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

Filing 188

MOTION to Reopen Case AND TO ENTER A SCHEDULING ORDER FOR CROSS-MOTIONS FOR SUMMARY JUDGMENT LIMITED TO THE ISSUES OF COPYRIGHT AND TRADEMARK FAIR USE by AMERICAN SOCIETY FOR TESTING AND MATERIALS, AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC., NATIONAL FIRE PROTECTION ASSOCIATION, INC. (Attachments: # 1 Text of Proposed Order)(Fee, J.). Added MOTION for Order on 2/7/2019 (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

Plaintiffs/
Counter-Defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/
Counter-Plaintiff.
MOTION TO RETURN THIS CASE TO THE COURT’S ACTIVE DOCKET AND TO
ENTER A SCHEDULING ORDER FOR CROSS-MOTIONS FOR SUMMARY
JUDGMENT LIMITED TO THE ISSUES OF
COPYRIGHT AND TRADEMARK FAIR USE
Plaintiffs move the Court to return this case to the Court’s active docket (see 7/6/17
Minute Order), and to enter a scheduling order for cross-motions for summary judgment on the
limited issues of copyright and trademark fair use.
On July 17, 2018, the United States Court of Appeals for the District of Columbia Circuit
reversed this Court’s grant of a partial summary judgment, vacated the permanent injunction, and
remanded for further proceedings consistent with its Order. American Society for Testing and
Materials, et al. v. Public.Resource.Org, Inc. (“D.C. Circuit Op.”), 896 F.3d 437, 448 (D.C. Cir.
2018) (Mandate Issued, Sept. 7, 2018, Dkt. 185).

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Pursuant to Local Rule 7(m), Plaintiffs have met-and-conferred with Defendant
(“Defendant” or “PRO”) (together “Parties”) and agree that the next phase of this case should be
decided on cross-motions for summary judgment, but disagree as to the scope of the next phase
of proceedings in this Court. Plaintiffs believe the remand directs the Court to reconsider
copyright and trademark fair use, whereas PRO believes the remand reopens the issues of
copyrightability and ownership even though the Court of Appeals did not disturb this Court’s
rulings on these issues. The Parties also dispute whether there is good cause for reopening fact
discovery. Plaintiffs respectfully submit that PRO had ample opportunity to take discovery
related to its copyright and trademark fair use defenses during the original 13.5-month fact
discovery period that closed more than four years ago, and there is no good cause for reopening
fact discovery for an additional 11 months, as PRO proposes. Accordingly, for the reasons set
forth below, Plaintiffs request that the Court adopt a schedule that will quickly and efficiently
resolve the only issues that were remanded for this Court.
I.

Summary Judgment Briefing Should Be Limited to the Issues of Copyright and
Trademark Fair Use that Were Remanded by the D.C. Circuit.
As the Court of Appeals for the D.C. Circuit has explained “it is entirely appropriate—

and, in most cases in this circuit, necessary—to consult the opinion to interpret the mandate.”
“Courts may refer to the appellate opinion to determine what issues the mandate encompassed.”
U.S. ex rel. of Dep't of Labor v. Ins. Co. of N. Am., 131 F.3d 1037, 1043 n.7 (D.C. Cir. 1997)
(citing City of Cleveland v. Fed. Power Comm’n, 561 F.2d 344, 347 n.25 (D.C. Cir. 1977)).
The D.C. Circuit’s opinion remanded for this Court to decide the issues of fair use afresh
and on a standard-by-standard (or groupings of standards) basis. The opinion instructs this Court
as to the questions it should consider in reweighing the fair use factors on remand. D.C. Circuit
Op., 896 F.3d at 453 (discussing the “at least three questions” that “the district court should
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consider” on remand); id. at 453 (“whether PRO’s use as to each standard at issue in this appeal
qualifies as a fair use remains for the district court to determine”); id. at 458 (“As with the
copyright fair use issue, it remains for the district court to consider in the first instance whether
PRO’s use of ASTM’s marks constitutes trademark infringement in light of the nominative fair
use factors.”).
And by “leaving for another day” the copyrightability issues, id. at 441, the D.C. Circuit
reserved its decision regarding the copyrightability issues that were fully briefed on appeal. See
also id. at 447 (“[I]t may later turn out that PRO and others use incorporated standards in a
manner not encompassed by the fair use doctrine, thereby again raising the question of whether
the authors of such works can maintain their copyright at all.”). It did not send back the
copyrightability issues for further decision, nor does its opinion provide any guidance regarding
how the D.C. Circuit would approach those issues. If summary judgment is again granted in
favor of Plaintiffs (as they believe likely) and PRO appeals, PRO can then ask that Court to
address these issues. There is simply no reason to rehash them again here because there is
nothing new to say.
Public Resource takes the position that the question of “ownership” is still open and can
be relitigated before this Court. That is not the rule. Public Resource challenged ownership
previously before this Court on summary judgment and chose to limit its appeal to the single
issue of 17 U.S.C. § 105. See Appellants’ Consolidated Opening Br. at 50-51. “A defendant
cannot forego its opportunity to challenge a claim (and thereby deprive the plaintiffs of their
opportunity to rebut the challenge) only to reopen the issue much later when it might choose to
do so.” Trout v. Garrett, 780 F. Supp. 1396, 1425 (D.D.C. 1991). “[U]nder the doctrine of the
law of the case a party cannot forego its opportunity to raise an issue or object at one point in the

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litigation only to raise it later. Departure from this doctrine would lead to the absurd result, as
Judge Friendly said, ‘that a party who has chosen not to argue a point on a first appeal should
stand better as regards the law of the case than the one who argued and lost.’” Id. at n.71
(quoting Fogel v. Chestnutt, 668 F.2d 100, 109 (2d Cir. 1982).1
II.

Defendant Cannot Demonstrate Good Cause for Extending the Fact Discovery
Period That Lasted More Than Thirteen Months and Closed Four Years Ago;
Extending Discovery Would Unfairly Prejudice Plaintiffs.
Fact discovery commenced on December 9, 2013. Initially, Plaintiffs proposed a fact

discovery deadline of July 25, 2014, but they agreed to an additional 2.5 months of fact
discovery at Defendant’s request. Thereafter, Plaintiffs consented to the first two of Defendant’s
motions to extend the fact deadline, ultimately resulting in a deadline of January 30, 2015. Dkt.
58. Plaintiffs opposed Defendant’s third motion to extend the deadline because they believed
that 13.5 months of fact discovery was more than adequate and any further delays would
unnecessarily delay the resolution of this case. Magistrate Judge Robinson agreed and denied
Defendant’s third motion, stating that “the Court finds that no good cause for the continuance or
extension has been shown by the defendant. . . . [because PRO] has not made the requisite
showing of diligence.” 3-19-2015 Tr. at 40:3-5, 8-10.
For the same reason, Defendant’s request to extend discovery more than four years after
fact discovery closed should be denied. As explained above, the Court of Appeals reversed this
Court’s summary judgment based solely on its conclusion that the Parties and the Court needed
to address the copyright and trademark fair use defenses with more specificity. Both affirmative

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See also Northwestern Indiana Tel. Co. v. FCC, 872 F.2d 465, 470 (D.C. Cir. 1989);
Williamsburg Wax Museum, Inc. v. Historic Figures, Inc., 810 F.2d 243, 250 (D.C. Cir. 1987);
Silverberg v. Paine, Webber, Jackson & Curtis, Inc., 724 F.2d 1456, 1457 (11th Cir. 1983);
Arnold v. Eastern Air Lines, Inc., 681 F.2d 186, 206 n. 22 (4th Cir. 1982); Raxton Corp. v.
Anania Associates, 668 F.2d 622, 624 (1st Cir. 1982).
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fair use defenses have been part of this case from its infancy. See Dkt. 21 at 48 (PRO’s
September 27, 2013 Answer asserting that “[t]he doctrines of copyright and trademark fair use
bar Plaintiffs’ claims”). As a result, Defendant had nearly fourteen months to take whatever fact
discovery it needed regarding these defenses, and, to the extent it failed to do so, that failure was
the result of its lack of diligence referenced by Magistrate Judge Robinson.
Moreover, extending the fact discovery deadline at this time will unfairly prejudice
Plaintiffs who seek to put this matter behind them and plan to again move for a permanent
injunction. Plaintiffs already endured more than a year of discovery, and they should not be
compelled to endure additional expense and delay while PRO continues to exploit their works.
Defendant now reposted many of the infringing works that it removed from the Internet after this
Court entered its injunction. Defendant should not be permitted to delay this Court’s final
resolution of the narrow issue of fair use while it continues to post Plaintiffs’ copyrighted works
online in the interim.
Federal Rule of Civil Procedure 1 requires that the rules be interpreted to “secure the just,
speedy, and inexpensive determination of every action and proceeding.” Extending discovery
here would have the opposite effect. Plaintiffs are concerned that Defendant will attempt to use
an extension of fact discovery and any information that is ultimately discovered as an excuse to
introduce new experts into this litigation more than four years after its deadline for expert
reports. This would result in even further delays and potentially hundreds of thousands of dollars
of additional expense. Reopening discovery to address issues that have been part of this case for
more than five years so that PRO can take additional fact discovery, especially after it failed to
diligently pursue discovery during the original fourteen-month discovery period, will unfairly

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prejudice Plaintiffs, and this case should promptly proceed to summary judgment briefing on the
limited remaining issues in this case (i.e., copyright and trademark fair use).
III.

Plaintiffs’ Proposed Schedule Will Promptly Resolve PRO’s Fair Use Defenses.
All of the Parties agree that the remanded questions of copyright and trademark fair use

can be resolved through summary judgment. The Parties already spent 13.5 months addressing
discovery related to these issues and Plaintiffs plan to again move for a permanent injunction
which will mean either side can appeal this Court’s order. Plaintiffs propose the schedule below
to promptly and efficiently resolve this 5-year old case.
Event

Date

Opening cross motions for summary
judgment

60 days after the Court’s order setting the
briefing schedule

Amicus briefs

30 days after the date opening cross motions
are filed

Opposition briefs

45 days after opening cross motions are filed
CONCLUSION

For the foregoing reasons, Plaintiffs respectfully request that this Court return this case to
the Court’s active docket and enter a scheduling order that limits summary judgment briefing to
copyright and trademark fair use and adopts the deadlines set forth above.

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Dated: February 7, 2019

Respectfully submitted,
/s/ J. Kevin Fee
J. Kevin Fee (D.C. Bar: 494016)
Jane Wise (D.C. Bar: 1027769)
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
J. Blake Cunningham
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
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