(Fwd) WIPO Database Proposal - PTO To Accept Email Comments

Rick Coronado (riccawu@MNSi.Net)
Thu, 14 Nov 1996 13:34:37 -0500


Greetings,
I am forwarding the following message on so-called intellectual property
rights. It is quite lengthy due to the intricacies of the issue and the
machinations of various corporate empires and their supporters.

In Solidarity,
D.C.
>
>---------- Forwarded message ----------
>Date: Thu, 31 Oct 1996 05:44:55 -0800
>From: "Craig A. Johnson" <caj@tdrs.com>
>Reply-To: cyber-rights@Sunnyside.COM
>To: "Multiple recipients of list cyber-rights@cpsr.org"
> <listserv-reply-errors@snyside.sunnyside.com>
>Subject: (Fwd) WIPO Database Proposal - PTO To Accept Email Comments
>
>There are at least three treaties that the delegates to WIPO will be
>negotiating at the Diplomatic Conference in December. Thus far, most
>attention has been focused on the so-called "protocol" to the Berne
>Convention which would adapt international copyright/intellectual
>property law to the Internet and other networks.
>
>Less attention has been paid in public circles to the "database
>extraction" treaty, which will, according to Jamie Love, "severely curtail the
>public's rights to use public domain materials stored in
>'databases.'"
>
>Although the post below by Jamie is lengthy, it is well worth the
>read, and is an issue that CPSR ought to have high on its radar
>screens.
>
>Craig
>
>
>-----------------------------------------------------------------
>Info-Policy-Notes - A newsletter available from listproc@tap.org
>-----------------------------------------------------------------
>INFORMATION POLICY NOTES October 29, 1996
>
> A Primer On The Proposed WIPO Treaty On
> Database Extraction Rights
> That Will Be Considered In December 1996*
>
> October 29, 1996
>
> James Love
> Consumer Project on Technology
> http://www.essential.org/cpt
> email: love@tap.org
>
> *HTML version at http://www.essential.org/cpt/ip/cpt-dbcom.html
> Ascii version formatted with 11 pt courier with 1 inch margins.
> This is my first take on the treaty, and I would appreciate
> comments and corrections. This is a very important matter that
> hasn't received much attention. jl
>
>
> INTRODUCTION
>
>The World Intellectual Property Organization (WIPO) will
>consider in December 1996 a new treaty that would require most
>countries (including the United States) to severely curtail the
>public's rights to use pubic domain materials stored in "databases."
>Some experts say it is the "least balanced and most potentially anti-
>competitive intellectual property rights ever created." The U.S.
>Patent and Trademark Office (PTO) is accepting public comments on this
>treaty, and a digital copyright treaty that is also troubling.
>Comments are due by November 22, 1996, and can be submitted by
>electronic mail to: diploconf@uspto.gov. Copies of the treaty,
>commentary, and the PTO federal register notice is available from
>http://www.public-domain.org. This memorandum provides background
>information on the treaty and the problems it presents.
>
>
>BACKGROUND
>
>The database treaty is being pushed by large publishing
>companies, in response to the 1991 U.S. Supreme Court decision in
>Feist Publications, Inc. v. Rural Telephone Service,
>[http://www.law.cornell.edu/supct/classics/499_340v.htm]. In Feist,
>the Court rejected a claim of copyright for data from a telephone
>directory's white pages, saying that facts cannot be copyrighted, and
>that obvious items such as listing names, addresses, and telephone
>numbers in alphabetical order, are not sufficiently creative to
>qualify for copyright protection. The decision rejected the "sweat of
>the brow" theory of copyright.
>
>Compilations of data or documents, including materials from the
>public domain, can receive protection under copyright if the creator
>of the compilation can show originality in the selection and
>arrangement of the data. Comprehensive databases, which can be
>expensive to create, confront problems under copyright laws because
>(almost by definition) they are not original in terms of the selection
>of the materials.
>
>Electronic database publishers have sought to protect their data
>through contracts with their customers. These contracts often place
>restrictive conditions on the reuse or redissemination of the data.
>See Pam Samuelson, "Legally Speaking: Legal Protection For Database
>Contents," 39 Communications of the ACM (Nov. 1996),
>http://ksgwww.harvard.edu/iip/datacon.html, for a discussion about
>this approach. In other cases, database vendors permit online
>searching, but do not distribute the complete database itself.
>
>Publishers are looking for stronger protection, and are lobbying hard
>to obtain a new "sui generis" (this is Latin for "one of a kind," and
>is a term used to describe statutory protections which are not defined
>under patent, copyright or trademark laws) property right to protect
>the contents of databases. The publishers' first success was the
>adoption of a controversial proposal for database extraction rights in
>the European Union (EU), and by gaining the support of the Clinton
>Administration and the EU to propose a very similar measure as an
>amendment to the Berne Copyright Convention. The Clinton
>Administration also supported domestic legislation to implement this
>form of data use regulation in the 104th Congress [HR 3531], but there
>were no hearings on the measure.
>
>Despite the controversial and far reaching nature of the
>database protection proposal and the lack of discussion on its impact
>in the United States, the Clinton Administration is asking for quick
>approval of the database treaty at a December 1996 meeting in Geneva
>hosted by the World Intellectual Property Organization (WIPO). The
>main Administration advocate in support of the publishers' position is
>Bruce Lehman, Chair of the Patent and Trademark Office (PTO), a person
>widely considered an intellectual property rights zealot.
>
>THE COMPLEXITIES (AND DANGERS) IN CREATING A NEW PROPERTY RIGHT
>FOR DATA
>
>While many persons are sympathetic to the general idea of a sui
>generis form of protection for databases, there is enormous concern
>about the complexities of creating a new property right that has the
>potential to create private monopolies on data and documents that have
>traditionally been in the public domain. It is often said that "the
>devil is in the details," and this is certainly true for the database
>protection proposal. A handful of database vendors have quietly
>crafted a proposed treaty and law that creates a nightmare for
>researchers and value added publishers. In discussing the development
>of the EU database proposal, J. H. Reichman and Pamela Samuelson say
>that "lobbying pressures converted the final version into one of the
>least balanced and most potentially anti-competitive intellectual
>property rights ever created." [Intellectual Property Rights In Data:
>An Assault On The Worldwide Public Interest In Research And
>Development, forthcoming in Vanderbilt Law Review, 50, on the Web at
>http://ksgwww.harvard.edu/iip/reisamda.html].
>
>The database vendors have sought to vastly expand the ability of
>database owners to regulate and restrict the public's rights to use
>data, without the types of safeguards which exist in copyright law
>today. In this respect, it is important to understand that as a "sui
>generis" property right, the database extraction rights are not part
>of the of the copyright regime, and the entire doctrine of fair use of
>data will not apply to data protected under the proposed database
>extraction rights treaty and legislation. Moreover, under the WIPO
>proposal these new data rights would be retroactive, affecting
>countless databases already in existence.
>
> DIGRESSION ON WEST PUBLISHING AND THE DEFINITION OF A DATABASE
>
>The Feist decision was particularly troubling for West
>Publishing, a company that wants to maintain its monopoly on the
>citations and corrected text for many court decisions.
>[http://essential.org/cpt/legalinfo/legalinfo.html] West is the only
>comprehensive publisher of federal circuit and district court opinions
>and state court opinions from all 50 states. The page numbers of the
>West court reporters are the basis for authoritative citations used by
>scholars and lawyers. As a reporter of decisions, West also makes
>corrections to the text of court opinions, typically after working
>with the judge who wrote the opinion. West wants to prevent others
>from using their page numbers or the corrected text of court opinions,
>and it is often in court trying to prevent its would be competitors
>from doing so.
>
>West is now involved in at least two law suits over its
>assertions of copyright of the page numbers, and one law suit over the
>issue of the copyright to the text of the corrected court opinions.
>[See http://www.hyperlaw.com for background on this]. Most copyright
>experts think that West will lose its court case on the issue of its
>page numbers, and West will also be hard pressed to claim it can
>copyright the corrections to the text of court opinions --
>particularly for the US federal courts, since U.S. copyright laws
>exclude the works of federal employees.
>
>Most people think that the corrected text of court opinions, and the
>citations to those opinions, should be in the public domain, and that
>the West monopoly has delayed the development of new information
>products and services for legal researchers. No one seriously argues
>that the court opinions would not be published without a West
>monopoly. West is among the private sector publishers who have
>successfully lobbied the EU and the Clinton Administration to extend
>the database protection proposals to print products by defining a
>database so broadly that it will include any collection of facts,
>data, or documents regardless of the media. If the database protection
>proposals are enacted, West will have a firm monopoly on decades of
>judicial citations and corrections to judicial opinions.
>
> THE DATABASE EXTRACTION RIGHTS PROPOSAL
>
>The August 30, 1996 version of the WIPO treaty is available on
>the Web at http://www.loc.gov/copyright/wipo6.html, and it is worth
>reading since it represents the most radical change in intellectual
>property rights in data, ever.
>
> WHAT IS A DATABASE? WHAT ISN'T A DATABASE?
>
>The treaty would protect "any database that represents a
>substantial investment in the collection, assembly, verification,
>organization or presentation of the contents of the database." This
>term should be understood "to include collections of literary, musical
>or audiovisual works or any other kind of works, or collections of
>other materials such as texts, sounds, images, numbers, facts, or data
>representing any other matter or substance" and "may contain
>collections of expressions of folklore." The "protection shall be
>granted to databases irrespective of the form or medium in which they
>are embodied. Protection extends to databases in both electronic and
>non-electronic form" and "embraces all forms or media now known or
>later developed. . . Protection shall be granted to databases
>regardless of whether they are made available to the public. This
>means that databases that are made generally available to the public,
>commercially or otherwise, as well as databases that remain within the
>exclusive possession and control of their developers enjoy protection
>on the same footing."
>
>In other words, a lot of water will go under this bridge.
>
> WHAT ARE EXTRACTION AND UTILIZATION RIGHTS?
>
>"The maker of a database eligible for protection under this
>Treaty shall have the right to authorize or prohibit the extraction or
>utilization of its contents." What is "extraction"? Extraction is
>defined 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." "Extraction . . . is a synonym for
>`copying' or `reproduction' . . . by `any means' or `any form' that
>is now known or later developed."
>
>"Utilization" is defined as "making available to the public all
>or a substantial part of the contents of a database by any means,
>including by the distribution of copies, by renting, or by on-line or
>other forms of transmission," including the right to control the use
>of the data "at a time individually chosen by each member of the
>public."
>
>
> WHAT IS A "SUBSTANTIAL PART" OF THE DATABASE?
>
>The treaty sets out tests for determining if an extraction is
>"substantial," and these tests are both highly anticompetitive, and
>extremely broad in scope.
>
>The "substantiality" of a portion of the database is assessed
>against the "value of the database," and considers "qualitative and
>quantitative aspects," noting that "neither aspect is more important
>than the other. . . This assessment may also take into account the
>diminution in market value that may result from the use of the
>portion, including the added risk that the investment in the database
>will not be recoverable. It may even include an assessment of whether
>a new product using the portion could serve as a commercial substitute
>for the original, diminishing the market for the original."
>
>Then the treaty adds that a "substantial part" means any portion of
>the database, "including an accumulation of small portions . . . In
>practice, repeated or systematic use of small portions of the contents
>of a database may have the same effect as extraction or utilization of
>a large, or substantial, part of the contents of the database."
>
>In the US implementing legislation, the only types of data use
>that would not be regulated would be "insubstantial" parts, "whose
>extraction, use or reuse does not diminish the value of the database,
>conflict with a normal exploitation of the database or adversely
>affect the actual or potential market for the database." Under this
>language, a database owner could say that it might in the future want
>to charge for each transmission of a fact or an element of a database
>as part of its "normal exploitation" of the database. With the
>Internet and digital cash this claim is likely to be made. The public
>would not have "fair use" rights, since fair use is only defined in
>matters involving copyright.
>
> FOR HOW LONG? 15 YEARS, 25 YEARS, OR FOREVER?
>
>The Treaty would require a minimum term of protection (15 years
>in the EU proposal, and 25 in the United States proposal) for the
>database. But this is extended each time the database is revised or
>enhanced. According to the draft treaty, "any substantial change to
>the database, evaluated qualitatively or quantitatively, including any
>substantial change resulting from the accumulation of successive
>additions, deletions, verifications, modifications in organization or
>presentation, or other alterations, which constitute a new substantial
>investment, shall qualify the database resulting from such investment
>for its own term of protection."
>
>The provision on revisions raises the specter that protection
>for many databases will be perpetual. This could indeed be the case
>if the original versions of the database are only "licensed" by the
>vendor for a limited period of time, so that the only available
>versions would be the new ones, which would have a new term of
>protection. [Database vendors write these restricted use licenses
>now].
>
> WHO WILL "OWN" FACTS?
>
>The supporters of the Treaty note that persons can independently
>collect data for a rival database, and the US legislation says
>"nothing in this Act shall in any way restrict any person from
>independently collecting, assembling or compiling works, data or
>materials from sources other than a database subject to this Act."
>Unfortunately, this will only be helpful in those cases where there
>will be a separate non-protected source for the data or documents.
>
>If the entity which creates the initial data or documents
>qualifies for the database extraction right, the data itself will be
>monopolized. The example given above regarding the West Publishing
>reporters of court decisions is one example, where the citations
>(which are based upon the West page numbers) and the corrections to
>opinions (which are only reported by West) cannot be obtained from any
>third parties. But the problem is much broader than court opinions.
>All sorts of data will be protected at the source under the database
>treaty, and may never enter the public domain.
>
>There are also the practical problems relating to the costs of
>independent data collection. The telephone companies obtain
>directory information when you become a subscriber, and it is
>practically impossible to independently collect this data. Databases
>of IP addressees collected by Network Solutions will be covered,
>giving Network Solutions broad new rights in how that data is utilized
>by ISPs.
>
> WHAT ABOUT GOVERNMENT INFORMATION?
>
>Much of the lobbying for the sui generis database proposal is
>designed to enable database vendors to protect collections of
>government documents. The treaty would permit countries to have
>special rules for "databases made by governmental entities or their
>agents or employees." However, this exemption will not include cases
>such as the West Publishing reporting of court decisions, where West
>is acting as an unofficial agent for the courts.
>
>In the US enabling legislation, protection is not given to a
>database made by a governmental entity, but protection could not be
>excluded from companies if a database's "contents have been obtained
>from a governmental entity." There is no provision to exempt
>databases created by private parties; like West, LEXIS, and literally
>thousands of other firms; when they act as contractors to government
>agencies. For example, West is a contractor for some courts in
>receiving electronic filing of briefs. Under the U.S. legislation,
>the database of briefs collected by West for the Courts would be
>protected. Likewise, the SEC EDGAR public disclosure filings which
>are managed by LEXIS would be covered.
>
>The Clinton Administration has gone to court in at least two
>cases avoid releasing documents under the Freedom of Information Act
>(FOIA) when West Publishing has asserted intellectual property rights
>claims to elements of the data. In the FLITE case, the Clinton
>administration successfully argued that it did not have to release
>U.S. Court opinions collected by the Air Force at public expense that
>contained West "corrections" and enhancements. (See:
>http://www.essential.org/listproc/info-policy-notes/0185.html, and the
>Tax Analysts page on this topic, at http://www.tax.org/pal). It
>appears as though government entities will be permitted to avoid FOIA
>completely if they use private contractors, and write contracts which
>permit agency access to data (extraction), but do not permit
>disclosure to the public. [For a discussion of an earlier legislative
>initiative by West Publishing to achieve a similar result, that was
>defeated after citizen protests, see:
>http://www.essential.org/listproc/info-policy-notes/0137.html, and
>http://www.essential.org/listproc/info-policy-notes/0139.html]
>
> WHAT ABOUT FAIR USE RIGHTS?
>
>As noted several times, the public has rights, often taken for
>granted, under the copyright "fair use" doctrine. This includes
>commercial and non-commercial fair use. The fair use rules involve
>public interest balancing tests. The sui generis database proposal
>doesn't include or incorporate public fair use rights. It is
>difficult to know how this will play out in practice.
>
>Under the treaty language, governments "may, in their national
>legislation, provide exceptions to or limitations of the rights
>provided in this Treaty in certain special cases that do not conflict
>with the normal exploitation of the database and do not unreasonably
>prejudice the legitimate interests of the rightholder." The key terms
>here are "normal exploitation of the database," and "legitimate
>interests" of the rightholder.
>
>In the U.S. legislation, "a lawful user of a database made
>available to the public or placed in commercial use is not prohibited
>from extracting, using or reusing insubstantial parts of its contents,
>qualitatively or quantitatively, for any purposes whatsoever." But as
>noted earlier, the term "insubstantial" is constrained by the scope of
>the business opportunities that are perceived by the database vendor.
>Not only is "insubstantial" limited to those uses which do not
>diminish the value of the database, but insubstantial must also not
>"conflict with a normal exploitation" of the database, or adversely
>impact the "actual or potential" market of the database. Moreover,
>the "normal exploitation" of the database seems to be defined in such
>a way that the vendor can assert that a transmission of a database
>element on the Internet would be an infringement if the company has a
>mechanism or even aspirations to charge for the information, and the
>cumulative impact of many small transactions would diminish the value
>of that service.
>
> RETROACTIVE PROTECTION
>
>The treaty would require countries to provide protection
>prospectively for databases already on the market. Countries could
>exempt older databases from protection for up to two years.
>
> PROHIBITIONS ON TECHNOLOGIES TO DEFEAT PROTECTION
>
>As in the proposed Internet copyright treaty and legislation,
>the database proposal is accompanied by very strict prohibitions
>against the "importation, manufacture or distribution of protection-
>defeating devices." This is defined as "any device, product or
>component incorporated into a device or product, the primary purpose
>or primary effect of which is to circumvent any process, treatment,
>mechanism or system that prevents or inhibits any of the acts covered
>by the rights under this Treaty." The US legislation contains similar
>provisions, plus a whole section which would make it a federal crime
>to interfere with "database management information." Persons would
>face up to 5 years in jail and a $500,000 file for doing such things
>as providing or disseminating false database management information,
>or removing or altering any such information. It would seem that
>simply tearing the cover off a telephone book (a protected database
>under the treaty) be a violation of this provision.
>
> WHAT CAN YOU DO?
>
>If you think this proposal needs more debate before it is forced upon
>us and the rest of the world, contact your member of Congress and
>submit comments to the PTO asking that the database treaty be taken
>off the WIPO agenda for this December. You should point out that
>there have been zero public hearings before the Congress on this
>far-reaching proposal. You also might read the attached October 9,
>1996 letter in opposition to the treaty by the Presidents of the
>National Academy of Sciences, the National Academy of Engineering, and
>the Institute of Medicine. You will also find good background
>materials at Brian Kahin's web page for the State Department Advisory
>Committee on International Communications and Information Policy at:
>http://ksgwww.harvard.edu/iip/intellec.html.
>
>As noted above, you can send comments by electronic mail to:
>pdiploconf@uspto.gov. They must be in by November 22, 1996. Copies
>of the treaty, commentary, and the PTO federal register notice is
>available from http://www.public-domain.org. Public-Domain is an
>independent citizen's organization being formed to fight this treaty,
>and more generally to protect the public domain in matters concerning
>intellectual property.
>
> James love
> love@tap.org
> http://www.essential.org/cpt
>
>---------------------------------------------------------------------
> APPENDIX
>
>Letters of Presidents of National Academy of Sciences, National
>Academy of Engineering, and Institute of Medicine in opposition to the
>database treaty.
>
>
>October 9, 1996
>The Honorable Michael Kantor
>Secretary of Commerce
>Department of Commerce
>14th Street and Constitution Avenue
>NW Washington, D.C. 20230
>
>Dear Mr. Kantor:
>
>We are writing to express our serious concern about pending changes to
>international and domestic intellectual property law that are being
>supported by the Department of Commerce. Although we understand that
>the wide availability and easy transmittal of digital databases can
>present difficulties for database vendors, we believe that the August
>30, 1996 Draft Treaty on Intellectual Property in Respect to
>Databases, which was prepared under the World Intellectual Property
>Organization (WIPO), has the potential to undermine our nations
>progress in scientific and technical research and education if
>appropriate exceptions and limitations are not clearly articulated. As
>you may know, the proposed WIPO treaty contains major provisions,
>intended to do the following.
>
>Prohibit unauthorized extraction, use, or reuse of any database, or
>any substantial portion of a database (as defined by the database
>vendor), and effectively establish the basis for a pay-per-use system;
>- Make perpetual protection the norm for databases, by making a
>15-year initial term of protection renewable with every substantial
>change or addition to a database, actions that occur frequently with
>most electronic databases; - Apply to all privately generated data, or
>repackaged U.S. government data (outside the United States, government
>databases would be protected by this law as well); and - Include
>strong civil and criminal penalties, including provisions for
>third-party liability (e.g., liability incurred by the unwitting
>intermediary or disseminator).
>
>While we certainly do not dispute the right of database compilers and
>vendors to obtain reasonable protection of their products, the
>proposed law fails to provide for any public-good exceptions, such as
>the fair use exemption traditionally enjoyed by the research and
>education communities for their limited use of copyrighted works.
>Database publishers would effectively obtain an absolute and perpetual
>monopoly in their data compilations, including preexisting data sets.
>The proposed changes would significantly inhibit researchers seeking
>to reuse and combine data for publication or for research (an
>especially acute problem for researchers using large, continuously
>updated observational data sets), as well as educators wishing to use
>portions of data sets for instructional purposes. The new law also
>would overturn a series of Supreme Court cases that limit intellectual
>property rights in the interest of free competition.
>
>We believe that these changes to the intellectual property law, if
>enacted in their present form, would seriously undermine the ability
>of researchers and educators to access and use scientific data, and
>would have a deleterious long-term impact on our nations research
>capabilities. Moreover, the proposed changes are broadly antithetical
>to the principle of full and open exchange of scientific data espoused
>by the U.S. government and academic science communities, and promoted
>internationally. We are aware that these and additional concerns
>regarding changes to the intellectual property law, have been
>communicated to the President and Vice President by the Digital Future
>Coalition, the American Society for Information Systems, the
>Association of Research Libraries, and the American Association of
>Universities.
>
>What is especially disconcerting is that these radical legal changes
>have been proposed by the Department of Commerce for formal discussion
>and negotiation at the WIPO Diplomatic Conference this December,
>without any debate or analysis of the laws potentially harmful
>implications for our nations scientific and technological development.
>Indeed, although the unintended consequences appear very grave to
>those studying these issues, very few individuals at the science
>agencies or in the academic community appear even to be aware that
>such changes are about to take place, nor has there been any effort
>made to solicit their views.
>
>If the current Draft Treaty on Intellectual Property in Respect of
>Databases is adopted by WIPO, these changes will move substantially
>toward becoming the new international norm in intellectual property
>law by the end of this year. Therefore, we request that no precipitous
>action be taken at the planned WIPO Diplomatic Conference before the
>range of consequences of the proposed changes is fully understood and
>appropriate modifications are made.
>
>The underlying issues that have given rise to the potential changes in
>intellectual property law will also be described in a report to be
>published by the National Research Council later this fall. The study
>committee that prepared that report plans to hold a one-day symposium
>at the National Academy of Sciences to explore these issues in greater
>detail with key officials from the Administration and Congress. In the
>meantime, we hope that you will take the steps necessary to avert what
>could otherwise become an unnecessarily damaging and contentious
>development in intellectual property law.
>
>Sincerely,
>
>Bruce Alberts, National Academy of Sciences
>Wm. A. Wulf , National Academy of Engineering
>Kenneth I. Shine, Institute of Medicine
>
>
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