Copyright Protection of Databases
The Wall Street Journal Case
Takashi B. Yamamoto
* Takashi B. Yamamoto is Attorney at Law,Managing Partner of Tanso & Yamamoto, in Tokyo, Japan.
Contents
| 1. | Introduction |
| 2. | The Facts in the Wall Street Journal Case |
| 3. | Decision of Tokyo High Court |
| 4. | Comments |
| 5. | Conclusion |
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1. Introduction
While compilation works have been protected since 1899, databases were considered as one of compilation works. In 1986, the current Copyright Law was revised to clarify that it protects databases through defining "databases" as later explained in details. The following Wall Street Journal case was a copyright infringement case concerning compilation works. It involved various issues such as copyrightability of compilation works and its infringement, injunction order for future works, border with free expression, antimonopoly of facts, and the fair use doctrine in Japan. In the following I am showing you the outline of the case and some comments on the category of database works and on the concept of originality under Japanese law. 2. The Facts in the Wall Street Journal Case (1) Parties and Alleged Infringement |
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Appellee here is Dow Jones & Co. Inc., a Delaware corporation, which publishes "The Wall Street Journal" in the United States.
Appellant here is Know-How Japan K.K., a Japanese corporation, which had continuously sold abstract services of "The Wall Street Journal" and "New York Times" since 1986 to the public in Japan. |
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(2) Copyright Infringement Suit |
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| Appellee filed with Tokyo District Court a copyright infringement suit for preliminary injunction order against Appellant in 1990. Tokyo District Court handed down a preliminary injunction order against Appellant in 1991.
Accordingly, Appellant appealed it to Tokyo High Court. |
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(3) Issues on Appeal |
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The issues raised on appeal were as follows:
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3. Decision of Tokyo High Court Tokyo High Court handed down its judgment on this case on October 27, 1994 (Hanrei Jihou 1524-118). (1) Copyrightability After finding that Appellee has selected and arranged news on its newspaper in accordance with its specific editing policy maintained for many years, the Court admitted that the newspaper is an original compilation work, stating as follows: |
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Appellee Newspaper consists mainly of news report, editorial and opinion, and also contains various market indices and advertisement. The editors, being employees of Appellee, select from numerous articles what to present as information following certain editorial policy of Appellee Newspaper and considering their newsworthiness, analyze importance, character and contents of each article, and categorize and arrange them on the paper. This arrangement on Appellee Newspaper is the product of mental activities of its editors, and forms the personality of Appellee Newspaper. Therefore it is reasonable to recognize the entire paper of a particular date as a compilation work with originality in the selection and arrangement of the material, and the compilation copyright therein should belong to Appellee who publishes Appellee Newspaper. |
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| (2) Copyright Infringement The Court held that Appellant's abstract services infringed Appellee's right of adaptation in its newspaper, stating as follows: |
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It is reasonable to interpret that, to determine whether making and distributing Appellant Document infringes the compilation copyright in Appellee Newspaper, or whether Appellant Document is adaptation of Appellee Newspaper, the court should consider: (i) whether Appellant Document was made based on Appellee Newspaper; (ii) whether it has common contents with the expression of objective events materialized in the article, which is the nucleus of the article and which Appellee Newspaper selected as having value to be transmitted; and (iii) whether its arrangement is same or similar to that of the articles in Appellee Newspaper. According to the facts found in paragraph 1, subparagraph 5, Appellant Document was made based on Appellee Newspaper; it has common contents with the expression of objective events materialized in the article, which is the nucleus of the article and which Appellee Newspaper selected as having value to be transmitted; and its arrangement is similar to that of the articles in Appellee Newspaper. Therefore, it is reasonable to find that Appellant Document is adaptation of corresponding Appellee Newspaper of the particular date, and that making and distributing Appellant Document infringes the compilation copyright in Appellee Newspaper. |
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| (3) Injunction Based on Future Works The Court defined the requirements to issue an injunction order based on future works, and found that this case met all the requirements, stating as follows: |
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An action for future performance may be raised when factual and legal relationship which forms the basis of right (relationship which is the basis of the claim) exists. In the case of newspaper, if it is highly probable that the newspaper continues in the future to select and arrange the material based on the same particular editorial policy and to be published as a compilation work with originality, and, on the other hand, if acts of infringement of compilation copyright has occurred for each publication of the newspaper and is predicted to continue in the future, it is reasonable to interpret that a party can claim for prevention of predictable acts of infringement in the action for future performance, on the condition that the newspaper is published. This is because of: the underlying policy of Article 112 of the Copyright Law and Article 226 of the Code of Civil Procedure; the fact that a newspaper is published periodically and repeatedly in a short time period, and the court cannot provide substantive remedy to rightholders if the responsibility for infringement is sought only after the copyright comes to existence by publication; and the fact that even if the specific material are different, there is little danger of complicating the legal relationship or destroying the equilibrium among the parties by treating the newspaper as having compilation copyright as long as particular editorial policy will not change in the future. |
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| (4) Necessity for Preliminary Injunction The Court affirmed the necessity for preliminary injunction for Appellee as follows: |
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Appellant will continue to make and distribute Appellant Document. It is fairly probable that subscribers of Appellee Newspaper switch their subscription to Appellant Document, or that potential subscribers of Appellee Newspaper subscribe to Appellant Document. As the court can find that Appellee will suffer considerable damages thereby, there should be necessity for conservation. |
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| (5) Relationship to Freedom of Expression The Court rejected all other arguments of Appellant. Among them, the argument on the border between freedom of expression and copyright protection was dismissed as follows: |
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Appellant argues that Article 10, Section 2 [of the Copyright Law] should be interpreted as declaring that copyright should yield to some extent to the important demand derived from the freedom of expression. It argues that it is not permissible to prohibit in the name of the Copyright Law such documents as Appellant Document which present news or current events and do not substitute for the articles in Appellee Newspaper but rather provide information only to facilitate access thereto, because such prohibition amounts to excessive limit to circulation of information on current events. Meanwhile, Article 10, Section 2 of the Copyright Law, providing that news of the day and miscellaneous facts having the character of mere items of information are not literary works, is interpreted as confirming that they are not the case where "thoughts or sentiments are expressed in a creative way" and thus not subject to protection. As found above, Appellant Document is the adaptation of Appellee Newspaper, and not what provide information only to facilitate access thereto. The court can hardly find that ban on making and distributing of Appellant Document amounts to excessive limit to circulation of information on current events. |
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| (6) Concern over Monopoly of Facts
The Court disagreed with Appellant's argument that copyright protection for newspaper causes facts themselves to be monopolized, stating as follows: |
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Appellant argues that a special consideration is necessary in the case of newspaper to avoid monopolization of facts because of the unique characteristics of material therein.
Nevertheless, in the case of newspaper, what to select as information to be transmitted and how to treat them form the personality of the newspaper and show the originality as a newspaper. The court can find originality in Appellee Newspaper in its selection of information to be transmitted following particular editorial policy and their arrangement. Therefore, the newspaper is obviously entitled to protection as provided by the Copyright Law, which will not lead to monopolization of facts.
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(7) Dissimilarity between Appellee's and Appellant's Works
Contrary to Appellant's argument, the Court found substantial similarity between Appellee's and Appellant's works, stating as follows: |
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To establish the infringement of right to adaptation arising from the compilation copyright in a newspaper, the document needs only to be based on the newspaper and to contain as common elements expression of objective events which is the nucleus of the information dealt with in the newspaper and materialized in its article. It is reasonable to interpret that specific expression or precise contents of the individual material (element) therein need not reasonably correspond to its counterpart. |
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(8) Bibliographic Nature The Court rejected Appellant's argument that Appellant's abstracts are such bibliographies that do not replace the market for Appellee's newspaper, discussing as follows: |
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Appellant argues that the abstracts in Appellant Document corresponding to the articles in Appellee Newspaper are bibliographic information providing the users with the method to search for the original information and are no more than minimum summary. It argues that they cannot substitute for articles in Appellee Newspaper or for the entire newspaper. Accordingly, it argues, it is naturally permissible to incorporate the abstracts into Appellant Document, a nonelectronic compilation.
The court can hardly find that the accounts in Appellant Document corresponding to the articles in Appellee Newspaper are merely bibliographic information providing the users with the method to search for the original information. |
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| (9) The Doctrine of Prior Restraints
The Court also rejected Appellant's argument that an injunction order prohibiting Appellant's abstracts services conflicts with the doctrine of prior restraints, discussing as follows: |
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Prior ban on distribution of publication, or prior restraint on acts of expression, is to stop the publication before its entry into the free market and to close the way to reach the readers, or to delay the arrival, take away its meaning and reduce the opportunity for public criticism. It must be based on prediction because of its character as prior restraint. Therefore it is likely to reach farther than the sanction after the fact, risk of its abuse is larger, and its actual restrictive effect is likely to be larger than the sanction after the fact. Accordingly, pursuant to the underlying policy of Article 21 of the Constitution, which guarantees the freedom of expression and prohibits the censorship, prior restraint on acts of expression can be permitted only under strict and clear conditions (see Judgment of the Supreme Court of June 11, 1986, Minshu 40-4-872). Meanwhile, with regard to acts of copyright infringement, Article 112 of the Copyright Law permits prior ban. Considering also that the conditions discussed above are necessary to permit prior restraint on acts of expression, it is reasonable to interpret that prior ban on publication in this case does not constitute prior restraint if the harm discussed above is rarely likely to occur. Appellant argues that while expression infringing copyright can be limited to protect the interest of author whose right is infringed, such expression is still protected by Article 21 of the Constitution. Therefore, it argues, the court must determine what method or degree of limitation is proper, considering whether there is less restrictive alternative, whether it is against the principle forbidding prior restraint or prohibition of censorship, contents of the expression to be limited, degree and clarity of infringement of copyright by the expression, and whether there is possibility of restoring protection of copyright. Appellant then lists the circumstances to be considered. Nevertheless, the act of infringement against compilation copyright in Appellee Newspaper is clear, and has continued since September 1986. Prior ban on publication of Appellant Document is effective and proper to protect compilation copyright in Appellee Newspaper. Considering these and all other circumstances of this case, the court can hardly find that the original judgment for preliminary order of prior ban on publication of Appellant Document constitutes prior restraint or censorship. |
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| (10) The Doctrine of Fair Use Although Appellant argued for applying the fair use doctrine to this case, the Court denied the doctrine in the Japanese Copyright Law, discussing as follows: |
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Article 1 of the Copyright Law defines the objective of the Copyright Law as "to secure the protection of the rights of authors, etc. having regard to a just and fair exploitation of these cultural products, and thereby to contribute to the development of culture." Article 30 et seq. set forth the limitation on copyright based on legislative policies. It is not reasonable to conclude immediately from these provisions that we generally recognize the principle of fair use. As limitation to copyright by fair use is based on the balance of conflicting interests, namely the interests of author and public necessity, conditions to apply the principle of fair use must be clearly set out. Under our legal system where such provision does not exist, we cannot find general principle of fair use.
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4. Comments (1) Category of Database Works While "compilation works" have been protected since 1899, databases were considered as one of compilation works. The current Copyright Law was revised in 1986 to clarify that it protects databases through defining "databases." Since the 1986 revision, the category of database*2 works has been protected as different one from the category of compilation works. Article 12 of the Copyright Law protects compilation works as follows: |
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| Database works are protected under Article 12bis, which stipulates as follows: | |||||||||||||||||
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| As you find above, the category of database works is defined differently from that of compilation works: "arrangement" is replaced with "systematic construction." This is because "database" here is limited to compilation of information that is systematically constructed so that information can be searched for with the aid of a computer. Accordingly, "systematic construction" is found when information is searchable by certain index. (2) Concept of Originality The fundamental requirement for copyrightability is "originality" for all the categories of works*3 including compilations and database works. According to case law, "originality" means a manifestation of the author's personality. For instance, Tokyo District Court judgment of March 3, 1986 (Hanrei Jihou 1183-148, Hanrei Times 609-95), concerning the copyrightability of the "Expectation of Success and Failure" as made for the election of Representatives of the House, stated: |
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It should be interpreted that 'Originality' is different from creativity in its strict meaning and that it only means the manifestation of the author's personality in the external form of expression. |
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Therefore, if we ask whether only simple reproduction lacks the requisite "personality," the answer is yes. Examining those past cases that questioned originality, the precedents can be classified into the four categories concerning "manifestation of personality" as follows:
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| (i) Simple Reproduction In cases of "simple reproduction," there is no possibility of expressing the personality of the author. This is obvious when someone simply reproduces sentences from other novels. In the case of copying other pictures and handwriting by machines, there is no personality of the author. However, if it is copied by hand, it would not necessarily be identical to the pre-existing work and there may be some personality of the author. In this case, the issue will be whether the matter constitutes a "trivial change" as discussed below. (ii) Trivial Change The cases where originality is denied under the concept of "trivial change" arise when the author changes the pre-existing work so trivially that any changes cannot be distinguished from the pre-existing expression. For instance, where the defendant argued that the plaintiff's "world map for a terrestrial globe, which was made by editing the pre-existing maps does not possess its own originality which can be distinguished from other similar works," Tokyo High Court found that the plaintiff's map contained the requisite originality, after dealing with it in the following manner (Judgment of February 2, 1971, Hanrei Jihou 643-93): |
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It is admitted that, without simply adapting the matters of various data from the preexisting work, Mr. Ikeda endeavored to express the matters by choosing various materials, based on his own design and system. It is further admitted that it is obvious that his forms to express ocean currents are different from those of the pre-existing world maps, and that there is an obvious difference between the said world map for a terrestrial globe and the pre-existing ones in the indication in English of country names, city names and other places, and in the choosing of airline routes. Therefore, it is perfectly legitimate that the original judgment admitted that the plaintiff's world map possessed its own originality which can be distinguished from other similar works and held it a copyrighted work. |
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| If originality were to be admitted regarding indistinguishable changes and copyright protection given to such a work, the protection would extend not only to the changes of authorship but also to the expressions from the pre-existing works. In those cases, the author of such changes could obtain exclusive rights to the pre-existing works, and such trivial changes could limit public access to the pre-existing expressions even though such expressions are in the public domain. Therefore, where such trivial changes cannot be distinguished from the pre-existing expressions, originality should be denied. (iii) Inevitable Expression Cases where originality is denied under the concept of the "inevitable expression if ideas" happen where only one form of expression is possible to express certain ideas. For instance, in a case adjudicated in Osaka District Court, the issue involved the originality of the plaintiff's research report on a light-emitting diode which was allegedly pirated in the defendant's thesis. The Court denied the originality of expression of the plaintiff's research as follows (Judgment of September 25, 1979, Hanrei Times 379-152): |
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| Copyright Law defines work as the "original expression of thoughts or feeling which falls in the scope of literature, science, fine art or music" (see paragraph 1(1) of Article 2 of said law). Copyright Law shall protect the original form of expression which gives tangible manifestation of ideas and feelings in words, letters, sound, color, etc. However, even though having originality and novelty, the contents expressed thereof, namely, ideas or theory such as thoughts or feelings themselves, excepting stories of novels, cannot principally be works and they shall not be protected under Moral Rights of Author nor Property Rights prescribed in the Copyright Law (the so-called principle of free idea). Especially since the laws of natural science and their discovery and the inventions which are the creation of technical ideas utilizing said laws are common facts for all people, and anyone shall be permitted to make free use of those facts, it shall be considered that they cannot be the subject of Moral Rights of Author or Property Rights provided for in the Copyright Law, although those inventions shall be nothing but objects of Industrial Property Rights such as Patents, Utility Model Rights and Design Rights. Though, in fact, regarding the laws of natural science and their discovery and the inventions utilizing these laws, it shall be considered that if there is originality in the methods of description and if the original expression of a process of a particular theory falls in the scope of science or fine art, then separately from its content, forms of such expressions shall be under the protection of Moral Rights of Author or Property Rights. It shall be considered that differently from the general literary works which have several forms of expression for the same matter, a portion explaining laws in refer-ence to natural science has available forms of expression which are short on personality of the author and fairly commonplace because of their nature, and accordingly the forms of explanation for each law are not the subject of Moral Rights of Author or Property Rights especially unless the thesis in which they are contained is acknowledged as an original work based on the author's personality. However, there is no reasonable evidence to find that the plaintiff originally expressed the descriptive parts in Attachments 1, (1) and (2) as an explanation of materials and natures of MgTe, CdTe and other scientific laws, and that therefore the forms of expression (methods of explanation) should be the subject of the protection of Moral Rights of Author and Property Rights. |
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This judgment described the theories that (1) protection of copyright is given to expression but not to the ideas described thereby, and (2) even if it is expression, it does not possess originality when it uses unavoidable forms of expression to describe such ideas. The Copyright Law reflects the first theory in the following manner: (1) Paragraph 1, (1) of Article 2 of the Law defines "expression" as a "work" on the premise of the dichotomy of expression and idea; (2) Paragraph 2 of Article 10 denies the copyrightability of "News reports on current topics and miscellaneous news which are nothing but delivery of facts"; and (3) Paragraph 3 of Article 10 provides that a "a programming language, rule or algorithm," which is idea, shall not be protected by the Copyright Law. The second aforementioned theory, stating that a work does not possess originality where the expression of the ideas uses an unavoidable form of expression is a corollary of the Industrial Property Right system. The Industrial Property Right system is for the protection of ideas; however, it also contains public organizations set up for the purpose of reviewing protection requirements. If copyright protection were to extend to the simple description of ideas, exclusive rights would be given to ideas by copyright without reviewing the protection requirements by a copyright institution and without public notice of extent of protection, and it would be impossible for the public to use those ideas without infringing the copyright. Consequently, that would go against the public policy behind the Industrial Property Right system. (iv) Commonplace Expression Cases where originality is not admitted under the concept of the "commonplace expression of ideas" happen where the expression of those ideas is described using ordinary and commonplace forms. For example, when the question of the originality of a "bookkeeping classification board" whose records are arranged in disk form, in order to systematically keep complicated journals, was adjudicated, Osaka High Court denied its originality for the following reasons (Judgment of March 29, 1963, Lower Court Cases 14-3-509): |
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The sentences printed in a radial section of the aforesaid classification board are enumerated as an example of daily commonplace dealings, and the titles, arrangement, combination, methods of classification of counting subjects indicated in each subject's column of the debtor and the creditor by turning the disk are elementary and typical. Accordingly, each of them does not have an originality particularly in science. We consider that, were copyright to be given to these trite phrases used ordinarily as technical terms, people other than the author of the work would not be able to use them and consequently there is a possibility of hindering the development of society and culture. In view of these points, if we take the classification board into consideration as an independent object, needless to say, this classification board cannot be considered to be a independent work, even though we understand that it was previously given copyright registration as an attachment to other books in 1957. |
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As mentioned above, copyrightability of the expression of ideas is denied if the expression of the idea is limited to ordinary and commonplace forms of expression, since everyone should be free to use ideas. Exclusive rights should not be given by the Copyright Law to ideas which are not protected by Industrial Property Rights such as Patents. These ideas should be able to be freely used by everyone as common property. Free use of ideas would be prevented unless, not only inevitable forms of expression of ideas, but also commonplace forms of expression which everybody contemplates, are excluded from copyright protection. The decision of Tokyo High Court in the System Science case (Judgment of June 20, 1989, Hanrei Jihou 1322-138) denied originality as defining "inevitable expression of ideas" or "commonplace expression of ideas" regarding the CA-7II program and its similarity to the CA-9 program. The decision denied originality since "the combinations of commands in the 'Disposal routine after data input from the central part' is constrained by the hardware, and therefore it cannot help having similar combinations naturally." It was an inevitable combination of commands so that a combination of commands (expression) can carry out certain function (ideas) upon the same hardware. The decision also denied originality on the basis that "[b]oth the CA-7II program and the CA-9 program of 'Disposal routine coping with dysfunction of printer' are adapting a very commonplace combination of commands." They constituted commonplace combination of commands (expression) to carry out the certain function (ideas). 5. Conclusion As discussed above, the concept of originality under Japanese law incorporates the so-called "merger doctrine" and consequently is very similar with that in Feist Publications, Inc. v. Rural Telephone Co., Inc., 499 U.S. 340 (1991), although Japanese courts adopted it earlier than the U.S. Supreme Court. Just like in the United States, therefore, copyright protection to database works is strictly limited as a matter of fact because functionality of database inevitably restricts forms of selection and systematic construction of information. Accordingly, sui generis right or unfair competition protection to databases will be necessary in Japan while the related industries have not moved for such legislation yet. Notes
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