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

Filing 222

RESPONSE re 220 MOTION for Telephone Conference [Public.Resource.Org's Response to Plaintiffs' Request for a Telephonic Status Conference; Citation of Supplemental Authorities on Pending Motions] filed by PUBLIC.RESOURCE.ORG, INC.. (Attachments: # 1 Exhibit A, # 2 Exhibit B)(Bridges, Andrew)

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.ORG’S RESPONSE TO PLAINTIFFS’
REQUEST FOR A TELEPHONIC STATUS CONFERENCE;
CITATION OF SUPPLEMENTAL AUTHORITIES ON PENDING MOTIONS

INTRODUCTION
Public Resource does not oppose the plaintiffs’ request for a status conference. It did not
join the request because it believed that there was no need to burden the Court with a status
conference, for two reasons. First, both sides agree it would be appropriate to supplement the
pending motions to address the effect of Georgia v. Public.Resource.Org, Inc., 590 U.S. ____
(2020), available at https://www.supremecourt.gov/opinions/19pdf/18-1150_new_d18e.pdf on
the motions. Second, if Plaintiffs disagree with Public Resource’s intent to file a new summary
judgment motion on copyrightability and enforceability after clear guidance from the Supreme
Court, they can make that argument in opposition to that motion but should not be allowed to
prevent Public Resource from presenting the motion at all.
If the Court conducts a telephonic status conference, Public Resource suggests that it
should do so for both related cases, including American Educational Research Association et al.
v. Public.Resource.Org, Inc., case no. 1:14-cv-00857-TSC.
In addition to the status conference issue, Public Resource notes below several
supplemental authorities that are relevant as the Court considers next steps in the case.
I.

THE COURT SHOULD NOT BLOCK PUBLIC RESOURCE FROM FILING AN
ADDITIONAL MOTION FOR SUMMARY JUDGMENT, WHICH WILL
PROVIDE A COMPLETE RECORD FOR APPEAL.
Plaintiffs seek a status conference apparently to obtain an informal order preventing Public

Resource from bringing an additional summary judgment motion on issues the Supreme Court has
now clarified. In other words, they urge the Court to proceed as if the Supreme Court had not
offered clear guidance on core copyrightability and enforceability questions in this case. As Public
Resource also explains below, another district court has shown how the Supreme Court’s decision
provides guidance in another case involving codes. The guidance did not exist before. It if it had

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existed, it would have influenced the decisions of both this Court and the Court of Appeals. But
the guidance now exists, and it makes little sense for the Court and the parties to ignore it.
Plaintiffs’ effort to prevent a further motion by Public Resource to apply the Supreme Court
decision to the copyrightability and enforceability issues here rests on a specious “gotcha”
argument, namely that Public Resource had opposed a stay pending the outcome of Georgia v.
Public.Resource.Org. But in its opposition to the plaintiffs’ motion for stay, Public Resource
simply made the obvious point that “[n]o party to this case can predict with any certainty whether
the Supreme Court’s consideration of Georgia et al. v. Public.Resource.Org, No. 18-1150, will
influence the outcome of this case.” As Public Resource explained, fair use was not before the
Supreme Court in Georgia v. Public.Resource.Org. Id. at 3.
Public Resource did not anticipate that, in tension with the D.C. Circuit’s decision in this
case, the Supreme Court would stress the importance of a bright-line rule on copyright
enforceability, in contrast to the uncertainty of the fair use doctrine and the chilling effect of that
uncertainty on lawful uses of legal materials. The Court stated: “Some affected parties might be
willing to roll the dice with a potential fair use defense. But that defense, designed to accommodate
First Amendment concerns, is notoriously fact sensitive and often cannot be resolved without a
trial. Cf. Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U. S. 539, 552, 560–561
(1985). The less bold among us would have to think twice before using official legal works that
illuminate the law we are all presumed to know and understand. Thankfully, there is a clear path
forward that avoids these concerns—the one we are already on.” Georgia v. Public.Resource.Org,
slip op. at 18.

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This Court should similarly pursue a possible clear path to resolution of these two lawsuits,
and the Supreme Court’s guidance justifies a departure from the direction by the Court of Appeals
to focus on fair use first.
The plaintiffs also invoke a May 17, 2019, scheduling order (which the Court amended on May
21, 2019), which set out a schedule for briefing the cross-motions that the parties brought. But the
Court’s previous order simply set a schedule for the motions the parties envisioned, and which the
parties filed according to that schedule. The order regulated a single set of cross-motions and did
not set a deadline for all summary judgment motions. Instead, LcvR 7(l) governs the timing of
dispositive motions, including summary judgment motions. It states: “A dispositive motion in a
civil action shall be filed sufficiently in advance of the pretrial conference that it may be fully
briefed and ruled on before the conference.” There is no indication that a pretrial conference will
occur soon, and Public Resource’s motion will not put pressure on the schedule.
Public Resource has always made clear it reserves its right to assert the broader challenges
to the plaintiffs’ case, including copyrightability or enforceability of copyrights under the
government edicts doctrine and merger doctrine, in addition to the fair use and ownership defect
issues that it raised in its pending motion and opposition to the plaintiffs’ pending motion. See Dkt.
202-2 at 19 n.6. The D.C. Circuit did not reach those broader issues. Nor did it retain jurisdiction
over those issues while this Court focuses on fair use. The D.C. Circuit simply vacated this Court’s
injunction and reversed this Court’s grant of partial summary judgment against Public Resource.
All issues remain alive.
Public Resource believes that, with the Supreme Court’s important guidance on a brightline test here as avoiding the uncertainty of fair use and its chilling effect, this Court should address

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all the major issues in the case, avoiding a possible pinball effect of the case being appealed and
then remanded again. Accordingly, Public Resource proposes the following:
a.

Both sides file supplements to the existing motions, in no more than ten
pages each, within 14 days of the Court’s order.

b.

The Court sets a briefing for Public Resource’s new motion for summary
judgment as follows: opening brief within 30 days of the Court’s order, the
plaintiffs file their opposition within 30 days after Public Resource files its
opening brief, and Public Resource files its reply brief within 15 days after
the plaintiffs file their opposition.

II.

CITATION OF SUPPLEMENTAL AUTHORITIES ON PENDING MOTIONS
Public Resource formally furnishes the Court the following supplemental authorities:
1.

Georgia v. Public.Resource.Org, Inc., 590 U.S. ____ (Apr. 27, 2020), available at

https://www.supremecourt.gov/opinions/19pdf/18-1150_new_d18e.pdf. The parties all agree this
deserves supplemental briefing.
2.

International Code Council, Inc. v. Upcodes, Inc., No. 17 Civ 6261 VM (S.D.N.Y.

May 27, 2020) (Exhibit A to this response). That decision last week by the Southern District of
New York ruled that (a) a standards development organization’s codes as adopted by governments
are in the public domain under the government edicts doctrine; (b) the merger doctrine applies also
to circumstances after an initial creation of a work, and a court should consider whether previously
copyrighted language has become essential to the expression of, or integrated with, a legal
conception; and (c) fair use applies to the posting of codes as adopted by government. That
decision also noted that the D.C. Circuit’s discussion of fair use in this case bore upon
consideration of the public domain analysis in that case.

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That decision relates to all the questions in this case other than ownership. It pertains to the
fair use issues throughout the pending summary judgment motion (see Dkt. 202-2) and the
copyrightability/enforceability issues that Public Resource preserved in Dkt 202-2 at 19 n. 6.
3.

Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., No. 18-56253 (9th Cir. May 27,

2020) (Exhibit B to this response). In this case, the Ninth Circuit ruled that section 411(b)(2) of
the Copyright Act requires a court to refer questions about proper registration to the Copyright
Office where an application contained incorrect information:
[O]nce a defendant alleges that (1) a plaintiff’s certificate of registration
contains inaccurate information; (2) ‘the inaccurate information was
included on the application for copyright registration’; and (3) the
inaccurate information was included on the application ‘with knowledge
that it was inaccurate,’ a district court is then required to submit a request
to the Register of Copyrights ‘to advise the court whether the inaccurate
information, if known, would have caused [it] to refuse registration.’ Id.
§ 411(b)(1)–(2). In other words, courts may not consider in the first
instance whether the Register of Copyrights would have refused
registration due to the inclusion of known inaccuracies in a registration
application.
Slip op. at 2-3 (emphasis added).
As the Court is aware, Public Resource has challenged the plaintiffs’ ownership of the
copyrights and proper registrations, and the record contains supporting evidence. (Dkt. 202-2 at
44-45). The plaintiffs initially claimed that they had registered their works as “works made for
hire,” and they claimed their own “authorship” of the works on that basis, which requires that they
had employed the creators or had valid “work made for hire” agreements with them. See 17 U.S.C.
§ 101 (definition of “work made for hire”). But the persons who created the works—committees
of thousands of volunteers—were not employees of the plaintiffs, and they did not provide written
work-made-for-hire agreements, conveying “authorship” status on the plaintiffs.1 When the
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Public Resource recognizes that the plaintiffs have claimed, by hearsay testimony and without
documentation, that someone at the Copyright Office advised one of the organizations to identify
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plaintiffs realized that the works were not “works made for hire,” they initially asserted that their
ownership was based on assignments from the volunteers, and they later claimed also to be joint
authors of joint works. Under either of the plaintiffs’ fallback theories of ownership, their
registrations were incorrect. The registration applications did not disclose assignments or disclose
co-authors. As the Copyright Office states, “If the work qualifies as a joint work, the applicant
should identify each author who contributed copyrightable authorship to that work.” Copyright
Office of the United States, Compendium of U.S. Copyright Office Practices section 503.2 (2017).
The plaintiffs’ failure to disclose all assignors and joint authors means that the registrations’
records of authorship are empty. Moreover, without full information in the applications, the
Copyright Office could not examine the interplay between joint authorship and U.S. Government
authorship under Section 105 of the Copyright Act, 17 U.S.C. § 105, which may establish the
works as uncopyrightable joint U.S. Government works, an issue of first impression.
Plaintiffs’ copyright claims depend on ownership of properly registered copyrights. Public
Resource has offered credible evidence—including Plaintiffs’ own statements—that those
registrations were inaccurate. Section 411(b)(2) of the Copyright Act and the recent Unicolors
decision establish conclusively that the Court cannot grant summary judgment to Plaintiffs without
referring these thorny “proper registration” questions to the Copyright Office.

the works as “works made for hire.” Whether that unsupported claim would affect the Copyright
Office’s analysis is solely for the Copyright Office to determine. See Palmer/Kane LLC v. Rosen
Book Works LLC, 188 F. Supp. 3d 347, 351-52 (S.D.N.Y. 2016) (rejecting plaintiff’s excuse that
the Copyright Office had advised her to complete an application as she did, noting that she had no
documentary evidence of that fact and that, in any event the statutory factors required referral to
the Copyright Office).
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CONCLUSION
Public Resource deserves summary judgment for at least three different reasons, and
possibly four:
1.

The standards at issue have become government edicts by government

incorporation into law, and therefore the plaintiffs cannot enforce copyright in them against Public
Resource, as Georgia v. Public.Resource.Org and International Code Council v. Upcodes
illuminate.
2.

The standards and the law have merged in such a way that one cannot express the

law without using the words of the standards, and the merger doctrine thus precludes the plaintiffs
from enforcing their claimed copyrights against Public Resource, as International Code Counsel
v. Upcodes illuminates.
3.

Public Resource’s use of the standards is fair use, outside the scope of any copyright

rights that the plaintiffs claim, as Georgia v. Public.Resource.Org and International Code Council
v. Upcodes illuminate.
4.

The plaintiffs’ copyright registrations were not proper because the applications

failed to include information that would have caused the Copyright Office to deny registration.
(Public Resource recognizes that the Copyright Office, and not the Court, needs to address this
issue before the Court can determine the plaintiffs’ motion for summary judgment under Section
411(b)(2) and Unicolors v. H&M Hennes & Mauritz.)
Because it is likely that one side or the other will appeal any forthcoming decisions by the
Court, it will serve judicial economy and the interest of justice for the Court to address all these
issues before such appeal. Accordingly, the Court should permit the parties to supplement the
pending motions and decline to block Public Resource from filing an additional summary
judgment motion on copyrightability/enforceability and the merger doctrine. For the reasons just
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discussed, Public Resource also believes that this Court should refer the question of whether the
plaintiffs’ copyright registrations were proper to the Copyright Office as section 411(b)(2)
requires.

Dated: June 5, 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.

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