BILL ANALYSIS Ó
AB 2880
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ASSEMBLY THIRD READING
AB
2880 (Committee on Judiciary)
As Amended May 31, 2016
Majority vote
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|Committee |Votes|Ayes |Noes |
| | | | |
| | | | |
| | | | |
|----------------+-----+----------------------+---------------------|
|Judiciary |9-0 |Mark Stone, Wagner, |> |
| | |Alejo, Chau, Chiu, | |
| | |Cristina Garcia, | |
| | |Holden, Maienschein, | |
| | |Ting | |
| | | | |
|----------------+-----+----------------------+---------------------|
|Appropriations |20-0 |Gonzalez, Bigelow, |> |
| | |Bloom, Bonilla, | |
| | |Bonta, Calderon, | |
| | |Chang, Daly, Eggman, | |
| | |Gallagher, Eduardo | |
| | |Garcia, McCarty, | |
| | |Holden, Jones, | |
| | |Obernolte, Quirk, | |
| | |Santiago, Wagner, | |
| | |Weber, Wood | |
| | | | |
| | | | |
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AB 2880
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SUMMARY: Strengthens the statutory framework on rules,
processes, and procedures relating to state intellectual
property and provides additional guidance to state agencies to
manage and protect the state's intellectual property while still
protecting public access under the Public Records Act.
Specifically, this bill:
1)Requires the Department of General Services (DGS), when
developing factors on the state's consideration of its
intellectual property, to also develop factors about making
intellectual property available in the public domain, or
granting the use of their intellectual property to others,
including but not limited to, the state's best interest,
maintaining public access, and preventing improper economic
gain through the unauthorized use of state owned intellectual
property.
2)Requires DGS to develop sample language for an advisory
provision stating that a waiver of the state's intellectual
property rights is subject to the approval of DGS and that the
lack of that approval renders an attempted waiver void.
3)Provides that to the extent not inconsistent with the rights
of the public to obtain, inspect, copy, publish and otherwise
communicate information under the California Public Records
Act, the California Constitution as provided, and under the
First Amendment to the United States Constitution, a state
entity may own, license, and if it deems it appropriate,
formally register intellectual property it creates or
otherwise acquires.
4)Provides that the maintenance and development of processes,
procedures, or policies in connection with DGS' duties
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relating to intellectual property, as provided, shall be
exempt from California's Administrative Procedure Act, similar
to other DGS contracting rules.
5)Requires all state agencies to consider the processes,
procedures, or policies developed by DGS relating to
intellectual property, as provided.
6)Provides that for contracts entered into after January 1,
2017, a state agency shall not enter into a contract under
this article that fails to address the issue of intellectual
property rights unless the state agency, prior to execution of
the contract, obtains the consent of the Department of General
Services.
7)Provides that when a state entity creates a work that is
otherwise subject to copyright protection, the work shall be
deemed to be released into the public domain unless the state
entity reasonably determines any of the following:
a) The work has commercial value and the release would
jeopardize the integrity of the work.
b) The release would infringe upon the property interests
of a third party.
c) The release would detrimentally affect the state's
interests in its trademarks, service marks, patents, or
trade secrets.
8)Provides that if a state entity reasonably determines that a
work shall not be released into the public domain as provided,
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the entity shall catalog those works and submit the
information to the department for the purpose of tracking
intellectual property generated by state employees or with
state funding as provided.
9)States that nothing in this bill requires a state entity to
own, license, or formally register intellectual property that
it creates or otherwise acquires.
10)Provides that provisions of the bill shall not apply to the
use of expressive works created by nonstate employees or
without state funding.
11)Requires a state entity to do the following if the entity
pursues an action for copyright infringement:
a) Prior to sending a takedown notification, a state entity
shall reasonably consider in good faith whether the
allegedly infringing material constituted fair use.
b) No state entity shall elect to receive statutory damages
as provided under the federal Copyright Act of 1976 (17
United States Code (U.S.C.) Section 504(c)) except in cases
of willful infringement where there is no evidence of fair
use.
c) Upon a court's finding that the party defending the
infringement action engaged in fair use, the state shall
waive statutory damages.
12)Establishes that any work released into the public domain
shall be deemed a public record.
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13)Prohibits a public agency from denying a public records
request for a record that is otherwise public on grounds that
the information requested is protected by federal Copyright
Act. A request for such a record shall only be denied if one
of the following applies:
a) The public interest in disclosure is clearly outweighed
by the facts of the particular case demonstrate that the
public interest served by not disclosing the record clearly
outweighs the public interest served by disclosure of the
record as provided in the Public Records Act.
b) The record in question is exempt under express
provisions of the Public Records Act.
14)Provides that a public agency that releases a public record
that is subject to copyright protection as provided shall
issue the requesting party a license to use the record in a
manner that is consistent with the rights provide under the
Public Records Act and that is considered acts of fair use
under the federal Copyright Act. The license may restrict the
holder from using the record for a commercial use only if such
use would result in economic harm to the public agency or to
the public's interest.
15)Makes various findings concerning the management of
intellectual property and the Legislature intends for the
state's intellectual property to be managed in a way that
encourages a release into the public domain whenever it is
feasible and appropriate and does not interfere with the
public's right to access records.
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16)States that the Legislature recognizes that state agencies
and departments have different intellectual property needs,
and finds that a statewide and uniform approach to manage the
state's intellectual property should provide state agencies
and departments reasonable levels of discretion that promote
releasing information into the public domain, and protect the
state from unauthorized economic gain, but still ensure the
public's right of access to public records.
FISCAL EFFECT: According to the Assembly Appropriations
Committee:
1)DGS leads the state's Intellectual Property Work Group, which
is developing policies, procedures, and processes to implement
existing law regarding intellectual property. The incremental
workload associated with implementing this bill will therefore
be minor and absorbable.
2)DGS's costs to review proposed agency contract provisions
waiving intellectual property rights would be reimbursed by
the contracting agency. These costs should not be significant
for any single agency.
COMMENTS: In 2000 and 2011, the State Auditor issued
recommendations to the Legislature to take steps to help state
agencies manage and protect the State's intellectual property.
In 2012, the Legislature enacted AB 744 (Perez), Chapter 463,
Statutes of 2012, which requires the Department of General
Services (DGS) to develop guidance to assist state agencies in
managing intellectual property. The guidance is developed by a
working group consisting of attorneys from various state
agencies who have expertise in intellectual property. Under
current law, nothing requires a state agency to review, comply
with, or even consider the guidance of the working group.
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Some state agencies, including California State Parks, have
taken steps to develop policies and procedures to protect the
intellectual property rights of the state and the public;
however, most state agencies have not done so. Indeed, the lack
of a robust intellectual property framework has led to confusion
among state agencies, loose and informal practices, and possibly
confusion among state and federal courts. Indeed, recent court
decisions have stated that public agencies need express
legislative authority to hold intellectual property rights which
is inconsistent with current practice.
Summary of the bill: In summary, this bill does all of the
following: 1) clarifies existing law that state agencies may
own, license, and register intellectual property to the extent
not inconsistent with the rights of the public to obtain,
inspect, copy, publish and otherwise communicate information
under the California Public Records Act, the California
Constitution as provided, and under the First Amendment to the
United States Constitution; 2) provides policy guidance to DGS
on factors state agencies should consider when deciding whether
to sell or license state-owned intellectual property, including
making intellectual property available in the public domain,
granting the use of its intellectual property; 3) provides that
when a state entity creates a work that is otherwise subject to
copyright protection, the work shall be deemed to be released
into the public domain unless the state entity reasonably
determines specific criteria as provided; 4) provides that if a
state entity reasonably determines that a work shall not be
released into the public domain as provided, the entity shall
catalog the works and submit the information to DGS for the
purpose of tracking intellectual property generated by state
employees or with state funds; 5) enables DGS to include
guidelines in its State Contracting Manual on how state agencies
should manage its intellectual property; 6) requires state
agencies, when entering into a contract, to consider the
guidance, policies, and procedures developed by DGS on
intellectual property; and 7) prohibits a state agency from
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entering into a contract as provided that fails to address the
issue of intellectual property rights unless the state agency,
prior to execution of the contract, obtains the consent of DGS.
This bill clarifies existing law to allow public entities to own
and hold intellectual property, while maintaining the public's
protection under the California Public Records Act. Several
recent court cases have held that state agencies cannot own or
hold intellectual property rights unless the Legislature
provides the agency with that explicit authority ("in the
absence of an affirmative grant of authority to obtain and hold
copyrights, a California public entity may not do so" (City of
Inglewood v. Teixeira (C.D.Cal. 2015), relying on County of
Santa Clara v. Superior Court (2009) 170 Cal.App.4th 1301).
Although it has always been the intent of the Legislature to
ensure that state agencies can own, hold, and acquire
intellectual property, this bill clarifies existing law by
explicitly providing that a California public entity may own,
license, and if deemed appropriate, register intellectual
property. In order to maintain the public's right to
information, this bill also provides that the state's
intellectual property authority only to the extent that it is
not inconsistent with the California Public Records Act, the
California Constitution, or the First Amendment of the United
States Constitution.
To prevent public agencies from using copyright law to
circumvent the spirit and purpose of the California Public
Records Act, this bill prohibits a public agency from denying a
public records request for a record that is otherwise public on
grounds that the information requested is protected by federal
Copyright Act; public agencies may only use existing exemptions
under the Public Records Act.
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This bill also recognizes that there might be instances when an
unscrupulous party will use the Public Records Act to circumvent
rights provided under federal copyright law. This bill provides
that a public agency that releases a public record that the
state seeks to protect under copyright law shall issue the
requesting party a license to use the record in a manner that is
consistent with the rights provide under the Public Records Act
and that is considered acts of fair use under the federal
Copyright Act; however, the license may restrict the holder from
using the record for a commercial use only if such use would
result in economic harm to the public agency or to the public's
interest.
To further promote the state's policy of open government and to
allow the public to continue to use information produced by
California government without the fear violating copyright law,
this bill requires a state entity-prior to sending a takedown
notification-to reasonably consider in good faith whether the
allegedly infringing material constituted fair use. Moreover,
no state entity shall elect to receive statutory damages in a
copyright infringement case except in cases of willful
infringement. And even at the end of any potential litigation a
court finds that the party defending the infringement action
engaged in fair use, the state shall waive statutory damages.
This bill provides DGS with additional policy guidance and
factors that state agencies should consider when they decide to
sell or license state-owned intellectual property. In order to
provide the Intellectual Property Advisory Group with additional
policy guidance in crafting the plan, this bill requires state
agencies to also consider the following factors: the state's
best interest, public access to information, and the preventing
improper economic gain through the unauthorized use of state
owned intellectual property. Additionally, to ensure that the
work done by the Intellectual Property Advisory Group is not
done for naught, this bill requires a state agency to consider
the guidelines developed by DGS when the state agency enters
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into a contract.
This bill makes it easier for DGS to adopt rules relating to
intellectual property to be included in the State Contract
Manual. According to the State Auditor, the State Contract
Manual (SCM), a document that provides guidance to state
agencies on rules and procedures for state contracting, does not
provide any guidance on how a state agency should manage its
intellectual property. This bill clarifies the statutory
authority for DGS to adopt rules and procedures in its SCM to
include guidance to state agencies about how to manage
intellectual property.
This bill strengthens California's contracts in order to protect
the State's intellectual property. To ensure that the State is
acting properly to protect its rights, and to allow the State to
have some flexibility and discretion when it is appropriate,
this bill requires a state entity, when entering into a
contract, to address the issue of intellectual property unless
DGS has provided consent to the contracting state agency.
Analysis Prepared by:
Eric Dang / JUD. / (916) 319-2334 FN: 0003277
AB 2880
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