By Shane Wax
Early this year, VICE published an article about the MTA sending a take-down notice under the Digital Millennium Copyright Act over an NYC subway map designed by Jake Berman, a private citizen, and an amateur mapmaker, being sold by him on Etsy.com.[1] The story raises a couple of uncommon questions in copyright law that merit discussion – government ownership of copyrights and the extent that maps are afforded protection under US copyright law.
Background
Jake Berman decided to create his map of the NYC subway system in 2009 after an all-too-common New York City experience – he was waiting on a subway platform for a half-hour before he realized the train he was waiting on did not run on weekends. Noting that the famous maps plastered in every subway station and train car didn’t include that information, Berman dedicated over 300 hours to draw his version of the subway map. When Berman learned – ironically enough – that a third-party was selling copies of his subway map on Etsy.com, Berman decided to commercialize his creation himself, earning some extra pocket change along the way. Yet, despite Berman’s map having circulated the Internet for over a decade, the MTA just discovered his commercial efforts and submitted a DMCA take-down notice to Etsy. Berman, however, submitted a counter-notice, and his map is now once again available for sale on the website.
The story has picked up steam, being discussed by the Brooklyn Daily Eagle, techdirt, and various social media sites.[2] Some noted that it is not the first time New Yorkers felt the MTA acted with a heavy hand over its claimed intellectual property rights – in the past, the organization sued a Brooklyn bagel shop in 2005 for having the audacity to call themselves “F Line Bagels” and in 2013, the New York Times reported that the MTA sends out an estimated 600 cease-and-desist letters per year over claims of copyright and trademark infringement. [3] Still, many everyday New Yorkers have been left angry and confused. Some do not understand how the MTA – a public corporation – can own intellectual property and prohibit the public from using it. Many were angry with the big picture – it’s no secret the MTA has been struggling financially for years, and perceived sociopolitical injustices often mire the agency, so why waste the resources going after a small-time artist who isn’t profiting? Still others, perhaps most appropriately, were just frustrated with the factual and legal justifications underlying the MTA-Berman dispute.
Question 1: Can a government or public agency own intellectual property?
The answer, for the most part, is yes – a government can own the copyright in original work and can exclude others from reproducing, distributing or otherwise taking commercial advantage. However, there are some significant exceptions.
Under the US Copyright Act, any person, entity, organization, or municipality can qualify as the “author” of an original, copyrightable work provided they are “the party who creates the work.” [4] However, there is one important exception: under Section 105 of the Copyright Act, the United States government cannot qualify as the author of an original work created by a federal officer or employee in the regular course of their official duties.[5] As such, presidential speeches, congressional minutes, decisions of the federal judiciary, census reports, and the like are not copyrightable and can be used freely by the public. On the other hand, Section 105 permits the United States government to own a copyright in a work that was created by an independent person (i.e., not a government employee), who then assigns, bequeaths or otherwise transfers his or her copyright to the United States, just as a person can freely transfer personal or real property.
Importantly, however, Section 105 only disqualifies the US government from qualifying as the author of an otherwise copyrightable work; it does not disqualify any state, local, or foreign governments.[6] Therefore, a state, local government or a state-owned enterprise can qualify as an author, unless it has disqualifying laws established.[7]
To be sure, there is one additional important exception that narrows the range of copyrightable works that applies to every government, municipal entity, or agency seeking copyright protection in the United States. It is a core tenant of copyright law – neither facts nor “the law” is copyrightable, and therefore, no copyright protection inures in laws or statutes, or pure data collected and published by the government.[8]
A New York court would probably have no difficulty finding that the MTA, as a public benefit corporation owned by the State, has the standing to lay claim to the copyright ownership in any subway map created or acquired by or on behalf of the MTA.
Question 2: Can the MTA claim copyright infringement over its subway maps?
Yes – to a certain extent. Maps have been expressly subject to federal copyright protection since the very first Copyright Act of 1790,[9]. However, the protection afforded to maps is different from the protection afforded to typical pictorial works, because a map, by its very nature, is a reference work generally made to convey geographical information accurately.[10] But, as noted above, facts, in and of themselves, are not covered by the Copyright Act. This seems to present a problem for cartographers “because the street locations, landmass, bodies of water and landmarks depicted in a map are physical facts.” [11] How does the law reconcile these disputing notions: that facts are not protectable, but maps, which convey facts, are?
First, “maps, unlike telephone directories and other factual compilations, have an inherent pictorial or photographic nature that merits copyright protection.” [12] As such, authors may claim copyright protection in the expressive portion of a reference work, provided it has sufficient originality. “To be sure, the requisite level of creativity is extremely low [and] even a slight amount will suffice,” but courts are reluctant to find minimum levels of creativity in map features that are commonplace or dictated by physical facts. For example, in Streetwise Maps v. VanDam, Inc., the Second Circuit Court of Appeals found that “purple water and clear street grids [superimposed on a gray landmass background] are cartographic conventions that have been used since 1943,” and therefore lacked the requisite originality. On the other hand, the Court pointed to the covers of the competing maps, which incorporated different color schemes and images.[13]
Additionally, reference works like maps constitute compilations in that the authors will make unique choices about which facts to present and how to present them, and, while facts are not copyrightable, compilations of facts may enjoy copyright protection if “it features an original selection or arrangement of facts.” [14] To be sure, “the copyright is limited to the particular selection or arrangement” of facts, which remain in the public domain, even if included as part of a compilation.[15] Nevertheless, an “author’s selection, coordination, and arrangement of facts . . . are protected only if they were made independently and entail a minimal degree of creativity.” [16]
For example, in Feist Publications, Inc. v. Rural Telephone Service Co., the Supreme Court held that “there is nothing remotely creative about arranging names alphabetically in a white pages directory. It is an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course.” In Streetwise, the Second Circuit suggested that a cartographer can make original choices as to the selection and arrangement of facts, for example, in the use of “proportionally wider streets and more colors to identify major streets,” as well as the identification of “different types of places of interest,” including the type of marking used to denote the place of interest, such as with plain dots versus replicas of landmarks.[17]
Applying these principles to maps of the NYC subway system, which choices in the selection and arrangement of facts might be sufficiently creative to merit copyright protection, and which map features are unlikely to be protected?
As noted in the VICE article, the MTA cannot claim copyright in salient geographical facts, such as “the fact that there is a transit station at Union Square and that the 4, 5, 6, N, Q, R, W, and L lines stop there. Nor can it copyright the general location of a stop when plotted on a map, the direction in which it runs, geographic entities like the island of Manhattan, or the names of streets.” [18] Additionally, while courts sometimes consider coloring patterns, it is unlikely the MTA could claim copyright in the display of the 4, 5, 6 lines with green or the N, Q, R, W lines in yellow, as these colors are firmly assigned to designated train lines and convey factual information to the reader. The MTA also could not present a strong claim of creativity in the selection of major parks, thoroughfares and avenues, particularly given that their choice of which streets to display generally coincides with the locations of subway stations. Finally, the MTA certainly could not claim copyright in protection in using beige for land, blue for water, and green for parks.
What features are left open to creativity? More than you might think. While certain factual details may be necessary to create an effective and accurate map, other factual details may be important, but unnecessary – such that the decision to include them may be sufficiently original. For instance, displaying landmarks and the names of neighborhoods is helpful, but not necessary in presenting information about subway stations. Similarly, there is arguably some creativity in the selection of which parks to include (although the inclusion of major parks like Central Park or Prospect Park would not be creative). Additionally, the MTA recently updated its primary subway map to include the International Symbol of Access to denote which subway stations have elevators.
Further, one could look at the non-selection of facts that compelled Berman to make his map in the first place – between West 4th Street and Rockefeller Center, the B, D, F, M lines are all represented by a single orange line in the official MTA map, but there are four orange parallel lines on both Berman’s map and the MTA’s alternative map used in ‘The Weekender,’ one orange line for each subway line.[19] Additionally, there are creative decisions to make about how accurately to portray the overall system, such as the extent a map should accurately represent the geographic shape of landmasses – the MTA’s primary map attempts to mimic the boundaries and curves of each borough accurately. At the same time, the “Weekender Map” opts for a boxier, cleaner look, at the expense of accurately portraying geographic elements. Similarly, while the MTA’s primary map shows twists and turns on subway routes with curved lines, Berman’s map and the MTA’s alternative map utilize hard angles. Finally, one could make outside-the-box choices with respect to color – perhaps using unusual selections to denote landmasses, parks, and water, or using colors to identify subway lines that do not correspond to the colors used by the MTA.
Indeed, Berman cited a number of these differences when interviewed by VICE, and presumably included them in his counter-notice. Whether a court would agree with Berman or with MTA, however, is another story, and one likely not to be determined.
[1] Aaron Gordon, The MTA Is Going After an Etsy Artist Over a New York Subway Map It Didn’t Make, VICE, Jan. 9, 2020, https://www.vice.com/en_us/article/qjd8j3/the-mta-is-going-after-an-etsy-artist-over-a-new-york-subway-map-it-didnt-make.
[2] Alex Williamson, MTA demands amateur artist stop selling unofficial subway map, Brooklyn Daily Eagle, Jan. 15, 2020, https://brooklyneagle.com/articles/2020/01/15/mta-demands-amateur-artist-stop-selling-unofficial-subway-map; Mike Masnick, Why Is The NYC MTA Going After A Random Artist Who Created A Different Subway Map For Infringement?, Techdirt, Jan. 16, 2020, https://www.techdirt.com/articles/20200115/23550443741/why-is-nyc-mta-going-after-random-artist-who-created-different-subway-map-infringement.shtml.
[3] Matt Flegenheimer, C Train Cafe? Transit Agency May Put Up Fight, NY. Times, Aug. 23, 2013, https://www.nytimes.com/2013/08/24/nyregion/c-train-cafe-the-mta-may-put-up-a-fight.html
[4] Comty. for Creative Non-Violence v. Reid, 490 US 730 (1989); See 17 USC. § 201; David Nimmer, Copyright in the Dead Sea Scrolls: Authorship and Originality, 38 Hous. L. Rev. 1, 13 (2001) (“US copyright law adopts a concept of authorship that is remarkably broad, albeit not completely unbounded.”); Russ VerSteeg, Defining “Author” for Purposes of Copyright, 45 Am. Univ. L. Rev. 1323 (1996).
[5] “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.” 17 USC. § 105; see See US Copyright Office, Compendium of US Copyright Office Practices § 313.6(C)(1) (3d ed. 2017), available at https://www.copyright.gov/comp3/docs/compendium.pdf. Nevertheless, this statutory prohibition is not without its own exceptions. Certain public agencies and corporations that are federally-subsidized are nevertheless considered sufficiently independent such that they are not excluded from being an author of a copyrightable work under Section 105, including the U.S. Postal Service (USPS), Public Broadcasting Services (PBS), and National Public Radio (NPR). See Id. The USPS presents an interesting case because prior to 1971, the US Post Office was a cabinet-level executive department, and thus, the postal stamps it issued before 1971 were not copyrightable under Section 105. With the passage of the Postal Reorganization Act of 1971, the USPS was created as an independent agency and the cabinet department was eliminated; thus, all stamps issued by the USPS since 1971 are subject to copyright protection. See An Act to Improve and Modernize the Postal Service, to Reorganize the Post Office Department, and for Other Purposes, Pub. L. 91-375, 84 Stat. 719. There is also a statutory exception to Section 105 in that the US Secretary of Commerce may obtain a very limited copyright in “Standard Reference Data” published by or on behalf of the National Institute of Standards and Technology. See 15 USC. § 290e; Copyright Compendium § 313.6(C)(1).
[6] “Although the federal government does not possess a statutory right to obtain copyright protection for its works, 17 USC. § 105, the Copyright Act is silent as to the rights of states or their subdivisions. . . . By specifying a limitation on ownership solely against the federal government, the Copyright Act implies that states and their subdivisions are not excluded from protection under the Act.” County of Suffolk v. First Am. Real Estate, 261 F.3d 179, 187 (2d Cir. 2001); see also Bldg. Officials Code Adm. v. Code Tech., Inc., 628 F.2d 730, 735-36 (1st Cir. 1980) (Section 105 applies “only to the federal government, not to the state governments. Works of state governments are therefore left available for copyright protection by the State or the individual author, depending on state law and policy.”).
[7] E.g., Indiana Code 5-14-3-3 (2019) (“Any person may inspect and copy the public records of any public agency,” and a public agency “may not deny or interfere with [that] right,” such as by “requir[ing] the public to obtain a license or pay copyright royalties”); Minn. Stats. § 13.03(1) (“All government data collected, created, received, maintained or disseminated by a government entity shall be public unless classified by statute, or temporary classification pursuant to section 13.06, or federal law, as nonpublic or protected nonpublic, or with respect to data on individuals, as private or confidential”); NJSA 52:18A-234.5 (2018) (“Open data and datasets made available by an agency on the open data website, unless subject to a disclosed legal restriction, shall be treated as license-free, subject to reuse, and not subject to copyright restrictions.”); NC. Gen. Stat. 132-1(b) (“The public records and public information compiled by the agencies of North Carolina government or its subdivisions are the property of the people. Therefore, it is the policy of this State that the people may obtain copies of their public records and public information free or at minimal cost unless otherwise specifically provided by law.”).
By contrast, other states have laws re-affirming the State’s copyrights. See, e.g., Arizona Rev. Stat. § 39-121.03 (outlawing the use of public records for commercial purpose without Arizona’s prior permission and payment of a license fee); Cal. Code § 6254.9(a) (2016) (“Computer software developed by a state or local agency is not itself a public record under this chapter. The agency may sell, lease, or license the software for commercial or noncommercial use.”); Id. § 25201.11 (“Copyright protection and all other rights and privileges provided pursuant to Title 17 of the United States Code are available to the [Department of Toxic Substances Control] to the fullest extent authorized by law.”); Minn. Stat. § 13.03(5) (2019) (“A government entity may enforce a copyright or acquire a patent for a computer software program or components of a program created by that government entity”).
[8] See 17 USC. § 102(b) (“In no case does copyright protection for an original work of authorship extend to any idea, . . . concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.”); Banks v. Manchester, 128 US 244, 253-254 (1888) (“The whole work done by the judges constitutes the authentic exposition and interpretation of the law, which, binding every citizen, is free for publication to all”); John G. Danielson, Inc. v. Winchester-Conant Props., Inc., 322 F.3d 26, 38 (1st Cir. 2003) (“It is well-established that judicial decisions and statutes are in the public domain.”); Veeck v. Southern Bldg. Code Congress Intern, 293 F.3d 791, 795-97 (5th Cir. 2002) (collecting cases for the proposition that, generally, “the law” is excluded from the purview of copyright statutes); Code Revision Comm’n v. Public.Resource.Org, Inc., 906 F.3d 1229, 1231 (11th Cir. 2018) (“The general rule that legislative codifications are uncopyrightable derives from . . . the basic idea that the People, as the reservoir of all sovereignty, are the source of our law. For purposes of the Copyright Act, this means that the People are the constructive authors of those official legal promulgations of government that represent an exercise of sovereign authority. And because they are the authors, the People are the owners of these works, meaning that the works are intrinsically public domain material and, therefore, uncopyrightable.”), cert. granted, 139 S. Ct. 2746 (2019) (granting certiorari to review the question of whether the government edicts doctrine against copyrightability extends to annotations that lack the force of law).
[9] “[T]he author and authors of any map, chart, book or books already printed in the United States . . . shall have the sole right and liberty of printing, reprinting, publishing and vending such map, chart, book or books, for the term of fourteen years. . .” Copyright Act of 1970, Pub. L. 1-15, 1 Stat. 124.
[10] “[M]ost maps present information about geographic relationships, and the accuracy of this presentation, with its utilitarian aspects, is the reason most maps are made and sold.” Mason v. Montgomery Data, Inc., 967 F.2d 135, 142 (5th Cir. 1992) (quoting David B. Wolf, Is There any Copyright Protection for Maps after Feist?, 39 J. Copyright Soc’y USA 224, 226 (1992)) (internal quotation marks omitted).
[11] Streetwise Maps v. VanDam, Inc., 159 F.3d 739, 747 (2d Cir. 1998); See Mason, 967, F.2d at 142.
[12] Id.; see United States v. Hamilton, 583 F.2d 448, 451 (9th Cir. 1978) (“Expression in cartography is not so different from other artistic forms”).
[13] Streetwise Maps, 159 F.3d at 742, 748.
[14] Feist Publ’ ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 350–51 (1991); Contrast 17 U.S.C. § 102(b) (no copyright protection in facts) with id. § 103(b) (“The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.”).
[15] Feist, 499 US at 350–51.
[16] Mason, 967 F.2d at 141 (cleaned up).
[17] Streetwise Maps, 159 F.3d at 748.
[18] Gordon, supra n.1.
[19] See Id.