Statement of Marybeth Peters
The Register of Copyrights
Subcommittee on Courts and Intellectual Property
Committee on the Judiciary
United States House of Representatives
106th Congress, 1st Session
March 18, 1999
Collections of Information Antipiracy Act (H.R. 2652)
Mr. Chairman, members of the Subcommittee, I am pleased to testify today on
the Collections of Information Antipiracy Act. In October 1997, I testified
on a prior version of this bill, H.R. 2652. At that time, I stated the Copyright
Office's support for the enactment of new federal protection for collections
of information, while identifying some issues with regard to how such protection
should be formulated.
The basis for the Office's support was the need to preserve adequate incentives for the
production and dissemination of databases, which are increasingly important to the U.S.
economy and culture, both as a component in the development of electronic commerce and as
a tool for facilitating scientific, educational and technological advancement. In our
view, there was a gap in existing legal protection, which could not be satisfactorily
filled through the use of technology alone. This legal gap was compounded by the ease and
speed with which a database can be copied and disseminated, using today's digital and
scanning capabilities. Without legislation to fill the gap, publishers were likely to
react to the lack of security by investing less in the production of databases, or
disseminating them less broadly. The result would be an overall loss to the public of the
benefits of access to the information that would otherwise have been made available.
At the same time, we cautioned that the risks of over-protection were equally serious,
since the free flow of information is essential to the advancement of knowledge,
technology and culture. We saw the key to legislation as ensuring adequate incentives for
investment, without inhibiting access for appropriate purposes and in appropriate
Accordingly, the Copyright Office recommended the restoration of the general level of
protection provided in the past under copyright "sweat of the brow" theories,
but under a suitable Constitutional power, with flexibility built in for uses in the
public interest in a manner similar to the function played by fair use in copyright law.
Such balanced legislation, we believed, could optimize the availability of reliable
information to the public.
As introduced, H.R. 2652 represented a constructive first step toward achieving this
result. We recommended further work on the bill's concepts and language, however, in order
to resolve continuing concerns and better calibrate the balance needed to maximize the
public interest. We identified as requiring particular attention the scope of the
permitted acts and exclusions, and the issue of duration.
During the course of consideration of H.R. 2652 in the last Congress, numerous changes
were made. As passed by the House, the legislation incorporated several provisions
responding to concerns we had identified, as well as many other amendments. H.R. 354
includes all of these changes, plus two other major additions: a clarification of the
duration issue and a new exemption embodying certain fair use concepts. Over the course of
the past year and a half, substantial progress has been made in developing and refining
the coverage of the bill.
The position of the Copyright Office on H.R. 354 can be summarized as follows: We
remain convinced that there is a need for new federal legislation to supplement existing
law and provide adequate incentives for investments in databases. We are not aware of any
changes in law or technology since my 1997 testimony that would warrant rethinking that
As to the form that such legislation will take, we continue to prefer the
misappropriation approach taken in H.R. 354 to an exclusive property rights model, for the
reasons given in my prior testimony (a copy of which is attached). Moreover, in our view,
the provisions of H.R. 354 represent a significant improvement over the provisions of H.R.
2652 as introduced. Many of our earlier concerns, and a number of concerns raised by
others, have been addressed or ameliorated. Again, however, I stress that the sensitivity
and importance of this subject matter demands great care in crafting a statutory balance.
Several issues still warrant further analysis, among them the question of possible
perpetual protection of regularly updated databases, and the appropriate mix of elements
to be considered in establishing the new, fair use-type exemption.
The Threshold Question: The Need for Legislation
In formulating our position on H.R. 2652, the Copyright Office considered carefully the
threshold question of whether there is a need for new legislation to protect collections
of information in the United States. We concluded then that new legislation was desirable,
and that judgment still stands.
As explained in more detail in my prior testimony, and in the Office's August 1997
Report on Legal Protection for Databases, existing bodies of law for protecting databases
are all deficient in some respect. As to copyright, the Supreme Court's 1991 decision in Feist
means that some of the most investment-intensive databases are no longer protected, while
those that do embody the requisite minimal creativity are entitled to only a narrow scope
of protection. Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340
(1991). Other bodies of law protect only certain aspects of databases, or protect them
only in certain circumstances, and lack uniformity or certainty. As a result, database
producers are vulnerable to the taking of substantial portions of the fruits of their
investment in ways that harm their markets.
Since the 1997 hearing, there has been no change in the courts' interpretation of
copyright or other bodies of law that has significantly altered the legal landscape or
ameliorated prior judicial applications of Feist. The cases that established a
narrow scope of protection for databases under copyright law continue to have precedential
effect, and to govern the public's understanding of the boundaries of permissible conduct.
During the 105th Congress, this Subcommittee, the Committee on the Judiciary, and the
full House of Representatives also recognized the need for legislation, as demonstrated by
the passage of H.R. 2652 twice, once as a free-standing bill and once as Title V of H.R.
The Substance of H.R. 354
The bill before you today reflects the considerable thought and consultation that went
into the evolution of H.R. 2652 in the last Congress. H.R. 354 incorporates the provisions
of H.R. 2652 in its ultimate form as it passed the House the second time. Many changes
were made in that bill during the course of the legislative process. These changes
included adding new definitions; clarifying the core prohibition; amending the
"permitted acts"; refining and expanding the exclusions; expanding the savings
clauses for other bodies of law; establishing a set term of protection; and providing
special protections against monetary or criminal liability for nonprofit institutions. In
this Congress, two major changes have been added in H.R. 354 that address core concerns of
user communities, one intended to avoid perpetual protection for dynamic databases, and
the other to create a flexible defense for fair use-type uses.
I will not describe all of these changes here, but will discuss those the Copyright
Office believes to be most important from a public policy perspective: clarification of
the boundaries of the prohibited conduct; the coverage of the exceptions or
"permitted acts"; addition of savings clauses regarding copyright and antitrust
law; duration; and the special protections for nonprofits.
Clarifying the Boundaries of the Prohibition
As to the bill's general approach, H.R. 354 adopts the same misappropriation model as
proposed in H.R. 2652. The Copyright Office continues to favor this approach, because it
is more limited in its scope of coverage than an exclusive property rights model, and
better tailored to the subject matter and the specific problem that has been identified.
In addition, several changes made during the legislative process in the last Congress have
clarified the boundaries of the prohibition in a beneficial way.
Most important was the addition of definitions for two of the terms used in
the prohibition: "collection of information" and "potential market"
(' 1401). In my prior testimony, I stated that
"additional definitions may be advisable to clarify the scope of the prohibition
. . ., but should not be included unless they can shed more light rather than
create new ambiguity." These definitions meet that test; they serve to
add precision and avoid potential overbreadth.
Definition of "collection of information"
A number of concerns had been expressed about the lack of a definition of
"collection of information" in H.R. 2652 as introduced. The concerns centered on
the possibility that many items that would not fall within a standard conception of a
database might be considered to qualify as a protected collection. A history book or even
a novel might qualify, since each collects and brings together facts, ideas and words.
Moreover, virtually any material in digital form could be considered a collection of
digits. The new definition should rule out the possibility of such overbroad
interpretations. It appropriately limits protection to those collections that are made up
of items collected and organized "for the purpose of bringing discrete items
of information together in one place or through one source so that users may access
them." By focusing on the purpose for which information is collected and organized,
the definition excludes material brought together in order to communicate a message, tell
a story, or accomplish a result. See H. Rep. No. 105-525, 105th Cong., 2d Sess. 13
Definition of "potential market"
In my prior testimony, I supported the use of the term "potential" in
delineating what type of market harm should be actionable. I stressed the need to give the
term content, however, warning that "[t]he mere possibility that a use could be
licensed should not be sufficient, or the term would become circular." I advised that
courts could look to the producer's business plans as well as customary industry
practices, as they have done under copyright law.
The new definition of "potential" accomplishes just that result. It defines a
"potential market" as one which a person has current and demonstrable plans to
exploit or that is commonly exploited by persons offering similar products or services
incorporating collections of information. The increased certainty provided by statutory
language giving guidance to the courts is a positive step.
Exclusion for network functionality
Another important change made during the 105th Congress was the addition of
an exclusion barring application of the prohibition to information used to accomplish
digital online communications (1404(c)). The Copyright Office supports this exclusion,
which should ensure that protection for collections of information will not
be extended inappropriately to functional network elements such as domain name
tables and interface specifications, and thereby unintentionally impede the
development and functioning of the Internet.
Appropriate Safeguards for Beneficial Uses
In my prior testimony, I noted the "substantial dangers inherent in establishing
legal rights involving the use of facts," and cautioned that "[i]t is important
not to inhibit or raise the cost of existing uses in the public interest . . . [and]
avoid making access for legitimate purposes more difficult or expensive." This was
one of the Copyright Office's principal concerns with the bill in its original form: were
sufficient safeguards in place to ensure that that beneficial uses could continue
unabated? Two expansions of the exceptions or "permitted acts," one made toward
the end of the last Congress and one appearing for the first time in H.R. 354, provide
important additional safeguards.
Broadening of exception for nonprofit educational, scientific, or research
As initially drafted, the exception for nonprofit educational, scientific or
research uses served a primarily symbolic value. While its inclusion in the
bill constituted a legislative recognition of the value and importance of such
uses, the exception was written in such a way as to simply restate in the affirmative
that such uses were permitted as long as they did not cause market harm (which
would not in any event have violated the prohibition). When H.R. 2652 was incorporated
into H.R. 2281, this exception (now '1403(a)(1))
was broadened to permit such uses as long as they did not directly harm
the actual market--thus ruling out liability for indirect harm, or harm
to a potential market.
The Copyright Office supports this change. In our view, it appropriately limits
liability for nonprofit public interest uses to the only situations where such uses pose a
serious and immediate threat to the producer's investment--i.e., where the user is a
member of the market for which the database is produced, and utilizes it without
permission or payment. While a producer may need protection against a commercial
competitor's preemption of a potential market, such a broad field of application does not
seem necessary for nonprofit scientists and scholars.
Addition of a flexible fair use-type exception
The most far-reaching change in the bill, added when H.R. 354 was introduced,
is a new exception, entitled AAdditional Reasonable Uses@ ('1403(a)(2)). This section supplements the other, more specific
exceptions, with a general, multi-factor balancing test turning on the concept
of reasonableness. It permits an individual act of use or extraction of information
for purposes of illustration, explanation, example, comment, criticism, teaching,
research, or analysis, in an amount appropriate and customary for that purpose,
if the act is reasonable under the circumstances. Four factors must be considered
in determining reasonableness, relating to the commercial or nonprofit nature
of the use or extraction, the defendant's good faith, the extent to which the
defendant has added its own investment or creativity, and whether the plaintiff's
collection was primarily intended for persons in the same field or business
as the defendant. Finally, an outside limit of reasonableness is set: the portion
taken from the collection must not be offered or intended to be offered in commerce
and likely to serve as a market substitute for the original collection.
This exception has two particularly important applications in supplementing the
coverage of the previous set of exceptions: as to nonprofit users, it can provide a
defense, even when the activity directly harms the actual market for the
database. In addition, it can provide a defense to commercial ventures for acts going
beyond mere insubstantial uses, independent collection, or verification.
The Copyright Office applauds the inclusion of such an exception in the bill.
In an area as important and delicate as this, involving legal restrictions on
information, we believe the incorporation of a general, flexible defense is
a wise policy choice. Like the fair use doctrine of copyright law, this provision
can serve as a Asafety valve,@ avoiding an
overly strict application of the law with potentially negative consequences.
It allows courts to make judgments appropriate to the particular facts and circumstances,
and recognizes that some uses should be permitted even if they do not strictly
fall within explicit statutory bounds.
In my prior testimony, I described how many of the concepts of copyright fair use are
incorporated in various places throughout the bill; this new exception adds another
concept from the first fair use factor that did not appear in earlier versions. The
authorized purposes all involve activities that build on the contents of an existing
collection, and provide the public with new thoughts or insights. In that respect, they
are similar to the "transformative" uses favored under fair use. See Campbell
v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994).
The new exception differs from the structure of copyright fair use, however, in that it
is not entirely determined by a balancing of factors. Certain elements are established as
prerequisites, such as the authorized purposes and the requirement that the amount be
limited to that "appropriate and customary for that purpose." We continue to
examine the mix of elements set out in the exception, their functions, and their relation
to each other, and would be pleased to work with the Subcommittee on further shaping of
the statutory language.
Amendments to other exceptions
Two other "permitted acts" were also modified in positive respects
during the 105th Congress. The exception covering individual items and other
insubstantial parts was amended by adding a sentence specifying that an individual
item of information shall not itself be considered a substantial part of a collection
(' 1403(b)). This
clarification ensures that a single but important item contained in a collection
cannot be interpreted to be a qualitatively substantial part of the collection,
due to its individual value.
Finally, a concern we had expressed about the news reporting exception has
been addressed. The exception now contains a carve-out, barring its application
to a consistent pattern of takings of time sensitive information gathered by
another news entity, for purposes of direct competition ('1403(e)). This language prevents the possibility that the
type of activity held unlawful in International News Service v. Associated
Press, 248 U.S. 215 (1918), would be sanctioned by the breadth of
New Savings Clauses for Copyright and Antitrust Law
In its original form, H.R. 2652 contained a general provision specifying that
it did not affect any rights or obligations under other bodies of law relating
to information. During the legislative process, additional provisions were added
providing more detail about the relationship of this new protection to such
bodies of law, including copyright and antitrust ('1405(c), (d)). The Copyright Office believes these new
provisions are an appropriate and useful addition to the bill.
The provision on copyright states explicitly that protection under the new law is
independent of copyright, and does not affect any aspect of copyright protection,
including limitations on rights such as fair use, in any work of authorship contained in
or consisting of a collection of information. The provision further specifies that no
greater protection is provided to any work of authorship contained in a collection than
would otherwise be available to that work, other than a work that is itself a collection
(which by definition would receive the new law's protection against misappropriation).
This language should serve to confirm that the scope of copyright protection for
compilations or for works of authorship contained in compilations will not change.
The provision on antitrust law makes clear that protection under the new law does not
limit in any way the constraints imposed by antitrust laws on the manner in which products
or services may be provided to the public, including rules regarding single suppliers of
products and services. This language addresses the "sole source" issue that has
been raised in the course of debate. See Copyright Office Report on Legal
Protection for Databases at 102-107. It ensures that relevant principles of antitrust law
continue to apply to producers in governing how they can market databases that are the
sole source of information. This provision should assist in preventing information from
becoming unavailable to the public. To the extent that antitrust law may not adequately
deal with particular conduct, further discussion may be warranted.
The second major change incorporated into H.R. 354 relates to the issue of
duration. Under H.R. 2652 as introduced, the prohibition had no set term of
protection. While this was theoretically consistent with the bill= grounding in misappropriation law, I stated in my prior
testimony that further study was needed to determine an appropriate measure
for how long the prohibition should last. During the last Congress, a term of
fifteen years was added, in the form of a limitation on the period of time during
which a lawsuit can be brought.
The Copyright Office supports the addition of such a definite term. Fifteen years of
protection provides substantial incentives for investments in collections of information.
It also has the advantage of being consistent with the term provided in the European
Union, increasing the likelihood of obtaining reciprocal protection in Europe for U.S.
database producers. See Copyright Office Report on Legal Protection for Databases
at 49; article 10 of Directive 96/9/EC of the European Parliament and of the Council of
the European Union of 11 March 1996 on the legal protection of database (attached to
Report as Appendix B).
In the amended version of H.R. 2652, the term began to run from the date of
the investment that qualified the collection for protection. In H.R. 354, the
starting point is instead the date that the portion of the collection extracted
or used was first offered in commerce, following the qualifying investment ('1408(c)). In
the view of the Copyright Office, this change is an improvement. Investments
in producing databases generally take place over a period of time, and it will
be difficult to determine the precise point at which the investment became substantial
enough to trigger protection. Nor would members of the public have any way to
ascertain the status and progress of the producer's internal business activities.
Moreover, under the earlier "date of investment" approach, if further
substantial investments were subsequently made before the database was placed on the
market, those new investments could trigger additional terms. It is therefore preferable
to start the clock running on a date that is clearcut and publicly ascertainable. Again,
this approach is consistent with that of the European Union, which measures protection for
publicly available databases from the January after the database was first made available
to the public. European Directive, art. 10(2).
Even with this new definite term, however, concerns remain about the possibility of
effectively perpetual protection. This is because the investment that triggers the
prohibition in the bill may consist of maintenance of a pre-existing database.
Accordingly, where a database is updated on an ongoing basis, new fifteen-year terms will
begin to run whenever the update entails substantial investment and is offered in
commerce. In other words, protection may be extended indefinitely.
A new sentence was added in H.R. 354 to deal with this potential problem. It
distinguishes between protection for the pre-existing database and protection for the
updated version, clarifying that the fact that an investment in maintenance has resulted
in a new fifteen-year term does not extend or renew protection for the pre-existing
database itself. The public remains free to extract or use information from the
pre-existing collection despite the continued protection for the later, updated version.
In our view, this sentence helps to avoid the specter of perpetual protection. It makes
clear that the version of the database that has already been protected for a full
fifteen-year term does not continue to be protected because of subsequent investments.
Nevertheless, it does not completely resolve the issue. A practical problem remains: how
does the user obtain access to the pre-existing version that can theoretically be freely
used under the bill? If the database is in hard copy form, there may be no problem; the
user can, for example, go to the library and use an old casebook. But if the hard copy is
no longer available, or if the database exists only on-line and is constantly updated, it
may be impossible to find and use a copy of the no-longer protected version. As a result,
although protection is not perpetual in theory, it may be as a matter of reality.
The Copyright Office believes this issue merits further attention. During discussions
in the Senate Judiciary Committee in the fall of 1998, consideration was given to the
possibility of establishing a deposit system within the Copyright Office, in order to
create a public record of databases for which protection has expired. While such a deposit
system could be burdensome, and may have drawbacks as well as benefits, we are ready to
work with the Subcommittee to examine this and alternative solutions.
Additional Protections for Nonprofit Institutions
Three provisions were added to H.R. 2652 that further insulate nonprofit educational,
scientific or research institutions, and libraries or archives, from inappropriate or
1. Inapplicability of criminal provisions ('1407(a)(3)). Criminal penalties are not available against
employees or agents of such institutions, when acting within the scope of their
2. Remission of damages ('1406(e)). Courts must reduce or remit entirely monetary
relief if the defendant is an employee or agent of such an institution, who
believed and had reasonable grounds for believing that the conduct was permissible.
3. Deterrent against frivolous lawsuits ('1406(d)). If an action is brought in bad faith against
such an institution, or its employee or agent, courts are required to award
costs and attorneys' fees to the defendant.
These provisions should go a long way toward ameliorating any possible chilling effect
on nonprofits' activities. A nonprofit institution acting in good faith, with the belief
that it is engaging in permissible conduct, will run little risk of substantial penalties
other than an injunction. And a database producer will have to think carefully about the
grounds for a lawsuit, or be subject to potentially serious financial consequences.
H.R. 354 would establish consistent nationwide incentives
for investments in collections of information, filling the gap left in the law
in the wake of Feist. The bill represents substantial progress in legislative
thinking, incorporating many positive evolutions from the initial form of its
predecessor bill in the last Congress. These changes have added greater clarity
and balance. The Copyright Office would be pleased to work with the Subcommittee
to resolve remaining issues and concerns.