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 14

September 5, 2014

KATHLEEN LU

EMAIL [e-mail]
Direct Dial [phone]

VIA E-MAIL
Jonathan H. Blavin
Munger, Tolles & Olson LLP
560 Mission Street
Twenty-Seventh Floor
San Francisco, California 94105-2907
Re:

ASTM, et al. v. Public.Resource.Org

Dear Mr. Blavin:
This letter is in response to your letter of August 22, 2014, regarding the above-captioned
matter.
1.

NFPA’s Report on Proposals (ROPs) and Report on Comments (ROCs)

Public Resource appreciates NFPA’s production of the ROPs and ROCs, but maintains
that the ROPs and ROCs alone do not satisfy Public Resource’s discovery requests for which
NFPA has offered these reports. In particular, these documents are simply summaries of the
actual communications or documents implicated by some of Public Resource’s requests for
production, and do not include the actual communications or documents themselves. For
instance, 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.
2.

NFPA’s production of its database that tracks incorporation by reference

Public Resource appreciates NFPA’s agreement to produce its database that tracks certain
instances of incorporation by reference of the standards at issue. As Public Resource stated in its
letter of May 23, to the extent that NFPA discovers that it possesses documents that identify
relevant legal authorities, NFPA is obligated to produce those documents.
3.

NFPA’s production of its most recent unaudited financial statement

Public Resource appreciates NFPA’s agreement to produce its most recent unaudited
financial statement. NFPA stated that this is the only document that includes revenue projections
for any of the standards at issue. If in the course of further investigation NFPA discovers that
other documents exist that contain revenue projections for any of the standards at issue, it is

Jonathan H. Blavin
September 5, 2014
Page 2
obligated to produce them.
4.

NFPA’s production of licenses and agreements

As Public Resource stated in its letter of May 23, for all responses in which NFPA has
agreed to produce responsive agreements or licenses, including Public Resource’s requests nos.
2, 4, 6, and 18, the agreements or licenses that are produced must be complete and effective,
which means they must be signed. However, 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 therefore
proposes that for form agreements where there were no changes to the agreements from the form,
NFPA may produce one form agreement plus a list of signatories. Public Resource reserves the
right to request the production of the executed agreement for any particular signatories.
5.

NFPA’s refusal to produce relevant and responsive documents

Public Resource rejects NFPA’s proposal to exclude from its production documents
related to this lawsuit or the possibility of legal action against Public Resource or Mr. Malamud,
as well as NFPA’s proposal to exclude Maureen Brodoff as a custodian. NFPA’s position
appears to disregard whether the document or communication in question is privileged or not,
and instead proposes to exclude a large number of documents that are not only responsive to
Public Resource’s requests, but directly relevant to Public Resource’s defenses. Such an
omission would significantly prejudice Public Resource. Documents related to this lawsuit or
the possibility of legal action against Public Resource or Mr. Malamud are likely to contain
evidence regarding Public Resource’s counterclaims and defenses, including NFPA’s waiver,
estoppel, copyright misuse, trademark misuse, lack of irreparable injury, lack of likelihood of
confusion, and Public Resource’s fair use. Maureen Brodoff is similarly likely to have nonprivileged documents that are relevant to Public Resource’s counterclaims and defenses, as Ms.
Brodoff has regularly made public statements regarding the effect to NFPA’s business model of
free access to its standards. See, for instance, the following public statements:
https://www.youtube.com/watch?v=py8EIjCSF6Y&list=PL773105AC9C53263F&index=37&fe
ature=plpp_video;
https://www.youtube.com/watch?v=LPI_j4VMbJ4&list=PL773105AC9C53263F&index=36&fe
ature=plpp_video. The issues that Ms. Brodoff discusses are business issues, not legal advice,
and she has published and spoken on these issues for over a decade, therefore she should be
expected to hold a significant number of non-privileged documents and communications.
Similarly, Public Resource rejects NFPA’s proposal that it will not include on a privilege
log any documents that are protected by the attorney-client privilege or the work product
doctrine that were created on or after January 1, 2013. This apparently arbitrary date is over 8
months before when Plaintiffs filed suit against Public Resource and lacks any reasonable

Jonathan H. Blavin
September 5, 2014
Page 3
justification. As with the category of documents discussed in the paragraph above,
communications prior to the filing of this lawsuit are likely to contain both legal and business
determinations. The business determinations are not privileged, and are directly relevant to some
of Public Resource’s defenses. NFPA, and Plaintiffs generally, must log all communications for
which they assert privilege prior to the filing of the complaint in this action, so that Public
Resource is provided fair opportunity to evaluate those communications and challenge the
assertion of privilege where necessary.
Related to this issue, Public Resource requests that NFPA informs it of the date that
Plaintiffs entered into a common interest agreement, so as to allow Public Resource to determine
the scope of any asserted privilege.
6.

NFPA’s custodians and search terms

As stated above, Public Resource maintains that the ROPs and ROCs alone are not
sufficient to satisfy the document requests for which they have been provided, particularly where
“all documents and communications” are requested, and the ROPs and ROCs constitute only
summaries of the requested documents and communications. Moreover, there are a number of
requests for which the ROPs and ROCs are not responsive. For this reason, search terms must be
run as to all of Public Resource’s requests, not simply requests nos. 7-9, and appropriate
custodians must be identified.
Regarding NFPA’s identification of only three custodians – Don Bliss, Greg Cade, and
Meghan Housewright – it is not credible that this limited number of custodians would be
sufficient to respond to Public Resource’s document requests, particularly given the size and
scope of NFPA’s operations. In addition to Ms. Brodoff, NFPA should also add as custodians
Jim Shannon, Jeff Sargent, and Tim McClintock. Moreover, NFPA has promised to provide an
organizational chart, which has not yet been provided. Public Resource expects that this chart
will help it identify additional custodians, though Public Resource nevertheless maintains that
NFPA must take responsibility to identify a broader set of custodians that are more likely to
produce a complete response to Public Resource’s requests. Public Resource reserves the right
to identify additional custodians as discovery continues.
Regarding search terms, Public Resource proposes adding the following as general search
terms:
Malamud
Public Resource
Public.Resource
Public.Resource.Org
“PRO” (restricted to all caps to target the acronym)

Jonathan H. Blavin
September 5, 2014
Page 4
“P.R.O.”
Law.Resource.Org
“code of federal regulations” (regardless of capitalization)
IBR
CFR
incorporat! /5 reference
Standard! /5 law
For the government employee emails, Public Resource proposes that NFPA conduct a
preliminary search of custodians email accounts to identify all .gov email addresses (which
should be designed to capture all .gov addresses, including state and municipal address like
.ca.gov addresses). Using that list of identified government email accounts, NFPA should add
the email address they found and the names of the persons using such addresses to the final
search terms list. This way, the final search will capture emails where (1) the governmentaffiliated person used a different (non-.gov) email address to communicate, or (2) the captured
email displays a government employee’s name but not email address. We propose adding to the
government communications keywords list the following:
incorporat! /5 standard
incorporat! /5 reference
refer! /5 standard
includ! /5 standard
adopt /5 standard
IBR /5 standard
standard /5 regulation
NFPA /5 regulation
NFPA /5 standard!
NFPA /5 code
NFPA /5 reference
add! /5 standard!
add! /5 code
adopt! /5 standard!
adopt! /5 code
includ! /5 NFPA
add! /5 NFPA
adopt! /5 NFPA
CFR
IBR
incorporat!
refer! /5 code
inclu! /5 code

Jonathan H. Blavin
September 5, 2014
Page 5
adopt /5 code
regul! /5 code
If NFPA believes any of these terms are overbroad, please explain your reasoning.
7.

Public Resource’s collection and production

As an initial matter, Public Resource disputes NFPAs characterization of its position
regarding document production. During the May 7 teleconference, Public Resource proposed a
significant number of compromises with regard to Plaintiffs’ requests for production, and stated
explicitly at that teleconference concern regarding Plaintiffs’ failure to reciprocate. With regard
to Plaintiffs’ requests for production nos. 15-25 concerning Public Resource’s counterclaims and
defenses, Public Resource objected on the grounds that the requests seek attorney work product,
including the mental impressions of its attorneys, and these requests are premature in that Public
Resource is still in the process of 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. However, Public Resource has already begun its rolling
production, having produced over 166,000 pages to date, and as part of this rolling production
documents responsive to these requests will be included, subject to the aforementioned
objections and reserving all rights.
Regarding Plaintiffs’ request for production no. 6, as stated previously, Public Resource
objects to this request, among other reasons, because it will be unduly burdensome to produce
every single document that could possibly relate to the reformatting of the standards at issue or
that references the procedures used. Public Resource has agreed to produce documents that
explain the process Public Resource employed to reformat the standards at issue generally, and
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.
Regarding Plaintiffs’ request for production no. 31, Public Resource has clarified that it
does not use Google Analytics or competing tools, and so the information that NFPA seeks is not
available. Public Resource has gone beyond its obligations by offering to generate a report
specifying the number of times each standard was downloaded. Public Resource is under no
obligation to create a report that is any more detailed. NFPA has not provided any justification
for why greater detail is necessary, or even relevant or useful to its claims. Similarly, the burden
of producing Public Resource’s server logs far outweighs any relevancy or value to NFPAs
claims, especially given the limited issues that are actually contested in this case. Like donor
information, production of server logs would compromise the constitutional rights and privacy
rights of Public Resource’s users. Moreover, there is no simple way to separate logs relating to
the standards at issue from the logs relating to the many other resources on the Public Resource
website. Finally, we are skeptical that you have any intent to review or make use of the server

Jonathan H. Blavin
September 5, 2014
Page 6
logs if they were provided to you, given the immense size of these logs, the technical knowledge
required to understand them, and the dearth of value that they could provide in this case.
Because the burden far outweighs the relevance, and because Public Resource has already agreed
to generate a report regarding downloading of the standards at issue, Public Resource will not
produce its server logs.
Sincerely,
FENWICK & WEST LLP

Kathleen Lu
KL:rp