b'Constitutional Concerns Raised by the Collections of\nInformation Antipiracy Act\nThe p roposed C o llectio n s o f Information A ntipiracy Act raises difficult and novel constitutional ques\xc2\xad\ntions co n cern in g C o n g ress\xe2\x80\x99s power to restrict the dissem ination o f inform ation. C ongress may not,\np u rsu an t to the In tellectual Property C lause o f the C onstitution, create \xe2\x80\x9c sweat o f the brow \xe2\x80\x9d protec\xc2\xad\ntion for com piled facts, at least insofar as such protection would extend to w hat the Suprem e\nC o u rt has term ed the nonoriginal portion of such a com pilation. E ither or both the Intellectual\nP roperty C lau se and the F irst Am endm ent m ay impose lim itations on the exercise o f congressional\npo w er u n d er the C o m m erce Clause that w ould raise serious constitutional concerns regarding the\nconstitu tio n ality o f the bill.\n\nJuly 28, 1998\nM e m o r a n d u m O p in io n f o r t h e A s s o c i a t e W h it e H o u s e C o u n s e l\n\nYou have asked for our views on the constitutionality of the Collections of\nInformation Antipiracy Act, H.R. 2652, 105th Cong. (1998), which passed the\nHouse on May 19, 1998. H.R. 2652 raises very difficult, and quite novel, constitu\xc2\xad\ntional questions, which are the subject of this memorandum. The following anal\xc2\xad\nysis is preliminary and general. We would, of course, be pleased to provide views\ndirected to more specific questions that you might have.\nThe object of H.R. 2652 is, in effect, to provide a quasi-property right in certain\ncollections of information that required great effort to compile. H.R. 2652 would\nimpose liability upon anyone who \xe2\x80\x9c extracts, or uses in commerce, all or a substan\xc2\xad\ntial part, measured either quantitatively or qualitatively, o f a collection of informa\xc2\xad\ntion gathered, organized, or maintained by another person through the investment\nof substantial monetary or other resources, so as to cause harm to the actual or\npotential market of that other person, or a successor in interest of that other person,\nfor a product or service that incorporates that collection of information and is\noffered or intended to be offered for sale or otherwise in commerce by that other\nperson, or a successor in interest o f that person.\xe2\x80\x9d Id. \xc2\xa72 (proposed 17 U.S.C.\n\xc2\xa7 1202 ).\n\nIn assessing the constitutional concerns raised by the bill, which would provide\nwhat is known as \xe2\x80\x9c sweat of the brow \xe2\x80\x9d protection for certain compilations of\nfactual material, we address three related questions:\n(i) whether the bill constitutes a valid exercise of Congress\xe2\x80\x99s power\nunder the Intellectual Property Clause o f the Constitution, art. I,\n\xc2\xa78, cl. 8, which provides that Congress shall have the power \xe2\x80\x9c to\npromote the Progress of Science and useful Arts, by securing for\nlimited Times to Authors and Inventors the exclusive Right to their\nrespective Writings and Discoveries\xe2\x80\x9d ;\n166\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\n(ii) whether, if the bill does not constitute a valid exercise of\nCongress\xe2\x80\x99s power under the Intellectual Property Clause, it con\xc2\xad\nstitutes a valid exercise of Congress\xe2\x80\x99s power under the Commerce\nClause, or whether the Intellectual Property Clause precludes such\nCommerce Clause legislation; and\n(iii) whether, if the Intellectual Property Clause does not preclude\nCongress from exercising its commerce power to enact such legisla\xc2\xad\ntion, the First Amendment restricts such an exercise of the com\xc2\xad\nmerce power.\nAs to the first question, the Supreme Court\xe2\x80\x99s decision in Feist Publications,\nInc. v. Rural Telephone Service Co., 499 U.S. 340 (1991), indicates that Congress\nmay not, pursuant to the Intellectual Property Clause of the Constitution, create\nsuch \xe2\x80\x9c sweat of the brow\xe2\x80\x9d protection for compiled facts, at least insofar as such\nprotection would extend to what the Court termed the nonoriginal portion of such\na compilation. As to the second and third questions, Supreme Court precedents\ndo not provide clear guidance; it is fair to say, however, that either or both the\nIntellectual Property Clause and the First Amendment may impose limitations on\nthe exercise of congressional power under the Commerce Clause that would raise\nserious constitutional concerns regarding the constitutionality of H.R. 2652.1\nI. Description of H.R. 2652\nThe stated purpose of H.R. 2652 is to \xe2\x80\x9c complement\xe2\x80\x9d the protection that copy\xc2\xad\nright law provides to collections of information. See Collections o f Information\nAntipiracy Act, H.R. Rep. No. 105-525, at 5 (1998) (\xe2\x80\x9c House Report\xe2\x80\x9d ). According\nto the House Report on H.R. 2652, the Supreme Court\xe2\x80\x99s decision in Feist\n(described in more detail below) has substantially reduced the incentives for the\ncreation of compilations of information at the same time that \xe2\x80\x9c [c]opying large\nquantities of materials from another\xe2\x80\x99s collection, and using it in a competing\ninformation product\xe2\x80\x94 behavior that copyright protection may not effectively pre\xc2\xad\nvent-\xe2\x80\x94is cheaper and easier than ever, through digital technology now in wide\xc2\xad\nspread use.\xe2\x80\x9d House Report at 7. The House Report recognizes that \xe2\x80\x9c [vjarious\nlegal and technological options exist today for producers of collections of informa\xc2\xad\n1 Ir is u matter of some contention whether, and to what extent, the incentives that would be created by H R\n2652 are necessary to stimulate a significant quantum ot valuable compilations ot tacts that otherwise would remain\nuncompiled, or whether currently available incentives and legal protections arc sufficient to ensure the continued\nwide dissemination of factual compilations in the pubhc domain See. e g , J H Reichman & Pamela Samuelson,\nIntellectual Properly Rights in D a ta \', 50 Vand L Rev 51, 113-36 (1997), Jessica Lilman. After Feist, 17 U\nDayton L Rev 607, 611-13 (1992), Jane C Ginsburg, No \xe2\x80\x9cSweat 7 Copyright and Other Protection o f Works\no f Information after Feist v Rural Telephone 92 Coluin L Rev 338 (1992) This memorandum does not address\nthe merits ot this dispute, but, as we explain below, courts would be more likely to uphold the legislation against\nconstitutional challenge it they were persuaded that it would increase, rather than decrease, the collection and use\nof information\n\n167\n\n\x0cOpinions of the Office o f Legal Counsel in Volume 22\n\ntion to protect their investments\xe2\x80\x9d \xe2\x80\x94 namely, copyright and state contract law. Id.2\nThe House Report concludes, however, that these other existing tools are not\n\xe2\x80\x9c adequate to address the crux o f the problem,\xe2\x80\x9d and that there are \xe2\x80\x9c meaningful\ngaps in protection that can best be filled by a new federal statute.\xe2\x80\x9d Id. at 7 8. In particular, \xe2\x80\x9c the coverage o f copyright law is limited after Feist, and the\nprotection of a contract binds only the parties to that contract.\xe2\x80\x9d Id. at 7.\nThe asserted \xe2\x80\x9c goal\xe2\x80\x9d o f H.R. 2652 \xe2\x80\x9c is to stimulate the creation of more collec\xc2\xad\ntions [of information], as well as increased dissemination to the public, and to\nencourage more competition among producers.\xe2\x80\x9d House Report at 8. In particular,\nthe object of H.R. 2652 is to \xe2\x80\x9c restore a modified form of the \xe2\x80\x98sweat of the brow\xe2\x80\x99\nprotection available in the past as a separate doctrine and then under copyright\nlaw, but under appropriate Constitutional power and with appropriate limitations.\xe2\x80\x9d\nId. at 9. The House Report asserts that the Act would not \xe2\x80\x9c create a property\nright like copyright,\xe2\x80\x9d but would instead establish \xe2\x80\x9c a tort-based cause of action\nagainst misappropriation.\xe2\x80\x9d Id.\nH.R. 2652 would establish a new chapter in title 17, to be entitled \xe2\x80\x9c Misappro\xc2\xad\npriation o f Collections of Information.\xe2\x80\x9d The principal provision would establish\na \xe2\x80\x9c misappropriation\xe2\x80\x9d tort, to be codified as 17 U.S.C. \xc2\xa7 1202:\nAny person who extracts, or uses in commerce, all or a substantial\npart, measured either quantitatively or qualitatively, of a collection\no f information gathered, organized, or maintained by another person\nthrough the investment o f substantial monetary or other resources,\nso as to cause harm to the actual or potential market of that other\nperson, or a successor in interest of that other person, for a product\nor service that incorporates that collection of information and is\noffered or intended to be offered for sale or otherwise in commerce\nby that other person, or a successor in interest of that person, shall\nbe liable to that person o r successor in interest for the remedies\nset forth in section 1206.\nAny person injured by a use or extraction o f information in violation of \xc2\xa7 1202\ncould file a civil action in federal district court. Id. (proposed \xc2\xa7 1206(a)). Such\ncourts would have the power to issue injunctions enjoining any uses or extractions\n2 Increasingly, compilers o f information\xe2\x80\x94particularly those who incorporate such compilations in electronic form\xe2\x80\x94\npackage such compilations with a so-called \xe2\x80\x9c shrinkwrap\xe2\x80\x9d license (or \xe2\x80\x9c click-on\xe2\x80\x9d license, for documents posted\non-line). This sort o f \xe2\x80\x9c contract\xe2\x80\x9d purports to condition consum ers\xe2\x80\x99 use of the product on the consumers\xe2\x80\x99 implicit\nagreement not to copy the information or disseminate it to others See generally ProCD, Inc. v. Zeidenberg, 86\nF.3d 1447 (7th Cir. 1996) Such contract-based restrictions might have a significant impact on the ability of users\nof factual compilations to copy or distribute the facts contained therein However, because of several unresolved\nquestions concerning the enforceabitity of these contracts, the efficacy o f this approach is unclear. See, e g , id.\nat 1453-55 (discussing w hether contract claim is preempted by the Copyright Act and holding that it is not); see\nalso Cohen v. Cowles M edia C o , 501 U S 663, 669-71 (1991) (holding that the First Amendment does not prohibit\na state from applying a \xe2\x80\x9c generally applicable\xe2\x80\x9d law of promissory estoppel to impose damages on a newspaper\nthat revealed the identity o f a source to whom it had promised confidentiality)\n\n168\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\nof information that would contravene \xc2\xa7 1202. Id. (proposed \xc2\xa7 1206(b)). Those\ncourts also would be able to \xe2\x80\x9c impound[]\xe2\x80\x9d any \xe2\x80\x9c copies of contents of a collection\nof information extracted or used in violation of \xc2\xa7 1202.\xe2\x80\x9d Id. (proposed \xc2\xa7 1206(c)).\nA prevailing plaintiff in a civil action would be entitled to treble damages, as\nwell as any profits realized by the defendant, costs and attorneys\xe2\x80\x99 fees. Id. (pro\xc2\xad\nposed \xc2\xa7 1206(d)). Willful violations would, under certain circumstances, be subject\nto criminal felony sanctions, including five years imprisonment. Id. (proposed\n\xc2\xa7 1207(b)). No criminal or civil action could be maintained by virtue of a use\nor extraction \xe2\x80\x9c that occurs more than 15 years after the investment of resources\nthat qualified the . . . collection of information for protection under [H.R. 2652].\xe2\x80\x9d\nId. (proposed \xc2\xa7 1208(c)). But this limitation might, for all intents and purposes,\ncreate perpetual liability, since every time the collection of information is \xe2\x80\x9c main\xc2\xad\ntained,\xe2\x80\x9d id. (proposed \xc2\xa7 1202), that would be an \xe2\x80\x9c investment of . . . resources\xe2\x80\x9d\nthat qualifies the \xe2\x80\x9c collection of information\xe2\x80\x9d for protection under proposed\n\xc2\xa7 1202. Thus, if the collector \xe2\x80\x9c expandfs]\xe2\x80\x9d or \xe2\x80\x9c refresh[es]\xe2\x80\x9d the collection,\narguably the fifteen-year period would start anew. See House Report at 21.\nThe proposed legislation sets forth six categories of what it terms \xe2\x80\x9c permitted\nacts.\xe2\x80\x9d See proposed \xc2\xa7 1203(a)-(f). The first subsection provides that the legislation\nshall not prevent \xe2\x80\x9c the extraction or use of an individual item, or other insubstantial\npart of a collection of information, in itself,\xe2\x80\x9d but notes that repeated or systematic\nuses or extractions of individual items or insubstantial portions may not be used\nin a manner that would circumvent the general prohibition against uses or extrac\xc2\xad\ntions. Id. (proposed \xc2\xa7 1203(a)). The second subsection makes clear that the legisla\xc2\xad\ntion shall not \xe2\x80\x9c restrict any person from independently gathering information or\nusing information obtained by means other than extracting it from a collection\nof information gathered, organized, or maintained by another person through the\ninvestment of substantial monetary or other resources.\xe2\x80\x9d Id. (proposed \xc2\xa7 1203(b)).\nThe third subsection provides that the legislation shall not restrict a person from\nusing or extracting information contained in a compilation \xe2\x80\x9c for the sole purpose\nof verifying the accuracy of information independently gathered, organized, or\nmaintained by that person.\xe2\x80\x9d Id. (proposed \xc2\xa7 1203(c)). The fourth subsection pro\xc2\xad\nvides that extractions or uses \xe2\x80\x9c for nonprofit educational, scientific, or research\npurposes\xe2\x80\x9d shall not be prohibited unless such extractions or\'uses- would \xe2\x80\x9c harm\nthe actual or potential market for the product or service.\xe2\x80\x9d Id. (proposed \xc2\xa7 1203(d)).\nThe fifth subsection provides an exception for uses or extractions \xe2\x80\x9c for the sole\npurpose of news reporting\xe2\x80\x9d in certain specific circumstances. Id. (proposed\n\xc2\xa7 1203(e)). The sixth subsection permits \xe2\x80\x9c the owner of a particular lawfully made\ncopy of all or part of a collection of information from selling or otherwise dis\xc2\xad\nposing of the possession of that copy.\xe2\x80\x9d Id. (proposed \xc2\xa7 1203(f)).\nThe proposed bill also contains a separate exclusion (with limited exceptions)\nfor \xe2\x80\x9c collections of information gathered, organized, or maintained by or for a\ngovernment entity, whether Federal, State, or local, including any employee or\n169\n\n\x0cOpinions o f the Office o f Legal Counsel in Volume 22\n\nagent of such entity.\xe2\x80\x9d Id. (proposed \xc2\xa7 1204(a)). This \xe2\x80\x9c exclusion,\xe2\x80\x9d would be con\xc2\xad\nfined to collections o f information gathered, organized, or maintained \xe2\x80\x9c in the\ncourse o f performing governmental functions,\xe2\x80\x9d and thus would not appear to\nexempt factual databases\xe2\x80\x94 even databases made available to the public\xe2\x80\x94that were\ncompiled by private parties using government funding, or pursuant to government\ncontract. Finally, another section of the bill provides, in pertinent part, that an\nexclusion for \xe2\x80\x9c collections of information gathered, organized, or maintained in\nthe course of performing governmental functions other than education or scholar\xc2\xad\nship, by or for a government entity, whether Federal, State, or local, including\nany employee or agent of such entity, or any person exclusively licensed by such\nentity, within the scope of the employment, agency, or license.\xe2\x80\x9d However, the\nexception for \xe2\x80\x9c education or scholarship\xe2\x80\x9d would mean that \xc2\xa7 1202\xe2\x80\x99s \xe2\x80\x9c use or\nextraction\xe2\x80\x9d tort would still make the prohibition applicable to information com\xc2\xad\npiled entirely by public colleges and universities. See also House Report at 17\n(confirming that the statute would apply to information collected by \xe2\x80\x9c Federal or\nState educational institutions in the course of engaging in education or scholar\xc2\xad\nship\xe2\x80\x9d ).\nParticularly in light of the constitutional limitations that might apply to the type\nof protection afforded by H.R. 2652, the precise nature of the prohibitions, permis\xc2\xad\nsions and exemptions that are contained in the proposed bill are of critical impor\xc2\xad\ntance. However, many o f the critical, proposed statutory terms are not welldefined. Because o f the ambiguity of many o f these terms, it is impossible to\nknow for certain how wide-ranging H.R. 2652\xe2\x80\x99s application would be. Neverthe\xc2\xad\nless, in the remainder of this section, we identify some of the broadest and most\nambiguous provisions of H.R. 2652 in order to clarify its possible scope.\nTo begin with, \xe2\x80\x9c information\xe2\x80\x9d would be defined to mean \xe2\x80\x9c facts, data, works\nof authorship, or any other intangible material capable of being collected and orga\xc2\xad\nnized in a systematic way.\xe2\x80\x9d Proposed \xc2\xa7 1201(2). As a result, unlike the Copyright\nAct, the proposed legislation would provide protection that would not be limited\nto compilations of what have been termed expressive or original materials, con\xc2\xad\ncepts that we discuss in more detail below. The legislation would instead also\nprovide protection to ordinary facts, which are not now subject to copyright\nprotection and may be unsuited to such protection as a matter of constitutional\nlaw. In addition, the definition of \xe2\x80\x9c information\xe2\x80\x9d would not, from its face, appear\nto be limited to those compilations of information that are accessible only for\na fee.\nThe proposed legislation also does not define either the term \xe2\x80\x9c extracts\xe2\x80\x9d or the\nphrase \xe2\x80\x9c uses in commerce.\xe2\x80\x9d Given their seemingly expansive, ordinary meanings,\nthese words would, standing alone, appear to give H.R. 2652 quite a broad scope.\nSee House Report at 12 (explaining that the provision would cover any \xe2\x80\x9c dissemi\xc2\xad\nnation to others\xe2\x80\x9d ). Moreover, the bill does not expressly provide that the prohibi\xc2\xad\ntion on uses or extractions would apply only to uses or extractions for commercial\n170\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\npurposes. In addition, the bill would not expressly limit liability to uses of\ninformation that is conveyed for a fee, or that is conveyed subject to contractual\nconditions on its further dissemination.3 Finally, the provision would prohibit cer\xc2\xad\ntain \xe2\x80\x9c uses\xe2\x80\x9d or \xe2\x80\x9c extractions\xe2\x80\x9d of even quantitatively insubstantial parts of a com\xc2\xad\npilation, if the part in question is \xe2\x80\x9c qualitatively\xe2\x80\x9d substantial. The House Report\nprovides the following elaboration on this point:\nOnly portions of the collection that are substantial in amount or\nimportance to the value of the collection as a whole would be cov\xc2\xad\nered. Qualitative harm may occur through the extraction of a quali\xc2\xad\ntatively small but valuable portion of a collection of information.\nFor example, the Physician\xe2\x80\x99s Desk Reference, a work that compiles\ngenerally available information about every prescription drug\napproved by the FDA, contains some several thousand drugs and\nis available to both consumers and medical professionals. If a\nsecond comer extracted information about the thousand most com\xc2\xad\nmonly prescribed medications and offered it for sale to the general\npublic\xe2\x80\x94 for example under the title \xe2\x80\x9c Drugs Every Consumer\nShould Know\xe2\x80\x9d \xe2\x80\x94that extraction and use, although a fraction of the\ntotal collection of information, would cause the kind of market\nharm that the Committee intends H.R. 2652 to prevent. Similarly,\nthe extraction or use of real-time quotes for all technology stocks\nfrom a securities database, while constituting a relatively small por\xc2\xad\ntion of actively traded or volatile securities, may be of such \xe2\x80\x9c quali\xc2\xad\ntative\xe2\x80\x9d importance to the value of the database that it creates the\ntype of commercial harm that the Committee intends section 1202\nto prevent.\nHouse Report at 12.4\nAt the same time, the bill only prohibits extractions or uses in commerce that\nwould \xe2\x80\x9c harm the actual or potential market\xe2\x80\x9d of the person who gathered, orga\xc2\xad\nnized or maintained the collection of information. Proposed \xc2\xa7 1202. The scope\nof this important limitation is unclear. The legislation would define \xe2\x80\x9c potential\nmarket\xe2\x80\x9d to mean \xe2\x80\x9c any market that a person claiming protection under section\n1202 has current and demonstrable plans to exploit or that is commonly exploited\n3 Indeed, the proposed statute is intended to supplement, rather than to supplant, any contractual remedies that\nthe compiler might have See \xc2\xa7 I205(a)-(b) (expressly providing that state contract law is not preempted). Accord\xc2\xad\ningly, it would prevent the \xe2\x80\x9c use\xe2\x80\x9d or \xe2\x80\x9c extraction\xe2\x80\x9d o f data from a collection even if (he creator of the collection\nhad disseminated it freely, without any contractual limitations\n4 The prohibition against extracting or using such information would not (at least not expressly) be limited to\nthe use or extraction o f those parts o f a collection that were compiled \xe2\x80\x9c through the investment of substantial monetary\nor other resources\xe2\x80\x9d , instead, the prohibition apparently would apply to uses or extractions of a substantial part\nof a compilation, so long as the compilation itself (rather than the extracted components thereof) was \xe2\x80\x9c gathered,\norganized, or maintained\nthrough the investment o f substantial monetary or other resources.\xe2\x80\x9d\n\n171\n\n\x0cOpinions o f the Office o f Legal Counsel in Volume 22\n\nby persons offering similar products or services incorporating collections of\ninformation.\xe2\x80\x9d Proposed \xc2\xa7 1201(3). This definition is arguably an expansive one\nthat would justify a very broad construction of what would constitute harm to\nthe potential market. Under such a broad construction, even an individual\xe2\x80\x99s deci\xc2\xad\nsion to download information that had been offered for sale, purchased, but then\nposted on the internet for free use by the purchaser could give rise to liability\non the theory that such an \xe2\x80\x9c extraction\xe2\x80\x9d would decrease the \xe2\x80\x9c potential market\xe2\x80\x9d\nby depriving the initial seller of a potential buyer. So construed, even the provi\xc2\xad\nsions in H.R. 2652 that would exempt certain uses and extractions for scientific\nor educational purposes would do little to confine the reach of the bill. As noted\nabove, these exemptions are themselves limited by the requirement that such uses\nor extractions not harm the potential market o f the original compiler, and it would\nappear that any educational or scientific sharing of information could deprive a\npotential seller of a potential buyer.\nIn addition, H.R. 2652 does not include anything resembling the express exemp\xc2\xad\ntions found in the Copyright Act for uses that Congress previously has considered\nto be of particular public benefit. See, e.g., 17 U.S.C.A. \xc2\xa7 108 (concerning repro\xc2\xad\nduction by libraries and archives), \xc2\xa7110(1) (concerning face-to-face teaching\nactivities), \xc2\xa7110(2) (concerning performances and transmissions for educational\npurposes), \xc2\xa7 110(3) (concerning performances in the course of religious services\nand assemblies), \xc2\xa7118 (concerning uses by noncommercial broadcasters). The\nabsence o f these express exemptions in what would be a statutory scheme closely\nrelated to the Copyright Act could be read to suggest that Congress intended to\nprohibit such uses.\nThere are, however, factors that counsel against a broad construction of \xe2\x80\x9c poten\xc2\xad\ntial market,\xe2\x80\x9d and thus that point toward a more limited construction of the scope\nof the protection that would be provided by H.R. 2652. As an initial matter, the\nbroadest possible construction would raise very serious constitutional concerns that\nwe discuss in the following sections, and thus courts may be likely to avoid such\na construction for that reason alone.\nIn addition, the Copyright Act itself identifies harm to the \xe2\x80\x9c potential market\xe2\x80\x9d\nas one o f the four statutory factors to be weighed in determining whether the\n\xe2\x80\x9c fair use\xe2\x80\x9d standard has been met, see 17 U.S.C.A. \xc2\xa7 107(4), and thus the appear\xc2\xad\nance of this same phrase in the proposed legislation may signal Congress\xe2\x80\x99s\nintention to incorporate the definition that has been developed in the copyright\ncontext. Moreover, H.R. 2652 would contain, in addition to the \xe2\x80\x9c harm to the\npotential m arket\xe2\x80\x9d requirement, the requirement that a use or extraction be of a\nsubstantial portion of the compilation. This limitation also appears to be analogous\nto one of the four statutory factors for determining \xe2\x80\x9c fair use\xe2\x80\x9d under the Copyright\nAct. See 17 U.S.C.A. \xc2\xa7 107(3) (describing the factor as \xe2\x80\x9c the amount and substan\xc2\xad\n172\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\ntiality of the portion used in relation to the copyrighted work as a whole\xe2\x80\x9d ).5 Thus,\nthere would appear to be some textual basis for concluding that H.R. 2652 is\nintended to incorporate, albeit implicitly, something like the \xe2\x80\x9c fair use\xe2\x80\x9d provision\nof the Copyright Act, and thus to limit to a significant degree the scope of the\nprotection that the statute would provide.\nIf so, the Court\xe2\x80\x99s recent decision in Campbell v. Acuff-Rose Music, Inc., 510\nU.S. 569, 590-94 (1994), would be relevant to the construction of H.R. 2652.\nThe Court there suggested that the potential market factor is satisfied for purposes\nof the Copyright Act when a copyrighted work is used in a way that would create,\nin effect, a substitute product in direct competition with the original. See id. at\n590-94. The Court added, however, that when \xe2\x80\x9c the second use is transformative,\nmarket substitution is less certain, and market harm may not be so readily\ninferred.\xe2\x80\x9d Id. at 591. Applying that same approach here, H.R. 2652 would\narguably reach, with some exceptions, only non-transformative uses for commer\xc2\xad\ncial purposes, as it would be only such uses that, in light of the \xe2\x80\x9c fair use\nstandard\xe2\x80\x9d developed in copyright law, would result in harm to the potential market\nwithin the meaning of H.R. 2652. It is important in this regard to emphasize that\nthe fair use standard in copyright law is an equitable one that requires a sensitive\nweighing of the statutory factors in light of the specific factual context at issue,\nsee id. at 577 (\xe2\x80\x9c The task is not to be simplified with bright-line rules, for the\nstatute, like the doctrine it recognizes, calls for case-by-case analysis.\xe2\x80\x9d ), and that\na determination as to fair use may also depend upon an evaluation of the \xe2\x80\x9c good\nfaith\xe2\x80\x9d of the use, see id. at 585 n .l8.\nIn sum, while it is clear that H.R. 2652 is intended to cover nonoriginal, factual\nmaterial, which the Copyright Act does not (and, as we explain below, for con\xc2\xad\nstitutional reasons, probably could not be extended to reach), the scope of the\nprotection that H.R. 2652 is intended to afford to such factual materials is far\nless clear. The ambiguity concerning the scope of the intended protection for fac\xc2\xad\ntual material arises in large part because the legislation does not make clear\nwhether it is intended to incorporate a version of the fair use provision that is\ncontained in the Copyright Act or whether it is instead intended to reach broadly\nto encompass individual uses by noncompetitors for noncommercial purposes.\nSuffice it to say that, notwithstanding the ambiguities in the text, to the extent\nthe provision would prohibit extractions or uses of substantial portions of factual\ncompilations by direct competitors, it is much more likely to be held constitutional\nthan if it would prohibit extractions or uses by potential consumers for non\xc2\xad\ncommercial purposes. By contrast, if the provision were construed to provide\n5 The two other statutory factors that are identified in the fair use provision of the Copyright Act are also arguably\nincorporated by H R 2652 The first factor is \xe2\x80\x9c the purpose and character of the use, including whether such use\nis of a commercial nature or is for nonprofit educational purposes\xe2\x80\x9d 17 U S C A .\xc2\xa7107(1) The second factor is\n\xe2\x80\x9c the nature of the copynghted work \xe2\x80\x9d Id. \xc2\xa7 107(2). These factors are also arguably implicitly encompassed by H R\n2652, which applies to collections of information, broadly defined, with specific provisions permitting certain acts\nsuch as educational and scientific uses (to the extent that they would not harm the potential market)\n\n173\n\n\x0cOpinions o f the Office o f Legal Counsel in Volume 22\n\nprotection against uses by potential consumers, and not simply direct competitors,\nit would appear to be of almost limitless scope and therefore to raise constitutional\nconcerns that would appear insurmountable.6 We explain, however, that even if\nthe protection provided by H.R. 2652 were construed as limited direct competitors\nand to somehow distinguish between \xe2\x80\x9c fair\xe2\x80\x9d and \xe2\x80\x9c unfair\xe2\x80\x9d uses of collections of\ninformation, there would remain substantial constitutional questions concerning\nthe degree to which any reuse of factual information that would not infringe on\nthe originality of a work may be deemed by Congress to be in some sense\n\xe2\x80\x9c unfair\xe2\x80\x9d and therefore subject to regulation. In other words, it is unclear what\n\xe2\x80\x9c unfair uses\xe2\x80\x9d of factual material could be constitutionally prohibited. There is\nalso little precedent to guide interpretation as to where the line between fair and\nunfair uses of factual information is intended to be drawn precisely because the\nCopyright Act, which codifies the \xe2\x80\x98 \xe2\x80\x98fair use\xe2\x80\x99 \xe2\x80\x99 standard, does not provide protection\nfor facts.\nWith this background concerning the proper construction of H.R. 2652 in place,\nwe now turn to the constitutional analysis o f the bill.\n\nII. The Intellectual Property Clause\nWe understand that the proposed legislation is not necessarily intended to con\xc2\xad\nstitute an exercise of Congress\xe2\x80\x99s power under the Intellectual Property Clause,\nand that it is instead apparently premised on Congress\xe2\x80\x99s power to regulate inter\xc2\xad\nstate commerce. Nevertheless, it is instructive for purposes of analysis to examine,\nas an initial matter, whether the legislation could be premised on Congress\xe2\x80\x99s power\nunder the Intellectual Property Clause. It is only to the extent that the legislation\nwould fall outside the permissible scope of the power conferred by that clause\nthat it would give rise to concerns that, as an exercise of the Commerce Power,\nit would impermissibly infringe on an implicit limitation contained in the Intellec\xc2\xad\ntual Property Clause.\nThe key precedent for assessing whether this proposed legislation would con\xc2\xad\nstitute a valid exercise of Congress\xe2\x80\x99s power under the Intellectual Property Clause\nis Feist. In Feist, the Supreme Court considered the extent to which the Copyright\nAct, 17 U.S.C.A. \xc2\xa7\xc2\xa7 101-1101 (W est 1996 & Supp. 1998), protected the listings\n6 Read literally, for exam ple, \xc2\xa71202 would appear to prevent the library from disseminating \xe2\x80\x9c substantial\xe2\x80\x9d\n(including \xe2\x80\x9c qualitatively\xe2\x80\x9d substantial) portions o f the compilation to its patrons, and might prevent the patrons from\nusing such compilations, since such patrons are part of a market or \xe2\x80\x9c potential market\xe2\x80\x9d for purchase o f the book.\nOr, imagine a book that contains a great deal o f unearthed factual material\xe2\x80\x94 such as valuable, accurate information\non the dangers o f prescription drugs (see House Report at 13), a thorough historical chronology of important events,\nor a com prehensive amalgamation o f geographical or topographical data. If a subsequent researcher, scientist or\nhistorian concludes that a \xe2\x80\x9c qualitatively substantial\xe2\x80\x9d portion o f such facts are important, and therefore posts them\nto the W orld W ide W eb o r includes them m a later work\xe2\x80\x94 or, possibly, if that later histonan so much as \xe2\x80\x9c extracts\xe2\x80\x9d\nthe facts by taking notes\xe2\x80\x94 he or she might possibly violate \xc2\xa7 1202, whether or not that later work uses, incorporates,\nor transform s the facts in a m anner that the compilation did not. See J.H Reichman & Pamela Samuelson, Intellectual\nProperty Rights in Data?, 50 Vand. L. Rev. 51, 135, 143 n.424 (1997). O f course, the extreme nature of these\nexam ples may counsel in favor o f a construction o f H.R. 2652 that would exclude them.\n\n174\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\nin telephone directory white pages from copying by a competitor. In answering\nthat statutory question, the Court did not confine itself to a conventional consider\xc2\xad\nation of congressional intent. Instead, the Court first examined the constitutional\nlimitations inherent in the power conferred by the Intellectual Property Clause,\non which the Copyright Act was premised.7 Only after having considered these\nbackground constitutional limitations on the exercise of the copyright power did\nit reach the conclusion that Congress did not intend the Copyright Act to extend\nprotection to such listings. There is language in the opinion, however, that\nindicates that the Court also predicated its decision on a judgment that the Intellec\xc2\xad\ntual Property Clause would not empower Congress to provide copyright protection\nto either the listings themselves, or the facts contained in the listings, even if\nCongress intended to extend such protection.\nIn addressing the background constitutional limitations on the scope of the\npower conferred by the Intellectual Property Clause, the Court acknowledged that\ncopyright protection may extend to factual compilations and to other \xe2\x80\x9c fact-based\nworks,\xe2\x80\x9d but concluded that the prerequisite for such protection is that the selection\nor arrangement of the facts is in some degree \xe2\x80\x9c original.\xe2\x80\x9d 499 U.S. at 344-51.\nThe Court explained that \xe2\x80\x9c [o]riginality is a constitutional requirement.\xe2\x80\x9d Id. at\n346. In order to satisfy this constitutional prerequisite of originality, the Court\nopined, the work in question must \xe2\x80\x9c possess[] at least some minimal degree of\ncreativity.\xe2\x80\x9d Id. at 345. In a factual compilation, this .creativity can be present\nin the manner in which the compiler selects or arranges the facts. Id. at 348.\nIndeed, \xe2\x80\x9c [t]he vast majority of works make the grade quite easily, as they possess\nsome creative spark, no matter how crude, humble, or obvious it might be.\xe2\x80\x9d Id.\nat 345 (internal quotation marks omitted). The Court noted that \xe2\x80\x9c [o]riginality does\nnot signify novelty; a work may be original even though it closely resembles other\nworks so long as the similarity is fortuitous, not the result of copying.\xe2\x80\x9d Id.\nUnder Feist, however, even if a compilation is in some sense original, and\nthereby entitled to some copyright protection, \xe2\x80\x9c the copyright in a factual compila\xc2\xad\ntion is thin.\xe2\x80\x9d Id. at 349. That is because, in such circumstances, the bulk of the\nmaterial that comprises the work will, by definition, be facts that in and of them\xc2\xad\nselves lack the originality that justifies protection pursuant to the Intellectual Prop\xc2\xad\nerty Clause. As the Court explained:\nThe mere fact that a work is copyrighted does not mean that every\nelement of the work may be protected. Originality remains the sine\nqua non of copyright; accordingly, copyright protection may extend\nonly to those components of a work that are original to the author.\nThus, if the compilation author clothes facts with an original col\xc2\xad\nlocation of words, he or she may be able to claim a copyright in\n7There was no contention in Feist that the Copyright Act was premised on any sourcc of power other than the\nIntellectual Property Clause\n\n175\n\n\x0cOpinions o f the Office o f Legal Counsel in Volume 22\n\nthis written expression. Others may copy the underlying facts from\nthe publication, but not the precise words used to present\nthem. . . .\n. . . Notwithstanding a valid copyright, a subsequent compiler\nremains free to use the facts contained in another\xe2\x80\x99s publication to\naid in preparing a competing work, so long as the competing work\ndoes not feature the same selection and arrangement. As one com\xc2\xad\nmentator explains it: \xe2\x80\x9c [N]o matter how much original authorship\nthe work displays, the facts and ideas it exposes are free for the\ntaking . . . . [T]he very same facts and ideas may be divorced from\nthe context imposed by the author, and restated or reshuffled by\nsecond comers, even if the author was the first to discover the facts\nor to propose the ideas.\xe2\x80\x9d\nId. at 348\xe2\x80\x9449 (citations omitted) (quoting Jane C. Ginsburg, Creation and\nCommercial Value: Copyright Protection o f Works o f Information, 90 Colum. L.\nRev. 1865, 1868 (1990)). Accordingly, as applied to a factual compilation that\nhas nonoriginal written expression, the Court concluded that \xe2\x80\x9c only the compiler\xe2\x80\x99s\nselection and arrangement may be protected; the raw facts may be copied at will.\nThis result is neither unfair nor unfortunate. It is the means by which copyright\nadvances the progress of science and art.\xe2\x80\x9d Id. at 350.\nAgainst this backdrop, the Court rejected the argument that the Copyright Act\nincorporated the \xe2\x80\x9c sweat of the brow \xe2\x80\x9d doctrine\xe2\x80\x94 namely, that, whether or not a\nfactual compilation contained any degree of creativity, copyright still attached in\norder to compensate compilers for the hard work and resources that they expended\nin the course of compiling the facts. Id. at 352\xe2\x80\x9454. Such a doctrine was not teth\xc2\xad\nered to the originality requirement that the Court concluded was the sine qua non\nfor copyright protection.\nOn the basis of its constitutional and statutory analysis, the Court concluded\nthat the white pages at issue in Feist contained none of the creativity that would\nsuffice to render a work \xe2\x80\x9c original.\xe2\x80\x9d It therefore concluded that the listings were\nentitled to no protection under the Act, despite the fact that the defendant had\ncopied significant portions of the plaintiffs compilation for use in its own com\xc2\xad\npeting white pages. The Court noted that the listings at issue fell into the \xe2\x80\x9c narrow\ncategory of works in which the creative spark is utterly lacking or so trivial as\nto be virtually nonexistent.\xe2\x80\x9d Id. at 359. It explained that the white pages at issue\nare \xe2\x80\x9c entirely typical. Persons desiring telephone service in Rural\xe2\x80\x99s service area\nfill out an application and Rural issues them a telephone number. In preparing\nits white pages, Rural simply takes the data provided by its subscribers and lists\nit alphabetically by surname. The end product is a garden-variety white pages\ndirectory, devoid of even the slightest trace o f creativity.\xe2\x80\x9d Id. at 362. The Court\n176\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\nfurther explained that Rural could not claim \xe2\x80\x9c originality in its coordination and\narrangement of facts. . . . [Tjhere is nothing remotely creative about arranging\nnames alphabetically in a white pages directory. It is an age-old practice, firmlyrooted in tradition and so commonplace that it has come to be expected as a\nmatter of course.\xe2\x80\x9d Id. at 363.\nThe Court therefore concluded that both the compilation itself, and the particular\npieces of information contained therein, lacked sufficient originality to warrant\nprotection. The Court summarized its judgment as follows:\nWe conclude that the names, towns, and telephone numbers\ncopied by Feist were not original to Rural and therefore were not\nprotected by the copyright in Rural\xe2\x80\x99s combined white and yellow\npages directory. As a constitutional matter, copyright protects only\nthose constituent elements of a work that possess more than a de\nminimis quantum of creativity. Rural\xe2\x80\x99s white pages, limited to basic\nsubscriber information and arranged alphabetically, fall short of the\nmark. As a statutory matter, 17 U.S.C. \xc2\xa7 101 does not afford protec\xc2\xad\ntion from copying to a collection of facts that are selected, coordi\xc2\xad\nnated, and arranged in a way that utterly lacks originality. Given\nthat some works must fail, we cannot imagine a more likely can\xc2\xad\ndidate. Indeed, were we to hold that Rural\xe2\x80\x99s white pages pass\nmuster, it is hard to believe that any collection of facts could fail.\nId. at 363-64.\nDespite the strong language contained in the opinion, an argument can be made\nthat the Court\xe2\x80\x99s constitutional pronouncements in Feist were dictum because they\nwere unnecessary to the disposition of the case. The Court in Feist was asked\nonly to resolve a statutory issue concerning the scope of statutory protection for\ncompilations under the Copyright Act. On the other hand, the Court in Feist\nplainly stated at numerous points that originality and creativity are constitutional\nprerequisites for copyright protection under Article I, Section 8, Clause 8 o f the\nConstitution.8 Those statements strongly indicate that the Court\xe2\x80\x99s decision rested\non a constitutional, rather than merely a statutory, judgment.\nBecause the proposed bill would clearly provide protection for \xe2\x80\x9c collections of\ninformation\xe2\x80\x9d without regard to whether they are original, and because it would\ndefine \xe2\x80\x9c information\xe2\x80\x9d quite expansively, it would appear to protect even the type\nof noncreative white pages listing at issue in Feist, as well as similarly unoriginal\nfactual compilations or facts within otherwise original compilations. In this\nrespect, the prohibition in proposed section. 1202 would go well beyond the \xe2\x80\x9c thin\ngSee, e g , 499 U S ai 346 ( \xe2\x80\x9c Originality is a constitutional requirement.\xe2\x80\x9d ), id. at 363 ( \xe2\x80\x9c [a]s a constitutional\nmatter,\xe2\x80\x9d copyright protection requires \xe2\x80\x9c more than a de minimis quantum of creanvity\xe2\x80\x9d ). See also Paul Goldstein,\nCopyright, 55 Law & Contemp Probs 79, 88 (1992) (noting that Feist Court indicated thirteen times that originality\nwas a constitutional requirement, and indicated sixteen times that creativity was a requirement of originality)\n\n177\n\n\x0cOpinions of the Office o f Legal Counsel in Volume 22\n\nprotection\xe2\x80\x9d for factual compilations recognized in Feist.9 Accordingly, to the\nextent that the proposed bill would attempt to provide protection, pursuant to the\nIntellectual Property Clause rather than some other power, to the very type of\nunoriginal factual materials that were at issue in Feist, it would run afoul of recent\nSupreme Court precedent that is, if not binding, at a minimum a clear indication\nof how the Court would likely rule.\n\nIII. Possible Intellectual Property Clause Limitations on the Commerce Power\nThe House Report asserts that H.R. 2652 may be enacted \xe2\x80\x9c within Congress\xe2\x80\x99\nauthority to regulate interstate commerce under Article I, Section 8, Clause 3 of\nthe Constitution.\xe2\x80\x9d House Report at 9-10. Absent some external constitutional\nlimitation, the bill would appear to constitute a valid exercise of the commerce\npower, as we understand that extractions, or uses in commerce, of substantial por\xc2\xad\ntions of collections of information would, in the aggregate, substantially affect\ninterstate commerce. See United States v. Lopez, 514 U.S. 549 (1995).10 This sec\xc2\xad\ntion examines the question whether the Intellectual Property Clause places an\nexternal limitation on such an exercise of the commerce power.\nFeist does not provide clear guidance on the question. Nothing in Feist holds\nthat the Intellectual Property Clause limits the scope o f Congress\xe2\x80\x99s power under\nother Clauses, such as the Commerce Clause, and the opinion may be read to\nstate limits that pertain to the exercise of the Intellectual Property Clause itself.\nAt the same time, some language in Feist might also fairly be read to suggest,\nnot only that the Intellectual Property Clause does not authorize sweat-of-thebrow protection for either unoriginal factual compilation or facts in otherwise\noriginal compilations, but also that the Intellectual Property Clause prohibits Con\xc2\xad\ngress from relying on any other constitutional power to afford copyright-like\nprotection to facts and to the nonoriginal parts of factual compilations.\nFor example, the Court noted that \xe2\x80\x9c all facts . . . \xe2\x80\x98may not be copyrighted and\nare part of the public domain available to every person.\xe2\x80\x99 \xe2\x80\x9d 499 U.S. at 348\n(emphasis added; citation omitted). See also id. at 349 ( \xe2\x80\x9c \xe2\x80\x98[N]o matter how much\noriginal authorship the work displays, the facts and ideas it exposes are free fo r\nthe taking. . . . [T]he very same facts and ideas may be divorced from the context\n9 It is important to note, however, that, due to the breadth o f the definition of \xe2\x80\x9c information,\xe2\x80\x9d which expressly\nincludes works o f authorship, the bill also w ould appear to provide protection to many factual compilations that\ndo possess the requisite creativity necessary for copynght protection under Feist. In addition, it would appear that\nat least some, and perhaps many, extractions o r uses barred by the bill might infringe on sufficiently original\ncharacteristics o f such work\xe2\x80\x94 such as unique arrangements or selections of the facts copied. We caution, however,\nthat these valid applications o f the bill might n o t provide much greater protection than would already be provided\nunder the C opynght Act, although H R. 2652 w ould also provide for criminal sanctions. Moreover, even these seem\xc2\xad\ningly valid applications o f the bill would be authorized under the Intellectual Property Clause only insofar as the\nlegislation satisfied the requirement that the \xe2\x80\x9c exclusive Right[s]\xe2\x80\x9d being conferred were for \xe2\x80\x9c limited Tim es.\xe2\x80\x9d U.S.\nConst, art I, \xc2\xa7 8, cl 8\nl0O f course, as we discuss below, too broad a construction o f \xe2\x80\x9c harm to the potential market\xe2\x80\x9d would give rise\nto sen o u s First Amendment concerns, and might, if particularly extreme, raise concerns under Lopez as well.\n\n178\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\nimposed by the author, and restated or reshuffled by second comers, even if the\nauthor was the first to discover the facts or to propose the ideas.\xe2\x80\x99 \xe2\x80\x9d ) (emphasis\nadded) (quoting Ginsburg, Creation and Commercial Value, 90 Colum. L. Rev.\nat 1868). The Court also opined that it is a \xe2\x80\x9c constitutional requirement\xe2\x80\x9d that\npersons be permitted to use \xe2\x80\x9c the fruit of the [factual] compiler\xe2\x80\x99s labor\xe2\x80\x9d without\ncompensation:\nIt may seem unfair that much of the fruit of the compiler\xe2\x80\x99s labor\nmay be used by others without compensation. As Justice Brennan\nhas correctly observed, however, this is not \xe2\x80\x9c some unforeseen\nbyproduct of a statutory scheme.\xe2\x80\x9d Harper & Row, 471 U.S., at\n589 (dissenting opinion). It is, rather, \xe2\x80\x9c the essence of copyright,\xe2\x80\x9d\nid., and a constitutional requirement.\nId.\nThe Court further explained that the constitutional objective is realized not only\nby providing intellectual property rights in expression, but also by permitting ideas\nand information to be disseminated freely:\nThis principle, known as the idea/expression or fact/expression\ndichotomy, applies to all works o f authorship. As applied to a fac\xc2\xad\ntual compilation, assuming the absence of original written expres\xc2\xad\nsion, only the compiler\xe2\x80\x99s selection and arrangement may be pro\xc2\xad\ntected; the raw facts may be copied at will. This result is neither\nunfair nor unfortunate. It is the means by which copyright advances\nthe progress of science and art.\nId. at 350.\nAccordingly, one possible reading of the Feist decision is that a system in which\nthe \xe2\x80\x9c raw facts\xe2\x80\x9d in a compilation may not be \xe2\x80\x9c copied at will\xe2\x80\x9d is a system that\nnecessarily undermines the object of the Intellectual Property Clause\xe2\x80\x94 the progress\nof science and art\xe2\x80\x94 and is therefore unconstitutional. On this view, the clause\nwould constitute not only a grant of power to Congress but also a limitation on\nCongress. Cf. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 146\n(1989) (discussing scope of federal preemption of state intellectual property law\nand stating that \xe2\x80\x9c [a]s we have noted in the past, the [Intellectual Property] Clause\ncontains both a grant of power and certain limitations upon the exercise of that\npower\xe2\x80\x9d ); Graham v. John Deere Co., 383 U.S. 1, 5-6 (1966) (explaining, again\nwith reference to federal preemption of state law, that \xe2\x80\x9c [t]he clause is both a\ngrant of power and a limitation. . . . Congress may not authorize the issuance\nof patents whose effects are to remove existent knowledge from the public domain,\nor to restrict free access to materials already available.\xe2\x80\x9d ); Compco Corp. v. DayBrite Lighting, Inc., 376 U.S. 234, 237 (1964) (discussing scope of federal\n179\n\n\x0cOpinions o f the Office o f Legal Counsel in Volume 22\n\npreemption of state law and explaining that \xe2\x80\x9c [t]o forbid copying [under state law]\nwould interfere with the federal policy, found in [Article] I, [section] 8, [clause]\n8, of the Constitution and in the implementing federal statutes, of allowing free\naccess to copy whatever the federal patent and copyright laws leave in the public\ndomain\xe2\x80\x9d ).\nIf the Intellectual Property Clause precluded Congress from providing protection\nagainst the copying of nonoriginal portions of factual compilations, even pursuant\nto a power other than that conferred by that Clause, then Congress would not\nbe able to use the Commerce Clause to avoid the implicit strictures of the Intellec\xc2\xad\ntual Property Clause that the Court in Feist could be said to have recognized,\njust as Congress may not use the Commerce Clause to avoid the Bankruptcy\nClause\xe2\x80\x99s express requirement that bankruptcy laws be uniform, see Railway Labor\nExecutives\xe2\x80\x99 A s s \xe2\x80\x99n v. Gibbons, 455 U.S. 457, 468-69 (1982). Under this reading,\nCongress\xe2\x80\x99s reliance on the commerce power would not obviate any of the constitu\xc2\xad\ntional problems concerning the exercise of congressional power under the Intellec\xc2\xad\ntual Property Clause that we have already identified.11\nOn the other hand, prior to Feist, the Court had recognized intellectual property\ninterests not grounded in the Intellectual Property Clause. There are at least four\nnotable circumstances outside the copyright context in which the Court has recog\xc2\xad\nnized such interests. Although these examples, together, indicate that there is no\ncategorical prohibition on Congress\xe2\x80\x99s power to restrict the dissemination of data\nand other forms of \xe2\x80\x9c intellectual property\xe2\x80\x9d that are not copyrighted, neither do\nthey make clear that Congress would have the power to enact legislation like\nH.R. 2652 under the Commerce Clause against a claim that the Intellectual Prop\xc2\xad\nerty Clause imposes a limitation. With one exception, the cases are distinguishable,\nand even that case does not, by itself, support legislation of this scope.\nFirst, the Court has sanctioned federal limitations on the dissemination of\ninformation where the person who wishes to disseminate it received such informa\xc2\xad\ntion only on the condition that it remain secret or confidential, whether such condi\xc2\xad\ntion was expressly set forth by contract or impliedly recognized as a matter of\nlaw. For example, the government is able to afford protection to factual informa\xc2\xad\ntion pursuant to its commerce power in order to protect trade secrets. See Bonito\nBoats, 489 U.S. at 155-57 (1989) (discussing compatibility of state trade secret\nprotection with the federal intellectual property regime). See also Seattle Times\nCo. v. Rhinehart, 467 U.S. 20 (1984) (federal court may impose protective order\nrestricting party from revealing trade secrets that it obtained pursuant to compul\xc2\xad\nn See G insburg, No \xe2\x80\x98\'S w e a t" 7, 92 Colum L. Rev at 368 (\xe2\x80\x9c Feist\'s claim that its standard of originality is \xe2\x80\x98con\xc2\xad\nstitutionally m andated\xe2\x80\x99 may impede enactment o f a federal law protecting unoriginal compiled information under\nthe Com m erce C lause.\xe2\x80\x9d ), id. at 349 (\xe2\x80\x9c Justice O \xe2\x80\x99Connor\xe2\x80\x99s opinion appears to enshnne a policy of free-nding in\nthe C onstitution\xe2\x80\x9d ).\n\n180\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\nsory discovery process).12 These types of protection would appear to be distin\xc2\xad\nguishable, however, from the type of protection that H.R. 2652 would provide.\nH.R. 2652 would provide protection to compilers of information so that they\nwould be able to offer the information to the public for a fee. By contrast, provi\xc2\xad\nsions that protect trade secrets do not restrict the manner in which information\nthat is offered to the public in the market may be used. Such provisions instead\nsimply provide protection to those persons who wish to keep information con\xc2\xad\nfidential and therefore to persons who have no interest in offering to the wider\npublic for sale. As a result, trade secret protections do not interfere, at least\ndirectly, with the manner in which information that is made available for sale\nto the public might be used. By contrast, H.R. 2652 would impose direct limita\xc2\xad\ntions on the manner in which members of the public might use information that\nis, in some sense that may be constitutionally relevant, already in the public\ndomain. Cf. Bonito Boats, 489 U.S. at 155-57 (explaining that state trade secrets\nprotection is not preempted by federal patent laws because trade secrets protection\ndoes not interfere with policy that \xe2\x80\x9c matter once in the public domain must remain\nin the public domain\xe2\x80\x9d ).13\nSecond, protection may be afforded pursuant to the commerce power to deter\nfalse representation, or to protect consumers from confusion, as the trademark\nlaws demonstrate. See The Lanham Act, 15 U.S.C. \xc2\xa7\xc2\xa7 1501-1540 (1994). An\nanalogy between H.R. 2652 and trademark protection would appear questionable,\nas the bill plainly provides protection that is not directed at avoiding confusion\nas to the identity of the source of the information. See Bonito Boats, 489 U.S.\nat 154-55 (distinguishing between traditional trade dress regulation and laws\naimed at protecting factual information that would not sow confusion). Indeed,\nthe provision would provide protection even if it were made perfectly clear, and\nno consumer could reasonably conclude otherwise, that the copier of the collection\nof information had not exerted personal effort in compiling the facts provided\nbut had instead merely copied them from someone who had exerted such personal\neffort.\nIn one notable case, protection analogous to that afforded trademarks has been\nextended to a word, the use of which would not cause consumer confusion. See\nSan Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S.\n522, 539 (1987). That case, however, is distinguishable. There, Congress had prol2See also Carpenter v United States, 484 U S 19 (1987) (conspiracy to trade on newspaper\xe2\x80\x99s confidential\ninformation is within reach of federal mail and wire fraud statutes), Snepp v United States, 444 U S. 507 (1980)\n(government can, as a condition of employment, extract enforceable promise that employees will not reveal classified\ninformation they learn dunng their employ)\n13 We note, however, that in the specific context of libel law, a plurality of the Court in one notable case drew\nsignificance from the fact that information was provided only to a limited number o f subscribers for a fee \xe2\x80\x9c [SJince\nthe credit report was made available to only five subscribers, who, under the terms of the subscription agreement,\ncould not disseminate it further, it cannot be said that the report involves any strong interest in the free flow of\ncommercial information.\xe2\x80\x9d Dun & Bradstreet, Inc. v Greenmoss Builders, Inc , 472 U.S. 749, 762 (1985) (plurality\nopinion) (internal quotation marks and citations omitted) (permitting recovery of damages for defamatory statement\nnot involving matters o f public concern absent a showing o f actual malice).\n\n181\n\n\x0cOpinions o f the Office o f Legal Counsel in Volume 22\n\nvided statutory protection for the use of the word \xe2\x80\x9c Olympic\xe2\x80\x9d in order to protect\nthe commercial interests of the United States Olympic Committee and \xe2\x80\x9c the value\n[that] the USOC\xe2\x80\x99s efforts have given to [that word].\xe2\x80\x9d Id. at 541. That case did\nnot involve protection of facts, as such, but rather of the special commercial value\nassociated with the use of a particular word in a particular context. H.R. 2652,\nhowever, would appear to provide such broad protection that it would protect\nfacts not for any special value apart from their ordinary meaning that has been\ngiven to them by the compiler\xe2\x80\x99s efforts but rather merely because the compiler\nexpended effort in collecting them.\nThird, state law has been used to provide protection against dissemination of\ncertain \xe2\x80\x9c copied\xe2\x80\x9d materials to protect what has been termed \xe2\x80\x9c the right of pub\xc2\xad\nlicity.\xe2\x80\x9d See Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 569 (1977).\nThe right of publicity protection, however, only guards the use of an individual\xe2\x80\x99s\n\xe2\x80\x9c personality\xe2\x80\x9d and personal talents against unauthorized commercial exploitation.\nSee id. For example, Zacchini concerned the legality of a news service\xe2\x80\x99s airing\nof film o f an individual\xe2\x80\x99s paid human cannonball performance, against the wishes\nof the performer. The case therefore involved protection of a depiction of the\nperformer\xe2\x80\x99s original performance, a \xe2\x80\x9c fact\xe2\x80\x9d \xe2\x80\x94 the performance\xe2\x80\x94 that existed only\nbecause of the performer\xe2\x80\x99s own efforts. The Court expressly noted that the right\nof publicity would not serve to prevent reporting of facts about the cannonball\nact, as opposed to display of the act itself in its entirety, id. at 574, and that\nthe right was analogous to copyright\xe2\x80\x99s protection of original expression, id. at\n577 n .l 3. See also id. at 569 (a case involving description of the act would be\n\xe2\x80\x9c a very different case\xe2\x80\x9d ). By contrast, the protection provided by H.R. 2652 would\nextend to factual data that exists independently of the compiler\xe2\x80\x99s efforts.\nFinally, competitive misappropriation of so-called \xe2\x80\x9c hot news\xe2\x80\x9d information has\nalso been afforded protection by the Supreme Court as a matter of federal common\nlaw. See International News Serv. v. Associated Press, 248 U.S. 215 (1918). Inter\xc2\xad\nnational News Service might provide some authority for the argument that Con\xc2\xad\ngress may use its Commerce Clause power to create certain torts relating to \xe2\x80\x98\xe2\x80\x98mis\xc2\xad\nappropriation\xe2\x80\x9d of facts, even where the facts themselves may not be copyrighted\npursuant to the Intellectual Property Clause.\nIn International News Service, the Court, without relying on the Intellectual\nProperty Clause, recognized the permissibility o f a certain limited form of liability\nfor copying publicly disclosed information. The case arose prior to the Court\xe2\x80\x99s\ndecision in Erie Railroad v. Tompkins, 304 U.S. 64 (1938), and it represented\nan exercise of the Supreme Court\xe2\x80\x99s power to make federal common law pursuant\nto the grant of diversity jurisdiction. The case concerned a dispute that arose from\na practice o f the International News Service. The news agency systematically\nreviewed East Coast editions of newspapers published by subscribers to the Asso\xc2\xad\nciated Press, copied or rewrote the stories contained therein, and published the\nstories in its own West Coast newspapers, some of which were delivered and\n182\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\nsold before rival Associated Press newspapers in the same cities. International\nNews Serv., 248 U.S. at 231. The Associated Press had not copyrighted its stories,\nid. at 233, and there was no established cause of action that the Associated Press\ncould invoke to stop the International News Service practices.\nThe Court held that, even if the Associated Press did not have any property\ninterest in its reported facts \xe2\x80\x9c as against-the public,\xe2\x80\x9d it had a \xe2\x80\x9c quasi property\xe2\x80\x9d\nright vis-a-vis the International News Service, which was \xe2\x80\x9c seeking to make profits\nat the same time and in the same field.\xe2\x80\x9d Id. at 236. The Court used this quasiproperty right to justify an injunction against the International News Service\xe2\x80\x99s\n\xe2\x80\x9c misappropriation\xe2\x80\x9d of Associated Press\xe2\x80\x99s reportage, because the International\nNews Service was \xe2\x80\x9c endeavoring to reap where it has not sown.\xe2\x80\x9d Id. at 239. The\nCourt\xe2\x80\x99s holding \xe2\x80\x9c only postpone[d] participation by [the Associated Press\xe2\x80\x99s]\ncompetitor in the processes of distribution and reproduction of news that it has\nnot gathered, and only to the extent necessary to prevent that competitor from\nreaping the fruits of [the Associated Press\xe2\x80\x99s] efforts and expenditure, to the partial\nexclusion of [the Associated Press].\xe2\x80\x9d Id. at 241.14\nAlthough the legal status of the quasi-property right recognized in International\nNews Service\xe2\x80\x94 and, more particularly, the scope of that right\xe2\x80\x94 is not entirely\nclear, Feist suggested that the so-called \xe2\x80\x9c hot news\xe2\x80\x9d misappropriation tort, at least\nas it was recognized in International News Service itself, could survive. The Feist\nCourt explained that the International News Service Court had acknowledged that\nthe news articles themselves were \xe2\x80\x9c copyrightable,\xe2\x80\x9d but had then \xe2\x80\x9c flatly rejected\xe2\x80\x9d\nthe view \xe2\x80\x9c that the copyright in an article extended to the factual information it\ncontained.\xe2\x80\x9d 499 U.S. at 353-54. Nevertheless, the Court noted that \xe2\x80\x9c [t]he Court\nultimately rendered judgment for Associated Press on noncopyright grounds that\nare not relevant here.\xe2\x80\x9d Id. at 354 n.*.\nMore generally, the Feist Court suggested that an \xe2\x80\x9c unfair competition\xe2\x80\x9d theory\ncould be the basis for some anti-copying protection of nonoriginal factual compila\xc2\xad\ntions:\nProtection for the fruits of such research . . . may in certain cir\xc2\xad\ncumstances be available under a theory of unfair competition. But\nto accord copyright protection on this basis alone distorts basic\ncopyright principles in that it creates a monopoly in public domain\nmaterials without the necessary justification of protecting and\nencouraging the creation of \xe2\x80\x9c writings\xe2\x80\x9d by \xe2\x80\x9c authors.\xe2\x80\x9d\n14 International News Service did not discuss the Intellectual Property Clause, except to note that\n[ijt is not to be supposed that the framers of the Constitution, when they empowered Congress \xe2\x80\x98to promote\nthe progress o f science and useful arts, by securing for limited times to authors and inventors the exclusive\nright to their respective wntings and discoveries\xe2\x80\x99 (Const Art. I ,\xe2\x80\x98 \xc2\xa78, par 8), intended to confer upon\none who might happen to be the first to report a historic event the exclusive nght for any penod to spread\nthe knowledge o f it.\nId. at 234\n\n183\n\n\x0cOpinions o f the O ffice o f Legal Counsel in Volume 22\n\n499 U.S. at 354 (quoting Melville B. Nimmer & David Nimmer, Nimmer on Copy\xc2\xad\nright \xc2\xa73.04, at 3-23 (1990) (footnote omitted)). The passage is obscure, and thus\nit is not exactly clear what protection might be available \xe2\x80\x98\xe2\x80\x98under a theory of unfair\ncompetition,\xe2\x80\x9d or even what the Court intended by the phrase \xe2\x80\x9c a theory of unfair\ncompetition.\xe2\x80\x9d It is possible, however, that the passage provides further support\nfor an argument that the misappropriation tort recognized in International News\nService survives the Feist analysis as an example of permissible regulation of\nunfair competition.\nSome insight into the possible meaning of the phrase \xe2\x80\x9c unfair competition\xe2\x80\x9d as\nit appears in Feist may be gleaned from Justice O \xe2\x80\x99Connor\xe2\x80\x99s decision for the Court,\ntwo years prior to her opinion in Feist, in Bonito Boats. Justice O \xe2\x80\x99Connor identi\xc2\xad\nfied the \xe2\x80\x9c usual sense [in which] the term \xe2\x80\x98unfair competition\xe2\x80\x99 is understood\xe2\x80\x9d\nby tying it to trade dress protection:\nThe law of unfair competition has its roots in the common-law tort\nof deceit: its general concern is with protecting consumers from\nconfusion as to source. W hile that concern may result in the cre\xc2\xad\nation of \xe2\x80\x9c quasi-property rights\xe2\x80\x9d in communicative symbols, the\nfocus is on the protection o f consumers, not the protection o f pro\xc2\xad\nducers as an incentive to product innovation. Judge Hand captured\nthe distinction well in Crescent Tool Co., v. Kilborn & Bishop Co.,\n247 F. 299, 301 (CA2 1917), where he wrote:\n\xe2\x80\x9c [T]he plaintiff has the right not to lose his customers\nthrough false representations that those are his wares which\nin fact are not, but he may not monopolize any design or\npattern, however trifling. The defendant, on the other hand,\n, may copy plaintiffs goods slavishly down to the minutest\ndetail: but he may not represent himself as the plaintiff in\ntheir sale.\xe2\x80\x9d\n489 U.S. at 157 (emphasis added). As the Court in Bonito Boats concluded,\n\xe2\x80\x9c unfair com petition\xe2\x80\x9d thus does not describe the object of a statute \xe2\x80\x9c aimed\ndirectly at preventing the exploitation of [publicly disclosed factual information].\xe2\x80\x9d\nId. at 158. H.R. 2652 would be such a statute.\nIf this limited meaning of \xe2\x80\x9c unfair competition\xe2\x80\x9d were all that the Court intended\nto cover in the passage quoted above from Feist, then it would be difficult to\nrely on that passage as authority for the type of \xe2\x80\x9c unfair competition\xe2\x80\x9d protection\ncontemplated here. On the other hand, the tort recognized in International News\nService does appear to have been premised on the notion that the International\nNews Service had engaged in \xe2\x80\x9c unfair competition,\xe2\x80\x9d and thus that a legal remedy\ncould be provided for such conduct even though the copyright power would not\n184\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\nprovide the basis for such protection. As a result, the general reference in Feist\nto protection against unfair competition emanating from the exercise of a valid\npower other than the Intellectual Property Clause provides some basis for the\ncongressional creation of a misappropriation tort, at least along the lines recog\xc2\xad\nnized in International News Service.\nIf, as seems fair to be the case, Feist does not foreclose Congress from enacting\nsomething approximating the misappropriation tort recognized in International\nNews Service itself, there remains the question concerning the permissible scope\nof an extension of such a tort. There is little precedent to provide direct guidance\non this point in part because there has been little legal development in the mis\xc2\xad\nappropriation tort itself since Feist. Indeed, even prior to Feist, due to the C ourt\xe2\x80\x99s\ndecision in Erie Railroad limiting the authority of federal courts to engage in\ncommon lawmaking, federal courts had no occasion to expand upon the tort recog\xc2\xad\nnized in International News Service. State courts have also had little occasion\nto expand upon the tort recognized in International News Service, in part because\nof the preemptive effect of the Copyright Act. As explained in the recent case\nof NBA v. Motorola, Inc., 105 F.3d 841, 852 (2d Cir. 1997), a state-law tort that\nwould not be preempted by the Copyright Act must have the following essential\nelements: (i) the plaintiff generates or collects information at some cost or\nexpense; (ii) the value o f the information is highly time-sensitive; (iii) the defend\xc2\xad\nant\xe2\x80\x99s use of the information constitutes free-riding on the plaintiffs costly efforts\nto generate or collect it; (iv) the defendant\xe2\x80\x99s use of the information is in direct\ncompetition with a product or service offered by the plaintiff; and (v) the ability\nof other parties to free-ride on the efforts of the plaintiff would so reduce the\nincentive to produce the product or service that its existence or quality would\nbe substantially threatened.15\nUnburdened as it is by limitations on judicial common lawmaking or federal\npreemption doctrine, Congress might have greater freedom than federal courts or\nstates to expand upon the tort recognized in International News Service. It is plain,\nhowever, that H.R. 2652 would constitute, not a modest extension of the \xe2\x80\x9c hot\nnews\xe2\x80\x9d misappropriation tort, but a dramatic extension of the tort recognized in\nthe case. See House Report at 17 (explaining that H.R. 2652 would \xe2\x80\x9c preserve\nthe holding\xe2\x80\x9d of International News Service, but would reach far beyond that case\nto make impermissible much conduct that does not fall within the \xe2\x80\x9c narrow\nscope,\xe2\x80\x9d id., of that holding). H.R. 2652 would not require, a civil plaintiff or\na federal prosecutor, to prove that the value of the information be highly timesensitive, or that the ability of other parties to free-ride on the efforts of the plain\xc2\xad\n15 Indeed, the \xe2\x80\x9c unusual circumstances\xe2\x80\x9d in International News Service itself may not have been limited to misappro\xc2\xad\npriation simphciter. The Associated Press alleged that the International News Service had done far more than simply\nrepublish the facts conveyed in the Associated Press\xe2\x80\x99s stories. The International News Service allegedly had bribed\nemployees of A ssociated Press subscribers for an early look at breaking news, 248 U.S at 231, occasionally had\nsold Associated Press\xe2\x80\x99s stories \xe2\x80\x9c bodily,\xe2\x80\x9d i.e., without rewriting them, id., and had falsely represented to its readers\nthat the news transmitted was the result of International News Services\xe2\x80\x99s own investigation, id at 242. Such factors,\nthe Court acknowledged, \xe2\x80\x9c accentuated] the wrong,\xe2\x80\x9d even if they were not \xe2\x80\x9c the essence of it.\xe2\x80\x99 \xe2\x80\x99 Id\n\n185\n\n\x0cOpinions o f the Office o f Legal Counsel in Volume 22\n\ntiff would so reduce the incentive to produce the product or service that its exist\xc2\xad\nence or quality would be substantially threatened. Moreover, due to the ambiguity\nas to the scope of the limitation that there must be a demonstration of harm to\nthe potential market, it is not at all clear that H.R. 2652 would even require proof\nthat the offending use or extraction be committed by a person in direct competition\nwith a product or service offered by the plaintiff, or even that a use was nontransformative and for a commercial purpose. In contrast, the Court in International\nNews Service repeatedly emphasized that the tort it was identifying would not\nextend to the copying and dissemination of news stories by members of the public,\nas opposed to by competitors of the Associated Press. 248 U.S. at 239-41.16\nAccordingly, to the extent that Feist may be read to have construed the Intellec\xc2\xad\ntual Property Clause to have established a kind of constitutionally prescribed\npublic domain for factual material on which Congress may not infringe (absent,\nperhaps, private contractual agreements), a broad expansion of the \xe2\x80\x9c hot news\xe2\x80\x9d\ntort would appear to raise serious constitutional concerns. H.R. 2652\xe2\x80\x94 which\nwould apply well beyond the context of direct competitors, let alone the context\nof time-sensitive direct competition\xe2\x80\x94 would therefore raise substantial questions\nunder Feist (and under the First Amendment, see infra) that would not be raised\nby a less ambitious statute that codified a limited International News Service\xc2\xad\nlike tort. See Reichman & Samuelson, Intellectual Property Rights in Data?, 50\nVand. L. Rev. at 139-45.\n\nIV. Possible First Amendment Limitations on the Commerce Power\nEven if the Intellectual Property Clause does not itself impose constraints on\nCongress\xe2\x80\x99s Commerce Clause power, the First Amendment might nevertheless\nlimit the type of protection that Congress can provide against the \xe2\x80\x9c use\xe2\x80\x9d and\n\xe2\x80\x9c extraction\xe2\x80\x9d of factual compilations.\nOne of the principal aims of the First Amendment is to \xe2\x80\x9c secure \xe2\x80\x98the widest\npossible dissemination o f information from diverse and antagonistic sources.\xe2\x80\x99 \xe2\x80\x9d\nNew York Times Co. v. Sullivan, 376 U.S. 254, 266 (1964) (quoting Associated\n16 For example:\nD efendant insists that when, with the sanction and approval o f complainant, and as the result of the\nuse o f its news for the very purpose for which it is distributed, a portion of complainant\xe2\x80\x99s members commu\xc2\xad\nnicate it to the general public by posting it upon bulletin boards so that all may read, or by issuing it\nto newspapers and distributing it indiscriminately, complainant no longer has the right to control the use\nto be made o f it; that when it thus reaches the light o f day it becomes the common possession of all\nto whom it is accessible, and that any purchaser o f a newspaper has the right to communicate the intel\xc2\xad\nligence which it contains to anybody and fo r any purpose, even for the purpose of selling it for profit\nto newspapers published for profit in competition with com plainant\xe2\x80\x99s members.\nT he fault in the reasoning lies in applying as a test the right o f the complainant as against the public,\ninstead o f considering the rights o f complainant and defendant, competitors in business, as between them\xc2\xad\nselves. The n g h t o f the purchaser of a single newspaper to spread knowledge of its contents gratuitously,\nfor any legitimate purpose not unreasonably interfering with com plainant\xe2\x80\x99s nght to make merchandise of\nit, may be admitted, but to transmit that new s for commercial use, in competition with complainant\xe2\x80\x94\nwhich is what defendant has done and seeks to justify\xe2\x80\x94 is a very different matter.\nId. at 239\n\n186\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\nPress v. United States, 326 U.S. 1, 20 (1945)). In accordance with this objective,\nthe First Amendment imposes significant constraints on the ability of the govern\xc2\xad\nment to restrict the dissemination of information that has been publicly disclosed\nand that the disseminator has lawfully obtained. For example, although the\nSupreme Court has been careful never to hold categorically that publication of\nlawfully obtained truthful information \xe2\x80\x9c is automatically constitutionally pro\xc2\xad\ntected,\xe2\x80\x9d see The Florida Star v. B.J.F., 491 U.S. 524, 541 (1989), the Court has,\non several occasions, held that \xe2\x80\x9c the government may not generally restrict individ\xc2\xad\nuals from disclosing information that lawfully comes into their hands in the\nabsence of a \xe2\x80\x98state interest of the highest order.\xe2\x80\x99 \xe2\x80\x9d United States v. Aguilar, 515\nU.S. 593, 605 (1995) (quoting Smith v. Daily Mail Pub. Co., 443 U.S. 97, 103\n(1979)). See also Butterworth v. Smith, 494 U.S. 624, 632 (1990).17 And even\nif the state has such an interest, \xe2\x80\x9c punishment may lawfully be imposed, if at\nall, only when narrowly tailored to a state interest of the highest order.\xe2\x80\x9d Florida\nStar, 491 U.S. at 541.18 What is more, even in situations in which the government\nhypothetically could impose subsequent sanctions for the publication or copying\nof certain information, there is a particular concern about imposing a prior restraint\non a secondary recipient from disseminating noncommercial speech. See, e.g., New\nYork Times Co. v. United States, 403 U.S. 713 (1971). That is true even where\nthe information was unlawfully obtained as an initial matter. Id.\nTo be sure, cases such as New York Times v. Sullivan and Florida Star are\nnot directly on point. Those cases involved governmental attempts to suppress\ncertain types of information from being disseminated on the basis of content. By\ncontrast, H.R. 2652 would not target any particular types of messages for suppres\xc2\xad\nsion. It would instead prescribe the means under which collections of information\n17 This same restriction does not necessarily apply if the information is secret, confidential, or classified, and\nis provided to another on the express condition that it not be further disclosed For example, the Court has upheld\nthe constitutionality of governmental restrictions on its own employees\xe2\x80\x99 activities to ensure that those employees\ndo not disclose classified information belonging to the government itself. The Court explained in Snepp v United\nStates, 444 U S 507, 509 n 3 (1980), that such restrictions on employee conduct generally will not violate the\nFirst Amendment so long as they are a \xe2\x80\x9c reasonable means\xe2\x80\x9d o f protecting the government\xe2\x80\x99s \xe2\x80\x9c compelling interest\nin protecting . . the secrecy o f information important to our national security \xe2\x80\x9d Similarly, a court may provide\ntrade secrets to a plaintiff as part o f discovery in a civil lawsuit, subject to the condition that the plaintiff not\nfurther disseminate such secrets Seattle Times Co v Rhinehart, 467 U S 20 (1984) And even a private party\ncan create enforceable limits on the right to publish confidential information that it shares with another, pursuant\nto state laws of contract or promissory estoppel that are \xe2\x80\x9c generally applicable\xe2\x80\x9d (i e , that do not single out speech\nfor disfavored treatment) See Cohen v Cowles Media Co , 501 U S 663, 669-71 (1991) (whereas First Amendment\nis not implicated by application o f \xe2\x80\x9c generally applicable law s\xe2\x80\x9d to violations involving speech or the press, there\nis a greater constitutional problem where, as in Florida Star, the \xe2\x80\x9c Slate itself define{s] the content of publications\nthat would trigger liability\xe2\x80\x9d ). These cases would not be directly applicable to the proposed bill, however, in that\nthey involved restrictions on the person to whom the information had been distributed under the confidentiality\nagreement, and not to restrictions on third parties who would be subsequent users or disseminators of such informa\xc2\xad\ntion\n18On occasion, the Court has indicated that this demanding standard applies only to information concerning \xe2\x80\x9c \xe2\x80\x98a\nmatter of public significance*\xe2\x80\x9d See, e g , Florida Star, 491 U S . at 533 (quoting Smith, 443 U S at 103) See\nalso Dun & Bm dstreet, 472 U S at 759 (plurality opinion) (speech on matters of \xe2\x80\x9c purely private concern\xe2\x80\x9d entitled\nto less First Amendment protection in defamation cases); id at 764 (Burger, C J , concurring in pertinent part),\nid. at 773-74 (W hite, J., concurring in pertinent part) But see Florida Star, 491 U.S. at 541 (omitting the \xe2\x80\x9c matter\nof public significance\xe2\x80\x9d standard in the Court\xe2\x80\x99s ultimate holding, quoted in the text above)\n\n187\n\n\x0cOpinions o f the Office o f Legal Counsel in Volume 22\n\nthat had been complied may be used by others. Namely, it would require users,\nin certain circumstances, to expend great effort independendy before using\ninformation contained in a collection that itself had been compiled only after great\neffort.\nThis ground of distinction hardly dispenses with the concern that H.R. 2652\ntrenches on First Amendment rights. Copyright protection similarly does not seek\nto suppress certain types of messages. It, too, merely prescribes the means by\nwhich information may be used by others. Nevertheless, the Court has concluded\nthat the First Amendment may impose limitations on the types of material that\nmay be copyrighted. Most significantly, in Harper & Row Publishers, Inc. v.\nNation Enterprises, 471 U.S. 539 (1985), the Court explained that the First\nAmendment and the Copyright Act can be reconciled by virtue of the fact that\ncopyright law already embodies a distinction between original forms of expres\xc2\xad\nsion\xe2\x80\x94 which are copyrightable\xe2\x80\x94 and facts (and ideas)\xe2\x80\x94which are not:\n[CJopyright\xe2\x80\x99s idea/expression dichotomy \xe2\x80\x9c strikefs] a definitional balance between\nthe First Amendment and the Copyright Act by permitting free communication\nof facts while still protecting an author\xe2\x80\x99s expression. No author may copyright\nhis ideas or the facts he narrates. 17 U.S.C. \xc2\xa7 102(b).\xe2\x80\x9d Id. at 556 (citation omitted).\nSee also New York Times Co., 403 U.S. at 726 n.* (Brennan, J., concurring);\nFeist, 499 U.S. at 344\xe2\x80\x9445 (\xe2\x80\x9c The most fundamental axiom of copyright law is\nthat \xe2\x80\x98[n]o author may copyright his ideas or the facts he narrates.\xe2\x80\x99 \xe2\x80\x9d ) (quoting\nHarper & Row, 471 U.S. at 556). Thus, for example, the Court held that although\ndirect quotations from President Ford\xe2\x80\x99s biography were subject to copyright, the\nhistorical facts contained in that biography were not subject to copyright and could\nbe freely copied. See Harper & Row, 471 U.S. at 565-66 & n.8 (applying copy\xc2\xad\nright analysis only to \xe2\x80\x9c verbatim quotes\xe2\x80\x9d from the biography, and excluding from\ninfringement consideration historical quotations attributed to third parties and to\ngovernment documents). See also Zacchini, 433 U.S. at 574 (right of publicity\nwould not serve to prevent reporting of facts about the cannonball act, as opposed\nto display of the act itself in its entirety); id. at 577 n.13 (noting analogy to copy\xc2\xad\nright\xe2\x80\x99s expression/idea distinction).\nThe distinction referenced in Harper & Row may be understood to reflect the\nCourt\xe2\x80\x99s understanding that, in order to reconcile and accommodate copyright and\nthe First Amendment, no intellectual property rights can extend to facts that have\nbeen released in the public domain.19 Moreover, even in the context of creative\nforms of expression that can be copyrighted (as opposed to factual information,\nwhich cannot), First Amendment values are further protected in the copyright law\nby virtue o f the \xe2\x80\x9c latitude for scholarship and comment traditionally afforded by\nfair use.\xe2\x80\x9d Harper & Row, 471 U.S. at 560. Furthermore, the Intellectual Property\n19N im m er explains that this would be so even where a great quantity of labor and expense were necessary to\nresearch and compile the facts: \xe2\x80\x9c W ould anyone seriously suggest that the Washington Post was entitled to a copyright\non the facts o f the W atergate incident because its reporters, W oodward and Bernstein, through considerable labor,\nexpense and ingenuity, discovered such facts?\xe2\x80\x9d I N im m er on Copyright \xc2\xa7 2 1l[E], at 2 - 172 30 to 172.31.\n\n188\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\nClause ensures that expression itself must enter the public domain after the \xe2\x80\x9c lim\xc2\xad\nited times\xe2\x80\x9d for which copyright protection is available. Indeed, where important\nfactual information could not satisfactorily be conveyed except by certain unique\nexpression, the First Amendment might even ensure that copyright protection for\nsuch expression be denied or limited. See Nimmer on Copyright \xc2\xa7 1.10[C][2], at\n1-85 to 1-92.\nAccordingly, H.R. 2652, by providing protection for facts, raises serious First\nAmendment concerns. It would restrict the ability of persons to use and dissemi\xc2\xad\nnate factual materials that are not protected by copyright, and it arguably would\ndo so even in circumstances where the copyright law would not protect creative\nexpression.\nWe can imagine two arguments that might be made in support of H.R. 2652\nagainst a First Amendment challenge. First, it remains the case that in Inter\xc2\xad\nnational News Service, the Court permitted a tort for the dissemination of informa\xc2\xad\ntion, as such. It is unclear to what extent the International News Service tort can\nbe reconciled with modem First Amendment doctrine. Nevertheless, that case was\napprovingly cited in San Francisco Arts & Athletics, where the Court recognized\nthe possibility that the unauthorized use of an Olympic logo could impermissibly\nundermine the \xe2\x80\x9c owner\xe2\x80\x99s\xe2\x80\x9d legitimate commercial interests, even in the absence\nof a demonstration that such a use would be confusing to consumers. 483 U.S.\nat 541. As the Court there explained, \xe2\x80\x9c [t]here is no question that this unauthorized\nuse could undercut the [United States Olympic Committee\xe2\x80\x99s] efforts to use, and\nsell the right to use, the word in the future, since much of the word\xe2\x80\x99s value comes\nfrom its limited use.\xe2\x80\x9d Id. at 539. Thus, \xe2\x80\x9c [e]ven though this protection may exceed\nthe traditional rights of a trademark owner in certain circumstances, the application\nof the Act to . . . commercial speech is not broader than necessary to protect\nthe legitimate congressional interest and therefore does not violate the First\nAmendment.\xe2\x80\x9d Id. at 540. The Court went on to reject the claim that the restriction\nviolated the First Amendment because it reached noncommercial, promotional uses\nof the word. \xe2\x80\x9c The mere fact that [petitioner] claims an expressive, as opposed\nto purely commercial, purpose, does not give it a First Amendment right to\n\xe2\x80\x98appropriat[e] to itself the harvest of those who have sown.\xe2\x80\x99 \xe2\x80\x9d Id. at 541 (quoting\nInternational News Serv., 248 U.S. at 239^40). San Francisco Arts & Athletics\ndid not consider a~b\xe2\x80\x9drbad prohibitibhligaihst the dissemination of factual informa---------tion of the type that is at issue here; therefore it did not implicate the First Amend\xc2\xad\nment doctrine discussed above. Nonetheless, that case\xe2\x80\x99s favorable reference to\nInternational News Service in response to a different First Amendment argument\nindicates that the former case provides some authority for a possible intellectual\nproperty exception to certain First Amendment constraints that would apply out\xc2\xad\nside the intellectual property context.\nEven if International News Service does indicate that the First Amendment per\xc2\xad\nmits some anti-copying protection for nonoriginal factual information, however,\n189\n\n\x0cOpinions of the Office o f Legal Counsel in Volume 22\n\nit must be emphasized that H.R. 2652 raises serious constitutional concerns\nbecause it provides protection that is much broader than that at issue in Inter\xc2\xad\nnational News Service. Unlike the \xe2\x80\x9c hot news\xe2\x80\x9d misappropriation tort that the Court\nrecognized in International News Service, the bill would not create liability only\nfor \xe2\x80\x9c competitive and systematic interference with dissemination of unpublished,\npartially published or access-controlled information,\xe2\x80\x9d where \xe2\x80\x9c the timeliness of\nthe information makes its commercial value of short duration.\xe2\x80\x9d Ginsburg, No\n\xe2\x80\x9cSw eat\xe2\x80\x9d ?, 92 Colum. L. Rev. at 357; see also NBA v. Motorola, 105 F.3d at\n852.\nSecond, there is an important consideration that might distinguish H.R. 2652\nfrom the prototypical First Amendment case where the government acts to limit\nthe use of publicly available information. As we explained above, in the usual\nFirst Amendment cases, such as the ones cited at the beginning of this section,\nthe government\xe2\x80\x99s restriction on the dissemination of information has the intent\nand effect of constricting the total quantum of information that the public could\nput to lawful and valuable use by singling out certain disfavored messages for\nsuppression. Because H.R. 2652 would simply regulate the means by which\ninformation generally may be re-used, it arguably could be defended as a legiti\xc2\xad\nmate attempt to recognize individual rights in intellectual property in order to\nensure in an overall increase in the amount of available, valuable factual informa\xc2\xad\ntion (because of the heightened incentives to compile facts). See Ginsburg, No\n\xe2\x80\x9cSw eat\xe2\x80\x9d ?, 92 Colum. L. Rev. at 386. It could be argued that such a statute\xe2\x80\x94\nlike copyright\xe2\x80\x99s protection of creative expression\xe2\x80\x94 would secure a wider\n\xe2\x80\x9c dissemination of information from diverse and antagonistic sources,\xe2\x80\x9d New York\nTimes, 376 U.S. at 266, than would result from a regime in which factual compila\xc2\xad\ntions are protected against reproduction only by \xe2\x80\x9c thin\xe2\x80\x9d copyright and (perhaps)\nby state contract law.\nWe should note, however, that the above-stated rationale\xe2\x80\x94 that protection\nagainst reuse and copying of factual compilations could increase, rather than\ndecrease, the existence of useful knowledge\xe2\x80\x94would be in some tension with the\npremises o f the Court\xe2\x80\x99s holdings in Feist and with the Court\xe2\x80\x99s and Congress\xe2\x80\x99s\nexclusion of copyright protection for facts, reflected in the Copyright Act and\nin cases such as Harper & Row. In those contexts, the Congress and the Court\nhave concluded that, whereas protection against reuse of expression has the effect\nof increasing the output of unique and original writings, analogous protection of\nfacts would, on the whole, impede the progress of knowledge. In addition, the\nstrength of the argument would no doubt turn in large part on the scope of the\nprotection afforded by H.R. 2652. To the extent it would apply even to non\xc2\xad\ncommercial, transformative uses, it would appear to be far more vulnerable to\nconstitutional attack on First Amendment grounds.\n190\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\nV. Possible Ways in Which H.R. 2652 Might be Narrowed\nIt may be the case that any \xe2\x80\x9c misappropriation\xe2\x80\x9d statute such as H.R. 2652\nenacted pursuant to the Commerce Clause \xe2\x80\x9c may prove difficult to reconcile with\nFeist\'s constitutionally derived endorsement of free-riding on previously gathered\ninformation.\xe2\x80\x9d Ginsburg, No \xe2\x80\x9cSw eat\xe2\x80\x9d ?, 92 Colum. L. Rev. at 341. Such a statute\nmight also raise serious First Amendment problems, no matter how it is crafted.\nWe do, however, believe that H.R. 2652 could be narrowed in several ways that\nwould lessen the risk of constitutional invalidity. Each of these suggestions would\nhave the effect of preserving more of what is now understood to constitute the\npublic domain, in which facts could freely be copied in furtherance of important\nscientific, educational, and analogous objectives.\nThe easiest and most direct way to cabin the constitutional issues would be\nto limit the statutory liability to the sort of \xe2\x80\x9c hot news\xe2\x80\x9d misappropriation tort\nthat the Court recognized in International News Service. The law could, for\nexample, create liability for \xe2\x80\x9c competitive and systematic interference with\ndissemination of unpublished, partially published or access-controlled informa\xc2\xad\ntion,\xe2\x80\x9d where \xe2\x80\x9c the timeliness of the information makes its commercial value of\nshort duration.\xe2\x80\x9d Ginsburg, No \xe2\x80\x9cSweat\xe2\x80\x9d ?, 92 Colum. L. Rev. at 357. The elements\nof a claim under such a statute could be: (i) that the plaintiff generates or collects\ninformation at some cost or expense; (ii) that the value of the information is highly\ntime-sensitive; (iii) that the defendant\xe2\x80\x99s use of the information constitutes free\xc2\xad\nriding on the plaintiff s costly efforts to generate or collect it; (iv) that the defend\xc2\xad\nant\xe2\x80\x99s use of the information is in direct competition with a product or service\noffered by the plaintiff; and (v) that the ability of other parties to free-ride on\nthe efforts of the plaintiff would so reduce the incentive to produce the product\nor service that its existence or quality would be substantially threatened. See NBA\nv. Motorola, 105 F.3d at 852.\nAbsent such a fundamental change in H.R. 2652, the following changes would\ntend to alleviate some of the constitutional concerns20:\n1. The provision could dispense with the time-sensitivity element\nof the International News Service tort of misappropriation, but still\nrequire proof that the defendant\'s use of the information constitutes----------------free-riding on the plaintiffs costly efforts to generate or collect it;\nthat the defendant\xe2\x80\x99s use of the information is in direct competition\nwith a product or service offered by the plaintiff; and that the ability\nof other parties to free-ride on the efforts of the plaintiff would\nso reduce the incentive to produce the product or service that its\nexistence or quality would be substantially threatened. Again, we\n20 We should not be understood as suggesting that any or all o f these changes would, or would not, be preferable\nas a matter of policy\n\n191\n\n\x0cOpinions o f the O ffice o f Legal Counsel in Volume 22\n\nemphasize that a statute of even this more limited scope would still\nraise substantial constitutional concerns for the reasons provided in\nthe previous sections.\n2. The prohibition in \xc2\xa7 1202 could be expressly limited to nontransformative uses and extractions by direct competitors in the par\xc2\xad\nticular market for the database in question.21 This could be accom\xc2\xad\nplished in part by expressly including a \xe2\x80\x9c fair use\xe2\x80\x9d exception akin\nto that contained in the Copyright Act, and other like statutory\nexceptions, at least as expansive as those found in the Copyright\nAct.22 As noted at the outset, it may well be that H.R. 2652 is\nintended to incorporate something approximating the fair use\nstandard for copyright by virtue of its reference to two of the four\nstatutory fair use factors contained in the Copyright Act\xe2\x80\x99s fair use\nprovision. Nonetheless, in light of the difficulties in determining\nhow a fair use exception would apply to facts, given that it has\nthus far developed in the context of copyright, which does not pro\xc2\xad\ntect facts, it would be advisable to be far more clear on this point\nthan the present statute is. Moreover, for constitutional reasons, it\nwould probably be advisable to provide even greater protection for\nthe public\xe2\x80\x99s interest in freely exchanging information here than\nwould be necessary outside the context of a statute that would pro\xc2\xad\nvide intellectual property interests in factual information. As a\nresult, a broad definition of fair use would be appropriate.\n3. The duration of the protection could be substantially shortened,\nto the briefest period that would provide sufficient incentives for\nthe data collection. Perpetual protection probably is unnecessary to\nprovide sufficient incentive to the creation of databases.\n4. Instead of effectively prohibiting certain use or extraction by sub\xc2\xad\njecting it to potential treble-damage judgments, Congress could\nconsider permitting widespread copying on reasonable terms and\nconditions, under a system of compulsory, nondiscriminatory\nlicensing. That would allow the compiler to receive fair value for\nthe cost of compiling, but might not unreasonably deter valuable\nreuses of the information.23\n2 lSee, e g , Jessica Litman, After Feist, 17 U Dayton L Rev. at 615, Ginsburg, No "Sw eat"?, 92 Colum. L.\nRev at 386\n22See Reichman & Samuelson, Intellectual Property Rights in D a ta 9, 50 Vand. L Rev at 146, 155-57.\n23See Ginsburg, N o \xe2\x80\x9cSw eat"?, 92 Colum. L. Rev. at 386-87; Reichman & Samuelson, Intellectual Property\nRights in Data?, 50 Vand L. Rev at 146\n\n192\n\n\x0cConstitutional Concerns Raised by the Collections o f Information Antipiracy Act\n\n5. The provisions for injunctive relief and impoundment could be\neliminated, in light of the disfavored status under the First Amend\xc2\xad\nment of prior restraints. Cf. Campbell, 510 U.S. at 578 n.10.\n6. The prohibition in \xc2\xa7 1202 should be narrowed so that it extends,\nat most, only to those portions of a compilation that were gathered,\norganized or maintained through investment of substantial\nresources. There is little apparent justification for constraining third\nparties\xe2\x80\x99 use of portions of a collection that were not the result of\nsuch an investment.\n\nVI. Conclusion\nH.R. 2652, the Collection of Information Antipiracy Act, raises difficult and\nnovel questions of constitutional law. It is clear, however, that, under current\nSupreme Court case law, the bill, in its current form, raises serious constitutional\nconcerns.\nWILLIAM M. TREANOR\nDeputy Assistant Attorney General\nOffice o f Legal Counsel\n\n193\n\n\x0c'