The Protection of Databases and the Overlooked Aspect

The Protection of Databases and the Overlooked Aspect of Selection & Arrangement Dr. Michal Shur–Ofry Hebrew University of Jerusalem michalshur@mscc. huji. ac. il WIPO SME Seminar, May 2009 © Michal Shur-Ofry, 2009

The Databases Debate Copyright and Databases: Ø The “Databases Debate” –Does (and should) copyright protection extend to factual contents of databases and compilations? Ø But what about ”Selection and Arrangement”? Ø The argument: the databases debate requires a change of focus: from “contents” to “selection and arrangement”. Broad copyright protection of selection and arrangement can be a source of substantial difficulties and deserves a closer examination. Ø a “Database” – “a collection of independent works, data or other materials, arranged in a systematic or methodical way, and individually accessible by electronic or other means” [EU Databases Directive 1996] © Michal Shur-Ofry, 2009

Background: Copyright’s Position Towards Databases’ Protection Ø Protection of Contents – the diverging attitudes: Ø English Law: protection of factual compilations on the basis of “skill and labour” in assembling the data and preparing the database - e. g. – BBC v. Time Out (broadcasting schedules), Waterlow v. Reed (classified directories), Littlewood (sports fixture lists ); Ø US Law: Feist Publications (1991) – “originality” – a modest amount of creativity in selection and arrangement of the material (as opposed to “sweat of the brow”). Factual contents of compilations cannot enjoy copyright protection regardless of the investment expended in their assembling; Ø Australian Law: Telstra (2002) Ø EU Databases Directive (1996): SUI GENERIS right – protection of databases’ contents based on “substantial investment”, “qualitative or quantitative”, “in either the obtaining, verification or presentation of the contents”. (c) Michal Shur-Ofry, 2009

Copyright’s Position Towards Databases’ Protection (continued) Ø Protection of ‘Selection and Arrangement’ – a broad consensus: Ø US Law: A factual compilation eligible for protection if it features a modestly creative (original) selection and arrangement. Ø EU Databases Directive (1996): Art. 3: “databases which, by reason of the selection or arrangement of their contents, constitute author’s own intellectual creation shall be protected as such by copyright…” Ø International Conventions and Agreements: Ø Berne Convention – Art. 2(5): “Collections of literary or artistic works …. which, by reason of the ‘selection and arrangement’ of their contents, constitute intellectual creations shall be protected as such…” Ø WIPO Copyright Treaty – Art. 5 - "Compilations of data or other material, in any form, which by reason of the selection or arrangement of their contents constitute intellectual creations, are protected as such. This protection does not extend to the data or the material itself and is without prejudice to any copyright subsisting in the data or material contained in the compilation“ Ø TRIPS Agreement – Art 10(2) © Michal Shur-Ofry, 2009

Protection of Selection and Arrangement – (cntd) Ø “Copyright’s Obsession with Facts” ? (Jane Ginsburg) Ø “the grant of such monopoly protection to original elements of a compilation…imposes little or no costs or disadvantage to society. The facts set forth in the compilation are not protected and may be freely copied; the protection extends only to those aspects of the compilation that embody the original creation of the compiler". [CCC Information Services. v. Maclean Hunter Market Reports, 2 nd. Cir. , 1994] © Michal Shur-Ofry, 2009

A Closer Look at ‘Selections and Arrangements’ Ø Cognitive Perspective – the cognitive role of categories , structures and patterns Ø Economic Perspective – susceptibility to network effects Ø IMS Health GMBH & Co. v. NDS Health GMBH & Co. (ECJ, 29. 4. 2004) Ø Melway Publishing Pty Ltd. v. Robert Hicks Pty Ltd. (Australia, 2001) Ø Inclination towards standardization Ø IMS, Ø Legal Publishers, Ø Ticketmaster, Ø Bikram Yoga (Open Source Yoga Unity v. Bikram Choudhury, US 2005) © Michal Shur-Ofry, 2009

Copyright’s Role Ø Use of a popular ‘selection and arrangement’ to prevent users “lock-in”? Ø IMS Health GMBH & Co. v. NDS Health GMBH & Co. (ECJ, 29. 4. 2004) Ø Legal publishers battle: Ø West Publishing Co. v. Mead Data Central (8 th. Cir. 1986); Ø Oasis Publishing v. West Publishing (D. C. Minn. , 1996); Ø Matthew Bender & Co. v. West Publishing Co. , (2 nd Cir. 1998). Ø Dialogic function: selections, arrangements and “the world of thinkable thoughts” (Daniel Dabney) © Michal Shur-Ofry, 2009

Implications and Directions towards a Possible Solution Ø Explanatory and normative implications Ø Broader context: copyright’s positions towards other patterns and formats (SSO, user interfaces, television formats) Ø Potential directions for a solution: Ø Copyright Misuse? Ø Rethinking the current balance between protection of contents and protection of ‘selection and arrangement’? Ø In Sum: The overlooked aspect of “Selection and Arrangement” deserves a closer look! © Michal Shur-Ofry, 2009