10 - Floors and Ceilings in International Copyright Treaties

Summary

This paper addresses “floors” – minimum substantive international protections, and “ceilings” – maximum substantive international protections, set out in the Berne Convention and subsequent multilateral copyright accords. While much scholarship has addressed Berne minima, the “maxima” have generally received less attention. This Comment first describes the general structure of the Berne Convention, TRIPS and WCT regarding these contours, and then analyzes their application to the recent “press publishers’ right” promulgated in the 2019 EU Digital Single Market Directive. Within the universe of multilateral copyright obligations, the Berne maxima (prohibition of protection for facts and news of the day), buttressed by the TRIPS and WCT exclusion of protection for ideas, methods and processes, should promote the free cross-border availability of facts and ideas, as well as of exercise of the Berne Convention mandatory exception for the making of “quotations” from publicly-disclosed works. Individual Berne countries of origin may protect excluded subject matter or preclude mandatory exceptions in their own works of authorship, but not in foreign Berne works. Nonetheless, Member States might be able to elude Conventional maxima by resort to copyright-adjacent sui generis rights, such as the Digital Single Market Directive’s new press publisher’s right. This Comment considers the extent to which Conventional maxima may nonetheless have a preclusive effect on such maneuvers.

Table of Contents

1. A. The Two Pillars of International Copyright Treaties 289

   1. I. Meaning of “Minima” and “Maxima” 290

   2. II. Policy Underlying Berne “Maxima” and Its Preclusive Effect 295

2. B. Berne/TRIPS/WCT Maxima Applied: The Case of the DSM Directive Art. 15 Press Publishers’ Right 296

   1. I. Why Create a Press Publishers’ Right? 297

   2. II. Does Art. 15 DSM Bestow Copyright Protection on Berne-Excluded Subject Matter? 298

   3. III. May the EU Protect Berne-Adjacent Subject Matter through Sui Generis Systems? 301

   4. IV. Even Were a Sui Generis Right in Berne-Excluded Subject Matter Permissible, Must Exceptions to That Right Be Interpreted Co-extensively with the Berne Art. 10(1) Quotation Right? 304

3. C. Conclusion 307

A. The Two Pillars of International Copyright Treaties

The Berne Convention and subsequent multilateral copyright accords rest on two pillars: national treatment and supranational substantive obligations. National treatment is a rule of non-discrimination: a Member State may not accord foreign authors less protection than it grants its own. But a second principle buttresses the first: whatever level of protection national law provides, a treaty Member State must grant foreign authors protection commensurate with the treaty’s substantive standards. Most often that obligation means that Member States whose domestic laws fall below the treaty minima must accord more protection to foreign authors. Berne’s drafters anticipated that the political precariousness of such an outcome would result in a general raising of the level of domestic protection as well.¹ In the case of Berne maxima, in theory a Member State could deny foreign Berne works the protections that it extends to local authors, if that coverage concerns subject matter that the treaties exclude – or rights that a mandatory exception mitigates. But, as the drafters may also have anticipated, most national laws are likely to incorporate Berne’s mandatory exclusions and exceptions, so that a downward discrepancy between local law and the Berne norms seems improbable – or did until the passage of art. 15 of the Digital Single Market Directive (hereafter DSM), on press publishers’ rights, called that assumption into question.

This paper addresses the “floors” (minimum substantive international protections) and “ceilings” (maximum substantive international protections) set out in the Berne Convention and subsequent multilateral copyright accords. While much scholarship has addressed Berne minima,² the maxima have generally received less attention.³ I first address the general structure of the Berne Convention, TRIPS and WCT regarding these contours, and then analyze their application to the recent “press publishers’ right” promulgated in the 2019 EU DSM.⁴

I. Meaning of “Minima” and “Maxima”

The Berne Convention contains many mandatory obligations regarding subject matter and rights. These are the provisions denoted by “shall,” for example, regarding protected subject matter, art. 2(1): “The expression ‘literary and artistic works’ shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression ….” Another example is art. 2(3): “Translations, adaptations, arrangements of music and other alterations of a literary or artistic work shall be protected as original works without prejudice to the copyright in the original work.”⁵

By contrast, some subject matter provisions clearly signal their optional character. For example, art. 2(4), “It shall be a matter for legislation in the countries of the Union to determine the protection to be granted to official texts of a legislative, administrative and legal nature, and to official translations of such texts” (emphasis added here and subsequent citations). The formulation “It shall be a matter for legislation in the countries of the Union” tells us that protection for the object is permitted, not required – nor prohibited.⁶

With respect to rights, the same expressions identify the right or exception as mandatory or left to local legislation. Hence, for example, art. 8 proclaims: “Authors of literary and artistic works protected by this Convention shall enjoy the exclusive right of making and of authorizing the translation of their works throughout the term of protection of their rights in the original works.”⁷ But art. 11bis(2) states: “It shall be a matter for legislation in the countries of the Union to determine the conditions under which the rights mentioned in the preceding paragraph [various forms of communication to the public] may be exercised ….”⁸

Now consider ceilings. Berne and subsequent treaties allow Member States to create exceptions and limitations to exclusive rights, generally subject to a variety of conditions. With one exception, Berne does not impose any restrictions on the scope of rights.⁹ Because these derogations from exclusive rights are optional, they are not maxima. We return to the one rights restriction that Berne prefaces with “shall” after considering maximum subject matter.

The TRIPS and the WCT expressly incorporate the “idea–expression dichotomy,” that is, the exclusion of ideas, methods and processes from the subject matter of copyright.¹⁰ The Berne Convention does not explicitly adopt this rule, although it may be implicit in the overall concept of “literary and artistic works” or through state practice, given that most or all Member States are likely – by text and/or by caselaw – to exclude these elements from the scope of protection.¹¹ The Berne Convention goes further than the later accords in also removing facts from protection (though this exclusion may also be implicit in those agreements). Art. 2(8) states: “The protection of this Convention shall not apply to news of the day or to miscellaneous facts having the character of mere items of press information.” As a result, a Member State may not grant copyright protection to the ideas or facts (as opposed to their expression) contained within the works of foreign authors. Again, the Berne minima and maxima apply only to works of foreign Berne origin: “Protection in the country of origin is governed by domestic law.”¹²

Turning to maximum rights under Berne, the art. 10(1) quotation provision is a “shall” clause, qualified by a variety of conditions. However, on its face, it is a direction to Member States to permit the making of “quotations from a work which has already been lawfully made available to the public, provided that their making is compatible with fair practice, and their extent does not exceed that justified by the purpose, including quotations from newspaper articles and periodicals in the form of press summaries.” This Comment does not explore art. 10(1) in depth,¹³ but examines the premise that it establishes a mandatory quotation “right” within its purview. Absent a mandatory character, art. 10(1) would not be a true maximum, and any ceiling it imposes would in fact be retractable.

Aplin and Bentley contend that there are several reasons to believe that this provision imposes a mandatory requirement for Member States to provide for a quotation exception.¹⁴ The first is the text: the language “shall be permissible” indicates that the quotation provision is obligatory.¹⁵ That interpretation is bolstered by the contrasting language used in other provisions that are optional. With the exception of art. 10(1), Berne allows Member States to institute copyright limitations and exceptions, but does not impose them. For example, the very next provision of art. 10 specifies that limitations related to certain educational uses “shall be a matter for legislation in the countries of the Union.”¹⁶

Second, the records of the Stockholm Conference of 1967, where the present language of art. 10(1) was adopted, also support the notion that art. 10(1) is mandatory. The language of art. 10(1) was initially proposed by the 1963 Study Group, which repeatedly referenced the “right of quotation” and the “right to make quotations” (emphasis added), again suggesting that the exception is required.¹⁷ Finally, Aplin and Bently point to existing commentary interpreting art. 10(1) as mandatory.¹⁸ Among these, some commentators have suggested that the exceptional mandatory status of art. 10(1) reflects its dual operation: it is a limitation that curbs one author’s right in order to benefit not only the general public but also other authors, who in many fields rely upon the ability to quote other works.¹⁹ This rationale, however, does not explain why permitted exceptions, many of which also further downstream authorship, should not also be mandatory.²⁰

Nonetheless, not all commentators agree that art. 10(1) is mandatory; some²¹ contend that the provision merely permits rather than requires a quotation right. Ficsor, for example, has argued that because Berne expressly provides that Member States can enter into agreements providing higher levels of protection,²² art. 10(1) is not obligatory, at least in principle.²³ Ficsor also notes that the practice of Member States, specifically the European Union, has been to interpret art. 10(1) as optional.²⁴ In particular, the InfoSoc Directive expressly provides that “Member States may provide for exceptions and limitations” (emphasis added) regarding

quotations for purposes such as criticism or review, provided that they relate to a work or other subject-matter which has already been lawfully made available to the public, that, unless this turns out to be impossible, the source, including the author’s name, is indicated, and that their use is in accordance with fair practice, and to the extent required by the specific purpose.²⁵

Aplin and Bentley also acknowledge that the practice of EU members has not been to treat art. 10(1) as obligatory, with Sweden being one of the very few countries – or the only one – that has enacted domestic legislation that fully implements the requirements of art. 10(1).²⁶ They contend, however, that the EU’s seemingly optional implementation of a quotation exception in the InfoSoc Directive is not necessarily in conflict with the art. 10(1) requirement, as the Directive covers both Berne and non-Berne works.²⁷

In any event, while the scholarship is somewhat divided, the weight of authorities seems to favor the interpretation that art. 10(1) is mandatory.²⁸ Even among the commentators who agree that quotation right is obligatory, however, there remains some disagreement about the implementation of the right. Professors Goldstein and Hugenholtz, for example, argue that “[a]lthough Article 10(1) is mandatory rather than permissive, national legislatures presumably are free to prescribe the conditions on which quotation is permitted,” and thus see no conflict in principle or practice with the InfoSoc Directive.²⁹ For purposes of this Comment, we grant the premise that art. 10(1) is mandatory and therefore consider its application to the new EU press publishers’ right.

II. Policy Underlying Berne “Maxima” and Its Preclusive Effect

A concern to maintain the free international flow of basic elements of information appears to animate and unite the Berne maxima. These provisions offer the Convention’s strongest expression of solicitude for the broader public interest, notwithstanding the Convention’s overall goal to protect the rights of authors. The Convention cannot prevent a Member State from locally privatizing information its own authors generate – that is the consequence of art. 5(3) – but it can require that Member States preserve the freedom of these excluded elements when the works that contain them traverse borders. Thus, if national legislation purports to grant protection to Union authors in such cases, this must be contrary to the Convention.

Nor would Berne art. 19 change that conclusion. That provision declares that “[t]he provisions of this Convention shall not preclude the making of a claim to the benefit of any greater protection which may be granted by legislation in a country of the Union.” It addresses protection for works of authorship and therefore still comes within the general Berne framework. Under art. 5(1), authors enjoy rights “in respect of works for which they are protected under this Convention ….” Works, or elements of works, omitted or excluded from Berne subject matter thus fall outside the ambit of art. 19, and Union authors therefore have no treaty entitlement to protection for such subject matter. But the concept of Berne maxima goes further, in that it would deny Member States the option of according foreign Union authors copyright protection to certain subject matter (the news of the day). By the same token, while art. 19 clearly extends to rights in protected subject matter that are not specified among the mandatory minimum rights of the Convention, it should be understood as entitling Union authors to claim “greater protection” in Member States so long as their domestic law is not inconsistent with Berne norms. Member States may supplement Berne minimum rights but may not undermine the policies underlying the principle of maximum protection. Whether as a matter of national treatment under art. 5(1), or of claim to greater rights under art. 19 (which, in this respect, reinforces the rule of national treatment to make clear that the rule extends beyond Convention’s minima), if domestic protection is “greater” because, for example, the Member State does not provide for quotation rights, that State may not insulate foreign Berne works from acts coming within the scope of art. 10(1), because the Member State would thus be rendering impermissible that which Berne declares “shall be permissible.”

This reading of art. 19 can draw on support from Berne art. 20. This provision permits Berne Union members to enter into “special agreements among themselves, in so far as such agreements grant to authors more extensive rights than those granted by the Convention, or contain other provisions not contrary to this Convention.” If those agreements exceed the Berne maxima, then they contravene art. 20. One might imply a similar limitation in art. 19. Admittedly, one might instead contend, by way of negative inference, that the absence of a similar proviso in art. 19 suggests that Union authors may claim greater protection in a Member State even if that state’s domestic protection contravenes Berne. Such a textually permissible reading, however, seems inconsistent with the overall structure and goals of Berne.

On the other hand, the “special agreements” that art. 20 references concern authors’ rights; they are copyright agreements. If Berne, TRIPS and the WCT prohibit copyright coverage of ideas and facts, does it follow that Member States may not protect those elements by other means – such as a sui generis neighboring right (which would, in effect, remove the malodor by applying any other name to the same stinkweed) or by resort to another international norm, such as the Paris Convention art. 10bis guarantee of protection against unfair competition?³⁰ Can one derive a preclusive effect of Berne, TRIPS and WCT from those exclusions, or does the path remain open to Member States to pursue protection by other means? DSM Directive art. 15 casts those questions into sharp relief, as we see in the next part.

B. Berne/TRIPS/WCT Maxima Applied: The Case of the DSM Directive Art. 15 Press Publishers’ Right

First, an overview of the provision and its rationale, as set out in the accompanying Recitals. Art. 15 provides, in relevant part:

Protection of press publications concerning online uses

1. 1. Member States shall provide publishers of press publications established in a Member State with the rights provided for in Article 2 and Article 3(2) of Direcve 2001/29/EC [reproduction and communication to the public] for the online use of their press publications by information society service providers.

   …

The rights provided for in the first subparagraph [of art. 15(1)] shall not apply in respect of the use of individual words or very short extracts of a press publication.

Art. 2(4) defines “press publications” as follows:

• ‘[P]ress publication’ means a collection composed mainly of literary works of a journalistic nature, but which can also include other works or other subject matter, and which:

  1. (a) constitutes an individual item within a periodical or regularly updated publication under a single title, such as a newspaper or a general or special interest magazine;

  2. (b) has the purpose of providing the general public with information related to news or other topics; and

  3. (c) is published in any media under the initiative, editorial responsibility and control of a service provider.

Periodicals that are published for scientific or academic purposes, such as scientific journals, are not press publications for the purposes of this Directive.

I. Why Create a Press Publishers’ Right?

The EU Commission perceived that the practices among third-party online services of news aggregation and other copying from the websites of newspapers and periodicals threatened those publications’ continued existence.³¹ The Commission therefore provided a two-year³² neighboring right³³ of the “the same scope as the rights of reproduction and making available to the public provided for in [the Information Society] Directive” and subject to “the same provisions on exceptions and limitations as those applicable to the rights provided for in [that] Directive, including the exception in the case of quotations for purposes such as criticism or review provided for in art. 5(3)(d) of that Directive.”³⁴ The objectives are clear, namely to insulate press publishers from online services’ predatory practices and to require remuneration for the services’ copying and communication to the public.³⁵ But art. 15’s subject matter coverage is unclear.³⁶ On the one hand, Recital 57 states: “The rights granted to publishers of press publications should not … extend to mere facts reported in press publications.” Recital 58 reinforces that exclusion. While extending the neighboring right to “parts of press publications,” it cautions,

such uses of parts of press publications have also gained economic relevance. At the same time, the use of individual words or very short extracts of press publications by information society service providers may not undermine the investments made by publishers of press publications in the production of content. Therefore, it is appropriate to provide that the use of individual words or very short extracts of press publications should not fall within the scope of the rights provided for in this Directive. Taking into account the massive aggregation and use of press publications by information society service providers, it is important that the exclusion of very short extracts be interpreted in such a way as not to affect the effectiveness of the rights provided for in this Directive.

(Emphasis supplied.)

The highlighted phrase suggests that the meaning of “very short extracts” may depend on the significance of the economic impact of the appropriation of those extracts. In some instances, “the use of individual words or very short extracts of press publications by information society service providers may [might] not undermine the investments made by publishers of press publications in the production of content,” but in other cases, the practice of “massive aggregation” of small amounts of content by service providers could cumulatively cause economic harm. An effective remedy therefore might need to apply granularly. But would such relief run afoul of Berne’s subject-matter limitations?

II. Does Art. 15 DSM Bestow Copyright Protection on Berne-Excluded Subject Matter?

To the extent that art. 15 DSM provides extra-national copyright protection to the “news of the day” or “mere items of press information,” it would violate art. 2(8) Berne. Whether the rights conferred qualify as copyright, that is, “the protections of [the Berne] Convention,” or are more accurately characterized as a sui generis system of protection, is discussed in the section below. Here, the question is whether “press publications” include the subject matter expressly excluded under art. 2(8) Berne.

To begin, it is necessary to determine the scope of the exclusions in art. 2(8). What qualifies as “news of the day” or “items of press information”? The provision excluding the news of the day and items of press information from protection was moved from art. 9 to art. 2 during the 1967 Stockholm Conference revisions.³⁷ As the Records of the Conference indicate, “[t]he precise meaning of the provision is far from clear.”³⁸ The question of whether the provision could be improved or clarified was first raised by the Permanent Committee at its 1958 session in Geneva and subsequently discussed by the Study Group in its 1963 Report.³⁹ In its report, the Study Group ultimately adopted the following understanding of the provision:

The correct meaning of this provision is that it excludes from protection articles containing news of the day or miscellaneous information, provided that such articles have the character of mere items of news, since news of this kind does not fulfill the conditions required for the admission to the category of literary or artistic works.⁴⁰

Thus, the role of the provision was merely “to recall the general principle whereby the title to protection of articles of this kind, as in the case of other intellectual works, pre-supposes the quality of literary or artistic works within the meaning of the Convention.”⁴¹

Note that the Study Group perceived the exclusion to apply to entire articles and not merely to the information they contained. It appears that the Study Group assumed that the articles would be so devoid of authorship as to fail to qualify as a “literary or artistic work.” As such, the Study Group considered the “news of the day” exclusion to be a “superfluous element,” but retained the provision nonetheless. Moreover, although there had been some discussion of modifying the provision to improve its clarity, the Study Group concluded that no modification was necessary as “it would be sufficient to discuss the question of interpretation in the documents of the Conference.”⁴² That position was reaffirmed in the Study Group’s 1964 Report.⁴³

The report of the Main Committee on the Programme of the Conference reiterates this view. The report concluded that “the provision only seeks to establish that the Convention does not protect mere items concerning the news of the day or miscellaneous facts (and, a fortiori, the news or the facts themselves).”⁴⁴ The provision was not intended, however, to exclude “articles” or “other journalistic works reporting the news … if they can be considered as works within the meaning of the Convention.”⁴⁵ On this point, the Committee believed, it could “hardly be claimed that there [was] any obvious need to clarify the text of the Convention….”⁴⁶ Thus, art. 2(8) appears to function less as a provision of exclusion so much as a reiteration that recitations of facts that do not themselves qualify as intellectual creations, and which therefore are not literary or artistic works, are not included.

The commentary on art. 2(8) is in accord with that conclusion. The 1978 Guide to the Berne Convention interprets the provision to exclude not only news and facts but also “the simple telling of them, since matters of this kind lack the necessary conditions to be considered as falling into the category of literary and artistic works.”⁴⁷ Masouyé, the author of the 1978 WIPO Guide, viewed the provision as merely confirming “the general principle that for a work to be protected, it must contain a sufficient element of intellectual creation.”⁴⁸ Thus, while stories “related with a measure of originality” are protected under art. 2(1), “simple account[s], arid and impersonal, of news and miscellaneous facts” are not.⁴⁹

Given the above understanding, art. 15 DSM would violate art. 2(8) Berne if its protection of press publications extends either to facts themselves or to mere recountings of facts that lack sufficient original expression. As defined in the DSM Directive, press publications are certain collections “mainly composed of literary works of a journalistic nature, but which may include other works or other subject matter.”⁵⁰ While “literary works,” and “works” generally, are properly the subject of copyright protection under Berne⁵¹, the possibility of inclusion of “other subject matter” within the scope of protection raises a potential conflict with art. 2(8) Berne. Specifically, would the “news of the day” and “items of press information” be included within this “other subject matter” and consequently protected?

Recital 56 of the DSM Directive provides some elaboration on the scope of protection. In particular, Recital 56 clarifies that “press publications contain mostly literary works, but increasingly include other types of works and other subject matter, in particular photographs and videos.”⁵² Though presumably not exhaustive, the illustrative examples of photographs and videos as other types of work and subject matter suggest the Directive is not intended to cover the otherwise unprotectable “news of the day” or “items of press information,” since photographs and videos generally qualify as artistic works. Recital 57 is more explicit: the rights granted to publishers of press publications “should also not extend to mere facts reported in press publications.” Still, as explained above, art. 2(8) appears to extend slightly beyond the facts themselves and also excludes sterile accounts of facts, regardless of length. Thus, while art. 15 may not protect facts or “individual words or very short extracts of a press publication,”⁵³ to the extent that it protects press publications that include factual accounts too lacking in originality to support a copyright,⁵⁴ the Directive may be covering subject matter excluded under art. 2(8) Berne. Moreover, as discussed above, the potential for coverage of economically valuable “very short extracts” might create tension with Berne art. 2(8).

III. May the EU Protect Berne-Adjacent Subject Matter through Sui Generis Systems?

Art. 2(8) Berne excludes certain subject matter from copyright protection, but it generally does not prevent Union members from protecting that subject matter under different regimes, including sui generis forms of protection (see discussion below). An initial question then is whether art. 15 DSM vests publishers with copyrights in press publications or instead establishes a sui generis system. Although art. 15(1) DSM nominally provides the same copyright protections as conferred in arts. 2 and 3 of the InfoSoc Directive, it limits those rights in important ways not consistent with other copyright protection. Perhaps most importantly, the primary beneficiary and holder of the right is not necessarily the author(s) but the publisher.⁵⁵ Second, the term of protection is limited to just two years, beginning with publication – in contrast to Berne’s minimum fifty years post mortem auctoris).⁵⁶ Additionally, the scope of the art. 15 right is limited specifically to “online use[s]” by information service providers and does not apply “to the acts of hyperlinking.”⁵⁷ Recital 55 also makes clear that the rights granted are not copyrights per se but “rights related to copyright.” Finally, the granting of rights is not expressly predicated on the presence of original expression but rather the “organisational and financial contribution of publishers in producing press publications.”⁵⁸

Given these significant differences from the traditional copyright regime, there is a strong argument that the rights granted in press publications are not just copyright by another name, but instead are genuinely sui generis. One then must ask whether the protection of this Berne-adjacent subject matter through a sui generis regime is permissible. As Henning Grosse Ruse-Khan and Annette Kur observe, the ability to protect Berne-excluded subject matter through different means is problematic.⁵⁹ Nonetheless, both the records of the Stockholm Conference and the commentary on the 1971 Paris text of the Berne Convention agree that such protection is permissible. As described in the Conference Records, one of the utilities of art. 2(8), despite its otherwise superfluous nature, was to “permit the conclusion that if the articles concerned are protected by other legal provisions – for example, by legislation against unfair competition – such protection is outside the field of the Convention.”⁶⁰ Similarly, the provision helped to fix “the line of demarcation between copyright and other means of protection.”⁶¹ Thus, the possibility of other means of protection was expressly contemplated and was not accompanied by any signs of disapproval.

Commentary on art. 2(8) also endorses the view that sui generis protection is permissible. Professors Goldstein and Hugenholtz state that “[l]ike ideas, news of the day and data compilations may be protected outside copyright under unfair competition law, neighboring rights, or sui generis regimes.”⁶² Similarly, in the 2003 WIPO Guide, Ficsor notes that the subject matter of art. 2(8) can be protected “on the basis of some legal institutions other than copyright – such as a sui generis system for the protection of databases and their contents, or unfair competition….”⁶³ Other commentators agree.⁶⁴ Indeed, although they acknowledge that the results may be troublesome, Kur and Grosse Ruse-Khan emphasize that “the relevance of Art. 1(1) TRIPS [and art. 2(8) Berne] is limited to mandatory exclusion of subject matter from copyright, whereas it does not appear as a tenable position to argue that it also applies if information or data are under a sui generis regime deliberately established for the purpose of granting such protection.”⁶⁵

The European Union’s adoption of the European Database Directive⁶⁶ occasioned concrete application of the principle that a sui generis right might supply protection withheld by the Berne Convention. Similarly to art. 15 of the DSM Directive, the Database Directive provides sui generis protection with respect to the substantial investment in the compilation of otherwise unprotectable data. While the Database Directive has incurred both practical and theoretical objections,⁶⁷ these criticisms have not evoked an underlying incompatibility with Berne art. 2(8). Similarly, while a draft treaty proposing international protection for databases was not adopted at the Diplomatic Conference on Certain Copyright and Neighboring Rights Questions in 1996 (or anytime thereafter), there is no record of objections premised on the exclusion of such subject matter from copyright.⁶⁸

Rather, the debate has centered around which form of legal protection – a sui generis intellectual property protection or a misappropriation right sounding in unfair competition – was best suited to the task of protecting the investment in compiling databases. Advocates of more expansive and definite protection preferred a sui generis right with more precise details, well-defined term of protection, and greater facility for licensing.⁶⁹ Skeptics of the economic benefits or necessity of database protection favored the more limited protection of misappropriation claims.⁷⁰ In any event, the ability of Berne members to establish other forms of protection, including sui generis intellectual property rights, seems to have gone unquestioned.

IV. Even Were a Sui Generis Right in Berne-Excluded Subject Matter Permissible, Must Exceptions to That Right Be Interpreted Co-extensively with the Berne Art. 10(1) Quotation Right?

In the absence of a full examination of what constitutes a “quotation” under Berne art. 10(1),⁷¹ one may nonetheless question whether the press publisher’s right is compatible with Berne art. 10(1). Art. 15(3) of the Berne Convention directs that the exceptions set out in the 2001 InfoSoc Directive “shall apply mutatis mutandis in respect of the rights provided for in paragraph 1 of this Article.”⁷² The incorporation in the InfoSoc Directive of an optional quotation privilege in terms nearly identical to Berne art. 10(1)⁷³ suggests that one may avoid discrepancies between the two instruments by interpreting art. 15 DSM co-extensively with InfoSoc Directive art. 5(d), which, in turn should track Berne art. 10(1). In that event, the copyright-adjacent nature of art. 15, while potentially problematic with respect to covered subject matter, will not immunize the press publishers’ right from third parties’ quotation rights.

There are two caveats to the above. First, the quotation right in Berne, according to most commentators, is mandatory: Member States must allow quotations (within the contours of the right). By contrast, the InfoSoc Directive leaves the list of permitted exceptions and limitations in art. 5(3) up to national adoption (or not). On the other hand, DSM Directive art. 17(7) makes the quotation exception (among others) mandatory with respect to content posted by users to Online Content Sharing Service Providers.⁷⁴ While art. 17, on the liability of Online Content Sharing Service Providers for infringing content posed by their users, addresses a different problem from the one that occasioned art. 15, there may be some overlap between the entities that are Online Content Sharing Service Providers under art. 17 and the “information society service providers” that are subject to the press publishers’ right. Arguably, the European Union may be creeping toward substantive equivalence with the Berne norm with respect to its mandatory character.⁷⁵

Second, even assuming third parties will enjoy quotation rights in press publications, the scope of the quotation exception may differ between InfoSoc Directive art. 5(3)(d) and DSM Directive art. 15(3). The same words may mean different things in different contexts, and the requirement that the quotation be “in accordance with fair practice” may impose different constraints on the exercise of the quotation right. Given that the practice of news aggregation spurred the enactment of art. 15, the size and amount of the “quotations” and their economic impact may bear more heavily on the assessment of incompatibility with fair practice for press publications than courts might tolerate for works of authorship. Thus, interpretation of the two instruments may not be fully coextensive: the principles may be the same, but their application may not yield identical results. (However, the same might be said of the assessment of “fair practice” across different kinds of works of authorship, or regarding different purposes for the quotations.)

The adoption in art. 15 of the InfoSoc Directive exceptions avoids a confrontation between Berne norms and an unbounded sui generis right over subject matter that includes works of authorship as well as Berne-excluded content. Recall that DSM Directive art. 2(4) defines press publications to cover “an individual item within a periodical”; that item generally will be a whole article or a substantial extract (Recital 58 generally excludes “very short extracts,” though the meaning of the term may vary with economic impact). Acknowledging that a neighboring rights regime over Berne-excluded subject matter may coexist with copyright,⁷⁶ one may still inquire whether Berne maxima should exert a preclusive effect when the subject matter of the sui generis right includes works of authorship. If, for example, art. 15 covered both copyrightable and non-copyrightable content, but did not also incorporate copyright exceptions, so that a quotation exception would not limit the scope of the press publishers’ right, then publishers could invoke the sui generis right to prevent quotations from the same copyrightable content to which their rights under copyright must yield.⁷⁷ The argument for a Berne-preclusive effect seems strongest when the sui generis right covers both copyrightable and non-copyrightable content. It should not be permissible to end-run the Berne quotation right by resort to sui generis protection against copying the same subject matter.

Chapter III, “Sui Generis Right,” of the 1996 Database Directive, however, may belie that proposition. As we have seen, the Database Directive covers both original and non-original databases and provides a sui generis right against extraction and reutilization of substantial parts (whether or not copyright-infringing) of databases that are the fruit of substantial investment. While Chapter II, “Copyright,” of the Directive permits Member States to provide for copyright exceptions “traditionally authorized under national law,”⁷⁸ Chapter III sets out three specific exceptions and limitations (which do not include a quotation provision), without Chapter II’s open-ended catch-all.⁷⁹ The restriction in Chapter III of the extraction right to “insubstantial parts” of the database⁸⁰ will place some quotations outside the ambit of the database holder’s exclusivity. But to the extent that a copyright-permissible “quotation” may be qualitatively or quantitatively substantial,⁸¹ Chapter III of the Database Directive would appear to grant the rightholder a remedy, whereas Chapter II would allow an exception. If non-copyright material entirely comprises the “quotation,” then once one has admitted the premise that Berne Member States may establish sui generis rights in copyright-excluded content, perhaps copyright limitations need not constrain the scope of rights in that subject matter.⁸² But if the quotation comprehends a substantial extract of copyrightable expression, then Chapters II and III appear to be in tension.⁸³

C. Conclusion

Within the universe of multilateral copyright obligations, the Berne maxima, buttressed by the TRIPS and WCT exclusion of protection for ideas, methods and processes, should promote the free cross-border availability of facts and ideas, as well as of exercise of the quotation right. Individual Berne countries of origin may protect excluded subject matter in their own works of authorship, but not in foreign Berne works. Conversely, those countries must apply the quotation right to foreign Berne works, but need not do so to their own. Nonetheless, there exist at least two challenges to this equilibrium. The first, as we have seen, concerns the potential for Berne members to protect excluded subject matter, or to avoid the quotation right, by resort to sui generis regimes. The second concerns the EU principle of non-discrimination:⁸⁴ Berne may limit protection in excess of its maxima to the country of origin, but EU norms require Member States to accord full national treatment, thus granting to works by other EU nationals the same scope of protection as the EU country of origin provides its own authors.

This cornerstone of EU law potentially places EU Member States in conflict with their international obligations: on the one hand, they may not – by copyright – protect Berne-excluded subject matter in foreign works, including works by EU nationals; on the other hand, EU norms oblige Member States to extend to other EU nationals the protections Berne would deny them. The EU regional public law obligation of national treatment thus may clash with international obligations enshrined in Berne, TRIPS and the WIPO Copyright Treaties. As we have seen, denominating the protections as sui generis might not suffice to shield them from the international treaties’ preemptive effect. If not, then, as the editors of this volume observe in their preface, the international IP treaties produce “a level of global harmonization of IP protection whose cumulative effect leaves little space for different national policy choices.”