO official explanation, the meanings of “collection” and “compilation” do not have substantive differences. See Geneva Diplomatic Conference on Certain Copyright and Neighboring Rights Questions, WIPO CRNR/DC/4 (Dec. 2-20, 1996), available at http://www.wipo.int/ documents/en/diplconf/4dc_a05.htm (last visited Jan. 21, 2005) (on file with the Rutgers Computer and Technology Law Journal). Notes on Article 5 explicitly state:

The wording of Article 5 [of the WCT] follows closely the provision

on the protection of databases in Article 10.2 of the TRIPS

Agreement. The term “collection” has been used in the proposal while

the TRIPS Agreement uses the term “compilation.” No substantive

difference is intended. “Collection” is a term used in Article 2(5)

of the Berne Convention for a protectable collection of works, while

in the proposed Article 5 the term “collection” refers to all

collections or compilations of data or other materials, including

works.

Id. As such, it is clear that there is no substantive difference between the meaning of “compilation” and the meaning of “collection.” The only difference might be that the scope of “collection” in the WCT proposal (and “compilation” in the formal WCT) may be broader than that of “collection” in the Berne Convention.

(13.) Berne Convention for the Protection of Literary and Artistic Works 1971, art. 2, para. 5, available at http://www.law.cornell.edu/treaties/berne/ overview.html (last visited Jan. 21, 2005) (on file with the Rutgers Computer and Technology Law Journal) [hereinafter Berne Convention].

(14.) The Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, art. 10(2), available at http://www.wto.org/english/docs_e/legal_e/ 27-trips_01_e.htm (last visited Jan. 21, 2005) (on file with the Rutgers Computer and Technology Law Journal) [hereinafter TRIPS]

(15.) TRIPS, supra note 14, at art. 10(2)

(16.) The WIPO Copyright Treaty, Dec. 1996, art. 5, available at http://www.wipo.int/documents/en/diplconf/distrib/94dc.htm (last visited Jan. 21, 2005) (on file with the Rutgers Computer and Technology Law Journal) [hereinafter WCT].

(17.) Id.

(18.) Julie Wald, Note, Legislating the Golden Rule: Achieving Comparable Protection under the European Union Database Directive, 25 FORDHAM INT’L. L.J. 987, 1007 (2002). In the terminology of U.S. copyright law, a database is a “compilation” and the history of “compilations” protection in the United States can be tracked back to the eighteenth century–the Copyright Act of 1790. U.S. Copyright Office, Report on Legal Protection for Databases–Excerpts of the Executive Summary, (Aug. 1997), available at http://www.asis.org/Bulletin/Dec97/copyright.htm (last visited Mar. 23, 2005) (on file with the Rutgers Computer and Technology Law Journal) [hereinafter U.S. Database Summary]. See also, U.S. Copyright Office, Report on Legal Protection for Databases (Aug. 1997), [section] I (A), available at http://www.copyright.gov/reports/dbase.html (last visited Feb. 3, 2005) (on file with the Rutgers Computer and Technology Law Journal) [hereinafter U.S. Database Report].

(19.) U.S. Database Summary, supra note 18, at [section] I.A.

(20.) Id.

(21.) Id. The main purpose of the “sweat of the brow” doctrine was to “reward the labor and investment involved in compiling a database and was based on the natural law concept that individuals are entitled to the fruits of their labor.” Sullivan, supra note 3, at 327. According to this doctrine, it was possible for some factual databases to get copyright protection if database producers could demonstrate they had made sufficient effort and investment when establishing the database, even though the databases might not otherwise meet the creativity/originality requirement for copyright protection. See David G. Wille, et. al., Symposium, Exploring Emerging Issues. New Intellectual Property, Information Technology, and Security in Borderless Commerce–Protection and Enforcement of New Intellectual Property, 8 TEX. WESLEYAN L. REV. 467, 471. (2002). See also Wald, supra note 18, at 1008-1009.

(22.) The U.S. Database Summary states “[a]ny copying from a protected compilation was generally held to be an infringement.” U.S. Database Summary, supra note 18, at [section] I(A). Thus, the scope of database protection under “sweat of the brow” doctrine is clearly much broader than that of existing international treaties (introduced above). As a result, to avoid an infringement, a would-be competitor would have “to go to the original sources and compile the material independently” when establishing a new database. In some sense, copyright law was essentially used as “a means of policing unfair competition.” Id.

(23.) In a series of decisions from 1879 to 1903, the U.S. Supreme Court held that the “writings” that could receive copyright protection “only such as are original” and indicated that “creativity is a component of originality.” See Trade-Mark Cases, 100 U.S. 82, 94 (1879)

(24.) The 1976 Act included a definition of “compilation” which, for the first time, provided express statutory requirements of originality on “compilations.” The 1976 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.” 17 U.S.C. [section] 101 (2000).

(25.) See 17 U.S.C. [section] 101 (2000) (emphasis added). Thus, it compels a court to examine the originality of a compilation’s “selection, coordination, or arrangement” to determine whether the compilation is copyrightable. See U.S. Database Report, supra note 18, at [section] I.A.

(26.) The Act explicitly provides “[i]n 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.” 17 U.S.C. [section] 102(b) (2000).

(27.) See Feist Publ’n, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340 (1991)

(28.) One commentator pointed out that, during that period, “despite their differences, courts used the two theories in a complementary fashion and also relied on economic justifications embodied in the common law concepts of contract, unfair competition, misappropriation, and trespass.” See Sullivan, supra note 3, at 327-328. Nevertheless, the different approaches obviously increased the uncertainty of a court’s judgment on database protection, and also set the stage for the Supreme Court’s landmark decision in Feist–formulating a single approach to determine the copyrightability of a compilation. Id. at 329.

(29.) 499 U.S. 340 (1991).

(30.) The Court believes this doctrine “flouted basic copyright principles” and failed to satisfy the basic constitutional requirement of originality. See id. at 354. Further, the Court stated, “[t]hroughout history, copyright law has ‘recognized a greater need to disseminate factual works than works of fiction or fantasy.’ … But ‘sweat of the brow’ courts took a contrary view

(31.) See id. In other words, after Feist, courts moved away from the traditional dual system of protection based on both “sweat of the brow” doctrine and “originality test” to a unitary system based on “originality test” only. See Sullivan, supra note 3, at 339. See also U.S. Database Report, supra note 18.

(32.) See Feist, 499 U.S. at 350-51.

(33.) Wille, supra note 21, at 471

(34.) The Court pointed out that “originality” requires two distinct components: “independent creation plus a modicum of originality.” See Feist 499 U.S. at 345-346. The Court also stated “presumably, the vast majority of compilations will pass this test [of originality], but not all will. There remains a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent.” Id. at 358-359.

(35.) See id. at 349. The Court stated, “This inevitably means that the copyright in a factual compilation is thin …” Id.

(36.) See, e.g., in Kregos v. Associated Press, 937 F.2d 700 (2d Cir. 1991) (holding that the plaintiffs “pitching form,” a form comprised of nine statistics about a pitcher’s performance, is copyrightable)

(37.) See U.S. Database Summary, supra note 18, [section] I.C.

(38.) 945 F.2d 509 (2d Cir. 1991).

(39.) After a specific investigation, the Court found that the Key Directory contained an original selection of businesses in its classified listings. Id. at 513. It also found that the arrangement of the Key Directory into categories (such as Bean Curd & Bean Sprout Shops) met the Feist test of originality when “viewed in the aggregate.” Id. at 514.

(40.) Id. at 515-516.

(41.) See id. The Court believed that defendant Chinatown Today merely appropriated some of the unprotected facts contained in Key’s directory and compiled them differently in his own directory. Id. at 514-515. See also Wille, supra note 21, at 472.

(42.) Robert M. O’Neil, Symposium on Intellectual Property: Campus Database Issues, 27 J.C. & U.L. 109, 109 (2000).

(43.) Id. See also Charles R. McManis, Symposium–Information and Electronic Commerce Law. Comparative Perspectives: Database Protection in the Digital Information Age, 7 ROGER WILLIAMS U. L. REV. 7, 22 (2001).

(44.) See id., at 21.

(45.) Lipton, Databases as Intellectual Property, supra note 1, at 139.

(46.) Further, Lipton summarized the various different business models for commercializing databases and stated: “In some models, customers are charged fees for access to electronic information per se, as with many online libraries. In other models, the access to the information is free, but the customer pays to purchase a particular product or service after having searched an online collection of information.” Id.

(47.) See O’Neil, supra note 42.

(48.) McManis, supra note 43, at 22.

(49.) Sullivan, supra note 3, at 324.

(50.) McManis, supra note 43, at 22.

(51.) Id.

(52.) Wald, supra note 18, at 994-995. See also Sullivan, supra note 3, at 323-324.

(53.) McManis, supra note 43, at 23.

(54.) Once producers make their databases available online, their businesses run a significant risk of “unfair competition

(55.) Databases are often expensive to create and maintain. They require database producers to invest substantial resources, including money, time, and personnel. See Sullivan, supra note 3, at 324.

(56.) Wald, supra note 18, at 994.

(57.) Sullivan is one of the oldest companies to provide information services relying on databases in the United States. See Sullivan, supra note 3, at 319.

(58.) The Comprehensive Training Record is a product that provided nearly one-hundred statistical measures about every thoroughbred trainer’s performance. See Sullivan, supra note 3, at 342.

(59.) Id. John P. Broadbent, a Bloodstock employee stated, “We are not in the business of putting other people in business.” Citing Telephone Interview with John P. Broadbent (Dec. 15, 2001).

(60.) Sullivan, supra note 3, at 342.

(61.) See Haimo Schack, Symposium: Panel 1: Anti-Circumvention Measures. License Restrictions, And The Scope Of IP Protection: Protection From Copying Or Protection From Competition

(62.) Jennifer Newton, Note, Global Solutions to Prevent Copyright Infringement of Music Over the Internet: The Need to Supplement the WIPO Internet Treaties With Self-Imposed Mandates, 12 IND. INT’L. & COMP. L. REV. 125, 149-50 (2001).

(63.) 499 U.S. 340, 348 (1991).

(64.) Id. at 348.

(65.) See McManis, supra note 43, at 23-24

(66.) Computer searchable databases are often “not organized in any humanly understandable manner” until a user sends a specific request. McManis, supra note 43, at 24. As a result, it is sometimes hard to demonstrate that they contain material selected or arranged in an organized manner, and involve a minimum degree of creativity. U.S. Database Report, supra note 18.

(67.) McManis, supra note 43, at 22.

(68.) Id.

(69.) Sullivan, supra note 3, at 340. Further, Sullivan stated “in order to maximize the value of databases, their contents must be made available in amounts and forms consistent with market demand,” and “many electronic database consumers may not be as interested in the arrangement of data within the database as they are interested in raw data itself. This is particularly true in light of software that allows users to process the raw data into more usable forms.” Id. As such, under the present working model, as McManis pointed out, “Internet databases are generally arranged to maximize storage capacity and only become arranged for human use upon a user’s individual request.” See McManis, supra note 43, at 22.

(70.) See WILLIAM F. PATRY, COPYRIGHT LAW AND PRACTICE Vol. 1, 202 (1994). See also Sullivan, supra note 3, at 340-41.

(71.) Sullivan, supra note 3, at 342.

(72.) 499 U.S. 340, 349 (1991). The Court stated, “notwithstanding a valid copyright, a subsequent compiler remains free to use the facts contained in another’s publication to aid in preparing a competing work, so long as the competing work does not feature the same selection and arrangement.” Id.

(73.) 56 U.S.P.Q.2d 1144 (S.D.N.Y. 2000).

(74.) Id.

(75.) Id. at 1147. The Court stated its reasoning as follows:

Creation of the compilations represented by the Sourcebooks

required, in the first place, the selection of particular

businesses information with respect to which would be of

interest to persons involved, in some way, in licensing.

Plaintiffs selection is closer to the selection of businesses

of interest to Chinese-Americans found entitled to protection in

Key Publications than to the white pages telephone directory

found not entitled to protection in Feist. Plaintiff also

determined “which categories to include and under what name.”

Key Publications, 945 F.2d at 514. Further, the particular

information to be given as to each business entity had to be

determined. The ultimate issue is whether the arrangement of the

Sourcebooks “viewed in the aggregate,” is original. Id. As in

Key Publications, this Court finds that, given the necessary

process of selection and arrangement that went into the

Sourcebooks, those works “entailed the de minimis thought needed

to withstand the originality requirement.” Id. However, “the

copyright in a compilation is thin,” Feist, 499 U.S. at 349, even

if not “anorexic.” Key Publications, 945 F.2d at 514.

EPM Communications, 56 U.S.P.Q. 2d at 1147. This reasoning demonstrates how the teachings of Feist and Key Publications are applied in determining the creative originality and copyrightability of compilations.

(76.) EPM Communications, 56 U.S.P.Q. 2d at 1146-47. In other words, as one commentator summarized, “It was undisputed that Notara engaged in substantial copying from EPM’s Sourcebook, and made available the same information at www.notara.net.” See Sullivan, supra note 3, at 335.

(77.) EPM Communications, at 1144-45. The person searching for information must input “keywords.”

(78.) Id. at 1149-50. Because Notara subscribers may choose any “keywords” they desire when they use the search engine to locate information, Notara arguably did not import the format of the EPM Sourcebook into its online directory. Id. at 1145

(79.) In addition, it should be noted that, besides the inherent problems in current copyright law, other existing laws have generally proved somewhat lacking in terms of database protection. See Lipton, supra note 1, at 139. Further, Professors Samuelson and Reichman provided a summary about the limitations of existing laws on database protection, and stated:

The core idea underlying current sui generis proposals to protect

database contents is sound … Firms that make the contents of

databases accessible to the public often become vulnerable to

market-destructive appropriations that existing laws do not

adequately remedy. Trade secret laws cannot protect database

developers who make the contents of their databases accessible

to the public…. Patents are seldom available for database contents

on subject matter grounds and also, because of the largely

incremental character of database development, database contents

would typically fail the requirement of non-obviousness. Even

contract law has significant limitations when mass-marketed

information products are sold to persons not in privity with

the makers.

See J.H. Reichman and Pamela Samuelson, Intellectual Property Rights in Data? 50 VAND. L. REV. 51, 137 (1997)

(80.) 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, available at http://europa.eu.int/ISPO/infosoc/legreg/docs/969ec.html (last visited Jan. 17, 2005) (on file with the Rutgers Computer and Technology Law Journal) [hereinafter EU Database Directive].

(81.) A European Initiative in Electronic Commerce, available at http://www.bakernet.com/ecommerce/european%20ini%20ecom.pdf (Apr. 16, 1997) (on file with the Rutgers Computer and Technology Law Journal)

By its very nature, electronic commerce is transnational and

encourages cross-border ordering and delivery of goods and

services. It directly stimulates competition in the Single

Market. The Single Market, in turn, offers electronic commerce

the prospect of a critical mass of businesses and customers across

national borders. In addition, electronic commerce gives peripheral

regions new opportunities for accessing main markets. Electronic

commerce represents, therefore, a potentially vital factor for

cohesion and integration in Europe.

Id. at para. 16.

(82.) Id. at para. 18.

(83.) Id.

(84.) Wald, supra note 18, at 998.

(85.) See EU Database Directive, supra note 80, at recital 9.

(86.) McManis, supra note 43, at 29-30.

(87.) Id. at 30.

(88.) See supra notes 46-47 and accompanying text.

(89.) For more details, see EU Database Directive, supra note 80, at recital 2. It states:

[W]hereas such differences in the legal protection of databases

offered by the legislation of the Member States have direct

negative effects on the functioning of the internal market as

regards databases and in particular on the freedom of natural and

legal persons to provide online database goods and services on

the basis of harmonized legal arrangements throughout the

Community….

Id. See also id. at recital 3. It states “[w]hereas existing differences distorting the functioning of the internal market need to be removed and new ones prevented from arising, while differences not adversely affecting the functioning of the internal market or the development of an information market within the Community need not be removed or prevented from arising.” Id.

(90.) See id. at recital 12. It stated “whereas such an investment in modern information storage and processing 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 makers of databases.”

(91.) See id. at art. 1.2.

(92.) Id. at art. 1.1. See also U.S.Database Summary, supra note 18.

(93.) See EU Database Directive, supra note 80, at art. 1.3.

(94.) See also Michael Freno, Note, Database Protection: Resolving the U.S. Database Dilemma with an Eye Toward International Protection, 34 CORNELL INT’L L.J. 165, 182-83 (2001).

(95.) See EU Database Directive, supra note 80, art. 3.1.

(96.) See id., at art. 3.1-3.2. Article 3.2 provided “the copyright protection of databases provided for by this Directive shall not extend to their contents and shall be without prejudice to any rights subsisting in those contents themselves.”

(97.) See U.S. Database Report, supra note 18, at [section] IV. B. 2

(98.) See EU Database Directive, supra note 80, at art. 3.1.

(99.) Id. Article 3.1 states that “in accordance with this Directive, databases which, by reason of the selection or arrangement of their contents, constitute the author’s own intellectual creation shall be protected as such by copyright. No other criteria shall be applied to determine their eligibility for that protection.” Id. Moreover, some commentators pointed out, “the Directive requires a ‘modicum of creativity’ and leaves to the Member State legislatures and the European Court of Justice, the further development of the creativity standards.” See Wald, supra note 18, at 1002.

(100.) See Wald, supra note 18, at 1000. See also EU Database Directive, supra note 80. Recital 25 stated “whereas the term of copyright is already governed by Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights (3).” Id.

(101.) Id. at art. 6. See also U.S. Database Summary, supra note 18.

(102.) EU Database Directive, supra note 80, at art. 5.

(103.) Id. at art. 6.1.

(104.) Id. at art. 15.

(105.) For more details, see id., at art. 6.2(a)-(d).

(106.) Id. at art. 6.2(d)(1).

(107.) For example, if there is no exception for criticism, comment and news reporting, and it does not have an explicit exception for private purposes of an “electronic database.” See 17 U.S.C. [section] 107.

(108.) See 17 U.S.C. [section] 107, providing a non-exhaustive list of the various purposes for which the reproduction of a particular work may be considered “fair,” such as “criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.” Further, it sets out four factors to be considered in determining whether the use made of a work in any particular case is a fair use:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes

Id.

(109.) Jacqueline Lipton, Balancing Private Rights and Public Policies: Reconceptualizing Property in Databases, 18 BERKELEY TECH. L. J. 773, 820-21 (2003) [hereinafter Balancing Private Rights].

(110.) See EU Database Directive, supra note 80, at art. 7.1.

(111.) As one commentator pointed out, the Directive “does not require a showing of creative investment or novel contribution, only ‘substantial investment,’ to trigger its protections.” See Sullivan, supra note 3, at 354. Thus, the protection under this portion could also apply to “non-creative databases.”

(112.) See EU Database Directive, supra note 80, at art. 7.1 (emphasis added).

(113.) See id. at art. 10.1.

(114.) Id. at art. 10.3. See also Wald, supra note 18, at 1003. (More details about the problem of protection term will be discussed later).

(115.) See EU Database Directive, supra note 80, at art. 7.2(a).

(116.) Id. at art. 7.2(b). “Public lending” is explicitly exempted from the definitions of extraction and re-utilization.

(117.) See id. at art. 7.4. This paragraph explicitly states:

The right provide for the paragraph one (the right to prevent

extraction and/or re-utilization) shall apply irrespective of

the eligibility of that database protection by copyright or by

other rights. Moreover, it shall apply irrespective of

eligibility of the contents of that database for protection by

copyright or by the other rights.

In fact, EU legislators carefully wrote and tried to avoid the same terms used in the copyright law, mainly because they tried to avoid the obligation of the national treatment principle under international copyright/IP treaties. See also Lipton, supra note 1, at 143-144.

(118.) Also like copyright law, the said sui generis rights may be transferred, assigned or granted by rightholders under contractual license. See EU Database Directive, supra note 80, at art. 7.3.

(119.) It should be noted that the “mandatory exceptions” are mainly spread in paragraph 7 (“Object of protection”) and article 8 (“Rights and obligations of lawful users”) in the EU Database Directive

(120.) EU Database Directive, supra note 80, at art. 7.4.

(121.) Id. at art. 8.1. Moreover, it states “[w]here the lawful user is authorized to extract and/or re-utilize only part of the database, this paragraph shall apply only to that part.” Id.

(122.) Id. at art. 7.5

(123.) Id. at art. 8.2.

(124.) Id. at art. 8.3. It provides “[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 subject matter contained in the database.” Id.

(125.) Id. at art. 15. Article 15 states that “[a]ny contractual provision contrary to Articles [6.1] and 8 shall be null and void.” Such provision arguably increases the enforceability of article 8.

(126.) It should be noted that all exceptions listed in article 9 under the title “Exceptions to the sui generis right” are “non-mandatory exceptions.” See EU Database Directive, supra note 80, at art. 9(a)-(c).

(127.) Id.

(128.) As introduced above, the exceptions for copyright protection in the EU Database Directive are quite similar to the fair use exceptions in the U.S. Copyright Act. See 17 U.S.C. [section] 107 (2005).

(129.) See Freno, supra note 94, at 183. More details about the differences and problems that may be caused by this will be introduced later. See infra [section] 4.1.2.

(130.) The rationale behind these provisions had been stated in the recitals of the EU Database Directive. Recital 49 provides:

Whereas, notwithstanding the right to prevent extraction

and/or reutilization of all or a substantial part of a database,

it should be laid down that the maker of a database or

rightholder may not prevent a lawful user of the database from

extracting and re-utilizing insubstantial parts

however, that user may not unreasonably prejudice either the

legitimate interests of the holder of the sui generis right or

the holder of copyright or a related fight in respect of the

works or subject matter contained in the database.

EU Database Directive, supra note 80, at recital 49. More details about the limits of EU Directive will be introduced later. (131.) See infra [section] 4.1.3

(132.) See EU Database Directive, supra note 80, at art. 11.1.

(133.) Id. at art. 11.2. Article 11.2 provided that the right is also available to:

companies and firms formed in accordance with the law of a Member

State and having their registered office, central administration

or principal place of business within the Community

such a company or firm has only its registered office in the

territory of the Community, its operations must be genuinely

linked on an ongoing basis with the economy of a Member State.”

(134.) Id. at art. 11.3, and recital 56.

(135.) See U.S. Database Summary, supra note 18, [section] IV.B.3.

(136.) As one commentator pointed out, “if the Draft Treaty is not adopted at future WIPO proceedings or similar legislation is not passed by major database-producing countries like the U.S., non-EU database makers will have a strong economic incentive to ensure that the databases are created in an EU country.” See David Mirchin, The European Database Directive Sets the Worldwide Agenda, NFAIS NEWSLETTER, Vol. 39, No. 1 (Jan. 1997), at 7-12, available at http://www.nfais.org/publications/white_papers_2.htm (last visited Jan. 25, 2005) (on file with the Rutgers Computer and Technology Law Journal).

(137.) Id.

(138.) Wald, supra note 18, at 1106.

(139.) For more details, see infra notes 247-255 and accompanying text (sec. 4.2.1 of this paper).

(140.) See U.S. Database Summary, supra note 18, [section] VII.B.8.

(141.) Moreover, one commentator pointed out, “the [EU] Commission is silent regarding the possibility of U.S. reciprocity but hopes that the United States will implement legislation that will satisfy the comparable protection standard.” Wald, supra note 18, at 1006. See also Hugh Hansen et. al., Panel: Database Protection, 11 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 275, 302-03 (2001).

(142.) See Wald, supra note 18, at 1005.

(143.) More details about the EU Database Directive were introduced in section 3.1 of this article.

(144.) See Sullivan, supra note 3, at 355.

(145.) Basic Proposal for the Substantive Provisions of the Treaty on Intellectual Property in Respect of Databases to be Considered by the Diplomatic Conference [hereinafter WIPO Database Draft Treaty], art. 1, at http://www.wipo.org/eng/ diplconf/6dc_all.htm (last visited May 1, 2005) (on file with the Rutgers Computer and Technology Law Journal).

(146.) Id. at art. 3.

(147.) See Sullivan, supra note 3, at 355.

(148.) Id.

(149.) See Lipton, Databases as Intellectual Property, supra note 1, at 141.

(150.) See U.S. Database Report, supra note 19, [section] VII.C.

(151.) H.R. 354, 106th Cong. (1999)

(152.) See Lipton, Databases as Intellectual Property, supra note 1, at 141.

(153.) See H.R. 354, 106th Cong. [section] 1402(b) (1999):

Any person who makes available to others, or extract to

make available to others, all or a substantial part of a

collection of information gathered, organized, or maintained

by another person through the investment of substantial monetary

or other resources, so as to cause harm to the market of that

other person, or a successor in interest of that other person,

for a product or service that incorporates that collection of

information and is offered or intended to be offered in commerce

by that other person, or a successor in interest of that person,

shall be liable to that person or successor in interest for the

remedies set forth in section 1406.

Id. See also McManis, supra note 43, at 37.

(154.) McManis, supra note 43, at 36.

(155.) See The Collections of Information Act: Hearing on H.R. 354 Before the Subcomm. on Courts and Intellectual Property of the House Comm. on the Judiciary, 106th Cong. (March 18, 1999) (Statement of Andrew J. Pingcus, General Counsel, United States Department of Commerce) available at http://www.uspto.gov/web/offices/dcom/olia/hr354.html (last visited Feb. 11, 2005) (on file with the Rutgers Computer and Technology Law Journal).

(156.) See EU Database Directive, supra note 80, at art. 7.1. It provides:

Member States shall provide for a right for the maker of a

database which shows that there has been qualitatively and/or

quantitatively a substantial investment in either the obtaining,

verification or presentation of the contents to prevent

extraction and/or re-utilization [element one] of the whole or

of a substantial part, evaluated qualitatively and/or

quantitatively, of the contents of that database.

(157.) Jacqueline Lipton, Copyright in the Digital Age: A Comparative Survey, 27 RUTGERS COMPUTER & TECH. L.J. 333, 354 (2001) [hereinafter Copyright in the Digital Age].

(158.) McManis, supra note 43, at 38.

(159.) See H.R. 354 [section] 1403(a). It provides that: In determining whether such an act is reasonable under the circumstances, all of the following factors shall be considered:

(1) The extent to which the use or extraction is commercial or nonprofit.

(2) Whether the amount of information made available or extracted is appropriate and for the purpose.

(3) The good faith of the person making available or extracting the information.

(4) The extent to which and the manner in which the portion used or extracted is incorporated into an independent work or collection, and the degree of difference between the collection from which the information is made available or extracted and the independent work or collection.

(5) The effect of the making available or extraction on the primary or related market for a protected collection of information.

Id. See also 17 U.S.C. [section] 107.

(160.) See H.R. 354 [section] 1403(b)-(i).

(161.) For more details, see infra sec. 4.1.1. of this article.

(162.) See Sullivan, supra note 3, at 370. Sullivan stated: “the Bliley bill [H.R. 1858] is supported by academic and scientific associations including the American Association for the Advancement of Science, American Association of Law Libraries, American Association of State Colleges and Universities, Association of American Universities, and the Council on Graduate Schools.” Id.

(163.) See McManis, supra note 43, at 36. Consumer and Investor Access to Information Bill of 1999, H.R. 1858, 106th Cong. (1999), available at http : // www.law. berkeley.edu /institutes/bclt/events/roundtable99/ dbhr1858.pdf (last visited Mar. 25, 2005) (on file with the Rutgers Computer and Technology Law Journal). The Bill was amended on October 8, 1999. As stated initially, the major objective/rationale of this Bill is “[to] promote electronic commerce through improved access for consumers to electronic database, including securities market information databases.” Id.

(164.) See McManis, supra note 43, at 10. Moreover, McManis stated “Indeed, H.R. 1858 arguably does little more than federally codify the common-law tort of ‘hot news’ misappropriation, as it might apply to databases used in interstate and foreign commerce, and provide the Federal Trade Commission with enforcement authority.” Id.

(165.) See Lipton, Balancing Private Rights, supra note 109, at 821.

(166.) See U.S. Database Summary, supra note 18, at [section] VII.B.

(167.) It explicitly prohibited (1) the distribution of duplicates of databases for competitive purposes, and (2) the misappropriation of real-time market information. See H.R. 1858, [subsection] 102, 201.

(168). See H.R. 1858, [section] 102. Further, sec. 101(2) provided, a database is “a duplicate” of any other database only if it is “substantially the same” as the original database.

(169.) Id. According to sec. 201(e)(6)(B) of H.R. 1858, the term “market information processor” means any exchange, self-regulatory organization, securities information processor, or national market system plan administrator.

(170.) Id. Section 201 (e)(6) provided:

(A) Market Information–The term “market information” means information–

(i) with respect to quotations and transactions in any security

(ii) the collection, processing, distribution, and publication of which is subject to this title.

(B) Real-Time Market Information- Taking into account the present state of technology, different types of market data, how market participants use market data, and other relevant factors, the Commission may, consistent with the protection of investors and the public interest and with the objectives of this section, prescribe by rule the extent to which market information shall be considered to be real-time market information for purposes of this subsection.

Id. at [section] 201(e)(6)

(171.) Id. at [section] 201(e)(1)(A)-(B).

(172.) Id. at [section] 103(a)-(d).

(173.) Id. at [section] 104(a)-(g)

(174.) Id. at [section] 201(e)(3)(A)-(B)

(175.) Sullivan, supra note 3, at 371.

(176.) Id.

(177.) For more details, see infra section 3.4.2. of this paper.

(178.) McManis, supra note 43, at 27-28. Thus, if the United States adopts EU-style database legislation, there are “equal dangers in providing too much protection.” Id. at 24.

(179). Freno, supra note 94, at 189.

(180.) McManis, supra note 43, at 25-27.

(181.) See supra section 3.1.1.

(182.) Id.

(183.) Id.

(184.) McManis, supra note 43, at 25.

(185.) Id. See also Freno, supra note 94, at 191.

(186.) 17 U.S.C. [section] 1201(a)(1).

(187.) See 17 U.S.C. [section] 1201 (a)(2), and (b)(1). Section 1201(a)(2) focuses on forbidding the trafficking or distribution of devices that facilitate circumvention of technological measures used to control access to a protected work (access controls). Section 1201(b) prohibits trafficking in devices that circumvent technological control measures used to protect the exclusive rights of copyright holders (right controls/post-access controls).

(188.) Pete Singer, Comment, Mounting a Fair Use Defence to the Anti-Circumvention Provisions of the Digital Millennium Copyright Act, 28 U. DAYTON L. REV. 111, 111 (2002).

(189.) Christine Jeanneret, The Digital Millennium Copyright Act: Preserving the Traditional Copyright Balance, 12 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 157, 169-172 (2001).

(190.) H.R 354, [section] 1405(e).

(191.) See infra notes 231-233 and section 4.1.3 of this paper.

(192.) Id.

(193.) McManis, supra note 43, at 25.

(194.) See Lipton, Databases as Intellectual Property, supra note 1, at 142. Lipton believes that H.R. 1858 arguably made a clear step in the fight direction “because of its emphasis on prohibiting competing commercial uses of database contents, rather than any uses with some vague exceptions carved out.” Id. See also H.R. 1858, [subsection] 102 and 201.

(195.) It does not provide adequate legal action to database producers. One commentator further pointed out, “[n]ot only is the scope of protection narrow to the point of making it trivial but also the bill leaves no mechanism through which victim of piracy may enforce her rights.” See Freno, supra note 94, at 195.

(196.) Sullivan, supra note 3, at 371. Sullivan also stated: “[t]he Bliley bill … creates actionable conduct only where the distribution harms the market of a similar database’s proprietor.” Id. at 369. Moreover, Freno pointed out that H.R. 1858 fails to cover numerous forms of piracy-like conducts. For example, “a pirate could extract substantial amounts of information from a database without violating the Bill, so long as she does not ultimately create a new database substantially similar to the original database.” See Freno, supra note 94, at 195.

(197.) Sullivan, supra note 3, at 371. See also infra note 211 and accompanying text.

(198.) Michael J. Bastian, Note, Protection of “Noncreative” Databases: Harmonization of United States, Foreign and International Law, 22 B.C. INT’L & COMP. L. REV. 425, 444 (1999).

(199.) Wald, supra note 18, at 1038

(200.) Freno, supra note 94, at 184.

(201.) Sullivan, supra note 3, at 326.

(202.) Lipton, Balancing Privacy Rights, supra note 109, at 821.

(203.) Id. Lipton gave an example of trade secret law, and stated: “U.S. trade secret law uses a tort/misappropriation approach to protect the value of commercial information. However, this law also clearly involves property rights. Although legislation does not necessarily describe trade secrets as property, it implies that trade secrets are a form of intangible intellectual property.” Id.

(204.) Id.

(205.) See Collections Information Antipiracy Act: Hearing on H.R. 354 Before the Subcomm. on Courts and Intellectual Property Comm. on the Judiciary, 106th Cong. (1999) (statement of Andrew J. Pincus, General Counsel, United States Department of Commerce), available at http://www.uspto.gov/web/offices/dcom/ olia/hr354.html (last visited Mar. 31, 2005) (on file with the Rutgers Computer and Technology Law Journal).

(206.) Lipton, Balancing Privacy Rights, supra note 109, at 821.

(207.) Freno, supra note 94, at 185.

(208.) See supra notes 170-172, 186-189 and accompanying text (Pts. 3.4.1 and 3.4.2 supra).

(209.) See supra notes 94-95 and accompanying text (Pt. 3.1.2 supra).

(210.) As we know, “fair use” is an important doctrine in copyright law and it has served as an effective tool to balance the benefits to all parties in copyright law. See, Jeanneret, supra note 189, at 169-186

(211.) See supra notes 185-187 and accompanying text.

(212.) Id.

(213.) McManis, supra note 43, at 25-26.

(214.) Such price would be cost-prohibitive for most academics and independent researchers.

(215.) See supra notes 200-203 and accompanying text.

(216.) See supra notes 200-201 and accompanying text.

(217.) See supra notes 161-162 and accompanying text.

(218.) Nevertheless, due to difference of protection scope, some commentators suspect that H.R. 354 may not be able to pass the comparability test under the EU Database Directive. See McManis, supra note 43, at 38-39. McManis states: “[T]he resulting difference in the scope of permissible uses under H.R. 354 and the EU Database Directive raises the question whether H.R. 354 would in fact provide protection ‘comparable’ to the sui generis fight mandated in the EU Directive….” Id. at 38.

(219.) It not only provided specific circumstances in which users could get the benefit of immunity, but also provided some basic elements for courts to decide the circumstances that the copyright law has not specified. The “specified exceptions” plus “court’s discretion right” approach provides great certainty for all parties.

(220.) Whatever such provision is referred to as “fair use” exception or “reasonable use” exception, it is essentially just a tool to balance the benefits of different parties in the law.

(221.) See [section] 3.3.2. Notably, H.R. 1858 does not contain a provision of term of protection.

(222.) See McManis, supra note 43, at 28-29, 39. McManis summarized three possible schemes for defining term of protection for a database: static protection, dynamic protection, and variable protection.

(223.) See EU Database Directive, supra note 80, at art. 10 [paragraph] 3. See also U.S. Database Summary, supra note 18, [section] IV, B

(224.) McManis, supra note 43, at 39.

(225.) H.R. 354, [section] 1409(c).

(226.) Id. at [section] 1409(d) provides:

No action for a violation of section 1402 may be maintained unless

the person claiming protection under this chapter proves that the

date on which the portion of the collection that was made available

or extracted was first offered … in commerce … was no more than

15 years prior to the time when it was made available or extracted

by the defendant.

Id.

(227.) McManis, supra note 43, at 29

In most areas, cases are stored from the last 50 years. If reports

are added on a daily basis, each day will see a database which is

slightly different from the previous one. On a rough and ready

calculation, the change from one day to another will be in the

region of 0.0001% of the total database. This surely cannot be

considered substantial. As additions accumulate and are accompanied,

perhaps, by changes to the structure of the database itself, it must

be likely that the criteria will be satisfied before the expiration

of the fifteen year period.

Id.

(228.) In other words, it applies staggered terms of protection for different entries in the same database. See McManis, supra note 43, at 29.

(229.) See id.

(230.) As to the burden of proof, H.R. 354, [section] 1409(d) provides that “[n]o action for a violate of [section] 1402 may be maintained unless the person claiming protection [plaintiff] proves that the date on which the portion of the collection … was first offered … in commerce” was no more than fifteen years old–the plaintiff bears the burden of proof. While [section] 1408 (a) provides that “[n]o monetary relief shall be available … [if the defendant] could not reasonably determine whether the date on which the portion of the collection that was made available or extracted was first offered in commerce” was more than 15 years prior to the violation–the defendant bears the burden of proof.

(231.) See McManis, supra note 43, at 29.

(232.) See H.R. 354 [section] 1405. H.R. 354 preempts state law providing equivalent rights, but it explicitly states that “the law of contract shall not be deemed to provide equivalent rights….” Id. at [section] (b).

(233.) See H.R. 354 [section] 1405(e). It states: “Nothing in this chapter shall restrict the rights of parties freely to enter into licenses or any other contracts with respect to the use of collections of information.”

(234.) Freno, supra note 94, at 201.

(235.) EU Database Directive, art. 15. (stating that “[a]ny contractual provision contrary to Articles 6 (1) and 8 shall be null and void”). Article 6, [paragraph] 1 deals with copyright protection for creative databases and Article 8 states that “[t]he maker of a database which is made available to the public in whatever manner may not prevent a lawful user of the database from extracting and/or re-utilising insubstantial parts of its contents, evaluated qualitatively and/or quantitatively, for any purposes whatsoever.” Id. at art. 6.

(236.) Freno, supra note 94, at 211-212.

(237.) Wille, et. al., supra note 21, at 473.

(238.) U.S. Copyright Office, Circular 65 Copyright Registration for Automated Databases (1999), available at http://www.copyright.gov/circs (last visited Mar. 31, 2005) (on file with the Rutgers Computer and Technology Law Journal).

(239.) Moreover, U.S. Copyright Office Circular 65 defines “automated database” as “a body of facts, data, or other information assembled into an organized format suitable for use in a computer and comprising one or more files.”

Id.

(240.) See Wille, supra note 21, at 473. Moreover, U.S. Copyright Office Circular 65 provides:

Group registration is possible only if all the following conditions

are met:

All the updates or revisions must be fixed (if unpublished) or

published only in machine-readable copy(ies).

All the updates or revisions were created (if unpublished) or were

first published within a 3-month period, all within the same

calendar year.

All the updates or revisions are owned by the same copyright

claimant.

All the updates or revisions have the same general title.

All the updates or revisions are similar in their general

content, including their subject.

All the updates or revisions are similar in their organization.

The updates or revisions, if published before March 1,1989, bear a

copyright notice naming the owner of the copyright, and that name

is the same in each notice.

In addition, because most computer databases are subject to

continual updates and revisions, in order to reduce some costs

of continual registration, the Copyright Office allows group

registration of databases on a quarterly basis.

Id.

(241.) Id.

(242.) Lipton, supra note 1, at 143-144.

(243.) Id. at 144.

(244.) Id.

(245.) Id.

(246.) Id. She also made many other specific suggestions. This article here only summarized the main suggestions that may also be applicable to amend H.R. 354.

(247.) See Lipton, supra note 109, at 842-843.

(248.) See McManis, supra note 43, at 30. See also supra notes 135-139 and accompanying text.

(249.) See Wald, supra note 18, at 1006, n. 74. Wald stated that many legal commentators posit that “the Berne Convention prohibits the EU from denying the protections afforded by the Database Directive’s sui generis right to signatories, including the United States, regardless of whether these States provide comparable protection.” Id. at 1006. Some commentators also noted that “while this provision discriminates on the basis on nationality, the Directive was carefully drafted to avoid conflict with the national (i.e., non-discriminatory) treatment provisions of both TRIPS and the Berne Convention.” McManis, supra note 43, at 34-35. They tried to use the terminologies that are different from copyright law, and make people believe that the “‘sui generis data right” is not “copyright” and should not be subject to the principle of the Berne Convention. See supra notes 113-118 and accompanying text. Nevertheless, some commentators pointed out “the new, sui generis data right (like the semiconductor chip design right that preceded it) might fall within the meaning of ‘industrial property’ as used in the Paris Convention for the Protection of Industrial Property

(250.) See supra notes 138-141 and accompanying text.

(251.) See McManis, supra note 43, at 35. Further, McManis pointed out, “developing countries lacking sufficient market power to impose legislation through reciprocity provisions will likely be further disadvantaged relative to industrialized nations.” Id. “The EU Database Directive frankly seems designed to favor European database producers at the expense of their customers and non-EU competitors, and to pressure the rest of the world to create comparable protection.” Id. at 45.

(252.) For example, the American Medical Association (AMA) fears that, if the EU reciprocity provision is enforced in the absence of U.S. legislation, AMA may have little recourse for the appropriation of its efforts in Europe. McManis, supra note 43, at 24. Moreover, some legal commentators explicitly stated that “… U.S. lawmakers must ensure that a U.S. bill is passed that fulfills the comparable protection standard and is then approved by the European Commission.” See Wald, supra note 18, at 1035.

(253.) McManis, supra note 43, at 40.

(254.) Id.

(255.) For a summary of major goals of the EU Database Directive, see supra notes 89-90 and accompanying text. A major objective of H.R. 354 is “[to] amend title 17, United States Code, to provide protection for certain collections of information.” H.R. 354, Preface.

(256.) See supra notes 80-84 and accompanying text. One of major objectives of the H.R. 1858 is “[to] promote electronic commerce through improved access for consumers to electronic databases….” H.R. 1858, Preface.

(257.) See U.S. Const. art. I, [section] 8, cl. 8, stating “… [t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries…”

(258.) See Wald, supra note 18, at 1034.

(259.) As discussed above, the EU Database Directive has been found to be very problematic in some areas, such as exception provisions, term of protection provisions, and so forth. See supra notes 176-182, 224-225 and accompanying text.

(260.) This article argues that such legislative strategy is applicable to any other country, and a nation’s legislation should always be consistent with its particular economic and social circumstances.

(261.) As one commentator suggested, it may be that the United States should “take the lead in introducing alternative models in the hope that it is not too late for EU law to be pared down to achieve harmonization with a more appropriate model of database protection developed elsewhere.” See Lipton, Databases as Intellectual Property, supra note 1, at 143

(262.) New law should ascertain the scope of the problem for database producers, and the extent of the need to protect the public domain from overcommercialization of database assets.

(263.) Voltaire, Essai sur l’Histoire Generale et sur les Moeurs et l’Esprit des Nation’s (1756), Tome 1, Ch. 25, at 390.

(264.) In developing this paper the author has been enlightened by a particular opinion in a U.K. IPR Commission Report. In Chapter 8, the report states: “The implication of our analysis is that the interests of [developing countries] are best served by tailoring their intellectual property regimes to their particular economic and social circumstances.” Commission on Intellectual Property Rights, Report of the Commission on Intellectual Property Rights: Integrating Intellectual Property Rights and Development Policy (Sept. 2002), available at http://www.iprcommission.org (last visited Feb. 2, 2005) (on file with the Rutgers Computer and Technology Law Journal). This article argues that such a conclusion (in the report) is also applicable for developed countries.

(265.) Specifically, the United States should independently establish a database law that suits its own situations, and should not worry too much about the law’s comparability with the EU model.

YIJUN TIAN, Summer Associate, Berkman Center, Harvard Law School