Intellectual Property Law – copyright – copyrights in statutes – where a state claimed a copyright in the annotations beneath the statutory provisions – whether annotations and explanatory notes to legislative materials formed part of the whole legislative text or were severable from it – whether a judge or a legislator could be classified as an author of whatever work they performed in their respective official capacities – whether annotations beneath the statutory provisions were eligible for copyright protection – whether the protection for original works of authorship provided for under the Copyright Act, 17 U. S. C. section 102(a) extended to the annotations contained in Georgia’s Official Annotated Code –Copyright Act, 17 U. S. C. section 102(a)

Statutes – law making process – annotations –Official Code of Georgia Annotated–what was the process by which the annotations contained in the Official Code of Georgia Annotated were created?

 

Brief facts

Public.Resource.Org (the respondent),a non-profit entity dedicated to facilitating public access to government records and legal materials, was sued by the State of Georgia for infringing its copyright in the Official Code of Georgia Annotated (OCGA). That code contained the text of every Georgia statute in force, as well as a set of non-binding annotations that appeared beneath each statutory provision. The annotations typically included summaries of judicial opinions construing each provision, summaries of pertinent opinions of the state attorney general, and a list of related law review articles and other reference materials.

The OCGA was assembled by the Code Revision Commission, a state entity composed mostly of legislators, funded through legislative branch appropriations, and staffed by Office of Legislative Counsel. The annotations in contention were produced by the Matthew Bender & Co., Inc., a division of the LexisNexis Group, pursuant to a work-for-hire agreement with the Commission. Under the agreement, Lexis drafted the annotations under the supervision of the Commission, which specified what the annotations should include in exacting detail. The agreement also stated that any copyright in the OCGA vested in the State of Georgia, acting through the Commission.

The respondent posted the OCGA online and distributed copies to various organizations and Georgia officials for which the Commission sued alleging infringement of its copyright in the OCGA annotations. The respondent counterclaimed, seeking a declaratory judgment that the entire OCGA, including the annotations, fell in the public domain. The District Court held that the annotations were eligible for copyright protection because they had not been enacted into law. The Eleventh Circuit reversed the decision, rejecting the commission’s copyright assertion under the government edicts doctrine. It held that the annotations were ineligible for copyright protection.

Issues:

1. Whether a judge or a legislator could be classified as an author of whatever work they performed in their respective official capacities.
2. Whether annotations and explanatory notes to legislative materials formed part of the whole legislative text or were severable from it.
3. Whether the protection for original works of authorship provided for under the Copyright Act, 17 U. S. C. §102(a) extended to the annotations contained in Georgia’s Official Annotated Code.
4. What was the process by which the annotations contained in the Official Code of Georgia Annotated were created?

Relevant provisions of the law

Copyright Law of the United States and Related Laws Contained in Tıtle 17 of the United States Code

§ 102 – Subject matter of copyright: In general

(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

 

Held by the majority

1. Under the government edicts doctrine, legislators could not be considered the authors of the works they produced in the course of their official duties as judges and legislators. That rule applied regardless of whether a given material carried the force of law. And it applied to the respective annotations because they were authored by an arm of the legislature in the course of its official duties.
2. Previous court decisions had established a straightforward rule; because judges were vested with the authority to make and interpret the law, they could not be the authors of the works they prepared in the discharge of their official duties. That rule applied both to binding and non-binding works such as headnotes and syllabi. However, it did not apply to works created by government officials (or private parties) who lacked authority to make or interpret the law, such as court reporters. The animating principle behind that rule was that no one can own the law. Every citizen was presumed to know the law and hence they should have free access to its contents. Those past court decisions gave effect to that principle in the copyright context through construction of the statutory term ‘author’. Rather than attempting to catalog the materials that constitute the law, the doctrine barred the officials responsible for creating the law from being considered ‘authors’ of whatever work they perform in their capacity as authors. Because those officials were generally empowered to make and interpret law, their whole work was deemed part of the authentic exposition and interpretation of the law and ought to be free for publication to all.
3. If judges, acting as judges, could not be authors because of their authority to make and interpret law, it followed that legislators, acting as legislators, could not be either. Courts had thus long understood the government edicts doctrine to apply to legislative doctrine. Just as the doctrine applied to whatever work judges perform in their capacity as judges, it applied to whatever work legislators performed in their capacity as legislators. That of course included the final legislation and any explanatory and procedural materials legislators create in the discharge of their legislative duties. In the same way that judges could not be the authors of their headnotes and syllabi, legislators could be the authors of, for example, their floor statements, committee reports, and proposed bills. Those materials formed part of the whole work done by legislators and ought to be free for publication to all. Therefore, from precedents, copyright did not vest in works that were created by judges and legislators in the course of their judicial and legislative duties.
4. Applying that framework to the instant dispute, the first step was to examine whether the purported author of Georgia’s annotations qualified as a legislator. The annotations were prepared in the first instance by a private company (Lexis) pursuant to a work-for-hire agreement with Georgia’s Code Revision Commission. Section 201(b) of the Copyright Act therefore deemed the Commission the sole author of the work. Although Lexis expended considerable effort preparing the annotations, for purposes of copyright, that labour redounded to the Commission as the statutory author. The Commission was not identical to the Georgia’s Legislature, but functioned as arm of it for the purpose of producing the annotations. The Commission was created by the Legislature, for the legislature, and consisted largely of legislators. The Commission received funding and staff designated by law for the legislative branch. Significantly, the annotations the Commission created were approved by the legislature before being merged with the statutory text and published in the official code alongside that text at the legislature’s direction.
5. If there were any doubt about the link between the Commission and the legislature, the Georgia Supreme Court had dispelled it by holding that, under the Georgia Constitution, the work of the Commission, selecting a publisher and contracting for and supervising the codification of the laws enacted by the General Assembly, included court interpretations thereof, was within the sphere of legislative authority. The Commission’s legislative authority specifically included its codification of court interpretations of the state’s laws. Thus, as a matter of state law, the Commission wielded the legislature’s authority when it worked with Lexis to produce the annotations. All of that showed that the Commission served as an extension of the Georgian Legislature in preparing and publishing the annotations.
6. The second step was to determine whether the Commission created the annotations in the discharge of its legislative duties. Although the annotations were not enacted into law through bicameralism and presentment, the Commission’s preparation of the annotations was under Georgia law an act of legislative authority. The annotations provided commentary and resources that the legislature had deemed relevant to understanding its laws. In light of the Commission’s role as an adjunct to the legislature and the fact that the Commission authored the annotations in Georgia’s Official Code fell within the government edicts doctrine and were not copyrightable.
7. The bar on copyright protection for federal works swept much more broadly than the government edicts doctrine did. That bar applied to works created by all federal officers or employees without regard for the nature of their position or scope of their authority. Whatever policy reasons might justify the Federal Government’s decision to forfeit copyright protection for its own proprietary works, that federal rule did not suggest an intent to displace the much narrower government edicts doctrine with respect to the states. That doctrine did not apply to non-lawmaking officials, leaving states free to assert copyright in the vast majority of expressive works they produced, such as those created by their universities, libraries, tourism offices, and so on.
8. Georgia minimized the OCGA annotations as non-binding and non-authoritative, but that description undersold their practical significance. If a Georgia citizen interested in learning his legal rights and duties read the economy-class version of the OCGA available online, he would see laws requiring political candidates to pay hefty qualification fees (with no indigency exception), criminalizing broad categories of consensual sexual conduct, and exempting certain key evidence in criminal trials from standard evidentiary limitations – with no hint that important aspects of those laws have been held unconstitutional by the Georgia Supreme Court. Meanwhile, first-class readers with access to the annotations would be assured that those laws were, in crucial aspects, unenforceable relics that the legislature had not bothered to narrow or repeal.
9. If everything short of statutes and opinions were copyrightable, then states would be free to offer a whole range of premium legal works for those who can afford the extra benefit. A state could monetize its entire suite of legislative history. With the contemporary digital tools, states could even launch a subscription or pay-per-law service. There was no need to assume inventive or nefarious behavior for those concerns to become a reality. Unlike other forms of intellectual property, copyright protection was both instant and automatic. It vested as soon as a work was captured in a tangible form, triggering a panoply of exclusive rights that could last over a century under the Copyright Act,17 U.S.C sections 102, 106 and 302. Citizens, attorneys, nonprofits, and private research companies would have to cease all copying, distribution, and display of those works or risk severe and potentially criminal penalties. The less bold among the citizenry would have to think twice before using official legal works that illuminated the law all were presumed to know and understand. There was a clear path to avoid those pitfalls. Instead of examining whether given material carried the force of law, it should be asked whether the author of the work was a judge or legislator. If so, then whatever work that judge or legislator produced in the course of his judicial or legislative duties was not copyrightable.

Per Thomas, Alito and Breyer, JJ (dissenting)

1. Judicial opinions could not be copyrighted. However, they did not exclude from copyright protection notes that were prepared by an official court reporter and published together with the reported opinions. There was no apparent reason why the same logic would not apply to statutes and regulations. Thus, it followed that statutes and regulations could not be copyrighted, but accompanying notes lacking legal force could be.
2. It was fair to say that the court’s 19^th century decisions did not provide any extended explanation of the basis for the government edicts doctrine. For the majority judgment, it was enough that the precedents established a rule that seemed too obvious to adorn with further explanation. But the contours of the rule were far from clear, and to understand the scope of the doctrine, its underlying rationale ought to be explored. The majority’s uncritical extrapolation of precedent was inconsistent with the judicial role. An unwillingness to examine the root of a precedent had led to the sprouting of many noxious weeds that distorted the meaning of the Constitution and statutes alike. Although the court had not been asked to revisit those precedents, it behooved it to explore the origin of and justification for them, especially when it had to apply that rule for the first time in over 130 years.
3. In some of those precedents, such as inBanks v. Manchester (Banks), the court referred to the meaning of the term ‘author’ in copyright law. While the court did not develop that argument, it was conceivable that the contemporaneous public meaning of the term ‘author’ was narrower in the copyright context than in ordinary speech. At the time the instant court decided Banks, the Copyright Act provided for protection for books, maps, prints, engravings, musical and dramatic compositions, photographs, and works of art. Judicial opinions differed markedly from those works. Books, for instance, expressed the thoughts of their authors. They typically had no power beyond ability of their words to influence readers, and they usually were published at private expense.Judicial opinions, on the other hand, did not simply express the thoughts of the judges who wrote or endorsed them. Instead, they elaboratedand applied rules of law that, in turn, represented the implementation of the will of the people. Unlike other copyrightable works of authorship, judicial opinions had binding legal effect, and they were produced and issued at public expense. Moreover, copyright law understood an author to be one whose work would be encouraged by the grant of an exclusive right. Judges acting in an official capacity, did not fit that description. The court in Banks might have had those differences in mind when it concluded that a judge fell outside the scope of the term ‘author’.
4. In England, at least as far back as the year 1666, courts and commentators agreed that the property of all law books was in the king, because he paid the judges who pronounced the law. English courts generally sustained the crown’s proprietary rights in judicial opinions. The king, as the executive magistrate, had the right of promulging to the people all acts of state and government. That gave him the exclusive privilege of printing, at his own expense, or that of his grantees, all acts of parliament, proclamations, and orders of council. That position explained the dearth of individuals to obtain copyrights in judicial opinions. However, under the Constitution sovereignty laid with the people, not a king. The English historical practice, when superimposed on the Constitution’s recognition that sovereignty resided in the people, helped to explain the court’s conclusion that the authentic exposition and interpretation of the law was free for publication to all.
5. Concerns of fair notice, often recognized by the instant court’s precedents as an important component of due process, also could have animated the reasoning of those 19^th century cases. The decisions and opinions of the justices were the authorized expositions and interpretations of the laws, which were binding upon all citizens. Every citizen was presumed to know the law thus declared, and it needed no argument to show that justice required that all should have free access to the opinions.
6. Allowing annotations to be copyrighted did not run afoul of any of those possible justifications for the government edicts doctrine. First, because unlike judicial opinions and statutes, those annotations did not even purport to embody the will of the people because they were not law. The General Assembly of Georgia had made abundantly clear through a variety of provisions that the annotations did not create any binding obligations. Section 1-1-7 of the OCGA itself stated that all historical citations, title and chapter analyses, and notes set out in the Code were given for the purpose of convenient reference and did not constitute part of the law. Section 1-1-1 of the OCGA further provided that the statutory portion of the codification of Georgia laws was enacted should have the effect of statutes enacted by the General Assembly of Georgia. The statutory portion of such codification had to be merged with annotations and other materials and be published by the authority of the state. Thus, although the materials merged prior to the publication in the official code, the very provision calling for that merger made it clear that the annotations served as commentary, not law.
7. As additional evidence that the annotations did not represent the will of the people, the General Assembly did not enact statutory annotations under its legislative power as provided for in article III of the Georgia Constitution. To enact state law, Georgia employed a process of bicameralism and presentment similar to that embodied in the United States Constitution. The annotations did not go through that process, a fact that even the majority judgment even acknowledged.
8. Unlike judges and legislators, the creators of annotations were incentivized by the copyright laws to produce a desirable product that would eventually earn them a profit. And though the Commission could require Lexis to follow strict guidelines, the independent synthesis, analysis, and creative drafting behind the annotations made them analogous to other copyrightable material. Moreover, the annotations did not impede fair notice of the laws. The annotations did not carry the binding force of law. They simply summarized independent sources of legal information and consolidated them in one place. Thus, OCGA annotations served a similar function to other copyrighted research tools provided by private parties such as the American Law Reports and Westlaw, which also contained information of great practical significance.
9. The majority judgment resisted that conclusion, suggesting that without access to the annotations, readers of Georgia law would be unable to fully understand the true meaning of Georgia’s statutory provisions, such as provisions that had been undermined or nullified by court decisions. That was simply incorrect. As the majority judgment tacitly conceded, a person seeking information about changes in Georgia statutory law could find that information by consulting the original source for the change in the law’s status—the court decisions themselves. The inability to access the OCGA merely deprived a researcher of one specific tool, not to the underlying factual or legal information summarized in that tool.
10. From a reading of the precedents, there were four indications in the text of the Copyright Act that the OCGA annotations were copyrightable. The Act did not define the word ‘author’ or made any reference to the government edicts doctrine. Accordingly, the term ‘author’ itself did not shed any light on whether the doctrine covered the statutory annotations. Further, while the Act excluded from copyright protection works prepared by an officer or employee of the United States government as part of that person’s official duties, the Act contained no similar prohibition against works of state governments or works prepared at their behest. Congress’ use of explicit language in one provision cautioned against inferring the same limitation elsewhere in the statute. Section 101 of the Copyright Act specifically noted that annotations were copyrightable derivative works. Therein, the Act did not expressly exclude from copyright protection annotations created either by the state or at the state’s request. The Act provided that an author could hold a copyright in material contributed in a derivative work as distinguished from the preexisting material employed in the work. Those aspects of the statutory text, taken together, further supported the conclusion that the OCGA annotations were copyrightable.
11. The majority judgment’s understanding of the government edicts doctrine seemed to have been lost on dozens of states and territories, as well as the lower courts in that case. As already stated, the 25 jurisdictions with official annotated codes apparently did not view the court’s precedents as establishing the “official duties” definition of authorship. The District Court did not appear to have viewed the question as well settled. In a cursory analysis, it determined that the annotations were copyrightable. It was risible to presume that Congress had knowledge of and incorporated a settled meaning that eluded a multitude of states and territories, as well as at least four article III judges. That presumption of congressional knowledge also provided the basis for the majority’s conclusion that the annotations were not original works of authorship. Stripped of the fiction that the instant court’s 19^th century precedents clearly demonstrated that authorship encompassed all works performed as part of a legislator’s duties, the majority’s textual argument fails.
12. In addition to its textual deficiencies, the majority’s understanding of the court’s precedents failed to account for the critical differences between the role that judicial opinions played in expounding upon the law compared to that of statutes. The majority found it meaningful, for instance, that Banks case prohibited dissents and concurrences from being copyrighted, even though they carried no legal force. At an elementary level, it was true that the judgment was the only part of a judicial decision that had legal effect. But it blinked reality to ignore that every word of a judicial opinion—whether it was a majority, a concurrence, or a dissent—expounded upon the law in ways that did not map neatly on to the legislative function.
13. Setting aside summary decisions, the reader of a judicial opinion would always gain critical insight into the reasoning underlying a judicial holding by reading all opinions in their entirety. Understanding the reasoning that animated the rule in turn provided pivotal into how the law would likely be applied in future judicial opinions. Thus, deprived of access to judicial opinions, individuals could not access the primary, and therefore best, source of information for the meaning of the law. As true as that was in the contemporary period, access to those opinions was even more essential in the 19^th centurybefore the proliferation of federal and state regulatory law fundamentally altered the role that common-law judging played in expounding upon the law. Those differences provided crucial context for Banks’ reasoning. Specifically, to ensure that judicial exposition and interpretation of the law remained free for publication to all. The word author ought to be read to encompass all judicial duties. But those differences also demonstrated that the same rule did not a fortiori apply to all legislative duties.
14. In addition to being flawed as a textual and precedential matter, the majority decision would be difficult to administer. That was because nearly all jurisdictions with annotated codes used private contractors that almost invariably prepared annotations under the supervision of legislative-branch or judicial-branch officials, including state legislators or state-court judges.Under the majority decision’s view, any one of those commissions or counsels could potentially be reclassified as an adjunct to the legislature. But the majority judgment’s test for ascertaining the true nature of those commissions raised far more questions than it answered.
15. The majority judgement listed a number of factors—including the Commission’s membership and funding, how the annotations became part of the OCGA, and descriptions of the Commission from court cases—to support its conclusion that the Commission was really part of the legislature. But it did not specify whether those factors were exhaustive or illustrative and, if the latter, what other factors could be important. The majority decision also did not specify whether some factors weighed more heavily than others when deciding whether to deem an oversight body a legislative adjunct. Even when the majority listed concrete factors, pivotal guidance remained lacking. For example, it found it meaningful that 9 out of the Commission’s 15 members were legislators. Other members of the Commission included the State’s Lieutenant Governor, a judge, a district attorney, and three other state bar members. The majority decision failed to determined how many legislative members were needed for a commission to become a legislative adjunct.
16. The contract between the Commission and Lexis enabled the OCGA to be sold at a fraction of the cost of competing annotated codes. For example, Georgia asserted that Lexis sold the OCGA for $404 in 2016, while West Publishing’s competing annotated code sold for $2,570. Should state annotated codes disappear, those without the means to pay the competitor’s significantly higher price tag would have a valuable research tool taken away from them. Meanwhile, the court, which was privileged to have access to numerous research resources, would scarcely notice. Those negative practical ramifications were unfortunate enough when they reflect the deliberative legislative choices that judges were bound to respect. They were all the more regrettable when they were the result their own meddling. It was generally for Congress, not the courts, to decide how best to pursue the copyright clause’s objectives because it was Congress that had been assigned the task of defining the scope of the limited monopoly that should be granted to authors.

Per Ginsburg, J, (dissenting)

17. Beyond doubt, state laws were not copyrightable. Nor were other materials created by state legislators in the course of performing their lawmaking responsibilities, e.g., legislative committee reports, floor statements, unenacted bills. However, not all that legislators did was ineligible for copyright protection; the government edicts doctrine shielded only works that were created by judges and legislators in the course of their judicial and legislative duties.
18. Headnotes and syllabi for judicial opinions—both a kind of annotation—were copyrightable when created by a reporter of decisions but were not copyrightable when created by judges. That was so because the whole work done by judges including dissenting and concurring opinions ranked as work performed in their judicial capacity. Judges did not outsource their writings to arm(s) or adjunct(s) to be composed in their stead. The judicial opinion, drafting process in its entirety, including the drafting of headnotes and syllabi, in jurisdictions where that was done by judges, fell outside the reach of copyright protection.
19. There was a difference between a judge’s annotations and those annotations created by legislators due to the difference between the role of a judge and the role of a legislator. The judiciary had the duty of interpreting and applying the law and sometimes making the applicable law. It was emphatically the province and duty of the judicial department to say what the law was. In contrast, the role of the legislature encompasses the process of making laws and not construing statutes after their enactment. The legislative power was the power to make law.
20. The OCGA annotations did not rank as part of the Georgia Legislature’s lawmaking process for three reasons. First, the annotations were not created contemporaneously with the statutes to which they pertained; instead, the annotations commented on statutes already enacted. Texts of enacted laws were transmitted to the publisher for the addition of commentary. The publisher added new case notes on a rolling basis as courts construed existing statutes. In short, annotating began only after lawmaking ended. That set the OCGA annotations apart from uncopyrightable legislative materials like committee reports, generated before a law’s enactment, and tied tightly to the task of law-formulation.
21. Secondly, the OCGA annotations were descriptive rather than prescriptive. Instead of stating the legislature’s perception of what a law conveyed, the annotations summarized writings in which others expressed their views on a given statute. For example, the OCGA contained case annotations for all decisions of the Supreme Court of Georgia and the Court of Appeals of Georgia and all decisions of the federal courts in cases which arose in Georgia construing any portion of the general statutory law of the state. Per the Code Revision Commission’s instructions, each annotation accurately reflected the facts, holding, and statutory construction adopted by the court. The annotations were neutrally casted; they did not opine on whether the summarized case was correctly decided. Those characteristics of the annotations distinguished them from pre-enactments and legislative materials that touched or concerned the correct interpretation of the legislature’s work.
22. Third, and of prime importance, the OCGA annotations were given for the purpose of convenient reference by the public; they aimed to inform the citizenry at large, they did not address, particularly, those seated in legislative chambers. Annotations were thus unlike, for example, surveys, work commissioned by a legislature to aid in determining whether existing law should be amended. The requirement that the statutory portions of the OCGA should be merged with annotations did not render the annotations anything other than explanatory, referential, or commentarial material. Inclusion of annotations in the official codes did not give them any official weight. Annotations aided the legal researcher, and that aid was enhanced when annotations were printed beneath or alongside the relevant statutory text. But the placement of annotations in the OCGA did not alter their auxiliary, non-legislative character.

Appeal dismissed.

 

Relevance to the Kenyan Situation

The Constitution of Kenya, 2010 provides in article 35(1)(a) that every citizen has the right of access to information held by the State and sub-article (3) provides that the State shall publish and publicize any important information affecting the nation.

There is also the Access to Information Act, No. 31 of 2015 whose one main object and purpose is to give effect to the right of access to information by citizens as provided under article 35 of the Constitution.

The Copyright Act, No. 12 of 2001 provides in section 2 that literary work does not include a written law or a judicial decision.

However, just like the respondent (Public Resource Organization) in the US case, in Kenya there is the National Council for Law Reporting (Kenya Law), which is a service state corporation, whose mandate provided under the National Council for Law Reporting Act, No. 11 of 1994 is to monitor and report on the development of Kenya’s jurisprudence through the publication of the Kenya Law Reports; to revise, consolidate and publish the Laws of Kenya; and to undertake such other related publications and perform such other functions as may be conferred by law. The organization under its creative commons licence believes that public legal information is common property and should be accessible to all.

In Kenya there is no code that contains a compilation of merged statutes and their meanings created by Parliament such as the Official Code of Georgia Annotated. However, if Parliament were to make such a code, it would be in the public domain as provided for in Kenyan law and thus not copyrightable. As held in the US case, lawmakers and judges were draftsmen of the law, exercising delegated authority, and acting as servants of the people, and whatever they produced the people were the true authors thus making that produced work uncopyrightable.