Code Revision Commission et al v. Public.Resource.Org, Inc.

Filing 28

First MOTION for Leave to File An Amicus Curiae Brief in Support of Plaintiff with Brief In Support by Matthew Bender & Company, Inc. (Attachments: #1 Exhibit 1, #2 Exhibit 2)(Bowler, John)

Case 1:15-cv-02594-MHC Document 28 Filed 05/17/16 Page 1 of 35

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION

CODE REVISION COMMISSION
on Behalf of and for the Benefit
of the GENERAL ASSEMBLY OF
GEORGIA and the
STATE OF GEORGIA,
Plaintiff,
v.
PUBLIC.RESOURCE.ORG,
INC.,
Defendant.

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CIVIL ACTION NO.
1:15-cv-2594-MHC

MOTION OF AMICUS CURIAE MATTHEW BENDER
& COMPANY, INC. FOR LEAVE TO FILE AN AMICUS CURIAE BRIEF
IN SUPPORT OF PLAINTIFF

Matthew Bender & Company, Inc., a member of the LexisNexis Group
(“LexisNexis”) respectfully moves, pursuant to the Court’s inherent authority, to
file a brief as amicus curiae explaining that Public.Resource.Org, Inc. (“PRO”)
cannot meet its burden under the fair use defense in this case. LexisNexis has
attached its proposed brief and evidentiary exhibits to this Motion.

Case 1:15-cv-02594-MHC Document 28 Filed 05/17/16 Page 2 of 35

Federal district courts possess the inherent authority to accept amicus briefs.
In re Bayshore Ford Trucks Sales, Inc., 471 F.3d 1233, 1249 n.34 (11th Cir. 2006)
(stating “district courts possess the inherent authority to appoint ‘friends of the
court’ to assist in their proceedings”); Ga. Aquarium, Inc. v. Pritzker, No. 1:13-cv3241, 2015 U.S. Dist. LEXIS 133566 at *11 (N.D. Ga. Sept. 28, 2015).
“Courts typically grant amicus status where the parties ‘contribute to the
court’s understanding of the matter in question’ by proffering timely and useful
information.” Id., citing Conservancy of Sw. Fla. v. U.S. Fish & Wildlife Serv.,
No. 2:10-cv-106, 2010 U.S. Dist. LEXIS 94003 (M.D. Fla. Sept. 9, 2010). This
authority supports the Court’s exercise of its discretion to accept this amicus brief.
As explained more fully in the attached proposed brief, LexisNexis creates
and distributes the annotations at issue in this proceeding pursuant to a contract
with the Plaintiff, it is uniquely situated to explain factually and legally why PRO’s
affirmative fair use defense should fail based on the four factors in this analysis set
forth by the Supreme Court.

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WHEREFORE, LexisNexis requests that this Court accept and consider the
proposed brief attached hereto.
Respectfully submitted this 17th day of May 2016.
TROUTMAN SANDERS LLP

/s/ John M. Bowler
Michael D. Hobbs, Jr. (GA Bar No. 358160)
John M. Bowler (GA Bar No. 071770)
Counsel of Record for Amicus Curiae
Troutman Sanders LLP
Suite 5200, 600 Peachtree Street, N.E.
Atlanta, Georgia 30308-2216
Phone: [phone]
Fax: [phone]
[e-mail]
[e-mail]

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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION

CODE REVISION COMMISSION
on Behalf of and for the Benefit
of the GENERAL ASSEMBLY OF
GEORGIA and the
STATE OF GEORGIA,
Plaintiff,
v.
PUBLIC.RESOURCE.ORG,
INC.,
Defendant.

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CIVIL ACTION NO.
1:15-cv-2594-MHC

PROPOSED BRIEF OF AMICUS CURIAE MATTHEW BENDER &
COMPANY, INC., IN SUPPORT OF PLAINTIFF

TROUTMAN SANDERS LLP
Michael D. Hobbs, Jr. (GA Bar No. 358160)
John M. Bowler (GA Bar No. 071770)
Counsel of Record for Amicus Curiae
Troutman Sanders LLP
Suite 5200, 600 Peachtree Street, N.E.
Atlanta, Georgia 30308-2216
[phone]
[e-mail]
[e-mail]

Case 1:15-cv-02594-MHC Document 28 Filed 05/17/16 Page 5 of 35

TABLE OF CONTENTS
Page
IDENTITY AND INTERESTS OF AMICUS CURIAE ........................................iv
ARGUMENT ............................................................................................................1
I.

FACTUAL BACKGROUND.........................................................................1
A.
B.

Creation of the Annotations .................................................................2

C.
II.

Free Online Distribution of Georgia Laws...........................................2
Misappropriation of the Annotations ...................................................6

PRO DOES NOT MAKE FAIR USE OF THE COPYRIGHTED
ANNOTATIONS............................................................................................7
a.

PRO’s Verbatim Copying and Online Posting of the
Annotations is not Transformative ............................................8

b.

The Annotations are Entitled to Broad Copyright
Protection .................................................................................14

c.

PRO Misappropriates the Annotations Verbatim ....................18

d.

PRO’s Misappropriation Destroys the Commercial
Market for the O.C.G.A ...........................................................19

e.

PRO’s Misuse is Not a Fair Use ..............................................23

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TABLE OF AUTHORITIES
Page(s)
CASES
Author’s Guild, Inc. v. HathiTrust,
755 F.3d 87 (2d Cir. 2014) .................................................................................10
BMG Music v. Gonzalez,
430 F.3d 888 (7th Cir. 2005) ........................................................................21, 24
Cambridge Univ. Press v. Patton,
769 F.3d 1232 (11th Cir. 2014) ...................................................................passim
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569, 114 S. Ct. 1164, 127 L. Ed. 2d 500 (1994) ..........................passim
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc.,
499 U.S. 340 (1991)............................................................................................15
Harper & Row, Publishers v. Nation Enters.,
471 U.S. 539 (1985).....................................................................................passim
Home Legend, LLC v. Mannington Mills, Inc.,
784 F.3d 1404 (11th Cir. 2015) ..........................................................................15
Infinity Broad. Corp. v. Kirkwood,
150 F.3d 104 (2d Cir 1998) ................................................................................19
Lawrence v. Dana,
15 F. Cas. 26 (C.C.D. Mass. 1869).....................................................................16
Pac. & S. Co. v. Duncan,
744 F.2d 1490 (11th Cir.1984) ...........................................................................18
Peter Letterese & Assocs. v. World Inst. of Scientology Enters.,
533 F.3d 1287 (11th Cir. 2008) ................................................................8, 11, 18
Seltzer v. Green Day, Inc.,
725 F.3d 1170 (9th Cir. 2013) ............................................................................10

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Soc’y of Holy Transfiguration Monastery, Inc. v. Gregory,
689 F.3d 29 (1st Cir. 2012), cert. denied, 133 S. Ct. 1315, 185 L. Ed. 2d
195 (2013)...........................................................................................................12
Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984)..............................................................................................8
W.H. Anderson Co. v. Baldwin Law Pub. Co.,
27 F.2d 82 (6th Cir. 1928) ..................................................................................16
Weissmann v. Freeman,
868 F.2d 1313 (2d Cir. 1989) .............................................................................12
Worldwide Church of God v. Phila. Church of God, Inc.,
227 F.3d 1110 (9th Cir. 2000) ............................................................................12
STATUTES
17 U.S.C. 107(4) ......................................................................................................19
17 U.S.C. § 101........................................................................................................16
17 U.S.C. § 102(a) ...................................................................................................15
17 U.S.C. § 107(1) ...............................................................................................8, 11
17 U.S.C. § 107(2) ...................................................................................................14
17 U.S.C. § 107(3) ...................................................................................................18
Copyright Act, 17 U.S.C. § 107.............................................................................7, 8
Georgia Code § 10-7-21.............................................................................................3
Official Code of Georgia Annotated series............................................................5, 6

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IDENTITY AND INTERESTS OF AMICUS CURIAE
LexisNexis provides and publishes analytic legal research materials.
Pursuant to the terms of a contract with the Code Revision Commission on Behalf
of and For the Benefit of the General Assembly of Georgia and the State of
Georgia (the “Commission”), LexisNexis has responsibility for (1) publically and
freely distributing the statutory texts of Georgia, and (2) researching, creating,
managing, publishing, distributing and licensing an annotated version of Georgia’s
statutory code as the Official Code of Georgia Annotated. As such, LexisNexis
has specific knowledge of the facts relating to the creation, use and market for the
copyrighted annotations in the Official Code of Georgia Annotated that form the
subject of this proceeding.
Counsel for the amicus curiae declares that this brief was authored in total
with no assistance from the parties to this proceeding and that no individuals or
organizations other than the amicus made a monetary contribution to the
preparation and submission of this brief.

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ARGUMENT
I.

FACTUAL BACKGROUND
LexisNexis is a leading global provider of content-enabled workflow

solutions designed specifically for professionals in the legal, risk management,
corporate, government, law enforcement, accounting, and academic markets.
LexisNexis originally pioneered online information with its Lexis® and Nexis®
services. LexisNexis also provides and publishes analytic legal research materials.
See Affidavit of Anders Ganten (attached as Amicus Exhibit 1; hereinafter,
“Ganten Affidavit”), ¶3.
LexisNexis has executed a contract with the Commission (the “Contract”)
under which LexisNexis is responsible for researching, managing, creating,
publishing, and distributing an annotated version of State laws as the Official Code
of Georgia Annotated (“O.C.G.A.”). Id. at ¶4. The Contract is awarded under an
open bid process, whereby LexisNexis and third parties may present bids to
administer the Commission’s project to publish and distribute the laws of the state
of Georgia in both hard bound book and electronic format. Id. at ¶5. Under the
Contract, LexisNexis provides two functions: (1) publically and freely distributing
the statutory texts of Georgia and (2) researching, creating, managing, publishing,
and distributing annotations to the O.C.G.A. as a work for hire. Id. at ¶6.

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A.

Free Online Distribution of Georgia Laws

To distribute the statutory portion of the codification of Georgia’s laws as
required in the Contract, LexisNexis provides online 24/7/365 access to the
statutory text of Georgia laws and the Georgia Constitution via a link to the State
of Georgia website located at www.legis.ga.gov.

Ganten Affidavit, ¶7.

All

statutory text and numbering, numbers of titles, chapters, articles, parts and
subparts, captions and history lines are included in this publication. This online
resource is entirely free to users. Id. at ¶8. The online electronic version of
Georgia’s laws includes robust features and capabilities, such as “terms and
connectors” searching and “natural language” searching. Id. at ¶9. Online Georgia
code users may also print copies, save it to their hard drive in PDF format, or email copies to others. Id. at ¶10.
B.

Creation of the Annotations

As part of its obligations under the Contract, LexisNexis’s team of attorneyeditors creates annotations for the relevant statutes in the O.C.G.A. (the
“Annotations”). Ganten Affidavit, ¶11. These editors create substantive original
Annotations on select legal cases regarding the constitutionality, purpose, intent,
and meaning of words and phrases, as well as illustrations of particular statutory
provisions. Id. at ¶12. These Annotations generally provide a brief description of

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the application or interpretation of statutes, rules, laws or constitution, as well as
analysis and guidance of the legal holdings within a case that have relevance to
those provisions.

Id. at ¶13.

Amicus Exhibit 2 provides an example of the

statutory text and LexisNexis’s Annotations to Official Georgia Code § 10-7-21.
See also Ganten Affidavit, ¶14 (confirming Amicus Exhibit 2 is a true and accurate
copy of the material).
The creation of the Annotations for the entire Georgia code requires a laborintensive, creative process. Ganten Affidavit, ¶15. The LexisNexis editors, who
are all attorneys, begin by reading case law opinions to identify discussion points
and interpretation issues regarding the Georgia code, court rules, and constitutional
provisions at issue.

Id. at ¶16.

The material is subjectively analyzed for

noteworthiness, along with a determination of whether the court or other
authority’s discussion is relevant to an understanding of the provision. Id. at ¶17.
After cases are culled and selected for inclusion, the editors then verify each
potential source to ensure validity and to gain an understanding of how the
statutory provision relates to the issue being discussed. Id. at ¶18.
Upon verification, the editors draft the Annotation focusing on succinctness,
accuracy, and guidance for future readers. Id. at ¶19. Each Annotation is an
original and creative work of authorship that is protected by copyrights owned by

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the State of Georgia as a work for hire. Id. at ¶20. The Annotation often includes a
written analysis of the court’s application of the law to the particular facts of the
case law opinion, or describing the court’s interpretation or construction of the
provision. Id. at ¶21. Certain cases are selected for an in-depth review and
analysis by a quality review team and further editing. Id. at ¶22. For those
Annotations created by the editors in the specialized Prospective Case Law
Enhancements group, LexisNexis forwards the Annotations to Georgia legal
analysts for additional review and editing. Id. at ¶23.
Once the Annotation is checked for accuracy, style, and jurisdictional
requirements, the most on-point and specific classification, as selected by the
editors, is assigned to the Annotation from the LexisNexis taxonomy scheme for
indexing. Id. at ¶24. Upon completion, the Annotation is included for online and
print product publication. Id.
The O.C.G.A. is subject to continuous review to ensure that the information
is accurate. Id. at ¶25. LexisNexis also makes additions to the statutory text of
state laws previously approved and enacted by the legislature of the State of
Georgia. When appropriate, subsequent history is added to each case Annotation.
Id. When LexisNexis determines that the Annotation is no longer relevant due to
negative treatment, it is removed or limited. Id.

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As shown in Amicus Exhibit 2, the Annotations created by LexisNexis not
only include case notes, but also Attorney General opinions, advisory opinions of
the State Bar, law reviews, and bar journals.

Ganten Affidavit, ¶26.

The

LexisNexis editorial staff regularly reviews these materials and subjectively selects
those it deems the most noteworthy for inclusion in its Annotations to the statutory
and constitutional texts. Id. at ¶27. The O.C.G.A. series also includes the United
States Constitution, commentary from the Corporate Code Committee of the
Business Law Section of the State Bar of Georgia, the Rules and Regulations of the
State Board of Workers’ Compensation, and the Rules and Regulations of the
Subsequent Injury Trust Fund.

Id. at ¶28.

These secondary and regulatory

materials are selected, compiled and assimilated by the LexisNexis editorial staff.
Id.
Pursuant to the Contract, the State of Georgia owns the copyright in the
Annotations as a work for hire, which it exclusively licenses to LexisNexis. Id. at
¶29.

LexisNexis does not charge the Commission any fee to create the

Annotations. Id. Instead, in recognition of the significant time, expertise and
creativity required to generate the O.C.G.A., the Contract authorizes LexisNexis to
charge a fee to customers accessing online copies and to sell hardcopy books and
CDs of the work.

The Commission places a contractual cap on the amount

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LexisNexis may charge for such access and works. Id. Contractually, LexisNexis
must also incur the expense of keeping inventory on hand to provide a reasonable
supply of complete sets of hard copies of the O.C.G.A. so that it may fill any
request within two weeks. Id.
If the Annotations were not subject to copyright protection or if the PRO and
the public could freely access the O.C.G.A. as a fair use under the Copyright Act,
LexisNexis could not recoup its significant investment of creativity and resources
in developing the Annotations, and it would lose all incentive to remain in the
Contract or create the Annotations, unless it were directly paid for such services.
Id. at ¶30.
C.

Misappropriation of the Annotations

Defendant

Public.Resource.Org,

Inc.

(“PRO”)

has

repeatedly

distributed/uploaded the entire O.C.G.A. for public viewing and use without the
permission of the State of Georgia. For example, PRO “admits that it has
distributed/uploaded the entire O.C.G.A.1 to the website www.archive.org.”
(Answer & Counterclaim, Court Dkt. 16, ¶ 17). PRO further admits that “it has
copied at least 140 different volumes/supplements containing the O.C.G.A. and

1

As the Defendant has copied, distributed and uploaded the Annotations in their
entirety, the arguments set forth herein apply to all of the Annotations.
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that each of these works has been posted by it on at least one of its websites and is
available to the public for downloading, viewing and printing….” (Id., ¶ 15).
II.

PRO DOES NOT MAKE FAIR USE OF THE COPYRIGHTED
ANNOTATIONS.
PRO asserts that its wholesale copying of the Annotations constitutes fair

use under the Copyright Act, 17 U.S.C. § 107. (Answer & Counterclaim, Court
Dkt. 16, Fourth Affirmative Defense).

A claim of fair use is an affirmative

defense, with the all burdens placed on the putative infringer. See Harper & Row,
Publishers v. Nation Enters., 471 U.S. 539, 562 (1985); Cambridge Univ. Press v.
Patton, 769 F.3d 1232, 1280 (11th Cir. 2014).
In determining whether application of the fair use is warranted, the
Copyright Act mandates the review of four factors: (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. 17 U.S.C. § 107. These four statutory factors are not to be
treated in isolation from one another. See Campbell v. Acuff-Rose Music, Inc., 510
U.S. 569, 578 (1994). Rather, they are “[a]ll are to be explored, and the results
weighed together, in light of the purposes of copyright.” Id. at 578.
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a. PRO’s Verbatim Copying and Online Posting of the Annotations
is not Transformative.
The first factor listed in Section 107 inquires about “the purpose and
character of the use.” 17 U.S.C. § 107(1). This has several facets, including (1)
the extent to which the use is a “transformative” rather than merely superseding
use of the original work, and (2) whether the use is for a nonprofit educational
purpose, as opposed to a commercial purpose. Peter Letterese & Assocs. v. World
Inst. of Scientology Enters., 533 F.3d 1287, 1309 (11th Cir. 2008). The Supreme
Court described the “central purpose” of this factor as determining whether “the
new work merely supersedes the objects” of the copied work or whether the new
work is “transformative.” Campbell, 510 U.S. at 579, (quoting Sony Corp. of Am.
v. Universal City Studios, Inc., 464 U.S. 417, 455, n.40 (1984)). The Eleventh
Circuit further instructs:
A transformative work is one that adds something new, with a further
purpose or different character, altering the first work with new
expression, meaning or message. On the other hand, a work that is
not transformative, and that merely supersedes the objects of the
original creation, is less likely to be entitled to the defense of fair use
because of the greater likelihood that it will supplant the market for
the copyrighted work, fulfilling demand for the original.
Peter Letterese & Assocs. 533 F.3d at 1310 (internal citations and quotation marks
omitted).

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PRO does not transform the Annotations. PRO does not add, edit, modify,
comment on, criticize or create any analysis or notes of its own. Ganten Affidavit,
¶31. The Annotations are already made available in a digital format by LexisNexis
with a robust, fully searchable engine. Id. PRO’s use of the Annotations is for
exactly the same purpose as LexisNexis, and the Commission makes the
Annotations available—for legal and scholarly research and public and judicial
review.

Id.

As held by the Eleventh Circuit, the verbatim copying of the

Annotations for the same purpose as the original work is not transformative.
Patton, 769 F.3d at 1262–1263 (“Defendants’ use of excerpts of Plaintiffs’ works
is not transformative. The excerpts of Plaintiffs’ works posted on GSU’s electronic
reserve system are verbatim copies of portions of the original books which have
merely been converted into a digital format….Nor do Defendants use the excerpts
for anything other than the same intrinsic purpose—or at least one of the
purposes—served by Plaintiffs’ works: reading material for students in university
courses.”) (citations omitted).
PRO’s sole justification in support of its verbatim copying and free
distribution of the Annotations without authorization is that it purports to provide
wider distribution of the Annotations. In Paragraph 15 of its Answer, PRO admits
that “it has copied at least 140 different volumes/supplements containing the

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O.C.G.A. and that each of these works has been posted by it on at least one of its
websites and is available to the public for downloading, viewing and printing, and
that the electronic nature of these documents and their availability on the Internet,
magnifies the ease and speed with which they may be copied and distributed to
others.” (Answer & Counterclaim, Court Dkt. 16, ¶ 15).
Courts have routinely rejected arguments that this is transformative use.
See, e.g., Author’s Guild, Inc. v. HathiTrust, 755 F.3d 87, 101 (2d Cir. 2014)
(“[T]he district court concluded that the ‘use of digital copies to facilitate access
for print-disabled persons is a transformative’ use. This is a misapprehension;
providing expanded access to the print disabled is not ‘transformative’” (citation
omitted)); Seltzer v. Green Day, Inc., 725 F.3d 1170, 1177 (9th Cir. 2013) (“In the
typical ‘non-transformative’ case, the use is one which makes no alteration to the
expressive content or message of the original work.” (emphasis in original)).
PRO’s verbatim copying and posting of the Annotations is expressly
designed to merely supplant the O.C.G.A. as already distributed and made
available online by LexisNexis, which is neither transformative nor a fair use as a
matter of law. See Campbell, 510 U.S. at 578–579 (stating that, where the copier’s
work “merely supersedes the objects of the original creation,” it is neither
transformative nor a fair use.); HathiTrust, 755 F.3d at 96 (stating that “[a]dded

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value or utility is not the test: a transformative work is one that serves a new and
different function from the original work and is not a substitute for it” and only
finding fair use when no new, human-readable copies of any books were put into
circulation and where there was little to no discernible resemblance between the
original work and the database).
This Court must also consider under the first factor whether the Defendants’
use is for a nonprofit educational purpose, as opposed to a commercial purpose.
“[T]he commercial or non-transformative uses of a work are to be regarded as
‘separate factors that tend to weigh against a finding of fair use,’ and ‘the force of
that tendency will vary with the context.’” Peter Letterese & Assocs., 533 F.3d at
1309 (alteration in original) (quoting Campbell, 510 U.S. at 585). That the
Defendant is a non-profit does not end the inquiry pursuant to § 107(1). The
Supreme Court has explained that “[t]he crux of the profit/nonprofit distinction is
not whether the sole motive of the use is monetary gain but whether the user stands
to profit from exploitation of the copyrighted material without paying the
customary price.” Harper & Row, 471 U.S. at 562. Courts in several cases have
found that educational use of copyrighted works by a nonprofit entity (or an
individual associated with such an entity) was commercial even though the
secondary user was not selling the items in question, in which “profit” took the

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form of an indirect economic benefit or a nonmonetary, professional benefit. See,
e.g., Soc’y of Holy Transfiguration Monastery, Inc. v. Gregory, 689 F.3d 29, 61
(1st Cir. 2012), cert. denied, 133 S. Ct. 1315, 185 L. Ed. 2d 195 (2013) (finding
that the first factor weighed against fair use where an archbishop used copyrighted
translations of a religious text on his website; although the use was educational, the
archbishop profited from the use, in part, in the form of enhanced professional
reputation); Worldwide Church of God v. Phila. Church of God, Inc., 227 F.3d
1110, 1118 (9th Cir. 2000) (finding the first factor weighed against fair use where
a religious organization distributed copies of a copyrighted book for use in its
religious observance; the use was nontransformative, and although the use was
educational, the organization profited indirectly by using the work to attract new
members who would tithe ten percent of their income); Weissmann v. Freeman,
868 F.2d 1313, 1324 (2d Cir. 1989) (finding that the first factor weighed against
fair use where a professor claimed an assistant’s paper as his own work and copied
it for use in his class, under the professor’s name, because the professor profited
from the use by enhancing his professional reputation and gaining a valuable
authorship credit).
Here, the Defendant acknowledges that it has posted the Annotations on its
websites where it solicits and receives funds and sells products.

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(Answer &

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Counterclaim, Court Dkt. 16, ¶ 5). Moreover, the founder of the Defendant clearly
engages in the business of self-promotion.

In fact, in the Defendant’s

counterclaim, the name of the founder of the Defendant is mentioned repeatedly to
extol his professional reputation with scant mention of the Defendant itself.
(Answer & Counterclaim, Court Dkt. 16, Counterclaim ¶¶ 10-19). These factors
weigh against the fair use of the Annotations.
The Defendant further claims that the unauthorized verbatim dissemination
of the Annotations benefits the public. This is not true. As set forth more fully with
respect to the fourth fair use factor, the activities of the Defendant destroy the
marketplace and economic incentives for LexisNexis to create the Annotations.
Ganten Affidavit, ¶31. It is simple economics that if customers can get the full text
of every single Annotation for free, they will not buy hardcopies from LexisNexis
or pay to license the exact same Annotations. Given that, LexisNexis will not
continue to incur the significant time and expense required to prepare the
Annotations and the public will no longer have access to this significant benefit. It
will, as cautioned by the Eleventh Circuit, kill “the proverbial goose that laid the
golden egg.” Patton, 769 F.3d at 1258. Contrary to the Defendant’s assertions
that, as a California corporation, it knows what is best for Georgia citizens, the
duly elected state legislature, whose members comprise the Commission, have

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analyzed the issue and decided that the deal reflected in the Contract fairly benefits
the public. They incur no taxpayer expense in the preparation of the Annotations,
then allow the people who actually use the Annotations to purchase hardcopies or
online access to them, instead of using the tax dollars of all Georgia citizens to pay
for the services required to create the Annotations, or to simply provide no
Annotations at all.
Accordingly, PRO’s verbatim copying and distribution of the Annotations is
not transformative, does not benefit the public, and this factor weighs heavily in
the favor of the Commission.
b. The Annotations are Entitled to Broad Copyright Protection.
The second factor listed in Section examines the “nature of the copyrighted
work.” 17 U.S.C. § 107(2). As described above, the selection, writing, editing,
statutory commentary and creativity of the Annotations requires skill and analysis
in reviewing a wealth of materials and drafting original materials to inform and
educate users about courts and agencies applying the Georgia code and their
citation in third party materials. The Annotations are far from a mere recitation of
facts like a phone book; rather, they are originally created works of authorship.
The creation of the Annotations requires a tremendous amount of work from
a team of editors. However,

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[t]he effort that creative labor requires does not render the labor
uncreative. Drafting and editing a novel usually requires months or
years of toil over a keyboard. A masterpiece painting may require
many preliminary studies and countless hours of exacting brushwork.
Carving or assembling a sculpture may involve backbreaking physical
exertion. All of those are examples of creative labor that is creative.
Home Legend, LLC v. Mannington Mills, Inc., 784 F.3d 1404, 1411 (11th Cir.
2015). The creation of the Annotations involve far more than sweat of the brow
labor. Rather, each Annotation requires selection, drafting skills, choice of words,
decisions regarding third-party sources and a myriad of other choices, all of which
confirm that the Annotations are original works entitled to broad copyright
protection. See Ganten Affidavit, ¶¶11–28.
The Copyright Act extends protection to copyright owners “in original
works of authorship fixed in any tangible medium of expression, now known or
later developed, from which they can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or device.” 17 U.S.C.
§ 102(a). The U.S. Supreme Court instructs that the amount of originality required
to extend copyright protection to a work is exceedingly low, that only a “modicum
of creativity” is needed, and that copyright protection will be provided to the work
“no matter how crude, humble or obvious it might be.”

Feist Publ’ns, Inc. v.

Rural Tel. Serv. Co., Inc., 499 U.S. 340, 345-346 (1991) (internal citations
omitted).
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The Copyright Act itself specifically lists “annotations” in the works entitled
to copyright protection. 17 U.S.C. § 101.

A long line of cases—beginning in the

nineteenth century—recognize the copyright protection in annotated cases and
statutes. See, e.g., W.H. Anderson Co. v. Baldwin Law Pub. Co., 27 F.2d 82 (6th
Cir. 1928); Lawrence v. Dana, 15 F. Cas. 26 (C.C.D. Mass. 1869). Moreover, the
United States Copyright Office’s own treatise expressly recognizes the
protectability of annotations.

U.S. COPYRIGHT OFFICE, COMPENDIUM

OF

U.S.

COPYRIGHT OFFICE PRACTICES §§ 313.6(C)(2), 717.1 (3d ed. 2014) (stating also
that “[a] legal publication that analyzes, annotates, summarizes, or comments upon
a legislative enactment, a judicial decision, an executive order, an administrative
regulation, or other edicts of government may be registered as a non-dramatic
literary work”). In fact, the Copyright Office has a long history of registering
annotated statutes—from the earliest available online record of 1951 (Copyright
Reg. AA0000204179 for Vernon’s Annotated Statutes of the State of Texas) to the
most recent in 2015 (Copyright Reg. TX0008001813 for Annotated Statutes of
New Mexico 2015 Advance Code Service), with hundreds of other registrations
issued by the Copyright Office for state statutory annotations in the intervening
years. The Annotations themselves are the subject of numerous registrations in the
U.S. Copyright Office.

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Since 2003, Thomson West has created its own annotations to the Official
Georgia Code in its West’s® Code of Georgia Annotated, and it sells hardcopies
and licenses access to its annotations to recoup the costs and profit from the efforts.
Ganten Affidavit, ¶33. As shown in Amicus Exhibit 2, the LexisNexis Annotation
is different from the West annotation, confirming that the creation of the
Annotations requires originality, creativity and selections that create different
works, not slavish copies regardless of the author.
Turning to the specific nature of the Annotations, that they contain fact and
not fiction does not end the inquiry for fair use purposes. Indeed, the Eleventh
Circuit admonished the district court in Cambridge University Press v. Patton for
exactly this approach:
Here, the District Court held that “because all of the excerpts are
informational and educational in nature and none are fictional, fair use
factor two weighs in favor of Defendants. Cambridge Univ. Press,
863 F. Supp. 2d at 1242. We disagree. . . . Accordingly, we find that
the District Court erred in holding that the second factor favored fair
use in every instance. Where the excerpts of Plaintiffs’ works
contained evaluative, analytical, or subjectively descriptive material
that surpasses the bare facts necessary to communicate information, or
derives from the author’s experiences or opinions, the District Court
should have held that the second factor was neutral, or even weighed
against fair use in cases of excerpts that were dominated by such
material.
769 F.3d at 1269-1270.

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The Annotations contain exactly the evaluative, analytical or subjectively
descriptive analysis and guidance that the Eleventh Circuit instructed weighed
against fair use. See Ganten Affidavit, ¶26. Moreover, the analysis and guidance,
selection are carefully crafted by LexisNexis’ editors, who have years of legal and
statutory experience to illustrate and interpret the Code. Id. at ¶26. Accordingly,
the second factor in the fair use analysis also weighs heavily against PRO.
c. PRO Misappropriates the Annotations Verbatim.
The third factor is “the amount and substantiality of the portion used in
relation to the copyrighted work as a whole.” 17 U.S.C. § 107(3). A court must ask
whether the defendant has “helped [herself] overmuch to the copyrighted work in
light of the purpose and character of the use.” Peter Letterese & Assocs., 533 F.3d
at 1314 (quoting Campbell, 510 U.S. at 587). This factor recognizes that the more
of a copyrighted work that is taken in quantity and quality, the less likely the use is
to be fair. See Harper & Row, Publrs., 471 U.S. 539, 565 (1985) (holding that the
third factor disfavored fair use because the defendant copied a qualitatively
substantial portion of the original work, even though the defendants copied only
approximately 300 words out of the 200,000 words in the plaintiffs’ work).
Indeed, where a defendant “uses virtually all of a copyrighted work, the fair use
defense drifts even further out of its reach.” Pac. & S. Co. v. Duncan, 744 F.2d

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1490, 1497 (11th Cir.1984); see also Infinity Broad. Corp. v. Kirkwood, 150 F.3d
104, 109 (2d Cir 1998) (reversing lower court’s dismissal based on fair use and
noting “generally, it may not constitute a fair use if the entire work is reproduced”)
(quoting NIMMER ON COPYRIGHT, § 13.05[A][3] at 13-178 (1997).
In this case, PRO simply has misappropriated every single word of every
Annotation. Rather than employing the red pencil of an editor, PRO’s sole tool has
been a bulk industrial electronic scanner. In its Answer, PRO even admits that, “it
has copied at least 140 different volumes/supplements containing the O.C.G.A. and
that each of these works has been posted by it on at least one of its websites and is
available to the public for downloading, viewing and printing . . . .” (Answer &
Counterclaim, Court Dkt. 16, ¶¶ 15).
The law is clear that this third factor heavily disfavors a finding of fair use
by PRO and the fair use defense drifts even further out of PRO’s reach.
d. PRO’s Misappropriation Destroys the Commercial Market for
the O.C.G.A.
The fourth factor is “the effect of the use upon the potential market for or
value of the copyrighted work.” 17 U.S.C. 107(4). The “central question” is
whether, assuming that everyone engaged in the conduct of the defendant, the use
“would cause substantial economic harm such that allowing [the conduct] would

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frustrate the purposes of copyright by materially impairing [the defendant’s]
incentive to publish the work.” Patton, 769 F.3d at 1276. The Supreme Court has
expressly stated that this factor forms the most central inquiry of the fair use
doctrine. Harper & Row, Publishers, Inc., 471 U.S. at 566 (stating “[t]his last
factor is undoubtedly the single most important element of fair use”). “More
important, to negate fair use one need only show that if the challenged use ‘should
become widespread, it would adversely affect the potential market for the
copyrighted work.’ . . . ‘If the defendant’s work adversely affects the value of any
of the rights in the copyrighted work … the use is not fair.’” Id. at 568 (citations
omitted).

As in Cambridge Press v. Patton, 769 F.3d at 1275, “[b]ecause

Defendants’ use is nontransformative and fulfills the educational purposes that
Plaintiffs, at least in part, market their works for, the threat of market substitution
here is great and thus the fourth factor looms large in the overall fair use analysis.”
A judicial decree that PRO’s wholesale copying of the copyrighted
Annotations constitutes a fair use will destroy the economic viability of creating
and maintaining the O.C.G.A. See Ganten Affidavit, ¶31. Simply, no person will
pay for Annotations when they are available online for free.
However, the Annotations are not free to create. The overhead costs of
creating and maintaining Annotations are high because the tasks require time and
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skill. Id. at ¶¶11–28. For example, the Contract requires that the Annotations be
drafted and edited by attorneys. Id. at ¶16.
LexisNexis’s sole revenue to recoup these costs is through hard copy sales
and licensing online access to the O.C.G.A. as permitted by the Contract, and
which are easily and economically offered to the public. Id. at ¶32. Because PRO
has copied every word of every Annotation verbatim and posted them free of
charge, PRO’s misappropriation completely destroys LexisNexis’s ability to
recover these costs. Id.; see Patton, 769 F.3d at 1275 (“Because Defendants’ use is
nontransformative and fulfills the educational purposes that Plaintiffs, at least in
part, market their works for, the threat of market substitution here is great and thus
the fourth factor looms large in the overall fair use analysis.”); BMG Music v.
Gonzalez, 430 F.3d 888, 890 (7th Cir. 2005) (finding “[m]usic downloaded for free
from the Internet is a close substitute for purchased music; many people are bound
to keep the downloaded files without buying originals”).
In Cambridge University Press v. Patton, 769 F.3d at 1278-79, in its
analysis of this fourth factor, the Eleventh Circuit examined whether the plaintiffs
were actually licensing the subjects works for the use desired by the Defendants.
Unlike Cambridge University Press, where the Defendant desired to license
portions of the works for limited educational uses, which the plaintiffs did not
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actually license, in the instant case, the Defendant has made and wants to make
permanently available the entire O.C.G.A. (Answer & Counterclaim, Court Dkt.
16, ¶ 17). LexisNexis already licenses the entire O.C.G.A. and portions thereof in
hardcopy and electronic formats. The revenues from such licensing reinforce the
value of the O.C.G.A. and the damage that would be inflicted if the entire
O.C.G.A. were made available for free. See Patton, 769 F.3d at 1278 (“The
District Court also properly took into account that widespread use of similar
unlicensed excerpts could cause substantial harm to the potential market. Thus,
where there was a license for digital excerpts available, the District Court generally
held that the fourth factor weighed against a finding of fair use.”)
The Copyright Act does not prevent PRO from independently creating its
own annotations.

Indeed, since 2003, Thomson West has created its own

annotations to the Official Georgia Code in its West’s® Code of Georgia
Annotated, and it sells hardcopies and licenses access to its annotations to recoup
the costs and profit from the efforts. Ganten Affidavit, ¶33. As shown in Amicus
Exhibit 2, the LexisNexis Annotation is different from the West annotation,
confirming that PRO could do the same through its own independent creation, but
it has instead sought to free ride by copying the Annotations without authorization
(and without any of the associated overhead costs).

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The central question under the fourth factor is whether Defendant’s use—
taking into account the damage that might occur if “everybody did it”—would
cause substantial economic harm such that allowing it would frustrate the purposes
of copyright by materially impairing a publisher’s incentive to publish the work.
See Harper & Row, 471 U.S. at 566–67. That PRO’s misappropriation of the each
and every word comprising the Annotations and public posting of them without
charge or license will naturally and surely destroy the market for sales and
subscriptions of the Annotations confirms that this central factor in the fair use
analysis heavily weighs in favor of the Commission. Patton, 769 F.3d at 1281
(“[b]ecause Defendants’ copying was nontransformative and the threat of market
substitution was therefore serious, the District Court erred by not affording the
fourth factor additional weight in its overall fair use calculus.”)
e. PRO’s Misuse is Not a Fair Use.
The goal of the Commission in creating the Annotations is that a fully
annotated version of the laws of the State of Georgia exist and be maintained with
a fair allocation of cost to Georgia taxpayers.

These copyright-protected

Annotations provide a valuable service to legal professionals and the lay citizenry
who pay a reasonable fee for this access as set by the Commission. Georgia
citizens who do not use the Annotations pay nothing for their creation.

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PRO has inappropriately placed its own policy judgment in a position higher
than that of the Commission—the copyright owner of the Annotations. BMG, 430
F.3d at 891 (stating “[c]opyright law lets authors make their own decisions about
how best to promote their works; copiers . . . cannot ask courts (and juries) to
second-guess the market and call wholesale copying ‘fair use’ if they think that
authors err in understanding their own economic interests or that Congress erred in
granting authors the rights in the copyright statute”).

But PRO has also

undermined the ability of the Commission to create the Annotations in the first
place. LexisNexis respectfully submits that should not be decided unilaterally by
the Defendant under the guise of fair use.
As each of the four fair use factors not only tilts in favor of the Commission,
but rather weighs heavily in its favor, LexisNexis urges this Court to hold that the
Defendant has not met its burden of proving its improper activities fall under the
fair use defense, and confirm that PRO’s misappropriation of the Annotations
constitutes copyright infringement.

[valediction and signature on following page]

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Case 1:15-cv-02594-MHC Document 28 Filed 05/17/16 Page 33 of 35

Respectfully submitted this 17th day of May 2016.
TROUTMAN SANDERS LLP
/s/ John M. Bowler
Michael D. Hobbs, Jr. (GA Bar No. 358160)
John M. Bowler (GA Bar No. 071770)
Counsel of Record for Amicus Curiae
Troutman Sanders LLP
Suite 5200, 600 Peachtree Street, N.E.
Atlanta, Georgia 30308-2216
Phone: [phone]
Fax: [phone]
[e-mail]
[e-mail]

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Case 1:15-cv-02594-MHC Document 28 Filed 05/17/16 Page 34 of 35

CERTIFICATE OF COMPLIANCE
I certify that the foregoing brief, including footnotes, has been prepared in
Times New Roman 14 font and is in compliance with Local Rule 5.1.
By:

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/s/ John M. Bowler

Case 1:15-cv-02594-MHC Document 28 Filed 05/17/16 Page 35 of 35

CERTIFICATE OF SERVICE
I hereby certify that I have electronically filed the foregoing MOTION OF
AMICUS CURIAE MATTHEW BENDER & COMPANY, INC. FOR LEAVE
TO FILE AN AMICUS CURIAE BRIEF IN SUPPORT OF PLAINTIFF and
PROPOSED BRIEF OF AMICUS CURIAE MATTHEW BENDER &
COMPANY, INC., IN SUPPORT OF PLAINTIFF with the Clerk of Court using
the CM/ECF system which will automatically serve all counsel of record.

Dated: May 17, 2016
TROUTMAN SANDERS LLP

/s/ John M. Bowler
Michael D. Hobbs, Jr. (GA Bar No. 358160)
John M. Bowler (GA Bar No. 071770)
Counsel of Record for Amicus Curiae
Troutman Sanders LLP
Suite 5200, 600 Peachtree Street, N.E.
Atlanta, Georgia 30308-2216
Phone: [phone]
Fax: [phone]
[e-mail]
[e-mail]

28472676

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