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

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386015_0360%3A06

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2002
- **Citation:** 537 U.S. 1043

## Text

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

TABLE CF AUTH AMe ove kb eit esewes il
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

ll

—__-- -. 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

i ae Be | ae 4
oe ek > | i aaa 4
Ee ae eee 4
ee WO, Ge COE) og ce eee ee ee eee es 4
67 Fed. Reg. 46,852 (2002) ........ Piers alse 4
State Statutes

og 2 8 eee ee eae 5
eee ee er ee eee ee eee re 5
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

1V

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.

2

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.

|

3

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
i
4

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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Rae Rea 2 Son eer aR RRE Som nSH aS aR RRRRIIRER ree ERR RRL RNASE CTE: SRNR ACARI
5

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.

6

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).

7

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

8

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
copyright of a work authored by a private entity
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

9

(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
copyright. The Fifth Circuit read Wheaton and Banks
“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
copyright law.” Veeck, 293 F.3d at 800. This was not the
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.

10

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).

aX

11

is no question that SBCCI, a private entity, was the
author of the subject code and was entitled to its
copyright. Veeck, 293 F.3d at 794 and 802. See
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.

12

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).

13

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).

14

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

15

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
copyright in the codes adopted by the municipalities, and that no
waiver of that copyright occurred. Veeck, 49 F Supp 2d at 891.

14

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
copyright) was therefore not met. In fact, the trial court’s opinion
indicates that SBCCI reserved all its rights. See Veeck, 49
F.Supp.2d 885, 887 (E.D. Tex. 1999).

17

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.

18

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.

19
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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386015_0360%3A06. Public record. Not legal advice.