16 February 2004


Over at the Tech Law Advisor blawg, Mr. Heller made the following remarks:

[Another blawger] cites the very important Feist case wherein the Supreme Court "made clear that plain effort does not constitute the originality required by the Constitution's Copyright Clause. Rather, directories and databases must exhibit "some minimal degree of creativity" in order to qualify for copyright protection."

As [the other blawger] states, the Copyright Clause requires original expression and draws the line at protecting facts. Simply stated it is unconstitutional to protect databases that are merely collections of facts. Copyright Clause and Supreme Court cases dating back over a hundred years say so.

[The other blawger] also addresses those who cry that databases fall under the Commerce Clause stating that: "Databases do fall within the Copyright Clause — and that means that they must be protected to the extent — and only to the extent — as other writings." Moreover, no less a copyright scholar than my old Professor William Patry will tell you that: "[t]he public's constitutional right to copy unoriginal material is not limited to cases in which Congress legislates under the Copyright Clause… the Constitution guarantees the public to protect against any congressional effort to provide rights to creators of unoriginal materials."* He means facts people!

"Copyright and the Constitution" (11 Feb 2004).

With all due respect to Mr. Heller and those he quotes—and not proposing this as policy, because I think it bad policy!—the analysis of the Commerce Clause question is not sound. Article I, § 8 is a list of positive powers that Congress has. A number of these powers overlap; others do not. The Necessary and Proper Clause allows Congress to fill gaps. See, e.g., McCulloch v. Maryland, 17 U.S. 316 (1819), and discussion at 68-99 in this book. The powers in Article I, § 8 are disjunctive; that is, no power necessarily modifies any other power in that section. (The prohibitions are in § 9 and a few other places.) Clause 8 (the Intellectual Property Clause) does not specify protection for trademarks and trade secrets. This in no way has prevented Congress, under its Commerce Clause powers, from establishing such protection, and should not be so read.

There certainly are restrictions in the Constitution against "congressional effort[s] to provide rights to creators of unoriginal materials," but they are not in Article I, § 8. In other words, they relate to the Intellectual Property Clause only by implication and interaction with it. For example, the "prior restraint" doctrine in First Amendment law certainly applies to anything that Congress does. Thus, "prior restraint" must be extremely narrowly tailored to pass scrutiny; the complexity of litigation on prepublication injunctions in copyright infringement actions demonstrates this more than adequately. See, e.g., Suntrust Bank v. Houghton Mifflin, Inc., 268 F.3d 1257 (11th Cir. 2001) (unpaginated version) (rejecting preliminary injunction application against The Wind Done Gone). But that by no means indicates that no protection at all can be provided against "expression" that infringes a right found in the common law or established by Congress pursuant to its powers.

I wish I could conclude otherwise. I think that database protection is a very, very bad idea. But, except in those instances in which the First Amendment provides a legitimate bar, the interplay between different clauses in Article I, § 8 does not bar database protection. That section is positive empowerments; and, as "negative Commerce Clause" jurisprudence demonstrates, absence of specific authorization does not mean absence of power. The Copyright Clause does not authorize indefinite copyright terms, so "permanent copyright" as Her Majesty's government has accorded Peter Pan would be out of bounds. However, neither does the Copyright Clause imply that that only kinds of protection possible for written (or otherwise) expression are the "limited time" rights in the Copyright Clause.

We are then into the morass of exactly how far legislation may go in creating "copyright-like" protection for uncopyrightable works; but that is a different inquiry from the core question of whether Congress has the power to enact a hypothetical statute that in some way protects databases. <SARCASM> That doing so would be exceptionally stupid and would benefit only a few parties while harming a great many others only increases the probability of eventual passage. </SARCASM> As a specific example, under the Commerce Power Congress may step in to regulate the exact contents of software license agreements. It might, for example, increase the scope of the Federal Arbitration Act, 9 U.S.C. § 1 et seq., to specifically include databases. Whatever one might say about the silliness and other problems of ProCD v. Zeidenburg, this is not a valid ground for criticism!

The one place that Congress might be prohibited from acting is in providing copyright-like protection to material that Congress has otherwise disclaimed, such as official works of the U.S. government. But that is for another time. On the question of raw power to act, unfortunately, it seems fairly clear that Congress has it. The constitutionality of particular proposed statutes is also another question; but it does not implicate the power to consider action in the abstract.