Legal issues in electronic publishing

E l e c t r o n i c P u b l i s h i n g

LEGAL ISSUES IN ELECTRONIC PUBLISHING Christopher Rees

This paper addresses some of the legal considerations that should be borne in mind by the adviser to an electronic publisher. In order to do that it is necessary to understand what electronic publishing entails.Then I shall look at the two principal areas of law that have traditionally governed all publishing activity, namely defamation and copyright to see what developments are occurring in those disciplines that may be of relevance to electronic publishing. Finally, I will take a brief look at the way the new database right may have significant importance for electronic publishers.

WHAT IS ELECTRONIC PUBLISHING? In the traditional publishing process the author brings his content to the publisher who then disseminates it in the cho- sen medium or media. Pretty simple. Some people assume that electronic publishing is the addition of a further medium to this process so that instead of just publishing the paper version of N i m m e r on Copyright a copy is put out as a CD. True electronic publishing, on the other hand, employs a completely different mindset and process. Figure 1 overleaf illustrates this with a diagram of the way that this would work in the case of the product ion of a new dictionary 1.

One can see that the focus in this process is on the pro- duction of a database. From this database the publisher can then generate either a pr inted book in the traditional form or an electronic version. The electronic version would not just be the book's contents displayed on a screen. It would be a completely different thing with many additional characteris- tics. By virtue of the editorial structure which has been imposed upon it and the special links which can be tagged into the data as part of the creation of the database the result- ing electronic book has a fluidity and richness which the paper version can never enjoy.

In order to explain this in more detail one needs to look at the way that s tructured document publishing is n o w being carried out. The key to unders tanding this is to realize that information management is moving towards what the publishers refer to as the output- independent acquisition and storage of information. The de fac to standard, which is being adopted for this, is called SGML. This stands for Standard Generalised Mark-up Language. SGML has been defined as the ISO Standard for some years. It was employed initially for large-scale documentat ion. It has come into par- ticular focus in the past year because a flavour of it, XML, has been adopted by a n u m b e r of companies , inc lud ing Microsoft and Hewlett Packard, as their standard for electronic publishing. (A derivative of SGML called HTML will be known to all of you who use the Internet as demonstrat ing with breathtaking effect the possibilities for navigating the rich seas of information contained in the World Wide Web.)

This is not in tended to be a technical article and so I will not go into the differences be tween XML, HTML and SGML,

but the important fact to note is that this process provides object-orientated management for any depth of data.The electronic publisher focuses on the elements of the data which are comprised in the database and in the process of acquir- ing, storing and changing the data creates a product which is capable of being outputted in many and various forms. This provides great potential for automation and the more effi- cient use and re-use of information within organizations and by their clients.

The conclusion, therefore, to be drawn is that electronic puly lishing is a wholly different process from traditional pub "hshing.

THE LEGAL PROTECTION FOR THIS NEW BUSINESS PROCESS The question, which this poses, is whether this new business process requires a new legal system to protect it. Or whether it can nestle comfortably within the broad folds offered by traditional copyright.

Copyright grew up as a child of the publishing houses.That is to say the Anglo-Saxon version of copyright did.The puritan ethic that informed 18th and 19th century British andAmerican business cuiture was in contrast to the, shall we say, catholic approach adopted by the civil law jurisdictions where their con- ception of the droll d'auteur focused very much on the artist's rights rather than the publisher's. Of course, copyright will remain important in protecting works produced by publishers, whether of the traditional type or the electronic type.The point I would like to mrise is that the new process for electronic pul> lishing may give rise to a more appropriate regime of legal protection. If that is so then it may well be that the recently enacted database right brought in within the European Union by the Database Directive will fulfill that function. I will look at what is entailed in this right shortly. But first, the two main legal issues which face the publisher in any meditma should be noted, for these will continue to be relevant in the world of electronic publishing.

A publisher must first be certain that the material he uses in his publications is not subject to any legal restriction, and secondly, that w h e n publ i shed that material will no t unlawfully offend any member of the public.The first area of

Computer Law & Security Report Vol. 15 no. 1 1999 0267 3649/99/$- see front matter © 1999 Elsevier Science Ltd. All rights reserved


The way to structured data editorial goals

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concern is broadly covered by the law of copyright 2, the sec- ond by the law of defamation.

I will now consider what is entailed in each right. Bear in mind that in examining these two legal concepts, they will be looked at it from as broad a perspective as possible, taking

examples from a number of jurisdictions.There is no point in restricting any analysis of electronic publishing to one national system of law: the electronic publisher must be prepared for his products to be subject to all national laws, and take precautions accordingly. The interesting thing about looking

4 Computer Law & Security Report Vol. 15 no. 1 1999 0267 3649/99/$- see front matter © 1999 Elsevier Science Ltd. All rights reserved


at cases and legislation from a number of countries in this field is that there is already an e lement of c o m m o n ground emerging from them. The global economy is in some ways emerging before our very eyes.

DEFAMATION IN RELATION TO ELECTRONIC PUBLISHING First there is the issue of defamation for the electronic publisher, as this leads on to a consideration of what constitutes publishing.

In the US, it is clear since the Cubby 3 and Prodigy 4 cases that the Courts will distinguish be tween a person w h o exer- cises no control over the editorial content of what is elec- tronically published and a person w h o holds himself out as exercising some degree of control over the material.

If no editorial control is exercised (as was the case in Cubby) then the court will hold the person not to be the publisher but merely a distributor of the material, and so subject to the same standard of liability as a public library or book- store. Conversely, if the person does exercise some editorial control (as was the case in Prodigy) then the court will Fred a liability as publisher of any defamatory material disseminated.

This posit ion has been largely mirrored in the UK's Defamation Act 1996, section 1 of which provides that a person has a defence in defamation proceedings if he shows that:- "(a) He was not author, editor or publisher of the state-

ment complained of, (19) He took reasonable care in relation to its publication;

and (c) He did not know, and had no reason to believe, that

what he did caused or contr ibuted to the publication of a defamatory statement"

Section 1(2) defines the meaning of the words 'author' , 'editor ' and 'publisher ' , (for the purposes of Section 1 only) as follows:

"'Author' means the originator of the statement, but does not include a pe rson w h o did not intend that his s tatement be published at all; 'Editor' means a person having editorial or equivalent responsibility for the content of the statement or the decision to publish it; and 'Publisher' means a person whose business is issuing material to the public, or a section of the public, w h o issues material containing the statement in the course of that business" The Act provides 5 that amongst others the following are

not to be considered an author, editor or publisher ff they are involved only:

"In operating or providing any equipment, system or service by means of which the statement is retrieved, copied, distributed or made available in electronic form; "6 or

"As the operator or provider of access to a communi- cation system, by means of which the statement is transmitted, or made available, by a person over w h o m he has no effective control "'7 In determining whether a person took reasonable care, or

had reason to believe that what he did caused or contributed to the publication of a defamatory statement, regard is to be had to:

"(a) The extent of his responsibility for the content of the statement or the decision to publish it, (b) The nature or circumstances of the publication, and (c) The previous conduct or character of the author, editor or publisher. "s Grounds (a) and 09) above give rise to a reasonable likeli-

hood that an English Court would decide both the Chubby and Prodigy cases in the same way as their American counter- parts.

Internet publishing is global and so may be the damages. Shevill v Presse Alliance SA 9 concerned the French publisher of Le Soir. It was brought in England by a person of English

domic i l e . Le Soir circulates in England. The plaintiff alleged that it defamed him. On a reference on the issue of jurisdiction the ECJ noted that under the Brussels Convention on Jurisdiction and Enforcement of Judgements in Civil and Commercial Matters, a defendant domiciled in one member state may be sued in another Member State where the harm- ful adt occurred. In the case of a libel that is where the publication occurred if the plaintiff is known there.

However, the damages would be limited to the localized damage to reputation whereas ff the plaintiff sued in the place from where the libel issued that jurisdiction could award damages for all of the harm from the unlawful act.

COPYRIGHT IN RELATION TO ELECTRONIC PUBLISHING Next then is the issue of w h e t h e r the e lec t ronic publ i sher has the r ight to publ ish the material .This remains primari- ly the p rov ince of copyr igh t law, but one needs also to bear in mind the future role of database r ight in this regard.

The first thing to say is that the copyright issues associated with publishing are getting more and not less complex as the technology develops.The reason is that the law of copyright is built on restricting the right physically to embody intellectual proper ty by prevent ing copying, distribution of copies, showing copies i n public, broadcasting them and so on. Electronic publishing means dematerialization of content, where it is no longer possible to speak of physical carriers or the embodiment of 'copies ' . Increasingly copyright is looking like a squarish peg trying to fit into the perfectly round digital hole.

Little case law on the subject has been created in the UK but several judgements have been delivered in the USA. In Playboy Enterprises Inc. v Frena 1° the Plaintiff succeeded in copyright against a bulletin board operator to which pictures had been uploaded by a subscriber.

In Sega Enterprises v SabeUa H, the operator of a bulletin board on, to and from which infringing copies of Sega games were stored, uploaded and downloaded was held liable for contr ibutory copyright infringement (that is to say liable for causing or materially contributing to the infringing conduct of another wi th knowledge of the infringing activity). However, the court held that there was insufficient evidence that the operator had commit ted a direct infringement. An interlocutory judgement in Sega Enterprises v Maphia ~2 was granted against a bulletin board service both for direct infringement ha allowing games to be uploaded to its bulletin



board and for contr ibutory infringement based on the role played by the bulletin board operator. However, in a later opinion 13, the Court in Maphia gave judgement for contribu- tory liability only.

In Frank Music Corp v CompuServe Inc. 14 it was claimed that CompuServe were responsible for alleged infringements of copyright in over 900 musical works. This case settled before the court could rule on the issue.Whilst the set t lement did not involve any admission of liability by CompuServe Inc. it did result in l icences being taken by them.

Section 17 of the UK's Copyright Designs and PatentsActs 1988 (CDPA 1988) provides:

"(2) Copying...includes storing the work in any medium by electronic means. (6) Copying in relation to any description of work includes the making of copies which are transient or are incidental to some other use of the work" The electronic publisher must be taken to know that the

published work will be copied in the Random Access Memory (RAM) of the user's compute r system in order to be used. He will therefore be taken to have implied authorizing the copying of it (as otherwise his readers could not make use of the product they had subscribed for wi thout being in breach of the publisher's copyright.This would be nonsense.) The ex ten t of this impl ied l icence will be uncertain. Uncertainty is the enemy of good business. It is therefore of fundamental importance that an express l icence to copy is granted to any user and that the terms of the l icenee are care- ffdly defined.

Typical l icences are to be found on electronic publications of all descriptions. The basic pr inciple that they all seek to establish is that any copying and use of the material f rom the publication, inconsis tent wi th the terms of the l icence, will give the l icensor a right of act ion against the l icensee.

Yet the very idea of making copies can be inappropriate to the concep t of an electronic publication. One of the developments in electronic publishing that the Internet has brought is the 'virtual document ' . This involves implanting into a document the address of another 's file so the user sees, not only the contents of the electronic publication, but also the contents of the file pointed to by the address in the electronic publication. There is no copying going on by the elec- t ronic publ i sher as such. He is mere ly al lowing his 'publication' to instruct the user's computer to look at another's file at the same time.

There may be other reasons why the publisher may have a right of action though. First, it is arguable that the use of the third-party's files, in a manner that makes the contents appear part of another publication, is a breach of the terms govern- ing their use as set out in the product 's licencc. Secondly, it may be argued that the inclusion of the file's address in the publication is an infringement of the owner 's rights in con- nect ion with cable programme services. This came up for consideration in relation to hypertext links in the Scottish case of Shetland Times Ltd v Dr Jonathon Wills. 15

The Shetland Times had a Web site containing news headlines mad associated articles.The Shetland News also established a Web site and reproduced the Shetland Times headlines on its site. When readers clicked on a headline in the Shetland News site they were taken by hypertext link to the relevant article in

the ShetlandTimesWeb site.The ShetlandTimes objected to this was because users thereby by-passed their home page on which its advertising was contained.

The CDPA 1988 states that it is the exclusive right of the copyright owner to include a work within a 'cable programme service' . 16 S.7 CDPA 1988 defines a cable programme service as:

"a service which consists.., in sending ... information by means of a te lecommunicat ions system.., for recep- tion.., at two or more places (whether for simultane- ous recept ion or at different times in response to requests by different users)..." A cable programme is "...any i tem included in a cable pro-

gramming service". 17 The Shetland Times argued that:

(1) The Shetland News 'sWeb site was a cable programme service;

(2) The Shetland Times headlines were cable programmes; and

(3) By including those headlines in its Web site the Shetland News included the ShetlandTimes cable programme within a cable programme service wi thout consent and thereby infringed the Shetland Times' copyright. The application was for an interim injunction not for final

judgement. The judge took the v iew that there was a prima facie case that the incorporation by the Shetland News in its Web site of the headlines available at the Web site of the Shetland Times constituted the infringing act of including a cable programme within a cable programming service.

DATABASE RIGHT - - A N E W REGIME OF PROTECTION FOR E L E C T R O N I C P U B L I S H E R S ? All of this brings into consideration of the right introduced into European law by the Database Directive.

The important issue to grasp is that database right is is an additional right granted to the authors and publishers. It cov- ers "any collection of independent works, data and other materials arranged in a systematic or methodical way and capable of being individually accessed by electronic or other means".19

Considering the description of the technology behind electronic publishing given at the beginning of this article, is not that a perfect description of the sort of publication the Digital Age is producing?

Once a publisher thinks in these terms the effects become rather revolutionary. Rather than thinking of the product he is exploiting as a 'publication', a 'jottrnal', a 'book' or whatever, he should think of it as a database. Has the publisher made a substantial investment in obtaining, verifying or presenting the contents of that database? If the answer to that question is "yes" then, under the Database Directive which came into force across the EU on 1 January 1998, the publisher will be the owner of a proper ty right, the database right, in that database.

What one may ask is the extent of that right? Well, so far as a publisher is concerned, it is as comprehensive as one could hope for. For 15 years from the date of the database's creation no one may extract or re-utilize all or a substantial part of the database wi thou t the owner ' s consent .



Furthermore, repeated and systematic extraction or re-utiliza- tion of insubstantial parts of the database will infringe the owner 's right.

It would seem to me a great deal easier to apply the concepts of the Database Directive to attack infringers of the rights of electronic publishers than to employ copyright prin- ciples to the same end. Has anyone made a copy? Was it a transient copy? If you seek protect ion under the Database Directive you can make that most unlawyerly yet most satisfy- ing of replies,"Who cares? I have my remedy anyhow."

In case you think that the 15-year period of protection may be too short for products that have required a huge amount of investment to bring them into being, just bear in mind that the database right can be endlessly renewed for successive 15-year periods where substantial further investment is put into the updating of the database. It is therefore much more like a trademark right than a copyright. Just as "use it or lose it" is the advice to the trademark owner, so "update it or lose it" should be the advice to the electronic publisher.

I recognize that there will cont inue to be certain sorts of publications, principally in the area of fiction, where the database right may not be apt as a means of protection. Furthermore, the right is at present only available to nationals of the EEA.We wait to see whether the japan and US will lead the international legal community towards its adoption. At present the signs are that at a policy level those countries are opposed to such a development. Nonetheless, I would respectfully submit that a legal system based on the concept of the database, which seeks to prevent acts of unfair extrac- t ion or reutilization of the whole or substantial parts of that database, provides a better means to protect publications of a functional, fact-based nature in the electronic age than copyright ever could.

Christopher Rees, Report Correspondent Bird & Bird All rights (including Database Right) reserved

FOOTNOTES 1Figure 1 has been prepared with the assistance of the lead- ing German electronic publishing house EP Electronic Publishers GmbH, whose guidance in preparing this article is gratefully acknowledged. 2There are other matters to consider, such as the law of con- fidence or trade secrets, but they lie outside the scope of this pape r . 3Cubby Inc. v CompuServe, 776 F Supp 135. 4Stratton Oakmont v Prodigy Inc. 23 Media L Rept 1794 and 1995 NY Misc Lexis 229. 5s. 1 (3). 6s.1(3)(c) You might think of this as the Internet service provider exemption. 7s. 1(3)(e)This is the telecom operator exemption. Ss.l(5). 91996AC 959. 10839 E Supp. 1552, 1534 (MD Fla. 1993).

llDC Ncalif, No. C 93-04260 CW, (13 Dec. 1996). 12857 ESupp. 679 (ND Cal. 1994). 13DC Ncalif, No. C 93-04262 CW, (18 Dec. 1996). 14Civil Action No. 93 Civ 8153 (IFK) (SDNY) (Complaint filed Nov. 29 1993). 151997 FSR 604. 16S.16 CDPA; and the inclusion of a copyright-protected cable programme in a cable programme service is an infringement of copyright: s. 2° CDPA. 17S.7(1) CDPA 1988. lSDatabase Law edited by Christopher Rees and Simon Chalton (Jordans Publishing Ltd, 21 StThomas Street, Bristol, BSl 6JS, UK,August 1998)ISBN 085308510 2. 19Art 1(2). 2°Because the contents will not be independent of each other, thereby failing to satisfy the legislation's definition of a database.

Book Review

Database Law Database Law, by Christopher Rees and Simon Chalton, 1998, hard-cover, Jordans, 241 pp., £75.00, ISBN 0 85308 510 2

The editors conceived the idea of this text while attending the International BarAssociations' Conference in Delhi.The upshot of that discussion was the conclusion that it would be sensible to focus on two pieces of legislation which were due to be promulgated in 1998, namely the Database Regulations and the Data Protection Bill. Both editors agree that these two pieces of legislation, "concentrating as they do on the content rather than the technology of computer systems, would represent a significant step forward for the state of computer law in the UK".The idea of holding two seminars to explore these matters was conceived, and these were duly held in January and February 1998 at the offices of the Editors - - Bird & Bird.The outcome of these seminars is this text. In addition to the Editors, contributions to the text are also offered by seven other members of the Bird & Bird team.The work is divided into 11 chapters. Chapter 1 provides an introduction to information and the law, while Chapters 2 to 7 deal with different aspects of the Database Directive and its implemen- tation into UK law. Chapter 8 contains discussion of licensing and enforcement and Chapter 9 deals with competi t ion law and databases. Chapter 10 examines the international treaties, while Chapter 11 deals with transitional provisions.There is also an extensive appendix containing the relevant primary source material.

Available from: Jordon Publishing Limited, 21 St Thomas Street, Bristol, BS 1 6JS UK; tel: +44 117 9230600 or fax: +44 117 9250486.


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