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 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]

Defendant-Counterclaimant Public.Resource.Org, Inc. (“Public Resource”) hereby
submits the following objections to evidence on which Plaintiffs rely in their combined
memorandum of law in 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.
Public Resource incorporates by reference here its earlier objections (Dkt. 121-4) to the
evidence that Plaintiffs submitted on their first motion for summary judgment and its objections
(Dkt. 204-2) in opposition to Plaintiffs’ second motion for summary judgment and for a permanent
injunction.
I.

OBJECTIONS TO THE DECLARATION OF THOMAS B. O’BRIEN, JR.

Declaration of Thomas B. O’Brien, Jr.
5. As part of my role as General Counsel, I
would expect to be made aware of any
challenge to ASTM’s copyright ownership in
the standards it develops and publishes.

Defendant-Counterclaimant Public
Resource’s Objections
FRE 403 Prejudice. The question of ASTM’s
copyright ownership over the standards is at
issue in this case, and testimony that this
witness would hypothetically be “made
aware of any challenge to ASTM’s copyright
ownership in the standards it develops and
publishes” is improper argument; moreover,
the failure of the witness to distinguish
between the ASTM standards at issue in this
case and the larger number of ASTM
standards that are not at issue is confusing
and prejudicial.
FRE 602 Lack of Personal Knowledge. The
witness has not established any personal
knowledge about this subject, including any
personal knowledge of whether ASTM
actually “develops” standards itself.
FRE 701 Improper legal opinion: This states
an improper legal conclusion of ownership,
which is especially troublesome in this case
where the Plaintiffs’ evidence showed a lack

Declaration of Thomas B. O’Brien, Jr.

Defendant-Counterclaimant Public
Resource’s Objections
of ownership, which caused Plaintiffs to
abandon their first two theories of copyright
ownership (works made for hire, then
ownership by assignment) in favor of a third
theory of ownership, namely joint authorship
of joint works, where the copyright
registrations contradict the theory of
ownership.
FRE 1002 Secondary Evidence. The witness
has not provided the original copyright
registrations. Public Resource also objects
under FRE 1006 because this assertion is an
improper summary.

6. I am not aware of any individual or other
person who claims to own any copyright
interest in any ASTM standard.

FRE 403 Prejudice. The question of ASTM’s
copyright ownership over the standards is at
issue in this case, and testimony that this
witness would hypothetically be “aware of
any individual or other person who claims to
own any copyright interest in any ASTM
standard” is improper argument; moreover,
the failure of the witness to distinguish
between the ASTM standards at issue in this
case and the larger number of ASTM
standards that are not at issue is confusing
and prejudicial.
FRE 701 Improper legal opinion: This states
an improper legal conclusion of ownership,
which is especially troublesome in this case
where the Plaintiffs’ evidence showed a lack
of ownership, which caused Plaintiffs to
abandon their first two theories of copyright
ownership (works made for hire, then
ownership by assignment) in favor of a third
theory of ownership, namely joint authorship
of joint works, where the copyright
registrations contradict the theory of
ownership.
FRE 1002 Secondary Evidence. The witness
has not provided the original copyright

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Declaration of Thomas B. O’Brien, Jr.

Defendant-Counterclaimant Public
Resource’s Objections
registrations. Public Resource also objects
under FRE 1006 because this assertion is an
improper summary.

7. Since ASTM filed this lawsuit in 2013, I am
not aware of any participant or volunteer in
ASTM’s standards development committees for
any of the standards at issue in this lawsuit who
has contacted ASTM to assert copyright
ownership or otherwise challenge ASTM’s
copyright interest.

FRE 403 Prejudice. The question of ASTM’s
copyright ownership over the standards is at
issue in this case, and testimony that this
witness would hypothetically be “aware of
any participant or volunteer in ASTM’s
standards development committees” “who
has contacted ASTM to assert copyright
ownership or otherwise challenge ASTM’s
copyright interest” is improper argument.
FRE 701 Improper legal opinion: This states
an improper legal conclusion of ownership,
which is especially troublesome in this case
where the Plaintiffs’ evidence showed a lack
of ownership, which caused Plaintiffs to
abandon their first two theories of copyright
ownership (works made for hire, then
ownership by assignment) in favor of a third
theory of ownership, namely joint authorship
of joint works, where the copyright
registrations contradict the theory of
ownership.
FRE 1002 Secondary Evidence. The witness
has not provided the original copyright
registrations. Public Resource also objects
under FRE 1006 because this assertion is an
improper summary.

9. ASTM makes its standards available through
third-party subscription services such as
Techstreet and IHS Engineering. These services
include full-text searching and navigation of
ASTM’s standards.

3

FRE 602 Lack of Personal Knowledge. The
witness has not established any personal
knowledge about this subject.
FRE 701/2 Improper Opinion and
Unqualified Expert Opinion. The
witness has not been qualified as an expert
and therefore cannot testify as to facts
beyond the witness’s personal knowledge.

Declaration of Thomas B. O’Brien, Jr.

Defendant-Counterclaimant Public
Resource’s Objections
This assertion constitutes an improper lay
opinion.
FRE 1002 Secondary Evidence. The witness
has not provided original documents
showing which ASTM standards are
available through third party subscription
services, or documentary evidence of the
capabilities of these third party services.

10. Additionally, ASTM’s own subscription
service, ASTM Compass, allows users to
access any of ASTM’s library of 12,000+
standards. Standards available through ASTM
Compass are full-text searchable.

FRE 602 Lack of Personal Knowledge. The
witness has not established any personal
knowledge about this subject.
FRE 701/2 Improper Opinion and
Unqualified Expert Opinion. The
witness has not been qualified as an expert
and therefore cannot testify as to facts
beyond the witness’s personal knowledge.
This assertion constitutes an improper lay
opinion.
FRE 1002 Secondary Evidence. The witness
has not provided original documents
showing which ASTM standards are
available its subscription service, or
documentary evidence of the capabilities of
that subscriptions service.

II.

OBJECTIONS TO THE DECLARATION OF JANE W. WISE

Declaration of Jane W. Wise

Defendant-Counterclaimant
Public Resource’s Objections

2. Attached as Exhibit 174 are true and correct
copies of excerpts from Defendants’ responses
to interrogatories served by ASTM. Defendant
did not serve supplemented responses to these
interrogatories

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Declaration of Jane W. Wise

Defendant-Counterclaimant
Public Resource’s Objections

3. Attached as Exhibit 175 is a table of the
NFPA standards at issue in this case. The table
includes a column listing the regulations or laws
that PRO’s Exhibit 91 identified as
incorporating each standard, as well as Exhibit
91’s “text of incorporation” column. In the
column labeled “NFPA’s response,” Plaintiffs
have analyzed the federal regulation (if any) that
PRO’s Exhibit 91 identifies.
4. Attached as Exhibit 176 is a table of the
ASTM standards at issue in this case with the
quoted text from PRO’s Exhibit 90 where PRO
identified the text of the C.F.R. it asserts
incorporate a particular ASTM standard by
reference. Where applicable, the attached table
includes the year that the identified C.F.R.
provision was amended, repealed, and/or
revised.
5. Attached as Exhibit 177 is a true and correct
copy of a collection of printouts of the Internet
Archive HTML versions of ASTM standards at
issue, printed on December 6, 2019, that
continue to display the ASTM logo, from the
following websites:
https://ia600607.us.archive.org/2/items/gov.law.
astm.a572.1979/astm.a572.1979.html;
https://ia800905.us.archive.org/4/items/gov.law.
astm.c518.1991/astm.c518.1991.html;
https://ia800700.us.archive.org/20/items/gov.law
.astm.d86.2007/astm.d86.2007.html;
https://ia801309.us.archive.org/27/items/gov.law
.astm.d129.1995/astm.d129.1995.html;
https://ia601606.us.archive.org/22/items/gov.law
.astm.d975.2007/astm.d975.2007.html;
https://ia800306.us.archive.org/10/items/gov.law
.astm.d1688.1995/astm.d1688.1995.html;
https://ia801307.us.archive.org/30/items/gov.law
.astm.d2015.1996/astm.d2015.1996.html;
https://ia802706.us.archive.org/10/items/gov.law
.astm.d2597.1994/astm.d2597.1994.html;
https://ia600608.us.archive.org/10/items/gov.law

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FRE 1006 improper summary. Plaintiffs
state that this is a “table of the ASTM
standards at issue in this case,” but this
exhibit lists only 192 of the 232 ASTM
standards at issue in this case. Plaintiffs
do not explain why they have omitted 40
of the standards at issue.

Declaration of Jane W. Wise

Defendant-Counterclaimant
Public Resource’s Objections

.astm.d3120.1996/astm.d3120.1996.html;
https://ia802705.us.archive.org/11/items/gov.law
.astm.d4891.1989/astm.d4891.1989.html; and
https://ia600602.us.archive.org/22/items/gov.law
.astm.d5257.1997/astm.d5257.1997.html.
6. Attached as Exhibit 178 is a true and correct
copy of 46 C.F.R. § 56.01-1 (1997).
7. Attached as Exhibit 179 is a true and correct
copy of excerpts from the 1978 Annual Book of
ASTM Standards Part 4.

FRE 402 Relevance and FRE 701
Improper Opinion Testimony. To the
extent that the Plaintiffs rely upon the
1978 Annual Book of ASTM Standards
Part 4 to suggest their ownership of
copyright, this states an improper legal
conclusion of ownership, particularly here
where Public Resource has contested that
most of ASTM’s copyright registrations
were for mere compilations, not
registrations over the standards
themselves. Notably, Plaintiffs abandoned
their first two theories of copyright
ownership (works made for hire, then
ownership by assignment) in favor of a
third theory of ownership, namely joint
authorship of joint works, where the
copyright registrations contradict the
theory of ownership.

8. Attached as Exhibit 180 is a true and correct
copy of a screenshot taken on December 20,
2019 from the website:
https://catalog.nfpa.org/NFPA-30-FlammableandCombustible-Liquids-CodeP1164.aspx?order_src=D747&gclid=Cj0KCQiA
_rfvBRCP ARIsANlV66OZJtB8z9nAk1tGfWSauF2F0D1jinoH2nqQ58ZXi
1YjKOIDOLbs jkaAqZFEALw_wcB.
9. Attached as Attached as Exhibit 181 is a true
and correct copy of an email sent by Kelly
Klaus, counsel for NFPA, to Corynne McSherry
and Andrew Bridges, dated August 3, 2018

6

FRE 104(b), 401, 402. The purported
relevance of this document depends on
facts that ASTM has failed to establish in
this declaration.

Declaration of Jane W. Wise

Defendant-Counterclaimant
Public Resource’s Objections
FRE 602 Lack of Personal Knowledge.
The witness has not established any
personal knowledge about this subject.
FRE 802 Hearsay. ASTM has failed to
disclose the identity of any custodian of
records who would be able to satisfy the
requirements of the business records
exception to hearsay for this document.
FRE 901 Lack of Authentication. ASTM
has failed to disclose the identity of any
custodian of records who would be able to
authenticate this document.

10. Attached as Exhibit 182 is a true and
correct copy of a screenshot taken on December
19, 2019 from the website:
https://law.resource.org/pub/us/cfr/manifest.us.h
tml.
11. Attached as Exhibit 183 is a true and
correct copy of Exhibit 3 to the deposition of
Mia Marvelli.
12. Attached as Exhibit 184 is a true and
correct copy of Exhibit 7 to the deposition of
Mia Marvelli.
13. Attached as Exhibit 185 is a true and
correct copy of 40 C.F.R. § 80.47 (2017).
14. Attached as Exhibit 186 is a table of the
ASHRAE standards at issue in this case with the
quoted text from PRO’s Exhibit 89 where PRO
identified the text of the C.F.R. it asserts
incorporate a particular ASHRAE standard by
reference. In the column labeled “ASHRAE’s
response,” Plaintiffs have analyzed the federal
regulation (if any) that PRO’s Exhibit 89
identifies.

7

FRE 1006 improper summary. Plaintiffs
list an incorrect C.F.R. citation for
ASHRAE 90.1 (2010).

Dated: January 16, 2020

Respectfully submitted,
/s/ Andrew P. Bridges
Andrew P. Bridges (admitted)
[e-mail]
Matthew B. Becker (admitted pro hac vice)
[e-mail]
FENWICK & WEST LLP
801 California Street
Mountain View, CA 94041
Telephone: [phone]
Facsimile: [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]
Facsimile: [phone]
David Halperin (D.C. Bar No. 426078)
[e-mail]
1530 P Street NW
CSRL 2nd Floor
Washington, DC 20005
Telephone: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

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