Yesterday the U.S. Supreme Court extended limits on the states’ ability to claim copyright protection over legislative materials and, specifically, over explanatory annotations added to legislative materials. The Court held that such annotations were not eligible for copyright protection because, under the government edicts doctrine, legislators, as well as judges under prior rulings, “may not be considered ‘authors’ of the works they produce in the course of their official duties as judges and legislators.” Further, the Court held, this rule applies whether or not “the given material carries the force of law.”
Background of the case:
The official code of the State of Georgia is published by the state as the Official Code of Georgia Annotated (“OCGA”). The OCGA provides the text of every current Georgia statute and, at issue in this case, “a set of annotations that appear beneath each statutory provision.” The annotations include explanatory materials such as summaries of court opinions applying statutory provisions, summaries of opinions of state officials, identifications of related legal materials such as law review articles, and information regarding the legislative history of the statutes.
In 1977, the Georgia Legislature created and began funding an entity called the Code Revision Commission, which is responsible for, among other things, consolidating Georgia state laws into a single Code and contracting with a third party to produce the annotations. A majority of the 15-member Commission must be members of the Georgia Senate or House of Representatives, and the Commission “is staffed by the Office of Legislative Counsel, which is obligated by statute to provide services ‘for the legislative branch of government.’” Although the Commission has outsourced preparation of the annotations to third parties via work-for-hire agreements, “the Commission supervises that work and specifies what the annotations must include in exacting detail.” Each year, then, the Commission submits the materials, including the annotations, to the Georgia Legislature for approval.
The accused infringer, Public.Resource.Org (“PRO”) is a nonprofit that provides public access to government and legal records and materials. PRO posted unauthorized digital versions of the OCGA on a number of websites and allowed free downloading of the materials by the general public. The Commission took notice and brought suit against PRO “on behalf of the Georgia Legislature and the State of Georgia for copyright infringement.”
The Court’s opinion:
Justice Roberts wrote the majority opinion of the Court and turned immediately to the government edicts doctrine. According to the Court, the doctrine finds support under three copyright cases decided in the 19th century.
In the first, Wheaton v. Peters,[i] the U.S. Supreme Court’s third Reporter of Decisions, Wheaton, sued the fourth, Peters, asserting copyright protection in the Justices’ opinions contained in the reporter. Wheaton argued that the opinions were protectable “because ‘they were new, original,’ and much more ‘elaborate’ than law or custom required,” that the Justices were the authors, and that they “assigned their ownership interests to him through a tacit ‘gift.’”[ii] The Court unanimously disagreed and held that “no reporter has or can have any copyright in the written opinions delivered by this court”[iii] and that “the judges thereof cannot confer on any reporter any such right.”[iv]
In the second, Banks v. Manchester,[v] the official reporter of the Ohio Supreme Court asserted copyright protection over judges’ opinions, statements of the case, and syllabuses or head notes prepared by the judges. The Court rejected the argument and held that copyright cannot attach to such materials prepared by judges in their official capacity and that judges cannot be considered the authors of such materials under the Copyright Act. Instead, according to the Court, “[t]he 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.”[vi]
The Court decided the third government edicts case, Callaghan v. Myers,[vii] later in the same term as the Banks case. In Callaghan, the Court confirmed that an official reporter cannot hold copyright in judges’ opinions. It addressed a new issue though and held that a reporter can hold copyright interest in explanatory materials authored by the reporter itself, such as “headnotes, syllabi, tables of contents, and the like.”[viii]
In reviewing this precedent, the Court in Georgia v. Public.Resource.org[ix] determined that (citations omitted):
These cases establish a straightforward rule: Because judges are vested with the authority to make and interpret the law, they cannot be the “author” of the works they prepare “in the discharge of their judicial duties.” This rule applies both to binding works (such as opinions) and to non-binding works (such as headnotes and syllabi). It does not apply, however, to works created by government officials (or private parties) who lack the authority to make or interpret the law, such as court reporters.
Accordingly, the Court clarified that under the government edicts doctrine, “copyright does not vest in works that are (1) created by judges and legislators (2) in the course of their judicial and legislative duties,”[x] regardless of whether the material carries the force of law or not. And in applying this rule, the Court found that Georgia could not claim copyright interests over the annotations at issue that were drafted by the Georgia Legislature in the course of its legislative duties.
Two dissenting opinions were authored. Justice Thomas, with whom Justice Alito and Justice Breyer joined (in part), issued a lengthy dissent and wrote that the majority failed to look closely enough at the government edicts cases and, had it done so, “it must follow from our legal precedents that statutes and regulations cannot be copyrighted, but accompanying notes lacking legal force can be.”[xi] Justice Ginsburg, with whom Justice Breyer joined, also dissented, asserting that the annotations in the OCGA were not created by judges or legislators “in the course of their judicial and legislative duties,”[xii] due to the Justices’ beliefs that (i) they are not created contemporaneously by the legislators with the statutes, (ii) they are neutral summaries, and (iii) they are given merely for convenient reference of the public at large and are not meant for other legislators.
Decided: April 27, 2020.
The opinion can be found at https://www.supremecourt.gov/opinions/19pdf/18-1150_7m58.pdf.
Eric R. Moran is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Trademark, Unfair Competition, Advertising Law & Copyright Practice Group. Mr. Moran has experience in all areas of intellectual property law, with particular emphases on litigating and counseling clients on patent, trademark, and domain name issues. firstname.lastname@example.org
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[i] Wheaton v. Peters, 33 U.S. 591 (1834).
[ii] Id. at 614-15.
[iii] Id. at 668.
[v] Banks v. Manchester, 128 U.S. 244 (1888).
[vi] Id. at 253 (citing Nash v. Lathrop, 142 Mass. 29, 35 (1886)).
[vii] Callaghan v. Myers, 128 U.S. 617 (1888).
[viii] 590 U. S. ____ (2020).