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 B

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.

DECLARATION OF KATHLEEN LU IN SUPPORT OF DEFENDANT
PUBLIC.RESOURCE.ORG, INC.’ MOTION TO COMPEL
I, Kathleen Lu, declare as follows:
1.

I am an attorney admitted to practice before this Court. I am an associate at

Fenwick & West LLP, counsel of record for Defendant Public.Resource.org, Inc.
(“Public Resource”) in this matter. I have personal knowledge of the facts stated in this
declaration and, if called to testify as a witness, I could and would testify competently about them.
2.

Public Resource propounded on each Plaintiff-Counterdefendant written

discovery requesting relevant documents and information, including Requests for Production of
Documents, Interrogatories, and Request for Admissions.
3.

Attached as Exhibit 1 is a true and correct copy of Public Resource’s First Set of

Requests for Production of Documents to American Society of Heating, Refrigerating, and

Air-Conditioning Engineers, Inc. (“ASHRAE”) (Nos. ASHRAE-1 through ASHRAE-18), served
electronically via email on February 13, 2014.
4.

Attached as Exhibit 2 is a true and correct copy of Public Resource’s First Set of

Requests for Production of Documents to American Society for Testing and Materials d/b/a
ASTM International (“ASTM”) (Nos. ASTM-1 through ASTM-18), served electronically via
email on February 19, 2014.
5.

Attached as Exhibit 3 is a true and correct copy of Public Resource’s First Set of

Request for Production of Documents to National Fire Protection Association, Inc. (“NFPA”)
(Nos. NFPA-1 through NFPA-18), served electronically via email on February 13, 2014.
6.

The requests for production of documents to ASHRAE, ASTM, and NFPA

(collectively, “Plaintiffs” or “Plaintiffs-Counterdefendants”) were tailored to obtain unprivileged
information relevant to the claims, counterclaims and affirmative defenses asserted by the parties.
7.

Attached as Exhibit 4 is a true and correct copy of ASHRAE’s Objections and

Responses to Public Resource’s First Set of Requests for Production of Documents
(Nos. ASHRAE-1 through ASHRAE-18), served March 20, 2014.
8.

Attached as Exhibit 5 is a true and correct copy of ASTM’s Objections and

Responses to Public Resource’s First Set of First Set of Requests for Production of Documents
(Nos. ASTM-1 through ASTM-18), served March 24, 2014.
9.

Attached as Exhibit 6 is a true and correct copy of NFPA’s Objections and

Responses to Public Resource’s First Set of Requests for Production of Documents (Nos. NFPA1 through NFPA-18), served March 20, 2014.
10.

In their objections to Defendant’s Requests for Production of Documents,

Plaintiffs-Counterdefendants fail to provide any compelling justification for their attempts to

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withhold or limit the production of these documents, other than to assert boilerplate burden and
relevance objections. Additionally, whole categories of documents are being withheld based on
Plaintiffs-Counterdefendants’ assertion that some responsive documents may be privileged, an
assertion Plaintiffs-Counterdefendants are unwilling to substantiate.
11.

Attached as Exhibit 7 is a true and correct copy of a May 2, 2014 letter from my

colleague Andrew P. Bridges, counsel for Public Resource, to counsel for PlaintiffsCounterdefendants. The May 2, 2014 letter specifically addresses the insufficient and
incomplete responses by Plaintiffs-Counterdefendants to Public Resource’s Requests for
Production of Documents.
12.

On April 21, 2014 and May 7, 2014, counsel for Public Resource engaged in a

telephonic meet and confer session with counsel for Plaintiffs-Counterdefendants in an attempt
to resolve the issues related to their insufficient and incomplete discovery responses. During this
meet and confer session, counsel for Public Resource explained Public Resource’s position
regarding the clear relevance of the categories of documents requested by Public Resource.
13.

Attached as Exhibit 8 is a true and correct copy of the May 23, 2014 letter from

J. Kevin Fee, counsel for ASTM, responding to Public Resource’s May 2, 2014 letter and
summarizing the May 7, 2014 meet and confer session. In his May 23, 2014 letter, Mr. Fee
summarizes Plaintiff-Counterdefendant ASTM’s position that responsive documents which
Public Resource seeks are likely to be privileged and that it will not produce documents relating
to financial contributions. The letter May 23 letter also summarizes Plaintiff-Counterdefendant
ASTM’s position that it will only produce “representative samples” and “form” versions of
licensing agreements and assignment of rights agreements. Mr. Fee further states: “[w]hile
searching for some subset of this information could arguably be warranted if ASTM’s initial

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ownership was genuinely the real issue in this case, given that Public Resource's legal position is
really premised on the impact of the incorporation by reference on ASTM's ownership of the
copyrights in the standards, Public Resource's requests seek to unnecessarily and unduly burden
ASTM for limited, if any, benefit to Public Resource.”
14.

Attached as Exhibit 9 is a true and correct copy of a May 25, 2014 letter from

Andrew Bridges to counsel for all Plaintiffs-Counterdefendants summarizing the discovery
dispute, including issues relating to Plaintiffs-Counterdefendants’ deficient responses to Public
Resource Requests for Production of Documents, and the issues discussed during the May 7, 2014
meet and confer session.
15.

Attached as Exhibit 10 is a true and correct copy of the August 15, 2014 letter

from J. Kevin Fee to counsel for Public Resource. The August 15, 2014 letter states that ASTM
will not produce documents relating to the present litigation or the possibility of taking legal
action against Public Resource or Mr. Malamud. The August 15, 2014 further states that it will
not include any privileged documents created on or after January 1, 2013 in its privilege log.
16.

Attached as Exhibit 11 is a true and correct copy an August 22, 2014 letter from

Andrew Bridges responding to the August 15, 2014 letter from J. Kevin Fee. The August 22,
2014 letter addresses and responds to ASTM’s deficient discovery responses, including ASTM’s
efforts to limit the definition of “contribution” to exclude documents relating to financial
contributions, and ASTM’s stated position that it will only produce “representative sample” and
“form” assignment documents, licensing documents, and documents relating to communications
requesting contributions. The August 22, 2014 letter also addresses and responds to ASTM’s
refusal to produce documents relating to the litigation or the possibility of taking legal action
against Public Resource or its principal, Carl Malamud.

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17.

Attached as Exhibit 12 is a true and correct copy of the August 22, 2014 letter from

Jonathan H. Blavin, counsel for NFPA, following up on and attaching NFPA’s May 23, 2014 letter
responding to the May 2, 2014 letter from Andrew P. Bridges, which purports to summarize the
April 21, 2014 and May 7, 2014 meet and confer sessions. In his August 22, 2014 letter,
Mr. Blavin states that NFPA will exclude documents relating to this lawsuit or the possibility of
taking legal action against Public Resource or Carl Malamud from its production. Mr. Blavin
further states that NFPA will exclude Maureen Brodoff, NFPA’s former General Counsel, and
Sally Everett, NFPA’s current General Counsel, as document custodians. In this letter, Mr. Blavin
further reiterates NFPA’s position that it will only produce “form versions” of license agreements
by end-users of NFPA’s standards.
18.

Attached as Exhibit 13 is a true and correct copy of the August 28, 2014 letter

from J. Kevin Fee, counsel for ASTM, written in response to Public Resource’s August 22, 2014
letter.
19.

Attached as Exhibit 14 is a true and correct copy of the September 5, 2014 letter

from counsel for Public Resource, in response to the August 22, 2014 letter from Jonathan H.
Blavin. The September 5, 2014 letter addresses NFPA’s continued refusal to produce various
categories of responsive documents, including complete and effective licenses and agreement,
documents relating to this lawsuit or the possibility of taking legal action against Public Resource
or Mr. Malamud, and NFPA’s attempts to exclude Maureen Brodoff as a document custodian.
20.

In the September 5, 2014 letter, Public Resource, in an 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 signatories thereto, provided that NFPA
certifies that each form agreement does not differ from the executed license agreements and

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subject to Public Resource’s right to request the executed agreements for any particular
signatories. To date, counsel for NFPA has not responded to this offer.
21.

On information and belief, NFPA’s former General Counsel Maureen Brodoff

has regularly made public statements regarding the effect to NFPA’s business model of free
access to its standards, has published and spoken on these issues for over a decade, and is
therefore likely to hold a significant number of non-privileged documents and communications
relating to the litigation between Plaintiffs-Counterdefendants and Public Resource.
22.

Attached here at Exhibit 15 is a true and correct copy of a May 23, 2014 letter

from Andrew Zee, counsel for ASHRAE, responding to Public Resource’s May 2, 2014 letter
and summarizing the May 7, 2014 meet and confer session. In his May 23 letter. Mr. Zee
summarizes Plaintiff-Counterdefendant ASHRAE’s position that it will not produce documents
relating to financial contributions, that it will only produce “representative samples” and “form”
versions of licensing agreements and assignment of rights agreements, and that it will not
produce documents relating to this litigation or the possibility of legal action against Public
Resource or its principal, Mr. Malamud.

I declare under penalty of perjury under the laws of the United States of America and the State of
California that the foregoing is true and correct and that this declaration was executed on
September 14, 2014, in San Francisco, California.

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