County of Suffolk, New York v. First American Real Estate Solutions

Plaintiff-Appellant-Cross-Appellee County of Suffolk, New York ("Suffolk County") appeals from an opinion and order of the United States District Court for the Southern District of New York (John F. Keenan, Judge) granting Defendant-Appellee-Cross-Appellant First American Real Estate Solutions's ("First American") motion for reconsideration and dismissing Suffolk County'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). First American cross-appeals from the District Court's denial of its motion for costs and attorneys' fees under the Copyright Act, 17 U.S.C. § 505.

Suffolk County sued First American, and other companies acquired by First American, 1 under the Copyright Act of 1976 (the "Copyright Act"), 17 U.S.C. § 101 et. seq. Suffolk County alleged that the defendants infringed its copyrights in its official tax maps by publishing and marketing those maps without Suffolk County's permission. First American moved to dismiss for failure to state a claim, arguing, inter alia, that New York State's Freedom of Information Law ("FOIL") bars Suffolk County from asserting a copyright in its official tax maps.

The District Court initially denied First American's motion. County of Suffolk v. Experian Info. Solutions, Inc., No. 99 Civ. 8735 (JFK), 2000 WL 628731 (S.D.N.Y. May 15, 2000) ("County of Suffolk I"). After granting First American's motion for reconsideration, the District Court then agreed with First American and held that Suffolk County may not use its copyrights to prevent First American from freely disseminating its official tax maps. County of Suffolk v. Experian Info. Solutions, Inc., No. 99 Civ. 8735 (JFK), 2000 WL 1010262 (S.D.N.Y. July 21, 2000) ("County of Suffolk II"). The District Court then denied First American's motion for attorneys' fees. Suffolk County timely appealed, and First American cross-appealed from the denial of its attorneys' fees motion.

This case presents several novel issues including (1) whether, and to what degree, deference is due an advisory opinion analyzing the potential conflict between FOIL and the Copyright Act by New York State's Committee on Open Government, which is required by statute to issue advisory opinions regarding FOIL; (2) whether, by enacting FOIL, New York abrogated its municipalities' copyrights; and (3) whether the official tax maps are in the public domain from their inception. We hold that FOIL does not abrogate Suffolk County's copyrights and find that it is possible for Suffolk County to comply with its obligations under FOIL while preserving its rights under the Copyright Act. In so holding, we decline to defer to the Committee on Open Government's advisory opinion. We also find that Suffolk County sufficiently alleged that its tax maps possess enough originality to withstand First American's motion to dismiss. Finally, we find, at least on the record before us, that Suffolk County's official tax maps cannot be deemed, as a matter of law, to be in the public domain since their inception. We thus vacate the judgment below and remand for further proceedings. In light of this disposition, we do not address First American's cross-appeal and dismiss it as moot.

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Click the case caption above for the full text of the Court's opinion.

For the foregoing reasons, we conclude that the District Court erred in dismissing Suffolk County's complaint. We hold that the New York State Legislature, by enacting FOIL, did not abrogate Suffolk County's copyright in its tax maps. We conclude that it is possible for Suffolk County to comply with its obligations under FOIL while preserving its rights under the Copyright Act. We find that Suffolk County sufficiently alleged that its tax maps possess enough originality to withstand a motion to dismiss for failure to state a claim. Finally, we find, at least on the record before us, that Suffolk County's official tax maps cannot, as a matter of law, be deemed to be in the public domain since their inception. Accordingly, we vacate the order of the District Court and remand for further proceedings consistent with this opinion. In light of this disposition, we dismiss First American's cross-appeal as moot.

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FRANK K. WALSH, Assistant Solicitor General, Albany, NY (Preeta D. Bansal, Solicitor General, Daniel Smirlock, Deputy Solicitor General, of counsel), on behalf of Eliot Spitzer, Attorney General of the State of New York, for amicus curiae State of New York.

MICHAEL D. HESS, Corporation Counsel of the City of New York, New York, NY (Leonard Koerner, Katherine Winningham, of counsel), for amicus curiae City of New York.