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

Filing 41

MOTION to Compel Discovery by PUBLIC.RESOURCE.ORG, INC. (Attachments: #1 Text of Proposed Order Granting Defendant's Motion to Compel Discovery (Exhibit A), #2 Declaration of Kathleen Lu in Support of Defendant's Motion to Compel (Exhibit B), #3 Exhibit 1 to Decl of Kathleen Lu, #4 Exhibit 2 to Decl of Kathleen Lu, #5 Exhibit 3 to Decl of Kathleen Lu, #6 Exhibit 4 to Decl of Kathleen Lu, #7 Exhibit 5 to Decl of Kathleen Lu, #8 Exhibit 6 to Decl of Kathleen Lu, #9 Exhibit 7 to Decl of Kathleen Lu, #10 Exhibit 8 to Decl of Kathleen Lu, #11 Exhibit 9 to Decl of Kathleen Lu, #12 Exhibit 10 to Decl of Kathleen Lu, #13 Exhibit 11 to Decl of Kathleen Lu, #14 Exhibit 12 to Decl of Kathleen Lu, #15 Exhibit 13 to Decl of Kathleen Lu, #16 Exhibit 14 to Decl of Kathleen Lu, #17 Exhibit 15 to Decl of Kathleen Lu)(Bridges, Andrew)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
AMERICAN SOCIETY FOR TESTING AND
MATERIALS d/b/a ASTM INTERNATIONAL;

Case No. 1:13-cv-01215-TSC

NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and
AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR CONDITIONING
ENGINEERS,
Plaintiffs/Counter-Defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/Counter-Plaintiff.

DEFENDANT PUBLIC.RESOURCE.ORG, INC.’S
MOTION TO COMPEL DISCOVERY

Table of Contents
Page
I. 

INTRODUCTION .............................................................................................................. 1 

II. 

CASE BACKGROUND ..................................................................................................... 1 
A. 

Plaintiffs-Counterdefendants’ Claims and Public Resource’s
Counterclaims ......................................................................................................... 1 

B. 

Plaintiffs-Counterdefendants’ Deficient Responses to Public Resource’s
Discovery Requests. ................................................................................................ 2 

III. 

LEGAL STANDARD......................................................................................................... 3 

IV. 

ARGUMENT ...................................................................................................................... 4 
A. 

B. 

Individual Assignment of Rights Agreements Are Relevant to
Authorship and Ownership of the Works at Issue and PlaintiffsCounterdefendants’ Standing to Bring Infringement Claims
(RFP Nos. 2 and 6).................................................................................................. 6 

C. 

Documents Relating to Financial Contributions Are Also Relevant
to the Issue of Ownership if the Works at Issue
(RFP Nos. 4, 12, 13, 14, 15). .................................................................................. 7 

D. 

Documents Relating to This Litigation Represent the Core of
Relevant Documents And Plaintiffs-Counterdefendants Fail to
Carry Their Burden of Showing That Documents Are Subject to
Claims of Privilege (RFP Nos. 8, 9, 17 and 18). .................................................... 9 

E. 

Plaintiffs-Counterdefendants Are in a Superior Position to Identify
and Produce Documents Relating to Legal Authority Incorporating PlaintiffsCounterdefendants’ Standards (RFP No. 5).......................................................... 11 

F. 

V. 

Plaintiffs-Counterdefendants’ Licensing Agreements Are Relevant to
Their Revenues and to Public Resource’s Affirmative Defenses
(RFP No. 18). .......................................................................................................... 4 

Plaintiff-Counterdefendant NFPA’s ROP/ROC’s Are Not Responsive
to Numerous of Public Resource’s Requests (RFP Nos. 2, 4, 12, 13,
and 15). ................................................................................................................. 12 

CONCLUSION ................................................................................................................. 13 

RULE 37(a)(2) CERTIFICATE .................................................................................................. 14

i

Table of Authorities
Page(s)
CASES
*Alcatel USA, Inc. v. DGI Technologies, Inc.,
166 F.3d 772 (5th Cir. 1999) .....................................................................................................5
*Barnes & Noble, Inc. v. LSI Corp.,
C 11-02709 EMC LB, 2012 WL 6697660 (N.D. Cal. Dec. 23, 2012) ......................................5
*Cable & Computer Tech. v. Lockheed Sanders, Inc.,
175 F.R.D. 646 (C.D. Cal. 1997) ...............................................................................................4
*Feld v. Fireman’s Fund Ins. Co.,
991 F. Supp. 2d 242 (D.D.C. 2013) .........................................................................................10
*The Navajo Nation v. Peabody Holding Co., Inc.,
255 F.R.D. 37 (D.D.C. 2009)...................................................................................................10
*Practice Mgmt. Info. Corp. v. Am. Med. Ass’n,
121 F.3d 516 (9th Cir. 1997), amended, 133 F.3d 1140 (9th Cir. 1998) ...................................5
*TIG Ins. Co. v. Firemen’s Ins. Co. of Washington, D.C.,
718 F. Supp. 2d 90 (D.D.C. 2010) ...................................................................................3, 4, 11
*U.S. ex rel Pogue v. Diabetes Treatment Ctrs. of Am.,
235 F.R.D. 521 (D.D.C. 2006)...................................................................................................4
OTHER AUTHORITIES
Fed. R. Civ. P. 26(b)(1)....................................................................................................................3
Fed. R. Civ. P. 26 (b)(5)(A) ...........................................................................................................10

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I.

INTRODUCTION
Defendant Public.Resource.Org (“Public Resource”) moves to compel the production of

documents responsive to its First Set of Requests for Production of Documents to PlaintiffsCounterdefendants American Society For Testing and Materials (“ASTM”), National Fire
Protections Association, Inc. (“NFPA”) and American Society Of Heating, Refrigerating And
Air Conditioning Engineers (“ASHRAE”) (collectively “Plaintiffs” or “PlaintiffsCounterdefendants”). Plaintiffs chose to bring suit against Public Resource yet now seek to
avoid their own discovery obligations, without justification, by refusing to produce documents
that are relevant to Public Resource’s defenses and counterclaims. Moreover, withholding
categories of documents based only on unsupported assertions of privilege does not comport
with Plaintiffs-Counterdefendants’ discovery obligations under the Federal Rules.
II.

CASE BACKGROUND

A.

Plaintiffs-Counterdefendants’ Claims and Public Resource’s Counterclaims
Plaintiffs-Counterdefendants filed a Complaint against Public Resource on

August 6, 2013 regarding Public Resource’s posting of standards that have been incorporated
into public laws. See Complaint (“Compl.”), ¶ 112-134. On September 27, 2013, Public
Resource filed its answer alleging several affirmative defenses and counterclaims seeking
declaratory relief. See Counterclaim, ¶¶ 174-205, Affirmative And Other Defenses, ¶¶ 1-12
(ECF No. 21). Specifically, Public Resource seeks a declaration that its reproduction,
reformatting, and posting of the standards at issue do not constitute copyright infringement.
See Counterclaim, ¶¶ 187, 196-205. Public Resource further seeks a declaration that its
reproduction of Plaintiffs-Counterdefendants’ logos and names in the circumstances of this case
does not give rise to claims under the Lanham Act. See Counterclaim, ¶¶ 174-195.

1

B.

Plaintiffs-Counterdefendants’ Deficient Responses to Public Resource’s Discovery
Requests.
This motion arises because Plaintiffs-Counterdefendants have refused to produce many

unprivileged documents responsive to Public Resource’s Requests for Production. In accordance
with this Court’s December 31, 2013 Scheduling Order (ECF No. 30), Public Resource
propounded on each Plaintiff written discovery requesting relevant documents and information,
including a set of eighteen Requests for Production of Documents, a set of seven Interrogatories
and a single Request For Admission. See Declaration of Kathleen Lu in Support of Defendant
Public.Resource.Org, Inc.’s Motion to Compel (“Lu Decl.”), Ex. 2, Ex. 1-3. Public Resource
tailored its discovery requests to elicit documents and information relevant to the claims,
counterclaims, and affirmative defenses that the parties asserted.
Despite the clear relevance of the documents Public Resource seeks, PlaintiffsCounterdefendants now refuse to produce, or they attempt drastically to limit the production of,
several categories of highly relevant documents, including:


executed license agreements (RFP No 18), see Lu Decl., Exs. 1-6, 8, 11, 14, 15;



executed assignment of rights agreements (RFP Nos. 2, 6), see Lu Decl., Exs. 1-5,
8, 11, 14, 5;



documents and communications concerning financial contributions to PlaintiffsCounterdefendants (RFPs 4, 12, 13, 14, 15), see Lu Decl., Exs. 1-9, 11, 15;



documents and communications concerning the litigation or PlaintiffsCounterdefendants’ decision to take legal action against Public Resource and its
principal (RFPs 8, 9, 17, 18), see Lu Decl., Exs. 1-6, 7-9, 10, 11, 12, 14, 15.



documents concerning the laws that incorporate Plaintiffs-Counterdefendants’
standards (RFP 5), see Lu Decl., Exs. 1-9.

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Plaintiffs-Counterdefendants fail to provide any compelling justification for their
withholding or limiting the production of these documents. They simply assert boilerplate
burden and relevance objections. Moreover, Plaintiffs-Counterdefendants improperly seek to
withhold categories of documents based on the unremarkable assertion that some responsive
documents may be privileged. Rather than meeting their burden of providing a privilege log to
justify privilege assertions or otherwise show that most or many responsive documents are
privileged, Plaintiffs-Counterdefendants attempt to shirk their discovery obligations entirely.
The parties have met and conferred on the issues presented in this motion several times
over a period of many months in an attempt to reach an agreement without involvement of this
Court. Through the exchange of letters and lengthy phone conferences with PlaintiffCounterdefendants’ counsel since May 2014, Public Resource has brought these deficiencies to
Plaintiff-Counterdefendants’ attention. Throughout the process of meeting and conferring over
this motion, Public Resource has highlighted the clear relevance of the categories of documents
it seeks. To date, each of Plaintiff-Counterdefendants’ responses and productions has been
deficient, and the parties are at an impasse as to the proper scope of discovery.
III.

LEGAL STANDARD
The Federal Rules establish a broad right to discovery of “any non-privileged matter that

is relevant to any party’s claim or defense.” Fed. R. Civ. P. 26(b)(1). Courts have consistently
interpreted Rule 26 to allow wide-ranging discovery of all information reasonably calculated to
lead to the discovery of admissible evidence, regardless of whether the information is itself
admissible. TIG Ins. Co. v. Firemen’s Ins. Co. of Washington, D.C., 718 F. Supp. 2d 90, 96
(D.D.C. 2010); U.S. ex rel Pogue v. Diabetes Treatment Ctrs. of Am., 235 F.R.D. 521, 525 (D.D.C.
2006). Broad discovery serves to “ensure that litigation proceeds with ‘the fullest possible

3

knowledge of the issues and facts before trial.’” TIG Ins. Co, 718 F. Supp. 2d at 96. As such,
“[t]he party who resists discovery has the burden to show that discovery should not be allowed
and has the burden of clarifying, explaining, and supporting its objections.” Cable & Computer
Tech. v. Lockheed Sanders, Inc., 175 F.R.D. 646, 650 (C.D. Cal. 1997).
IV.

ARGUMENT
Plaintiffs-Counterdefendants brought this lawsuit but refuse to accept the consequence

that they must respond reasonably to Defendants’ efforts to obtain discovery to defend the
lawsuit. Plaintiffs-Counterdefendants refuse to produce numerous categories of documents
directly relevant to the claims and affirmative defenses at issue. They thus unfairly deprive
Public Resource of documents relevant to critical factual and legal issues without providing
justification. The weakness of Plaintiffs-Counterdefendants’ position is evident in the fact that
they have lodged boilerplate objections regarding relevance, the burden of searching for relevant
documents, and the burden of preparing a privilege log.
None of Plaintiff-Counterdefendants’ bare assertions provides any valid basis for their
withholding of entire categories of documents. Relevance has a broad sweep under Rule 26, and
Plaintiff-Counterdefendants cannot unilaterally cherry-pick which issues they deems most
relevant. Moreover, Plaintiff-Counterdefendants have failed to carry their burden of establishing
the documents they have withheld are properly subject to a claim of privilege. With fact
discovery drawing to a close, Public Resource will be greatly prejudiced if PlaintiffsCounterdefendants do not immediately comply with their discovery obligations in this case.
A.

Plaintiffs-Counterdefendants’ Licensing Agreements Are Relevant to Their
Revenues and to Public Resource’s Affirmative Defenses (RFP No. 18).
Public Resource’s Request No. 18 seeks “[a]ll documents constituting, comprising, or

concerning licenses with respect to any Work-At-Issue.” The specific terms of each such license

4

are relevant to many issues, including Plaintiffs-Counterdefendants’ revenues and the alleged
harm to Plaintiffs-Counterdefendants as a result of lost sales and licensing opportunities. The
alleged harm to Plaintiffs-Counterdefendants is in turn relevant to several of Public Resource’s
defenses, including whether Plaintiffs-Counterdefendants are entitled to injunctive relief, and the
market-harm analysis of the fair use defense. The license agreements also may shed light on
whether and on what terms Plaintiffs-Counterdefendants authorize government entities to
incorporate their works into law or otherwise use them, and whether PlaintiffsCounterdefendants assent to any such uses. Furthermore, license agreements are relevant to
show whether Plaintiffs-Counterdefendants license their works in a manner that violates public
policy, which affects Public Resource’s copyright and trademark misuse defenses. See, e.g.,
Practice Mgmt. Info. Corp. v. Am. Med. Ass’n, 121 F.3d 516 (9th Cir. 1997), amended, 133 F.3d
1140 (9th Cir. 1998)( restrictive software license constituted copyright misuse as a matter of
law); see also Alcatel USA, Inc. v. DGI Technologies, Inc., 166 F.3d 772, 794 (5th Cir.
1999)(same); Barnes & Noble, Inc. v. LSI Corp., C 11-02709 EMC LB, 2012 WL 6697660
(N.D. Cal. Dec. 23, 2012)(in patent infringement case, executed patent license agreements and
drafts relevant to the issue of infringement, granting motion to compel).
Plaintiffs-Counterdefendants have agreed to produce “representative samples” and
“form” versions of licensing agreements but refuse to produce copies of all executed license
agreements. See Lu Decl., Ex. 8, 12, 15. Plaintiffs-Counterdefendants have failed to provide
any compelling reason why these documents should be withheld, apart from bare assertions that
searching for and producing such licenses is an “extreme burden.” See Lu Decl., Ex. 8. Public
Resource, in attempt to offer a reasonable compromise, proposed to Plaintiff-Counterdefendant
NFPA that it produce a single form agreement for each license agreement, plus a list of

5

signatories thereto, provided that NFPA certifies that each form agreement does not differ from
the executed license agreements and subject to Public Resource’s right to request the executed
agreements for any particular signatories. See Lu Decl., Ex 14. NFPA has not indicated whether
it agrees to this compromise. See Lu Decl., ¶ 19. Consequently, Defendants seek an order from
this Court compelling Plaintiffs-Counterdefendants to produce all documents constituting,
comprising, or concerning licenses with respect to any standard at issue, including the executed
version of each license agreement.
B.

Individual Assignment of Rights Agreements Are Relevant to Authorship and
Ownership of the Works at Issue and Plaintiffs-Counterdefendants’ Standing to
Bring Infringement Claims (RFP Nos. 2 and 6).
Public Resource propounded several requests pertaining to Plaintiffs-Counterdefendants’

assignment of rights agreements. Specifically, Request No. 2 seeks documents sufficient to
establish a complete chain of title for each Work-At-Issue. Request No. 6 seeks “[a]ll documents
constituting, comprising, referring to, or evidencing agreements between PlaintiffsCounterdefendants and Persons who participated in the Standards process of each Work-AtIssue.” As with license agreements, Plaintiffs-Counterdefendants seek to restrict their
production to “form” agreements, including “form” assignment of rights and copyright release
agreements. See Lu Decl., Exs. 1-6, 8, 11, 12, 14, 15. NFPA will produce only screen shots of
the current click-through assignment agreement, and “current version[s]” of other agreements.
See Lu Decl., Ex. 6.
Individual assignment agreements are directly relevant to Plaintiffs-Counterdefendants’
claims of ownership over the standards at issue. This affects whether PlaintiffsCounterdefendants have standing to maintain their infringement claims. PlaintiffsCounterdefendants are national organizations that receive contributions of labor from thousands
of individuals nationwide in preparing their standards. The standards at issue were the work of
6

many authors, including both government and private-sector employees. Thus each individual
assignment is relevant to show whether a contributor to a standard actually assigned its rights in
that standard to a Plaintiff-Counterdefendant and to each Plaintiff-Counterdefendant’s
knowledge of the ownership of the standards at issue at the time those works became
incorporated into law. It is obvious that this critical factual investigation cannot be made by
looking at a form agreement, which does not evidence the assent of individual contributors, the
specific terms of the assignment, or any defects that may be present in an individual assignment.
Plaintiffs-Counterdefendant ASTM has asserted that the “real issue” is not the authorship
or ownership of the standards at issue, that Plaintiff-Counterdefendant cannot foresee how Public
Resource intends to review these documents, and that the requests are overly broad. See Lu Decl.,
¶ 13, Ex. 8, p.2. These determinations are not for Plaintiffs-Counterdefendants to make, especially
given the clear relevance of these documents to the claims and defenses in the case. Consequently,
Public Resource seeks an order compelling Plaintiffs-Counterdefendants to produce all documents
constituting, comprising, referring to, or evidencing agreements between PlaintiffsCounterdefendants and Persons who participated in the Standards process of each Work-At-Issue,
including each individual agreement.
C.

Documents Relating to Financial Contributions Are Also Relevant to the Issue of
Ownership if the Works at Issue (RFP Nos. 4, 12, 13, 14, 15).
Five of Public Resource’s document requests seek documents relating to Plaintiffs-

Counterdefendants’ “contributions”. Public Resource’s document requests define “contribution”
to include “financial support.” See Lu Decl., Exs. 1-3. Specifically, Public Resource’s Request
No. 4 requests documents “sufficient to identify all Contributions in support of the Standards
Process of each Work-At-Issue.” Request No. 12 requests documents concerning Contributions to
Plaintiffs-Counterdefendants “received from any government entity in connection with the

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Standards Process of each Work-At-Issue.” Request No. 13 requests documents concerning
Contributions to Plaintiffs-Counterdefendants “received from any not-for-profit entity (other than a
government entity) in connection with the Standards Process of each Work-At-Issue.” Request
No. 14 requests “documents constituting, comprising or concerning communications requesting
Contributions of any form from any person in connection with the Standards Process of each
Work-At-Issue.” Finally, Request No. 15 requests “documents concerning offers of Contributions
from any Person in connection with the Standards Process of each Work-At-Issue.”
Financial contributions are relevant to Plaintiffs-Counterdefendants’ speculative
allegations that they will suffer financial harm unless they can enforce copyright protection over
standards that have become incorporated into law. See Compl., ¶¶ 135-37. PlaintiffsCounterdefendants allege that most of their revenue comes from the sale and licensing of
standards, and that revenue from financial contributions trails far behind. See Compl., ¶ 136.
Plaintiffs-Counterdefendants allege that “[d]epriving Plaintiffs and other SDOs of this important
independent source of revenue would substantially diminish the quality of future standards.”
See Compl., ¶ 137. Financial contributions for the creation of standards are thus directly relevant
to whether Plaintiffs-Counterdefendants would in fact suffer the financial harm they allege.
Financial contributions are relevant to numerous other issues, including PlaintiffsCounterdefendants’ incentives to develop standards and whether Plaintiffs-Counterdefendants
receive direct financial contributions from government entities that incorporate their standards.
Financial contributions are also relevant to the ownership and authorship of the standards at
issue, and whether any of Plaintiffs-Counterdefendants’ standards may be a work for hire with
other entities owning the copyright. Finally, financial harm is relevant to whether PlaintiffsCounterdefendants are entitled to injunctive relief and to the fair use analysis.

8

Plaintiffs-Counterdefendants object to these requests, seeking to exclude documents
concerning “financial support”1 and attempting to limit the definition of contribution to
“assistance, advice or labor.” See Lu Decl., Exs. 8, 15. NFPA has agreed to produce only
“Reports on Proposals,” or “ROPs”, and “Reports on Comments”, or “ROCs”, neither of which
provide any information relating to financial contributions. See Lu Decl., Ex 6.
Because the discovery it seeks is entirely relevant, and reasonably tailored, to the claims
and defenses in the case, Defendant seeks an order compelling Plaintiffs-Counterdefendants to
produce all documents relating to contributions, including but not limited to contributions of
financial support.
D.

Documents Relating to This Litigation Represent the Core of Relevant Documents
And Plaintiffs-Counterdefendants Fail to Carry Their Burden of Showing That
Documents Are Subject to Claims of Privilege (RFP Nos. 8, 9, 17 and 18).
Plaintiffs-Counterdefendants refuse to produce a core of relevant documents: those relating

to this litigation or the possibility of taking legal action against Public Resource or its principal
Carl Malamud. Specifically, Public Resource’s Request Nos. 8 and 9 mirror PlaintiffsCounterdefendants’ Request No. 28 which requests “[a]ll documents regarding Carl Malamud”
and “[a]ll documents regarding Public Resource or its representatives (other than Carl Malamud),
including its legal representatives.” Public Resource’s Request No. 17 requests “[a]ll documents
constituting, comprising, or concerning communications by You regarding this dispute or
litigation.” Finally, Public Resource’s Request No. 16 requests “[a]ll documents constituting,
comprising, or concerning communications criticizing Your claims, statements, arguments, or
positions in this dispute or litigation.” Public Resource has clarified that this request requires only
1

ASHRAE further objects to Request No. 13 on the grounds that the request “requires
ASHRAE to reach a legal conclusion whether entities maintain a ‘not-for-profit’ status.”
Whether an entity is not-for-profit is not a legal question, and ASHRAE can rely on a
contributor’s own characterization of itself as not-for-profit.

9

the production of documents which relate to the matters in the Complaint and which are in
Plaintiffs-Counterdefendants’ possession, custody or control. See Lu Decl., Ex 9.
These types of requests are standard practice in litigation for the obvious reason that
documents and communications discussing the parties and the issues at dispute in a lawsuit are in
most cases some of the most relevant documents for purposes of discovery. These documents
are critically important to Public Resource’s counterclaims and defenses, such as fair use,
unclean hands, copyright misuse, trademark misuse, and lack of irreparable injury. In fact,
Requests Nos. 8 and 9 virtually mirror Plaintiffs-Counterdefendants’ own Request No. 28
seeking documents from Public Resource. Public Resource’s requests pertain to
communications that do not seek nor comprise legal advice and to which no privilege applies.
Public Resource believes that several of Plaintiffs-Counterdefendants’ custodians are likely to
have relevant, non-privileged documents relating to this litigation. See Lu Decl., ¶ 21.
Moreover, Plaintiffs-Counterdefendants bear the burden of justifying the withholding of each
document on privilege grounds. See Fed. R. Civ. P. 26 (b)(5)(A)2; see also Feld v. Fireman’s
Fund Ins. Co., 991 F. Supp. 2d 242, 251 (D.D.C. 2013)(a proponent of privilege bears the burden
of demonstrating that each document is properly withheld on grounds of privilege); see also
The Navajo Nation v. Peabody Holding Co., Inc., 255 F.R.D. 37, 46 (D.D.C. 2009)(same).
Under Rule 23, Plaintiffs-Counterdefendants must expressly assert grounds of privilege and
describe the nature of the withheld documents so that Public Resource can assess each claim
(i.e., a privilege log).

2

Federal Rule of Civil Procedure 26(b)(5)(A) is clear in its requirement that a party
withholding information otherwise discoverable on grounds of privilege must: “(i) expressly
make the claim; and (ii) describe the nature of the documents communications, or tangible
things not produced or disclosed—and do so in a manner that, without revealing information
itself privileged or protected, will enable other parties to assess the claim.”
10

Here, however, Plaintiffs-Counterdefendants have turned this burden on its head and
categorically excluded all responsive documents. This is a radical violation of the Federal Rules
and significantly prejudices Public Resource. Plaintiffs-Counterdefendants give no explanation
why all or even many communications from any time period that are responsive to this request
are privileged. Public Resource is entitled to all responsive, non-privileged documents, as well
as a privilege log describing the nature of all documents withheld on grounds of privilege.
TIG Ins. Co. v. Firemen’s Ins. Co. of Washington, D.C., 718 F. Supp. 2d 90, 96-97 (D.D.C.
2010) (compelling production of documents where burden placed on plaintiff in gathering
requested information and documents is outweighed by “the risk of leaving probative matters
unexplored.”). Plaintiffs-Counterdefendants violated their clear obligation by categorically
refusing to search for and produce any responsive documents and by refusing to produce a
privilege log for documents they withheld.
For these reasons, Public Resource seeks an order form this Court compelling PlaintiffsCounterdefendants to produce all documents relating to this litigation or the possibility of taking
legal action against Public Resource and its principal. In the alternative, this Court should require
that Plaintiffs-Counterdefendants produce all responsive non-privileged documents with a
contemporaneous detailed privilege log for any documents they withhold on grounds of privilege.
E.

Plaintiffs-Counterdefendants Are in a Superior Position to Identify and Produce
Documents Relating to Legal Authority Incorporating Plaintiffs-Counterdefendants’
Standards (RFP No. 5).
Public Resource’s Request No. 5 requests documents “sufficient to identify every Legal

Authority that incorporates each Work-At-Issue, either expressly or by reference”.3 PlaintiffsCounterdefendants ASTM and NFPA refuse to produce responsive documents, objecting that these
3

Public Resource’s requests define Legal Authority as “any governmental edict, rule,
regulation, law, or other binding authority or expression.”

11

documents are publicly available and the burden on the parties of identifying such documents is
equal. In the parties’ conversations, Plaintiffs-Counterdefendants have contended that they lack
documents or information relating to Legal Authority that incorporates their Standards.
Despite Plaintiffs-Counterdefendants’ objections, they are unquestionably in a superior
position to know and identify the laws that incorporate their standards. First, Public Resource is
not aware of all laws that incorporate the standards of standards development organizations such as
Plaintiffs-Counterdefendants. Second, even if Plaintiffs-Counterdefendants do not keep track of
standards which are incorporated into law, they may refer to their own communications with
government entities and other records. Compared to the burden on Public Resource, the burden on
Plaintiffs-Counterdefendants of searching for and producing responsive documents is likely to be
minimal.
For these reasons, Public Resource asks the Court to compel Plaintiffs-Counterdefendants
to produce documents sufficient to identify every Legal Authority that incorporates each
Work-At-Issue, either expressly or by reference.
F.

Plaintiff-Counterdefendant NFPA’s ROP/ROC’s Are Not Responsive to Numerous
of Public Resource’s Requests (RFP Nos. 2, 4, 12, 13, and 15).
In addition to other defective responses that it shares in common with the other Plaintiffs-

Counterdefendants, in response to numerous Public Resource requests Plaintiff-Counterdefendant
NFPA indicated that it would produce only “Reports on Proposals” (“ROPs”) and “Reports On
Comments” (“ROCs”). NFPA describes the documents as listing “the voting and non-voting
members of the relevant technical committee or committees, as well as the NFPA staff liaison.
They also identify the individuals or organizations who submitted Public Input during the ‘Input
Stage’ stage of the standard revision process, and the individuals or organizations who submitted

12

Public Comment during the ‘Comment Stage’ of the process, and they detail the response of the
relevant technical committee to each Public Input and Public Comment.” See Lu Decl., Ex. 6.
The ROPs and ROC, however, fail to respond adequately to several of Public Resource’s
requests, because they are simply summaries of the actual communications or documents that
some of Public Resource’s requests for production seek, and they do not include the actual
communications or documents themselves. By contrast, for example, Public Resource’s Request
No. 10 calls for actual communications, including meeting and conference call minutes and
notes. Moreover, Public Resource’s Requests Nos. 12, 13, and 15 call for all responsive
documents and communications, not simply summaries. Moreover, ROPs and ROCs do not
provide information relating to financial contributions, as Requests Nos. 4, 12, 13 and 15 sought.
For these reasons Public Resource asks the Court to compel Plaintiff-Counterdefendant
NFPA to produce all documents, not just Reports on Proposals and Reports on Comments, that
respond to Request Nos. 2, 4,12, 13, and 15.
V.

CONCLUSION
Public Resource’s document requests focused narrowly on extremely important

information. Plaintiffs-Counterdefendants’ objections are wholly improper and dilatory, and
Public Resource made no significant progress in seeking compliance by PlaintiffsCounterdefendants. Public Resource respectfully requests that the Court grant this motion to
compel and order Plaintiffs-Counterdefendants to produce all responsive documents.

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Dated: September 14, 2014

Respectfully submitted,
/s/ Andrew P. Bridges
Andrew P. Bridges (admitted)
[e-mail]
Kathleen Lu (Admitted Pro Hac Vice)
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Telephone: [phone]
Facsimile: [phone]
David Halperin (D.C. Bar No. 426078)
[e-mail]
1530 P Street NW
Washington, DC 20005
Telephone: [phone]
Mitchell L. Stoltz (D.C. Bar No. 978149)
[e-mail]
Corynne McSherry (Admitted Pro Hac Vice)
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant/Counter Plaintiff
Public.Resource.Org, Inc.
RULE 37(a)(2) CERTIFICATE

I hereby certify, pursuant to Fed. R. Civ. P. 37(a)(2), that I have made a good faith effort
to confer with Plaintiffs in an attempt to resolve this dispute.

/s/ Andrew P. Bridges
Andrew P. Bridges

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