By Holly Banta
The cost of legal texts and online access to them is significant for any law practice. The primary reason for that cost is the ability of the text owners to prohibit unlicensed copying of those works through copyright enforcement. It is one thing when the owner is a private entity, but how do you feel about this prohibition when the owner is a state government?
Public.Resource.Org Inc. (Public Resource), a nonprofit advocacy group focused on providing public access to various legal materials free of charge, believes the Official Code of Georgia Annotated (Georgia Code) was authored by the people of Georgia and, therefore, should be free for all to copy, publish, etc. In 2013, Public Resource acted on this belief by purchasing a complete print copy of the Georgia Code (186 volumes with supplements), scanning the material, uploading it to Public Resource’s website and sending the Georgia Code to other organizations, including other websites and various Georgia state legislators.
The state of Georgia and its exclusive licensee for the Georgia Code, Matthew Bender & Co., were not amused.
The state of Georgia demanded multiple times that Public Resource stop disseminating the Georgia Code and remove the materials from its website. Public Resource refused to stop, responding to the state of Georgia with assertions that the materials were public, Public Resource’s use was fair and the state of Georgia’s copyright in the Georgia Code was invalid. The state of Georgia sued Public Resource in 2015 to enjoin Public Resource’s copying and publication of the Georgia Code, and Public Resource counterclaimed for a declaratory judgment of invalidity of the state of Georgia’s copyright in the Georgia Code. The state of Georgia was successful at the district court level, and Public Resource was successful on appeal to the 11th Circuit, thereby setting up the present petition to the US Supreme Court by creating a split between the 5th and 11th circuits, which have found materials bearing a state’s imprimatur not copyrightable, and the 2nd, 6th and 9th circuits, which have found otherwise.
The government edicts doctrine (180-plus years old and of murky origins) holds that certain governmental works are considered to be authored by “the People,” thereby rendering them public works not eligible for copyright protection. The US Supreme Court last addressed this doctrine in three cases in the 19th century. In the first case, Wheaton v. Peters, 33 U.S. 591 (1834), an enthusiastic individual hired by the Supreme Court to publish the Supreme Court’s decisions in an official reporter decided, on his own, to add his own thoughts about the opinions to the reporter. That individual later lost the publishing contract with the Supreme Court and sued his successor when the successor included the annotations in reprints of the predecessor reporters. The Supreme Court noted the opinions themselves were not copyrightable but did not explain specifically why. In a later case, Banks v. Manchester, 128 U.S. 244 (1888), the Supreme Court held that the opinions of state court judges, just like Supreme Court opinions, were not copyrightable; and in another case decided that same year, Callaghan v. Myers, 128 U.S. 617 (1888), the Supreme Court held that copyright could exist in the Illinois Reports (a reporter for the Supreme Court of Illinois) to the extent that the Reports contained more than just the opinions of the Supreme Court of Illinois.
Public Resource argues the Georgia Code was authored entirely by the people of Georgia because the state of Georgia has a contract with a subsidiary of LexisNexis to prepare annotations to the statutes of Georgia, which annotations are ultimately commissioned and their content controlled by the Code Revision Commission, a legislative body created by the Georgia General Assembly. The annotations include such materials as judicial opinions and attorney general opinions that interpret the statutes.
The state of Georgia admits the Code Revision Commission controls the entire content of the Georgia Code, but it denies the annotations have the “force of law.” This assertion relates to the policy of the US Copyright Office that copyright protection is available for “annotations that summarize or comment upon legal materials issued by a federal, state, local or foreign government, unless the annotations themselves have the force of law.” US Copyright Office, Compendium of U.S. Copyright Office Practices § 313.6(C)(2) (3d ed. 2017), https://www.copyright.gov/comp3. The state of Georgia urges deference to the US Copyright Office’s policy and to the fact that about a third of US states currently hold registered copyrights in their official code publications, which copyrights permit the states to generate income from the annotated codes, thereby incentivizing the production of such annotations in the first place.
Why does it matter whether the Georgia Code is public in its entirety, you may ask? According to the 11th Circuit, “While the annotations do not carry the force of law in the way that statutes or judicial opinions do, they are expressly given legal significance so that, while not ‘law,’ the annotations undeniably are authoritative sources on the meaning of Georgia statutes.” Public Resource and its amici want to publish these materials so everyone, not just those with a LexisNexis subscription, can have access to a valuable research tool.
At oral argument, the opinions of the justices were mixed. Justice Brett Kavanaugh indicated concern about ruling that the Georgia Code is a government edict: “[T]his is going to create problems in terms of incentives for creating these annotations in the first place.” Justice Neil Gorsuch was concerned about the legislative endorsement: “I thought they were at least approved as a whole by the Legislature. So, if that’s the case… [w]hy would we allow the official law enacted by a Legislature … to be hidden behind a paywall?” Justices Stephen Breyer, Elena Kagan and Ruth Bader Ginsburg appeared unimpressed with the argument that the annotations prepared under the auspices of the Georgia Code Revision Commission should be treated any differently than annotations prepared by a publisher alone, since neither group of annotations is the law.
The Supreme Court will provide a modern view of what constitutes a government edict next year. In the meantime, we will all keep paying for that legal research subscription.•
• Holly Banta is a partner in Ice Miller’s Intellectual Property Group. She is a registered patent attorney and concentrates her practice in the areas of intellectual property litigation, dispute negotiations, US and foreign trademark prosecution and intellectual property licensing. Opinions expressed are those of the author.