|
CENDI PRINCIPALS AND ALTERNATES MEETING |
DEPARTMENT OF ENERGY
Forrestal Building, Washington, DC
February 6, 1997
Mr. Pedtke opened the meeting at 9:00 am. Mr. Fornwall introduced Dr. Walter Warnick, the new Director of OSTI, effective January 6, 1997, and the CENDI Principal. Dr. Warnick's background is primarily in Energy Research, with a broad background in the other areas of DOE.
Update on WIPO Treaty Negotiations and Database Protection: Multiple Perspectives
Ms. Carroll introduced the morning technical panel discussion and participants noting that they represent a broad range of viewpoints on the recently held WIPO (World Intellectual Property Organization) Conference in Geneva, as well as on the issues related to the proposed database protection treaty. The latter has raised considerable discussion recently in the U.S. science and information communities.
Michael Keplinger, U.S. Patent and Trademark Office
The U.S. Patent and Trademark Office has been taking the lead in the WIPO discussions and negotiations in Geneva on December 5 + 20, 1996. Mr. Keplinger was a member of the delegation at that meeting and a chief U.S. negotiator in Geneva.
The WIPO discussions included three treaties: 1) the Update to the International Copyright Treaty which governs and sets guidelines for national copyright laws; 2) the treaty on Performers and Producers of Phonograms (Sound Recordings); and 3) the sui generis protection of databases.
Mr. Keplinger described the history of WIPO intellectual property negotiations. WIPO is the secretariat for various international treaties including the Paris Convention which deals with patents and trademarks, the Bern Convention for copyright, and the Geneva and Rome conventions for phonograms and films. The intellectual property treaties are separated this way because the European history of copyright is linked to the rights of "personality," personal integrity, and creativity. The Anglo-American tradition emphasizes economic property interests of the creator and grew out of regulation of printers. In the Anglo-American tradition, it is easy for copyright law to absorb different kinds of material, including producers and performers of multimedia material. This is not so in the non-common law countries of Europe. In part, to accommodate this difference, the database treaty has had a separate legal path.
The history of database property is connected loosely to the TRIPS Agreement (part of GATT) which deals with collections of data and computer programs, including databases. This agreement improved the border controls and strengthened the court's involvement in these kinds of cases. Simultaneous to the TRIPS Agreement, WIPO was reviewing the database protection issue.
However, the traditional way that WIPO treaties are developed was changed over the course of the database protection discussions. WIPO wanted to improve the procedures to get more immediate results. The traditional procedure was to conduct a seminar on the topic. The secretariat would produce one or more white papers, and the national governments and other stakeholders would discuss the white papers. Following the discussion, WIPO would do a new draft for review. This often resulted in treaties which the countries could not implement easily in the framework of national legislation. WIPO countries decided that countries should be involved earlier in the input phase of the negotiations to avoid this problem.
At the same time, the EC (European Commission) took a lead in the copyright and neighboring rights discussions. The EC was trying to harmonize across countries from the Anglo-American tradition, such as the UK, with those following the personal creativity approach, like France. This resulted in an EC Directive which included database copyright protection and sui generis database protection. The EC Directive that was passed must be reflected in national legislation of the member states by the end of 1997.
A key component of the EC Directive is the concept of reciprocity. The protection of databases is available only to a database from a country where similar protection is afforded to a European database. This is a concern for the U.S. database producers, because if there is no similar legislation in the U.S., the databases of U.S. producers would not be protected in Europe. Therefore, the U.S. database protection legislation was introduced last May. However, it was noted that no EC country has yet passed the legislation to enact the sui generis database protection at the national level.
In November 1995, a meeting of experts proposed the three treaties noted before to WIPO. The negotiations between the U.S. and Europe were very contentious on a number of intellectual property issues, particularly on the protection of performers (Treaty #2 for Geneva discussion). The U.S. was looking to cooperate with Europe. Therefore, the U.S. put on the table a proposal for database protection similar to that of the EC . The proposal focused on providing for protection based on the investment of money or human resources.
Mr. Keplinger noted that the "sweat of the brow" test was the basis for Anglo-American copyright since early in this century. This was thrown out in the Feist Case where selection and arrangement (i.e., creativity) was the criteria, and the white pages were determined not to be copyrightable, because they showed no spark of originality either in selection (all numbers were included) or in arrangement (it is a purely alphabetical arrangement). The Feist Case indicated that the "sweat of the brow" approach, which, as indicated, had been the test since early in the century, was not supported by constitutional law.
The Morehead Bill resulted from concerns among the U.S. database producers after Feist. As the basis for the WIPO proposal, it attempts to restore the protection afforded before Feist. It is to help protect economic investment. A fair use component was included. It also did not prevent users from going back to the source and recreating the same result, as might be the case for much government information put in databases. This bill created a great deal of controversy in the U.S. There was an attempt to blend the U.S. and European versions before the WIPO negotiations but diversity in U.S. opinion prevented the U.S. from going forward at the meeting. In addition, many developing countries didn't understand the proposal and/or were against it as not in their best interest.
When the WIPO meeting began, the U.S. hoped that the treaties on copyright and phonograms would be discussed, but not the database protection treaty. As it turned out, more than two-thirds of the time was taken up with diplomatic wrangling and protocol. The two new treaties that confirmed copyright of computer programs as literary works under copyright; that producers can restrict reproduction, including electronic copies; and that Bern can have exceptions tested by language very close to U.S. fair use provision, were approved. Mr. Keplinger feels that the negotiations were successful in achieving balance.
The database treaty was not discussed for lack of time. The decision was to take it up at a later time (the first quarter of 1997). An extraordinary session will be convened on March 20+21, 1997 to discuss the future course of work on the database treaty.
Mr. Keplinger believes that there will be an expert committee convened between July and September. There will be a call for a diplomatic conference in the near future. There will be a report to the meeting of the governing bodies at the end of September where the U.S. will agree to discuss the treaty but will indicate that the discussions are too premature for a diplomatic conference to be called.
Discussion
Mr. Molholm questioned the role of the involvement of DG-XIII, which is driven by commercial information industry interests. Mr. Keplinger responded that although DG-XIII has responsibility for copyright within the EC, it becomes a political and diplomatic process. Proposals must be approved by the representatives of the member states before the proposal is passed to any other directorate or external organization.
Back to topThere is consensus that the first two treaties worked out well and that the negotiating team in Geneva scored a success. With regard to the Database Protection Treaty, Mr. Weiss suggested that some additional ideas on the treaty as a whole might be useful.
He noted that proponents of the treaty make two arguments for its passage. The first is that, after Feist, there is a need to return to the protection afforded before the Feist decision. However, in the Feist decision, the Supreme Count said that there never really was protection before Feist, according to constitutional law. To clarify, he noted the white pages are purely factual and compiled automatically. The yellow pages, on the other hand, would be copyrightable because there are descriptions, pictures, and added value in its organization. The concept is that value-added works are copyrightable under the "low test of Feist". Weiss suggests that the burden of creativity is at a very low level, even following Feist. He also argues that there is a very small universe of databases that are unprotected. In fact, he has sought out examples from industry representatives who feel they need this additional protection, but has not gotten any specific cases where lack of protection has caused a problem.
He then argued that, even assuming there are some things that are not protected, the question then is whether they need protection or whether there has been any recognizable economic harm or market failure caused by lack of protection of these kinds of databases. The database industry appears to be extremely robust in the U.S. and is becoming global in ownership. It is doubtful that there has been any economic harm that can be proven. The closest survey is one conducted by an Australian economist that concluded that copyright extensions are not needed to ensure creativity.
Mr. Weiss also argues that there are other methods available for protection of the few databases that remain unprotected. He noted that there is not full consensus even within the Information Industry Association (IIA) on this issue. Dun & Bradstreet has broken publicly with IIA on this issue, believing that technological safeguards, contracts, and copyrights are enough.
The second main argument from proponents of database protection is that the Europeans have done it and so the U.S. must do it too. We should not just accede to the Europeans. A basic premise in U.S. information policy is against government copyright. We should not give up our basic principles. The U.S. has been pushing back on some meteorological related property issues and this has worked successfully. On other issues such as privacy, the industry has worked with the government and pushed back on European demands that are inconsistent with our philosophy.
Of interest to the CENDI agencies is the impact of the treaty on non-copyrighted government information. Redistributors could assert protection of government information within their own databases. In some cases it is beneficial for government agencies to use commercial distribution mechanisms. However, vigilance is required on the part of the government agency to ensure that there is no attempt on the part of the distributor to copyright (protection) the government material it redistributes. Similarly, the government hires contractors to do database creation and distribution. It is important to include language in the contracts that indicates that the contractor is not allowed by contract to exert copyright (protection) on the database, records or data produced under this contract.
There are several questions to be considered when determining the administrative position:
1. What is the economic threshold?
2. What is the likelihood of market failure?
3. What protections are needed and for how long?
4. What remedies are there - what are the interplays with contract law?
5. What exceptions or limitations are needed to support various communities that need the free flow of information; how are adequate incentives for innovation to be provided? What is needed for the free flow of government information?
The A-19 legislative vetting process will be conducted. Mr. Weiss will attempt to give CENDI as much review time as possible. The CENDI members should also contact their legislative departments and give them a "heads up" about the fact that this will be coming out for comment. Mr. Weiss will inform Mr. Pedtke when the vetting process will begin.
Mr. Weiss provided a URL to several articles that contrast the European and U.S. policies (See http://www.ksg.harvard.edu/iip/weiss.html). These papers will be published later in the monograph Borders in Cyberspace.
Discussion
The group discussed the process by which CENDI might respond to the WIPO formal vetting process. Members must be sensitive to the agencies' formal procedures for responding. OMB (Weiss ) would welcome technical discussion and input at any time. There was general discussion about the procedures that might be followed and how CENDI could contribute to the dialog. This will be put on the agenda for the next meeting.
ACTION ITEM: Secretariat will ensure that the WIPO vetting procedures are added to the agenda for the next meeting.
Back to topLou Brown - National Science Foundation
Dr. Brown was a member of the group that accompanied the negotiating team to the WIPO meeting. He indicated that the U.S. negotiating team did an outstanding job on Treaties 1 and 2. On the first treaty, copyright was extended to the electronic environment. There is one area that is not addressed: temporary and ephemeral data on the Net. If data flows through but is deleted, is it a copy? This will remain a sticky issue over the next few years. Dr. Brown suggested that the CENDI members review the older versions of the treaties against the new wording. Treaty 1 extends copyright into a digital environment. The reference to the need for balance between fair use and protection was added to the preamble. The new article 10 and the explanatory statements are particularly important. It is absolutely essential to keep the free and open flow of information for basic research. A similar battle was fought over access to meteorological data. The concept of fair use was supported in principal and concept. Some possibility of limitations exists for some data sets not of value for science, education, or library use.
There are some key differences in the views of Europe and the U.S.,the role of the government and the degree to which its role is privatized. For Europeans, many of whom are from quasi-government organizations, there is an increased need to recover operating costs from the sale of products, services, and data.
Dr. Brown's personal interpretation of the status of Treaty 3 (Database Protection) can be understood in the context of the opening session of the Geneva meeting. While there was no formal discussion on the agenda, there was an opportunity for each country to make an opening session statement. There was general consensus among the developing countries that any diplomatic discussion of the database protection treaty would be premature. Some European countries indicated that they supported all three treaties and some indicated only Treaties 1 and 2 and stayed mute on Treaty 3. The U.S. took the latter approach in its formal statement. Scientific and library communities were active and effective in their effort to communicate their concerns among the participants. Dr. Brown noted that European educational, library, and scientific interests were generally uninvolved prior to this time. They were energized late in the process.
As a follow-up to the WIPO meeting, Dr. Brown received a formal request to join in the special session to be held in March and which was called for in Geneva. It is WIPO's intention to ask countries to review and comment on the text by the end of May and forward the comments to the group of experts in September. It will be important to have the U.S. take a strong position at the May meeting, and to recommend how WIPO should proceed in the process, not the detail.
The scientific community does not see the need for a database treaty. No strong industry case has been made. The organizations approached by the NSF have not been able to provide examples of needs not being satisfied by the current level of database protection. There are some anecdotes but not quantitative evidence.
At the bottom line, if an additional level of protection is needed, it should be better defined. Perhaps requirements could be met by mechanisms less formal than a treaty. NSF's concerns are about the precedent of substantial investment. Is a data point or scientific result obtained through a substantial investment to be included? The question of whether a data point reflects creativity could also be raised. There is the issue of whether one can distinguish between the database and the data itself. The treaty was for the database but these are difficult distinctions. This issue is further complicated when looking at image data.
Back to topPrue Adler - Association of Research Libraries
ARL's library and education constituencies opposed the WIPO treaty on a process point,the lack of vetting. Also, it should be noted that the proposal that the U.S. presented was in fact more restrictive than the EC Directive. While it appears that there will be additional time for discussion, a House Judiciary Member will reintroduce the Morehead Bill into the House during this session. ARL will oppose the bill (even with the exceptions that were added for fair use) on the basis that there is no need for protection in the first place. If the database industry were to demonstrate the need for additional protection, ARL and its constituencies would work with the database industry to resolve the issues.
Ms. Adler believes that the copyright act has helped to stimulate research but that this treaty will do the opposite. ARL does not believe that fair use is truly included in the treaty. Proponents are on the record as being opposed to exemptions for the library and education community. Ms. Adler does not believe that exceptions would cause a loss of market share. It appears that the proponents are moving toward a "pay-per-view" model. It should also be noted that there will be adverse impacts on budgets. There will be significant new costs of access for the research community and for government agencies.
The ARL has five major concerns about the Treaty:
1) Problems in the definitions within the Treaty. Terms such as "substantial"and "insubstantial" are not well defined. "Database" is broadly defined. There is concern among the Internet and computer communities that databases such as those that support the domain name system, Internet routing tables, and WWW sites could be classified as databases under the broad definition. In some cases, the whole database is needed in order to be useful.
2) The terms of the Treaty end up being perpetual since the term of coverage restarts each time changes (updates) are made to the database.
3) The previous non-copyright status of the federal government might extend to state and local governments. However, there is concern that contractors could lock out the public from government information unless the government agency is vigilant in its contract wording.
4) There is the basic issue of why this protection is needed in the first place.
5) The U.S. should not be driven by concerns for the European Directive which has not been implemented by countries yet, in any case.
The Database Protection Treaty and the Morehead Bill appear to be an attempt to "end run" the copyright legislation. On the whole, the concern is that less information would move from the private sector to the public domain.
Ms. Adler presented an analysis of the comments submitted on the Treaty. There are only six organizations that came out in support of the treaty. The majority of the proponents are legal publishers. Negative responses were received from a wide variety of organizations, including educational, scientific, publishers, computer companies, and telecommunications companies. When analyzing the negative responses, it should be noted that many of the educational organizations are concerned about the negative impact on distance learning. There is a potential issue among some of the computer companies because interfaces may be considered protectable.
Back to topPaul Uhlir, National Research Council (NRC)
The National Research Council and the U.S. National Committee for CODATA will release the Bits of Power study on March 20, 1997. The NRC expedited the review of the legal chapter of the Bits of Power report to support the debate on database protection. It was released on November 21, 1996, and a symposium was held on the copyright and database treaties. The full report will be issued with a public briefing in March. Proceedings will be issued from the November Symposium, but this will take a while, since there were no funds immediately available to support the publication. These proceedings should be an excellent resource document.
There was a strong view to slowing the database protection treaty process down. The Presidents of the Academies sent a letter to Micky Kantor, summarizing many of the opinions expressed today and emphasizing the fact that the treaty language had not been properly vetted and, thus, might result in unforeseen consequences. This letter succeeded in helping to slow down the process. The NRC corresponded with other academies world-wide who have also shown support for a slower process. One exception was the UK Royal Society who has no concern over this issue.
Discussion
David Lide of CODATA announced that the Computer Science and Telecommunications Board and the U.S. National Committee for CODATA will soon begin a study to look at intellectual property rights in the networked infrastructure. This study was originally intended to focus on copyright, but its scope has been extended to database protection. The initial funding is from the Federal Networking Council, but additional support is being sought from science agencies.
A series of workshops are planned over the course of the year-long study. These workshops will give opportunities for discussion on the various aspects of the issue and help to inform both domestic and international decisions makers. The issue of the technological infrastructure in which these laws will need to exist is important, along with conveying an appreciation for the digital environment, which is not as well understood internationally. It was also noted that how technology can be used to protect the right holder needs to be thoroughly investigated. These issues have stimulated ICSU to take notice of scientific information issues.
Back to topThe speakers participated in a lively and informative panel discussion. Keplinger indicated that he felt there was a lot of misunderstanding about the proposals and about the relationship between treaty (guidance) and law (floor level of protection). The CENDI members voiced concern that the definition of "database" is too broad. It was noted that even in the definition of the term "database" and other terms in the Morehead Bill, references are made to the definitions of terms in the copyright legislation. It was also noted that precedents do not exist for limitations and exceptions. There is no way to know if the national database protection legislation, when it is enacted, will draw on the exceptions in the copyright law or create new ones.
It was noted that whatever results, it must be somewhat general because laws vary as do legislative and judicial systems. The speakers all indicated that the ball is now in the hands of the Congress and WIPO's internal process. Further preparatory work assumes that there is a draft proposal on the table, when, in fact, the WIPO special session in March may recommend a change of language or a whole new treaty.
Dr. Brown indicated that he would like to see the database treaty and other intellectual property issues discussed separately, and not have the database protection issue or any other issue used as a leverage point with the Europeans for other treaties. It was also noted that other countries, such as some in Africa, have interests in protecting folklore and are trying to use leverage here. He questioned whether or not the U.S. couldn't come to grips with the European database protection directive through domestic legislation, rather than through a treaty, or couldn't codes of ethics be developed that don't require government intervention. The NSF would like to take the minimal approach and work scientist to scientist. They feel you go up through hierarchies of institution to institution, agency to agency, U.S. to bilateral and only higher as absolutely necessary.
In general, it was agreed that we must move carefully as we consider the application of intellectual property environment to digital work.
The final point of discussion was how to follow and input to the process from here on out. A CENDI one-page white paper might be useful to lay out impacts on member STI programs. We also need a process to stay aware of progress on the database protection activities.
Action Items: 1) Secretariat to consider a one-page white paper on considerations for database protection for agency STI programs.
2) Secretariat will define a process to keep CENDI agencies updated on the Database Protection development activities.