Are ‘Agent’ Exclusion Clauses a Legitimate Application of the EU Database Directive?
Jimi Groom*
1. INTRODUCTION
The vulnerability of digital information to unauthorised copying has posed significant problems for the law of copyright. Digital information can be replicated with no decrease in the quality of replications and can be widely and instantaneously disseminated, at virtually no cost to the copier. The response of intellectual property rights-holders has been threefold:- i) to lobby for appropriate legislative protection, ii) to utilise technological tools of protection and iii) to utilise the law of contract as a means of imposing control.
The above strategy is evident in the protection of digital databases; protection arising from a combination of i) sui generis legislation, ii) technological protection and iii) strict licensing terms.
At its most basic an autonomous agent is a software tool that undertakes searches on behalf of the user. Common examples may include travel or auction ‘bots’ which review significant quantities of data in accordance with the users specified requirements. Autonomous agents which access and utilise data contained within digital databases on the internet are perceived as ‘free-riders’, threatening the commercial exploitation opportunities of database makers.1 From an internet user’s perspective however, agents are perceived as performing an increasingly fundamental function in facilitating information gathering and interpretation. Agents are used as a means of navigation, information filtering and task completion.
The existence of a database does not render it useful unless it can be used effectively.
Whilst agents are not necessary in order to enter and use a digital database, their value lies in the fact that they enable large amounts of information to be understood. Agents enable unmanageable quantities of information on the internet to be put in context, to cross reference / contrast / compare data sources at tremendous speed.
The dilemma for legislators therefore has been how to
reconcile the social desire (and growing need) for agent
applications, versus the rights-holders inherent resistance to any
perceived form of ‘free-riding.’ The response of many
online database rights-holders has been to impose exclusion clauses
on their sites, preventing agent accessibility altogether.
The purpose of this paper is to consider the extent to which agent exclusion clauses are legitimised by the EU Database Directive. Following a brief analysis of the legal capacity of agents we will then focus upon the specific provisions of the EU Database Directive with a view to identifying what, if any, express rights are granted under the Directive which would embrace the activities of agents.
We will then focus on the concept of lawful use and whether this term could embrace the activities of agents where either the database being utilised does not merit protection under the Directive, or where the agent’s activities do not constitute infringement. Finally we will consider what additional principles of law may be drawn upon in order to challenge the legitimacy of agent exclusion clauses.
Where an express right of access/use is granted pursuant to the Database Directive, any license provision seeking to negate that right is explicitly invalidated. Whilst it appears unlikely that an agent proprietor2 will be able to rely upon fair use as a defence, individual users may well be able to if their usage amounts to ‘research’.
Where a database does not fulfil the necessary pre-requisites so as to benefit under the Directive, or the type of activity undertaken by an agent does not constitute an infringement under the Directive, the question remains whether a database maker may generate equivalent protection via the terms and conditions of the user license.
It is submitted in this paper that if a database does not come within the scope of the Database Directive, or the particular activities of an agent are not deemed an infringement under the Directive, then both the agent proprietor and user should be considered lawful users and thus any restrictive license would also be rendered void by the Directive. In addition, it is submitted that broader principles of law may also be relied upon both in furtherance of the agents right of access and usage, specifically:- competition law, unconscionability, public interest and constitutional law.
Focusing on the issues surrounding agents therefore,
this paper also serves as an illustration of the vulnerability of
copyright’s ‘cultural bargain’ to being displaced
by restrictive license terms. Whilst license terms may simply apply
established copyright law, they may also be used to supplement for
perceived oversights in copyright law and more contentiously may also
be used to seek to over-ride express or implied rights of access
and/or use granted under copyright law.
2. AUTONOMOUS AGENTS
2.1 Defining Characteristics
The traditional and non-technological concept of an
agent is that of a representative, one that has the express or
implicit authority to act on another’s behalf. One early
account of the differences between human and software agents is that
the latter are mobile are mobile, autonomous and able to ‘interact
independently of its user’s presence’.3
This definition however fails to differentiate effectively between
the two as in many instances the abilities of human agents will
extend to incorporate the additional features described. This
definition relates more to the difference between software per se
and software agents.4
The definition of an autonomous agent is a problem which
has eluded far more technically minded commentators than the present
writer.5
The difficulty appears to lie in the fact that agents are incredibly
versatile and moreover commentators differ fundamentally from a
philosophical perspective as to the extent of so called ‘autonomy’
they are prepared to acknowledge within any form of software.
Rather therefore than attempting to impose an
all-embracive definition, a more effective approach in the writer’s
opinion, in order to better understand autonomous agents, is to
identify their central features, namely:-
Autonomy (ability to fulfil goals without the need for further instructions from the user)
Communication (able to communicate with various other information sources)
Cooperation (able to collaborate with other agents in the achievement of objectives)
Capacity for Reasoning (ability to reason is central to the concept of an autonomous agent, defined as ‘the ability to infer and extrapolate based on current knowledge and experiences - in a rational, reproducible way’6)
Adaptive Behaviour (ability to adapt their behaviour in the light of previous experience)
Trustworthiness (agents should be trustworthy, that is the user should be able to trust the agent to fulfil a specified objective7)
Agents are also referred to as ‘bots’8,
intelligent agents, spiders and web crawlers.9
Hereafter when referring to the term ‘agents’, we are
referring to a software based entity featuring the above
characteristics. An agent’s role is to undertake an activity
or fulfil a task on behalf of its user and in so doing the agent has
a variable degree of latitude as to the method of achieving its goal
and is able to learn from its experience.
From a functionality perspective, agents are ‘launched’
by individual users or by the agent developers/proprietors. Agents
can also be used to ‘crawl’ amongst various sites at
rapid speed collecting information/data. The type of data collected
would principally include price information, Uniform Resource
Locators (URL’s), e-mail addresses and product lists. More
sophisticated agents enable broader types of information to be
gathered such as event information / comparison, job information /
comparison, extended product comparison / information e.g. warranty
policies, shipping processes, customer satisfaction levels etc…
The abundance of information available on the internet has rendered the use of agents an essential form of navigation.10 Agents do what users either do not want to do themselves (because perhaps the task is repetitive or boring) or what users are incapable of doing themselves (perhaps due to logistical /complexity/ time obstacles).
Thus the most obvious benefit to agent users is that they are able to reduce ‘transaction costs’ by collecting, siphoning, examining and interpreting large amounts of digital information.
2.2 Contractual Capacity of Agents
A valid contract requires that the contracting parties
have the requisite ‘capacity’.11
Traditionally such capacity has been granted to natural and legal
persons, natural meaning human, legal referring to enterprises such
as companies being granted an independent legal status.12
The use of autonomous agents was not the first occasion
upon which contractual relationships have arisen despite the absence
of at least one ‘legal personality’. Indeed such
transactions are so deeply integrated into our society that their
very existence goes virtually un-noticed or unquestioned e.g. vending
machines and arcade games. It has never been disputed that the role
of a vending machine in a contractual agreement jeopardises the legal
status of the agreement or transaction.13
The key difference however is that agent is active participants and
indeed initiators of the transactions rather than simple ‘conduits.’14
Terms and conditions of database licenses, in accordance with standard contract law, must be incorporated into an agreement in order to be binding. A license differs from a standard contract in that the property rights in the copyright material remain with the owner only in the case of the former. A licensee therefore is granted certain rights of access and usage. Furthermore as a result of the owner’s retention of property rights, these rights are ‘enforceable against the world’, whereas a contract can only be relied upon as against the other contracting party.
Online database users, whether agents or otherwise, will almost certainly be required to agree to the terms of the database maker’s license, which in turn will invariably contain an agent/robot exclusion clause. The clause may be displayed in text form in the site terms and conditions or may be contained within software readable form, known as a ‘robot.txt file.’
Basic contract law provides that the mere posting of
terms and conditions with nothing more is unlikely to constitute
the requisite notice.15
In order therefore that web-sites and database makers may pre-empt
any defences of ignorance of terms and conditions, demonstrable
consent will be sought. The most popular method of achieving this is
via a ‘click wrap’ agreement, typically requiring the
user to agree to having read the site’s full terms and
conditions and to thereafter manifest assent in the form of manually
clicking the ‘I agree’ icon. Whilst an agent is able to
simulate the same action the question remains whether the agent’s
assent to the site terms and conditions would be binding on the agent
operator.
2.3 Validity of Electronically Agreed Contracts
A ‘click wrap’ contract is a variation of the ‘shrink wrap’16 contract with the terms and conditions being displayed digitally, for example when first using a software program or when accessing digital content online. A contract is concluded once acceptance has been unconditionally communicated to an offeror. If therefore the actions of an agent when assenting to a click wrap contract are not deemed to constitute either an offer or acceptance, then it may be presumed that no contract will have been concluded.
Commentators have debated the issue for several years, querying whether the postal rule would apply, whether the buyer’s or the seller’s communication constitutes an invitation to treat etc17... The application of ‘black letter’ contract law to the digital environment has always been strained, attempting to map legal definitions and significance on individual elements of a digital process. The Electronic Commerce (Ecommerce) Directive18 may however render the debate effectively redundant by simply focussing attention on whether or not a specified result is achieved.
The Ecommerce Directive requires EU Member States enact
enabling legislation so as to ensure that the formation of electronic
contracts is not impeded by national laws.19
The Directive clarifies;
‘in cases where a recipient, in accepting a service provider’s offer, is required to give his consent through technological means, such as clicking on an icon, the contract is concluded when the recipient of the service has received from the service provider, electronically, an acknowledgement of receipt of the recipient’s acceptance.’20
One interpretation of the above is that the user
clicking on an icon constitutes the offer, whilst the service
provider’s acknowledgement constitutes the acceptance. That
being the case, it has been suggested that the Directive contradicts
existing principles of contract law in the UK (i.e. seller makes
offer, buyer accepts).21
However, crucially, the Directive enables parties to understand what
constitutes a completed contractual agreement.22
2.4 Validity
of Agent Agreed Contracts
The question remains whether a contract concluded by an
agent would fall within the scope of the above definition. A strict
interpretation of the E-Commerce Directive may be that it allows an
automatic electronic response to fulfil the necessary conduct needed
to conclude a contractual agreement. This is not the same as
recognising the legal status of an agent initiating the transaction.
Indeed, the language used in the Directive refers to ‘a
recipient’ and ‘his consent’, both of
which suggest a human rather than an electronic agent.
However, it could also be argued that there is no express exclusion in the Directive which precludes ‘a recipient’ from being an agent. Indeed, to conclude otherwise would be in direct conflict with the central ethos of the E-Commerce Directive, namely:
‘Member states shall ensure that their legislation allows contracts to be concluded electronically (and that) the legal requirements applicable to the electronic process neither prevent nor result in such contracts being deprived of legal effect and validity on account of their having been made electronically.’23
There is no suggestion in the above paragraph that the
requirement of legal effect be limited to automatic electronic
activities. One could forcefully argue therefore that the Directive
should be interpreted in accordance with the above-professed ethos
and thus it must have been the intention of the drafters of the
Directive to grant legal effect to the actions of agents.
Within the US, the requirement of the ‘manifestation
of consent’ within electronic contracts has achieved
legislative status in the Uniform Computer Transactions Act (UCITA).
The Act provides that assent to terms can be manifested without
regard to the party’s subjective knowledge or understanding of
them (except unenforceable terms).24
Assent may be manifested if:
‘acting with knowledge of, or having an opportunity to review the record or term or a copy of it, she intentionally engages in conduct or makes statements with reason to know that the other party may infer assent from the conduct or statement.’25
The UCITA attributes an electronic authentication to the
person who implemented the electronic agent.26
This will certainly include the individual user of the agent, and may
arguably also include the agent designer / operator / proprietor. If
therefore an agent is required to assent to license terms before
accessing a site, an agent/principal relationship would be assumed,
thus binding the principal to the acts or omissions of the agent.27
A requirement of UCITA for the contract terms to be
binding is that the user must have had an opportunity to review the
terms before assenting to them. This requirement does not undermine
the enforceability of a contract entered into by an agent.28
In clarification (and arguably in anticipation of agents acting
beyond their scope of authority or indeed agents simply committing
errors) the principal’s responsibility is defined as follows;
‘A person that uses an electronic agent that (he or she) has selected for making an authentication, performance, or agreement, including manifestation of assent, is bound by the operations of the electronic agent, even if no individual was aware of or reviewed the agent’s operations or the results of the operations.’29
2.5 Summary
Legislative focus on the manifestation of assent rather
than the level of comprehension and understanding on the part of the
assentee provides significant scope to extend contractual capacity to
agents. The current status of online contracts / licenses entered
into by an agent within the EU does however remain slightly
ambiguous, even under the terms of the E-Commerce Directive.
On balance, one must conclude that contracts entered
into by agents, on the instructions / programming of a human user,
would be granted legal status in accordance with the express
principle of the Ecommerce Directive and in unison with the UCITA and
the UN’s own Model Law on Electronic Commerce.
30
Therefore, it is submitted that agent/robot exclusion clauses would
also be deemed binding upon an agent operator.
3. AGENTS & COPYRIGHT
3.1 Agent Functions v Copyright Functions
‘any technology that promises to change fundamentally the way information is gathered will raise the eyebrows of the artistically or intellectually creative individuals (and their lawyers) who possess legally granted ownership rights in expressions of this information.’31
Agents may perform a number of activities on behalf of a
user. The focus of this paper is with respect to the collection,
reproduction and/or re-utilization of data within freely available
online databases such as:- price information, product names, product
details, service names and service details. All of which would fall
within the category of factual information.32
Search engines33
which merely retrieve URL’s (whatever the strict technical
copyright implications) are not considered to create a problem for
agents as such because unless such activity was explicitly or
implicitly authorised, the internet would all but disappear. In
addition to which of course Meta keywords and Meta descriptions are
inserted into the HTML code of websites, the sole function of which
is to provide matches for search engines.34
The function of a copyright system is to provide authors
with an incentive to publish, in return for the public dissemination
of information. In order to maintain this balance the copyright
system must adapt to technological innovations which have the
potential to jeopardise this ‘cultural bargain’.
Copying however is an integral feature of the internet
and the digital nature of the content renders reproduction both
simple and virtually cost free. The particular vulnerability of
digital content to reproduction has focussed the attention of
legislators on devising ways to prevent copying of information
goods rather than on the type and effect of copying.
Overlooking perhaps that ‘control of reproduction is the
mechanism, not the goal’ (of copyright law).35
Agents are radically changing the way in which information on the internet is perceived, handled and understood. Internet users regard information as a means to an end, such as the answer to a question or the solution to a problem or simply the provision of knowledge. Internet access, it is submitted, is perceived by many as tantamount to a constitutional right. Likewise, there is also a perception that the information on the internet should be freely accessible to all and should not be the subject of unreasonable access and usage terms and conditions.
Rights-holders whose very existence depends upon the
preservation of a continuing notion of complete ownership and control
over digital databases are eager to dispel any beliefs that data
published on the internet equates to the surrender of corresponding
intellectual property rights.36
3.2 Technological Exclusion
The most straightforward method to prevent an agent
accessing a database (thus avoiding completely any arguments
regarding an agent’s contractual capacity) is to install
appropriate code into the robots.txt file of the server.37
Such files may prevent access altogether or restrict the areas
accessible to agents. The problem with this method is that it depends
on the visiting agent having been programmed to follow the
instructions of the robots.txt file.38
Alternatively, database makers may place restrictions on
site access requests emanating from specific Internet Protocol
addresses which are believed to be agents. The difficulty with this
additional measure is that agents are able to disguise their
appearance, for example instead of making numerous requests from the
same location, the requests are made from several different
locations, or even simpler - via a proxy server.39
Any agent that is programmed to ignore agent exclusion
clauses may well fall foul of Draft Copyright Harmonisation
Directive40.
Article 6 of the Directive renders unlawful any circumvention
‘without authority’ of effective technological
measures designed to protect copyright or related rights.
‘Technological measures’ being defined as ‘any
technology, device or component that, in the normal course of its
operation, is designed to prevent or inhibit’ infringement of
copyright or related rights.’
Autonomous agents that encounter robot.txt files and are
designed to ignore them arguably fall within this definition, as they
are designed to over-ride technological means to protect apparent
copyrighted information, and this ability would naturally be a part
of the agent’s design, whether or not it is used on each
occasion.
Technology therefore by itself does not enable database
proprietors to exert the level of control upon agent users as they
would like. Increasing reliance therefore has been placed by
rights-holders upon license terms and conditions.
3.3 Contractual Exclusion
Contract law, it has been suggested, offers the prospect
of a ‘perfect alternative to copyright’ on the
internet.41
The structure of the internet facilitates contractual relationships
in various ways:- agreement to terms and conditions can be
communicated instantaneously, all communication can be fully recorded
and preserved, written communication is the predominant form of
communication used, contract terms and conditions can be made readily
and permanently accessible and programs can be utilised to ensure
that terms and conditions must have been agreed to before the
contract is entered.
Contractual terms and conditions are also necessary for
copyright owners simply from the perspective of ‘shoring up’
the proverbial foundations established under copyright law. For
instance copyright legislation does not address:- choice of law
issues, arbitration, limitation of liability, governing law or forum.
Contract law (in the form of licenses) performs a valuable and
necessary function for both rights-holders and users, however
contract law also enables database makers to exert extremely strong
control over their digital content. When complemented by
appropriate digital technology this strong level of control
elevates to virtual complete control.
Whether or not agents are recognised as having
legitimate access and usage rights to online databases, any such
arguments are of little application if the license terms imposed by a
database rights-holder (reinforced by technological protection)
ignore any identified rights. More specifically, does the attempted
exclusion of agents from online publicly available databases
constitute a valid application of the rights granted under the
Database Directive ? Furthermore, if under the terms of the
Directive, a database does not merit protection, or the agent’s
activity does not constitute infringement, does this render the
agent’s activity a ‘lawful use,’ thus nullifying
any agent exclusion clause contained within a user license agreement?
3.4 Summary
Agents may undertake various tasks on behalf of their
operators. However, agent operators encounter significant resistance
from database makers in the form of technological and contractual
exclusion measures. The fallibility of technological protection, has
resulted in increasing reliance by database makers upon license
provisions. The parameters of copyright licences however are
determined by the rights granted in turn under copyright law.
4. EU DATABASE PROTECTION
4.1 UK Copyright Law
Under the Copyright Designs and Patents Act 1988 (CDPA)
original literary and artistic works are protected by copyright,
these are defined to include:- a) tables or compilations (other than
databases), b) computer programs c) preparatory design material for a
computer program, and d) databases.42
Under the CDPA tables and compilations can be considered
as literary works. Copyright in a table or compilation derives from
protecting the skill and labour utilised in selecting, collecting or
arranging the content. The content on its own (materials, numbers or
facts) is not protected.
For present purposes, if there is indeed a distinction
between tables or compilations and databases, it would be a fruitless
task seeking it out, given that both are granted protection under the
CDPA in any event. As with tables and compilations, a database can
also obtain protection under the CDPA as a literary work ‘by
reason of the selection or arrangement of the contents of the
database the database constitutes the author’s own intellectual
creation.’43
The database must be the author’s own intellectual
creation either due to the selection or arrangement of the contents.44
Such right is enforceable against any who have appropriated the
whole or substantial parts of the database.
If therefore a database maker is unable to exclude an
agent by technological means, and seeks to rely on copyright law to
protect their database, one must establish sufficient originality in
the database,45
(that is the selection and arrangement of the content must derive
from the author’s own intellectual creation) and
moreover the most valuable part of the database i.e. the content, is
beyond the scope of protection under traditional copyright law.46
4.2 Database
The EU Database Directive (1996),47
requires Member States to enact legislation granting database makers
the right to ‘prevent extraction and/or reutilization of the
whole or of a substantial part, evaluated qualitatively and/or
quantitatively of the contents’ of a database48.
Sui generis protection therefore arises where there has been
a substantial investment in obtaining, verifying or preserving the
database contents, whether or not the selection and arrangement of
the contents justifies copyright protection.49
A database is defined in the EU Database Directive as
follows:-
‘a collection of independent works, data or other material
arranged in a systematic or methodical way and individually
accessible by electronic or other means’.50
The Directive preamble clarifies that the term Database extends to include:- ‘literary, artistic, musical or other collections of other material such as texts, sound, images, numbers, facts, and data…’51 The database is protected against ‘unauthorised extraction’ or ‘re-utilisation’ of all or a substantial part of its contents.52
4.3 Contractual
Conflict
Within the US, the pre-emption doctrine dictates that
copyright law over-rides contradictory contractual provisions. The
US legal system contains two legislative authorities, state and
federal. The federal law is the superior authority thus in the event
of conflict federal law prevails. Copyright law comes within federal
jurisdiction, whilst contract law falls within state jurisdiction.
Clause s301of the US Copyright Act provides for the pre-emption by
copyright law as against any state ‘legal or equitable
rights that are equivalent to any of the exclusive rights within the
general scope of copyright.’
The doctrine however has been considerably diluted by
the decision in ProCD v Zeidenberg.53
The database in this instance comprised a compilation of national
residential and commercial listings, which in turn had been obtained
from public telephone books. From the Court’s perspective, the
absence of copyright status in the database itself was
inconsequential; the case being decided entirely on the basis of the
issued licence. Notwithstanding the fact that the terms and
conditions were not known prior to purchase, the Court deemed the
terms binding on the grounds that a) the defendant had known or been
made aware of the presence of terms by virtue of an external
indication to this effect and b) the defendant retained the product
after reading the terms and using software.54
In ProCD the Court of Appeal for the Seventh
Circuit held that the contractual limitation imposed under the
license was not pre-empted by copyright law because the rights
created by contract are distinct from the rights granted under
copyright law.55
As observed by L Guibault, this decision effectively suggests that a
licence can never be over-ridden by copyright principles in the US,
because the two areas of law are simply not ‘equivalent’
to one another.56
The highly contentious reasoning of this decision has now
effectively been incorporated within s105(a) of UCITA which provides
that ‘a provision of this Act which is pre-empted by federal
law is unenforceable to the extent of the pre-emption.’
57
The preference of the US Judiciary for the supremacy of
contract law was further illustrated by the dictum in eBay v
Bidder’s edge, in which the Court referred to the necessity
of consumers to accept the user agreement, one of the terms of which
prohibited robots /agents from monitoring or duplicating information
contained on the site.58
Had Bidder’s Edge agreed to the terms of the user
agreement, the Court maintained that the term would have been
binding.59
In the absence of an EU equivalent to the Pre-emption
doctrine, attention must focus on the rights and remedies granted
within the relevant legislation. In this regard Article 15 of the
Database Directive provides that ‘any contractual provision
contrary to Articles 6(1) and 8 shall be null and void.’
Article 6 (1) provides that ‘the performance by
the lawful user of a database or of a copy thereof of any of the acts
listed in Article 5 which is necessary for the purposes of access to
the contents of the databases and normal use of the contents by the
lawful user shall not require the authorisation of the author of the
database.’
Article 8 allows a lawful user of a database which has
been made available to the public to extract and/or re-utilise for
any purposes whatsoever insubstantial parts of the contents of a
database protected under the sui generis right, provided such
use does not conflict with the normal exploitation of the database or
unreasonably prejudice the legitimate interests of the database
maker.
4.4 Public Domain / Fair Use
Within the EU, once a database has been made available
to the public, lawful users cannot be prevented from extracting or
re-utilising insubstantial parts of the database,60
for whatever purpose, subject to the following conditions:
the lawful user may not perform acts which conflict with normal exploitation of the database or unreasonably prejudice the legitimate interests of its maker61
the lawful user may not cause prejudice to the holder of a copyright or related right in respect of the works or services contained in the database62
A difficulty in interpreting the above has been that of
defining when digital material is deemed published / made available
to the public. Rarely is information placed on a site with an
invitation that anyone do as they please with the content.
The mere presence of information on a publicly accessible site may well constitute publication in the absence of any terms/conditions, however there still remain fundamental differences in the effect and control over information which is published in the physical world and information which is published online.
Fair use of a publicly available database will constitute lawful use. The Directive entitles fair dealing with a ‘substantial part of the database for the purposes of illustration for teaching or research.’ 63
The fair dealing right however does not extend to
commercial purposes, be they teaching or otherwise. The purpose of
copying is fundamental to an evaluation of ‘fair use’.
Thus as far as agent proprietors /operators are concerned, copying
for a rival (parasitic) commercial purpose will be fatal.64
However, individual users, using agents to research issues / prices
on the internet, themselves have no commercial interest in the agents
activities, thus fair use may well be argued.
In addition, if the agent were simply placed on the
internet with no apparent commercial benefit to the agent proprietor,
there is a prospect of fair use arguments being pursued. Again,
however any use of the agent must still amount to teaching and/or
research. The fair use provision under the Directive therefore
greatly restricts the established principle of fair use under general
copyright law.
By way of contrast, in the US, where no equivalent
legislative database protection exists at present, it was held in
Feist Publications v Rural Telephone Service Co65
by the US Supreme Court that fair use extended to unauthorised
extraction of data for competing or value added uses. Naturally,
this decision bodes well for US agent operators where something is
done with the data over and above simple copying.
The above decision was developed further in the US case
of Kelly v Arriba Soft Corp,66
in which the defendant had displayed photographic images from the
indexed websites in response to user enquiries. The District Court
held that the retrieval of images in this manner amounted to fair
use, a key issue for the Court being that the ‘infringers’
use of the image was entirely different from that of the original
site, i.e. the former’s was ‘functional’ whereas
the latter’s was ‘aesthetic’.67
Within the UK it has been held that re-arrangement of data still undermined the initial investment by the database maker.68 However we will return to this issue in section 6.2 when discussing the possible application of competition law to agent activities.
5. LAWFUL USER
In the absence of express rights under the Database
Directive, it is submitted that an agent’s actions may still
constitute lawful use and thus an agent exclusion license term to the
contrary would be deemed void.
A ‘lawful user’ is defined under the
Directive as a person who ‘has a right to use the database’
(whether under a license to do any of the acts restricted by any
database right or otherwise).
Certainly therefore a licensed user will constitute a
‘lawful user.’ Although, the fact that the terms of a
license have not been complied with does not necessarily render the
user unlawful. This is clearly illustrated in a recent decision of
the Hague District Court69
in which a student had posted on his website sections of a commercial
CD-Rom which contained Dutch Legislation. The Publisher maintained
that such publication was contrary to the terms of the contract as
printed on the product packaging. The Court acknowledged that it was
common practice for publishers to indicate terms in this manner, but
that the terms were often broader than the law actually allows. Thus
the Court considered that a purchaser could reasonably be expected to
interpret such terms as little more than an indication of statutory
limitations of use.
It is the submission of this paper that an agent’s lawful use of a digital database could also be deemed to arise where either the Database being accessed / used does not fulfil the necessary pre-requisites of the Directive and therefore does not merit protection, or the activity of the agent does not constitute an infringement under the Directive. In both of the these scenarios, the agent’s access and use of the database should be considered lawful and therefore any agent database restriction/exclusion clause should be deemed void in accordance with Article 15 of the Database Directive.
5.1 Substantial Investment
The requirement of a ‘substantial investment’
is a pre-requisite to protection under the Directive.70
This will depend upon the resources expended in each case and whether
‘substantial’ is assessed from an objective or subjective
basis. The only guidance provided by the Directive is that the
investment may be assessed on a qualitative or quantitative basis and
may relate to the ‘obtaining, verification or presentation
of the contents.’71
The basis of protection underlying the Database
Directive differs fundamentally from traditional copyright
principles, in that the protection is based principally on an
investment having been made. The Directive is believed to
have been prompted by a desire on the part of the European Commission
to expand and protect the market share of EU Database
rights-holders.72
The final version of the Directive differed in a number of ways from
its initial draft version, most pertinently the final version adopted
a definitively property based rather than a liability based model of
protection.73
The fundamental difference being that in the case of the former,
conditions of access and particularly exclusion are determined by the
rights-holder, whereas in the case of the latter there is an inherent
requirement to consider the respective interests of the property
owner and the alleged infringer.
The Directive relies upon a ‘sweat of the brow’ test rather than the creative / originality threshold upheld under traditional copyright law both within the UK and the US. The current US position was established in the case of Feist Publications v Rural Telephone Services where the US Supreme Court held that copyright could not be used to protect facts. The Court held that compilations of facts were only copyrightable to the extent that the selection or arrangement of the contents ‘possesses at least some minimal degree or creativity’.74 Under US law therefore, copyright protection does not extend to functionally dictated collections of data in the absence of creative selection or arrangement. Attempts have been made in the US to establish a database protection regime equivalent to the EU’s75 although to date these have been unsuccessful. 76
5.2 Substantial Amount
With respect to the requirement of a substantial amount
be extracted and/or re-utilised, the threshold is also uncertain.
For example, if one were to use auction agents to seek out and
compare prices on a specific item, only a very small percentage of
the data from an auction site’s database would have been used.
If on the other hand, the agent copied the entire database this will
almost certainly constitute substantial copying.
As agents are normally tasked with specific objectives,
they are clearly capable of restricting any copying to a small
proportion of the available data. That is not to say that complete
database searching and copying does not already occur, the point
being that the amount of content accessed and used by an agent can be
reduced to a bare minimum.
An insight into how the UK Courts actually assess the
issue of a ‘substantial amount’ was provided in the case
of Cantor Fitzgerald International v Tradition UK Ltd.77
In this case a former employee was alleged to have copied the source
code from a program developed for his former employer. During
discovery, it transpired that circa 3000 of the 77,000 lines of code
had indeed been copied. The Court held that just as with the
traditional arts, computer software should be assessed on a
qualitative basis. The Court accepted as a general principle that
the ‘architecture’ of a computer program merits
protection where it involves ‘a substantial part of the
programmer’s skill, labour and judgment.’78
However, other than finding a very limited degree of infringement,
the Court held that the ‘similarities’ related to
insubstantial pieces of work or could be explained by reasons other
than copying.
The decision in Cantor Fitzgerald is surely a pragmatically correct one, otherwise the protection being granted to the original copyright owner would be tantamount to a patent.79
5.3 Temporary
Extraction
Both unauthorised ‘extraction’ and
‘re-utilization’ are deemed infringements under the
Directive. ‘Extraction’ being defined as ‘the
permanent or temporary transfer of all or a substantial part of the
contents of a database to another medium.’80
Thus caching, would appear to fall foul of the Directive. The
process of caching is simply that of making copies of material
originating from another location. The benefit being that the
information can be accessed much quicker by the user, and the demands
placed on the originating provider are also duly minimised as a
result.
Article 2 of the Draft ‘Copyright Harmonisation’
Directive81
grants authors the exclusive right to prohibit direct or indirect,
temporary or permanent reproduction of the protected work by any
means or in any form. Article 5 exempts temporary acts of
reproduction from the above right of authors where they are:
‘transient and incidental, which are an
integral and essential part of the process, whose sole purpose is to
enable:
a) a transmission in a network between third parties by
an intermediary or
b) a lawful use, of a work or other subject matter to be made, and
which have no independent economic significance.’82
It is debateable whether or not the activity of caching
can be considered an ‘integral’ and ‘essential’
activity.83
On occasion it may serve the originator, on other occasions it may
serve the cacher. The act of caching simply makes use of the
internet more efficient for users.
It is also debateable whether an autonomous agent being
used by an independent party may be considered an intermediary within
the context of a) above. More likely the type of intermediary
envisaged is one which simply relays data from party A to party B.
Where the intermediary is the collector of such data, their role has
clearly changed from that of intermediary to supplier.
5.4 Repeated & Systematic Extraction
Even if insubstantial parts of a database are used by an
agent, this does not absolve the agent of responsibility as the
Directive also prohibits the ‘repeated and systematic
extraction and/or re-utilisation of insubstantial parts,’
where the result is to conflict with the normal exploitation of the
database or results in the unreasonable prejudice to the legitimate
interests of the database maker. 84
It has been argued that the constantly changing nature
of online databases means that ‘repeated’
access/extraction does not in fact take place, each database
constituting a new one. Whilst this would appear to coincide with the
renewable protection granted to database makers as a result of
‘substantial changes’85
to the database, this argument has been firmly rejected in the UK.86
The above provision appears on face value to embrace any
agent related database search. Indeed this appears to have been the
interpretation in a recent German decision where an agent was used to
systematically search through the advertisement sections of various
newspapers for selected items.87
The German Court had little difficulty finding that the
information available on the individual advertiser’s sites
amounted to a database under the Directive88
and that the compilation of the site amounted to a substantial
investment. As the very act of an agent is extraction and
re-utilisation, infringement was concluded to have occurred.
Regarding the issue of ‘unreasonable prejudice’ the Court
based their decision simply on the fact the agent was believed to
have reduced site traffic meaning less advertising revenue could be
generated by the database rights-holder.
5.5 Unreasonable Prejudice
The US case of Ebay v Bidder’s Edge89 provides an illustration as to the factors taken into account by a Court when considering whether ‘unreasonable prejudice’ or harm has been sustained by a website. A Preliminary Injunction was granted against Bidder’s Edge by a US District Court (a metasite service similar in function to the German advertising searcher described above) from using search agents to scan eBay’s site90 in this manner. Bidder’s Edge argued that the data on the site was both in the public domain and could not be the subject of copyright protection.
Were the same case to be pursued in the EU, there would
be little difficulty satisfying the requirement that the site is
organised in a logical manner and the items displayed are
individually accessible.91
The more difficult issue would once again be that of whether a
substantial enough investment had been made into the database.92
In the case of an online auction site, the investment
relates to the site infrastructure rather than the content per se,
the content being provided by third parties. Whilst the auctioneer
may incur significant costs maintaining and securing the database, it
is doubtful that such an investment could fall within the scope of
Directive. Were the outcome otherwise, one could equally submit that
a database produced by a search engine as a result of a keyword
search is equally deserving of protection, as the search engine
itself and the facility to compile a resultant database would also no
doubt have been the subject of a substantial investment.93
This clearly can not have been the intended result of the Directive.
As to the issue of ‘unreasonable prejudice’
eBay maintained that agents utilise the capacity of their site,
resulting in reduced/ slower access by customers and further that the
data displayed by the agent site may be inaccurate.94
The Courts eventual decision in eBay to grant the injunction was
based on trespass rather than copyright / database infringement.
However, the decision is illustrative nonetheless of the degree of
interference with a property owner’s right which may be deemed
necessary to give rise to a liability /infringement.95
‘Cybertrespass’ was the basis of the Courts decision in both eBay v Bidders Edge and Register.com v Verio.96 In both cases it is understood that the agents generated 1.53% and 2.3% of the queries for the respective sites.97 Whether the same decision would be reached within an EU Court is debateable. However, if similar enquiry levels were encountered, it is difficult to comprehend how such a low level of capacity usage can be said to interfere with the ‘normal exploitation’ of the Database proprietor’s rights. Indeed subsequent cases in the US have refused to follow the reasoning in eBay on the basis that no demonstrable harm or obstructed functionality was in fact sustained by the complainants.98
It has been suggested that the mere exploitation of a
database site via licensing could also be deemed a normal right of
the database owner. ‘Normal’ is of course a relative
term, however were this interpretation correct this would effectively
mean that any interference with a database owner’s ability to
generate revenue from the use of or access to the database amounts to
infringement.
The contents of Recital 42 of the preamble to the
Directive appear to contradict the above contention, providing that
interference of itself is insufficient (in the absence of a resultant
‘parasitic competing product’) and that there does indeed
appear to be a minimum threshold of interference required, namely a
‘significant detriment…to the investment’.
It is submitted therefore that ‘significant detriment’
is unlikely to be constituted by the minimal levels of capacity usage
witnessed in the eBay and Register.com cases, in the
absence of proof of actual rather that anticipated loss
or harm.
There appear to be three main issues which
rights-holders refer to in support of their contention that harm has
been sustained99:-
i) Reduced Profit Margins - By preserving ‘elevated
search costs’, i.e. not enabling ease of price comparison,
sellers hope to benefit from price disparities. Removing the
‘elevated search cost’ enables simple price comparison
and thus buyers rather than sellers benefit from price disparities.
Sellers also may wish to preserve ‘elevated search costs’
so that product / service comparison is not made on the basis of
price alone, ignoring for example service quality / guarantees /
after-sales.
ii) Disturbed Revenue Model - Advertising revenue is a
significant source of income for many web sites. The amount of
revenue which can be generated will depend on the popularity of the
site, which in turn is based on the number and duration of site
visits. Agents can reduce the viewing figures on a site, by
rendering obsolete the need for consumers to visit the various sites
themselves.
iii) Capacity Shortage - Site owners contend either that
agents’ utilise a significant amount of a site’s
capacity, or the proliferation of agents accessing the site will
utilise a significant amount of capacity, to the detriment of
individual users.
All of the above, it must be said, are valid concerns by
site owners. An agent could adversely impact the future viability of
a rights-holders online database, however are such concerns realistic
or justifiable?
i) Preservation of Elevated Search Costs - It is
difficult to condone an economic model the success of which is
dependent on the preservation of consumer ignorance. Whilst sellers
may have a vested interest in wishing to ensure that their products
and services are assessed not merely on price but on the added value
the particular sellers bring to the market, it is surely the
prerogative of the buyer to determine the basis upon which a product
or service is assessed.100
Of course price is only one factor in a consumer’s
decision, there are numerous other factors which will influence a
consumer’s decision, in particular:- brand loyalty,
convenience, trust, privacy and security.101
In addition to which O’Rourke speculates that consumers would
in any event be deterred by agents which provide incomplete
information. BargainFinder for example has evolved from providing
price information only to include delivery speed, merchant providers
and to incorporate shipping costs.102
ii) Disturbed Revenue Model - Any technological
innovation has the potential to disturb the established revenue
models of existing enterprises. It is somewhat ironic that the very
enterprises which have benefited if not come into existence as a
result of technological internet innovations are the very same ones
who wish now to undermine further technological enhancements.103
The fact that revenue models may be disturbed is a natural commercial
complaint but does not of itself constitute a substantive basis upon
which to contest technological innovation.104
iii) Incapacity - Sites are under no obligation to
extend their site capacity in order to accommodate agents. However
much capacity is being used by an agent, the complaint of the site
operator is that it is too much. This argument appears mostly borne
of a fear of the future proliferation of agents rather than their
current manifestation and effect. It also overlooks the fact that an
agent may in turn service numerous enquiries based upon the data
already obtained from the originating site, thus reducing the amount
of individual visitors than would otherwise have been the case.
5.6 Summary
The basis upon which infringement is defined under the
Directive appears at first to be so broad that the mere fact that an
agent has accessed an online database would constitute an
infringement. However, as has been discussed above, fair use
arguments appear to remain open to individual users using agents to
conduct private research. Stronger arguments of justification
revolve around the concept of lawful use and the apparent need of the
database maker to demonstrate that an unreasonable degree of actual
as opposed to anticipated harm has been sustained. In either event,
the effect could be to render void an agent exclusion provision
contained within a database maker’s user license.
6. OVER-RIDING PRINCIPLES
An agent’s best prospects for challenging a
restrictive agent license exclusion clause lies primarily in the
identification of lawful uses of data. Courts are most likely to be
persuaded by drawing upon directly relevant case law and legislation,
which in the present instance would revolve around the interpretation
and application of the EU Database Directive. However, broader
principles of law may also be drawn upon as a means of reinforcing
the validity of the interpretations of lawful use suggested above.
It is submitted that the following legal principles
could be utilised to further persuade a Court that a restrictive
interpretation of the Database Directive would be not only contrary
to the wording of the Directive and the very function of copyright
law but also would also be contrary to fundamental underlying
principles of law. Principles which arguably all Court decisions
should be in furtherance or defence of.
6.1 Public Interest
One of the arguments submitted on behalf of Bidders
Edge was that the activities of aggregate sites perform a public
service. Within the UK, there is no legislative foundation to such a
defence, nor does it appear that the Courts are willing to recognise
such a defence in relation to copyright.105
However it has been suggested that a defence of Public Interest is
enshrined within s171(3) of the CDPA106
which provides that:- ‘Nothing in this Part affects any rule
of law preventing or restricting the enforcement of copyright , on
grounds of public interest or otherwise.’
Torremans107
suggests however that rather than affording a defence against alleged
infringement, public interest is instead utilised by the Courts to
resist the attempted pursuit of infringement actions by copyright
holders themselves, where for example their own conduct is deemed to
have been against the public interest.108
In either event, the effect is the same, namely that public interest
concerns defeat attempts to enforce contractual terms and conditions
which may conflict with copyright / database protection principles.
Fundamental to any public interest argument is the
belief that agents have the potential to create a fairer marketplace.
It is suggested for example that a pre-requisite to fair market
competitiveness is ‘the costless exchange of information’109
In the sense that consumers should ideally be able to obtain product
information without themselves incurring a cost. Such a marketplace
is arguably achievable with modern software agents. Agent detractors
may well emphasise the absence of a costless marketplace at present,
to contradict any contention that economic advantages may be brought
about by agents. However, this may in fact be attributable to a
number of unrelated factors such as:-110
a) Entry Barriers - The costs of establishing and
maintaining a presence on the internet are high as demonstrated by
the rate of business failure witnessed following the bursting of the
dot com bubble during the late 1990’s. There is also the lock
in effect which existing retailers will naturally seek to create and
exploit.111
b) Imperfect Information - Just as individual search
engines have limitations in terms of the quantity of sites they can
scan, so too aggregate search engines will have the same, albeit
lesser, problem. The issue here is one of perception, in that the
aggregate sites may be perceived as more thorough and complete than
perhaps they are.
c) Search Costs - Search costs, although lower on the
internet, are still present, for example the overwhelming numbers of
sites that basic searches produce.
d) Homogeneous Products - Price alone is not
determinative of choice on the internet; security, brand-name and
privacy all play a fundamental role in the consumer’s decision.
O’Rourke suggests that one effect of intelligent agents may be
that the trust imbued in a brand may transfer to an agent. On the
proviso that the agent was independent, this would clearly be
beneficial to consumer’s seeking to purchase the ‘best’
product or service based on their unique individual requirements,
thus obviating distracting marketing.
Efficiency is central to the Electronic Commerce
Directive,112
for example Information Society Services (ISS) 113
are exempted from liability for the ‘automatic, intermediate
and temporary storage’ of information transmitted in a
communication network, where the same is performed ‘for the
sole purposes of making more efficient the information’s onward
transmission to other recipients’.
Few would dispute the efficiency gains realised by
agents, however a condition of the Directive is that the intermediary
does not modify the information. Assuming that the agent were able
to fulfil the definition of an ISS, most agents would modify data in
some way taking them outside the scope of the exemption, unless for
instance a database were re-produced wholesale, in which case this
will almost certainly constitute an infringement under the sui
generis rights in any event.
6.2 Competition Law Conflicts
Whilst there was initially a proposal to incorporate a compulsory licensing clause in the Database Directive,114 such a provision was not incorporated in the final version.
However, it does remain open for agent operators to seek
to invoke general competition principles in order to challenge what
may be perceived to be abusive/monopolistic market practices. In
support of which Recital 47 of the Database Directive expressly
provides:
‘in the interests of competition between suppliers of information products and services, protection by the sui generis right must not be afforded in such a way as to facilitate abuses of a dominant position, in particular as regards the creation and distribution of new products and services which have an intellectual, documentary, technical, economic or commercial added value.’
Anti-competition arguments must first over-come
competing business justification arguments. In the case of database
producers and owners for example, it could be argued that the use of
their content on an alternate site would deprive them of advertising
revenue and thus make their business model unworkable. However,
consideration of this argument requires a case by case analysis. For
example, many agents will merely detail and compare relevant sites or
products, it does not necessarily follow that the site from which the
data originated will be deprived of business, in fact this may
generate business, having the exact opposite effect.
One of the arguments raised against eBay by Bidders Edge was that eBay’s attempts to restrict access to its site by the Bidders Edge agents amounted to monopolistic practices. Indeed the US Justice Departments Antitrust Unit commenced an investigation on this basis; however enquiries ceased in 2002 without any action being taken against eBay.115
Within the EU, a key decision by the European Court of
Justice (ECJ) on the issue of anti-competitive conduct is the case of
Radio Telefis Eireann & Independent Television Publications v
The Commission116
(also known as Magill). The defendant TV networks were held
by the Commission to have abused their dominant market position by
refusing to grant a licence to Magill to produce TV Guides.117
The information on forthcoming TV shows was held by the Commission to
constitute an essential facility given the fact that Magill were
producing a TV guide.
The ECJ held that an abuse of a dominant position
contrary to Article 82 of the EC Treaty may arise where copyright is
used to prevent the development of a new, value added product for a
secondary market, not offered by the right holder themselves. Agents
would in most cases be able to demonstrate an added value product is
being provided via their activities. If however there are a variety
of potential sources for the necessary data, it is unlikely that
monopolistic practices will be found.118
6.3 Constitutional Rights
Guibault observes as a basic constitutional principle that under continental European constitutional law, an ‘absolute renunciation of a party’s fundamental rights…would be null and void’.119 Guibault suggests that the following factors would be taken into account by the Court, namely:-
the respective bargaining power of the parties
type of contract used
seriousness of the encroachment upon the right
purpose of the contract
whether the restriction imposed is proportional to the purpose of the contract
Certainly these are arguments which may be raised in the
context of news reporting or legitimate criticism of another’s
work. However as Guibault herself concludes it is ‘highly
improbable’ that a Court would invalidate a restrictive
copyright licence term to which the parties had voluntarily agreed.
Were such a term contained however in a standard form contract, there
would be a stronger basis upon which to challenge its legitimacy.
In addition to the above, freedom of expression and the
Public’s fundamental right to information are protected under
the Universal Declaration of Human Rights (1948)120
Article 19 addresses freedom of opinion and expression and the
freedom to impart, receive and seek information. This principle is
also embodied in Article 10 of the European Convention on Human
Rights.
6.4 Unconscionability
Contractual terms and conditions are subject to
regulatory standards to ensure as far as possible that unequal
bargaining power is not exploited. Online database licenses are
presented on a ‘take it or leave it basis’ leaving no
scope for negotiation of terms and conditions. Thus while freedom of
contract is a central tenet within UK and EU contract law, to suggest
that mass market licenses grant prospective users any genuine freedom
is, at the very least, extremely unrealistic.
Detailed review of legislation seeking to curtail
unfettered imposition of contractual terms is beyond the scope of
this paper, however, the most relevant legislative source is the
Unfair Terms in Consumer Contracts Directive.121
This Directive applies to consumer contracts; an unfair term being
defined as a provision within a standard form contract which creates
a significant imbalance in the parties rights and
obligations.122
It is debateable whether or not a copyright license
would fall within the scope of the Directive as terms assessed must
relate to neither the main subject matter nor the adequacy of a price
or remuneration for goods and services rendered. It is arguable
whether or not a clause restricting database accessibility / usage
would be considered to pertain to the main subject matter of the
contract, and thus excluded from the scope of the Directive. It has
been persuasively argued in this regard that ‘because the
permissions and restrictions actually define the nature of what will
be delivered in information transactions, restrictive terms may be
exempt from the Directive on the ground that they ‘define the
product’.123
A further obstacle with applying the Unfair Terms
Directive is that it is directed towards a commercial transaction and
may therefore have little if any direct application with respect to
license provisions for online databases, in the absence of a
financial transaction.
By way of contrast, within the US, a contractual term may be judicially reviewed under the unconscionability doctrine.124 The application of this doctrine is limited to individual persons, rather than professionals or commercial organisations. Individual complainants are required to demonstrate that a restrictive license term was either oppressive or caused unfair surprise as a matter of contract law. Contract terms may be deemed unenforceable if they are considered to violate a conflicting, over-riding, public policy. The Official Comments accompanying UCITA clarify that such off-setting policies to be considered with regard to UCITA include those relating to innovation, competition, fairmment and use.125
6.5 Summary
As detailed above, there exist over-riding legal principles which may be utilised to challenge the legitimacy of agent exclusion clauses contained within site licenses, principally:- Public Interest, Constitutional Law, Competition Law & Unconscionability. The strongest argument rests on anti-competition principles, although success would depend on the database rights-holder being the virtual sole available source of the relevant data.
7. CONCLUSION
Established models of intellectual property protection
have experienced difficulty embracing digital information goods. The
response has been to devise customised protection such as the EU’s
sui generis Database Directive. The customised protection
however is resulting in a distortion of the pre-existing ‘cultural
balance’ sought under copyright law and may be perceived as
endemic of the ‘high protectionist tilt in worldwide
Intellectual Property systems’.126
The Database Directive is the subject of particular
criticism in view of the unprecedented protection granted to raw
data;
‘Under the EC Directive, the most borderline and suspect of all the objects ever to enter the universe of intellectual property discourse: raw data, scientific or otherwise - paradoxically obtains the strongest scope of protection available from any intellectual property regime except perhaps for the classical patent paradigm itself.’127
The speed, quality and versatility of data dissemination
on the internet has lead to rights-holders using restrictive license
terms and conditions, whether or not such terms contradict what may
otherwise be perceived as lawful uses of data under the terms of the
EU Directive. When such terms are further reinforced by
technological means, the cultural balance sought by copyright law is
jeopardised.
The issue of agent exclusion clauses within online
database licenses exemplifies the over-protectionist tilt described
above and also illustrates the power and limitations of contract law,
in the form of licensing, as a means of copyright protection.
The provisions of the EU Database Directive raise very
significant obstacles for agent makers or users seeking to justify
rights of database access or usage. The arguably extreme
restrictions placed on data use and accessibility under the Directive
necessitate a very close analysis of the wording of the Directive in
order to identify potential loopholes or lacunas. Thus, fair use
arguments could be utilised on behalf of agent makers and users to
justify digital database accessibility and/or usage, based upon
explicit rights granted under the Directive.
Moreover, the concept of lawful user could be utilised to embrace circumstances which appear to fall outside the scope of protection granted to Database makers.
Fundamentally, a Database maker’s ability to
confer or exclude user rights to online databases derives in turn
from the Database Directive, just as the rights of a copyright
rights-holder derives from copyright law. Thus, if a right of
exclusion has not been granted under the Directive then it should not
be possible for a license term or condition of equivalent effect to
be imposed by the rights holder.
Broader principles of law may also be drawn upon to
justify agent accessibility and use of digital databases, both in
furtherance of the above arguments and indeed as concurrent
arguments, valid in their own right. Specifically: - competition law,
constitutional law, unconscionability and public interest.
The need for reliance upon the above principles arises
by virtue of the lack of an EU equivalent to the US Pre-emption
doctrine. Aside from isolated provisions within the Database and
Computer Programs Directive128,
the legal status of what may otherwise be termed fair or lawful uses
of information remains unclear. It is submitted that a liberal
interpretation of the Database Directive in an agent operator’s
favour would be justified both under the specific wording of the
Directive and would be consistent with over-riding principles of law.
At present the legal focus as regards the application
and implications of agents revolves around shopbots, metasites etc…
where there is little difficulty drawing the connection between the
agent and the commercial incentive of the operator. However, the
wholesale exclusion of agents from databases derives from an
over-zealous fear and mis-understanding of the resultant harm which
may be sustained.
The resistance of database makers to agent technology appears premature given their significant development and application potential. Whilst database makers may persist or even bolster their endeavours to exclude agents, they are likely to encounter increasing resistance as the usefulness, convenience and versatility of agents increase.
Furthermore, the effects of denying agents data access and use may have broader ramifications than simply diminishing the effectiveness of the agent. Facts and data are of course the basic building blocks upon which knowledge is based, to allow such rigorous control of data, may result in the inhibition of applications, refinements, improvements and automisation129 to the detriment of all internet users.
TABLE OF CASES
Page
A
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B
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British Horse Racing Board Ltd v. William Hill Organisation Ltd (2001)
ECLR 257 20,25
C
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Cantor Fitzgerald International v. Tradition UK Ltd [2000] RPC 95 23,24
E
eBay, Inc v. Bidders Edge, Inc [2000] 100 F. Supp. 2d 1058 18,26,27,31,34
F
Feist Publications Inc. v. Rural Telephone Service Co, Inc 111 S Ct 1282 (1991) 20,23
H
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Hyde Park Residence Ltd v. Yelland [1999] RPC 655 31
Hotmail Corp v. Van$ Money Pie, Inc 1998 WL 388389 17
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I
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K
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L
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Los Angeles Times v. Free Republic 54 U.S.P.Q 2d (BNA) 1453 (2000) 20
Lotus Development Corporation v. Paperback Software International and
Stephenson Software Ltd 740 F Supp 37 (1990) 24
M
Microsoft Corp. v. Electro-Wide Ltd [1997] FSR 580 7
P
ProCD v. Zeidenberg, 86 F.3d 1447 17,18
Pro Sieben Media A.G. v. Carlton UK Television Ltd [1999] 1 WLR 605 20
R
Radio Telefis Eireann (and Independent Television Publications Ltd)
v. Commission of The European Community [1995] E.C.R I-808 34
Register.com v Verio 126 F. Supp 2d 238 (S.D.N.Y. 2000) 18,27
S
Specht v Netscape Communications Corp (2001) WL 755396 (SDNY July,5 2001) 7
T
Ticketmaster Corp. v. Tickets.com, Inc 54 U.S.P.Q 2d 1344 (CD Cal 2000) 28
Thornton v Shoe Lane Parking [1971] 2 QB 163 7
V
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Vermande v. Bojkovski, District Court of the Hague, Case 98/147(20/03/1998) 22
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* Claims Controller, Swiss Re
1 The terms database ‘maker’ / ‘rights-holder’ & ‘proprietor’ are used interchangeably throughout this paper and is intended to denote the party in whom the intellectual property rights of the database would be vested. The concept of ‘autonomous agent’ is explored in detail in section 2.1
2 The term agent ‘proprietor’ and ‘maker’ are used interchangeably throughout this paper and denote the party who either owns or developed the agent. The term agent ‘operator’ is used to embrace both the proprietor and users, unless indicated otherwise.
3 Heilmann K. (1995) p6
4 See Franklin S. & Graesser A. (1996)
5 See Nantes C. & Hagstedt T. (undated)
6 Belgrave, M (1995) Section 3.1
7 The issue of agent trustworthiness and the compliance of agents to the contractual principle of good faith is insightfully examined by : Schafer B. (2003), Weitzenboeck E. (2002) & Dowling C.(2001)
8 An abbreviation of robot, derived from the Czech word meaning work.
9 ‘The Web Robots FAQ’ http://www.robotstxt.org/wc/faq.html
10 See Sapherstein M. (1997) p1
11 See generally: Allen T. & Widdison R. (1996), Lerouge J.F. (2000), Weitzenboeck (2001), Amissah R. (2000), Finocchiaro G. (2003)
12 See generally Solum L. (1992) & Radin M.J. (2000)
13 See also Reed C. (2000) p175
14 Kerr I. (1999) p3
15 Thornton v Shoe Lane Parking [1971]; Specht v Netscape Communications Corp (2001)
16 Shrink wrap referring to contractual terms and conditions attached and displayed on the external packaging around a product. See Beta v Adobe [1996] held ‘shrink-wrap’ contract enforceable on basis terms of software incorporated at point of sale. Shrink-wrap contracts also upheld in Microsoft v Electrowide [1997]
17 See Allen T. & Widdison R. (1996), and Murray A. ‘Entering into Contracts Electronically’ (2000) in Edwards L & Waelde C.(2000)
18 2000/31/EC, enacted 8 June 2000
19 Recital 34
20 Article 11
21 Lloyd I (2000) p565
22 See also Allen T. & Widdison R. (1996) p12 who also suggest focus be placed on the ‘fact’ of agreement rather than on the ‘process’.
23 Article 9
24 s208(1)
25 s112
26 s213
27 s213 - Rosenfeld J. reaches the same conclusion (2002) p14
28 s206(a)
29 s107(d)
30 ‘Model Law on Electronic Commerce, adopted by the United Nations Commission on International Trade Law (1996) Key provisions include: i) legal recognition of data messages (Article 5), ii) incorporation by reference (Art 5bis) & iii) formation and validity of Electronic Contracts (Art 11(1))
31 Sapherstein M. (1997) p1
32 Ruse H.G. also includes news headlines within this category (2001) p300
33 As opposed to super engines, meta search engines and special search engines.
34 See also analogy with ‘derogation from grant’ principle upheld in British Leyland v Armstrong Patents Co Ltd [1986]
35 See Cmttee on IPR Report (The Digital Dilemma) (2000) p141
36 The focus of this paper is on the issue of infringement. The multitude of problems which the issue of enforcement and indeed detection gives rise to are beyond the scope of this paper
37 Technical procedure detailed at http://www.robotstxt.org/wc/faq.html
38 It is estimated that in 1997 one third of sites from which BargainFinder sought price and product information, endeavoured to erect technological restrictions, see Delong J.B & Froomkin M.(1999) as cited by O’Rourke M.(2002) p1975
39 i.e. a remote server which renders anonymous the searching party
40 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001, On the Harmonisation of Certain Aspects of Copyright & Related Rights in the Information Society.
41 See generally Hugenholtz P.(2000)
42 s3 CDPA 1988 as amended by the Copyright (Computer Programs) Regulations 1992 SI 1992/3233
43 s3A(2) CDPA 1988
44 Both the database as a whole (i.e. its structure) and the individual elements may attract copyright protection in their own right (Art’1, CDPA) however the individual elements themselves must of course also incorporate the necessary creative element.
45 CDPA 1988 s3A(2)
46 The following databases having been deemed capable of protection in the UK:- a football pools coupon Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964], railway timetable in Leslie v Young and Sons [1894]& professional directories in Waterlow Directories Ltd v Reed Information Services Ltd [1984] - exemplifying a low standard of creativity compared with the majority of other EU countries.
47 Directive 96/9/EC OJ L 077, 27.03.1996 P.0020-0028. Implemented in the UK by the Copyright and Rights in Databases Regulations 1997 (SI 1997/3032)
48 Article 7 / Regulation 13 (1)
49 See Cornish W.R (2002) p525
50 Art 1(2) / Reg 3
51 Recital 17 / Reg 12
52 Article 7 (1) / Reg 16 (1)
53 (1996) 86 F3d 1447
54The above decision was subsequently extended to non-shrink wrap terms, in the case of Hill v Gateway 2000, Inc (7th Cir 1997) - click wrap contracts also received judicial acceptance in Hotmail Corp v Van$ Money Pie, Inc (N.D.Cal April 16, 1998); Capsi v Microsoft Network (N.J Super Ct App Div 1999); iLAN Systems, Inc v Netscout Service Level Corp (Dis Mass 2002)
55 86 F3d @ 1455
56 Guibault L (c) (2002) p151
57 See also Vault Corp v Quaid Software Ltd (Fifth Circuit 1988) - where the Court of Appeals upheld a decision whereby a license seeking to prohibit decompilation or disassembly was deemed to be pre-empted under s 117 of the US Copyright Act.
58 100 F. Supp. 2d 1058 @ 1060
59 See also the case of Register.com v Verio (SDNY 2000) the Court held that a term of the user agreement pertaining to agents had been breached.
60 Article 8(1)
61 Article 8(2)
62 Article 8(3)
63 Article 9 / Reg 20 (1)
64 Such a finding would be fairly conclusive - Pro Sieben Media AG v Carlton UK Television Ltd [1999]
65 111 S Ct 1282 (1991)
66 77 F.Supp.2d 1116, 1121 (C..D.Cal.1999)
67 cf. Los Angeles Times v Free Republic (USPQ 2000), however ‘non-transformative’ nature of the reproduction thought to have been decisive in case.
68 British Horse Racing Board Ltd v William Hill Organisation Ltd (2001) ECLR
69 Vermande v. Bojkovski, District Court of the Hague 20/03/1998 in Informatierecht/AMI 1998 pp 65-67 as cited by Guibault L (1998) p223
70 Art 7 (1) / Reg 13 (1)
71 Article 7 (1) / Reg 12 (1)
72 Cmttee on Issues of on Issues in the Transborder Flow of Scientific Data (Bits of Power) Chptr 5 p5
73 First EC Directive on Databases, articles 1(1), 2(5); Commission of the European Communities (1992), Explanatory Memorandum to the Proposal for a Council Directive on the Legal Protection of Databases, COM (92) 24 final - SYN 393 @ pp. 21-22, 25, 35. As cited by ‘Bits of Power’ FN 73
74 111 S Ct (1991)
75 In accordance with the reciprocity principle – Art’11
76e.g. ‘Database Investment and Intellectual Property Antipiracy Act’ (1996) (H.R.3531 104th Congress) & ‘Collections of Information Antipiracy Act’ (H.R.2652, 105th Congress)
77 2000 RPC 95
78 2000 RPC 95 @ 134
79 A good example of which is Lotus Development Corporation v Paperback Software International and Stephenson Software Ltd 740 F Supp 37 (1990)
80 Article 7 (2)(a)&(b) / Reg 12 (1)
81 Directive 2001/29/EC of the European Parliament and of the Council 22 May 2001 on The Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society’ at http://www.patent.gov.uk/about/consultations/responses/copydirect/index.htm
82 Art 5(1)
83 Lloyd I. (2000) p432
84 Art 7 (5)
85 Art 10 (3)
86 Laddie J, British Horse Racing Board Ltd v William Hill Organisation Ltd (2001) ECLR 257 - a referral was made by the Appeal Court to the ECJ (Ref: C203/02) for guidance on interpretation of various of the terms and concepts used in the Directive, including ‘a substantial part…evaluated qualitatively and quantitatively’, the meaning of ‘insubstantial parts’ and clarification of acts which conflict with the ‘normal exploitation’ of a database. The Advocate General’s response is expected in September 2003. Full details of issues referred to ECJ available at: http://www.patent.gov.uk/about/ippd/ecj/2002/c20302.htm
87 Landgericht Berlin 08.10.1998, O 448/98 as cited by H G Ruse (2001) p21 FN 91
88 as enacted in the German Copyright Act
89 eBay Inc v Bidder’s Edge Inc. (F.Supp 2d 2000) - preliminary injunction granted 24 May, 2000 (No. C-99-21200 RMW)
90 The well known online auction site http://wwwebay.com
91 Article 1 II
92 Article 7 I
93 Ruse H.G. (2001) p321 suggests that the requisite investment may arise from the ‘time and money necessary to transfer the data to e-Bay’s server, to structure and categorise the data by using computerised indexation systems.’ See generally ‘Copyright in Computer-Generated Works: Whom, If Anyone, Do We Reward ?’ (2001) Duke L.& Tech Rev.0024
94 See also Kramer D. & Monahan J. panel discussion featuring eBay’s counsel (2000)
95 re critique of CyberTrespass see Burke D.L (2000), Remington M.J. (2002) and Epstein R. (2003) & O’Rourke M (2002) & Reed C (2000) p69
96 (S.D.N.Y. 2000)
97 As cited by Rosenfeld J. (2002) p2
98 Ticketmaster v Tickets.com (CD Cal 2000); Intel v Hamidi (Cal June 30, 2003) - in which the Court expressly held that trespass to chattels does not and should not be extended to encompass an electronic communication that neither damages the recipient’s computer nor impairs its functioning.
99 Based on categorisation suggested by Rosenfeld J.M. (2002) p5. See also O’Rourke M. (2002) with the additional category of ‘product differentiation and misleading information’ p1977
100 In addition to which, as Rosenfeld (2002) p6 observes agents could instead be perceived as offering the potential to dramatically reduce the cost of distributing product and price information.
101 Smith M.D. (2000) pp12 -14
102 O’Rourke M. (2002) p1977
103 Odlyako A. (2003) proposes that one reason for the widespread commercial resistance to agents may be the desire to preserve and strengthen price discrimination.
104 O’ Rourke M. (2002) p1983 observes ‘(the) issue is whether there is a legal right to stop unauthorised indexing. If there were, sites could protect the revenue they derive from licensing the right to index. But to argue that because sites make money in this way, they must have an entitlement to stop ‘unlicensed’ indexers,indexers bootstraps the result without any consideration of the normative implications of granting such a right.’
105 As held by Court of Appeal in Hyde Park Residence Ltd v Yelland [1999] RPC 655
106 Torremans P (2001)
107 Ibid p254
108 e.g. A.G v Guardian Newspapers Ltd (No 2) [1990] (‘Spycatcher case’)
109 O’Rourke M. (2002) p1967
110 Categorisation based on O’Rourke (2002) p1972
111 Re Network Effect see Robinson P. (2000)
112 Directive 2000/31, OJ 2000 L 178/1
113 ‘Any service normally provided for remuneration, at a distance, by electronic means and at the individual request of a recipient of services’
114 Lloyd I (2000)
115 ‘Online Auction Site eBay subject of DOJ Antitrust Investigation’ Andrews Computer & Online Industry Litigation Reporter (Feb 15, 2000)
116 Radio Telefis Eireann and Independent Television Publications Ltd (joint cases) v. Commission of The European Community [1995] ECR I-743
117 Contrary to Article 86 of the EC Treaty - now Article 82
118 Re: Analysis and effect of statutory licenses of copyright material see - NII Task Force, White Paper, Sept’ 1995 p52 as cited by Guibault L. (a) (1998) p24
119 Guibault L.(b) (2002) p265
120 Adopted unanimously by the UN General Assembly on 10/12/1948
121 93/13/EC as implemented in the UK via the Unfair Terms in Consumer Contracts Regulations 1999 SI 1999/2083
122 Art 3(1)
123Elkin-Koren N. (2000) p204, as cited by L Guibault (2002) p158
124 Codified in Section 2-302 of the UCC & s111 UCITA
125 NCCSUL, UCITA Official Comments s105, comm. 3, p20
126 J H Reichman & J.A Franklin (1999) p896. See also Anderson R. (2003) on the proposed Copyright Enforcement Directive, which proposes to criminalise all deliberate intellectual property violations conducted in the course of a business - thus firmly tipping the ‘protectionist tilt’ well and truly over the proverbial edge.
127 J.H Reichman & P Samuelson (1997) p94
128 Art 15 Database Directive & Art 9 (1) Computer Programs Directive
129 J.H Reichman & J. A Franklin (1999) p910