The Copyright Debate

The Copyright Debate

Whose Rights Prevail When Privately Developed Standards Are Incorporated into Law?

This piece was originally published in the October 2016 issue of electroindustry.

Clark R. Silcox, Legal Counsel, NEMA


Privately developed standards, often a form of voluntary self-regulation, facilitate commerce and serve a variety of economic and societal purposes and interests.

Privately developed standards

  • facilitate common understanding between parties to a transaction about a product or service;
  • identify compatibility attributes among objects that must work or operate together;
  • facilitate a reduction in costs that lowers price and expands aggregate output;
  • establish minimum (and sometimes maximum) performance attributes; and
  • establish uniform means of measurement and conformity assessment.

These interests and purposes may stimulate mandatory legal regulation, although that is more often the case when private self-regulation does not exist, has failed to secure compliance, or is unable to resolve an issue.

During the development of mandatory legal regulation, government will often research whether voluntary self-regulation exists and assess whether self-regulation should be part of the mandate. In the U.S., the National Technology Transfer and Advancement Act of 1995 and the Office of Management and Budget (OMB) Circular A-119 encourage this.

Referencing a widely accepted, privately developed standard facilitates compliance by potentially reducing the government’s enforcement burden, the cost to regulated parties, and the cost of creating a regulation from scratch. Developing standards, however, is not cheap. The cost is typically borne by not-for-profit standards developing organizations (SDOs), other collaborative groups, and individual stakeholders. Costs are recouped in different ways, one of which is the sale of published standards under claim of copyright law protection. For some SDOs, cost recoupment is essential to their continuing ability to perform their functions. For others, like NEMA, it is one way among several to recoup the cost.

Over the past decade, there has been a lively debate about whether privately developed standards that are referenced in law lose their copyright status because they are part of the law. It has been taking place in regulatory and advisory venues, such as the Administrative Conference of the United States, the Office of Federal Register (OFR), the OMB, federal courts, and recently at the American Bar Association (ABA).

The U.S. Constitution assigns to Congress the power to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Congress enacted the Copyright Act of 1790 and revised it several times, elucidating in 1909 and 1976 that the government’s publication or republication of a work in which copyright subsists does not abridge or annul the copyright and does not constitute an appropriation of such copyright material.

The 1909 act declares the following:

That no copyright shall subsist…in any publication of the United States Government, or any reprint, in whole or in part, thereof: Provided, however, That Government publication or republication by the Government…shall not be taken to cause any abridgement or annulment of the copyright or to authorize any use or appropriation of such copyright material without the consent of the copyright proprietor.

The 1976 act states the following:

Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest or otherwise.

Importantly, the 1976 act defined “work of the United States Government” as “work prepared by an officer or employee of the United States Government as part of that person’s official duties.” Privately developed standards do not fit this definition. In its notes to the 1976 act, the House Judiciary Committee clarified that the provisions relating to official government works in the 1909 and 1976 acts enjoy the same premise. The inescapable conclusion is that privately developed standards that are incorporated by reference (IBR’d) do not lose their copyright protection.

A few courts have expressed concerns that the evisceration of a copyright in a privately developed document because the government referenced it, raises substantial constitutional concerns. These courts have construed the Copyright Act in a way to avoid reaching a constitutional question, noting that another section of the act provides that “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.”

Privately developed standards encompassed in this debate include model codes, behavioral standards such as codes of ethics, technical standards used in design, test procedures, labeling, and other information disclosure standards. Almost all of these were developed for purposes other than their relevance to legal regulation.

Some advocates assert that copyright is extinguished when the government references a privately developed standard and that public interest requires that standards be accessible without cost.

The OMB notes, “the costs of standards development are substantial, and requiring that standards be made available ‘free of charge’ will have the effect of either shifting those costs onto others or else depriving standards developing bodies of the funding through which many of them now pay for the development of these standards. Such changes could have serious adverse consequences on important governmental objectives, including the ability of U.S. regulators to protect the environment and the health, welfare, and safety of U.S. workers and consumers.”

At first, the ABA disagreed that copyright in a government-referenced, privately developed standard is lost when IBR’d, but it recently announced support for the proposition that “read-only” access to standards referenced in regulation be available.

In 2014, the OFR amended its rule that directs federal agencies’ consideration of incorporating privately developed standards in regulations. Agencies are to “discuss, in the preamble of the proposed rule, the ways that the materials it proposes to IBR are reasonably available to interested parties or how it worked to make those materials reasonably available to interested parties.” The OFR declined to define “reasonably available,” deciding that agencies needed flexibility.

It is be surprising that different SDOs have different views about the ABA’s proposal for “read-only” access. Several SDOs already provide read-only access on their websites or the IBR Portal of the American National Standards Institute (ANSI).

NEMA provides read-only access to its standards through ANSI’s portal and in other ways. Other SDOs are rightly concerned that mandating read-only access to their standards will result in users ceasing to buy them. Opening free, web-based standards on mobile devices may destroy the economic viability of an SDO’s standards development activity.

A copyright infringement lawsuit pending in the U.S. District Court for the District of Columbia addresses this debate. Oral argument on September 12 focused on the issues above as well as whether wholesale copying of a document subject to copyright in this context is “fair use” under the Copyright Act. A decision is expected in the coming months.

Read the October 2016 issue of electroindustry.

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