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)

EXHIBIT 9

May 25, 2014

ANDREW P. BRIDGES

EMAIL [e-mail]
Direct Dial [phone]

VIA E-MAIL
Kelly M. Klaus
Jonathan H. Blavin
Michael J. Mongan
MUNGER, TOLLES & OLSON LLP
560 Mission St., 27th Floor
San Francisco, CA 94104

Kenneth L. Steinthal
Joseph R. Wetzel
KING & SPALDING LLP
101 2nd Street, Suite 2300
San Francisco, CA 94105

Anjan Choudhury
MUNGER, TOLLES & OLSON LLP
355 South Grand Avenue, 35th Floor
Los Angeles, CA 90071

Jeffery S. Bucholtz
KING & SPALDING LLP
1700 Pennsylvania Avenue NW, Suite 200
Washington, D.C. 20006

Re:

ASTM et. al v. Public.Resource.Org Discovery Responses

Counsel,
After meeting and conferring with Plaintiffs on May 7th regarding discovery disputes we
outlined in Public.Resource.Org’s (Public Resource’s) and Plaintiffs’ discovery letters on May
2nd, Public Resource now states its positions on these issues with the objective of reaching an
amicable solution.
1.

Issues Addressed in Plaintiffs’ Letter of May 2, 2014
(a)

Definition of a “copy”

As used in the Copyright Act, the word “copies” has a specific definition under 17 U.S.C.
§ 101 and refers solely to material objects. For this reason, Public Resource objects to Plaintiffs’
use of the word “copy” in reference to non-material objects, and also to Plaintiffs’ use of the
word “copying.” Public Resource has suggested to Plaintiffs that they use the word “reproduce”
or “reproductions” instead, and it reiterates its offer to respond to any discovery requests where it
had previously objected to the word “copy” or “copying,” if Plaintiffs provide an amended
version of those requests that replaces the disputed terms accordingly.
(b)

Definition of Trademark “Use” and “Trademarks”

The term “use” when referring to trademarks has a specific function under the Lanham

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Page 2
Act, where the definition of “use in commerce” refers to particular types of “use.” Public
Resource objects to any reference to trademark “use” that goes beyond the types of “uses” that
the “use in commerce” definition incorporates (apart from the “commerce” requirement). As
above, Public Resource would be amenable to Plaintiffs’ providing amended requests with
substitute wording such as “appear” or “include.”
Based on the call, Public Resource believes the parties can agree to a definition of
“Plaintiffs’ Trademarks” to refer to the federally registered marks that paragraphs 61, 79, and 94
the Complaint specifically list. To the extent that Plaintiffs seek discovery on names or logos
that they have not federally registered, Public Resource would be open to amendments to the
requests that list the specific names, terms, or logos regarding which Plaintiffs seek discovery.
(c)
“Downloading,” Rekeying Text,” “Converting Graphics,” Resetting Mathematical
Formulas,” and “Financial Contributions”
Public Resource has objected to these terms as being undefined and vague. Nevertheless,
as Public Resource has informed Plaintiffs, it has not withheld production of any documents on
the basis of this objection but has instead responded by interpreting these terms as best it can.
Public Resource believes this clarifies the issue and there is no further dispute as to this issue at
this time.
(d)

The Public Resource Websites

Public Resource identified the websites relevant to this litigation as public.resource.org,
bulk.resource.org, and law.resource.org.
Other websites that relate to Public Resource’s mission to provide public domain
materials to the public include: house.resource.org, bugs.resource.org (now inoperative),
pacer.resource.org (now inoperative), wwlbd.org, yeswescan.org, and archimedespalimpsest.net.
In addition, Carl Malamud also operates or has participated in the operation of the
following websites. Defendant identifies these websites in the spirit of cooperation so that
Plaintiffs may satisfy themselves that there is no relevant information in them:
museum.media.org, town.hall.org, igotf.org, my.phone.org, infinite.simians.net,
mappa.mundi.net, north.pole.org, fax.org, park.org, trusted.resource.org, undesign.org, and
betterdogfood.com.
(e)
Rights of Privacy, Free Speech, and Free Association, and Plaintiffs’ Request for
Production Nos. 8, 9, and 12
As Public Resource has asserted throughout this litigation, it intends to maintain the
constitutionally protected privacy, free speech, and free association rights of its members and

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Page 3
donors. Public Resource is a non-partisan organization dedicated to ensuring equal protection
before the law by improving transparency and access to public domain documents. This has
proven to be a polarizing issue, and it is foreseeable that revealing the identities of donors to
Public Resource, particularly those who work in government or in the industries that relate to
Plaintiffs’ standards, could provoke reprisals against the donors by employers or associates.
Plaintiffs have requested the names of all donors to Public Resource since the date when it first
posted one of the standards at issue on its website (Plaintiffs Requests for Production Nos. 8 and
9) as well as communications with donors regarding copying of the standards at issue (Plaintiffs
Requests for Production No. 12), but Plaintiffs have provided no compelling reason for needing
access to such a complete list of Public Resource’s donors. Although Plaintiffs indicated they
may wish to question some donors, Plaintiffs also conceded that they were not seeking to depose
every person who has donated. Public Resource has already offered to conduct a broad search
for documents (see below regarding Request No. 28) that would include communications that
refer to Plaintiffs or the standards at issue, including communications with donors, so there is no
compelling reason for Plaintiffs to seek additional donor information. Although Public Resource
maintains the importance of these constitutionally protected rights of its donors, in the spirit of
cooperation Public Resource has agreed to provide documents sufficient to identify the date and
amount of any donations that specifically mention the standards at issue that Public Resource
received after the standards at issue first became available on the Public Resource website.
(f)

Production of Documents in the Custody of Carl Malamud

Public Resource will produce documents in the custody of its sole employee, Carl
Malamud.
(g)

Plaintiffs’ Request for Production No. 6

Public Resource has agreed to produce documents that explain the process Public
Resource employed to reformat the standards at issue. Beyond that, however, Plaintiffs have
requested all documents relating to the reformatting of the standards at issue. Public Resource
objects to this request, among other reasons, because it will be unduly burdensome to produce all
such documents. Public Resource will not produce every single document that could possibly
relate to the reformatting of the standards at issue or references the procedures used.
Nevertheless, Public Resource is willing to conduct a reasonable search and to produce all
documents directly relating to the reformatting of the particular standards at issue.
(h)

Plaintiffs’ Request for Production Nos. 15-25

Public Resource objects to Plaintiff’s Requests for Production Nos. 15-25, which seek all
documents related to Public Resource’s counterclaims and defenses, on the grounds that these
requests seek attorney work product, including the mental impressions of its attorneys. In
addition, these requests are premature in that Public Resource is still in the process of

May 25, 2014
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researching and developing its counterclaims and defenses, and the vast majority of the
documents responsive to this request are in Plaintiffs’ possession, not Public Resource’s
possession.
(i)

Plaintiffs’ Request for Production No. 28

In its response to Plaintiffs’ RFP No. 28, Public Resource offered to produce responsive,
non-privileged documents that expressly refer to the name of any Plaintiff, to the extent that such
documents exist, relate to the matters specifically alleged in the Complaint, and can be located
after a reasonable search for documents in Public Resource’s possession, custody, or control,
subject to Plaintiffs’ agreement that they will produce all documents relating to Public Resource.
Plaintiffs rejected this offer. In its letter of May 2nd, Public Resource re-affirmed this offer, but
specified that the same qualifications to Public Resource’s production would also apply to
Plaintiffs: Public Resource will produce responsive, non-privileged documents that expressly
refer to the name of any Plaintiff, to the extent that such documents exist, relate to the matters
specifically alleged in the Complaint, and can be located after a reasonable search for documents
in Public Resource’s possession, custody, or control, subject to Plaintiffs’ agreement that they
will produce responsive, non-privileged documents that expressly refer to the name of Public
Resource, Carl Malamud, or any of Public Resource’s representatives, to the extent that such
documents exist, relate to the matters specifically alleged in the Complaint, and can be located
after a reasonable search for documents in Plaintiff’s possession, custody, or control. Such an
agreement would help ensure that production is complete, yet also relevant and not overly
burdensome to Plaintiffs or Public Resource for either production or review. Public Resource
again presented this offer to Plaintiffs during the meet-and-confer call on May 7th, and awaits a
definitive response from Plaintiffs.
(j)

Plaintiffs’ Request for Production No. 29

In accordance with the agreement between the parties to reduce the burden of document
production and review, Plaintiffs have identified specific Public Resource webpages that they
would like to be produced in a Bates numbered format, and Public Resource agrees to produce
the requested pages in such format.
(k)

Plaintiffs’ Request for Production No. 31

Plaintiffs have clarified that, in addition to figures as to the number of times each
standard at issue has been downloaded, they also seek Internet traffic reports such as Google
Analytics reports. Public Resource does not use Google Analytics or competing tools.
(l)

Plaintiffs’ Interrogatory No. 4

Public Resource objected to Plaintiff’s Interrogatory No. 4 on the grounds that certain

May 25, 2014
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terms were vague and ambiguous, and that the Interrogatory was argumentative in that it
requested information that had been provided in response to Interrogatory No. 2. At the meetand-confer teleconference with Plaintiffs on May 7th, Public Resource explained that any nontext elements (including logos) in standards are treated as diagrams, as discussed in Public
Resource’s response to Plaintiff’s Interrogatory No. 2. Public Resource has further agreed to
amend its response to Plaintiff’s Interrogatory No. 4 to state that non-text elements in standards
are treated as diagrams.
(m)

Plaintiffs’ Interrogatory Nos. 7-11

Plaintiffs’ Interrogatories Nos. 7-11 are contention interrogatories regarding Public
Resource’s counterclaims and defenses. As with Plaintiffs’ Requests for Production Nos. 15-25,
Public Resource objects on the grounds that these interrogatories seek attorney work product,
including its attorneys’ mental impressions, that these requests are premature in that Public
Resource is still in the process of researching and developing these counterclaims and defenses,
and that the early stage of this litigation means that information and documents needed to fully
support Public Resource’s counterclaims and defenses are largely in Plaintiffs’ possession.
Nevertheless, Public Resource agrees to provide the facts underlying its defenses that are
presently known to it.
(n)

Plaintiffs’ Interrogatory No. 13

Plaintiffs’ Interrogatory No. 13 seeks all instances in which Public Resource is aware of a
third party having downloaded a standard at issue from the Public Resource website, and then
having made “further copies” of that standard at issue or created derivative works based on that
standard. Public Resource has objected to the term “copies” as used in this interrogatory. At the
meet and confer on May 7th, Plaintiffs agreed to amend their request to replace “copies” with
“reproductions.” After receiving this amended interrogatory, Public Resource will serve an
amended answer.
(o)

Plaintiffs’ Interrogatory No. 14

Plaintiff’s Interrogatory No. 14 requests identification of all uses Public Resource has
made of Plaintiffs’ trademarks. Public Resource has objected to this interrogatory in part
because the terms “trademark” and “use” are vague and ambiguous to the extent that they are not
defined in reference to the Lanham Act’s employment of these terms. After meeting and
conferring with Plaintiffs, Public Resource has agreed to identify all appearances of Plaintiffs’
federally registered names and logos (as listed in paragraphs 61, 79, or 94 the Complaint) on the
Public Resource website without conceding that they are trademark “uses.”
(p)

Plaintiffs’ Requests for Admission Generally

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As I discussed above, Public Resource objects to Plaintiffs’ use of the term “copy” or
“copying” in a manner that does not accord with the Copyright Act. After meeting and
conferring, Plaintiffs have agreed to provide amended RFAs that appropriately replace these
terms with “reproduction” or “reproducing,” to which Public Resource will then provide
amended responses.
(q)

Plaintiffs’ Requests for Admission Nos. 6, 8, and 17

Because Public Resource found these RFAs to be vague and ambiguous, Public Resource
further defined the requests as it understood them and responded accordingly. After meeting and
conferring, Public Resource agrees to provide amended responses that admit or deny each part of
the RFAs, subject to Public Resource’s objections.
2.

Issues Addressed in Public Resource’s Letter of May 2, 2014
(a)

ASHRAE’s Standards at Issue

Throughout ASHRAE’s discovery responses, it repeatedly asserts that it will provide
only documents pertaining to the 2010 edition of Standard 90.1. Because ASHRAE appears to
be suing Public Resource over three separate editions of Standard 90.1—2004, 2007, and 2010—
Public Resource asserted that ASHRAE needs to provide documents for all three editions, not
simply the most recent edition. Similarly, ASHRAE lists its 1993 Handbook in Exhibit C to the
Complaint. If ASHRAE intends to include the 1993 Handbook in its suit against Public
Resource, it must produce documents pertaining to this handbook. ASHRAE responded during
the teleconference on May 7th that it would provide copies of documents for the 2004 and 2007
versions of Standard 90.1 in addition to those 2010 versions that it had previously agreed to
produce. ASHRAE also responded that it does not consider its 1993 Handbook to be a
“standard,” and for that reason has not offered to provide responsive documents. Public
Resource maintains that ASHRAE’s 1993 Handbook is a set of rules incorporated by reference
under 10 CFR 434.701 and 10 CFR 434.4.02.2.2.5(a), and therefore the 1993 Handbook is
properly referenced in any of Public Resource’s requests that mention “standards.” Indeed, it is
hard to see how ASHRAE could take the position that its 1993 Handbook is not properly
referenced as a “standard,” when in its own Requests for Production it states that “the term
‘Standards at Issue’ refers to the documents listed in Exhibits A, B, or C of the Complaint,” and
ASHRAE listed the 1993 Handbook in Exhibit C. Because ASHRAE has indicated that the 1993
Handbook is one of the standards at issue in this lawsuit, ASHRAE must include material
pertaining to the 1993 Handbook in its responses to all of Public Resource’s requests that refer to
“standards.”
(b)

Public Resource’s Definition of “Contribution”

All three Plaintiffs object to Public Resource’s definition of “contribution” as it used the

May 25, 2014
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term in Public Resource’s RFP Nos. 4 and 12-15, but Plaintiffs fail to provide a sufficient
definition of their own. ASTM offers a definition that does not include financial contributions,
while the other Plaintiffs do not provide any definition. In order to facilitate agreement on this
matter, Public Resource suggests that the parties agree on the following definition:
“contribution” means any assistance, advice, financial support, labor, effort, or expenditure of
time that is provided toward a project or goal regarding a specific standard at issue.
(c)

NFPA’s “Report on Proposals” and “Report on Comments”

Public Resource is concerned by the number of responses to Public Resource’s RFPs in
which the NFPA indicated that it would provide only the “Report on Proposals” (ROP) and
“Report on Comments” (ROC) for each standard at issue. Although Public Resource recognizes
that it has not yet received these reports and evaluated their contents, the breadth of requests to
which NFPA lists them as being responsive strongly suggests that these documents will be
insufficient to satisfy NFPA’s obligations. At the teleconference on May 7th, NFPA assured
Public Resource that the ROP and ROC would be sufficient to respond to its requests. Public
Resource will evaluate these reports while reserving its objections and its right to request a
broader production in response to these requests.
(d)

Licenses and Agreements Produced by Plaintiffs

For all responses in which Plaintiffs have agreed to produce responsive agreements or
licenses, including Plaintiffs’ responses to Public Resource’s RFP Nos. 2, 4, 6, 18, the
agreements or licenses that are produced must be complete and effective, which means they must
be signed. Blank (unsigned) form agreements and licenses will not satisfy these requests. Public
Resource must receive agreements and licenses from which the assent of the parties to the
agreement is evident. Plaintiffs have expressed concern that, in instances where the number of
responsive (signed or assented) agreements or licenses is high for any one particular form, this
could result in a burdensome production. Public Resource has therefore proposed that where the
number of signed or assented agreements or licenses for any one particular form is especially
high (such as in several hundred or more), the parties may evaluate the need for production on a
case-by-case basis.
(e)

Public Resource’s Request for Production No. 3

With respect to Public Resource’s RFP No. 3 (requesting documents sufficient to identify
all persons who participated in the standards process of each work at issue), responsive
documents should include the names of the individuals as well as their employer or affiliation, as
the employer or affiliation is necessary for proper identification. Additionally, ASHRAE’s
response to Public Resource’s RFP No. 3 is insufficient in that it offers documents pertaining to
only the 2010 edition of Standard 90.1, and ASHRAE does not mention the other works that it
purportedly asserts in this litigation. In the teleconference on May 7th, Plaintiffs all agreed to

May 25, 2014
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provide membership rosters for all standards at issue in this litigation, listing names and
employers/affiliations to the extent that Plaintiffs have this information.
(f)

Public Resource’s Request for Production No. 5

With respect to Public Resource’s RFP No. 5, Public Resource has requested documents
sufficient to identify every legal authority that incorporates by reference each work at issue.
Although there may be overlap between some documents that Public Resource possesses and
responsive documents that Plaintiffs possess, Plaintiffs are likely to possess records regarding
incorporation by reference that Public Resource does not. In the teleconference on May 7th,
Plaintiffs asserted that they did not possess any documents responsive to this request other than
the ones they agreed to provide. To the extent that Plaintiffs discover that they possess any
additional documents identifying the relevant legal authorities, Plaintiffs must produce these
documents.
(g)

Public Resource’s Request for Production No. 7

ASHRAE’s response to Public Resource’s RFP No. 7 (requesting communications with
government entities regarding incorporation of standards into law) is insufficient to the extent
that it promises only “official” written correspondence “by ASHRAE to government entities”
regarding incorporation of only the 2010 edition of Standard 90.1. As I noted above, ASHRAE
must produce documents pertaining to every edition and standard that it intends to assert in this
litigation. Moreover, Public Resource’s request plainly encompasses unofficial correspondence
in addition to official correspondence, as well as all correspondence from government officials to
ASHRAE regarding incorporation by reference, not simply correspondence sent by ASHRAE.
In the teleconference on May 7th, ASHRAE agreed to supplement its responses to include both
official and unofficial correspondence, both by ASHRAE to government entities and from
government entities to ASHRAE, for all works listed in Exhibit C to the Complaint.
(h)

Public Resource’s Request for Production Nos. 8 and 9

Public Resource’s RFP Nos. 8 and 9 (requesting all documents regarding Carl Malamud
and Public Resource or its representatives) mirror Plaintiffs’ RFPs No. 28 (requesting all
documents regarding Plaintiffs). In its response to Plaintiffs’ RFP No. 28, Public Resource
offered to produce responsive, non-privileged documents that expressly refer to the name of any
Plaintiff, to the extent that such documents exist, relate to the matters specifically alleged in the
Complaint, and can be located after a reasonable search for documents in Public Resource’s
possession, custody, or control, subject to Plaintiffs’ agreement that they will produce all
documents relating to Public Resource. Plaintiffs rejected this offer. Public Resource re-affirms
this offer, but proposes that the same qualifications to Public Resource’s production also apply to
Plaintiffs: Public Resource will produce responsive, non-privileged documents that expressly
refer to the name of any Plaintiff, to the extent that such documents exist, relate to the matters

May 25, 2014
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specifically alleged in the Complaint, and can be located after a reasonable search for documents
in Public Resource’s possession, custody, or control, subject to Plaintiffs’ agreement that they
will produce responsive, non-privileged documents that expressly refer to the name of Public
Resource, Carl Malamud, or any of Public Resource’s representatives, to the extent that such
documents exist, relate to the matters specifically alleged in the Complaint, and can be located
after a reasonable search for documents in Plaintiff’s possession, custody, or control. Such an
agreement would help ensure that production is complete yet also relevant and not overly
burdensome to Plaintiffs or Public Resource for either production or review. Plaintiffs have
objected on the grounds that they contend the information sought by Public Resource is not
relevant. Nevertheless, as structured above, this request plainly seeks documents and
communications that are themselves relevant, or which would lead to the discovery of admissible
evidence, particularly to the extent that it is limited to documents that relate to matters
specifically alleged in the complaint. Those 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.
(i)

Public Resource’s Request for Production No. 11

ASTM and NFPA’s responses to Public Resource’s RFP No. 11 (requesting documents
concerning revenue or profit expectation for dissemination of the standards at issue) are
insufficient to the extent that they offer to produce only documents that show revenue they have
earned from the works at issue but not documents that shed light on expectations of future
revenue. NFPA’s response is further insufficient in that it offers only annual year-end financial
statements and reports for the past five years, when in fact it is asserting works at issue that date
back to 1999. ASHRAE’s response to Public Resource’s RFP No. 11 is insufficient to the extent
that it offers to produce only documents showing past and anticipated revenue for the 2010
edition of Standard 90.1, as ASHRAE must produce documents for all editions and standards
that ASHRAE intends to assert in this litigation. In the teleconference on May 7th, ASTM and
NFPA asserted that they do not maintain revenue projections but keep only “granular data,”
while ASHRAE stated that it would provide the revenue projections that it has for all the works
that it asserts in Exhibit C to the Complaint.
(j)

Public Resource’s Request for Production No. 12

ASHRAE’s response to Public Resource’s RFP No. 12 (requesting all documents
concerning any contributions from any governmental entity, including agents and
representatives, in connection with the standards process for each work at issue) is insufficient in
that it offers documents pertaining to only the 2010 edition of Standard 90.1 and no other
standards. ASHRAE’s response is likely also insufficient in that it is limited to reports from the
Pacific Northwest National Laboratory, unless PNNL is the only government entity that
contributed to any edition of the standards that ASHRAE intends to assert in this litigation. If

May 25, 2014
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that is the case, ASHRAE should admit that the Pacific Northwest National Laboratory was the
only government entity that contributed to the 2004, 2007, or 2010 editions of Standard 90.1 or
to the 1993 ASHRAE Handbook. Moreover, with regard to all Plaintiffs, Public Resource
repeats its suggestion that “contribution” should be defined as any assistance, advice, financial
support, labor, effort, or expenditure of time that is provided toward a project or goal. In the
teleconference on May 7th, ASHRAE responded that it would provide documents and
communications pertaining to all the works that it asserts in Exhibit C to the Complaint and
pertaining to all relevant government entities.
(k)

Public Resource’s Request for Production No. 13

Plaintiffs object to Public Resource’s RFP No. 13 (requesting all documents concerning
any contributions from any not-for-profit entity in connection with the standards process for each
work at issue) on the grounds that the question of whether a contributor to the development of
one of the works at issue qualifies as a not-for-profit entity is a legal question. But there is no
disputed legal issue on this point. Plaintiffs may rely on a contributor’s own characterization of
itself as a not-for-profit entity (as, for example, on the entity’s website) in order to respond to
this request.
(l)

Public Resource’s Request for Production Nos. 14 and 15

Plaintiffs’ responses to Public Resource’s RFPs Nos. 14 and 15 (concerning requests of
contributions and offers of contributions regarding any standard at issue) are insufficient in
various respects. Repeating Public Resource’s earlier point, “contribution” should be defined as
any assistance, advice, financial support, labor, effort, or expenditure of time that is provided
toward a project or goal. ASTM’s answer to Public Resource’s RFP No. 15 fails to state whether
it will produce documents and, if so, which documents it will produce in compliance with this
request. In the teleconference on May 7th, ASTM stated that it did not believe that this request
sought relevant information. But the question of whether the individuals and organizations who
contributed to each work at issue and have properly assigned their contributions to Plaintiffs is
central to the determination of whether Plaintiffs hold copyright in the works that underlie this
lawsuit. Instances where individuals or organizations were solicited for contributions or offered
contributions are very likely to lead to relevant, admissible evidence, because it is precisely these
scenarios in which someone is likely to have contributed to a standard without an assignment of
rights. NFPA says that it will provide the same ROCs and ROPs, but as we have explained that
is likely to be insufficient given the fact that this request asks for communications from
individuals or entities to Plaintiffs, not simply general reports that may or may not comment on
such communications. ASHRAE failed to offer documents other than those related to the 2010
edition of Standard 90.1, but in the teleconference on May 7th it agreed to provide responsive
documents for all the works that it asserts in Exhibit C to the Complaint.

May 25, 2014
Page 11
(m)

Public Resource’s Request for Production No. 16

Plaintiffs provided only very general objections and failed to indicate whether they will
produce documents in response to Public Resource’s RFP No. 16 (requesting all communications
criticizing Plaintiffs’ position in this litigation). In the teleconference, Plaintiffs objected that
this request does not seek relevant information. To the contrary, this request is plainly likely to
lead to the discovery of admissible evidence because, among other reasons, persons who have
participated in the standard creation process or participated in lobbying activities are likely to be
aware of factors related to their participation that would be relevant to this case, and they may
also have raised those issues in communications criticizing Plaintiffs. Those communications
may also lead to the discovery of admissible evidence relating to Public Resource’s
counterclaims and defenses, such as fair use, unclean hands, copyright misuse, trademark
misuse, and lack of irreparable injury.
(n)

Public Resource’s Request for Production No. 17

Plaintiffs’ responses to Public Resource’s RFP No. 17 (requesting all communications by
Plaintiffs regarding this litigation) are insufficient because they provide only a few statements on
Plaintiffs’ websites. This request encompasses not only general press releases but also
communications to individuals and organizations. For instance, this request would cover any
communications to the American National Standards Institute (ANSI). Similarly, the request
would also call for communications in response to questions by the public or by the press. In the
teleconference on May 7th, Plaintiffs objected to the relevance of this request. But responsive
documents are likely to lead to the discovery of admissible evidence relating to Public
Resource’s counterclaims and defenses, such as fair use, unclean hands, copyright misuse,
trademark misuse, and lack of irreparable injury. Plaintiffs therefore must produce them.
(o)

Public Resource’s Interrogatory No. 2

ASTM’s and ASHRAE’s responses to Public Resource’s Interrogatory No. 2 appeared
deficient in that they do not list the particular legal authorities that have incorporated the
standards at issue. Public Resource believes that Plaintiffs must know which legal authorities
have incorporated the standards at issue so as to respond to Public Resource’s Interrogatory No.
1. In the teleconference on May 7th, Plaintiffs clarified that they have no further sources of
information as to which standards have been incorporated by reference, other than what they
have already provided. To the extent that Plaintiffs discover further information regarding
incorporation of their standards that they were not previously aware was in their possession,
Public Resource has requested that they supplement their responses.
(p)

Public Resource’s Interrogatory No. 3

NFPA and ASHRAE’s responses to Public Resource’s Interrogatory No. 3 (requesting

May 25, 2014
Page 12
identification of any person who participated in the standards process) are deficient. NFPA
simply provided general categories of persons, which is insufficient to actually identify anyone
who participated in these processes, and Public Resource therefore requests either a supplement
or a Fed. R. Civ. P. 33(d) response. ASHRAE said that it will provide the membership roster for
the project committee for the 2010 edition of Standard 90.1, but it failed to offer similar
documents for the other editions or standards that it purports to assert in this litigation. It must
therefore provide more complete responses. In the teleconference on May 7th, both NFPA and
ASHRAE agreed to provide Public Resource with complete Rule 33(d) responses for all works
listed in Exhibits B and C to the Complaint, respectively.
(q)

Public Resource’s Interrogatory No. 4

ASTM’s response to Public Resource’s Interrogatory No. 4 (requesting identification of
any communications in which Plaintiffs or someone acting on Plaintiffs’ behalf promotes the
incorporation of standards by reference) is deficient, at least to the extent that other organizations
such as ANSI promote the incorporation by reference of ASTM’s standards into law, and to the
extent that ASTM’s Washington D.C. office works with members of the government to promote
the incorporation of its standards by reference. ASHRAE’s response is deficient to the extent
that it generally admits that it promotes the incorporation by reference of its standards into law,
but fails to identify such communications or state that it will provide documents identifying these
communications. In the teleconference on May 7th, Plaintiffs asserted that they had no
additional responsive communications other than those they had identified. If Plaintiffs discover
more responsive communications, they must supplement their responses.
(r)

Public Resource’s Interrogatory No. 5

NFPA and ASHRAE’s responses to Public Resource’s Interrogatory No. 5 (requesting
identification of all contributions that any person made to the standards process of their
standards) were deficient because they failed to identify any specific contributions or individuals.
In the teleconference on May 7th, both NFPA and ASHRAE agreed to provide Public Resource
with complete Fed. R. Civ. P. 33(d) responses for all works they listed in Exhibits B and C to the
Complaint, respectively.
(s)

Public Resource’s Request for Admission

As we discussed in our call on April 21, the parties have agreed to cooperate to limit the
number of times that they must repeat searches of their respective documents and records. In
order to accomplish this, Public Resource must know the scope of the claims and particular
works that Plaintiffs are asserting in this lawsuit. Both NFPA and ASHRAE admit that the
claims that they currently assert against Public Resource are limited to the standards they listed
in Exhibits B and C to the Complaint. Previously, ASTM had made no such admission. At the

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meet and confer on May 7th, however, ASTM clarified that its claims are limited to the standards
listed in Exhibit A to the Complaint.
3.

Protective Order

After meeting and conferring on the matter, the parties have not been able to reach an
agreement on the terms of the proposed protective order. We believe the primary remaining
issues of disagreement are 1) whether to eliminate the Highly Confidential designation, as we
propose, and 2) whether the burden of preserving a confidentiality designation should be on the
designating party, as we propose. Plaintiffs stated in the May 7th teleconference that they would
recommend how best to bring this matter to the attention of the Court for resolution.
Sincerely,
FENWICK & WEST LLP

/s/ Andrew P. Bridges