Can a government own a copyright?
Joshua Heard
copyright would be ultimately owned by the public, which would contradict
the purpose for the copyright. Can a government agency own a copyright?
http://www.wired.com/news/mac/0,2125,68967,00.html?tw=wn_tophead_2
kuac...@yahoo.com
likely law -- but I'm too slothful to look it up -- forbid it from so
doing within the USA. It does sometimes claim copyright abroad.
Subordinate governments of the US (states, counties, cities) can and do
claim copyright, even on public documents (such as the official New
York State court reports. In general, such claims (at least with
respect to legal documents, statutes, case reports, etc.) are not
enforced for the purpose of profit, but to protect against
falsification. That is the argument, too, of the UK Government with
respect to Crown Copyright. Thus:
http://www.opsi.gov.uk/about/team-information/information-policy.htm
Things may be changing, at least as far as state and local governments
are concerned, now that they're all broke and some of them are
bankrupt. Anyway, an agency or a government-owned business that charges
for services probably can't be stopped from claiming copyright. On
other hand, by the simple expedient of using an IP and host company in
the Turkish Republic of Northern Cyprus or even China or Russia with
mirrors elsewhere, enforcement would be impossible. Think: Spycatcher
case.
Lots of stuff is uploaded to newsgroups for no obvious reason, the
motivation being to frustrate copyright lawyers and enforcers. Think:
Church of Scientology.
The MTA is blowing smoke, except insofar as the "infringer" is seeking
to profit from distributing the maps and is located in the USA. Think:
Jurisline case (Google: <jurisline llrx>)
Lee Hollaar
>It seems to me, the public is the beneficiary of the government, so a
>copyright would be ultimately owned by the public, which would contradict
>the purpose for the copyright. Can a government agency own a copyright?
Yes. The applicable statutory provision in the United States is
17 USC 105, which states:
Copyright protection under this title is not available for any
work of the United States Government, but the United States
Government is not precluded from receiving and holding copyrights
transferred to it by assignment, bequest, or otherwise.
17 USC 101 says:
A "work of the United States Government" is a work prepared by an
officer or employee of the United States Government as part of that
person's official duties.
While the statute only pertains to the United States government, not the
states, there have been court decisions that have said that things like
laws and court decisions and building codes. See, for example, Veeck v.
Southern Building Code Congress International, 293 F.3d 791, 63 USPQ2d
1225 (5th Cir., 2002).
nos...@isp.com
> http://www.wired.com/news/mac/0,2125,68967,00.html?tw=wn_tophead_2
> [ is a link to an article re. state governmental transportation ageencies'
> assertion of copyright to maps they publish ]
>
> It seems to me, the public is the beneficiary of the government,
> so a copyright would be ultimately owned by the public, which would
> contradict the purpose for the copyright.
If you attended law school or the equivalent, presumably you learned
that "owned" is an itself comparatively open-ended term having
different epidemiological and law-related/functional meanings/effects
in different contexts. Remember that "bundle of rights" analogy? But
adding the adverb "ultimately" renders that already flexible term
largely meaningless. (If you believe in the basic correctness of the
Second Law of Thermodynamics, "ultimately" there will not be any
governments or people.) In any event, the statement above begs the
question: What is "the purpose" for whatever is "the copyright" to
which you refer?
> Can a government agency own a copyright?
Yes - but so stating (standing alone) does not answer the question you
seem to be trying to raise above among other things because (and even
if one were to hypothesize as you do that what is owned by a
governmental agency is "ultimately owned by the public") so stating
does not answer the related questions, on the one hand, whether
individual members of the public may freely reproduce/republish such
material or, on the other hand, which governmental officer has
standing to sue for infringement.
As it happens . . . (big surprise?) . . .different states add dress
these issues in ways in different contexts. See, e.g., N.Y. Judiciary
Law § 438 dealing with (state owned) copyright-protected editorial
material added by state representatives to factual statements,
headnotes, and related references in that state's courts' decisions
which are required by other provisions of that law to be published and
which (apparently implementing what you appear to be trying to get at
above) directs that that state's copyright therein "shall be vested in
the secretary of state for the benefit of the people of the state" and
that that officer ("under such terms and conditions as he and the
chief judge of the state . . . determine to be for the best interest
of the state") may (actually, in effect: shall) license appropriate
publishers the rights to reproduce and distribute such material (which
has occurred).
Timothy
own copies of New York City and San Francisco subway maps. The transit
systems in question are government-owned corporations rather than
government agencies, and as such they have the same rights as any other
corporation. This would include the right to copyright their subway
maps.
kuac...@yahoo.com
where a copyrighted work is recited in a parliamentary session and then
copies of the Congressional Record or Hansard, etc. are distributed ...
free of copyright.
As for USG asserting copyright abroad, see:
http://www.ngdc.noaa.gov/ngdcinfo/privacy.html
"INTERNATIONAL COPYRIGHT, U.S. & FOREIGN COMMERCIAL SERVICE AND U.S.
DEPARTMENT OF STATE, 2001. ALL RIGHTS RESERVED OUTSIDE OF THE UNITED
STATES."
See also:
http://www.ngdc.noaa.gov/ngdcinfo/privacy.html
which explains why all Westlaw materials include the notice that no
claim to copyright is made to USG materials.
AMERICAN SOCIETY OF CIVIL ENGINNERS, INTERNATIONAL ASSOCIATION OF
PLUMBING AND MECHANICAL OFFICIALS, NSF INTERNATIONAL, Amicus Curiae:
Michael Lowenberg, Patrick F McGowan, Scott T Williams, Akin, Gump,
Strauss, Hauer & Feld, Dallas, TX. Maureen B Brodoff, Quincy, MA.
JUDGES: Before KING, Chief Judge, JOLLY, HIGGINBOTHAM, DAVIS, JONES,
SMITH, WIENER, BARKSDALE, EMILIO M. GARZA, BENAVIDES, STEWART, PARKER,
DENNIS and CLEMENT, Circuit Judges. PATRICK E. HIGGINBOTHAM, Circuit
Judge, joined by KING, Chief Judge, DAVIS and STEWART, Circuit Judges,
dissenting. WIENER, Circuit Judge, joined by KING, Chief Judge, and
HIGGINBOTHAM, DAVIS, STEWART, and DENNIS, Circuit Judges, dissenting.
OPINIONBY: EDITH H. JONES
OPINION: EDITH H. JONES, Circuit Judge:
The issue in this en banc case is the extent to which a private
organization may assert copyright protection for its model codes, after
the models have been adopted by a legislative body and become "the
law". Specifically, may a code-writing organization prevent a website
operator from posting the text of a model code where the code is
identified simply as the building code of a city that enacted the model
code as law? Our short answer is that as law, the model codes enter the
public domain and are not subject to the copyright holder's exclusive
prerogatives. As model codes, however, the organization's works retain
their protected [*2] status.
BACKGROUND n1
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n1 The facts stated here are undisputed.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Peter Veeck individually operates "Regional Web"
(<http://regionalweb.texoma.net>), a non-commercial website that
provides information about north Texas. Sometime in 1997, Veeck decided
to post on Regional Web the local building codes of Anna and Savoy, two
small towns in north Texas that had adopted the 1994 edition of the
Standard Building Code written by appellee, Southern Building Code
Congress International, Inc. ("SBCCI"). Veeck made a few attempts to
inspect several towns' copies of the Building Code, but he was not able
to locate them easily. Eventually, Veeck purchased the 1994 model
building codes directly from SBCCI; he paid $ 72.00 and received a copy
of the codes on disk. Although the software licensing agreement and
copyright notice indicated that the codes could not be copied and
distributed, Veeck cut and pasted their text onto his Regional Web.
Veeck's website did not specify that the codes were written by SBCCI.
Instead, he [*3] identified them, correctly, as the building codes of
Anna and Savoy, Texas.
The author of the codes, SBCCI, is a non-profit organization consisting
of approximately 14,500 members from government bodies, the
construction industry, business and trade associations, students, and
colleges and universities. Since 1940, SBCCI's primary mission has been
to develop, promote, and promulgate model building codes, such as the
Standard Plumbing Code, the Standard Gas Code, the Standard Fire
Prevention Code, and the Standard Mechanical Code. SBCCI encourages
local government entities to enact its codes into law by reference,
without cost to the governmental entity. No licensing agreements are
executed in connection with legislative adoption, nor does SBCCI keep
track of the entities that have adopted its codes. Although SBCCI is a
non-profit organization, its annual budget, exceeding $ 9 million,
derives in part from sales of its model codes and is used to fund
continuing activities. There are no restrictions or requirements on
membership in SBCCI, but non-members are charged considerably more for
copies of its codes than are members.
While SBCCI continues to assert its copyright prerogatives [*4] --
exclusively to publish the codes and license their reproduction and
distribution -- even as to codes that have been adopted by local
entities, the organization insists that it grants liberal permission
for copying. To support this contention, SBCCI offered in evidence
several dozen letters of permission written to entities as diverse as
book publishers, seminar providers, and municipal inspection agencies.
Notably, each permit letter carefully circumscribed the amount of
copying allowed.
SBCCI's generosity did not extend to Veeck's public-service posting of
the Anna and Savoy building codes on his website. The organization
demanded that he cease and desist from infringing its copyrights. Veeck
filed a declaratory judgment action seeking a ruling that he did not
violate the Copyright Act. SBCCI counterclaimed for copyright
infringement, unfair competition and breach of contract. Both parties
moved for summary judgment on the copyright infringement issue.
Finding no genuinely disputed material facts, the district court
granted summary judgment in favor of SBCCI, including a permanent
injunction and monetary damages. On appeal, a divided panel of this
court upheld SBCCI's copyrights [*5] in the municipal building codes
posted by Veeck, and it rejected his defenses to infringement based on
due process, merger, fair use, copyright misuse and waiver.
We elected to rehear this case en banc because of the novelty and
importance of the issues it presents.
DISCUSSION n2
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n2 We review the district court's grant of summary judgment de novo.
Morris v. Covan World Wide Moving, Inc., 144 F.3d 377, 380 (5th Cir.
1998); Fed. R. Civ. P. 56(c). At the summary judgment stage, a court
may not weigh the evidence or evaluate the credibility of witnesses,
and all justifiable inferences will be made in the nonmoving party's
favor. Id. (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255,
106 S. Ct. 2505, 2513-14, 91 L. Ed. 2d 202 (1986)). The district court
drew some inferences from the facts, however, regarding the impact of
copyrightability on SBCCI's operations that, if material, should not
have been decided without a trial. We find it unnecessary to reach
those issues.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*6]
As the organizational author of original works, SBCCI indisputably
holds a copyright in its model building codes. See 17 U.S.C. § 102(a).
Copyright law permits an author exclusively to make or condone
derivative works and to regulate the copying and distribution of both
the original and derivative works. 17 U.S.C. § 106. The question
before us is whether Peter Veeck infringed SBCCI's copyright on its
model codes when he posted them only as what they became -- building
codes of Anna and Savoy, Texas -- on his regional website. Put
otherwise, does SBCCI retain the right wholly to exclude others from
copying the model codes after and only to the extent to which they are
adopted as "the law" of various jurisdictions?
The answer to this narrow issue seems compelled by three sources: the
Supreme Court's holding that "the law" is not copyrightable;
alternatively, the Copyright Act's exclusion from its scope of "ideas"
or "facts"; and the balance of caselaw.
I. The Supreme Court's View
Excluding "the law" from the purview of the copyright statutes dates
back to this nation's earliest period. In 1834, the Supreme Court
interpreted the [*7] first federal copyright laws and unanimously
held that "no reporter has or can have any copyright in the written
opinions delivered by this Court. . ." Wheaton v. Peters, 33 U.S. (8
Pet.) 591, 668, 8 L. Ed. 1055 (1834). The case arose when one of the
Court's official reporters was asserting copyright protection for his
annotated compilations of Supreme Court opinions. The Court
distinguished between the reporter's individual work and the Justices'
opinions. The Court's rejection of copyright for judicial opinions
paralleled the principle -- recognized by attorneys for both parties --
that "statutes were never copyrighted." n3 Based on the acknowledged
and incontestable analogy with legislative acts, Wheaton held
unanimously that "the law" in the form of judicial opinions may not be
copyrighted.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
N3 See Precis of Argument by Counsel for Wheaton [pet'r], 33 U.S. (8
Pet.) at 615. Wheaton acknowledged, even while arguing that judicial
opinions could be copyrighted, that "it would be absurd, for a
legislature to claim the copyright; and no one else can do it, for they
are the authors, and cause them to be published without copyright. . .
. Statutes were never copyrighted." Id. Further, "it is the bounden
duty of government to promulgate its statutes in print . . ." 33 U.S.
591, 616, 8 L. Ed. 1055.
Counsel for Peters, the respondent, emphasized the governing policy
that "all countries . . . subject to the sovereignty of the laws" hold
the promulgation of the laws, from whatever source, "as essential as
their existence." 33 U.S. 591, 618-19, 8 L. Ed. 1055. Peters's brief
continues:
It is, therefore, the true policy, influenced by the essential
spirit of the government, that laws of every description should be
universally diffused. To fetter or restrain their dissemination, must
be to counteract this policy; to limit, or even to regulate it, would,
in fact, produce the same effect.
. . .
If either statutes or decisions could be made private property, it
would be in the power of an individual to shut out the light by which
we guide our actions.
33 U.S. 591, 620, 8 L. Ed. 1055.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*8]
The same broad understanding of what constitutes "the law" for
copyright purposes underlies the Court's later decision in Banks v.
Manchester, 128 U.S. 244, 9 S. Ct. 36, 32 L. Ed. 425 (1888). The Court
there denied a copyright to a court reporter in his printing of the
opinions of the Ohio Supreme Court. The Court first noted that whatever
work the judges perform in their official capacity cannot be regarded
as authorship under the copyright law. As a question of "public
policy," the Court stated that,
there has always been a judicial consensus, from the time of the
decision in the case of Wheaton v. Peters, 8 Pet. 591, that no
copyright could, under the statutes passed by Congress, be secured in
the products of the labor done by judicial officers in the discharge of
their judicial duties. The whole work done by the judges constitutes
the authentic exposition and interpretation of the law, which, binding
every citizen, is free for publication to all, whether it is a
declaration of unwritten law, or an interpretation of a constitution or
statute.
Banks, 128 U.S. at 253, 9 S. Ct. at 40. (emphasis added). At this [*9]
point, Banks relied upon a decision of the Massachusetts Supreme
Judicial Court, which stated,
It needs no argument to show that justice requires that all should
have free access to the opinions, and that it is against sound public
policy to prevent this, or to suppress and keep from the earliest
knowledge of the public the statutes, or the decisions and opinions of
the Justices.
Nash v. Lathrop, 142 Mass. 29, 6 N.E. 559 (1886). The court in Nash
further observed that a legislature likewise could not deny public
access to statutes.
Banks represents a continuous understanding that "the law," whether
articulated in judicial opinions or legislative acts or ordinances, is
in the public domain and thus not amenable to copyright. n4 Modern
decisions have followed suit. n5 Significantly, the 1976 Copyright Act
specifically denies protection to federal statutes and regulations. 17
U.S.C. § 105. Given the state law foundation of Banks and its progeny,
there is no reason to believe that state or local laws are
copyrightable. See generally L. Ray Patterson & Craig Joyce,
Monopolizing the Law: The Scope of Copyright [*10] Protection for Law
Reports and Statutory Compilations, 36 U.C.L.A. L. REV. 719, 751-58
(1989); 1 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT §
5.06 [c] at 5-92 (2000) ("state statutes, no less than federal
statutes, are regarded as being in the public domain"); 1 PATRY,
COPYRIGHT LAW AND PRACTICE 351, 357 (1994).
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n4 In Davidson v. Wheelock, for example, the court stated that a
compiler of state statutes "could obtain no copyright for the
publication of the laws only; neither could the legislature confer any
such exclusive privilege upon him." Davidson v. Wheelock, 27 F. 61, 62
(D.Minn. 1886). More famously, Justice Harlan, riding circuit, denied
an injunction sought for the compiler of Michigan statutes, holding
that "no one can obtain the exclusive right to publish the laws of the
state in a book prepared by him." Howell v. Miller, 91 F. 129, 137 (6th
Cir. 1898).
n5 Harrison Co. v. Code Revision Commission, 244 Ga. 325, 260 S.E.2d
30, 34 (Ga. 1979); State of Ga. v. The Harrison Co., 548 F. Supp. 110,
114-15 (N.D. Ga. 1982), vacated per stipulation, 559 F. Supp. 37 (N.D.
Ga. 1983).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*11]
As governing law, pursuant to Banks, the building codes of Anna and
Savoy, Texas cannot be copyrighted.
SBCCI and its numerous amici n6 must limit or circumvent the Banks line
of cases in order to prevail. Initially, SBCCI divides Banks into two
holdings and concludes that either holding must be squared with the
policies and purposes of copyright law. This not insubstantial mode of
analysis must be carefully reviewed.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n6 The amici supporting SBCCI's position include Building Officials and
Code Administrators International (BOCA), International Code Council,
International Conference of Building Officials, American Medical
Association, American National Standards Institute (ANSI), American
Society of Association Executives (ASAE), American Society of Heating,
Refrigerating and Air-Conditioning Engineers (ASHRAE), American Society
of Mechanical Engineers (ASME), National Fire Protection Association
(NFPA), Texas Municipal League, and Underwriters Laboratories, Inc.
(UL).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
The first holding of Banks [*12] is said to deny copyright to
judicial opinions because judges, whose salaries are paid by the
government, cannot claim to be "authors" of their official works. SBCCI
contends that this discussion shows only that judges have no need of
the Copyright Act's economic incentives in order to author judicial
opinions. Banks, it is implied, articulates a utilitarian rationale for
denying copyright protection to judicial opinions. SBCCI contrasts
government employees with the private "authors" of model codes who
allegedly depend on copyright incentives in order to perform their
public service. SBCCI concludes that this "prong" of Banks does not
apply to private code-writing organizations whose work has been adopted
or incorporated into statutes, ordinances, or government regulations.
Two courts, in addition to the panel that originally heard this case,
have identified the consideration of authorship incentives as a
"holding" of Banks. See Practice Management Info. Corp. v. American
Medical Ass'n, 121 F.3d 516, 518 (9th Cir. 1997), opinion amended by
133 F.3d 1140 (9th Cir. 1998); n7 County of Suffolk v. First American
Real Estate Solutions, 261 F.3d 179, 194 (2d Cir. 2001). [*13]
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n7 Practice Management declares, "The copyright system's goal of
promoting the arts and sciences by granting temporary monopolies to
copyrightholders was not at stake in Banks because judges' salaries
provided adequate incentive to write opinions." Id.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
The second "holding" of Banks, which requires "the law" or its
exposition to be "free for publication to all," is recharacterized by
SBCCI as a "due process" argument. That argument devolves into a
factual question concerning public "access" to the law. Because SBCCI
contends that there is no dispute about the adequacy of public "access"
to its model codes, after their enactment as the building codes of Anna
and Savoy, Banks is inapplicable.
The "dual holding" analysis seems to foist on Banks a rationale that
the Supreme Court never explicitly articulated. Banks, however, does
not bifurcate its holding based on the particular authors' need of the
Copyright Act's incentives or a factual calculus concerning the
"adequacy" of public access [*14] to the law. Instead, Banks declares
at the outset of its discussion that copyright law in the United States
is purely a matter of statutory construction. See Banks, 128 U.S. at
251, 9 S. Ct. at 39. In the next paragraph, the Court points out that
the court reporter was not the statutory "author" of the judicial
decisions. Then, the Court states that
In no proper sense can the judge who, in his judicial capacity,
prepares the opinion or decision, the statement of the case, and the
syllabus, or head-note, be regarded as their author or their
proprietor, in the sense of [the copyright statute] . . .
Judges, as is well understood, receive from the public treasury a
stated annual salary, fixed by law, and can themselves have no
pecuniary interest or proprietorship, as against the public at large,
in the fruits of their judicial labors.
128 U.S. at 253, 9 S. Ct. at 40. The Court then broadly defines the
judges' official work and states that as a matter of public policy and
judicial consensus, "no copyright could, under the statutes passed by
Congress, be secured in the products of the labor done by judicial
officers in the discharge [*15] of their official duties." This
paragraph of Banks climaxes with the explanation:
The whole work done by the judges constitutes the authentic
exposition and interpretation of the law, which, binding every citizen,
is free for publication to all, whether it is a declaration of
unwritten law, or an interpretation of a constitution or statute. Id.
at 253-54 [citing Nash v. Lathrop].
There is simply no independent holding in Banks that judges are not
"authors" under the copyright law because, as public officials, they do
not need the "incentives" that copyright law affords in order to write
opinions. Instead, Banks refers to the source of the judges' salary in
order to explain that it is the public at large, not the judges, who
have the "pecuniary interest or proprietorship" in "the fruits of their
judicial labors." The whole of those judicial labors, as Banks
immediately defines them, "constitutes the authentic exposition and
interpretation of the law," which is "free for publication to all . .
." Id. n8
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n8 If there were an independent holding in Banks relying on the fact
that judges are paid by the public, it was rejected by the Court itself
one month later, when the Court ruled that a court reporter,
notwithstanding that he was a state employee, could assert copyright in
all of his compilation of judicial opinions except the opinions
themselves. Callaghan v. Myers, 128 U.S. 617, 9 S. Ct. 177, 32 L. Ed.
547, 1889 Dec. Comm'r Pat. 304 (1888).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*16]
Moreover, when viewed in light of Wheaton, the last case relied on by
Banks's analysis, the argument for bifurcation is seriously weakened.
Wheaton's holding, as has been shown, derives from an analogy between
judicial opinions and legislative acts as together constituting "the
law," which is not subject to copyright.
The origin of the bifurcated holding interpretation of Banks seems to
lie in the First Circuit's thoughtful opinion in Building Officials and
Code Adm. v. Code Technology, Inc., 628 F.2d 730 (1st Cir. 1980), but
the First Circuit does not endorse bifurcation. In this opinion, which
will be discussed further infra, the First Circuit considered the
argument of BOCA, the model code writer, urging copyright protection
for a model building code similar in origin and purpose to the one
before us. BOCA's argument, the court said, "implies that the rule of
Wheaton v. Peters was based on the public's property interest in work
produced by legislators and judges, who are, of course, government
employees." BOCA, 628 F.2d at 734.
While acknowledging that this interpretation is "not without
foundation," the First Circuit cautioned: [*17] "But BOCA's argument
overlooks another aspect of the ownership theory discussed in these
cases." Id. BOCA then identifies the real premises of Banks and related
cases: the "metaphorical concept of citizen authorship" of the law,
together with "the very important and practical policy that citizens
must have free access to the laws which govern them." Id. BOCA cited
the authorship rationale for Banks only to find it unsatisfactory. In
our view, BOCA was correct.
Only by bifurcating Banks can SBCCI achieve its purpose of claiming
authorship of "the law" and proprietary rights in its codes that have
been enacted into law. However, the acceptance of SBCCI's and the
dissent's theory, that non-governmental employees who draft model
statutes or regulations may be entitled to copyright protection, raises
troubling issues. The complexities of modern life and the breadth of
problems addressed by government entities necessitate continuous
participation by private experts and interest groups in all aspects of
statutory and regulatory lawmaking. According to SBCCI, a utilitarian
test should be invoked to determine which organizations "need" the
incentives provided [*18] by the Copyright Act in order to perform
the public service of drafting specialized statutes, ordinances or
regulations. Alternatively, perhaps SBCCI and the dissent intend that
whenever any private "author" finds his or her proposal adopted
verbatim in law, copyright protection may be claimed. n9 As an example,
three law professors have taken credit for drafting a recent federal
statute on supplemental federal court jurisdiction. See 28 U.S.C. §
1367; Christopher M. Fairman, Abdication to Academia: The Case of the
Supplemental Jurisdiction Statute, 28 U.S.C. § 1367, 19 SETON HALL
LEGIS. J. 157 (1994). Under SBCCI's reasoning, it is likely that these
professors, had they so desired, could have asserted a copyright in
their "model supplemental jurisdictional provision." n10 SBCCI offers
no outer limit on claims of copyright prerogatives by nongovernmental
persons who contribute to writing "the law."
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n9 One of SBCCI's amici argues that this is an unrealistic threat,
since, inter alia, the run-of-the-mill lobbyist or good citizen
involved in the legislative process does not assert a copyright. That
these "authors" may be more generous, or less sophisticated, than the
large and well-funded code-writing organizations before us hardly
furnishes a reason to approve an open-ended test of authorship of the
law. [*19]
n10 We are not stating or holding that the authorship of government
works never presents a legitimate issue of copyright. On the contrary,
the Copyright Act carefully defines the extent to which federal
government employees and contractors can obtain copyright protection.
But these provisions have never been held to supersede Banks's holding
that "the law" is in the public domain.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Not only is the question of authorship of "the law" exceedingly
complicated by SBCCI's and the dissent's position, but in the end, the
"authorship" question ignores the democratic process. Lawmaking bodies
in this country enact rules and regulations only with the consent of
the governed. The very process of lawmaking demands and incorporates
contributions by "the people," in an infinite variety of individual and
organizational capacities. Even when a governmental body consciously
decides to enact proposed model building codes, it does so based on
various legislative considerations, the sum of which produce its
version of "the law." In performing their function, the lawmakers
represent the public will, and the public [*20] are the final
"authors" of the law.
The BOCA decision put it thus:
The 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.
628 F.2d at 734. n11 This "metaphorical concept of citizen authorship"
together with the need for citizens to have free access to the laws are
the ultimate holding of Banks. Id.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n11 Technically, citizen "ownership" of the law might suggest that
local governmental entities, as public representatives, could prevent
copying of the law. As Goldstein notes, the decisions holding that
statutes are in the public domain prevent any such misunderstanding. 1
GOLDSTEIN, COPYRIGHT, § 2.48 at n.42.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
BOCA described free access as a policy "based on the concept of due
process," the people's right to know what the law requires so that they
may obey it and avoid its sanctions. SBCCI and the [*21] dissent
contend that this "due process" reasoning involves nothing more than
the factual issue of "sufficient" public access to the building codes
of Anna and Savoy. Since a copy of the codes is available for
inspection and individual copying in a public office, SBCCI contends
that the obligations of due process are fulfilled.
We disagree that the question of public access can be limited to the
minimum availability that SBCCI would permit. Banks does not use the
term "due process." There is also no suggestion that the Banks concept
of free access to the law is a factual determination or is limited to
due process, as the term is understood today. Instead, public ownership
of the law means precisely that "the law" is in the "public domain" for
whatever use the citizens choose to make of it. Citizens may reproduce
copies of the law for many purposes, not only to guide their actions
but to influence future legislation, educate their neighborhood
association, or simply to amuse. If a citizen wanted to place an
advertisement in a newspaper quoting the Anna, Texas building code in
order to indicate his dissatisfaction with its complexities, it would
seem that he could do so. In our [*22] view, to say, as Banks does,
that the law is "free for publication to all" is to expand, not
factually limit, the extent of its availability.
Moreover, as the BOCA decision observed, it is difficult to reconcile
the public's right to know the law with the statutory right of a
copyright holder to exclude his work from any publication or
dissemination. SBCCI responds that due process must be balanced against
its proprietary rights and that the fair use doctrine as well as its
honorable intentions will prevent abuse. Free availability of the law,
by this logic, has degenerated into availability as long as SBCCI
chooses not to file suit. n12
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n12 SBCCI does not permit governmental entities to publish its model
codes when they are enacted. Instead, it permits their adoption by
reference and furnishes a copy of the adopted code to the entity. SBCCI
also generously allows that if a governmental entity were to publish
the building code on an Internet site to meet its due process
obligation, that would be a fair use. But when the North Carolina
Building Officials were permitted to publish a model code on their
non-public access website, SBCCI expressly reserved its rights.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*23]
For these reasons, we reject SBCCI's deconstruction of Banks into
merely utilitarian and factual issues. Instead, we read Banks, Wheaton,
and related cases consistently to enunciate the principle that "the
law," whether it has its source in judicial opinions or statutes,
ordinances or regulations, is not subject to federal copyright law. n13
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n13 What constitutes "the law" when a governmental entity adopts or
incorporates by reference an author's copyrightable work will be
considered infra, Part III.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
To sum up this section, we hold that when Veeck copied only "the law"
of Anna and Savoy, Texas, which he obtained from SBCCI's publication,
and when he reprinted only "the law" of those municipalities, he did
not infringe SBCCI's copyrights in its model building codes. The basic
proposition was stated by Justice Harlan, writing for the Sixth
Circuit: "any person desiring to publish the statutes of a state may
use any copy of such statutes to be found in any printed book . . ."
Howell v. Miller, 91 F. 129, 137 (6th Cir. 1898). [*24] n14 See Jerry
E. Smith, Government Documents: Their Copyright and Ownership, 22
Copyright Symposium 147, 174 (ASCAP 1977), reprinted in 5 TEX. TECH L.
REV. 71, 92 (1973).
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n14 Our decision might well be the opposite, if Veeck had copied the
model codes as model codes, or if he had indiscriminately mingled those
portions of "the law" of Anna and Savoy adopted by their town councils
with other parts of the model codes not so adopted.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
II. The Copyright Act
A. The Merger Doctrine
As we earlier stated, SBCCI is the "author" of model building codes
that, qua model building codes, are facially copyright-protected. This
is true even if Banks places the building codes of Anna and Savoy, and
other governmental entities that adopted part or all of SBCCI's model
codes, in the public domain. But if the holding of Banks fails, Veeck
alternatively asserts a defense under the Copyright Act to the
protection of the model codes after they have been enacted into
positive law. Once adopted, [*25] he asserts, the model codes become
"facts" that are not protected under the Copyright Act. Further,
because there is only one way to express the meaning of the building
codes, the "idea" embodied in the law merges with SBCCI's expression,
and at that point, renders copyright protection unavailable.
It is not the sole purpose of copyright law to secure a fair return for
an author's creative labor. Under the Constitution,
The primary objective of copyright is not to reward the labor of
authors but '[to] promote the Progress of Science and the useful
Arts.'" Article I, Sec. 8, clause 8 [U.S. Constitution]. To this end,
copyright law assures authors the right to their original expression,
but encourages others to build freely upon the ideas and information
conveyed by a work. This principle, known as the idea/expression or
fact/expression dichotomy, applies to all works of authorships.
Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349,
111 S. Ct. 1282, 1289-90, 113 L. Ed. 2d 358 (1991). The statute
excludes from copyright protection ideas, procedures, processes,
systems methods of operation, or information in the public domain.
[*26] See 17 U.S.C. § 102(b); Feist Publications, 499 U.S. at 350,
111 S. Ct. at 1290 (citation omitted); Harper & Row Publishers, Inc. v.
Nation Enters., 471 U.S. 539, 547-48, 105 S. Ct. 2218, 2223, 85 L. Ed.
2d 588 (1985). If an idea is susceptible to only one form of
expression, the merger doctrine applies and § 102(b) excludes the
expression from the Copyright Act. As the Supreme Court has explained
it, this "idea/expression dichotomy strikes a definitional balance
between the First Amendment and the Copyright Act by permitting free
communication of facts while still protecting an author's expression."
Harper & Row, 471 U.S. at 556, 105 S. Ct. at 2228.
Veeck copied the building code of the towns of Anna and Savoy, Texas,
based on their adoption of a version of the SBCCI model code. The codes
are "facts" under copyright law. They are the unique, unalterable
expression of the "idea" that constitutes local law. Courts routinely
emphasize the significance of the precise wording of laws presented for
interpretation. See, e.g., Consumer Product Safety Comm'n v. GTE
Sylvania, Inc., 447 U.S. 102, 108, 100 S. Ct. 2051, 2056, 64 L. Ed. 2d
766 (1980) [*27] ("The starting point for interpreting a statute is
the language of the statute itself."). Judge Little, dissenting from
the panel opinion in this case, observed that
. . . the merger doctrine is especially appropriate because other
methods of expressing the idea are foreclosed. [citation omitted] An
individual wishing to publish the text of a law cannot develop his own,
unique version and still publish an authoritative copy.
Veeck v. Southern Bldg. Code Cong. Int'l, 241 F.3d 398, 416 (5th Cir.
2001) (Little, J., dissenting). It should be obvious that for copyright
purposes, laws are "facts": the U.S. Constitution is a fact; the
Federal Tax Code and its regulations are facts; the Texas Uniform
Commercial Code is a fact. Surely, in principle, the building codes of
rural Texas hamlets are no less "facts" than the products of more
August legislative or regulatory bodies. While the Supreme Court has
not stated directly that laws are "facts," it has broadly observed
that, as with census data, "the same is true of all facts --
scientific, historical, biographical and news of the day. 'They may not
be copyrighted and are part of the public domain available [*28] to
every person.'" Feist, 499 U.S. at 348, 111 S. Ct. at 1289.
Emphasizing not the language of § 102(b), but the "policy" of the
merger doctrine, SBCCI contends that merger poses no bar to copyright
protection here. The idea/expression dichotomy was enacted into law by
Congress to "balance [] the competing concerns of providing incentive
to authors to create and foster[] competition in such creativity." Kern
River Gas Transmission Co. v. The Coastal Corp., 899 F.2d 1458, 1463
(5th Cir. 1990). n15 Veeck's merger argument ignores the goal of
fostering competition in creativity. SBCCI thus asserts that "merger
would only apply in this case if a subsequent author seeking to create
a building code for Anna or Savoy would have to use the same expression
to convey the idea." SBCCI supplemental en banc brief at 7. This
argument effectively converts the merger doctrine from a limit on
copyrightability into a mere defense against infringement based on the
identity of the author. In our view § 102(b) does foster the
creativity that SBCCI applauds, but it does so by permitting the free
flow of information in facts and ideas from their emergence, rather
[*29] than as a defense to infringement claims. See Kern River at
1460; Mason v. Montgomery Data, Inc., 967 F.2d 135, 138 n.5 (5th Cir.
1992) ("Mason argues that application of the merger doctrine does not
render a work uncopyrightable, but rather prevents a finding of
infringement of an otherwise copyrightable work. But this court has
applied the merger doctrine to the question of copyrightability.").
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n15 See id. at 1460 (proposed route for a pipeline approved by the
Federal Energy Regulatory Commission was an uncopyrightable "idea.")
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
SBCCI and the dissent next urge the inapplicability of the merger
doctrine because there are many possible ways to express model codes:
both the multiplicity of building standards and the variety of ways to
express those standards compel the conclusion that the ideas have not
merged with their expression. Cf. Mason, 967 F.2d at 139 (rejecting
merger because the idea embodied in the author's maps can be expressed
in a variety of ways). [*30] What SBCCI and the dissent ignore,
however, is the graphic merger of its model building codes with "the
law" as enacted by Anna and Savoy, Texas. Veeck copied from SBCCI's
model codes, 1994 edition, because those codes were transformed into
the "fact" and "idea" of the towns' building codes. Veeck could not
express the enacted law in any other way.
The final argument deployed by SBCCI and the dissent casts the merger
doctrine as an inherent balancing test in which courts must reconcile
the policies underlying the Copyright Act with the public interest in
the free flow of information and ideas. Compare CCC Info Serv. Inc. v.
MacLean Hunter Market Reports, Inc., 44 F.3d 61, 68 (2nd Cir. 1994)
(interpreting Second Circuit's balancing test). It is true that where
the line is unclear between expression and facts, procedures,
processes, methods of operation, or information in the public domain, a
court considering the applicability of § 102(b) must recur to the
statute's underlying policy. See, e.g., Feist, 499 U.S. at 361-64, 111
S. Ct. at 1295-97 (determining copyrightability of compilations of
facts); Mason, 967 F.2d at 139 (copyrightability [*31] of expression
in maps). This case, however, is not close. The building codes of Anna
and Savoy, Texas can be expressed in only one way; they are facts.
Veeck placed those facts on his website in precisely the form in which
they were adopted by the municipalities. n16 When the § 102(b)
dichotomy is clear, judges are not permitted to substitute policy
choices for the legislature's determination.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n16 For the first time, in this court, SBCCI alleges that Veeck did not
exactly copy the ordinances, because in the course of their adoption,
the towns rejected certain parts of the SBCCI model codes. There is no
evidence in the district court record to sustain this contention.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
We emphasize that in continuing to write and publish model building
codes, SBCCI is creating copyrightable works of authorship. When those
codes are enacted into law, however, they become to that extent "the
law" of the governmental entities and may be reproduced or distributed
as "the law" of those jurisdictions.
B. Other Provisions n17
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n17 Veeck also raised infringement defenses based on his fair use of
the model codes or SBCCI's waiver of its copyrights. It is unnecessary
to reach these issues.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*32]
SBCCI's amici make much of provisions of the Copyright Act that, they
contend, should protect SBCCI's copyrights from "appropriation" by
local government entities. Section 105 of the Act, taken together with
the definition of "works of the government," denies copyright
protection to official works of the United States Government, while
reserving the possibility that government employees and contractors may
obtain, or transfer to the government, copyrights for non-official
works. 17 U.S.C. §§ 105, 101. On its face, these provisions say
nothing about the relationship between non-federal government entities
and copyright holders. Moreover, they have never been held inconsistent
with Banks or with the merger doctrine.
Section 201(e) of the Act reflects Congress's intention to protect
copyrights from involuntary appropriation by government entities. 17
U.S.C. § 201(e). This is not, however, a "takings" case, not least
because SBCCI urged localities to adopt its model codes. The issue in
the case is not the voluntariness of the appropriation but the legal
consequences flowing from the permission that SBCCI gave.
III. The Caselaw; Model [*33] Codes Versus Standards
Until recently in our history, it was understood that Wheaton, Banks
and nearly every other pertinent case held that copyright protection
may not be asserted for the text of "the law". n18 The basic
proposition was stated by Justice Harlan, writing for the Sixth
Circuit: "any person desiring to publish the statutes of a state may
use any copy of such statutes to be found in any printed book . . ."
Howell v. Miller, 91 F. 129, 137 (6th Cir. 1898).
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n18 See also Texas v. West Publishing Co., 882 F.2d 171, 174, 177 (5th
Cir. 1989), in which the State of Texas sought a declaratory judgment
that West's copyright in their original arrangement of annotated Texas
statutes was invalid. This court rejected the state's argument and
observed in passing that West did not claim a copyright in the text of
the statutes themselves or in any of the readily-available public
compilations of statutes.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
As of 1980, the noncopyrightability of "the law" appeared settled
[*34] to the First Circuit in BOCA. The court focused on the real
holding of Banks and accordingly vacated preliminary injunctive relief
to the author of a building code adopted into law by the Commonwealth
of Massachusetts. n19 The court held that BOCA had failed to carry its
burden of distinguishing, for preliminary relief purposes, the
Massachusetts building code from non-copyrightable statutes and
judicial opinions. But the court then remanded the case for further
development in light of the novelty of the issue, the insufficiency of
the trial court record, and the apparent trend toward adoption of model
codes by governmental entities. The court nevertheless was skeptical
that BOCA would prevail, commenting
it is hard to see how the public's essential due process right of
free access to the law (including a necessary right freely to copy and
circulate all or part of a given law for various purposes), can be
reconciled with the exclusivity afforded a private copyright holder . .
.
BOCA, 628 F.2d at 730. Though not a definitive holding, BOCA clearly
favors Veeck's position over that of SBCCI, and it is most closely on
point.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n19 BOCA is an amicus curiae in this case supporting SBCCI's position.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*35]
The record has been developed in this case and, with the perspective
gained from other recent caselaw and from the multiple submissions to
the court, we have no hesitation in confirming BOCA's predisposition
against the copyrightability of model codes to the extent they have
been adopted as law. But the limits of this holding must be explained.
Several national standards-writing organizations joined SBCCI as amici
out of fear that their copyrights may be vitiated simply by the common
practice of governmental entities' incorporating their standards in
laws and regulations. n20 This case does not involve references to
extrinsic standards. Instead, it concerns the wholesale adoption of a
model code promoted by its author, SBCCI, precisely for use as
legislation. Caselaw that derives from official incorporation of
extrinsic standards is distinguishable in reasoning and result. See CCC
Info. Services v. Maclean Hunter Market Reports, Inc., 44 F.3d 61 (2nd
Cir. 1994); and Practice Management Info. Corp. v. American Medical
Ass'n, 121 F.3d 516 (9th Cir. 1997), opinion amended by 133 F.3d 1140
(9th Cir. 1998).
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n20 See 63 Fed.Reg. 8545, 8554-55 (Feb. 19, 1998) (Office of Management
and Budget Notice of Final Revision of Circular A-119) (directing
federal agencies to adopt privately developed standards "whenever
practicable and appropriate" to "eliminate[] the cost to the Government
of developing its own standards").
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*36]
In CCC Information Services, a New York statute required insurance
companies to use the "Red Book," a privately prepared and copyrighted
list of projected automobile values, as one of several standards in
calculating the payments upon the total loss of a vehicle. CCC
Information Services systematically loaded portions of the Red Book
onto its computer network and distributed the information to its
customers. One of CCC's theories was that the Red Book had entered the
public domain. The Second Circuit addressed the public domain issue
briefly, stating that "we are not prepared to hold that a state's
reference to a copyrighted work as a legal standard for valuation
results in loss of the copyright." CCC Info. Services, 44 F.3d at 74.
CCC notes the infringer's reliance on the BOCA decision, but it does
not opine on that case, confining itself to the precise facts before
the court.
Practice Management involved the American Medical Association's
copyrighted coding system for reporting physicians' services and
medical procedures. The Federal Health Care Financing Administration
(HCFA) contacted and then agreed with AMA to use the AMA's coding
system for [*37] identifying physicians' services on Medicare and
Medicaid reimbursement forms. AMA granted a "non-exclusive,
royalty-free and irrevocable" license to HCFA, without restrictions on
the government's ability to reproduce or distribute AMA's codes. There
was no evidence that AMA had restricted the code's availability to
anyone. The Ninth Circuit held that the HCFA's decision to adopt
regulations requiring physicians to use a version of the AMA code on
Medicaid claim forms did not place the code in the public domain under
Banks. Practice Management, 121 F.3d at 519 ("The AMA's right under the
Copyright Act to limit or forgo publication of the [coding system]
poses no realistic threat to public access.").
Both the Second and Ninth Circuits feared that reaching the opposite
conclusion in those cases would have "exposed copyrights on a wide
range of privately authored model codes, standards, and reference works
to invalidation." Practice Management, 121 F.3d at 519. The Ninth
Circuit suggested that federal court rules regarding citations could
invalidate the copyrightability of the Blue Book. Id. at n.5. The
Second Circuit feared that a ruling in [*38] favor of CCC Information
Systems would call into question the copyrightability of school books
once they were assigned as part of a mandatory school curriculum. CCC
Info Services, 44 F.3d at 74.
These decisions, and the hypothetical situations they discuss, are all
distinguishable from Veeck. If a statute refers to the Red Book or to
specific school books, the law requires citizens to consult or use a
copyrighted work in the process of fulfilling their obligations. The
copyrighted works do not "become law" merely because a statute refers
to them. See 1 GOLDSTEIN COPYRIGHT, § 2.49 at n. 45.2 ( noting that
CCC and Practice Management "involved compilations of data that had
received governmental approval, not content that had been enacted into
positive law"). Equally important, the referenced works or standards in
CCC and Practice Management were created by private groups for reasons
other than incorporation into law. To the extent incentives are
relevant to the existence of copyright protection, the authors in these
cases deserve incentives. And neither CCC nor AMA solicited
incorporation of their standards by legislators or regulators. In the
[*39] case of a model code, on the other hand, the text of the model
serves no other purpose than to become law. SBCCI operates with the
sole motive and purpose of creating codes that will become obligatory
in law.
At first glance, Practice Management appears to pose a closer issue
because the HCFA did not simply refer physicians to the AMA's coding
system. The court's opinion directs the reader to HHS's notice in the
Federal Register announcing that HCFA would require physicians to
use exclusively a common procedure coding system. The system is the
HCFA common procedure coding system (HCPCS). This coding system is to
be used for coding procedures that have been performed . . . and is
basically used for determining reimbursement amounts. HCFA developed
the HCPCS in 1979 and 1980 by using the AMA's CPT-4 [the copyrighted
coding system] for physician services and adding HCFA-developed codes
for some non-physician services. In addition, we developed conversion
techniques to prevent unwarranted payment escalation.
50 Fed. Reg. 40895, 40897. To be precise, then, HCFA had its own coding
system (the HCPCS) that incorporated AMA's code but also included
additional [*40] information.
But unlike Veeck, Practice Management Information Corporation, a
commercial publisher of medical textbooks, was not trying to publish
its own version of the HCPCS. Practice Management desired to sell a
cheaper edition of the AMA's code, which was also used by insurance
companies and had other non-governmental uses. It is not clear how the
Ninth Circuit would have decided the case if Practice Management had
published a copy of the HCPCS. By analogy, the result in this case
would have been different if Veeck had published not the building codes
of Anna and Savoy, Texas, but the SBCCI model codes, as model codes.
IV. Policy Arguments
Many of SBCCI's and the dissent's arguments center on the plea that
without full copyright protection for model codes, despite their
enactment as the law in hundreds or thousands of jurisdictions, SBCCI
will lack the revenue to continue its public service of code drafting.
Thus SBCCI needs copyright's economic incentives. n21
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n21 SBCCI's factual "evidence" on this point consisted of self-serving
affidavits from its officers and employees, and proof that it earns
perhaps 40% of its revenue from sales of the domestic model codes and
amendments. No effort was made to show by what amount copying by people
like Veeck would or could reduce the organization's revenue.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*41]
Several responses exist to this contention. First, SBCCI, like other
code-writing organizations, has survived and grown over 60 years, yet
no court has previously awarded copyright protection for the copying of
an enacted building code under circumstances like these. Second, the
success of voluntary code-writing groups is attributable to the
technological complexity of modern life, which impels government
entities to standardize their regulations. The entities would have to
promulgate standards even if SBCCI did not exist, but the most fruitful
approach for the public entities and the potentially regulated
industries lies in mutual cooperation. The self-interest of the
builders, engineers, designers and other relevant tradesmen should also
not be overlooked in the calculus promoting uniform codes. As one
commentator explained,
. . . it is difficult to imagine an area of creative endeavor in
which the copyright incentive is needed less. Trade organizations have
powerful reasons stemming from industry standardization, quality
control, and self-regulation to produce these model codes; it is
unlikely that, without copyright, they will cease producing them.
1 Goldstein [*42] § 2.5.2, at 2:51. n22
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n22 This court's opinion does not, of course, withdraw all copyright
protection from the model codes qua model codes.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Third, to enhance the market value of its model codes, SBCCI could
easily publish them as do the compilers of statutes and judicial
opinions, with "value-added" in the form of commentary, questions and
answers, lists of adopting jurisdictions and other information valuable
to a reader. The organization could also charge fees for the massive
amount of interpretive information about the codes that it doles out.
In short, we are unpersuaded that the removal of copyright protection
from model codes only when and to the extent they are enacted into law
disserves "the Progress of Science and useful Arts." U.S. Const. art.
I. § 8, cl. 8.
Conclusion
For the reasons discussed above, we REVERSE the district court's
judgment against Peter Veeck, and REMAND with instructions to dismiss
SBCCI's claims.
DISSENTBY: PATRICK E. HIGGINBOTHAM; WIENER
DISSENT: PATRICK E. HIGGINBOTHAM, [*43] Circuit Judge, joined by
KING, Chief Judge, DAVIS and STEWART, Circuit Judges, dissenting:
In this difficult case I am persuaded to join the view that would
affirm the judgment of the district court. It is undisputed that Veeck
copied the copyrighted product of SBCCI. That parts of the copied
material contain the same expressions as the adopted codes of two Texas
cities is no defense unless the use by the cities of the protected
expression somehow invalidated SBCCI's copyright.
The cities could have hired counsel and engineers to draft a code,
recouping its expense either from all taxpayers or by charging a fee to
users for a copy of its ordinance. A city could also decide, on behalf
of the citizens, to license a finished and copyrighted work. Either is
a decision by elected representatives.
Against a refrain that "the law" belongs to the people, Veeck asked us
to conclude, as a matter of federal common law, that the choice made by
the voters of this municipality was not available to it. Its utility as
a decisional norm aside, the refrain passes by the fact that it was
legislators who chose what they thought was the most practical path, to
adopt a technical code developed at the [*44] expense of others under
a licensing agreement.
Nothing suggests that private entities will control access to "the
law." A contrary vision persists while ignoring the assured access of
persons interested in the language of the ordinance. We are not told
what impediment a person interested in the ordinance will face that
will not be avoided by the doctrines of fair use and implied license or
the constitutionally footed right of persons to access the law. Nor
does developed case law tell us.
Banks holds that judges, as public employees, cannot have a financial
interest in the fruits of their judicial labors. It is a case about
authorship, about the acquiring of copyrights by public officials, not
a case invalidating the copyrights held by private actors when their
work is licensed by lawmakers.
As for the merger doctrine, I am not persuaded that it brings anything
more to the table. That doctrine reflects the narrow circumstance where
an idea can be expressed only one way and hence protection of its
expression gives way. A complex code, even a simple one, can be
expressed in a variety of ways. That reality is not ended by choosing
one manner of expression to enact and then pronouncing [*45] that
this normative rule--"the law"--can only be expressed in one way. Of
course, you have adopted the protected expression; the reasoning is
wholly tautological. It is a restatement of the conclusion that
adopting the codes invalidated the copyright, not an independent reason
why that is so.
There is a strong argument for that conclusion and it can be simply
stated without calling on the illusion of the merger doctrine: the
thinness of the protection enjoyed by this specie of copyright is
overcome by the stronger public policy of unfettered access to enacted
law, a victory expressed in the conclusion that enacting the code into
law put the expression in the public domain. Whether that is so is our
question and the merger doctrine does not answer it. Rather we are
pushed to decide this case by reconciling two competing policies,
expressed at a high level of generality, not unlike the large-scale
balancing characteristic of judicial findings of violations of
substantive due process. Doing so lacks the accretive marks of
case-by-case adjudication, vital to the discipline of judges wearing
their "common law" hats. Perhaps we will reach that point in the
seriatim course of deciding the [*46] cases. If and when we do, the
choices will come with more sharply defined features than the
abstraction we now have.
Significantly the absence of easily-found answers to the large,
broadly-stated policy choices calls for caution. As I earlier observed,
these small cities were empowered by the work of SBCCI; they gained the
benefit of uniformity in regulation with other cities in their codes as
well as proven quality--with the ability to charge a small fee for
copies. Any person wishing a copy of the code can obtain it. They can
reproduce it for critical commentary or to express their displeasure
with its content, even make copies to circulate in a campaign urging
that it be rescinded.
It bears emphasis that the Congress is best suited to accommodate its
Congressionally-created copyright protection with the extraordinary
changes in communication trailing the development of the internet.
Unless of course it is contended that some Constitutional principle
denies Congress the power to authorize copyright protection for
governmental entities wishing to adopt codes such as those before us
today. And of course the state legislatures and the municipalities are
differently situated in another [*47] relevant and vital way--the
state enjoys an immunity that the municipalities do not. It is ironical
that the federal courts are asked to accept a broadly stated principle
that would regulate the states by decreeing that some federal principle
denies them the choice of accepting or rejecting a license when absent
its waiver of immunity the federal copyright regime is not enforceable
against them. This unexplored territory offers a confusing backdrop and
also counsels caution.
Another confusion must be put aside. When Veeck did his work, the code
was already available on the internet, albeit subject to the terms of
its license. Veeck's effort was to put the code on the internet free of
license. To accept Veeck's contention would invalidate the copyright on
every model code except those in inventory that had never been adopted
by any governmental body. Publishing adopted model codes as a set with
the list of governmental bodies adopting them could be accomplished
without honoring the copyright because there would be no copyright.
In sum, the suggestion that SBCCI's position asks this Court to extend
the reach of the copyright law is exactly backwards. The copyrights at
issue here were [*48] concededly valid before the cities adopted them
as codes. The proper question is whether we should invalidate an
otherwise valid copyright as well as the solemn contract between the
governmental body and SBCCI. That aggressive contention must find
stronger legs than the rhetoric it comes clothed in here. The
contention comes with no constitutional or statutory text, except its
reliance upon the merger doctrine, and that is wordplay. This is
federal common law adjudication. Its hallmark must be case-by-case
accretion and measured decision making, even if the case-by-case
explanation of the permissible restraint upon the copying of an enacted
code leads to the conclusion that Veeck urges today--and I am not yet
willing to embrace--that invalidity of the copyright is the inevitable
consequence of code adoption. Rather, I conclude that Veeck violated
the explicit terms of the license he agreed to when he copied model
codes for the internet and posted them. I decide no more.
WIENER, Circuit Judge, joined by KING, Chief Judge, and HIGGINBOTHAM,
DAVIS, STEWART, and DENNIS, Circuit Judges, dissenting:
Technical codes and standards have become necessary, pervasive, and
indispensable ingredients [*49] of Twenty-First Century life in this
country; regrettably, today's majority opinion has a real potential of
drastically changing the societal landscape through that opinion's
predictably deleterious effects on these codes and standards, their
authors, and the public and private entities that daily use and depend
on them. Despite efforts to clothe its ruling in classic copyright
lingo -- "public domain," "fact/expression," "merger" -- in holding for
Veeck under the discrete facts of this case, the majority had to (and
did) adopt a per se rule that a single municipality's enactment of a
copyrighted model code into law by reference strips the work of all
copyright protection, ipso facto. Firmly believing that for this court
to be the first federal appellate court to go that far is imprudent, I
respectfully dissent.
I. FACTS AND PROCEEDINGS
As the underlying facts are undisputed, I adopt the majority opinion's
detailed recitation of the facts, supplementing it with the following
observations contained in the record. The technical codes here at issue
are not mere compilations; rather they are original, "from scratch"
creations by SBCCI which rightfully enjoy copyright protection [*50]
from their inceptions. In each of its codes, SBCCI asserts a copyright
under which it claims the exclusive right to publish these codes or
license their reproduction and publication. Despite its copyright,
SBCCI ensures free access by specifying that once a governmental unit
enacts such a model code into law, copies must be made available for
inspection by the public in the enacting government's offices. As a
general proposition, members of the public may make or obtain copies of
portions of the adopted versions of SBCCI codes from city offices or
local libraries, or may purchase copies of the codes directly from
SBCCI and from some third-party sources, such as bookstores. n23
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n23 As noted by the majority members and nonmembers are charged
different prices for copies of the codes. For example, members were
charged $ 48 for a copy of SBCCI's 1994 Standard Building Code, for
which nonmembers were charged $ 72.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Several municipalities in North Texas have adopted SBCCI's codes,
including the towns of Anna and Savoy. [*51] Veeck avers that he
attempted to obtain a copy of the building code of his hometown of
Denison, Texas, after learning that it had adopted SBCCI's Model
Building Code as its own. Failing to locate Denison's building code at
local bookstores or libraries, Veeck ordered copies of the codes that
SBCCI had produced. He ordered these copies in electronic format
directly from SBCCI. n24 According to Veeck, he later visited
approximately twenty towns in North Texas, including Anna and Savoy, in
an effort to obtain copies of their local building codes, not all of
which had been produced by SBCCI. Veeck was not able to buy complete
copies at any of the towns that he visited. n25 He apparently never
attempted to view or copy the SBCCI codes in any city clerk's or other
municipal offices of the towns that had enacted the codes by reference.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n24 The record is not completely clear, but it appears that Veeck made
no attempt to view or copy the codes in the Denison city clerk's
office. When Veeck received the 1994 codes from SBCCI, he realized that
Denison had adopted the 1988 version of the building codes. He posted
the 1994 codes on his Internet site despite the fact that they were not
the same as the version adopted by Denison. [*52]
n25 It appears that in some of the cities, the correct version of the
building code was not available at alternative locations. For instance,
Sherman, Texas, had adopted the 1997 version of the building code, but
the local library had only the 1994 version on hand.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
In contravention of the software license agreement and copyright notice
included with the electronic version of the model codes he purchased
from SBCCI, Veeck failed to identify the codes as the products of SBCCI
when he posted them on his website. Instead, he simply (and
inaccurately) n26 identified them as the building codes of Anna and
Savoy, Texas. As detailed in the majority opinion, the litigation
ensuing from this conduct culminated with the grant of summary judgment
in favor of SBCCI on its claims for copyright infringement. As Veeck
cannot legitimately find a safe haven in any of his affirmative
defenses, the district court's order should have been affirmed.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n26 Veeck did not include the enacting ordinances of either
municipality. Anna's enacting statute, for example, includes ordinances
resolving conflicts between the adopted SBCCI code and previous city
laws and also includes a clarification regarding which city officials
would be responsible for enforcing different sections of the code.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*53]
II. ANALYSIS
A. Standard of Review
This case is on appeal from a grant of a summary judgment that
dismissed Veeck's declaratory judgment action and granted SBCCI's
requested copyright infringement and damages relief. We review the
record de novo, applying the same standard as the district court. n27
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n27 Morris v. Covan World Wide Moving, Inc., 144 F.3d 377, 380 (5th
Cir. 1998).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
B. Merits
1. Overview
Despite the efforts of Veeck (and of those amici who support him and of
the en banc majority opinion) to paint this case as a broad one with
dire constitutional implications, the question before us is truly quite
narrow. In fact, it is the majority opinion that creates drastic
constitutional alterations by ruling in Veeck's favor, thereby
improvidently decreeing an absolute and inflexible rule, ill-suited for
modern realities. Conversely, had we held for SBCCI, we would have
remained well within the precedential and persuasive boundaries of
established copyright [*54] law. My analysis is necessarily delimited
by the particular, undisputed facts of the case: Veeck is a
non-commercial, non-educational, non-contractor, non-official,
non-resident of either Anna or Savoy, who purchased a copyrighted work,
replete with warnings about infringement, and published that work
virtually in its entirety on the internet. Veeck published on his
website the entire substantive portion of the model building code that
he purchased from SBCCI, redacting only the identity of the code's
author (SBCCI) and the statement that the code was copyright protected,
and inserting that they were the codes of Anna and Savoy. Veeck's only
professed justification for infringing SBCCI's copyrights was that two
or more small municipalities in northern Texas -- of which Veeck was
neither a resident nor otherwise related to in any capacity, official
or unofficial -- had, at the invitation of the code's author, enacted
the codes into law by reference. Because he cannot, Veeck does not
contend that Anna or Savoy denied him access to their codes or that he
(or anyone else) was unable to view the law to which the citizens of
Anna and Savoy are subject. Had Anna, Savoy, or SBCCI blocked the
[*55] code's availability, I would be among the first to recognize
Veeck's (and anyone else's) right of access to "THE law." That,
however, is simply not the case before us; this is not a free access
case and cannot be so classified.
Under this narrow set of facts, Veeck prevails only because the en banc
majority ruled favorably on at least one of his affirmative defenses,
n28 without which, his publication of the codes is indisputably an
infringement of SBCCI's copyright. Given Veeck's global re-publication
of SBCCI's copyrighted model codes, his at-best remotely tangential
relationship to the codes and other laws of Anna and Savoy, his
inability to present evidence that he was denied access to the towns'
codes by the towns or SBCCI, the countervailing public policy concerns
supporting copyright protection, and the direction and intent of recent
congressional enactments and appellate case law, we should not have
condoned Veeck's violation of SBCCI's copyright.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n28 Veeck advanced defenses grounded in due process, public domain,
fair use, waiver, copyright misuse, merger, and free speech.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*56]
Reduced to its bare essentials, the majority's holding in favor of
Veeck indisputably enacts the blanket, per se rule that once a
copyrighted work is enacted into law by reference, it loses its entire
copyright protection, ipso facto, regardless of the nature of the
author, the character of the work, or the relationship of the copier to
the work or to the governmental subdivision that enacted the work into
law through incorporation by reference. Such an extremely broad and
inflexible rule propels the majority's holding far beyond the ambit of
Congress's enactments, the Supreme Court's pronouncements, and the
opinions of other appellate courts that have addressed similar issues.
Yet the possibility of obtaining such an all-encompassing ruling
constituted Veeck's only hope of overcoming SBCCI's copyright
protection vis-a-vis an otherwise admitted infringer who is too
attenuated from anything that might otherwise excuse the unauthorized
copying of these codes cum ordinances, such as a "need to know" for
purposes of complying with one or more provisions of the codes. Veeck
meets none of these criteria.
2. Due Process/Public Domain
a. Absence of Controlling Legal Authority [*57]
In the absence of an expressed pronouncement from either the Supreme
Court or Congress, n29 our creation of an automatic rule rendering the
copyright of a model code nugatory per se when and if it is enacted
into law is unwise, imprudent, and far in excess of our authority.
Before such a work is enacted into law, the Copyright Act
unquestionably affords copyright protection to its author; and Congress
has given no indication that, on enactment, this protected status
evanesces ipso facto as to the whole universe of potential copiers. n30
As I discuss in greater detail below, recent congressional enactments
and accompanying federal agency policies strongly predict that, were
Congress to address the issue here presented, it would preserve the
protection of SBCCI's copyright, at least under circumstances like
those we consider today. n31
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n29 Cf. CCC Information Services, Inc. v. Maclean Hunter Market Reports
(CCC), 44 F.3d 61, 73-74 (2d Cir. 1994) (discussing whether the Red
Book, which was adopted by States as the legal standard for car
valuations, passed into the public domain by virtue of its reference
into the law):
The [public domain] argument is that the public must have free
access to the content of the laws that govern it; if a copyrighted work
is incorporated into the laws, the public need for access to the
content of the laws requires the elimination of the copyright
protection.
...
No authority cited by CCC directly supports the district court's
view [the view that the Red Book had passed into the public domain].
...
We are not prepared to hold that a state's reference to a
copyrighted work as a legal standard for valuation results in loss of
the copyright. (emphasis added).
[*58]
n30 Cf. County of Suffolk v. First American Real Estate Solutions, 261
F.3d 179, 193 (2d Cir. 2001) ("The determination that no one may own a
copyright in statutes and opinions arises not from a specific provision
of the Copyright Act, but from a 'judicial gloss' on the Act.")
(citation omitted).
n31 See, e.g., National Technology and Transfer Act of 1995, P.L.
104-113, § 12(d), 110 Stat. 783 (1996); OMB Circular A-119, 63 Fed.
Reg. 8545, 8555 (Feb. 19, 1998).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
As for the Supreme Court, its most analogous opinion, Banks v.
Manchester, falls markedly short of answering the question. n32 The
Court grounded its century-and-one-quarter old Banks holding -- that
judicial opinions cannot be copyrighted -- in the logic that, as the
product of judges who are paid from public coffers and elected or
appointed for the sole purpose of interpreting and applying the law,
judicial opinions can never be copyrighted. n33 Thus Banks turns not on
the nature of the work but on the nature of the author. By its own
terms, the Banks holding is obviously [*59] limited to the work of
taxpayer-paid public officials who produce or interpret the law. The
majority's stretching of Banks to the facts of the instant case
constitutes a clear overreaching that finds no definitive support from
any controlling authority.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n32 Banks v. Manchester, 128 U.S. 244, 253, 32 L. Ed. 425, 9 S. Ct. 36
(1888) (holding judicial opinions uncopyrightable because they are
created by judges paid from the public's coffers); see also Wheaton v.
Peters, 33 U.S. 591, 668, 8 L. Ed. 1055 (1834) (same).
n33 This rationale is also applicable to statutes created by
legislators paid by public funds.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
In the absence of expressed congressional guidance or directly
controlling Supreme Court precedent, we were left to address --
prudentially -- a wide-open and unresolved question of copyright law:
Should the entirety of a privately confected and promulgated model
code, access to which has been denied to none, lose its copyright
protection in toto, against all the [*60] world, solely by virtue of
its enactment into law by reference? If Congress or the Supreme Court
wishes to strip totally the copyright protection otherwise enjoyed by
model codes as an automatic result of being enacted into law, and to
justify such emasculation by invoking the doctrines of free speech, due
process, merger, or the like, that would be their prerogative. Prudence
demands, however, that so large a step beyond all established legal
boundaries should not have been taken first by an intermediate
appellate court. Indeed, recent appellate case law, congressional
pronouncements, and federal agency actions, predict the diametrically
opposite result: a discernible trend towards greater governmental
adoption of privately created codes with concomitant retention of
copyright protection, tempered, of course, by express or implied
consent or waiver -- or even fair use -- for those officials,
residents, contractors, subcontractors, and design professionals who
have a need to view and copy portions of codes to comply with their
provisions.
b. Policy Analysis for Copyright Protection
What Banks and other opinions undeniably teach about assessing the
copyright protection of [*61] works like the codes here at issue is
that "the question is one of public policy...." n34 Accordingly, these
decisions do not stand for the abstract and generic proposition that
all law qua law, regardless of its form, authorship, or content, is
automatically unprotected fair game as to all copiers, without
distinction. Hence, courts are given the weighty task of balancing, on
the one hand, the policy concerns that favor the constitutionally
mandated retention of copyright protection for privately authored works
and, on the other hand, the policy concerns that would permit stripping
the author of a privately created work of copyright protection once
that work is enacted into law. I do not dismiss lightly the policy
considerations supporting this latter concern. Yet, when properly
limited to the narrow set of facts before us, the scale of
countervailing policy considerations is tipped -- slightly yet
undeniably -- in favor of enforcing SBCCI's copyright, vis-a-vis Veeck
and any others (but only they) who are identically situated.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n34 Banks, 128 U.S. at 253; see also CCC, 44 F.3d at 68:
We reach this conclusion [reversing summary judgment in favor of a
publisher who copied portions of appellant's used car valuations which
were referenced by state statutes] based on the need to balance the
conflicts and contradictions that pervade the law of copyright, and the
need, where elements of copyright law conflict, to determine, as a
policy judgment, which of its commands prevails over the other.
(emphasis added).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*62]
I begin with an assessment of the policy consideration supporting
Veeck's position -- namely, the due process and public domain concerns.
As an initial matter, the type of due process asserted by Veeck is
murky at best. He was not denied access to the codes by either the
towns or SBCCI (indeed, he has never alleged that he even tried to
attain access directly from either town, or his home forum for that
matter), and he was never charged with or prosecuted for a code
violation; n35 therefore, his claim cannot be based on procedural due
process. And, inasmuch as copyright is a federal law, no state action
could deprive him of a fundamental right that would trigger a
substantive due process claim. Neither has Veeck pointed to any state
actor who has purportedly denied him due process. Yet despite his
unimpeded access to the law and the absence of state action, Veeck
argues amorphously that his due process rights somehow allow him freely
to copy and publish otherwise copyright-protected codes once they are
enacted into law by reference.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n35 Should some municipality, or SBCCI, ever truly restrict the
public's free access to the enacted codes, any defendant prosecuted for
violating sections of the building codes would surely prevail on a due
process defense.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*63]
I reiterate for emphasis that this would be an entirely different case
if Veeck's (or anyone's) access to the law had been denied or
obstructed; instead, we deal here only with Veeck's bald pronouncement
-- now legitimated by the majority opinion -- that, once a code is
enacted into law, due process does not merely afford him access, but
also gives him unfettered copying and dissemination rights. n36 The
majority's acceptance of Veeck's position is truly a novel extension of
any prior judicial recognition of a due process right. True enough,
Veeck can copy and publish judicial opinions and statutes on his
website with impunity. He can do so, however, not because of his due
process rights, but rather because -- as judicial opinions and
legislatively drafted statutes have never enjoyed copyright protection,
could never enjoy such protection, and are in the public domain from
the moment of their inception -- such works are entitled to no
copyright protection or restrictions. n37
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n36 Cf. Practice Management Information Corp. v. American Medical
Association (Practice Management), 121 F.3d 516, 519 (9th Cir. 1997)
(in denying the Practice Management's due process/public domain
argument, the court noted "Practice Management is not a potential user
denied access to the CPT, but a putative copier wishing to share in
AMA's statutory monopoly. Practice Management does not assert the AMA
has restricted access to users or intends to do so in the future.").
[*64]
n37 Moreover, as further discussed infra, wide, unrestricted
dissemination of opinions and statutes has no possible harmful effects
on the "creativity" of those who author judicial opinions and statutes;
their jobs and their compensation have no nexus to their creativity,
and vice versa.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Logically then, the only possible support for Veeck's due process
position is his wholly unsupported assertion that, by virtue of their
adoption into law by reference, the codes have entered the public
domain and are therefore denuded of all copyright protection
whatsoever, regardless of their content or the identity of the author
or other interested parties. According to Veeck -- and now our en banc
majority -- simply by virtue of their adoption into law, SBCCI's model
codes have become "THE law"; and as THE law, all THE people (not just
those who may be deemed metaphysically to have been the authors by
virtue of their elected legislatures' acts of adoption) have an
absolutely unfettered right to do whatever they please in the way of
copying and publishing, in total disregard of the author's otherwise
[*65] valid and enforceable copyright.
Admittedly, the majority's argument finds rhetorical support from the
First Circuit's dicta in Building Officials & Code Admin. V. Code
Technology, Inc. (BOCA), in which that court stated "the 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." n38 Undoubtedly, this metaphorical concept of citizen
authorship cum ownership has great symbolic, "feel-good" appeal. The
majority's uncritical application of that proposition to the instant
case, however, naively treats all manifestations of "THE law" in our
increasingly complex society monolithically and without
differentiation. The Supreme Court took no such position in Banks; in
fact, Banks addresses only judicial opinions and other pronouncements
of the law created ab initio by publically paid officials. n39
Furthermore, although the symbolic position advanced in BOCA's
grandiloquent dicta ostensibly contemplates a broad application for the
proposition of citizen authorship and control, BOCA's actual holding
[*66] is very narrow and unrelated to any such abstract musings about
the democratic process.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n38 BOCA, 628 F.2d 730, 734 (1st Cir. 1980).
n39 County of Suffolk v. First American Real Estate Solutions, 261 F.3d
179, 194 (2d Cir. 2001) ("Banks is properly read as requiring a
determination whether the particular governmental entity or employee
has adequate incentive to create the work absent copyright
protections.").
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
In fact, the BOCA court expressly avoided deciding whether BOCA's model
code retained its copyright after enactment, noting that "the rule
denying copyright protection to judicial opinions and statutes grew out
of a much different set of circumstances than do these technical
regulatory codes...." n40 Therefore, the majority's rote application of
the lofty platitude of citizen ownership of "THE law," without
exploring the distinctions between different types of enactments and
the policy considerations attendant on each, is far too simplistic.
Such an [*67] analysis is inconsistent with the thorough policy
evaluations evidenced by those courts that heretofore have deliberated
on similar copyright issues. n41
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n40 BOCA, 628 F.2d at 736 (emphasis added).
n41 See Banks, 128 U.S. 244, 32 L. Ed. 425, 9 S. Ct. 36; County of
Suffolk, 261 F.3d 179 (2d Cir. 2001); Practice Management, 121 F.3d 516
(9th Cir. 1997); CCC, 44 F.3d 61 (2d Cir. 1994); BOCA, 628 F.2d 730
(1st Cir. 1980).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
The privately created model codes enacted into law in this case are
easily distinguishable from judicial opinions or statutes in several
important respects. First and most obviously, model codes are not
created by elected or appointed officials paid from public fisc,
rendering inapt the mythical concept of citizen authorship. Indeed, to
the exact opposite, rather than producing regulatory codes themselves,
the officials elected as the citizens' voice chose, on behalf of their
constituents, [*68] not to head down the long, expensive, and highly
technical road of special code drafting, opting instead to adopt,
cost-free, codes authored by private entities, because doing so is
convenient, efficient, and cost-effective.
Second, these narrowly focused codes are detailed and complex,
requiring technical expertise on the part of the author. Third, they
are of limited, highly specialized effect as to who has a real interest
and is actually affected, unlike judicial opinions and statutes, which
generally have broad if not universal application.
Finally, Congress itself has provided the strongest support for the
proposition that these privately created codes should be treated
differently than other laws. Recognizing that the production of a
comprehensive technical code requires a great deal of research, labor,
time, and expertise, Congress in the National Technology and Transfer
Act of 1995 (the "NTTA") expressly directs that "Federal agencies and
departments shall use technical standards that are developed or adopted
by voluntary consensus standards bodies...." n42 The OMB, in its
Circular A-119, which was designed to provide guidance to federal
agencies in the wake of the NTTA, [*69] requires that "if a voluntary
standard is used and published in an agency document, your agency must
observe and protect the rights of the copyright holder and any other
similar obligations." n43 These pronouncements by Congress and the OMB
strongly evince a recognition that the privately created regulatory
codes and standards differ greatly from either judicial opinions or a
statutes. Technical codes are indispensable resources in today's
increasingly complex, high-tech society, and they deserve authorship
protections not afforded to other types of "THE law."
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n42 National Technology and Transfer Act of 1995, P.L. 104-113, §
12(d), 110 Stat. 783 (1996). I note that although the NTTA and the OMB
Circular address the policy of using privately created standards and
retaining copyright protection for those standards, they are still
wholly applicable to the analysis of privately created codes. Rather
than a substantive, meaningful legal distinction, Congress's and the
OMB's references to "standards" rather than "codes," in all likelihood
reflects the difference between federal and local lawmaking. Federal
law, because it does not govern the safety and building ordinances of
states or municipalities, generally addresses national standards
instead of specific safety and building requirements embodied in a
code. In substance, though, technical codes are "standards;" for
purposes of today's decision, those terms are synonymous. The
majority's purported distinction between standards and codes is far too
narrow to decide the instant case on those grounds -- it is a
paradigmatic example of a distinction without a difference. The same
principles that apply to the analysis of privately created standards
apply to privately created codes -- both deal with the protection
afforded to privately organized and authored collections of
hyper-technical data for use in a specialized segment of today's
complex society that benefits from uniformity in those data. This
understanding is supported both by appellate case law and evidenced by
the standards-creating bodies filing amicus briefs in support of
SBCCI's position. See Practice Management, 121 F.3d at 518-19 ("As the
AMA points out, invalidating its copyright on the ground that the CPT
entered the public domain when HCFA required its use would expose
copyrights on a wide range of privately authored model codes,
standards, and reference works to invalidation.") (emphasis added); see
also amicus filed by, inter alia, American National Standards Institute
in support of SBCCI. [*70]
n43 OMB Circular A-119, 63 Fed. Reg. 8545, 8555 (Feb. 19,
1998)(emphasis added).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
The First Circuit's overbroad dicta in BOCA was announced in 1980, well
before the advent of the internet and well before the announcement of
the federal government's legislated policy directing the adoption of
privately created codes to serve the principles of efficiency and
economic competition. n44 Moreover, recent appellate case law supports
the recognition of the clear differences between, on the one hand,
privately developed standards that are adopted into law by reference
and, on the other hand, law created by legislators and judges. n45
Thus, the majority's superficially appealing contention that from a
policy perspective, "THE people" may do as they please with "THE law"
rests on the flawed foundation that "THE law," irrespective of whether
it be in the form of opinions, statutes, or regulatory standards or
codes -- and irrespective of by whom it is "made" -- should be treated
identically. Modern realities and case law directly contradict this
simplistic abstraction: The policy [*71] considerations that dictate
unlimited and unrestricted publishing of judicial opinions and statutes
simply do not appertain here.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n44 Id. at 8554:
The use of such standards, whenever practicable and appropriate is
intended to achieve the following goals:
a. Eliminate the cost to the Government of developing its own
standards and decrease the cost of goods procured and the burden of
complying with agency regulation.
b. Provide incentives and opportunities to establish standards
that serve national needs.
c. Encourage long-term growth for U.S. enterprises and promote
efficiency and economic competition through harmonization [uniformity]
of standards.
d. Further the policy of reliance upon the private sector to
supply Government needs for goods and services. (emphasis added)
n45 See County of Suffolk v. First American Real Estate Solutions, 261
F.3d 179 (2d Cir. 2001) (developing a two-pronged economic
incentive/public need test to determine whether tax maps developed by
the County of Suffolk were in the public domain from inception and
therefore stripped of copyright protection; citing Practice Management
and the panel opinion in Veeck, deciding that, as a matter of law, the
county's tax maps were not in the public domain); Practice Management,
121 F.3d 516, cert. denied, 522 U.S. 933, 139 L. Ed. 2d 263, 118 S. Ct.
339, opinion amended by 133 F.3d 1140 (finding that the American
Medical Association did not lose the right to enforce its copyright
when use of its promulgated coding system was required by government
regulations); CCC, 44 F.3d 61, cert. denied, 516 U.S. 817, 133 L. Ed.
2d 32, 116 S. Ct. 72 (upholding copyright of privately prepared listing
of automobile values that states required insurance companies to use);
see also 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright §
5.06[C], at 5-91 (2000) ("It is questionable whether [the due process
clause] justifies the denial of copyright to a private person or group
who produces such a model code.").
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*72]
The policy concerns supporting the retention of at least some copyright
protection for SBCCI are more persuasive and probative. First and most
importantly, unlike judges and legislators who are paid from public
funds to issue opinions and draft laws, SBCCI is a private sector,
not-for-profit organization which relies for its existence and
continuing services, in significant part, on revenues from the sale of
its model codes. n46 The necessity of maintaining the economic
incentive of copyright protection for these private entities prompted
the Ninth Circuit to rule in favor of the AMA's retention of its
copyright in the Physician's Current Procedures Terminology ("CPT")
despite a federal agency's adoption of the CPT:
The copyright system's goal of promoting the arts and sciences by
granting temporary monopolies to copyrightholders was not at stake in
Banks because judges' salaries provided adequate incentive to write
opinions. In contrast, copyrightability of the CPT provides the
economic incentive for the AMA to produce and maintain the CPT. "To
vitiate copyright, in such circumstances, could, without adequate
justification, prove destructive of the copyright interest, [*73] in
encouraging creativity," a matter of particular significance in this
context because of "the increasing trend toward state and federal
adoptions of model codes." n47
This approach is also consistent with the Second Circuit's two pronged
test in County of Suffolk for determining whether a work may be deemed
to be in the public domain: "(1) whether the entity or individual who
created the work needs an economic incentive to create or has a
proprietary interest in creating the work and (2) whether the public
needs notice of this particular work to have notice of the law." n48
Here, without the ability to control unrestricted gratuitous
dissemination of its model codes, SBCCI would lose significant revenue,
in turn substantially impinging on the financial incentive and ability
to continue creating and revising its model codes, absent some
alternative source of funds. n49
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n46 Approximately one-third, or $ 3 million, of SBCCI's annual $ 9
million dollar revenue is generated by sales of model codes to
contractors and other interested parties. The remaining revenue is
mainly derived from the annual fees of voluntary members and member
organizations. Voluntary members include scholars, builders,
contractors, and governmental entities that have adopted the code.
[*74]
n47 Practice Management, 121 F.3d at 518 (quoting 1 Nimmer on Copyright
§ 5.06[C], at 5-92 (1996))(emphasis added).
n48 County of Suffolk, 261 F.3d at 194.
n49 We note here that the second prong of the County of Suffolk test is
no barrier. As stated above, although the codes are necessary for a
citizen to have proper notice of the building code regulations of Anna
and Savoy, no allegations have been made here to suggest that Veeck was
denied notice or access to the codes. We stress that the right of
unlimited republication is a far cry from the rights of access to and
notice of the law.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
The importance of affording organizations like SBCCI protection from
attenuated third parties like Veeck -- even when motives are pure and
unfair financial competition is not the goal -- is best underscored by
verbalizing the natural consequence of reducing the revenues, and thus
the creative incentives, for organizations like SBCCI. Without private
code-creating entities, our smaller towns -- and even some of our
larger cities, states, and agencies of the federal [*75] government
-- would be forced to author their own regulatory codes. Such a task
would inefficiently expend the time and resources of the legislative
and executive bodies of these governmental entities, not to mention the
question of available expertise. To create codes of appropriate detail,
accuracy, and information, governmental bodies would have to enlist the
aid of technical experts, undoubtedly at considerable cost. Finally,
causing municipalities, states, and the federal agencies to engage in
this activity could lead to innumerable variations of any given code,
thereby undermining uniformity and, with it, safety and efficiency. For
small towns like Anna and Savoy, such a result could be even more
detrimental, as their limited resources well might be insufficient to
absorb the costs of creating their own codes. Ultimately, taxpayers
would end up paying for a service that is currently provided
efficiently, expertly, and at no expense to them.
I hasten to add that, for my analysis to have force, SBCCI need not be
put completely out of business. Continued maintenance of a revenue
source from sales of codes to individual owners, architects, engineers,
materials suppliers, builders [*76] and contractors as well as
libraries and other more attenuated purchasers, all of whom buy copies
of the codes directly from SBCCI, serves another public interest. I
refer to the continuation of SBCCI's independence from the self
interest of its dues-paying members, who otherwise might be in a
position to command more influence were SBCCI forced to obtain too
great a share of its revenue from such supporters. Clearly, SBCCI's
receipts from sales of the codes substantially reduces the potential
for greater dependence on its membership, presumably allowing SBCCI to
operate without becoming entirely beholden for its existence to
self-interested entities.
Finally, denying the Veecks of the world unrestricted republication and
dissemination rights does not obstruct reasonable and necessary usage
of and compliance with the adopted codes. I remain confident that the
copyright doctrines of fair use and implied license or waiver are more
than adequate to preserve the ability of residents and construction
industry participants to copy any portions of the code that they want
or need to view. The fair use doctrine would also protect the use of
the code, or portions of the code, as a teaching [*77] tool and would
allow experts, lawyers, and judges freely to cite the code in their
briefs or opinions without infringing SBCCI's copyright. These existing
internal safeguards in copyright law show up the majority's dire
predictions for the unrealstic hyperbole that they are.
It is important to keep in mind the record reality that neither Anna
and Savoy themselves, nor builders, contractors, design professionals,
or residents of Anna or Savoy, have complained of denied access to the
codes or being hampered in their efforts to use, copy, or comply with
the codes in a manner consistent with copyright law. Thus, the
well-established doctrines of implied license and fair use preserve the
public interest by allowing copyright protection to co-exist peacefully
with all convenient and necessary use of the model codes.
In sum, Veeck has no real support for his infringement, being relegated
to his abstract solipsism that due process immunizes any republication
of the SBCCI's model codes once they are enacted into law by reference.
This court's en banc majority holding today ignores case law from the
Supreme Court and other appellate courts, which have instructed us that
our conclusion [*78] here cannot be based on absolute or generic
pronouncements regarding the nature of THE law. Instead we should reach
our conclusion only after a careful weighing of the policy
considerations of due process and copyright law in the unique framework
of the particular facts of each case. Moreover, to the extent that
recent congressional enactments and federal agency policies give
guidance, they indicate that SBCCI's copyright protections should be
respected despite adoption of its codes into law.
Summarizing all pertinent factors -- (1) the lack of controlling
precedent from the Supreme Court or specific guidance from Congress on
the issue, (2) federal law and federal agency policy encouraging the
adoption of model codes and increasing the trend toward federal and
state adoption of model codes, (3) the palpable distinction between the
model codes at issue here and judicial opinions or legislative
enactments, (4) case law from our fellow circuits that supports the
retention of copyright protection even after adoption by reference into
law, (5) the complete absence of any denial of access, (6) the truism
that neither due process nor the metaphorical concept of citizen
ownership of the [*79] law mandates totally unrestricted publication
of adopted model codes, (7) SBCCI's identity as a private
not-for-profit company which, unlike courts and legislatures, needs
self-generated financial resources to continue independently creating
and modifying its codes, (8) the knowledge that governmental obtain,
free of cost, accurate, efficient and uniform regulatory codes which
otherwise would be time-consuming and expensive (if not impossible in
many instances) to develop in SBCCI's absence, and (9) the comfort that
all reasonable and necessary use, copying, and republication by
building owners, builders, contractors, design professionals, teachers,
lawyers, as well as citizens and officials of the towns themselves, is
assured protection by the fair use and implied license doctrines --
convinces me that the public policy scale is tipped in favor of
enforcing SBCCI's copyright protection against Veeck, who has never
been denied access to the codes of Anna and Savoy and almost certainly
never will be (but, if he ever is, he has alternative remediation
available).
Finding that, on balance, these policy considerations favor SBCCI, I
would conclude as a matter of law that, despite being [*80] adopted
into law, SBCCI's codes are not in the public domain, and that Veeck's
due process rights cannot be stretched far enough to permit his
completely unrestricted copying and dissemination of SBCCI's codes.
Veeck's other statutory and constitutional defenses similarly fail.
3. The Idea/Expression Dichotomy and Merger
Veeck insists (and now a majority of the active judges of this court
agree) that the model codes lose their copyright protection by virtue
of the idea/expression (or fact/expression) dichotomy in copyright law.
n50 Veeck's basic contention is that when a model code is enacted into
law by being adopted by reference, it automatically metamorphoses from
"expression" to emerge as an "idea" -- and that as an idea, it cannot
be protected. n51 Relatedly, he contends that the doctrine of "merger"
applies to nullify protection for expressions of an idea any time that
there are only one or a very limited number of ways to express a given
idea. n52 The cornerstone of both arguments is the definition of "idea"
in the context of a model code that has been enacted by reference.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n50 17 U.S.C. § 102(b):
In no case does copyright protection for an original work of
authorship extend to an idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of the form in
which it is described, explained, illustrated, or embodied in such
work.
see also Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S.
340, 349, 113 L. Ed. 2d 358, 111 S. Ct. 1282 (1991) ("Copyright law
assures authors the right to their original expression, but encourages
others to build freely upon the ideas and information conveyed by a
work. This principle, known as the idea/expression or fact/expression
dichotomy, applies to all works of authorship.") [*81]
n51 Mason v. Montgomery Data, Inc. 967 F.2d 135, 138 (5th Cir. 1992)
("Thus, while a copyright bars others from copying an author's original
expression of an idea, it does not bar them from using the idea
itself.") (emphasis in original)
n52 Id. at 138:
In some cases, however, it is so difficult to distinguish between
an idea and its expression that the two are said to merge. Thus, when
there is essentially only one way to express an idea, "copying the
'expression' will not be barred, since protecting the 'expression' in
such circumstances would confer a monopoly of the 'idea' upon the
copyright owner free of the conditions and limitations imposed by the
patent law." (citations omitted).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
a. Defining "Idea"
Veeck's argument fails because it misapprehends and misapplies the
"idea" concept in copyright law. "Idea" in copyright law is a term of
art which does not track its everyday, dictionary meaning. What
constitutes an "idea" in the lexicon of copyright law cannot be
determined by empirically analyzing a given fact situation until the
[*82] nascent dividing line between the "idea" and its "expression"
finally crystallizes; indeed, just the reverse is true. Case law
reveals that identification of the "idea" in a work is not the starting
point but the result of a judicial exercise that in turn is highly
dependent on the precise factual situation being tested. n53 Therefore,
designation of the enacted code as an idea vel non is a legal
conclusion to be reached by a court, not an initial factual finding to
be gleaned intuitively. That determination of idea is not antecedent to
a policy determination regarding the "copyrightability" of the code; to
the contrary, it is the logical end-product reached after competing
concerns are weighed judicially. n54
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n53 Id. ("A court's decision whether to apply the merger doctrine often
depends on how it defines the author's idea. For this reason, in
defining the idea the courts should be guided by 'the balance between
competition and protection reflected in the patent and copyright
laws.'")(citations omitted); Peter Pan Fabrics, Inc. v. Martin Weiner
Corp., 274 F.2d 487, 489 (2d Cir. 1960) (L. Hand, J.)(discussing what
the court termed as "verbal works," the court stated "There can be no
copyright in the 'ideas' disclosed but only in their 'expression.'
Obviously, no principle can be stated as to when an imitator has gone
beyond copying the 'idea,' and has borrowed its 'expression.' Decisions
must therefore inevitably be ad hoc."); see also Nimmer on Copyright §
13.03[B][2][a] at 13-60 ("Merely stating the rule [17 U.S.C. §
102(b)], however, does not make any easier the task of drawing the line
between where the idea ends and expression begins."). [*83]
n54 Cf. Nimmer on Copyright § 1.10[B][2] at 1-78 ("On the whole,
therefore, it appears that the idea-expression line represents an
acceptable balance as between copyright and free speech interests")
(citing United Video, Inc. v. F.C.C., 281 U.S. App. D.C. 368, 890 F.2d
1173, 1191 (D.C. Cir. 1989)).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Courts frequently must decide how and at what level to draw the
juridical line between idea and expression for copyright purposes.
Judge Learned Hand, applying the idea/expression dichotomy to determine
if one author's play infringed the work of another playwright,
remarked:
Upon any work, and especially upon a play, a great number of
patterns of increasing generality will fit equally well, as more and
more of the incident is left out. The last may perhaps be no more than
the most general statement of what the play is about, and at times
might consist only of its title; but there is a point in this series of
abstractions where they are no longer protected, since otherwise the
playwright could prevent the use of his 'ideas,' to which, apart from
their expression, his [*84] property never extended. Nobody has ever
been able to fix that boundary, and nobody ever can. n55
Our task in this case should have been to decide whether the "idea"
embodied in the code is defined, at one extreme of the continuum, as
the entire code itself in its tangible form, or if instead the "idea"
is defined at a more removed and abstract level further along that
continuum.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n55 Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.
1930). Commentators and courts have labeled this as Judge Hand's
"abstractions test."
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
My foregoing analysis has already demonstrated that the policy
considerations weigh in favor of granting SBCCI protection against
Veeck and other copiers and republishers identically situated. Having
laboriously arrived at this conclusion, and accepting that a building
code can be expressed in myriad ways, I am convinced that the code in
its tangible entirety is not the unprotected "idea" in this situation.
n56 None question that this is true for codes that [*85] have not
been enacted globally into law by reference, and nothing of which I am
aware can magically change the expression that is the copyrighted code
into a copyright idea by the simple act of adoption as a body of law.
Today I need not, and therefore do not, attempt to answer the question
of exactly where to draw the line and define the idea presented here.
It suffices that the idea at issue in the code is substantially more
abstract than the physical entirety of the code itself; so as a matter
of law, the code as a unitary whole is not an "idea" to be denied
copyright protection absolutely, but rather is one among a significant
number of possible "expressions."
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n56 In doing so, I acknowledge that specific portions and discrete
facts within the code could be considered facts or ideas, and therefore
unprotectable.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
b. Merger
Libertarian advocates of freedom from essentially all copyright
protection attempt to find a safe harbor in the merger doctrine as a
last resort when they do not prevail [*86] on the idea/expression
dichotomy. The merger doctrine, however, is a limited exception in
copyright law, intended to shelter only those rare cases in which the
"idea" is susceptible of more than one expression, but the number of
possible expressions is so finite and small as to have effectively
"merged" with the idea. n57 Similar to the general misconception of the
idea/expression dichotomy, the widely misunderstood merger doctrine
also depends on the level of abstraction at which the court defines the
"idea" that is alleged to have merged with its expression. n58
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n57 See generally CCC, 44 F.3d at 68; Nimmer on Copyright §
13.03[B][3] at 13-68 - 13-73.
n58 See supra note 37.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Again, Veeck can find no immunity in the merger doctrine because there
exists a plethora of ways to express a building code, thereby making
the merger doctrine inapplicable. Although some among the many highly
specific, technical, and detailed provisions within a building code
might be susceptible [*87] of being expressed in only one or a
handful of ways -- and thus conceivably be subject to merger -- a
total, unitary building code, in globo, may be written, organized, and
presented in any one of innumerable forms. All concede that many
code-drafting organizations like SBCCI exist and that they are
constantly creating competing versions of topical codes; yet each is
expressed differently -- and each is copyrighted. As there exist
considerably more than a tiny, finite number of ways to express a
building code, the merger doctrine is inapplicable and thus unavailable
to insulate Veeck's infringement from copyright protection.
4. Other Affirmative Defenses to Copyright Infringement
Veeck also contends that even if the codes are not in the public domain
and cannot be classified as "ideas," his code copying and dissemination
activities are protected by the doctrines of free speech, misuse,
waiver, and fair use under copyright law. n59 I address each of these
contentions in turn.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n59 Another defense, implied license, was raised by amicus curiae
Association of American Physicians & Surgeons, Inc., but was not
addressed by either party in the district court or on appeal. Hence, I
do not address it. See Christopher M. v. Corpus Christi Indep. Sch.
Dist., 933 F.2d 1285, 1292 (5th Cir. 1991).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*88]
a. Free Speech
None contends that SBCCI made any attempt to use its copyright to block
or interfere with the public's access to the municipal codes of Anna
and Savoy, Texas. In Schnapper v. Foley, the District of Columbia
Circuit held that the First Amendment does not require the voiding of a
copyright, even in a government-commissioned work, absent evidence that
access to the work had been denied. n60
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n60 215 U.S. App. D.C. 59, 667 F.2d 102, 115-16 (D.C. Cir. 1981).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Dealing only with the record facts, I find that Veeck's Free Speech
defense is further weakened by what he did not do: He did not first
obtain copies of the codes of these two cities and then publish them on
the Internet. Instead, he purchased directly from SBCCI a copy of all
its 1994 Standard Codes, which arrived bearing a copyright notice and a
license agreement. Ignoring these, Veeck copied that set onto his
computer and posted it on his own website, identifying it as containing
the municipal codes of the two towns but without advising [*89] the
identity of the author or the fact of copyright. That which Veeck did
and that which he did not do are inherently different: What he did not
do comes closer to an interested party's fair use of his local building
code; n61 what he did exemplifies a purchaser who assumes the risk of
actively disregarding the intellectual property rights held and
announced by the author/supplier of a commercial product.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n61 Veeck's fair use defense is discussed further infra.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Factually, in enforcing its copyright in its model codes, SBCCI simply
is not stifling access to, or speech about, THE law. SBCCI has not
violated the First Amendment vis-a-vis Veeck.
b. Misuse
The equity-based defense of copyright misuse, which prevents a culpable
author from prevailing in an action for the infringement of a misused
copyright, "'forbids the [copyright holder's] use of the copyright to
secure an exclusive right or limited monopoly not granted by the
Copyright Office and which is contrary to public policy to grant.'" n62
[*90] In Practice Management, the Ninth Circuit concluded that the
American Medical Association misused its copyright when it licensed its
coding system to the Health Care Financing Administration. The
copyright misuse was the AMA's imposition of a condition on its grant
of a license that the licensee-agency agree not to use any competing
system. n63 Veeck, in contrast, has raised no genuine issue of material
fact regarding any purported misuse by SBCCI of its copyright. The
summary judgment record is devoid of evidence that the organization
mandates the exclusive use of its codes or any other of its services as
a condition of a governmental subdivision's adopting one of the codes.
There is thus no record evidence of facts constituting misuse that in
turn would prevent enforcement of SBCCI's copyright.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n62 DSC Communications Corp. v. DGI Techs., Inc., 81 F.3d 597, 601 (5th
Cir. 1996) (quoting Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 977
(4th Cir. 1990)).
n63 Practice Management, 121 F.3d at 520.
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*91]
c. Waiver
Neither can Veeck prevail on his assertion that SBCCI expressly or
impliedly waives its entitlement to copyright protection vis-a-vis the
whole world when it successfully encourages municipalities to adopt its
codes by reference. I readily concede that a copyright can be waived by
the author's inaction. n64 Here, however, SBCCI expressly reserved its
copyright in the codes. The district court found undisputed the fact
that the materials Veeck received from SBCCI "contained the copyright
expressions of the Defendant." Having concluded that SBCCI's codes are
not in the public domain and that due process does not require
suppression of SBCCI's copyright, I am convinced that the organization
has done nothing to waive copyright protection expressly.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n64 See, e.g., Sherrod v. American Airlines, 132 F.3d 1112, 1119 n.5
(5th Cir. 1998).
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - -
Copyright also may be waived implicitly by virtue of a particular act,
even if waiver was neither explicit nor the intended result. n65
Veeck's argument [*92] in this regard is that by encouraging the
towns to adopt the codes, SBCCI impliedly waived its copyright
protection. This presupposes that waiver must be an "all or nothing"
proposition, and thus cannot be implicit as to some parties, such as
the adopting municipalities, without loosing its effectiveness
altogether, even unto strangers like Veeck. Except for his bald
assertion, however, Veeck presents no viable support for his waiver
proposition. Moreover, when properly analyzed, his argument is nothing
more than a thinly disguised reformulation of his due process/public
domain argument -- namely, that the mere fact of adoption automatically
and totally vitiated SBCCI's copyright and superceded SBCCI's
contractual protection as against all comers.
- - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - - -
n65 See, e.g., Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45, 48
(5th Cir. 1995) ("Therefore, even if it be assumed that the ribbon
flowers were copyrightable, the Littles through inadequate notice have
made them part of the public domain, and Norma Ribbon was free to copy
them.").
- - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - [*93]
As fully explicated above, my analysis reaches the conclusion that, as
a matter of law, SBCCI's codes are not in the public domain and that
they retain their copyright protection against Veeck and others thus
situated. I observe that the district court also concluded that the
fact that SBCCI had given the North Carolina Building Inspectors
Association permission to publish on the Internet that state's building
codes, which are modeled on the SBCCI codes, does not constitute
universal waiver. As the district court noted, "countless entities
provide free access to materials on the Internet and still retain
enforcement of their copyrights."
d. Fair Use
Finally, Veeck argues that his posting of SBCCI's copyrighted material
on the Internet constituted a "fair use." Congress has excepted from
infringement of copyrighted materials such specified uses as news
reporting, teaching, and research. n66 Courts are instructed to
consider four factors when deciding whether a particular use of
copyrighted material is a "fair use":
(1) the purpose and character of the use, including whether such
use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature [*94] of the copyrighted work;
(3) the amount and substantiality of the portion used in relation
to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of
the copyrighted work. n67
When, as with Veeck's infringing activity here, the use of a
copyrighted work is noncommercial, the ability to defeat an infringer's
affirmative defense of fair use requires "proof either that the
particular use is harmful, or that if it should become widespread, it
would adversely affect the potential market for the copyrighted work."
n68
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n66 See 17 U.S.C. § 107 (2000).
n67 Id.; see also Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569,
577, 127 L. Ed. 2d 500, 114 S. Ct. 1164 (1994).
n68 Sony Corp. v. Universal City Studios, 464 U.S. 417, 451, 78 L. Ed.
2d 574, 104 S. Ct. 774 (1984).
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The key question under the "purpose and character" prong is whether the
alleged infringer's product "merely supersedes [*95] the objects of
the original creation or instead adds something new with a further
purpose or different character, altering the first with new expression,
meaning, or message. In other words, it asks whether and to what extent
the new work is 'transformative.'" n69 Veeck's posting of the codes on
his website was not of a commercial nature or for nonprofit educational
purposes. Neither did his actions in this case have any transformative
effect on the original work. n70 In fact, there is neither an apparent
nor announced purpose behind Veeck's wholesale copying except that he
chose to do so and believes, empirically, that he has the unfettered
right to do so. He presents no affidavits or other summary judgment
evidence to suggest that the townsfolk of Anna and Savoy or
contractors, builders, or other interested parties, would not have
access to the codes without Veeck's intervention.
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n69 Campbell v. Acuff-Rose Music Inc., 510 U.S. at 579 (citations
omitted) (internal quotations omitted).
n70 In Campbell v. Acuff-Rose Music, while evaluating a fair use
defense, the Supreme Court discussed the degree to which a parodist's
work transforms a copyrighted original. See 510 U.S. at 579. There, the
parodist was the one making the transformation. In contrast, Veeck
admits that he did nothing more than copy SBCCI's model codes verbatim;
he did not transform them, through parody or otherwise. Therefore,
Veeck's argument that the adoption by reference of SBCCI's codes by
Anna and Savoy were "transformative" events does not find a home in
Campbell.
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The nature of the copyrighted work constitutes the second prong of the
fair use analysis. The work at issue is an original technical code
produced by a non-profit organization to encourage uniformity, safety,
and economy in a technical area for the benefit of an increasingly
complex society. Within the four-pronged jurisprudential test for fair
use, Veeck's position finds its only viable support in this one factor.
Although the code is an original work requiring creativity on the part
of SBCCI, it is also an informational and functional work. This fact
broadens the scope of the fair use defense. n71 In addition, the
copyrighted work in this case is part of the regulatory codes of Anna
and Savoy. Although this factor lends a modicum of support to Veeck's
position, it (1) must be considered in light of all the other factors,
and (2) is not as significant as the others in the fair use
determination. n72
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n71 4 Nimmer on Copyright § 13.05[A][2][a] (citing Diamond v. Am-Law
Corp., 745 F.2d 142 (2d Cir. 1984)).
n72 Id. (citing Campbell v. Acuff-Rose Music Inc., 510 U.S. at 586;
Robinson v. Random House, Inc., 877 F. Supp. 830, 841 (S.D.N.Y. 1995)).
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The third fair use factor -- amount and substantiality of portion used
vis-a-vis copyrighted work as a whole -- weighs heavily against Veeck.
He published verbatim the entire set of codes obtained from SBCCI. Even
though total copying does not automatically defeat a fair use defense,
and partial copying does not automatically validate it, the general
rule is that reproduction of an entire work constitutes an unfair use.
n73 Moreover, the codes copied here were not, literally speaking, "the"
codes of Anna and Savoy: Even though the towns' ordinances adopted the
model codes that Veeck copied, the enacting ordinances also contained
modifications and clarifications not found in the verbatim versions of
the SBCCI codes posted by Veeck.
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n73 Infinity Broadcast Corp. v. Kirkwood, 150 F.3d 104, 109 (2d Cir.
1998).
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Fourth, Veeck's use could have a substantially detrimental effect on
the market for the copyrighted work. In considering this factor, we
must assess the consequences of wide-spread conduct [*98] similar to
Veeck's, not just his alone. n74 There is no genuine dispute, based on
the summary judgment record, "that some meaningful likelihood of future
harm exists." n75 Veeck's posting of the codes on the Internet could
prove harmful by depressing the price and reducing SBCCI's market, thus
depriving it of income used in its socially valuable efforts of
confecting, promulgating, and revising model codes. Veeck's
non-commercial, free publication of the codes exacerbates the
detrimental effect on the potential market: By furnishing the codes
entirely free of charge, he could effectively destroy the market rather
than simply creating competition and price suppression. When viewed in
this light, the free promulgation of a work is seen to be potentially
more financially deleterious than is commercial piracy or cut-rate
competitive availability. Currently, the sale of the copyrighted codes
to builders, contractors, design professionals, and other interested
parties (1) accounts for one-third of SBCCI's income, (2) provides
incentive for SBCCI to stay in business so that small governmental
subdivisions, like the ones at issue in this case, can obtain the
benefits of a pre-crafted technical [*99] code, (3) fosters
uniformity, and (4) provides some measure of independence to SBCCI from
its members by holding down the extent of SBCCI's reliance on
membership dues and assessments.
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n74 Campbell v. Acuff-Rose Music Inc., 510 U.S. at 590 (consideration
of the fourth factor "requires the court to consider not only the
extent of the market harm caused by the particular actions of the
alleged infringer, but also 'whether unrestricted and wide-spread
conduct of the sort engaged in by the defendant ... would result in a
substantially adverse impact on the potential market' for the
original.") (quoting 4 Nimmer on Copyright § 13.05[A][4]).
n75 Sony Corp., 464 U.S. at 451 (emphasis added).
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The situation presented in this case is not one of mere copying of the
codes for personal use, or of Veeck's asking SBCCI for permission to
post the codes on the web and having permission denied. As Veeck copied
SBCCI's model code verbatim, the fair-use calculus weighs heavily
against [*100] him. Veeck's total copying and promulgation of SBCCI's
model code, and the potentially harmful effect of such copying on the
market, render his use unfair.
C. SBCCI's Infringement Counterclaim
SBCCI holds valid copyrights in its codes, and Veeck has expressly
admitted copying them. In the absence of a viable defense, the district
court was correct in holding that SBCCI established copyright
infringement. Under these circumstances, I am satisfied that the
district court's conclusions and its award of an injunction and the
minimum statutory damages on each of the five counts of copyright
infringement are free of error. n76 Likewise, I find no abuse of
discretion in the district court's award of attorneys' fees. n77
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n76 At the pertinent time, 17 U.S.C.A. § 504(c)(1) set the range of
statutory damages for each act of copyright infringement at no less
than $ 500 or more than $ 20,000. A 1999 amendment has raised those
amounts to $ 750 and $ 30,000, respectively. Id.; Digital Theft
Deterrence and Copyright Damages Improvement Act of 1999, Pub. L. No.
106-160, § 2(1), 113 Stat. 1774 (1999). [*101]
n77 Hogan Systems, Inc. v. Cybresource Int'l, Inc., 158 F.3d 319, 325
(5th Cir. 1998) (applying abuse of discretion standard of review to
award of attorneys' fees in copyright case). Veeck did not brief the
questions of the district court's grant of a permanent injunction or
award of damages and attorneys' fees, and therefore waived them.
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III. CONCLUSION
Two decades ago, in BOCA, n78 the First Circuit wrestled with the
serious issues raised by what was then only a "possible trend" toward
local, state, and federal adoption of model codes. n79 That court
wisely left open for future evaluation the modern realities surrounding
technical regulatory codes and standards. As the BOCA court wrote,
groups that develop such works "serve an important public function;
arguably they do a better job than could the state alone in seeing that
complex yet essential regulations are drafted, kept up to date and made
available." n80 In like manner, the two federal circuits that
subsequently addressed challenges similar to that considered by the
First Circuit in BOCA have declined [*102] to invalidate copyrights
in works incorporated by reference into the law. n81 In the legislative
arena, Congress has decreed the policy that federal agencies adopt
privately authored technical standards without voiding the protection
afforded to the authors by copyright; and the OMB has directed all
federal agencies adopting such standards to respect the copyright
protections of the copyright holders -- the diametric opposite of
causing copyright protection to vanish when the work is adopted as law.
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n78 628 F.2d 730.
n79 Id. at 736.
n80 Id.
n81 See Practice Management, 628 F.2d 730; CCC, 44 F.3d 61.
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I emphasize that my analysis is restricted to the narrow set of facts
and circumstances before us. At bottom, I think it improvident for this
court to legislate judicially an absolute, per se rule that referential
enactment of a copyrighted work like a technical code into law
mystically metamorphoses it into an "idea," puts it into [*103] the
public domain, waives its copyright protection universally, and
otherwise strips it of copyright protection vel non. Under the instant
circumstances, no one is being denied reasonable access to the SBCCI
codes that have been adopted in globo by local governments; neither
does Veeck's specific actions, however altruistic they might have been,
make a viable case for fair use. Nevertheless, I readily concede, that
even slightly different facts under but slightly different
circumstances could convince me to support a different result, albeit
not a per se rule.
Today, the trend toward adoption of privately promulgated codes is
widespread and growing, and the social benefit from this trend cannot
be seriously questioned. The necessary balancing of the countervailing
policy concerns presented by this case should have led us to hold that,
on these facts, the copyright protection of SBCCI's privately authored
model codes did not simply evanesce ipso facto, when the codes were
adopted by local governments; rather, they remain enforceable, even as
to non-commercial copying, as long as the citizenry has reasonable
access to such publications cum law -- and subject, of [*104] course,
to exceptions for implied or express waiver or consent, fair use, or
other recognized exceptions, when applicable. For these reasons, I
cannot join in the majority's inflexible reasoning and unnecessarily
overbroad holding. I therefore respectfully dissent.