AMERICAN SOCIETY FOR TESTING AND MATERIALS et al v. PUBLIC.RESOURCE.ORG, INC.
RESPONSE re 237 NOTICE OF SUPPLEMENTAL AUTHORITY filed by NATIONAL FIRE PROTECTION ASSOCIATION, INC.. (Klaus, Kelly)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
AMERICAN SOCIETY FOR TESTING
AND MATERIALS d/b/a ASTM
NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and
AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR
Case No. 1:13-cv-01215-TSC
PLAINTIFFS’ RESPONSE TO PRO’S SUPPLEMENTAL BRIEF REGARDING
GOOGLE LLC v. ORACLE AMERICA, INC.
PRO’s brief is improper. The Court’s July 9, 2020 Minute Order could not have been
clearer: the parties “may seek leave to file more briefing only after a ruling on the current
motions and [the specifically authorized] supplemental briefs” addressing Georgia v.
Public.Resource.Org, Inc., 140 S. Ct. 1498 (2020). See Docket Entry (July 9, 2020) (emphasis
added). “Should the court seek additional briefing before then, it will so order.” Id. Yet PRO
has filed a five-page supplemental brief (Dkt. 237 (“PRO Supp. Br.”)) offering its self-serving
take on the relevance of Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183 (2021), to the pending
motions. PRO did not even bother to ask for leave. PRO should not be rewarded for its
irreverence and the Court would be justified in striking PRO’s filing for failing to comply with
the Court’s order.
The Google decision does not create a need for further briefing because that case breaks
no new ground on any issue of fair use that is relevant here and instead deals with the entirely
inapposite context of computer software and the technicalities of Application Programming
Interfaces (“APIs”). PRO’s wholesale, indiscriminate copying of Plaintiffs’ standards is not akin
to Google’s copying of 37 packages of computer code (“declaring code”) to supplement
“millions of lines of new,” Google-written code “to create Google’s Android platform software.”
Google, 141 S. Ct. at 1191, 1193.
Key to the Supreme Court’s analysis were (1) the distinctive nature of the copied
declaring code as an already entrenched interface for computer programmers and (2) the highly
transformative nature of Google’s own Android platform on which those programmers could
build brand new original works. The Court stressed that it was not “modify[ing] [its] earlier
cases involving fair use” or “chang[ing] the nature of [the relevant] concepts.” Id. at 1208.
Instead, it applied those existing concepts to the specific facts at hand, which involved a
“different kind of copyrighted work.” Id. at 1209. In particular, “Google reimplemented a user
interface, taking only what was needed to allow users to put their accrued talents to work in a
new and transformative program.” Id. Here, in contrast, Plaintiffs have shown that PRO took far
more than “what was needed,” even according to PRO’s stated mission. And in all events,
PRO’s mission, unlike Google’s mission as the Court described it, does not further the core
copyright objective of incentivizing new works of creative expression. Id. at 1203. The two
cases are apples and oranges, and PRO’s reliance on the Supreme Court’s fact-specific analysis
of the settled fair use factors is misplaced.
PRO strains to make the Supreme Court’s analysis “relevant” to this case’s very different
facts. PRO Supp. Br. at 2. As a threshold matter, and contrary to PRO’s suggestions, no one
here denies that fair use can be resolved as a matter of law where no material facts are in dispute,
or that where the elements of fair use are satisfied, the defense may serve as a “context-based
check” on the exclusive rights the Copyright Act grants. Id. at 2 (quoting Google Slip op. at 17).
The parties here do dispute the proper application of the four fair use factors to the record
evidence before the Court, but PRO’s discussion on that score is incomplete and misleading.
As for the “nature of the copyrighted work,” the Supreme Court stressed that the copied
declaring code was “inherently bound” to “new creative expression (Android’s implementing
code).” Google, 141 S. Ct. at 1202. In contrast, PRO’s copying is not tethered in any way to
new creative expression of PRO’s making or any new creative expression at all; PRO merely
reproduced Plaintiffs’ works. Moreover, while PRO continues to assert that “the standards at
issue have value in large part because they are laws,” PRO Supp. Br. at 3, PRO continues to
ignore that it has refused even to attempt to carry its burden of showing that each portion of each
standard it copied actually creates a binding legal obligation when a governmental body engages
in incorporation by reference. See Am. Soc’y for Testing & Materials v. Public.Resource.Org,
Inc., 896 F.3d 437, 442-43 (D.C. Cir. 2018) (“ASTM”); see also Pls.’ Mot. at 24 (Dkt. 200); Pls.’
Opp. & Reply at 19 (Dkt. 213). PRO has not introduced any evidence that any standards’ value
is derived in large part from the incorporation by reference. To the contrary, the unrebutted
evidence demonstrates both that there is a market for unadopted standards and that market does
not change if the standards are incorporated by reference. See, e.g., Dkt. 118-12, Rubel Decl. ¶
4, Ex. 1, Jarosz Rpt. at ¶¶ 87-88, 93, 101 (confirming that pricing is not impacted by whether
works are incorporated into law).
As for “the purpose and character of the use,” the Supreme Court stressed that “Google’s
use of the Sun Java API seeks to create new products” and “expand the use and usefulness of
Android-based smartphones.” 141 S. Ct. at 1203. PRO does not create new products, does not
empower third parties to create new products, and does not even ensure that the copyrighted
works it copies and distributes actually have been incorporated in a manner that creates any
binding legal obligation. PRO simply copied everything, cover-to-cover, in any standard that
was the subject of incorporation. And, by no measure is PRO’s website a “platform” in the way
that Google’s Android software is. PRO does little more than provide access to this copyrighted
material for free on the internet, and Plaintiffs already perform the same function, but better.
Pls.’ Mot. at 13-24; Pls.’ Opp. & Reply at 7-19.
As for “the amount and substantiality of the portion used,” PRO gets things backwards.
Unlike Google, PRO copies far more than is necessary for PRO’s stated purpose. Again, PRO
has failed to prove that it “limit[ed] its copying to only what is required to fairly describe the
standard’s legal import.” ASTM, 896 F.3d at 452.
And as for market effects, PRO again turns Google on its head. The Supreme Court
stressed the abundant evidence before the jury that Google’s copying “did not harm the actual or
potential markets for Java SE.” Id. at 1206. As Plaintiffs have already detailed, the evidence
here demonstrates the opposite. Pls.’ Mot. at 25-31; Pls.’ Opp. & Reply at 20-24; see also
ASTM, 896 F.3d at 453 (D.C. Circuit confirming that “the SDOs are right to suggest that there
may be some adverse impact on the market for the copyrighted works PRO reproduced on its
website”). PRO has not introduced any evidence that the value of Plaintiffs’ standards derive
principally from third parties’ investments in those standards. See PRO Supp. Br. 4-5. The
value of Plaintiffs’ standards is the result of Plaintiffs’ investments in them, including significant
investments in revising and updating the standards over time. On this point too, Google is
For these reasons and all those Plaintiffs have previously advanced, Plaintiffs respectfully
request that the Court grant their motion for summary judgment and deny PRO’s motion.
Dated: May 10, 2021
/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
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
Rose L. Ehler (pro hac vice)
MUNGER, TOLLES & OLSON LLP
350 South Grand Ave., 50th Floor
Los Angeles, CA 90071
Rachel G. Miller-Ziegler
MUNGER, TOLLES & OLSON LLP
1155 F St. NW, 7th Floor
Washington, DC 20004
Counsel for National Fire Protection Association, Inc.
/s/ J. Blake Cunningham
Jeffrey S. Bucholtz (D.C. Bar: 452385)
King & Spalding LLP
1700 Pennsylvania Avenue, NW, Ste. 200
Washington, DC 20006-4707
J. Blake Cunningham
King & Spalding LLP
500 W. 2nd Street, Ste. 1800
Austin, TX 78701
Counsel for American Society of Heating, Refrigerating,
and Air Conditioning Engineers
CERTIFICATE OF SERVICE
I hereby certify that on May 10, 2021 a true and correct copy of the foregoing document
was served via CM/ECF upon all counsel of record.
/s/ Cynthia S. Soden
Cynthia S. Soden
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