Georgia ruling: end of the public-private partnership?
In his dissent to the US Supreme Court’s Georgia v Public.Resource.Org decision in April, Justice Clarence Thomas cautioned that invalidating Georgia’s copyright in state code annotations will seriously “shock” the public-private legal publishing system used by about half of the states.
The central question of the case was whether the state of Georgia owns a copyright in the annotations of the Official Code of Georgia. To gain access to the annotations, researchers had to subscribe to a private legal publishing service licensed by the state of Georgia. Open Access advocacy group Public.Resource.org posted unauthorised copies of the annotations arguing that they were non-copyrightable law. Georgia sued Public.Resource.org for copyright infringement and the case found itself before the Supreme Court.
Many states have close relationships with private legal publishers, such as Lexis and Westlaw, providing them with an exclusive licence to create and distribute annotations and commentary on the state codes. Typically, the legal publisher’s exclusivity is in exchange for the states’ having strict oversight of the annotation/commentary content and the states’ owning the copyright in the content as a “work for hire”.
Although it is widely accepted that the state codes themselves are not subject to copyright protection, the code annotations were thought to be copyrightable under the Supreme Court’s 1888 decision in Callaghan v Myers, which allows private court reporters to retain the copyright in their commentaries on court decisions. April’s Supreme Court decision in Georgia says “no, Callaghan v Myers does not apply to the Georgia code annotation/commentary”.
Instead, a state’s ownership of copyright in code annotation/commentary is governed by the government edicts doctrine in the Banks v Manchester decision, also from 1888, which holds that copyright does not vest in non-binding legal commentary that is (1) authored by judges (2) in the course of their judicial duties. The Supreme Court held that there is no logical reason to differentiate legislatures from judges, so the government edicts doctrine precludes Georgia’s ownership of the code commentary.
Having determined that the government edicts doctrine precluded Georgia from holding copyright in the state code annotations and commentary, the court addressed Georgia’s various arguments in favour of copyright protection. It rejected Georgia’s assertion that its annotations must be copyrightable because they were not binding law. Binding or not, these official annotations are very significant legal resources for litigants and citizens.
Endowing them with copyright protection would logically permit states to hide all non-binding judicial and legislative work products behind a paywall. Georgia’s attempts to invoke sections of the Copyright Act and the Compendium of US Copyright Office Practices also failed, as the Supreme Court felt a proper interpretation of those sources was consistent with its application of the government edicts doctrine.
The heart of the problem for Georgia was that the work for hire arrangement with the private legal publisher, combined with the state’s strict oversight and official adoption of the commentary, meant that (1) the legislature was the “author” of the commentary, and (2) the authorship occurred in the discharge of the legislature’s official duties.
In light of this decision, it is hard to see how public-private partnerships between legal publishers and state authorities could continue in their current form. If no-one owns copyright in the code annotations/commentaries, legal publishers will have difficulty generating income from the commentaries.
The way forward
Private legal publishers could pursue several alternative strategies in response to the Supreme Court’s decision. First, they could lobby Congress to pass new legislation amending the Copyright Act so that these sorts of official legal commentaries on state codes are protected by copyright. However, it is likely there would be counter lobbying efforts by interest groups such as the defendant in the Supreme Court case, Public.Resource.Org.
Second, private publishers could create annotations and commentary independent of state cooperation (and thereby stay within the protection of Callaghan v Myers). However, authorship and distribution could be cumbersome without the cooperation of state legislatures.
Third, legal publishers could try to tinker with the current business arrangements they have with states so that the annotations and commentary are not “works for hire” but instead are works owned by the private publishers and licensed back to the states. This carries the risk that courts will find this new arrangement to be simply a legal trick used to work around the intent of the government edicts doctrine.
Fourth, states and private publishers could try to expand on the points raised in Justice Ginsburg’s dissent. Specifically, if the role of the legislature is to make laws—not to construe statutes after their enactment—the states could try to create an oversight board that is not closely tied to the legislature. Georgia’s Code Commission was found to operate as an arm of the legislature.
If the Code Commission were not made up of Georgia state legislators, perhaps Justice Ginsburg’s views would have prevailed. A future arrangement involving a state Code Commission that was more independent of the state legislature might avoid the government edicts doctrine.
The key would be ensuring that the independent Code Commission could not be construed as acting with the voice of the state when it exercises oversight of the private legal publisher’s comments and annotations.
Whichever course private legal publishers choose, the current contractual arrangement used by most states is no longer viable in light of the Georgia v Public.Resource.Org decision.
Brett Heavner is a partner at Finnegan. He can be contacted at: b.brett.heavner@finnegan.com
