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

Filing 38

Memorandum in opposition to re #34 MOTION to Strike #21 Answer to Complaint, COUNTERCLAIM,, Jury Demand Only and Request for Oral Argument filed by PUBLIC.RESOURCE.ORG, INC.. (Attachments: #1 Text of Proposed Order)(Stoltz, Mitchell)

IN THE 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
DEFENDANT-COUNTERCLAIMANT
PUBLIC.RESOURCE.ORG, INC.’S
OPPOSITION TO PLAINTIFFS’
MOTION TO STRIKE JURY DEMAND
Action Filed: May 23, 2014

Plaintiffs-Counterdefendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant-Counterclaimant.
Defendant-Counterclaimant Public.Resource.Org, Inc. (“Public Resource”) has a Seventh
Amendment right to a jury trial on its declaratory judgment claims. Accordingly, Public
Resource opposes Plaintiff-Counterdefendants’ motion to strike the jury demand, and requests
oral argument.
Plaintiff-Counterdefendants have brought claims for injunctive relief as well as attorney
fees and costs, which they assert are equitable claims. Public Resource brought its own claims
for declaratory relief. Specifically, Public Resource seeks a declaration that Public Resource is
not liable for copyright infringement for the copying, publication, and reformatting of certain
safety codes in which Plaintiff-Counterdefendants claim rights, because those codes have been
incorporated into the law of one or more jurisdictions within the United States. That declaration
will necessarily affect Plaintiff-Counterdefendants’ right to any remedy, legal or equitable. This
is a jury matter, regardless of how Plaintiff-Counterdefendants have pled their affirmative
claims.
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The issue here is whether putative copyright holders can defeat the Seventh Amendment
rights of a party accused of infringement where the accused infringer seeks declaratory relief but
the putative rightsholders seek only equitable relief. This appears to be an issue of first
impression. Nonetheless, precedent provides an answer: given the importance of the right to a
jury trial, when one party brings a legal claim and requests a jury, the other party may not thwart
that request by bringing only equitable claims of its own. See, e.g., Beacon Theatres, Inc. v.
Westover, 359 U.S. 500, 510 (1959); Pac. Indem. Co. v. McDonald, 107 F.2d 446, 449 (9th Cir.
1939).
While Plaintiff-Counterdefendants’ claims for injunctive relief share common issues of
fact and some common legal issues with Public Resource’s declaratory judgment claims, they are
not mirror images of one another. Assuming arguendo the facts as pled in the Complaint,
Plaintiff-Counterdefendants could have brought a claim for damages. And given the existence of
an actual controversy, Public Resource could have brought declaratory judgment claims
regardless of the Plaintiff-Counterdefendants’ choice of remedy. Because the counterclaims
stand on their own, Plaintiff-Counterdefendants’ artful pleading cannot take away Public
Resource’s right to a jury trial on its counterclaims. The Court should deny PlaintiffCounterdefendants’ motion to strike the jury demand.
ARGUMENT
“Maintenance of the jury as a fact-finding body is of such importance and occupies so
firm a place in our history and jurisprudence that any seeming curtailment of the right to a jury
trial should be scrutinized with the utmost care.” Beacon Theatres, 359 U.S. at 501 (quoting
Dimick v. Schiedt, 293 U.S. 474, 486 (1935)).

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I.

Public Resource’s Declaratory Judgment Claims Are Legal Claims Entitled To Jury
Trial.
The character of a declaratory judgment claim is determined by looking at what sort of

claim would arise if the parties’ positions were reversed; i.e., if “the defendant has became [sic]
the plaintiff, and vice versa, the issues are ones which in the absence of the statute for
declaratory relief would be tried at law by a court and jury.” Pac. Indem. Co., 107 F.2d at 448;
see also James v. Pennsylvania Gen. Ins. Co., 349 F.2d 228, 230 (D.C. Cir. 1965);
AstenJohnson, Inc. v. Columbia Cas. Co., 562 F.3d 213, 223 (3d Cir. 2009). In these
circumstances “there is an absolute right to a jury trial” on the declaratory judgment claim. Pac.
Indem. Co., 127 F.2d at 448.
The issue presented here, in which the party accused of infringement seeks a jury trial
and the parties claiming infringement seek to avoid a jury, appears to be an issue of first
impression. Public Resource could find no similar case, and Plaintiff-Counterdefendants cite to
none. There are, however, numerous cases arising in the patent, antitrust, and insurance contexts
concerning the right to a jury trial on declaratory judgment claims where the party purporting to
hold a contractual or patent right seeks a jury trial, and the principles expressed in those cases
apply equally here.
First, the character of the hypothetical inverse of a declaratory judgment claim (which
controls whether the declaratory judgment claim is legal or equitable) is determined by looking
at whether legal remedies such as damages could have been sought. For example, in In re
Lockwood, 50 F.3d 966, 975 (Fed. Cir. 1995) vacated sub nom. Am. Airlines, Inc. v. Lockwood,

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515 U.S. 1182 (1995),1 the Federal Circuit held that a declaratory judgment claim asking the
court to declare a patent invalid would be decided by a jury even though the opposing party had
voluntarily dismissed its own claim for damages and the only other claims remaining in the suit
were equitable in nature. Id. at 976. Although the patent holder chose not to seek damages, the
availability of a damages claim made the alleged infringer’s declaratory judgment request a legal
claim, to which a jury right attached. Id. See also Sanofi-Synthelabo v. Apotex, Inc., 02-CIV2255 (RWS), 2002 WL 1917871, at *4 (S.D.N.Y. Aug. 20, 2002) (jury trial is available on
declaratory judgment of non-infringement where party claiming patent rights “could choose
either to pursue a legal or equitable remedy.”). Conversely, where “there exists no possibility
that damages could be awarded” to a patent holder (because the alleged infringement had not yet
commenced), a declaratory judgment claim by the alleged infringer was held to be equitable.
Shubin v. U.S. Dist. Court for S. Dist. of Cal., Cent. Div., 313 F.2d 250, 251 (9th Cir. 1963).
Second, where one party’s claims give rise to a Seventh Amendment right to a jury trial,
an opposing party cannot frustrate that right by artful pleading of its own claims. This is because
“the right to jury trial is a constitutional one . . . while no similar requirement protects trials by
the court.” Beacon Theaters, 359 U.S. at 510. Beacon Theaters accused Fox West Coast Theaters
of violating the Sherman Antitrust Act. Fox sued, seeking a declaration that its practices were
lawful and an injunction against further lawsuits. Beacon Theaters, the defendant which had
accused Fox of antitrust violations, counterclaimed for damages and demanded a jury trial. Id.

1

Although Lockwood was vacated by the Supreme Court without opinion, the Federal Circuit
reaffirmed its holding in Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331, 1340 (Fed. Cir.
2001); and Lockwood continues to be cited with approval. See, e.g., Sanofi-Synthelabo, 2002 WL
1917871, at *3 (S.D.N.Y. Aug. 20, 2002) (“The seminal case involving a right to a jury trial in
cases brought pursuant to § 271(a) is Lockwood.”); MedImmune, Inc. v. Genentech, Inc., 535 F.
Supp. 2d 1020, 1022 (C.D. Cal. 2008); Hoechst Marion Roussel, Inc. v. Par Pharm., Inc., Civ.
95-3673 (DRD), 1996 WL 468593, at *3-4 (D.N.J. Mar. 14, 1996).
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at 502-03. The district court declined to empanel a jury to decide whether Fox had violated the
Sherman Act, holding that Fox’s initial claims were purely equitable. In affirming a petition for
mandamus to require a jury trial, the Supreme Court held that “if Beacon would have been
entitled to a jury trial in a treble damage suit against Fox it cannot be deprived of that right
merely because Fox took advantage of the availability of declaratory relief to sue Beacon first.”
Id. at 504; see also Pac. Indem. Co., 107 F.2d at 449 (“[P]laintiff, by first bringing suit and thus
inverting the parties, could not deprive defendant of his right to a jury . . . while the legislature
had the power to grant the plaintiff the privilege of himself commencing the suit, it had not the
power to give him, and we think did not intend to give him, the privilege of thus depriving
defendant of his constitutional right.”); In re Envtl. Ins. Declaratory Judgment Actions, 693 A.2d
844, 856 (N.J. 1997) (“By ‘beating the plaintiff into court,’ the insurer cannot deprive that person
of a right to jury trial.”) (citation omitted).
These principles apply to the instant motion. Plaintiff-Counterdefendants’ purported
authorship and ownership of the standards at issue, Public Resource’s fair use defense, and other
foundational issues depend on “[q]uestions of historical fact” that are ordinarily heard by a jury.
Langman Fabrics v. Graff Californiawear, Inc., 160 F.3d 106, 111 amended, 169 F.3d 782 (2d
Cir. 1998); see also Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 560
(1985) (“Fair use is a mixed question of law and fact”). And while Public Resource denies
Plaintiff-Counterdefendants’ right to any remedy in this case, assuming arguendo the allegations
in their complaint, Plaintiff-Counterdefendants could have sought money damages. See
Complaint (ECF No. 1) ¶ 132. Because they “could choose either to pursue a legal or equitable
remedy” based on their allegations of copyright and trademark infringement, Sanofi-Synthelabo,

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2002 WL 1917871 at *4, Public Resource’s counterclaims for declaratory judgment of noninfringement must be characterized as legal. See Lockwood, 50 F.3d at 975.
Moreover, the presence in this suit of Plaintiff-Counterdefendants’ claims for injunction
and attorney’s fees does not transform Public Resource’s claims into equitable claims. Once
Plaintiff-Counterdefendants brought their claims in this lawsuit, Public Resource was compelled
to bring its own claims for declaratory relief as counterclaims in the same lawsuit. Fed. R. Civ. P.
13(a)(1). Because Public Resource’s claims, standing alone, sound in law, and could not be
asserted except as part of this lawsuit once Plaintiff-Counterdefendants brought their own claims,
Public Resource cannot be deprived of the right to jury trial simply because PlaintiffCounterdefendants sued first. Beacon Theaters, 359 U.S. at 510; Lockwood, 50 F.3d at 974-75
(“an inversion [of the parties’ status as plaintiff and defendant] cannot operate to frustrate
Lockwood’s Seventh Amendment rights.”).
The holdings of Beacon Theaters and Lockwood apply to Public Resource’s claims
because Public Resource’s claims are not mirror images of Plaintiff-Counterdefendants’ claims.
Plaintiff-Counterdefedants’ claims require a showing of irreparable harm to them, an absence of
substantial harm to Public Resource, and that the public interest favors an injunction. Davis v.
Pension Ben. Guar. Corp., 571 F.3d 1288, 1291 (D.C. Cir. 2009). Public Resource’s
counterclaims do not implicate these elements. Thus, it is entirely possible that PlaintiffCounderdefendants’ claims will be dismissed and that Public Resource’s claims will stand alone.
A dismissed claim can have no effect on the parties’ right to jury trial on remaining claims.
Lockwood, 50 F.3d at 969; In re Evangelist, 760 F.2d 27, 32 (1st Cir. 1985); Hildebrand v.
Board of Trustees, 607 F.2d 705, 710 (6th Cir. 1979). This further confirms that the legal nature
of Public Resource’s claims cannot be affected by Plaintiff-Counterdefendants’ own pleading.

6

While Plaintiff-Counterdefendants cite to James v. Pa. General Ins. Co. for the holding
that the nature of a claim depends on “whether the action is simply the counterpart of a suit in
equity,” 349 F.2d 228, 230 (D.C. Cir. 1965), they misconstrue it. Motion to Strike Jury Demand
4. The “counterpart” of a declaratory judgment claim is not the opposing party’s claims. It is,
rather, the equivalent claim that would have been brought before the merger of law and equity.
Id. at 231 (comparing declaratory judgment claim to the equivalent claim that could be
maintained “at common law”). Likewise, the “counterpart” of Public Resource’s declaratory
judgment claim is not Plaintiff-Counterdefendants’ claim. It is the claim that would have been
brought pre-merger. Because Plaintiff-Counterdefendants could have, given the allegations of
their complaint, claimed damages, the common law counterpart of Public Resource’s claims is a
legal claim.
II.

To Protect Public Resource’s Seventh Amendment Right With Respect To Its
Counterclaims, The Issues Of Copyright Validity And Alleged Infringement Must
Be Tried to a Jury.
This case involves both Plaintiff-Counterdefendants’ claims for injunction and Public

Resource’s requests for declaratory relief. Both depend in part on several foundational questions,
including whether Plaintiff-Counterdefendants in fact hold relevant copyrights, whether PlaintiffCounterdefendants knew of and encouraged the incorporation of standards into law, the facts
establishing Public Resource’s fair use defense, and other issues. Public Resource has a Seventh
Amendment right to jury trial on all aspects of its declaratory judgment claims, including these
determinations. Beacon Theatres, 359 U.S. at 506. Because a bench trial on these issues with
respect to Plaintiff-Counterdefendants’ infringement claims could determine the outcome of
Public Resource’s counterclaims by collateral estoppel, the Court should submit these issues to

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the jury. Id.2 With respect to Plaintiff-Counterdefendants’ claims, the jury’s determination can be
treated as advisory. See Dawson v. Contractors Transp. Corp., 467 F.2d 727, 730 (D.C. Cir.
1972); Nat’l Ass’n For Advancement of Colored People (NAACP) v. Acusport Corp., 226 F.
Supp. 2d 391 (E.D.N.Y. 2002); Fleming James, Jr., Right to A Jury Trial in Civil Actions, 72
YALE L.J. 655, 664 (1963) (“There is no reason, apart from history, why sharply disputed issues
of fact in [an equitable claim] should not be tried to a jury if that mode of trial is thought
preferable.”).
CONCLUSION
For the foregoing reasons, Public Resource is entitled to a jury trial, and the Court should
deny Plaintiff-Counterdefendants’ motion.
Dated: August 25, 2014

Respectfully submitted,
/s/ Mitchell L. Stoltz
Mitchell L. Stoltz (D.C. Bar No. 978149)
[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]
1530 P Street NW
Washington, DC 20005
Telephone: [phone]

2

Although Plaintiff-Counterdefendants are not entitled to any remedy in this case, the scope of
any hypothetical injunction following a jury’s determination of the facts would be determined by
the Court. See Educational Testing Servs. v. Katzman, 670 F. Supp. 1237 n.2 (D.N.J. 1987); 3
MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 12.10[A] (2014).
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Andrew P. Bridges (admitted)
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

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