Statement on H.R. 2652: The Collections

of Information Antipiracy Act







Jane C. Ginsburg

Morton L. Janklow Professor of Literary

and Artistic Property Law



Columbia University School of Law

435 West 116th Street

New York, N.Y. 10027

212-854-3325

















Submitted to the Subcommittee on Courts,

Intellectual Property and the Administration of Justice

of the Committee on the Judiciary



United States House of Representatives





October 28, 1997



SUMMARY



H.R. 2652 would provide a federal misappropriation claim against the substantial extraction and offering in commerce of material taken from a collection of information, when the collection was the fruit of the investment of substantial monetary or other resources, and when the extraction or use in commerce harms the information collector's actual or potential market for the collection. The right is narrowly stated, and is accompanied by important exceptions and limitations.



Many persons who care about dissemination of information and the promotion of learning are -- appropriately -- concerned that a proliferation of new intellectual property rights will impoverish the public domain and will curtail access to knowledge, without a corresponding need for protection on the part of content providers. But this bill would not create a "new" intellectual property right. Rather, the bill would largely restore the status quo ante-Feist Pubs., Inc. v. Rural Telephone Serv. Co., 499 U.S. 340 (1991), by reinstating protection for the "sweat of the brow" expended by information compilers, that the Supreme Court declared beneath the subject matter of copyright.



From the inception of our copyright law through to the eve of Feist, information compilations were, by and large, and regardless of originality, not only covered against direct copying, but in the later decisions were to some extent also protected against indirect competitors' rearrangement of their contents. Courts from the beginning have consistently emphasized at the same time that protection for the compilation conferred no rights in the information itself; second-comers were always free to engage in their own gathering of the same information. If justification for coverage of unoriginal compilations under the 1976 Act began to seem anomalous, many courts and commentators nonetheless concluded that protection was too well-entrenched to abandon. That is why the Feist decision provoked such surprise: as the then-Register of Copyrights exclaimed, in Feist, the Supreme Court "dropped a bomb."



How does the scope of protection articulated in H.R. 2652 compare with the old "sweat copyright"? On the whole, H.R. 2652 establishes a narrowly tailored version of "sweat rights," with an exception for verification of independently-gathered information that is at least as broad (if not broader) than the judge-made version, and with scholarship and news reporting exceptions that courts in compilation copyright cases had not devised. Like the later sweat copyright cases, H.R. 2652 does not limit the scope of protection to copying the totality of the compilation in the form presented by the first compiler, but extends to at least some rearrangements of the copied material. But where some of the sweat copyright decisions reprimanded rearrangement without a showing that the rearranged version competed with or harmed the first compiler, H.R. 2652 requires both that the taking be substantial, and that it "harm [the compiler's] actual or potential market for a product or service that incorporates that collection of information . . ."





H.R. 2652 does not, it should be stressed, create a sub-species of copyright. The rights set forth in proposed section 1201 are rights against misappropriation. Defining the new sweat rights as a misappropriation claim is desirable for at least two reasons. First, it responds more precisely to the nature of the problem of copying from collections of information. Second, given the Supreme Court's frequent reiteration in Feist that originality is "constitutionally mandated" for copyright protection, limiting information collectors' rights to misappropriation claims should avoid constitutional conflict.



H.R. 2652 protects against misappropriation of all or a substantial part of a collection of information that required an "investment of substantial monetary or other resources." At first blush, it would seem that almost any collection containing large amounts of data should easily meet the criteria. But some kinds of "collections" of information may not qualify as a "substantial" "investment" because they were neither expensive nor laborious to gather. Because this bill is intended to restore incentives to invest in information-gathering by reestablishing "sweat rights," it is important to ensure that protection attaches only to the "sweat" expended, and not to material "gathered, organized, or maintained" without substantial expenditure of labor or money. Similarly, because more and more information is becoming readily accessible and alphabetizable at the click of a mouse, it should become increasingly important to ascertain whether the compiled information truly required a substantial investment to collect, organize or maintain.



There is no misappropriation unless the extraction harms a "potential market for a product or service that incorporates that collection of information." Looking to the copyright law fair use provision's fourth factor (which this portion of sec. 1201 evokes), one should, as courts interpreting section 107(4) have done, limit the scope of the "potential market" for the collection to markets the collector has actual plans to exploit, or which are typically exploited by collectors of that kind of information. Cf. American Geophysical Union v. Texaco, 60 F.3d 913 (2d Cir. 1995) (construing fourth factor potential markets to be limited to "traditional, reasonable or likely to be developed markets").



The "permitted acts" H.R. 2652 sets forth include important limitations favoring educational and research use. In fact, most aspects of the section on permitted acts are implicit in the articulation of the scope of the misappropriation claim; nonetheless their explicit statement should make clear the narrow scope of the proposed sweat right, and should allay concern that the bill will promote monopolization of information. Moreover, it should be clear from both sections 1201 and 1202(a) that the facts themselves are not protected; the bill covers the substantial extraction of the collection.



STATEMENT

Mr. Chairman, Members of the Subcommittee, my name is Jane C. Ginsburg; I am the Morton L. Janklow Professor of Literary and Artistic Property Law at Columbia University, in New York City, where I teach copyright law, trademark law, and international intellectual property law. I have published several articles on the subject of copyright and sui generis protection of works of information.(1) In addition, I serve on a committee of the American Association of Universities [AAU] that is addressing the needs and role of universities and libraries regarding copyright and other issues arising out of electronic publishing and the internet. I stress, however, that my testimony is solely as an individual academic; the views I express do not purport to be those of the AAU.

Thank you for inviting me to discuss H.R. 2652, the "Collections of Information Antipiracy Act." This bill would provide a federal misappropriation claim against the substantial extraction and offering in commerce of material taken from a collection of information, when the collection was the fruit of the investment of substantial monetary or other resources, and when the extraction or use in commerce harms the information collector's actual or potential market for the collection. The right is narrowly stated, and is accompanied by important exceptions and limitations.

Before examining the bill's provisions, I would like to set this proposal in historical context. Many persons who care about dissemination of information and the promotion of learning are -- appropriately -- concerned that a proliferation of new intellectual property rights will impoverish the public domain and will curtail access to knowledge, without a corresponding need for protection on the part of content providers. But this bill would not create a "new" intellectual property right. Rather, the bill would largely restore the status quo ante-Feist(2), by reinstating protection for the "sweat of the brow" expended by information compilers, that the Supreme Court declared beneath the subject matter of copyright. Restoration of "sweat" protection is intended to provide incentives to gather and disseminate information, and would lessen compilers' need to resort to self-help measures such as technological locks on content and contractual restraints on disclosure or copying.

I will compare the bill's coverage to the scope of protection under pre-Feist "sweat" copyright, and then will consider whether the current text strikes an appropriate balance between incentives to content providers to collect and disclose information on the one hand, and public access to and use of compiled information on the other.



I. Protection for Information Compilers' "Sweat of the Brow" in Historical Perspective

Throughout the nineteenth and well into the twentieth centuries, U.S. courts consistently recognized copyright protection for labor-intensive works of information, despite these works' low (if any) quotient of creativity. Hence, courts protected catalogues, telephone books, and similar exhaustive and conventionally-arranged compilations of information. Reference to some nineteenth-century decisions demonstrates just how overt was judicial protection for the labor and money invested in information gathering.



For example, in an 1875 decision concerning a compilation of New York State rules of court practice, a federal district court declared:

The rights and duties of compilers of books which are not original in their character, but are compilations of facts from common and universal sources of information, of which books, directories, maps, guide books, road books, statistical tables and digests are the most familiar examples, are well settled. No compiler of such a book has a monopoly of the subject of which the book treats. Any other person is permitted to enter that department of literature and make a similar book. But, the subsequent investigator must investigate for himself, from the original sources which are open to all. He cannot use the labors of a previous compiler, animo furandi, and save his own time by copying the results of the previous compilor's study, although the same results could have been attained by independent labor. The compiler of a digest, a road book, a directory, or a map can search or survey for himself in the fields which all laborers are permitted to occupy, but cannot adopt as his own the products of another's toil.(3)

More succinctly, in an 1876 decision regarding financial news bulletins, a New York State court insisted:

It would be an atrocious doctrine to hold that dispatches, the result of the diligence and expenditure of one man, could with impunity be pilfered and published by another. . . . The mere fact that a certain class of information is open to all that seek it, is no answer to a claim to a right of property in such information made by a person who, at his own expense and by his own labor, has collected it.(4)



Thus, the first author's copyright could compel a second author to retread the same ground, lest the second-comer gain competitive advantage through reliance on his predecessor's research.(5)

These examples should suffice to indicate the longstanding practice of protecting information, qua information, when a rival engaged in what the courts perceived to be inadequate effort of its own. In effect, courts throughout the nineteenth and into the twentieth centuries readily reprimanded as copyright infringement conduct that came to be known as the broader unfair competition tort "misappropriation."(6)

But longstanding judicial acceptance of the existence of copyright protection for laboriously gathered factual material does not mean that courts also conferred substantial scope on the copyright coverage of fact-based works. It is important to distinguish these two factors: the availability of copyright did not automatically entail an expansive protective reach. The statement that informational works were copyrighted does not reveal what U.S. courts would or would not deem an infringement.

In fact, the scope of coverage was initially rather modest. The first author might forbid the second comer's copying from the first production, but he could not prohibit a second comer from creating a competing work---if the competitor acquired the same information from primary sources. The copyright proprietor thus might prevent competitors from using the first work to save the time and money of original research, but could claim no rights in the information itself. Others always remained free to do their own fact-gathering. Moreover, the same policies favoring the advancement of knowledge and the rewarding of labor that endowed informational works with copyright exculpated a second comer's reliance on the copyrighted work when he added considerable personal effort to what he copied. Copyright would protect the first author against thieves, but not against those whose investment of their borrowings from the initial source produced a higher net yield.(7) Thus, what I might call the "sweat rights" of the first compiler did not bar the second compilor who, despite copying from the first compilation, invested "added sweat value" to the new endeavor.

In the later twentieth-century, copyright controversies concerning informational works revealed rifts both in the conception of copyrightable subject matter, and in the delineation of the scope of protection. With respect to the subject matter of copyright, some courts stressed the originality prerequisite to copyright protection under the 1976 Copyright Act..(8) These courts viewed sweat copyright as an historical anomaly.(9)

With respect to the scope of protection, many pre-Feist courts that continued to recognize copyright protection under the 1976 Act for compiled information also extended copyright protection not merely to the information in the particular form presented in plaintiff's work, but to other formats that might be imposed upon the collected data.(10) These courts admitted that the primary bases for their rulings were the desire to avoid the economic harm to plaintiffs that would result from a contrary ruling, and the inclination to reprimand the free rider.(11) These courts perceived that the concept of economic harm reached beyond direct competition, for new technologies so facilitated not only copying but preparation of derivative works, that a scope of copyright protection for informational works limited to plaintiff's initial format would afford little meaningful protection. Underlying these decisions was the concern to preserve copyright as an effective incentive to prepare these kinds of informational works.

On the eve of Feist, then, information compilations were, by and large, not only covered against direct copying, but to some extent, were also protected against indirect competitors' rearrangement of their contents. If justification for this coverage under the 1976 Act began to seem anomalous, nonetheless, many courts and commentators nonetheless concluded that protection was too well-entrenched to abandon.(12) That is why the Feist decision provoked such surprise: as the then-Register of Copyrights exclaimed, in Feist, the Supreme Court "dropped a bomb."(13) By contrast, courts from the beginning have consistently emphasized that protection for the compilation conferred no rights in the information itself; second-comers were always free to engage in their own gathering of the same information.

How does the scope of protection articulated in H.R. 2652 compare with the old "sweat copyright"? On the whole, H.R. 2652 establishes a narrowly tailored version of "sweat rights," with an exception for verification of independently-gathered information that is at least as broad (if not broader) than the judge-made version, and with scholarship and news reporting exceptions that courts in compilation copyright cases had not devised. Like the later sweat copyright cases, H.R. 2652 does not limit the scope of protection to copying the totality of the compilation in the form presented by the first compiler, but extends to at least some rearrangements of the copied material. But where some of the sweat copyright decisions reprimanded rearrangement without a showing that the rearranged version competed with or harmed the first compiler,(14) H.R. 2652 requires both that the taking be substantial, and that it "harm [the compiler's] actual or potential market for a product or service that incorporates that collection of information . . ."

H.R. 2652 does not, it should be stressed, create a sub-species of copyright. The rights set forth in proposed section 1201 are rights against misappropriation. Defining the new sweat rights as a misappropriation claim is desirable for at least two reasons. First, it responds more precisely to the nature of the problem of copying from collections of information. Second, given the Supreme Court's frequent reiteration in Feist that originality is "constitutionally mandated" for copyright protection,(15) limiting information collectors' rights to misappropriation claims should avoid constitutional conflict.



II. Analysis of H.R. 2652's substantive provisions

Section 1201. Prohibition against misappropriation

Proposed section 1201 is drafted to be limited to copying that causes commercial harm to the information collector. The elements of the claim require the collector to show:

1. That the collector

a. has made an investment of substantial monetary or other resources;



b. offers [or, with respect to potential markets, would offer] the product or service that incorporates the collection in commerce.



2. That the defendant extracted or used in commerce



a. all or a substantial part of the collection;



b. so as to harm the collector's actual or potential market for a product or service that incorporates that collection.



I have some questions or observations concerning several of these elements. First, what is an "investment of substantial monetary or other resources"? At first blush, it would seem that almost any collection containing large amounts of data should easily meet the criteria. But some kinds of "collection" of information may not qualify as a "substantial" "investment" because they were neither expensive nor laborious to gather. For example, telephone companies do not go out and collect subscriber information; subscribers furnish it to the service. Similarly, databases comprising government-generated information, such as census data, may entail an investment of substantial effort by the government employees who gather and systematize the data, but not by the non government-employee database producer who simply incorporates the data. (Databases produced by "governmental entities" are excluded from the scope of the bill's protection, see sec. 1203(a).) The database producer may still qualify for protection, but on the basis of the value added through verification or presentation of the contents. Because this bill is intended to restore incentives to invest in information-gathering by reestablishing "sweat rights," it is important to ensure that protection attaches only to the "sweat" expended, and not to material "gathered, organized, or maintained" without substantial expenditure of labor or money. Similarly, because more and more information is becoming readily accessible and alphabetizable at the click of a mouse, it should become increasingly important to ascertain whether the compiled information truly required a substantial investment to collect, organize or maintain.

Second, what is a "potential market for a product or service that incorporates that collection of information"? It is possible to consider that a "potential market" is any market the information collector could conceivably license. That interpretation, however, is probably too generous to collectors. Looking to the copyright law fair use provision's fourth factor (which this portion of sec. 1201evokes), one should, as courts interpreting section 107(4) have done, limit the scope of the "potential market" for the collection to markets the collector has actual plans to exploit, or which are typically exploited by collectors of that kind of information. Cf. American Geophysical Union v. Texaco, 60 F.3d 913 (2d Cir. 1995) (construing fourth factor potential markets to be limited to "traditional, reasonable or likely to be developed markets"). Similarly, with respect to a state-law claim of misappropriation of "hot news," in NBA v. Motorola, 105 F.3d 841 (2d Cir. 1997), the claimant was already exploiting some aspects of the subsidiary market for sports score information, and had imminent plans to enter the pager submarket for real-time transmission. It is less clear that the misappropriation doctrine, as applied in NBA, would extend to a third party's new and different reuses of information initially gathered by the claimant when the claimant is not itself exploiting derivative markets for the information. Moreover, the concern to avoid too generous a definition of "potential markets" grows stronger the more independent "value added" the second-comer contributes to the copied information.

Section 1202. "Permitted acts"

Most aspects of this section are implicit in section 1201; nonetheless their explicit statement should make clear the narrow scope of the proposed sweat right, and should allay concern that the bill will promote monopolization of information. First, this section declares the corollary to the section 1201 standard: third parties are liable for extracting or using "all or a substantial part . . ." Section 1202(a) states that the bill does not prevent the extraction or use of individual items or "[an]other insubstantial part" of a collection. Moreover, it should be clear from both sections 1201 and 1202(a) that the facts themselves are not protected; the bill covers the substantial extraction of the collection.

Section 1201 protects the collector's investment; section 1202(b) makes clear that this protection in no way impedes a third party from independently gathering information. Section 1202(c) is a sensible adjunct to the right to expend one's own sweat in independent information gathering: this section permits independent gatherers to verify their information against the prior collector's information.

Section 1202(d) follows from section 1201's limitation of sweat rights to extractions or uses that harm the collector's actual or potential markets: it explicitly authorizes not-for-profit educational, scientific, or research purposes so long as these do not harm actual or potential markets. In practice, this may mean that a researcher may download and redisseminate extractions from collections whose principal customers are not educational or research establishments.

The section 1202(e) news reporting exemption, by contrast, is not limited to extractions that do not harm the actual or potential market for the collection. While it is important to remain sensitive to the first-amendment concerns underlying news reporters' information-gathering, it is not clear to me why the bill permits competing news reporting extractions that harm actual or potential markets. Indeed, it seems to me that omission of the market harm element could lead to anomalous results. For example, a newspaper need no longer subscribe to a wire service; it could simply extract the desired information for free.

Section 1203. Exclusions

Section 1203(a) excludes collections "gathered, organized, or maintained" by, or within the scope of employment by the employee or agent of, a federal, state, or local governmental entity. The exclusion extends to exclusive licensees of governmental entities. This would mean, for example, that private entities who receive from governmental entities exclusive authority to gather, organize, or maintain the information, will not be able to monopolize that information. Suppose, for example, that a state had ceased publishing its own collections of laws or of court decsions, and instead granted a publisher the exclusive right to gather and disseminate those legal documents. Despite its investment, the publisher would not be able to prevent others from extracting and reusing the texts of the laws or the judicial decisions. The exclusive commission the information collector receives to gather the information cannot prevent others from copying.

By contrast, if an information collector gathers material that a government agency subsequently finds useful, the agency's subsequent adoption of the material should not cast the collection into the public domain, lest the adoption effect a "taking". It is one thing if the government transportation authority exclusively commissions me to measure the mileage between all major cities in the U.S., and another if I have already prepared the mileage table, and the state later informs me that it finds my table so useful, it plans to adopt it. Since I was not an "agent" of the government at the time of the table's preparation, the table should not retroactively be considered a government collection.

The meaning of "governmental entities" may require clarification. To the extent that it covers legislatures, administrators, the judiciary, and other bodies whose determinations constitute norms of conduct, due process principles may mandate the public domain status of their collections of information. By contrast, when the information collector is a state university or other public educational or research institution, it may not be desirable to rule out protection against misappropriation. With respect to these institutions, the due process constraints cited above would no longer appear to be present, and the incentive effects of this bill can apply to public as well as private educational and research institutions. The sub-committee should consider, for example, whether the electronic catalogue of a state university library should receive less protection than the electronic catalogue of a private university library.

Section 1203(b) provides that computer programs are not "collections of information." The bill distinguishes the collected information from the computer program used to access the information. Thus, a collection of information is not disqualified from protection under the bill simply because a computer program is used to produce or operate it -- otherwise the bill's coverage would be limited to print collections, and electronic databases would be excluded. On the other hand, the computer program itself is not eligible; this exclusion avoids extending misappropriation protection to computer programs (or components of programs) that fail to meet copyright's originality requirement.

Section 1204. Definitions

This provision defines "information" and "commerce." The former definition is very broad-gauged, as befits a statute designed to promote the collection of information. One feature may warrant an observation: the definition includes "works of authorship." It should nonetheless be clear that the information-collector's rights do not extend to the work of authorship itself, but to the "collection."

The definition of "commerce" as "all commerce which may lawfully be regulated by the Congress" makes clear that this bill is proposed pursuant to the Constitution's Commerce Clause, rather than under the Patent-Copyright Clause. The Supreme Court in Feist appears to have foreclosed the latter source of legislative authority. (See discussion infra.)

Section 1205. Relationship to other laws

Section 1205(a) identifies the other rights, notably copyright and "the law of contract," that are "not affected" by the bill. Section 1205(b), echoing section 301of the Copyright Act, provides that equivalent state law rights in collections of information are preempted, but specifies the state law rights that "shall not be deemed to provide equivalent rights for purposes of this subsection." These non equivalent state law rights include those provided by "the law of contract." Secton 1205(c) reinforces the preservation of contract law by specifying that H.R. 2652 does not "restrict the rights of parties freely to enter into licenses or any other contracts with respect to the use of information."

The non preemption of state contract law may be a controversial feature of H.R. 2652, especially to the extent that mass market contracts may afford greater rights in collected information than does H.R. 2652. For example, a mass market, "shrink wrap" or click-on license might prohibit the user from extracting or using insubstantial amounts, or from extracting or using for educational and research purposes, regardless of market harm.

A threshold question, which is beyond the purview of the bill, is whether such mass market agreements are valid as a matter of contract law. The drafters of the emerging article 2B of the Uniform Commercial Code are currently examining that issue, following the rejection by the National Commissioners on Uniform State Law of an amendment that would have barred mass market licenses that were "inconsistent with the applicable provisions of copyright law."(16)

In the event that UCC 2B determines, as has at least one federal appellate court,(17) that mass market agreements to restrict user privileges are valid, the next question is whether these agreements should be vulnerable to federal preemption. Not all such agreements conflict with federal information policy. For example, H.R. 2652 covers only the "use in commerce" of substantial extracted information. This might not reach limited distribution uses that do not involve transmissions over federally-regulated communications media. Suppose, for example, that the collector sold a print compilation to a corporation, together with a license permitting a limited number of copies. (Suppose also that the compilation lacks sufficient originality for copyright.) The purchaser nonetheless exceeds the license, by making more photocopies of substantial portions of the collection, for internal office use, than the license permitted. It is not clear that these copies were made "in commerce"; the application of H.R. 2652 to this conduct is therefore uncertain. But little if anything in federal information policy suggests that the customer in these circumstances should be permitted to disregard its agreement.

By contrast, other provisions of a mass market license might appear more in tension with the federal information policy implicit in the Constitutional Patent-Copyright clause and the Copyright Act; these provisions might therefore be held preempted under the Supremacy Clause. I believe that the non preemption provision of H.R. 2652 does not preclude inquiry into whether a given contractual provision violates broader intellectual property norms. Patent preemption doctrine reinforces this conclusion. The Patent Act does not contain a preemption clause; nonetheless, the Supreme Court found that a state law protecting unpatented boat hulls conflicted with patent law's exclusion of protection for insufficiently novel or nonobvious designs. See Bonito Boats v. Thundercraft Boats, 489 U.S. 141 (1989). Similarly, H.R. 2652 does not preclude a finding that a contract that prohibits the copying of insubstantial amounts of information is preempted under the Supremacy Clause. H.R. 2652 does not protect information per se. The preemption provisions of H.R. 2652 thus neither uphold nor condemn contractual protection of information. However, the policy implicit in H.R. 2652, as well as in the Copyright Act, that information qua information remains free for copying, should render vulnerable to preemption a mass market prohibition on copying discrete bits of information.

Thus, I believe that H.R. 2652 leaves open to courts the possibility of holding preempted under the Supremacy Clause as in conflict with federal intellectual property policy some mass market contracts that forbid acts that H.R. 2652 permits. Contracts vulnerable under this analysis might include those whose reach is so pervasive that the functional difference between the "contract" and a "property right" is slim, and which forbid conduct that, had a copyrighted work been at issue, would have been deemed fair use (or, under H.R. 2652, would have been deemed not to harm actual or potential markets).(18)

Other issues

Three issues not explicitly addressed in H.R. 2652 warrant consideration: sole source data; duration; and the constitutionality of enacting a federal misappropriation statute for collections of information.

Sole source data

Section 1202(b) reaffirms competitors' rights to gather information independently. But what if the first information collector is the only source for the information? This would not appear to be a problem for government information, given the section 1203(a) exclusion. It may be a problem for some kinds of privately-generated data, and it would be important to explore what kinds of collections are at issue, and whether or not alternative remedies, such as those afforded by antitrust law, suffice to address the problem.

Duration

H.R. 2652 makes no provision as to duration. As a result, the misappropriation claim would in theory be available long after expiration of other intellectual property rights. But that is in theory. In fact, the commercial value of many collections (and therefore the prospect of market harm from extraction) is likely to be more fleeting. Moreover, to the extent that the collection is "dynamic," continually renewing itself with fresh influxes of information, there is no practical difference between a term-less misappropriation right, and a fixed term renewable with each new substantial investment. On the other hand, if this is a bill to provide incentives, one may wonder whether a prospective collector needs potentially perpetual protection before the collector will feel sufficiently encouraged to gather the information.

Constitutionality of H.R. 2652

After Feist's reminders that orginality is a "constitutionally mandated" prerequisite to copyright, the question arises whether originality is also required of any federal statute that protects against copying. If so, then H.R. 2652 risks infirmity, since the standard for a protectible collection is "investment," not originality. H.R. 2652 does not purport to derive its authority from the Patent-Copyright Clause (controlled by Feist), but from the broader Commerce Clause (see discussion supra). Nonetheless, it is doubtful that Congress could enact an "information copyright" statute and escape censure simply by shuffling the pertinent Article I section 8 clause from the Patent-Copyright to the Commerce Clause. Rather, a statute covering unoriginal collections of information would need to depart in substantial ways from the copyright model.

H.R. 2652 appears to meet this standard. Unlike the Copyright Act, the bill does not establish "exclusive rights;" it instititutes a "prohibition against misappropriation." A key element of misappropriation claims is market harm, see, e.g., NBA v. Motorola. By contrast, a copyright owner does not have to prove market harm to make out her case (although the defendant may show lack of potential harm as part of the affirmative defense of fair use). Making harm an element of the claim brings this statute closer to rights against unfair competition, afforded under sections 43 and 44 of the Lanham Federal Trademarks Act, a statute enacted pursuant to the Commerce Clause.

1. See, e.g., Copyright, Contract and Sui Generis Protection for Databases in the US and Abroad, forthcoming 66 U.Cinn. L. Rev. (1997); Digital Libraries and Some of the Copyright Issues they Raise, 169 RIDA 5 (July 1996); No Sweat? Copyright and Other Protection for Works of Information After Feist v. Rural Telephone, 92 Colum. L. Rev. 338 (1992); Creation and Commercial Value: Copyright Protection of Works of Information, 90 Colum. L. Rev. 1865 (November 1990).

2. Feist Pubs., Inc. v. Rural Telephone Serv. Co., 499 U.S. 340 (1991).

3. Banks v. McDivitt, 2 F.Cas. 759, 13 C.O. Bull 101 (C.C.S.D.N.Y. 1875).

4. Kiernan v. The Manhattan Quotation Telegraph Co., 50 How. Pr. 194, 14 C.O. Bull. 1493 (N.Y. Sup. Ct. 1876) (property right in AP foreign financial news).

5. See e.g., Farmer v. Elstner, 33 F. 494, 13 C.O. Bull. 970, 972 (C.C.E.D. Mich. 1888) (appropriation of historical data unique to plaintiff's scholarly work on the history of Detroit by publisher of non competing work, an advertising directory for Detroit; injunction, limited to passages from plaintiff's work, awarded: "defendant has made numerous, but not very lengthy, excerpts from plaintiff's book. These excerpts, however, are from the most valuable part of his work, and contain facts which had never before been published and which were obtained from original sources, at very considerable labor and expense."); Trow Directory, Printing & Bookbinding Co. v. Boyd, 97 F.586, 15 C.O. Bull. 2644 (C.C.S.D.N.Y. 1899) (injunction entered against directory compilor some of whose canvassers, rather than conducting independent surveys simply copied from plaintiff's directory); Sampson & Murdock Co. v. Seaver-Radford Co., 140 F. 539 (1st Cir. 1905) (Boston city business directory: defendant made original canvass, then used plaintiff's directory for verification, and went to original sources for confirmation; court enunciated principle that second-comer cannot benefit by predecessor's expenditure of "time labor and capital;" in holding infringement, the court emphasized that 20,000 (or 12%) names in defendant's directory were gathered from plaintiff's). Cf. Edward Thompson Co. v. American Law Book Co., 122 F.922 (2d Cir. 1903) (no infringement to use plaintiff's legal encyclopedia as a source for case citations, when defendant contributed its own commentaries and descriptions to the citations; declaration "If it be held that an author cannot consult the authorities collected by his predecessors, the law of copyright, enacted to promote the progress of science and useful arts, will retard that progress," 122 F. at 923, understood in context, concerns the leeway allowed diligent creators of substantially original works to rely on predecessors' efforts; the statement does not suggest that second-comers may be dispensed from independent labors.) See also Dun v. Lumbermen's Credit Ass'n., 209 U.S. 20 (1908) (limitation of plaintiff's recovery to a remedy at law, when defendant had copied some listings from plaintiff's credit reports, but had also engaged in such substantial, and costly, independent efforts that defendant's compilation contained more information than plaintiff's).

6. The classic misappropriation decision is International News Service v. Associated Press, 248 U.S. 215 (1918), in which the Supreme Court announced a federal general common law "quasi-property" right in the dissemination of information. At issue were news reports, published by AP on the East Coast, where they were copied by rival INS and relayed to INS' Midwest and West Coast papers, simultaneously or even ahead of their receipt by AP's local counterparts. The information was not copyrighted; AP had not complied with copyright formalities when it published the bulletins; moreover,"information concerning current events" was not subject to "the exclusive right for any period to spread the knowledge of [them]." Id. at 234. The actual holding of INS was fairly narrow: it granted AP protection against its competitor during the period of initial dissemination of the information to AP's members.

7. Cary v. Kearsley, 4 Esp. 168, 170 (K.B. 1802); Webb v. Powers, 29 Fed. Cas. (No. 17,323) 511, 517 (C.C.D. Mass. 1847). See also Sayre v. Moore, 1 East 361n, 102 Eng. Rep. 139n (K.B. 1785) (Mansfield, L.J.)(limiting scope of protection for fear of putting "manacles upon science").

8. Financial Info. Inc. v. Moody's Inv. Serv., 808 F.2d 204 (2d Cir. 1986), cert. denied, 484 U.S. 820 (1987) (index cards bearing bond call information lack sufficient subjective authorship to qualify as original works of authorship); Southern Bell, supra note 8, 756 F.2d at 809 (directory meets 102(a) originality requirement "when the directory is the product of subjective `selection, organization and arrangement of the preexisting materials'"); Eckes v. Card Prices Update, 736 F.2d 859 (2d Cir. 1984) (listing of baseball cards held copyrightable because subset of listings displayed subjective selection); Dow Jones & Co. v. Board of Trade, 546 F.Supp. 113 (S.D.N.Y. 1982) (stock market index displays sufficient subjective choice of listed stocks).

9. See, e.g., Southern Bell Tel. & Tel. Co. v. Assoc. Tel. Dir. Pubs., 756 F.2d 801, 809 (11th Cir. 1985) (industriousness no longer a relevant criterion of copyrightability under the 1976 Copyright Act); Miller v. Universal City Studios, 650 F.2d 1365, 1369 (5th Cir. 1981) (pre-1976 Act directory cases better viewed as "in a category by themselves"; copyright in directories now "properly viewed as resting on the originality of the selection and arrangement of the factual material, rather than on the industriousness of the efforts to develop the information.")

10. See, e.g., Illinois Bell Tel. Co. v. Haines & Co., 683 F.Supp. 1204 (N.D. Ill. 1988), aff'd., 15 USPQ 2d 1353 (7th Cir. 1990); National Business Lists v. Dun & Bradstreet 552 F.Supp. 89 (N.D. Ill. 1982). See also Rockford Map Pubs., Inc. v. Dir. Serv. Co., 768 F.2d 145 (7th Cir. 1985), cert. denied, 106 S.Ct. 806 (1986).

11. See, e.g., National Business Lists, supra note 10, Rockford Map, supra note 10.

12. See, e.g., National Business Lists, supra note 10; Rand McNally v. Fleet Mgmt., 591 F.Supp. 726 (N.D. Ill. 1983); Robert Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516 (1981)(reviewing doctrine).

13. Hearing Before the House Subcommittee on Intellectual Property and Judicial Administration, 102d Cong. 1st sess. (April 10, 1991), Statement of Ralph Oman, Register of Copyrights, at p. 8.

14. See, e.g., Haines, supra, note 10; Leon v. Pacific Tel. & Tel., 91 F.2d 484 (9th Cir. 1937).

15. See Paul Goldstein, Copyright, 38 J. Copyright Soc. 109, 119 (1991) (Feist declares a constitutional originality standard "no fewer that thirteen times").

16. The concern that mass market contracts might conflict with the user privileges established under copyright law sparked the proposal of an amendment to UCC 2B-308 that would have provided "In mass market licenses a term that is inconsistent with applicable provisions of copyright law cannot become part of a contract." Members of the American Law Institute passed the proposal by a vote of 86-83 at the Annual Meeting of the ALI, May 20, 1997. The amendment provoked strong opposition from many quarters, and on July 29, the National Conference of Commissioners on Uniform State Laws adopted a motion rejecting the amendment, in favor of a "position of neutrality." The NCCUSL motion states:



In light of the significant concerns expressed by federal regulatory agencies, the major stock commodity and mercantile exchanges and the software, publishing, entertainment and information industries, the Committee of the Whole believes that Article 2B should not address in its text the subject matter of the so-called McManis motion, but should adopt a position of neutrality on the issues which are being activly debated at federal and international levels. This position of neutrality should be stated in the official comments. In light of the concerns articulated and this view, the Committee of the Whole respectively suggests that ALI revisit the position expressed in a narrow vote at its 1997 Annual Meeting.

17. See ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996).

18. For more detailed explanation of the application of fair use analysis to the preemption of shrink wrap licenses covering information products, see Maureen O'Rourke, Copyright Preemption After the ProCD Case: A Marked-Based Approach, 12 Berkeley Tech. L.J. 53 (1997).