No.
02–428
In The
Supreme Court of the United States
________
DASTAR CORPORATION,
Petitioner,
v.
twentieth
century fox film corporation,
sfm entertainment llc and
new line home video, inc.,
Respondents.
________
On Writ of
Certiorari to the
Court of Appeals
for the Ninth Circuit
________
brief amici curiae of american library association, association of
research libraries, special libraries association, medical library association,
american association of law libraries, digital future coalition, u.s.
association for computing machinery, electronic frontier foundation, public knowledge,
netcoalition, Computer & Communications industry association, and bloomberg
l.p. in support of petitioner
________
peter jaszi jonathan
band*
of law 2000
american university
4801 mass. ave., nw
(202) 284-4216
TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES................................................. ii
INTEREST OF AMICI CURIAE.......................................... 1
SUMMARY OF ARGUMENT............................................ 4
ARGUMENT....................................................................... 5
I. LOWER COURT INTERPRETATIONS OF THE LANHAM
ACT UNDERMINE THIS COURT’S DECISION IN FEIST........................................ 5
II. FEIST
IS UNDER ATTACK FROM NUMEROUS QUARTERS 8
A. Three Causes of
Action Related to Digital Technology Undercut Feist 9
B. Database
Legislation Has Been Introduced To Overturn Feist 14
III. CONGRESS CANNOT USE THE COMMERCE CLAUSE TO
END-RUN THE INTELLECTUAL PROPERTY CLAUSE..................................... 16
CONCLUSION................................................................ 19
TABLE OF AUTHORITIES
Page
CASES
American Movie
Classics Co. v. Turner Entertainment Co.,
922 F. Supp.
926 (S.D.N.Y. 1996)......................................................... 9
Arpaia v. Anheuser
Busch Cos., 55 F. Supp. 2d 151 (W.D.N.Y.
1999) 9
Berkla v. Corel
Corp., 66 F. Supp. 2d 1129
(E.D. Cal. 1999)................................................................. 9
Bonito Boats, Inc., v. Thunder Craft Boats, Inc., 489
Bowers v. Baystate Techs., Inc.
Case No. 01-1108, 2003 U.S. App. LEXIS 1423 (Fed. Cir.
479
Compco Corp. v. Day-Brite Lighting, Inc.,
376
eBay, Inc., v. Bidder's Edge, Inc., 100 F. Supp. 2d 1058 (N.D. Ca. 2000) 10, 11
EF Cultural
Page
EF Cultural Travel BV v. Zefer Corp.,
No. 01-2001, 2003 U.S. App. LEXIS 1336 (1st Cir. January 28, 2003) 13
Eldred v. Ashcroft,
123
U.S.L.W. 4052 (2003)..................................................... 19
Endemol Entertainment, B.V. v. Twentieth Television, Inc., 48 U.S.P.Q. 2d 1524
(C.D. Cal. 1998)................................................................ 9
Feist Publications, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340 (1991)................................................. passim
Frontline Test Equipment, Inc. v. Greenleaf Software, Inc., 10 F. Supp. 2d 583
(W.D. Va. 1998).............................................................. 10
Goldstein v.
Graham v. John Deere Co.,
383
Harper & Row, Publishers, Inc., v. Nation Enters., 471
Higher Gear Group v. Rockenbach Chevrolet Sales, Inc., 2002
(N.D.
Morgan Labs., Inc.
v. Micro Data Base Sys., Inc.,
41 U.S.P.Q. 2d 1850 (N.D. Cal.1997)............................... 9
Nat'l Car Rental
Sys., Inc. v. Computer Assocs.,
... Int'l, Inc., 991 F.2d 426 (8th Cir.), cert. denied,
... 510
Page
Novell, Inc. v. Network Trade Ctr., Inc., 187 F.R.D. 657 (D.
Oyster Software Inc., v. Forms Processing, Inc.,
No. C-00-0724, 2001
ProCD, Inc. v. Zeidenberg, 86 F.3d 1447
(7th Cir. 1996).................................................................... 9
Railway Labor Executives' Ass'n v. Gibbons,
455
Register.com, Inc. v. Verio, Inc., 126 F.
Supp. 2d 238 (S.D.N.Y. 2000)............................ 11,
13, 14
Sears, Roebuck & Co. v. Stiffel Co., 376
225 (1964)....................................................................... 10
Selby v. New Line Cinema Corp., 96 F.
Supp. 2d 1053 (C.D. Cal. 2000)........................................ 9
Step-Saver Data Sys. v. Wyse Tech., 939 F.2d 91
(3d Cir. 1991).................................................................... 9
Ticketmaster Corp. v. Tickets.com, Case
No. CV99-7654, 2000
Vault Corp. v. Quaid Software Ltd., 847 F.2d 255 (5th
Cir. 1988) 10
Waldman Publ'g Corp. v. Landoll, Inc., 43 F.3d 775 (2d Cir. 1994) 6
Page
Wrench LLC v. Taco Bell Corp., 256 F.3d 446
(6th Cir. 2001), cert. denied, 534
U.S. Const. article
I, § 8, cl. 8............................................... 16
15 U.S.C. § 1125(a)
(2000).......................................... passim
17 U.S.C. § 301(a)
(2000)..................................................... 9
18 U.S.C. § 1030
(2000)..................................................... 12
OTHER AUTHORITIES
Jonathan Band and Makoto Kono, The Database Protection Debate in the 106th Congress,
Jonathan Band and
Laura F.H. McDonald, The Proposed EC
Database Directive: The "Reversal" of Feist v. Rural Telephone, 9
The Computer Lawyer 19 (June 1992) 15
Yochai Benkler, Constitutional Bounds of Database
Protection: The Role of Judicial Review in the Creation and Definition of
Private Rights in Information, 15
Dan L. Burk, The Trouble with Trespass, 4 J. Small
& Emerging Bus. L. 27 (2000) 12
Page
Edward W. Chang, Bidding on Trespass: eBay, Inc. v. Bidder's
Edge, Inc. and the Abuse of Trespass Theory in Cyberspace Law, 29 AIPLA Q.
J. 445 (2001)............ 12
Julie E. Cohen, Copyright and The Jurisprudence of Self-Help,
13
H.R. Rep. No.
106-349 (1999)............................................ 15
H.R. Rep. No.
105-525 (1998)............................................ 16
Dennis S. Karjala, Federal Preemption of Shrinkwrap and
On-Line Licenses, 22 U.
Niva Elkin-Koren, Let the Crawlers Crawl: On Virtual Gatekeepers
and the Right to Exclude Indexing, 26 U.
Mark A. Lemley, Beyond Preemption: The Law and Policy of
Intellectual Property, 87
Charles R. McManis,
The Privatization (or
"Shrinkwrapping") of American Copyright Law, 87 Calif. L. Rev.
173 (1999)....................................................................... 10
Melville B. Nimmer
and David Nimmer, Nimmer on Copyright (2002) 10
Maureen A. O'Rourke, Shaping Competition on the Internet: Who
Owns Product and Pricing Information?, 53 Vand. L.Rev. 1965 (2000).......................................... 12
Page
William Patry, The Enumerated Powers Doctrine and
Intellectual Property: An Imminent Constitutional Collision, 67
Letter from Robert
Pitofsky, Chairman, Federal Trade Commission, to the Hon. Tom Blilely, Chairman,
Committee on Commerce, United States House of Representatives
(September 28, 1998) 15
Malla Pollack, The Right to Know?: Delimiting Database Protection at the Juncture of
the Commerce Clause, the Intellectual Property Clause and the First Amendment,
17 Cardozo Arts & Ent. L.J. 47 (1999)........................................................................................ 15
David A. Rice, Public Goods, Private Contract and Public
Policy: Federal Preemption of Software License Prohibitions Against Reverse
Engineering, 53 U. Pitt. L. Rev. 543 (1992) 10
Council Directive
96/9/EC of
the Legal Protection of Databases, 1996 O.J.
(L77) 20.......................................................................... 15
Memorandum from
William Michael Treanor, Deputy Assistant Attorney, United States Department of
Justice, for William P. Marshall, Associate White House Counsel
(July 28, 1998) 15
The
American Library Association (ALA), the oldest and largest library association
in the world, is a nonprofit organization of over 64,000 librarians, library
trustees, and other friends of libraries dedicated to the development,
promotion, and improvement of library and information services to enhance
learning and ensure access to information for all.
The Association of Research Libraries
(ARL) is a nonprofit organization of 124 research libraries in
The American Association of Law
Libraries (AALL) is a nonprofit educational organization with 5,000 members
dedicated to providing leadership and advocacy in the field of legal
information and information policy.
The Medical Library Association (MLA) is
a nonprofit, educational organization of more than 1,100 institutions and 3,800
individual members in the health science information field.
The Special Libraries Association (SLA)
is an international professional association serving more than 14,000 members
of the information profession, including special librarians, information
managers, brokers, and consultants.
Digital Future Coalition (DFC) is
committed to striking an appropriate balance in law and public policy between
protecting intellectual property and affording public access to it. The DFC is the result of a unique collaboration
of many of the nation's leading non-profit educational, scholarly, library, and
consumer groups, together with major commercial trade associations representing
leaders in the consumer electronics, telecommunications, computer, and network
access industries. Since its inception
in 1995, the DFC has played a major role in the ongoing debate regarding the
appropriate application of intellectual property law to the emerging digital
network environment.
U.S. Association for Computing Machinery
(Public Policy Committee) is a leading professional association of computer
scientists and other information technology professionals dedicated to
advancing the art, science, engineering and application of information
technology. The United States Public
Policy Committee of the Association for Computing Machinery (USACM) serves as
the focal point for ACM's interactions with
Electronic Frontier Foundation (EFF) is a nonprofit
public interest organization dedicated to protecting civil liberties and free
expression in the digital world. EFF
actively encourages and challenges industry and government to support free
expression, privacy, and openness in the information society. Founded in 1990, EFF is based in
Public
Knowledge (PK) is a nonprofit advocacy and education organization dedicated to
ensuring that intellectual property laws and technology policies promote the
interests of the public. PK works with a wide spectrum of stakeholders to
promote the core conviction that some fundamental democratic principles and
cultural values – openness, access, and the capacity to create and compete –
must be given new embodiment in the digital age.
NetCoalition serves as the public policy
voice for some of the world’s most innovative Internet companies on the key
legislative and administrative proposals affecting the online world. NetCoalition provides creative and effective
solutions to the critical legal and technological issues facing the
Internet. By enabling industry leaders,
policymakers, and the public engage directly, NetCoalition has helped ensure
the integrity, usefulness, and continued expansion of this dynamic new medium.
The Computer & Communications
Industry Association (CCIA) is an association of computer, communications,
Internet and technology companies that range from small entrepreneurial firms
to some of the largest members of the industry.
CCIA’s members include equipment manufacturers, software developers,
providers of electronic commerce, networking, telecommunications and online
services, resellers, systems integrators, and third-party vendors. Its member companies employ nearly one
million people and generate annual revenues exceeding $300 billion. CCIA's mission is to further the interests of
its members, their customers, and the industry at large by serving as the
leading industry advocate in promoting open, barrier-free competition in the
offering of computer and communications products and services worldwide.
Bloomberg L.P., founded in 1981, is an information
services, news, and media company serving customers in 126 countries around the
world. The company employs more than
7,600 people in 108 offices worldwide.
Clients include the world's central banks, investment institutions,
commercial banks, government offices, and agencies, corporations, and news
organizations.
Amici do not have a direct financial interest
in the outcome of the case. However, amici are deeply concerned about the
impact the resolution of this case may have
on the information policy articulated by a unanimous Court in Feist Publications, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340 (1991). In that
case, the Court interpreted the Constitution as prohibiting copyright
protection for the facts contained in a database. The Court concluded that the Constitution's
objective of promoting "the Progress of Science and useful arts" was
accomplished by "encourag[ing] others to build freely upon the ideas and
information conveyed by a work."
In Feist
Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991), the Court
held that the Constitution’s Intellectual Property Clause precluded copyright
protection for facts. A publisher may
copy raw facts at will and include them in a new database. The lower courts’ interpretations of Section
43(a) of the Lanham Act could sharply limit the practical effect of Feist by requiring a publisher to
provide detailed attribution of the source of each fact that it included in its
new database. This could have a negative
impact on scientific research and commercial activity.
The threat posed by the lower courts’
interpretations of Section 43(a) must be viewed in the context of the broader
attacks against Feist. Publishers and website operators have
employed theories such as breach of contract, trespass to chattels, and the
Computer Fraud and Abuse Act to prevent the extraction and transformative use
of data. Some publishers have also
pursued sui generis database
legislation in Congress and on the state level.
Any application of the “reverse passing
off” doctrine to facts will undermine Feist,
a landmark decision already under attack.
Moreover, application of the Ninth Circuit’s interpretation of the
Lanham Act to facts would be unconstitutional.
It would enable Congress to rely on its power under the Commerce Clause
to circumvent a restriction on its power under the Intellectual Property
Clause, in violation of this Court’s holding in Railway Labor Executives’ Ass'n v. Gibbons, 455 U.S. 457
(1982).
In 1991, this Court in a unanimous opinion in Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991), rejected the “sweat of the brow” doctrine that bestowed copyright protection on the facts contained in databases by virtue of the effort the publisher expended in collecting the facts.