Victor Marrero

“ The Court recognizes the importance of maintaining accurate codes and the negative consequences that can result from consumers’ reliance on outdated and erroneous codes. However, codes are not static, nor are the laws that rely on them. As changes in law occur, some delay between the adoption of those changes, their dissemination to the public, and their publication on the UpCodes website is not only understandable, but expected. ”

“ While the Court does not rely on Suffolk as setting forth the definitive test that controls here, the Court nevertheless considers the decision because it is binding precedent and its discussion remains relevant to this case more broadly.
The Court reads the Suffolk decision to contemplate a weighing of the two enumerated considerations listed above; where due process concerns are particularly high, as where a work is itself “the law,” an author’s economic incentives play a particularly low role in the analysis, if any. ”

“ Just as accurately identifying a fully-adopted model code as the enacted law amounts to posting that law, which is in the public domain, copying a model code that has been adopted in full would be protected by merger if done for the purpose of expressing the identically-worded law. If the record reflects that Defendants meant only to express the idea of those laws, then Defendants would not be liable for posting identical model codes. ”

“ Accordingly, the Court concludes that, when assessing Defendants’ alleged infringement, it should consider whether previously copyrighted language has become essential to the expression of, or integrated with, a legal conception. At least in the Second Circuit, courts need not ignore changes that transpire between a work’s initial creation and its alleged infringement, particularly because the manner in which people use or rely on that work may fundamentally change in the interval. ”

“ Though it is not strictly necessary for a fair use to be transformative, “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” Campbell, 510 U.S. at 579. Similarly, where a work is not transformative, the commercial nature of an allegedly infringing use takes on greater significance. ”

“ Whether a state or local jurisdiction has referenced a private work is a matter of fact, and is not equivalent to posting the private work itself. It is admittedly troubling that when Defendants post a state code that adopts an I-Code without amendment, they are effectively signaling to users that the enacted law reproduces the model code text in full. ”

“ Rather than find liability based on such minimal copying alone, this Court would instead conclude that copying of the copyright pages does “not warrant a finding of infringement given their relative contribution to the overall” work. Altai, 982 F.2d at 714–15. Nor would the Court withhold merger under Kregos. Unlike soft expression infused with taste and opinion, model regulations that mirror enacted laws more closely resemble the “building blocks of understanding” that merit application of the doctrine. ”

“ While the need for economic incentives might outweigh due process concerns as to works that do not carry the force of law, the Court is persuaded that this outcome will almost certainly not be the case as to works that do constitute the law. ”

“ Because ICC actively encourages full government enactment of its codes generally, like SBCCI in Veeck, the Court is not persuaded that the limited possibility of a taking alone compels a holding that a private party may restrict dissemination of binding legal obligations. ”

“ Trade organizations have powerful reasons stemming from industry standardization, quality control, and self-regulation to produce these model codes; it is unlikely that, without copyright, they will cease producing them. ”

“ A privately-authored work does not “become law” just because a statute or regulation references it, but that does not mean governmental incorporation of a copyrighted work never renders free access to the work necessary. Recommending that the Supreme Court deny certiorari in Veeck, the Solicitor General further explained why CCC and Veeck do not conflict and provided guidance on which case applies to a particular fact pattern. ”

“ Under these principles, the Court is persuaded that UpCodes’s representations regarding accuracy and completeness are nonactionable puffery. At the outset, the Court concludes that Plaintiff has adequately pled falsity as to these statements by alleging that while UpCodes claims that the codes it offers are complete and accurate, they are not. ”

“ Plaintiff counters that Defendants minimize the scope of their mistakes. Plaintiff asserts that the errors specifically identified in the Complaint are “not an exhaustive list” (see Complaint ¶ 44) , and urges that it is not required to plead every error at this stage. Moreover, Plaintiff urges that even if there are only two dozen errors among tens of thousands of integrated codes, that still renders the representation false. ”

“ In particular, the Veeck court noted that organizations like SBCCI had survived for over 60 years without any enforcement of their copyright in analogous circumstances, and it added that the technical complexities of model codes suggested there would be robust demand for up-to-date codes regardless of the limited circumstances where a model code’s text entered the public domain. See 293 F.3d at 805–06. Indeed, the court noted that “it is difficult to imagine an area of creative endeavor in which the copyright incentive is needed less. ”

“ As Defendants point out, ICC acknowledges that UpCodes’s website does in fact contain “some” integrated amendments. (See Complaint ¶ 39 (“In other instances, Defendants’ website incorporates some but not all amendments made by the jurisdiction.”) ) . The claim that UpCodes offers integrated amendments is not rendered false by the fact that “some but not all” amendments are posted, or that in some instances, the amendments contain errors. The alleged errors instead undermine UpCodes’s representations of accuracy and completeness, as further discussed below. ”

“ It is not strictly clear from the record that considerations two through four, regarding the broad legal effect of the model codes, apply to all fifteen of the substantive ICC codes at issue here. In their briefing, the parties have (understandably) largely treated the specified standards as interchangeable. However, both BOCA and Veeck as well as the codes evident in the record strongly suggest ICC’s codes carry just as much legal force as its predecessors’ did. ”

“ Consistent with the Court’s Individual Practices, Defendants notified Plaintiff of perceived deficiencies in the Complaint by letter dated August 7, 2020. (See “Premotion Letter,” False Advertising Docket, Dkt. No. 108.) Defendants argue that the claims fail because (1) the purported misrepresentations are either not false or nonactionable puffery; (2) the statements are not material to a purchasing decision; and (3) ICC cannot allege injury because ICC’s own website contains more errors than UpCodes’s website. ”

“ As ICC points out, knowing that Wyoming did not adopt an appendix on tsunami-generated flood hazards probably does not help Wyoming residents comprehend their legal duties. Finally, that Defendants made the redlines on Historic UpCodes available only to paying customers may partially offset any transformative nature of the use, though Supreme Court precedent makes clear that the commercial quality of a use alone should not outweigh convincing transformative qualities. ”

“ Nevertheless, the Court addresses the matter of willfulness below in order to narrow the potential issues for subsequent motion practice (if any) .
If a defendant has infringed a plaintiff’s copyright, the plaintiff may forego actual damages in favor of statutory damages under the Copyright Act. See 17 U.S.C. § 504 (c) . The amount of statutory damages a court may award will generally range from $750 to $30,000 per work infringed. See 17 U.S.C. § 504 (c) (1) . However, the upper range of statutory damages may increase to $150,000 per work if a defendant’s infringement was willful. ”

“ Regarding Defendants’ materiality argument, Plaintiff counters that materiality is a fact issue inappropriate for resolution at this stage and that, at any rate, the alleged misstatements were material because consumers rely on the representations of accuracy they communicate. Plaintiff further contends that any errors in its website create a fact issue and do not impact its injury because no evidence has been presented regarding any customers’ awareness of the alleged errors. ”

“ UpCodes and the Codes Displayed UpCodes is a start-up business founded and run by brothers Garrett and Scott Reynolds. Having worked as a professional architect for several years, Scott Reynolds conceived UpCodes as a website providing easy and convenient access to materials of particular importance to members of the architecture, engineering, and construction (“AEC”) industries, such as the state and local building codes that governed their projects. ”

“ And citizens, attorneys, nonprofits, and private research companies would have to cease all copying, distribution, and display of those works or risk severe and potentially criminal penalties. ... The less bold among us would have to think twice before using official legal works that illuminate the law we are all presumed to know and understand. ”

“ Lastly, in the New Jersey codes, ICC alleges that despite Defendants’ claim to have integrated all 973 amendments to the New Jersey 2018 codes, the UpCodes website does not reflect all the amendments. For example, ICC contends that while the New Jersey building code deleted Chapter 1 of the model International Building Code 2018, UpCodes’s website continues to reference Chapter 1. ”