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

Filing 196

REPLY to opposition to motion re 194 MOTION to Stay All Deadlines Pending Decision of United States Supreme Court, Georgia v. Public.Resource.Org, Inc. filed by NATIONAL FIRE PROTECTION ASSOCIATION, INC.. (Klaus, Kelly)

Case 1:13-cv-01215-TSC Document 196 Filed 08/20/19 Page 1 of 5

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.
REPLY IN SUPPORT OF MOTION TO STAY PENDING DECISION OF UNITED
STATES SUPREME COURT IN GEORGIA V. PUBLIC.RESOURCE.ORG, INC.
The balance of efficiencies and prejudice weigh strongly in favor of staying this litigation
pending the Supreme Court’s decision in Public.Resource.Org, Inc.’s (“PRO”) case against
Georgia. PRO will not suffer any prejudice as a result.
PRO asserts that “[n]o party to this case can predict with any certainty whether the
Supreme Court’s [decision] . . . will influence the outcome of this case,” and that Georgia v.
PRO is “unlikely to affect [this case] significantly.” Opp. at 1-2. But when PRO urged the
Supreme Court to grant certiorari in the Georgia v. PRO case—notwithstanding the fact that
PRO won in the Eleventh Circuit—PRO argued that “all parties,” i.e., “all” parties in PRO’s
various litigation efforts, including this case, “would benefit from [the Supreme] Court’s earliest
guidance,” see discussion at Mot. at 2 (quoting PRO Br. in Opp. 14 (U.S. No. 18-1150)). PRO’s
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Case 1:13-cv-01215-TSC Document 196 Filed 08/20/19 Page 2 of 5

merits brief in the Supreme Court is due October 9, 2019. PRO does not deny that it is going to
use at least part of that brief to swing for the fences, and to ask the Court to declare that any
standard incorporated by reference loses copyright protection. Likewise, PRO’s own opposition
brief contends that, for example, the “government edicts doctrine” is “highly important to the fair
use inquiry.” Opp. at 3. Whether or not Plaintiffs agree (they do not), the point is that PRO is
going to make the same arguments in both this Court and the Supreme Court and there is simply
no reason for this Court to guess as to how they will be decided.1
Even the case that PRO relies on here, Painters’ Pension Trust Fund of Washington, D.C.
& Vicinity v. Manganaro Corp., Maryland, 693 F. Supp. 1222 (D.D.C. 1988), makes clear that
where another pending case “might illuminate or resolve matters also confronting [this] court,”
equity favors granting a stay. Id. at 1224. PRO’s disingenuous contention that it views Georgia
v. PRO as “rather different” is inconsistent with its prior statements and barred by judicial
estoppel. See New Hampshire v. Maine, 532 U.S. 742, 750 (2001) (“judicial estoppel prevents
parties from ‘playing ‘fast and loose with the courts’’” (citation omitted)).
Plaintiffs will suffer prejudice if this case is not stayed. While Georgia v. PRO does
involve different factual and legal issues (as Plaintiffs will explain in an amicus brief they intend
to file at the Supreme Court), the Supreme Court has not weighed in on these sorts of issues, like
the government edicts doctrine, for over a hundred years. Plaintiffs may want to accommodate

PRO’s discovery efforts also reveal that it plans to make many of the same arguments it made
in Georgia v. PRO at the summary judgment stage. For example, just yesterday, PRO took the
deposition of Mia Marvelli, Executive Director of the California Building Standards Commission
and asked her a number of questions regarding California’s claim of copyright in the California
Electric Code.
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PRO’s arguments in appeal and the Supreme Court’s ultimate decision in Georgia v. PRO in
their presentation of facts and law on fair use here.2
In contrast, PRO does not stand to suffer prejudice at all. PRO asserts the elusive harm
of having “to postpone . . . decisions” of “how best to fulfill its mission” while the case is
pending. Opp. at 1-2. It does not point to anything in particular it has done or would do
differently if this motion were resolved in its favor (or against it). Indeed, PRO has reposted
Plaintiffs’ standards to the Internet Archive following remand from the Court of Appeals—it is
plainly not deferring action until a judgment from this Court. And while PRO attempts to fault
Plaintiffs for their earlier statements reflecting the ongoing harm they suffer as long as PRO
engages in its infringing conduct, Opp. at 4, it is completely consistent for Plaintiffs to both be
outraged and harmed by PRO’s conduct and yet not want to expend the parties’ and judicial
resources rushing to litigate this matter while the Supreme Court may be about to address the
scope of the “government edicts government” for the first time in a century.
Finally, the burden on the Court and parties is real—discovery will close soon, but PRO
continues to notice third party depositions of government officials, including noticing a
deposition of the U.S. Department of Labor for September 3rd and of the National Archives and
Records Administration for September 9th. Summary judgment briefing is no small exercise and
will occupy the parties from October through December. See Scheduling Order, entered
5/21/2019). PRO says it will be inefficient if the American Education Research Association, Inc.

PRO once again attempts to resuscitate its challenges to Plaintiffs’ ownership of their
copyrighted works, suggesting that is an issue for summary judgment, when those issues are now
foreclosed by law-of-the case. Trout v. Garrett, 780 F. Supp. 1396, 1425 (D.D.C. 1991) (“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.”); see also Dkt. 188 (citing cases).

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et al. v. Public.Resource.Org, Inc., No. 1:14-cv-00857-TSC-DAR case is not also stayed, but the
AERA Plaintiffs have not opposed this Motion and the Court has discretion to stay that case too.
For the foregoing reasons, Plaintiffs respectfully request that this Court grant a stay of
this action and suspend all deadlines pending the Supreme Court’s decision in Georgia. v. PRO.

Dated: August 20, 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 (pro hac vice)
Rose Leda. Ehler (pro hac vice)
Munger, Tolles & Olson LLP
560 Mission St., 27th Floor
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
[e-mail]
Rachel G. Miller-Ziegler (D.C. Bar: 229956)
Munger, Tolles & Olson LLP
1155 F St. NW, 7th Floor
Washington, DC 20004
Tel: [phone]
Email: [e-mail]
Counsel for National Fire Protection Association, Inc.

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Case 1:13-cv-01215-TSC Document 196 Filed 08/20/19 Page 5 of 5

/s/ J. Blake Cunningham
J. Blake Cunningham
King & Spalding LLP
101 Second Street, Ste. 2300
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
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]
Counsel for American Society of Heating, Refrigerating,
and Air Conditioning Engineers

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