IP Law Daily, COPYRIGHT—E.D. Mo.: Standards setting organization unlikely to succeed on infringement claims against publisher of state laws, (Jun 16, 2023)

By Robert Margolis, J.D.

There defendant’s publication of state and local laws that incorporate the plaintiffs’ published guidelines is likely protected by fair use.

UpCodes, Inc.’s publication of state and local laws that adopted or incorporated the Facility Guidelines Institute, Inc.’s (“FGI”) published guidelines pertaining to the construction of health care facilities is likely protected by the “fair use” doctrine such that FGI cannot establish the requisite “fair chance” of succeeding on the merits of its copyright infringement claim against UpCodes, the federal district court in St. Louis has held. The court thus denied FGI’s motion for a preliminary injunction against UpCodes (Facility Guidelines Institute, Inc. v. Upcodes, Inc., June 15, 2023, Fleissig, A.).

FGI’s copyrighted works. FGI is an independent, non-governmental, not-for-profit corporation that reviews, revises, updates, and publishes three sets of guidelines pertaining to the construction of health care facilities (“FGI Guidelines”). It owns copyright registrations for each of the FGI Guidelines published since 2006. FGI relies on the sales of the FGI Guidelines to fund the revision and publication of subsequent editions. The FGI Guidelines have been incorporated into laws around the country.

UpCodes. UpCodes has as its mission making it easier for people in the architecture, engineering, and construction industry to understand how to comply with state and local building codes. It publishes those codes on its website, and claims that it does not publish FGI Guidelines as guidelines, but only to the extent they have been adopted into law by specific jurisdictions. The laws are accessible for free on UpCodes’ website without registering for an account, but if a user wants additional features, such as advanced searching and automation tools, UpCodes offers them for a fee.

Lawsuit. FGI sued UpCodes for copyright infringement and violations of Missouri’s unfair competition statute, and sought an injunction against further publication of the codes that include the FGI Guidelines.

Likelihood of success. As the court stated, the issue presented on the merits of FGI’s infringement claim “is whether model codes, such as the FGI Guidelines, authored by private entities which are then incorporated by reference or adopted into state law are still protected by copyright.” The court reviewed several cases addressing that issue and found that the majority of courts have held that model codes adopted into state law or incorporated by reference are not subject to claims of copyright infringement. Any such claims run counter to what the court characterized as the “animating principle” of the “government edicts doctrine,” which is that nobody can own the law, and from that principle, that nobody can prevent the public from access to the law.

The court noted that UpCodes only publishes laws that have been adopted by states, which in most cases is the wholesale adoption of FGI Guidelines without amendment (in some states, where the state has amended the Guidelines, UpCodes’ publication includes only the portions of the Guidelines adopted by the state and includes the amendments as well). FGI argued that “the law” is only the text of the statute that adopts the Guidelines, and not the Guidelines themselves, but the court disagreed. In such a case, the public has a right to know all of the requirements of the law.

FGI cited a recent decision from the district court from the District of Columbia, that it claimed held that when a standards setting organization’s published standards are incorporated by reference into state law, those standards do not lose their copyright protection. American Society for Testing and Materials v. Public.Resource.Org., Inc., 597 F.Supp.3d 213 (D.D.C. 2022). The district court rejected FGI’s interpretation of that case, noting it held only that when a government incorporates a standard by reference, it does not create any content, and therefore is not an “author” of the standard. The court in fact did not decide whether the standards become “the law” and instead evaluated the standards at issue under the fair use doctrine, and held that the defendant could copy standards that were incorporated by reference into law, but not the standards that differed from the law.

In cases where standards have been incorporated into state and local laws such that those laws are a recitation of the standards, courts have held that the standards can be deemed “the law” for purposes of copyright, the district court noted. Those cases have ultimately held that publication of the laws does not support copyright infringement claims because either (1) the standards, once incorporated into law, become part of the public domain, or (2) the publication is protected by the fair use doctrine.

The harder cases are those where a government incorporates a private work by reference. For example, in CCC Information Services v. Maclean Hunter Market Reports, Inc., 44 F.3d 61, 73-74 (2d Cir. 1994), the plaintiff’s “Red Book” of automobile valuations was referred to in several insurance statutes, which required “insurance payments for total losses be at least equal to be either the Red Book value or to an average of Red Book and Bluebook values.” The CCC court was not prepared to hold that merely by referencing the Red Book in the statute, did the state cause CCC to lose its copyright in its published Red Book valuations. Noting that the CCC case was different, the district court nonetheless decided that it need not address that issue, since it could decide the case under the fair use doctrine.

Fair use. In this case, the court found that analysis of the four fair use factors favored UpCodes. The “purpose and character of the use” factor favored UpCodes because, as other courts have found in cases involving UpCodes, the publication of standards organizations’ guidelines as enacted laws is a transformative use. The court cited National Fire Protection Ass’n v. UpCodes, Inc., No. CV 21-5262 DSF (E), 2021 WL 4913276 (C.D. Cal. Aug. 9, 2021), and Int’l Code Council, Inc. v. UpCodes, Inc., No. 17 Civ. 6261 (VM), 2020 WL 2750636 (S.D.N.Y. May 27, 2020). Those cases held that the use was transformative, because when the plaintiff published its standards, it was as recommendations to governments for standards to adopt. UpCodes’ publications, in contrast, were the guidelines as adopted laws. The court rejected FGI’s argument that UpCodes’ use was purely commercial since the publication draws users to the UpCodes website where it also sells services. The court noted that access to the published laws was free.

The “nature of the work” also favored fair use, since the guidelines are factual and have been adopted into law. Therefore, there is a strong public interest in free dissemination of those materials, the court held. And though UpCodes copied the majority, if not the entirety of the FGI Guidelines, which could mitigate against a fair use finding, in this case the “amount and substantiality” factor still favored fair use because UpCodes copied only the amount necessary to provide access to enacted laws. Thus, the amount of FGI’s work published was only what was necessary to achieve the aforesaid transformative purpose, the court held.

Finally, though the “effect on the market” factor supported FGI, since it is reasonable to assume that persons who can access published laws for free would not need to purchase the FGI Guidelines, FGI’s failure to provide more than anecdotal proof of a lost sale meant that this factor did not significantly weigh against fair use, the court held.

Unfair competition. The court held that FGI did not have a “fair chance” of succeeding on its unfair competition claim, because an element of such a claim is that the public is likely to be deceived, and FGI did not explain how UpCodes’ publication of laws would deceive the public into believing that UpCodes owns FGI’s Guidelines or is affiliated with FGI.

Other injunction factors. FGI did not establish irreparable harm because, as noted above, it only presented evidence of a single lost sale. Further, because there is a strong public interest in maintaining free access to laws, both the balance of harms and the public interest supported denying injunctive relief.

The Case is No. 4:22-cv-01308-AGF.

Attorneys: Michael J. Hickey (Lewis Rice LLC) for Facility Guidelines Institute, Inc. Jennifer E. Hoekel (Husch Blackwell LLP) for UpCodes, Inc.

Companies: Facility Guidelines Institute, Inc.; UpCodes, Inc.

Cases: Copyright TechnologyInternet MissouriNews GCNNews