February 25, 2020

Georgia et al. v. Public.Resource.Org, Inc.

COPYRIGHT

Are Annotations to Georgia Statutes “Government Edicts” and Uncopyrightable?

CASE AT A GLANCE

As a general rule, the law is not subject to copyright. A judicially created exception, known as the “government edicts” doctrine, applies to certain works having a force of law, including those created by state governments. The (presently) copyrighted annotations to the Georgia statutes are prepared by LexisNexis Group, but the annotations, although used by the court, do not have the force of law. The respondent, Public.Resource.Org (PRO), purchased the Official Code of Georgia Annotated (OCGA), scanned it, and posted it online. Georgia filed an infringement suit, and PRO counterclaimed for a finding of noninfringement. The district court held that the annotations were copyrightable and PRO infringed. The Eleventh Circuit reversed, saying that the annotations merged with the statutory provisions and are noncopyrightable government edicts.

Docket No. 18-1150
Argument Date: December 2, 2019
From: The Eleventh Circuit
by Barbara L. Jones
Minnesota Lawyer, Minneapolis, MN

ISSUE

Do the annotations to Georgia statutes have the force of law, such that they are not eligible for copyright protection?

FACTS

The Official Code of Georgia Annotated (OCGA) is the state’s only code and is published under state authority. The state contracts with LexisNexis Group (Lexis) to prepare annotations, and the economic benefit of the copyright goes to Lexis. According to the Eleventh Circuit, Georgia courts regularly cite the non-statutory materials as legal authority.

The respondent, Public.Resource.Org (PRO), is a nonprofit organization that promotes access to government records and primary legal materials. It publishes statutes and rules by state, federal, and local authorities. PRO digitally transforms the content to make it more accessible to the blind, easier to find through search engines, and generally easier to work with. The site is free and includes no advertising.

The district court enjoined PRO from posting the OCGA, and the Eleventh Circuit reversed. The court looked at the authorship of the OCGA, identifying three factors affecting this authorship inquiry: (1) the identity of the relevant state actors and whether they exercised state lawmaking authority, (2) the authoritative nature of the work, and (3) the process through which it was created. Under this test, the OCGA was “sufficiently law-like” so that it could not be copyrighted.

CASE ANALYSIS

“It is important to be clear about what is and is not at issue here,” the petitioner cautions at the beginning of its argument. Whether the law can be copyrighted is not at issue. The issue is whether the annotations, which lack the force of law, are eligible for copyright protection.

The petitioner first asserts that the Copyright Act’s plain text establishes that the OCGA’s annotations are copyrightable as derivative works, that is, works based upon one or more preexisting works. The Eleventh Circuit’s denial of protection conflicts with the Act’s plain language. The Court of Appeals reasoned that the annotations are uncopyrightable because Lexis prepares them for the state and they are in the official code book.

But the Court of Appeals reasoned incorrectly, according to petitioner, that the annotations are uncopyrightable because Lexis prepares them for the state and they are in the official code book. Congress chose to permit copyright protection for state government works so that private publishers would agree to print and publish those works. Congress did so with the understanding that, under well-established precedents, such copyright protection would cover annotations to official documents, such as the OCGA’s annotations, the petitioner writes.

That is also United States policy under 17 U.S.C. § 105. Denying the OCGA’s annotations copyright protection because they were prepared for the state of Georgia, as the Court of Appeals ruled, would conflict with Congress’s intent to exempt only works of  the federal government, not state governments, from copyright protection, the petitioner argues.

Additionally, the Copyright Act protects material contributed by the author to “preexisting material,” such as a statute. Nothing in the Copyright Act requires Georgia, as a precondition for obtaining copyright protection, to burden readers by segregating the annotations in a separately published work, rather than printing them alongside the statutory text.

The Eleventh Circuit’s attempt to ground its holding in the Act’s “authorship” requirement did not succeed, the petitioner continues. “Nothing in the Act supports the Eleventh Circuit’s conclusion that the OCGA’s annotations are uncopyrightable because an atextual, three-factor test purportedly suggests that the annotations are ‘sufficiently law-like’ to be attributable to the constructive authorship of the People.” That constructive authorship theme is absent from the Copyright Act, as is the court’s three-part test.

Petitioner also refutes the respondent’s argument that the caselaw on which it relies means that annotations are not copyrighted. “Those decisions, however, support Georgia’s position. Collectively, they hold that judicial opinions are not copyrightable, but annotations added to opinions by a court’s official reporter are copyright eligible—notwithstanding the ‘official’ status of the annotations’ author, or the fact that the annotations are combined with the uncopyrightable opinions in a single publication.” (Emphasis in original.)

The government edicts doctrine does not support denying copyright protection to the annotations under any theoretical or philosophical foundation, the petitioner continues. “[T]he uncertainty regarding the government edicts doctrine’s legal underpinnings militates against expanding it beyond the core principle that the law itself is uncopyrightable,” it argues.

The petitioner also describes the horribles that will ensue from the Eleventh Circuit’s “unprecedented expansion” of the government edicts doctrine. States induce publishers to prepare annotations for the economic benefit of the copyright, and undoing that will make it harder, not easier, for citizens to access useful legal research tools. Furthermore, petitioner warns, expanding the government edicts doctrine beyond its traditional limits would inject substantial uncertainty into copyright law. Uncertainty in any field of law is not good.

The respondent agrees that the general rule is that legal works adopted by or published under the authority of the state cannot be copyrighted. It continues that the criterion of authorship and the authority behind that authorship are correctly identified as integral to the government edicts doctrine.

The term author limits copyright holders to what they produce through personal creativity, not facts or other authorities they compiled. The state’s analysis overlooks the requirement of an author, the respondent says. That concept has been extended to works fixed in a tangible medium of expression under the authority of the author, per the Copyright Act of 1976. The word authorship includes an indication of personality that is recognizably the author’s own, respondent continues.

Supreme Court caselaw shows that the term authorship is critical, respondent continues. In general, the United States appears to correctly understand that these cases are about the meaning of the term author and the ability of a drafter to claim authorship in materials embodying state legal authority, respondent says. (Cite omitted.) Georgia does not.

The Court first held in Wheaton v. Peters, 33 U.S. (8 Pet.) 591, in 1834 that legal works published under state authority are not works of “authorship.” The distinction between works of authorship and other works was whether the work in question represented only the authorship of the private reporter or instead embodied the authority of the state, the respondent suggests.

It reiterated that holding in 1888 in Banks v. Manchester, 128 U.S. 224. In Banks, the Court said that a judge could not be the author of a statement of the case and head note.

The same year, the Court decided Callaghan v. Myers, 128 U.S. 617 (1888), which said that the author requirement excluded from copyright any work conveying judicial authority.

The fourth case the parties discuss is Howell v. Miller, 91 F. 129 (6th Cir. 1898), a Sixth Circuit decision authored by Justice John Marshall Harlan, which again relied on the distinction between the authority of the state and a private author. “[T]he rule this Court should draw from these cases is the precise one advocated by Justice Story and endorsed in Callaghan: Legal materials adopted by or published under the authority of the State are not the proper subject of private copyright,” the respondent concludes.

Respondent continues by arguing that principles of statutory interpretation and the history of the Copyright Act support the conclusion that the OCGA is an edict of government. Principles of statutory interpretation tell us that Congress repeatedly amended the Copyright Act after 1888, and thereby adopted the court’s interpretation.

“In fact, copyright law is replete with doctrines, tests, exemptions, exceptions, and even forms of liability that have arisen entirely from judicial decisionmaking, without any anchor in the text,” respondent continues.

The respondent continues by arguing that the proposed alternative rules produce indefensible results. The “force-of-law” rule proposed by the petitioner contradicts Banks, the respondent asserts. “The problem for Georgia is that it has proposed a rule under which Banks must come out the other way; Banks denied copyright to materials that lacked legal force, and Georgia’s rule would reach the opposite result.”

Continuing, the respondent asserts that the OCGA is a government edict under any reasonable standard. It clearly represents “the law” or a part of the “whole work” of Georgia’s legislative branch. It conveys state authority, calls itself “Official,” displays the state seal, and is invoked by the courts. “The Eleventh Circuit cited nearly a dozen cases where those courts—including Georgia’s  Supreme Court—have attributed conclusive force to OCGA materials that allegedly lack the force of law.”

Finally, the respondent waves away the petitioner’s policy arguments, saying, “This effort to obtain a proprietary interest in the underlying law and the appearance of state authority is squarely against the public interest…If Lexis’s annotations have value as creative expression, let them be copyrighted and sold as such. But there is no reason to let anyone monopolize the special value that inheres in legal works when they are adopted by or published under the authority of the State.”

SIGNIFICANCE

If, when, and how to control the flow of information in the internet age is a question of staggering complexity pitching important legal and social interests against each other.

On one side is the copyright holder, here the state of Georgia, drawing a line between the statutes and the annotations to the statutes. A comprehensive look at the state’s law seems to require access to the annotations, at least in most cases. Georgia argues that it arranges for the information in the annotations and cannot provide that if the publishers, such as LexisNexis, can’t profit from them. The result would be greater costs to the public, it says. The copyright also allows quality control against incorrect information, the state adds.

One the other side is Public.Resource.Org, which insists that the law is for the people, including the indigent, disabled, and incarcerated. As reading between the lines might reveal, this is not the first time Public.Resource.Org has been sued.

A host of amici curiae have weighed in. As many of them argue, the questions raised in this case are not necessarily confined to annotated statutes. “[Q]uestions regarding the government edict’s scope also routinely arise in a variety of other contexts, from the copyrightability of county tax maps, to whether government adopted industry standards or model codes retain copyright protection,” says the state in its petition for certiorari.

Many of the amici express trepidation at the prospect of a ruling that goes beyond the Georgia code. In the D.C. Circuit, Public.Resource.Org has argued that any time any jurisdiction makes reference to a privately developed standard in a statute or regulation, that standard immediately becomes “the law,” and its copyright protection is forfeited, writes the American Society for Testing and Materials, et al. Similarly, the International Code Council, Inc., and American Gas Association say they would be devastated by a broad ruling, as would other standards development organizations.

Amicus Matthew Bender & Co., Inc., argues that the Copyright Act itself is in jeopardy. “Official codes containing annotations would thus fall into the public domain, which would only benefit the public for a short time, until new laws are passed, and new court decisions are published. Any future publications would not receive any copyright protection and therefore would no longer hold value. This result would not serve the public interest in access to knowledge and information but would only serve to ring the death knell for the current annotations system and deprive states of a long-held right and the public of a long provided benefit. The basic policy underpinnings of the Copyright Act would be severely undermined if such a domino effect is permitted to take place,” it argues.

Barbara L. Jones is an attorney and editor of Minnesota Lawyer newspaper. She can be reached at barbarajones14@comcast.net or 651.587.7803.

PREVIEW of United States Supreme Court Cases 47, no. 3 (December 2, 2019): 8–11. © 2019 American Bar Association

ATTORNEYS FOR THE PARTIES

  • For Petitioner Georgia (Joshua Stephen Johnson, 202.639.6500)
  • For Respondent Public.Resource.Org, Inc. (Eric F. Citron, 202.362.0636)

AMICUS BRIEFS

In Support of Petitioner Georgia

  • Arkansas (Nicholas Jacob Bronni, 501.682.6302)
  • Copyright Alliance (Nancy E. Wolff, 212.974.7474)
  • International Code Council, Inc. and American Gas Association (James Hamilton, 202.739.3000)
  • Matthew Bender & Co., Inc. (Misha Tseytlin, 312.759.5947)
  • Software & Information Industry Association (Andrew John Pincus, 202.263.3000)
  • United States (Noel J. Francisco, Solicitor General, 202.514.2217)

In Support of Respondent Public.Resource.Org, Inc.

  • 36 Computational Law Scholars (Michael Alan Livermore, 434.982.6224)
  • 39 Law Students, 24 Solo and Small-Firm Practitioners of Law, and 38 Legal Educators (Jeffrey Theodore Pearlman, 214.684.4533)
  • 116 Law Librarians and 5 Law Library Organizations (Kyle Kenneth Courtney, 617.495.4089)
  • American Civil Liberties Union, et al. (David D. Cole, 212.549.2611)
  • American Intellectual Property Association (Brian D. Wassom, 248.784.5039)
  • American Library Association, et al. (Jennifer Marie Urban, 510.642.7338)
  • Brendan Keefe, in His Official Capacity as Chief Investigative Reporter for 11Alive Atlanta, and WXIA-TV (Paul Robert Koster, 404.727.3957)
  • Caselaw Access Project (Christopher Theodore Bavitz, 617.496.5155)
  • Center for Democracy and Technology and Cato Institute (Marta Francesca Belcher, 650.617.4005)
  • Current and Former Government Officials (Sarang Vijay Damle, 202.637.3332)
  • Electronic Privacy Information Center, et al. (Marc Rotenberg, 202.415.6788)
  • Internet Association (Joseph Charles Gratz, 415.362.6666)
  • Law Professors Nina Mendelson, et al. (Allison M. Zieve, 202.588.1000)
  • Next-Generation Legal Research Platforms and Databases (Phillip Robert Malone, 650.725.6369)
  • Print Disability Advocates (Jessica Paulie Weber, 410.962.1030)
  • Professor Shyamkrishna Balganesh and Professor Peter S. Menell (Peter S. Menell, 510.642.5489)
  • R Street Institute, et al. (Charles Duan, 202.525.5717)
  • Reporters Committee for Freedom of the Press & 25 Media Organizations (Bruce David Brown, 202.795.9300)
  • Tennessee Coalition for Open Government and Human Rights Defense Center (Gautam Singh Hans, 615.343.2213)

In Support of Neither Party

  • American Society for Testing and Materials, et al. (Donald B. Verrilli Jr., 202.220.1100)
  • National Association of Home Builders (Amy Christine Chai, 202.266.8232)