              IN THE COMMONWEALTH COURT OF PENNSYLVANIA

Jihad Ali,                            :
                         Appellant    :
                                      :
             v.                       :             No. 1335 C.D. 2014
                                      :             Argued: May 6, 2015
Philadelphia City Planning Commission :



BEFORE: HONORABLE DAN PELLEGRINI, President Judge
        HONORABLE RENÉE COHN JUBELIRER, Judge
        HONORABLE ROBERT SIMPSON, Judge
        HONORABLE MARY HANNAH LEAVITT, Judge
        HONORABLE P. KEVIN BROBSON, Judge
        HONORABLE PATRICIA A. McCULLOUGH, Judge
        HONORABLE ANNE E. COVEY, Judge


OPINION BY JUDGE BROBSON                                     FILED: October 1, 2015

               Petitioner Jihad Ali (Ali) appeals from a June 27, 2014 Order
(docketed June 30, 2014) of the Court of Common Pleas of Philadelphia County
(trial court), affirming a decision of the Pennsylvania Office of Open Records
(OOR) under the Right to Know Law (RTKL).1 At issue is whether the OOR erred
in refusing to order the Philadelphia City Planning Commission (Commission) to
provide Ali with unredacted copies of records which contained information that the
Commission deemed protected under Section 106 of the federal Copyright Act,




      1
          Act of February 14, 2008, P.L. 6, 65 P.S. §§ 67.101–.3104.
17 U.S.C. § 106. For the reasons set forth below, we reverse in part and affirm in
part on alternative grounds the trial court’s decision.2
                                    I. BACKGROUND
               On or about April 15, 2013, Ali submitted a request for public records
under the RTKL to the Commission, seeking “[a]ll public records . . . from 2003 to
the present time relating to the revitalization and redevelopment of the 60 th Street
commercial corridor.”        (Reproduced Record (R.R.) 25-26.)               The Commission
denied Ali’s request in part. Relevant to this appeal is the Commission’s decision
to redact from responsive documents records and/or information subject to
copyright protection:
               Specifically, the [Commission] will not provide copies of
               plans, architectural drawings, renderings, photographs,
               etc., that are subject to copyright protection. The
               [RTKL] does not apply to documents that are prohibited
               from being disclosed pursuant to Federal law.
                  o The [Commission] has redacted the following
                      material that is subject to copyright:
                             In the document entitled “Affordable
                                Rental Housing Development Proposal -
                                60th Street Corridor,” architectural
                                drawings of the floor plans have been
                                redacted from pages 45 through 50. A
                                map of “community services” in the 60th
                                Street Corridor has been redacted from
                                page 53.

       2
          This Court’s review in a statutory appeal is “limited to determining whether findings of
fact are supported by competent evidence or whether the trial court committed an error of law or
an abuse of discretion in reaching its decision.” Piasecki v. Dep’t of Transp., Bureau of Driver
Licensing, 6 A.3d 1067, 1070 n.7 (Pa. Cmwlth. 2010). “The scope of review for a question of
law under the [RTKL] is plenary.” Stein v. Plymouth Twp., 994 A.2d 1179, 1181 n.4
(Pa. Cmwlth. 2010).



                                                2
                             In the document entitled “60th Street
                              Commercial          Corridor       UP.UD
                              Assessment,”       maps,      architectural
                              schematics, and artists’ renderings have
                              been redacted from pages 18, 21, 45, 47,
                              49, 51, 53-54, 56, 59, 64, 67, 70, 74, 77,
                              79, 81, 83, 85-91, 94-98, and 100.
                              Descriptions of each redacted item can
                              be found in the unredacted titles on the
                              relevant pages.
                             In the document entitled “60th Street
                              Property Analysis,” maps and artists’
                              renderings have been redacted from
                              pages 2, 4, 10, 13, 14, 16, and 19. Artists
                              renderings have been redacted from
                              pages 13 and 19 depicting the finished
                              projects described therein, and the
                              remainder of the redactions are maps
                              depicting the boundaries of the
                              referenced sites and/or projects.
(R.R. 28-29 (citations omitted).)
              On June 13, 2013, Ali appealed the partial denial to OOR.                  On
June 25, 2013, the Commission submitted its position statement to the assigned
OOR appeals officer, along with an affidavit of Steven Williams, Executive
Director of the Partnership Community Development Corporation (The Partnership
CDC). (R.R. 38-43.) In the affidavit,3 Mr. Williams claimed, inter alia, that The
Partnership CDC holds a copyright on the materials withheld by the Commission
and described above, which The Partnership CDC submitted to the Commission as
part of its proposed redevelopment project.              He further claimed that The
Partnership CDC would suffer competitive harm if the information was released.

       3
         The affidavit is in the form of an unsworn statement made expressly subject to the
penalty of perjury under 18 Pa. C.S. § 4904. See Pa. R.C.P. No. 76 (definition of affidavit).



                                             3
As a result, the Commission contended, inter alia, that it was precluded from
disclosing the copyrighted material under federal law.
            Ali filed his position statement with the OOR appeals officer on or
about July 5, 2013. (R.R. 45-54.) Ali contended that the Commission failed to
meet its burden of proof with respect to any exemptions under the RTKL.
Ali challenged the Commission’s reliance on federal copyright protection as a
basis for withholding certain information without inquiring into whether Ali’s
request would fall within the “fair use” exception found in Section 107 of the
Copyright Act, 17 U.S.C. § 107. In a supporting affidavit, Ali disclosed that he
seeks the requested information “to ensure that the developers comply with all
relevant federal, state and local laws and to ensure that the proposed development
will actually result in direct and tangible benefits for the surrounding community.”
(R.R. 53.) Ali claims that these purposes fall within the scope of the “fair use”
exception. Ali contends that if the Commission and the OOR rely on federal law
for purposes of copyright protection, they must also apply the “fair use” exception.
Otherwise, the Commission and the OOR are not giving full effect to the federal
law on which they are relying.
            The OOR appeals officer issued her Final Determination on
July 23, 2013. (R.R. 56-62.) Based on the Commission’s submission, the appeals
officer concluded that The Partnership CDC holds the copyright on the materials
that the Commission withheld from its response to Ali’s RTKL request and did not
consent to the release of the information. The appeals officer concluded that the
OOR was precluded, under Section 305(a)(3) of the RTKL, 65 P.S. § 67.305(a)(3),
from ordering the release of records that would be exempt under any federal law.
Citing a prior OOR decision, however, the OOR appeals officer refused to conduct


                                         4
a “fair use” analysis, concluding that such an analysis must be conducted outside
of the RTKL context. (R.R. 60.) In a footnote, the OOR appeals officer noted that
the Copyright Act prohibited reproduction of the requested information, not public
inspection.
              Exercising his statutory appeal remedy under Section 1302 of the
RTKL, 65 P.S. § 67.1302, Ali appealed the Final Determination to the trial court.
Following briefing and oral argument, the trial court issued its June 27, 2014
Order, affirming the OOR Final Determination. After Ali filed his appeal with this
Court, the trial court issued an Opinion in support of its Order. (R.R. 139-48.) The
trial court noted that the “fair use” exception was an affirmative defense to a claim
of copyright infringement. Because, however, the Commission did not disclose
The Partnership CDC’s copyrighted information in response to Ali’s RTKL
request, there could be no claim of infringement, and, thus, no occasion to raise the
“fair use” defense. The trial court noted an absence of any case law that would
allow a requester under the RTKL to assert the “fair use” defense in Section 107 of
the Copyright Act in support of a request under the RTKL. In a footnote, the trial
court also raised a possible conflict between application of the “fair use” exception
in the way proposed by Ali and Section 302(b) of the RTKL, 65 P.S. § 67.302(b),
which precludes a local agency from “deny[ing] a requester access to a public
record due to the intended use of the public record by the requester unless
otherwise provided by law.” The trial court also held that it lacks jurisdiction to
determine the merits of a “fair use” claim under the Copyright Act. Finally, in
light of its disposition on the merits, the trial court opined that it was justified in
refusing to award Ali attorneys’ fees under Section 1304(a) of the RTKL, 65 P.S.
§ 67.1304(a).


                                          5
                                 II. DISCUSSION
             On appeal, Ali raises two issues. First, Ali asks this Court to consider
whether the trial court erred in upholding the OOR’s decision to deny Ali copies of
redacted information based on a misapplication of the RTKL and the Copyright
Act and the lack of any record evidence that the holder of the copyright, The
Partnership CDC, objected to the disclosure of the copyrighted material by the
Commission in response to RTKL requests. Next, Ali asks the Court to consider
whether the trial court erred in denying Ali an award of reasonable attorneys’ fees
and costs of litigation under Section 1304(a) of the RTKL.
                                 A. Copyright Law
             As an initial matter, we will address the question of whether the OOR
has the authority to interpret the provisions of the Copyright Act in the context of
hearing an appeal under the RTKL. Ali specifically disputes the trial court’s
conclusion that it lacked jurisdiction to determine the merits of Ali’s “fair use”
argument.     In Department of Labor & Industry v. Heltzel, 90 A.3d 823
(Pa. Cmwlth. 2014) (en banc), this Court held that the OOR “enjoys the authority
to interpret federal statutes that involve public records and public access to agency
information.” Heltzel, 90 A.3d at 829. Because the Commission contends that the
Copyright Act bars duplication of the requested records, both the OOR and the trial
court necessarily had the jurisdiction and authority under the RTKL to interpret
that federal law in order to determine the public nature of the records at issue.
             Turning to the merits, Ali does not dispute that The Partnership CDC
holds the copyright to the plans, drawings, and maps at issue. He argues, however,
that nothing in the record supports the OOR’s finding that The Partnership CDC
objected to the disclosure of its copyrighted material in response to Ali’s RTKL


                                          6
request. Ali noted that although Mr. Williams, in his affidavit, established that The
Partnership CDC owns the copyright on the records in question, Mr. Williams did
not aver that The Partnership CDC refused to give consent to the Commission to
make copies of those materials available to the public should a request be made
under the RTKL.
               But, even if The Partnership CDC did refuse to grant consent, Ali
contends that the OOR should have fully analyzed the Copyright Act, including the
“fair use” exemption, to determine whether the requested records were exempt
from disclosure under the RTKL. Ali argues that because the Commission claimed
the exemption, it could not rest merely with the contention that the materials
sought were subject to a copyright. The Commission had the burden to show that
duplicating the records in response to a RTKL request would actually violate the
Copyright Act. This, Ali argues, the Commission failed to do. Ali cites a decision
from the Supreme Court of Washington4 as well as decades-old guidance from the
United States Department of Justice, to support his contention that the
government’s disclosure of copyrighted material in response to an open records
request constitutes a “fair use” of the materials under the Copyright Law.
               In response, the Commission contends that, “[a]s a general rule, the
Copyright Act recognized that the holder of a copyright retains exclusive rights
over the reproduction or distribution of the copyrighted materials.” (Commission
Br. at 17 (citing 17 U.S.C. § 106).) The Commission argues that it, therefore,
properly concluded that the requested materials, which the parties agree are subject
to third-party copyright protection, are exempt from reproduction so as to protect

      4
          Lindberg v. Cnty. of Kitsap, 948 P.2d 805 (Wash. 1997).



                                               7
the Commission from the risk of liability for infringement under federal law. The
Commission argues that it was not required to seek the consent of The Partnership
CDC to the release of the documents before asserting the exemption, as the
protection from disclosure is inherent in the copyright status of the materials. The
Commission further argues that requiring a local agency to seek out and secure
consent from the copyright owner would be time-consuming and burdensome.
This is particularly true where the holder of the copyright may not be the party that
submitted the materials to the local agency. The Commission further argues that
given the fact that the holder of the copyright in this case executed an affidavit
asserting its copyright interests, the OOR and the trial court could rightly infer the
owner’s objection to duplication/reproduction of the protected material.          The
Commission also rejected the notion that a developer’s submission of plans to a
local agency for review and approval constitutes a waiver of any copyright
protection of the submitted materials.
              With respect to “fair use,” the Commission agrees with the OOR and
the trial court that the “fair use” inquiry is incompatible with the RTKL,
specifically Section 302(b) of the RTKL, which the Commission contends
precludes inquiry into the requester’s intended use of a public record.           The
Commission also counsels against this Court’s adoption of a per se rule that every
local agency’s reproduction of copyrighted material in response to a RTKL request
is a “fair use”:
              The problem . . . is that a determination of “fair use” is
              not appropriately made in a RTKL inquiry, either as a
              bright line rule or by a state court, without participation
              by the copyright holder. Nor is it at all clear that a
              federal court, faced with a subsequent infringement
              action, would respect a state court’s decision on the
              federal law question. That is why providing access to
              copyrighted materials but not reproduction . . . remains
                                          8
              the most legally sound course, balancing both the
              interests of the requestor and the agency.
(Commission Br. at 23.) The Commission questions Ali’s reliance on the Supreme
Court of Washington decision and cites decisions from other state courts that are
more in line with that tack taken by the OOR and the trial court here.5 The
Commission also questions Ali’s reliance on the 1983 guidance document from the
United States Department of Justice.
              The Commission agrees with the trial court that “fair use” is an
affirmative defense under the Copyright Act, which can only be raised after
disclosure of copyrighted material and a suit for infringement. In this case no
infringement has occurred, because the local agency has not duplicated and
distributed the copyrighted material. Accordingly, the “fair use” defense has not
been triggered and should not be part of a review under the RTKL by OOR or a
reviewing court, particularly where the copyright holder is not a party.
The Commission further points to 28 U.S.C. § 1338(a), which provides, inter alia,
that “[n]o State court shall have jurisdiction over any claim for relief arising under
any Act of Congress relating to patents, plant variety protection, or copyrights.”
              We begin our analysis with the RTKL, because it is unquestionably
within our authority to interpret and apply that law in this matter. Under Section
302(a) of the RTKL, 65 P.S. § 67.302(a), a local agency, such as the Commission,
“shall provide public records in accordance with this act.” Section 701(a) of the
RTKL, 65 P.S. § 67.701(a), provides the general rule of access: “Unless otherwise


       5
        See Weisberg v. U.S. Dep’t of Justice, 631 F.2d 824 (D.C. Cir. 1980); Nat’l Council of
Teachers Quality, Inc. v. Curators of the Univ. of Mo., 446 S.W.3d 723 (Mo. Ct. App. 2014);
Pictometry Int’l Corp. v. Freedom of Info. Comm’n, 59 A.3d 172 (Conn. 2013).



                                              9
provided by law, a public record . . . shall be accessible for inspection and
duplication in accordance with this act.” All parties appear to agree that the
materials in dispute meet the definition of a “record” under the RTKL.6 The
question that we must resolve is whether a record in the possession of a local
agency that is subject to a copyright held by a third party is a “public record” that
must be disclosed under the RTKL, that is, subjected to inspection and duplication.
                The RTKL defines a public record as follows:
                A record . . . of a Commonwealth or local agency that:
                          (1) is not exempt under Section 708;
                          (2) is not exempt from being disclosed under
                      any other Federal or State law or regulation or
                      judicial order or decree; or
                          (3) is not protected by a privilege.
Section 102 of the RTKL. Section 305(a) of the RTKL provides for a presumption
that all records in the possession of a local agency are public records.
Section 305(a) of the RTKL, however, mirrors the definition of “public record” in
Section 102 of the RTKL, by providing that the presumption does not apply where
the record in question is either (1) exempt under Section 708 of the RTKL, 65 P.S.
§ 67.708; (2) exempt under federal or state law, regulation, or judicial order or

       6
           The RTKL defines “record” as follows:
                Information, regardless of physical form or characteristics, that
                documents a transaction or activity of an agency and that is
                created, received or retained pursuant to law or in connection with
                a transaction, business or activity of the agency. The term includes
                a document, paper, letter, map, book, tape, photograph, film or
                sound recording, information stored or maintained electronically
                and a data-processed or image-processed document.
Section 102 of the RTKL, 65 P.S. § 67.102.



                                                10
decree; or (3) subject to a privilege. In addition, Section 306 of the RTKL,
65 P.S. § 67.306, provides:
                    Nothing in this act shall supersede or modify the
             public or nonpublic nature of a record or document
             established in Federal or State law, regulation or judicial
             order or decree.
Finally, Section 3101.1 of the RTKL, 65 P.S. § 67.3101.1, provides:
                   If the provisions of this act regarding access to
             records conflict with any other Federal or State law, the
             provisions of this act shall not apply.
The burden of proving that a record is exempt from access under the RTKL is on
the local agency receiving the request. Section 708(a)(1) of the RTKL, 65 P.S.
§ 67.708(a)(1).   The RTKL is designed to promote access to government
information in order to prohibit secrets, permit scrutiny of the actions of public
officials, and make public officials accountable for their actions. Levy v. Senate of
Pa., 65 A.3d 361, 381 (Pa. 2013); Pa. State Police v. McGill, 83 A.3d 476, 479
(Pa. Cmwlth. 2014) (en banc). In furtherance of these remedial purposes, all
exemptions from disclosure, including exemptions under federal law, must be
narrowly construed.     Office of Governor v. Scolforo, 65 A.3d 1095, 1100
(Pa. Cmwlth. 2013) (en banc).
                         1. Section 305(a)(3) Exemption
             Both the OOR appeals officer and the trial court held that the
copyrighted materials at issue in this matter are not public records because they are
exempt from disclosure under federal law—i.e., the Copyright Act. We disagree.
In order to constitute an exemption under Section 305(a)(3) of the RTKL, the
federal statute must expressly provide that the record sought is confidential,
private, and/or not subject to public disclosure. For example, in Sherry v. Radnor
Township School District, 20 A.3d 515 (Pa. Cmwlth.), appeal denied,

                                         11
31 A.3d 292 (Pa. 2011), this Court held that school records relating to honor code
violations were exempt under the Family and Educational Rights of Privacy Act of
1974 (FERPA),7 and, therefore, were exempt from disclosure under Section
305(a)(3) of the RTKL. In reaching this conclusion, we cited specifically to
Section 1232g(b)(1) of FERPA, 20 U.S.C. § 1232g(b)(1), which provides that
“[n]o funds shall be made available under any applicable program to any
educational agency or institution which has a policy or practice of permitting the
release of education records . . . of students without the written consent of their
parents.” Moreover, citing United States v. Miami University, 294 F.3d 797 (6th
Cir. 2002), we observed that FERPA has been described as a law “designed to
protect parents’ and students’ right to privacy by limiting the transferability of
records without consent.” Sherry, 20 A.3d at 525.
               In Office of Budget v. Campbell, 25 A.3d 1318 (Pa. Cmwlth. 2011),
this Court reversed a decision by the OOR that ordered the Office of Budget to
produce employee W-2 forms under the RTKL. We held that the forms were
exempt under Section 305(a)(3) of the RTKL because they were exempt from
public disclosure under Section 6103(a) of the Internal Revenue Code, 26 U.S.C.
§ 6103(a), which provides, in pertinent part:
                      (a) General rule.—Returns and return information
               shall be confidential, and except as authorized by this
               title—
                      ...
                      (2) no officer or employee of any State . . .
                      shall disclose any return or return information
               obtained by him in any manner . . . .
      7
          20 U.S.C. § 1232g.



                                         12
             In   Advancement      Project    v.   Pennsylvania    Department      of
Transportation, 60 A.3d 891 (Pa. Cmwlth. 2013), the Pennsylvania Department of
Transportation (PaDOT) argued, inter alia, that Section 6114(a)(1) of the Vehicle
Code, 75 Pa. C.S. § 6114(a)(1), and the federal Driver’s Privacy Protection Act,
18 U.S.C. §§ 2721-2725, prohibited PaDOT from disclosing, in response to a
RTKL request, information about photo identification cards that it issued.
Section 6144(a)(1) of the Vehicle Code makes it unlawful “to sell, publish or
disclose . . . records or reports which relate to the driving record of any person.”
Section 2721(a)(1) of the federal Privacy Act prohibits state motor vehicle
departments from disclosing or otherwise making available personal information
about an individual that the department obtained in connection with the
individual’s motor vehicle record. 18 U.S.C. § 2721(a)(1). This Court held that
the information sought through the RTKL was information exempt from disclosure
under both the Vehicle Code and the federal Privacy Act. Advancement Project,
60 A.3d at 898.
             The Copyright Act is a law that encourages creative labor for the
general public by bestowing on the author or inventor certain economic protections
relative to his or her work. See Fogerty v. Fantasy, Inc., 510 U.S. 517, 526-27
(1994); Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 432-34
(1984). Relevant to this matter, the exclusive rights of the copyright holder, as set
forth in Section 106 of the Copyright Act, 17 U.S.C. § 106, include the following:
                   Subject to sections 107 through 122, the owner of
             copyright under this title has the exclusive rights to do
             and to authorize any of the following:
                       (1) to reproduce the copyrighted work in
                copies or phonorecords;
                       ...

                                         13
                       (3) to distribute copies or phonorecords of the
                copyrighted work to the public by sale or other
                transfer of ownership, or by rental, lease, or lending;
                       ....
These exclusive rights, however, give way to what is referred to as “fair use” of the
copyrighted work by the public. In this regard, Section 107 of the Copyright Act,
17 U.S.C. § 107, provides:
                    Notwithstanding the provisions of sections 106 and
             106A, the fair use of a copyrighted work, including such
             use by reproduction in copies or phonorecords or by any
             other means specified by that section, for purposes such
             as criticism, comment, news reporting, teaching
             (including multiple copies for classroom use),
             scholarship, or research, is not an infringement of
             copyright. In determining whether the use made of a
             work in any particular case is a fair use the factors to be
             considered shall include—
                       (1) the purpose and character of the use,
                including whether such use is of a commercial nature
                or is for nonprofit educational purposes;
                       (2) the nature of the copyrighted work;
                       (3) the amount and substantiality of the
                portion used in relation to the copyrighted work as a
                whole; and
                       (4) the effect of the use upon the potential
                market for or value of the copyrighted work.
                    The fact that a work is unpublished shall not itself
             bar a finding of fair use if such finding is made upon
             consideration of all the above factors.
Section 107 of the Copyright Act is the codification of the judicially-created “fair
use” defense to a copyright infringement action. Video Pipeline, Inc. v. Buena
Vista Home Entm’t, Inc., 342 F.3d 191, 197 (3d Cir. 2003). “Fair use” is in the
nature of an affirmative defense, and, therefore, the alleged infringer bears the



                                         14
burden of proof. Id. The “fair use” analysis, however, is not limited to the four
“non-exhaustive list of factors” set forth above:
                    The four statutory factors “do not represent a score
             card that promises victory to the winner of the majority.”
             Rather, each factor is “to be explored, and the results
             weighed together, in light of the purposes of copyright.”
             Thus, as we apply copyright law, and the fair use
             doctrine in particular, we bear in mind its purpose to
             encourage “creative activity” for the public good.
Id. at 198 (quoting Pierre N. Leval, Toward a Fair Use Standard, 103 HARV. L.
REV. 1105, 1110 (1990); Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 578
(1994)).
             Based on our review of the Copyright Act and our precedent, we
conclude that Copyright Act is not a federal law that exempts materials from
disclosure under the RTKL.       It neither expressly makes copyrighted material
private or confidential, nor does it expressly preclude a government agency,
lawfully in possession of the copyrighted material, from disclosing that material to
the public. That the Copyright Act grants exclusive rights to the copyright holder
to authorize duplication of the copyrighted material does not alone persuade us that
the Copyright Act is the type of federal law that the General Assembly intended to
include within the scope of Section 305(a)(3) of the RTKL. This is so because the
exclusive rights of the copyright holder are not unqualified in light of Section 107
of the Copyright Act. In other words, not every disclosure of copyrighted material
without the owner’s consent violates the Copyright Act. This distinguishes the
Copyright Act from state and federal laws that this Court has recognized as falling
within the scope of the Section 305(a)(3) exemption under the RTKL.




                                         15
                          2. Section 306—Public Nature
             Similar to our analysis above with respect to Section 305(a)(3) of the
RTKL, we conclude that nothing in the Copyright Act establishes the nature of
copyrighted material as “nonpublic.” As noted above, the very purpose of the
Copyright Act is to encourage creative labor for the public good. Accordingly,
Section 306 of the RTKL does not support the trial court’s decision.
                         3. Section 3101.1—Public Access
             Summarizing our conclusions above, we have rejected the
Commission’s contentions that the Copyright Act is a federal law that exempts
copyrighted material from disclosure under the RTKL (Section 305(a)(3) of the
RTKL) or is a federal law that renders such materials “nonpublic” (Section 306 of
the RTKL). Accordingly, for purposes of this action, the copyrighted materials at
issue are “public records” under the RTKL. We must now determine whether
there is a conflict between the access afforded to public records under the RTKL
and the Copyright Act.
             As we noted in Heltzel, “[c]onflicts as to public access . . . are
governed by Section 3101.1 of the RTKL.”               Heltzel, 90 A.3d at 832.
Section 3101.1 of the RTKL provides that “[i]f the provisions of [the RTKL]
regarding access to records conflict with any other Federal or State law, the
provisions of this act shall not apply.” The RTKL provides access to public
records in two ways—inspection and duplication. Section 701(a) of the RTKL.
The Commission contends that duplication under the RTKL conflicts with Section
106 of the Copyright Act.
             As noted above, Section 106 of the Copyright Act vests in the owner
of the copyright the exclusive right to duplicate and to authorize duplication of the


                                         16
copyrighted work. The Copyright Act does not restrict inspection. Although the
rights conferred on the copyright holder are subject to “fair use,” the Copyright Act
is nonetheless problematic for local agencies when faced with a RTKL request that
seeks copyrighted materials.           Unless the copyright holder has consented to
duplication, duplication of the copyrighted material under the RTKL carries the
risk that the copyright holder will sue the local agency for infringement in federal
court. If found to be an infringer, the local agency could be held liable to the
copyright holder for actual or statutory damages, which, in the case of willful
infringement, could be up to $150,000. 17 U.S.C. § 504. The local agency could
also be ordered to pay the copyright owner’s costs and attorneys’ fees. Id. § 505.
All the while, the local agency is expending taxpayer dollars in costs and
attorneys’ fees to defend itself in an infringement action occasioned not by its own
assessment of the risk and subsequent voluntary disclosure, but by forced
disclosure by order of the OOR or this Court.8



       8
         In his reply brief, Ali argues that Section 1306(a) of the RTKL, 65 P.S. § 67.1306(a),
“shields every agency, public official or public employee from exposure to civil liability from
compliance with a legally valid right to know request.” (Ali Reply Br. at 16.) Section 1306(a)
of the RTKL provides:
                       Except as provided in sections 1304 and 1305 and other
               statutes governing the release of records, no agency, public official
               or public employee shall be liable for civil penalties resulting from
               compliance or failure to comply with this act.
(Emphasis added.) Clearly, this language does not, as Ali contends, shield local agencies and
their officers and employees from all civil liability, let alone civil liability under federal law.
The section refers only to civil penalties, which are in the nature of a fine imposed by a
governmental body. See Section 1305 of the RTKL, 65 P.S. § 67.1305 (authorizing courts to
impose civil penalty for agency’s bad faith denial of access to public record).



                                                17
                 The conflict here, however, is not just the risk that an order of
disclosure under the RTKL may trigger civil liability under the Copyright Act, it is
also that federal law makes this Court powerless to resolve the question of whether
a disclosure of copyrighted material by a local agency without permission of the
owner is infringement under the Copyright Act. See 28 U.S.C. § 1338(a) (vesting
exclusive jurisdiction over claims “arising under” Copyright Act).9 Though not
directly on point, an opinion from the United States Court of Appeals for the
District of Columbia Circuit illustrates how a jurisdictional problem can limit a
court’s ability to resolve the tension between public access and copyright. In
Weisberg v. U.S. Department of Justice, 631 F.2d 824 (D.C. Cir. 1980), a case
dealing with a request for copyrighted material under the Freedom of Information
Act (FOIA),10 the federal district court ordered the FBI to produce copies of


       9
           The reach of federal jurisdiction under this section is described as follows:
                      Mindful of the hazards of formulation in this treacherous area,
                 we think that an action ‘arises under’ the Copyright Act if and only
                 if the complaint is for a remedy expressly granted by the Act, e.g.,
                 a suit for infringement or for the statutory royalties for record
                 reproduction, or asserts a claim requiring construction of the Act,
                 or, at the very least and perhaps more doubtfully, presents a case
                 where a distinctive policy of the Act requires that federal principles
                 control the disposition of the claim. The general interest that
                 copyrights, like all other forms of property, should be enjoyed by
                 their true owner is not enough to meet this last test.
T.B. Harms Co. v. Eliscu, 339 F.2d 823, 828 (2d Cir. 1964) (citations omitted) (emphasis added).
Here, Ali asserts a claim—i.e., that reproduction of copyrighted material in response to a RTKL
is “fair use” under Section 107 of the Copyright Act—that requires construction of the Act.
Accordingly, if we were to address Ali’s claim, we would be intruding on the exclusive
jurisdiction of the federal courts.
       10
            5 U.S.C. § 552.



                                                  18
copyrighted photographs in response to a FOIA request. Much as we do above
with respect to the RTKL, the D.C. Circuit held that “the mere existence of
copyright, by itself, does not automatically render FOIA inapplicable to materials
that are clearly agency records.” Weisberg, 631 F.2d at 825. The D.C. Circuit,
however, vacated the district court’s order because the question of whether
duplication under FOIA should be allowed could not be resolved in the absence of
the copyright holder, TIME, which the D.C. Circuit held was an indispensable
party to the action. The court reasoned:
                   We intimate no view with respect to [the FBI’s]
            contentions concerning the proper relationship between
            FOIA and the copyright laws. We conclude instead that
            the district court should have sought the presence of the
            alleged copyright holder under [Fed. R. Civ. P. 19]
            before deciding the case. Because TIME was not a party,
            the district court has subjected the Government “to a
            substantial risk of incurring . . . inconsistent obligations.”
                   The district court’s rulings vitally affect the value
            of TIME’s alleged copyright. If TIME were to bring its
            own action challenging the Government’s right to
            duplicate the photos, the district court’s determination
            would not necessarily serve as a bar. Non-parties
            generally can be bound by prior judgments only where
            they have been fairly represented by one of the parties in
            the earlier litigation. And an agency’s interest in FOIA
            suits is likely to diverge from those of private parties.
            Indeed, the Government concedes in this case that it had
            no incentive to protect TIME’s interests on at least one of
            the key copyright issues decided by the district court.
            The possibility therefore remains that a separate action
            by TIME would be allowed to proceed, raising the
            prospect of conflicting legal obligations for the
            Government with respect to the disposition of TIME’s
            photos.
                   . . . Had TIME participated in the proceedings
            below . . . the rights and liabilities of all interested
            persons would have been finally and consistently

                                           19
              determined in one forum. As matters now stand, we are
              faced with the needless potential for duplicative
              litigation.
Id. at 829-30 (quoting Fed. R. Civ. P. 19) (citation omitted) (footnotes omitted).11
              Here, our jurisdictional problem cannot be solved by simply joining
The Partnership CDC as an indispensable party.12 A change in federal law would
be necessary. Even if we could force a copyright owner to participate in RTKL
proceedings before the OOR or a common pleas court, a ruling by a state agency or
state court that duplication by the local agency of copyrighted material pursuant to
the RTKL is “fair use” under Section 107 of the Copyright Act would not preclude
a copyright owner from pursuing an infringement lawsuit in federal court, and the
district court would not be bound by our “fair use” decision.13 We, therefore, have
here the same concerns—i.e., the prospect of conflicting legal obligations for the
government and the potential for duplicative litigation—that the D.C. Circuit found
problematic in Weisberg. The D.C. Circuit resolved those concerns by vacating
the district court’s order and remanding the matter for further proceedings with the
copyright owner as a party. We simply do not have that option.
              We can, therefore, only go as far in this matter as the RTKL and the
undisputed terms of the Copyright Act will allow. See Advancement Project,
60 A.3d at 898 (“Once it is determined that the records are not public, the [RTKL]

       11
          Interestingly, the “key copyright issue” that the D.C. Circuit refers to in the
above-quoted passage is whether duplication by the FBI would be “fair use” under Section 107
of the Copyright Act. Weisberg, 631 F.2d at 829 n.38.
       12
          The Partnership CDC has not appeared as a party at any stage in this RTKL
proceeding.
       13
          See DeCoatsworth v. Jones, 639 A.2d 792, 796 (Pa. 1993) (holding that judgment
entered without jurisdiction is entitled to no authority or respect).



                                            20
does not require the agency, or [OOR], to further inquire into whether the deemed
non-public records may be released under some other statutory scheme.”).
Because we lack jurisdiction under federal law to resolve the question of whether a
local agency’s disclosure of copyrighted material pursuant to the RTKL without
the owner’s consent constitutes infringement under the Copyright Act, where a
local agency has refused to duplicate a public record in response to a RTKL
request by invoking the Copyright Act, our review must be confined to
determining whether the local agency has met its burden of proving facts sufficient
to show that forced duplication of copyrighted material under the RTKL implicates
rights and potential liabilities arising under the Copyright Act that can only be
resolved by the federal courts.
               As outlined above, there is a conflict between the Copyright Act and
the RTKL with respect to access (i.e., duplication)14 where (1) the public record in
question is protected under a copyright held by a third party and (2) the local
agency does not have the consent of the copyright owner to the duplication of the
public record in response to a RTKL request. With respect to the second element,
we do not hold that the local agency is under any obligation to seek out the
copyright owner and endeavor to secure its consent. To do so would impose
additional burdens and costs on local agencies already challenged by the strict
deadlines set forth in the RTKL. Instead, we leave it to the local agency to decide


       14
           We emphasize, however, that where a conflict is established under Section 3101.1 of
the RTKL, the Copyright Act will limit the level of access to a public record only with respect to
duplication, because the Copyright Act does not restrict inspection. The public record must,
therefore, still be made available for inspection under the RTKL, allowing the public to
scrutinize a local agency’s reliance on or consideration of the copyrighted material.



                                               21
whether and, if so, under what circumstances and by what method it should
endeavor to secure consent.15 Because a local agency is under no obligation to
secure the copyright owner’s consent, however, we hold that where a local agency
invokes the Copyright Act as a basis to limit access to a public record to inspection
only, the absence of consent by the copyright owner to duplication in response to a
RTKL request should be presumed.
              In examining the Commission’s written submission to OOR and the
accompanying affidavit of Mr. Williams of The Partnership CDC, we conclude
that the Commission appropriately invoked the Copyright Act as a basis to limit
access to the records at issue by redacting copyrighted information from the
duplicates that it provided to Ali in response to his RTKL request. For the reasons
set forth above, however, we reject OOR’s determination to the extent that it
concluded that the redacted information is exempt or nonpublic under the RTKL.
There is material difference between an exempt and/or nonpublic record, which an
agency is not required to provide access to at all under the RTKL, and a public and
nonexempt record that may be subject to limited access under the RTKL.
Copyrighted information falls into the latter category. The Copyright Act limits
the level of access to a public record only with respect to duplication, not

       15
          We can envision several ways in which a local agency could, if it wished, secure the
consent of the copyright owner. The local agency could enact an ordinance which provides that
an applicant seeking local agency approval authorizes duplication in response to a RTKL request
of any materials submitted by the applicant as part of the approval process and/or must
indemnify or hold the local agency harmless for any infringement action that may result from
said duplication. Alternatively, the agency could seek waiver/indemnification at the time of the
submission. As another option, the agency could seek waiver/indemnification from the
copyright owner and/or the applicant once the agency receives a RTKL request that implicates
copyrighted material.



                                              22
inspection.     The public record must, therefore, still be made available for
inspection under the RTKL, allowing the public to scrutinize a local agency’s
reliance on or consideration of the copyrighted material.16

                                     C. Attorneys’ Fees
               Ali contends that he is entitled to an award of reasonable attorneys’
fees and costs of litigation under Section 1304(a) of the RTKL. We disagree.
Section 1304(a) of the RTKL provides:
                      If a court reverses the final determination of the
               appeals officer or grants access to a record after a request
               for access was deemed denied, the court may award
               reasonable attorney fees and costs of litigation or an
               appropriate portion thereof to a requester if the court
               finds either of the following:
                         (1) the agency receiving the original request
                  willfully or with wanton disregard deprived the
                  requester of access to a public record subject to access
                  or otherwise acted in bad faith under the provisions of
                  this act; or
                         (2) the exemptions, exclusions or defenses
                  asserted by the agency in its final determination were
                  not based on a reasonable interpretation of the law.
In support of his claim for attorneys’ fees and costs under this section, Ali argues
that “[t]he [Commission]’s denial of . . . Ali’s right to know request on the basis of
federal copyright law was patently unreasonable and in clear derogation of both the


       16
            In a motion to dismiss filed on February 10, 2015, the Commission notified the Court
that, subsequent to the filing of the appeal in this Court, The Partnership CDC gave its consent to
the Commission to duplicate the copyrighted materials at issue in response to Ali’s RTKL
request. Accordingly, the Commission asked that we dismiss this appeal as moot. This Court
denied the motion to dismiss by Order dated March 24, 2015, finding that “the issue presented
here [is] likely to be repeated, [is] of continuing significance and [is] ripe for disposition.”



                                               23
federal copyright legal landscape and the expansive goals of the RTKL.”
(Ali Br. at 32.)
             As noted above, we have rejected some of the Commission’s legal
arguments in support of its treatment of Ali’s RTKL request. We have, however,
also concluded that the Commission’s legal position on a conflict between RTKL
access and the Copyright Act was reasonable. Indeed, we have held that the
Commission acted appropriately under Section 3101.1 of the RTKL when it
redacted certain copyrighted information from the records it produced to Ali in
response to his RTKL request. Moreover, we see nothing in the record to justify a
finding that the Commission has acted in bad faith. We, therefore, reject Ali’s
contention that he is entitled to an award of statutory attorneys’ fees and costs
under Section 1304(a) of the RTKL.
                                III. CONCLUSION
             For the reasons set forth above, we will reverse the trial court’s
June 27, 2014 Order, to the extent it affirmed OOR’s determination that
copyrighted information in the possession of a local agency is exempt under
Section 305(a)(3) of the RTKL or is nonpublic under Section 306 of the RTKL.
Based on Section 3101.1 of the RTKL, we will affirm the trial court’s
June 27, 2014 Order, to the extent it held that the Commission acted appropriately
in redacting copyrighted information from the duplicate records that it provided to
Ali in response to his RTKL request. We also agree with the trial court that Ali is
not entitled to an award of attorneys’ fees in this matter.




                                 P. KEVIN BROBSON, Judge


                                          24
             IN THE COMMONWEALTH COURT OF PENNSYLVANIA

Jihad Ali,                            :
                         Appellant    :
                                      :
             v.                       :   No. 1335 C.D. 2014
                                      :
Philadelphia City Planning Commission :


                                     ORDER


             AND NOW, this 1st day of October, 2015, the order of the Court of
Common Pleas of Philadelphia County, affirming a decision of the Pennsylvania
Office of Open Records, is hereby AFFIRMED in part and REVERSED in part, as
set forth in the accompanying opinion.




                               P. KEVIN BROBSON, Judge
             IN THE COMMONWEALTH COURT OF PENNSYLVANIA


Jihad Ali,                            :
                         Appellant    :
                                      :
             v.                       :             No. 1335 C.D. 2014
                                      :             Argued: May 6, 2015
Philadelphia City Planning Commission :


BEFORE:        HONORABLE DAN PELLEGRINI, President Judge
               HONORABLE RENÉE COHN JUBELIRER, Judge
               HONORABLE ROBERT SIMPSON, Judge
               HONORABLE MARY HANNAH LEAVITT, Judge
               HONORABLE P. KEVIN BROBSON, Judge
               HONORABLE PATRICIA A. McCULLOUGH, Judge
               HONORABLE ANNE E. COVEY, Judge


DISSENTING OPINION BY
PRESIDENT JUDGE PELLEGRINI                                  FILED: October 1, 2015


               This case involves whether the City of Philadelphia may refuse to
disclose certain reports submitted to the City’s Planning Commission by the
Partnership Community Development Corporation (Partnership CDC) regarding the
development of the 60th Street Corridor (Corridor) for residential and commercial
purposes. Even though this information was going to be considered by the City
Planning Commission in its deliberations and recommendations regarding this
Corridor, the City denied Ali’s request submitted under the Right-to-Know Law
(RTKL)1 for information because the Partnership CDC had copyrighted portions of
those reports.



      1
          Act of February 14, 2008, P.L. 6, 65 P.S. §§67.101–3104.
               The issue in this case then is whether a person who seeks governmental
approval of an action can foreclose the copying of information that it submits just
because it decides to assert its copyright in the material.



               The Federal Copyright Act provides copyright owners the “exclusive
rights to do and to authorize” reproduction and distribution of their copyrighted
works. 17 U.S.C. §106(1), (3). As the majority points out, unless the copyright
holder has consented to duplication, the duplication of the copyrighted material under
the RTKL carries the risk that the copyright holder will sue the local agency for
infringement in federal court.2



               However, reproduction and distribution by a third party “for purposes
such as criticism, comment, … scholarship, or research[] is not an infringement of
copyright;” and is, instead, a lawful and “fair use.” 17 U.S.C. §107. This “fair use”
doctrine is an equitable rule of reason and each case must be decided on its facts. A
court must consider the purpose and character of the use, the nature of the
copyrighted work, the amount and substantiality of the portion used in relation to the
copyrighted work as a whole, and the effect of the use on the potential market for or
the value of the copyrighted work. Twin Peaks Productions, Inc. v. Publications Int’l
Ltd., 996 F.2d 1366 (2d Cir.1993). The scope of the doctrine is wider when the use
relates to issues of public concern.            National Rifle Ass’n v. Handgun Control
Federation, 15 F.3d 559 (6th Cir.), cert. denied, 513 U.S. 815 (1994); Consumers

       2
          17 U.S.C. §412 allows damages to be received for copyright infringement, so long as the
registration for the copyright occurs within three months of the publication of a work. The affidavit
herein did not mention whether the copyright was registered within three months.


                                             DRP - 2
Union of U.S., Inc. v. Gen. Signal Corp., 724 F.2d 1044 (2d Cir. 1983), cert. denied,
469 U.S. 823 (1984).       The public benefit resulting from the particular use of
copyrighted work need not necessarily be direct or tangible, but may arise because
the challenged use serves a public interest. Sega Enterprises, Ltd. v. Accolade, Inc.,
977 F.2d 1510 (9th Cir.1992).



             In this case, the Partnership CDC is not unaware of the underlying
RTKL proceeding. In fact, it has filed an affidavit opposing the release of the
information stating only that it holds a copyright on the materials as part of its
proposed redevelopment project that were withheld, and that it would suffer
competitive harm if the information was released. In essence, it contends that the
material should not be released, let alone copied. However, it does not contend that
the material should not be released because it does not fall within the fair use
doctrine. That is not surprising, given that the information that it sought to protect
from disclosure or copying is being used to seek governmental approvals, making any
claim that it did not fall within the fair use doctrine spurious. Because the Partnership
CDC does not contend that the materials do not fall within the fair use doctrine, I
would hold that copying of the requested information is permitted for that reason
alone.



             However, I would go further. Under Section 302(a) of the RTKL an
agency “shall provide public records in accordance with this act.”              65 P.S.
§67.302(a). Moreover, under Section 701(a), “[u]nless otherwise provided by law, a
public record … shall be accessible for inspection and duplication in accordance with
this act.” 65 P.S. §67.701(a). The “otherwise provided by law” goes to where there


                                        DRP - 3
are other laws prohibiting the release of information such as tax returns. It does not
apply to instances where a party can decide whether information can be released by
copyrighting or refusing to allow copying a document on which it seeks official
action. If that were so, a party, just by asserting its copyright could foreclose its
duplication; it would have the effect of ceding control to a private party over what
records involving an official action that an agency can disseminate.



             Consequently, I would hold that when a party gives documents that are
specifically prepared as part of an application or proposal to an agency to take action,
then it is presumed to waive any copyright protection to the material regarding the
right to access and duplication. If a party specifically claims copyright protection of
the documents on which it seeks an agency action, I would hold that the agency
cannot receive or use them in the consideration of any requested official action.



             If we hold otherwise, we totally frustrate the purpose of the RTKL which
is to promote access to government information in order to prohibit secrets, permit
scrutiny of the actions of public officials, and make public officials accountable for
their actions. Levy v. Senate of Pa., 65 A.3d 361, 381 (Pa. 2013).



             Accordingly, I respectfully dissent.


                                          _________________________________
                                          DAN PELLEGRINI, President Judge




                                       DRP - 4
                IN THE COMMONWEALTH COURT OF PENNSYLVANIA


Jihad Ali,                                      :
                       Appellant                :
                                                :   No. 1335 C.D. 2014
               v.                               :
                                                :   Argued: May 6, 2015
Philadelphia City Planning                      :
Commission                                      :



BEFORE:        HONORABLE DAN PELLEGRINI, President Judge
               HONORABLE RENÉE COHN JUBELIRER, Judge
               HONORABLE ROBERT SIMPSON, Judge
               HONORABLE MARY HANNAH LEAVITT, Judge
               HONORABLE P. KEVIN BROBSON, Judge
               HONORABLE PATRICIA A. McCULLOUGH, Judge
               HONORABLE ANNE E. COVEY, Judge



DISSENTING OPINION
BY JUDGE McCULLOUGH                                                FILED: October 1, 2015


               I respectfully dissent from the Majority. The case has been mooted
because the Partnership Community Development Corporation (PCDC) has
withdrawn its objection to the request of Jihad Ali for the release of documents
under the Right to Know Law (RTKL).1 While this issue may arise in the future,
there simply is no basis to conclude that when, or if, it does, the issue will evade
review because an interested party waives its objection to release of the contested
information. On the contrary, I do not believe that we should use a matter in which


      1
          Act of February 14, 2008, P.L. 6, 65 P.S. §§67.101 – 67.3104.
there is no longer a case or controversy as a platform to dive into the intricacies of
federal copyright law.
             Nonetheless, because the Majority resolves the merits of this case on
the basis of federal copyright law, I will discuss how we can dispose of the case on
the basis of a straightforward application of the provisions of the RTKL. The
Majority’s decision does not consider that any application of the federal copyright
law is not undertaken in a vacuum. Rather, we must first resort to the RTKL, for
that is the basis of the OOR’s jurisdiction in this matter. A review of the RTKL
shows that a consideration of the request for documents in this case, and the
defenses asserted thereto based on copyright exemptions, is subsumed within
section 708(b) of the RTKL. Clearly then, as the issues have been presented to this
Court on appeal, specifically that the documents contained within a proposal are
exempt from disclosure based on copyright law, we must necessarily consider the
applicable RTKL provisions.
             In this case, Ali filed a request with the Philadelphia City Planning
Commission (Commission) seeking “[a]ll public records in the possession of the
[Commission] from 2003 to the present time relating to the revitalization and
redevelopment of the 60th Street commercial corridor.” (Trial court op. at 1.) The
Commission granted in part, and denied in part, Ali’s request. The Commission
explained that certain responsive records, including plans, architectural drawings,
renderings, and photographs, are subject to the copyright of the PCDC and must be
redacted.
             The Commission also noted that certain records, namely a financial
statement and an operating budget, were being redacted as trade secret/confidential
proprietary information. The Commission stated that it was advised by the PCDC


                                      PAM - 2
that these records contained confidential proprietary information, the release of
which would cause substantial harm to its competitive position given that these
records contain a model created by the PCDC for pricing and financing techniques
relating to scattered site affordable housing.    The Commission cited section
708(b)(11) of the RTKL, 65 P.S. §67.708(b)(11), which exempts a record that
constitutes or reveals a trade secret or confidential proprietary information from
access by a requester.
             Ali appealed the partial denial to the OOR, which concluded that since
the PCDC holds the copyright on certain records withheld by the Commission and
the PCDC did not consent to the release of the same, it was precluded under
section 305(a)(3) of the RTKL, 65 P.S. §67.305(a)(3), from ordering the release of
records that would be exempt under any federal law. However, the OOR also
concluded that the Commission had failed to meet its burden of establishing that
the PCDC’s financial statement and operating budget were exempt from disclosure
as confidential proprietary information and, hence, directed the disclosure of the
same without redaction. The Court of Common Pleas of Philadelphia County (trial
court) thereafter denied Ali’s further appeal.
             However, the analysis by the OOR fails to consider that the
documents in question were contained as part of a proposal even though this was
clearly indicated as part of the record before it. Moreover, this consideration is
necessarily a critical part of the OOR’s review as the PCDC asserts copyright
exemption to the materials in the proposal. In an affidavit submitted to the Office
of Open Records (OOR), Steven Williams, Executive Director of the PCDC, stated
that the PCDC submitted the documents in a record titled, “Affordable Rental
Housing Development Proposal” relating to the revitalization and redevelopment


                                      PAM - 3
of the 60th Street commercial corridor in the City of Philadelphia. The RTKL
clearly addresses proposals for construction/redevelopment projects.
               PCDC asserted it is the holder of a copyright with respect to the
documents contained within the proposal, i.e, architectural schematics,
architectural drawings, maps, and artists’ renderings that appear in the responsive
documents. Williams also stated that the requested records in the nature of a
financial statement and operating budget, also submitted as part of the proposal,
were confidential proprietary information of the PCDC, the disclosure of which
would cause substantial harm to the PCDC’s competitive position.2
               The first question we must address is whether these documents qualify
as a public record under section 102 of RTKL, which is defined as:

               A record, including a financial                      record,     of    a
               Commonwealth or local agency that:

                       (1) is not exempt under section 708;

                       (2) is not exempt from being disclosed under
                       any other Federal or State law or regulation
                       or judicial order or decree; or

                       (3) is not protected by a privilege.



       2
         Section 708(c) of the RTKL provides for the release of financial records, with limited
redaction. Specifically, this section states, in pertinent part, that “[t]he exceptions set forth in
subsection (b) shall not apply to financial records, except that an agency may redact that
portion of a financial record protected under subsection (b)(1), (2), (3), (4), (5), (6), (16) or (17).”
These protections relate to, inter alia, the disclosure of records that would likely result in a risk
of physical harm to or the personal security of an individual, jeopardize public safety or a
criminal investigation, or reveal medical or personal identification information. The record does
not indicate that PCDC raised any of these protections as a basis for exemption of the financial
records. The parties did not appeal the disclosure of the financial documents.


                                              PAM - 4
65 P.S. §67.102. Section 305(a) of the RTKL presumes that a record in the
possession of a Commonwealth agency is a public record. 65 P.S. §67.305(a).
Here, the proposal was submitted by the PCDC to the Commission for the award of
a contract in a construction project and is in the possession of the agency. Clearly,
the proposal is a public record. A public record must be disclosed upon request
unless otherwise entitled to an exemption. The burden is on the local agency to
prove that a record is exempt from public access. Section 708(a)(1) of the RTKL,
65 P.S. §67.708(a)(1); Heavens v. Pennsylvania Department of Environmental
Protection, 65 A.3d 1069, 1073 (Pa. Cmwlth. 2013).
             We look to Section 708(b) of the RTKL, which sets forth certain
exceptions for public records, providing, in relevant part, as follows:

             Except as provided in subsections (c) and (d), the
             following are exempt from access by a requester under
             this Act:

                                         ...

                   (26) A proposal pertaining to agency
                   procurement or disposal of supplies, services
                   or construction prior to the award of the
                   contract or prior to the opening and
                   rejection of all bids; financial information
                   of a bidder or offeror requested in an
                   invitation for bid or request for proposals to
                   demonstrate the bidder's or offeror’s
                   economic capability; or the identity of
                   members, notes and other records of agency
                   proposal evaluation committees established
                   under 62 Pa.C.S. § 513 (relating to
                   competitive sealed proposals).




                                      PAM - 5
65 P.S. §67.708(b)(26) (emphasis added).         This section clearly exempts from
disclosure a proposal pertaining to agency services or construction prior to the
award of the contract or prior to the opening and rejection of all bids. Here,
the proposal for the construction/redevelopment project was submitted in 2003 and
the request was made in 2013 for all information pertaining to the project. While
we could remand to have specific findings made concerning whether the PCDC
was awarded the contract for the construction/redevelopment, it seems obvious that
such is the case here. Because the project has been underway for years, and the
contract was awarded, it is clear that the exemption granted to proposals no longer
applies and the records are subject to full disclosure.
             I recognize the Commission’s and the PCDC’s position that the
documents, i.e., the architectural schematics, architectural drawings, maps, artists’
renderings, financial statement, and operating budget, were subject to copyright
and trade secret/proprietary information. However, proposals submitted for award
of a contract for construction typically do contain such documents and the
legislature clearly distinguished proposals of this nature from other intellectual
property documents submitted to it.
             Indeed, section 102 of the RTKL addresses intellectual property
matters in general and defines such documents as follow:

             “CONFIDENTIAL PROPRIETARY INFORMATION.”
             Commercial or financial information received by an
             agency:

                    (1) which is privileged or confidential; and

                    (2) the disclosure of which would cause
                    substantial harm to the competitive position
                    of the person that submitted the information.


                                       PAM - 6
                                              ...

              “TRADE SECRET.” Information, including a formula,
              drawing, pattern, compilation, including a customer list,
              program, device, method, technique or process that:

                      (1) derives independent economic value,
                      actual or potential, from not being generally
                      known to and not being readily ascertainable
                      by proper means by other persons who can
                      obtain economic value from its disclosure or
                      use; and

                      (2) is the subject of efforts that are
                      reasonable under the circumstances to
                      maintain its secrecy.

              The term includes data processing software obtained by
              an agency under a licensing agreement prohibiting
              disclosure.
65 P.S. §67.102 (emphasis added).3             Hence, drawings, such as architectural
drawings, artists’ renderings, schematics, etc., submitted as part of a proposal for
award of contract, which derive independent economic benefit by not being
generally known and readily ascertainable by persons who can obtain economic
value from its disclosure (i.e., competing contractors, architectural firms, etc.)
would fall within the purview of this definition of trade secret. Section 708(b)(11)
of the RTKL specifically exempts “[a] record that constitutes or reveals a trade
secret or confidential proprietary information.” 65 P.S. §67.708(b)(11). If the

       3
        The definition of “trade secret” is derived from identical language contained in section
5302 of the Pennsylvania Uniform Trade Secrets Act (Trade Secrets Act), 12 Pa.C.S. §5302.
This Court has recognized the Trade Secrets Act as a statutory exemption from disclosure under
the RTKL. See Commonwealth v. Eiseman, 85 A.3d 1117 (Pa. Cmwlth.), appeal granted, 106
A.3d 610 (Pa. 2014); Parsons v. Pennsylvania Higher Education Assistance Agency (PHEAA),
910 A.2d 177 (Pa. Cmwlth. 2006).



                                          PAM - 7
analysis were to end here, the records would be exempt. However, the RTKL
further addresses how requests for such documents are to be handled under section
707 of the RTKL, entitled “Production of certain records,” which states, in
pertinent part, as follows:

               (b) REQUEST FOR TRADE SECRETS. -- An agency
               shall notify a third party of a request for a record if the
               third party provided the record and included a written
               statement signed by a representative of the third party
               that the record contains a trade secret or confidential
               proprietary information. Notification shall be provided
               within five business days of receipt of the request for the
               record. The third party shall have five business days
               from receipt of notification from the agency to provide
               input on the release of the record. The agency shall deny
               the request for the record or release the record within ten
               business days of the provision of notice to the third party
               and shall notify the third party of the decision.
65 P.S. §67.707(b). Even under this provision, in order to receive notice of a
request, the third party which provided the record must include with it a written,
signed statement that the record contains trade secret or confidential proprietary
information.
               While the record does not indicate whether the PCDC included the
necessary notification language in its proposal per section 707(b) of the RTKL, the
Commission did notify them of the request. The PCDC initially objected to release
of the records by asserting confidential proprietary information and copyright (in
documents which fall within the trade secret definitions of the RTKL), but
subsequently withdrew its objection. The federal courts have held that if by
submitting a bid proposal to a government agency, a company is required to
disclose confidential information, it is exempted from disclosure if it will cause
substantial harm to the competitive position of the person from whom the

                                        PAM - 8
information was obtained. National Parks & Conservation Association v. Morton,
498 F.2d 765, 770 (D.C. Cir. 1974). However, here, the PCDC withdrew its
objection, and with it any claim that release of the information would cause
substantial harm. Hence, this renders the appeal moot, as these records are clearly
subject to disclosure.
             Because these public records were submitted as part of a proposal for
construction, we are also guided by the RTKL’s specific provision addressing the
same. The legislative intent is clear that proposals for construction are to be
specifically and separately addressed under section 708(b)(26) of the RTKL. In
other words, public records that contain information which is subject to trade secret
or other proprietary information, which by definition includes copyright materials,
once submitted in a proposal to a Commonwealth or local agency for consideration
for a contract for construction/redevelopment, must also be viewed under section
708(b) of the RTKL.
             Specifically, under section 708(b)(26) of the RTKL, the PCDC’s
proposal, including its architectural schematics, architectural drawings, maps, and
artists’ renderings, would have been exempt from disclosure before award of the
contract, but, since the contract was awarded and the PCDC withdrew its objection
to release of the records, they are now subject to disclosure. Additionally, I note
that section 708(b)(22) of the RTKL, 65 P.S. §67.708(b)(22), also contains an
exemption for the content of real estate appraisals, engineering or feasibility
estimates, environmental reviews, audits or evaluations relating to construction
projects,   and   similarly   provides      in   section   708(b)(22)(ii),   65   P.S.
§67.708(b)(22)(ii), that the exemption no longer applies once the decision is made
to proceed with the construction project.


                                      PAM - 9
             Notwithstanding the mootness of this appeal, the intent of the
legislature is clear. Proposals for award of construction/redevelopment contracts
are public records subject to exemption before the contract is awarded, but once
the contract is awarded, these public records are subject to full disclosure unless
otherwise specifically exempted. Here, the PCDC’s proposal was submitted to the
Commission for consideration for a construction project in the City of
Philadelphia. Now, in light of PCDC’s withdrawal of the objection to release of
the information, and more than ten years after submission of the proposal and
development of the project, these records are clearly subject to full disclosure
under the RTKL.
             Accordingly, I would first hold that the appeal was moot, but in the
alternative I would vacate the order of the trial court and remand, with specific
instructions to remand to the OOR, to fully consider whether the requested records,
which included materials submitted as part of a proposal, constitute a “public
record” under sections 102 and 708(b) of the RTKL.




                                          ________________________________
                                          PATRICIA A. McCULLOUGH, Judge




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