Atlanta Case Exemplifies Inns’ Mission and Professional Creed

The Bencher—November/December 2021

By Melanie Padgett Powers

A copyright infringement civil case that went all the way to the U.S. Supreme Court started out with members of the Atlanta Intellectual Property (IP) American Inn of Court representing both sides. The way these friends and Inn members communicated with and respected each other as opposing counsel is a powerful tribute to the mission, vision, and professional creed of the American Inns of Court.

The vision of the American Inns of Court is “a legal profession and judiciary dedicated to professionalism, ethics, civility, and excellence.” That vision is woven throughout the American Inns of Court strategic goals and the professional creed.

“We had those foundations of collegiality and civility that were developed via the Inn,” said Sarah Parker, Esquire, who was then an associate at Alston & Bird, which represented the defendant pro bono. Parker is now senior counsel for technology transactions at WarnerMedia.

“We were able to cut through some of the posturing that sometimes goes on between opposing counsels and reach a solution that really benefited everybody,” Parker continued. “We weren’t spending a bunch of our respective clients’ money fighting over the underlying facts when we didn’t need to.”

The case was Georgia v. Public.Resource.org Inc. Counsel included Parker, who was working in the trademarks and copyright group under Jason Rosenberg, Esquire, a partner at Alston & Bird. Rosenberg is the Inn’s vice president, as well as a past program chair and pupillage group chair.

The other side included Warren Thomas, Esquire, then an associate at Meunier Carlin & Curfman, which represented the plaintiff. Thomas is now a principal at the firm. Thomas is a past secretary and communications chair of the Inn. Thomas and Rosenberg are also friends, getting to know each other first through their involvement with the Inn, particularly when they were members of the same pupillage group.

Litigation began after open law advocate Carl Malamud, president and founder of the nonprofit Public.Resource.org, bought a hard-copy volume of the Official Code of Georgia Annotated (OCGA) in 2013. He scanned the entire code and put it online for anyone to access for free. He also sent every Georgia legislator a thumb drive of the copied code.

Public.Resource.org’s mission is to make government information more available to the general public. However, the state requires people to buy the OCGA through its exclusive publishing contract with LexisNexis Group. Therefore, Georgia’s Code Revision Committee of the Georgia General Assembly sent a cease-and-desist letter to the nonprofit. When that didn’t work, in 2015, the committee sued for copyright infringement.

Case law has long held that U.S. laws are a part of the public domain. However, Georgia presented a challenge. The only available copy of the law in Georgia is the annotated version, and the state was claiming copyright specifically of those annotations. Alston & Bird argued that because the annotated version of the code is what is enacted by the Georgia Assembly and is the only “Official” Code of Georgia, the annotations are part of the law and are not eligible for copyright protection.

The firm also made a fair use case. The attorneys pointed out that Public.Resource.org’s use of the OCGA was not commercial, as it was solely for public educational purposes. Counsel also argued that Public.Resource.org’s putting the OCGA online for free was not displacing sales of the OCGA by Georgia or LexisNexis. The individuals making use of the online version of the OCGA were not the target demographic for LexisNexis licenses or the hardbound physical copies.

While the case was before the U.S. District Court for the Northern District of Georgia, Thomas and Rosenberg attended an Inn meeting, where some lighthearted “trash talking” ensued. Each attorney genuinely believed their client was right. But as they ribbed each other, they realized that they agreed on the facts of the case and that the case was mostly about legal issues.

Rosenberg wondered aloud if this could be a summary judgment case. The two went back to their respective teams, telling them about the conversation, and both firms agreed to stipulate to a state of facts.

Thomas said everyone might have eventually realized this could be a summary judgment case, but the relationship fostered by the Inn allowed them to “cut to the chase.” “I think it allowed us to move the case along faster and was the reason our clients really benefitted,” he said. “Often, lawyers are so protective of not wanting to give any ground or any information to the other side, but because of our relationship, we were able to be a little more genuine with each other.

“With lawyers I don’t know I would not have felt able to [do this],” Thomas said. “There’s just a hesitancy to reveal information or your thoughts on a case because lawyers that you don’t know or don’t trust may try to take advantage of that at some point.”

The two sides drafted and then agreed upon a statement of undisputed facts, and the case moved forward. When any questions or issues would arise, Thomas and Rosenberg would simply call each other.

“It allowed us to work through those issues the way lawyers seemed to in old movies. You just don’t see that in real life like you might want,” Rosenberg said. “Having members of the Inn on both sides of this—and who believe professionalism, ethics, and civility are important—allowed us to diffuse some of the tensions you have in any litigation, in an adversarial process.”

In March 2017, the trial court ruled in favor of the state, ruling that the defendant did not prove fair use and that the annotations were eligible for copyright protection. Or, as Rosenberg, put it, “We lost soundly in the district court. We almost had fees awarded against us!”

The defendant appealed to the 11th Circuit, which reversed the decision. Georgia then filed petition for a writ of certiorari to the U.S. Supreme Court, which was granted to decide the question of the government edicts doctrine. At that point, firms in the Supreme Court bar took over the case, but the Atlanta IP Inn members continued to follow it closely.

“I was interested from the beginning because it was copyright,” Parker said. “It presented some really novel issues that hadn’t really been dealt with before.” Parker started her new job at WarnerMedia while awaiting the decision of the 11th Circuit. “Even after I left Alston & Bird, I absolutely kept an eye on it at the 11th Circuit and then followed the briefing at the Supreme Court level and the ultimate decision.”

In April 2020, the U.S. Supreme Court ruled 5–4 for the defendant, saying Georgia does not own copyright for the annotations in the code. The majority opinion, written by Chief Justice John Roberts, said official works of the legislature could not be copyrighted because it would deprive citizens of the knowledge of those laws.

Parker, who had helped write the initial brief and file the appeal, said the ruling was exciting. “I felt like Jason and I had absolutely done our part to help bring this result to bear,” she said. “I was really proud of the team that I got to work with. I felt very proud to be part of a case that got to go to the Supreme Court and ultimately have our side be the winning argument.”

Kevin Cranman, Esquire, immediate past president of the Inn, was not involved in the case, but he recognized early on that the professionalism and civility fostered by the American Inns of Court and their own Atlanta IP Inn benefitted the case, the clients—saving money and time—and the law. Cranman is an IP lawyer representing Modiano and Partners, a European IP law firm.

“The goal of the Inn is to refine professionalism and give people a focus on what makes law special, as opposed to having [lawyers] be a punchline,” Cranman said.

Cranman said it was a testament to how serious Inn members take the national organization’s professionalism creed, which includes, in part, the commitment to “treat the practice of law as a learned profession and … uphold the standards of the profession with dignity, civility, and courtesy.”

“We may not wake up and think ‘I’m going to use my Atlanta IP Inn of Court-learned professionalism today,’” Cranman said, “but I think it’s something we become refined in through the Inn and therefore allows us to become better lawyers.”

Melanie Padgett Powers is a freelance writer and editor in the Washington, DC, area.