IP Law Daily Unresolved facts preclude summary judgment in building code dispute
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Thursday, May 28, 2020

Unresolved facts preclude summary judgment in building code dispute

By Robert B. Barnett Jr., J.D.

Copyright protection extends to model building codes, but it does not extend to them once they become the law, because of the maxim, "No one owns the law."

In a suit in which model-building-code developer International Code Council, Inc. (ICC), alleges that informational website operator UpCodes, Inc., infringed its copyright by reproducing ICC’s building codes on UpCodes’ website without permission, a motion and a cross-motion for summary judgment were both denied because factual questions remain about what was copied and whether it violated copyright law, the federal district court in New York City has ruled. Although the court ruled that UpCodes had the right to reproduce building codes that had become law under the public domain, merger, and fair use theories, it also ruled that UpCodes had no right to copy model codes and related material that had not been enacted. The motions were denied because factual issues remained about whether and to what extent UpCodes intermingled protected laws with unprotected model codes and related materials (International Code Council, Inc. v. Upcodes, Inc. , May 27, 2020, Marrero, V.).

Background. ICC develops model codes that include building codes, fire safety codes, and plumbing codes with the hope that they will be adopted by local governments. It generally provides its codes for free on its website, and it makes money by providing additional services in conjunction with the codes. UpCodes is run by two brothers, one an architect and the other a software engineer. They created a website providing materials for the architecture, engineering, and construction industries, including codes.

ICC sued UpCodes alleging a single count of copyright infringement that listed 40 model codes that were improperly copied on the UpCodes website. ICC had registered copyrights in all 40 of the codes. After discovery, ICC moved for summary judgment and a permanent injunction preventing UpCodes from any future infringement. ICC also sought a judgment that the infringement had been willful. The infringement allegedly took three forms: (1) posting the codes without permission, (2) posting enacted codes that incorporated ICC’s codes by reference, and (3) posting unadopted model code text with struck-through red print showing amendments to local codes. UpCodes filed a cross-motion for summary judgment, seeking a declaratory judgment that they did not infringe any copyrights.

Public domain. The court first addressed UpCodes’ argument that the ICC codes that it copied on the UpCode website were in the public domain. The analysis began with the Government Edicts doctrine, which was derived from three 19th century cases that said that judicial opinions authored by judges could not be copyrighted, although private authors could claim a copyright on material they authored explaining the judicial opinions. The Supreme Court recently clarified the doctrine in Georgia v. Public.Resource.Org, Inc., 140 S. Ct. 1498 (2020) by holding that annotations created by the state of Georgia were similarly in the public domain. Because ICC is a private party rather than a government entity, the Government Edicts doctrine is not directly on point, but the question was similar: Are the codes as adopted by a governmental entity "the law"?

Two important opinions from other circuits provide guidance. In BOCA v. Code Tech., Inc., 628 F.2d 730 (1st Cir. 1980), the First Circuit, applying the Government Edicts doctrine, indicated that building codes that had been adopted with minor amendments were in the public domain. In Veeck v. SBCCI, 293 F.3d 791 (5th Cir. 2002), the Fifth Circuit found that building codes adopted by two Texas towns, displayed on a private website, were in the public domain. This court interpreted those opinions to stand for the proposition that UpCodes had the right to publish ICC codes that had been adopted as law by a local government, but it did not have the right to copy model codes that had not been enacted or to mingle portions of enacted laws with portions of model codes.

Given that rule, the court then turned to a Second Circuit case that some had contended were in conflict with BOCA and Veeck because it said that references to copyrighted material in an enacted law did place the material in the public domain (CCC Info. Servs. Inc. v. Maclean Hunter Mkt. Reports, 44 F.3d 61 (2nd Cir. 1994). This court, however, concluded that the cases could be reconciled. If an enacted law simply made a reference to copyrighted material, without incorporating that material in the law, the referred-to material was not placed in the public domain. Thus, for example, if a state automobile insurance law required reference to valuations in something called the Red Book, the requirement that the Red Book be referenced did not place the Red Book in the public domain. The Ninth Circuit reached a similar conclusion (Practice Mgmt. Info. Corp. v. Am. Med. Ass’n, 121 F.3d 516 (9th Cir. 1997)).

The Solicitor General later issued a brief opining that a model code became a law upon government incorporation when (1) the codes were created for the purpose of being enacted, (2) the code comprehensively governed a broad range of conduct, (3) the codes expressly regulated entire areas of private endeavor, (4) the code carried criminal penalties, and (5) the alleged offender published and identified the work as part of the law, rather than the copyrighted material underlying the law. Although the five considerations did not exactly track the facts in this case, the court nevertheless applied them to determine if the copied items were "the law." Also noting that due process concerns must be balanced against economic incentives, the court said that it was not convinced that economic concerns could outweigh the need for free public access in this case. ICC and its predecessors had survived for more than 60 years without needing to enforce their copyright in similar situations. Economic considerations, therefore, would be made only as they applied to the codes that did not embody the law.

Constitutional considerations. ICC made two constitutional arguments, both of which were rejected, First, it argued that a ruling that no copyright infringement occurred would amount to a violation of the Takings Clause. In Veeck, the court found no violation of the Takings Clause, and this court adopted the finding that no taking occurred because ICC wanted the local governments to adopt its model codes. The Solicitor General had reached the same conclusion. ICC next argued that the Supremacy Clause was violated if adoption of a model code by a local government could negate the federal law of copyright. The BOCA court had rejected the same argument, ruling that the adoption of the model code merely triggered the federal rules on public domain. It was federal law that determined that outcome, not the action by the local government. This court agreed with that conclusion.

The court thus concluded that codes that had been adopted into law were in the public domain and were protected. ICC still could sue, however, if UpCodes copied model codes as model codes or indiscriminately mingled the enacted portions of the model codes with the portions not so enacted. Because open factual questions remained on these issues, ICC’s motion for summary judgment was denied.

UpCodes SJ motion. Upcodes would have been entitled to its declaratory judgment if it had copied only the codes that had become law. UpCodes, however, appeared to post model codes that had not been enacted. ICC also raised various other issues involving the copying of the codes, such as UpCodes posting underinclusive parts of the law. Because of these open factual questions, therefore, the court denied UpCodes’ motion for summary judgment.

Merger. The inquiry, the court said, was not over. It still needed to address UpCodes’ arguments of merger and fair use. As for merger, the court ultimately agreed with UpCodes’ analysis. Copyright protection does not extend to an idea, only to the expression of the idea. Where only one way to express an idea exists, however, the idea and the expression are said to have merged. The court concluded that the text of the codes had merged with the idea or fact of the laws that adopted the codes because UpCodes had no other way to express the idea other than through the full text. Where merger exists, the copyright holder has fewer protections. Merger, therefore, was another ground for denying ICC’s motion.

Fair use. After a long analysis of the four considerations of fair use, the court concluded that UpCodes use of the codes, at least to the extent that the codes were adopted as the law, constituted a fair use, creating yet another ground for denying ICC’s motion for summary judgment. In so ruling, the court did express some concern about the fourth consideration—the effect of the use on the potential market—and whether it weighed in ICC’s favor. The copying could have hurt ICC’s business. In the end, though, the other three factors weighed so heavily in favor of fair use, including the conclusion that UpCodes’ use of the codes was transformative, that the court concluded that fair use concept applied. As a result, fair use constituted a separate ground for denying the ICC motion for summary judgment.

Collateral estoppel. UpCodes argued that ICC was collaterally estopped from pursuing its suit because its predecessors were the plaintiffs in Veeck. The court rejected that argument because of the differences in the two cases. It also referred to the claim as "largely moot" because the court had accepted the reasoning in Veeck.

Willfulness. The final matter was ICC’s request for an order finding willfulness. The court agreed that enough evidence existed for the jury to consider willfulness but it refused to grant the request because questions of fact remained, most importantly whether UpCodes was guilty of infringement at all.

The court, therefore, denied both motions for summary judgment.

This case is No. 1:17-cv-06261-VM-DCF.

Attorneys: James Hamilton (Morgan, Lewis & Bockius LLP) for International Code Council, Inc. Joseph C. Gratz (Durie Tangri LLP) for UpCodes, Inc. and Garrett Reynolds.

Companies: International Code Council, Inc.; UpCodes, Inc.

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