|
PETER VEECK, doing
business as Regional Web, Plaintiff/Counter Defendant-Appellant, versus
SOUTHERN BUILDING CODE CONGRESS INTERNATIONAL, INC., Defendant/Counter
Claimant-Appellee. No. 99-40632 UNITED STATES COURT OF
APPEALS FOR THE FIFTH CIRCUIT 293 F.3d 791; 2002
U.S. App. LEXIS 10963; 63 U.S.P.Q.2D (BNA) 1225; Copy. L. Rep. (CCH) P28,448 June 7, 2002, Decided SUBSEQUENT HISTORY: Later proceeding at S. Bldg. Code
Cong. Int’l, Inc. v. Veeck, 154 L. Ed. 2d 513, 123 S. Ct. 650, 2002
U.S. LEXIS 8672 (U.S., 2002) US Supreme Court certiorari denied by, Motion granted by S. Bldg.
Code v. Veeck, 2003 U.S. LEXIS 5186 (U.S., June 27, 2003) PRIOR HISTORY: [*1] Appeals from the United States District
Court for the Eastern District of Texas. 4:98-CV-63. David Folsom, US District Judge. Veeck v. Southern Bldg. Code Congress Int’l, Inc., 49 F.
Supp. 2d 885, 1999 U.S. Dist. LEXIS 20889 (E.D. Tex., 1999) COUNSEL:
For PETER BEECK, Plaintiff - Counter Defendant - Appellant: Eric P
Weisberg, Weisberg Law Office, Denison, TX. For SOUTHERN BUILDING CODE CONGRESS INTERNATIONAL INC, Defendant -
Counter Claimant - Appellee: Robert J Veal, Burr & Forman, Birmingham, AL. BUILDING OFFICIALS AND CODE ADMINISTRATORS INTERNATIONAL,
INCORPORATED, INTERNATIONAL CODE COUNCIL, INTERNATIONAL CONFERENCE OF BUILDING
OFFICIALS, Amicus Curiae: James Terrence Hultquist, Alan S Wernick, Quarles
& Brady, Chicago, IL. AMERICAN MEDICAL ASSOCIATION, AMERICAN NATIONAL STANDARDS
INSTITUTE, AMERICAN SOCIETY OF HEATING, REFRIGERATING AND AIR-CONDITIONING
ENGINEERS (ASHRAE), AMERICAN SOCIETY OF MECHANICAL ENGINEERS (ASME), NATIONAL
FIRE PROTECTION ASSOCIATION (NFPA), TEXAS MUNICIPAL LEAGUE, UNDERWRITERS
LABORATORIES INCORPORATED (UL), AMERICAN SOCIETY OF ASSOCIATION EXECUTIVES
(ASAE), Amicus Curiae: Michael Lowenberg, Patrick F McGowan, Akin, Gump,
Strauss, Hauer & Feld, Dallas, TX. Maureen B Brodoff, Quincy, MA. MALLA POLLACK, Amicus Curiae, Pro se, DeKalb, IL. ASSOCIATION OF AMERICAN PHYSICIANS & SURGEONS, INC, EAGLE FORUM
EDUCATION AND LEGAL DEFENSE FUND, Amicus Curiae: Karen Bryant Tripp, Houston,
TX. EAGLE FORUM EDUCATION AND LEGAL DEFENSE FUND, Amicus Curiae:
Andrew Layton Schlafly, Far Hills, NJ. AMERICAN SOCIETY OF CIVIL ENGINNERS, INTERNATIONAL ASSOCIATION OF
PLUMBING AND MECHANICAL OFFICIALS, NSF INTERNATIONAL, Amicus Curiae: Michael
Lowenberg, Patrick F McGowan, Scott T Williams, Akin, Gump, Strauss, Hauer
& Feld, Dallas, TX. Maureen B Brodoff, Quincy, MA. JUDGES: Before
KING, Chief Judge, JOLLY, HIGGINBOTHAM, DAVIS, JONES, SMITH, WIENER, BARKSDALE,
EMILIO M. GARZA, BENAVIDES, STEWART, PARKER, DENNIS and CLEMENT, Circuit
Judges. PATRICK E. HIGGINBOTHAM, Circuit Judge, joined by KING, Chief Judge,
DAVIS and STEWART, Circuit Judges, dissenting. WIENER, Circuit Judge, joined by
KING, Chief Judge, and HIGGINBOTHAM, DAVIS, STEWART, and DENNIS, Circuit
Judges, dissenting. OPINIONBY:
EDITH H. JONES OPINION: EDITH H. JONES, Circuit Judge: The issue in this en banc case is the extent to which a private
organization may assert copyright protection for its model codes, after the
models have been adopted by a legislative body and become “the
law”. Specifically, may a code-writing organization prevent a website
operator from posting the text of a model code where the code is identified
simply as the building code of a city that enacted the model code as law? Our
short answer is that as law, the model codes enter the public domain and are
not subject to the copyright holder’s exclusive prerogatives. As model
codes, however, the organization’s works retain their protected [*2] status. BACKGROUND n1 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n1 The facts stated here are undisputed. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - Peter Veeck individually operates “Regional Web”
(<http://regionalweb.texoma.net>), a non-commercial website that provides
information about north Texas. Sometime in 1997, Veeck decided to post on
Regional Web the local building codes of Anna and Savoy, two small towns in
north Texas that had adopted the 1994 edition of the Standard Building Code
written by appellee, Southern Building Code Congress International, Inc.
(“SBCCI”). Veeck made a few attempts to inspect several
towns’ copies of the Building Code, but he was not able to locate them
easily. Eventually, Veeck purchased the 1994 model building codes directly from
SBCCI; he paid $ 72.00 and received a copy of the codes on disk. Although the
software licensing agreement and copyright notice indicated that the codes
could not be copied and distributed, Veeck cut and pasted their text onto his
Regional Web. Veeck’s website did not specify that the codes were
written by SBCCI. Instead, he [*3] identified them, correctly, as the
building codes of Anna and Savoy, Texas. The author of the codes, SBCCI, is a non-profit organization
consisting of approximately 14,500 members from government bodies, the
construction industry, business and trade associations, students, and colleges
and universities. Since 1940, SBCCI’s primary mission has been to
develop, promote, and promulgate model building codes, such as the Standard
Plumbing Code, the Standard Gas Code, the Standard Fire Prevention Code, and
the Standard Mechanical Code. SBCCI encourages local government entities to
enact its codes into law by reference, without cost to the governmental entity.
No licensing agreements are executed in connection with legislative adoption,
nor does SBCCI keep track of the entities that have adopted its codes. Although
SBCCI is a non-profit organization, its annual budget, exceeding $ 9 million,
derives in part from sales of its model codes and is used to fund continuing
activities. There are no restrictions or requirements on membership in SBCCI,
but non-members are charged considerably more for copies of its codes than are
members. While SBCCI continues to assert its copyright prerogatives [*4] — exclusively to publish the
codes and license their reproduction and distribution — even as to
codes that have been adopted by local entities, the organization insists that
it grants liberal permission for copying. To support this contention, SBCCI
offered in evidence several dozen letters of permission written to entities as
diverse as book publishers, seminar providers, and municipal inspection
agencies. Notably, each permit letter carefully circumscribed the amount of
copying allowed. SBCCI’s generosity did not extend to Veeck’s
public-service posting of the Anna and Savoy building codes on his website. The
organization demanded that he cease and desist from infringing its copyrights.
Veeck filed a declaratory judgment action seeking a ruling that he did not
violate the Copyright Act. SBCCI counterclaimed for copyright infringement,
unfair competition and breach of contract. Both parties moved for summary
judgment on the copyright infringement issue. Finding no genuinely disputed material facts, the district court
granted summary judgment in favor of SBCCI, including a permanent injunction
and monetary damages. On appeal, a divided panel of this court upheld
SBCCI’s copyrights [*5] in the municipal building codes posted
by Veeck, and it rejected his defenses to infringement based on due process,
merger, fair use, copyright misuse and waiver. We elected to rehear this case en banc because of the novelty and
importance of the issues it presents. DISCUSSION n2 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n2 We review the district court’s grant of summary
judgment de novo. Morris v. Covan World Wide Moving, Inc., 144 F.3d
377, 380 (5th Cir. 1998); Fed. R. Civ. P. 56(c). At the summary judgment stage,
a court may not weigh the evidence or evaluate the credibility of witnesses,
and all justifiable inferences will be made in the nonmoving party’s
favor. Id. (citing Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 255, 106 S. Ct. 2505, 2513-14, 91 L. Ed. 2d 202 (1986)).
The district court drew some inferences from the facts, however, regarding the
impact of copyrightability on SBCCI’s operations that, if material,
should not have been decided without a trial. We find it unnecessary to reach
those issues. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*6] As the organizational author of original works, SBCCI indisputably
holds a copyright in its model building codes. See 17 U.S.C. § 102(a).
Copyright law permits an author exclusively to make or condone derivative works
and to regulate the copying and distribution of both the original and
derivative works. 17 U.S.C. § 106. The question before us is whether
Peter Veeck infringed SBCCI’s copyright on its model codes when he
posted them only as what they became — building codes of Anna and
Savoy, Texas — on his regional website. Put otherwise, does SBCCI
retain the right wholly to exclude others from copying the model codes after
and only to the extent to which they are adopted as “the law”
of various jurisdictions? The answer to this narrow issue seems compelled by three sources:
the Supreme Court’s holding that “the law” is not
copyrightable; alternatively, the Copyright Act’s exclusion from its
scope of “ideas” or “facts”; and the
balance of caselaw. I. The Supreme Court’s View Excluding “the law” from the purview of the
copyright statutes dates back to this nation’s earliest period. In 1834,
the Supreme Court interpreted the [*7] first federal copyright laws and
unanimously held that “no reporter has or can have any copyright in
the written opinions delivered by this Court. . .” Wheaton v.
Peters, 33 U.S. (8 Pet.) 591, 668, 8 L.
Ed. 1055 (1834). The case arose when one of the Court’s official
reporters was asserting copyright protection for his annotated compilations of
Supreme Court opinions. The Court distinguished between the reporter’s
individual work and the Justices’ opinions. The Court’s
rejection of copyright for judicial opinions paralleled the principle
— recognized by attorneys for both parties — that “statutes
were never copyrighted.” n3 Based on the acknowledged and
incontestable analogy with legislative acts, Wheaton held unanimously that
“the law” in the form of judicial opinions may not be
copyrighted. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- N3 See Precis of Argument by Counsel for Wheaton [pet’r],
33 U.S. (8 Pet.) at 615. Wheaton acknowledged, even while arguing that judicial
opinions could be copyrighted, that “it would be absurd, for a
legislature to claim the copyright; and no one else can do it, for they are the
authors, and cause them to be published without copyright. . . . Statutes were
never copyrighted.” Id. Further, “it is the bounden duty of
government to promulgate its statutes in print . . .” 33 U.S. 591,
616, 8 L. Ed. 1055. Counsel for Peters, the respondent, emphasized the governing
policy that “all countries . . . subject to the sovereignty of the
laws” hold the promulgation of the laws, from whatever source,
“as essential as their existence.” 33 U.S. 591, 618-19, 8 L.
Ed. 1055. Peters’s brief continues: It is, therefore, the
true policy, influenced by the essential spirit of the government, that laws of
every description should be universally diffused. To fetter or restrain their
dissemination, must be to counteract this policy; to limit, or even to regulate
it, would, in fact, produce the same effect. . . . If either statutes or
decisions could be made private property, it would be in the power of an individual
to shut out the light by which we guide our actions. 33 U.S. 591, 620, 8 L. Ed. 1055. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*8] The same broad understanding of what constitutes “the
law” for copyright purposes underlies the Court’s later
decision in Banks v. Manchester, 128 U.S. 244, 9 S. Ct. 36, 32 L. Ed.
425 (1888). The Court there denied a copyright to a court reporter in his
printing of the opinions of the Ohio Supreme Court. The Court first noted that
whatever work the judges perform in their official capacity cannot be regarded
as authorship under the copyright law. As a question of “public
policy,” the Court stated that, there has always been
a judicial consensus, from the time of the decision in the case of Wheaton v.
Peters, 8 Pet. 591, that no copyright could, under the statutes passed by
Congress, be secured in the products of the labor done by judicial officers in
the discharge of their judicial duties. The 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, whether it is a
declaration of unwritten law, or an interpretation of a constitution or
statute. Banks, 128 U.S. at 253, 9 S. Ct. at 40. (emphasis added). At
this [*9] point, Banks relied upon a decision of
the Massachusetts Supreme Judicial Court, which stated, It needs no argument
to show that justice requires that all should have free access to the opinions,
and that it is against sound public policy to prevent this, or to suppress and
keep from the earliest knowledge of the public the statutes, or the decisions
and opinions of the Justices. Nash v. Lathrop, 142 Mass. 29, 6 N.E. 559 (1886). The
court in Nash further observed that a legislature likewise could not deny
public access to statutes. Banks represents a continuous understanding that “the
law,” whether articulated in judicial opinions or legislative acts or
ordinances, is in the public domain and thus not amenable to copyright. n4
Modern decisions have followed suit. n5 Significantly, the 1976 Copyright Act
specifically denies protection to federal statutes and regulations. 17 U.S.C.
§ 105. Given the state law foundation of Banks and its progeny, there
is no reason to believe that state or local laws are copyrightable. See
generally L. Ray Patterson & Craig Joyce, Monopolizing the Law: The Scope
of Copyright [*10] Protection for Law Reports and
Statutory Compilations, 36 U.C.L.A. L. REV. 719, 751-58 (1989); 1 Melville B. Nimmer & David Nimmer, Nimmer
on Copyright § 5.06 [c] at 5-92 (2000) (“state
statutes, no less than federal statutes, are regarded as being in the public
domain”); 1 Patry, Copyright Law
and Practice 351, 357 (1994). - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n4 In Davidson v. Wheelock, for example, the court stated that a
compiler of state statutes “could obtain no copyright for the
publication of the laws only; neither could the legislature confer any such
exclusive privilege upon him.” Davidson v. Wheelock, 27 F. 61,
62 (D.Minn. 1886). More famously, Justice Harlan, riding circuit, denied an
injunction sought for the compiler of Michigan statutes, holding that
“no one can obtain the exclusive right to publish the laws of the
state in a book prepared by him.” Howell v. Miller, 91 F.
129, 137 (6th Cir. 1898). n5 Harrison Co. v. Code Revision Commission, 244 Ga.
325, 260 S.E.2d 30, 34 (Ga. 1979); State of Ga. v. The Harrison Co., 548 F.
Supp. 110, 114-15 (N.D. Ga. 1982), vacated per stipulation, 559 F. Supp. 37
(N.D. Ga. 1983). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*11] As governing law, pursuant to Banks, the building codes of Anna
and Savoy, Texas cannot be copyrighted. SBCCI and its numerous amici n6 must limit or circumvent the Banks
line of cases in order to prevail. Initially, SBCCI divides Banks into two
holdings and concludes that either holding must be squared with the policies
and purposes of copyright law. This not insubstantial mode of analysis must be
carefully reviewed. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n6 The amici supporting SBCCI’s position include Building
Officials and Code Administrators International (BOCA), International Code
Council, International Conference of Building Officials, American Medical
Association, American National Standards Institute (ANSI), American Society of
Association Executives (ASAE), American Society of Heating, Refrigerating and
Air-Conditioning Engineers (ASHRAE), American Society of Mechanical Engineers
(ASME), National Fire Protection Association (NFPA), Texas Municipal League,
and Underwriters Laboratories, Inc. (UL). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - The first holding of Banks
[*12]
is said to deny copyright to judicial opinions because judges, whose
salaries are paid by the government, cannot claim to be
“authors” of their official works. SBCCI contends that this
discussion shows only that judges have no need of the Copyright Act’s
economic incentives in order to author judicial opinions. Banks, it is implied,
articulates a utilitarian rationale for denying copyright protection to judicial
opinions. SBCCI contrasts government employees with the private
“authors” of model codes who allegedly depend on copyright
incentives in order to perform their public service. SBCCI concludes that this
“prong” of Banks does not apply to private code-writing
organizations whose work has been adopted or incorporated into statutes,
ordinances, or government regulations. Two courts, in addition to the panel
that originally heard this case, have identified the consideration of
authorship incentives as a “holding” of Banks. See Practice
Management Info. Corp. v. American Medical Ass’n, 121 F.3d
516, 518 (9th Cir. 1997), opinion amended by 133 F.3d 1140 (9th Cir. 1998); n7 County
of Suffolk v. First American Real Estate Solutions, 261 F.3d 179, 194
(2d Cir. 2001). [*13] - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n7 Practice Management declares, “The copyright
system’s goal of promoting the arts and sciences by granting temporary
monopolies to copyrightholders was not at stake in Banks because
judges’ salaries provided adequate incentive to write
opinions.” Id. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - The second “holding” of Banks, which requires “the
law” or its exposition to be “free for publication to
all,” is recharacterized by SBCCI as a “due process”
argument. That argument devolves into a factual question concerning public
“access” to the law. Because SBCCI contends that there is no
dispute about the adequacy of public “access” to its model
codes, after their enactment as the building codes of Anna and Savoy, Banks is
inapplicable. The “dual holding” analysis seems to foist on
Banks a rationale that the Supreme Court never explicitly articulated. Banks,
however, does not bifurcate its holding based on the particular
authors’ need of the Copyright Act’s incentives or a factual
calculus concerning the “adequacy” of public access [*14] to the law. Instead, Banks declares at
the outset of its discussion that copyright law in the United States is purely
a matter of statutory construction. See Banks, 128 U.S. at 251, 9
S. Ct. at 39. In the next paragraph, the Court points out that the court
reporter was not the statutory “author” of the judicial
decisions. Then, the Court states that In no proper sense can
the judge who, in his judicial capacity, prepares the opinion or decision, the
statement of the case, and the syllabus, or head-note, be regarded as their
author or their proprietor, in the sense of [the copyright statute] . . . Judges, as is well
understood, receive from the public treasury a stated annual salary, fixed by
law, and can themselves have no pecuniary interest or proprietorship, as
against the public at large, in the fruits of their judicial labors. 128 U.S. at 253, 9 S. Ct. at 40. The Court then broadly defines
the judges’ official work and states that as a matter of public policy
and judicial consensus, “no copyright could, under the statutes passed
by Congress, be secured in the products of the labor done by judicial officers
in the discharge [*15] of their official duties.”
This paragraph of Banks climaxes with the explanation: The 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, whether it is a
declaration of unwritten law, or an interpretation of a constitution or
statute. Id. at 253-54 [citing Nash v. Lathrop]. There is simply no independent holding in Banks that judges are
not “authors” under the copyright law because, as public
officials, they do not need the “incentives” that copyright
law affords in order to write opinions. Instead, Banks refers to the source of
the judges’ salary in order to explain that it is the public at large,
not the judges, who have the “pecuniary interest or
proprietorship” in “the fruits of their judicial
labors.” The whole of those judicial labors, as Banks immediately
defines them, “constitutes the authentic exposition and interpretation
of the law,” which is “free for publication to all . . .”
Id. n8 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n8 If there were an independent holding in Banks relying on the
fact that judges are paid by the public, it was rejected by the Court itself
one month later, when the Court ruled that a court reporter, notwithstanding
that he was a state employee, could assert copyright in all of his compilation
of judicial opinions except the opinions themselves. Callaghan v. Myers, 128 U.S.
617, 9 S. Ct. 177, 32 L. Ed. 547, 1889 Dec. Comm’r Pat. 304 (1888). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*16] Moreover, when viewed in light of Wheaton, the last case relied on
by Banks’s analysis, the argument for bifurcation is seriously
weakened. Wheaton’s holding, as has been shown, derives from an
analogy between judicial opinions and legislative acts as together constituting
“the law,” which is not subject to copyright. The origin of the bifurcated holding interpretation of Banks seems
to lie in the First Circuit’s thoughtful opinion in Building
Officials and Code Adm. v. Code Technology, Inc., 628 F.2d 730 (1st
Cir. 1980), but the First Circuit does not endorse bifurcation. In this
opinion, which will be discussed further infra, the First Circuit considered
the argument of BOCA, the model code writer, urging copyright protection for a
model building code similar in origin and purpose to the one before us.
BOCA’s argument, the court said, “implies that the rule of Wheaton
v. Peters was based on the public’s property interest in work
produced by legislators and judges, who are, of course, government
employees.” BOCA, 628 F.2d at 734. While acknowledging that this interpretation is “not
without foundation,” the First Circuit cautioned: [*17] “But BOCA’s argument
overlooks another aspect of the ownership theory discussed in these
cases.” Id. BOCA then identifies the real premises of Banks and
related cases: the “metaphorical concept of citizen
authorship” of the law, together with “the very important and
practical policy that citizens must have free access to the laws which govern
them.” Id. BOCA cited the authorship rationale for Banks only to find
it unsatisfactory. In our view, BOCA was correct. Only by bifurcating Banks can SBCCI achieve its purpose of
claiming authorship of “the law” and proprietary rights in
its codes that have been enacted into law. However, the acceptance of
SBCCI’s and the dissent’s theory, that non-governmental
employees who draft model statutes or regulations may be entitled to copyright
protection, raises troubling issues. The complexities of modern life and the
breadth of problems addressed by government entities necessitate continuous
participation by private experts and interest groups in all aspects of
statutory and regulatory lawmaking. According to SBCCI, a utilitarian test
should be invoked to determine which organizations “need” the
incentives provided [*18] by the Copyright Act in order to
perform the public service of drafting specialized statutes, ordinances or
regulations. Alternatively, perhaps SBCCI and the dissent intend that whenever
any private “author” finds his or her proposal adopted
verbatim in law, copyright protection may be claimed. n9 As an example, three
law professors have taken credit for drafting a recent federal statute on
supplemental federal court jurisdiction. See 28 U.S.C. § 1367;
Christopher M. Fairman, Abdication to Academia: The Case of the Supplemental
Jurisdiction Statute, 28 U.S.C. § 1367, 19 SETON HALL LEGIS. J. 157
(1994). Under SBCCI’s reasoning, it is likely that these professors,
had they so desired, could have asserted a copyright in their “model
supplemental jurisdictional provision.” n10 SBCCI offers no outer
limit on claims of copyright prerogatives by nongovernmental persons who
contribute to writing “the law.” - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n9 One of SBCCI’s amici argues that this is an
unrealistic threat, since, inter alia, the run-of-the-mill lobbyist or good
citizen involved in the legislative process does not assert a copyright. That
these “authors” may be more generous, or less sophisticated,
than the large and well-funded code-writing organizations before us hardly
furnishes a reason to approve an open-ended test of authorship of the law. [*19] n10 We are not stating or holding that the authorship of
government works never presents a legitimate issue of copyright. On the
contrary, the Copyright Act carefully defines the extent to which federal
government employees and contractors can obtain copyright protection. But these
provisions have never been held to supersede Banks’s holding that
“the law” is in the public domain. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - Not only is the question of authorship of “the
law” exceedingly complicated by SBCCI’s and the
dissent’s position, but in the end, the “authorship”
question ignores the democratic process. Lawmaking bodies in this country enact
rules and regulations only with the consent of the governed. The very process
of lawmaking demands and incorporates contributions by “the
people,” in an infinite variety of individual and organizational
capacities. Even when a governmental body consciously decides to enact proposed
model building codes, it does so based on various legislative considerations,
the sum of which produce its version of “the law.” In
performing their function, the lawmakers represent the public will, and the
public [*20] are the final
“authors” of the law. The BOCA decision put it thus: The citizens are the
authors of the law, and therefore its owners, regardless of who actually drafts
the provisions, because the law derives its authority from the consent of the
public, expressed through the democratic process. 628 F.2d at 734. n11 This “metaphorical concept of citizen
authorship” together with the need for citizens to have free access to
the laws are the ultimate holding of Banks. Id. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n11 Technically, citizen “ownership” of the law
might suggest that local governmental entities, as public representatives,
could prevent copying of the law. As Goldstein notes, the decisions holding
that statutes are in the public domain prevent any such misunderstanding. 1
GOLDSTEIN, COPYRIGHT, § 2.48 at n.42. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - BOCA described free access as a policy “based on the
concept of due process,” the people’s right to know what the
law requires so that they may obey it and avoid its sanctions. SBCCI and
the [*21] dissent contend that this “due
process” reasoning involves nothing more than the factual issue of
“sufficient” public access to the building codes of Anna and
Savoy. Since a copy of the codes is available for inspection and individual
copying in a public office, SBCCI contends that the obligations of due process
are fulfilled. We disagree that the question of public access can be limited to
the minimum availability that SBCCI would permit. Banks does not use the term
“due process.” There is also no suggestion that the Banks
concept of free access to the law is a factual determination or is limited to
due process, as the term is understood today. Instead, public ownership of the
law means precisely that “the law” is in the “public
domain” for whatever use the citizens choose to make of it. Citizens
may reproduce copies of the law for many purposes, not only to guide their
actions but to influence future legislation, educate their neighborhood
association, or simply to amuse. If a citizen wanted to place an advertisement
in a newspaper quoting the Anna, Texas building code in order to indicate his
dissatisfaction with its complexities, it would seem that he could do so. In
our [*22] view, to say, as Banks does, that the
law is “free for publication to all” is to expand, not
factually limit, the extent of its availability. Moreover, as the BOCA decision observed, it is difficult to
reconcile the public’s right to know the law with the statutory right
of a copyright holder to exclude his work from any publication or
dissemination. SBCCI responds that due process must be balanced against its
proprietary rights and that the fair use doctrine as well as its honorable
intentions will prevent abuse. Free availability of the law, by this logic, has
degenerated into availability as long as SBCCI chooses not to file suit. n12 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n12 SBCCI does not permit governmental entities to publish its
model codes when they are enacted. Instead, it permits their adoption by
reference and furnishes a copy of the adopted code to the entity. SBCCI also
generously allows that if a governmental entity were to publish the building
code on an Internet site to meet its due process obligation, that would be a
fair use. But when the North Carolina Building Officials were permitted to
publish a model code on their non-public access website, SBCCI expressly
reserved its rights. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*23] For these reasons, we reject SBCCI’s deconstruction of
Banks into merely utilitarian and factual issues. Instead, we read Banks,
Wheaton, and related cases consistently to enunciate the principle that
“the law,” whether it has its source in judicial opinions or
statutes, ordinances or regulations, is not subject to federal copyright law.
n13 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n13 What constitutes “the law” when a
governmental entity adopts or incorporates by reference an author’s
copyrightable work will be considered infra, Part III. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - To sum up this section, we hold that when Veeck copied only
“the law” of Anna and Savoy, Texas, which he obtained from
SBCCI’s publication, and when he reprinted only “the
law” of those municipalities, he did not infringe SBCCI’s
copyrights in its model building codes. The basic proposition was stated by
Justice Harlan, writing for the Sixth Circuit: “any person desiring to
publish the statutes of a state may use any copy of such statutes to be found
in any printed book . . .” Howell v. Miller, 91 F.
129, 137 (6th Cir. 1898). [*24] n14 See Jerry E. Smith, Government
Documents: Their Copyright and Ownership, 22 Copyright Symposium 147, 174
(ASCAP 1977), reprinted in 5 Tex. Tech L.
Rev. 71, 92 (1973). - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n14 Our decision might well be the opposite, if Veeck had copied
the model codes as model codes, or if he had indiscriminately mingled those
portions of “the law” of Anna and Savoy adopted by their town
councils with other parts of the model codes not so adopted. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - II. The Copyright Act A. The Merger Doctrine As we earlier stated, SBCCI is the “author” of
model building codes that, qua model building codes, are facially
copyright-protected. This is true even if Banks places the building codes of
Anna and Savoy, and other governmental entities that adopted part or all of
SBCCI’s model codes, in the public domain. But if the holding of Banks
fails, Veeck alternatively asserts a defense under the Copyright Act to the
protection of the model codes after they have been enacted into positive law.
Once adopted, [*25]
he asserts, the model codes become “facts” that are
not protected under the Copyright Act. Further, because there is only one way
to express the meaning of the building codes, the “idea”
embodied in the law merges with SBCCI’s expression, and at that point,
renders copyright protection unavailable. It is not the sole purpose of copyright law to secure a fair
return for an author’s creative labor. Under the Constitution, The primary objective
of copyright is not to reward the labor of authors but ‘[to] promote
the Progress of Science and the useful Arts.’” Article I,
Sec. 8, clause 8 [U.S. Constitution]. To this end, copyright law assures
authors the right to their original expression, but encourages others to build
freely upon the ideas and information conveyed by a work. This principle, known
as the idea/expression or fact/expression dichotomy, applies to all works of
authorships. Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S.
340, 349, 111 S. Ct. 1282, 1289-90, 113 L. Ed. 2d 358 (1991). The statute
excludes from copyright protection ideas, procedures, processes, systems
methods of operation, or information in the public domain. [*26] See 17 U.S.C. § 102(b); Feist
Publications, 499 U.S. at 350, 111 S. Ct. at 1290 (citation omitted); Harper
& Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 547-48, 105 S.
Ct. 2218, 2223, 85 L. Ed. 2d 588 (1985). If an idea is susceptible to only one
form of expression, the merger doctrine applies and § 102(b) excludes
the expression from the Copyright Act. As the Supreme Court has explained it,
this “idea/expression dichotomy strikes a definitional balance between
the First Amendment and the Copyright Act by permitting free communication of
facts while still protecting an author’s expression.” Harper
& Row, 471 U.S. at 556, 105 S. Ct. at 2228. Veeck copied the building code of the towns of Anna and Savoy,
Texas, based on their adoption of a version of the SBCCI model code. The codes
are “facts” under copyright law. They are the unique,
unalterable expression of the “idea” that constitutes local
law. Courts routinely emphasize the significance of the precise wording of laws
presented for interpretation. See, e.g., Consumer Product Safety
Comm’n v. GTE Sylvania, Inc., 447 U.S. 102, 108, 100 S.
Ct. 2051, 2056, 64 L. Ed. 2d 766 (1980) [*27] (“The starting point for
interpreting a statute is the language of the statute itself.”). Judge
Little, dissenting from the panel opinion in this case, observed that . . . the merger
doctrine is especially appropriate because other methods of expressing the idea
are foreclosed. [citation omitted] An individual wishing to publish the text of
a law cannot develop his own, unique version and still publish an authoritative
copy. Veeck v. Southern Bldg. Code Cong. Int’l, 241 F.3d
398, 416 (5th Cir. 2001) (Little, J., dissenting). It should be obvious that
for copyright purposes, laws are “facts”: the U.S.
Constitution is a fact; the Federal Tax Code and its regulations are facts; the
Texas Uniform Commercial Code is a fact. Surely, in principle, the building
codes of rural Texas hamlets are no less “facts” than the
products of more August legislative or regulatory bodies. While the Supreme
Court has not stated directly that laws are “facts,” it has
broadly observed that, as with census data, “the same is true of all
facts — scientific, historical, biographical and news of the day.
‘They may not be copyrighted and are part of the public domain
available [*28] to every person.’” Feist, 499 U.S.
at 348, 111 S. Ct. at 1289. Emphasizing not the language of § 102(b), but the
“policy” of the merger doctrine, SBCCI contends that merger
poses no bar to copyright protection here. The idea/expression dichotomy was
enacted into law by Congress to “balance [] the competing concerns of
providing incentive to authors to create and foster[] competition in such
creativity.” Kern River Gas Transmission Co. v. The Coastal Corp., 899 F.2d
1458, 1463 (5th Cir. 1990). n15 Veeck’s merger argument ignores the
goal of fostering competition in creativity. SBCCI thus asserts that
“merger would only apply in this case if a subsequent author seeking
to create a building code for Anna or Savoy would have to use the same
expression to convey the idea.” SBCCI supplemental en banc brief at 7.
This argument effectively converts the merger doctrine from a limit on
copyrightability into a mere defense against infringement based on the identity
of the author. In our view § 102(b) does foster the creativity that
SBCCI applauds, but it does so by permitting the free flow of information in
facts and ideas from their emergence, rather [*29] than as a defense to infringement
claims. See Kern River at 1460; Mason v. Montgomery Data, Inc., 967 F.2d
135, 138 n.5 (5th Cir. 1992) (“Mason argues that application of the
merger doctrine does not render a work uncopyrightable, but rather prevents a
finding of infringement of an otherwise copyrightable work. But this court has
applied the merger doctrine to the question of copyrightability.”). - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n15 See id. at 1460 (proposed route for a pipeline approved by the
Federal Energy Regulatory Commission was an uncopyrightable
“idea.”) - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - SBCCI and the dissent next urge the inapplicability of the merger
doctrine because there are many possible ways to express model codes: both the
multiplicity of building standards and the variety of ways to express those
standards compel the conclusion that the ideas have not merged with their
expression. Cf. Mason, 967 F.2d at 139 (rejecting merger because the idea
embodied in the author’s maps can be expressed in a variety of ways). [*30] What SBCCI and the dissent ignore,
however, is the graphic merger of its model building codes with “the
law” as enacted by Anna and Savoy, Texas. Veeck copied from
SBCCI’s model codes, 1994 edition, because those codes were
transformed into the “fact” and “idea” of the
towns’ building codes. Veeck could not express the enacted law in any
other way. The final argument deployed by SBCCI and the dissent casts the
merger doctrine as an inherent balancing test in which courts must reconcile
the policies underlying the Copyright Act with the public interest in the free
flow of information and ideas. Compare CCC Info Serv. Inc. v. MacLean Hunter
Market Reports, Inc., 44 F.3d 61, 68 (2nd Cir. 1994)
(interpreting Second Circuit’s balancing test). It is true that where
the line is unclear between expression and facts, procedures, processes,
methods of operation, or information in the public domain, a court considering
the applicability of § 102(b) must recur to the statute’s
underlying policy. See, e.g., Feist, 499 U.S. at 361-64,
111 S. Ct. at 1295-97 (determining copyrightability of compilations of facts);
Mason, 967 F.2d at 139 (copyrightability
[*31]
of expression in maps). This case, however, is not close. The building
codes of Anna and Savoy, Texas can be expressed in only one way; they are
facts. Veeck placed those facts on his website in precisely the form in which
they were adopted by the municipalities. n16 When the § 102(b)
dichotomy is clear, judges are not permitted to substitute policy choices for
the legislature’s determination. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n16 For the first time, in this court, SBCCI alleges that Veeck
did not exactly copy the ordinances, because in the course of their adoption,
the towns rejected certain parts of the SBCCI model codes. There is no evidence
in the district court record to sustain this contention. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - We emphasize that in continuing to write and publish model
building codes, SBCCI is creating copyrightable works of authorship. When those
codes are enacted into law, however, they become to that extent “the
law” of the governmental entities and may be reproduced or distributed
as “the law” of those jurisdictions. B. Other Provisions n17 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n17 Veeck also raised infringement defenses based on his fair use
of the model codes or SBCCI’s waiver of its copyrights. It is
unnecessary to reach these issues. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*32] SBCCI’s amici make much of provisions of the Copyright
Act that, they contend, should protect SBCCI’s copyrights from
“appropriation” by local government entities. Section 105 of
the Act, taken together with the definition of “works of the
government,” denies copyright protection to official works of the
United States Government, while reserving the possibility that government
employees and contractors may obtain, or transfer to the government, copyrights
for non-official works. 17 U.S.C. §§ 105, 101. On its face,
these provisions say nothing about the relationship between non-federal
government entities and copyright holders. Moreover, they have never been held
inconsistent with Banks or with the merger doctrine. Section 201(e) of the Act reflects Congress’s intention
to protect copyrights from involuntary appropriation by government entities. 17
U.S.C. § 201(e). This is not, however, a “takings”
case, not least because SBCCI urged localities to adopt its model codes. The
issue in the case is not the voluntariness of the appropriation but the legal
consequences flowing from the permission that SBCCI gave. III. The Caselaw; Model
[*33]
Codes Versus Standards Until recently in our history, it was understood that Wheaton,
Banks and nearly every other pertinent case held that copyright protection may
not be asserted for the text of “the law”. n18 The basic
proposition was stated by Justice Harlan, writing for the Sixth Circuit:
“any person desiring to publish the statutes of a state may use any
copy of such statutes to be found in any printed book . . .” Howell v.
Miller, 91 F. 129, 137 (6th Cir. 1898). - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n18 See also Texas v. West Publishing Co., 882 F.2d
171, 174, 177 (5th Cir. 1989), in which the State of Texas sought a declaratory
judgment that West’s copyright in their original arrangement of
annotated Texas statutes was invalid. This court rejected the state’s
argument and observed in passing that West did not claim a copyright in the
text of the statutes themselves or in any of the readily-available public
compilations of statutes. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - As of 1980, the noncopyrightability of “the law”
appeared settled [*34] to the First Circuit in BOCA. The court
focused on the real holding of Banks and accordingly vacated preliminary
injunctive relief to the author of a building code adopted into law by the
Commonwealth of Massachusetts. n19 The court held that BOCA had failed to carry
its burden of distinguishing, for preliminary relief purposes, the
Massachusetts building code from non-copyrightable statutes and judicial
opinions. But the court then remanded the case for further development in light
of the novelty of the issue, the insufficiency of the trial court record, and
the apparent trend toward adoption of model codes by governmental entities. The
court nevertheless was skeptical that BOCA would prevail, commenting it is hard to see how
the public’s essential due process right of free access to the law
(including a necessary right freely to copy and circulate all or part of a
given law for various purposes), can be reconciled with the exclusivity
afforded a private copyright holder . . . BOCA, 628 F.2d at 730. Though not a definitive
holding, BOCA clearly favors Veeck’s position over that of SBCCI, and
it is most closely on point. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n19 BOCA is an amicus curiae in this case supporting
SBCCI’s position. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*35] The record has been developed in this case and, with the
perspective gained from other recent caselaw and from the multiple submissions
to the court, we have no hesitation in confirming BOCA’s
predisposition against the copyrightability of model codes to the extent they
have been adopted as law. But the limits of this holding must be explained.
Several national standards-writing organizations joined SBCCI as amici out of
fear that their copyrights may be vitiated simply by the common practice of
governmental entities’ incorporating their standards in laws and
regulations. n20 This case does not involve references to extrinsic standards.
Instead, it concerns the wholesale adoption of a model code promoted by its
author, SBCCI, precisely for use as legislation. Caselaw that derives from
official incorporation of extrinsic standards is distinguishable in reasoning
and result. See CCC Info. Services v. Maclean Hunter Market Reports, Inc., 44 F.3d
61 (2nd Cir. 1994); and Practice Management Info. Corp. v. American Medical
Ass’n, 121 F.3d 516 (9th Cir. 1997), opinion amended by 133
F.3d 1140 (9th Cir. 1998). - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n20 See 63 Fed.Reg. 8545, 8554-55 (Feb. 19, 1998) (Office of
Management and Budget Notice of Final Revision of Circular A-119) (directing
federal agencies to adopt privately developed standards “whenever
practicable and appropriate” to “eliminate[] the cost to the
Government of developing its own standards”). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*36] In CCC Information Services, a New York statute
required insurance companies to use the “Red Book,” a
privately prepared and copyrighted list of projected automobile values, as one
of several standards in calculating the payments upon the total loss of a
vehicle. CCC Information Services systematically loaded portions of the Red
Book onto its computer network and distributed the information to its
customers. One of CCC’s theories was that the Red Book had entered the
public domain. The Second Circuit addressed the public domain issue briefly,
stating that “we are not prepared to hold that a state’s reference
to a copyrighted work as a legal standard for valuation results in loss of the
copyright.” CCC Info. Services, 44 F.3d at 74. CCC
notes the infringer’s reliance on the BOCA decision, but it does not
opine on that case, confining itself to the precise facts before the court. Practice Management involved the American Medical
Association’s copyrighted coding system for reporting
physicians’ services and medical procedures. The Federal Health Care
Financing Administration (HCFA) contacted and then agreed with AMA to use the
AMA’s coding system for [*37] identifying physicians’
services on Medicare and Medicaid reimbursement forms. AMA granted a
“non-exclusive, royalty-free and irrevocable” license to
HCFA, without restrictions on the government’s ability to reproduce or
distribute AMA’s codes. There was no evidence that AMA had restricted
the code’s availability to anyone. The Ninth Circuit held that the
HCFA’s decision to adopt regulations requiring physicians to use a
version of the AMA code on Medicaid claim forms did not place the code in the
public domain under Banks. Practice Management, 121 F.3d at 519 (“The
AMA’s right under the Copyright Act to limit or forgo publication of
the [coding system] poses no realistic threat to public access.”). Both the Second and Ninth Circuits feared that reaching the
opposite conclusion in those cases would have “exposed copyrights on a
wide range of privately authored model codes, standards, and reference works to
invalidation.” Practice Management, 121 F.3d at 519. The Ninth Circuit
suggested that federal court rules regarding citations could invalidate the
copyrightability of the Blue Book. Id. at n.5. The Second Circuit feared that a
ruling in [*38] favor of CCC Information Systems would
call into question the copyrightability of school books once they were assigned
as part of a mandatory school curriculum. CCC Info Services, 44 F.3d at 74. These decisions, and the hypothetical situations they discuss, are
all distinguishable from Veeck. If a statute refers to the Red Book or to
specific school books, the law requires citizens to consult or use a
copyrighted work in the process of fulfilling their obligations. The
copyrighted works do not “become law” merely because a
statute refers to them. See 1 Goldstein
Copyright, § 2.49 at n. 45.2 ( noting that CCC and Practice
Management “involved compilations of data that had received
governmental approval, not content that had been enacted into positive
law”). Equally important, the referenced works or standards in CCC and
Practice Management were created by private groups for reasons other than
incorporation into law. To the extent incentives are relevant to the existence
of copyright protection, the authors in these cases deserve incentives. And
neither CCC nor AMA solicited incorporation of their standards by legislators
or regulators. In the [*39] case of a model code, on the other
hand, the text of the model serves no other purpose than to become law. SBCCI
operates with the sole motive and purpose of creating codes that will become
obligatory in law. At first glance, Practice Management appears to pose a closer
issue because the HCFA did not simply refer physicians to the AMA’s
coding system. The court’s opinion directs the reader to
HHS’s notice in the Federal Register announcing that HCFA would
require physicians to use exclusively a
common procedure coding system. The system is the HCFA common procedure coding
system (HCPCS). This coding system is to be used for coding procedures that
have been performed . . . and is basically used for determining reimbursement
amounts. HCFA developed the HCPCS in 1979 and 1980 by using the AMA’s
CPT-4 [the copyrighted coding system] for physician services and adding
HCFA-developed codes for some non-physician services. In addition, we developed
conversion techniques to prevent unwarranted payment escalation. 50 Fed. Reg. 40895, 40897. To be precise, then, HCFA had its own
coding system (the HCPCS) that incorporated AMA’s code but also
included additional [*40] information. But unlike Veeck, Practice Management Information Corporation, a
commercial publisher of medical textbooks, was not trying to publish its own
version of the HCPCS. Practice Management desired to sell a cheaper edition of
the AMA’s code, which was also used by insurance companies and had
other non-governmental uses. It is not clear how the Ninth Circuit would have
decided the case if Practice Management had published a copy of the HCPCS. By
analogy, the result in this case would have been different if Veeck had
published not the building codes of Anna and Savoy, Texas, but the SBCCI model
codes, as model codes. IV. Policy Arguments Many of SBCCI’s and the dissent’s arguments
center on the plea that without full copyright protection for model codes,
despite their enactment as the law in hundreds or thousands of jurisdictions,
SBCCI will lack the revenue to continue its public service of code drafting.
Thus SBCCI needs copyright’s economic incentives. n21 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n21 SBCCI’s factual “evidence” on this
point consisted of self-serving affidavits from its officers and employees, and
proof that it earns perhaps 40% of its revenue from sales of the domestic model
codes and amendments. No effort was made to show by what amount copying by
people like Veeck would or could reduce the organization’s revenue. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*41] Several responses exist to this contention. First, SBCCI, like
other code-writing organizations, has survived and grown over 60 years, yet no
court has previously awarded copyright protection for the copying of an enacted
building code under circumstances like these. Second, the success of voluntary
code-writing groups is attributable to the technological complexity of modern
life, which impels government entities to standardize their regulations. The
entities would have to promulgate standards even if SBCCI did not exist, but
the most fruitful approach for the public entities and the potentially
regulated industries lies in mutual cooperation. The self-interest of the
builders, engineers, designers and other relevant tradesmen should also not be
overlooked in the calculus promoting uniform codes. As one commentator
explained, . . . it is difficult
to imagine an area of creative endeavor in which the copyright incentive is
needed less. Trade organizations have powerful reasons stemming from industry
standardization, quality control, and self-regulation to produce these model
codes; it is unlikely that, without copyright, they will cease producing them. 1 Goldstein [*42] § 2.5.2, at 2:51. n22 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n22 This court’s opinion does not, of course, withdraw
all copyright protection from the model codes qua model codes. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - Third, to enhance the market value of its model codes, SBCCI could
easily publish them as do the compilers of statutes and judicial opinions, with
“value-added” in the form of commentary, questions and answers,
lists of adopting jurisdictions and other information valuable to a reader. The
organization could also charge fees for the massive amount of interpretive
information about the codes that it doles out. In short, we are unpersuaded
that the removal of copyright protection from model codes only when and to the
extent they are enacted into law disserves “the Progress of Science
and useful Arts.” U.S. Const. art. I. § 8, cl. 8. Conclusion For the reasons discussed above, we REVERSE the district
court’s judgment against Peter Veeck, and REMAND with instructions to
dismiss SBCCI’s claims. DISSENTBY:
PATRICK E. HIGGINBOTHAM; WIENER DISSENT: PATRICK E.
HIGGINBOTHAM, [*43]
Circuit Judge, joined by KING, Chief Judge, DAVIS and STEWART, Circuit
Judges, dissenting: In this difficult case I am persuaded to join the view that would
affirm the judgment of the district court. It is undisputed that Veeck copied
the copyrighted product of SBCCI. That parts of the copied material contain the
same expressions as the adopted codes of two Texas cities is no defense unless
the use by the cities of the protected expression somehow invalidated
SBCCI’s copyright. The cities could have hired counsel and engineers to draft a code,
recouping its expense either from all taxpayers or by charging a fee to users
for a copy of its ordinance. A city could also decide, on behalf of the
citizens, to license a finished and copyrighted work. Either is a decision by
elected representatives. Against a refrain that “the law” belongs to the
people, Veeck asked us to conclude, as a matter of federal common law, that the
choice made by the voters of this municipality was not available to it. Its
utility as a decisional norm aside, the refrain passes by the fact that it was
legislators who chose what they thought was the most practical path, to adopt a
technical code developed at the [*44] expense of others under a licensing
agreement. Nothing suggests that private entities will control access to
“the law.” A contrary vision persists while ignoring the
assured access of persons interested in the language of the ordinance. We are
not told what impediment a person interested in the ordinance will face that
will not be avoided by the doctrines of fair use and implied license or the
constitutionally footed right of persons to access the law. Nor does developed
case law tell us. Banks holds that judges, as public employees, cannot have a
financial interest in the fruits of their judicial labors. It is a case about
authorship, about the acquiring of copyrights by public officials, not a case
invalidating the copyrights held by private actors when their work is licensed
by lawmakers. As for the merger doctrine, I am not persuaded that it brings
anything more to the table. That doctrine reflects the narrow circumstance
where an idea can be expressed only one way and hence protection of its
expression gives way. A complex code, even a simple one, can be expressed in a
variety of ways. That reality is not ended by choosing one manner of expression
to enact and then pronouncing [*45] that this normative
rule—”the law”—can only be expressed in one
way. Of course, you have adopted the protected expression; the reasoning is wholly
tautological. It is a restatement of the conclusion that adopting the codes
invalidated the copyright, not an independent reason why that is so. There is a strong argument for that conclusion and it can be
simply stated without calling on the illusion of the merger doctrine: the
thinness of the protection enjoyed by this specie of copyright is overcome by
the stronger public policy of unfettered access to enacted law, a victory
expressed in the conclusion that enacting the code into law put the expression
in the public domain. Whether that is so is our question and the merger
doctrine does not answer it. Rather we are pushed to decide this case by
reconciling two competing policies, expressed at a high level of generality,
not unlike the large-scale balancing characteristic of judicial findings of
violations of substantive due process. Doing so lacks the accretive marks of
case-by-case adjudication, vital to the discipline of judges wearing their
“common law” hats. Perhaps we will reach that point in the
seriatim course of deciding the [*46] cases. If and when we do, the choices
will come with more sharply defined features than the abstraction we now have. Significantly the absence of easily-found answers to the large,
broadly-stated policy choices calls for caution. As I earlier observed, these
small cities were empowered by the work of SBCCI; they gained the benefit of
uniformity in regulation with other cities in their codes as well as proven
quality—with the ability to charge a small fee for copies. Any person
wishing a copy of the code can obtain it. They can reproduce it for critical
commentary or to express their displeasure with its content, even make copies
to circulate in a campaign urging that it be rescinded. It bears emphasis that the Congress is best suited to accommodate
its Congressionally-created copyright protection with the extraordinary changes
in communication trailing the development of the internet. Unless of course it
is contended that some Constitutional principle denies Congress the power to
authorize copyright protection for governmental entities wishing to adopt codes
such as those before us today. And of course the state legislatures and the
municipalities are differently situated in another [*47] relevant and vital way—the
state enjoys an immunity that the municipalities do not. It is ironical that
the federal courts are asked to accept a broadly stated principle that would
regulate the states by decreeing that some federal principle denies them the choice
of accepting or rejecting a license when absent its waiver of immunity the
federal copyright regime is not enforceable against them. This unexplored
territory offers a confusing backdrop and also counsels caution. Another confusion must be put aside. When Veeck did his work, the
code was already available on the internet, albeit subject to the terms of its
license. Veeck’s effort was to put the code on the internet free of
license. To accept Veeck’s contention would invalidate the copyright
on every model code except those in inventory that had never been adopted by
any governmental body. Publishing adopted model codes as a set with the list of
governmental bodies adopting them could be accomplished without honoring the
copyright because there would be no copyright. In sum, the suggestion that SBCCI’s position asks this
Court to extend the reach of the copyright law is exactly backwards. The
copyrights at issue here were
[*48]
concededly valid before the cities adopted them as codes. The proper
question is whether we should invalidate an otherwise valid copyright as well
as the solemn contract between the governmental body and SBCCI. That aggressive
contention must find stronger legs than the rhetoric it comes clothed in here.
The contention comes with no constitutional or statutory text, except its
reliance upon the merger doctrine, and that is wordplay. This is federal common
law adjudication. Its hallmark must be case-by-case accretion and measured
decision making, even if the case-by-case explanation of the permissible
restraint upon the copying of an enacted code leads to the conclusion that
Veeck urges today—and I am not yet willing to embrace—that
invalidity of the copyright is the inevitable consequence of code adoption.
Rather, I conclude that Veeck violated the explicit terms of the license he
agreed to when he copied model codes for the internet and posted them. I decide
no more. WIENER, Circuit Judge, joined by KING, Chief Judge, and
HIGGINBOTHAM, DAVIS, STEWART, and DENNIS, Circuit Judges, dissenting: Technical codes and standards have become necessary, pervasive,
and indispensable ingredients
[*49]
of Twenty-First Century life in this country; regrettably,
today’s majority opinion has a real potential of drastically changing
the societal landscape through that opinion’s predictably deleterious
effects on these codes and standards, their authors, and the public and private
entities that daily use and depend on them. Despite efforts to clothe its ruling
in classic copyright lingo — “public domain,”
“fact/expression,” “merger” — in
holding for Veeck under the discrete facts of this case, the majority had to
(and did) adopt a per se rule that a single municipality’s enactment
of a copyrighted model code into law by reference strips the work of all
copyright protection, ipso facto. Firmly believing that for this court to be
the first federal appellate court to go that far is imprudent, I respectfully
dissent. I. FACTS AND PROCEEDINGS As the underlying facts are undisputed, I adopt the majority
opinion’s detailed recitation of the facts, supplementing it with the
following observations contained in the record. The technical codes here at
issue are not mere compilations; rather they are original, “from
scratch” creations by SBCCI which rightfully enjoy copyright
protection [*50] from their inceptions. In each of its
codes, SBCCI asserts a copyright under which it claims the exclusive right to publish
these codes or license their reproduction and publication. Despite its
copyright, SBCCI ensures free access by specifying that once a governmental
unit enacts such a model code into law, copies must be made available for
inspection by the public in the enacting government’s offices. As a
general proposition, members of the public may make or obtain copies of
portions of the adopted versions of SBCCI codes from city offices or local
libraries, or may purchase copies of the codes directly from SBCCI and from
some third-party sources, such as bookstores. n23 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n23 As noted by the majority members and nonmembers are charged
different prices for copies of the codes. For example, members were charged $
48 for a copy of SBCCI’s 1994 Standard Building Code, for which
nonmembers were charged $ 72. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - Several municipalities in North Texas have adopted
SBCCI’s codes, including the towns of Anna and Savoy. [*51] Veeck avers that he attempted to obtain
a copy of the building code of his hometown of Denison, Texas, after learning
that it had adopted SBCCI’s Model Building Code as its own. Failing to
locate Denison’s building code at local bookstores or libraries, Veeck
ordered copies of the codes that SBCCI had produced. He ordered these copies in
electronic format directly from SBCCI. n24 According to Veeck, he later visited
approximately twenty towns in North Texas, including Anna and Savoy, in an
effort to obtain copies of their local building codes, not all of which had
been produced by SBCCI. Veeck was not able to buy complete copies at any of the
towns that he visited. n25 He apparently never attempted to view or copy the
SBCCI codes in any city clerk’s or other municipal offices of the
towns that had enacted the codes by reference. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n24 The record is not completely clear, but it appears that Veeck
made no attempt to view or copy the codes in the Denison city clerk’s
office. When Veeck received the 1994 codes from SBCCI, he realized that Denison
had adopted the 1988 version of the building codes. He posted the 1994 codes on
his Internet site despite the fact that they were not the same as the version
adopted by Denison. [*52] n25 It appears that in some of the cities, the correct version of
the building code was not available at alternative locations. For instance,
Sherman, Texas, had adopted the 1997 version of the building code, but the
local library had only the 1994 version on hand. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - In contravention of the software license agreement and copyright
notice included with the electronic version of the model codes he purchased
from SBCCI, Veeck failed to identify the codes as the products of SBCCI when he
posted them on his website. Instead, he simply (and inaccurately) n26
identified them as the building codes of Anna and Savoy, Texas. As detailed in
the majority opinion, the litigation ensuing from this conduct culminated with
the grant of summary judgment in favor of SBCCI on its claims for copyright
infringement. As Veeck cannot legitimately find a safe haven in any of his
affirmative defenses, the district court’s order should have been
affirmed. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n26 Veeck did not include the enacting ordinances of either
municipality. Anna’s enacting statute, for example, includes
ordinances resolving conflicts between the adopted SBCCI code and previous city
laws and also includes a clarification regarding which city officials would be
responsible for enforcing different sections of the code. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*53] II. ANALYSIS A. Standard of Review This case is on appeal from a grant of a summary judgment that
dismissed Veeck’s declaratory judgment action and granted
SBCCI’s requested copyright infringement and damages relief. We review
the record de novo, applying the same standard as the district court. n27 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n27 Morris v. Covan World Wide Moving, Inc., 144 F.3d
377, 380 (5th Cir. 1998). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - B. Merits 1. Overview Despite the efforts of Veeck (and of those amici who support him
and of the en banc majority opinion) to paint this case as a broad one with
dire constitutional implications, the question before us is truly quite narrow.
In fact, it is the majority opinion that creates drastic constitutional
alterations by ruling in Veeck’s favor, thereby improvidently
decreeing an absolute and inflexible rule, ill-suited for modern realities.
Conversely, had we held for SBCCI, we would have remained well within the
precedential and persuasive boundaries of established copyright [*54] law. My analysis is necessarily
delimited by the particular, undisputed facts of the case: Veeck is a
non-commercial, non-educational, non-contractor, non-official, non-resident of
either Anna or Savoy, who purchased a copyrighted work, replete with warnings
about infringement, and published that work virtually in its entirety on the
internet. Veeck published on his website the entire substantive portion of the
model building code that he purchased from SBCCI, redacting only the identity
of the code’s author (SBCCI) and the statement that the code was
copyright protected, and inserting that they were the codes of Anna and Savoy.
Veeck’s only professed justification for infringing SBCCI’s
copyrights was that two or more small municipalities in northern Texas
— of which Veeck was neither a resident nor otherwise related to in
any capacity, official or unofficial — had, at the invitation of the
code’s author, enacted the codes into law by reference. Because he
cannot, Veeck does not contend that Anna or Savoy denied him access to their codes
or that he (or anyone else) was unable to view the law to which the citizens of
Anna and Savoy are subject. Had Anna, Savoy, or SBCCI blocked the [*55] code’s availability, I would
be among the first to recognize Veeck’s (and anyone else’s) right
of access to “THE law.” That, however, is simply not the case
before us; this is not a free access case and cannot be so classified. Under this narrow set of facts, Veeck prevails only because the en
banc majority ruled favorably on at least one of his affirmative defenses, n28
without which, his publication of the codes is indisputably an infringement of
SBCCI’s copyright. Given Veeck’s global re-publication of
SBCCI’s copyrighted model codes, his at-best remotely tangential
relationship to the codes and other laws of Anna and Savoy, his inability to
present evidence that he was denied access to the towns’ codes by the
towns or SBCCI, the countervailing public policy concerns supporting copyright
protection, and the direction and intent of recent congressional enactments and
appellate case law, we should not have condoned Veeck’s violation of
SBCCI’s copyright. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n28 Veeck advanced defenses grounded in due process, public
domain, fair use, waiver, copyright misuse, merger, and free speech. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*56] Reduced to its bare essentials, the majority’s holding in
favor of Veeck indisputably enacts the blanket, per se rule that once a
copyrighted work is enacted into law by reference, it loses its entire
copyright protection, ipso facto, regardless of the nature of the author, the
character of the work, or the relationship of the copier to the work or to the
governmental subdivision that enacted the work into law through incorporation
by reference. Such an extremely broad and inflexible rule propels the
majority’s holding far beyond the ambit of Congress’s
enactments, the Supreme Court’s pronouncements, and the opinions of
other appellate courts that have addressed similar issues. Yet the possibility
of obtaining such an all-encompassing ruling constituted Veeck’s only
hope of overcoming SBCCI’s copyright protection vis-a-vis an otherwise
admitted infringer who is too attenuated from anything that might otherwise
excuse the unauthorized copying of these codes cum ordinances, such as a
“need to know” for purposes of complying with one or more provisions
of the codes. Veeck meets none of these criteria. 2. Due Process/Public Domain a. Absence of Controlling Legal Authority [*57] In the absence of an expressed pronouncement from either the
Supreme Court or Congress, n29 our creation of an automatic rule rendering the
copyright of a model code nugatory per se when and if it is enacted into law is
unwise, imprudent, and far in excess of our authority. Before such a work is
enacted into law, the Copyright Act unquestionably affords copyright protection
to its author; and Congress has given no indication that, on enactment, this
protected status evanesces ipso facto as to the whole universe of potential
copiers. n30 As I discuss in greater detail below, recent congressional
enactments and accompanying federal agency policies strongly predict that, were
Congress to address the issue here presented, it would preserve the protection
of SBCCI’s copyright, at least under circumstances like those we
consider today. n31 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n29 Cf. CCC Information Services, Inc. v. Maclean Hunter Market
Reports (CCC), 44 F.3d 61, 73-74 (2d Cir. 1994) (discussing whether the
Red Book, which was adopted by States as the legal standard for car valuations,
passed into the public domain by virtue of its reference into the law): The [public domain]
argument is that the public must have free access to the content of the laws
that govern it; if a copyrighted work is incorporated into the laws, the public
need for access to the content of the laws requires the elimination of the
copyright protection. … No authority cited by
CCC directly supports the district court’s view [the view that the Red
Book had passed into the public domain]. … We are not prepared to
hold that a state’s reference to a copyrighted work as a legal
standard for valuation results in loss of the copyright. (emphasis added). [*58] n30 Cf. County of Suffolk v. First American Real Estate
Solutions, 261 F.3d 179, 193 (2d Cir. 2001) (“The determination
that no one may own a copyright in statutes and opinions arises not from a
specific provision of the Copyright Act, but from a ‘judicial
gloss’ on the Act.”) (citation omitted). n31 See, e.g., National Technology and Transfer Act of
1995, P.L. 104-113, § 12(d), 110 Stat. 783 (1996); OMB Circular A-119,
63 Fed. Reg. 8545, 8555 (Feb. 19, 1998). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - As for the Supreme Court, its most analogous opinion, Banks v.
Manchester, falls markedly short of answering the question. n32 The Court
grounded its century-and-one-quarter old Banks holding — that judicial
opinions cannot be copyrighted — in the logic that, as the product of
judges who are paid from public coffers and elected or appointed for the sole
purpose of interpreting and applying the law, judicial opinions can never be
copyrighted. n33 Thus Banks turns not on the nature of the work but on the
nature of the author. By its own terms, the Banks holding is obviously [*59] limited to the work of taxpayer-paid
public officials who produce or interpret the law. The majority’s
stretching of Banks to the facts of the instant case constitutes a clear
overreaching that finds no definitive support from any controlling authority. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n32 Banks v. Manchester, 128 U.S. 244, 253,
32 L. Ed. 425, 9 S. Ct. 36 (1888) (holding judicial opinions uncopyrightable
because they are created by judges paid from the public’s coffers);
see also Wheaton v. Peters, 33 U.S. 591, 668, 8 L. Ed. 1055 (1834) (same). n33 This rationale is also applicable to statutes created by
legislators paid by public funds. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - In the absence of expressed congressional guidance or directly
controlling Supreme Court precedent, we were left to address —
prudentially — a wide-open and unresolved question of copyright law:
Should the entirety of a privately confected and promulgated model code, access
to which has been denied to none, lose its copyright protection in toto,
against all the [*60] world, solely by virtue of its
enactment into law by reference? If Congress or the Supreme Court wishes to
strip totally the copyright protection otherwise enjoyed by model codes as an
automatic result of being enacted into law, and to justify such emasculation by
invoking the doctrines of free speech, due process, merger, or the like, that
would be their prerogative. Prudence demands, however, that so large a step
beyond all established legal boundaries should not have been taken first by an
intermediate appellate court. Indeed, recent appellate case law, congressional
pronouncements, and federal agency actions, predict the diametrically opposite
result: a discernible trend towards greater governmental adoption of privately
created codes with concomitant retention of copyright protection, tempered, of
course, by express or implied consent or waiver — or even fair use
— for those officials, residents, contractors, subcontractors, and
design professionals who have a need to view and copy portions of codes to
comply with their provisions. b. Policy Analysis for Copyright Protection What Banks and other opinions undeniably teach about assessing the
copyright protection of [*61] works like the codes here at issue is
that “the question is one of public policy….” n34
Accordingly, these decisions do not stand for the abstract and generic
proposition that all law qua law, regardless of its form, authorship, or
content, is automatically unprotected fair game as to all copiers, without
distinction. Hence, courts are given the weighty task of balancing, on the one
hand, the policy concerns that favor the constitutionally mandated retention of
copyright protection for privately authored works and, on the other hand, the
policy concerns that would permit stripping the author of a privately created
work of copyright protection once that work is enacted into law. I do not
dismiss lightly the policy considerations supporting this latter concern. Yet,
when properly limited to the narrow set of facts before us, the scale of
countervailing policy considerations is tipped — slightly yet
undeniably — in favor of enforcing SBCCI’s copyright,
vis-a-vis Veeck and any others (but only they) who are identically situated. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n34 Banks, 128 U.S. at 253; see also CCC, 44 F.3d at 68: We reach this
conclusion [reversing summary judgment in favor of a publisher who copied
portions of appellant’s used car valuations which were referenced by
state statutes] based on the need to balance the conflicts and contradictions
that pervade the law of copyright, and the need, where elements of copyright
law conflict, to determine, as a policy judgment, which of its commands
prevails over the other. (emphasis added). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*62] I begin with an assessment of the policy consideration supporting
Veeck’s position — namely, the due process and public domain
concerns. As an initial matter, the type of due process asserted by Veeck is
murky at best. He was not denied access to the codes by either the towns or
SBCCI (indeed, he has never alleged that he even tried to attain access
directly from either town, or his home forum for that matter), and he was never
charged with or prosecuted for a code violation; n35 therefore, his claim
cannot be based on procedural due process. And, inasmuch as copyright is a
federal law, no state action could deprive him of a fundamental right that
would trigger a substantive due process claim. Neither has Veeck pointed to any
state actor who has purportedly denied him due process. Yet despite his
unimpeded access to the law and the absence of state action, Veeck argues
amorphously that his due process rights somehow allow him freely to copy and
publish otherwise copyright-protected codes once they are enacted into law by
reference. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n35 Should some municipality, or SBCCI, ever truly restrict the
public’s free access to the enacted codes, any defendant prosecuted
for violating sections of the building codes would surely prevail on a due
process defense. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*63] I reiterate for emphasis that this would be an entirely different case
if Veeck’s (or anyone’s) access to the law had been denied or
obstructed; instead, we deal here only with Veeck’s bald pronouncement
— now legitimated by the majority opinion — that, once a code
is enacted into law, due process does not merely afford him access, but also
gives him unfettered copying and dissemination rights. n36 The
majority’s acceptance of Veeck’s position is truly a novel
extension of any prior judicial recognition of a due process right. True enough,
Veeck can copy and publish judicial opinions and statutes on his website with
impunity. He can do so, however, not because of his due process rights, but
rather because — as judicial opinions and legislatively drafted
statutes have never enjoyed copyright protection, could never enjoy such
protection, and are in the public domain from the moment of their inception
— such works are entitled to no copyright protection or restrictions.
n37 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n36 Cf. Practice Management Information Corp. v. American
Medical Association (Practice Management), 121 F.3d 516, 519
(9th Cir. 1997) (in denying the Practice Management’s due
process/public domain argument, the court noted “Practice Management
is not a potential user denied access to the CPT, but a putative copier wishing
to share in AMA’s statutory monopoly. Practice Management does not
assert the AMA has restricted access to users or intends to do so in the
future.”). [*64] n37 Moreover, as further discussed infra, wide, unrestricted
dissemination of opinions and statutes has no possible harmful effects on the
“creativity” of those who author judicial opinions and
statutes; their jobs and their compensation have no nexus to their creativity,
and vice versa. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - Logically then, the only possible support for Veeck’s due
process position is his wholly unsupported assertion that, by virtue of their
adoption into law by reference, the codes have entered the public domain and
are therefore denuded of all copyright protection whatsoever, regardless of
their content or the identity of the author or other interested parties.
According to Veeck — and now our en banc majority — simply by
virtue of their adoption into law, SBCCI’s model codes have become
“THE law”; and as THE law, all THE people (not just those who
may be deemed metaphysically to have been the authors by virtue of their
elected legislatures’ acts of adoption) have an absolutely unfettered
right to do whatever they please in the way of copying and publishing, in total
disregard of the author’s otherwise [*65] valid and enforceable copyright. Admittedly, the majority’s argument finds rhetorical
support from the First Circuit’s dicta in Building Officials &
Code Admin. v. Code Technology, Inc. (BOCA), in which that court
stated “the citizens are the authors of the law, and therefore its
owners, regardless of who actually drafts the provisions because the law
derives its authority from the consent of the public, expressed through the
democratic process.” n38 Undoubtedly, this metaphorical concept of
citizen authorship cum ownership has great symbolic,
“feel-good” appeal. The majority’s uncritical
application of that proposition to the instant case, however, naively treats
all manifestations of “THE law” in our increasingly complex
society monolithically and without differentiation. The Supreme Court took no
such position in Banks; in fact, Banks addresses only judicial opinions and
other pronouncements of the law created ab initio by publically paid officials.
n39 Furthermore, although the symbolic position advanced in BOCA’s
grandiloquent dicta ostensibly contemplates a broad application for the
proposition of citizen authorship and control, BOCA’s
actual holding [*65] is very narrow and unrelated to any
such abstract musings about the democratic process. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n38 BOCA, 628 F.2d 730, 734 (1st Cir. 1980). n39 County of Suffolk v. First American Real Estate Solutions, 261 F.3d
179, 194 (2d Cir. 2001) (“Banks is properly read as requiring a
determination whether the particular governmental entity or employee has
adequate incentive to create the work absent copyright protections.”). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - In fact, the BOCA court expressly avoided deciding
whether BOCA’s model code retained its copyright after
enactment, noting that “the rule denying copyright protection to
judicial opinions and statutes grew out of a much different set of
circumstances than do these technical regulatory codes….” n40
Therefore, the majority’s rote application of the lofty platitude of
citizen ownership of “THE law,” without exploring the
distinctions between different types of enactments and the policy considerations
attendant on each, is far too simplistic. Such an [*67] analysis is inconsistent with the
thorough policy evaluations evidenced by those courts that heretofore have
deliberated on similar copyright issues. n41 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n40 BOCA, 628 F.2d at 736 (emphasis added). n41 See Banks, 128 U.S. 244, 32 L. Ed. 425, 9 S. Ct. 36;
County of Suffolk, 261 F.3d 179 (2d Cir. 2001); Practice Management, 121 F.3d
516 (9th Cir. 1997); CCC, 44 F.3d 61 (2d Cir. 1994); BOCA, 628 F.2d
730 (1st Cir. 1980). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - The privately created model codes enacted into law in this case
are easily distinguishable from judicial opinions or statutes in several
important respects. First and most obviously, model codes are not created by
elected or appointed officials paid from public fisc, rendering inapt the
mythical concept of citizen authorship. Indeed, to the exact opposite, rather
than producing regulatory codes themselves, the officials elected as the
citizens’ voice chose, on behalf of their constituents, [*68] not to head down the long, expensive,
and highly technical road of special code drafting, opting instead to adopt,
cost-free, codes authored by private entities, because doing so is convenient,
efficient, and cost-effective. Second, these narrowly focused codes are detailed and complex,
requiring technical expertise on the part of the author. Third, they are of
limited, highly specialized effect as to who has a real interest and is
actually affected, unlike judicial opinions and statutes, which generally have
broad if not universal application. Finally, Congress itself has provided the strongest support for
the proposition that these privately created codes should be treated
differently than other laws. Recognizing that the production of a comprehensive
technical code requires a great deal of research, labor, time, and expertise,
Congress in the National Technology and Transfer Act of 1995 (the “NTTA”)
expressly directs that “Federal agencies and departments shall use
technical standards that are developed or adopted by voluntary consensus
standards bodies….” n42 The OMB, in its Circular A-119, which
was designed to provide guidance to federal agencies in the wake of the NTTA,
[*69]
requires that “if a voluntary standard is used and published in
an agency document, your agency must observe and protect the rights of the
copyright holder and any other similar obligations.” n43 These
pronouncements by Congress and the OMB strongly evince a recognition that the
privately created regulatory codes and standards differ greatly from either
judicial opinions or a statutes. Technical codes are indispensable resources in
today’s increasingly complex, high-tech society, and they deserve
authorship protections not afforded to other types of “THE
law.” - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n42 National Technology and Transfer Act of 1995, P.L. 104-113,
§ 12(d), 110 Stat. 783 (1996). I note that although the NTTA and the
OMB Circular address the policy of using privately created standards and
retaining copyright protection for those standards, they are still wholly
applicable to the analysis of privately created codes. Rather than a
substantive, meaningful legal distinction, Congress’s and the
OMB’s references to “standards” rather than
“codes,” in all likelihood reflects the difference between
federal and local lawmaking. Federal law, because it does not govern the safety
and building ordinances of states or municipalities, generally addresses
national standards instead of specific safety and building requirements
embodied in a code. In substance, though, technical codes are
“standards;” for purposes of today’s decision, those
terms are synonymous. The majority’s purported distinction between
standards and codes is far too narrow to decide the instant case on those
grounds — it is a paradigmatic example of a distinction without a
difference. The same principles that apply to the analysis of privately created
standards apply to privately created codes — both deal with the
protection afforded to privately organized and authored collections of
hyper-technical data for use in a specialized segment of today’s
complex society that benefits from uniformity in those data. This understanding
is supported both by appellate case law and evidenced by the standards-creating
bodies filing amicus briefs in support of SBCCI’s position. See
Practice Management, 121 F.3d at 518-19 (“As the AMA points out,
invalidating its copyright on the ground that the CPT entered the public domain
when HCFA required its use would expose copyrights on a wide range of privately
authored model codes, standards, and reference works to
invalidation.”) (emphasis added); see also amicus filed by, inter
alia, American National Standards Institute in support of SBCCI. [*70] n43 OMB Circular A-119, 63 Fed. Reg. 8545, 8555 (Feb. 19,
1998)(emphasis added). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - The First Circuit’s overbroad dicta in BOCA was announced
in 1980, well before the advent of the internet and well before the announcement
of the federal government’s legislated policy directing the adoption
of privately created codes to serve the principles of efficiency and economic
competition. n44 Moreover, recent appellate case law supports the recognition
of the clear differences between, on the one hand, privately developed
standards that are adopted into law by reference and, on the other hand, law
created by legislators and judges. n45 Thus, the majority’s
superficially appealing contention that from a policy perspective,
“THE people” may do as they please with “THE
law” rests on the flawed foundation that “THE law,”
irrespective of whether it be in the form of opinions, statutes, or regulatory
standards or codes — and irrespective of by whom it is
“made” — should be treated identically. Modern
realities and case law directly contradict this simplistic abstraction: The
policy [*71] considerations that dictate unlimited
and unrestricted publishing of judicial opinions and statutes simply do not
appertain here. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n44 Id. at 8554: The use of such
standards, whenever practicable and appropriate is intended to achieve the
following goals: a. Eliminate the cost
to the Government of developing its own standards and decrease the cost of
goods procured and the burden of complying with agency regulation. b. Provide incentives
and opportunities to establish standards that serve national needs. c. Encourage long-term
growth for U.S. enterprises and promote efficiency and economic competition
through harmonization [uniformity] of standards d. Further the policy
of reliance upon the private sector to supply Government needs for goods and
services. (emphasis added) n45 See County of Suffolk v. First American Real Estate
Solutions, 261 F.3d 179 (2d Cir. 2001) (developing a two-pronged economic
incentive/public need test to determine whether tax maps developed by the
County of Suffolk were in the public domain from inception and therefore
stripped of copyright protection; citing Practice Management and the panel
opinion in Veeck, deciding that, as a matter of law, the county’s tax
maps were not in the public domain); Practice Management, 121 F.3d
516, cert. denied, 522 U.S. 933, 139 L. Ed. 2d 263, 118 S. Ct. 339, opinion
amended by 133 F.3d 1140 (finding that the American Medical Association did not
lose the right to enforce its copyright when use of its promulgated coding
system was required by government regulations); CCC, 44 F.3d
61, cert. denied, 516 U.S. 817, 133 L. Ed. 2d 32, 116 S. Ct. 72 (upholding
copyright of privately prepared listing of automobile values that states
required insurance companies to use); see also 1 Melville B. Nimmer & David
Nimmer, Nimmer on Copyright § 5.06[C], at 5-91 (2000) (“It is
questionable whether [the due process clause] justifies the denial of copyright
to a private person or group who produces such a model code.”). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*72] The policy concerns supporting the retention of at least some
copyright protection for SBCCI are more persuasive and probative. First and
most importantly, unlike judges and legislators who are paid from public funds
to issue opinions and draft laws, SBCCI is a private sector, not-for-profit
organization which relies for its existence and continuing services, in
significant part, on revenues from the sale of its model codes. n46 The
necessity of maintaining the economic incentive of copyright protection for
these private entities prompted the Ninth Circuit to rule in favor of the
AMA’s retention of its copyright in the Physician’s Current
Procedures Terminology (“CPT”) despite a federal agency’s
adoption of the CPT: The copyright
system’s goal of promoting the arts and sciences by granting temporary
monopolies to copyrightholders was not at stake in Banks because
judges’ salaries provided adequate incentive to write opinions. In
contrast, copyrightability of the CPT provides the economic incentive for the
AMA to produce and maintain the CPT. “To vitiate copyright, in such
circumstances, could, without adequate justification, prove destructive of the
copyright interest, [*73] in encouraging creativity,” a
matter of particular significance in this context because of “the
increasing trend toward state and federal adoptions of model codes.”
n47 This approach is also consistent with the Second
Circuit’s two pronged test in County of Suffolk for determining
whether a work may be deemed to be in the public domain: “(1) whether
the entity or individual who created the work needs an economic incentive to
create or has a proprietary interest in creating the work and (2) whether the
public needs notice of this particular work to have notice of the
law.” n48 Here, without the ability to control unrestricted gratuitous
dissemination of its model codes, SBCCI would lose significant revenue, in turn
substantially impinging on the financial incentive and ability to continue
creating and revising its model codes, absent some alternative source of funds.
n49 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n46 Approximately one-third, or $ 3 million, of SBCCI’s
annual $ 9 million dollar revenue is generated by sales of model codes to
contractors and other interested parties. The remaining revenue is mainly
derived from the annual fees of voluntary members and member organizations.
Voluntary members include scholars, builders, contractors, and governmental
entities that have adopted the code. [*74] n47 Practice Management, 121 F.3d at 518
(quoting 1 Nimmer on Copyright § 5.06[C], at 5-92 (1996))(emphasis
added). n48 County of Suffolk, 261 F.3d at 194. n49 We note here that the second prong of the County of Suffolk test is no
barrier. As stated above, although the codes are necessary for a citizen to
have proper notice of the building code regulations of Anna and Savoy, no
allegations have been made here to suggest that Veeck was denied notice or
access to the codes. We stress that the right of unlimited republication is a
far cry from the rights of access to and notice of the law. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - The importance of affording organizations like SBCCI protection
from attenuated third parties like Veeck — even when motives are pure
and unfair financial competition is not the goal — is best underscored
by verbalizing the natural consequence of reducing the revenues, and thus the
creative incentives, for organizations like SBCCI. Without private
code-creating entities, our smaller towns — and even some of our
larger cities, states, and agencies of the federal [*75] government — would be forced
to author their own regulatory codes. Such a task would inefficiently expend
the time and resources of the legislative and executive bodies of these
governmental entities, not to mention the question of available expertise. To
create codes of appropriate detail, accuracy, and information, governmental
bodies would have to enlist the aid of technical experts, undoubtedly at
considerable cost. Finally, causing municipalities, states, and the federal
agencies to engage in this activity could lead to innumerable variations of any
given code, thereby undermining uniformity and, with it, safety and efficiency.
For small towns like Anna and Savoy, such a result could be even more
detrimental, as their limited resources well might be insufficient to absorb
the costs of creating their own codes. Ultimately, taxpayers would end up
paying for a service that is currently provided efficiently, expertly, and at
no expense to them. I hasten to add that, for my analysis to have force, SBCCI need
not be put completely out of business. Continued maintenance of a revenue
source from sales of codes to individual owners, architects, engineers,
materials suppliers, builders
[*76]
and contractors as well as libraries and other more attenuated
purchasers, all of whom buy copies of the codes directly from SBCCI, serves
another public interest. I refer to the continuation of SBCCI’s
independence from the self interest of its dues-paying members, who otherwise
might be in a position to command more influence were SBCCI forced to obtain
too great a share of its revenue from such supporters. Clearly,
SBCCI’s receipts from sales of the codes substantially reduces the
potential for greater dependence on its membership, presumably allowing SBCCI
to operate without becoming entirely beholden for its existence to
self-interested entities. Finally, denying the Veecks of the world unrestricted
republication and dissemination rights does not obstruct reasonable and
necessary usage of and compliance with the adopted codes. I remain confident
that the copyright doctrines of fair use and implied license or waiver are more
than adequate to preserve the ability of residents and construction industry
participants to copy any portions of the code that they want or need to view.
The fair use doctrine would also protect the use of the code, or portions of
the code, as a teaching [*77] tool and would allow experts, lawyers,
and judges freely to cite the code in their briefs or opinions without
infringing SBCCI’s copyright. These existing internal safeguards in
copyright law show up the majority’s dire predictions for the
unrealstic hyperbole that they are. It is important to keep in mind the record reality that neither
Anna and Savoy themselves, nor builders, contractors, design professionals, or
residents of Anna or Savoy, have complained of denied access to the codes or
being hampered in their efforts to use, copy, or comply with the codes in a
manner consistent with copyright law. Thus, the well-established doctrines of
implied license and fair use preserve the public interest by allowing copyright
protection to co-exist peacefully with all convenient and necessary use of the
model codes. In sum, Veeck has no real support for his infringement, being
relegated to his abstract solipsism that due process immunizes any
republication of the SBCCI’s model codes once they are enacted into
law by reference. This court’s en banc majority holding today ignores
case law from the Supreme Court and other appellate courts, which have
instructed us that our conclusion
[*78]
here cannot be based on absolute or generic pronouncements regarding the
nature of THE law. Instead we should reach our conclusion only after a careful
weighing of the policy considerations of due process and copyright law in the
unique framework of the particular facts of each case. Moreover, to the extent
that recent congressional enactments and federal agency policies give guidance,
they indicate that SBCCI’s copyright protections should be respected
despite adoption of its codes into law. Summarizing all pertinent factors — (1) the lack of
controlling precedent from the Supreme Court or specific guidance from Congress
on the issue, (2) federal law and federal agency policy encouraging the
adoption of model codes and increasing the trend toward federal and state
adoption of model codes, (3) the palpable distinction between the model codes
at issue here and judicial opinions or legislative enactments, (4) case law
from our fellow circuits that supports the retention of copyright protection
even after adoption by reference into law, (5) the complete absence of any
denial of access, (6) the truism that neither due process nor the metaphorical
concept of citizen ownership of the
[*79]
law mandates totally unrestricted publication of adopted model codes,
(7) SBCCI’s identity as a private not-for-profit company which, unlike
courts and legislatures, needs self-generated financial resources to continue
independently creating and modifying its codes, (8) the knowledge that
governmental obtain, free of cost, accurate, efficient and uniform regulatory
codes which otherwise would be time-consuming and expensive (if not impossible
in many instances) to develop in SBCCI’s absence, and (9) the comfort
that all reasonable and necessary use, copying, and republication by building
owners, builders, contractors, design professionals, teachers, lawyers, as well
as citizens and officials of the towns themselves, is assured protection by the
fair use and implied license doctrines — convinces me that the public
policy scale is tipped in favor of enforcing SBCCI’s copyright
protection against Veeck, who has never been denied access to the codes of Anna
and Savoy and almost certainly never will be (but, if he ever is, he has
alternative remediation available). Finding that, on balance, these policy considerations favor SBCCI,
I would conclude as a matter of law that, despite being [*80] adopted into law, SBCCI’s
codes are not in the public domain, and that Veeck’s due process
rights cannot be stretched far enough to permit his completely unrestricted
copying and dissemination of SBCCI’s codes. Veeck’s other
statutory and constitutional defenses similarly fail. 3. The Idea/Expression Dichotomy and Merger Veeck insists (and now a majority of the active judges of this
court agree) that the model codes lose their copyright protection by virtue of
the idea/expression (or fact/expression) dichotomy in copyright law. n50 Veeck’s
basic contention is that when a model code is enacted into law by being adopted
by reference, it automatically metamorphoses from
“expression” to emerge as an “idea”
— and that as an idea, it cannot be protected. n51 Relatedly, he
contends that the doctrine of “merger” applies to nullify
protection for expressions of an idea any time that there are only one or a
very limited number of ways to express a given idea. n52 The cornerstone of
both arguments is the definition of “idea” in the context of
a model code that has been enacted by reference. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n50 17 U.S.C. § 102(b): In no case does
copyright protection for an original work of authorship extend to an idea,
procedure, process, system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described, explained,
illustrated, or embodied in such work. see also Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S.
340, 349, 113 L. Ed. 2d 358, 111 S. Ct. 1282 (1991) (“Copyright law
assures authors the right to their original expression, but encourages others
to build freely upon the ideas and information conveyed by a work. This
principle, known as the idea/expression or fact/expression dichotomy, applies
to all works of authorship.”) [*81] n51 Mason v. Montgomery Data, Inc. 967 F.2d 135, 138
(5th Cir. 1992) (“Thus, while a copyright bars others from copying an
author’s original expression of an idea, it does not bar them from
using the idea itself.”) (emphasis in original) n52 Id. at 138: In some cases,
however, it is so difficult to distinguish between an idea and its expression
that the two are said to merge. Thus, when there is essentially only one way to
express an idea, “copying the ‘expression’ will not
be barred, since protecting the ‘expression’ in such
circumstances would confer a monopoly of the ‘idea’ upon the
copyright owner free of the conditions and limitations imposed by the patent
law.” (citations omitted). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - a. Defining “Idea” Veeck’s argument fails because it misapprehends and misapplies
the “idea” concept in copyright law. “Idea”
in copyright law is a term of art which does not track its everyday, dictionary
meaning. What constitutes an “idea” in the lexicon of
copyright law cannot be determined by empirically analyzing a given fact
situation until the [*82] nascent dividing line between the
“idea” and its “expression” finally
crystallizes; indeed, just the reverse is true. Case law reveals that
identification of the “idea” in a work is not the starting
point but the result of a judicial exercise that in turn is highly dependent on
the precise factual situation being tested. n53 Therefore, designation of the
enacted code as an idea vel non is a legal conclusion to be reached by a court,
not an initial factual finding to be gleaned intuitively. That determination of
idea is not antecedent to a policy determination regarding the
“copyrightability” of the code; to the contrary, it is the
logical end-product reached after competing concerns are weighed judicially.
n54 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n53 Id. (“A court’s decision
whether to apply the merger doctrine often depends on how it defines the
author’s idea. For this reason, in defining the idea the courts should
be guided by ‘the balance between competition and protection reflected
in the patent and copyright laws.’”)(citations omitted); Peter
Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489
(2d Cir. 1960) (L. Hand, J.)(discussing what the court termed as
“verbal works,” the court stated “There can be no
copyright in the ‘ideas’ disclosed but only in their
‘expression.’ Obviously, no principle can be stated as to
when an imitator has gone beyond copying the ‘idea,’ and has
borrowed its ‘expression.’ Decisions must therefore
inevitably be ad hoc.”); see also Nimmer on Copyright §
13.03[B][2][a] at 13-60 (“Merely stating the rule [17 U.S.C.
§ 102(b)], however, does not make any easier the task of drawing the
line between where the idea ends and expression begins.”). [*83] n54 Cf. Nimmer on Copyright § 1.10[B][2] at
1-78 (“On the whole, therefore, it appears that the idea-expression
line represents an acceptable balance as between copyright and free speech
interests”) (citing United Video, Inc. v. F.C.C., 281 U.S.
App. D.C. 368, 890 F.2d 1173, 1191 (D.C. Cir. 1989)). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - Courts frequently must decide how and at what level to draw the
juridical line between idea and expression for copyright purposes. Judge
Learned Hand, applying the idea/expression dichotomy to determine if one author’s
play infringed the work of another playwright, remarked: Upon any work, and
especially upon a play, a great number of patterns of increasing generality
will fit equally well, as more and more of the incident is left out. The last
may perhaps be no more than the most general statement of what the play is
about, and at times might consist only of its title; but there is a point in
this series of abstractions where they are no longer protected, since otherwise
the playwright could prevent the use of his ‘ideas,’ to
which, apart from their expression, his
[*84]
property never extended. Nobody has ever been able to fix that boundary,
and nobody ever can. n55 Our task in this case should have been to decide whether the
“idea” embodied in the code is defined, at one extreme of the
continuum, as the entire code itself in its tangible form, or if instead the
“idea” is defined at a more removed and abstract level
further along that continuum. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n55 Nichols v. Universal Pictures Corp., 45 F.2d
119, 121 (2d Cir. 1930). Commentators and courts have labeled this as Judge
Hand’s “abstractions test.” - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - My foregoing analysis has already demonstrated that the policy
considerations weigh in favor of granting SBCCI protection against Veeck and
other copiers and republishers identically situated. Having laboriously arrived
at this conclusion, and accepting that a building code can be expressed in
myriad ways, I am convinced that the code in its tangible entirety is not the
unprotected “idea” in this situation. n56 None question that
this is true for codes that [*85] have not been enacted globally into law
by reference, and nothing of which I am aware can magically change the
expression that is the copyrighted code into a copyright idea by the simple act
of adoption as a body of law. Today I need not, and therefore do not, attempt
to answer the question of exactly where to draw the line and define the idea
presented here. It suffices that the idea at issue in the code is substantially
more abstract than the physical entirety of the code itself; so as a matter of
law, the code as a unitary whole is not an “idea” to be
denied copyright protection absolutely, but rather is one among a significant
number of possible “expressions.” - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n56 In doing so, I acknowledge that specific portions and discrete
facts within the code could be considered facts or ideas, and therefore
unprotectable. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - b. Merger Libertarian advocates of freedom from essentially all copyright
protection attempt to find a safe harbor in the merger doctrine as a last
resort when they do not prevail
[*86]
on the idea/expression dichotomy. The merger doctrine, however, is a
limited exception in copyright law, intended to shelter only those rare cases
in which the “idea” is susceptible of more than one
expression, but the number of possible expressions is so finite and small as to
have effectively “merged” with the idea. n57 Similar to the
general misconception of the idea/expression dichotomy, the widely
misunderstood merger doctrine also depends on the level of abstraction at which
the court defines the “idea” that is alleged to have merged
with its expression. n58 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n57 See generally CCC, 44 F.3d at 68;
Nimmer on Copyright § 13.03[B][3] at 13-68 - 13-73. n58 See supra note 37. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - Again, Veeck can find no immunity in the merger doctrine because
there exists a plethora of ways to express a building code, thereby making the
merger doctrine inapplicable. Although some among the many highly specific,
technical, and detailed provisions within a building code might be
susceptible [*87] of being expressed in only one or a
handful of ways — and thus conceivably be subject to merger —
a total, unitary building code, in globo, may be written, organized, and
presented in any one of innumerable forms. All concede that many code-drafting
organizations like SBCCI exist and that they are constantly creating competing
versions of topical codes; yet each is expressed differently — and
each is copyrighted. As there exist considerably more than a tiny, finite
number of ways to express a building code, the merger doctrine is inapplicable
and thus unavailable to insulate Veeck’s infringement from copyright
protection. 4. Other Affirmative Defenses to Copyright Infringement Veeck also contends that even if the codes are not in the public
domain and cannot be classified as “ideas,” his code copying
and dissemination activities are protected by the doctrines of free speech,
misuse, waiver, and fair use under copyright law. n59 I address each of these
contentions in turn. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n59 Another defense, implied license, was raised by amicus
curiae Association of American Physicians & Surgeons, Inc., but was
not addressed by either party in the district court or on appeal. Hence, I do
not address it. See Christopher M. v. Corpus Christi Indep. Sch. Dist., 933 F.2d
1285, 1292 (5th Cir. 1991). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*88] a. Free Speech None contends that SBCCI made any attempt to use its copyright to
block or interfere with the public’s access to the municipal codes of
Anna and Savoy, Texas. In Schnapper v. Foley, the District of
Columbia Circuit held that the First Amendment does not require the voiding of
a copyright, even in a government-commissioned work, absent evidence that
access to the work had been denied. n60 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n60 215 U.S. App. D.C. 59, 667 F.2d 102, 115-16 (D.C. Cir. 1981). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - Dealing only with the record facts, I find that Veeck’s
Free Speech defense is further weakened by what he did not do: He did not first
obtain copies of the codes of these two cities and then publish them on the
Internet. Instead, he purchased directly from SBCCI a copy of all its 1994
Standard Codes, which arrived bearing a copyright notice and a license
agreement. Ignoring these, Veeck copied that set onto his computer and posted
it on his own website, identifying it as containing the municipal codes of the
two towns but without advising
[*89]
the identity of the author or the fact of copyright. That which Veeck
did and that which he did not do are inherently different: What he did not do
comes closer to an interested party’s fair use of his local building
code; n61 what he did exemplifies a purchaser who assumes the risk of actively
disregarding the intellectual property rights held and announced by the author/supplier
of a commercial product. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n61 Veeck’s fair use defense is discussed further infra. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - Factually, in enforcing its copyright in its model codes, SBCCI
simply is not stifling access to, or speech about, THE law. SBCCI has not
violated the First Amendment vis-a-vis Veeck. b. Misuse The equity-based defense of copyright misuse, which prevents a
culpable author from prevailing in an action for the infringement of a misused
copyright, “‘forbids the [copyright holder’s] use of
the copyright to secure an exclusive right or limited monopoly not granted by
the Copyright Office and which is contrary to public policy to
grant.’” n62
[*90]
In Practice Management, the Ninth Circuit concluded that the
American Medical Association misused its copyright when it licensed its coding
system to the Health Care Financing Administration. The copyright misuse was
the AMA’s imposition of a condition on its grant of a license that the
licensee-agency agree not to use any competing system. n63 Veeck, in contrast,
has raised no genuine issue of material fact regarding any purported misuse by
SBCCI of its copyright. The summary judgment record is devoid of evidence that
the organization mandates the exclusive use of its codes or any other of its
services as a condition of a governmental subdivision’s adopting one
of the codes. There is thus no record evidence of facts constituting misuse
that in turn would prevent enforcement of SBCCI’s copyright. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n62 DSC Communications Corp. v. DGI Techs., Inc., 81 F.3d
597, 601 (5th Cir. 1996) (quoting Lasercomb Am., Inc. v. Reynolds, 911 F.2d
970, 977 (4th Cir. 1990)). n63 Practice Management, 121 F.3d at 520. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*91] c. Waiver Neither can Veeck prevail on his assertion that SBCCI expressly or
impliedly waives its entitlement to copyright protection vis-a-vis the whole
world when it successfully encourages municipalities to adopt its codes by
reference. I readily concede that a copyright can be waived by the
author’s inaction. n64 Here, however, SBCCI expressly reserved its
copyright in the codes. The district court found undisputed the fact that the
materials Veeck received from SBCCI “contained the copyright
expressions of the Defendant.” Having concluded that SBCCI’s
codes are not in the public domain and that due process does not require
suppression of SBCCI’s copyright, I am convinced that the organization
has done nothing to waive copyright protection expressly. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n64 See, e.g., Sherrod v. American Airlines, 132 F.3d
1112, 1119 n.5 (5th Cir. 1998). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - Copyright also may be waived implicitly by virtue of a particular
act, even if waiver was neither explicit nor the intended result. n65
Veeck’s argument [*92] in this regard is that by encouraging
the towns to adopt the codes, SBCCI impliedly waived its copyright protection.
This presupposes that waiver must be an “all or nothing”
proposition, and thus cannot be implicit as to some parties, such as the
adopting municipalities, without loosing its effectiveness altogether, even
unto strangers like Veeck. Except for his bald assertion, however, Veeck
presents no viable support for his waiver proposition. Moreover, when properly
analyzed, his argument is nothing more than a thinly disguised reformulation of
his due process/public domain argument — namely, that the mere fact of
adoption automatically and totally vitiated SBCCI’s copyright and
superceded SBCCI’s contractual protection as against all comers. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n65 See, e.g., Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d
45, 48 (5th Cir. 1995) (“Therefore, even if it be assumed that the
ribbon flowers were copyrightable, the Littles through inadequate notice have
made them part of the public domain, and Norma Ribbon was free to copy
them.”). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*93] As fully explicated above, my analysis reaches the conclusion
that, as a matter of law, SBCCI’s codes are not in the public domain
and that they retain their copyright protection against Veeck and others thus
situated. I observe that the district court also concluded that the fact that
SBCCI had given the North Carolina Building Inspectors Association permission
to publish on the Internet that state’s building codes, which are
modeled on the SBCCI codes, does not constitute universal waiver. As the
district court noted, “countless entities provide free access to
materials on the Internet and still retain enforcement of their
copyrights.” d. Fair Use Finally, Veeck argues that his posting of SBCCI’s
copyrighted material on the Internet constituted a “fair
use.” Congress has excepted from infringement of copyrighted materials
such specified uses as news reporting, teaching, and research. n66 Courts are
instructed to consider four factors when deciding whether a particular use of
copyrighted material is a “fair use”: (1) the purpose and
character of the use, including whether such use is of a commercial nature or
is for nonprofit educational purposes; (2) the nature [*94] of the copyrighted work; (3) the amount and
substantiality of the portion used in relation to the copyrighted work as a
whole; and (4) the effect of the
use upon the potential market for or value of the copyrighted work. n67 When, as with Veeck’s infringing activity here, the use
of a copyrighted work is noncommercial, the ability to defeat an
infringer’s affirmative defense of fair use requires “proof
either that the particular use is harmful, or that if it should become
widespread, it would adversely affect the potential market for the copyrighted
work.” n68 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n66 See 17 U.S.C. § 107 (2000). n67 Id.; see also Campbell v. Acuff-Rose Music,
Inc., 510 U.S. 569,
577, 127 L. Ed. 2d 500, 114 S. Ct. 1164 (1994). n68 Sony Corp. v. Universal City Studios, 464 U.S. 417, 451, 78 L. Ed.
2d 574, 104 S. Ct. 774 (1984). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - The key question under the “purpose and
character” prong is whether the alleged infringer’s product
“merely supersedes [*95] the objects of the original creation or
instead adds something new with a further purpose or different character,
altering the first with new expression, meaning, or message. In other words, it
asks whether and to what extent the new work is ‘transformative.’”
n69 Veeck’s posting of the codes on his website was not of a
commercial nature or for nonprofit educational purposes. Neither did his
actions in this case have any transformative effect on the original work. n70
In fact, there is neither an apparent nor announced purpose behind
Veeck’s wholesale copying except that he chose to do so and believes,
empirically, that he has the unfettered right to do so. He presents no
affidavits or other summary judgment evidence to suggest that the townsfolk of
Anna and Savoy or contractors, builders, or other interested parties, would not
have access to the codes without Veeck’s intervention. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n69 Campbell v. Acuff-Rose Music Inc., 510 U.S.
at 579 (citations omitted) (internal quotations omitted). n70 In Campbell v. Acuff-Rose Music, while evaluating a
fair use defense, the Supreme Court discussed the degree to which a
parodist’s work transforms a copyrighted original. See 510 U.S. at
579. There, the parodist was the one making the transformation. In contrast,
Veeck admits that he did nothing more than copy SBCCI’s model codes
verbatim; he did not transform them, through parody or otherwise. Therefore,
Veeck’s argument that the adoption by reference of SBCCI’s
codes by Anna and Savoy were “transformative” events does not
find a home in Campbell. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*96] The nature of the copyrighted work constitutes the second prong of
the fair use analysis. The work at issue is an original technical code produced
by a non-profit organization to encourage uniformity, safety, and economy in a
technical area for the benefit of an increasingly complex society. Within the
four-pronged jurisprudential test for fair use, Veeck’s position finds
its only viable support in this one factor. Although the code is an original
work requiring creativity on the part of SBCCI, it is also an informational and
functional work. This fact broadens the scope of the fair use defense. n71 In
addition, the copyrighted work in this case is part of the regulatory codes of
Anna and Savoy. Although this factor lends a modicum of support to
Veeck’s position, it (1) must be considered in light of all the other
factors, and (2) is not as significant as the others in the fair use
determination. n72 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n71 4 Nimmer on Copyright § 13.05[A][2][a] (citing Diamond
v. Am-Law Corp., 745 F.2d 142 (2d Cir. 1984)). n72 Id. (citing Campbell v. Acuff-Rose Music Inc., 510 U.S.
at 586; Robinson v. Random House, Inc., 877 F. Supp. 830,
841 (S.D.N.Y. 1995)). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - -
- [*97] The third fair use factor — amount and substantiality of
portion used vis-a-vis copyrighted work as a whole — weighs heavily
against Veeck. He published verbatim the entire set of codes obtained from
SBCCI. Even though total copying does not automatically defeat a fair use
defense, and partial copying does not automatically validate it, the general
rule is that reproduction of an entire work constitutes an unfair use. n73
Moreover, the codes copied here were not, literally speaking,
“the” codes of Anna and Savoy: Even though the
towns’ ordinances adopted the model codes that Veeck copied, the
enacting ordinances also contained modifications and clarifications not found
in the verbatim versions of the SBCCI codes posted by Veeck. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n73 Infinity Broadcast Corp. v. Kirkwood, 150 F.3d
104, 109 (2d Cir. 1998). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - Fourth, Veeck’s use could have a substantially
detrimental effect on the market for the copyrighted work. In considering this
factor, we must assess the consequences of wide-spread conduct [*98] similar to Veeck’s, not just
his alone. n74 There is no genuine dispute, based on the summary judgment
record, “that some meaningful likelihood of future harm
exists.” n75 Veeck’s posting of the codes on the Internet
could prove harmful by depressing the price and reducing SBCCI’s
market, thus depriving it of income used in its socially valuable efforts of
confecting, promulgating, and revising model codes. Veeck’s
non-commercial, free publication of the codes exacerbates the detrimental
effect on the potential market: By furnishing the codes entirely free of
charge, he could effectively destroy the market rather than simply creating
competition and price suppression. When viewed in this light, the free
promulgation of a work is seen to be potentially more financially deleterious
than is commercial piracy or cut-rate competitive availability. Currently, the
sale of the copyrighted codes to builders, contractors, design professionals,
and other interested parties (1) accounts for one-third of SBCCI’s
income, (2) provides incentive for SBCCI to stay in business so that small
governmental subdivisions, like the ones at issue in this case, can obtain the
benefits of a pre-crafted technical
[*99]
code, (3) fosters uniformity, and (4) provides some measure of
independence to SBCCI from its members by holding down the extent of
SBCCI’s reliance on membership dues and assessments. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n74 Campbell v. Acuff-Rose Music Inc., 510 U.S.
at 590 (consideration of the fourth factor “requires the court to
consider not only the extent of the market harm caused by the particular
actions of the alleged infringer, but also ‘whether unrestricted and
wide-spread conduct of the sort engaged in by the defendant … would
result in a substantially adverse impact on the potential market’ for
the original.”) (quoting 4 Nimmer on Copyright §
13.05[A][4]). n75 Sony Corp., 464 U.S. at 451 (emphasis added). - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - The situation presented in this case is not one of mere copying of
the codes for personal use, or of Veeck’s asking SBCCI for permission
to post the codes on the web and having permission denied. As Veeck copied
SBCCI’s model code verbatim, the fair-use calculus weighs heavily
against [*100] him. Veeck’s total copying and
promulgation of SBCCI’s model code, and the potentially harmful effect
of such copying on the market, render his use unfair. C. SBCCI’s Infringement Counterclaim SBCCI holds valid copyrights in its codes, and Veeck has expressly
admitted copying them. In the absence of a viable defense, the district court
was correct in holding that SBCCI established copyright infringement. Under
these circumstances, I am satisfied that the district court’s
conclusions and its award of an injunction and the minimum statutory damages on
each of the five counts of copyright infringement are free of error. n76
Likewise, I find no abuse of discretion in the district court’s award
of attorneys’ fees. n77 - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n76 At the pertinent time, 17 U.S.C.A. § 504(c)(1) set
the range of statutory damages for each act of copyright infringement at no
less than $ 500 or more than $ 20,000. A 1999 amendment has raised those
amounts to $ 750 and $ 30,000, respectively. Id.; Digital Theft Deterrence and
Copyright Damages Improvement Act of 1999, Pub. L. No. 106-160, §
2(1), 113 Stat. 1774 (1999). [*101] n77 Hogan Systems, Inc. v. Cybresource Int’l, Inc., 158 F.3d
319, 325 (5th Cir. 1998) (applying abuse of discretion standard of review to
award of attorneys’ fees in copyright case). Veeck did not brief the
questions of the district court’s grant of a permanent injunction or
award of damages and attorneys’ fees, and therefore waived them. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - III. CONCLUSION Two decades ago, in BOCA, n78 the First
Circuit wrestled with the serious issues raised by what was then only a
“possible trend” toward local, state, and federal adoption of
model codes. n79 That court wisely left open for future evaluation the modern
realities surrounding technical regulatory codes and standards. As the BOCA court
wrote, groups that develop such works “serve an important public
function; arguably they do a better job than could the state alone in seeing
that complex yet essential regulations are drafted, kept up to date and made
available.” n80 In like manner, the two federal circuits that
subsequently addressed challenges similar to that considered by the First
Circuit in BOCA have declined [*102] to invalidate copyrights in works
incorporated by reference into the law. n81 In the legislative arena, Congress
has decreed the policy that federal agencies adopt privately authored technical
standards without voiding the protection afforded to the authors by copyright;
and the OMB has directed all federal agencies adopting such standards to
respect the copyright protections of the copyright holders — the
diametric opposite of causing copyright protection to vanish when the work is
adopted as law. - - - - - - - - - - - - - - Footnotes - - - - - - - - - - - - - -
- n78 628 F.2d 730. n79 Id. at 736. n80 Id. n81 See Practice Management, 628 F.2d 730; CCC,
44 F.3d 61. - - - - - - - - - - - - End Footnotes- - - - - - - - - - - - - - I emphasize that my analysis is restricted to the narrow set of
facts and circumstances before us. At bottom, I think it improvident for this
court to legislate judicially an absolute, per se rule that referential
enactment of a copyrighted work like a technical code into law mystically
metamorphoses it into an “idea,” puts it into [*103] the public domain, waives its copyright
protection universally, and otherwise strips it of copyright protection vel
non. Under the instant circumstances, no one is being denied reasonable access
to the SBCCI codes that have been adopted in globo by local governments; neither
does Veeck’s specific actions, however altruistic they might have
been, make a viable case for fair use. Nevertheless, I readily concede, that
even slightly different facts under but slightly different circumstances could
convince me to support a different result, albeit not a per se rule. Today, the trend toward adoption of privately promulgated codes is
widespread and growing, and the social benefit from this trend cannot be
seriously questioned. The necessary balancing of the countervailing policy
concerns presented by this case should have led us to hold that, on these
facts, the copyright protection of SBCCI’s privately authored model
codes did not simply evanesce ipso facto, when the codes were adopted by local
governments; rather, they remain enforceable, even as to non-commercial
copying, as long as the citizenry has reasonable access to such publications
cum law — and subject, of
[*104]
course, to exceptions for implied or express waiver or consent, fair
use, or other recognized exceptions, when applicable. For these reasons, I
cannot join in the majority’s inflexible reasoning and unnecessarily
overbroad holding. I therefore respectfully dissent. |