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

Filing 21

Public.Resource.Org, Inc.'s ANSWER to Complaint with Jury Demand for Injunctive Relief, COUNTERCLAIM for Declaratory Relief against All Plaintiffs by PUBLIC.RESOURCE.ORG, INC.. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D, #5 Exhibit E)(Bridges, Andrew)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA

AMERICAN SOCIETY FOR TESTING AND
MATERIALS d/b/a/ ASTM INTERNATIONAL;

Case No. 1:13-cv-01215-EGS

NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and

PUBLIC.RESOURCE.ORG, INC.’S
COUNTERCLAIM FOR
DECLARATORY JUDGMENT,
ANSWER TO COMPLAINT FOR
INJUNCTIVE RELIEF, AND JURY
DEMAND

AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR-CONDITIONING
ENGINEERS, INC.
Plaintiffs,

Filed:

v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant.
PUBLIC.RESOURCE.ORG, INC.,
Counterclaimant,
v.
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, INC.
Counterdefendants.

1

August 6, 2013

COUNTERCLAIM FOR DECLARATORY RELIEF
Defendant-Counterclaimant Public.Resource.Org, Inc. (“Public Resource”), by and
through counsel, hereby counterclaims against Plaintiffs-Counterdefendants American Society
for Testing and Materials, d/b/a/ ASTM International (“ASTM”), National Fire Protection
Association, Inc. (“NFPA”), and American Society of Heating, Refrigerating, and Air
Conditioning Engineers, Inc. (“ASHRAE”) as follows:
INTRODUCTION
1.

As part of its mission to protect and promote the right of the public to know and

speak the laws that govern it, Public Resource has undertaken to make certain edicts of
government widely available to the public on a noncommercial basis.
2.

Legislatures and administrative agencies have frequently enacted into law, and

enforced, construction, fire, and other public safety codes.
3.

Public safety codes govern essential aspects of everyday life. They often carry

civil or criminal penalties. They are laws.
4.

Plaintiffs-Counterdefendants develop standards, of which some are safety codes.

From time to time Plaintiffs-Counterdefendants promote incorporation of safety codes into law.
From time to time they advocate to governments and regulatory bodies the adoption or
incorporation of safety codes into law.
5.

From time to time, Plaintiffs-Counterdefendants have succeeded in persuading

government entities, such as legislatures and agencies, to incorporate safety codes into law.
6.

Plaintiffs-Counterdefendants believe that they have a privileged relationship to

the safety codes that they have developed and have persuaded government entities to incorporate
into law.

2

7.

Plaintiffs-Counterdefendants believe that copyright law gives them a privileged

relationship to the safety codes that they have developed and have persuaded government entities
to incorporate into law.
8.

Plaintiffs-Counterdefendants believe that copyright law gives them the power to

deny others the lawful opportunity to make reproductions in copies of certain safety codes that
the law incorporates.
9.

Plaintiffs-Counterdefendants believe that copyright law gives them the power to

deny others the lawful opportunity to prepare derivative works based upon certain safety codes
that the law incorporates.
10.

Plaintiffs-Counterdefendants believe that copyright law gives them the power to

deny others the lawful opportunity to distribute to the public, by sale or other transfer of
ownership, or by rental, lease, or lending, copies of certain safety codes that the law incorporates.
11.

By claiming the power under copyright law to deny others the lawful opportunity

to engage in certain activities with respect to certain safety codes that the law incorporates,
Plaintiffs-Counterdefendants function as gatekeepers to certain public interactions with portions
of the law.
12.

Plaintiffs-Counterdefendants claim the power to set the conditions under which

the public shall have access to the safety codes that the law incorporates, and at what price the
public may gain certain privileges to interact with those codes.
13.

Copyright does not give any person or entity the power to control or limit access

to, or use of, the content of law.
14.

Copyright does not give any person or entity the power to control or limit access

to, or use of, or interaction with, the content of law incorporated by reference.

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15.

Standards development organizations (SDOs) like the Plaintiffs-

Counterdefendants are free to assert copyright in original, creatively expressed standards,
including safety codes, to the extent that government entities have not incorporated those
standards into law.
16.

SDOs are free to sell publications of, or access to, the standards they developed,

whether or not government entities have incorporated them into law, in any format they choose.
17.

The law does not permit Plaintiffs-Counterdefendants to prohibit Public Resource,

or any member of the public, from accessing, translating, reformatting, annotating, or publishing
the law.
18.

The law does not permit Plaintiffs-Counterdefendants to prohibit Public Resource,

or any member of the public, from reproducing or distributing for free accurate copies of safety
codes that the law incorporates, whether or not those copies contain PlaintiffsCounterdefendants’ names or logos.
PARTIES
19.

Defendant-Counterclaimant Public Resource is a California nonprofit corporation

with its principal place of business at 1005 Gravenstein Highway North, Sebastopol, California
95472.
20.

Plaintiff-Counterdefendant ASTM is a Pennsylvania not-for-profit corporation

with its principal place of business at 100 Barr Harbor Drive, West Conshohocken, Pennsylvania
19428.
21.

Plaintiff-Counterdefendant NFPA is a Massachusetts not-for-profit corporation

with its principal place of business located at One Batterymarch Park, Quincy, Massachusetts
02169.

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22.

Plaintiff-Counterdefendant ASHRAE is a New York not-for-profit corporation

with its principal place of business located at 1791 Tullie Circle N.E., Atlanta, Georgia 30329.
JURISDICTION AND VENUE
23.

This Court has subject-matter jurisdiction over the counterclaim pursuant to 17

U.S.C. § 101 et seq. (the Copyright Act); 15 U.S.C. § 1121 (the Lanham Act); 28 U.S.C. § 1331
(federal question); 28 U.S.C. § 1338(a) (exclusive federal copyright jurisdiction); and 28 U.S.C.
§ 2201 (the Declaratory Judgment Act).
24.

This Court has personal jurisdiction over ASTM, NFPA, and ASHRAE in that

each Plaintiff-Counterdefendant resides, may be found in, or transacts business in this District.
On information and belief, each Plaintiff-Counterdefendant maintains an office in Washington,
DC for the conduct of its regular activities.
25.

This Court also has personal jurisdiction over each Plaintiff-Counterdefendant

because each submitted to such jurisdiction for purposes of this these counterclaims by filing the
underlying case against Public Resource in this District.
26.

Venue is proper in this Court pursuant to 28 U.S.C. § 1391 and § 1400 because

each Plaintiff-Counterdefendant resides and may be found in this District, and because a
substantial part of the events giving rise to this counterclaim, including the filing of this lawsuit,
occurred in this District.
FACTS
I.

Public Resource’s Operations
27.

Public Resource is a tax-exempt, non-profit, public interest organization. Its

mission is to improve public access to government records and the law.

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28.

To accomplish this mission, Public Resource acquires copies of such records,

including legal decisions, tax filings, statutes, and regulations, and publishes them online in
easily accessible formats that make them more useful to readers, entirely free of charge.
29.

The Judicial Conference of the United States and members of both houses of

Congress, among others, have recognized Public Resource’s contributions to the public interest.
30.

Public Resource operates the websites public.resource.org, law.resource.org,

house.resource.org, and bulk.resource.org.
31.

Public Resource also operates a program that helps the public access U.S.

Government-produced videos (such as training films), called FedFlix, which Public Resource
originally developed in a joint venture with the National Technical Information Service and
subsequently in cooperation with the Archivist of the United States. FedFlix content has been
viewed more than 24 million times on YouTube.com.
32.

Public Resource hosts copies of safety codes that various government entities

have incorporated into law, such as building codes, fire safety codes, pipeline safety standards,
and food safety standards, at law.resource.org.
33.

Public Resource reformats some of the laws it publishes, including some public

safety codes, in order to make them easier to find, more useful, and more accessible to the
public.
34.

This reformatting includes putting codes into standard Hypertext Markup

Language (HTML), converting graphics into the standard Scalable Vector Graphics format, and
converting mathematical formulas into the standard Math Markup Language.

6

35.

These steps make the codes, including the diagrams and formulas they contain,

viewable with many different kinds of computer hardware and software, more accessible to
people with disabilities, and easier to translate and annotate.
36.

Public Resource applies rigorous quality control and proofreading when it

reformats codes. It has done so with the safety codes at issue in this case.
37.

Government employees, construction contractors, engineers, and other individuals

use the codes Public Resource publishes to learn about and follow the law, and to evaluate
others’ compliance with the law.
38.

Lowering barriers to access to safety codes that the law incorporates means that

students, factory workers, tradespeople, buyers, landlords, tenants, public interest organizations,
journalists, and concerned citizens will be more likely to read, understand, apply, and improve
the law.
39.

These activities enhance public safety, improve education in science, engineering,

and the trades, and encourage participation in government and in public policy debates.
40.

The growth of the Internet provides a tremendous opportunity for government to

inform its citizens in a broad and timely manner about the legal standards they must meet in
carrying out daily activities. It also allows business enterprises, university professors and
students, non-profits, and citizens to better organize and use this information.
41.

Public access to safety codes can be crucial when, for example, there is an

industrial accident such as the West, Texas fertilizer plant explosion; a natural disaster such as
the Moore, Oklahoma tornado; or when a homebuyer simply wishes to evaluate whether her
builder complied with the law in constructing a house. In these and similar situations, improving

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public access to and familiarity with the relevant safety codes can help the public identify and
prevent dangerous conditions before injury occurs.
42.

Public Resource does not publish privately drafted safety codes, except to the

extent that national, federal, state, or local governments have incorporated them into law.
43.

Where a government has incorporated a privately drafted safety code, and the

SDO that drafted the code has adopted and published a new version of the code, and no
government has incorporated the new version into law, Public Resource does not publish the new
version, because the new version is not law.
44.

Public Resource maintains an agent, registered with the U.S. Copyright Office, to

receive notifications of claimed copyright infringement, pursuant to the Digital Millennium
Copyright Act, 17 U.S.C. § 512(c)(2). Public Resource provides contact information for that
agent at https://public.resource.org/copyright_policy.html.
45.

Public Resource does not sell any copies of the law or charge for any access to the

law. This includes copies of, or access to, safety codes that the law incorporates.
46.

Like many charities, Public Resource offers for sale items bearing its logo, such

as stickers, T-shirts, and books by its founder. To date, Public Resource has made less than $100
in revenue from the sale of any items. Public Resource does not sell any items containing the text
of any standard.
47.

Except as described in the preceding paragraph, all of Public Resource’s funding

comes from charitable donations. No text or links soliciting donations appear on pages where
safety codes are displayed within Public Resource’s websites.
48.

Plaintiffs-Counterdefendants have no good-faith basis to believe Public Resource

sells copies of any standard.

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49.

Plaintiffs-Counterdefendants have no good-faith basis to believe Public Resource

sells any item bearing the name or logo of any SDO.
II.

Plaintiffs-Counterdefendants’ Operations
50.

Plaintiffs-Counterdefendants have multiple motivations to develop and

disseminate standards, including safety codes.
51.

Industry participants who are members of an SDO have incentives to promote the

SDO to develop standards.
52.

Standards help foster uniform practices within an industry. That uniformity

reduces waste and lowers costs for members of the industry. For example, standards allow
multiple providers of parts and labor to contribute to a construction or manufacturing project
while reducing the coordination required.
53.

In a 2009 document entitled “The Key to Energy Efficiency in Buildings,”

ASHRAE stated that “development of codes and standards” is one of the “overall least cost and
technically sound methods for improving efficiency.”
54.

Standards can enhance the reputation of an industry, such as by demonstrating the

industry’s commitment to quality, safety, or self-regulation.
55.

Members of an industry that comply with standards can gain a competitive

advantage over noncompliant competitors by explaining the benefits of compliance to potential
clients.
56.

The development of standards by SDOs reduces duplication of effort by members

of an industry.
57.

The efficiencies and other benefits of standards created by SDOs give members of

SDOs incentives to fund the SDOs.

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58.

Industry participants that are members of SDOs such as Plaintiffs-

Counterdefendants have incentives to encourage the SDOs of which they are members to
develop standards.
59.

An industry participant involved in the standard-writing process can influence an

SDO to adopt a standard similar to what that participant already practices. In this manner, an
industry participant can gain an advantage over competitors.
60.

The law does not incorporate the majority of standards developed by SDOs.

61.

Industry uses many standards that the law does not incorporate.

62.

SDOs update standards regularly regardless of whether the law incorporates such

updates.
63.

For example, Public Resource has posted the 2002 version of NFPA 13, Standard

for the Installation of Sprinkler Systems.
64.

The federal government has incorporated the 2002 version of NFPA 13 into

federal regulations.
65.

NFPA drafted a 2013 version of NFPA, and it sells that version.

66.

The 2013 version of NFPA 13 is not incorporated into federal regulations.

67.

Public Resource has not posted the 2013 version of NFPA 13.

68.

Plaintiffs-Counterdefendants have multiple ways to fund the development and

dissemination of standards, including safety codes.
69.

On information and belief, Plaintiff-Counterdefendant ASTM receives revenue

from member fees.
70.

On information and belief, Plaintiff-Counterdefendant NFPA receives revenue

from member fees.

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71.

On information and belief, Plaintiff-Counterdefendant ASHRAE receives revenue

from member fees.
72.

On information and belief, Plaintiff-Counterdefendant ASTM receives revenue

from training and conferences.
73.

On information and belief, Plaintiff-Counterdefendant NFPA receives revenue

from training and conferences.
74.

On information and belief, Plaintiff-Counterdefendant ASHRAE receives revenue

from training and conferences.
75.

On information and belief, Plaintiff-Counterdefendant ASTM receives revenue

from corporate sponsorships.
76.

On information and belief, Plaintiff-Counterdefendant NFPA receives revenue

from corporate sponsorships.
77.

On information and belief, Plaintiff-Counterdefendant ASHRAE receives revenue

from corporate sponsorships.
78.

On information and belief, Plaintiff-Counterdefendant ASTM receives revenue

from advertising.
79.

On information and belief, Plaintiff-Counterdefendant NFPA receives revenue

from advertising.
80.

On information and belief, Plaintiff-Counterdefendant ASHRAE receives revenue

from advertising.
81.

On information and belief, Plaintiff-Counterdefendant ASTM receives revenue

from the sale of copies of materials other than standards.

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82.

On information and belief, Plaintiff-Counterdefendant NFPA receives revenue

from the sale of copies of materials other than standards.
83.

On information and belief, Plaintiff-Counterdefendant ASHRAE receives revenue

from the sale of copies of materials other than standards.
84.

On information and belief, Plaintiff-Counterdefendant ASTM receives revenue

from the sale of printed copies of standards that the law does not incorporate.
85.

On information and belief, Plaintiff-Counterdefendant NFPA receives revenue

from the sale of printed copies of standards that the law does not incorporate.
86.

On information and belief, Plaintiff-Counterdefendant ASHRAE receives revenue

from the sale of printed copies of standards that the law does not incorporate.
87.

On information and belief, Plaintiff-Counterdefendant ASTM receives revenue

from the sale of printed copies of safety codes that the law incorporates.
88.

On information and belief, Plaintiff-Counterdefendant NFPA receives revenue

from the sale of printed copies of safety codes that the law incorporates.
89.

On information and belief, Plaintiff-Counterdefendant ASHRAE receives revenue

from the sale of printed copies of safety codes that the law incorporates.
90.

Other publishers receive revenue from the sale of copies of purely factual data

that is not subject to copyright, such as price lists, tide tables, or scientific datasets.
91.

Other publishers receive revenue from the sale of copies of material that is in the

public domain.
92.

On its 2011 Form 990 filing with the Internal Revenue Service, ASTM stated that

it received revenue from, among others, the following sources: Proficiency Test Programs

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($7,144,532); Membership Dues & Assessments ($2,123,002); Inspection Fees ($1,955,581);
and Seminars and Symposiums ($1,314,089).
93.

On its 2011 Form 990 filing with the Internal Revenue Service, NFPA stated that

it received revenue from, among others, the following sources: Membership Dues ($9,857,878);
Government Grants and “Contract Income” ($3,134,251); Direct Support ($392,143); Training
($8,799,681); Meetings and Seminars ($2,304,090); Members Magazine ($1,301,011); and
Investment Income ($3,029,862).
94.

On its 2011 Form 990 filing with the Internal Revenue Service, ASHRAE stated

that it received revenue from, among others, the following sources: Membership Dues
($7,057,728); Exposition Income ($4,179,361); Meeting[s] and Seminar[s] ($2,660,096); and
Special Projects ($1,127,856).
95.

As of June 24, 2012, ASHRAE was developing “a strategy for monetizing

ASHRAE’s standards development from a means other than the sale of the Society’s standards.”
The minutes of the ASHRAE Advisory Committee Meeting on June 24, 2012, reflect that fact.
96.

This initiative ended by April 2013 because ASHRAE found that the

republication of incorporated standards online posed “no credible threat to ASHRAE’s standard
development process.” The minutes of the ASHRAE Advisory Committee Meeting on April 10,
2013, reflect that fact. Exhibit A is a true and correct excerpt from those minutes.
97.

In a document dated August 14, 2013, NFPA announced its intention to develop

“products that provide explanatory content, ‘just in time’ learning, and customer workflow
solutions” and “products that derive from our codes and standards,” and to “enhance NFPA’s
identity as the authoritative source of adopted codes and standards.” Exhibit B is a true and
correct copy of that document, identified as “Content Strategy” and dated Aug. 14, 2013.

13

98.

Not all of the revenues that Plaintiff-Counterdefendant ASTM receives support

standards development.
99.

Not all of the revenues that Plaintiff-Counterdefendant NFPA receives support

standards development.
100.

Not all of the revenues that Plaintiff-Counterdefendant ASHRAE receives support

standards development.
101.

For example, according to NFPA’s 2011 Form 990 filing with the Internal

Revenue Service, NFPA paid its Chief Executive Officer $1,044,035 in salary for the year, and
$3,804,652 in total to its officers and directors.
102.

On information and belief, that compensation reflected many activities other than

standards development.
103.

Plaintiff-Counterdefendant ASTM has encouraged legislatures and/or rulemaking

bodies to incorporate standards developed by ASTM into law.
104.

Plaintiff-Counterdefendant NFPA has encouraged legislatures and/or rulemaking

bodies to incorporate standards developed by NFPA into law.
105.

Plaintiff-Counterdefendant ASHRAE has encouraged legislatures and/or

rulemaking bodies to incorporate standards developed by ASHRAE into law.
106.

For example, on February 28, 2011, Lynn G. Bellenger, then-President of

ASHRAE, sent a letter to several members of the Ohio General Assembly, stating that ASHRAE
“urges you to adopt as the new commercial building code in Ohio, ANSI/ASHRAE/IES Standard
90.1-2007 Energy Standard for Buildings Except Low-Rise Residential Buildings, which
provides minimum requirements for the energy-efficient design of buildings except low-rise
residential buildings.” Exhibit C is a true and correct copy of that letter.

14

107.

As another example, the “Build Strong Coalition,” of which NFPA is a member,

testified before the U.S. House of Representatives Transportation and Infrastructure Committee,
Subcommittee on Economic Development, Public Buildings and Emergency Management, on
July 14, 2011, urging the subcommittee to enact federal incentives for states to adopt building
codes.
108.

Plaintiffs-Counterdefendants make celebratory public statements when

government entities incorporate standards into law.
109.

For example, ASTM’s 2009 annual report (at page 11) boasted that “there were

2,000 references to ASTM standards in U.S. federal regulations,” and lists several examples of
new adoptions of ASTM standards by federal agencies.
110.

As another example, in the January 2007 edition of ASTM’s “Standardization

News,” ASTM proclaimed that “Legislators at the federal and state levels continue to recognize
the quality and relevance of ASTM International standards by choosing to reference them to
accomplish their legislative and regulatory agendas.”
111.

In a press release dated January 13, 2011, NFPA announced that the state of

Wisconsin had “adopted the most recent edition” of NFPA 1, Fire Code. Exhibit D is a true and
correct copy of that press release.
III.

Safety Codes That The Law Incorporates
112.

Safety codes that the law incorporates have the force of law.

113.

In the July/August 2010 edition of its “Standardization News,” ASTM stated that

“voluntary standards in effect become law by being cited in legislation or in the vast bodies of
regulation that government produces.” Exhibit E is a true and correct copy of that statement.

15

114.

In a document entitled “Content Strategy,” dated August 14, 2013, NFPA noted

that its codes had a “unique status, when adopted by reference, as ‘law.’” Exhibit B is a true and
correct copy of that document.
115.

Violations of some standards that government entities have incorporated into law

can result in civil or criminal penalties.
116.

Standards that government entities have incorporated into law direct the actions of

governments as well as private actors. For example, some energy codes apply to governmentowned buildings.
117.

The process of incorporating a standard into law is deliberative.

118.

The process of incorporating a standard into law involves the time, attention, and

judgment of legislators and/or administrative agencies.
119.

Incorporating a standard into law often involves the soliciting and consideration

of public comments, as with other laws and regulations. For example, the California Building
Standards Commission requests public comments on the incorporation of building codes.
http://www.bsc.ca.gov/Home/New/Notices.aspx provides an example of such a request.
120.

A government entity’s incorporation of a standard into law benefits the SDO that

developed the standard.
121.

For example, a government entity’s incorporation of a standard signals the

entity’s approval of the work of the SDO.
122.

In addition, SDOs compete with one another. The incorporation of a standard may

give an SDO an advantage over its competitor.
123.

Incorporation also gives users of a standard a degree of confidence that the

standard will continue to be relevant.

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124.

Incorporation may also give a competitive advantage to suppliers of materials and

labor that a standard requires, because the use of such materials and labor becomes a legal
requirement.
125.

The safety codes that the Plaintiffs-Counterdefendants develop and that the law

incorporates comprise rules.
126.

Many laws enacted by legislatures, and regulations promulgated by administrative

agencies, are highly technical, contain technical jargon, or incorporate the results of scientific
testing.
127.

For example, 47 C.F.R. § 73.319 contains a technical specification for certain

kinds of FM radio broadcasting that includes frequency ranges and mathematical formulas.
128.

Many laws and regulations govern the behavior of those in a particular trade,

profession, or other subset of society.
129.

The general public has an interest in the effect of these laws and regulations on

society, and in compliance with the laws.
130.

For example, the general public has an interest in learning how well the codes that

purport to establish minimum safety requirements for buildings and goods achieve their goals.
131.

The public cannot easily access many safety codes that the law incorporates. For

example, while federal regulations require that a copy of all material incorporated by reference
be deposited with the Office of the Federal Register, the public can view that deposited copy
only by making an appointment with that office, in Washington DC, on a specific date and time,
as the web page at http://www.archives.gov/federal-register/cfr/ibr-locations.html reveals.
132.

Incorporating a standard by reference into the Code of Federal Regulations

requires the same rulemaking procedures as other forms of promulgation of federal regulations.

17

47 Fed. Reg. 34108 (Aug. 6, 1982), Sec. 51.1(c)(2), provides that incorporation by reference
“[i]s not intended to detract from the legal or practical attributes of the system established by the
Federal Register Act, the Administrative Procedure Act, the regulations of the Administrative
Committee of the Federal Register, and the acts which require publication in the Federal
Register.”
133.

The National Technology Transfer and Advancement Act of 1995 instructs the

National Institute of Standards and Technology to “emphasi[ze] where possible the use of
standards developed by private, consensus organizations” but does not permit such use without
public comment and other regulatory and due process requirements. Public Law 104-113,
enacted March 7, 1996.
134.

ASTM has acknowledged that legislatures and administrative agencies, not

private organizations, create laws, notwithstanding the laws’ origins.
135.

On the homepage of its online “Reading Room” at

www.astm.org/READINGLIBRARY/index.html, ASTM warns the public that “[a]s a nongovernmental organization, ASTM does not control which ASTM standards (and versions
thereto) are referenced in federal regulations or laws.”
136.

In its “Intellectual Property Policy” adopted April 28, 1999, ASTM purports to

prohibit any and all “inputting, uploading, downloading, reproducing, or transmitting ASTM IP,”
including standards incorporated into law, without ASTM’s express permission.
137.

On information and belief, ASTM’s online “Reading Room” does not provide

access to safety codes that are incorporated into state law but not incorporated into federal law.
138.

The development and use of standards incorporated by reference can be costly for

governments.

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139.

For example, USASpending.Gov shows that as of August 8, 2013, the Federal

Government was spending $4,354,135 on NFPA materials, $3,054,914 on ASTM materials, and
$2,322,658 on ASHRAE materials. On information and belief, a substantial portion of that
money was spent on the purchase of safety codes.
140.

The Sonoma County, California Permit and Resource Management Department

spent $30,000 to purchase copies of safety codes for its staff in a single three-year code cycle.
141.

Governments contribute the time and work of public employees to assist with the

development of standards by SDOs, including Plaintiffs-Counterdefendants.
142.

The costs that federal agencies bear to provide this assistance are significant.

143.

ASTM’s July 2003 edition of “Standardization News” reported that federal

employees “agreed that obtaining support from their management to participate in development
activities is sometimes difficult.” That document is available at
http://www.astm.org/SNEWS/JULY_2003/howto_jul03.html.
144.

Governments often pay public employees’ travel expenses to attend meetings of

145.

Plaintiffs-Counterdefendants charge fees for access to copies of standards

SDOs.

incorporated into law.
146.

For example, the ASHRAE Bookstore, at

http://www.techstreet.com/ashrae/products/1199725, sells print and electronic copies of the
ANSI/ASHRAE/IESNA Standard 90 1-2010, Energy Standard for Buildings Except for LowRise Residential Buildings (I-P Edition), which is incorporated into the Code of Federal
Regulations at 10 CFR 433.2; 10 CFR 433.4(a)(1)(i); and 10 CFR 433.5(a)(1), for a list price of
$110.

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147.

As another example, NFPA sells copies of the 2005 National Electrical Code,

which is incorporated by reference at several places in the Code of Federal Regulations, for a list
price of $89.50, at http://www.nfpa.org/codes-and-standards/document-informationpages?mode=code&code=70.
148.

On information and belief, these fees are an impediment to many members of the

public who have an interest in the codes. In particular, the fees are an impediment for nonprofit
organizations that analyze or seek to influence the law on behalf of the public.
149.

For example, Public Resource spent at least $121,776.08 to purchase copies of

incorporated standards in 2012.
150.

Where Plaintiffs-Counterdefendants make incorporated standards available to the

public in electronic form, they from time to time place contractual or technological restrictions
on access to or use of those codes.
151.

One cannot easily search algorithmically, or analyze with the help of software, the

copies of incorporated standards that Plaintiffs-Counterdefendants make available to the public
in electronic form. This forecloses some useful methods of legal, policy, and economic analysis.
152.

The diagrams and equations in such copies cannot be resized or reformatted

without loss of detail.
153.

When Plaintiffs-Counterdefendants provide free online access to safety codes

incorporated in law, they apply technological means to prevent the public from copying or
printing the codes.
154.

ASTM’s online “Reading Room” at

www.astm.org/READINGLIBRARY/index.html provides access to safety codes incorporated
into the Code of Federal Regulations “for online reading” with “no print or download options.”

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155.

When NFPA makes standards available for free viewing on its website, it uses

technological means to prevent visitors from copying or printing the standards.
156.

When ASHRAE makes standards available for free viewing on its website, it uses

technological means, including a service called RealRead, to prevent visitors from copying or
printing the standards.
157.

RealRead requires Java software in order to run. Java is not available by default in

many computer operating systems and Web browsers, and it must often be downloaded from a
third party.
158.

Plaintiffs-Counterdefendants place copyright notices and legal warnings on copies

of standards, including standards that the law incorporates.
159.

By these notices and warnings Plaintiffs-Counterdefendants seek to discourage

the public from sharing, annotating, or excerpting the incorporated standards.
160.

These notices and warnings do discourage the public from sharing, annotating, or

excerpting the incorporated standards.
161.

For example, ASTM requires that anyone who accesses standards that

government entities have incorporated into law through its “Reading Room” website must agree
not to “publish, modify, transmit, reproduce, create new works from, distribute, sell, loan, nor in
anyway [sic] exploit” them. This agreement does not state any exclusion from that agreement for
educational, critical, and other uses that copyright law protects by the fair use doctrine.
162.

NFPA requires that anyone who accesses codes that government entities have

incorporated into law through its website must assent to an agreement that purports to permit fair
use of the code, but prohibits “the disabling, circumventing, or otherwise evading the read-only

21

or other technological measures that limit copying.” The agreement thus purports to prohibit the
public from making otherwise lawful uses of the codes.
163.

ASHRAE’s website contains a “Terms of Use” page at

https://www.ashrae.org/terms-of-use/, which asserts that “the site contains information, software,
photos, video, graphics, sound or other materials (collectively, ‘content’) that are protected by
copyrights.” The page further states “You may not modify, publish, transmit, participate in the
transfer or sale, create derivative works, or in any way exploit, any of the content, in whole or in
part.”
164.

Under the Freedom of the Information Act, 5 U.S.C. § 552(a)(1), and regulations

issued under it at 1 C.F.R. § 51.7(a)(4), materials, such as standards and technical requirements,
that are incorporated by reference into a federal regulation are deemed effectively published only
if such materials are reasonably available to and usable by the class of persons affected by the
publication.
165.

Uncertainty over which uses are permitted by copyright law and by Plaintiffs-

Counterdefendants’ terms and contracts discourages the public from sharing, annotating,
excerpting, quoting, and otherwise using safety codes that the law incorporates.
166.

Uncertainty over whether copyright law applies to safety codes that the law

incorporates, and the risk of high civil damages (including the theoretical possibility of
“statutory” damages), injunctions, criminal prosecution, and legal expenses discourage the public
from sharing, annotating, excerpting, quoting, and otherwise using the codes.
167.

This discouragement diminishes the public’s familiarity with, understanding of,

and ability to engage constructively with these important pieces of public law.

22

168.

When the public faces obstacles in using the incorporated safety codes, the

public’s familiarity with, understanding of, and ability to engage constructively with these
important pieces of public law may diminish.
169.

When the public faces costs in using the incorporated safety codes, the public’s

familiarity with, understanding of, and ability to engage constructively with these important
pieces of public law may diminish.
170.

Public Resource’s publication of safety codes that the law incorporates does not

impair Plaintiffs-Counterdefendants’ ability to develop standards.
171.

Public Resource’s publication of the safety codes that the law incorporates,

including safety codes in which Plaintiffs-Counterdefendants claim ownership, has given the
public greater access to those codes.
172.

Public Resource’s publication of the safety codes that the law incorporates,

including safety codes in which Plaintiffs-Counterdefendants claim ownership, has given the
public greater power to analyze and understand those codes.
173.

Public Resource’s publication of the safety codes that the law incorporates,

including safety codes in which Plaintiffs-Counterdefendants claim ownership, has lowered the
cost of public access to the law.
COUNT I
[Declaratory Relief Pursuant to 28 U.S.C. § 2201, et seq. (Declaratory Judgment Act)
and the Copyright Act (U.S.C. Title 17)]
174.

Defendant-Counterclaimant Public Resource incorporates by reference the

allegations in each of the preceding paragraphs as if fully set forth in this paragraph.
175.

The people are the authors of the law, regardless of who first pens the words that

later become law through enactment by a legislature or public agency.

23

176.

The principle that the law must be public and available to citizens to read and

speak has its roots in the concept of the rule of law itself.
177.

The legal principle that ignorance of the law is no defense presumes that all

citizens have access to the law.
178.

The First, Fifth and Fourteenth Amendments to the U.S. Constitution require that

all people have the power to read, speak, and disseminate the law.
179.

Laws and regulations are in the public domain and not subject to copyright.

180.

Laws and regulations do not lose their public domain status and become subject to

copyright restrictions because private parties drafted them.
181.

Laws and regulations do not lose their public domain status and become subject to

copyright restrictions because they incorporate material that private parties have drafted or
prepared.
182.

There is only one way to express a particular law fully and authoritatively, namely

with explicit reference to the language of the law and with explicit reference to any matters that
the law incorporates within itself.
183.

Once the law incorporates material in itself, use of that material by the public or

by private parties is lawful under copyright law through the doctrine of merger.
184.

Public Resource’s purpose in using the safety codes at issue in this litigation is to

facilitate scholarship, criticism, and analysis of public safety law; to inform the public about the
laws that govern them; for educational purposes; and to encourage public engagement with
public safety law.
185.

Upon their incorporation into law, incorporated expressions are factual as

statements of the law. Public Resource publishes the safety codes in their entirety. Scholarship,

24

criticism, analysis, and other public engagement with the law is not possible without access to a
complete code. Therefore, Public Resource publishes as much of the safety codes as is necessary
to fulfill its purposes.
186.

Public Resource’s use of the safety codes does not have an adverse effect on the

market for public safety standards incorporated into law.
187.

Even if copyright law protects codes after they are incorporated into law, which it

does not, Public Resource’s use of such codes is a fair use and thus is not an infringement of
copyright.
188.

There is a real and actual controversy between Public Resource and the Plaintiffs-

Counterdefendants regarding whether Public Resource’s copying, publication, and reformatting
of certain codes constitutes copyright infringement of Plaintiffs-Counterdefendants’ rights.
189.

The Plaintiffs-Counterdefendants are seeking an injunction against Public

Resource that would hinder Public Resource’s activities.
190.

Those activities are part of Public Resource’s mission of making the law

accessible to all.
191.

New codes that the Plaintiffs-Counterdefendants develop will likely – at their

encouragement – continue to be incorporated into law.
192.

Access to future incorporated codes may accordingly be subject to Plaintiffs-

Counterdefendants’ claim of power to restrict the public’s expression and distribution of, and
access to, those codes.
193.

The Plaintiffs-Counterdefendants would therefore have the power to inhibit public

discourse about and public use of the law.

25

194.

The controversy between Public Resource and the Plaintiffs-Counterdefendants is

thus real and substantial and demands specific relief through a conclusive judicial decree.
195.

Public Resource is entitled to a declaratory judgment that its copying, publication,

and reformatting of such of Plaintiffs’ codes that are incorporated into the law of any U.S.
jurisdiction do not infringe any copyright rights of Plaintiffs-Counterdefendants.
COUNT II
[Declaratory Relief Pursuant to 28 U.S.C. § 2201, et seq. (Declaratory Judgment Act)
and the Lanham Act (15 U.S.C. §§ 1051, et seq.)]
196.

Defendant-Counterclaimant Public Resource incorporates by reference the

allegations in each of the preceding paragraphs as if fully set forth in this paragraph.
197.

Public Resource’s reproduction of the logos and names of Plaintiffs-

Counterdefendants that appear in safety codes that the law incorporates is not a use in commerce
of those logos and names.
198.

Public Resource does not use the logos and names of Plaintiffs-Counterdefendants

that appear in safety codes in connection with the sale, offer for sale, distribution, or advertising
of goods or services.
199.

Public Resource’s reproduction of the logos and names of Plaintiffs-

Counterdefendants that appear in safety codes that the law incorporates is not likely to cause
confusion, to cause mistake, or to deceive consumers as to the source, sponsorship, or affiliation
of Public Resource, Public Resource’s website, or the law (including incorporated codes)
available through Public Resource’s website.
200.

Plaintiffs-Counterdefendants have no evidence showing that the public has

suffered any substantial mistake, deception, or confusion over whether Public Resource is the

26

source of, the sponsor of, or especially associated with the laws (incorporating codes) that Public
Resource publishes.
201.

Plaintiffs-Counterdefendants have no evidence showing that the public has

suffered any substantial mistake, deception, or confusion over whether Public Resource is the
source of, the sponsor of, or affiliated with Plaintiffs-Counterdefendants and their goods,
services, or commercial activities.
202.

Plaintiffs-Counterdefendants have no evidence showing that the public has

suffered any substantial mistake, deception, or confusion over whether any of them is the source
of, sponsors, or is affiliated with Public Resource’s publishing activities.
203.

Plaintiffs-Counterdefendants have no evidence showing that, as a result of Public

Resource’s activities, the public has suffered any substantial mistake, deception, or confusion
over whether any of them is, or is not, the source of a particular code that has been incorporated
in the law.
204.

The controversy between Public Resource and the Plaintiffs-Counterdefendants is

real and substantial and demands specific relief through a decree of a conclusive character.
205.

Public Resource is entitled to declaratory judgment that its reproduction in copies,

publication, and reformatting of codes that are incorporated into the law of any U.S. jurisdiction
that include the names or logos of one or more Plaintiff-Counterdefendant does not infringe any
statutory or common law trademark rights of Plaintiffs-Counterdefendants and does not
constitute unfair competition or false designation of origin.
PUBLIC.RESOURCE.ORG, INC.’S ANSWER TO COMPLAINT
FOR INJUNCTIVE RELIEF
Defendant Public.Resource.Org, Inc. (“Public Resource”) responds to Plaintiffs’
Complaint for Injunctive Relief as follows:

27

Defendant admits that this action purports to be by three not-for-profit standards
developing organizations: American Society for Testing and Materials d/b/a/ ASTM
International; National Fire Protection Association, Inc.; and American Society of Heating,
Refrigeration, and Air-Conditioning Engineers, Inc. Defendant admits that this action seeks
injunctive relief for alleged copyright infringement, contributory copyright infringement and
trademark infringement against Public.Resource.Org, Inc. Defendant denies the remaining
allegations of the preamble.
1.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 1 of the Complaint and therefore denies the allegations.
2.

Defendant admits that some standards are necessary for a well-functioning

economy and a safe society. Defendant denies that this system imposes virtually no costs on
governments or taxpayers while enabling government entities at every level to incorporate
private standards into their regulations or statutes as they see fit, or that it is subject to the
creators of the standards retaining the copyrights in the standards. Defendant lacks information
or belief sufficient to admit or deny the remaining allegations of paragraph 2 of the Complaint
and therefore denies the allegations.
3.

Defendant denies the allegations of paragraph 3 of the Complaint.

4.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 4 of the Complaint and therefore denies the allegations.
5.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 5 of the Complaint and therefore denies the allegations.
6.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 6 of the Complaint and therefore denies the allegations.

28

7.

Defendant admits the allegations of paragraph 7 of the Complaint.

8.

Defendant admits this purports to be an action for infringement and contributory

infringement of federally registered copyrights in violation of 17 U.S.C. § 501, infringement of
trademarks in violation of Sections 32 and 43 of the Lanham Act, 15 U.S.C. §§ 1114 and 1125,
and common law trademark infringement. Defendant denies the remaining allegations of
paragraph 8 of the Complaint.
9.

Defendant denies the allegations of paragraph 9 of the Complaint.

10.

Defendant denies the allegations of paragraph 10 of the Complaint.

11.

Defendant admits that it has participated in conferences, round tables, and

meetings in the District of Columbia. Defendant denies the remaining allegations in paragraph 11
of the Complaint.
12.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 12 of the Complaint and therefore denies the allegations.
13.

Defendant admits that standards sometimes may be developed by government

entities. Defendant lacks information or belief sufficient to admit or deny the remaining
allegations of paragraph 13 of the Complaint and therefore denies the allegations.
14.

Defendant admits that some privately developed standards are incorporated by

reference by government entities in statutes, regulations, and ordinances. Defendant lacks
information or belief sufficient to admit or deny the remaining allegations of paragraph 14 of the
Complaint and therefore denies the allegations.
15.

Defendant lacks information or belief sufficient to admit or deny that the United

States standards development system has evolved over more than a century as a decentralized
system of private organizations and therefore it denies the allegation. Defendant admits these

29

organizations develop standards in different ways, and for myriad of purposes. Defendant denies
the remaining allegations of paragraph 15 of the Complaint.
16.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 16 of the Complaint and therefore denies the allegations.
17.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 17 of the Complaint and therefore denies the allegations.
18.

Defendant denies the allegations of paragraph 18 of the Complaint.

19.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 19 of the Complaint and therefore denies the allegations.
20.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 20 of the Complaint and therefore denies the allegations.
21.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 21 of the Complaint and therefore denies the allegations.
22.

Defendant admits the allegations in paragraph 22 of the Complaint.

23.

Defendant denies the allegations in paragraph 23 of the Complaint.

24.

Defendant admits that private-sector standards are developed in a variety of ways,

and that some are developed by ad hoc business groups or consortia that convene to create
standards for a specific business purpose and do not provide for public review or broad
participation. Defendant lacks information or belief sufficient to admit or deny the remaining
allegations of paragraph 24 of the Complaint and therefore denies the allegations.
25.

Defendant admits that some organizations that develop voluntary consensus

standards are trade associations that fund their standards activities through membership or

30

participation fees. Defendant lacks information or belief sufficient to admit or deny the
remaining allegations of paragraph 25 of the Complaint and therefore denies the allegations.
26.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 26 of the Complaint and therefore denies the allegations.
27.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 27 of the Complaint and therefore denies the allegations.
28.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 28 of the Complaint and therefore denies the allegations.
29.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 29 of the Complaint and therefore denies the allegations.
30.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 30 of the Complaint and therefore denies the allegations.
31.

Defendant denies the allegations that Plaintiffs’ standards reflect the complex

expression of multitude of ideas, and contain original and highly creative content. Defendant
lacks information or belief sufficient to admit or deny the remaining allegations of paragraph 31
of the Complaint and therefore denies the allegations.
32.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 32 of the Complaint and therefore denies the allegations.
33.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 33 of the Complaint and therefore denies the allegations.
34.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 34 of the Complaint and therefore denies the allegations.

31

35.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 35 of the Complaint and therefore denies the allegations.
36.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 36 of the Complaint and therefore denies the allegations.
37.

Defendant admits a portion of these voluntary consensus standards have been

incorporated by reference into the laws of government entities, and that government entities have
used privately developed standards by incorporating the standards by reference into statues,
regulations, and ordinances. Defendant lacks information or belief sufficient to admit or deny the
remaining allegations of paragraph 37 of the Complaint and therefore denies the allegations.
38.

Defendant admits that in early part of the twentieth century, many state and local

governments adopted codes on such common subjects as construction, fire safety, and electrical
work. Defendant lacks information or belief sufficient to admit or deny the remaining allegations
of paragraph 38 of the Complaint and therefore denies the allegations.
39.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 39 of the Complaint and therefore denies the allegations.
40.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 40 of the Complaint and therefore denies the allegations.
41.

Defendant admits the allegations of paragraph 41 of the Complaint.

42.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 42 of the Complaint and therefore denies the allegations.
43.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 43 of the Complaint and therefore denies the allegations.

32

44.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 44 of the Complaint and therefore denies the allegations.
45.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 45 of the Complaint and therefore denies the allegations.
46.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 46 of the Complaint and therefore denies the allegations.
47.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 47 of the Complaint and therefore denies the allegations.
48.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 48 of the Complaint and therefore denies the allegations.
49.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 49 of the Complaint and therefore denies the allegations.
50.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 50 of the Complaint and therefore denies the allegations.
51.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 51 of the Complaint and therefore denies the allegations.
52.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 52 of the Complaint and therefore denies the allegations.
53.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 53 of the Complaint and therefore denies the allegations.
54.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 54 of the Complaint and therefore denies the allegations.
55.

Defendant admits the allegations in paragraph 55 of the Complaint.

33

56.

Defendant denies that the U.S. Department of Agriculture (USDA) BioPreferred

Program incorporates by reference ASTM D6866 – Standard Test Methods for Determining the
Biobased Content of Solid, Liquid, and Gaseous Samples Using Radiocarbon Analysis – to
calculate the biobased content included in a given material. Defendant lacks information or belief
sufficient to admit or deny the remaining allegations of paragraph 56 of the Complaint and
therefore denies the allegations.
57.

Defendant lacks information or belief sufficient to admit or deny whether over

1,200 ASTM standards, out of more than 12,000 total ASTM standards, are referenced in the
Code of Federal Regulations, and therefore it denies the allegation. Defendant denies the
remaining allegations of paragraph 57 of the Complaint.
58.

Defendant denies that ASTM owns or controls the copyrights and/or the relevant

exclusive rights in the works at issue in this case under the United States copyright laws.
Defendant further denies that Exhibit A is a list of the ASTM Standards that Defendant infringed
by the acts complained of in the Complaint. Defendant lacks information or belief sufficient to
admit or deny the remaining allegations of paragraph 58 of the Complaint and therefore denies
the allegations.
59.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 59 of the Complaint and therefore denies the allegations.
60.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 60 of the Complaint and therefore denies the allegations.
61.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 61 of the Complaint and therefore denies the allegations.

34

62.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 62 of the Complaint and therefore denies the allegations.
63.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 63 of the Complaint and therefore denies the allegations.
64.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 64 of the Complaint and therefore denies the allegations.
65.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 65 of the Complaint and therefore denies the allegations.
66.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 66 of the Complaint and therefore denies the allegations.
67.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 67 of the Complaint and therefore denies the allegations.
68.

Defendant denies that NFPA standards are advisory and are made available for a

wide variety of private and public uses. Defendant lacks information or belief sufficient to admit
or deny the remaining allegations of paragraph 68 of the Complaint and therefore denies the
allegations.
69.

Defendant admits that the municipal regulations of the District of Columbia

incorporate the NEC by reference. Defendant lacks information or belief sufficient to admit or
deny the allegations of paragraph 69 of the Complaint and therefore denies the allegations.
70.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 70 of the Complaint and therefore denies the allegations.
71.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 71 of the Complaint and therefore denies the allegations.

35

72.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 72 of the Complaint and therefore denies the allegations.
73.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 73 of the Complaint and therefore denies the allegations.
74.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 74 of the Complaint and therefore denies the allegations.
75.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 75 of the Complaint and therefore denies the allegations.
76.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 76 of the Complaint and therefore denies the allegations.
77.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 77 of the Complaint and therefore denies the allegations.
78.

Defendant denies that NFPA owns or controls the copyrights and/or relevant

exclusive rights in the works at issue in this case under the United States copyright laws.
Defendant denies that Exhibit B is a list of certain of NFPA copyrighted works that Defendant
has infringed by the acts complained of in the Complaint. Defendant lacks information or belief
sufficient to admit or deny the remaining allegations of paragraph 78 of the Complaint and
therefore denies the allegations.
79.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 79 of the Complaint and therefore denies the allegations.
80.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 80 of the Complaint and therefore denies the allegations.

36

81.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 81 of the Complaint and therefore denies the allegations.
82.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 82 of the Complaint and therefore denies the allegations.
83.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 83 of the Complaint and therefore denies the allegations.
84.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 84 of the Complaint and therefore denies the allegations.
85.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 85 of the Complaint and therefore denies the allegations.
86.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 86 of the Complaint and therefore denies the allegations.
87.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 87 of the Complaint and therefore denies the allegations.
88.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 88 of the Complaint and therefore denies the allegations.
89.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 89 of the Complaint and therefore denies the allegations.
90.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 90 of the Complaint and therefore denies the allegations.
91.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 91 of the Complaint and therefore denies the allegations.

37

92.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 92 of the Complaint and therefore denies the allegations.
93.

Defendant denies that ASHRAE owns or controls the copyrights and/or the

relevant exclusive rights in the works at issue in this case under the United States copyright laws.
Defendant denies that Exhibit C is a list of the ASHRAE Standards that Defendant has infringed
by the acts complained of in the Complaint. Defendant lacks information or belief sufficient to
admit or deny the remaining allegations of paragraph 93 of the Complaint and therefore denies
the allegations.
94.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 94 of the Complaint and therefore denies the allegations.
95.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 95 of the Complaint and therefore denies the allegations.
96.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 96 of the Complaint and therefore denies the allegations.
97.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 97 of the Complaint and therefore denies the allegations.
98.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 98 of the Complaint and therefore denies the allegations.
99.

Defendant lacks information or belief sufficient to admit or deny whether the

most expensive ASTM standard costs $71 and whether most ASTM standards cost between $25
and $35, and therefore it denies the allegations. Defendant denies the remaining allegations of
paragraph 99 of the Complaint.

38

100.

Defendant denies that NFPA sells its standards at a reasonable cost to

professionals and tradespeople who use the standards. Defendant lacks information or belief
sufficient to admit or deny the remaining allegations of paragraph 100 of the Complaint and
therefore denies the allegations.
101.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 101 of the Complaint and therefore denies the allegations.
102.

Defendant admits that the specific details surrounding access to standards vary

depending on the SDO at issue, the nature of the standard, and the audience that consumes it.
Defendant denies the remaining allegations of paragraph 102 of the Complaint.
103.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 103 of the Complaint and therefore denies the allegations.
104.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 104 of the Complaint and therefore denies the allegations.
105.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 105 of the Complaint and therefore denies the allegations.
106.

Defendant denies that that 1 C.F.R. § 51.7(a)(4) of the Code of Federal

Regulations states that any materials incorporated by reference at the federal level must be
“reasonably available to and usable by the class of persons affected by the publication.”
Defendant denies that 1 C.F.R. §§ 5.2, 51.9(b)(4) requires that the Office of the Federal Register
and the relevant agency each must maintain a hard copy of any material incorporated by
reference that is available for public inspection. Defendant lacks information or belief sufficient
to admit or deny the remaining allegations of paragraph 106 of the Complaint and therefore
denies the allegations.

39

107.

Defendant admits that the Code of Federal Regulations does not provide a precise

definition of the term “reasonably available.” Defendant lacks information or belief sufficient to
admit or deny the remaining allegations of paragraph 107 of the Complaint and therefore denies
the allegations.
108.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 108 of the Complaint and therefore denies the allegations.
109.

Defendant denies that OMB Circular 119-A also takes the position that

incorporation by reference of a standard does not destroy the copyright in that standard.
Defendant lacks information or belief to admit or deny the remaining allegations in paragraph
109 of the Complaint and therefore denies the allegations.
110.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 110 of the Complaint and therefore denies the allegations.
111.

Defendant denies the allegations of paragraph 111 of the Complaint.

112.

Defendant denies the allegations of paragraph 112 of the Complaint.

113.

Defendant admits that it sent packages including a packing slip informing the

recipient of the cost Public Resource expended to obtain the standards and requesting comment.
Defendant denies the remaining allegations in paragraph 113 of the Complaint.
114.

Defendant admits that its statements to the media made it clear that it intended to

begin posting 73 standards incorporated by reference into federal regulations on the Internet in
HTML format. Defendant lacks information or belief as to how Plaintiffs obtained Exhibit D
sufficient to admit or deny, and therefore it denies the allegation.
115.

Defendant denies the allegations of paragraph 115 of the Complaint.

116.

Defendant denies the allegations of paragraph 116 of the Complaint.

40

117.

Defendant admits that it “rekeyed” some of the standards that government entities

have incorporated by reference into law and that Plaintiffs claim Defendant infringed in this
action and posted them on its website in html format. Defendant also admits that it converted
graphics within some of the standards that government entities have incorporated by reference
into law, and that Plaintiffs claim Defendant infringed in this action, into the open Scalable
Vector Graphics (SVG) format, which enables the images to be searched, indexed, scripted, and
compressed. Defendant further admits that it reset mathematical formulas into the Math Markup
Language application that integrates mathematical formulae into web pages and other documents
to make it easier for members of the public to manipulate the standards. Defendant also admits
that it added metadata to the document “headers,” which made the standards that government
entities have incorporated by reference into law and that Plaintiffs claim Defendant infringed in
this action more accessible and discoverable by Internet search engines, thereby increasing the
number of people who might access the standards and disseminate them further. Defendant
denies that any of its efforts changed the content of the laws it posted to its website. Defendant
lacks information or belief as to how Plaintiffs obtained Exhibit E sufficient to admit or deny,
and therefore it denies the allegation. Defendant denies the remaining allegations in paragraph
117 of the Complaint.
118.

Defendant admits that its website has a page labeled “Public Safety Codes

Incorporated By Law,” with a separate section linking to copies of standards incorporated by
reference by the District of Columbia, including the National Electrical Code. Defendant lacks
information or belief as to how Plaintiffs obtained Exhibit F sufficient to admit or deny, and
therefore it denies the allegation. Defendant denies the remaining allegations in paragraph 118
of the Complaint.

41

119.

Defendant admits that, according to its website, standards have the force of law

when they are incorporated by reference and:
[t]he law belongs to the people, and cannot become the private property of some
governmental or non-governmental organization, no matter how seemingly well-deserved
are the rents one could extract from winning a monopoly concession on a parcel of the
law. While standards bodies need money to carry out their valuable work, and while it is
clear that these standards bodies create high-quality documents that are essential to our
public safety, one cannot cordon off the public domain simply because of an institutional
desire for funds.
Defendant denies the remaining allegations of paragraph 119 of the Complaint.
120.

Defendant lacks information or belief that standards that it claims were

incorporated by reference into federal law have not in fact been incorporated into the Code of
Federal Regulations, and therefore it denies the allegation. Defendant denies the remaining
allegations in paragraph 120 of the Complaint.
121.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 121 of the Complaint and therefore denies the allegations.
122.

Defendant denies the allegations of paragraph 122 of the Complaint.

123.

Defendant denies the allegations of paragraph 123 of the Complaint.

124.

Defendant lacks information or belief as to how Plaintiffs obtained Exhibit G

sufficient to admit or deny, and therefore it denies the allegation. Defendant denies the
remaining allegations in paragraph 124 of the Complaint.

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125.

Defendant lacks information or belief as to how Plaintiffs obtained Exhibit H

sufficient to admit or deny, and therefore it denies the allegation. Defendant denies the
remaining allegations in paragraph 125 of the Complaint.
126.

Defendant lacks information or belief as to how Plaintiffs obtained Exhibit I

sufficient to admit or deny, and therefore it denies the allegation. Defendant denies the
remaining allegations in paragraph 126 of the Complaint.
127.

Defendant denies the allegations of paragraph 127 of the Complaint.

128.

Defendant lacks information or belief as to how Plaintiffs obtained Exhibit G

sufficient to admit or deny, and therefore it denies the allegation. Defendant denies the
remaining allegations in paragraph 128 of the Complaint.
129.

Defendant admits that many of the documents Defendant displays on its website

that Plaintiffs claim are infringing are not the current versions of the standards that have been
published by the relevant Plaintiff, as Defendant publishes only the versions that are current or
historical law. Defendant admits that such documents do not contain any notation that indicates
that they are not the current versions of the standards that have been published by the relevant
Plaintiff, for the reason that those later versions are not current or historical law. Defendant
denies the remaining allegations of paragraph 129.
130.

Defendant admits that it has retyped the text of some of the standards that

government entities have incorporated by reference into law, and that Plaintiffs claim Defendant
infringed in this action, and converted many of the graphics into accessible formats, and it did
this so that it could convert the standards into different formats. Defendant denies that it redrew
any graphics in a manner that altered the law at issue. Defendant lacks information or belief

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sufficient to admit or deny the remaining allegations of paragraph 130 of the Complaint and
therefore denies the allegations.
131.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 131 of the Complaint and therefore denies the allegations.
132.

Defendant denies the allegations of paragraph 132 of the Complaint.

133.

Defendant denies the allegations of paragraph 133 of the Complaint.

134.

Defendant denies the allegations of paragraph 134 of the Complaint.

135.

Defendant denies the allegations of paragraph 135 of the Complaint.

136.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 136 of the Complaint and therefore denies the allegations.
137.

Defendant denies the allegations of paragraph 137 of the Complaint.

138.

Defendant denies the allegations of paragraph 138 of the Complaint.

139.

Defendant denies the allegations of paragraph 139 of the Complaint.

140.

Defendant denies the allegations of paragraph 140 of the Complaint.

141.

Defendant denies the allegations of paragraph 141 of the Complaint.
COUNT I

142.

Defendant repeats and incorporates here its responses to paragraphs 1-141 above.

143.

Defendant denies the allegations of paragraph 143 of the Complaint.

144.

Defendant denies the allegations of paragraph 144 of the Complaint.

145.

Defendant denies the allegations of paragraph 145 of the Complaint.

146.

Defendant denies the allegations of paragraph 146 of the Complaint.

147.

Defendant denies the allegations of paragraph 147 of the Complaint.

148.

Defendant admits that it rekeyed some the standards that government entities have

incorporated by reference into law, and that Plaintiffs claim Defendant infringed in this action,
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and displayed copies of these standards on its website. Defendant denies the remaining
allegations of paragraph 148 of the Complaint.
149.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 149 of the Complaint and therefore denies the allegations.
150.

Defendant denies the allegations of paragraph 150 of the Complaint.

151.

Defendant denies the allegations of paragraph 151 of the Complaint

152.

Defendant denies the allegations of paragraph 152 of the Complaint.

153.

Defendant denies the allegations of paragraph 153 of the Complaint.

154.

Defendant denies the allegations of paragraph 154 of the Complaint.

155.

Defendant denies the allegations of paragraph 155 of the Complaint.

156.

Defendant denies the allegations of paragraph 156 of the Complaint.
COUNT II

157.

Defendant repeats and incorporates here its responses to paragraphs 1-156 above.

158.

Defendant admits the allegation in paragraph 158 of the Complaint.

159.

Defendant denies the allegations of paragraph 159 of the Complaint.

160.

Defendant denies the allegations of paragraph 160 of the Complaint.

161.

Defendant denies the allegations of paragraph 161 of the Complaint.
COUNT III

162.

Defendant repeats and incorporates here its responses to paragraphs 1-161 above.

163.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 163 of the Complaint and therefore denies the allegations.
164.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 164 of the Complaint and therefore denies the allegations.

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165.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 165 of the Complaint and therefore denies the allegations.
166.

Defendant denies the allegations of paragraph 166 of the Complaint.

167.

Defendant denies the allegations of paragraph 167 of the Complaint.

168.

Defendant denies the allegations of paragraph 168 of the Complaint.

169.

Defendant denies the allegations of paragraph 169 of the Complaint.

170.

Defendant denies the allegations of paragraph 170 of the Complaint.

171.

Defendant denies the allegations of paragraph 171 of the Complaint.

172.

Defendant denies the allegations of paragraph 172 of the Complaint.
COUNT IV

173.

Defendant repeats and incorporates here its responses to paragraphs 1-172 above.

174.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 174 of the Complaint and therefore denies the allegations.
175.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 175 of the Complaint and therefore denies the allegations.
176.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 176 of the Complaint and therefore denies the allegations.
177.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 177 of the Complaint and therefore denies the allegations.
178.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 178 of the Complaint and therefore denies the allegations.
179.

Defendant denies the allegations of paragraph 179 of the Complaint.

180.

Defendant denies the allegations of paragraph 180 of the Complaint.

181.

Defendant denies the allegations of paragraph 181 of the Complaint.
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182.

Defendant denies the allegations of paragraph 182 of the Complaint.

183.

Defendant denies the allegations of paragraph 183 of the Complaint.

184.

Defendant denies the allegations of paragraph 184 of the Complaint.
COUNT V

185.

Defendant repeats and incorporates here its responses to paragraphs 1-184 above.

186.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 186 of the Complaint and therefore denies the allegations.
187.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 187 of the Complaint and therefore denies the allegations.
188.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 188 of the Complaint and therefore denies the allegations.
189.

Defendant lacks information or belief sufficient to admit or deny the allegations

of paragraph 189 of the Complaint and therefore denies the allegations.
190.

Defendant denies the allegations of paragraph 190 of the Complaint.

191.

Defendant denies the allegations of paragraph 191 of the Complaint.

192.

Defendant denies the allegations of paragraph 192 of the Complaint.

193.

Defendant denies the allegations of paragraph 193 of the Complaint.

194.

Defendant denies the allegations of paragraph 194 of the Complaint.

195.

Defendant denies the allegations of paragraph 195 of the Complaint.
AFFIRMATIVE AND OTHER DEFENSES

Defendant asserts the following defenses, whether affirmative or otherwise. Defendant
reserves all further defenses that may now or in the future exist based on discovery and further
factual investigation in the case.

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1.

The Complaint and each claim within it fail to allege facts sufficient to state a
cause of action.

2.

Plaintiffs have no copyrights in works that government entities have incorporated
by reference into law.

3.

Lack of ownership of the alleged copyrights bars Plaintiffs’ copyright claims.

4.

Defendant’s lack of use in commerce bars Plaintiffs’ trademark claims.

5.

The lack of likelihood of confusion bars Plaintiffs’ trademark claims.

6.

The doctrines of copyright and trademark fair use bar Plaintiffs’ claims.

7.

The doctrine of unclean hands bars Plaintiffs’ claims.

8.

The doctrine of copyright misuse bars Plaintiffs’ copyright claims.

9.

The doctrine of trademark misuse bars Plaintiffs’ trademark claims.

10.

Waiver and estoppel bar Plaintiffs’ claims.

11.

Lack of irreparable injury bars Plaintiffs’ demand for injunction.

12.

Injunction would greatly harm the public interest and thus the public interest bars
Plaintiffs’ demand for injunction.

PRAYER FOR RELIEF
WHEREFORE, Public Resource prays for judgment in its favor and against PlaintiffsCounterdefendants as follows:
1.

That Plaintiffs-Counterdefendants take nothing by their claims and that the Court
enter judgment in favor of Public Resource on both the complaint and the
counterclaim;

2.

That the Court declare:
a. That Public Resource is not liable for copyright infringement for the
copying, publication, and reformatting, to the present date, of safety codes
in which Plaintiffs-Counterdefendants claim rights;

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b. That Public Resource is not liable for copyright infringement for any
future copying, publication, and reformatting of safety codes in which
Plaintiffs-Counterdefendants claim rights to the extent that such codes
have been incorporated into the law of one or more jurisdictions within the
United States;
3.

That the Court enter an order enjoining Plaintiffs-Counterdefendants, their agents,
attorneys, and assigns from asserting any copyright claim against Public Resource
in connection with publication of safety codes in which PlaintiffsCounterdefendants claim rights, to the extent that such codes have been
incorporated into the law of one or more jurisdictions within the United States;

4.

That the Court declare that Public Resource has not infringed any trademark right
through the copying, publication, and reformatting of safety codes in which
Plaintiffs-Counterdefendants claim rights, including Plaintiffs-Counterdefendants’
names and logos contained within the codes;

5.

That the Court enter an order enjoining Plaintiffs-Counterdefendants, their agents,
attorneys, and assigns from asserting any trademark or unfair competition claim
against Public Resource for the reproduction and dissemination of PlaintiffsCounterdefendants’ names and logos as they appear in safety codes in which
Plaintiffs-Counterdefendants claim rights;

6.

That the Court award Public Resource costs of suit, including reasonable
attorneys’ fees under the Copyright Act;

7.

That the Court award Public Resource attorneys’ fees in this exceptional case
under the Lanham Act; and

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8.

That the Court grant any further relief it considers just and proper.

DEMAND FOR JURY TRIAL
Defendant-Counterclaimant Public Resource requests trial by jury.

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Dated: September 27, 2013

Respectfully submitted,
/s/ Andrew P. Bridges
Andrew P. Bridges (admitted)
abridges @fenwick.com
Kathleen Lu (admission pro hac vice pending)
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Telephone: [phone]
Facsimile: [phone]
David Halperin (D.C. Bar No. 426078)
[e-mail]
1530 P Street NW
Washington, DC 20005
Telephone: [phone]
Mitchell L. Stoltz (D.C. Bar No. 978149)
[e-mail]
Corynne McSherry (admission pro hac vice
pending)
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
Facsimile: [phone]
Joseph C. Gratz
[e-mail]
Mark A. Lemley
[e-mail]
DURIE TANGRI LLP
217 Leidesdorff Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

SF/5444350.9

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