Robert J. Bernstein and Robert W. Clarida

Last month, in Georgia v. Public.Resource.Org, ___ S. Ct. ___, 2020 WL 1978707 (April 27, 2020), the U.S. Supreme Court held that, under the "government edicts doctrine," the annotations contained in the Official Code of Georgia Annotated (the OCGA) were not copyrightable. The case arose after the Public.Resource.Org (PRO), a nonprofit organization whose mission is "to facilitate public access to government records and legal materials," posted a digital version of the OCGA and made it available to download without charge on various websites. The PRO also distributed copies of the OCGA to various organizations and Georgia officials. Georgia sued the PRO for copyright infringement in the U.S. District Court for the Northern District of Georgia, which held in 2017 that the annotations in the OCGA were copyrightable "because they were not enacted into law" and "lacked the force of law." 244 F. Supp. 3d 1350, 1356 (N.D. Ga. 2017). On appeal, the U.S. Court of Appeals for the Eleventh Circuit reversed in 2018 based on its interpretation of the "government edicts doctrine." 906 F. 3d 1229 (11th Cir. 2018). In a 5-4 opinion by Chief Justice John G. Roberts, joined by Justices Sonia Sotomayor, Elena Kagan, Neil M. Gorsuch and Brett M. Kavanaugh, the Supreme Court affirmed the holding that the annotations were not copyrightable, but did so based on a different formulation of the doctrine than the Eleventh Circuit's.

The Government Edicts Doctrine

The government edicts doctrine was developed in three 19th century Supreme Court opinions: Wheaton v. Peters, 8 Pet. 591 (1834); Banks v. Manchester, 128 U.S. 244 (1888); and Callaghan v. Myers, 128 U.S. 617 (1888). These precedents, taken together, established that neither judges nor the official reporter of decisions could hold a copyright in judicial opinions, or in syllabi or headnotes created by judges in the exercise of their official duties, but the reporter could hold a copyright in explanatory materials (annotations) created by the reporter himself because the reporter had no authority to speak "with the force of law."

Georgia argued that the annotations in the OCGA were copyrightable because they did not have "the force of law." The court rejected that limited approach and instead focused on the identity of the creator of the annotations and whether they were prepared within the scope of its official duties.

The underlying principle reflected in these decisions is that no one can own the law. Rather, it is in the public domain. Judicial opinions and legislation are considered constructively authored by the people, rather than the drafters of the opinions and legislation. In considering whether annotations in the OCGA were copyrightable, the court distilled the government edicts precedents into "a straightforward rule based on the identity of the author":

Because judges are vested with the authority to make and interpret the law, they cannot be the author of the works they prepare in the discharge of their judicial duties … . This rule applies both to binding works (such as opinions) and to non-binding works (such as headnotes and syllabi) … It does not apply, however, to works created by government officials (or private parties) who lack the authority to make or interpret the law, such as court reporters.

Georgia, 2020 WL 1978707, at *6 (internal quotation marks and citations omitted).

Although the precedents relied on by the court concerned judicial opinions, syllabi and headnotes, the court held that the rule applied equally to legislation and related materials, such as "explanatory and procedural materials legislators create in the discharge of their legislative duties." Id. The court therefore summarized the rule as follows: "[C]opyright does not vest in works that are (1) created by judges and legislators (2) in the course of their judicial and legislative duties." Id. In applying this rule to the annotations in the OCGA, the court found that they were not copyrightable because they were created by a commission appointed and supervised by the legislature, acting within its official duties, and the commission functioned as an "arm of the legislature."

The Georgia Legislature and the Commission

The court reached this conclusion based on the following factors: (1) the Georgia legislature appointed the Georgia Code Revision Commission (the Commission) to create the OCGA, which in turn hired a private company (Lexis) to create the annotations under a work-for-hire agreement; (2) under §201(b) of the Copyright Act, the Commission is therefore deemed the "author" of the annotations. 17 U.S.C. §201(b) ("In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright."); (3) the Commission is created by the legislature, for the legislature, consists largely of legislators, and receives funding and staff designated by law for the legislative branch; (4) "the annotations the Commission creates are approved by the legislature before being 'merged' with the statutory text and published in the official code alongside that text at the legislature's direction;" and (5) the Georgia Supreme Court has held that the work of the Commission is within the legislative sphere. In summary, the court ruled that these facts demonstrate that "the Commission serves as an extension of the Georgia Legislature in preparing and publishing the annotations." Id. at *7.

Turning to the second step in the analysis, the court determined that, because "the Commission's preparation of the annotations is under Georgia law an act of 'legislative authority,'" and "the annotations provide commentary and resources that the legislature has deemed relevant to understanding its laws," the Commission "creates the annotations in the 'discharge' of its legislative 'duties.'" Id. at *7.

In conclusion, the court held: "In light of the Commission's role as an adjunct to the legislature and the fact that the Commission authors the annotations in the course of its legislative responsibilities, the annotations in Georgia's Official Code fall within the government edicts doctrine and are not copyrightable." Id. at *8.

The court was not persuaded by the arguments of Georgia and the amici (13 states and the District of Columbia) that denying copyright to the annotations in Georgia's official code would also invalidate the copyrights in the annotations of the 14 amici, which were prepared in comparable circumstances. As a result, without the protection of the exclusive rights under copyright, it would be difficult for Georgia and the amici states to induce private companies to prepare the annotations, or the companies would have to charge substantially more for their creation, because the companies would no longer be able to recoup their costs, much less make a profit, in competition with public domain materials. Moreover, Georgia asserted, the increased cost of obtaining the annotations could cause some states to discontinue their publication.

Georgia and the amici states therefore argued that such results would be contrary to "the overall purpose of the Copyright Act to promote the creation and dissemination of creative works." Id. at *9. The court considered this to be a policy argument properly addressed to Congress, which has the power "to decide how best to pursue the Copyright Clause's objectives," id. (citing Eldred v. Ashcroft, 537 U.S. 186, 212 (2003)).

The court also rejected Georgia's reliance on the fact that, in the definition of "derivative works" in §101 of the Act, "annotations" are included "as among the kinds of works eligible for copyright protection" because such eligibility is limited to "annotations … which … represent an original work of authorship." 17 U.S.C. §101 (emphasis added).

Instead, the court ruled that because ["t]he whole point of the government edicts doctrine is that judges and legislators cannot serve as authors when they produce works in their official capacity," annotations subject to that doctrine are not "works of authorship." The court therefore distinguished between annotations "prepared by a private party," which may be copyrightable (absent a work-for-hire arrangement with an arm of the legislature, as in Georgia); and annotations prepared by judges or legislators acting in their official capacity, which are not copyrightable.

Nor was the court persuaded by the statement in the Copyright Office's Compendium of U.S. Copyright Office Practices (the Compendium) that it would register annotations unless they have "the force of law." Compendium, §313.6(C)(2) (rev. 3d ed. 2017) (emphasis added). The court considered the Compendium to be "a non-binding administrative manual that at most merits deference … to the extent it has the 'power to persuade.'" Georgia, 2020 WL 1978707, at *9. Because the court considered its precedents (Wheaton, Banks and Callaghan) to be determinative of the copyrightability question, it considered any competing guidance in the Compendium unpersuasive.

Conclusion

Although the annotations in the Official Code of George Annotated did not have the "force of law," the court rejected that test for copyrightability. Instead, the court held that, under its precedents, the determinative factors were (1) the identity of the author (judge or legislator), and (2) whether the author was acting within the scope of his official duties. Because the Commission was found to be an "arm of the legislature" acting within the scope of its legislative duties, the court held that the annotations were not copyrightable. This holding upended the longstanding practice of Georgia and the amici (13 states and the District of Columbia) to claim copyright in annotations prepared under comparable circumstances and to license them for sale by private companies. It remains to be seen how arrangements for the creation and distribution of annotations to official state codes will be structured going forward in light of the holding in Georgia.

Robert J. Bernstein practices law in New York City in The Law Office of Robert J. Bernstein. He is a frequent author and lecturer on copyright law and litigation. Robert W. Clarida is a partner in the New York law firm of Reitler, Kailas & Rosenblatt and the author of the treatise Copyright Law Deskbook (BNA).