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

Filing 142

Amicus Brief by AMERICAN NATIONAL STANDARDS INSTITUTE, INC. (Hochman Rothell, Bonnie) Modified on 1/12/2016 (DJS).

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
AMERICAN SOCIETY FOR TESTING
AND MATERIALS d/b/a/ ASTM
INTERNATIONAL,
NATIONAL FIRE PROTECTION
ASSOCIATION, INC., and
AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIRCONDITIONING ENGINEERS, INC.
Case No. 1:13-cv-01215-TSC
Plaintiffs/Counter-Defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/Counter-Plaintiff.

BRIEF FOR AMICUS CURIAE THE AMERICAN NATIONAL
STANDARDS INSTITUTE, INC., AMERICAN SOCIETY
OF SAFETY ENGINEERS, THE INSTITUTE OF ELECTRICAL AND
ELECTRONICS ENGINEERS, INCORPORATED, INTERNATIONAL
ASSOCIATION OF PLUMBING & MECHANICAL OFFICIALS,
NATIONAL ELECTRICAL MANUFACTURERS ASSOCIATION,
NORTH AMERICAN ENERGY STANDARDS BOARD,
AND UNDERWRITERS LABORATORIES INC.

STATEMENT OF INTERESTED PARTIES
The undersigned counsel of record certifies that the following listed persons
have an interest in the outcome of this case. These representations are made in
order that the judgment of this Court may evaluate possible disqualification or
recusal.
American National Standards Institute, Incorporated, Amicus Curiae
American Society of Safety Engineers, Amicus Curiae
The Institute of Electrical and Electronics Engineers, Incorporated, Amicus Curiae
International Association of Plumbing & Mechanical Officials, Amicus Curiae
National Electrical Manufacturers Association, Amicus Curiae
North American Energy Standards Board, Amicus Curiae
Underwriters Laboratories Inc., Amicus Curiae

Morris, Manning & Martin, LLP
1401 Eye Street, N.W., Suite 600
Washington, D.C. 20005
Carter Ledyard & Milburn LLP
Two Wall Street
New York, NY 10005

Attorneys of Record for Amici Curiae

i

TABLE OF CONTENTS

CONCISE STATEMENT OF IDENTITY OF AMICI CURIAE, INTEREST IN
THE CASE, AND SOURCE OF AUTHORITY TO FILE.......................................1
ARGUMENT .............................................................................................................5
I. LOSS OF COPYRIGHT IN STANDARDS WOULD PROFOUNDLY
HARM SDOs, FEDERAL, STATE AND LOCAL GOVERNMENTS AND
THE PUBLIC ..................................................................................................5
A. SDOs Would Be Unable to Fund Standards Development If Deprived of
Revenues from Standards Sales .................................................................5
B. Governments Would Lose the Ability to Adopt Standards Into Law or
Utilize Standards Themselves ....................................................................8
C. The Public Would Be Harmed By Lost Efficiencies And Lost
Opportunity Costs .....................................................................................12
D. United States Industry Would Be Diminished .........................................14
II. THERE IS NO CONGRESSIONAL OR JUDICIALLY CREATED
COPYRIGHT EXCEPTION FOR PRIVATELY AUTHORED WORKS
THAT HAVE BEEN REFERENCED IN A LAW AND DUE PROCESS
DOES NOT REQUIRE THE CREATION OF SUCH AN EXCEPTION ...14
A. The Copyright Act Supports the D.C. Circuit and Congress’ Approach to
Construing the Copyright Act When Privately Created Works are Used
by the Government ...................................................................................15
B. Government Policy Supports Copyright Protection .................................20
C. Judicial Precedent Supports Copyright Protection ...................................21
D. Recognizing Private and Public Interests Avoids A Substantial
Constitutional Takings Question ..............................................................24
CONCLUSION ........................................................................................................25
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TABLE OF AUTHORITIES
Constitutional Provisions
Article I, § 8, U.S. Constitution ...............................................................................15
Cases
Building Off. & Code Amd. v. Code Technology, Inc., 628 F.2d 730
(1st Cir. 1980) ..........................................................................................................23
CCC Info. Servs., Inc. v. Maclean Hunter Market Reports, Inc., 44 F.3d 61
(2d Cir. 1994) .................................................................................................... 21, 24
M.B. Schnapper Pub. Affairs Press v. Foley, 667 F.2d 102 (D.C. Cir. 1981).........18
Oracle Am. Inc. v Google, Inc., 750 F.3d 1339 (Fed.Cir. 2014) ...............................6
Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516
(9th Cir. 1997) ............................................................................................. 21, 23, 24
Roth v. Pritikin, 710 F.2d 934 (2nd Cir. 1983) ........................................................25
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984) ................15
United Video, Inc. v. FCC, 890 F.2d 1173 (D.C. Cir. 1989) ............................ 16, 24
Veeck v S.Bldg Code Cong., Intl, Inc., 293 F.3d 791 (5th Cir. 2002) .......... 6, 22, 24
Walton v. United States, 80 Fed. Cl. 251 (Ct. Fed. Cl. 2008) .................................16
Statutes
17 U.S.C. § 101 ........................................................................................................16
17 U.S.C. §105 ............................................................................................ 16, 17, 19
17 U.S.C. § 201(e) ...................................................................................................25
5 U.S.C. § 552(a)(1) ...................................................................................................9
Other Authorities
H.R. Rep. No. 1476, 94th Cong., 2d Sess. 59 (1976) ....................................... 18, 19
iii

Proposed Revisions to OMB A-119 79 FR 8207 (February 11, 2014) ...................23
U.S. Code Cong. & Admin.News 1976, pp. 5659, 5672 .................................. 18, 19
Webster’s New Collegiate Dictionary .....................................................................16
Regulations
79 Fed. Reg. 66267 ..................................................................................................10
OMB Circular A-119 .......................................................................................... 8, 10
Standards for Business Practices and Communication Protocols for
Public Utilities, Final Rule, 74 Fed. Reg. 63,287, 63,302 (Dec. 3, 2009) ...............14

iv

CONCISE STATEMENT OF IDENTITY OF AMICI CURIAE, INTEREST
IN THE CASE, AND SOURCE OF AUTHORITY TO FILE
The standards and codes involved in the present case are part of a large
genre of creative works, including standards, model codes and other reference
works (collectively referred to as “standards”), that are generally developed by
private, not-for-profit organizations and may be selected, when appropriate, for use
and adoption, in whole or in part, by government instrumentalities throughout the
United States. Amici curiae are all organizations that are involved in the
coordination, creation, or use of these socially important works.
American National Standards Institute, Incorporated (“ANSI”) is a not-forprofit membership organization that, for more than 97 years, has administered and
coordinated the voluntary standardization system in the United States. ANSI
facilitates the development of American National Standards (“ANSs”) by
accrediting the procedures of standards developing organizations (“SDOs”). These
SDOs work cooperatively to develop voluntary national consensus standards that
are used in virtually every industry sector and in all aspects of daily life, from toys
and food safety to IT and the built environment. Accreditation by ANSI signifies
that the procedures used by the standards developer in connection with the
development of ANSs meet ANSI’s essential requirements for openness, balance,
consensus and due process. Each of the Plaintiffs and each of the other amici are

1

among the 243 ANSI Accredited SDOs (“ASDs”), and they are representative of
ANSI’s broader ASD community.
American Society of Safety Engineers (“ASSE”) was founded in 1911 and is
the world’s oldest professional safety society. ASSE is a global association of
occupational safety professionals representing more than 36,000 members
worldwide. The Society is an advocate for occupational safety and health
professionals.
The Institute of Electrical and Electronics Engineers, Incorporated (“IEEE”)
is a not-for-profit professional organization dedicated to the advancement of
technology for humanity with a 125-year history of technological innovation. The
organization comprises more than 400,000 members who participate in its
activities across the world in more than 160 countries. IEEE is a leading developer
of standards, with an active portfolio of over 1,700 standards and projects under
development. These standards affect a wide range of industries including: power
and energy, information technology, telecommunications, transportation, and
nanotechnology, information assurance.
International Association of Plumbing & Mechanical Officials (“IAPMO”)
coordinates the development of plumbing and mechanical codes and standards to
meet the specific needs of individual jurisdictions and industry both in the United

2

States and abroad. IAPMO is a not-for-profit membership organization that was
founded in 1926.
National Electrical Manufacturers Association (“NEMA”) is the association
of electrical equipment manufacturers, founded in 1926. NEMA sponsors the
development of and publishes over 500 standards relating to electrical products and
their use. NEMA’s member companies manufacture a diverse set of products
including power transmission and distribution equipment, lighting systems, factory
automation and control systems, building controls and electrical systems
components, and medical diagnostic imaging systems.
North American Energy Standards Board (“NAESB”) was formed in 1994.
NAESB maintains a membership of over three hundred corporate members
representing the wholesale gas, wholesale electric, retail gas and retail electric
markets and has more than two-thousand participants active in standards
development.
Underwriters Laboratories Inc. (“UL”) is an independent, not-for-profit
standards developer dedicated to promoting safe living and working environments
since its founding in 1894. UL’s standards provide a critical foundation for the
safety system in the United States and around the world, as well as promote
innovation and environmental sustainability. With over 120 years of experience

3

and the development of over 1,500 standards, UL advances safety science through
careful research and investigation.
Amici Curiae represent a wide range of SDOs with varied purposes and
different audiences that exist to benefit our society. The standards created and
administered by SDOs are often later used and adopted by local and state
governments and federal authorities throughout the United States who do not
otherwise have the necessary facilities and resources to develop them
independently. ASSE, IEEE, IAPMO, NEMA, NAESB and UL are just six of the
hundreds of private SDOs that support their standards development activities
through revenues derived from the publication, sale, and licensing of standards
made possible by the protection of the copyright laws.
Amici believe that defendant Public.Rescource.Org, Inc.’s position and
asserted justification for its infringing conduct, as described in Count I of its
Counterclaim for Declaratory Judgment, ¶¶174-195 (filed September 27, 2013) and
elsewhere, is an ill-advised departure from established principles of law and policy.
The copyrighted standards at issue in this case are part of a large and important
ecosystem of creative works developed by not-for-profit SDOs. SDOs create and
maintain at their own substantial expense their copyrighted standards and make
them available to interested parties, government regulators, and the public at large.
Loss of copyright protection for these works would drastically undermine the
4

ability of SDOs to fund the ongoing creation and updating of these important
works, and would therefore harm the governments and the public who benefit from
and rely on the work of these SDOs.
ARGUMENT
Defendant’s primary position is that because plaintiffs’ privately authored
standards have been referenced in statutes and regulations, including the Code of
Federal Regulations, those works have forever lost their copyright protection. If
this sweeping contention were accepted, it would profoundly harm private SDOs,
governments – state, local, and federal – who benefit from private standards
development, and the public who benefit from standardization’s efficiencies in
hundreds of industries, including improvements in the way product components
interoperate, and the avoided fiscal burden that would result from government
authorship of standards. Part I below addresses the policy considerations that
weigh against defendant’s position, and Part II addresses the legal considerations
that support amici’s position.
I.

LOSS OF COPYRIGHT IN STANDARDS WOULD PROFOUNDLY
HARM SDOs, FEDERAL, STATE AND LOCAL GOVERNMENTS
AND THE PUBLIC
A. SDOs Would Be Unable to Fund Standards Development If Deprived
of Revenues from Standards Sales
Defendant’s position that creative works such as those developed by the

SDOs enter the public domain the moment any government instrumentality adopts
5

them by reference in a law has the largest implications for copyright holders like
amici who develop standards that a government may elect to use and reference in
law. SDOs rely on copyright protection and the ability it affords to generate
revenue from the sale and licensing of the works they create to sustain their ongoing standards creation, refinement, and updating.
The development of useful, high-quality, up-to-date, consensus-based
standards is a costly, time consuming process. Drafting standards requires wideranging creative input from a variety of concerned constituencies and sources of
expertise,1 including representatives of the consuming public, industry, and the
public safety and regulatory community. In addition, the standards drafting process
draws heavily on the administrative, technical, and support services provided by
the organizations that develop them.

1

The defendants’ assertion that technical standards are not copyrightable because
they lack creativity or recite facts, see Defendants’ Memorandum of Points and
Authorities at 30-34 (Dkt. No. 121-1), is wrong. Veeck v S.Bldg Code Cong., Intl,
Inc. 293 F.3d 791, 802 (5th Cir. 2002) (“We emphasize that in continuing to write
and publish model building codes, SBCCI is creating copyrightable works of
authorship.”). The content of standards publications reflects technical and other
judgments and opinions on matters of safety, economic and manufacturing
efficiency, energy efficiency, best practices, and a variety of other subjects;
standards development bodies consider the choice of words, the order in which
content is presented, and make numerous other creative choices about the content,
including whether content is appropriate for inclusion in a standard. See Plaintiffs’
Memorandum of Law in Support of Their Motion for Summary Judgment at 5-7
(Dkt. No. 118-1); see also Oracle Am. Inc. v Google, Inc., 750 F.3d 1339, 13611367 (Fed.Cir. 2014) (describing Oracle’s creative choices).
6

NEMA and UL, for example, arrange for hundreds of standards-related
meetings that take place yearly. They provide logistical, administrative, and
editorial support to the hundreds of technical committees that draft and regularly
update standards, and maintain a permanent staff of engineers, technical program
managers, and administrative staff who support their standards activities.
These costs are commonly underwritten, in whole or significant part, by the
revenues made possible from the copyright-protected sales and licensing of the
standards themselves. For example, ASSE covers the costs of its development of
occupational safety and health standards through the revenues derived from sales
of those standards. For its part, NEMA allocates half of the royalties earned from
the sale of standards developed by a given technical committee to the committee’s
next annual budget thereby reducing the participants’ cost of supporting the
committee’s ongoing work. Similarly, IAPMO uses all sales of codes and
standards to fund its not-for-profit mission and UL funds its standardsdevelopment activities from the licensing of its standards. Amicus ANSI, while
not an SDO, similarly funds mission-related activities with revenues derived from
the sale of standards under licensing agreements with the SDO copyright holders.
Without copyright protection, others would be free to expropriate and sell or give
away the works created or licensed by SDOs, and the ability of ANSI and these

7

SDOs to sustain their standards coordination and development activities, as well as
other mission-related programs, would be seriously compromised.
B. Governments Would Lose the Ability to Adopt Standards Into Law
or Utilize Standards Themselves
The impact of copyright destruction, however, would be felt by more than
just the SDOs whose copyrights would be lost. Private standards development
provides federal, state, and local governments with valuable and high quality codes
and standards that are created at no cost to taxpayers, and governments at all levels
have recognized the importance of privately developed codes and standards by
adopting them in great numbers.
In recognition of the benefits of private standards development, the federal
government has long made it a policy to adopt such standards unless there is a
valid reason for not doing so.

That policy is expressed by the Office of

Management and Budget (“OMB”) in Circular A-119, which directs all federal
agencies to incorporate “in whole, in part, or by reference” privately developed
standards for regulatory and other activities “whenever practicable and
appropriate.” OMB Circular A-119, 63 Fed. Reg. 8546, 8554-55. OMB Circular
A-119 expressly acknowledges that doing so “[e]liminate[s] the cost to the
government of developing its own standards.” Id. at 8554. For this policy to
succeed, private authors must have an incentive to create works useful to the
government. OMB thus requires agencies to “observe and protect the rights of the
8

copyright holder and any other similar obligations.” Id. at 8555. This policy of
federal government use of privately developed standards was codified and fortified
in the National Technology Transfer and Advancement Act of 1995 (“NTTAA”).
Under defendant’s position, however, government use or adoption of a
private work as part of its regulatory scheme would, by definition, invalidate the
author’s copyright in contravention of OMB A-119 and the NTTAA. Importantly,
the Freedom of Information Act (“FOIA”) provides an effective mechanism to
balance the rights of copyright holders in standards incorporated by reference with
the public’s right to access the law.

Specifically, FOIA expressly authorizes

reference by the Code of Federal Regulations (“CFR”) to materials incorporated by
reference, with the approval of the Office of Federal Register (“OFR”), that are
“reasonably available to the class of persons affected thereby.” 5 U.S.C. Section
552(a)(1). In other words, a standard is eligible for incorporation by reference only
if the federal agency wishing to include the standard determines it is “reasonably
available” to the class of persons affected by the anticipated public law.
The “reasonably available” approach was recently reaffirmed by the OFR in
response to a petition signed by a number of petitioners, including defendant.2
That petition asked the National Archives and Records Administration (“NARA”)

2

See Petition submitted by Peter Strauss et al, February 21, 2012.
http://www.gpo.gov/fdsys/pkg/FR-2012-02-27/pdf/2012-4399.pdf
9

to define “reasonably available” in the regulations to require free access to
standards incorporated by reference into the CFR. The OFR rejected this request,
reaffirming in its Final Rule on November 7, 2014, that “reasonably available”
means that the standard is accessible to any potential user but does not require that
the standard be available without a fee. 79 Fed. Reg. 66267 (November 7, 2014).
Instead, the OFR announced non-confiscatory revisions to its rules, including
clarifying that government agencies “should collaborate with the [SDOs] and other
publishers of [incorporated by reference] materials, when necessary, to ensure that
the public does have reasonable access to the referenced documents.” Id. at 66268.3
As the federal policy reflected in OMB Circular A-119, the NTTAA, and the
OFR’s recent rulemaking makes clear, the U.S. government has important interests
at stake and the destruction of copyright relating to standards incorporated by
reference would have a damaging impact on the federal government. Indeed,
according to the U.S. National Institute of Standards and Technology (“NIST”),
federal government agencies engage in standardization in a wide range of missionspecific roles, including contributing to development of standards in the private
sector, ensuring that standards are not used as technical barriers to trade by trading
3

OMB recently issued a Request for Comments on a Proposed Revision of OMB
Circular No. A-119.
See https://www.whitehouse.gov/sites/default/files/omb/inforeg/revisions-to-a-119for-public-comments.pdf. An updated Circular is expected to be issued by OMB
in the near future.
10

partners, using standards for procurement or regulatory actions, and addressing
competition-related aspects of standards-setting activities.4
The federal government also itself relies heavily on privately developed
standards to serve diverse regulatory objectives. For example, the Federal Energy
Regulatory Commission (“FERC”) uses incorporation by reference to make
standards developed by NAESB mandatory for participants in the wholesale
energy markets. The Occupational Safety and Health Administration (“OSHA”)
uses voluntary consensus standards developed by amicus ASSE in health and
safety regulation. The use of consensus standards reduces the cost to agencies due
to economies of scale resulting from using the same standards for government as
are used for the commercial sector, and spurs innovation and greater product
choice.
At the state and local level, as is the case at the Federal level, it is fair to say
that governments could not effectively function without privately developed
standards. Virtually all safety regulation requires expertise and experience that is
beyond the resources of such governments alone to marshal. A prime example of
this reliance is in the regulation of buildings and their related systems such as
4

See Testimony of Mary H. Saunders, Director, Standards Coordination Office
National Institute of Standards and Technology U.S. Department of Commerce
Before the House Committee on Science, Space, and Technology, Subcommittee
on Technology and Innovation, February 29, 2012, available at
https://science.house.gov/sites/republicans.science.house.gov/files/documents/heari
ngs/HHRG-112-SY19-WState-MSaunders-20120228.pdf
11

heating and cooling, plumbing, and electrical. Virtually all state and local
plumbing and mechanical codes are based on a model building code. Amicus
IAPMO has, since its inception in 1926, developed the Uniform Plumbing Code on
a three-year cycle. The 2015 edition is a prodigious work exceeding 400 pages and
covering the entire plumbing system. The UPC has been adopted, in totality or
with amendments, in 17 states and territories, as well as in numerous
municipalities.
SDOs like amici, in furtherance of their not-for-profit safety and welfare
purposes, make available the use of their works by governmental entities in setting
safety and other regulations when those entities deem it in the public interest.
They do so with the understanding that these works will retain their copyright and
have to be made reasonably available to anyone who needs them in order to
comply with the law or to participate in the government programs that incorporate
those works. Indeed, for these works to have any utility for the governments that
utilize them, they must be made generally and reasonably available, and it is in the
interests of the SDOs to see that they are.
C. The Public Would Be Harmed By Lost Efficiencies And Lost
Opportunity Costs
The destruction of copyrights in standards ultimately would have the
greatest negative impact on the very group that the defendant in this case purports
to represent – citizens whose access to the law is allegedly compromised because
12

they may have to pay for a standard. Indeed, the public has the most to lose if
copyright is lost every time federal, state, or local governments incorporate
standards into law.
If SDOs lose copyright in standards, they may be forced to increase
stakeholder participation fees in order to offset the loss of revenues from the sale
of standards. This would, in turn, disenfranchise consumers, small businesses, and
local governments and potentially result in a situation where those with money
could have disproportionately increased influence over others. This could also
result in fewer and lower quality standards for use by the consuming public. The
lack of industry-wide contributions and fewer participants in the standards
development process would result in less transparency, diminished inclusivity, and
standards becoming less broad-based.
Equally significant, if SDOs lose copyright in their standards, governments
may be compelled to develop more detailed regulations afresh, resulting in
increased regulatory costs that would be passed on to consumers. If for example
NAESB could no longer afford to stay in the standards-writing space and FERC
took over the task of writing standards, it probably would be done through a
substantially less efficient and more costly process. FERC has explained that
“[f]rom our experience, the NAESB process is a far more efficient and cost
effective method of developing technical standards for the industries involved than
13

the use of a notice and comment rulemaking process involving numerous technical
conferences in Washington that all believe they have to attend,” concluding that
“the benefits of having a well-established, consensus process outweigh whatever
costs non-members may incur in having to obtain copies of the standards.”5
D. United States Industry Would Be Diminished
Finally, if SDOs were forced to withdraw from standards development
because they could no longer fund their operations, some standards for new
technologies could go undeveloped in the United States. The United States, as a
leader in innovation, would be negatively impacted. This could result in fewer
opportunities for U.S. companies and workers in industries driven by
standardization activities.

The issue extends beyond leadership in standards

development work: standards are a tremendous part of market access issues that
are being negotiated as part of the Trans-Pacific Partnership (“TPP”) and
Transatlantic Trade and Investment Partnership (“TTIP”) trade agreements.
II.

THERE IS NO CONGRESSIONAL OR JUDICIALLY CREATED
COPYRIGHT EXCEPTION FOR PRIVATELY AUTHORED
WORKS THAT HAVE BEEN REFERENCED IN A LAW AND DUE
PROCESS DOES NOT REQUIRE THE CREATION OF SUCH AN
EXCEPTION
In the face of statute, policy, and practice to the contrary, defendant invokes

constitutional principles of due process, claiming that these principles require the
5

Standards for Business Practices and Communication Protocols for Public
Utilities, Final Rule, 74 Fed. Reg. 63,287, 63,302 (Dec. 3, 2009).
14

destruction of a copyright owner’s property rights in a privately developed
standard the moment that any governmental authority adopts it, and that this is
required in order to ensure the public’s right to gain full access to and comment on
the laws. This Court must decide, therefore, whether as a matter of law it should
establish a new principle to invalidate otherwise valid copyrights. For the reasons
that follow, it should not.
A. The Copyright Act Supports the D.C. Circuit and Congress’
Approach to Construing the Copyright Act When Privately Created
Works are Used by the Government
Copyright is statutory in nature. “The Congress shall have Power . . . To
Promote the Sciences and Useful Arts, by securing for limited Times to Authors . .
. the exclusive Right to their respective Writings . . ." United States Constitution,
Article I, Section 8. “[T]he limited grant is a means by which an important public
purpose may be achieved. It is intended to motivate the creative activity of authors
. . . by the provision of a special reward, and to allow the public access to the
products of their genius after the limited period of exclusive control has expired.”
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984).
Statutory construction of the Copyright Act relies on traditional principles.
“In determining the intent of Congress, we must look to the particular statutory
language at issue, as well as the language and design of the statute as a whole, and
we must employ traditional tools of statutory construction, including, where
15

appropriate, legislative history.” United Video, Inc. v. FCC, 890 F.2d 1173, 1184
(D.C. Cir. 1989) (citations omitted). The unambiguous text of the 1976 Copyright
Act, Sections 101 and 105, confirms that the abridgement of copyright in “any
work” of the United States Government --- whether in the form of judicial
opinions, statutes, regulations, guidelines, reports, or any other form --- only
occurs when the “work [is] prepared by an officer or employee of the United States
Government as part of that person’s official duties.”
Section 105 of the Copyright Act states: “Copyright protection under this
title is not available for any work of the United States Government, . .” 17 U.S.C.
§105. And Section 101 of the Copyright Act defines a “work of the United States
Government” as a “work prepared by an officer or employee of the United States
Government as part of that person’s official duties.” 17 U.S.C. § 101.
“[A]ccording to the well-established rules of statutory construction, the court must
ascribe the ‘ordinary, contemporary, common meaning’ to the terms [in the
Copyright Act]." Walton v. United States, 80 Fed. Cl. 251, 272 (Ct. Fed. Cl. 2008),
aff’d, 551 F.3d 1367 (Fed. Cir. 2009). In the context of this case, the ordinary and
common meaning of the words “prepared by” in this sentence is obvious: “to put
into written form.” Webster’s New Collegiate Dictionary at 909 (1973). Privately
developed codes, standards and other reference works are not put into written form
by government officers or employees; they were not “prepared by” officers or
16

employees of the United States Government as part of their official duties. By the
plain language of Section 101 of the Act, these works are not a “work of the United
States Government,” and accordingly these works are not something for which
copyright protection is “unavailable” under Section 105. Congress has clearly
decided this question.
Confirmation of this construction of the plain language of Section 105 of the
Act can be found in Congress’ explicit decision not to include within the scope of
Section 105 works prepared by non-government employees and commissioned by
the United States. Congress deliberately chose not to declare commissioned works
“unavailable for copyright protection,” and instead stated that the question of
copyright in these cases could be left to the Congress enacting a statute, the agency
enacting a regulation or the contract that commissioned the work from a private
party after balancing the various interests. Amici point out that this is precisely the
approach taken by OMB and OFR recently during their respective regulatory
reviews that addressed the defendant’s legal proposition that is now before the
Court. In those reviews, the two federal offices considered the implications of the
concept of “reasonably available” and supported the long-standing policy of
upholding the copyrights in standards incorporated by reference. See discussion
supra at pages 8-10 and infra at page 20.

17

As explained by the House Judiciary Committee report on the 1976 revision
to the Copyright Act:
The bill deliberately avoids making any sort of outright,
unqualified prohibition against copyright in works prepared under
Government contract or grant. There may well be cases where it
would be in the public interest to deny copyright in the writings
generated by Government research contracts and the like; it can be
assumed that, where a Government agency commissions a work for its
own use merely as an alternative to having one of its own employees
prepare the work, the right to secure a private copyright would be
withheld. However, there are almost certainly many other cases where
the denial of copyright protection would be unfair or would hamper
the production and publication of important works. Where, under the
particular circumstances, Congress or the agency involved finds that
the need to have a work freely available outweighs the need of the
private author to secure copyright, the problem can be dealt with by
specific legislation, agency regulations, or contractual restrictions.
H.R. Rep. No. 1476, 94th Cong., 2d Sess. 59 (1976), U.S. Code Cong. &
Admin.News 1976, pp. 5659, 5672 (emphasis supplied).
This is the law in this Circuit: “It is readily observable, therefore, that the
language of the new Copyright Act does not prohibit copyright protection for
federally commissioned works.” M.B. Schnapper Pub. Affairs Press v. Foley, 667
F.2d 102, 108-09 (D.C. Cir. 1981).

Schnapper expressly acknowledged the

Copyright Act’s ability to recognize both private and public interests when private
works are used by the Government:
Without laying down a broad rule, we are reluctant to cabin the
discretion of government agencies to arrange ownership and
publication rights with private contractors absent some reasonable
showing of a congressional desire to do so. The legislative history
18

noted above indicates a desire to vest the government with some
flexibility in making these arrangements.
Schnapper, 667 F.2d at 109.
Private standards referenced in federal statutes or federal agency regulations
are an even more distinct species of works not “prepared by an officer or employee
of the United States Government as part of that person’s official duties” than a
commissioned work. While they share a common attribute with a commissioned
work because they are not prepared by an officer or employee of the United States
Government, they are even more remote from a “work of the United States
Government” than a commissioned work because they were prepared by nongovernmental entities often well-before the government took an interest in the
copyrighted codes, standards, and other reference works.6 Privately developed,
copyrighted codes, standards, and other reference works incorporated by reference
in laws and regulations deserve the availability of copyright protection even more
so than commissioned works. They do not lose copyright protection under the
clear terms of Section 105 of the Copyright Act, and the judiciary should recognize
that the government is vested with “some flexibility in making arrangements” to
preserve the copyright of the standards development organizations for the works
they prepared.
6

Clearly, there is no “double subsidy” issue that Congress indicated might be a
concern in the case of commissioned works. H.R. Rep. No. 1476, 94th Cong., 2d
Sess. 59 (1976), U.S. Code Cong. & Admin.News 1976, pp. 5659, 5672.
19

B. Government Policy Supports Copyright Protection
As discussed above, government policy asks government agencies who
decide to incorporate privately developed codes and standards in their regulations
whether the codes and standards are “reasonably available.” The holding sought
by defendant from this Court would be contrary to this firmly established
government policy, and to the wide practice of federal, state, and local
governments throughout the United States in adopting and referencing, without
controversy, copyright-protected, privately authored works.
In keeping with the “reasonably available” requirement, amici make their
standards available through multiple distribution channels, including on-line
“reading rooms” and retail sales sites, and they offer them in a variety of formats,
including subscriptions, compilations, and various other electronic products.
ANSI, for example, offers an IBR Portal that provides free, read-only, online
access to a number of standards that have been incorporated by reference. NEMA
relies upon the ANSI IBR Portal to host 24 of its standards that have been
incorporated by reference in federal regulations. IEEE uses the ANSI IBR Portal
to make available all of its standards that are referenced in the U.S. Code of
Federal Regulations. IAPMO also uses the ANSI IBR Portal to make available all
of its standards that have been incorporated by reference. UL hosts its own IBR
portal that provides free, read-only, online access to its standards that have been
20

incorporated by reference. ASSE makes “tech briefs” freely available for each of
its standards. NAESB provides free access to its standards through requests of
waivers and requests for access through an electronic product that allows for
electronic review for a limited period, at no fee. The plaintiffs make their standards
available in this manner as well. Complaint at ¶¶103 – 105.
There is no compelling policy reason to treat model codes developed by
private SDOs differently than any other standard or reference work referenced in
law or regulation if it is reasonably available to the public.
C. Judicial Precedent Supports Copyright Protection
The weight of judicial precedent does not support invalidating copyright in
this case. As two circuit courts have observed, works under copyright do not enter
the public domain when they are referenced by government bodies in law. Practice
Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516, 519-20 (9th Cir. 1997); CCC
Info. Servs., Inc. v. Maclean Hunter Market Reports, Inc., 44 F.3d 61, 73-74 (2d
Cir. 1994). Specifically, the Second and Ninth Circuits have held that referencing
a standard in federal and state regulations does not extinguish the copyright interest
in the adopted work. Practice Mgmt., 121 F.3d at 518-20 (holding that an
American Medical Association catalogue of medical procedures did not lose its
copyright when it was incorporated into federal regulations governing Medicare
and Medicaid reimbursement); CCC Info. Servs., 44 F.3d at 73-74 (holding that a
21

privately-developed guide to used car valuation did not enter the public domain
after it was incorporated into several states' insurance statutes and regulations).
Amici acknowledge that a closely divided en banc panel of the Fifth Circuit
in Veeck v S.Bldg Code Cong., Intl, Inc., 293 F.3d 791, 803-05 (5th Cir. 2002) held
that model codes incorporated into local law without modification results in the
evisceration of copyright in those jurisdictions, but we respectfully submit for the
reasons we have stated that if those model codes are reasonably available to the
public for viewing there is no compelling policy reason to treat these model codes
differently than any other referenced work and deny copyright protection in those
jurisdictions. In any event, the Fifth Circuit held that other referenced works,
including standards and other documents, were entitled to copyright protection as
the First and Ninth Circuits have held. Veeck, 268 F.2d at 803-05.
Furthermore, as noted supra, the OFR considered in its Final Rule “the
recent developments in Federal law, including the Veeck decision,” and stated that
the developments have not “eliminated the availability of copyright protection for
privately developed codes and standards referenced in or incorporated into Federal
Regulations.” The OMB has stated that “the costs of standards development are
substantial, and requiring that standards be made available ‘free of charge’ will
have the effect of either shifting those costs onto others or else depriving standards
developing bodies of the funding through which many of them now pay for the
22

development of these standards.

Such changes could have serious adverse

consequences on important governmental objectives, including the ability of U.S.
regulators to protect the environment and the health, welfare, and safety of U.S.
workers and consumers.” Proposed Revisions to OMB A-119 79 FR 8207
(February 11, 2014).
This case does not involve any attempt by Plaintiffs to withhold copyrighted
standards or otherwise prevent discussion of these works nor is there any evidence
of record that they have used copyright to do so. This is why the rule adopted by
the Second and Ninth Circuits makes more sense than the rule advanced by
Public.Resource.Org.

The due process concern that “citizens must have free

access to the laws which govern them," Building Off. & Code Amd. v. Code
Technology, Inc., 628 F.2d 730, 734 (1st Cir. 1980), and that copyright protection
for these types of works might constrict entirely citizens' access to the laws, id. at
734-35, ignores the critical fact that it would be contrary to the SDO copyright
owner's interest to prevent broad dissemination of these standards. See Practice
Mgmt., 121 F.3d at 519.

Indeed, the standards are developed precisely for the

purpose of being disseminated; the issue for the SDOs is that their copyrights be
protected so that they can continue to afford to develop standards.
Finally, the balance of competing interests at stake in such cases favors
preserving copyright protection for works incorporated by reference into public
23

enactments. The SDO community that develops standards serves an important
public function and arguably does a better job than could the government alone in
seeing that complex yet essential regulations are drafted, kept up to date and made
available. If the amici SDOs were forced to give up their copyright interests once
a government entity enacted their works into law, there would be little incentive to
create such works, or at least to offer them to the government. Practice Mgmt., 121
F.3d at 518-19. 7
D. Recognizing Private and Public Interests Avoids A Substantial
Constitutional Takings Question
Indeed, while addressing no actual due process notice problem, a rule that
the adoption of a standard by a legislature or administrative body deprived the
copyright owner of its property would, as one court observed, “raise very
substantial problems under the Takings Clause of the Constitution.” CCC Info.
Servs., 44 F.3d at 74, cert. denied, 516 U.S. 817 (1995); Practice Mgmt., 121 F.3d
at 520, cert. denied, 524 U.S. 952 (1998) (same concern). When considering the
construction of Sections 101 and 105 of the Copyright Act, this Court should
consider “the language and design of the statute as a whole,” United Video, supra

7

Judge Wiener, joined by 5 other members of the Fifth Circuit’s en banc panel in
Veeck, recognized the importance of balancing interests and not adopting an
inflexible per se rule, such as that advocated by PublicResource.Org. Veeck., 293
F.3d at 826 (Wiener, J., dissenting). Amici commend Judge Wiener’s analysis to
this honorable court.
24

at 1184, and render these sections consistent with Section 201(e)8 to foreclose a
Takings Clause problem.
CONCLUSION
For the forgoing reasons, amici respectfully ask this honorable Court to enter
judgment for Plaintiffs.
DATED: January 11, 2016

Respectfully submitted,

MORRIS, MANNING & MARTIN,
LLP

CARTER LEDYARD & MILBURN
LLP

/s/ Bonnie Y. Hochman Rothell
Bonnie Y. Hochman Rothell
D.C. Bar No.: 421606
1401 Eye St., NW, Suite 600
Washington, D.C. 20005
Phone: [phone]
Fax: [phone]
[e-mail]

/s/ Gerald W. Griffin
Gerald W. Griffin
Admitted Pro Hac Vice
Two Wall Street
New York, NY 10005
Phone: [phone]
Fax: [phone]
[e-mail]

Local Counsel for Amicus Curiae

Counsel for Amicus Curiae

17 U.S.C. §201(e) (“. . . no action by any governmental body or other official or
organization purporting to seize, expropriate, transfer, or exercise rights of
ownership with respect to the copyright, or any of the exclusive rights under a
copyright, shall be given effect under this title, except as provided under title 11.”).
See also Roth v. Pritikin, 710 F.2d 934, 939 (2nd Cir. 1983) (Plaintiff’s
interpretation of section of the Copyright Act raised serious Constitutional
questions under Takings Clause).
8

25

CERTIFICATE OF SERVICE
I HEREBY certify that on this 11th day of January 2016, a true and correct
copy of the foregoing document was filed with the Clerk of Court using the
Court’s CM/ECF system, which will serve notice of such filing upon all counsel of
record.
/s/ Bonnie Y. Hochman Rothell

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