A Case Study on the Copyright Protection of Databases

- Dutch, EC and Chinese Perspectives

 

Jerry Feng Xia

 

The Center for Intellectual Property Law (CIER)

Utrecht University, the Netherlands

2002.1 – 2002.5

 

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[Facts]

 

1. CITYINFO BV. exploits an electronic database that contains all sorts of information with respect to administrative regulation of local municipalities in the province of Utrecht (housing provision, building codes, tax assessments, costs of public transport tickets, etc.) CITYINFO BV. holds this information online available in its database but against a certain payment per use for all who want to make use of it.
2. ABC Data BV. sells paper-made city guides containing information that has been taken from CITYINFO’s database on the conditions for online use set forth by CITYINFO and that has been selected by using the high performance software installed in the database.
3. CITYINFO BV., sues ABC Data BV. arguing that

a.      by selling the city guides ABC is infringing CITYINFO’s copyright in the database and its right to the information it contains;

b.      ABC is infringing CITYINFO’s copyright in the high performance software.

 

[Analyses]

 

I. Dutch& EC Law Perspectives

 

a.                   Database Copyright Protection

 

In the Netherlands the EC Directive on the Legal Protection of Databases[1] was transposed on 8 July 1999. The Dutch legislature has elected to implement the Directive in two different legal instruments, the existing Copyright Act[2] and a new Database Act[3] that introduces the database right. Like several other EU Member States, publications by the public authority are not protected by copyright in the Netherlands. Article 11 of the Dutch Copyright Act clearly excludes copyright in laws, decrees or ordinances issued by public authorities, or in judicial or administrative decisions.[4] A database collecting such government publications, however, may or may not enjoy protection, which first depends on who the producer of the database is. The Netherlands has explicitly excluded in its new Database Act such government-made databases from protection.[5] Of course such exclusion does not apply if a private company compiles a database with information obtained from the government. Nevertheless, this is primarily referring to the sui generis protection introduced by the EC Database Directive. If the claimant is seeking copyright protection, understandably the database has also to be a creative expression against the requirements of the Dutch copyright law and the EC Database Directive.

In this case, CITYINFO sues ABC for infringing its copyright in a database of administrative regulations which according to Article 11 of the Dutch Copyright Act are not copyrightable. Article 11 does not prevent a collection of such regulations from enjoying protection as a copyright work, if it is the result of a selection manifesting the author's personal vision.[6] Thus the key is determining whether CITYINFO’s database by the selection or arrangement of its contents constitutes an intellectual creation and is thus copyright protected.[7] The case, however, does not give enough information regarding the originality of the database in question. Judging from a fact that the selection of data therein is conducted by using the high performance software that is combined into the database, the writer would personally assume that the database is a creative expression which is supposed to be involving personal characters. But the facts do not include sufficient clues to allow us to analyze the infringing acts of ABC. Generally, infringement would be held under the Dutch law and EC law if in respect of the expression of the database ABC had reproduced and distributed to public the database in whole or in part.[8] At this point, the writer would argue that by using the high performance software installed in the database ABC had supposedly used the data in its city guides in the identical or similar form of selection or arrangement as manifested CITYINFO’s database.  Therefore, CITYINFO’s claim on database copyright should be upheld.

CITYINFO’s claim for its right to the information that its database contains, however, will obviously be rejected under the Dutch law and EC law. The EC Database Directive and the Dutch Database Act both clearly provide for that the legal protection on databases, either in copyright or in sui generis rights, [shall not extend to their contents and shall be without prejudice to any rights subsisting in those contents themselves.][9] Dutch Copyright Act also has a provision stating that [...collections of different works shall be protected without prejudice to the copyright in the original work.][10] In this case, whether or not the administrative regulations collected in the database are exempted from copyright (pursuant to article 11 of the Dutch Copyright Act), is irrelevant for the application of the above rules.

 

b.      Software Copyright Protection                

 

With regard to CITYINFO’s claim on its copyright in the high performance software that is installed in the database, very clearly the Dutch law and EC law leave no room for copyright protection on such computer programs that operate databases. Article 1(3) of the EC Database Directive explicitly states that [protection under this Directive shall not apply to computer programs used in the making or operation of databases accessible by electronic means.][11] Similarly, the Dutch Database Act has implemented it as: [The relevant provisions of the Copyright Act 1912 shall not apply to computer programs used for the production or operation of databases accessible by electronic means.][12]

 

II. A Chinese Law Perspective

 

a.       Database Copyright Protection

 

Like many other developing countries China so far has no specific legislation as regards the legal protection of databases. Thus to determine whether there is copyright infringement on a database, we have first to look at whether the database in question is copyrightable under the Chinese Copyright Law which however does not contain any clear stipulations with respect to databases.[13] Under circumstances “a compilation work” as referred to in the Chinese Copyright Law Article 14 can be considered as a type of database falling within the framework of the discussion: [the copyright in a work created by compilation shall be enjoyed by the compiler, ...].[14] The copyright law implementing regulations further explain that ['compilation" means the creation of a work by assembling a number of selected preexisting works, in whole or in part, according to an arrangement designed for a specific purpose.][15] As we can understand from the context of these rules, a copyrightable “database” as regulated in Chinese copyright law, i.e., a compilation work, first shall be one that is created by selecting or arranging preexisting works which are already copyrighted; secondly, it must also meet the originality requirement in the selection or arrangement of its contents in order to qualify copyright protection.

Leaving aside the originality matter of the database that CITYINFO created, we may still need to look at its claims from two different perspectives under Chinese copyright law. Let’s first assume that both CITYINFO and ABC Data are Chinese companies and the case is brought to a Chinese court. In reviewing the case facts, we noticed that the stored data in CITYINFO’s database are administrative regulations of some local municipalities. Such information however is not copyrightable in China because Chinese Copyright Law Article 5(1) explicitly excludes government publication from the scope of protection.[16] As a consequence, according to the traditional copyright principle that China still follows in this regard such a gathering of non-protectable elements, be it in a paper version or in a computerized version, cannot in itself constitute a compilation work under Article 14 of Chinese Copyright Law and generate copyright in the database. Thus taking it as a pure Chinese domestic case ABC’s act basically would not be regarded as copyright infringement by Chinese courts.

Otherwise, if we look at CITYINFO as a foreign company in this case, interestingly (and cynically as well) the result might be quite on the contrary since China copyright law provides “supra-national treatment” to foreign compilation works. The Article 8 of Chinese Provisions on the Implementation of the International Copyright Treaties regulates that [foreign works created by compiling non-protected materials shall be protected in accordance with the provisions of Article 14 of the Copyright Law, provided that originality is shown in the selection and arrangement of such materials.][17] In line with this article, CITYINFO’s database as a foreign compilation work which although is composed of non-protected data could be protected under Chinese copyright law provided that it is original in its structure. However, the article also provides for in its second sentence that [such protection, however, shall not preclude others from using the same materials to create works of compilation.][18] Therefore, if in this case ABC could demonstrate that by making use of the information extracted from CITYINFO’s database it created its own work of compilation that was used in its city guides, no infringement on CITYINFO’s copyright would then be found.

With regard to CITYINFO’s claim for its rights to the information contained in the database, obviously it cannot be upheld by Chinese courts in either of above two hypotheses. Chinese Copyright Law Article 14 has stated that the exercise of such copyright in a complication work (if can be also considered as a database) [shall not prejudice the copyright in the pre-existing works included in the compilation] and [the authors of such works included in a compilation as can be exploited separately shall be entitled to exercise their copyright in their works independently.][19] Understandably, CITYINFO in this case is not entitled to claim any lawful rights to those administrative regulations only by compiling them in some manageable form, no matter whether these regulations can be copyrighted or not. Besides, most international copyright treaties to which China has acceded, including the Berne Convention[20], the WIPO Copyright Treaty[21] and the TRIPS Agreement[22], all contain a clear provision that such protection of compilations of data other materials, i.e., databases, shall not extend to the data or material itself. Such international treaties are considered applicable if the matters for which Chinese law does not have any provisions.[23] Thus in most, if not all, instances, CITYINFO’s claim as such will not be upheld by Chinese courts.

As a matter of fact, Chinese case law reveals that indeed there are few precedents in which rulings in favor of a copyright claim of database have ever been made by Chinese courts.[24] This is always due to the proven difficulty of a database in meeting the originality requirements of copyright law. In practice, a database creator or owner may expect more effective protection for his database under Chinese unfair competition law since thereunder what a plaintiff has to prove is the labor and investment he has made in creating his database instead of the originality of his database.

 

b.      Software Copyright Protection

 

China has accorded computer software with copyright protection since 1991 by promulgating its Regulations for the Protection of Computer Software.[25] These regulations, however, do not prescribe a special situation dealing with computer software that operates databases. Despite any controversial database rights involved, the high performance software that is installed in CITYINFO’s database can in some sense be regarded as a mere computer program under Chinese software regulations. It would then enjoy copyright protection provided it was independently developed by the developer and already in certain material form, i.e., borne by physical objects.[26] In this case, notwithstanding we may assume that the independence requirement could be met there perhaps are still different opinions about whether such online availability, if being the only form of carrier, is considered as a sort of “material form” under Chinese software regulations. The writer tends to include it so since the last modified regulations added a new prerogative to the software owner’s rights, “information network transmission rights.”[27] In fact, it has been not rare that many computer programs are primarily sold and disseminated through the Internet.

If in this case the high performance software is basically deemed copyrightable under Chinese law, then we may proceed to look at whether ABC’s act is falling within the restricted acts that infringe the rightholder CITYINFO’s exclusive rights in its software, namely, reproduction and distribution rights. Chinese Software Regulations Article 24 provides for that without the permission of the software copyright owner or his legal transferee parties are held criminal liability for their infringing activities including 1) copying software, in whole or in part; and 2) disseminating or revealing software to the public, etc.[28] However, such protection only extends to the specific expression embodied in software and not to the ideas, concepts, discoveries, principles, algorithms, processing methods and operations used in the development of computer software.[29] In this case, if as we previously assumed this operational high performance software is identical to the database it operates, ABC’s act in a sense is only the reproduction and distribution of the “ideas” contained in the “software” instead of the “software” itself. Indeed it is very easy to understand that what ABC reproduced and distributed is only paper-based city guides, which are not computer software at all. Therefore, under Chinese copyright law ABC will not be held infringing CITYINFO’s copyright in the high performance software.

 

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