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

Filing 179

Joint STATUS REPORT by AMERICAN SOCIETY FOR TESTING AND MATERIALS. (Rubel, Jordana)

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.
JOINT STATUS REPORT
Plaintiffs and Defendant (“Defendant” or “Public Resource”) jointly submit this status
report pursuant to the Court’s February 2, 2017 Minute Order.
Following the Court’s Order granting Plaintiffs’ motion for summary judgment and
permanent injunction and denying Defendant’s cross-motion for summary judgment (hereinafter
“Order”) (Dkt. No. 176), Public Resource has removed from its website all standards published
by Plaintiffs. Public Resource had previously removed from its website all of the standards at
issue in the complaint subsequent to the November 4, 2015 status conference before this Court.
On February 15, 2017, Public Resource filed its notice of appeal of the Order (Dkt. No.
177).
The Parties hereby stipulate that, unless and until the Order is reversed, vacated, or
materially modified beyond the modification proposed in this Joint Status Report on appeal or

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otherwise, (a) Public Resource will not reproduce, display, distribute, or create any derivative
works consisting substantially of any standard published by Plaintiffs (whether published prior to
or after the entry of the Order), and (b) Plaintiffs will hold in abeyance any further proceedings
regarding any of their other copyright works during the pendency of Public Resource’s appeal to
the Court of Appeals.
In accordance with the provisions of Federal Rule of Civil Procedure 54(d) and Local
Civil Rule 54.2, the Parties stipulate that the time for proceedings to commence on any motion
for attorney’s fees and/or costs in this case shall be after the entry of final judgment on all claims
rather than the Order.
Finally, the Court’s February 2, 2017 Order permanently enjoined Public Resource from
“all unauthorized use of Plaintiff’s registered trademarks.” The Parties stipulate, and respectfully
request, that the Court should modify the Order so that the last sentence of the second paragraph
states that:
“It is FURTHER ORDERED that Defendant is permanently enjoined from all
unauthorized use of Plaintiffs’ registered trademarks, provided that nothing in this injunction is
intended to or does apply to (a) Defendant’s use of Plaintiffs’ names or logos in those documents
that have been filed publicly in this action and that Defendant has posted to its website;
(b) Defendant’s posting or other use of letters that Plaintiffs themselves have sent to Defendant,
governmental agencies, or third parties and that include Plaintiffs’ names or logos;
(c) Defendant’s use of Plaintiffs’ names or the names of their standards in tables that Defendant
has posted to its website to indicate jurisdictions that have incorporated such standards by
reference; or (d) Defendant’s reference to Plaintiffs’ names or the names of their standards in
Defendant’s critical commentary and political speech, subject to the limitation that this does not

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permit Public Resource to display on its website Plaintiffs’ registered trademarks in versions of
the standards that Plaintiffs publish. Moreover, this injunction does not apply to third-party
standards posted by Public Resource that merely reference Plaintiffs or Plaintiffs’ works without
reproducing Plaintiffs’ works in whole or substantial part. See, e.g., the California Building
Code 2010, California Code of Regulations Tile 24, Part 2, Volume 1
(https://law.resource.org/pub/us/code/bsc.ca.gov/gov.ca.bsc.2010.02.1.pdf) at page 27, Section
110.3.1 (“Materials for the foundation shall be on the job, except where concrete is ready mixed
in accordance with ASTM C 94, the concrete need not be on the job.”)”
In proposing the stipulated modification to the Order in the preceding paragraph, Public
Resource reserves and does not waive its argument that its posting of Plaintiffs’ standards
constitutes political speech, and Plaintiffs reserve and do not waive their argument that Public
Resource’s posting of their standards does not constitute political speech.

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Dated: February 17, 2017

Respectfully submitted,
/s/ Jordana Rubel
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]
Counsel For American Society For Testing And Materials
d/b/a/ ASTM International
/s/ Kelly M. Klaus
Kelly M. Klaus
Rose L. Ehler
Munger, Tolles & Olson LLP
560 Mission St., 27th Floor
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
[e-mail]
Counsel for National Fire Protection Association, Inc.
/s/ J. Blake Cunningham
Jeffrey S. Bucholtz (D.C. Bar: 452385)
King & Spalding LLP
1700 Pennsylvania Avenue, NW, Ste. 200
Washington, DC 20006-4707
Tel: [phone]
Email: [e-mail]
Kenneth L. Steinthal
Joseph R. Wetzel
J. Blake Cunningham
King & Spalding LLP
101 Second Street, Ste. 2300
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
[e-mail]
[e-mail]

33881035.1

Counsel for American Society of Heating, Refrigerating,
and Air Conditioning Engineers

/s/ Matthew B. Becker
Andrew P. Bridges
Matthew B. Becker
Fenwick & West LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Tel: [phone]
Email: [e-mail]
[e-mail]
David Halperin
1530 P Street, NW
Washington DC 20005
Tel: [phone]
Email: [e-mail]
Corynne McSherry
Mitchell Stoltz
Electronic Frontier Foundation
815 Eddy Street
San Francisco, CA 94109
Tel: [phone]
Email: [e-mail]
[e-mail]
Counsel for Public.Resource.Org, Inc.

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