Case Summary and Outcome

The United States Supreme Court upheld a ruling by the Eleventh Circuit Court of Appeals that the protection of “original works of authorship” in the Copyright Act does not extend to annotations in a state’s official code of law. “Public.Resource.org,” a nonprofit dedicated to facilitating public access to government records and legal materials, published the State of Georgia’s official code and annotations for each statute in it. Although the code is publicly accessible, the annotations are produced by a for-profit legal company LexisNexis and must be purchased. The Georgia Legislature sued the nonprofit on copyright grounds, which countersued on the basis that the annotations were in the public domain. The Supreme Court held that the government edicts doctrine, which states that materials created by courts in the performance of their official duties belong to the public domain, also applies to “non-binding, explanatory legal material” that is created and published by a legislative body.

Facts

The State of Georgia has a single official code, known as the Official Code of Georgia Annotated (OCGA). The OCGA contains the text of every state law, as well as annotations for each statute. The Code Revision Commission was created by the Legislature in 1977 to compile the OCGA and subcontracted the work of producing the annotations to a division of LexisNexis, a private legal research company. The work-for-hire agreement with LexisNexis maintained that the State of Georgia, acting through the Commission, held the copyrights to the OCGA. Further, the agreement granted LexisNexis the exclusive right to “publish, distribute, and sell” the OCGA. In exchange, LexisNexis agreed to limit the price and publish an unannotated (and unofficial) version of the OGGA online, freely available to the public. In order to access the state’s official code, one had to either buy the text or register on the LexisNexis website, which only made parts of the entire text accessible.

This case began when Public.Resource.Org (PRO), a nonprofit dedicated to facilitating public access to government records and legal materials, published the OCGA on its website for anyone to download it for free. The Commission sent multiple cease-and-desist letters, and ultimately sued PRO for copyright infringement of the annotations. PRO then counterclaimed, on the basis that the entire code was in the public domain.

The District Court sided with the Commission, ruling that the annotations could be copyrighted because they were “not enacted into law.” The Eleventh Circuit Court of Appeals reversed on the basis of the “government edicts” doctrine articulated in three 19th century cases: Wheaton v. Peters, 8 Pet. 591 (1834); Banks v. Manchester, 128 U. S. 244 (1888); and Callaghan v. Myers, 128 U. S. 617 (1888). Under the doctrine, “works created by courts in the performance of their official duties did not belong to the judges but instead fell in the public domain.” (Code Revision Comm’n v. Public.Resource.Org, Inc., 906 F.3d 1229, (11th Cir. 2018)). Further, the Appellate Court reasoned that “in a democracy… the People are ‘the constructive authors’ of the law, and judges and legislators are merely ‘draftsmen . . . exercising delegated authority.’ (Id., 1242)

The Appeals Court, therefore, viewed the central issue in the case to be whether the OGGA annotations were attributable to the constructive authorship of the People and identified three factors to guide the inquiry:

1. the identity of the public official who created the work;
2. the nature of the work; and
3. the process by which the work was produced.

After applying the test, the court found that each factor favored PRO and reversed the lower court’s decision.

The State of Georgia appealed.

Decision Overview

Chief Justice John Roberts delivered the opinion of the Court.

The Supreme Court began by reviewing the applicability of the government edicts doctrine to the issues at hand. It recalled that the doctrine primarily originates in three 19th-century cases argued before the Supreme Court: Wheaton v. Peters (1834), Banks v. Manchester (1888), and Callaghan v. Myers (1888). The rule generally holds that public officials, both federal and state, who speak with the force of law cannot copyright the materials produced during the course of their official duties.

In Wheaton v. Peters, a federal court reporter sued his successor for copyright infringement over the judicial opinions, claiming that the judge had given him the copyright to the opinions as a gift. The Court rejected this argument, finding that the judge had no authority to do so. Banks v. Manchester addressed the claim of a state court reporter that he held copyright over the judicial opinions as well as several nonbinding materials such as syllabi and headnotes. The Court, in a similar fashion to Wheaton, rejected this argument on the grounds that judges cannot assert copyright over work performed “in their capacity as judges.” The Court’s ruling in Callaghan v. Myers, however, created a limitation on the government edicts doctrine. In this case, a court reporter argued that he had the right to copyright the explanatory materials such as headnotes and syllabi that he prepared. The Court upheld the ability of the reporter’s ability to obtain a copyright for his work because he “had no authority to speak with the force of law.”

The Court pointed out that following the conclusion of these cases, Congress had passed several iterations of the Copyright Act, none of which amended the Court’s interpretation that the word “author” in the act excluded “officials empowered to speak with the force of law.” The majority, therefore, also expressed a reluctance to alter a definition affirmed multiple times by Congress. [Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc., 586 U. S. ___ (2019); Shapiro v. United States, 335 U. S. 1, 16 (1948); Kimble v. Marvel Entertainment, LLC, 576 U. S. 446, 456 (2015)]

Although the cases that established the government edicts doctrine dealt exclusively with the judicial branch, in its ruling the Supreme Court expanded the doctrine to apply to “legislators, acting as legislators” in addition to “judges, acting as judges.” The Court also acknowledged that precedent made it clear that the government edicts doctrine applies to legislative materials [Howell v. Miller, 91 F. 129, 130–131, 137–138 (CA6 1898)].

After confirming the applicability of the government edicts doctrine to the issues at hand, the Court then turned to the Eleventh Circuit’s reasoning in applying the three-part test of the government edicts doctrine:

1. the identity of the public official who created the work;
2. the nature of the work; and
3. the process by which the work was produced.

Particularly, the Court focused its attention on prong 1 of the test, the identity of the author. The Court sought to answer two questions:

1) Is the author a legislator? and;

2) Did it create the annotations in the discharge of its legislative duties?

The Court found that the Commission was the statutory author of the OCGA despite the fact that a subsidiary of LexisNexis authored the annotations, pursuant to provisions of the Copyright Act concerning authorship in the case of work-for-hire agreements [17 U.S.C. §201(b)]. The Court then reasoned that the Commission was an arm of the Georgia Legislature, given that it was created and funded by the Legislature and primarily staffed by its members. Thus, the materials produced by the Commission could not be copyrighted if produced in the discharge of legislative duties.

The State of Georgia argued that because the annotations did not carry the force of law, but were non-binding and non-authoritative, that they were eligible for copyright protection. The Court acceded that the annotations did not carry the force of law, though it reasoned that they nonetheless provided readers with practical context of statutes and were created within the scope of normal legislative duties. The Court also referenced the precedent from Banks v. Manchester, which found that non-binding works prepared by judges, such as headnotes and syllabi, in their official capacity could not be copyrighted. Furthermore, the Court noted that though dissenting opinions of judges do not carry the force of law, they are nevertheless excluded from copyright protection. The Court reasoned that this should be extended to the legislators who compiled the OCGA.

Georgia also argued that without the power to grant copyright to third parties in perpetuity, the Legislature would be unable to persuade private companies to prepare “affordable annotated codes for widespread distribution.” The Court rejected this argument on the grounds that Congress, rather than the judiciary, could best address this specific issue. [Eldred v. Ashcroft, 537 U. S. 186, 212 (2003)]

Based on this reasoning, the Court upheld the decision of the Eleventh Circuit.

Dissenting Opinions

Associate Justices Clarence Thomas and Ruth Bader Ginsburg each filed dissenting opinions in this case. Justice Alito and Justice Breyer joined the dissent of Justice Thomas in full and in part, respectively. Justice Breyer joined the dissent of Justice Ginsburg.

The lengthy dissent by Justice Thomas primarily focused on the history of authorship in copyright law and in the origin of the government edicts doctrine, the applicability of copyright law to annotations, and the difference between judicial and legislative duties. Thomas argued that because there is a free, unannotated (and also, it should be noted, unofficial) version of the Code, the copyright of annotations “deprives a researcher of one specific tool, not to the underlying factual or legal information summarized in the tool.” Thomas also wrote about what he viewed as a distinction between explanatory materials, such as annotations, on one hand, and works by judges such as concurring and dissenting opinions on the other. In Thomas’ view, the latter deserved protection because they expound on the underlying reasoning of the law whereas the former does not. However, Thomas failed to explain how the explanatory materials prepared by judges, which were precluded from copyright protection by the Court’s decision in Banks, were fundamentally different from the annotations in the OCGA.

Justice Ginsburg’s dissent focused on the role of the legislators and legislative capacity. In Ginsburg’s opinion, the Court erred in its decision that the OCGA annotations were created during the discharge of legislative duties for 3 reasons: they 1) “comment on statutes already enacted,” 2) “ are descriptive rather than prescriptive,” and 3) are designed to inform citizens and the general public rather than legislators.