copyright in model codes after Georgia v. PublicResource.Org

Older case, but worth working through!

International Code
Council, Inc. v. UpCodes, Inc., 2020 WL 2750636 (S.D.N.Y. May 26, 2020)

ICC claimed that defendants
infringed its copyrights in forty model building codes (I-Codes) by posting them
and derivative works on their website, UpCodes. The court endorsed the basic
proposition that there can be no liability for sharing the law with the public,
whether as a matter of copyrightability or fair use, but found that some of
UpCodes’ “redlines” might go too far and thus denied cross-motions for summary
judgment. It’s a great survey of issues that remain after the Georgia v.
Publicresource.org
case and well worth reading—especially on merger.

State/local adoption of model codes benefits everyone involved, including the public, by
aligning the law with industry best practices. ICC was founded in 1994 by three regional standards development
organizations (SDOs) that developed similar codes, who donated their copyrights
in model codes to ICC in 2003 “and envisioned that ICC would produce
coordinated national building codes. Its codes have been adopted into law by jurisdictions across all fifty states.

One of the
“foremost” reasons ICC develops model codes is to get them enacted into law. It
has a dedicated government relations department that helps jurisdictions enact
its codes. The development process “allows for public participation and comment
at no cost,” “involves significant participation by government representatives,”
and includes revisions every three years.  “ICC currently incurs the up-front costs of
its code development process and recoups the relevant costs at least in part
from the sale and licensing of its copyrighted codes.” ICC charges “modest”
prices compared to those for other technical reference works and donates
hundreds of copies of its model codes to libraries and other jurisdictions
throughout the US. Members of the public can purchase model codes and
guidelines online. ICC also sells a variety of supplemental materials and
services, such as code commentary, study companions, handbooks, user’s guides,
and training materials incorporating model code text. And:

ICC also makes its model codes, and some government codes that adopt
the model codes, available for free on its website in a digital library called
publicACCESS. The publicACCESS reading room makes printing, copying, and
downloading of the codes difficult, though it does not necessarily completely
prevent such functions. ICC publicizes that the free access it provides to its
model codes and the enacted state and local codes is on a read-only basis. ICC
relatedly offers a paid service called premiumACCESS, which provides users with
access to additional features such as full access to commentaries, and tools to
highlight, bookmark, and annotate the codes.

Meanwhile, UpCodes
is a startup providing “easy and convenient access to
materials of particular importance to members of the architecture, engineering,
and construction (‘AEC’) industries, such as the state and local building codes
that governed their projects.” Like publicACCESS, it has some free services and
others that are available only to paid users. There are two versions of
relevance to the suit: pre-suit UpCodes made the forty I-Codes at issue freely available
to anyone to view, print, copy, and download, but redirected users to ICC’s
website for at least one (the International Zoning Code 2015). The forty ICC
model codes were posted in a section titled “General Building Codes” and
identified by their model code names, but also identified jurisdictions that
had adopted the model codes on the same page, at least as to some of the codes.
Meanwhile, the paid access portion displayed governmentally enacted building
codes that adopted ICC’s model codes with amendments. “[A]dditions by the
enacting state or local jurisdiction were displayed in green, while all model
code text that a jurisdiction did not adopt was struck-through in red, much
like in a redline.”

Current UpCodes “purports
to post only enacted state and local building codes, rather than any model
codes as such,” and doesn’t charge for access to enacted laws. It also now
shows only the titles or headings of the deleted model code provisions in
struck-through red text, rather than all portions of the model codes that were
not adopted. But it still uses the “trademarked” names of ICC’s model codes at
various points, e.g. by noting on a state/local code page that the enacted code
adopts a particular model code with or without amendment.

There is an
extensive and nuanced review of the case law, but the bottom line is simple: “the
I-Codes as Adopted are in the public domain, because they are in fact enacted
state and local laws binding on the enacting jurisdictions’ constituents.” (The
court declined to rely on collateral estoppel against ICC’s predecessors in
interest.)  However, it is possible that
defendants infringed by posting the codes “as model codes or the I-Code
Redlines … [T]he record is ambiguous as to whether what the Defendants actually
post constitutes ‘the law’ alone.”

The court rejected
ICC’s arguments that, if adoption of model codes prevents enforcement of
copyright in those codes, that’s an unconstitutional taking, and its related
argument that 17 U.S.C. § 201(e) prohibits government expropriation of
copyrights.

Takings: “Private
parties do not have reasonable investment-backed expectations in property or
information voluntarily provided to government, beyond what is explicitly
provided by the government itself.” Given that ICC urged government adoption of
its codes, it could not complain when that happened, even if it wanted to have
its copyright and enact it too:

Even if ICC did not expect that its encouragement of government
adoption would prevent it from enforcing its copyrights as to the I-Codes as
Adopted, that legal consequence flows from the federal law of the public domain
rather than from unjust action by the state or local jurisdictions. Far from
coercing ICC to give up its copyrights, the jurisdictions are following ICC’s
advice that the I-Codes would protect their citizens better than would the
jurisdictions’ trying to draft complex technical codes from scratch.

Nor did it matter
that “many jurisdictions sign licensing agreements respecting ICC’s copyrights.”
ICC retained copyrights in its model codes as model codes, but that didn’t
answer the question of whether the model codes became “laws” governing the
public. Regardless, those agreements could not override the public’s right to “freely
share the laws that govern them.”

As for §201(e), that
applies only to individual authors, and also more fundamentally “addresses
government actions avowedly intended to coerce a copyright holder to part with
his copyright, so that the government itself may exercise ownership of the
rights.”

How broad is this
holding?

A privately-authored work may “become the law” upon substantial
government adoption in limited circumstances, based on considerations including
(1) whether the private author intended or encouraged the work’s adoption into
law; (2) whether the work comprehensively governs public conduct, such that it
resembles a “law of general applicability”; (3) whether the work expressly
regulates a broad area of private endeavor; (4) whether the work provides
penalties or sanctions for violation of its contents; and (5) whether the
alleged infringer has published and identified the work as part of the law,
rather than the copyrighted material underlying the law. These considerations
may not all be strictly necessary or exhaustive, but are guideposts to assess
whether notice of the purported copyrighted work is needed for a person to have
notice of “the law,” such that due process concerns would effectively
categorically outweigh the private author’s need for economic incentives.

However, “SDOs may
still sue for infringement if a defendant copies their model codes as model
codes or indiscriminately mingles the enacted portions of the model codes with
portions not so enacted.”

Though there were
some factual issues remaining, the framework was clearly highly
defense-favorable. Even the trademark-y, “others are free to copy the law, they
are not free to copy the copy” bit favored defendants: “While it would likely
be inappropriate for a user to post the model codes without any indication that
they have been adopted into law, the Court is not persuaded that it would be
improper to identify in such posting both an enacted law and where that law
derived from. Whether a state or local jurisdiction has referenced a private
work is a matter of fact, and is not equivalent to posting the private work
itself.”

A jury could find
that posting model codes as model codes or “indiscriminately” mingling enacted
text with nonadopted text constituted willful infringement, “particularly
considering that Historic UpCodes also hid state and local amendments to the
I-Codes behind a paywall.” 
(A footnote also commented that redlining isn’t really indiscriminate because of its well-understood signalling function.) But a member of the public can post enacted
laws “and state the simple fact that those laws are derived from the I-Codes.” 

One interesting
argument: UpCodes’ posting of the law was underinclusive, “because they do not
post other statutory provisions that might affect the enacted model code text,”
including definitional statutes. The court disagreed; for example, South
Holland’s enacting ordinance states that “the International Building Code
(2012) be and is hereby adopted as the building code of the Village of South
Holland in the State of Illinois.” “While South Holland undoubtedly has other
laws that pertain to building safety, the Court cannot conclude that
Defendants’ description of the IBC 2012 as the building code of South Holland
was inaccurate when South Holland’s ordinance states the same.” It was true
that defendants needed to post amendments to the I-Codes themselves “to
accurately portray the enacted law,” it wasn’t practical to require them to
post any “additional legal material that may bear on the enacted model text’s
full meaning,” since such interactions could go on infinitely.

The court denied the
defendants’ motion for summary judgment because there were genuine factual
disputes suggesting that at least some codes posted on Current UpCodes
“indiscriminately mingled” enacted text with unadopted model text, e.g. posting
a code as part of Wyoming’s building code with all the appendices, when Wyoming
didn’t adopt any appendices (including one focusing on tsunami-generated flood
hazards). 

As to the redlines,
they were not in the public domain just because they “reflect[ ] the work of
lawmakers just as much as the enacted text of the law.” That had to be assessed
as fair use.

Merger: Historic
UpCodes displayed the I-Codes as model codes in full, including even their
copyright pages. The parties disputed at what time merger should be assessed:
at the creation stage (in which case the ideas are separable from the text) or
the putative infringement stage (in which case they aren’t separable from the
law as enacted). While the Federal Circuit has said that merger should be
assessed at the time of copying (Google v. Oracle), the court here
disagreed, elegantly pointing out that this contradicted the Federal Circuit’s
own framing of the Second Circuit approach, which is to assess merger as a
matter of infringement, not copyrightability:

[I]f that defense can turn only on considerations that relate to the
time of initial copyrightability, rather than the time of the activity that may
expose a defendant to liability, it is hard to see how courts are meaningfully
considering merger “in the context of alleged infringement” and under the
rubric of substantial similarity.  Far
from providing courts with “a more detailed and realistic basis for evaluating”
defendants’ merger claims, such reasoning requires courts to ignore potentially
relevant evidence from defendants while shifting a burden of proof to them.

Thus, merger
requires assessing “whether previously copyrighted language has become
essential to the expression of, or integrated with, a legal conception.” The
enacted law is a fact. “Even though the model codes themselves have not become
the law, one would need to use those model codes’ precise language to express
laws that had adopted the codes by reference in their entirety.”

What about the
copyright pages? “[D]e minimis under the circumstances.” So too with the
current UpCodes approach of showing model code headings struck-through in red
when displaying enacted codes that amend the model codes, “bearing in mind the
headings’ minimal contribution to the overall model codes.”

Again, there were
factual issues about what exactly defendants posted that prevented summary
judgment for them:

There are some pages on Historic UpCodes where Defendants appear to
have posted model building codes without mentioning adopting jurisdictions. On
still other pages, the model code is accompanied by a section listing states
that adopted the model code, but it is unclear whether those states adopted the
code without amendment (such that the model code was the only way to express
their laws, even if not explicitly identified as such) or whether those states
amended the model codes (such that the model code text was not the only way to
express those laws). That Defendants made government amendments to the I-codes
available only to paying users may also cut against the notion that they meant
only to express the law.

Fair use: The court
would have reached the same result on the I-Codes as adopted if it had relied
on fair use, and the redlines might be fair use. 
Purpose: “Posting
enacted laws for the purpose of educating members of the public as to their
legal obligations may be transformative, even if the enacted laws are identical
to other copyrighted works.” And commerciality isn’t very important when the
use is educational/informative/transformative.

Whether the redlines
were transformative was a closer call. “In a sense, the I-Code Redlines are
like legislative history showing what the state and local jurisdictions
explicitly decided to add or delete when adopting the model codes.” The PRO case expressed
concern that a state might try to “monetize its entire suite of legislative
history.” But those were works authored by judges and legislatures, and the
redlines might be “less probative” than legislative history or annotations. “As
ICC points out, knowing that Wyoming did not adopt an appendix on
tsunami-generated flood hazards probably does not help Wyoming residents comprehend
their legal duties.” And that the redlines were only available to paying
customers could partially offset transformativeness.

Nature of the work:
highly factual, even as to the redlines; favored defendants.

Amount copied: As in
the DC Circuit’s ASTM case, where a defendant “limits its copying to
only what is required to fairly describe the standard’s legal import, this
factor would weigh strongly in favor of finding fair use here, especially given
that precision is ten-tenths of the law.” However, that likely weighed against
fair use for the redlines.

Market effect: Again
relying on ASTM, the court considered (1) the marginal harm caused,
given that SDOs make their standards available for free in controlled reading
rooms without hurting sales of their standards; (2) the harm caused by making
available only the portions of the standards that “became law” versus the
markets for the complete standards; (3) the market for derivative works, “particularly
considering that the standards are regularly updated and that the private
parties most interested in the standards would presumably remain interested in
having the most up-to-date ones.” ASTM also noted that ICC remains
profitable, despite its predecessors in interest having lost similar cases,
through sales of copies of the I-Codes and other services such as consulting,
certification, and training.

This factor, unlike
the others, could potentially weigh against copying the I-Codes as adopted,
because if they were adopted without amendment they were effective substitutes
for the model codes. There was also a genuine dispute on the effect on the market
for derivative works, though the court doubted that any dispute was material
given the combined weight of the other three factors. The effect of the
redlines was also unclear; they could have competed with ICC’s own redlines,
but “the record tends to focus on a variety of derivative works that are not
redlines, such as training and certification documents, user’s guides,
handbooks, and code commentary.” (In a footnote, the court noted that UpCodes
could substitute for the controlled reading rooms/online libraries—but, I note,
if those are free to users, then it’s not clear what “market” ICC loses from
that.)

For the same
reasons, the court declined to rule on whether defendants’ infringement (if it
existed) was willful. A reasonable jury could so find:

Defendants undisputedly copied the I-Codes without ICC’s authorization,
and ICC cites multiple statements suggesting Defendants knew doing so would
displease ICC and possibly harm ICC’s business. ICC also argues that Defendants
were at least reckless insofar as they posted the I-Codes without seeking the
advice of counsel.

But they might
nevertheless have believed their actions were entirely legal “based on their
understanding of the law,” as their public statements indicated, and the jury
might believe that they couldn’t afford to hire a lawyer; they might not have
recklessly disregarded the possibility of infringement. (If the district judge
can’t figure out whether there was infringement even after extensive briefing
and analysis, could it really be reckless to think there wasn’t?)

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