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The EC Database Directive: an Original Solution to an Unoriginal Problem?

Diane Rowland, BSc PhD LLB

Lecturer in Law
University of Wales, Aberystwyth

<dor@aber.ac.uk>

Copyright © 1997 Diane Rowland.
First Published in Web Journal of Current Legal Issues in association with Blackstone Press Ltd.

Summary

The imminent implementation of the Database Directive (Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases OJ No. L 77/20 1996) has brought sharply into focus the differing protection currently offered to the intellectual property rights in databases in different jurisdictions. The Directive, in common with a number of other directives in the area of information technology law, had a rather protracted gestation but was eventually published in 1996 and is due for implementation by 1 January 1998. Although the final text of the Directive extends also to non-electronic databases, these were not featured in the original proposal. This emphasises the fact that the initial impetus for the Directive was the rapidly growing market in electronic databases made possible by computer technology. The storage and retrieval of such vast quantities of data together with the speed with which it can be correlated, manipulated and transferred to remote sites has only become a practical reality with the advent of computer technology. Whereas abuses of privacy, intellectual property or other rights are equally possible with traditional methods of data storage, the propensity for both access to and copying of data held on computer has created problems for the law. These problems, on occasion, are so different in magnitude from that of the relevant traditional product, that they almost become different in kind. The Database Directive has attempted to find a compromise solution to the problem of protection of intellectual property rights in databases by creating a two-tier system which is capable of rewarding both creativity and investment.

Copyright Protection for Compilations - the Problem of Originality
The Response in Europe 1. The Database Directive a. Definition of Database b. Copyright in Databases c. The `Sui Generis' Right 2. Commentary a. General Issues b. Application to Multimedia Products 3. Implementation in the UK a. Copyright in Databases b. The Database Right
Conclusion

Bibliography

Copyright Protection for Compilations - the Problem of Originality

Before examining the model of protection adopted in the new Directive, it is worth reflecting that, even without considering the additional problems created by the electronic format of many modern databases, the protection of collections and compilations of materials and data has posed problems for intellectual property law which have been approached differently in different jurisdictions. The difficulty centres on the meaning of `original'. Dictionary definitions include phrases such as `made or expressed for the first time', `capable of producing new ideas or artistic forms' `novel', `inventive' as well as `independent creation' `not derived or copied'. Different nuances can be detected in these definitions and it is clear that an emphasis on novelty and creativity is likely to give a different perspective than the mere requirement that the work should not be copied, even though these could be viewed as equivalent at one level. The way that the definition has been incorporated into law has often been presented as a clash between the common law approach of `copyright' and the `droit d'auteur' approach adopted in the civil law tradition. In the first of these systems, protection provides a method for rightholders to safeguard their work against commercial exploitation by another by virtue of copying. On this analysis, only a low threshold of originality for the work is required - it may be sufficient that it is the author's own creation which has not been copied from elsewhere, even if there is no evidence of novelty as such. In the UK, the law on this topic has been contained in successive Copyright Acts and, in the words of Peterson J. in University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608 - 9:

"the Act does not require that the expression must be in an original or novel form, but that the work must not be copied from another work - that it should originate from the author."

The application of such a philosophy to collections and compilations in general was summed up by Lord Atkinson in Macmillan & Co. Ltd v Cooper (1924) 40 TLR 186 at 188:

"... it is necessary that labour , skill and capital should be expended sufficiently to impart to the product some quality or character which the raw material does not possess and which differentiates the product from the raw material."

The later case of Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 agreed with this reasoning:

"... the courts have looked to see whether the compilation of the unoriginal work called for work or skill or expense. If it did, it is entitled to be considered original and to be protected against those who wish to steal the fruits of the work or skill or expense by copying it ...."

In alluding to the fact that the raw material may itself be unoriginal, Lord Pearce is implicitly endorsing a `sweat of the brow' test for the subsistence of copyright. Using such a test, copyright protection has even been extended to a number of directories where the material involved was of a factual or routine nature, perhaps obtainable from the public domain, but which was put into a more readily usable form by the `author' of the directory (Laddie, Prescott and Vittoria 1995, pp 96-98).

On the other hand, the civil law tradition places far more emphasis on the intellectual act of creation. The standard of originality is thus correspondingly higher, requiring that the material reflects something of the author's personality and creativity or displays original (in the sense of novel) intellectual endeavour (`apport intellectuel'). This higher threshold of originality excludes many databases from eligibility for copyright protection. However, it is not completely accurate to portray the difficulties encountered in determining whether compilations, including databases, are an appropriate subject matter for copyright protection as merely being due to the different approaches which have evolved in different legal traditions. This was illustrated in Feist Publications Inc v Rural Telephone Service Co Inc 113 L Ed 2d 358 (1991) in which the US Supreme Court declined to offer the protection of copyright to a telephone directory and took the opportunity of reviewing and reaffirming the standard of originality required of compilations and derivative works in US Copyright law.

Copyright in the US is founded in the Constitutional protection offered to `writings' and section 101 of the US Copyright Act of 1976 defines compilation as:

"a work formed by the collection and assembling of pre-existing materials or of data that are selected, co-ordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship."

Old authority suggesting a standard of originality higher than a mere sweat of the brow test was quoted with approval in Feist:

"... it is only such as are original and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labour." (Trade Mark Cases 25 L Ed 550 at 552 (1879) per Miller J.)

However, the Court also reviewed later cases which had departed from this standard and had allowed copyright for factual compilations on the basis of `sweat of the brow' or `industrious collection', pointing out that such deviations from the basic principles had led to amendments to the law including the definition of compilation set out above. The theory, itself, was roundly condemned: `[w]ithout a doubt, the `sweat of the brow' doctrine flouted basic copyright principles'. Comment prior to Feist had criticised the growing emphasis on a higher threshold of originality (see Ginsburg 1990), particularly on the grounds that it was not suited to modern informational works made possible by new technologies and that copyright had always had to concern itself both with creativity and with commercial value.

"... modern copyright's emphasis on personality-manifesting characteristics fails to secure the commercial value of those kinds of endeavours, even though the demand for productions such as directories and databases is ever increasing."

The solution in Ginsburg's view was to recognise the diversity of copyrightable works, differentiate between works of `high' and `low' authorship and accord to each a level of protection which both corresponded with and balanced the particular interests involved.

Although the Court in Feist implicitly rejected any notion of a two-tier system (Ginsburg 1990), it was pointed out that the standard of originality required was not `stringent'. Although there was no need for innovation as such, there must be evidence of some creativity - `[t]he standard of originality is low, but it does exist'. Nonetheless, in the case itself, copyright protection was denied on the basis that the listings involved were `uncopyrightable' facts and neither had they been `selected, co-ordinated or arranged' in an original way - the selection and alphabetical arrangement lacked the creativity necessary to demonstrate originality. To gain copyright protection the author or creator of the compilation would need to clothe `facts with an original collocation of words'. In other words, the Court was clearly seeking some evidence of personal intellectual endeavour. Clearly, on this model of originality, it is the selection, co-ordination or arrangement which is vital if the resultant work is to attract copyright protection. A similar standard is apparent in Article 2(5) of the Berne Convention:

"Collections of literary or artistic works such as encyclopaedias and anthologies, which, by reason of the selection and arrangement of their contents, constitute intellectual creations shall be protected as such, without prejudice to the copyright in each of the works forming part of such collections."

The abandonment in the US of the `sweat of the brow' test suggests that, in reality the problem may be viewed, not as a conflict between civil and common law traditions, but as the UK (and jurisdictions such as New Zealand, which have followed closely the UK philosophy (Longdin 1997)) developing a standard at odds with other copyright regimes (see also Chalton 1997).

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The Response in Europe

The above discussion illustrates some of the problems the law has encountered in deciding whether compilations of works are entitled to copyright protection. The development of large electronic databases made possible by advancing computer technology has exacerbated some of these difficulties by creating both new markets and new products. Some electronic databases are comparable in concept to the conventional encyclopaedia or anthology. Although ease of storage of data may mean that more material can be included, there is still sufficient skill necessary in selecting and collating the information to enable most jurisdictions to extend copyright protection to the creator.

However, it is the very fact that a computer-based database, whether on-line or otherwise, has the capacity to store vast quantities of data that has led to the development of a different breed of databases whose value lies, not in the skill of the selector or arranger, but in the very fact that there has been no selection. In the Information Age, there is intrinsic value in a product which can be marketed on the basis of its comprehensive or even total coverage of a particular subject. But, as has been seen, it is precisely this type of product which, notwithstanding the investment and labour which has gone into its production, may fail to gain copyright protection or at best, may generate uncertainty as to whether copyright protection is available. Indeed, in the current market, it is considered just as desirable to copy databases that have been created merely by the input of time and effort as to copy databases that have been created by the input of a modicum of `originality'. Further, the very digital technology on which such databases are founded facilitates copying and multiple copies can easily be made in a fraction of the time and investment which was necessary to make the original. It is for such reasons that protection of the intellectual property rights in databases seems to have been categorised as a problem for information technology law, although the issue clearly raises wider problems for copyright law in general.

It was against this background that an EC directive on the legal protection of databases was proposed. The need for such legislation had first been identified in the Green Paper Copyright and the Challenge of Technology (COM (88) 172 final - chapter 6) but the first proposal was not published by the Commission until 1992 (OJ No. C 156/4 1992). Amendments and modifications by the Economic and Social Committee (OJ No. C 19/3 1993) and the European Parliament (OJ No. C 194/144 1993) during the consultation process led to a revised proposal being published in 1993 (OJ No. C308/1 1993). The common position adopted in July 1995 (OJ No. C 288/14 1995) was approved by the European Parliament in December 1995 and by the Council in February 1996. The Directive was finally adopted on 11 March 1996 (OJ No. L 77/20 1996) and is due for implementation into national law by 1 January 1998.

These proposals recognised both that information is a tradeable commodity and that effective information services are vital if the Community is to be able to compete in the worldwide information market. As indicated in the Preamble (para. 10):

"... the exponential growth, in the Community and world wide, in the amount of information generated and processed annually in all sectors of commerce and industry calls for investment in all the Member States in advanced information processing systems."

There was a clear need for harmonisation of the legal protection provided for databases because of the fact that, as we have seen, although the legislation of some Member States did protect collections and compilations, the extent to which it did this and the scope of protection offered varied considerably between Member States. Without the harmonisation, the investment referred to above would not take place and it would also be impossible to ensure the free movement of both information products and information services necessary to ensure a buoyant market. The importance to the market in information products of strong protection for intellectual property rights was also underlined by the fact that, prior to the Directive, the UK had the most substantial database industry and also provided the most extensive copyright protection. (Opinion of Economic and Social Committee OJ No C 19/3 para. 2.2 1993)

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1. The Database Directive

The final version of the Directive adopted on 11 March 1996 recognises the problems experienced in some jurisdictions in extending copyright protection to a growing number of databases. The approach taken has been to grant copyright protection to those which fulfil the originality test contained in the Directive. Databases which fulfil these requirements will be offered the full 70 years protection against copyright infringement (article 2) which was accorded by the Term Directive (Council Directive 93/98/EEC OJ No. L 290/9 1993). In recognition of the importance to the market of databases consisting of large compilations of factual material, databases which do not qualify for copyright protection may, nevertheless, be able to take advantage of a lesser sui generis protection. Such lesser protection will be available if it can be shown that creation of the database required a `substantial investment'. This particular model may have been influenced by the fact that, prior to the Directive, some States did give a form of non-copyright protection, the so-called `Nordic catalogue right' (Lea 1993) to such works as catalogues, tables and similar works in order to cater for the need to provide some form of protection to the authors of `sweat of the brow' products.

Although the majority of these databases are now likely to be in some sort of electronic format, the final form of the Directive, after extended debate and following an amendment introduced by the Parliament, also extends to non-electronic databases. This will, at least, avoid the anomaly whereby a non-electronic database might fail to qualify for copyright protection on the basis of lack of originality but would also fail to gain the sui generis protection offered to electronic databases by virtue of the Directive. Notwithstanding the ease of copying argument, there seems no logical reason in law why the protection of databases and other compilations should depend in part on the medium in which they are contained. This is also in line with the TRIPS agreement and on-going discussions in WIPO (Beutler, 1996 and see also the report of the WIPO information meeting on intellectual property in databases held on 17-19 September 1997, available at: <http://www.wipo.int/eng/meetings/infdat97/db_im_6.htm>.

a. Definition of Database

Article 1(2) of the Directive defines a database as:

"a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means."

It is made clear in the Preamble that this can include a wide variety of materials whether literary, artistic or musical and that such materials may consist of texts, sound, images, numbers, facts or data. The requirement of systematic and methodical storage does not necessarily refer to physical storage but the necessity for individual accessibility of records means that recordings on whatever medium (audio-visual, cinematographic etc.) are not within the scope of the Directive as such (Preamble para. 17). Electronic databases include devices such as CD-ROM (Preamble para. 22) but musical compilations on a CD will not be covered. As will be seen, the latter fact should be easily discernible by application of the tests for both the copyright and sui generis protection contained in the Directive, but has been made explicit in para. 19 of the Preamble for the avoidance of doubt.

In the case of an electronic database, article 1(3) makes it clear that the Directive does not cover the underlying computer programs. These remain protected by the Software Directive (Council Directive 91/250/EEC OJ No L 122/42 1991 as amended).

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b. Copyright in Databases

Falling within the definition is merely the first stage for application of the Directive, the work must still qualify for protection by meeting the test for either copyright protection or sui generis protection. The copyright test is contained in article 3(1) and is similar, in essence, to that of the Berne Convention.

"... databases which, by reason of the selection or arrangement of their contents, constitute the author's own intellectual creation shall be protected as such by copyright."

The main criteria are thus `selection' and `arrangement' but either will suffice. Large comprehensive databases are therefore likely to be excluded from protection unless the particular arrangement of material is capable, by dint of personal creativity, of satisfying the `own intellectual creation' test. `Arrangement' could refer to either the physical grouping of material (Cerina 1993) or to the way in which it is presented to the user (Ricketson 1987). Cerina points out that, given the external constrains on many creators of databases, arrangement of data in a creative rather than a mechanical way is a difficult goal to achieve and is likely to result in a very narrow copyright protection. For electronic databases, presentation to the user i.e. the external manifestation of the arrangements may be more appropriate as the user will have no direct access to the physical storage of the data. Indeed, the physical arrangement may not be a useful concept in such a product as it may be determined by technical needs and evidence of the arrangement of the material may be adduced from presentation features such as on-screen menus etc.

The standard required for copyright protection is higher than the `sweat of the brow' test and in some cases there will be room for debate as to whether a database qualifies for protection. In such cases it will be a matter for national tribunals, in the first instance at least, to determine the boundaries of `originality'. One of the most significant legal reasons why copyright protection for databases in different Member States was so much at variance was the divergence over the most appropriate definition of originality and, notwithstanding the warning of the Economic and Social Committee to the Council to `resist being side-tracked into a debate on the legal philosophies which underlie the Directive, particularly on the subject of 'originality'`, it is difficult at one level to see how this can be avoided. Any assessment of the likely effect of the Directive as it stands will need to consider the test for `copyrightability' and Member States will need to consider the issue in ascertaining how it can be implemented into their domestic legislation (see also Cerina 1993).

Copyright protection is extended, in the first instance, to the author of the database but any copyrights in the materials comprising the database are unaffected by the Directive. Once copyright is established, the author enjoys the panoply of rights which are a familiar aspect of most copyright regimes in relation to reproduction, translation, adaptation, distribution, etc. Member States may provide limitations to these rights where such exceptions are a traditional part of the domestic copyright regime and in any case, in certain circumstances, such as teaching and research, subject to that use being in proportion to the non-commercial use.

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c. The `Sui Generis' Right

For those databases which do not qualify for copyright protection on the above test, there may, nevertheless, be a right to prevent extraction and/or re-utilisation of the whole or of a substantial part of the contents of the database. This right is provided for in article 7(1) and will accrue to a maker of a database in cases where:

"... there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents ...."

The Directive does not define the meaning of investment, as such, but para. 40 of the Preamble suggests that it `may consist in the deployment of financial resources and/or the expending of time, effort and energy.' The extraction right proscribes the copying of the contents of a database, whereas the re-utilisation right is designed to prevent unauthorised distribution of copies of the whole or a substantial part of the database (article 7(2)). This right may apply irrespective of whether the database also enjoys copyright protection and irrespective of any copyright protection applicable to the contents themselves. Lawful users cannot be prevented from extracting or re-utilizing insubstantial parts of the contents of the database (article 8(1)) but repeated and systematic extraction of insubstantial parts (which could enable the database to be reassembled) is prohibited as unreasonably prejudicing the legitimate interests of the maker (article 7(5)).

As will have been noticed, it is the maker of the database rather than the author (where these differ) who may enjoy the sui generis right since it will be the maker who has been required to make the necessary investment in the product - para. 41 of the Preamble explains that it is the maker who `takes the initiative and the risk of investing'. However such makers, if natural persons, must be Member States nationals or be habitually resident in the Community or, if legal persons, must have their registered office or principal place of business there (article 11). As with copyright, Member States may make provision for exceptions to the right, for teaching or research purposes, for instance. The term of protection is fifteen years⁽¹⁾ (article 10(1)) and any substantial change to the database which can be equated with a substantial new investment causes a new sui generis right to be initiated (article 10(3)). The Directive also makes it clear that the qualification `substantial', wherever it appears, may be evaluated qualitatively or quantitatively.

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2. Commentary

a. General Issues

The pragmatic approach evident in the Directive couples the protection of copyright for databases which pass the `originality' test with a lesser, but still significant, protection against piracy for those which, although they might fail this test, nevertheless have required significant investment. This approach can be viewed in some ways as encapsulating the concept of `high' and `low' authorship referred to above (Ginsburg 1990). It is likely that databases which satisfy the criteria in article 2(1) would qualify for copyright protection in most jurisdictions. However, the converse is not necessarily the case and, in the UK in particular, it is inevitable that some databases which previously qualified for copyright protection will no longer do so (Copyright Directorate 1997). Those which fall short of this standard may still qualify for the sui generis protection subject to the requirement of substantial investment. Such protection should have the effect of encouraging investment and innovation in such products whose development is seen as vital if there is to be a vibrant market in information services in the Community.

The final form of the Directive seems to have been greeted with a cautious welcome by some (see e.g. Phillips 1996; Cornish 1996) but has not been without its detractors. The use of sui generis rights to protect intellectual property rights in technological products has been discussed on a number of occasions, based on the rationale that computer technology and traditional technologies are sufficiently different to warrant being treated differently by the law (see e.g. Rowland 1997, chapter 2 and references cited therein). With the exception of semiconductor topographies which, mirroring US legislative activity, were granted a sui generis design right in the EC, thus far such an approach has been consistently rejected. The subsequent adoption of a sui generis right for databases has, in consequence, not been without its critics. During the consultation process, the Economic and Social Committee (OJ No. C 19/3 1993) commented on the inadequacy of compromise solutions, expressing the view that once protection is deemed to be necessary, only a high standard of protection will suffice. It may be misguided though, to view the protection afforded by the sui generis right as second rate. A major threat to large databases is that of piracy and a fifteen-year term of protection against copying is, in most cases, likely to be sufficiently extensive to accommodate the shelf life of even the most enduring database. This should not be divorced from the fact that any further substantial investment, such as might be required by necessary revision and updating, will generate a further term of protection. It can thus be said that the two tier system, rather than providing a superior and an inferior protection, instead maintains the necessary balance between creativity and investment (Cornish 1996).

A more fundamental criticism of the protection offered by the Directive relates to whether the combination of copyright and an, as yet, unproven sui generis right is the correct model to use. Indeed, the sui generis right has been referred to as both appropriate and unnecessary (Garrigues 1997) on the grounds that it would have been possible to use the concept of `neighbouring rights' which would have removed the necessity for a two tier system. Taking this approach would both `avoid the controversy concerning originality in copyright' and also `take into account the commercial value and economic dimension of databases'.

Neighbouring rights have been developed in jurisdictions where the threshold for copyright protection is high. The Nordic catalogue right, referred to earlier, is technically an example of a neighbouring right. One particular use of such rights has been to provide protection against copying for sound recordings and similar works on the basis that those who have invested in the production need to be protected against misappropriation. These are similar factors to those which have led to the introduction of the sui generis right for databases. It may be that a neighbouring rights regime might provide similar protection to a sui generis right for databases of `low' authorship, but might not provide such a high standard of protection for those which would pass the `originality' test. If, as the market develops, it becomes evident that the bulk of the market is in databases which are essentially factual compilations, then it may be that a neighbouring rights regime would have proved equally appropriate.

Gaps in copyright may also be filled by other regimes such as trade secrets, rules on unfair competition etc. (Lea 1993) but the use of these regimes, where appropriate, is unaffected by the adoption of the Directive (article 13).

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b. Application to Multimedia Products

One aspect of the scope and application of the Directive which remains unclear is the protection afforded to multimedia products, another burgeoning market whose potential size and significance has increased during the gestation period of the Directive. The very phrase `multimedia product' is one for which a definition has proved elusive and seems to be used in a variety of ways. This may, of course, merely reflect the fact that the use of the word `multimedia' immediately makes the product more saleable. One suggested definition (Beutler 1996, at p 318) is:

"a product combining text, (still or moving) pictures and/or sound in a digitised form made accessible to its user in an interactive way with the help of one or more computer programs."

On the one hand, the selection process may be more crucial in such products, but, on the other hand, the concept of arrangement may be more difficult to relate to the notion of personal creativity as it may be determined by the computer program and, in any case, is likely to be governed by technical considerations. In addition, as mentioned, one of the salient features of such products is that the user may also influence or exert control over the display of information.⁽²⁾

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3. Implementation in the UK

As already made clear, the threshold for copyright protection for databases as presented in the Directive is higher than that customarily available for collections and compilations in the UK where a `sweat of the brow' test will suffice. Thus, although only affecting certain works, some fundamental changes may be inevitable if the Directive is to be correctly transposed into domestic law. The UK proposes to implement the Directive by means of the Copyright and Rights in Databases Regulations 1997,⁽³⁾ made under the European Communities Act 1972 and amending the Copyright, Designs and Patents Act 1988 (`the 1988 Act'). In common with the implementation of many other directives, the Government's proposals take the existing regime as a starting point, in this case the framework provided by the 1988 Act, together with the expressed `desire to disturb the status quo as little as possible' (Copyright Directorate 1997). The intention is also that the `existing balance of rights and exceptions under the Act will remain unaltered.'

a. Copyright in Databases

The Regulations insert `database' as a new category of literary work⁽⁴⁾ in the Copyright, Designs and Patents Act 1988, s 3(1) whilst making it clear that databases are no longer included within the scope of table or compilation in s 3(1)(a) (regulation 5). A proposed new s 3A (regulation 6) then defines database in a manner which adheres closely to the text of the Directive:

"3A (1) ... `database' means a collection of independent, works, data or other materials which:: (a) are arranged in a systematic or methodical way, and
(b) are individually accessible by electronic or other means
(2) ... a literary work consisting of a database is original if, and only if, by reason of the selection or arrangement of the contents of the database the database constitutes the author's own intellectual creation."

Taken together, these are significant changes for the law of copyright in the UK. By virtue of s 3A(2) the concept of personal creativity has been enshrined in a statutory definition of originality, albeit only applying to databases. The decision to include this test in the wording of the Directive is an interesting one given that article 1(3) of the Software Directive embodied the same form of wording for the test of originality in a computer program but this was not considered to create any difficulties for the law in the UK (see e.g. Downing 1995 para. 4.16) and the 1988 Act was not amended at that time.⁽⁵⁾ Given the debate surrounding copyright protection for databases, it can fairly be assumed that the explicit inclusion of the test is intended to herald a departure from the `sweat of the brow' test, even if only in a limited area. On the other hand, the exclusion of databases from the category of `table or compilation' suggests that such works remain unaffected by the new law and, presumably, will still be subject to the previous lower threshold for copyright protection. It is a moot point whether this double standard for what are, in many relevant respects, essentially similar works is intellectually or practically satisfactory (see also Chalton 1997).

The limits of lawful use are delineated by the proposed regulation 7, which inserts the definition of adaptation as it relates to databases into s 21 of the Act, and the proposed regulation 9 which inserts a new s 50D defining the acts permitted to lawful users. This latter is couched in very general terms, following the wording of the Directive itself, as being `anything which is necessary for the purpose of his right to use the database'. The rights of lawful users of databases immediately follow those of the lawful users of computer programs contained in ss 50A - 50C which were introduced into the Act by the implementation of the Software Directive. This juxtaposition implicitly demonstrates that these provisions are intended to cater for technological advances and technological products, notwithstanding the fact that the Directive and Regulations cover both electronic and non-electronic databases. Again, following the pattern established for computer programs a new s 296B is proposed detailing those terms which cannot be excluded by contract.

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b. The Database Right

Part III of the Regulations gives effect to the sui generis right contained in the Directive and referred to in the Regulations as the database right. The definitions of the key concepts such as maker, extraction, re-utilisation etc. (regulations 12 and 14), adhere closely to the meaning to be found in the Directive itself or in the Preamble. `Investment' is said to include `any investment, whether of financial, human or technical resources.' Similarly, the constituent elements of the right, found in regulations 14 - 21, follow closely the wording of the Directive. Regulation 20 provides an exception of fair dealing for the purposes of teaching or research other than for a commercial purpose and subject to attribution. Other exceptions referred to as those for the purposes of `public administration' and allowed for in article 9(c) of the Directive are contained in Schedule 1 which refers to Parliamentary and judicial proceedings, statutory inquiries, official registers etc. as well as material communicated to the Crown in the course of public business. A lengthy Schedule 2 details the arrangements for licensing of database right.

The Directive makes no recommendation with respect to remedies other than to say that they should be appropriate (article 12). The Regulations make it clear (regulation 22) that those who enjoy the new database right can rely on certain sections of the 1988 Act as they would be able to do in the case of copyright, notably those sections dealing with rights in copyright works (ss 90 - 93), those providing rights and remedies (ss 96 -98) and those relating to the rights and remedies of the exclusive licensee (ss 101 -102). The Copyright Tribunal is also given jurisdiction to determine proceedings arising out of the licensing arrangements in Schedule 2.

The fact that the database right is sui generis is emphasised by not incorporating these provisions into the 1988 Act. To do so would not have been entirely logical given the title and contents of that statute. Nevertheless, rather than concentrate on a minimalist approach, implementation of the Directive might have been used to precipitate a revision of the relevant legislation which would have enabled this right to have been incorporated in the primary legislation and provide one comprehensive statute.

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Conclusion

The importance of the database market and the need to provide and encourage a strong database industry in Europe made harmonisation of the intellectual property rights in such products a practical necessity. The two tier scheme of protection provided by the Directive and about to be implemented into domestic legislation appears to be capable of protecting commercial and creative interests in most databases. Having grasped the nettle of the provision of sui generis rights as a device to promote and protect investment, there seems to be no reason in principle why the same approach should not be used for other technological products. Whilst a plethora of individually tailored rights would clearly not be desirable, there are some examples, such as computer programs where a sui generis right could improve the present situation. Certainly a sui generis right for computer programs, whether in addition to the current copyright or otherwise, should be capable of protecting investment in programs such as that at issue in the American case of Apple Computer Inc v Microsoft Corp, 35 F 3d 1435 (9th Cir 1994), where application of the `abstraction, filtration and comparison test'⁽⁶⁾ is likely to result in little or no residual core of protectable expression. It is possible that such programs might continue to be afforded copyright protection in the UK on the basis of `sweat of the brow' depending on the way in which they were devised, but it is questionable whether such a test complies with the test for originality in the Software Directive.

The extent to which the law might evolve in this direction and the manner in which any residual anomalies consequent on implementation, such as the divergence between the protection afforded to databases and other compilations is resolved, remains to be seen. The way in which investment and innovation in new technological products is fostered and protected on the future will depend, in large measure, on whether the objectives behind this Directive are achieved as the required changes take effect.

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Bibliography

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Footnotes

1. Extended from 10 years in the original proposal as a result of amendments introduced by the European Parliament. Back to text.

2. For further debate on the relevance of the concepts in the Database Directive to multimedia products see e.g. Beutler 1996; Loewenheim 1996. Back to text.

3. This article is based on the text of the draft Regulations. At the time of writing, the Regulations had been laid before Parliament (6 November 1997) and were due to be published on 17 November 1997. The final form of the Regulations, although subject to some changes in drafting, is, apparently, unchanged in substance. Full text of all Statutory Instruments is available on the HMSO Web pages at <http://www.hmso.gov.uk/stat.htm>. Back to text.

4. It is beyond the scope of this article to speculate on the nature of the multiplying categories of `literary work' described by Longdin as `the folly of endlessly pouring new definitions into the old `literary work' bottle without analysing either the resulting brew or the strength of the container' (Longdin 1997). Back to text.

5. The Copyright (Computer Programs) Regulations 1992 S.I. No. 3283 makes no mention of the standard of originality expected. Back to text.

6. The test used in the US case of Computer Associates v Altai 982 F 2d 693 (2nd Cir 1992) see e.g. Rowland 1997, Chap. 2. Back to text.