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

Case Western Reserve Law Review Volume 57 | Issue 4 February 2016 Database Protection in the United States is Alive and Well: Comments on Davison Marshall Leaffer Follow this and additional works at: https://scholarlycommons.law.case.edu/caselrev Part of the Law Commons Recommended Citation Marshall Leaffer, Database Protection in the United States is Alive and Well: Comments on Davison, 57 Case W. Res. L. Rev. 855 () Available at: https://scholarlycommons.law.case.edu/caselrev/vol57/iss4/10 This Symposium is brought to you for free and open access by the Student Journals at Case Western Reserve University School of Law Scholarly Commons. It has been accepted for inclusion in Case Western Reserve Law Review by an authorized administrator of Case Western Reserve University School of Law Scholarly Commons. DATABASE PROTECTION IN THE UNITED STATES IS ALIVE AND WELL: COMMENTS ON DAVISON MarshallLeaffert I would like to thank Professor Lipton for putting together this excellent conference and for the opportunity to comment on Professor Mark Davison's comprehensive and interesting paper on the database issue.1 I was hoping to take issue with Professor Davison's position. I cannot because I heartily agree that the cost of a sui generis database law outweighs its benefits. Moreover, I believe that such protection would be inappropriate in the American context. As Professor Davison has stated, the United States just barely missed going down the European path, coming close to passing database law legislation. For the moment, the sui generis database project seems to be a dead issue, but I do not think we have heard the last word on the subject. I predict that the project will be revived sooner rather than later. When it does come back, I hope that the U.S. will be informed by the European experience, particularly by the European report that throws into doubt the rationale and efficacy of sui generis protection. For Europe, however, it seems too late to go back in time. European database protection is a fait accompli. This proves once again the adage that once a law is on the books-even a bad one-it is difficult to get rid of. One justification for passing a sui generis database protection is that Feist Publications,Inc. v. Rural Telephone Service Co.2 created a t Distinguished Scholar in Intellectual Property Law and University Fellow at Indiana University School of Law, Bloomington. B.A. and J.D. University of Texas; M.A. University of Illinois; L.L.M. New York University. Mark Davison, Database Protection: Lessons from Europe, Congress and the WIPO, 57 CAsE W. REs. L. REV. 829 (2007). 2 499 U.S. 340 (1991). CASE WESTERN RESERVE LAW REVIEW [Vol. 57:4 gap in protection by excluding those databases that do not manifest the requisite but low level threshold of originality. Now, this "gap in protection" argument has always been a justification for passing more robust, more inclusive intellectual property laws. Of course, the implicit assumption here is that air tight legislation in the intellectual property field is what we should be striving for. I disagree with this attitude. In general, there should be a presumption-if not a healthy skepticism-against any extension of property rights in information. And I would hope that we apply this skepticism not only to any renewed attempt at passing a sui generis database law but to any extension of intellectual property rights. Maybe if we are going to do the world over again, we would take databases, and for that matter computer software, outside of copyrights. But it is too late because that would not comport with our international obligation under the Berne Convention. 3 Recognition of compilations of facts has been a part of international copyright norms for some time. Article 2(5) of the Berne Convention requires protection as to their selection or arrangement, but not necessarily as to their miscellaneous facts. 4 So, we have to protect compilations of facts. We protect them in the United States so long as the compilation manifests originality as to the selection and arrangement of the factual material. Once we acknowledge protection of compilations of fact within copyright, a tension is created. Factual compilations are works of utility comprising public domain materials-individual facts-that are excluded from protection under Section 102(b) of the Copyright Act.5 Copyright law works well for more imaginative works of art, literature, and music but operates less well when works of utility, such as factual compilations and computer software, are concerned. Legislative attempts to add layers of protection to such works of utility under copyright law have not had a good track record. Our experience in the United States supports this view. In his article, Professor Davison has effectively reviewed the various legislative projects in the United States for sui generis protection. As he points out, these legislative proposals have run the gamut from those based on the European model to other versions more congenial to the scientific and educational community. I would like to briefly examine the latest legislative version of sui generis 3 Berne Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886, 25 U.S.T. 1341, 828 U.N.T.S. 221 (as revised at Paris, July 24, 1971). 4 Id. 6 17 U.S.C. § 102(b) (2006). Davison, supra note 1. 2007] DATABASE PROTECTIONALIVE AND WELL protection of compilations of fact in the Database Collections of Information Misappropriation Act. 7 This Act, supported by a portion of the educational and scientific community, was based on a misappropriation principle. The Act prohibits making available in commerce a qualitatively substantial part of a database without authorization if the database was generated through a substantial expenditure and if the taking occurs in a time sensitive manner, inflicts injury on its owner, allows others to free ride, and results in a reduced incentive to produce the product. The prohibition would not apply to nonprofit, educational, scientific, and research institutions provided a court determines that the activity is reasonable. Another Bill, House Bill 3872,8 was introduced as a counterpart to House Bill 3261, providing that misappropriation is an unfair method of competition under Section 5 of the Federal Trade Commission Act. 9 House Bill 3261 was a watered down version of database protection, which may seem inoffensive and a laudable attempt to reconcile all interests under a misappropriation banner. Indeed, some in the educational and scientific communities argued that if we were going have database protection, it was better to coalesce around a moderate proposal rather than one based on the European Union model. Ultimately, these two bills went nowhere because they satisfied no one. Database owners were uncomfortable about having to prove time sensitivity among other key terms incorporated in the legislation. I would agree with the database ow (...truncated)