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

Filing 245

STIPULATION Proposed Stipulated Order by AMERICAN SOCIETY FOR TESTING AND MATERIALS, AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC., NATIONAL FIRE PROTECTION ASSOCIATION, INC.. (Wise, Jane)

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.
[PROPOSED] STIPULATED ORDER
Plaintiffs American Society for Testing and Materials d/b/a/ ASTM International
(“ASTM”), National Fire Protection Association, Inc. (“NFPA”), and American Society of
Heating, Refrigerating, and Air Conditioning Engineers, Inc. (“ASHRAE”), (collectively,
“Plaintiffs”) together with Defendant Public.Resource.Org. Inc. (“PRO” or “Defendant”) hereby
stipulate and agree to entry of the following order in full resolution of the claims, counterclaims,
and defenses at issue in this action.
WHEREFORE, with the consent of the Parties, through their undersigned attorneys, and
with the approval of the Court, it is hereby finally ORDERED, ADJUDGED AND DECREED
as follows:
1.

That this Court has jurisdiction over the parties and the subject matter of this

action.
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2.

On March 31, 2022, this Court entered an Order and accompanying Memorandum

Opinion, ECF 239 and 240, GRANTING IN PART and DENYING IN PART Plaintiffs’ Motion
for Summary Judgment and Permanent Injunction, ECF 198, and GRANTING IN PART and
DENYING IN PART Defendant’s Cross-Motion for Summary Judgment, ECF 202 (the
“Order”).
3.

Plaintiffs timely filed a Notice of Appeal of the Order on April 22, 2022.

4.

On September 12, 2023, the D.C. Circuit issued an opinion affirming this Court’s

Order. Plaintiffs did not file a petition for hearing or rehearing en banc or a petition for a writ of
certiorari with the United States Supreme Court.
5.

The Parties now consent to entry of a final judgment, consistent with the March

31, 2022 Order, as follows:
a.

Plaintiffs’ Motion for Summary Judgment is GRANTED, and Defendant’s

Cross-Motion is DENIED as to the following 32 standards, which Defendant shall
remove from its website and any other website within its possession, custody, or control:
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ASTM C518 (1991)
ASTM A36 (1977ae)
ASTM A36/A36M (1997ae1)
ASTM A307 (1978e)
ASTM A370 (1997 e2)
ASTM A475-78 (1984e1)
ASTM B224 (1980 e1)
ASTM C150 (1999a)
ASTM C177 (1997)
ASTM C236 1989 (1993)e1
ASTM C516 1980 (1996)e1
ASTM C549 1981 (1995)e1
ASTM D1246 1995 (1999)
ASTM D1518 1985 (1998)e1
ASTM D1785 (1986)
ASTM D1946 1990 (1994)e1
ASTM D4239 1997e1
2

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b.

ASTM D4891 1989 (1994)e1
ASTM D5489 (1996a)
ASTM D5865 (1998a)
ASTM D665 (1998e1)
ASTM D975 1998b
ASTM D975 2007
ASTM E145 (1994)e1
ASTM E695 1979 (1997)e1
ASTM F1007 1986 (1996)e1
ASTM F1020 1986 (1996)e1
ASTM F1193 (2006)
ASTM F1271 1990 (1995)e1
ASTM F1273 1991 (1996)e1
ASTM F808 1983 (1988)e1
ASTM G154 (2000a)

Both parties’ motions for summary judgment are GRANTED IN PART and

DENIED IN PART as to the following standard, and Defendant shall remove all portions of
this standard, other than the text of Test Methods A and B contained therein, from its website
and any other website within its possession, custody, or control:

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c.

ASTM D2036 (1998)

Plaintiffs’ Motion for Summary Judgment is DENIED, and Defendant’s

Cross-Motion is GRANTED as to the remaining 184 standards listed in the court’s Appendix
to the accompanying Memorandum Opinion.

d.

Plaintiffs’ Motion for Summary Judgment is DENIED, and Defendant’s

Cross-Motion is GRANTED as to Defendant’s use of Plaintiffs’ trademarked words.
Plaintiffs’ Motion for Summary Judgment is GRANTED, and Defendant’s Cross-Motion
is DENIED as to Defendant’s use of Plaintiffs’ trademarked logos.
e.

Plaintiffs’ Motion for a Permanent Injunction is GRANTED as to

Defendant’s use of its trademarked logos and DENIED as to Defendant’s use of its
standards and trademarked words. It is ORDERED that Defendant is permanently

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enjoined from all unauthorized use of Plaintiffs’ trademarked logos and Defendant shall
remove Plaintiffs’ trademarked logos from its website and any other website within its
possession, custody, or control.
6.

Neither Plaintiffs nor Defendant moved for summary judgment as to the

following 38 ASTM works (“Remaining Works”). See ECF 198 (seeking summary judgment
with respect to 217 of the copyrighted works listed in Appendix A to motion); ECF 198-2
(Appendix A to Plaintiffs’ motion for summary judgment listing 217 works at issue); ECF 202
(cross moving for summary judgment with respect to “the works listed in Appendix A to
Plaintiffs’ motion (Dkt. 198-2).
Designation
ASTM A516/A
516M
ASTM A520

ASTM A529
ASTM A618
ASTM B152
ASTM B193
ASTM B280
ASTM B858
ASTM C720
ASTM D257
ASTM D287

Edition
1990(1996)e1

Title
Standard Specification for Pressure Vessel Plates, Carbon
Steel, for Moderate and Lower-Temperature Service
1972(1985)
Standard Specification for Supplementary Requirements for
Seamless and Electric-Resistance-Welded Carbon Steel
Tubular Products for High-Temperature Service Conforming
to ISO Recommendations For Boiler Construction
1975
Standard Specification for Structural Steel with 42,000PSI
(290 Mpa) Minimum Yield Point (1/2 in. (12.7 mm) Maximum
Thickness
1974
Standard Specification for Hot-Formed Welded and Seamless
High-Strength Low-Alloy Structural Tubing
1997a
Standard Specification for Copper Sheet, Strip, Plate, and
Rolled Bar
1987
Standard Test Method for Resistivity of Electrical Conductor
Materials
1997
Standard Specification for Seamless Copper Tube for Air
Conditioning and Refrigeration Field Service
1995
Standard Test Method for Determination of Susceptibility to
Stress Corrosion Cracking in Copper Alloys Using an
Ammonia Vapor Test
1989(1994)e 1
Standard Specification for Spray Applied Fibrous Insulation
for Elevated Temperature
1991
Standard Test Method for DC Resistance of Conductance of
Insulating Materials
1992(1995)
Standard Test Method for API Gravity of Crude Petroleum and
Petroleum Products (Hydrometer Method)
4

Designation
ASTM D323

Edition
1958(1968)

ASTM D388
ASTM D413

1998a
1982(1993)e 1

ASTM D976

1991(1995)e 1

ASTM D1072
ASTM D1193
ASTM D1415
ASTM D1687
ASTM D2247

1990(1994)e 1
1977(1983)
1988(1994)
1992(1996)
1968(1973)

ASTM D2505

1988(1998)

ASTM D2908

1974

ASTM D3176
ASTM D3177

1989(1997)
1989(1997)

ASTM D4057

1995e 1

ASTM D4084

1994

ASTM D4420

1994

ASTM E29

1993a

ASTM E154

1968(1979)e 1

ASTM E168

1988

ASTM E775

1987(1992)

ASTM E1625

1994

ASTM E1719

1997

ASTM F1196
ASTM F1197

1994
1989(1994)e 1

Title
Standard Test Method for Vapor Pressure of Petroleum
Products (Reid Method)
Standard Classification of Coals by Rank
Standard Test Method for Rubber Property--Adhesion to
Flexible Substrate
Standard Test Methods for Calculated Cetane Index of
Distillate Fuels
Standard Test Method for Total Sulfur in Fuel Gases
Standard Specification for Reagent Water
Standard Practice for Rubber Property- International Hardness
Standard Test Methods for Chromium in Water
Standard Method for Testing Coated Metal Specimens at 100
Percent Relative Humidity
Standard Test Method for Ethylene, Other Hydrocarbons, and
Carbon Dioxide in High-Purity Ethylene by Gas
Chromatography
Standard Recommended Practice for Measuring Volatile
Organic Matter in Water by Aqueous-Injection Gas
Chromatography
Standard Practice for Ultimate Analysis of Coal and Coke
Standard Test Methods for Total Sulfur in the Analysis Sample
of Coal and Coke
Standard Practice for Manual Sampling of Petroleum and
Petroleum Products
Standard Test Method for Analysis of Hydrogen Sulfide in
Gaseous Fuels (Lead Acetate Reaction Rate Method)
Standard Test Method for Determination of Aromatics in
Finished Gasoline by Gas Chromatography
Standard Practice for Using Significant Digits in Test Data to
Determine Conformance with Specifications
Standard Methods of Testing Materials for Use as Vapor
Barriers Under Concrete Slabs and as Ground Cover in Crawl
Spaces
Standard Practices for General Techniques of Infrared
Quantitative Analysis
Standard Test Methods for Total Sulfur in the Analysis Sample
of Refuse-Derived Fuel
Standard Test Method for Determining Biodegradability of
Organic Chemicals in Semi-Continuous Activated Sludge
(SCAS)
Standard Test Method for Vapor Pressure of Liquids by
Ebulliometry
Standard Specification for Sliding Watertight Door Assemblies
Standard Specification for Sliding Watertight Door Control
Systems
5

Designation
ASTM F747

Edition
1997

ASTM F1950

1999

ASTM F1957

1999

7.

Title
Standard Terminology Relating to Amusement Rides and
Devices
Standard Specification for Physical Information to be
Transferred With Used Amusement Rides and Devices
Standard Test Method for Composite Foam Hardness
Durometer Hardness

ASTM voluntarily dismisses its claims concerning the Remaining Works with

prejudice and with Defendant’s consent.
8.

Defendant voluntarily dismisses its counterclaims concerning the Remaining

Works with prejudice and with ASTM’s consent.
9.

The parties shall each bear their own respective costs and fees, including

attorneys’ fees.
10.

The Court shall retain jurisdiction to enforce the terms of this Stipulated Order.
/s/ Jane W. Wise
J. Kevin Fee (D.C. Bar: 494016)
Jane W. Wise (D.C. Bar: 1027769)
DLA Piper (US) LLP
500 Eighth Street, N.W.
Washington, D.C. 20004
Tel: [phone]
Email: [e-mail]
[e-mail]

Date: June 21, 2024

Counsel For American Society For Testing
And Materials d/b/a ASTM International
Date: June 21, 2024

/s/ Rose L. Ehler
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
6

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.
/s/ Jeffrey S. Bucholtz
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]

Date: June 21, 2024

Counsel for American Society of Heating,
Refrigerating, and Air Conditioning Engineers
Date: June 21, 2024

/s/ Mitchell L. Stoltz
Andrew P. Bridges (USDC-DC AR0002)
[e-mail]
Matthew B. Becker (admitted pro hac vice)
[e-mail]
Armen N. Nercessian (pending pro hac vice)
[e-mail]
Shannon E. Turner (pending pro hac vice)
[e-mail]
FENWICK & WEST LLP
801 California Street
Mountain View, CA 94041
Telephone: [phone]
Facsimile: [phone]
Corynne McSherry (admitted pro hac vice)
[e-mail]
Mitchell L. Stoltz (D.C. Bar No. 978149)
7

[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
Facsimile: [phone]
David Halperin (D.C. Bar No. 426078)
[e-mail]
1805 9th Street NW
Washington, DC 20001
Telephone: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

SO ORDERED this _____ day of June, 2024.
______________________________________
HONORABLE TANYA S. CHUTKAN
United States District Judge

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CERTIFICATE OF SERVICE
I certify that on June 21, 2024, the foregoing document was filed with the clerk of this
Court via the CM/ECF system, which will notify all counsel of record.
/s/ Jane W. Wise
Jane W. Wise

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