PROTECTING PROPRIETARY INFORMATION:



Protecting Proprietary Information: The Power of Agreement

Shrinkwrap, Clickwrap, and Browsewrap Agreements and Database Protection

by Kerri Smith

I. DATABASE PROVIDERS CLAIM INADEQUATE LEGAL PROTECTION FOR DATABASES, YET CONTINUE TO THRIVE. 1

II. CONTRACT LAW CAN EFFECTIVELY PROTECT THE INFORMATION IN DATABASES FROM COMMERCIAL AND COMPETITIVE USE. 2

A. Agreements that Restrict Uses of Information in Databases are Enforceable under Contract Law 3

1) Courts Liberally Construe Notice and Assent 3

2) Courts Routinely Uphold Contractual Provisions that Restrict Commercial or Competitive Use 6

B. Agreements Have Been Enforced Even When They Protect Uncopyrightable Materials or Restrict “Fair Uses” of Information 8

III. WHEN COMBINED WITH TECHNICAL MEASURES, CONTRACTS CAN PROVIDE EXTREMELY POWERFUL PROTECTION FOR DATABASES 10

I. DATABASE PROVIDERS CLAIM INADEQUATE LEGAL PROTECTION FOR DATABASES, YET CONTINUE TO THRIVE.

The Coalition Against Database Piracy (CADP) argues that existing laws provide inadequate protection for databases.[1] Yearly, its members lobby for new legislation, advocating for tighter controls to protect their economically lucrative investment in data.[2] Database providers maintain that without additional legislation, businesses risk the misappropriation of their investment by free-riding competitors, which in turn creates disincentives to invest in development and maintenance of high-quality databases.[3] This risk is greater in the digital era because “technologies have also enhanced the ability of users to copy and sell databases, thereby increasing the vulnerability of database producers to piracy.”[4] Accordingly, they warn that “[w]ithout statutory protection, database producers can be expected to underprovide their products in easily-copyable formats (such as CD-ROM).”[5]

In particular, proponents of database legislation argue that the U.S. Supreme Court’s 1991 decision in Feist Publications, Inc. v. Rural Telephone Services, Co.[6] effectively eviscerated practical protection for databases.[7] Feist confirmed that, by constitutional mandate, facts, and unoriginal compilations of facts, cannot be copyrighted.[8] However, the Court held that “original” factual compilations are entitled to protection, and that the originality threshold is low- requiring only independent selection or arrangement of facts, plus a minimal level of creativity.[9] In the Court’s words, “the vast majority of compilations” will presumably pass this test.[10]

Although database proprietors claim that “no meaningful legal protection of databases currently exists,”[11] the database industry continues to thrive.[12] Notably, since Feist, the number of databases in the United States has grown at a remarkable rate, and database providers have enjoyed high profit margins.[13] If there is a lack of legal protection for databases, why has the industry been so successful?

First, many databases easily achieve the modicum of originality described in Feist, and thereby merit copyright protection. Beyond copyright protection, however, proprietors can avail themselves of many additional legal schemes that insulate their databases from objectionable appropriations. One such scheme is the ability to create binding, limiting contracts that restrict uses of databases and the information within them.

In this paper I will focus on increasingly ubiquitous “shrinkwrap,” “clickwrap” and “browsewrap” agreements that effectively automate contract protection for electronic databases, which database proprietors warn are especially vulnerable to misappropriation. These agreements have been criticized because they bind users to (often highly restrictive) terms and conditions without giving them an opportunity to negotiate. Nevertheless, they have been routinely enforced, and held valid even when they provide protection in excess of that provided by copyright law. Moreover, database providers can layer these contract protections with technological safeguards (such as passwords and encryption), which are themselves protected by laws that prohibit their circumvention. This combination of safeguards potentially affords database owners powerful protection against commercial and competitive uses of the information within their databases.

II. CONTRACT LAW CAN EFFECTIVELY PROTECT THE INFORMATION IN DATABASES FROM COMMERCIAL AND COMPETITIVE USE.

Within the last twenty years, a new legal trend has emerged, whereby information providers turn to private law to establish the terms of use of their products rather than relying on the public law of copyright.[14] This trend accelerated with the advent of the “shrinkwrap” agreement, which was originally developed to protect software products. Typically, these agreements are included on a piece of paper placed inside the plastic, or shrinkwrap, enclosing the product. Purchasers consent to a “contract” by opening the box in which a device is marketed or performing some affirmative act such as installing the product.[15]

Whereas shrinkwrap agreements apply to physical products, “clickwrap” and “browsewrap” agreements apply to electronic transactions. Clickwrap agreements provide terms and conditions that appear on a computer screen and usually require a user to click on an “I agree” button to assent to them. Without clicking on the agreement, users generally cannot obtain the website’s goods or services. Browsewrap agreements are less direct: they typically provide a hyperlink that reads, for example, “terms of use” or “site license,” and links the user to terms and conditions on another page, or in a remote location on the same page.[16] Users assent to browsewrap agreements through some conduct expressed therein, such as browsing the interior pages of a website, using the search function, or conducting other transactions.

Under existing contract law, shrinkwrap, clickwrap and browsewrap agreements can protect the information in databases—whether these databases are online or stored on a device such as a CD-ROM—from commercial and competitive use.

A. Agreements that Restrict Uses of Information in Databases are Enforceable under Contract Law

1) Courts Liberally Construe Notice and Assent

The law treats shrinkwrap, clickwrap and browsewrap agreements as types of mass market licenses, which are governed by Article 2 of the Uniform Commercial Code (U.C.C.). Under the U.C.C., the touchstones of valid contract formation are notice and assent. For better or worse, since the mid-1990s, shrinkwrap and clickwrap agreements have been deemed enforceable by the majority of courts.[17] Courts have also enforced browsewrap agreements that did not ask for explicit assent, where they conclude that the user was put on notice of the terms of the agreement, and implied assent through an affirmative act.[18]

The following examples of notice and assent have been held sufficient to establish contract formation with shrinkwrap and clickwrap agreements.

• ProCD v. Zeidenberg[19]: A shrinkwrap agreement was enforced against the purchaser of a CD-ROM containing a telephone directory, even though the purchaser had not seen the terms at the time of paying for the product. In this seminal shrinkwrap case, the Seventh Circuit found that notice was sufficient because the outside of the box indicated that the transaction was subject to a license, and this license appeared in an enclosed manual that came with the software.[20] In addition, the license appeared on the screen when the consumer used the software, and the software would not allow the user to proceed without indicating assent.[21] Acceptance occurred when the defendant used the software after having the opportunity to read the license.[22]

• I.Lan Systems, Inc. v. Netscout Service Level Corp.[23]: A clickwrap agreement was enforced against the purchaser of software, even though the terms of the agreement did not appear on the website until after the purchase was completed. Here, the court held that I.Lan Systems had explicitly consented to the agreement when it clicked on the “I Agree” box, and reasoned: “[I]f ProCD was correct to enforce a shrink-wrap license agreement, where any assent is implicit, then it must also be correct to enforce a click-wrap license agreement, where the assent is explicit.”[24] Generally, courts will find that clickwrap agreements provide adequate notice and assent because the terms are conspicuous and assent is explicit.[25]

The following examples of notice and assent have been held sufficient to establish contract formation with browsewrap agreements.

• v. Verio Inc.[26]: A browsewrap agreement was enforceable even though the user was not asked to click on an icon indicating acceptance of the terms. [27] Register’s website, which contains the WHOIS database, posted a short statement of terms of use that concluded with the following: “By submitting this [WHOIS] query, you agree to abide by these terms.”[28] Verio argued that merely submitting queries was insufficient to constitute assent. The district court disagreed: “…in light of this sentence at the end of ’s terms of use, there can be no question that by proceeding to submit a WHOIS query, Verio manifested its assent to be bound by ’s term of use...”[29] In affirming this decision, the Court of Appeals emphasized that Verio visited Register’s computers daily to access WHOIS data and each day saw the terms of use, and Verio admitted that it was fully aware of the terms on which Register offered the access.[30]

• Pollstar v. Gigmania Ltd.[31]: A browsewrap agreement may be enforceable even when terms were published on the interior pages of its website, and the user was alerted to this agreement only by the phrase “use is subject to license agreement” in small gray print on a gray background, and clicking on this text did not take the user to the text of the agreement.[32] The court, citing examples from ProCD, refused to declare that the agreement was invalid and unenforceable.[33] They reasoned that consumers sometimes enter into a contract by using a service without first seeing the terms.[34]

Other courts have been more reluctant to enforce browsewrap agreements when these agreements do not require the consumer to view the agreement’s terms or explicitly manifest assent. However, a database provider could likely avoid the inadequacies of contract formation found in these cases by providing clear and visible presentation of both the contractual terms and the means of accepting them. In Specht v. Netscape Communications Corp.,[35] the court found inadequate notice where Netscape claimed that visitors to its website assented to an agreement by pressing a button to download software. The terms of this agreement were not visible when the button was pressed, but at the bottom of the page was an invitation to read the agreement, along with a link.  The court reasoned that there was no basis for imputing knowledge of these terms to the users of Netscape’s website because they would not have seen the terms without scrolling down their computer screens, and there was no reason to do so.[36] The problem of notice in Specht may be surmountable by layout changes that would reasonably predict that users will be aware of contract terms before they assent.[37]

Another court that initially invalidated a browsewrap agreement eventually allowed a breach of contract claim based on that agreement to proceed to trial. In Ticketmaster Corp. v. , Inc.,[38] a California district court found insufficient proof of assent to support a preliminary injunction against where it had not been required to check an “I agree” box .[39] had placed a notice on its website stating that anyone going beyond that point into the interior pages accepted certain conditions, which included that information obtained from the website could not be used for commercial purposes.[40] However, in March 2003, the Ticketmaster court, which had previously denied the injunction against , then denied ’s motion for summary judgment and ordered that the contract claim proceed to trial. The court found that “a contract can be formed by proceeding into the interior web pages after knowledge (or in some cases, presumptive knowledge) of the conditions accepted when doing so.”[41] While noting that it would prefer a rule that required explicit assent, the court was nevertheless unwilling to strike down the agreement on summary judgment.[42]

2) Courts Routinely Uphold Contractual Provisions that Restrict Commercial or Competitive Use

Courts regularly enforce agreements in which proprietors of information restrict commercial or competitive uses of information extracted from their databases. [43] This is true even if the information in question is uncopyrightable.

The following decisions have enforced, or refused to invalidate, contractual restrictions on the use of information products.

• ProCD v. Zeidenberg[44]: ProCD compiled and sold a CD-ROM telephone directory. It offered two databases, one for personal use to consumers, and the other at a higher price for commercial use. The purchaser bought a consumer package and formed a company to resell the information in the database. ProCD alleged a breach of the terms of the shrinkwrap agreement, which prohibited any commercial use of the product.[45] The court held that the purchaser was bound by the contractual restrictions.[46]

• Information Handling Services, Inc. v. LRP Publications, Inc. [47]: A database provider published a computerized database known as PERSONNET that contained, among other things, decisions of the Equal Employment Opportunity Commission (EEOC). A competitor published a competing database called cyberFEDS, and was accused of breaching the shrinkwrap agreement that prohibited the copying database contents.[48] The court held that this agreement was enforceable against a competitor even though the database contained uncopyrightable elements.[49]

• Matthew Bender & Co. v. , LLC[50]: A competitor obtained access to portions of the database owner’s compilation of court decisions and used these to create their own rival database. Although the database was of uncopyrightable material, the court held that a shrinkwrap agreement that prohibited copying of these decisions was enforceable against the competitor.[51]

• Siedle v. National Ass’n of Securities Dealers, Inc.[52]: A database provider maintained a website that included a clickwrap agreement prohibiting users from copying and republishing website content for commercial purposes. A competitor who was in fact copying and republishing this content for a commercial purpose asked the court to enjoin the database providers from interfering with this activity.[53] The court held that the clickwrap agreement was valid and clear in its prohibition, and therefore granted the database provider’s motion to dismiss.[54]

• v. Verio, Inc.[55]: Verio, a competitor, had used software robots to repeatedly copy information about customers from ’s WHOIS database, and used this information for mass-marketing purposes such as sending spam. The court granted an injunction based on a browsewrap agreement that prohibited commercial use of any information obtained from its site. 

• Pollstar v. Gigmania, Ltd.[56]: Pollstar alleged that Gigmania downloaded concert information from and placed it on its competing website at .[57] The court held that the browsewrap agreement prohibiting commercial use of information from Pollstar’s website was arguably valid and denied a motion to dismiss the breach of contract claim.

• Lipscher v. LRP Publications, Inc.[58]: This case involved a subscription agreement in a database context. The database provider filed suit against a competitor who copied and redistributed database information.[59] This information was protected by an agreement that restricted a subscriber from copying or remarketing the information.[60] A jury determined that the competitor had breached the subscription agreement, and the court entered judgment on the breach of contract claim in favor of the database provider.[61]

In the following cases where database proprietors were unable to prevent the copying of uncopyrightable facts, no contractual restriction was involved. First, in a recent case, the court in Nautical Solutions Marketing, Inc. v. [62] held that there was no infringement of copyright where a competitor used an internet “spider” to extract public domain data from yacht listings. A previous breach of contract claim was dismissed because the contract at issue did not restrict use, but rather said robots were welcome and invited to come back every 30 days.[63] And in American Massage Therapy Ass’n v. Maxwell Petersen Associates,[64] where a competitor copied the names from a database provider’s membership directory which contained a restriction of use clause, there was no breach of contract claim, so the contract issue was never before the court. In these cases, if a contractual restriction had been in play, the results may have been different.

Finally, in another case where the user was not bound by contractual restrictions, the court was willing to prevent competitive appropriation on another theory. In eBay Inc. v. Bidder’s Edge, Inc.[65] Bidder’s Edge had used “web crawlers” to search content within eBay’s website, but had not consented to a user agreement prohibiting this activity.[66] The court granted an injunction against Bidder’s Edge under a trespass to chattels theory.

In sum, courts have routinely enforced agreements restricting competitive or commercial uses of database content, even when this content is not subject to copyright protection. This legal authority suggests that database proprietors can effectively use shrinkwrap, clickwrap, and in some cases browsewrap agreements to effectively automate the formation of binding contracts, in which they can dictate highly restrictive terms governing the use of information extracted from their databases. For example, if eBay does not want users to compile and commercially exploit the data found in its database, eBay can provide for this restriction on its website. As long as it can be shown that a user was put on notice of the restriction and assented to it through some affirmative conduct, the restriction is likely to be upheld. Therefore, contract law can effectively protect the information in databases from commercial and competitive use.

B. Agreements Have Been Enforced Even When They Protect Uncopyrightable Materials or Restrict “Fair Uses” of Information

Copyright law does not protect facts, ideas, and unoriginal materials. This is not just a matter of chance or oversight: it is mandated by the U.S. Constitution[67] and codified in the Copyright Act,[68] reflecting both the Framers’ judgment and a careful policy balance struck by Congress. However, courts have enforced contractual agreements that restrict uses of uncopyrightable information (as several of the cases above demonstrated), or prevent “fair uses” that would allow access to unprotectable ideas within copyrighted works (discussed further below). Challenges to the enforcement of such agreements based on the copyright preemption doctrine, which says that state law—such as contract law—will be preempted when it creates rights that are “equivalent” to the rights granted by copyright law,[69] have been unsuccessful.[70] This line of authority suggest that, by opening shrinkwrap or clicking on an “I agree” button, database users may contract away important rights preserved under copyright law.

For example, the court in ProCD v. Zeidenberg found that a shrinkwrap agreement prohibiting the copying of information stored on a CD-ROM was enforceable as a matter of contract law and not preempted by the Copyright Act, even though the data was not copyrightable.[71] Similarly, in Information Handling Services, Inc. v. LRP Publications, Inc. the court held that a license prohibiting the copying of database contents was enforceable against a competitor even though the database contained uncopyrightable elements.[72] And in Matthew Bender & Co. v. LLC, the district court held that a shrinkwrap agreement prohibiting copying of uncopyrightable legal publications was enforceable against a competitor.[73]

More recently, in Bowers v. Baystate Technologies, Inc.,[74] the Federal Circuit enforced a shrinkwrap agreement that prohibited reverse engineering, a practice that courts have recognized as a fair use under copyright law because it allows the public access to ideas contained in a copyrightable work, and “a prohibition on all copying whatsoever would stifle the free flow of ideas without serving any legitimate interest of the copyright holder.”[75] In this case, Bowers patented software that Baystate Technologies purchased and reverse engineered in order to develop its own version of the product. The court held that, by reverse engineering the software, Baystate breached the shrinkwrap license agreement governing Baystate's possession of the software.[76]

Copyright law ensures that necessary raw materials for innovation, such as facts and ideas, are freely available for the public to use and build upon. Allowing private parties to override this safeguard through restrictions in shrinkwrap-type agreements, which bind users without allowing them to negotiate these restrictions, has troubled many commentators.[77] Nevertheless, whether this is good or bad policy, it appears that contract law enables database owners to restrict uses of information even when this would contradict copyright law.

III. WHEN COMBINED WITH TECHNICAL MEASURES, CONTRACTS CAN PROVIDE EXTREMELY POWERFUL PROTECTION FOR DATABASES

Database proprietors currently use a host of self-help schemes to safeguard their investments. These include shrinkwrap, clickwrap and browsewrap agreements that bind users to contractual terms dictated by the database provider. They also include technical measures, such as encryption and passwords, that control access to databases.[78]

Together, contracts and technical measures can ensure an extremely secure database. Database providers can condition access to their databases on entering into an agreement that restricts the use of information within the database. At the same time, they can use technical measures to prevent any users who have not assented to that agreement from gaining access to the database. With most databases, circumvention of these technical measures would be prohibited by the anti-circumvention provisions of the Digital Millennium Copyright Act (“DMCA”), which outlaw the circumvention of technical measures controlling access to copyrighted works.[79] As a result, if users gain access to a database without a contract, they could be liable under the DMCA. And if they gain access with a contract, they must abide by the terms therein. All users are either contractually bound or violating the DMCA.

Database proprietors worry that digital technologies render their databases particularly vulnerable to misappropriation. However, these same digital technologies also offer extremely powerful means of protection. Under current law, enforceable restrictions in shrinkwrap, clickwrap and browsewrap agreements, especially when combined with technological access controls, can effectively safeguard the information in databases from commercial and competitive use.[80]

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[1] Coalition Against Database Piracy, Why Existing Law Does Not Protect Against Database Piracy, (last visited September 1, 2004).

[2] Coalition Against Database Piracy, (last visited September 1, 2004).

[3] See generally Corey W. Roush, Database Legislation: Changing Technologies Require Revised Laws, 28 Dayton L. Rev. 269, 274-75 (2002).

[4] See Laura D’Andrea Tyson and Edward F. Sherry, Statutory Protection for Databases: Economic & Public Policy Issues (unpublished report for the Information Industry Association, 1997), available at (last visited September 1, 2004) (hereinafter “Tyson and Sherry Report”).

[5] Id.

[6] 499 U.S. 340 (1991).

[7] See Tyson and Sherry Report, supra note 4. For a detailed rebuttal of the argument that Feist was a landmark shift in copyright law, see accompanying article by Caleb Groos, Pre-Feist Protection of Compilations under U.S. Copyright Law.

[8] Id. at 351; see also U.S. Const. art. I, § 8, cl. 8; 17 U.S.C. §§ 101, 102. Accordingly, the “garden variety” white pages at issue in Feist was not copyrightable. Id. at 359, 362.

[9] Id. at 345, 348, 358.

[10] Id. at 358-59.

[11] Coalition Against Database Piracy, Why Existing Law Does Not Protect Against Database Piracy, supra note 1.

[12] Dov S. Greenbaum, Commentary, The Database Debate: In Support of an Inequitable Solution, 13 Alb. L.J. Sci. & Tech. 431, 437-38 (2003).

[13] Id. Among other statistics, the article notes that “Reed Elsevier, the publisher of Lexis as well as other databases, had a profit margin in 1996 of 42%, higher even than Microsoft's 35.5%.”

[14] See Maureen A. O’Rourke, Copyright Preemption After the ProCD Case: A Market-Based Approach, 12 Berkeley Tech. L.J. 53, 78 (1997).

[15] But if there has been evidence of prior course of dealings, pre-delivery oral communications, or an exchange of written purchase orders and invoices then a court is likely to view the contract made earlier than at the time of opening the shrinkwrap. Therefore the shrinkwrap elements are analyzed as additional terms under U.C.C. § 2-207 or U.C.C. § 2-209 and are generally not enforceable. See Step-Saver Data Systems, Inc. v. Wyse Technology, 939 F.2d 91 (3d Cir. 1991); Arizona Retail Systems, Inc. v. Software Link, Inc., 831 F. Supp. 759 (D. Ariz. 1993).

[16] One commentator suggests five purposes for terms of use clauses: 1) to expressly delineate the ways in which web site content can be used; 2) to prevent the creation of an implied license; 3) to avoid application of the first-sale doctrine; 4) to expand the scope of existing intellectual property rights; 5) and to prevent certain activities considered to be invasive or destructive. Sharon K. Sandheen, The Sense and Nonsense of Web Site Terms of Use Agreements, 26 Hamline L. Rev. 499, 524 (2003).

[17] A number of courts have even assumed without discussion that the terms of a shrinkwrap or clickwrap license are binding upon a purchaser. See Hotmail Corp v. Van$ Money Pie, Inc. 47 U.S.P.Q.2d (BNA) 1020 (N.D. Cal. 1998); Stomp, Inc v. NeatO, LLC, 61 F. Supp. 2d 1074 (C.D. Cal. 1999); Comb v. PayPal, Inc., 218 F. Supp. 2d 1165 (N.D. Cal. 2002); Hughes v. McMenamon, 204 F. Supp. 2d 178 (D. Mass. 2002) (Internet service provider’s terms of service apply); Microsoft Corp. v. Harmony Computers & Electronics, Inc., 846 F. Supp. 208 (E.D.N.Y. 1994); Compuserve, Inc. v. Patterson, 89 F.3d 1257 (6th Cir. 1996); Kilgallen v. Network Solutions, Inc., 99 F. Supp. 2d 125 (D. Mass. 2000).

[18] v. Verio, 126 F. Supp. 2d 238 (S.D.N.Y. 2000), aff’d, 356 F.3d 393 (2d Cir. 2004).

[19] 86 F.3d 1447 (7th Cir. 1996).

[20] Id. at 1450.

[21] Id.

[22] Id. at 1452-53. The court believed that U.C.C. § 2-204 was controlling, in that it permits the vendor to invite acceptance in any way, and the buyer to accept by conforming to the specified method of acceptance. In addition, U.C.C. § 2-206 reinforces this result, for it deems acceptance of goods to have occurred when a buyer fails to reject after an opportunity to inspect.

[23] 183 F. Supp. 2d 328 (D. Mass. 2002).

[24] Id. at 338.

[25] See, e.g., Siedle v. Nat'l Assoc. of Sec. Dealers, Inc., 248 F. Supp. 2d 1140 (M.D. Fla. 2002) (discussed infra); Hotmail Corp., 1998 U.S. Dist. LEXIS 10729.

[26] 126 F. Supp. 2d 238 (S.D.N.Y. 2000), aff’d, 356 F.3d 393 (2d Cir. 2004).

[27] Id. at 246.

[28] The WHOIS database lists the contact information for all domain name registrants in Top Level Domains for which acts as a registrar.

[29] 126 F. Supp. 2d at 248.

[30] , Inc. v. Verio, Inc., 356 F.3d 393, 402 (2d Cir. 2004).

[31] 170 F. Supp. 2d 974 (E.D. Cal. 2000).

[32] Id. at 981.

[33] Id. at 982.

[34] Id. The court uses the analogy of a person purchasing an airline ticket stamped with terms and conditions.

[35] 306 F.3d 17 (2d Cir. 2002).

[36] Id.

[37] See also , Inc. v. Verio, Inc., 356 F.3d 393, 402 (2d Cir. 2004). Analyzing Specht, the court suggested that if users had actual notice of the terms because of frequent visits, the court would have been more likely to find the agreement valid.

[38] 2000 U.S. Dist. LEXIS 12987 (C.D. Cal. Aug. 10, 2000).

[39] Id. at *5.

[40] Id. at *7.

[41] Ticketmaster Corp. v. , 2003 U.S. Dist. LEXIS 6483 *9 (C.D. Cal. March 6, 2003).

[42] Id. at *8.

[43] As examples of these restrictions, users of eBay must agree to a seven page contract and click on an “I accept” button at the end of the agreement. See eBay Inc. v. Bidder’s Edge, Inc., 100 F. Supp. 2d 1058, 1060 (N.D. Cal 2000). And publishes terms of use for its WHOIS database on the home page of its Internet website and conditions entry into the WHOIS database on assent to those terms. See , 126 F. Supp. 2d at 248.

[44] 86 F.3d 1447, 1449 (7th Cir. 1996).

[45] Id. at 1450.

[46] Id. at 1454.

[47] 2000 U.S. Dist. LEXIS 14531 (E.D. Pa. 2000).

[48] Id. at *3.

[49] Id. at *4-*5 (stating “if I make publicly available a compilation of uncopyrightable material, I cannot prevent another from copying it simply because it took time and effort to create it; there is no protection for the ‘sweat of the brow’ under copyright law... However, there is no law that requires me to make my product publicly available; nor is it permissible to break into my house and steal it in order to copy the material it contains.”).

[50] 991 F. Supp. 2d 677 (S.D.N.Y. 2000).

[51] Id. at 678.

[52] 248 F. Supp. 2d 1140 (M.D. Fla. 2002).

[53] Id. at 1142.

[54] 248 F. Supp. 2d at 1143, 1145.

[55] 126 F. Supp. 2d 238 (S.D.N.Y. 2000), aff’d, 356 F.3d 393 (2d Cir. 2004).

[56] 170 F. Supp. 2d 974 (E.D. Cal. 2000).

[57] Id. at 976.

[58] 266 F.3d 1305 (11th Cir. 2001).

[59] Id. at 1308.

[60] Id. at 1309. Providing, in part, “We will not make any copies of any reports or disks for which this subscription is for, recognizing that the Law Bulletin Publishing Company has a copyright interest in each. Under no circumstances will we furnish any copies, or any of the information contained therein, in bulk form to any third-party, and we will not computerize, record, reproduce or re-market any portion of the publication or the selected material which it contains.”

[61] Id.

[62] 2004 U.S. Dist. LEXIS 6304 (M.D. Fla. 2004).

[63] Ina Steiner, Recent Ruling on Aggregators Could Impact eBay Copyright Issues, available at (April 16, 2004) (statement by NSM’s attorney).

[64] 209 F. Supp. 2d 941 (N.D. Ill. 2002).

[65] 100 F. Supp. 2d 1058 (N.D. Cal 2000).

[66] Contracts can protect data from web crawlers and other software robots by implementing “robot exclusion headers.” See Jeffrey M. Rosenfeld, Spiders and Crawlers and Bots, Oh My: The Economic Efficiency and Public Policy of Online Contracts that Restrict Data Collection, 2002 Stan. Tech. L. Rev. 3, 21 (2002).

[67] Feist Publications, Inc. v. Rural Telephone Services, Co., 499 U.S. 340, 351 (1991); U.S. Const. Article I, § 8, cl. 8.

[68] 17 U.S.C. §§ 101, 102 (2000).

[69] 17 U.S.C. § 301(a) (2000).

[70] See Bowers v. Baystate Technologies, Inc., 320 F.3d 1317 (Fed. Cir. 2003); Wrench LLC v. Taco Bell Corp., 256 F.3d 446, 457 (6th Cir. 2001); ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996); Nat'l Car Rental Sys., Inc. v. Computer Assocs. Int'l, Inc., 991 F.2d 426, 433, (8th Cir. 1993); Taquino v. Teledyne Monarch Rubber, 893 F.2d 1488, 1501 (5th Cir. 1990); Acorn Structures v. Swantz, 846 F.2d 923, 926 (4th Cir. 1988).

[71] 86 F.3d 1447, 1454-55 (7th Cir. 1996). The court reasoned that contract rights are not equivalent to those afforded by copyright law because contract rights affect only the parties to the contract and “strangers may do as they please,” whereas copyright law provides a “right against the world.” Accordingly, it concluded that “whether a particular license is generous or restrictive, a simple two-party contract is not ‘equivalent to any of the exclusive rights within the general scope of copyright’” and therefore may be enforced.

[72] 2000 U.S. Dist. LEXIS 14531, *4-*5 (E.D. Pa. 2000).

[73] 991 F. Supp. 2d 677, 678 (S.D.N.Y. 2000).

[74] 320 F.3d 1317, 1324 (Fed. Cir. 2003).

[75] Atari Games Corp. v. Nintendo of Am., Inc., 975 F.2d 832, 843 (Fed. Cir. 1992). In Bowers, the Federal Circuit stated: “this court has left untouched the conclusions reached in Atari Games v. Nintendo regarding reverse engineering as a statutory fair use exception to copyright infringement.”

[76] Bowers, 320 F.3d at 1324-25, 1339. The court reasoned that the breach of contract claim contained the same “extra element” found in ProCD, namely mutual assent and consideration. In addition, the court espoused the principle that people are free to enter into private contracts on whatever terms they deem necessary, and as a result are free to contractually forego their ability to reverse engineer a software product.

[77] See David Rice, Copyright and Contract: Preemption After Bowers v. Baystate, 9 Roger Williams U. L. Rev. 595 (2004); Mark A. Lemley, Intellectual Property and Shrinkwrap Licenses, 68 S. Cal L. Rev. 1239, 1269-72 (1995).

[78] Other measures such as copy controls and watermarking can buttress controls on information use once in the database.

[79] The DMCA applies to databases containing any copyrightable element, such as original fields or indexes, or copyrightable content within the database. As noted at the outset, this will encompass the vast majority of databases.

[80] See accompanying article by Jason Gelman, Legal Publishing and Database Protection, which explains how Lexis and Westlaw have effectively protected their electronic databases from misappropriation though a combination of legal and extra-legal tools.

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