Legal protection of databases in Europe and public scientific research

Pr. Bertrand WARUSFEL, University Paris V,

Attorney at Law (

Feltesse, Warusfel, Pasquier & Associés

Law Office, Paris) [email protected]

B. Warusfel, 241103 2nd EPIP Conference - Maastricht 1

1. Principles of the legal protection of databases in Europe – copyright protection –

"sui generis"

protection 2. Effect on researcher's access to data 3. Effect on the diffusion of the research results 4. Items for discussion and reform

B. Warusfel, 241103 2nd EPIP Conference - Maastricht 2

1. Principles of the directive of 11 March 1996 on the legal protection of databases

"5) Whereas copyright remains an appropriate form of exclusive right for authors who have created databases; (6) Whereas, nevertheless, in the absence of a harmonized system of unfair-competition legislation or of case-law, other measures are required in addition to prevent the unauthorized extraction and/or re-utilization of the contents of a database"

(…) the European Union has decided to recognize two king of exclusive rights on database  Copyright protection of an original "structure" of database  New

"sui generis"

rights protecting investments of the producer against misappropriation of the database contents B. Warusfel, 241103 2nd EPIP Conference - Maastricht 3

1.1. A copyright protection of the database "structure" …

•

"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."

(art.3.1 Dir 110396)  sole condition : intellectual creation (database which are structured in a generic way are not protected)  the "sweat of the brow" is not a criteria :

"No other criteria shall be applied to determine their eligibility for that protection."

(art.3.1 Dir 110396) • + the protection of the structure is independent of the content status

"The copyright protection of databases provided for by this Directive shall not extend to their contents and shall be without prejudice to any rights subsisting in those contents themselves."

(art.3.2 Dir 110396) B. Warusfel, 241103 2nd EPIP Conference - Maastricht 4

… with no direct effect on the status of the database contents

• Only "creative" data (photos, papers, music, …) are protected by copyright  each copyrighted data is protected against non-private copy and re-use  "factual" data (statistics, raw scientific results, …) are not protected by copyright  each factual data can be copied and re-use freely  but some reproductions of a set of factual data could be prohibited if they are considered as reproduction of the database "in part" (infringement of the exclusive right of the database author, art. 5(a) Dir 110396) B. Warusfel, 241103 2nd EPIP Conference - Maastricht 5

Effects (and limits) of the copyright protection

B. Warusfel, 241103 2nd EPIP Conference - Maastricht 6

1.2 The

sui generis

right

• is not a real intellectual property right (no qualitative condition, but an economic criteria) the database producer must prove that he has paid "substantial" investments • is a protection for the maker/producer of the database (and non for intellectual authors) • is not a right to control each data but only a protection against unauthorized

"extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database."

or against repeated and systematic non-substantial extractions (art.7 Dir 110396) B. Warusfel, 241103 2nd EPIP Conference - Maastricht 7

2. Effect on researcher's access to data

If the researcher is a legitimate user of the database (by contract or by free access) • Copyright is not an obstacle – for extracting data for scientific purposes (because of "fair use" or the "private copy" exemption) – and for the scientific treatment of it • Copyright could be an obstacle – for reproducing without prior authorization a copyrighted data extracted from a database – or for integrating in a new database that kind of protected data – but in a lot of cases, copyright exceptions apply : "fair use" or "research exemption", or "short citation" (i.e. in France,

Microfor

case, 30 October 1987) B. Warusfel, 241103 2nd EPIP Conference - Maastricht 8

• Sui generis producer's right is not an obstacle – for un-substantial extraction – or un-substantial re-use of data • Sui generis producer's right could be an obstacle – for extracting a substantial part or the whole content of the database, if the scientific work needs the treatment of a substantial part of the database (i.e. in case of statistic computation on large series of data), – in that case, it would be necessary to negotiate a specific agreement with the producer for authorizing specifically a "substantial" extraction  difficulty to appreciate what is "substantial" extraction ?

But the potential most important obstacle is not database exclusive rights : It is the economic position of some database producers who have the power to impose restrictive contractual provisions to scientific users, + restricted access and strict license policies can be managed without sui generis or IPR support :

"Contracts and encryption provide protection where a copyright does not"

( Christopher Bloom, Attorney at Law, speech CLA meeting, 1102) B. Warusfel, 241103 2nd EPIP Conference - Maastricht 9

3. Effect on the diffusion of the research results

• Database protection creates no restriction for the open diffusion of the scientific results : – the (public) producer has no obligation (no registration of its database, no mandatory set of contracts, …) – it is possible to propose Open License of the data under the European database protection • Database protection give to the scientific public producer legal tools for – preventing a private and non-authorized commercial re-use of its data – preventing informal secrecy practices between researchers

"One of the most serious entry barriers to data may be their ending up in inaccessible shoe boxes of researchers."

(Access to and Sharing of Publicly Funded Research Data – Interim report of the expert working group, OECD, October 2002) – negotiating specific licenses with the private sector in order to re-fund research programs B. Warusfel, 241103 2nd EPIP Conference - Maastricht 10

Combination of database protection and open access policy for public scientific data

Open Access policy will be based on – electronic depository (self-archiving) – open-access journals and will need to preserve “responsible use of the published work “ (Berlin declaration, 22 october 2003) In that context, database rights could be used for – protecting depository from non-authorized commercial re-use, – monitoring uses of published data, and for – ensuring permanent free access to open-access journals "these new journals will no longer invoke copyright to restrict access to and use of the material they publish. Instead they will use copyright and other tools to ensure permanent open access to all the articles they publish. (Budapest Open Access Initiative, February 14, 2002) B. Warusfel, 241103 2nd EPIP Conference - Maastricht 11

• The future directive on re-use of public sector documents could be a good way for establishing principles of the Open Access to scientific data and documents • But, unfortunately, the current proposal (May 2003 version) excludes research bodies from the scope of the directive : Article 1 (…) 2. This Directive shall not apply to: (…) (e) documents held by educational and research establishments, such as schools, universities, archives, libraries and research facilities including, where relevant, organisations established for the transfer of research results; B. Warusfel, 241103 2nd EPIP Conference - Maastricht 12

4. Items for discussion and reform

• We are waiting for 2 important steps in the near future :

– the Commission report on the application of the 1996 directive (in accordance with art.16.3) – Decisions of the European Court of Justice on 4 prejudicial questions concerning • criteria for evaluating substantial investment • And for defining substantial extraction, • or effect to the use of already published data, … B. Warusfel, 241103 2nd EPIP Conference - Maastricht 13

Possible ways for adapting the European database protection

• Implementing – a mandatory Research exemption to database exclusive rights – compulsory license in case of unfair "data monopoly" • Reducing the time period of the sui generis protection (15 years) or the conditions for its renewal • Strengthening criteria for evaluation the two kind of "substantiality" – of the investment – of the extraction • Introducing the public research bodies in the scope of the future directive on the re-use of public sector documents B. Warusfel, 241103 2nd EPIP Conference - Maastricht 14

"Intellectual property must find a home in a broader-based information policy, and be a servant, not a master, of the information society." (Pamela Samuelson,

Law and Contemporary Problems

, vol. 66, Spring 2003)

Improving and adapting the Database Law

(already implemented by 42 European and associated countries) in order to obtain a balancing harmonized international regulation

is a better way than trying to dismantle it

and to be ruled by the sole powers of money (economic conditions of contracts) or technology (new technical features controlling access and use of information) B. Warusfel, 241103 2nd EPIP Conference - Maastricht 15