`
`IN THE UNITED STATES COURT OF APPEALS
`FOR THE ELEVENTH CIRCUIT
`__________________________________________________________________
`Appeal No. 17-11589-HH
`District Court No. 1:15-CV-2594-RWS
`__________________________________________________________________
`
`PUBLIC.RESOURCE.ORG, INC.
`
`Defendant/Appellant,
`
`CODE REVISION COMMISSION ET AL,
`
`Plaintiffs/Appellees.
`
`On Appeal from the United States District Court
`for the Northern District of Georgia
`__________________________________________________________________
`APPELLANT’S REPLY BRIEF
`__________________________________________________________________
`Elizabeth H. Rader
`Sarah P. LaFantano
`ALSTON & BIRD LLP
`ALSTON & BIRD LLP
`The Atlantic Building
`1201 W. Peachtree Street
`950 F. Street, N.W.
`Atlanta, GA 30309
`Washington, DC 20004
`(404) 881-7000
` (202) 239-3008
`sarah.lafantano@alston.com
` elizabeth.rader@alston.com
`
`
`
`
`
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 2 of 39
`Public.Resource.Org., Inc. v. Code Revision Commission et al.
`No. 17-11589-HH
`
`
`CERTIFICATE OF INTERESTED PERSONS AND CORPORATE
`DISCLOSURE STATEMENT
`Pursuant to Federal Rule of Appellate Procedure 26.1 and Eleventh Circuit
`
`Rule 26.1, Appellant Public.Resource.Org, Inc. provides the following Certificate of
`
`Interested Persons and Corporate Disclosure Statement:
`
`• Acton, Anne M. (Amicus Curiae)
`
`• Adelman, Beth (Amicus Curiae)
`
`• Alston & Bird, LLP (Counsel for Defendant-Appellant)
`
`• American Civil Liberties Union Foundation (Amicus Curiae)
`
`• American Civil Liberties Union Foundation of Georgia, Inc. (Amicus
`
`Curiae)
`
`• Anazalone, Filippa Marullo (Amicus Curiae)
`
`• Askew, Anthony B. (Counsel for Plaintiff-Appellees)
`
`• Bhandari, Esha (Counsel for Amici Curiae American Civil Liberties Union
`
`Foundation and American Civil Liberties Union Foundation of Georgia,
`
`Inc.)
`
`• Bowler, John M. (Counsel for Amicus Matthew Bender & Co., Inc.)
`
`• Butler, Brandon C. (Amicus Curiae)
`
`• Carrier, Michael A. (Amicus Curiae)
`
`• CaseText (Amicus Curiae)
`
`
`
`C-1 of 6
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 3 of 39
`Public.Resource.Org., Inc. v. Code Revision Commission et al.
`No. 17-11589-HH
`
`
`• Chisolm, Tuneen (Amicus Curiae)
`
`• Clifford, Ralph D. (Amicus Curiae)
`
`• Code Revision Commission (Plaintiff-Appellee, on behalf of and for the
`
`benefit of the General Assembly and the State of Georgia)
`
`• Cohen, Hon. Mark H. (U.S. District Court Judge for the Northern District of
`
`Georgia (originally assigned))
`
`• Courtney, Kyle K. (Amicus Curiae)
`
`• Danner, Richard A. (Amicus Curiae)
`
`• Duan, Charles (Counsel for Amici Curiae Public Knowledge, The American
`
`Library Association, The Association of Research Libraries, The
`
`Organization for Transformative Works, The Institute of Intellectual
`
`Property and Social Justice and forty-one (41) librarians and professors of
`
`law)
`
`• Durie Tangri, LLP (Counsel for Defendant-Appellant)
`
`• Emerson, Amy A. (Amicus Curiae)
`
`• Fastcase, Inc. (Legal publisher having an interest in offering its subscribers
`
`the Official Code of Georgia, Annotated without the need for a license)
`
`• Ford, Roger Allan (Amicus Curiae)
`
`• Fortney, Katie (Amicus Curiae)
`
`
`
`C-2 of 6
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 4 of 39
`Public.Resource.Org., Inc. v. Code Revision Commission et al.
`No. 17-11589-HH
`
`
`• Free Law Project (Amicus Curiae)
`
`• Frye, Brian L. (Amicus Curiae)
`
`• General Assembly of Georgia (Beneficiary of Plaintiffs-Appellees)
`
`• Georgia Attorney General’s Office (Counsel for State of Georgia)
`
`• Ghosh Shubha (Amicus Curiae)
`
`• Gratz, Joseph C. (Counsel for Defendant-Appellant)
`
`• Halperin, David (Counsel for Defendant-Appellant)
`
`• Hansen, David R. (Amicus Curiae)
`
`• Heald, Paul Justin (Amicus Curiae)
`
`• Hirsch, Kenneth J. (Amicus Curiae)
`
`• Hirsch, Michelle J. (Counsel for State of Georgia)
`
`• Hobbs, Michael B. (Counsel for Amicus Matthew Bender & Co., Inc.)
`
`• Joergensen, John (Amicus Curiae)
`
`• Johnson, Eric E. (Amicus Curiae)
`
`• Judicata (Amicus Curiae)
`
`• Juelsgaard Intellectual Property and Innovation Clinic (Counsel for Amici
`
`Curiae Casetext, Free Law Project, Judicata, OpenGov Foundation, and
`
`Ravel)
`
`• Keele, Benjamin J. (Amicus Curiae)
`
`
`
`C-3 of 6
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 5 of 39
`Public.Resource.Org., Inc. v. Code Revision Commission et al.
`No. 17-11589-HH
`
`
`• Kennedy, Jocelyn (Amicus Curiae)
`
`• Klinefelter, Anne (Amicus Curiae)
`
`• LaFantano, Sarah Parker (Counsel for Defendant-Appellant)
`
`• Lantagne, Stacey M. (Amicus Curiae)
`
`• Lee, Sarah Hooke (Amicus Curiae)
`
`• Leiter, Richard (Amicus Curiae)
`
`• Lexis/Nexis Group (Parent of Amicus Matthew Bender & Co., Inc.)
`
`• Liebesman, Yvette Joy (Amicus Curiae)
`
`• Macklin, Lisa A. (Amicus Curiae)
`
`• Malamud, Carl (President and Founder of Defendant-Appellant)
`
`• Malone, Phillip R. (Counsel for Amici Curiae Casetext, Free Law Project,
`
`Judicata, OpenGov Foundation, and Ravel)
`
`• Matthew Bender & Co., Inc. (Amicus and licensee of Plaintiffs-Appellees)
`
`• Mayer, John (Amicus Curiae)
`
`• Meunier Carlin & Curfman LLC (Counsel for Plaintiffs-Appellees)
`
`• Mills Legal Clinic at Stanford Law School (Counsel for Amici Curiae
`
`Casetext, Free Law Project, Judicata, OpenGov Foundation, and Ravel)
`
`• Mtima, Lateef L. (Amicus Curiae)
`
`• OpenGov Foundation (Amicus Curiae)
`
`
`
`C-4 of 6
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 6 of 39
`Public.Resource.Org., Inc. v. Code Revision Commission et al.
`No. 17-11589-HH
`
`
`• Pavento, Lisa C. (Counsel for Plaintiffs-Appellees)
`
`• Pearlman, Jeffrey (Counsel for Amici Curiae Casetext, Free Law Project,
`
`Judicata, OpenGov Foundation, and Ravel)
`
`• Public.Resource.Org, Inc. (Defendant-Appellant)
`
`• Rader, Elizabeth H. (Counsel for Defendant-Appellant)
`
`• Ravel (Amicus Curiae)
`
`• Rosenberg, Jason D. (Counsel for Defendant-Appellant)
`
`• Schemmel, Lawrence A. (Counsel for State of Mississippi)
`
`• Seipp, David J. (Amicus Curiae)
`
`• Selby, Courtney (Amicus Curiae)
`
`• Silbey, Jessica (Amicus Curiae)
`
`• Smith, Kevin L. (Amicus Curiae)
`
`• Sorkin, David E. (Amicus Curiae)
`
`• State of Georgia (Beneficiary of Plaintiffs-Appellees)
`
`• State of Mississippi (State alleging Defendant-Appellant infringes copyright
`
`in its official code)
`
`• Story, Hon. Richard W. (U.S. District Judge for the Northern District of
`
`Georgia )
`
`• Street, Leslie (Amicus Curiae)
`
`
`
`C-5 of 6
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 7 of 39
`Public.Resource.Org., Inc. v. Code Revision Commission et al.
`No. 17-11589-HH
`
`
`• Thomas, Warren J. (Counsel for Plaintiffs-Appellees)
`
`• Troutman Sanders LLP (Counsel for Amicus Matthew Bender & Co., Inc.)
`
`• Tushnet, Rebecca (Amicus Curiae)
`
`• Walters, Edward (Co-Founder and CEO of Fastcase, Inc.)
`
`• Wheeler, Ronald E. (Amicus Curiae)
`
`• Williams, Beth (Amicus Curiae)
`
`• Zimmerman, Katie (Amicus Curiae)
`
`• Zittrain, Jonathan L. (Amicus Curiae)
`
`Appellant Public.Resource.Org, Inc. certifies that it is a California non-profit
`
`corporation, that it has no parent corporation, that there is nothing to declare with
`
`respect to stock ownership, and that there is no other entity related to, or affiliated
`
`with, Public.Resource.Org, Inc. that has a financial interest in the outcome of the
`
`claims asserted against it in this case.
`
`.
`
`
`
`C-6 of 6
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 8 of 39
`
`TABLE OF CONTENTS
`
`CERTIFICATE OF INTERESTED PERSONS ................................................... C-1
`
`TABLE OF CONTENTS ........................................................................................... i
`
`TABLE OF AUTHORITIES ................................................................................... iii
`
`INTRODUCTION .................................................................................................... 1
`
`ARGUMENT ............................................................................................................ 3
`
`
`A.
`
`
`B.
`
`C.
`
`
`
`
`
`
`
`
`
`
`
`
`Reversing the district court’s decision, on the grounds that the
`O.C.G.A. is the only official and definitive publication of
`Georgia’s code would only apply and clarify longstanding
`federal common law ............................................................................. 3
`
`The district court erred by only considering summaries of
`decisions because Public Resource’s counterclaim and motion
`for summary judgment required the court to consider whether
`other kinds of annotations are copyrightable ..................................... 12
`
`1.
`
`
`2.
`
`To resolve Public Resource’s declaratory judgment
`counterclaim, the district court should have clearly
`delineated the metes and bounds of the State’s copyright,
`if any, in the nonstatutory portions of the O.C.G.A ................ 14
`
`Contrary to the Commission’s explanation, the district
`court did not analyze all the issues Public Resource
`raised in support of its declaratory judgment
`counterclaims ........................................................................... 17
`
`Public Resource’s use of the O.C.G.A. was both transformative
`and noncommercial, and the District Court’s holding that it was
`not a fair use is an error as a matter of law ........................................ 20
`
`i
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 9 of 39
`
`1.
`
`
`2.
`
`
`3.
`
`The Commission mischaracterizes the transformative
`nature and noncommercial purpose of Public Resource’s
`providing access to and engagement with the O.C.G.A.
`on the Internet .......................................................................... 20
`
`Public Resource’s posting the whole O.C.G.A., including
`the annotations, was necessary in light of its purpose to
`improve access and usability of Georgia’s only official
`code .......................................................................................... 22
`
`Public Resource presented evidence, which was
`unrebutted, that neither the Commission nor Lexis/Nexis
`has lost any sales from Public Resources Use or that it
`would suffer if others made the same use of the O.C.G.A ...... 23
`
`
`CONCLUSION ....................................................................................................... 25
`
`CERTIFICATE OF COMPLIANCE ...................................................................... 27
`
`CERTIFICATE OF SERVICE ............................................................................... 28
`
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 10 of 39
`
`TABLE OF CITATIONS
`
` Page(s)
`
`
`Cases
`Banks v. Manchester,
`
`128 U.S. 244 (1888)......................................................................................... 8
`
`BUC Int’l. Corp. v. Int’l Yacht Council Ltd.,
`
`489 F.3d 1129 (11th Cir. 2007) .....................................................................19
`
`Building Officials & Code Adm. Int’l. Inc. v. Code Tech, Inc.,
`
`628 F.2d 730 (1st Cir. 1980)............................................................................ 8
`
`Callaghan v. Myers,
`128 U.S. 617 (1888).............................................................................. 8, 9, 10
`
`
`Cambridge Univ. Press v. Patton,
`
`769 F.3d 1232 (11th Cir. 2014) .............................................................. 21, 22
`
`County of Suffolk v. First Am. Real Estate Solutions,
`
`261 F.3d 179 (2d Cir. 2001) ..........................................................................11
`
`Davidson v. Wheelock,
`
`27 F. 61 (Minn. Cir. Ct. 1866) ......................................................................... 8
`
`Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
`
`499 U.S. 340 (1991)................................................................................ 18, 19
`
`Harrison v. Code Revision Comm’n,
`
`244 Ga. 325 (1979) .......................................................................................... 8
`
`Home Design Servs. Inc. v. Turner Heritage Homes,
`
`825 F.3d 1314 (11th Cir. June 17, 2016) .......................................................18
`
`Intervest Constr., Inc. v. Canterbury Estate Homes, Inc.,
`
`554 F.3d 914 (11th Cir. 2008) .......................................................................18
`
`
`
`iii
`
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 11 of 39
`
`Nash v. Lathrop,
`
`142 Mass. 29 (1886) ........................................................................................ 8
`
`Sony Corp. of Am. v. Universal City Studios, Inc.,
`
`464 U.S. 417 (1984).......................................................................................24
`
`United States v. Lanier,
`
`520 U.S. 259 (1997)......................................................................................... 8
`
`Veeck v. Southern Building Code Cong. Int’l,
`
`293 F.3d 791 (5th Cir. 2002) ........................................................................... 8
`
`Weitzman, LLC v. Microcomputer Res.,
`
`542 F.3d 859 (11th Cir. 2008) ......................................................................... 7
`
`Wheaton v. Peters,
`
`33 U.S. 591 (1834).........................................................................................10
`
`Rules and Statutes
`
`17 U.S.C. § 105 .......................................................................................................... 7
`
`17 U.S.C. § 107 .......................................................................................................... 2
`
`17 U.S.C. § 411(a) ..................................................................................................... 7
`
`28 U.S.C. § 2201(a) .................................................................................................14
`
`
`Other Authorities
`
`Compendium of U.S. Copyright Office Practices ....................................... 5, 6, 7, 11
`
`
`
`
`
`
`
`
`iv
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 12 of 39
`
`INTRODUCTION
`
`
`This case should not turn on whether summaries of judicial opinions in the
`
`Official Code of Georgia, Annotated are sufficiently original and creative to be
`
`copyrightable. The entire O.C.G.A. is in the public domain from its creation,
`
`because it is the only official, authoritative statement of Georgia law and thus an
`
`edict of government. It is a longstanding doctrine in the law of the United States
`
`that statutes and other state-sanctioned sources of the law of the country or state
`
`are not protectable by copyright. The O.C.G.A. is the only official code of
`
`Georgia. The Commission and its publisher assist with its publication on behalf of
`
`the General Assembly. The legislature amends the O.C.G.A. each time it considers
`
`a new bill, and the legislature endorses the complete O.C.G.A. after it has been
`
`prepared. The district court’s decision to consider the O.C.G.A.’s annotations as
`
`separate works, for the purpose of considering whether they are copyrightable
`
`subject matter, is therefore an error of law. This is a Constitutional issue of law,
`
`reviewed de novo, because First Amendment and Due Process concerns underpin
`
`the established doctrine that edicts of government are not copyrightable.
`
`The Code Revision Commission focuses on copyrightability of the
`
`O.C.G.A.’s annotations that are summaries of judicial decisions because the
`
`summaries are the only kind of annotations where they have a colorable (though
`
`
`
`1
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 13 of 39
`
`not ultimately compelling) argument that they are sufficiently original and creative
`
`for copyright protection. This only responds to Public Resource’s secondary,
`
`alternative argument: that each of the various kinds of annotations are not
`
`copyrightable for grounds expressly stated in the copyright act or established in
`
`federal common law. These grounds include lack of originality or creativity and
`
`the merger doctrine. The different copyrightability arguments require different
`
`analyses, but the Commission confusingly mingles these analyses. Furthermore,
`
`the district court simply skipped over several of Public Resource’s arguments,
`
`leaving this Court no way to review its decision on them. By treating judicial
`
`summaries as representative of all the annotations in the O.C.G.A., the district
`
`court oversimplified its analysis. In this way, it also failed to enter a declaratory
`
`judgment that clearly declared each party’s rights. If the district court’s decision is
`
`affirmed, it would leave confusion about how Public Resource and others can
`
`lawfully use the O.C.G.A.
`
`Finally, addressing Public Resource’s third defense, fair use, the
`
`Commission merely defends and elaborates on the district court’s cursory analysis
`
`of the four factors in 17 U.S.C. § 107. But it cannot save the district court’s order
`
`from the several clear errors that resulted in its holding that, even if the
`
`Commission holds a valid, enforceable copyright in the O.C.G.A’s annotations,
`
`Public Resource’s use of the O.C.G.A. was a fair use under the Copyright Act.
`
`
`
`2
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 14 of 39
`
`ARGUMENT
`
`
`A. Reversing the district court’s decision, on the grounds that the O.C.G.A. is
`the only official and definitive publication of Georgia’s code would only
`apply and clarify longstanding federal common law.
`
`
`The most important issue in this case is whether the state of Georgia can
`
`assert copyright in the annotations in the O.C.G.A. to prohibit copying of its entire
`
`official code, even though Georgia’s General Assembly, through the Commission,
`
`requires these specific annotations and supervises their preparation by its private
`
`publisher. Op. Br. at 15, 25-26. As Public Resource and amicus ACLU have
`
`explained, this is a constitutional issue. Id. at 29-30; ACLU Br. at 13, 23, 25. One
`
`of the reasons laws and related state-mandated sources of legal interpretation of
`
`statutes are not protected by copyright is to ensure citizens’ access to the laws that
`
`govern them to ensure that citizens are informed when they exercise their
`
`constitutional right to discuss the content, effects and fairness of those laws.
`
`ACLU Br. at 23-25; Public Knowledge (“PK”) Br. at 18-19, 24-25. Another
`
`reason for the doctrine is to give citizens notice of governing laws to protect their
`
`right to due process. PK Br. at 24, 27-28; ACLU Br. at 25-26.
`
`Yet the Commission barely acknowledges this critical issue in the summary
`
`of its argument. Instead, its brief begins by defending the General Assembly’s
`
`1982 decision to contract with a private publisher to publish an annotated Georgia
`
`Code and to assert copyright against another publisher of Georgia’s statutes.
`3
`
`
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 15 of 39
`
`Comm’n Br. at 34-35, 51-52. It tells the Court the General Assembly cut its deal
`
`with LexisNexis to keep the O.G.C.A.’s price low for Georgia’s citizens. Because
`
`the General Assembly could have continued to only publish its laws in the
`
`uncodified Georgia Laws, the annotations are a bonus it generously provides to
`
`Georgia’s citizens, and are none of Public Resource’s or amici’s business. Id. at
`
`35-36, 52-53.
`
`Finally touching on the edicts-of-government doctrine twenty-six pages into
`
`its brief, the Commission mischaracterizes Public Resource’s argument. It states
`
`that Public Resource argues that copyrightability of the O.C.G.A. must be
`
`considered based on the work as a whole—that the statutory materials in the
`
`O.C.G.A. render the entire work uncopyrightable. Id. at 43. Public Resource’s
`
`position is different: Georgia’s legislature has declared the LexisNexis-annotated
`
`code, the O.C.G.A., to be the only official and authoritative code of Georgia; thus
`
`the whole unified work is not subject to copyright. Op. Br. at 18-19; 30-31. Public
`
`Resource does not argue that the statutes codified in the O.C.G.A. somehow infect
`
`otherwise copyrightable elements in the O.C.G.A. Instead, the entire O.C.G.A.
`
`including the annotations are in the public domain from creation as a result of the
`
`State Legislature’s determinations that the official code must be annotated and that
`
`only the annotated code is official. Id. at 33-34. Moreover, the General Assembly,
`
`through the Commission, supervises and approves the annotations. Lexis/Nexis’s
`
`
`
`4
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 16 of 39
`
`editors’ numerous selections, coordination and arrangements carry out the General
`
`Assembly’s and the Commission’s deliberate direction to Lexis/Nexis that the
`
`official Code shall contain annotations, captions, titles, catchlines, headings,
`
`history lines, editorial notes, cross references and so on. Doc. 44 at 3; Doc. 29-8 at
`
`2. The State’s close direction of the preparation of the annotations is additional
`
`evidence that those annotations are an integral part of the State government’s
`
`official statement of its law and not subject to copyright.
`
`The Commission contends that this Court’s reversal of the district court’s
`
`decision, on the grounds that the O.C.G.A. is a unified edict of government, would
`
`be a watershed holding. But the reversal and holding for which Public Resource
`
`argues would merely follow longstanding and controlling precedent holding edicts
`
`of government and other government-created statements of the law not subject to
`
`copyright.1 Op. Br. at 28-30, 40-32.
`
`
`1 Public Resource’s proposed amendment to the Copyright Act, supported by 115
`law professors and law librarians, would do the same thing, clarifying the
`confusion created by the unfortunate statement in the Copyright Office’s
`Compendium that the Office may register annotations unless they “have the force
`of law.” The Commission crows that Public Resource’s founder has advocated for
`an amendment to the U.S. Copyright Act to provide that state and local official
`legal documents are uncopyrightable for reasons on public policy. Comm’n Br. at
`28. The proposed amendment is not evidence, however, for the contention that
`annotations are only copyrightable if they have the force of law. Rather, the
`proposed amendment seeks to codify the preexisting federal common law doctrine.
`
`
`
`
`5
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 17 of 39
`
`The rule the district judge applied, that annotations, even in a state’s official
`
`code, are copyrightable unless they have the force of law, is simply wrong.
`
`Nonbinding portions of judicial opinions are public domain and not subject to
`
`copyright, even though only portions of an opinion have the force of law. Op. Br.
`
`at 33; PK Br. at 21-22.2 The Commission continues to rely on a quotation from the
`
`Compendium of U.S. Copyright Office Practices stating that it may register
`
`annotations commenting on legal materials unless the annotations themselves have
`
`the force of law. As noted in Public Resource’s Opening Brief, this Court owes
`
`no deference to the Compendium. Additionally, the Compendium does not
`
`“declare that official state annotations are copyrightable as long as those
`
`annotations do not have the force of law.” It merely describes which works
`
`prepared by government officers and employees the Copyright Office may
`
`register. In this way, the Compendium is analogous to a federal court’s internal
`
`operating procedures. Works are copyrightable or not based on the provisions of
`
`
`2 The Commission argues that Public Resource says copyrightability of the
`O.C.G.A.’s annotations is an all-or-nothing proposition, and that controlling cases
`hold that courts should consider whether given elements are protectable by
`copyright. Comm’n Br. at 43-44. This is misleading. As discussed in Section II
`below, Public Resource recognizes the courts should consider separately whether
`each element of a work the defendant copied is a kind protectable by copyright.
`Op. Br. at 38-40. But whether the State of Georgia can enforce copyright in the
`O.C.G.A.’s annotations, and thus in its entire only official and authoritative code,
`because it hired a publisher to draft and update the annotations, is an all-or-nothing
`proposition.
`
`
`
`6
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 18 of 39
`
`the Copyright Act and federal common law. If they are copyrightable subject
`
`matter, they are “born copyrighted” when fixed in tangible form even if the author
`
`never applies to register them. Weitzman, LLC v. Microcomputer Res., 542 F.3d
`
`859, 863 (11th Cir. 2008) (“copyright exists the moment an original idea leaves the
`
`mind and finds expression in a tangible medium”). Registration with the
`
`Copyright Office grants the copyright owner additional advantages. 17 U.S.C.
`
`§ 411(a).3 Accordingly, the Compendium is a secondary authority and not a
`
`particularly persuasive one.
`
` The Commission also tries to distinguish a state’s codification of its laws
`
`from federal government works on the grounds that the Copyright Act only
`
`specifically exempts works of the federal government from copyright and is silent
`
`as to works of a state government. 17 U.S.C. § 105 (“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.”). But courts have applied
`
`
`3 Since the Commission filed this case, the Copyright Office still has not issued
`certificates of registration for the 2015 O.C.G.A. volumes that Public Resource
`posted. The district court did not consider their continuing non-issuance between
`July 2016 and the date of the district court’s order (because that fact was not in the
`record when the briefing was completed) but did note that the Commission’s
`motion was for partial summary judgment because the 2015 works were “yet to be
`registered” at the time of briefing.
`
`
`
`7
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 19 of 39
`
`the doctrine prohibiting copyright in the law to state sources of law as well as to
`
`the federal government’s. Banks v. Manchester, 128 U.S. 244, 253 (1888); Nash v.
`
`Lathrop, 142 Mass. 29, 35 (1886); Davidson v. Wheelock, 27 F. 61 (Minn. Cir. Ct.
`
`1866); Harrison v. Code Revision Comm’n, 244 Ga. 325, 329 (1979); Building
`
`Officials & Code Adm. Int’l. Inc. v. Code Tech, Inc., 628 F.2d 730, 734 (1st Cir.
`
`1980); Veeck v. Southern Building Code Cong. Int’l, 293 F.3d 791, 802 (5th Cir.
`
`2002) (en banc). As a practical matter, there is no reason to apply a different test
`
`for a state’s official materials stating and interpreting its laws than the test that
`
`applies to the federal government’s materials. The same reasoning applies to state
`
`law, including the due process concerns articulated in some cases. See United
`
`States v. Lanier, 520 U.S. 259, 265 (1997); Building Officials & Code, 628 F.2d at
`
`734; Veeck, 293 F.3d at 795.
`
`The Commission, like the district court, relies on Callaghan v. Myers for its
`
`proposition that the official nature of the O.C.G.A. does not render its
`
`Commission-supervised annotations uncopyrightable,citing Callaghan, 128 U.S.
`
`617, 623, 645-46, 649-50 (1888). That reliance is misplaced. The supplemental
`
`materials the Supreme Court found copyrightable, authored by the court reporter—
`
`not by the State of Illinois—were headnotes, syllabi of each opinion, lists of the
`
`judges composing the court, names of counsel and sometimes their arguments and
`
`an index, arranged alphabetically, consisting substantially of a reproduction of the
`
`
`
`8
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 20 of 39
`
`headnotes. Callaghan, 128 U.S. at 633. The Court distinguished these
`
`annotations, written by a court reporter who worked for the state, from headnotes
`
`and statements written by judges themselves, which are not subject to copyright.
`
`Id. at 647. Illinois has no official code, annotated or otherwise. The Court applied
`
`the “general proposition that the reporter of a volume of law reports can obtain a
`
`copyright for it as an author, and that such copyright will copy the parts of the
`
`book of which he is the author, although he has no exclusive right in the judicial
`
`opinions published…” Id. at 649.
`
`The Commission argues that recognizing copyright in the O.C.G.A.’s
`
`annotation (and, by implication, enforcing it) does not violate the due process
`
`clause because copyright in the annotations does not preclude a citizen’s receiving
`
`notice and fair warning of a state’s laws. In short, citizens can go do their own
`
`legal research and find and analyze, on their own, the opinions summarized and
`
`other annotations provided in the O.C.G.A. Id. at 50. This argument is
`
`inconsistent with the Commission’s position that its interest, when it decided
`
`Georgia’s official code should contain the annotations, was “to help its citizens
`
`understand the laws of Georgia” and that the annotations are “tangible benefits” to
`
`Georgia citizens that “assist in understanding the Georgia statutes.” Id. at 35-36.
`
`If citizens need the annotations in the O.C.G.A. to understand the laws they are
`
`subject to, then it follows that using copyright to restrict access to the annotations
`
`
`
`9
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 21 of 39
`
`prepared for the Commission acting for the General Assembly under a contract
`
`offends due process.
`
`The Commission’s reference to the reported decision of Wheaton v. Peters,
`
`33 U.S. 591 (1834), is misleading. In that case, the parties were private publishers
`
`of Supreme Court reports. The remark that compilations “may be of great utility,
`
`but they are not the law” was speaking of compilations of judicial opinions—
`
`reporters. And, moreover, the language quoted in the Commission’s brief and
`
`presented as the Supreme Court’s explanation is actually in the reported argument
`
`of one of the defendants’ attorneys, not part of the Court’s opinion, which begins at
`
`page 654. Wheaton, 33 U.S. at 654. The Supreme Court decided that Wheaton
`
`might have exclusive rights to publish his reports under an act of Congress but
`
`remanded for a jury trial to determine whether Wheaton had complied with
`
`requisite publication of his compliance with the statute in a newspaper and delivery
`
`of a copy to the secretary of state. Id. at 667-68; see also Callaghan, 128 U.S. at
`
`648 (summarizing).
`
`The Commission also observes that other courts have held that “law-related
`
`official state documents are copyrightable because the copyright does not prevent
`
`fair warning of the laws.” The Commission relies too much on a Second Circuit
`
`case about county maps used to assess taxes. Id. at 49, (citing County of Suffolk v.
`
`First Am. Real Estate Solutions, 261 F.3d 179, 194-95 (2d Cir. 2001)). In that
`
`
`
`10
`
`
`
`
`
`Case: 17-11589 Date Filed: 07/14/2017 Page: 22 of 39
`
`case, the court derived a two-part test, never adopted by the Eleventh Circuit, for
`
`when state-authored works can be protected by copyright. The two parts are (1)
`
`whether the work’s creator had adequate incentives, absent copyright, to create the
`
`work, and (2) whether the public needs notice of the work to have notice of the
`
`applicable law. Id. at 194. Even if the Court decided to adopt the Second Circuit’s
`
`test, it would favor Public Resource. The record shows that the General Assembly
`
`determined that the only official Code should contain annotations. The
`
`Commission asserts that this decision was to benefit Georgia’s citizens so they
`
`could better understand Georgia’s statutes. Accordingly, the State’s incentives to
`
`create the annotations are unrelated to its claim of copyright in the annotations. If
`
`they were, it would follow that all state-authored works registered with the
`
`Copyright Office would pass the first part of the Suffolk test. And indeed, the
`
`Commission boldly asserts, without citing authority, that “[s]tates are permitted to
`
`hold copyright in state-authored works.” Comm’n Br. at 38 n.5. In its briefing
`
`below, the Commission quoted the Compendium for this po