No.
02–428
In The
Supreme Court of the United States
________
DASTAR CORPORATION,
Petitioner,
v.
twentieth
century fox film corporation,
sfm entertainment llc and
new line home video, inc.,
Respondents.
________
On Writ of
Certiorari to the
Court of Appeals
for the Ninth Circuit
________
brief amici curiae of american library association, association of
research libraries, special libraries association, medical library association,
american association of law libraries, digital future coalition, u.s.
association for computing machinery, electronic frontier foundation, public knowledge,
netcoalition, Computer & Communications industry association, and bloomberg
l.p. in support of petitioner
________
peter jaszi jonathan
band*
of law 2000
american university
4801 mass. ave., nw
(202) 284-4216
TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES................................................. ii
INTEREST OF AMICI CURIAE.......................................... 1
SUMMARY OF ARGUMENT............................................ 4
ARGUMENT....................................................................... 5
I. LOWER COURT INTERPRETATIONS OF THE LANHAM
ACT UNDERMINE THIS COURT’S DECISION IN FEIST........................................ 5
II. FEIST
IS UNDER ATTACK FROM NUMEROUS QUARTERS 8
A. Three Causes of
Action Related to Digital Technology Undercut Feist 9
B. Database
Legislation Has Been Introduced To Overturn Feist 14
III. CONGRESS CANNOT USE THE COMMERCE CLAUSE TO
END-RUN THE INTELLECTUAL PROPERTY CLAUSE..................................... 16
CONCLUSION................................................................ 19
TABLE OF AUTHORITIES
Page
CASES
American Movie
Classics Co. v. Turner Entertainment Co.,
922 F. Supp.
926 (S.D.N.Y. 1996)......................................................... 9
Arpaia v. Anheuser
Busch Cos., 55 F. Supp. 2d 151 (W.D.N.Y.
1999) 9
Berkla v. Corel
Corp., 66 F. Supp. 2d 1129
(E.D. Cal. 1999)................................................................. 9
Bonito Boats, Inc., v. Thunder Craft Boats, Inc., 489
Bowers v. Baystate Techs., Inc.
Case No. 01-1108, 2003 U.S. App. LEXIS 1423 (Fed. Cir.
479
Compco Corp. v. Day-Brite Lighting, Inc.,
376
eBay, Inc., v. Bidder's Edge, Inc., 100 F. Supp. 2d 1058 (N.D. Ca. 2000) 10, 11
EF Cultural
Page
EF Cultural Travel BV v. Zefer Corp.,
No. 01-2001, 2003 U.S. App. LEXIS 1336 (1st Cir. January 28, 2003) 13
Eldred v. Ashcroft,
123
U.S.L.W. 4052 (2003)..................................................... 19
Endemol Entertainment, B.V. v. Twentieth Television, Inc., 48 U.S.P.Q. 2d 1524
(C.D. Cal. 1998)................................................................ 9
Feist Publications, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340 (1991)................................................. passim
Frontline Test Equipment, Inc. v. Greenleaf Software, Inc., 10 F. Supp. 2d 583
(W.D. Va. 1998).............................................................. 10
Goldstein v.
Graham v. John Deere Co.,
383
Harper & Row, Publishers, Inc., v. Nation Enters., 471
Higher Gear Group v. Rockenbach Chevrolet Sales, Inc., 2002
(N.D.
Morgan Labs., Inc.
v. Micro Data Base Sys., Inc.,
41 U.S.P.Q. 2d 1850 (N.D. Cal.1997)............................... 9
Nat'l Car Rental
Sys., Inc. v. Computer Assocs.,
... Int'l, Inc., 991 F.2d 426 (8th Cir.), cert. denied,
... 510
Page
Novell, Inc. v. Network Trade Ctr., Inc., 187 F.R.D. 657 (D.
Oyster Software Inc., v. Forms Processing, Inc.,
No. C-00-0724, 2001
ProCD, Inc. v. Zeidenberg, 86 F.3d 1447
(7th Cir. 1996).................................................................... 9
Railway Labor Executives' Ass'n v. Gibbons,
455
Register.com, Inc. v. Verio, Inc., 126 F.
Supp. 2d 238 (S.D.N.Y. 2000)............................ 11,
13, 14
Sears, Roebuck & Co. v. Stiffel Co., 376
225 (1964)....................................................................... 10
Selby v. New Line Cinema Corp., 96 F.
Supp. 2d 1053 (C.D. Cal. 2000)........................................ 9
Step-Saver Data Sys. v. Wyse Tech., 939 F.2d 91
(3d Cir. 1991).................................................................... 9
Ticketmaster Corp. v. Tickets.com, Case
No. CV99-7654, 2000
Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th
Cir. 1988) 10
Waldman Publ'g Corp. v. Landoll, Inc., 43 F.3d 775 (2d Cir. 1994) 6
Page
Wrench LLC v. Taco Bell Corp., 256 F.3d 446
(6th Cir. 2001), cert. denied, 534
U.S. Const. article
I, § 8, cl. 8............................................... 16
15 U.S.C. § 1125(a)
(2000).......................................... passim
17 U.S.C. § 301(a)
(2000)..................................................... 9
18 U.S.C. § 1030
(2000)..................................................... 12
OTHER AUTHORITIES
Jonathan Band and Makoto Kono, The Database Protection Debate in the 106th Congress,
Jonathan Band and
Laura F.H. McDonald, The Proposed EC
Database Directive: The "Reversal" of Feist v. Rural Telephone, 9
The Computer Lawyer 19 (June 1992) 15
Yochai Benkler, Constitutional Bounds of Database
Protection: The Role of Judicial Review in the Creation and Definition of
Private Rights in Information, 15
Dan L. Burk, The Trouble with Trespass, 4 J. Small
& Emerging Bus. L. 27 (2000) 12
Page
Edward W. Chang, Bidding on Trespass: eBay, Inc. v. Bidder's
Edge, Inc. and the Abuse of Trespass Theory in Cyberspace Law, 29 AIPLA Q.
J. 445 (2001)............ 12
Julie E. Cohen, Copyright and The Jurisprudence of Self-Help,
13
H.R. Rep. No.
106-349 (1999)............................................ 15
H.R. Rep. No.
105-525 (1998)............................................ 16
Dennis S. Karjala, Federal Preemption of Shrinkwrap and
On-Line Licenses, 22 U.
Niva Elkin-Koren, Let the Crawlers Crawl: On Virtual Gatekeepers
and the Right to Exclude Indexing, 26 U.
Mark A. Lemley, Beyond Preemption: The Law and Policy of
Intellectual Property, 87
Charles R. McManis,
The Privatization (or
"Shrinkwrapping") of American Copyright Law, 87 Calif. L. Rev.
173 (1999)....................................................................... 10
Melville B. Nimmer
and David Nimmer, Nimmer on Copyright (2002) 10
Maureen A. O'Rourke, Shaping Competition on the Internet: Who
Owns Product and Pricing Information?, 53 Vand. L.Rev. 1965 (2000).......................................... 12
Page
William Patry, The Enumerated Powers Doctrine and
Intellectual Property: An Imminent Constitutional Collision, 67
Letter from Robert
Pitofsky, Chairman, Federal Trade Commission, to the Hon. Tom Blilely, Chairman,
Committee on Commerce, United States House of Representatives
(September 28, 1998) 15
Malla Pollack, The Right to Know?: Delimiting Database Protection at the Juncture of
the Commerce Clause, the Intellectual Property Clause and the First Amendment,
17 Cardozo Arts & Ent. L.J. 47 (1999)........................................................................................ 15
David A. Rice, Public Goods, Private Contract and Public
Policy: Federal Preemption of Software License Prohibitions Against Reverse
Engineering, 53 U. Pitt. L. Rev. 543 (1992) 10
Council Directive
96/9/EC of
the Legal Protection of Databases, 1996 O.J.
(L77) 20.......................................................................... 15
Memorandum from
William Michael Treanor, Deputy Assistant Attorney, United States Department of
Justice, for William P. Marshall, Associate White House Counsel
(July 28, 1998) 15
The
American Library Association (ALA), the oldest and largest library association
in the world, is a nonprofit organization of over 64,000 librarians, library
trustees, and other friends of libraries dedicated to the development,
promotion, and improvement of library and information services to enhance
learning and ensure access to information for all.
The Association of Research Libraries
(ARL) is a nonprofit organization of 124 research libraries in
The American Association of Law
Libraries (AALL) is a nonprofit educational organization with 5,000 members
dedicated to providing leadership and advocacy in the field of legal
information and information policy.
The Medical Library Association (MLA) is
a nonprofit, educational organization of more than 1,100 institutions and 3,800
individual members in the health science information field.
The Special Libraries Association (SLA)
is an international professional association serving more than 14,000 members
of the information profession, including special librarians, information
managers, brokers, and consultants.
Digital Future Coalition (DFC) is
committed to striking an appropriate balance in law and public policy between
protecting intellectual property and affording public access to it. The DFC is the result of a unique collaboration
of many of the nation's leading non-profit educational, scholarly, library, and
consumer groups, together with major commercial trade associations representing
leaders in the consumer electronics, telecommunications, computer, and network
access industries. Since its inception
in 1995, the DFC has played a major role in the ongoing debate regarding the
appropriate application of intellectual property law to the emerging digital
network environment.
U.S. Association for Computing Machinery
(Public Policy Committee) is a leading professional association of computer
scientists and other information technology professionals dedicated to
advancing the art, science, engineering and application of information
technology. The United States Public
Policy Committee of the Association for Computing Machinery (USACM) serves as
the focal point for ACM's interactions with
Electronic Frontier Foundation (EFF) is a nonprofit
public interest organization dedicated to protecting civil liberties and free
expression in the digital world. EFF
actively encourages and challenges industry and government to support free
expression, privacy, and openness in the information society. Founded in 1990, EFF is based in
Public
Knowledge (PK) is a nonprofit advocacy and education organization dedicated to
ensuring that intellectual property laws and technology policies promote the
interests of the public. PK works with a wide spectrum of stakeholders to
promote the core conviction that some fundamental democratic principles and
cultural values – openness, access, and the capacity to create and compete –
must be given new embodiment in the digital age.
NetCoalition serves as the public policy
voice for some of the world’s most innovative Internet companies on the key
legislative and administrative proposals affecting the online world. NetCoalition provides creative and effective
solutions to the critical legal and technological issues facing the
Internet. By enabling industry leaders,
policymakers, and the public engage directly, NetCoalition has helped ensure
the integrity, usefulness, and continued expansion of this dynamic new medium.
The Computer & Communications
Industry Association (CCIA) is an association of computer, communications,
Internet and technology companies that range from small entrepreneurial firms
to some of the largest members of the industry.
CCIA’s members include equipment manufacturers, software developers,
providers of electronic commerce, networking, telecommunications and online
services, resellers, systems integrators, and third-party vendors. Its member companies employ nearly one
million people and generate annual revenues exceeding $300 billion. CCIA's mission is to further the interests of
its members, their customers, and the industry at large by serving as the
leading industry advocate in promoting open, barrier-free competition in the
offering of computer and communications products and services worldwide.
Bloomberg L.P., founded in 1981, is an information
services, news, and media company serving customers in 126 countries around the
world. The company employs more than
7,600 people in 108 offices worldwide.
Clients include the world's central banks, investment institutions,
commercial banks, government offices, and agencies, corporations, and news
organizations.
Amici do not have a direct financial interest
in the outcome of the case. However, amici are deeply concerned about the
impact the resolution of this case may have
on the information policy articulated by a unanimous Court in Feist Publications, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340 (1991). In that
case, the Court interpreted the Constitution as prohibiting copyright
protection for the facts contained in a database. The Court concluded that the Constitution's
objective of promoting "the Progress of Science and useful arts" was
accomplished by "encourag[ing] others to build freely upon the ideas and
information conveyed by a work."
In Feist
Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991), the Court
held that the Constitution’s Intellectual Property Clause precluded copyright
protection for facts. A publisher may
copy raw facts at will and include them in a new database. The lower courts’ interpretations of Section
43(a) of the Lanham Act could sharply limit the practical effect of Feist by requiring a publisher to
provide detailed attribution of the source of each fact that it included in its
new database. This could have a negative
impact on scientific research and commercial activity.
The threat posed by the lower courts’
interpretations of Section 43(a) must be viewed in the context of the broader
attacks against Feist. Publishers and website operators have
employed theories such as breach of contract, trespass to chattels, and the
Computer Fraud and Abuse Act to prevent the extraction and transformative use
of data. Some publishers have also
pursued sui generis database
legislation in Congress and on the state level.
Any application of the “reverse passing
off” doctrine to facts will undermine Feist,
a landmark decision already under attack.
Moreover, application of the Ninth Circuit’s interpretation of the
Lanham Act to facts would be unconstitutional.
It would enable Congress to rely on its power under the Commerce Clause
to circumvent a restriction on its power under the Intellectual Property
Clause, in violation of this Court’s holding in Railway Labor Executives’ Ass'n v. Gibbons, 455 U.S. 457
(1982).
In 1991, this Court in a unanimous opinion in Feist Publications, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340 (1991), rejected the “sweat of the brow” doctrine that
bestowed copyright protection on the facts contained in databases by virtue of
the effort the publisher expended in collecting the facts. Instead, the Court made clear that the
Constitution’s Intellectual Property Clause permitted copyright to protect only
the original expression reflected by the selection, coordination, and
arrangement of the facts. The facts
themselves remained in the public domain, free for others to copy and
distribute. The lower courts’
interpretations of the Section 43(a) of the Lanham Act, 15 U.S.C. §
1125(a) (2000), if allowed to stand, may have the effect of undermining Feist.
Respondents in their Opposition to the Petition for a Writ
of Certiorari put forth the rather far fetched hypothetical of an aspiring
novelist renaming Leo Tolstoy’s War and
Peace as War in Russia and
selling it under his own name.
Opposition at 21. A far more
likely scenario appeared in Feist. There, Feist “bodily appropriated” listings
from Rural Telephone’s white pages and incorporated them into its own telephone
directory. Under the Ninth Circuit’s
rule, Feist would have had to attribute those listings to Rural. Moreover, because those listings were
interspersed with listings Feist had gathered from other sources, a single
attribution at the front of Feist’s directory might not have sufficed. Rather, Feist might have had to footnote each
listing it obtained from the Rural directory.
It similarly might have had to footnote each listing it extracted from a
different source.
The Ninth Circuit’s ruling, of course, poses problems not
only for telephone directory publishers, but also for the authors and
publishers of many other types of compilations and fact works. Scientists, economists, and analysts often
use large amounts of data from earlier databases in order to construct more
comprehensive databases or to compare different data sets. Similarly, historians might extract
information from a table and intersperse it throughout a text. The Ninth Circuit’s interpretation of Section
43(a) would require each fact to receive its own attribution. To be sure, the ethical rules of some
academic disciplines require attribution of the sources of facts, but even they
do not require attribution to the degree the Ninth Circuit might require.
Moreover, while an attribution rule might be appropriate in
some academic contexts, it could impose significant costs in a business context
and could have a chilling effect on the use of information in commerce. For example, a financial newsletter might
extract information from a wide variety of sources to compare the performance
of various financial instruments. If each
individual fact on a comparison table had to have its own footnote, the table
might become unreadable. Likewise, the
Feist directory would be more difficult for Feist to maintain, and less user
friendly, if each listing had to have its own footnote attributing its source.
The Second Circuit’s “substantial similarity” rule is only
marginally better. See Waldman Publ'g Corp. v.
Landoll, Inc., 43 F.3d 775 (2d Cir. 1994). Attribution would still be
required if the second database incorporated data from the first database as a
discrete set rather than integrating the data completely. This is because the discrete set of data in
the second database would be “substantially similar” to the data in the first
database. For example, a database that
listed the batting average of each Major League player by team, rather than
alphabetically or by batting average, would have to attribute each team listing
to the source of the information for that team, e.g., the team’s website.[2] (Under the Ninth Circuit’s rule, each
player’s average would have to be attributed separately if the averages were
listed alphabetically or by average.)
The likelihood of
confusion test employed by other circuits also is burdensome in the context of
facts. In all but the most specialized
situations, information users are not likely to care about the source of the
information. They do not care whether
the batting averages were determined by the individual players, the team, the
league, the media, or some other entity.
All they care about is the accuracy of the information and the ease of
its use. To the extent that a given
source of information has established a reputation for accuracy, other
publishers that extract information from that source will have every incentive
to attribute the source of the information, to the extent practicable, to
convince consumers of the accuracy of the information in their database. But consumers certainly will not be harmed if
the second publisher does not provide attribution, for the extracted
information in both databases is the same.
Thus, requiring attribution will impose a substantial cost on publishers
without any offsetting benefit to consumers.
In sum, the standards for “reverse passing off” under the
Lanham Act will erode the effect of this Court’s ruling in Feist. There, the Court concluded that the
Constitution's objective of promoting "the Progress of Science and useful
arts" was accomplished by "encourag[ing] others to build freely upon
the ideas and information conveyed by a work." Feist,
499
The threat to Feist
posed by the Lanham Act must be viewed in the context of a broader attack on Feist.
Ever since the Court issued Feist
in 1991, certain database publishers have employed a variety of strategies,
with varying degrees of success, to circumvent the effect of the Court’s decision.
The most widespread assault comes from shrink-wrap or
click-on licenses. In ProCD, Inc. v. Zeidenberg, 86 F.3d 1447
(7th Cir. 1996), for example, Zeidenberg copied white page listings
from a set of compact discs distributed by ProCD. The CDs contained a “license” which appeared
on the computer screen when the user installed the CDs in his computer. The license inter alia prohibited the copying of the white page listings. The Seventh Circuit concluded that Zeidenberg
was bound by this license, and that Section 301(a) of the Copyright Act did not
preempt the license terms prohibiting the copying of information held
unprotectable by Feist. ProCD,
86 F.3d at 1453-1455.
As shrink-wrap and click-on licenses have become more
prevalent, so too have the number of cases involving such licenses
multiplied. Courts currently are split
over whether shrink-wrap or click-on licenses are enforceable;[3] over whether license terms
inconsistent with the Copyright Act can be preempted by 17 U.S.C. §301(a)
(2000);[4] and over whether such
inconsistent terms are constitutionally preempted in accordance with this
Court’s holdings.[5] Most legal commentators, however, have
expressed strong reservations about the enforcement of such terms.[6]
More recently, plaintiffs have alleged that the act of
copying information from a website constitutes a trespass to chattels. For example, in eBay, Inc., v. Bidder’s Edge, Inc., 100 F. Supp. 2d 1058 (N.D. Ca.
2000), the court granted auction giant eBay a preliminary injunction,
concluding that it was likely to prevail on the merits of its state trespass to
chattels claim against Bidder’s Edge (BE).
BE was an “auction aggregator” that combined the auction listings from
numerous online auction sites so that a user could go to one site to see what
was available on all sites, rather than making separate visits to each auction
site. To obtain the auction listings
from eBay and the other auction sites, BE used software “web crawlers” that
made multiple queries of the eBay auction database.
The court ruled that eBay granted only conditional access
to its site, and that BE grossly exceeded those conditions by making repeated
queries.
Two courts have followed eBay: Register.com, Inc. v.
Verio, Inc., 126 F. Supp. 2d 238 (S.D.N.Y. 2000),[7]
and Oyster Software Inc., v. Forms
Processing, Inc., No. C-00-0724, 2001
A third approach to limiting Feist is the Computer Fraud and Abuse Act, 18 U.S.C. § 1030
(2000). The CFAA imposes liability on
whomever “intentionally accesses a computer without authorization or exceeds
authorized access, and thereby obtains … information from any protected
computer if the conduct involved an interstate or foreign communication.” § 1030(a)(2)(C).[9] The CFAA permits a private cause of action to
be brought by any person who suffers $5,000 of loss by reason of a violation of
this section. §§ 1030(a)(5)(B)(i),
1030(g).[10] Because “loss” includes the cost of
responding to the offense or conducting a damage assessment, a website operator
can obtain injunctive relief and an award of economic damages against a person who
extracts without authorization as little as one fact from its website, provided
that the operator spends $5,000 on a “damage assessment.”
So far, two courts have found liability under the CFAA for
the extraction of information from a publicly accessible website. In EF
Cultural Travel BV v. Explorica, Inc., 274 F.3d 577 (1st Cir. 2001),
several former employees of EF organized Explorica to compete with EF in the
student travel market. In order to
determine the prices EF was charging for its tours so that it could underprice
them, Explorica used an Internet “scraper” program designed specifically to
mine all the necessary price information from the EF website.[11] Similarly, in Register.com, Inc. v. Verio, Inc., 126 F. Supp. 2d 238 (S.D.N.Y.
2000), Register.com, a registrar of Internet domain names, operated a publicly
accessible WHOIS database that contained the names and contact information for
domain name registrants. Verio, a
provider of webhosting and other Internet services, accessed Register.com’s
WHOIS database by an automated search robot that gleaned specific facts from
Register.com’s database. Verio used this
information to telemarket Internet services to businesses that had recently
registered domain names. As noted above,
both EF and Verio were found liable for violating the CFAA.
Indeed, the Verio
court also found Verio liable for breach of contract and trespass to
chattels. Verio, 126 F. Supp. 2d at 245-251.
The contract at issue was a “browse-wrap” license on the Register.com
website which stated that if a user issued a query, he agreed not to use the
results of the query for marketing purposes.
These three theories, if left unchecked, will confer on
publishers far more control over facts than did the “sweat of the brow”
doctrine found unconstitutional by the Court in Feist. Under “sweat of the
brow,” the defendant had to engage in wholesale copying of the compilation on
which the publisher expended great resources.
In contrast, under these theories, retrieving even one piece of
information from a trivial database on a website can trigger liability.
In addition to developing new causes of action, database
publishers have actively pursued sui
generis database legislation in Congress since 1996. In 1998, in the 105th Congress, database
legislation passed the House of Representatives twice – once as a stand-alone
bill and once as a title of the Digital Millennium Copyright Act. Fortunately, the database title was dropped
by the Conference Committee.[12] In the 106th Congress, the House
Judiciary Committee and the House Commerce Committee passed competing database
bills. During the recently concluded 107th
Congress, the staffs of the House Energy and Commerce and Judiciary Committee
engaged in lengthy negotiations in an effort to reach a consensus bill. These negotiations are expected to continue
in the 108th Congress.
Most of the bills introduced closely follow the EU Database
Directive, which establishes sui generis
protection for databases.[13] The stated goal of the database legislation
is to restore the "sweat of the brow" protection rejected by this
Court in Feist. See
H.R. Rep. No. 106-349, at 10 (1999). The
Justice Department, the Federal Trade Commission, and the Department of Commerce
observed that such legislation might violate both the Intellectual Property
Clause and the First Amendment.[14] Additionally, scholars have challenged these
bills on both constitutional and policy grounds.[15]
Any application of the “reverse passing off” doctrine to
facts will undermine Feist, a
landmark decision already under attack.
Moreover, application of the Ninth Circuit’s interpretation of the
Lanham Act to facts would be unconstitutional.
It would enable Congress to rely on its power under the Commerce Clause
to circumvent a restriction on its power under the Intellectual Property
Clause.
In Feist, the
unanimous Court held that “no one may copyright facts or ideas.” Feist,
449
Significantly, the
The Lanham Act, as interpreted by the lower courts, is in
potential conflict with Feist’s
injunction that “raw facts may be copied at will.”
Congress enacted the Lanham Act pursuant to its power under
the Commerce Clause. But under Railway Labor, Congress may not invoke
the commerce power to do what the Intellectual Property Clause bars it from
doing: granting “exclusive Right[s]” in uncopyrightable subject matter. Congress cannot avoid the originality
requirement of the Intellectual Property Clause by relying on the general
powers of the Commerce Clause.[16]
Stated differently, the Intellectual Property Clause
constitutes not only a grant of power to Congress but also a limitation on
Congress. See Bonito Boats, 489 U.S.
at 146 (“[a]s we have noted in the past, the [Intellectual Property] Clause
contains both a grant of power and certain limitations upon the exercise of
that power”); Graham v. John Deere Co.,
383 U.S. 1, 5-6 (1966) (“[t]he clause is both a grant of power and a
limitation. . . . Congress may not authorize the issuance of patents
whose effects are to remove existent knowledge from the public domain, or to
restrict free access to materials already available.”). The Intellectual Property Clause precludes
Congress from providing protection against the copying of facts, and Congress
cannot use the Commerce Clause to avoid the implicit strictures of the
Intellectual Property Clause, as interpreted by the Court in Feist.
Congress’s reliance on the commerce power does not obviate any of
the constitutional limits on the exercise of congressional power under the
Intellectual Property Clause.[17]
As a general matter, “reverse passing off” lacks a clear
statutory basis.[18] Nevertheless, the reasoning of Railway Labor does not invalidate
Section 43(a) per se; it just
precludes an interpretation that requires the attribution of the source of
facts.
In addition to conflicting with the Intellectual Property
Clause, the Lanham Act as applied to facts also raises serious First Amendment
concerns. It is well settled that
copyright’s abhorrence of protection for facts has a clear First Amendment
dimension. As the Court stated in Harper & Row, Publishers, Inc. v. Nation
Enters. 471
Our
profound national commitment to the principle that debate on public issues
should be uninhibited, robust, and wide-open leaves no room for a statutory
monopoly over information and ideas. The
arena of public debate would be quiet, indeed, if a politician could copyright
his speeches or a philosopher his treatises and thus obtain a monopoly on the
ideas they contained. A broad
dissemination of principles, ideas, and factual information is crucial to the
robust public debate and informed citizenry that are the essence of
self-government. And every citizen must
be permitted freely to marshal ideas and facts in the advocacy of particular
political choices.
(Citations and quotation omitted.)
Earlier this term, the
Court enlarged on this theme when it observed that the “copyright law contains
built-in First Amendment accommodations” such as the idea/expression
dichotomy. Eldred v. Ashcroft, 123
Feist already is in danger of death from a thousand cuts:
shrink-wrap licenses, trespass to chattels, the Computer Fraud and Abuse Act,
and sui generis database
legislation. The Court should not
compound this danger by allowing Section 43(a) to impose an attribution
requirement on facts copied from another source. Such a requirement would undermine the
Respectfully
submitted,
peter jaszi jonathan
band*
of law 2000
american university
4801 mass. ave., nw
(202) 274-4126
[1] Letters from all parties consenting to the filing of this brief are being filed with the Clerk of this Court along with this brief. No counsel for a party authored this brief in whole or in part, and no person other than amici curiae, or their counsel, made a monetary contribution to the preparation or submission of this brief.
[2] Likewise, a database of still images from silent films might require reproduction of the credits for each film adjacent to each image, because each image is "substantially similar" to an image in the film. Even though these images are parts of copyrighted works in the public domain, they are crucial ‘facts’ about the history of cinema.
[3] Compare
Novell, Inc. v. Network Trade Ctr., Inc., 187 F.R.D. 657 (D.
[4] Compare Selby v. New Line Cinema Corp., 96 F. Supp. 2d 1053, 1061 (C.D. Cal. 2000); Higher Gear Group v. Rockenbach Chevrolet Sales, Inc., 2002 U.S. Dist LEXIS 15474, *11 (N.D. Ill. 2002); Endemol Entertainment, B.V. v. Twentieth Television, Inc., 48 U.S.P.Q. 2d 1524, 1525 (C.D. Cal. 1998); Berkla v. Corel Corp., 66 F. Supp. 2d 1129, 1150 (E.D. Cal. 1999); Arpaia v. Anheuser Busch Cos., 55 F. Supp. 2d 151, 162 (W.D.N.Y. 1999); American Movie Classics Co. v. Turner Entertainment Co., 922 F. Supp. 926, 931-32 (S.D.N.Y. 1996); and Wrench LLC v. Taco Bell Corp., 256 F.3d 446, 457 (6th Cir. 2001), cert. denied, 534 U.S. 1114 (2002) with Nat’l Car Rental Sys., Inc. v. Computer Assocs., Int’l, Inc., 991 F.2d 426, 433 (8th Cir.), cert. denied, 510 U.S. 861 (1993) and Frontline Test Equipment, Inc. v. Greenleaf Software, Inc., 10 F. Supp. 2d 583 (W.D. Va. 1998).
[5] Constitutional preemption occurs when the
federal and state laws conflict directly, so that compliance with both is a
physical impossibility, or when state law “stands as an obstacle to the
accomplishment and execution of the full purposes and objectives of
Congress.”
[6] See, e.g., 1 Melville B. Nimmer and David Nimmer, Nimmer on Copyright, §1.01[B][1][a] at 1-19 (2002) (suggesting that shrink-wrap licenses may be a “subterfuge”); Mark A. Lemley, Beyond Preemption: The Law and Policy of Intellectual Property, 87 Calif. L. Rev. 111 (1999); Charles R. McManis, The Privatization (or “Shrinkwrapping”) of American Copyright Law, 87 Calif. L. Rev. 173 (1999); David A. Rice, Public Goods, Private Contract and Public Policy: Federal Preemption of Software License Prohibitions Against Reverse Engineering, 53 U. Pitt. L. Rev. 543 (1992); Dennis S. Karjala, Federal Preemption of Shrinkwrap and On-Line Licenses, 22 U. Dayton L. Rev. 511 (1997).
[7] This case is currently on appeal to the U.S. Court of Appeals for the Second Circuit.
[8] Most scholars oppose the use of trespass to chattels in online database cases. See, e.g., Edward W. Chang, Bidding on Trespass: eBay, Inc. v. Bidder’s Edge, Inc. and the Abuse of Trespass Theory in Cyberspace Law, 29 AIPLA Q. J. 445 (2001); Niva Elkin-Koren, Let the Crawlers Crawl: On Virtual Gatekeepers and the Right to Exclude Indexing, 26 U. Dayton L. Rev. 179 (2001); Maureen A. O’Rourke, Shaping Competition on the Internet: Who Owns Product and Pricing Information?, 53 Vand. L.Rev. 1965 (2000); Dan L. Burk, The Trouble with Trespass, 4 J. Small & Emerging Bus. L. 27 (2000).
[9] A “protected computer” is defined as a computer “which is used in interstate or foreign commerce or communication….” § 1030(e)(2)(B). Thus, any computer that is connected to the Internet is a “protected computer.”
[10] The term “loss” is defined as “any reasonable cost to any victim, including the cost of responding to an offense, conducting a damage assessment, and restoring the data, program, system, or information to its condition prior to the offense, and any revenue lost, cost incurred, or other consequential damages incurred because of interruption of service.”
[11] The court found that Explorica exceeded authorized access because in developing the scraper program, Explorica used proprietary EF travel codes that Explorica employees had obtained under a confidentiality agreement when they worked for EF. Explorica, 274 F.3d at 582-583. In a related decision, however, the First Circuit stated that “[a] lack of authorization could be established by an explicit statement on the website restricting access.” EF Cultural Travel BV v. Zefer Corp., No. 01-2001, 2003 U.S. App. LEXIS 1336, at *9 (1st Cir. January 28, 2003).
[12] See Jonathan Band and Makoto Kono, The Database Protection Debate in the 106th Congress, 62 Ohio St. L. J. 869, 871 (2001).
[13] Under the Database Directive, EU member states must adopt legislation that “prevent[s] the extraction and/or reutilization of the whole or a substantial part, evaluated qualitatively and/or quantitatively, of the contents of [a] database.” Council Directive 96/9/EC of 11 March 1996 on the Legal Protection of Databases 1996 O.J. (L77) 20, at art. 7. H.R. 354 in the 106th Congress provided that “[a]ny person who makes available to others, or extracts to make available to others, all or a substantial part of a collection of information … so as to cause material harm to the primary market or a related market … shall be liable ….” For a discussion of the relationship between Feist and the Database Directive, see Jonathan Band and Laura F.H. McDonald, The Proposed EC Database Directive: The “Reversal” of Feist v. Rural Telephone, 9 The Computer Lawyer 19 (June 1992).
[14] See Band and Kono at 872; Letter from Robert Pitofsky, Chairman, Federal Trade Commission, to the Hon. Tom Blilely, Chairman, Committee on Commerce, United States House of Representatives (September 28, 1998), available at www.ftc.gov/os/1998/9809/antipirabli.htm; Memorandum from William Michael Treanor, Deputy Assistant Attorney, United States Department of Justice, for William P. Marshall, Associate White House Counsel (July 28, 1998), available at www.acm.org/usacm/copyright/doj-hr2652-memo.html.
[15] See, e.g., Yochai Benkler, Constitutional Bounds of Database Protection: The Role of Judicial Review in the Creation and Definition of Private Rights in Information, 15 Berkeley Tech. L.J. 535 (2000); Malla Pollack, The Right to Know?: Delimiting Database Protection at the Juncture of the Commerce Clause, the Intellectual Property Clause and the First Amendment, 17 Cardozo Arts & Ent. L.J. 47 (1999); William Patry, The Enumerated Powers Doctrine and Intellectual Property: An Imminent Constitutional Collision, 67 Geo. Wash. L. Rev. 359 (1999). See also H.R. Rep. No. 105-525, at 28-31 (1998) (statement of dissenting views of Rep. Zoe Lofgren, Member, House Comm. on the Judiciary).
[16] See Julie E. Cohen, Copyright and The Jurisprudence of Self-Help, 13 Berkeley Tech. L.J.
1089, 1131-32 (1998).
[17] See William Patry, The Enumerated Powers Doctrine and Intellectual Property: An Imminent Constitutional Collision, 67 Geo. Wash. L. Rev. 359 (1999).
[18] Courts steer Section 43(a) into dangerous waters when they remove it from its consumer protection function. As this Court stated with respect to the trademark laws, “its general concern is with protecting consumers from confusion as to source. While that may result in the creation of quasi property rights in communicative symbols, the focus is on the protection of consumers, not the protection of producers as an incentive to product innovation.” Bonito Boats, 489 U.S. at 157. The potential application of “reverse passing off” to facts illustrates these dangers: Consumers cannot be harmed by the “bodily appropriation” of data without attribution, since the information loses nothing in genuineness or reliability from its transposition.