The regulations have been debated in Europe for over five years. Now is the time for businesses to exploit the opportunity they provide.
The new law
The Copyright and Rights in Databases Regulations 1997 (the Regulations) implement the European Directive on Legal Protection of Databases that aims to harmonise intellectual property rights in databases across the European Union (EU). The regulations fall into two main parts. The first confers express copyright protection on databases under the Copyright, Designs and Patents Act 1988 (the Act). The second introduces an entirely new 'database right'.
Copyright - the protection available
Before the introduction of the Regulations, there was no specific legislative copyright protection in the UK for databases. However, a database could be protected by copyright under the Act as a type of literary work comprising 'tables or compilations' provided that it was 'original' ie not copied from elsewhere.
The Regulations give specific copyright protection to databases for the first time by treating them as a new type of literary work. Tables and compilations still benefit from copyright protection. A database is defined by the Regulations as a collection of independent works, data or other materials which are both:
- arranged in a systematic and methodical way; and
- individually accessible by electronic or other means.
This definition covers electronic text and multi-media databases. To qualify for copyright protection, a database must be 'original'. This will be satisfied "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". In practice, businesses may find this criterion hard to meet for some databases. This copyright may arise whether or not the separate elements of the database are copyright works in their own right.
Copyright in a database will last for the normal copyright term of 70 years after the author's death. All the major provisions of the Act relevant to other forms of copyright will apply equally to copyright in a database eg:
- first ownership of the copyright in a database will vest in the author; and
- the owner of the copyright will have the exclusive right to copy it, issue copies to the public, rent or lend it to the public etc. Any such acts carried out without the copyright owner's permission will constitute an infringement.
In implementing the Regulations, the UK government has attempted to preserve the status quo as far as possible in relation to so-called 'fair dealing' exceptions to copyright. The Regulations clarify that any person with a right to use the database, whether under licence or otherwise, can do anything necessary to access and use the contents without infringing copyright.
New database right
In addition to copyright protection, the Regulations also create a new right, the 'database right'. Databases will be eligible for this right whether or not they attract copyright protection
The right will arise in a database where there has been "substantial investment in obtaining, verifying or presenting the contents of the database". There is no requirement for any 'intellectual creativity' in the database for this right to arise. 'Substantial' can be measured either qualitatively or quantitatively, and 'investment' can be of financial, human or technical resources.
The first owner of the database right will be the 'maker' of the database - defined as the person who "takes the initiative in obtaining, verifying or presenting the contents of a database and assumes the risk of investing in that obtaining, verification or presentation".
Protection expires 15 years from the end of the year in which the making of the database was completed. Any substantial changes to the contents of the database, including deletions, additions or alterations which amount to 'substantial new investment' qualify the database for a further 15-year term.
'Extraction' or 're-utilisation' of all or a substantial part of the database constitute infringements of the database right. Extraction is the "permanent or temporary transfer of the contents of the database to another medium". Re-utilisation is defined as "making the contents available to the public".
The Regulations permit 'fair dealing' with a substantial part of a database's contents by a person who is a lawful user for the purposes of teaching or research of a non-commercial nature, provided that the source of the information is indicated. During the consultation process on the Regulations, some criticism was made that these exceptions were too wide in the context of digital information services. As identical copies can be made quickly and easily, many information providers believed that the exceptions should be more limited. Guidelines in the educational, university and library sectors are expected to develop over time.
Summary of protection for databases
Type of protection Term Tables or Databases
(years) compilations
Copyright 70 Yes, Yes, if 'intellectual
if 'original' creation' test
satisfied
Database right 15 Not available Yes, if 'substantial
investment' test
satisfied
Existing databases
Databases created prior to 27 March 1996 and protected by copyright will continue to be protected until the end of the term. Existing databases that qualified for database rights on 1 January 1998 and were created after 1 January 1983, remain protected until 31 December 2013.
Problem areas
The legal issues surrounding the Regulations give rise to a number of practical uncertainties.
Definitions
Many of the terms used in the Regulations are taken directly from the EU directive, including "substantial investment of resources", "extraction" and "re-utilisation" in relation to the new database right and "intellectual creation" in relation to the new copyright in databases. The wording of EU legislation is generally much less precise than is traditionally the case in the UK, leaving room for uncertainty as to the scope and meaning of the terms.
Classification
Whether a collection of works attracts copyright protection will depend upon whether it is classed as a compilation or a database. If it is classed as a database, it must then satisfy the 'intellectual creation' test for originality (see Copyright - the protection available).
Classification of collections of works is therefore of prime importance in determining whether copyright protection arises. Databases previously protected that may fail the new test include, for example, telephone directories. They cannot now be classified as compilations but equally may not have the intellectual creativity required to be considered original. However, such a database may qualify for the new database right, because of the investment of resources that went into its creation.
Who is the author?
A database is often created or contributed to by many individuals. The concept in the Regulations of a database having a single 'author' will lead to difficulties in practice. The Regulations do, however, provide that where databases are created by employees, the employer will be regarded as the maker, unless there is an agreement to the contrary.
Database contents
For a database to fall within the definition in the Regulations, the materials in the database must be arranged in a systematic or methodical way. In many cases, the materials themselves are arranged randomly and the searching system, working on a user's instructions, provides order. In such cases, the databases themselves may fall outside the scope of the Regulations.
Action for businesses
The key message to businesses from the Regulations is to maximise the protection given to their databases by ensuring that they qualify preferably for full copyright protection, or failing that, for the database right. This entails meeting either the 'intellectual creation' or 'substantial investment' criterion and it will be important for businesses to achieve and demonstrate the required element of creativity or investment in their databases.
Record keeping
Businesses will need to review and keep records of what databases they have, the protection that is available for each and when and how the databases are updated. They must also keep a note of the resources that have been used to create and maintain databases, in terms of financial, human and technical investment.
Attribution
Both the new copyright in databases and the database right arise automatically, without any need for formalities such as registration, although the existence of rights should be asserted by use of attribution notices.
Licence review
Database licence agreements in standard form should be reviewed to ensure that they deal with the new copyright and database rights correctly.
Further Information
For further information or advice on any of the legal or internal policy issues involved in e-mail use, please contact us.
This article is correct to the best of our knowledge and belief. It is, however, written as a general guide; it is essential that relevant professional advice is sought before any specific action is taken.
Garretts is a member of the international network of law firms associated with Arthur Andersen and is regulated by the Law Society in the conduct of investment business.
