By: Sam Hayes

Copyright protection entails a balance between the interests of authors in having monopolistic protection and economic incentives to encourage the production of works, and the interests of the public in having unrestricted access to certain kinds of information.[i]  On one hand, if the exclusionary rights granted by copyright are too narrow, individuals are discouraged from producing intellectual works because they are limited in reaping the financial or reputational gain from their creation.[ii]  On the other hand, if the exclusionary rights are interpreted too broadly or lengthily, the restriction on free access becomes not only obnoxious, but even downright harmful in certain circumstances. [iii]  The Supreme Court performed a balancing of these interests when it decided Georgia v. Public.Resource.Org, Inc. last year.  Although the Court issued a positive outcome for the public, holding that Official Code of Georgia Annotated was noncopyrightable and the public had free access to its contents, the standard established by the Court gave lawmakers loopholes to get around the decision.[iv]  As a result, the Court will need to expand its umbrella of the government edicts doctrine.

The Copyright Act expressly forbids copyright protection for works of the United States Government.[v]  However, this restriction is only applicable to the federal government and has no impact on the states or local governmental units.[vi]  In an effort to add additional protection for the public, the Supreme Court developed the government edicts doctrine, which provides that there is no copyright protection for any work public officials who are empowered to speak with the force of law create in the course of their official duties.[vii]

Until recently, the exact bounds of the government edicts doctrine were unclear.  The doctrine was born from a trio of cases decided in the 19th century.[viii]  The Supreme Court left the doctrine untouched for nearly 130 years until the Court revisited it this past year. In Georgia v. Public.Resource.Org, Inc., the Court analyzed the copyrightability of the Official Code of Georgia Annotated (O.C.G.A.).[ix]  The Code included the text of every Georgia statute currently in force, as well as various non-binding annotations.[x]  “These annotations generally included summaries of judicial opinions applying a given provision, summaries of any pertinent opinions of the state attorney general, and a list of related law review articles and similar reference materials.”[xi]

The Code was assembled by the Code Revision Commission, a state entity composed mostly of legislators.[xii]  The Commission was funded by the Georgia Legislature, and was staffed by the Office of Legislative Counsel.[xiii]  The Commission entered into a work-for-hire agreement with Matthew Bender & Co., Inc., a division of the LexisNexis Group, to produce the Code annotations.[xiv]  Under the agreement, “Lexis and its army of researchers perform[ed] the lion’s share of the work in drafting the annotations, [and] the Commission supervise[d] that work and specifie[d] what the annotations must include in exacting detail.[xv]  The work-for-hire agreement also stated “that any copyright in the [Code] vest[ed] exclusively in the ‘State of Georgia, acting through the Commission.’”[xvi]

In a 5-4 opinion, the Supreme Court concluded that Code’s annotations were not copyrightable.[xvii]  The Court held that the proper inquiry when applying the government edicts doctrine is authorship.[xviii]  The Court found that because legislators, like judges, have the authority to make law, it follows that they, too, are subject to the government edicts doctrine for works they create in their capacity as legislators, whether those works are binding (such as statutes) or non-binding (supplemental or explanatory).[xix]

Following these conclusions, the Court determined in Georgia v. Public.Resource.Org, Inc. that the sole “author” of the Code annotations was the Commission, which functioned as an arm of the Georgia Legislature in the discharge of its legislative duties when producing the annotations.[xx]  Although the annotations were prepared in the first instance by a private company (Lexis) at considerable expense, this work was done pursuant to a work-for-hire agreement with the Commission as part of the Commission’s official duties.[xxi]  Therefore, the Court held that this placed the annotations in the public domain, and thus not eligible for copyright protection.[xxii]

The Supreme Court must expand its interpretation of the government edicts doctrine to prevent lawmakers from circumventing the authorship standard set forth by the Court in Georgia v. Public.Resource.Org, Inc. Although the decisionwas a clear win for the public, the standard developed by the Court remains too narrow to adequately protect the public interest under the government edicts doctrine.  One interpretation of Georgia v. Public.Resource.Org, Inc., which appears consistent with the majority opinion, is that the legislature cannot claim copyright in [works], but that a private party who drafted them (assuming it was not done on a work-made-for-hire basis) could, because the works were not “produced” by a lawmaker (judge or legislator).[xxiii]  Specifically, the Court acknowledged that “[r]ather than attempting to catalog the materials that constitute ‘the law,’ the [government edicts] doctrine bars the officials responsible for creating the law from being considered the ‘author[s]’ of ‘whatever work they perform in their capacity’ as lawmakers.”[xxiv]  Thus, the Court emphasized that the “doctrine does not apply to non-lawmaking officials, leaving States free to assert copyright in the vast majority of expressive works they produce, such as those created by their universities, libraries, tourism offices, and so on.”[xxv]

It remains unclear how the Court’s newly detailed government edicts doctrine would apply in situations where works are created by private parties, and then acquired and incorporated by lawmaking officials in their own works.[xxvi]  Since “the Supreme Court’s holding [in Georgia v. Public.Resource.Org, Inc.] applies only to annotated codes ‘authored’ by state legislators, ‘there might be a way around this’ …. [A] state could instead contract out for a ‘preferred vendor’ to create the annotations, with the requirement that the copyright be assigned to the state with a license back tied to a lower price” or various parties could try to ‘tinker’ with the current relationships the states have with private publishers so annotations and commentaries might become owned by the publishers and licensed to the states.”[xxvii]  As a result, States might be free to manipulate the arrangements they have with private parties to circumvent the government edicts doctrine and prevent unfettered public access.  Lower courts have been wrestling with how to handle the issue of lawmakers incorporating or referencing privately drafted works under the government edicts doctrine, and the Southern District of New York encountered this precise issue not long after the Court’s decision in Georgia v. Public.Resource.Org, Inc.[xxviii]

These lower court decisions help illustrate how the Supreme Court should protect the public in these kinds of situations.  One possible solution would be to establish a bright-line rule holding that legislators are the authors of works they enact in the public domain, regardless of who drafted the language initially.[xxix]  For example, in Veeck v Southern Bldg. Code Congress Intern., Inc., the Fifth Circuit encountered a situation where a private party drafted a model building code, which was subsequently adopted without change by two local townships.[xxx]  The majority there reasoned that once the model code was enacted, it became a “fact” that could not be protected under the merger doctrine of copyright.[xxxi]  The Supreme Court does not necessarily need to adopt the same merger justification that the Fifth Circuit employed in Veeck – the Court could take a separate path, but come to the same conclusion that lawmaking officials should be treated as the authors of works drafted by private parties when those lawmaking officials incorporate or reference them, regardless of whether those works are binding or non-binding.

Alternatively, the Supreme Court could abandon an all-or-nothing approach in favor of the more flexible approach taken by the Southern District of New York in Int’l Code Council, Inc. v. UpCodes, Inc.  There, the court rejected a bright-line rule and declined to hold that if a law references a privately authored, copyrighted work, that the public has an automatic right to free access to it.[xxxii]  Instead, the district court found that free public access depends “upon substantial government adoption in limited circumstances, based on considerations including: (1) whether the private author intended or encouraged the work’s adoption into law; (2) whether the work comprehensively governs public conduct, such that it resembles a ‘law of general applicability’; (3) whether the work expressly regulates a broad area of private endeavor; (4) whether the work provides penalties or sanctions for violation of its contents;  and (5) whether the alleged infringer has published and identified the work as part of the law, rather than the copyrighted material underlying the law.”[xxxiii]  This framework would then allow courts to look at the totality of the circumstances and ultimately balance whether the public should be entitled to free access to the work, or whether the state’s reference to a copyrighted work is not enough to result in the loss of the copyright protection.

How the Supreme Court will resolve these unanswered issues is unknown.  What is certain, however, is that the holding of Georgia v. Public.Resource.Org, Inc. is only a step in the right direction.  The government edicts doctrine is built “on broader democratic ideals of an informed populace and due process requiring that people have access to the laws that govern them.”[xxxiv]  Works created by officials in their lawmaking capacity is the precise type of information the public must have free access to for our legal system to function equitably and derives from the nature of law in our democracy.

[i] 1 Howard B. Abrams & Tyler T. Ochoa, The Law of Copyright § 1:3 (2020).

[ii] 1 Howard B. Abrams & Tyler T. Ochoa, The Law of Copyright § 1:4 (2020).

[iii] Id.

[iv] Georgia v. Public.Resource.Org, Inc., 140 S. Ct. 1498 (2020).

[v] 17 U.S.C. § 105(a) (2018).

[vi] 1 Howard B. Abrams & Tyler T. Ochoa, The Law of Copyright § 2:49 (2020).

[vii] Public.Resource.Org, 140 S. Ct. at 1504.

[viii] See Wheaton v. Peters, 33 U.S. 591, 593 (1834) (holding that no law reporter can have a copyright in the Court’s opinions and that Justices cannot confer such a right on any reporter); Banks v. Manchester, 128 U.S. 244, 253 (1888) (holding that judges could not assert copyright in the works they perform in their capacity as judges, including the opinion, the decision, the statement of the case, the syllabus, or the head notes); and Callaghan v. Meyers, 128 U.S. 617, 647 (1888) (holding that an official reporter cannot hold a copyright interest in opinions or non-binding, explanatory materials created by judges, but holding that a law reporter could have a copyright interest in several explanatory materials that the reporter had created himself).

[ix] Public.Resource.Org, 140 S. Ct. at 1498.

[x] Id. at 1504

[xi] Id.

[xii] Id.

[xiii] Id. at 1504.

[xiv] Id. at 1505.

[xv] Id.

[xvi] Id.

[xvii] Id. at 1506.

[xviii] Id. at 1507.

[xix] Id. at 1507-1508.

[xx] Id. at 1508-1509.

[xxi] Id.

[xxii] Id.

[xxiii] 1 Howard B. Abrams & Tyler T. Ochoa, The Law of Copyright § 2:54 (2020).

[xxiv] Public.Resource.Org, 140 S. Ct. at 1507.

[xxv] Id. at 1510.

[xxvi] Abrams & Ochoa, supra note xxiii.

[xxvii] Patrick H.J. Hughes, Attorney’s React to High Court’s Copyright Ban for Annotated State Laws, 27(2) Westlaw J. Intell. Prop. 1, 15 (2020).

[xxviii] Int’l Code Council, Inc. v. UpCodes, Inc., No. 17 CIV. 6261 (VM), 2020 WL 2750636, (S.D.N.Y. May 27, 2020).

[xxix] Abrams & Ochoa, supra note xxiii.

[xxx] Veeck v. Southern Bldg. Code Congress Intern., Inc., 293 F.3d 791 (5th Cir. 2002).

[xxxi] Id. at 802; see also Bldg. Officials & Code Adm. v. Code Tech., Inc., 628 F.2d 730, 734 (1st Cir. 1980) (holding that “citizens are the authors of the law, and therefore its owners, regardless of who actually drafts the provisions, because the law derives its authority from the consent of the public, expressed through the democratic process”).

[xxxii] Int’l Code Council, Inc. v. UpCodes, Inc., No. 17 CIV. 6261 (VM), 2020 WL 2750636, at *14 (S.D.N.Y. May 27, 2020).

[xxxiii] Id.

[xxxiv] Elizabeth Scheibel, No Copyright in the Law: A Basic Principle, Yet A Continuing Battle, 7 Cybaris An Intell. Prop. L. Rev. 350, 375 (2016).

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