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

Filing 200

MEMORANDUM re 198 MOTION for Summary Judgment filed by NATIONAL FIRE PROTECTION ASSOCIATION, INC., AMERICAN SOCIETY FOR TESTING AND MATERIALS, AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC. by AMERICAN SOCIETY FOR TESTING AND MATERIALS, AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC., NATIONAL FIRE PROTECTION ASSOCIATION, INC.. (Fee, J.)

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.
PLAINTIFFS’ MEMORANDUM OF LAW
IN SUPPORT OF THEIR SECOND MOTION FOR
SUMMARY JUDGMENT AND FOR A PERMANENT INJUNCTION

TABLE OF CONTENTS
Page

INTRODUCTION ...........................................................................................................................1 
BACKGROUND .............................................................................................................................3 
A. 

Prior Proceedings In This Court ..............................................................................3 
1. 

Factual Background .....................................................................................3 

2. 

This Court’s Summary Judgment Decision And Permanent
Injunction .....................................................................................................5 

B. 

The D.C. Circuit’s Holdings And Directions For Remand ......................................7 

C. 

Proceedings And Facts Developed On Remand ......................................................8 

ARGUMENT .................................................................................................................................10 
I. 

Plaintiffs Are Entitled To Summary Judgment On Their Copyright Claims.....................10 
A. 

Plaintiffs Own Valid Copyrights In The Works ....................................................10 

B. 

PRO Cannot Meet Its Burden To Show That Its Indiscriminate, Wholesale
Copying Of Plaintiffs’ Works Is Fair Use .............................................................12 
1. 

Factor 1: PRO’s Use Is Not Transformative, Its Purpose Is The
Same Purpose That Plaintiffs Already Serve, And PRO Fails To
Satisfy The D.C. Circuit’s “Essential To Comply With Any Legal
Duty” Test ..................................................................................................13 
a. 

PRO’s alleged goal of facilitating access is not
transformative because Plaintiffs already serve this
purpose. ..........................................................................................14 

b. 

PRO cannot meet its burden to show that its postings of
Plaintiffs’ standards are essential to complying with a legal
duty. ...............................................................................................16 

2. 
3. 

Factor 3: PRO Copies The Entirety Of The Works—It Does Not
Even Attempt To Limit Its Copying And Distribution To Portions
Of Standards That Are Essential To Complying With The Law ...............24 

4. 
II. 

Factor 2: Plaintiffs’ Copyrighted Works Are Important To
Advance The Progress Of Science And The Useful Arts ..........................24 

Factor 4: PRO’s Substitutional Use Undermines The Actual And
Potential Markets for Plaintiffs’ Works .....................................................25 

Plaintiffs Are Entitled To Summary Judgment On Their Claims Of Trademark
Infringement And False Designation Of Origin ................................................................31 

i

TABLE OF CONTENTS
(continued)
Page
A. 
B. 
III. 

Nominative Fair Use Is An Affirmative Defense ..................................................32 
PRO Cannot Meet Its Burden To Establish Any Of The Three Nominative
Fair Use Factors .....................................................................................................33 

Plaintiffs Are Entitled To A Permanent Injunction ...........................................................38 
A. 

Plaintiffs Will Suffer Irreparable Harm Without An Injunction ............................38 
1. 

Economic Harm And Ramifications To Plaintiffs’ Business Model .........38 

2. 

Harm To Plaintiffs’ Right To Exclude Caused By Repeat
Infringement ...............................................................................................40 

3. 

Harm To Plaintiffs’ Reputations ................................................................41 

B. 

Remedies Available At Law Are Inadequate.........................................................42 

C. 

The Balance Of Hardships Favors Issuing An Injunction .....................................43 

D. 

The Public Interest Favors Issuing An Injunction. ................................................44 

CONCLUSION ..............................................................................................................................45 

ii

TABLE OF AUTHORITIES
Page(s)
FEDERAL CASES
Am. Geophysical Union v. Texaco Inc.,
60 F.3d 913 ..............................................................................................................................14
Am. Soc’y for Testing & Materials, et al. v. Public.Resource.Org, Inc.,
896 F.3d 437 (D.C. Cir. 2018) ......................................................................................... passim
Am. Soc’y for Testing & Materials v. Public.Resource.org, Inc.,
No. 13-CV-1215 (TSC), 2017 WL 473822 (D.D.C. Feb. 2, 2017) ................................. passim
Australian Gold, Inc. v. Hatfield,
436 F.3d 1228 (10th Cir. 2006) ...............................................................................................35
Authors Guild, Inc. v. HathiTrust,
755 F.3d 87 (2d Cir. 2014)...........................................................................................14, 16, 20
Authors Guild v. Google, Inc.,
804 F.3d 202 (2d Cir. 2015).........................................................................................20, 25, 27
Bell Hellicopter Textron Inc. v. Airbus Helicopters,
78 F. Supp. 3d 253 (D.D.C. 2015) ...........................................................................................42
BMG Music v. Gonzalez,
430 F.3d 888 (7th Cir. 2005) ...................................................................................................29
Breaking the Chain Found. v. Capitol Educ. Support, Inc.,
589 F. Supp. 2d 25 (D.D.C. 2008) .....................................................................................40, 41
Cambridge Univ. Press v. Patton,
769 F.3d 1232 (11th Cir. 2014) ...............................................................................................26
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) ......................................................................................................... passim
Capitol Records, LLC v. ReDigi Inc.,
910 F.3d 649 (2d Cir. 2018).....................................................................................................31
Celotex Corp. v. Catrett,
477 U.S. 317 (1986) .................................................................................................................12
Century 21 Real Estate Corp. v. Lendingtree, Inc.,
425 F.3d 211 (3d Cir. 2005)...............................................................................................32, 33
iii

TABLE OF AUTHORITIES
(continued)
Page(s)
Chrysler Corp. v. Newfield Publ’ns,
880 F. Supp. 504 (E.D. Mich. 1995) ........................................................................................33
Concrete Mach. Co. v. Classic Lawn Ornaments, Inc.,
843 F.2d 600 (1st Cir. 1988) ....................................................................................................44
David’s Bridal, Inc. v. House of Brides, Inc.,
No. 06 Civ. 5660 (SRC), 2010 WL 323306 (D.N.J. Jan. 20, 2010) ........................................34
eBay Inc. v. MercExchange, LLC,
547 U.S. 388 (2006) .............................................................................................................6, 38
Fox News Network, LLC v. TVEyes, Inc.,
883 F.3d 169 (2d Cir. 2018)...................................................................................12, 13, 14, 16
Fox Television Stations, Inc. v. Filmon X LLC,
966 F. Supp. 2d 30 (D.D.C. 2013) ...............................................................................42, 44, 45
Groupe SEB USA, Inc. v. Euro-Pro Operating LLC,
774 F.3d 192 (3d Cir. 2014).....................................................................................................40
Hanley-Wood LLC v. Hanley Wood LLC,
783 F. Supp. 2d 147 (D.D.C. 2011) .........................................................................................41
Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539 (1985) ...........................................................................................................25, 26
Home Box Office, Inc. v. Showtime/The Movie Channel Inc.,
832 F.2d 1311 (2d Cir. 1987)...................................................................................................35
Infinity Broad. Corp. v. Kirkwood,
150 F.3d 104 (2d Cir. 1998)...............................................................................................14, 16
Int’l Info. Sys. Sec. Certification Consortium v. Sec. Univ., LLC,
823 F.3d 153 (2d Cir. 2016).....................................................................................................32
Int’l Kennel Club of Chi., Inc. v. Mighty Star, Inc.,
846 F.2d 1079 (7th Cir. 1988) .................................................................................................36
Kizas v. Webster,
492 F. Supp. 1135 (D.D.C. 1980), aff’d, 770 F.2d 524 (D.C. Cir. 1983) ................................17

iv

TABLE OF AUTHORITIES
(continued)
Page(s)
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,
543 U.S. 111 (2004) .................................................................................................................32
Mary Kay, Inc. v. Weber,
601 F. Supp. 2d 839 (N.D. Tex. 2009) ....................................................................................32
Mazer v. Stein,
347 U.S. 201 (1954) .................................................................................................................31
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster,
518 F. Supp. 2d 1197 (C.D. Cal. 2007) ...................................................................................40
MOB Music Publ’g. v. Zanzibar on the Waterfront, LLC,
698 F. Supp. 2d 197 (D.D.C. 2010) .........................................................................................11
New Kids on the Block v. News Am. Publ’g, Inc.,
971 F.2d 302 (9th Cir. 1992) ...................................................................................................33
Presidio Components, Inc. v. Am. Technical Ceramics. Corp.,
702 F.3d 1351 (Fed. Cir. 2012)................................................................................................38
Roeslin v. District of Columbia,
921 F. Supp. 793 (D.D.C. 1995) ..............................................................................................11
S & R Corp. v. Jiffy Lube Int’l, Inc.,
968 F.2d 371 (3d Cir. 1992).....................................................................................................40
Soc’y of the Holy Transfiguration Monastery, Inc. v. Archbishop Gregory of
Denver, Colorado,
685 F. Supp. 2d 217 (D. Mass. 2010), aff’d 689 F.3d 29 (1st Cir. 2012) ................................14
TechnoMarine SA v. Giftports, Inc.,
758 F.3d 493 (2d Cir. 2014).....................................................................................................40
Toyota Motor Sales, U.S.A., Inc. v. Tabari,
610 F.3d 1171 (9th Cir. 2010) ...........................................................................................32, 34
TrafficSchool.com, Inc. v. Edriver Inc.,
653 F.3d 820 (9th Cir. 2011) ...................................................................................................36
Triad Sys. Corp. v. Se. Express Co.,
64 F.3d 1330 (9th Cir. 1995) ...................................................................................................44

v

TABLE OF AUTHORITIES
(continued)
Page(s)
Trout v. Garrett,
780 F. Supp. 1396 (D.D.C. 1991) ................................................................................11, 31, 33
Veeck v. S. Bldg. Code Cong. Int’l,
293 F.3d 791 (5th Cir. 2002) .............................................................................................33, 34
Video Pipeline, Inc. v. Buena Vista Home Entm’t, Inc.,
342 F.3d 191 (3d Cir. 2003).....................................................................................................16
Worldwide Church of God v. Philadelphia Church of God, Inc.,
227 F.3d 1110 (9th Cir. 2000) ...............................................................................12, 13, 14, 25
FEDERAL STATUTES
5 U.S.C. § 552 ..............................................................................................................................3, 4
5 U.S.C. § 552(a)(1).........................................................................................................................6
15 U.S.C. § 1051 ............................................................................................................................32
15 U.S.C. § 1116 ............................................................................................................................38
17 U.S.C. § 101 ..............................................................................................................................42
17 U.S.C. § 102(b) .....................................................................................................................6, 12
17 U.S.C. § 105 ................................................................................................................................6
17 U.S.C. § 107 ........................................................................................................................12, 31
17 U.S.C. § 107(1) .........................................................................................................................13
17 U.S.C. § 107(2) .........................................................................................................................24
17 U.S.C. § 107(3) .........................................................................................................................24
17 U.S.C. § 107(4) .........................................................................................................................25
17 U.S.C. § 410(c) .........................................................................................................................11
17 U.S.C. § 502(a) .........................................................................................................................38
17 U.S.C. § 504(c) .........................................................................................................................43

vi

TABLE OF AUTHORITIES
(continued)
Page(s)
42 U.S.C. § 6833(b)(2)(A) .............................................................................................................19
42 U.S.C. § 6833(b)(2)(B)(i) .........................................................................................................19
STATE STATUTES
Alaska Stat. Ann. § 44.42.067(b)-(c) .............................................................................................30
Md. Public Safety Code § 9-303 ....................................................................................................30
Tex. Agric. Code Ann. § 17.072 ....................................................................................................30
FEDERAL REGULATIONS
10 C.F.R. § 433.4 ...........................................................................................................................20
40 C.F.R. § 2.2.4.3(d) ....................................................................................................................18
40 C.F.R. § 2.2.6 ............................................................................................................................18
40 C.F.R. § 63.14 ...........................................................................................................................21
40 C.F.R. § 86.113-04(a)(1)...........................................................................................................17
40 C.F.R. § 1065.710 .....................................................................................................................18
46 C.F.R. § 56.50-105(a)(1)(ii)......................................................................................................15
46 C.F.R. § 56.01-2........................................................................................................................19
46 C.F.R. § 56.25-20(b) .................................................................................................................19
46 C.F.R. § 56.60-2........................................................................................................................21
46 C.F.R. § 119.440 .......................................................................................................................21
59 C.F.R. 130 .................................................................................................................................15
STATE REGULATIONS
30 Tex. Admin. Code § 217.326 ....................................................................................................30

vii

TABLE OF AUTHORITIES
(continued)
Page(s)
CONSTITUTIONAL PROVISIONS
U.S. Const. Article I, § 8, cl. 8 .......................................................................................................24
OTHER AUTHORITIES
3 M. Nimmer & D. Nimmer,
Nimmer on Copyright § 13.05[A][4] (1993) ...........................................................................26
Pierre N. Leval, Toward a Fair Use Standard,
103 Harv. L. Rev. 1105 (1990) ................................................................................................14

viii

INTRODUCTION
The D.C. Circuit remanded for this Court to consider Public.Resource.Org’s (“PRO”)
affirmative defenses of copyright and trademark fair use on a standard-by-standard basis.1 The
D.C. Circuit did not decide whether PRO’s defenses would apply to any or all of the standards
that had been incorporated by reference. Indeed, the court recognized “it may . . . turn out that
PRO . . . use[s] incorporated standards in a manner not encompassed by the fair use doctrine.”
Am. Soc’y for Testing & Materials, et al. v. Public.Resource.Org, Inc., 896 F.3d 437, 447 (D.C.
Cir. 2018) (“ASTM II”). That is exactly how it has turned out. Under the fair use framework that
the D.C. Circuit said must apply in this case,2 PRO’s fair use defense fails as a matter of law.
The D.C. Circuit’s opinion makes clear that the key question on copyright fair use is
whether the specific text PRO copied and distributed is “essential to complying with [a] legal
duty,” as compared to just “help[ing] inform one’s understanding of the law.” ASTM II, 896
F.3d at 450 (emphasis added). If PRO cannot show that everything it copied and distributed
imposes “legally binding requirements” or “legal obligations,” then PRO cannot meet its burden
to prove that its use was fair. Id. at 442-43. PRO has not done the work the D.C. Circuit said it
must. Plaintiffs asked PRO to identify, inter alia, which portions of each incorporated standard
are alleged to impose binding legal obligations on individuals or entities. 2d Supp. SMF ¶¶ 30.

1

Plaintiffs move for summary judgment on 217 of their copyrighted standards
(“Works”), identified in Appendix A, all of which PRO copied and freely distributed online.
Plaintiffs cite to their previously filed Statements of Material Fact, Dkt. 118-2 Plaintiffs’
Statement of Material Facts (“SMF”), Supplemental Statements of Material Fact, Dkt. 155-1
(“Supp. SMF”), and supporting evidence. Plaintiffs have supplemented those statements of
material facts with additional facts cited in Plaintiffs’ Second Supplemental Statement of
Material Facts (“2d Supp. SMF”), filed concurrently herewith.
2

Plaintiffs respectfully disagree with the D.C. Circuit’s bases for reversing this Court’s
prior fair use ruling. Regardless, PRO cannot meet its burden under the fair use framework
articulated by the D.C. Circuit.
1

PRO’s response makes clear it will not be concerned with the D.C. Circuit’s direction. PRO
would say only that, if “[t]he entirety of [a] standard . . . is incorporated by reference,” then PRO
can copy and distribute en masse everything between the covers without concerning itself with
what, if anything, between those covers imposes a legal duty. Id. ¶¶ 31-32 (quoting PRO
Interrog. Resp. No. 19 at p. 14, id. No. 21, at p. 25). PRO cannot so shirk its obligations under
the D.C. Circuit’s opinion. That court could not have been clearer in rejecting PRO’s contention
that all standards incorporated by reference and all parts of those standards can be treated
“interchangeably.” ASTM II, 896 F.3d at 449 (emphasis added).
PRO cannot meet its burden to show fair use under the D.C. Circuit’s legal test for any of
the Works in issue here. For many of the Works, PRO has not identified authority (in the cover
sheets that it places in front of its copies of the standards, or anywhere else) that incorporates the
specific Work by reference at all. 2d Supp. SMF ¶¶ 36 (a), (c), (e)-(f), (k), (n), (p)-(u), (aa)-(dd),
(hh), (qq), (vv), (iii), (nnn), (ppp). These are a subset of 95 (92 ASTM, 1 NFPA, 2 ASHRAE)
Works for which PRO identifies inaccurate citations, including to regulations that do not exist
and citations to authorities which incorporate a different or later version of the standard (i.e., a
different Work). Id. ¶¶ 36, 37, 41, 42. PRO cannot claim fair use as to these standards when it
has not even identified an incorporation by reference. Moreover, PRO cites to authorities that
incorporate standards in a manner that the D.C. Circuit said was unlikely to give rise to fair use,
including as “discretionary reference procedure[s]” and as an obligation for public not private
actors. Id. ¶¶ 43, 45-48; ASTM II, 896 F.3d at 443. Beyond that PRO’s copying and posting is
over-inclusive for each and every one of the Works, which all contain a mix of material,
including portions that impose no legally binding obligation and thus are “not essential to
complying with any legal duty.” Id. at 450. Many portions—including background information

2

on the history of Plaintiffs or the standard, informational notes, diagrams, and explicitly
nonbinding appendixes—impose no legal duties (or were not incorporated at all). 2d Supp. SMF
¶¶ 49, 50-56, 59-68. PRO cannot justify its indiscriminate copying as fair use.
PRO also cannot meet its burden to show that its mass use of Plaintiffs’ logos and word
marks qualifies for the affirmative trademark defense of nominative fair use, and PRO should be
enjoined from doing so. If, as it says, PRO’s goal is to tell the public what “the law” is in
various jurisdictions, PRO could simply provide the name of the jurisdiction and how that
jurisdiction names its codes without using Plaintiffs’ logos and word marks.
PRO has no new facts and no new law to change or challenge this Court’s prior
conclusions as to ownership, copyright validity, or any of the other issues this Court decided in
Am. Soc’y for Testing & Materials v. Public.Resource.org, Inc., No. 13-CV-1215 (TSC), 2017
WL 473822 (D.D.C. Feb. 2, 2017) (“ASTM I”). Plaintiffs are entitled to summary judgment and
a permanent injunction to stop PRO’s mass exploitation of their copyrights and trademarks.
BACKGROUND
A.

Prior Proceedings In This Court
1.

Factual Background

Plaintiffs filed this action in August 2013, seeking to enjoin PRO’s mass copying and
distribution of Plaintiffs’ Works and PRO’s infringement of Plaintiffs’ trademarks.
Plaintiffs are self-funded nonprofit 501(c)(3) organizations that are part of a “complex
public-private partnership” for the development of voluntary consensus standards in fields like
public safety, building and construction, and product testing. ASTM I, 2017 WL 473822, at *2;
see also SMF ¶¶ 9, 86, 130. The standards Plaintiffs create are technical documents designed to
be used by industry professionals. Congress has recognized and preserved this partnership
through statute, encouraging federal agencies to incorporate by reference, pursuant to 5 U.S.C.
3

§ 552. ASTM I, 2017 WL 473822, at *3. The creation of voluntary consensus standards and
their incorporation by governmental entities “achieve several goals, including eliminating the
cost to the federal [and state] government[s] of developing [their] own standards, encouraging
long-term growth for U.S. enterprises, promoting efficiency, competition, and trade, and
furthering the reliance upon private sector expertise.” Id. (citing OMB Revised Circular, at 14);
see also, e.g., SMF ¶¶ 95-98, 265-69.
Plaintiffs support their overall mission-driving activities and recoup the substantial cost
(often in the millions or tens of millions of dollars) of creating their standards the way that
copyright owners generally do. They sell copies of the standards, including revised and updated
versions, to members of the public who use them—typically, people in the affected industries
who use the Works in their professional trade. See ASTM I, 2017 WL 473822, at *4, 10-11;
SMF ¶¶ 45-47, 106-08, 153-54. Without copyright protection, Plaintiffs “will face significant
difficulty raising the necessary revenue to continue producing high-quality voluntary consensus
standards.” ASTM I, 2017 WL 473822, at *13 (citing Plaintiffs’ and amici’s arguments). In
addition to their sales and licensing activities, Plaintiffs make all of the Works available for free
to the public on read-only websites they administer. 2d Supp. SMF ¶ 85.
PRO says it is devoted to “mak[ing] the law and other government materials more widely
available so that people, businesses, and organizations can easily read and discuss [the] laws and
the operations of government.” ASTM I, 2017 WL 473822, at *2 (quoting Dkt. 120-3, DSMF
¶¶ 1-2). Yet, as is clear from its conduct, PRO serves an ideological function much more than a
practical one.3 Before this litigation started, PRO copied the Works en masse, introducing errors

3

While PRO claims its goal is to disseminate “the law,” PRO has engaged in a campaign
to copy and publish copyrighted materials that are not government authored and impose no legal
obligations, including annotations of decisions interpreting statutes (a matter now before the
4

in the process, either by scanning them and using optical character recognition software to
convert images of the scanned pages into text; or by having untrained individuals retype and
reformat the text into HTML, SMF ¶¶ 182, 185, 188-91, 195, 214-216. PRO posted its errorridden copies of Plaintiffs’ Works—which still bear Plaintiffs’ word marks (and in some
instances logos too)—on its website and on the Internet Archive, where any user could
download, copy, or print them for free, without any restrictions on use of the standards or further
dissemination. ASTM I, 2017 WL 473822, at *3; SMF ¶¶ 23, 185, 201, 204. Plaintiffs’ Works
have been downloaded tens of thousands of times (or more) from the PRO and Internet Archive
sites. SMF ¶¶ 241, 242; 2d Supp. SMF ¶¶ 98, 102.
2.

This Court’s
Injunction

Summary

Judgment

Decision

And

Permanent

Following nearly two years of intensive discovery, both sides moved for summary
judgment on Plaintiffs’ copyright and trademark infringement claims,4 and Plaintiffs moved for a
permanent injunction. This Court granted Plaintiffs’ motion (as well as the Plaintiffs’ summary
judgment motion in the AERA case, see No. 14-cv-0857) and denied PRO’s motion. The Court’s
opinion resolved numerous issues, the vast majority of which the D.C. Circuit did not disturb.
First, the Court rejected PRO’s challenge to Plaintiffs’ ownership of the Works. The
Court held that Plaintiffs’ production of registration certificates for the Works established a
prima facie claim of copyright ownership, and that PRO failed to raise a triable issue on
ownership. ASTM I, 2017 WL 473822, at *6.
Supreme Court in Georgia v. Public.Resource.Org, Inc., Case No. 18-1150 (to be argued
December 2, 2019), and the Bluebook guide to legal citations, which Mr. Malamud purchased,
rekeyed, and converted to XHTML, encouraging others to distribute it, see C. Malamud Ltr. to
Dean M. Minow, Harvard Law School, available at https://law.resource.org/pub/us/code/blue/
harvard.letter.pdf.
4

Plaintiffs moved for summary judgment on nine representative Works. PRO moved for
summary judgment on all of Plaintiffs’ Works.
5

Second, the Court found no merit in PRO’s claim that the standards were
noncopyrightable “system[s]” or “method[s] of operation” under 17 U.S.C. § 102(b). The Court
held that the standards “contain expression that is certainly technical but that still bears markings
of creativity,” and that “there are many possible forms of expression”—including competing
standards—“through which the technical material in the standards could be conveyed.” ASTM I,
2017 WL 473822, at *9 (citations omitted).
Third, the Court rejected PRO’s constellation of arguments that the copyrights in
Plaintiffs’ Works were “stripped upon the incorporation by reference.” Id. at *15. The Court
found nothing in the Copyright Act (including 17 U.S.C. § 105, which says that “work[s] of the
United States Government” may not be copyrighted) supporting that result. Id. at *10. The
Court further concluded that federal policy and legislation enacted against the backdrop of
incorporation by reference embraced, and even encouraged, SDOs’ copyrights while
simultaneously ensuring the standards are “reasonably available to the class of persons affected
thereby,” 5 U.S.C. § 552(a)(1). Id. The Court rejected PRO’s argument that common-law cases
holding legal edicts authored by government officers in their capacities as such divested
Plaintiffs’ copyrights in their privately authored standards. Id. at *11-14. And the Court further
rejected PRO’s arguments for divestiture based on merger and scènes à faire. Id. at *15.
Fourth, the Court rejected PRO’s affirmative defenses of fair use under copyright and
trademark law. Id. at *15-18, 20-24. These issues were the subject of the D.C. Circuit’s opinion,
which we discuss in the next section (and below in the argument section).
Fifth, the Court concluded that Plaintiffs had demonstrated that each of the permanent
injunction factors favored that relief. Id. at *24-25 (citing eBay Inc. v. MercExchange, LLC, 547
U.S. 388, 391 (2006)). There was no doubt that PRO’s ongoing threat of continued copyright

6

infringement posed an irreparable injury and that money damages would be an inadequate
remedy. Id. at *24 (citing cases). The Court also concluded that the balance of harms and public
interest favored an injunction. Id. at *25.
B.

The D.C. Circuit’s Holdings And Directions For Remand

The D.C. Circuit reversed this Court’s summary judgment order on the ground that the
Court should reconsider PRO’s copyright and nominative trademark fair use defenses under
standards the D.C. Circuit articulated.
PRO’s sole ground of appeal on copyright ownership was that the participation of federal
government employees in the creation of certain standards rendered them noncopyrightable
works of the U.S. Government. The D.C. Circuit rejected this argument on the ground that it
was either “forfeited” (because PRO had not adequately presented it in the motions before this
Court) or “meritless.” ASTM II, 896 F.3d at 446.
On copyright validity, the D.C. Circuit declined to reach PRO’s argument that
incorporation stripped Plaintiffs’ Works of copyright protection.

The D.C. Circuit instead

directed that this Court reconsider PRO’s fair use defense. The D.C. Circuit faulted the parties
for “treating the standards interchangeably,” and directed reconsideration of PRO’s defense on
“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.” Id. at 449.
On the first fair use factor—whether PRO’s copying and distribution of Plaintiffs’ Works
is “transformative”—the D.C. Circuit set forth a sliding scale test: with respect to each portion
of each Work that PRO used, the pertinent question is whether the copied material merely
“help[ed] inform one’s understanding of the law” or whether it was “essential to complying with
[a] legal duty.” Id. at 450. If the former, PRO’s use would be “less transformative” and not
supportive of “wholesale copying”; if the latter, the factor would support PRO’s fair use defense.
7

Id. The D.C. Circuit provided further direction with respect to the remaining fair use factors,
including directing this Court to answer three specific questions about the harm to Plaintiffs’
potential markets and the value of the Works. Id. at 453.
On Plaintiffs’ trademark infringement claims, the D.C. Circuit directed this Court to
reconsider PRO’s affirmative defense of nominative fair use. The D.C. Circuit said that “it may
well be that PRO overstepped when it reproduced both ASTM’s logo and its word marks,” but
that this Court’s analysis of that defense would “provide valuable insight both into whether
trademark infringement has occurred and, if so, how broad a remedy is needed to address the
injury.” Id. at 456-57.
C.

Proceedings And Facts Developed On Remand

Following the D.C. Circuit’s decision, PRO reposted its versions of Plaintiffs’ Works to
the Internet Archive website. 2d Supp. SMF ¶ 11.
PRO did not do the standard-by-standard analysis that the D.C. Circuit instructed.
First, PRO has not produced any analysis of how the standards are incorporated by
reference. For example, PRO did nothing to confirm that the Works in fact are incorporated by
reference in the jurisdictions to which PRO cites on its cover pages and in its interrogatory
responses (let alone whether they are currently incorporated by reference in the relevant
jurisdiction). See 2d Supp. SMF ¶¶ 30-32. Nor has PRO analyzed how any incorporated by
reference Work actually does (or does not) impose binding legal obligations on anyone. See id.
Instead, PRO says that it “does not provide legal advice, and cannot provide advice regarding
what legal obligations an individual or entity may face as a result of hundreds of different
federal, state, and local laws,” and it therefore does not engage in any analysis of which parts of
standards have a legally binding effect. Id. ¶ 31 (PRO Interrog. Resp. No. 19 at p. 14).

8

Second, PRO has not shown that it is unable to paraphrase any (or any portions) of the
standards or limit its postings to those portions of the standards actually essential to complying
with a binding legal duty. Instead, PRO states, without analysis, that “[t]he entirety of each
standard” at issue here, “is incorporated by reference into the law, and it is therefore necessary to
reproduce the entire standard verbatim in order to accurately state what the law is.” Id. ¶ 32
(quoting PRO Interrog. Resp. No. 21 at p. 25).
Instead of undertaking the prescribed standard-by-standard analysis and adjusting its
activities accordingly, PRO responded to the D.C. Circuit’s opinion by reposting wholesale
copies of Plaintiffs’ Works to the Internet Archive website. 2d Supp. SMF ¶ 11. Today, anyone
can freely download, copy, print, edit, and redistribute PRO’s copies of Plaintiffs’ standards
from the Internet Archive website, regardless of whether those standards merely “help inform
one’s understanding” or whether they are “essential to complying with” the law. ASTM II, 896
F.3d at 450; SMF ¶¶ 202, 209; 2d Supp. SMF ¶ 92. PRO has done nothing to ensure that
individuals will not download Plaintiffs’ Works and use them for commercial purposes. For
instance, PRO does not use the Internet Archive’s offerings that restrict access to content, i.e.,
“borrowing” offered through Internet Archive’s Open Library initiative, whereby “registered
users can borrow books for two weeks, after which the loaned item expires and is removed from
the user’s device,” or encrypted access to Digital Accessible Information SYstem (DAISY) for
eligible blind or print-disabled individuals. 2d Supp. SMF ¶¶ 108-09; see also Supp. SMF ¶¶ 1-3
(regarding the Chafee Amendment and libraries for the visually impaired).

It is thus

unsurprising that PRO’s unauthorized copies of Plaintiffs’ Works are available for purchase on
the third-party website scribd.com. See 2d Supp. SMF ¶¶ 105-06.

9

Moreover, notwithstanding PRO’s claimed ignorance regarding who downloads the
Works or how they use the copies they have made, 2d Supp. SMF ¶ 104 (quoting PRO Interrog.
Resp. No. 23 at p. 34), PRO’s documents show that numerous industry professionals and
tradespeople have contacted PRO about the standards it copies and posts, id. ¶ 93
(PRO_00267293, engineer asking after remand from the D.C. Circuit, “Does Friday’s decision
mean you can update the site?”; PRO_00267241, engineering firm saying it heard about PRO
from a “colleague” and asking “How might we access the documents you offer?”); PRO
Interrog. Resp. No. 22 at p. 29). Of course, these are the same people who use Plaintiffs’
standards as part of their professional work—and who otherwise would either purchase a copy or
access the relevant standard through Plaintiffs’ free access websites. Id. ¶¶ 77, 93-94.
Other evidence confirms that PRO’s postings of Plaintiffs’ Works compete with and
substitute for Plaintiffs’ sales and offering of standards on their free access websites, harm that
will increase if PRO is not enjoined. Id. ¶¶ 91-104. Internet Archive’s website is ranked in the
top 300 websites around the world and reaches millions of people. Id. ¶ 103. As just one
example, when Plaintiffs last moved for summary judgment, the 2011 NEC had been
downloaded 30,350 times from the Internet Archive through February 2015. SMF ¶ 242. As of
October 4, 2019 (approximately 13 months since PRO reposted the NEC to the Internet Archive
website), the number is 40,151 and counting—meaning in just over a year, there have been
nearly 10,000 additional downloads. 2d Supp. SMF ¶ 102. The harm to Plaintiffs is growing.
ARGUMENT
II.

PLAINTIFFS ARE ENTITLED TO SUMMARY JUDGMENT ON THEIR COPYRIGHT CLAIMS
A.

Plaintiffs Own Valid Copyrights In The Works

This Court already has ruled that Plaintiffs own copyrights in nine Works that were the
subject of Plaintiffs’ previous motion for summary judgment. See ASTM I, 2017 WL 473822, at
10

*7 (“Plaintiffs are the owners of the copyrights at issue and have standing to bring their
claims.”). Plaintiffs’ registration certificates create a presumption of validity and ownership with
respect to both Plaintiffs’ individually registered works and to the original works that comprise
Plaintiffs’ registered compilations.5 Id. at *6-7; 17 U.S.C. § 410(c); MOB Music Publ’g. v.
Zanzibar on the Waterfront, LLC, 698 F. Supp. 2d 197, 202 (D.D.C. 2010). Plaintiffs have
registration certificates for each of the Works. 2d Supp. SMF ¶¶ 1-10. PRO’s sole challenge to
the ownership ruling was that the participation of government employees on some technical
committees for developing standards rendered the Works noncopyrightable. The D.C. Circuit
rejected that argument as either “forfeited” or “meritless.” ASTM II, 896 F.3d at 446. This
Court’s prior ownership rulings are therefore law of the case for the nine Works on which
Plaintiffs previously moved. Trout v. Garrett, 780 F. Supp. 1396, 1425 & n.71 (D.D.C. 1991).
The reasoning of the Court’s prior decision applies with equal force to the other 208
standards in this motion. As with the previous standards, PRO has not and cannot come forward
with any “evidence disproving Plaintiffs’ authorship.” ASTM I, 2017 WL 473822, at *7; see also
Zanzibar, 698 F. Supp. 2d at 202; Roeslin v. District of Columbia, 921 F. Supp. 793, 797
(D.D.C. 1995) (finding that because the copyright registration listed plaintiff as the author, the
“burden is thus on the defendant to establish” that plaintiff was not the author).6 And this Court
5

NFPA and ASHRAE’s registrations and certain of ASTM’s registrations were effective
within five years of first publication of the Works. 2d Supp. SMF ¶¶ 7, 9, 10. As to the ASTM
Works that were registered more than five years after the date of first publication, the Court
already correctly determined that it will “accord[] these [registrations] the same evidentiary
weight as if they had been registered within five years.” ASTM I, 2017 WL 473822, at *7 (citing
17 U.S.C. § 410(c)).
6

To the extent PRO’s challenges to copyrightability were not forfeited, the D.C. Circuit
reserved those questions for a future panel on “another day” and they are not the subject of this
remand. ASTM II, 896 F.3d at 441 (“Because the district court erred in its application of both
fair use doctrines, we reverse and remand, leaving for another day the far thornier question of
whether standards retain their copyright after they are incorporated by reference into law.”).
11

has already thoroughly considered and rejected PRO’s arguments regarding copyrightability
under § 102(b) and the effect of incorporation by reference on copyright. See ASTM I, 2017 WL
473822, at *7. There is no basis for reconsidering the Court’s prior rulings now.
B.

PRO Cannot Meet Its Burden To Show That Its Indiscriminate, Wholesale
Copying Of Plaintiffs’ Works Is Fair Use

The D.C. Circuit remanded for consideration of whether PRO’s use—on a standard-bystandard basis—qualifies as “fair” under 17 U.S.C. § 1077 as the D.C. Circuit construed that
provision in this case. To be clear, Plaintiffs respectfully disagree that this Court’s prior fair use
determination was incorrect, or that the D.C. Circuit’s delineation of the fair use factors is correct
under the law of fair use as articulated by the Supreme Court and other courts around the
country. Recognizing that the D.C. Circuit’s opinion is the law of the case and must be followed
on remand, Plaintiffs respectfully reserve their disagreements for further appellate proceedings.
But even under the D.C. Circuit’s test, PRO’s fair use defense cannot succeed. As the
party claiming the affirmative defense of fair use, PRO carries both the evidentiary burden and
ultimate burden of proof here. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590 (1994);
Fox News Network, LLC v. TVEyes, Inc., 883 F.3d 169, 176 (2d Cir. 2018). At summary
judgment, PRO must “make a sufficient showing” to establish its fair use defense. Celotex Corp.
v. Catrett, 477 U.S. 317, 323 (1986). If PRO cannot meet its burden on the balance of factors, its
defense fails at summary judgment. See Worldwide Church of God v. Philadelphia Church of
God, Inc., 227 F.3d 1110, 1120 (9th Cir. 2000) (no fair use when first three factors weighed

7

Fair use has four statutory considerations: “(1) the purpose and character of the use,
including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in
relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential
market for or value of the copyrighted work.” 17 U.S.C. § 107.
12

against fair use and fourth was, at best, neutral); TVEyes, 883 F.3d at 181 (no fair use when first
factor “slightly” favored fair use, second was neutral, and remaining two weighed against it).
1.

Factor 1: PRO’s Use Is Not Transformative, Its Purpose Is The Same
Purpose That Plaintiffs Already Serve, And PRO Fails To Satisfy The
D.C. Circuit’s “Essential To Comply With Any Legal Duty” Test

The first fair use factor requires courts to consider “the purpose and character of the use.”
17 U.S.C. § 107(1).8 The D.C. Circuit remanded for consideration of “whether, in certain
circumstances, distributing copies of the law for purposes of facilitating public access could
constitute transformative use.” ASTM II, 896 F.3d at 450 (emphasis added).
PRO’s wholesale copying and public distribution is not a transformative use. First, PRO
“merely repackages or republishes the [Works],” TVEyes, 883 F.3d at 177 (citations omitted);
and PRO’s alleged purpose of “facilitating public access” does not render that repackaging
transformative because Plaintiffs have the same informative purpose—and, indeed, achieve that
end more accurately than PRO does. Second, PRO cannot meet its burden to show that what it
has copied and distributed is essential to complying with a legal duty. For 95 (93 ASTM, 1
NFPA, 2 ASHRAE) of the standards, the regulation on which PRO relies does not incorporate by
reference the specific Work PRO posted. 2d Supp. SMF ¶¶ 36, 37, 41-42. PRO has done
nothing to determine the effect of the incorporation by reference authority and whether it is of a
kind that the D.C. Circuit said was unlikely to give rise to fair use. ASTM II, 896 F.3d at 442-43,
447 (describing, e.g., “discretionary reference procedure[s]”). Even where PRO can show that
an incorporation by reference imposes some legal obligation to comply with portions of a

8

Although the D.C. Circuit reversed this Court’s ruling on the commercial nature of
PRO’s use, the fact that it is a nonprofit does not make its use transformative: “the absence of a
commercial use merely eliminates the presumption of unfairness.” See Worldwide Church of
God, 227 F.3d at 1117 (citing Campbell, 510 U.S. at 584, “[T]he mere fact that a use is
educational and not for profit does not insulate it from a finding of infringement . . . .”).
13

standard, PRO copied the standards wholesale, including portions that have not been
incorporated by reference or that are not “essential to complying with any legal duty.” Id. at 450.
a.

PRO’s alleged goal of facilitating access is not transformative
because Plaintiffs already serve this purpose.

A transformative use “adds something new, with a further purpose or different character”
from the original work. Campbell, 510 U.S. at 579. It is not enough that the use “add[s] value or
utility.” Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 96 (2d Cir. 2014). The question instead
is whether a defendant’s use of a work “serves a new and different function from the original
work and is not a substitute for it.” Id.; see also Worldwide Church of God, 227 F.3d at 1120
(translation not fair use).

“[A] use of copyrighted material that ‘merely repackages or

republishes the original’ is unlikely to be deemed a fair use.” TVEyes, 883 F.3d at 177 (quoting
Infinity Broad. Corp. v. Kirkwood, 150 F.3d 104, 108 (2d Cir. 1998) (quoting Pierre N. Leval,
Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1111 (1990)).
The D.C. Circuit affirmed this Court’s rejection of PRO’s argument that its use of
Plaintiffs’ Works was transformative because PRO provides them to the public in a centralized
collection or in different formats, e.g., making copies more accessible to the visually impaired.
See ASTM II, 896 F.3d at 450 (citing Am. Geophysical Union v. Texaco Inc., 60 F.3d 913,
923-24; see also Soc’y of the Holy Transfiguration Monastery, Inc. v. Archbishop Gregory of
Denver, Colorado, 685 F. Supp. 2d 217, 227 (D. Mass. 2010), aff’d 689 F.3d 29 (1st Cir. 2012)
(“A simple repackaging of a work in a new format . . . is not transformative when the result is
simply a mirror image reflected on a new mirror.”).
PRO must therefore show its purpose—“to make the law and other government materials
more widely available,” ASTM II, 896 F.3d at 444 (quoting Dkt. 121-5, Malamud Decl. ¶ 4)—
transforms the Work by “add[ing] something new,” TVEyes, 883 F.3d at 176 (citing HathiTrust,

14

755 F.3d at 96). It cannot. PRO does not serve a purpose that is meaningfully different from
Plaintiffs’ purpose in providing free, read-only access to the same incorporated Works. See 2d
Supp. SMF ¶ 86. Plaintiffs’ offerings allow anyone to easily view incorporated by reference
standards online for free. 2d Supp. SMF ¶ 85. Their dissemination of the information goes
beyond that, including NFPA’s “Free Access Widget,” that allows organizations—such as
government entities that have incorporated by reference NFPA standards—to embed an imaged
link on their websites, directing visitors to the free copies of NFPA standards on the NFPA
website. See SMF ¶ 101. Plaintiffs view this provision of information as educational and central
to their overall mission.9 2d Supp. SMF ¶¶ 86-87.
Moreover, Plaintiffs better serve PRO’s professed purpose of informing the public about
“the law” because Plaintiffs’ versions (a) are authentic copies, which reflect rigorous quality
assurance review, whereas PRO’s versions still contain errors; and (b) provide (as PRO admits)
more accurate information regarding the incorporation status of each posted standard.10 The
principal difference between the way Plaintiffs make the standards freely accessible and the way
PRO does is one of formatting: Plaintiffs make the standards available for online access in read9

NFPA also created the CodeFinder™ tool, which is designed to “creat[e] general public
awareness of some of the jurisdictions” that “may require the use of NFPA codes and/or
standards.” 2d Supp. SMF ¶ 90.
10

PRO’s versions of Plaintiffs’ standards still contain errors resulting from its scanning
and rekeying techniques. See 2d Supp. SMF ¶¶ 13-18. PRO postings include other inaccuracies,
such as citations to federal regulations that do not exist, see 2d Supp. SMF ¶ 37 (PRO’s Internet
Archive posting of the 2000 edition of NFPA 101, states that it has been posted “By Authority of
the Code of Federal Regulations: 59 CFR 130,” but there is no title 59 to the C.F.R.), and to
superseded and incorrect standards, 2d Supp. SMF ¶¶ 36, 38-40 (e.g., PRO posted the 1982
version of ASTM E23, where 46 C.F.R. § 56.50-105(a)(1)(ii) incorporates the 1996 version, 2d
Supp. SMF ¶ 36(fff)). PRO has expressly acknowledged that it is Plaintiffs—and not PRO’s
postings—that provide the best source for authoritative standards, “urg[ing]” visitors to consult
“with the standards organizations” to access “definitive versions of these important laws.” 2d
Supp. SMF ¶ 20. PRO’s implicit recognition that its postings are not accurate undermines its
claim of transformative use. Its postings are an inferior substitute for the versions of the
standards that Plaintiffs already make available to the public on their websites.
15

only format. PRO, in contrast, makes the entire published standard available for printing and
copying, without restrictions on further redistribution.

See 2d Supp. SMF ¶ 92.

PRO

“essentially republishes [Plaintiffs’] content unaltered from its original form, with no ‘new
expression, meaning or message’”—a use that is substitutional and not transformative. TVEyes,
883 F.3d at 178 (quoting HathiTrust, 755 F.3d at 96 (quoting Campbell, 510 U.S. at 579)) (citing
Kirkwood, 150 F.3d at 106 (transmitting unaltered radio broadcasts in real time over telephone
lines not transformative); Video Pipeline, Inc. v. Buena Vista Home Entm’t, Inc., 342 F.3d 191,
199-200 (3d Cir. 2003) (streaming previews of movies without commentary not transformative)).
b.

PRO cannot meet its burden to show that its postings of Plaintiffs’
standards are essential to complying with a legal duty.

In remanding for this Court to make standard-by-standard determinations, the D.C.
Circuit recognized that the incorporation by reference process varies and incorporation per se
does not justify copying and distribution as fair use. ASTM II, 896 F.3d at 442. The D.C. Circuit
drew a distinction between whether the specific portions of the standard PRO copied and
distributed is “essential to complying with [one’s] legal duty,” as compared to just “help[ing]
inform one’s understanding of the law.” Id. at 450 (emphasis added). Despite the D.C. Circuit’s
clear mandate, PRO refused to do any standard-by-standard or grouping-of-standards (let alone
portion-by-portion) analysis. It has, instead, insisted that all standards incorporated by reference
are “the law” and it is entitled to post all of those standards verbatim.11 2d Supp. SMF ¶¶ 31-32
11

Indeed, PRO’s absolutist position may be even more extreme than it appears on its
face. Many standards incorporate other standards by reference, which may in turn reference
other standards. 2d Supp. SMF ¶ 69. The logical conclusion of PRO’s position is that any
jurisdiction’s incorporation of any portion of a standard would lead to an unrestricted fair use to
copy and distribute dozens of other standards that are cross-referenced in their entirety. That
result cannot be squared with the D.C. Circuit’s standard-by-standard approach and insistence
that the standards could not be treated “interchangeably.” ASTM II, 896 F.3d at 449. Such a
“fair use” result also would put the United States out of compliance with its international
obligations under Art. 13 of the WTO TRIPS Agreement, which requires that the United States
16

(PRO Interrog. Resp. No. 19 at p. 14, Resp. No. 21 at p. 25).12 Based on the undisputed
evidence, PRO cannot meet its burden of proving that everything PRO copied and distributed is
“essential to complying with any legal duty.” ASTM II, 896 F.3d at 450 (emphasis added).
1. As a threshold matter, many of the Works are not incorporated by the regulation(s)
PRO identifies in the cover sheets that it places in front of its copies, and PRO has failed to
identify any other incorporating reference. 2d Supp. SMF ¶¶ 36 (a), (c), (e)-(f), (k), (n), (p)-(u),
(aa)-(dd), (hh), (qq), (vv), (iii), (nnn), (ppp). These are a subset of the 95 (92 ASTM, 1 NFPA, 2
ASHRAE) of PRO’s cover sheets that include inaccurate citations, also including when PRO’s
cited authority actually incorporates a different or later version of the standard at issue. Id.
¶¶ 36, 37, 41-42. PRO cannot claim fair use as to these standards when it has not even met its
burden to identify an incorporation by reference.
Even those Works where PRO has identified some incorporation by reference, many are
similar to those that the D.C. Circuit specifically identified as unlikely to give rise to fair use.
This set includes “discretionary reference procedure[s]” that are incorporated in such a manner
as to be optional or references—i.e., “helpful” but not “essential,” ASTM II, 896 F.3d at 447, 450
(emphasis added), as well as optional standards and standards that do not govern private conduct.
For example, 40 C.F.R. § 86.113-04(a)(1)13 incorporates ASTM D86-07, the “Standard
Test Method for Distillation of Petroleum Products and Liquid Fuels at Atmospheric Pressure.”

“shall confine limitations or exceptions to exclusive rights to certain special cases which do not
conflict with a normal exploitation of the works and do not unreasonably prejudice the legitimate
interest of the right holder.”
12

PRO cannot attempt to backtrack from this sworn admission now through belated
analysis. See Kizas v. Webster, 492 F. Supp. 1135, 1147 (D.D.C. 1980), aff’d, 770 F.2d 524
(D.C. Cir. 1983) (rejecting contradictory evidence as “last-minute effort by the defendants to
raise an issue of material fact precluding summary judgment”).
17

2d Supp. SMF ¶ 45. But as the D.C. Circuit explained, this standard is incorporated “as a
‘[r]eference procedure’ used by the Environmental Protection Agency and regulated motorvehicle manufacturers.” ASTM II, 896 F.3d at 450. It “merely tells the regulated entity how it
can ensure that the gasoline it uses in fact satisfies the codified requirements.” Id.
As another example, PRO identifies 40 C.F.R. Appendix D to Part 75, the “Optional S02
Emmissional Data Protocol for Gas-Fired and Oil-Fired Units” as the regulation incorporating
ASTM standard D1217-93, the “Standard Test Method for Density and Relative Density
(Specific Gravity) of Liquids by Bingham Pycnometer.” 2d Supp. SMF ¶ 46. This regulation
incorporates the standard to be exactly what it says—optional. Subsection 2.2.4.3(d) provides an
alternative procedure for sampling oil from shipment tanks or containers and testing samples for
density, of which D1217-93 is just one. See 40 C.F.R. §§ 2.2.4.3(d), 2.2.6 (cross-referencing
other standards in Part 60). Each of these is an option, provided as a reference point, but none of
the many options is itself legally binding. This is true for other ASTM Works as well. See 2d
Supp. SMF ¶ 47 (listing examples).
In the same manner as the discretionary or optional incorporations by reference, each of
the NFPA Works contain explicitly “Permissive [R]ules,” which are “those that identify actions
that are allowed but not required,” and “are normally used to describe options or alternative
methods.” 2d Supp. SMF ¶ 57 (2014 NEC at art. 90-5(B)). Such optional rules are delineated
“by the use of the terms shall be permitted or shall not be required.” Id. An example of such an
optional rule is article 324.56(A) of the 2014 NEC regarding FCC Systems Alterations, which

13

Notably, PRO identifies only 40 C.F.R. § 1065.710 as incorporating D86-07. See 2d
Supp. SMF ¶ 36(oo). This identification is incorrect; 40 C.F.R. § 1065.710 incorporates the
2012 version of D86, not the 2007 version PRO posted. See 40 C.F.R. §§ 1065.710; 1065.1010.
18

states “Alterations to FCC systems shall be permitted.”14 Id. at art. 324.56(A). There is no
binding legal obligation in telling the installer of electrical equipment they can make alterations.
Further, some of the incorporations by reference “have no direct legal effect on any
private party’s conduct.” ASTM II, 896 F.3d at 443. As just one example, ASTM A 307 is
incorporated by reference in 46 C.F.R. § 56.25-20(b), which governs the design, construction,
and installation of marine vessel piping systems. 2d Supp. SMF ¶ 49. The regulation provides
that, with respect to bolts used in ships’ and barges’ piping systems, “[w]hen class 250 cast iron
flanges are used or when class 125 cast iron flanges are used with ring gaskets, the bolting
material must be carbon steel conforming to ASTM A 307 (incorporated by reference, see 46
CFR § 56.01-2), Grade B.” 46 C.F.R. § 56.25-20(b). The persons governed by that regulation—
those who design, construct and install piping systems in marine vessels—do not need access to
ASTM A 307 to comply with this regulation. They simply have to purchase bolt that are
designated as A 307, Grade B; they do not need to know how to manufacture such bolts.
Likewise, the D.C. Circuit recognized that the case for fair use was lessened where a
standard was incorporated in such a way to only trigger public and not private obligations.
ASTM II, 896 F.3d at 443 (these standards are “incorporated for the purpose of triggering agency
obligations,” see, e.g., 42 U.S.C. § 6833(b)(2)(A) (“Whenever . . . [ASHRAE] Standard 90.11989 . . . [is] revised, the Secretary [of Energy] shall . . . determine whether such revision will
improve energy efficiency in commercial buildings.”), or establishing regulatory floors, see, e.g.,
id. § 6833(b)(2)(B)(i) (“If the Secretary makes an affirmative determination,” each state shall
14

Likewise, NFPA standards include provisions that explicitly provide for discretion and
dictate that there are alternative options for compliance. For example, the National Fuel Gas
Code (2006 ed.) states: “The provisions of this code are not intended to prevent the use of any
material, method of construction, or installation procedure not specifically prescribed by this
code, provided any such alternative is acceptable to the authority having jurisdiction.” 2d Supp.
SMF ¶ 58. It is the authorities, not Plaintiffs, who decide what is ultimately required.
19

have two years to “certify that it has reviewed and updated the provisions of its commercial
building code regarding energy efficiency” such that its code “meet[s] or exceed[s] [the] revised
standard.”). Here, PRO’s proffered evidence of ASHRAE 90.1 being incorporated by reference
(i.e., the cover sheets) points to incorporation of Standard 90.1 into 10 C.F.R. § 433.4, which
states “[a]ll Federal agencies shall design new Federal buildings” that meet the ASHRAE
standards, but does not impose a similar requirement on private actors. 2d Supp. SMF ¶ 43.
PRO’s wholesale copying of these nonbinding standards is not at all tailored to that
which is essential to complying with private legal duties, nor does PRO limit its dissemination in
any other relevant respect, such as to those individuals who are governed by even these optional
references. Cf. Authors Guild v. Google, Inc., 804 F.3d 202, 222 (2d Cir. 2015) (“Google
Books”) (limiting features of use “substantially protects against its serving as an effectively
competing substitute”); HathiTrust, 755 F.3d at 91 (print-disabled “patron[s] must obtain
certification of [their] disability from a qualified expert”). Its conduct therefore does not fall
within the limited circumstances the D.C. Circuit posited could be a transformative purpose.
2. Under the D.C. Circuit’s holding, even where there is some incorporation by reference
that imposes a legal obligation on some individual, PRO cannot show a transformative use for
publishing the entire standard. The D.C. Circuit explained that PRO might be able to show a
transformative use only if it limited its posting to “the relevant portions of that particular
standard.”15 ASTM II, 896 F.3d at 450. PRO has posted entire standards indiscriminately,
stating (incorrectly) that “[t]he entirety of each standard . . . is incorporated by reference into the
law, and it is therefore necessary to reproduce the entire standard verbatim in order to accurately
state what the law is.” 2d Supp. SMF ¶¶ 31, 32 (PRO Resp. to Interrogs. 19, 21.). PRO cannot
15

Even then, the D.C. Circuit required “[f]aithfully reproducing the relevant text.” ASTM
II, 896 F.3d at 451. PRO’s versions are not accurately reproduced. 2d Supp. SMF ¶¶ 13-19.
20

meet its burden under the D.C. Circuit’s test. Here are just a few examples where the regulation
cited by PRO only incorporates a portion of a standard:


ASTM B122/B122M: PRO Identifies 46 C.F.R. § 119.440 as the incorporating
by reference regulation, but that regulation only incorporates B122/B122M with
respect to copper alloy C71500, one of eleven copper alloys addressed in the
standard. The portions of the standard related to the other ten copper alloys are
unnecessary to understand the minimum thickness for copper alloy C71500.



ASTM B85-96: PRO identifies 46 C.F.R. § 56.60-2 as the incorporating by
reference regulation, but that regulation only incorporates one table within ASTM
B85-96—table X-2—and states that “[t]ension tests shall be performed to
determine tensile strength, yield strength, and elongation” in accordance with the
minimum value in X-2. The remainder of the standard is unnecessary to
determine the minimum value in X-2. Table X-2 also contains values for sheer
strength and fatigue strength that are unnecessary to understand the minimum
value for the required tension tests.



ASTM E145-94 (2001): PRO identifies 40 C.F.R. § 63.14 as the incorporating
by reference regulation, but Appendix A to Subpart PPPP of 40 C.F.R. § 63.14
references only forced draft oven types IIA or IIB. The ASTM E145-94 (2001)
standard addresses other types of forced draft ovens.

These examples are representative of other Works where PRO posted the entire standard,
but only a portion is actually incorporated by reference into law. 2d Supp. SMF ¶ 48.
Likewise, the D.C. Circuit said fair use was not likely for material that merely “help[s]
inform one’s understanding of the law [without being] essential to complying with any legal
duty.” ASTM II, 896 F.3d at 450. That is exactly the case for PRO’s wholesale copying of
Works, all of which include substantial material that either has nothing to do with compliance or
is certainly not “essential” to complying with a legal obligation. 2d Supp. SMF ¶¶ 48-56
(ASTM), 59-68 (NFPA), 70-76 (ASHRAE).
As just one example, NFPA 70 includes at least the following material that decidedly
does not impose any legal obligation:


Prefatory Notices and Background Information: NFPA 70 includes notices
and disclaimers, as well as an introductory note that gives information on the

21

background and history of the standard. 2d Supp. SMF ¶¶ 62, 63 (e.g., Supp.
Pauley Decl. Ex. P (NFPA 70, 2014 ed.) at NFPA-PR0098062-64).


Reference and Informational Notes:
NFPA 70 includes hundreds of
“Informational Notes” that provide context, background, cross-references, and
other explanatory material. The NEC expressly states that these Notes “are
informational only and are not enforceable as requirements of this Code.” Id.
¶ 64 ((e.g., Supp. Pauley Decl. Ex. P (NFPA 70, 2014 ed.) at art. 90.5(C)).
Examples include Informational Note No. 2: “Some cleaning and lubricating
compounds can cause severe deterioration of many plastic materials used for
insulating and structural applications in equipment.” Id. at art. 300.20(B) (Note).



Diagrams, Figures, and Illustrations: NFPA 70 includes figures that illustrate
concepts in the text, but that do not dictate any legal duty. For example, 2011
NEC, Figure 220.1 provides a graphical overview of the organization of Article
220. Id. ¶ 65 (e.g. Dubay Decl. Ex. A (NFPA 70, 2011 ed.) at 70-61). PRO could
explain that organizational structure in its own words or offer a different way of
visualizing the Article’s structure. The Figure may be “help[ful]” in “inform[ing]
one’s understanding” of the text, but the Figure itself does not dictate any
independent requirements. ASTM II, 896 F.3d at 450.



Examples: NFPA 70 includes numerous examples, such as art. 550.4(A), which
is a list of examples of a mobile home not intended as a dwelling unit: “those
equipped for sleeping purposes only, contractor’s on-site offices, construction job
dormitories, mobile studio dressing rooms, banks, clinics, mobile stores, or
intended for the display or demonstration of merchandise or machinery.” 2d
Supp. SMF ¶ 66 (e.g. Dubay Decl. Ex. A (NFPA 70, 2011 ed.) at art. 550.4(A);
see also id. art. 552.47(A)). These illustrative examples do not impose any
requirement.



Informational Annexes: NFPA 70’s informational annexes contain material that
“is not a part of the requirements of this NFPA document but is included for
informational purposes only.” 2d Supp. SMF ¶ 67 (e.g., Supp. Pauley Decl. Ex. P
at Annex A). Some informational annexes contain information that is not binding
unless “specifically adopted.” Id. at Annex H.

All of NFPA’s Works contain some or all of these nonbinding portions. 2d Supp. SMF ¶¶ 59-68
(listing examples for all NFPA standards).
ASTM’s standards also contain numerous nonbinding portions.

Many of ASTM’s

standards contain appendices that are expressly labeled “Non-mandatory Information.” 2d Supp.
SMF ¶¶ 51(a), 52. Such appendices contain explanatory information that is not required to

22

perform the standard’s requirements. Id. Additionally, ASTM standards contain supplemental
sections including: explanatory notes, summaries, significance and use sections, keywords,
definitions, terminology, classification, cited references, and metric conversions. Id. ¶¶ 51(e),
55. These resources are nonbinding aids. Id. A number of ASTM’s standards contain a
Supplemental Requirements section that states: “The following supplementary requirements
shall apply only when specified by the purchaser in the inquiry, contract or order, for agencies of
the U.S. Government.” Id. ¶¶ 51(e), 56. Additionally, as ASTM’s committees are frequently
updating and revising its standards, many of ASTM’s standards include a summary of changes,
and those summaries are nonbinding.

Id. ¶¶ 51(b)-(c), 53-54.

In many instances, ASTM

publishes a metric version of its standards. In numerous instances, PRO copied and distributed
the entire metric version in addition to the nonmetric version, where the metric version was not
referenced by the regulation. Id. ¶ 35.
Similarly, all three of the ASHRAE Standards at issue in this case contain forewords,
information about ASHRAE and its Standards-creation process, ASHRAE policy statements, and
other information that could impose no legal obligation. 2d Supp. SMF ¶¶ 70-76. The ASHRAE
Standards even contain multiple “Informative Appendices,” which are expressly labeled as not
being part of the Standards and just for informational purposes. Id. ¶¶ 72-74. PRO copied and
posted those too.
PRO’s wholesale copying of these non-mandatory portions takes far more than necessary
under the D.C. Circuit’s test and is therefore not fair use. PRO could have written its own
paraphrased material, drawn its own figures, or omitted nonbinding portions. PRO has shown
itself fully capable of excising portions of Plaintiffs’ Works, as it has done in removing many of

23

Plaintiffs’ logos. But PRO did none of these things when it came to copying Plaintiffs’ Works.
It instead copied and distributed the entirety of the text verbatim.
2.

Factor 2: Plaintiffs’ Copyrighted Works Are Important To Advance
The Progress Of Science And The Useful Arts

The second factor considers “the nature of the copyrighted work.” 17 U.S.C. § 107(2).
While often framed as a dichotomy between fictional vs. factual expression, the ultimate goal of
copyright is to “promote the Progress of Science and the useful Arts.” U.S. Const. art. I, § 8, cl.
8. Copyright in each of Plaintiffs’ Works serves the end of advancing the progress of science,
technical and technological advancement, as well as public safety. See ASTM I, 2017 WL
473822, at *17 (D.D.C. 2017).
The D.C. Circuit agreed, ASTM II, 896 F.3d at 451, but added that this factor may vary
with the extent to which the particular copyrighted Work imposes a legally binding obligation,
id. at 452. On this factor, PRO must justify its copying by demonstrating the legally binding
nature of each standard (or portion of standard) PRO has copied. PRO does not and cannot
satisfy this burden. As explained above, PRO fails to meet its burden by not citing or citing
incorrect authorities to even make a threshold showing that 96 Works were incorporated by
reference. 2d Supp. SMF ¶¶ 36, 37. Even then, PRO copied standards that are incorporated in a
discretionary or optional manner. Id. PRO also copied the entirety of the Works verbatim,
including portions not incorporated by reference, and portions that impose no legal duty. Id.
¶¶ 48-56, 59-68, 70-76. The second fair use factor weighs against a finding of fair use.
3.

Factor 3: PRO Copies The Entirety Of The Works—It Does Not
Even Attempt To Limit Its Copying And Distribution To Portions Of
Standards That Are Essential To Complying With The Law

The third fair use factor looks to “the amount and substantiality of the portion used in
relation to the copyrighted work as a whole.” 17 U.S.C. § 107(3). “While ‘wholesale copying’”

24

like PRO’s “‘does not preclude fair use per se,’ copying an entire work ‘militates against a
finding of fair use.’” Worldwide Church of God, 227 F.3d at 1118 (emphasis added); see also
Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 565 (1985) (“the fact that a
substantial portion of the infringing work was copied verbatim is evidence of the qualitative
value of the copied material”). “[T]he extent of permissible copying varies with the purpose and
character of the use,” Campbell, 510 U.S. at 586-87; but “[t]he larger the quantity of the
copyrighted text the [user] can see and the more control the [user] can exercise over what part of
the text she sees, the greater the likelihood that those revelations could serve her as an effective,
free substitute for the purchase,” Google Books, 804 F.3d at 222. The D.C. Circuit therefore
instructed this Court to consider whether PRO had “limit[ed] its copying to only what is required
to fairly describe the standard’s legal import.” ASTM II, 896 F.3d at 452.
PRO has not even attempted to so limit its copying, either in what it posts online or to
whom it disseminates the Works. As explained above, PRO’s wholesale, indiscriminate copying
sweeps in provisions not incorporated by reference, provisions that do not impose legal
obligations on individuals, and simply informative portions. See, Section I.B.1.b supra. PRO’s
copying and distribution of large quantities of material that “does not govern any conduct”
makes this factor lean decidedly in Plaintiffs’ favor. ASTM II, 896 F.3d at 452; see also Google
Books, 804 F.3d at 222 (third factor turned on fact that defendant “does not reveal matter that
offers the marketplace a significantly competing substitute for the copyrighted work”).
4.

Factor 4: PRO’s Substitutional Use Undermines The Actual And
Potential Markets for Plaintiffs’ Works

The fourth fair use factor—harm to the copyright owner’s “potential market[s]” or the
“value of the copyrighted work,” 17 U.S.C. § 107(4)—requires the Court to consider “‘whether
unrestricted and widespread conduct of the sort engaged in by the defendant . . . would result in a

25

substantially adverse impact on the potential market’” for both the original and derivative works.
Campbell, 510 U.S. at 590 (quoting 3 M. Nimmer & D. Nimmer, Nimmer on Copyright
§ 13.05[A][4] (1993)); Harper & Row Publishers, 471 U.S. at 568. It is “[PRO’s] burden to
affirmatively establish that [its] conduct could not even ‘potentially’ harm the Plaintiffs’
market.” ASTM I, 2017 WL 473822, at *18; see also Cambridge Univ. Press v. Patton, 769 F.3d
1232, 1276 (11th Cir. 2014) (“The central question . . . is not whether Defendants’ use of
Plaintiffs’ Works caused Plaintiffs to lose some potential revenue.

Rather, it is whether

Defendants’ use—taking into account the damage that might occur if ‘everybody did it’—would
cause substantial economic harm such that allowing it would frustrate the purposes of copyright
by materially impairing Defendants’ incentive to publish the work.”). It is “difficult[]” for a
defendant like PRO to meet its burden of proving fair use if it does not present “favorable
evidence about relevant markets.” Campbell, 510 U.S. at 590. PRO cannot meet its burden
because the undisputed expert testimony, and an application of the D.C. Circuit’s guidance,
demonstrate that PRO’s conduct harms Plaintiffs’ potential market.
In addition to this traditional fair use analysis, the D.C. Circuit said this Court should
consider three questions relating to this factor. Addressing each question in turn demonstrates
that, as the Supreme Court contemplated in Campbell, PRO cannot meet its burden of
demonstrating this factor weighs in its favor.
First, the D.C. Circuit urged consideration of whether PRO’s activities could lead to
“additional

[market]

harm”

where

Plaintiffs

themselves

offer

free

access

online

“presumably . . . without entirely cannibalizing sales of their standards.” ASTM II, 896 F.3d at
453. Plaintiffs’ provision of free online access furthers their market for disseminating their
Works, both as a matter of logic and evidence. Plaintiffs offer their standards in a read-only

26

format: this carefully controlled environment, designed to be educational and informational,
does not substitute or compete in the commercial marketplace for the sale of less restricted
versions of Plaintiffs’ Works. 2d Supp. SMF ¶¶ 85, 88. Those industry professionals and
tradespeople who purchase the Works to use in the course of their work might reference the free
access websites, but these websites would not be a substitute for purchasing a copy that can be
downloaded and searched from Plaintiffs. Id. ¶¶ 88, 89. Indeed, Plaintiffs view the provision of
free access as furthering their overall mission by encouraging more users to visit Plaintiffs’
websites, and to do so more frequently, creating opportunities for them to learn about Plaintiffs’
other mission-driven activities, including by potentially deciding to purchase the materials so
they can have a copy to download. Id. ¶¶ 86, 87.
PRO’s postings, by contrast, are substitutional and cannibalistic for each of Plaintiffs’
sales, licensing efforts, and free access distribution. PRO intentionally makes its versions of
Plaintiffs’ Works—which are widely viewed, see, e.g., 2d Supp. SMF ¶ 98 (accesses to PRO’s
postings dwarf visits to ASTM’s Reading Room); id. ¶ 102 (10,000 views of 2011 NEC in 13
months)—available on an anonymous and unrestricted basis. Id. ¶¶ 92, 104. This means its
users include those individuals and entities who would otherwise purchase or license copies of
Plaintiffs’ standards. Id. ¶ 93. Its users may also include further would-be infringers who, by
virtue of the anonymity PRO and the Internet Archive, offer and easily profit unlawfully from
selling PRO’s copies. Indeed, PRO’s efforts to make available Plaintiffs’ Works in rekeyed
formats mean that down-the-line infringers can capitalize on that work, distributing counterfeit
copies of PRO’s downloadable PDFs. See id. ¶¶ 105-06. Regardless of whether PRO intends
that result, the fair use inquiry requires consideration of the natural consequences of its activities.
See Authors Guild, 804 F.3d at 223 (even if copying done for “valuably transformative purpose,”

27

copying can lead to harm “if done in a manner that results in widespread revelation of
sufficiently significant portions of the original as to make available a significantly competing
substitute”). Notably, PRO could, but does not, utilize the technical features—such “borrowing”
and encrypted access for those with print disabilities—that Internet Archive employs to restrict
access to other copyrighted material on its website. 2d Supp. SMF ¶¶ 108-09.
The unrebutted economic evidence—not to mention common sense—dictate that the
answer to the D.C. Circuit’s first question is that PRO’s activities threaten substantial market
harm even where Plaintiffs also provide access to their standards. Plaintiffs have already shown
a “substantial[] adverse impact on the potential market.” Campbell, 510 U.S. at 590. The expert
report of John Jarosz recognized Plaintiffs’ provision of freely accessible copies but concluded
that, nonetheless, PRO’s activities would threaten the market both for Plaintiffs’ standards and
for derivative works. 2d Supp. SMF ¶ 91 (Jarosz Rep. ¶¶ 85, 92, 100, 130-49). That makes
sense. As explained above, the principal difference between Plaintiffs’ online copies and PRO’s
postings (beyond the errors in PRO’s versions) is that Plaintiffs’ sell physical copies and digital
copies in a variety of formats and offer more limited read-only access for free, whereas PRO
offers no-cost, unrestricted access to Plaintiffs’ Works in formats that can be readily downloaded
or used to develop derivative works. “[P]arties that are interested in or affected by [Plaintiffs’
standards], but who do not necessarily need a digital or hardcopy of the standards” are well
served by Plaintiffs’ online versions. Id. ¶¶ 86, 88 (Jarosz Rep. ¶ 86). Parties who are, instead,
regularly using Plaintiffs’ standards during the course of their work, interested in reselling copies
of Plaintiffs’ standards, or planning to develop unlicensed derivative works are likely to use
PRO’s versions of the standards. See, e.g., SMF ¶ 240 (“Multiple resellers and merchants have
downloaded copies of NFPA’s standards that were posted on the Internet and have attempted to

28

resell them or package them with other products for sale.”); see also BMG Music v. Gonzalez,
430 F.3d 888, 890 (7th Cir. 2005) (noting that because “[m]usic downloaded for free from the
Internet is a close substitute for purchased music[,] many people are bound to keep the
downloaded files without buying originals”).
Second, the D.C. Circuit asked this Court to consider whether there would continue to be
a market for Plaintiffs’ standards if PRO limited its copying to only those parts of Plaintiffs’
standards that “provide[] information essential to comprehending one’s legal duties.” ASTM II,
896 F.3d at 450.

PRO has no supporting evidence to answer this question because, as

demonstrated, PRO does not so limit its copying and has maintained that position since the D.C.
Circuit’s remand, despite that court’s clear direction that PRO should revisit its wholesale
copying. See supra at Section I.B.1.b.; 2d Supp. SMF ¶¶ 31-32 (Resp. to Interrog. Nos. 19, 21).
Accordingly, PRO has failed to meet its burden on this question.
Third, the D.C. Circuit instructed this Court to consider whether PRO’s copying and
distribution of Plaintiffs’ Works would harm any markets for derivative works, e.g., if PRO’s
posting of out-of-date standards would help or harm the market for the current versions of the
same standards. See ASTM II, 896 F.3d at 453. The evidence is undisputed that PRO’s use
harms the market for the current and most up-to-date works. ASTM frequently reapproves the
identical standard in an updated version, and in those circumstances, the old version is a perfect
substitute for the up-to-date version. 2d Supp. SMF ¶ 96. For example, ASTM’s B580 issued in
1979 has been reapproved and reissued in its original form every five years. Even when ASTM
standards, are revised in subsequent versions, the latest version frequently retains substantial
portions of the prior version. Id. ¶ 35. As a result, for many users, the availability of a free and
unrestricted copying of the prior version may be a perfect or near-perfect substitute for the

29

current version of the standard, such that the unrestricted download and distribution of the Works
at issue will interfere with the market for these derivative Works. Id. ¶ 96.
The evidence also shows that PRO does not limit its copying to out-of-date standards.
Many jurisdictions expressly incorporate—and PRO promptly posts—the most recently
published versions of Plaintiffs’ standards. See, e.g., Tex. Agric. Code Ann. § 17.072 (West)
(incorporating most recent versions of ASTM D4177); Md. Public Safety Code § 9-303 (West)
(same for NFPA 101); 30 Tex. Admin. Code § 217.326 (same for NFPA 1 and NFPA 70);
Alaska Stat. Ann. § 44.42.067(b)-(c) (same for ASHRAE 90.1). For example, after the parties
filed their initial summary judgment motions, NFPA published the 2017 NEC. PRO has now
copied and distributed that version. 2d Supp. SMF ¶ 110.
Further, new editions are not the only derivative product Plaintiffs make. Plaintiffs
develop and sell products and services, such as commentaries and trainings. SMF ¶¶ 155, 263.
“[A] significant driver of the Plaintiffs’ sale” of such items “is the provision of the protected
publications in, for example, trainings and seminars.” 2d Supp. SMF ¶¶ 83, 84 (Jarosz Rep.
¶ 146). If the standards were freely available for download online, as PRO has made them,
Plaintiffs’ sales of these products and services would likely decrease. Id. ¶ 95. Moreover, if
third parties were able to quote freely from these standards to, like PRO claims to, inform the
public about “the law,” Plaintiffs would lose their competitive advantage in marketing such
services and products. Id.; see also SMF ¶ 264.
In sum, the undisputed evidence shows that none of the answers to the D.C. Circuit’s
three questions supports PRO’s fair use defense.

Plaintiffs invest substantial resources in

developing their standards in everything from salaries and benefits for Plaintiffs’ staff, to
expenses for technical committee meetings, to costs associated with editing, producing,

30

distributing, and promoting the standards. SMF ¶¶ 43-44, 104-05, 152. PRO’s systematic, mass
copying and distribution of the Works undermine Plaintiffs’ resource investment, “imped[ing]
the purpose of copyright to incentivize new creative works by enabling their creators to profit
from them.” Capitol Records, LLC v. ReDigi Inc., 910 F.3d 649, 662 (2d Cir. 2018); see also
Mazer v. Stein, 347 U.S. 201, 219 (1954) (“The economic philosophy behind the clause
empowering Congress to grant patents and copyrights is the conviction that encouragement of
individual effort by personal gain is the best way to advance public welfare through the talents of
authors and inventors in ‘Science and useful Arts.’ Sacrificial days devoted to such creative
activities deserve rewards commensurate with the services rendered.”). There is no evidence that
this factor, or any of the other § 107 factors, supports PRO’s affirmative defense.
III.

PLAINTIFFS ARE ENTITLED TO SUMMARY JUDGMENT ON THEIR CLAIMS OF
TRADEMARK INFRINGEMENT AND FALSE DESIGNATION OF ORIGIN
In addition to infringing Plaintiffs’ copyrights, PRO infringed Plaintiffs’ trademarks and

continues to do so. It is undisputed that PRO acquired genuine versions of Plaintiffs’ standards
and retyped their content to create new documents that Plaintiffs neither authorized nor quality
controlled. SMF ¶¶ 187-95. PRO did not appeal the Court’s ruling that Plaintiffs own valid
trademarks or the Court’s analysis of the ordinary likelihood of confusion factors. ASTM II, 896
F.3d at 456. This Court’s prior ruling on these issues is “law of the case” as to the standards at
issue in Plaintiffs’ prior motions. See, e.g., Trout, 780 F. Supp. at 1425 & n.71. PRO has no
evidence warranting a different result as to any of the other Works. The question on remand,
therefore, is whether PRO can raise a triable issue on its affirmative defense of nominative fair
use. PRO cannot make this showing, and Plaintiffs are entitled to a permanent injunction
preventing PRO from resuming its use of Plaintiffs’ marks.

31

A.

Nominative Fair Use Is An Affirmative Defense

Nominative fair use is an affirmative defense, not an element of Plaintiffs’ trademark
claim. Once a Lanham Act “plaintiff has met its burden of proving that confusion is likely, the
burden then shifts to the defendant to show that its nominative use of plaintiff’s mark is
nonetheless fair.” Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 232 (3d Cir.
2005). Treating nominative fair use as an affirmative defense (as opposed to yet another factor
in the already unwieldy likelihood of confusion calculus, as some circuits do16) respects the
Supreme Court’s existing jurisprudence on trademark fair use. Specifically, the Supreme Court
has ruled that classic fair use—use of a mark in its descriptive sense and not as a designation of
source—is an affirmative defense to trademark infringement, in part because “some possibility
of consumer confusion must be compatible with fair use.” KP Permanent Make-Up, Inc. v.
Lasting Impression I, Inc., 543 U.S. 111, 121 (2004). In other words, the Supreme Court treats
confusion and fairness as separate and distinct concepts. An approach that blends these concepts
together into a single test—a test in which fairness must negate instead of coexist with
confusion—is untenable.17 Instead, if a plaintiff proves that confusion is likely, consideration of
the fair use defense should follow. Century 21, 425 F.3d at 222; see also, e.g., Mary Kay, Inc. v.

16

See Int’l Info. Sys. Sec. Certification Consortium v. Sec. Univ., LLC, 823 F.3d 153, 168
(2d Cir. 2016); Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1175 (9th Cir. 2010).
But see ASTM II, 896 F.3d at 457 (recognizing that circuits are divided on correct analysis and
declining to resolve which approach is correct).
17

Demonstrating that the approach is unworkable, circuits that treat nominative fair use
as part of the likelihood of confusion analysis cannot even agree on the correct way to do so.
The Second Circuit has directed “district courts . . . to consider the Ninth Circuit and Third
Circuit’s nominative fair use factors, in addition to the [traditional likelihood of confusion]
factors.” Int’l Info. Sys., 823 F.3d at 168 (emphasis added). In the Ninth Circuit, by contrast, the
nominative fair use factors supplant the multi-factor test that courts typically employ to
determine consumer confusion. See Tabari, 610 F.3d at 1175.
32

Weber, 601 F. Supp. 2d 839, 854 (N.D. Tex. 2009) (treating nominative fair use as an affirmative
defense); Chrysler Corp. v. Newfield Publ’ns, 880 F. Supp. 504, 512 (E.D. Mich. 1995) (same).
Here, the Plaintiffs have demonstrated a likelihood of confusion. ASTM I, 2017 WL
473822, at *23; see also ASTM II, 896 F.3d at 456 (“PRO [does not] contest[] . . . the district
court’s analysis of the ordinary likelihood of confusion factors”).18 Accordingly, it is PRO’s
burden to prove that its use is fair.
B.

PRO Cannot Meet Its Burden To Establish Any Of The Three Nominative
Fair Use Factors

To succeed on its nominative fair use defense, PRO must show that: (1) its use of
Plaintiffs’ trademarks is necessary to describe Plaintiffs’ Works; (2) PRO used only so much of
Plaintiffs’ marks as is reasonably necessary to identify Plaintiffs’ Works; and (3) PRO has not
done anything to suggest sponsorship or endorsement by Plaintiffs or to inaccurately describe the
relationship between the parties or their Works. Century 21, 425 F.3d at 222; see also New Kids
on the Block v. News Am. Publ’g, Inc., 971 F.2d 302, 308 (9th Cir. 1992). PRO’s original use of
Plaintiffs’ marks certainly does not satisfy and cannot satisfy any (let alone all three) of these
elements and neither does its current practice.
First, PRO does not need to use any of Plaintiffs’ marks—their logos, organizational
names, or even the names they give their standards—in furtherance of its claimed mission of
educating the public about legally binding obligations. PRO could fulfill this mission by posting
the legally binding obligations without identifying Plaintiffs as the source of that information and
without using their word marks. This is exactly what the party posting building codes in Veeck
did. He posted the codes and identified them as building codes of the relevant jurisdictions; he

18

Again, PRO’s failure to challenge this Court’s previous analysis of the likelihood-ofconfusion factors means it is bound by that holding. See Trout, 780 F. Supp. at 1425 & n.71.
33

did not identify the institutional author, Southern Building Code Congress International, by
name, let alone display its logos. Veeck v. S. Bldg. Code Cong. Int’l, 293 F.3d 791, 793 (5th Cir.
2002). Here, PRO could similarly identify Plaintiffs’ Works merely as works incorporated by
reference into the relevant federal regulations, without identifying Plaintiffs or using their marks.
For instance, PRO could have identified ASTM’s Standard Specification for Structural Steel as
the “standard adopted by 24 C.F.R. Part 200” rather than ASTM A36. But it did not.
Second, as this Court, the D.C. Circuit, and even PRO have acknowledged, PRO’s use of
Plaintiffs’ trademark logos goes beyond what is reasonably necessary to identify Plaintiffs’
Works. See ASTM II, 896 F.3d at 457 (“it may well be that PRO overstepped when it reproduced
both ASTM’s logo and its word marks but, as it told the district court, it is not wedded to using
the logo” (citation omitted); see also, e.g., Tabari, 610 F.3d at 1181 (use of a stylized mark and
logo was more use of the mark than necessary); David’s Bridal, Inc. v. House of Brides, Inc., No.
06 Civ. 5660 (SRC), 2010 WL 323306, at *7 (D.N.J. Jan. 20, 2010) (use of design elements
unnecessary). After remand, PRO claims to have redacted Plaintiffs’ logos from the materials it
posted. 2d Supp. SMF ¶ 21. This is not entirely true. PRO’s postings of the NEC still use
NFPA’s trademarked NEC logo, id. ¶ 23, as does PRO’s posting of ASTM D86-07, id. ¶ 24.
Plaintiffs have a right to permanent injunctive relief to ensure PRO does not resume this practice.
Third, irrespective of any past, present, or future disclaimers, PRO’s use of Plaintiffs’
marks suggests that Plaintiffs endorse PRO’s posted copies and that those copies are genuine
versions of Plaintiffs’ Works.

PRO’s disclaimers have been woefully insufficient.

PRO

originally posted the Works without any disclaimer; then, in response to this lawsuit, PRO posted
text that this Court said “c[ould] hardly be called disclaimers at all.” ASTM I, 2017 WL 473822,
at *23. While PRO has since revised its “disclaimers” on several occasions, litigation-driven

34

revisions are not a reason to deny summary judgment on liability for trademark infringement or
to deny a permanent injunction. See id. (rejecting PRO’s trademark fair use argument based in
part on the finding that PRO “did not begin using the disclaimer until 2015, after the start of this
litigation”)). In any event, as the D.C. Circuit noted, “the disclaimers PRO appends to many of
its copies of the standards may well fail to adequately eliminate the possibility a consumer would
assume sponsorship or endorsement by ASTM.” ASTM II, 896 F.3d at 457. And PRO “bears a
‘heavy burden to come forward with evidence sufficient to demonstrate that any [disclaimer]
would significantly reduce the likelihood of consumer confusion.’” Australian Gold, Inc. v.
Hatfield, 436 F.3d 1228, 1243 (10th Cir. 2006) (quoting Home Box Office, Inc. v. Showtime/The
Movie Channel Inc., 832 F.2d 1311, 1316 (2d Cir. 1987)). PRO cannot meet this burden.
PROs’ current disclaimers take three forms. The first appears on the cover page of PDF
copies of Plaintiffs’ Works posted by PRO, as depicted below.

2d Supp. SMF ¶ 26. Considered in its star-spangled entirety, this cover page conveys a clear
message—the document that follows is, “By Authority of the United States of America,” a

35

“Legally Binding Document,” and is “APPROVED” by at least the Executive Director of the
Office of the Federal Register.

The contradictory disclaimer—that the document is “Not

Affiliated Or Authorized by ASTM or by the Government of the United States”—is barely
perceptible amidst the surrounding regalia. Even if this disclaimer was somehow adequate (it is
not), it resides only on the first page of PRO’s copies of Plaintiffs’ Works. See id. Anyone who
downloads PRO’s pirated PDFs can delete this page—and thus the disclaimer—with a single
click, and further disseminate disclaimer-less copies of Plaintiffs’ Works. Any disclaimer is
insufficient to dispel confusion in these circumstances. See, e.g., Int’l Kennel Club of Chi., Inc.
v. Mighty Star, Inc., 846 F.2d 1079, 1093 (7th Cir. 1988) (affirming finding of inadequate
disclaimer; “it would be difficult to ensure the use of disclaimers by [defendant’s] distributors
since the defendants had no direct control over the distributors’ advertising. . . . Especially where
the infringement in issue is a verbatim copying of the plaintiff’s name, we are convinced that that
plaintiff’s reputation and goodwill should not be rendered forever dependent on the effectiveness
of fineprint disclaimers often ignored by consumers.”).
The second disclaimer appears “below the fold” of the Internet Archive webpage; a
reader must scroll past the PDF copy of the standard—the material the reader came for—to see
the disclaimer at all. See 2d Supp. SMF ¶ 27. This is insufficient. See, e.g., TrafficSchool.com,
Inc. v. Edriver Inc., 653 F.3d 820, 828 (9th Cir. 2011) (affirming ruling that disclaimer was
insufficient to dispel confusion when consumers had to scroll to view).
Finally, PRO’s HTML-format copies of Plaintiffs’ standards—which are available for
download on the Internet Archive Website—contain the following “disclaimer,” in the form of a
“PREAMBLE (NOT PART OF THE STANDARD).”

36

2d Supp. SMF 28. This “disclaimer”—which appears in approximately the same typeface and
size as the rest of the document—is also inadequate. Indeed, anyone who downloads this
document to read the standard is likely to ignore the section expressly labeled “NOT PART OF
THE STANDARD.”
PRO’s redaction of Plaintiffs’ logos—and to be clear, PRO has not in all cases redacted
Plaintiffs’ logos, see 2d Supp. SMF ¶¶ 23, 24—also fails to dispel confusion. As depicted
below, PRO has, in some instances, “blacked out” Plaintiffs’ logos, but has typed Plaintiffs’
word marks, combined with the phrase “Logo Removed,” over the redacted area.

2d Supp. SMF ¶ 22. This technique only draws additional attention to the fact that Plaintiffs’
logos—which suggest that PRO’s substandard copies originate with Plaintiffs—appear on the
standards PRO posts.
PRO intended to make the materials it posts look identical to Plaintiffs’ Works by
applying Plaintiffs’ trademarks to the substandard versions of the Works PRO posted online.
SMF ¶ 212. This is not fair use. Because PRO cannot meet its burden on any of the three
required elements of nominative fair use, Plaintiffs are entitled to summary judgment on their
claims for trademark infringement and false designation of origin.

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IV.

PLAINTIFFS ARE ENTITLED TO A PERMANENT INJUNCTION
The Court should permanently enjoin PRO from all reproduction, display, or distribution

of Plaintiffs’ standards and all use of Plaintiffs’ trademarks. 17 U.S.C. § 502(a); 15 U.S.C.
§ 1116. This Court already granted an injunction once before, and it should do so again.
Nothing in the D.C. Circuit’s Order, which was aimed at fair use, bears on this Court’s
consideration of the four eBay factors, and no facts have changed that would counsel for a
different result. An injunction is warranted because Plaintiffs will otherwise suffer irreparable
harm, no other adequate remedy is available to compensate Plaintiffs, the harm to Plaintiffs
outweighs any potential harm to PRO, and the public interest favors an injunction. See eBay,
547 U.S. at 391.
A.

Plaintiffs Will Suffer Irreparable Harm Without An Injunction

PRO’s unauthorized use of Plaintiffs’ copyrights and trademarks threatens harm to (i)
Plaintiffs’ business model and standard-setting process; (ii) Plaintiffs’ rights to exclude others
from the use of their copyrighted Works; and (iii) Plaintiffs’ reputations. Each of these three
injuries is real yet hard to quantify—exactly the type of injury an injunction is meant to address.
1.

Economic Harm And Ramifications To Plaintiffs’ Business Model

Plaintiffs’ expert economist, Mr. Jarosz, offered an unrebutted opinion on the direct
economic harm Plaintiffs have suffered and are likely to continue to suffer. Plaintiffs generate
significant revenue from sales of copyrighted standards or membership dues closely tied to their
copyrighted standards. SMF ¶¶ 46-47, 106-08, 154. It is almost axiomatic that another party
providing the same product to consumers will impact Plaintiffs’ business—especially when
provided for free. See Presidio Components, Inc. v. Am. Technical Ceramics. Corp., 702 F.3d
1351, 1363 (Fed. Cir. 2012) (“Direct competition in the same market is certainly one factor

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suggesting strongly the potential for irreparable harm without enforcement of the right to
exclude.”).
But the magnitude of harm suffered to date is not the biggest risk. PRO has had the
standards posted only on-and-off over recent years, and only while engaged in litigation that
signals to the market that PRO’s provision of the standards may not be legal. The more
significant risk is that, if PRO’s conduct goes unchecked, it will act as a signal to the market that
the creation of unauthorized versions of standards is acceptable, which will lead to the
proliferation of new versions of the Works on other sites, thereby compounding Plaintiffs’ harm
over time as more people use the versions of the standards on PRO’s site or similar sites instead
of purchasing authentic versions. SMF ¶ 254. Plaintiffs have already seen the impact of PRO’s
infringement, as third parties have downloaded PRO’s infringing copies of ASTM’s Works and
posted them on third-party websites: The online publisher Scribd.com currently hosts dozens of
ASTM standards obtained from PRO. 2d Supp. SMF ¶ 106; SMF ¶ 249.
Further, as Mr. Jarosz explained in his expert report, a continuation of PRO’s
infringement could force Plaintiffs to significantly alter their business models. Each of the
Plaintiffs relies primarily on users of its standards to fund the development of the standards,
rather than charging up-front fees to participate in the development process. Plaintiffs’ “backloaded” business model means more stakeholders can participate in the standard-creation process
so that the standards are balanced and represent a diversity of voices. SMF ¶¶ 257-58. Plaintiffs
could be forced to significantly alter their business models to a more “front-loaded” system that
charges for participation in the standard-creation process, which would preclude the participation
of other stakeholders and impact the substance of the resulting standards. SMF ¶¶ 259-62.

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2.

Harm To Plaintiffs’ Right To Exclude Caused By Repeat
Infringement

Another harm is to the Plaintiffs’ right to exclude others from use of their protected
Works and trademarks, which is one of the fundamental tenets of intellectual property law.
Repeated infringement threatens that right and justifies an injunction. Breaking the Chain
Found. v. Capitol Educ. Support, Inc., 589 F. Supp. 2d 25, 30 (D.D.C. 2008) (“Defendant’s
continuing disregard for Plaintiff’s rights demonstrates that it will continue to infringe on
Plaintiff’s rights, absent an injunction. This finding further justifies granting Plaintiff’s request
for a permanent injunction.”); TechnoMarine SA v. Giftports, Inc., 758 F.3d 493, 504 (2d Cir.
2014) (“[T]he critical question for a district court in deciding whether to issue a permanent
injunction is whether there is a reasonable likelihood that the wrong will be repeated.” (citations
omitted)).
When infringement is allowed to continue unchecked, a copyright owner essentially loses
control of its intellectual property. And courts have found that this loss of control due to rampant
infringement is irreparable—especially in an online environment where an infringing file can be
shared ad nauseam with other users, thus compounding the harm. See Metro-Goldwyn-Mayer
Studios, Inc. v. Grokster, 518 F. Supp. 2d 1197, 1218 (C.D. Cal. 2007) (“When digital works are
distributed via the internet, every downloader who receives one of the copyrighted works is in
turn capable of also transmitting perfect copies of the works. Accordingly, the process is
potentially exponential rather than linear, threatening virtually unstoppable infringement of the
copyright.”); Groupe SEB USA, Inc. v. Euro-Pro Operating LLC, 774 F.3d 192, 204–05 (3d Cir.
2014) (“‘Grounds for irreparable injury include loss of control of reputation, loss of trade, and
loss of goodwill.’”) (quoting S & R Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d 371, 378–79 (3d Cir.
1992)).

40

Here, PRO distributes downloadable, printable copies of the standards, which can then be
taken from the Internet Archive and further shared anonymously and without any ability to trace
the individuals or entities using the Works or their purpose in doing so. 2d Supp. SMF ¶ 104;
SMF ¶¶ 247-48. And, as the Court noted in its earlier ruling granting an injunction in this case,
there is no sign this conduct will end absent an injunction. See ASTM I, 2017 WL 473822, at
*24. During the course of this litigation, PRO has continued to post additional standards owned
by Plaintiffs, and PRO has indicated that it has no intention of stopping its conduct absent
intervention from the Court. 2d Supp. SMF ¶ 110. These facts warrant an injunction so that
Plaintiffs can regain control of their copyrights and trademarks and do not need to bring a
damages lawsuit for each and every standard that is posted.
3.

Harm To Plaintiffs’ Reputations

Plaintiffs also have a right to protect their reputations. Indeed, courts have recognized
that using another’s trademark will result in irreparable harm because it causes the trademark
owner to lose control of the goodwill associated with its mark. Hanley-Wood LLC v. Hanley
Wood LLC, 783 F. Supp. 2d 147, 151 (D.D.C. 2011); Breaking the Chain Found., 589 F. Supp.
2d at 30. Here, “Plaintiffs have spent decades establishing the goodwill associated with their
names and logos, which the public associates with their high quality work.” SMF ¶ 245 (citing
Jarosz Rep. ¶ 151). Allowing PRO to publish inferior versions compromises that goodwill.
This risk is not just theoretical. PRO’s lax quality control standards, SMF ¶¶ 199-200,
resulted in PRO postings with errors that significantly altered the utility of standards, including
an error in an NFPA standard which mistook the letter “M” (an abbreviation for meters) to the
letters “I” and “N” (an abbreviation for inches), SMF ¶¶ 219 (Pauley Decl. 118-8 at ¶ 54). These
errors are still in the versions PRO posts. 2d Supp. SMF ¶¶ 14-18. Such carelessness poses a
serious risk to Plaintiffs’ reputations as creators of high-quality technical standards.
41

B.

Remedies Available At Law Are Inadequate

A permanent injunction should also be granted because there is no other appropriate
remedy. In cases where money damages are difficult to quantify or a defendant is unable to pay
money damages, the lack of alternative remedy makes an injunction appropriate. Fox Television
Stations, Inc. v. Filmon X LLC, 966 F. Supp. 2d 30, 50 (D.D.C. 2013). For instance, in Fox
Television, the Court found an injunction warranted where damages were “neither easily
calculable, nor easily compensable,” and the Court made particular note that the defendant
“would likely be unable to pay statutory copyright damages of $150,000 per work if Plaintiffs
prevail.” Id. The same considerations apply here.
The harms caused by PRO cannot be readily quantified.

First, the types of harm

sustained by Plaintiffs—including harm to Plaintiffs’ goodwill and impact on Plaintiffs’ business
models—are inherently difficult to quantify.

See Bell Hellicopter Textron Inc. v. Airbus

Helicopters, 78 F. Supp. 3d 253, 274-75 (D.D.C. 2015) (“losses to . . . customer base and
reputation defy attempts at valuation, and are unlikely to be remedied through a simple damages
calculation” (internal citations omitted)). Second, the amount of harm cannot be determined.
Because PRO posted Plaintiffs’ Works in a manner that allows them to be easily copied, shared,
downloaded, or printed by any member of the public, it is impossible to know how many
infringing copies or illegal distributions have been made. 2d Supp. SMF ¶ 92. PRO’s posted
versions of Plaintiffs’ standards, on its own site and, again, on the Internet Archive, have been
downloaded tens of thousands of times. Id. ¶ 99; SMF ¶¶ 241-44. PRO admits it generally has
no idea how the Works accessed from its website are ultimately used or by whom. SMF ¶¶ 24748; 2d Supp. SMF ¶ 104. Under these facts, actual monetary damages are impossible to assess.
In the absence of calculable damages, a copyright plaintiff could elect to receive statutory
damages available under the Copyright Act. However, any effort to recover statutory damages
42

would be futile since the damages award would far outweigh PRO’s assets. This case involves
hundreds of copyrighted works, and statutory damages can range up to $150,000 per work in
cases of willful infringement. 17 U.S.C. § 504(c). But PRO’s financial documents reveal that
PRO has limited assets and, as a self-described “charity,” is dependent on fundraising. SMF
¶ 272-73; 2d Supp. SMF ¶ 111. PRO simply does not have the ability to pay damages.
Notably, PRO does not dispute that monetary damages are inadequate in this case.
Instead, PRO’s position appears to be that there should be no remedy at all, irrespective of how
the copyright and trademarks issues are resolved. When asked at the initial summary judgment
hearing what would be an appropriate remedy, counsel for PRO responded: “I am not able to
say.” 2d Supp. SMF ¶ 112. Put simply, there is no adequate remedy but an injunction.
C.

The Balance Of Hardships Favors Issuing An Injunction

In contrast to the financial and reputational harms Plaintiffs face, an injunction would
cause no recognizable harm to PRO, so there is nothing to balance against the harms caused to
Plaintiffs.
PRO has admitted that there will be no financial harm if PRO’s posting of standards is
halted. Specifically, Mr. Malamud testified:
Q: If Public Resource was unable to continue to post the standards
incorporated by reference on its website, what impact, if any,
[would] that have on Public Resource’s financial ability to survive
long term?
A: Probably none.
Q: Can you identify any harm that would be suffered by Public
Resource if it was precluded [from] posting standards incorporated
by reference on its website?
A: THE WITNESS: We put a tremendous amount of effort in—
into this and one hates to [have] wasted that—that effort.
Q: Anything else that you can think of?

43

A: No.
SMF ¶ 277 (C. Malamud Dep. at 219:22-220:17).
PRO’s “wasted” effort expended in committing infringement is not a legally cognizable
harm. The law is clear that PRO cannot claim an equitable interest in its ability to undertake
infringing activity. Fox Television Stations, 966 F. Supp. 2d at 51; Triad Sys. Corp. v. Se.
Express Co., 64 F.3d 1330, 1338 (9th Cir. 1995) (defendant “cannot complain of the harm that
will befall it when properly forced to desist from its infringing activities.”); Concrete Mach. Co.
v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 612 (1st Cir. 1988) (harm from ceasing
infringement “‘merits little equitable consideration’”).
D.

The Public Interest Favors Issuing An Injunction.

It is undisputed that Plaintiffs do important work that serves the public good. The
standards at issue are devoted to issues of great importance to the public, including fire safety
and energy efficiency. In fact, Mr. Malamud readily admits that the NFPA “does amazing work
and saves lives,” that he is a “big fan of ASTM . . . and we need to continue to have standards in
that area,” and that “ASHRAE Standard 90.1 is an important standard.” SMF ¶¶ 164-67. It is
also widely accepted that these standards serve the public good by aiding government agencies
that would not otherwise have the resources or technical expertise to fulfill their regulatory duties
as well as they do currently. SMF ¶ 266 (citing Jarosz Rep. at ¶¶ 52-56; 164).
Unfortunately,

as

Mr.

Malamud

concedes,

“making

standards

more

freely

available . . . potentially poses a challenge to the current business models of the standards
development of some standards development organizations.” SMF ¶ 255. Indeed, Mr. Jarosz
explained in detail in his unrebutted expert report the various ways that Plaintiffs’ business
models (and the quality of their standards) are likely to change in the face of unfettered
infringement. SMF ¶¶ 259-62. That result is not surprising or unique to this case. Courts in this
44

circuit have recognized that the very policy considerations underpinning our copyright system
mandate that the public interest is best served by protecting the creative work of copyright
holders like Plaintiffs so that they will continue to create such works. See Fox Television
Stations, 966 F. Supp. 2d at 51 (“the public interest can only be served by . . . preventing the
misappropriation of skills, creative energies, and resources which are invested in the protected
work”) (internal citations omitted).
In contrast to the undisputed public interest served by Plaintiffs’ standards, PRO cannot
identify any adverse public impact that would arise if an injunction is granted. PRO can point to
no actual lack of access to Plaintiffs’ Works at issue in this litigation because Plaintiffs already
provide free read-only access to the standards on their websites. 2d Supp. SMF ¶ 85. Finally,
due to rulings in this case, PRO removed its public postings of Plaintiffs’ standards from the
internet in late 2015 and did not repost them until after the D.C. Circuit’s July 2018 ruling
remanding the case. Id. ¶¶ 11-12. PRO can point to no harm that befell the public as a result of
PRO’s postings being offline for more than two and a half years.
All available evidence suggests that the public’s interest is best served by granting
Plaintiffs’ request for an injunction.
CONCLUSION
For the foregoing reasons, the Court should grant summary judgment in favor of
Plaintiffs on their copyright infringement and trademark infringement claims and should
permanently enjoin PRO from infringing Plaintiffs’ copyrights and trademarks.

45

Dated: October 7, 2019

Respectfully submitted,
/s/ J. Kevin Fee
J. Kevin Fee (D.C. Bar: 494016)
Jane W. Wise (D.C. Bar: 1027769)
Morgan, Lewis & Bockius LLP
1111 Pennsylvania Ave., N.W.
Washington, D.C. 20004
Tel: [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)
MUNGER, TOLLES & OLSON LLP
560 Mission St., 27th Floor
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
Rose L. Ehler (pro hac vice)
MUNGER, TOLLES & OLSON LLP
350 South Grand Ave., 50th Floor
Los Angeles, CA 90071
Tel: [phone]
Email: [e-mail]
Rachel G. Miller-Ziegler
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.

46

/s/ J. Blake Cunningham
Jeffrey S. Bucholtz (D.C. Bar: 452385)
David Mattern
King & Spalding LLP
1700 Pennsylvania Avenue, NW, Ste. 200
Washington, DC 20006-4707
Tel: [phone]
Email: [e-mail]
J. Blake Cunningham
King & Spalding LLP
101 Second Street, Ste. 2300
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
Counsel for American Society of Heating,
Refrigerating, and Air Conditioning Engineers

47

CERTIFICATE OF SERVICE
I hereby certify that on October 7, 2019, the foregoing document was filed with the clerk
of this Court via the CM/ECF system and served on counsel of record via email, including:
Counsel for National Fire Protection Association, Inc.
Anjan Choudhury ([e-mail])
Kelly M. Klaus ([e-mail])
Rose L. Ehler ([e-mail])
Jonathan H. Blavin ([e-mail])
Counsel for American Society of Heating, Refrigerating, and Air Conditioning Engineers
Jeffrey S. Bucholtz ([e-mail])
Kenneth L. Steinthal ([e-mail])
J. Blake Cunningham ([e-mail])
Counsel for Public.Resource.Org, Inc.
Matthew B. Becker ([e-mail])
Andrew Bridges ([e-mail])
David Halperin ([e-mail])
Mitchell L. Stoltz ([e-mail])
Corynne McSherry ([e-mail])

Respectfully submitted,
/s/ J. Kevin Fee
J. Kevin Fee

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