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

Filing 215

REPLY to opposition to motion re 202 Second 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. (This document is SEALE filed by PUBLIC.RESOURCE.ORG, INC.. (Attachments: # 1 [REDACTED] Defendant's Response to Plaintiffs' Objections to Certain Evidence In Support of Defendant's Second Supplemental Statement of Material Facts, # 2 Public Resource's Evidentiary Objections In Reply to Plaintiffs' Opposition to Public Resource's Second Motion for Summary Judgment and Reply In Support of Plaintiffs' Second Motion for Summary Judgment and for A Permanent Injunction [Dkt. 213], # 3 Supplemental Reply Declaration of Matthew Becker In Support of Public Resource's Second Motion for Summary Judgment, # 4 Exhibit 98, # 5 Exhibit 99, # 6 Exhibit 100, # 7 Exhibit 101, # 8 Exhibit 102, # 9 Exhibit 103, # 10 Public Resource's Statement of Disputed Facts In Opposition to [213-1] Plaintiffs' Third Supplemental Statement of Material Facts In Support of Their Second Motion for Summary Judgment and A Permanent Injunction, # 11 Public Resource's Reply In Support of Its Request for Judicial Notice [Dkt. 204-3], # 12 Public Resource's Motion to Strike Plaintiffs' Response to Public Resource's Statement of Disputed Facts [Dkt. 213-21], # 13 Text of Proposed Order Granting Public Resource's Motion to Strike Plaintiffs' Response to Public Resource's Statement of Disputed Facts [Dkt. 213-21])(Bridges, Andrew) Modified on 1/17/2020 (ztd).

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA

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

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

NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and
AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR CONDITIONING
ENGINEERS,
Plaintiffs/Counter-defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/Counterclaimant.

PUBLIC RESOURCE’S REPLY IN SUPPORT OF ITS
SECOND MOTION FOR SUMMARY JUDGMENT

TABLE OF CONTENTS
Page
INTRODUCTION ...........................................................................................................................1
ARGUMENT ...................................................................................................................................2
I.

PUBLIC RESOURCE IS ENTITLED TO SUMMARY JUDGMENT
BECAUSE ITS POSTING OF LAWS BY REFERENCE IS A
LAWFUL FAIR USE. .............................................................................................2
A.

The Government Has Already Told Us What Is and Is Not
Essential to Understanding a Legal Duty for Purposes of the Fair
Use Analysis. ...............................................................................................2
1.

2.

The formal incorporation by reference procedure
precisely identifies what the government has decided to
incorporate into law. ........................................................................3

3.

Vagueness as to what is incorporated will invalidate a
regulation. ........................................................................................4

4.

Ranking agency officials confirmed that the text of an
incorporation must be treated as a precise articulation of
the matter incorporated. ...................................................................5

5.

When agencies seek to reference an extrinsic standard
without incorporating it by reference into law, they know
how to do so. ....................................................................................5

6.

Plaintiffs’ alternative approach is inconsistent with the
appellate opinion and unworkable for the Court, the
parties, and the public. .....................................................................6

7.
B.

Federal regulations make clear that incorporation by
reference adopts documents as the government’s own
expression and creates binding obligations......................................2

Courts and citizens need a practical test. .........................................8

First Factor: the Purpose and Character of Public Resource’s
Use Favors Fair Use For All Standards At Issue. ......................................11
1.

Public Resource’s Use is Noncommercial and
Transformative. ..............................................................................11

ii

TABLE OF CONTENTS
(Continued)
Page
C.
D.

Third Factor: Public Resource Limits Its Use to the Material
Designated by Law. ...................................................................................14

E.
II.

Second Factor: The Nature of the Works Heavily Favors Fair
Use. ............................................................................................................14

Fourth Factor: Plaintiffs Have No Evidence of Market Harm. ..................15

PUBLIC
RESOURCE’S
INCLUSION
OF
PLAINTIFFS’
TRADEMARKS IN POSTED DOCUMENTS IS A NOMINATIVE
FAIR USE. .............................................................................................................17
A.
B.

Plaintiffs Cannot Meet Their Initial Burden Under the Third
Circuit’s Burden-Shifting Framework. ......................................................18

C.
III.

Public Resource Uses Plaintiffs’ Trademarks to Refer to
Plaintiffs’ Publications, As Does the Government. ...................................17

All Three New Kids Factors Are Present, Establishing
Nominative Fair Use. .................................................................................19

PLAINTIFFS CANNOT JUSTIFY A PERMANENT INJUNCTION. ................22
A.
B.

After Years of Litigation, the Plaintiffs Still Cannot Show
Irreparable Harm. .......................................................................................23

C.

The Balance of Hardships Disfavors an Injunction. ..................................24

D.
IV.

The Plaintiffs’ Deliberate Avoidance of Other Available
Remedies Weighs Against an Injunction. ..................................................22

The Plaintiffs Failed to Prove that an Injunction Would Serve
the Public Interest. .....................................................................................25

PLAINTIFFS FAIL TO PROVIDE ADEQUATE EVIDENCE OF
COPYRIGHT OWNERSHIP TO SUPPORT THEIR “JOINT
WORKS” THEORY. .............................................................................................25

CONCLUSION ..............................................................................................................................25

iii

TABLE OF AUTHORITIES
Page(s)
CASES
A.V. ex rel. Vanderhye v. iParadigms, LLC,
562 F.3d 630 (4th Cir. 2009) ...................................................................................................11
Allied Tube & Conduit Corp. v. Indian Head, Inc.,
486 U.S. 492 (1988) .................................................................................................................25
Am. Soc’y for Testing & Mat’ls v. Public.Resource.Org, Inc.,
896 F.3d 437 (D.C. Cir. 2018) ......................................................................................... passim
Appalachian Power Co. v. Train,
566 F.2d 451 (4th Cir. 1977) .....................................................................................................4
Arista Records LLC v. Lime Group LLC,
784 F. Supp.2d 313 (S.D.N.Y. 2011).................................................................................23, 24
Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006).....................................................................................................16
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) .................................................................................................................16
Century 21 Real Estate Corp. v. Lendingtree, Inc.,
425 F.3d 211 (3d Cir. 2005)...............................................................................................19, 20
eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388 (2006) ...........................................................................................................22, 23
Fogerty v. Fantasy, Inc.,
510 U.S. 517 (1994) .................................................................................................................17
Georgia v. Public.Resource.Org., Inc.,
No. 18-1150 (argued Dec. 2, 2019) .........................................................................................14
Higgins v. Detroit Educ. Television Found.,
4 F.Supp.2d 701 (E.D. Mich. 1998) .........................................................................................15
Hustler Magazine, Inc. v. Moral Majority, Inc.,
606 F. Supp. 1526 (C.D. Cal. 1985) ........................................................................................11
New Kids on the Block v. News America Publishing, Inc.,
971 F.2d 302 (9th Cir. 1992) .......................................................................................19, 20, 21

iv

TABLE OF AUTHORITIES
(Continued)
Page
Princeton Univ. Press v. Mich. Doc. Servs., Inc.,
99 F.3d 1381 (6th Cir. 1996) ...................................................................................................15
Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984) .....................................................................................................14, 16, 17
Super Future Equities v. Wells Fargo Bank,
553 F. Supp. 2d 680 (N.D. Tex. 2008) ....................................................................................16
Swatch Group Management Services v. Bloomberg LP.,
756 F.3d 73 (2d. Cir. 2014)......................................................................................................12
Thomas Jefferson University v. Shalala,
512 U.S. 504 (1994) ...................................................................................................................3
Toyota Motor Sales, U.S.A., Inc. v. Tabari,
610 F.3d 1171 (9th Cir. 2010) .................................................................................................22
United States v. Mead Corp.,
533 U.S. 218 (2001) ...................................................................................................................8
United States v. Myers,
553 F.3d 328 (4th Cir. 2009) ...................................................................................................14
STATUTES
1 C.F.R. § 51 ..........................................................................................................................3, 4, 10
24 C.F.R. Part 200..........................................................................................................................20
24 C.F.R. § 3280.4(aa)(4) (2019) ..................................................................................................10
30 C.F.R. § 1915.507(d)(5)..............................................................................................................9
40 C.F.R. § 86.113-04(a)(1).............................................................................................................8
41 C.F.R. § 60.17 (2011) ...............................................................................................................20
5 U.S.C. 552(a) ................................................................................................................................3
17 U.S.C. § 101 (“Copyright Act”)................................................................................................17
17 U.S.C. § 107 ..............................................................................................................................13
17 U.S.C. §107(1) ..........................................................................................................................11
v

TABLE OF AUTHORITIES
(Continued)
Page
17 U.S.C. §107(2) ..........................................................................................................................14
17 U.S.C. § 121(Chafee Amendment) ...........................................................................................13
17 U.S.C. § 409(2) .........................................................................................................................25
H.R. Rep. No. 94–1476 (1976), 1976 U.S.C.C.A.N. 5686 ............................................................13
H.R. Rep. No. 94–1476, at 73 (1976), 1976 U.S.C.C.A.N. 5659 ..................................................13
RULES
Federal Rule Evid. 803 ....................................................................................................................5
Federal Rule Evid. 807 ....................................................................................................................5
OTHER AUTHORITIES
Federal Register, “OFR Director Charley Barth Stepping Down for New
Opportunity,” .............................................................................................................................5
Incorporation by Reference, 37 Fed. Reg. 23602 (Nov. 4, 1972)
(to be codified at 1 C.F.R. 51) ...................................................................................................3
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:11
(5th ed. Nov. 2019 update) ......................................................................................................21
Office of the Federal Register, Document Drafting Handbook, Aug. 2018 ed.
(Rev. 1.1, dated Aug. 9, 2019), Chapter 1.5 ..............................................................................3
“Read-Only Versions of ASHRAE Standards,” ASHRAE (accessed Jan. 16,
2020), at https://www.ashrae.org/technical-resources/standards-andguidelines/read-only-versions-of-ashrae-standards .................................................................13
Report of the Advisory Committee on Accessible Instructional materials in
Postsecondary Education for Students with Disabilities 43-44 (Dec. 6, 2011),
http://www2.ed.gov/about/bdscomm/list/aim/meeting/aim-report.pdf ...................................13

vi

INTRODUCTION
The Court should rule for Public Resource on all counts. On copyright fair use, the ASTM
Plaintiffs (like the AERA Plaintiffs) depend on a misreading of the Court of Appeals’ clear
guidance. Properly construed, the appellate opinion supports a fair use finding here. With respect
to the first factor, Public Resource’s purpose to make the law more accessible to the citizenry, for
free, fits comfortably within the spectrum of transformative and public interest purposes that the
Court of Appeals recognized in its opinion. See Am. Soc’y for Testing & Mat’ls v.
Public.Resource.Org, Inc., 896 F.3d 437, 450-51 (D.C. Cir. 2018). Public Resource also offers a
practical rubric for classifying the standards at issue that avoids a legal morass of regulatory
interpretation. As for the second factor, it heavily favors fair use where, as here, “the consequence
of incorporation by reference is virtually indistinguishable from a situation in which the standard
had been expressly copied into law . . . .” Id. at 452. On the third factor, Public Resource’s posting
of the entire document was necessary to present the full law, so that citizens can understand the
legal duties that bind us all. Finally, after years of litigation it is clear that none of the plaintiffs
have suffered a whit of market harm.
On the trademark claim, there are multiple legal tests for nominative fair use, and every
one favors Public Resource.
Finally, on the motion for a permanent injunction, Plaintiffs cannot show any harm from
Public Resource’s conduct or that an injunction would serve the public interest. Public Resource,
by contrast, has shown how an injunction would manifestly disserve the public.

1

ARGUMENT
I.

PUBLIC RESOURCE IS ENTITLED TO SUMMARY JUDGMENT BECAUSE
ITS POSTING OF LAWS BY REFERENCE IS A LAWFUL FAIR USE.
Plaintiffs misunderstand the Court of Appeals to require an unworkable test that would

force courts and the public to second-guess regulators and the incorporation by reference process
and create a host of unintended consequences. Given that incorporation by reference already
requires multiple entities to determine what is and is not the law, the correct question is whether
or not the posted standard has been incorporated in full, or has not. The answer to that question
guides analysis of the first three fair use factors and informs the fourth. Moreover, where, as here,
the use is noncommercial, Plaintiffs must be able to muster some evidence of market harm beyond
mere speculation. They have not.
A.

The Government Has Already Told Us What Is and Is Not Essential to
Understanding a Legal Duty for Purposes of the Fair Use Analysis.

Plaintiffs argue a sentence-by-sentence analysis of standards and regulations is necessary
to determine what portions of incorporated material are “essential to complying with a legal duty.”
ASTM Reply at 7. That approach is neither consistent with the Court of Appeals’ instructions nor
workable as a practical matter, and ignores clear guidance from the relevant federal government
agencies and from the office that administers the incorporation-by-reference process. Moreover,
Plaintiffs unduly confine their focus to whether a person needs a standard to understand his or her
own legal duty. The law binds many different persons and entities, and people need to know the
law that binds others as well as themselves, so they can hold all accountable.
1.

Federal regulations make clear that incorporation by reference adopts
documents as the government’s own expression and creates binding
obligations.

Federal policy and practice ensure that incorporation by reference creates legal obligations.
The Office of the Federal Register’s (“OFR”) Document Drafting Handbook states that, if an
2

agency regulation includes a “reference [that] is required to comply with the regulations, [the
agency] must follow the incorporation by reference requirements in the IBR Handbook.” Office of
the Federal Register, Document Drafting Handbook, Aug. 2018 ed. (Rev. 1.1, dated Aug. 9, 2019),
Chapter 1.5 (emphasis added) (attached as Ex. 98 to the Supp. Reply Decl. of Matthew Becker
(“Becker Reply Decl.”)). Informational references, by contrast, need not follow these rules. Id.
Plaintiffs incorrectly dismiss the OFR’s IBR Handbook as unworthy of respect. But the
Director of the OFR is responsible for the administration of the incorporation by reference
procedure and must “interpret and apply” its language. 1 C.F.R. §51.1, 5 U.S.C. 552(a).
Accordingly, the OFR’s interpretation is due substantial deference. See Thomas Jefferson
University v. Shalala, 512 U.S. 504, 512 (1994).
2.

The formal incorporation by reference procedure precisely identifies
what the government has decided to incorporate into law.

The applicable regulations require an agency to identify precisely what it intends to
incorporate into law. For example, the original implementing regulations stated: “The language
incorporating material by reference shall be as precise and complete as possible.” 1 C.F.R. §
51.6(a) (1973) (emphasis added)1; see also 1 C.F.R. § 51.7(a) (1973) (“Each incorporation by
reference shall include an identification and subject description of the matter incorporated, in terms
as precise and useful as practicable within the limits of reasonable brevity.”). Today, the C.F.R.
continues to require that “the language incorporating a publication by reference must be precise,
complete, and clearly state that the incorporation by reference is intended” and that agencies
“inform[] the user that the incorporated publication is a requirement.” 1 C.F.R. § 51.9(a)-(b)
(emphasis added). Whatever an agency specifies as incorporated, is incorporated in full as the law.

1

See Incorporation by Reference, 37 Fed. Reg. 23602 (Nov. 4, 1972) (to be codified at 1 C.F.R.
51), attached as Ex. 99 to the Supp. Reply Decl. of Matthew Becker.
3

State adoptions are equally rigorous. For example, the State of California incorporates
model codes into Title 24 of the California Code of Regulations on a triennial code adoption cycle,
with a 45-day public comment period, a six-month publication requirement, and a three-month
delay to allow local governments to implement them. This includes adoption of the entirety of
NFPA’s National Electrical Code. SSSMF ¶¶ 225-242. The California Building Standards Law
precisely defines the process. SSSMF ¶ 15. Plaintiffs fail to address this or any other state adoption.
3.

Vagueness as to what is incorporated will invalidate a regulation.

Agencies have a strong incentive to follow the IBR process carefully and to specify
precisely the scope of incorporation: if they fail to do so, their regulations can be held invalid. In
Appalachian Power Co. v. Train, for example, the Fourth Circuit invalidated an Environmental
Protection Agency regulation where the EPA failed to obtain the approval of the Director of the
OFR and the regulations had failed to specify precisely what was to be incorporated into law. 566
F.2d 451, 457 (4th Cir. 1977). The regulations stated “(t)he information contained in the [EPA]
Development Document shall be considered,” but they did not identify whether “the information”
meant the entire 273-page document, or some unidentified subsection. Id. at 454. Analyzing 1
C.F.R. § 51 (as written at that time), the Fourth Circuit stated that “an incorporation by reference
must give one affected enough knowledge so that he may easily and certainly ascertain the
conditions by which he is to be bound.” Id. at 457.
Plaintiffs in this case suggest that the regulations at issue are sufficiently vague as to make
sentence-by-sentence comparison necessary. Under Appalachian Power, that vagueness would
render many of the regulations invalid. Presumably neither the Plaintiffs nor the agencies with
which they work would desire that outcome.
Given the care that agencies and the OFR invest in precisely defining the scope of
incorporation by reference, neither citizens nor courts should second-guess their judgments. And
4

their determinations of what has been incorporated are authoritative. When they mean to
incorporate complete documents, they do so; when they mean to incorporate only specific sections,
they know how to do that too. See, e.g., SSSMF ¶ 27.
4.

Ranking agency officials confirmed that the text of an incorporation
must be treated as a precise articulation of the matter incorporated.

The federal agency officials responsible for implementing and enforcing the IBR process
have independently confirmed that, as a matter of government policy and practice, the regulatory
text that incorporates material by reference is a precise articulation of what has been incorporated.
Plaintiffs trivialize one official, Amy Bunk, as merely “an employee of the National
Archives and Records Administration (“NARA”). ASTM Reply at 12. But Ms. Bunk served as the
acting Director of the OFR, whose job was to interpret and apply IBR policy.2 Another, Mary
Saunders, a high-ranking official at the National Institute for Standard and Technology, affirmed
that “[o]nly the agency would know” precisely what it intended to incorporate by reference into
law, and “it would be irresponsible” for NIST to make any assumptions about that intent. Dkt.
204-43 at 191:03-203:12 and Dkt. 204-66. Both officers, speaking from experience, confirmed
that actual practice reflects and reinforces the delineations found in the C.F.R.
5.

When agencies seek to reference an extrinsic standard without
incorporating it by reference into law, they know how to do so.

Agencies, like Congress, know perfectly well how not to draft a law. If an agency does not
intend to require compliance with or review of a document, but simply wishes to refer to it, there

2

See Office of the Federal Register, “OFR Director Charley Barth Stepping Down for New
Opportunity,” accessed Jan. 12, 2020, https://www.federalregister.gov/reader-aids/office-of-thefederal-register-blog/2014/10/ofr-director-charley-barth-stepping-down. Ms. Bunk’s statement is
a statement of a public office that sets out the office’s activities in supervising the IBR process,
and there is no reason to doubt the trustworthiness of Ms. Bunk’s statement. It therefore qualifies
as an exception to the hearsay rules under F.R.E. 803(8), and also qualifies for the residual
exception under F.R.E. 807.
5

are many ways to do so. For example, standards may be cited in agency advisory circulars,
guidance documents interpreting the rules in the C.F.R., or policy documents used in conjunction
with the C.F.R.3 Indeed, the Document Drafting Handbook specifies how to refer to documents
not incorporated by reference, such as including a statement of availability that explains where the
reference may be found. But the Handbook is equally clear that “[i]f the reference is required to
comply with the regulations, you must follow the incorporation by reference requirements in the
IBR Handbook.” Becker Reply Decl. Ex. 98 at Chapter 1.5 (emphasis added). Where an agency
has followed the more rigorous process of incorporating a document by reference into law, it has
presumably decided that the document is not a mere extrinsic reference.
6.

Plaintiffs’ alternative approach is inconsistent with the appellate
opinion and unworkable for the Court, the parties, and the public.

Contrary to Plaintiffs’ interpretation, the Court of Appeals did not suggest that this Court
should ignore the OFR and organize its analysis based on a false distinction between IBR’d
documents (or portions of documents) that are “essential to complying with a legal duty” and those
that are not. Cf. ASTM Reply at 7. Instead, the Court of Appeals suggested the documents at issue
fall into a “spectrum” that this Court could consider in determining whether factor one—the
purpose and character of the use—favors Public Resource. ASTM, 896 F.3d at 442-43 (“At one
end of this spectrum lie incorporated standards that define one’s legal obligations just as much as,
say, a local building code . . . . At the other end of the spectrum lie standards that serve as mere
references but have no direct legal effect on any private party’s conduct.”). While the Court of

3

ANSI appears to recognize this distinction, as it has a read-only website listing some standards
that have been incorporated by reference into law, but “[s]tandards referenced in advisory circulars
and/or policy documents are not accessible via the IBR portal.” Dkt. 204-43 at 303:03-304:07 and
Dkt. 203-21 at 4 (Ex. 71).
6

Appeals suggested that posting IBR’d standards at the “reference” end may be less transformative,
it did not find that such a use was not transformative, much less disfavored. Id. at 450.
Each of Public Resource’s uses is transformative, and the task at hand is determining how
transformative that use is for each incorporated standard. The Court of Appeals suggested that
“[w]here an incorporated standard provides information essential to comprehending one’s legal
duties, for example, [the first fair use] factor would weigh heavily in favor of permitting a nonprofit
seeking to inform the public about the law to reproduce in full the relevant portions of that
particular standard.” ASTM, 896 F.3d at 450. If an agency has incorporated material by reference
and the Director of the OFR has reviewed and approved the incorporation, the agency has made a
judgment that the incorporated material “provides information essential to comprehending one’s
legal duties.” See Section I.A.1-5, above. While Plaintiffs cite the Court of Appeals’ statement
above to suggest that it intended only specific portions of an incorporated standard to be fair use,
ASTM Reply at 10, Plaintiffs are mistaken.
First, the Court should defer to each agency’s choice to incorporate all or just some of a
standard into law and to the Director of the OFR’s review and approval of that incorporation.
Subjectively second-guessing that process both undermines that careful process and risks errors
from a failure to consider all the factors that the agency and the OFR considered. The same goes
for standards adopted by state governments.
Second, even if the Court of Appeals did intend that kind of subjective second review, and
were this Court to perform it and conclude that some portion was not “essential,” that conclusion
would not keep the use of remaining portions of the standard from being transformative, only less
so. Those portions would still be transformative as educating citizens about the government edict
that the incorporation of the entire standard had created.

7

Third, each standard incorporated by reference is essential to someone to comply with a
legal duty, even if the standard supplies only reference procedures. For example, while the Court
of Appeals cited 40 C.F.R. § 86.113-04(a)(1), which regulates gasoline, as an example of one such
reference procedure, automobile manufacturers and auto shops offering emissions testing and
credentialing are charged with ensuring they use gasoline that meets these requirements, based on
ASTM D86 and not any other procedure.
7.

Courts and citizens need a practical test.

Public Resource, the Court, and other adjudicating bodies need a workable method to
determine what documents should be freely accessible. The Plaintiffs’ approach does not offer
such a method. To begin with, citizens require access to laws and government edicts far beyond
that with which anyone must comply. Is the preamble to the Second Amendment “essential”? Does
public access to the text of an oath of office of a state official depend on whether the oath is an
enforceable law? Trying to parse these questions does not yield a workable legal test. Moreover,
just as the public, and not just Boeing and FAA employees, have an interest in knowing whether
the FAA and Boeing followed the law in the certification of the 737 Max for flight, the public must
be able to hold government agents and other citizens accountable for their compliance with the
law. To do so, the public must be able to know the law.
Moreover, Plaintiffs’ approach means disregarding federal agencies’ own statements about
incorporation by reference and their formal expressions of incorporation which, when part of
notice-and-comment rulemaking, is entitled to judicial deference. United States v. Mead Corp.,
533 U.S. 218, 226-27 (2001). It also means imposing on courts a tedious and intensive process of
reviewing every standard (each of which may be hundreds of pages long); each incorporating
regulation, and all related provisions that speak to the purpose and scope of the regulation; the
rulemaking history and comments; all relevant enforcement actions by the agencies; and any other
8

cases where a court may have addressed or interpreted the scope of the incorporation. Each
instance is likely to be an issue of first impression, and when a regulation is updated several years
later, the analysis would need to be performed anew.
The consequences of imposing such a cumbersome process would extend far beyond this
case. In every case, and for every incorporation, a court would necessarily have to determine the
scope of the regulation; identify whom it governs and specify how it governs them; and to sort
through sometimes very lengthy incorporated documents to determine which paragraphs,
sentences, or phrases are relevant to understanding, interpreting, and complying with the
regulation. Determinations regarding the same standards might differ from case to case, depending
on the resourcefulness of defense counsel in articulating the relevance or implications of relevant
language; or else a court might consider an earlier case to be conclusive on the question, which
would inevitably affect interpretation of regulations in later disputes, even though the court in the
original case would have been unaware of all of the factual nuances at issue in later litigation.
Indeed, Plaintiffs prove just how difficult it is, under their proposal, to determine how to
comply with the regulations incorporating the standards at issue. For example, Plaintiffs claim that
Public Resource should not have posted chapter 9 of NFPA 12 (2005) because 30 C.F.R. § 1915.5
and 1915.507(d)(5) (2015) ostensibly concern only “land-side facilities.” ASTM Reply at 8-9. But
NFPA 12 is riddled with cross-references, and includes provisions such as Section 4.5.2 which
references chapter 9 on carbon dioxide extinguishing systems, which is the subject of 30 C.F.R. §
1915.507(d)(5). And the Appendix to the standard acknowledges that, with regard to chapter 9, “It
is intended that NFPA 12, Standard on Carbon Dioxide Extinguishing Systems, including this
chapter [chapter 9], would be used as a stand-alone document for the design, installation, and
maintenance of marine carbon dioxide systems.” NFPA 12 (2005) at A.9.2.1 (Ex. E to Supp. Decl.

9

of James Pauley, Dkt. 198-50) (italics omitted). It is hard to see how a layperson could safely
conclude any part of this incorporated standard was not “essential” to a legal duty.
Public Resource’s approach avoids this morass. The Court can instead focus on what has
become law through incorporation by reference. The Court need not make a detailed holding
analyzing the scope of each regulation, make law that will affect the rights and obligations of
unknown parties in future cases under these regulations, or second-guess the incorporating
agencies. If an agency follows all necessary procedures and incorporates an entire document into
the law, using the process in 1 C.F.R. §§ 51.1-51.11 or other comparable processes, then Public
Resource’s posting of the entire document to educate the public has a favored purpose. Where
federal regulations incorporate only certain specific (and readily identifiable) sections of a
document,4 then posting only those sections similarly has such a favored purpose.
Public Resource’s approach gives fair notice to all—agencies, SDOs, and the public —that
whatever is formally incorporated by reference into law is the law and is fair game for fair use.
Agencies, and the SDOs that brag in their briefs about their public-private partnership with
government, have the power to indicate explicitly what is incorporated. Instead of incorporating
an entire document, they can agree to incorporate by reference, or paste into the text of a statute or
regulation, exactly what portions they need, and preserve the rest for private use and, if they wish,
private sale. Public Resource would post no more than what becomes the law.

4

See, e.g., SSSMF ¶ 27 (showing how 24 C.F.R. § 3280.4(aa)(4) (2019) incorporates by reference
into law only specific portions of the National Electrical Code, such as “Article 110.22” and
“Article 210.12(A)” of that document).
10

B.

First Factor: the Purpose and Character of Public Resource’s Use Favors
Fair Use For All Standards At Issue.

The first fair use factor is “the purpose and character of the use, including whether such
use is of a commercial nature or is for nonprofit educational purposes.” 17 U.S.C. §107(1). One
common, though non-exclusive, metric for evaluating the first factor, is whether the use is
“transformative,” one that has a new “intrinsic purpose,” and serves an “entirely different
function.” Hustler Magazine, Inc. v. Moral Majority, Inc., 606 F. Supp. 1526, 1535 (C.D. Cal.
1985). Public Resource’s non-commercial and educational posting of each of the IBR standards as
part of a legal archive qualifies as transformative use.
1.

Public Resource’s Use is Noncommercial and Transformative.

Public Resource’s posting of incorporated standards is non-commercial. ASTM, 896 F.3d
at 449-50. It is also “transformative in function [and] purpose.” A.V. ex rel. Vanderhye v.
iParadigms, LLC, 562 F.3d 630, 639 (4th Cir. 2009).
As an initial matter, the standards incorporated into law in this case establish legal duties,
according to the enacting agencies and the Office of the Federal Register. See Section I.A. above.
Posting standards that establish a legal duty falls on the transformative side of the spectrum
described by the Court of Appeals. Further, the standards that Public Resource posts have also
become government edicts, and Public Resource presents them as such.
Moreover, the purpose and character of Public Resource’s use could scarcely be more
different from that of the Plaintiffs. Plaintiffs’ mission is to promote the current private industry
standards, and develop new versions. Public Resource’s mission is to provide to the public, for
free, a comprehensive repository of the law, including the law that exists in private standards that
are obscure to much of the public (and even to some courts). These standards Public Resource

11

posts are usually obsolete as statements of best practice and technical merit. Only those who seek
to know and engage with the law will seek them out, because that is their only remaining value.
Put another way, Public Resource imparts a different message. Plaintiffs’ message is that
“these are current best practices for the design and operation of buildings and products.” Public
Resource’s message is that “this is the law,” and it is bolstered by a collection of essays and video
material. This new context reflects and reinforces a distinct purpose. See Swatch Group
Management Services v. Bloomberg LP., 756 F.3d 73, 85 (2d. Cir. 2014) (“Bloomberg’s
message—‘This is what they said’—is a very different message from Swatch Group’s—‘This is
what you should believe.’”).
In addition, Plaintiffs do not seek to make the standards available to the same public
audience as Public Resource, but they exercise their claim to a copyright veto power arbitrarily
and against the public interest. Plaintiff ASTM denied a graduate student’s request for permission
to use excerpts from a standard in a research paper, while allowing friends of the organization to
excerpt standards at will. SSSMF ¶¶ 103-111. As jealous gatekeepers, Plaintiffs do not provide
free and unrestricted access for those who need to search within standards, copy excerpts, or
engage in computer-aided research. Public Resource does, serving a new and different purpose.
The transformative character of Public Resource’s use is entirely consistent with Swatch
Group, in which Swatch, the rightsholder, challenged Bloomberg’s dissemination of the audio
recording of a phone call, but not a transcript made from the recording (which was a non-infringing
derivative of the audio recording). 756 F.3d at 79. The public availability of an alternative format
(the transcript) did not make Bloomberg’s dissemination of the audio recording unfair. Id. at 84.
Likewise, Public Resource’s posting of the IBR standards in searchable, accessible formats is

12

transformative in purpose, notwithstanding Plaintiffs’ provision of the standards in hard copy or
in “reading rooms” that are deliberately difficult to use.
Plaintiffs’ suggestion that it is enough, for purposes of the fair use analysis, to make a
standard “reasonably available,” is a red herring. The “reasonably available” requirement governs
whether a standard can be incorporated by reference in the first place. The transformative use
analysis concerns how the standards may be used after IBR. The latter issue is not a “policy
judgment best left to Congress”—Congress has expressly authorized courts to develop fair-use
jurisprudence, and to make specific fair-use decisions, with guidance from section 107. Moreover,
as a factual matter Plaintiffs do not actually make all the incorporated standards at issue available
on their reading rooms. For example, ASHRAE still does not make its 1993 Handbook available.5
Finally, Public Resource also makes standards accessible to people with print disabilities
by posting them in standard formats; Plaintiffs do not. The drafters of the 1976 Copyright Act
considered uses in support of accessibility to be a favored purpose under the first fair use factor.
H.R. Rep. No. 94–1476, at 73 (1976), 1976 U.S.C.C.A.N. 5659, 5686 (calling accessibility a
“special instance illustrating the application of the fair use doctrine.”). Plaintiffs again argue that
the Chafee Amendment, 17 U.S.C. § 121, casts a shadow over fair use such that accessibilityrelated uses not covered by the Amendment cannot be fair uses. This is not only wrong but
potentially harmful to the print-disabled community, which relies on fair use to permit important
accessibility measures not explicitly covered by the Chafee Amendment.6 The Supreme Court

5

See “Read-Only Versions of ASHRAE Standards,” ASHRAE (accessed Jan. 16, 2020), at
https://www.ashrae.org/technical-resources/standards-and-guidelines/read-only-versions-ofashrae-standards.
6

Report of the Advisory Committee on Accessible Instructional materials in Postsecondary
Education for Students with Disabilities 43-44 (Dec. 6, 2011), http://www2.ed.gov/about/
bdscomm/list/aim/meeting/aim-report.pdf.
13

explicitly recognized that making materials available to the blind can be a fair use. See Sony Corp.
of Am. v. Universal City Studios, Inc., 464 U.S. 417, 455 n.40 (1984).
C.

Second Factor: The Nature of the Works Heavily Favors Fair Use.

The second factor considers “the nature of the copyrighted work.” 17 U.S.C. §107(2). The
Court of Appeals held that “[w]here the consequence of the incorporation by reference is virtually
indistinguishable from a situation in which the standard had been expressly copied into law, this
factor weighs heavily in favor of fair use.” ASTM, 896 F.3d at 452. Here, that very consequence
applies for all standards incorporated by reference into the Code of Federal Regulations or adopted
into state law. Dkt. 122-9 at 86 (material incorporated by reference, “like any other properly issued
rule, has the force and effect of law”); see also United States v. Myers, 553 F.3d 328, 331 (4th Cir.
2009) (material incorporated by reference has the same force of law as the regulation itself).
Moreover, it is undisputed that the government’s incorporation of the standards at issue is
a fact: by that incorporation, the standards at issue have become the government’s speech and a
government edict. Like a lobbyist’s draft of a bill that is made into law, once the government has
adopted that language as its own, anyone must be free to report what the government said. While
the “government edicts” doctrine affecting copyrightability, currently before the United States
Supreme Court in Georgia v. Public.Resource.Org., Inc., No. 18-1150 (argued Dec. 2, 2019), is
not directly before this Court now, the status of the standards at issue as government edicts
establishes the government’s speech as a fact, and it shows that propagation of that fact qualifies
as a form of news reporting just like conveying the text of a government debate or proclamation.
D.

Third Factor: Public Resource Limits Its Use to the Material Designated by
Law.

Plaintiffs misconstrue the principle and examples provided by the Court of Appeals. ASTM
Reply at 19-20. The Court of Appeals did not require this Court to engage in a specific review of

14

each standard, but created room for evaluation of “groupings” of standards. ASTM, 896 F.3d at
449. Moreover, it stated that “If PRO limits its copying to only what is required to fairly describe
the standard’s legal import, this factor would weigh strongly in favor of finding fair use here,
especially given that precision is ten-tenths of the law” but that “where the incorporation merely
makes reference to an external standard, but that standard does not govern any conduct, perhaps
the copier’s purpose could be achieved with only a paraphrase or summary.” Id. at 896 F.3d at
452. As explained in Section I.A. above, the IBR process requires agencies to differentiate between
material that is mandatory and that which is merely informational. Rather than second-guess that
process and those determinations, Public Resource has deferred to the government’s own
statements, and it posted precisely what a given agency has determined to be the law. See, e.g.
OFR Document Drafting Handbook (Becker Reply Decl. Ex. 98) at Ch. 1.5. Thus, Public Resource
has necessarily limited its copying to only what is required to fairly describe a standard’s legal
import, as determined by the incorporating agencies.
E.

Fourth Factor: Plaintiffs Have No Evidence of Market Harm.

After years of litigation and two rounds of discovery, Plaintiffs have failed to offer a single
fact showing or suggesting any harm to an existing or potential market from Public Resource’s
use. Therefore, Plaintiffs insist they have no burden to show any such evidence and effectively ask
this Court to rely on an inference of market harm. See Opp. at 21-23.
Plaintiffs are mistaken. First, the Court of Appeals has found Public Resource’s use to be
noncommercial. ASTM, 896 F.3d at 453. “The burden of proof as to market effect rests with the
copyright holder if,” as it is here, “the challenged use is of a ‘noncommercial’ nature.” Princeton
Univ. Press v. Mich. Doc. Servs., Inc., 99 F.3d 1381, 1385 (6th Cir. 1996); see also Higgins v.
Detroit Educ. Television Found., 4 F.Supp.2d 701, 709 & n.8 (E.D. Mich. 1998) (granting

15

summary judgment in favor of copyright defendant on fair use based on plaintiff’s failure to show
harm, where use had a non-profit, teaching purpose). The Supreme Court in Sony explained that:
What is necessary is a showing by a preponderance of the evidence
that some meaningful likelihood of future harm exists. If the
intended use is for commercial gain, that likelihood may be
presumed. But if it is for a noncommercial purpose, the likelihood
must be demonstrated.
Sony, 464 U.S. at 451.
Plaintiffs fail to make any such showing. Instead, they insist that, under Campbell v. AcuffRose Music, Inc., 510 U.S. 569 (1994), a copyright defendant bears the burden of proof on the
fourth factor. But Campbell itself concerned a commercial use. Id. at 571-72 (considering whether
a “commercial parody” of a copyrighted song could nonetheless be a fair use); see also Super
Future Equities v. Wells Fargo Bank, 553 F. Supp. 2d 680, 701 (N.D. Tex. 2008) (distinguishing
Campbell on this basis). Moreover, the Campbell decision actually limited the scope of any such
presumption even in cases concerning commercial uses. Campbell, 510 U.S. at 591 (“No
‘presumption’ or inference of market harm that might find support in Sony is applicable to a case
involving something beyond mere duplication for commercial purposes.” (emphasis added).
Plaintiffs’ assertions of injury themselves are circular. Plaintiffs suggest that their
continued litigation is itself proof of “substantial harm.” Opp. at 22. There is no legal or logical
support for the notion that merely maintaining a copyright lawsuit defeats a claim of fair use. See,
e.g., Blanch v. Koons, 467 F.3d 244, 258 & n.9 (2d Cir. 2006) (finding fourth factor “greatly”
favored copyright defendant, where plaintiff asserted that she could charge defendant licensing
fees if the court held in her favor). Plaintiffs fail to support their claims of market harm with any
evidence, and they also disregard evidence demonstrating that Public Resource’s uses have had no
measurable impact on their finances. See, e.g., SSSMF ¶¶ 137, 138, 154. Indeed, Plaintiffs’
carefully ignore the many years’ worth of sales data they themselves produced in discovery.
16

Similarly, Plaintiffs’ purported “answers” to the three questions that the Court of Appeals
raised undermine any claim of genuine market harm. Plaintiffs concede that their reading rooms
do not cannibalize the commercial market for their standards, and—as explained above—they fail
to offer any evidence that Public Resource’s postings have had any substitutional effect. See Opp.
at 23-24. Nor do they offer support for their assertion that Public Resource’s posting of obsolete
standards may harm the market for new standards because “newly issued standards may be very
similar to older versions that PRO posts.” See id. at 24. If anything, the existence of those new
versions simply demonstrates that Plaintiffs do not need a copyright incentive under copyright law
to continue producing new standards. Sony, 464 U.S. at 429; (“the limited grant” of rights under
the Copyright Act is meant “to motivate the creative activity of authors and inventors”); accord
Fogerty v. Fantasy, Inc., 510 U.S. 517, 526 (1994).
All four factor favors Public Resource. Accordingly, the Court should grant summary
judgment for Public Resource on the copyright claims.
II.

PUBLIC RESOURCE’S INCLUSION OF PLAINTIFFS’ TRADEMARKS IN
POSTED DOCUMENTS IS A NOMINATIVE FAIR USE.
Plaintiffs’ trademark arguments virtually ignore the Court of Appeals’ opinion, which

treated the issue as far from a “black-and-white case of trademark infringement.” ASTM Reply at
26. Proper consideration of the factors the Court of Appeals identified requires a finding of
noninfringement under any circuit’s framework.
A.

Public Resource Uses Plaintiffs’ Trademarks to Refer to Plaintiffs’
Publications, As Does the Government.

Plaintiffs inexplicably claim that Public Resource “is not using Plaintiffs’ trademarks to
refer to Plaintiffs’ publications,” ASTM Reply at 27. Public Resource uses Plaintiffs’ marks
precisely to identify the documents that it has posted—i.e., Plaintiffs’ published standards. Indeed,
the Court of Appeals observed that “it is hard to see how” Public Resource could fulfill its goal of
17

educating the public about the content of the standards “without identifying the standard by its
name—the very name also used in the incorporating law.” ASTM, 896 F.3d at 457.
Any alleged errors in Public Resource’s reproductions do not alter the nominative character
of the use. The Court rejected Public Resource’s Dastar argument based on Plaintiffs’ allegations
of material differences, but it did not find that those allegations ruled out nominative fair use.
Compare ASTM, 896 F.3d at 455, with id. at 456–57. Nor would such a rule be reasonable. For
example, if a journalist reporting on this case refers to “ASTM, NFPA, and ASHRAE’s reply
brief,” that is a nominative use of Plaintiffs’ marks, not trademark infringement, regardless of
whether the journalist introduces typographical errors into a quotation from the filing.
Finally, Plaintiffs have identified alleged errors in only a small subset of the postings at
issue. It is Plaintiffs’ burden to prove infringement and entitlement to an injunction, and any
argument that depends on the existence of errors in a few of Public Resource’s postings cannot
possibly justify the issuance of an injunction against those that contain none.
B.

Plaintiffs Cannot Meet Their Initial Burden Under the Third Circuit’s
Burden-Shifting Framework.

Plaintiffs misconstrue Public Resource’s argument regarding the Third Circuit’s burdenshifting framework. See ASTM Reply at 27. Plaintiffs’ error was not a failure to accept the burden
of proving likelihood of confusion, but a failure to apply the Third Circuit’s modified confusion
analysis. See PRO Op. Br. at 31. Because Plaintiffs never addressed that modified test until their
most recent brief (nor did this Court), their law-of-the-case argument is misplaced. Cf. ASTM, 896
F.3d at 456 (“PRO contests neither the enforceability of ASTM’s trademarks nor the district
court’s analysis of the ordinary likelihood of confusion factors.” (emphasis added)).
That said, Plaintiffs cannot prevail under the Third Circuit’s modified test, which depends
on four factors: intent, actual confusion, the duration of the defendant’s use without actual

18

confusion, and lack of consumer care. Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d
211, 225-26 (3d Cir. 2005). First, Plaintiffs err in relying on evidence of intent to copy. See ASTM
Reply at 27 n.24. In Century 21, the Third Circuit explained that this factor looks at intent to
mislead, not intent to copy. 425 F.3d at 226. Second, while actual confusion evidence is not
required in trademark cases, without such evidence Plaintiffs cannot tilt this factor in their favor.
Third, Plaintiffs offer no response to Public Resource’s observation that the posted standards
including their marks have been online for years without causing confusion. And fourth, it is
Plaintiffs’ burden to provide evidence of consumer care, and they have not done so. Having failed
to produce evidence on any of the four factors in the Third Circuit’s framework, Plaintiffs cannot
shift the burden to Public Resource to establish nominative fair use.
C.

All Three New Kids Factors Are Present, Establishing Nominative Fair Use.

Plaintiffs also attempt to sidestep the Ninth Circuit’s test. On factor one, Plaintiffs
inexplicably assert that Public Resource “does not argue . . . that [its] identification of Plaintiffs’
standards ‘would be rendered significantly more difficult without use of’ Plaintiffs’ marks.”
ASTM Reply at 28. To the contrary, Public Resource’s Opposition explained in detail why the
incorporated standards are not readily identifiable without Plaintiffs’ marks, providing examples
and relevant case law. PRO Op. Br. at 32–33. Those reasons included the presence of Plaintiffs’
marks in the titles of their standards and the use of those titles in the incorporating regulations; the
lack of a one-to-one correspondence between incorporated standards and incorporating
regulations; and searchability considerations.
Plaintiffs claim that Public Resource “could also identify standards by citing the
incorporating regulation,” ASTM Reply at 28, insisting that Public Resource’s alleged failure to
research “the incorporating references thoroughly is a reason to deny fair use.” Id. But Public
Resource does not claim that it is too difficult to determine all regulations incorporating a given
19

standard. Rather, the point is that the lack of a one-to-one correspondence compromises the
effectiveness of using a regulatory citation to uniquely identify a standard it incorporates.
To adapt a famous example from New Kids, Plaintiffs’ assertion that Public Resource
“could have identified ASTM’s Standard Specification for Structural Steel as the ‘standard
adopted by 24 C.F.R. Part 200’” (ASTM Op. Br. at 34) is like suggesting that a speaker could
identify the Chicago Bulls as “the professional basketball team from the United States.” New Kids
on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). Just as that reference
would leave ambiguous whether the speaker meant the Bulls or one of the 28 other U.S. NBA
teams, a reference to “the standard adopted by 24 C.F.R. Part 200” would fail to indicate which of
the dozens of standards incorporated at that location was intended.
Plaintiffs alternatively argue that Public Resource “could reproduce the current text of a
regulation and . . . provide a hyperlink to the relevant standard, all without displaying Plaintiffs’
word marks or logos in the linked-to content.” ASTM Reply at 28–29. Even if the potential for
such elaborate workarounds negated a nominative fair use defense—which it does not, see Century
21, 425 F.3d at 229; New Kids, 971 F.2d at 306—that proposal is nonsensical given that the
regulatory text that Plaintiffs propose reproducing itself uses their marks to identify the
incorporated standards. See, e.g., 41 C.F.R. § 60.17 (2011) (identifying standard incorporated by
reference as “ASTM D396-78, 89, 90, 92, 96, 98, Standard Specification for Fuel Oils”).
On the second factor, Plaintiffs do not contest that Public Resource’s display of their word
marks satisfies the second New Kids factor. See PRO Op. Br. at 34; ASTM Reply at 29–30
(addressing only display of logos under second factor). As for the logos—which Public Resource
has already redacted—Public Resource is not Plaintiffs’ competitor. It does not sell standards,
whether they have become law or not, or otherwise use them commercially. Cf. ASTM, 896 F.3d

20

at 449. It posts only documents that it believes have the force of law. And it has no incentive to
create confusion about the sources of those documents.
Plaintiffs also err in suggesting that a logo may be used nominatively only for criticism.
See ASTM Reply at 29. In the leading trademark treatise, Professor McCarthy describes the factor
two analysis for logos as “highly fact-intensive” and provides other examples of nominative fair
uses of logos not involving criticism. J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 23:11 (5th ed. Nov. 2019 update). Here, the key consideration should be that Public
Resource had a legitimate reason for reproducing Plaintiffs’ logos unrelated to exploiting their
associated goodwill, just as in the examples Professor McCarthy provides.
Finally, the third New Kids factor looks to whether there is language or conduct in addition
to use of Plaintiffs’ marks that affirmatively suggests sponsorship or endorsement.7 McCarthy,
supra, § 23:11; ASTM, 896 F.3d at 456. Having abandoned their earlier argument that Public
Resource’s redaction of Plaintiffs’ logos somehow qualified (cf. ASTM Op. Br. at 37), the only
additional conduct Plaintiffs now raise is Public Resource’s copying of the text of their standards.
ASTM Reply at 30. Once again, this is no more than a copyright argument in disguise. By
indicating its intent to provide accurate reproductions of the standards incorporated as law, Public
Resource does not imply that Plaintiffs have approved or signed off on those reproductions.
As for Public Resource’s disclaimers, it bears repeating that no disclaimers at all are
required because Public Resource has done nothing to affirmatively encourage consumer

7

There are several good reasons why Plaintiffs should bear the burden of proof on this and the
other nominative fair use factors (contra ASTM Reply at 30 & n.26), including that the reverse
burden would require Public Resource to prove a negative and that this factor bears a close
relationship to the likelihood of confusion inquiry, on which a plaintiff always carries the burden.
And as Public Resource has explained, only the Third Circuit treats nominative fair use as an
affirmative defense, and Plaintiffs cannot meet that test’s burden-shifting threshold. See PRO Opp.
at 31–32. Regardless, the allocation of burden should have no impact on the ultimate result here.
21

confusion as to Plaintiffs’ sponsorship or endorsement of its postings. See Toyota Motor Sales,
U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1177 (9th Cir. 2010). Rather, they function to tip the scales
further in Public Resource’s favor by affirmatively discouraging such confusion, see id.—not to
mention their significance in contradicting Plaintiffs’ unfounded assertion that Public Resource’s
conduct “was plainly calculated to confuse consumers,” ASTM Reply at 30.
III.

PLAINTIFFS CANNOT JUSTIFY A PERMANENT INJUNCTION.
A.

The Plaintiffs’ Deliberate Avoidance of Other Available Remedies Weighs
Against an Injunction.

Public Resource may easily dispose of Plaintiffs’ first argument in support of injunctive
relief, namely that Public Resource ignored the “inadequacy of other available remedies.” ASTM
Br. at 32. Plaintiffs state “Public Resource has neither the money nor the inclination” to pay
damages. Id. But Plaintiffs chose not to sue for damages, though they did demand attorneys’ fees;
see Complaint (Dkt. 1) at 49. The Plaintiffs bear the burden of establishing all four eBay factors.
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). Public Resource bears the burden on
none. Thus, it was not for Public Resource to suggest or establish the adequacies of other available
remedies when none were proposed.
In any event, Plaintiffs do have alternative remedies. They can choose not to promote
adoption of their standards as laws through incorporation by reference. Public Resource posts only
materials that have become government edicts and laws. They can urge agencies to incorporate
only portions of standards. And if they believe adoption of their standards as laws caused a
“taking” of their copyrights, they may bring actions against the relevant governments, as they

22

implied in their original summary judgment motion. See Dkt. 155 at 16. They may not like that
remedy, because they profit from the legal status of their standards,8 but it is available.
The fact that the Plaintiffs have deliberately chosen to forgo other remedies does not prove
that they lack alternatives. This “remedies” factor thus weighs against a preliminary injunction.
B.

After Years of Litigation, the Plaintiffs Still Cannot Show Irreparable Harm.

“A plaintiff must demonstrate: (1) that it has suffered an irreparable injury . . . .” eBay, 547
U.S. at 391 (emphasis added). Plaintiffs have not established any actual injuries at all.
Plaintiffs stress repeatedly the “importance” they attach to the standards, but their only
evidence is their own choice, observed by their own expert, to file and pursue this lawsuit. ASTM
Reply at 34. The Court should give little if any weight to this kind of classic “mouthpiece”
testimony by an expert who simply repeat the opinion of a party’s management in expert garb. In
any event, the testimony does not show any actual economic harm.
Plaintiffs also explain their earlier delay in seeking an injunction by saying they wanted to
“develop an evidentiary record before seeking a merits-based decision.” ASTM Reply at 34 n.28.
But years later, Plaintiffs still cannot attribute any lost sales to Public Resource’s conduct.9
Plaintiffs’ attempt to compare Public Resource to for-profit peer to peer file-sharing
companies is specious. Those cases involved claims for billions of dollars in damages against forprofit entities. See Arista Records LLC v. Lime Group LLC, 784 F. Supp.2d 313, 317 (S.D.N.Y.
2011). Moreover, the Plaintiffs cite not to a court decision but to a consent injunction in the Lime

8

As NFPA advertises in e-mail blasts, when selling its standards and ancillary materials, “Be
confident your electrical work complies with California law. . . . California has adopted the 2011
NEC. Order the NEC Handbook today and receive FREE tabs!” Dkt. 124-5.
9

Plaintiffs also falsely assert that they filed suit “only eight months” after Public Resource first
began posting the standards at issue. ASTM Reply at 34, n.28. Public Resource posted some of the
standards at issue in 2008 and the record shows that Plaintiffs coordinated amongst each other
regarding Public Resource for years prior to filing suit. SSSMF ¶¶ 133-134.
23

Wire case in which the parties agreed that the eBay standard required a showing that a plaintiff has
suffered irreparable harm, not that some hypothetical harm might lie in the future. See Arista
Records LLC v. Lime Wire LLC., No. 06 Civ. 05936, 2010 WL 10031251, *3 (S.D.N.Y. Aug. 9,
2010). Thus, the Plaintiffs have failed to meet the standard they invoked.
Plaintiffs finally claim that Public Resource’s activities threaten their “reputations” but
they have no evidence, after years of litigation, to support that conclusion other than a small
number of typographical errors in Public Resource’s work. Given that Plaintiffs’ themselves have
had similar error rates in their own publications, the Court need not and should not infer that any
such harm, if it exists at all, is attributable to Public Resource. SSSMF ¶¶ 176-178.
C.

The Balance of Hardships Disfavors an Injunction.

Public Resource explained that an injunction against posting the laws would impair its
important non-profit, public interest mission. The Plaintiffs’ answer is simply to compare Public
Resource to for-profit services that rebroadcast commercial network television programming.
This approach reflects Plaintiffs’ consistent blind spot: Public Resource’s mission of
enabling free access to the law. Indeed, this case involves one of the most obscure but far-reaching
sets of laws in the United States. Their inclusion is necessary to the creation of a unitary repository
of the law for public study, commentary, and debate. There is no realistic alternative to the public
service Public Resource provides, given the cost and difficulty of purchasing these obsolete
standards that remain the law and that constitute important documentation of laws past and present.
Plaintiffs also fail to identify any legitimate hardship on their part. Once again, they rely
solely upon speculation about a likely change in business models. Plaintiffs threaten to start
charging the actual authors of the standards: the persons (or their employers) who do the drafting
and revising. Plaintiffs have not explained what their additional charges would be, which is hardly
surprising given that those persons or their employers already pay to participate in the standards
24

drafting, via membership dues, work hours, and travel expenses, and that those who participate
reap or seek significant rewards for their efforts. See Allied Tube & Conduit Corp. v. Indian Head,
Inc., 486 U.S. 492, 502-09 (1988) (discussing both legislative and anticompetitive aims of
participants in standard-setting of Plaintiff National Fire Protection Association).
D.

The Plaintiffs Failed to Prove that an Injunction Would Serve the Public
Interest.

The public interest in Public Resource’s continued work, free of any threat of injunction,
is clear. Notably, Plaintiffs fail to address two powerful examples of that interest where courts and
litigants were unable to access standards that had been incorporated into law. See Dkt. 202-2 at 13, 9, 12. Plaintiffs’ standards, as such, may serve the public interest. Allowing Plaintiffs to control
who can report, access, learn, teach, annotate, or discuss the subset of standards that have become
mandatory, does not. The law should have no gatekeepers, much less arbitrary ones.
IV.

PLAINTIFFS FAIL TO PROVIDE ADEQUATE EVIDENCE OF COPYRIGHT
OWNERSHIP TO SUPPORT THEIR “JOINT WORKS” THEORY.
Plaintiffs acknowledge that errors in copyright registrations affect the presumption of

ownership where they are material or fraudulent. ASTM Reply at 26 (citing Nimmer on Copyright
§ 7.20[B][1]). A straightforward application of the Copyright Act suggests that joint authorship
with federal government employees, acting in the scope of their employment, causes the standards
to become works of the U.S. Government and therefore outside of copyright. Thus, Plaintiffs’
failure to identify all joint authors (including U.S. government employees) as 17 U.S.C. § 409(2)
requires is material: if they had identified U.S. Government authors, the copyright registration
should not have been granted. See, e.g., SSSMF ¶ 191; Becker Reply Decl. Ex. 103.
CONCLUSION
For all these reasons, the Court should deny Plaintiffs’ motion for summary judgment and
for a permanent injunction and grant Defendant’s second motion for summary judgment.
25

Dated: January 16, 2020

Respectfully submitted,
/s/ Andrew P. Bridges
Andrew P. Bridges (USDC-DC AR0002)
[e-mail]
Matthew B. Becker (admitted pro hac vice)
[e-mail]
FENWICK & WEST LLP
801 California Street
Mountain View, CA 94041
Telephone: [phone]
Corynne McSherry (admitted pro hac vice)
[e-mail]
Mitchell L. Stoltz (D.C. Bar No. 978149)
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
David Halperin (D.C. Bar No. 426078)
[e-mail]
1530 P Street NW 2nd Floor
Washington, DC 20005
Telephone: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

26