Technology Contracting for Transit Projects (2017)

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40 FTA’s requirements regarding patent rights and rights in data “flow down to all third party contrac- tors and their contracts at every tier that meet the definition of a research-type project”587 as described in 37 C.F.R. part 40—Rights to Inventions Made by Nonprofit Organizations and Small Business Firms under Government Grants, Contracts, and Coopera- tive Agreements.588 XII. WHETHER TRANSIT AGENCY DATA ARE SUBJECT TO THE FREEDOM OF INFORMATION ACT OR A FREEDOM OF INFORMATION LAW A. Federal FOIA Issues The purpose of the federal FOIA is to open the administrative process to public scrutiny,589 disclo- sure being the dominant objective of the Act.590 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.591 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 government corporation or government-controlled corporation.592 Furthermore, “the FOIA does not authorize an agency to restrict the use of informa- tion in the hands of a recipient.”593 A requester may obtain data, and in some jurisdictions, be able to re-use the data commercially or otherwise. One source has observed that when FOIA material is produced, the highest charges are imposed for records having a commercial use.594 B. State Freedom of Information Laws 1. Applicability to Government Data All fifty states have enacted their own FOIA, Freedom of Information Law (FOIL), or equivalent open records law under which individuals may request and obtain records of state and local govern- ment agencies and departments.595 State law must be consulted whenever a work or data are Although a contractor may elect to retain title to government-funded inventions, the government auto- matically obtains a license for inventions that are developed by reason of government funding. As set forth in § 202(c)(4), “[w]ith respect to any invention in which the contractor elects rights, the Federal agency shall have a nonexclusive, nontransferrable, irrevoca- ble, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world….”582 A funding agency has addi- tional rights when certain conditions are established under § 203(a). For example, when a small business firm has acquired title in a subject invention under the Act, the federal agency under whose funding agree- ment the subject invention was made has the right to require a contractor, assignee, or exclusive licensee of the subject invention to grant a nonexclusive, partially exclusive, or exclusive license to a responsible appli- cant (or applicants) upon reasonable terms.583 If a contractor, assignee, or exclusive licensee refuses, the federal agency may “grant such a license itself….”584 D. FTA’s Requirements Involving Experimental, Developmental, or Research Work As discussed in part X.F, the FTA’s BPP & LLM, Appendix A.16, Patent Rights and Rights in Data, states that “[e]xcept in the case of an ‘other agree- ment’ in which the Federal Government has agreed to take more limited rights, the Federal Government is entitled to a nonexclusive, royalty free license to use the resulting invention, or patent the invention for Federal Government purposes.”585 Furthermore, the FTA has the right to: 1. Obtain, reproduce, publish, or otherwise use the data produced under a federal award; and 2. Authorize others to receive, reproduce, publish, or otherwise use such data for Federal purposes.586 582 35 U.S.C. § 202(c)(4) (2016). 583 35 U.S.C. § 203(a) (2016). However, a federal agency must determine, for example, that such “action is necessary because the contractor or assignee has not taken, or is not expected to take within a reasonable time, effective steps to achieve practical application of the subject invention in such field of use” or “to meet requirements for public use specified by Federal regulations and such requirements are not reasonably satisfied by the contractor, assignee, or licensees….” 35 U.S.C. §§ 203(a)(1) and (3) (2016). 584 Id. A federal agency also may exercise its right when “action is necessary because the agreement required by [35 U.S.C. § 204] has not been obtained or waived or because a licensee of the exclusive right to use or sell any subject inven- tion in the United States is in breach of its agreement obtained pursuant to section [35 U.S.C. § 204].” 35 U.S.C. § 203(a)(4) (2016). 585 See BPP & LLM, Appendix A.16, supra note 480 (last accessed Feb. 24, 2017). 586 See id. 587 See id. 588 37 C.F.R. § 401.2 (2016). 589 5 U.S.C. § 552 (2016). 590 See, e.g., 5 U.S.C. § 552(a)(8) (2016). 591 5 U.S.C. §§ 552(b)(1)–(9) (2016). 592 5 U.S.C. § 552(f)(1) (2016). 593 Gellman, supra note 445, 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 swear- ing all users to secrecy)). 594 Id. at 1031 (citing 5 U.S.C. § 552(a)(4)(A)(ii)(I) (1988)). 595 Bloom, supra note 505, text at note 11.

41 and WIREdata’s request to three municipalities to provide information about their property assessments, information that WIREdata conceded that it planned to market and sell to real estate agents and brokers.605 The municipalities had contracted with private, inde- pendent contractor assessors to complete their prop- erty assessments. Two of the municipalities were asked to produce the data to the company in an “‘elec- tronic/digital’ format.”606 WIREdata’s initial request to the third municipality did not specify a format.607 Thereafter, WIREdata asked the independent contrac- tor assessors for the data they created and maintained in a computerized database.608 The municipalities provided the data in a PDF format, a format that did not satisfy WIREdata for its intended use of the data. Although the case involved a number of issues, the court held that under Wisconsin’s open records law, a municipality’s independent contractor assessor is not an authority within the meaning of the open records law; thus, the assessor was not a proper recipient of an open records request.609 However, the municipali- ties could “not avoid liability under the open records law by contracting with independent contractor assessors for the collection, maintenance, and custody of property assessment records.”610 Because the municipalities had provided the information, albeit in a format that could not be manipulated and used as WIREdata desired, the municipalities were not liable under the open records law.611 The municipalities fulfilled their obligation when “they produced PDFs with the requested informa- tion and gave those files to WIREdata.”612 The court stated that despite the fact that the PDF files did not have all of the characteristics that WIREdata wished (that is, WIREdata could not easily manipulate the data), the PDF files did fulfill WIREdata’s initial requests as worded. In addition, the records requested were offered to WIREdata, by all three municipalities, in written form shortly after its requests were made, demonstrating good faith efforts to satisfy such requests quickly.613 Furthermore, the Wisconsin Supreme Court 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 copyrightable. The reason is that 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.”596 One source suggests that by allowing the inspection of records, but limiting copying, it may be possible “to apply an open records law and still preserve a copy- right interest;”597 however, such an approach may have limited utility for “copyrighted compilations [that] are large in size and electronic in format….”598 In general, however, FOIAs or equivalent laws apply to government information and data in elec- tronic form.599 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 similar 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 legislature” constitutes a record.600 A record may be in the form of a document, file, book, photograph, drawing, or computer disk or tape.601 If a record does not exist at the time a request is made, it does not appear that an agency is required to create a record. However, “[a]n agency shall provide records on the medium requested by a person, if the agency can reasonably make such copy or have such copy made by engaging an outside professional service,” and “[r]ecords provided in a computer format shall not be encrypted.”602 One of the exemptions under the New York law is for records that, “if disclosed, would jeopar- dize the capacity of an agency or an entity that has shared information with an agency to guarantee the security of its information technology assets, such assets encompassing both electronic information systems and infrastructures….”603 It has been held that a municipality may not avoid liability under its state’s open records law through contracts, for example, with independent contractors responsible for collecting and maintain- ing and otherwise having custody of records on behalf of the municipality. WIREdata, Inc. v. Village of Sussex604 involved Wisconsin’s open records law 596 Gellman, supra note 445, at 1035 (citing John A. Kidwell, “Open Records Laws and Copyright,” 1989 wis. L. rev. 1021, 1030 (1989)). 597 Id. at 1034. 598 Id. at 1035. 599 Bloom, supra note 505, text at note 13. 600 N.Y. CLS Pub O § 86(4) (2016). 601 Id. 602 N.Y. CLS Pub O § 87(5)(a) (2016). 603 N.Y. CLS Pub O § 87(2)(i) (2016). 604 310 Wis. 2d 397, 751 N.W.2d 736 (2008). See also, Jessica L. Farley, Wisconsin Open Records Law after Wire- data: Still Viable to Protect Public Access to Information?, 93 marQ. L. rev. 1189 (2010). 605 WIREdata, 310 Wis. 2d 407, 751 N.W.2d 741. 606 Id. 607 Id. 608 Id. 609 Id., 310 Wis. 2d 437, 751 N.W.2d 755. 610 Id., 310 Wis. 2d 441, 751 N.W.2d 757. 611 Id., 310 Wis. 2d 443, 751 N.W.2d 758. 612 Id., 310 Wis. 2d 444, 751 N.W.2d 759. 613 Id., 310 Wis. 2d 446–47, 751 N.W.2d 760 (footnote omitted).

42 there were a copyright in the GIS maps, the Florida public records law “overrides a governmental agen- cy’s ability to claim a copyright in its work unless the legislature has expressly authorized a public records exemption.”619 In County of Santa Clara v. The Superior Court of Santa Clara County,620 the county demanded, prior to furnishing its copyrightable GIS basemap to a requester under the California Public Records Act (CPRA), that the requester sign an end-user agreement. The county argued that the copyright laws protect its compilation of data as a “unique arrangement.”621 The court observed that state law determines whether a public official may claim a copyright in the works of government entities and that “‘[i]n some states, statutes explicitly recognize the authority of public officials or agencies to copy- right specific public records that they have created.’”622 The court concluded, however, that although section 6254.9 “recognizes the availability of copyright protection for software in a proper case, it provides no statutory authority for assert- ing any other copyright interest.”623 As for whether the county could demand that the requester sign an end-user agreement, the court noted that courts elsewhere had rendered conflicting deci- sions on the issue. However, the court, agreeing with the Florida court’s decision in Microdecisions, ruled that the county as part of its disclosure under the CPRA could not require a requester to sign an end- user agreement. The court held that “end user restric- tions are incompatible with the purposes and operation of the CPRA.”624 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.”625 Similarly, in South Carolina there has been litiga- tion concerning the state’s freedom of information statute and to what extent a government agency must disclose information that it compiles. However, in contrast to the courts’ decisions in County of Santa Clara v. The Superior Court of Santa Clara County and Microdecisons, Inc., supra, the South 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 substan- tial 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.614 Thus, there is some authority that a requester may not be entitled to records in the format of the requester’s choice. Moreover, state law must be consulted regarding whether a government or government agency may refuse to produce a data- base or other electronic information either because of an exemption under state law or because the stat- ute does not require that the information be provided in such a format, possibly for security reasons. 2. Whether an End-User Agreement May Be Required Before Disclosing Government Data One issue is whether a government transit agency may protect its data from disclosure under a FOIA or equivalent law or, if produced, prevent its data from being used for a commercial or other purpose. First, the cases discussed in the following para- graphs hold uniformly that even a copyrighted compilation (e.g., a database) must be disclosed unless disclosure is precluded by a specific exemp- tion. Second, in the cases located for this report, the courts required in every instance that a database be disclosed to a 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, i.e., an end- user agreement, to preclude further distribution or use of a database by a requester or others. In Microdecisions, Inc. v. Skinner,615 involving Geographic Information Systems (GIS) maps, the court held that a county’s property appraiser could not require prospective commercial users of the records created in his office to sign a licensing agree- ment as a condition to receiving the records.616 Although the court did not hold that the county had a copyright in the GIS maps,617 the court did hold that under Florida law, “the fact that a person seek- ing 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.”618 Even if 614 Id., 310 Wis. 2d 447, 751 N.W.2d 760 (emphasis supplied). 615 889 So.2d 871 (Fla. 2d Dist. Ct. App. 2004). 616 Id. at 872. 617 See id. at 872 N 2. 618 Id. at 875. 619 Id. at 876 (citations omitted). 620 170 Cal. App.4th 1301, 89 Cal. Rptr. 3d 374 (2009), modified, 2009 Cal. App. LEXIS 274, at *1 (Cal. App., Feb. 27, 2009). 621 County of Santa Clara, 170 Cal. App. 4th at 1331, 89 Cal. Rptr. 3d at 396. 622 Id., 170 Cal. App.4th at 1331, 89 Cal. Rptr. 3d at 397 (citation omitted). 623 Id., 170 Cal. App.4th at 1334, 89 Cal. Rptr. 3d at 399. 624 Id. 625 Id., 170 Cal. App.4th at 1335–36, 89 Cal. Rptr. 3d at 400.

43 to copyright and control the redistribution of the county’s official tax maps. Through a FOIL request, First American first obtained and then marketed copies of the tax maps and CD-ROM disks containing the maps without a license from or consent of the county. The Second Circuit stated that “states and their subdivisions are not excluded from protection under the Act” and unless they are prohibited from doing so by a specific state law, may seek to copyright databases under their control.635 The court held that the state’s FOIL did not abrogate the county’s copy- right in its tax maps, that the county could comply with its FOIL obligations while preserving its rights under the Copyright Act, that the county’s tax maps had enough originality to withstand a motion to dismiss for failure to state a claim, and that the tax maps could not, as a matter of law, be deemed to be in the public domain since their inception.636 3. Whether Data Are a Trade Secret Not Subject to Disclosure Transit agencies may acquire or develop technol- ogy to collect personal or other data. In Dir., Dep’t of Information Technology of the Town of Greenwich v. Freedom of Information Comm’n,637 the Supreme Court of Connecticut rejected the claim of the Depart- ment of Information Technology (DIT) that a disclo- sure of GIS data would reveal a trade secret for which the Connecticut statute provided an exemption: The requested GIS data in the present case, however, is read- ily available to the public, and, accordingly, it does not fall within the plain language of § 1-210(b)(5)(A) as a trade secret. As the trial court noted, the GIS database is an electronic compilation of the records of many of the town’s departments. Members of the public seeking the GIS data could obtain separate portions of the data from various town departments, where that data is available for disclosure. The requested GIS database simply is a convenient compilation of information that is already available to the public. The records therefore fail to meet the threshold test for trade secrets.638 There is some older authority holding that trade secrets are not subject to disclosure under public records disclosure laws. In State ex. Rel. Cummer v. Pace,639 the court held that records concerning the operation of the municipal docks and terminals of the city concerning, inter alia, the routing of property, were not subject to disclosure under the law providing for inspection of public records because the disclosure of Carolina Supreme Court agreed that an end-user agreement could be required by the county. In George H. Seago, III v. Horry County,626 the county’s geographic information department devel- oped a digital database to combine several layers of information onto one digital photographic map of the county at a cost of $7.5 million.627 A real estate company made a request for the digital photographic map for its web site for the use of its customers.628 Later the company requested full-county coverage of certain GIS data. The county notified Seago that it claimed a copyright in the information and would provide it only if the requester paid a $100 fee and signed a licensing agreement restricting “any further commercial use without prior written consent.”629 The Supreme Court of South Carolina agreed with the Second Circuit in County of Suffolk, New York v. First American Real Estate Solutions,630 discussed as follows, that the county could obtain copyrights and that maps could be copyrighted to the extent they contained “original materials, research, and creative compilation.”631 Furthermore, the court held that the county could restrict the subsequent commercial distribution of the data requested by Seago pursuant to the copyright law. It does not violate FOIA for a public entity to copyright specially-created digital data and to restrict subsequent commercial use as long as the information is provided initially to the requesting person or entity. If an entity is allowed to copyright the specially-created data, it is logical that the governmental entity should be allowed to enact ordinances to restrict further commercial dissemination of the information in order to protect the copyright.632 The court remanded the case for a determination of whether a $100 fee violated FOIA “because there is no evidence regarding what the actual copying costs would be.”633 County of Suffolk, New York v. First American Real Estate Solutions634 involved an attempt by the county 626 378 S.C. 414, 663 S.E.2d 38 (2008). 627 Id., 378 S.C. 419, 663 S.E.2d at 40. 628 Id., 378 S.C. 420, 663 S.E.2d at 41. 629 Id. 630 261 F.3d 179 (2d Cir. 2001). 631 George H. Seago, III, 378 S.C. at 424, 663 S.E.2d at 43. 632 Id., 378 S.C. at 424–25, 663 S.E.2d at 43 (citation omitted). 633 Id., 378 S.C. at 429, 663 S.E.2d at 46. The court also held that although federal district courts have original jurisdiction to hear any civil actions arising under any Act of Congress relating to copyrights, the “mere fact that a case concerns a copyright does not necessarily mean that the case comes within the exclusive jurisdiction of the fed- eral courts,” the court noting that many disputes over copy- right ownership arise under state law. Id., 378 S.C. at 426, 663 S.E.2d at 44. 634 261 F.3d 179 (2d Cir. 2001). 635 Id. at 187. 636 Id. at 195. 637 274 Conn. 179, 874 A.2d 785 (2005). 638 Id., 274 Conn. at 195, 874 A.2d at 795 (emphasis supplied). 639 121 Fla. 871, 164 So. 723 (1935). The Municipal Docks and Terminals, when acting as agents for shippers and consignees, would receive and deliver goods and col- lect and remit the agreed prices and keep records thereof.