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

Filing 220

MOTION for Telephone Conferenceof Plaintiffs' Request for a Telephonic Status Conference by AMERICAN SOCIETY FOR TESTING AND MATERIALS, AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC., NATIONAL FIRE PROTECTION ASSOCIATION, INC. (Fee, J.) Modified event on 6/2/2020 (ztd).

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’ REQUEST FOR A TELEPHONIC STATUS CONFERENCE
Plaintiffs American Society for Testing and Materials d/b/a ASTM International
(“ASTM”), National Fire Protection Association, Inc. (“NFPA”), and American Society of
Heating, Refrigerating, and Air Conditioning Engineers (“ASHRAE”) (collectively, “Plaintiffs”)
respectfully request a telephonic status conference to resolve scheduling issues going forward.
In particular, the parties have a dispute whether it is authorized or appropriate for Defendant
Public.Resource.Org (“PRO”) to file a new summary judgment motion—before the Court
resolves the pending summary judgment motions, and outside the deadlines set by this Court and
the scope of remand from the D.C. Circuit.
BACKGROUND
The parties have fully briefed cross-motions for summary judgment on the question that
the D.C. Circuit remanded for this Court to decide: whether the fair use defense excuses PRO’s
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wholesale copying of the entirety of Plaintiffs’ published standards, including extensive sections
of the same that, even following a governmental body’s incorporation by reference, do not
impose any legal obligations. See Dkt. 198 (Plaintiffs’ motion for summary judgment); Dkt. 202
(PRO motion for summary judgment).
On April 27, 2020, the Supreme Court issued its decision in Georgia v.
Public.Resource.Org, Inc., 140 S. Ct. 1498 (2020), holding that under the “government edicts
doctrine,” the State of Georgia could not obtain copyright protection for annotations to its
official code created by a state legislative body. The Court explained that the government edicts
doctrine is “a straightforward rule based on the identity of the author,” id. at 1506, in that case,
the State. The Court made it clear that the doctrine does not apply to “works created by . . .
private parties[] who lack the authority to make or interpret the law.” Id. at 1507.
Later that same day, April 27, Plaintiffs proposed to PRO that the parties stipulate to file
supplemental briefs regarding the impact, if any, of Georgia v. PRO on the parties’ pending
summary judgment motions.
On May 6, PRO responded that, while it agreed the parties should file supplemental
briefs regarding the impact of Georgia v. PRO on the pending motions, PRO also plans to rely
on that case to file a new and separate summary judgment motion, asking the Court to revisit the
question whether Plaintiffs’ works lose their copyright protection upon incorporation by
reference (the “Proposed Motion”).
Plaintiffs believe that it is not appropriate for PRO to file the Proposed Motion. Plaintiffs
told PRO that the parties should include in their supplemental briefs their respective positions on
whether PRO should be allowed to file the Proposed Motion, before the Court resolves the
pending fair use motions. PRO responded that it intended to move forward with the Proposed

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Motion, i.e., that it would not have the parties’ supplemental briefs on Georgia v. PRO address
the question whether it is proper for PRO to proceed with the Proposed Motion.
REQUESTED RELIEF
While both parties agree it is appropriate to file supplemental briefs regarding the
relevance of Georgia v. PRO to the pending motions, the parties are at an impasse whether it is
appropriate for PRO to file its Proposed Motion, before the Court resolves the pending motions.
Plaintiffs believe that the Proposed Motion would be untimely and unauthorized. On
May 17, 2019, the Court ordered PRO to file its summary judgment motion by no later than
November 8, 2019. See May 17, 2019 Minute Order. Given that the Court set a deadline for
filing summary judgment motions, PRO should have to obtain leave of Court before putting
another summary judgment motion on file. See Shekoyan v. Sibley Int’l, 409 F.3d 414, 424–25
(D.C. Cir. 2005) (affirming denial of motion to allow plaintiff to file a motion for summary
judgment months after the deadline for filing dispositive motions). Moreover, the Proposed
Motion is outside the scope of the D.C. Circuit’s remand, which was to consider the fair use
defense. Dkt. 195 at 3; accord Dkt. 202-2 at 17 (PRO arguing that “The Court of Appeals . . .
Reserved the Question of Enforceability of Copyright in the Law, and Remanded for a Fuller
Fair Use Analysis”).
PRO’s position that its Proposed Motion should displace the pending fair use motions is
particularly ironic, because PRO opposed Plaintiffs’ request, made after the Supreme Court
granted cert in Georgia v. PRO, to stay the fair use briefing. Plaintiffs requested the stay
precisely to avoid a situation in which PRO would argue that the Supreme Court’s ultimate
decision would “require yet another round of briefing.” Dkt. 194 at 3. PRO objected to a stay,
arguing that the Court should decide the question of fair use first. Dkt. 195 at 4 (“If the fair use

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or ownership grounds do not conclude this case in Public Resource’s favor, this Court will be
able to apply the decision in the Georgia case to revisit the more fundamental issues of
copyrightability of the standards as laws.”). This Court denied Plaintiffs’ motion for a stay.
Sept. 23, 2019 Minute Order. Having successfully opposed a stay based on the argument that the
Court should exhaust fair use before turning to issues of copyrightability (which, as noted below,
are not on remand and remain fully briefed before the D.C. Circuit), PRO should not now be
allowed to reverse course.
PRO requested that Plaintiffs include their meet-and-confer position, which is attached to
this filing as Exhibit A. Respectfully, PRO’s suggestion that the parties continue to meet-andconfer makes no sense. Plaintiffs believe it is improper for PRO to file the Proposed Motion
before the Court resolves the pending motions. PRO disagrees, and has made clear it is going to
go forward preparing and filing the Proposed Motion. Having the parties continue to meet-andconfer guarantees that PRO will file the Proposed Motion, at which point the parties will be right
back before the Court addressing whether Plaintiffs will be forced to the time and expense of
responding to a new summary judgment motion before the current motions are resolved.
For these reasons, Plaintiffs respectfully request that the Court either (1) hold a status
conference (by telephone) to set a schedule for next steps, or (2) order the parties to file
supplemental briefs addressing Georgia v. PRO’s impact on the pending motions and whether it
is appropriate for PRO to file the Proposed Motion.
Dated: June 1, 2020

Respectfully submitted,
/s/ J. Kevin Fee
J. Kevin Fee (D.C. Bar: 494016)
Jane W. Wise (D.C. Bar: 1027769)
Morgan, Lewis & Bockius LLP
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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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CERTIFICATE OF SERVICE
I hereby certify that on June 1, 2020 a true and correct copy of the foregoing document
was served via CM/ECF upon all counsel of record.

/s/ Jane W. Wise__
Jane W. Wise

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