Request By:
Mr. Vic Hellard, Jr.
Director
Legislative Research Commission
Capitol Building
Frankfort, Kentucky 40601
Opinion
Opinion By: Robert F. Stephens, Attorney General; By: Thomas R. Emerson, Assistant Attorney General
This is in reply to your letter presenting questions concerning the adoption of a particular building code by the Commonwealth. The Kentucky Board of Housing, Buildings and Construction has entered into an agreement with the Building Officials and Code Administrators International, Inc. (BOCA) to use the BOCA Code as part of the new Kentucky Building Code. Under the agreement BOCA will print the Kentucky Building Code for distribution.
The Kentucky Board of Housing, Buildings and Construction has been approached by officials of the Banks-Baldwin Law Publishing Company who have requested permission to print the building code. The Board voted to keep intact its agreement with BOCA rather than to modify it to allow Banks-Baldwin, as well as BOCA, to print the building code. The BOCA Code is copyrighted and apparently BOCA has been registering its various codes with the United States Copyright Office since 1950.
The Legislative Research Commission was recently asked about the right of persons and organizations to reprint the building code. You now ask the advice of this office concerning the following questions:
"Does the Code by virtue of its adoption by a state agency become part of the public domain and, therefore, not subject to the federal copyright law, thus allowing anyone to publish it?
"Does the fact that the Code is copyrighted prohibit its publication by anyone other than the holder of the federal copyright?"
The power of the United States Congress to enact copyright legislation is derived from the United States Constitution, Article I, Section 8, clause 8, providing that the Congress shall have power to, "Promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." The recently amended Copyright Law, in 17 U.S.C.A. § 301, contains provisions pertaining to preemption with respect to other laws. In Nimmer on Copyright, Vol. 1, § 1.01 [B], the author states:
"Effective January 1, 1978, almost all works of authorship become exclusively the subject of statutory copyright under the federal regime, regardless of whether published or unpublished."
There is a principle under the law of copyright that for reasons largely of public policy there can be no copyright in statutes themselves or in Court opinions. They are the product of the legislators and judges made in the performance of their official duties and of such inherent importance to the public as to make it abhorrent to public policy that any given individuals could own and hence limit access to such materials. The reason for this rule was well stated in the case of Banks & Bros. v. West Publishing Co., 27 Fed. 50 (CCD Minn. 1866), where the Court stated as follows:
"Has the state, either by virtue of the common law or the copyright act of congress, any property right in the opinions of the judges of the supreme court? If this question was submitted to me as a new question independent of prior adjudications, I should unhesitatingly answer it in the negative. If such right exists, it carries with it the right of withholding publication. But it is a maxim of universal application that every man is presumed to know the law, and it would seem inherent that freedom of access to the laws, or the official interpretation of those laws, should be coextensive with the sweep of the maxim. Knowledge is the only just condition of obedience. The laws of Rome were written on tablets and posted, that all might read, and all were bound to obedience. The act of that emperor who caused his enactments to be written in small letters, on small tablets, and then posted the latter at such height that none could read the letters, and at the same time insisted upon the rule of obedience, outraging as it did the relations of governor and governed under his own system of government has never been deemed consistent with or possible under ours. This claim seems to rest upon the idea that the state, as an entity independent of its citizens, or as a whole combined of all its individuals, has a property right in the laws and judicial opinions outside of and beyond that vested separately in each citizen. I conceive this to be an error. Each citizen is a ruler, a lawmaker, and as such has the right of access to the laws he joins in making and to any official interpretation thereof. If the right of property enters into the question, he is a part owner, and as such cannot be deprived of equal access by his co-owners."
We cannot find any cases, however, dealing specifically with the adoption of copyrighted material as state regulations. Since properly adopted regulations have the force of law there is no basis for distinguishing them from statutes. The cases we have found and examined deal with statutes developed at public expense by governmental bodies, employees or agents acting within the scope of their governmental employment. The BOCA Code involves matters developed by that organization and its members, many of whom are state officials, subsequently copyrighted and made available for sale to various state and local governments. These distinguishing factors concerning the development of the BOCA Code could be of critical importance in any decision concerning whether it is within the public domain.
The closest case we can find to the fact situation you have presented is Mills Music, Inc. v. State of Arizona, 591 F.2d 1278 (9th Cir. 1979), where a suit was brought against the state alleging that the state violated the plaintiff's copyright by using its copyrighted song "Happiness Is" as the theme song for the State Fair. The Court, in holding that the state could not ignore or nullify plaintiff's copyright and was liable for damages and attorneys' fees, said in part at pages 1285-1286 of its opinion as follows:
"Although states may provide for additional protections for federal copyrights, a state may neither abrogate nor in any way diminish the federally granted and protected rights of a copyright holder.
* * *
Similarly, a state may not, consistent with the Constitution, infringe the federally protected rights of the copyright holder, and thereafter avoid the federal system of statutory protections. The 'exclusive Rights' of an author, guaranteed under the Constitution and Copyright Act, would surely be illusory were a state permitted to appropriate with impunity the rights of lawful copyright holder. Accordingly, we conclude that the Eleventh Amendment's sovereign immunity does not permit a state to nullify the rights reserved and protected by Congress, acting pursuant to the Copyright and Patent Clause."
While conceding that we cannot find a case directly in point, we have serious doubts that the Commonwealth, through its Board of Housing, Buildings and Construction, can lawfully authorize the Banks-Baldwin Law Publishing Company to print the copyrighted BOCA building code which the Board has adopted as part of the Kentucky Building Code. It seems doubtful that the Commonwealth's adoption of the BOCA Code has placed that code in the public domain and thus stripped it of the protection it has under the Federal Copyright Law although it would be subject to the "fair use" provisions of the Copyright Law (17 U.S.C.A. § 107). However, we feel that the adoption of copyrighted material without the granting of a royalty-free license to all who wish to publish it may raise serious policy and even constitutional questions, because the adoption would foster a monopoly in material vital to the public which is contrary to the spirit, if not the letter, of Section 198 of the Kentucky Constitution which directs the General Assembly to regulate and suppress monopolies and trusts, not to encourage them:
"It shall be the duty of the General Assembly from time to time, as necessity may require, to enact such laws as may be necessary to prevent all trusts, pools, combinations or other organizations, from combining to depreciate below its real value any article or to enhance the cost of any article above its real value. "
Of course, copyright is provided for under the United States Constitution and thus preempts the provisions of the Kentucky Constitution or statutes. Although Kentucky cannot overturn a valid federal copyright where one exists, the action of the agency in adopting copyrighted material as a regulation without requiring the granting of royalty-free licenses to other publishers might be held void for tending to create a monopoly when one is not necessary, especially where the monopoly is in material so vital to the public.
In an effort to avoid costly and time-consuming litigation and in an attempt to possibly reach a solution somewhat satisfactory to all concerned, perhaps BOCA and the Board of Housing, Buildings and Construction as well as Banks-Baldwin Law Publishing Company can agree to handle the matter similar to the way it was apparently handled in the state of Ohio. We would, therefore, suggest that BOCA and the Kentucky Board of Housing, Buildings and Construction agree that BOCA may offer to Banks-Baldwin Law Publishing Company and to any other interested publisher some kind of nonexclusive, written, royalty-free license whereby BOCA permits Banks-Baldwin and any other interested publisher to publish and sell the BOCA Codes in Kentucky in competition with BOCA, provided that those publishers acknowledge BOCA's copyright on each copy so published.
The adoption by the Kentucky Board of Housing, Buildings and Construction of the copyrighted BOCA Code as part of the new Kentucky Building Code has, in effect, at this point, created a monopoly for the copyright owners in connection with the publication and sale of what will soon become the official building code of Kentucky. The Kentucky Building Code will, of course, affect a great many people throughout the Commonwealth. The Commonwealth, therefore, should not be in the position of fostering a monopolistic situation but, rather, should, on the grounds of sound public policy and the protection of consumer interests, promote the dissemination of its code to as many people as possible and as quickly and economically as possible. This is more likely to be achieved by allowing competition in the publication and sale of an official state code. We, therefore, recommend that the Board of Housing, Buildings and Construction reconsider the matter of the publication of the Kentucky Building Code and that the Board and BOCA agree that BOCA may offer to the Banks-Baldwin Law Publishing Company and to any other interested publisher a nonexclusive, written, royalty-free license permitting Banks-Baldwin and any other interested publisher to publish and sell the BOCA Code in Kentucky in competition with BOCA, provided that those publishers acknowledge BOCA's copyright on each copy so published.