Intellectual Property, Science and Databases
Dr Charlotte Waelde
Co-director, AHRB Research Centre for Studies in
Intellectual Property and Technology Law,
School of Law,
University of Edinburgh
Intellectual Property
IP rights: designed to encourage innovation by giving
a limited monopoly over exploitation of certain
rights for a set period of time.
The difficulty: granting exclusive rights can restrict
collaboration and free flow of information which
may hinder scientific development.
The balance?
Types of Intellectual Property
•
•
•
•
Patent
Copyright
Trade Marks
Designs
• Focus today is on the database right – based on copyright
Copyright and database right – the differences
•
•
Copyright:
protects expression of original artistic, literary, dramatic and
musical works. e.g. books, plays and software. Also protects the media
through which the basic rights are exploited such as sound recordings
and broadcasts.
work requires to be fixed; no need for registration.
copyright does not protect ideas, facts, ‘small’ works
Database right – Europe and not US (but note relevance of contract and
use of technological protection measures).
protects collections of independent works, data or other materials
which are arranged in a systematic or methodical way and are
individually accessible by electronic or other means.
does not (is not supposed) to protect data as such but gives the
right to the maker to prohibit extraction and re-utilisation of a substantial
part of the contents of a database without consent
Database right
Why have it?
To create digital files of, for example, collections of medical journals, or images from art galleries or the daily business
of the stock exchange is a very costly business. Right prevents others free riding on that investment.
Introduction of right coincided with rise in the number of new database companies in Europe. However rise has not
been sustained.
Criticisms
‘database laws…place an overriding emphasis on protecting original investments and on augmenting purportedly
necessary economic incentives to create new databases. At the same time, they undervalue the adverse effects
on scientific and technical progress, as well as the aggregate economic and social costs inherent in restricting
and discouraging the downstream applications and transformative uses of …databases in general…an overly
protective database regime would seriously impede the use, reuse, and transformation of the factual data that
are the lifeblood of science and technology. 1999 J.H. Reichman and Paul F. Uhlir.
Support
Single Market Commissioner Mario Monti
This innovative and comprehensive measure will ensure an appropriate level of protection for database makers and
investors throughout the EU. The Directive strikes a balance between the interests of the manufacturers of
databases and the legitimate interests of their users. Particular account has been taken of situations in which
the extraction of contents of databases is required for teaching purposes as well as for scientific research.
Note: lobby for protection came from commercial compilers of information who obtain that information from
elsewhere
Databases: the rights and limitations
•
•
•
•
Right owner is the maker of the database: person who takes the initiative in
obtaining, verifying or presenting the contents of a database and assumes
the risk of investing in that obtaining verification or presentation
The right to prevent extraction and re-utilisation of the whole or a
substantial part of the contents of the database. Includes the repeated or
systematic extraction of insubstantial parts parts of the database
Lasts 15 years from making subject to extensions when updated and added
to database. A dynamic database will have on-going protection
Not infringed if extracted – but not re-utilised - for purposes of illustration
for teaching or research – but not any commercial purpose
Databases – the pending case law
•
Majority of complaints arisen from small companies who produce
synthetic data – stuff they do not discover themselves but which they
gather – such as telephone listings. Would-be competitors cannot get this
information themselves and only have the option of copying.
Cases currently before the ECJ to decide the following points:
1.
what amounts to a substantial investment for qualification of the right?
2.
does the right accrue where the database is a ‘spin-off’ from investment in
another field – e.g. where broadcasters schedule television programmes
the ‘spin-off’ is a list of television programmes?
3.
what amounts to repeated and systematic extraction?
4.
does the right cover instances where information is generated/created and
cannot be obtained from alternative sources? Right was supposed to
protect investment in gathering processing and publishing pre-existing
data – not discovered data
Databases and science- ownership
Collaborative work: existing databases; combining databases;
new rights; questions of ownership. Making amendments:
ownership, authenticity and integrity? Note relevance of
copyright: attribution, authorship and ownership.
Databases and science – access and use
Open access to scientists for non-commercial research? Are you permitted to
discriminate? What is non-commercial? What about commercial parties?
What of spin-off products that could be exploited commercially?
Inclusion of datasets from commercial companies? Licensing terms restricting
use of data? How do you know what may be used when combined into
the whole? Are there reach-through provisions concerning onward use?
Who owns the resultant joint product?
What if commercial companies fund research? Will a commercial restriction have
an effect on the dynamics of the group? Complex cross-licensing
arrangements which could be the subject of difficult and protracted
negotiation to set up and create uncertainty for those involved?
What about other IPRs such as patents in relation to the outcomes of the
collaborative development of the database?
Innovative IP frameworks within existing boundaries
Royal Society: Keeping Science Open: The Effects of Intellectual Property
Policy on the Conduct of Science (2003), the assertion of IP rights is
acknowledged as being a potential problem for the scientific community in
particular by hindering the free exchange of ideas and information on
which science thrives.
Alternatives:
– keep open and resolve not to exert rights – e.g. copyleft, creative commons licences.
Public domain. But would not prevent third parties from re-packaging and selling
- access conditions. But generally only good as against contracting parties; what
happens when third parties want to exploit? Complex licensing strategies
(commercial interests)
- system should dovetail with scientific need (e.g. provenance and annotation)
Challenge: Have a strategic vision and develop innovative responses recognising
commercial pressures and understanding those instances in which advantage
might be taken by third parties