AMERICAN SOCIETY FOR TESTING AND MATERIALS et al v. PUBLIC.RESOURCE.ORG, INC.

Filing 121

MOTION for Summary Judgment by PUBLIC.RESOURCE.ORG, INC. (Attachments: #1 Memorandum in Support, #2 Statement of Facts, #3 Statement of Disputed Facts, #4 Objections, #5 Declaration of Carl Malamud, #6 Declaration of Matthew Becker, #7 Request for Judicial Notice, #8 Index of Consolidated Exhibits, #9 Text of Proposed Order)(Bridges, Andrew)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA

AMERICAN SOCIETY FOR TESTING AND
MATERIALS d/b/a ASTM INTERNATIONAL;

Case No. 1:13-cv-01215-TSC-DAR

NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and

DEFNDANT-COUNTERCLAIMANT
PUBLIC.RESOURCE.ORG, INC.’S
STATEMENT OF DISPUTED FACTS IN
OPPOSITION TO PLAINTIFFS’ MOTION
FOR SUMMARY JUDGMENT AND
PERMANENT INJUNCTION

AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR CONDITIONING
ENGINEERS,
Plaintiffs/Counter-defendants,

Action Filed: August 6, 2013

v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/Counterclaimant.

Pursuant to Local Civil Rule 7(h), Public.Resource.Org (“Public Resource”) submits in
support of its Motion for Summary Judgment and Opposition to Plaintiffs’ Motion for Summary
Judgment and Permanent Injunction a Statement of Disputed Facts to be tried:
PLAINTIFF’S STATEMENT OF
MATERIAL FACTS
1. The term “standards” refers to a variety of
technical works, including works that
contain product specifications, installation
methods, methods for manufacturing or testing
materials, recommended practices to ensure
safety or efficiency, or other guidelines or best
practices. Declaration of James Thomas
(“Thomas Decl.”) ¶ 6.
2. An organization that develops standards is a
“standards development organization” or
“SDO.” Thomas Decl. ¶ 7.

PUBLIC.RESOURCE.ORG’S RESPONSE

Disputed. The plaintiff organizations do not
develop standards – volunteers and members
of the public develop the standards that
Plaintiffs publish. Public Resource’s
Statement of Material Facts (“SMF”) ¶ 132–
38.
Disputed. The plaintiff organizations do not

3. In the United States, standards are typically

1

developed by private organizations that have
develop standards – volunteers and members
technical expertise in the relevant area. Thomas of the public develop the standards that
Decl. ¶ 8.
Plaintiffs publish. SMF ¶ 132–38.
4. Standards are usually highly technical and
specialized, and are written for audiences that
have particular expertise in the relevant fields.
Thomas Decl. ¶ 9. 
5. Standards are used by industry actors as a
form of self-regulation and as a source of best
practices. Thomas Decl. ¶ 10.
6. Private sector standards development in the
United States is generally coordinated and
accredited by the American National Standards
Institute (“ANSI”). ANSI is a nonprofit
membership organization that facilitates the
development of private sector standards and
promotes their integrity by accrediting standards
development organizations whose procedures
comply with ANSI requirements. Declaration of
James T. Pauley (Pauley Decl.) ¶ 14.
7. The ANSI requirements include that
standards development committees must contain
balanced membership, conduct open
proceedings, provide public notice of standards
development activity and opportunity for public
comment, give due consideration and response
to public comments, and provide an opportunity
to appeal committee decisions. Pauley Decl. ¶
15.

8. Standards that are developed in accordance
with ANSI requirements are known as voluntary
consensus standards. Pauley Decl. ¶ 15.
9. American Society for Testing and Materials
(“ASTM”) is a not-for-profit organization
whose mission is to be recognized as the
premier developer and provider of voluntary
consensus standards, related technical
information and services that promote public
health and safety, support the protection and
sustainability of the environment, and improve
the overall quality of life; contribute to the
reliability of materials, products, systems and
services; and facilitate international, regional,
and national commerce. Thomas Decl. ¶¶ 3, 11.
10. ASTM was founded in 1898 when a group
of railroad experts and engineers got together to
2

respond to technical issues that had been
identified in the early days of the railroad
industry. The very first ASTM standard,
standard A1, provided uniform specifications
for carbon steel rails. This made it possible for
manufacturers from different parts of the
country to produce uniform rails that could be
used in a national railroad. Thomas Decl. ¶ 4.
11. ASTM’s activities have expanded over the
past one hundred years. Thomas Decl. ¶ 5.
12. ASTM develops voluntary consensus
standards and is accredited by ANSI. Thomas
Decl. ¶ 12.
13. ASTM standards are used in a wide range of
fields, including consumer products, iron and
steel products, rubber, paints, plastics, textiles,
medical services and devices, electronics,
construction, energy, water, and petroleum
products. Thomas Decl. ¶ 5.
14. ASTM standards are developed based on
public demands, industry needs, and public
safety concerns and advancements in
technology. They address a technical issue or
problem identified by a group of people in the
relevant sector that can be addressed with a
standard-based solution. Thomas Decl. ¶ 13;
Declaration of Steven Cramer (“Cramer Decl.) ¶
19; Declaration of Randy Jennings (“Jennings
Decl.) ¶ 16.
15. ASTM’s standards are used by scientists and
engineers in their laboratories, by architects and
designers in their plans, and by industry in their
business contracts. Thomas Decl. ¶ 14.
16. Membership in ASTM costs $75 per year
for an individual member and $400 per year for
an organizational member. Each member
receives one free volume of the Annual Book of
ASTM Standards as well as other membership
benefits. Thomas Decl. ¶ 19.
17. ASTM has kept its membership fees at $75
for over fifteen years to permit the widest
possible participation in the standard
development process, so as to prevent its
standards from being biased toward the interests
of only stakeholders who can afford to pay
higher membership fees. ASTM’s membership
3

Disputed as to the reason ASTM did not
increase its membership fees. ASTM has not
adduced admissible evidence to support the
alleged reason.

fees have never exceeded $75. Thomas Decl. ¶
20.
18. Since 2005, new members and members
renewing their memberships online to
ASTM agree to the following language: “I
agree, by my participation in ASTM and
enjoyment of the benefits of my annual
membership, to have transferred and assigned
any and all interest I possess or may possess,
including copyright, in the development or
creation of ASTM standards or ASTM IP to
ASTM.” Declaration of Thomas O’Brien, Jr.
(“O’Brien Decl.”) ¶ 41 and Ex. 11; Cramer
Decl. ¶¶ 12-13 and Exs. 1 and 2; Jennings Decl.
¶ 10 and Ex. 1.
19. Some members renew their memberships
using paper forms that contain substantially the
same language. O’Brien Decl. ¶ 42 and Ex. 12.
20. The technical contact is the leader of a task
group, which develops a draft of a new standard
or a revision to an existing standard. Thomas
Decl. ¶¶ 25-26.
21. Michael Collier was the technical contact for
ASTM D87-07. Michael Collier renewed his
ASTM membership every year between 20072014 using ASTM’s online membership
renewal form. O’Brien Decl. ¶¶ 43-44.

22. John Chandler was the technical contact for
ASTM D975-07 and D398-98. John Chandler
renewed his ASTM membership every year
between every year between 2007-2014 using
the online membership renewal form. O’Brien
Decl. ¶¶ 45-46.
23. Jimmy King was the technical contact for
the 1998 reapproval of ASTM D1217. Jimmy
King renewed his ASTM membership in 2007.
O’Brien Decl. ¶¶ 47-48.

Disputed. ASTM has not adduced admissible
evidence to support this fact.

Disputed to the extent that ASTM D87-07 is
not a standard at issue in this litigation and is
not relevant. Michael Collier was not an
individual member of ASTM, he represented
his employer Petroleum Analyzer Co. LP,
which had an organizational membership.
See [ASTM035595 (Excel database)] and
[ASTM003807] (listing contact information
for Michael Collier at Petroleum Analyzer
Co. LP, including a work email address).
Disputed to the extent that ASTM D398-98 is
not a standard at issue in this litigation and is
not relevant.

Disputed. There was no authoring of original
copyrightable content with the reapproval of
ASTM D1217 in 1998. Plaintiffs do not
allege that Jimmy King signed any copyright
transfer when he allegedly renewed his
ASTM membership in 2007, nor do Plaintiffs
allege that he renewed online (unlike
Plaintiffs’ statements as to Michael Collier
4

Disputed. Mr. O’Brien, Mr. Cramer, and Mr.
Jennings have no personal knowledge of
whether every member in fact agrees to the
quoted language, and are not qualified as
experts. The proffered exhibits are from 2013
or later, and bear notices stating “Copyright
2006-2013”, suggesting the language in the
contents of the exhibits are from no earlier
than 2006 and may have been added as
recently as after the start of this litigation in
2013.

and John Chandler above).
24. Randy Jennings participated in the
development of ASTM D975-07. Randy
Jennings renewed his ASTM membership every
year between 2007-2014 using the online
membership renewal form and understands that
he has assigned any and all copyrights in
standards he helped to develop from 1990 to the
present to ASTM. Jennings Decl. ¶¶ 10, 15.
25. Each individual who registers a “work
item,” which starts the process of developing a
new standard or amending an existing standard,
must agree to the following language: “I hereby
grant and assign to ASTM International all and
full intellectual property rights, including
copyright, in the proposed draft standard/text
and any contributions I make to ASTM
International in connection with this proposal”
and “By submitting this form, I acknowledge
that all copyrights to this document, as a draft
and an approved ASTM standard, are the sole
and exclusive property of ASTM, in accordance
with the Intellectual Property policies of the
Society.” O’Brien Decl. ¶ 49 and Ex. 13.

Disputed. ASTM’s online membership
agreement process does not require a member
to click “yes,” or “I agree,” or any other
affirmation to the language discussing
copyright assignment that appears on the web
page. Instead, members click a button labeled
“continue” that appears below the message:
“[c]lick ‘continue’ to place your ASTM
membership renewal in the shopping cart.”
SMF ¶ 159. Further, ASTM’s Rule 30(b)(6)
representative stated that language that ASTM
alleges to provide assignment of rights was
first introduced to the work item form no
earlier than 2003. SMF ¶ 146. ASTM has not
introduced any documentary evidence that
this language appeared on work item forms at
any time when the standards at issue were
being developed.
26. ASTM knows of no individual or other
Disputed. ASTM states that the standards at
person other than ASTM who claims to own any issue were jointly authored with the members
copyright interest in any ASTM standard.
of the technical committees who developed
O’Brien Decl. ¶ 12; Jennings Decl. ¶¶ 7, 11,
them, and therefore anyone who has not
12; Cramer Decl. ¶¶ 6, 14, 15.
assigned away their rights to those works
would jointly hold copyright in them. Pls.
Mem. at 16. ASTM’s Rule 30(b)(6)
representative stated that ASTM did not
introduce assignment language in its forms
until approximately 2003, long after most of
the standards at issue had been developed.
SMF ¶ 146.
27. ASTM has not licensed Defendant’s use of
ASTM’s standards. O’Brien Decl. ¶ 14.
28. ASTM has over 140 technical committees
made up of over 23,000 technical members
representing producers, users, consumers,
government, and academia from more than 150
countries. Thomas Decl. ¶ 21.
5

29. Each technical committee contains a
balanced voting membership, including industry
representatives, government representatives,
consumers, academics, people with particular
expertise in the subject matter, and others. This
broad base of stakeholders leads to the highest
possible quality of standards that are relevant in
the marketplace. Thomas Decl. ¶ 22.

Admitted that each technical committee
includes industry representatives, government
representatives, consumers, academics,
people with particular expertise in the subject
matter, and others. Disputed that this broad
base of stakeholders leads to the highest
possible quality of standards that are relevant
in the marketplace, because this is not a fact,
it is an opinion, and Mr. Thomas lacks
personal knowledge of this and is not
qualified as an expert.
30. Throughout the standards development
Disputed. ASTM proffers no evidence other
process, ASTM and its committees make it clear than a conclusory statement by Mr. Thomas
that all participants’ contributions to any
on this point. The identical declarations of
particular standard will be merged into a unitary Mr. Jennings and Mr. Cramer make clear that
standard. Thomas Decl. ¶ 23; Jennings Decl. ¶¶ the volunteer members who compose the task
18-19; Cramer Decl. ¶¶ 23-24.
group, subcommittee, and committee, not
ASTM itself, “make[] it apparent to all
participants that their contributions will be
merged with the contributions of others and
will result in a single standard.”
31. ASTM’s standard development process
Disputed. The work item does not describe an
begins with an individual registering a “work
idea for a new standard that will be owned by
item,” which describes the idea for a new
ASTM, only a standard that will be published
standard that will be published and owned by
by ASTM.
ASTM, or moving to draft a new standard at a
subcommittee meeting. Thomas Decl. ¶ 24.
32. The chair of the relevant subcommittee then
reviews the work item request and considers,
among other things, whether there is a need for
the proposed standard and whether there will be
sufficient interest from a balanced group
necessary to develop the standard. If the chair
approves the work item or if the subcommittee
approves the motion for a new standard, a task
group will develop a draft of the standard.
Thomas Decl. ¶ 25.
33. The process of drafting the standard is an
iterative process. The task group works
collaboratively, with many people sharing ideas,
suggesting wording and providing comments
that contribute to the draft standard. Cramer
Decl. ¶ 17; Jennings Decl. ¶ 13.
34. The draft standard is then edited by an
Disputed to the extent that the process
ASTM staff member, who also adds certain
described here is simply ASTM’s current
language and components that are required by
process as it exists today, and does not reflect
6

the ASTM form and style guide. Thomas
Decl. ¶ 27; Jennings Decl. ¶ 20; Cramer ¶ 25.

35. ASTM staff members drafted language that
appears in each of the standards at issue in this
litigation, including the four ASTM standards
for which ASTM is moving for summary
judgment. O’Brien Decl. ¶¶ 15-39 and Exs. 5-9.

36. The draft standard is then voted on by first
the entire subcommittee, followed by the entire
main committee and the complete Society, and
reviewed by the Committee on Standards to
ensure that all procedures were followed.
Thomas Decl. ¶ 28.
37. Technical committees make decisions about
the appropriate content of the standards,
including the relevant measurements, values,
descriptions, and other specifications, as well as
the language with which to express these
standards. Thomas Decl. ¶ 29; Jennings Decl. ¶
17; Cramer Decl. ¶ 21.
38. There are other standard developing
organizations that create standards that cover the
same or similar subject matter as the standards
developed by ASTM, including, for example,
the International Organization for Standards,
SAE International, the American Association of
State Highway and Transportation Officials, and
the American Wood Council. The content and
language of these entities’ standards differs
from the content of the corresponding ASTM
standards. Thomas Decl. ¶ 30; Cramer Decl. ¶
22.
39. At each level of balloting, voters can suggest
edits or provide comments. Each negative vote
must be addressed to determine if it is
7

ASTM’s process over the many decades in
which the standards at issue were developed.
ASTM staff did not author the standards at
issue. SMF ¶ 137.
Disputed. ASTM has not produced any
evidence establishing that its staff contributed
to the majority of ASTM standards at issue.
ASTM has only described the processes that it
currently uses, as opposed to the processes
used as early as 1958 (the first publication
date of the earliest standard at issue). ASTM
cites to its January 2015 Form and Style
Guide, not the one in use at the time that any
standards at issue were developed. Moreover,
ASTM has only made claims concerning staff
contributions as to the four standards that it
moves on in its motion, not as to “each
standard at issue in this litigation.”
Disputed to the extent that is suggests that any
ASTM staff vote on the standards. Draft
standards are only voted on by volunteers
(ASTM members). SMF ¶ 135, 137.

persuasive. At least 66.7% of the voting
subcommittee members and 90% of the voting
main committee members must approve all
standard actions, with not less than 60% of the
voting members returning ballots. Thomas Decl.
¶ 31.
40. The published versions of ASTM”s
standards include copyright notices alerting the
public (including the individuals who
participated in the creation of the standards) to
the fact that the copyrights are owned by
ASTM. O’Brien Decl. ¶ 11.

41. ASTM has developed over 12,000 standards
through this exhaustive process. Thomas Decl. ¶
32.

8

Disputed. The majority of standards that
ASTM published do not bear copyright
notices on each standard. See, e.g., ASTM
A36-1977ae; ASTM D396-1998 (Exhibit 8 to
the O’Brien Declaration, ECF No. 118-7);
ASTM D4329-1999. The exhibits attached to
the O’Brien declaration appear to be more
recent printings of previous ASTM standards
that have subsequently had an ASTM
copyright notice affixed, when no such
copyright notice appeared on earlier
publications of the standard. Compare
O’Brien Exhibit 9 (ASTM D12171993(1998)) with the version of ASTM
D1217-1993(1998) that Public Resource
purchased, scanned, and produced in
discovery. M. Becker Decl. ¶ 149 Ex. 151.
Only in recent years has ASTM affixed a
copyright notice to each ASTM standard.
This copyright notice does not alert the public
(or individuals who participated in the
creation of the standards) what content ASTM
claims ownership over, such as the entire
standard, versus component parts of the
standard, or simply the formatting used for
the final print version. Moreover, this is not a
fact, it is an opinion. Mr. O’Brien lacks
personal knowledge of what information the
public derives from the existence of copyright
notices on ASTM standards, and he is not
qualified as an expert.
Disputed. ASTM does not develop standards;
volunteers develop standards that ASTM
publishes. SMF ¶ 132–38. Furthermore, Mr.
Thomas only states “ASTM has developed
over 12,000 standards,” not that the process
described in the preceding paragraphs has
been used to develop each of these 12,000
standards. ASTM admitted that the standard
development process has changed in recent

years. Smith Tx. 22:06-26:12.
42. All ASTM standards are required to be
reviewed on a 5 year schedule and either
reapproved, revised or withdrawn in revision
cycles that typically take 8-12 months to
complete. Thomas Decl. ¶ 33.
43. ASTM incurs substantial costs for its
standards development infrastructure and
delivery platforms, including the resources it
provides to encourage collaboration among
members; expenses relating to technical
committee meetings and balloting as the
standards make their way through the
development process; and editing, producing,
distributing and promoting the completed
standards. Thomas Decl. ¶ 34.
44. In 2014, ASTM spent more than $9 million
to cover the cost of technical committee
operations and $19 million for publication of
copyrighted materials. Thomas Decl. ¶
35.

Disputed. ASTM has not adduced admissible
evidence to support this fact.

Disputed. Plaintiffs provide no source other
than Mr. Thomas’ conjecture to support these
figures. Further, the figures are irrelevant to
the extent that they concern costs for activities
that did not pertain to the standards at issue in
this litigation.
Disputed. ASTM does not develop standards;
volunteers develop standards that ASTM
publishes. SMF ¶ 132–38. ASTM claims that
the standards it publishes are jointly authored
with the thousands of volunteers who develop
the standards (Pls. Mem. at 16), and if that is
taken as true, then ASTM must not have “the
understanding that the standards will be
protected by copyrights that provide ASTM
with the exclusive right to sell, reproduce,
display and create derivative works based on
the standards,” because any of the alleged coauthors of the standards would also have the
same rights, which are therefore not
exclusive. Furthermore, ASTM was aware of
the en banc decision in Veeck v. Southern
Building Code Congress and has been on
notice that any standards incorporated into
law are in the public domain.
Disputed. ASTM does not develop standards;
volunteers develop standards that ASTM
publishes. SMF ¶ 132–38. ASTM’s alleged
reliance on revenue from the sales of all
allegedly copyrighted material generally is

45. ASTM incurs the costs of developing its
standards with the understanding that the
standards will be protected by copyrights that
provide ASTM with the exclusive right to sell,
reproduce, display and create derivative works
based on the standards. Thomas Decl. ¶ 36.

46. ASTM depends on the revenue it generates
from sales of its copyrighted materials to
conduct its operations and requires that revenue
to be in a position to continue to develop its
standards in the manner in which it currently
9

operates. Thomas Decl. ¶ 37.
47. ASTM generates over two-thirds of its
revenue from the sale of copyrighted materials.
Thomas Decl. ¶ 38.

48. ASTM has devoted substantial efforts to
develop and promote the sale of products and
services that are related or complementary to
ASTM’s standards. ASTM does not generate
substantial income from these goods and
services, despite decades of efforts. Thomas
Decl. ¶
39.
49. ASTM generated a net loss of $3 million in
2014 for non-standards related products and
services. Thomas Decl. ¶ 40.
50. ASTM does not consider the likelihood and
extent to which a standard will generate
revenues when deciding whether to develop or
maintain a standard. Thomas Decl. ¶ 42.
51. Sales of a limited number of standards drive
the bulk of ASTM’s revenues. Because of their
relevance to smaller market audiences, many
other standards generate very limited revenues,
which do not cover the costs of the development
process. The sales of certain standards
effectively subsidize the creation and
maintenance of the remaining standards.
Thomas Decl. ¶ 43.
52. ASTM’s copyrighted materials give ASTM
a competitive advantage in selling ancillary or
complementary products and services. ASTM
can include copies of its standards as part of a
package it provides to customers in training or
certification programs. Thomas Decl. ¶ 41.
53. On occasion, government agencies
incorporate ASTM’s standards by reference into
regulations. Approximately 10 percent of
ASTM’s standards are incorporated by
reference into federal regulations. Thomas Decl.
10

not relevant to the standards at issue.
Disputed. ASTM’s sales of products other
than standards are not relevant, because the
vast majority of ASTM standards are not
incorporated by reference into the law, nor at
issue in this litigation. The question of
whether much of ASTM’s publications are
properly copyrighted is in dispute. Plaintiffs
provide no source other than Mr. Thomas’
conjecture to support these figures.
Disputed. This is not a fact, it is an opinion.
Plaintiffs provide no source other than Mr.
Thomas’ conjecture to support these figures.
Mr. Thomas is not qualified as an expert.

Disputed. Plaintiffs provide no source other
than Mr. Thomas’ conjecture to support these
figures.
Disputed to the extent that ASTM does not
develop standards; volunteers develop
standards that ASTM publishes, and the
decision as to whether to develop a standard
is made by the volunteers. SMF ¶ 132–38.
Disputed. This is not a fact, it is an opinion.
Plaintiffs provide no source other than Mr.
Thomas’ conjecture to support these figures.
Mr. Thomas is not qualified as an expert.

Disputed as to portion of incorporated
standards. ASTM has not adduced admissible
evidence to support this fact. Its witnesses
have admitted they do not know the exact
number and lack personal knowledge or

¶ 15.

reasonable certainty of this estimate.

54. ASTM standards are not developed for the
purpose of being incorporated into regulations.
Thomas Decl. ¶ 16; Cramer Decl. ¶ 20.

Disputed. This is an opinion, not a fact, and
Mr. Thomas and Mr. Cramer do not have
personal knowledge of all the purposes for
which the volunteers develop ASTM
standards, nor are they qualified as experts to
opine on this topic. Government employees
and agencies participate in the development
of most ASTM standards and may do so with
the purpose of developing standards that
could eventually be incorporated into law or
regulations. SMF ¶ 132.

55. When it develops a new standard, ASTM
does not know whether the standard will be
incorporated by reference into government
regulations. Thomas Decl. ¶ 17.
56. ASTM does not lobby government agencies
to reference its standards. Thomas Decl. ¶ 18.

57. ASTM publishes its standards in hard copy
and digital formats, including PDFs, HTML and
XML formats, which can be purchased from
ASTM or its authorized resellers. Thomas Decl.
¶ 44.
58. When purchased individually, the price per
ASTM standard is $38-$89. Thomas Decl. ¶ 45.
The price of each new individual standard is
calculated based on the number of pages in the
standard. Thomas Decl. ¶ 46.
59. ASTM’s standards are reasonably accessible
and available to the public. Rubel Decl. ¶ 4, Ex.
1 (Expert Report of John Jarosz (“Jarosz Rep.”)
¶ 86).

11

Disputed. ASTM reaches out to
congressional staffers and government
agencies to suggest use of particular editions
of standards and particular language in
legislation. SMF ¶ 36.

Disputed. This is not a fact, it is an opinion.
ASTM standards are not reasonably
accessible and available to the public. ASTM
only places a minority of ASTM standards on
its online “Reading Room”: those standards
that it has identified as being incorporated by
reference into federal regulations (therefore
excluding ASTM standards that have been
incorporated into state or municipal laws, as
well as ASTM standards that are not
incorporated into law). SMF ¶ 51. Public
Resource does not take a position on whether
ASTM standards that are not incorporated
into federal, state, or municipal law should be

freely available to the public, but must clarify
because Plaintiffs’ statement of material facts
does not differentiate between ASTM
standards generally and ASTM standards at
issue in this litigation. ASTM’s Reading
Room does not make standards “reasonably
accessible and available to the public,”
because it requires users to agree to onerous
contractual terms, it cannot be used by
individuals who are visually disabled, and it
uses a deliberately limited interface that
makes it difficult for users to read the
standards and impossible to print, save, or
search the standards. SMF ¶ 52. The ability to
read standards that have been incorporated by
reference into federal regulations by traveling
to the Office of the Federal Register in
Washington D.C. after making a written
request for an appointment likewise does not
constitute “reasonably accessible and
available to the public.” SMF ¶ 19.
60. ASTM does not seek to obtain higher prices
for standards that have been incorporated by
reference. Thomas Decl. ¶ 47; Rubel Decl. ¶ 4,
Ex. 1 (Jarosz Rep. ¶¶ 87-88).
61. ASTM provides copies of its standards at a
reduced cost or at no cost when it is informed
that the regular cost is a burden to the requester.
Thomas Decl. ¶ 48.
62. For example, ASTM has a “10 Standards for
Students” program through which professors
can select any 10 ASTM standards and students
can purchase a packet containing all 10
standards for just $10 per student. Thomas Decl.
¶ 49.
63. ASTM provides the public with free, readonly access to all ASTM standards that ASTM
is aware have been incorporated by reference
into federal regulations. Thomas Decl. ¶ 50;
O’Brien Decl. ¶ 60.
64. ASTM provides the public with free, readonly access to all ASTM standards that are the
subject of the Motion for Summary Judgment.
O’Brien Decl. ¶ 61 and Ex. 17.
65. ASTM identifies standards that have been
12

Disputed. ASTM has not adduced admissible
evidence to support this fact. This appears to
be an improper inference based on ¶ 62 of
Plaintiffs’ Statement of Material Fact.

Disputed. Not all members of the public can
read the standards on ASTM’s “free readonly” website, such as people with print
disabilities. SMF ¶ 53.
Disputed. Not all members of the public can
read the standards on ASTM’s “free readonly” website, such as people with print
disabilities. SMF ¶ 53.

incorporated by reference into federal
regulations from the database created by the
National Institute of Standards and Technology.
Thomas Decl. ¶ 51; O’Brien Decl. ¶ 62.
66. ASTM publicizes the free read-only access
provided on its website. Thomas Decl. ¶ 52;
O’Brien Decl. ¶ 63.
67. During the notice and comment period
regarding proposed federal regulations, upon
request by the relevant federal agency, ASTM
provides free, read-only access to standards that
are incorporated by reference in proposed
regulations. Thomas Decl. ¶ 53; O’Brien Decl. ¶
64.
68. ASTM routinely grants permission to
researchers, academics and others to reproduce
its standards at no cost for non-commercial
purposes. O’Brien Decl. ¶ 13.
69. ASTM has not received any complaints
about lack of accessibility of its standards other
than from Defendant. Thomas Decl. ¶ 54;
O’Brien Decl. ¶ 65.
70. ASTM has copyright registrations that cover
each of the standards at issue in this litigation.
O’Brien Decl. ¶ 8.
71. ASTM has a copyright registration for
ASTM D86-07 (Standard Test Methods for
Distillation of Petroleum Products at
Atmospheric Pressure) that identifies ASTM as
the owner. O’Brien Decl. ¶ 5 and Ex. 1.
72. ASTM has a copyright registration for
ASTM D975-07 (Standard Specification for
Diesel Fuel Oils) that identifies ASTM as the
owner. O’Brien Decl. ¶ 6 and Ex. 2.
73. ASTM publishes an Annual Book of ASTM
Standards every year that is composed of a
number of volumes and includes the current
version of each of its standards.
O’Brien Decl. ¶ 7.
74. Between 1980 and 2011, ASTM obtained
copyright registrations for each volume of its
Book of Standards. O’Brien Decl. ¶ 8.

75. ASTM D396-98 and D1217-93(98) were
published in Volume 5.01 of the 1999
13

Disputed. ASTM has not adduced admissible
evidence to support this fact. See Public
Disputed. ASTM has not adduced admissible
evidence to support this fact.

Disputed. ASTM has not adduced admissible
evidence to support this fact. In fact, the
contrary appears to be the case. (SMF ¶ 46–
50.)
Disputed. ASTM has not adduced admissible
evidence to support this fact.

Disputed. ASTM does not have a copyright
registration for ASTM D323-1958(1968).
(SMF ¶ 131.)

Disputed. ASTM has not adduced admissible
evidence to support this fact. The evidence in
the O’Brien declaration is not based on
personal knowledge and is inadmissible
secondary evidence of a writing.

Annual Book of ASTM Standards. O’Brien
Decl. ¶ 9 and Ex. 3.
76. ASTM has a copyright registration for
Volume 5.01 of the 1999 Annual Book of
ASTM Standards that identifies ASTM as the
owner. The date of first publication for this
work was February 22, 1999 and the effective
date of registration is March 10, 1999. O’Brien
Decl. ¶ 10 and Ex. 4.

Disputed. The fact that ASTM D396-1998
and D1217-1993(1998) were published in
Volume 5.01 of the 1999 Annual Book of
ASTM Standards does not mean that ASTM
has a copyright over those standards. Instead
it means that ASTM has, at best, a thin
copyright over the compilation of all
standards as arranged in the 1999 Annual
Book of ASTM Standards. ASTM’s
copyright registration for Volume 5.01 of the
1999 Annual Book of ASTM Standards is
materially false because it does dos not list
the true authors of the standards (thousands of
volunteers that ASTM alleges to be joint
authors (Pls. Mem. at 16)), it lists the
standards as a work made for hire (when no
ASTM employees authored the standard nor
does ASTM have any work made for hire
agreements with the authors of the standards),
and ASTM claims authorship over the “entire
text,” when in fact ASTM now admits that
thousands of volunteers authored the
standard. SMF ¶ 130, 132–38, 146–161. This
copyright registration is a compilation or
derivative work registration for an entire
volume of standards, not an individual
standard, and this registration therefore does
not cover ASTM D396-1998 and D12171993(1998) but instead covers only Volume
5.01 of the 1999 Annual Book of ASTM
Standards as a thin compilation copyright.

77. ASTM owns a U.S. federal trademark
registration for the trademark ASTM (U.S.
Trademark Reg. No. 2,679,320) in connection
with books featuring information on
standardization of specifications and the
methods of testing for various materials and
products; promoting public awareness of the
need for standards; educational services; and
providing a website on global computer
networks featuring information in the field of
specifications and methods of testing for various
materials and products. ASTM has used this
trademark since 1962. ASTM filed a Section 15
14

declaration in support of the incontestability of
this registration. O’Brien Decl. ¶ 55 and Ex. 14.
78. ASTM owns U.S. federal trademark
registrations for the trademarks ASTM
INTERNATIONAL (U.S. Trademark Reg. No.
2,685,857) and the following logo:

(U.S. Reg. No. 2,651,796) in connection with
similar goods and services. ASTM has used
these trademarks since 2001. ASTM filed
Section 15 declarations in support of the
incontestability of these registrations. O’Brien
Decl. ¶ 56 and Ex. 15.
79. ASTM also owns a registration for the
following logo:

(U.S. Reg. Nos. 4,079,772) in connection with
publications relating to testing methods,
specifications and standards in engineering,
industrial and allied fields. ASTM has used this
trademark since 1965. The application for this
registration was filed on May 10, 2011. The
Examining Attorney who reviewed the
application approved it for registration without
requesting proof of secondary meaning. O’Brien
Decl. ¶ 57 and Ex. 16.
15

80. ASTM expends considerable resources
marketing and promoting its goods and services
in connection with these trademarks every year.
For example, ASTM spent over $3 million
marketing and promoting sales of its standards
that feature its trademarks in catalogs,
brochures, and in mail and email
correspondence between 2010-2012, which
were the three years immediately prior to
Defendant’s infringement. O’Brien Decl. ¶ 58.
81. ASTM’s longstanding use of its trademarks
in connection with its high quality standards has
resulted in the public’s association of ASTM’s
marks with a certain quality. O’Brien Decl. ¶
59.
82. The ASTM word mark and logo are well
known. Rubel Decl. ¶6, Ex. 3 (Deposition of
Carl Malamud (“C. Malamud Dep.”) at 14:1223).
83. ASTM engages in quality control
procedures to ensure the quality and integrity of
the content of the standards. O’Brien Decl. ¶ 50.

84. ASTM staff does the final edit of each of the
standards prior to publication. As part of this
process, ASTM staff submits the final version to
the technical committee for reviews to make
sure it matches the content approved through the
balloting process. O’Brien Decl. ¶¶ 50-52;
Cramer Decl. ¶ 26.
85. ASTM staff proofreads the XML versions of
standards before posting them on the internet to
ensure that the conversion of the text and
diagrams into XML format has not altered the
content of the standard. O’Brien Decl. ¶ 53.
86. The National Fire Protection Association,
Inc. (“NFPA”) is a nonprofit organization, based
in Quincy, Massachusetts, devoted to
eliminating death, injury, property and
economic loss due to fire, electrical and related
hazards. NFPA was founded in 1896, and has
continuously developed standards since that
time. Pauley Decl. ¶ 4.
87. NFPA delivers information and knowledge
through more than 300 consensus codes and
16

Disputed. ASTM has not adduced admissible
evidence to support this fact. The testimony in
support of this fact is not based on personal
knowledge.

Disputed. ASTM has not adduced admissible
evidence to support this fact. The testimony in
support of this fact is not based on personal
knowledge.

Disputed. ASTM has not adduced admissible
evidence to support this fact. The testimony in
support of this fact is not based on personal
knowledge and the quality control of the
development process is not relevant.

Disputed. ASTM has not adduced admissible
evidence to support this fact. The testimony in
support of this fact is not based on personal
knowledge.

This fact is not material to the motion for
summary judgment.

standards, research, training, education,
outreach and advocacy. NFPA’s membership
totals more than 65,000 individuals throughout
the world. Pauley Decl. ¶ 4.
88. NFPA is periodically audited by ANSI and
is accredited and classified as an Audited
Designator by ANSI. Pauley Decl. ¶ 16.
89. The primary users of NFPA standards are
professionals and tradespeople who use these
standards in the course of their business, such as
electricians, architects, and electrical equipment
manufacturers. The professionals who use
NFPA standards are familiar with them and
have reasonable access to them. Pauley Decl. ¶
13; Declaration of James Golinveaux
(“Golinveaux Decl.”) ¶ 10.

This fact is not material to the motion for
summary judgment.

Disputed to the extent that NFPA’s assertion
that “[t]he professionals who use NFPA
standards . . . have reasonable access to them”
is not a fact, it is an opinion. NFPA standards
are not reasonably accessible. NFPA’s
Reading Room does not provide “reasonable
access,” because it requires users to agree to
onerous contractual terms, it cannot be used
by individuals who are visually disabled, and
it uses a deliberately limited interface that
makes it difficult for users to read the
standards and impossible to print, save, or
search the standards. SMF ¶ 52. The ability
to read standards that have been incorporated
by reference into federal regulations by
traveling to the Office of the Federal Register
in Washington D.C. after making a written
request for an appointment likewise does not
constitute “reasonable access.” SMF ¶ 19.
90. Many NFPA standards are incorporated by
Disputed to the extent that NFPA does not
reference in federal and state laws and
develop standards; volunteers develop
regulations. NFPA is aware that its standards are standards that NFPA publishes. SMF ¶ 132–
frequently incorporated by reference, but NFPA 38. Government employees and agencies
does not develop any standards solely for that
participate in the development of most if not
purpose. Pauley Decl. ¶ 10.
all NFPA standards and may do so with the
purpose of developing standards that could
eventually be incorporated into law or
regulations. SMF ¶ 132.
91. All NFPA standards have a range of
This fact is not material to the motion for
applications and uses even if they are not
summary judgment.
incorporated by reference in government laws or
regulations. Pauley Decl. ¶ 12.
92. NFPA develops new standards based on a
Disputed to the extent that NFPA does not
determination that developing a standard in a
develop standards; volunteers develop
particular area would serve NFPA’s mission of
standards that NFPA publishes, and
reducing the risk of loss from fire and related
volunteers determine what standards to
hazards. NFPA does not consider whether the
develop, not NFPA. SMF ¶ 132–38.
standard will generate revenue when deciding
whether to develop the standard. Pauley Decl. ¶
17

11.
93. NFPA develops the National Electrical Code
(“NEC”), and has done so since 1897. NFPA
updates and revises the NEC every three years.
The current edition of the NEC is the 2014
edition, which is over 900 pages long. Pauley
Decl. ¶ 7. Additional NFPA standards include
NFPA 101, the Life Safety Code, and NFPA 13,
the Standard for the Installation of Sprinkler
Systems. Pauley Decl. ¶ 9; Golinveaux Decl. ¶
4.
94. The NEC addresses the installation of
electrical conductors, equipment, and raceways;
signaling and communications conductors,
equipment, and raceways; and optical fiber
cables and raceways in commercial, residential,
and industrial occupancies. The NEC is the
world’s leading standard for electrical safety
and provides the benchmark for safe electrical
design, installation and inspection to protect
people and property from electrical hazards.
Pauley Decl. ¶ 8.
95. State governments benefit greatly from the
standards developed by NFPA through its
voluntary consensus process. The expertise and
resources invested by NFPA in standards
development enable state governments to
incorporate standards that serve the public
interest. State governments rely on NFPA and
other private sector standards developers to
create the highest-quality standards that reflect a
wide diversity of viewpoints. Declaration of
Kevin Reinertson (“Reinertson Decl.”) ¶¶ 1112.
96. State government agencies would not have
the funding or resources to create standards if
NFPA were unable to develop them. Reinertson
Decl. ¶¶ 13-14.

97. Fire safety professionals and the fire
protection industry benefit greatly from the
standards developed by NFPA through its
voluntary consensus process, which develops
standards that reflect the broadest possible
consensus about fire safety techniques and that
18

Disputed to the extent that NFPA does not
develop the National Electrical Code
(“NEC”), nor does it update or revise the
NEC; volunteers develop, update, and revise
the NEC that NFPA publishes. SMF ¶ 132–
38.

This fact is not material to the motion for
summary judgment.

Disputed. This is not a fact, it is an opinion.
NFPA does not develop standards; volunteers
develop standards that NFPA publishes. SMF
¶ 132–38.

Disputed. This is not a fact, it is an opinion.
Plaintiffs have not provided any evidence to
support this, other than the opinion of Mr.
Reinertson, who has no personal knowledge
of all state government agencies’ finances or
abilities, and is not qualified as an expert.
Disputed to the extent that NFPA does not
develop standards; volunteers develop
standards that NFPA publishes. SMF ¶ 132–
38. This fact is also not based on admissible
evidence.

can be used widely throughout the country.
Golinveaux Decl. ¶¶ 5-6.
98. NFPA’s standards development process
results in the creation of uniform industry-wide
standards. Professionals across the industry rely
on the existence of these standards, and this
industry-wide uniformity could not be achieved
without NFPA or a similar organization with the
resources to devote to standards development.
Golinveaux Decl. ¶ 7.
99. NFPA sells its standards in a variety of
formats, including as PDFs, eBooks, and in
softcover, looseleaf, or spiralbound versions.
The price for NFPA standards ranges from $39
to $105. Pauley Decl. ¶ 44.
100. NFPA provides the full text of NFPA
standards for free viewing by any member of the
public on its website. All NFPA standards can
currently be read in full and without cost on
NFPA’s website. Pauley Decl. ¶ 45.
101. NFPA also encourages jurisdictions that
incorporate its standards by reference to link
their websites to its free, online version of the
standards, and provides a widget that easily
enables such access. Pauley Decl. ¶ 45.
102. The published versions of NFPA’s
standards include copyright notices alerting the
public, including the people who participated in
the standards development process, that the
copyrights are owned by NFPA. Pauley Decl. ¶
25.

103. NFPA routinely grants permission to
researchers, educators, and others to use
portions of NFPA standards for educational and
other non-commercial purposes at no cost.
Declaration of Dennis Berry (“Berry Decl.”) ¶
19

Disputed to the extent that Mr. Golinveaux is
not qualified as an expert and lacks personal
knowledge of whether industry-wide
uniformity in fire prevention standards could
be achieved without NFPA or a similar
organization.

Disputed. Not all members of the public can
read the standards on NFPA’s “free viewing”
website, such as people with print disabilities.
SMF ¶ 53.

Disputed to the extent that Plaintiffs assert
that these “copyright notices alert[] the public,
including the people who participated in the
standards development process, that the
copyrights are owned by NFPA.” These
copyright notice does not alert the public (or
individuals who participated in the creation of
the standards) what content NFPA claims
ownership over, such as the entire standard,
versus component parts of the standard, or
simply the formatting used for the final print
version. This is not a fact, it is an opinion.
Mr. Pauley lacks personal knowledge of what
information the public derives from the
existence of copyright notices on NFPA
standards, and he is not qualified as an expert.
Disputed. ASTM has not adduced admissible
evidence to support this fact. The testimony in
support of this fact is not based on personal
knowledge.

10.
104. NFPA expends substantial resources on
standards development, including salary and
benefits for its own administrative and expert
staff, office space, meeting facilities for the
more than 250 Technical Committees who
participate in the NFPA standards development
processes, outreach and education efforts, and
information technology. Pauley Decl. ¶ 18.
105. In 2014, NFPA spent more than $13.5
million on standards development and more
than $27 million for publication of copyrighted
materials. Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep. ¶¶
71, 91).

Disputed. ASTM has not adduced admissible
evidence to support this fact. The testimony in
support of this fact is not based on personal
knowledge.

Disputed to the extent that these figures are
irrelevant because they concern costs for
activities that do not pertain to the standards
at issue in this litigation (referring to
“standards development” and “publication of
copyrighted material” rather than the
standards at issue, standards incorporated into
the law, or even standards for that matter).
The data on which Mr. Jarosz relied were not
sufficiently detailed to allow him to determine
how much was spent with regard to any
standards at issue, or even standards
incorporated into the law. See Motion to
Strike Jarosz Report.
106. NFPA funds its standards development and Disputed to the extent that these figures are
publications activities primarily with the
irrelevant because they concern costs and
revenue obtained from sales of its copyrighted
revenue sources that do not pertain to the
standards. In 2014 NFPA’s publications sales
standards at issue in this litigation (referring
accounted for over 70% of NFPA’s total
to “standards development” and “publication
operating revenues. The overwhelming majority sales” rather than sales of the standards at
of that publications revenue comes from the sale issue or even standards incorporated into the
of codes and standards. Pauley Decl. ¶ 46.
law).
107. To preserve the revenue from sales of
Disputed. This is not a fact, it is an opinion.
publications, NFPA must be able to assert
Mr. Pauley is not qualified as an expert and
copyright in its standards to prevent
has no personal knowledge of whether
unauthorized copying of NFPA standards,
“unauthorized copying” threatens to
which threaten to substantially undermine
“substantially undermine” NFPA’s sales.
NFPA’s sales. Pauley Decl. ¶ 49.
These claims are irrelevant to the extent they
concern standards or NFPA publications
generally, and not the standards at issue.
108. NFPA depends on the revenue it generates Disputed. NFPA does not develop standards;
from sales of its copyrighted materials to
volunteers develop standards that NFPA
conduct its operations and needs that revenue to publishes. SMF ¶ 132–38. These claims are
continue to develop its standards in the manner
irrelevant to the extent they concern NFPA
in which it currently operates. Pauley Decl. ¶¶
“copyrighted materials” generally, and not the
47-51; Rubel Decl. ¶ 49, Ex. 45 (Mullen Dep. at standards at issue. This is an opinion, not a
224:14-229:5).
fact. Mr. Pauley and Mr. Mullen are not
20

109. NFPA’s standards development process
incorporates significant creative input from
three primary groups of participants. These
include (i) members of the public who provide
input and comment; (ii) the members of the
Technical Committees who consider and vote
on proposed changes to the standards; and (iii)
the NFPA staff who assist and advise the
Technical Committees and who draft and
finalize the wording of the actual document that
becomes the standard. Pauley Decl. ¶ 24.
110. Members of the public participate in
NFPA’s standards development process by
submitting public input, including proposed
changes to NFPA standards and comments on
proposed changes. Pauley Decl. ¶ 27.
111. Members of the public who make
contributions to the standards development
process understand and intend that NFPA will
own the copyright in their contributions and in
the standards. Pauley Decl. ¶ 28.

112. NFPA has a policy that all persons who
submit public input must assign all rights,
including copyright, in their contributions to
NFPA. NFPA does not accept public input
without a signed copyright assignment, which is
printed on the standard forms by which
members of the public submit input. Pauley
Decl. ¶ 27; Rubel Decl. ¶ 9, Ex. 6 (Dubay Dep.
at 212:17-21).

21

qualified as experts to opine on how changes
in certain sources of revenue might affect
NFPA’s business model.
Disputed to the extent Plaintiffs assert that
NFPA staff provided “significant creative
input” for the standards at issue. NFPA staff
did not provide any copyrightable
contributions to the standards at issue, they
simply assisted the technical committees
(volunteers) who drafted and finalized the
standards. SMF ¶ 132–38.

This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

Disputed. This is not a fact, it is an opinion.
Mr. Pauley lacks personal knowledge of what
all members of the public “understand and
intend” regarding ownership of the copyrights
in their contributions, and he is not qualified
as an expert. To the extent that Plaintiffs’
statement is in the present tense it is unclear
what members of the public and what
standards Plaintiffs reference, and therefore
may be irrelevant.
Disputed to the extent that Plaintiffs refer to
any time period during which the standards at
issue in this litigation were developed, and to
the extent that Plaintiffs’ statement gives the
erroneous impression that any copyright
assignment policy NFPA may have now was
in effect prior to 2015, or was actually
enforced by NFPA. NFPA has admitted that
it did not exercise control over what
documents were submitted in the place of
copyright assignment forms, and that it would
accept retyped forms or incorrect forms. SMF
¶ 164–65. Until at least 2008, NFPA used
copyright release forms that requested a nonexclusive license to volunteers’ and members
of the public’s contributions, not an
assignment of copyright. SMF ¶ 163.

113. NFPA staff check every public input that
NFPA receives to ensure that the appropriate
copyright assignment has been executed. Rubel
Decl. ¶ 9, Ex. 6 (Dubay Dep. At 144:8-145:15.)

114. The NFPA Technical Committees are the
principal consensus bodies responsible for the
development and revision of NFPA standards.
The Technical Committees are composed of
volunteers from business, industry, public
interest groups, government and academia, and
others. The Technical Committees meet to
consider and vote on proposals submitted by the
public, and to reach consensus on appropriate
revisions to the standards. Pauley Decl. ¶¶ 3233; Rubel Decl. ¶ 9, Ex. 6 (Dubay Dep. at 52:115).
115. NFPA has a policy that all members of the
Technical Committees submit Committee
applications that include an agreement that all
material authored by the Committee will be
works made for hire for NFPA, and additionally
an assignment of all and full rights in copyright
in their work as a member of the Technical
Committee to NFPA. Pauley Decl. ¶¶ 34- 35;
Golinveaux Decl. ¶ 11; Rubel Decl. ¶ 9, Ex. 6
(Dubay Dep. at 105:12-21).

22

Disputed to the extent that Plaintiffs refer to
any time period during which the standards at
issue in this litigation were developed, and to
the extent that Plaintiffs’ statement gives the
erroneous impression that any copyright
assignment policy NFPA may have now was
in effect prior to 2015, or was actually
enforced by NFPA. NFPA has admitted that
it did not exercise control over what
documents were submitted in the place of
copyright assignment forms, and that it would
accept retyped forms or incorrect forms. SMF
¶ 164–65. Until at least 2008, NFPA used
copyright release forms that requested a nonexclusive license to volunteers’ and members
of the public’s contributions, not an
assignment of copyright. SMF ¶ 163.
This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

Disputed to the extent that Plaintiffs refer to
any time period during which the standards at
issue in this litigation were developed, and to
the extent that Plaintiffs’ statement gives the
erroneous impression that any copyright
assignment policy NFPA may have now was
in effect prior to 2015, or was actually
enforced by NFPA. NFPA has admitted that
it did not exercise control over what
documents were submitted in the place of
copyright assignment forms, and that it would
accept retyped forms or incorrect forms. SMF
¶ 164–65. Until at least 2008, NFPA used
copyright release forms that requested a nonexclusive license to volunteers’ and members
of the public’s contributions, not an
assignment of copyright. SMF ¶ 163.

116. Members of Technical Committees who
participate in the Standards Development
Process understand and intend that their
contributions are owned by NFPA and that
NFPA owns the copyright in the final standards.
Pauley Decl. ¶¶ 36-37; Golinveaux Decl. ¶¶ 1213.

117. NFPA employees also participate in
NFPA’s standards development process in the
course of their employment. Each Technical
Committee has a NFPA staff liaison who
facilitates and runs the Committee meetings,
provides advice to the Committee, and records
the decisions made by the Committee. NFPA
employees also work with the Committee and
with each other to craft appropriate wording that
accurately captures the intent of Committee
decisions, and revise and finalize the wording of
the actual document that becomes the standard.
Pauley Decl. ¶¶ 38-40; Rubel Decl. ¶ 9, Ex. 6
(Dubay Dep. at 54:19-56:12, 66:20-67:12, 69:218).
118. NFPA employees engage in multiple layers
of quality control procedures to ensure the
quality and integrity of the content of the
standards. NFPA employees edit and revise the
language of the NEC to ensure that it conforms
to the requirements in the NFPA style manual,
to ensure consistency across the different
sections of the NEC, and to finalize the
language of the standard for balloting. Pauley
Decl. ¶ 41; Rubel Decl. ¶ 9, Ex. 6 (Dubay Dep.
At 31:18-33:24, 59:19-62:5).
119. Each NFPA standard goes through two full
rounds of public input, comments, review and
drafts before being finalized. The process results
in the issuance of sophisticated and complex
works that support NFPA’s mission of
promoting public safety. For example,
23

Language mentioning “work made for hire”
was added to committee applications in 2007
at the earliest. SMF ¶ 139.
Disputed. This is not a fact, it is an opinion.
Mr. Pauley and Mr. Golinveaux lack personal
knowledge of what all members of technical
committees “understand and intend”
regarding ownership of the copyrights in their
contributions, and they are not qualified as
experts. To the extent that Plaintiffs’
statement is in the present tense it is unclear
what members of technical committees and
what standards Plaintiffs reference, and
therefore may be irrelevant.
Disputed to the extent that Plaintiffs allege
that NFPA employees create any original
copyrightable contributions to the standards.
NFPA employees only assist the unpaid
volunteers who actually develop the
standards. SMF ¶ 132–38.

Disputed to the extent that Plaintiffs allege
that NFPA employees create any original
copyrightable contributions to the standards.
NFPA employees only assist the unpaid
volunteers who actually develop the
standards. SMF ¶ 132–38.

Disputed to the extent that Plaintiffs allege
that NFPA employees create any original
copyrightable contributions to the standards.
NFPA employees only assist the unpaid
volunteers who actually develop the
standards. SMF ¶ 132–38.

developing a new edition of the NEC involves
consideration of thousands of comments and
proposals from the public, the participation of
hundreds of Technical Committee members in
multiple rounds of intensive multi-day meetings,
and the active assistance of dozens of NFPA
staff. Pauley Decl. ¶¶ 19, 23, 42.
120. NFPA has a copyright registration
certificate (U.S. Copyright Reg. No. TX 7-297325) for the 2011 edition of the NEC, which
identifies NFPA as the author and owner of the
work. Berry Decl. ¶ 2 and Ex. A.
121. NFPA has a copyright registration
certificate (U.S. Copyright Reg. No. TX 7-935064) for the 2014 edition of the NEC, which
identifies NFPA as the author and owner of the
work. Berry Decl. ¶ 3 and Ex. B.
122. NFPA is not aware of any other person
who claims to have a copyright interest in any
NFPA standard. Pauley Decl. ¶ 26.

123. NFPA owns incontestable U.S. federal
trademark registrations for the trademarks
National Fire Protection Association (U.S.
Trademark Reg. No. 3,165,010) and NFPA
(U.S. Trademark Reg. No. 3,141,884) in
connection with books containing fire, electrical
and building safety codes and standards;
electronic publications, namely books
containing fire, electrical and building safety
codes and standards recorded on computer
media; and certain other areas. NFPA has used
the National Fire Protection Association
trademark since 1896 and the NFPA trademark
since at least 1900. Berry Decl. ¶¶ 4-5 and Exs.
C-D.
124. NFPA owns an incontestable U.S. federal
trademark registration for the following
logo:

24

Disputed to the extent that NFPA is not the
author of the 2011 edition of the NEC, but
rather the unpaid volunteers are the authors.
SMF ¶ 132–38.
Disputed to the extent that NFPA is not the
author of the 2014 edition of the NEC, but
rather the unpaid volunteers are the authors.
SMF ¶ 132–38.
Disputed to the extent that Plaintiffs have
alleged that the unpaid volunteers who
created the NFPA standards are “joint
authors,” and therefore there are many
thousands of individuals with copyright
interests in NFPA standards. Pls. Mem. at 16.
Disputed. NFPA has not adduced admissible
evidence to support this fact. It has not
produced an actual trademark registration, but
secondary evidence that attempts to prove the
contents of a trademark registration.

Disputed. NFPA has not adduced admissible
evidence to support this fact. It has not
produced an actual trademark registration, but
secondary evidence that attempts to prove the
contents of a trademark registration.

(U.S. Reg. No. 2,834,633) in connection with
similar goods and services. NFPA has used this
trademark since 1993. Berry Decl. ¶ 6 and Ex.
E.
125. NFPA owns incontestable U.S. federal
trademark registrations for the trademarks
National Electrical Code (U.S. Reg. No.
1,094,460), NFPA 70 (U.S. Reg. No.
3,354,321), and NEC (U.S. Reg. No. 1,165,496)
in connection with publications in the field of
fire safety. NFPA has used the National
Electrical Code trademark since at least 1911,
the NFPA 70 trademark since at least 1953, and
the NEC trademark since at least 1973. Berry
Decl. ¶ 7-8 and Exs. F-H.
126. NFPA owns an incontestable U.S. federal
trademark registration for the
following logo:

(U.S. Reg. No. 1,148,903) in connection with
similar goods and services. NFPA has used this
trademark since at least 1978. Berry Decl. ¶ 9
and Ex. I.
127. NFPA’s longstanding use of its trademarks
in connection with its high quality standards has
resulted in the public’s association of NFPA’s
marks with a certain quality. Pauley Decl. ¶ 53.
25

Disputed. NFPA has not adduced admissible
evidence to support this fact with respect to
the NEC. It has not produced an actual
trademark registration for the NEC, but
secondary evidence that attempts to prove the
contents of a trademark registration.

Disputed. NFPA has not adduced admissible
evidence to support this fact. Pauley has not
established personal knowledge of this fact.

128. Defendant admits that the NFPA word
mark and logo are well known. Rubel Decl. ¶ 6,
Ex. 3 (C. Malamud Dep. at 14:25-15:11).

129. The American Society for Heating,
Refrigerating and Air Conditioning Engineers
(“ASHRAE”) is a non-profit organization that
operates with the mission of advancing the arts
and sciences of heating, ventilating, air
conditioning and refrigerating to serve humanity
and promote a sustainable world. Declaration of
Stephanie Reiniche (“Reiniche Decl.”) ¶ 2.
130. ASHRAE has developed and maintains
over 100 consensus based standards.
These standards, based on ASHRAE’s expertise
in HVAC/R systems, pertain to a variety of
fields within the building industry, such as
energy efficiency, indoor air quality,
refrigeration, and sustainability. Reiniche Decl.
¶ 2.
131. The primary users of ASHRAE’s standards
include builders, architects, and heating, airconditioning, and refrigeration manufacturers
who use the standards in their businesses.
Reiniche Decl. ¶ 17.
132. The specific ASHRAE standard at issue
here is ASHRAE 90.1 (in particular the 2004,
2007, and 2010 versions of 90.1). ASHRAE
90.1 pertains to energy efficiency in commercial
and high-rise residential buildings. It is a
“continuous maintenance” standard, meaning
that it is supplemented with addenda every 18
months and a new version of the standard is
released every three years. Reiniche Decl. ¶¶ 3,
5.
133. There are other organizations that develop
standards that address the same or similar
subjects as ASHRAE’s standards and may
compete with ASHRAE standards. For instance,
the International Code Council maintains a code
addressing building efficiency, the International
Energy Conservation Code, which addresses
26

Disputed. Defendant was not asked, and did
not say, that the NFPA name and logo were
well-known generally. Plaintiffs’ counsel
asked Defendant, who is being sued by NFPA
over trademark claims, “[i]s the NFPA name
well-known to you?” and “[i]s the NFPA logo
well-known to you?” to which Defendant
responded “yes.”

Disputed to the extent that Plaintiffs allege
that ASHRAE develops standards. ASHRAE
does not develop standards; unpaid volunteers
develop standards that ASHRAE publishes.
SMF ¶ 132–38.

Disputed to the extent that there are also
many citizens, researchers, and legal
professionals who must use ASHRAE
standards that are incorporated by reference
into law.
Disputed to the extent that there is also
another ASHRAE standard at issue, the 1993
ASHRAE Handbook: Fundamentals. Dkt.
No. 1 (Plaintiffs’ complaint), Ex. C.

This is not a material fact to Plaintiffs’
Motion for Summary Judgment.

similar concerns to ASHRAE 90.1. See Rubel
Decl. ¶ 10, Ex. 7 (Reiniche Dep. at 31:6-32:8).
134. Some ASHRAE standards, including
ASHRAE 90.1, have been incorporated by
reference into laws and regulations. However,
ASHRAE does not develop its codes for the
purpose of being incorporated by reference, and
ASHRAE has developed and maintains
numerous standards that have not been
incorporated by reference. Reiniche Decl. ¶ 3;
see also Rubel Decl. ¶ 10, Ex. 7 (Reiniche Dep.
98:25-99:16).
135. ASHRAE’s standards, including ASHRAE
90.1, are developed with input from a project
committee comprised of experts in the field,
including utilities representatives, engineers,
manufacturers, trade organization
representatives, and architects. The project
committee members are selected to ensure a
balanced representation of different interest
groups. Reiniche Decl. ¶ 6.
136. The drafting of ASHRAE standards,
including 90.1, involves input from the many
participants in the development process,
including members of the public who are
provided an opportunity to comment on draft
standards. Changes to standards language,
whether proposed by committee members or the
public, are voted on, subject to extensive
discussion, and often altered by the committee
so that the finished standard reflects a consensus
of all involved parties rather than the work of
any one individual. Reiniche Decl. ¶¶ 6-8.
137. For each ASHRAE standard, ASHRAE
assigns one or more staff liaisons to work with
that standard’s project committee. For ASHRAE
90.1, the liaison is Steve Ferguson, an engineer
who has worked on Standard 90.1 for ten years.
Reiniche Decl. ¶ 9.
138. ASHRAE staff liaisons have a variety of
job responsibilities related to facilitating the
creation of ASHRAE standards. The liaisons
responsibilities include attending and recording
minutes of meetings of the project committee,
recording changes to the standards that are
27

Disputed to the extent that Plaintiffs allege
that ASHRAE develops standards. ASHRAE
does not develop standards; unpaid volunteers
develop standards that ASHRAE publishes.
SMF ¶ 132–38. Government employees and
agencies participate in the development of
most if not all ASHRAE standards and may
do so with the purpose of developing
standards that could eventually be
incorporated into law or regulations. SMF ¶
132.
This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

Disputed to the extent that “the finished
standard reflects a consensus of all involved
parties rather than the work of any one
individual” is not a fact, it is an opinion. Ms.
Reiniche lacks personal knowledge of
whether any of the ASHRAE standards at
issue reflect the work of any one individual,
and she is not qualified as an expert.

Disputed to the extent that Plaintiffs allege
that ASHRAE staff contribute any original
copyrightable content to ASHRAE standards.
ASHRAE does not develop standards; unpaid
volunteers develop standards that ASHRAE
publishes. SMF ¶ 132–38.

proposed in committee meetings, and aiding the
committees in crafting standards. Reiniche
Decl. ¶ 10-11.
139. For instance, the staff liaisons review all
proposed changes and drafts of the standards to
make sure they are written in the proper format,
comply with ANSI and ASHRAE guidelines,
and are both technically and editorially
consistent. If a proposed change to the language
of a standard is inconsistent with other aspects
of the standard or improperly formatted, the
liaison can suggest changes that would then be
submitted to the project committee for further
consideration and voting. Additionally, the
liaisons provides the project committee with the
comments and proposals submitted by the
public and reviews and edits the committees
responses to these public comments. Reiniche
Decl. ¶ 10-11.; Rubel Decl. ¶ 10, Ex. 7
(Reiniche Dep. At 35:23-38:2; 97:13-98:19).
140. Every three years, when ASHRAE
performs a roll-up of all proposed changes and
edits to a standard under continuous
maintenance, like ASHRAE 90.1, the staff
liaison and other ASHRAE staff will work with
certain members of the project committee to
perform a final review and edit of the new
version of each standard to make sure that all
proposed changes have been properly
incorporated. Reiniche Decl. ¶ 11.
141. ASHRAE staff are also responsible for
maintaining and updating several sections of the
ASHRAE standards, including a short policy
statement at the outset of each standard and
guidelines for the public comment procedure on
each standard. Reiniche Decl. ¶ 11.
142. ASHRAE members, project committee
members, and public commenters on
ASHRAE standards understand that they do not
hold copyrights in the completed ASHRAE
standards. Reiniche Decl. at ¶ 12.

143. Anyone who contributed to the ASHRAE
standards at issue here, i.e. the 2004,
28

Disputed to the extent that Plaintiffs allege
that ASHRAE staff contribute any original
copyrightable content to ASHRAE standards.
ASHRAE does not develop standards; unpaid
volunteers develop standards that ASHRAE
publishes. SMF ¶ 132–38.

Disputed to the extent that Plaintiffs allege
that ASHRAE staff contribute any original
copyrightable content to ASHRAE standards.
ASHRAE does not develop standards; unpaid
volunteers develop standards that ASHRAE
publishes. SMF ¶ 132–38.

Disputed to the extent that Plaintiffs allege
that ASHRAE staff contribute any original
copyrightable content to ASHRAE standards.
ASHRAE does not develop standards; unpaid
volunteers develop standards that ASHRAE
publishes. SMF ¶ 132–38.
Disputed. This is not a fact, it is an opinion.
Ms. Reiniche lacks personal knowledge of
whether each of many thousands of project
committee members and public commenters
believe that they do not hold copyright in the
completed standard that they developed, and
Ms. Reiniche is not qualified as an expert to
opine on this issue.
Disputed to the extent that Plaintiffs omit the
full text of the copyright release language on

2007 and 2010 versions of ASHRAE 90.1,
whether a project committee member or a
member of the public submitting a comments,
would have been required by ASHRAE to
execute an Application for Membership on an
ASHRAE Committee or a Form for
Commenting on a Public Review Draft
ASHRAE Standard. Both forms contain the
following language: “I understand that I acquire
no rights in publication of such documents in
which my contributions or other similar
analogous form are used.” Reiniche Decl. ¶ 13
and Exs. 1-2.

144. ASHRAE does not permit changes to its
forms and is unaware of any instance where a
commenter to Standards 90.1-2004, 90.1-2007,
or 90.1-2010 altered the standard forms or
refused to sign an acknowledgment that the
individual acquired no rights in the ASHRAE
standards. Any comments made without first
executing one of ASHRAE’s standard forms
would be an exception to ASHRAE’s general
practices and policies. Reiniche Decl. ¶ 14.
145. To ASHRAE’s knowledge, no members of
the 90.1 project committee or members of the
public who commented on 90.1 have contested
ASHRAE’s copyright rights in the standard or
claimed an ownership interest in any part of
ASHRAE 90.1. Reiniche Decl. ¶ 15.
146. ASHRAE has valid copyright registrations
for the 2004, 2007, and 2010 versions of
29

these forms, which when read in its entirety
makes clear that ASHRAE requires its
members to sign a non-exclusive copyright
license, not a copyright assignment. The full
language reads:
If elected as a member of any ASHRAE
Standard or Guideline Project
Committee or appointed as a consultant
to such committee I hereby grant the
American Society of Heating,
Refrigerating and Air-Conditioning
Engineers (ASHRAE) the non-exclusive,
royalty-free rights, including
nonexclusive, royalty rights in copyright,
to any contributions I make to
documents prepared by or for such
committee for ASHRAE publication and
I understand that I acquire no rights in
publication of such documents in which
my contributions or other similar
analogous form are used. I hereby attest
that I have the authority and I am
empowered to grant this copyright
release.
SMF ¶ 144.
This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

Disputed to the extent that Plaintiffs have
alleged that the unpaid volunteers who
created the ASHRAE standards are “joint
authors,” and therefore there are many
thousands of individuals with copyright
interests in ASHRAE standards. Pls. Mem. at
16.
Disputed to the extent that ASHRAE is not
the author of the 2004, 2007, or 2010 editions

ASHRAE 90.1. Each registration specifically
identifies ASHRAE as the owner of the
copyright. Reiniche Decl. Exs. 3-5.
147. ASHRAE alerts members of the public
(and everyone who participates in the creation
of its standards) to its copyrights by
conspicuously placing notice of its copyrights
on each of these standards. Reiniche Decl. ¶ 15.

148. ASHRAE also holds registered trademarks
for the marks displayed in its Standards and
used by ASHRAE. Reiniche Decl. ¶ 16.

149. ASHRAE owns a registration for the
following logo:

Disputed. NFPA has not adduced admissible
evidence to support this fact. The supporting
evidence is testimony from a witness who
lacks personal knowledge as to the facts
testified to and secondary evidence that does
not include an actual trademark registration
certificate.

(U.S. Registration No. 1,503,000).
150. ASHRAE has used this mark in commerce
since 1959 in connection with the sale and
dissemination of its standards. ASHRAE has
also filed a Section 15 declaration in support of
the incontestability of this mark. Reiniche Decl.
¶ 16 and Ex. 6.
151. ASHRAE also holds a registration for the
following mark:

30

of ASHRAE 90.1, but rather the unpaid
volunteers are the authors, and ASHRAE’s
copyright registrations for these standards are
therefore invalid. SMF ¶ 130, 132–38.
Disputed. This copyright notice does not alert
the public (or individuals who participated in
the creation of the standards) what content
ASHRAE claims ownership over, such as the
entire standard, versus component parts of the
standard, or simply the formatting used for
the final print version. Moreover, this is not a
fact, it is an opinion. Ms. Reiniche lacks
personal knowledge of what information the
public derives from the existence of copyright
notices on ASHRAE standards, and she is not
qualified as an expert on that issue.
Disputed. NFPA has not adduced admissible
evidence to support this fact. The supporting
evidence is testimony from a witness who
lacks personal knowledge as to the facts
testified to and secondary evidence that does
not include an actual trademark registration
certificate.

Disputed. NFPA has not adduced admissible
evidence to support this fact. The supporting
evidence is testimony from a witness who
lacks personal knowledge as to the facts

testified to and secondary evidence that does
not include an actual trademark registration
certificate.

(U.S. Registration No. 4,262,297). This mark is
also used in conjunction with ASHRAE’s
standards and often prominently affixed on the
standards. ASHRAE considers these marks to
be valuable assets that are associated with
ASHRAE’s standards as well as the
organization’s goodwill. Reiniche Decl. ¶ 16
and Ex. 7; see also Rubel Decl. ¶ 4, Ex. 1
(Jarosz Rep. ¶ 151).
152. ASHRAE spends substantial resources
drafting and updating its standards.
ASHRAE’s expenses include employing staff
who facilitate the standards-creation process,
including arranging and paying for committee
meetings and collecting public input on
standards. For Standard 90.1 alone, the updating
process involves tens of thousands of manhours, and ASHRAE spent more than $1 million
to cover standards-development. Rubel Decl. ¶
4, Ex. 1 (Jarosz Rep. ¶ 76); see also Rubel Decl.
¶ 10, Ex. 7 (Reiniche Dep. at 203:20-205:2).
153. ASHRAE expends significant resources
developing standards with an understanding that
it can then sell copyrighted standards to support
its operations. However, that business model is
threatened by Defendant’s infringement. See
Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep. ¶¶ 6, 76,
107-111).

154. ASHRAE depends on the sale of standards
and revenue from membership dues to fund its
operations. For ASHRAE, membership revenue
is associated with the revenue from
dissemination of standards as membership
benefits include receiving print copies and
online access to certain ASHRAE publications
31

Disputed to the extent that the tens of
thousands of man-hours attributed to the
updating of ASHRAE 90.1 is performed by
unpaid volunteers, and ASHRAE does not
therefore spend “substantial resources” on the
work that volunteers perform for free.
Disputed to the extent that Plaintiffs allege
that ASHRAE develops standards. ASHRAE
does not develop standards; unpaid volunteers
develop standards that ASHRAE publishes.
SMF ¶ 132–38.
ASHRAE has further failed to adduce
admissible evidence to support this fact.
Disputed. ASHRAE does not develop
standards; unpaid volunteers develop
standards that ASHRAE publishes SMF
¶ 132–38. Moreover, this is not a fact, it is an
opinion. Mr. Jarosz is not qualified as an
expert to opine on whether ASHRAE’s
business model is threatened by Public
Resource’s actions.
ASHRAE has further failed to adduce
admissible evidence to support this fact.
Disputed. Plaintiffs have no evidence to
establish that individuals will not obtain or
renew ASHRAE memberships because three
outdated editions of ASHRAE 90.1 are
available on the Public Resource website.
Moreover, this is not a fact, it is an opinion.
Mr. Jarosz is not qualified as an expert to

and significant discounts on purchasing
ASHRAE publication. Rubel Decl. ¶ 4, Ex. 1
(Jarosz Rep. ¶¶ 22, 95, 134).

155. ASHRAE also derives revenue from
ancillary or complimentary products for which
its copyrighted standards give ASHRAE a
competitive advantage. For instance,
ASHRAE’s training programs can freely use the
text of ASHRAE standards and/or disseminate
course materials containing the standards while
competitors cannot. Rubel Decl. ¶ 4, Ex. 1
(Jarosz Rep. ¶¶ 143-49).
156. If these sources of revenue are lost, it
would seriously threaten ASHRAE’s
current business model and ability to continue
funding its standards creation and maintenance
operations at their current levels. Rubel Decl. ¶
4, Ex. 1 (Jarosz Rep. ¶¶ 6, 138).
157. ASHRAE publishes its standards in hard
copy and digital PDF files, which can be
purchased from ASHRAE or its authorized
resellers. Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep. ¶
99); Rubel Decl. ¶ 11, Ex. 8 (Comstock Dep. at
104:21-106:23).
158. ASHRAE offers its standards for sale at
moderate prices that do not impose an undue
burden to those who wish to purchase the
standards. Prices typically range from $25 to
$120, with no standard costing more than $200.
Reiniche Decl. ¶ 18; Rubel Decl. ¶ 4, Ex. 1
(Jarosz Rept. ¶ 99); see also Rubel Decl. ¶ 11,
Ex. 8 (Comstock Dep. at 29:9-17).
159. The standards are priced moderately on the
basis of ASHRAE’s costs and ASHRAE does
not charge more for standards that have been
incorporated into laws or regulations. Reiniche
Decl. ¶ 18; Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rept.
¶ 101).
160. ASHRAE also offers discounts for
libraries, educational uses, government entities,
and individuals or entities who purchase the
32

opine on ASHRAE’s business model, nor on
whether individuals will still obtain or renew
ASHRAE memberships because three
outdated editions of ASHRAE 90.1 are
available on the Public Resource website.
ASHRAE has further failed to adduce
admissible evidence to support this fact.
Disputed. ASHRAE has failed to adduce
admissible evidence to support this fact.

Disputed. This is not a fact, it is an opinion.
Mr. Jarosz is not qualified as an expert to
opine on ASHRAE’s business model.

Disputed. A cost of $120-$200 may be an
undue burden for many people. Moreover,
this is not a fact, it is an opinion. Mr. Jarosz is
not qualified as an expert to opine on
ASHRAE’s business model.

Disputed. A cost of $120-$200 may be more
than a “moderate” cost for many people.
Moreover, this is not a fact, it is an opinion.
Ms. Reiniche and Mr. Jarosz lack personal
knowledge of what is a moderate price to all
people, and they are not qualified as experts
to opine on this issue.
This fact is not material to Plaintiffs’ Motion

standards on a subscription basis. Reiniche
Decl. ¶ 18; Rubel Decl. ¶ 11, Ex. 8 (Comstock
Dep. at 106:19-22).
161. ASHRAE provides the public with free
read-only access to many ASHRAE standards
through the ASHRAE website. In particular,
access is provided to standards that have been
incorporated by reference into codes, including
the versions of Standard 90.1 at issue here.
Reiniche Decl. ¶ 19-20.
162. ASHRAE has not received complaints
about the accessibility of its standards, other
than from the Defendant in this case. Reiniche
Decl. ¶ 19-20; Rubel Decl. ¶ 10, Ex. 7
(Reiniche Dep. at 124:17-125:7).
163. Carl Malamud is the founder and only
employee of Defendant Public.Resource.Org,
Inc. (“Public Resource” or “Defendant”). Rubel
Decl. ¶ 5, Ex. 2 (30(b)(6) Deposition of
Public.Resource.Org (“PR Dep.”) at 23:3-25,
30:12-14).
164. Defendant admits that the NFPA “does
amazing work and saves lives.” Rubel Decl. ¶ 5,
Ex. 2 (PR Dep. at 305:15-19).
165. Defendant also admits that NFPA’s
standards protect the lives of volunteer
firefighters and children. Rubel Decl. ¶ 5, Ex. 2
(PR Dep. at 306:3-20); Rubel Decl. ¶ 17, Ex. 13
(Ex. 55 to PR Dep.).
166. Defendant claims to be a “big fan of
ASTM” and recognizes that “the subject area of
the standards that ASTM works in is very
important and we need to continue to have
standards in that area.” Rubel Decl. ¶ 5, Ex. 2
(PR Dep. at 307:9-15).
167. Defendant admits that “ASHRAE Standard
90.1 is an important standard.” Rubel Decl. ¶ 5,
Ex. 2 (PR Dep. at 307:24-308:4).
168. There is no evidence that any person who
was attempting to comply with a regulation that
incorporates by reference any of Plaintiffs’
standards was unable to access the standard.
Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at 71:3-77:24).

33

for Summary Judgment.

Disputed. Not all members of the public can
read the standards on ASHRAE’s “free readonly access” website, such as people with
print disabilities. SMF ¶ 53.

This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

This fact is not material to Plaintiffs’ Motion
for Summary Judgment.
Disputed. Plaintiffs cite to seven pages of the
Public Resource Rule 30(b)(6) deposition in
which Mr. Malamud lists multiple individuals
in various circumstances who said they were
unable to access Plaintiffs’ standards. The
cited deposition testimony directly refutes
Plaintiffs’ assertion that there is no evidence
that individuals have been unable to access

Plaintiffs’ standards.
169. Neither Defendant nor Mr. Malamud
claims to own the copyright in any of the
standards at issue. Rubel Decl. ¶ 5, Ex. 2 (PR
Dep. at 108:25-109:11).
170. Defendant is not aware of any evidence
that any participants in the process of
developing Plaintiffs’ standards claim to be
owners of the copyrights in any of the standards
at issue. Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at
83:16-85:17).
171. Malamud himself has acknowledged that
the standards “have a strong copyright interest”
until they are “incorporated by reference in the
Code of Federal Regulations.” Rubel Decl. ¶ 5,
Ex. 2 (PR Dep. at 89:8-18); Rubel Decl. ¶ 18,
Ex. 14 (Ex. 33 to PR Dep.). Malamud has also
acknowledged that Plaintiffs’ standards are
“heavily copyrighted” and that “the standards
bodies were very aggressive in claiming
copyright on those documents.” Rubel Decl. ¶ 5,
Ex. 2 (PR Dep. at 99:3-100:19).
172. Mr. Malamud testified before Congress in
favor of amending the Copyright Act to reflect
his belief that materials incorporated by
reference into government regulations lose their
copyright protection. Congress has not amended
the statute as Mr. Malamud requested. Rubel
Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at 232:1419).

173. Defendant also submitted comments to
various executive agencies and offices
requesting that policies and regulations be
changed to state that materials incorporated by
reference into government regulations must be
available at no cost to the general public. Rubel
Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at 232:21233:5).
174. For example, Defendant submitted
comments reflecting his beliefs in connection
with proposed rulemaking regarding the
procedures of the Office of the Federal Register
and the National Archives and Records
34

Disputed. Plaintiffs have alleged that the
unpaid volunteers who created the ASHRAE
standards are “joint authors,” and therefore
there are many thousands of individuals with
copyright interests in ASHRAE standards.
Pls. Mem. at 16.
Disputed. Mr. Malamud is not an attorney and
any of his statements in private emails have
no impact on the legal question of whether the
incorporated standards are copyrighted and
owned by Plaintiffs. Mr. Malamud clarifies
in both deposition transcript citations that his
statements were being taken out of context
and misconstrued, and that he was in fact
referencing Plaintiffs aggressive policing of
their claimed rights over the public’s use of
these segments of the law.
Disputed to the extent that Plaintiffs imply
that the Copyright Act requires amendment to
support Public Resource’s contention that
standards incorporated by reference into the
law are no longer subject to copyright
monopoly. Public Resource sought to have
the Copyright Act clarified to ensure that
litigation such as the present case could not be
brought against it or any other citizen or
organization that wanted to read or speak the
law.
Disputed to the extent that Plaintiffs imply
that executive agencies’ policies require
amendment to support Public Resource’s
contention that standards incorporated by
reference into the law must be available to the
public at no cost.

Administration, proposed amendments to the
Office of Management and Budget’s Circular A
119, and a study by the Administrative
Conference of the United States. O’Brien Decl.
¶ 66.
175. Each of these agencies and offices
considered and ultimately rejected Defendant’s
comments and proposals, reaffirming their
positions that materials incorporated by
reference in federal regulations do not lose their
copyright protection and do not need to be made
publicly available on the internet at no cost.
Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at
232:14-234:8).
176. Defendant also submitted Freedom of
Information Act (“FOIA”) requests to a number
of executive agencies requesting copies of
standards that are incorporated by reference in
federal regulations. Rubel Decl. ¶ 12, Ex. 9.
177. No agency has provided Defendant with
copies of the standards it has requested through
these FOIA requests. Numerous federal
agencies have explicitly taken the position in
communications with Defendant that
incorporation by reference of materials into
regulations does not destroy the copyright in
those materials. Rubel Decl. ¶ 13, Ex. 10.
178. Defendant obtained hard copies of
Plaintiffs’ standards purposely so that it did not
have to agree to the terms of use on Plaintiffs’
websites. Rubel Decl. ¶ 5, Ex. 2 (PR Dep. At
63:12-64:23).
179. Defendant stated that ASTM’s standards
“can’t be taken in violation of terms of use
unless me and our legal folks have scrubbed the
situation very carefully.” Rubel Decl. ¶ 6,
Ex. 3 (C. Malamud Dep. at 172:14-19); Rubel
Decl. ¶ 19, Ex. 15 (Ex. 69 to C. Malamud Dep.).
180. Nonetheless, Defendant asked a student to
download copies of certain ASTM standards
from ASTM’s website on the condition that he
do so secretly. Rubel Decl. ¶ 6, Ex. 3 (C.
Malamud Dep. at 172:14-19, 177:1-178:11);
Rubel Decl. ¶ 19, Ex. 15 (Ex. 69 to C. Malamud
Dep.) (“You need to stay both anonymous and
mum on this. No bragging about it, talking
35

Disputed to the extent that Plaintiffs take Mr.
Malamud’s statement out of context. Mr.
Malamud stated in the cited deposition
transcript that Public Resource obtained hard
copies because they were easier to work with.
This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

Disputed to the extent that Plaintiffs take Mr.
Malamud’s statement out of context. Mr.
Malamud intended only to read the standards
downloaded by the doctoral student, Mr. Hall,
and stated in the email Plaintiffs cite that he
did not plan to put those versions of the
standards on his website.

about it. And I’m not going to do that either.”).
181. Defendant next searched federal and state
regulations for examples of standards that had
been incorporated by reference and then tried to
obtain paper copies of those standards. Rubel
Decl. ¶ 5, Ex. 2 (PR Dep. at 156:21-157:1).
182. Mr. Malamud scanned the paper copies he
was able to buy into PDFs and used optical
character recognition (“OCR”) software to
convert the images of the scanned pages into
text. Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at 156:21157:2, 224:8-13).
183. Defendant added an introductory page to
the beginning of each PDF. Rubel Decl. ¶ 5, Ex.
2 (PR Dep. at 156:15-157:5).
184. The introductory page was labeled as a
“Certificate” with a border depicting stars and
stripes, a stamp of approval, and a designation
of the Executive Director of the Office of the
Federal Register as the “Official Incorporator.”
The page states that the document has been
incorporated by reference and “shall be
considered legally binding upon all citizens and
residents of the United States of America” and
that “[c]riminal penalties may apply for
noncompliance.” See, e.g., Rubel Decl. ¶ 5, Ex.
2 (PR Dep. at 224:14-17); Rubel Decl. ¶ 6, Ex.
3 (C. Malamud Dep. at 127:4-13); Rubel Decl. ¶
20, Ex. 16 (Ex. 63 to C. Malamud Dep.).
185. In December 2102, Defendant posted the
Disputed. Public Resource posted the
PDFs, including the text created by the OCR
incorporated standards on its website between
software, on Defendant’s website and on the
2008 and 2014. SMF ¶ 4.
Internet Archive. Rubel Decl. ¶ 5, Ex. 2 (PR
Dep. at 156:15-159:6).
186. Defendant kept the standards posted on its
website and the Internet Archive until
after the Complaint was filed, and Defendant
did not remove the standards from its website or
the Internet Archive until on or about November
10, 2015, at the suggestion of the Court.
O’Brien Decl. ¶ 69; Reiniche Decl. ¶ 20; Berry
Decl. ¶ 13.
187. Defendant posted PDF versions of each of
the standards at issue in this litigation on its
website. Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at
158:22-159:6).
36

188. Defendant hired a firm called HTC Global
Services to convert the text of some of ASTM
and NFPA’s standards into HTML format and
to convert the images in these standards into
JPG format. Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at
159:19-160:7, 162:13-163:17).
189. Defendant instructed HTC Global to copy
all of the text of the standards word for word
into HTML code. Rubel Decl. ¶ 8, Ex. 5 (HTC
Dep. at 24:16-25:5).
190. Defendant instructed HTC Global to
“double-key” the standards, which means that
two operators independently type the text and
then compare the two versions, instead of using
a more accurate, but more expensive, “triplekey” methodology in which three independent
operators would have typed the text. Rubel
Decl. ¶ 5, Ex. 2 (PR Dep. at 165:2-171:1);
Rubel Decl. ¶ 8, Ex. 5 (HTC Dep. at 35:2336:7); Rubel Decl. ¶ 21, Ex. 17 (Ex. 2 to HTC
Global Dep.).
191. By taking the cheaper route, Defendant
knew that there could be up to 49 errors on a
typical two and a half page document. Rubel
Decl. ¶ 8, Ex. 5 (HTC Dep. at 36:12-37:19,
105:16-106:11).

192. HTC Global’s representative testified that
what it described as “double-keying” would
actually involve extracting text obtained using
OCR, unless the image quality of the original
document was poor, in which case two operators
entered the text. Rubel Decl. ¶ 8, Ex. 5 (HTC
Dep. at 34:23-35:6, 41:24-42:13). This was
done even though using OCR to capture the text
from PDF versions of Plaintiffs’ standards was
likely to result in errors. See Rubel Decl. ¶ 22,
Ex. 18 (Fruchterman Dep. at 184:21-185:11)
(explaining potential for OCR errors in technical
documents).
193. Defendant suspected that HTC Global may
be using OCR instead of having two operators
enter the text. Defendant’s CEO, Mr. Malamud,
communicated to his wife that all of the
37

Disputed. HTC stated in the deposition
transcript that Plaintiffs cite that the accuracy
rate of 99.51% means that there could be up
to 49 mistakes in 10,000 characters. Plaintiffs
lack evidence of what Public Resource
“knew,” and Plaintiffs cite a deposition of a
third party that is not probative of their claims
as to Public Resource’s knowledge.

documents had only been double-keyed “in
theory” but that HTC “may cheat and do OCR
first and then their QA.” Rubel Decl. ¶ 5, Ex. 2
(PR Dep. at 171:21-172:20); Rubel Decl. ¶ 23,
Ex. 19 (Ex. 21 to Point.B Studio Dep.).
194. HTC Global’s rekeying of Plaintiffs’
standards was done by non-native English
speakers in India with no technical expertise.
Rubel Decl. ¶ 8, Ex. 5 (HTC Dep. at 30:2432:16).
195. Defendant posted on its website the HTML
files derived from Plaintiffs’ standards that were
created by HTC Global. Rubel Decl. ¶ 5, Ex. 2
(PR Dep. at 183:20-184:5).
196. Defendant admitted that its rekeying of the
standards was “simply recover[ing] text,” and
that it would not “start adding true value” until
it rekeyed the mathematical formulas, adding
section ID headers, and converting the graphics
to vector format. Rubel Decl. ¶ 6, Ex. 3 (C.
Malamud Dep. at 58:2-8, 60:17-61:7); Rubel
Decl. ¶ 24, Ex. 20 (Ex. 57 to C. Malamud
Dep.).

Disputed to the extent that Plaintiffs take Mr.
Malamud’s statements out of context, where
his statements were not to downplay the value
of making the text of the incorporated
standards readable in HTML, but to go
beyond that and add even more value by
“rekeying mathematical formulas into
MATHML, adding section ID headers so you
can permalink not only the standard but a
subsection of the standard, and converting the
graphics to vector format.” Ex. 57 to C.
Malamud Dep.

197. Defendant hired Point.B Studio, which is a
business name of Mr. Malamud’s wife, Rebecca
Malamud, to convert the diagrams, figures,
graphs, illustrations and formulas from certain
ASTM and NFPA standards from JPG format to
SVG and/or MathML format. Rubel Decl. ¶ 5,
Ex. 2 (PR Dep. at 184:22-185:4).
198. Defendant instructed Point.B Studio to
reproduce exact copies of the relevant materials
within Plaintiffs’ standards. See Rubel Decl. ¶ 6,
Ex. 3 (C. Malamud Dep. at 116:23- 117:5 and
120:9-14); Rubel Decl. ¶ 25, Ex. 21 (Ex. 62 to
C. Malamud Dep.) (“Exact copy has been the
absolutely positively 100% important criteria
the whole time…[if there is any question in my
mind that you are not making exact copies, I
have to fire you.”]).
199. Point.B Studio used children from a
This fact is not material to Plaintiffs’ Motion
mentoring program whose target audience was
for Summary Judgment.
7-14 to convert formulas to MathML and
38

drawings to SVG format for use on materials
posted on Defendant’s website. Rubel Decl. ¶ 5,
Ex. 2 (PR Dep. at 188:4-191:6); Rubel Decl. ¶
7, Ex. 4 (Point.B Studio Dep. at 42:24- 43:10,
87:4-18); Rubel Decl. ¶ 26, Ex. 22 (Ex. 18 to
Point.B Studio Dep.);
200. The children were not paid for the work
This fact is not material to Plaintiffs’ Motion
they did. Rubel Decl. ¶ 7, Ex. 4 (Point.B Studio for Summary Judgment.
Dep. at 47:3-13).
201. Defendant posted on its website versions of
some of Plaintiffs’ standards that contain the
drawings, diagrams, figures and/or formulas that
had been created by Point.B Studio. Rubel Decl.
¶ 5, Ex. 2 (PR Dep. at 194:14-20).
202. Anyone accessing the versions of
Plaintiffs’ standards from Defendant’s website
can save the materials onto their own devices,
print them, or post them to another website.
Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at
68:25-69:19).
203. Defendant did not obtain the consent of
any of the Plaintiffs before posting copies of
their standards on its website. Rubel Decl. ¶ 5,
Ex. 2 (PR Dep. at 204:7-12).
204. In addition, Defendant posted many of the
PDF versions of the standards to the Internet
Archive website. Rubel Decl. ¶ 5, Ex. 2 (PR
Dep. at 195:25-196:18).
205. In posting the standards on the Internet
Archive, Defendant identified “author” as one
type of metadata that he would provide for each
standard. Defendant identified NFPA as the
author of each of the versions of the NFPA
standards it posted on the Internet Archive.
Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at 274:17275:10, 280:14-282:11, 288:9-290:16); Rubel
Decl. ¶ 27, Ex. 23 (Exs. 52 and 53 to PR Dep.).
206. Defendant identified ASTM as the author
of each of the versions of the ASTM standards it
posted on the Internet Archive. Rubel Decl. ¶ 6,
Ex. 3 (C. Malamud Dep. at 199:21- 201:5);
Rubel Decl. ¶ 48, Ex. 43 (Ex. 70. To C.
Malamud Dep.).
207. Defendant identified Creative Commons
Universal license 1.0 as a license that applied to
each of the standards it posted on the Internet
39

Archive. For each standard, Defendant included
a link to the CCO 1.0 Universal license. Rubel
Decl. ¶ 6, Ex. 3 (C. Malamud Dep. At 263:22265:20).
208. The CCO 1.0 Universal license states:
“The person who associated a work with
this deed has dedicated the work to the public
domain by waiving all of his or her rights to the
work worldwide under copyright law . . . You
can copy, modify, distribute and perform the
work, even for commercial purposes, all without
asking permission.” Rubel Decl. ¶ 6, Ex. 3 (C.
Malamud Dep. at 265:22-270:9); Rubel Decl. ¶
28, Ex. 24 (Ex. 75 to C. Malamud Dep.).
209. Members of the public can obtain PDF
versions of the Plaintiffs’ standards from the
Internet Archive, save them and then use them
in any manner, including by printing copies.
Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at 277:16279:13).
210. Defendant used Plaintiffs’ trademarks on
the copies of Plaintiffs’ standards that
Defendant created and posted on its website and
on the Internet Archive website. See, e.g., Rubel
Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at 127:4-13,
127:22-128:9); Rubel Decl. ¶ 20, Ex. 16 (Ex. 63
to C. Malamud Dep.) (using ASTM
International logo, ASTM logo, and ASTM
word mark); Rubel Decl. ¶ 29 , Ex. 25 (using
ASHRAE logos – U.S. Reg. No. 4,262,297);
Rubel Decl. ¶ 30, Ex. 26 (using National
Electrical Code, National Fire Protection
Association, and NEC word marks and NFPA
and NEC logos).
211. Additionally, Defendant used certain of
Plaintiffs’ marks within tables it created on its
website and on the Internet Archive when
identifying the authors and names of the
standards. Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at
141:11-23, 151:6-22, 274:17-275:10, 288:9-14);
Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at
199:21-200:6); Rubel Decl. ¶ 31, Ex. 27 (Ex. 38
to PR Dep.) (using ASTM, American Society
for Testing and Materials, NFPA, National Fire
Protection Association, National Electrical
Code, and ASHRAE marks), Rubel Decl. ¶ 32,
40

Ex. 28 (Ex. 40 to PR Dep.) (using ASHRAE,
NEC and ASTM marks); Rubel Decl. ¶ 27, Ex.
23 (Exs. 52 and 53 from PR Dep.) (using
National Fire Protection Association, NFPA,
National Electrical Code, and NEC marks).
212. Defendant’s goal is to make the logos used
on the standards and the contents of the
standards as close as possible to the actual
standards published by the Plaintiffs. Rubel
Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at 28:2529:8).
213. Defendant intends for people who view
each standard posted on its website and/or the
Internet Archive to think it is “a scan of the
exact standard” or an HTML version of the
exact standard published by the Plaintiffs. Rubel
Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at 46:1447:9). Defendant claims that he must post the
entirety of each standard to his website because
“Defendant is “not in a position to decide which
portions of that document are or [are] not the
law.” Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep.
at 32:16-33:4).
214. The PDF versions of Plaintiffs’ standards
on Defendant’s website contain errors, including
pages that are missing or that are upside down.
Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at
127:8-13, 128:19-130:4, 147:19-148:1); Rubel
Decl. ¶ 20, Ex. 16 (Ex. 63. to C. Malamud Dep.)
215. The HTML versions of Plaintiffs’
standards on Defendant’s website contain errors,
including text and numbers that differ from the
information in the authentic versions of
Plaintiffs’ standards. Rubel Decl. ¶ 6, Ex. 3 (C.
Malamud Dep. at 127:4–139:8); Rubel Decl. ¶
20, Ex. 16 (Ex. 63 to C. Malamud Dep.); Rubel
Decl. ¶ 33, Ex. 29 (Ex. 64 to C. Malamud Dep.).
216. Mr. Malamud has no explanation for these
mistakes and admits that they are not
acceptable. Rubel Decl. ¶ 6, Ex. 3 (C. Malamud
Dep. at 140:19-141:6).
217. Mr. Malamud claimed that if he were
notified of any mistakes, he would do a rigorous
quality assurance check and correct any
mistakes. Rubel Decl. ¶ 6, Ex. 3 (C. Malamud
Dep. at 140:19-25).
41

Disputed. Public Resource’s goal is
accessibility. Public Resource stated in the
cited text: “Our goal is replication and
transformation of that standard to make it
accessible.”

Disputed. Public Resource corrected every
error that Plaintiffs brought to its attention in
the course of this litigation. C. Malamud
Decl. ¶ 34.

Disputed. Public Resource corrected every
error that Plaintiffs brought to its attention in
the course of this litigation. C. Malamud
Decl. ¶ 34.

218. However, even after being notified of
specific errors at his deposition, Defendant
never corrected these mistakes and continued to
maintain versions of standards with
“unacceptable mistakes” that bear Plaintiffs’
trademarks on its website until it recently
removed all of its copies of Plaintiffs’ standards
at issue in this case from its website at the
Court’s suggestion. Rubel Decl. ¶ 16.
219. The errors in the HTML version of the
2011 NEC that Defendant posted on the internet
include numerous errors that distort the meaning
of substantive provisions of the standard that
were written to protect human safety and
prevent property damage. Pauley Decl. ¶ 54.

220. Malamud admits that he does not know
what quality control procedures Plaintiffs use
when publishing their standards. Rubel Decl. ¶
6, Ex. 3 (C. Malamud Dep. at 102:23104:12, 109:7-110:4).
221. Public Resource embarked on this project
with the explicit purpose of encouraging the
public to access Plaintiffs’ Works and use them
as they see fit, including downloading, printing,
and making derivative works. Rubel Decl. ¶ 6,
Ex. 3 (C. Malamud Dep. at 85:1-89:10).
222. Defendant made a point of informing the
public that its versions of Plaintiffs’ Works were
available in open access without restriction. See,
e.g., Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep.
at 63:1-64:3, 66:13-68:4); Rubel Decl. ¶ 34, Ex.
30 (Ex. 58. to C. Malamud Dep.)
223. Defendant also offers its website as an
alternative to the platforms on which Plaintiffs
42

Disputed. Public Resource corrected the
errors that Plaintiffs brought to its attention in
the course of this litigation. C. Malamud
Decl. ¶ 34.

Disputed. Many of these purported errors are
not errors at all. For example, in ¶ 54(a),
Pauley states that the HTML standard omits a
key requirement that high-voltage cables be
shielded. That requirement, however, does not
appear in the original 2011 edition of the
NEC, which is the version Public Resource
posted in HTML format. (SMF ¶ 180.) NFPA
added that requirement later by errata. (SMF ¶
181.) Similarly, in ¶ 54(f), Pauley asserts that
cross-references in the Public Resource copy
were incorrect—but the Articles he identifies
are the same ones identified in NFPA’s errata,
suggesting the error was NFPA’s, not Public
Resource’s. (Id.) Public Resource corrected
all of the errors that Plaintiffs brought to its
attention in the course of this litigation. C.
Malamud Decl. ¶ 34.

Disputed. Public Resource’s explicit purpose
is to provide the public with greater access to
the law, saying in the cited text: “I think it’s .
. . important for citizens to be able to use the
law without restriction as they see fit.” C.
Malamud Dep. at 85:04–06.
Disputed. Public Resource does not say this in
the cited text. Public Resource says: “We
have never charged for access to any
information on our website.” C. Malamud
Dep. at 68:03–04.

provide free public access to their standards.
Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at
76:14-77:8, 80:20-86:15); Rubel Decl. ¶ 35, Ex.
31 (Ex. 59. to C. Malamud Dep.).
224. Defendant has publicly declared that
Plaintiffs’ standards are in the public domain
and cannot be copyrighted, and has encouraged
members of the public to download them from
Defendant’s website without paying for them.
Rubel Decl. ¶ 36, Ex. 32.
225. Mr. Malamud told a potential funder that
one of Defendant’s goals was to “have more
users” of standards than the “SDO-provided
websites,” and further emphasized that
Defendant would “like to be No. 1 in the
marketplace.” Rubel Decl. ¶ 6, Ex. 3 (C.
Malamud Dep. at 297:25-298:11, 308:3
309:16); Rubel Decl. ¶ 37, Ex. 33 (Ex. 77 to C.
Malamud Dep.).
226. Defendant attempted to drive traffic to its
website, including by engaging in “search
engine optimization” to appear higher in Google
search results in an attempt to attract visitors.
Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at
142:10-143:2); Rubel Decl. ¶ 38, Ex. 34 (Ex. 65
to C. Malamud Dep.).
227. Defendant had an unsuccessful Kickstarter
campaign to raise money for his double-keying
of standards. Rubel Decl. ¶ 6, Ex. 3 (C.
Malamud Dep. at 55:13-56:3).
228. Defendant discussed his copying of
Plaintiffs’ standards in connection with his
efforts to raise funds through this Kickstarter
campaign, including the number of ASTM and
NFPA standards it had copied. Rubel Decl. ¶ 6,
Ex. 3 (C. Malamud Dep. at 56:4-58:17, 62:365:16, 76:14-77:16); Rubel Decl. ¶ 24, Ex. 20
(Ex. 57 to C. Malamud Dep.); Rubel Decl. ¶ 34,
Ex. 30 (Ex. 58 to C. Malamud Dep.); Rubel
Decl. ¶ 35, Ex. 31 (Ex. 59 to C. Malamud Dep.).
229. Several supporters of Defendant’s
Kickstarter campaign donated money to
Defendant after the Kickstarter campaign failed.
Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at
80:5-13).
230. Mr. Malamud wrote in an email to his wife,
43

Disputed. Public Resource was discussing its
work improving the California Title 24, a
state code put out by the state of California.
The full quote makes this clear: “Our version
of Title 24 should have more users than those
that purchase the books and DVDs or use the
state or SDO-provided web site. We’d like to
be number one in the marketplace by the end
of the year.”
Disputed. Public Resource’s efforts to
improve access to legal materials, including
making sure that the documents it posts are
“accurately described on a search engine,” are
a key part of its non-profit mission of
expanding access, not a commercial activity
to increase revenue. (SMF ¶ 7.)
This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

This fact is not material to Plaintiffs’ Motion

whom he had hired to assist him in converting
Plaintiffs’ standards into HTML format, that she
should “make sure we’ve done any NFPA docs
… . Also, we can do any ASTM or ASHRAE
docs as well as those are helpful to me in my
suit. … Definitely keep plowing away on that
stuff … that’s the kind of output that makes it
much easier for me to try and raise money to
keep you going for the rest of the year.” Rubel
Decl. ¶ 7, Ex. 4 (Point.B Studio Dep. at 126:416); Rubel Decl. ¶ 23, Ex. 19 (Ex. 21 to Point.B
Studio Dep.).
231. In another email, Mr. Malamud explained
that he could continue paying Ms. Malamud as
long as she continued making copies of
Plaintiffs’ standards because “what the funders
are going to be looking at is our walking
through the standards.” Rubel Decl. ¶ 7, Ex. 4
(Point.B Studio Dep. at 186:8-187:2); Rubel
Decl. ¶ 39, Ex. 35 (Ex. 27 to Point.B Studio
Dep.).
232. In an email Mr. Malamud described his
work purchasing Plaintiffs’ standards to post
them on the internet as “what a way to make a
living.” Rubel Decl. ¶ 6, Ex. 3 (C. Malamud
Dep. at 239:12-17, 240:5-243:4); Rubel Decl. ¶
40, Ex. 36 (Ex. 73 to C. Malamud Dep.).
233. Defendant’s President and only employee,
Carl Malamud, pays himself $180,000 per year
for his work with Defendant. Rubel Decl. ¶ 6,
Ex. 3 (C. Malamud Dep. at 243:21- 244:4).
234. Defendant also paid Point.B Studio, its
founder’s wife’s unincorporated company,
approximately $350,000 between 2010 and
2014. Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep.
At 245:15-246:13).
235. During the course of this litigation,
Defendant continued to post versions of
additional standards owned by Plaintiffs that use
Plaintiffs’ trademarks on its website, including
as recently as October 2015. O’Brien Decl. ¶
67; Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at 268:20269:8); Rubel Decl. ¶ 41, Ex. 37 (Ex. 49 to PR
Dep.).
236. Defendant has posted HTML versions of
certain ASTM standards since Plaintiffs filed
44

for Summary Judgment.

This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

Disputed to the extent that the standards that
Public Resource has posted on its website are
not owned by Plaintiffs for the reasons
described in Public Resource’s Motion for
Summary Judgment.

their Complaint that do not use the ASTM logo
marks. O’Brien Decl. ¶ 68 and Ex. 18.
237. Defendant failed to provide any response to
Plaintiffs’ contention interrogatories to identify
any evidence in support of its affirmative
defenses. Rubel Decl. ¶ 14 and Ex. 11 (neversupplemented responses to contention
interrogatories).
238. Although Defendant has claimed that its
infringement creates a “tremendous market
opportunity” for Plaintiffs, basic economic
principles indicate that Defendant’s making the
standards available for free supplants these
sources of revenue. Rubel Decl. ¶ 6, Ex. 3 (C.
Malamud Dep. at 290:8-10; Rubel Decl. ¶ 4, Ex.
1 (Jarosz Rep. ¶¶ 131, 133, 139-41).
239. Since Defendant started posting the NEC
on its website and the Internet Archive website
in 2012, NFPA’s sales of that code and
handbook have decreased noticeably. In 2009
and 2010, the first two full years after the 2008
edition of the NEC was published, NFPA sold a
total of 144,312 copies of the 2008 NEC and
41,995 copies of the 2008 NEC handbook,
which contains the 2008 NEC. By contrast, in
2012 and 2013, the first two full years after the
2011 edition of the NEC was published, NFPA
sold 92,631 copies of the 2011 NEC and 29,072
copies of the 2011 NEC handbook, which
contains the 2011 NEC. In other words, sales of
the NEC declined by 36%, and sales of the NEC
handbook declined by 31% from one cycle to
the next. Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep. ¶
133).

240. Multiple resellers and merchants have
downloaded copies of NFPA’s standards that
were posted on the Internet and have attempted
to resell them or package them with other
45

Disputed. Defendant did not fail to respond. It
objected to the contention interrogatories.

Disputed. This is not a fact, it is an opinion.
Mr. Jarosz is not qualified as an expert to
opine on Plaintiffs’ business model, nor on
the effects of making the standards available
on the Public Resource website. See Public
Resource’s Motion to Strike Jarosz Report.

Disputed. This analysis is riddled with factual
errors. First, this assumes that NFPA first
published NEC 2011 in 2011, but NFPA’s
own sales records show that sales of NEC
2011 began in 2010 and were substantially
higher that year than in 2011. See Public
Resource’s Motion to Strike Jarosz Report;
Lu Decl. to Public Resource’s Motion to
Strike Jarosz Report, Exh. 14 at NFPAPR0038555. The comparison to NEC 2008 is
also full of errors. First, NFPA’s records
omitted sales information for 2007-2008, the
years relative to NEC 2008 that would have
been appropriate to compare to the years
2010-2011 for NEC 2011. See id. Second,
while Public Resource posted NEC 2011 in
2012, it posted the state-incorporated NEC
2008 in 2008. See Lu Decl. Exh. 13 at
129:25-130:21. Thus, the presence of Public
Resource cannot explain the difference in
numbers. Moreover, Mr. Jarosz is not
qualified as an expert to opine on Plaintiffs’
business model, nor on the effects of making
the standards available on the Public
Resource website. See Public Resource’s
Motion to Strike Jarosz Report.

products for sale. These resellers have
responded to cease-and-desist requests from
NFPA by citing Defendant’s statements that the
standards are free for distribution by anyone.
Berry Decl. ¶¶ 11-12.
241. Plaintiffs’ standards Defendant posted on
the Internet Archive were downloaded
anywhere from tens to tens of thousands of
times. Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at
206:13- 207:22, 254:14-256:16); Rubel Decl. ¶
42, Ex. 38 (Ex. 43 to PR Dep.), Rubel Decl. ¶
43, Ex. 39 (Ex. 51 to PR Dep.).

242. NFPA’s 2011 NEC was downloaded
30,350 times from the Internet Archive website.
NFPA’s 2014 NEC was downloaded 29,405
times from the Internet Archive website.
Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at 254:14
256:16); Rubel Decl. ¶ 43, Ex. 39 (Ex. 51 to PR
Dep.).

243. ASTM D975-07 was downloaded 159
times from the Internet Archive website.
ASTM D86-07 was downloaded 75 times from
the Internet Archive website. Rubel Decl. ¶ 5,
Ex. 2 (PR Dep. at 206:13-207:22); Rubel Decl.
¶ 42, Ex. 38 (Ex. 43 to PR Dep.).

46

Disputed. The term “download” as used here
by the Internet Archive does not mean
downloads in the colloquial sense, but means
the number of “accesses,” the number of
times one computer sent a request to the
Internet Archive server. The computer
sending such a request could be controlled by
a human, or it could be operating
automatically. Mr. Malamud corrected
Plaintiffs repeatedly on this distinction.
(Public Resource Dep. 254:14–263:21; 271:7272:14.) Also disputed to the extent that the
standards that Public Resource has posted on
its website are not owned by Plaintiffs for the
reasons described in Public Resource’s
Motion for Summary Judgment.
Disputed. The term “download” as used here
by the Internet Archive does not mean
downloads in the colloquial sense, but means
the number of “accesses,” the number of
times one computer sent a request to the
Internet Archive server. The computer
sending such a request could be controlled by
a human, or it could be operating
automatically. Mr. Malamud corrected
Plaintiffs repeatedly on this distinction.
(Public Resource Dep. 254:14–263:21; 271:7272:14.) Also disputed to the extent that the
standards that Public Resource has posted on
its website are not owned by Plaintiffs for the
reasons described in Public Resource’s
Motion for Summary Judgment.
Disputed. The term “download” as used here
by the Internet Archive does not mean
downloads in the colloquial sense, but means
the number of “accesses,” the number of
times one computer sent a request to the
Internet Archive server. The computer
sending such a request could be controlled by
a human, or it could be operating
automatically. Mr. Malamud corrected

244. Plaintiffs’ standards were also “accessed”
thousands of times from Defendant’s website
between April 2013 and February 2014 alone.
Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at 271:7272:14 (defining “access” as complete or partial
transfer of file from Defendant’s server to
another computer), 299:2-300:1 (describing
relevant time period)); Rubel Decl. ¶ 44, Ex. 40
(Ex. 44 to PR Dep.); Rubel Decl. ¶ 45, Ex. 41,
(Ex. 54 to PR Dep.); Rubel Decl. ¶ 46, Ex. 42
(Ex. 56 to PR Dep.) (showing 88,497 accesses
of ASTM standards, 167,982 accesses of NFPA
standards, and 33,147 accesses of ASHRAE
standards).
245. Plaintiffs have also been injured by the loss
of their ability to control dissemination of their
intellectual property. Defendant’s publication
and distribution of versions of Plaintiffs’
standards that are incomplete, contain
transcription errors, or otherwise alter the
content of Plaintiffs’ standards severely
compromise Plaintiffs’ ability to protect their
reputations. Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep.
¶¶ 150-51).

246. It is exceedingly difficult to quantify or
forecast the economic impact of Defendant’s
activities. Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep. ¶¶
150-54).

Plaintiffs repeatedly on this distinction.
(Public Resource Dep. 254:14–263:21; 271:7272:14.) Also disputed to the extent that the
standards that Public Resource has posted on
its website are not owned by Plaintiffs for the
reasons described in Public Resource’s
Motion for Summary Judgment.
Disputed to the extent that the standards that
Public Resource has posted on its website are
not owned by Plaintiffs for the reasons
described in Public Resource’s Motion for
Summary Judgment.

Disputed. Any loss of anticompetitive
advantage in the sale of downstream materials
is not a cognizable harm. (SMF ¶ 126.) This is
an opinion, not a fact. Plaintiffs have not
demonstrated any harm, and Mr. Jarosz is not
qualified as an expert to opine on harm to the
Plaintiffs, nor on the effects of making the
standards available on the Public Resource
website. See Public Resource’s Motion to
Strike Jarosz Report. Disputed to the extent
that the standards that Public Resource has
posted on its website are not owned by
Plaintiffs for the reasons described in Public
Resource’s Motion for Summary Judgment.
Disputed. This is an opinion, not a fact. Mr.
Jarosz is not qualified as an expert to opine on
harm to the Plaintiffs, nor on the effects of
Public Resource’s activities. See Public
Resource’s Motion to Strike Jarosz Report.

247. Defendant does not know what people do
This fact is not material to Plaintiffs’ Motion
with the versions of Plaintiffs’ standards that are for Summary Judgment.
posted on Defendant’s website. Rubel Decl. ¶ 6,
Ex. 3 (C. Malamud Dep. At 72:12-16).
248. Defendant has no way to identify who
This fact is not material to Plaintiffs’ Motion
47

downloaded, made additional copies of, or
printed the versions of Plaintiffs’ standards from
its website. Rubel Decl. ¶ 6, Ex. 3 (C. Malamud
Dep. at 73:25-76:5).
249. Copies of 43 of Defendant’s versions of
ASTM’s standards at issue, with Defendant’s
cover page, were uploaded by “dharlanuctcom”
onto the Scribd platform. See
https://www.scribd.com/dharlanuctcom. Rubel
Decl. ¶ 15 and Ex. 12.
250. There is no evidence that Defendant’s
activities, which began in late 2012, have
generated additional demand for Plaintiffs’
standards or raised public awareness of the
standards in a manner that would spur additional
demand. Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep. ¶
140).

for Summary Judgment.

Disputed. Plaintiffs’ own sales records show
that the sales of some standards at issue
increased after Public Resource posted the
standard on its website. See, e.g., Public
Resource’s Motion to Strike Jarosz Report;
Lu Decl. to Public Resource’s Motion to
Strike Jarosz Report, Exh. 14 at NFPAPR0038555.
251. Copyright protection provides an incentive Disputed. The persons who volunteer to
for Plaintiffs to innovate and develop new
create and develop voluntary consensus
works. If a work can be copied or sold by
standards have incentives to do so that are
another entity, there may not be sufficient
independent of owning the copyright to the
incentives for the author to develop the work.
standards. SMF ¶ 28. Plaintiffs do not develop
Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep. ¶ 102).
standards; the volunteers develop standards,
and do not receive any proceeds from the sale
of these standards in compensation for their
authorship. SMF ¶ 132–38.
252. “Plaintiffs require substantial resources to
Disputed. The persons who volunteer to
continue their standards development efforts.
create and develop voluntary consensus
Revenue generated from the sale of copyrighted standards have incentives to do so that are
standards and downstream products and services independent of owning the copyright to the
based on these copyrighted standards are a key
standards. SMF ¶ 28. Plaintiffs do not develop
contributor to the resources needed to carry out standards; the volunteers develop standards,
these functions.” Rubel Decl. ¶ 4, Ex. 1 (Jarosz
and do not receive any proceeds from the sale
Rep. ¶ 6).
of these standards in compensation for their
authorship. SMF ¶ 132–38. This is an
opinion, not a fact. Mr. Jarosz is not qualified
as an expert to opine Plaintiffs’ business
model. See Public Resource’s Motion to
Strike Jarosz Report.
253. If the revenue from the sales of their
Disputed. This is an opinion, not a fact. Mr.
copyrighted works and ancillary were in
Jarosz is not qualified as an expert to opine
jeopardy, Defendants would be forced to change Plaintiffs’ business model. See Public
their behavior and their business models.
Resource’s Motion to Strike Jarosz Report.
Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep. ¶ 163).
254. There is a significant risk that if
Disputed. This is an opinion, not a fact. Mr.
48

Defendant’s conduct goes unchecked, it will act
as a signal to the market that the creation of
unauthorized versions of the standards is
acceptable and Plaintiffs’ harm will be
compounded over time as more people use the
versions of the standards on Defendant’s
website or similar websites instead of
purchasing authentic versions of the standards
from Plaintiffs. Rubel Decl. ¶ 4, Ex. 1 (Jarosz
Rep. ¶ 153).
255. Defendant acknowledges that “making
standards more freely available . . . potentially
poses a challenge to the current business models
of the standards development of some standards
development organizations.” Rubel Decl. ¶ 6,
Ex. 3 (C. Malamud Dep. at 211:5-19).
256. Malamud has privately admitted to his
supporters that he avoids discussing how his
conduct will affect the business model of
standards development organizations because he
“can’t win that discussion” and he instead must
take “an absolutist position,” which is “the only
way we can possibly win this fight.” Rubel
Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at 272:1419); Rubel Decl. ¶ 47, Ex. 43 (Ex. 76 to C.
Malamud Dep.).
257. Each of the Plaintiffs relies primarily on
users of its standards to fund the development of
the standards, rather than charging upfront fees
before developing a standard. Rubel Decl. ¶ 4,
Ex. 1 (Jarosz Rep. ¶ 80).
258. Plaintiffs’ “back-loaded” business models
features extremely low barriers to participating
in the standards creation process but then funds
the process through sale of the resulting
standards. Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep. ¶¶
81, 89, 94-96, 118-21).
259. Plaintiffs could be forced to significantly
alter their business models to a more “frontloaded” system that charges for participation in
the standard-creation process, which would
preclude the participation of certain key
stakeholders and/or limit the quantity and
subject matter of the standards Plaintiffs
develop. Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep.
¶¶106-11).
49

Jarosz is not qualified as an expert to opine
Plaintiffs’ business model. See Public
Resource’s Motion to Strike Jarosz Report.

This fact is not material to Plaintiffs’ Motion
for Summary Judgment. Further, Plaintiffs
distort Mr. Malamud’s testimony beyond its
actual meaning.

Disputed. This is an opinion, not a fact. Mr.
Jarosz is not qualified as an expert to opine
Plaintiffs’ business model. See Public
Resource’s Motion to Strike Jarosz Report.
Disputed. This is an opinion, not a fact. Mr.
Jarosz is not qualified as an expert to opine
Plaintiffs’ business model. See Public
Resource’s Motion to Strike Jarosz Report.

Disputed. This is an opinion, not a fact. Mr.
Jarosz is not qualified as an expert to opine
Plaintiffs’ business model, nor the standard
development model. See Public Resource’s
Motion to Strike Jarosz Report. Plaintiffs do
not develop standards; the volunteers develop
standards, and do not receive any proceeds
from the sale of these standards in
compensation for their authorship. SMF

260. Standards developed under a front-loaded
model are more likely to feature only the
viewpoints of industry interests with the
resources to participate in the process and are
less likely to reflect the views and concerns of
the general public. Rubel Decl. ¶ 4, Ex. 1
(Jarosz Rep. ¶¶106-11).
261. Plaintiffs currently develop standards based
on public demands, industry needs, and public
safety concerns and advancements in
technology and without concern for whether the
standard will generate significant sales. Thomas
Decl.¶ 13; Reiniche Decl. ¶¶ 2, 18; Pauley Decl.
¶ 11.
262. Defendant’s activities could force Plaintiffs
to develop only the most popular standards or
release updated versions of standards less
frequently. Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep.
¶¶ 126-29); Pauley Decl. ¶ 51.

263. Plaintiffs will also likely lose revenue
associated with other ancillary activities that
rely on or incorporate the copyrighted works,
including training courses and commentary on
standards. Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep. ¶¶
143, 147-48).
264. Not only do Defendant’s activities
jeopardize Plaintiffs’ sales of their copyrighted
standards, the loss of copyright protection for
standards incorporated by reference would
remove the competitive advantage Plaintiffs
have when marketing these ancillary goods and
services and would make it easier for third
parties to compete for this business. Rubel Decl.
¶ 4, Ex. 1 (Jarosz Rep. ¶¶ 143, 147-49).
265. Government incorporation of privately
developed standards is a cost-effective
method through which government can
capitalize directly on the expertise and resources
available in the private sector that result in the
highest quality standards covering a wide range
of topics. Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep. ¶¶
50

¶ 132–38.
Disputed. This is an opinion, not a fact. Mr.
Jarosz is not qualified as an expert to opine
standard development models. See Public
Resource’s Motion to Strike Jarosz Report.

Disputed to the extent that Plaintiffs do not
develop standards; the volunteers develop
standards, and do not receive any proceeds
from the sale of these standards in
compensation for their authorship. SMF
¶ 132–38.
Disputed. This is an opinion, not a fact. Mr.
Jarosz is not qualified as an expert to opine
Plaintiffs’ business model. See Public
Resource’s Motion to Strike Jarosz Report.
Plaintiffs do not develop standards; the
volunteers develop standards, and do not
receive any proceeds from the sale of these
standards in compensation for their
authorship. SMF ¶ 132–38.
Disputed. This is an opinion, not a fact. Mr.
Jarosz is not qualified as an expert to opine
Plaintiffs’ business model. See Public
Resource’s Motion to Strike Jarosz Report.

Disputed. This is an opinion, not a fact. Mr.
Jarosz is not qualified as an expert to opine
Plaintiffs’ business model. See Public
Resource’s Motion to Strike Jarosz Report.

51-53); Jennings Decl. ¶¶ 22-23.
266. Government and other entities rely on
Plaintiffs’ standards and do not have the
resources or the technical expertise to develop
their own standards if Plaintiffs were unable to
develop them. Rubel Decl. ¶ 4, Ex. 1 (Jarosz
Rep. ¶¶ 52-56,164); Jennings Decl. ¶ 24;
Reinertson Decl. ¶¶ 11-14; Golinveaux Decl. ¶
6.
267. If the standards are to continue to be
developed, someone will have to pay for their
development. See Rubel Decl. ¶ 4, Ex. 1 (Jarosz
Rep. ¶ 123).
268. Government could fund Plaintiffs’
activities, but this would be economically
inefficient, would increase the tax burden on the
public, and place SDOs at the mercy of funding
that could be reduced or eliminated in annual
agency budgeting. Rubel Decl. ¶ 4, Ex. 1
(Jarosz Rep. ¶¶ 123-25).
269. The current method of charging members
of the public who use a standard a reasonable
price is more economically efficient than asking
all members of the public to cover the costs of
developing the standard through their taxes.
Rubel Decl. ¶ 4, Ex. 1 (Jarosz Rep. ¶
124).
270. If Plaintiffs are forced to change their
business models, there will be less standard
development because of reduced incentives,
lower quality standards because of less
participant involvement, less widespread
adoption due to less incorporation by reference
and less public buy-in. Rubel Decl. ¶ 4, Ex. 1
(Jarosz Rep. ¶ 164).
271. The effect of a loss of copyright protection
“will be a likely reduction in the number,
quality, and acceptability of critical standards
and a likely increase in costs for governments,
and therefore, taxpayers. This will cause harm
to governments, the public, and industry actors
that rely on the creation of these standards as
well as to the Plaintiffs.” Rubel Decl. ¶ 4, Ex. 1
(Jarosz Rep. ¶ 6).
272. Public Resource has extremely limited
51

Disputed. This is an opinion, not a fact. Mr.
Jarosz, Mr. Jennings, Mr. Reinertson, and Mr.
Golinveaux are not qualified as experts to
opine government and other unnamed
entities’ standard development capabilities.
See Public Resource’s Motion to Strike Jarosz
Report.
Disputed. Unpaid volunteers developed
standards at issue, and do not receive any
proceeds from the sale of these standards in
compensation for their authorship. SMF
¶ 132–38.
Disputed. This is an opinion, not a fact. Mr.
Jarosz is not qualified as an expert to opine
Plaintiffs’ business model. See Public
Resource’s Motion to Strike Jarosz Report.

Disputed. This is an opinion, not a fact. Mr.
Jarosz is not qualified as an expert to opine
Plaintiffs’ business model and his opinion
relies entirely on self-serving statements by
Plaintiffs. See Public Resource’s Motion to
Strike Jarosz Report.
Disputed. This is an opinion, not a fact. Mr.
Jarosz is not qualified as an expert to opine
Plaintiffs’ business model and his opinion
relies entirely on self-serving statements by
Plaintiffs. See Public Resource’s Motion to
Strike Jarosz Report.

Disputed. This is an opinion, not a fact. Mr.
Jarosz is not qualified as an expert to opine
Plaintiffs’ business model and his opinion
relies entirely on self-serving statements by
Plaintiffs. See Public Resource’s Motion to
Strike Jarosz Report.

financial resources available to pay any
damages award. Rubel Decl. ¶ 4, Ex. 1 (Jarosz
Rep. ¶ 155).
273. In 2014, Defendant generated less than
$100,000 in operating income and had
$248,000 in total net assets. Rubel Decl. ¶ 4, Ex.
1 (Jarosz Rep. ¶ 155, Tabs 6-7).
274. On or about November 10, 2015,
Defendant removed its versions of the standards
at issue in this case from its website at the
suggestion of the Court. O’Brien Decl. ¶ 68.
275. Since the standards were taken down by
Defendant, Plaintiffs have not received any
complaints from persons regarding any alleged
inability to access Plaintiffs’ standards that have
been incorporated by reference. O’Brien Decl. ¶
70; Reiniche Decl. ¶ 20; Berry Decl. ¶ 13.
276. The standards at issue here are only a
portion of the content on one of at least 10
websites operated by Defendant. Rubel Decl. ¶
4, Ex. 1 (Jarosz Rep. ¶ 157).
277. Defendant admitted that there will be no
long-term financial impact on Defendant if an
injunction is entered. Specifically, when asked
what impact Defendant’s inability to continue to
post standards incorporated by reference would
have on Defendant’s financial ability to survive
long term, Mr. Malamud answered, “Probably
none.” Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep.
at 219:22-220:4)
278. The only harm Mr. Malamud could
identify that Defendant would suffer if an
injunction were entered is that it “put a
tremendous amount of effort” into this project
and “one hates to have wasted” that effort.
Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at
220:6-17).

52

This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

This fact is not material to Plaintiffs’ Motion
for Summary Judgment.

Dated: December 21, 2015

Respectfully submitted,
/s/ Andrew P. Bridges
Andrew P. Bridges (admitted)
[e-mail]
Kathleen Lu (pro hac vice)
[e-mail]
Matthew B. Becker (pro hac vice)
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Telephone: [phone]
Facsimile: [phone]
David Halperin (D.C. Bar No. 426078)
[e-mail]
1530 P Street NW
Washington, DC 20005
Telephone: [phone]
Mitchell L. Stoltz (D.C. Bar No. 978149)
[e-mail]
Corynne McSherry (pro hac vice)
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

53