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).

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/
Counter-Plaintiff.
PLAINTIFFS’ RESPONSE TO DEFENDANT’S OBJECTIONS TO PLAINTIFFS’
EVIDENCE IN SUPPORT OF PLAINTIFFS’ MOTION FOR SUMMARY JUDGMENT
AND PERMANENT INJUNCTION
Plaintiffs respectfully submit this response to Defendant’s Objections to Plaintiffs’
Evidence in Support of Plaintiffs’ Motion for Summary Judgment and Permanent Injunction
(Dkt. No. 121-4). As an initial matter, Plaintiffs note that Defendant’s filing of a separate
document does not appear to be contemplated by applicable procedural rules, and Plaintiffs
believe the document to be unnecessary. Nevertheless, in an abundance of caution, Plaintiffs
hereby respond to each objection in case the Court wished to consider any of Defendant’s
specific objections.
As a general matter, Defendant raises numerous objections that are inapplicable. For
instance, Defendant raises objections pursuant to Federal Rule of Evidence 403, even though that
1

rule is generally inapplicable in bench trials. United States v. Preston, 706 F.3d 1106, 1117-18
(9th Cir. Feb. 5, 2013). Additionally, Defendant argues for a hyper-technical application of the
Federal Rules of Evidence that incorrectly assumes all evidence used at summary judgment must
be presented in a form admissible at trial. This is the wrong standard. At the summary judgment
stage, the correct challenge from a non-offering party is that the evidence is not capable of being
presented in an admissible manner at trial. Fed. R. Civ. Proc. at 56(c)(2); Fraser v. Goodale, 342
F.3d 1032, 1036 (9th Cir. 2003) (“At the summary-judgment stage, we do not focus on the
admissibility of the evidence’s form. We instead focus on the admissibility of its contents.”). For
these reasons, and the specific arguments presented below in response to each objection, the
Court should overrule Defendant’s objections.

2

DECLARATION OF DENNIS J.
BERRY IN SUPPORT OF
PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT
1.
I am Secretary of the Corporation
and Director of Licensing for the National
Fire Protection Association (“NFPA”).
My duties include negotiating and
overseeing NFPA’s licenses for its codes
and standards. The following facts are
based upon my own personal knowledge,
and if called upon to do so, I could and
would testify competently hereto.
2.
NFPA owns a United States
copyright registration for the 2011 edition
of the National Electrical Code. Attached
hereto as Exhibit A is a true and correct
copy of the registration certificate for this
work.
3.
NFPA owns a United States
copyright registration for the 2014 edition
of the National Electrical Code. Attached
hereto as Exhibit B is a true and correct
copy of the registration certificate for this
work.
4.
NFPA owns a United States
trademark registration for the trademark
National Fire Protection Association.
Attached hereto as Exhibit C is a true and
correct copy of this trademark registration.

PUBLIC.RESOURCE.ORG’S
OBJECTIONS

PLAINTIFF’S RESPONSE TO
OBJECTIONS

FRE 1002 Secondary Evidence
Rule. This testimony appears to be
attempting to prove the content of
the exhibit.

FRE 1002 is inapplicable. The referenced
document is attached to this declaration, and the
declaration is not intended to prove the content of
the document for the obvious reason that the
document itself is attached.

Exhibit C

FRE 802 Hearsay. NFPA has failed
to disclose the identity a custodian

This evidence does not have to be admissible at
trial in its presented form, instead the correct

No objection.

No objection.

No objection.

1

of records who would be able to
satisfy the requirements of the
business records exception to
hearsay for this document.

FRE 901 Lack of Authentication.
NFPA has failed to disclose the
identity a custodian of records who
would be able to authenticate this
document.

This evidence does not have to be admissible at
trial in its presented form, instead the correct
challenge from the non-offering party is that the
evidence is not capable of being presented in an
admissible manner at trial. Fed. R. Civ. P. at
56(c)(2); Fraser v. Goodale, 342 F.3d 1032,
1036 (9th Cir. 2003). If necessary, NFPA will
produce a custodian at trial.

FRE 1002 Secondary Evidence
Rule. This exhibit appears to be a
document created by a private
nonparty WebTMS. It is not a
trademark registration.
5.
NFPA owns a United States
trademark registration for the trademark
NFPA. Attached hereto as Exhibit D is a
true and correct copy of this trademark
registration.

challenge from the non-offering party is that the
evidence is not capable of being presented in an
admissible manner at trial. Fed. R. Civ. P. at
56(c)(2); Fraser v. Goodale, 342 F.3d 1032,
1036 (9th Cir. 2003). This document is a
business record pursuant to Fed. R. Evid. 803,
and, if necessary, NFPA will produce a custodian
at trial.

FRE 1002 does not prohibit secondary evidence
of a “fact” about a writing. The exhibit is not
intended to prove the content of the trademark
registration and no fraud is alleged. See 2
McCormick On Evid. § 234 (7th ed.)

FRE 1002 Secondary Evidence
Rule. This testimony appears to be
attempting to prove the content of
the exhibit.

FRE 1002 is inapplicable. The referenced
document is attached to this declaration, and the
declaration is not intended to prove the content of
the document for the obvious reason that the
document itself is attached.

2

This evidence does not have to be admissible at
trial in its presented form, instead the correct
challenge from the non-offering party is that the
evidence is not capable of being presented in an
admissible manner at trial. Fed. R. Civ. P. at
56(c)(2); Fraser v. Goodale, 342 F.3d 1032,
1036 (9th Cir. 2003). This document is a
business record pursuant to Fed. R. Evid. 803,
and, if necessary, NFPA will produce a
custodian at trial.
This evidence does not have to be admissible at
trial in its presented form, instead the correct
challenge from the non-offering party is that the
evidence is not capable of being presented in an
admissible manner at trial. Fed. R. Civ. P. at
56(c)(2); Fraser v. Goodale, 342 F.3d 1032,
1036 (9th Cir. 2003). If necessary, NFPA will
produce a custodian at trial.

FRE 1002 Secondary Evidence
Rule. This exhibit appears to be a
document created by a private
nonparty WebTMS. It is not a
trademark registration.
6.
NFPA owns a United States
trademark registration for the NFPA logo:

FRE 802 Hearsay. NFPA has failed
to disclose the identity a custodian
of records who would be able to
satisfy the requirements of the
business records exception to
hearsay for this document.

FRE 901 Lack of Authentication.
NFPA has failed to disclose the
identity a custodian of records who
would be able to authenticate this
document.

Exhibit D

FRE 1002 does not prohibit secondary evidence
of a “fact” about a writing. The exhibit is not
intended to prove the content of the trademark
registration and no fraud is alleged. See 2
McCormick On Evid. § 234 (7th ed.)

FRE 1002 Secondary Evidence
Rule. This testimony appears to be
attempting to prove the content of
the exhibit.

FRE 1002 is inapplicable. The referenced
document is attached to this declaration, and the
declaration is not intended to prove the content of
the document for the obvious reason that the
document itself is attached.

3

Attached hereto as Exhibit E is a true and
correct copy of this trademark registration.
FRE 802 Hearsay. NFPA has failed
Exhibit E
to disclose the identify a custodian
of records who would be able to
satisfy the requirements of the
business records exception to
hearsay for this document.

FRE 901 Lack of Authentication.
NFPA has failed to disclose the
identify a custodian of records who
would be able to authenticate this
document.

4

This evidence does not have to be admissible at
trial in its presented form, instead the correct
challenge from the non-offering party is that the
evidence is not capable of being presented in an
admissible manner at trial. Fed. R. Civ. P. at
56(c)(2); Fraser v. Goodale, 342 F.3d 1032,
1036 (9th Cir. 2003). This document is a
business record pursuant to Fed. R. Evid. 803,
and, if necessary, NFPA will produce a
custodian at trial.
This evidence does not have to be admissible at
trial in its presented form, instead the correct
challenge from the non-offering party is that the
evidence is not capable of being presented in an
admissible manner at trial. Fed. R. Civ. P. at
56(c)(2); Fraser v. Goodale, 342 F.3d 1032,
1036 (9th Cir. 2003). If necessary, NFPA will
produce a custodian at trial.

FRE 1002 Secondary Evidence
Rule. This exhibit appears to be a
document created by a private
nonparty WebTMS. It is not a
trademark registration.

FRE 1002 does not prohibit secondary evidence
of a “fact” about a writing. The exhibit is not
intended to prove the content of the trademark
registration and no fraud is alleged. See 2
McCormick On Evid. § 234 (7th ed.)

7.
NFPA owns a United States
trademark registration for the trademarks
National Electrical Code and NEC.
Attached hereto as Exhibits F and G are
true and correct copies of these trademark
registrations.
8.
NFPA owns a United States
trademark registration for the trademark
NFPA 70. Attached hereto as Exhibit H is
a true and correct copy of this trademark
registration

No objection.

FRE 1002 Secondary Evidence
Rule. This testimony appears to be
attempting to prove the content of
the exhibit.

FRE 1002 is inapplicable. The referenced
document is attached to this declaration, and the
declaration is not intended to prove the content of
the document for the obvious reason that the
document itself is attached.

Exhibit H

FRE 802 Hearsay. NFPA has failed
to disclose the identify a custodian
of records who would be able to
satisfy the requirements of the
business records exception to
hearsay for this document.

This evidence does not have to be admissible at
trial in its presented form, instead the correct
challenge from the non-offering party is that the
evidence is not capable of being presented in an
admissible manner at trial. Fed. R. Civ. P. at
56(c)(2); Fraser v. Goodale, 342 F.3d 1032, 1036
(9th Cir. 2003). This document is a business
record pursuant to Fed. R. Evid. 803, and, if
necessary, NFPA will produce a custodian at
trial.

FRE 901 Lack of Authentication.
NFPA has failed to disclose the
identify a custodian of records who
would be able to authenticate this

This evidence does not have to be admissible at
trial in its presented form, instead the correct
challenge from the non-offering party is that the
evidence is not capable of being presented in an

5

document.

9.
NFPA owns a United States
trademark registration for the NEC logo:

Attached hereto as Exhibit I is a true and
correct copy of this trademark registration.
10.
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.

admissible manner at trial. Fed. R. Civ. P. at
56(c)(2); Fraser v. Goodale, 342 F.3d 1032,
1036 (9th Cir. 2003). If necessary, NFPA will
produce a custodian at trial.

FRE 1002 Secondary Evidence
Rule. This exhibit appears to be a
document created by a private
nonparty WebTMS. It is not a
trademark registration.
No objection.

FRE 1002 does not prohibit secondary evidence
of a “fact” about a writing. The exhibit is not
intended to prove the content of the trademark
registration and no fraud is alleged. See 2
McCormick On Evid. § 234 (7th ed.)

FRE 602 Lack of personal
knowledge. The witness has not
established personal knowledge of
NFPA’s practices concerning
permissions to use NFPA standards.
Therefore, the witness lacks
personal knowledge of what may or
may not be routine.

This is fact evidence based on personal
knowledge. 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 non-

6

commercial purposes at no cost.

11.
Attached hereto as Exhibit J is a
true and correct copy of a January 22,
2015 email to me from a merchant who
attempted to sell a PDF copy of the 2014
NEC on eBay without authorization from
NFPA. The reseller asserted that the
standard “is public domain and is readily
downloadable,” and attached a link to an
electronic copy of the standard posted by
Public.Resource.Org as support for that
assertion. This email is a business record
of NFPA, recorded at the time of its
receipt, created as a regular practice of
NFPA to be kept and relied on by NFPA
staff in the ordinary course of business.
Exhibit J

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.
FRE 802 Hearsay. The witness
recites an out of court statement
introduced for the truth of the
matter asserted.

The out of court statement is not being offered
for the truth of the matter asserted, but rather as
evidence of present sense impression. Further,
the email is a business record recorded at the
time of receipt and kept in the ordinary course of
business.

FRE 1002 Secondary Evidence. The FRE 1002 is inapplicable. The referenced
witness’s testimony attempts to
document is attached to this declaration, and the
declaration is not intended to prove the content of
prove the content of a writing.
the document for the obvious reason that the
document itself is attached.

FRE 802 Hearsay. Exhibit J is an
email from a nonparty to the
witness. The Exhibit contains out of
court statements introduced for the
truth of the matter asserted. Exhibit
J is not a record of a regularly
conducted activity under
FRE 803(6) because NFPA did not
make the record; the nonparty did.
Further, the declarant is anonymous,
which indicates a lack of
7

The out of court statement is not being offered
for the truth of the matter asserted, but rather as
evidence of present sense impression. Further,
the email is a business record recorded at the
time of receipt and kept in the ordinary course of
business. Anonymity has no bearing on the
purpose for which the exhibits is offered.

12.
Attached hereto as Exhibit K is a
true and correct copy of an October 13,
2015 email to me from a merchant who
attempted to use a PDF copy of the 2014
NEC as an inducement to purchase
another product on the internet without
authorization from NFPA. The merchant
asserted that the standard is “provided for
use by the public, for free,” and attached a
link to an electronic copy of the standard
posted by Public.Resource.Org as support
for that assertion. This email is a business
record of NFPA, recorded at the time of
its receipt, created as a regular practice of
NFPA to be kept and relied on by NFPA
staff in the ordinary course of business.
Exhibit K

trustworthiness.
FRE 802 Hearsay. The witness
recites an out of court statement
introduced for the truth of the
matter asserted.

The out of court statement is not being offered
for the truth of the matter asserted, but rather as
evidence of present sense impression. Further,
the email is a business record recorded at the
time of receipt and kept in the ordinary course of
business.

FRE 1002 Secondary Evidence. The
witness’s testimony attempts to
prove the content of two writings—
the purported “inducement” and
Exhibit K.

FRE 1002 is inapplicable. The referenced
document is attached to this declaration, and the
declaration is not intended to prove the content of
the document for the obvious reason that the
document itself is attached.

FRE 106 Completeness. Exhibit K
refers to an enclosed letter. The
letter is not provided with the
exhibit and has not been disclosed
to Public Resource.

This evidence does not have to be admissible at
trial in its presented form, instead the correct
challenge from the non-offering party is that the
evidence is not capable of being presented in an
admissible manner at trial. Fed. R. Civ. P. at
56(c)(2); Fraser v. Goodale, 342 F.3d 1032,
1036 (9th Cir. 2003). If necessary, NFPA will
produce the letter at trial.

FRE 802 Exhibit K is an email from
a nonparty to the witness. The
Exhibit contains out of court
statements introduced for the truth
of the matter asserted. Exhibit K is
not a record of a regularly
conducted activity under

The out of court statement is not being offered
for the truth of the matter asserted, but rather as
evidence of present sense impression. Further,
the email is a business record recorded at the
time of receipt and kept in the ordinary course of
business.

8

13.
I understand that Defendant in this
case, Public.Resource.Org, recently
removed NFPA’s standards from its
website. NFPA has not received any
complaints from any persons claiming that
they were unable to access NFPA
standards since that time.

FRE 803(6) because NFPA did not
make the record; the nonparty did.
FRE 402 Relevance. This testimony
is not relevant to the subject matter
of this litigation.
FRE 403 Prejudice. This testimony
is prejudicial because it assumes,
without supporting evidence, that
NFPA has a system for receiving
complaints regarding the
accessibility of standards and that
people unable to access NFPA’s
standards would complain to NFPA.
FRE 602 Lack of Personal
Knowledge. The witness has not
established that he has personal
knowledge of all complaints that
NFPA receives.

DECLARATION OF STEVEN
CRAMER IN SUPPORT OF
PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT
1.
I am over the age of 18 years and
am fully competent to testify to the
matters stated in this Declaration.
2.
This declaration is based on my

PUBLIC.RESOURCE.ORG’S
OBJECTIONS

No objection.

No objection.
9

This evidence is clearly relevant to Defendant’s
claim that individuals do not have a reasonable
means of accessing NFPA standards. Defendant
has not shown that this relevance is outweighed
by any prejudicial effect, especially in light of the
fact that this is a bench trial and therefore there is
no risk of prejudice.

This is fact evidence based on personal
knowledge. 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 and often the recipient of
requests regarding NFPA standards, Mr. Berry
has personal knowledge of the absence of any
complaints to NFPA since Defendant has
removed NFPA’s standards from its website.

personal knowledge. If called to do so, I
would and could testify to the matters
stated herein.
3.
I am the Vice-Provost for
Teaching and Learning and Professor of
Civil and Environmental Engineering at
the University of Wisconsin-Madison. My
research focuses on the mechanical
behavior of wood and wood-based
materials, the design and analysis of wood
structures, and the performance of
concrete construction materials.
4.
I am a member of ASTM
International (“ASTM”). I have been a
member of ASTM since 1986.
5.
From 2006-2009, I was the
Chairman of ASTM’s Committee D07,
which is the committee that develops
standards related to wood. This committee
has jurisdiction over 116 ASTM
standards.
6.
I understood since I joined ASTM
that ASTM would own the copyright in
any standards or materials I helped to
develop.

7.
I consider my contributions to the
ASTM standard development process to
be contributions to my profession and to
the related industries. ASTM provides the
framework that allows me to make this
contribution.

No objection.

No objection.

No objection.

FRE 402 Relevance. The witness’s
“understanding” is not relevant to
the issue of whether ASTM owns a
copyright interest in any particular
standard.
No objection.

10

The declarant’s understanding is relevant to
ASTM’s position that members who participate
in its standards development activities do not
dispute ASTM’s ownership of the copyrights in
the standards and do not claim to own any
copyright interest in the ASTM standards.

8.
ASTM plays a stewardship role in
convening a diverse group of members,
providing the infrastructure that makes it
possible for members to contribute ideas,
and ultimately creating a usable product
that members will use and from which the
entire industry will benefit.

FRE 402, 403 Relevance and
Confusing. It is not clear what the
witness means by a “stewardship
role,” and it is not clear that
“stewardship” is relevant to the
claims in the case.

This testimony is relevant to the need for
injunctive relief, among other things, because it
explains the role that ASTM plays in the standard
development process that ASTM could no longer
provide it Plaintiff prevails and/or is not
enjoined.
Defendant offers no explanation as to how the
words “stewardship role” is vague or confusion
or how this statement could be unfairly
prejudicial. When and if Defendant identifies
any specific reason, Plaintiffs reserve the right to
respond to any identification.

FRE 602 Lack of Personal
Knowledge. The witness lacks
personal knowledge concerning the
causal statement of what ASTM
“makes possible,” whether ASTM
creates “a useable product” and
whether the “product” benefits the
“entire industry.”

In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr. Cramer
explains that he has been a member of ASTM for
29 years and, in paragraph 5, Mr. Cramer
explains that he was the Chairman of an ASTM
committee for 3 years. As a result, Mr. Cramer
certainly has personal knowledge regarding
ASTM’s role in the standards development
process.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

11

9.
The process of developing,
publishing and distributing standards is
expensive and someone has to pay for
those costs.

10.
I understood since I became a
member of ASTM that ASTM sell copies
of all ASTM standards and uses the
revenue from its sales to support the
standards development process.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
concerning the cost involved in
developing, publishing, or
distributing standards. The witness
also has no personal knowledge
regarding the testimony that
“someone has to pay for those
costs.”

In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr. Cramer
explains that he has been a member of ASTM for
29 years and, in paragraph 5, Mr. Cramer
explains that he was the Chairman of an ASTM
committee for 3 years. As a result, Mr. Cramer
certainly has personal knowledge regarding the
cost of developing, publishing and distributing
ASTM standards.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.
FRE 402 Relevance. The witness’s
“understanding” is not relevant or
probative of any issue in this case.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
To the extent there is any dispute about whether
members of ASTM, such as Mr. Cramer,
assigned any copyright interests to ASTM, Mr.
Cramer’s understanding that ASTM would derive
all of the revenue from the sale of the standards is
relevant to the ownership issue.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any basis for having
personal knowledge of how ASTM
uses the revenue from its sales.

In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr. Cramer
explains that he has been a member of ASTM for
29 years and, in paragraph 5, Mr. Cramer
explains that he was the Chairman of an ASTM
committee for 3 years. As a result, Mr. Cramer

12

has personal knowledge regarding the basis
funding mechanisms for ASTM.

12.
I have renewed my membership
with ASTM using ASTM’s online

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
To the extent there is any dispute about whether
members of ASTM, such as Mr. Cramer,
assigned any copyright interests to ASTM, Mr.
Cramer’s understanding that ASTM would derive
all of the revenue from the sale of the standards is
relevant to the ownership issue.

FRE 602 Lack of Personal
Knowledge. The witness is
testifying concerning a hypothetical
situation, for which he cannot have
personal knowledge.

11.
I understood since I became a
member of ASTM that if I wanted a copy
of an ASTM standard, including a
standard that I helped to develop, I or my
institution would be required to purchase
it from ASTM.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.
FRE 402 Relevance. The witness’s
“understanding” is not relevant or
probative of any issue in this case.

In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. Defendant fails to explain
how Mr. Cramer lacks personal knowledge
regarding his own understanding of his or his
employer’s obligations to purchase any copies of
ASTM standards from ASTM.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.
FRE 402 Relevance. The witness’s
“understanding” of the meaning of

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
To the extent there is any dispute about whether
members of ASTM, such as Mr. Cramer,

13

registration system since at least 2007. As
part of that process, I indicated my
agreement to the following statement: “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.” A
screen shot of the membership renewal
form is attached as Exhibit 1. I understand
this to mean that I have assigned any and
all copyrights in standards I helped to
develop from 1986 to the present to
ASTM.

Exhibit 1

the purported contract is
inadmissible parole evidence.

assigned any copyright interests to ASTM, Mr.
Cramer’s intent to assign his interest is relevant
to the ownership issue.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
concerning the nature of Exhibit 1.

In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. Defendant fails to explain
how Mr. Cramer lacks personal knowledge
regarding his understanding of agreements that
he signed.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

FRE 1002 Secondary Evidence. The The referenced agreement is attached to Mr.
witness is testifying about the
Cramer’s declaration, and his testimony is not
content of a writing.
intended to prove the content of the document for
the obvious reason that the document is attached
to his declaration. Rather, his testimony
addresses his understanding of the agreement and
confirms his intention to assign any rights to
ASTM.
FRE 106 Completeness. Exhibit 1
Mr. Cramer testified that Exhibit 1 a screen shot
appears to be several screenshots of of the membership renewal form, and Defendant
webpages, but it appear that not all
identifies no basis for questioning that testimony.
the webpages that ASTM contends
The fact that the form may include information
comprise its renewal form are
based on a member’s login or other information
included. For example, on the page does not make this document an incomplete
14

marked ASTM001793, contains a
name in the first screenshot, but
whatever part of the form allowed
that person to input her name does
not appear in the exhibit.
FRE 901 Authentication. It is not
clear what the witness is claiming
this exhibit to be. Is it the current
renewal form? The renewal form as
it has existed since 2007? Further,
the witness, who is not an ASTM
employee, has not shown any
personal knowledge regarding the
authenticity of Exhibit 1. The
document appears to have been
created by the person named in the
screen shots, who has not been
disclosed by ASTM as a potential
witness.
13.
I renewed my membership in
FRE 602 Lack of Personal
ASTM for 2016. As part of the renewal
Knowledge. The witness does not
process, I agreed once again to a statement have personal knowledge of what
indicating that I had “transferred and
constitutes the act of agreeing, with
assigned any and all interest I possess or
all its attendant legal meaning. The
may possess, including copyright, in the
witness may have personal
development or creation of ASTM
knowledge that he clicked on the
standards or ASTM IP to ASTM.”
“continue” button of the webpage,
Attached as Exhibit 2 is a screen shot of
but lacks personal knowledge as to
this statement in my membership renewal. the legal effect of doing so. But the
witness has not testified to that fact.
FRE 701 Unqualified Expert
15

version of the membership renewal form.

Mr. Cramer has testified that Exhibit 1 is a true
and correct copy of the membership renewal
form, which is all that is required to authenticate
Exhibit 1. To the extent the Defendant has
additional questions regarding the document, it
can offer whatever evidence or testimony on the
subject that it deems appropriate (including
testimony regarding how the form has changed, if
ever, over time), but that does not impact the
authenticity of the document. In paragraph 2,
Mr. Cramer indicated that all of his testimony,
including the testimony authenticating this
exhibit, was based on his personal knowledge.
In paragraph 2, Mr. Cramer indicated that all of
his testimony, including this testimony, was
based on his personal knowledge. Mr. Cramer
does not purport to give any legal conclusion in
his testimony. He is testifying that he manifested
his assent to the quoted language.

It is unclear what portion of this paragraph is

Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.
FRE 1002 Secondary Evidence. In
the second sentence of this
paragraph, the witness testifies as to
the content of Exhibit 2. The
Exhibit itself is the proof of its
content.
Exhibit 2

allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
The referenced document is attached to Mr.
Cramer’s declaration, and his testimony is not
intended to prove the content of the document for
the obvious reason that the document is attached
to his declaration. Rather, his testimony
addresses his assent to the terms described in
Exhibit 2.
Mr. Cramer testified that Exhibit 1 a screen shot
of the membership renewal form, and Defendant
identifies no basis for questioning that testimony.
The fact that the form may include information
based on a member’s login or other information
does not make this document an incomplete
version of the membership renewal form.

FRE 106 Completeness. Exhibit 2
does not appear to be a complete
record of the ASTM membership
renewal form for 2016.

FRE 402 Relevance. Exhibit 2 does
not indicate that the witness
accepted, or could accept, the
statement concerning his interest in
the ASTM standards, let alone sign
an agreement, as required by the
Copyright Act. Therefore it is not
relevant to prove ASTM’s claims
concerning copyright ownership.
14.
I am not aware of any ASTM
member who claims to own the copyright

Exhibit 2 demonstrates that Mr. Cramer received
a confirmation of his membership renewal and
that he agreed to have transferred and assigned
any and all interest he possesses or may possess,
including copyright, in the development or
creation of ASTM standards. This is relevant to
ASTM’s copyright ownership.

FRE 402 Relevance. Whether an
ASTM member claims copyright

Defendant has not explained how this is unfairly
prejudicial. It is relevant to Defendant’s

16

in any ASTM standard.

15.
The context of ASTM’s
operations, including the membership
forms, membership renewal forms,
Intellectual Property policy, and the
copyright notices on each of the ASTM
standards makes it very clear to all
members that ASTM owns the copyrights
in all ASTM standards.

ownership of any ASTM standard is
not probative of whether ASTM
owns the copyright to the ASTM
standards.
FRE 403 Prejudice. The witness’s
testimony implies, without
supporting proof, that he should be
aware if an ASTM member claimed
to own the copyright in an ASTM
standard, and therefore his lack of
awareness suggests that no member
has claimed ownership.
FRE 402 Relevance. Context is not
a relevant factor for an effective
copyright transfer under the
Copyright Act.

FRE 602 Lack of Personal
Knowledge. The witness has no
personal knowledge of what is
“very clear” to “all members.” The
witness also has no personal
knowledge of what is necessary to
own a copyright, with its attendant
legal issues.

17

argument that the members of ASTM own the
copyright in the standards and that ASTM does
not own the copyrights. In fact, Defendant seeks
to introduce evidence of persons complaining
about access to standards even though those
complaints are not about ASTM standards. See
Def. SUMF (Dkt. 121-2) ¶ 44.

This testimony regarding the context of ASTM’s
operations is relevant to several issues, including
whether the members intended to assign their
copyright interests to ASTM and whether any
employees who were working within the scope of
their employment while contributing language to
any standard were authorized by their employer
to assign any copyright interest to ASTM.
In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr. Cramer
explains that he has been a member of ASTM for
29 years and, in paragraph 5, Mr. Cramer
explains that he was the Chairman of an ASTM
committee for 3 years. As a result, Mr. Cramer
has personal knowledge regarding the context of
ASTM’s operations, its forms and policies, and
its copyright notices and what that context made

clear to him.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

16.
As the Chairman of Committee
D07, I did not consider how much revenue
sales of a potential standard would bring
to ASTM when deciding whether to
approve a work item to develop a new
standard. I considered whether there was a
need for the proposed standard and
whether there would be sufficient interest
from a balanced group necessary to
develop the standard.
17.
A task group puts together the first
draft of a new standard. I have participated
in several task groups that have drafted
proposed standards that were then revised
and voted upon by ASTM subcommittees
and committees. In my experience,
developing a 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.

Mr. Cramer’s testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. It is unclear what portion of
this paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

No Objection.

FRE 602 Lack of Personal
Knowledge. The witness’s
testimony goes beyond his personal
knowledge of tasks groups in which
he participated.

In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr. Cramer
explains that he has been a member of ASTM for
29 years and, in paragraph 5, Mr. Cramer
explains that he was the Chairman of an ASTM
committee for 3 years. As a result, Mr. Cramer
has personal knowledge regarding the standards
development process at ASTM.

FRE 701 Unqualified Expert

Mr. Cramer’s testimony is based on personal

18

Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

18.
I have also participated in
developing standards through the balloting
process in subcommittees and committees.
Members of the subcommittee and
committee that submit ballots on a
proposed standard also suggest wording
and provide comments on the draft. The
suggestions and comments are often
incorporated into the draft.

FRE 602 Lack of Personal
Knowledge. The witness’s
testimony goes beyond his personal
knowledge of committees and
subcommittees in which he
participated.

perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. It is unclear what portion of
this paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.
In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr. Cramer
explains that he has been a member of ASTM for
29 years and, in paragraph 5, Mr. Cramer
explains that he was the Chairman of an ASTM
committee for 3 years. As a result, Mr. Cramer
has personal knowledge regarding the standards
development process at ASTM.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

19.
The ASTM standards I have
participated in developing were developed
based on public demands, industry needs,
and public safety concerns and
advancements in technology. They

Mr. Cramer’s testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. It is unclear what portion of
this paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.
FRE 402 Relevance. The purpose of The purpose of ASTM standards is relevant to
the standards is not relevant to the
the public interest factor for injunctive relief,
subject matter of this litigation.
among other issues.
FRE 602 Lack of Personal
19

In paragraph 2 of his declaration, Mr. Cramer

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.

confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr. Cramer
explains that he has been a member of ASTM for
29 years and, in paragraph 5, Mr. Cramer
explains that he was the Chairman of an ASTM
committee for 3 years. As a result, Mr. Cramer
has personal knowledge regarding the standards
development process at ASTM.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

20.
The ASTM standards I have
participated in developing were not
developed for the purpose of being
incorporated into government regulations.

Knowledge. The witness does not
have personal knowledge about the
alleged bases for the standards
development. At most he can testify
to his own concerns when
participating in developing a
standard. He also lacks personal
knowledge concerning the second
sentence of paragraph 19.

Mr. Cramer’s testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. It is unclear what portion of
this paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.
The fact that the ASTM standards were not
developed for the purpose of being incorporated
by reference is relevant to Defendant’s argument
that the standards lose their copyright protection
when incorporated by reference. It is also
relevant to whether Plaintiffs are entitled to
injunctive relief, as Defendant argues that there is
no unconstitutional taking because the Plaintiffs
supposedly sought incorporation by reference.
Dtk. 121-1 at 36 of 91.

FRE 402 Relevance. This testimony
is not probative of any issue in this
litigation.

FRE 602 Lack of Personal
Knowledge. The witness does not
have personal knowledge as to why
20

In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his

the standards were developed,
which is a matter of opinion, not of
fact.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

21.
ASTM committees composed of
technical experts 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.

personal knowledge. In paragraph 4, Mr. Cramer
explains that he has been a member of ASTM for
29 years and, in paragraph 5, Mr. Cramer
explains that he was the Chairman of an ASTM
committee for 3 years. As a result, Mr. Cramer
has personal knowledge regarding the standards
development process at ASTM.
Mr. Cramer’s testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. It is unclear what portion of
this paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.
In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr. Cramer
explains that he has been a member of ASTM for
29 years and, in paragraph 5, Mr. Cramer
explains that he was the Chairman of an ASTM
committee for 3 years. As a result, Mr. Cramer
has personal knowledge regarding the standards
development process at ASTM.

FRE 602 Lack of Personal
Knowledge. The witness’s
testimony concerns all ASTM
committees, but the witness is only
qualified to discuss those
committees in which he has
participated or observed.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
21

Mr. Cramer’s testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. It is unclear what portion of
this paragraph is allegedly expert opinion or

knowledge.

22.
Other standard development
organizations, including the American
Wood Council and the American National
Standards Institute, develop standards that
relate to wood. The content, language and
purpose of these SDO’s standards differs
from the content of the ASTM standards.

FRE 402 Relevance. The fact
testified to is not probative of any
issue in this litigation.

otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.
This testimony is relevant to Defendant’s
argument that the Works are not copyrightable
because they are systems or scenes a faire.

FRE 602 Lack of Personal
Knowledge. The witness has not
established that he has any personal
knowledge of these other standards
developing organizations or the
standards they develop.

In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr. Cramer
explains that he is the Vice-Provost for Teaching
and Learning and Professor of Civil and
Environmental Engineering at the University of
Wisconsin-Madison and that his research focuses
on the mechanical behavior of wood and woodbased materials. As a result, Mr. Cramer has
personal knowledge regarding the other woodrelated standards.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

Mr. Cramer’s testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. It is unclear what portion of
this paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

FRE 1002 Secondary Evidence. The The testimony does not relate to the specific
witness is testifying as to the
content of the standards of other organizations,
22

24.
The task group, section,
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.

only to the fact that the content differs from the
content of ASTM’s standards.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

23.
Since joining ASTM, I was aware
that all contributions I made to the process
of developing a standard would be merged
with the contributions of others and would
result in a single standard.

content of writings—ASTM’s
standards and those of the American
Wood Council and the American
National Standards Institute, but has
not adduced the actual writings.
FRE 602 Lack of Personal
Knowledge. The declaration does
not identify the basis for personal
knowledge of this fact. Moreover,
whether contributions are “merged”
is a legal conclusion and not a fact
subject to personal knowledge.

Mr. Cramer is not purporting to give an expert
opinion on “merger” under copyright law. He is
using the ordinary and customary meaning of
“merged.”

FRE 602 Lack of Personal
Knowledge. The witness does not
have personal knowledge of what is
“apparent” to “all participants.”
Also, whether the contributions
“will be merged” is a legal
conclusion and not the subject of
personal knowledge.

In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr. Cramer
explains that he has been a member of ASTM for
29 years and, in paragraph 5, Mr. Cramer
explains that he was the Chairman of an ASTM
committee for 3 years. As a result, Mr. Cramer
has personal knowledge regarding the structure
of the groups involved with the development of
ASTM standards and the information presented
to participants.

23

In paragraph 2 of his declaration, Mr. Cramer
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

Mr. Cramer’s testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. Mr. Cramer is not purporting
to give an expert opinion on “merger” under
copyright law. He is using the ordinary and
customary meaning of “merged.”

25.
ASTM staff members added
certain language required by the Form and
Style guide to each of the standards I
helped to develop.

FRE 1002 Secondary Evidence. The
witness’s testimony assumes facts
about the content of the Form and
Style guide, a writing.

This testimony is not offered to prove the
substance of any written document. It is offered
to prove that ASTM staff members wrote
portions of the ASTM standards referenced by
Mr. Cramer.

26.
ASTM staff editors also proofread
and edited each one of the standards I
helped to develop prior to their
publication.
DECLARATION OF JAMES
GOLINVEAUX IN SUPPORT OF
PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT
1.
I am a Senior Fellow of water
suppression products at Tyco Fire
Protection Products. The following facts
are based upon my own personal
knowledge and, if called upon to do so, I
could and would testify competently
hereto.

No objection.

2.
Tyco Fire Protection Products is a
leading manufacturer of water-based fire
suppression system components and
ancillary building construction products.

No objection.

PUBLIC.RESOURCE.ORG’S
OBJECTIONS

No objection

24

Tyco manufactures a wide variety of
sprinklers, system valves and devices,
piping and electrical products, and
specialty systems for effective fire
protection in commercial, industrial,
institutional, and residential buildings.
3.
I have more than 30 years of
experience in the fire protection industry,
and my particular field of expertise is in
the development of fire sprinklers for use
in buildings. I hold 21 United States and
29 foreign patents in automatic sprinkler
technology, and I currently have 38
pending applications for United States and
foreign patents. In 2014 I received the
Henry S. Parmalee award, the American
Fire Sprinkler Association’s highest
honor, in recognition of my work in the
research and design of fire sprinklers to
improve fire safety. As part of my
professional activities, I travel around the
world to deliver lectures and training on
fire safety issues to a wide variety of
audiences.
4.
I am familiar with the work of the
National Fire Protection Association
(“NFPA”), and I have been personally
involved in NFPA’s standards
development process for many years. For
example, I have been a member of the
NFPA 13 Technical Committee for more
than 20 years. NFPA 13 is the Standard
for the installation of Sprinkler Systems. I

FRE 402 Relevance. This testimony
is not relevant; the witness is not
seeking to be qualified as an expert.

No objection.

25

This testimony is relevant to Mr. Golinveaux’s
knowledge and experience which is the basis for
his declaration.

have also been a Technical Committee
member for several other NFPA standards,
including NFPA 101, the Life Safety
Code. In addition, I am currently a
member of NFPA’s Standards Council.
5.
Fire safety professionals and the
fire protection industry benefit greatly
from the standards developed by NFPA
through its voluntary consensus process. It
is critical to have one central association
that can attract contributors from a variety
of perspectives, coordinate and host
Technical Committee meetings, and
ultimately develop and publish standards
that reflect the broadest possible
consensus about fire safety techniques and
that can be used widely throughout the
country.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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. He
explains the benefits that the fire safety
professionals and the fire protection industry
receives from the standards developed by NFPA,
based on his personal knowledge and experience.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.
6.
NFPA’s voluntary consensus
process results in the creation of uniform
industrywide 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

FRE 602 Lack of Personal
Knowledge. This is quintessential
“expert” testimony that goes far
beyond what the witness could have
personal knowledge of.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

FRE 602 Lack of Personal
Knowledge. This is quintessential
“expert” testimony that goes far
beyond what the witness could have
personal knowledge of.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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

26

resources to devote to standards
development.

technical committees. Golinveaux Decl. ¶ 3. He
testifies based on his knowledge and experience.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

7.
It is especially important to have
an independent association that brings
together the expertise of many different
stakeholders and creates an open and
structured standards development process
designed to accommodate input from
many sources and achieve consensus. The
voluntary consensus process is costly, but
in my experience it results in the highest
quality standards in the area of fire safety.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

FRE 403 Prejudicial and Wasting
Time. This is just an argument;
there is no factual support. It wastes
time to consider.

Defendant has not shown any prejudicial effect
or that this wastes time, especially in light of the
fact that this is a bench trial and, therefore, there
is no risk of prejudice.

FRE 602 Lack of Personal
Knowledge. This is quintessential
“expert” testimony that goes far
beyond what the witness could have
personal knowledge of.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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. He
explains the importance of independent
associations and costs and benefits, based on his
personal knowledge and experience.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

27

8.
In my experience participating in
NFPA’s standards development process, I
have observed the significant costs that
NFPA incurs to develop its standards. I
understand that this process is primarily
funded by revenue obtained from the sale
of NFPA publications.

Mr. Golinveaux’s observation of costs is clearly
relevant.

FRE 602 Lack of Personal
Knowledge. The witness does not
purport to have personal knowledge
of what the NFPA spends money on
or the revenue sources for those
expenditures.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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. He
explains the costs that he has observed based on
his personal knowledge and experience.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

9.
NFPA also provides resources on
which fire safety professionals rely in
interpreting and implementing NFPA
standards. These include expert technical
staff who provide interpretations of the

FRE 402 Relevance. The witness’s
“understanding” is not relevant. If
the basis of this “understanding”
consists of writings, then this
testimony runs afoul of FRE 1002
and if the basis is what he was told
by someone else, then the testimony
is hearsay.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

FRE 402 Relevance. The witness’s
“understanding” is not relevant. If
the basis of this “understanding”
consists of writings, then this
testimony runs afoul of FRE 1002

Mr. Golinveaux’s knowledge regarding other
resources provided by NFPA is clearly relevant.

28

standards, training and education
programs, and a research arm. These
resources significantly enhance the value
and utility of NFPA standards. I
understand that these resources are
primarily funded by revenue obtained
from the sale of NFPA publications.

and if the basis is what he was told
by someone else, then the testimony
is hearsay.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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. He
explains the other resources provided by NFPA
based on his personal knowledge and experience
with the organization.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.
10.
In my experience in the fire
sprinkler industry, NFPA 13 and other
standards used in the industry are
accessible to the professionals who use
them, including manufacturers, architects,
engineers, and contractors. NFPA
distributes standards through a variety of
channels and in a variety of formats.
Professionals who work with fire
sprinklers are familiar with NFPA

FRE 602 Lack of Personal
Knowledge. The witness provide
any foundation for his apparent
knowledge of these NFPA
“resources.” Nor does he purport to
have personal knowledge of what
the NFPA spends money on or the
revenue sources for those
expenditures.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

FRE 602 Lack of Personal
Knowledge. This is quintessential
“expert” testimony that goes far
beyond what the witness could have
personal knowledge of.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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. He
explains his observations regarding the
accessibility of these standards to the

29

standards and able to obtain them with
little difficulty and at reasonable cost.

professionals who use them based on his personal
knowledge and experience in the industry.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

11.
Before I became a member of any
NFPA Technical Committees, I submitted
a committee application in which I agreed
that all copyrights and other rights in the
Committee’s work were owned by NFPA.
I also agreed that, to the extent I had any
rights in my work in connection with the
Committee, either individually or in
connection with others, I expressly
assigned all such rights to NFPA.

12.
In my work on NFPA Technical
Committees, it has always been my

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

FRE 602 Lack of Personal
Knowledge. The witness is
testifying as to the legal effect of a
document, an issue that is not
subject to personal knowledge.

Mr. Golinveaux’s testimony is to his knowledge
and perception regarding the committee
application he submitted. This is clearly based
on his personal knowledge.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

FREE 1002 The witness is
testifying as to the content of a
written “committee application,”
without making that writing
available. To the extent it was an
unwritten “agreement,” then it is not
relevant to the issue of copyright
ownership.
FRE 402 Relevance. The witness’s
testimony concerning his former

FRE 1002 does not prohibit evidence regarding a
witnesses’ perceptions of the impact of a writing.

30

Mr. Golinveaux’s testimony regarding his intent
is clearly relevant to the claims Defendant makes

express intention that my contributions to
the standards would be fully owned by
NFPA, and that NFPA would own the
copyright in the completed standards on
which I worked.

intent is not relevant. To the extent
he is testifying about unwritten
agreements, that testimony is not
pertinent under the Copyright Act.

regarding ownership.

FRE 802 Hearsay. The witness
testifies as to his “express”
intention. The expression of that
intention is impermissible hearsay.

Defendant’s hearsay objections makes no sense.
Mr. Golinveaux’s testimony regarding his state
of mind is not hearsay.

FRE 1002 To the extent the
expression of the witness’s intent
was in writing, the witness is
improperly trying to testify as to the
content of a writing.
13.
In my experience working on
FRE 602 Lack of Personal
NFPA Technical Committees, all
Knowledge. This is quintessential
Committee members have known that
“expert” testimony that goes beyond
NFPA publishes the final standards, owns the witness’s personal knowledge.
the copyright in those standards, and
Prefacing the testimony with the
affixes copyright notices to the standards. phrase “in my experience” does not
In my experience, the Technical
change that he cannot know what
Committee members understand and agree other people knew, understood, or
that all copyrights and other rights in the
agreed to.
work of the Technical Committee is
owned by NFPA.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
31

FRE 1002 does not prohibit evidence regarding a
witnesses’ perceptions of the impact of a writing.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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. He
explains his observations regarding the general
understanding of himself and other Committee
members based on his personal knowledge and
experience in the industry.
It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond

knowledge.
DECLARATION OF RANDY
JENNINGS IN SUPPORT OF
PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT
1.
I am over the age of 18 years and
am fully competent to testify to the
matters stated in this Declaration.
2.
This declaration is based on my
personal knowledge. If called to do so, I
would and could testify to the matters
stated herein.
3.
I am the Director of Program
Operations for the Tennessee Department
of Agriculture. In that role, among other
responsibilities, I represent the State of
Tennessee on ASTM International
Committees D02, D03, D15; the National
Conference on Weights and Measures and
other relevant standards development
organizations. I also direct and assist
regulatory administrators in assessing and
improving their programs; monitor the
efficiency and effectiveness of staff
performance; review all enforcement
actions that are submitted to the division
attorney; and provide direction on
enforcement options after discussing with
the attorney and consulting with program
administrators.
4.
I am a member of ASTM
International (“ASTM”). I have been a

to any identification.

PUBLIC.RESOURCE.ORG’S
OBJECTIONS

No objection.

No objection.

No objection.

No objection.

32

member of ASTM since 1990.
5.
I am currently the Chairman of
ASTM’s Committee D02, which is the
committee that develops standards related
to petroleum products, liquid fuels and
lubricants.
6.
I have been an active member of
several D02 subcommittees, including
D01.AO on Gasoline and Oxygenated
Fuels, 02.EO on Burner, Diesel, NonAviation Gas Turbine and Marine Fuels,
D02.HO on Liquefied Petroleum Gas,
D02.02 on Hydrocarbon Measurement for
Custody Transfer and D02.08 on
Volatility for many years.
7.
I understood since I joined ASTM
that ASTM would own the copyright in
any standards or materials I helped to
develop.

No objection.

No objection.

FRE 402 Relevance. The witness’s
understanding is not relevant.

The declarant’s understanding is relevant to
ASTM’s position that members who participate
in its standards development activities do not
dispute ASTM’s ownership of the copyrights in
the standards and do not claim to own any
copyright interest in the ASTM standards.

FRE 602 Lack of Personal
Knowledge. The witness’s
testimony relies on legal
conclusions of “ownership,” which
are not the subject of personal
knowledge.

In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr.
Jennings explains that he has been a member of
ASTM since 1990 and, in paragraph 5, Mr.
Jennings explains that he currently is the
Chairman of an ASTM committee. As a result,
Mr. Jennings certainly has personal knowledge
regarding his understanding regarding ownership
of ASTM copyrights.

33

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

9.
I understood since I became a
member of ASTM that if I wanted a copy
of any ASTM standard, I would be
required to purchase it from ASTM,
including standards that I helped to
develop.

FRE 402 Relevance. The witness’s
understanding of the facts is not
relevant.

This is relevant to show that Mr. Jennings and
other members are not owners of the copyrights
for ASTM standards and to the irreparable harm
that ASTM will suffer absent an injunction.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any foundation for
personal knowledge of ASTM’s
business practices concerning sales
and revenue allocations of the
standards.

8.
I understood since I became a
member of ASTM that ASTM sell copies
of all ASTM standards and uses the
revenue from its sales to support the
standards development process.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr.
Jennings explains that he has been a member of
ASTM since 1990 and, in paragraph 5, Mr.
Jennings explains that he currently is the
Chairman of an ASTM committee. As a result,
Mr. Jennings certainly has a personal knowledge
regarding how ASTM supports standards
development.
This is relevant to show that Mr. Jennings and
other members are not owners of the copyrights
for ASTM standards, whether members such as
Mr. Jennings are joint owners of the copyrights
and to the irreparable harm that ASTM will
suffer absent an injunction.

FRE 402 Relevance. The witness’s
understanding of the facts is not
relevant.

FRE 602 Lack of Personal
Knowledge. The witness is
34

In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other

speculating about a hypothetical
situation, which is not a subject of
personal knowledge.

10.
I have renewed my membership
with ASTM using ASTM’s online
registration system since at least 2007. As
part of that process, I indicated my
agreement to the following statement: “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.” A
screen shot of the membership renewal
form is attached as Exhibit 1. I understand
this to mean that I have assigned any and
all copyrights in standards I helped to
develop from 1990 to the present to
ASTM.

FRE 402 Relevance. The witness’s
“understanding” of the meaning of
the purported contract is
inadmissible parole evidence.

statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr.
Jennings explains that he has been a member of
ASTM since 1990 and, in paragraph 5, Mr.
Jennings explains that he currently is the
Chairman of an ASTM committee. As a result,
Mr. Jennings certainly has a personal knowledge
regarding whether he understood that he would
have to purchase ASTM standards, including
standards that he helped to develop.
To the extent there is any dispute about whether
members of ASTM, such as Mr. Jennings,
assigned any copyright interests to ASTM, Mr.
Jennings’ intent to assign his interest is relevant
to the ownership issue.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
concerning the nature of Exhibit 1.

In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. Defendant fails to explain
how Mr. Jennings lacks personal knowledge
regarding his understanding of agreements that
he signed.

RE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

FRE 1002 Secondary Evidence. The The referenced agreement is attached to Mr.
witness is testifying about the
Jennings declaration, and his testimony is not
35

content of a writing.

Exhibit 1.

intended to prove the content of the document for
the obvious reason that the document is attached
to his declaration. Rather, his testimony
addresses his understanding of the agreement and
confirms his intention to assign any rights to
ASTM.

(This is the same testimony and an
identical exhibit as appears in
Cramer’s Declaration)
FRE 106 Completeness. Exhibit 1
appears to be several screenshots of
webpages, but it appear that not all
the webpages that ASTM contends
comprise its renewal form are
included. For example, on the page
marked ASTM001793, contains a
name in the first screenshot, but
whatever part of the form allowed
that person to input her name does
not appear in the exhibit.

Mr. Jennings testified that Exhibit 1 a screen shot
of the membership renewal form, and Defendant
identifies no basis for questioning that testimony.
The fact that the form may include information
based on a member’s login or other information
does not make this document an incomplete
version of the membership renewal form.

FRE 901 Authentication. It is not
clear what the witness is claiming
this exhibit to be. Is it the current
renewal form? The renewal form as
it has existed since 2007? Further,
the witness, who is not an ASTM
employee, has not shown any
personal knowledge regarding the
authenticity of Exhibit 1. The
document appears to have been
created by the person named in the

Mr. Jennings has testified that Exhibit 1 is a true
and correct copy of the membership renewal
form, which is all that is required to authenticate
Exhibit 1. To the extent the Defendant has
additional questions regarding the document, it
can offer whatever evidence or testimony on the
subject that it deems appropriate (including
testimony regarding how the form has changed, if
ever, over time), but that does not impact the
authenticity of the document. In paragraph 2,
Mr. Jennings indicated that all of his testimony,

36

11.
I am not aware of any ASTM
member who claims to own the copyright
in any ASTM standard.

12.
The context of ASTM’s
operations, including the membership
forms, membership renewal forms,
Intellectual Property policy, and the
copyright notices on each of the ASTM
standards makes it very clear to all
members that ASTM owns the copyrights
in all ASTM standards.

screen shots, who has not been
disclosed by ASTM as a potential
witness.
FRE 402 Relevance. Whether an
ASTM member claims copyright
ownership of any ASTM standard is
not probative of whether ASTM
owns the copyright to the ASTM
standards.
FRE 403 Prejudice. The witness’s
testimony implies, without
supporting proof, that he should be
aware if an ASTM member claimed
to own the copyright in an ASTM
standard, and therefore his lack of
awareness suggests that no member
has claimed ownership.
FRE 402 Relevance. Context is not
a relevant factor for an effective
copyright transfer under the
Copyright Act.

FRE 602 Lack of Personal
Knowledge. The witness has no
personal knowledge of what is
“very clear” to “all members.” The
witness also has no personal
knowledge of what is necessary to
37

including the testimony authenticating this
exhibit, was based on his personal knowledge.
Defendant has not explained how this is unfairly
prejudicial. It is relevant to Defendant’s
argument that the members of ASTM own the
copyright in the standards and that ASTM does
not own the copyrights. In fact, Defendant seeks
to introduce evidence of persons complaining
about access to standards even though those
complaints are not about ASTM standards. See
Def. SUMF (Dkt. 121-2) ¶ 44.

This testimony regarding the context of ASTM’s
operations is relevant to several issues, including
whether the members intended to assign their
copyright interests to ASTM and whether any
employees who were working within the scope of
their employment while contributing language to
any standard were authorized by their employer
to assign any copyright interest to ASTM.
In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr.
Jennings explains that he has been a member of
ASTM since 1990 and, in paragraph 5, Mr.

own a copyright, with its attendant
legal issues.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

13.
A task group puts together the first
draft of a new standard. I have participated
in several task groups that have drafted
proposed standards that were then revised
and voted upon by ASTM subcommittees
and committees. In my experience, the
task group works collaboratively, with
many people, sometimes dozens of
people, sharing ideas, suggesting wording
and providing comments that contribute to
the draft standard.

Jennings explains that he currently is the
Chairman of an ASTM committee. As a result,
Mr. Jennings has personal knowledge regarding
the context of ASTM’s operations, its forms and
policies, and its copyright notices and what that
context made clear to him.
Mr. Jennings’ testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. It is unclear what portion of
this paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

(Note this is nearly identical to
Cramer Decl. ¶ 17.)
FRE 602 Lack of Personal
Knowledge. The witness’s
testimony goes beyond his personal
knowledge of tasks groups in which
he participated.

In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr.
Jennings explains that he has been a member of
ASTM since 1990 and, in paragraph 5, Mr.
Jennings explains that he currently is the
Chairman of an ASTM committee. As a result,
Mr. Jennings has personal knowledge regarding
the standards development process at ASTM.

FRE 701 Unqualified Expert
Opinion. The witness has not been

Mr. Jennings’ testimony is based on personal
perception based on his experience with ASTM.

38

qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

14.
I have also participated in
developing standards through the balloting
process in subcommittees and committees.
Members of the subcommittee and
committee that submit ballots on a
proposed standard also suggest wording
and provide comments on the draft. The
suggestions and comments are often
incorporated into the draft.

He does not offer an expert opinion that runs
afoul of Rule 701. It is unclear what portion of
this paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

(Note this is nearly identical to
Cramer Decl. ¶ 18.)
In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr.
Jennings explains that he has been a member of
ASTM since 1990 and, in paragraph 5, Mr.
Jennings explains that he currently is the
Chairman of an ASTM committee. As a result,
Mr. Jennings has personal knowledge regarding
the standards development process at ASTM.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

15.
I participated in the development
of ASTM D975-07.
16.
The ASTM standards I have

FRE 602 Lack of Personal
Knowledge. The witness’s
testimony goes beyond his personal
knowledge of committees and
subcommittees in which he
participated.

Mr. Jennings’ testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. It is unclear what portion of
this paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

No objection.
FRE 402 Relevance. The purpose of The purpose of ASTM standards is relevant to
39

participated in developing were 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.

the public interest factor for injunctive relief,
among other issues.

FRE 602 Lack of Personal
Knowledge. The witness does not
have personal knowledge about the
alleged bases for the standards
development. At most he can testify
to his own concerns when
participating in developing a
standard. He also lacks personal
knowledge concerning the second
sentence of paragraph 16.

In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr.
Jennings explains that he has been a member of
ASTM since 1990 and, in paragraph 5, Mr.
Jennings explains that he currently is the
Chairman of an ASTM committee. As a result,
Mr. Jennings has personal knowledge regarding
the standards development process at ASTM.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

17.
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.

the standards is not relevant to the
subject matter of this litigation.

Mr. Jennings’ testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. It is unclear what portion of
this paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

Cf. Cramer Decl. ¶ 21.
FRE 602 Lack of Personal
Knowledge. The witness’s
testimony concerns all ASTM
committees, but the witness is only
qualified to discuss those
committees in which he has
participated or observed.

40

In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr.
Jennings explains that he has been a member of
ASTM since 1990 and, in paragraph 5, Mr.
Jennings explains that he currently is the
Chairman of an ASTM committee. As a result,

Mr. Jennings has personal knowledge regarding
the standards development process at ASTM.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

18.
Since joining ASTM, I was aware
that all contributions I made to the process
of developing a standard would be merged
with the contributions of others and would
result in a single standard.

19.
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.

Mr. Jennings’ testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. It is unclear what portion of
this paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

Cf. Cramer Decl. ¶ 23.
FRE 602 Lack of Personal
Knowledge. Whether contributions
are “merged” is a legal conclusion
and not a fact subject to personal
knowledge.

In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge
Cf. Cramer Decl. ¶ 24.

Mr. Jennings is not purporting to give an expert
opinion on “merger” under copyright law. He is
using the ordinary and customary meaning of
“merged.”

FRE 602 Lack of Personal
Knowledge. The witness does not
have personal knowledge of what is
“apparent” to “all participants.”
Also, whether the contributions

In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 4, Mr.
Jennings explains that he has been a member of

41

“will be merged” is a legal
conclusion and not the subject of
personal knowledge.

ASTM since 1990 and, in paragraph 5, Mr.
Jennings explains that he currently is the
Chairman of an ASTM committee. As a result,
Mr. Jennings has personal knowledge regarding
the structure of the groups involved with the
development of ASTM standards and the
information presented to participants.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.
20.
For each of the standards I helped
to develop, ASTM staff members
reviewed the draft standards and
suggested editorial changes and added
other information required by the Form
and Style guide.
21.
The Tennessee Code requires
kerosene and motor oils to meet the
standards set out in the most recent
volume 5 of the ASTM Annual Book of
Standards. See Tennessee Code § 47-181304.
22.
One of the benefits of states being
able to incorporate by reference the
ASTM standards is that it provides
different states with a common set of
requirements. If each state had to create its
own set of standards, there would be a

Mr. Jennings’ testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701. Mr. Cramer is not purporting
to give an expert opinion on “merger” under
copyright law. He is using the ordinary and
customary meaning of “merged.”
FRE 1002 Secondary Evidence. The This testimony is not offered to prove the
witness’s testimony assumes facts
substance of any written document. It is offered
about the content of the Form and
to prove that ASTM staff members wrote
Style guide, a writing.
portions of the ASTM standards referenced by
Mr. Jennings.
No objection.

FRE 602 Lack of Personal
Knowledge. This is quintessential
“expert” testimony that goes far
beyond what the witness could have
personal knowledge of.

42

In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, he states
that he is the Director of Program Operations for
the Tennessee Department of Agriculture, and, in

patchwork of requirements, which would
make it very difficult for companies to
convey products that could be used in
multiple states.

that role, he represents Tennessee at ASTM and
at other SDOs. In paragraph 4, Mr. Jennings
explains that he has been a member of ASTM
since 1990 and, in paragraph 5, Mr. Jennings
explains that he currently is the Chairman of an
ASTM committee. As a result, Mr. Jennings has
personal knowledge regarding the benefit to
states of incorporating SDOs’ standards by
reference.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.

23.
ASTM is able to convene experts
FRE 602 Lack of Personal
with knowledge of different fuels and their Knowledge. This is quintessential
components to develop its fuel standards.
“expert” testimony that goes far
beyond what the witness could have
personal knowledge of.

43

Mr. Jennings’ testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701.

In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, he states
that he is the Director of Program Operations for
the Tennessee Department of Agriculture, and, in
that role, he represents Tennessee at ASTM and
at other SDOs. In paragraph 4, Mr. Jennings
explains that he has been a member of ASTM
since 1990 and, in paragraph 5, Mr. Jennings
explains that he currently is the Chairman of an
ASTM committee. In paragraph 6, Mr. Jennings
indicates that he is an active member of several
ASTM subcommittees regarding fuel. As a
result, Mr. Jennings has personal knowledge
regarding the composition of members on ASTM

standards regarding fuels.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal
knowledge.
24.
The state of Tennessee does not
have the resources or expertise to develop
the broad array of standards that ASTM
develops and maintains related to fuels. If
Tennessee was unable to incorporate by
reference the ASTM standards, it would
not be able to effectively develop
standards for fuel products.

Mr. Jennings’ testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701.

FRE 602 Lack of Personal
Knowledge. This is quintessential
“expert” testimony that goes far
beyond what the witness could have
personal knowledge of.

In paragraph 2 of his declaration, Mr. Jennings
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, he states
that he is the Director of Program Operations for
the Tennessee Department of Agriculture, and, in
that role, he represents Tennessee at ASTM and
at other SDOs. In paragraph 4, Mr. Jennings
explains that he has been a member of ASTM
since 1990 and, in paragraph 5, Mr. Jennings
explains that he currently is the Chairman of an
ASTM committee. In paragraph 6, Mr. Jennings
indicates that he is an active member of several
ASTM subcommittees regarding fuel. As a
result, Mr. Jennings has personal knowledge
regarding the resources and expertise regarding
fuels at the State of Tennessee and its ability to
develop standards for fuels.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert. Therefore,
the witness cannot testify to facts
beyond the witness’s personal

Mr. Jennings’ testimony is based on personal
perception based on his experience with ASTM.
He does not offer an expert opinion that runs
afoul of Rule 701.

44

DECLARATION OF THOMAS B.
O’BRIEN, JR. IN SUPPORT OF
PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT
1.
I am over the age of 18 years and
am fully competent to testify to the
matters stated in this Declaration.
2.
This declaration is based on my
personal knowledge. If called to do so, I
would and could testify to the matters
stated herein.
3.
I am Vice President and General
Counsel at ASTM International
(“ASTM”). I have worked at ASTM since
2003.
4.
My responsibilities include
developing legal policies and procedures
and addressing all legal matters for
ASTM, including ASTM’s copyright
registrations, trademark registrations, and
enforcement efforts related to ASTM’s
intellectual property.
5.
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. Attached
as Exhibit 1 is a true and correct copy of
the certificate of registration for this
standard.
6.
ASTM has a copyright registration
for ASTM D975-07 (Standard

knowledge.
PUBLIC.RESOURCE.ORG’S
OBJECTIONS

No objection.

No objection.

No objection.

No objection.

No objection.

No objection.

45

Specification for Diesel Fuel Oils) that
identifies ASTM as the owner. Attached
as Exhibit 2 is a true and correct copy of
the certificate of registration for this
standard.
7.
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.
8.
Between 1980 and 2011, ASTM
obtained copyright registrations for each
volume of its Book of Standards.

No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
worked for ASTM since 1980.

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is the Vice President
and General Counsel of ASTM and has been
employed by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. Thomas lacks personal
knowledge regarding why ASTM develops
standards simply because he was not employed at
ASTM since 1980. See O’Brien Supp. Dec. ¶ 18.
It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification

9.
ASTM D396-98 and ASTM
D1217-93(98) were published in Volume

FRE 1002 Secondary Evidence. The
witness has not provided the
original copyright registrations.
No objection.

46

5.01 of the 1999 Annual Book of ASTM
Standards. Attached as Exhibit 3 are true
and correct copies of pages from the index
of the 1999 Annual Book of ASTM
Standards showing the volume in which
these standards appeared.
10.
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. Attached as Exhibit 4 is a true
and correct copy of the certificate of
registration for the standards included in
this volume.
11.
The published version of each of
ASTM’s standards includes a copyright
notice alerting the public (including the
individuals who participated in the
creation of the standards) to the fact that
the copyright is owned by ASTM.

12.
ASTM knows of no individual or
other person who claims to own any

No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
demonstrated the basis for any
personal knowledge concerning the
contents of each published version
of ASTM’s standards, whether
alleged notices in those documents
have the effect of alerting anyone,
or whether ASTM actually owns a
copyright to the standards.

The witness is knowledgeable about the
copyright practices of ASTM because of his
position as General Counsel of ASTM for over
10 years. O’Brien Decl. ¶ 3. He stated that his
responsibilities include developing legal policies
and procedures for ASTM, including in relation
to ASTM’s copyright registrations. O’Brien
Decl. ¶ 4.

FRE 1002 Secondary Evidence. The
witness is testifying as to the
content of writings without
producing the originals.
FRE 402 Relevance. Whether an
ASTM member claims copyright

The statement does not relate to the content of a
writing, but to the inclusion of a copyright notice
on the writing.

47

Defendant has not explained how this is unfairly
prejudicial. It is relevant to Defendant’s

copyright interest in any ASTM standard.

ownership of any ASTM standard is
not probative of whether ASTM
owns the copyright to the ASTM
standards.
FRE 403 Prejudice. The witness’s
testimony implies, without
supporting proof, that he should be
aware if an ASTM member claimed
to own the copyright in an ASTM
standard, and therefore his lack of
awareness suggests that no member
has claimed ownership.

13.
ASTM routinely grants permission
to researchers, academics and others to
reproduce its standards at no cost for noncommercial purposes.

argument that the members of ASTM own the
copyright in the standards and that ASTM does
not own the copyrights. In fact, Defendant seeks
to introduce evidence of persons complaining
about access to standards even though those
complaints are not about ASTM standards. See
Def. SUMF (Dkt. 121-2) ¶ 44.

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
FRE 602 Lack of Personal
personal knowledge. In paragraph 3, Mr.
Knowledge. The witness has not
O’Brien confirms that he is Vice President and
established personal knowledge as
General Counsel of ASTM has been employed
to what ASTM knows, a question of by ASTM since 2003. Under these
mixed fact and law concerning what circumstances, there is no basis for Defendant’s
knowledge may be imputed to an
suggestion that Mr. O’Brien lacks personal
organization.
knowledge regarding complaints regarding
access to ASTM standards.
FRE 602 Lack of Personal
In paragraph 1 of his declaration, Mr. O’Brien
Knowledge. The witness has not
confirms that this statement and all other
established his personal knowledge statements in his declaration are based on his
concerning ASTM’s licensing
personal knowledge. In paragraph 3, Mr.
practices, nor any basis for opining O’Brien confirms that he is the Vice President
on whether such permissions, if
and General Counsel of ASTM and has been
any, are “routine.”
employed by ASTM since 2003. As a result, Mr.
O’Brien is responsible for permissions, and has
personal knowledge of the circumstances and
frequency with which they are granted. See
O’Brien Supp. Decl. ¶ 15. Under these
48

circumstances, there is no basis for Defendant’s
suggestion that Mr. Thomas lacks personal
knowledge regarding these facts.
14.
ASTM has not licensed
Defendant’s use of ASTM’s standards.
15.
ASTM developed a guide entitled
“Form and Style for ASTM Standards,”
which is a guide to promote uniformity of
form and style in ASTM standards
(“ASTM Form, and Style Guide”). This
guide describes certain conventions that
must be followed when drafting an ASTM
standard. Attached as Exhibit 5 is a true
and correct copy of the ASTM Form and
Style Guide.

No objection.

16.
The ASTM Form and Style Guide
describes certain components and provides
the text for certain language that must be
included in every ASTM standard.
17.
As part of the process of
developing a draft standard, ASTM staff
members add language and components

FRE 1002 Secondary Evidence. The This testimony is admissible under FRE 611(a),
witness is testifying about the
701 and/or 1006. The ASTM Form and Style
contents of a writing.
Guide has been made available to Defendant for
examination and copying.
FRE 602 Lack of Personal
In paragraph 1 of his declaration, Mr. O’Brien
Knowledge. The witness has not
confirms that this statement and all other
established any personal knowledge statements in his declaration are based on his

FRE 602 Lack of Personal
Knowledge. The witness has not
established personal knowledge
regarding the general use of this
document, or the basis for claiming
that the conventions must be
followed.

49

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is the Vice President
and General Counsel of ASTM and has been
employed by ASTM since 2003. Mr. O’Brien
has given trainings to ASTM employees and
committee officers on use of the ASTM Form
and Style Guide instructed ASTM employees on
the use of the ASTM Form and Style Guide and
has attended ASTM committee meetings in
which the requirement to use certain language
and information from the ASTM Form and Style
Guide was discussed. O’Brien Supp. Decl. ¶¶
13-14. As a result, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding the requirement to
use certain conventions from the ASTM Form
and Style Guide.

that are required by the ASTM Form and
Style Guide to the draft prepared by the
task group.

personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Mr. O’Brien has given
trainings to ASTM employees and committee
officers on use of the ASTM Form and Style
Guide instructed ASTM employees on the use of
the ASTM Form and Style Guide and has
attended ASTM committee meetings in which the
requirement to use certain language and
information from the ASTM Form and Style
Guide was discussed. O’Brien Supp. Decl. ¶¶
13-14. Under these circumstances, there is no
basis for Defendant’s suggestion that Mr.
O’Brien lacks personal knowledge regarding the
ASTM standard development process and the use
of the ASTM Form and Style Guide.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

18.
For example, Standard D86-07
contains numerous components that were
authored by ASTM employees. Attached
as Exhibit 6 is a true and correct copy of
ASTM D86-07.
19.
The title of the standard (Standard

about this subject.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

FRE 1002 Secondary Evidence. The This testimony does not purport to describe the
witness is testifying about the
contents of a writing. It describes the process by
contents of a writing.
which a writing is made.
No objection.

No objection.
50

Test Method for Distillation of Petroleum
Products at Atmospheric Pressure) appears
at the top of the first page of ASTM D8607. Directly below the title, there is an
explanation of what the designation
number for the standard means. This
language was drafted by an ASTM
employee.
20.
Footnote 1 is a standard footnote
that is authored by an ASTM employee,
which provides information about which
committee and subcommittee have
jurisdiction over the standard. ASTM
Form and Style Guide Section A26.2 lays
out the requirements for the content of this
footnote.
21.
Footnote 2 explains how to obtain
access to ASTM standards referenced in
the document. This language was drafted
by an ASTM employee.
22.
Section 1.5 of ASTM D86-07
states: “This standard does not purport to
address all of the safety concerns, if any,
associated with its use. It is the
responsibility of the user of this standard
to establish appropriate safety and health
practices and determine the applicability
of regulatory limitations prior to use.”
This language comes directly from the
Section F2.1 of the ASTM Form and Style
Guide and was written by an ASTM
employee.
23.
On the last page of ASTM D86-07,

No objection.

No objection.

No objection.

No objection.
51

there is a summary of the differences
between this version of the standard and
the previous version, which was compiled
by ASTM employees.
24.
At the very bottom of the last page
of D86-07, there are three italicized
paragraphs. The text of the first two
paragraphs comes directly from ASTM’s
Form and Style Guide, which was written
by ASTM employees. See Form and Style
Guide Sections F3.2 and F2.3.
25.
The third italicized paragraph at
the end of D86-07 is a statement of
ASTM’s ownership of the copyright and
information about how to purchase copies,
which was also authored by an ASTM
employee.
26.
As another example, ASTM
standard D975-07 contains numerous
sections that were authored by ASTM
employees. Attached as Exhibit 7 is a true
and correct copy of ASTM D975-07.
27.
Underneath the title of the standard
(Standard Specification for Diesel Fuel
Oils), there is an explanation of what the
designation number for the standard
means. This language was drafted by an
ASTM employee.
28.
Footnote 1 of ASTM D975-07
provides information about the committee
and subcommittee that have jurisdiction
over this standard. This language is
required by Section B28.2 of the ASTM

No objection.

No objection.

No objection.

No objection.

No objection.

52

Form and Style Guide and was drafted by
an ASTM employee.
29.
Section 1.3 of ASTM D975-07
states “The values stated in SI units are to
be regarded as the standard. The values
given in parentheses are for information
only.” This language was taken verbatim
from Section 113.1.1.1 of the ASTM
Form and Style Guide.
30.
Like ASTM D86-07, the last page
of ASTM D975-07 provides a summary of
changes made to the previous version of
this, standard and includes three italicized
paragraphs, all of which were drafted by
ASTM employees.
31.
ASTM D396-98 also contains
content that was drafted by ASTM
employees. Attached as Exhibit 8 is a true
and correct copy of ASTM D396-98.
32.
Underneath the title of the standard
(Standard Specification for Fuel Oils),
there is an explanation of what the
designation number for the standard
means. This language was drafted by an
ASTM employee.
33.
Footnote 1 of ASTM D396-98
provides information about the committee
and subcommittee that have jurisdiction
over this standard. This language is
required by Section B28.2 of the ASTM
Form and Style Guide and was drafted by
an ASTM employee.
34.
On the last page of ASTM D396-

No objection.

No objection.

No objection.

No objection.

No objection.

No objection.
53

98 there are two italicized paragraphs that
were drafted by ASTM employees.
35.
ASTM D1217-93(98) contains
content that was drafted by ASTM
employees. Attached as Exhibit 9 is a true
and correct copy of ASTM D1217-93(98).
36.
Underneath the title of the standard
(Standard Test Method for Density and
Relative Density (Specific Gravity) of
Liquids by Bingham Pycnometer), there is
an explanation of what the designation
number for the standard means. This
language was drafted by an ASTM
employee.
37.
Footnote 1 of ASTM D121793(98) provides information about the
committee and subcommittee that have
jurisdiction over this standard. This
language is required by Section B28.2 of
the ASTM Form and Style Guide and was
drafted by an ASTM employee.
38.
Section 1.5 of ASTM D121793(98) states: “This standard does not
purport to address all of the safety
concerns, if any, associated with its use. It
is the responsibility of the user of this
standard to establish appropriate safety
and health practices and determine the
applicability of regulatory limitations prior
to use.” This language comes directly
from the Section F2.1 of the ASTM Form
and Style Guide and was written by an
ASTM employee.

No objection.

No objection.

No objection.

No objection.

54

39.
On the last page of ASTM D121793(98) there are two italicized paragraphs
that were drafted by ASTM employees.
40.
There are a number of ways in
which ASTM members assign their
copyrights in the standards they help to
develop to ASTM.

41.
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.” Attached as Exhibit 10 is a
true and correct copy of the online new

No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject and copyright
assignment is a matter of law and
not the subject of personal
knowledge.

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding the methods by which
member assign a copyright interest that they may
have to ASTM.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject, or to whether
other people “agree,” which is a
legal concept and not the subject to
personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

55

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding the requirements for
members to join or renew their membership
online or that he is unable to authenticate a copy

membership form and attached as Exhibit
11 is a true and correct copy of the online
membership renewal form.

Exhibit 10

of the online form attached as Exhibit 11.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
FRE 1002 Secondary Evidence. The
copy of the exhibit filed with the
court is too degraded to be legible.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

FRE 901 Authentication. The
exhibit includes what appear to be
written annotations of the
webpages’ functionality, which
goes beyond what the witness
identified the exhibit to be.
It is also not clear what the witness
is claiming this exhibit to be. Is it
the current renewal form? The
renewal form as it has existed since
2007? The document appears to
have been created by the person
named in the screen shots, who has
not been disclosed by ASTM as a
potential witness.

Mr. O’Brien has testified that Exhibit 10 is a true
and correct copy of the online new membership
form, which is all that is required to authenticate
Exhibit 10. To the extent the Defendant has
additional questions regarding the document, it
can offer whatever evidence or testimony on the
subject that it deems appropriate (including
testimony regarding how the form has changed, if
ever, over time), but that does not impact the
authenticity of the document.

FRE 802 Inadmissible Hearsay. The
exhibit contains out of court
statements offered for the truth of

Exhibit 10 is not being introduced to prove the
truth of any matter asserted therein. They are
evidence of the legal act of assignment and

56

Exhibit 10 is legible and Defendant has not
identified any portion that it cannot read.
Nevertheless, ASTM has filed another copy of
this document that includes no annotations as
Exhibit 1 to the Supplemental O’Brien
Declaration.

the matter asserted. In particular the
annotations to what is purported to
be the membership agreement.

evidence of notice provided to members.

FRE 106 Completeness. Exhibit 1
appears to be several screenshots of
webpages, but it appear that not all
the webpages that ASTM contends
comprise its renewal form are
included. For example, on the page
marked ASTM001793, contains a
name in the first screenshot, but
whatever part of the form allowed
that person to input her name does
not appear in the exhibit.

Exhibit 11

FRE 1002 Secondary Evidence. The Exhibit 11 is legible and Defendant has not
copy of the exhibit filed with the
identified any portion that it cannot read.
court is too degraded to be legible.
Nevertheless, ASTM has filed another copy of
this document without annotations as Exhibit 2 to
the Supplemental O’Brien Declaration.
FRE 901 Authentication. The
exhibit includes what appear to be
written annotations of the
webpages’ functionality, which
goes beyond what the witness
identified the exhibit to be.
It is also not clear what the witness
is claiming this exhibit to be. Is it
the current renewal form? The
renewal form as it has existed since
57

Mr. O’Brien has testified that Exhibit 11 is a true
and correct copy of the online membership
renewal form, which is all that is required to
authenticate Exhibit 11. To the extent the
Defendant has additional questions regarding the
document, it can offer whatever evidence or
testimony on the subject that it deems appropriate
(including testimony regarding how the form has
changed, if ever, over time), but that does not
impact the authenticity of the document.

2007? The document appears to
have been created by the person
named in the screen shots, who has
not been disclosed by ASTM as a
potential witness.
FRE 802 Inadmissible Hearsay. The
exhibit contains out of court
statements offered for the truth of
the matter asserted. In particular the
annotations to what is purported to
be the membership agreement.

Exhibit 11 is not being introduced to prove the
truth of any matter asserted therein. It is
evidence of the legal act of assignment and
evidence of notice provided to members.

FRE 106 Completeness. Exhibit 1
appears to be several screenshots of
webpages, but it appear that not all
the webpages that ASTM contends
comprise its renewal form are
included. For example, on the page
marked ASTM001793, contains a
name in the first screenshot, but
whatever part of the form allowed
that person to input her name does
not appear in the exhibit.
42.
Some members of ASTM renew
their memberships using paper forms that
contain substantially the same language as
the language in the online forms. Attached
as Exhibit 12 is a true and correct copy of
a paper membership renewal form.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject, or to whether
other people “agree,” which is a
legal concept and not the subject to
personal knowledge.

58

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s

suggestion that Mr. O’Brien lacks personal
knowledge regarding the methods of renewal
used by ASTM members or that he is unable to
authenticate a copy of the online form attached as
Exhibit 11.

Exhibit 12

FRE 1002 Secondary Evidence. The Mr. O’Brien’s declaration is not being offered to
witness is testifying as to the
prove the content of a document. It is offered to
contents of a writing.
explain the methods by which some members
renew their memberships. .
FRE 901 Authentication. It is also
Mr. O’Brien has testified that Exhibit 12 is a true
not clear what the witness is
and correct copy of a paper membership renewal
claiming this exhibit to be. Is it just form, which is all that is required to authenticate
one renewal form, or is it
Exhibit 12. To the extent the Defendant has
representative of all the renewal
additional questions regarding the document, it
forms for a particular timeframe?
can offer whatever evidence or testimony on the
What timeframe? The document
subject that it deems appropriate (including
appears to have been created by the testimony regarding how the form has changed, if
person named in the screen shots,
ever, over time), but that does not impact the
who has not been disclosed by
authenticity of the document.
ASTM as a potential witness.

FRE 802 Inadmissible Hearsay. The
exhibit contains out of court
statements offered for the truth of
the matter asserted.
43.
Michael Collier was the technical
FRE 602 Lack of Personal
contact for the revision of ASTM D86 that Knowledge. The witness has not
was completed in 2007.
established any personal knowledge
about this subject

59

Exhibit 12 is not being introduced to prove the
truth of any matter asserted therein. It is
evidence of the legal act of assignment and
evidence of notice provided to members.
In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. ASTM has also produced

44.
Michael Collier renewed his
ASTM membership every year between
2007-2014 using the online membership
renewal form.

independent evidence that demonstrates that
Michael Collier was the technical contact for
ASTM D86-07. See O’Brien Supp. Decl. ¶ 20,
Ex. 5.
FRE 602 Lack of Personal
In paragraph 1 of his declaration, Mr. O’Brien
Knowledge. The witness has not
confirms that this statement and all other
established any personal knowledge statements in his declaration are based on his
about this subject
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding the membership status of
Michael Collier during his employment at
ASTM. ASTM has also produced independent
evidence that demonstrates that Michael Collier
FRE 1002 Secondary Evidence. The renewed his membership in 2007 using the online
witness is testifying about the
membership renewal form. See O’Brien Supp.
contents of writings.
Decl. ¶ 26, Ex. 10.
Mr. O’Brien’s declaration is not being offered to
prove the content of a document. It is offered to
explain the methods by which Mr. Collier
renewed his membership.

45.
John Chandler was the technical
contact for the revision of ASTM D975
that was completed in 2007 and for the
revision of ASTM D398 that was
completed in 1998.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject

60

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these

circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding the identity of the technical
contact for a revision of a work created during
his employment at ASTM. ASTM has also
produced independent evidence that demonstrates
that John Chandler was the technical contact for
ASTM D975-07 and D396-98. See O’Brien
Supp. Decl. ¶¶ 21-22, Exs. 6-7.
In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding the membership status of
John Chandler during his employment at ASTM.
ASTM has also produced independent evidence
that demonstrates that John Chandler renewed his
membership in 2007 using the online
membership renewal form. See O’Brien Supp.
Decl. ¶ 25, Ex. 9.

46.
John Chandler renewed his ASTM
membership every year between every
year between 2007-2014 using the online
membership renewal form.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject

47.
Jimmy King was the technical
contact for the 1998 reapproval of ASTM
D1217.

FRE 1002 Secondary Evidence. The Mr. O’Brien’s declaration is not being offered to
witness is testifying about the
prove the content of a document. It is offered to
contents of writings.
explain the methods by which Mr. Chandler
renewed his membership.
FRE 602 Lack of Personal
ASTM has produced independent evidence that
Knowledge. The witness has not
demonstrates that Jimmy King was the technical
established any personal knowledge contact for D1217-98. See O’Brien Supp. Decl. ¶
61

about this subject
48.
Jimmy King renewed his ASTM
membership in 2007.

23, Ex. 8.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject

ASTM produced independent evidence that
demonstrates that Jimmy King renewed his
membership in 2007. See O’Brien Supp. Decl. ¶
25, Ex. 9.

FRE 1002 Secondary Evidence. The
witness is testifying about the
contents of a writing.
49.
When an individual registers a
FRE 602 Lack of Personal
“work item,” which starts the process of
Knowledge. The witness has not
developing a new standard or amending an established any personal knowledge
existing standard, that individual must
about this subject
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 FRE 701 Unqualified Expert
ASTM standard, are the sole and
Opinion. The witness has not been
exclusive property of ASTM, in
qualified as an expert and therefore
accordance with the Intellectual Property
cannot testify as to facts beyond the
policies of the Society.” Attached as
witness’s personal knowledge.
Exhibit 13 is a true and correct copy of the
online form an individual must complete
FRE 1002 Secondary Evidence. The
to register a work item.
witness is testifying about the
contents of a writing.
FRE 1002 Secondary Evidence. The
Exhibit 13
copy of the exhibit filed with the
62

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding the process for registering a
work item.
It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

The testimony is only offered to prove that the
writing must be completed. Exhibit 13 is offered
to prove the contents of the writing.
Exhibit 13 is legible and Defendant has not
identified any portion that it cannot read.

court is illegible.

50.
ASTM engages in quality control
procedures to ensure the quality and
integrity of the content of the standards.

Nevertheless, ASTM has filed another copy of
this Exhibit as Exhibit 3 to the Supplemental
O’Brien Declaration.

FRE 901 Authentication. The
exhibit appears to have annotations
(arrows) that go beyond what the
witness claimed the exhibit to be.
FRE 402 Relevance. The testimony
is not relevant to the subject matter
of this litigation. ASTM’s quality
control over how standards are
published may be relevant, but
quality control over how standards
are drafted is not relevant.

This document is copy of instructions for
registering a work item, which provides screen
shots of each of the screens a member will see
when registering a work item.
The entire quality control process, from the
beginning of development through publication
are relevant to the irreparable harm that results
from Defendant’s unauthorized use of ASTM’s
trademarks on works that are different than
ASTM’s actual standards. The entire quality
control process is also relevant to the harm to the
public due to Defendant’s infringement and its
threat to the continuation of the ASTM process
that leads to high quality standards.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding ASTM quality control
procedures.

FRE 701 Unqualified Expert
Opinion. The witness has not been

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant

63

52.
ASTM staff also submits the final
version to the technical committee for
reviews to make sure it matches the
content approved through the balloting
process.

identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

51.
ASTM staff editors edit the
language of the standard to ensure that it
conforms to the requirements in the Form
and Style Guide.

qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
FRE 402 Relevance. The testimony
is not relevant to the subject matter
of this litigation. ASTM’s quality
control over how standards are
published may be relevant, but
quality control over how standards
are drafted is not relevant.

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding the process for developing
the works.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
FRE 402 Relevance. The testimony
is not relevant to the subject matter
of this litigation. ASTM’s quality
control over how standards are
published may be relevant, but

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

64

The ASTM’s staff’s addition of language in the
standards is relevant to whether ASTM is at least
a co-owner of the copyright in the works at issue.

This testimony is relevant to ASTM’s quality
control procedures. In fact, in its objection to
paragraph 50, Defendant admits that “ASTM’s
quality control over how standards are published
may be relevant,” yet it objects to the

quality control over how standards
are drafted is not relevant.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

53.
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.

admissibility of the steps taken to ensure the
standards are properly punished as irrelevant.
In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding the process for developing
and publishing the works, including quality
control.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

65

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding the process for developing
and publishing the works, including quality
control.

54.
ASTM has not received any
complaints about lack of accessibility of
its standards other than from Defendant.

Defendant has not explained how this is unfairly
prejudicial. It is highly relevant to Defendant’s
arguments regarding access, Defendant’s
complaints about ASTM’s free reading room,
and Defendant’s complaint about the costs of
purchasing copies of the standards at issue from
ASTM. In fact, Defendant seeks to introduce
evidence of persons complaining about access to
standards even though those complaints are not
about ASTM standards. Def. SUMF (Dkt. 1212) ¶ 44.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

55.
ASTM owns a U.S. federal
trademark registration for the trademark

403 Prejudice. The witness has not
provided any foundation to believe
that ASTM would be expected to
receive complaints about the lack of
its standards if people were
dissatisfied or that ASTM tracks
complaints of that nature.

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding complaints regarding
access to ASTM standards.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
No objection.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

66

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. Attached as Exhibit 14 are
true and correct copies of the Certificate
of Registration and the Section 15
declaration.
56.
ASTM owns U.S. federal
No objection.
trademark registrations for the trademarks
ASTM INTERNATIONAL (U.S.
Trademark Reg. No. 2,685,857) and the
following logo:

(U.S. Reg. No. 2,651,796) in connection
67

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. Attached as Exhibit 15 are
true and correct copies of the Certificates
of Registration and the Section 15
declarations.
57.
ASTM also owns a registration for
the following logo:

(U.S. Reg. Nos. 4,079,772) in connection
with publications relating to testing
methods, specifications and standards in
engineering, industrial and allied fields.
ASTM has used this trademark since
1965. The application for this registration
was filed on May 10, 2011. The
Examining Attorney who reviewed the
application approved it for registration
without requesting proof of secondary
meaning. Attached as Exhibit 16 is a true
and correct copy of the Certificate of
Registration.
58.
ASTM expends considerable
resources marketing and promoting its
goods and services in connection with
these trademarks every year. For example,

No objection.

FRE 403 Prejudice. Assumes that
Public Resource has infringed
something.

68

Defendant has not explained how this is unfairly
prejudicial.

ASTM spent over $3 million marketing
and promoting the sales of copies of its
standards that feature its trademarks in
catalogs, brochures, and in mail and email
correspondence between 2010-2012,
which were the three years immediately
prior to Defendant’s infringement.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding ASTM’s trademarks.
It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

59.
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.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject. This is
quintessential expert testimony.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

60.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
FRE 702 Unreliable Expert

ASTM provides the public with

69

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding ASTM’s trademarks.

It is unclear what portion of this paragraph is

free, read-only access to all ASTM
standards that ASTM is aware have been
incorporated by reference into federal
regulations.

61.
ASTM provides the public with
free, read-only access to all ASTM
standards that are the subject of Plaintiffs’
Motion for Summary Judgment. Attached
as Exhibit 17 are true and correct copies of
screen shots demonstrating the availability
of ASTM standards on ASTM’s online
Reading Room.
62.
ASTM identifies standards that
have been incorporated by reference into
federal regulations from the database
created by the National Institute of
Standards and Technology.

Opinion. The testimony will not
allegedly expert opinion. When and if Defendant
help the trier of fact to understand
identifies any specific testimony, Plaintiffs
the evidence or determine a fact in
reserve the right to respond to any identification.
issue; is not based on sufficient
facts or data; is not the product of
reliable principles or methods; and
is not based on a reliable application
of principles or methods to the facts
of this case.
No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding legal matters, including
standards that have been incorporated by
reference into federal regulations.

FRE 702 Unreliable Expert
Opinion. The testimony will not
help the trier of fact to understand

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs

70

63.
ASTM publicizes the free readonly access provided on its website.

64.
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.

the evidence or determine a fact in
issue; is not based on sufficient
facts or data; is not the product of
reliable principles or methods; and
is not based on a reliable application
of principles or methods to the facts
of this case.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

reserve the right to respond to any identification.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

71

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding ASTM’s Reading Room.

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding ASTM’s Reading Room.

65.
ASTM has not received any
complaints about lack of accessibility of
its standards other than from Defendant.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
(duplicative of ¶ 54)

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

403 Prejudice. The witness has not
provided any foundation to believe
that ASTM would be expected to
receive complaints about the lack of
its standards if people were
dissatisfied or that ASTM tracks
complaints of that nature.

Defendant has not explained how this is unfairly
prejudicial. It is highly relevant to Defendant’s
arguments regarding access, Defendant’s
complaints about ASTM’s free reading room,
and Defendant’s complaint about the costs of
purchasing copies of the standards at issue from
ASTM. In fact, Defendant seeks to introduce
evidence of persons complaining about access to
standards even though those complaints are not
about ASTM standards. See Def. SUMF (Dkt.
121-2) ¶ 44.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding accessibility of ASTM’s
standards.

FRE 701 Unqualified Expert
Opinion. The witness has not been

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant

72

qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
66.
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.
67.
During the course of this litigation,
Defendant has continued to post versions
of additional standards owned by ASTM
that use ASTM’s trademarks on its
website, including as recently, as October
2015.

68.
Defendant has posted html
versions of certain ASTM, standards since
Plaintiffs filed their Complaint that do not

identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

FRE 1002 Secondary Evidence. The The statement relates to the submission of
witness is testifying about the
comments, not the specific contents of the
contents of a writing.
comments.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject. In particular, the
witness is testifying concerning
ASTM's ownership, a legal concept
not subject to personal knowledge.

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding Defendant’s posting of
ASTM standards using ASTM’s trademarks.

FRE 1002 Secondary Evidence. The The statement relates to the fact of the posting of
witness is testifying about the
versions of ASTM’s standards on Defendant’s
contents of a writing.
website, not to the contents of what Defendant
posted.
No objection.

73

use the ASTM logo marks. Attached as
Exhibit 18 is a true and correct copy of a
version of ASTM F977 that Defendant
posted on its website in October 2015 that
does not use an ASTM logo.
69.
On or about November 10, 2015,
Defendant removed its versions of the
standards at issue in this case from its
website and from the Internet Archive at
the suggestion of the Court.
70.
Since the standards were taken
down from Defendant’s website and the
Internet Archive, ASTM has not received
any complaints from persons regarding
any alleged inability to access ASTM’s
standards that have been incorporated by
reference.

No objection.

403 Prejudice. The witness has not
provided any foundation to believe
that ASTM would be expected to
receive complaints about the lack of
its standards if people were
dissatisfied or that ASTM tracks
complaints of that nature.

Defendant has not explained how this is unfairly
prejudicial. It is highly relevant to Defendant’s
arguments regarding access, Defendant’s
complaints about ASTM’s free reading room,
and Defendant’s complaint about the costs of
purchasing copies of the standards at issue from
ASTM. In fact, Defendant seeks to introduce
evidence of persons complaining about access to
standards even though those complaints are not
about ASTM standards. See Def. SUMF (Dkt.
121-2) ¶ 44.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. O’Brien
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
O’Brien confirms that he is Vice President and
General Counsel of ASTM has been employed
by ASTM since 2003. Under these
circumstances, there is no basis for Defendant’s
suggestion that Mr. O’Brien lacks personal
knowledge regarding accessibility of ASTM’s
standards.

74

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
DECLARATION OF JAMES T.
PAULEY IN SUPPORT OF
PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT
1.
I am the President and Chief
Executive Officer of the National Fire
Protection Association (“NFPA”). I am
generally responsible for the management,
direction and administration of NFPA and
its activities including its standards
development activities. I have held this
position since July 1, 2014. The following
facts are based upon my own personal
knowledge, and if called upon to do so, I
could and would testify competently
thereto.
2.
I am a native of Kentucky, and I
have a degree in electrical engineering
from the University of Kentucky.
3.
Prior to my employment with
NFPA, I worked in the electrical industry
for nearly 30 years, beginning in 1985. I
began my career as an engineer for Square
D, an electrical equipment manufacturer,
and then worked for Schneider Electric, an
electrical distribution and management
company, after it acquired Square D in

PUBLIC.RESOURCE.ORG’S
OBJECTIONS

No objection.

No objection.

No objection.

75

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

1991. My responsibilities at Schneider
Electric included product development
and marketing, industry standards, and
global standards strategy. In 2001, I
became a vice president of industry
standards and government relations at
Schneider Electric. In 2011, I became
senior vice president for external affairs
and government relations and a member of
the company’s U.S. executive
management team. I held that position
until being named NFPA’s president in
2014.
4.
NFPA is a nonprofit organization,
based in Quincy, Massachusetts, devoted
to eliminating death, injury, and property
and economic loss due to fire, electrical,
and related hazards. NFPA was founded in
1896, and has continuously developed
standards since that time. The association
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.

5.
Standards development is NFPA’s
principal activity and serves to further
NFPA’s mission of reducing the risk of
loss from fire, electrical, and related
hazards. NFPA develops standards based

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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
mission, history, and current membership.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. Mr.
Pauley is the President and Chief Executive
Officer of the NFPA. Pauley Decl. ¶ 1. Based

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

76

on the best available research and input
from a wide variety of stakeholders. These
standards provide guidance, instructions,
and best practices to prevent the
occurrence of disasters, manage their
FRE 701 Unqualified Expert
impact, and protect human life and
Opinion. The witness has not been
property.
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
6.
NFPA has continuously asserted
copyright in its standards and made copies
of its standards available for sale to the
public since it first began publishing
standards. The revenue NFPA has
obtained from the sale of its copyrighted
standards has been NFPA’s primary
means of financial support for many
decades.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

on his experience as President and CEO, Mr.
Pauley has personal knowledge of NFPA’s
mission and work developing standards.
It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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
history of asserting copyright in its standards and
the means by which it develops those standards.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
7.
NFPA’s flagship standard is NFPA FRE 602 Lack of Personal
This is a fact based on personal knowledge and,
70, the National Electrical Code (“NEC”). Knowledge. The witness has not
if necessary, further foundation for that
The first edition of the NEC was
established any personal knowledge knowledge would be presented at trial. Mr.
published in 1897. NFPA currently
about the historical facts or the three Pauley is the President and Chief Executive
releases a new edition of the NEC on a
year cycle.
Officer of the NFPA. Pauley Decl. ¶ 1. Based
three-year cycle. The current edition of the
on his experience as President and CEO, Mr.
NEC is the 2014 edition, which is over
Pauley has personal knowledge of NFPA’s
77

900 pages long. The prior edition was the
2011 edition.

standards, including the NEC.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

8.
The NEC addresses the installation
of electrical conductors, equipment, and
raceways; signaling and communications
conductors, equipment, and raceways; and
optical fiber cables and raceways in
commercial, residential, and industrial
occupancies. The NEC is the world’s
leading standard for electrical safety and
provides the benchmark for safe electrical
design, installation, and inspection to
protect people and property from electrical
hazards.

9.
Additional NFPA standards
include NFPA 101, the Life Safety Code.
The Life Safety Code is the most widely
used standard for building construction,
protection, and occupancy features that

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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
standards, including the NEC.
It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

FRE 1002 Secondary Evidence. The FRE 1002 is inapplicable. Plaintiffs’ are not
witness is testifying about the
trying to prove the contents of the NEC.
contents of a writing.
Regardless, Plaintiffs have filed a copy with the
Court.
FRE 602 Lack of Personal
This is a fact based on personal knowledge and,
Knowledge. The witness has not
if necessary, further foundation for that
established any personal knowledge knowledge would be presented at trial. Mr.
about this subject.
Pauley is the President and Chief Executive
Officer of the NFPA. Pauley Decl. ¶ 1. Based
78

minimize the effects of fire and related
hazards on human life. The Life Safety
Code includes provisions for building
egress, fire protection features, sprinkler
systems, alarms, emergency lighting,
smoke barriers, and special hazard
protection.

10.
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.

on his experience as President and CEO, Mr.
Pauley has personal knowledge of NFPA’s
standards, including NFPA 101, the Life Saftey
Code.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

FRE 1002 Secondary Evidence. The FRE 1002 is inapplicable. Plaintiffs’ are not
witness is testifying about the
trying to prove the contents of the NEC.
contents of a writing.
Regardless, if necessary, Plaintiffs could produce
a copy at trial.
FRE 602 Lack of Personal
This is a fact based on personal knowledge and,
Knowledge. The witness has not
if necessary, further foundation for that
established any personal knowledge knowledge would be presented at trial. Mr.
about NFPA’s “intent” in
Pauley is the President and Chief Executive
developing each of its standards.
Officer of the NFPA. Pauley Decl. ¶ 1. Based
on his experience as President and CEO, Mr.
Pauley has personal knowledge of NFPA’s
purpose in developing standards and that some
are incorporated into law.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

11.

NFPA develops new standards

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

FRE 403 Prejudice. The witness is
79

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
Defendant has not shown any prejudicial effect,

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.

especially in light of the fact that this is a bench
trial and therefore there is no risk of prejudice.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 work
developing new standards and its mission more
generally.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
12.
All NFPA standards have a range
of applications and uses even if they are
not incorporated by reference in
government laws or regulations. For
example, the nationwide use of the NEC
by builders and electrical manufacturers
ensures that consumers may travel
throughout the United States with the

anthropomorphizing NFPA by
ascribing to it the capability to
“determine” and “consider” things.
In fact, only its employees or agents
are able to do so, and to those
people, the witness lacks personal
knowledge as to what they
determined or considered.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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
standards and the various applications and uses

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject. This is
quintessential “expert” testimony
that is not the subject of personal
knowledge.

80

expectation that their electrical appliances
can be plugged in and will operate safely
and effectively. Additionally, widespread
use of the NEC and the Life Safety Code
provide benchmark safety guidance that
can be relied on by individuals,
companies, and insurers, among others.

of those standards.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

13.
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. NFPA makes
its standards available, both for free
viewing and for sale, through a variety of
channels, including through its website,
through a mail-order catalog distributed to
NFPA members, and through various
retail outlets.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

14.
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

FRE 602 Lack of Personal
Knowledge. The witness has not
established personal knowledge
concerning private-sector standards
development in the United States
generally.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

81

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 the primary
users of NFPA’s standards and the extent to
which NFPA makes those standards available.
It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. Mr.
Pauley is the President and Chief Executive
Officer of the NFPA as well as previously
serving on the ANSI Board of Directors. Pauley
Decl. ¶¶ 1, 14. Based on his experience as
President and CEO and previously on the Board
of Directors of ANSI, Mr. Pauley has personal

organizations (“SDOs”) whose procedures
comply with ANSI’s Essential
Requirements. I am familiar with ANSI
requirements, having served as chair of
FRE 701 Unqualified Expert
the ANSI Board of Directors from January Opinion. The witness has not been
2012 through May 2014.
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
15.
To achieve ANSI accreditation, an No objection.
SDO’s standards development committees
must contain balanced membership, taking
into account the views of a variety of
groups including technical experts on the
subject matter of the standard, consumer
representatives, government
representatives, and industry
representatives. ANSI accreditation also
requires that the SDO maintain open
proceedings; provide public notice of
standards development activity; allow
opportunity for public comment; give
consideration and response to public
comments; and provide an opportunity to
appeal committee decisions. Standards
that are developed in accordance with
ANSI requirements are known as
voluntary consensus standards.
16.
ANSI periodically audits all its
No objection.
accredited developers to verify that they
are following their ANSI approved
procedures. NFPA is classified as an
Audited Designator by ANSI because it
82

knowledge of ANSI and its relationship with
NFPA and other SDOs.
It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

submits to more in-depth ANSI auditing
of its standards process. This allows
NFPA to designate its standards as
“American National Standards” (ANSs)
when they complete the NFPA process.
All NFPA standards carry the ANS
designation and are revised frequently to
remain current with state-of-the-art
technology developments.
17.
I have been familiar with NFPA
standards and the NFPA standards
development process for many years,
including before I became President of
NFPA. From 2000 to 2013, I served on
NFPA’s Standards Council, and I served
as Chair of the Standards Council from
2008 to 2013. The Standards Council
oversees NFPA’s standards development
activities, administers the rules and
regulations, and acts as an appeals body.
18.
NFPA’s rigorous and open
standards development process requires
NFPA to expend substantial resources on
standards development. In addition to the
time contributed by the thousands of
volunteers who participate in NFPA
standards development, NFPA pays for
salary and benefits for its own
administrative, editorial, and expert staff,
office space, meeting facilities for the
more than 250 Technical Committees who
participate in NFPA standards
development processes, outreach and

No objection.

FRE 403 Prejudice. The testimony
is conclusory and lacks supporting
quantification of the alleged
expenses sufficient to substantiate
the characterization of the expenses
as “substantial.”

Defendant has not shown any prejudicial effect,
especially in light of the fact that this is a bench
trial and therefore there is no risk of prejudice.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about NFPA’s finances (before his
term as president) or the alleged
causation between how NFPA

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. Mr.
Pauley is the President and Chief Executive
Officer of the NFPA. Pauley Decl. ¶ 1. Based
on his experience as President and CEO, Mr.

83

education efforts, information technology,
and other costs.
19.
Each NFPA standard goes through
two full rounds of public and committee
input, comments, review and drafts before
being finalized.
20.
NFPA is continuously investing in
improvements to its standards
development process. For example, NFPA
has recently spent significant sums to
build a computerized interface that allows
for the online development and revision of
its standards. NFPA has spent more than
$2.9 million on this system over the past
four years.
21.
NFPA has also expended resources
to increase the participation of
underrepresented groups on its Technical
Committees, including by creating an
Enforcer Funding Program to raise the
percentage of government enforcement
officials on the Committees by
reimbursing these officials for the
majority of their travel costs and other
costs of Committee membership.
22.
NFPA’s standards are state of the
art. NFPA systematically and regularly
revises and updates its standards. The
most used NFPA standards, including the
NEC, are revised on a three-year cycle in
order to keep pace with changes in
technology and design, and advances in
safety research and understanding.

purports to develop its standards
and the costs of doing so.
No objection.

No objection.

No objection.

No objection.

84

Pauley has personal knowledge of NFPA’s
financials including historical financials.

23.
The standards that emerge from
this process are sophisticated and complex
technical works that provide unique
guidance and best practices covering a
wide range of topics. These works reflect
creative input and decisions from all of the
many participants in the standards
development process.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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
standard development process.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
24.
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, through the balloting and
voting process, becomes the standard.
25.
NFPA publishes its standards with
copyright notices that alert the public,
including the people who participated in
the standards development process, that
the copyright is owned by NFPA.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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
standard development process including the
contributions of various groups.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject, particularly as
the testimony assumes, without
support, a definition of “creative”
and as to the particular tasks of
large numbers of people, which
goes beyond his personal
knowledge.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about the effect of the copyright
notices in NFPA’s standards.
85

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 the copyright
notices that are included in NFPA’s publications.
It is a logical inference that the public has notice.

26.
NFPA is not aware of any other
person who claims to have any copyright
interest in NFPA standards.

FRE 1002 Secondary Evidence. The FRE 1002 does not prohibit secondary evidence
witness is testifying about the
of a “fact” about a writing. If necessary, NFPA
contents of a writing.
will produce the standards with copyright notices
at trial.
FRE 402 Relevance. Whether
This fact is relevant to Defendants’ claims that
someone claims copyright
NFPA does not own (or is not at least a joint
ownership of any NFPA standard is owner) of its standards because that ownership is
not probative of whether NFPA
not disputed. Defendant has not shown that this
owns the copyright to the NFPA
relevance is outweighed by any prejudicial effect,
standards.
especially in light of the fact that this is a bench
trial and therefore there is no risk of prejudice.
FRE 403 Prejudice. The witness’s
testimony implies, without
supporting proof, that he should be
aware if someone claimed to own
the copyright in an NFPA standard,
and therefore his lack of awareness
suggests that no member has
claimed ownership.
FRE 602 Lack of Personal
Knowledge. The witness has not
established personal knowledge as
to what NFPA knows, a question of
mixed fact and law concerning what
knowledge may be imputed to an
organization.

86

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 would know if there were persons
claiming copyright interest in NFPA standards.

27.
Members of the public participate
in NFPA’s standards development process
by submitting input, including proposed
changes to NFPA standards and comments
on proposed changes. It is NFPA policy
that all persons who submit public input
must assign all rights, including copyright,
in their contributions to NFPA. NFPA
does not accept public input without a
signed copyright assignment, which is
printed on the standard forms by which
members of the public submit input.
28.
In my experience, 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. I have never heard any
contributor suggest that NFPA did not
own the copyright in NFPA standards or
that the contributors have any rights in
NFPA standards.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
sufficient to testify that NFPA does
not accept public input except under
the specified conditions.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of NFPA’s policies.

FRE 1002 Secondary Evidence. The
witness is testifying about the
contents of NFPA’s purported
“standard forms.”
FRE 402 Relevance. Whether
someone claims copyright
ownership of any NFPA standard is
not probative of whether NFPA
owns the copyright to the NFPA
standards.

FRE 1002 does not prohibit testimony about
NFPA’s policy regarding how these forms are
used. This is inapplicable.
This fact is relevant to Defendants’ claims that
NFPA does not own (or is not at least a joint
owner) of its standards because that ownership is
not disputed. Defendant has not shown that this
relevance is outweighed by any prejudicial effect,
especially in light of the fact that this is a bench
trial and therefore there is no risk of prejudice.

FRE 403 Prejudice. The witness’s
testimony implies, without
supporting proof, that he should be
aware if someone claimed to own
the copyright in an NFPA standard,
and therefore his lack of awareness
suggests that no member has
claimed ownership.
FRE 602 Lack of Personal
Knowledge. The witness has not
established personal knowledge as
to what members of the public
understand and intend.
87

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 would know if there were persons
claiming copyright interest in NFPA standards.
29.
Prior to my employment with
NFPA, and during the time I was
employed in the electrical manufacturing
industry, I personally submitted proposals
and comments on NFPA standards. For
example, I submitted several proposals
and comments for the 2011 NEC, with
specific suggestions for revisions to the
wording of various provisions of the NEC.
The Technical Committees accepted some
of my proposals and comments, and they
were incorporated into the final standards..
30.
Like all members of the public
who submit input, I submitted these
comments and proposals on the standard
NFPA forms for such submissions. As
part of submitting the forms, I expressly
agreed that I assigned all and full
copyrights in my contributions to NFPA. I
understood and expressly intended that
NFPA would own the copyright both in
my contribution and in the final standard.
True and correct copies of some of the
proposals and comments that I submitted
for the 2011 NEC, including my signed
assignment of copyright in my
contributions to NFPA, are attached hereto
as Exhibit A.

No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
established personal knowledge
about what “all members of the
public” do.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. Mr.
Pauley is the President and Chief Executive
Officer of the NFPA and has submitted input to
NFPA. He is testifying about that experience.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

FRE 1002 Secondary Evidence. The FRE 1002 is inapplicable. The referenced
witness is testifying about the
document is attached to this declaration, and the
contents of a writing.
declaration is not intended to prove the content of
the document for the obvious reason that the
88

31.
As I have explained above, many
other members of the public also have
submitted proposals and comments for
NFPA standards, and they, too, have
executed copyright assignments relating to
their contributions. I have attached hereto
as Exhibit B a sampling of true and correct
copies of proposals and comments
submitted by members of the public for
the 2014 NEC, including their signed
assignments of copyright in their
contributions, are attached hereto as
Exhibit B.

32.
The members of NFPA Technical
Committees also contribute to NFPA’s
standards development process. The
Technical Committees are the principal
consensus bodies responsible for the
development and revision of NFPA
standards.
33.
The Technical Committees meet to
consider proposals submitted by the
public, and they may also suggest their
own revisions to the standards. The
Committees discuss and reach consensus
on which changes should be made. For a
large standards such as the NEC, there are

FRE 403 Prejudice. The testimony
omits any relevant timeframe,
which confuses the issues.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

document itself is attached.
Defendant has not shown any prejudicial effect,
especially in light of the fact that this is a bench
trial and therefore there is no risk of prejudice.
The timeframe is clear from the documents.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. Mr.
Pauley is the President and Chief Executive
Officer of the NFPA and in his work has
knowledge of the copyright assignments
executed by members of the public.

FRE 1002 Secondary Evidence. The FRE 1002 is inapplicable. The referenced
witness is testifying about the
document is attached to this declaration, and the
contents of a writing.
declaration is not intended to prove the content of
the document for the obvious reason that the
document itself is attached.
No objection.

No objection.

89

multiple Technical Committees. There is a
Technical Correlating Committee that
oversees the overall NEC development
process, and there are several Technical
Committees known as Code-Making
Panels that are responsible for particular
sections of the NEC.
34.
It is NFPA policy that anyone who
wishes to become a Technical Committee
member submits an application on
NFPA’s Committee Application form,
including by signing an assignment of
copyright to NFPA. Attached hereto as
Exhibit C is a true and correct copy of the
NFPA Technical Committee Application
form. The Application contains the
following language, which has remained
unchanged in substance for many years:
I agree that any material that I
author, either individually or with
others, in connection with work
performed as a member of an
NFPA Technical Committee shall
be considered to be works made
for hire for the NFPA. To the
extent that I retain any rights in
copyright as to such material, or as
to any other material authored by
me that I submit for the use of an
NFPA Technical Committee in the
drafting of an NFPA code,
standard or other NFPA document,
I hereby grant and assign all and

FRE 403 Prejudice. The testimony
is vague as to how long the
purported language has existed in
this form.

Defendant has not shown any prejudicial effect,
especially in light of the fact that this is a bench
trial and therefore there is no risk of prejudice. If
necessary, NFPA can clarify the timeframe at
trial.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about the historical versions of this
form.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of current and historical
application language.

FRE 1002 Secondary Evidence. The
witness is testifying about the
contents of other writings,
specifically previous versions of the
NFPA Technical Committee
Application form.

The testimony is not intended to prove the exact
content of other applications. Defendant is free
to point to other application language that it
believes is not similar in substance.

90

full rights in copyright to the
NFPA. I further agree and
acknowledge that I acquire no
rights in any publication of the
NFPA and that copyright and all
rights in materials produced by
NFPA Technical Committees are
owned by the NFPA and that the
NFPA may register copyright in its
own name.
35.
Before being employed by NFPA,
I served on a number of NFPA Technical
Committees, including, for example, the
Code-Making Panel No. 2 for the 2011
and 2014 editions of the NEC. Each time I
applied to be a member of a Technical
Committee, I submitted a Committee
Application form in which I signed the
copyright assignment containing the
language quoted in paragraph 29 of this
Declaration. It has for many years been
NFPA’s policy and practice that all
members of NFPA Technical Committees
execute such copyright assignments.
36.
In my work on NFPA Technical
Committees, I understood, agreed, and
expressed the intention that NFPA would
own the copyright in the final standards,
consistently with the Committee
Application form I had submitted.

The reference to paragraph 29
appears to be an error, as there is no
quoted language in that paragraph.
FRE 1002 Secondary Evidence. The FRE 1002 does not prohibit secondary evidence
witness is testifying about the
of a “fact” about a writing. The testimony is not
contents of a writing.
intended to prove the content of the application
but rather its existence is illustrative of NFPA’s
policy.

FRE 402 Relevance. The witness’s
understanding is not relevant to any
claim in this litigation.

Mr. Pauley’s intention and understand that he
was assigning work to NFPA is clearly relevant
to Defendant’s claim that NFPA does not own
the copyrights to its standards.

FRE 1002 Secondary Evidence. To
the extent that the witness’s
“express” intention was manifest in
a writing, then the witness is

FRE 1002 does not prohibit evidence regarding a
witnesses’ perceptions of the impact of a writing

91

testifying about the contents of a
writing.
37.
In my experience participating on
FRE 402 Relevance. The witness’s
the Technical Committees, I understood
understanding is not relevant to any
that all members of the Committees shared claim in this litigation.
the understanding and expressed the
common intention that NFPA would own
the copyright in the final standard. I have
FRE 602 Lack of Personal
frequently heard other Technical
Knowledge. The witness has not
Committee members refer to NFPA’s
established any personal knowledge
copyright ownership of NFPA standards. I about this subject.
have never heard any member of a NFPA
Technical Committee suggest that NFPA
does not own the copyright in NFPA
standards or that the Technical Committee
members retain any rights in their
FRE 701 Unqualified Expert
contributions to the standards.
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

38.
NFPA staff also participate in
NFPA’s standards development process in
the course of their employment. NFPA
technical staff assist and advise the
Technical Committees, and NFPA
technical and editorial staff revise and

FRE 802 Hearsay. The witness is
testifying to out of court statements
by “other Technical Committee
members” for the truth of the matter
asserted.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
whether NFPA staff act “in the
course of their employment,” which
is a legal conclusion. The witness is
92

Mr. Pauley’s perception of what other members
of the Committees understood and stated is
clearly relevant to Defendant’s claim that NFPA
does not own the copyrights to its standards.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. Based on
Mr. Pauley’s participation in the Technical
Committees he has perceived and has personal
knowledge regarding what other members have
expressed as their intent.
It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
The statements are not offered for the truth of the
matter asserted but rather as present sense
impressions.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. Mr.
Pauley is the President and Chief Executive
Officer of the NFPA. Pauley Decl. ¶ 1. Based
on his experience as President and CEO, Mr.

finalize the wording of the actual
document that becomes the standard.

Pauley has knowledge of the standard
development process and the role of NFPA’s
staff.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
39.
There is an NFPA staff liaison
assigned to every NFPA Technical
Committee. Each staff liaison has
technical expertise in the appropriate field,
and the staff liaisons provide information
and advice to the Committee during
Committee meetings.

also testifying to a general practice,
for which he lacks personal
knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the standard
development process and the role of NFPA’s
staff.

FRE 602 Lack of Personal
Knowledge. The witness is
testifying to a general practice, for
which he lacks personal knowledge.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
40.
The staff liaisons also record the
decisions made at the Committee meetings
about revisions to NFPA standards. NFPA
staff liaisons work together with the
Committees to craft appropriate wording
in the draft of the standard that accurately
captures the intent and purpose of

FRE 602 Lack of Personal
Knowledge. The witness is
testifying to a general practice, for
which he lacks personal knowledge.

93

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the standard

Committee decisions. The technical staff
are also responsible for ensuring that
revisions to the standard are drafted in a
way that maintains technical and editorial FRE 701 Unqualified Expert
consistency across the different sections of Opinion. The witness has not been
the standard.
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
41.
After Technical Committee
meetings, the technical staff work with
NFPA editorial staff to finalize the
language of the draft standard before
submitting it for balloting by the
Technical Committees. Every revision and
modification in the text of an NFPA
standard goes through multiple levels of
review and revision by NFPA technical
and editorial staff.

FRE 602 Lack of Personal
Knowledge. The witness is
testifying to a general practice, for
which he lacks personal knowledge.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
42.
NFPA invests significant resources No objection.
in the development of each new edition of
the NEC. For example, the development
process of the 2017 NEC is currently
ongoing. The preparation of the first draft
report involved consideration of over
4,000 proposals from the public. A total of
485 Technical Committee members on 19
94

development process and the role of NFPA’s
staff.
It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the standard
development process and the role of NFPA’s
staff.
It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

Code-Making Panels, who were supported
by at least 45 NFPA staff members, held
concurrent, multi-day committee meetings
for a total of 75 meeting days over a twoweek period. The first draft was finalized
by a four-day meeting of the Technical
Correlating Committee, assisted by three
NFPA staff members. The preparation of
the second draft report, which is ongoing
now, has so far involved consideration of
over 1,500 public comments, and a large
number of Committee meetings over a
two-week period, assisted by at least 19
NFPA staff members. There will be two
more multi-day Technical Correlating
Committee meetings prior to the issuance
of the NEC. In addition, there have been
numerous conference calls, online
seminars, and other interactions among
Committee Members and NFPA staff.
43.
The final versions of the standard
also go through a rigorous quality control
process by NFPA staff, to ensure that the
final document is as accurate as possible.
This painstaking review is costly, but
NFPA commits the resources because
technical accuracy of NFPA standards is
essential for NFPA’s mission of
promoting public safety.

FRE 403 Prejudice. The testimony
Defendant has not shown any prejudicial effect,
is conclusory and does not describe especially in light of the fact that this is a bench
the alleged quality control processes trial and therefore there is no risk of prejudice.
or the cost.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about whether technical accuracy is
essential for NFPA’s mission.

95

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the standard
development process and the costs and resources

it requires.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
44.
NFPA sells its standards at
reasonable cost and in a variety of
formats. For example, the 2014 edition of
the NEC, which is 910 pages long, is
offered for purchase as a PDF, an eBook,
or in softcover, looseleaf, or spiralbound
versions. The price for the NEC ranges
from $95 to $105, depending on the
format in which it is purchased. NFPA’s
other standards are sold at prices ranging
from $39 to $100, depending on the length
of the standard and other factors. NFPA
also makes several digital subscription
services available, so interested purchasers
can obtain unlimited digital access to a
variety of NFPA standards.
45.
In addition, NFPA is committed to
providing the full text of NFPA standards
available for free viewing on its website.
For more than a decade, NFPA has
provided such access to its standards, in
read-only format, and all NFPA standards
can currently be accessed on NFPA’s
website at www.nfpa.org/codes-andstandards/free-access. This access allows

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about whether the price for NFPA’s
standards is reasonable.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the prices at which
NFPA sells its standards.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this historical status of
NFPA’s “reading room.” The
witness also lacks personal
knowledge about whether any
member of the public may access
the “reading room.” For example,

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the history and current
status of NFPA’s reading rooms. Defendant’s
counter assertion regarding accessibility for

96

any member of the public to review NFPA
standards in full and without cost. 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.
46.
NFPA funds its standards
development activities primarily with the
revenue obtained from sales of its
copyrighted standards. For example, 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.
47.
NFPA would not be able to
maintain its existing voluntary consensus
standards development and revision
processes at current levels if there were a
significant reduction in the revenue it
obtains from the sale of publications.

people who rely on screen reader
technologies because they have
print disabilities are not able to
review the standards in “read-only”
formats.

persons with disabilities is a substantive response
not evidentiary objection and is substantively
responded to in Plaintiff’s Reply in Support of its
Motion for Summary Judgment.

FRE 403 Prejudice. The testimony
is confusing as to the difference
between “standards” and “codes and
standards.” The testimony confuses
the issues of the revenue earned
from standards incorporated into
law by reference and other
standards.

Defendant has not shown any prejudicial effect
or real risk of confusion, especially in light of the
fact that this is a bench trial and therefore there is
no risk of prejudice or confusion.

FRE 403 Prejudice. The testimony
is vague and confusing as to
“development” and “processes” as
well as “current levels”

Defendant has not shown any prejudicial effect
or real risk of confusion, especially in light of the
fact that this is a bench trial and therefore there is
no risk of prejudice.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the prices at which
NFPA sells its standards.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.

97

cannot testify as to facts beyond the
witness’s personal knowledge.
48.
If NFPA were unable to maintain
its current level of standards development
and revision activities, the standards
would not keep up with technological
advancements to address fire, electrical
and related hazards nor would they reflect
the most current knowledge and
experience of the experts who participate
in the process. This failure would result in
a lower level of overall public safety.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
49.
In NFPA’s experience, 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.

FRE 403 Prejudice. This testimony
is conclusory and lacks any
supporting facts.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject. To

98

When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the limitations NFPA
would face if it were unable to maintain its
current level of standard development and
revision.
It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
Defendant has not shown any prejudicial effect,
especially in light of the fact that this is a bench
trial and therefore there is no risk of prejudice.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the impact that
asserting its copyright has on NFPA’s sales.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

50.
NFPA has attempted for years to
develop alternative sources of revenue but
has been unable to identify any such
revenue sources that would come close to
replacing the revenue from sales of NFPA
standards.

FRE 403 Prejudice. The testimony
is vague as to “years” and
conclusory as to the attempts made
to develop other sources of revenue.

Defendant has not shown any prejudicial effect
or risk of confusion, especially in light of the fact
that this is a bench trial and therefore there is no
risk of prejudice.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject, especially for the
period of time before he was a
NFPA officer.

51.
If NFPA were to lose copyright
protection of its standards and the related
revenue, NFPA would have to
significantly limit its activities. Such
limitations could include ceasing to
develop standards that, while important,
do not necessarily generate sufficient
revenue to cover their costs including, for
example, personal protective equipment
standards that help keep fire fighter
personnel safe.

FRE 402 Relevance. The testimony
concerns the witness’s predicted
outcome in a hypothetical situation
where NFPA “lost” all its
copyrights. That is an appeal to
consequences and does not make
the fact of copyrightability more
likely to be true or false. In
addition, the testimony concerns the
witness’s predicted outcome of
losing copyright protection to all of
NFPA’s standards, not merely those

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the alternative sources
of revenue (and success thereof) that NFPA has
pursued.
This fact of the risk of lost copyright protection is
clearly relevant to Plaintiffs’ request for a
permanent injunction.

99

incorporated by reference into law.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject. As a
hypothetical, this testimony is not
subject to personal knowledge.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
52.
The activity of
Public.Resource.Org, in posting
unauthorized copies of NFPA standards
on the internet, threatens NFPA’s ability
to generate revenue from these standards
and its ability to continue to fund the
development of new and updated
standards.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the impact that losing
copyright projection would have on its activities.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the threatened impact
that Public Resource’s undisputed posting has on
the NFPA’s sales and ability to fund future
standard development activities.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond

100

53.
In addition, Public.Resource.Org’s
posting of unauthorized copies that have
not gone through NFPA’s quality control
process threatens the reputation for careful
and quality publications that NFPA has
built up for over a century and undermines
the goodwill associated with NFPA’s
name.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 knowledge of the threatened
reputational impact that Public Resource’s
undisputed posting has on the NFPA’s reputation
and name.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
54.
I understand that
Public.Resource.Org converted NFPA
standards to html format and posted the
html versions on the internet. The
conversion process inevitably resulted in
errors. For example, I am aware that the
html version of the 2011 version of the
NEC that was posted to
Public.Resource.Org’s website contains
many errors. These include many obvious
typographical errors, but they also include
errors that distort the meaning of the
standard. Some of those errors are:
a. Article 310.10(F) of the 2011 NEC
addresses conductors used in direct-burial

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
FRE 1002 Secondary Evidence. The The testimony is not to establish the specific
witness is testifying about the
content of the standards but to demonstrate the
contents of the version of the NEC
fact that the versions posted by Public Resource
published by NFPA and the version contain errors. To the extent necessary, Plaintiffs
posted on Public Resource’s
can establish this fact through actual documents
website. This is especially
at trial.
significant here where the content
of the original 2011 NEC has been
amended by several errata which
appear to explain the so-called
errors in the witness’s declaration.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
101

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. Mr.

applications, and states: “Cables rated
above 2000 volts shall be shielded.” This
requirement that high-voltage cables in
direct-burial applications be shielded is
important to prevent damage to the cables
and a resulting risk of electrical shock.
b. Article 424.59 of the 2011 NEC states
that “heaters installed within 1.2m (4 ft) of
the outlet of an air-moving device … may
require turning vanes, pressure plates, or
other devices on the inlet side of the duct
heater to ensure an even distribution of air
over the face of the heater.” In
Public.Resource.Org’s html version
however, the “m”—representing meters—
is incorrectly rendered as “in”—which
represents inches. In other words, the
Public.Resource.Org version says that the
requirement is only triggered if a heater is
less than 1.2 inches from an air-moving
device, rather than the correct and much
greater distance of 1.2 meters.
c. Article 430.35(B) of the 2011 NEC
states that “motor overload protection
shall not be shunted or cut out during the
starting period if the motor is
automatically started.” Inadequate motor
overload protection can result in
overheating and damage. In
Public.Resource.Org’s html version,
however, this provision incorrectly says
that motor overload protection shall not be
shunted or cut out during the “stalling

about purported consequences of
the so-called errors.

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 knowledge of the threatened impact
that Public Resource’s undisputed posting has on
the NFPA’s sales and ability to fund future
standard development activities.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

102

period.”
d. A similar error occurs in Article
502.134(b)(5), which identifies
requirements for “starting and control
equipment for electric-discharge lamps.”
In Public.Resource.Org’s html version,
this article erroneously refers to “stalling
and control equipment.”
e. Article 517.2 of the 2011 NEC defines
“X-Ray Installations, Portable” as “X-ray
equipment designed to be hand-carried.”
In Public.Resource.Org’s html version,
however, this definition erroneously refers
to “X-ray equipment designed to be handearned.”
f. There are many typographical errors
in the cross-references in
Public.Reosurce.Org’s html version. In
order to understand a provision of the
NEC that contains a cross-reference, the
user must be able to identify and refer to
the Article identified in that crossreference. However,
Public.Resource.Org’s html version
contains many erroneous cross-references,
including in Articles 110.14(B)(1),
310.10(E), 410.140, 430.75, 504.70,
645.10(B), and 680.25(B).
DECLARATION OF KEVIN
PUBLIC.RESOURCE.ORG’S
REINERTSON IN SUPPORT OF
OBJECTIONS
PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT

103

1.
I am the Deputy Fire Marshal for
Riverside County Fire, Office of the Fire
Marshal. I previously served, from
February, 2006 to May, 2015, as the
Division Chief for the California Office of
the State Fire Marshal (OSFM). The
following facts are based upon my own
personal knowledge, and if called upon to
do so, I could and would testify
competently hereto.
2.
I have been personally involved in
the standard setting processes of
organizations, including the National Fire
Protection Association (NFPA) and the
International Code Council (ICC), and
served as the OSFM representative on
working groups and other projects in the
development of building and fire safety
codes and reports. I am familiar with the
lengthy, rigorous, and complicated
processes that organizations like the
NFPA follow to develop standards for
various subject matters.

No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 and has been personally involved in the
NFPA and ICC standard setting processes.
Reinertson Decl. ¶ 1. Based on his experience,
he can testify from personal knowledge as to the
standard development process.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

3.
The OSFM supports the mission of No objection.
the California Department of Forestry and
Fire Protection by focusing on fire
prevention. The OSFM provides support
through a wide variety of fire safety
104

responsibilities including: regulating
buildings in which people live,
congregate, or are confined; by controlling
substances and products which may, in
and of themselves, or by their misuse,
cause injuries, death and destruction by
fire; by providing statewide direction for
fire prevention within wildland areas; by
regulating hazardous liquid pipelines; by
reviewing regulations and building
standards; and by providing training and
education in fire protection methods and
responsibilities.
4.
As part of this mission, the
No objection.
OSFM’s Code Development and Analysis
Division reviews all of California’s
regulations relating to fire and life safety
for relevancy, necessity, conflict,
duplication, and/or overlap. The division
also prepares the OSFM’s fire and life
safety regulations and building standards
for review and adoption by the California
Building Standards Commission (CBSC).
5.
In preparing regulations and
No objection.
standards for review and adoption by the
CBSC, the Code Development and
Analysis Division frequently looks to and
incorporates into regulations the standards
prepared by private codes and standards
setting organizations.
6.
The OSFM, along with other
No objection.
California state agencies, have
incorporated by reference the following
105

codes and standards developed by private
standard setting organizations: the
International Building Code, the
International Fire Code, the International
Residential Code, the National Electrical
Code, the Uniform Mechanical Code, the
Uniform Plumbing Code, and specific
NFPA standards as referenced in the
above codes (e.g., NFPA 13, NFPA 24
California edition, NFPA 72, etc.). The
OSFM follows a triennial code adoption
cycle to keep the California Building
Standards Codes current. Every three
years, the OSFM develops an adoption
package to incorporate by reference the
most recent editions of the privately
developed codes and standards along with
amendments that pertain specifically to
California law.
7.
The California Electrical Code
No objection.
incorporates by reference the National
Electrical Code, which is prepared by the
NFPA. A freely accessible version of the
California Electrical Code is available at:
http://www.nfpa.org/codes-andstandards/document-informationpages/free-access?mode=view. That link
is also provided on the California Building
Standards Commission website.
8.
Similarly, since 2008, the
No objection.
California Fire Code has incorporated by
reference the International Fire Code,
which is prepared by the ICC (prior to the
106

International Fire Code, the California
Fire Code was based on the adoption by
reference of the Uniform Fire Code
published jointly by the Western Fire
Chiefs Associations and the International
Association of Building Officials). A
freely accessible version of the California
Fire Code is available at:
http://www.ecodes.biz/ecodes
support/Free
Resources/2013California/13Fire/13Fire
main.html
9.
During my work with the OSFM
on the code adoption process, I was aware
that NFPA and other private sector
standards developers own the copyright on
the standards they develop. It was not my
view, and nor did I hear others at the
OSFM express the view, that the OSFM’s
code adoptions interfered with the
standards developers’ copyright interest in
any way.

10.
I was also aware that NFPA makes
the California Electrical Code available to

FRE 403 Prejudice. The testimony
implies, without support, that the
witness was likely to hear people at
the OSFM express views about
NFPA’s copyright, and therefore
that the absence of such complaints
must have significance.

Defendant has not shown that this relevance is
outweighed by any prejudicial effect, especially
in light of the fact that this is a bench trial and
therefore there is no risk of prejudice.

FRE 602 Lack of Personal
Knowledge. Copyright ownership is
a legal matter and not the subject of
personal knowledge.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 and has been personally involved in the
NFPA and ICC standard setting processes.
Reinertson Decl. ¶ 1. Based on his experience,
he can testify regarding his view and what he did
(or did not) here from others on the subject.

No objection.

107

the public both through a freely accessible
version on the NFPA website and through
making it available for sale in multiple
formats.
11.
The OSFM, and more generally
the State of California, utilizes the
expertise and resources of private sector
standard developers such as the NFPA.
The standards created by private standard
setting organizations allow government
agencies like the OSFM to draw on the
expertise and resources of private sector
standard developers to serve the public
interest.

This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 and has been personally involved in the
NFPA and ICC standard setting processes.
Reinertson Decl. ¶ 1. Based on his experience,
he can testify from personal knowledge as to the
fact that governments rely on and benefit from
SDOs.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
12.
Incorporating standards by
reference allows the OSFM and the State
of California to develop comprehensive
regulatory schemes covering several
subject matter areas quickly and with
limited costs. Moreover, standards created
by standard setting organizations reflect
the collective experience, knowledge, and
judgment of not only government
officials, but also industry representatives,

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 and has been personally involved in the
NFPA and ICC standard setting processes.
Reinertson Decl. ¶ 1. Based on his experience,
he can testify from personal knowledge as to the

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

108

practitioners, academics, and other
experts. The diversity of viewpoints
offered by private standard setting
organizations is particularly useful with
respect to quickly-evolving industries and
technologies, such as those relevant to fire
safety and protection.

the fact that governments rely on and benefit
from SDOs.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

13.
If private standard setting
organizations could not develop and create
standards, the OSFM and similar
government agencies would face
significant costs if they were to replace the
role of such organizations and create
standards themselves. The expense of
coordinating, updating, testing, educating
government, industry, and the public, and
the many other activities private standard
setting organizations engage in to keep
standards up to date and to comply with
their own rigorous procedural
requirements, would be very costly for the
OSFM, which is currently not funded to
handle such tasks.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

14.
Through the efforts of the codes
and standards writing organizations, the
OSFM was able to amend and adopt

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

109

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. 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 and has been personally involved in the
NFPA and ICC standard setting processes.
Reinertson Decl. ¶ 1. Based on his experience,
he can testify from personal knowledge as to the
fact that governments rely on and benefit from
SDOs and would face significant costs if the
governments were to create standards
themselves.
It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.
This is a fact based on personal knowledge and,
if necessary, further foundation for that
knowledge would be presented at trial. Mr.

specific regulations in the California Fire
Code made by ICC to implement fire
safety provisions that reference a current
Hydrogen Technologies Code (NFPA 2)
produced by NFPA. The OSFM did not
have the resources to accomplish the
necessary research and testing to timely
effectuate new codes and standards for
such a complex subject matter such as
hydrogen fuel technologies. Without the
development of these codes and standards,
the OSFM would have had to expend
significant resources to produce these
items on its own. Moreover, it would
have taken an unknown length of time to
produce such codes and standards, thereby
potentially hampering the introduction of
new technology (hydrogen fuel cell
vehicles). These requirements and
standards are being utilized to build
hydrogen fueling stations.
DECLARATION OF STEPHANIE
REINICHE IN SUPPORT OF
PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT
1.
I am currently employed by the
American Society of Heating,
Refrigerating, and Air Conditioning
Engineers (“ASHRAE”) as its Senior
Manager of Standards. I have been
employed by ASHRAE since 2003. Based
on the information known to me as a result
of the duties and responsibilities of my

about this subject.

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 and has been personally involved in the
NFPA and ICC standard setting processes.
Reinertson Decl. ¶ 1. Based on his experience,
he can testify from personal knowledge as to the
impact on governments if they could not rely on
SDOs.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion or otherwise constitutes
facts beyond this witness’s personal knowledge.
When and if Defendant identifies any specific
testimony, Plaintiffs reserve the right to respond
to any identification.

PUBLIC.RESOURCE.ORG’S
OBJECTIONS

No objection.

110

position, as well as information I have
gathered from relevant ASHRAE
personnel and staff, I have personal
knowledge of the facts set forth herein and
could and would testify competently
thereto if called as a witness.
2.
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. ASHRAE
has leveraged its expertise in HVAC
systems, as well as the expertise of its
volunteer members, to develop and
maintain over 100 consensus based
standards. These standards, which are
developed based needs in the industry,
apply to a variety of fields within the
building industry, such as energy
efficiency, indoor air quality,
refrigeration, and sustainability.
3.
The specific ASHRAE standard
that I understand to be at issue here,
Standard 90.1, pertains to energy
efficiency in commercial and high-rise
residential buildings. The standard has a
variety of uses, including use by builders
as a best-practices guide to achieve greater
energy efficiency in building projects
(even when not required by law) and use
as a guide for how to achieve LEED
certification for new buildings (a private

No objection.

FRE 402 Relevance. The testimony
concerning the use of the standard
or the purpose for which it was
developed is not relevant to the
subject matter of this litigation.

111

Testimony concerning the use of the standard is
relevant to arguments raised by Defendant
concerning fair use and access to the standard.

rating system for energy efficiency in new
buildings administered by the U.S. Green
Building Council). Though Standard 90.1
is sometimes incorporated into laws and
government regulations, such
incorporation is not the primary
motivation for ASHRAE’s continued
maintenance and updating of Standard
90.1. In fact, ASHRAE’s drafting and
maintenance of Standard 90.1 dates back
to the 1970s and significantly predates
Standard 90.1’s widespread incorporation
into federal laws or regulations—e.g., the
most significant law referencing Standard
90.1, the Energy Policy Act, was not
passed until 1992. Additionally, ASHRAE
maintains numerous standards that are not
incorporated by reference into any law or
regulation.
4.
As part of my job responsibilities,
I am one of the ASHRAE employees who
oversees ASHRAE’s standardsdevelopment process, including as that
process relates to Standard 90.1.
ASHRAE has a prescribed development
process that is used to develop new
standards and maintain existing standards.
The process is designed to ensure
compliance with American National
Standards Institute (“ANSI”) requirements
and broad participation from a variety of
materially interested parties.

No objection.

112

5.
Many ASHRAE standards,
No objection.
including 90.1, have existed for years but
are considered to be in “continuous
maintenance,” which means that the
standard is updated continuously via
addenda with supplements being
published every 18 months and all
addenda being incorporated for a new
version every three years using the same
development and editing process.
6.
ASHRAE’s Standard 90.1 is
No objection.
developed with input from a project
committee, which consists of a group of
experts in the field that include but not
limited to utilities representatives,
engineers, manufacturers, trade
organizations and architects that volunteer
their time to work on Standard 90.1. The
project committee members are selected
by the Chair of the project committee and
approved by ASHRAE’s Standards
Committee and subcommittee based on
expertise in the field and in order to ensure
a balanced representation of different
interest groups.
7.
As with ASHRAE’s other
standards, the 90.1 project committee is
subject to procedural oversight from
ASHRAE’s Board of Directors, Standards
Committee, and Technology Council.
Members of the public may also
participate in creating the standard

No objection.

113

through submitting public comments that
will be considered by the project
committee.
8.
Substantive drafting and changes
to Standard 90.1 happen through a
consensus of the project committee and
involve input from the many participants
in the development process. The standard
is not simply the work of individual
members. For each proposed change to a
standard or any new language that will be
added to a standard, the project committee
must vote to approve the change. Voting
on changes to the standard may occur at
an in-person meeting following discussion
on the issue, by letter ballot, or a
combination of the two. For a change to
be approved, a majority of project
committee members must vote in the
affirmative and a two-thirds majority of
those actually casting votes on that
particular change must vote in the
affirmative. Whether at an in-person
meeting, by letter ballot, or a combination
thereof, committee members who submit
negative votes are given the opportunity to
provide written comments explaining their
decision. If the vote passes with one or
more negative votes, the results are held in
abeyance until the comments are
transmitted to all eligible voters and they
are given an opportunity to change their
votes. Similarly, the committee also votes

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

114

In paragraph 1 of this declaration, as well as in
her deposition, Ms. Reiniche confirms that she is
the manager of standards at ASHRAE and one of
the primary individuals overseeing ASHRAE’s
standards creation process. As a result, Ms.
Reiniche certainly has personal knowledge on
this topic.
Ms. Reiniche’s testimony is based on personal
perception. It is unclear what portion of this
paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

on how to respond to public comments on
all revisions and new drafts of Standard
90.1. In the event that responses don’t
resolve the commenters on public review
drafts the committee members are given
an opportunity again to change their vote
prior to the changes being published or to
decide to revise the change and conduct
another public review.
9.
For each ASHRAE standard,
No objection.
ASHRAE assigns one or more staff
liaisons to work with that standard’s
project committee. These staff liaisons
report to me. For Standard 90.1, the
liaison is Steve Ferguson. Mr. Ferguson,
who has an engineering degree and is
knowledgeable concerning HVAC
systems, has worked as the staff liaison for
Standard 90.1 since February 2005.
10.
The job responsibilities of an
No objection.
ASHRAE staff liaison include facilitating
meetings of the project committee,
including attending meetings, keeping
minutes, processing voting ballots, and
often recording proposed changes to the
Standard that are under discussion. The
staff liaisons also work together with the
project committees to craft the appropriate
wording of the standards by reviewing all
proposed changes and drafts of the
standards to make sure they are written
clearly, in the proper format, comply with
ANSI and ASHRAE requirements, and are
115

both technically and editorially consistent.
For instance, when a change is made, the
liaison might determine that language in
another part of the standard also needs to
be changed to make the standard internally
consistent, at which point the liaison
would submit an addenda back to the
project committee for further
consideration. For each standard, the staff
liaison also provides the project
committee with the comments and
proposals submitted by the public and any
materially affected parties and
subsequently reviews the project
committee’s formal responses to public
comments and proposals to make sure
they are clearly worded and in a proper
format.
11.
Every three years, when ASHRAE No objection.
performs a roll-up of all proposed changes
and edits to a standard under continuous
maintenance, like Standard 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. Additionally,
members of ASHRAE’s staff are
responsible for reviewing and updating
certain language in ASHRAE standards
that does not relate to the technical
requirements of the standard, including the
116

initial policy statement and notice of
instructions for submitting a proposed
change.
12.
In my experience, members of the
project committee, other ASHRAE
members, and members of the public who
contribute to ASHRAE standards fully
understand and intend that ASHRAE will
own the copyrights in the completed
ASHRAE standards.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of this declaration, as well as in
her deposition, Ms. Reiniche confirms that she is
the manager of standards at ASHRAE and one of
the primary individuals overseeing ASHRAE’s
standards creation process. She works closely
with the project committees. As a result, Ms.
Reiniche certainly has personal knowledge on
this topic.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

Ms. Reiniche’s testimony is based on personal
perception based on her experience with
ASHRAE members and the project committees.
She does not offer an expert opinion that runs
afoul of Rule 701.

FRE 802 Hearsay. The testimony
implies the content of out of court
statements made by members of the
project committee.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

This paragraph does not contain hearsay. It is
based on Ms. Reiniche’s perception, not relaying
an out of court statement.

13.
Anyone who contributes to
Standard 90.1 as a project committee
member, or by submitting a change
proposal or public comment, is 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 of
which contain an acknowledgment stating
“I understand that I acquire no rights in
FRE 701 Unqualified Expert
publication of such documents in which
Opinion. The witness has not been
117

In paragraph 1 of this declaration, as well as in
her deposition, Ms. Reiniche confirms that she is
the manager of standards at ASHRAE and one of
the primary individuals overseeing ASHRAE’s
standards creation process. As a result, Ms.
Reiniche certainly has personal knowledge on
this topic.
Ms. Reiniche’s testimony is based on personal
perception. It is unclear what portion of this
paragraph is allegedly expert opinion or

my contributions or other similar
analogous form are used.” A true and
correct copy of a sample Form for
Commenting on a Public Review Draft
ASHRAE Standard is attached hereto as
Exhibit 1, and a true and correct copy of a
sample Application for Membership on an
ASHRAE Committee is attached as
Exhibit 2. All forms signed by
commenters or committee membership on
the 2004, 2007, and 2010 versions of
Standard 90.1 would have contained
substantially the same language as these
forms.
14.
As a general matter, ASHRAE
does not permit alterations to the forms
that must be signed by public commenters
or committee members, and I am not
aware of any contribution made to
ASHRAE Standards 90.1-2004, 90.12007, or 90.1-2010, for which the
contributor altered a standard ASHRAE
form or refused to execute the form. To
the extent any comment has been
submitted and considered by the project
committee without a properly executed
form, it would be an exception to the
general practices and requirements
imposed by ASHRAE.

qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

FRE 1002 Secondary Evidence. The Defendant’s FRE 1002 objection is not well
witness is testifying about the
taken where the document is directly quoted and
contents of a writing.
attached to the declaration.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of this declaration, as well as in
her deposition, Ms. Reiniche confirms that she is
the manager of standards at ASHRAE and one of
the primary individuals overseeing ASHRAE’s
standards creation process. As a result, Ms.
Reiniche certainly has personal knowledge on
this topic.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

Ms. Reiniche’s testimony is based on personal
perception. It is unclear what portion of this
paragraph is allegedly expert opinion or
otherwise constitutes facts beyond this witness’s
personal knowledge. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

FRE 1002 Secondary Evidence. The FRE 1002 is inapplicable as this does not refer to
witness is testifying about the
the contents of a document but rather to Ms.
118

contents of a writing.
15.
ASHRAE has valid copyright
registrations for the versions of Standard
90.1 at issue in this case (i.e., the 2004,
2007, and 2010 versions). True and
correct copies of those registrations are
attached hereto as Exhibits 3, 4, and 5.
Additionally, on each version of ASHRAE
90.1, it is ASHRAE’s practice to place a
copyright notice prominently on the
standard to alert members of the public
that ASHRAE has copyrighted the
standard. Members of the project
committee are also aware of this practice
and are thus aware that ASHRAE
copyrights its standards, including each
successive version of Standard 90.1.
ASHRAE is not aware of any member of
the 90.1 project committee or member of
the public who commented on 90.1 who
has contested ASHRAE’s copyright rights
in the standard or claimed an ownership
interest in any part of ASHRAE 90.1.

FRE 403 Prejudice. The testimony
states an opinion about an ultimate
issue concerning the copyright
claims (whether the copyright
registrations are valid) from a lay
witness.

16.
In addition to its copyrights,
ASHRAE also holds several registered
trademarks, including U.S. Registration
Nos. 1,503,000 and 4,262,297, which
protect the following logos:

FRE 403 Prejudice. The testimony
is conclusory and fails to set forth
the factual basis for those
conclusions.

Reiniche’s personal awareness of ASHRAE
policies and practices.
Defendant’s FRE 403 objection (which appears
limited to the word “valid”) is of no moment.
There is no risk of extreme prejudice by
including this one word.

FRE 1002 Secondary Evidence. The Defendant’s FRE 1002 objection is not well
witness is testifying about the
taken where the document is attached to the
contents of a writing.
declaration. Also, the witness’s testimony
concerning an ASHRAE practice does not run
afoul of FRE 1002.

119

This testimony is plainly relevant in that the
existence of trademarks is relevant to a claim of
trademark infringement. Defendant has
identified no prejudice that would outweigh that
relevance.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about public “associations” with the
marks or ASHRAE’s goodwill..
True and correct copies of ASHRAE’s
registrations for these two marks are
attached as Exhibits 6 and 7. Additionally,
for mark number 1,503,000 , which has
been used in commerce since 1959,
ASHRAE has filed a Section 15
declaration in support of the
incontestability of its registration.
ASHRAE’s use of these marks in
connection with its standards and other
goods and services has been substantially
continuous, and these marks, which are
routinely affixed to ASHRAE’s standards,
have become associated with ASHRAE
and its standards. ASHRAE considers
these marks to be valuable assets and has
developed substantial goodwill associated
with these marks over the years.
Exhibit 6

Exhibit 7

In paragraph 1 of this declaration Ms. Reiniche
confirms that she is a long-time ASHRAE
employee and has personal knowledge regarding
the topics addressed in this declaration.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

This testimony is based on Ms. Reiniche’s
personal knowledge as a long-time ASHRAE
employee. It is unclear what portion of this
paragraph is allegedly expert opinion. When and
if Defendant identifies any specific testimony,
Plaintiffs reserve the right to respond to any
identification.

FRE 1002 Secondary Evidence. The FRE 1002 is inapplicable. The referenced
witness is testifying about the
document is attached to this declaration, and the
contents of writings.
declaration is not intended to prove the content of
the document for the obvious reason that the
document itself is attached.

FRE 1002 Secondary Evidence.
This is not a trademark registration.
It is information provided from the
search engine of the trademark
database.
FRE 1002 Secondary Evidence.
This is not a trademark registration.
It is information provided from the
search engine of the trademark
120

FRE 1002 is inapplicable. The referenced
document is attached to this declaration, and the
declaration is not intended to prove the content of
the document for the obvious reason that the
document itself is attached.
FRE 1002 is inapplicable. The referenced
document is attached to this declaration, and the
declaration is not intended to prove the content of
the document for the obvious reason that the

18.
ASHRAE’s pricing and access
policies are generally tailored to afford
broad access to the standards. Prices
typically range from $25 to $120, with no
standard costing more than $200. The
standards are priced on the basis of
ASHRAE’s costs and ASHRAE does not
charge more for standards that have been
incorporated into laws or regulations.
ASHRAE also offers discounts for
libraries, educational uses, government
entities, and individuals or entities who

document itself is attached.
ASHRAE’s sales of standards are directly
relevant to remedies issues, fair use, and other
issues central to this case. Defendant fails to
identify any prejudice that would outweigh the
plain relevance of this testimony.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about purchasers and users of
ASHRAE’s standards generally.

In paragraph 1 of this declaration, and in her
deposition, Ms. Reiniche confirms that she is a
long-time ASHRAE employee and has personal
knowledge regarding ASHRAE’s standards and
their common uses.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

17.
Each time new versions of
ASHRAE standards are developed,
ASHRAE offers those standards for sale.
Sales of the standards are an important
piece of ASHRAE’s yearly revenues. The
primary purchasers and users of
ASHRAE’s standards include builders,
architects, and heating, air-conditioning,
and refrigeration manufacturers who use
the standards in their businesses.

database.
FRE 403 Prejudice. The testimony
is conclusory concerning the
significance, if any, of the sales’
annual rental.

This testimony is based on Ms. Reiniche’s
personal knowledge as a long-time ASHRAE
employee. It is unclear what portion of this
paragraph is allegedly expert opinion. When and
if Defendant identifies any specific testimony,
Plaintiffs reserve the right to respond to any
identification.

No objection.

121

purchase the standards on a subscription
basis.
19.
To further ensure broader access to
the standards, ASHRAE also offers online
read- only access to many of its standardsparticularly those standards that have been
incorporated into codes--on the ASHRAE
website, available at
https://www.ashrae.org/standards-research
-- technology/standards--guidelines /otherashrae-standards -referenced-in -code.
This portion of the ASHRAE website
allows viewers to read ASHRAE
standards, including the 2004, 2007, and
2010 versions of Standard 90.1. For
certain standards, including Standard 90.1,
users of the ASHRAE website can even
perform keyword searches within the
read-only versions of the documents.
20.
ASHRAE is unaware of anyone,
except the defendant in this matter, who
has complained that the various channels
of access ASHRAE provides to Standard
90.1 are insufficient. Additionally,
ASHRAE is aware that Defendant has
recently removed ASHRAE Standards
90.1-2004, 90.1-2007, and 90.1-2010 from
its site at the suggestion of the Court in
this matter. Since that occurred, I am not
aware of any complaints ASHRAE has
received regarding a perceived loss of
access to these standards.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of this declaration, and in her
deposition, Ms. Reiniche confirms that she is a
long-time ASHRAE employee and has personal
knowledge regarding ASHRAE’s basic practices.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

This testimony is based on Ms. Reiniche’s
personal knowledge as a long-time ASHRAE
employee. It is unclear what portion of this
paragraph is allegedly expert opinion. When and
if Defendant identifies any specific testimony,
Plaintiffs reserve the right to respond to any
identification.

403 Prejudice. The witness has not
provided any foundation to believe
that ASHRAE would be expected to
receive complaints about the lack of
its standards if people were
dissatisfied or that ASHRAE tracks
complaints of that nature.

Defendant repeatedly complains of a lack of
adequate access to Plaintiffs’ standards as a basis
for much of its case, including its fair use
defense. The fact that no one other than
Defendant has ever raised a similar complaint is
plainly relevant, and Defendant has not shown
this testimony is prejudicial in any way.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of this declaration, and in her
deposition, Ms. Reiniche confirms that she is a
long-time ASHRAE employee and has personal
knowledge regarding ASHRAE’s standards and
their common uses.

122

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

DECLARATION OF JORDANA
RUBEL IN SUPPORT OF
PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT
1.
I am over the age of 18 years and
am fully competent to testify to the
matters stated in this Declaration.
2.
This declaration is based on my
personal knowledge. If called to do so, I
would and could testify to the matters
stated herein.
3.
I am an associate at Morgan Lewis
& Bockius LLP, which represents Plaintiff
American Society for Testing and
Materials in this matter.
4.
Attached as Exhibit 1 is a true and
correct copy of the Expert Report of John
C. Jarosz that was served on June 5, 2015.
5.
Attached as Exhibit 2 are true and
correct copies of excerpts of the transcript
of the 30(b)(6) deposition of
Public.Resource.Org, Inc., which took
place on February 26, 2015.
6.
Attached as Exhibit 3 are true and
correct copies of excerpts of the transcript
of the deposition of Carl Malamud, which

This testimony is based on Ms. Reiniche’s
personal knowledge and perceptions. It is
unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

PUBLIC.RESOURCE.ORG’S
OBJECTIONS

No objection.

No objection.

Public Resource has moved to strike Plaintiffs will file an opposition to Defendant’s
Mr. Jarosz’s report and incorporates motion concurrently with this document.
its motion by reference here.
Public Resource preserves the
objections that its counsel made at
the time of deposition.

Public Resource preserves the
objections that its counsel made at
the time of deposition.
123

took place on February 27, 2015.
7.
Attached as Exhibit 4 are true and
correct copies of excerpts of the transcript
of the 30(b)(6) deposition of Point.B
Studio, which took place on November 13,
2014.
8.
Attached as Exhibit 5 are true and
correct copies of excerpts of the transcript
of the 30(b)(6) deposition of HTC Global,
Inc., which took place on November 5,
2014.
9.
Attached as Exhibit 6 are true and
correct copies of excerpts of the transcript
of the 30(b)(6) deposition of Christian
Dubay on behalf of the National Fire
Protection Association, Inc., which took
place on April 1, 2015.

10.
Attached as Exhibit 7 are true and
correct copies of excerpts of the transcript
of the 30(b)(6) deposition of Stephanie
Reiniche on behalf of the American
Society for Heating, Refrigerating and Air
Conditioning Engineers, which took place
on March 30, 2015.

Public Resource preserves the
objections that its counsel made at
the time of deposition.

Public Resource preserves the
objections that its counsel made at
the time of deposition.

FRE 802 Hearsay. The deposition
transcript contains out of court
statements introduced for the truth
of the matter asserted.

FRE 802 Hearsay. The deposition
transcript contains out of court
statements introduced for the truth
of the matter asserted.

124

At the summary judgment stage, parties are
allowed to cite to deposition transcripts. Fed. R.
Civ. P. 56(c)(1)(A). This testimony does not
have to be admissible in its presented form,
instead the correct challenge from the nonoffering party is that the evidence is not capable
of being presented in an admissible manner at
trial. Id. at 56(c)(2); Fraser v. Goodale, 342 F.3d
1032, 1036 (9th Cir. 2003) (“At the summaryjudgment stage, we do not focus on the
admissibility of the evidence’s form. We instead
focus on the admissibility of its contents.”)
Here, Plaintiffs can offer this testimony at trial by
presenting Mr. Dubay as a witness.
At the summary judgment stage, parties are
allowed to cite to depositions. Fed. R. Civ. P.
56(c)(1)(A). This testimony does not have to be
admissible in its presented form, instead the
correct challenge from the non-offering party is
that the evidence is not capable of being
presented in an admissible manner at trial. Id. at

56(c)(2); Fraser v. Goodale, 342 F.3d 1032,
1036 (9th Cir. 2003) (“At the summaryjudgment stage, we do not focus on the
admissibility of the evidence’s form. We instead
focus on the admissibility of its contents.”)

11.
Attached as Exhibit 8 are true and
correct copies of excerpts of the transcript
of the 30(b)(6) deposition of Steven
Comstock on behalf of the American
Society for Heating, Refrigerating and Air
Conditioning Engineers, which took place
on March 5, 2015.

FRE 802 Hearsay. The deposition
transcript contains out of court
statements introduced for the truth
of the matter asserted.

Here, Plaintiffs can offer this testimony at trial by
presenting Ms. Reiniche as a witness.
At the summary judgment stage, parties are
allowed to cite to depositions. Fed. R. Civ. P.
56(c)(1)(A). This testimony does not have to be
admissible in its presented form, instead the
correct challenge from the non-offering party is
that the evidence is not capable of being
presented in an admissible manner at trial. Id. at
56(c)(2); Fraser v. Goodale, 342 F.3d 1032,
1036 (9th Cir. 2003) (“At the summaryjudgment stage, we do not focus on the
admissibility of the evidence’s form. We instead
focus on the admissibility of its contents.”)
Here, Plaintiffs can offer this testimony at trial by
presenting Mr. Comstock as a witness.

12.
Public.Resource.Org, Inc.
("Defendant") 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.
Attached as Exhibit 9 are true and correct
copies of letters of requests
Public.Resource.Org, Inc. submitted to the
U.S. Department of Housing and Urban

No objection.

125

Develop and the U.S. Consumer Product
Safety Commission that were downloaded
from Defendant's website.
13.
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.
Attached as Exhibit 10 are true and correct
copies of letters to Defendant from the
U.S. Department of Interior, the U.S.
Department of Housing and Urban
Development and the U.S. Consumer
Product Safety Commission that were
downloaded from Defendant's website.
14.
Attached as Exhibit 11 are true and
correct copies of excerpts from
Defendant's responses to interrogatories
served by American Society for Testing
and Materials. Defendant did not serve
supplemented responses to these
interrogatories.

FRE 802 Hearsay. Public Resource
objects to the extent the letters are
introduced to prove the truth of the
matter asserted.

No objection.

126

This is not hearsay. The letters, which express
the official positions of the drafters, are offered
not for the truth of those positions but to
demonstrate the fact that such requests were
made by Mr. Malamud and subsequently denied.

15.
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.
Attached as Exhibit 12 is a true and
correct copy of a printout of a page
showing uploads made by dharlanuctcom
to the Scribd platform.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

As stated in paragraph 2, the declarant has
affirmed personal knowledge of the subjects in
this declaration. Here, the declarant states that
she printed out a page from a website onto which
Defendant’s copies of numerous ASTM
standards were uploaded.

Exhibit 12

FRE 802 Hearsay. This document is
an out of court statement introduced
for the truth of the matter asserted.

16.
Even after Mr. Malamud was
notified of specific errors in Defendant's
versions of Plaintiffs' standards that were
posted on Defendant's website, Defendant
did not correct those mistakes and
maintained versions of the standards that
contained these errors on its website until
it removed its copies of Plaintiffs'
standards in November 2015 at the Court's
suggestion.
17.
Attached as Exhibit 13 is a true
and correct copy of Exhibit 55 to the
30(b)(6) deposition of Public.Resource.
Org, Inc.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

This document is not hearsay because it is not
being offered for the truth of any matter asserted
in the document. It is simply showing that copies
of Defendant’s versions of numerous ASTM
standards are available on a website.
As stated in paragraph 2, the declarant has
affirmed personal knowledge of the subjects in
this declaration and subject to her own review of
the materials. Here, the declaration is simply
providing information regarding Defendant’s
web page.

FRE 1002 Secondary Evidence.
Exhibit 13 is a transcript of a video.
The video is the original record.

This objection is not well taken as Defendant has
not (and cannot) identify any inaccuracies with
the transcript.
This evidence does not have to be admissible at
trial in its presented form, instead the correct
challenge from the non-offering party is that the
evidence is not capable of being presented in an

127

18.
Attached as Exhibit 14 is a true
and correct copy of Exhibit 33 to the
30(b)(6) deposition of
Public.Resource.Org, Inc.

FRE 402 Relevance. The statement
by Mr. Malamud about some
technical standards having “strong
copyright interests” has no
consequence for determining the
action. The statement is not a
binding admission on either Mr.
Malamud or Public Resource.

19.
Attached as Exhibit 15 is a true
and correct copy of Exhibit 69 to the
deposition of Carl Malamud.

FRE 402 Relevance. The Exhibit is
cited for Mr. Malamud’s statement
that a postdoctoral research fellow
should not violate any terms of use.
This statement is not relevant to any
issue in this case. Moreover,
Plaintiffs do not rely on this exhibit
in their brief.

128

admissible manner at trial. Fed. R. Civ. P.
56(c)(2); Fraser v. Goodale, 342 F.3d 1032,
1036 (9th Cir. 2003) (“At the summaryjudgment stage, we do not focus on the
admissibility of the evidence’s form. We instead
focus on the admissibility of its contents.”). If
Defendant persists in this objection, Plaintiffs can
simply present the video at trial.
The test for relevance is broad and encompasses
any evidence that “has any tendency to make a
fact more or less probable than it would be
without the evidence.” Fed. R. Evid. 401. Here,
Defendant challenges Plaintiffs’ ownership
interests in the copyrights and otherwise calls
into question Plaintiffs’ interest in the
copyrighted documents when presenting
arguments on fair use and remedies, thus the fact
that Defendant has previously made
contradictory admissions is plainly relevant
under the liberal standards of Rules 401/402.
The test for relevance is broad and encompasses
any evidence that “has any tendency to make a
fact more or less probable than it would be
without the evidence.” Fed. R. Evid. 401. Here,
Defendant has made factual claims that Plaintiffs
should have acted sooner with regard to his
infringement. This document, along with several
other documents, helps demonstrate that
Defendant intentionally tried to hide its actions
by using intermediaries. This document could
also be relevant to certain affirmative defenses
raised by Defendant in that it shows Defendant
was never under the impression that his actions

were viewed as acceptable by Plaintiffs.
20.
Attached as Exhibit 16 is a true
and correct copy of Exhibit 63 to the
deposition of Carl Malamud.
21.
Attached as Exhibit 17 is a true
and correct copy of Exhibit 2 to the
30(b)(6) deposition of HTC Global.
22.
Attached as Exhibit 18 is a true
and correct copy of excerpts from the
expert deposition of James Fruchterman,
which took place on July 31, 2015.
23.
Attached as Exhibit 19 is a true
and correct copy of Exhibit 21 to the
30(b)(6) deposition of Point.B Studio.

No objection.

24.
Attached as Exhibit 20 is a true
and correct copy of Exhibit 57 to the
deposition of Carl Malamud.
25.
Attached as Exhibit 21 is a true
and correct copy of Exhibit 62 to the
deposition of Carl Malamud.
26.
Attached as Exhibit 22 is a true
and correct copy of Exhibit 18 to the
30(b)(6) deposition of Point.B Studio.
27.
Attached as Exhibit 23 are true and
correct copies of Exhibits 52 and 53 to the

No objection.

No objection.

Public Resource hereby preserves
the objections its counsel made at
the time of the deposition.
FRE 402 Relevance. Plaintiffs rely
on this exhibit to show that Mr.
Malamud suspected his vendor of
not truly double-keying the
standards he paid them to doublekey. Mr. Malamud’s suspicion does
not tend to make any fact about
HTC’s practices more or less
probable.

No objection.

No objection.

No objection.

129

The test for relevance is broad and encompasses
any evidence that “has any tendency to make a
fact more or less probable than it would be
without the evidence.” Fed. R. Evid. 401. The
accuracy and quality of Defendant’s
reproductions is relevant to several different
issues, including Plaintiffs’ trademark claims and
reputational damage to Plaintiffs. These
statements demonstrate that even Mr. Malamud
expressed doubts about the procedures used to
reproduce Plaintiffs’ standards.

30(b)(6) deposition of
Public.Resource.Org, Inc.
28.
Attached as Exhibit 24 is a true
and correct copy of Exhibit 75 to the
deposition of Carl Malamud.
29.
Attached as Exhibit 25 are true and
correct copies of documents Bates
stamped PR0_00082474, PR0_00082837,
and PR0_00083112, which were produced
by Public.Resource.Org, Inc.
30.
Attached as Exhibit 26 is a true
and correct copy of a document Bates
stamped PR0_00101955-57, which was
produced by Public.Resource.Org, Inc.
31.
Attached as Exhibit 27 is a true
and correct copy of Exhibit 38 to the
30(b)(6) deposition of
Public.Resource.Org, Inc.
32.
Attached as Exhibit 28 is a true
and correct copy of Exhibit 40 to the
30(b)(6) deposition of Public.Resource.
Org, Inc.
33.
Attached as Exhibit 29 is a true
and correct copy of Exhibit 64 to the
deposition of Carl Malamud.
34.
Attached as Exhibit 30 is a true
and correct copy of Exhibit 58 to the
deposition of Carl Malamud.
35.
Attached as Exhibit 31 is a true
and correct copy of Exhibit 59 to the
deposition of Carl Malamud.
36.
Attached as Exhibit 32 is a true
and correct copy of a document I

No objection.

No objection.

No objection.

No objection.

No objection.

No objection.

No objection.

No objection.

No objection.

130

downloaded from the law.resource.org
website on November 19, 2015.
37.
Attached as Exhibit 33 is a true
and correct copy of Exhibit 77 to the
deposition of Carl Malamud.
38.
Attached as Exhibit 34 is a true
and correct copy of Exhibit 65 to the
deposition of Carl Malamud.
39.
Attached as Exhibit 35 is a true
and correct copy of Exhibit 27 to the
30(b)(6) deposition of Point.B Studio.
40.
Attached as Exhibit 36 is a true
and correct copy of Exhibit 73 to the
deposition of Carl Malamud.
41.
Attached as Exhibit 37 is a true
and correct copy of Exhibit 49 to the
30(b)(6) deposition of Public.Resource.
Org, Inc.
42.
Attached as Exhibit 38 is a true
and correct copy of Exhibit 43 to the
30(b)(6) deposition of
Public.Resource.Org, Inc.
43.
Attached as Exhibit 39 is a true
and correct copy of Exhibit 51 to the
30(b)(6) deposition of
Public.Resource.Org, Inc.
44.
Attached as Exhibit 40 is a true
and correct copy of Exhibit 44 to the
30(b)(6) deposition of
Public.Resource.Org, Inc.
45.
Attached as Exhibit 41 is a true
and correct copy of Exhibit 54 to the
30(b)(6) deposition of

No objection.

No objection.

No objection.

No objection.

131

Public.Resource.Org, Inc.
46.
Attached as Exhibit 42 is a true
and correct copy of Exhibit 56 to the
30(b)(6) deposition of
Public.Resource.Org, Inc.
47.
Attached as Exhibit 43 is a true
and correct copy of Exhibit 76 to the
deposition of Carl Malamud.

FRE 402 Relevance. The exhibit is
an email between Carl Malamud
and Marshall Rose. Plaintiffs rely
on this email to claim that Mr.
Malamud “can’t win” a discussion
about the SDOs business model.
That is not what the email says. Mr.
Malamud is discussing his public
relations strategy. The statement is
not relevant to the economics of
operating a standards developing
organization.

The test for relevance is broad and encompasses
any evidence that “has any tendency to make a
fact more or less probable than it would be
without the evidence.” Fed. R. Evid. 401. Here,
Defendant has made a statement concerning his
impact on Plaintiffs’ business (or under
Defendant’s interpretation Mr. Malamud’s desire
to influence public perception of his impact on
Plaintiffs). Under either interpretation, this
evidence is relevant to the impact of Defendant’s
infringement and contradicts positions Defendant
has taken in this litigation.

FRE 403 Prejudice. Plaintiffs
misrepresent the statements in this
email in their Statement of Material
Facts ¶ 256. This exhibit, which is
about Mr. Malamud’s public
relations strategy, is confusing as to
the issue of the effect of Public
Resource’s activities on the market
for the incorporated standards at
issue.
No Objection.

As stated above, this information is relevant.
Defendant’s argument concerning prejudice
regards the way the document was characterized
– not the document – and therefore has no impact
on admissibility. Further, there is no real risk of
prejudice since this is a bench trial and the actual
document is attached for review here.

48.
Attached as Exhibit 44 is a true
and correct copy of Exhibit 70 to the
deposition of Carl Malamud.
49.
Attached as Exhibit 45 are true and Public Resource hereby preserves
correct copies of excerpts of the transcript the objections that its counsel made
132

of the 30(b)(6) deposition of Bruce Mullen at the time of the deposition.
on behalf of on the American Society for
Heating, Refrigerating and Air
Conditioning Engineers, which took place
on March 31, 2015.

DECLARATION OF JAMES
THOMAS IN SUPPORT OF
PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT
1.
I am over the age of 18 years and
am fully competent to testify to the
matters stated in this Declaration.
2.
This declaration is based on my
personal knowledge. If called to do so, I
would and could testify to the matters
stated herein.
3.
I am the President of ASTM
International ("ASTM"), which is a notfor profit organization headquartered in
Pennsylvania. I have worked at ASTM
since 1972.
4.
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

PUBLIC.RESOURCE.ORG’S
OBJECTIONS

No objection.

No objection.

No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

133

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he has been employed by
ASTM for 44 years. As paragraph 1 suggests,
Mr. Thomas has personal knowledge of ASTM’s
activities prior to 1972 as a result of the
performance of his duties over the past 44 years.

could be used in a national railroad.

5.
ASTM's activities have expanded
over the past one hundred years and
ASTM now develops standards that 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.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.
In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he has been employed by
ASTM for 44 years. As paragraph 1 suggests,
Mr. Thomas has personal knowledge of ASTM’s
activities prior to 1972 as a result of the
performance of his duties over the past 44 years.
At a minimum, Mr. Thomas has established
personal knowledge to assess these issues since
1972 (i.e. for 44 years).

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
No objection.

6.
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.
7.
An organization that develops
No objection.

134

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

standards is a "standards development
organization" or "SDO."
8.
In the United States, standards are
typically developed by private
organizations that have technical expertise
in the relevant area.

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he has been employed in
the standards development industry for at least 44
years. Mr. Thomas has also declared that he has
participated in numerous activities, committee
and panels with executives from other SDOs and
has been involved with ANSI activities since
1976 and has been on the ANSI Board of
Directors since approximately 1993. Thus, Mr.
Thomas is knowledgeable about many SDOs’
procedures for developing standards and how
standards are used. Thomas Supp. Decl. ¶¶ 4-6.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding the development
process for standards in the United States.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
9.
Standards are usually highly
technical and specialized, and are written
for audiences that have particular
expertise in the relevant fields.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he has been employed in

135

the standards development industry for at least 44
years. Mr. Thomas has also declared that he has
participated in numerous activities, committee
and panels with executives from other SDOs and
has been involved with ANSI activities since
1976 and has been on the ANSI Board of
Directors since approximately 1993. Thus, Mr.
Thomas is knowledgeable about many SDOs’
procedures for developing standards and how
standards are used. Thomas Supp. Decl. ¶¶ 4-6.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding the technical and
specialized nature of standards.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
10.
Standards are used by industry
actors as a form of self-regulation and as a
source of best practices.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he has been employed in
the standards development industry for at least 44
years. Mr. Thomas has also declared that he has
participated in numerous activities, committee
and panels with executives from other SDOs and
has been involved with ANSI activities since
1976 and has been on the ANSI Board of
Directors since approximately 1993. Thus, Mr.

136

Thomas is knowledgeable about many SDOs’
procedures for developing standards and how
standards are used. Thomas Supp. Decl. ¶¶ 4-6.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding the uses of
standards.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
11.
ASTM's 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.
12.
ASTM develops voluntary
consensus standards and is accredited by
the American National Standards Institute.
13.
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

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.
.

No objection.

No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

137

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is the President of

identified by a group of people in the
relevant sector that can be addressed with
a standard-based solution.

ASTM and has been employed in the standards
development industry for at least 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding why ASTM
develops standards.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

14.
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.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.
In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is the President of
ASTM and has been employed in the standards
development industry for at least 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding the use of ASTM
standards.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
15.
On occasion, government agencies
incorporate ASTM's standards by
reference into regulations. Approximately
10 percent of ASTM's standards are

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.

138

incorporated by reference into federal
regulations.

Thomas confirms that he is the President of
ASTM and has been employed in the standards
development industry for at least 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding the incorporation
of ASTM standards by government agencies,
including the federal government.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

16.
ASTM standards are not developed FRE 602 Lack of Personal
for the purpose of being incorporated into Knowledge. The witness has not
regulations.
established any personal knowledge
about this subject.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

139

It is unclear what portion of this paragraph is
allegedly expert opinion. The calculation of an
approximate percentage does not require special
expertise as it is a simple mathematical
calculation. When and if Defendant identifies
any specific testimony, Plaintiffs reserve the right
to respond to any identification.
In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is the President of
ASTM and has been employed in the standards
development industry for at least 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding why ASTM
develops standards.
It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

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

No objection.

Defendant offers no explanation as to how the
word “lobby” is vague or confusion or how this
statement could be unfairly prejudicial. In fact,
Defendant uses that word in its memorandum in
support of summary judgment. E.g., Dkt. 121-1
at 18 of 91. When and if Defendant identifies
any specific testimony, Plaintiffs reserve the right
to respond to any identification.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is the President of
ASTM and has been employed in the standards
development industry for at least 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding whether ASTM
engages in lobbying efforts.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
19.
Membership in ASTM costs $75
per year for an individual member and

FRE 403 Prejudice. This testimony
is so vague as to be confusing on
this issue, because the witness
provides no explanation for what he
means by “lobby.”

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

No objection.

140

$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.
20.
ASTM has kept its membership
fees at $75 for over fifteen years to permit
the widest participation possible 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.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is President of ASTM
has been employed by ASTM for 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding its membership
fees and why ASTM has not increased them.

RE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

21.
ASTM has over 140 technical
No objection.
committees made up of over 23,000
technical members representing producers,
users, consumers, government, and
academia from more than 150 countries.
22.
Each technical committee contains No objection.
a balanced voting membership, including
industry representatives, government
representatives, consumers, people with
particular expertise in the subject matter,
and others.
141

23.
Throughout the standards
development process, ASTM and its
committees make it clear that all
participants' contributions to any
particular standard will be merged into a
unitary standard.
24.
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.
25.
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.

No objection.

No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is President of ASTM
has been employed by ASTM for 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding its standards
development process. In fact, Defendant does
not object to paragraph 24 of the Thomas
declaration, which also describes the standards
development process at ASTM.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

142

26.
The technical contact is the leader
of the task group.
27.
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.

No objection.
In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is President of ASTM
has been employed by ASTM for 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding its standards
development process. In fact, Defendant does
not object to paragraph 24 of the Thomas
declaration, which also describes the standards
development process at ASTM.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
28.
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.
29.
Technical committees make
decisions about the appropriate content of
the standards, including the relevant
measurements, values, descriptions, and
other specifications, as well as the

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

No objection.

No objection.

143

language with which to express these
standards.
30.
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, and the American
Association of State Highway and
Transportation Officials. The content and
language of these SDO's standards differs
from the content of the corresponding
ASTM standards.
31.
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.
32.
ASTM has developed over 12,000
standards.
33.
All ASTM standards are required
to be reviewed on a 5 year schedule and
each standard is either reapproved, revised
or withdrawn. It takes approximately 8-12
months to complete a revision cycle.
34.
ASTM incurs substantial costs for
its standards development infrastructure
and delivery platforms, including the

No objection.

No objection.

No objection.
No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
144

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his

resources it provides to encourage
about this subject.
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.

personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is President of ASTM
has been employed by ASTM for 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding the finances of
ASTM.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
35.
In 2014, ASTM spent more than
$9 million to cover the cost of technical
committee operations and $19 million for
publication of copyrighted materials.
36.
ASTM develops its standards with
the understanding that the standards will
be protected by copyright, which provides
ASTM with the exclusive right to sell,
reproduce, display and create derivative
works based on the standards.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is President of ASTM
has been employed by ASTM for 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding ASTM’s
understanding regarding its belief regarding the
protection that will be accorded to its standards
and/or its exclusive right to sell the standards.

FRE 701 Unqualified Expert
Opinion. The witness has not been

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant

145

qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

38.
ASTM generates over two-thirds
of its revenue from the sale of copyrighted
materials.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is President of ASTM
has been employed by ASTM for 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding its reliance on
revenue from the sales from copyrighted
materials.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

37.
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.

identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is the President of
ASTM and has been employed in the standards
development industry for at least 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding the incorporation
of ASTM standards by government agencies,

146

including the federal government.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

39.
ASTM has devoted substantial
efforts to develop and promote the sale of
products and services that are related or
complementary to ASTM's standards.
ASTM does not generate substantial
income from these goods and services.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

It is unclear what portion of this paragraph is
allegedly expert opinion. The calculation of an
approximate percentage does not require special
expertise as it is a simple mathematical
calculation. When and if Defendant identifies
any specific testimony, Plaintiffs reserve the right
to respond to any identification.
In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is President of ASTM
has been employed by ASTM for 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding its efforts to
develop and sell related or complementary
products or the income derived from those
efforts.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
40.
ASTM generated a net loss of $3
million in 2014 for non-standards related
products and services.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is President of ASTM

147

has been employed by ASTM for 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding the profitability of
its non-standards related products and services.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
41.
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.
42.
ASTM does not consider the
likelihood and extent to which a standard
will generate revenues when deciding
whether to develop or maintain a standard.
43.
Sales of a limited number of
standards drive the bulk of ASTM’s
revenues. Because of their relevance to
smaller market audiences, many ASTM
standards generate very limited revenues,
which do not cover the costs of the
development process. The sales of the
best-selling standards effectively subsidize
the creation and maintenance of the
remaining standards.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

No objection.

No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

148

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is President of ASTM
has been employed by ASTM for 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding the significance of
the revenues that it derives from standards and/or

whether all standards derive revenues sufficient
to cover their costs of development.
FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
44.
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.
45.
When purchased individually, the
price per ASTM standard is $38-$89.
46.
The price of each ASTM new
individual standard is calculated based on
the number of pages in the standard.
47.
ASTM does not seek to obtain
higher prices for standards that have been
incorporated by reference.
48.
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.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

No objection.

No objection.
No objection.

No objection.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject. It appears to be a
generalization based on the
testimony that appears in ¶ 49.

149

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is President of ASTM
has been employed by ASTM for 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding its practice
regarding pricing for its standards when the
regular cost is a burden.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.
49.
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.
50.
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.
51.
ASTM identifies standards that
have been incorporated by reference into
federal regulations from the database
created by the National Institute of
Standards and Technology.
52.
ASTM publicizes the free readonly access provided on its website.
53.
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.

No objection.

No objection.

No objection.

No objection.
No objection.

150

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

54.
ASTM has not received any
complaints about lack of accessibility of
its standards other than from Defendant.

403 Prejudice. The witness has not
provided any foundation to believe
that ASTM would be expected to
receive complaints about the lack of
its standards if people were
dissatisfied or that ASTM tracks
complaints of that nature.

Defendant has not explained how this is unfairly
prejudicial. It is highly relevant to Defendant’s
arguments regarding access, Defendant’s
complaints about ASTM’s free reading room,
and Defendant’s complaint about the costs of
purchasing copies of the standards at issue from
ASTM. In fact, Defendant seeks to introduce
evidence of persons complaining about access to
standards even though those complaints are not
about ASTM standards. See Def. SUMF (Dkt.
121-2) ¶ 44.

FRE 602 Lack of Personal
Knowledge. The witness has not
established any personal knowledge
about this subject.

In paragraph 1 of his declaration, Mr. Thomas
confirms that this statement and all other
statements in his declaration are based on his
personal knowledge. In paragraph 3, Mr.
Thomas confirms that he is President of ASTM
has been employed by ASTM for 44 years.
Under these circumstances, there is no basis for
Defendant’s suggestion that Mr. Thomas lacks
personal knowledge regarding complaints
regarding access to ASTM standards.

FRE 701 Unqualified Expert
Opinion. The witness has not been
qualified as an expert and therefore
cannot testify as to facts beyond the
witness’s personal knowledge.

It is unclear what portion of this paragraph is
allegedly expert opinion. When and if Defendant
identifies any specific testimony, Plaintiffs
reserve the right to respond to any identification.

151

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
152

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

153