PTC FORUM: Online Journal of the Patent, Trademark and Copyright Research Foundation

CANADA / COPYRIGHT / DATABASES

Should Canada enact a new sui generis Database Right?

C D Freedman

Fordham Intellectual Property, Media and Entertainment Law Journal, Vol XIII No 1, Autumn 2002

As its title indicates, this article is mainly concerned with a problem for the Canadian legislature. It nevertheless approaches the subject on the basis of considerations applying to the protection of databases in all countries and particularly in the United Kingdom, the United States and the European Union. For example, the author emphasizes at the outset the economic importance of justifying intellectual property protection generally and database protection in particular. He also reviews the arguments about the social implications of extending legal protection both for existing forms of intellectual property and to new forms. Existing legal protection involves "automatic entitlements that flow necessarily from a proprietary approach": what is needed, according to the author, is to ask the more difficult questions, namely, when to protect databases, on what basis and to what degree. He looks at the relevant international rules, such as the Berne Convention and TRIPs; at the present position under the copyright laws of the United Kingdom and the United States; and at the problems arising under Canada's existing laws, particularly regarding the questions of originality, creativity and the protection of ideas. He draws attention to problems common to the various systems relating to databases and devotes much space to the Feist decision in the United States and to the Edutile and CCC cases in Canada. He goes on to describe the European Community directive on the protection of databases, which provides a two-tiered approach under sui generis rules and copyright rules respectively. As far as copyright protection is concerned, he makes the point that the directive has been successful in cutting down the broad application of copyright to a smaller role in the revised regime. As to the sui generis right, this is a non-proprietary form of protection, which may be seen as a variant of protection from unfair competition. The sui generis right in the directive, however, has certain problems of its own: "the absence of a strong link between the provisions as expressed and the justification for protection", the overly broad protection itself and the uncertainty as to the level of investment required to attract or maintain the database right. If these problems can be addressed in legislation based somewhat along the lines of the European Community directive, Canada's legislators may actually improve on the European Community model. In reaching this conclusion, the author returns to his opening theme: that economic studies would help. The author "wishes to detail the optimal term of protection and the level of investment required; but doing so would make heroic assumptions about the ability of legal academics to draw accurate economic conclusions". [20084]