Well-settled precedent establishes that state and federal law is not protected by copyright. The situation had, however, been less clear with respect to annotations and commentary on the law. Under the century-old Supreme Court case of Callaghan v. Myers, 128 U.S. 618 (1888), a private reporter's annotations and commentary on the law (which itself has no legal force) is subject to copyright protection. In yesterday's 5-4 opinion, the Supreme Court determined whether a state may itself hold copyright in annotations and commentary authored by the state (or with the state's imprimatur) on its state code. The majority's answer was "no."
Writing for the majority, Chief Justice Roberts held that the copyrightability of a state's non-binding commentary and annotations was governed by the "government edicts doctrine," as stated in another century-old decision, Banks v. Manchester, 128 U. S. 244 (1888). In Banks, the Supreme Court held that judges could not hold copyright in any "work they perform in their capacity as judges" including any non-binding commentary and annotations. The logical extension of Banks is that state legislators likewise cannot hold copyright in non-binding commentary and annotations performed in their capacity as legislators. In yesterday's decision, the Court repurposed the two-part government edicts doctrine test from Banks and applied it to legislators. Specifically, the Court asked: (1) Do the "authors" of the annotations qualify as legislators? and (2) Is the creation of the annotations within the discharge of their legislative duties?
Applying the first prong of the test, the Court determined that the annotations were produced by a division of the LexisNexis Group under a work for hire agreement with Georgia's Code Revision Commission (the "Commission"). The agreement provided that any copyright in the state code vested in the State of Georgia, acting through the Commission. Thus, the Commission would be the "author" under copyright law. While the Commission was not indistinguishable from the Georgia legislature, it functioned as "an arm of it" for the purpose of producing the annotations. Specifically, the Commission was created by the Georgia legislature, and its membership consisted largely of legislators. Moreover, the Commission was funded through legislative branch appropriations and staffed by the Office of Legislative Counsel. Thus, the author of the annotations was a legislator, satisfying the first prong of the test.
Turning to the second step under the test, the Court found that the Commission created the annotations in the discharge of its legislative duties. Although Georgia argued that its annotations were not enacted into law through bicameralism and presentment, the annotations were nevertheless approved by the state legislature before they were merged with the statutory portion of the state code prior to publication. Further, the Commission's role in compiling the statutory text and accompanying annotations fell "within the sphere of legislative authority" under the Supreme Court of Georgia's decision in Harrison Co. v. Code Revision Comm'n, 260 S. E. 2d 30 (1979). Thus, the Court found, as a matter of state law, the Commission exercised the legislature's authority when it worked with Lexis to produce the annotations.
Having determined that the government edicts doctrine precluded Georgia from holding copyright in the state code annotations and commentary, the Court addressed Georgia's various arguments in favor of copyright protection. The Court rejected Georgia's assertion that its annotations must be copyrightable because they were not binding law. Binding or not, these official annotations are very significant legal resources for litigants and citizens.Endowing them with copyright protection would logically permit States to hide all non-binding judicial and legislative work product behind a paywall. Georgia's attempts to invoke sections of the Copyright Act and the Compendium of U.S. Copyright Office Practices also failed as the Court felt a proper interpretation of those sources was consistent with the Court's application of the government edicts doctrine.
Justices Ginsburg and Thomas both dissented in separate opinions. Justice Ginsburg primarily disagreed with the majority's analysis under the second prong of the government edicts test, where she believed that the annotations were not produced in a legislative capacity. Specifically, because the role of the legislature was to make laws-not to construe statutes after their enactment- the Commission did not discharge any legislative duties in preparing the annotations. She argued that this difference in the Commission's authority was sufficient to justify Georgia's ownership of copyright in the annotations and commentary on its Code.
In his dissent, Justice Thomas expressed his opinion that "[t]his ruling will likely come as a shock to the 25 other jurisdictions" that rely on arrangements similar to Georgia's to produce annotated codes. Justice Thomas argued that public policy considerations should have justified resisting the application of these aging 19th Century precedents to the modern era of statutory annotation and commentary.
If Justice Thomas is correct, the common use of public/private partnerships between states and legal publishers may be in jeopardy. However, the Court did not overturn Callaghan v. Myers. So, it seems that private legal publishers should be able to continue to create copyrightable annotations and commentary on state codes independent of state cooperation. In addition, the Court's decision did not address whether the annotations and commentary would be copyrightable if they were not "works made for hire" prepared on behalf of the state. Consequently, to make commentary and annotation on state codes financially viable, private legal publishers may attempt to rely these two open issues to work around the holding in Georgia v. Public.Resource.Org.
Article orignally published on 28 April 2020
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