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

Filing 226

SUPPLEMENTAL MEMORANDUM to Pursuant to July 9, 2020 Minute Order filed by PUBLIC.RESOURCE.ORG, INC.. (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 SUPPLEMENTAL BRIEF ON THE IMPACT OF
GEORGIA V. PUBLIC.RESOURCE.ORG, INC.

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

THE GEORGIA DECISION AND ITS PROGENY SUPPORT A FAIR USE
DETERMINATION. ......................................................................................................... 2
A.

Georgia’s Government Edicts Analysis Supports A Fair Use Finding Where,
as Here, a Party Has the Courage to Speak the Law.............................................. 2
1.
2.

Factor Two: Georgia Underscored the Factual Nature of the Works........ 4

3.

Factor Three: Georgia Stressed the Need to Access the Whole Work...... 5

4.
B.

Factor One: The Supreme Court Recognized Public Resource’s Public
Interest Mission.......................................................................................... 2

Factor Four: Georgia Gave Short Shrift to Similar Claims of Market
Harm. ......................................................................................................... 6

A Sister Court’s Recent Interpretation of Georgia Further Supports a Fair Use
Finding Here. ......................................................................................................... 6
1.
2.

The Nature of the Works............................................................................ 8

3.

The Amount and Substantiality of the Use ................................................ 8

4.

Effect on Market Value.............................................................................. 8

5.
II.

The Purpose and Character of the Defendant’s Use .................................. 7

Following the UpCodes analysis, this Court should find fair use here...... 9

THE GEORGIA DECISION MANDATES FURTHER CONSIDERATION OF
COPYRIGHT ELIGIBILITY ............................................................................................ 9
A.

As Clarified by the Supreme Court, the Government Edicts Doctrine
Encompasses Standards Incorporated by Reference............................................ 10

B.

The Standards Here, Adopted as Laws Through Incorporation by Reference,
Are Ineligible for Copyright Under the UpCodes Test........................................ 14

CONCLUSION............................................................................................................................ 15

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TABLE OF AUTHORITIES
Page(s)

CASES
Am. Soc’y for Testing & Materials v. Public.Resource.Org, Inc.,
896 F.3d 437 (D.C. Cir. 2018) ...................................................................................................1
Banks v. Manchester,
128 U.S. 244 (1888).................................................................................................................10
Bellwether Properties, LLC v. Duke Energy Indiana, Inc.,
87 N.E. 3d 462 (Ind. 2017) ..................................................................................................5, 12
Georgia v. Public.Resource.Org, Inc.,
590 U.S. __, 140 S. Ct. 1498 (2020)................................................................................ passim
Getty Petroleum Mktg., Inc. v. Capital Terminal Co.,
391 F.3d 312 (1st Cir. 2004) (per curiam)...............................................................................12
International Code Council v UpCodes, Inc.,
No. 17 Civ 6261 VM, Dkt. 105 (S.D.N.Y. May 27, 2020)..........................................7, 8, 9, 14
Mistretta v. United States,
488 U.S. 361 (1989).................................................................................................................11
Unicolors, Inc. v. H&M Hennes & Mauritz, L.P.,
No. 18-56253 (9th Cir. May 27, 2020) ......................................................................................3
Virginia Elec. & Power Co. v. Savoy Const. Co.,
294 S.E.2d 811 (Va. 1982).......................................................................................................15
STATUTES
5 U.S.C. § 552(a)(1).......................................................................................................................11
17 U.S.C. § 101................................................................................................................................3
Cal. Civil Code § 22.......................................................................................................................11
OTHER AUTHORITIES
1 C.F.R. §§ 51.1–51.11 ..................................................................................................................11
1 C.F.R. § 51.7(a) (1973)...............................................................................................................13
1 C.F.R. § 51.9(a)-(b).....................................................................................................................12
Goldstein on Copyright 3d ed. § 2.5.2 ...........................................................................................13

ii

TABLE OF AUTHORITIES
(CONTINUED)
Page(s)
Nina A Mendelson, Private Control over Access to Public Law: The Perplexing
Federal Regulatory Use of Private Standards, 112 Mich. L. Rev. 737 (2014).......................12

iii

INTRODUCTION
The Georgia v. Public.Resource.Org decision gives this Court a choice: It can focus its
analysis solely on fair use, thereby likely prompting at least two more trips to the D.C. Circuit
Court of Appeals. Or it can address both copyright enforceability and fair use now, in light of the
new guidance the Supreme Court has offered, thereby giving the Court of Appeals a complete
record and a single path to resolution of this case. The need for such resolution has never been
more obvious or urgent, as the closure of libraries and archives forces many citizens to rely
entirely on the Internet to access the law.
This Court ordered briefing on the “impact, if any, of Georgia v. PRO on the parties’
pending summary judgment motions.” July 9, 2020 Minute Order. One impact of the decision is
to suggest that this case should be decided on the alternate ground that the standards at issue are
government edicts. The Court of Appeals vacated this Court’s previous decision and remanded
the case with the suggestion that this Court could resolve the case on Public Resource’s fair use
defense without reaching the question of copyright eligibility and enforceability. The Court of
Appeals concluded that Public Resource “raise[d] a serious constitutional concern with
permitting private ownership of standards essential to understanding legal obligations,” but it
chose to focus on fair use and “leave for another day the question of whether the Constitution
permits copyright to persist in works incorporated by reference into law.” Am. Soc’y for Testing
& Materials v. Public.Resource.Org, Inc., 896 F.3d 437, 447 (D.C. Cir. 2018).
But Georgia is clear: the Supreme Court discourages that approach, and favors instead
adopting a bright-line rule that government edicts lie outside the copyright statutory monopoly.
The Supreme Court worried that, if fair use were the guiding approach, speakers would be
unjustly deterred, and thus constitutional rights would not be adequately protected.
In light of the Supreme Court’s unambiguous preference for a bright-line rule, as well as
1

the judicial economy of avoiding multiple additional trips between this Court and the Court of
Appeals, this Court should address both fair use and copyrightability/enforceability of codes and
standards that have been incorporated by reference into law. Accordingly, this brief will focus
first on fair use and then discuss the fundamental copyright eligibility and enforceability issues
that the Supreme Court identified in Georgia. If it will assist the Court, Public Resource is also
prepared to file a new motion for summary judgment on those additional grounds.
I.

THE GEORGIA DECISION AND ITS PROGENY SUPPORT A FAIR USE
DETERMINATION.
A.

Georgia’s Government Edicts Analysis Supports A Fair Use Finding Where,
as Here, a Party Has the Courage to Speak the Law.

In Georgia, the Supreme Court held that Georgia’s “Official Code of Georgia
Annotated,” including the official annotations of the state, was a government edict that was
ineligible for copyright protection. Fair use was not before the Court, but the Court offered
observations that are relevant to Public Resource’s fair use defense here.
The Court worried that, if fair use were the guiding approach, constitutional rights would
be imperiled, because “[t]he 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.” Georgia v.
Public.Resource.Org, Inc., 590 U.S. __, 140 S. Ct. 1498, 1513 (2020). Public Resource did think
twice, concluded its work was lawful, and was bold enough to proceed to bring the law—
especially the important rules buried in high-priced or hard-to-find standards and codes—within
the grasp, at no cost, of every person. That mission-driven activity is both fair and, in a time
when libraries and archives are closed or practically inaccessible, more necessary than ever.
1.

Factor One: The Supreme Court Recognized Public Resource’s Public
Interest Mission.

This first fair use factor examines the purpose and character of the secondary use,
including whether the use is noncommercial. Like the D.C. Circuit in this litigation, and on the
2

basis of an extensive record, the Supreme Court observed that “Public.Resource.Org (PRO) is a
nonprofit organization that aims to facilitate public access to government records and legal
materials” and that Public Resource made the materials in that case available to the public free of
charge, just as it does the standards and codes at issue here. Georgia at 1505.
The Court’s analysis also reinforces the transformational nature of Public Resource’s use.
In Georgia, the Court focused its analysis on identifying the author of a work drafted by a
private party under the aegis of a Code Revision Commission, and then adopted by the Georgia
legislature: the Official Code of Georgia Annotated (OCGA). In that case, the Commission had
two overlapping authorial roles: by contract it was the author of the annotations under the worksmade-for-hire doctrine, 17 U.S.C. § 101 (definition of “work made for hire”), but by its
government power it was author of the government edicts that the annotations constituted. Thus
two different types of “works,” with two types of authorship, happened to converge.
Here the standards and codes are also, in effect, two distinct works with two types of
authorship. First, they were documents reflecting a broad consensus of government officials,
academics, technical experts, and industry representatives reflecting best practices, procedures,
methods, and specifications for public safety and technical or industry interactions.1 Then, once

1

In this case, federal, state, and local governments may indeed be joint authors, with other
participants, of the pre-incorporation codes and standards, in which case both the authorship and
the works converge as in Georgia. To save their standing to sue in this case, where the evidence
established that the works were not “works made for hire” as the Plaintiffs’ copyright
applications and registrations indicated, the Plaintiffs have argued that they were joint authors of
all the works. That means that all the governments who employed participants in the standardsmaking process were also joint authors. As Public Resource indicated in its earlier citation of
supplemental authorities, an applicant for copyright registration of a work of joint authorship
must identify all joint authors. Plaintiffs have never done so, either to the Copyright Office or in
this lawsuit. Before the Court can grant summary judgment to Plaintiffs on their motion, it must
refer the registrations to the Copyright Office for a determination of whether the Office would
have issued the registrations without an identification of all the joint authors. Dkt. 222 at 5–6
(citing Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., No. 18-56253 (9th Cir. May 27, 2020)).
3

incorporated into law, they are recreated as—transformed into—government edicts. As when a
pleading incorporates material by reference and thereby re-states that material, when a
government adopts standards and makes them law through incorporation by reference, the
government re-states and recasts those documents as the government’s own expression. It is little
different from a government’s adoption as law of a bill drafted by a private interest such as
American Legislative Exchange Council or the Sierra Club. While those organizations might
assert copyright in their draft bills as ordinary documents, when their documents become law the
analysis must change. Otherwise a private interest could control who gets to speak and read the
law.
Public Resource, in turn, further transforms the works at issue into a usable and
accessible database of government regulations, serving the classic fair use purpose of promoting
research and education. It also serves the equally classic fair use purpose of reporting on facts,
i.e., the official statement of the law.
If there were any doubt before, the Georgia decision dispels it: Public Resource’s
nonprofit mission serve the public interest. Every consideration informing the first fair use factor
overwhelmingly supports fair use and summary judgment for Public Resource.
2.

Factor Two: Georgia Underscored the Factual Nature of the Works.

As the discussion above explained, the works at issue have taken on new life as
government expressions and thus as political facts. Moreover, the analysis should not turn on
whether they have force of law – though they do. The Supreme Court applied the “government
edicts” doctrine beyond edicts that have the “force of law.” Georgia at 1506–08, 1511–12. Under
the Supreme Court’s reasoning, even proposed bills lie outside copyright’s protection. See id. at

4

9. Materials that are part of the “whole work of [legislators]” must be “‘free for publication to
all.’” Id. at 1508 (citing Banks, 128 U.S. at 253).
As Georgia recognizes, both laws and government edicts—no matter how they become
law—are functional and factual. They are news, which should be reported to the world so that
government does not operate in effective secrecy. To the extent they are not public, and not
widely available, that is a governmental failure in need of a remedy. That much is clear from the
opinion of the Indiana Supreme Court in Bellwether Properties, LLC v. Duke Energy Indiana,
Inc., 87 N.E. 3d 462, 467-69 (Ind. 2017), where that court complained about its inability through
normal channels to access the standard-as-law it was to apply and then revealed that it had
discovered the relevant standard-as-law on the Internet Archive, where Public Resource had
placed it.
Again, this case is not about standards and codes generally. Public Resource has no
interest in posting standards and codes as such. This case is about law and government edicts that
have recast the standards as governmental, political expressions and rules. Public Resource’s
work in identifying and posting the law is, in effect, simply reporting the factual substance of
government action, as well as exercising an essential civic function: sharing with fellow citizens
the rules that the government has imposed on their conduct and that of the manufacturers,
contractors, and institutions upon which they rely.
Factor Two overwhelmingly favors fair use.
3.

Factor Three: Georgia Stressed the Need to Access the Whole Work.

The Supreme Court held that the “whole work done by [legislators]” is subject to the
government edicts doctrine. Georgia at 1508 (quoting Banks). It follows that Public Resource’s
posting of standards that governments have adopted into law is reasonable under the third fairuse factor, because every part of each adopted document constitutes a government edict. As
5

Public Resource has explained, governments frequently incorporate entire documents by
reference into law, and governments generally do not limit their incorporations-adoptions to
specific pages or sections of a document. Public Resource’s Memorandum of Points and
Authorities in Opposition to Plaintiffs’ Second Motion for Summary Judgment and Permanent
Injunction and in Support of Public Resource’s Second Motion for Summary Judgment (“2nd
MSJ MPA”), Dkt. 205-1 at 5–6. If and when governments do engage explicitly only in such
partial incorporation, Public Resource would post only those portions that were incorporated.
4.

Factor Four: Georgia Gave Short Shrift to Similar Claims of Market
Harm.

Like the Plaintiffs here with respect to the standards at issue, Justice Thomas raised the
specter of disturbing settled expectations and incentives to produce annotations of Georgia’s
statutes. See Georgia at 1517, 1522 (Thomas, J., dissenting). The majority overrode those
concerns, and this Court should do the same here. Whatever merit that argument might have for
standards and codes that have not been incorporated by reference into law, upon their
transformation into government edicts—a transformation that each of the Plaintiffs have
promoted or at least tolerated—that consideration pales. No lobbyist or public interest
organization needs a copyright incentive to draft text that it proposes as law. There are ample
other benefits. Public Resource’s Second Supplemental Statement of Material Facts (“SSSMF”),
Dkt. 203-3 ¶¶ 49–63. Moreover, the real drafters of the standards and codes in this case—the
thousands of volunteers from many different interests—had no apparent copyright incentive in
their work, and the Plaintiffs have never provided evidence that a fair-use ruling would impair its
value. SSSMF, Dkt. 203-3 ¶¶ 49–63, 194–95; 2nd MSJ MPA, Dkt. 205-1 at 27–30.
B.

A Sister Court’s Recent Interpretation of Georgia Further Supports a Fair
Use Finding Here.

Shortly after the summary judgment briefing on fair use ended in this case, and after the

6

Georgia opinion had issued, the Southern District of New York ruled on closely analogous
lawsuit, International Code Council v UpCodes, Inc., No. 17 Civ 6261 VM, Dkt. 105 (S.D.N.Y.
May 27, 2020) (hereafter “UpCodes”). Like Plaintiffs here, the International Code Council
(“ICC”) coordinates the preparation of model codes and encourages their adoption into law. Like
Public Resource, UpCodes provides a website that makes codes that have been adopted into law
available online for free; unlike Public Resource, UpCodes provides ancillary services to users
for a price. ICC sued for copyright infringement. On cross-motions for summary judgment, the
court ruled in favor of the defendant on key fair use issues and specifically found fair use as a
matter of law in the dissemination of model codes as adopted.2
Given the similarities of the cases, and the Southern District of New York’s reliance on
the D.C. Circuit, the Court should give strong consideration to the conclusions of its sister court,
keeping in mind that, given its noncommercial purpose, Public Resource’s fair use defense is
even stronger than that of UpCodes.
1.

The Purpose and Character of the Defendant’s Use

Citing multiple precedents, the Southern District of New York held that the defendant’s
use “clearly serves a transformative purpose: specifically, the dissemination of enacted laws for
public awareness.”
The underlying I-Codes drafted by ICC primarily serve the
purpose of model codes, providing recommendations on the
standards that governments should adopt to improve and safeguard
their built environments. By contrast, the I-Codes as Adopted are
actual regulations binding the public and governing its conduct.

2

The Court did not grant summary judgment to Upcodes because, although it found fair use of
the codes as they adopted, Upcodes had also posted redlines of some of the plaintiff’s model
codes that were not fully adopted, using redlines to distinguish between what was adopted and
unadopted. There was a dispute of material fact as to fair use on the redlines. See Upcodes slip
op. at 12, 76-77.
7

UpCodes slip op. at 80.
Here, the Plaintiffs, like ICC, coordinate the preparation of standards that promote health
and safety. Public Resource, like UpCodes, provides access to the subset of those standards—
ones that governments have been incorporated into law—to the public, for free, to improve
public awareness of them. In both cases, factor one favors fair use.
2.

The Nature of the Works

The Southern District of New York also found that the codes at issue stood at “the
periphery of copyright protection.” “Bearing in mind that the “express text of the law” falls
plainly outside the realm of copyright protection,” the court held that the second factor “heavily
favor[ed] a finding of fair use . . . .” UpCodes slip op. at 84. Given that the documents at issue
here are also the express text of the law the same analysis should apply.
3.

The Amount and Substantiality of the Use

Citing the D.C. Circuit’s ruling in this lawsuit, the UpCodes court held that the third
factor did not weigh against fair use because the defendant’s copying was limited to what was
“contained in the enacted laws themselves.” Slip op. at 86. Again, the same is true here: Public
Resource copies and posts precisely what has been incorporated into law. SSSMF ¶ 84.
4.

Effect on Market Value

The Southern District of New York expressed uncertainty about the effect of the
defendant’s use on the market value of the plaintiff’s works, but that uncertainty did not affect
the overall fair use analysis and a ruling as a matter of law. Drawing upon the D.C. Circuit’s
decision in this lawsuit, the court noted that the existence of ICC’s controlled reading rooms, like
those of the plaintiffs in this case “suggest[] the impact of posting the I-Codes as Adopted may
not be particularly large.” It found the record did not clearly resolve the question of harm, but it
was “skeptical that the dispute would be material given the combined weight of the other three
8

factors and the many grounds counseling that the [codes at issue] are in the public domain
regardless.” UpCodes slip op. at 88-90. This Court should share that skepticism, especially
because, years into the litigation, the Plaintiffs still have no evidence of actual harm. 2nd MSJ
MPA, Dkt. 205-1 at 27–30.
5.

Following the UpCodes analysis, this Court should find fair use here.

Drawing all fair-use factors together, the Southern District of New York held that the
dissemination of the codes at issue was fair use:
On balance, the Court is persuaded that accurate posting of the I-Codes as
Adopted is a fair use as a matter of law. As noted above, the first and
second fair use factors together weigh heavily in Defendants’ favor. The
ICodes as Adopted are clearly factual rather than fictional, and Defendants
posted the works in their capacity as laws, rather than model codes. The
purpose for which the I-Codes as Adopted were copied, displayed, and
distributed is thus transformative. The third factor does not weigh against
such copying either, as accurate copying would entail posting only “tentenths of the law.” ASTM, 896 F.3d at 452. Finally, the Court notes that
the overall impact of the fourth fair use factor is ambiguous. . . . [but] the
potential harms to ICC’s markets for its works cannot outweigh the
benefits and necessity of enabling unfettered access to enacted laws. These
considerations necessitate a finding of fair use . . . .
UpCodes slip op. at 91-92. The same considerations compel the same result here.
II.

THE GEORGIA DECISION MANDATES FURTHER CONSIDERATION OF
COPYRIGHT ELIGIBILITY
If, as the Supreme Court held in Georgia v. Public.Resource.Org, Public Resource may

post government edicts that were (1) prepared by an outside private party; and (2) formally
adopted by a branch of government; but (3) not actually incorporated as provisions of law, then
surely Public Resource here may post government edicts that were (1) prepared by an outside
party; and (2) formally adopted by a branch of government; and (3) are actually incorporated
into law.
As an initial matter, the Georgia decision affirms that private ownership of law

9

implicates vital First Amendment, Fifth Amendment, and Fourteenth Amendment concerns: due
process requires unfettered access to the law; and the right to petition government for a redress of
grievances, freedom of the press, and freedom of speech require the unfettered ability to learn
and speak the law. As the Supreme Court observed, “[N]o one can own the law. ‘Every citizen is
presumed to know the law,’ and ‘it needs no argument to show . . . that all should have free
access to its contents.’” Georgia at 1507 (quoting Nash v. Lathrop, 142 Mass. 29 at 35, 6 N.E., at
560 (cited by Banks v. Manchester, 128 U.S. at 253-254)). And where “officials are generally
empowered to make and interpret law, their ‘whole work’ is deemed part of the authentic
exposition and interpretation of the law’ and must be ‘free for publication to all.’” Id. (citing
Banks, 128 U.S. at 253).
To accommodate those concerns, the Supreme Court expressed a preference for a brightline rule that government edicts lie outside the copyright statutory monopoly. This Court should
heed that preference and rule on the question here. The Court of Appeals in this case issued its
ruling well before the Supreme Court had expressly discouraged relying on fair use to resolve the
thorny questions that arise when a private party drafts language that a government transforms
into its edict. Now that the parties and the courts have a clearer mandate, judicial efficiency and
fundamental justice are best served by a ruling from this Court on all grounds.
A.

As Clarified by the Supreme Court, the Government Edicts Doctrine
Encompasses Standards Incorporated by Reference

While the government edicts doctrine dates back to one of the Supreme Court’s earliest
decisions, its ruling in Georgia v Public Resource marks the doctrine’s most complete
articulation, and one that resolves the copyright question here. As the Court put it, the
government edict doctrine is a “straightforward rule based on identity of the author.” Georgia at
1506. Because no one can own the law, the doctrine bars officials from being “authors” of any
10

work associated with their capacity as lawmakers, from legislation and judicial opinions to
proposed bills and committee reports. Whether the document is binding is not the question;
rather, the question is whether it was produced by an entity acting in a “legislative capacity” or a
“judicial capacity.”
The same holds true where the lawmaking takes place through incorporation by
reference, whether it is a legislature or an agency that effects the incorporation. Law is simply
the “solemn expression of the will of the supreme power of the State.”3 Today, that expression
often takes place through administrative action, where an agency, implementing statutory
mandates, defines public and private rights and duties through the issuance of regulations.
Indeed, administrative lawmaking has become a central, defining feature of the modern state in
areas as diverse as securities, the environment, and occupational safety. “Congress simply cannot
do its job absent an ability to delegate power under broad general directives.” Mistretta v. United
States, 488 U.S. 361, 372 (1989). It would be absurd to exclude these kinds of regulations from
the government edicts doctrine; no matter who is making the law, whether a state senator or the
director of a federal agency, they are necessarily acting in a legislative capacity. By extension,
their works are ineligible for copyright protection.
It would be equally absurd to exclude works those regulators incorporate by reference.
First, regulatory action creates law. Incorporation by reference is simply an alternative to
pasting language from a standard into a government’s published laws or regulations, see 5 U.S.C.
§ 552(a)(1); 1 C.F.R. §§ 51.1–51.11, and material incorporated by reference, “like any other
properly issued rule, has the force and effect of law.” SSSMF ¶ 2. That is why “the language

3

Cal. Civil Code § 22, available at:
Codehttps://leginfo.legislature.ca.gov/faces/codes_displaySection.xhtml?lawCode=CIV&section
Num=22.
11

incorporating a publication by reference must be precise, complete, and clearly state that the
incorporation by reference is intended” and agencies must “inform[] the user that the
incorporated publication is a requirement.” 1 C.F.R. § 51.9(a)-(b) (emphasis added). That is also
why judges go looking for those standards-as-laws and even rely on Public Resource to find
them. See Bellwether Props., LLC v. Duke Energy Ind., Inc., 87 N.E.3d 462, 468–69 (Ind. 2017);
Getty Petroleum Mktg., Inc. v. Capital Terminal Co., 391 F.3d 312, 320–21 (1st Cir. 2004) (per
curiam). If a judge needs to review an incorporated document to know the law to resolve a legal
dispute, surely a citizen should be able to do so freely, as should a journalist seeking to
understand laws regulating products, or indeed any ordinary member of the public. See Nina A
Mendelson, Private Control over Access to Public Law: The Perplexing Federal Regulatory Use
of Private Standards, 112 Mich. L. Rev. 737, 771 (2014) (“[R]egulatory beneficiaries of all sorts,
as well as regulated entities, have a strong and direct interest in access to the content of regulatory
standards—including [incorporated-by-reference] material—because it directly affects their
interests and can potentially affect their conduct. Accordingly, if notice is to be effective, ready
public access must be provided to anyone potentially affected by the law, not just to those who
must comply.”)
Second, the process of their creation and adoption is analogous to that of the OCGA, or
the draft judicial opinions and memos discussed in the Georgia case. In Georgia, Lexis
coordinated the creation of the Annotations, operating under the aegis of the Code Revision
Commission. The Annotations were later blessed and adopted by the GA state legislature. Here,
just as Lexis and the Commission operated as drafters for the legislature, the SDOs operate as a
source of legal text for regulators, convening government officials and private persons to
articulate best practices for a given industry. SSSMF ¶ 184. As a matter of course and

12

expectation, and/or vigorous lobbying by the SDOs, regulators adopt a subset of those standards
into law, just as the Georgia legislature approves and adopts the OCGA. 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. SSSMF ¶¶
225-242. At the federal level, regulatory agencies are required to identify precisely what they
intend to incorporate into law. see e.g. 1 C.F.R. § 51.7(a) (1973).
Third, access to the full text, like access to the full OCGA, helps citizens understand their
legal rights and duties. If an agency identifies a document in its incorporation language and does
not specify a specific section of that document, then the incorporation by reference extends to the
entire document. Malamud Decl., Dkt. 204-4 ¶ 40; Dkt. 204-40 (Ex. 34). That is true for every
work at issue here. Moreover, the government edicts doctrine includes a broad array of works,
floor statements and committee reports. Georgia at 1508; see also Goldstein on Copyright 3d ed.
§ 2.5.2. After Georgia, the D.C. Circuit’s focus on whether a given text or piece of text seems to
resemble a law is no longer the right question; the right question is whether a regulator has
adopted the work in its official lawmaking capacity. If so, it is a government edict, free for all to
communicate.
Finally, restricting freedom to speak the standards at issue creates precisely the
incomplete “economy-class” version of the law the Supreme Court condemned. Georgia at 1512.
Without the database that Public Resource provides, citizens—and, as we have seen, even courts
and litigants—have few options for accessing all the laws and regulations created by
incorporation, especially in a pandemic when physical access is impracticable at best. As
described in detail in Public Resource’s opening brief, if Plaintiffs are left to control access,

13

many important regulations will be locked away behind paywalls or in inaccessible libraries and
archives. 2nd MSJ MPA at 2-3, 12-13, and 22-23. The problem becomes even more stark now.
Only those who can pay the fee will enjoy full access to the rules and regulations that shape our
everyday lives.
B.

The Standards Here, Adopted as Laws Through Incorporation by Reference,
Are Ineligible for Copyright Under the UpCodes Test.

Alternatively, the Court could take the approach outlined by the UpCodes court when it
addressed the copyright eligibility of model codes in light of the Georgia decision. The court
outlined five “guideposts” to “assess whether notice of the purported copyrighted work is needed
for a person to have notice of ‘the law,’ such that due process concerns would effectively
categorically outweigh the private author’s need for economic incentives”:
(1) whether the private author intended or encouraged the work’s
adoption into law; (2) whether the work comprehensively governs
public conduct, such that it resembles a “law of general
applicability”; (3) whether the work expressly regulates a broad
area of private endeavor; (4) whether the work provides penalties
or sanctions for violation of its contents; and (5) whether the
alleged infringer has published and identified the work as part of
the law, rather than the copyrighted material underlying the law.
UpCodes slip op. at 51 (citing Suffolk, 261 F.3d at 194).
Here, there is ample evidence that the Plaintiffs encourage regulators to adopt their
standards into law. Standards development organizations (SDOs) often lobby governments to
incorporate their standards by reference or otherwise make their standards law. Plaintiffs have
extensive lobbying operations to ensure that standards they publish are incorporated into the law,
and that existing incorporations are updated to include more recent editions of the standards.
SSSMF ¶ 49–64.
The works in question regulate broad areas of public conduct and/or private endeavor in
multiple ways. For example, the 2019 California Electrical Code incorporates the 2017 NFPA
14

National Electrical Code, and building construction in California must comply with it. SSSMF
¶¶ 230–231.
Violation can result in penalties and sanctions. To take just two examples: The Supreme
Court of Virginia treated violation of the National Electrical Code as equivalent to a violation of
the Virginia Building Code, which incorporated the NEC by reference, and subject to criminal
sanctions. Virginia Elec. & Power Co. v. Savoy Const. Co., 294 S.E.2d 811, 816-17 (Va. 1982).
After the deadly “Ghost Ship” fire in Oakland, California, prosecutors charged principal tenant
and alleged manager of the building with manslaughter for violation of fire safety codes that are
incorporated by reference. SSSMF ¶ 6.
Finally, Public Resource has been clear from the beginning that it posts only works that
have become law. Federal law has incorporated by reference a complete version of every one of
the documents at issue here at least once, and state laws have incorporated many as well.4
Thus, under either theory, due process concerns necessarily outweigh the SDOs unproven
need for economic incentives.
CONCLUSION
For the reasons Public Resource has explained above and in its prior briefing, the Court
should address both copyright enforceability and fair use, grant Public Resource’s motion for
summary judgment, and deny the Plaintiffs’ motion for a permanent injunction and summary
judgment.

4

Each of the ASHRAE and NFPA standards that Public Resource posted are precisely the
editions that are incorporated by reference into law. In a few discrete instances, when attempting
to post the relevant law, Public Resource accidentally posted an edition of an ASTM standard
that was not the precise edition listed in the C.F.R. incorporating language, but which was very
close (often an identical “reissue” of the same standard, that differs only in the addition of a
reissue date added to the title of the standard, with no editorial or substantive changes). Public
Resource addresses this in its 2nd MSJ MPA, Dkt. 205-1 at 8–10.
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Dated: July 24, 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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