AMERICAN SOCIETY FOR TESTING AND MATERIALS et al v. PUBLIC.RESOURCE.ORG, INC.
Filing
222
RESPONSE re 220 MOTION for Telephone Conference [Public.Resource.Org's Response to Plaintiffs' Request for a Telephonic Status Conference; Citation of Supplemental Authorities on Pending Motions] filed by PUBLIC.RESOURCE.ORG, INC.. (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Bridges, Andrew)
Exhibit A
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 1 of 103
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-----------------------------------X
INTERNATIONAL CODE COUNCIL, INC., :
:
Plaintiff,
:
:
17 Civ. 6261 (VM)
- against :
:
DECISION AND ORDER
UPCODES, INC., et al.,
:
:
Defendants.
:
-----------------------------------X
VICTOR MARRERO, United States District Judge.
TABLE OF CONTENTS
I. BACKGROUND ............................................ 2
A. FACTUAL BACKGROUND................................... 2
1. ICC and Model Building Codes ....................... 2
2. UpCodes and the Codes Displayed .................... 7
a.
Historic UpCodes ................................ 8
b.
Current UpCodes ................................. 9
B. PROCEDURAL BACKGROUND............................... 10
1. ICC’s Motion ...................................... 12
2. Defendants’ Motion ................................ 14
II. LEGAL STANDARDS AND DISCUSSION ....................... 15
A. MOTIONS FOR SUMMARY JUDGMENT........................ 15
B. DECLARATORY JUDGMENTS AND COPYRIGHT INFRINGEMENT.... 17
C. PUBLIC DOMAIN....................................... 18
1. The Government Edicts Doctrine .................... 20
2. Model Building Code Cases ......................... 25
3. Incorporation by Reference ........................ 31
4. County of Suffolk ................................. 35
5. Constitutional Considerations ..................... 39
a.
The Takings Clause ............................. 39
b.
The Supremacy Clause ........................... 44
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 2 of 103
6.
Statutory Considerations ......................... 46
7.
Analysis ......................................... 48
a. ICC’s Motion..................................... 50
b. Defendants’ Motion ............................... 56
D. MERGER.............................................. 60
E. FAIR USE............................................ 72
1.
First Factor: Purpose and Use .................... 77
2.
Second Factor: Nature of the Work ................ 82
3.
Third Factor: Amount and Substantiality .......... 84
4.
Fourth Factor: Effect of Use upon Market ......... 87
5.
Overall Analysis ................................. 91
F. COLLATERAL ESTOPPEL................................. 93
G. WILLFULNESS......................................... 97
III. ORDER.............................................. 101
ii
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 3 of 103
Plaintiff
filed
this
infringement
Garrett
International
action
by
Code
alleging
defendants
Reynolds,
and
Council,
one
count
UpCodes,
Scott
Inc.
of
Inc.
Reynolds
(“ICC”)
copyright
(“UpCodes”),
(collectively,
“Defendants”). ICC claims that Defendants have infringed
its
copyrights
Codes”)
their
by
in
forty
model
the
I-Codes
posting
website,
Defendants
deny
UpCodes.
(See
ICC’s
claims
building
and
codes
derivative
“Complaint,”
and
(the
“I-
works
on
No.
1.)
Dkt.
counterclaim
for
a
declaratory judgment that none of their copying constitutes
copyright infringement, because the material they post on
UpCodes
protected
is
either
under
in
the
copyright
public
defenses
domain
or
including
otherwise
merger
and
fair use.
Now before the Court are the parties’ cross-motions
for summary judgment. (See “ICC’s Motion,” Dkt. No. 84;
Defendants’
Motion,”
Dkt.
No.
85.)
For
the
reasons
forth below, the Court DENIES both motions at this time.
1
set
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 4 of 103
I.
A.
BACKGROUND1
FACTUAL BACKGROUND
1.
ICC and Model Building Codes
This is a case about model building codes. Model codes
are
a
type
of
privately-developed
standard
that
provide
rules, conditions, and guidelines for various products and
processes,
and
specifications,
which
also
delineate
measurements,
and
various
testing
technical
methods
that
apply to those products and processes. Federal, state, and
local
governments
frequently
1
incorporate
such
standards
Except as otherwise noted, the following background derives from the
undisputed facts as set forth by the parties in their Local Rule 56.1
Statements of Undisputed Material Facts and responses thereto. (See
“ICC SUMF,” Dkt. Nos. 84-2, 100-1; “Defs. SUMF,” Dkt. No. 85-2; “ICC
Supp. SUMF,” Dkt. No. 90-1; “ICC SDF,” Dkt. No. 90-29; “Defs. Resp.,”
Dkt. No. 92-1; “Defs. Supp. Resp.,” Dkt. No. 96-1.) The Court has also
considered the full record submitted by the parties, including the
following frequently-cited declarations and exhibits: the Declaration
of Mark Johnson in support of ICC’s Motion, Dkt. No. 84-3 (“Johnson
Decl.”); the Declaration of Jane Wise in support of ICC’s Motion, Dkt.
No. 84-18 (“Wise Decl.”); Wise Decl. Ex. 65 (“Jarosz Report”); the
Declaration of Joseph C. Gratz in support of Defendants’ Motion, Dkt.
No. 85-3 (“Gratz Decl.”); the Declaration of Garrett Reynolds in
support of Defendants’ Motion, Dkt. No. 85-20 (“G. Reynolds Decl.”);
the Declaration of Scott Reynolds in support of Defendants’ Motion,
Dkt. No. 85-23 (“S. Reynolds Decl.”); the Declaration of Jane Wise in
opposition to Defendants’ Motion, Dkt. No. 90-5 (“Wise Opp. Decl.”);
the Affidavit Declaration of Joseph C. Gratz in Opposition to ICC’s
Motion, Dkt. No. 92-2 (“Gratz Opp. Decl.”); the Affidavit Declaration
of Douglas Kidder, Dkt. No. 92-30 (“Kidder Decl.”), & Ex. A (“Kidder
Report”); the Affidavit Declaration of Garrett Reynolds in Opposition
to ICC’s Motion, Dkt. No. 92-33 (“G. Reynolds Opp. Decl.”); the
Affidavit Declaration of Scott Reynolds in Opposition to ICC’s Motion,
Dkt. No. 92-35 (“S. Reynolds Opp. Decl.”); and the Affidavit
Declaration of Garrett Reynolds in support of Defendants’ Reply, Dkt.
No. 96-2 (“G. Reynolds Reply Decl.”). No further citations to the
record will be made herein except as specifically cited. The Court
construes any disputed facts discussed in this section and the
justifiable inferences arising therefrom in the light most favorable to
the non-movant for each motion, as required under the standard set
forth in Section II.A. below.
2
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 5 of 103
into their statutes and regulations by reference. Adopting
privately-developed model codes saves governments time and
money.
Adopted
building
model
codes
professionals,
also
engineers,
substantially
and
the
benefit
public
more
broadly. For example, because model codes are drafted by
groups that are more familiar with the particular subject
matter
of
their
codes
than
governments,
governmental
adoption of model codes helps align the law with industry
best
practices.
Adoption
by
reference
is
also
valuable
because standards may concern areas of broad relevance to
the
public,
such
as
the
safety
of
residences
and
workplaces. Entities dedicated to the development of such
standards
are
called
standards
development
organizations
(“SDOs”).
ICC is an SDO that develops model codes regulating
what
it
calls
the
“built
environment”;
its
model
codes
include building codes, fire safety codes, plumbing codes,
and more. ICC was founded in 1994 by three regional SDOs
that developed similar codes: the Southern Building Code
Congress International, Inc. (“SBCCI”), Building Officials
and Code Administrators International, Inc. (“BOCA”), and
the
International
(“ICBO”).
These
Conference
three
regional
3
of
Building
predecessor
Officials
organizations
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 6 of 103
donated their copyrights in model codes to ICC in 2003 and
envisioned
that
ICC
would
produce
coordinated
national
building codes. ICC competes with other SDOs to draft model
codes addressing the same subject matter; as one example,
the
National
Fire
Protection
Association
(“NFPA”)
also
creates fire safety codes. ICC’s codes have been adopted
into law by jurisdictions across all fifty states, with
many jurisdictions adopting multiple codes authored by ICC.
ICC prepares its model codes for a variety of reasons,
including
to
promote
the
health
and
safety
of
building
occupants and construction workers, to lower construction
costs, and to promote the uniformity and interoperability
of
products
in
the
built
environment,
by,
for
example,
providing minimum requirements for manufacturers of such
products
to
comply
with.
Model
codes
can
advance
these
goals in various ways, such as serving as industry best
practice benchmarks for designers and builders; voluntary
compliance programs for sustainability, energy efficiency,
and disaster resistance; and assisting with credentialing
and
certification
of
building
and
construction
industry
participants and products.
Of
particular
relevance
here,
one
way
that
ICC
advances its goals is through the adoption of its model
4
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 7 of 103
codes into law. The record substantially reflects that one
of ICC’s foremost reasons for developing model codes is for
governments to enact them as law. For example, ICC’s 2015
International Building Code contains sample legislation for
its enactment into law. (See Defs. SUMF ¶ 24; Gratz Decl.
Ex. 1. at ICC00008325; Gratz Opp. Decl. Ex. 27; ICC SDF ¶
24.)
ICC
also
department
has
that
helps
a
dedicated
state
and
Government
local
Relations
jurisdictions
to
enact its codes, among other purposes. Many employees in
this department are field staff working in the state and
local jurisdictions that have or might adopt ICC’s codes.
This
department
also
maintains
a
chart
on
its
website
cataloging adoptions of its model codes. (Defs. SUMF ¶ 36;
Gratz Decl. Ex. 12; ICC SDF ¶ 36.)
ICC
process
develops
that
its
model
utilizes
codes
various
through
technical
a
multi-step
committees
and
allows for public participation and comment at no cost. The
process
also
involves
significant
participation
by
government representatives, who compose at least one-third
of each committee and vote on important decisions regarding
changes to the model codes. ICC also has dedicated code
development staff. ICC revises its codes pursuant to this
process every three years. ICC currently incurs the up5
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 8 of 103
front costs of its code development process and recoups the
relevant costs at least in part from the sale and licensing
of its copyrighted codes.2
The prices for ICC’s model codes are modest compared
to
those
for
other
technical
reference
works.
ICC
also
donates hundreds of copies of its model codes to libraries
and other jurisdictions throughout the United States. ICC
additionally licenses use of its codes to online reference
libraries where members of the public can purchase model
codes and guidelines. ICC sells a variety of supplemental
materials
and
services
themselves,
such
as
handbooks,
user’s
code
apart
from
the
commentary,
guides,
and
model
study
codes
companions,
training
materials
incorporating model code text.
ICC also makes its model codes, and some government
codes that adopt the model codes, available for free on its
website
in
publicACCESS
downloading
necessarily
a
digital
reading
of
the
library
room
codes
completely
called
makes
printing,
difficult,
prevent
publicACCESS.
though
such
The
copying,
and
it
not
does
functions.
ICC
publicizes that the free access it provides to its model
codes and the enacted state and local codes is on a read2
However, Defendants argue ICC may also recoup such costs through other
means such as membership dues and non-code publications.
6
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 9 of 103
only
basis.
ICC
premiumACCESS,
relatedly
which
offers
provides
a
paid
users
service
with
called
access
to
additional features such as full access to commentaries,
and tools to highlight, bookmark, and annotate the codes.
2.
UpCodes and the Codes Displayed
UpCodes
is
a
start-up
business
founded
and
run
by
brothers Garrett and Scott Reynolds. Having worked as a
professional architect for several years, Scott Reynolds
conceived
UpCodes
as
a
website
providing
easy
and
convenient access to materials of particular importance to
members of the architecture, engineering, and construction
(“AEC”) industries, such as the state and local building
codes
that
services
governed
of
engineer,
his
to
their
brother
develop
projects.
Garrett,
UpCodes
for
a
He
enlisted
proficient
the
AEC
the
software
community
and
potentially the broader public.
Since its inception in 2016, UpCodes has operated as a
“freemium” platform that offers some free services and some
additional
users
another
services
(ICC’s
only
available
publicACCESS
example
of
a
and
freemium
to
paying
premiumACCESS
model).
“premium”
tools
UpCodes’
are
paid
subscription allows users to search, bookmark, highlight,
7
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 10 of 103
and comment on code sections. UpCodes offers services to
individual users, groups, and institutional clients.
a.
Historic UpCodes
The layout of the UpCodes website, and particularly
the
manner
in
significantly
which
after
it
ICC
displayed
ICC’s
instituted
this
codes,
suit.
changed
“Historic
UpCodes” refers to UpCodes as it existed from its creation
in 2016 until ICC sued Defendants in August 2017. Historic
UpCodes made the forty I-Codes available to the public to
view, print, copy, and download. Defendants did not make
all of ICC’s codes available on Historic UpCodes, though,
and they redirected users to ICC’s website for at least one
(the International Zoning Code 2015). (ICC SUMF ¶ 115; Wise
Decl. Ex. 15 at 279-280; Defs. SUMF ¶ 115.) Defendants knew
that ICC posted codes for free on publicACCESS, but they
felt that UpCodes provided an opportunity to make codes
“more friendly, easy to access, and reliable.” (ICC ¶¶ SUMF
89-90;
Defs.
Resp.
¶¶
89-90.)
Defendants
did
not
seek
permission or a license to post ICC’s codes.
On the free access portion of Historic Upcodes, the
forty
ICC
model
codes
were
posted
in
a
section
titled
“General Building Codes” and identified by their model code
names.
However,
Historic
UpCodes
8
also
identified
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 11 of 103
jurisdictions that had adopted the model codes on the same
page, at least as to some of the codes. The paid access
portion
of
Historic
Upcodes
displayed
governmentally
enacted building codes that adopted ICC’s model codes with
amendments.
On
this
paid
portion
of
Historic
Upcodes,
additions by the enacting state or local jurisdiction were
displayed
in
green,
while
all
model
code
text
that
a
jurisdiction did not adopt was struck-through in red, much
like in a redline. The codes displayed on Historic UpCodes
frequently included ICC’s copyright notices.
b.
After
Current UpCodes
ICC
filed
suit
for
copyright
infringement
in
August 2017, Defendants redesigned their website, resulting
in “Current UpCodes.” Current UpCodes purports to post only
enacted state and local building codes, rather than any
model codes as such. Whereas only paid users of Historic
UpCodes could access state or local laws that adopted ICC’s
model
codes
with
amendments,
Current
UpCodes
does
not
charge for access to enacted laws. When displaying state or
local codes that adopt ICC’s model codes with amendments,
Current UpCodes now shows only the titles or headings of
the
deleted
model
code
provisions
in
struck-through
red
text, rather than all portions of the model codes that were
9
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 12 of 103
not adopted. Although Current UpCodes allegedly posts only
the law as enacted, it still uses the trademarked names of
ICC’s model codes at various points. For example, Current
UpCodes typically identifies a state or local building code
and notes on the same page that the enacted code adopts a
particular
model
code
with
or
without
amendment.
(G.
Reynolds Decl. Ex. 1.)
Defendants have continued to update
Current UpCodes
since the filing of this lawsuit. For example, Defendants
have added codes enacted by states including Connecticut,
North Carolina, Pennsylvania, and Virginia. (ICC Supp. SUMF
¶ 12; Wise Opp. Decl. Ex. G; Defs. Supp. Resp. ¶ 12.)
During
the
briefing
of
the
motions
at
issue
here,
Defendants have also updated the website in response to
ICC’s
observations
regarding
the
posting
of
model
code
provisions that were not adopted into law.
B.
PROCEDURAL BACKGROUND
ICC
sued
Defendants
for
one
count
of
copyright
infringement on August 17, 2017. (See Complaint.) Exhibit A
to
the
Complaint
listed
forty-one
model
codes
allegedly
infringed, though the parties later agreed that Defendants
did
not
Zoning
infringe
Code
2015.
ICC’s
The
copyright
remaining
10
in
forty
the
International
“I-Codes”
are
a
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 13 of 103
combination
of
2009,
2012,
and
2015
editions
of
the
following substantive codes:
1.
2.
International Building Code (“IBC”);
International Residential Code for One and TwoFamily Dwellings (“IRC”);
International Existing Building Code (“IEBC”);
International Fire Code (“IFC”);
International Plumbing Code (“IPC”)
International Mechanical Code (“IMC”)
International Fuel Gas Code (“IFGC”)
International Performance Code for Buildings and
Facilities (“ICCPC”)
International Energy Conservation Code (“IECC”)
International Private Sewage Disposal Code (“IPSDC”)
International
Wildland-Urban
Interface
Code
(“IWUIC”)
International Property Maintenance Code (“IPMC”)
International Swimming Pool and Spa Code (“ISPSC”)
International Zoning Code (“IZC”); and
International Green Construction Code (“IGCC”).
3.
4.
5.
6.
7.
8.
9.
10.
11.
12.
13.
14.
15.
(ICC
SUMF
¶
19;
Defs.
Resp.
¶
19.)
ICC
has
registered
copyrights in the 2009 and 2012 editions of the IECC, the
2012 and 2015 editions of the ISPSC, IZC, and IGCC, and the
2009, 2012, and 2015 editions of all of the other codes
listed above. (ICC SUMF
¶¶ 21–22; Johnson Decl. Ex. 5;
Defs. Resp. ¶¶ 21–22.)
On
October
counterclaimed
for
19,
a
2017,
Defendants
declaratory
judgment
answered
and
stating
that
UpCodes did not and does not infringe ICC’s copyrights.
(See Dkt. Nos. 20–21.)
11
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 14 of 103
1.
ICC’s Motion
On May 31, 2019, ICC moved for summary judgment on its
claim
of
copyright
injunction
infringement
restraining
infringement.
(See
and
Defendants
ICC’s
Motion.)
for
from
ICC
also
a
permanent
any
future
moved
for
a
judgment that Defendants’ infringement was willful, which
would entitle ICC to greater statutory damages under the
Copyright
Act
of
1976
(the
“Copyright
Act”),
17
U.S.C.
Section 101 et seq. (See “ICC Memo,” Dkt. Nos. 84-1, 100 at
49–50.)
ICC claimed that Defendants infringed its copyrights
in three different ways. First and most straightforwardly,
it claimed that Defendants posted the I-Codes on UpCodes
without
ICC’s
Defendants
permission.
infringed
its
Second,
copyrights
ICC
by
claimed
posting
that
enacted
state and local building codes that incorporated the ICodes by reference (the “I-Codes as Adopted”). Third, ICC
claimed that Defendants infringed the I-Codes by including
unadopted model code text in struck-through red print when
displaying state or local codes that adopted the I-Codes
with
amendments
(the
“I-Code
UpCodes. (See id. at 15–16.)
12
Redlines”)
on
Historic
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 15 of 103
Defendants
raising
several
copying
opposed
ICC’s
defenses
constituted
to
Motion
the
on
June
allegations
actionable
28,
2019,
that
their
infringement.
(See
“Defendants’ Opposition,” Dkt. No. 92.) Defendants argued
that posting government codes that adopt the I-Codes is not
infringement because enacted codes are the law, and thus in
the public domain. (See
id.
at 13–27.) They added that
posting I-Codes that were also adopted without amendment is
protected under the doctrine of merger, because the model
code text is identical to the text of the enacted law and
thus the only way to accurately express the law. (See id.
at
14–15.)
Defendants
also
raised
a
fair
use
defense,
particularly with respect to the I-Code Redlines. (See id.
at 27–29.)
ICC replied in further support of its motion on August
2, 2019, reiterating many of the points raised in the ICC
Memo. (See “ICC Reply,” Dkt. No. 98.) In particular, it
repeated its position that state and local enactment of the
I-Codes into law does not place the I-Codes in the public
domain,
present
arguing
that
multiple
a
holding
constitutional
to
the
contrary
concerns
under
would
the
Supremacy Clause and Takings Clause. (See id. at 4–7.) ICC
13
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 16 of 103
also challenged the various defenses raised by Defendants,
including merger and fair use. (See id. at 16–24.)
2.
Defendants’ Motion
On May 31, 2019, Defendants filed a cross-motion for
partial
summary
judgment
on
their
counterclaim.
(See
Defendants’ Motion.) They requested a declaratory judgment
that Current UpCodes does not infringe ICC’s copyrights,
deferring their claim as to Historic UpCodes for either a
subsequent motion or trial. (See “Defendants’ Memo,” Dkt.
No.
85-1,
Current
at
3
n.1.)
Defendants
UpCodes
posts
only
codes, which
constitute
primarily
argued
government-enacted
that
building
the law and thus in the public
domain. (See id. at 11–33.) They added that to the extent
the codes they post are not in the public domain, such
posting is otherwise protected as fair use. (See id. at 33–
44.)
Defendants
lastly
raised
the
defense
of
collateral
estoppel, based on a prior suit about model building codes
and the public domain involving ICC’s predecessor, SBCCI.
(See id. at 44–49.)
ICC opposed Defendants’ Motion on June 28, 2019. (See
“ICC Opposition,” Dkt. No. 90.) ICC argued that state and
local adoption of the I-Codes does not prevent ICC from
enforcing its copyrights in model code text incorporated by
14
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 17 of 103
reference,
concerns
citing
and
various
claiming
statutory
that
a
and
contrary
constitutional
holding
would
contravene Second Circuit precedent. (See id. at 7–24.) ICC
also
took
Defendants,
issue
with
including
the
various
merger,
fair
defenses
use,
and
raised
by
collateral
estoppel. (See id. at 24–50.) ICC further disputed that
Current UpCodes reproduces only the law as enacted, noting
that Defendants continue to reproduce model code text and
appendices even when the enacting states identified did not
adopt those portions of the model codes. (See id. at 5–7.)
Defendants replied in further support of their motion
on August 2, 2019. (See “Defendants’ Reply,” Dkt. No. 96.)
Defendants
argued
that
ICC’s
inaccurate
posting
of
enacted
codes
glitches,
all
errors
and
technical
observations
owed
of
regarding
to
which
the
inadvertent
were
fixed
shortly after ICC notified Defendants. (See id. at 1–3.)
Defendants otherwise reiterated their arguments regarding
the
public
domain,
merger,
fair
use,
and
collateral
estoppel.
II.
A.
LEGAL STANDARDS AND DISCUSSION
MOTIONS FOR SUMMARY JUDGMENT
Summary judgment is appropriate if the evidence shows
that “there is no genuine dispute as to any material fact
15
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 18 of 103
and
the
movant
is
entitled
to
judgment
as
a
matter
of
law.” Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477
U.S. 317, 322 (1986). In this context, a court’s role “is
not
to
resolve
disputed
issues
of
fact
but
to
assess
whether there are any factual issues to be tried.” Knight
v. U.S. Fire Ins. Co., 804 F.2d 9, 11 (2d Cir. 1986).
The
moving
party
bears
the
initial
burden
of
demonstrating the absence of any genuine issues of material
fact. See Celotex,
Residential
1994).
If
477
Servs.,
the
U.S.
L.P.,
moving
at
22
party
323; Gallo
F.3d
v.
1219,
satisfies
Prudential
1223
its
(2d
Cir.
burden,
the
nonmoving party must provide specific facts showing that
there is a genuine issue for trial in order to survive the
motion
for summary judgment. See Shannon
v.
N.Y.
City
Transit Auth., 332 F.3d 95, 98-99 (2d Cir. 2003). “[T]he
mere existence of some alleged factual dispute between the
parties
will
not
defeat
an
otherwise
properly
supported
motion for summary judgment; the requirement is that there
be no genuine issue of material fact.” Anderson v. Liberty
Lobby,
Inc.,
477
U.S.
242,
247–48
(1986)
(emphasis
in
original).
In determining whether the moving party is entitled to
judgment as a matter of law, the court must “resolve all
16
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 19 of 103
ambiguities and draw all justifiable factual inferences in
favor
of
the
sought.” Major
party
League
against
Baseball
whom summary judgment is
Props.,
Inc.
v.
Salvino,
Inc., 542 F.3d 290, 309 (2d Cir. 2008). Though a party
opposing summary judgment may not “rely on mere conclusory
allegations nor speculation,” D’Amico v. City of N.Y., 132
F.3d 145, 149 (2d Cir. 1998), summary judgment is improper
if any evidence in the record allows a reasonable inference
to be drawn in favor of the opposing party. See Gummo v.
Village of Depew, 75 F.3d 98, 107 (2d Cir. 1996).
B.
DECLARATORY JUDGMENTS AND COPYRIGHT INFRINGEMENT
28 U.S.C. Section 2201 empowers this Court to issue
declaratory
judgments
in
a
case
of
actual
controversy
within its jurisdiction. See Duane Reade, Inc. v. St. Paul
Fire and Marine Ins. Co., 411 F.3d 384, 389 (2d Cir. 2005).
As the following discussion makes clear, there is certainly
an actual controversy in this case.
“In a copyright infringement case, the plaintiff must
show:
(i)
ownership
of
a
valid
copyright;
and
(ii)
unauthorized copying of the copyrighted work.” Jorgensen v.
Epic/Sony Records, 351 F.3d 46, 51 (2d Cir. 2003). It is
undisputed that ICC has valid copyrights in the I-Codes,
and that Defendants copied the I-Codes in some form without
17
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 20 of 103
ICC’s authorization. (See ICC SUMF ¶¶ 21–22, 92, 173; Defs.
Resp.
¶¶
21–22,
92,
unauthorized
copying
infringement
based
173.)
Defendants
nevertheless
on
a
number
claim
does
of
that
not
their
constitute
copyright
doctrines
discussed at length below.
C.
PUBLIC DOMAIN
The main dispute in this case is whether the I-Codes
as Adopted are in the public domain. ICC maintains that it
can
enforce
its
copyrights
in
the
I-Codes
to
prevent
copying of state and local code text that ICC authored,
while Defendants argue that state and local adoption of the
I-Codes means that the adopted text has become part of the
law and can thus be freely copied. Defendants are more
likely to be entitled to a declaratory judgment if the ICodes as Adopted are in the public domain, while ICC’s case
for actionable infringement is much stronger if the codes
are
not
in
the
public
statutes
provide
relevant
case
concludes,
consistent.
a
law
however,
It
domain.
clear
is
compels
a
binding
answer,
arguably
that
No
the
and
precedent
the
or
potentially
contradictory.
The
case
ultimately
holding
law
that
is
the
Court
I-Codes
as
Adopted are in the public domain, because they are in fact
18
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 21 of 103
enacted
state
and
local
laws
binding
on
the
enacting
jurisdictions’ constituents.
Because this conclusion is not immediately apparent
from any one particular case, the Court details at length
the
relevant
holding
in
cases
this
and
considerations
section.
The
Court
that
begins
compel
its
with
the
“Government Edicts” doctrine, which strongly suggests the
law as adopted by legislative enactments is in the public
domain. The Court then turns to circuit court precedent
involving the model building codes of ICC’s predecessors,
who brought claims remarkably similar to those that ICC
advances here. The Court next considers broader in-circuit
precedent on government incorporation by reference that ICC
argues is contrary to the model building code cases. The
Court
subsequently
addresses
various
constitutional
and
statutory concerns raised by ICC and finally summarizes the
applicable legal standard.
At bottom, the controlling authorities make clear that
a private party cannot exercise its copyrights to restrict
the public’s access to the law. Applying that principle to
the
facts
of
this
case,
ICC
cannot
claim
actionable
infringement based only on Defendants’ accurate posting of
the I-Codes as Adopted, which are essentially enacted state
19
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 22 of 103
and
local
laws.
This
conclusion
does
not
preclude
the
possibility that Defendants infringed ICC’s copyrights by
posting the I-Codes as model codes or the I-Code Redlines,
though. Defendants’ other forms of copying must be assessed
under different doctrinal frameworks. And while the law of
public
domain
is
favorable
to
Defendants,
Defendants’
Motion must be denied at this time because the record is
ambiguous as to whether what the Defendants actually post
constitutes “the law” alone.
1. The Government Edicts Doctrine
Neither the Supreme Court nor Congress has explicitly
addressed
the
references
public
to
Nonetheless,
domain
privately-authored
Supreme
“Government
implications
Edicts”
Court
are
case
in
the
of
government
copyrighted
law
works.
explaining
public
domain
that
reflects
important principles that guide the Court’s analysis. The
Government
Edicts
nineteenth
century
opinions
judges
and
could
doctrine
related
not
be
cases
derives
from
establishing
explanatory
copyrighted,
that
materials
though
a
trio
judicial
authored
private
of
by
authors
could claim a copyright in the explanatory materials that
they authored themselves.
20
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 23 of 103
The
doctrine
originates
from
the
Supreme
Court’s
unanimous but unelaborated observation that “no reporter
has
or
can
have
any
copyright
in
the
written
opinions
delivered by this Court.” Wheaton v. Peters, 33 U.S. 591,
668
(1834).
doctrine
The
over
50
Supreme
years
Court
later,
further
holding
developed
that
an
the
official
state court reporter could not claim copyright in either
judges’
opinions
or
nonbinding
explanatory
materials
authored by the judges. See generally Banks v. Manchester,
128
U.S.
stated
244
that
(1888).
“[t]he
In
so
whole
holding,
work
the
done
Supreme
by
the
Court
judges
constitutes the authentic exposition and interpretation of
the
law,
which,
binding
every
citizen,
is
free
for
publication to all.” Id. at 253. But in a companion case
the same year, the Supreme Court held that an official
reporter could hold a copyright in explanatory materials
authored by himself, rather than the judges. See Callaghan
v.
Myers,
128
established
that
U.S.
some
617
(1888).
government
While
edicts
these
could
cases
not
be
copyrighted, the rationale underlying their holdings was
not altogether clear.
The Supreme Court recently clarified the principles
animating
the
Government
Edicts
21
doctrine
in
Georgia
v.
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 24 of 103
Public.Resource.Org, Inc., 140 S.Ct. 1498 (2020) (“PRO”). 3
There,
the
Official
Court
Code
considered
of
Georgia
whether
annotations
Annotated,
which
in
was
the
the
authoritative version of Georgia’s statutes under Georgia
law, were in the public domain along with the statutes
themselves. LexisNexis drafted the annotations pursuant to
a work-for-hire agreement with a Georgia state commission,
such
that
Georgia
was
considered
the
“author”
of
those
annotations for copyright purposes. See id. at 1505. When
the nonprofit organization PRO copied the annotated code,
Georgia filed suit and argued that the annotations were not
in the public domain because they did not carry the “force
of law,” unlike the statutes. See id. The district court
agreed
with
using
a
Georgia,
three-part
but
the
test
Eleventh
that
Circuit
considered
reversed,
whether
the
annotations were constructively authored by citizens. See
id. at 1505–06.
The
Supreme
Court
affirmed,
different
rule:
government
with
force
of
the
law
but
officials
cannot
claim
it
announced
a
empowered
to
speak
copyright
in
works
created in the course of their official duties, whether or
3
On May 19, 2020, both sides to the present dispute submitted letter
briefs addressing the PRO decision’s potential impact on the parties’
cross-motions for summary judgment. (See “Defendants’ Letter,” Dkt. No.
103; “ICC Letter,” Dkt. No. 104.) The Court has considered the parties’
letter briefs in reaching its decision.
22
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 25 of 103
not the works themselves carry the force of law. See id. at
1504, 1506. The Supreme Court based its rule in significant
part on a construction of the term “author,” noting that
judges
and
legislators
could
not
be
considered
authors
entitled to copyright in their official works because those
officials
were
“vested
with
the
authority
to
make
and
interpret the law.” Id. at 1507.
As a corollary to its
author-focused
Court
rule,
the
Supreme
added
that
the
Government Edicts rule “does not apply, however, to works
created by . . . private parties[] who lack the authority
to make or interpret the law.” Id. at 1507.
Because
authority
to
ICC
make
is
or
a
private
interpret
party
the
that
law,
the
lacks
the
Government
Edicts doctrine is clearly not dispositive of this case.
But the doctrine provides significant guidance that this
Court
must
arguments
keep
in
mind
regarding
the
when
addressing
I-Codes
as
the
parties’
Adopted.
Most
importantly, the Supreme Court noted that “[t]he animating
principle behind [the Government Edicts rule] is that no
one can own the law. Every citizen is presumed to know the
law, and it needs no argument to show . . . that all should
have free access to its contents.” Id. (internal quotation
marks omitted). Because no one can own or restrict access
23
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 26 of 103
to it, the law is clearly in the public domain.
4
PRO’s
concluding remarks underscore that any rule in the case at
hand must respect the public’s need for full and unfettered
access to the law.5
Bearing
these
concerns
in
mind,
this
Court
must
consider whether the I-Codes as Adopted are “the law.” In
one
sense,
entirely
state
answer
obvious;
and
significant
entity
the
the
local
amounts
rather
than
to
I-Codes
laws.
of
by
this
as
But
Adopted
these
material
government
4
question
seems
are
laws
authored
officials
almost
literally
incorporate
by
a
private
empowered
to
Indeed, the Government Edicts doctrine actually broadens the scope of
the public domain beyond the law itself, encompassing even materials
that do not have the force of law (such as legislative history and
judicial concurrences or dissents).
5
The following passage specifically emphasizes the point: “Georgia
minimizes the [] annotations as non-binding and non-authoritative, but
that description undersells their practical significance. Imagine a
Georgia citizen interested in learning his legal rights and duties. If
he reads the economy-class version of the Georgia Code available
online, he will see laws requiring political candidates to pay hefty
qualification fees (with no indigency exception), criminalizing broad
categories of consensual sexual conduct, and exempting certain key
evidence in criminal trials from standard evidentiary limitations -with no hint that important aspects of those laws have been held unconstitutional by the Georgia Supreme Court. . . . Meanwhile, first-class
readers with access to the annotations will be assured that these laws
are, in crucial respects, unenforceable relics that the legislature has
not bothered to narrow or repeal. . . . If everything short of statutes
and opinions were copyrightable, then States would be free to offer a
whole range of premium legal works for those who can afford the extra
benefit. A State could monetize its entire suite of legislative
history. With today’s digital tools, States might even launch a
subscription or pay-per-law service. . . . And citizens, attorneys,
nonprofits, and private research companies would have to cease all
copying, distribution, and display of those works or risk severe and
potentially criminal penalties. . . . The less bold among us would have
to think twice before using official legal works that illuminate the
law we are all presumed to know and understand.” PRO, 140 S.Ct. at
1512–13.
24
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 27 of 103
speak with the force of law, thus presenting an unusual
fact
pattern
that
the
author-focused
Government
Edicts
doctrine does not directly address. 6 While the principles
animating
the
Codes
Adopted
as
considers
Government
case
are
law
Edicts
in
that
the
doctrine
public
addresses
suggest
domain,
more
the
the
analogous
I-
Court
fact
patterns to confirm that this conclusion is indeed correct.
2.
Model Building Code Cases
Though the Government Edicts doctrine does not address
government adoption of model building codes, two circuit
courts
broadly
have
considered
consistent
the
with
issue.
each
other
Their
holdings
are
and
reaffirm
the
principle that no one can own the law. Moreover, both cases
concern the model codes of ICC’s predecessors, SBCCI and
BOCA, on which at least some of the I-Codes are based.
These
cases
strongly
suggest
that
Defendants
do
not
infringe ICC’s copyrights insofar as they accurately post
the I-Codes as Adopted.
6
ICC suggests that because the Government Edicts doctrine does not
apply to private authors, it can enforce its copyrights in full as to
all forms of copying alleged here. (See generally ICC Letter.) However,
the author-focused Government Edicts rule is but one way of effecting
the principle that “no one can own the law.” As Defendants note,
private citizens or lobbyists could not claim a copyright in a state
statute merely because they were private authors of a ballot initiative
or bill that eventually became law. (See Defendants’ Letter at 2.)
25
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 28 of 103
The First Circuit first considered the issue in BOCA
v. Code Tech., Inc., 628 F.2d 730 (1st Cir. 1980). BOCA
concerned
the
defendant’s
publication
and
sale
of
the
Massachusetts Building Code, which adopted BOCA’s building
code
with
agreement
minor
and
amendments
was
made
pursuant
available
for
to
a
public
licensing
viewing
at
state buildings, and which BOCA published and sold at a
relatively low price. See id. at 732. Like Defendants here,
the defendant argued that the model building code entered
the public domain to the extent adopted into Massachusetts
law.
Id.
at
733.
Though
the
First
Circuit
did
not
definitively rule on the issue, it suggested at length that
it agreed.
The
First
Circuit
began
by
citing
the
first
three
Government Edicts cases for the proposition, much as the
Eleventh Circuit stated in PRO, that citizens collectively
author
the
law.
See
id.
at
733–35.
However,
the
First
Circuit did not rely on that rationale alone, noting “the
very important and practical policy that citizens must have
free access to the laws which govern them . . . based on
the concept of due process.” Id. at 734. It observed that
the building codes at issue “[had] the effect of law and
carr[ied]
sanctions
of
fine
26
and
imprisonment
for
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 29 of 103
violations,” which heightened the due process concerns. See
id. at 734–35. The court viewed BOCA’s normal prerogative
to limit copying of its
works as inconsistent with due
process in this context: “We cannot see how this aspect of
copyright protection can be squared with the right of the
public to know the law to which it is subject. We are,
therefore,
far
from
persuaded
that BOCA’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.
While the First Circuit found it “hard to see how the
public's essential due process right of free access to the
law
(including
a
necessary
right
freely
to
copy
and
circulate all or part of a given law for various purposes),
can be reconciled with the exclusivity afforded a private
copyright
holder”
and
had
“serious
doubts
as
to
BOCA’s
ability to prevail,” it stopped short of explicitly holding
that there had been no actionable infringement because the
controversy
building
Government
had
code
not
at
Edicts
been
issue
fully
did
doctrine.
not
See
27
briefed
fit
id.
and
neatly
at
736.
the
into
The
model
the
case
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 30 of 103
settled before returning to the First Circuit for its final
say.
The issue was considered as well by the Fifth Circuit
in Veeck v. SBCCI, 293 F.3d 791 (5th Cir. 2002). Veeck ran
a noncommercial website on which he wished to post the
building codes of Anna, Texas and Savoy, Texas. He could
not easily locate the codes, but he knew both towns had
adopted SBCCI’s Standard Building Code 1994 in full; he
thus bought a copy of the model code and posted it on his
website, identifying it as the building code for Anna and
Savoy rather than as SBCCI’s copyrighted work. See id. at
793–94. Veeck also posted SBCCI’s Standard Plumbing Code,
Standard
Gas
Code,
Standard
Fire
Prevention
Code,
and
Standard Mechanical Code in the same fashion, identifying
them as the laws of Anna and Savoy.7 See id. As was the case
here,
SBCCI
and
Veeck
filed
cross
motions
for
summary
judgment, the SDO alleging copyright infringement and the
defendant seeking a declaratory judgment stating that what
he had
posted embodied
only laws. See id. at 794. The
7
Mindful that many of ICC’s codes derive in part from SBCCI’s, the
Court notes an apparent parallel with the IBC, IFC, IMC, IPC, and IFGC.
While the Court remains cognizant that the I-Codes are not identical to
the SBCCI codes, the Veeck court’s treatment of the SBCCI codes may
nevertheless provide guidance on how the Court should view the
potentially analogous I-Codes at issue here.
28
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 31 of 103
district court and a panel of the Fifth Circuit granted
SBCCI’s motion for summary judgment.
The en banc Fifth Circuit reversed and held that Veeck
had posted only the law. The court analyzed BOCA at length,
agreeing that the Government Edicts doctrine derived from a
notion of metaphorical citizen authorship of the law. See
id. at 795–799. And like the First Circuit in BOCA, the
Fifth Circuit did not rely on that conception alone, again
highlighting the concerns implicated by a private party’s
exercise
codes.
of
See
copyright
id.
at
799
with
respect
(stating
to
that
enacted
the
building
“‘metaphorical
concept of citizen authorship’ together with the need for
citizens to have free access to the laws are the ultimate
holding of Banks”). SBCCI argued that the need for free
access to the law was satisfied because Anna and Savoy both
made their building codes available for public inspection,
but the Fifth Circuit was not convinced. 8 Though the Fifth
8
Specifically, the Veeck court rejected SBCCI’s arguments with the
following observation: “We disagree that the question of public access
can be limited to the minimum availability that SBCCI would permit. . .
. public ownership of the law means precisely that ‘the law’ is in the
‘public domain’ for whatever use the citizens choose to make of it. . .
. [T]o say, as Banks does, that the law is ‘free for publication to
all’ is to expand, not factually limit, the extent of its availability.
Moreover, as the BOCA decision observed, it is difficult to reconcile
the public’s right to know the law with the statutory right of a
copyright holder to exclude his work from any publication or
dissemination. SBCCI responds that due process must be balanced against
its proprietary rights and that the fair use doctrine as well as its
honorable intentions will prevent abuse. Free availability of the law,
29
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 32 of 103
Circuit eschewed the term “due process” given the formal
doctrines
court’s
that
have
reasoning
developed
detailed
around
in
the
that
phrase,
preceding
the
footnote
essentially tracks that of BOCA and remains consistent with
the “animating principle” that no one can own or restrict
free access to the law.
The
Fifth
Circuit
concluded
that
“when
Veeck
copied only ‘the law’ of Anna and Savoy, Texas, which he
obtained from SBCCI’s publication, and when he reprinted
only ‘the law’ of those municipalities, he did not infringe
SBCCI’s copyrights in its model building codes.” Id. at
800. However, the court noted its holding “might well be
the opposite, if Veeck had copied the model codes as model
codes, or if he had indiscriminately mingled those portions
of
‘the
law’
councils
with
of
Anna
other
and
parts
Savoy
of
adopted
the
model
by
their
codes
town
not
so
adopted.” Id. at 800 n.14.
BOCA and Veeck are almost directly on point to the
controversy at issue here. They strongly suggest that ICC
cannot limit accurate posting of the I-Codes as Adopted.
However, the cases also suggest that the law of the public
domain will not protect the posting of the I-Codes as Iby this logic, has degenerated into availability as
chooses not to file suit.” Veeck, 293 F.3d at 799–800.
30
long
as
SBCCI
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 33 of 103
Codes or the I-Code Redlines, which “mingle” portions of
the
enacted
law
with
“parts
of
the
model
codes
not
so
adopted.” 9 The public domain analysis might reasonably end
here.
However,
because
BOCA
tension
the
and
with
Court
Veeck
two
continues
are
binding
at
its
least
Second
discussion
below
superficially
Circuit
in
precedents,
addressed in the following two sections.
3.
Incorporation by Reference
Despite
the
thrust
of
the
cases
above,
the
Second
Circuit has rejected the argument that any legislative or
regulatory reference to a copyrighted work is sufficient to
place that work in the public domain. In CCC Info. Servs.
Inc. v. Maclean Hunter Mkt. Reports, 44 F.3d 61, 74 (2d
Cir. 1994), the court stated that it was “not prepared to
hold that a state’s reference to a copyrighted work as a
legal
standard
copyright”).
for
More
valuation
results
in
specifically,
the
court
loss
of
rejected
the
an
argument that the public needed free access to a privatelyauthored compilation of used automobile valuations called
the Red Book simply because state statutes and regulations
required that insurance loss payments either equal the Red
9
The Court notes that the mingling in the I-Code Redlines is not
necessarily indiscriminate, as accurate redlining is a calculated
method of comparison between two works. Whether that form of copying is
protected, however, must be assessed under the rubric of fair use. See
infra Section II.E.
31
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 34 of 103
Book’s valuations or the average value of the Red Book’s
valuations and those of a competing compilation. See id. at
63,
73–74.
observed
Among
that
if
other
a
concerns,
government’s
the
mere
Second
Circuit
reference
to
a
copyrighted work stripped that work of protection, then the
establishment
copyright
in
of
an
educational
countless
books
curriculum
could
referenced
as
strip
assigned
reading. See id. at 74.
The Ninth Circuit raised similar concerns in Practice
Mgmt. Info. Corp. v. Am. Med. Ass’n, 121 F.3d 516 (9th Cir.
1997) (“PMIC”). There, the Ninth Circuit refused to find
that the American Medical Association lost its copyright in
a
medical
coding
system
merely
because
a
state
statute
required private parties to reference the medical codes in
that system when applying for benefits. Like the Second
Circuit,
references
the
to
court
expressed
copyrighted
concern
works
that
sufficed
if
to
mere
strip
copyright, that could destroy copyrights in countless works
including model building codes, various technical reference
standards, and the legal Bluebook. See id. at 519, 519 n.5.
ICC argues that Veeck and BOCA cannot be reconciled
with CCC, and that this Court must consequently hold that
the privately-authored portions of the I-Codes as Adopted
32
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 35 of 103
do not enter the public domain to the extent embodied in
the
adopting
explained
laws.
that
However,
there
is
no
the
Veeck
necessary
court
itself
contradiction
when
SBCCI made the same argument. Specifically addressing both
CCC
and
involve
PMIC, the court observed “[t]his case does not
references
to
extrinsic
standards.
Instead,
it
concerns the wholesale adoption of a model code promoted by
its
author,
SBCCI,
precisely
for
use
as
legislation.”
Veeck, 293 F.3d at 803–04. As the Veeck court put it, “[i]f
a statute refers to the Red Book or to specific school
books,
the
law
copyrighted
work
obligations.
The
requires
in
citizens
the
to
process of
copyrighted
works
do
consult
or
use
fulfilling
not
‘become
a
their
law’
merely because a statute refers to them. . . . [N]either
[plaintiff] solicited incorporation of their standards by
legislators or regulators.” Id. at 804–05.10
10
The Court notes the CCC court’s observation that “Nimmer argues that
the adoption of a private work into law . . . should not immunize a
competitive commercial publisher from liability since this would ‘prove
destructive of the copyright interest in encouraging creativity in
connection with the increasing trend toward state and federal adoptions
of model codes.’” 44 F.3d at 74 n.30. The latest edition of Nimmer’s
treatise does not actually adopt this position; it simply notes that
“one might argue” the same and then adds that cases since BOCA have
considered the matter more fully. See 1 Nimmer on Copyright § 5.12.
Because Nimmer does not press the proposition cited in CCC as the
better view, and because the CCC court was not actually faced with any
model codes, the Court declines to infer that the CCC decision compels
a holding contrary to Veeck and BOCA based on this footnote alone.
33
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 36 of 103
A privately-authored work does not “become law” just
because a statute or regulation references it, but that
does not mean governmental incorporation of a copyrighted
work
never
renders
Recommending
that
free
the
access
Supreme
to
the
Court
work
deny
necessary.
certiorari
in
Veeck, the Solicitor General further explained why CCC and
Veeck do not conflict and provided guidance on which case
applies
to
General’s
a
particular
Brief,”
SBCCI
fact
v.
pattern.
Veeck,
No.
See
02-355
“Solicitor
(May
30,
2003). Far from conflicting, the cases merely reflect a
divide between distinct
fact patterns
requiring distinct
results: “those involving the incorporation of copyrighted
codes into laws that directly regulate primary conduct and
those involving laws that reference copyrighted materials.”
Id. at 8.
In
explaining
why
Veeck
was
correctly
decided,
the
Solicitor General detailed five considerations indicating
why
SBCCI’s
model
codes
became
the
law
upon
government
incorporation: (1) the codes “were created for the sole
purpose of enactment into law, and SBCCI invited the towns
of
Anna
and
Savoy
to
enact
them”;
(2)
the
codes
“comprehensively govern[ed] a very broad range of . . .
everyday
conduct
by
private
34
businesses
and
ordinary
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 37 of 103
citizens”
such
that
applicability”;
(3)
they
the
resembled
codes
“laws
“expressly
of
general
regulate[d]
an
entire area of private endeavor”; (4) the codes “carr[ied]
criminal
penalties
for
their
violation”;
and
(5)
the
defendant made the building codes available to the public
and “did not identify or publish them as the SBCCI model
codes.” Id. at 11. While these five observations do not
constitute a definitive test and do not perfectly track the
facts
of
this
case,
the
Court
will
consider
them
in
determining whether Veeck and BOCA or CCC and PMIC should
control here.
4.
County of Suffolk
The
Second
Circuit
has
also
considered
whether
otherwise copyrightable works may enter the public domain
through
association
with
government
in
another
case.
In
County Of Suffolk, New York v. First American Real Estate
Solutions, 261 F.3d 179 (2d Cir. 2001), the court addressed
the question of
County
agency
whether tax maps authored by a Suffolk
and
referenced
in
the
county’s
ordinances
were in the public domain. Canvassing the Government Edicts
cases,
the
Second
Circuit
determined
two
considerations
governed whether the Suffolk County tax maps were in the
public domain: “(1) whether the entity or individual who
35
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 38 of 103
created the work needs an economic incentive to create or
has a proprietary interest in creating the work and (2)
whether the public needs notice of this particular work to
have notice of the law.” See id. at 194.
As a testament to the unclear state of the law, both
sides
to
the
dispute
before
this
Court
devote
numerous
pages to discussion of Suffolk even though neither believes
it
should
Suffolk
control.
test
The
appears
Court
agrees
primarily
with
directed
ICC
to
that
works
the
by
government authors, rather than to works by private authors
like ICC. (See ICC Reply at 9–10.) However, the Suffolk
test is not necessarily inconsistent with the more apposite
case law detailed above, either. While the Court does not
rely on Suffolk as setting forth the definitive test that
controls
here,
the
Court
nevertheless
considers
the
decision because it is binding precedent and its discussion
remains relevant to this case more broadly.
The Court reads the Suffolk decision to contemplate a
weighing of the two enumerated considerations listed above;
where due process concerns are particularly high, as where
a work is itself “the law,” an author’s economic incentives
play a particularly low role in the analysis, if any. The
Suffolk court thus noted that “if the existence and content
36
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 39 of 103
of Suffolk County’s maps are purely dictated by law, it is
likely that Suffolk County needed no additional incentive
to create them.” See id. at 194. The court also observed
“[d]ue process requires that before a criminal sanction or
significant civil or administrative penalty attaches, an
individual must have fair warning of the conduct prohibited
by the statute or the regulation that makes such a sanction
possible.”
Id.
at 195. The
Circuit Court held that due
process required only access to the statute establishing
the obligation to pay property taxes, because “the tax maps
themselves do not create the legal obligation . . . but are
merely a means by which the government assesses a
pre-
existing obligation.” Id.
Though acknowledging that due process concerns must
be
balanced
against
economic
incentives
in
some
circumstances, this Court is not persuaded that the need
for economic incentives could meaningfully weigh against
the
need
for
free
public
access
to
the
law
in
these
circumstances. See infra Section II.C.7. Although neither
BOCA nor Veeck specifically set forth the balancing test
proposed by Suffolk, both courts effectively weighed due
process concerns against the incentive arguments pressed by
ICC’s predecessors. Even though the BOCA court remanded to
37
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 40 of 103
the district court to consider BOCA’s arguments in full, it
nevertheless had “serious doubts as to BOCA’s ability to
prevail.” See 628 F.2d at 736. And though the Veeck court
disclaimed that public access to the law should hinge on
factual
determinations,
incentives-focused
it
nevertheless
arguments
against
weighed
the
free
SBCCI’s
access
notions that the Circuit Court had observed. In particular,
the Veeck court noted that organizations like SBCCI had
survived for over 60 years without any enforcement of their
copyright in analogous circumstances, and it added that the
technical complexities of model codes suggested there would
be robust demand for up-to-date codes regardless of the
limited circumstances where a model code’s text entered the
public domain. See 293 F.3d at 805–06. Indeed, the court
noted that “it is difficult to imagine an area of creative
endeavor in which the copyright incentive is needed less.
Trade
organizations
industry
have
standardization,
powerful
quality
reasons
stemming
control,
and
from
self-
regulation to produce these model codes; it is unlikely
that, without copyright, they will cease producing them.”
Id. at 806.
The BOCA and Veeck courts effectively indicated that
“the public need[ed] notice of [the adopted codes] to have
38
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 41 of 103
notice
of
the
law”
because
those
codes
had
themselves
become the law. See Suffolk, 261 F.3d at 194. 11 While the
need
for
economic
incentives
might
outweigh
due
process
concerns as to works that do not carry the force of law,
the
Court
is
persuaded
that
this
outcome
will
almost
certainly not be the case as to works that do constitute
the law. Accordingly, the Court will consider ICC’s need
for
economic
incentives
only
insofar
as
the
I-Codes
as
Adopted do not, in fact, embody the law.
5.
a.
Constitutional Considerations
The Takings Clause
ICC next states that if governmental adoption of model
codes prevents private authors from enforcing their rights
against copiers of the enacted codes, that would effect an
11
ICC argues due process is satisfied because it makes its codes
available for free in libraries and its controlled publicACCESS site.
However, BOCA and Veeck explicitly rejected the same argument, noting
that ICC’s predecessors would effectively control the terms of access
to the law. See supra Section II.C.2. That ICC does not allow members
of the public to freely print or download copies of the enacted laws
for their own use also cuts against the notion that ICC already
provides “free access” to the law. Indeed, over one hundred years ago,
the first Justice Harlan suggested there were no limits on the extent
to which the laws could be shared. See Howell v. Miller, 91 F. 129, 137
(6th Cir. 1898) (“[N]o one can obtain the exclusive right to publish
the laws of a state in a book prepared by him. . . . [A]ny 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 property of an individual.”); cf. Sparaco
v. Lawler, Matusky, Skelly, Eng’rs LLP, 303 F.3d 460, 466 (2d Cir.
2002) (noting that “historical, scientific, or factual information
belongs in the public domain, and . . . allowing the first publisher to
prevent others from copying such information would defeat the
objectives of copyright by impeding rather than advancing the progress
of knowledge”).
39
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 42 of 103
unconstitutional taking. It cites CCC to similar effect.
See 44 F.3d at 74 (“[A] rule that the adoption of such a
reference
by
a
state
legislature
or
administrative
body
deprived the copyright owner of its property would raise
very substantial problems under the Takings Clause of the
Constitution.”). ICC adds that such a holding would also
contravene the Copyright Act, which states that “[w]hen an
individual author’s ownership of a copyright . . . has not
previously been transferred voluntarily by that individual
author,
no
action
by
any
governmental
body
or
other
official or organization purporting to seize, expropriate,
transfer, or exercise rights of ownership with respect to
the
copyright,
copyright,
or
shall
any
be
of
given
the
exclusive
effect
under
rights
this
under
title.”
a
17
U.S.C. § 201(e).
There is no strict formula for assessing a Takings
Clause claim, and each case must be addressed in light of
the
particular
circumstances
presented.
See
Penn.
Cent.
Transp. Co. v. City of N.Y., 438 U.S. 104, 123–24 (1978).
However, the Supreme Court has identified three factors of
“particular significance”: (1) “the economic impact of the
regulation on the claimant”; (2) “the extent to which the
regulation has interfered with distinct investment-backed
40
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 43 of 103
expectations”; and (3) “the character of the governmental
action.” Id. at 124. Private parties do not have reasonable
investment-backed expectations in property or information
voluntarily
provided
explicitly
provided
to
by
government,
the
beyond
government
what
itself.
is
See
Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1005–06 (1984).
Put
differently,
interacts
where
with
governmental
a
private
government
actions
that
party
regarding
might
voluntarily
its
affect
property,
that
property
interest do not constitute a taking unless such action is
contrary to a government promise concerning the property.
See Meriden Tr. & Safe Dep. Co. v. FDIC, 62 F.3d 449, 455
(2d Cir. 1995) (holding no unconstitutional taking occurred
where plaintiff “voluntarily subject[ed] itself to a known
obligation”); Garelick v. Sullivan, 987 F.2d 913, 916 (2d
Cir.
1993)
(“[W]here
participates
in
a
a
service
price-regulated
provider
program
voluntarily
or
activity,
there is no legal compulsion to provide service and thus
there can be no taking.”).
Again, the most analogous case addressing the Takings
Clause concerns is Veeck. The Veeck court found no issues
under
the
Takings
Clause
and
17
U.S.C.
Section
201(e)
because “SBCCI urged localities to adopt its model codes,”
41
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 44 of 103
even
though
neither
Anna
nor
Savoy
signed
a
licensing
agreement with the SDO. 293 F.3d at 794, 803. Thus, the
issue
in
cases
involving
governmental
adoption
of
model
codes “is not the voluntariness of the appropriation but
the
legal
consequences
flowing
from
the
permission
that
[the SDO] gave.” Id.
The
Solicitor
raised
concerns
General
CCC
in
similarly
would
be
noted
that
inapposite
in
the
model
building code cases “because [the SDO] invited the towns to
enact its building code and therefore would presumably not
have a valid takings claim.” Solicitor General’s Brief at
12
n.4.
Claims
regarding
the
Copyright
Act
are
equally
inapposite, as 17 U.S.C. Section 201(e) applies only to
copyrights held by individual rather than corporate authors
and
more
fundamentally
“addresses
government
actions
avowedly intended to coerce a copyright holder to part with
his copyright, so that the government itself may exercise
ownership of the rights.” Id. at 16 & n.7. Because Anna and
Savoy
adopted
invitation,
the
their
model
actions
codes
into
law
at
clearly
were
not
the
SBCCI’s
type
of
coercive seizure contemplated by the statute.
ICC undisputedly encourages the adoption of its model
codes into law as a general matter, which counsels against
42
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 45 of 103
according its Takings Clause concerns
particularly great
weight. See infra Section II.C.7. A simple comparison of
the number of ICC employees dedicated to code development
and
field
staff
governments
dedicated
understand
to
and
helping
adopt
state
model
and
codes
local
helps
illustrate the point. (ICC SUMF ¶ 62; Defs. Resp. ¶ 62;
Defs. SUMF ¶ 28, 31; ICC SDF ¶ 28, 31.) Even if ICC did not
expect that its encouragement of government adoption would
prevent it from enforcing its copyrights as to the I-Codes
as Adopted, that legal consequence flows from the federal
law of the public domain rather than from unjust action by
the state or local jurisdictions. Far from coercing ICC to
give
up
its
copyrights,
the
jurisdictions
are
following
ICC’s advice that the I-Codes would protect their citizens
better
than
would
the
jurisdictions’
trying
to
draft
complex technical codes from scratch.
That
respecting
many
ICC’s
jurisdictions
copyrights
sign
does
licensing
not
compel
agreements
a
different
result. ICC certainly retains its copyrights in its model
codes as model codes, and the Court will not construe state
or local adoption of the I-Codes to suggest otherwise. But
the licensing agreements reflect little about the extent to
which the referenced model codes have become part of laws
43
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 46 of 103
governing
the
public,
and
the
Court
will
similarly
not
construe the agreements as licenses for ICC to restrict
dissemination of those laws themselves. Even if the states
did intend otherwise, their intent could not
affect the
people’s right to freely share the laws that govern them.
Cf. PRO, 140 S.Ct. at 1510 n.3 (noting that “inference from
state behavior proves too much” when state claims regarding
copyright protection are clearly contrary to the Government
Edicts
doctrine).
To
the
extent
that
ICC’s
codes
have
actually “become the law,” concerns related to the Takings
Clause do not materially alter the analysis here.12
b. The Supremacy Clause
The next constitutional concern raised by ICC involves
the Supremacy Clause. “The Constitution’s Supremacy Clause
may
compel
invalidation
of
state
law
in
several
ways:
First, Congress may in express terms declare its intention
to preclude state regulation in a given area . . . Second,
in the absence of an express declaration, preemption may be
implied when the federal law is sufficiently comprehensive
12
Of course, whether the model codes referenced in the enacted laws
have actually become the law remains a separate question. The Court
also takes no position on whether ICC might have a valid Takings Clause
claim against jurisdictions that did not license use of its content.
(See Declaration of Mark Johnson in support of ICC Reply (“Johnson
Reply Decl.”), Dkt. No. 98-1, ¶¶ 2–3.) Because ICC actively encourages
full government enactment of its codes generally, like SBCCI in Veeck,
the Court is not persuaded that the limited possibility of a taking
alone compels a holding that a private party may restrict dissemination
of binding legal obligations.
44
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 47 of 103
to make reasonable the inference that Congress left no room
for supplementing state regulation. . . . Finally, state
law
may
be
preempted
to
the
extent
that
it
actually
conflicts with a valid federal statute.” Ass’n of Am. Med.
Colls. v. Cuomo, 928 F.2d 519, 522 (2d Cir. 1991) (internal
quotation
marks
omitted).
“The
third
type
of
state
law
preemption[,] . . . so-called conflict preemption, occurs
either
when
compliance
with
both
federal
and
state
regulations is a physical impossibility, . . . or where
state law stands as an obstacle to the accomplishment and
execution of the full purposes and objectives of Congress.”
Id. at 522–23 (internal quotation marks omitted).
ICC argues that if government adoption of a model code
prevents enforcement of copyright in the model code text
that was enacted, state action would effectively destroy a
federal right and thus violate the Supremacy Clause. The
BOCA court rejected essentially the same arguments, denying
that
state
or
local
adoption
of
enacted
building
codes
would present any preemption issues. It was not the case
“that
state
adoption
of
the
BOCA
Code
destroyed
BOCA’s
copyright by operation of state law, but rather that the
action triggered application of a doctrine of federal law
under which BOCA’s material, to the extent embodied in the
45
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 48 of 103
state regulation, lost its copyright protection and became
part of the public domain.” BOCA, 628 F.2d at 735. Because
federal law provides that documents in the public domain
are
not
subject
to
copyright,
state
adoptions
do
not
conflict with or present an obstacle to fulfillment of the
Copyright
Act’s
goals.
State
enactments
merely
change
a
factual circumstance that in turn governs the extent to
which ICC can enforce its copyrights as a matter of federal
law. Accordingly, the Court concludes that the Supremacy
Clause concerns raised by ICC do not significantly affect
its public domain analysis.
6.
Statutory Considerations
ICC next argues that state references to copyrighted
works cannot prevent it from enforcing its copyright as to
the I-Codes as Adopted because a contrary holding would
conflict with federal policy encouraging incorporation of
copyrighted works by reference. Specifically, the National
Technology
relevant
part
Management
agencies
while
and
to
Transfer
at
and
15
Budget
U.S.C.
Section
Circular
incorporate
nevertheless
Advancement
private
copyrights. (See Wise Decl. Exs. 2–3.)
46
272,
A-119
copyrighted
respecting
Act,
codified
and
Office
encourage
works
in
of
federal
by
reference
authors’
statutory
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 49 of 103
SBCCI argued much the same in Veeck. The Solicitor
General noted that 15 U.S.C. Section 272 was not probative
because federal agency action was not at issue, and “the
statute
in
any
event
does
not
address
the
legal
consequences of governmental adoption of a particular code
on the ability of members of the public to make copies.”
Solicitor General’s Brief at 17. The Court sees no reason
to conclude otherwise here.
Finally, ICC argues that 2014 guidance from the Office
of
the
Federal
Register
indicates
that
Veeck
was
incorrectly decided. (See “2014 OFR Guidance,” Wise Decl.
Ex. 64.) However, the 2014 OFR Guidance simply states “the
Veeck decision . . .
[has] not eliminated the availability
of copyright protection for privately developed codes and
standards
referenced
in
or
incorporated
into
federal
regulations. Therefore, we agreed with commenters who said
that
when
the
Federal
government
references
copyrighted
works, those works should not lose their copyright.” Id. at
66268.
Veeck imports that an SDO has no right to restrict
distribution
of
laws
incorporating
its
copyrighted
materials, but that does not mean the SDO has lost all
copyright
protection
in
the
47
underlying
model
code.
The
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 50 of 103
principle reflected in Veeck merely affects the terms on
which an SDO can enforce its copyright when free access to
the copyrighted work is needed to have knowledge of the law
adopting it. The 2014 OFR Guidance does not contradict this
proposition;
in
should
with
work
copyrighted
fact,
SDOs
works,
obligation
and
it
to
such
not
suggests
the
ensure
that
that
federal
public
the
standard
“text
as
agencies
access
of
the
such”
to
the
legal
would
be
available. See id. at 66274. In any event, the 2014 OFR
Guidance again expresses views from a federal regulatory
context with no direct relevance to this matter or binding
effect
upon
appeals
to
this
Court.
copyright
In
this
policy
are
respect,
better
ICC’s
broad
addressed
to
Congress than the courts. See PRO, 140 S.Ct. at 1511.
7.
Analysis
The Court has taken pains to address the many cases
and statutes cited by the parties with respect to the ICodes
as
Adopted.
Despite
the
apparent
contradictions
discussed at length above, the principles that guide the
Court’s analysis seem relatively clear. The law is in the
public domain, and the public must be afforded free access
to it. See PRO, 140 S.Ct. at 1507. That a law references a
privately-authored, copyrighted work does not necessarily
48
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 51 of 103
make that work “the law,” such that the public needs free
access
to
the
work.
privately-authored
CCC,
work
44
F.3d
may
at
“become
74.
However,
the
law”
a
upon
substantial government adoption in limited circumstances,
based on considerations including (1) whether the private
author intended or encouraged the work’s adoption into law;
(2)
whether
conduct,
the
such
work
that
comprehensively
it
resembles
a
governs
“law
of
public
general
applicability”; (3) whether the work expressly regulates a
broad
area
provides
of
private
penalties
contents;
and
published
and
(5)
or
endeavor;
(4)
for
sanctions
whether
identified
the
the
whether
violation
alleged
work
as
part
the
work
of
its
infringer
has
of
the
law,
rather than the copyrighted material underlying the law.
See
generally
BOCA, 628 F.2d 730;
Veeck, 293 F.3d 791;
Solicitor General’s Brief at 11. These considerations may
not
all
be
guideposts
strictly
to
assess
necessary
whether
or
exhaustive,
notice
of
the
but
are
purported
copyrighted work is needed for a person to have notice of
“the law,” such that due process concerns would effectively
categorically
outweigh
the
private
author’s
need
for
economic incentives. See Suffolk, 261 F.3d at 194. Where
considerations such as these predominate, the text of model
49
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 52 of 103
codes
that
has
been
adopted
enters
the
public
domain,
though SDOs may still sue for infringement if a defendant
copies their model codes as model codes or indiscriminately
mingles
the
enacted
portions
of
the
model
codes
with
portions not so enacted.
a.
Under
ICC’s Motion
the
standard
articulated
above,
ICC
cannot
successfully sue for copyright infringement based only on
accurate copying of the I-Codes as Adopted. As to the first
of the five enumerated considerations above, there can be
no
genuine
dispute
that
ICC
intends
and
encourages
the
adoption of its model codes into law; even if adoption into
law is not the sole reason ICC produces the I-Codes, it is
clearly one of the most significant reasons, if not the
most
significant
reason,
that
ICC
does
so.
(See,
e.g.,
Defs. Resp. ¶ 25; Gratz Opp. Decl. Ex. 19 at 123:11-15; id.
Ex. 24 at 90:13-18; id. Ex. 12 at 68:18-23, 107:13-16.) In
particular, the very first exhibit attached in support of
ICC’s Motion emphasizes ICC’s intent that the I-Codes serve
to lessen the burdens of government through adoption of the
codes into binding regulations. (See Johnson Decl. Ex. 1 at
ICC00082961, -2970.) That ICC prefaces its model codes with
sample legislation and ordinances for their adoption into
50
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 53 of 103
law further underscores the particular significance of the
practice to ICC. (See Defs. SUMF ¶ 24; Gratz Decl. Ex. 1.
at
ICC00008325;
ICC
SDF
¶
24;
Gratz
Opp.
Decl.
Ex.
18
(reflecting sample legislation and ordinance language for
the IBC 2015 and IMC 2009).)
It
is
not
strictly
clear
from
the
record
that
considerations two through four, regarding the broad legal
effect of the model codes, apply to all fifteen of the
substantive ICC codes at issue here. In their briefing, the
parties have (understandably) largely treated the specified
standards as interchangeable. However, both BOCA and Veeck
as well as the codes evident in the record strongly suggest
ICC’s
codes
carry
just
as
much
legal
force
as
its
predecessors’ did. As noted above, Veeck concerned model
codes that appear to be analogous to the IBC, IFC, IPC,
IMC, and IFGC. See supra Section II.C.2. And the IBC 2015
itself notes that “[t]he building code is intended to be
adopted as a legally enforceable document and it cannot be
effective
without
administration
and
adequate
enforcement.”
provisions
for
(Gratz
Ex.
Decl.
its
1
at
ICC00008316.) It has numerous regulatory provisions, such
as
a
chapter
dedicated
to
special
inspections
and
an
appendix dedicated to creating a board of appeals. (See id.
51
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 54 of 103
at -8320, -8323.) The record suggests that all of the ICodes
contain
provisions
also
not
only
regarding
thorough
technical
their
reference
specific
administrative
or
subject
provisions
valuation
matter,
that
but
create
regulatory schemes broadly governing the responsibilities
of the officials in charge and the regulated entities. (See
Wise Decl. Ex. 15.) However, the Court recognizes that the
record may not be altogether clear on this point; if any of
the
underlying
substantive
codes
do
not
contain
administrative provisions or otherwise mirror regulation in
ways that track considerations two through four above, ICC
remains free to bring these distinctions to the Court’s
attention at a later point.13
As to the last of the five enumerated considerations,
Defendants have not simply identified the model codes as
the
enacted
laws
of
the
jurisdictions.
Even
on
Current
UpCodes, Defendants note that the enacted laws adopt the ICodes with or without amendments, and UpCodes still has a
“general codes” page that identifies which jurisdictions
have adopted the model codes, with or without amendments.
13
The Court also notes that some of the I-Codes may not have become law
if they were referenced only in small part, rather than adopted at
large. (See, e.g., Jarosz Report at ¶ 73 (noting that OSHA regulations
incorporate an IFC provision on means of egress only as an alternative
to compliance with other OSHA standards).) While the record suggests
that each of the I-Codes was adopted to a much greater extent, the
Court again remains open to clarification from ICC if that is not so.
52
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While it would likely be inappropriate for a user to post
the model codes without any indication that they have been
adopted into law, the Court is not persuaded that it would
be improper to identify in such posting both an enacted law
and where that law derived from. Whether a state or local
jurisdiction has referenced a private work is a matter of
fact, and is not equivalent to posting the private work
itself.
It
is
admittedly
troubling
that
when
Defendants
post a state code that adopts an I-Code without amendment,
they are effectively signaling to users that the enacted
law reproduces the model code text in full. To the extent
Defendants
have
posted
model
codes
as
model
codes
or
indiscriminately mingled enacted text with unadopted model
text,
a
reasonable
jury
might
consider
whether
this
practice would support a finding of willful infringement,
particularly
considering
that
Historic
UpCodes
also
hid
state and local amendments to the I-Codes behind a paywall.
But the Court sees no basis for a holding that a member of
the public cannot post enacted laws and state the simple
fact that those laws are derived from the I-Codes.14
14
In a related vein, ICC notes that a number of codes on UpCodes are
identified as being adopted (without amendment) only by the town of
South Holland, Illinois. (See ICC SUMF ¶ 129; Wise Decl. Ex. 58.) This
observation does not change the Court’s analysis, however. The town of
South Holland comprises a government no less than the towns of Anna and
53
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 56 of 103
Finally, the Court is not persuaded that ICC’s need
for
economic
incentives
can
outweigh
the
due
process
concerns at issue here, especially knowing that ICC will
not
stop
contrary
producing
holding.
considering
its
model
(See
ICC
similar
predecessors,
both
codes
Reply
incentives
the
Veeck
in
the
11–12.)
arguments
and
BOCA
event
of
Even
after
from
courts
a
ICC’s
strongly
suggested that the SDOs could not enforce their copyrights
to
prevent
matter
copying
of
law.
comprehensive
of
As
the
model
noted
regulatory
codes
above,
nature
of
as
the
the
enacted
extensive
I-Codes
as
a
and
heavily
implicates the due process concern that the public must
know of legally binding obligations that may subject its
members
to
significant
administrative
or
criminal
sanctions.
The Court thus concludes that if Defendants are liable
for copyright infringement, it will not be for accurate
copying of the I-Codes as Adopted. ICC’s development of
such thorough regulatory codes is useful and beneficial to
the public. But the codes set forth broad and comprehensive
regulatory
frameworks
that
may
subject
members
of
the
public to adverse action upon substantial adoption into law
Savoy, and the codes it adopts appear to apply to its citizens with all
the legal force as did those of Anna and Savoy.
54
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 57 of 103
by the governments that ICC encourages. Upon enactment, it
is clear that the I-Codes as Adopted function as laws to
which the public needs free access. Within this narrow band
of substantial adoption by state and local governments, ICC
cannot exercise its copyrights in the I-Codes to prevent
dissemination of the I-Codes as Adopted.
The Court recognizes that ICC merits incentives in the
abstract,
concerns
and
ICC
raises
regarding
how
several
a
rule
potentially
that
it
legitimate
cannot
enforce
copyrights in the I-Codes as Adopted might affect its code
development process or which codes it prioritizes. But it
falls to Congress rather than the courts to vindicate any
interests
ICC
may
have
with
respect
to
the
I-Codes
as
Adopted. Cf. PRO, 140 S.Ct. at 1511 (dismissing as a matter
of
law
Georgia’s
arguments
that
it
needed
copyright
protection in annotations to induce LexisNexis to prepare
affordable annotated codes for widespread distribution).
The Court reiterates that ICC retains its copyright in
the
I-Codes
constitute
and
the
related
law.
If
derivative
Defendants
works
have
that
do
infringed
not
ICC’s
copyrights in the I-Codes, it must be either because they
posted
the
model
indiscriminately
codes
mingled
as
model
enacted
55
codes
portions
or
of
otherwise
the
model
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 58 of 103
codes with portions not adopted. As noted below in Section
II.C.7.b.,
erroneous
text.
this
happenstance
intermingling
Beyond
Defendants
those
have
of
be
the
case
code
model
errors,
actually
may
text
with
though,
infringed
as
to
enacted
analyzing
whether
I-Codes
requires
the
consideration of the legal doctrines of merger and fair
use.
b.
The
Defendants’ Motion
preceding
test
largely
tracks
Defendants’
position, and they would be entitled to partial summary
judgment if Current UpCodes actually posts only text of the
law.
ICC
disputes
this
proposition
through
various
arguments. One contention raised by ICC is that Defendants’
posting of the law is underinclusive, because they do not
post
other
statutory
provisions
that
might
affect
the
enacted model code text. As an example, ICC notes that the
building
laws
of
South
Holland,
Illinois
include
many
divisions besides the IBC 2012, but Defendants nevertheless
identify
the
IBC
2012
as
the
Building
Code
of
South
Holland. (ICC SDF ¶ 1; ICC Supp SUMF ¶ 39; Wise Opp. Decl.
Ex.
U.)
In
a
similar
vein,
ICC
and
Defendants
dispute
whether UpCodes should display definitional statutes that
apply to the model codes adopted by Wyoming or integrate
56
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 59 of 103
those definitions into the code text, as well as disputing
how
other
statutes
that
reference
or
interact
with
the
adopted code provisions should be displayed (ICC Supp. SUMF
¶¶ 16-23; Defs. Supp. Resp. ¶¶ 16-23.)
ICC argues too much here. As Defendants point out,
South
Holland’s
enacting
ordinance
states
that
“the
International Building Code (2012) be and is hereby adopted
as the building code of the Village of South Holland in the
State of Illinois.” (Defs. Supp. Resp. 39; Wise Opp. Decl.
Ex. U.) While South Holland undoubtedly has other laws that
pertain to building safety, the Court cannot conclude that
Defendants’ description of the IBC 2012 as the building
code of South Holland was inaccurate when South Holland’s
ordinance states the same. The Veeck court did not fault
Veeck for identifying the SBCCI codes as the building codes
of Anna and Savoy, even though those towns may well also
have had other statutes and regulations governing the same
topic.
See
Solicitor
General’s
Brief,
Appendix
(City
of
Anna ordinance declaring the SBCCI code “hereby adopted by
reference as though . . . copied herein fully”). Similarly,
while the related Wyoming statute’s definition of “owner”
may impact interpretation of the model codes adopted by
Wyoming,
it
is
unclear
how
57
Defendants’
failure
to
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 60 of 103
explicitly identify the interplay between the two statutes
renders their posting of the adopted codes inaccurate.
While Defendants certainly must post a government’s
amendments to the I-Codes in order to accurately portray
the enacted law, saying that Current UpCodes does not post
“the
law”
because
it
does
not
include
additional
legal
material that may bear on the enacted model text’s full
meaning presents serious practical problems. Statutes and
regulations interact with each other in a variety of ways
without
explicitly
being
adopted
into
each
other.
If
posting other statutory provisions is necessary to make the
posting of one provision complete, understanding certain
highly regulated fields of private endeavor might require
posting significant swathes of the relevant title, if not
multiple titles. The Court is not persuaded that such an
inquiry
into
whether
a
completeness
particular
is
necessary
codification
carries
to
the
understand
force
of
law.15
The Court will nevertheless deny Defendants’ Motion at
this time. ICC has still raised genuine factual disputes
15
There are many possible examples demonstrating why a contrary rule
would be untenable. As one, no one can reasonably deny that Federal
Rule of Civil Procedure 12 sets forth “the law” regarding motions to
dismiss in federal court, even though Federal Rule of Civil Procedure
9(b), Congressional statutes, and judicial case law all provide
important qualifications regarding the application of that rule in
securities fraud cases.
58
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 61 of 103
suggesting
that
at
least
some
codes
posted
on
Current
UpCodes have “indiscriminately mingled” enacted text with
unadopted model text. For example, until the ICC Opposition
was filed, Current UpCodes displayed Appendices A and H to
the IFC 2015 as part of the Wyoming Fire Code even though
Wyoming adopted neither. (ICC Supp. SUMF ¶ 28; Wise Opp.
Decl. ¶¶ 20-21, Ex. Q; G. Reynolds Reply Decl. 3; Defs.
Supp. Resp. ¶ 28.) Current UpCodes similarly displayed the
full IRC 2015 as the law of Wyoming until notified in the
ICC Opposition, even though Wyoming incorporated that code
only “to the extent that the referenced provisions apply to
fire and life safety issues”. (ICC Supp. SUMF ¶¶ 28-32, 3435; Defs. Supp. Resp. ¶¶ 28-32, 34-35.) Wyoming also did
not
adopt
any
appendices
to
the
IBC
2015,
but
UpCodes
displayed eleven of those appendices as the Building Code
of Wyoming until it saw the ICC Opposition. (ICC Supp. SUMF
¶¶
36-38;
rather
Defs.
Supp.
surprising
Resp.
36-38.)
oversights,
such
Some
as
of
these
are
erroneously
indicating that the landlocked state adopted an appendix
focusing on tsunami-generated flood hazards. (ICC SDF ¶ 1;
ICC Supp. SUMF ¶¶ 37-38; Defs. Supp. Resp. ¶¶ 37-38.)
While Defendants corrected these issues when notified
by ICC (see G. Reynolds Reply Decl. ¶¶ 2–3, Exs. A, D), it
59
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 62 of 103
remains ambiguous whether UpCodes posts only the law. As
ICC states in its briefs, the current record provides the
Court
no
way
UpCodes,
to
which
potentially
is
can
Current
UpCodes
already
have
codes
establish
for
for
can
the
full
continually
erroneous
parties
Defendants
verify
a
contents
being
of
updated
in
any
event.
static
and
limited
future
Historic
demonstrate
consideration,
UpCodes,
with
it
Current
Unless
sufficient
the
version
much
is
with
as
unclear
clarity
of
they
how
that
what they actually post embodies only the law. Resolving
all factual ambiguities in favor of the non-movant, as the
Court must in this procedural posture, it is clear that
Defendants’ Motion must be denied at this time.16
D.
MERGER
Though
the
I-Codes
as
Adopted
are
in
the
public
domain, that fact does not end the inquiry in this case.
ICC claims that Historic UpCodes displayed the I-Codes as
16
The Court also rejects Defendants’ argument that the PRO decision
requires finding that the I-Code Redlines are in the public domain
because they “reflect[] the work of lawmakers just as much as the
enacted text of the law.” (Defendants’ Letter at 3.) Even so, the
redlines are not “the law.” While the Government Edicts doctrine does
expand the public domain beyond the law itself, it specifically effects
this expansion through an author-focused framing that does not directly
apply to the I-Code Redlines. While no one can own the law, the Court
is not persuaded that the PRO Court intended its reasoning regarding
legislative history to be extended to privately-created redlines
showing text that is not the law. See PRO, 140 S.Ct. at 1512–13. Rather
than imprudently hold to the contrary, the Court concludes that
Defendants’ copying of the I-Code Redlines must be assessed as a matter
of fair use.
60
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 63 of 103
model codes in full, including even their copyright pages.
Defendants also oppose ICC’s Motion as to this copying,
replying
that
they
also
identified
jurisdictions
that
adopted the model codes by reference, such that the text of
the model codes and the identified jurisdictions’ laws were
substantially identical (excepting minor differences such
as the copyright notices). (See Gratz Opp. Decl. Ex. 2.)
Defendants argue that because the law constitutes either a
fact or idea, their posting of the model codes under these
circumstances
is
merger.
Court
The
protected
by
the
ultimately
copyright
agrees
with
doctrine
of
Defendants’
framing of the law, and ambiguities in the factual record
again preclude summary judgment on ICC’s Motion. However,
these
ambiguities
similarly
prevent
the
Court
from
concluding that Defendants’ alleged copying of the I-Codes
as model codes is fully protected by merger with the law.
Section 102(b)of 17 U.S.C. provides that “[i]n no case
does
copyright
protection
.
.
.
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.” Instead, only the expression of the idea or fact is
protectable.
See
N.Y.
Mercantile
61
Exch.,
Inc.
v.
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 64 of 103
IntercontinentalExchange, Inc., 497 F.3d 109, 116 (2d Cir.
2007). “The fundamental copyright principle that only the
expression
of
an
idea
and
not
the
idea
itself
is
protectable . . . has produced a corollary maxim that even
expression is not protected in those instances where there
is only one or so few ways of expressing an idea that
protection
of
the
expression
would
effectively
accord
protection to the idea itself.” Kregos v. Associated Press,
937 F.2d 700, 705 (2d Cir. 1991) (citation omitted); see
also
CCC,
immunity
44
of
F.3d
at
ideas
68
from
(“[I]n
order
private
to
protect
ownership,
when
the
the
expression is essential to the statement of the idea, the
expression also will be unprotected, so as to insure free
public access to the discussion of the idea.”).
The Second Circuit considers this doctrine of merger
“in
determining
whether
actionable
infringement
has
occurred, rather than whether a copyright is valid . . .
[because
assessing]
infringement
will
merger
normally
in
the
provide
context
a
more
of
alleged
detailed
and
realistic basis for evaluating the claim that protection of
expression would inevitably accord protection to an idea.”
Kregos, 937 F.2d at 705. Because merger turns significantly
on a policy-based balance between enabling the progress of
62
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 65 of 103
science and the arts through the free use of ideas and the
reward
of
authors’
labors
through
protection
of
their
expression, it may be “withheld” when the ideas implicated
are
“of
the
soft
type
infused
with
taste
or
opinion,”
rather than being hard “building blocks of understanding.”
See
CCC,
44
F.3d
at
71–72.
Courts
accomplish
this
withholding of merger “by assigning to the idea a different
level of abstraction from the expression of it, so that the
merger doctrine would not apply and the copyright owner
would
not
lose
protection.”
Id.
at
71.
However,
“[s]urprisingly little has been said by courts or scholars
about how [to] determine the idea behind an expression.”
Med. Educ. Dev. Servs., Inc. v. Reed Elsevier Grp., PLC,
No. 05 Civ. 8665, 2008 WL 4449412, at *7 n.13 (S.D.N.Y.
Sept. 30, 2008).
The parties vigorously debate what information a court
may consider when determining the idea and expressions at
issue.
Defendants
assesses
rather
merger
than
argue
in
initial
the
that
because
context
of
the
Second
alleged
copyrightability,
the
Circuit
infringement
Court
should
consider the relevant facts and circumstances that apply at
the time of the alleged infringement. Defendants thus frame
their idea as the “laws” enacted by the governments that
63
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 66 of 103
adopted the I-Codes without amendment, which could not be
accurately expressed other than through the full model code
text that Defendants later posted on Historic UpCodes. ICC
disagrees, arguing that even if merger is assessed as an
affirmative defense in the context of infringement, a court
should
consider
expression
that
only
the
existed
idea
at
and
potential
the
time
of
the
forms
of
copyrighted
work’s initial fixation. ICC thus argues for the idea of a
model code, which undoubtedly could have been expressed in
many ways when conceived. For example, ICC and the NFPA
draft
competing
fire
codes
with
significantly
different
provisions. (See Wise Decl. Ex. 71, Dkt. No. 98-7.)
The Second Circuit has not explicitly addressed the
dispute raised by the parties regarding this point, adding
another
ambiguity
to
the
legal
analysis.
ICC
relies
on
Oracle Am., Inc. v. Google Inc., which held, in the context
of
software
code,
that
“the
district
court
erred
in
focusing its merger analysis on the options available to
[the defendant] at the time of copying.” 750 F.3d 1339,
1361
(Fed.
Cir.
2014).
The
Federal
Circuit
based
its
holding on the notion that “copyrightability and the scope
of protectable activity are to be evaluated at the time of
creation, not at the time of infringement” and that “[t]he
64
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 67 of 103
focus is, therefore, on the options that were available to
[the plaintiff] at the time it created the [copyrighted
work].” Id. Respectfully, the Court declines to rely on
Oracle
for
Circuit’s
framing
this
particular
proposition.
The
Federal
discussion is hard to reconcile with its own
of
the
Second
Circuit’s
standard.
Holding
that
merger doctrine requires focusing on the options available
at the time of copyrightability, rather than infringement,
runs counter to the Oracle court’s recognition that in the
Second
Circuit,
infringement,
“the
not
merger
doctrine
copyrightability.”
relates
Id.
at
to
1358
(describing holding of Kregos, 937 F.2d at 705).17
On
the
implicitly
contrary,
the
recognized
Second
that
Circuit
seems
circumstances
to
have
intervening
between a work’s initial fixation and the alleged copying
are
relevant
to
merger
analysis.
For
example,
in
the
context of computer programs, the Second Circuit cited with
approval a report by an organization called CONTU for the
17
As the Court understands the reasoning of ICC and Oracle, to say that
merger relates to infringement rather than copyrightability largely
means that merger is an affirmative defense. (See ICC Reply at 16–17.)
But if that defense can turn only on considerations that relate to the
time of initial copyrightability, rather than the time of the activity
that may expose a defendant to liability, it is hard to see how courts
are meaningfully considering merger “in the context of alleged
infringement” and under the rubric of substantial similarity. Kregos,
937 F.2d at 705. Far from providing courts with “a more detailed and
realistic basis for evaluating” defendants’ merger claims, see id.,
such reasoning requires courts to ignore potentially relevant evidence
from defendants while shifting a burden of proof to them.
65
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 68 of 103
proposition
that
“copyrighted
language
may
be
copied
without infringing when there is but a limited number of
ways
to
express
a
given
idea.
.
.
.
In
the
computer
context, this means that when specific instructions, even
though previously copyrighted, are the only and essential
means of accomplishing a given task, their later use by
another will not amount to infringement.” Computer Assocs.
Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 708 (2d Cir.
1992) (emphasis added). This recognition is not limited to
computer programs. The CONTU report cited by the Second
Circuit derived the quoted language from a Second Circuit
case acknowledging “the use of specific language in forms
and documents may be so essential to accomplish a desired
result
and
commercial
so
integrated
conception
with
that
the
the
use
of
proper
a
legal
standard
or
of
infringement is one which will protect as far as possible
the copyrighted language and yet allow free use of the
thought
beneath
the
language.”
Cont’l
Cas.
Co.
v.
Beardsley, 253 F.2d 702, 706 (2d Cir. 1958).
Accordingly, the Court concludes that, when assessing
Defendants’
whether
alleged
previously
infringement,
copyrighted
it
should
language
has
consider
become
essential to the expression of, or integrated with, a legal
66
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conception. At least in the Second Circuit, courts need not
ignore
changes
that
transpire
between
a
work’s
initial
creation and its alleged infringement, particularly because
the manner in which people use or rely on that work may
fundamentally change in the interval.
While not expressing binding Second Circuit precedent,
the most analogous case is yet again Veeck. The Veeck court
declared that the enacted building codes of Anna and Savoy
were “facts” for the purpose of copyright law, and that
they were “the unique, unalterable expression of the ‘idea’
that constitutes local law.” 293 F.3d at 801. Though the
model
codes
themselves
could
have
been
drafted
in
many
ways, after Anna and Savoy adopted those codes in full,
“Veeck could not express the enacted law in any other way.”
Id. at 802. Echoing its conclusions that the codes at issue
were in the public domain, the Veeck court stated that “in
continuing to write and publish model building codes, SBCCI
is creating copyrightable works of authorship. When those
codes are enacted into law, however, they become to that
extent ‘the law’ of the governmental entities and may be
reproduced
or
distributed
as
jurisdictions.” Id.
67
‘the
law’
of
those
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 70 of 103
Second Circuit merger law and analogous out-of-circuit
precedent both demonstrate that this Court should consider
the circumstances that prevailed at the time of Defendants’
alleged
infringement.
Bearing
this
in
mind,
Defendants’
claim that the text of the I-Codes may have merged with the
idea or fact of laws that adopted those I-Codes without
amendment carries substantial force. Even though the model
codes themselves have not become the law, one would need to
use those model codes’ precise language to express laws
that had adopted the codes by reference in their entirety.
Just as accurately identifying a fully-adopted model code
as the enacted law amounts to posting that law, which is in
the
public
domain,
copying
a
model
code
that
has
been
adopted in full would be protected by merger if done for
the purpose of expressing the identically-worded law. If
the record reflects that Defendants meant only to express
the idea of those laws, then Defendants would not be liable
for posting identical model codes.
As ICC might rightfully point out, Defendants did not
post the identical text of enacted laws because the model
codes
on
Historic
UpCodes
had
copyright
pages.
However,
copying the copyright pages is best considered de minimis
under
the
circumstances.
See
68
Warner
Bros.
Inc.
v.
Am.
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 71 of 103
Broad.
Cos., 720
F.2d
that de minimis rule
231,
permits
242
“the
(2d
Cir.1983) (noting
literal
copying
of
a
small and usually insignificant portion of the plaintiff’s
work”). The copyright notices are protected material, but
they form such a small part of the overall codes that they
cannot be considered significant in isolation. See Newton
v. Penguin/Berkley Pub. USA, No. 13 Civ. 1283,
2014 WL
505191, at *2 (S.D.N.Y. Jan. 28, 2014) (applying de minimis
rule
where
defendants
copied
only
“a
tiny
fraction
of
Plaintiff’s work . . . so trivial as to fall below the
quantitative
(internal
threshold
quotation
of
marks
substantial
omitted).
18
similarity”)
Rather
than
find
liability based on such minimal copying alone, this Court
would instead conclude that copying of the copyright pages
does
“not
warrant
a finding
of
infringement
given
their
relative contribution to the overall” work. Altai, 982 F.2d
at
714–15.
Kregos.
Nor
Unlike
would
soft
the
Court
expression
withhold
infused
merger
with
under
taste
and
opinion, model regulations that mirror enacted laws more
18
The Court recognizes the apparent irony of holding that virtually
identical works are not “substantially similar” in the merger context.
Though the dissent in Kregos highlighted this very tension, Nimmer
notes that the term “substantial similarity” should be understood to
connote “a legal conclusion that enough copying has taken place to
warrant finding infringement.” 4 Nimmer on Copyright § 13.03.
69
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 72 of 103
closely
resemble
the
“building
blocks
of
understanding”
that merit application of the doctrine.19
The Court’s legal analysis largely tracks Defendants’
position, and ICC’s Motion must be denied on this score for
reasons explained further below. But the Court notes here
that
Defendants’
merger
defense
is
not
necessarily
altogether meritorious on the facts of this case, either.
The current record is ambiguous as to whether Defendants
were expressing the idea of enacted laws, rather than the
model
codes
UpCodes
as
where
such.
There
Defendants
are
appear
some
to
pages
have
on
Historic
posted
model
building codes without mentioning adopting jurisdictions.
(See Wise Decl. Ex. 15.) On still other pages, the model
code
is
accompanied
by
a
section
listing
states
that
adopted the model code, but it is unclear whether those
states adopted the code without amendment (such that the
model code was the only way to express their laws, even if
not explicitly identified as such) or whether those states
amended the model codes (such that the model code text was
not the only way to express those laws). (See id.) That
19
The Court notes that because Current UpCodes also shows model code
headings struck-through in red when displaying enacted codes that amend
the model codes, Defendants do not exactly post “the law” in this
instance either. (See, e.g., Gratz Opp. Decl. Ex. 5). However, the
Court would similarly hold that this degree of copying is de minimis,
bearing in mind the headings’ minimal contribution to the overall model
codes and the many considerations listed in Section II.C.
70
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 73 of 103
Defendants
made
government
amendments
to
the
I-codes
available only to paying users may also cut against the
notion that they meant only to express the law.
Because
the
issue
of
merger
arises
primarily
as
a
defense in the context of ICC’s Motion, these ambiguities
in the record must be resolved in Defendants’ favor as the
non-movants.
largely
As
noted
treated
interchangeable,
ambiguities
elsewhere
the
above,
forty
perhaps
the
codes
because
in this case. They
of
parties
have
issue
as
at
the
various
legal
also may not have fully
specified the various ways that the I-Codes were displayed
on
UpCodes.
As
an
example,
ICC
alleged
that
Historic
UpCodes did not appear to show any states adopting the IZC
2012, IPSDC 2009, and IPSDC 2015. But Defendants replied in
their
briefs
Foristell,
that
Missouri
the
cities
adopted
of
the
Gainesville,
Texas
IPSDC
Cleveland,
2009;
and
Texas adopted the IPSDC 2015; and Alton, Texas and Rawlins,
Wyoming adopted the IZC 2012. (ICC SUMF ¶ 127; Defs. Resp.
¶
127.)
ICC’s
Similarly,
website
for
that
the
Defendants
IZC
2015
redirected
may
suggest
users
that
to
they
intended to express only the law on UpCodes, even if their
methods of displaying the law were not particularly artful.
(See Wise Decl. Ex. 15.) Bearing in mind the ambiguities
71
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 74 of 103
pervading the record, the Court declines to conclude at
this time that Defendants were clearly not expressing the
idea of enacted laws. Accordingly, ICC’s Motion must be
denied as to the issue of merger.
E.
FAIR USE
Defendants further oppose ICC’s Motion by arguing that
their copying of the I-Code Redlines was a fair use, as was
copying of the I-Codes as Adopted (if not already in the
public domain). The Copyright Act provides that “the fair
use
of
a
copyrighted
criticism,
multiple
comment,
copies
research,
is
determining
work
news
for
not
whether
.
.
the
for
reporting,
classroom
an
.
teaching
use),
infringement
use
purposes
made
as
(including
scholarship,
or
copyright.
In
of
of
such
a
work
in
any
particular case is a fair use the factors to be considered
shall include -(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.”
72
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 75 of 103
17 U.S.C. § 107.
The purposes listed in the statute are
“illustrative
not
specified
and
are
limitative,”
similarly
not
and
the
exclusive
four
factors
of
other
considerations. Castle Rock Ent., Inc. v. Carol Pub. Grp.,
Inc., 150 F.3d 132, 141 (2d Cir. 1998). “The ultimate test
of fair use, therefore, is whether the copyright law’s goal
of ‘promot[ing] the Progress of Science and useful Arts,’
U.S. Const., art. I, § 8, cl. 8, ‘would be better served by
allowing the use than by preventing it.’” Id. (citing Arica
Inst., Inc. v. Palmer, 970 F.2d 1067, 1077 (2d Cir. 1992)).
“The task is not to be simplified with bright-line rules,
for the statute, like the doctrine it recognizes, calls for
case-by-case analysis.” Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569, 577 (1994).
The four enumerated fair use factors should not be
considered in isolation but “are to be explored, and the
results
weighed
copyright.”
Id.
together,
at
578.
in
light
However,
of
the
the
first
purposes
and
of
fourth
enumerated factors are generally more significant than the
second and third. Authors Guild v. Google, Inc., 804 F.3d
202, 213–14 (2d Cir. 2015). “The fact-driven nature of the
fair
use
determination
suggests
that
a
district
court
should be cautious in granting Rule 56 motions in this
73
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 76 of 103
area; however, it does not protect the copyright holder
from summary disposition of her claims where there are no
material factual disputes.” Wright v. Warner Books, Inc.,
953 F.2d 731, 735 (2d Cir. 1991).
Throughout
the
analysis
that
follows,
the
Court
considers not only the binding precedents of the Second
Circuit
and
Supreme
Court,
but
also
the
D.C.
Circuit’s
highly germane decision in American Society for Testing and
Materials v. Public.Resource.Org, Inc., 896 F.3d 437 (D.C.
Cir. 2018) (“ASTM”). Like Veeck and BOCA, the ASTM decision
provides
the
most
factually
analogous
guidance
in
the
context of fair use. Because the D.C. Circuit faced a wider
variety
of
standards
and
degrees
of
incorporation
by
reference than the model code cases, it declined to rule on
the parties’ public domain arguments and instead assessed
the governmental adoption of standards through the lens of
fair use.20
20
On this point, the D.C. Circuit stated that “[a]lthough PRO raises a
serious constitutional concern with permitting private ownership of
standards essential to understanding legal obligations, we think it
best at this juncture to address only the statutory fair use issue -which may provide a full defense to some, if not all, of the SDO’s
infringement claims in this case -- and leave for another day the
question of whether the Constitution permits copyright to persist in
works incorporated by reference into law. . . . [I]t is one thing to
declare that ‘the law’ cannot be copyrighted but wholly another to
determine whether any one of these incorporated standards . . .
actually constitutes ‘the law.’” ASTM, 896 F.3d at 447.
74
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 77 of 103
Though
the
Court
holds
that
Defendants’
accurate
posting of the I-Codes as Adopted is protected as a matter
of public domain law, the Court would also reach the same
result under the rubric of fair use. The analysis suggested
by
the
D.C.
Circuit
tracks
this
Court’s
public
domain
analysis relatively closely and is consistent with binding
Second Circuit precedent regarding fair use. Indeed, the
D.C. Circuit suggested there is “reason to believe ‘as a
matter of law’” that copying standards like the I-Codes as
Adopted would be fair use when intended to educate the
public regarding the law. See id. at 448. In particular,
the
court
observed
that
“[o]ne
way
in
which
the
incorporated standards vary is how readily they resemble
ordinary, binding law. At one end of this spectrum lie
incorporated standards that define one’s legal obligations
just
as
much
as,
say,
a
local
building
code
--
except
that the specific legal requirements are found outside the
two covers of the codebook. . . . At the other end of the
spectrum lie standards that serve as mere references but
have
no
direct
legal
effect
on
any
private
party’s
conduct.” Id. at 442–43 (emphasis added). In concurrence,
Judge Katsas specifically cited Veeck and BOCA as good law
and
stated
that
he
joined
the
75
D.C.
Circuit’s
opinion
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 78 of 103
because it “puts a heavy thumb on the scale in favor of an
unrestrained ability to say what the law is. Thus, when an
incorporated standard sets forth binding legal obligations,
and
when
the
defendant
does
no
more
and
no
less
than
disseminate an exact copy of it, three of the four relevant
factors -- purpose and character of the use, nature of the
copyrighted
work,
and
amount
and
substantiality
of
the
copying -- are said to weigh ‘heavily’ or ‘strongly’ in
favor of fair use.” Id. at 458–59 (Katsas, J., concurring).
Here, the Court likewise concludes that if Defendants’
accurate posting of the I-Codes as Adopted was not already
covered by the law of the public domain, it would be a fair
use as a matter of law. The Court nevertheless addresses
the
I-Codes
as
Adopted
in
the
following
four-factor
analysis in order to fully set forth the reasons for its
conclusion. The Court also analyzes, not to be forgotten,
the I-Code Redlines. Unlike its ruling relating to the ICodes as Adopted, the Court does not hold that copying of
the I-Code Redlines was a fair use as a matter of law.
Nevertheless, because the parties raise genuine disputes of
76
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 79 of 103
material facts with respect to the I-Code Redlines, the
Court must deny ICC’s Motion on this ground as well.21
1.
First Factor: Purpose and Use
The
first
fair
use
factor
is
“the
purpose
and
character of the use, including whether such use is of a
commercial
nature
purposes.” 17
commercial
or
U.S.C.
is
§
motivation
for
107(1).
rarely
nonprofit
The
educational
“mere
pushes
the
fact
first
of
a
factor
determination against fair use,” Capital Records, LLC v.
ReDigi Inc., 910 F.3d 649, 661 (2d Cir. 2018), as even the
illustrative uses in the statutory preamble are “generally
conducted for profit.” Campbell, 510 U.S. at 584. Rather
than
turning
on
commerciality,
“this
factor
favors
secondary uses that are transformative, meaning that the
use
‘adds
different
something
new,
character,
expression,
meaning,
with
altering
or
a
further
the
message[,]’
first
rather
purpose
with
than
or
new
merely
superseding the original work.” ReDigi, 910 F.3d at 660
(quoting
Campbell,
510
U.S.
at
579);
see
also
Authors
Guild, Inc. v. HathiTrust, 755 F.3d 87, 96 (2d Cir. 2014)
21
To avoid confusion, the Court notes that it does not understand the
I-Codes as Adopted to include Defendants’ copying on the premium
portion of Historic UpCodes, even if Defendants might argue such
copying was of “the law.” Because those instances of copying clearly
included portions of unadopted model code text in a redline format, the
Court treats them as instances of the I-Code Redlines.
77
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 80 of 103
(“[A] transformative work is one that serves a new and
different function from the original work and is not a
substitute for it.”). Though it is not strictly necessary
for
a
fair
use
transformative
to
be
transformative,
the
new
work,
the
less
“the
will
more
be
the
significance of other factors, like commercialism, that may
weigh against a finding of fair use.” Campbell, 510 U.S. at
579. Similarly, where a work is not transformative, the
commercial nature of an allegedly infringing use takes on
greater significance. TCA Television Corp. v. McCollum, 839
F.3d 168, 183 (2d Cir. 2016).
Defendants
claim
that
they
posted
the
I-Codes
as
Adopted and I-Code Redlines for the purpose of educating
the AEC community and public at large about their legal
obligations. (See
Defendants’ Memo at 35–39; Defendants’
Opposition at 27–28.) As an initial matter, this alleged
purpose
seems
articulated
scholarship,
in
consistent
the
and
legal
obligations
Copyright
research.
purpose of educating
with
Act,
Posting
members of
may
be
illustrative
including
enacted
laws
purposes
teaching,
for
the
the public as to their
transformative,
even
if
the
enacted laws are identical to other copyrighted works. See
ASTM,
896
F.3d
at
450
(suggesting
78
that
“in
certain
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 81 of 103
circumstances, distributing copies of the law for purposes
of
facilitating
public
access
could
constitute
transformative use”); A.V. ex rel. Vanderhye v. iParadigms,
LLC, 562 F.3d 630, 639 (4th Cir. 2009) (noting allegedly
infringing
uses
“can
be
transformative
in
function
or
purpose without altering or actually adding to the original
work”); see also Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg
L.P., 756 F.3d 73, 84 (2d Cir. 2014) (citing Vanderhye for
same proposition).
A commercial actor’s dissemination of information to
the public may be a transformative use. This was the case
in Swatch, where Bloomberg L.P. shared an audio recording
of a private Swatch earnings call in order to provide the
public with material financial information it would have
otherwise not known, and which audio recording Swatch would
not
otherwise
have
shared
or
had
a
market
for.
See
generally Swatch, 756 F.3d 73. The Second Circuit found
this
use
different
transformative
from
because
Swatch’s;
Bloomberg’s
whereas
Swatch
purpose
was
provided
the
information as something the listeners on the private call
should
believe,
Bloomberg
provided
the
same
information
more broadly so the public knew what Swatch said. Id. at
84–85.
79
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 82 of 103
The
ASTM
factually
court
analogous
incorporated
also
provided
situation,
standard
guidance
stating
provides
in
that
the
most
an
essential
information
“[w]here
to
comprehending one’s legal duties . . . this factor would
weigh heavily in favor of permitting a nonprofit seeking to
inform the public about the law to reproduce in full the
relevant portions of that particular standard.” 896 F.3d at
450. While the D.C. Circuit emphasized that this analysis
may vary from standard to standard, the court framed model
codes
as
one
end
of
a
spectrum
where
the
standards
themselves define legal obligations (as noted above). See
id. at 442–43, 450–51.
Based
that
on
posting
the
above
precedents,
the
I-Codes
as
the
Adopted
Court
clearly
concludes
serves
a
transformative purpose: specifically, the dissemination of
enacted laws for public awareness. The underlying I-Codes
drafted by ICC primarily serve the purpose of model codes,
providing recommendations on the standards that governments
should
adopt
environments.
actual
to
By
regulations
improve
and
contrast,
the
binding
the
safeguard
I-Codes
public
as
and
their
built
Adopted
are
governing
its
conduct. Because Current UpCodes provides the I-Codes as
Adopted to the general public for free, it clearly does so
80
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 83 of 103
with a purpose different from that which ICC has when it
creates and distributes the model I-Codes.
Whether
the
I-Code
Redlines
serve
a
transformative
purpose is a closer call. Like the I-Codes as Adopted,
Defendants claim these redlines help members of the public
to better understand their legal obligations. In a sense,
the I-Code Redlines are like legislative history showing
what the state and local jurisdictions explicitly decided
to add or delete when adopting the model codes. At least in
the abstract, there is some force to the argument that it
is transformative to share materials that help understand
the
law,
constitute
even
the
if
those
law.
For
materials
themselves
example,
the
do
Supreme
not
Court
emphasized in PRO that describing the Georgia state code’s
annotations
as
“non-binding
and
non-authoritative
.
.
.
undersells their practical significance.” See 140 S.Ct. at
1512. It observed that the annotations would inform readers
that
certain
statutory
obligations
were
in
fact
unenforceable relics, and it also expressed concern that a
state
might
try
to
“monetize
its
entire
suite
of
concerns
do
not
legislative history.” See id. at 1512–13.
However,
the
Supreme
Court’s
necessarily militate in favor of finding use of the I-Code
81
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 84 of 103
Redlines is transformative as a matter of law. After all,
the
Supreme
Court’s
rule
applies
to
works
authored
by
judges and legislatures rather than private authors. And
the
information
in
the
I-Code
Redlines
may
be
less
probative than legislative history or Lexis annotations,
depending on the particular codes and provisions at issue.
As ICC points out, knowing that Wyoming did not adopt an
appendix on tsunami-generated flood hazards probably does
not help Wyoming residents comprehend their legal duties.
Finally,
that
Defendants
made
the
redlines
on
Historic
UpCodes available only to paying customers may partially
offset any transformative nature of the use, though Supreme
Court precedent makes clear that the commercial quality of
a use alone should not outweigh convincing transformative
qualities. See Authors Guild, 804 F.3d at 219. In short,
the Court cannot find that posting of the I-Code Redlines
constituted a fair use or was not based on the first factor
alone.
2.
“The
Second Factor: Nature of the Work
second
copyrighted
recognition
intended
statutory
work,’ 17
that
some
copyright
factor,
U.S.C.
works
are
protection
82
§
‘the
nature
107(2),
closer
than
to
of
‘calls
the
others,
core
with
the
for
of
the
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 85 of 103
consequence that fair use is more difficult to establish
when the former works are copied.’” Castle Rock, 150 F.3d
at 143 (quoting Campbell, 510 U.S. at 586). This factor
tends to favor findings of fair use for factual works,
which
are
further
from
the
core
of
intended
copyright
protection than fictional ones. Am. Geophysical Union v.
Texaco, Inc., 60 F.3d 913, 925 (2d Cir. 1994). But “courts
have hardly ever found that the second factor in isolation
played a large role in explaining a fair use decision,” and
the
second
factor
is
best
assessed
in
tandem
with
the
first. Authors Guild, 804 F.3d at 220.
The
ASTM
court
stated
that
standards
“fall
at
the
factual end of the fact-fiction spectrum, which counsels in
favor of finding fair use.” 896 F.3d at 451. “[B]ecause the
express text of the law falls plainly outside the realm of
copyright
protection
reference
into
law
.
.
are,
at
.
standards
best,
at
incorporated
the
outer
edge
by
of
copyright’s protective purposes.” Id. (internal quotation
marks
omitted).
must
be
summarized
After
considered
that
emphasizing
that
this
standard-by-standard,
“[w]here
the
consequence
proposition
the
of
court
the
incorporation by reference is virtually indistinguishable
from a situation in which the standard had been expressly
83
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 86 of 103
copied into law, this factor weighs heavily in favor of
fair use. But where the incorporation does not lend to such
easy substitution, fair use is harder to justify.” Id. at
452.
The nature of model building codes plainly puts them
at the periphery of copyright protection rather than its
core. Bearing in mind that the “express text of the law”
falls plainly outside the realm of copyright protection,
the Court readily concludes that the second factor heavily
favors a finding of fair use as to the I-Codes as Adopted.
And though the I-Code Redlines feature model code text that
was not incorporated into law, that text is nevertheless
factual rather than fictional. Though the second fair use
factor proves little in isolation, it weighs in favor of
finding Defendants’ copying is a fair use.
3.
“The
Third Factor: Amount and Substantiality
third
factor
asks
whether
the
secondary
use
employs more of the copyrighted work than is necessary, and
whether the copying was excessive in relation to any valid
purposes asserted under the first factor.” HathiTrust, 755
F.3d at 96. “The inquiry must focus upon whether ‘[t]he
extent of . . . copying’ is consistent with or more than
necessary
to
further
‘the
purpose
84
and
character
of
the
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 87 of 103
use.’” Castle Rock, 150 F.3d at 144 (quoting Campbell, 510
U.S. at 586–87).
“[A] finding of fair use is more likely
when small amounts, or less important passages, are copied
than when the copying is extensive, or encompasses the most
important parts of the original.” Authors Guild, 804 F.3d
at 221. The copying of entire works “does not preclude a
finding of fair use, [but] it militates against such a
finding.”
purposes,
Texaco,
it
60
may
F.3d
be
at
926.
necessary
However,
to
copy
“for
the
some
entire
copyrighted work, in which case Factor Three does not weigh
against a finding of fair use.” HathiTrust, 755 F.3d at 98.
“Complete
unchanged
justified
as
fair
copying
use
when
has
repeatedly
the
copying
was
been
found
reasonably
appropriate to achieve the copier’s transformative purpose
and was done in such a manner that it did not offer a
competing substitute for the original.” Authors Guild, 804
F.3d
at
221.
By
contrast,
“when
the
purpose
of
the
defendant’s use is precisely the same as that of third
parties who license the material from the plaintiff, the
question
of
whether
the
amount
used
was
reasonable
in
relation to the purpose of the copying must be answered in
the negative.” Sinclair v. Am. Media, Inc., No. 18 Civ.
85
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 88 of 103
823,
2018
WL
5258583,
at
*6
(S.D.N.Y.
Sept.
7,
2018)
(internal quotation marks omitted).
The ASTM court stated that where a defendant “limits
its copying to only what is required to fairly describe the
standard’s legal import, this factor would weigh strongly
in favor of finding fair use here, especially given that
precision is ten-tenths of the law.” 896 F.3d at 452. The
third fair use factor thus does not weigh against a finding
that accurate copying of the I-Codes as Adopted is a fair
use,
because
the
substantial
copying
of
the
I-Codes
is
nonetheless limited to exactly what is contained in the
enacted laws themselves.
But the third factor likely weighs against a finding
of
fair
use
Redlines.
In
literally
the
as
to
Defendants’
particular,
entirety
the
of
copying
I-Code
the
of
Redlines
I-Codes
the
I-Code
reproduced
underlying
the
enacted laws, including whole sections and appendices that
were not adopted (again, Wyoming’s choice not to adopt a
section on tsunami-related flood hazards is an example in
ICC’s favor). (See Gratz Opp. Decl. Ex. 3.) However, this
factor must be weighed against the transformative character
of the allegedly infringing use. Defendants’ copying would
obviously be excessive if posting the I-Code Redlines is
86
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 89 of 103
not transformative, or Defendants may have been able to
achieve their transformative goals with less than complete
reproduction
second
of
fair
unadopted
use
model
factor,
this
code
text.
factor
As
does
with
not
the
carry
dispositive weight in isolation.
4.
Fourth Factor: Effect of Use upon Market
The fourth fair use factor is “the effect of the use
upon the potential market for or value of the copyrighted
work.” 17 U.S.C. § 107(4). This factor “requires courts to
consider not only the extent of market harm caused by the
particular
actions
whether
unrestricted
engaged
in
of
by
the
the
and
alleged
infringer,
defendant
.
.
also
conduct
widespread
but
the
sort
.
would
of
result
in
a
substantially adverse impact on the potential market for
the
original.”
Campbell,
510
U.S.
at
590
(internal
quotation marks omitted). This analysis must also account
for the market for derivative works. Id. “The Factor Four
analysis is concerned with only one type of economic injury
to a copyright holder: the harm that results because the
secondary
use
serves
as
a
substitute
for
the
original
work.” HathiTrust, 755 F.3d at 99; see also Castle Rock,
150 F.3d at 145 (“In considering the fourth factor, our
concern is not whether the secondary use suppresses or even
87
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 90 of 103
destroys the market for the original work or its potential
derivatives,
but
whether
the
secondary
use
usurps
or
substitutes for the market of the original work.”).
“Factor Four is necessarily intertwined with Factor
One; the more the objective of secondary use differs from
that of the original, the less likely it will supplant the
commercial market for the original.” ReDigi, 910 F.3d at
662. However, “[e]ven if the purpose of the copying is for
a
valuably
transformative
purpose,
such
copying
might
nonetheless harm the value of the copyrighted original if
done in a manner that results in widespread revelation of
sufficiently
make
significant
available
a
portions
significantly
of
the
original
competing
as
to
substitute.”
Authors Guild, 804 F.3d at 223. Where an alleged infringer
effectively
competes
with
companies
that
license
the
plaintiff’s work, that may also tend against a finding of
fair use. See Associated Press v. Meltwater U.S. Holdings,
Inc., 931 F. Supp. 2d 537, 560–61 (S.D.N.Y. 2013).
The
ASTM
court
suggested
district
courts
consider
three questions under this factor. First, considering that
SDOs make their standards available for free in controlled
reading rooms without hurting sales of their standards, to
what
extent
does
the
allegedly
88
infringing
reproduction
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 91 of 103
cause any additional harm? Second, if the alleged infringer
reproduced only the portions of the standards that “became
law,” to what extent would that affect the markets for the
complete
standards?
infringement
affect
Third,
the
how,
market
if
at
for
all,
does
derivative
the
works,
particularly considering that the standards are regularly
updated and that the private parties most interested in the
standards would presumably remain interested in having the
most up-to-date ones? See ASTM 896 F.3d at 453. The ASTM
court
also
noted
that
ICC
remains
profitable
after
the
ruling in Veeck both through sales of the I-Codes and other
services such as consulting, certification, and training,
which
might
suggest
that
ICC’s
markets
remain
resilient
despite the copying allowed in Veeck. See id.
The Court notes that, unlike the other factors, the
fourth
fair
Defendants’
use
factor
copying
of
could
the
potentially
I-Codes
as
weigh
Adopted.
against
When
an
enacted law is identical to an I-Code and identified as
such on UpCodes, it is fair to say that it is an effective
substitute
for
the
model
code
itself.
The
parties
also
genuinely dispute the extent to which the enacted codes
could affect ICC’s market for derivative works including
training
and
certification.
89
Though
the
ASTM
court’s
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 92 of 103
observations regarding ICC and its controlled reading rooms
suggests the impact of posting the I-Codes as Adopted may
not
be
particularly
large,
the
record
does
not
clearly
answer how much harm UpCodes really does when it allows the
same
codes
downloaded,
to
be
and
printed,
whether
such
copied
use
and
actually
pasted,
affects
and
ICC’s
market for its derivative products. The Court recognizes
the potential for a dispute regarding the fourth fair use
factor, though it is skeptical that the dispute would be
material
given
the
combined
weight
of
the
other
three
factors and the many grounds counseling that the I-Codes as
Adopted are in the public domain regardless.
How the fourth factor affects the I-Code Redlines is
also unclear. In one respect, the I-Code Redlines appear to
have been competing substitutes for ICC’s derivative works,
as they were only available to paying customers of Historic
UpCodes and ICC also utilized its own version of redlining
on premiumACCESS. 22 (See Johnson Reply Decl. ¶ 4.) However,
there
is
little
clear
evidence
22
on
whether
the
I-Code
ICC also highlights the potential for UpCodes to serve as a
substitute for its works more generally. It notes a number of customer
testimonials on UpCodes indicating their satisfaction at having an
alternative to bound codebooks and controlled reading rooms that
prevent copying and downloading. (ICC Supp. SUMF ¶ 11; Defs. Supp.
Resp. ¶ 11.) ICC also notes several statements by Defendants indicating
they either view ICC or its online library licensees as competitors,
further complicating the Court’s ability to rule on the fourth factor
as a matter of law. (See, e.g., Wise Decl. Exs. 18–19.)
90
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 93 of 103
Redlines actually affected revenues for ICC’s derivative
works,
and
the
record
tends
to
focus
on
a
variety
of
derivative works that are not redlines, such as training
and certification documents, user’s guides, handbooks, and
code
commentary.
Whether
the
I-Code
Redlines
affect
the
markets for these apparently different products presents a
genuine dispute of material fact.
5.
On
Overall Analysis
balance,
the
Court
is
persuaded
that
accurate
posting of the I-Codes as Adopted is a fair use as a matter
of
law.
As
noted
above,
the
first
and
second
fair
use
factors together weigh heavily in Defendants’ favor. The ICodes as Adopted are clearly factual rather than fictional,
and Defendants posted the works in their capacity as laws,
rather than model codes. The purpose for which the I-Codes
as Adopted were copied, displayed, and distributed is thus
transformative.
such
copying
The
third
either,
as
factor
does
accurate
not
copying
weigh
would
against
entail
posting only “ten-tenths of the law.” ASTM, 896 F.3d at
452. Finally, the Court notes that the overall impact of
the fourth fair use factor is ambiguous. While there is
reason to doubt that holding the I-Codes as Adopted were
not infringed would seriously harm ICC, the manner in which
91
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 94 of 103
Defendants posted the I-Codes as Adopted might effectively
allow for substitution of the I-Codes.
Even so, the Court concludes that accurate copying of
the I-Codes as Adopted would be a fair use as a matter of
law in this context. No one factor is dispositive of the
fair use inquiry, and the ultimate inquiry remains whether
“promot[ing] the Progress of Science and useful Arts . . .
would
be
better
preventing
quotation
weight
served
it.” Castle
marks
of
and
the
by
allowing
Rock, 150
citation
first
F.3d
the
at
omitted).
three
factors
use
than
141
Given
and
by
(internal
the
the
clear
numerous
considerations detailed above in Section II.C., it is clear
that the potential harms to ICC’s markets for its works
cannot
outweigh
unfettered
the
access
to
benefits
and
enacted
necessity
laws.
These
of
enabling
considerations
necessitate a finding of fair use in the limited context of
accurate copying of the I-Codes as Adopted.
However, the Court cannot so conclude with regard to
the I-Code Redlines. While the second factor still favors a
finding
of
fair
use
given
the
redlines’
predominantly
factual quality, none of the other factors clearly favors
either ICC or Defendants. Whether the I-Code Redlines are
transformative
is
debatable;
92
while
there
is
an
argument
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 95 of 103
that
they
might
help
educate
members
of
the
public
regarding their legal obligations, the redlines are also
arguably
direct
substitutes
for
ICC’s
derivate
works.
Similarly, while the third factor need not weigh against
Defendants
if
use
of
the
I-Code
Redlines
is
truly
transformative, the significant copying of unadopted model
code
text
tends
to
cut
against
a
finding
of
fair
use.
Finally, the numerous factual disputes regarding how much
Defendants’ copying harms ICC’s markets for the I-Codes and
derivative
works
are
both
genuine
and
material
in
this
context. While the Court could confidently conclude that
copying of the I-Codes as Adopted is protected given the
strong implications of public domain law, the same cannot
be said of the I-Code Redlines. Again, the parties’ genuine
dispute regarding whether copying of the I-Code Redlines
was a fair use requires resolution in favor of the nonmovant. The Court must consequently deny ICC’s Motion for
this reason too.
F.
COLLATERAL ESTOPPEL
Defendants
finally
argue
that
the
doctrine
of
collateral estoppel should bar ICC’s suit and warrant a
declaratory judgment in Defendants’ favor because the Veeck
case
is
dispositive
of
Defendants’
93
claim.
Because
the
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 96 of 103
Court’s
public
domain
analysis
largely
tracks
that
of
Veeck, Defendants’ arguments regarding collateral estoppel
appear
to
be
largely
moot.
The
Court
will
nevertheless
address the argument now in order to obviate any potential
need
for
future
consideration.
That
the
Court’s
legal
analysis is similar to that of Veeck, however, is not the
same as holding that Veeck precludes consideration of ICC’s
claims here. The Court is not persuaded that collateral
estoppel should apply in this case.
“The fundamental notion of the doctrine of collateral
estoppel . . . is that an issue of law or fact actually
litigated and decided by a court of competent jurisdiction
in a prior action may not be relitigated in a subsequent
suit between the same parties or their privies.” Ali v.
Mukasey,
529
F.3d
478,
489
(2d
Cir.
2008)
(internal
quotation marks and emphasis omitted). Collateral estoppel
may apply where “(1) the identical issue was raised in a
previous proceeding; (2) the issue was actually litigated
and decided in the previous proceeding; (3) the part[ies]
had a full and fair opportunity to litigate the issue; and
(4) the resolution of the issue was necessary to support a
valid and final judgment on the merits.” Wyly v. Weiss, 697
F.3d
131,
141
(2d
Cir.
2012).
94
“These
four
factors
are
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 97 of 103
required
but
not
sufficient.
In
addition,
a
court
must
satisfy itself that application of the doctrine is fair.”
Bear, Stearns & Co. v. 1109580 Ontario, Inc., 409 F.3d 87,
91 (2d Cir. 2005). District courts have broad discretion to
determine when this doctrine should be applied. See Frydman
v. Akerman, 280 F. Supp. 3d 418, 423 (S.D.N.Y. 2017).
Defendants claim that ICC is SBCCI’s privy and that it
is
effectively
relitigating
the
same
issues
that
SBCCI
raised in Veeck. This argument is flawed in multiple ways.
First, ICC is not in privity with SBCCI in the specific
manner required for collateral estoppel to be appropriate.
In
the
context
of
collateral
estoppel,
privity
between
preceding and succeeding owners of property extends only to
the particular property that was the subject of the prior
adjudication. See Int’l Nutrition Co. v. Horphag Research,
Ltd., 220 F.3d 1325, 1329 (Fed. Cir. 2000) (“[W]hen one
party is a successor in interest to another with respect to
particular property, the parties are in privity only with
respect to an adjudication of rights in the property that
was
transferred;
purposes,
such
as
they
an
are
not
in
adjudication
privity
of
rights
for
other
in
other
property that was never transferred between the two.”); see
also Feldberg v. Quechee Lakes Corp., 196 F. App’x 38, 40
95
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 98 of 103
(2d
Cir.
2006)
(“[C]ertain
judgments
involving
real
or
personal property may bind non-party successors in interest
to
property involved in
the
action.”)
(emphasis
in
original).
Some model codes in this case derive from the model
codes at issue in Veeck, and Defendants highlight sections
with nearly identical language. (See Defendants’ Memo at
45–46; Gratz Decl. Exs. 1, 16.) But the model codes here
are distinct works as a matter of copyright, each with its
own separate registration. Defendants concede that each of
the forty I-Codes comprises a distinct copyrighted work.
Hence, similarities between those works and SBCCI’s do not
make them the same property. Because the model codes in
Veeck are not the same as the forty model codes at issue
here, many of which may not overlap with the Veeck codes at
all, Defendants have failed to show the privity between ICC
and SBCCI needed for collateral estoppel to apply.
Apart from privity, Veeck did not raise the identical
issue
presented
here.
“When
the
facts
essential
to
a
judgment are distinct in the two cases, the issues in the
second case cannot properly be said to be identical to
those
in
the
first,
and
collateral
estoppel
is
inapplicable.” Envtl. Def. v. EPA, 369 F.3d 193, 202 (2d
96
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 99 of 103
Cir. 2004). In Veeck, the en banc Fifth Circuit addressed
only the posting of model codes that were adopted verbatim
by local jurisdictions, which the plaintiff identified as
the
building
codes
of
those
specific
jurisdictions.
The
Fifth Circuit made clear that it was not addressing the
posting of model codes as model codes, or copying that
intermingled adopted code text with unadopted model code
text. By contrast, Defendants here may have intermingled
state code text with unenacted model code text to various
degrees, and they may have posted
the
I-Codes as model
codes rather than expressed substantially identical laws.
Because the facts of this case are significantly different
from those of Veeck and may compel a different result, the
issues raised are not identical. Even if they were, the
Court
concludes
that
application
of
collateral
estoppel
would not be fair under the circumstances.
G.
WILLFULNESS
Because
reasons
ICC’s
Motion
must
explained
above,
it
Defendants
Accordingly,
are
the
actually
Court
be
denied
is
not
liable
need
not
for
yet
for
address
the
clear
many
that
infringement.
ICC’s
remedy-
related requests for a permanent injunction and a finding
of
willfulness
that
might
entitle
97
ICC
to
heightened
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 100 of 103
statutory damages. Nevertheless, the Court addresses the
matter
of
willfulness
below
in
order
to
narrow
the
potential issues for subsequent motion practice (if any).
If a defendant has infringed a plaintiff’s copyright,
the
plaintiff
may
forego
actual
damages
in
favor
of
statutory damages under the Copyright Act. See 17 U.S.C. §
504(c). The amount of statutory damages a court may award
will
generally
range
from
$750
to
$30,000
per
work
infringed. See 17 U.S.C. § 504(c)(1). However, the upper
range of statutory damages may increase to $150,000 per
work if a defendant’s infringement was willful. 17 U.S.C. §
504(c)(2). “To prove ‘willfulness’ under the Copyright Act,
the plaintiff must show (1) that the defendant was actually
aware
of
the
infringing
activity,
or
(2)
that
the
defendant’s actions were the result of ‘reckless disregard’
for,
or
‘willful
rights.”
Microsoft
Island
blindness’
Software
Corp.,
413
F.3d
to,
&
the
copyright
Computer
257,
263
Serv.,
(2d
holder’s
Inc.
Cir.
v.
2005).
“Although courts are generally reluctant to dispose of a
case on summary judgment when mental state is at issue, it
is
permissible
undisputed
to
material
do
so
facts
where
on
98
the
there
record
are
to
sufficient
make
the
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 101 of 103
question
appropriate
for
summary
judgment.”
Lipton
v.
Nature Co., 71 F.3d 464, 472 (2d Cir. 1995).
ICC puts forth enough evidence to allow a reasonable
jury to find willfulness. Defendants undisputedly copied
the
I-Codes
multiple
without
statements
ICC’s
authorization,
suggesting
Defendants
and
ICC
knew
cites
doing
so
would displease ICC and possibly harm ICC’s business. (See
Wise Decl. Ex. 12 at 196:1-198:16; Wise Decl. Ex. 19; Wise
Decl.
Ex.
45
at
UPCODES00090698.)
ICC
also
argues
that
Defendants were at least reckless insofar as they posted
the I-Codes without seeking the advice of counsel. (ICC
SUMF ¶ 168; Wise Decl. Ex. 12 at 122:1-8.)
However,
reflecting
Defendants
the
have
existence
of
raised
a
contrary
genuine
arguments,
dispute
on
this
issue. Even though Defendants copied the I-Codes and may
have
known
nevertheless
doing
have
so
would
believed
displease
their
actions
ICC,
were
they
may
entirely
legal based on their understanding of the law. (Defs. Resp.
¶ 154; G. Reynolds Opp. Decl. ¶¶ 8, 11-14; S. Reynolds Opp.
Decl. ¶¶ 8–12.) Defendants also argue that they could not
afford to hire a lawyer because they used their savings to
start UpCodes.
They add that they
still
share a studio
apartment to cut their expenses and did not pay themselves
99
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 102 of 103
a salary until over a year after founding UpCodes. (Defs.
Resp. ¶ 168; G. Reynolds Opp. Decl. ¶¶ 6-7, 12, 15; S.
Reynolds Opp. Decl. ¶¶ 6-7, 10.) The record also contains
UpCodes talking points reflecting that Defendants at least
publicly represented that they believed their actions were
legal.
(See
Design,
Gratz
Inc.
v.
Opp.
PAJ,
2001) (“Willfulness
Decl.
Ex.
Inc., 262
in
this
4.)
F.3d
See
101,
context
also
112
Yurman
Cir.
that
means
(2d
the
defendant recklessly disregarded the possibility that its
conduct
represented
infringement.”)
(internal
quotation
marks omitted).
Here, conceivably a reasonable jury could find that
any infringement by Defendants was willful. “Still, it is
not
beyond
conclude
peradventure
otherwise.
And
that
that
a
is
reasonable
enough
to
jury
make
would
summary
judgment on the issue of willfulness inappropriate.” Island
Software,
413
F.3d
at
264.
Given
the
numerous
genuine
factual disputes presented throughout the record before the
Court, at this stage of the proceedings the Court cannot
find
purely
as
a
matter
of
law
that
Defendants may have committed was willful.
100
any
infringement
Case 1:17-cv-06261-VM-DCF Document 105 Filed 05/27/20 Page 103 of 103
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