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

Filing 56

RESPONSE in Opposition re #55 MOTION for Attorney Fees and Other Costs filed by Public.Resource.Org, Inc.. (Rader, Elizabeth)

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 1 of 28

IN THE UNITED STATES DISTRICT COURT
FOR THE 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.

)
)
)
)
)
) CIVIL ACTION
)
) FILE NO. 1:15-CV-2594-RWS
)
)
)
)
)
)

DEFENDANT’S MEMORANDUM OF LAW IN OPPOSITION TO
PLAINTIFF’S MOTION FOR AN AWARD OF ATTORNEY’S FEES AND
OTHER COSTS

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 2 of 28

TABLE OF CONTENTS
I.

INTRODUCTION ...........................................................................................1

II.

ARGUMENT AND CITATION OF AUTHORITIES ...................................3
A.

The Court has discretion to decline to award the Commission
its fees and costs after considering all relevant factors.........................3

B.

Public Resource’s alternative defenses, that the O.C.G.A. is not
copyrightable, and that its posting of the O.C.G.A. constituted a
fair use were both objectively reasonable. ............................................4
i.

Public Resource’s defense that all of the O.C.G.A. is in
the public domain was objectively reasonable in light of
the long line of cases holding that edicts of government
cannot be copyrighted. ................................................................4

ii.

Public Resource’s argument, that posting the O.C.G.A.
was a fair use to improve the accessibility of the laws of
the State to the public, was not objectively unreasonable. .........7

C.

D.

Public Resource did not willfully infringe the State’s copyright
in the annotations.................................................................................14

E.

An award of attorney’s fees and costs is unwarranted because
litigation of meritorious arguments like Public Resource’s
furthers the interests of the Copyright Act..........................................15

F.
III.

Public Resource’s motivations were first, to improve access and
usability of the State’s only official code, and second, to engage
Georgia’s legislators in a dialogue about those goals. ........................10

The Commission’s request for fees and costs of a quarter
million dollars is patently unreasonable..............................................21

CONCLUSION..............................................................................................22

-iLEGAL02/36379790v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 3 of 28

TABLE OF AUTHORITIES
CASES
A.V. ex rel v. iParadigms, LLC, 562 F.3d 630 (4th Cir. 2009)..................................9
Advanced Tech. Servs., Inc. v. K.M. Docs, LLC, U.S. Dist. LEXIS 90361 (N.D. Ga.
June 27, 2013).................................................................................................4, 13
American Inst. of Physics v. Schwegman, Lundberg & Woessner, P.A., No. 12-528,
2013 WL 4666330 (D. Minn. Aug. 30, 2013)......................................................9
Authors’ Guild v. Google, Inc., 804 F.3d 202 (2d. Cir. 2015) (Leval, J), cert.
denied, No. 15-849, 2016 WL 1551263 (April 18, 2016) ....................................9
Authors’ Guild, Inc. v. Hathitrust, 755 F.3d 87 (2d. Cir. 2014)................................9
Bellsouth Adver. & Publ’g Corp. v. Donnelly Info. Publ’g, Inc., 999 F.2d 1436
(11th Cir. 1993) (en banc).................................................................................6, 8
Brewer-Giorgio v. Producers’ Video, Inc., 985 F. Supp. 1478 (N.D. Ga. 1997)......4
Broad. Music, Inc. v. Evie’s Tavern Ellenton, Inc., 772 F.3d 1254 (11th Cir. 2014)
...............................................................................................................................3
Cable/Home Commc’n Corp. v. Network Prods. Inc., 902 F.2d 829 (11th Cir.
1990) ............................................................................................................ 14, 18
Cambridge Univ. Press v. Patton, 769 F.3d 1232 (11th Cir. 2014) ........................10
Evans & Assocs. v. Meadows, 785 F.2d 897 (11th Cir. 1986) ..................................4
Feist Publ'ns., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991)..............................8
Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) ....................................................3, 15
International Korwin Corp. v. Kowalczyck, 855 F.2d 375 (7th Cir. 1988).............18
Jacob Maxwell v. Veeck, 110 F.3d 749 (11th Cir. 1997)...........................................4
Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979 (2016) .............................3, 7
- ii LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 4 of 28

Lotus Dev. Corp. v. Borland Int’l, Inc., 140 F. 3d 70 (1st Cir. 1998) .....................15
Matthew Bender & Co., Inc. v. West Pub. Co., 158 F.3d 674 (2d Cir. 1998) ...........8
Mitek Holdings, Inc. v. Arce Eng’g Co., Inc., 198 F.3d 840 (11th Cir. 1999) ....4, 15
Sherry Mfg. Co. v. Towel King of Fla., Inc., 822 F.2d 1031 (11th Cir. 1985) ..........4
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984)..................9
Swatch Grp. Mgm’t. Serv. Ltd. v. Bloomberg L.P., 756 F.3d 73 (2d. Cir. 2014)......9
Warren Publ’g, Inc. v. Microdos Data Corp., 115 F.3d 1509 (11th Cir. 1997) (en
banc)......................................................................................................................6
White v. Alcon Film Fund, LLC, No. 1:13-CV-1163-TCB, 2015 WL 11199163
(N.D. Ga. Jan. 30, 2015) .....................................................................................17
STATUTES
17 U.S.C. § 107(4) .....................................................................................................9
17 U.S.C. § 504 (c)(2)..............................................................................................18
17 U.S.C. § 505....................................................................................................3, 15
17 U.S.C. § 102(b) ...............................................................................................6, 13
17 U.S.C. § 107....................................................................................................7, 13

- iii LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 5 of 28

I. INTRODUCTION
In order to promote public education and public safety, equal justice for all,
a better informed citizenry, more efficient markets, and the Rule of Law,
Defendant Public.Resource.Org, Inc. (“Public Resource”) has undertaken to make
edicts of government, including the O.C.G.A., available on a noncommercial basis.
In making primary sources of law available, Public Resource relies on the timehonored doctrine that laws and other edicts of government cannot be copyrighted
because they belong to the people. Furthermore, access to the law is a fundamental
aspect of our system of democracy, an essential element of due process, equal
protection, and access to justice. Thus, it was reasonable for Public Resource to
conclude that the O.C.G.A., as the only official code of Georgia, is not
copyrightable subject matter.
In this sincere belief, Public Resource purchased the O.C.G.A. and posted it
on its website. In order to efficiently create digital copies from primary sources of
law, which, like the O.C.G.A., are sold as bound paper volumes, Public Resource
uses a scanner. Public Resource had no particular interest in the O.C.G.A.’s
annotations, other than that they are part of the only official code of Georgia and
are there to help the reader better understand and use the statutes and other edicts
in the O.C.G.A.
-1LEGAL02/36379790v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 6 of 28

Public Resource does not dispute that the Code Revision Commission is the
prevailing party. The Supreme Court, however, has repeatedly stated that
attorney’s fees should not be awarded to the prevailing party as a matter of course.
Instead, courts exercising their discretion must give substantial weight to the
objective reasonableness of a losing party’s litigation position. They must also
consider all circumstances relevant to granting fees.
Here, although the Court granted the Commission’s Motion for Partial
Summary Judgment [Doc. No. 44], Public Resource’s litigation positions on both
the copyrightability of the annotations and the fair use defense were objectively
reasonable based on its application of federal copyright law, including Supreme
Court and Eleventh Circuit cases, to the undisputed facts.
Consideration of other circumstances also should persuade the Court to deny
the motion for fees and costs. First, Public Resource’s motivation was to improve
the public’s access to the official code, in the interest of due process, equal
protection and access to justice. Second, awarding fees is not necessary to deter
future infringement of similar copyrights because the Court’s holding, alone, will
do so. Finally, Public Resource’s vigorous litigation of its defenses furthers the
purposes of the Copyright Act by helping to ensure that the boundaries of
copyrightability and fair use are demarcated as clearly as possible, so that both
-2LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 7 of 28

creators and users will enjoy the substantive rights the Copyright Act provides.
For all these reasons, Public Resource respectfully urges the Court to deny the
Commission’s motion.
II. ARGUMENT AND CITATION OF AUTHORITIES
A.

The Court has discretion to decline to award the Commission its
fees and costs after considering all relevant factors.

The Supreme Court and the Eleventh Circuit have instructed district courts
to exercise equitable discretion to decide whether to award attorney’s fees under 17
U.S.C. § 505. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994); Kirtsaeng v.
John Wiley & Sons, Inc., 136 S. Ct. 1979, 1985 (2016); Broad. Music, Inc. v.
Evie’s Tavern Ellenton, Inc., 772 F.3d 1254, 1261 (11th Cir. 2014). The
Commission cites an unpublished decision from the Southern District of Florida
for the proposition that, in copyright cases, attorney’s fees “are the rule rather than
the exception and should be awarded routinely.” [Doc. 55-1 at 3]. But the
Supreme Court has repeatedly rejected any interpretation of 17 U.S.C. § 505 that
would require a court to award attorney’s fees “as a matter of course.” Fogerty,
510 U.S. at 533; Kirtsaeng, 136 S. Ct. at 1985. Instead, the Court recently held
that the district court should consider all relevant factors, and give substantial, but
not controlling, weight to the objective reasonableness of the losing party’s
positions. Kirtsaeng, 136 S. Ct. at 1988.
-3LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 8 of 28

Even before Fogerty, the Eleventh Circuit had long noted that denying fees
to a prevailing party in a copyright case is likely justified where the losing party
acted in good faith and the legal issues were complex. Evans & Assocs. v.
Meadows, 785 F.2d 897, 916 (11th Cir. 1986) (affirming district court’s denial of
fees where losing parties’ claims were “colorable” and of the type that 17 U.S.C.
§ 505 is intended to encourage); Sherry Mfg. Co. v. Towel King of Fla., Inc., 822
F.2d 1031, 1034-35 (11th Cir. 1985) (district court’s finding that losing party
brought a colorable claim in good faith would justify denial of fees); Jacob
Maxwell v. Veeck, 110 F. 3d 749, 754 (11th Cir. 1997); Mitek Holdings, Inc. v.
Arce Eng’g Co., Inc., 198 F.3d 840, 842-43 (11th Cir. 1999). Courts in this district
have followed those precedents. See, e.g., Brewer-Giorgio v. Producers’ Video,
Inc., 985 F. Supp. 1478, 1484 (N.D. Ga. 1997); Advanced Tech. Servs., Inc. v.
K.M. Docs, LLC, U.S. Dist. LEXIS 90361, at *5 No. 1:11-cv-3121-TWT (N.D. Ga.
June 27, 2013).
B.

Public Resource’s alternative defenses, that the O.C.G.A. is not
copyrightable, and that its posting of the O.C.G.A. constituted a fair
use were both objectively reasonable.
i.

Public Resource’s defense that all of the O.C.G.A. is in the public
domain was objectively reasonable in light of the long line of
cases holding that edicts of government cannot be copyrighted.

-4LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 9 of 28

It is well-established that federal and state judicial opinions and statutes are
in the public domain and not subject to copyright protection. Accordingly, the
Parties stipulated that the Georgia statutes and their statutory numbering in the
O.C.G.A. are not copyrightable. [Doc. No. 17 at ¶ 38]. The central dispute was
whether the annotations created by Lexis/Nexis under the Commission’s
supervision are copyrightable works separate from the statutory text itself.
Public Resource’s position that the entire O.C.G.A. is an edict of
government and a necessary source to understand and use Georgia’s laws was
supported by language in the O.C.G.A. itself. One of the first annotations warns
that “[a]ttorneys who cite unofficial publications of 1981 code do so at their peril”
and that the “Official Code publication controls over unofficial compilations.” Ga.
Code Ann. § 1-1-1, note (West 2016). The Court acknowledged that “this is an
unusual case because most official codes are not annotated and most annotated
codes are not official.” [Doc. No. 44 at 11]. Public Resource also reasonably
argued that, because the Georgia legislature mandated that the O.C.G.A. contain
certain specific annotations, the fact that the Commission hired a private publisher
to create and maintain those annotations does not separate them from the O.C.G.A.
so as to make the annotations independently copyrightable.

-5LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 10 of 28

Public Resource’s alternative position, that the annotations of the O.C.G.A.
were not copyrightable under the merger doctrine, was also reasonable under the
current state of the law. Under Section 102(b) of the Copyright Act and the merger
doctrine, copyright does not protect expression when there is only one way, or so
few ways to express an idea, that protecting the expression would effectively
protect—and remove from the public domain—the idea itself. See 17 U.S.C.
§ 102(b); Bellsouth Adver. & Publ’g Corp. v. Donnelly Info. Publ’g, Inc., 999 F.2d
1436, 1442 (11th Cir. 1993) (en banc); Warren Publ’g, Inc. v. Microdos Data
Corp., 115 F.3d 1509, 1518 n.27 (11th Cir. 1997) (en banc). Despite the Court’s
finding that there are “a multitude of ways to compile the different annotations
throughout the O.C.G.A.” [Doc. No. 44 at 14], it was not objectively unreasonable
for Public Resource to conclude, and therefore to argue, based on those Eleventh
Circuit cases and others, that the annotations (especially the Editor’s notes,
indexes, and lists of law review articles) are uncopyrightable compilations of
uncopyrightable facts that lack sufficient creativity to establish these annotations as
original or protectable works within the O.C.G.A.
Because Public Resource’s legal position that the annotations were not
copyrightable was objectively reasonable given the unusual nature of the O.C.G.A.
and the annotations’ factual nature, this factor weighs substantially against
-6LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 11 of 28

awarding the Commission its fees and costs. See Kirtsaeng, 136 S. Ct. at 1986
(adopting the approach of giving substantial weight to the objective reasonableness
of a losing party’s litigating positions).
ii.

Public Resource’s argument, that posting the O.C.G.A. was a fair
use to improve the accessibility of the laws of the State to the
public, was not objectively unreasonable.

As the Court recognized, the fair use doctrine, codified in Section 107 of the
Copyright Act, requires a court to consider four nonexclusive factors:
(1) the purpose and character of the use, including whether such use is
of a commercial nature or is for nonprofit education 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.
As to the first factor, the Commission miscasts Public Resource’s argument
as one that Public Resource’s purpose in copying entire O.C.G.A. volumes and
encouraging others to do the same was its “alleged desire to teach the public about
Commission’s copyrighted works” because Public Resource decided that “the
public needs to be educated.” [Doc. No. 55 at 12]. The Court, however,
recognized the difference between teaching and access, stating that Public
Resource “purports to provide wider distribution of the annotations.” [Doc. No. 44
-7LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 12 of 28

at 16]. In fact, Public Resource’s only interest in “wider distribution of the
annotations” is to serve its goal of improving the public’s access to the only
official code of Georgia—which by the State’s own definition is not the official
code unless it includes the annotations.
The scope of fair use is also greater when informational—as opposed to
more creative—works are involved. Copyright in a factual compilation like the
O.C.G.A. is “thin” and does not extend to the facts themselves. Feist Publ’ns., Inc.
v. Rural Tel. Serv. Co., 499 U.S. 340 (1991); Bellsouth, 999 F.3d at 1445.
Moreover, most of the annotations—such as indexes, tables, and research
references—are even less expressive and more factual than the summaries of
judicial decisions and attorney general and state bar opinions. Public Resource
reasonably argued that Lexis/Nexis’s selection and arrangement of preexisting
facts in the annotations displayed insufficient creativity to be protectable, relying
on Matthew Bender & Co., Inc. v. West Pub. Co., 158 F.3d 674, 681-82 (2d Cir.
1998).
As to the third factor, Public Resource reasonably argued that its use of
100% of each O.C.G.A. volume, and thus 100% of the annotations, was necessary
to achieve its purpose of improving access to the only official code of Georgia. It
relied upon, and cited, a number of cases in which using an entire copyrighted
-8LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 13 of 28

work for a transformative purpose was held to be fair use, including Sony Corp. of
Am. v. Universal City Studios, Inc., 464 U.S. 417, 449-450 (1984); Authors’ Guild
v. Google, Inc., 804 F.3d 202, 225 (2d. Cir. 2015) (Leval, J), cert. denied, No. 15849, 2016 WL 1551263 (April 18, 2016); American Inst. of Physics v. Schwegman,
Lundberg & Woessner, P.A., No. 12-528, 2013 WL 4666330, at *11 (D. Minn.
Aug. 30, 2013); A.V. ex rel v. iParadigms, LLC, 562 F.3d 630, 639 (4th Cir. 2009);
Swatch Grp. Mgm’t. Serv. Ltd. v. Bloomberg L.P., 756 F.3d 73, 85 (2d. Cir. 2014);
Authors’ Guild, Inc. v. Hathitrust, 755 F.3d 87, 97 (2d. Cir. 2014). These cases
illustrate that the purpose of using an entire work is relevant to whether that factor
weighs in favor of a finding of fair use. Here, Public Resource’s purpose in
scanning and posting the O.C.G.A. was not merely to educate the public about the
code. It was also to facilitate scholarship, criticism and analysis of the official
code, and to encourage public engagement with the law, indeed so that people will
be able to use the Internet and programming skills to create other websites that
make the O.C.G.A. even more useful to Georgia’s citizens and the general public.
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); Campbell, 510 U.S. at
590. The Eleventh Circuit has held that the scope of fair use in a given case, and
whether the secondary use has injured the market for the copyrighted work, is an
-9LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 14 of 28

evidentiary question. Cambridge Univ. Press v. Patton, 769 F.3d 1232, 1258,
1276 (11th Cir. 2014) (affirming finding that use did not injure the market for
plaintiffs’ works where publishers offered no evidence showing that they lost any
book sales due to defendant’s use). Here, the Commission offered no actual
evidence of injury from the availability of the O.C.G.A. on the Internet; it only
argued that injury was inevitable. Therefore, Public Resource was objectively
reasonable in contending that most or all of the fair use factors weighed in favor of
a finding of fair use.
C.

Public Resource’s motivations were first, to improve access and
usability of the State’s only official code, and second, to engage
Georgia’s legislators in a dialogue about those goals.

Public Resource’s posting of the O.C.G.A., and its litigation positions were
primarily motivated by its mission to improve public access to sources of law such
as the O.C.G.A. and to encourage others to make the law more useful for the
public. Secondarily, Public Resource invited Georgia’s legislators to engage in a
dialogue about how legislators and the Commission could improve Georgia’s
citizens and the general public’s access to the O.C.G.A.

- 10 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 15 of 28

The Commission contends that Public Resource’s motivation was, instead,
to provoke the State to litigate1 or “force the Commission to capitulate and adopt
Public Resource’s ideas.” [Doc. No. 55-1 at 6]. The Commission complains of
Public Resource’s “planning and soliciting funds for its infringement” and
“taunting the Commission to file a lawsuit by informing it of Public Resource’s
infringement.” [Id. at 8].
The Commission’s hyperbole is contradicted by the record. First, Public
Resource did not inform the Commission of its “infringement” because Public
Resource has consistently taken the position that the O.C.G.A. is in the public
domain. The very letter the Commission selectively quotes as evidence of
“taunting the Commission to file a lawsuit” states Public Resource’s primary
motivation for scanning and posting the O.C.G.A. volumes: “Our purpose in
making these statutes available is to promote access to the law by citizens and to
promote innovation in ways the statutes are made available so that public servants,
members of the bar, citizens, and members of the business community have ready
access to the laws that govern them.” [Doc. No. 17-3; Doc. No. 29-3 at ¶ 45]. The
While the Commission asserts, without citing any facts or law, that it had a
fiduciary duty to file suit to “defend” its copyrights in the annotations or else it
would be derelict in that duty, the Commission nevertheless waited several years
after Public Resource scanned and posted the O.C.G.A., and after it declined to
cease and desist, to file this action.
1

- 11 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 16 of 28

letter continues: “Access to the law is a fundamental aspect of our system of
democracy, an essential element of due process, equal protection, and access to
justice.” [Id.] Public Resource brought its scanning, posting and distribution of
the O.C.G.A. to the attention of Georgia’s legislature to invite a dialogue, hoping
to encourage—not force—the Commission and the legislature to leverage the
power of the Internet to improve its citizens’ access to the laws that govern them.
Public Resource’s founder, Carl Malamud, testified in his declaration about his
successful dialogues with Oregon, the District of Columbia and the city of
Chicago, each of which made their laws more accessible and useful to the public
after engaging in constructive discussions with Public Resource. [Doc. No. 29-3 at
¶¶ 34-41]. Thus, Public Resource’s motivation was not only in good faith but in
the furtherance of the common good, even if it did not ultimately prevail.
The Commission also asserts that “Public Resource’s motivation was to
challenge both the laws of the State of Georgia and federal copyright law.” [Doc.
55-1 at 5]. This is overreaching and incorrect. Both of Public Resource’s defenses
relied on federal copyright law. Specifically, Public Resource relied on federal
case law and guidance from the Copyright Office holding that edicts of
government are not subject to copyright. [Doc. No. 16 at ¶ 20 and ¶¶ 42-50]; [Doc.
No. 29-2 at 5-10]. It also relied on 17 U.S.C. § 102(b), excluding from copyright
- 12 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 17 of 28

“ideas” and “principles,” among other things, and on an 11th Circuit case holding
that that facts and obvious organizations of facts in case reporters are not
copyrightable. [Doc. No. 29-2 at 11-12]. Finally, it relied on 17 U.S.C. § 107,
which codifies the fair use defense. [Doc. No. 16 at ¶¶ 51-53 [Doc. No. 29-2 at 1323]. Second, Public Resource did not challenge the laws of the State of Georgia.
On the contrary, it relied on statements in the O.C.G.A. that those who rely on
other, unofficial compilations for Georgia statutes do so at their peril. [Doc. No.
29-2 at 10]. The Commission’s allegation of “challenging Georgia’s law” may
refer to sessions laws that provide that the O.C.G.A.’s annotations are not enacted
as statutes. But Public Resource did not challenge those laws or ask the Court to
hold that the annotations themselves have the force of law. Instead, it argued that
those sessions laws do not make the annotations separate, copyrightable works.
Instead, Public Resource argued that the annotations are in the public domain along
with the rest of the O.C.G.A, an uncopyrightable work because the annotated code
is the only official code of the State of Georgia. [Doc. No. 29-2 at 8-9].
Additionally, the Commission’s argument that Public Resource’s motivation was
to goad the Commission into suing it is highly speculative and should not weigh in
favor of awarding fees and costs. See Advanced Tech. Servs., U.S. Dist. LEXIS
90361, at *5, (N.D. Ga. 2013) (denying motion for fees where, among other things,
- 13 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 18 of 28

the prevailing party’s argument that the losing plaintiff sued simply to harass the
defendants was “very speculative.”). For all these reasons, Public Resource’s
motivation weighs against an award of attorney’s fees and costs.
D.

Public Resource did not willfully infringe the State’s copyright in
the annotations.

The Commission also asserts that Public Resource willfully infringed
Georgia’s copyright because it readily admitted deliberately copying and
distributing the O.C.G.A. [Doc. No. 30-1 at 8]. The Court, in contrast, recognizes
that Public Resource’s position has always been that the entire O.C.G.A. works,
including the annotations, are not copyrightable because they are government
edicts, because the O.C.G.A. is the only official code of Georgia. [Doc. No. 44 at
11]. That the Court held otherwise does not make Public Resource a willful
infringer. The Court did not reach the issue of whether Public Resource willfully
infringed copyrights in the annotations. [Doc. No. 44, passim].
The Commission relies on Cable/Home Commc’n Corp. v. Network Prods.
Inc., 902 F.2d 829 (11th Cir. 1990) for its position that an infringer’s willfulness
weighs heavily in favor of awarding fees. The defendants’ conduct in that case,
however, was strikingly different and egregious compared with that of Public
Resource. Cable/Home concerned “the recurring problem of piracy of satellite
television programming.” Id. at 834. There was no dispute that the defendants
- 14 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 19 of 28

knew their for-profit sales of pirate chips were both infringing and illegal because
they informed potential purchasers of those facts. Id. at 837. Additionally, the
defendants continued promoting pirate chips despite the Court’s issuance of a
preliminary injunction. Id. at 839. Here, Public Resource had a good faith belief
that the works it copied were not subject to federal copyright law, and an
objectively reasonable basis for that belief. Thus, Cable/Home offers no support
for the Commission’s argument that the Court should award attorney’s fees in this
very different action.
E.

An award of attorney’s fees and costs is unwarranted because
litigation of meritorious arguments like Public Resource’s
furthers the interests of the Copyright Act.

“The touchstone of attorney’s fees under § 505 is whether imposition of
attorney’s fees will further the interests of the Copyright Act . . . .” Mitek
Holdings, 198 F.3d at 842. Those interests are furthered “by encouraging the
raising of objectively reasonable claims and defenses, which may serve not only to
deter infringement but also to ensure ‘that the boundaries of copyright [are]
demarcated as clearly as possible’ in order to maximize the public exposure to
valuable works.” Id. at 843-43 quoting Fogerty, 510 U.S. at 526-27. “When close
infringement cases are litigated, copyright law benefits from the resulting
clarification of the doctrine’s boundaries.” Lotus Dev. Corp. v. Borland Int’l, Inc.,
- 15 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 20 of 28

140 F. 3d 70, 75 (1st Cir. 1998) (the need to encourage meritorious defenses is a
factor a district court may consider); see also Mitek Holdings, 198 F.3d at 142
(vacating district court’s fee award and remanding because the district court did
not assess whether the imposition of fees would further the goals of the Copyright
Act).
As the Court acknowledged, this is an unusual case because most official
code are not annotated and most annotated codes are not official. Both parties’
briefs illustrate that there have been few cases dealing with copyrightability of
portions of official codes.
The Commission argues that an award of fees is needed because without
one, Public Resource and other parties will be encouraged to infringe copyrights.
But because this Court rejected Public Resource’s arguments that copyright cannot
protect annotations that are part of Georgia’s only official code, and rejected its
fair use defense, it cannot be disputed that the Court’s ruling on Public Resource’s
litigation positions more clearly demarcates the boundaries of copyright.
Therefore, the Court’s decision, holding that such annotations are independently
copyrightable, will deter future copying and distribution of official state codes that
are annotated, even without an award of fees.

- 16 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 21 of 28

It is not clear why the Commission, for the proposition that a party’s bad
faith, frivolity, unreasonableness or willful wrongdoing weigh heavily in a court’s
consideration, cites dicta in White v. Alcon Film Fund, LLC, No. 1:13-CV-1163TCB, 2015 WL 11199163, at * 4 (N.D. Ga. Jan. 30, 2015). In that copyright case,
the court denied a prevailing party’s motion for fees and costs, reasoning “there is
little need to deter claims brought in good faith with a sufficient, albeit ultimately
unsuccessful, factual basis.” Id. at*3. That court, like the Mitek Holdings court,
concluded that it does not promote the purposes of the Copyright Act to award fees
against a party that has advanced a reasonable, yet unsuccessful claim. Id. On the
contrary, “the purposes of the Copyright Act are well-served by the litigation of
meritorious arguments” even if they do not survive summary judgment. Id.
Despite the Commission’s assertion that without an award of attorney’s fees,
Public Resource and similar third parties “will be encouraged to flagrantly violate
copyright laws,” the Commission points to no other parties copying and posting
annotated codes, either before or after this Court’s decision granting the
Commission’s motion for partial summary judgment. There is no dispute that,
upon learning of the Court’s order, Public Resource immediately took down all
versions of the O.C.G.A. from its website and any other website within its
possession, custody or control, and joined with the Commission in moving for
- 17 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 22 of 28

entry of an injunction. [Doc. No. 45]. This is strong evidence that an award of
attorney’s fees, in addition to the Court’s decision, is not needed for deterrence.
The Commission’s allegation that Public Resource is “in the business of
challenging laws and targeting entities like the Commission” ignores Public
Resource’s primary mission of improving access to public domain sources of law.
The Commission next asserts that attorney’s fees are necessary in this action
because ‘“defendants must not be able to sneer in the face of copyright owners and
copyright laws”’ quoting Cable/Home, 902 F.2d at 851, quoting International
Korwin Corp. v. Kowalczyck, 855 F.2d 375, 383 (7th Cir. 1988). But the
“sneering” in Cable/Home was by defendants who sold pirate chips for stealing
cable television broadcasts, for profit, knowing full well that the pirate chips
violated the Copyright Act. Additionally, the Cable/Home court used the “sneer”
quotation in the section of its opinion affirming the district court’s decision to
award increased statutory damages—not attorney’s fees—under 17 U.S.C. § 504
(c)(2). Here, there is no evidence in the record that Public Resource used the
O.C.G.A. intending to violate copyrights in the annotations for profit. On the
contrary, Public Resource for years expounded on its reasons for concluding that
the O.C.G.A. is in the public domain.

- 18 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 23 of 28

The Commission repeatedly accuses Public Resource of “flagrantly violating
copyright laws “simply because they believe they ‘know better’” or “to advance its
‘cause’ through flagrant violation” [Docket No. 55-1 at 4, 14]. Similarly, the
Commission repeatedly asserts that Public Resource’s legal theories are based on
its own views of what the law should be or the format a sovereign state should use
to publish its laws [Id. at 5, 12]. It seems to offer two undisputed facts in support
of these characterizations: (1) that Carl Malamud campaigned, unsuccessfully, to
be appointed U.S. Public Printer and (2) that Public Resource advocated for an
amendment to the U.S. Copyright Act to state that state and local official legal
documents are not copyrightable for reasons of public policy.
Neither of these facts is evidence that Public Resource is inciting lawsuits
because its advocacy efforts have “failed.” Mr. Malamud’s interest in serving as
Public Printer in the Obama administration had nothing to do with Public
Resource’s posting of the O.C.G.A. Both efforts are merely examples of Mr.
Malamud’s efforts to make primary legal materials readily available to the public.
Public Resource advocated, and continues to advocate, for an amendment of the
Copyright Act, not to change the scope of copyright law, but to provide in the
Copyright Act, expressly, what federal common law already provides. While the
Commission calls this a failed effort, and implies that the proposed amendment
- 19 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 24 of 28

was nothing more than wishful thinking, it was supported by dozens of law
professors from some of the nation’s most prestigious universities. That the
amendment was not enacted after Mr. Malamud advocated for it proves nothing:
partisan gridlock in Washington has prevented the passage of any significant
copyright law revision, or, for that matter, nearly any other significant federal
legislation, in recent years.
Finally, the Commission claims that Public Resource “has a history of
inciting copyright litigation” because it is currently a defendant in two other
copyright infringement suits arising from its posting of copyrighted safety
standards. But being a defendant in several lawsuits is not evidence of inciting
litigation. For example, companies perceived to have deep pockets are regularly
sued by dozens of patent trolls, yet they are never accused of inciting patent
litigation by going about their business. The Commission’s accusation also
ignores that Public Resource has been placing federal materials and state and
municipal codes on its website more than a decade. If posting these primary legal
materials constituted “inciting copyright litigation,” it would be surprising that so
few copyright holders have filed suit against Public Resource.
Finally, the Court can consider that throughout this litigation, the
Commission has tried to influence the Court’s analysis of the parties’ legal
- 20 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 25 of 28

arguments through personal attacks on Public Resource and its founder. Its
complaint accused Public Resource of employing a strategy of “terrorism” to force
government entities to publish documents on Mr. Malamud’s terms. [Doc. No. 11
at ¶ 20]. Its current moving papers are peppered with similar inappropriate
invective. For its part, Public Resource has never stooped to this level. Moreover,
Public Resource, whenever possible, stipulated to facts that the Commission, as
plaintiff, would otherwise have had to prove, and also stipulated to a permanent
injunction, minimizing the Commission’s attorney’s fees and costs. The Court
would be entitled to consider the parties’ respective litigation conduct as part of all
the circumstances relevant to the Commission’s request for an award of fees and
costs.
F.

The Commission’s request for fees and costs of a quarter million
dollars is patently unreasonable.

If the Court grants the Commission’s motion, Public Resource submits that
the Commission’s requested award is unreasonable. This action concerned
essentially the Commission’s one claim for injunctive relief for copyright
infringement and Public Resource’s defenses. It is difficult to understand how the
Commission incurred the staggering amount of $250,000 when this matter
involved only drafting two complaints and a stipulation, and briefing cross motions
for summary judgment. [Doc. Nos. 1, 10, 11, 17, 29, 30, 33, 34, 40, 43]. The
- 21 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 26 of 28

parties propounded minimal paper discovery, produced fewer than 2,000 pages of
documents, and took no depositions. There were no discovery disputes or hearings.
The parties were able to stipulate to numerous facts not in dispute [Doc. No. 17],
streamlining the briefing of the cross-motions for summary judgment and partial
summary judgment.
Public Resource is dismayed to see the State spend approximately a quarter
million of the taxpayer’s dollars to prevent its own citizens and the general public
being able to access the full O.C.G.A. online for free and to use it as they see fit.
This is especially wasteful where the State failed to introduce any evidence of
actual injury, to itself or even to its publisher, from Public Interest’s posting.
Public Resource hopes the Court will closely scrutinize the Commission’s
counsel’s specification and itemization of the requested award, including time
records, to determine whether the requested fees and costs are truly reasonable.
III. CONCLUSION
For the reasons set forth above, the Court should deny the Commission’s
motion for an award of attorney’s fees and other costs.

- 22 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 27 of 28

Respectfully submitted this 5th day of May, 2017.

By: /s/ Elizabeth H. Rader
Sarah P. LaFantano
Georgia Bar No. 734610
[e-mail]
ALSTON & BIRD LLP
One Atlantic Center
1201 West Peachtree Street
Atlanta, GA 30309-3424
Telephone [phone]
Fax [phone]
Elizabeth H. Rader
Admitted pro hac vice
[e-mail]
ALSTON & BIRD LLP
950 F Street, NW
Washington, DC 20004
Telephone: [phone]
Fax: [phone]
Attorneys for Defendant
Public.Resource.Org, Inc.

- 23 LEGAL02/37166208v4

Case 1:15-cv-02594-RWS Document 56 Filed 05/05/17 Page 28 of 28

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.,

)
)
) CIVIL ACTION
)
) FILE NO. 1:15-CV-2594-MHC
)
)
)
)
)

Defendant.
CERTIFICATE OF SERVICE
I hereby certify that I have electronically filed the foregoing Defendant’s
Memorandum of Law In Opposition to Plaintiff’s Motion for an Award of
Attorney’s Fees and Other Costs with the Clerk of Court using the CM/ECF
system which will automatically send notification of such filing to all attorneys of
record.

/s/ Elizabeth H. Rader
Elizabeth H. Rader

-1LEGAL02/36379790v4