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

Filing 35

Consent MOTION to File Reply Brief out of Time re #33 Response to motion, by AMERICAN SOCIETY FOR TESTING AND MATERIALS, AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC., NATIONAL FIRE PROTECTION ASSOCIATION, INC. (Attachments: #1 Exhibit Plaintiffs' Reply in Support of Motion for Protective Order, #2 Text of Proposed Order)(Fee, J.)

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’ REPLY IN SUPPORT OF MOTION FOR PROTECTIVE ORDER
Plaintiffs are the developers of original, technical standards whose purpose is to advance
public safety, ensure compatibility across products and services, facilitate training, and spur
innovation. In flagrant violation of copyright laws and Plaintiffs’ rights, Defendant Public
Resource engaged in wholesale copying of Plaintiffs’ copyrighted standards, posted them in
downloadable format on its website, and encouraged the public to make further copies and create
derivative works based on the standards.
Notwithstanding Public Resource’s justifications for its conduct, this case is not about
providing the public with access to the law or enabling the public to engage with the law.
Plaintiffs make all of their standards that have been incorporated by reference in federal
regulations available to the public at no cost on a read-only basis. In addition, Plaintiffs sell
paper and electronic copies of their standards to the general public at reasonable prices. Thus,

contrary to Defendant’s claims, Plaintiffs’ standards already are available to members of the
public who are interested in understanding, interpreting, and commenting on them.
Instead, this case is about a one-man organization which seeks to invalidate the
copyrights in Plaintiffs’ standards and disrupt an established private standards development
system that provides substantial public benefits, including safety, efficiency, and costs savings,
to government entities and to the public in general.
Having forced Plaintiffs to bring this lawsuit to protect their intellectual property rights
by engaging in widespread copying of their standards, Public Resource now objects to certain
provisions in Plaintiffs’ reasonable and balanced proposed protective order. Meanwhile, the
provisions that Public Resource insists upon would provide its sole employee with access to
Plaintiffs’ highly confidential financial and strategic documents, which he has no need to see and
which would expose Plaintiffs to significant harm, would place overly burdensome requirements
on Plaintiffs when they seek to protect their confidential information, and would put Public
Resource in a position to be able to broadcast to the general public all manner of information it
obtains from Plaintiffs in discovery. As a result, the Court should reject Defendant’s proposed
terms and enter Plaintiffs’ proposed protective order.
I.

Good Cause Exists for Restricting Mr. Malamud’s Access to Plaintiffs’ Highly
Confidential Documents.
A. Allowing Mr. Malamud to Access Plaintiffs’ Highly Confidential Documents
Will Cause Harm to Plaintiffs.

Public Resource does not dispute that a two-tiered protective order is appropriate where

the parties are competitors. Yet Public Resource is competing with Plaintiffs by offering itself
up as a source through which members of the public can download copies of hundreds of
Plaintiffs’ standards that they would otherwise obtain directly from Plaintiffs or their authorized

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resellers. The standards Plaintiffs create and sell are the source of the vast majority of their
revenue. Public Resource is not only competing with Plaintiffs, but competing with themby
making unauthorized copies of Plaintiffs’ most important products. For this reason alone, a twotiered protective order is warranted. See Alexander v. FBI, 1998 U.S. Dist. LEXIS 11489, *11
(D.D.C. 1998) (stating that it is appropriate to limit disclosure of highly sensitive information to
attorneys and experts when there is a risk that a party might use it to gain competitive
advantage). There is also a risk that, in the course of his regular communications with reporters
and other members of the public about this legal issue and specifically about Plaintiffs, Mr.
Malamud would disseminate, even inadvertently, Plaintiffs’ highly confidential information to
others who would use it to gain a competitive advantage over Plaintiffs. See id.; see also FTC v.
Exxon Corp., 636 F.2d 1336, 1350 (D.C. Cir. 1980) (even most rigorous efforts to preserve
confidentiality may fail because “it is very difficult for the human mind to compartmentalize and
selectively suppress information once learned, no matter how well-intentioned the effort may be
to do so”).
Mr. Malamud has demonstrated that he will disregard the law when he disagrees with it,
including by posting copyrighted materials on his website because of his belief that they should
not be protected by copyright. Motion at 7-8. Public Resource maintains that Mr. Malamud
only posts materials that have been incorporated into law. Opp. at 7. However, Plaintiff ASTM
has informed Public Resource through its discovery responses that Public Resource has in fact
posted some standards that have not been incorporated into law and Mr. Malamud has not
removed those standards from his website. See, e.g., May 23, 2014 letter from ASTM’s counsel
to Public Resource’s counsel regarding ASTM’s response to Interrogatory No. 1, attached as

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Exhibit A. Thus, Mr. Malamud has provided Plaintiffs and the Court with ample cause for
concern regarding his intent to comply with a protective order.
B. Defendant Will Suffer No Prejudice If Mr. Malamud Cannot View Plaintiffs’
Highly Confidential Documents.
Contrary to Public Resource’s assertions, Public Resource’s ability to defend itself in this
lawsuit will not be prejudiced if Mr. Malamud cannot access the very narrowly defined category
of Plaintiffs’ Highly Confidential information. Public Resource itself described the dispute in
the case as a legal issue of “whether it violates copyright law to post national codes that federal
and state governments have incorporated into their laws.” Opp. at 1. Public Resource’s ability
to present a legal argument on this issue does not depend on Mr. Malamud’s ability to view
documents that reveal the Highly Confidential information of Plaintiffs, which are limited to
“personal, technical, scientific, business or financial information” such as trade secrets, sales,
business strategy and planning information, and commercial and financial information. See
Plaintiffs’ Proposed Order at ¶ 1(b).
Public Resource’s assertion that “Mr. Malamud is an expert in the processes of standards
development and the operations of standards organizations, including Plaintiffs,” Opp. at 3, is
not credible. The knowledge Mr. Malamud allegedly has gained about Plaintiffs’ operations and
personnel through the work he has done at Public Resource on the issues related to this litigation
does not give him the experience or expertise necessary to meet the onerous requirements to
qualify as an expert on the procedures and operations of standards development organizations in
general or of Plaintiffs specifically. See generally Kumho Tire Co. v. Carmichael, 526 U.S. 137
(1999); Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993).
While Mr. Malamud may have been involved in task forces or committees that drafted
“standards” relating to the Internet, his reliance on that involvement does not make him an expert
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on Plaintiffs’ standards at issue in this case, which are voluntary consensus standards accredited
by the American National Standards Institute (“ANSI”). The hallmark of ANSI-accredited
Standards Development Organizations (“SDOs”) is adherence to a set of requirements or
procedures that foster openness, a balance of representation from different sectors, consensus,
and due process. Mere involvement in a task force that drafted non-ANSI accredited
“standards” does not make one an expert on voluntary consensus standards or the specific SDOs,
such as Plaintiffs, who develop such standards. Public Resource also does not point to any
particular training or education Mr. Malamud has received related to SDOs like Plaintiffs. Thus,
Mr. Malamud is in no way qualified to testify as an expert on issues related to SDOs in general
or on Plaintiffs’ operations or personnel in particular. Contrary to Public Resource’s argument,
Mr. Malamud, a non-lawyer, is also not qualified to opine on the issue of the process of
incorporation by reference into federal and state regulations, which is an issue of administrative
law.
Public Resource baldly asserts that Mr. Malamud’s expertise is “most necessary with
respect to documents concerning Plaintiffs’ finances and strategic planning,” Opp. at 9.
However, Public Resource fails to provide any basis for claiming that Mr. Malamud has expert
qualifications with regard to finances or the strategic planning of SDOs like Plaintiffs, which are
the types of documents that potentially could be classified as Highly Confidential. Public
Resource’s counsel also provides no explanation as to why to litigate this case effectively it
requires Mr. Malamud’s input, as opposed to that of any other potentially qualified expert, on
Plaintiffs’ financial and strategic information.
As Plaintiffs made clear in the parties’ meet-and-confer discussions on this topic, in the
unlikely event that there are specific documents that Public Resource’s counsel believes it cannot

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understand without Mr. Malamud’s expertise, Plaintiffs are willing to consider whether to
consent to Mr. Malamud viewing such documents on an ad hoc basis. If the parties are unable to
reach an agreement on these individual documents, they can seek the Court’s intervention. This
process provides a sensible and practical means of addressing any dispute.
Whereas Plaintiffs have established that the parties are competitors and there is a
substantial risk of harm to Plaintiffs if their highly confidential documents or information were
viewed by Mr. Malamud, and Public Resource has not shown any prejudice to its ability to
litigate this case if Mr. Malamud cannot view this information, a two-tiered protective order is
warranted.
II.

The Protective Order Should Not Require a Written Justification for Each
Confidentiality Designation.
Public Resource’s proposal that a party must draft a statement explaining which specific

facts or elements within the designated material are confidential and why the confidentiality
designation is warranted for every document it designates as Confidential demonstrates that
Public Resource’s intention to make the designation process prohibitively burdensome for
Plaintiffs. Public Resource is unable to point to a single case in which a court has entered a
protective order that requires a party to go through such a burdensome process to protect its
confidential information, and Plaintiffs are aware of no such case. None of the model orders
Public Resource submitted with its Opposition includes this type of provision.
Public Resource also speculates that Plaintiffs will take overly aggressive positions when
making confidentiality designations. Yet Public Resource fails to establish that the provisions
Plaintiffs proposed to address precisely this concern are inadequate. Indeed, in Plaintiffs’
proposed protective order, before designating information as confidential, a party must: (1) have
a good faith belief that the material is in fact Confidential; and (2) make a reasonable inquiry to
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determine whether the material is Confidential. These provisions, which courts routinely include
in protective orders, are more than sufficient to prevent misuse of confidentiality designations,
which is any event purely speculative. Thus, the Court should not enter a protective order that
includes this unprecedented, burdensome requirement.
III.

The Party Challenging a Confidentiality Designation Should Be Required to Bring a
Motion Raising That Challenge.
As explained in Plaintiffs’ opening brief, the parties differ considerably in size and in

their missions and activities, such that Plaintiffs are much more likely than Public Resource to
possess confidential documents warranting protection. The provisions Public Resource has
proposed make clear Public Resource’s intent to take aggressive positions in challenging
Plaintiffs’ confidentiality designations. It is therefore no surprise that Public Resource proposes
that the designating party be required to bring a motion to preserve the confidentiality of any
material whose designation has been challenged.
However, the more practical and efficient procedure is for the party challenging the
designation to be required to bring the motion. This will ensure that the party will only challenge
designations where it claims a real need to disclose the document to individuals who are
otherwise not permitted to view it and where the party has a legitimate basis for challenging the
designation. Plaintiffs’ proposed protective order would not shift the burden of demonstrating
good cause for a Confidentiality designation to the moving party; Plaintiffs’ proposed order
explicitly states that the burden of proving that a document is confidential or highly confidential
remains with the party asserting such confidentiality or high confidentiality. Plaintiffs’ Proposed
Order at ¶ 3.

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The Court should reject Public Resource’s proposal, which would increase the demand
on the Court’s limited resources, and would provide Public Resource with unwarranted tactical
advantages related to the timing of its challenges of confidentiality designations.
IV.

Use of Information Obtained in Discovery Should be Limited to This Litigation.
Plaintiffs have requested that the Court include a provision in the protective order that:

“The Parties and their attorneys shall not use any information or documents obtained during
discovery in this matter, regardless of whether the information and/or documents are designated
Confidential, Highly Confidential, or are not assigned any confidentiality designation, for any
purpose other than preparing for and conducting this litigation, including any appeals.”
Plaintiffs’ Proposed Order at ¶ 7. This Court entered an order containing very similar language
in Klayman v. Judicial Watch where the plaintiff was engaged in ongoing fundraising and
advertising relating to the subject of the litigation. 2007 U.S. Dist. LEXIS 88044, *23 (D.D.C.
Dec. 3, 2007) (“the Court shall issue an Order limiting the use of any information obtained
during discovery in this matter to the strict context of this litigation.”). A similar order is
warranted here, where Mr. Malamud regularly writes and tweets about the subject of this
litigation, including in connection with fundraising activities. See, e.g.,
https://www.kickstarter.com/projects/publicresource/public-safety-codes-of-the-world-stand-upfor-safe/posts/641022 (Public Resource’s effort on Kickstarter.com to raise $100,000 based on
his copying of ASTM standards).
Public Resource indicated that it would agree to refrain from using Bates-stamped
versions of documents produced in this action for any purpose other than this litigation.
Plaintiffs’ proposed provision simply adds that Public Resource also agree not to use information
obtained in discovery, including deposition testimony and written discovery responses, for any

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purpose other than this litigation. Public Resource has provided no compelling reason why this
addition would be objectionable.
CONCLUSION
For the foregoing reasons, Plaintiffs respectfully request that the Court grant Plaintiffs’
Motion and enter Plaintiffs’ proposed protective order.

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Dated: August 13, 2014

Respectfully submitted,
/s/ J. Kevin Fee
Michael F. Clayton (D.C. Bar: 335307)
J. Kevin Fee (D.C. Bar: 494016)
Jordana S. Rubel (D.C. Bar: 988423)
Morgan, Lewis & Bockius LLP
1111 Pennsylvania Ave., N.W.
Washington, D.C. 20004
Telephone: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
Counsel For American Society For Testing And Materials
d/b/a/ ASTM International
/s/ Kelly Klaus
Anjan Choudhury (D.C. Bar: 497271)
Munger, Tolles & Olson LLP
355 South Grand Avenue, 35th Floor
Los Angeles, CA 90071
Tel: [phone]
Email: [e-mail]
Kelly M. Klaus
Jonathan H. Blavin
Munger, Tolles & Olson LLP
560 Mission St., 27th Floor
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
[e-mail]
Counsel for National Fire Protection Association, Inc.
/s/ Kenneth Steinthal
Jeffrey S. Bucholtz (D.C. Bar: 452385)
King & Spalding LLP
1700 Pennsylvania Avenue, NW, Ste. 200
Washington, DC 20006-4707
Tel: [phone]
Email: [e-mail]
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Kenneth L. Steinthal
Joseph R. Wetzel
King & Spalding LLP
101 Second Street, Ste. 2300
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
[e-mail]
Counsel for American Society of Heating, Refrigerating,
and Air Conditioning Engineers

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EXHIBIT A