On December 2, 2019, the U.S. Supreme Court heard oral argument on Georgia’s appeal of the 11th Circuit’s decision invalidating copyright protection for legal annotations and commentary on the Georgia state code.

The background and history of this case is addressed in our June 24, 2019 blog, found here.

Georgia’s Arguments

While binding law passed by the legislature is in the public domain, Georgia argued that its commentary and annotations are not law but instead copyrightable derivative works and/or work-for-hire prepared by contractors on behalf of a state agency. Absent direction from Congress, Georgia insisted that the Supreme Court should not “override the systems established by numerous states’ democratically elected governments” to allow for the creation of copyrightable commentary on state codes.

Georgia started by tackling Public.Resource.Org, Inc.’s (“PRO”) reliance on the Supreme Court’s 1888 Banks v. Manchester decision holding that states could not confer copyright protection for public domain case records to citizens or states themselves. Banks v. Manchester, 128 US 244 (1888). Georgia argued that this prohibition only applied to works “that can serve as a vehicle for establishing binding law.” In contrast, here the annotations and commentary on the Georgia state code are not binding law.

Chief Justice Roberts questioned whether Georgia’s characterization of the annotations and commentary as “official” created a problem for its position. Georgia responded that the fact that the copyrighted annotations and commentary appeared in the same “official” publication with the statutory text should not be given any weight. Georgia pointed to Wheaton v. Peters, 33 U.S. 591 (1834) and Callaghan v. Myers, 128 U.S. 617 (1888), where court-appointed official reporters could hold copyright in the summaries and headnotes of court records that appeared in the same reporter volumes. Later during the oral argument, several of the justices voiced their agreement that mere merger of separate documents would not make annotations “official” or “actual laws.”

Justice Ginsburg then asked why state legislature annotations should be treated differently from annotations or syllabi prepared by judges, which could not be copyrighted. Georgia responded that it was different because Georgia’s annotations were not individually reviewed by legislators and did not go through the process of bicameralism and presentment. Justice Gorsuch, noted, however, that Georgia’s annotations (together with the statutory text) were still subject to approval as a whole by Georgia’s Code Revision Commission. Indeed, a skeptical Justice Gorsuch categorized Georgia’s position as allowing the “official law to be hidden behind a pay wall.” Georgia responded that it was not hiding the law behind the pay wall, because LexisNexis still offered a free version of Georgia’s unannotated code and anyone could still copy and paste the code without the annotations.

Justice Gorsuch countered that these annotations are frequently used by state courts as indications of the legislature’s intentions. As such, the annotations effectively served as a vehicle for establishing binding law, just like judicial opinions did. Georgia responded that the annotations did not serve as indications of legislative intent; rather, as legislative history materials served that purpose. The annotations, argued Georgia, merely provided a comprehensive list of court decisions addressing the particular code sections.

Justice Sotomayor expressed her confusion over Georgia’s claim that the test for copyrightability was whether the annotations served as binding law. She asked (rephrasing Justice Alito’s question) “why isn’t authorship really the most important factor” in determining copyrightability? Specifically, “the state asked that [the annotations] be prepared.” And, the legislators on the state commission that approved the annotations were involved in drafting the law itself. So, the state of Georgia should be an “author” of the annotations. Georgia responded that even under the authorship test, it should still win because past Congressional policy allowed state governments to own copyrights where annotations authored by state government employees were copyrightable.

Justice Breyer agreed with Georgia that authorship was not the most important factor. Rather, Justice Breyer believed that the correct test should be whether the summaries and comments were made in the legislators’ official capacity.

Justice Kagan asked why Georgia published both an official annotated code and an official non-annotated code, rather than one single official code. Georgia responded that it was for the benefit of readers and subject to a price cap so that annotated code would be available to the public at a relatively low price.

The United States’ Arguments

Anthony A. Yang, the Assistant to the Solicitor General, Department of Justice argued for the United States supporting Georgia and the other 8 states. Yang argued that while Banks prohibits copyright protection for works created by legislators in their law-making capacity, this case was controlled by the Callaghan decision which upheld copyright in annotations written after the court decisions as an attempt to accurately describe them or provide context. As in Callaghan, the Georgia annotations were prepared after the laws were passed and the annotations required no approval by the state. Hence, they are copyrightable.

Justice Kagan seemed to disagree with Yang’s allegation that the state did not approve these annotations, because the Code Revision Commission imposed editorial standards. Yang responded that the Commission could not count as a lawmaker, because it was composed of 15 individuals, 5 of which were not even in the state legislature. The Commission did not explain what the law meant, it merely edited a description of what the courts did with the code.

Justice Gorsuch followed up with several hypothetical questions. For example, would the annotations be copyrightable if legislature itself reviewed the judicial opinions about the code, collected them, enacted the collection, and called them “official?” Yang stated that the annotations would still be copyrightable because the legislature was not acting in its legislative capacity, but in “some other abstract capacity.” As long as these acts were not done as part of the legislative process, the annotations were copyrightable. Justice Kavanaugh quickly pointed out that this was exactly what distinguished Banks from Callaghan.

PRO’s Arguments

PRO asked the Court to extend the “government edicts doctrine” from Banks to materials that lack the force of law. PRO proposed a two-prong test on copyrightability from the Court’s prior decisions: (1) was this a legal work? and (2) was it published under the authority of the state? PRO argued that if the answer was yes under both prongs, then the work could not be copyrighted. As a matter of policy, states should not publish legal works for the purposes of making money. Justice Sotomayor seemed to be supportive of PRO’s position throughout the oral argument, while Justice Breyer appeared to be leaning towards Georgia’s position at the end.

Justice Breyer and Justice Kagan both asked if the answer would be any different if the work was a book written by a historian or law professor that had been stamped by the state as “official.” PRO answered that the bottom line was whether the books, comments and annotations were “produced in the name of and the voice of” the legislature.

Justice Alito later also asked for PRO to detail any evidence that it had indicating that Georgia edited or supervised what LexisNexis had prepared. PRO answered that Georgia’s publication manual set forth how LexisNexis was supposed to communicate with the state for approval.

Justice Kavanaugh asked about the differences between this case and the Callaghan and Wheaton cases. PRO answered that the court reporters in Callaghan controlled what went into the summary of the cases and spoke in their own voices, not the state’s voice. Here, the state controlled what went into the final annotations and the Code Revision Commission spoke in the state’s voice when it approved the annotations.

Justice Alito seemed unconvinced by PRO’s arguments because its proposed test amounted to no more than putting a “state” label on a document. Similarly, Justice Ginsburg repeated her “basic question,” namely, what was the controlling test here: Was it whether the annotations had an official state imprimatur (which they did) or was it whether the work had the effect of law (which they did not). Justice Ginsburg pointed out that the annotations were merely useful information on how the law had been interpreted and applied by others. PRO conceded that the annotations were not the law, but that they did count for something and they came in the state’s voice.

Justice Kagan indicated that she was leaning towards adopting Georgia’s test rather than PRO’s test. The non-copyrightable government documents expressed a point of view. In contrast, “when you think about one of these annotation books, it doesn’t look like it has a point of view.” As long as the state was not “editing in order to create a point of view” then they may be copyrightable.

Justice Sotomayor, however, pointed out that the real difference here should be that in both Wheaton and Callaghan, the cover pages clearly stated that the reports were by individuals and not the state (and therefore those cases were potentially distinguishable from this case).

Justice Kavanagh then had a long conversation with PRO as to how the Court should interpret the precedents here. Justice Kavanagh acknowledged that the Copyright Act “clearly provided” that states could get copyright protection for annotations. PRO, however asked that the Court only do so if the annotations met the authorship requirement of the Act as provided in Banks.

Georgia’s Rebuttal

In its rebuttal, Georgia first stressed the importance of following Wheaton and Callaghan, where official court reporters were found to hold valid copyright in judicial summaries and annotations. Second, Georgia reminded the justices of the history of the Copyright Act, which had historically allowed state employees to hold copyright in annotations. Third, Georgia finished with the disruptive effects on many states’ code annotation practices if the Court affirmed the 11th Circuit decision.

The case is Georgia et al. v. Public.Resource.Org, Inc., case number 18-1150 U.S. Supreme Court (2019).