Copyright Lawyers on SCOTUS Decision in Georgia v. Public.Resource.Org: Expected, But Possibly Problematic

By Eileen McDermott
April 29, 2020

“If there was a surprise, it was the Court’s 5-4 split, both in the philosophical nature of the split (as Justices Ginsburg and Thomas both dissented, with Justice Breyer joining both dissents), as well as in how close the final outcome turned out to be.” – Preston Heard and Emily Whittaker, Womble Bond Dickinson

On Monday, the U.S. Supreme Court ruled in Georgia et al. v. Public.Resource.Org., Inc. that a state code revision commission cannot claim copyright protection over annotated state code. The ruling upheld the U.S. Court of Appeals for the Eleventh Circuit’s 2018 decision in Code Revision Commission v. Public.Resource.Org, Inc., which reversed-in-part, vacated-in-part and remanded a lower court’s ruling in a copyright infringement case involving an annotated version of Georgia’s official state code. Applying Supreme Court case law from the 19th Century, the Eleventh Circuit found that no valid copyright interest can be asserted in any part of the annotated state code. In affirming that holding, the High Court on Monday said that the judicially-created “edicts doctrine” precluded government officials with the power to speak with the force of the law to be considered “authors” of the works they create for copyright purposes.

The decision was not a shock, but could have serious implications going forward. Here is what some members of the copyright bar had to say.

Jeffrey Cadwell, Dorsey & Whitney

The Court’s holding is rooted in the government edicts doctrine, which states that “officials empowered to speak with the force of law cannot be the authors of—and therefore cannot copyright—the works they create in the course of their official duties.” The basis for this doctrine is that no one party should be able to own the law.

A key takeaway is that authorship matters. If legislators produce work product (either on their own or by virtue of a work for hire agreement that deems the legislators to be the author) when acting within their legislative capacity, then the government edicts doctrine applies, and there is no copyright protection. But if a private party produces the work product, then the government edicts doctrine does not apply, and copyright protection is available.

This is not to say that all works created by state governments are not protectable under copyright law. As the Court noted, works prepared by non-lawmaking officials employed by public universities, libraries, and tourism offices, for example, can still benefit from copyright protection.

Preston Heard and Emily Whittaker, Womble Bond Dickinson (US) LLP

The Supreme Court’s decision in Georgia v. Public.Resource.org was somewhat predictable, given the long-standing prohibition on federal bodies copyrighting legal edicts under 17 U.S.C. § 105, as well as the Eleventh Circuit’s strongly worded, unambiguous decision for the public watchdog group and against the State of Georgia. If there was a surprise, it was the Court’s 5-4 split, both in the philosophical nature of the split (as Justices Ginsburg and Thomas both dissented, with Justice Breyer joining both dissents), as well as in how close the final outcome turned out to be. The decision also puts nearly half of the states who rely on annotation-related revenue in the lurch, so it will be interesting to see how the states react and whether annotations will continue and in what form.

Jason Rosenberg, Alston & Bird

Disclosure: Rosenberg was part of a team at Alston & Bird that represented Public.Resource.Org in this case at both the district court and 11th Circuit levels. They were not involved with the Supreme Court phase.

Chief Justice Roberts wrote a compelling rationale for the Supreme Court’s holding that the annotations in the Official Code of Georgia Annotated are government edicts and outside the reach of copyright. The approach was straightforward, as it focused on the threshold question of whether a body given legislative authority to create annotations could even be an “author” under the Copyright Act in the first place, rather than on whether the annotations themselves have the “force of law.”  Roberts’ point that a potential “fair use” defense, as some suggested could apply, would provide little comfort was particularly welcome. Copyright practitioners have long realized that the success of such a defense is notoriously unpredictable. A cause to celebrate for those seeking broader, free access to public materials, the decision is sure to cause frustration to the many states which, like Georgia, charge for access to their annotated codes.  Finally, though Justice Thomas’ dissent posits that the majority has made things more, not less, complicated, I do not believe that decision will be as difficult to apply in the real world as he suggests. Nor do I believe that states will now decide to stop creating annotated versions of their laws, even if the economic motives for Lexis (or similar providers) to do so are no longer the same.

Mitchell SteinMitchell Stein, Sullivan & Worcester

The decision represents a significant hit to the legal publishing industry and to the general public. Publishers will no longer be able monetize their statutory annotations by being able to charge users a fee. Unless the various states step up and pay Lexis and other private companies for their work in preparing annotations, there will be no financial incentive for publishing companies to continue preparing them. The public suffers because it may soon be denied access to information that would be useful, and in some situations essential, for interpreting state law. The Court recognized that adverse consequences like these could arise from its decision, but left it to the Congress to fix the problem through legislation.

 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments. Join the discussion.

  1. Anon April 30, 2020 7:33 am

    While I do applaud the inclusion of the contrarian view from Mitchell Stein, how view crumbles at a first premise he would want to rest on: “ significant hit to the … general public.“

    The opposite is the actual take-away, as it is the general public that is protected from a pay-wall mentality on items that need be available to all (regardless of ability to pay).

  2. Allison April 30, 2020 10:19 am

    Thank you. That provided some very nice insight.

  3. Paul F. Morgan April 30, 2020 11:29 am

    The real problem, not directly addressed, has been states granting monopolies to the highest bidder publisher who then charges the public the highest possible prices,

  4. anon April 30, 2020 12:11 pm

    IANAL, but how does making something unable to be protected by copyright law stop you from charging a fee for it?

    Yes, once someone buys it from you they *could* share it for free thereafter, and you’d have no *legal* means of stopping them. But you could still charge someone from obtaining that information *from you*. (there is something to be said from a consumer purchasing it from an official, rather than obtaining it from a third party for free)

    I am completely opposed to all copyright law, but specifically here – the courts regularly use annotated versions to interpret the law. If we confined the courts to the use of the (un-copyright-able) statues and (un-copyright-able) case law… which, i think there is something to be said for that, then so be it. But as long as the courts use annotated versions as references, it is also required material for a citizen to interpret the law themselves.

    Would the courts be willing to take a step back, and maybe think.. we shouldn’t be using copyright-able material for any of our work?

    If they were willing to do that, I think it would become much more clear that either (1) using annotated versions are required for the courts to do their job, and so should be un-copyright-able or (2) annotated versions are not required for the courts to do their job and so are copyright-able.

  5. Vicki April 30, 2020 12:21 pm

    As a taxpayer, I’ve already paid for the salaries of these elected and non-elected government officials that write these laws, AND for the state-paid annotations to the laws that help me interpret these laws. I find it disgusting that a state would hold this information hostage to a paywall – laws that everyone is expected to follow absolutely should not be a source of state revenue – annotated or not.

    “The decision also puts nearly half of the states who rely on annotation-related revenue in the lurch, so it will be interesting to see how the states react and whether annotations will continue and in what form”

    This is a joke, right? Write a law that no one understands, and then charge people to get an interpretation so they can follow it correctly and not get penalized.

  6. Pro Say April 30, 2020 3:41 pm

    Big +1’s anon and Vicki.

    And as well; PACER should be free to all.

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