Database Regulations: One Year On

June 30, 1999

Karen Leyshon is a IT Specialist Solicitor with Morgan Cole,based in Reading.

On 1 January 1998 the European Directive on Databases was introducedinto UK law by way of the Copyright and Rights in Databases Regulations 1997. Itwould seem to be a good time now, more than one year later, to reflect on howthe new legislation assists the database compiler or perhaps more to the point,consider what new problems have been generated.

To be fair, we first need to put the legislation into context. Previously,copyright provided the sole protection for databases and many considered this tobe unsatisfactory. Copyright protection lasts for 70 years form the death of thework’s author and so the continual updating of databases gave rise to thequestion of whether each version of the database would be covered by successive70-year periods of protection. This extensive period of protection was obviouslyinappropriate for the type of work involved.

Even more basic than this was the question of whether some databases would becovered by copyright protection at all. We in the UK were considered to be outof step with our European neighbours by granting protection for all databases solong as they were not copied from other works. The European approach required amore creative input on the part of the author and there were also indicationsthat the US was beginning to move away from our point of view when the USSupreme Court refused copyright protection for a database lacking intellectualcreation.

There was also the problem of what would amount to an infringement ofcopyright in the database. The law states that copyright is infringed where thewhole or the substantial part of the work is copied but the age-old problem ofwhat in fact constitutes a substantial part of the work is exacerbated by thenature of databases and how they are used. For example, does the continuedcopying of small parts of a database constitute an infringement?

The new regulations do much to overcome these problems both by bringing UKcopyright law into line with Europe and by creating the new database rights. Theregulations cover any form of database whether electronic or paper based fromCD-ROMs to printed directories, including literary, artistic, musical or othercollections of works as well as material such as text, sound, images, numbers,facts and data.

Only those databases which can be said to be the result of the author’s ownintellectual creation by virtue of the selection of arrangement of the contentsof the database are protected by copyright. Copyright protection gives theowner, whether he be the author or, where the work is created in the course ofemployment, the employer, the right to prevent others copying the whole orsubstantial parts of the database. What amounts to a substantial part is hard todetermine; the test is both qualitative and quantitative, but what copyrightprotects is the arrangement of the database and not the facts or data itcontains.

Databases lacking in creativity, though still being the product ofsubstantial investment of time, money and effort, are now protected by databaserights. The maker of a database, defined as the person who takes the initiativein making a database and assumes the risk of investing in its making, will ownthe database rights which will provide a 15-year period of protection. Theserights provide the maker with not only the right to prevent the extraction orreutilization of all or substantial part of the contents of the database,echoing the rights under copyright law, but go further and give strongerprotection by stating that this threshold is also satisfied by the repeated useof insubstantial parts of those contents.

Thus, the thorny issue under copyright law of what amounts to a substantialpart is now overcome. Also the previous uncertainty which existed undercopyright law of whether or not a work would be protected at all is swept asideand the database compiler can now be assured that his investment is protectedunder the new regulations irrespective of creativity or intellectual input.Furthermore, the new regulations go a long way to protecting the actual contentsof the database and not just its arrangement by virtue of restricting the act ofextraction.

However, problems are very likely to arise in the near future on issues ofownership when databases are protected by both copyright and database rights.Where the database is created in the course of employment, the employer will ownboth rights. If, however, the database is created by an independent consultant,in the absence of contractual provisions to the contrary, the consultant willown copyright in the database but the database rights will be owned by theperson paying for the work. Databases are frequently updated. Therefore, it isnot inconceivable that successive updates will be created by differentconsultants with the result that one database will be owned by a host ofindividuals, the use by any one of which will require the licence of all otherparties.

This underlines, now more than ever before, the importance of setting outownership of intellectual property rights on a contractual basis. Ideally, theperson paying for the work should secure an assignment of a copyright to ensurehe is free to use the database in whatever way he decides.

To make the most of the new regulations the database compiler should wherepossible redesign the work so that copyright protection subsists; in any event,the compiler must maintain clear and detailed records of time and money spent toensure the database rights apply and can be enforced.