July 7, 2020

Volume X, Number 189

July 07, 2020

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July 06, 2020

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Supreme Court Strikes Down Pay-Per-Law Copyright: Copyright Protection Not Available for Annotations to State Law If Commissioned by Officers With Legislative Authority

The Copyright Act grants protection for “original works of au­thorship fixed in any tangible medium of expression,” and aims to protect a creator’s proprietary interests in his expressive works. 17 U. S. C. §102(a). Traditionally, the Copyright Act provided protection for books, maps, prints, engravings, musical and dramatic compositions, photo­graphs, and works of art. The modern day Act protects works of authorship including website text, pantomimes, sculptural works, motion pictures and other audiovisual works, sound recordings, and architectural works.

Copyright law awards five types of exclusive rights to the owner precluding others from reproducing, distributing, publicly performing, publicly displaying and making derivative works without authorization.

But what happens when a State claims copyright ownership of its own laws? On April 28, the Supreme Court decided a copyright case dealing with the State of Georgia’s claim to copyright ownership for an annotated compilation and publication of the state’s legal code. The case focused on whether the State of Georgia was entitled to copyright ownership of non-binding annotations of the law in the Official Code of Georgia Annotated (OCGA). The Code includes the text of every Georgia statute currently in force, as well as a set of non-binding annotations that appear beneath each statutory provision. The annotations typi­cally include summaries of judicial opinions construing each provision, summaries of pertinent opinions of the state attorney general, and a list of related law review articles and other reference materials.

The OCGA is assembled by the Code Revision Commission, a state entity composed mostly of legislators, funded through legislative branch ap­propriations, and staffed by the Office of Legislative Counsel. The annotations in the current OCGA were produced by Matthew Bender & Co., Inc., a division of the LexisNexis Group, pursuant to a “work-for-hire” agreement with the Commission. Under the agreement, Lexis drafted the annotations under the supervision of the Commission, which specified what the annotations needed to include in exacting detail.

In 2013, Public.Resource.Org (PRO), an organization and website providing access to government records and primary legal sources, purchased, scanned the OCGA, and uploaded it to their site without permission. Subsequently, Georgia sued them for copyright infringement. In the lawsuit, Georgia did not argue that its legal code was subject to copyright laws because under 17 U.S.C. § 105 the government cannot hold copyright on its own laws. Instead, the case focused on copyright ownership of the annotations to the laws.

Normally, the “work-for-hire” doctrine allows an entity who has contracted work to another to create a work to own – and therefore enjoy the exclusive rights of copyright – for the contracted work. Because the annotations were not codified laws, but mere non-binding explanations performed through work contracted as “work-for-hire” to Lexis Nexis, the state claimed copyright ownership.

PRO filed a counterclaim for a declaratory judgment that all of the OCGA, annotations included, belonged in the public domain. The initial District Court ruling sided with the State. The Court acknowledged that the annotations in the OCGA pre­sented “an unusual case because most official codes are not annotated and most annotated codes are not official.”

Nevertheless, the Court determined that the annotations were vested with copyright because they were not “enacted into law” and therefore lacked “the force of law,” and PRO was issued a permanent injunction requiring it to cease its distribution activities, and to remove the digital copies of the OCGA from the internet.

“Because Georgia’s annotations are authored by an arm of the legislature in the course of its legislative duties, the government edicts doctrine puts them outside the reach of copyright protection,” Justice Roberts wrote.

In turn, PRO filed an appeal with the 11th Circuit Court of Appeals that overturned the ruling. In the Court’s view, the rule “derive[s] from first principles about the nature of law in our democracy,” holding that despite the annotations being contracted work, the true author was “the people,” and that “judges and legislators are merely “draftsmen . . . exercising delegated authority.” In a democracy, the Court reasoned, “the People” are “the constructive au­thors” of the law. The Court therefore deemed the “ultimate inquiry” to be whether a work is “attributable to the constructive author­ship of the People,” and deduced that the OCGA should rightfully belong to the public domain. The State of Georgia filed a writ petition for Certiorari.

In Georgia v. Public.Resource.Org, 140 S. Ct. 1498 (2020), the Supreme Court held that the annotations in the OCGA are ineligible for copyright protection. The high court’s 5-4 opinion, split unexpectedly along non-partisan lines, has been a surprise for those watching the court. Chief Justice Roberts was joined by Justices Gorsuch, Kavanaugh, Sotomayor, and Kagan, for the majority opinion; while Justices Ginsburg, Thomas, Alito, and Breyer issued dissents.

Over a century ago, in a trio of cases1 the Court had recognized a limitation on copyright protection for certain government work product, under what has been dubbed the government edicts doctrine. The animating principle behind the government edicts doctrine is that no one can own the law. The Court now clarified that this doctrine is rooted in the Copyright Act’s “authorship” requirement, and officials empowered to speak with the force of law cannot be the authors of—and therefore cannot copyright—the works they create in the course of their official duties.

The doctrine had previously been applied to hold that non-binding, explanatory legal materials are not copyrightable when created by judges who possess the authority to make and interpret the law. See Banks v. Manchester, 128 U. S. 244 (1888). The Court now extrapolated the same logic to non-binding, explanatory legal materials created by a legislative body vested with the authority to make law. The Court held that because Georgia’s annotations were authored by an arm of the legislature in the course of its legislative duties, the government edicts doctrine puts them outside the reach of copyright protection.

The Court held that the OCGA annotations are ineligible for copyright protection and clarified that under the government edicts doctrine, officials empowered to speak with the force of law cannot be the au­thors of the works they create in the course of their official duties.

Authorship vs. Force of Law

Since the early cases more than a century ago, there have been two prevailing approaches to the government edicts doctrine: one based on “force of law”; and the other based on the concept of authorship.

Georgia attempted to frame the government edicts doctrine to focus exclusively on whether a particular work has the force of law. Georgia took the position that the content under consideration – the annotations by Lexis Nexis – did not have the force of law as the said annotations were largely summaries of legal code and interpretations of its application. As such, Georgia contended, the annotations should be eligible for copyright protection.

Writing for the majority, Chief Justice John Roberts expounded that the crux of the issue was the legal authority of the texts’ authors. The opinion held that Georgia’s understanding cannot be squared with precedent—especially Banks. Moreover, the Court noted, Georgia’s conception of the doctrine as distinguishing be­tween different categories of content with different effects has less of a textual footing than the traditional formulation which (as elucidated by the opinion) focuses on the identity of the author. Further, the Court stated that Georgia’s characterization of the OCGA anno­tations as non-binding and non-authoritative undersells the practical significance of the annotations to litigants and citizens. And that such an ap­proach would legally permit States to hide all non-binding judicial and legislative work product—including dissents and legislative history—behind a paywall.

Equal Access to the Law

While Justice Roberts offered a textual basis for the decision, the opinion also took a strong policy position in its analysis.

“If everything short of statutes and opinions were copyrightable, then states would be free to offer a whole range of premium legal works for those who can afford the extra benefit,” the Chief Justice wrote. “With today’s digital tools, states might even launch a subscription or pay-per-law service.” This, in Justice Robert’s view, would create a “first-class” and an “economy-class” division in access to public information that all citizens should have the same fundamental right of access to.

Looking Ahead

This ruling will disrupt the processes in 25 states that have previously held annotations as copyrightable material, a fact noted by Justice Thomas in his dissent. “The majority’s rule will leave in the lurch the many states, private parties, and legal researchers who relied on the previously bright-line rule,” he wrote in his dissent. “Perhaps, to the detriment of all, many states will stop producing annotated codes altogether.” Moreover, Justice Thomas was not convinced that the logic and rule from the century old precedents was as straightforward as made out by the majority, and instead advocated for expounding the policy rationale for the older cases in keeping with the modern day practices to reach a contrary outcome. Justice Thomas and Justice Ginsburg were in agreement in their dissents that unlike for works by the judiciary, the rationale does not automatically extend equally to all works under legislative authority and that copyright should subsist in the annotations in the instant case.

“If everything short of statutes and opinions were copyrightable, then states would be free to offer a whole range of premium legal works for those who can afford the extra benefit … states might even launch a subscription or pay-per-law service.”

While this ruling may require new approaches to the system of publication and dissemination of state authorized annotations in some jurisdictions, it perhaps offers ease of administrability with its simple bright line rule. The ruling is being celebrated by advocates for civil liberties as being in the public’s best interest and in upholding public access to the law.

“Today’s decision is a resounding victory for public access to the law,” writes Meredith Rose, policy counsel at the Washington, D.C.-based non-profit Public Knowledge. “Citizens have a fundamental right to access the law in its entirety; copyright law cannot, and should not, stand in the way.”

[1] Wheaton v. Peters, 8 Pet. 591 (1834); Banks v. Manchester, 128 U. S. 244 (1888); Callaghan v. Myers, 128 U. S. 617 (1888

COPYRIGHT © 2020, STARK & STARKNational Law Review, Volume X, Number 155

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About this Author

Gene Markin Attorney Stark & Stark Law Firm
Shareholder

Gene Markin is a Shareholder in Stark & Stark’s Complex Commercial, Intellectual Property, and Cannabis Litigation Groups where he concentrates his practice on complex litigation matters involving copyright protection and infringement, trademark and trade dress infringement and enforcement, trade secret litigation, false advertising, domain name disputes, unfair competition, class actions, fraud and consumer fraud, shareholder and partner disputes, breach of contract, cannabis business disputes, cannabis intellectual property matters, cannabis insurance coverage...

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