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May 7, 1997

 

 

 

Hon. Julie Conley Holcomb
City Clerk
City of Ithaca
108 East Green Street
Ithaca, NY 14850

The staff of the Committee on Open Government is authorized to
issue advisory opinions. The ensuing staff advisory opinion is
based solely upon the information presented in your correspondence,
unless otherwise indicated.

Dear Ms. Holcomb:

As you are aware, I have received your letter of April 14.
You referred to an advisory opinion of January 8 addressed to Mr.
Kevin Harlin of the Ithaca Journal concerning the fees charged by
the City of Ithaca for copies of the City's Municipal Code. The
Code is maintained in a two volume hard copy edition and in an
electronic version. In brief, it was advised that the fee for the
electronic version should be based upon the actual cost of
reproduction.

In your letter to me and in our conversation, you indicated
that the City contracted with a private firm that developed the
electronic version of the Code. You indicated that the City pays
for quarterly supplementation of the Code, as well as software
upgrade fees and an annual licensing fee. Part of the product made
available by the publisher is "a stand-alone computer program which
includes not only the text of the City's code, but also the
programming necessary to allow a query mechanism, clipboards,
bookmarks, highlighter, tutorial, etc." The software bears a
license that appears to be equivalent to a copyright, and with the
software, you wrote that the electronic information made available
to the City "is much more than simply the City's code on five
computer disks."

When preparing the opinion at the request of Mr. Harlin, I was
unaware of the fact that the electronic version of the Code
includes licensed software. From my perspective, that factor
likely would have required a somewhat different response.

I note that there is no judicial decision of which I am aware
in New York that deals with a request made under the Freedom of
Information Law that includes information or records that are
copyrighted or licensed by a party outside of government. In terms
of the ability of a citizen to use an access law to assert the
right to reproduce copyrighted material, the issue has been
considered by the U.S. Department of Justice with respect to
copyrighted materials, and its analysis as it pertains to the
federal Freedom of Information Act is, in my view, pertinent to the
issue as it arises under the state Freedom of Information Law.

The initial aspect of its review involved whether the
exception to rights of access analogous to §87(2)(a) of the Freedom
of Information Law requires that copyrighted materials be withheld.
The cited provision states that an agency may withhold records that
are "specifically exempted from disclosure by state or federal
statute." Virtually the same language constitutes a basis for
withholding in the federal Act [5 U.S.C. 552(b)(3)]. In the fall
1983 edition of FOIA Update, a publication of the Office of
Information and Privacy at the U.S. Department of Justice, it was
stated that:

"On its face, the Copyright Act simply cannot
be considered a 'nondisclosure' statute,
especially in light of its provision
permitting full public inspection of
registered copyrighted documents at the
Copyright Office [see 17 U.S.C. 3705(b)]."

Since copyrighted materials are available for inspection, I agree
with the conclusion that records bearing a copyright could not be
characterized as being "specifically exempted from
disclosure...by...statute."

The next step of the analysis involves the Justice
Department's consideration of the federal Act's exception
(exemption 4) analogous to §87(2)(d) of the Freedom of Information
Law in conjunction with 17 U.S.C. §107, which codifies the doctrine
of "fair use". Section 87(2)(d) permits an agency to withhold
records that "are trade secrets or are submitted to an agency by a
commercial enterprise or derived from information obtained from a
commercial enterprise and which if disclosed would cause
substantial injury to the competitive position of the subject
enterprise." Under §107, copyrighted work may be reproduced "for
purposes such as criticism, comment, news reporting, teaching
(including multiple copies for classroom use), scholarship, or
research" without infringement of the copyright. Further, the
provision describes the factors to be considered in determining
whether a work may be reproduced for a fair use, including "the
effect of the use upon the potential market for or value of the
copyrighted work" [17 U.S.C. §107(4)].

According to the Department of Justice, the most common basis
for the assertion of the federal Act's "trade secret" exception
involves "a showing of competitive harm," and in the context of a
request for a copyrighted work, the exception may be invoked
"whenever it is determined that the copyright holder's market for
his work would be adversely affected by FOIA disclosure" (FOIA
Update, supra). As such, it was concluded that the trade secret
exception:

"stands as a viable means of protecting
commercially valuable copyrighted works where
FOIA disclosure would have a substantial
adverse effect on the copyright holder's
potential market. Such use of Exemption 4 is
fully consonant with its broad purpose of
protecting the commercial interests of those
who submit information to government...
Moreover, as has been suggested, where FOIA
disclosure would have an adverse impact on
'the potential market for or value of [a]
copyrighted work,' 17 U.S.C. §107(4),
Exemption 4 and the Copyright Act actually
embody virtually congruent protection, because
such an adverse economic effect will almost
always preclude a 'fair use' copyright
defense...Thus, Exemption 4 should protect
such materials in the same instances in which
copyright infringement would be found" (id.).

Conversely, it was suggested that when disclosure of a
copyrighted work would not have a substantial adverse effect on the
potential market of the copyright holder, the trade secret
exemption could not appropriately be asserted. Further, "[g]iven
that the FOIA is designed to serve the public interest in access to
information maintained by government," it was contended that
"disclosure of nonexempt copyrighted documents under the Freedom of
Information act should be considered a 'fair use'" (id.).

In my opinion, due to the similarities between the federal
Freedom of Information Act and the New York Freedom of Information
Law, the analysis by the Justice Department could properly be
applied when making determinations regarding the reproduction of
copyrighted materials maintained by entities of government in New
York. In sum, if reproduction of copyrighted material would "cause
substantial injury to the competitive position of the subject
enterprise," i.e., the holder of the copyright, in conjunction with
§87(2)(d) of the Freedom of Information Law, it would appear that
an agency could preclude reproduction of the work. On the other
hand, if reproduction of the work would not result in substantial
injury to the competitive position of the copyright holder, it
appears that the work would be available for copying under the
Freedom of Information Law.

In the context of the situation that you described, it is
likely that you have the ability to disclose or reproduce the
software only in a manner consistent with the terms of an agreement
between the City and the holder of the copyright or license.
Disclosure absent consideration of the terms of such an agreement
might subvert the purpose for which the copyright or license
exists. Consequently, it appears that the City has the ability to
charge a fee for reproduction in conjunction with the terms of such
an agreement, for the work in question includes software licensed
by a third party.

Lastly, your letter and our conversation also included
reference to the City's subscription service for updates to the
Code. In my view, providing records by means of a subscription
represents an action that would exceed an agency's obligations
under the Freedom of Information Law.

The Freedom of Information Law pertains to existing records.
Therefore, a request that is prospective, involving records that
have not yet been prepared and which do not yet exist, need not be
honored under the Freedom of Information Law. In a technical
sense, an agency can neither grant nor deny access to records that
do not yet exist. When an applicant for records seeks to engage in
an agreement with an agency and the agency promises to make records
available on an ongoing or periodic basis, i.e., by means of a
subscription, the agency in my opinion would be providing a service
above and beyond the requirements of the Freedom of Information
Law. In that kind of situation, I do not believe that the agency
would be bound by the provisions of that statute pertaining to
fees. It could in my view establish fees in accordance with a
subscription agreement separate from the requirements of the
Freedom of Information Law.

I hope that I have been of assistance. If you would like to
discuss the matter, please feel free to contact me.

Sincerely,

 

Robert J. Freeman
Executive Director

RJF:jm

cc: Kevin Harlin