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

Filing 164

REPLY in support of motion re #163 SEALED MOTION FOR LEAVE TO FILE DOCUMENT UNDER SEAL filed by PUBLIC.RESOURCE.ORG, INC. (This document is SEALED and only available to authorized persons.), #120 SEALED MOTION FOR LEAVE TO FILE DOCUMENT UNDER SEAL filed by PUBLIC.RESOURCE.ORG, INC. (This document is SEALED and only available to authorized persons.) filed by PUBLIC.RESOURCE.ORG, INC.. (Attachments: #1 [Redacted] Declaration of Matthew Becker, #2 [Redacted] Consolidated List of Exhibits, #3 [Redacted] Response to Supplemental Statement of Facts, #4 [Redacted] Response to Statement of Disputed Facts, #5 Supplemental Objections to Evidence, #6 Response to Evidentiary Objections, #7 Supplemental Request for Judicial Notice, #8 Supplemental Declaration of Carl Malamud, #9 Exhibit 1, #10 Exhibit 2, #11 Exhibit 3, #12 Exhibit 4, #13 Exhibit 5, #14 Exhibit 6, #15 Exhibit [Redacted] 7, #16 Exhibit 8, #17 Exhibit 9, #18 Exhibit [Redacted] 10, #19 Exhibit [Redacted] 11, #20 Exhibit 12, #21 Exhibit 13, #22 Exhibit 14, #23 Exhibit 15, #24 Exhibit 16, #25 Exhibit 17)(Bridges, Andrew) Modified text on 2/5/2016 (ztd).

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-DAR
REPLY MEMORANDUM IN
SUPPORT OF DEFENDANTCOUNTERCLAIMANT
PUBLIC.RESOURCE.ORG’S
MOTION FOR SUMMARY
JUDGMENT
Action Filed: August 6, 2013

Plaintiffs/Counter-defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/Counterclaimant.

TABLE OF CONTENTS
Page
INTRODUCTION ...........................................................................................................................1
ARGUMENT ...................................................................................................................................2
I.

NEITHER CONGRESS NOR THE FOUNDERS INTENDED TO PROVIDE
A PRIVATE STATUTORY COPYRIGHT MONOPOLY IN LAW,
INCLUDING STANDARDS INCORPORATED BY REFERENCE INTO
LAW. ...................................................................................................................................2
A.

Congress Never Intended to Create A System of Privately Owned
Law. .........................................................................................................................2

B.

A System of Privately Owned Law Would Thwart the Purposes of
Copyright and Pit Copyright Against the First and Fifth Amendments. .................7

II.

PLAINTIFFS CANNOT PLAUSIBLY DENY THAT THE
INCORPORATED STANDARDS ARE PRIMARILY SYSTEMS AND
PROCEDURES..................................................................................................................11

III.

THE STANDARDS DEVELOPMENT PROCESS DOES NOT DEPEND ON
COPYRIGHT INCENTIVES. ...........................................................................................12

IV.

PUBLIC RESOURCE’S USE OF THE STANDARDS INCORPORATED
INTO LAW IS A FAIR USE. ............................................................................................13
A.

Expanding Access To The Law Is A Transformative Purpose And A
Favored Use Under The First Statutory Factor. .....................................................13
1.

Public Resource has a transformative purpose ..........................................14

2.

Public Resource makes legally incorporated standards
accessible to print-disabled persons; Plaintiffs do not ...............................15

3.

Public Resource’s use of legally incorporated standards is noncommercial. ................................................................................................17

B.

The Public Needs Free Access to Standards That Constitute Legal
Facts. ......................................................................................................................18

C.

The Amount Used By Public Resource Was Necessary and
Reasonable. ............................................................................................................18

D.

Plaintiffs’ Conjectures About Future Harm Do Not Undermine Fair
Use. ........................................................................................................................19

i

TABLE OF CONTENTS
(Continued)
Page
V.

PLAINTIFFS HAVE NOT PROVEN THAT THEY OWN THE
COPYRIGHTS FOR THE STANDARDS AT ISSUE. ....................................................21
A.
B.

Plaintiffs’ Registrations Are Not Due Any Presumption of Validity. ...................21

C.

Plaintiffs Are Not Joint Authors of the Standards .................................................22

D.

Plaintiffs’ Alleged “Assignments” Are Not Actual Assignments and
Do Not Transfer Ownership to Plaintiffs. ..............................................................24

E.
VI.

Ample Evidence Contradicts Plaintiffs’ Claim of Ownership. .............................21

Public Resource Has Standing to Challenge Plaintiffs’ Ownership. .....................26

PLAINTIFFS TRADEMARK CLAIMS ARE BARRED AS A MATTER OF
LAW. .................................................................................................................................27
A.

Plaintiffs’ Trademark Rights Cannot Protect Works in the Public
Domain. ..................................................................................................................27

B.

Plaintiffs Ignore Binding Supreme Court Precedent Limiting
Trademark Owners From Controlling Downstream Modifications of
Their Products. .......................................................................................................28

C.

Public Resource’s Use Is a Nominative Fair Use. .................................................29

D.

Plaintiffs Lack Evidence of Likely Consumer Confusion or Loss of
Goodwill. ...............................................................................................................30

CONCLUSION ..............................................................................................................................30

ii

TABLE OF AUTHORITIES
Page(s)
CASES 
*Aalmuhammed v. Lee,
202 F.3d 1227 (9th Cir. 2000) .................................................................................................23
Authors Guild v. Google,
804 F.3d 202 (2d Cir. 2015)...............................................................................................13, 19
Bandag, Inc. v. Al Bolser’s Tire Stores, Inc.,
750 F.2d 903 (Fed. Cir. 1984)..................................................................................................30
*Banks v. Manchester,
128 U.S. 244 (1988) ...................................................................................................................9
Bldg. Officials & Code Adm. v. Code Tech., Inc.,
628 F.2d 730 (1st Cir. 1980) ......................................................................................................9
Burk v. Johnson,
146 F. 209 (8th Cir. 1906) .......................................................................................................11
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1997) ...........................................................................................................18, 19
Capital Concepts, Inc. v. Mountain Corp.,
No. 3:11-CV-00036, 2012 WL 6761880 (W.D. Va. Dec. 30, 2012) .......................................25
CCC Info. Servs., Inc. v. McLean Hunter Mkt. Reports, Inc.,
44 F.3d 61 (2d Cir. 1994) ......................................................................................................3, 7
CFE Racing Prods., Inc. v. BMF Wheels, Inc.,
793 F.3d 571 (6th Cir. 2015) ...................................................................................................29
Champion Spark Plug Co. v. Sanders,
331 U.S. 125 (1947) .................................................................................................................29
Charles of the Ritz Group, Ltd. v. Quality King Distribs., Inc.,
832 F.2d 1317 (2d Cir. 1987)...................................................................................................29
Clark v. Martinez,
543 U.S. 371 (2005) ...................................................................................................................7
Cmty. for Creative Non-Violence, et al. v. Reid,
490 U.S. 730 (1989) .................................................................................................................21

iii

TABLE OF AUTHORITIES
(Continued)
Page(s)
Cmty. for Creative Non-violence v. Reid,
No. 86-1507, 1991 WL 415523 (D.D.C. Jan. 7, 1991) ............................................................23
*Community for Creative Non-violence v. Reid,
846 F.2d 1485 (D.C. Cir. 1988) ...............................................................................................23
Consumers Union of U.S., Inc. v. Gen. Signal Corp.,
724 F.2d 1044 (2d Cir. 1983)...................................................................................................18
Crocker et al. v. General Drafting Co., Inc.,
50 F. Supp. 634 (S.D.N.Y. 1943).............................................................................................25
*Dastar Corp. v. Twentieth Century Fox Film Corp.,
539 U.S. 23 (2003) ...................................................................................................................27
David’s Bridal, Inc. v. House of Brides, Inc.,
No. 06-5660, 2010 WL 323306 (D.N.J. Jan. 20, 2010) ...........................................................30
Dream Team Collectibles, Inc. v. NBA Properties, Inc.,
958 F. Supp. 1401 (E.D. Mo. 1997).........................................................................................28
Enesco Corp. v. Price/Costco Inc.,
146 F.3d 1083 (9th Cir. 1998) .................................................................................................28
*Entm’t Research Grp., Inc. v. Genesis Creative Grp., Inc.,
122 F.3d 1211 (9th Cir. 1997) .................................................................................................21
*Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340 (1991) ...........................................................................................................11, 12
Greene v. Dalton,
164 F.3d 671 (D.C. Cir. 1999) .................................................................................................13
Home Box Office, Inc. v. Showtime/The Movie Channel, Inc.,
832 F.2d 1311 (2d Cir. 1987)...................................................................................................29
Home Design Services, Inc. v. Hibiscus Homes of Florida, Inc.,
No. 603cv1860ORL19KRS, 2005 WL 3445522
(M.D. Fla. Dec. 14, 2005) ........................................................................................................25
Hustler Magazine, Inc. v. Moral Majority, Inc.,
796 F.2d 1148 (9th Cir. 1986) .................................................................................................19

iv

TABLE OF AUTHORITIES
(Continued)
Page(s)
*Int’l Code Council v. National Fire Prot. Assoc.,
No. 02 c 5610, 2006 WL 850879 (N.D. Ill. March 27, 2006) .................................................25
Int’l Kennel Club of Chicago, Inc. v. Mighty Star, Inc.,
846 F.2d 1079 (7th Cir. 1988) .................................................................................................29
Katz v. Google Inc.,
802 F.3d 1178 (11th Cir. 2015) ...............................................................................................19
Kepner-Tregoe, Inc. v. Carabio,
203 U.S.P.Q. 124 (E.D. Mich. 1979) .......................................................................................11
*Kern River Gas v. Coastal Corp,
899 F.2d 1458 (5th Cir. 1990) ...................................................................................................4
Landsberg v. Scrabble Crossword Game Players,
736 F.2d 485 (9th Cir. 1984) ...................................................................................................11
Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc.,
772 F.3d 591 (4th Cir. 2013) .......................................................................................24, 26, 27
Mifflin v. Dutton,
190 U.S. 265 (1903) .................................................................................................................24
Motion Picture Ass’n of America, Inc. v. F.C.C.,
309 F.3d 796 (D.C. Cir. 2002) ...................................................................................................5
MyWebGrocer, LLC v. Hometown Info, Inc.,
375 F.3d 190 (2d Cir. 2004).......................................................................................................3
Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc.,
166 F.3d 65 (2d Cir. 1999).......................................................................................................11
Online Policy Group v. Diebold,
337 F. Supp. 2d at 1195 (N.D. Cal. 2004) .........................................................................14, 19
Oracle Am. v. Google, Inc.,
750 F.3d 1339 (Fed. Cir. 2014)..................................................................................................3
Practice Mgmt. Info. Corp. v. Am. Med. Ass’n,
121 F.3d 516 (9th Cir. 1997) .................................................................................................3, 7
*Prestonettes, Inc. v. Coty,
264 U.S. 359 (1924) ...........................................................................................................28, 29
v

TABLE OF AUTHORITIES
(Continued)
Page(s)
Prunte v. Universal Music Grp.,
484 F. Supp. 2d 32 (D.D.C. 2007) ...........................................................................................27
R.W. Beck v. E3 Consulting,
577 F.3d 1133 (10th Cir. 2009) .................................................................................................3
Righthaven LLC v. Jama,
2:10–CV–1322 JCM LR, 2011 WL 1541613
(D. Nev. Apr. 22, 2011) .....................................................................................................14, 19
Shapiro & Son Bedspread Corp. v. Royal Mills Assocs.,
764 F.2d 69 (2d Cir. N.Y. 1985) ..............................................................................................24
Solid Waste Agency v. U.S. Army Corp,
531 US 159 (2001) .....................................................................................................................5
Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984) ...................................................................................................................7
Sturdza v. United Arab Emirates,
281 F.3d 1287 (D.C. Cir. 2002) ...............................................................................................11
*Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P.,
756 F.3d 73 (2d Cir. 2014).................................................................................................18, 19
Toyota Motor Sales, U.S.A., Inc. v. Tabari,
610 F.3d 1171 (9th Cir. 2010) .................................................................................................30
U.S. Jaycees v. Phil. Jaycees,
639 F.2d 134 (3d Cir. 1981).....................................................................................................29
United Fabrics Int’l, Inc. v. C&J Wear, Inc.,
630 F.3d 1255 (9th Cir. 2011) .................................................................................................26
United States v. Myers,
553 F.3d 328 (4th Cir. 2009) .................................................................................................2, 7
*Veeck v. S. Bldg. Code Cong. Int’l, Inc.,
293 F.3d 791 (5th Cir. 2002) .....................................................................................3, 9, 10, 15
Veeck v. S. Bldg. Code Cong. Int’l, Inc.,
49 F. Supp. 2d 885 (E.D. Tex. 1999) ............................................................................... passim

vi

TABLE OF AUTHORITIES
(Continued)
Page(s)
Warren Publishing Co. v. Spurlock d/b/a Vanguard Productions,
645 F. Supp. 2d 402 (E.D. Pa. 2009) .......................................................................................19
*Wheaton v. Peters,
33 U.S. 591 (1888) .....................................................................................................................9
Whitehead v. CBS/Viacom, Inc.,
315 F. Supp. 2d 1 (D.D.C. 2004) .............................................................................................27
STATUTES
36 C.F.R. § 1194.22 .................................................................................................................15, 16
5 U.S.C. § 552(a) .............................................................................................................................6
17 U.S.C. § 101 ........................................................................................................................22, 23
17 U.S.C. § 102 ("Copyright Act") ........................................................................................ passim
17 U.S.C. § 102(b) .................................................................................................................2, 3, 10
17 U.S.C. § 105 ................................................................................................................................4
17 U.S.C. § 121 ..............................................................................................................................16
H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. (1976) ......................................................................4
H.R. Rep. No. 94–1476, at 73 (1976), 1976 U.S.C.C.A.N. 5659 ..................................................16
H. R. Rep. No. 104–3802, 104th Cong., 2d Sess., at 1 (1996) ........................................................6
N.Y. Comp. Codes R. & Regs. tit. 11, § 216.7(c)(1)(i) (1999) .......................................................7
Pub. L. No. 60-349, 35 Stat. 1075 (1909), Sec. 9 ..........................................................................24
Pub L. No 104-231 § 4(7), 110 Stat 3048 ........................................................................................5
Pub. Law. 104-113 Mar. 7, 1996 (H.R. 2196) 110 Stat. 775
("National Technology Transfer and Advancement Act") ....................................................4, 5
RULES
Fed. R. Civ. P. 30(b)(6)..................................................................................................................21

vii

TABLE OF AUTHORITIES
(Continued)
Page(s)
OTHER AUTHORITIES
4 Nimmer on Copyright § 14.06[C][1][a]......................................................................................11
AIM Commission Report at 49;
http://www2.ed.gov/about/bdscomm/list/aim/meeting/aim-report.pdf ...................................16
Browse Publications, The U.S. Government Publishing Office (accessed
Feb. 2, 2016), https://www.gpo.gov/fdsys/browse/collectiontab.action....................................5
Holdren, John P., Memorandum for the Heads of Executive Departments and
Agencies from the Executive Office of the President, Office of Science and
Technology Policy: Increasing Access to the Results of Federally Funded
Scientific Research (Feb. 22, 2013), available at
https://www.whitehouse.gov/sites/default/files/microsites/ostp/ostp_public_ac
cess_memo_2013.pdf.................................................................................................................6
https://www.whitehouse.gov/sites/default/files/omb/inforeg/revised_circular_a119_as_of_1_22.pdf...................................................................................................................5
“Law,” Oxford English Dictionary,
https://www.oxford.com/us/definition/american_english/law...................................................2
McIntire, Mike, “Conservative Nonprofit Acts as a Stealth Business Lobbyist,”
N.Y. Times (Apr. 22, 2012), available at
http://www.nytimes.com/2012/04/22/us/alec-a-tax-exempt-group-mixeslegislators-and-lobbyists.html ....................................................................................................9
Oil Suit Dismissed in Supreme Court,
N.Y. Times (Oct 2, 1934) ......................................................................................................8, 9
Public Safety Standards – United States (Federal Government),
Public.Resource.Org (accessed Feb. 3, 2016),
https://law.resource.org/pub/us/cfr/manifest.us.html .................................................................1
Registry of Activities of Public.Resource.Org (2015-2016): 2. Comments on
Notices of Proposed Rulemaking, Public.Resource.Org (Feb. 2, 2016),
https://public.resource.org/pro.docket.2015.html#s2.................................................................1
Scalia, Antonin, The Rule of Law as a Law of Rules,
56 U. Chi. L. Rev. 1175, 1179 (1989) .......................................................................................8

viii

TABLE OF AUTHORITIES
(Continued)
Page(s)
Seidenfeld, Mark , A Big Picture Approach to Presidential Influence on Agency
Policy-making,
80 Iowa L. Rev. 1, 9-10 (1994) ..................................................................................................8
Short, Jodi L., The Political Turn in American Administrative Law: Power,
Rationality, and Reasons, 61 Duke L.J. 1811, 1821 (2012) ......................................................8
U.S. Copyright Office, Compendium of Copyright Office Practices
§ 313.6(c)(2) (3d ed. 2014) ........................................................................................................6
Webster’s Third New International Dictionary of the English Language at 2322
(Merriam-Webster 2002) .........................................................................................................11

ix

INTRODUCTION
To state the obvious, this is not an ordinary copyright case. The public has core due
process and First Amendment rights to access, to know, and to share the law, without financial or
practical barriers, or its consent to be governed by that law cannot be meaningful. A copyright in
the law runs afoul of those rights, because it necessarily gives the rights-holder the ability to
charge for, impede, and even cut off access to the law. There is no way to square the circle:
either the law is outside of copyright, owned by no one and accessible to all; or it is not, and
those who own it can decide who will access it, and on what terms.
Judicial opinions, the Copyright Office, and the Copyright Act itself support the correct
view that the law is outside of copyright. But Plaintiffs insist that there is an exception: standards
that lawmakers have incorporated into the law by reference. Standards incorporated into law by
reference cover nearly every aspect of government power and societal activity, including the
safety of buildings, highways, vehicles, gas pipelines, oil drilling, garage doors, food and
drinking water, children's cribs, and toys; energy efficiency requirements; the accessibility to
technology for people with disabilities; and much more.1 If Plaintiffs are correct, the public (or at
least the part of the public that can’t afford to pay for reasonable access) can be subjected to
these rules, and to penalties including imprisonment, but cannot have free and unfettered access
to the contents of those rules. And the public must buy access to law in order to hold others,
including government officials, accountable to those rules.
But Plaintiffs are not correct. Plaintiffs cannot seriously dispute that the standards at issue
have the force and effect of law. See United States v. Myers, 553 F.3d 328, 331 (4th Cir. 2009).
1

Public Safety Standards – United States (Federal Government), Public.Resource.Org (accessed
Feb. 3, 2016), https://law.resource.org/pub/us/cfr/manifest.us.html; Registry of Activities of
Public.Resource.Org (2015-2016): 2. Comments on Notices of Proposed Rulemaking,
Public.Resource.Org (Feb. 2, 2016), https://public.resource.org/pro.docket.2015.html#s2.
1

They are law. Neither the Constitution nor the Copyright Act tolerates private control over
access to them.
The Court should grant summary judgment to Public Resource.
ARGUMENT
I.

NEITHER CONGRESS NOR THE FOUNDERS INTENDED TO CREATE
STATUTORY MONOPOLY IN LAW.
Plaintiffs’ Opposition largely restates the arguments in their opening brief. Public

Resource has explained why those claims are wrong in its opposition brief and will not belabor
them here. But Public Resource must correct Plaintiffs’ mischaracterization of the central issue
of this case. The fundamental question is not “whether Congress has said the Works are not
copyrightable,” Pls. Opp. 10, even though, as explained below, Congress has done just that. The
fundamental question is whether copyright law, consistent with the Constitution, permits a
private entity to own the law and control access to it. The answer to that question is “no.”
A.

Congress Never Intended to Create A System of Privately Owned Law.

Congress has codified the principle that law is not subject to copyright protection in
several ways. First, Section 102(b) of the Copyright Act precludes copyright for “any idea,
procedure, process, system, method of operation, concept, principle, or discovery, regardless of
the form in which it is described, explained, illustrated, or embodied in such work.” Law is a
“system of rules that a particular country or community recognizes as regulating the actions of its
members and may enforce by the imposition of penalties.”2 As a system, the law is outside the
scope of copyright pursuant to the Copyright Act itself.

2

See “Law,” Oxford English Dictionary, https://www.oxforddictionaries.com/us/definition/
american_english/law.
2

Section 102(b) helps ensure that “courts do not unwittingly grant protection to an idea by
granting exclusive rights in the only, or one of only a few, means of expressing that idea.”
R.W. Beck v. E3 Consulting, 577 F.3d 1133, 1145 (10th Cir. 2009) (citation omitted). The only
way to express codified laws, or law that is incorporated by reference from other sources, is to
use the language of the law itself. Once incorporated in to law, standards become “the unique,
unalterable expression of the ‘idea’ that constitutes local law.” Veeck v. S. Bldg. Code Cong.
Int’l, Inc., 293 F.3d 791, 801 (5th Cir. 2002). Under Section 102(b), they cannot be subject to
copyright restrictions. There was no need for Congress to make special provision for law in
Section 102(b) since the law falls squarely in the existing categories of things that Section 102(b)
declares outside the scope of copyright.
Plaintiffs try to avoid the closely related merger doctrine – the principle that an idea and
its expression may be so closely related that they must be deemed to have effectively “merged” –
by insisting that merger cannot apply after the initial point of creation. But Plaintiffs find little
judicial support for that position, much less a sensible rationale where, as here, an intervening act
of lawmaking transforms the text of a standard into a legal fact and its incorporation a political
fact. Pls. Opp. 8. For the most part Plaintiffs’ cases state only that mere reference in a statute or
regulation, or a document becoming an “industry standard,” do not cause a merger. See Oracle
Am. v. Google, Inc., 750 F.3d 1339, 1372 (Fed. Cir. 2014); Practice Mgmt. Info. Corp. v. Am.
Med. Ass’n, 121 F.3d 516, 520 n.8 (9th Cir. 1997); CCC Info. Servs., Inc. v. McLean Hunter Mkt.
Reports, Inc., 44 F.3d 61, 73 (2d Cir. 1994). And contrary to Plaintiffs’ claim, Pls. Opp. 8,
MyWebGrocer, LLC v. Hometown Info, Inc., 375 F.3d 190, 194 (2d Cir. 2004), does not hold
that merger can only be analyzed at the point of creation. MyWebGrocer does indeed apply a
merger analysis to initial expression, but it had nothing to say about whether such an analysis at a

3

later stage would be appropriate where, as here, a standard is transformed into something more
than a private standard: it has become law. Plaintiffs may not agree with the Veeck holding, but
it is the only case that squarely addresses the facts at hand.
Plaintiffs also misrepresent Kern River Gas v. Coastal Corp, 899 F.2d 1458 (5th Cir.
1990), suggesting that a regulatory commission’s approval of the pipeline route that was
reproduced in a later proposal had nothing to do with the merger analysis. Pls. Opp. 9. In fact, as
the court found, “[s]taff approval was significant because any proposed pipeline constructed
within the mile-wide corridor would require no further environmental study, whereas any route
falling outside the corridor would be subject to further inquiry. . . To extend copyright protection
to the quad maps would grant Kern River a monopoly over the only approved pipeline route.” Id.
at 1460, 1465 (emphasis added)
Moreover, as Public Resource explained in its earlier briefing, section 105 of the
Copyright Act, 17 U.S.C. § 105, denies copyright for any work of the U.S. Government. A law
drafted by a lobbyist, passed by Congress, and signed by the President becomes a U.S.
Government work, as does a regulation that an agency enacts by incorporating by reference a
pre-existing standard. Although Plaintiffs quote legislative history of the 1976 Act to the effect
that works “commissioned” by the Government may not be government works, that history
concerned “Government research contracts and the like.” H.R. Rep. No. 94-1476, 94th Cong., 2d
Sess., at 59 (1976). Nothing suggests that members of Congress who wrote that analysis meant to
exclude laws and regulations from § 105.
Plaintiffs find no more support in the collection of non-statutory authorities upon which
they rely. Pls. Opp. 11–13. Neither the text nor legislative history of the National Technology
Transfer and Advancement Act speak to the issue of copyright in standards after they have been

4

transformed into law through incorporation by reference. Congress could have opined on the
matter in the NTTAA, but it did not, and that absence is telling.
Likewise, OMB Circular A-119 does not purport to determine the copyright status of
standards incorporated by reference.3 And while the Office of the Federal Register declined to
“require[] that all materials [incorporated by reference] into the CFR be available for free,” it did
not purport to bar organizations like Public Resource from doing so as a public service.
Moreover, neither the Office of Management and Budget nor the Office of the Federal
Register has the responsibility or authority of determining whether something is copyrightable or
not. See Motion Picture Ass’n of America, Inc. v. F.C.C., 309 F.3d 796, 801 (D.C. Cir. 2002) (an
agency’s statutory interpretation is not entitled to deference absent a delegation of authority from
Congress to regulate in the area at issue). Any agency interpretation that raises constitutional
concerns, as this one does, must be clearly authorized by Congress. Solid Waste Agency v. U.S.
Army Corp, 531 US 159, 172 (2001).
Moreover, for decades federal policy and practice have tended to favor more access, not
less, to laws and governmental facts. Courts, Congress, and the executive branch have
consistently underscored the importance of improving access to all kinds of government
activities because they are facts that the public is entitled to access and communicate. Court
documents – including briefs by private parties in litigation – are available on PACER, and there
is no charge to access judicial opinions. The U.S. Code and the CFR are freely available online.4
In 1996, Congress passed the Electronic Freedom of Information Act Amendments in order to
“foster democracy by ensuring public access to agency records and information.” Pub L. No 1043

https://www.whitehouse.gov/sites/default/files/omb/inforeg/revised_circular_a119_as_of_1_22.pdf.
4

See Browse Publications, The U.S. Government Publishing Office (accessed Feb. 2, 2016),
https://www.gpo.gov/fdsys/browse/collectiontab.action.
5

231 § 4(7), 110 Stat 3048. Six years later, it passed the e-Government Act, requiring agencies to
create electronic rulemaking dockets, in order to increase “access, accountability and
transparency” and “enhance public participation in Government.” H. R. Rep. No. 104–3802,
104th Cong., 2d Sess., at 1 (1996). In February 2013, the White House Office of Science and
Technology Policy announced a policy requiring agencies to make the fruits of federally funded
research available within twelve months of publication, including ensuring that “the public can
read, download, and analyze in digital form final peer-reviewed manuscripts or final published
documents within a timeframe that is appropriate for each type of research conducted or
sponsored by the agency.”5
Meanwhile, the Copyright Office, which, unlike the OMB and OFR, is charged with
administering copyright law, has stated explicitly that edicts of government cannot be registered
as copyrighted works. U.S. Copyright Office, Compendium of Copyright Office Practices
§ 313.6(c)(2) (3d ed. 2014). That the Copyright Office registers standards is immaterial: when
they are registered, they are presumably not yet incorporated into law.
Plaintiffs’ insistence that the legally incorporated standards at issue here are not edicts of
government is nonsense. Pls. Opp. 13. The only distinction between an incorporated standard
and any other statute or regulation is the process by which it enters into force, namely
incorporation by reference. Once incorporated into law, standards are “deemed published in the
Federal Register” and have the same legal effect as any other law or regulation. 5

5

John P. Holdren, Memorandum for the Heads of Executive Departments and Agencies from the
Executive Office of the President, Office of Science and Technology Policy: Increasing Access
to the Results of Federally Funded Scientific Research (Feb. 22, 2013), available at
https://www.whitehouse.gov/sites/default/files/microsites/ostp/ostp_public_access_memo_2013.
pdf.
6

U.S.C. § 552(a); see Myers, 553 F.3d at 331 (material incorporated by reference has the same
force of law as the incorporating regulation itself).
Plaintiffs’ attempt to distinguish Veeck on the same ground fails. The building codes at
issue in that case were enacted as laws in the same manner as the standards at issue here: “by
reference.” Veeck v. S. Bldg. Code Cong. Int’l, Inc., 49 F. Supp. 2d 885, 887 (E.D. Tex. 1999).
When the Fifth Circuit distinguished the building codes at issue in Veeck from “references to
extrinsic standards,” the court was differentiating the “wholesale adoption” of formerly private
standards into law from external documents merely referred to in regulations, as in CCC and
Practice Management, Veeck, 293 F.3d at 803. Contrary to the regulations at issue in Veeck and
this case, those at issue in CCC merely stated “[m]anuals approved for use are . . . The
Redbook. . . .,” without any mention of incorporation. N.Y. Comp. Codes R. & Regs. tit. 11,
§ 216.7(c)(1)(i) (1999). A government agency’s explicit intent, or lack thereof, to transform a
private document into a law is what distinguishes these cases, not the manner in which that intent
is effectuated.
B.

A System of Privately Owned Law Would Thwart the Purposes of Copyright
and Pit Copyright Against the First and Fifth Amendments.

Public Resource believes that the Copyright Act is clear in excluding law from its scope.
To the extent there is any ambiguity in the Copyright Act, however, constitutional avoidance
favors an interpretation that best reconciles the statute with the Constitution. See Clark v.
Martinez, 543 U.S. 371, 380–381 (2005). Public Resource’s interpretation reconciles the
Copyright Act with the Constitution; Plaintiffs’ interpretation does not. Allowing a copyright
interest in laws, with all of the exclusive private power to suppress and control dissemination that
copyright entails, would run contrary to the very purposes of copyright. See Sony Corp. of Am. v.
Universal City Studios, Inc., 464 U.S. 417, 429 (1984). Recognizing that texts of the law

7

embodies ideas, expressible in only one accurate and authoritative way (just as the Constitution
is expressible only in one way), respects both the Copyright Act and the Constitution.
“Rudimentary justice requires that those subject to the law must have a means of
knowing what it prescribes.” Antonin Scalia, The Rule of Law as a Law of Rules, 56 U. Chi. L.
Rev. 1175, 1179 (1989). There are at least two reasons for this. The first and most familiar one is
simple notice: anyone subject to a law, including administrative rules, must be able to know his
obligations. Indeed, one of the principal events leading to the Federal Register Act was a
government action to enforce an administrative oil quota rule that, it turned out, did not exist. See
Oil Suit Dismissed in Supreme Court, N.Y. Times Oct 2, 1934, at 6. Further, anyone affected by
a law, such as a person who lives near a pipeline, or a parent choosing a car seat, must have free
access to the standards for evaluating their safety if they wish so they can make informed
decisions and understand the regulatory framework that lawmakers have constructed.
The other reason for the public to know the law is accountability. For citizens to
participate in a democracy, from the electoral process to discussions of public affairs, they must
be able to learn what the government is up to. Indeed, that right is especially important when it
comes to standards. The public cannot blindly rely on the federal or state agencies that adopt
private standards into law to ensure that those standards serve the public interest. Therefore, as in
every other area of law, the public must have the ability to do that work itself and register
concerns with the legislatures that can provide a check on those agencies’ actions. See Jodi L.
Short, The Political Turn in American Administrative Law: Power, Rationality, and Reasons, 61
Duke L.J. 1811, 1821 (2012); Mark Seidenfeld, A Big Picture Approach to Presidential
Influence on Agency Policy-making, 80 Iowa L. Rev. 1, 9-10 (1994).

8

As the First Circuit observed, the public has an “essential due process right of free access
to the law”—not just judicial opinions, and not just law that has been “paid for” by taxpayers.6
Bldg. Officials & Code Adm. v. Code Tech., Inc., 628 F.2d 730, 736 (1st Cir. 1980). Copyright
restrictions on the law necessarily impede that access. That fundamental contradiction animates
the Supreme Court’s ruling in Banks v. Manchester, 128 U.S. 244 (1988), which did not, as
Plaintiffs cynically suggest, turn primarily on the fact that judges are paid by taxpayers. Instead,
the Court held that judicial opinions are free of copyright restrictions because “the authentic
exposition and interpretation of the law which, binding on every citizen, is free for publication to
all, whether it is a declaration of unwritten law, or an interpretation of a statute.” Id. at 253
(emphasis added).
That principle is also integral to the Fifth Circuit’s opinion in Veeck. The court quoted, at
length, the briefing in Wheaton v. Peters, in which counsel for both sides offered some of the
earliest thinking in the U.S. on just this issue. 33 U.S. 591 (1888). Wheaton’s own counsel
conceded that “statutes could never be copyrighted” because they were enacted by legislatures.
Veeck, 293 F.3d at 795 n.3. Peters’ counsel, for his part, observed that “[i]t is . . . the true policy,
influenced by the essential spirit of government, that laws of every description should be
universally diffused. To fetter or restrain their dissemination must be to counteract this policy; to
limit, or even to regulate it would, in fact, produce the same effect. If either statutes or decisions
could be made private property, it would be in the power of an individual to shout out the light
be which we guide our actions.” Id.

6

While tax dollars may pay Congressional salaries for lawmakers to pass laws, private dollars
often pay lobbyists and influential organizations (including nonprofit organizations) to author
those laws. See Mike McIntire, “Conservative Nonprofit Acts as a Stealth Business Lobbyist,”
N.Y. Times at A1 (Apr. 22, 2012), available at http://www.nytimes.com/2012/04/22/us/alec-atax-exempt-group-mixes-legislators-and-lobbyists.html.
9

Allowing organizations to own exclusive rights to the law, through the guise of
copyright, would necessarily mean that those copyright claimants could dictate the terms of
public access to the law, without care for those due process rights. As ten states noted in an
amicus brief filed in support of Peter Veeck, one of the cornerstones of copyright is the ability to
refuse to publish the law at all or, as we have seen in this case, to limit access and give
preferential access to friends. Brief of Amicus Curiae State of Ohio and Ten Other States and
Territories 14-16, Veeck, 293 F.3d 791 (SSMF ¶ 1, M. Becker Supp. Decl. ¶ 6, Ex. 5); SMF
¶¶ 45–50. In practice, access limitations systematically exclude those with budgetary constraints
from holding both agencies and the entities they regulate accountable for the rules the agencies
adopt and from studying those rules closely in order to comply with them. Even a small fee is a
charge to participate in civic affairs, analogous to a poll tax. Contract-of-adhesion requirements
for the public to access a restricted and downgraded online reading room that Plaintiffs offer
exact a similar toll, requiring the public to trade away personal information and legal rights
(consenting to venue and waiving certain rights, for example, SMF¶¶ 54–57), in order to exercise
the right to know the law. What is worse, Plaintiffs cannot dispute their reading rooms exclude
visually-challenged people – again, placing an unfair burden on the ability of hundreds of
thousands of citizens to know the law to which they are subject.
“Copyright, while authorized by the Constitution, is essentially a statutory right. On the
other hand, due process is a constitutional right of the first order.” States’ Amicus at 4 (SSMF ¶
1, M. Becker Supp. Decl. ¶ 6, Ex. 5). If Congress has intended to create a system of privately
owned public law, which it did not, such a system could not pass constitutional muster.
Plaintiffs’ own actions confirm that it would place an impermissible burden on a fundamental
Constitutional right. Properly interpreting Section 102(b), and the related merger doctrine, as

10

applying to laws, including standards transformed into law through incorporation by reference,
avoids that Constitutional tension altogether.
II.

PLAINTIFFS CANNOT PLAUSIBLY DENY THAT THE INCORPORATED
STANDARDS ARE PRIMARILY SYSTEMS AND PROCEDURES.
Webster’s Dictionary defines a “system” as “a complex unity formed of many often

diverse parts subject to a common plan or serving a common purpose.” Webster’s Third New
International Dictionary of the English Language at 2322 (Merriam-Webster 2002). As explained
in Public Resource’s opening brief, the standards at issue are just that: a complex unity of diverse
procedures serving a common purpose of promoting public health and safety. Like teaching
methods, strategies for playing games, and mathematical formulas, they may be complex and
thoughtfully arranged, but they are not copyrightable under 102(b). See Burk v. Johnson, 146 F.
209 (8th Cir. 1906); Kepner-Tregoe, Inc. v. Carabio, 203 U.S.P.Q. 124, (E.D. Mich. 1979);
Landsberg v. Scrabble Crossword Game Players, 736 F.2d 485 (9th Cir. 1984).
Plaintiffs cannot seriously dispute that fact, so they focus instead on insisting that some
aspect of the standards must be creative. Pls. Opp. 6. But Plaintiffs have challenged, and seek an
injunction against, Public Resource’s posting of the standards at issue. A claim of infringement,
and any relief, must be confined to the use of copyrightable expression. “To prevail on a
copyright claim, a plaintiff must prove both ownership of a valid copyright and that the
defendant copied original or ‘protectable’ aspects of the copyrighted work.” Sturdza v. United
Arab Emirates, 281 F.3d 1287, 1295 (D.C. Cir. 2002) (citing Feist Publ’ns, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340, 348, 361 (1991)). “The scope of [an] injunction . . . should generally be
no broader than the infringement; courts should modify injunctions that impinge on noncopyrightable expression.” 4 Nimmer on Copyright § 14.06[C][1][a] (citations omitted). See also
Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d 65, 75 (2d Cir. 1999).

11

As the Supreme Court explained: “the first person to find and report a particular fact has
not created the fact; he or she has merely discovered its existence.” Feist, 499 U.S. at 347. The
standards at issue here summarize of the “discoveries” of thousands of volunteers and
government employees who, through experience and research, have determined the optimal
principles, practices, and procedures for testing. Those discoveries are no doubt valuable. But
together they constitute systems that are not copyrightable. For example, ASHRAE standards
take the form of specific requirements that “provide methods of testing equipment so that the
equipment can be measured [and] compared with similar levels of performance.” SSMF ¶ 2.
ASTM standards are “[s]pecifications, test methods, practices, guides, classifications and
terminology.” SSMF ¶ 3. An NFPA standard provides a “consistent process” for fire
investigation. SSMF¶ 4.
III.

THE STANDARDS DEVELOPMENT PROCESS DOES NOT DEPEND ON
COPYRIGHT INCENTIVES.
Plaintiffs continue to complain that depriving them of a statutory monopoly in the law

will undermine their standards-development work. As Public Resource and the Fifth Circuit have
already explained, the Court should discount that because incentives and rewards already exist
for Plaintiffs (and the thousands of volunteers who actually draft the standards). See Veeck, 293
F.3d at 806; P.R.O. Mem. 28-29. Plaintiffs’ only response is a set of self-serving assertions and
an “expert” opinion based on nothing more than those assertions. See Pls. Opp. 17-18; see also
Motion to Strike Jarosz Report (Dkt. No. 123).
Plaintiffs’ own actions give the lie to their argument. After the Veeck decision, plaintiffs
and many other SDOs filed briefs seeking Supreme Court review. In those briefs, they insisted,
at length, that if that decision stood it would destroy the standards development process; that is
precisely the argument they advance here. SSMF ¶ 5. Nonetheless, a decade later, Veeck still

12

stands. The standards development process is alive and well. Plaintiffs’ purported fears are not
credible. See Greene v. Dalton, 164 F.3d 671, 675 (D.C. Cir. 1999) (non-moving party’s
conclusory statements need not be taken as true for summary judgment purposes).
IV.

PUBLIC RESOURCE’S USE OF THE STANDARDS INCORPORATED INTO
LAW IS A FAIR USE.
In addition to the due process concerns outline above, Plaintiffs’ approach creates an

unnecessary tension between the Copyright Act and the First Amendment. As explained in
Public Resource’s opening brief, the right to share the law is fundamental to free speech on
matters of public import. Plaintiffs claim a right to restrain that speech.
As the Supreme Court has recognized, tensions like these are often resolved by operation
of the fair use doctrine. That is precisely the case here. Public Resource’s posting of legally
incorporated standards is a fair use according to every factor of the statutory analysis. Public
Resource enhances public access to factual materials of the utmost public concern in a field
where the need for copyright-based incentives for creation is at its weakest. Even if the Court
were to find, contrary to precedent and due process, that Plaintiffs can hold copyright in portions
of binding state and federal law, it should still find that Public Resource’s posting of legally
incorporated standards is a fair use.
A.

Expanding Access To The Law Is A Transformative Purpose And A Favored
Use Under The First Statutory Factor.

The first factor favors fair use when the use in question “communicates something new
and different from the original or expands its utility, thus serving copyright’s overall goal of
contributing to public knowledge.” Authors Guild v. Google, 804 F.3d 202, 214 (2d Cir. 2015)
(emphasis added). Undisputed evidence shows that Public Resource expands the utility of legally
incorporated standards. See P.R.O. Mem. 37-40.

13

1.

Public Resource has a transformative purpose.

The Plaintiffs emphasize that they have created “voluntary consensus standards” to serve
as “best practices” that may inform a variety of professionals, companies, and officials. They
suggest that incorporation by reference, and enforceability of those standards as laws, was not
their goal. Even taking that statement at face value, it remains undisputed that Public Resource’s
purpose is different from Plaintiffs’.
Public Resource’s purpose is in providing wide public access to law, and only to
standards that have become enforceable law. That is a transformative purpose when compared to
the Plaintiffs’ purposes in creating private voluntary standards, whether the transformation
occurs through Public Resource’s action or through the governmental actions that turned those
private standards into enforceable public laws. Public Resource’s public communications, and
Mr. Malamud’s testimony, evoke no goal other than expanding access to legally incorporated
standards as laws. Public Resource did not refer to its website as an “alternative” to Plaintiffs’
websites. And to the extent Public Resource’s communications, such as the explanatory text of
its unsuccessful Kickstarter fundraising campaign, implicitly “encourage[] members of the
public to download standards from its website,” Pls. Opp. 21, the single pervasive theme of those
communications and that encouragement was that “we should all have the right to read, know,
and speak the law.” Rubel Decl. Ex. 31 (Dkt. No. 118-12).
Several courts have found that posting material on the Internet to educate the public on a
matter of great public concern is a transformative purpose. See Online Policy Grp. v. Diebold,
337 F. Supp. 2d 1195, 1203 (N.D. Cal. 2004) (integrity of state elections); Righthaven LLC v.
Jama, 2:10–CV–1322 JCM LR, 2011 WL 1541613, at *3 (D. Nev. Apr. 22, 2011) (alleged
police misconduct). That someone could theoretically make further copies of the works in
question and use them for other purposes, creating a “market substitute,” did not defeat fair use
14

in these cases. Even the dissenting opinions in Veeck, on which Plaintiffs rely, relied in turn on
the assumption “that the copyright doctrines of fair use and implied license or waiver are more
than adequate to preserve the ability of residents and construction industry participants to copy
any portions of the code that they want or need to view.” 293 F.3d at 817; see also id. at 807.
2.

Public Resource makes legally incorporated standards accessible to
print-disabled persons; Plaintiffs do not.

Public Resource alone makes legally incorporated standards accessible to persons with
print disabilities in a way that complies with federal law and widely recognized best practices.
This public service is one of the canonical examples of a purpose that favors a finding of fair use,
and it explains the care and expense that Public Resource has invested in reformatting standards
incorporated by reference. Plaintiffs, by contrast, do not seem to take seriously the exclusion of
persons with disabilities from access to the laws they claim to control. They have been aware of
Public Resource’s service to the disability community for years, but have apparently done
nothing (and intend to do nothing) to provide a comparable service.
The Internet is fast becoming the primary means of obtaining information about
government operations and policies. SSMF ¶ 6. And federal regulations under the Rehabilitation
Act require the information on government websites to be presented in accessible format.
36 C.F.R. § 1194.22. The primary requirement of these regulations is that “[a] text equivalent for
every non-text element shall be provided.” Id., § 1194.22(a).
Moreover, accessibility best practices follow the principle of universal design, which
states that the best accommodations for people with disabilities are those that benefit everyone:
When accessible features are built into web pages, websites are more convenient
and more available to everyone—including users with disabilities. Web designers
can follow techniques developed by private and government organizations to
make even complex web pages usable by everyone including people with
disabilities.

15

SSMF ¶ 6. Public Resource follows those best practices, making legally incorporated standards
available in formats that meet the federal requirements for accessibility, including non-text
elements such as diagrams. SMF ¶ 84, 91–92; see 36 C.F.R. § 1194.22. Thus, Public Resource’s
work makes the law more accessible, not only to people with a diagnosed disability such as
blindness, but also to those with mobility issues or low vision, without having to expose
themselves as disabled or seek out special accommodations. SMF ¶ 91.
That work continues to be essential. Standards incorporated by reference are not available
through government agency websites, and Plaintiffs’ websites do not meet legal or practical
standards for accessibility. SMF ¶ 92; see 36 C.F.R. § 1194.22. Plaintiffs, for their part, assert
that “they are well within their rights to design their sites this way,” Pls. Opp. 20. They suggest
that people who need accommodations to view federal regulations should identify contact
information for the correct standards development organization, contact the organization, and
disclose their qualifying medical information in order to request such an accommodation. Pls.
Opp. 23-24; Pls. SSMF ¶¶ 8-12. As a special commission of the Department of Education
concluded in the analogous field of accessibility for higher education, this type of approach is
disfavored. “Rather, the ideal is for . . . instructional materials to be available in accessible forms
in the same manner that and at the same time as traditional materials.”7
The drafters of the 1976 Copyright Act identified accessibility for those with disabilities
as a “special instance illustrating the application of the fair use doctrine.” H.R. Rep. No. 94–
1476, at 73 (1976), 1976 U.S.C.C.A.N. 5659, 5686. Thus, fair use was copyright law’s primary
means of promoting accessibility long before the Chafee Amendment was passed in 1997. That
amendment, codified at 17 U.S.C. § 121, has never been the Copyright Act’s sole means of
7

AIM Commission Report at 49; http://www2.ed.gov/about/bdscomm/list/aim/meeting/aimreport.pdf (SSMF ¶ 7) (“AIM Report”).
16

promoting accessibility, and federal officials now consider it outdated and in need of reform.8
Fair use remains the primary mechanism for promoting access to vital knowledge for persons
with disabilities, and a finding of fair use in this case furthers that goal.
3.

Public Resource’s use of legally incorporated standards is noncommercial.

The evidence does not show that Public Resource’s use of legally incorporated standards
has any commercial purpose. Plaintiffs rely on emails from Mr. Malamud to his wife Rebecca,
whom he contracted to help make the standards more accessible by converting diagrams and
formulas. Rubel Decl. Ex. 19 (Dkt. No. 118-12). The emails show only that Public Resource
raised money to carry out its public interest mission by demonstrating that it was, in fact,
carrying out its mission. Contrary to Plaintiffs’ suggestion, there is no “direct evidence” that the
posting of the standards at issue “resulted in financial gains” to Public Resource. Pls. Opp. 24.
Nor does Mr. Malamud’s collecting a salary for his full-time work as Public Resource’s
sole employee, or his payment for labor-intensive design and formatting work by Rebecca
Malamud’s design studio, transform a public interest project into a “commercial” operation. No
doubt the Salvation Army’s publicizing of its mission to render services to the poor draws
contributions (“financial gain,” as Plaintiffs characterize it) and helps fund employees’ salaries.
That does not make that publicity commercial. Plaintiffs take a single line of an email from Mr.
Malamud to mean the exact opposite of what the email conveyed, which was that obtaining
legally incorporated standards was difficult and costly. The entire message reads:
Btw, this is why I’m going a little batty by this time on a Friday. I spent the entire
week buying standards. Shopping is tough work in this case . . . lots of doublechecking to find the exact version. Took me the entire week and over $10k, and
this is what I have to show for it. What a way to make a living. Much harder than
assembling the paper copies.
8

See AIM Report 43-44.
17

Malamud Dep. Ex. 73 (ECF No. 118-13, Ex. 36). Later in the email thread, Mr. Malamud stated
the reason for his exertions: “Amazingly important trove of information that will see the light of
day for the first time.” Id. These are not the words of a person and organization seeking
commercial gain.
In any event a vast number of fair uses are commercial. Indeed, the worldwide sale of a
popular rap album was not sufficiently “commercial” to overcome a finding of fair use in
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1997). The fundraising of a frugal
nonprofit does not remotely jeopardize fair use in this case.
B.

The Public Needs Free Access to Standards That Constitute Legal Facts.

The second fair use factor, the “nature of the copyrighted work,” does not turn on the
whether the work is “complicated and sophisticated,” Pls. Opp. 24-25. It turns on whether the
work is of a type for which “the risk of restraining the free flow of information is more
significant.” Consumers Union of U.S., Inc. v. Gen. Signal Corp., 724 F.2d 1044, 1049 (2d Cir.
1983). As the standards at issue have become laws that carry potential penalties for
noncompliance, the risk of restraining information about them is great. Indeed, laws are as far
from the “core of intended copyright protection” that the Supreme Court identified in Campbell
as any written work can be. Campbell, 510 U.S. at 586; see generally P.R.O. Mem. 10-21.
Moreover, Plaintiffs cannot dispute that the incorporated standards are highly factual in
nature, even apart from their status as regulations. See pp 9-11, above.
C.

The Amount Used By Public Resource Was Necessary and Reasonable.

Under the third factor, copying and disseminating entire works is fair where the copying
is “reasonable in light of its purpose of disseminating important . . . information.” Bloomberg,
756 F.3d 73 at 90. Plaintiffs have not disputed that partial access to incorporated standards would
not inform the public of the law’s requirements and could be misleading. P.R.O. Mem. 41.
18

Plaintiffs’ claim that no case has found fair use where a defendant posted entire works
“online to the world and without restriction,” Pls. Opp. 20, is wrong. Numerous courts have so
held. See, e.g., Katz v. Google Inc., 802 F.3d 1178, 1181 (11th Cir. 2015) (posting of photo on
Internet blog “in its unaltered, original state” was fair use); Swatch Grp. Mgmt. Servs. Ltd. v.
Bloomberg L.P., 756 F.3d 73, 84 (2d Cir. 2014) (posting recording and transcript of presentation
online was fair use); Righthaven, 2011 WL 1541613, at *3 (posting entire newspaper article on
website of nonprofit group was fair use); Online Policy Group v. Diebold, 337 F. Supp. 2d at
1195, 1203 (N.D. Cal. 2004) (posting archive of company’s emails online was fair use); Warren
Publishing Co. v. Spurlock d/b/a Vanguard Productions, 645 F. Supp. 2d 402, (E.D. Pa. 2009)
(reproduction of magazine cover artworks at “virtually the same size” in a book was fair use);
see also Hustler Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148, 1152-56 (9th Cir. 1986)
(disseminating “hundreds of thousands of copies” of magazine page was fair use). The Second
Circuit’s opinion in Authors Guild v. Google placed no such categorical limitation on fair use.
804 F.3d at 221.
D.

Plaintiffs’ Conjectures About Future Harm Do Not Undermine Fair Use.

The importance of the fourth factor, market effect, “will vary . . . with the relative
strength of the showing on other factors.” Campbell, 510 U.S. at 590 n.21. Just as “when a lethal
parody . . . kills demand for the original, it does not produce a harm cognizable under the
Copyright Act,” nor does copying and dissemination in order to inform the public about the law.
Id. at 591. Both are uses that copyright law encourages. See Veeck, 293 F.3d at 806. In light of
this legally favored purpose, only strong evidence of market harm could defeat fair use.
No such evidence exists here. The absence of any evidence linking Public Resource’s
posting of the legally incorporated standards to any loss of sales by Plaintiffs speaks volumes,
given that Public Resource began posting the standards in 2008. Supp. Decl. of Carl Malamud
19

¶¶ 5–7; SSMF ¶ 8. Plaintiffs presented sales data for only one standard, cherry-picked from 257
standards at issue in this case. Pls. Opp. 26. And Plaintiffs can show no causal link between the
decline in sales of that one standard—the National Electrical Code—and its posting by Public
Resource except that Plaintiffs mistakenly thought they occurred in the same year, 2012. ECF
No. 118, Rubel Decl. Ex. 1 (Jarosz Report) ¶ 133; ECF No. 124-3 (Jarosz Dep. 164:13–167:13).
As Public Resource first posted a version of that standard on its website in 2008, a decline in
sales in 2012 shows nothing about the effect of its having been available through Public
Resource. Supp. Decl. of Carl Malamud ¶¶ 5–7; SMF ¶ 4; SSMF ¶ 8.
The remainder of Plaintiffs’ market harm argument is mere self-serving speculation that
Public Resource’s posting of the legally incorporated standards will at some future date “destroy
the potential market” for standards. Pls. Opp. 26. But Plaintiffs do not dispute that the standards
they publish are not incorporated into law immediately and thus enjoy an undisputed period of
copyright exclusivity. P.R.O. Mem. 44. Nor do they dispute that all but one of the standards at
issue have been superseded as private statements of best practices by later versions, such that the
standards’ only significant current use is as law. Id. While Plaintiffs cite cases concerning music
and translations of ancient monastic texts, the market for access to legal materials is very
different. See Pls. Mem. 39, Pls. Opp. 26. For example, courts regularly purchase bound volumes
and electronic access to statutes and case law even though they can be downloaded for free.
SSMF ¶ 9. Plaintiffs are not entitled to presume that online availability of legal materials
“destroys” the potential market.

20

V.

PLAINTIFFS HAVE NOT PROVEN THAT THEY OWN THE COPYRIGHTS
FOR THE STANDARDS AT ISSUE.
A.

Ample Evidence Contradicts Plaintiffs’ Claim of Ownership.

Plaintiffs do not dispute that the presumption arising from copyright registration is
limited. Public Resource need offer only some evidence to rebut it. See, e.g., Entm’t Research
Grp., Inc. v. Genesis Creative Grp., Inc., 122 F.3d 1211, 1217–18 (9th Cir. 1997).
Public Resource has provided ample evidence that Plaintiffs do not own most of the
standards at issue. ASTM now admits that it only started asking for copyright assignments from
members in 2005,9 long after 226 of the 229 ASTM standards at issue had been developed.
SSMF ¶ 10. ASHRAE’s alleged “assignment” forms explicitly request a non-exclusive grant of
rights (not an assignment), and NFPA admits that its pre-2008 forms are substantially similar to
ASHRAE’s and therefore contained the same deficiency (affecting the 2011 NEC and prior
standards). Opp. at 33-34. As for the four remaining ASTM and NFPA standards, Plaintiffs
cannot confirm that the alleged assignors had authority to assign the copyrights in question.
P.R.O. Mem. at 54–55. It is evident that many volunteers who drafted language for the standards
did so in the course of their employment and, therefore, lacked authority to assign rights. See
Cmty. for Creative Non-Violence, et al. v. Reid, 490 U.S. 730, 750–52 (1989).
B.

Plaintiffs’ Registrations Are Not Due Any Presumption of Validity.

Plaintiffs do not contest that, where there are material errors in an application for
copyright registration, statements in the registration are not entitled to any presumption. Instead,
Plaintiffs contest a different point, saying that the higher standard of fraud on the Copyright

9

At deposition, ASTM’s Rule 30(b)(6) representative stated that ASTM had not sought
assignments prior to 2003. SMF ¶ 147. Accordingly, Public Resource believed that ASTM could
claim rights in only four of the incorporated standards at issue here. ASTM now admits that it
had not sought assignments until 2005, Opp. at 32, and therefore has rights, if any, in only three
of the incorporated standards at issue (ASTM A106/106M 2004b). ECF No. 1-1 (Compl.).
21

Office has not been met. Opp. at 28. This is immaterial. The Plaintiffs would not have been
eligible to register the standards at issue if their application had correctly listed the true
authors—the volunteers— because Plaintiffs could not have registered a work that they neither
authored nor owned. Their registrations rested on material misstatements and do not enjoy a
presumption of validity.
Plaintiffs’ statement that there are no errors in the copyright registrations appears to be an
attempt to create a factual dispute where there is none. Plaintiffs listed themselves as the sole
authors of the “entire work[s]” but now concede that third parties authored the works. Plaintiffs’
reliance on the term “organizational authors,” Pls. Opp. 28, is misplaced, because it has no legal
meaning and is not in the Copyright Act. It was simply a descriptive dictum in a case where
ownership of the works at issue was not in dispute. See Veeck, 293 F.3d at 794.
Plaintiffs also claim that there was no error because an unidentified employee of one
party, ASTM, supposedly consulted with an unnamed individual at the Copyright Office at some
unknown date before 1980 and was told to list ASTM as the sole author. Opp. at 28; SSMF ¶ 11.
This statement is inadmissible double hearsay, undocumented, and self-serving. SSMF ¶ 11. It
does not show that the applications were truthful; it merely allows one party, ASTM, to argue
that it did not intentionally lie to the Copyright Office.
C.

Plaintiffs Are Not Joint Authors of the Standards

Plaintiffs recognize that joint authorship requires the intention by two or more authors at
the time of creation that their contributions be merged into a unitary work. Opp. at 30 (citing
17 U.S.C. § 101). But Plaintiffs still cannot show that the drafters of the standards at issue had
such an intention.
Undisputed evidence demonstrates that Plaintiffs expressly rejected joint authorship
before this litigation. Mot. at 55–56. Plaintiffs’ late-stage argument that they didn’t have to
22

explicitly agree to be joint authors when the standards were drafted is beside the point as well as
incorrect. Plaintiffs did more than fail to agree on joint authorship, they actively disavowed it.
And Plaintiffs misquoted10 dicta from Community for Creative Non-violence v. Reid, which did
not find that the work in question was a joint work. 846 F.2d 1485, 1497 (D.C. Cir. 1988). The
court remanded this question, and the parties later consented to judgment that the work was of
sole authorship. Cmty. for Creative Non-violence v. Reid, No. 86-1507, 1991 WL 415523, at *1
(D.D.C. Jan. 7, 1991).
Moreover, Plaintiffs have not established that they were authors. The requirement of
“authorship” by each party claiming to be a joint author is implicit in the statute. 17 U.S.C. § 101
(a “joint work” is one “prepared by two or more authors . . .”) (emphasis added). “[A]n author
superintends the work by exercising control.” Aalmuhammed v. Lee, 202 F.3d 1227, 1234 (9th
Cir. 2000). Simply providing some copyrightable material, without exercising control, does not
make one joint author. Id. at 1229–36 (holding that consultant was not a joint author of the film
Malcolm X, despite his valuable and otherwise copyrightable contributions to the film). Plaintiffs
made administrative and secretarial contributions of their employees, but volunteers made the
ultimate decisions as to the content of the standards. SMF ¶ 135, 137–38. Even the inclusion of
small segments of prefatory text or legal disclaimers, which Plaintiffs claim to have created, was

10

The correct quotation is: “this case—once more taking the record in its current state—might
qualify as a textbook example of a jointly-authored work . . . .” 846 F.2d 1485, 1497 (D.C. Cir.
1988) (emphasis added to indicate word missing from Plaintiffs’ brief).
23

done under the authority of the volunteers, who had the final vote on the content of the
standards.11 That contribution did not make Plaintiffs co-authors.
D.

Plaintiffs’ Alleged “Assignments” Do Not Transfer Ownership to Plaintiffs.

Public Resource does not disagree with Plaintiffs’ assertion that “[a] valid assignment
need not ‘contain an elaborate explanation’ or ‘magic words, but must simply show an agreement
to transfer the copyright.’” Pls. Opp. at 32–33 (quoting Metro. Reg’l Info. Sys., Inc. v. Am. Home
Realty Network, Inc., 772 F.3d 591, 600–02 (4th Cir. 2013)) (emphasis added). The problem
with Plaintiffs’ ownership claims is that they cannot show such an agreement. Plaintiffs either
obtained something different, like a non-exclusive license, or they obtained no agreement at all.
For example, all of the documents ASHRAE claims as “assignments,” and many of
NFPA’s alleged “assignments” from before 2008, explicitly state that Plaintiffs request nonexclusive licenses (not copyright assignments, which by their nature are exclusive grants of
rights). In their Opposition, Plaintiffs ignore this “non-exclusive” language and instead try to
twist the meaning of a clause at the end of the sentence. Pls. Opp. at 33. This clause must be
understood in the context of the full sentence, which states twice for emphasis that it is a grant of
“non-exclusive, royalty-free rights.” Read plainly, it means that because the contributor does not
expect to receive royalties in exchange for granting ASHRAE or NFPA a non-exclusive license
to use the segments of the standards that she developed.
Plaintiffs’ claim that this language constituted a copyright assignment directly contradicts
Plaintiff NFPA’s position in earlier copyright litigation with another standards organization. See

11

Moreover, ASTM’s 1961 Form and Style Guide (ECF No. 155-7, Ex. 4) lacks a copyright
notice, and therefore entered the public domain upon publication. See Pub. L. No. 60-349, 35
Stat. 1075 (1909), Sec. 9 (requiring copyright notices on each copy); Shapiro & Son Bedspread
Corp. v. Royal Mills Assocs., 764 F.2d 69 (2d Cir. N.Y. 1985) (finding that an absence of
copyright notice resulted in loss of copyright); Mifflin v. Dutton, 190 U.S. 265 (1903) (same).
24

Mot. at 50. The court in that case held this language created merely a non-exclusive license. Int’l
Code Council v. National Fire Prot. Assoc., No. 02 c 5610, 2006 WL 850879, at *6 (N.D. Ill.
March 27, 2006). Notably the Plaintiffs have tried to sweep that earlier argument, and the court’s
ruling, under the rug. There is no relevant distinction between the cases other than the fact that
NFPA now sits on the other side of the courtroom. This Court should accept the argument that
NFPA made in its earlier case, the same argument Public Resource makes now.
Plaintiffs do not explain why they take the opposite position now. Instead, Plaintiffs cite
to Capital Concepts, Inc. v. Mountain Corp., a case with starkly different assignment language
coupled with a work-made-for-hire provision and that did not involve a non-exclusive grant. No.
3:11-CV-00036, 2012 WL 6761880 *15 (W.D. Va. Dec. 30, 2012). Plaintiffs also argue that
their use of the term “copyright release” supports their contention. Pls. Opp. at 34. Plaintiffs
offer no support for that assertion, for good reason: “copyright release” is typically a synonym
for “non-exclusive license.” See, e.g., Home Design Services, Inc. v. Hibiscus Homes of Florida,
Inc., No. 603cv1860ORL19KRS, 2005 WL 3445522 at *8 (M.D. Fla. Dec. 14, 2005); Crocker et
al. v. General Drafting Co., Inc., 50 F. Supp. 634, 635 (S.D.N.Y. 1943).
ASTM’s alleged assignment process had numerous deficiencies, many of which ASTM
does not contest.12 ASTM had no assignment process before 2005, and ASTM has failed to show
that any of the 25,000 people who allegedly completed a renewal form in later years owned any
copyright in the standards at issue, many of which were created in the 1950s and 1960s.13

12

Plaintiffs did not respond to the deficiencies that Public Resource raised in its opening
memorandum of law concerning ASTM’s IP Policy, or to the deficiencies in ASTM’s paper
forms, and they therefore concede those issues.
13

Plaintiffs don’t even know the few individuals they cited in their opening motion actually
contributed copyrightable text to the standards at issue. Plaintiffs allege Jimmy King was the
technical contact for the “reapproval” of ASTM D1217-1993 in 1998 (Pls. SMF ¶ 23), but that
means only that an older standard is republished without any changes to content. SSMF ¶ 12.
25

Moreover, ASTM’s online assignment process makes no provision for actual agreement. P.R.O.
Mem. at 53. Plaintiffs attempt to sidestep this requirement by invoking Metro. Reg’l Info. Sys.,
772 F.3d at 600–02. But that case simply states that, whether the agreement is made
electronically or on paper, what matters is that an agreement must be shown. Here, ASTM’s
website is constructed in a way that prevents persons from indicating whether or not they assent
to ASTM’s terms: there is no way to show agreement.14
Public Resource has also shown that Plaintiffs failed to show that the individuals who
executed alleged assignments had ownership and authority to transfer copyright to Plaintiffs.
Plaintiffs argue that Public Resource must prove that these individuals lacked authority, but the
case they cite simply says that a copyright defendant must show “some evidence” to rebut the
presumption of validity, and then the burden shifts to the Plaintiffs to prove ownership. United
Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257–59 (9th Cir. 2011).15 The evidence
comes from the employee status of many signatories that was evident in the Plaintiffs’ forms.
See, e.g., SSMF ¶ 13. Employers, not employees, own copyright rights in works the employees
write, so the employers, not the employees, needed to assign any rights to the employees’ work.
E.

Public Resource Has Standing to Challenge Plaintiffs’ Ownership.

Plaintiffs argue that, regardless of the fatal deficiencies in that claim, no one whom they
sue can expose those deficiencies. While Plaintiffs claim that “transfers occurred,” and
“Defendant’s only disagreement is with the formality of the language,” the truth is just the

14

In contrast, ASTM’s “new member registration” process requires someone to click a checkbox next to assignment language, indicating consent. ECF No. 155-7 (O’Brien Decl.) Ex. 1, p.
11. But copyright assignments by new members do not apply to the standards at issue here.

15

Plaintiffs claim that NFPA and ASHRAE’s assignments include language that requires the
person executing the document to attest that he or she has authority to do so. Opp. at 35. It does
not make a difference. A person cannot sell the U.S. Capitol Building, even if she signs a
document attesting that she has authority to do so.
26

opposite: the evidence shows that, for most of the standards at issue, there never was a transfer of
copyright in the first place, and Plaintiffs have not made their prima facie case for ownership.
See P.R.O. Mem. 46-47. The only additional case Plaintiffs cite actually supports summary
judgment for Public Resource: the court considered but then disregarded the line of cases that
cast doubt on inquiry into assignment formalities, and went on to analyze whether the copyright
assignments in that case were valid. See Metro. Reg’l Info. Sys., 772 F.3d at 600–02.
VI.

PLAINTIFFS TRADEMARK CLAIMS ARE BARRED AS A MATTER OF LAW.
A.

Plaintiffs’ Trademark Rights Cannot Protect Works in the Public Domain.

In Dastar Corp. v. Twentieth Century Fox Film Corp., the Supreme Court thwarted the
use of trademark claims to circumvent limitations of copyright law. 539 U.S. 23, 37–38 (2003).
As explained above, pp 2-10, the incorporated standards are not protected by copyright. Under
Dastar, Plaintiffs cannot pivot to trademark to prevent use of content of the standards, including
the names and logos that are in the incorporated standards. See id.; Prunte v. Universal Music
Grp., 484 F. Supp. 2d 32, 41 (D.D.C. 2007) (dismissing trademark claims based on use of song
titles) Whitehead v. CBS/Viacom, Inc., 315 F. Supp. 2d 1, 13 (D.D.C. 2004) (granting summary
judgment on trademark claims where gravamen of complaint was based in copyright
infringement of plaintiff’s play).
Plaintiffs’ contention that a party can bring “both copyright and trademark claims in the
same lawsuit” is a non-sequitur. See Pls. Opp. 36. The relevant question is what happens to
Plaintiffs’ trademark claims when the Court confirms that Plaintiffs cannot assert copyright
ownership over the standards. Dastar answers that question: the standards enter the public
domain, despite any purported trademark claims. None of Plaintiffs’ cited cases involve a
conflict between copyright and trademark law. See Pls. Opp. 36. Here, as in Dastar, the Plaintiffs
are trying to use trademark law to curtail uses that copyright law permits.
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B.

Plaintiffs Ignore Binding Supreme Court Precedent Limiting Trademark
Owners From Controlling Downstream Modifications of Their Products.

Supreme Court precedent establishes that purchasers of trademarked goods may modify
those goods and distribute them with the trademarks intact, so long as consumers are adequately
informed that the accused goods were altered. Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924);
accord Enesco Corp. v. Price/Costco Inc., 146 F.3d 1083, 1084–85 (9th Cir. 1998). Consumers
may be adequately informed that the accused goods were altered without an explicit disclaimer.
Dream Team Collectibles, Inc. v. NBA Properties, Inc., 958 F. Supp. 1401, 1420 (E.D. Mo.
1997) (denying summary judgment for trademark claimant because a reasonable jury could find
there was no confusion that NBA endorsed basketball card collage even without a disclaimer).
Plaintiffs cannot avoid Coty’s clear holding. Public Resource adequately informed
consumers about its handling of the incorporated standards. Public Resource’s cover page for
each .pdf standard is so distinct that no reasonable consumer would mistake it as part of the
original document (e.g., Rubel Decl. Ex. 16, Dkt. No. 118-12); Public Resource’s original
preamble for the .html standards informs reasonable consumers that Public Resource has
provided the transcription (e.g., Rubel Decl. Ex. 26, Dkt. No. 118-13); and the .pdf versions look
like scans of physical documents (e.g., Rubel Decl. Ex. 25, Dkt. No. 118-13).
For the same reasons, Plaintiffs have not met, and cannot meet, their burden of offering
evidence of likely consumer confusion as to source, sponsorship, or affiliation. The look and feel
of public.resource.org is distinct from Plaintiffs’ sites; Public Resource clearly states its mission
to promoting public access to the law, in terms that no reasonable consumer would attribute to an
industry organization; and Public Resource makes hundreds of standards from dozens of
organizations incorporated in the Code of Federal Regulations available via a single table on its
site, which dispels the notion that Public Resource has any affiliation with Plaintiffs. See Rubel

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Decl. Ex. 27 (Dkt. No. 118-13). Tellingly, Plaintiffs do not object to Public Resource’s current
prefatory statements, but they complain that the current language did not originally appear on the
standards at issue. Pls. Opp. 40–41. Public Resource could easily add substantially similar
prefatory language to the incorporated standards on its website if the Court believes that is
necessary. Plaintiffs nonetheless claim any post-litigation disclaimer would be ineffective, citing
cases disapproving fine-print disclaimers. Pls. Opp. 40. The Supreme Court disagrees, and has
explicitly approved “disclaimers” in this context. Coty, 264 U.S. at 369 (1924); Champion Spark
Plug Co. v. Sanders, 331 U.S. 125, 130 (1947).
Attempting to sidestep the Supreme Court’s clear guidance, Plaintiffs look to a series of
cases involving disclaimers in fine-print on packaging, advertisements, or in trade names. See
Pls. Opp. 40–41 (citing Home Box Office, Inc. v. Showtime/The Movie Channel, Inc., 832 F.2d
1311, 1315–16 (2d Cir. 1987) (advertisements); U.S. Jaycees v. Phil. Jaycees, 639 F.2d 134, 142
(3d Cir. 1981) (trade names); CFE Racing Prods., Inc. v. BMF Wheels, Inc., 793 F.3d 571, 596,
599 (6th Cir. 2015) (packaging); Int’l Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d
1079, 1093 (7th Cir. 1988) (advertisements). Those cases are inapposite, because Public
Resource’s disclaimer is clear and prominent. It is precisely the kind of disclaimer that courts
have found effective to cure even substantial confusion. See, e.g., Charles of the Ritz Group, Ltd.
v. Quality King Distribs., Inc., 832 F.2d 1317, 1324 (2d Cir. 1987).
C.

Public Resource’s Use Is a Nominative Fair Use.

Plaintiffs do not dispute that Plaintiffs’ names are part of the incorporated standards’
titles and are therefore necessary to identify the standards. Instead, Plaintiffs insist that the use of
the logo “implies falsely that Plaintiffs are affiliated with or have endorsed Defendant’s copies.”
Pls. Opp. 49. Plaintiffs have no evidence to support that claim. Courts rejecting a nominative fair
use claim were generally presented with websites using markholder’s logos as part of the site
29

design or in advertising. See, e.g., Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th
Cir. 2010); David’s Bridal, Inc. v. House of Brides, Inc., No. 06-5660, 2010 WL 323306, at *7
(D.N.J. Jan. 20, 2010). These courts have found that use of logos in that context could confuse
consumers as to affiliation or endorsement. Public Resource did not gratuitously use Plaintiffs’
logos; it displayed the logos only as they appear in the incorporated standards. No court has
required a defendant to scrub design marks from images truthfully showing a plaintiff’s work.
D.

Plaintiffs Lack Evidence of Likely Consumer Confusion or Loss of Goodwill.

Finally, summary judgment for Public Resource is appropriate because Plaintiffs have no
evidence of likely confusion or loss of goodwill. Plaintiffs invoke a legal presumption that can
apply when parties use identical marks for “related services.” Pls. Opp. 39. But this is not a
typical trademark dispute, where both parties are using identical marks to compete in a
commercial enterprise. A presumption that visitors will believe the parties are affiliated merely
because Public Resource posts the standards is very different.
Further, while Plaintiffs insist that are that they need not to produce confusion evidence,
they incorrectly suggest that its absence is immaterial. The very case they cite, Bandag, Inc. v. Al
Bolser’s Tire Stores, Inc., states that where evidence of actual confusion “should have been
available” if it existed, its absence weighs against a finding of confusion. 750 F.2d 903, 914
(Fed. Cir. 1984). Here, Public Resource posted the incorporated standards on its website for
years before suit, more than enough time for evidence of actual confusion to emerge.
Finally, as discussed above, Plaintiffs’ supposed fear that minor errors have or will cause
Plaintiffs to lose goodwill is entirely speculative.
CONCLUSION
For the foregoing reasons, the Court should grant summary judgment for Public Resource
on all of the claims in this case.
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Dated: February 4, 2016

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

31