Vol 7 No 1 - Roger Williams University School of Law
Vol 7 No 1 - Roger Williams University School of Law Vol 7 No 1 - Roger Williams University School of Law
copying of “a work protected under this title” [i.e., Title 17 of theU.S. Code], and removal or alteration of “copyright” managementinformation without the authority of the copyright owner.55 Thus,the DMCA would not seem to protect uncopyrightable databases.However, a party engaging in either circumvention oftechnological protection measures or deletion or alteration ofmanagement information associated with an ostensiblyuncopyrightable compilation of data apparently bears the riskthat the database will turn out to contain copyrightable subjectmatter, thereby subjecting the party to liability under the DMCA.Thus, the DMCA appears to provide inadvertent legal protectionfor self-help technological and contractual measures designed todeter data piracy.In addition to and complementing the DMCA, another potentlegislative source of protection for databases can be found in therecently promulgated Uniform Computer InformationTransactions Act (UCITA), which is explicitly designed to makeenforceable so-called “shrinkwrap” and “click-wrap” licenses.56UCITA has now been adopted in two states,57 thus creating theprospect that database contents can be effectively protected by acombination of technological protection measures and “click-wrap”contracts—in short, a kind of “electronic trade secret” protection.Even before UCITA was promulgated, the potency of this formof database protection had been illustrated in cases such asProCD, Inc. v. Zeidenberg,58 the facts of which are stronglyreminiscent of Feist. In ProCD, the plaintiff compiled more than3,000 telephone directories into a computer database and sold aversion of the database on CD-ROMs, accompanied by ashrinkwrap license encoded on the CD-ROMs, as well as printed55. Id. §§ 1201, 1202.56. Uniform Computer Information Transaction Act (UCITA), available athttp://www.law.upenn.edu/bll/ulc/ucita/ucitsFinal00.htm; see also, Amelia H. Boss,Taking UCITA on the Road: What Lessons Have We Learned?, 7 Roger Williams Univ.L. Rev. 179, 180 n.1 (2001).57. See Md. Code Ann., Com. Law II § 22 (Supp. 2001); Va. Code Ann. § 59.1-43(Michie 2001). For detailed information about the ongoing debate over the UniformComputer Information Transactions Act, see www.ucitaonline.com.58. 86 F.3d 1447 (7th Cir. 1996); see also Hill v. Gateway 2000, Inc., 105 F.3d1147 (7th Cir. 1997), cert. denied, 118 S. Ct. 47 (1997); Brower v. Gateway 2000, Inc.,676 N.Y.S.2d 569, 570 (N.Y. Sup. Ct. 1998); M.A. Mortenson Co. v. Timberline SoftwareCorp., 970 P.2d 803 (Wash. Ct. App. 1999); but see Step-Saver Data Sys., Inc. v. WyseTech., 939 F.2d 91 (3d Cir. 1991); Klocek v. Gateway, Inc., 104 F. Supp. 2d 1332 (D.Kan. 2000); U.S. Surgical Corp. v. Orris, Inc., 5 F. Supp. 2d 1201 (D. Kan. 1998).
in an instruction manual, which limited the use of the database tonon-commercial purposes.59 The defendant, Matthew Zeidenberg,bought a copy of the CD-ROM but decided to ignore the licenseand began reselling the information on the Internet to anyonewilling to pay a price that was less than what ProCD charged itscommercial customers for the database.60 ProCD filed suit,seeking an injunction against any further dissemination thatexceeded the rights specified in the license.61 The district courtrefused to grant relief, holding that the licenses were ineffectualbecause their terms did not appear on the outside of the CD-ROMpackages, and that even if the license terms were enforceablecontracts, they were preempted under section 301(a) of the UnitedStates Copyright Act.62 In an opinion by Judge FrankEasterbrook, the Court of Appeals for the Seventh Circuitreversed and remanded with instructions to enter judgment forthe plaintiff. The court of appeals held that the contracts wereenforceable under Article 2 of the Uniform Commercial Code andnot preempted by federal copyright law.63 Though the case iscontroversial, it nevertheless underscores the potency of existinglegal protections for databases under U.S. law.Meanwhile, the European Union, recognizing its shrinkingmarket share in the global information industry, promulgated itslandmark 1996 Database Directive requiring member countries toimplement sui generis protection that accords a broad,transferable right to prevent the extraction and/or utilization ofthe whole, or a substantial part (evaluated qualitatively and/orquantitatively), of the contents of a database, whether or notcopyrightable.64 The Directive makes it equally clear that themaker of a database may not prevent a lawful user fromextracting and/or re-utilizing insubstantial parts of the database,evaluated qualitatively and/or quantitatively, for any purposewhatsoever, and that any contractual provision to the contrary59. See ProCD, 86 F.3d at 1449-5060. Id. at 1450.61. Id.62. Id. at 1450, 1453.63. Id. at 1452-55. For a critique of the ProCD decision, see Charles R. McManis,The Privatization (or “Shrink-wrapping”) of American Copyright Law, 87 Cal. L. Rev.173, 178-79, 182-84 (1999).64. EU Database Directive, supra note 4, at art. 7.
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copying <strong>of</strong> “a work protected under this title” [i.e., Title 17 <strong>of</strong> theU.S. Code], and removal or alteration <strong>of</strong> “copyright” managementinformation without the authority <strong>of</strong> the copyright owner.55 Thus,the DMCA would not seem to protect uncopyrightable databases.However, a party engaging in either circumvention <strong>of</strong>technological protection measures or deletion or alteration <strong>of</strong>management information associated with an ostensiblyuncopyrightable compilation <strong>of</strong> data apparently bears the riskthat the database will turn out to contain copyrightable subjectmatter, thereby subjecting the party to liability under the DMCA.Thus, the DMCA appears to provide inadvertent legal protectionfor self-help technological and contractual measures designed todeter data piracy.In addition to and complementing the DMCA, another potentlegislative source <strong>of</strong> protection for databases can be found in therecently promulgated Uniform Computer InformationTransactions Act (UCITA), which is explicitly designed to makeenforceable so-called “shrinkwrap” and “click-wrap” licenses.56UCITA has now been adopted in two states,57 thus creating theprospect that database contents can be effectively protected by acombination <strong>of</strong> technological protection measures and “click-wrap”contracts—in short, a kind <strong>of</strong> “electronic trade secret” protection.Even before UCITA was promulgated, the potency <strong>of</strong> this form<strong>of</strong> database protection had been illustrated in cases such asProCD, Inc. v. Zeidenberg,58 the facts <strong>of</strong> which are stronglyreminiscent <strong>of</strong> Feist. In ProCD, the plaintiff compiled more than3,000 telephone directories into a computer database and sold aversion <strong>of</strong> the database on CD-ROMs, accompanied by ashrinkwrap license encoded on the CD-ROMs, as well as printed55. Id. §§ 1201, 1202.56. Uniform Computer Information Transaction Act (UCITA), available athttp://www.law.upenn.edu/bll/ulc/ucita/ucitsFinal00.htm; see also, Amelia H. Boss,Taking UCITA on the Road: What Lessons Have We Learned?, 7 <strong>Roger</strong> <strong>Williams</strong> Univ.L. Rev. 179, 180 n.1 (2001).57. See Md. Code Ann., Com. <strong>Law</strong> II § 22 (Supp. 2001); Va. Code Ann. § 59.1-43(Michie 2001). For detailed information about the ongoing debate over the UniformComputer Information Transactions Act, see www.ucitaonline.com.58. 86 F.3d 1447 (7th Cir. 1996); see also Hill v. Gateway 2000, Inc., 105 F.3d1147 (7th Cir. 1997), cert. denied, 118 S. Ct. 47 (1997); Brower v. Gateway 2000, Inc.,676 N.Y.S.2d 569, 570 (N.Y. Sup. Ct. 1998); M.A. Mortenson Co. v. Timberline S<strong>of</strong>twareCorp., 970 P.2d 803 (Wash. Ct. App. 1999); but see Step-Saver Data Sys., Inc. v. WyseTech., 939 F.2d 91 (3d Cir. 1991); Klocek v. Gateway, Inc., 104 F. Supp. 2d 1332 (D.Kan. 2000); U.S. Surgical Corp. v. Orris, Inc., 5 F. Supp. 2d 1201 (D. Kan. 1998).
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