IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
________________________
No. 99-40632
________________________
PETER VEECK, doing business as RegionalWeb,
Plaintiff-Counter Defendant-Appellant,
versus
SOUTHERN BUILDING CODE CONGRESS INTERNATIONAL INC.,
Defendant-Counter Claimant-Appellee.
____________________________________________
Appeals from the United States District Court
for the Eastern District of Texas
____________________________________________
February 2, 2001
Before WIENER and STEWART, Circuit Judges, and LITTLE, District
Judge.*
WIENER, Circuit Judge:
Plaintiff-Appellant Peter Veeck (“Veeck”) appeals from a
summary judgment of the district court holding that he infringed
the copyright of Defendant-Appellee Southern Building Code Congress
International (“SBCCI”) when he posted SBCCI’s copyrighted model
*
Chief Judge F.A. Little, Jr. of the Western District of
Louisiana, sitting by designation.
codes on the Internet without SBCCI’s permission. Agreeing with
the district court, we affirm.
I.
FACTS AND PROCEEDINGS
SBCCI is a nonprofit organization that develops, promotes, and
promulgates 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 governments
to enact its codes into law by reference, without cost to the
governmental entity. 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. Once a
governmental unit enacts such a code into law, copies are to be
made available for inspection by the public in the enacting
government’s offices. Members of the public may make or obtain
copies of portions of the SBCCI codes from city offices or local
libraries or may purchase copies of the codes directly from SBCCI
and from some bookstores as well. Although SBCCI is a nonprofit
organization, it uses revenue from sales of its model codes to fund
its continuing activities. Non-members are charged more for copies
of SBCCI’s model codes than are members of the organization. For
example, members are charged $48 for a copy of SBCCI’s 1994
standard building code, for which nonmembers are charged $72.
2
Veeck operates a nonprofit web site, known as RegionalWeb,
which provides information about North Texas, including texts of
local building codes. Several towns in North Texas have adopted
SBCCI’s codes, including the towns of Anna and Savoy. Veeck
attempted to obtain a copy of the building codes of his hometown of
Denison, Texas, after learning that Denison had adopted SBCCI’s
model code as its own. Failing to locate Denison’s building code
at local bookstores or libraries, Veeck ordered from SBCCI copies
of its codes in electronic format.1 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 cities he visited.2 He
apparently never attempted to view or copy the SBCCI codes in any
city clerk’s or other municipal office.
The package containing the computer disks that SBCCI sent to
Veeck included a software license agreement and copyright notice.
1
The record is not completely clear, but it appears that
Veeck did not 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 exact version adopted by Denison.
2
Some of the cities apparently did not have the correct
version of their building code 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.
3
In disregard of these data, Veeck installed the codes on his
personal computer and, by “cutting and pasting,” was able to put
the entire codes on his web site. Veeck’s web site did not specify
that the codes were written by SBCCI, instead simply identifying
them as the building codes of Anna and Savoy, Texas.
When it learned that Veeck had posted copies of its codes on
his web site, SBCCI sent him a cease and desist order, accusing him
of infringing its copyrights. Veeck responded by filing this
declaratory judgment action in an effort to have the district court
rule that he did not violate the Copyright Act. SBCCI
counterclaimed, asserting five counts of copyright infringement, as
well as unfair competition and breach of contract. Both parties
moved for summary judgment on the copyright infringement issue.
In the absence of genuinely disputed material facts, the
district court granted summary judgment in favor of SBCCI, holding
that it held valid, enforceable copyrights and rejecting Veeck’s
defenses of fair use, copyright misuse, waiver, merger, and due
process. The district court found five separate instances of
copyright infringement —— one for each separate model code that
Veeck published on his web site —— and granted a permanent
injunction and monetary damages to SBCCI. Veeck appealed.3
3
Appellate amicus briefs were filed in support of SBCCI by
the American Medical Association, American National Standards
Institute, American Society of Association Executives, American
Society of Heating, Refrigerating and Air Conditioning Engineers,
National Fire Protection Association, Texas Municipal League, and
Underwriters Laboratories, Inc. Briefs in support of Veeck were
4
II.
ANALYSIS
A. Standard of Review
This case is on appeal from a grant of summary judgment,
dismissing Veeck’s declaratory judgment action and granting SBCCI’s
requested copyright infringement relief. We therefore review the
record de novo, applying the same standard as the district court.4
A motion for summary judgment is properly granted only if there is
no genuine issue as to any material fact.5 A fact issue is
material if its resolution could affect the outcome of the action.6
A dispute about a material fact is “genuine” if the evidence would
permit a reasonable jury to return a verdict for the nonmoving
party.7 In deciding whether such an issue has been created, we
must view the facts and the inferences to be drawn from them in the
light most favorable to the nonmoving party —— here, Veeck.8
filed by Professor Malla Pollack and the Association of American
Physicians & Surgeons.
4
Morris v. Covan World Wide Moving, Inc., 144 F.3d 377, 380
(5th Cir. 1998).
5
Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S.
317, 322 (1986).
6
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
7
Id.
8
Olabisiomotosho v. City of Houston, 185 F.3d 521, 525 (5th
Cir. 1999).
5
The standard for summary judgment mirrors that for judgment as
a matter of law.9 Thus, the court must review all of the evidence
in the record, but make no credibility determinations or weigh any
evidence.10 In its review, the court must disregard all evidence
favorable to the moving party that the jury is not required to
believe, and give credence to the evidence favoring the nonmoving
party as well as to the evidence supporting the moving party that
is uncontradicted and unimpeached.11
B. Copyright Infringement
The core purpose of copyright law is “to secure a fair return
for an author’s creative labor” and thereby “to stimulate artistic
creativity for the general public good.”12 To establish copyright
infringement, the plaintiff must prove a valid copyright and
copying by the defendant of constituent elements of the work that
are original.13 Here, there is no question that SBCCI holds valid
copyrights to the building codes and that Veeck copied the codes by
9
Celotex, 477 U.S. at 323.
10
Reeves v. Sanderson Plumbing Products, Inc., 530 U.S. 133,
120 S. Ct. 2097, 2102 (2000).
11
Id. at 2110.
12
Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156
(1975) (internal quotations omitted).
13
Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S.
340, 361 (1991); see also Lakedreams v. Taylor, 932 F.2d 1103,
1107-08 (5th Cir. 1991).
6
placing them on the Internet. Veeck seeks to circumvent SBCCI’s
copyright protection, however, under various doctrines that serve
as defenses to copyright infringement or otherwise limit copyright
holders’ exclusive use of their creations.
Veeck contends that once SBCCI’s model codes are enacted into
public law they lose their copyright protection under principles of
due process, freedom of speech, and the affirmative defenses of
merger, misuse, waiver, and fair use that are peculiar to copyright
law. The instant case is one of first impression in this circuit,
but three other circuit courts have examined the issue of
enforcement of copyrights in the context of privately developed
codes or compilations that had been enacted, in some form, into
public law.14 Although the First Circuit expressed serious doubt
14
See Practice Mgt. Info. Corp. v. American Med. Ass’n
(“Practice Management”), 121 F.3d 516 (9th Cir. 1997), cert.
denied, 522 U.S. 933 (1997), opinion amended by 133 F.3d 1140 (9th
Cir. 1998) (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 Info.
Servs. v. Maclean Hunter Mkt. Reports, Inc. (“CCC”), 44 F.3d 61 (2d
Cir. 1994), cert. denied, 516 U.S. 817 (1995) (upholding copyright
of privately prepared listing of automobile values that states
required insurance companies to use); Building Officials and Code
Adm. v. Code Tech., Inc. (“BOCA”), 628 F.2d 730, 736 (1st Cir.
1980) (declining to invalidate copyright of building code created
by nonprofit group and adopted by the state, but simultaneously
expressing doubt over the enforceability of the copyright given
that the state had adopted the code); 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.”).
7
that a privately authored building code adopted by the state of
Massachusetts could be distinguished from uncopyrightable statutes
and judicial opinions,15 neither that court nor the other two
circuit courts that have subsequently addressed the issue have held
that codes lose their copyright protection when used or adopted by
a state or local government. We decline to create a circuit split
by reaching the opposite conclusion today.16
C. Defenses
1. Due Process/Public Domain
According to Veeck, the public’s due process interest in free
access to the building codes extinguishes SBCCI’s copyright because
the codes enter the public domain when they are enacted into law.
At the outset, we note that although Veeck struggles mightily to
raise a fact issue as to whether he was denied access to the codes,
we agree with the district court that there is no probative
evidence that the codes are not publicly available in North Texas
towns. Leaving aside the issues of the codes’ availability in
bookstores, public libraries, and directly from SBCCI, we shall
assume that due process requires at a minimum that the codes should
15
See BOCA, 628 F.2d at 735-36.
16
See supra note 13; see also David S. Levitt, Copyright
Protection for United States Government Computer Programs, 40 IDEA
225, 238 (2000) (citing cases “support[ing] the proposition that
privately developed and properly copyrighted material should remain
copyrighted material unless the material falls into the strict
definition of statute or judicial opinion”).
8
be available for inspection and copying at the city offices in
towns where they have been adopted by reference. Veeck has fallen
short in his efforts to raise a genuine fact issue regarding such
availability of the codes in Anna and Savoy.17
Inasmuch as there are no facts showing that Veeck was actually
prevented or substantially hindered from viewing the public law,
Veeck’s claim poses the legal question whether a private entity
that develops a code may maintain copyright in it once that code is
adopted in globo as law. Not all reproductions of copyrighted work
are “within the exclusive domain of the copyright owner; some are
17
Had Veeck shown denial of access, we almost certainly would
find that a material fact issue precluded summary judgment. The
record shows, however, that Veeck has not raised a genuine question
as to whether he or anyone else was denied access to the codes at
any such city office. His unavailability claims center on Anna and
Savoy, Texas, two extremely small communities with fewer than 1,000
residents apiece. When Veeck visited Savoy’s city hall, he was
told that the building codes were at the public works department,
information he did not pursue. In Anna, after finding the city
clerk twice absent, he made no further effort to view the codes.
In his own affidavit, Veeck indicates that the codes may be
publicly available in both towns, stating that “the codes are only
available at the Anna and Savoy city halls during those times when
city officials are available.” Veeck simply has not succeeded at
raising any genuine due process issue other than the fact that a
tiny community occasionally may be forced by staff absence to close
the doors to its city hall —— hardly a constitutional violation.
Furthermore, had Veeck in fact been unable to obtain a copy of
the enacted building codes because of SBCCI’s copyright, we would
likely conclude that due process provides grounds to invalidate
such copyright. See Practice Management, 121 F.3d at 519. Given
that Veeck was not precluded from viewing copies of the enacted
codes, however, further legal analysis is needed.
9
in the public domain.”18 Due process requires that the public have
notice of what the law is so that the people may comply with its
mandates.19 Thus the question is whether, once adopted into law,
SBCCI’s codes fall outside its exclusive domain and into the public
domain by virtue of the requirements of due process.20
The First Circuit aptly described the quandary that we face
today when it explained that even though the law is well
established that “judicial opinions and statutes are in the public
domain and are not subject to copyright,” the question remains
“whether this principle likewise covers state-promulgated
administrative regulations which are modelled on a privately
developed code that was copyrighted by the service-oriented
organization responsible for its creation and updating.”21 In other
words,
The rule denying copyright to judicial opinions and
legislative enactments was completely settled by the end
of the nineteenth century. With the emergence of the
regulatory state in the twentieth century, and the
18
Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417,
433 (1984).
19
See BOCA, 628 F.2d at 734.
20
The parties do not question the notion that the codes would
not be copyrightable if they had been developed by public
officials. See, e.g., Banks v. Manchester, 128 U.S. 244, 253
(1888) (holding judicial opinions uncopyrightable because they are
created by judges paid from the public’s coffers); Wheaton v.
Peters, 33 U.S. 591, 668 (1834) (same).
21
BOCA, 628 F.2d at 734 (footnote omitted).
10
proliferation of administrative regulations, two new
questions arose for copyright policy: Should copyright
attach to texts that, though prepared privately, have
received the imprimatur of official action? Should
copyright attach to regulatory codes that, although
drafted by private industry groups, have subsequently
been enacted into law?22
The second question is the one we must answer today.
More than 100 years ago, in Banks v. Manchester,23 the Supreme
Court held that a private reporter of the state’s judicial opinions
who desired to protect his compilation could not assert copyright
for that purpose. The court rested this determination on two
grounds. First, judicial opinions are not subject to copyright
because they are publicly owned by virtue of the fact that the
judges who render them are paid with public funds.24 Second, as a
matter of public policy, judge’s opinions are not subject to
copyright because the public interest is served by free access to
the law.25
The Court’s first ground is not applicable here: Unlike
Banks, in this case SBCCI is asserting a viable proprietary
interest because it created the model codes using its own, private
22
1 Paul Goldstein, Copyright § 2.5.2 (2d ed. 1996 & Supp.
1999), at 2:47.
23
128 U.S. 244 (1888).
24
See id. at 253.
25
See id.; see also Practice Management, 121 F.3d at 518
(interpreting Banks).
11
resources. Nonetheless, the public policy concern announced in
Banks remains vexatious. There, the Court declined to enforce the
state reporter’s copyright in judicial opinions because “[t]he
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. . . .”26 This point would seem to
apply equally to any statute, ordinance, or regulation that has the
force of law irrespective of authorship. But extrapolating broad
generalities from such a narrow holding is risky.
The Second Circuit addressed this public policy argument in
CCC Information Services, Inc. v. Maclean Hunter Market Reports,
Inc.27 That case involved a copyright infringement counterclaim
brought by Maclean, the publisher of the “Red Book” projections of
used car valuations, against CCC, a competitor that copied
Maclean’s valuations into a computer database for sale to
customers. CCC’s database also contained the average of each
vehicle’s valuations in (1) the Red Book and (2) the NADA Official
Used Car Guide (known as the “Bluebook”), the other leading used
car valuation book. A separate market exists for the Red
26
Banks, 128 U.S. at 253; see also BOCA, 628 F.2d at 734-35
(expressing doubt that a private entity that developed a building
code was entitled to enforce copyright after the code was enacted
into public law on the bases that (1) the public owns the law and
pays the salary of those who draft legislation, and (2) the “right
of the public to know the law to which it is subject”).
27
44 F.3d 61 (2d Cir. 1994).
12
Book/Bluebook average “because the laws of certain states use that
average figure as a minimum for insurance payments upon the ‘total
loss’ of a vehicle.”28 The trial court granted summary judgment for
CCC based in part on the legal conclusion that the Red Book fell
into the public domain when it was incorporated into governmental
regulations.29
The Second Circuit reversed and granted summary judgment for
Maclean. The appellate court found it necessary to “balance the
conflicts and contradictions that pervade the law of copyright, and
the need, where elements of the copyright law conflict, to
determine, as a policy judgment, which of its commands prevails
over the other.”30 In the instant case, as in CCC, a policy
judgment is indispensable to our balancing of the public interests
in, on the one hand, encouraging innovation through copyright and,
on the other hand, ensuring free access to the law.
We do not dismiss lightly the policy considerations supporting
Veeck’s position; yet, limited to the narrow set of facts before
us, we perceive the scale of countervailing policy considerations
to be tipped in favor of enforcing SBCCI’s copyright.31 We
28
Id. at 64.
29
Id.
30
Id. at 68 (emphasis added).
31
See id. at 74 (“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.”).
13
reiterate for emphasis that no court has held to the contrary.32
We are further comforted in reaching this balancing result by the
agreement of the leading treatise on the subject that to strip a
copyright owner of his rights when his work is adopted by a state
legislature would “prove destructive of the copyright interest in
encouraging creativity in connection with the increasing trend
toward state and federal adoptions of model codes.”33
The Second Circuit analogized the claims it rejected in CCC to
a hypothetical holding that schoolbooks lose their copyright once
assigned in compliance with a school curriculum mandated by law.34
We believe that if code writing groups like SBCCI lose their
incentives to craft and update model codes and thus cease to
publish, the foreseeable outcome is that state and local
governments would have to fill the void directly, resulting in
increased governmental costs35 as well as loss of the consistency
32
The First Circuit noted in BOCA that it was “far from
persuaded that [plaintiff’s] virtual authorship of the
Massachusetts building code entitles it to enforce a copyright
monopoly over when, where, and how the Massachusetts building code
is to be reproduced and made publicly available,” but declined to
rule on the ultimate merit of the case. BOCA, 628 F.2d at 735.
33
1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright,
§ 5.06[C], at 5-92 (2000).
34
CCC, 44 F.3d at 74.
35
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”); National
14
and quality to which standard codes aspire. A second glance at the
names of the amici supporting SBCCI’s position in this case36
provides an idea of the potential sweep of a contrary holding that
the authors of model codes could not enforce copyrights in their
works once the ultimate reason for their very creation is realized.
As amici state in their brief supporting SBCCI, “these codes and
standards are widely used and adopted by local and state government
and federal authorities throughout the United States who do not
otherwise have the necessary facilities and resources to develop
these safety standards independently.”
Each of the three states comprising this circuit has statutes
that refer to standards promulgated by SBCCI.37 Examples of other
private codes referenced in the statutes of Texas, Louisiana, and
Mississippi are: (1) manufactured home standards adopted and
published by the American National Standards Institute;38 (2) the
Technology Transfer and Advancement Act of 1995, Pub. L. No. 104-
113, § 12(d), 110 Stat. 775, 783 (1996).
36
American Medical Association; American National Standards
Institute; American Society of Association Executives; American
Society of Heating, Refrigerating and Air-Conditioning Engineers;
American Society of Mechanical Engineers; National Fire Protection
Association, Inc.; Texas Municipal League; and Underwriters
Laboratories Inc.
37
See, e.g., Tex. Loc. Gov’t § 235.002(c)(1) (Vernon 1999)
(fire code); La. Rev. Stat. Ann. § 40:1722(B)(3) (West 2000)
(building code); Miss. Code. Ann. § 45-11-73 (2000) (building
code).
38
La. Rev. Stat. Ann. § 51:911.23 (West 2000).
15
Uniform Plumbing Code and the National Standard Plumbing Code;39 and
(3) the codes of the National Board of Fire Underwriters, the
National Fire Protection Association, and the American Society for
Mechanical Engineers.40 As the Ninth Circuit recently wrote when
it declined to find that the American Medical Association’s
copyright of its medical procedure code (“the CPT”) became
unenforceable after a federal agency adopted it for use on Medicaid
claim forms,
invalidating [the AMA’s] copyright on the ground that the
CPT entered the public domain when [the Health Care
Financing Administration] required its use would expose
copyrights on a wide range of privately authored model
codes, standards, and reference works to invalidation.
Nonprofit organizations that develop these model codes
and standards warn they will be unable to continue to do
so if the codes and standards enter the public domain
when adopted by a public agency.41
In State of Texas v. West Publ’g Co.,42 we could discern no due
process violation in the absence of evidence that anyone was
actually being denied access to the law. In the instant case, the
district court likewise was presented with no evidence that Veeck
or others had been denied access vel non to the codes in question;
thus, there was no genuine issue of material fact on Veeck’s due
process claim. Neither does this case involve a citizen barred
39
Tex. Rev. Civ. Stat. Ann. art. 6243-101, § 3 (Vernon 2000).
40
Tex. Nat. Res. Code Ann. § 113.052 (Vernon 2000).
41
Practice Management, 121 F.3d at 519 (footnotes omitted).
42
882 F.2d 171, 177 (5th Cir. 1989).
16
from photocopying applicable portions of municipal codes; on the
contrary, Veeck ordered the SBCCI standardized codes directly from
SBCCI and published those expressly copyrighted works on the
Internet. Because under these facts we conclude as a matter of law
that the codes here at issue had not entered the public domain,
Veeck’s act of copying infringed SBCCI’s copyrights, and no due
process or other policy concern excuses that infringement.
2. Merger
In his merger argument, Veeck contends that SBCCI’s building
codes, once enacted by reference into law, became a fact which can
be expressed in only one way.43 He argues, unsupported by
precedent, that the adoption of SBCCI’s code into law was a
transformative event that instantly denuded the work of copyright
protection. In other words, according to Veeck, there can be only
one expression of the law: Once adopted by the government, the
model code merged into the body of the law. Therefore, concludes
Veeck, there was no other correct way to express the building code
law of, for example, Anna, Texas.
In this circuit, the merger doctrine has been applied to the
question whether a work was copyrightable at the time of its
43
The merger doctrine is based on 17 U.S.C.A. § 102(b), which
states: “In no case does copyright protection for an original work
of authorship extend to any 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.”
17
creation, preventing a copyright from attaching in the first place,
rather than as an infringement defense focusing on merger at the
time of copying.44 When we examine SBCCI’s works at the times of
their creation and ask whether at that instant they merged with the
idea of “building codes,” we conclude that the expression does not
merge instantly with the idea because —— contrary to Veeck’s
insistence —— there remain many ways to write model building codes,
not just one.45 As amici note, there are at least two other sets
of building codes that currently compete with SBCCI’s, namely, the
National Codes published by Building Officials and Code
Administrators International, and the Uniform Codes published by
the International Conference of Building Officials. As the Ninth
Circuit held in rejecting a similar merger argument in Practice
Management, the existence of SBCCI’s copyright does not stifle
independent creative expression by those who would seek to develop
“comparative or better coding systems and lobby[ ] government[s]
and private actors to adopt them. It simply prevents wholesale
44
Hodge E. Mason v. Montgomery Data, Inc., 967 F.2d 135, 138
n.5 (5th Cir. 1992) (citing Kern River Gas Transmission Co. v.
Coastal Corp., 899 F.2d 1458, 1460 (5th Cir. 1990)).
45
See, e.g., American Dental Ass’n v. Delta Dental Plans
Ass’n, 126 F.3d 977, 979 (7th Cir. 1997) (holding that dental
association’s taxonomy was original work of authorship entitled to
copyright protection and stating that “[t]he Code’s descriptions
don’t ‘merge with the facts’ any more than a scientific description
of butterfly attributes is part of a butterfly”).
18
copying of an existing system.”46 Neither does the existence of
SBCCI’s copyrights prevent local governments from adopting codes
that do not share SBCCI’s unique expressive character or even the
same requirements as those contained in its codes,47 from adopting
only parts of the model codes, or from changing them by ordinance.
Public policy also convinces us that application of the merger
doctrine should be withheld here. The purpose behind the concept
of the merger of expression with idea is to ensure that copyright
protection not extend to ideas. The doctrine applies only when
there are few or no other ways of expressing a particular idea.48
SBCCI’s building codes are infused with the opinions of their
authors, from the requirements chosen in the codes to their
arrangement, level of detail, and grammatical style. We have
addressed the policy concerns raised by this case in determining
that the building codes do not fall into the public domain once
enacted into law. The policy imbedded in the merger doctrine is
limited to the separability of idea and expression and is not
46
Practice Management, 121 F.3d at 520 n.8.
47
See American Dental Association, 126 F.3d at 979-80.
48
Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d
527, 533 (5th Cir. 1994) (explaining that “when an idea can be
expressed in very few ways, copyright law does not protect that
expression, because doing so would confer a de facto monopoly over
the idea. In such cases idea and expression are said to be
merged.”).
19
appropriately applied here.49 Balancing copyright’s competing goals
and keeping firmly in mind the language of the Copyright Act, we
conclude that merger is not a valid defense for Veeck.
3. Additional Defenses
a. Free Speech
Veeck raises four additional defenses on appeal.50 As we turn
to the first of these —— his First Amendment defense —— we
emphasize that none contends that SBCCI attempted to use its
copyright to block 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.51
49
The global enactment of a code does make that code the law
of the enacting municipality and hence, in one sense, a “fact.” In
the real world, however, as in this case, acknowledging this does
not change our analytical approach. Individuals such as
contractors who need to use building codes can —— and do —— quote
applicable provisions or incorporate them by reference as needed,
for instance, in preparing bids or setting project specifications.
That type of use is not before us and cannot be equated to the
facts here, involving the gratuitous publication of an entire code.
The doctrine of the merger of expression and fact should not be
applied to defeat SBCCI’s copyright in this case.
50
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, we do not address it. See Christopher M. v. Corpus Christi
Indep. Sch. Dist., 933 F.2d 1285, 1292 (5th Cir. 1991).
51
667 F.2d 102, 115-16 (D.C. Cir. 1981).
20
Veeck’s Free Speech defense is further weakened by the fact
that he did not first obtain copies of the codes of these two
cities and then publish them on the Internet. Instead, Veeck
purchased directly from SBCCI a copy of its 1994 Standard Codes,
which arrived bearing a copyright notice and a license agreement.
He nevertheless copied that set onto his computer and he posted it
on the web, identifying it as containing the municipal codes of the
two towns. These two possible courses of action are inherently
different: The former is more akin to a citizen’s fair use of his
local building code;52 the latter comprehends a purchaser who
assumes the risk of actively disregarding the intellectual property
rights held and announced by the supplier of a commercial product.
In enforcing its copyright in its model codes, SBCCI is not
stifling access to or speech about the law. The First Amendment is
not violated here.
b. Misuse
The equity-based defense of copyright misuse, which prevents
a culpable plaintiff from prevailing in an action for the
infringement of a misused copyright, “‘forbids the 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.’”53 In Practice Management, the Ninth Circuit
52
Veeck’s fair use defense is discussed further infra.
53
DSC Communications Corp. v. DGI Techs., Inc., 81 F.3d 597,
601 (5th Cir. 1996) (quoting Lasercomb Am., Inc. v. Reynolds, 911
21
found that the American Medical Association misused its copyright
by licensing its coding system to the Health Care Financing
Administration on the condition that the agency not use any
competing system.54 Veeck, in contrast, has raised no genuine issue
of material fact regarding SBCCI’s purported misuse of its
copyright. The summary judgment record is devoid of evidence that
the organization mandates the exclusive use of its codes or any of
its other services when a governmental subdivision adopts one of
the codes. There is thus no evidence of misuse that would prevent
enforcement of SBCCI’s copyright.
c. Waiver
Neither can Veeck prevail on his assertion that SBCCI
expressly or impliedly waived its right to copyright protection by
encouraging municipalities to adopt its codes by reference. A
right such as copyright may be waived by inaction.55 Copyright also
may be waived as the result of a particular act, even if waiver was
not the intended result.56 Having concluded that SBCCI’s codes are
F.2d 970, 977 (4th Cir. 1990)).
54
Practice Management, 121 F.3d at 520.
55
See, e.g., Sherrod v. American Airlines, 132 F.3d 1112,
1119 n.5 (5th Cir. 1998).
56
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.”).
22
not in the public domain and that due process does not require
suppression of SBCCI’s copyright, we also conclude that the
organization has done nothing to waive copyright protection.
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.” The district court also concluded that the fact that
SBCCI had given 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 amount to waiver.
As the district court noted, “[c]ountless entities provide free
access to materials on the Internet and still retain enforcement of
their copyrights.” SBCCI has not waived its copyright in its model
codes.
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.57 Inferior courts
are instructed by the Supreme Court to consider four factors in
deciding whether a particular use of copyrighted material is a
“fair use”:
57
See 17 U.S.C. § 107 (2000).
23
(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 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.58
When, as with Veeck’s activity here, the use of a copyrighted work
is noncommercial, defeating a fair use defense 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.”59
Even though the use to which Veeck put SBCCI’s works is not
harmful per se, it could severely undermine the market for those
works if such use were to become widespread. Here, there is no
genuine dispute, based on the summary judgment record, “that some
meaningful likelihood of future harm exists.”60 This is not an
instance 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 being denied. Veeck’s posting of the codes on the Internet
could prove harmful by reducing SBCCI=s market and depriving it of
income used in its socially valuable effort of confecting,
58
Id.; see also Campbell v. Acuff-Rose Music, Inc., 510 U.S.
510 U.S. 569, 577 (1994).
59
Sony Corp. v. Universal City Studios, 464 U.S. 417, 451
(1984).
60
Id.
24
promulgating, and revising model codes. Having evaluated Veeck’s
copying under the four statutory factors, the potential harm
prevents him from prevailing on a fair use defense.60
D. 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, we
are convinced that the district court’s conclusions and its award
of the minimum statutory damages on each of the five counts of
copyright infringement are free of error.61 Likewise, we find no
abuse of discretion in the district court’s award of attorneys’
fees.62
60
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.
61
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).
62
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
25
III.
CONCLUSION
Two decades ago, in BOCA,63 the First Circuit wrestled with the
serious issues raised by what was then only a “possible trend”
toward state and federal adoption of model codes.64 That court
wisely left open for evaluation the modern realities surrounding
technical regulatory codes. As the court wrote, groups that
develop such model codes “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.”65 The two circuit courts that subsequently
addressed challenges similar to that considered by the First in
BOCA also have declined to invalidate copyrights in works
referenced under the law.66
In joining three of our sister circuits today, we emphasize
that our holding is restricted to the narrow set of facts and
circumstances before us. Under these, no one is being denied
reasonable access to the SBCCI codes that have been adopted in
globo by local governments; neither did Veeck’s specific actions
permanent injunction or award of damages and attorneys’ fees, and
therefore waived them.
63
628 F.3d 730.
64
Id. at 736.
65
Id.
66
See Practice Management, 628 F.3d 730; CCC, 44 F.3d 61.
26
make a sufficiently strong case for fair use. Even slightly
different facts under different circumstances might produce a
different result.
Today, the trend toward adoption of privately promulgated
codes is widespread, and the social benefit from it is great. Our
balancing of the countervailing policy concerns presented in this
case ultimately leads us to conclude on these facts that copyright
protection of privately authored model codes does not simply
evanesce ipso facto when the codes are 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. For these reasons, the judgment of
the district court is, in all respects,
AFFIRMED.
27
LITTLE, District Judge, dissenting:
Today the majority concludes that the presumed benefits generated through the creation of
“model codes” require that it strike t he balance in favor of permitting the model code creator to
continue to enforce its copyright, even after such a code has been adopted into law. In my view, once
a “model code” is adopted into law by the government, a private entity, such as SBCCI, may no
longer obstruct publication and transmission of the law by an uncompensated transferor. Adoption
of the model co de as law serves to place the law in the public domain and it should, therefore, be
readily available for access by all citizens. The access should not be limited to a non-public
commercial establishment. Similarly, upon enactment, the law transforms into an “idea” that is no
longer distinguishable from its expression, causing SBCCI’s codes to lose their copyright protection.
It is my belief that reversal of the district court judgment is appropriate. I respectfully dissent from
the decision of the majority.
A. Due Process/Public Domain Basis
The majority places great emphasis on the district court’s conclusion that no probative
evidence exists demonstrating that the codes are not publicly available in North Texas towns. This
conclusion, even if factually accurate, is not determinative. The question, in my estimation, is not
whether Veeck, or any other citizen, actually was prevented from viewing the public law, but whether
a private entity that develops a code may maintain private control of that law through a copyright.
As the majority correctly observes, not all reproductions of copyrighted work are “within the
exclusive domain of the copyright owner; some are in the public domain.” Sony Corp. v. Universal
City Studios, Inc., 464 U.S. 417, 433, 104 S. Ct. 774, 784 (1984). It is well settled that judicial
opinions and statutes are in the public domain and are not subject to copyright. As the Supreme
Court enunciated in Banks, there exist two independent rationales for holding judicial opinions and
statutes (and in my opinion, regulations), outside the realm of copyright. While I agree with the
majority as to the inapplicability of the first, the “public funds rationale,” I strenuously disagree with
the majority’s disregard of the second, the “public policy/due process” rationale. I also am unable
to adopt a meaningful distinction between judicial opinions and statutes, and the regulations that have
been promulgated and adopted into law as binding on the citizens of a given community. Today’s
holding creates a distinction that cannot be sustained.
In Banks, the Supreme Court declined to enforce the state reporter’s copyright of judicial
opinions because “[t]he whole work done by judges constitutes the authentic exposition and
interpretation of the law, which, binding every citizen, is free for publication to all.” Banks, 128 U.S.
at 253, 9 S. Ct. at 40; see also BOCA, 628 F.2d at 734-35 (expressing doubt that a private entity that
developed a building code was entitled to enforce copyright after the code was enacted into public
law on the basis that the public owns the law because it pays the salary of those who draft legislation
and the public has the “right to know the law to which it is subject”). Here, SBCCI seeks to prevent
an individual from posting, on an internet web site, a copy1 of an enacted administrative regulation.
1
The majority emphasizes that Veeck copied the regulation
from a clearly marked, copyrighted edition of SBCCI’s model code,
rather than, presumably, going to the community in question,
obtaining a copy of the regulation, and retyping or scanning that
document onto his website. I do not view this as material. As
Justice Harlan, sitting as a circuit justice, stated over one
hundred years ago, “any person desiring to publish the statutes of
a state may use any copy of such statutes to be found in any
printed book, whether such book be the property of the state or the
29
The administrative regulation, primarily a building and zoning code, is binding on the public.
Sanctions may follow noncompliance. Like a statute, a locality’s building regulations are “the
authentic exposition” of the law, which the Banks Court indicated should be “free for publication to
all.” Banks, 128 U.S. at 253, 9 S. Ct. at 40.
The First Circuit has indicated its approval of this reasoning in a case presenting facts similar
to those we measure today. In BOCA, the plaintiff, Building Officials and Code Administration
(“BOCA”), another code-writing organization, claimed copyright protection for its model building
code, which it encouraged public authorities to adopt through a licensing program. See BOCA, 628
F.2d at 732. The Commonwealth of Massachusetts adopted and distributed a building code
substantially similar to BOCA's model code, pursuant to a licensing agreement with BOCA. See id.
Massachusetts then referred persons seeking to purchase a copy of the code to BOCA. See id. The
defendant, Code Technology, Inc. (“CT”), a private publisher, published, and distributed its own
edition of the Massachusetts building code. CT's edition was almost identical to BOCA’s edition.
See id. Relying on Banks and Wheaton, CT argued that because BOCA’s code was adopted by the
state as a set of administrative regulations having the force of law, it had lost its copyright protection
and thus entered the public domain. See id. at 733. BOCA retorted that the building code differed
property of an individual.” Howell v. Miller, 91 F. 129, 137 (6th Cir. 1898)
(refusing to enjoin publication of a competing compilation of state statutes and noting
that it would not matter if the defendant had “cut from [the plaintiff’s] books the general
laws of [the State]”).
This case raises the issue of the defendant’s conduct with regard to his posting
the laws of Texas towns Anna and Savoy on his website (the majority’s attention to the
defendant’s posting of the laws of Denison, Texas notwithstanding). My review of the
record below indicates that both Anna and Savoy adopted the precise version of the
“model code” posted by Veeck.
30
from judicial opinions and statutes because it was written by a privately funded entity and not by the
government using public funds. See id.
Although the First Circuit declined to rule on the ult imate merit of the plaintiff’s case, in
vacating the district court’s grant of a preliminary injunction to the copyright holder, it noted that it
was “far from persuaded that [the plaintiff’s] virtual authorship of the Massachusetts building code
entitles it to enforce a copyright monopoly over when, where, and how the Massachusetts building
code is to be reproduced and made publicly available.” Id. at 735. The court reasoned that the public
"owns the law" not just because it pays the salaries of those who write the statutes and judicial
opinions, but because "[t]he citizens are the authors of the law." Id. at 734. The court also
determined that due process guarantees access to the law because it requires notice of legal
obligations. See id. It then expressed doubt that due process would allow a private entity to limit
access under the copyright law, and to decide for itself when, where, and how the code was to be
reproduced and made publicly available. See id. at 735. The court ultimately declined to decide the
issue, however, remanding to the district court for further proceedings. See id. at 736.2 Finding the
BOCA analysis compelling, I conclude that a privately developed code is no longer entitled to
copyright protection once it enters the public domain.
The majority contends that refusal to enforce SBCCI’s copyright would result in a departure
from the prior decisions of our sister circuits. On close inspection of those cases, it appears to me
2
The First Circuit noted that “since 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, we think BOCA should at least be allowed to argue
its position fully on the basis of an evidentiary record.“ BOCA,
628 F.2d at 736.
31
that no other circuit has addressed a substantively similar situation to the one before us today. The
result I favor would not, therefore, be in discord with the decisions of our sister circuits. Practice
Management did not reject, outright, the viability of a public domain defense to copyright
infringement. In that case, the Nint h Circuit declined to find that the “public domain” argument
supported a publisher’s attempt to produce its own copy of a medical coding system developed and
copyrighted by the American Medical Association, that had been adopted by the federal Health Care
Financing Administration for use in Medicare and Medicaid claim forms. See Practice Management,
121 F.3d at 517. I note that in Practice Management, the party challenging the copyright was a
private entity seeking to “share in AMA’s statutory monopoly.” Id. at 519. Had the Ninth Circuit
in Practice Management been faced with a situation similar to that presented here — where a private
individual sought to publish gratuitously a public law for use by other citizens, rather than an instance
where a private company sought to invalidate a copyright for its own commercial purposes — it may
have decided differently.
It is also apparent that the Practice Management court was chary to apply the public domain
rationale to defeat a copyright based on the concern that invalidating the AMA’s copyright “would
expose copyrights on a wide range of privately authored model codes, standards, and reference works
to invalidation.” Id. The Ninth Circuit warned that “‘[t]o vitiate copyright, in such circumstances,
could, without adequate justification, prove destructive to the copyright interest in encouraging
creativity,’ a matter of particular significance in this context because of ‘the increasing trend toward
state and federal adoptions of model codes.’” Id. at 518 (citing 1 Nimmer § 5.06[C], at 5-92 (1996)).
Similarly, in CCC Information Services, the Second Circuit declined to employ the public domain
concept to invalidate a copyright of a car valuation system that had been adopted into some states’
32
insurance codes. The CCC Information Services court based its ruling on a public policy-based
concern for the ramifications to the copyright holder should the holder be forced to give up its
copyright in every instance where the state adopted or referenced its work. See CCC Info. Servs.,
44 F.3d at 73-74. Utter disregard of the majority’s, as well as the Second and Ninth Circuits’,
expressed trepidation regarding the viability of standards-writing organizations is not lightly
employed.3 Neither the Second nor the Ninth Circuit, however, was presented with a situation where
a private individual sought to publish the law for the sole purpose of sharing it with other citizens.
The factual scenario brought before this court leads me to evaluate the public domain rationale in a
light different from that utilized by these Circuits. When I balance the protection of original works
versus the protection of the public’s due process interest, I come down in favor of the public’s
ability to access the law without private constraints.
The extent of SBCCI’s control over a regulation binding on the public further fortifies
Veeck’s assertion that a private entity should not be the sole gatekeeper to the public’s laws despite
the fact that here, copies were available to individuals at city hall or local libraries. The
transformation of SBCCI’s privately created work into a public law provides grounds to invalidate
SBCCI’s copyright to the extent that its code is enacted into law. Following along the lines of the
3
This concern is not without merit. It is undisputed that
SBCCI spends considerable time developing its codes, and thus
provides a valuable service to local governments that choose to
adopt the codes, either in whole or in part. The majority asserts,
however, that a refusal to enforce SBCCI’s copyright could result
in a loss of incentive to create municipal codes. According to the
majority, that loss would result in “increased governmental costs
as well as the loss of the consistency and quality to which
standard codes aspire.” I disagree. SBCCI could charge a fair
price to a city for code preparation, which a city could then
compare to the cost of in-house preparation.
33
reasoning of the First Circuit in BOCA, I conclude that the due process concern for public access to
the law forbids a private entity from exerting sole control over a public law through a copyright.
Consequently, once enacted, the portions of SBCCI’s codes that become law enter the public domain
and are no longer entitled to copyright protection.
B. Merger and the Idea/Expression Dichotomy
The reasoning implemented in t he due process/public domain section of this dissent is
sufficient to bolster reversal. Reversal could also be predicated on another, equally potent basis.
Veeck has asserted that once adopted, SBCCI’s codes become facts that are not protected under the
Copyright Act. Further, because the exact language is critical to an enacted law’s meaning, the “idea”
embodied in the law merges with SBCCI’s unique expression. In that case, the copyright becomes
unavailing to its owner. SBCCI retorts that citizens are able to produce their own version of the
information contained in the model codes and that it is only its particular expression that is protected
by the Copyright Act. The district court rejected Veeck’s merger argument, finding that the subject
of building codes is open to multiple forms of expression. The majority has affirmed this conclusion.
As a preliminary matter, copyright protection is not extended to facts, procedures, processes,
methods of operation, or information in the public domain. See 17 U.S.C. § 102(b); Feist Publ’ns,
Inc. v. Rural Tel. Serv. Co., 499 U.S. at 350, 111 S. Ct. at 1290; Harper & Row Publishers, Inc. v.
Nation Enters., 471 U.S. 539, 547-48, 105 S. Ct. 2218, 2223-23, 85 L. Ed. 2d 588 (1985); Kepner-
Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527, 533 (5th Cir. 1994). Similarly, a copyright
protects the expression of ideas, not the ideas themselves. See Kepner-Tregoe, 12 F.3d at 533. “[I]n
order to protect the immunity of ideas from private ownership, when the expression is essential to
34
the statement of the idea, the expression also will be unprotected, so as to insure free public access
to the discussion of the idea.” CCC Info. Servs., 44 F.3d at 68. Where an idea is susceptible only
to one form of expression, the merger doctrine applies and the expression will not be protected by
the Copyright Act. See 17 U.S.C. § 102(b); Kepner-Tregoe, 12 F.3d at 533; Mason v. Montgomery
Data, Inc., 967 F.2d 135, 138-40 (5th Cir. 1992). This “idea/expression dichotomy ‘strike[s] 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 (citing, with approval, the Second Circuit’s discussion of the copyright
protection afforded to an idea versus its expression in Harper & Row Publishers, Inc. v. Nation
Enters., 723 F.2d 195, 203 (2d Cir. 1983)). There is no bright-line test for determining whether an
idea is distinguishable from its expression. The merger, or lack of it, should be determined based on
the facts of the case. See Country Kids ‘N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1285 (10th Cir.
1996). It is appropriate for the court to incorporate policy choices into its merger analysis, including
the public’s interest in free access to the law. See CCC Info. Servs., 44 F.3d at 68.
I agree with the majority that prior to adoption by local municipalities, SBCCI’s model codes
are entitled to copyright protection. Although no court has held decisively that the merger doctrine
may be used to invalidate a copyright in a privately developed code that is enacted into law, there is
merit to Veeck’s argument that once enacted, the codes do become a fact or idea, in that there is only
one accurate way to express an enacted law. The majority fails to explain how, once a model code
is adopted as law, either in whole or in part, there exists any other way of expressing the law.4 In
4
While the majority acknowledges that “[t]he global enactment
of a code does make that code the law of the enacting municipality
and hence, in one sence, a ‘fact,’” it steadfastly maintains that
35
CCC Information Services, the Second Circuit declined to invalidate the plaintiff’s copyright interest
in its Red Book car valuation that had been adopted into the state’s insurance code, but explicitly
acknowledged that the defendant’s merger argument “is not easily rebutted.” Id. at 68. The Second
Circuit ultimately rejected the merger doctrine based on “the need, where elements of the copyright
law conflict, to determine, as a policy judgment, which of its commands prevails over the other.” Id.
The court concluded that the fundamental principle of copyright law of granting authors exclusive
rights to their writings outweighed the policy benefit of preserving public access to ideas. See id. at
68-72. Here, I conclude that the policy benefit of preserving unfettered public access to the law
outweighs the interest of permitting the holder of a copyright in a “model code” to maintain that
copyright subsequent to the code’s adoption into law.
By its very nature, an enacted law enters the public realm as a concrete, definite fact/idea.
There is only one accurate way to express a law. Courts consistently stress that, as a preliminary
matter, the exact words of a statute govern its interpretation. See, e.g., Kennedy v. Texas Utils., 179
F.3d 258, 261 (5th Cir. 1999) (“‘The starting point for interpreting a statute is the language of the
statute itself.’” (citing Consumer Prod. Safety Comm'n v. GTE Sylvania, Inc., 447 U.S. 102, 108, 100
S. Ct. 2051, 64 L. Ed. 2d 766 (1980)); City of Sherman v. Pub. Util. Comm’n, 643 S.W.2d 681, 684
Veeck’s use cannot be saved by the merger doctrine. The majority
would, however, hold harmless certain individuals quoting certain
sections of the law for a particular purpose, such as “contractors
who need to use building codes.” It is difficult indeed to
distinguish between this use and that of Veeck. It is beyond
peradventure that Veeck posted the building codes on the internet
site as a service to the general public, a class which may include
contractors and home builders.
36
(Tex. 1983) (“Generally the intent and meaning [of the legislature] is obtained primarily from the
language of the statute” (citing Magnolia Petroleum Co. v. Walker, 83 S.W.2d 929, 934 (Tex.
1935)). The importance of examining the precise language of a statute in order to glean its meaning
demonstrates the concrete, inflexible nature of a statute’s language once it is enacted into law. The
same concept applies to an administrative regulation, such as a building code. An individual
attempting to gain access to the building code of Anna or Savoy, Texas has only one choice — it
must view the enacted version of SBCCI’s model code. This is a case where the merger doctrine is
especially appropriate because other methods of expressing the idea are foreclosed. See Educ.
Testing Servs. v. Katzman, 793 F.2d 1533, 1539 (3d Cir. 1986) (citing Apple Computer, Inc. v.
Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir. 1983)). An individual wishing to publish
the text of a law cannot develop his own, unique version and still publish an authoritative copy.
Moreover, it is antithetical to our nation’s concept of public participation for a private entity
to monopolize the public laws. See generally Kepner-Tregoe, 12 F.3d at 533 (justifying the merger
doctrine on the basis that no one should be given a monopoly over an idea). Congress could not have
intended for a private organization to be given the exclusive right to control others’ ability to copy
and distribute an enacted law. Even the towns themselves apparently keep relevant portions of the
SBCCI code as the official version.
I am not dissuaded from applying merger in this case by the Second Circuit’s opinion in CCC
Information Services. That court did not discuss, with any detail, the issue of whether a copyrighted
work would merge with its underlying idea when enacted into law. Instead, the court was concerned
with whether the ideas expressed in a compilation of informational matter were entitled to copyright
37
protection. Here, in contrast, our focus is on the adoption of the copyrighted work into law. I would
agree with Veeck that once adopted, SBCCI’s model code becomes a concrete fact that is outside
the realm of copyrightable works under section 102(b) of the Copyright Act. See Feist, 499 U.S. at
356, 111 S. Ct. at 1293 (explaining that section 102(b) is "universally understood to prohibit any
copyright in facts”). This same consideration convinces me that once SBCCI’s code is enacted by
reference into law, the “ideas” embodied in the law merge with SBCCI’s original creation, causing
the model code to lose its copyright protection.
SBCCI spends thousands of hours developing its codes, providing a valuable service to
governments that choose to adopt the model codes as their own. The majority has embraced the
arguments set forth by SBCCI that its economic future will be compromised if citizens, such as
Veeck, are able to post copies of copyrighted codes on the internet. This argument lacks merit. As
SBCCI itself points out, private citizens are already permitted to copy SBCCI’s code from the
municipality at City Hall. As such, citizens are able to avoid having to buy SBCCI’s codes from the
organizations by viewing a copy at a local government office or library. It is illogical for SBCCI to
argue that its viability is threatened if a private individual is able to copy the law to share with others
because these others could just as easily access the information from the local government without
arousing SBCCI’s protestation. The minute burden that might befall the standards-writing
organizations because of the actions of Veeck and others like him is outweighed by the benefit of
Veeck’s act of enhancing unfettered access to the law.
Based on the foregoing discussion, I would hold that once a “model code” is adopted into law
by the government, a private entity, such as SBCCI, may no longer assert a copyright over the law’s
38
content, for the law enters the public domain and should be readily available for access by all citizens.
Further, upon enactment, the law transforms into an “idea” that is no longer distinguishable from its
expression, causing SBCCI’s codes to lose their copyright protection. For these reasons, I would
reverse the judgment of the district court.
I respectfully dissent from the majority’s contrary conclusion.
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