With the publication of Decree-Law 122/2000 of 4 July 2000, Portugal finally brought into force Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases.

1. Background

In the first place, it should be noted that in bringing the Directive into force, Portugal makes an important choice regarding how legal protection of databases is introduced into its legislation. Contrary to what took place in most of the European Union countries, Portugal did not include the legal protection of databases, that constitute the author's own intellectual creation, within the scope of general copyright law, the Copyright Code, (Código do Direito de Autor e dos Direitos Conexos). Portugal chose instead, to make the most of the opportunity presented by the need to bring the Directive into force, to institute a specific regime for the protection of databases, which traditionally were protected as compilations and other collections of works, by the provisions in Article 3 (1), subparagraphs b) and c), of the aforementioned Copyright Code.

This specific regime, providing legal protection for creative databases, is contained in Chapter II (Articles 4 to 11) of Decree-Law 122/2000 supplemented by the applicable provisions in the Copyright Code, for anything falling outside said regime. In other words, databases that are protected by copyright law are now subject, in the first instance, to the special provisions of said law and only subsidiarily subject to the general rules governing copyright.

In most other respects, the Decree-Law which brings the Directive in to force closely follows the Directive's own structure: scope (Chapter I), sui generis right (Chapter III), common provisions (Chapter IV), final provisions (Chapter V).

2. Transition

It is somewhat peculiar that the Decree-Law 122/2000 is intended, in part, to be applicable retroactively. In effect, Article 21 (1) stipulates that "Copyright protection of databases pursuant to this statute shall be effective from 1 January 1998 (with the exception, of course, of the criminal penalties established in article 11).

However, paragraph (3) of the same Article safeguards databases already protected under the Copyright Code on that date, observing the term of protection for the rights in question acquired in its shadow.

The protection of databases sui generis, in turn, is effective as of the date in which Decree-Law 122/2000 entered into force, that is five days from the date of its publication, but it also encompasses databases made not more than fifteen years prior to the date of its entry into force. The effective start date for this term is counted from 1 January of the year following the completion of the database. (Article 24 [4]).

There is a special rule regarding contracts that were made in the interim (Article 22): they will not be affected, nor will the rights arising from such contracts prior to entry into force of the new law, whether the databases in question are protected by copyright or by sui generis provisions that have since been established. However, the so called (inalienable) legitimate user rights, referred to in Articles 9 and 14, can never be affected, even by clauses in contracts made prior to that date, which, in this respect, shall have to be considered derogated.

3. Protection by copyright

a) Database Ownership.

Article 5 (1) stipulates that, as a rule, the general provisions governing authorship and copyright ownership apply to databases. However, significantly, as opposed to the rules established in Article 14 (2) of the Copyright Code, for the majority of protected works, the rights with respect to databases produced within an undertaking, shall be owned by the undertaking, absent any agreement to the contrary. This is so because Article 5 (2) establishes a (refutable) presumption that databases created within an undertaking shall be considered collective works and the copyright shall be exclusively owned by the undertaking pursuant to the general rules contained in Article 19 (1) of the Copyright Code. Also, because the same applies to both economic rights in the databases created by employees within the scope of employment and databases made for hire, where the exclusive economic rights shall be exercised, respectively, by the employer and the person for whom the database was created as provided in Article 5 (3).

The author's right or ability to prohibit or authorise alterations to the work was excluded with respect to databases by Decree-Law 122/2000 in Article 5 (5). Special remuneration for the employee is possible under certain circumstances, pursuant to the general rules established in paragraph (4) a) and b) of Article 15 of the Copyright Code (ex vi Article 5 (4)).

b) Object of protection.

Article 7 practically, although not entirely, reproduces Article 5 of the Directive. The main difference seems to be regarding the principle of exhaustion. Here Article 7 (2) states "any legitimate form of disposal of a database exhausts the right to control distribution rights of the database within the European Community (...)". This terminology seems to us to be, at best, unclear, given that it makes no express reference to the sale of reproductions or material copies of the database by the right holder, when in fact it is only with respect to these reproductions or material copies (as goods) introduced into the marketplace that exhaustion occurs. The offer online of an electronic copy of a database (provision of services), by the owner of the respective rights, can never lead to the exhaustion of the right of distribution with respect to that copy (Consideration 33 of the Directive).

c) Limitations.

The Directive (Article 6), allows Member States the freedom to select and determine limitations to the author's exclusive rights. The Portuguese legislator made full use of these prerogatives (Articles 9 and 10).

d) Remedies.

With respect to penalties, Article 11 provides penalties of a criminal nature for infringement of the rights over databases protected by copyright (up to 3 years in prison or fine). However, this provision only imposes criminal penalties for the reproduction, distribution or any other form of making the databases known to the public, without the right holder's consent, and furthermore, only where these acts were committed for the purposes of commercial gain. In all other situations of infringement, the only recourse for the right holder are the general remedies contained in the Civil Code for unlawful acts.

4. Protection by a sui generis right

a) Object, scope and ownership.

Portuguese law follows the text of the Directive very closely in defining the object of protection (substantial investment criterion), the scope of the sui generis right (extraction and/or re-utilisation of a substantial part of the contents of the database) and the ownership of non-creative rights (of the database maker).

However there are some aspects which do not appear to be completely in conformity with the Directive.

Among these of particular note is the fact that the law ascribes exhaustion to the right to prohibit or authorise the distribution of a database (Article 12 [3]) and not to the exhaustion of the right to control the resale of a copy, introduced within the Community by the right holder or with his consent, as stated in the Directive (Article 7 [2] b)).

These are not mere semantics, but important issues on the conceptual level and regarding possible legal consequences. Especially, when online transfer in paragraph (2) b) of the same Article 12 is included in the more general notion of distribution to the public...

b) Limitations.

The rights of the lawful user are protected under terms similar but not identical to the Directive. However, the limitations to the rights of the lawful user imposed by Article 8 (2) of the Directive (acts which conflict with the normal exploitation of the database or unreasonably prejudice the legitimate interests of the maker of the database), which have always been found in copyright law, have no echo in Decree-Law 122/2000.

In effect, this statute only imposes similar limits for "anomalous acts" performed by the legitimate user (Article 14 [2]).

Finally, it should be noted that Portuguese law uses and establishes in Articles 14 and 15 all the limitations to the sui generis right permitted by Article 9 of the Directive.

c) Term of protection

The term of protection, in this case, is 15 years from the date of completion of the database or the date when the database was first made available to the public, provided said date occurred prior to the expiry of the term referred to previously (Article 16), thereby respecting Article 10 of the Directive. The protection of substantial changes to the contents of a database (Article 17) follows the corresponding provision of the Directive (Article 10 (3)), almost word for word.

d) Remedies.

As opposed to what Article 12 of the Directive might lead one to assume, Decree-Law 122/2000 does not establish any specific remedies for the infringement of a sui generis right of a database maker. The infringement of this right constitutes neither crime nor violation. The only remedies applicable to the infringement of a database maker's sui generis right are the general provisions for suppressing unlawful acts contained in the Civil Code and, in certain cases, the unfair competition rules established in the Industrial Property Code.

Article 19 provides, however, precautionary measures for the confiscation of illegal copies of databases (and of the mechanisms intended solely for the purpose of facilitating the removal or neutralisation of technical protections placed in the database for its security), the destination of which shall be determined by the Court ruling on the case. This Article presents itself as a common provision that can be applied either to creative databases, protected by copyright, with criminal penalties, or to databases protected by a sui generis right attributed to the respective database maker and where the legal protection is merely civil.

Manuel Oehen Mendes

This article was commissioned for the Observatory web site thanks to the publishing house Dr. Otto Schmidt in Cologne

Contact : iris@obs.coe.int