Sui generis solves comparatively better than copyright law – EU database protection proves
Kazeeva 24 [Iana Kazeeva is a postdoctoral researcher at the Department of Innovation and Digitalisation in Law at the University of Vienna. She studied international commercial and tax law in Moscow and holds a Candidate of Sciences degree (Ph.D. equivalent) in international financial law (dissertation on fiscal decentralization). Prior to joining the Department, she worked at the Mountain View office of a California-based public software-as-a-service company, primarily engaged in reviewing and negotiating technology and commercial contracts. She also gained practical experience as a senior legal counsel at the legal department of a global producer of mineral fertilizers, focusing on project finance and legal compliance. At the Department, the primary focus of her research is on intellectual property, data security, and data protection law., Sui Generis Intellectual Property Protection Comparison of EU and U.S. Regulatory Perspectives in Law, Business and Innovation, ALB] *This card has been modified for gendered language
However, according to Hugenholtz, copyright in databases provides “thin” protection, as copying part of a database, without appropriating “selection or arrangement” of the data, does not amount to copyright infringement. Therefore, the most important part of the Database Directive is Chapter III, providing for legal protection via sui generis regime.31However, according to Hugenholtz, copyright in databases provides “thin” protection, as copying part of a database, without appropriating “selection or arrangement” of the data, does not amount to copyright infringement. Therefore, the most important part of the Database Directive is Chapter III, providing for legal protection via sui generis regime.31
The Directive distinguishes databases protected by copyright, which must satisfy the originality threshold, from databases which do not meet that threshold and which are entitled to sui generis right to prevent extraction or reutilization of a substantial part of their contents.32 “Extraction” means permanent or temporary transfer of all or a substantial part of the contents of a database to another medium, while “reutilization” is making available to the public the contents of a database by the distribution of copies, renting, online, etc. Besides, the first sale doctrine shall apply in case of a first sale of a copy of a database by, or with the consent of, the rightholder (Article 7 of the Database Directive).
Unlike copyright, which protects only the original structure of the database (the selection or arrangement of contents), the sui generis right protects the contents themselves, provided that there has been a substantial investment in obtaining, verification, or presentation of the contents. “Obtaining” refers to seeking material and collecting it in a database, “verification” means checking, correcting, and updating the data, and “presentation” involves communication of the complied data.33 The investment can be qualitative or quantitative, and may consist in the deployment of financial resources and/or the expending of time, effort and energy (Recital 40 of the Database Directive). Thus, the sui generis right protects the “sweat of the brow” of the database producer, i.e., the skill, energy, and money invested in the database.34 The right is granted to the maker of the database, i.e., the person who takes the initiative and the risk of investing (Recital 41).
The Directive offers little guidance as to what investment shall amount to substantial. However, Recital 19 specifically points out that compilation of recordings of musical performances on a CD does not come within the scope of the Database Directive, “both because, as a compilation, it does not meet the conditions for copyright protection and because it does not represent a substantial enough investment to be eligible under the sui generis right”. Nor does the Database Directive defines what amounts to a “substantial part” of the contents of the database.
As noted above, the sui generis right was initially viewed as “derived from regimes such as unfair competition law or the law repressing parasitic behaviour” (Section 5.3.6 of the Explanatory Memorandum). Indeed, instead of the term “sui generis right” used in the final version of the Database Directive, the initial 1992 Proposal contained the term “right to prevent unfair extraction”, meaning the right of the maker of a database to prevent acts of extraction and re-utilization of material from that database for commercial purposes (Article 1 of the Proposal).
However, in the enacted version of the Database Directive, the right has moved away from competition law. Gaster observes that, unlike the law of unfair competition, the database sui generis right also covers acts committed by users in noncompetitive situations, creates exclusive rights a priori (instead of only sanctioning behavior a posteriori), and grants a term of protection, therefore being similar in nature to intellectual property rights.35 Recital 42 explicitly mentions that the right relates not only to the manufacture of a parasitical competing product but also to any user who, through his their acts, causes significant detriment to the investment. Besides, Article 7(3) of the Database Directive allows the sui generis right to be transferred, assigned or granted under contractual license, which makes it a “full-fledged property right”.36