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Firms, Lawyers, States Want High Court to Weigh in on Annotations

May 30, 2019, 8:46 AM

A legal research company, a nonprofit, and the state of Georgia are all urging the U.S. Supreme Court to weigh in on a copyright dispute over official annotations to state laws—and the outcome may force lawyers to pay more for them.

The dispute centers on Georgia’s long-standing deal with LexisNexis to compile and sell commentary, notes, and other research references that appear as annotations to its state laws. Lawyers use the annotations in legal research, paying a capped price for the state-approved work. The U.S. Court of Appeals for the Eleventh Circuit has ruled Georgia can’t copyright the materials.

Georgia and LexisNexis say if the state can’t copyright the annotated code, it and other states would have to use taxpayer money to produce the time-and resource-intensive product, or lawyers and others would pay far more for the annotated laws. Nearly two dozen other states have similar arrangements with LexisNexis or Thomson Reuters Corp.’s Westlaw to compile annotated codes.

The battle started in 2015 when Georgia sued Public.Resource.Org, a nonprofit that publishes government records, for posting the annotations online in full. But the Eleventh Circuit sided with the publisher, ruling that the state’s guidelines, supervision, and stamp of approval put the Official Code of Georgia Annotated (OCGA) on a level akin to law itself, which can’t be copyrighted.

Georgia attorney Joshua S. Johnson of Vinson & Elkins LLP said Public.Resource.Org overstates the state’s contribution to the annotations, which don’t carry the binding force of law.

“Georgia has chosen to create research references to enable people to better understand the law,” he said. “But it’s under no obligation to create these research references. And to do so on its own or pay a third party to do so would be quite expensive.”

“This system does make sense and people benefit from it,” Johnson said.

Public.Resource.Org also hopes the justices take the case and allow it to build on its win in the Eleventh Circuit. It wants to set a national standard for determining when government involvement and sanction push a publication beyond copyright protection.

“State employees are intimately involved. No annotations get published without their approval,” Public.Resource.Org attorney Elizabeth H. Rader of Calliope Legal said. “The state has the ultimate right to approve or disapprove. It’s not just slapping a seal of approval; they’re helping create it.”

Both sides agree that the supplementary materials save attorneys time and money, require substantial time and effort to create, and would be copyrightable absent government involvement. They disagree on when annotated codes become uncopyrightable government edicts. Little guiding—or recent—national precedent exists.

The justices are scheduled to weigh the petition at their June 13 conference.

‘Sufficiently Law-Like’

Georgia in 1983 hired Matthew Bender & Co. Inc., a member of LexisNexis Group, to take over a contract to produce and maintain the state’s code, and weave in summaries of court opinions, law review articles, and state bar advisory opinions. In return, Bender has an exclusive license to sell the OCGA at $404 per copy, according to Georiga’s petition. The law alone is available online for free, and the law plus annotations can be viewed for free at more than 60 libraries in the state, Georgia said in its Supreme Court petition.

The district court sided with Georgia, ordering the nonprofit to remove the materials. It said Banks v. Manchester, an 1888 decision in which the Supreme Court found state court opinions are unprotectable government edicts, didn’t apply because the annotations had no legally binding effect, unlike opinions. The court instead turned to another 1888 high court decision, Callaghan v. Myers, in which the court said summaries of state opinions could be protected even if compiled by a government-employed court reporter.

The Eleventh Circuit reversed and found the annotations “sufficiently law-like” for Banks to apply. It noted that a state law approved the OCGA contract and guidelines, that a commission composed mostly of legislators supervised the OCGA’s production, and that the General Assembly votes on whether to approve it as “the official codification of Georgia’s laws.”

Bender argued in its brief supporting the state’s petition that the Eleventh Circuit overstated Georgia’s involvement in producing the OCGA. It said the commission doesn’t write, review, or revise any individual annotation outside of annual acceptance of the entire work. It said some circuits have held that unprotectable government edicts must have “the force of law.”

The arrangement is “kind of an unusual situation,” according to intellectual property attorney Fabio E. Marino of Polsinelli PC. He agreed with the Eleventh Circuit’s statement that Georgia placing its “imprimatur” on the OCGA lent it “authoritativeness” and “cast an undeniable, official shadow over how Georgia laws are interpreted and understood.”

Marino said his “gut feeling” is that the Supreme Court will affirm, but also that Georgia and LexisNexis could salvage their agreement by modifying language lending state endorsement of the OCGA, collectively, as Georgia’s official code. He said it could, for example, cleave the work into two: the unprotected “official code,” and an annotated version.

“If you think about applying principles, the state of Georgia shouldn’t be doing what it’s doing,” Marino said. “Is there a way to re-write the agreement so the copyright is not waived? I think there is if they get rid of some of these formal imprimaturs.”

‘Valuable Tool’

Bender argued in its brief that copyright law explicitly covers annotations and that no court had held otherwise. It said losing an exclusive copyright license would decimate LexisNexis’ incentive to provide codes at that price, and that an unofficial annotated Georgia code can cost several times as much.

LexisNexis said through Bender’s counsel that it derives “seven-figures” of revenue from the OCGA annually.

Eight states with similar arrangements filed an amicus brief that said the Eleventh Circuit decision “ultimately threatens to deprive many states’ citizens of a valuable tool for determining what the law is.”

“The annotation of a case is not an exercise of popular sovereignty, but a comment on it, and the original work of authorship of the company or body that wrote it,” the states—Arkansas, Alabama Idaho, Kansas, Mississippi, South Carolina, South Dakota, and Tennessee—said.

Nearly 200 law students, solo practitioners, and legal educators stressed the importance of free access of the law to small practices and educators, in their own high court brief to the high court. Thirteen associations, nonprofits and coalitions including R Street Institute, Public Knowledge, American Library Association and C-SPAN, joined together in a brief in which they urged the justices to take the case, but stopped short of picking a side.

Marino noted that cost-conscious, pro bono legal services would likely be most affected by a Supreme Court reversal in favor of Georgia and LexisNexis, with solo practitioners close behind. Marino said big firms generally have comprehensive contracts with LexisNexis or Westlaw and don’t necessarily pay for annotated codes separately.

Rader said people beyond lawyers in the state -- such as companies looking to do business in Georgia with a narrow legal inquiry -- would benefit from free annotated material. She also posited a possible split decision, and said she wished the district court had ruled separately on different types of annotations rather than protecting them wholesale. Rader said the court could have decided opinion summaries but not case indexes are protectable, for example, at least providing a free aid to interpreting the law.

“If the laws were completely clear, Georgia courts wouldn’t have to write opinions,” Rader said.

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com