Amicus Curiae Brief — Southern Building Code Congress International, Inc. v. Veeck

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IN THE on aecee

Supreme Court of the Uniths States

SOUTHERN BUILDING CODE CONGRESS

INTERNATIONAL, INC.,

Petitioner,

Vv.

PETER VEECK D/B/A REGIONAL WEB,

Respondent.

On Petition for a Writ of Certiorari to the

United States Court of Appeals for the

Fifth Circuit

BRIEF OF AMICUS CURIAE

ASTM INTERNATIONAL

IN SUPPORT OF PETITION

FOR A WRIT OF CERTIORARI

THOMAS B. O’BRIEN, JR.*

JOSEPH B. SILVERSTEIN

Klett Rooney Lieber & Schorling

12th Floor, Two Logan Square

Philadelphia, PA 19103

(215) 567-7500 (Phone)

(215) 567-2737 (Fax)

*Counsel of Record

Counsel for Amicus Curiae

ST IVES BURRUPS/APPELLATE DIVISION, 1617 JFK BOULEVARD, PHILA. PA. 19103 (215) 563-9006 / }

TABLE OF CONTENTS

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CONSENT TO FILING OF AMICUS BRIEF ......

STATEMENT OF INTEREOL ... 1.26002 e scenes

re 2, GS Pee eer eee eee ee

B. Use of ABT M Gtandards..... 2. eee ecewess

C. ASTM’s Revenue Sources..............-..

D. Access to ASTM Standards. .......--...-5--

SUMMARY OF ARGUMENT .............--6--

REASONS FOR GRANTING THE WRIT.........

A. The Fifth Circuit’s Decision Creates a Conflict

Among the Circuit Courts of Appeal and

Misinterprets Prior Precedent of This Court. . . 8

qgQaigw dN - - -

B. Congress Did Not Intend Government Reference

to Private Codes to Somehow Transfer or Void

the Copyright of Such Codes............... 11

C. SBCCI Was the Author and Copyright Owner

of the Code and the Fifth Circuit’s Decision

Deprived It of This Valuable Right.......... 14

yo Ro: re eae ae ee eee 19

TABLE OF AUTHORITIES

Cases Page

American Society for Testing & Materials v. Board of

Revision of Taxes, Philadelphia County, 423 Pa.

SSO, S25 ADE SEs CUP? vk ba oe eG eweee as 1

Banks v. Manchester, 128 U.S. 244 (1888)....... 9, 10, 11

Building Officials and Code Admin. v. Code

Technology, Inc., 628 F.2d 730 (1st Cir. 1980) .. 8, 10

CCC Information Services, Inc. v. Maclean Hunter

Market Reports, 44 F.3d 61 (2nd Cir. 1994), cert.

denied, 516 U.S. 817 (1995) ............ 8, 9, 10, 17

Callaghan v. Myers, 128 U.S. 617 (1888). ......... 10, 11

Community for Creative Non-Violence v. Reid, 490 U.S.

FeO TE) nn kv bates eee 11

County of Suffolk, NY v. First Amer. Real Estate

Solutions, 261 F.3d 179 (2nd Cir. 2001) ...... 8, 9, 10

Davidson v. Wheelock, 27 F. 61 (D. Minn. 1866) .... 9

Howell v. Miller, 91 F. 129 (6th Cir. 1898) ........ 9

James v. Campbell, 104 U.S. 356 (1882) .......... 17

Lane v. First National Bank, 871 F.2d 166

(int Ce. SO ws ss ke es eee 17

Nash v. Lathrop, 142 Mass. 29, 6 N.E. 559 (1886). . . 9

Practice Management Information Corp. v. The

American Medical Association, 121 F.3d 516 (9th

Cir. 1997), amended, 133 F.3d 1140 (9th Cir. 1998),

cert. denied, 522 U.S. 933 (1997) ........... 8, 9, 10 |

Roth v. Pritikin, 710 F.2d 934 (2nd Cir. 1983), cert. |

denied, 464 U.S. 961 (1983) ................ 17 |

Ruckelshaus v. Monsanto Co., 467 U.S. 986 (1984) .. 17

—__-- -. 7 eee

TABLE OF AUTHORITIES — (Continued)

Cases Page

Peter Veeck d/b/a Regional Web v. Southern Building

Code Congress International, Inc., 293 F.3d 791

(5th Cir. 2002) (en banc) ........... 1, 8-11, 14-18

Veeck v. Southern Building Code Congress

International, Inc., 49 F. Supp. 2d 885 (E.D. Tex.

1999), aff'd, 241 F.3d 398 (5th Cir. 2001), rev’d

and remanded, 293 F.3d 721 (5th Cir. 2002)

TOR ee eee kg 5 ako es 14, 15, 16

Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834)... 9, 10, 11

U.S. Constitution, Statutes and Regulations

ere ee eee ee ee 17

See ew Berkie, ID UB. 8 2IZ. 2 6. cee 5, 13

Ee a ee a eee 3

i i kw eo ke eK 8 4 aw We 15

ON eee eee ee eee ee 16

42 U.S.C. § 9601-(35)(B)(iv)(II)(2002) ............ 6

Oe ee. Tee, GE465 (IGGD) 2... ee ce iwc eens 12

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67 Fed. Reg. 46,852 (2002) ........ Piers alse 4

State Statutes

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8 S| aN a re a rea ee ere 5, 6

TABLE OF AUTHORITIES — (Continued)

Pre Gee oe 6 ea Sew ese eee ese

Cal. Bus. & Prof. Code § 13710 (2002) ...........

Cal. Health & Safety Code § 108510 (2001)........

D.C. Code Ann. § 50-1609 (2001)................

Ind. Code § 22-15-7-4 (2001)...................

La. Rev. Stat. Ann. § 40:1484.4 (2002) ...........

Md. Code Ann., Environ § 7-506 (a)(1)(v) (2001)....

Mich. Comp. Laws § 408.684 (2002) .............

Mo. B.S. § 316.206 (2001)... eee

Be Shak Be CN ik os enw a oh eee wes

N.J. Stat. Ann. § 39:4-10.5 (2002)...............

N.Y. Veh. & Tran. Law § 1238 (2002).......:.....

Ohio Rev. Code Ann. § 1711.53 (2002) ...........

Or. Rev. Stat. $ 453.235 (2001)... wc ce eevee

R.I. Gen. Laws § 23-34.1-5 (2001) ...............

R.I. Gen. Laws § 31-19-2.1 (2001) ...............

Tenn. Code Ann. § 68-131-305 (2001)............

Texas Occ. Code § 2151.106 (2002) ..............

WwW. Vm. Corte § PT- READ CARE) ws nk cee cc wess

Ooonaa&#»nonoaooa#»oaQaooonr Dm ®D Om GH Go on

Miscellaneous

Fourth Annual Report on Federal Use of Voluntary

Consensus Standards (2000)................ 5

NASA’s 2001 Annual Report on OMB A-119....... 13

TABLE OF AUTHORITIES — (Continued)

Page

OMB Circular A-119 (63 Fed. Reg. 8545

(ge. TH) 6s 5 6b5 we eee 4, 5, 7, 11, 12, 13

Statement of Gregory E. Saunders, Director, Defense

Standardization Program Office, Defense Logistics

Agency, Before the Subcommittee on Technology,

House Committee on Science, March 15, 2000. . 14

U.S. Dept. of Interior, Bureau of Land Management,

H 2000-1 Land Exchange Handbook (1997) .... 6

CONSENT TO FILING OF AMICUS BRIEF

The Southern Building Code Congress Interna-

tional, Inc. (“SBCCI”) has filed a Petition for a Writ of

Certiorari, requesting that this Court review the

decision of the United States Court of Appeals for the

Fifth Circuit (en banc) in Peter Veeck d/b/a Regional

Web v. Southern Bldg. Code Congress Int'l, Inc., 293

F.3d 791 (5th Cir. 2002).

ASTM International files this brief in support of

the request for review. In accordance with Supreme

Court Rule 37.3(a), ASTM International has obtained

written consent to the filing of this brief from counsel

of record for both parties. These consents have been

previously filed with the Court.

STATEMENT OF INTEREST'

A. ASTM International

ASTM International f/k/a The American Society

for Testing & Materials (“ASTM”) is a not-for-profit

charitable institution organized under the laws of the

Commonwealth of Pennsylvania.” Founded in 1898,

ASTM provides a global forum for the development and

publication of voluntary consensus standards for

1. In accordance with Supreme Court Rule 37.6, amicus curiae

states that this brief was not authored, in whole or in part, by

counsel to a party, and that no monetary contribution to the

preparation or submission of this brief was made by any person or

entity other than the amicus curiae or its counsel.

2. See American Society for Testing & Materials v. Board of

Revision of Taxes, Philadelphia County, 423 Pa. 530, 225 A.2d 557

(1967), wherein the Pennsylvania Supreme Court held that the

American Society for Testing and Materials (“ASTM”) was a

“purely public charity” under the Pennsylvania Constitution and

discusses ASTM’s membership, mission and works.

materials, products, systems and services. Over 32,000

individuals from 100 nations are members of ASTM,

including manufacturers, retailers, consumers, as well

as representatives from government and academia.

ASTM develops standards in over 130 areas covering

subjects including consumer products, medical services

and devices, electronics, metals, paints, plastics,

textiles, petroleum, construction, energy and the

environment.

ASTM standards are written by its more than

32,000 volunteer members who serve on ASTM’s 132

technical committees devoted to specific areas of

interest and which pursue standardization issues

considered necessary by their members. Committees

are divided into smaller entities of sub-committees and

task groups that focus more closely on particular areas

of a committee’s scope.

ASTM memberships are inexpensive, costing

$75.00 per year for an individual member and

$400.00 per year for an organizational member. Each

member yearly receives one free volume of his/her

choice of the “Annual Book of ASTM Standards,” as

well as other membership benefits.

B. Use of ASTM Standards

More than 11,000 ASTM voluntary consensus

standards are published each year in the 73 volumes

of the “Annual Book of ASTM Standards.” Each

standard is copyrighted by ASTM. These standards:

(1) promote public health and safety, and the overall

quality of life; (2) contribute to the reliability of

materials, products, systems and services; and (3)

facilitate national, regional and international com-

merce. ASTM standards are widely used by business,

consumers and government.

ASTM standards are incorporated into business

contracts, used by scientists and engineers in their

laboratories, used by architects and designers in their

plans and, of course, governments and their agencies

use and reference them for a variety of reasons. ASTM

does not lobby or urge federal, state or local

governments to reference, incorporate or adopt its

standards. If a standard does not exist, it is relatively

simple to start the ASTM process in motion. Anyone

(including a government agency) can submit a written

request to ASTM, describing a need for proposed

standard activity and listing individuals, companies

and organizations that might have an interest. ASTM

contacts interested parties to assess that interest and

need; if it exists and is within the subject area of an

ASTM committee, activity begins. Membership in

ASTM is not a pre-requisite to participation in the

process (membership, however, is required to vote on

acceptance of draft standards by ASTM).

ASTM standards are utilized by all federal

government departments and agencies.” Federal

agencies as varied as the Bureau of Alcohol, Tobacco

and Firearms (“ATF”), the Consumer Product Safety

Commission (“CPSC”),* the Environmental Protection

Agency (“EPA”), Food and Drug Administration

(“FDA”), the Nuclear Regulatory Commission

(“NRC”), and the National Aeronautics and Space

Administration (“NASA”) reference ASTM standards

3. A LEXIS search shows that in the last six months, ASTM

standards were referenced in 117 proposed federal agency

decisions and/or rules.

4. The Consumer Product Safety Act, 15 U.S.C. § 2051, et seq.,

requires that the Consumer Product Safety Commission defer to

and utilize private voluntary standards rather than produce its

own. Id. at § 2056.

iinet I ee ig ret

in their regulations and procurement documents.

ASTM standards are widely referenced in government

bids and contracts because they ensure commercially

available, competitively priced goods and services, and

the standards are readily available and accessible. The

United States Trade Representative (Executive Office

of the President) has recently utilized ASTM standards

to reference steel products for tariff purposes under

§ 203 of the Trade Act of 1974. See 67 Fed. Reg. 56,182

(2002). The EPA recently referenced ASTM standards

in its National Emission Standards for Hazardous Air

Pollutants. See 67 Fed. Reg. 52,780 (2002) (to be

codified at 40 C.F.R. Part 63). The Department of

Transportation referenced ASTM standards in recent

regulations concerning traffic control devices. See 67

Fed. Reg. 49,569 (2002) (to be codified at 23 C.F.R. Part

655). The FDA referenced ASTM standards in its

request for reclassification of a certain type of bone

cement. See 67 Fed. Reg. 46,852 (2002) (to be codified

at 21 C.F.R. Part 888). The Federal Railroad Admin-

istration recently referenced ASTM standards in its

amendment to passenger equipment safety standards.

See 67 Fed. Reg. 42,892 (2002) (to be codified at 49

C.F.R. Part 238). These are but a few of the many

examples of federal agency use of ASTM standards so

far this year.

The United States Congress, at least as far back as

1993, clearly intended that the federal government

reference and utilize privately authored voluntary

consensus standards. See Office of Management and

Budget Circular No. A-119 (revised 1993) (“OMB

A-119”).° Congress’ intent was reiterated in the

5. OMB A-119 (1993) is available at (http://clinton1l.nara.gov/

White_House/EOP/OMB/html/circulars/al119/a119.html.)

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National Technology Transfer and Advancement Act of

1995 P.L. 104-113, 15 U.S.C. § 272 (““NTTAA”). As a

result, federal agency use of ASTM standards (and

other privately developed codes and standards) has

increased each year and is today pervasive.” ASTM

standards are currently referenced in 800 federal

regulations.

States and their agencies, as well as the federal

agencies, utilize and reference many ASTM standards.

Just recently, California modified its specification for

engine coolants, adopting ASTM standards. See Cal.

Bus. & Prof. § 13710. Pennsylvania, ASTM’s home

state, references ASTM standards in many of its iaws

and regulations, including its agricultural statutes

(3 P.S. § 132-3), liquid fuels regulations (75 Pa. C.S.

§ 9002), amusement ride inspection regulations (4 P.S.

§ 402), and Safe Packaging Act (35 P.S. § 6024.103). Many

states require children’s bicycle (and other) helmets

comply with, among others, ASTM standards, including

New Jersey (N.J. Stat. Ann. § 39:4-10.5 (2002)); New

York (N.Y. Veh. & Tr. Law § 1238 (2002)); Rhode Island

(R.I. Gen. Laws § 31-19-2.1 (2001)); the District of

Columbia (D.C. Code Ann. § 50-1609 (2001)); and West

Virginia (W. Va. Code § 17C-11A-3) (2001)).

6. The National Institute of Standards and Technology

(“NIST”), United States Department of Commerce, is required

by the Office of Management and Budget revised Circular A-119

(“OMB A-119”) to report annually on the progress made by

federal agencies toward using voluntary standards created by the

private sector. OMB A-119(9). NIST’s Fourth Annual Report on

Federal Use of Voluntary Consensus Standards (available at

(http://ts.nist.gov/ts/htdocs/210/toolkit.htm#ann-rpts)) states that

in fiscal year 2000, federal agencies increased their use of

voluntary standards to a total of 8,759. Fourth Annual Report at

p. vi.

Many states and municipalities require that

amusement park rides comply with ASTM standards.

See Texas Occ. Code § 2151.106 (2002); R.I. Gen. Laws

§ 23-34.1-5 (2001); 4 P.S. § 402 (Pa. 2002); Ohio Rev.

Code Ann. § 1711.53 (2002); Mo. R.S. § 316.205 (2001);

La. Rev. Stat. Ann. 40:1484.4 (2002); Ind. Code § 22-15-

7-4 (2001). Several states use ASTM standards to

ensure the safety of: school art supplies, see Or. Rev.

Stat. § 453.235 (2001), Tenn. Code Ann. § 68-131-305

(2001), Cal. Health & Safety Code § 108510 (2001));

playgrounds (see Mich. Comp. Laws § 408.684 (2002));

and the walk to school itself. See Mo. R.S. § 160.675

(2001) (school warning signs). These are but a few

examples of how state governments use and rely on

ASTM standards; the list may be endless.’

C. ASTM’s Revenue Sources

ASTM’s fiscal year budget totals $32,346,800. On a

yearly basis, ASTM receives between 75% and 80% of

its revenue from the sale of its copyrighted standards.

These sales are key to the continuation of ASTM and

its mission. Membership fees intentionally make up

only a small fraction of ASTM’s revenue and budget.

This is done to ensure and maintain ASTM’s

independence as an organization from the interests of

its members. Without its revenue from the sale of

copyrighted standards, ASTM could not survive and

7. As another example, most states, in their “brownsfield”

legislation, require potential applicants to state programs perform

“Phase I” and “Phase II” environmental site assessments

pursuant to ASTM standards (see, e.g., Md. Code Ann., Environ

§ 7-506 (a)(1)(v)). The Federal Bureau of Land Management has

also adopted ASTM’s Phase I and II assessments, see U.S. Dept.

Interior, Bureau of Land Management, H-2000-1 Land Exchange

Handbook 19 (1997), as does the Brownsfields Revitalization Act,

42 U.S.C. § 9601 (35)(B)(iv)(I1)(2002).

fulfill its mission — to produce fair and balanced

voluntary consensus standards.

D. Access to ASTM Standards

The average cost of an ASTM standard is $30.00.

Standards can be purchased on-line at the ASTM

website (http://www.astm.org), where standards may

be instantly downloaded directly to a user’s computer.

Standards may also be purchased from ASTM by

telephone or mail, or through several distributors.

Delivery takes place within days, if not sooner.

Many government agencies have complete sets of

ASTM standards, as do most (if not all) technical

libraries and many other libraries.

SUMMARY OF ARGUMENT

The en banc decision of the Fifth Circuit found that

the unilateral action of a government entity — a small

municipality — could strip a valuable and protected

property right from its owner. This ruling created a

conflict in the Circuit Courts of Appeals (and created

confusion amongst standard development organiza-

tions such as ASTM), conflicts with the clear

Congressional intent expressed in OMB A-119 and in

the National Technology Transfer and Advancement

Act, and fails to adequately address the apparent

transformation of private intellectual property into

public property. The decision puts at risk the long-term

(and successful) co-operative effort between govern-

ment and private-sector standards development orga-

nizations. For these reasons, SBCCI’s petition should

be granted.

REASONS FOR GRANTING THE WRIT

The en banc Fifth Circuit majority decided the

issue of “the extent to which a private organization

may assert copyright protection for its model codes,

after the models have been adopted by a legislative

body and become the law.” Veeck, 293 F.3d 791, 793

(5th Cir. 2002). The Fifth Circuit held: “. .. that as law,

the model codes enter the public domain and are not

subject to the copyright holder’s exclusive preroga-

tives.” Id. The Fifth Circuit found that once adopted,

the private author of a model code loses its copyright.

Id. at 799.

A. The Fifth Circuit’s Decision Creates a Con-

flict Among the Circuit Courts of Appeal and

Misinterprets Prior Precedent of This Court.

The Fifth Circuit’s majority ruling that a munici-

pality’s adoption by reference terminates the valid

conflicts with opinions of other Circuit Courts of

Appeal, specifically those of the First Circuit in

Building Officials and Code Admin. v. Code Technol-

ogy, Inc., 628 F.2d 730 (1st Cir. 1980) (“BOCA”), the

Second Circuit in CCC Information Services, Inc. v.

Maclean Hunter Market Reports, 44 F.3d 61 (2nd Cir.

1994) (“CCC Info”) and County of Suffolk, NY v. First

Amer. Real Estate Solutions, 261 F.3d 179 (2nd Cir.

2001), and the Ninth Circuit in Practice Management

Information Corp. v. The American Medical Ass’n, 121

F.3d 516 (9th Cir. 1997), amended, 133 F.3d 1140 (9th

Cir. 1998), cert. denied, 522 U.S. 933, (1997)(“PMI”).

The Fifth Circuit majority concluded the copyright

of a privately authored code was terminated (or

transferred to the public) when the code was adopted

by reference as a local building code. Veeck, 293 F.3d at

802. In similar circumstances, the First, Second and

Ninth Circuits have refused to terminate or strip

copyrights from building codes (BOCA), car valuations

(CCC Info), tax maps (County of Suffolk) and a uniform

medical code (PMI), all of which had been enacted or

adopted into regulations or statutes by some level of

government. The First, Second and Ninth Circuits

relied principally on the same two opinions of this

Court in reaching their decisions, Wheaton v. Peters, 33

U.S. (8 Pet.) 591 (1834) and Banks v. Manchester, 128

U.S. 244 (1888), as did the Fifth Circuit in the matter

at hand. Veeck, 293 F.3d at 795.

Neither Wheaton nor Banks addressed any ques-

tion of the copyright status of privately authored

works. Each addressed the copyright status of judicial

opinions, which were not copyrightable.* Banks, 128

U.S. at 253. Yet from these two opinions flow the Fifth

Circuit’s conclusion that the code, once adopted, lost its

“to enunciate the principle that ‘the law,’ whether it

has its source in judicial opinions or statutes,

ordinances or regulations, is not subject to federal

Court’s holding in either Wheaton or Banks. The Fifth

Circuit’s analysis of Wheaton and Banks, and its

conclusion based on this analysis, also conflicts with

that of the other Circuit Courts of Appeal which have

addressed the issue.

8. The Fifth Circuit also relies on Nash v. Lathrop, 142 Mass.

29, 6 N.E. 559 (1886), Davidson v. Wheelock, 27 F. 61 (D. Minn.

1866), and Howell v. Miller, 91 F. 129 (6th Cir. 1898), for its

conclusion that government adoption of a privately authored work

terminates or transfers its copyright. Veeck v. Southern Bldg.

Code Congress Int’l, Inc., 293 F.3d 791, 796 (5th Cir. 2002) (en

banc). Nash, again, dealt with judicial opinions; Davidson and

Howell involved uncopyrightable and publicly “authored” state

statutes. All are inapplicable to the matter at hand.

The Fifth Circuit, in reaching its conclusion,

rejected the earlier analysis of Wheaton and Banks

enunciated by the First Circuit in BOCA (628 F.2d at

734), and adopted by the Second Circuit in CCC Info

and County of Suffolk, and the Ninth Circuit in PMI.

This analysis is succinctly stated in County of Suffolk:

(T]wo considerations influence whether a particu-

lar work may be 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.

261 F.3d at 194. See also Veeck, 293 F.3d at 796-97. The

second prong of the BOCA analysis is a due process one

— so long as the law is generally available, then the

public has notice and access.? BOCA, 628 F.2d 734,

PMI, 121 F.3d at 518-19. It is this analysis, not the

Fifth Circuit’s conclusion (that “the law” is not

copyrightable), that should determine the present

situation.

Callaghan v. Myers, 128 U.S. 617 (1888), decided

by this Court soon after Banks, interpreted Wheaton

and Banks, and focused on the issue of authorship.

Callaghan, 128 U.S. at 649-50 (“it was held, that the

opinions of the court, being published under the

authority of Congress, were not the proper subject of

private copyright”). The public, or government, was

the “author” in Wheaton, Banks and Callaghan. There

9. “Access” does not mean Veeck is entitled to a free copy of the

code. Access requires fair warning of conduct prohibited or

regulated by statute or regulation. See County of Suffolk, N.Y. v.

First Amer. Real Estate Solutions, 261 F.3d 179, 195 (2nd Cir.

2001).

is no question that SBCCI, a private entity, was the

author of the subject code and was entitled to its

Community for Creative Non-Violence v. Reid, 490

U.S. 730 (1989) (the author is the party who actually

creates work which is entitled to copyright protection).

The Fifth Circuit’s reliance on a single sentence in

Banks for its termination of SBCCI’s private copyright

(“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, whether it is a declaration of unwritten law, or an

interpretation of a constitution or statute.” Banks, 128

U.S. at 253) is misplaced. Banks did not decide that a

private property right was somehow terminated or

converted to a public one by adoption — it simply

found that judicial opinions were not copyrightable.

Changing circumstances since Wheaton, Banks and

Callaghan, and the conflicting interpretation of this

Court’s opinions by the Circuit Courts of Appeal,

dictate that this Court review these important issues.

B. Congress Did Not Intend Government Refer-

ence to Private Codes to Somehow Transfer

or Void the Copyright of Such Codes.

Congress has mandated the federal agencies use

private standards and codes whenever possible. As

recognized by the Veeck dissent, this Congressional

intent was clearly enunciated in OMB A-119 and the

National Technology Transfer and Advancement Act.

Veeck, 293 F.3d at 814-15.

OMB A-119, revised in 1993, established the policy

to be followed by executive agencies in their utilization

of standards.'° That clearly enunciated policy was for

the federal government, in procurement and regula-

tory activities, to rely on privately developed voluntary

consensus. standards wherever. possible. OMB

A-119(6)(a). The Circular also states:

Voluntary standards adopted by Federal

agencies should be referenced, along with their

dates of issuance and sources of availability, in

appropriate publications, regulatory orders, and

related in-house documents. Such adoption

should take into account the requirements

of copyright and other restrictions.

OMB A-119 (7)(a)(5) (1993) (emphasis added). OMB

A-119 established federal policy governing the adoption

of privately authored standards and clearly provided

this adoption would have no impact on existing and

applicable copyrights. OMB A-119 was revised in

1998'' to make it consistent with the NTTAA. See 63

Fed. Reg. 85,445 (1998). OMB A-119 now mandates use

of voluntary consensus standards such as those of

ASTM." See OMB A-119(6) (1998). The purpose of this

mandate is to reduce costs to federal taxpayers of the

10. The 1993 revision of OMB A-119 superseded OMB Circular

No. A-119, dated October 26, 1982, which was rescinded.

11. The 1998 revision of OMB A-119 is available at the Defense

Standardization Program web site, (http://www dsp dla mil/

documents/omb_al19.pdg), and on the White House website,

(http://www. whitehouse gov/omb/circulars/al19/print/al119 html).

12. “All federal agencies must use voluntary consensus

standards in lieu of government—unique standards in their

procurement and regulatory activities, except where inconsistent

with law or otherwise impractical.” OMB A-119 (6).

government producing its own standards. OMB

A-119 (2)(a).

Agencies have taken Congress’ dictates to heart.

The National Institute of Standards and Technology

(“NIST”), a non-regulatory federal agency within the

U.S. Commerce Department (15 U.S.C. § 272), is

required by OMB A-119 and the NTTAA to compile

annual reports to Congress providing information on

federal government use of voluntary consensus

standards.'® These reports document extensive and

growing use by federal agencies of copyrighted

standards. NASA’s 2001 Annual Report on OMB

A-119 indicates this single agency alone used 922

voluntary consensus standards in fiscal year 2001.'* In

1993, pursuant to executive order, a federal govern-

ment-wide program — Environmentally Preferable

Purchasing — was instituted, encouraging agencies to

identify and purchase environmentally preferable

products and services. EPA administers the program

and requested standards development organizations

(“SDOs”) undertake to develop standards for the

program.'? ASTM, along with other private sector

standards organizations, responded — at no cost to the

government — to EPA’s request. Such participation

has now been placed at risk by the Fifth Circuit. The

Congressional mandate that federal agencies adopt

privately-authored standards and codes — without

compromising the authors’ copyrights in these stan-

13. NIST’s Annual Reports on Implementation of OMB A-119

are available at (http://ts.nist.gov/ts/htdocs/210/nttaa/toolkit.

htm#ann-rpts).

14. See Annual Report for NASA (FY 2001), available at (http://

standards.nasa.gov/AnnualReportFinal_ FY01.pdf).

15. See (http://www.epa.gov/opptintr/epp/guidance/standards

page.htm).

dards and codes — has been carried out by federal

agencies with great savings to the taxpayers.'® The

Fifth Circuit’s opinion places the future of this co-

operative arrangement at risk.

C. SBCCI was the Author and Copyright Owner

of the Code and the Fifth Circuit’s Decision

Deprived It of This Valuable Right.

The Fifth Circuit’s opinion terminates or deprives

SBCCI of its copyright in the code without any

discussion or analysis. The Fifth Circuit initially found:

“As the organizational author of original works, SBCCI

indisputably holds a copyright in its building codes.”

Veeck, 293 F.3d at 794. The majority continued,

however, finding that when two small Texas towns

adopted SBCCI’s 1984 Standard Building Code,! id.,

SBCCI’s copyright somehow terminated, with “the

public” then becoming the “final author” and,

apparently, its owners. Id. at 799.

SBCCI was the author of the code at issue. Jd. at

794. The copyright in this code, as recognized by the

Fifth Circuit, vested in SBCCI at fixation or publica-

16. The Department of Defense reported significant cost

avoidance or negotiated savings through use of voluntary

consensus standards of $106 million for a single year. Statement

of Gregory E. Saunders, Director, Defense Standardization

Program Office, Defense Logistics Agency, Before the

Subcommittee on Technology, House Committee on Science,

March 15, 2000, available at (http://www.house.gov/science/

saunders_031500.htm).

17. The trial court opinion indicates that the two Texas

municipalities, Anna and Savoy, “under expressed agreements

with SBCCI,” enacted ordinances adopting SBCCI’s codes by

reference. Veeck v. Southern Bldg. Code Congress Int'l, Inc., 49

F.Supp. 2d 885, 887 (E.D. Tex. 1999), aff'd, 241 F.3d 398 (5th Cir.

2001), rev'd and remanded, 293 F.3d 721 (5th Cir. 2002) (en banc).

5 lore can creamer cece ean

tion. Id. at 794. As a result of the Fifth Circuit’s

holding, ownership of that bundle of rights was

subsequently and involuntarily transferred to the

public at the time of its adoption by a_ local

municipality. Id. at 799. The legal mechanism of the

transfer is neither described nor discussed by the

majority. This transfer, on the facts recited, appears to

have been involuntary, as SBCCI is nowhere alleged to

have consented (and its pleadings and briefs make

clear that it did not so consent).!® The Copyright Act

specifically addresses involuntary transfer of copy-

rights:

Involuntary Transfer. — When an individual

author’s ownership of a copyright, or any of the

exclusive rights under a copyright, has not

previously been transferred voluntarily by that

individual author, no action by any governmental

body or other official or organization purporting to

seize, expropriate, transfer, or exercise rights of

ownership with respect to the copyright, or any of

the exclusive rights under a copyright, shall be

given effect under this title, except as provided

under Title 11.

17 U.S.C. § 201(e). The Historical and Statutory Notes

relating to this sub-section clearly and emphatically

state:

The purpose of this subsection is to reaffirm the

basic principle that the United States copyright of

an individual author shall be secured to that

author, and cannot be taken away by involuntary

18. The trial court found that SBCCI expressly reserved its

waiver of that copyright occurred. Veeck, 49 F Supp 2d at 891.

transfer. It is the intent of the subsection that the

author be entitled, despite any purported expro-

priation or involuntary transfer, to continue

exercising all rights under the United States

statute, and that the governmental body or

organization may not enforce or exercise any

rights under this title in that situation.

Nothing in the record below demonstrates a voluntary

transfer by SBCCI of its copyright in the codes.'®

The Fifth Circuit’s entire discussion of this

transfer consists of the following:

Section 201l(e) of the Act reflects Congress’

intention to protect copyright’s from involuntary

appropriation by government entities. 17 U.S.C.

§ 201(e). This is not, however, a “takings” case, not

the least because SBCCI urged localities to adopt

its model codes. The issue in the case is not the

voluntariness of the appropriation but the legal

consequences flowing from the permission that

SBCCI gave.

19. The Fifth Circuit’s own description of the “transactions”

between the two municipalities and SBCCI appears to contradict a

finding of voluntariness. The Fifth Circuit noted Peter Veeck had

easily purchased a copy of the code, which contained a copyright

notice and license agreement. Veeck, 293 F3d at 793. The Fifth

Circuit found “. . . SBCCI continues to assert its copyright

prerogatives — exclusively to publish the codes and license their

reproduction and distribution — even as to codes that have been

adopted by local entities. . . .” Jd. at 794. The “voluntary” transfer

could not have been in writing, as the Fifth Circuit pointed out no

licensing agreements are executed by SBCCI in connection with

legislative adoption. Jd. The written documentation requirement

of 17 U.S.C. § 204(a) (written instrument required to transfer

indicates that SBCCI reserved all its rights. See Veeck, 49

F.Supp.2d 885, 887 (E.D. Tex. 1999).

Veeck, 293 F.3d at 803.2° The Fifth Circuit apparently

considered the transfer outside of the scope of § 201(e),

although it does not explicitly state this. There is no

legal or factual support demonstrated for this proposi-

tion.

Intellectual property, as do other types of property,

enjoys constitutional protection afforded by the Fifth

Amendment’s command that “private property [shall

not] be taken for public use, without just compensa-

tion.” U.S. Const. Amend V. See James v. Campbell,

104 U.S. 356, 358 (1882) (patents); Ruckelshaus v.

Monsanto Co., 467 US. 986, 1003-04 (1984) (trade

secrets). Copyrights are property for purposes of a

Fifth Amendment Takings Clause analysis. See Lane v.

First Nat. Bank, 871 F.2d 166, 174 (1st Cir. 1989); Roth

v. Pritikin, 710 F.2d 934, 939 (2nd Cir. 1983). The

casting of private property into the public domain

appears on its face to constitute a government taking;

an uncompensated one in the instant case. This issue,

potentially affecting a number of organizations and the

future ability of all levels of government to utilize

privately developed codes, deserves greater explication

and analysis then that given to it by the Fifth Circuit.

The Fifth Circuit’s broad and unsupported holding is

20. The Second Circuit Court of Appeais, in CCC Information

Services, Inc. v. Maclean Hunter Market Reports, Inc., 44 F.3d 61

(2nd Cir. 1994), cert. denied, 516 U.S. 817 (1995), reached the

opposite conclusion: “[A] rule that the adoption of such a.

reference by a state legislature or administrative body deprived

the copyright owner of its property would raise very substantial

problems under the Taking Clause of the Constitution.” Jd. at 74.

extremely troubling. The lack of legal or factual

parameters” surrounding this conclusion will inevi-

tably lead to confusion and additional litigation

without guidance from this Court.

21. The Fifth Circuit does exempt what it terms as “extrinsic

standards” from its holding. Veeck at 804-05. but otherwise

provides no yuidance.

CONCLUSION

The Petition for Writ of Certiorari should be

granted.

Respectfully submitted,

THOMAS B. O'BRIEN, JR.*

JOSEPH B. SILVERSTEIN

Klett Rooney Lieber & Schorling

12th Floor, Two Logan Square

Philadelphia, PA 19103

(215) 567-7500 (Phone)

(215) 567-2737 (Fax)

* Counsel of Record

Counsel for Amicus Curiae

October 2002

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.