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

Filing 237

NOTICE OF SUPPLEMENTAL AUTHORITY 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 NOTICE OF THE U.S. SUPREME COURT’S DECISION
ON FAIR USE IN GOOGLE LLC V. ORACLE AMERICA, INC., AS SUPPLEMENTAL
AUTHORITY ON THE PENDING MOTIONS FOR SUMMARY JUDGMENT
Defendant Public.Resource.Org (Public Resource) respectfully submits this Notice of
Supplemental Authority regarding the Supreme Court’s recent landmark decision on fair use in
Google LLC v Oracle America, Inc., No. 18-956 (Apr. 5, 2021).1 The decision, which has
prompted widespread notice and commentary, bears directly on whether Public Resource’s
posting of standards incorporated by reference into law is a fair use. Indeed, the Supreme Court’s
decision compels a ruling in Public Resource’s favor.
Public Resource addressed with Plaintiffs its intent to provide this notice of supplemental
authority, and it described this filing. Plaintiffs declined to participate in a joint request for

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Available at https://www.supremecourt.gov/opinions/20pdf/18-956_new_o7jp.pdf.

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supplemental briefing, stating that they did not think briefing of the Supreme Court’s decision
was necessary, and that any direction to file supplemental notice should come from the Court.
They indicated, however, that they reserved the right to respond to this notice.
Public Resource previously argued that the Supreme Court’s intervening decision in
Georgia v. Public.Resource.Org, Inc., 140 S.Ct. 1498 (2020) —holding that texts adopted by
government branches in their law-creating capacity, edicts of government, are ineligible for
copyright protection—requires judgment in Public Resource’s favor, even apart from fair use.
Dkts. 222, 223, 226, and 228. But to the extent this Court focuses on fair use as a rationale for its
decision, the new Google decision justifies summary judgment for Public Resource on that issue.
The questions before the Supreme Court in Google were (1) whether the application
programming interfaces (APIs) at issue were copyrightable; and, if so, (2) whether Google’s use
of them was a lawful fair use. The Court did not reach the first question, because it concluded
that Google’s use of the code at issue was fair.
Several elements of the Court’s analysis are relevant here. To begin, although in the
Google case the Supreme Court reversed an appellate decision overturning a jury verdict of fair
use, it did not merely reinstate the jury verdict. It ruled that Google’s use of Oracle’s code was a
fair use as a matter of law. Slip op. at 35. This Court should conclude that Public Resource’s
uses of the standards that embody and have the force of law, are also fair as a matter of law.
The majority opinion explained the basic function of fair use: to “provide a context-based
check that can help to keep a copyright monopoly within its lawful bounds.” Slip op. at 17.
Unusually, but tellingly, the Court’s analysis began with the second factor, the nature of
the work, recognizing that in some circumstances that factor is crucial. That factor tilted firmly
toward Google given that (1) the copyrightable aspects of the code were far from the core of

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copyright protection; and (2) those aspects were inextricably bound to uncopyrightable features
such as a system of computer tasks and their organization and the use of specific programming
commands. The same holds true here: the standards at issue have functional purposes; they
frequently describe themselves as procedures, processes, methods of operation, and principles;
and they codify best practices recommended by a consensus of experts from a variety of
stakeholders, including government employees. Whatever copyrightable expression (if any) may
exist within the standards, the standards are far from the core of copyright protection. Moreover,
as laws after incorporation by reference, those standards took on new significance as facts that
were essential elements of enforceable law. The law became inextricably bound to the expression
of the standards, because the law rests in the expression itself (even if incorporated by reference).
The Court observed that the value of the code at issue derived in large part “from the
value that those who do not hold copyrights, namely, computer programmers, invest of their own
time and effort to learn the API’s system. And unlike many other programs, its value lies in its
efforts to encourage programmers to learn and to use that system so that they will use (and
continue to use) Sun-related implementing programs that Google did not copy.” The same is true
here: the standards at issue have value in large part because they are laws that regulators have
approved and the public relies on, or must comply, with them. Thus, a homeowner might study
the fire safety code not because of the code’s creativity, but because the law compelled
contractors and inspectors to comply with that code in building her home. The public investment
in learning the standards, in order to learn the law, is at least as significant as the public’s
investment in learning the Java APIs in the Google case.
On the purpose and character of the use, the Court considered whether Google’s use—to
create a new platform that programmers could use to develop innovative products for

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smartphones—was consistent “with that creative “progress” that is the basic constitutional
objective of copyright itself” and concluded that it was. The same result should occur here:
Public Resource has created a new platform for sharing the law, upon which others can build.
On the substantiality of the use, the Supreme Court affirmed that the analysis must turn
on whether the secondary user has taken more or less than what is necessary to accomplish the
user’s purpose. “Google copied those lines not because of their creativity, their beauty, or even
(in a sense) because of their purpose.” Here, Public Resource copied the standards at issue not
because of their creativity or beauty, but because, just as programmers had learned to work with
Sun’s API system, the public has learned to work with the codes regulators have anointed as
mandates. Indeed, the public does not have a choice.
Finally, on market harm, the Supreme Court noted multiple public interests in play.
[W]e must take into account the public benefits the copying will
likely produce. Are those benefits, for example, related to
copyright’s concern for the creative production of new expression?
Are they comparatively important, or unimportant, when compared
with dollar amounts likely lost (taking into account as well the
nature of the source of the loss)? Cf. MCA, INC. v. Wilson, 677 F.
2d 180, 183 (CA2 1981) (calling for a balancing of public benefits
and losses to copyright owner under this factor).
Slip op. at 31. Here, again, the Supreme Court noted that the value of the work, and Google’s
need to reproduce it, lay not with its expressive qualities but with third parties’ investment in it.
We have no reason to believe that the Copyright Act seeks to
protect third parties’ investment in learning how to operate a
created work. Cf. Campbell [v. Acuff-Rose Music, Inc., 510 U. S.
569], at 591–592 [(1994)] (discussing the need to identify those
harms that are “cognizable under the Copyright Act”).
[G]iven programmers’ investment in learning the Sun Java API, to
allow enforcement of Oracle’s copyright here would risk harm to
the public. Given the costs and difficulties of producing alternative
APIs with similar appeal to programmers, allowing enforcement
here would make of the Sun Java API’s declaring code a lock
limiting the future creativity of new programs. Oracle alone would
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hold the key. The result could well prove highly profitable to
Oracle (or other firms holding a copyright in computer interfaces).
But those profits could well flow from creative improvements, new
applications, and new uses developed by users who have learned to
work with that interface. To that extent, the lock would interfere
with, not further, copyright’s basic creativity objectives.
Slip op. at 34. That analysis applies equally here. The value of the works at issue derives from
multiple public investments through incorporation into law, the teaching of the law, and the
study of the law. It would be contrary to the public interest and the purpose of copyright to allow
Plaintiffs, using copyright, to monopolize access to, the teaching of, and the learning of, the law,
particularly given Plaintiffs’ failure, after many years, to offer any evidence of any harm.
Respectfully submitted,

Dated: April 27, 2021

/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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