International Copyright Law William Fisher June 23, 2004 © 2004. All rights reserved.
Post on 15-Jan-2016
214 Views
Preview:
Transcript
InternationalCopyright Law
William Fisher
June 23, 2004
© 2004. All rights reserved.
The Sectors of Intellectual Property Law
Patent
The Sectors of Intellectual Property Law
Copyright Patent
The Sectors of Intellectual Property Law
Copyright Patent
Trademark &Unfair Competition
The Sectors of Intellectual Property Law
Copyright Patent
Trademark &Unfair CompetitionRight of
Publicity
The Sectors of Intellectual Property Law
Copyright Patent
Trademark &Unfair CompetitionRight of
PublicityTradeSecrets
Intellectual Property Protection for Industrial Designs
Copyright Patent
Trademark &Unfair CompetitionRight of
PublicityTradeSecrets
Copyrightsfor UsefulObjects
Intellectual Property Protection for Industrial Designs
Copyright Patent
Trademark &Unfair CompetitionRight of
PublicityTradeSecrets
DesignPatents
Intellectual Property Protection for Industrial Designs
Copyright Patent
Trademark &Unfair CompetitionRight of
PublicityTradeSecrets
Trade Dress
Intellectual Property Protection for Industrial Designs
Copyright Patent
Trademark &Unfair CompetitionRight of
PublicityTradeSecrets
Copyrightsfor UsefulObjects
DesignPatents
Trade Dress
The Sectors of Intellectual Property Law
Copyright Patent
Trademark &Unfair CompetitionRight of
PublicityTradeSecrets
Basic Copyright Law
• Long-term, medium protection for “original forms of expression”
• “Original” = independently created + minimal degree of creativity (Feist)
• “Original” does not require novelty, aesthetic merit, or truth
Examples of Things Protected by Copyright
• literary works;• musical works;• dramatic works;• pantomimes and choreographic works;• pictorial, graphic, and sculptural
works;• motion pictures and audiovisual
works;• sound recordings;• architectural works;• compilations• computer programs
Idea/Expression Distinction
• Not copyrightable– Ideas
– Facts
– "truths of a science"
– "methods of an art"
– "system of bookkeeping"
– generic plots
– generic characters
– research
• Copyrightable– Expression– detailed plots– distinctive
characters
Statutory Entitlements
(1) Reproduction
(2) Derivative Works
(3) First Distribution
(4) Public Performance
(5) Public Display
Proving Infringement• Copying
– Defendant’s admission
– Evidence of access + similarities
– “striking similarity”
– common errors
• “Improper Appropriation”– “substantial similarity of expression”
– lay audience test
– scenes a faire doctrine
Fair Use Doctrine
• Sony v. Universal City Studios (1984)
Supreme-Court Case Law
Compensation System for Network Broadcasts of Copyrighted Programs
Studios
Hold copyrightsin movies & shows
Compensation System for Network Broadcasts of Copyrighted Programs
Networks
Studiosbroadcastlicenses
Hold copyrightsin movies & shows
Compensation System for Network Broadcasts of Copyrighted Programs
Networks
Studios
Public
broadcastlicenses
free programming(with embedded ads)
Compensation System for Network Broadcasts of Copyrighted Programs
Networks
StudiosAdvertisers
Public
higher pricesfor products
broadcastlicenses
free programming(with embedded ads)
Compensation System for Network Broadcasts of Copyrighted Programs
Networks
StudiosAdvertisers
Public
price of ads
higher pricesfor products
broadcastlicenses
free programming(with embedded ads)
Compensation System for Network Broadcasts of Copyrighted Programs
Networks
StudiosAdvertisers
Public
price of ads
higher pricesfor products
broadcastlicenses
license fees
free programming(with embedded ads)
Compensation System for Network Broadcasts of Copyrighted Programs
Networks
StudiosAdvertisers
Public
Sony
price of ads
higher pricesfor products
broadcastlicenses
license fees
free programming(with embedded ads)
cost of VCRs
VCRs
Compensation System for Network Broadcasts of Copyrighted Programs
Networks
StudiosAdvertisers
Public
Sony
price of ads
higher pricesfor products
broadcastlicenses
license fees
free programming(with embedded ads)
cost of VCRs
VCRs
Compensation System for Network Broadcasts of Copyrighted Programs
Networks
StudiosAdvertisers
Public
Sony
price of ads
higher pricesfor products
broadcastlicenses
license fees
free programming(with embedded ads)
cost of VCRs
VCRs
Compensation System for Network Broadcasts of Copyrighted Programs
Networks
StudiosAdvertisers
Public
Sony
price of ads
higher pricesfor products
broadcastlicenses
license fees
free programming(with embedded ads)
cost of VCRs
VCRs
Compensation System for Network Broadcasts of Copyrighted Programs
Networks
StudiosAdvertisers
Public
Sony
price of ads
higher pricesfor products
broadcastlicenses
license fees
free programming(with embedded ads)
cost of VCRs
VCRs
Compensation System for Network Broadcasts of Copyrighted Programs
Networks
StudiosAdvertisers
Public
Sony
price of ads
higher pricesfor products
broadcastlicenses
license fees
free programming(with embedded ads)
cost of VCRs
VCRs
?
Fair Use Doctrine
• Sony v. Universal City Studios (1984)– time shifting is fair use
– manufacturing VCRs is not contributory copyright infringement
• Harper & Row v. Nation Enterprises (1985)– reproducing juicy excerpts of Ford’s autobiography is
not fair use
• Campbell v. Acuff-Rose (1994)– rap parody of “Oh, Pretty Woman” is fair use
Supreme-Court Case Law
Fair Use Doctrine
• Purpose and Character of the Use– commercial use disfavored
– transformative uses preferred
– parody strongly preferred
– propriety of defendant’s conduct relevant
• Nature of the Copyrighted Work– fictional works/factual works
– unpublished/published
Intensity of Copyright Protection
Intensity of Copyright Protection
Intensity of Copyright Protection
unpublished
published
Intensity of Copyright Protection
unpublished
published
fictionfact
Fair Use Doctrine• Purpose and Character of the Use
– commercial use disfavored
– transformative uses preferred
– parody strongly preferred
– propriety of defendant’s conduct relevant
• Nature of the Copyrighted Work– fictional works/factual works
– unpublished/published
• Amount and importance of the portion used
• Impact on Potential Market– rival definitions of “potential market”
– only substitution effects are cognizable
Topics
• Basic Copyright Law
• International Copyright Agreements
• Case Studies– Software Protection– Database Protection– Moral Rights
Topics
• Basic Copyright Law
• International Copyright Agreements
• Case Studies– Software Protection– Database Protection– Moral Rights
Major Agreements
(Potentially) Global Agreements: Berne Convention (1886-1971) Universal Copyright Convention (1952) WIPO Copyright Treaty (1996) TRIPS (1994) Rome Convention (1961)
Regional Agreements EC Directives NAFTA (1992)
Bilateral Agreements E.g., US/Germany – Atlas Films
Berne Convention -- chronology• 1858-1885: Preliminary negotiation• 1886: Original Berne Convention (10 countries)• 1896: Paris Revision (13)• 1908: Berlin Revision (18)• 1914: Berne Revision (27)• 1928: Rome Revision (36)• 1948: Brussels Revision (37)• 1967: Stockholm Revision (59)• 1971: Paris Revision (63)
Berne Convention -- 1886
• National treatment– Signatories give citizens of other signatories same treatment
as their own citizens
– Except as to term of protection
• Protected Works:– books; pamphlets; drama; music; design; painting;
sculpture; maps; 3D works in geography and architecture
– No protection for photos; political articles; news
• Exclusive rights:– 10-year translation right
10 countries
Berne Convention -- 1896
• National treatment– Signatories give citizens of other signatories same treatment
as their own citizens
– Except as to term of protection
• Protected Works:– books; pamphlets; drama; music; design; painting; sculpture;
maps; 3D works in geography and architecture
– No protection for photos; political articles; news
• Exclusive rights:– translation right for term of original work
13 countries
Berne Convention -- 1908• National treatment
– Signatories give citizens of other signatories same treatment as their own citizens
– Except as to term of protection
• No formalities as condition of protection• Protected Works:
– books; pamphlets; drama; music; design; painting; sculpture; maps; 3D works in geography and architecture; photos; choreography; architecture
– No protection for political articles; news
• Exclusive rights:– translation right for term of original work; recording right for
music; cinematograhic right
18 countries
Berne Convention -- 1914• National treatment
– Signatories give citizens of other signatories same treatment as their own citizens
– Except as to term of protection– Discrimination against authors from non-member countries
permitted• No formalities as condition of protection• Protected Works:
– books; pamphlets; drama; music; design; painting; sculpture; maps; 3D works in geography and architecture; photos; choreography; architecture
– No protection for political articles; news• Exclusive rights:
– translation right for term of original work; recording right for music; cinematograhic right
27 countries
Berne Convention -- 1928• National treatment
– Signatories give citizens of other signatories same treatment as their own citizens
– Except as to term of protection – Discrimination against authors from non-member countries
permitted• No formalities as condition of protection• Protected Works:
– books; pamphlets; drama; music; design; painting; sculpture; maps; 3D works in geography and architecture; photos; choreography; architecture; lectures
– No protection for political articles; news• Exclusive rights:
– translation right for term of original work; recording right for music; cinematograhic right; moral right; broadcasting right; adaptation right
36 countries
Berne Convention -- 1928• National treatment
– Signatories give citizens of other signatories same treatment as their own citizens
– Except as to term of protection – Discrimination against authors from non-member countries
permitted• No formalities as condition of protection• Protected Works:
– books; pamphlets; drama; music; design; painting; sculpture; maps; 3D works in geography and architecture; photos; choreography; architecture; lectures
– No protection for political articles; news• Exclusive rights:
– translation right for term of original work; recording right for music; cinematograhic right; moral rightmoral right; broadcasting right; adaptation right
36 countries
Varieties of “Moral Rights”
• Integrity
• Attribution
• Divulgation
• Withdrawal
• Droit de Suite
Article 6 bis of the Berne Convention:
“Independently of the author's economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.”
Berne Convention -- 1928• National treatment
– Signatories give citizens of other signatories same treatment as their own citizens
– Except as to term of protection – Discrimination against authors from non-member countries
permitted• No formalities as condition of protection• Protected Works:
– books; pamphlets; drama; music; design; painting; sculpture; maps; 3D works in geography and architecture; photos; choreography; architecture; lectures
– No protection for political articles; news• Exclusive rights:
– translation right for term of original work; recording right for music; cinematograhic right; moral right; broadcasting right; adaptation right
36 countries
Berne Convention -- 1948• National treatment
– Signatories give citizens of other signatories same treatment as their own citizens
– Discrimination against authors from non-member countries permitted• No formalities as condition of protection• Protected Works:
– books; pamphlets; drama; music; design; painting; sculpture; maps; 3D works in geography and architecture; photos; choreography; architecture; lectures
– No protection for political articles; news• Exclusive rights:
– translation right for term of original work; recording right for music; cinematograhic right; moral right; broadcasting right (TV); adaptation right; public performance right; optional droit de suite
• Minimum term: LOA + 50 years
37 countries
Berne Convention -- 1967• National treatment
– Signatories give citizens of other signatories same treatment as their own citizens
– Discrimination against authors from non-member countries permitted
• No formalities as condition of protection• Protected Works:
– books; pamphlets; drama; music; design; painting; sculpture; maps; 3D works in geography and architecture; photos; choreography; architecture; lectures
– No protection for political articles; news• Exclusive rights:
– translation right for term of original work; recording right for music; cinematograhic right; moral right; broadcasting right (TV); adaptation right; public performance right; optional droit de suite
• Minimum term: LOA + 50 years• Formation of WIPO
Sta
lem
ate
on s
ub
stan
ce59 countries
Berne Convention -- 1971• National treatment
– Signatories give citizens of other signatories same treatment as their own citizens
– Discrimination against authors from non-member countries permitted• No formalities as condition of protection• Protected Works:
– books; pamphlets; drama; music; design; painting; sculpture; maps; 3D works in geography and architecture; photos; choreography; architecture; lectures; folklore; legitimation system for films
– No protection for political articles; news• Exclusive rights:
– translation right for term of original work; recording right for music; cinematograhic right; moral right; broadcasting right (TV); adaptation right; public performance right; optional droit de suite; reproduction right
• Minimum term: LOA + 50 years• Formation of WIPO
63 countries
Berne Convention -- 1979• National treatment
– Signatories give citizens of other signatories same treatment as their own citizens
– Discrimination against authors from non-member countries permitted• No formalities as condition of protection• Protected Works:
– books; pamphlets; drama; music; design; painting; sculpture; maps; 3D works in geography and architecture; photos; choreography; architecture; lectures; folklore; legitimation system for films
– No protection for political articles; news• Exclusive rights:
– translation right for term of original work; recording right for music; cinematograhic right; moral right; broadcasting right (TV); adaptation right; public performance right; optional droit de suite; reproduction right
• Minimum term: LOA + 50 years• Formation of WIPO
63 countries
Berne Convention -- 1979• National treatment
– Signatories give citizens of other signatories same treatment as their own citizens
– Discrimination against authors from non-member countries permitted• No formalities as condition of protection• Protected Works:
– books; pamphlets; drama; music; design; painting; sculpture; maps; 3D works in geography and architecture; photos; choreography; architecture; lectures; folklore; legitimation system for films
– No protection for political articles; news• Exclusive rights:
– translation right for term of original work; recording right for music; cinematograhic right; moral right; broadcasting right (TV); adaptation right; public performance right; optional droit de suite; reproduction right
• Minimum term: LOA + 50 years• Formation of WIPO
currently 150 countrieshttp://www.wipo.org/treaties/ip/berne/index.html
Universal Copyright Convention(1952; revised 1971)
• National Treatment principle• Members must provide “adequate and effective
protection” for copyright• Formalities permitted as precondition for
protection• Minimum term: LOA + 25• Exceptions permitted that do not “that do not
conflict with the spirit and provisions of this Convention”
36 countrieshttp://www2.unesco.org/clt-bv/html_eng/01universalcopy.htm
Rome Convention (1961)• National Treatment principle• Performers’ rights include: broadcast of a performance;
fixation of a performance; reproduction of a fixation• Producers of phonograms have exclusive rights to
reproduce them• Broadcasters have exclusive rights to fix or reproduce
fixations of their broadcasts• Article 12: Performers and producers must be paid
“equitable remuneration” when phonograms are broadcast
• Minimum term: 20 years
40 countries
Rome Convention (1961)• National Treatment principle• Performers’ rights include: broadcast of a performance;
fixation of a performance; reproduction of a fixation• Producers of phonograms have exclusive rights to
reproduce them• Broadcasters have exclusive rights to fix or reproduce
fixations of their broadcasts• Article 12: Performers and producers must be paid
“equitable remuneration” when phonograms are broadcast
• Minimum term: 20 years
currently 76 countrieshttp://www.wipo.org/treaties/ip/rome/
Other “Neighboring Rights” Agreements
• Geneva Phonograms Convention (1971)
• Brussels Satellite Convention (1974)
• WIPO Performances and Phonograms Treaty (1996)
TRIPS -- Copyright
• Article 9:– Incorporate Berne Convention, Arts. 1-21,
except 6bis– Idea/expression distinction
• Article 10:– Computer programs protected (both source and
object code)– Intellectually creative aspects of databases
protected – not data itself
currently 146 countries
TRIPS -- Copyright
• Article 11:– Authors of computer programs and films may
authorize or forbid commercial rentals
• Article 12:– Minimum terms for works not tied to LOA is
50 years
• Article 13:– Exceptions shall be limited to cases that do not
conflict with normal exploitation or unreasonably prejudice legitimate interests
currently 146 countries
TRIPS -- Copyright
• Article 14:– Performers control fixation and broadcasts– Producers of phonograms control reproduction
and commercial rentals– Broadcasters control fixation, reproduction,
rebroadcasts– Performers and producers get minimum term of
protection of 50 years– Exceptions permitted to extent of Rome
Convention
currently 146 countries
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
Territoriality Principle
Treatment of “works for hire”;
Priority rules
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
Feist (US)Tele-Direct (Canada)Schricker (Germany)
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
Territoriality Principle --Atlas Film (Germany)
UCC, art. IVBerne, art. 7(8)EC Term Directive --LOA + 70
Sonny Bono --LOA + 70; Eldred
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
Utility Models;
Conceptual Separability;
Overlap with creativityrequirements
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
Utility Models;
Conceptual Separability;
Overlap with creativityrequirements
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
CONTU (US)EC Software DirectiveTRIPS Art. 10
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
Berne Arts. 2, 11bisRome Art. 12;1992 EC Directive;DPRA & DMCA (US)CARP (US)
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
European blank-tape systems;
Sound recordings
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
Germany, Japan, & US withhold ©Great Britain: Crown and Parliamentary copyright
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
Is TRIPs compatiblewith US fair use?
Should TRIPsmandate fair use?
Fair Use?
Berne Convention, Article 10
(1) It shall be permissible to make quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries.
(2) It shall be a matter for legislation in the countries of the Union, and for special agreements existing or to be concluded between them, to permit the utilization, to the extent justified by the purpose, of literary or artistic works by way of illustration in publications, broadcasts or sound or visual recordings for teaching, provided such utilization is compatible with fair practice.
Fair Use?
Berne Convention, Article 10
(1) It shall be permissible to make quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries.
(2) It shall be a matter for legislation in the countries of the Union, and for special agreements existing or to be concluded between them, to permit the utilization, to the extent justified by the purpose, of literary or artistic works by way of illustration in publications, broadcasts or sound or visual recordings for teaching, provided such utilization is compatible with fair practice.
Fair Use?
Berne Convention, Article 10bis(1) It shall be a matter for legislation in the countries of the Union to permit the
reproduction by the press, the broadcasting or the communication to the public by wire, of articles published in newspapers or periodicals on current economic, political or religious topics, and of broadcast works of the same character, in cases in which the reproduction, broadcasting or such communication thereof is not expressly reserved. Nevertheless, the source must always be clearly indicated; the legal consequences of a breach of this obligation shall be determined by the legislation of the country where protection is claimed.
(2) It shall also be a matter for legislation in the countries of the Union to determine the conditions under which, for the purpose of reporting current events by means of photography, cinematography, broadcasting or communication to the public by wire,literary or artistic works seen or heard in the course of the event may, to the extent justified by the informatory purpose, be reproduced and made available to the public.
Fair Use?
Berne Convention, Article 10bis(1) It shall be a matter for legislation in the countries of the Union to permit the
reproduction by the press, the broadcasting or the communication to the public by wire, of articles published in newspapers or periodicals on current economic, political or religious topics, and of broadcast works of the same character, in cases in which the reproduction, broadcasting or such communication thereof is not expressly reserved. Nevertheless, the source must always be clearly indicated; the legal consequences of a breach of this obligation shall be determined by the legislation of the country where protection is claimed.
(2) It shall also be a matter for legislation in the countries of the Union to determine the conditions under which, for the purpose of reporting current events by means of photography, cinematography, broadcasting or communication to the public by wire,literary or artistic works seen or heard in the course of the event may, to the extent justified by the informatory purpose, be reproduced and made available to the public.
Fair Use?
TRIPS, Article 13
Members shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
Is TRIPs compatibleWith US fair use?
Should TRIPsMandate fair use?
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
Issues include:Duration;Alienability;Preconditions to integrity right;Responsibility of heirs/devisees
Berne 6bisTRIPS exclusion
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
Sore Spots in International Copyright Law
• Authorship• Creativity• Duration• Useful Objects• Software• Public Performances• Neighboring Rights• Government documents• Fair Use• Moral Rights
drive towardharmonizationby selecting mostauthor-protectiveoption on eachissue
Possible Goals of International Copyright
• Political Democracy (Netanel)• Economic Efficiency
– Reducing barriers to free trade
• Cultural Vitality– Semiotic democracy
• Distributive Justice– Distribute justice across countries
– Egalitarianism (economic democracy)
– Respect artists’ rights
– Respect natural rights
• Universal Right to education
Dahl’s definition of Political Democracy
1. Elected officials govern
2. Frequent and fair elections
3. Universal adult suffrage
4. Universal qualification for elective office
5. Freedom of expression
6. Available alternative sources of information
7. Freedom of association
Dahl’s definition of Political Democracy
1. Elected officials govern
2. Frequent and fair elections
3. Universal adult suffrage
4. Universal qualification for elective office
5. Freedom of expression
6. Available alternative sources of information
7. Freedom of association
Possible Causal Connections
Democracy-enhancing
Democracy-consolidating
Democracy-inducing
Possible Causal Connections
Democracy-enhancing
Democracy-consolidating
Democracy-inducing
Impact of Copyright• Foster free flow of
information and diversity of expression
• Promote independent sector of artists & publishers
• Venerate individual innovation and expression
Possible Causal Connections
Democracy-enhancing
Democracy-consolidating
Democracy-inducing
Impact of Copyright• Foster free flow of
information and diversity of expression
• Promote independent sector of artists & publishers
• Venerate individual innovation and expression
?
?
?
Embodiments of the “Democratic Entitlement”
• ICCPR• ECHR• Charter of OAS• ACHR• African Charter on Human and People’s Rights• Charter of Paris• Moscow Document• International Covenant on Economic, Social and
Cultural Rights (ICESCR)
Implications of the Democracy / Free Speech Principles
• Compel countries not members of Berne or WTO to adopt copyright systems
• Mandatory limits on copyright:– Temporal limits– Idea/fact/expression distinction– Some fair-use exceptions– Exception for transient, incidental reproduction– No prior restraints or punitive damages
• Interpret Berne/TRIPS provisions– E.g., Art. 13– Permissible “cultural exceptions”
Legal Protectionfor Databases
What is a Database?• WIPO Draft Treaty Definition: “‘database’ means a
collection of independent works, data or other materials arranged in a systematic or methodical way and capable of being individually accessed by electronic or other means”
• Examples:– nationwide telephone directory
– compilation of financial data on companies
– Lexis/Nexis compilation of public-domain materials
Possible Sources of Legal Protection
• Copyright
• Misappropriation Doctrine
• Contract
• Sui Generis Legislation or Treaty
• Encryption/Anti-“Black Box” Legislation
• Trespass Doctrine
• Branding – e.g., Lexis; Westlaw
Possible Sources of Legal Protection
• Copyright
• Misappropriation Doctrine
• Contract
• Sui Generis Legislation or Treaty
• Encryption/Anti-“Black Box” Legislation
• Trespass Doctrine
• Branding – e.g., Lexis; Westlaw
To secure copyright protection for a database, one must show:
• DB is within subject matter coverage
• DB is fixed in a tangible medium of expression
• DB is sufficiently “original”– Feist problem– TRIPS Article 10(2)
Possible Sources of Legal Protection
• Copyright
• Misappropriation Doctrine
• Contract
• Sui Generis Legislation or Treaty
• Encryption/Anti-“Black Box” Legislation
• Trespass Doctrine
• Branding – e.g., Lexis; Westlaw
INS v. AP (1918)Constriction• Cheney Bros. (CA2 1929)
• Erie RR (1938)
• NFL v. Del. (1977)
• NBA (1997)
• Alcatel (1999)
Expansion
• Radio broadcast cases (1932-1955)
• Metropolitan Opera (NY 1950)
• Pottstown News (PA 1963)• Bond Buyer (NY 1966)• Dow Jones (Ill 1983)• US Sporting Products (Tex
1993)• Lynch, Jones (NY 1998)• Internet “framing” cases?
Facts of NBA (1997)NBA game
Facts of NBA (1997)NBA game
Live audience
TV audience
Radio Audience
Facts of NBA (1997)NBA game
Live audience
TV audience
Radio Audience
(STATS reporters)
(STATS reporters)
Facts of NBA (1997)NBA game
Live audience
TV audience
Radio Audience
(STATS reporters)
(STATS reporters)
STATS computer
Facts of NBA (1997)NBA game
Live audience
TV audience
Radio Audience
(STATS reporters)
(STATS reporters)
STATS computer
Satellite
Facts of NBA (1997)NBA game
Live audience
TV audience
Radio Audience
(STATS reporters)
(STATS reporters)
STATS computer
Satellite
Motorola pagers
Facts of NBA (1997)NBA game
Live audience
TV audience
Radio Audience
(STATS reporters)
(STATS reporters)
STATS computer
Satellite
Motorola pagersUsers
NBA (CA2 1997)A “hot news” misappropriation claim survives
preemption iff:• P generates or creates information at some
cost• Information is highly time-sensitive• D “free rides” on P’s efforts• D competes directly with P• such free-riding would threaten the existence
or quality of the service P provides
Possible Sources of Legal Protection
• Copyright
• Misappropriation Doctrine
• Contract
• Sui Generis Legislation or Treaty
• Encryption/Anti-“Black Box” Legislation
• Trespass Doctrine
• Branding – e.g., Lexis; Westlaw
Contract
• Use Restrictions in Ordinary Contracts or Licenses
• Shrink-wrap licenses– ProCD
Excerpt from Martindale-Hubbell Website"You are hereby granted a nonexclusive, nontransferable,
limited license to view, reproduce, print, and distribute insignificant portions of materials retrieved from this Site provided (a) it is used only for informational, non-commercial purposes, (b) you do not remove or obscure the copyright notice or other notices. Except as expressly provided above, no part of this Site, including but not limited to materials retrieved therefrom and the underlying code, may be reproduced, republished, copied, transmitted, or distributed in any form or by any means. In no event shall materials from this Site be stored in any information storage and retrieval system without prior written permission Martindale-Hubbell."
Excerpt from Martindale-Hubbell Website"You are hereby granted a nonexclusive, nontransferable,
limited license to view, reproduce, print, and distribute insignificant portions of materials retrieved from this Site provided (a) it is used only for informational, non-commercial purposes, (b) you do not remove or obscure the copyright notice or other notices. Except as expressly provided above, no part of this Site, including but not limited to materials retrieved therefrom and the underlying code, may be reproduced, republished, copied, transmitted, or distributed in any form or by any means. In no event shall materials from this Site be stored in any information storage and retrieval system without prior written permission Martindale-Hubbell."
Limitations of Contractual Protection
Creator
Purchasercontract withvalid restraintson use andalienation
Limitations of Contractual Protection
Creator
Purchasercontract withvalid restraintson use andalienation Rival
conveyancewithoutrestrictions
Limitations of Contractual Protection
Creator
Purchasercontract withvalid restraintson use andalienation Rival
conveyancewithoutrestrictions Publicdistribution
--e.g., over internet
Limitations of Contractual Protection
Creator
Purchasercontract withvalid restraintson use andalienation Rival
conveyancewithoutrestrictions Publicdistribution
--e.g., over internet
breach of contract(damages and injunction)
Limitations of Contractual Protection
Creator
Purchasercontract withvalid restraintson use andalienation Rival
conveyancewithoutrestrictions Publicdistribution
--e.g., over internet
claim for tortious interferencewith contractual relations?
Limitations of Contractual Protection
Creator
Purchasercontract withvalid restraintson use andalienation Rival
conveyancewithoutrestrictions Publicdistribution
--e.g., over internet
No practical remedy
Possible Sources of Legal Protection
• Copyright
• Misappropriation Doctrine
• Contract
• Sui Generis Legislation or Treaty
• Encryption/Anti-“Black Box” Legislation
• Trespass Doctrine
• Branding – e.g., Lexis; Westlaw
Efforts to Secure Sui Generis Protection
• EC Directive 96/9
• Federal legislation in the United States
EEC Directive 96/9 -- Coverage• Applies to any “collection of independent
works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means."
• Plaintiff must prove: “that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents”
EC Directive 96/9 -- Entitlements
• No unauthorized extraction or reutilization of any part of the database
EC Directive 96/9 -- Entitlements
• No unauthorized extraction or reutilization of any part of the database
EC Directive 96/9 -- Entitlements
• “Extraction” = “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”
• “Reutilization” = “any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies, by renting, by on-line or other forms of transmission.”
EC Directive 96/9 -- Entitlements
• No unauthorized extraction or reutilization of any part of the database
• No first-sale doctrine
• No compulsory licenses
EC Directive 96/9 -- Privileges
• Copying of “insubstantial” portions for any purpose– unless it conflicts with the “normal exploitation”
of the DB
• Member states may permit extraction or reutilization for noncommercial teaching or scientific research if credit is given
• Member states may permit extraction or reutilization of “substantial” portions for “private purposes”
EC Directive 96/9 -- Duration
• 15 years
• additional 15 years each time the database is “substantially modified”
Proposals for American Sui-Generis Legislation
• 104th Congress: Database Investment and Intellectual Property Antipiracy Act of 1996
• 105th Congress: HR 2652 passed the House; S 2291 died in Senate
• 106th Congress: Two House bills pending:– HR 354: Collections of Information Antipiracy
Act, introduced 1/19/99; approved by House Judiciary Comm.
– HR 1858: Comsumer and Investor Access to Information Act of 1999, introduced 5/19/99
H.R. 354
• Protected databases include: information that has been collected and has been organized for the purpose of bringing discrete items of information together in one place or through one source so that users may access them – specific exception for works of narrative
literary prose, but inclusion of collections of such works
H.R. 1858• Protected databases include: a collection of discrete
items of information that have been collected and organized in a single place, or in such a way as to be accessible through a single source, through the investment of substantial monetary or other resources, for the purpose of providing access to those discrete items of information by users of the database. – However, a discrete section of a database that contains
multiple discrete items of information may also be treated as a database.
H.R. 354
• Information: facts, data, works of authorship or any other intangible material capable of being gathered and organized in a systematic way– specifically includes works of authorship in
definition, but states that it does not provide any greater protection than copyright to works of authorship included in collections, other than a work that is itself a collection
H.R. 1858
• Information: facts, data, or any other intangible material capable of being collected or organized in a systematic way, with the exception of works of authorship
H.R. 354
• Exclusions:– Government databases– real-time market information– computer programs– databases for facilitating digital online
communications
H.R. 1858
• Exclusions:– Government databases
– computer programs
– databases to facilitate internet communications
– Nonprotectable subject matter: individual ideas, facts, procedures, systems, methods of operation, concepts, principles or discoveries
– Preexisting databases
– Works of authorship
H.R. 354
• Prohibitions: – Making available or extracting to make
available all or a substantial part of a collection of information, causing material harm to the primary or related market for the product of the other party or a successor in interest
– Extraction of a substantial part of a collection of information so as to cause material harm to the primary market
H.R. 354
• Prohibitions: – Making available or extracting to make
available all or a substantial part of a collection of information, causing material harm to the primary or related market for the product of the other party or a successor in interest
– Extraction of a substantial part of a collection of information so as to cause material harm to the primary market
H.R. 354• Primary marketPrimary market: all markets in which the product is
offered or in which the party derives or reasonably expects to derive direct or indirect revenue
• Related marketRelated market: [1] any market in which similar products are offered and in which the parties offering similar products derive or expect to derive direct or indirect revenue or [2] any market in which the protected party has taken demonstrable steps to offer a product within a short period of time and with the reasonable expectation to derive direct or indirect revenue
H.R. 1858
• Prohibition:– Distribution of duplicates: sale or distribution
to the public of a database that is the duplicate of a database (substantially the same database made by extracting the information from the original) collected and organized by another person, in competition with that other database.
H.R. 1858
• Prohibition:– Distribution of duplicates: sale or distribution
to the public of a database that is the duplicate of a database (substantially the same database made by extracting the information from the original) collected and organized by another person, in competition with that other database.
H.R. 1858
• In competition withIn competition with: the duplicate database displaces substantial sales or licenses of the original database and significantly threatens the opportunity to recover a return on the investment in the collecting and organizing of the database
H.R. 354
• Privileges:– Use of Individual items of information or
insubstantial portions of the compilation– The lawful owner of a copy of the original
collection may sell or transfer that copy – News reporting– Nonprofit educational, scientific or research
purposes that do not materially harm the primary market
H.R. 354
• Privileges:– Reasonable use for illustration, explanation,
example, comment, criticism, teaching, research or analysiscommercial or nonprofit purpose amount extracted appropriate to purpose good faith extent of incorporation into an independent work and
degree of difference between independent and original works
development for and marketing in the same field as the original
H.R. 1858
• Privileges:– News reporting (except time-sensitive material
collected by a news reporting entity when use is part of a consistent pattern of activity engaged in for the purpose of direct competition)
– Scientific, educational or research purposes, if not a consistent pattern engaged in for the purposes of direct commercial competition
H.R. 354
• Term: Protection of information ends 15 years after original collection was first offered in commerce, with no extension for later changes to collection; burden of proof is on plaintiff to show that portion of collection to be protected is no more than 15 years old
H.R. 1858
• Term: No term of protection specified
Lobbying for H.R. 354
Pro• NYSE• Real Estate Agents• AMA• EBay
Anti• Chamber of Commerce• Consumers Union• Research Libraries• Charles Schwab• Yahoo
Possible Sources of Legal Protection
• Copyright
• Misappropriation Doctrine
• Contract
• Sui Generis Legislation or Treaty
• Encryption/Anti-“Black Box” Legislation
• Trespass Doctrine
• Branding – e.g., Lexis; Westlaw
Possible Sources of Legal Protection
• Copyright
• Misappropriation Doctrine
• Contract
• Sui Generis Legislation or Treaty
• Encryption/Anti-“Black Box” Legislation
• Trespass Doctrine– Bidder’s Edge v. Ebay (May 2000)
• Branding – e.g., Lexis; Westlaw
Possible Sources of Legal Protection
• Copyright
• Misappropriation Doctrine
• Contract
• Sui Generis Legislation or Treaty
• Encryption/Anti-“Black Box” Legislation
• Trespass Doctrine– Bidder’s Edge v. Ebay (May 2000)
• Branding – e.g., Lexis; Westlaw
Wednesday
Possible Sources of Legal Protection
• Copyright
• Misappropriation Doctrine
• Contract
• Sui Generis Legislation or Treaty
• Encryption/Anti-“Black Box” Legislation
• Trespass Doctrine
• Branding – e.g., Lexis; Westlaw
top related