with nowhere else to amendment protect...

WITH NOWHERE ELSE TO HIDE CAN THE FIRSTAMENDMENT PROTECT DATABASES?

Joseph A. Saltiel*

More than ever before, information equals economic power fortoday's business enterprises. The last decade has seen anunprecedented use of computing tools for the creation, analysis, andstorage of information, often in the form of databases. Data is sovaluable that many companies make significant investments to buildand maintain vast databases. At the same time, the Internet hasallowed for the dissemination of information on a scale that wasunimaginable a few years ago. Literally any person with a computerand a phone line has access to a universe of commercially usefuldata. A problem arises when the value of a database is diminished byunfettered use of the information by potential competitors. Withoutthe ability to restrict access to and use of databases that it compiles, acompany is effectively discouraged from participating in theinformation age. Such disincentives threaten the health of theeconomy, a large portion of which is increasingly dependent uponthe generation of information. In related situations, companieswould traditionally seek the protection of intellectual property law,but patent and copyright statutes do not provide protection for thesefact-intensive databases, and trade secret law often inhibits the bestuse of the information by virtue of requiring that it be kept secret.This Note evaluates the recent congressional attempts to address thisas a purely commercial issue. Then, the Note recommends a solutionwhich adequately balances First Amendment interests with thecommercial and technological realities of the world today.

I. INTRODUCTION

Computers and the Internet have been around for decades, yetrelevant case law has been very slow in broadening traditional laws toencompass these technological developments. With the boom of theWorld Wide Web ("Web") in the mid-nineties and the regularity withwhich people communicate and make commercial transactions via theWeb, it is of the utmost importance to establish guidelines for what

* J.D. 2001, University of Illinois at Urbana-Champaign; M.S. Electrical Engineering andComputer Science, University of Illinois at Chicago; B.S. Computer Science, University of Illinois atUrbana-Champaign; Registered Patent Agent. I would like to thank Professor Maggs and ProfessorNowak for their guidance.

JOURNAL OF LAW, TECHNOLOGY & POLICY

companies can and cannot do. One of the great advantages of theInternet is that it allows the average person to access a tremendousamount of information with relative ease and little cost. However,someone must pay the cost for collecting and distributing thisinformation, and the question that remains is who will subsidize this cost.

Ironically, case law controlling Web technology has very little to dowith technology, or at least with any current technology. The logical areaof law to look to for guidance would be the Copyright Act of 1976("Copyright Act")' because the Web is based on the function ofcontinuous copying of information. The Web traditionally works asfollows: a host machine has a web site; a user accesses the Internet andwill request a copy of the host machine's web site. A copy of the web siteis sent to the user's computer so he or she may view its content. Thecontent is usually information intensive. Alternatively stated, materialsplaced on a web site will be copied many times if anybody ever tries toaccess that information. Since copying information is so inherent in thenature of the Web, copyright law would appear to be the prevailingauthority.

Historically, the Supreme Court has held that ideas cannot beprotected under the Copyright Clause of the Constitution; it is only theexpression of an idea that the government may protect.2 For example,one day someone has the idea to invent an object people can sit on, andthey creatively call it a chair. While the idea of a chair may be a propersubject for a patent, it is not afforded copyright protection. However,that same person may be able to get copyright protection if she makesher chair with distinguishing non-functional characteristics, such aspainting nature scenes on the seat. Even though the idea of a chair doesnot merit a copyright, a chair with a unique nature picture probably doesbecause it is a particular expression of the idea of a chair. There is a fineline as to when an idea qualifies as expression or not. A chair may havemany unique characteristics. Taking away some of these unique featuresmay lose the availability of copyright protection for the chair. Withenough changes, the unique chair will no longer be unique. JudgeLearned Hand described this concept as different levels of abstractions.He pointed out that:

[T]here is a point in this series of abstractions where... [theexpressions of ideas] are no longer protected, since otherwise [aperson] could prevent the use of his 'ideas,' to which, apart fromtheir expression, his property is never extended. Nobody has everbeen able to fix that boundary, and nobody ever can.'

1. 17 U.S.C. §§ 101-1332 (1994 & Supp. IV 1998).2. See Baker v. Selden, 101 U.S. 99, 102-03 (1879).3. There are many requirements for something to be eligible for copyright. Most of these

requirements are laid out in 17 U.S.C. §§ 101-121 (1994 & Supp. IV 1998). Even if an item qualifiesfor copyright protection there are several exceptions, such as fair use. 17 U.S.C. § 107 (1994).

4. Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (citations omitted).

[Vol. 2001

No. 11 CAN THE FIRST AMENDMENT PROTECT DATABASES 165

In addition to expression, another requirement for copyrightprotection is that the item must have some degree of originality Facts,for instance, cannot be protected because the truth is unoriginal,6 but acompilation of facts may be protected as a whole if there is someoriginality involved.7 For most of this century, it was assumed bybusinesses and the courts alike that a person may obtain a copyright on acompilation of facts.8 It was believed that a person could only copy thesefacts if they compiled the information independently of any othercopyrighted work. This was known as the "sweat of the brow"doctrine.'0 However, the Supreme Court struck down this notion in theearly nineties in Feist Publications, Inc. v. Rural Telephone ServiceCompany.1 In this case, the Court held that originality is a constitutionalrequirement for the Copyright Act, thus invalidating the "sweat of thebrow" doctrine. 2 In Feist, the defendant, Feist Publications, copiednames and addresses from a phone book published by the plaintiff,Rural, in order to create its own phone book.13 The geographical areasthat the two phone books covered were not identical, but there was someobvious overlap.' 4 When Rural obtained evidence of Feist's actions, theysued for copyright infringement. 5 The lower courts ruled in favor ofRural because they had shown actual copying of the names andaddresses by Feist.16 The Supreme Court in a unanimous opinion byJustice O'Connor held that there was no infringement because Rural'sphone book was not eligible for copyright protection. 7 The phone bookwas a compilation of facts. 8 Its arrangement was in alphabetical order,which is not the least bit original.' 9 If it could be proven there was morethan a de minimus amount of originality in the arrangement, copyrightprotection may have been afforded.20

The Supreme Court made clear that "[o]riginality is a constitutionalrequirement, 21 to obtain a copyright. As opposed to the "sweat of thebrow" doctrine, this new standard does not make it clear whether

5. Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 60-61 (1884).6. The truth is deemed unoriginal because it does not need the creativity of someone's mind to

become a reality, like a work of fiction. It is a fact. The sky is blue; water is wet. The truth is notbased on someone's creative process. This raises an interesting question about the eligibility of lies forcopyright protection. Although it is unlikely any courts have directly dealt with this issue, statutesinvolving issues of fraud would probably void any possible copyright protection.

7. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 344-45, 348 (1991).8. Id.9. The Supreme Court never directly dealt with this particular issue until Feist. Id. at 345-46.

10. Id. at 352.11. Id.12. Id. at 354.13. Id. at 342-44.14. Id. at 343.15. Id.16. Id. at 344. See also 663 F. Supp. 214, 217 (D. Kan. 1987), affd 916 F.2d 718 (10th Cir. 1990).17. Feist, 499 U.S. at 363-64.18. See id. at 361.19. Id. at 362-63.20. Id. at 363-64.21. Id. at 346.


electronic databases are copyrightable. Databases are items thatcompanies spend millions of dollars creating and maintaining. They areessentially compilations of facts with little or no originality in theirarrangement. For their livelihood, most of the Internet and companiesbased on the Internet rely on databases. Between 1991 (the year ofFeist) and 1997, the number of files contained within databases hasincreased 180% while the number of online database searches (in

22roughly the same period) increased 80%. Accordingly, the market fordatabases has changed. In 1977 the private sector produced 22% of alldatabases; by 1997 that number had soared to 78%.

Allowing competitors to freely take information contained withindatabases for their own use could provide major disincentives forcompanies to collect this information. If companies lose interest in theInternet, it could cause a disruption of the economic system andultimately, harm the public consumers. Part II of this Note will providebackground as to where the copyright law stands on databases and willdiscuss constitutional limitations to protecting databases, past attempts ofaffording specific protection for databases, and the protections that arealready available for databases. Part III of this Note is an in-depthanalysis of the most recent effort by Congress to afford databases somesort of protection, including its motivations. However, this latest attemptmay be inadequate because technology is changing the concept of adatabase. Finally, Part IV explores these congressional changes andproposes a new solution that will force legislatures to change how theyclassify information and misappropriation of that information.

II. BACKGROUND

A. The Current State of the Law

1. Access to Facts

Feist made it clear that for an item to be eligible for copyrightprotection, there must be some originality involved.24 Even if an item isprotected, someone else may use the facts of the copyrighted material aslong as they do not copy any elements of originality. The followingparagraphs will further explore this notion by discussing several recentcases.

22. H.R. 1858, Rep. No. 106-350, Part I, 106th Cong. (1999), available athttp://thomas.loc.gov/cpl06/cpl06query.html [hereinafter H.R. 1858].

23. Id.24. See Feist, 499 U.S. at 351. See also BellSouth Adver. & Publ'g Corp. v. Donnelley Info.

Publ'g, Inc., 999 F.2d 1436, 1446 (11th Cir. 1993) (the appellate court reversing the district andappellate courts that had previously found enough originality in the compilation of a phone book toprotect it under copyright law by finding on rehearing that the competitor copied no original element).

[Vol. 2001

No. 1] CAN THE FIRST AMENDMENT PROTECT DATABASES 167

In National Basketball Ass'n v. Motorola, Inc.,25 several interestingissues were decided. Motorola developed a pager service where thescores of NBA games were sent live, "in real time," to their subscribers.26

Motorola could keep track of the score through radio, television, or byhaving someone present at the game to type the score into the system.Even though the NBA had a copyright in the broadcast of the game,Motorola could transmit the current scores to customers because thefacts (scores) were not protected material.28 Essentially, this decisionreaffirmed the notion that anybody can access a database through legalmeans and copy any facts they want for private use.29 For example,someone could buy a baseball almanac, copy the statistics, and thenproduce their own baseball almanac.30

The courts have repeatedly ruled against companies trying toprotect databases under copyright law.31 Companies trying to protecttheir databases, however, are not at a complete loss. In Kregos v.

32Associated Press, a publisher was provided copyright protection becausehe showed enough originality in selecting which baseball statistics hewould use in his almanac." The publisher selected nine out of a possibletwenty different categories to keep track of when most publishers onlyused three or four categories.34 The court held that his copyright "cannotbe rejected as a matter of law for lack of the requisite originality andcreativity because he chose which nine out of twenty categories to use. ,35

36In Budish v. Gordon, written tables listing facts were held to besufficiently original to be protected as compilations because of themanner in which the facts were arranged within the tables.37 Thus, thesetwo cases are examples where companies received protection of theirdatabases through the use of originality and creativity.

25. 105 F.3d 841 (2d Cir. 1997).26. Id. at 844.27. Id.28. Id. at 854.29. This raises the issue of "hot news." See Int'l News Serv. v. Associated Press, 248 U.S. 215

(1918) (holding that even though news [facts] are not protected under the Copyright Act, state laws ofmisappropriation may protect facts for a limited time). Id. at 233-35. In this case a rival news servicewas taking news collected by the other agency and publishing it in competing newspapers at the sametime. Id. at 229-31.

30. See Kregos v. Associated Press, 937 F.2d 700 (2d Cir. 1991).31. In Warren Publishing, Inc. v. Microdos Data Corp., 115 F.3d 1509 (11th Cir. 1997), a

publisher of a computer database directory of information about cable television systems lost becauseits compilation did not have enough creativity to be entitled to copyright protection. Id. at 1520-21.Skinder-Strauss Associates v. Massachusetts Continuing Legal Education, 914 F. Supp. 665 (D. Mass.1995) held individual components of a database are not eligible for copyright protection. Id. at 679-80.More recently, in Berkla v. Corel Corp., 66 F. Supp. 2d 1129 (E.D. Cal. 1999), the court held that toinfringe on a copyright, original items must be copied. Id. at 1140. Corel did copy a database thatcontained original pictures, but when they used similar pictures for their own database there was noviolation. Id. at 1142. The protection was not in the database but the pictures themselves. Id.

32. 937 F.2d 700 (2d Cir. 1991).33. Id. at 709.34. See id. at 702-03.35. Id. at 705.36. 784 F. Supp. 1320 (N.D. Ohio 1992).37. See id. at 1337.


A typical example of protected information might be a companythat created a database of doctors serving a metropolitan area. Insteadof a typical arrangement by address or type of practice, the companywould have to arrange the database in a slightly different fashion to gainprotection. For example, if the company solicited patients' reactionsabout the doctors and arranged their database according to that data, itshould pass constitutional muster for protection.

Although databases may gain copyright protection, the type ofprotection given may be very weak. Professor Jane Ginsburg, in heranalysis of Feist, has suggested that the type of protection available is"'[v]irtually none, short of extensive verbatim copying'....'Notwithstanding a valid copyright, a subsequent compiler remains freeto use the facts contained in another's publication to aid in preparing acompeting work, so long as the competing work does not feature thesame selection and arrangement.' 38 She has also suggested that makingcompanies add this extra element of originality will result in more laborand higher costs for the creation of the database. This, in turn, will hurtthe company and hinder competition that will eventually harm thepublic.39 For example, while arranging the doctor database by publicopinion may afford copyright protection, a competitor may still use thedatabase to collect certain facts such as names and addresses of doctorsand use this information to create their own database. As long as thecompetitor does not sort the information by public opinion, like theearlier example, there is no copyright violation. Thus, the company whoassembled this information and spent the extra time and money to put itin an original arrangement still loses. Not only do they lose money, but adeterrent effect results for other companies to create original databases.Consequently, the public fails to benefit from the possible informationthese companies could have provided.

2. Alternative Means for Protecting Information

Even though copyright protection of databases is very weak, it maybe argued that there should be no change in the current law. It ispossible that stronger protection will have a diminishing effect on thecopyright doctrine of fair use, restrict access to information that iscurrently in the public domain, and increase the cost of research, as wellas other negative effects.40 For example, the database of doctors wouldprobably not be undertaken unless a company could retrieve theiraddresses for free out of the phone book. Potential entrepreneurs maybe hindered from making money.

38. Jane C. Ginsburg, No "Sweat"? Copyright and Other Protection of Works of InformationAfter Feistv. Rural Telephone, 92 COLUM. L. REV. 338, 349 (1992) (quoting Feist Publ'ns, Inc. v. RuralTel. Serv. Co., 499 U.S. 340,349 (1991)).

39. Id. at 347.40. Jennifer Lucas, Database Protection Could be at Forefront of the 106th Congress' Legislative

Efforts, U.S. L. WK., Dec. 22, 1998, at 2355-57.

[Vol. 2001


Other alternatives exist to protect databases outside the area ofcopyright law. In ProCD, Inc. v. Zeidenberg,4 the defendant used a CD-ROM database of telephone numbers and other facts and made it freelyavailable over the Internet.42 Although Feist would allow little protectionto the database manufacturers, ProCD won the case because they used ashrink-wrap license which was binding on the defendant under theUniform Commercial Code.4 The court held that the license presenteddifferent rights than those generated by the Copyright Act and thus, wasnot preempted. 44 However, this case may be misleading depending onthe nature of the license. Many shrink-wrap or point-and-click licenses 45

are often ignored by the users. The courts have not come to a consensuson the validity of these types of licenses, but most courts may have a hardtime enforcing unfair licenses on the user that were not negotiated.46

41. ProCD, Inc. v. Ziedenberg, 86 F.3d 1447 (7th Cir. 1996).42. Id. at 1449.43. A shrink-wrap license is a contract usually located on a software's outside packaging. See id.

The license will contain certain provisions that the user accepts by opening the package. See id. It isunclear how effective shrink-wrap licenses are. In many instances, people do not read the license orbelieve it to be part of the decoration of the package. See id. at 1450-53. Also, the license places thelicensee in an unfair situation where they have already purchased the item and may not be able toreturn it or would do so at a cost. These are some issues as to why courts may not keep a party boundto the terms of a shrink-wrap license. See infra note 46.

44. ProCD, 86 F.3d at 1454-55.45. A point-and-click license is a license agreement that appears as part of the software. Before

the computer will allow the software to run, the user must "agree" to the terms of the license byclicking a button with a mouse. These types of licenses place the user at a disadvantage because theyhave already purchased the software. Furthermore, the terms the companies may subject the users tomay be unconscionable.

46. Courts have not come to a definite consensus in determining whether shrink-wrap licensesare valid or enforceable. Step-Saver Data Sys., Inc. v. Wyse Tech., 939 F.2d 91, 99-100 (3d Cir. 1991);Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 270 (5th Cir. 1988); Novell, Inc. v. Network TradeCtr., Inc., 25 F. Supp. 2d 1218, 1230-31 (D. Utah 1997); Lloyd L. Rich, Mass Market Software and theShrinkwrap License, 23 COLO. LAW. 1321, 1322 (1994) (arguing against shrink-wrap licenses under thegeneral premise that the user makes an initial agreement when they purchase the software at theregister. The second agreement, the license that is present when the user opens or runs the software,is an extra, unbargained restraint, therefore invalid.). For different views on shrink-wrap licenses, seeAdobe Systems, Inc. v. One Stop Micro, Inc., 84 F. Supp. 2d 1086, 1090 (N.D. Cal. 2000); Green BookInternational Corp. v. Inunity Corp., 2 F. Supp. 2d 112, 115-16 (D. Mass. 1998); Arizona RetailSystems, Inc. v. Software Link, Inc., 831 F. Supp. 759, 764 (D. Ariz. 1993). Furthermore, the UniformComputer Information Transactions Act ("UCITA"), which has already been passed in Virginia andMaryland, would make shrink-wrap licenses "enforceable contracts so long as the customer has theopportunity to review the terms of the license before putting any money down ... [or] so long as anycustomer dissatisfied with the terms of the license, after already purchasing the software, has the rightto return the software and receive a full refund." Barak D. Jolish & Jeffrey W. Reyna, UpsideCounsel: The Bots That Bind Digital Age Contract Law, UPSIDE TODAY, Mar. 7, 2000, available athttp://www.upside.comtexis/ mvm/print-it?id=38c41cee0&t=/texis/mvm/upside-counsel (last visitedFeb. 20, 2001). Presently, the effects of UCITA are unknown because only two states have passed it,Virginia and Maryland. Virginia passed UCITA first, but the law does not take effect until July 1,2001. M.J. Zuckerman, Software Law Could be a Hard Sell: Proposed National Standard for StatesMight be a License for Tech Companies to Sell Bad Merchandise and Ignore Consumers, USA TODAY,available at http://www.usatoday.com/life/cyber/tech/cth635.htm (Feb. 20, 2001) (on file with theUniversity of Illinois Journal of Law, Technology & Policy) (discussing Virginia's passage of UCITA):Patrick Thibodean, Maryland's UCITA May Have National Reach, COMPUTER WORLD, athttp://www.computerworld.com/cwi/story/0,1199,NAV47-ST049486,00.htnil (Feb. 20, 2001) (on filewith the University of Illinois Journal of Law, Technology & Policy) (discussing Maryland's passage ofUCITA).


There are other alternatives for protecting databases which mayinclude using state laws for misappropriation, contract claims, criminalconduct, and torts. As indicated, for many of these state law claims amajor hurdle is that they may be preempted by the Copyright Act.47 Ingeneral, "[a]s long as a work fits within one of the general subject mattercategories" defined in Section 102 of the Copyright Act, the section onpreemption "prevents the States from protecting it even if it fails toachieve Federal statutory copyright because it is too minimal or lackingin originality to qualify . . . ,4 In other words, Congress intendedmaterial not suitable for copyright protection to be freely available to thepublic. The idea of preemption is a common component of a strongfederal government. If a legislative body, like Congress, decides it willregulate an area, a smaller legislative body, like the state, cannot alsoregulate it. To be preempted, a state law must have two elementspresent.49 First, it must protect rights equivalent to those protected bythe Copyright Act.5 0 Second, the work protected must fall under thesubject matter protected by the Copyright Act."'

Before reaching the issue of preemption, there may be some debateas to whether transient computer documents are even covered as subjectmatter under the Copyright Act.52 Technically speaking, a computerdocument is composed of binary numbers, either is or Os. A sequence ofbinary numbers provides instructions for a computer, and it is thesenumbers which are stored. A software application translates thesenumbers into a document that people can read. The question mightbecome what is protected: the numbers that are stored or the documentthat people see? For example, if the documents are protected,companies can still take the information in the form of numbers. Otherissues might arise, such as the liability of the company who writes thesoftware or makes the hardware. It is rather unlikely that any court hasor will make this distinction and instead, will simply protect both the dataand the document.

In addition, many states have failed to protect databases under theirunfair competition statutes. Protecting against the copying of databaseswould be Preempted, but in some cases states have survivedpreemption For example, contract claims can survive preemptionbecause those "cases involved written contracts that had specific

47. The preemption clause of the Copyright Act of 1976 provides "all legal or equitable rightsthat are equivalent to any of the exclusive rights within the general scope of copyright ... are governedexclusively by this title." 17 U.S.C. § 301(a) (1994).

48. H.R. REP. No. 94-1476, at 131 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5747.49. 17 U.S.C. § 301 (1994 & Supp. IV 1998).50. See l MELVILLE & DAVID NIMMER, NIMMER ON COPYRIGHTS, § 1.01[B] at 1-11 (51st ed.

2000). See also 17 U.S.C. § 301 (1994 & Supp. IV 1998).51. See Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1212 (9th Cir. 1998). See also 17 U.S.C.

§ 301 (1994 & Supp. IV 1998).52. See 17 U.S.C. § 102(a) (1994) for a list of materials generally covered under the Copyright

Act.53. See Titan Sports, Inc. v. Turner Broad. Sys., Inc., 981 F. Supp. 65, 70 (D. Conn. 1997).

[Vol. 2001


promises that provided an 'extra element' beyond copyright lawprotection., 4 This extra element in contract cases would be a promise bythe infringer not to infringe. In general, most claims brought underunfair competition claims have failed because the courts did not find theprerequisite extra element in their claims.

To the same degree, claims brought under tort law will also havedifficulty for the lack of an extra element. However, some tort andcriminal laws, which involve deceitful methods for acquiring information,may be used. Trespassing, conversion, and theft are a few examples oflaws that survive preemption. Stealing a database may be punishableunder state law, but the assailant would be punished for the general actof theft not for acquiring the information in the database. Thus,companies would not be fully compensated for their intellectual propertyloss. Furthermore, state-based solutions contain many limitations. First,the remedies provided are usually extremely weak in comparison to thedamage done. Second, state laws are not uniform, which may cause hugeinconsistencies in terms of what individuals may do in a particular state.55

Third, there may be a huge problem with enforcing the laws againstpossible infringers. Fourth, this solution offers very little or noprotection from foreign infringers or Internet abusers.

Another area of possible federal protection is antitrust law. Usingsomeone else's database creates a possible "free-riding" scenario. Forexample, when a person uses another's database to create their own, theyare free-riding on all the money, time, and effort that went into creatingthe database. "[A]ntitrust law recognizes that this kind of free-riding onthe efforts of others is undesirable, because it is likely to reduce theincentives for innovators to introduce new and better products." 6

However, antitrust laws are geared towards monopolies. Thus, a suitunder the Sherman Act57 might only protect a limited number ofcompanies that compete in certain marketplaces. Furthermore, anantitrust solution presents three problems. First, most seekers ofdatabase protection are large companies that these laws were notdesigned to protect. Second, smaller companies that may have claimsusually do not have the personnel, time, or money to fight a long, fact-intensive antitrust trial. Third, the companies seeking protection would

54. Wrench LLC v. Taco Bell Corp., 51 F. Supp. 2d 840, 850 (W.D. Mich. 1999) (quoting Nat'lCar Rental Sys., Inc. v. Computer Assocs. Int'l, Inc., 991 F.2d 426 (8th Cir. 1993)). "Protection frombreach of contract, however, is not equivalent to copyright protection because a contract claimrequires an 'extra element' ... that renders the claim qualitatively different from a claim for copyrightinfringement: a promise by the defendant." Architechtronics, Inc. v. Control Sys., Inc., 935 F. Supp.425, 438 (S.D.N.Y. 1996) (citing Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 702 (2d Cir.1992)). See NIMMER, supra note 50, at § 1.01[B][1][a]. See also American Movie Classics Co. v.Turner Entm't Co., 922 F. Supp. 926 (S.D.N.Y. 1996).

55. See infra note 143, discussing software companies' attempt to utilize one state law toprovide uniform protection across the United States.

56. Letter from the Robert Pitofsky, Chairman of the Federal Trade Commission, to Tom Bliley,Chairman of the Commerce Committee, United States House of Representatives (Sept. 28, 1998) (onfile with the University of Illinois Journal of Law, Technology & Policy).

57. 15 U.S.C. §§ 1-7 (1994 & Supp. IV 1998).


have to show that a competitor within the marketplace has marketpower. Due to the complexities of antitrust law and these factors,companies are unlikely to find protection under these laws.

B. Constitutional Requirements for Protecting Databases

Laws in the United States must comply with the Constitution. Thiswould seem like a basic principle that most legislators could follow, but itis not quite that simple when it comes to the government trying toprotect databases. The Constitution has granted the legislature certainenumerated rights. Protecting databases is not among those rightsexplicitly listed so that power must be implied. On several occasions,Congress has used its implied power while avoiding potentially limitinglanguage of the Constitution. For example, most of the civil rightslegislation in the 1960s was enacted under the Commerce Clause power,even though the right to own slaves was originally part of theConstitution. 8 On the other hand, an invalid attempt at civil rightslegislation through the Commerce Clause power might be to require allbusiness owners not to communicate with their customers. This wouldclearly conflict with rights guaranteed under the First Amendment. Inorder for Congress to protect databases in a provision under theCommerce Clause, Congress must make sure their legislation does notconflict with other provisions of the Constitution. Thus, a law of thisnature must avoid any limitations placed upon it by the Constitution,specifically the Copyright Clause, Commerce Clause, and the FirstAmendment.

1. Copyright Clause & Copyright Act

"To promote the Progress of Science and useful Arts, by securing forlimited Times to Authors and Inventors the exclusive Right to theirrespective Writings and Discoveries. 59

The above clause has been the source of power under whichCongress has developed the copyright and patent laws of this nation.6

0

The latest embodiment of copyright law passed by Congress was theCopyright Act of 1976.61

The leading interpretation of what is and is not copyrightable underUnited States law is Feist.62 Justice O'Connor, writing for a unanimous

58. See also Katzenbach v. McClung, 379 U.S. 294 (1964) (upholding similar congressionallegislation applying to restaurants). See generally Heart of Atlanta Motel, Inc. v. United States, 379U.S. 241 (1964) (upholding congressional legislation using its Commerce Clause power to imposepenalties on people that discriminated against people of another color in the use of publicaccommodations like restaurants and hotels).

59. U.S. CONST. art. I, § 8, cl. 8.60. Databases are not patentable because they do not qualify as a patentable invention under the

Patent Act. See 35 U.S.C. § 101 (1994).61. The Copyright Act of 1976 was codified in Title 17 of the United States Code.62. See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991).

[Vol. 2001


Court, consistently reiterates that "[o]riginality is a constitutionalrequirement."63 Justice O'Connor goes on to define the requirements fora work to be original. In doing so she states, "'[N]o one may claimoriginality as to facts"' 4 and "[i]n no event may copyright extend to thefacts themselves. ' 65 Thus, there can be little doubt that facts are notcopyrightable. While a compilation of facts may be copyrightable,copyright protection cannot be afforded to the facts themselves. Thecopyright is only awarded for the originality in arrangement of thosefacts.6 Alternatively, even if a database can show enough originality toearn a copyright, the facts themselves can still be copied and arrangeddifferently by anyone without fear of penalty. 67

Regardless of this limitation, Congress has tried several times sinceFeist to protect databases under the Copyright Act. The 106th Congressfailed to pass H.R. 2652. This was a bill based loosely onmisappropriation that tried to protect collections of information.6 1 Itpassed the House, but not the Senate. The reason for its death was notCongress' limited powers but politics. 69 The bill was amended severaltimes to include provisions for international copyrights, to accommodateacademia, scientific worlds, and database industries. Another problemwas that it coincided with the publicly hated Digital MillenniumCopyright Act ("DMCA").7° Due to conflicts between the House andSenate versions, a compromise was never reached.71 In early 1999, theHouse tried to enact a new bill, H.R. 354, as an amendment to theCopyright Act, but presented it as a "misappropriation" bill. This billwould give databases broad protection under the Copyright Act.However, the bill has been tied up in internal politics between the

72Commerce and Judiciary Committees and has yet to be passed . Even ifeither of these bills become law, it seems clear the Supreme Court, underFeist, would strike these laws down. Feist clearly states that theConstitution requires originality in order to be afforded protection under

63. Id. at 346. Justice O'Connor reiterates this point in various parts of the opinion. "That therecan be no valid copyright in facts is universally understood." Id. at 344. "The sine qua non ofcopyright is originality. To qualify for copyright protection, a work must be original to the author."Id. at 345. "[O]riginality is a constitutionally mandated prerequisite for copyright protection." Id. at350.

64. Id. at 347 (quoting 1 MELVILLE & DAVID NIMMER, NIMMER ON COPYRIGHT § 2.11[A], 2-157).

65. Feist, 499 U.S. at 351.66. "Facts, whether alone or as part of a compilation, are not original and therefore may not be

copyrighted. A factual compilation is eligible for copyright if it features an original selection orarrangement of facts, but the copyright is limited to the particular selection or arrangement." Id. at350-51.

67. As stated earlier, it is unlikely that the states can offer database protection.68. Lucas, supra note 40, at 2355-57.69. See id. at 2356.70. See id.71. See id. at 2355.72. Legislation: House Commerce Subcommittee Amends and Approves Database Protection Bill,

BNA PATENT, TRADEMARK & COPYRIGHT LAW DAILY, Aug. 16,1999.


the Copyright Clause.73 Thus, regardless how Congress worded it, itcould not protect the facts in any kind of database under the CopyrightClause.

2. Commerce Clause & Conflict With the Copyright Act

The Copyright Clause is not the only constitutional power atCongress' disposal for protecting databases. Ever since Franklin DelanoRoosevelt's court-packing plan during the Great Depression, theSupreme Court has been reluctant to strike down any legislation enactedunder the Commerce Clause.74 For almost sixty years, Congress has beenable to pass almost any kind of law under the guise of commerce."However, the more conservative Rehnquist court has indicated it mightlimit Congress' broad Commerce Clause power and instead require moredirect correlations. In U.S. v. Lopez,76 the Court struck down a federallaw penalizing students who carry guns on or near school groundsbecause the issues involved had nothing to do with interstate commerce.77In Railway Labor Executives Ass'n v. Gibbons,78 Rehnquist declared,"[I]f we were to hold that Congress had the power to enact non-uniformbankruptcy laws pursuant to the Commerce Clause, we would eradicatefrom the Constitution a limitation on the power of Congress to enactbankruptcy laws., 79 Professor Jane Ginsburg argues that the "premise ofJustice Rehnquist's approach is that the more specific clauses of theConstitution limit the more general."8 ° According to this rationale, theCopyright Clause of the Constitution would most likely limitcongressional power over commerce, not the other way around. Thus,any law that deals with a similar subject matter as the Copyright Clausewould be governed by the limitations of that clause. Congress could notenact a law simply protecting databases from being copied withoutrespecting those limitations. However, this would not stop Congressfrom enacting database laws that had a different purpose or differenteffect than the Copyright Act.81 As discussed earlier, this is analogous tostates providing an "extra element" to avoid preemption.

73. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,346 (1991).74. JOHN E. NOWAK & RONALD D. ROTUNDA, CONSTITUTIONAL LAW §§ 4.7-4.8 (5th ed. 1995).75. See generally The New Deal, Civil Rights Legislation, Environmental Protection Agency, etc.76. 514 U.S. 549 (1995).77. Id. at 602.78. 455 U.S. 457 (1982).79. Id. at 468-69.80. Ginsburg, supra note 38, at 370.81. For example, the Court rejected trademark-like protection when Congress enacted it under

the Copyright Clause. See the Trade-Mark Cases, 100 U.S. 82 (1879). But the Lanham TrademarkAct has since survived Supreme Court scrutiny because Congress enacted it under the CommerceClause. "[Tjhe federal trademark law affords protection not against copying per se, but againstfalsehoods in the marketplace." Ginsburg, supra note 38, at 371.

[Vol. 2001


3. The First Amendment

Another limitation on Congress' power to protect databases mightbe the First Amendment to the Constitution. The First Amendment hasbeen expanded over the years to provide a broad array of protection ofnot only freedom of speech, print, and religion, but also of privacy,abortion, and expression (i.e., flag burning)." The question that mightcome to the courts is: do people, under the First Amendment, have afundamental right to facts?

The Copyright Act of 1976, in particular the fair-use clause, seemsto provide people a basic right to facts."' It allows people ororganizations to violate a copyright if it falls within enumerated

84provisions. Some examples of this would be nonprofit educational use,research, or news reporting." The key factor in determining fair useseems to be whether the use is commercial or not. Coincidently, anypossible limitations on First Amendment rights hinge on whether the useis commercial. The Supreme Court has previously ruled that "[t]heConstitution... accords a lesser protection to commercial speech than toother constitutionally guaranteed expression., 86 Accordingly, in U.S.Healthcare, Inc. v. Blue Cross of Greater Philadelphia,87 the court ruledthat commercial speech is not afforded the same protections under theFirst Amendment as regular speech."" Less protection is affordedbecause its purpose is "related to the economic interests of the speakerand its audience."' 9 In addition, speech of this type was probably notwithin the intent of the Framers when they wrote the First Amendment.9"The court went on to list several other factors as to why commercialspeech is afforded less protection.9' The court claimed commercialspeech to be more durable than other types of speech.92 Also, the courtpointed out that the people making commercial speech have in-depthknowledge of their products as well as their market and thus, should be

82. NOWAK & ROTUNDA, supra note 74, at §§ 14, 16.83. See 17 U.S.C. §§ 102(b), 107 (1994).84. See id.85. 17 U.S.C. § 107 (1994).86. Central Hudson Gas & Elec. Corp. v. Public Serv. Comm'n, 447 U.S. 557, 562-63 (1980)

(citing Ohralik v. Ohio State Bar Ass'n, 436 U.S. 447,456-57 (1978)).87. 898 F.2d 914 (3d Cir. 1990), cert. denied, 498 U.S. 816 (1990).88. Id. at 932 (quoting Zauderer v. Office of Disciplinary Counsel, 471 U.S. 626, 637 (1985)).

"The Supreme Court has cited three factors to consider in deciding whether speech is commercial: (1)is the speech an advertisement; (2) does the speech refer to a specific product or service; and (3) doesthe speaker have an economic motivation for the speech." U.S. Healthcare, 898 F.2d at 933 (citingBolger v. Youngs Drugs Prods. Corp., 463 U.S. 60,66-67 (1983)).

89. U.S. Healthcare, 898 F.2d at 934.90. Id. (quoting Central Hudson Gas, 447 U.S. at 561). The Supreme Court has indicated on

numerous occasions that certain types of speech were not what was intended to be protected by theFounding Fathers when they enacted the First Amendment. For more detailed discussion regardingwhy commercial speech is not afforded the same protections; see Bolger v. Youngs Drugs ProductsCorp., 463 U.S. 60 (1983); Central Hudson Gas & Electric Corp. v. Public Service Commission, 447U.S. 557 (1980); and Hustler Magazine, Inc. v. Falwell, 485 U.S. 46 (1988).

91. Id.92. U.S. Healthcare, 898 F.2d at 934.


held to a higher standard. 93 Finally, the court noted that providingcommercial speech with the same protection as other speeches couldeventually lead to abuse by advertisers.94

Although the courts have not specifically ruled on this issue, itseems that a strong argument can be made that people do have a right tofacts. A company should not be able to protect public information as if itwere a trade secret. Information like phone numbers and addresses arepublic information. The value gained by companies is not theinformation itself, but the effort in collecting that information. If theinformation was not public in nature, like an interesting hypothesis orcost saving process, it may be eligible for other types of protection liketrade secret or patent protection. Although the Court has notspecifically ruled on this issue, people probably do have the right to facts.Any attempt by Congress to regulate databases would have to be gearedtowards legislation dealing with commercial uses in order to overcomeFirst Amendment limitations.9

III. CURRENT EFFORTS FOR PROTECTING DATABASES

It should be clear from the discussion above that if Congress wantsto enact any legislation protecting databases, it must abide by thoselimitations discussed. On the other hand, there are many loopholes inthese limitations and in the copyright law that competitors may use totheir advantage. Allowing competitors to do this seems unfair. Acompany may invest millions of dollars and many hours collectinginformation to use for its business. A rival may then take its databaseand start a competing business without investing nearly the amount ofcapital as the first company. Not only does this violate common dignity,it also serves as a disincentive for companies to enter certain markets.Imagine if companies had decided not to get involved with the Internet afew years ago, and the Internet was as unpopular as it was in the 1980s.Although an extreme example, it shows how the present culture isinterwoven with the Internet from Christmas shopping, to trading stocks,to communicating with friends and relatives. In addition, technologycompanies have brought a lot of money into the economy (and people'spockets) as indicated by the tremendous success of the NYSE andNASDAQ markets of the late 1990s. But Congress does not alwaysrespond to logic. In this section, an analysis will be provided of theforces driving new legislation, what that legislation is, why it will notsolve any real problems, and what should be done to protect databases.

93. Id.94. id. It is easy to imagine companies hiding behind the First Amendment every time they get

charged with false advertising or libeling their competitor's products. To allow this cannot be theintent of the Framers when they wrote the First Amendment.

95. For an example of the Supreme Court limiting First Amendment rights in favor ofcommerce; see International News Service v. Associated Press, 248 U.S. 215 (1918) for a discussion ofthe "hot-news" exception.

[Vol. 2001


A. The Source Behind Congress' Latest Effort: The European Union andWest Publishing

As technology improves communication through such innovationslike the Internet, it has made the world a much smaller place. TheUnited States cannot be completely isolated from the rest of the worldand still expect its businesses to thrive. In many industries, the onlysignificant growth will be in the international realm. Furthermore, theadvent of e-commerce has made international business as easy as gettinga computer and clicking a few mouse buttons. In order to not get leftbehind in this globalization of commerce, U.S. companies must be on atleast equal footing with other companies of the world.

The European Union ("EU") has already made strides at protectingdatabases. They recently enacted EU Directive 96/9/EC which providesfor sui generis protection, preventing unauthorized extraction or re-useof the contents of a database.96 This directive requires reciprocity. Thismeans that U.S. databases will not be given protection in the EU unlessthe United States has a comparable law.97 Without reciprocity, Europeancompanies would be able to steal databases created by U.S. producersand use them freely in the EU countries. These costs, in addition to anti-U.S. sentiments, would make it nearly impossible for U.S. companies tocompete fairly in the EU. This would not only affect U.S. businesses inEurope, but the rest of the world. Any company could take databasescreated with U.S. time and money and use them to compete in any partof the world. There would be very little the United States could do,while European companies would reap tremendous economic benefits.

The threat of foreign companies appropriating U.S. databaseswithout fear of repercussions is only one factor pushing for congressionalaction. Many lobbyists would like to see their databases protected inorder to gain an economic advantage for accumulating vast sources ofinformation. One such company is West Publishing ("West"), who is stillfeeling the effects from its loss in Matthew Bender & Co. v. WestPublishing Co.98 West is one of the biggest publishers of judicial casesnot only in printed media but in electronic media as well.99 Since ajudicial case is government property and not subject to copyrightprotection, West tried to secure a copyright in their "star pagination"system.1°° Matthew Bender was able to copy West's CD-ROMs andproduce their own set of case materials to be purchased by the public.'0 'In addition to the cases, Matthew Bender also copied the star paginationsystem, which corresponded directly to the pages published in the West

96. See Lucas, supra note 40, at 2356.97. See, e.g., Urheberrechtsgesetz, v. 9.9. 1965 (BGBI. I S.1273), amended by v. 19.7.1996

(BGB1. I S.1014), translated in 37 I.L.M. 564 (1998) (implementing EU Directive 96/9/EC inGermany).

98. 158 F.3d 693 (1998).99. See id. at 696.

100. See id. at 708.101. Seeid


books.' 2 The court held that copying the star pagination did not infringeon any protective element of West's copyright, including its copyright inthe arrangement of cases, and that it did not amount to contributoryinfringement.' 3

With heavyweight corporations like West and the threat ofEuropean companies taking advantage of U.S. companies, it is unlikelythat Congress will stand still much longer. Although previous attemptsat passing legislation have failed, the constant pressure from all thesesources makes it clear that this problem will not diminish until some sortof legislation is passed.

B. Congress' Current Attempt at Regulation: H.R. 1858

Congress' latest attempt at database protection is House Report1858. It was introduced into the House in May 1999 and passed throughthe House Commerce Committee. Title I of this bill is entitledCommerce in Duplicated Databases Prohibited.1°' This bill has attemptedto overcome many of the difficulties of past legislation while stillaffording enough protection to please the EU reciprocity clause andmajor lobbyists like West.

The most notable difference between this bill and previous attemptsis that it is enacted under Congress' Commerce Clause power. Thus, itwill not fall under the Copyright Clause of the Constitution. Toovercome any conflicting limitations with either the First Amendment orthe Copyright Clause, Section 102 clearly indicates, "It is unlawful forany person, by means of instrumentality of interstate or foreign commerceor communications, to sell or distribute to the public a database .... "'0'With this clause alone, it should overcome any constitutional challengemade to the courts. As stated earlier, people may have a fundamentalright to facts under the First Amendment. However, many of thelimitations of the First Amendment hinge on whether it is being used toprotect commercial interests. In other words, people probably do nothave the right to facts if it is for a clearly commercial purpose. Thewording of H.R. 1858 makes it clear that it only applies to commercialuses, thus avoiding First Amendment limitations. Also stated in theabove discussion on constitutional limitations, was a possible conflictbetween the Commerce Clause and the Copyright Clause of theConstitution. This bill states that it will only apply to uses that involveinterstate or foreign commerce, thus avoiding that conflict. Furthermore,since it directly targets commercial activity, it should overcome anyobjection that Rehnquist and his Court may have for Congress' use of itsCommerce Clause power.

102. See id.103. Id. at 708.104. H.R. 1858, supra note 22.105. Id. at § 102 (emphasis added).

[Vol. 2001


Of course, H.R. 1858 is not immune from problems. By definition,interstate commerce would not protect intrastate transactions. However,unlike Lopez, courts may defer to Congress if their intentions are clearand they are legislating over an area that is historically federal ratherthan local in nature. In Solid Waste Agency of Northern Cook County v.United States Army Corps of Engineers,'6 the court held that Congress,through the Commerce Clause, had the power to regulate over the localhabitat of migratory birds.'07 They upheld this power because peoplespend millions of dollars hunting birds (in general), and "the destructionof migratory bird habitat... 'substantially affects' interstatecommerce.... [There may be no visible effect on a particular bird], butthe aggrelate effect is clear, and that is all the Commerce Clauserequires."

Nonetheless, Congress' intent must be clear when drafting thelegislation. In this case, the Supreme Court, in a five to four ruling,reversed the seventh circuit because the statute in question applies to"navigable waters. ''l ° Both parties conceded that these waters were nota wetland or an area that supports substantive vegetation (navigablewaters). ° In the end, the presence of migratory birds did not matterbecause Congress through their legislation did not clearly intend for thistype of waterway to be included.11" ' But the Supreme Court may have leftthe door open for certain types of legislation that regulate what wouldappear to be intrastate in nature. In order to do this, Congress wouldhave to provide clear language of its intentions and the area it islegislating must have a clear affect on interstate commerce.

In this scenario, databases or facts are very similar to the migratorybirds. A particular database may not be used in interstate commerce, butwith the popularity of the Internet and the rising use of computers to aidin business, the aggregate effect of database legislation is clear."'Databases play a large role in most every commercial interstate industry.Any foreign company by definition involves interstate/foreign commerce;thus, this bill should satisfy the EU directive. A tough question wasraised when a person took a database and gave it away for free over theInternet."3 With a broad look as suggested in Solid Waste, the court's

106. 191 F.3d 845 (7th Cir. 1999).107. Id.108. Id. at 850.109. Solid Waste Agency of Northern Cook County v. United States Army Corps of Engineers,

531 U.S. 159 (201), No. 99-1178, 2001 WL 15333, at *5 (Jan. 9,2001).110. Id. at*3.111. Id. at*8-9.112. The Internet was built on a different philosophy than traditional networks, like canals or

highways. ACLU v. Reno, 929 F. Supp. 824, 830-32 (E.D. Pa. 1996). The Internet was designed so ifone link was destroyed, communications between the other links (nodes) would not be interrupted.Id. Thus, data does not always travel from point A to point B to reach point C. Sometimes the datawill travel from point A to point Z to reach point C, even though point Z is a greater distance away.Since data travels near the speed of light, the extra distance is inconsequential. See generally id. at 830-49 (providing an excellent layman's version of the Internet and how it works).

113. See ProCD, Inc. v. Zeidenberg, 86 F.3d 1447, 1455 (7th Cir. 1996).


interpretation, based on previous Commerce Clause analysis, will coverthis scenario because it is a distribution even though there is no sale. Theaction does have an effect on interstate commerce because it is incompetition with other databases.

Congress could choose to protect commerce from competition ....Because competition was a sufficient economic tie to interstatecommerce.... Congress could regulate intrastate activities that hada close and substantial relationship to interstate commerce....Congress could regulate... intrastate activities in order toeffectuate its regulation of interstate commerce.!14

To win, a company would probably have to show that thedistribution is in competition with its database. In essence, the freedistribution has an effect on commerce by reducing the value of the firstcompany's database.

There are several other notable concerns with database protectionunder this bill. The most glaring is the definition used for a database."The term 'database' means a collection of discrete items... organizedin a single place... through investment of substantial monetary or otherresources ... .,115 It is unclear how the court will actually interpret thisdefinition. The most probable conclusion is that only very largedatabases that require a substantial amount of monetary investment ortime will be covered. This may satisfy the needs of companies who onlyproduce large databases, like West, but it will not protect smallerdatabases, which probably includes many of the businesses in the UnitedStates. Companies who produce small databases or who do not make ahuge monetary investment will be left without protection and will have adistinct disadvantage when competing with companies that can receiveprotection. Moreover, the courts will likely have trouble determiningwhat constitutes a protectable database and what does not. It is unclearif the court can ever draw a bright line. The wording of the bill providesthat they would rather protect big business, i.e., monetary investment,than innovation and creativity. It is not a huge investment that makes adatabase worth protecting; instead, its value is often determined by thelevel of innovation and creativity. Thus, this bill might not even protectthe type of databases that need or deserve protection. All of thisuncertainty may create more problems than the bill solves.

In this bill, another potential loophole is the definition used forduplicating a database. "A database is 'a duplicate' of any database ifthe database is substantially the same as such other database .... ,116

Although this does appear to give more protection because a duplicatedoes not have to be an exact copy, this definition can be interpreted asnot giving protection to pieces of information contained within adatabase. If a person copies the whole database or a whole segment of a

114. NOWAK & ROTUNDA, supra note 74, at § 4.9, at 159-60.115. H.R. 1858, supra note 22, at § 101(1).116. Id.

[Vol. 2001


database, he or she may face penalties. But if a person copies randombits of information from different segments, then this behavior may notbe punishable." 7 For example, West may assume to have protectionunder this bill for its vast databases on case law. However, a competitormay be able to copy every case that involves a database-copyright issueand make its own database using the star pagination system withoutpenalty because the competitor did not copy the entire database nor didthe competitor copy a discrete segment of a database."' To use a morecommon scenario, this would be like "an online thief who stealsnewspaper help-wanted categories, but leaves auto alone, [he or she]could fly under the radar of this law."" 9

The bill also contains various exemptions for government databases,news reporting, subscriber lists, law enforcement, education, andresearch.0 For example, the databases that contain information aboutInternet addressing or telephone routing information would not beafforded protection.2 All these exceptions amount to "fair use," whichis common under a lot of protective legislation. The gaping questionleft is how strictly the courts will interpret each of these exceptions. It isconceivable that a wily attorney could use these exceptions to his or heradvantage to overcome the intent of this bill. Also, the bill clearlydistinguishes the information in a database from any part of a computerprogram which maintains or operates it.13 This may cause problems ifthe courts cannot decipher what individually constitutes the computerprogram, the database, or even if that distinction can be made.

Like many federal statutes, H.R. 1858 contains a preemptionclause. 24 As discussed earlier, any state remedy that survivedpreemption by the Copyright Act would most likely be preempted bythis bill. A state law may avoid preemption under H.R. 1858 and theCopyright Act, but it would be difficult to imagine what, if anything, thisnarrow type of law would provide. It is highly unlikely that any statelegislature could create such a bill.

Another problem states may have with this bill is that it may alsopreempt other state laws, like state trade secret protection. The billclearly states "[s]ubject to subsection (b) [the preemption clause], nothingin the title shall effect rights, limitations, or remedies concerning...

117. Id. (stating that a database that has a "discrete section of a database that contains multiplediscrete items of information may also be treated as a database").

118. This assumes that West does not have a specific database that holds these types of cases.119. Stopping the Piracy of Online Classified Ads, EDITOR & PUBLISHER, July 17, 1999, at 1

[hereinafter Stopping the Piracy].120. H.R. 1858, supra note 22, at § 104.121. Id. at § 104(b).122. See the Copyright Act of 1976 or the Patent Act codified under 17 U.S.C. §§ 101-810 (1994 &

Supp. IV 1998) and 35 U.S.C.A. H9 1-376 (1994 & Supp. IV 1998) respectively.123. H.R. 1858, supra note 22, § 104(c). It states that protection shall not extend to any computer

programs that access the protected database. Id. Conversely, it does not disqualify any database fromprotection because it solely resides within a computer program. Id.

124. See, e.g., 17 U.S.C. § 301 (1994 & Supp. IV 1998).


trade secrets .... ,,125 This "other rights not affected" clause clearlyapplies only to other rights granted by the federal government not thestates. The preceding statement, "subject to subsection (b)," can only beinterpreted as not to apply to state law that may be "inconsistent" withthis bill. 26 For example, customer lists, which have traditionally fallen

127into the realm of state trade secret protection, may now be preemptedby this bill if they are stored in a database. A customer list may not meetmany of the requirements of this bill and, without state trade secretprotection, would be left available for any competitor to use. Obviouslythat is not what Congress intended, and they would have to take somesort of action to remedy the problem they have created.

Another interesting dilemma is who will afford protection under thisnew bill. Since this bill is brought under the power of the CommerceClause, the Federal Trade Commission ("FTC") will be the governingauthority.'8 The bill itself will not be the sole law on this subject, but theFTC, pursuant to their powers, will be able to make similaradministrative regulations to enforce this bill.129 It is unclear what effectthis will have. Under this bill, the FTC could either greatly expand ornarrow the range of protection afforded. In addition, they will beresponsible for enforcement. Immediately, questions arise about thepersonnel needed to protect and administrate all the possible infractions.The FTC may already be spread too thin trying to find consumer fraud,and it is unlikely they can practically rely on competition and consumersto adequately police the market because litigation is very expensive andtime consuming.3 " Small companies, like Internet start-ups, can rise andfall very quickly. In addition, the Internet provides people with amedium that can quickly distribute mass amounts of information to aworldwide audience in a matter of hours; whereas, the FTC may takemonths or years to resolve a dispute. Their lag time in taking action maymake H.R. 1858 and the subsequent rules irrelevant if they cannot stopentities from violating them.

C. What Will H.R. 1858 Actually Mean?

If H.R. 1858 passes Congress and becomes law, it will solve twoproblems in the world of databases. First, it presents an answer to theEU's reciprocity requirements. In those respective countries, U.S.companies will be able to use European laws to protect their databases.Also, it should hinder and possibly stop foreign companies/persons fromappropriating U.S. databases (especially over the Internet). Second, the

125. H.R. 1858, supra note 22, at § 105(a) (emphasis added).126. Id. at § 105(b).127. See Leo Silfen, Inc. v. Cream, 278 N.E.2d 636 (N.Y. 1972).128. See H.R. 1858, supra note 22, at § 107(a).129. 15 U.S.C. § 57(a)(1) (1994 & Supp. IV 1998).130. See generally Stopping the Piracy, supra note 119 (condemning H.R. 1858's use of the FTC as

the enforcer, implying they could not do a sufficient job and producers of databases will be worse off).

[Vol. 2001


bill will protect some larger databases. However, it is unclear how muchprotection it will afford. The courts will have to interpret the language ofthe statute and determine the breadth of protection it will provide. Theconservative nature of the U.S. Supreme Court, especially on Internetissues, will likely fall in favor of the copier of information, unless theCourt perceives one of the parties to be acting in bad faith. 31

Furthermore, with the many loopholes and potential problems withenforcement, it is unlikely this bill will protect the companies who need itthe most. Only companies who can afford litigation will have a chance ofgaining protection, and even then it is unclear if they will prevail.

Under this bill, companies who maintain smaller databases willlikely find very little protection. The more innovative or creative thesedatabases are, the more incentive there is for other companies to use theloopholes in this bill to escape prosecution. Some might argue that smalldatabases should not be protected, but the converse is more likely true.Producers of large databases, like West, have the market strength toprotect themselves by other measures. However, all databases start outsmall. Companies will not be able to build big databases if they aresubject to piracy when they are too small to be afforded protection.Companies with smaller databases may be able to compete by exploitingthe loopholes in the laws, but this is exactly the type of scenario thatmust be avoided. Companies will be forced to pump new life into oldlaws like contract, torts, antitrust, and trade secret to protect themselves,which was exactly the situation before this bill.

The most glaring flaw of this bill is its lack of flexibility. Technologychanges at a tremendous rate. The technical definition of a database willchange drastically over the next five years. For example, IBM released anew version of Universal Database in the summer of 2000.132 The ideabehind this new technology is that databases no longer need to be in onelocation.'33 The technology "builds on the concept of taking many datasources and managing them from a single location.'1 4 H.R. 1858'sdefinition of a database states that it must be "organized in a singleplace."'35 It may be argued that a bill like H.R. 1858 will cover these newtypes of database because the information is still managed from a singlepoint. However, that would be missing the point of the technology. Theinformation that comprises the database can be located at various

131. See generally Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998); Intermatic, Inc.v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996) (ruling against the defendant, Toeppen, whom theyperceived to be a bad guy, i.e., a cybersquatter, by stretching the bounds of trademark law and civilprocedure). Of course, the courts could have waited until the legislature passed the proper laws.Using the newly passed anticybersquatting bill, the courts would not have to stretch any laws. SeeAnticybersquatting Consumer Protection Act, Pub. L. No. 106-113, §§ 3001-3010, 113 Stat. 1501A,545-552 (1999) (to be codified at 15 U.S.C. §§ 1114-1127).

132. James Taschek, IBM: Not by Databases Alone, YAHOO!NEWS, at http://dailynews.yahoo.com/htx/zd/20000203/tc/20000206576.html (Feb. 3, 2000) (on file with the University of Illinois Journalof Law, Technology & Policy).

133. Id.134. Id.135. H.R. 1858, supra note 22, at § 101(1).


locations. It also means that the data can be a part of more than onedatabase maintained by different companies. In addition, theinformation at the independent locations may fall into one of theloopholes of H.R. 1858 so it would not be protectable by itself. Theindependent locations would not be considered a discrete databasebecause not all of the data at that site will be included as part of thedatabase nor may it be organized in the proper form. It is unclear thenhow that information would be protected. More than one database maylay claim to this information, and not all of these databases that lay claimmay be afforded protection. Also, the separate locations may containother information that is not part of the database. For example, a centrallocation knows that there are statistics on a web page. The database mayinclude those statistics, but the web page may also contain otherinformation not used by that database. It is unclear what information isor should be protected, and protecting only part of a web page may makematters unnecessarily complicated.

The Universal Database is only the beginning of new technologicalchanges that are underway. IBM is also leaning toward providing userswith a more flexible database in such a way that their software "will beable to pull both structured and unstructured data together fromdifferent sources to enable customers to retrieve relevant informationand make connections between [the information they want and all theinformation out there]." 136 This type of technology will further blur thelines as to what data comprises a database and who owns this data. If thedatabase definition does not include this new innovation, any laws wouldbe too narrow to be effective. If the database definition does include thistype of software, it will probably be unconstitutional or otherwise toobroad by giving companies too much power and destroying competitionand the free market.

Furthermore, it is very likely that other companies will follow IBM'slead of eradicating the current form of databases. IBM claims that"customers don't want just a database, but also the platform and servicesthat make databases solve real business problems. , If databases of thefuture are combined with software to the point that no one candistinguish between what is the software and what is the database, H.R.1858 will probably not protect it. These new databases will no longer befunctioning in the allowable capacity defined within the bill because itdoes not protect software.13

' Because IBM is an industry leader, thesesmall changes already make this bill obsolete. The damage will onlyworsen when other companies follow suit or make even more innovativechanges to databases. H.R. 1858 in its current form is already outdated.

136. Cath Everett, First Sprouts From IBM's Garlic Project Take Root in DB2, athttp://www.vnunet.com/News/106208 (last visited Feb. 7, 2000).

137. Taschek, supra note 132.138. See H.R. 1858, supra note 22, at § 104(c)(2).

[Vol. 2001


It may be beneficial, but it is not going to solve the underlying issues ofmisappropriated data gathered by other companies.

IV. WHAT THE FUTURE SHOULD BRING

The future of database protection has many different avenues inwhich it can proceed. One of the benefits of technology is that it can beused for protecting privacy. As information becomes more highly soughtafter, the industry has responded by looking at ways to protect it.Technological solutions may be part of the future of protectinginformation. Recent improvements in technology can help preventunauthorized access, reproduction, and distribution. It could accomplishthese tasks with such innovations as encryption, serial copying controls,and watermarking. 139 Adding controversial legal provisions like anti-circumvention measures found in the DMCA may further aid intechnological solutions protecting information.'40

The DMCA makes it illegal to "circumvent a technologicalmeasure" which controls access to copyrighted materials.1 4' Any newlegislation passed to protect databases under a different law other thancopyright could include a provision like this to ensure the effectiveness oftechnological solutions. This provision protects a person's fundamentalright to privacy under the First Amendment. A person should be able tokeep information private, just as people are allowed privacy in their ownhomes. The only difference is that the information the user wishes tokeep private is online. However, if that information becomes public, theright to keep it private would then be outweighed by other people'sconstitutional right to facts. The second major change of the DMCA inthis area is the expansion of contributory infringement to includemanufacturers that provide devices or methods "for the primary purposeof" circumventing these measures.' 42 This second provision is contrary toyears of established precedent and could have a detrimental effect ontechnology. It is neither needed nor welcomed.

However, there are two major disadvantages to technical solutions.First, technology can always be circumvented and its weaknessesexploited. Second, technology may cause additional problems for users.In some cases the technology may be too complicated for the consumerto deal with; thus, they do not use it. Or it may be too hard to maintain;thus, impractical for a company or a person to use.

A legal-based solution may be to modernize many of the lawsdiscussed earlier, such as contracts, torts, and trade secrets, to protectdatabases. "The software industry is aggressively lobbying for...legislation, which it touts as an overdue modernization of contract law to

139. Legal Protection Now Available to Databases, at http://www.databasecoalition.org/hr1858/legalprtlegalprt.html (last modified July 19, 2000).

140. 17 U.S.C. § 12 01(a), (b) (Supp. IV 1998).141. Id.142 Id


keep up with the pace of electronic commerce.,1 3 This modernizationmay overcome some of the disadvantages of using contract law.Advocates point out that if a few states pass modernization statutes,other states will be forced to follow suit if they want to compete for high-technology companies.'4 In the case of contract law, companies needonly one state to pass new legislation because "licenses can assign thatstate as the jurisdiction for lawsuits. ,

14' However, most of these legal

efforts are geared towards software or privacy laws protecting people'spersonal informationY6

Other than the recent activity in Congress, none of the new stateefforts are geared specifically towards databases. Thus, they are of littlehelp. Another disadvantage to this approach is that consumers' rightswill shrink and that software companies will hold the power. 147 Thiscould lead to abuse of customers by companies. Secondly, theinterpretation and effect of modernization will change how companiesoperate. Creating new database rules may generate confusion, causingcompanies to make costly mistakes, and require years of litigation toestablish precedent or common law. These types of problems suggestthat lawmakers should look to an alternative in defining what kind ofdata should be protected and how we should protect it.

The Internet and new technology have brought a paradigm shift tohow companies and people operate. The law, if it is to keep up withthese changes, must also shift. Instead of forcing technology into existinglaws, new laws should be written that directly address issues withtechnology. This is why some databases need protection. Even though itmay be legal to copy the facts of a database and distribute it for one'sown economic gain, those acts are arguably unethical and immoralbecause they take advantage of the work of others.

Many have suggested that databases do not need more protection.Professor Pollack has suggested that the database industry is booming,the threats from Feist and the EU are unfounded, and users are thegroup that need protection.149 First, large companies can easily survivewithout any legislation because of the revenue they generate fromlegitimate database activities or other products and services they may

143. Joseph Menn, Software Makers Aim to Dilute Consumer Rights: Technology: CompaniesPush Legislation at State Level That Would Dramatically Alter Contract Law in Their Favor, LATIMES at http://www.latimes.com/business/updates/lat-rightsOO0204.htm (last visited Oct. 10, 2000).

144. See id.145. M.J. Zuckerman, Software Law Could be a Hard Sell: Proposed National Standard for States

Might be a License for Tech Companies to Sell Bad Merchandise and Ignore Consumers, USA TODAY,available at http://www.usatoday.com/life/cyber/tech/cth635.htm (Mar. 29, 2000) (on file with theUniversity of Illinois Journal of Law, Technology & Policy).

146. See id. See also Dan Gillmor, Bills to Protect Privacy Need Public Support, available athttp://www.mercurycenter.com/svtech/columns/gillmor/docs/dg32800.htm (Mar. 27, 2000).

147. See id.148. See id.149. 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, 90-92,97 (1999).

[Vol. 2001


offer. Smaller companies or individuals may not be able to survive athreat to their databases by hackers or larger companies. Second, thenew legislation would help individuals by protecting their databases fromothers and by guaranteeing their right to public information. Third, itseems very unwise to wait until the database industry collapses beforetrying to provide protection. If Congress does not try to sustain thisboom and allows the database industry to crash, it may make thesituation harder to correct versus taking preemptive measures now.Finally, with the rash of information piracy, especially via the Internet, itis difficult to argue that the "users" are the ones who need protection.

Any new legislation should be modeled in a similar manner to H.R.1858. Existing Commerce Clause legislation, like trade secret laws, is notadequate to protect all databases because of its stringent standards onsecrecy.5 The four-part test for trade secret protection is:

(1) existence of a trade secret, (2) communicated to the defendant(3) while he is in a position of trust and confidence and (4) use bythe defendant to the injury of the plaintiff.... All that is required isthat the information or knowledge represent[s] in someconsiderable degree the independent efforts of its claimant.151

It is essential that the information in question be kept an absolutesecret. 152 Anybody who has knowledge of this information must be underan obligation not to disclose it.'53 In all likelihood, many databases maynot be able to satisfy these conditions and the four-part test.1

Furthermore, the person receiving this information would have to"use" that information. The term "use" in this context may beambiguous, making it unclear which sorts of actions would constitute use.One example is when a person gives a database away for free. This"use" may not be applicable. In addition, technology continuallychanges the definition of what is a database. If the physical location of adatabase were spread out among several sites, all of the sites would haveto qualify under the trade secret factors. Some databases may bedistributed or used in conjunction with services or built into software thatare not held to the trade secret standards. The trade secret factors leavetoo many holes through which databases may fall. Finally, most tradesecrets laws are not federal in nature but are based on each state'scommercial power. This may cause numerous problems, not the least ofwhich is uniformity.155

150. Smith v. Dravo Corp., 203 F.2d 369, 373 (7th Cit. 1953).151. Id. (citing Macbeth Evans Glass Co. v. Schrelbach, 239 Pa. 76 (1913)).152. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470,475 (1974) (quoting Cincinnati Bell

Foundry Co. v. Dodds, 10 Ohio Dec. Reprint 154, 156, 19 Weekly L. Bull. 84 (Super. Ct.1887)).

153. Id.154. Id.155. See generally id. at 474-78 (differentiating state trade secret laws to other forms of

intellectual property protected by the federal government); Religious Tech. Ctr. v. Wollersheim, 796F.2d 1076, 1090 (9th Cir. 1986) (holding that "confidential material must convey an actual or potentialcommercial advantage" and religious secrets do not qualify for protection).


This protection should be federal so it may apply consistentlythroughout the states as well as to interstate and foreign actions. But, itshould not preempt state common law trade secret protection.Regardless, any state law that would interfere with this new legislationwould probably be unconstitutional under the Dormant CommerceClause. The new legislation should use a combination of Congress'Commerce Clause power as well as First Amendment rights. Contrary toProfessor Pollack's assertion, the Copyright Clause of the Constitutiondoes not necessarily limit Congress' Commerce Clause power.156 Feistmade it abundantly clear that facts do not fall under the CopyrightClause. Thus, Congress' attempts to regulate facts have no limitationsimposed by the Copyright Clause. As stated earlier, commercial speechprotection under the First Amendment is more restrictive than otherforms of speech, but it is still afforded protection. 7 The FirstAmendment has gone so far as to also protect a person's fundamental• • 158

right to privacy. By the same token, the First Amendment should beable to protect a company's commercial interest in privacy.

The First Amendment guarantees free speech. The FirstAmendment has also been grounds for creating a right of privacy forindividuals, especially concerning facts (speech) and associations.9 Inaddition, the First Amendment provides protection for commercialspeech. Although, it is not afforded the same level of protection aspolitical or other forms of individual speech, courts have consistentlyrecognized it. As with an individual's right to privacy, courts should beable to find a commercial right to privacy. Of course following thismodel, commercial privacy would not be as sacred as an individual's rightto speech or privacy, but nonetheless, it should exist. As long as thecommercial right to privacy does not infringe any individual'sconstitutional right, the commercial right to privacy should beenforceable by the courts.'6° Moreover, even if the courts recognize aconstitutional right to privacy, this right would only be useful againststate action. Hence, Congress needs to create this new legislation toenforce commercial right to privacy against other private individuals orcompanies.

The new legislation would have three essential elements. First,unlike H.R. 1858, the definitions used must be broader. Technology maychange the characteristics of databases so the definitions must be veryflexible. The definition of a database must be better tailored toprotecting specific facts as opposed to a whole database and must not betied down to physical realities that are not recognized in our new worldof cyberspace. Also, misappropriation should be further defined.

156. See Pollack, supra note 149, at 61.157. See supra notes 87-93.158. See NOWAK & ROTUNDA, supra note 74, § 16.36, at 1105-10.159. Id. at § 14.26, at 796, § 16.41, at 1118-25.160. See generally id. at § 8.8, at 299 for a comparison between the Commerce Clause and the

right of privacy.

[Vol. 2001


Duplication should pertain to any fact taken not just to a specificsegment of a database. One example might be a new law defining adatabase as any collection of facts stored in some medium, regardless ofits relation to other technologies, like software. Also, many of theexceptions similar to those defined in H.R. 1858 must be eliminated tostop companies from exploiting the loopholes.

Second, the legislation should specify that the protection is affordedto commercial use consistent with Congress' Commerce Clause powerand is afforded a commercial right of privacy under the FirstAmendment. The law should emphasize the intent of the perpetrator. Ifit was malicious or in bad faith and had an effect on commerce, it shouldbe a violation of this law. Conversely, if there was no intent tomisappropriate or the act was absent any real or potential effect oncommerce, there should be no penalty.

Third, the law should define a private database and only affordprotection to those facts that are considered part of the private database.Any information not accessible or not meant to be accessible to thegeneral public should be considered private. This would includeencrypted databases or other information not intended to be seen by thepublic but used in conjunction with software or services. It is possiblethat databases used for internal purposes within a company or used byother companies under exclusive agreements may not qualify under thestringent trade secret standards, but under this law they would beprotected. Conversely, information that enters into the public domainshould not be afforded protection.

The Constitution mandates that originality and innovation, notfacts, are to be protected. People have a fundamental right to facts. Inother words, people should not be denied the truth. However, peoplealso have a fundamental right to privacy. Congress must balance thesetwo important rights. Protecting private databases accomplishes thistask. It allows companies to keep private information they worked hardto collect, but once any of that information seeps into the public domain,the public will have a right to that information. In other words, Congresswould not be protecting information, facts, and data. They would beprotecting companies' rights to privacy. People have a right to facts thatshould not be denied. Thus, lawmakers should protect the use ofinformation in a particular private manner. To further exemplify thisdifference, three different categories will be examined: public v. privateuse, service, and penalties.

A. Public v. Private Use

Companies must learn that any information they make available tothe public becomes part of the public domain. If it does not qualify asintellectual property, the public should have a right to use it once it hasentered the public domain. Thus, once a publisher issues a phone book,all of the facts contained therein are out of the publisher's control; yet,


companies still have economic incentives to issue phone books. First,acquiring data of this nature is very simple. The phone company receivesthe name and address of all phone owners. Second, they do not sellphone books, they give them away. The financial incentive is the moneyreceived for advertising. Even if there was no advertising revenue andconsumers really needed a phone book, they would be willing to pay forits production. Once they bought one, why would they buy two? Theclassical economic forces of supply and demand would allow companiesto earn money through their investments without controlling facts in thepublic domain.

If lawmakers want to bolster protection for databases, this is thetype of law that should be passed. Of course this new law, unlike otherintellectual property laws, should not preempt state laws. This isnecessary to avoid nullifying all of the state trade secret, unfaircompetition, and misappropriation laws that many companies rely on forprotection. Thus, if companies wanted to protect databases, they shouldcontrol the access to that database. For example, an online phone bookwould differ from an ordinary phone book because a user would nothave access to all the entries at once. A user would query for one nameat a time. The law should protect anybody from appropriating the entiredatabase at once. Of course, fair use should apply. So if a user whoqueries the thousands of entries in the database and creates a newdatabase should not be penalized if the intent was for personal note-keeping. However, the law should distinguish and punish bad-faith uses.If a user has the intent to misuse the database, as in starting a legaldatabase by receiving records from Westlaw, the user should be subjectto penalties under this law. Alternatively, the database owner can alwaysmonitor their online site and make the necessary restrictions to impedeany user trying to accomplish this task.

This new law, in and of itself, does not provide any new strategiesfor companies. A trademark is a form of intellectual property protectionthat has its origin of power in the Commerce Clause. Like trademarks,this new law would use Congress' Commerce Clause power to protectcompanies' First Amendment rights to commercial privacy."' Whencompanies try to gain access to other companies' databases, this federalprotection should be invoked. Allowing information to roam freely onceit enters the public domain will boost innovation and competition.Companies who wish to make money from their efforts will have toprovide restricted access or more closely monitor who has access. Peoplewho violate this access should be penalized under this new law.

161. Included in this law may be similar provisions of the DMCA discussed supra Part IV. Itspurpose would be to protect companies' privacy similar to how trespass and burglary laws protect anindividual's privacy in his or her home.

162. See generally The Free Software Foundation, What is Copyleft?, available athttp://www.fsf.org/copyleft (last visited Sept. 5. 2000) (containing information about giving awaysoftware under a less restrictive copyright license and their claims at how that has propelled thesoftware industry in a similar manner to such notable projects like Linux).

[Vol. 2001.


Companies, like West, would still benefit under this scenario. Inorder for someone to gain access to a case from West, they would have topay a fee or sign-up for service. In signing up for service, West couldmake certain restrictions as to the number of cases a person can requestor they could force special licenses. For example, if one's intended use isnot legal research, the customer will be charged a higher fee for access.If they violated this agreement, the violators would also be found inviolation of the new law. Companies could easily structure their serviceto accommodate this change, and lobbyists, like West, will gain theprotection they need. If companies only use their databases for internaloperations, like operating an intranet, this new legislation shouldadequately protect people who gain unauthorized access to this data. Soif companies want to keep data to themselves they can, but once theyallow the public access to the facts, it should become part of the publicdomain. Outside the scope of this note is the unresolved issue ofdetermining when, if ever, information crosses from the private domainto the public domain.

B. Service

Companies need to shift their focus to service to make money. Thisis what they are really selling. Their investment is the effort that wentinto producing the database. It is not the data but this investment thatneeds to be protected. In the doctor database example earlier, thecompany maintaining the database, in exchange for keeping an up-to-date database with accurate information and commentary, could charge afee to the user or to the doctors for each patient they refer. Competingcompanies may gain access to the information by invoking the serviceand paying a fee, but that should not pose a problem. Terms of servicecan always be limited. In addition, doctor information must beconstantly updated, and competing companies may not be able to offerthe same type of service or as high a quality of service. Within theseexamples, there is plenty of room to compete.

Companies and lawmakers have been worried about allowing othersto use the data they have collected. They have failed to grasp that onecannot regulate what one cannot control. Information, especially facts, isextremely difficult to control, and the Constitution is a major limitationon any effort to do so. However, service is something companies cancontrol and the government can regulate. This, in turn, should be thefocus of new legislation. Companies can dictate to whom and how theydivulge information via their service, and since this is commercialactivity, Congress can regulate it.

C. Punishment

The missing ingredient to any new additional database protectionmust be a uniform method of punishment. People who misappropriate


private databases should be punished. The punishment should serve as adeterrent. If civil remedies are not a deterrent, individuals should facestiff criminal penalties based on the potential economic harm of theiractions. Corporations should be held liable for huge monetary awards todeter any dishonest behavior. In various attempts at legislation, likeH.R. 1858, there was a fundamental problem because people were beingpunished for information they believed they had a right to access. Therewas no clear line between allowing people their fundamental right tofacts and protecting the work and investment of companies. By allowingpeople to exercise their rights to facts and punishing people for accessingprivate information and abusing service agreements, there is a cleardistinction as to what is inappropriate behavior.

V. CONCLUSION

Computers and the Internet have revolutionized how the worldworks. The world continues to benefit from these new technologies.Part of this growth has increased the ability to access large amounts ofdata. It is not unjustified for one to be concerned about spending largeamounts of money and resources in assimilating this data and then losingit to whoever wants to take it. In addition, it is clear that this is not acopyright or patent issue. Facts, once they enter the public domain,should be free to anybody who wants to use them. However, certaincommercial uses should be protected and Congress' latest attempt attrying to solve this problem as a commercial issue is a baby step in theright direction. Although their latest attempt fails to offer what somehad hoped, it does open the door for opportunity. Congress can allowthe Internet and businesses to grow and still give people access to factsby expanding federal law to protect private databases and fact-intensiveservices that companies may offer. Laws are often written to regulatespecific acts in a constant society, but the manner in which the worldoperates has changed. If new laws are to accomplish their lofty goals,lawmakers need to adjust their perception of reality.

[Vol. 2001

with nowhere else to amendment protect...

Documents