|||UNITED STATES COURT OF APPEALS For the Second Circuit August Term, 2000
|||Docket No. 00-9011(L),, 00-9169(XAP)
|||July 25, 2001
|||COUNTY OF SUFFOLK, NEW YORK, PLAINTIFF-APPELLANT-CROSS-APPELLEE,
FIRST AMERICAN REAL ESTATE SOLUTIONS, DEFENDANT-APPELLEE-CROSS-APPELLANT,
EXPERIAN INFORMATION SOLUTIONS, INC., DOING BUSINESS AS EXPERIAN, DOING BUSINESS AS EXPERIAN REAL ESTATE SOLUTIONS, TRW REDI PROPERTY DATA, ALSO KNOWN AS INFORMATION SYSTEMS AND SERVICES, INC., DEFENDANTS.
|||Jeltje DeJong, Assistant County Attorney, Hauppauge, Ny, on behalf of
Robert J. Cimino, Suffolk County Attorney, for Plaintiff-Appellant-Cross-Appellee.
Andrew L. Deutsch, Piper Marbury Rudnick & Wolfe Llp, New York, NY (Edward
F. Maluf, Christine M. Jaskiewicz, of counsel), for Defendant-Appellee-Cross-Appellant.
Frank K. Walsh, Assistant Solicitor General, Albany, NY (Preeta D. Bansal,
Solicitor General, Daniel Smirlock, Deputy Solicitor General, of counsel),
on behalf of Eliot Spitzer, Attorney General of the State of New York, for
amicus curiae State of New York. Michael D. Hess, Corporation Counsel of
the City of New York, New York, NY (Leonard Koerner, Katherine Winningham,
of counsel), for amicus curiae City of New York.
|||Before: Jacobs, Straub, and Pooler, Circuit Judges.
|||The opinion of the court was delivered by: Straub, Circuit Judge
|||Argued: February 28, 2001
|||Appeal from an opinion and order of the United States District Court for
the Southern District of New York (John F. Keenan, Judge) granting Defendant-Appellee-Cross-Appellant
First American Real Estate Solutions's motion for reconsideration and dismissing
Plaintiff-Appellant-Cross-Appellee County of Suffolk's complaint in its
entirety for failure to state a claim upon which relief could be granted.
The District Court concluded that, under New York State's Freedom of Information
Law, First American may freely copy and distribute Suffolk County's official
tax maps and that Suffolk County may not prevent First American from doing
so on the basis of its copyrights.
|||We hold that New York State's Freedom of Information Law does not abrogate
Suffolk County's copyrights in its official tax maps and find that it is
possible for Suffolk County to comply with its obligations under the Freedom
of Information Law while preserving its rights under the Copyright Act.
We therefore vacate the judgment below and remand for further proceedings.
We also dismiss as moot First American's cross-appeal asserting that the
District Court abused its discretion in refusing to award it costs and attorneys'
fees, pursuant to 17 U.S.C. § 505.
|||Vacated and remanded.
|||Plaintiff-Appellant-Cross-Appellee County of Suffolk, New York ("Suffolk
County") appeals from an opinion and order of the United States District
Court for the Southern District of New York (John F. Keenan, Judge) granting
Defendant-Appellee-Cross-Appellant First American Real Estate Solutions's
("First American") motion for reconsideration and dismissing Suffolk
County's complaint in its entirety for failure to state a claim upon which
relief may be granted, pursuant to Fed. R. Civ. P. 12(b)(6). First American
cross-appeals from the District Court's denial of its motion for costs and
attorneys' fees under the Copyright Act, 17 U.S.C. § 505.
|||Suffolk County sued First American, and other companies acquired by First
American, *fn1 under the Copyright Act
of 1976 (the "Copyright Act"), 17 U.S.C. § 101 et.
seq. Suffolk County alleged that the defendants infringed its copyrights
in its official tax maps by publishing and marketing those maps without
Suffolk County's permission. First American moved to dismiss for failure
to state a claim, arguing, inter alia, that New York State's Freedom of
Information Law ("FOIL") bars Suffolk County from asserting a
copyright in its official tax maps.
|||The District Court initially denied First American's motion. County of
Suffolk v. Experian Info. Solutions, Inc., No. 99 Civ. 8735 (JFK), 2000
WL 628731 (S.D.N.Y. May 15, 2000) ("County of Suffolk I"). After
granting First American's motion for reconsideration, the District Court
then agreed with First American and held that Suffolk County may not use
its copyrights to prevent First American from freely disseminating its official
tax maps. County of Suffolk v. Experian Info. Solutions, Inc., No. 99 Civ.
8735 (JFK), 2000 WL 1010262 (S.D.N.Y. July 21, 2000) ("County of Suffolk
II"). The District Court then denied First American's motion for attorneys'
fees. Suffolk County timely appealed, and First American cross-appealed
from the denial of its attorneys' fees motion.
|||This case presents several novel issues including (1) whether, and to
what degree, deference is due an advisory opinion analyzing the potential
conflict between FOIL and the Copyright Act by New York State's Committee
on Open Government, which is required by statute to issue advisory opinions
regarding FOIL; (2) whether, by enacting FOIL, New York abrogated its municipalities'
copyrights; and (3) whether the official tax maps are in the public domain
from their inception. We hold that FOIL does not abrogate Suffolk County's
copyrights and find that it is possible for Suffolk County to comply with
its obligations under FOIL while preserving its rights under the Copyright
Act. In so holding, we decline to defer to the Committee on Open Government's
advisory opinion. We also find that Suffolk County sufficiently alleged
that its tax maps possess enough originality to withstand First American's
motion to dismiss. Finally, we find, at least on the record before us, that
Suffolk County's official tax maps cannot be deemed, as a matter of law,
to be in the public domain since their inception. We thus vacate the judgment
below and remand for further proceedings. In light of this disposition,
we do not address First American's cross-appeal and dismiss it as moot.
|||Because this is an appeal from the grant of a motion to dismiss the complaint,
we accept as true all factual allegations set forth in the complaint, and
any documents attached, incorporated by reference, or integral to the claims
asserted, and we draw all reasonable inferences in favor of Suffolk County.
See Schnall v. Marine Midland Bank, 225 F.3d 263, 266 (2d Cir. 2000).
|||I. Factual Background
|||During 1974, Suffolk County, through its Real Property Tax Service Agency,
created and designed a series of original maps ("tax maps") and
an index system reflecting the ownership, size, and location of real property
in each of Suffolk County's political subdivisions. Compl. ¶ 10. Suffolk
County is required by law to create such tax maps and to make them available
to the public. N.Y. Real Prop. Tax Law § 503(1)(a), (2) (McKinney 2000).
All tax districts and special district boundaries were created and referenced
by Suffolk County on its maps and indices. Compl. ¶ 10. Suffolk County creates
new maps and indices annually to reflect alterations in size, shape, and/or
location of parcels of land, subdivisions, or roadways. Id. Currently, there
are twelve albums representing ten townships containing over 4,600 tax maps,
which show over 500,000 parcels of land. Id.
|||Suffolk County alleges that its "tax maps contain a substantial amount
of original material, research, compilation and organization wholly original
with the plaintiff and are copyrightable subject matter under the laws of
the United States." Id. ¶ 11. These tax maps, Suffolk County asserts,
"are the result of substantial work, effort and expense." Id.
Suffolk County "registered its copyright claims from the initial cartographic
compilation in 1974, and during various times thereafter in order to copyright
new and amended maps." Id. ¶ 12. Suffolk County has received copyright
registrations for these works and has affixed a notice of copyright to the
tax maps it has published or sold to the public. Id. It also affixed a notice
of copyright in the introduction to each tax map album. Id. Suffolk County
is the sole proprietor of all right, title, and interest in and to such
copyrights and in and to its maps. Id. ¶ 14.
|||Suffolk County alleges that the defendants have infringed its copyrights
in the tax maps by publishing and placing on the market, without license
or its consent, copies of the tax maps and CD-ROM disks containing the maps.
Id. ¶¶ 15-16. Suffolk County claims that it notified the defendants of their
alleged infringement but that the defendants refused to cease their infringing
conduct. Id. ¶ 18. Suffolk County then filed this action seeking to enjoin
the defendants from copying, utilizing, and marketing in any manner the
tax maps, or any portion thereof, and seeking damages suffered as a result
of the defendants' infringement.
|||First American moved to dismiss for failure to state a claim, arguing
that (1) the tax maps lack sufficient originality to qualify for copyright
protection because their content is dictated by state regulation; (2) the
tax maps are sufficiently analogous to judicial opinions and statutes to
be deemed in the public domain from their inception and, hence, not entitled
to copyright protection; and (3) FOIL bars Suffolk County from owning a
copyright in its tax maps.
|||II. Overview of New York State's Freedom of Information Law
|||New York enacted its Freedom of Information Law to provide the public
with greater access to governmental records and to increase public accountability.
N.Y. Pub. Off. Law § 84 (McKinney 1988). Under FOIL, state agencies, which
include the State's sixty-two counties, *fn2
must "make available for public inspection and copying all records,"
subject to certain exceptions not relevant here. N.Y. Pub. Off. Law § 87(2)
(McKinney Supp. 2001). The covered entities may deny access to those records
falling within an enumerated exception and must, if the person seeking access
appeals the denial in writing, fully explain in writing the reasons for
its denial. Id.; id. § 89(3) & (4). FOIL establishes the Committee on
Open Government (the "Committee"), which, among other tasks, is
required to furnish advisory opinions to any person or agency. N.Y. Pub.
Off. Law § 89(1) (McKinney Supp. 2001). The Committee, however, does not
substantively participate in the review process established by subdivision
4 of section 89 and only receives a copy of the state agency's determination
whether to provide access after an appeal to that agency has been made.
John P. v. Whalen, 54 N.Y.2d 89, 95, 429 N.E.2d 117, 120, 444 N.Y.S.2d 598,
601 (1981). The Committee is required annually to propose recommendations
for changes in the law to the Governor of the State of New York and the
State Legislature. N.Y. Pub. Off. Law § 89(1)(b)(v) (McKinney Supp. 2001).
|||III. Procedural History
|||The District Court initially denied First American's motion to dismiss,
holding that (1) Suffolk County was entitled to offer evidence regarding
the originality of its tax maps in order to support its claim of copyright
infringement; (2) tax maps are not in the public domain from inception;
and (3) FOIL, by its text, does not prohibit Suffolk County from enforcing
its copyrights. County of Suffolk I, 2000 WL 628731, at *3-*5. The District
Court refused to defer to two unpublished advisory opinions of the Committee,
in which the Committee's Executive Director indicated his view that a local
government's claim of copyright would be superseded by FOIL. Id. at *5 n.2.
The effect of FOIL on a local government's copyright was not analyzed extensively
in either of these Committee opinions.
|||After First American's motion was briefed and submitted, but before the
District Court filed County of Suffolk I, the Committee issued a third advisory
opinion regarding the effect of FOIL on a state agency's copyright. *fn3
Unlike the prior opinions, this advisory opinion contained substantial analysis.
First American moved for reconsideration solely on the FOIL issue, emphasizing
this third advisory opinion, and argued that the District Court should defer
to the Committee's interpretation of FOIL unless that interpretation is
irrational or unreasonable. The District Court agreed, granted the motion
for reconsideration, and then dismissed Suffolk County's complaint in its
entirety. The District Court found that this new advisory opinion was neither
irrational nor unreasonable. County of Suffolk II, 2000 WL 1010262, at *5.
The District Court further analyzed FOIL and Suffolk County's obligation
to create tax maps by law. The District Court concluded that prohibiting
Suffolk County from enforcing its copyrights would not generate an economic
disincentive to creating tax maps. Id. Suffolk County timely appealed the
order dismissing its complaint. In its appeal, Suffolk County challenges
both the District Court's decision to grant First American's motion for
reconsideration and the dismissal of its complaint. In this appeal, we have
also received the benefit of the participation of amici curiae State of
New York ("State") and City of New York ("City"). Amici
argue on behalf of their interests in their use and development of geographic
information systems ("GIS"). *fn4
We note the amici's interests not because we intend to decide how FOIL impacts
GIS, but because we recognize the broader context that many of the issues
raised on appeal implicate.
|||In a subsequent order, the District Court denied First American's application
for an award of costs, including reasonable attorneys' fees, pursuant to
17 U.S.C. § 505, finding that Suffolk County's case was neither frivolous
nor objectively unreasonable. First American timely cross-appealed from
this order. Given our disposition of this appeal, however, we do not address
the merits of First American's cross-appeal.
|||I. The Motion for Reconsideration
|||On appeal, Suffolk County contends that the District Court abused its
discretion in granting the motion for reconsideration based on the third
Committee advisory opinion because, Suffolk County argues, that opinion
was neither controlling precedent nor a change in the applicable law.
|||Preliminarily, we must address whether the grant of a motion for reconsideration
is appealable. In Shrader v. CSX Transportation, Inc., we expressed "grave
doubts" whether such a motion is appealable, even if we properly had
jurisdiction over the case for independent reasons. 70 F.3d 255, 256 n.1
(2d Cir. 1995). As we noted, such a decision, by itself, would not be an
appealable final order sufficient to provide an appellate court with jurisdiction.
Id. But because we found that the merits of the motion at issue in Shrader
were easily resolved, we proceeded to address them without suggesting that
the grant of a motion for reconsideration is in fact reviewable. See id.
at 256-57 & n.1 (finding that the district court's decision to reconsider
its earlier ruling was not an abuse of discretion).
|||Here, First American provided the District Court with a new advisory opinion,
containing substantial analysis, authored by the entity specifically charged
by FOIL with providing advisory opinions regarding that statute-in short,
a decision "that might reasonably be expected to alter the conclusion
reached by the court." Id. at 257. Although we ultimately disagree
with the weight the District Court accorded this new opinion, we cannot
say that it exceeded its allowable discretion in reconsidering its earlier
order. As in Shrader, however, we do not suggest that the grant of a motion
to reconsider is necessarily reviewable. See id. at 257 n.1.
|||II. Dismissal of the Complaint
|||A. Relevant Legal Standards
|||We review de novo a district court's decision to dismiss a complaint for
failure to state a claim upon which relief may be granted. See Friedl v.
City of New York, 210 F.3d 79, 83 (2d Cir. 2000). "The issue is not
whether a plaintiff will ultimately prevail but whether the claimant is
entitled to offer evidence to support the claims." Villager Pond, Inc.
v. Town of Darien, 56 F.3d 375, 378 (2d Cir. 1995) (internal quotation marks
omitted), cert. denied, 519 U.S. 808 (1996). To establish a claim of copyright
infringement, "a plaintiff with a valid copyright must demonstrate
that: (1) the defendant has actually copied the plaintiff's work; and (2)
the copying is illegal because a substantial similarity exists between the
defendant's work and the protectible elements of plaintiff's." Hamil
Am. Inc. v. GFI, 193 F.3d 92, 99 (2d Cir. 1999) (internal quotation marks
omitted), cert. denied, 528 U.S. 1160 (2000).
|||B. May States, and Their Subdivisions, Obtain a Copyright?
|||Although the federal government does not possess a statutory right to
obtain copyright protection for its works, 17 U.S.C. § 105, the Copyright
Act is silent as to the rights of states or their subdivisions. Nor is there
an indication in the statute that copyright ownership is limited to private
persons. See 17 U.S.C. § 101 ("`Copyright owner,' with respect to any
one of the exclusive rights comprised in a copyright, refers to the owner
of that particular right."); id. § 102 (noting simply that copyright
protection subsists "in original works of authorship . . .").
By specifying a limitation on ownership solely against the federal government,
the Copyright Act implies that states and their subdivisions are not excluded
from protection under the Act. See Bldg. Officials & Code Adm. v. Code
Tech., Inc., 628 F.2d 730, 735-36 (1st Cir. 1980) ("Works of state
governments are therefore left available for copyright protection by the
state or the individual author . . . ."); Nat'l Conf. of Bar Exam'rs
v. Multistate Legal Studies, Inc., 495 F. Supp. 34, 35 (N.D. Ill. 1980),
aff'd, 692 F.2d 478 (7th Cir. 1982); 1 Melville B. Nimmer & David Nimmer,
Nimmer on Copyright § 5.06[A], at 5-81 n.1 (2001); cf. Real Estate Data,
Inc. v. Sidwell Co., 809 F.2d 366, 371 (7th Cir. 1987) (indicating that,
under the Copyright Act of 1909 "work-for-hire" doctrine, the
county, which contracted for the production of tax maps, was presumed to
be the copyright owner (rather than the creator of the maps)). Thus, Suffolk
County may own a copyright under the Copyright Act. The question remains
whether Suffolk County has sufficiently alleged that it possesses a valid
copyright in its tax maps.
|||C. Should Suffolk County Be Permitted to Present Evidence as to the Maps'
|||To allege a claim of copyright infringement, Suffolk County must claim
that a substantial similarity exists between the defendant's work and the
protectible elements of its work. To be "protectible," these elements
must be original. See Feist Publ'ns Inc. v. Rural Tel. Serv., Co., 499 U.S.
340, 345-49 (1991) (holding that a compilation of facts does not qualify
for copyright protection unless it possesses sufficient originality, that
is, "it possesses at least some minimal degree of creativity");
Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 747 (2d Cir. 1998).
As an alternate ground for affirmance, First American argues that Suffolk
County's tax maps lack sufficient originality, and are hence not subject
to copyright protection, because the content and the form of the maps are
dictated by state law and regulations.
|||In Streetwise Maps, we addressed what portion, if any, of a map could
be protected against copyright infringement. We noted that items such as
street location and landmarks were "physical facts"-and thus not
protected elements-but recognized that the presentation of such physical
facts could be original. Id. at 747-48; accord Mason v. Montgomery Data,
Inc., 967 F.2d 135, 141 (5th Cir. 1992). We thus focused on "the overall
manner in which [the plaintiff] selected, coordinated, and arranged the
expressive elements in its map, including color, to depict the map's factual
content." Streetwise Maps, 159 F.3d at 748. The level of creativity
required to demonstrate that the work is original "`is extremely low;
even a slight amount will suffice.'" Mason, 967 F.2d at 142 (quoting
Feist, 499 U.S. at 345). Suffolk County's complaint alleges that its "tax
maps contain a substantial amount of original material, research, compilation
and organization wholly original with the plaintiff." Compl. ¶ 11.
The District Court thus correctly found that Suffolk County has sufficiently
alleged that its work is protected.
|||D. Did the New York Legislature, by Enacting FOIL, Abrogate Suffolk County's
|||The New York State Legislature may enact laws that impact the property
or affairs of local governments, such as Suffolk County, especially on matters
of state concern. See City of New York v. State of New York, 94 N.Y.2d 577,
589-90, 730 N.E.2d 920, 925-26, 709 N.Y.S.2d 122, 127-28 (2000); see also
Kelley v. McGee, 57 N.Y.2d 522, 535-39, 443 N.E.2d 908, 912-15, 451 N.Y.S.2d
434, 438-41 (1982) (tracing evolution of home rule amendment to New York
State's Constitution); cf. Williams v. Mayor of Baltimore, 289 U.S. 36,
40 (1933) ("A municipal corporation, created by a state for the better
ordering of government, has no privileges or immunities under the Federal
Constitution which it may invoke in opposition to the will of its creator.").
Thus, although a state and its subdivisions may own a copyright as a matter
of copyright law, it may be that Suffolk County is not permitted to do so
in this instance. The question becomes whether New York's Legislature, by
enacting FOIL, has ceded Suffolk County's copyright.
|||The text of FOIL provides no clear indication that the Legislature intended
to abrogate a covered entity's copyright. FOIL provides only that "[e]ach
agency shall, in accordance with its published rules, make available for
public inspection and copying all records," subject to certain exceptions
that are not relevant here. N.Y. Pub. Off. Law § 87(2) (McKinney Supp. 2001);
see also id. § 89(3) (McKinney Supp. 2001) (requiring each entity subject
to FOIL to provide the person requesting the record access or a written
denial of access, and for those records to which it provides access, to
provide, upon payment of a fee, a copy of the record to the requester).
FOIL is silent as to the existence of, and the effect of requiring disclosure
on, any pre-existing copyright the state agency may possess. FOIL is also
silent as to what may occur after a state agency discloses its records.
When the current version of FOIL was enacted in 1977, there was an established
recognition that certain state entities could possess a copyright, see,
e.g., N.Y. Jud. Law § 438 (McKinney 1983) (requiring that the copyright
of the statement of facts, head notes and all other notes prepared by the
law reporting bureau must be taken by and shall be vested in the Secretary
of State); Opinion of the N.Y. Att'y Gen., 180 U.S.P.Q. 331 (1973) (citing
prior opinion concluding the same). Because FOIL was enacted against such
a baseline, yet did not specifically address the impact on a state agency's
copyright, this silence is deafening. By the statute's plain language, the
extent of the state agency's obligation is to make its records available
for public inspection and copying. It is one thing to read this provision
to permit a member of the public to copy a public record, but it is quite
another to read into it the right of a private entity to distribute commercially
what it would otherwise, under copyright law, be unable to distribute.
|||First American attempts to read legislative abrogation from the policies
favoring broad access to governmental documents and the presumption of openness
inherent in FOIL. First American fears that state agencies, armed with the
weaponry of copyright infringement suits, will convert FOIL's goal of maximum
access into a reality of minimum access. First American trumpets a portion
of the legislative declaration introducing the law that states that "the
public, individually and collectively and represented by a free press, should
have access to the records of government in accordance with the provisions
of this article." N.Y. Pub. Off. Law § 84 (McKinney 1988). This statement,
in a preamble no less, may assist in the determination of the Legislature's
purpose, but it certainly is not conclusive. See N.Y. Stat. § 122 (McKinney
1971) (observing that while a preamble may illuminate the statute's purpose
and intent, "it enacts nothing, contains no directives, and may not
be resorted to as fixing terms of the statute"). First American's reading
requires a degree of inference that fails to overcome the limited scope
of the obligations dictated by the plain language of the act-that a state
agency must make its records available for public inspection. Moreover,
First American ignores the fact that the free press or an individual seeking
to use the state agency records to educate others or to criticize the state
or the state agency may be protected by the Copyright Act's fair use doctrine.
See 17 U.S.C. § 107; On Davis v. The Gap, Inc., 246 F.3d 152, 173-76 (2d
|||Both First American and the State as amicus point to the existence of
pending legislation or proposals for legislative action to prove their respective
contentions that the Legislature intended FOIL to preclude or not to preclude
a state agency's assertion of its copyright. *fn5
In this situation, however, attempting to extrapolate from these bills,
which have not yet been enacted, what the Legislature that enacted FOIL
intended with respect to a covered entity's copyright is of questionable
utility. Cf. 2B Norman J. Singer, Sutherland Statutes and Statutory Construction
§ 49.11 (6th ed. 2000) (indicating that a subsequent legislative interpretation
of a statute is not conclusive of the meaning of the former statute, and
may either be read to indicate that the construction of the first statute
is the same as the new enactment or to provide evidence that the prior statute
meant the contrary of the new enactment). At best, these bills reflect concern
that FOIL does not satisfactorily address the ability or inability of a
covered entity to assert its copyright. In any event, as we have stated,
the plain language of FOIL suggests that it did not abrogate a covered entity's
rights under the Copyright Act. Cf. Ratzlaf v. United States, 510 U.S. 135,
147 (1994) (holding that even when there "are . . . contrary indications
in the statute's legislative history . . . we do not resort to legislative
history to cloud a statutory text that is clear"). Therefore, we conclude
that the Legislature, by enacting FOIL, did not abrogate Suffolk County's
|||E. What Degree of Deference, If Any, is Due Advisory Opinions by the Committee
on Open Government?
|||In the third Committee on Open Government advisory opinion, the Executive
Director of the Committee addressed whether the Department of Transportation
("DOT"), in response to a FOIL request for its "digital datasets,"
could require a commercial entity to license the requested records before
disclosing them. While conceding that there was no judicial decision on
point and that the DOT's view reconciling both FOIL and the Copyright Act
arguably was correct, the Executive Director concluded after an extensive
analysis that the DOT could not assert its copyright in such a matter. *fn6
|||Although the District Court correctly acknowledged that in some instances
the opinions of the Committee are entitled to deference, that is not true
here. In this case, the Committee was interpreting the effect of FOIL on
rights provided by the Copyright Act-an area outside of the Committee's
limited expertise as defined by statute. See N.Y. Pub. Off. Law § 89(1)(b)(i)
& (ii). Moreover, the Committee was also engaged in statutory interpretation
of FOIL and an evaluation of the policies behind the Copyright Act.
|||The New York Court of Appeals has indicated that deference is not appropriate
in such situations. In John P. v. Whalen, the Court of Appeals held that
the Committee's opinion interpreting the confidentiality of medical records
pursuant to New York's Public Health Law was not entitled to deference,
especially when the Committee's view conflicted with that of the Commissioner
of Public Health, the officer directly concerned with that law. 54 N.Y.2d
89, 95-96, 429 N.E.2d 117, 120-21, 444 N.Y.S.2d 598, 601-02 (1981). The
Court of Appeals also noted as a general proposition:
|||From the perspective of judicial review over agency determinations denying
[FOIL] requests, committee advisory opinions carry such weight as results
from the strength of the reasoning and analysis they contain, but no more.
Id. at 96, 429 N.E.2d at 121, 444 N.Y.S.2d at 602; see also Buffalo News,
Inc. v. Buffalo Enter. Dev. Corp., 84 N.Y.2d 488, 493, 644 N.E.2d 277, 279-80,
619 N.Y.S.2d 695, 697-98 (1994) (rejecting Appellate Division's decision
to defer to the Committee's interpretation of "agency" within
the Public Officer's Law but upholding Appellate Division's order only after
conducting its own statutory interpretation).
|||The Court of Appeals has also held that deference to an agency opinion
is "not required . . . if the issue is one of statutory interpretation,
dependent on discerning legislative intent, as statutory construction is
the function of the courts." Newark Valley Cent. Sch. Dist. v. Pub.
Employment Relations Bd., 83 N.Y.2d 315, 320, 632 N.E.2d 443, 445, 610 N.Y.S.2d
134, 136 (1994) (holding that issue of whether a school district's duty
to negotiate a smoking policy was preempted by statute or policy is a question
of law that must be independently examined by courts). Because the Executive
Director rested his decision on his interpretation of the Copyright Act
and engaged in statutory interpretation of FOIL, New York courts would not
be required to defer to his opinion, and indeed, would be required to analyze
independently both FOIL and any conflicts FOIL might raise with the Copyright
|||F. May Suffolk County Comply with FOIL and Preserve its Copyright?
|||FOIL emphasizes broad public distribution to further the goal of opening
government and explicitly permits the copying of state agency records. While
one possible reading of these statutory aspects is to permit publishers,
including commercial publishers, to disseminate agency records as widely
as possible, it is not the only reading. We find that the better reading,
one consistent with the plain language of FOIL, is to permit Suffolk County
to maintain its copyright protections while complying with its obligations
|||First, FOIL does not explicitly address what a recipient may or may not
do once it receives the agency records; it provides only that the state
agency must make the records available for public inspection and copying.
See N.Y. Pub. Off. Law § 87(2). Suffolk County may comply with both these
mandates while maintaining its copyright. FOIL also does not prohibit a
state agency from placing restrictions on how a record, if it were copyrighted,
could be subsequently distributed. Cf. Weisberg v. United States Dep't of
Justice, 631 F.2d 824, 828 (D.C. Cir. 1980) ("Deciding that copyrighted
materials are subject to [the federal Freedom of Information Act ("FOIA")],
however, does not resolve whether any particular FOIA request should be
granted, and if so, under what terms."). FOIL restricts only the fee
which an agency may charge for copying or reproducing the record. N.Y. Pub.
Off. Law § 87(1)(b)(iii).
|||Moreover, concluding that FOIL prohibits the state agency from initiating
an infringement action also prevents that agency from taking action in the
event that a reproduction inaccurately portrays the content of its record.
Although there are limits to a state agency's ability to restrict access
to its records, see M. Farbman & Sons, Inc. v. New York City Health
and Hosps. Corp., 62 N.Y.2d 75, 80, 464 N.E.2d 437, 439, 476 N.Y.S.2d 69,
71 (1984) ("FOIL does not require that the party requesting records
make any showing of need, good faith or legitimate purpose . . . ."),
Suffolk County is not attempting to restrict initial access but is attempting
to restrict only the subsequent redistribution of its copyrighted works.
There is nothing inconsistent between fulfilling FOIL's goal of access and
permitting a state agency to place reasonable restrictions on the redistribution
of its copyrighted works. For example, an agency's choice to notify the
recipient that a portion of the record is protected by copyright law or
an agency's requirement that the recipient enter into a licensing agreement
if it wishes to distribute the record commercially does not restrict initial
access but only what the recipient may do once it acquires access.
|||It is true that Suffolk County's tax maps, because they are used in "making
up the assessment rolls," N.Y. Real Prop. Tax Law § 503(1)(a), go to
the heart of the purposes of FOIL: providing the public access to the operation
or decision-making functions of government. A commercial publisher may be
an effective means for distributing those records as widely as possible.
One could thus attempt to draw a distinction between copyrighted materials
such as the tax maps and those copyrighted materials that do not directly
impact the governmental agency's decision-making. But this distinction ignores
the fact that FOIL, by its text, simply does not distinguish among governmental
functions that are performed in the exercise of the government's public
role, its proprietary role, or as a hybrid of both roles. See N.Y. Pub.
Off. Law § 86(4) (McKinney 1988) (defining "record" as "any
information kept, held, filed, produced or reproduced by, with or for an
agency . . . in any physical form whatsoever . . ."); id. § 87(2) (McKinney
Supp. 2001) (enumerating specific categories of governmental records that
the agency may exempt from disclosure).
|||To the extent First American raises fears that a state agency will use
its copyright to prevent all but the most meager access to its copyrighted
materials, see Henry H. Perritt, Jr., Sources of Rights to Access Public
Information, 4 Wm. & Mary Bill Rts. J. 179, 205 (1995), those fears
are largely quelled by the legal mechanisms preventing a state agency from
doing so. The assertion of a copyright does not fall within FOIL's limited
exceptions permitting an agency to deny access. See N.Y. Pub. Off. Law §
87(2); id. § 89(2)(b) (McKinney Supp. 2001). Suffolk County also cannot
restrict the subsequent dissemination of its work completely. First, the
Copyright Act "protect[s] only the form of expression and not the ideas
expressed." New York Times Co. v. United States, 403 U.S. 713, 726
n.* (1971) (Brennan, J., concurring); see also Feist Publ'ns, Inc. v. Rural
Tel. Serv. Co., 499 U.S. 340, 348-49 (1991) (compilation of facts, if sufficiently
original, is entitled to copyright protection although the facts contained
therein are not); Attia v. Soc'y of New York Hosp., 201 F.3d 50, 54 (2d
Cir. 1999) ("A copyright thus protects not the author's ideas, but
only her expression of them."), cert. denied, 121 S. Ct. 109 (2000).
Second, the fair use doctrine, codified in section 107 of the Copyright
Act, strikes a balance between the rights of a copyright holder and the
interest of the public in disseminating information. 17 U.S.C. § 107 (The
"fair use of a copyrighted work . . . for purposes such as criticism,
comment, news reporting, teaching (including multiple copies for classroom
use), scholarship, or research, is not an infringement of copyright.").
The fair use doctrine "permits [and requires] courts to avoid rigid
application of the copyright statute when, on occasion, it would stifle
the very creativity which that law is designed to foster." Campbell
v. Acuff-Rose Music, Inc., 510 U.S. 569, 577 (1994) (internal quotation
|||After weighing the policy interests advocated by both sides, we find that
these interests favor permitting state agencies to maintain their protections
under the Copyright Act while complying with FOIL. Thus, it is possible
for Suffolk County to comply with its obligations under FOIL while preserving
its rights under the Copyright Act.
|||G.Are Suffolk County's Tax Maps in the Public Domain from Inception? First
American also contends that, even if we find that Suffolk County may assert
its copyright while complying with its obligations under FOIL, we cannot
do so in this case because Suffolk County's tax maps should be viewed as
being in the public domain, and, hence, uncopyrightable. While conceding
below that this is a matter of first impression, First American argues that
the tax maps are sufficiently analogous to statutes and judicial opinions,
which courts have found may not be copyrighted because they are in the public
domain since their inception. See, e.g., Banks v. Manchester, 128 U.S. 244
(1888) (state judicial opinion); Howell v. Miller, 91 F. 129 (6th Cir. 1898)
(state statutes); Bldg. Officials & Code Adm. v. Code Tech., Inc., 628
F.2d 730, 735 (1st Cir. 1980) (hereinafter "BOCA") (suggesting
but not deciding that state-promulgated regulations modeled on a privately
developed code are in the public domain).
|||The determination that no one may own a copyright in statutes and opinions
arises not from a specific provision of the Copyright Act, but from a "judicial
gloss" on the Act. BOCA, 628 F.2d at 735. In Banks, for example, the
Supreme Court held that as a matter of public policy judges may not own
a copyright in the fruits of their judicial labor. See 128 U.S. at 253.
Because judges "receive from the public treasury a stated annual salary
. . . and can themselves have no pecuniary interest or proprietorship, as
against the public at large," they cannot own a copyright. Id. Considerations
of due process and fair notice also motivated the Banks Court: the "whole
work done by the judges constitutes the authentic exposition and interpretation
of the law, which, binding every citizen, is free for publication to all
. . . . " Id. If judges owned a copyright in their opinions, theoretically,
they could restrict dissemination of the law. Thus, two considerations influence
whether a particular work may be properly deemed in the public domain: (1)
whether the entity or individual who 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 Practice Mgmt. Info. Corp. v. American Med. Assoc., 121
F.3d 516, 518-19 (9th Cir. 1997); BOCA, 628 F.2d at 734-35. We consider
each factor in turn.
|||1. Incentive to Create
|||Copyright benefits the public by providing an incentive to stimulate artistic
creativity through the grant of a temporary monopoly to a copyright owner.
See Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975). The
Banks Court found such an incentive for the creation of judicial opinions
unnecessary. But Banks, to us, represents more than the simple syllogism
concluding that the public owns works produced by government employees merely
because it pays their salaries.
|||Rather, Banks is properly read as requiring a determination whether the
particular governmental entity or employee has adequate incentive to create
the work absent copyright protections. See Practice Mgmt., 121 F.3d at 518
("The copyright system's goal of promoting the arts and sciences by
granting temporary monopolies to copyrightholders was not at stake in Banks
because judges' salaries provided adequate incentive to write opinions.");
cf. Legi-Tech, Inc. v. Keiper, 766 F.2d 728, 735 (2d Cir. 1985) (recognizing,
although rejecting in the specific context, the potential that the profit
motive created by copyright may provide incentive for governmental creation).
Judges and legislators do not need additional economic incentives to, respectively,
write opinions or enact legislation.
|||Many works of government, however, due to their expense, may require additional
incentives in order to justify their creation. See Kidwell, 1989 Wisc. L.
Rev. at 1023; David S. Levitt, Copyright Protection for United States Government
Computer Programs, 40 IDEA: The Journal of Law and Technology 225, 247-50
(2000). As the amici contend and as the sponsor for the GIS Bill advocates
in his Sponsor's Memorandum, see supra note 5, GIS may well be such an example.
Thus, we are unable to declare a general rule that works by state governmental
authors are automatically in the public domain from their inception. Some
of the evidence relevant in determining whether the tax maps are original
will also be relevant in determining whether Suffolk County required an
additional incentive to create those maps. For example, if the existence
and content of Suffolk County's maps are purely dictated by law, it is likely
that Suffolk County needed no additional incentive to create them. As we
have indicated that Suffolk County is entitled to present evidence whether
its tax maps are original, see supra section II.C., we cannot say as a matter
of law whether the tax maps are such that no additional incentive for their
creation is necessary. What we can say, however, is that Suffolk County
is entitled to present evidence whether it needed the additional incentives
provided by copyright law to create its maps. It is for the District Court
in the first instance to determine what additional incentives, if any, were
needed for the maps' creation and for the manner by which Suffolk County
chose to express the data contained therein.
|||Due 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. See, e.g., McBoyle v. United States, 283 U.S. 25, 27
(1931) (criminal punishment); United States v. One 1973 Rolls Royce, V.I.N.
SRH-16266, 43 F.3d 794, 819 (3d Cir. 1994) (applying rule of lenity to civil
forfeiture provisions that are punitive and quasi-criminal in nature); Gen.
Elec. Co. v. EPA, 53 F.3d 1324, 1328-29 (D.C. Cir. 1995) (administratively
|||Here, the tax maps themselves do not create the legal obligation to pay
property taxes but are merely a means by which the government assesses a
pre-existing obligation. The "fair warning" required under the
Due Process Clause is satisfied through the notice provided by the statute
that establishes the obligation to pay property taxes. There is no allegation
that notice of this statute is not generally available. See BOCA, 628 F.2d
at 734 ("So long as the law is generally available for the public to
examine, then everyone may be considered to have constructive notice of
it."). Moreover, there is no allegation that any individual required
to pay the applicable property tax has any difficulty in obtaining access
to either the law or the relevant tax map, for Suffolk County is required
by FOIL to disclose such a map on request. See Practice Mgmt., 121 F.3d
at 519; Veeck v. Southern Bldg. Code Cong. Int'l, Inc., 241 F.3d 398, 403
(5th Cir. 2001); Texas v. West Publ'g Co., 882 F.2d 171, 177 (5th Cir. 1989),
cert. denied, 493 U.S. 1058 (1990). Notice concerns simply are not present
|||In sum, on the record before us, we cannot conclude as a matter of law
that Suffolk County's tax maps are in the public domain since their inception.
We do conclude that Suffolk County has stated a valid claim upon which relief
could be granted. Therefore, Suffolk County is entitled to present evidence
in support of its copyright infringement claim.
|||For the foregoing reasons, we conclude that the District Court erred in
dismissing Suffolk County's complaint. We hold that the New York State Legislature,
by enacting FOIL, did not abrogate Suffolk County's copyright in its tax
maps. We conclude that it is possible for Suffolk County to comply with
its obligations under FOIL while preserving its rights under the Copyright
Act. We find that Suffolk County sufficiently alleged that its tax maps
possess enough originality to withstand a motion to dismiss for failure
to state a claim. Finally, we find, at least on the record before us, that
Suffolk County's official tax maps cannot, as a matter of law, be deemed
to be in the public domain since their inception. Accordingly, we vacate
the order of the District Court and remand for further proceedings consistent
with this opinion. In light of this disposition, we dismiss First American's
cross-appeal as moot.
|||*fn1 On January 1, 1998, First American
acquired the business of Experian Information Solutions, Inc. ("Experian"),
including the selling of information concerning real property ownership
alleged in the complaint. At oral argument before this Court, counsel for
First American confirmed that prior to its acquisition of Experian, Experian
had acquired TRW Redi Property Data, the remaining defendant.
|||*fn2 FOIL specifically obliges each
"agency" to provide access to its records. N.Y. Pub. Off. Law
§ 87(2) (McKinney Supp. 2001). An "agency" includes "any
state or municipal department, board, bureau, division, commission, committee,
public authority, public corporation, council, office or other governmental
entity performing a governmental or proprietary function for the state or
any one or more municipalities thereof, except the judiciary or the state
legislature." N.Y. Pub. Off. Law § 86(3) (McKinney 1988). In this opinion,
we refer to those agencies covered by FOIL as either "state agencies"
or "covered entities."
|||*fn3 It does not appear that either
party brought this new advisory opinion to the District Court's attention
before it filed County of Suffolk I.
|||*fn4 GIS is a computer system capable
of assembling, storing, manipulating, and displaying geographically referenced
information that may be used to make multifaceted interrelationships among
many types of data visually intelligible. GIS is used in a wide range of
applications, including economic development and environmental management.
|||*fn5 First American included in its
appendix three bills that were before the 223rd Legislature-two to amend
the Executive Law to foster GIS and to provide for licensing of GIS records,
and one to amend FOIL to permit state agencies to charge a reasonable fee
to persons who acquire GIS records pursuant to a FOIL request. Because oral
argument was held after that legislative session, we take judicial notice
of the introduction of a similar bill seeking to amend FOIL now before the
224th Legislature. Currently pending before the Legislature is a bill, introduced
on February 28, 2001, to amend FOIL in order to permit state and municipal
agencies to license GIS and to charge persons a reasonable fee (not to exceed
the fair market value of the record) when those persons acquire GIS records
through a FOIL request. See A 5778, 2001 Leg., 224th Sess. (N.Y. 2001) (hereinafter
"GIS Bill"); Sponsor's Mem., Assemb. Mem. in Support, B. No. A.
5778, available at http://leginfo.state.ny.us:82/INDEX1.html. In the Sponsor's
Memorandum, the sponsor explained that because FOIL permits agencies to
charge only for the cost of reproducing requested materials and does not
permit agencies to place restrictions upon future dissemination of that
material, local governments have become unwilling to invest further in developing
GIS because GIS data, requested and disclosed pursuant to FOIL, was later
resold at a high profit. Other entities, such as utilities, the sponsor
opined, were becoming "increasingly reluctant" to share GIS data
with the government for fear that their data will end up in the public domain.
The Committee on Open Government recommended that the State Legislature
"take action to waive the ability of the government agencies in New
York to claim copyright protection," except "where the record
reflects scientific or academic research." State of New York, Department
of State, Committee on Open Government, 2000 Report to the Governor and
the State Legislature on New York State's Open Government Laws and Related
Issues at 3 (emphasis added). This recommendation appears to have been incorporated
in a separate bill, introduced on March 27, 2001, to amend FOIL in order
to require that all public records that are, or could reasonably be made,
available be accessible on the Internet. See A 7778-B, 2001 Leg., 224th
Sess. (N.Y. 2001); Sponsor's Mem., Assemb. Mem. in Support, B. No. A. 7778-B,
available at http://leginfo.state.ny.us:82/INDEX1.html. In the Sponsor's
Memorandum, the sponsor of this bill indicated that one of the bill's purposes
was "to ensure that the Freedom of Information Law maximizes the accessibility
of records." Both of these bills have been referred to the Committee
on Governmental Operations.
|||*fn6 Despite the Executive Director's
conclusion that the state agency could not assert its copyright due to the
inherent purposes of FOIL, the Committee subsequently recommended that the
New York State Legislature "take action to waive the ability of government
agencies in New York to claim copyright protection." See supra note
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