Privately authored model codes solicited to the government and enacted into law are not entitled to copyright protection, the en banc U.S. Court of Appeals for the Fifth Circuit held June 7 (Veeck v. Southern Building Code Congress International Inc., 5th Cir., No. 99-40632, en banc decision 6/7/02).

Reversing a panel ruling that affirmed a summary judgment for the copyright owner, the 8-6 decision relied on the long-standing principle that "the law" may not be subject to exclusive rights that can interfere with public access. The court also found that model codes become "facts" when enacted, and are therefore not subject to copyright protection under the merger doctrine. In dissenting opinions, Judge Jacques L. Wiener Jr. complained that the majority's holding enacts a blanket, per se rule that fails to take account of the private authorship here, and Judge Patrick Higginbotham noted that the record fails to support a claim that public access to the laws was hampered.

Codes Put on Web Site.

Southern Building Code Congress International Inc. (SBCCI) is a nonprofit organization that develops and promulgates model building codes, which it encourages local governments to enact into their codes of law. Although SBCCI asserts a copyright in each of its codes, copies of enacted codes are made available to the public in the enacting government's offices, and members of the public may obtain copies of portions of the codes from city offices, libraries or SBCCI itself. SBCCI uses revenue from sales of the copies to fund its nonprofit activities.

Peter Veeck operates RegionalWeb, a nonprofit Web site that provides information about Texas, including the texts of local building codes. By cutting and pasting from a package of codes that he purchased from SBCCI in electronic form, Veeck was able to put the entire codes of Anna and Savoy, Texas on his Web site. After receiving a cease and desist order from SBCCI accusing him of infringing its copyrights, Veeck sued for a declaratory judgment of noninfringement, and SBCCI counterclaimed for infringement.

The U.S. District Court for the Eastern District of Texas granted SBCCI's motion for summary judgment. A panel of the Fifth Circuit affirmed, ruling 2-1 as a matter of first impression that copyright protection for privately authored model building codes survives after the codes are enacted into law. 241 F.3d 398, 57 USPQ2d 1665 (5th Cir. 2001) (61 PTCJ 347, 2/9/01).

Last September, the Fifth Circuit agreed to review the case en banc.

Free Access to Laws.

The en banc panel acknowledged at the outset that SBCCI is the copyright holder for its model building codes. The question here, Judge Edith H. Jones wrote, is whether SBCCI retained a right to exclude others from copying those codes "after and only to the extent to which they are adopted as 'the law' of various jurisdictions."

Two Supreme Court cases have held that neither publishers nor court reporters can claim a copyright in judicial opinions, Judge Jones noted, citing Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834), and Banks v. Manchester, 128 U.S. 244, 9 S.Ct. 36 (1888). Both cases recognized that "the law," including statutes and judicial opinions, are in the public domain, she added.

SBCCI argued that the Banks ruling has two rationales: (1) judges are government employees who do not require the copyright incentives for their work; and (2) "the law" must remain freely accessible to the public. According to SBCCI, neither rationale applies here because the work in this case was privately authored and because there is no issue in this case over the public accessibility of the building codes.

The Fifth Circuit did not accept SBCCI's reading of Banks, explaining that the decision instead found that neither a court reporter nor a judge is the statutory "author" of a judicial decision for copyright purposes. The opinion states that no copyright may be secured in the work product of judicial officers in the discharge of their official duties, and that this conclusion does not depend on the premise that judges, as public officials, do not need copyright incentives, according to Judge Jones. Banks, like Wheaton, relies on an analogy between judicial opinions and legislative acts as together constituting "the law," which is not subject to copyright, according to the court.

Judge Jones conceded SBCCI's two-tiered interpretation of Banks is reflected in Building Officials and Code Adm. v. Code Technology Inc., 628 F.2d 730, 207 USPQ 81 (1st Cir. 1980) (BOCA). The BOCA decision, however, doubted the soundness of this reading, she added. BOCA identified the real premises of Banks as the "metaphorical concept of citizen authorship" of the law and the policy of free citizen access to the laws, according to the court. It cited the authorship rationale for Banks only to find it unsatisfactory, and it was correct in doing so, Judge Jones noted.

The argument that non-governmental employees retain copyright protection for model statutes or regulations that they draft "raises troubling issues," according to the Fifth Circuit, explaining as follows:

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 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. As an example, three law professors have taken credit for drafting a recent federal statute on supplemental federal court jurisdiction. … 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." SBCCI offers no outer limit on claims of copyright prerogatives by nongovernmental persons who contribute to writing "the law."

Although BOCA described free access to the law as a policy "based on the concept of due process," this due process reasoning involves more than the factual issue of "sufficient" public access, Judge Jones observed. She said that the obligations of due process are not fulfilled by the fact that a copy of the codes is available for inspection and individual copying in a public office. Public access cannot be limited to the minimum availability that SBCCI would permit, according to the court. SBCCI's claim that due process is balanced against its proprietary right "has degenerated free availability into availability as long as SBCCI chooses not to file suit," Judge Jones wrote.

Merger.

Alternatively, Veeck argued that, once adopted, the model codes become "facts" that are not protected under the Copyright Act. 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, rendering copyright protection unavailable, Veeck reasoned.

The Fifth Circuit agreed. The codes are "facts" under the copyright law in that they are the unique, unalterable expression of the "idea" that constitutes local law, Judge Jones wrote. She pointed out that courts routinely emphasize the significance of the precise wording of laws presented for interpretation.

The court rejected the argument of SBCCI that merger is not a bar to copyrightability but rather a mechanism for balancing the competing concerns of adequate protection for the author against the need to foster competition in creativity. 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, according to the court. "In our view, §102(b) [of the Copyright Act] 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 than as a defense to infringement claims," Judge Jones wrote.

The court acknowledged that the merger doctrine can involve a balancing of the policies of the Copyright Act and the public interest in the free flow of information. However, courts properly consult the statute's underlying policy where the line between idea and expression is unclear, and this case is not close, it noted. The enacted building codes can be expressed in only one way because they are facts, the court found.

Finally, the court found irrelevant Section 105 of the Copyright Act, which prohibits copyright protection for federal government works, and Section 201(e), which prohibits involuntary transfers of copyright by any governmental body. Section 105 says nothing about the relationship between non-federal governmental entities and copyright holders, and the fact that SBCCI urged localities to adopt its model codes prevents this dispute from being called a "takings" case, according to the court.

Codes vs. Standards.

The Fifth Circuit clarified that there are limits to its holding that model codes adopted as law are not copyrightable. Judge Jones reassured national standards-writing organizations that their copyrights would not be vitiated by the common practice by government entities of incorporating their standards into laws and regulations.

This case does not involve references to extrinsic standards, Judge Jones pointed out. "Instead, it concerns the wholesale adoption of a model code promoted by its author, SBCCI, precisely for use as legislation," she noted. The court distinguished case law that arises out of official incorporation of extrinsic standards, including CCC Information Services Inc. v. Maclean Hunter Market Reports Inc., 44 F.3d 61, 33 USPQ2d 1183 (2d Cir. 1994) (49 PTCJ 147, 12/15/94), and Practice Management Information Corp. v. American Medical Association121 F.3d 516, 43 USPQ2d 1611 (9th Cir. 1997) (54 PTCJ 327, 8/14/97).

CCC involved a New York statute that required insurance companies to use the "Red Book," a privately prepared list of projected automobile values, as one of several standards in calculating payments for the total loss of a vehicle. Practice Management involved the adoption by the Federal Health Care Financing Administration (HCFA) of an American Medical Association coding system for identifying physician services.

These cases do not apply, according to the court, because the copyrighted works involved did not "become law" merely because the statute referred to them, and because the works were created for reasons other than incorporation into law. Judge Jones acknowledged that the authors in those cases deserve incentives and pointed out that the standards involved were not solicited to either legislators or regulators. In the case of a model code, however, the text of the model serves no other purpose than to become law, she pointed out.

The court acknowledged that, in Practice Management, HCFA incorporated the AMA code into its own regulations. However Practice Management was not selling those regulations but rather a cheaper edition of the AMA code, which was used by insurance companies and had other non-governmental uses, it explained. The result in this case would have been different, Judge Jones added, if Veeck had published the SBCCI model codes as model codes, rather than the building codes of the Texas towns.

Policy Arguments.

Finally, the court rejected claims that without full copyright protection SBCCI will lose the revenues needed to continue its public service of code drafting. The court pointed out that the firm has survived for 60 years with no court award of copyright protection, noting that the success of voluntary code-writing groups is attributable to the technological complexity of modern life rather than copyright protection. Judge Jones added that SBCCI could also enhance the market value of its code with "value added" in the form of commentary, questions and answers, and other useful information.

Dissenting Opinions.

Judge Jacques L. Wiener Jr., who wrote the panel opinion in this case, offered an extensive dissenting opinion. He complained that the majority's holding amounts to a blanket, per se rule that once a copyrighted work is enacted into law by reference, it loses its entire copyright protection, regardless of the nature of the author, the character of the work, or the relationship of the copier to the government entity that enacted the work into law.

Judge Wiener pointed out that the Banks case did not turn on the nature of the work, but on the nature of the author. Thus, the holding is limited to the work of taxpayer-paid public officials who produce or interpret the law, and the majority has improperly stretched that case to conform to the facts here, he commented.

He concluded that public policy issues favor copyright protection because of the lack of guidance from the Supreme Court and Congress, because of the governmental trend to encourage adoption of model codes, and because of the distinction between model codes and judicial opinions or legislative enactments. He also noted that the issue of public access to the laws was never disputed in this case, and that neither due process nor the metaphorical concept of citizen ownership of the law mandates totally unrestricted publication of adopted model codes.

Finally Judge Wiener suggested that a fair use analysis would have found Veeck's use unfair.

Judge Patrick Higginbotham's dissenting opinion also pointed out that the record contains no suggestion that private entities will control access to "the law," and that Banks is a case about authorship rather than the validity of copyrights held by private parties and licensed to lawmakers. He rejected the merger argument, insisting that a complex or simple code can be expressed in a variety of ways.

The question is not whether copyright law should be extended to cover the law, but whether SBCCI's otherwise valid copyright should be invalidated by the legislative action of a municipality, Judge Higginbotham observed. This is federal common law adjudication which must be on a case-by-case basis, even if the result is the one urged by Veeck in this case, he concluded.

The summary judgment for SBCCI was reversed.

Veeck was represented by Eric P. Weisberg, Weisberg Law Office, of Denison, Texas. SBCCI was represented by Robert J. Veal, Burr & Forman, of Birmingham, Alabama.