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

Filing 227

SUPPLEMENTAL MEMORANDUM to re 226 Response Brief 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.) Modified linkage on 8/3/2020 (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’ RESPONSE TO PRO’S SUPPLEMENTAL BRIEF REGARDING
GEORGIA v. PUBLIC.RESOURCE.ORG, INC.
PRO’s brief on the impact of Georgia v. Public.Resource.Org, Inc., 140 S. Ct. 1498
(2020), is an exercise in indirection. The D.C. Circuit did not merely “suggest[]” that this Court
resolve the validity of PRO’s fair use defense. PRO Supp. Br. 1 (Dkt. 226). The D.C. Circuit
remanded to this Court precisely so it could consider, in the first instance, whether PRO could
establish the validity of that defense under the D.C. Circuit’s standards, in particular whether
each portion of each standard PRO copied and distributed is “essential to complying with [a]
legal duty,” as compared to just “help[ing] inform one’s understanding of the law.” Am. Soc’y
for Testing & Materials v. Public.Resource.Org, Inc., 896 F.3d 437, 450 (D.C. Cir. 2018)
(“ASTM II”) (emphasis added). That is the point of the remand. Nor is there any merit to PRO’s
claim that resolving the fair use issue and concluding proceedings in this Court will lead to
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multiple trips back and forth to the D.C. Circuit. PRO Supp. Br. 1. To the extent PRO has
preserved its copyright eligibility arguments, which were already extensively briefed and
presented to this Court during the first round of summary judgment motions, PRO can make
arguments based on International Code Council, Inc. v. Upcodes, Inc., No. 17 Civ. 6261 (VM),
2020 WL 2750636 (S.D.N.Y. May 27, 2020) (“UpCodes”), or any other intervening decisions
when this case returns to the D.C. Circuit.
PRO recognizes that it cannot prevail on its fair use defense under the D.C. Circuit’s
standards. It therefore contorts Georgia into supposedly establishing that Plaintiffs’ privately
authored standards are “government edicts,” when the case makes clear they are not; and
mischaracterizes Georgia as “offer[ing] observations” that support PRO’s fair use defense, PRO
Supp. Br. 2, when the case did not analyze the fair use factors at all. None of PRO’s arguments
withstand scrutiny.
I.

PLAINTIFFS’ STANDARDS ARE NOT GOVERNMENT EDICTS UNDER GEORGIA OR ANY
PRECEDENT ON WHICH THE SUPREME COURT RELIED
PRO makes the incredible argument that Plaintiffs’ works, authored by private parties,

“are government edicts,” PRO Supp. Br. 1, even though there is no evidence that any legislator
or judge wrote any portion of any of Plaintiffs’ works.1 PRO’s argument cannot be squared with
the Supreme Court’s clear statement—which PRO ignores—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.” Georgia, 140 S. Ct. at 1507

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Even if PRO had evidence (which it does not) that a legislator or judge wrote some portion of a
work in suit, PRO still would have to show that they did so in their official capacities as
legislators or judges. Georgia, 140 S. Ct. at 1508. PRO has no evidence of any of this. Thus,
PRO’s assertion that “federal, state, and local governments may indeed be joint authors,” PRO
Supp. Br. 3 n.1, is specious.
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(emphasis added). PRO’s attempt to shoehorn this case into the Georgia rule on government
edicts is fallacious.
PRO bases its argument on the erroneous premise that the Supreme Court found the
Georgia Legislature to be the “author” of the annotations in two respects: (1) by virtue of the
work-made-for-hire doctrine; and (2) “by its government power [the Legislature] was the author
of the government edicts that the annotations constituted.” PRO Supp. Br. 3. PRO admits that
the first of these rationales—work-made-for-hire—is inapplicable here, but insists that the
second purported rationale does apply: “once incorporated into law, [Plaintiffs’ standards] are
recreated as—transformed into—government edicts.” Id. at 3-4.
PRO’s argument fails because the Supreme Court found the Legislature to be the
“author” of the annotations based only on the work-made-for-hire ground. Specifically, the
Court held that, because the Commission’s contract with Lexis provided that the annotations
were works made for hire, “[t]he Copyright Act … deems the Commission the sole ‘author’ of
the work. 17 U.S.C. § 201(b).” Georgia, 140 S. Ct. at 1508. Section 201(b), which the Court
cited, states that “the employer or other person for whom [a work-made-for-hire] was prepared is
considered the author for purposes of this title.” 17 U.S.C. § 201(b). Because the Commission
“functions as an arm [of the Legislature] for the purpose of producing the annotations,” the
Legislature was the author of the annotations. Georgia, 140 S. Ct. at 1508.
The Court did not say—as PRO claims it did—that a governmental body becomes an
author when the government “re-states and recasts those documents as the government’s own
expression.” PRO Supp. Br. 4.2 On the contrary, the Court specifically noted that the

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That is unsurprising. The term “author[]” “presuppose[s] a degree of originality” and
“[o]riginal, as the term is used in copyright, means . . . that the work was independently created
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annotations “are not enacted into law through bicameralism and presentment.” Georgia, 140 S.
Ct. at 1509. The only basis for the Court’s authorship holding was work-made-for-hire. That
rationale gets PRO nowhere in claiming that Plaintiffs’ works are government edicts.
PRO’s argument also is contrary to the Court’s earlier decision in Callaghan v. Myers,
128 U.S. 617 (1888), which the Court in Georgia cited and discussed with approval. Georgia,
140 S. Ct. at 1507. In Callaghan, the Court held that the government edicts doctrine did not
affect the copyright interest the official reporter for the Illinois Supreme Court had “in several
explanatory materials that the reporter had created himself: headnotes, syllabi, tables of
contents, and the like.” Id. In Callaghan, those materials were published (as such materials
commonly are published) in the same bound volumes that also contained “a great number of the
decisions and opinions of the supreme court of Illinois.” 128 U.S. at 620. Illinois law
specifically created the official reporter’s office and established the reporter’s duty to prepare
and distribute the reports of the state supreme court’s decisions. Id. at 646. If PRO’s argument
were correct, the state (either through the legislature or the supreme court) should have been
deemed to be the author of the entirety of the bound volume. But that is not what the Court held.
It instead held that the official reporter had a valid copyright in “the parts of the book of which
he is the author.” Id. at 650.
In sum, PRO’s argument that Plaintiffs’ works are government edicts is meritless.

by the author (as opposed to copied from other works).” Feist Publ’ns, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340, 345-46 (1991). A government body that incorporates a standard by reference
does not independently create any expression, and, therefore, it does not become an author of the
standard.
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II.

GEORGIA DOES NOT IMPACT THE ANALYSIS OF THE STATUTORY FAIR USE FACTORS
PRO is likewise wrong that Georgia “offered observations that are relevant to [PRO’s]

fair use defense here.” PRO Supp. Br. 2. The Supreme Court did not analyze fair use at all, and
PRO’s efforts to wring out of the Court’s opinion fair use holdings favorable to PRO fails.
A.

Factor One: The Supreme Court Did Not “Recognize” The Purpose Or
Character Of PRO’s Use In This Case

PRO asserts that because the Supreme Court’s opinion included a one-sentence general
description of PRO (“a nonprofit organization that aims to facilitate public access to government
records and legal materials,” 140 S. Ct. at 1505), this Court must take it as established in this
case that PRO’s purpose favors its fair use defense. PRO Supp. Br. 2-3. That is wrong.
PRO certainly proclaims a general interest in facilitating access to “legal materials.” The
relevant question in this case, however, is whether PRO furthers that purpose by “add[ing]
something new” that Plaintiffs do not. Fox News Network, LLC v. TVEyes, Inc., 883 F.3d 169,
176 (2d Cir. 2018). The facts in this case show that PRO does not add anything new. PRO does
not serve a purpose that is meaningfully different from Plaintiffs’ purpose in providing free,
read-only access to the same Works. See 2d Supp. SMF ¶ 86 (Dkt. 199-2). Plaintiffs’ offerings
allow anyone to easily view incorporated by reference standards online for free. Id. ¶ 85. See
Pls’ Second Mot. Summ. J. 14-16 (Dkt. 199-1).
PRO also claims that Georgia “reinforces the transformational nature of [PRO’s] use” in
its discussion of the authorship requirement. PRO Supp. Br. 3. Georgia does not discuss
transformation in the fair use context at all. PRO’s contention that it “transforms the works at
issue into a usable and accessible database of government regulations,” id. at 4, assumes the
answer to the question the D.C. Circuit directed this Court to consider: whether each portion of
each standard that PRO copied and distributed is in fact a governmental regulation as the result
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of the incorporation by reference. The D.C. Circuit was clear on what this inquiry entails: is
each portion in issue “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 (emphasis added). PRO was
obligated to make this showing “standard by standard and use by use.” Id. at 451.3
PRO failed to meet its fair use burden in response to the D.C. Circuit’s question. Many
of the Works are not incorporated by the regulation(s) PRO identifies in the cover sheets that it
places in front of its copies.4 Still others are “discretionary reference procedure[s]” that are
incorporated in such a manner as to be optional or references—i.e., “help[ful]” but not
“essential,” 896 F.3d at 447, 450 (emphasis added), or optional standards and standards that do
not govern private conduct. The other works in suit include substantial material that either has
nothing to do with compliance or is certainly not “essential” to complying with a legal
obligation, including prefatory notes and background information; reference and information
notes; diagrams, figures, and illustrations; examples; and informational annexes. See Pls’
Second Mot. Summ. J. 16-24; 2d Supp. SMF ¶¶ 48-56 (ASTM), id. ¶¶ 59-68 (NFPA), id. ¶¶ 70-

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The UpCodes court likewise emphasized that the particular context of incorporation is relevant
to whether a particular use is transformative. UpCodes, 2020 WL 2750636, at *25. The court
found that “the record is ambiguous as to whether what the Defendants actually post constitutes
‘the law’ alone,” and that “genuine factual disputes suggesting that at least some codes posted on
Current UpCodes [website] have ‘indiscriminately mingled’ enacted text with unadopted model
text,” which precluded summary judgment for Defendants on both adopted versions of ICC’s
model codes and redline derivative works that UpCodes created. Id. at *7, *18.
4
PRO claims that there “a few discrete instances” in which it copied and posted ASTM
standards that were not incorporated into law when PRO posted them. PRO Supp. Br. 15 n.4.
That grossly understates the scope of PRO’s admittedly indefensible copying. For 27 of
ASTM’s works, ASTM is not aware of any regulation that incorporates the standard by
reference, and PRO has not identified any. Pls. 3d. Supp. SMF ¶ 9 (Dkt. 213-1). For more than
20% of the ASTM Works (41 standards), the provision of the Code of Federal Regulations PRO
identified as the incorporating reference was not promulgated until after PRO posted the
standards in 2012. Id. ¶ 4. For approximately 30% of the ASTM Works (56 standards), the
provision of the Code of Federal Regulation PRO identified was amended to eliminate reference
to the ASTM Work at issue prior to the time PRO posted ASTM’s Works in 2012. Id. ¶ 5.
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76 (ASHRAE). When confronted with its deficient showing, PRO has claimed that a 2018
federal agency handbook on IBR’ing purportedly establishes that everything within an IBR’d
standard’s covers (unless specifically excluded) is necessary to understand a legal duty. But the
statement on which PRO relies does not mean what PRO says it does; does not carry the force of
law; and (in all but a handful of cases) post-dates by several years the implementing regulations
on which PRO relies. Pls’ Reply ISO Second Mot. for Summ. J. 8-12 (Dkt. 215).
B.

Factor Two: Georgia Does Not Assist PRO On The Nature Of The Works

PRO’s argument that Georgia establishes that all IBR’d standards “have taken on new
life as government expressions and thus as political facts,” PRO Supp. Br. 4, is attorney rhetoric
and not a holding of the Supreme Court, for the reasons discussed above.
PRO also claims that Georgia assists its showing on factor two because the Court said the
government edicts doctrine applies regardless of whether the government-authored material has
“force of law.” PRO Supp. Br. 4. This argument, too, grasps at straws. The Court rejected
“force of law” as the test for the government edicts doctrine, which turns on who authored the
work. The Court said nothing about how the binding or non-binding nature of a portion of an
incorporated standard should be weighed on factor two of the fair use defense.
On that issue, the D.C. Circuit’s opinion continues to supply the governing test in this
case: this factor “demands an individual appraisal of each standard and its incorporation”
inquiring into whether the standard has been incorporated so as to impose a binding legal
requirement. ASTM II, 896 F.3d at 451.5 PRO will not engage with this issue, and thus cannot
prevail on factor two.
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UpCodes recognized that “the D.C. Circuit [in ASTM II] faced a wide[] variety of standards and
degrees of incorporation by reference,” UpCodes, 2020 WL 2750636, at *23, and that the degree
to which a standard is incorporated by reference “must be considered standard-by-standard.” Id.
at *26.
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C.

Factor Three: Georgia Does Not Provide Cover For PRO’s Wholesale
Copying And Distribution Of Plaintiffs’ Works

On this factor, too, PRO relies on its erroneous argument that, under Georgia, “every part
of each adopted document constitutes a government edict.” PRO Supp. Br. 5. Again, the D.C.
Circuit’s opinion supplies the controlling standard: has PRO “limit[ed] its copying to only what
is required to fairly describe the standard’s legal import.” ASTM II, 896 F.3d at 452. Under this
test, the UpCodes court recognized that “the third factor likely weighs against a finding of fair
use as to Defendants’ copying” that includes text that is not required to describe the standard’s
legal import. UpCodes, 2020 WL 2750636, at *27. And, once again, PRO has not even tried to
satisfy the D.C. Circuit’s test. Pls’ Opp’n and Reply 19-20 (Dkt. 213).
D.

Factor Four: Georgia Does Not Support PRO’s Request That This Court
Ignore The Actual And Potential Harm From PRO’s Wholesale,
Unrestricted Copying And Distribution Of Plaintiffs’ Works

PRO argues that, because Justice Thomas’s dissent spoke of potential negative policy
ramifications from the majority’s decision, this Court should read Georgia to “overr[i]de” the
market harm factor in fair use. PRO Supp. Br. 6. This argument is bizarre. The majority
embraced the authorship test for the government edicts doctrine because it had a clear “textual
basis” in the Copyright Act. Georgia, 140 S. Ct. at 1512. In this case, the textual basis for
assessing market harm is hard-wired into the Copyright Act’s test for fair use: the Court must
consider “the effect of [PRO’s] use upon the potential market for or value of the copyrighted
work.” 17 U.S.C. § 107(4).6
As this Court has explained, “[i]t is not Plaintiffs’ burden to establish that they have been
harmed”; rather it is PRO’s “burden to affirmatively establish that such conduct could not even

6

UpCodes recognized that this factor could weigh against the defendants’ copying because “it is
fair to say that [the defendant’s copies are] an effective substitute for the model code itself.”
UpCodes, 2020 WL 2750636, at *28.
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‘potentially’ harm the Plaintiffs’ market.” Am. Soc’y for Testing & Materials v.
Public.Resource.Org, Inc., No. 13-cv-1215 (TSC), 2017 WL 473822, at *18 (D.D.C. Feb. 2,
2017) (“ASTM I”). PRO claims that destroying the economic value of Plaintiffs’ works would
not undermine the incentives of people who voluntarily participate in the standard-drafting
process, PRO Supp. Br. 6, but ignores the fact that the actual copyright owners would lose their
incentive to underwrite the standard-development process were PRO’s unrestricted
dissemination of Plaintiffs’ works to be permitted. 2d Supp. SMF ¶ 91 (Jarosz Rpt. ¶¶ 85, 92,
100, 130-49).
Here, too, the D.C. Circuit gave specific directions for this Court and the parties to
address on this factor. On each, the undisputed facts show this factor weighs against PRO:


PRO’s wholesale copying and distribution of Plaintiffs’ works causes “additional
[market] harm,” notwithstanding the free access Plaintiffs provide, because
Plaintiffs’ online reading rooms are read-only, thus allowing educational and
informational access to their standards without substituting for the sale of less
restricted versions of Plaintiffs’ works. 2d Supp. SMF ¶¶ 85, 88.



There is no basis to find an absence of harm from PRO’s copying and distributing
only those portions of Plaintiffs’ standards that “provide[] information essential to
comprehending one’s legal duties,” ASTM II, 896 F.3d at 450, because PRO
appropriates the entirety of Plaintiffs’ works.



PRO’s use of Plaintiffs’ works harms markets for derivative works of Plaintiffs’
standard, id. at 453, because PRO’s use harms the market for the current and most
up-to-date works; and PRO’s unlimited dissemination of Plaintiffs’ works

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undermines Plaintiffs’ “provision of the protected publications in, for example,
trainings and seminars.” 2d Supp. SMF ¶¶ 83, 84 (Jarosz Rep. ¶ 146).
In sum, Georgia provides no support for PRO’s argument on any of the four fair use
factors.
III.

PRO’S ATTEMPT TO EXPAND THE SCOPE OF THE D.C. CIRCUIT’S REMAND FAILS
As predicted, PRO has used its brief on Georgia’s impact to urge the Court to allow a

whole new round of briefing on copyright eligibility. PRO Supp. Br. 9-15. Plaintiffs have
explained in detail why it is improper for PRO to expand the scope of the D.C. Circuit’s limited
remand. Pls.’ Supp. Br. 8-9 (Dkt. 225); Pls’ Reply in Supp. of Mot. for Status Conf. 2-8 (Dkt.
224). And, this Court has made clear that PRO should not even request further briefing until
“after a ruling on the current motions and anticipated supplemental briefs.” Minute Order, July
9, 2020.
CONCLUSION
Plaintiffs respectfully request that the Court grant their motion for summary judgment
and deny PRO’s motion.

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Dated: July 31, 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
500 W. 2nd Street, Ste. 1800
Austin, TX 78701
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 31, 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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