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The Copyright Law Review Committee recommended that the copyright law for protection of databases remain unchanged. This article comments upon these recommendations drawing upon international comparisons where appropriate. Protection of databases is discussed including the current protection for the database as a literary work. The next part examines the CLRC recommendations in relation to protection of works within the electronic databases and concludes that the CLRC Report, whilst including some valuable discussion did not adequately address some broader issues.
The terms of reference for the Copyright Law Review Committee[2] include:
`Whether the Copyright Act 1968, as amended by the Copyright Act 1984, `adequately and appropriately protects ... works stored in computer memory.'[3]
In its draft report which was issued in June 1993, the CLRC considered that the two main copyright issues raised by this part of the terms of reference were the adequacy of copyright protection for;
(a) Authors of works aggregated in databases;
(b) Authors of computerised databases.[4]
The CLRC did not address two further questions that related to protection for authors of interactive multi-media programs and for other new works.[5]
The CLRC recommended that our copyright law for protection of databases remain unchanged and suggested a few amendments to the Act in relation to protection for stored works generally.[6] It referred to a further question of whether there should be protection for `non-original' databases, namely those for which there is no copyright protection, but reserved this for further consideration upon receipt of submissions on this issue.
This paper will comment upon some of the recommendations of the CLRC and will draw; international comparisons where appropriate.[7] The issue of adequate and appropriate protection of databases will be considered first, followed by discussion of some of the points raised by the CLRC in relation to protection of works stored in databases.
This term has various meanings. First, it can mean collections of data and other unprotected material, as opposed to works, arranged and stored in a computer system.[8] Secondly, it may mean collections of data and other unprotected material irrespective of the material form in which they exist.[9] Thirdly, it may include a wider variety of subject matter such as works, sounds and images, arranged, stored and accessed by electronic means.[10]
The CLRC used the term `database' in another way again to encompass all collections of works and data irrespective of the form of their creation and storage,[11] and saw no reason to differentiate between them `merely because of the particular material form in which those materials are stored.'[12] Furthermore, it did not consider that the difference in form raised a whole set of unprecedented copyright issues. It interpreted the term `compilations' in the Copyright act 1968[13] as sufficiently broad to include electronic databases.[14] Accordingly, copyright will subsist in a database if it is a literary work being a compilation.[15]
Implicit in the CLRC recommendations is the view that the traditional concepts that have developed in Anglo-Australian copyright law in relation to written compilations are adequate to cope with the challenges posed by the electronic medium.
It is logical to start with the presumption that traditional and electronic databases be treated in the same way for the purposes of copyright protection because both are compilations and arranged collections of similar types of material.[16] However, the acceptance of these principles assumes that written databases have adequate and appropriate protection, an assumption that should be first justified.[17] Furthermore, adequate and appropriate protection for electronic databases does not necessarily result when concepts developed in relation to written databases are applied to establish subsistence of copyright.[18] A critical examination of those principles, in particular originality, may reveal that some re-assessment of current standards is necessary. This may result in the conclusion that copyright protection is appropriate and adequate for some databases, but for others a sui generis solution may be preferable.
Before pursuing that examination, a brief reference to the current protection for an electronic database as a compilation being a literary work is necessary.
The CLRC concluded that the Copyright Act 1968 protects an electronic database as a literary work being a compilation.[19] Section 10(1) defines a literary work to include:
"a table or compilation expressed in words figures or symbols (whether or not in visible form)".
To be protected by copyright, a literary work must be an original literary work of which the author was a qualified person[20] when the work was made, namely when the work was reduced to writing or some other material form. `Material form' is defined as follows:
"in relation to a work or an adaptation of a work, includes any form (whether visible or not) of storage from which the work or adaptation, or a substantial part of the work or adaptation, can be reproduced."[21]
The CLRC concluded correctly that the definition was wide enough to cover electronic databases, upon the basis that reproduction from its electronic storage medium is possible. It referred to the Explanatory Memorandum to the Copyright Amendment Bill 1984 that accompanied the Act as evidence of parliamentary intention to protect electronically stored material.[22]
The CLRC recommended the deletion of the words `(whether or not in a visible form)' from the definition of literary work.[23] It argued that these words are superfluous because the Act allows copyright to subsist in invisible works by reason of the definition of `material form'. However, if reliance is placed upon this definition, it requires amendment also to clarify that visibility of the work is relevant, not the visibility of the form of storage.[24]
A further amendment is necessary to the definition of `literary work', namely to delete the words `expressed in words, figures or symbols' in relation to compilations. These words do not describe the way in which electronic data is expressed. To make sense of them in this context, they must refer to the visible form of reproduction of the electronic work.[25]
Moreover, these words restrict the range of subject matter within a compilation and arguably provide no protection for compilations of artistic and musical works which are not expressed in words, figures or symbols in their visible form.[26] In the Explanatory Memorandum to the Copyright Amendment Bill 1984, the legislative intention was to protect only written compilations on the basis that these were the only compilations protected under the former provisions. Paragraph 24 reads:
`This replaces the existing definition that `literary work' includes a written table or compilation. That definition is understood as meaning that tables or compilations which have a `literary form', being expressed in writing, are covered as literary works whereas other possible compilations (for example, of musical or artistic works) would not be covered by this definition.'
It is arguable that there was no restriction on the subject matter of compilations prior to the 1984 amendment and that Parliament took an erroneous view of the interpretation of the earlier definition of `literary work'; the adjective `written' may have referred to the word `table' alone, leaving all compilations as literary works, irrespective of their subject matter.[27]
There is no longer any justification for restricting copyright protection according to the content of the compilation, irrespective of whether the amendment was deliberate or was the inadvertent consequence of making changes to definitions for an unrelated purpose.[28] It is inappropriate to distinguish between protection of skills and labour upon the basis of the content of the compilation.
This approach accords with that taken internationally, where the emphasis is away from written works onto a general expression of "materials". For example, the preamble to the EC Draft Directive includes within a database:
`...collections of works, whether literary, artistic, musical or other, or of other material such as texts, sounds, images, numbers, facts, data or combinations of any of these.'[29]
Databases which fail to meet the appropriate level of originality have no copyright protection. Furthermore, the way in which the concept of originality is defined can affect the copyright protection for the contents of the database where these have no copyright protection as independent works. The level at which to pitch the concept of originality is crucial to determine which databases are given copyright protection and which slip through the net.
Unfortunately, the CLRC does not clearly distinguish between the US approach to originality as was recently applied in Feist Publications Inc v Rural Telephone Service Co Inc[30], and the Anglo-Australian approach to this concept. In fact, the description of originality shows a certain confusion as to the level of originality which is to be applied.
`In order to be protected under the Act, a work must have entailed, expenditure of a sufficient degree of labour and skill in the selection and arrangement of the material comprising the work before it will be considered to be an original work. It is the combination of the labour and skill expended in compiling the database that is protected, not the underlying material or information which, depending upon its nature, may or may not attract copyright attention.'[31]
These statements represent two different approaches to originality. Skill in selection and arrangement is narrower than skill in compiling the database. Whilst reference to the arrangement and selection can establish the originality of a compilation,[32] the second formulation more accurately represents the Anglo-Australian approach to originality in compilations.
This test is "a matter of degree depending upon the amount of skill, judgment or labour that has been involved in making the compilation".[33] The question is whether that skill and capital has imparted `to the product some quality or character which the raw material did not possess, differentiating the product from the raw material".[34] Another person cannot appropriate the product of that skill and labour.[35] This formulation of the principle of originality concentrates attention on the skills involved in making the compilation as opposed to particular skills of arrangement and selection. For that reason, it has the capacity to protect a much wider array of works than in the United States of America[36] because it enables consideration of skill and labour involved in the research and collection of data if this relates to the production of the compilation as opposed to being preparatory thereto.[37] Dicta in the case of Ladbroke (Football) Ltd v William Hill (Football) Ltd[38] suggest that such skill and labour will only be preparatory if there is no intention at the time that the labour was undertaken to produce the database.[39]
The result of the application of these principles is uncertain when the skills and labour involved in the production of the database may be different due to the involvement of computers. Theoretically, one can include the skill and labour involved in production of computer programs used in conjunction with the database in assessing originality of the database if it relates to the production of the database, as opposed to being preparatory, but is the consequent protection appropriate for this type of work?
The EC Draft Directive anticipates the problem in limiting the scope of skills that are considered in its definition of `data base'.
`For the purposes of this Directive, the term "data base" shall be taken to mean a collection of works or materials arranged, stored and accessed by electronic means, and the electronic materials necessary for the operation of the database such as its thesaurus, index or system for obtaining or presenting information; it should not be taken to apply to any computer program used in the making or operation of the database.'[40]
The CLRC cannot conclude that there is adequate protection for databases when the existence of originality turns on the identification of the skills and labour involved in the production of the database. This is always a question of `fact and degree depending upon the circumstances', so interpretation of what is preliminary to production of an electronic database is an unknown quantity at this stage.
Even if the application of current principles is not as complex as is suggested, the issue of appropriate protection for databases really requires a reassessment of the Anglo-Australian concept of originality in the context of international developments. It is necessary to decide which are the qualities of databases that justify copyright protection for the database as opposed to another form of protection.
Therefore, a policy decision must be made either to move to a higher level of originality by considering only skills related to selection, co-ordination and arrangement[41] or to maintain the status quo by considering all skill and labour involved in making the database. If we continue with the latter approach, our level of originality for such works will be lower than many other countries, unless courts no longer view expansively the skills associated with making the database. If a higher standard of originality is appropriate for these works, the effect of that decision may expose both databases and their contents to expropriation and republishing of a database by a competitor.
A factor which may influence the decision as to the appropriate level of originality is the protection sought by producers of databases of themselves. In the case of databases of facts and other unprotected material, they may seek protection for the facts themselves and the substantial investment of time, labour and capital. Protection of facts is contrary to the policy behind the copyright regime so the adoption of a low level of originality to provide copyright protection for these works is not necessarily appropriate or adequate protection in any event.[42]
The CLRC has called for submissions on the need to follow the approach taken in the EC draft directive,[43] namely to create an unfair extraction right to provide some protection for the capital expenditure in setting up the database and to protect the data itself as opposed to the copyright aspects of the database in both original and unoriginal databases. Intertwined with the need for such an approach is the appropriate extent of copyright protection for databases and the appropriate level of originality. All of these are fundamental to what constitute adequate and appropriate protection for databases and require consideration in conjunction with each other.
The constant updating of databases raises concerns as to whether a `dynamic' database is ever complete and whether its protection becomes eternal. The CLRC correctly suggests that there will be a time when the first edition of the work is made - that is, when it is published - and thereafter, additions must be considered according to their quality and quantity.[44] The enquiry is merely evidentiary and it concluded no legislative changes are necessary.[45]
However, whilst the status of additions is evidentiary, the differences with electronic data entry and retrieval may create different results where a database is in written form and electronic form. For example, a loose-leaf service will publish various amendments made between issues in reprinted pages issued to consumers. Together, there may be sufficient labour and skill to justify originality in the additions, but individually this may not be the case. If the operator makes each change as it happens by direct entry into the terminal of the computer, each change may not qualify as original, either through lack of necessary skill or as a result of insubstantiality. There may never be a `new edition' for comparison with an earlier work.
Whilst the database producer is wise to keep versions of databases from time to time to assist in proving all additions made during a particular period, it needs clarification whether the evidentiary enquiry can take account of `batches' of entries and if so, for what period.
It is arguable that publication of an electronic database created and stored on a mainframe computer never takes place, and this issue deserves consideration by the CLRC. The exclusive right of the copyright owner to publish the work[46] is significant for establishing the commencement of the duration[47] of copyright as well as enabling the owner to prevent another person exercising this right without authorisation.
A literary work is deemed to be published `if reproductions of the work ... have been supplied (whether by sale or otherwise) to the public.'[48] For the purposes of this provision, the reproduction refers to the whole work and not to a substantial part of it.[49] Clearly publication occurs of databases supplied on CD ROM. However, the concept of publication is difficult to apply in relation to an on-line database because there is no supply of `reproductions' to the public.[50] Furthermore, neither of the other factors that trigger the period of copyright protection, namely performance in public and broadcasting,[51] is likely to occur.[52]
The policy underlying the Copyright Act 1968 is to prevent a person having perpetual copyright in a work made available to the public. Although the on-line database only exists as the one, publicly available copy, public access to that one copy by means of an electronic retrieval system satisfies this policy.
To overcome possible perpetual copyright protection for on-line databases, there is the need to amend provisions of the Act which deal with publication to remove the requirement for supply of `reproductions' of the work to the public. A suitable replacement may be a provision similar to that in the Copyright, Designs and Patents Act 1988 (UK) which includes:
`in the case of a literary, dramatic, musical or artistic work, making it available to the public by means of an electronic retrieval system'.
The author of a database must be human[53] and is the first owner[54] unless the work is produced in the course of employment.[55] The CLRC left the issue of authorship unchanged in relation to databases for various reasons, the most significant of which are limitations on their terms of reference[56] and international limitations imposed under the Berne Convention.[57] There is no satisfactory solution to the issue of authorship within the confines of copyright. There is no definition of the term `author' in the Act, but it is probably the person who contributes the appropriate skill and labour recognised for the purposes of assessing the originality of the database.[58]
The problems that arise are many, making the identification of authors difficult or practically impossible in some cases.[59] Some of these problems relate to the numbers of different people involved initially and from time to time, whether these people are employees or independent contractors, the nature of the tasks performed, the performance of tasks by the operation of a program on the stored data and whether the contributions are as joint authors or as authors of separate parts of the compilation.
The approach of the CLRC places the onus on the database producer to secure all rights from those who work on the database, so that authorship as such has less significance. However, there is a real possibility that a database, while entitled to copyright protection, may have no identifiable author.[60]
The CLRC addressed the possibility that there may be no human author of a work in its section relating to works created by or with the assistance of computer programs.[61] It recommended that a category of `computer generated works' be created to provide copyright protection for works that would be original if created solely by a human author. Definitions along the line of those in the UK legislation were recommended for inclusion in the Act. The definition of a computer generated work in the UK legislation is:
`a work that is generated in circumstances such that there is no human author of the work.'[62]
This provision is not specifically directed to electronic databases but may be applicable where there is no human author. The recommendation is for the author to be the `person for whom the arrangements necessary for the creation of the work are undertaken.'[63]
The meaning of `no human author' requires clarification. Does this only cover cases where there is no human contribution, with the approach based upon the presumption that computers can create works without human creative effort? Alternatively, does it also include the case where there is undoubtedly human creative effort, but the human contributions are so numerous as to make it impossible to recognise each contribution and each author separately?[64] If it does not include the latter, there may be a class of works that will have no protection, unless a court finds human authors in these circumstances. It may do so if the work is published with the name purporting to be the publisher appearing on copies of the work. In that case, copyright is presumed to subsist and the named publisher is presumed to be the owner.[65] Another way is if the name purporting to be the author appears on copies.
Authorship is crucial to establish copyright subsistence and to determine who owns the database. For the database producer to have the exclusive rights as owner, it must secure all the necessary assignments from all those who work on the database. In the absence of contractual provisions, it can also rely upon the provisions of section 35(6) of the Copyright Act 1968 that deals with works of employees made in the course of their employment. The onus therefore rests on the database producer to protect its position. If it fails to recognise the potential authorship rights of someone engaged to work on the database it must suffer the consequences which may be joint authorship,[66] and consequently joint ownership of the database.[67]
The CLRC made no recommendations to change the law of ownership in the absence of submissions critical of the present law and to avoid distinctions between ownership of electronic databases with ownership of written compilations.
On the other hand, it recommended changes to the law relating to computer programs that have much to commend them.[68] First, it suggested removal of the current distinction between employees and others `who are retained, for example as consultants or independent contractors, to create a program'.[69] Secondly, it initially vested ownership in the employer or the commissioner as the case may be.[70] The basis for the recommendation is that the person who commissions the computer program should be in the same position as an employer and should own the copyright in the commissioned work. The abolition of the distinction between employees and independent contractors in section 35(6) removes the difficult enquiries required by that section.[71]
Whilst the reasons given by the CLRC for its unwillingness to extend these recommendations to electronic databases are understandable, the result does not achieve the most appropriate form of protection for works of this nature. The policy applied to change ownership for computer programs is equally applicable to the production of a database, either electronic or written, by a mix of employees and independent contractors engaged by the database producer. The form of storage of the work is irrelevant to the policy question of ownership. It was not only the electronic form of storage of computer programs that influenced the CLRC in its recommendations, but the need for certainty of ownership, the justification for ownership to vest in the employer/commissioner and the avoidance of unnecessary enquiries into whether particular relationships are those of employment or contractual relationships of a different kind. These arguments apply equally to databases.
Whatever the approach, contract can alter the statutory position. The database producer has the greater claim to initial vesting of copyright ownership to promote certainty. This conclusion is supported by the fact that in most cases the anticipated reward for the person commissioned to assist in the production of the database is unlikely to include rights of ownership. For these reasons the statute should represent that position, and leave contract to adjust the special circumstances.
The other significant issue arising from works stored in computer memory is the extent and adequacy of rights of authors of works aggregated in databases rather than the rights of the authors of the database itself. Clearly the separate works stored within an electronic database are works within the meaning of the Copyright Act.
The exclusive rights of the copyright owner include the rights to reproduce the work in a material form, to publish the work and to perform the work in public.[72] The CLRC addressed several rights, namely the need for a use right, the adequacy of current reproduction rights, the need for a display right and the protection, if any, to be provided for screen displays.
The CLRC rejected the request by Copyright Agency Limited for a use right to enable copyright owners to regulate input and retrieval of works into and from computer memory. It considered that there is no justification or necessity for a use right because such actions already constitute reproductions in a material form.[73]
The conclusion that the conversion of a hard copy work to electronic form and vice versa is a reproduction is not without doubt. It now seems clear since Autodesk Inc v Dyason[74] that an object code version of source code is either a reproduction or an adaptation, but it is not clear which. Similar conclusions are possible in respect of works by drawing an analogy between electronic versions of works and versions in hard copy. In the recent Federal Court decision of Roland Corporation v Lorenzo & Sons Pty Ltd[75] Pincus J stated that a manual created in a word processor and recorded on a disk was an original literary work and that a printout constituted a reproduction.
However, given the requirement of objective or substantial similarity between the two works for there to be a reproduction, it seems unwise to rely upon this one decision for the proposition that this change of material form constitutes a reproduction.
The CLRC recommended that the Act should not be changed to include a definition of `reproduction' or to change the current definition of `adaptation'.[76] However, it seems unsatisfactory to rely on protection based upon the theory that it is either a reproduction or an adaptation, but we are not sure which. Furthermore, this approach is inconsistent with the proposal for the possible Protocol to the Berne Convention that clarifies that storage in a computer system is a reproduction.[77]
In order to eliminate any doubts, there is a need to clarify which acts constitute a reproduction for the purposes of the Act when the material form of the work changes to something that is not objectively similar. As a decision that a printed work is a reproduction of an electronically stored work sits uneasily with the requirement for sufficient objective resemblance between the two works, it is preferable to leave that principle intact and include a deeming provision similar to that in section 21(1). Such a provision should clarify that not only storage of a hard copy work in electronic form but also retrieval from that form into hard copy constitutes reproduction. Furthermore, it could provide a more flexible notion of storage and retrieval to include all kinds of electronic storage.[78]
The CLRC raised a number of issues in its discussion on the reproduction right, but this article will only address a few of these. First, it referred to the need for educational institutions to make copies of works onto computer memory for use by students. It expressed the view that `it is doubtful that the licence under Part VB to educational institutions to make "one or more copies of ... [a] work" (s.135ZL) applies to scanning a work onto database. If that is so, an amendment should be made to confirm that the licence does so apply.'[79]
It is submitted that this licence does apply to scanning a work onto computer memory. Part VB of the Act defines a reference to a `copy' in that Part as a reference to any of the following:
(i) a reproduction of the work in a material form;
(ii) an adaptation of the work;
(iii) ....'[80]
Accordingly, the licence in Part VB will include scanning a written work into electronic form as this activity will constitute either a reproduction[81] or an adaptation.
Secondly, when a database operator networks a database to subscribers and includes a prescribed screen warning, the CLRC recommends protection from liability for authorising printing of a hardcopy of the work without the copyright owner's permission.[82] This may be appropriate if the database owner has no other practical ways of preventing infringements of this nature, as is the case with photocopying machines provided by libraries for library users.[83]
However, as the risk of infringement from unauthorised copying is considerable and the chances of detection are remote, another approach may be more appropriate that places the onus on the database owner to introduce `booby traps' or other means to prevent the infringement taking place. Perhaps investigations of the technological ability to do this are appropriate before adopting the approach suggested by the CLRC.
The screen display of a copyright work stored electronically may possibly constitute either a reproduction in a material form or amount to a public performance of the work.
Whilst the screen display may be ephemeral in nature[84], it satisfies the definition of `material form' if it is possible to reproduce the work from its form of storage.[85] Arguably that reproduction is possible by taking a photograph or copying the display by hand.[86]
The CLRC saw the consequences of this conclusion as untenable and accordingly recommended that:
It should be made clear that screen displays do not constitute a reproduction in a material form of works stored in computer memory.[87]
The justification for removing the reproduction right from screen displays is that this is analogous to reading works in print form. This argument is persuasive if the act of reproduction, equated with reading, takes place in private. However, the reading becomes an unauthorised act when it is in the nature of a public performance. By analogy, when the display of the work on the screen is to the public, this activity is also unauthorised. To this extent, the copyright owner needs rights in the public screen display of his work. However, provided that these are available as a public performance of the work, he does not also need them within the reproduction rights.[88]
The CLRC concluded reasonably that a screen display may constitute a performance of the work[89] and that `the screen display of materials stored in computer memory can be considered to constitute a public performance where such display takes place in a non-domestic context such as at work.'[90]
It recommended that:
A screen display of a work stored in computer memory does not per se constitute a public performance of that work.[91]
This recommendation was to overcome the risk that a display of a work by a person operating the computer terminal in his office may constitute a public performance because of the non domestic location of a computer. The retrieval of a work in such circumstances should not be a prohibited act as such a conclusion involves a contortion of the generally understood meaning of `in public'.[92]The difficulty with such a provision is to determine what does then constitute a public performance.
Another possible and perhaps preferable approach is similar to that taken by the EC in its draft Directive,[93] namely to recognise the exclusive right to perform the work in public, but to specifically provide that performance of the work in public will not constitute an infringement in certain circumstances. These are first, if this is necessary for the lawful user to use the work as anticipated by contractual arrangements, or secondly, in the absence of any contractual arrangements, if this is necessary for the lawful acquirer to gain access to and use of the work. This approach would permit such things as operating the computer in an office, library or other public place if that is necessary to gain access to the database by an authorised user.
It is necessary to discuss the issue of whether the Copyright Act 1968 provides adequate and appropriate protection for these works within the international framework of proposals for database protection. The proposals by the EC and WIPO[94] provide wider perspectives on the appropriate nature of protection for databases and their contents. These perspectives warrant deeper consideration irrespective of the extent and breadth of submissions made to the CLRC.
First, it is necessary to identify the appropriate[95] level of originality to apply to all databases and compilations. This requires critical examination of the concept of originality in the context of written compilations before applying that concept in a new context.[96]
It is suggested that this concept is distorted to provide copyright protection for works which are not really "original" in the sense usually contemplated by copyright law. Accordingly, it is appropriate to adopt a standard of originality which is in line with overseas developments.[97] Protection as a literary work is often sought as a means of preventing unfair competition[98] and is provided perhaps because no other means, such as a tort of unfair competition, is available to the courts to prevent an injustice. This is particularly the case where the value of the compilation relates to the unprotected stored data, rather than in its selection or arrangement.[99] The consequence of this approach is a very low level of originality, particularly in respect of compilations of facts, which effectively results in the protection of the facts themselves.[100]
It is difficult to justify the continued application of this concept of originality when the protection provided sits uneasily with the aim of copyright, that aim being to provide protection only for the way in which ideas and facts are expressed and not for the ideas and facts themselves.
However, a change to current levels of originality also requires consideration of the consequences arising from such a change. Raising the level is likely to result in less and arguably inadequate protection for the expenditure of labour and capital in some database production. Certain works will fail to meet the necessary level of originality and will have no copyright protection. Furthermore, those databases in which copyright subsists will have protection only against the use of a substantial part of the database which may result in perceived unfair extraction and use of the database. Therefore, two further issues arise:
1. Should the owner of a protected database be able to prevent extraction of unprotected material from its database? If so, at what stage is use of the database no longer legitimate?
2. Should a database producer have rights in respect of the non-original database?
If the conclusion is that databases and their contents deserve further protection, as was the basis underlying the EC draft Directive proposals for an unfair extraction right, the appropriate solution is to mould the remedy to suit the different circumstances rather than to distort copyright.[101]
Whilst pronouncements on the need for and the extent of this protection are not wise in the absence of details of the various competing interests, the terms of reference permit the CLRC to undertake such an investigation in conjunction with monitoring the overseas developments in the area. This should be conducted irrespective of the extent of response to the report on this issue, because it is otherwise impossible to conclude that copyright protection is adequate and appropriate for works stored in computer memory.
Finally, the relationship between copyright and contract is significant for electronic databases.[102] Arguably, contractual provisions in licence agreements remove the relevance of copyright protection for the database owner and replace it with provisions which contain none of the limitations on exclusive rights which are present in copyright legislation.[103]
The CLRC expressly excluded consideration of the adequacy and appropriateness of these contractual arrangements when they relate to the rights of the author of stored works.[104] However, the relationship between the two requires consideration when the consequences of contractual regulation of this area affects the decision as to whether copyright provisions are adequate and appropriate. For example, if it is appropriate for limitations on exclusive rights of the copyright owner to apply, some regulation of user contracts may be necessary. The need for some limitation or control is likely to increase when data is available from only one source, particularly if stringent conditions of supply restrict the free flow of information and knowledge.
The CLRC Report includes some valuable discussion and recommendations but did not adequately address these broader issues. Its call for comments on the possible adoption of a new right of unfair extraction as proposed by the EC Commission in its Draft Directive on databases opens the door for the consideration of the differences which exist between countries in their protection of databases and for reassessment of the rationale for our current approach.
[*] Faculty of Law, Monash University, Victoria.
[1] This article is based upon a paper presented in September at a seminar organised by The University of Melbourne Law School in conjunction with Centre for International Research on Communications and Information Technologies (CIRCUIT).
[2] This committee was established in 1983 to consider and report to the Attorney-General on specific copyright matters referred to it from time to time. The inquiry into copyright protection of computer programs commenced in 1988.
[3] Copyright Law Review Committee, Draft Report on Computer Software Protection, June 1993, 1.
[4] CLRC Report 14.04
[5] No submissions were received concerning new kinds of works. However, the CLRC Report at 14.44 raised issues which emerged from a report published by the United States Office of Technology Assessment, Finding a Balance: Computer software, Intellectual Property and the Challenge of intellectual Change, 1992. Comments on these were invited so that they can be considered in their final report.
[6] The recommendations are summarised in the draft report at 2.38 -2.43.
[7] WIPO Memorandum for `Committee of Experts on a Possible Protocol to the Berne Convention for the Protection of Literary and Artistic Works', Part I, First Session, (1992) Copyright 30; Part II, Second Session (1992) Copyright 66; 93. Also EC draft Directive on Electronic Databases.
[8] This was the earliest use of the term. WIPO Memorandum, Part I, supra n 7 at 36.
[9] The proposed protocol to the Berne Convention uses the term in this sense. However, the reason for this is that collections of works are already protected by Article 2(5) of the Berne Convention.
[10] It is in this sense that the term `database' is used in the EC draft directive on the legal protection of databases. - Article 1.1.
[11] It is in this sense that the term will be used in this article.
[12] CLRC Report at 14.26.
[13] Copyright Act 1968, section 10(1).
[14] CLRC Report 14.28.
[15] Copyright Act 1968, section 10(1). The committee felt the ordinary meaning of compilation was broad enough to include electronic databases. (14.28).
[16] (a) Collections of literary and artistic works, such as anthologies, legal databases, extracts, artistic catalogues and bibliographies, depending upon whether the entries are works; and
(b) Collections of data and other unprotected material such as lists, directories, some catalogues and timetables.
[17] This justification does not arise merely because in all but few instances copyright will subsist. Some decisions in which copyright subsistence has been denied are Chilton v Progress Printing and Publishing Company [1895] 2 Ch 28; Smith's Newspapers Ltd v The Labour Daily (1925) SR(NSW) 593(SC); Victoria Park Racing and Recreational Grounds Company Limited v Taylor [1937] HCA 45; (1937) 58 CLR 479; Odham's Press, Limited v London and Provincial Sporting News Agency, Limited [1935] Ch 672.
[18] The differences in the creation, storage, retrieval and manipulation of data in electronic databases may have some impact upon the application of those traditional concepts which results in inappropriate or inadequate protection for these works and their contents.
[19] CLRC Report at 14.06 and 14.27 - 14.32. For a detailed discussion on this issue which reaches the same conclusion, see A Monotti, `Copyright Protection of Computerised Databases' (1992) AIPJ 135.
[20] Copyright Act 1968 s 32(1), (2) & (4).
[22] CLRC Report at 14.06, 14.27 and 6.21-6.36. See also A Monotti, op cit n19 at 141, 143-150.
[23] CLRC Report 2.03 & 6.04. This amendment was fuelled by industry concerns that the presence of these qualifying words after `table or compilation' opened a possible construction that a computer program must therefore be in a visible form if it is to be regarded as a literary work.
[24] `...form (whether visible or not) of storage...' The CLRC Report decided no amendment was necessary. 2.03(4), 6.34-6.35.
[25] A Monotti, op cit n19 at 141.
[26] A Monotti, `Extent of Copyright Protection for Compilations of Artistic Works' [1993] 5 EIPR 161.
[27] Ibid.
[28] That is, to ensure that invisible works are protected as literary works.
[29] Recital 16. Note also that a failure to protect collections of artistic works may be contrary to Article 2(5) of the Berne Convention which provides for `Collections of literary or artistic works ... which ... constitute intellectual creations...'
[31] CLRC Report at 14.31.
[32] This is clearly the basis in US after Feist, where the `sweat of the brow' theory of originality was buried. Originality required some minimal degree of creativity in selection, co-ordination and arrangement of material. Labours involved in collection and research were not able to be protected. Furthermore, both the WIPO Memorandum, Part I, supra n 7 at 36(clause 44) - and the EC Draft Directive (Article 2.3) define originality in similar terms. [The latter by reference to selection and arrangement only.]
[33] Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 277.
[34] MacMillan & Co Ltd v Cooper (1924) 93 LJPC 113 at 117-118.
[35] Morris v Ashbee [1868] UKLawRpEq 183; (1868) LR 7 Eq 34 at 40-41.
[36] The Anglo-Australian concept of originality is closer to the `sweat of the brow' doctrine of originality which was rejected by the Supreme Court in Feist, supra n 31.
[37] For example: Ladbroke (Football) Ltd v William Hill (Football) Ltd, supra n 34; Waterlow Directories Ltd v Reed Information Services Ltd (1991) 20 IPR 69; Waterlow Publishers Ltd v Rose (1989) 17 IPR 493.
[39] Ibid per Lord Devlin at 479, per Lord Pearce at 481, Lord Reid at 470.
[40] Article 1.1.
[41] This is consistent with the standard of originality in the US, and under the Berne Convention and the draft EC directive on Databases - supra n 33.
[42] Copyright only protects against acts in relation to a substantial part of the work. This may restrict the effectiveness of copyright for the database producer.
[43] The EC was concerned to harmonise the legal protection of databases so that the internal market could function freely. Its directive accepted that it is necessary to protect investment, to encourage establishment of databases and to remove unfair competition, but not to use copyright as the vehicle.
The issue of the need for a second tier of protection for `unoriginal' databases is also on the agenda for discussion by the Committee of Experts on a Possible Protocol to the Berne Convention for the Protection of Literary and Artistic Works. Report of the first session, (1992) Copyright 30 at 50 (para 89 - 95).
[44] A Monotti, op cit n 19 at 154-156.
[45] CLRC Report 14.33 - 14.35.
[46] Copyright Act 1968, s 31(1)(a)(ii).
[47] Ibid, s 32(2((a); s 33(3).
[50] A Monotti, op cit n 19 at 151.
[51] Copyright Act 1968, s 33(3).
[52] A Monotti, op cit n 19 at 151-152.
[53] Copyright Act 1968, s 32.
[56] CLRC Report at 14.38.
[57] Protection must extend to all those who are joint authors of literary and artistic works.
[58] Laddie Prescott and Vitoria, `Modern Law of Copyright', Butterworths, London at 245; In Waterlow Publishers v Rose, supra n 38 at 502, Slade LJ referred to this definition but did not conclude that this was the correct view.
[59] The special position of compilations is referred to in Waterlow Publishers v Rose (1990), supra n 38 at 502-503.
[60] Ibid at 503.
[61] CLRC Report, Chapter 13. The prime thrust of this provision is to protect works which would constitute an original literary, musical or artistic work if they had been created solely by a human author. The problem arises from the interactive nature of the technology used to create the work which may make it impossible to separate the contribution of the user from that of a computer program. Furthermore, the human effort and skill, if identified, may not satisfy the requirements of originality.
[62] Copyright, Designs and Patents Act 1988 (UK), s 178.
[63] Ibid, s 9(3). CLRC Report at 244-245.
[64] This distinction is made in the provisions in the draft protocol to the Berne Convention which sought to protect a separate category of `computer produced works' in which the contributions of humans are recognised, but are `merged in the totality of the work in a way that it is impossible to attribute authorship in respect of the contributions.' However, the Committee of Experts agreed that it would be premature to deal with `computer produced' works in a possible protocol. WIPO Memorandum Part I, supra n 7 at 36 - 37 [Para 50-55].
[65] Copyright Act 1968, s 128.
[67] See the discussion on the consequences in Waterlow Publishers v Rose, supra n 38 at 502-503.
[68] Being a discrete category of literary works, those changes would not flow to other works. CLRC Report 14.40.
[69] Ibid, 7.07.
[70] Ibid, 2.04.
[71] It is not necessary to decide whether a contract is one `for services' rather than `of services'. Furthermore, there is no need to determine whether the work was made in pursuance of a contract of employment.
[72] Copyright Act 1968, s 31.
[73] These actions do not necessarily constitute reproductions, but they will either constitute reproductions or adaptations and therefore the use right is unnecessary.
[74] [1992] HCA 2; (1992) 66 ALJR 233.
[75] [1991] FCA 617; (1991) 22 IPR 245 at 253.
[76] CLRC Report 6.21 - 6.47.
[77] Also see WIPO Memorandum, Part II, supra n 7 at 68, para 75; Second Session Report (1992) Copyright 93 at 98-99. Arguably, this provision is too limiting because the issue of storage is only one side of the coin. It is important if the work is created in written form, but the act of retrieval of a work created in electronic form should also constitute a reproduction.
[78] In one sense it is logical to await the decision on the proposed Protocol to the Berne Convention, but on the other hand the current lack of clarity needs to be addressed now.
[79] CLRC Report 14.12.
[80] Copyright Act 1968 s 135ZC(b).
[81] CLRC Report 14.08.
[82] Ibid, 14.13; 2.38(6).
[83] University of New South Wales v Moorhouse [1975] HCA 26; (1975) 133 CLR 1.
[84] CLRC Report 14.15. Also see WIPO Memorandum, Part II, Second Session, supra n 7 at 74, para 113.
[85] Copyright Act 1968 s 10(1).
[86] A Monotti, `Copyright Protection of Written and Electronic Databases' May 1990, Unpublished minor thesis submitted for Master of Laws, University of Melbourne, 118-120.
[87] CLRC Report 14.15.
[88] Monotti, op cit n87, 121-126; S Ricketson, `Copyright and Databases', in Essays in Computer Law, G Hughes (Ed), Longman Professional, 1990, at 79.
[89] Copyright Act 1968, s 27(1)(a) - Performance includes `a reference to any mode of visual or aural presentation.'
[90] CLRC Report 14.20. The WIPO Memorandum, Part II, Second session, stated that a public display of a work in this way is not a public performance because it differs in nature from the performance of such works as a dramatic or musical work - supra n 7, 66 at 74, para 113-114. However, this argument is not relevant to the provisions of the Copyright Act 1968, S 27(1) & (3) which define performance as `any mode of visual or aural presentation'.
[91] CLRC Report 2.38.
[92] Performing Right Society Limited v Gillette Industries Limited [1943] 1 All ER 228 at 232 (ChD); Bennett J considered that the antithesis of "in public" is in private.
[93] Article 5 & 6.
[94] Supra n 7.
[95] As distinct from the currently accepted.
[96] This is of particular significance for factual databases, but is relevant to databases generally.
[97] See supra n 33. However, the recent English decisions of Waterlow Directories Ltd v Reed Information Services Ltd and Waterlow Publishers Ltd v Rose, supra n 38, are consistent with the Anglo-Australian approach to the concept of originality, which considers the skill and labour involved in making the compilation.
[98] This is not expressly recognised in the decisions.
[99] Elanco Products Ltd v Mandops (Agrochemical Specialists) Ltd [1979] FSR 46; Morris v Ashbee, supra n 36; Football League, Ltd v Littlewoods Pools, Ltd [1959] 2 All ER 546; British Broadcasting Corporation v Wireless League Gazette Publishing Company Ltd [1926] 1 Ch 433; Independent Television Publications Limited v Time Out Limited and Elliott [1984] FSR 64; Mirror Newspapers Limited v Queensland Newspapers Pty Ltd [1982] Qld R 305 (SC); Waterlow Directories Ltd v Reed Information Services Ltd, and Waterlow Publishers Ltd v Rose, supra n 38.
[100] Ibid.
[101] For some views on this issue see A Monotti, op cit, n 19 at 158-163; S Ricketson, op cit, n 89 at 97.
[102] Particularly those which are only accessible on-line
[103] The fair use provisions for example, and the requirement that a substantial part of the work must be copied before there is infringement.
[104] CLRC Report 14.02.
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