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

Filing 39

REPLY to opposition to motion re #34 MOTION to Strike #21 Answer to Complaint, COUNTERCLAIM,, Jury Demand Only and Request for Oral Argument filed by AMERICAN SOCIETY FOR TESTING AND MATERIALS, AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC., NATIONAL FIRE PROTECTION ASSOCIATION, INC.. (Clayton, Michael)

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 TO STRIKE JURY DEMAND
Public Resource seeks to complicate a simple issue. Plaintiffs asserted copyright and
trademark infringement claims against Public Resource for which they are seeking only equitable
relief. Public Resource cannot and does not attempt to argue that it has a right to a jury trial
based on Plaintiffs’ claims. Instead, Public Resource contends that its counterclaim request for a
judicial declaration that it has not infringed Plaintiffs’ copyrights and trademarks is legal in
nature and provides an independent basis for a jury trial. However, Public Resource
mischaracterizes the relevant case law and simply ignores the numerous cases that have rejected
this very argument – even though Plaintiffs cited several such cases in their opening brief. In
fact, all courts who have considered this issue agree that an alleged infringer’s counterclaims for
non-infringement are equitable and do not give rise to a jury right when the intellectual property

owner only seeks equitable remedies for its infringement claims. Thus, Public Resource has no
right to a jury trial, and Plaintiffs’ motion to strike should be granted.
I.

Courts Have Held that an Alleged Infringer Has No Right to a Jury Based on
Declaratory Judgment Counterclaims Where the Intellectual Property Owner Seeks
Only Equitable Relief.
Contrary to Public Resource’s assertion, the issue of whether an alleged copyright and/or

trademark infringer has a right to a jury trial based on its counterclaims for declaratory judgment
is not an issue of first impression. In their opening brief, Plaintiffs cited two cases that are
directly on point and definitively reject Public Resource’s contention that its counterclaims for
declaratory judgment are legal claims that give it a right to a jury trial. In Toyota Motor Sales,
U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010), Toyota, the copyright and trademark
owner, sued alleged infringers who brought counterclaims seeking declarations of trademark
invalidity and non-infringement. The court affirmed the district court’s decision that the alleged
infringers had no right to a jury trial on their counterclaims because the intellectual property
owner had sought only an injunction. Id. at 1183-84. Likewise, in Emmpresa Cubana del
Tabaco v. Culbro Corp., 123 F. Supp. 2d 203, 211-12 (S.D.N.Y. 2000), also cited in Plaintiffs’
opening brief, the court struck the alleged infringer’s jury demand based on its counterclaim for
declaratory judgment that use of a trademark was non-infringing where the trademark owner’s
complaint raised only equitable claims.
Far from being an issue of first impression, as Public Resource asserts, this is a question
that multiple courts have considered only to reach the same conclusion: There is no right to a
jury trial based on an alleged infringer’s declaratory judgment claims when the plaintiff in the
underlying claim decides to seek only equitable relief.

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II.

Public Resource’s Declaratory Judgment Counterclaims Are Not Legal Claims.
Unable to find any precedent in its favor, Public Resource relies on patent cases that have

discussed the right to a jury trial in the context of a declaratory judgment claim. In Public
Resource’s telling, these patent cases hold that when there is a declaratory judgment
counterclaim, the determination of whether the claim is legal or equitable is determined “by
looking at whether legal remedies such as damages could have been sought.” Opp. at 3. Public
Resource argues that because Plaintiffs here could have chosen to pursue a legal remedy based
on their allegations of copyright and trademark infringement, Public Resource’s declaratory
judgment counterclaims must be characterized as legal. Opp. at 5-6. However, Public Resource
grossly mischaracterizes the cases from which it claims to have derived the proposition that its
counterclaims are legal claims. The very cases Public Resource cites actually provide further
support for Plaintiffs’ motion and for the proposition that Public Resource’s counterclaims are
equitable in nature because Plaintiffs decided to seek only equitable relief for their infringement
claims.
The main case on which Public Resource relies is In re Lockwood, 50 F.3d 966 (Fed. Cir.
1995), vacated sub nom. Am. Airlines, Inc. v. Lockwood, 515 U.S. 1182 (1995),1 in which the
alleged infringer brought counterclaims seeking a declaration of non-infringement and invalidity
of the patents in response to the patent owner’s allegations of patent infringement and claim for
damages. The court granted the defendant’s motion for summary judgment on its declaratory
claim for non-infringement and dismissed the patent owner’s infringement claim, which left only
the counterclaim for declaratory judgment regarding the validity of the patents. The patent
owner, not the alleged infringer, demanded that the issue of validity be tried to a jury. Id. at 968.
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Although Lockwood was vacated by the Supreme Court, Plaintiffs do not disagree with Public
Resource’s statement that its reasoning continues to be cited with approval.
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The court stated that whether there was a right to a jury would depend on whether there
would have been a right to a jury in a case determining patent validity prior to the merger of the
courts of law and equity. Id. at 973. The court explained that in eighteenth-century England and
in nineteenth-century America, a patent owner could raise allegations of patent infringement in
either an action at law or a suit in equity. “The choice of forum and remedy, and thus of the
method of trial, was left with the patentee” such that “it was the patentee who decided in the first
instance whether a jury trial on the factual questions relating to validity would be compelled.”
Id. at 976. As a result, the court held that the patent owner was entitled to the choice of whether
or not to have a jury decide the invalidity claim. Id.
Public Resource ignores Lockwood’s holding that it is the patent owner who decides
whether to have a jury trial on the issue of invalidity. Instead, Public Resource mischaracterizes
Lockwood as follows: “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.” Opp. at 4. Not only is this a misreading of Lockwood’s facts,
because the patent holder had in fact sought damages, but the Federal Circuit in a later case also
explicitly rejected this very characterization of Lockwood. In In re Technology Licensing
Corporation, another case that Plaintiffs cited in their opening brief, the Federal Circuit
explained:
Lockwood does not stand for the proposition that a counterclaim
for invalidity always gives rise to a right to a jury trial (for either
party) on the ground that it is an inverted infringement action and
that a patentee at common law had the right to a jury by filing an
infringement action and seeking damages. Instead, the more
accurate reading of Lockwood is that (1) it preserves to the
patentee the right to elect a jury by seeking damages in an
infringement action or counterclaim, and (2) the accused infringer
or declaratory judgment counterclaimant is entitled to a jury trial
only if the infringement claim, as asserted by the patentee, would
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give rise to a jury trial. Thus, if the patentee seeks only equitable
relief, the accused infringer has no right to a jury trial, regardless
of whether the accused infringer asserts invalidity as a defense . . .
or as a separate claim (as in this case).
In re Tech. Licensing Corp., 423 F.3d 1286, 1290-91 (Fed. Cir. 2005) (emphasis added). Thus,
contrary to Public Resource’s characterization, Lockwood held that, even when a declaratory
judgment action is brought by the alleged infringer, it is the intellectual property owner who has
the choice of whether to have a jury.
Public Resource also mischaracterizes the other case on which it relies for its novel
argument, Sanofi-Synthelabo v. Apotex, Inc., 2002 U.S. Dist. LEXIS 15345 (S.D.N.Y. Aug. 20,
2002). Public Resource claims that this case stands for the proposition that a “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.” Opp. at 4 (quotation omitted). In Sanofi,
the alleged infringer had not yet begun to sell the allegedly infringing product, so the patent
holder had suffered no damages and could not have pursued a legal remedy for patent
infringement. Id. at *20. The court stated that, in such a case, the patent holder would not have
had the option of bringing an action at law in the eighteenth century. Thus, in this limited
circumstance, the patent holder had no choice but to seek an equitable remedy and therefore had
no right to a jury. Id.
It does not follow from the Sanofi court’s holding, however, that there is always a right to
a jury whenever a patent holder could choose between bringing a legal or equitable claim.
Indeed, the Sanofi court recognized that in a typical case, the patent holder has the choice of
whether to pursue a legal or equitable remedy, and that there is no right to a jury trial if it
chooses to pursue only equitable remedies. Id. at *11 (discussing Lockwood’s reasoning that
patent holder’s choice of remedy was the deciding factor in whether a jury trial is available).
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Thus, contrary to Public Resource’s misleading parenthetical, the court in Sanofi did not hold or
imply that a jury trial would always be available if the patent holder could have chosen to pursue
a legal remedy.
Not only do the two cases that Public Resource cites fail to support its argument that an
alleged infringer who has brought a declaratory judgment counterclaim has a right to a jury trial
where the intellectual property owner has chosen to pursue only equitable remedies, several
courts have made it clear that the alleged infringer has no right to a jury trial in that
circumstance. As discussed above, in Toyota Motor Sales and Emmpressa Cubana del Tabaco,
courts held that an alleged infringer who brought a declaratory judgment counterclaim had no
right to a jury trial when the intellectual property owner sought only equitable relief with respect
to its infringement claims. 610 F.3d at 1183-84; 123 F. Supp. 2d at 211-12. Courts have reached
the same conclusion in the context of patent claims. In In re Technology Licensing, the Federal
Circuit stated definitively that there would be no right to a jury for either party in a scenario
much like the case at hand. The court stated:
[I]f [the patent holder] had filed a standard infringement action as
plaintiff and had requested only an injunction, neither [the patent
holder] nor [the alleged infringer] would have been entitled to a
jury trial, regardless of whether [the alleged infringer] raised
invalidity as a defense or in a counterclaim. By choosing the
equity route for its infringement action, [the patent holder] would
have ensured that neither claim would be triable to a jury.
423 F.3d at 1291. Likewise, in KAO Corp. v. Andrew Jergens Co., 2003 U.S. Dist. LEXIS 6677
(D. Del. Apr. 17, 2003), in response to allegations of infringement and a claim for damages, the
alleged infringer raised affirmative defenses and brought a counterclaim seeking declaratory
judgment of non-infringement and invalidity. Although the patent holder later withdrew its
claim for damages, the alleged infringer claimed to have a right to a jury trial based on its

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counterclaims. The court held that “an alleged infringer has no entitlement to a trial by jury by
virtue of pleading counter-claims asserting noninfringement and invalidity, claims which are
equitable in nature with no attendant right to damages.” Id. at *9.
Thus, the courts are in agreement that the accused infringer who is a declaratory
judgment counterclaimant is entitled to a jury trial only if the infringement claim asserted by the
intellectual property owner would give rise to a right to a jury trial. Here, Plaintiffs’
infringement claims seek only equitable relief and therefore Public Resource has no right to a
jury trial.
III.

Public Resource’s Lack of a Right to a Jury is Not Based on Artful Pleading or the
Sequence in Which the Parties Filed Their Claims.
Because Public Resource’s counterclaims are not legal in nature, Public Resource’s

remaining arguments are irrelevant. Specifically, Public Resource cites a number of cases in
which courts have held that the party who sues first cannot deprive the opposing party of its right
to a jury trial, a proposition with which Plaintiffs do not disagree. However, these cases are not
relevant because Plaintiffs do not rely on the sequence in which the claims were asserted in
support of their argument that Public Resource does not have a right to a jury.
For example, Public Resource cites Beacon Theatres v. Westover, 359 U.S. 500, 504
(1959), which held that the fact that a defendant raised its legal claims in the context of
counterclaims against a party who first initiated the litigation did not deprive the defendant of its
right to a jury. However, Beacon Theatres is not instructive here because the defendant’s right to
a jury trial was based on the fact that its counterclaims arose in law rather than in equity. In
contrast, as discussed above, Public Resource’s counterclaims are not legal in nature.
Similarly, Public Resource cites Pacific Indemnity Co. v. McDonald, 107 F.2d 446, 449
(9th Cir. 1939), which held that where an insurer brought an action seeking a declaration that it
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was not liable for injuries caused by a policy holder, the injured person had a right to a jury trial
because if she had brought the claim against the insurance company, her claim would have been
a legal claim. This case also is not relevant because Plaintiffs not only could have brought
claims against Public Resource seeking only equitable relief, they in fact did bring infringement
claims against Public Resource for which they seek only equitable relief.
Plaintiffs do not rely on “artful pleading” or the fact that they filed their claims before
Public Resource filed its declaratory judgment claim in support of their motion to strike Public
Resource’s jury demand. Instead, Public Resource has no right to a jury trial because neither
party has asserted a legal claim and the only remedies sought are equitable in nature. See
Wooddell v. Int’l Bhd. of Elec. Workers, 502 U.S. 93, 97 (1991); Crocker v. Piedmont Aviation,
Inc., 49 F.3d 735, 745 (D.C. Cir. 1995).
CONCLUSION
Every court that has considered this issue has concluded that an alleged infringer who has
asserted counterclaims for non-infringement has no right to a jury trial where the intellectual
property owner seeks only equitable remedies for its underlying infringement claim. Public
Resource provides no authority for its argument that it has a right to a jury trial based on its
counterclaims, an argument that has been considered and rejected resoundingly by the courts.
Although Plaintiffs could have sought substantial actual damages or statutory damages
from Public Resource based on its infringement of hundreds of copyrighted standards and
Plaintiffs’ registered trademarks, Plaintiffs made the decision not to seek damages. It was this
decision that dictates that Public Resource has no right to a jury trial. Thus, the Court should
strike Public Resource’s jury demand.

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Dated: September 5, 2014

Respectfully submitted,
/s/ Michael Clayton
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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CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing Plaintiffs’ Reply in Support
of Motion to Strike Jury Demand was served this 5th day of September, 2014 via CM/ECF upon
the following:
Counsel for Public.Resource.Org, Inc.:
Andrew Bridges
Kathleen Lu
David Halperin
Mitchell L. Stoltz
Corynne McSherry
Joseph Gratz
Mark Lemley

_/s/ Jordana Rubel______
Jordana Rubel

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