Building Officials & Code Adm. Intern., Inc. v. Code Technology, Inc., 80-1124

• Decision Date: 27 August 1980
• Docket Number: No. 80-1124,80-1124
• Citation: 628 F.2d 730
• Parties: , 1978-81 Copr.L.Dec. 25,180 BUILDING OFFICIALS & CODE ADM., Plaintiff, Appellee, v. CODE TECHNOLOGY, INC., Defendant, Appellant.
• Court: U.S. Court of Appeals — First Circuit

Page 730

628 F.2d 730

207 U.S.P.Q. 81, 1978-81 Copr.L.Dec. 25,180

BUILDING OFFICIALS & CODE ADM., Plaintiff, Appellee, v. CODE TECHNOLOGY, INC., Defendant, Appellant.

No. 80-1124.

United States Court of Appeals First Circuit.

Argued June 5, 1980.

Decided Aug. 27, 1980.

Morton David Goldberg, New York City, with whom Richard Dannay and Schwab, Goldberg, Price & Dannay, New York City, were on brief, for defendant, appellant.

Richard L. Stevens, Boston, Mass., with whom Thompson, Birch, Gauthier & Samuels, Boston, Mass., Joseph A. Murphy, and Ancel, Glink, Diamond & Murphy, P. C., Chicago, Ill., were on brief, for plaintiff, appellee.

Ronald C. Allan and Buckingham, Doolittle & Burroughs Co., LPA, Akron, Ohio, on brief for Banks-Baldwin Law Pub. Co., amicus curiae.

Before CAMPBELL and BOWNES, Circuit Judges, and BOYLE, ^* District Judge.

LEVIN H. CAMPBELL, Circuit Judge.

This appeal under 28 U.S.C. § 1292 is from an interlocutory order of the district court granting a preliminary injunction. The effect of the injunction is to prevent the defendant-appellant, Code Technology, Inc. (CT) from publishing and selling to the public, pendente lite, CT's own edition of the Massachusetts building code, a set of administrative regulations of the Commonwealth of Massachusetts based in large part on a model code of which the plaintiff-appellee, Building Officials and Code Administrators International, Inc. (BOCA), claims copyright protection. ¹ For the reasons stated below, we vacate the injunction.

I.

The district court granted preliminary relief after hearing oral argument and receiving briefs and documentary evidence addressed to BOCA's motion for preliminary injunction.

In that proceeding the following facts emerged: BOCA, a non-profit organization, has allegedly been involved in the development and publishing of a so-called BOCA BASIC BUILDING CODE for over 28 years. This model code is said to have been developed, principally with private monies, through the joint efforts of representatives from industry, code enforcement officials, design professionals and other interested parties; it is continually being updated; and it is used throughout the United States and Canada by state and local jurisdictions. According to BOCA, it has copyrighted its code, and in particular BOCA says it holds a copyright for its publication THE BOCA BASIC BUILDING CODE/1978 (the BOCA CODE), which defendant CT has allegedly infringed. BOCA says that after having secured a copyright, it encourages, through a licensing program, public authorities such as states to adopt the BOCA CODE, by reference, in whole or in part.

Pursuant to a license granted by BOCA, the Commonwealth of Massachusetts has adopted and distributed a building code based in substantial part on the BOCA CODE. This officially promulgated state regulation is known as the COMMONWEALTH OF MASSACHUSETTS STATE BUILDING CODE (Massachusetts building code) and, besides the BOCA CODE material, contains certain additions, deletions and revisions peculiar to Massachusetts. However, the district court found that these latter materials were relatively minor, and that the Massachusetts building code was in substantial measure taken from and based upon the BOCA CODE.

It appears that after the Massachusetts building code was adopted by the state, certain official copies thereof were maintained in the Secretary of State's office as required by law, and BOCA took responsibility for publishing and distributing for sale a book, entitled the Commonwealth of Massachusetts State Building Code, 3rd Ed., which embodied the Massachusetts building code. This BOCA-published volume carried a notice to the effect that substantial portions were taken, by permission, from copyrighted material owned by BOCA. Its sale price was $22 a volume. Massachusetts officials made a practice of referring to BOCA any persons interested in obtaining a copy of the Massachusetts building code for their own use.

Defendant-appellant CT came on the scene when it copied and published its own edition of the Massachusetts building code. It neither sought nor obtained BOCA's permission to do so, nor in its book did CT mention BOCA's claim of copyright with respect to materials underlying the Massachusetts building code. Calling the book State Building Code of the Commonwealth of Massachusetts, CT offered it for sale at $35 a copy. The CT edition included certain Massachusetts building regulations in addition to those embodied in the BOCA-published version of the Massachusetts building code, but otherwise CT's edition set forth the same materials. BOCA copied its text from an official copy of the Massachusetts building code maintained in the State Secretary's office. Nonetheless, the district court specifically ruled,

"I find there is no merit to the argument that the copy was not of . . . the BOCA book, but actually the State Building Code when the BOCA Building Code is reproduced in the State Building Code from which the copy was made.

"Accordingly, a preliminary injunction will issue."

The district court did not directly address the question which we consider dispositive here, namely, whether inclusion of the BOCA-created materials, with BOCA's permission, in the official Massachusetts regulations, would have the effect of rendering the BOCA materials, like the rest of the Massachusetts building code, freely available for copying by anyone, notwithstanding BOCA's copyright.

II.

We do not agree with the district court's conclusion that BOCA's probability of success on the merits justifies preliminary relief. We stop short, however, of ruling definitely on the underlying legal issues, since we feel that our final judgment should await the more complete hearing on the merits which may be anticipated in due course.

CT's chief ground of defense is its argument that the BOCA CODE, insofar as it has been adopted by the state as a set of administrative regulations having the force of law, has lost its copyright protection and entered the public domain. ² CT cites a line of cases, dating as far back as 1834, which hold that judicial opinions and statutes are in the public domain and therefore are not subject to copyright protection. CT argues that this rule should be extended to cover administrative regulations such as the Massachusetts building code, since these regulations have the force of law and are enforced by penal sanctions.

BOCA acknowledges the rule that judicial opinions and statutes are in the public domain, but it urges us not to apply the rule to its building code as adopted by Massachusetts on the ground that, unlike the opinions and statutes considered in the cited cases, the code was authored by a private organization at its own expense rather than by government officials. To evaluate these competing contentions, it is necessary to examine the cases which have established the rule and to try to identify the policies on which it is based.

The rule was first enunciated in Wheaton v. Peters, 33 U.S. 591 (8 Peters), 8 L.Ed. 1055 (1834). In an action for infringement of a copyright on Wheaton's volumes of Supreme Court opinions, the Court observed,

"The Court are unanimously of the opinion, that no reporter has or can have any copyright in the written opinions delivered by this Court; and that the judges thereof cannot confer on any reporter any such right."

Id., at 668, 8 L.Ed. 1055. The Court did not express its reasoning underlying this observation. However, subsequent cases explain and expand the rule.

In Banks v. Manchester, 128 U.S. 244, 9 S.Ct. 36, 32 L.Ed. 425 (1888), the Supreme Court held invalid an Ohio law which authorized the official reporter for the Ohio Supreme Court to obtain, in his own name, a copyright on the opinions of the Ohio Supreme Court. The Court reasoned that the reporter could not claim authorship of the opinions, and that the state was not a "citizen or resident" under the copyright law and therefore could not obtain a copyright for itself, even though as the employer of the judges it held property rights in the opinions. The Court stated,

"The whole work done by judges constitutes the authentic exposition and interpretation of the law, which, binding every citizen, is free for publication to all, whether it is a declaration of unwritten law, or an interpretation of a constitution or a statute."

Id., at 253, 9 S.Ct. at 40.

In Nash v. Lathrop, 142 Mass. 29, 6 N.E. 559 (1886), the Massachusetts Supreme Judicial Court followed these precedents in interpreting a contract between the Commonwealth and Little Brown Publishing Company which was claimed to give Little Brown the exclusive right to publish opinions of the SJC. In ordering the reporter of decisions to permit a competing publisher to examine and copy the opinion, the court articulated the policies underlying the rule:

"Every citizen is presumed to know the law thus declared, and it needs no argument to show that justice requires that all should have free access to the opinions, and that it is against sound public policy to prevent this, or to suppress and keep from the earliest knowledge of the public the statutes or the decisions and opinions of the justices."

Id., 6 N.E. at 560. The court observed that, for the same reasons, a legislature could not constitutionally keep statutes out of public access although it could regulate the manner of publication so as to insure accuracy.

In Gould v. Banks, 53 Conn. 415, 2 A. 886 (1886), the Connecticut Supreme Court addressed a nearly identical fact situation and reached the opposite conclusion. The U. S. Circuit Court for the Northern District of New York, however, refused to enforce the copyright which the Connecticut Supreme Court had thus upheld. Connecticut v. Gould, 34 F. 319 (1888). See also Banks v. West, 27 F. 50 (C.C.D.Minn.1886).

In Davidson v. Wheelock, 27 F. 61 (1866), the U. S. Circuit Court for the District of Minnesota rejected a claimed contractual grant...