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

Filing 190

Memorandum in opposition to re 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 MOTION for Order and Request for Status Conference filed by PUBLIC.RESOURCE.ORG, INC.. (Bridges, Andrew)

Case 1:13-cv-01215-TSC Document 190 Filed 02/14/19 Page 1 of 13

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
AMERICAN SOCIETY FOR TESTING AND
MATERIALS d/b/a/ ASTM INTERNATIONAL;

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

NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and

PUBLIC RESOURCE’S OPPOSITION
TO THE ASTM PLAINTIFFS’
MOTION TO ENTER SCHEDULING
ORDER [DKT. 188]; REQUEST FOR
STATUS CONFERENCE

AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR-CONDITIONING
ENGINEERS, INC.,
Plaintiffs/Counter-Defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/Counter-Plaintiff.

Defendant Public.Resource.Org, Inc. (“Public Resource”) agrees with Plaintiffs that, under
the Court of Appeals’ mandate, this Court should restore the case to the active docket and enter a
scheduling order. However, Plaintiffs’ proposal ignores the core theme of the Court of Appeals’
decision, which directed the parties to supplement the factual record. Public Resource therefore
requests that the Court conduct a status conference to discuss the reopening of discovery in a
focused manner and creation of a consolidated summary judgment briefing schedule that will
allow the parties to satisfy the Court of Appeals’ instructions. In accordance with Local Rule 7(m),
Public Resource has met and conferred with Plaintiffs, who do not agree that further discovery is
required by the D.C. Circuit’s order, as they have stated in their motion [Dkt. 188].
The Court of Appeals’ Instructions to Develop Further the Factual Record
On July 17, 2019, the Court of Appeals for the District of Columbia Circuit vacated the
summary judgment and the permanent injunction that this Court granted.1 American Society for
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On August 28, 2018 Public Resource began reposting the standards at issue.

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Testing and Materials v. Public.Resource.Org, 896 F.3d 437 (D.C. Cir. 2018). Although the Court
of Appeals stated that Public Resource presented “a serious constitutional concern with permitting
private ownership of standards essential to understanding legal obligations,” it ultimately focused

solely on the question of fair use so as “to avoid ‘pass[ing] on questions of constitutionality . . .
unless such adjudication is unavoidable.’” Id. at 447 (quoting Spector Motor Service v.
McLaughlin, 323 U.S. 101, 105 (1944)).
The Court of Appeals ruled that this Court had misapplied the fair use standard, and it
remanded the case for further proceedings on the question of whether Public Resource’s posting of
standards was non-infringing fair use. The Court of Appeals specifically called for further
development of the factual record, as Public Resource discusses below. The Court of Appeals
deferred the “far thornier question” of whether standards that have been incorporated by reference
necessarily enter the public domain, leaving that issue for consideration on a later appeal if
necessary. Id. at 441, 447, 459. The Court of Appeals also declined to address the question of
ownership generally, ruling only that Public Resource had not sufficiently argued below that the
standards were “works of the United States Government” due to the participation of government
employees in developing the standards. Id. at 446.
The Court of Appeals’ opinion stressed the importance of a more detailed fair use analysis
and called for further development of the factual record. The Court of Appeals stated that:
though there is reason to believe “as a matter of law” that PRO’s reproduction of certain
standards “qualif[ies] as a fair use of the copyrighted work,” id. (internal quotations and
citations omitted), we ultimately think the better course is to remand the case for the
district court to further develop the factual record and weigh the factors as applied to
PRO’s use of each standard in the first instance. As we have emphasized, the standards
here and the modes of their incorporation vary too widely to conclusively tell goose apart
from gander, and the record is just too thin to tell what went into the sauce. On remand, the
district court will need to develop a fuller record regarding the nature of each of the
standards at issue, the way in which they are incorporated, and the manner and extent to
which they were copied by PRO in order to resolve this “mixed question of law and fact.”

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Id. This is not to say that the district court must analyze each standard individually.
Instead, it might consider directing the parties, who poorly served the court by treating the
standards interchangeably, to file briefs addressing whether the standards are susceptible to
groupings that are relevant to the fair use analysis.
896 F.3d at 448-49 (emphasis added).
The Court of Appeals offered additional legal guidance regarding the specific fair use
factors. Regarding the first factor, the Court of Appeals observed that, on the record, Public
Resource’s use appeared to be noncommercial and that
in various circumstances, courts have recognized that a secondary work “can be
transformative in function or purpose without altering or actually adding to the original
work.” . . . Where an incorporated standard provides information essential to
comprehending one’s legal duties, for example, this factor would weigh heavily in favor of
permitting a nonprofit seeking to inform the public about the law to reproduce in full the
relevant portions of that particular standard. . . . By contrast, where knowing the content of
an incorporated standard might help inform one’s understanding of the law but is not
essential to complying with any legal duty, the nature of PRO’s use might be less
transformative and its wholesale copying, in turn, less justified.
896 F.3d at 450. With respect to the second factor, the Court of Appeals noted that, “where the
consequence of the incorporation by reference is virtually indistinguishable from a situation in
which the standard had been expressly copied into law, this factor weighs heavily in favor of fair
use.” Id. at 452.
On the fourth factor, the Court of Appeals held:
PRO’s use was not for “commercial purposes,” and so the district court’s inference cannot
be sustained on the basis of undisputed evidence in the summary judgment record. That
said, the SDOs are right to suggest that there may be some adverse impact on the market
for the copyrighted works PRO reproduced on its website. But it remains unclear from this
record just how serious that impact is.
Id. at 452-53 (emphasis added).
Taken together, the Court of Appeals’ decision and remand order call for further
development of the factual record. To provide the Court all the relevant facts, including new facts
that have unfolded in the years since the earlier proceedings, Public Resource seeks further

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discovery relevant to its fair use defense. This is particularly necessary for the fourth fair use
factor (the effect of the use on the potential market), which the Court of Appeals singled out as
being insufficiently developed. Id. Because the full scope of financial information available at the
close of discovery was included in the record on appeal, it seems impossible to satisfy the Court of
Appeals’ mandate by simply recharacterizing the same information already presented. Additional
factual material is necessary.
There is now information relevant to the fourth fair use factor that was not available at the
close of fact discovery and which is necessary for the Court to make a sound decision. Plaintiffs
argue that Public Resource should be restricted to the discovery of four years ago as a matter of
diligence (Mot. at 2, 4-5), but a great deal of the material Public Resource requests did not exist at
that time. Finally, focused fact discovery will not unfairly prejudice Plaintiffs, who waited over
half a year before addressing with this Court the remand order issued in July 2018.
One crucial category of information that was not previously available is updated sales
figures for the standards at issue. Those standards have been on sale for three and a half years
since the close of fact discovery in 2015, encompassing both multiple years in which Public
Resource had taken down the standards and nearly six months during which Public Resource has
again displayed the standards. The sales figures during that period and up until the present are
necessary to determine what effect, if any, Public Resource’s use has on the market for the
standards. Data from the years in which Public Resource had ceased to provide the standards and
from the six months after Public Resource restored the standards will give a needed comparison to
the earlier evidence.
Similarly, the ASTM Plaintiffs have released later versions of many of the standards at
issue since the close of fact discovery. Because it is likely that many persons seeking standards

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will choose a newer, non-incorporated version over an older incorporated version, comparison of
the sales of new and old versions is necessary to show a “cannibalizing” effect, which likely
accounts for sales trends that Plaintiffs ascribe to Public Resource’s actions. Likewise, the number
of visitors to Plaintiffs’ online reading rooms and the number of views of the relevant standards
will show whether those online reading rooms are “cannibalizing sales” of the standards at issue, a
question the Court of Appeals raised explicitly with respect to the fourth fair use factor. 896 F.3d
at 453. Sales figures of materials and services that Plaintiffs have sold in conjunction with the
standards will show whether Plaintiffs have used the incorporation by reference of the standards
into law in order to create a larger market for related products and services.
Finally, depositions of three or four key government officials who have knowledge of the
incorporation of the standards at issue, as well as updated document discovery concerning the
promotion of incorporation by reference, is necessary to inform the Court regarding the way in
which these standards were incorporated, which the Court of Appeals stated required further
factual development. See 896 F.3d at 442 (“The process for incorporation by reference varies
widely by jurisdiction.”).
Public Resource Has Good Cause to Request Focused Discovery Into Plaintiffs’
“Joint Ownership” Theory
Public Resource also seeks further discovery regarding ownership of the standards at issue.
While Public Resource intends to move for summary judgment on its fair use defense, it remains
Plaintiffs’ burden to establish ownership to prevail on any future summary judgment motion.
Plaintiffs again oppose discovery on their ownership claims, just as they had earlier in the
case. Plaintiffs originally relied upon copyright registrations that identified their works as “works
made for hire.” When Public Resource showed that the volunteers who wrote the standards were

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not Plaintiffs’ employees, undermining the presumed basis for Plaintiffs’ registrations, Plaintiffs
abandoned that theory and instead argued that they had valid assignments from the volunteers.
When Public Resource sought discovery into those assignments, Plaintiffs fought to prevent any
discovery, arguing that alleged infringers had no standing to challenge ownership assertions. Dkt.
86. The Court granted discovery on ownership, which showed that Plaintiffs could not produce a
single assignment for the vast majority of standards at issue, and that many of the supposed
“assignments” were actually licenses (which do not convey standing to sue).
On summary judgment Plaintiffs argued that the standards were “joint works” – i.e.
copyrights jointly owned with each volunteer author (of which there were thousands), with
proceeds to be split equally. See Plaintiffs Memorandum in Support of Summary Judgement, Dkt.
118-1 at 16. Because some of these alleged “joint authors” were U.S. Government employees
acting in the course of their official duties, Plaintiffs’ new theory suggested there was an
additional public interest in the works, potentially affecting the analysis of both ownership
(pursuant to 17 U.S.C. § 105) and fair use. But because Plaintiffs pivoted to rely on this theory in
their summary judgment briefing, Public Resource did not have the opportunity to test that theory
in discovery. Public Resource needs that opportunity now.
To forestall that opportunity, Plaintiffs argue that Public Resource forfeited the issue of
ownership under a “law of the case” theory, stating both that this Court’s summary judgment
decision as to copyright ownership stands and that Public Resource failed to raise all of its
ownership arguments on appeal. Mot. at 2-4. Both of Plaintiffs’ arguments are incorrect.
First, the Court of Appeals did not decide any ownership issue on appeal; it held that
Public Resource had not sufficiently presented the “joint U.S. Government works” argument
below. 896 F.3d at 446 (citing Keepseagle v. Perdue, 856 F.3d 1039, 1053 (D.C. Cir. 2017) for the

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proposition that “‘legal theories not asserted’ in the district court ‘ordinarily will not be heard on
appeal’”). Remanded to this Court, with the summary judgment decision vacated in its entirety,
Plaintiffs once again have the burden of proving copyright ownership, which Public Resource may
rebut.
Second, Plaintiffs are also mistaken in claiming that Public Resource raised only the
question of U.S. Government involvement in the context of ownership on appeal. In its opening
brief, Public Resource explicitly raised all ownership issues before the Court of Appeals, including
that Plaintiffs did not author the standards over which they claim copyright ownership (Opening
Br. at 10-12); Plaintiffs initially relied on a faulty “work made for hire” argument to improperly
obtain copyright registrations that were based on false information (Opening Br. at 12); Plaintiffs
did not obtain or produce evidence of proper assignments for the standards at issue (Opening Br.
at 12-13); and that Plaintiffs fell back on an argument of joint ownership of the standards,
implicating joint ownership with U.S. Government employees (Opening Br. at 13-14). Public
Resource requested that the Court of Appeals remand for reconsideration all of these ownership
issues. Opening Br. at 50-52 (“Even if the Court affirms the decision below on all other issues, it
should vacate and remand to the district court to analyze the ownership issues, particularly the
U.S. government participation in creating all the works.”) (emphasis added).
The Court of Appeals vacated this Court’s summary judgment decision and remanded to
reconsider the fair use factors in light of the appellate opinion. 896 F.3d at 441. The only decision
that could have been “law of the case” was this Court’s summary judgment decision, which the
Court of Appeals completely vacated. When Plaintiffs move again for summary judgment, they
will have the burden of proving every element, including ownership. Accordingly, Public
Resource seeks additional discovery pertaining to Plaintiffs’ 11th hour “joint ownership” theory.

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Public Resource’s Proposal for Focused Discovery
Following the guidance of the Court of Appeals, but mindful as well of the need to
expedite resolution of this case, Public Resource requests the Court re-open discovery focused on
the following:
Fair Use
1.

Sales data updated to the present day, addressing:
a.

The standards at issue;

b.

Later versions of the standards at issue; and

c.

Supplemental materials and services such as guides and training relating to

the versions at issue and later versions of the standards at issue.
2.

Depositions of the plaintiffs under Fed. R. Civ. P. 30(b)(6), limited to questions

about sales data;
3.

Information about usage of plaintiffs’ online reading rooms for the standards at

4.

Document discovery regarding communications by or with government officials

issue.

regarding incorporation into law of, or enforcement of, standards by government.
5.

Depositions of three or four key current or former government employees involved

in the incorporation into law of Plaintiffs’ standards and the coordination between Plaintiffs and
government bodies regarding incorporation of standards into law.
Ownership
Further document discovery on the participation of U.S. Government employees in standards
development, as volunteers on committees preparing, editing, updating or voting on standards;
members of committee hierarchies with authority over the preparation of standards; members of

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SDO boards or committees liaising with government agencies; attendees at meetings to discuss
promotion of standards-as-laws or adoption of standards by governments; and instructions or
commentary from government officials regarding standards.
General
Depositions of any declarants that the parties will rely on in a summary judgment motions
who were not previously deposed, or who will be providing declarations that address subject
matters on which they were not previously deposed.
Public Resource believes that discovery can be completed within 9 months, at which point
the parties would submit renewed motions for summary judgment, focusing on four issues: (1)
whether the Plaintiffs have met their burden to establish ownership of rights in the standards at
issue; (2) if so, whether Public Resource’s use of the standards is a lawful fair use; (3) whether
Public Resource’s use of the Plaintiffs’ marks is a nominative fair use; and, (4) whether (and, if so,
what) injunctive relief is appropriate. Public Resource notes that the Court of Appeals expressly
decided to “leave for another day the question of whether the Constitution permits copyright to
persist in works incorporated by reference into law.” 896 F.3d at 447. It did not address the
questions of copyrightability under 17 U.S.C. § 102(b) and the merger doctrine, and the
concurring opinion of Judge Katsas specifically stated that those issues “remain open in the
unlikely event that disseminating ‘the law’ might be held not to be fair use.” Id. at 459. Public
Resource wishes to preserve those issues and related arguments that it previously addressed. It
believes that the Court can focus on the fair use, ownership, and injunction issues in new crossmotions while allowing the parties to incorporate by reference their arguments on the other earlier
issues; any further decision by the Court should maintain those earlier issues for review by the
Court of Appeals.

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Public Resource’s Proposal for Scheduling Summary Judgment Briefing
As Plaintiffs correctly stated, the parties agree that the fair use questions are amenable to
summary judgment. Public Resource suggests briefing both this case and the AERA case in
parallel as a matter of judicial economy and to prevent conflicting decisions. The Court of Appeals
suggested that the standards at issue in both cases should be grouped in some manner to allow for
a more holistic determination by the Court, and allowing the AERA case to proceed ahead of this
case would make it difficult or impossible to factor the standards at issue in both cases into a
single categorization structure, particularly if discovery has not yet concluded in this action.
Although the facts of the cases may differ, most of the underlying legal principles and ultimate
factors that the Court must weigh are identical. Similarly, if the Court of Appeals again faces these
cases on a subsequent appeal, it will likely want to address them simultaneously and in
consolidated fashion.
For these reasons, Public Resource suggests that the Court consolidate the summary
judgment briefing for both the AERA and ASTM cases, or at the very least to coordinate the
briefing.
If the Court consolidates the summary judgment briefing, Public Resource requests that
opening cross-motions be filed 60 days after the close of discovery, with amicus briefs due 30
days after the date for opening cross-motions, opposition briefs due 45 days after opening crossmotions, and reply briefs due 14 days thereafter.
If the Court does not consolidate the summary judgment briefing, Public Resource requests
that the Court stagger briefing in the two cases using the same schedule that the Court set in the
prior summary judgment briefing three years ago, with the opening motion by the ASTM
Plaintiffs due 30 days after the close of discovery. Public Resource’s joint opening and opposition

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brief in ASTM would be due 30 days later, and the AERA Plaintiffs’ opening motion would be due
that same day. Thirty days later, the ASTM Plaintiffs will file their joint reply and opposition, and
Public Resource will file its joint opening and opposition brief in the AERA case on that same
day. Fourteen days later, Public Resource will file its reply in the ASTM case and a further 14 days
thereafter the AERA Plaintiffs will file their joint opposition and reply. Public Resource’s reply in
the AERA case will be due a final 14 days thereafter. Amicus briefs in each respective case will be
due 14 days after Public Resource’s joint opening/opposition brief in each case.
CONCLUSION
For the foregoing reasons, Public Resource requests that the Court conduct a status
conference to address these issues, reopen discovery on a limited basis, and set a briefing schedule
that will allow the parties to satisfy the Court of Appeals’ requests concerning development of the
record and grouping of the standards at issue.

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Dated: February 14, 2019

Respectfully submitted,

/s/ Andrew P. Bridges
Corynne McSherry (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: (415) 436-999
Andrew P. Bridges (admitted)
[e-mail]
Matthew B. Becker (pro hac vice)
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
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/Counter-Plaintiff
Public.Resource.Org, Inc.

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CERTIFICATE OF SERVICE
In accordance with LCvR 5.3, I hereby certify that on February 14, 2019, I caused a true
and correct copy of the foregoing Joint Status Report to be served on all counsel of record through
the Courts CM/ECF.
/s/ Andrew P. Bridges
Andrew P. Bridges (admitted)

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