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

Filing 225

SUPPLEMENTAL MEMORANDUM to re 198 MOTION for Summary Judgment MOTION for Permanent Injunction, 202 MOTION for Summary Judgment Pursuant to July 9, 2020 Minute Order filed by AMERICAN SOCIETY FOR TESTING AND MATERIALS, AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC., NATIONAL FIRE PROTECTION ASSOCIATION, INC.. (Fee, J.)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
AMERICAN SOCIETY FOR TESTING
AND MATERIALS d/b/a ASTM
INTERNATIONAL;
NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and
AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR
CONDITIONING ENGINEERS,

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

Plaintiffs/
Counter-Defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/
Counter-Plaintiff.
PLAINTIFFS’ SUPPLEMENTAL BRIEF REGARDING GEORGIA v.
PUBLIC.RESOURCE.ORG, INC.
Pursuant to this Court’s July 9, 2020 Minute Order, Plaintiffs respectfully submit this
supplemental brief “regarding the impact, if any,” of Georgia v. Public.Resource.Org, Inc., 140
S. Ct. 1498 (2020), “on the parties’ pending summary judgment motions.” July 9, 2020 Minute
Order; see also Pls’ Second Mot. Summ. J., Dkt. 198; Public.Resource.Org, Inc. (“PRO”)
Second Mot. for Summ. J., Dkt. 202.
INTRODUCTION
Despite PRO having urged adoption of a much broader rule, the Supreme Court in
Georgia issued a narrow decision that does not impact the pending summary judgment motions.
Specifically, the Supreme Court held only that, because the annotations to Georgia’s official
code “are authored by an arm of the legislature in the course of its legislative duties, the
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government edicts doctrine puts them outside the reach of copyright protection.” Georgia, 140
S. Ct. at 1504 (emphasis added). Plaintiffs are private organizations, not judges or legislators,
and there is no evidence any judge or legislator authored any part of any of the works in this
case. A fortiori, Georgia does not affect the pending motions regarding the copyright question
the D.C. Circuit remanded to this Court: whether PRO’s copying of the entirety of Plaintiffs’
published standards qualifies for the fair use defense.
Because Georgia does not impact the pending motions, PRO may use its supplemental
brief to raise arguments beyond Georgia—as PRO has done previously. See PRO’s Response to
Pls’ Request for a Telephonic Status Conference; Citation of Suppl. Authorities on Pending
Mots. for Summ. J., Dkt. 222, at 4-8 (“PRO Response”) (requesting new motion practice on
multiple issues other than fair use). This Court has held there are to be no more motions until
“after a ruling on the current motions and anticipated supplemental briefs.” July 9, 2020 Minute
Order. Plaintiffs respectfully urge the Court to disregard whatever extraneous arguments PRO
raises at this juncture and disallow PRO from expanding the scope of the D.C. Circuit’s remand
and further delaying these proceedings.
ARGUMENT
I.

GEORGIA HAS NO BEARING ON THE FAIR USE INQUIRY THE D.C. CIRCUIT REMANDED
FOR THIS COURT TO RESOLVE
A.

The Georgia Decision

The dispute in Georgia arose out of PRO’s copying and distribution of the “Official Code
of Georgia Annotated” (“OCGA”). The OCGA included both the text of state statutes and
annotations appearing below each statutory section that “generally include summaries of judicial
decisions applying a given provision, summaries of any pertinent opinions of the state attorney
general, and a list of related law review articles and similar reference materials,” as well as
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“editor’s notes” regarding the origin of statutory language. Georgia, 140 S. Ct. at 1504. Georgia
sued PRO for infringing the State’s copyright in the annotations portion of the OCGA.
The annotations were the product of Georgia’s “Code Revision Commission,” an arm of
the state legislature. A majority of the Commission’s members are required to be state
legislators, and the state legislature funds the Commission and staffs it with employees of the
Office of Legislative Counsel. Id. The Commission contracts with Matthew Bender & Co. (part
of LexisNexis) to prepare the annotations “in the first instance . . . pursuant to a work-for-hire
agreement.” Id. at 1505. Accordingly, the Commission is deemed “the sole ‘author’ of the
work” under the Copyright Act. Id. at 1508; see also id. at 1505 (noting that the contract
expressly provides that the copyright in the OCGA “vests exclusively in the State of Georgia,
acting through the Commission” (quotations omitted)). Additionally, “the Commission
supervises [Matthew Bender & Co.’s] work and specifies what the annotations must include in
exacting detail.” Id. at 1505. The Commission presents the statutory text and annotations to the
legislature each year, and the legislature votes to “enact” the text, “merge” the text and
annotations, and “publish” the final product as the OCGA. Id. at 1504-05 (quotations and
alterations omitted).
PRO urged the Supreme Court to extend the government edicts doctrine to any work
“ultimately adopted by or published under the authority of the State, thus conveying the State’s
legal authority.” PRO Supreme Court Merits Br. 44; see also id. at 35. PRO’s objective in
asking for such a broad rule was obvious: to try to have the issues in this lawsuit, which involve
standards authored by private parties, resolved in a case where the legislature authored the works
in question.

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The Supreme Court did not adopt PRO’s broad rule. Instead, the Court held that the
proper legal framework is authorship—a principle firmly rooted in precedent:
Over a century ago, we recognized a limitation on copyright protection for certain
government work product, rooted in the Copyright Act’s “authorship”
requirement. Under what has been dubbed the government edicts doctrine,
officials empowered to speak with the force of law cannot be the authors of—and
therefore cannot copyright—the works they create in the course of their official
duties.
Georgia, 140 S. Ct. at 1504. The Court, in Banks v. Manchester, 128 U.S. 244 (1888), had held
that the government edicts doctrine applied to materials created by judges in the course of their
official duties. In Georgia, the Court held that the doctrine also applies to works created by
legislators in the course of their official duties.
The Court summarized both the legal rule it adopted regarding authorship, and the
application of that rule in the case before it in the following passage:
A careful examination of our government edicts precedents reveals a
straightforward rule based on the identity of the author. Under the government
edicts doctrine, judges—and, we now confirm, legislators—may not be
considered the “authors” of the works they produce in the course of their official
duties as judges and legislators. That rule applies regardless of whether a given
material carries the force of law. And it applies to the annotations here because
they are authored by an arm of the legislature in the course of its official duties.
Georgia, 140 S. Ct. at 1506. The Court further explained that the “straightforward rule” of the
government edicts doctrine “does not apply . . . to works created by government officials (or
private parties) who lack the authority to make or interpret the law.” Id. at 1507 (emphasis
added).
B.

Georgia Does Not Affect The Summary Judgment Motions Now Before This
Court

This is the case for three reasons:
First, the Supreme Court made clear that the application of the government edicts
doctrine depends entirely “on the identity of the author,” specifically, whether the author is a
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judge or legislator producing a work in the course of their official duties as a judge or legislator.
Georgia, 140 S. Ct. at 1506 (emphasis added). The Court was clear that the doctrine “does not
apply” to “private parties.” Id. at 1507. It is undisputed that the Plaintiffs in this case are private
parties, not judges or legislators.
PRO asserted in its motion for summary judgment that some (unspecified) documents
purportedly show that some (unidentified) “federal employees” had some (unexplained)
“involvement” in drafting some (unidentified) standards. PRO’s Combined Opp. to Pls’ Mot. for
Summ. J. and Second Mot. for Summ. J., Dkt. 202-2, at 44. The Supreme Court’s decision in
Georgia does not assist PRO at all with this argument. After years of discovery in this case,
PRO still cannot point to any evidence that any text in any standard was written by any judge or
any legislator—much less any judge or legislator acting in the course of their official duties, as
was at issue in Georgia.
Even if the Court’s analysis extended beyond judges and legislators (which it does not),
PRO’s argument fails for reasons already briefed. As the D.C. Circuit held, PRO’s challenge to
Plaintiffs’ authorship of the standards is both “forfeited” and “meritless.” Am. Soc’y for Testing
& Materials v. Public.Resource.Org, Inc., 896 F.3d 437, 446 (D.C. Cir. 2018) (“ASTM II”).
That ruling is law of the case for the standards on which Plaintiffs’ previously moved. Trout v.
Garrett, 780 F. Supp. 1396, 1425 & n.71 (D.D.C. 1991). And this Court’s reasoning in its prior
decision applies with equal force to the remaining standards: merely citing to the participation of
volunteers or federal government employees in the code development process does not raise a
genuine issue of material fact for trial when PRO has “failed to meet its initial burden” to
introduce evidence “disproving Plaintiffs’ authorship.” Am. Soc’y for Testing & Materials v.
Public.Resource.Org, Inc., 2017 WL 473822, at *7 (D.D.C. Feb. 2, 2017) (“ASTM I”); Roeslin v.

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District of Columbia, 921 F. Supp. 793, 797 (D.D.C. 1995) (finding that, because the copyright
registration listed plaintiff as the author, the “burden is thus on the defendant to establish” that
plaintiff was not the author).
Second, the D.C. Circuit remanded for further consideration of the defense of fair use,
which was not in issue in Georgia. The D.C. Circuit’s remand order was very specific, directing
consideration of whether PRO could establish its affirmative defense of fair use on a standardby-standard basis.1 ASTM II, 896 F.3d at 447. The critical question that the D.C. Circuit
identified for the fair use analysis is whether, for each portion of each standard that PRO copied,
the text is “essential to complying with [a] legal duty,” as compared to just “help[ing] inform
one’s understanding of the law.” Id. at 450 (emphasis added). Georgia does not impact the
question of whether any portion of any standard that PRO copied and distributed is “essential to
complying with [a] legal duty.” On the contrary, Georgia was clear that the applicability of the
government edicts doctrine does not turn on “whether a given material carries the force of law.”
Georgia, 140 S. Ct. at 1506.
PRO has argued that Georgia affects the fair use inquiry because the Court purportedly
laid down “a bright-line rule on copyright enforceability” that takes precedence over the D.C.
Circuit’s decision to address the fair use defense before reaching PRO’s other arguments. PRO
Response 2. As PRO admits, however, “fair use was not before the Supreme Court,” id., and the
Court’s opinion did not establish the rule PRO claims it did.
The Court’s only discussion of fair use came in explaining why government authorship—
and not the legal force of the particular government-authored document—was the touchstone of

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The D.C. Circuit also remanded for consideration of PRO’s trademark fair use defense. It is
undisputed that Georgia has no bearing on PRO’s trademark defense.
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the government edicts doctrine. See Georgia, 140 S. Ct. at 1512-13. Again, where works are
privately authored (as here), the government edicts doctrine has no relevance.2 The discussion
that PRO cites is likewise inapposite. Specifically, the Court observed that:
If everything short of statutes and opinions were copyrightable, then States would
be free to offer a whole range of premium legal works for those who can afford
the extra benefit. A State could monetize its entire suite of legislative history.
With today’s digital tools, States might even launch a subscription or pay-per-law
service.
Id. (emphasis added). As is clear from the opinion, the Court’s concern was with the potential
pitfalls of “a State” owning ancillary materials created by judges or legislators. The Court then
explained how its holding obviated these concerns as well as any need for a fair use analysis with
respect to State-authored works:
Thankfully, there is a clear path forward that avoids these concerns—the one we
are already on. Instead of examining whether given material carries “the force of
law,” we ask only whether the author of the work is a judge or a legislator.
Id. at 1513 (emphasis added).
In sum, Georgia’s discussion of fair use was all in the context of the government edicts
doctrine and the potential for the State claiming ownership over the official works of its judges
and legislators. The discussion has no bearing on the question here, where private parties are
responsible for the creation of the works in suit.
Third, PRO undoubtedly will argue that the Supreme Court’s statement that “[t]he
animating principle behind [the government edicts doctrine] is that no one can own the law,” id.
at 1507, resolves this case. That statement does no such thing. Plaintiffs’ case has never been

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The D.C. Circuit’s opinion, which is the law of this case, instructs that where the underlying
works are created by private parties, the fair use inquiry involves whether the specific text the
defendant copies and distributes is “essential to complying with [a] legal duty,” as compared to
just “help[ing] inform one’s understanding of the law.” ASTM II, 896 F.3d at 450.
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about whether they “own the law.” It is about whether PRO may copy and distribute Plaintiffs’
original works of authorship in their entirety. The Supreme Court made clear in the same
paragraph in which the foregoing statement appears that “[o]ur cases give effect to that principle
in the copyright context through construction of the statutory term ‘author.’” Id. (citation
omitted). In particular, those cases “bar[] the officials responsible for creating the law from
being considered the ‘author[s]’ of ‘whatever work they perform in their capacity’ as
lawmakers.” Id. (quoting Banks, 128 U.S. at 253). Under Georgia, the question for a court
applying the government edicts doctrine is thus simply whether a work is authored by judges or
lawmakers in their official capacities. Plaintiffs’ standards decidedly were not.
II.

THE GEORGIA RULE DOES NOT EXPAND OR PROVIDE CAUSE TO EXPAND, THE SCOPE
OF THE D.C. CIRCUIT’S REMAND
In Georgia’s wake, PRO asserted that the decision provided cause for disregarding the

scope of the D.C. Circuit’s remand because “if [the Supreme Court’s guidance] had existed, it
would have influenced the [prior] decisions of both this Court and the Court of Appeals.” PRO
Response 1-2. PRO argues that Georgia merits reopening questions of copyright enforceability,
the merger doctrine under copyright, and copyright ownership—issues that this Court resolved in
ASTM I and that are not part of the D.C. Circuit’s remand. See id. at 7. For the reasons
explained above—namely, that Georgia turned on the identity of the author—the Supreme
Court’s decision does not change the trajectory of this case.
The D.C. Circuit held that it is “best at this juncture to address only the statutory fair use
issue” and “leave for another day the question of whether the Constitution permits copyright to
persist in works incorporated by reference into law.” ASTM II, 896 F.3d at 447. The D.C.
Circuit did this in part to avoid “the economic consequences that might result from the SDOs
losing copyright” and to avoid “creating a number of sui generis caveats to copyright law for
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incorporated standards.” Id. Accordingly, the D.C. Circuit concluded that “the better course is
to remand the case for the district court to further develop the factual record and weigh the [fair
use] factors as applied to PRO’s use of each standard.” Id. at 448-49. The D.C. Circuit’s
decision sets the scope of remand proceedings in this case. Contrary to PRO’s suggestion,
addressing fair use now, as required by the remand, will not result in a “pinball effect” of appeals
and remands. PRO Response 4. The issues of copyright enforceability, merger, and copyright
ownership remain before the D.C. Circuit and are issues of law for which the record needs no
further factual development.
Given PRO’s demonstrated penchant for trying to expand the issues in this case and these
remand proceedings, PRO likely will use its brief to make arguments and cite cases beyond
Georgia, for the purpose of re-litigating issues already previously decided in this Court. The
Court’s July 9, 2020 Minute Order makes clear that any request for new motions may be made, if
at all, “only after a ruling on the current motions and anticipated supplemental briefs.” July 9,
2020, Minute Order (emphasis added). Should PRO use its supplemental brief on the impact of
the Georgia decision to advocate again for multiplying the issues before the Court, Plaintiffs will
respond accordingly in their responsive supplemental brief. At this juncture, it suffices to note
that the D.C. Circuit was quite deliberate about limiting the issues for remand.
CONCLUSION
Plaintiffs submit that Georgia does not affect the questions before the Court on the
pending motions. Plaintiffs respectfully request that the Court grant their motion for summary
judgment and deny PRO’s motion.

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Dated: July 17, 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
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 July 17, 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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