Legal Issues Surrounding the Use of Digital Intellectual Property on Design and Construction Projects (2013)

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31 court held that the plaintiff’s claim for misappropriation of trade secrets was not preempted, because the plain- tiff would “have to prove that the Software was a trade secret that was misappropriated by Miller from HSSL and that HSSL was under a duty to maintain the secret and limit its use. These are elements in addition to the copying required for a copyright infringement claim.”430 Likewise, in Therapeutic Research Faculty v. NBTY, Inc.,431 the court held that the alleged misappropriation by the subscriber of its username and password for the defendants’ benefit was a violation of the UTSA adopted in California. Moreover, the court held that the plaintiff could prevail on its claim by showing damage because of the misappropriation or unjust enrichment.432 There also may be an issue of whether a state’s trade secret law preempts other claims at common law. Sec- tion 7(a) of the UTSA provides that except as provided in subsection (b) it “displaces conflicting tort, restitu- tionary, and other law of this State providing civil remedies for misappropriation of a trade secret.” How- ever, the UTSA “does not affect: (1) contractual reme- dies, whether or not based upon misappropriation of a trade secret; or (2) other civil remedies that are not based upon misappropriation of a trade secret….”433 Of course, a trade secret statute does not preclude other civil remedies for misappropriation of confidential in- formation if the information is not a trade secret under the applicable statute.434 XI. DISCLOSURE OF MODELS UNDER PUBLIC INFORMATION LAWS A. Federal FOIA Issues The purpose of the Federal Freedom of Information Act (FOIA) is to open the administrative process to pub- lic scrutiny,435 disclosure being the dominant objective of the Act.436 The law provides for full disclosure by an agency unless the information sought is exempt from disclosure under one of the Act’s nine exceptions.437 In general, the statute is interpreted broadly to permit access to official information so as to create a judicially enforceable public right to government information that otherwise would not be available for inspection. The term agency as used in the Act includes any govern- 430 Id. 431 488 F. Supp. 2d 991, 999 (E.D. Ca. 2007) (quoting Fas Techs, Ltd. v. Dainippon Screen MFG., Co., Ltd., 2001 U.S. Dist. LEXIS 7503 (N.D. Cal. May 31, 2001) and citing Cal. Civ. Code §§ 3426.2, 3426.3). 432 Therapeutic Research Faculty. 488 F. Supp. 2d at 1000 (citations omitted). 433 Uniform Trade Secrets Act §§ 7(a) and (b). 434 Burbank Grease Servs., LLC v. Sokolowski, 294 Wis. 2d 274, 308 (2006) 717 N.W.2d 781, 798 (citing WIS. STAT. § 134.90(6)(a) (emphasis supplied)). 435 5 U.S.C. § 552(d) (2009). 436 Id. 437 Id. § 552(b). ment corporation or government-controlled corpora- tion.438 Furthermore, “the FOIA does not authorize an agency to restrict the use of information in the hands of a recipient.”439 When it comes to a model for a transportation pro- ject it appears that the legal basis for refusing to dis- close a model is either weak or even nonexistent.440 A requester may obtain a model and in some jurisdictions be able to reuse it commercially or otherwise, subject of course to a copyright holder’s rights under the copyright laws. One source has observed that when FOIA mate- rial is produced the highest charges are imposed for records having a commercial use.441 B. State Public Records Disclosure Laws 1. Applicability to Models All 50 states have enacted their own FOIA or Free- dom of Information Law (FOIL) pursuant to which in- dividuals may obtain records of state and local govern- ment agencies and departments.442 If a model is copyrightable, state law must be consulted because how the laws “are drafted may affect the terms of a state’s copyright interest or whether a state can be deemed to have placed its documents in the public domain.”443 One source suggests that by allowing the inspection of re- cords but limiting copying, it may be possible “to apply an open records law and still preserve a copyright in- terest;”444 however, such an approach may have limited utility for information that is “electronic in format.”445 In general FOIAs and FOILs now apply to govern- ment information and data in electronic form.446 Under New York’s FOIL, for example, all agency records must be released to a requester unless they fall under one of the specific exemptions stated in the law that are simi- lar to those in the Federal FOIA. Under New York’s FOIL “any information kept, held, filed, produced or reproduced by, with or for an agency or the state legis- lature” constitutes a record.447 A record may be in the form of a document, file, book, photograph, drawing, 438 § 552(f)(1) (2009). 439 Gellman, supra note 40, at 1032 (citing Baldridge v. Shapiro, 455 U.S. 345, 350 n.4, 102 S. Ct. 1103, 1106 n.4, 71 L. Ed. 2d 199, 206 n.4 (1982) (noting that there was no provision in the FOIA for releasing information but swearing all users to secrecy)). 440 5 U.S.C. § 552(b) (2009). 441 Gellman, supra note 40, at 1031 (citing 5 U.S.C. § 552(a)(4)(A)(ii)(I) (1988)). 442 Ira Bloom, Freedom of Information Laws in the Digital Age: The Death Knell of Informational Privacy, 12 RICH. J. L. & TECH. 9, text at note 11 (2006). 443 Gellman, supra note 40, at 1035 (citing John A. Kidwell, Open Records Laws and Copyright, 1989 WIS. L. REV. 1021, 1030 (1989)). 444 Id. at 1034. 445 Id. at 1035. 446 Bloom, supra note 442, text at note 13. 447 N.Y. Public Officers Law § 86(4) (2009).

32 computer disk, or tape.448 However, an agency is not required to create a record if the record does not exist at the time a request is made.449 One of the exemptions under the New York law is for records that “if disclosed, would jeopardize an agency’s capacity to guarantee the security of its information technology assets, such as- sets encompassing both electronic information systems and infrastructures.”450 It has been held that a municipality may not avoid liability under its state’s open records law through con- tracts, for example, with independent contractors.451 Thus, a municipality may not avoid disclosure because pursuant to a contract an independent contractor has custody of the city’s records.452 In WIREdata, Inc. v. Village of Sussex, because the municipalities had provided the information, albeit in a format that could not be manipulated and used as WIREdata desired, the municipalities also were not liable under the open records law.453 Furthermore, Wis- consin’s Supreme Court stated that it disagreed with the court of appeals’ statement that requesters must be given access to an authority’s electronic databases to examine them, extract information from them, or copy them. …We share the DOJ’s concern, as expressed in its amicus brief, that allowing requesters such direct access to the electronic databases of an authority would pose sub- stantial risks. For example, confidential data that is not subject to disclosure under the open records law might be viewed or copied. Also, the authority’s database might be damaged, either inadvertently or intentionally. We are satisfied that it is sufficient for the purposes of the open records law for an authority, as here, to provide a copy of the relevant data in an appropriate format.454 Thus, there is some authority that a requestor may not be entitled to records in the format of the re- questor’s choice. Moreover, state law must be consulted regarding whether a government or government agency may refuse to produce electronic information either because of an exemption under state law or because the statute does not require that the information be pro- vided in such a format, possibly for security reasons. 2. Whether an End-User Agreement May Be Required Before Disclosing a Model One issue is whether a transportation department would be able to protect a model for a project from dis- closure under a FOIA or FOIL and thereafter from be- 448 Id. 449 Id. § 87 (2009). 450 Id. § 87(2)(i) (2009). 451 WIREdata, Inc. v. Village of Sussex, 310 Wis. 2d 397, 437, 751 N.W.2d 736, 755 (2008) (Holding that because a mu- nicipality’s independent contractor is not an authority within the meaning of the open records law, the independent contrac- tor, an assessor, was not a proper recipient of an open records request. 452 Id. at 441, 751 N.W.2d at 757. 453 Id. at 443, 751 N.W.2d at 758. 454 Id. at 447, 751 N.W.2d at 760 (emphasis supplied). ing used for a commercial or other purpose. First, the cases discussed below hold uniformly that even a copy- righted work must be disclosed unless disclosure is pre- cluded by a specific exemption. Second, in the cases located for the digest, in every instance the courts re- quired disclosure to the requesting party even if the requester had a commercial motive. Third, the cases are divided on the issue of whether a public agency may require a requester to sign a contract, e.g., an end-user agreement, to prevent further distribution or use by the requester or others. In Microdecisions, Inc. v. Skinner,455 involving geo- graphic information systems (GIS) maps, the court held that a county’s property appraiser could not require prospective commercial users of the records created in the office to sign a licensing agreement as a condition to receiving the records.456 Although the court did not hold that the county had a copyright in the GIS maps,457 the court did hold that under Florida law “the fact that a person seeking access to public records wishes to use them in a commercial enterprise does not alter his or her rights under Florida’s public records law.”458 Even if there were a copyright in the GIS maps, the Florida public records law “overrides a governmental agency’s ability to claim a copyright in its work unless the legis- lature has expressly authorized a public records exemp- tion.”459 In County of Santa Clara v. The Superior Court of Santa Clara County,460 the county demanded, prior to furnishing its copyrightable GIS basemap to a requester under the California Public Records Act (CRPA), that the requester sign an end-user agreement. The court, agreeing with the Florida court’s decision in Microdeci- sions, ruled that the county as part of its disclosure un- der the CPRA could not require a requester to sign an end-user agreement. Stating that “end user restrictions are incompatible with the purposes and operation of the CPRA,”461 the court held that “[t]he CPRA contains no provisions either for copyrighting the GIS basemap or for conditioning its release on an end user or licensing agreement by the requester. The record thus must be disclosed as provided in the CPRA, without any such conditions or limitations.”462 In contrast to the courts’ decisions in County of Santa Clara v. The Superior Court of Santa Clara County and Microdecisons, Inc., the South Carolina Supreme Court held in George H. Seago, III v. Horry County463 that an end-user agreement could be required 455 889 So. 2d 871 (Fla. 2d DCA 2004). 456 Id. at 872. 457 See id. at 875, n.2. 458 Id. at 875. 459 Id. at 876 (citations omitted). 460 170 Cal. App. 4th 1301, 89 Cal. Rptr. 3d 374 (Cal. App. 6th Dist. 2009), modified, 2009 Cal. App. LEXIS 274 (Cal. App. 6th Dist. Feb. 27, 2009). 461 Id. at 1335, 89 Cal. Rptr. 3d at 399. 462 Id. at 1335–36, 89 Cal. Rptr. 3d at 400. 463 378 S.C. 414, 663 S.E.2d 38 (2008).

33 by the county. The county’s geographic information de- partment had developed a digital database to combine several layers of information onto one digital photo- graphic map of the county at a cost of $7.5 million.464 A real estate company made a request for the digital pho- tographic map for its Web site for the use of its custom- ers.465 The court agreed with the Second Circuit in County of Suffolk, New York v. First American Real Estate Solutions, discussed below.466 In George H. Seago, III, the court held that the county could obtain copyrights and that maps could be copyrighted to the extent that they contained “original materials, re- search, and creative compilation.”467 Furthermore, the court held that the county could restrict the subsequent commercial distribution of the data requested by Seago pursuant to the copyright law.468 In County of Suffolk, New York v. First American Real Estate Solutions,469 involving the county’s attempt to copyright and control the redistribution of the county’s official tax maps, the Second Circuit observed that “states and their subdivisions are not excluded from protection under the Act” and unless they are pro- hibited from doing so by a specific state law may seek to copyright databases under their control.470 The court held, inter alia, that the state’s FOIL did not abrogate the county’s copyright in its tax maps and that the county could comply with its FOIL obligations while preserving its rights under the Copyright Act.471 3. Post 9/11 Security Issues and Public Access to Models In particular since the terrorist attacks on Septem- ber 11, 2001 (9/11), there has been an issue whether a public agency may refuse to disclose data because of its concerns regarding public safety and security. Accord- ing to one commentator, the states and localities would be prudent to establish policies concerning information on “key infrastructure systems.”472 Several cases have addressed the question of whether information collected by a locality should not be disclosed because disclosure would threaten a town’s or county’s safety or security. In Dir., Dep’t of Informa- tion Technology of the Town of Greenwich v. Freedom of Information Comm’n,473 the Department of Information Technology (DIT) denied a request by an individual requester for “a copy of all [geographic information sys- tem or ‘GIS’] data concerning orthophotography, arc 464 Id. at 419, 663 S.E.2d at 40. 465 Id. at 420, 663 S.E.2d at 41. 466 261 F.3d 179 (2d Cir. 2001). 467 George H. Seago, III, 378 S.C. at 424, 663 S.E.2d at 43. 468 Id. at 424–25, 663 S.E.2d at 43 (citation omitted). 469 261 F.3d 179 (2d Cir. 2001). 470 261 F.3d at 187. 471 Id. at 195. 472 Bloom, supra note 442, text at notes 102–03 (footnotes omitted). 473 274 Conn. 179, 874 A.2d 785 (2005). info coverages, structured query language server data- bases, and all documentation created to support and define coverages for the arc info data set.”474 The DIT “claimed that the data…was exempt from disclosure pursuant to General Statutes § 1-210(b)(5)(A), which provides an exemption from disclosure for trade secrets, and § 1-210(b)(20), which exempts from disclosure in- formation that would compromise the security of an information technology system.”475 In regard to the issue of security, Connecticut’s Gen- eral Statutes Section 1-210(b)(19) provided that the Freedom of Information Act did not require disclosure of: Records when there are reasonable grounds to believe disclosure may result in a safety risk, including the risk of harm to any person, any government-owned or leased institution or facility or any fixture or appurtenance and equipment attached to, or contained in, such institution or facility, except that such records shall be disclosed to a law enforcement agency upon the request of the law en- forcement agency.476 The Supreme Court of Connecticut agreed with the trial court that the DIT had failed to seek a public safety determination from the commissioner of public works as required under the above provision; failed to show a potential threat to the town’s residents if the requested GIS data were disclosed; failed to provide “statistical data that correlates criminal activity or potential ter- rorist type activity with disclosure of GIS data”; and failed to show how disclosure of the data “would com- promise the security or integrity of the GIS.”477 An attempted refusal to disclose a GIS basemap on the ground of federal homeland security law also was unsuccessful in County of Santa Clara v. The Superior Court of Santa Clara County,478 supra. The trial court had required the county to disclose its GIS basemap to a requester, the California First Amendment Coalition (CFAC), which sought a copy under the CPRA.479 The court stated that the case “illuminates tensions between federal homeland security provisions and our state’s open public record laws.”480 One of the county’s argu- ments was that federal law promulgated under the Homeland Security Act of 2002481 protected the infor- mation from disclosure.482 Although the court held that under the law the county had to disclose the informa- tion, it is worthwhile to note, first, the provisions of federal law on which the county relied, and, second, the 474 Id. at 182, 874 A.2d 787 (footnote omitted). 475 Id. at 182–83, 874 A.2d 788 (footnotes omitted). 476 Id. at 186, 874 A.2d at 790. 477 Id. at 189, 191, 874 A.2d at 793. 478 170 Cal. App. 4th 1301, 89 Cal. Rptr. 3d 374 (6th Dist. 2009). 479 CAL. GOV’T CODE § 6250, et seq. 480 County of Santa Clara, 170 Cal. App. 4th at 1308, 89 Cal. Rptr. 3d at 379. 481 6 U.S.C. § 101 (2009), et seq. 482 County of Santa Clara, 170 Cal. App. 4th at 1308, 89 Cal. Rptr. 3d at 379.

34 court’s analysis in determining why federal law did not apply. The court noted that the federal statute at issue was the Critical Infrastructure Information Act of 2002 (CII Act),483 part of the Homeland Security Act of 2002 that established the Department of Homeland Security (DHS).484 Within the DHS, Congress established the Office of Intelligence and Analysis and the Office of In- frastructure Protection485 that are responsible, inter alia, for carrying out “comprehensive assessments of the vulnerabilities of the key resources and critical in- frastructure of the United States….”486 At the heart of the CII Act is the protection of critical in- frastructure information (CII), statutorily defined as “in- formation not customarily in the public domain and re- lated to the security of critical infrastructure or protected systems.” …“The CII Act authorized DHS to accept in- formation relating to critical infrastructure from the pub- lic, owners and operators of critical infrastructure, and State, local, and tribal governmental entities, while limit- ing public disclosure of that sensitive information under the Freedom of Information Act…and other laws, rules, and processes.”487 The CII Act contains provisions exempting from dis- closure either under the Federal FOIA or under any state or local disclosure law of any critical infrastruc- ture information that is submitted voluntarily to the DHS.488 The CII Act directs DHS to establish uniform procedures for the receipt, care, and storage of such information and for the protection of the confidentiality of the information.489 Under the regulations implement- ing the above statutory scheme, “protected CII” was referred to as “PCII,” i.e., “CII that has been validated by DHS.”490 The county argued that federal law preempted the CPRA, a question the court did not reach, because it held that the CII Act was inapplicable: “the County is a submitter of CII, not a recipient of PCII.”491 Taken as a whole, this consistent and pervasive regula- tory language supports our construction of the relevant provision of the CII Act, 6 United States Code section 133(a)(1)(E)(i). As we interpret that provision, it draws a distinction between the submission of CII and the receipt of PCII. In the hands of the submitter, the nature of the information remains unchanged; in the hands of the gov- ernmental recipient, it is protected from disclosure.492 483 Id. at 1313, 89 Cal. Rptr. 3d at 382 (citing 6 U.S.C. §§ 131–134). 484 Id. (citing 6 U.S.C. §§ 101, 111(a)). 485 Id. (citing 6 U.S.C. § 121(a)). 486 Id. (citing 6 U.S.C. § 121(d)(2), (5)). 487 Id. at 1313, 89 Cal. Rptr. 3d at 383 (citations omitted). 488 Id. at 1313–14, 89 Cal. Rptr. 3d at 383. 489 Id. 490 Id. at 1314–15, 89 Cal. Rptr. 3d at 384 (citation omitted). 491 Id. at 1316, 89 Cal. Rptr. 3d at 385 (emphasis in origi- nal). 492 Id. at 1318, 89 Cal. Rptr. 3d at 386 (citation omitted) (footnote omitted). Thus, “the federal statute’s prohibition on disclosure of protected confidential infrastructure information ap- plies only when it has been ‘provided to a State or local government or government agency….’”493 Although the county also asserted a public safety in- terest in guarding against terrorist threats,494 the court noted that the trial court found that the dissemination of the GIS basemap had not been an overriding concern because the county had sold it to 18 purchasers.495 The court held: Security may be a valid factor supporting nondisclosure. …But the “mere assertion of possible endangerment does not ‘clearly outweigh’ the public interest in access to these public records.” …While we are sensitive to the County’s security concerns, we agree with the trial court that the County failed to support nondisclosure on this ground.496 The Connecticut Supreme Court also rejected the public safety reason as a basis for not disclosing a GIS database.497 In both the Dep’t of Information Technology of the Town of Greenwich and the County of Santa Clara cases, it appears that disclosure was required because the statute in question was not broad enough to preclude disclosure and/or because the government failed to demonstrate that public safety or security was a creditable or verifiable reason for refusing to provide the requested data. 4. Whether a BIM Model Is a Trade Secret Not Subject to Disclosure Very little authority was located for the digest re- garding whether trade secrets are subject to disclosure under public records disclosure laws. It has been held that computer data purchased by the legislature with public funds for use in legislative redistricting consti- tuted a trade secret owned by the vendor that prepared it and was exempt from disclosure as a public record.498 At least one court has held that a state’s Public Records Act “protects a broader range of information than just that covered under the…definition [in] the Trade Se- crets Act. The Public Records Act protects from disclo- sure documents in the hands of a public body ‘which contain trade secrets or confidential commercial or fi- nancial information….’”499 In a 1935 case, State ex. Rel. Cummer v. Pace,500 the court held that records concern- 493 Id. (citation omitted). 494 Id. at 1327, 89 Cal. Rptr. 3d at 393. 495 Id. at 1329, 89 Cal. Rptr. 3d at 395. 496 Id. (citations omitted). 497 Dir., Dep’t of Information Technology of the Town of Greenwich v. Freedom of Information Comm’n, 274 Conn. 179, 874 A.2d 785 (2005). 498 Brown v. Iowa Legislative Council, 490 N.W.2d 551 (Iowa 1992). 499 Caldwell & Gregory, Inc. v. University of Southern Mis- sissippi, 716 So. 2d 1120, 1122 (Miss. Ct. App. 1998) (citation omitted) (emphasis deleted). 500 121 Fla. 871, 164 So. 723 (1935). The Municipal Docks and Terminals, when acting as agents for shippers and con-