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

Filing 213

RESPONSE re 202 MOTION for Summary Judgment filed by AMERICAN SOCIETY FOR TESTING AND MATERIALS, AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC., NATIONAL FIRE PROTECTION ASSOCIATION, INC.. (Attachments: # 1 Plaintiffs' Third Supplemental Statement of Material Facts, # 2 Declaration of Thomas O'Brien, # 3 Declaration of Jane W. Wise, # 4 Exhibit 174, # 5 Exhibit 175, # 6 Exhibit 176, # 7 Exhibit 177 (Part 1), # 8 Exhibit 177 (Part 2), # 9 Exhibit 177 (Part 3), # 10 Exhibit 178, # 11 Exhibit 179, # 12 Exhibit 180, # 13 Exhibit 181, # 14 Exhibit 182, # 15 Exhibit 183, # 16 Exhibit 184, # 17 Exhibit 185, # 18 Exhibit 186, # 19 Plaintiffs' Response to Defendant's Statement of Disputed Facts (Redacted), # 20 Plaintiffs' Statement of Disputed Facts and Objections, # 21 Plaintiffs' Response to Defendant's Evidentiary Objections, # 22 Plaintiffs' Opposition to Defendant's Request for Judicial Notice)(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’ COMBINED MEMORANDUM OF LAW IN
OPPOSITION TO PRO’S SECOND MOTION FOR SUMMARY JUDGMENT AND
REPLY IN SUPPORT OF PLAINTIFFS’ SECOND MOTION FOR
SUMMARY JUDGMENT AND FOR A PERMANENT INJUNCTION

TABLE OF CONTENTS
Page

INTRODUCTION ...........................................................................................................................1 
ADDITIONAL BACKGROUND ...................................................................................................3 
A. 
B. 
I. 

Congress And The Executive Branch Chose Incorporation By Reference
As The Balance Between The Benefits Of Copyright And Public Access..............3 
Despite PRO’s Lobbying, Congress Chose Not To Change The Law. ...................6 

Plaintiffs Are Entitled To Summary Judgment On Their Copyright Claims.......................7 
A. 

PRO Fails To Meet Its Burden To Show That Wholesale Copying And
Widespread Distribution Of Plaintiffs’ Works Is Fair Use. .....................................7 
1. 

First Factor: PRO Has Not Raised A Triable Issue As To The
Purpose And Character Of Its Wholesale Copying And
Distribution. .................................................................................................7 
a. 

The 2018 IBR Handbook does not establish that all the
material PRO has copied and distributed is essential to
complying with legal obligations. ....................................................8 

b. 

PRO’s “purpose” in wholesale copying and disseminating
is not meaningfully different from Plaintiffs. ................................14 

c. 

PRO’s provision of the standards in new formats is not
transformative. ...............................................................................17 

2. 

Second Factor: PRO Has Refused To Engage With The Nature Of
The Copyrighted Works, And Accordingly, Has Not Met Its
Burden On This Factor...............................................................................19 

3. 

Third Factor: PRO Has Not Limited Its Copying To Those
Portions Of Standards That Are Essential To Complying With
Legal Duties. ..............................................................................................19 

4. 

Fourth Factor: PRO’s postings pose a substantial threat to the
actual and potential markets for Plaintiffs’ standards. ...............................20 
a. 
b. 

B. 
II. 

PRO misconstrues its burden on this factor. ..................................21 
The answers to the D.C. Circuit’s questions for remand on
this factor favor Plaintiffs, not PRO. .............................................23 

The D.C. Circuit Did Not Remand For Reconsideration Of PRO’s
“Ownership” Arguments, Which Are Meritless In Any Event..............................24 

Plaintiffs Are Entitled To Summary Judgment On Their Trademark Infringement
Claims. ...............................................................................................................................26 

i

TABLE OF CONTENTS
(continued)
Page
III. 

Plaintiffs Are Entitled To A Permanent Injunction. ..........................................................32 
A. 

PRO Fails To Address The Inadequacy Of Other Available Remedies. ...............32 

B. 

PRO’s Attempt To Address The Other Three eBay Factors Fails. ........................33 
1. 
2. 

Balancing The Hardships Favors Issuing An Injunction. ..........................36 

3. 
C. 

Plaintiffs Will Suffer Irreparable Injury. ...................................................33 
An Injunction Serves The Public Interest. .................................................37 

PRO’s Constitutional Arguments Are Unavailing. ................................................38 
1. 

PRO’s First Amendment Argument Ignores Well-Settled Case
Law. ...........................................................................................................38 

2. 

PRO’s Due Process Argument Is Meritless And Improper. ......................39 

CONCLUSION ..............................................................................................................................40 

ii

TABLE OF AUTHORITIES
Page(s)
FEDERAL CASES
Alaska Stock, LLC v. Houghton Mifflin Harcourt Pub. Co.,
747 F.3d 673 (9th Cir. 2014) ...................................................................................................26
Am. Immigration Lawyers Ass’n v. Reno,
199 F.3d 1352 (D.C. Cir. 2000) ...............................................................................................40
Am. Soc’y for Testing & Materials 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
Am. Wildlands v. Kempthorne,
530 F.3d 991 (D.C. Cir. 2008) .............................................................................................9, 11
Arista Records, LLC v. Doe 3,
604 F.3d 110 (2d Cir. 2010).....................................................................................................39
Arista Records LLC v. Lime Wire LLC,
No. 06 CIV. 05936 KMW, 2010 WL 10031251 (S.D.N.Y. Aug. 9, 2010) .............................35
Australian Gold, Inc. v. Hatfield,
436 F.3d 1228 (10th Cir. 2006) ...............................................................................................31
Authors Guild v. Google, Inc.,
804 F.3d 202 (2d Cir. 2015)...............................................................................................17, 23
Aviva United States Corp. v. Vazirani,
902 F. Supp. 2d 1246 (D. Ariz. 2012) ...............................................................................29, 30
Bell Helicopter Textron, Inc. v. Airbus Helicopters,
78 F. Supp. 3d 253 (D.D.C. 2015) ...........................................................................................34
Brammer v. Violent Hues Prods., LLC,
922 F.3d 255 (4th Cir. 2019) ...................................................................................................16
Brownmark Films, LLC v. Comedy Partners,
682 F.3d 687 (7th Cir. 2012) ...................................................................................................16
Cairns v. Franklin Mint Co.,
292 F.3d 1151 (9th Cir. 2002) .................................................................................................26
iii

TABLE OF AUTHORITIES
(continued)
Page(s)
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) .................................................................................................1, 14, 16, 21
Cariou v. Prince,
714 F.3d 694 (2d Cir. 2013).....................................................................................................15
Century 21 Real Estate Corp. v. Lendingtree, Inc.,
425 F.3d 211 (3d Cir. 2005).........................................................................................27, 28, 30
Cnty. of Suffolk, New York v. First Am. Real Estate Solutions,
261 F.3d 179 (2d Cir. 2001)...............................................................................................16, 39
Cooper Notifications, Inc. v. Twitter, Inc.,
No. 09-865-LPS, 2010 WL 5149351 (D. Del. Dec. 13, 2010) ................................................34
eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388 (2006) ...............................................................................................32, 33, 35, 38
Eldred v. Ashcroft,
537 U.S. 186 (2003) .......................................................................................................2, 38, 39
Fox Television Stations, Inc. v. Filmon X LLC,
966 F. Supp. 2d 30 (D.D.C. 2013) ...........................................................................................37
Garcia v. Google, Inc.,
786 F.3d 733 (9th Cir. 2015) ...................................................................................................36
Golan v. Holder,
565 U.S. 302 (2012) ...........................................................................................................38, 39
Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539 (1985) .......................................................................................................2, 38, 39
Home Box Office, Inc. v. Showtime/The Movie Channel Inc.,
832 F.2d 1311 (2d Cir. 1987)...................................................................................................31
Kahle v. Gonzales,
487 F.3d 697 (9th Cir. 2007) ...................................................................................................39
Kowalski v. Tesmer,
543 U.S. 125 (2004) .................................................................................................................40

iv

TABLE OF AUTHORITIES
(continued)
Page(s)
LaShawn A. v. Barry,
87 F.3d 1389 (D.C. Cir. 1996) .................................................................................................25
McGregor-Doniger, Inc. v. Drizzle, Inc.,
599 F.2d 1126 (2d Cir. 1979)...................................................................................................28
Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc.,
722 F.3d 591 (4th Cir. 2013) ...................................................................................................26
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd.,
518 F. Supp. 2d 1197 (C.D. Cal. 2007) ...................................................................................35
Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc.,
166 F.3d 65 (2d Cir. 1999).......................................................................................................18
Oriental Fin. Grp., Inc. v. Cooperativa De Ahorro Crédito Oriental,
698 F.3d 9 (1st Cir. 2012) ........................................................................................................27
Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146 (9th Cir. 2007) .................................................................................................16
Proctor & Gamble Co. v. Team Technologies, Inc.,
No. 1:12-cv-552, 2013 WL 4830950 (S.D. Ohio Sept. 10, 2013) ...........................................34
R.J. Reynolds Tobacco Co. v. U.S. Food and Drug Admin.,
810 F.3d 827 (D.C. Cir. 2015) .................................................................................................40
Schnapper v. Foley,
667 F.2d 102 (D.C. Cir. 1981) .................................................................................................25
Soc’y of the Holy Transfiguration Monastery, Inc. v. Archbishop Gregory of
Denver, Colo., 685 F. Supp. 2d 217 (D. Mass. 2010),
aff’d, 689 F.3d 29 (1st Cir. 2012) ............................................................................................18
Swatch Group Management Services Ltd. v. Bloomberg L.P.,
756 F.3d 73 (2d Cir. 2014).......................................................................................................17
Taylor v. FDIC,
132 F.3d 753 (D.C. Cir. 1997) .................................................................................................15
Texas v. United States,
523 U.S. 296 (1998) .................................................................................................................40

v

TABLE OF AUTHORITIES
(continued)
Page(s)
U.S. on Behalf of Dep’t of Labor v. Ins. Co. of N. Am.,
131 F.3d 1037 (D.C. Cir. 1997) ...............................................................................................24
Urantia Found. v. Maaherra,
114 F.3d 955 (9th Cir. 1997) ...................................................................................................26
Wilburn v. Robinson,
480 F.3d 1140 (D.C. Cir. 2007) ...............................................................................................12
WPIX, v. ivi, Inc.,
691 F.3d 275 (2d Cir. 2012).....................................................................................................37
FEDERAL STATUTES
5 U.S.C. 552(a)(1)............................................................................................................................5
17 U.S.C. § 101 ..............................................................................................................................25
17 U.S.C. § 105 ..............................................................................................................................25
17 U.S.C. § 121 ..............................................................................................................................18
Pub. L. No. 104-113, § 12,
110 Stat. 775, 782-83 (1996) .................................................................................................3, 4
FEDERAL REGULATIONS
1 C.F.R. § 51.3(b)(4)......................................................................................................................39
1 C.F.R. § 51.7 ...............................................................................................................................39
29 C.F.R. § 1915.5 .......................................................................................................................8, 9
29 C.F.R. § 1915.507 .......................................................................................................................9
29 C.F.R. § 1915.507(d)(5)..............................................................................................................9
40 C.F.R. Appendix D to pt. 75 .......................................................................................................9
40 C.F.R. § 60.17(a).......................................................................................................................39
40 C.F.R. § 75.6 ...............................................................................................................................9
40 C.F.R. § 86.1(b)(2)....................................................................................................................10

vi

TABLE OF AUTHORITIES
(continued)
Page(s)
46 C.F.R. § 39.1005(h)(1)..............................................................................................................10
46 C.F.R. § 39.2009(a)(1)(iii)(B) § 86.113-04(a)(1) .....................................................................10
49 C.F.R. § 192.7(h)(4)..................................................................................................................12
63 Fed. Reg. 8546, 8554 (Feb. 19, 1998) ........................................................................................4
79 Fed. Reg. 66,267, 66,268 (Nov. 7, 2014)....................................................................................4
81 Fed. Reg. 4673 (Jan. 27, 2016) ...................................................................................................4
CONSTITUTIONAL PROVISIONS
U.S. Const. amend. 1 ...........................................................................................................2, 38, 39
LEGISLATIVE MATERIALS
H.R. REP. NO. 94-1476 (1976).......................................................................................................25
H.R. REP. NO. 104-390, pt. VII (1995) ............................................................................................4
OTHER AUTHORITIES
Angelo Verzoni, Ghost Effect, NFPA JOURNAL (Jan. 2, 2018) .......................................................6
Angelo Verzoni, Striving for Excellence: New firewise pilot program tests how
far communities can go to protect themselves from wildfire, NFPA JOURNAL
(July 1, 2019) .............................................................................................................................6
Ian Duncan, A more than decade-long delay in a seat belt warning system shows
how car-safety rules get bogged down in bureaucracy, WASHINGTON POST
(Nov. 24, 2019) ..........................................................................................................................5
4 McCarthy on Trademarks and Unfair Competition § 23.11 (5th ed.) ..................................26, 27
2 Nimmer on Copyright § 7.20[B][1] ............................................................................................26
5 Nimmer on Copyright § 19E.06 (2017) ......................................................................................38
Wildland Fire Technical Committees, available at https://www.nfpa.org/PublicEducation/Fire-causes-and-risks/Wildfire/Codes-and-standards ...............................................6

vii

INTRODUCTION
PRO seeks to sidestep the D.C. Circuit opinion and that Court’s clear directions for remand:
Copyright fair use: PRO’s brief “poorly serve[s] the court by treating the standards
interchangeably,” even though the D.C. Circuit directed that PRO’s affirmative defense be
adjudicated on the basis of “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.” Am. Soc’y for
Testing & Materials v. Public.Resource.Org, Inc., 896 F.3d 437, 449 (D.C. Cir. 2018) (“ASTM
II”). Plaintiffs followed the D.C. Circuit’s mandate; PRO ignored it.
First, Plaintiffs identified those standards for which PRO had not even met its threshold
burden to establish that there had been an incorporation by reference (“IBR”). See Mot. 16-17
(Dkt. No. 200); 2d Supp. SMF ¶ 36 (Dkt. No. 201). PRO concedes this error, Opp. 6 n.3 (Dkt. No.
202-1), but refuses to face the consequences—it has no fair use defense with respect to these
standards.
Second, PRO makes the sweeping argument that any federal agency’s IBR of a standard
(or a nearly identical standard) necessarily means that it is fair use to copy and distribute all of the
content between the covers. PRO does not even attempt to respond to Plaintiffs’ evidentiary
record, Mot. 21-23, demonstrating that significant portions of each of the 217 works are decidedly
“not essential to complying with any legal duty” and that fair use thus cannot protect PRO’s
wholesale copying and distribution. ASTM II, 896 F.3d at 450. Fair use is PRO’s burden to prove,
not Plaintiffs’. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590 (1994) (defendant “carr[ies]
the burden of demonstrating fair use”). PRO cannot satisfy that burden by ignoring the undisputed
facts and the D.C. Circuit’s clear directive to examine fair use on a standard-by-standard basis.
Third, PRO argues that its fair use defense requires “special” treatment, because PRO’s
purpose is to provide access to the “law.” Opp. 19. This argument begs a key question the D.C.
1

Circuit said had to be answered on remand: whether PRO’s “reproduc[tion of] part or all of a
technical standard” actually serves “to inform the public about the law.” ASTM II, 896 F.3d at
453. If PRO’s purported interest in publishing the “law” resolved fair use in its favor, there would
have been no need for remand. But the D.C. Circuit rejected such “bright-line” rules, requiring
instead that PRO meet its burden to justify “each of PRO’s uses” of Plaintiffs’ copyrighted works,
“standard by standard and use by use.” Id. at 451.
Underlying PRO’s insistence that it need not do the work that the D.C. Circuit directed is
PRO’s catch-all defense that its copying and distributing implicates “core” First Amendment
interests. Opp. 21. But PRO ignores that almost every party asserting fair use will claim the
mantle of the First Amendment, and First Amendment safe-guards are already built into fair use
analysis. Eldred v. Ashcroft, 537 U.S. 186, 219 (2003) (noting fair use serves to balance copyright
protections, which are themselves an “engine of free expression,” with the public interest in using
copyrighted works for “criticism, comment, news reporting, teaching, . . . scholarship, [and]
research”) (quoting Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 558, 587
(1985)). PRO’s defense does not warrant any additional deference.
Trademark fair use: PRO implicitly recognizes it cannot prove nominative fair use and
attempts to flip the burden on this affirmative defense. PRO’s position boils down to “using
Plaintiffs’ marks is easier.” That is not the standard and PRO cannot meet its burden to justify its
use of Plaintiffs’ logos and word marks under any applicable test.
Plaintiffs’ right to a permanent injunction: Each of the four-factors the Court must
consider when evaluating a permanent injunction weighs in Plaintiffs’ favor—on some of the
factors PRO is simply silent and concedes the point. Having no good answers for why an
injunction should not issue, PRO resorts to more constitutional arguments, which the D.C. Circuit

2

set aside, arguing a permanent injunction cannot issue because of “matters of public interest” and
a “basic” due process issue of “access to the law.” Opp. 41, 42. PRO’s assertion that anyone’s
rights have actually been violated due to inability to access the law is unsubstantiated. Tellingly,
PRO tries to make its claim based on two cases involving standards not at issue here. Opp. 3. The
evidence here establishes that each of the 217 Works are available to the public, either through the
government or Plaintiffs, including for free access on their websites. A permanent injunction is
the only available remedy here and would restore the status quo to before PRO violated Plaintiffs’
rights.
Plaintiffs respectfully request that the Court grant their motion for summary judgment and
enter a permanent injunction.
ADDITIONAL BACKGROUND
Nearly half of PRO’s opposition brief is framed as a “statement of facts” that attempts to
dress up distorted legal arguments as “facts.” Plaintiffs briefly respond to set the record straight.
A.

Congress And The Executive Branch Chose Incorporation By Reference As
The Balance Between The Benefits Of Copyright And Public Access.

PRO asserts that IBR serves only to “limit the bulk of the Code of Federal Regulations”
and is simply “an alternative to pasting language” into the text of law verbatim. Opp. 4. PRO
ignores the purpose and careful design of the public-private partnership the IBR system serves,
and the significant public interests at stake.
Congress and the Executive Branch endorse IBR for privately drafted standards because it
preserves the economic incentives for Plaintiffs and similar organizations, which depend on the
revenue derived from their copyrights to fulfill their non-profit missions and generate the standards
on which the government and the public rely. As the House Science Committee explained in
passing the National Technology Transfer and Advancement Act of 1995—which requires federal

3

agencies to use privately developed standards whenever possible, Pub. L. No. 104-113, § 12, 110
Stat. 775, 782-83 (1996)—reliance “on a decentralized, private sector-based, voluntary consensus
standards system . . . . has served us well for over a century and has contributed significantly to
United States competitiveness, health, public welfare, and safety,” H.R. REP. NO. 104-390, pt. VII,
at 23-24 (1995). As the Office of Management and Budget (“OMB”) has explained, incorporation
by reference:
(i) saves government the cost of developing standards on its own;
(ii) provides incentives to establish standards serving national needs;
(iii) promotes efficiency and economic competition through harmonized
standards; and
(iv) furthers the federal policy of relying on the private sector to meet government
needs for goods and services.
OMB Circular A-119, 63 Fed. Reg. 8546, 8554 (Feb. 19, 1998).1 Permitting SDOs to hold
copyrights and charge for the use of their works is essential to preserving this system: “If we
required that all materials IBR’d into the CFR be available for free, that requirement would
compromise the ability of regulators to rely on voluntary consensus standards, possibly requiring
them to create their own standards, which is contrary to the NTTAA and the OMB Circular A119.”2 See OFR, Final Rule on Incorporation by Reference, 79 Fed. Reg. 66,267, 66,268 (Nov. 7,
2014).

1

That Circular was renewed in 2016. Final Revision of OMB Circular A-119, 81 Fed.
Reg. 4673 (Jan. 27, 2016); Plaintiff’s Request for Judicial Notice, Ex. 1 (Dkt. No. 169-1).
2

PRO’s “government edicts” argument, Opp. 7-8, renders these federal policies a nullity.
IBR is the decision by the government to preserve copyright incentives, but as PRO would have
it, by making a choice to IBR a standard, the federal agency destroys the very copyright it intends
to protect. The Court should reject PRO’s irrelevant attempt to invoke the issues it is litigating in
Georgia v. PRO, No. 18-1150. See Dkt. No. 195 at 3 (PRO arguing that the Georgia case “is
unlikely to affect the issue that the D.C. Circuit remanded the case for this Court to consider,
namely whether PRO’s posting of the standards incorporated by reference was fair use”).
4

Further, the IBR process is already designed to balance those protections for copyright with
the need for access. Congress struck a balance between copyright and access by directing agencies
to ensure that the IBR’d standards are “reasonably available to the class of persons affected
thereby.” 5 U.S.C. 552(a)(1). The federal agencies thereafter execute that balance. As the
National Science and Technology Council suggested, “the text of standards and associated
documents should be available to all interested parties on a reasonable basis,” but that basis can
include “monetary compensation” to the copyright owner. See Subcommittee on Standards, Nat’l
Sci. & Tech. Council, Exec. Office of the President, Federal Engagement in Standards Activities
to Address National Priorities: Background and Proposed Recommendations 11 (Oct. 10, 2011).
The benefits from the IBR system are real, not hypothetical. The Washington Post recently
highlighted the public health consequences—in terms of lives lost—as a result of slow-moving
federal regulation processes: 15 years ago, research highlighted that warning systems regarding
seatbelts for back-seat passengers would help save lives; 7-years-ago Congress told regulators to
draft a rule within 3 years; and only this fall did the National Highway Traffic Safety
Administration say it would think about it.3 Compare that to the speed with which NFPA helped
Oakland respond to the tragic Ghost Ship fire that killed 36 people in December 2017.4 Within
less than a year, NFPA provided Oakland with a report containing specific recommendations,
many of which were based on NFPA 1730 “Standard on Organization and Deployment of Fire
3

Ian Duncan, A more than decade-long delay in a seat belt warning system shows how
car-safety rules get bogged down in bureaucracy, WASHINGTON POST (Nov. 24, 2019) available
at https://www.washingtonpost.com/local/trafficandcommuting/a-more-than-decade-long-delayin-a-seat-belt-warning-system-shows-how-car-safety-rules-get-bogged-down-inbureaucracy/2019/11/24/0547c21e-07e4-11ea-8ac0-0810ed197c7e_story.html.
4

PRO cites the criminal charges arising out of this case as indirect evidence that it serves
the public interest—no facts support that attenuated supposition. In contrast, NFPA’s involvement
really does save lives. See Amicus Brief of APCIA 8 (Dkt. No. 209-1) (discussing decrease in
lives lost to fire as a result of NFPA’s work).
5

Prevention Inspection and Code Enforcement, Plan Review, Investigation, and Public Education
Operations”—in other words, a multi-faceted plan for preventing such tragedies in the future.5 As
these motions are being briefed, NFPA is working directly with communities to address the
wildfire crisis, through programs like Firewise USA®6 and standards like NFPA 1143, Standard
for Wildland Fire Management, and others.7
B.

Despite PRO’s Lobbying, Congress Chose Not To Change The Law.

PRO offers the “applause” Carl Malamud received from government officials as proof that
PRO is serving the public interest. Opp. 15-16. This is a non-sequitur; Congress has not changed
copyright or federal administrative law as PRO wishes it had.
PRO spent years lobbying Congress and federal agencies to change the law so that IBR’d
standards would lose their copyright protection—the same result PRO seeks through this litigation.
Dkt. No. 118-12, Ex. 3 (232:14-233:5); Dkt. No. 118-7 ¶ 66. But the federal government has not
changed the law. Dkt. No. 118-12, Ex. 3 (232:14-234:8). Instead, federal agencies have repeatedly
told PRO that incorporation by reference does not extinguish the incorporated standards’
copyright. See Dkt. No. 118-12, Ex. 10 (letters from Department of Interior, Department of
Housing and Urban Development, and Consumer Product Safety Commission). The federal
government continues IBR practices because doing so is understood to preserve copyright

5

Angelo Verzoni, Ghost Effect, NFPA JOURNAL (Jan. 2, 2018), available at
https://www.nfpa.org/News-and-Research/Publications-and-media/NFPA-Journal/2018/JanuaryFebruary-2018/News-and-Analysis/Dispatches.
6

Angelo Verzoni, Striving for Excellence: New firewise pilot program tests how far
communities can go to protect themselves from wildfire, NFPA JOURNAL (July 1, 2019), available
at https://www.nfpa.org/News-and-Research/Publications-and-media/NFPA-Journal/2019/JulyAugust-2019/News-and-Analysis/Dispatches/Wildfire.
7

See Wildfire codes and standards, Wildland Fire Technical Committees, available at
https://www.nfpa.org/Public-Education/Fire-causes-and-risks/Wildfire/Codes-and-standards.
6

protection, thus ensuring that SDOs may continue their work and the public can benefit from the
original expression they create.
ARGUMENT
I.

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

PRO Fails To Meet Its Burden To Show That Wholesale Copying And
Widespread Distribution Of Plaintiffs’ Works Is Fair Use.
1.

First Factor: PRO Has Not Raised A Triable Issue As To The Purpose
And Character Of Its Wholesale Copying And Distribution.

The D.C. Circuit was clear that “where knowing the content of an incorporated standard
might help inform one’s understanding of the law but is not essential to complying with any legal
duty, the nature of PRO’s use might be less transformative and its wholesale copying, in turn, less
justified.” ASTM II, 896 F.3d at 450 (emphasis added). The D.C. Circuit remanded to determine
if PRO could prove, on a standard-by-standard basis, whether the material it copied is essential to
complying with a legal duty. Plaintiffs demonstrated PRO could not meet its burden: PRO has
continued to fail to meet its burden, for many of the standards in this suit, to identify a valid IBR
regulation, see Mot. 17-20, infra Part I.A.1.a.; 3d Supp. SMF ¶¶ 2, 4-5, 7; see generally Wise Decl.
II Exs. 175, 176, 186 (responsive charts); and numerous others include large amounts of material
that in no way impose a legal duty given the text of the standard and the nature of its incorporation,
see Mot. 20-23, infra Part I.A.1.a.; 3d Supp. SMF ¶¶ 3, 8; see generally Wise Decl. II Exs. 175,
176, 186 (responsive charts).
PRO does not attempt to show on a standard-by-standard basis how its wholesale copying
of Plaintiffs’ standards provides material essential to complying with a binding legal duty. PRO
instead makes three arguments on the first fair-use factor that are legally and factually baseless.
First, PRO argues, based on a 2018 federal agency handbook, that the federal IBR’ing of
any standard necessarily determines that everything within the standard’s covers (unless
7

specifically excluded) is “necessary to comprehend a legal duty.” Opp. 22. This handbook did
not even exist at the time that nearly all of the standards at issue were IBR’d or at the time PRO
initially posted the standards online. Moreover, this sweeping argument cannot be squared with
the D.C. Circuit’s decision, with the law of agency action, or with the material upon which PRO
bases its argument.
Second, PRO renews its argument that its purported “purpose” obviates the need for a
standard-by-standard analysis regarding whether there is a binding legal duty. This argument, too,
tries to end-run the D.C. Circuit’s decision. Fair use does not excuse PRO’s mass copying and
distribution simply because other parties might use the infringing copies PRO makes for
educational purposes. In any event, Plaintiffs already perform the purpose PRO claims to serve,
and PRO cannot use fair use to compete with Plaintiffs’ free-access dissemination of the standards.
Third, PRO repeats its argument—which this Court and the D.C. Circuit rejected—that
PRO’s use is transformative because it offers Plaintiffs’ works in new formats.
a.

The 2018 IBR Handbook does not establish that all the material
PRO has copied and distributed is essential to complying with legal
obligations.

The D.C. Circuit was clear: it ordered the parties to analyze “whether PRO’s specific use”
meets the first factor “standard by standard and use by use.” ASTM II, 896 F.3d at 451. Even
though it is not their burden to negate the elements of fair use, Plaintiffs showed that PRO could
not meet its burden because each of PRO’s postings contains material that is not essential to
complying with any binding legal duty. See Mot. 16-24; 2d Supp. SMF ¶¶ 44-76.
PRO has declined to respond to that analysis8 because it cannot. It routinely copies and
distributes nonessential material. For example, PRO cites to 30 [sic, should be 29] C.F.R. § 1915.5
8

PRO does not, for example, explain how sections of standards that describe the history
and development of the standard, 2d Supp. SMF ¶ 63, or that are expressly “merely informative
8

(2015) as the regulation IBR’ing NFPA 12 (2005), but does not analyze the actual regulation
contained in § 1915.507(d)(5), as the D.C. Circuit instructed. See PRO Ex. 91 at 2. Such analysis
would reveal that PRO’s citation cannot justify its wholesale copying; 29 C.F.R. § 1915.5 IBRs
the standard in connections with § 1915.507(d)(5). That section, in turn, is within a Subpart P that
addresses “Fire Protection in Shipyard Employment,” and the section governs only “land-side
facilities.” Thus, at a minimum, § 1915.507 plainly does not regulate sea-side (aka marine)
operations. Yet, PRO has posted the entirety of NFPA 12 (2005), even though it contains an entire
chapter—Chapter 9—that covers “Marine Systems,” defined as “[s]ystems installed on ships,
barges, off-shore platforms, motorboats, and pleasure craft,” ch. 3.4.1. See also 3d Supp. SMF
¶¶ 3, 8; see generally Wise Decl. II Exs. 175, 176, 186 (responsive charts).
Hoping to duck the analysis the D.C. Circuit required, PRO instead makes a two-part
argument rooted in the IBR Handbook: (1) federal agencies incorporate the entire text of a
document when they do not specify a particular section9; and (2) federal agencies incorporate only
and [that] do[] not contain requirements necessary for conformance to the standard,” id. ¶ 71; see
also id. ¶¶ 51, 57, 67, 72-74, dictate any legal requirement. And, while Plaintiffs detailed how
certain standards had been incorporated as merely optional reference procedures and therefore did
not support fair use under the D.C. Circuit’s opinion, see, e.g., Mot. 18 (discussing ASTM D121793’s use in 40 C.F.R. Appendix D to Part 75), PRO relies on those precise incorporations without
responding to Plaintiffs’ arguments or grappling with the D.C. Circuit’s instructions regarding
such incorporations, see Becker Supp. Decl. ¶ 57, Ex. 90 at 38 (Dkt. No. 204-96) (citing 40 C.F.R.
§ 75.6, which incorporates ASTM D1217-93 for Appendix D). Any attempt by PRO to respond
to these arguments in its reply would come too late. Am. Wildlands v. Kempthorne, 530 F.3d 991,
1001 (D.C. Cir. 2008)
9

That argument contradicts PRO’s request that this Court find fair use where PRO has
posted standards that are “not the precise edition listed in the C.F.R. incorporating language” on
the basis that the standards it has posted are “very close” with most of the “text . . . identical.”
Opp. 6 n.3, 9 (emphasis added). If it is “documents . . . not their underlying text” that are the
“objects of incorporation,” then it would not matter how “close” the text of a posted standard was
to one that had not been incorporated. Put differently, accepting PRO’s theory of incorporation
by reference requires finding that PRO cannot show fair use for the 69 standards for which it has
not identified an incorporating regulation. See Wise Decl. II, Ex. 176 n. 2 (highlighting 69
standards for which PRO posted a different one from the one IBR’d).
9

material that they determine dictates a legal obligation. Opp. 5-6. From these premises, PRO
concludes that whenever a federal agency incorporates a standard, the agency has made a
conclusive determination that everything between the covers of the standard is essential to
complying with a legal obligation.
Neither of these premises is factually correct, as Plaintiffs demonstrate below. But the
argument fails even before analyzing those premises because PRO’s argument is inconsistent with
the D.C. Circuit’s opinion. The D.C. Circuit did not state, or even imply, that the fair use inquiry
would be conclusively resolved as to everything between the covers of standard based solely on
an agency’s decision to IBR it. Quite the opposite. The D.C. Circuit recognized that often
“incorporated standard[s]” would not dictate legal duties and therefore would not support a fair
use defense. ASTM II, 896 F.3d at 450. Notably, the two examples the D.C. Circuit gave of
instances where only portions of a standard could be reproduced involved regulations that did not
specify any particular section of a standard being incorporated. See id. (citing 40 C.F.R. § 86.11304(a)(1), 46 C.F.R. § 39.2009(a)(1)(iii)(B)); 40 C.F.R. § 86.1(b)(2) (approving incorporation of
ASTM D86-12 for § 86.113-04(a)(1)); 46 C.F.R. § 39.1005(h)(1) (approving incorporation of the
2011 NFPA 70 for § 39.2009(a)). If PRO’s argument was correct—which it is not—the court
would have said PRO could reproduce the standards in full.
Returning to the premises of PRO’s argument, neither one has legal or factual support:
(i)

Nothing in the 2018 IBR Handbook, the Federal Register,
or other agency guidance supports the assertion that a
federal agency’s reference to a standard incorporates the
entire document, rather than just the relevant portions.

Mr. Malamud has admitted this point. See Malamud Decl. ¶ 40 (Dkt. No. 204-4), Ex. 34
(Dkt. No. 204-40). PRO in its brief focuses on a single phrase at the beginning of the Federal
Register’s Incorporation by Reference Handbook, which says that IBR is appropriate if the agency

10

needs to reference material “required to understand or comply with the regulations.” IBR
Handbook 1-2 (filed at Becker Supp. Decl. Ex. 58, Dkt No. 204-64).10
This is a statement in a handbook—which is mere “guidance,” see IBR Handbook
Overview—that does not carry the force of law and that was published in July 2018. In all but
three instances, this language post-dates by three years or more the incorporating regulation
alleged to support PRO’s fair use defense. See Becker Supp. Decl. Ex. 89-91 (Dkt. Nos. 204-95,
204-96, and 204-97) (listing incorporating regulations on which PRO relies, all but three of which
were first promulgated in 2015 or earlier). Even if the statement on which PRO relies represented
a binding determination by every federal agency as to the necessity of knowing every word
between the covers of every IBR’d standard, the statement could not retroactively establish that as
a policy every federal agency followed before the Handbook was even published.11
What is more, the statement does not mean what PRO says it does. Neither the statement
nor anything else in the Handbook says or implies that an agency must drill down to a level of
specificity so as to only IBR the particular portions of the material that are required for compliance.
On the contrary, the Handbook directs agencies that the “regulatory text in [their] final rule[s]
must . . . [i]dentify the material to be incorporated, by identification designation of the standard,
title, date, version, and author, organized by publisher.” IBR Handbook 20. That is, the Handbook
indicates that agencies should identify the standard as a whole, even if the regulation addresses
10

PRO also tries to find support for this theory by noting that agencies sometimes (it has
no evidence of how often) have called out specific provisions of standards they incorporate. That
does not establish a government-wide (or even consistent agency) practice, much less create a
positive legal principle that anything that is incorporated is in fact necessary to complying with a
legal duty.
11

PRO’s IBR Handbook theory further falls apart when applied to states. PRO offers
only that California’s adoption process is “rigorous.” Opp. 5. Whatever PRO’s half-baked
theory is, its brief does not explain it and PRO has therefore waived any additional argument
based on states. Am. Wildlands, 530 F.3d at 1001.
11

only portions of that standard. Id. at 14-15, 20 (providing two examples of how agencies should
draft regulations, both of which reference a whole standard).
PRO argues that even if the IBR Handbook does not say expressly that the agency only
IBRs what is essential, an email from an employee of the National Archives and Records
Administration (“NARA”) to Mr. Malamud shows that is what agencies actually do. See Opp. 56. The email establishes no such practice. The email is hearsay and cannot be considered on
summary judgment. See Wilburn v. Robinson, 480 F.3d 1140, 1143 n.2 (D.C. Cir. 2007). And,
even if the email were considered for the truth of the matters asserted therein, the email does not
identify any regulation or other direction to agencies that they follow the practices described. At
most, the email expresses the author-employee’s opinion. But the privately expressed views of
one federal employee neither dictate national policy nor guide agency practice.
(ii)

PRO is wrong that a federal agency, simply by IBR’ing a
standard, has determined that everything within the four
corners of the incorporated standard imposes a binding
legal duty.

On this record, the most that can be said when an agency IBRs a standard is that an agency
has determined that some elements of the standard will be incorporated into the relevant regulation.
For example, 49 C.F.R. § 192.7(h)(4) incorporates the 2011 NFPA 70 for regulations related to
compressor stations and vaults used in transporting natural gas. See id. (“IBR approved for
§§ 192.163(e); and 192.189(c)”); id. § 192.163(e) (compressor stations); id. § 192.189(c) (vaults)).
Large portions of NEC 70, however, have nothing to do with those kinds of facilities. Obviously,
the Department of Transportation was not mandating compliance with the standard’s provisions
regarding, for example, aircraft hangars, television studios, or pipe organs. See 2011 NFPA-70
Art. 513, 520, 650. Nor is it reasonable to suggest that the agency intended to transform sections
of the standard that are expressly optional into mandatory requirements—e.g., that the agency’s

12

reference to NFPA-70 was meant to convert the “recommended tightening torque tables” that “may
be used” into legally binding obligations. 2011 NFPA-70 Annex I (emphasis added). PRO’s
theory is simply untenable.
Even if the Handbook did say—which it does not—that every act of IBR represents a
conclusive determination that every element within the covers of an IBR’d standard is essential to
complying with a legal duty, the statement would be wrong. Again, Plaintiffs have demonstrated
that large portions of numerous standards in issue do not meet that standard of essentiality. And
the Court owes that Handbook no deference.12
Finally, even if PRO were right about the import of the IBR Handbook, its argument would
still fail as to multiple standards for which PRO has not identified any incorporation by a federal
agency.13 See 3d Supp. SMF ¶ 7 (4 NFPA); Wise Decl. II Ex. 176 n.2 (69 ASTM). PRO concedes
that it has failed to identify an incorporating regulation with respect to several of the ASTM
standards, but attempts to downplay and defend its activities by noting that the standards it has
posted are “very close” to standards that have been incorporated, with most of the “text . . .
identical.” Opp. 6 n.3, 9. PRO suggests the Court should just give it the benefit of the doubt
because “[m]atching the published editions of a standard with the regulatory text incorporating
that standard is a challenging process.” Opp. 9. PRO bears the burden of showing that the manner

12

The Handbook does not constitute an agency interpretation of the meaning of a federal
statute or regulation, but instead one agency’s recommendation for how other agencies should
operate. That is, PRO’s argument does not ask this Court to defer to the Handbook as a legally
correct interpretation, but instead to accept, as a factual matter, that other agencies actually
followed that instruction in promulgating regulations.
13

Furthermore, for more than 20% of the ASTM Works at issue (41 standards), PRO
identified a citation to the C.F.R. that was not promulgated until after PRO posted the standards in
2012. 3d. Supp. SMF ¶ 4, Wise Decl. II, Ex. 176 (ASTM); see also 3d Supp. SMF ¶ 2, Wise Decl.
II, Ex. 186 (ASHRAE). PRO cannot claim a defense to liability for infringement between when
it posted the standard and the date of the regulation.
13

in which each standard is incorporated justifies its use. See ASTM II, 896 F.3d at 453. That burden
is not lifted because PRO finds the federal regulatory system complex. And in any event, it is not
just these purportedly “very close” ASTM standards where PRO has failed to make a threshold
demonstration of incorporation: its summary judgment exhibits also fail to point to any federal
regulation incorporating several NFPA standards that are not at all “identical” to standards that
have been incorporated. 3d Supp. SMF ¶ 7. Where PRO cannot make the threshold showing that
a standard even has been incorporated, it cannot meet its burden.14
b.

PRO’s “purpose” in wholesale copying and disseminating is not
meaningfully different from Plaintiffs.

PRO’s contention that it has a transformative purpose in providing access to “the law” fails
for a second reason: PRO has not “add[ed] something new” beyond what Plaintiffs already do.
Campbell, 510 U.S. at 579. See Mot. 14-16. PRO’s responses to this point are meritless.
First, PRO argues that Plaintiffs’ reading rooms “do not fill the [access] need” because,
PRO claims, the reading rooms are not as easy to access or use as PRO’s indiscriminate offering.
Opp. 22. But every one of the Works for which PRO has accurately identified an incorporating
regulation15 is available in Plaintiffs’ reading rooms. 2d Supp. SMF ¶ 85. PRO speculates that
some individuals somewhere might have difficulty using a reading room. PRO offers no evidence

14

PRO claims that Plaintiffs previously acknowledged that the standards at issue have been
incorporated by reference, somehow eliminating PRO’s obligation to make this threshold showing.
Opp. 8. No Plaintiff conceded that every portion of an IBR’d standard imposed a binding legal
duty, much less that every standard was in fact IBR’d. See Pls.’ Response to PRO’s Statement of
Disputed Facts (filed concurrently herewith) ¶ 36, passim (Dkt. No. 155-2). ASTM stated only
that it had “reason to believe” that the standards were incorporated—not that they were. See id.
PRO has simply misrepresented Plaintiffs’ interrogatory responses.
15

The only Works that are not available in Plaintiffs’ reading rooms are 27 ASTM
standards, for which PRO has not identified an accurate incorporating regulation and ASTM is not
aware of any. 3d Supp. SMF ¶ 9; see also Opp. 6 n.3 (admitting that “Public Resource accidentally
posted” editions of ASTM standards that had not been incorporated).
14

that any person has or likely will have such difficulty. PRO’s speculation does not create a triable
issue. See Taylor v. FDIC, 132 F.3d 753, 762 (D.C. Cir. 1997) (courts “do not accept bare
conclusory allegations as fact” at summary judgment). The examples PRO cites in its introduction
are inapposite, because there is no evidence the courts in those cases tried but were unable to find
any relevant material in Plaintiffs’ reading rooms or that those cases involved any standard in issue
here. See Opp. 1-2.
PRO’s insistence that regulated parties also must be able to “search, bookmark or copy
relevant sections” of legally binding texts, Opp. 20, is fundamentally a policy question about
whether the “reasonably available” standard balances respect for copyright with access concerns—
that is, it is one best directed to Congress, not this Court, Am. Soc’y for Testing & Materials, v.
Public.Resource.Org, Inc., No. 13-cv-1215 (TSC), 2017 WL 473822, at *11 (D.D.C. Feb. 2, 2017)
(“ASTM I”). Whether “the public requires greater access to the standards . . . is a policy judgment
best left to Congress”. Id.
Second, PRO points to its own and Plaintiffs’ stated goals to contend that Plaintiffs do not
share PRO’s “law-promoting purpose.” Opp. 11; see also id. at 15-16, 23. To begin, Plaintiffs do
view their reading rooms as educational resources that provide the public with authentic, accurate
versions of standards, including those incorporated by reference. 2d Supp. SMF ¶ 85. PRO
belittles ASTM’s establishment of its reading rooms as a ploy to “take ownership” of the access
issue. Opp. 13 (citation omitted). But there is nothing nefarious about a copyright holder’s desire
to respond to a developing issue in a way that provides the public with free online access while at
the same time preserving its control over its copyrighted works.

More to the point, the

transformative inquiry focuses on “how the work in question appears to the reasonable observer,
not simply what an artist might say about a particular piece or body of work.” Cariou v. Prince,

15

714 F.3d 694, 707 (2d Cir. 2013); see also Campbell, 510 U.S. at 582 (looking to how work “may
reasonably be perceived”); Brammer v. Violent Hues Prods., LLC, 922 F.3d 255, 263 & n.3 (4th
Cir. 2019) (explaining that “transformation inquiry is largely objective” and rejecting district
court’s focus “on the subjective intent of the parties”). It does not matter how PRO or Plaintiffs
describe their provision of the standards. What matters is what they actually provide. See id. at
263 (“Often the ‘only two pieces of evidence’ that are ‘needed to decide the question of fair use
are the original version and the secondary use at issue.’” (alterations omitted) (quoting Brownmark
Films, LLC v. Comedy Partners, 682 F.3d 687, 690 (7th Cir. 2012))).
And what PRO actually provides is just an inferior duplicate of Plaintiffs’ publication and
dissemination of the standards.16 Anyone who wished to determine legal obligations contained in
one of the standards could do so through Plaintiffs’ reading rooms—and, indeed, she would find,
PRO admits, more accurate information regarding those obligations than PRO offers. See 2d Supp.
SMF ¶ 20.17 This is thus not a case like Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th
Cir. 2007), where Google displayed a modified version of a work for a new purpose. See id. at
1155, 1165 (Google displayed “reduced, lower-resolution versions of full-sized images” as part of
16

PRO does not even meet its stated purpose of only posting IBR’d standards that it
deems “the law.” As noted above, even using PRO’s assessment, 41 of the Works were not
IBR’d when PRO posted them in 2012. 3d. Supp. SMF ¶ 4, Wise Decl. II, Ex. 176. For another
56 Works, PRO identified a citation to the C.F.R. that had been amended to eliminate reference
to the Work at issue or to incorporate a different standard before PRO posted the Works. 3d.
Supp. SMF ¶ 5, Wise Decl. II, Ex. 176. Accordingly, for these Works, under the D.C. Circuit’s
guidance to look to the “direct legal effect on any private party’s conduct,” ASTM II, 896 F.3d at
443, PRO’s interest is further diminished because the Works had (and have) no legal effect.
17

PRO contends that, just as a book review that misquoted the underlying book would still
enjoy fair use protection, errors in its postings do not weigh against fair use. Opp. 25 n.11. PRO
misses that the transformative value of the book review is not purported to be in its direct
quotations, but in its commentary on the book. PRO, by contrast, asserts that it offers the
transformative use of providing access to the law. “[G]iven that precision is ten-tenths of the law,”
the errors that riddle PRO’s standards do cut against its alleged transformative purpose. ASTM II,
896 F.3d at 452.
16

search function); see also Authors Guild v. Google, Inc., 804 F.3d 202, 207 (2d Cir. 2015) (finding
transformative use where Google “augment[ed] public knowledge by making available
information about Plaintiffs’ books without providing the public with a substantial substitute”).
Nor does Swatch Group Management Services Ltd. v. Bloomberg L.P., 756 F.3d 73 (2d
Cir. 2014), aid PRO. There, Bloomberg disseminated a recording of a private call that was open
only to 333 invited financial analysts. But Swatch is not analogous because Bloomberg provided
the call to individuals who would not otherwise have had access to it. Unlike the investors and
analysts in Swatch, anybody wishing to access Plaintiffs’ standards can do so without PRO:
Plaintiffs’ standards—unlike the call in Swatch—are already available to anyone who might want
to read them. PRO adds nothing new.18
c.

PRO’s provision of the standards in new formats is not
transformative.

PRO previously argued in this Court and before the D.C. Circuit that its provision of
Plaintiffs’ standards with different formatting, which, among other things, supposedly allows
print-disabled individuals to access the standards, is transformative. See, e.g., 2015 Opp. 37-39
(Dkt. No. 121-1); CADC Opening Br. 46-47 (Case No. 17-7035, Dkt. No. 1718058). This Court
and the D.C. Circuit rejected those arguments. See ASTM I at *16-17; ASTM II, 896 F.3d at 450.19

18

PRO states that the D.C. Circuit “recognized that sharing ‘information of critical
importance’ that serves a public purpose . . . can favor fair use.” Opp. 23 (citing ASTM II, 896
F.3d at 450). It did not: that quote comes (despite PRO’s erroneous citation) from Swatch, not
the D.C. Circuit’s decision. Swatch, 756 F.3d at 82 (noting that call “information is of critical
importance”). The D.C. Circuit emphasized repeatedly that the pertinent question was whether
PRO was providing access to legally binding materials, not simply “information” of
“importance.” See, e.g., ASTM II, 896 F.3d at 450 (explaining that dissemination of material that
merely “help[ed] inform one’s understanding of the law” would be “less justified”).
19

To the extent PRO intends to renew its argument that it has a transformative purpose
because it seeks “to create a thorough and accurate archive of federal law,” Opp. 26, that argument
has, similarly, already been rejected at every stage of this litigation, see ASTM II, 896 F.3d at 450
17

Nonetheless, PRO has repeated these arguments verbatim here, compare Opp. 23, with CADC
Opening Br. 46, without any attempt to distinguish either courts’ prior rulings.
PRO’s arguments are no more compelling this time around. As courts have routinely held,
“[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.” Soc’y of the Holy Transfiguration Monastery,
Inc. v. Archbishop Gregory of Denver, Colo., 685 F. Supp. 2d 217, 227 (D. Mass. 2010), aff’d,
689 F.3d 29 (1st Cir. 2012); see also Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166
F.3d 65, 72 (2d Cir. 1999) (translations were “not in the least transformative” (citation omitted)
(internal quotation marks omitted)).
As for PRO’s supposed interest in serving print-disabled users, there is no evidence that
PRO’s postings are actually accessible to such users or that any print-disabled individuals could
not find accessible standards from Plaintiffs. See Supp. SMF ¶¶ 4-11 (Dkt. No. 155-1). Moreover,
Congress has already provided a mechanism for ensuring visually impaired individuals have
access to copyrighted materials: the Chafee Amendment allows organizations serving the visually
impaired to copy works without permission from the copyright owner, as long as those copies are
available exclusively for the use of the visually impaired. 17 U.S.C. § 121. Notably, an online
library for visually impaired users containing at least one of the standards at issue in this litigation
already exists, and—if PRO were actually interested in improving access for print-disabled users—
PRO could have uploaded accessible standards there. Supp. SMF ¶ 3. PRO’s approach to fair use
would render the Chaffee Amendment—and the careful balance between copyright protection and
access it struck—a nullity. PRO’s argument about its conversion of the standards to new formats

(explaining that this Court “properly rejected . . . PRO’s argument[] as to its transformative use . . .
that it was producing a centralized database of all incorporated standards”).
18

is thus not only directly controlled by this Court’s and the D.C. Circuit’s prior holdings, but also
meritless.
2.

Second Factor: PRO Has Refused To Engage With The Nature Of The
Copyrighted Works, And Accordingly, Has Not Met Its Burden On
This Factor.

As with the first factor, the D.C. Circuit emphasized that the second fair use factor would
“demand[] an individual appraisal of each standard and its incorporation” inquiring into whether
the standard has been incorporated so as to impose a binding legal requirement. ASTM II, 896
F.3d at 451. On this factor, too, PRO fails to engage in this particularized inquiry, arguing instead
that the second factor always favors fair use for all incorporated standards. See Opp. 25-26. PRO’s
argument neither “var[ies] standard by standard” as the D.C. Circuit anticipated this factor would,
nor engages in an “individual appraisal of each standard and its incorporation” as the D.C. Circuit
required. ASTM II, 896 F.3d at 451.
PRO also argues the standards are “authoritatively factual regarding the substance of the
laws.” Opp. 26 (emphasis omitted). Again, this simply begs the question whether any parts of the
IBR’d standards actually set forth a binding legal duty. PRO thus has not shown that all the
material it copied and distributed was, as PRO claims, “authoritatively factual.” PRO has failed
to meet its burden on this factor.
3.

Third Factor: PRO Has Not Limited Its Copying To Those Portions
Of Standards That Are Essential To Complying With Legal Duties.

As with the first two factors, the D.C. Circuit emphasized that, in assessing the “amount
and substantiality” of the copyrighted work used, “PRO’s copying must be considered standard by
standard in light of its purpose of informing the public about the specific incorporation at issue.”
ASTM II, 896 F.3d at 452. And, again, PRO has not done this analysis.

19

Notably, the D.C. Circuit provided specific guidance on this factor by comparing three
different situations involving incorporated standards, explaining that each situation might justify
posting a different amount of a standard. See id. PRO acknowledges that these examples provide
the appropriate test. Opp. 27. But then, rather than grappling with how each of the standards’
incorporations compares to those three guideposts, PRO simply asserts that “[e]very standard at
issue here has been completely incorporated” such that its full posting of each standard is justified.
Id. That is non-responsive to the D.C. Circuit’s test.
PRO argues that having to limit its copying and distribution to the material that actually
imposes a legal duty would put PRO “in an impossible position.” Id. But fair use is an equitable
defense. See ASTM II, 896 F.3d at 448. If PRO wants to copy and distribute large portions of
copyrighted works on the grounds that what it publishes imposes a legal duty, then it is only
equitable that PRO determine whether the material it copies and posts actually imposes a legal
duty. At bottom, PRO is asking for carte blanche immunity to engage in wholesale copying based
solely on the IBR’ing of a standard. It is manifestly inequitable to allow PRO to copy and
distribute large portions of standards that impose no legal duty. PRO fails to sustain its burden on
this factor as well.
4.

Fourth Factor: PRO’s postings pose a substantial threat to the actual
and potential markets for Plaintiffs’ standards.

Both the traditional market harm analysis, as well as the three questions that the D.C.
Circuit urged this Court to consider on remand, demonstrate that, like the others, the fourth fair
use factor weighs in Plaintiffs’ favor.

20

a.

PRO misconstrues its burden on this factor.

PRO’s primary argument is that Plaintiffs have no evidence of specific lost sales they can
trace to PRO’s copying and distribution. Opp. 3. This argument misconstrues both the appropriate
legal inquiry and the factual record.
First, PRO’s argument ignores that “[i]t is not Plaintiffs’ burden to establish that they have
been harmed” but instead PRO’s “burden to affirmatively establish that such conduct could not
even ‘potentially’ harm the Plaintiffs’ market.” ASTM I, at *18. The Supreme Court has made
clear that the party claiming fair use “would have difficulty” meeting its burden without “favorable
evidence about relevant markets.” Campbell, 510 U.S. at 590. PRO’s only “evidence” though is
pointing to the fact that Plaintiffs have difficulty quantifying the exact effects of PRO’s activities.
See ASTM I, at *18 (noting that PRO “did not offer expert evidence on the economic impact on
the markets” and instead relied only on “testimony by Plaintiffs’ executives that they did not track
or know of negative impacts thus far on their revenue from Defendant’s conduct”). As explained
below, that does not demonstrate that Plaintiffs have not been harmed—nor, more relevantly, does
it show that Plaintiffs could not “even potentially” be harmed. PRO has not met its burden on this
factor.
Second, PRO conflates the inability to quantify and pinpoint specific harm with the
inability to demonstrate harm. Throughout its filings, PRO selectively quotes portions of the
record in which Plaintiffs noted the entirely unsurprising fact that it is difficult to identify precise
sales lost because of PRO’s activities.20 But the fact that Plaintiffs have not, for example, “heard

20

For example, PRO cites deposition testimony that PRO’s postings have “not had a
measurable impact on ASTM’s finances,” PRO SSSMF ¶ 137 (citing, inter alia, Grove Depo at
144:22-145:2), but neglects to note the immediately subsequent testimony that PRO’s activities
have “caused a drag on [ASTM’s] revenue”—even if not quantifiable, Grove Depo. at 145:7-12.
21

from any customers that said ‘I didn’t buy the standard I was planning to buy because I could find
it for free on the Internet from Public Resource,’” Grove Depo. 152:19-22 (Becker Decl. ¶ 12, Ex.
45, Dkt. No. 204-51), does not mean that Plaintiffs “ha[ve] no evidence that [they] lost sales”
because of PRO’s activities, PRO SSSMF ¶ 138 (Dkt. No. 204) (citing Grove Depo. at 152:1924). And the fact that Plaintiffs may have difficulty quantifying harms does not mean they have
not and will not suffer them. See Jarosz Rpt. ¶ 7 (Dkt. No. 118-12, Ex. 1) (noting that likely harms
from Plaintiffs’ loss of copyright protection “are real” but “will be exceedingly difficult to
measure”). Contra Opp. 30 (focusing only on “measurable impact” of PRO’s activities). Why
would Plaintiffs continue to litigate this lawsuit and why would amici support their position if they
did not face substantial harm?21 See Jarosz Rpt. ¶ 141 (explaining that from a “revealed preference
perspective, it does not appear that the Plaintiffs are of the belief that they would be better off
without enforcing their copyright” and that, if they were of that belief, they “would not have
incurred the substantial costs associated with the initiation and pursuit of this lawsuit”).
To the contrary, the unrebutted economic evidence in the record is that PRO’s activities
pose a substantial threat to the market for Plaintiffs’ standards and derivative works. 2d Supp.
SMF ¶ 91 (Jarosz Rpt. ¶¶ 85, 92, 100, 130-49). While PRO attempts to attack Mr. Jarosz’s report,
its arguments mirror those that it made—and that this Court rejected—in its motion to strike the
report.22 Compare, e.g., Opp. 29 (criticizing Mr. Jarosz’s report as relying “on self-serving
opinions” and “parrot[ing] [Plaintiffs’] legal arguments), with Order Denying Motion to Strike 2,
21

PRO contends that Plaintiffs somehow delayed reopening of this case (presumably to
suggest lack of need for an injunction). Opp. 18. But Plaintiffs contacted PRO on August 3, 2018
(two weeks after the D.C. Circuit’s decision), and then after PRO delayed for months were forced
to file a motion. See Wise Decl. II, Ex. 181.
22

This Court’s denial of PRO’s motion to strike Mr. Jarosz’s report was affirmed by the
D.C. Circuit. ASTM II, 896 F.3d at 453 (“we decline PRO’s passing request to reverse the district
court’s admission of expert testimony on economic harm”).
22

Dkt. No. 172 (rejecting PRO’s argument that Mr. Jarosz “act[ed] as a mouthpiece” for Plaintiffs
(citation omitted)).23 Just as in that unsuccessful motion, PRO focuses on additional analyses Mr.
Jarosz might have performed. Compare, e.g., Opp. 29 (“He did not compare profitability of the
standards posted by Public Resource to that of Plaintiffs’ other standards.”), with Order Denying
Motion to Strike 3 (noting that PRO “t[ook] issue with Jarsoz’s analysis involving . . . the
differences in harms relating to the standards in this case versus all of Plaintiffs’ standards
generally”). As before, PRO essentially “appears to argue simply that different analyses would
have resulted in an expert report more favorable to [its] position.” Order Denying Motion to Strike
3. PRO had the opportunity to “offer[] a rebuttal expert in response . . . but chose not to.” Id. Its
attempt to call into question Mr. Jarosz’s conclusions through bare assertions in its motion for
summary judgment does not substitute for the expert analysis it never provided.
b.

The answers to the D.C. Circuit’s questions for remand on this
factor favor Plaintiffs, not PRO.

On the first question—whether PRO’s activities harm Plaintiffs given their provision of
free access in reading rooms—PRO simply ignores Plaintiffs’ argument. Plaintiffs explained how
the reading rooms provide standards in read-only format, which prevents them from substituting

23

This Court previously concluded that an inference of market harm was appropriate
because PRO had “engage[d] in ‘mere duplication for commercial purposes.’” ASTM I, 2017 WL
473822 at *18 (internal citations omitted). Concluding that PRO’s activities were not commercial,
the D.C. Circuit held that the “inference cannot be sustained.” ASTM II, 896 F.3d at 453. Contrary
to PRO’s assertion, the D.C. Circuit did not conclude that Plaintiffs had “rel[ied] on . . .
speculation” that it “found unconvincing.” Opp. 13. In fact, the D.C. Circuit stated that “the SDOs
are right to suggest that there may be some adverse impact on the market for the copyrighted works
PRO reproduced on its website.” ASTM II, 986 F.3d at 453. And indeed, the adverse impact is
especially acute here given that PRO’s copying “is extensive, or encompasses the most important
parts of” the Works. Authors Guild, 804 F.3d at 221 (“The larger the amount, or the more
important the part, of the original that is copied, the greater the likelihood that the secondary work
might serve as an effectively competing substitute for the original, and might therefore diminish
the original rights holder’s sales and profits.”).
23

for the commercial market for standards without such restrictions. See Mot. 26-27. PRO’s copies
do not have these restrictions and accordingly do substitute for and cannibalize sales of standards.
Id. at 27-28. PRO does not present any response to this distinction. Instead, it merely offers ipse
dixit that “Plaintiffs may continue selling laws by incorporation” and challenges to Mr. Jarosz’s
report, which—as explained above—are unavailing. Opp. 29.
On the second question, Plaintiffs and PRO agree: PRO has insisted on “wholesale
copying” rather than limiting its activities to only those “few select provisions” that dictate legal
obligations. ASTM II, 896 F.3d at 453; see Mot. 29; Opp. 29. It accordingly has no evidence that
this factor might tip in its favor if it engaged in more limited copying of Plaintiffs’ standards.
On the third question, PRO fails to rebut Plaintiffs’ argument regarding derivative markets.
As Plaintiffs explained, PRO’s activities harm the market for newly developed standards: newly
issued standards may be very similar to older versions that PRO posts, such that users may rely on
PRO’s copies in lieu of buying new standards. See Mot. 29-30.
In sum, the fourth factor, like the others, weighs against fair use.
B.

The D.C. Circuit Did Not Remand For Reconsideration Of PRO’s
“Ownership” Arguments, Which Are Meritless In Any Event.

As a final attempt to evade summary judgment for Plaintiffs, PRO argues that there are
“substantial questions of fact concerning ownership.” Opp. 44. There are not. As Plaintiffs
explained in their motion, this Court already rejected PRO’s ownership arguments, and the D.C.
Circuit affirmed. Mot. 10-12. PRO responds that because “this Court’s earlier order [has been]
vacated” it can raise the issue again. Opp. 45. Much as PRO would have this Court focus on the
D.C. Circuit’s disposition and ignore the substance of the opinion, “it is entirely appropriate—and,
in most cases in this circuit, necessary—to consult the opinion to interpret the mandate.” U.S. on
Behalf of Dep’t of Labor v. Ins. Co. of N. Am., 131 F.3d 1037, 1041 n.7 (D.C. Cir. 1997). The

24

D.C. Circuit vacated the grant of summary judgment and directed the parties to focus on a specific
issue—fair use; it did not declare an all-around do over, or demand that this Court or the parties
revisit other issues that had been decided in the case.
And, even if this Court were to reconsider the ownership challenge, there is no basis for
reaching a different conclusion than it (and the D.C. Circuit) did last time. See LaShawn A. v.
Barry, 87 F.3d 1389, 1393 (D.C. Cir. 1996) (“[T]he same issue presented a second time in the
same case in the same court should lead to the same result.”). PRO argues that government
participation in developing the standards might render them uncopyrightable as “work[s] of the
United States Government.” 17 U.S.C. § 105; Opp. 44. But PRO has “submitted no evidence that
specific language in any of the works was ‘prepared by an officer or employee of the United States
Government as part of that person’s official duties.’” ASTM II, 896 F.3d at 446. And, as the D.C.
Circuit has already held, PRO’s failure to submit such evidence dooms the argument. See id.
(explaining that because PRO had not presented any such evidence, the argument was “meritless”).
Even if PRO had pointed to such language, the case law forecloses PRO’s argument that such
participation would render the entire work non-copyrightable. See Schnapper v. Foley, 667 F.2d
102, 106, 108 (D.C. Cir. 1981) (Sections 101 and 105 did not prohibit copyright protection for a
television station’s works even though the federal government commissioned them and
“exercise[d] some supervision over the scripts.”); H.R. Rep. No. 94-1476, at 59-60 (1976)
(explaining that the Copyright Act “deliberately avoids making any sort of outright, unqualified
prohibition against copyright in works prepared under Government contract or grant” and noting
that Section 105 defines “work of the United States Government . . . in such a way that privately
written works are clearly excluded from the prohibition.”) (internal quotation marks omitted).

25

PRO’s final rejoinder is to argue that it is Plaintiffs’ burden to “establish[] that no federal
government employees participated in drafting standards.” Opp. 44. It reasons that Plaintiffs are
not entitled to the rebuttable presumption of ownership from their copyright registrations because
these registrations do not list all joint authors. Opp. 45. Courts have repeatedly upheld the validity
of copyright registrations that do not list all joint authors. See, e.g., Alaska Stock, LLC v. Houghton
Mifflin Harcourt Pub. Co., 747 F.3d 673 (9th Cir. 2014); Metro. Reg’l Info. Sys., Inc. v. Am. Home
Realty Network, Inc., 722 F.3d 591, 593, 596-99 (4th Cir. 2013). And errors in copyright
registrations only matter if they are material or fraudulent—and PRO has come forward with no
evidence of either. 2 Nimmer on Copyright § 7.20[B][1]; see also id. (“mention in a registration
certificate of only one of two co-authors does not affect the validity of the registration”); Urantia
Found. v. Maaherra, 114 F.3d 955, 963 (9th Cir. 1997). There are no factual questions as to
ownership that would preclude summary judgment.
II.

PLAINTIFFS ARE ENTITLED TO SUMMARY JUDGMENT ON THEIR TRADEMARK
INFRINGEMENT CLAIMS.
As this Court previously explained in assessing Plaintiffs’ trademark claims,
the facts here present nearly as black-and-white a case as possible. . . .
Because Defendant has intentionally created a copy that is meant to appear
identical, including use of Plaintiffs’ trademarks, then that consumer may
download that standard for free from Defendant without knowing that it is
not created by the Plaintiffs . . . .

ASTM I, 2017 WL 473822, at *23.
This black-and-white case of trademark infringement cannot be defended as nominative
fair use. Nominative fair use is uniformly defined as “use of another’s trademark to identify the
trademark owner’s goods or services.” 4 McCarthy on Trademarks and Unfair Competition
§ 23.11 (5th ed.) (hereinafter “McCarthy”) (emphasis added); see also Cairns v. Franklin Mint
Co., 292 F.3d 1151 (9th Cir. 2002). “Some examples of hypothetical uses that might qualify as a

26

‘nominative fair use’ are: comparative advertising (e.g., ‘Our ZETA gizmos last longer than
ALPHA gizmos.’); independent repair facilities (e.g., ‘We repair MERCEDES vehicles’);
independent retailers (e.g., ‘We sell genuine GLUGMORE plumbing parts.’).” McCarthy § 23:11.
In the present case, PRO is not using Plaintiffs’ trademarks to refer to Plaintiffs’ publications.
PRO is using Plaintiffs’ trademarks on PRO’s substandard publications. This type of trademark
use can never qualify as nominative fair use.
PRO’s other nominative fair use arguments also fall flat. PRO first accuses Plaintiff of
“distorting” the Third Circuit’s nominative fair use framework by “ignoring that Century 21
adopted a two-step approach that begins with a modified likelihood-of-confusion analysis before
the burden shifts to the defendant.” Opp. 31. PRO is the one distorting the record: Plaintiffs
explained that Century 21 held that nominative fair use requires a plaintiff to “prov[e] that
confusion is likely,” before “the burden . . . shifts to [the] defendant to show that its nominative
use.” Mot. 32 (quoting Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 232 (3d
Cir. 2005)). That initial showing of likelihood of confusion is not at issue here; this Court already
concluded that Plaintiffs had shown a likelihood of confusion, and PRO failed to contest that
holding on appeal. See ASTM I, 2017 WL 473822, at *23; see also ASTM II, 896 F.3d at 456.
That holding is law of the case and PRO cannot challenge it.24

24

In any event, the Century 21 factors favor Plaintiffs. Evidence of actual confusion is not
required. See, e.g., Oriental Fin. Grp., Inc. v. Cooperativa De Ahorro Crédito Oriental, 698 F.3d
9, 17 (1st Cir. 2012). But as to both actual confusion and intent, as this Court previously ruled,
“the facts here present nearly as black-and-white a case as possible. . . . Because Defendant has
intentionally created a copy that is meant to appear identical, including use of Plaintiffs’
trademarks, then that consumer may download that standard for free from Defendant without
knowing that it is not created by the Plaintiffs.” ASTM I, 2017 WL 473822, at *23 (emphasis
added). As to consumer care, PRO has no evidence that consumers researching the law are careful
in making brand distinctions, especially given that PRO’s pirated standards are free. See McCarthy
at § 23:95 (“Obviously, the price level of the goods or services is an important factor in determining
the amount of care the reasonably prudent buyer will use.”). And indeed, where, as here, “the
27

PRO’s backup argument—that the nominative fair use factors favor PRO—likewise fails.
Its analysis is flawed. Contrary to PRO’s assertion, Plaintiffs’ trademarks are not necessary to
describe Plaintiffs’ Works.

PRO does not argue—let alone proffer evidence—that PRO’s

identification of Plaintiffs’ standards “would be rendered significantly more difficult without use
of” Plaintiffs’ marks, as the law requires. Century 21, 425 F.3d at 229. PRO essentially concedes
that it is not necessary for it to use Plaintiffs’ logos to describe Plaintiffs’ Works. See Opp. 34-35
(noting its “willingness to narrow the dispute” by redacting Plaintiffs’ logos as “the inclusion or
omission of Plaintiffs’ logos is simply not important to Public Resource”); 2d Supp. SMF ¶¶ 2224 (PRO has redacted some logos). The Court accordingly should not hesitate to permanently
enjoin at least PRO’s excessive use of Plaintiffs’ logos.
As to Plaintiffs’ word marks, PRO claims that it must use them, arguing that alternatives
are “impractical,” inferior forms of communication and that consumers searching for Plaintiffs’
standards will not find PRO’s postings if PRO cannot display Plaintiffs’ marks. Opp. 33. But as
Plaintiffs have pointed out, PRO could also identify standards by citing the incorporating
regulation. PRO protests that such an approach is “impractical” because one regulation may
incorporate many standards, or because one standard may be incorporated into many different
regulations. Opp. 33. This argument underscores that PRO’s purported purpose of disseminating
“the law” is hollow—that PRO has not researched the incorporating references thoroughly is a
reason to deny fair use, not to grant it. If Plaintiff were truly concerned with effectively facilitating

products are identical and the marks are identical, the sophistication of buyers cannot be relied on
to prevent confusion.” McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1137 (2d Cir.
1979). In short, whether the Court considers all of the traditional likelihood of confusion factors,
as it did before, or the subset identified by PRO in its opposition, the result is the same: “there is
no genuine dispute on the factual issue of whether consumer confusion is likely.” ASTM I, 2017
WL 473822, at *23.
28

access to standards incorporated by reference, PRO could reproduce the current text of a regulation
and—copyright issues aside—provide a hyperlink to the relevant standard, all without displaying
Plaintiffs’ word marks or logos in the linked-to content. But Plaintiff does not want to do that
work. PRO’s preference to instead display Plaintiffs’ marks on pirated copies of Plaintiffs’
standards does not satisfy PRO’s burden on the first fair use factor.
PRO also uses more of Plaintiffs’ marks than is necessary to identify Plaintiffs’ works.
PRO argues that it makes “communicative use” of Plaintiffs’ logos as a “non-competitor” and is
thus entitled to use Plaintiffs’ logos and word marks in their entirety. PRO is wrong on the facts
and the law. PRO is not a “non-competitor,” see SMF ¶ 225 (Dkt. No. 118-2) (indicating that
PRO’s goal was to “have more users” than the “SDO-provided websites” and to “be No. 1 in the
marketplace”), and its use is not the “communicative use” envisioned by the sole case PRO cites
in support this proposition. Aviva United States Corp. v. Vazirani, 902 F. Supp. 2d 1246, 1265 (D.
Ariz. 2012), involved a gripe site directed at insurance company Aviva.

The Aviva court

understandably ruled that no reasonable juror would be confused by the defendant’s use of the
Aviva logo in the manner depicted below—“Aviva Uncovered The Sad Truth About Aviva’s
Business Practices”—and in the context of a gripe site whose sole purpose was to criticize Aviva
and its business practices.

Id. at 1252. In stark contrast, PRO is not using Plaintiffs’ logos to criticize Plaintiffs in a manner
that could not reasonably lead to confusion, as this Court previously acknowledged,
A consumer in the market for one of Plaintiffs’ voluntary consensus standards may
encounter them on Plaintiffs’ websites for purchase, or on Defendant’s website for
free download. Because Defendant has intentionally created a copy that is meant
to appear identical, including use of Plaintiffs’ trademarks, then that consumer may
download that standard for free from Defendant without knowing that it is not
29

created by the Plaintiffs and may contain missing pages or typographical errors
leading to inaccurate values for measurements.
ASTM I, 2017 WL 473822, at *23. In light of these vastly different circumstances, PRO’s reliance
on Aviva is misplaced.25
Finally, 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 argues that it satisfies
this factor because Plaintiffs have not shown “language or conduct in addition to use of their marks
that affirmatively suggests sponsorship or endorsement by Plaintiffs.” Opp. 35. First, it is PRO’s
burden to show that its use of Plaintiffs’ marks is fair. 26 Century 21, 425 F.3d at 228. Regardless,
PRO has done far more than just use Plaintiffs’ marks—PRO “intentionally” copied Plaintiffs’
standards in their entirety and “meant” for those copies to appear identical to Plaintiffs’ Works,
“including use of Plaintiffs’ trademarks.” ASTM I, 2017 WL 473822, at *23. And PRO represents
that its pirated standards are the precise documents that are incorporated by reference (e.g., that
they are Plaintiffs’ standards), even though they are not. PRO’s conduct was plainly calculated to
confuse consumers. What conduct precludes a fair use finding if not this?
Nor has PRO met its “heavy burden” to “come forward with evidence sufficient to
demonstrate that [its disclaimers] would significantly reduce the likelihood of consumer

25

Moreover, the defendant’s use in Aviva “was undoubtedly a nominative use—that is,
the mark was used to refer to Aviva and its products and services rather than Defendants and
their products and services,” Aviva, 902 F. Supp. 2d at 1264, unlike PRO’s use.
26

PRO asserts that “Plaintiffs appear to concede that, if they have the burden of proof on
[nominative fair use], they lose on their trademark claim.” Opp. 31. PRO offers no explanation
as to why it (or any other defendant pursuing a nominative fair use defense) should not bear the
burden of proof on this issue. And regardless, Plaintiffs put forth sufficient evidence in their
opening brief to demonstrate that PRO’s use of Plaintiffs’ marks is not fair under any conceivable
test.
30

confusion.’” 27 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)).
In fact, PRO offers no evidence whatsoever to show that its disclaimers are even read, let alone
remotely likely to dispel confusion. And as discussed in Plaintiffs’ opening brief, PRO’s PDF
cover page disclaimers—which are obscured by the cover page’s other contents—are grossly
inadequate. See Dkt. No. 200 at 44-45. As to PRO’s below-the-fold Internet Archive disclaimers
and the disclaimers on its HTML copies, PRO recites the content of those disclaimers without
giving context its due. A reader must scroll past the PDF copy of the standard—the material the
reader came for—to see the Internet Archive disclaimer. See 2d Supp. SMF ¶ 27. There is little
practical difference between this location and the last line of a webpage. And PRO’s HTML
disclaimer—which appears in a section labeled “NOT PART OF THE STANDARD”—is likely
to go ignored by anyone who downloads this document to read the standard. Simply put, if PRO’s
failure to put forth any actual evidence regarding its disclaimers is not enough, the Court need only
review the disclaimers itself. Common sense dictates that they are insufficient—especially
because they are affixed to purportedly exact copies of Plaintiffs’ Works—and PRO fails to satisfy
the final fair use factor.
Because PRO cannot meet its burden on any—let alone all—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.

27

The D.C. Circuit considered PRO’s disclaimers in discussing the third nominative fair
use factor. ASTM II, 896 F.3d at 457-58
31

III.

PLAINTIFFS ARE ENTITLED TO A PERMANENT INJUNCTION.
A permanent injunction is the appropriate remedy here. As PRO admits, the correct

method to evaluate granting an injunction is the four-factor test laid out in eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 391 (2006). But PRO conspicuously fails to address one of
the four factors. For the factors that are addressed, PRO melds three factors together into a variant
of the same argument: a false threshold requirement that Plaintiffs must demonstrate a substantial
amount of financial damage—sufficient to shut down their businesses or cease creation of new
standards—before an injunction may issue. That is not the standard. In addition to this false
standard, PRO’s remaining arguments against an injunction are constitutional challenges rehashed from its earlier appeal. Those arguments were unavailing in the D.C. Circuit and are of no
moment here.
A.

PRO Fails To Address The Inadequacy Of Other Available Remedies.

One of the required factors under eBay is that the Court must weigh the availability of
alternate remedies—namely money damages. Here, PRO argues an injunction is improper, but
concedes it cannot pay money damages and points to no other available relief. When asked at the
initial summary judgment hearing what would be an appropriate remedy in lieu of an injunction,
counsel for PRO responded: “I am not able to say.” 2d Supp. SMF ¶ 112.
In its brief, PRO simply ignores this issue altogether, even though it is one of only four
eBay factors. Clearly, PRO has neither the ability nor inclination to pay for its infringement.
Statutory damages for PRO’s infringement of 217 different works would be massive, and, as
explained in Plaintiffs’ opening brief, PRO has limited resources. Mot. 43; see also SMF ¶¶ 27273. Further, money damages would be incredibly difficult to quantify given the kinds of harm
sustained by Plaintiffs, including harm to Plaintiffs’ goodwill and existing business models. If
Plaintiffs prevail on the merits, an injunction is the only remedy that makes sense.
32

B.

PRO’s Attempt To Address The Other Three eBay Factors Fails.

For the remaining three eBay factors—irreparable harm, balancing of hardships, and public
interest—PRO makes variants of the same argument. It contends that Plaintiffs have not suffered
enough harm to justify an injunction because Plaintiffs will likely continue to produce standards
even if PRO is allowed to continue its infringement. This is not the standard. None of the eBay
factors requires harm sufficient to put a plaintiff out of business. And, in any event, Plaintiffs have
submitted ample evidence that PRO’s conduct is a major threat to their business models and
reputations. An examination of each of the remaining three factors shows exactly why an
injunction is needed.
1.

Plaintiffs Will Suffer Irreparable Injury.

As explained in Plaintiffs’ opening brief, PRO’s actions will irreparably harm Plaintiffs’
business models, right to exclude others from use of their copyrighted works and trademarks, and
reputations. Each of these is a cognizable injury supported by case law. Nevertheless, PRO
persists in arguing that it is not enough harm to justify an injunction.
Plaintiffs presented unrebutted testimony from an expert witness, Mr. Jarosz, concerning
the dire impact PRO’s actions will have on their business models because a loss of revenue from
selling standards would force Plaintiffs to reduce their activities or switch to a less-desirable model
in which standards must be funded prior to their development, which will result in the development
of fewer standards by a less balanced group of participants. SMF ¶¶ 251-54, 257-62. Further,
Plaintiffs have put forth evidence that, if PRO’s conduct goes unchecked, it will act as a signal to
the market that unauthorized versions of standards are acceptable, which will lead to the
proliferation of new versions of the Works on other sites, thus further supplanting sales of
Plaintiffs’ works. SMF ¶ 254. Even Mr. Malamud admits that his conduct “potentially poses a
challenge to the current business models of the standards development of some standards
33

development organizations” and has told his supporters that he avoids discussing how his conduct
impacts Plaintiffs because he “can’t win that discussion.” SMF ¶¶ 255-56; see also Dkt. No. 11813, Ex. 31 at 131 (PRO stating that SDO are “going to have to adjust their business models”).
Against this weight of evidence, PRO argues (based on the ipse dixit of its attorneys rather
than evidence) that Plaintiffs will be just fine because they have “other publications, including
annotations, training materials, and non-incorporated standards.” Opp. 38-39. This attempt to
minimize Plaintiffs’ harm is unavailing for several reasons.28 First, it is a false threshold. There
is no requirement that a plaintiff be harmed so severely as to threaten the plaintiff’s very viability;
irreparable harm may be found where a likelihood of lost market share or lost sales of a product is
demonstrated. See Bell Helicopter Textron, Inc. v. Airbus Helicopters, 78 F. Supp. 3d 253, 272
(D.D.C. 2015). Second, Plaintiffs have offered plenty of evidence of harm, including expert
testimony that PRO has never rebutted, which shows that these standards are of great importance
to Plaintiffs. And Plaintiffs’ conduct also bolsters this point. As Mr. Jarosz observed, Plaintiffs’
filing and pursuing this costly lawsuit points to the importance of these standards to Plaintiffs and
the threat posed by Defendant’s infringement. Rubel Decl. [Dkt. No. 118-12] Ex. 1 ¶ 141.

28

PRO also seeks to minimize harm to Plaintiffs by claiming Plaintiffs sat on their rights
and did not move for a preliminary injunction. Although PRO suggests that Plaintiffs
unnecessarily waited years to bring this suit, PRO did not post Plaintiffs’ standards on its website
until December 2012, and Plaintiffs responded by filing this suit only eight months later. SMF ¶
185; Compl. (Dkt. No. 1). This is not an undue delay. Further, courts have found that not moving
for a preliminary injunction is immaterial when weighing a permanent injunction. See Cooper
Notifications, Inc. v. Twitter, Inc., No. 09-865-LPS, 2010 WL 5149351, at *4 (D. Del. Dec. 13,
2010) (observing that the plaintiffs decision not to move for a preliminary injunction “tells one
nothing . . . about the potential irreparability of any harm from any infringement.”); see also
Proctor & Gamble Co. v. Team Technologies, Inc., No. 1:12-cv-552, 2013 WL 4830950, at *2
(S.D. Ohio Sept. 10, 2013) (“[t]he fact that Plaintiff did not seek a preliminary injunction does not
mean that it would not suffer prejudicial harm.”) (alteration in original) (quoting other source). In
the present case, Plaintiffs felt that it would be advantageous to develop an evidentiary record
before seeking a merits-based decision.
34

Plaintiffs’ opening brief also explained the harm that could come to Plaintiffs due to losing
control of their copyrights and trademarks. PRO distributes downloadable, printable copies of the
standards, which can be taken from the Internet Archive and further shared anonymously,
repeatedly, 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. Courts have explained how such
digital spreading of works is “exponential rather than linear, threatening virtually unstoppable
infringement of the copyright.” Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 518 F.
Supp. 2d 1197, 1218 (C.D. Cal. 2007) (issuing permanent injunction) (quoting other source). As
the Grokster court ultimately held, where the digital impact of infringement leads to an
immeasurable level of copyright infringement and, therefore, immeasurable economic
interference, it amounts to irreparable harm. Id. at 1219; see also Arista Records LLC v. Lime
Wire LLC, No. 06 CIV. 05936 KMW, 2010 WL 10031251, at *4 (S.D.N.Y. Aug. 9, 2010) (entering
permanent injunction because “damages cannot address this continued vulnerability” of future
dissemination). PRO’s only retort is to claim that there is no right to exclude future uses
recognizable after eBay. Opp. 39. But, each of the cases cited by Plaintiffs post-dates the Supreme
Court’s 2006 eBay decision. Contrary to PRO’s assertion, eBay did not do away with a court’s
ability to weigh the threat of future harm caused by a plaintiff losing control of its intellectual
property.
Finally, Plaintiffs have demonstrated that PRO’s lax quality control standards when
reproducing their standards has led to errors. Mot. 41. These errors are damaging to entities that
“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 Rpt. ¶ 151). PRO’s
response is to claim that its disclaimers are sufficient to prevent this type of harm. But, as

35

addressed in Plaintiffs’ opening brief and herein, PRO’s disclaimers (which came about only as a
result of this litigation) have been woefully inadequate; and, PRO’s rampant usage of Plaintiffs’
marks suggests Plaintiffs endorse PRO’s unauthorized copies. See Mot. 34-35; supra Part II. PRO
also claims that reputational harm is not cognizable in copyright cases. For that proposition, PRO
points only to Garcia v. Google, Inc., 786 F.3d 733 (9th Cir. 2015), a case of no moment here. In
Garcia, the court stated that irreparable harm related to a plaintiff’s safety (in that case from
physical attack by “radical elements of the Muslim community”) was not cognizable as a copyright
harm because it was too attenuated to copyright law’s purpose of providing incentives to authors.
Id. at 744-46. Here, Plaintiffs reputations are closely tied to their incentives to create more
works—without their reputations for producing detailed, accurate technical works, customers
would not seek out Plaintiffs’ standards. The harm to Plaintiffs’ reputations is very real and fully
justifies an injunction.
2.

Balancing The Hardships Favors Issuing An Injunction.

PRO’s primary argument regarding balance of hardships is a re-hash of its irreparable harm
theory. PRO claims that the financial impact on Plaintiffs will not be so great as to halt creation
of new standards, particularly because the standards are largely written by volunteers. This
overlooks that each of the Plaintiffs has to maintain a significant staff to facilitate standards
meetings, govern standards creation proceedings, publish copies of the standards, and undertake
many other business functions that allow the standards to be created. And, it wholly overlooks
(and fails to refute) the expert testimony of Mr. Jarosz, who explained that loss of revenue from
sales of standards is likely to lead to a change in business models that will reduce the quality of
Plaintiffs’ works, including because Plaintiffs may have to start charging parties that wish to
participate in standards creation (which is the practice of some other standards organizations).
SMF ¶¶ 251-54, 257-62.
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In contrast to the hardship that will befall Plaintiffs as a result of continued infringement,
Mr. Malamud has expressly admitted that Defendant will suffer no harm if an injunction issues.
SMF ¶ 277. PRO now argues that there may be harm to its “mission” of posting the standards.
But a defendant cannot claim an equitable interest in continuing to infringe a plaintiff’s copyrights
“and thus cannot complain of the harm it will suffer if ordered to cease doing so.” Fox Television
Stations, Inc. v. Filmon X LLC, 966 F. Supp. 2d 30, 51 (D.D.C. 2013); see also WPIX, v. ivi, Inc.,
691 F.3d 275, 287 (2d Cir. 2012) (“[i]t is axiomatic that an infringer of copyright cannot complain
about the loss of ability to offer its infringing product” and ‘cannot be ‘legally harmed by the fact
that it cannot continue [infringing] plaintiffs’ [copyrighted works], even if this ultimately puts
[defendant] out of business.’”). The balance of hardships cannot weigh in PRO’s favor where
PRO will suffer no legally recognizable harm.
3.

An Injunction Serves The Public Interest.

It is undisputed that Plaintiffs’ standards serve the public good. The standards created by
Plaintiffs serve an important public function. They encourage safety, energy efficiency, and other
public goods. In fact, Defendant readily admits the importance of Plaintiffs’ standards—even
saying that NFPA “saves lives.” SMF ¶¶ 164-67. And, without the standards created by Plaintiffs
and other private SDOs, government agencies would lose important tools that they lean on in
fulfilling their regulatory duties, thus shifting the burden to the public sector. Id. ¶ 266.
PRO has no answer to this. Instead, it yet again re-hashes the argument that the financial
harm to Plaintiffs is not so great as to cease creation of standards. Opp 43. But, as explained
above, Plaintiffs have indeed presented myriad evidence concerning harms that will befall them if
PRO’s infringement is unchecked, including harms to Plaintiffs’ business models that will result
in lower quality standards, which would ultimately harm the public.

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Moreover, PRO can point to no actual harm to the public that will occur due to a lack of
access to these standards. As Plaintiffs have explained, Plaintiffs already provide free read-only
access to the standards on their websites, 2d Supp. SMF ¶ 85, and access to the standards is easily
attainable through various other means. Tellingly, as a result of this litigation, PRO removed
standards from its website from late 2015 to July 2018, and PRO can point to no resulting harm to
the public. Id. ¶¶ 11-12. The public interest will be served—and not harmed—by the issuance of
an injunction.
C.

PRO’s Constitutional Arguments Are Unavailing.

After failing to carry the day on the eBay factors, PRO resorts to arguing that an injunction
both violates the First Amendment and raises due process concerns. Neither argument is valid.
1.

PRO’s First Amendment Argument Ignores Well-Settled Case Law.

PRO argues that under the First Amendment, it is entitled to make free use of the works at
issue because those standards concern “matters of public interest.” Opp. 41. But, as case law
makes clear, the First Amendment does not impose an additional level of scrutiny for copyright
above and beyond the Copyright Act’s requirements. To the contrary, the Supreme Court has
consistently rejected demands for “heightened judicial review” of copyright law under the First
Amendment because the Copyright Act “contains built-in First Amendment accommodations.”
Eldred, 537 U.S. at 218-19; Golan v. Holder, 565 U.S. 302, 327-28 (2012).
Those accommodations are the “distinction between copyrightable expression and
uncopyrightable facts and ideas, and the latitude for scholarship and comment traditionally
afforded by fair use.” Harper & Row, 471 U.S. at 560. Accordingly, in any constitutional
challenge to enforcement of a copyright, “the sole focus must . . . be on the idea/expression
dichotomy and the fair use defense.” 5 Nimmer on Copyright § 19E.06 (2017). If copyright
protection is consistent with “those two doctrines,” it is “immune from First Amendment scrutiny.”
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Id.; see Kahle v. Gonzales, 487 F.3d 697, 699 (9th Cir. 2007) (rejecting the argument that the
change from an “opt-in” to an “opt-out” copyright system required First Amendment review); see
also Arista Records, LLC v. Doe 3, 604 F.3d 110, 118 (2d Cir. 2010) (First Amendment right to
anonymity “does not . . . provide a license for copyright infringement”).
In Eldred, Golan, and Harper & Row, the Supreme Court firmly established that where, as
here, the work is validly copyrightable expression, and the infringement is not excused as a fair
use, the First Amendment has nothing else to say. PRO has no answer for this. Because its fair
use defense fails, its First Amendment argument fails too.
2.

PRO’s Due Process Argument Is Meritless And Improper.

PRO asserts that this case raises a “basic” due process issue of “access to the law.” Opp.
42. Not so. The incorporated standards are available for the public to review, which is more than
enough to provide “[t]he ‘fair warning’ required under the Due Process Clause.” Cnty. of Suffolk,
New York v. First Am. Real Estate Solutions, 261 F.3d 179, 195 (2d Cir. 2001) (finding no due
process violation resulting from copyright of tax maps). By regulation, standards are eligible to
be incorporated by reference only if they are reasonably available. 1 C.F.R. § 51.7. All standards
that are incorporated by reference are available in person at the Office of the Federal Register. 1
C.F.R. § 51.3(b)(4). They typically also are available from the incorporating agency. E.g., 40
C.F.R. § 60.17(a) (“All approved material is available for inspection at the EPA Docket Center,
Public Reading Room . . . and is available from the sources listed below.”). And Plaintiffs maintain
reading rooms that allow for free read-only access to the standards. Even after years of discovery
in this suit, PRO utterly fails to prove that there is a problem with access to the standards.
Additionally, even if it had merit, PRO’s due process claim is procedurally improper. First,
PRO purports to speak on behalf of third parties that could be affected by an alleged lack of access
to the law. But PRO does not have standing to raise due process claims on behalf of a third party.
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Kowalski v. Tesmer, 543 U.S. 125, 131 (2004) (rejecting third-party standing for lawyers on behalf
of potential clients); Am. Immigration Lawyers Ass’n v. Reno, 199 F.3d 1352, 1357 (D.C. Cir.
2000) (“[O]ne of the judicially self-imposed limits on the exercise of federal jurisdiction is the
general prohibition on a litigant’s raising another person’s legal rights.”).
Second, there is no ripe dispute. A claim is not “‘ripe . . . if it rests upon contingent future
events that may not occur as anticipated, or indeed may not occur at all.’” R.J. Reynolds Tobacco
Co. v. U.S. Food and Drug Admin., 810 F.3d 827, 830 (D.C. Cir. 2015) (quoting Texas v. United
States, 523 U.S. 296, 300 (1998)). At least two contingencies must occur before PRO’s due
process argument would be ripe. First, a regulated person or entity must be prosecuted or sued for
violating one of the standards. Second, that person or entity must claim that they were unable to
access the standards. Unless and until these contingencies occur, a due process argument based
on the standards’ availability is too speculative and remote to be adjudicated. See Texas v. United
States, 523 U.S. 296, 301 (1998) (declining to decide the constitutionality of a statute because
“[t]he operation of the statute is better grasped when viewed in light of a particular application”).
And if no such action ever occurs (as seems likely, given PRO’s inability identify real access
problems over the six-year history of this case), then the argument “may not require adjudication
at all.” R.J. Reynolds, 810 F.3d at 831 (internal quotation marks omitted).
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.

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Dated: December 23, 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.

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/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

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