India Inde Indien. Report Q182. in the name of the Indian Group. Database protection at national and international level

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1 India Inde Indien Report Q182 in the name of the Indian Group Database protection at national and international level Questions 1. Analysis of Current Legal Situation 1.1 Legislation Is there any legislation in your country dealing specifically with databases? If so, please describe it. There is no legislation in India dealing specifically with databases although the word itself appears in the Copyright Act, 1957 and the Information Technology Act, Definition of Database Is there any definition of the term database in your country s legislation or case law? If so, does it extend both to electronic and non-electronic databases? The closest definition of the term database is found in Section 43 Explanation (ii) of the Information Technology Act, 2000 which defines computer database to mean a representation of information, knowledge, facts, concepts or instructions in text, image, audio, video that are being prepared or have been prepared in a formalized manner or have been produced by a computer, computer system or computer network and are intended for use in a computer, computer system or computer network. This definition appears to extend only to electronic databases. Section 2 (k) of the Information Technology Act, 2000 defines a computer resource to mean a computer, computer system, computer network, data, computer database or software. Section 2 (o) of the Copyright Act 1957 defines a literary work to include computer programmes, tables and compilations including computer databases. This definition appears to include even non-electronic databases. 1.3 Copyright Protection of Databases Subject Matter Does your country s law provide for copyright protection of compilations? If so, does it only cover collections of literary and artistic works or does it also cover compilations of data or material other than literary and artistic works? Indian copyright law provides for copyright protection of compilations as literary works, but does not stipulate the content of a compilation. Since the definition of a literary work includes computer databases, which under the Information Technology Act, 2000 includes audio and video, it may be argued that the electronic databases may comprise of collections that are not restricted to only literary and artistic works. 1

2 1.3.2 Criteria of Protection If your country s law provides for copyright protection of compilations is the protection limited to compilations which by reason of the selection or arrangement of their contents constitute intellectual creations? Are there any supplementary criteria to selection and arrangement? What is the level of originality required for a compilation to be considered a work? Does hard work in gathering data, known alternatively as sweat of the brow, qualify a compilation as original? The Copyright Act, 1957 does not limit protection only to compilations which by reason of the selection or arrangement of their contents constitute intellectual creations. It does not mandate supplementary criteria to selection and arrangement. The level of originality for a compilation to be considered a work, and the sweat of the brow in gathering data have been the subject of some cases before the Indian Courts. It is pertinent to mention that India itself being a commonwealth country follows the sweat of the brow doctrine. In Burlington Home Shopping v Rajnish Chibber, 1995 PTC (15) 278 cases it was held that a compilation of addresses developed by any one by devoting time, money, labour and skill though the source may be commonly situated amounts to a literary work wherein the author has a copyright. In the recent decision of Eastern Book Company v Navin J. Desai, 2002 (25) PTC 641 (Del) (DB), a doubt has been cast on whether the sweat of the brow doctrine would continue to hold sway. The case involved a database of copy-edited judgments along with head-notes published by the Plaintiff on CD-ROM, which it alleged, the Defendant had copied. The Plaintiff/ Appellant had argued that it had expended great skill in the collection, selection and correction of judgments. The Court did not give any finding on the aspect of protecting the copyright in the collection and selection of judgments. It however relied on Section 52 (1) (q) (iv) of the Copyright Act, 1957 which states that it is not an infringement of copyright to reproduce or publish judgments of Courts. The Court held and stated that by merely correcting such judgments, the Plaintiff was not able to establish that such judgments had become original literary works which would take them out of the realm of the public domain. It would seem therefore that by implication, the Court rejected the claim that the database of judgments collected and selected by the Plaintiff was not copyrightable as a compilation or computer database. This conclusion may however be erroneous, and may not be an authority of all types of compilations. The matter is presently in appeal before the Supreme Court of India Scope of Protection What is the scope of copyright protection of a compilation? To which extent can a compilation be copied without infringing the copyright in the compilation? Section 13 of the Copyright Act, 1957 affords copyright protection to original literary works, which include compilations. Section 14 specifies the exclusive rights that subsist in a literary work, being, inter alia, the right to reproduce or store it, to issue copies to the public, to perform or communicate it to the public, to make a translation or adaptation etc. The term of copyright is specified in Section 22 of the Act, and lasts for 60 years from the beginning of the year following the death of the author. The author of a computer-generated work (compilation) is the person who causes the work to be created (Section 2 (d) (vi)). The extent to which a compilation may be copied without infringing the copyright in the compilation requires judicial guidance. 2

3 1.4 Sui generis Protection of Databases System of Protection and Subject Matter Does your country s law provide for sui generis protection of compilations of data such as databases? If so, is registration of the database required to secure sui generis protection? Does your country s sui generis system only cover databases which do not meet the criterion of originality or is there cumulative sui generis protection also for original databases protected by copyright? India does not have a sui generis protection for compilations of data such as databases Criteria of Protection If your country s law provides for sui generis protection of databases what are the criteria of protection? If substantial investment is one of the criteria of protection, what is the level of investment required for an investment to be considered substantial? Rights granted and Scope of Protection If your country s law provides for sui generis protection of databases what are the rights granted to the database maker? If extraction and re-utilisation are covered by any right, how are these notions defined? What is the scope of the sui generis protection? If substantial part is relevant in determining the scope of protection, how is this concept defined? Limitations and Exceptions If your country s law provides for sui generis protection of databases are there any limitations or exceptions? If so, what are they (e.g. private use, scientific research, education, public security, government purposes)? Are there any compulsory licensing provisions under your country s sui generis protection regime? Duration of Protection How long is the duration of the sui generis protection? 1.5 Possible Alternatives for a sui generis System Unfair Competition Law Does your country have a law of unfair competition? If so, does it have a role in the protection of databases? If so, to what extent? While India recognizes a common law right against unfair competition, it is yet to be seen the extent to which unfair competition can have a role in the protection of databases. In the matter of Eastern Book Company v. Navin J. Desai, 2002 (25) PTC 641 (Del) (DB) (referred to above), the Plaintiff had in fact founded its suit on claims of copyright infringement and unfair competition against the defendants Other Means of Protection Does your country provide for any other means of protecting databases? If so, in which legal areas and by which mechanisms (e.g. contract law)? Trade secrecy law can provide a form of protection for databases. In the matter of Burlington Home Shopping v Rajnish Chibber, 1995 PTC (15) 278 (referred to above), a case involving the misappropriation of a database of customers by an ex-employee, Justice Lahoti 3

4 referred to and relied on various commentaries on trade secrets which state that customer lists are protected as trade secrets. While there appears to be no case-law on the subject, it is possible to protect a database under contract law. However this may not be enforced against a party outside the contract. With the advent of online databases, it is possible to make the end-user agree to the contractual obligations as deemed fit by the database provider. Thus if the end-user infringes any of the obligations stipulated in the contract, it could amount to breach of contract under The Indian Contract Act, Under Section 43 (b) of the Information Technology Act, 2000 even insubstantial amounts of information are protected. In fact mere data has also been extended protection against unauthorized downloading, copying or extraction. There is no therefore no stipulation that at least a substantial amount of the work should be downloaded, copied or extracted. A person who damages a computer database is liable to pay up to Rs. 1,00,00,000/- (approx. USD 220,000/-) under Section 43 (d) of the Information Technology Act, It is pertinent to mention that not only is there no requirement under the Information Technology Act, 2000 for the databases to be original but also, the Act does not contain any fair dealing exceptions to infringement as provided in the Copyright Act Technological means may also be employed to protect databases and in this regard the Drafting Committee set up by the Core Group on Amendment to the Copyright Act, 1957 is proposing amendments for the protection of technological measures. 2. Proposals for Adoption of Uniform Rules 2.1 Legislation Should legislation be enacted to deal specifically with databases? If so, should national legislation be enacted or is there a need for an international treaty on the protection of databases? While the Indian legal regime provides some modes of protection for databases, it is not fully adequate to cater to the emerging database industry. It is therefore recommended that a national legislation be enacted to deal specifically with unoriginal databases. The principles applicable to the protection of databases ought to be harmonized in the form of an international treaty. 2.2 Definition of Database If you think that legislation should be enacted to deal specifically with databases what should the definition of database be? Should it extend to both electronic and non-electronic databases? The definition of database as appearing in Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases could be incorporated into the Copyright Act. It should include both electronic and non-electronic databases. 2.3 Copyright Protection of Databases Do you think that copyright protection should be granted to databases? If so, what should the criteria of protection be? Do you think that the level of originality required for a database to be copyrightable should be low, so that sweat of the brow databases qualify as copyrightable? What should the scope of copyright protection be? Copyright protection should be, and is granted to databases under Indian law. While Indian Courts have earlier upheld the sweat of the brow doctrine, the recent case of the Delhi High Court has cast doubts on its applicability to a compilation of pure facts or information. It may be argued that the judgment in question only answered the question of whether a 4

5 copy-edited judgment could be removed from the public domain and did not decide on the sweat of the brow doctrine at all. Copyright protection could extend to databases which evidence the author s intellectual input through selection or arrangement. The threshold for protection under a sui generis system ought to be sweat of the brow as this necessarily entails investment of both time and effort. 2.4 Sui generis Protection of Databases System of Protection and Subject Matter Do you think that sui generis legislation should be enacted to protect databases? If so, should there be a registration system to secure sui generis protection? Should the sui generis system only cover un-original databases or should there be the possibility to obtain cumulative sui generis protection also for original databases protected by copyright? It is recommended that a sui generis legislation be enacted to deal specifically with unoriginal databases. Registration should not be made mandatory for securing such protection, but the onus should be on the database author to prove the date of creation and the investment of time and effort in the creation of the database. The sui generis legislation ought to be confined only to unoriginal databases. Rule 15 of the Copyright Rules currently provides for registration of compilations and computer databases, although registration is not a prerequisite for copyright protection in India Criteria of Protection If you think that sui generis legislation should be enacted to protect databases, what should be the criteria of protection? If you think substantial investment should be one of the criteria of protection what should be the level of investment required for an investment to be considered substantial? A database ought to be protected if there is substantial investment of time or money in creating it. The substantiality of the time or expenditure may be decided through case law Rights granted and Scope of protection What rights should be granted to the database maker? If you think that extraction and reutilisation should be covered by the rights to be granted how should these notions be defined? If you think that substantial part should be relevant in determining the scope of protection, how should this concept be defined? The database maker must have the right to prevent unlicensed extraction and reutilization, and the definition of these notions may be akin to that found in Directive 96/9/EC referred to above. Section 14 of the Copyright Act specifies the exclusive rights that subsist in a database, being, inter alia, the right to reproduce or store it, to issue copies to the public, to make a translation or adaptation etc. The right of rental which is covered by re-utilization is not specifically covered and it is therefore recommended that this right of re-utilization be extended to copyrightable databases as well. It can be left up to case law to determine what a substantial part of a database is Limitations and Exceptions Should limitations or exceptions be granted? If so, which ones (e.g. private use, scientific research, education, public security, government purposes)? Should there be any compulsory licensing provisions? There ought to be some limitations on the exercise of rights over a database. Under the Copyright Act, a defence of fair dealing for the purpose of inter alia, private use, research, 5

6 criticism, review, reporting current events in newspapers and magazines, has already been provided. Reproduction for the purpose of judicial proceedings or a report of a judicial proceeding, by a teacher or pupil in the course of instruction, or for use of a library (3 copies only), if unavailable in India, is also allowed. The sui generis legislation may provide exceptions for private use, academic research and instruction, public security and administrative or judicial use. Compulsory licensing provisions may also be made applicable to certain databases if required in the public interest. For example a compulsory license may be issued to translate a database into regional languages Duration of Protection How long should the sui generis protection be? The protection for unoriginal databases ought to be fixed between a period of years. Furthermore, even if the database is substantially modified or altered by way of substantial investment, the protection of the original database must come to an end at the end of the 10 or 15 year period, so that the original database falls into public domain. Only the substantial alterations may qualify for a fresh term of protection, and not the complete database as a whole Assessment of existing sui generis systems If your country already provides for sui generis protection of databases, do you think the system should be revised? If so, why and in what ways? Not applicable as India does not have a sui generis system of protection for databases. 2.5 Possible Alternatives for a sui generis system If your country does not have unfair competition rules or if your country s unfair competition law does not have a role in the protection of databases do you think your law should be changed, so as to provide database protection on the basis of unfair competition law? Should there be any other means of protecting databases which your country does not offer or not fully take into account? If so, which ones? India, till the recent Delhi High Court decision, provided protection even to mere compilations such as customer lists under Copyright Law. This case may be distinguished in subsequent cases, and it could be argued that the Copyright Act does provide protection to compilations of mere facts or information. In such a case, there may not be an acute requirement for a sui generis legislation. Indian law also provides for the owner of a database to be protected against damage to its database under Section 43 (d) of the Information Technology Act, Under Section 43 (b), the Act also gives protection against unauthorized downloading, copying or extraction of mere data. Protection may also be availed of under principles of trade secrecy, contract and unfair competition, although the latter two principles are yet to be judicially tested. It is recommended that enhanced penalties may be imposed for infringing database rights. 6

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