75 Op. Att'y Gen. 133 (1986)
 
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OPINION NO. OAG 27-86

Wisconsin Attorney General Opinions

Copyright; Libraries; Public Records;

Computerized compilation of bibliographic
records discussed in relation to
copyright law.

Under public records law, requester is
entitled to copy of computer tape
or a printout of information
contained on the tape.

12 August 1986

HERBERT J. GROVER, State Superintendent
Department of Public Instruction

In your letter of June 5, 1985, you ask:

Would it be contrary to the state public
records law for an authority, such as a state
agency or local  public library board, to
enter into a contract for  computerized
cataloging services which would limit public
access to records concerning that authority's
holdings which were created on behalf of the
authority pursuant to the contract?

The factual bases for your inquiry are
complex but need to be understood in detail.

You state the following in your letter:

Since 1975 the Department of Public
Instruction,  Division for Library Services
(hereafter Division or  DLS) and numerous
public libraries within the state, including
libraries in the University of Wisconsin
System, have contracted through a statewide
network  of libraries (the Council of
Wisconsin Libraries, known as COWL) to
purchase the services of the Online Computer
Library Center (OCLC), a not-for-profit
corporation in Dublin, Ohio.

OCLC operates a computerized cataloging
service which  utilizes a shared data
base of bibliographic records.

OCLC provides the computer storage and
software necessary  to create and manipulate
the records, and the member  libraries who
contract with OCLC create the records by
entering the necessary data on their
holdings into computer terminals
located at each library.

Member libraries, that is, libraries which
have  contractually agreed to be part of the
OCLC system,  have access to the combined
catalog records of all  libraries in the
system, including records contributed
by the Library of Congress.

Member libraries may search the online data
base for  catalog records and may also
purchase from OCLC printed catalog cards
and machine-readable catalog records on tape,
which are extracted from information
in the OCLC data base.

These machine-readable tapes are an important
product  to local libraries because they can
be transferred  from one computerized system
to another and may be  used in a variety of
library automation activities.

 
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Currently 95 public and private libraries in
Wisconsin are members of OCLC and use OCLC's
online  system to enter cataloging data.

Since 1975 DPI has awarded approximately $1.8
million in federal grants to Wisconsin public
libraries to assist them in joining OCLC and
using the OCLC system for such activities as
cataloging, conversion of bibliographic
records to machine-readable form,
interlibrary loans and for
local automation activities.

In 1982 the Division received permission from
all Wisconsin OCLC-member libraries to use
their OCLC machine-readable tapes to create
a statewide data base to be distributed to
all Wisconsin libraries, including
non-OCLC member libraries.

The Division also developed a microcomputer
program which permits non-OCLC libraries
to add their holdings to the records
in the statewide data base.

Once a library has added its holdings to the
data base, the library then may extract a
complete bibliographic record and use the
record for other local automation projects,
such as circulation and interlibrary loans.

The Division's past practice of providing
information in the statewide data base to
non-OCLC libraries appears to be jeopardized
by recent developments in contract
negotiations with OCLC.

In 1983 OCLC filed for copyright of
its data base as a compilation.

The Library of Congress eventually registered
the copyright, but specifically limited the
registration to the online compilation only,
and indicated that any competing copyright
claims would also be registered.

A number of OCLC-member libraries have
since filed copyright claims as
co-authors of the data base.

The legality and extent of the copyright have
not been determined and OCLC's actions in
filing for the copyright have created
much concern and dissent among
OCLC-member libraries.

Further information obtained by our office
will assist in understanding the nature of
the records involved and how they come about.

The OCLC online data base contains
approximately 12 million bibliographic title
entries which contain the information one is
accustomed to finding in a traditional card
catalogue at the public library.

Over fifty percent of these entries have
been made by the Library of Congress.

 
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All other entries have been made by
OCLC-member libraries having access to the
OCLC computer system.

OCLC does not itself make entries.

When an OCLC member obtains a new title
(i.e., book or other publication) for its
collection, it checks, through its computer
access to the OCLC data base, to determine
whether the title and bibliographic
information have been entered.

If not yet entered, the library will enter
the new title into the OCLC system.

Along with traditional bibliographic
information, it will state that the
new title is held by the library.

The next library making a similar inquiry of
OCLC will find that the title has been
entered and that it is available at the
library that made the initial entry.

The second library may then simply add its
name to the record indicating that it
too has the title in its holdings.

This information would in turn be
available to the next library
that inquires about that title.

In addition, a library with access to OCLC
may modify the bibliographic record to
conform to the library's particular
format or needs.

Any library entering a new title or making a
modification or just adding its name to the
list of holding libraries pays a prescribed
fee to OCLC for the transaction.

An OCLC-member can obtain a computer tape of
those titles or bibliographic records
which it holds in its collection.

However, as stated by your legal counsel:

OCLC has a rather intricate pricing system it
uses when a library requests a copy of the
computer tape of its holdings.

Besides paying for the tape itself and
production costs, COWL also pays
between 13 and 35 cents for each
record on the tape, the price
depending upon the number of
records on the tape.

For example, if a tape has less than 1,000
records, OCLC will charge 35 cents per
record; if a tape has more than 200,000
records, the charge will be 13 cents
per record.

This means it is much more cost efficient
for COWL to purchase one tape with the
transactions of all Wisconsin libraries,
than for each library to purchase
its own tape individually.

In Wisconsin, one of the uses being made of
the OCLC tapes has been to create a database
and microfiche system called WISCAT.

WISCAT provides a list of bibliographic
records and the holdings of all Wisconsin
libraries (including non-OCLC members)
by title, author and subject matter.

Currently OCLC does not produce such a
microfiche system or a listing of
holdings by subject matter.

 
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Consequently, WISCAT is not competing
with OCLC in this regard.

In order to create WISCAT, the DLS first
purchases a tape copy of the transactions
which Wisconsin libraries have entered
into the OCLC data base.

DLS also adds records from some local
databases (which were developed before
OCLC came into being) plus additional Library
of Congress MARC records.

DLS then sends these tapes to a private
vendor, Brodart, for additional
data processing.

Brodart eliminates all duplicate entries,
adds local and regional information to each
record, adds an identifying number that is
unique to Brodart, and then translates all
of this information into microfiche cards.

The data base which is used to produce the
microfiche now contains nearly three (3)
million bibliographic records and
requires 3,600 microfiche cards.

To reproduce this information into paper
records would require over 720,000 sheets
of paper and at $.15 per page would
cost over $10,000.

(Haas letter of October 18, 1985, at 2.)

Your legal counsel has further advised
me of your MITINET project:

The other major Wisconsin project is MITINET.

MITINET is a micro-computer program which
can be used on IBM-PC or Apple computers to
enter into a computer format the holdings
records of a non-OCLC library.

After a library has recorded its holdings
information on a floppy disk,
the disk is sent to DLS.

DLS then sends the disks to the Madison Area
Computer System at the UW-Madison to
convert the disks into computer tapes.

These tapes are then sent to Brodart which
puts the records into Library of
Congress/MARC format and then converts
them into WISCAT microfiche records.

The LC-MARC format used by MITINET is not the
same as the OCLC-MARC format used by OCLC.

MITINET permits smaller libraries, for which
OCLC membership is not economically feasible,
to include their local holdings records on
the WISCAT database and microfiche.

Until very recently OCLC did not produce
a program such as MITINET.

Consequently, although MITINET was in no
way competitive with OCLC when it was
introduced, OCLC now considers it
to be a competitive product.

(Haas letter of October 18, 1985, at 3.)

 
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Thus, a non-OCLC member that identifies
its local holdings in this way can have
the information merged into the WISCAT
data base by Brodart.

Then, the local library obtains a separate
computer tape of all titles it holds from
Brodart, usually ordered through DLS.

The tape can be used for
circulation purposes.

The tape would also show other Wisconsin
libraries holding the same title so it could
also be used for interlibrary loans.

OCLC has undertaken to renegotiate contracts
with its members to include provisions
controlling the transfer of the OCLC
data base to nonmembers.

The proposal embraces the following
principles among others,
as stated by OCLC:

A.

Protection and enrichment of the OCLC
database for  the benefit of the OCLC
membership, and the  library world in
general, is both necessary and  desirable.

Third Parties who receive copies of  Records
should normally reciprocate by making  their
records and holdings available to the OCLC
database.

B.

Protection of the OCLC database is best
achieved by means of specific language
in contracts with  users and with
OCLC-affiliated networks.

C.

Contracts with Third Parties will normally
provide  for appropriate compensation to
OCLC, financial or  other, for the
use of Records.

D.

In the absence of contract provisions
governing  transfers to and use by Third
Parties, OCLC may  seek to protect the OCLC
database by means of its  copyrights.

OCLC will not invoke copyright against
general members or networks with which
contracts  have been executed which include
protective  language dealing with the
transfer of Records to  Third Parties.

Principle D appears to give an OCLC member a
choice   either agree to new contractual
provisions controlling transfer to third
parties or be exposed to copyright
infringement actions.

In essence, you ask whether the public
records law precludes DPI from agreeing to
a contractual provision that could serve to
limit access to the computerized records.

As a general matter, computer tapes in the
possession of a state agency are "records"
as defined in section 19.32(2), Stats.

Section 19.36(4) expressly provides that
material used as input for a computer program
and material produced as a product are
subject to inspection and copying, but
that a computer program is not.

 
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However, section 19.32(2) further
specifically provides that the
term "record" does not include

      " materials to which access is
        limited by copyright, patent
        or bequest . . . . . . . . . "

COPYRIGHT CLAIM

Because of the factual and legal complexity
of this matter and the national scope of the
controversy, I expect a final resolution of
OCLC's copyright claim will come from the
federal appellate courts.

However, I can give you some legal principles
to consider and my evaluation of the strength
of the copyright claim given the facts
as I understand them.

While the Copyright Act of 1976, like the
prior statute, was enacted to further the
public interest and not the interests of
those seeking to profit from their
intellectual properties, it is
premised on a recognition that
creativity is fostered by affording
protection against copying by others.

     The real purpose of the copyright
     scheme is to encourage works of the
     intellect, and . . . this purpose
     is to be achieved by reliance on
     the economic incentives granted to
     authors and inventors by the
     copyright scheme.

Universal City Studios v.
Sony Corp. of America,
659 F.2d 963,
965 (9th Cir. 1981).

That protection extends beyond the copying of
the literary work itself to appropriation by
derivative works, such as the motion picture
version of a copyrighted novel.

17 U.S.C. Sections 101 and 106.

Copyright protection does not extend,
however, "to any idea, procedure, process,
system, method of operation, concept,
principle, or discovery, regardless of the
form in which it is described, explained,
illustrated, or embodied in such work."

17 U.S.C. Section 102.

National Business Lists v.
Dun & Bradstreet, Inc.,
552 F.Supp. 89, 91-92
(N.D. Ill. E.D. 1982)
(hereinafter cited as "D&B").

Facts alone are not copyrightable.

Rand McNally & Co. v.
Fleet Management Systems,
591 F.Supp. 726, 731
(N.D. Ill. E.D. 1983)
(hereinafter "Rand McNally").

Neither are ideas or their use.

Signo Trading Intern. Ltd. v. Gordon,
535 F.Supp. 362, 365 (N.D. Cal. 1981)
(hereinafter "Signo").

However, the compilation of facts may be
protected by copyright even though the facts
themselves are in the public domain.

Schroeder v. William Morrow & Co.,
566 F.2d 3, 5 (7th Cir. 1977).

 
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The courts express some dismay that
copyright protection is accorded to
compilations.

D&B, 552 F.Supp. at 91-92;
Rand McNally, 591 F.Supp. at 731.

Compilations do not usually involve the
sort of original, creative or intellectual
works that fall more readily within the
concept of copyright protection.

As stated by the court in D&B,
552 F.Supp. at 92:

     That protection does not fit nicely into
     the conceptual framework of copyright
     law and has for that reason been
     criticized.

See

1 Nimmer on Copyright Section 3.04 (1981).

     It has been suggested that the act of
     aggregating isolated pieces of
     information can be authorship,
     with the resulting collection of
     data being a work of authorship . .

     The courts have generally rested,
     however, not on an analysis of copyright
     concepts but on the economic incentives
     premise of the copyright law and the
     injustice of permitting one to
     appropriate the fruit of
     another's labor. . . .

     That concept of authorship is, moreover,
     supportable by the language of the
     Copyright Act of 1976, which defines
     compilations as

          a work formed by the
          collection and assembling . .
          . of data that are selected,
          coordinated, or arranged in
          such a way that the resulting
          work as a whole constitutes an
          original work of authorship."

          17 U.S.C. Section 101

And the protection of copyright extends to
protection against derivative works, which
include any form "in which a work may be
recast, transformed, or adapted."

17 U.S.C. Sections 101 and 106.

Finally, 17 U.S.C. Section 103(b)
distinguishes between material contributed
by the author of a compilation and
preexisting material, granting
protection to the former but
not to the latter.

Though protected, "compilations" are
considered to be at the "outer boundaries of
copyright law." D&B, 552 F.Supp. at 91, 94.

Thus, the protection accorded compilations
is based on the premise that the fruits
of the compiler's labors should be
protected from appropriation.

D&B, 552 F.Supp. at 92, 94.

In the most recent case out of the Seventh
Circuit Court of Appeals, the court rejects
the importance of originality and focuses
on the need for "industrious collection"
and "substantial independent effort"
on the part of the compiler.

Schroeder, 566 F.2d at 5, 6.

 
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Although OCLC's role can be seen as a
collection activity, it may fall short
of the kind of industrious and independent
effort needed to establish protection.

This is due to the fact that it is the
OCLC-members, and not OCLC, who actually
create the collection through their
entries into the data base.

It is the members who create, update
and manipulate the data base.

Copyright in a compilation
     "extends only to the material
      contributed by the author."

Rand McNally,
591 F.Supp. at 731;
D&B, 552 F.Supp. at 92.

It does not include input from other sources.

Rand McNally, 591 F.Supp. at 733.
It may be that OCLC does not contribute any
substantive material to the data base.

It provides only a means of collection,
storage and retrieval.

Copyright protection is not affected by
the fact that a computer is used.

17 U.S.C. Section 117 (1977).

In my view, this mere "mechanism" for
compilation is not protected by
the copyright laws.

FAIR USE

If it is determined that OCLC has a
compilation that is copyrightable to some
extent, use of the compilation in the manner
now in controversy may nevertheless be
defensible against a claim of copyright
infringement based on the defense of

     "fair use."

The doctrine of "fair use" is codified in
17 U.S.C. Section 107 (1977), which reads:

Limitations on exclusive rights:

Fair use

Notwithstanding the provisions of section
106, 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.

 
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The factors enumerated are not
meant to be exclusive.

Harper & Row Publishers v. Nation
Enterprises,
105 S.Ct. 2218, 2231 (1985).

The general intention behind
the provision is as follows:

General Intention Behind the Provision.

The statement of the fair use doctrine in
section 107 [this section] offers some
guidance to users in determining when
the principles of the doctrine apply.

However, the endless variety of situations
and combinations of circumstances that can
rise in particular cases precludes the
formulation of exact rules in the statute.

The bill endorses the purpose and general
scope of the judicial doctrine of fair use,
but there is no disposition to freeze the
doctrine in the statute, especially during
a period of rapid technological change.

Beyond a very broad statutory explanation of
what fair use is and some of the criteria
applicable to it, the courts must be free
to adapt the doctrine to particular
situations on a case-by-case basis.

Section 107 [this section] is intended to
restate the present judicial doctrine of
fair use, not to change, narrow,
or enlarge it in any way.

1976 U.S. Code Cong. & Ad. News 5680.

1.   Purpose and character of the use.

     The controversial use here involves the
     extraction of bibliographic entries from
     the OCLC data base and through various
     stages and processes the production of
     an individualized computer tape that can
     be used by a local library in Wisconsin
     for its particular holdings and needs.

     The service provided by DPI
     is entirely nonprofit.

     Indeed, the service is subsidized
     to some extent by state funds.

     There is no commercial motive.

     The motivating purpose is to improve
     the state's library system.

     All these factors are strong
     indicators of "fair use."

 2.  The nature of the copyrighted work.

     Assuming OCLC qualifies as a
     copyrightable compilation,
     it has already been noted
     that compilations exist
     at the fringe of the
     copyright laws.

     D&B, 552 F.Supp. at 91.

     Also important is the fact that the
     critical input into the data base comes
     from and is really accomplished
     completely by the members, and OCLC
     provides only the mechanism.

     These factors indicate a lower
     form of copyright interest.

 
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3.   The relative amount of the portion used.
     It is my understanding that the OCLC
     data base holds approximately 12 million
     titles and you extract about 2.6 million
     of those for the WISCAT data base
     for use in Wisconsin.

     When computer tapes are provided through
     DLS and Brodart for a local library,
     the number of titles ranges
     from 25,000 to 40,000 titles.

     In Williams & Wilkins Company v. United
     States, 487 F.2d 1345, aff., 420 U.S.
     376 (1973), it was held that the
     absolute volume of copying is not
     decisive.

     Williams, 487 F.2d at 1355.

     There the National Institute of Health
     and the National Library of Medicine
     were copying 930,000 pages a year mainly
     from medical journals, but that volume
     did not preclude a decision that their
     use was a fair use.

     In the instant situation a local library
     in Wisconsin is typically obtaining
     less than one-half percent of
     the total OCLC data base.

4.   Effect on market for or value
     of the copyrighted work.

     The burden would be on OCLC to show some
     substantial injury flowing from DLS's
     use of the data base, and OCLC could not
     simply rely on the assumption that your
     service is depriving it of clients.

     Williams, 487 F.2d at 1358-59.

     The court in Williams was not convinced
     that the suppression of copying would
     result in more sales by the publisher.

     There are other means, or one
     could simply go without.

     Williams, 487 F.2d at 1359.

     The same may be true here.

     If the local libraries cannot obtain
     computer tapes of their holdings from
     DLS, it may be very unlikely that they
     would be able to go to OCLC for the
     service.

     The result would be a return to the less
     efficient card catalog systems and
     interlibrary loan systems.

     The quality of the state's library
     system would suffer, and ultimately
     school children and others who rely
     on libraries would be deprived.

In addition to weighing the foregoing
factors, the court in Williams also
took into account the fact that there was
some question as to the legal basis
for the infringement claim.

Williams, 487 F.2d at 1359.

That factor is present here as well,
as discussed earlier.

Another factor vitiating against OCLC
is that it has acquiesced to this
practice since its inception.

If there is a market,
DLS has created it.

 
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In the end, one must balance the public
interest to be served against the
copyright interests to be protected.

Williams, 487 F.2d at 1359.

In Williams, the court decided that the risk
to the plaintiff's business was unproven
while there would be an obvious detrimental
impact on medical science if copying of
journal articles was suppressed.

The court held the use to be a "fair use."

In the case before us, it appears equally
true that suppression of established services
to local libraries will have a detrimental
effect on the state's library system without
necessarily generating any benefit for OCLC.

This, along with the fringe nature of OCLC's
underlying copyright claim, lead me to
believe that a reviewing court would hold
your use to be a fair one.

COPYING COMPUTERIZED RECORDS

At the time when the only general statutory
law on public records was section 19.21,
the attorney general opined that there
was a right to obtain a copy of
computer tapes, including those
containing computer programs.

59 Op. Att'y Gen. 144, 147 (1970);
63 Op. Att'y Gen. 303, 304 (1974).

The question is whether the expanded
codification of the public records law
enacted by chapter 335, Laws of 1981,
requires a change in that interpretation.

It certainly does in part since section
19.36(4) now provides that a computer program
is not subject to examination and copying.

However, the new statutes do not prohibit
the copying of computer tapes.

Indeed section 19.36(4) affirmatively
provides that the data base and "product of
the computer program," which could be a
computer tape, are subject to copying.

If this were the end of section 19.36(4), I
would say the law as expressed by the earlier
opinions of this office with respect to
computer tapes remains unchanged.

That is, there is a right to copy a computer
tape under the public records law.

However, further analysis is necessary
because section 19.36(4) says it is subject
to exceptions in section 19.35.

Section 19.35(1)(a) carries over
any common law principles.

Section 19.35(1)(c) and (d) specifically
authorize the copying of audio tapes and
video tapes, and there is no specific
authorization for copying of computer tapes.

It may be argued this omission
constitutes an implicit exception.

But I do not believe this to
be the legislative intention.

In my opinion, there need be no specific
authorization in section 19.35(1) to copy a
computer tape, because sections 19.36(4) and
19.21, as previously interpreted, authorize
copies of computer tapes.

 
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Section 19.35(1)(e) reads as follows: "Except
as otherwise provided by law, any requester
has a right to receive from an authority
having custody of a record which is not in a
readily comprehensible form a copy of the
information contained in the record assembled
and reduced to written form on paper."

It appears from the drafting files in the
Legislative Reference Bureau that the
drafters had computerized information
in mind when they drafted this paragraph.

The language first appeared in the drafts
that became Assembly Substitute Amendment 1
to 1981 Senate Bill 250, and the initial
drafting instructions (LRB S 0810) included
the following notation for section 19.35(1):
"Computer (right to demand transcription)."
Again, it may be argued that by specifically
authorizing a copy of computerized
information in written form, i.e., a
printout, the Legislature intended to
prohibit copying of the computer
tape that holds the information.

Again, it is my opinion that such an
exception by implication is not necessary
or compelling and should not be found to
overcome the affirmative provisions of
sections 19.35(1)(a), 19.36(4) and 19.21,
as previously interpreted.

If the Legislature had intended to preclude
the copying of computer tapes it would
have said so in section 19.36(4),
where it expressly precludes the
copying of computer programs.

This is especially so since it specifically
included "computer tapes" in the definition
of a record in section 19.32(2).

It is well to note that statutory exceptions
due to silence and implication are based on
the general rule of statutory construction
expressio unius est exclusio alterius which
provides that the express mention of one
matter excludes other similar matters not
mentioned.

Teamsters Union Local 695 v. Waukesha County,
57 Wis.2d 62, 67,
203 N.W.2d 707 (1973).

But our supreme court has cautioned
against its use:

     Although based upon logic and the
     working of the human mind, it is
     not a "Procrustean standard to
     which all statutory language
     must be made to conform."

Factually, there should be some evidence the
legislature intended its application lest it
prevail as a rule of construction despite the
reason for and the spirit of the enactment.

 
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Columbia Hospital Asso. v. Milwaukee,
35 Wis.2d 660, 669,
151 N.W.2d 750 (1967).

In my opinion, section 19.35(1)(e)
is intended to be supplemental.

It makes clear that a requester may have
computerized data reduced to written form
if the data is otherwise not comprehensible
to the requester.

However, if a computer tape is comprehensible
to the requester because the requester has
a machine that can read a computer tape,
it is my opinion the requester may
obtain a copy of the computer tape.

Indeed, in some cases I would expect that the
computerized record would be meaningful and
manageable only through access to the
computer tape, and that a printout
would be worthless.

Therefore, it is my opinion that any
agreement to refuse to provide copies of
computer tapes, other than those containing
computer programs, would be inconsistent with
the state's public records law.

BCL: RWL

 
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