Timothy J. Lockhart

On April 27, 2020, the U.S. Supreme Court ruled that legislators are not authors under the Copyright Act, 17 U.S.C. § 101 et seq., and that therefore the Georgia legislature’s annotations of the state’s compiled statues are not subject to copyright protection. Georgia v. Public Resource.Org, Inc., ___ U.S. ___, 140 S. Ct. 1498 (2020). Under the “government edicts doctrine” government officials empowered to speak with the force of law cannot be the authors of the works they create in the course of their official duties.

The State of Georgia has one official code: the Official Code of Georgia Annotated (OCGA), which includes the text of every Georgia statute currently in force as well as non-binding annotations, or commentary, that appear beneath each statutory provision. The OCGA is assembled by Georgia’s Code Revision Commission (Commission), a state entity composed mostly of legislators, funded through legislative branch appropriations, and staffed by the Office of Legislative Counsel.

Public.Resource.Org, Inc. (PRO), a not-for-profit entity dedicated to facilitating public access to government records and legal materials, posted the OCGA online and distributed copies to various organizations and Georgia officials. After sending PRO several cease-and-desist letters, the Commission sued PRO for infringing its alleged copyright in the OCGA annotations. (There was no disagreement that the statutes themselves are not subject to copyright protection.) The trial court found for the Commission, holding that the annotations were eligible for copyright protection because they had not been enacted into law. The Eleventh Circuit reversed, rejecting the Commission’s copyright assertion under the government edicts doctrine.

Chief Justice Roberts’s opinion, joined by Justices Sotomayor, Kagan, Gorsuch, and Kavanaugh, discusses the three 19th century cases from which the government edicts doctrine developed. In Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834), the Supreme Court held that no official reporter of the Court’s opinions can have a copyright in those opinions and that the justices cannot confer such a right on any reporter. In Banks v. Manchester, 128 U.S. 244 (1888), the Court held that judges cannot assert copyrights in “whatever work they perform in their capacity as judges”—be it “the opinion or decision, the statement of the case and the syllabus or the head note.”  Id. at 253. And in Callaghan v. Myers, 128 U.S. 617 (1888), the Court held that several explanatory materials that the reporter had created were subject to copyright protection because they came from an author who had no authority to speak with the force of law.

Chief Justice Roberts said that “[t]he animating principle behind this rule is that no one can own the law.” Or as the courts had previously held: “Every citizen is presumed to know the law,” and “it needs no argument to show . . . that all should have free access” to its contents. Nash v. Lathrop, 6 N.E. 559, 560 (Mass. 1886)) (cited by Banks, 128 U.S. at 253–54).

Having discussed the government edicts doctrine, Chief Justice Roberts analyzed the issue of whether the Commission is empowered to speak with the force of law, and he concluded that it is. He noted that although the Commission is not identical to the Georgia legislature, the Commission “functions as an arm of it for the purpose of producing the annotations.” The Georgia legislature created the Commission for the legislature, and the Commission’s members are mostly legislators. The Commission’s funding and staff are designated by law for the legislative branch, and the annotations the Commission creates are approved by the legislature before being “merged” with the text of the statutes. Moreover, the Georgia Supreme Court held that “the work of the Commission . . . is within the sphere of legislative authority.” Harrison Co. v. Code Revision Comm’n, 260 S.E.2d 30, 34 (Ga. 1979).

Because the Commission is empowered to speak with the force of law and because producing the OGCA is within the Commission’s official duties, Chief Justice Robert concluded, the State of Georgia has no lawful basis for asserting copyright protection for the Commission’s annotations to the Georgia statutes. Thus, he upheld the decision of the Eleventh Circuit.

Justice Thomas wrote a dissenting opinion in which Justice Alito joined and Justice Breyer joined in part. Justice Thomas said that “[t]his ruling will likely come as a shock to the 25 other jurisdictions—22 States, 2 Territories, and the District of Columbia—that rely on arrangements similar to Georgia’s to produce annotated codes.” He suggested that “perhaps the widespread use of these arrangements indicates that today’s decision extends the government edicts doctrine to a new context, rather than simply ‘confirm[ing]’ what the precedents have always held.” Justice Thomas said that because he believed the Supreme Court “should ‘leave to Congress the task of deciding whether the Copyright Act needs an upgrade,’ American Broadcasting Cos. v. Aereo, Inc., 573 U. S. 431, 463 (2014) (Scalia, J., dissenting),” he dissented from the majority opinion.

Justice Ginsburg also wrote a dissenting opinion, in which Justice Breyer joined. She said that in her view the OGCA annotations “do not rank as part of the Georgia Legislature’s lawmaking process” (emphasis by Justice Ginsburg). First, she said, “the annotations are not created contemporaneously with the statutes to which they pertain; instead, the annotations comment on statutes already enacted.” Second, “the OCGA annotations are descriptive rather than prescriptive. Instead of stating the legislature’s perception of what a law conveys, the annotations summarize writings in which others express their views on a given statute.” Third, the annotations aim to inform the citizenry at large and are not intended primarily for legislators. For those reasons, she said, she would hold the annotations to be copyrightable.



Timothy J. Lockhart

As published in INTA Bulletin, July 29, 2020

In a recent high-profile ruling, the U.S. Supreme Court says it has never recognized “defense preclusion” as a standalone category of res judicata, “unmoored from the two guideposts of issue preclusion and claim preclusion.”

In a unanimous opinion by Justice Sonia Maria Sotomayor, the U.S. Supreme Court held on May 14, 2020, that “defense preclusion” did not prevent Lucky Brand Dungarees (Lucky Brand) from raising a defense to trademark infringement that “it had not pressed fully” in prior litigation with Marcel Fashions Group (Marcel). Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., 590 U.S. __ (2020).

Marcel and Lucky Brand use trademarks containing the word “lucky” for jeans and other apparel. Marcel registered the GET LUCKY trademark, and Lucky Brand registered LUCKY BRAND and other “LUCKY” marks. When Lucky Brand used the phrase “Get Lucky,” litigation ensued. It has now lasted almost 20 years in three rounds. In 2003, the parties settled when Lucky Brand agreed not to use “Get Lucky” and Marcel released any claims concerning Lucky Brand’s use of its “LUCKY” marks. In 2005, the trial court permanently enjoined Lucky Brand from copying or imitating Marcel’s GET LUCKY mark or using “Get Lucky.” The court’s order did not enjoin Lucky Brand from using any other “LUCKY” marks or phrases.

In 2011, Marcel claimed Lucky Brand’s use of its “LUCKY” marks infringed GET LUCKY. Lucky Brand moved to dismiss, arguing that Marcel’s claims were essentially the same as its counterclaims in 2005. The U.S. Court of Appeals for the Second Circuit disagreed and remanded, holding that those counterclaims covered earlier infringements. Then Lucky Brand moved again to dismiss, arguing for the first time that Marcel had released its new claims by entering into the settlement agreement. The Second Circuit ruled that a doctrine it termed “defense preclusion” prevented Lucky Brand from raising a defense that it should have raised earlier.

In overruling the Second Circuit, the Supreme Court said that it has never recognized “defense preclusion” as a standalone category of res judicata, “unmoored from the two guideposts of issue preclusion and claim preclusion.” The Court said that because issue preclusion did not apply (no prior central issue being relitigated), Lucky Brand’s defense would be barred only if the claims in the 2005 and 2011 cases shared a common nucleus of operative facts. The Court held that they did not: the two suits “were grounded on different conduct, involving different marks, occurring at different times.” Under the circumstances, the Court said, “Marcel cannot preclude Lucky Brand from raising new defenses.”

© 2020 International Trademark Association

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