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

Filing 155

REPLY to opposition to motion re #118 MOTION for Summary Judgment filed by AMERICAN SOCIETY FOR TESTING AND MATERIALS, AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC., NATIONAL FIRE PROTECTION ASSOCIATION, INC.. (Attachments: #1 Supplemental Statement of Undisputed Facts, #2 Disputes with Defendant's Statement of Facts, Evidentiary Objections and Opposition to Request for Judicial Notice, #3 Response to Defendant's Statement of Facts, #4 Response to Defendant's Evidentiary Objections, #5 Declaration of Steven Comstock, #6 Declaration of Christian Dubay, #7 Supplemental Declaration of Thomas O'Brien, #8 Supplemental Declaration of Jordana Rubel, #9 Supplemental Declaration of James Thomas)(Fee, J.) Modified on 1/22/2016 to correct linkage (td).

IN THE 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 AIR CONDITIONING
ENGINEERS,

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

Plaintiffs/Counter-defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/Counterclaimant.
PLAINTIFFS’ RESPONSE TO DEFENDANT’S STATEMENT OF DISPUTED FACTS
Plaintiffs submit, in support of its Motion for Summary Judgment and Permanent
Injunction, these responses to Defendant’s Statement of Disputed Facts.
Defendant must establish that there are genuine disputes as to material facts through
citations to evidence that reveals this genuine dispute or by showing that there is no admissible
evidence regarding a material fact. Fed. R. Civ. P. 56(c)(1)(A)-(B). On those issues where
Defendant “will bear the burden of proof at trial on a dispositive issue”—here Defendant’s
affirmative defenses—it must “go beyond the pleadings and . . . designate ‘specific facts
showing that there is a genuine issue for trial.’” Celotex Corp. v. Catrett, 477 U.S. 317, 324
(1986) (citations omitted).
Defendant does not carry its burden. Each of Defendant’s purported disputes can be
explained as (1) Defendant’s characterization of a dispute of the application of law to undisputed

1

facts as a disputed fact (McDermott Int'l, Inc. v. Wilander, 498 U.S. 337, 356 (1991) (“summary
judgment . . . is mandated where the facts and the law will reasonably support only one
conclusion.”)); (2) Defendant’s failure to create a genuine dispute of fact material to Plaintiffs’
Motion for Summary Judgment (Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp. 475
U.S. 574, 586-87 (1986) (party opposing summary judgment must do more than simply show
that there is some metaphysical doubt as to the material facts)); or (3) Defendant’s improper
characterization of the evidence as not admissible (Gannon Int'l, Ltd. v. Blocker, 684 F.3d 785,
793 (8th Cir. 2012) (standard “is whether it could be presented at trial in an admissible form”)).
None of these is a reason to deny Summary Judgment in favor of Plaintiffs.
Notably, the vast majority of Defendant’s purported disputes go to a single issue:
Defendant claims that factual disputes exist as to Plaintiffs’ ownership of copyrights and
challenge numerous pieces of evidence establishing that Plaintiffs own the copyrights at issue.
This is a ruse. It is undisputed that Plaintiffs’ have registered copyrights for their Works—
creating a presumption of ownership. See MSJ 15 (citing 17 U.S.C. § 410(c)); Reply 27-28. It is
also undisputed that persons from various interested constituencies contribute to the standarddevelopment process for Plaintiffs. Not one of those persons or anyone they work for or with
whom they are affiliated contends that they, rather than the Plaintiff in issue, owns all or any part
of one of the Works at issue. There are no genuine factual disputes. Rather, Defendant has
raised a legal issue as to whether the involvement of such persons has any effect on Plaintiffs’
ownership of the copyrights. For the reasons explained in Plaintiffs’ briefing, it does not. MSJ
15-18; Reply 27-35.

2

PLAINTIFFS’ 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
DISPUTE

PLAINTIFFS’ 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.

There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, each
Plaintiff submitted undisputed evidence that its own
employees drafted language for the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley Decl. ¶¶ 3840 and Dubay Dep. 54:19-56:12; 66:20-67:12; 69:2-18)
(NFPA); and id. ¶¶ 138-41 (citing Reiniche Decl. ¶¶ 1011 and Reiniche Dep. 35:23-38:2; 97:13-98:19)
(ASHRAE).

3

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
3. In the United States, standards are
typically developed by private
organizations that have technical
expertise in the relevant area. Thomas
Decl. ¶ 8.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed. The plaintiff organizations do
not develop standards – volunteers and
members of the public develop the
standards that 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.

4

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, each
Plaintiff submitted undisputed evidence that its own
employees drafted language for the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley Decl. ¶¶ 3840 and Dubay Dep. 54:19-56:12; 66:20-67:12; 69:2-18)
(NFPA); and id. ¶¶ 138-41 (citing Reiniche Decl. ¶¶ 1011 and Reiniche Dep. 35:23-38:2; 97:13-98:19)
(ASHRAE).

PLAINTIFFS’ STATEMENT OF
PUBLIC.RESOURCE.ORG’S
MATERIAL FACTS
DISPUTE
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.

5

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 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.

PUBLIC.RESOURCE.ORG’S
DISPUTE

6

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
PUBLIC.RESOURCE.ORG’S
MATERIAL FACTS
DISPUTE
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.

7

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed as to the reason ASTM did not
increase its membership fees. ASTM
has not adduced admissible evidence to
support the alleged reason.

PLAINTIFFS’ RESPONSE

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.

There is no factual dispute. This statement is supported
by the declaration of Thomas O’Brien, Vice President
and General Counsel of ASTM, who stated that his
declaration was based on his personal knowledge.
O’Brien Decl. ¶ 2. Defendant provides no support for
its speculation that the language could have been added
after the start of this litigation.

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

There is no factual dispute. This statement is supported
by the declaration of Thomas O’Brien, Vice President
and General Counsel of ASTM, who stated that his
declaration was based on his personal knowledge.
O’Brien Decl. ¶ 2. It is also supported by a sample
membership renewal form. Id. 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.
8

There is no factual dispute. This statement is supported
by the declaration of James Thomas, President of
ASTM, who stated that his declaration was based on his
personal knowledge. Thomas Decl. ¶ 2. Defendant
points to no evidence that contradicts the statement of
Mr. Thomas.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
21. Michael Collier was the technical
contact for ASTM D87-07. Michael
Collier renewed his ASTM membership
every year between 2007-2014 using
ASTM’s online membership renewal
form. O’Brien Decl. ¶¶ 43-44.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed to the extent that ASTM D8707 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).

PLAINTIFFS’ RESPONSE

There is no disputed fact. Plaintiffs’ statement of facts
inadvertently identified ASTM D87-07, instead of D8607, however the declaration of Thomas O’Brien
correctly stated that Michael Collier was the technical
contact for D86-07. Plaintiffs have corrected this
statement in their Supplemental Statement of
Undisputed Material Facts. See Supp. SUMF ¶ 17.
Plaintiffs have presented additional evidence that
Michael Collier was the technical contact for ASTM
D86-07 and that he renewed his membership in 2007
using ASTM’s online renewal form. O’Brien Supp.
Decl. ¶¶ 20, 26, Exs. 5, 10. The ASTM organizational
membership form contains the same assignment
language as the individual membership form. See
O’Brien Decl., Ex. 11. Defendant does not dispute that
Mr. Collier completed this form every year between
2007-2014.
22. John Chandler was the technical
Disputed to the extent that ASTM
Plaintiffs’ statement of facts inadvertently identified
contact for ASTM D975-07 and D398D398-98 is not a standard at issue in this ASTM D398-98, instead of D396-98. Plaintiffs have
98. John Chandler renewed his ASTM
litigation and is not relevant.
presented additional evidence that John Chandler was
membership every year between 2007the technical contact for ASTM D975-07 and D396-98
2014 using the online membership
and that he renewed his membership in 2007 using
renewal form. O’Brien Decl. ¶¶ 45-46.
ASTM’s online renewal form. O’Brien Supp. Decl. ¶¶
21, 22, 26, Exs. 6, 7, 9.
23. Jimmy King was the technical
Disputed. There was no authoring of
There is no disputed fact. Defendant has not disputed
contact for the 1998 reapproval of ASTM original copyrightable content with the
the facts that were actually asserted in this statement.
D1217. Jimmy King renewed his ASTM reapproval of ASTM D1217 in 1998.
Plaintiffs have presented additional evidence that Jimmy
membership in 2007. O’Brien Decl. ¶¶
Plaintiffs do not allege that Jimmy King King was the technical contact for ASTM D1217-98 and
that he renewed his membership in 2007. O’Brien
47-48.
signed any copyright transfer when he
allegedly renewed his ASTM
Supp. Decl. ¶¶ 23, 25, Exs. 8, 9.
membership in 2007, nor do Plaintiffs
allege that he renewed online (unlike
Plaintiffs’ statements as to Michael
Collier and John Chandler above).

9

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
24. Randy Jennings participated in the
development of ASTM D975-07. Randy
Jennings renewed his ASTM
membership every year between 20072014 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.

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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.

There is no disputed fact. The work item registration is
distinct from ASTM’s online membership form. The
work item registration form is shown in Exhibit 13 and
requires the submitted to click on a box labeled “Agree”
to proceed. The language on the form states in relevant
part: “I hereby grant and assign to ASTM International
all and full intellectual property rights, including
copyright, in the proposed draft standard /text and any
contribution I make to ASTM International in
connection with this proposal.” Defendant
acknowledges that four of the ASTM standards at issue
were drafted after 2003. Def.’s SUMF ¶146.

10

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
26. ASTM knows of no individual or
other person other than ASTM who
claims to own any copyright interest in
any ASTM standard. O’Brien Decl. ¶ 12;
Jennings Decl. ¶¶ 7, 11, 12; Cramer Decl.
¶¶ 6, 14, 15.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed. ASTM states that the
standards at issue were jointly authored
with the members of the technical
committees who developed them, and
therefore anyone who has not 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.

11

PLAINTIFFS’ RESPONSE
There is no disputed fact. Defendant does not point to
any evidence that ASTM or Defendant knows of an
individual or other person other than ASTM who claims
to own any copyright interest in any ASTM standard.
Although ASTM did not request copyright assignments
from its members until approximately 2003, the
language in the assignments it obtained since then
retroactively assigned any copyrights that individual
possessed in any ASTM standard to ASTM. See SUMF
¶ 18.
This is not a factual dispute. It is undisputed that none
of the persons who contributed to the standarddevelopment process contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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
Disputed. ASTM proffers no evidence
development process, ASTM and its
other than a conclusory statement by
committees make it clear that all
Mr. Thomas on this point. The identical
participants’ contributions to any
declarations of Mr. Jennings and Mr.
particular standard will be merged into a Cramer make clear that the volunteer
unitary standard. Thomas Decl. ¶ 23;
members who compose the task group,
Jennings Decl. ¶¶ 18-19; Cramer Decl. ¶¶ subcommittee, and committee, not
23-24.
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 begins with an individual
registering a “work item,” which
describes the idea for a new standard that
will be published and owned by ASTM,
or moving to draft a new standard at a
subcommittee meeting. Thomas Decl. ¶
24.

Disputed. The work item does not
describe an idea for a new standard that
will be owned by ASTM, only a
standard that will be published by
ASTM.

12

PLAINTIFFS’ RESPONSE
Plaintiffs disagree that Mr. Thomas’ statement is not
permitted by a lay witness. The testimony is rationally
based on the witness’ perception and helpful to clearly
understanding the witness’ testimony and/or
determining a fact in issue. Mr. Thomas’ statement that
the broad base of stakeholders leads to the highest
possible quality of standards that are relevant in the
marketplace is not based on scientific, technical, or
other specialized knowledge within the scope of Rule
702.

There is no disputed fact. Mr. Jennings and Mr. Cramer
both declared: “The task group, subcommittee, and
committee structure through which ASTM standards are
developed makes it apparent to all participants that their
contributions will be merged with the contributions of
others and will result in a single standard.” This is a
clear statement that the structure through which ASTM
standards are developed, which is supplied by ASTM,
makes it apparent that all contributions will be merged
into a unitary standard. Jennings Decl. ¶ 19; Cramer
Decl. ¶ 24. Additionally, Mr. Cramer and Mr. Jennings
declared that they personally were aware that their
contributions would be merged with the contributions of
others and would result in a single standard. Jennings
Decl. ¶ 18; Cramer Decl. ¶ 23.
Defendant points to no evidence that the work item
registration process does not describe an idea for a new
standard that will be owned by ASTM. The work
registration process clearly states that the standard will
be owned by ASTM. See O’Brien Decl., Ex. 13;
Thomas Decl. ¶ 24.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE

13

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
34. The draft standard is then edited by
an ASTM staff member, who also adds
certain language and components that are
required by the ASTM form and style
guide. Thomas Decl. ¶ 27; Jennings Decl.
¶ 20; Cramer ¶ 25.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed to the extent that the process
described here is simply ASTM’s
current process as it exists today, and
does not reflect 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.

PLAINTIFFS’ RESPONSE
There is no factual dispute. Defendant has no evidence
that ASTM staff did not author the standards at issue
and ASTM presented evidence that its own employees
drafted language that appears in the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9).
ASTM has presented evidence that ASTM has had a
version of its Form and Style Guide since as at least as
early as 1957. Each version of the ASTM Form and
Style Guide described certain components and provided
the text for certain language that was required to be
included in every ASTM standard during the relevant
time period. As part of the process of developing a draft
standard, ASTM staff members added language and
components that were required by the relevant ASTM
Form and Style Guide to the draft prepared by the task
group. O’Brien Supp. Decl. ¶¶ 9-12.
It is undisputed that Plaintiffs oversee, coordinate, and
manage the standards development process in
accordance with Plaintiffs’ policies, and that the persons
from various interested constituencies who contribute to
the standard-development process do so for Plaintiffs
and within Plaintiffs’ standards-development
procedures. Not one of those persons or anyone they
work for or with whom they are affiliated contends that
they, rather than the Plaintiff in issue, owns all or any
part of one of the Works at issue. Defendant has raised
a legal issue whether the involvement of such persons
has any effect on Plaintiffs’ ownership of the
copyrights. For the reasons explained in Plaintiffs’
briefing, it does not. MSJ 15-18; Reply 27-35.

14

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

15

PLAINTIFFS’ RESPONSE
ASTM provided detailed explanations of the portions of
four standards at issue that were drafted by ASTM staff.
Additionally, Mr. O’Brien declared that the ASTM
Form and Style Guide provides the text for certain
language that must be included in every ASTM
standard. O’Brien Decl. ¶¶ 15-17.
ASTM has presented evidence that ASTM has had a
version of its Form and Style Guide since as at least as
early as 1957. Each version of the ASTM Form and
Style Guide described certain components and provided
the text for certain language that was required to be
included in every ASTM standard during the relevant
time period. As part of the process of developing a draft
standard, ASTM staff members added language and
components that were required by the relevant ASTM
Form and Style Guide to the draft prepared by the task
group. O’Brien Supp. Decl. ¶¶ 9-12.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 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.

PUBLIC.RESOURCE.ORG’S
DISPUTE

16

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

17

PLAINTIFFS’ RESPONSE
Defendant has no basis for opining on what percentage
of ASTM standards bear copyright notices or when
ASTM began placing copyright notices on its standards.
Defendant’s purported dispute does not go to a material
issue of fact. This fact is material to Plaintiffs’
preemptive argument that waiver and estoppel do not
apply. Defendant does not address these arguments in
its Opposition, presumably conceding that they do not
apply.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
41. ASTM has developed over 12,000
standards through this exhaustive
process. Thomas Decl. ¶ 32.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE
This is not a factual dispute regarding a material issue of
fact. It is undisputed that Plaintiffs oversee, coordinate,
and manage the standards development process in
accordance with Plaintiffs’ policies, and that the persons
from various interested constituencies who contribute to
the standard-development process do so for Plaintiffs
and within Plaintiffs’ standards-development
procedures. Not one of those persons or anyone they
work for or with whom they are affiliated contends that
they, rather than the Plaintiff in issue, owns all or any
part of one of the Works at issue. Defendant has raised
a legal issue whether the involvement of such persons
has any effect on Plaintiffs’ ownership of the
copyrights. For the reasons explained in Plaintiffs’
briefing, it does not. MSJ 15-18; Reply 27-35.
Furthermore, ASTM submitted undisputed evidence that
its own employees drafted language for the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9).
Mr. Smith testified in the cited transcript excerpt that the
standard development process changed in certain ways
due to the development of online workspaces for
collaboration. He did not testify about changes in the
procedures for voting on ASTM standards.

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.

18

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed. ASTM has not adduced
admissible evidence to support this fact.

PLAINTIFFS’ RESPONSE

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.

There is no factual dispute. Mr. Thomas is the President
of ASTM and he stated that the statements he made in
his declaration are based on his personal knowledge.
Thomas Decl. ¶¶ 1-3. Mr. Thomas’ statements are
admissible evidence of the facts in this statement.

19

There is no factual dispute. Mr. Thomas is the President
of ASTM and he stated that the statements he made in
his declaration are based on his personal knowledge.
Thomas Decl. ¶¶ 1-3. Mr. Thomas’ statements are
admissible evidence of the facts in this statement.

Defendant provides no support or explanation for its
contention that the figures are irrelevant if they do not
pertain to the standards at issue in this litigation.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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 co-authors 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.

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASTM
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶ 35
(citing O’Brien Decl. ¶¶ 15-39 and Exs. 5-9).
To the extent the individuals who participate in the
standards developing process are joint owners, they
have assigned their ownership rights to ASTM, such
that ASTM has the exclusive right to sell, reproduce,
display and create derivative works based on the
standards. SUMF ¶¶ 18-19.
The Veeck decision explicitly stated its holding did not
apply to extrinsic standards, like those of ASTM. See
MSJ at 26-27.

20

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 operates.
Thomas Decl. ¶ 37.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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 not
relevant to the standards at issue.

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASTM
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶ 35
(citing O’Brien Decl. ¶¶ 15-39 and Exs. 5-9).
Defendant provides no support or explanation for its
contention that ASTM’s reliance on revenue from the
sales of its copyrighted materials is not relevant to the
standards at issue. When assessing the harm
Defendant’s actions has caused to ASTM, the Court can
consider the impact that widespread infringement of
ASTM’s standards, including standards not at issue,
would have on ASTM. Revenue related to standards not
at issue is particularly relevant because any standard
could be incorporated at any time and ASTM does not
know in advance which of its standards will be
incorporated by reference in government regulations.
SUMF ¶ 55.

21

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
47. ASTM generates over two-thirds of
its revenue from the sale of copyrighted
materials. Thomas Decl. ¶ 38.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.
48. ASTM has devoted substantial efforts Disputed. This is not a fact, it is an
to develop and promote the sale of
opinion. Plaintiffs provide no source
products and services that are related or
other than Mr. Thomas’ conjecture to
complementary to ASTM’s standards.
support these figures. Mr. Thomas is not
ASTM does not generate substantial
qualified as an expert.
income from these goods and services,
despite decades of efforts. Thomas Decl.
¶
39.
49. ASTM generated a net loss of $3
Disputed. Plaintiffs provide no source
million in 2014 for non-standards related other than Mr. Thomas’ conjecture to
products and services. Thomas Decl. ¶
support these figures.
40.

22

PLAINTIFFS’ RESPONSE
There is no factual dispute. Defendant points to no
evidence that ASTM does not generate over two-thirds
of its revenues from the sale of copyrighted materials.
Defendant provides no support for or explanation for its
contentions that this figure is not relevant. Mr. Thomas
is the President of ASTM and he stated that the
statements he made in his declaration are based on his
personal knowledge. Thomas Decl. ¶¶ 1-3. His
statement regarding the percentage of revenue ASTM
derives from the sales of copyrighted materials is not
conjecture.
There is no factual dispute. Mr. Thomas is the President
of ASTM and he stated that the statements he made in
his declaration are based on his personal knowledge.
Thomas Decl. ¶¶ 1-3. His statements are not conjecture.

There is no factual dispute. Mr. Thomas is the President
of ASTM and he stated that the statements he made in
his declaration are based on his personal knowledge.
Thomas Decl. ¶¶ 1-3. His statement is not conjecture.
There is also support for the figures in this statement in
¶ 83 of the Jarosz Report. Rubel Decl., Ex. 1.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

23

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASTM
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶ 35
(citing O’Brien Decl. ¶¶ 15-39 and Exs. 5-9).
ASTM plays a role in the decision whether to develop
and revise a standard. ASTM’s rules dictate the process
and procedures for developing, revising and updating
the standards on a regular schedule. SUMF ¶ 42.
There is no factual dispute. Mr. Thomas is the President
of ASTM and he stated that the statements he made in
his declaration are based on his personal knowledge.
Thomas Decl. ¶¶ 1-3. His statements are not conjecture.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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. ¶
15.

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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 reasonable
certainty of this estimate.

There is no factual dispute. Mr. Thomas is the President
of ASTM and he stated that the statements he made in
his declaration are based on his personal knowledge.
Thomas Decl. ¶¶ 1-3.

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.

24

Defendant provides no citation to support its claim that
Mr. Thomas’ statement is inconsistent with the
testimony of other ASTM witnesses.
There is no disputed fact. This is a statement of fact.
Mr. Thomas is the President of ASTM and has worked
at ASTM since 1972. Mr. Thomas’ statement relates to
his understanding of ASTM’s purpose in developing its
standards. Thomas Decl. ¶¶ 1-3, 16.
Mr. Cramer has been a member of ASTM since 1986
and was the Chairman of an ASTM Committee
responsible for developing 116 ASTM standards.
Cramer Decl. ¶¶ 4-5. Mr. Cramer stated that the ASTM
standards he participated in developing were not
developed for the purpose of being incorporated into
government standards but instead “address a technical
issue or problem identified by a group of people in the
relevant sector that can be addressed with a standardbased solution.” Id. ¶¶ 19-20.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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.

ASTM does not lobby for incorporation of its standards
by reference. However, if a government is going to
incorporate an ASTM standard by reference, ASTM
believes that it should use the most up-to-date standard
rather than outdated materials. Def. Ex. 8 (Grove Dep.)
124:10-125:21.

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.

25

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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
ASTMWashington 26 after making a
D.C.
written request for an appointment
likewise does not constitute “reasonably

PLAINTIFFS’ RESPONSE
Mr. Jarosz’s conclusion that ASTM’s standards are
reasonably available and accessible to the public is
based on numerous facts, including the relatively low
price point of the standards, the free online access to
certain ASTM standards provided on ASTM’s website,
and Defendant inability to identify individuals who were
unable to access ASTM’s standards. Rubel Decl., Ex. 1
(Jarosz Rep.) ¶ 86. ASTM also provides copies of its
standards to a reduced cost or at no cost when it is
information that the regular cost is a burden to the
requested and provides special pricing for its standards
to students. SUMF ¶¶ 61-62. ASTM is not aware of
any visually impaired person who had difficulty
accessing an ASTM standard due to a print disability
but, if made aware, would provide a copy of the
standard in a format that accommodated the person’s
disability at no cost. Supp. SUMF ¶ 8. Defendant cites
no evidence contradicting any of these facts.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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,
read-only 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,
read-only 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 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.

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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.

There is no factual dispute. Mr. Thomas is the President
of ASTM and the statements he made in his declaration
are based on his personal knowledge. Thomas Decl. ¶¶
1-3. This statement is not an inference based on ¶ 62, it
is a separate, admissible statement of fact by Mr.
Thomas.

Disputed. Not all members of the public There is no factual dispute. Defendant has not disputed
can read the standards on ASTM’s “free the accuracy of the statement.
read-only” website, such as people with
print disabilities. SMF ¶ 53.

Disputed. Not all members of the public There is no factual dispute. Defendant has not disputed
can read the standards on ASTM’s “free the accuracy of the statement.
read-only” website, such as people with
print disabilities. SMF ¶ 53.

27

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
66. ASTM publicizes the free read-only
access provided on its website. Thomas
Decl. ¶ 52; O’Brien Decl. ¶ 63.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed. ASTM has not adduced
admissible evidence to support this fact.
See Public

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.

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

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.

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

70. ASTM has copyright registrations
that cover each of the standards at issue
in this litigation. O’Brien Decl. ¶ 8.

Disputed. ASTM does not have a
copyright registration for ASTM D3231958(1968). (SMF ¶ 131.)

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

28

PLAINTIFFS’ RESPONSE
There is no factual dispute. There are statements in Mr.
Thomas and Mr. O’Brien’s declarations supporting this
fact. See also Rubel Supp. Decl., Ex. 4 (Grove Dep.) at
181:10-183:15.
There is no factual dispute. There are statements in Mr.
Thomas and Mr. O’Brien’s declarations supporting this
fact. See also Def. Ex. 8 (Grove Dep.) at 123:17-124:9.

Mr. O’Brien’s statement is admissible evidence of
ASTM’s routine granting of permission to others to
reproduce its standards at no cost for non-commercial
purposes. The evidence Defendant points to
demonstrates only that ASTM denies permission to use
its standards when the requester seeks to post the
standard on a public website with no reasonable time
limit and/or with no limitation on the number of people
who can access it. See Def. Exs. 113, 115, 117, 120,
130; see also O’Brien Supp. Decl. ¶ 10.
There is no factual issue. The statements of Mr.
Thomas and Mr. O’Brien are admissible evidence in
support of this statement. Defendant points to no
evidence that ASTM has received any complaints about
lack of accessibility of its standards from anyone other
than Defendant.
There is no dispute that ASTM has copyright
registrations that cover each of the 228 standards at
issue other than ASTM D323-1958(68).

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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.

There is no factual dispute. Mr. O’Brien stated in his
declaration that he had personal knowledge regarding
the information contained in the declaration. O’Brien
Decl. ¶ 2.

75. ASTM D396-98 and D1217-93(98)
were published in Volume 5.01 of the
1999
Annual Book of ASTM Standards.
O’Brien Decl. ¶ 9 and Ex. 3.

29

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed. The fact that ASTM D3961998 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.
30

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASTM
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶ 35
(citing O’Brien Decl. ¶¶ 15-39 and Exs. 5-9).
Defendant also makes a legal argument regarding the
scope of protection the copyright registration for a
collection of standards provides. Contrary to
Defendant’s unsupported legal argument, the case law is
clear that registration of a collection of works protects
an individual work within the compilation as long as the
plaintiff owns the copyright in the compilation and the
individual work. See, e.g., Xoom, Inc. v. Imageline,
Inc., 323 F.3d 279 (4th Cir. 2003), abrogated on other
grounds by Reed Elsevier, Inc. v. Muchnick, 130 S. Ct.
1237 (2010); Morris v. Business Concepts, Inc., 259
F.3d 65 (2d Cir. 2001), abrogated on other grounds by
Reed Elsevier, 130 S. Ct. 1237 (2010); Szabo v.
Errisson, 68 F.3d 940 (5th Cir. 1995), abrogated on
other grounds by Reed Elsevier, 130 S. Ct. 1237 (2010).

PLAINTIFFS’ STATEMENT OF
PUBLIC.RESOURCE.ORG’S
MATERIAL FACTS
DISPUTE
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
declaration in support of the
incontestability of this registration.
O’Brien Decl. ¶ 55 and Ex. 14.

31

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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:

PUBLIC.RESOURCE.ORG’S
DISPUTE

(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.

32

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
79. ASTM also owns a registration for
the following logo:

PUBLIC.RESOURCE.ORG’S
DISPUTE

(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.

33

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 20102012, 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 14:12-23).
83. ASTM engages in quality control
procedures to ensure the quality and
integrity of the content of the standards.
O’Brien Decl. ¶ 50.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed. ASTM has not adduced
admissible evidence to support this fact.
The testimony in support of this fact is
not based on personal knowledge.

PLAINTIFFS’ RESPONSE

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

There is no factual dispute. Mr. O’Brien stated in his
declaration that he had personal knowledge regarding
the information contained in the declaration. O’Brien
Decl. ¶ 2. Defendant provides no evidence that
contradicts this statement.

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.

There is no factual dispute. Mr. O’Brien stated in his
declaration that he had personal knowledge regarding
the information contained in the declaration. O’Brien
Decl. ¶ 2. Defendant provides no evidence that
contradicts this statement.

34

There is no factual dispute. Mr. O’Brien stated in his
declaration that he had personal knowledge regarding
the information contained in the declaration. O’Brien
Decl. ¶ 2. Defendant provides no evidence that
contradicts this statement.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 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.

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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

There is no factual dispute. Mr. O’Brien stated in his
declaration that he had personal knowledge regarding
the information contained in the declaration. O’Brien
Decl. ¶ 2. Defendant provides no evidence that
contradicts this statement.

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

The fact is conceded to be undisputed.

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

The fact is conceded to be undisputed.

35

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

36

PLAINTIFFS’ RESPONSE
Defendant’s purported dispute does not go to a material
issue of fact.
NFPA’s standards that are incorporated by reference
need only be “reasonably available to the class of
persons affected.” 5 U.S.C. § 552(a)(1); 1 C.F.R. §
51.7(a)(3). This includes having (i) a copy of the
incorporated material on file with the Office of the
Federal Register and (ii) the regulations incorporating
such material must state the ways those incorporated
materials are reasonably available to interested parties.
1 CFR §§ 51.3, 51.5.
It is an undisputed fact that NFPA’s standards are (1) on
file with the Office of the Federal Register; (2) available
to anyone for purchase, and (3) available to read for free
through NFPA’s website. Defendant’s only evidence
disputing the accessibility is Mr. Fruchterman’s report
and he admitted that he had not considered whether any
other formats of Plaintiffs’ standards—outside of the
Reading Room context—were accessible to visually
disabled persons. See Supp. SUMF ¶ 7 (citing Rubel
Supp. Decl. ¶ 4, and Ex.1 (Fruchterman Dep.) 205:20208:25). He further acknowledged that NFPA’s 2014
edition of the NEC is available through his online
library for the visually impaired.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
90. Many NFPA standards are
incorporated by reference in federal and
state laws and regulations. NFPA is
aware that its standards are frequently
incorporated by reference, but NFPA
does not develop any standards solely for
that purpose. Pauley Decl. ¶ 10.

91. All NFPA standards have a range of
applications and uses even if they are not
incorporated by reference in government
laws or regulations. Pauley Decl. ¶ 12.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed to the extent that NFPA does
not develop standards; volunteers
develop standards that NFPA publishes.
SMF ¶ 132–38.

PLAINTIFFS’ RESPONSE

There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standardGovernment employees and agencies
development process do so for Plaintiffs and within
participate in the development of most if Plaintiffs’ standards-development procedures. Not one
not all NFPA standards and may do so
of those persons or anyone they work for or with whom
with the purpose of developing
they are affiliated contends that they, rather than the
standards that could eventually be
Plaintiff in issue, owns all or any part of one of the
incorporated into law or regulations.
Works at issue. Defendant has raised a legal issue
SMF ¶ 132.
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, NFPA
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶ 117
(citing Pauley Decl. ¶¶ 38-40 and Dubay Dep. 54:1956:12; 66:20-67:12; 69:2-18).

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

37

Defendant’s purported dispute is not one. That some
volunteers may (or may not) contribute to NFPA’s
development of the standards so that they may be
incorporated into law is not inconsistent with the fact
that “NFPA does not develop any standards solely for
that purpose.” Pauley Decl. ¶ 10.
The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
92. NFPA develops new standards based
on a determination that developing a
standard in a particular area would serve
NFPA’s mission of reducing the risk of
loss from fire and related hazards. NFPA
does not consider whether the standard
will generate revenue when deciding
whether to develop the standard. Pauley
Decl. ¶ 11.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed to the extent that NFPA does
not develop standards; volunteers
develop standards that NFPA publishes,
and volunteers determine what standards
to develop, not NFPA. SMF ¶ 132–38.

38

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, NFPA
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶ 117
(citing Pauley Decl. ¶¶ 38-40 and Dubay Dep. 54:1956:12; 66:20-67:12; 69:2-18).

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

94. The NEC addresses the installation of This fact is not material to the motion
electrical conductors, equipment, and
for summary judgment.
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.

39

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, NFPA
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶ 117
(citing Pauley Decl. ¶¶ 38-40 and Dubay Dep. 54:1956:12; 66:20-67:12; 69:2-18).
The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

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

PLAINTIFFS’ RESPONSE
This is an undisputed fact based on admissible evidence.
Mr. Reinertson works for the Riverside Office of the
Fire Marshall and recently served as the Division Chief
for the California Office of the State Fire Marshall.
Reinertson Decl. ¶ 1. He explains the benefits that
California receives from SDOs, such as NFPA, based on
his personal knowledge and experience. Id. ¶¶ 11-12.
Defendant does not point to any evidence that state
governments do not benefit from the standards
developed by NFPA.
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, NFPA
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶ 117
(citing Pauley Decl. ¶¶ 38-40 and Dubay Dep. 54:1956:12; 66:20-67:12; 69:2-18).

40

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

41

PLAINTIFFS’ RESPONSE
This is an undisputed fact based on admissible evidence.
Mr. Reinertson works for the Riverside Office of the
Fire Marshall and recently served as the Division Chief
for the California Office of the State Fire Marshall
(“OSFM”). Reinertson Decl. ¶ 1. He testifies to the
costs and limitations that the OSFM would face without
SDOs like the NFPA, based on his personal knowledge
and experience. Id. ¶¶ 13-14. Defendant does not point
to any evidence that other state governments would not
face similar challenges.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 can be used
widely throughout the country.
Golinveaux Decl. ¶¶ 5-6.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, NFPA
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶ 117
(citing Pauley Decl. ¶¶ 38-40 and Dubay Dep. 54:1956:12; 66:20-67:12; 69:2-18).
This is an undisputed fact based on admissible evidence.
Mr. Golinveaux has more than 30 years of experience in
the fire protection industry and has been a member of
the NFPA 13 Technical Committee for more than 20
years, in addition to other technical committees.
Golinveaux Decl. ¶ 3-4. He explains the benefits that
the fire protection industry receives from the standards
developed by NFPA, based on his personal knowledge
and experience. Id. ¶¶ 5-6.

42

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE

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.

Defendant’s purported dispute does not go to a material
issue of fact. Defendant does not dispute that NFPA
makes the full text available for free viewing online.
Those that are visually impaired, as Mr. Fruchterman
explained, have other avenues for accessing the
standards, including through his online library for the
visually impaired. See Supp. SUMF ¶ 3 (citing Rubel
Supp. Decl. ¶ 4, and Ex. 1 (Fruchterman Dep.) 209:18213:23); see also Supp. SUMF ¶ 9-10 (NFPA has and
would accommodate anyone with a print disability).

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.

43

This is an undisputed fact based on admissible evidence.
Mr. Golinveaux has more than 30 years of experience in
the fire protection industry and has been a member of
the NFPA 13 Technical Committee for more than 20
years, in addition to other technical committees.
Golinveaux Decl. ¶ 3-4. His testimony that NFPA or a
similar organization is necessary to industry-wide
uniformity in fire prevention standards is based on his
personal knowledge and experience having worked in
the industry and with NFPA for decades. Id. ¶ 7.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.”) ¶ 10.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

44

PLAINTIFFS’ RESPONSE
Defendant’s purported dispute does not go to a material
issue of fact. This fact is material to Plaintiffs’
preemptive argument that waiver and estoppel do not
apply. Defendant does not address these arguments in
its Opposition, presumably conceding that they do not
apply.
In any event, there is no dispute of fact. It is undisputed
that NFPA includes copyright notices in the published
versions of its standards. The fact is also based on
admissible evidence. Mr. Pauley is the President and
Chief Executive Officer of the NFPA. Pauley Decl. ¶ 1.
He has personal knowledge that NFPA includes notices
of its copyright in the standards it publishes.

Presumably, Defendant means to refer to NFPA, not
ASTM.
This is an undisputed fact based on admissible evidence.
Mr. Berry is the Secretary of the Corporation and
Director of Licensing for the NFPA. Berry Decl. ¶ 1.
Based on his experience as director of licensing, Mr.
Berry has personal knowledge of NFPA’s practice of
granting permission to researchers, educators and others
to use portions of the NFPA standards for noncommercial purposes at no cost. Id. ¶ 10.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed. ASTM has not adduced
admissible evidence to support this fact.
The testimony in support of this fact is
not based on personal knowledge.

PLAINTIFFS’ RESPONSE

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.

The fact is conceded to be undisputed. Defendant’s
purported dispute is one of relevance. These overall
figures are relevant because they include the Works at
issue here.

45

Presumably, Defendant means to refer to NFPA, not
ASTM.
This is an undisputed fact based on admissible evidence.
Mr. Pauley is the President and Chief Executive Officer
of the NFPA. Pauley Decl. ¶ 1. Based on his
experience as President and CEO, Mr. Pauley has
personal knowledge of NFPA’s costs and expenses
related to developing standards. Id. ¶ 18.

Mr. Jarosz’s conclusions do not require him to
determine the precise amount spent on each standard.
See Plaintiffs’ Opposition to the Motion to Strike.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
106. NFPA funds its standards
development and publications activities
primarily with the revenue obtained from
sales of its copyrighted standards. In
2014 NFPA’s publications sales
accounted for over 70% of NFPA’s total
operating revenues. The overwhelming
majority of that publications revenue
comes from the sale of codes and
standards. Pauley Decl. ¶ 46.
107. To preserve the revenue from sales
of publications, NFPA must be able to
assert copyright in its standards to
prevent unauthorized copying of NFPA
standards, which threaten to substantially
undermine NFPA’s sales. Pauley Decl. ¶
49.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed to the extent that these figures
are irrelevant because they concern
costs and revenue sources that do not
pertain to the standards at issue in this
litigation (referring to “standards
development” and “publication sales”
rather than sales of the standards at issue
or even standards incorporated into the
law).

PLAINTIFFS’ RESPONSE

Disputed. This is not a fact, it is an
opinion. Mr. Pauley is not qualified as
an expert and has no personal
knowledge of whether “unauthorized
copying” threatens to “substantially
undermine” NFPA’s sales. These
claims are irrelevant to the extent they
concern standards or NFPA publications
generally, and not the standards at issue.

This is an undisputed fact based on admissible evidence.
Mr. Pauley is the President and Chief Executive Officer
of the NFPA. Pauley Decl. ¶ 1. Based on his
experience as President and CEO, Mr. Pauley has
personal knowledge of NFPA’s revenues and the
importance of asserting copyright to revenues from
sales. Id. ¶ 49.

46

The fact is conceded to be undisputed. Defendant’s
purported dispute is one of relevance. These overall
figures are relevant because they include the Works at
issue here.

Defendant’s purported dispute is one of relevance. Mr.
Pauley’s statements apply with equal force to the
standards at issue here.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
108. NFPA depends on the revenue it
generates from sales of its copyrighted
materials to conduct its operations and
needs that revenue to continue to develop
its standards in the manner in which it
currently operates. Pauley Decl. ¶¶ 4751; Rubel Decl. ¶ 49, Ex. 45 (Mullen
Dep. at 224:14-229:5).

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed. NFPA does not develop
standards; volunteers develop standards
that NFPA publishes. SMF ¶ 132–38.
These claims are irrelevant to the extent
they concern NFPA “copyrighted
materials” generally, and not the
standards at issue. This is an opinion,
not a fact. Mr. Pauley and Mr. Mullen
are not qualified as experts to opine on
how changes in certain sources of
revenue might affect NFPA’s business
model.

47

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, each
Plaintiff submitted undisputed evidence that its own
employees drafted language for the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley Decl. ¶¶ 3840 and Dubay Dep. 54:19-56:12; 66:20-67:12; 69:2-18)
(NFPA); and id. ¶¶ 138-41 (citing Reiniche Decl. ¶¶ 1011 and Reiniche Dep. 35:23-38:2; 97:13-98:19)
(ASHRAE).
This is a fact based on undisputed admissible evidence.
Mr. Pauley is the President and Chief Executive Officer
of the NFPA. Pauley Decl. ¶ 1. Based on his
experience as President and CEO, Mr. Pauley has
personal knowledge of NFPA’s business model and the
importance of revenue from sales to its continued
operation. Id. ¶ 47-51. Mr. Mullen is the Chief
Financial Officer of the NFPA. Supp. Rubel Decl. Ex.9
(Mullen Dep. 10:2-3). Based on his experience in that
role, Mr. Mullen has personal knowledge of NFPA’s
business model and the importance of revenue from
sales to its continued operation. Rubel Decl. ¶ 49, Ex.
45 (Mullen Dep. at 224:14-229:5).
To the extent Defendant’s purported dispute is one of

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

110. Members of the public participate in This fact is not material to Plaintiffs’
NFPA’s standards development process
Motion for Summary Judgment.
by submitting public input, including
proposed changes to NFPA standards and
comments on proposed changes. Pauley
Decl. ¶ 27.

48

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, each
Plaintiff submitted undisputed evidence that its own
employees drafted language for the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley Decl. ¶¶ 3840 and Dubay Dep. 54:19-56:12; 66:20-67:12; 69:2-18)
(NFPA); and id. ¶¶ 138-41 (citing Reiniche Decl. ¶¶ 1011 and Reiniche Dep. 35:23-38:2; 97:13-98:19)
(ASHRAE).
To the extent that Defendant is disputing whether
NFPA’s staff contributions to the standards are
“copyrightable contributions,” that question is a legal
question.
The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.
112. NFPA has a policy that all persons
Disputed to the extent that Plaintiffs
who submit public input must assign all
refer to any time period during which
rights, including copyright, in their
the standards at issue in this litigation
contributions to NFPA. NFPA does not
were developed, and to the extent that
accept public input without a signed
Plaintiffs’ statement gives the erroneous
copyright assignment, which is printed
impression that any copyright
on the standard forms by which members assignment policy NFPA may have now
of the public submit input. Pauley Decl. ¶ was in effect prior to 2015, or was
27; Rubel Decl. ¶ 9, Ex. 6 (Dubay Dep.
actually enforced by NFPA. NFPA has
at 212:17-21).
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.

49

PLAINTIFFS’ RESPONSE
This is an undisputed fact based on admissible evidence.
Mr. Pauley is the President and Chief Executive Officer
of the NFPA. Pauley Decl. ¶ 1. Based on his
experience as President and CEO and involvement in
the standard development process, Mr. Pauley has
personal knowledge of the general understanding among
contributors to the NFPA standards. Id. ¶¶ 17, 28. He
has never heard contributors challenge NFPA’s
ownership of the copyright or assert that they have any
rights in the NFPA standards. Id. ¶ 28.

Defendant fails to establish a genuine issue of material
fact. It is undisputed that Plaintiffs’ have registered
copyrights for their Works—creating a presumption of
ownership. See MSJ 15 (citing 17 U.S.C. § 410(c));
Reply 27-28. Defendant has the burden of proving that
Plaintiffs are not at least joint authors or joint owners of
the Works. Defendant’s purported dispute of fact fails
to point to evidence sufficient to show that Plaintiffs are
not joint authors or joint owners via proper assignment
by at least some of the persons who submit public input
to the standards at issue here.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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. ¶¶ 32-33;
Rubel Decl. ¶ 9, Ex. 6 (Dubay Dep. at
52:1-15).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

50

PLAINTIFFS’ RESPONSE
Defendant fails to establish a genuine issue of material
fact. It is undisputed that Plaintiffs’ have registered
copyrights for their Works—creating a presumption of
ownership. See MSJ 15 (citing 17 U.S.C. § 410(c));
Reply 27-28. Defendant has the burden of proving that
Plaintiffs are not at least joint authors or joint owners of
the Works. Defendant’s purported dispute of fact fails
to point to evidence sufficient to show that Plaintiffs are
not joint authors or joint owners via proper assignment
by at least some of the persons who submit public input
to the standards at issue here.

The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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. Language mentioning “work
made for hire” was added to committee
applications in 2007 at the earliest. SMF
¶ 139.

51

PLAINTIFFS’ RESPONSE
Defendant fails to establish a genuine issue of material
fact. It is undisputed that Plaintiffs’ have registered
copyrights for their Works—creating a presumption of
ownership. See MSJ 15 (citing 17 U.S.C. § 410(c));
Reply 27-28. Defendant has the burden of proving that
Plaintiffs are not at least joint authors or joint owners of
the Works. Defendant’s purported dispute of fact fails
to point to evidence sufficient to show that Plaintiffs are
not joint authors or joint owners via proper assignment
by at least some of the persons who submit public input
to the standards at issue here.
The fact that the NFPA committee application form has
contained “work made for hire” language “for many
years” is not disputed. Pauley Decl. ¶ 34. Defendant
has no evidence for its assertion that “work made for
hire” language was not added to committee applications
until 2007. The cited paragraph from Defendant’s
Statement of Material Facts, ¶ 139, cites only forms for
members of the public to submit input to NFPA
standards, which are not the committee application
forms.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

52

PLAINTIFFS’ RESPONSE
This is an undisputed fact based on admissible evidence.
Mr. Pauley is the President and Chief Executive Officer
of the NFPA. Pauley Decl. ¶ 1. Mr. Golinveaux has
more than 30 years of experience in the fire protection
industry and has been a member of the NFPA 13
Technical Committee for more than 20 years, in
addition to other technical committees. Golinveaux
Decl. ¶ 3-4. Their testimony is based on years of
experience working on the NFPA Technical Committees
and with other members of those committees. Pauley
Decl. ¶¶ 36-37; Golinveaux Decl. ¶¶ 12-13.
In any event, Defendant fails to establish a genuine issue
of material fact. It is undisputed that Plaintiffs’ have
registered copyrights for their Works—creating a
presumption of ownership. See MSJ 15 (citing 17
U.S.C. § 410(c)); Reply 27-28. Defendant has the
burden of proving that Plaintiffs are not at least joint
authors or joint owners of the Works. Defendant’s
purported dispute of fact fails to point to any evidence
sufficient to show that Plaintiffs are not joint authors or
joint owners.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35.
Furthermore, NFPA Plaintiff submitted undisputed
evidence that its own employees drafted language for
the Works at issue. SUMF ¶ 117 (citing Pauley Decl. ¶¶
38-40 and Dubay Dep. 54:19-56:12; 66:20-67:12; 69:218) (NFPA); and id. ¶¶ 138-41 (citing Reiniche Decl. ¶¶
10-11 and Reiniche Dep. 35:23-38:2; 97:13-98:19)
(ASHRAE).

53

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

54

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, each
Plaintiff submitted undisputed evidence that its own
employees drafted language for the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley Decl. ¶¶ 3840 and Dubay Dep. 54:19-56:12; 66:20-67:12; 69:2-18).
To the extent that Defendant claims this drafting of
language does not constitute a “copyrightable
contribution,” it is a legal dispute.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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,
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

55

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, each
Plaintiff submitted undisputed evidence that its own
employees drafted language for the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley Decl. ¶¶ 3840 and Dubay Dep. 54:19-56:12; 66:20-67:12; 69:2-18).
To the extent that Defendant claims this drafting of
language does not constitute a “copyrightable
contribution,” it is a legal dispute.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

56

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, each
Plaintiff submitted undisputed evidence that its own
employees drafted language for the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley Decl. ¶¶ 3840 and Dubay Dep. 54:19-56:12; 66:20-67:12; 69:2-18)
(NFPA); and id. ¶¶ 138-41 (citing Reiniche Decl. ¶¶ 1011 and Reiniche Dep. 35:23-38:2; 97:13-98:19)
(ASHRAE).

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

122. NFPA is not aware of any other
person who claims to have a copyright
interest in any NFPA standard. Pauley
Decl. ¶ 26.

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.

57

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, each
Plaintiff submitted undisputed evidence that its own
employees drafted language for the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley Decl. ¶¶ 3840 and Dubay Dep. 54:19-56:12; 66:20-67:12; 69:2-18)
(NFPA); and id. ¶¶ 138-41 (citing Reiniche Decl. ¶¶ 1011 and Reiniche Dep. 35:23-38:2; 97:13-98:19)
(ASHRAE).
This is not a factual dispute. It is undisputed that none
of the persons who has contributed to the standarddevelopment process contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

58

PLAINTIFFS’ RESPONSE
This is not a genuine dispute as to a material fact.
Defendant does not contest the validity of NFPA’s
trademarks anywhere in its Opposition to Plaintiffs’
Motion for Summary Judgment—apparently conceding
that point.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
124. NFPA owns an incontestable U.S.
federal trademark registration for the
following
logo:

(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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE

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.

This is not a genuine dispute as to a material fact.
Defendant does not contest the validity of NFPA’s
trademarks anywhere in its Opposition to Plaintiffs’
Motion for Summary Judgment—apparently conceding
that point.

59

This is not a genuine dispute as to a material fact.
Defendant does not contest the validity of NFPA’s
trademarks anywhere in its Opposition to Plaintiffs’
Motion for Summary Judgment—apparently conceding
that point.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

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).

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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

This is an undisputed fact based on admissible evidence.
Mr. Pauley is the President and Chief Executive Officer
of the NFPA. Pauley Decl. ¶ 1. Based on his
experience as President and CEO and involvement in
the standard development process, Mr. Pauley has
personal knowledge of the NFPA’s general reputation
for quality. Id. ¶ 53.
This is not a genuine dispute. It is undisputed that the
NFPA work mark and logo are well-known to Mr.
Malmud and others, including Mr. Golinveaux and Mr.
Reinertson.

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.”

60

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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.

There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASHRAE
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶¶ 13841 (citing Reiniche Decl. ¶¶ 10-11 and Reiniche Dep.
35:23-38:2; 97:13-98:19) (ASHRAE).

61

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
131. The primary users of ASHRAE’s
standards include builders, architects, and
heating, air-conditioning, and
refrigeration manufacturers who use the
standards in their businesses. Reiniche
Decl. ¶ 17.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

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 similar concerns to
ASHRAE 90.1. See Rubel Decl. ¶ 10,
Ex. 7 (Reiniche Dep. at 31:6-32:8).

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.

62

PLAINTIFFS’ RESPONSE
There is no factual dispute. The “primary” users of
ASHRAE standards “include builders, architects, and
heating, air-conditioning, and refrigeration
manufacturers who use the standards in their
businesses.” Reiniche Decl. ¶ 17. Nothing in this
statement denies that other individuals may also use
ASHRAE’s standards.
There is no factual dispute here. As an initial matter the
ASHRAE Handbook is not a “standard” at issue.
Additionally, Plaintiffs only moved for summary
adjudication of the claims relating to “the 2004, 2007
and 2010 versions of ASHRAE’s Standard 90.1.” MSJ
at 2. Plaintiffs did not move for summary judgment on
claims relating to the ASHRAE Handbook. Id.

Defendant does not disputed the factual basis of this
assertion so it is undisputed. Defendant’s
characterization that this fact is “not material” does not
raise a disputed factual issue.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

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.

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

63

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASHRAE
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶¶ 13841 (citing Reiniche Decl. ¶¶ 10-11 and Reiniche Dep.
35:23-38:2; 97:13-98:19) (ASHRAE).
The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

64

PLAINTIFFS’ RESPONSE
It is undisputed that Ms. Reiniche is ASHRAE Senior
Manager of Standards and has personal knowledge of
how ASHRAE standards are developed. Reiniche Decl.
¶ 1. It is also undisputed that the only standard at issue
is ASHRAE 90.1 and that the 90.1 standard is
developed by a group of persons from various
interested constituencies and not any one individual.
Def. Ex. 12 (Reiniche Dep.) 21:12-22:11; Reiniche
Decl. ¶ 8.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 proposed in committee meetings, and
aiding the committees in crafting
standards. Reiniche
Decl. ¶ 10-11.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASHRAE
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶¶ 13841 (citing Reiniche Decl. ¶¶ 10-11 and Reiniche Dep.
35:23-38:2; 97:13-98:19) (ASHRAE).
To the extent that Defendant is disputing whether
ASHRAE’s staff contributions to the standards are
“copyrightable contributions,” that question is a legal
question.

65

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASHRAE
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶¶ 13841 (citing Reiniche Decl. ¶¶ 10-11 and Reiniche Dep.
35:23-38:2; 97:13-98:19) (ASHRAE).
To the extent that Defendant is disputing whether
ASHRAE’s staff contributions to the standards are
“copyrightable contributions,” that question is a legal
question.

66

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASHRAE
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶¶ 13841 (citing Reiniche Decl. ¶¶ 10-11 and Reiniche Dep.
35:23-38:2; 97:13-98:19) (ASHRAE).
To the extent that Defendant is disputing whether
ASHRAE’s staff contributions to the standards are
“copyrightable contributions,” that question is a legal
question.

67

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

68

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASHRAE
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶¶ 13841 (citing Reiniche Decl. ¶¶ 10-11 and Reiniche Dep.
35:23-38:2; 97:13-98:19) (ASHRAE).
To the extent that Defendant is disputing whether
ASHRAE’s staff contributions to the standards are
“copyrightable contributions,” that question is a legal
question.
There is no genuine dispute here. Defendant puts
forward no evidence contradicting Plaintiffs’ statements.
Not one of the ASHRAE members, project committee
members, public commenters or the organizations with
whom any of these individuals are affiliated contends
that they, rather than ASHRAE, owns all or any part of
one of the Works at issue.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
143. Anyone who contributed to the
ASHRAE standards at issue here, i.e. the
2004,
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed to the extent that Plaintiffs
omit the full text of the copyright
release language on 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 AirConditioning 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.

69

PLAINTIFFS’ RESPONSE
This is not a disputed issue. First, Plaintiffs did not omit
the full text of the copyright release because they attach
the full language of the Application for Membership on
an ASHRAE Committee and the Form for Commenting
on a Public Review Draft ASHRAE Standard as
Exhibits 1 and 2 to the Reiniche Declaration.
Second, Defendant does not dispute that the language
cited in Plaintiffs’ Statement of Material Facts is in fact
in the Application for Membership on an ASHRAE
Committee and Form for Commenting on a Public
Review Draft ASHRAE Standard. The fact that there is
additional language is part of Defendant’s legal
argument and is not a disputed factual issue.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
This fact is not material to Plaintiffs’
Motion for Summary Judgment.

PLAINTIFFS’ RESPONSE

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.

There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does not.
MSJ 15-18; Reply 27-35. Furthermore, ASHRAE
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶¶ 13841 (citing Reiniche Decl. ¶¶ 10-11 and Reiniche Dep.
35:23-38:2; 97:13-98:19).

70

The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
146. ASHRAE has valid copyright
registrations for the 2004, 2007, and
2010 versions of 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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed to the extent that ASHRAE is
not the author of the 2004, 2007, or
2010 editions 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.

PLAINTIFFS’ RESPONSE

There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASHRAE
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶¶ 13841 (citing Reiniche Decl. ¶¶ 10-11 and Reiniche Dep.
35:23-38:2; 97:13-98:19) (ASHRAE).
Disputed. This copyright notice does not Defendant’s purported dispute does not go to a material
alert the public (or individuals who
issue of fact. This fact is material to Plaintiffs’
participated in the creation of the
preemptive argument that waiver and estoppel do not
standards) what content ASHRAE
apply. Defendant does not address these arguments in
claims ownership over, such as the
its Opposition, presumably conceding that they do not
entire standard, versus component parts apply.
of the standard, or simply the formatting
used for the final print version.
In any event, there is no dispute of fact. It is undisputed
Moreover, this is not a fact, it is an
that ASHRAE includes copyright notices in the
opinion. Ms. Reiniche lacks personal
published versions of its standards. The fact is also
knowledge of what information the
based on admissible evidence. Ms. Reiniche is the
Senior Manager of Standards at ASHRAE. Reiniche
public derives from the existence of
copyright notices on ASHRAE
Decl. ¶ 1. She has personal knowledge that ASHRAE
standards, and she is not qualified as an includes notices of its copyright in the standards it
expert on that issue.
publishes.

71

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
148. ASHRAE also holds registered
trademarks for the marks displayed in its
Standards and used by ASHRAE.
Reiniche Decl. ¶ 16.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE

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.

This is not a genuine dispute as to a material fact.
Defendant does not contest the validity of ASHRAE’s
trademarks anywhere in its Opposition to Plaintiffs’
Motion for Summary Judgment—apparently conceding
that point.

(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.

72

This is not a genuine dispute as to a material fact.
Defendant does not contest the validity of ASHRAE’s
trademarks anywhere in its Opposition to Plaintiffs’
Motion for Summary Judgment—apparently conceding
that point.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
151. ASHRAE also holds a registration
for the following mark:

PUBLIC.RESOURCE.ORG’S
DISPUTE
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).

73

PLAINTIFFS’ RESPONSE
This is not a genuine dispute as to a material fact.
Defendant does not contest the validity of ASHRAE’s
trademarks anywhere in its Opposition to Plaintiffs’
Motion for Summary Judgment—apparently conceding
that point.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 man-hours, 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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

74

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASHRAE
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶¶ 13841 (citing Reiniche Decl. ¶¶ 10-11 and Reiniche Dep.
35:23-38:2; 97:13-98:19) (ASHRAE).

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

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

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 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.
75

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, ASHRAE
submitted undisputed evidence that its own employees
drafted language for the Works at issue. SUMF ¶¶ 13841 (citing Reiniche Decl. ¶¶ 10-11 and Reiniche Dep.
35:23-38:2; 97:13-98:19) (ASHRAE).
There is no factual dispute. Defendant raises a dispute
as to whether there is a connection between the
availability of ASHRAE 90.1 on Defendant’s website
and loss of sales to ASHRAE (which is unrelated to the
fact put forward by Plaintiffs), but Defendant does not
raise any contrary evidence to Plaintiffs’ factual
statement.
Defendant’s dispute is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
PLAINTIFFS’ RESPONSE
DISPUTE
Disputed. ASHRAE has failed to adduce There is no dispute here. Defendant raises no
admissible evidence to support this fact. contradictory evidence and this assertion is supported by
fact testimony. Def. Ex. 5 (Comstock Dep.) 59:17-60:2.

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.

Defendant’s dispute is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike. This
conclusion is further supported by fact testimony.

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.

This is not a material disputed issue of fact. Defendant
is not disputing that the cost ranges from $25 to $200.
Defendant’s dispute as to the characterization of
whether this is a “burden” is not material. Additionally
ASHRAE provides copies of its standards to a reduced
cost for libraries, educational uses, government entities,
and individuals or entities who purchase ASHRAE
standards on a subscription basis. Reiniche Decl. ¶ 18.

76

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

160. ASHRAE also offers discounts for
libraries, educational uses, government
entities, and individuals or entities who
purchase the 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.

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

The fact is conceded to be undisputed.

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

Defendant’s purported dispute does not go to a material
issue of fact. Defendant does not dispute that ASHRAE
makes the full text available for free viewing online.
Those that are visually impaired, as Mr. Fruchterman
explained, have other avenues for accessing the
standards, including through his online library for the
visually impaired. See Supp. SUMF ¶ 3 (citing Rubel
Supp. Decl. ¶ 4, and Ex. 1 (Fruchterman Dep.) 209:18213:23). Additionally, ASHRAE has provided
individuals with disabilities with alternative forms of
access in the past when individuals have requested
access. Comstock Decl. ¶¶ 4-6.

77

PLAINTIFFS’ RESPONSE
Mr. Jarosz’s conclusion that ASHRAE’s standards are
priced moderately is based on numerous facts, including
the relatively price point of the standards, the free online
access to certain ASHRAE standards provided on
ASHRAE’s website, and Defendant inability to identify
individuals who were unable to access ASTM’s
standards. Rubel Decl., Ex. 1 (Jarosz Rep.) ¶ 86.
ASHRAE also provides copies of its standards to a
reduced cost for libraries, educational uses, government
entities, and individuals or entities who purchase
ASHRAE standards on a subscription basis. Reiniche
Decl. ¶ 18.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 307:915).
167. Defendant admits that “ASHRAE
Standard 90.1 is an important standard.”
Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at
307:24-308:4).

PUBLIC.RESOURCE.ORG’S
DISPUTE
This fact is not material to Plaintiffs’
Motion for Summary Judgment.

PLAINTIFFS’ RESPONSE

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

The fact is conceded to be undisputed.

78

The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

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 99:3100:19).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE

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.

This is not a factual dispute. It is undisputed that none
of the persons who has contributed to the standarddevelopment process contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights.
This is not a factual dispute. It is undisputed that Mr.
Malamud made the quoted statements.

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.
79

This is not a factual dispute. In Public Resource’s Rule
30(b)(6) deposition Mr. Malamud described
inadmissible hearsay evidence regarding vague
assertions that a Mr. Weimer and an unidentified home
builder had “issues” with the accessibility of Plaintiffs’
standards but did not identify a single instance in which
someone was attempting to comply with a regulation
that incorporates by reference any of Plaintiffs’
standards was actually unable to access the standard.
Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at 71:3-77:24).

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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
232:14-19).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.
173. Defendant also submitted comments Disputed to the extent that Plaintiffs
to various executive agencies and offices imply that executive agencies’ policies
requesting that policies and regulations
require amendment to support Public
be changed to state that materials
Resource’s contention that standards
incorporated by reference into
incorporated by reference into the law
government regulations must be available must be available to the public at no
at no cost to the general public. Rubel
cost.
Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at
232:21-233:5).
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 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.

80

PLAINTIFFS’ RESPONSE
This is not a factual dispute. Defendant’s purported
dispute of fact merely reiterates its legal position in this
case. Defendant does not dispute that he testified before
Congress in favor of amending the Copyright Act and
Congress has not, in fact, done so.

This is not a factual dispute. Defendant’s purported
dispute of fact merely reiterates its legal position in this
case. Defendant does not dispute that he submitted
comments to executive agencies and offices requesting
policy changes.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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 is not a factual dispute. It is undisputed that Mr.
Malamud obtained and used hard copies of Plaintiffs’
standards and, as a result, did not agree to the terms of
use on Plaintiffs’ website.

81

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
This fact is not material to Plaintiffs’
Motion for Summary Judgment.

PLAINTIFFS’ RESPONSE

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.

This is not a factual dispute. It is undisputed that Mr.
Malamud asked Ms. Hall to download copies of
ASTM’s standards and to “stay anonymous and mum on
this.” 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 about it. And I’m not
going to do that either.”).

82

The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 PDFs, including the text
created by the OCR software, on
Defendant’s website and on the Internet
Archive. Rubel Decl. ¶ 5, Ex. 2 (PR
Dep. at 156:15-159:6).

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

Disputed. Public Resource posted the
incorporated standards on its website
between 2008 and 2014. SMF ¶ 4.

This is not a factual dispute. Defendant appears to
dispute the timing of when he posted Plaintiffs’ Works
on his website. The evidence he submits in support of
this dispute does not refute the undisputed evidence that
the standards at issue here were not posted until after
2012. Defendant’s only evidence is his statement that
“in 2008, I examined the issue of availability of statemandated safety codes, such as building, electric,
plumbing, and fire codes. . . . Over the next few years,
Public Resource posted many of the incorporated state
safety codes for U.S. states.” Malamud Decl. ¶ 15.
Defendant does not identify the standards at issue here,
if any, that were posted prior to 2012.

83

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE

84

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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, “triple-key”
methodology in which three independent
operators would have typed the text.
Rubel Decl. ¶ 5, Ex. 2 (PR Dep. at 165:2171:1); Rubel Decl. ¶ 8, Ex. 5 (HTC
Dep. at 35:23-36:7); 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).

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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.

Defendant’s purported dispute does not create a genuine
issue of material fact. Plaintiffs’ present evidence that
the materials posted by Defendant were not exact copies
due to some errors. This fact is undisputed.

85

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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, 41:2442:13). 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
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 171:21172:20); Rubel Decl. ¶ 23,
Ex. 19 (Ex. 21 to Point.B Studio Dep.).
194. HTC Global’s rekeying of
Plaintiffs’ standards was done by nonnative English speakers in India with no
technical expertise. Rubel Decl. ¶ 8, Ex.
5 (HTC Dep. at 30:24- 32:16).

PUBLIC.RESOURCE.ORG’S
DISPUTE

86

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.).

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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.

Defendant fails to establish a genuine issue of material
fact. It is undisputed that Defendant merely converted
Plaintiffs’ standards into HTML format. See MSJ 35;
Reply 22-24. Defendant has the burden of proving its
fair use defense. Defendant’s purported dispute of fact
fails to point to evidence sufficient to show that it did
more than merely converting the works from one format
to another.

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).

87

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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
mentoring program whose target
audience was 7-14 to convert formulas to
MathML and 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 they did. Rubel Decl. ¶ 7, Ex. 4
(Point.B Studio 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).

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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

The fact is conceded to be undisputed.

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

The fact is conceded to be undisputed.

88

PLAINTIFFS’ STATEMENT OF
PUBLIC.RESOURCE.ORG’S
MATERIAL FACTS
DISPUTE
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 274:17-275:10, 280:14-282:11, 288:9290:16); 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.).
89

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
PUBLIC.RESOURCE.ORG’S
MATERIAL FACTS
DISPUTE
207. Defendant identified Creative
Commons Universal license 1.0 as a
license that applied to each of the
standards it posted on the Internet
Archive. For each standard, Defendant
included a link to the CCO 1.0 Universal
license. Rubel Decl. ¶ 6, Ex. 3 (C.
Malamud Dep. At 263:22-265:20).
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 277:16-279:13).

90

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
PUBLIC.RESOURCE.ORG’S
MATERIAL FACTS
DISPUTE
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).

91

PLAINTIFFS’ RESPONSE

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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, 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 28:25-29:8).

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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.”

Defendant does not dispute that a goal was
“replication.” Mr. Malamud testified:
Q: Do you intend the text to be identical to
the text that was in the originally published
standard? . . .
A: Text is identical.
Q At least that’s the intention at the time you
post those standards on the website, right? . . .
A: Yes.
Rubel Decl. ¶ 6, Ex. 3 (C. Malamud Dep. at 29:10-21).

92

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.).

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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

This is not a genuine dispute of material fact. It is
undisputed that the Plaintiffs’ standards on Defendant’s
website contained errors. Defendant does not provide
evidence that the versions posted on his website—at the
time he took them down—had no errors.

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

This is not a genuine dispute of material fact. It is
undisputed that the Plaintiffs’ standards on Defendant’s
website contained errors. Defendant does not provide
evidence that the versions posted on his website—at the
time he took them down—had no errors.

93

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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

This is not a genuine dispute of material fact. It is
undisputed that the Plaintiffs’ standards on Defendant’s
website contained errors. Defendant does not provide
evidence that the versions posted on his website—at the
time he took them down—had no errors.

94

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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 crossreferences 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.

PLAINTIFFS’ RESPONSE
This is not a genuine dispute of material fact. It is
undisputed that the Plaintiffs’ standards on Defendant’s
website contained errors. Defendant does not provide
evidence that the versions posted on his website—at the
time he took them down—had no errors.

Disputed. Public Resource’s explicit
This is not a factual dispute. It is undisputed that
purpose is to provide the public with
Defendant intended to encourage the public to access
greater access to the law, saying in the
Plaintiffs’ Works and use them without restrictions.
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.

95

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 provide free public access to
their standards. Rubel Decl. ¶ 6, Ex. 3 (C.
Malamud Dep. at 76:14-77:8, 80:2086:15); 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.).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE

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.”

This is not a factual dispute. It is undisputed as to what
Mr. Malamud said. Defendant does not provide
evidence that Public Resource’s goal does not extend to
other standards.

96

This is not a factual dispute. It is undisputed that
Defendant intended to encourage the public to access
Plaintiffs’ Works and use them without restrictions.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 142:10143:2); 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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE

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

The fact is conceded to be undisputed.

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

The fact is conceded to be undisputed.

97

This is not a factual dispute. It is undisputed as to what
Mr. Malamud said. Defendant does not dispute that it
sought to drive traffic to its website.

The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
230. Mr. Malamud wrote in an email to
his wife, 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 126:4-16);
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.).

PUBLIC.RESOURCE.ORG’S
DISPUTE
This fact is not material to Plaintiffs’
Motion for Summary Judgment.

PLAINTIFFS’ RESPONSE

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

The fact is conceded to be undisputed.

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

The fact is conceded to be undisputed.

98

The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 245:15246:13).
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 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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
This fact is not material to Plaintiffs’
Motion for Summary Judgment.

PLAINTIFFS’ RESPONSE

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

The fact is conceded to be undisputed.

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.

This is not a factual dispute. Defendant merely
references the legal arguments it makes in Opposition to
Summary Judgment from undisputed facts.

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

This is not a factual dispute. It is undisputed that
Defendant did not identify any evidence in support of its
affirmative defenses in response to Plaintiffs’
interrogatories.

99

The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

100

PLAINTIFFS’ RESPONSE
Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike. This
conclusion is further supported by fact testimony.
Thomas Decl. ¶¶ 37-38; Pauley Decl. ¶¶ 46-51; Rubel
Decl. ¶ 49, Ex. 45 (Mullen Dep. at 224:14-229:5).

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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 NFPA-PR0038555. 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 stateincorporated 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.

101

PLAINTIFFS’ RESPONSE
Defendant’s dispute merely references and reiterates
arguments made in its Motion to Strike Mr. Jarosz and
is not a legitimate challenge to the expert opinions or
qualifications of Mr. Jarosz and the facts that he relies
upon. See Plaintiffs’ Opposition to the Motion to Strike.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 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.).

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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; 271:7-272:14.)
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.

This is not a factual dispute. Defendant’s purported
dispute is only with the nomenclature and Plaintiffs’
statement of undisputed facts distinguishes between
“downloads” and “accesses,” the latter of which is
covered by SUMF ¶ 244. Defendant concedes that
requests were made (by human or computer) for Public
Resource’s website to send Plaintiffs’ standards and the
website did so anywhere from tens to tens of thousands
of times. Defendant does not provide any evidence that
the ultimate recipients of these standards were not
human.

102

This is not a factual dispute. Defendant merely
references the legal arguments it makes in Opposition to
Summary Judgment from undisputed facts.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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; 271:7-272:14.)
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.

103

PLAINTIFFS’ RESPONSE
This is not a factual dispute. Defendant’s purported
dispute is only with the nomenclature and Plaintiffs’
statement of undisputed facts distinguishes between
“downloads” and “accesses,” the latter of which is
covered by SUMF ¶ 244. Defendant concedes that
requests were made (by human or computer) for Public
Resource’s website to send Plaintiffs’ standards and
the website did so anywhere from tens to tens of
thousands of times. Defendant does not provide any
evidence that the ultimate recipients of these standards
were not human.
This is not a factual dispute. Defendant merely
references the legal arguments it makes in Opposition to
Summary Judgment from undisputed facts.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.).

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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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; 271:7-272:14.)
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.

104

PLAINTIFFS’ RESPONSE
This is not a factual dispute. Defendant’s purported
dispute is only with the nomenclature and Plaintiffs’
statement of undisputed facts distinguishes between
“downloads” and “accesses,” the latter of which is
covered by SUMF ¶ 244. Defendant concedes that
requests were made (by human or computer) for Public
Resource’s website to send ASTM D975-07 159 times
and ASTM D86-07 75 times and that the website
responded to those requests. Defendant does not
provide any evidence that the ultimate recipients of
these standards were not human.
This is not a factual dispute. Defendant merely
references the legal arguments it makes in Opposition to
Summary Judgment from undisputed facts.

This is not a factual dispute. Defendant merely
references the legal arguments it makes in Opposition to
Summary Judgment from undisputed facts.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed. Any loss of anticompetitive
advantage in the sale of downstream
materials is not a cognizable harm.
(SMF ¶ 126.)

PLAINTIFFS’ RESPONSE

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.

Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz and the
facts that he relies upon. See Plaintiffs’ Opposition to
the Motion to Strike. This conclusion is further
supported by fact testimony. Pauley Decl. ¶ 53.

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.
246. It is exceedingly difficult to quantify Disputed. This is an opinion, not a fact.
or forecast the economic impact of
Mr. Jarosz is not qualified as an expert
Defendant’s activities. Rubel Decl. ¶ 4,
to opine on harm to the Plaintiffs, nor on
Ex. 1 (Jarosz Rep. ¶¶ 150-54).
the effects of Public Resource’s
activities. See Public Resource’s Motion
to Strike Jarosz Report.
247. Defendant does not know what
people do with the versions of Plaintiffs’
standards that are posted on Defendant’s
website. Rubel Decl. ¶ 6, Ex. 3 (C.
Malamud Dep. At 72:12-16).

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

105

Defendant’s purported dispute is legal, not factual.
Defendant disputes whether this undisputed fact
constitutes a “cognizable harm,” which is a question of
law.

This is not a factual dispute. Defendant merely
references the legal arguments it makes in Opposition to
Summary Judgment from undisputed facts.

Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike.

The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
248. Defendant has no way to identify
who downloaded, made additional copies
of, or printed the versions of Plaintiffs’
standards from its website. Rubel Decl. ¶
6, Ex. 3 (C. Malamud Dep. at 73:2576:5).
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
This fact is not material to Plaintiffs’
Motion for Summary Judgment.

PLAINTIFFS’ RESPONSE

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 NFPA-PR0038555.

Defendant fails to establish a genuine issue of material
fact. Defendant has the burden of proving its fair use
defense. Defendant’s purported dispute of fact fails to
create a genuine issue of material fact regarding whether
Defendant’s sue has not cause and will not cause harm
in any relevant market.

106

The fact is conceded to be undisputed.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
251. Copyright protection provides an
incentive for Plaintiffs to innovate and
develop new works. If a work can be
copied or sold by another entity, there
may not be sufficient incentives for the
author to develop the work. Rubel Decl.
¶ 4, Ex. 1 (Jarosz Rep. ¶ 102).

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed. The persons who volunteer to
create and develop voluntary consensus
standards have incentives to do so that
are independent of owning the copyright
to the standards. SMF ¶ 28. 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.

107

PLAINTIFFS’ RESPONSE
Defendants do not state an actual dispute. That
volunteers may have other reasons and incentives for
participating in the development process is not
inconsistent with the role copyright protection plays in
Plaintiffs’ incentives to innovate and develop new
works.
It is undisputed that Plaintiffs oversee, coordinate, and
manage the standards development process in
accordance with Plaintiffs’ policies, and that the persons
from various interested constituencies who contribute to
the standard-development process do so for Plaintiffs
and within Plaintiffs’ standards-development
procedures. Not one of those persons or anyone they
work for or with whom they are affiliated contends that
they, rather than the Plaintiff in issue, owns all or any
part of one of the Works at issue. Defendant has raised
a legal issue whether the involvement of such persons
has any effect on Plaintiffs’ ownership of the
copyrights. For the reasons explained in Plaintiffs’
briefing, it does not. MSJ 15-18; Reply 27-35.
Furthermore, each Plaintiff submitted undisputed
evidence that its own employees drafted language for
the Works at issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶
15-39 and Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley
Decl. ¶¶ 38-40 and Dubay Dep. 54:19-56:12; 66:2067:12; 69:2-18) (NFPA); and id. ¶¶ 138-41 (citing
Reiniche Decl. ¶¶ 10-11 and Reiniche Dep. 35:23-38:2;
97:13-98:19) (ASHRAE).

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
252. “Plaintiffs require substantial
resources to continue their standards
development efforts. Revenue generated
from the sale of copyrighted standards
and downstream products and services
based on these copyrighted standards are
a key contributor to the resources needed
to carry out these functions.” Rubel Decl.
¶ 4, Ex. 1 (Jarosz Rep. ¶ 6).

PUBLIC.RESOURCE.ORG’S
DISPUTE
Disputed. The persons who volunteer to
create and develop voluntary consensus
standards have incentives to do so that
are independent of owning the copyright
to the standards. SMF ¶ 28.
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.
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.

108

PLAINTIFFS’ RESPONSE
Defendants do not state an actual dispute. That
volunteers may have other reasons and incentives for
participating in the development process is not
inconsistent with the role copyright protection plays in
Plaintiffs’ incentives to innovate and develop new
works.
It is undisputed that Plaintiffs oversee, coordinate, and
manage the standards development process in
accordance with Plaintiffs’ policies, and that the persons
from various interested constituencies who contribute to
the standard-development process do so for Plaintiffs
and within Plaintiffs’ standards-development
procedures. Not one of those persons or anyone they
work for or with whom they are affiliated contends that
they, rather than the Plaintiff in issue, owns all or any
part of one of the Works at issue. Defendant has raised
a legal issue whether the involvement of such persons
has any effect on Plaintiffs’ ownership of the
copyrights. For the reasons explained in Plaintiffs’
briefing, it does not. MSJ 15-18; Reply 27-35.
Furthermore, each Plaintiff submitted undisputed
evidence that its own employees drafted language for
the Works at issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶
15-39 and Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley
Decl. ¶¶ 38-40 and Dubay Dep. 54:19-56:12; 66:2067:12; 69:2-18) (NFPA); and id. ¶¶ 138-41 (citing
Reiniche Decl. ¶¶ 10-11 and Reiniche Dep. 35:23-38:2;
97:13-98:19) (ASHRAE).
Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike. This
conclusion is further supported by fact testimony.
Thomas Decl. ¶¶ 37-38; Pauley Decl. ¶¶ 46-51; Rubel
Decl. ¶ 49, Ex. 45 (Mullen Dep. at 224:14-229:5).

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
253. If the revenue from the sales of their
copyrighted works and ancillary were in
jeopardy, Defendants would be forced to
change their behavior and their business
models. Rubel Decl. ¶ 4, Ex. 1 (Jarosz
Rep. ¶ 163).
254. There is a significant risk that if
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 211:519).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

109

PLAINTIFFS’ RESPONSE
Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike. This
conclusion is further supported by fact testimony.
Thomas Decl. ¶¶ 37-38; Pauley Decl. ¶ 51.
Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 272:14-19); Rubel Decl. ¶ 47, Ex. 43
(Ex. 76 to C. Malamud Dep.).

PUBLIC.RESOURCE.ORG’S
DISPUTE
This fact is not material to Plaintiffs’
Motion for Summary Judgment.

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).

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.

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).

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.

Further, Plaintiffs distort Mr.
Malamud’s testimony beyond its actual
meaning.

110

PLAINTIFFS’ RESPONSE
The fact is conceded to be undisputed.
Plaintiffs’ do not distort Mr. Malamud’s statements:
Many people have said I should say what their
answer is, and I think that’s a strategic mistake.
I can open up the possibilities, talk about the
economics, but I can’t tell them the way to do
their business. That’s a definite loss, I can’t
win that discussion. Our policy is very
deliberately focused on “it doesn’t matter, we
have the right to speak it.” It’s an absolutist
position, but it’s the only way we can possibly
win this fight.
Rubel Decl. ¶ 47, Ex. 43.
Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike. This
conclusion is further supported by fact testimony.
Thomas Decl. ¶¶ 37-38; Pauley Decl. ¶¶ 46-51; Rubel
Decl. ¶ 49, Ex. 45 (Mullen Dep. at 224:14-229:5).
Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike. This
conclusion is further supported by fact testimony.
Thomas Decl. ¶¶ 37-38; Pauley Decl. ¶¶ 46-51; Rubel
Decl. ¶ 49, Ex. 45 (Mullen Dep. at 224:14-229:5).

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
259. Plaintiffs could be forced to
significantly alter their business models
to a more “front-loaded” system that
charges for participation in the standardcreation 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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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 ¶ 132–38.

111

PLAINTIFFS’ RESPONSE
Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike. This
conclusion is further supported by fact testimony.
Thomas Decl. ¶¶ 37-38; Pauley Decl. ¶¶ 46-51; Rubel
Decl. ¶ 49, Ex. 45 (Mullen Dep. at 224:14-229:5).
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, each
Plaintiff submitted undisputed evidence that its own
employees drafted language for the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley Decl. ¶¶ 3840 and Dubay Dep. 54:19-56:12; 66:20-67:12; 69:2-18)
(NFPA); and id. ¶¶ 138-41 (citing Reiniche Decl. ¶¶ 1011 and Reiniche Dep. 35:23-38:2; 97:13-98:19)
(ASHRAE).

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
260. Standards developed under a frontloaded 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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE

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.

There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, each
Plaintiff submitted undisputed evidence that its own
employees drafted language for the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley Decl. ¶¶ 3840 and Dubay Dep. 54:19-56:12; 66:20-67:12; 69:2-18)
(NFPA); and id. ¶¶ 138-41 (citing Reiniche Decl. ¶¶ 1011 and Reiniche Dep. 35:23-38:2; 97:13-98:19)
(ASHRAE).

Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike.

Defendant’s statement that volunteers do not receive
proceeds from the sale of the standards is a non sequitur.

112

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE
Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike.
This conclusion is further supported by fact testimony.
Pauley Decl. ¶ 51.
There is no factual dispute. It is undisputed that
Plaintiffs oversee, coordinate, and manage the standards
development process in accordance with Plaintiffs’
policies, and that the persons from various interested
constituencies who contribute to the standarddevelopment process do so for Plaintiffs and within
Plaintiffs’ standards-development procedures. Not one
of those persons or anyone they work for or with whom
they are affiliated contends that they, rather than the
Plaintiff in issue, owns all or any part of one of the
Works at issue. Defendant has raised a legal issue
whether the involvement of such persons has any effect
on Plaintiffs’ ownership of the copyrights. For the
reasons explained in Plaintiffs’ briefing, it does
not. MSJ 15-18; Reply 27-35. Furthermore, each
Plaintiff submitted undisputed evidence that its own
employees drafted language for the Works at
issue. SUMF ¶ 35 (citing O’Brien Decl. ¶¶ 15-39 and
Exs. 5-9) (ASTM); id. ¶ 117 (citing Pauley Decl. ¶¶ 3840 and Dubay Dep. 54:19-56:12; 66:20-67:12; 69:2-18)
(NFPA); and id. ¶¶ 138-41 (citing Reiniche Decl. ¶¶ 1011 and Reiniche Dep. 35:23-38:2; 97:13-98:19)
(ASHRAE).
Defendant’s statement that volunteers do not receive
proceeds from the sale of the standards is a non sequitur.

113

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 costeffective
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. ¶¶ 51-53);
Jennings Decl. ¶¶ 22-23.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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’ RESPONSE

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.

Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike. This
conclusion is further supported by fact testimony.
Thomas Decl. ¶ 41.

114

Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike. This
conclusion is further supported by fact testimony.
Thomas Decl. ¶ 41.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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. ¶¶ 5256,164); Jennings Decl. ¶ 24; Reinertson
Decl. ¶¶ 11-14; Golinveaux Decl. ¶ 6.

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE
This undisputed fact is based on admissible evidence.
Mr. Jennings is the Director of Program Operations for
the Tennessee Department of Agriculture and represents
his state on ASTM International Committees D02, D03,
D15. Jennings Decl. ¶ 3. Mr. Reinertson works for the
Riverside Office of the Fire Marshall and recently
served as the Division Chief for the California Office of
the State Fire Marshall (“OSFM”). Reinertson Decl.
¶ 1. Mr. Golinveaux has more than 30 years of
experience in the fire protection industry and has been a
member of the NFPA 13 Technical Committee for more
than 20 years, in addition to other technical committees.
Golinveaux Decl. ¶ 3-4. Their testimony is based on
years of experience working with SDOs, governments
and other entities. Jennings Decl. ¶ 24; Reinertson
Decl. ¶¶ 11-14; Golinveaux Decl. ¶ 6.
Defendant’s dispute further references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike.

115

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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.

PLAINTIFFS’ RESPONSE
There is no factual dispute. It is undisputed that there
are costs to developing standards. It logically follows
that, for future standards to be developed, someone will
have to bare those costs.
It is also undisputed that persons from various interested
constituencies contribute to the standard-development
process for Plaintiffs. Not one of those persons or
anyone they work for or with whom they are affiliated
contends that they, rather than the Plaintiff in issue,
owns all or any part of one of the Works at
issue. Defendant has raised a legal issue whether the
involvement of such persons has any effect on
Plaintiffs’ ownership of the copyrights. For the reasons
explained in Plaintiffs’ briefing, it does not. MSJ 15-18;
Reply 27-35. Furthermore, each Plaintiff submitted
undisputed evidence that its own employees drafted
language for the Works at issue. SUMF ¶ 35 (citing
O’Brien Decl. ¶¶ 15-39 and Exs. 5-9) (ASTM); id. ¶ 117
(citing Pauley Decl. ¶¶ 38-40 and Dubay Dep. 54:1956:12; 66:20-67:12; 69:2-18) (NFPA); and id. ¶¶ 138-41
(citing Reiniche Decl. ¶¶ 10-11 and Reiniche Dep.
35:23-38:2; 97:13-98:19) (ASHRAE).

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).

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.

116

Defendant’s statement that volunteers do not receive
proceeds from the sale of the standards is a non sequitur.
Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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 financial resources available to
pay any damages award. Rubel Decl. ¶ 4,
Ex. 1 (Jarosz Rep. ¶ 155).

PUBLIC.RESOURCE.ORG’S
DISPUTE
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 selfserving statements by Plaintiffs. See
Public Resource’s Motion to Strike
Jarosz Report.

PLAINTIFFS’ RESPONSE

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 selfserving statements by Plaintiffs. See
Public Resource’s Motion to Strike
Jarosz Report.

Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike. This
conclusion is further supported by fact testimony.
Pauley Decl. ¶ 51; Golinveaux Decl. ¶ 7; Reinertson
Decl. ¶¶ 11-12.

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 selfserving statements by Plaintiffs. See
Public Resource’s Motion to Strike
Jarosz Report.

Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike. Pauley
Decl. ¶ 51; Golinveaux Decl. ¶ 7; Reinertson Decl. ¶¶
11-12.

117

Defendant’s dispute merely references its Motion to
Strike Mr. Jarosz and is not a legitimate challenge to the
expert opinions or qualifications of Mr. Jarosz. See
Plaintiffs’ Opposition to the Motion to Strike.

PLAINTIFFS’ STATEMENT OF
MATERIAL FACTS
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)

PUBLIC.RESOURCE.ORG’S
DISPUTE

PLAINTIFFS’ RESPONSE

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

The fact is conceded to be undisputed.

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

The fact is conceded to be undisputed.

118

PLAINTIFFS’ STATEMENT OF
PUBLIC.RESOURCE.ORG’S
MATERIAL FACTS
DISPUTE
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).

119

PLAINTIFFS’ RESPONSE

Dated: January 21, 2016

Respectfully submitted,
/s/ J. Kevin Fee
Michael F. Clayton (D.C. Bar: 335307)
J. Kevin Fee (D.C. Bar: 494016)
Jordana S. Rubel (D.C. Bar: 988423)
Morgan, Lewis & Bockius LLP
1111 Pennsylvania Ave., N.W.
Washington, D.C. 20004
Telephone: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
Counsel For American Society For Testing And Materials
d/b/a/ ASTM International
/s/ Kelly Klaus
Anjan Choudhury (D.C. Bar: 497271)
Munger, Tolles & Olson LLP
355 South Grand Avenue, 35th Floor
Los Angeles, CA 90071
Tel: [phone]
Email: [e-mail]
Kelly M. Klaus
Jonathan H. Blavin
Nathan M. Rehn
Munger, Tolles & Olson LLP
560 Mission St., 27th Floor
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
Counsel for National Fire Protection Association, Inc.
/s/ Joseph R. Wetzel
Jeffrey S. Bucholtz (D.C. Bar: 452385)
King & Spalding LLP
1700 Pennsylvania Avenue, NW, Ste. 200
Washington, DC 20006-4707
51

Tel: [phone]
Email: [e-mail]
Kenneth L. Steinthal
Joseph R. Wetzel
King & Spalding LLP
101 Second Street, Ste. 2300
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
[e-mail]
Counsel for American Society of Heating, Refrigerating,
and Air Conditioning Engineers

52