2000 WL 628731

2000 Copr.L.Dec. P 28,073, 54 U.S.P.Q.2d 1924

United States District Court, S.D. New York.

COUNTY OF SUFFOLK, New York, Plaintiff,

v.

EXPERIAN INFORMATION SOLUTIONS, INC. d/b/a Experian, d/b/a Experian Real Estate

Solutions, TRW Redi Property Data, a/k/a Information Systems and Services,

Inc., and First American Real Estate Solutions, Defendants.

No. 99CIV.8735(JFK).

May 15, 2000.

Robert J. Cimino, Suffolk County Attorney, Hauppauge, Of Counsel: Jeltje deJong, for Plaintiff.

Piper Marbury Rudnick & Wolfe LLP, New York, Of Counsel: Andrew L. Deutsch, Edward F. Maluf, for Defendants.

MEMORANDUM OPINION and ORDER

KEENAN, District J.

Before the Court is Defendant First American Real Estate Solutions LLC's [Footnote 1] motion to dismiss Plaintiff's Complaint in its entirety for failure to state a claim upon which relief may be granted, pursuant to Fed.R.Civ.P. 12(b)(6). For the reasons discussed below, Defendant's motion is denied.

The Parties

Plaintiff County of Suffolk is a municipal corporation organized and existing pursuant to the laws of the State of New York, with offices in Hauppauge and Riverhead, New York.

The Complaint alleges that Defendant Experian Information Solution, Inc. ("Experian") is a foreign corporation with offices located at 1633 Broadway, New York, New York and that Defendant First American Real Estate Solutions is a foreign corporation with offices located at 344 Winton Place, Rochester, New York. The Complaint also alleges that Defendant TRW Redi Property Data is a real estate agency with offices located at 475 5th Avenue, New York, New York.

Defendant First American Real Estate Solutions LLC ("First American") states in this motion to dismiss that it acquired the business of Experian, including the sale of information concerning real property ownership alleged in the Complaint, on January 1, 1998, and now operates that business through its First American Real Estate Solutions division.

Defendant TRW Redi Property Data has not answered the Complaint and is not moving to dismiss here.

Background

The Complaint alleges the following facts which the Court accepts as true for purposes of this motion.

During 1974, Plaintiff, through its Real Property Tax Service Agency, created and designed a series of original maps ("tax maps") and an index system reflecting ownership, size, and location of real property in each of Suffolk County's political subdivisions. All tax district and special district boundaries were created and referenced by Plaintiff upon its maps and indexes. New maps and indexes are created annually to reflect alterations in size, shape, and/or parcels of land, subdivisions, or roadways. Currently, there are twelve albums representing ten townships containing over 4,600 tax maps which show over 500,000 parcels of land. See Compl. 10. Plaintiff alleges that its tax maps contain a substantial amount of original material, research, compilation, and organization wholly original with Plaintiff and are copyrightable subject matter under the laws of the United States. See id. 11. Plaintiff has received copyright registrations for these works from the registrar of copyrights. Plaintiff offered tax maps to the general public with a notice of copyright affixed to each map, and with notice set forth in the introduction to each tax map album. Plaintiff duly registered its copyright claims from the initial cartographic compilation in 1974, and during various times thereafter in order to copyright new and amended maps. See id. 12. Plaintiff is the sole proprietor of all right, title and interest in and to such copyrights and in and to Plaintiff's maps. See id. 14.

The Complaint alleges that Defendants have infringed Plaintiff's copyrights in the tax maps by publishing and placing on the market without license or consent of the Plaintiff, copies of the tax maps and CD Rom disks containing Plaintiff's maps. Plaintiff claims that it notified Defendants of their alleged infringement of Plaintiff's copyright but that Defendants refused to stop the infringing conduct. Plaintiff then filed this action seeking to enjoin Defendants from copying, utilizing, and marketing in any manner the Suffolk County Tax maps or any portion thereof and seeking damages suffered as a result of Defendants' infringement.

First American now moves to dismiss Plaintiff's Complaint in its entirety.

Discussion

Standard of Review Under Rule 12(b)(6)

A motion to dismiss for failure to state a claim pursuant to Rule 12(b)(6) should be granted only if it "appears beyond doubt that the plaintiff can prove no set of facts in support of his claim that would entitle him to relief." Cooper v. Parsky, 140 F.3d 433, 440 (2d Cir.1998) (quoting Conley v. Gibson, 355 U.S. 41, 45-46, 78 S.Ct. 99, 102 (1957)). The factual allegations set forth in the complaint must be accepted as true, see Zinermon v. Burch, 494 U.S. 113, 118, 110 S.Ct. 975, 979 (1990), and the court must draw all reasonable inferences in favor of plaintiff. See Thomas v. City of New York, 143 F.3d 31, 36 (2d Cir.1998). The issue on a motion to dismiss "is not whether ... plaintiff will ultimately prevail but whether the claimant is entitled to offer evidence to support the claims." Villager Pond, Inc. v. Town of Darien, 56 F.3d 375, 378 (2d Cir.1995) (citation omitted). Nevertheless, the complaint must contain allegations concerning each of the material elements necessary to sustain recovery under a viable legal theory. See Connolly v. Havens, 763 F.Supp. 6, 9 (S.D.N.Y.1991).

Defendant now argues that Plaintiff's Complaint must be dismissed on three separate grounds. First, Defendant contends that Plaintiff's tax maps are not copyrightable because they lack the originality required by the Constitution and the Copyright Act. Second, Defendant maintains that even if there were a creative element, Plaintiff's tax maps are in the public domain and may not be copyrighted. Third, Defendant asserts that Plaintiff's claims that it holds a copyright in the tax maps runs counter to the express public policy of New York State, as reflected in the Freedom of Information Law (FOIL), N.Y. Pub. Off. Law 84. The Court will now address each of Defendant's arguments.

1. Whether Plaintiff's tax maps lack originality

To succeed on its claim for copyright infringement, Plaintiff must prove that "(1) the defendant has actually copied the plaintiff's work; and (2) the copying is illegal because a substantial similarity exists between the defendant's work and the protectible elements of plaintiff's." Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995) (quoting Fisher- Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 122-23 (2d Cir.1994)). In this case, Defendant argues that Plaintiff's tax maps lack originality and are uncopyrightable as a matter of law because the form and content of county tax maps are fixed by state law and regulations. Thus, Defendant maintains that Plaintiff cannot establish the second element of infringement.

To qualify for copyright protection, a work must be original to the author. See Feist Publications, Inc. v. Rural Telephone Serv., Co. Inc., 499 U.S. 340, 345, 111 S.Ct. 1282, 1287, 113 L.E.2d 358 (1991). "Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity." See id. Originality is a constitutional requirement. See id. at 346, 111 S.Ct. at 1288. While facts are not copyrightable, compilations of facts may possess the requisite originality.

The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws.

See id. at 348, 111 S.Ct. at 1289.

In Mason v. Montgomery Data, Inc., 967 F.2d 135 (5th Cir.1992), the Fifth Circuit held that Plaintiff's real estate ownership maps covering a county in Texas were copyrightable under Feist. The Fifth Circuit stated that "[the plaintiff's] maps pass muster under Feist because [the plaintiff's] selection, coordination, and arrangement of the information that [the plaintiff] depicted are sufficiently creative to qualify his maps as original 'compilations' of facts." Mason, 967 F.2d at 141. In Mason, there was evidence in the record of the independent choices the plaintiff had to make to select information from numerous and sometimes conflicting sources and to depict that information on the maps. See id. The Second Circuit in Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739 (2d Cir.1998) found that Plaintiff's map of New York City was copyrightable but noted that because the street locations, bodies of water, and landmarks depicted in the map were physical facts, the only material in the map capable of copyright protection, and demanding comparison, was original material. 159 F.3d at 747. The Second Circuit went on to compare Plaintiff's map with the allegedly infringing map and found that the two maps were not sufficiently similar to state a claim for copyright infringement. See id. at 748.

In this case, Defendant argues that Plaintiff's tax maps lack any "creative spark" because New York State law and regulations dictated the selection of the information included in the tax maps and the format used to present that information. Defendant contends that, because originality is lacking from Plaintiff's tax maps, the tax maps are not copyrightable and the Complaint must be dismissed.

As noted above, the Complaint alleges that the tax maps contain a substantial amount of original material, compilation, and organization. Because the issue on a motion to dismiss "is not whether ... plaintiff will ultimately prevail but whether the claimant is entitled to offer evidence to support the claims," Villager Pond, 56 F.3d at 378, the Court concludes that the motion to dismiss must be denied. Plaintiff is entitled to offer evidence regarding the originality of its tax maps in order to support its claim for copyright infringement.

2. Whether Plaintiff's tax maps are in the public domain

Defendant next argues that Plaintiff's tax maps may not be copyrighted because they are in the public domain. Certain government works may not be copyrighted as a matter of public policy. State statutes, regulations, and judicial opinions have been found to be public domain materials that may not be copyrighted. See, e.g., Banks v. Manchester, 128 U.S. 244 (1888); Building Officials & Code Adm. v.Code Technology, Inc., 628 F.2d 730 (1st Cir.1980). In Building Officials, the First Circuit suggests that judicial opinions and statutes are in the public domain and not subject to copyright for several reasons. First, the public owns the law because it usually pays the salary of those who draft legislation. Second, "[t]he citizens are the authors of the law, and therefore its owners, regardless of who actually drafts the provisions, because the law derives its authority from the consent of the public ... through the democratic process." Building officials, 628 F.2d at 734. Third, due process requires that people have notice of what the law requires of them so that they may obey it and avoid its sanctions. See id. Defendant argues that the Court should find that Plaintiff's tax maps are likewise in the public domain and not copyrightable. Defendant fails to cite any case finding that county tax maps are in the public domain and concedes in its reply papers that the question of whether official tax maps prepared by a government agency should be treated as in the public domain from inception is a matter of first impression.

In this case, the Court declines to find that county tax maps are in the public domain from inception and, as a result, not copyrightable. As noted above, county real estate tract maps have been found copyrightable. See Mason, 967 F.2d at 142. Although the factual information contained in Plaintiff's tax maps is in the public domain and not copyrightable, an original compilation of those facts is entitled to copyright protection. See Feist, 499 U.S. at 348, 111 S.Ct. at 1289. As a result, Plaintiff is entitled to offer evidence regarding the originality of its tax maps. Moreover, the Court finds that the due process and democratic process rationales for the rule that judicial opinions and statutes are in the public domain do not apply to county tax maps.

3. Whether the FOIL bars Plaintiff from owning copyrights in tax maps

Defendant next argues that New York's Freedom of Information Law (FOIL), N.Y. Pub. Off. Law 84-90, bars Plaintiff from owning copyright in tax maps. The FOIL provides the public with access to public records at all levels of government in New York State. As stated in the legislative declaration that heads the statute:

The Legislature hereby finds that a free society is maintained when the government is responsive and responsible to the public, and when the public is aware of governmental actions. The more open a government is with its citizenry, the greater the understanding and participation of the public in government.

* * *

The Legislature therefore declares that government is the public's business and that the public, individually and collectively and represented by a free press, should have access the records of government in accordance with the provisions of this article.

N.Y. Pub. Off. Law 84. FOIL requires that "[e]ach agency shall, in accordance with its published rules, make available for public inspection and copying all records" except for certain records specified in the statute to which access may be denied. N.Y. Pub. Off. Law 87(2).

Plaintiff maintains that it has complied with the provisions of the FOIL because it has provided the tax maps to the public upon request. According to Plaintiff, access to the tax maps is freely given without limitation. Plaintiff has never denied Defendant access to copies of its tax maps. By obtaining copyrights to its maps, Plaintiff contends that it has exclusive authority to reproduce or to authorize reproduction of these maps by means of a license agreement and thereby to ensure that what is disseminated is accurate, current, and of acceptable quality. Plaintiff argues that while the FOIL requires Plaintiff to give Defendant access to its maps, the FOIL does not give Defendant the right to publish and sell Plaintiff's copyrighted maps. The Court agrees based on the plain language of the statute. [Footnote 2]

Conclusion

For the reasons stated above, the Court denies Defendant's motion to dismiss. The Court directs both parties to attend an initial case Conference on June 13 at 4:45 in Courtroom 20C, 500 Pearl Street.

SO ORDERED.

FOOTNOTES

Footnote 1. Although Plaintiff brought suit against First American Real Estate Solutions, this Defendant has indicated in its papers that its correct name is First American Real Estate Solutions LLC. First American Real Estate Solutions LLC also states that First American Real Estate Solutions is an operating division of First American Real Estate Solutions LLC and has no independent juridical existence.

Footnote 2. Defendant relies on an unpublished advisory opinion of the Committee on Open Government, the state agency which oversees implementation of FOIL, apparently given in response to an inquiry from a commercial company, to argue that FOIL supersedes a claim of copyright for a government produced record. The unpublished advisory opinion, however, is not binding authority. The Court therefore declines to find that the FOIL supersedes Plaintiff's copyrights.