AMERICAN SOCIETY FOR TESTING AND MATERIALS et al v. PUBLIC.RESOURCE.ORG, INC.
Memorandum in opposition to re #41 MOTION to Compel Discovery filed by AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC.. (Attachments: #1 Declaration of M. Andrew Zee, #2 Exhibit 1, #3 Exhibit 2, #4 Declaration of Claire Ramspeck)(Steinthal, Kenneth)
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-DAR
NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and
THE AMERICAN SOCIETY OF
HEATING, REFRIGERATING, AND
AIR- CONDITIONING ENGINEERS,
INC.’S RESPONSE IN OPPOSITION
MOTION TO COMPEL DISCOVERY
AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR-CONDITIONING
Filed: August 6, 2013
AMERICAN SOCIETY FOR TESTING AND
MATERIALS d/b/a/ ASTM INTERNATIONAL;
NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and
AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR-CONDITIONING
On Monday, September 15, 2014, Defendant Public.Resource.Org, Inc. (“Public
Resource”), filed a motion to compel discovery from Plaintiffs, including the American Society of
Heating, Refrigerating, and Air Conditioning Engineers (“ASHRAE”). Public Resource filed its
motion at 2:47 a.m. eastern time on a Monday, without notifying ASHRAE of its intention to do
so, and nearly four months after Public Resource’s last communication to ASHRAE on the subject
of its discovery responses. Notably, however, this sudden and unexpected filing arrived the day
before the parties were first to appear before Judge Chutkan in this case.
This Court’s Local Rule 7(m) requires a party that plans to file a nondispositive motion to
discuss the planned motion with opposing counsel in an attempt to narrow the areas of dispute
prior to filing. See LCvR 7(m). Public Resource failed to comply with this Rule as it took no
steps to discuss the motion with counsel for ASHRAE—or counsel for any Plaintiff, for that
matter—and Public Resource made no mention of any anticipated motion to compel in the course
of the parties’ meet-and-confer efforts. See Declaration of Kathleen Lu, ECF No. 41-2 (“Lu
Decl.”) ¶ 14. Had Public Resource informed ASHRAE that it was planning a discovery motion, it
would have learned that there were numerous areas of potential agreement, and issues on which
ASHRAE would have readily sought to reach a reasonable compromise with Public Resource.
Taken aback by Public Resource’s motion, Plaintiffs reached out in an attempt to narrow, if
not altogether eliminate, the disputes for resolution by the Court, but Public Resource declined to
cure its defective motion, and instead retroactively dubbed its 2:47 a.m. filing an “obvious
consequence” of what it unilaterally called the parties “failure to make meaningful progress.” See
attached Declaration of M. Andrew Zee (“Zee Decl.”), Ex. 1 (September 29 and 30, 2014 emails
between A. Zee and A. Bridges). Public Resource’s litigation tactic has needlessly consumed the
parties’ and the Court’s resources, and it should be summarily denied for failure to comply with
Local Rule 7(m).
As to the merits of Public Resource’s motion, should the Court elect to reach them, there is
no basis to justify the sweeping relief that Public Resource seeks. Public Resource effectively has
requested that ASHRAE disclose nearly every document concerning the development of the
copyrighted standards that Public Resource has illegally copied, displayed, and distributed. As the
attached declaration from Claire Ramspeck, ASHRAE’s Director of Technology, demonstrates,
searching for and producing the requested documents would cause a substantial disruption to
ASHRAE’s ordinary operations, and Public Resource presents no justification for imposing such a
See attached Declaration of Claire Ramspeck (“Ramspeck Decl.”). Moreover, large
portions of the material sought are either not relevant to the claims or defenses in this case, or can
be obtained by Public Resource at lesser burden or expense than for ASHRAE to provide it. 1
Notwithstanding the overbreadth and burdensomeness of Public Resource’s discovery requests,
ASHRAE is willing to reach a compromise on many issues, as explained in detail below.
PUBLIC RESOURCE’S MOTION SHOULD BE DENIED FOR FAILURE TO
COMPLY WITH THIS COURT’S LOCAL RULES.
Before filing its motion to compel, Public Resource failed to comply with Local Rule 7(m),
and this failure alone warrants summary denial of the motion. Rule 7(m) provides, in pertinent
part, as follows:
Before filing any nondispositive motion in a civil action, counsel shall discuss the
anticipated motion with opposing counsel in a good-faith effort to determine
whether there is any opposition to the relief sought and, if there is, to narrow the
areas of disagreement. . . . A party shall include in its motion a statement that the
required discussion occurred, and a statement as to whether the motion is opposed.
ASHRAE understands that co-Plaintiffs will be filing response briefs in opposition to
Public Resource’s motion to compel, and ASHRAE respectfully joins in those oppositions.
Public Resource never discussed with counsel for any of the Plaintiffs its intent to file a motion to
compel discovery and, by necessity, failed to include in its motion the required statement that such
discussion occurred. The first that Plaintiffs learned of this motion was upon receiving the
CM/ECF notice of filing the morning of September 15, 2014 (or, for those on the west coast, late
in the evening of Sunday, September 14). Rather than comply with Rule 7(m), Public Resource
instead refers in its motion to an “exchange of letters and lengthy phone conferences” with
Plaintiffs’ counsel since May 2014. Public Resource’ s Motion to Compel, ECF No. 41 (“Mot.”)
at 3. In none of these conferences or letters, however, did Pubic Resource discuss the instant
motion, as the Rule requires, see Zee Decl. ¶¶ 4-5, and instead Public Resource unilaterally
determined that that it had reached “an impasse” and proceeded directly to this Court. Mot. at 3.
“The purpose of the Local Rule is to promote the resolution of as many litigation disputes
as possible without court intervention, or at least to force the parties to narrow the issues that must
be brought to the court.” Ellipso, Inc. v. Mann, 460 F. Supp. 2d 99, 102 (D.D.C. 2006). Although
the parties held one lengthy telephone conference and exchanged correspondence on discovery
issues generally, Public Resource never indicated that it would be filing a motion on the specific
categories of documents that it now seeks to compel. Zee Decl. ¶¶ 4-5. Moreover, when Plaintiffs
notified Public Resource of its failure to comply with Rule 7(m) and offered to meet and confer if
the motion was withdrawn, Public Resource sought to flip that Rule on its head by demanding that
Plaintiffs inform counsel “right away” that Plaintiffs “*do not* oppose the relief Public Resource
seeks.” See Id., Ex. 1.
Public Resource’s evident strategy was to file a deficient motion to compel, and, when its
non-compliance was pointed out, summarily demand that Plaintiffs consent to all the relief Public
Resource sought in its motion, lest it forge ahead with the deficient motion. These tactics are
hardly the good-faith effort to narrow the areas of disagreement contemplated by Rule 7(m).
Moreover, even if, as Public Resource may argue in reply, Plaintiffs were aware of the general
nature of the issues, that is not sufficient compliance with the Rule. District Hosp. Partners, L.P.
v. Sebelius, 971 F. Supp. 2d 15, 22 (D.D.C. 2013) (“Although some of plaintiffs’ requests have, or
should have, been known to the Secretary for some time, the Court is concerned by plaintiffs’ lack
of candor in providing full notice to the Secretary of exactly what they intended to compel.”).
The appropriate remedy for failure to comply with Local Rule 7(m) is denial of the motion.
See, e.g., Haynes v. Navy Federal Credit Union, 282 F.R.D. 17, 19 (D.D.C. 2012) (denying motion
solely on basis of failure to comply with Rule 7(m)); Ellipso, 460 F. Supp. 2d at 102 (“If a party
files a nondispositive motion without certifying its compliance with Rule 7(m), the motion will be
denied.” ); K & R Ltd. P’ship v. Mass. Housing Finance Agency, 456 F. Supp. 2d 46, 52 (D.D.C.
2006) (same). This Court should follow these precedents and deny Public Resource’s motion to
PUBLIC RESOURCE IS NOT ENTITLED TO THE OVERBROAD RELIEF IT
Should the Court decline to deny Public Resource’s motion to compel for failure to comply
with Rule 7(m), the motion should nonetheless be denied because Public Resource is either not
entitled to the overbroad and unduly burdensome discovery relief it seeks, or because ASHRAE
can agree to search for and provide a reasonable number of documents, thereby rendering the
Public Resource Is Not Entitled To Each And Every “License Agreement.”
Public Resource seeks “[a]ll documents constituting, comprising, or concerning licenses
with respect to any Work-At-Issue.” Lu Decl., Ex. 2 (Request No. 18). ASHRAE objected on
grounds of overbreadth and burdensomeness, but, subject to those and other objections, agreed to
produce: (1) representative examples of licenses or permission grants to third parties for the use of
Standard 90.1; (2) the form personal-use license for purchasers of the PDF version of Standard
90.1; (3) the form network-use license for purchasers of Standard 90.1; and (4) the current
distribution agreements with authorized resellers who have been licensed to distribute Standard
90.1. Lu Decl., Ex. 4.
Dissatisfied with this response, Public Resource now seeks all executed license agreements,
contending that the terms of licenses that ASHRAE enters into are relevant to ASHRAE’s revenue
and alleged harm based on lost sales and licensing opportunities. Mot. at 5. But Public Resource
has other means to obtain this information. For instance, in response to Public Resource’s Request
for Production No. 11, ASHRAE has agreed to produce documents sufficient to show its actual
revenue from sales of print and PDF versions of Standard 90.1, as well as anticipated revenue from
sales of all ASHRAE standards. Lu Decl., Ex. 4. Thus, much of the information that Public
Resource purportedly seeks to uncover through this request, by examining the “specific terms of
each . . . license,” Mot. at 4-5, will be available to it through documents provided by ASHRAE in
response to Public Resource’s other discovery request.
Notwithstanding Public Resource’s failure to discuss this issue before filing its motion and
without conceding or admitting to the reasonableness of the request, ASHRAE is willing to
supplement its production with additional license agreements such that, other than individual
personal-use and network-use licenses, it produces all non-privileged license agreements for
Standard 90.1. Requiring ASHRAE to produce each and every personal- and network-use license
from all purchasers of Standard 90.1 would be unduly burdensome, particular since ASHRAE has
already provided the form versions of these agreements. Ramspeck Decl. ¶ 9.
To the extent that Public Resource intended the term “license” to encompass something
broader than the license agreements that ASHRAE now agrees to provide—e.g., to include the
permissions that ASHRAE grants to third parties for educational purposes—the request is
overbroad and unduly burdensome. As explained above, ASHRAE has already agreed to provide
representative examples of such permissions. Moreover, in contrast to the license agreements
ASHRAE will be providing, the permission requests are not centrally tracked or maintained.
Requiring ASHRAE to conduct an additional, extensive search of multiple ASHRAE email
accounts for every instance that such a permission request appears—of which there are likely
many thousands—and then to review them in detail would require at least six weeks of dedicated
effort. Id. ¶¶ 8, 10. It is not reasonable to require ASHRAE to undertake such a burden and its
attendant cost. Further, the terms of such third-party permission grants are not relevant to whether
Public Resource has violated ASHRAE’s intellectual property rights. Even if, as Public Resource
apparently suspects, ASHRAE had provided a third-party with a right to reproduce and distribute
Standard 90.1, that would not somehow excuse Public Resource’s unauthorized conduct at issue in
Public Resource also argues that ASHRAE may license Standard 90.1 for use or
incorporation into law by government entities. Mot. at 5. Contrary to Public Resource’s
speculative contention, ASHRAE does not license its works to government entities for
incorporation into law, and ASHRAE is willing to provide Public Resource with an affidavit
stating as much. 2 To the limited extent that ASHRAE enters into licenses with such entities for
other use of its standards, ASHRAE will be providing these, as explained above.
ASHRAE does enter into licensing agreements for Standard 90.1 with model code bodies,
such as the American National Standards Institute and the International Code Council, which in
turn may or may not enter into separate licensing agreements with government entities. Any such
licensing agreements entered into by those code bodies are, however, outside ASHRAE’s
possession, custody, or control. See Fed. R. Civ. P. 34(a)(1).
It Would Be Unduly Burdensome To Require ASHRAE To Locate And Produce Each
And Every Assignment Of Rights Agreement For Standard 90.1.
Public Resource seeks to require ASHRAE to provide copies of each and every assignment
of rights agreement for each and every individual who participated in or contributed to the
development process for Standard 90.1. Lu Decl., Ex. 2 (Request No. 6). ASHRAE has already
provided the form release agreements signed by these individuals—whether they are members of
the Standard 90.1 Project Committee or otherwise contributed by submitting change proposals or
public comments. Ramspeck Decl. ¶ 12. The individual, as-signed agreements sought by Public
Resource are not separately maintained such that ASHRAE can simply retrieve and produce those
agreements. Id. ¶ 13. Instead, in order to locate, review, and retrieve each individual, as-signed
release agreement, ASHRAE personnel would need to review multiple databases and archival
records, kept in both electronic and paper format, and cross-reference those databases and records
with the names of Standard 90.1 Project Committee members, public commenters, and individuals
who submitted change proposals. Id. ¶ 13.
This burden dramatically outweighs the minimal, or nonexistent, benefit of these materials
in light of the issues in this case. Public Resource’s principal defense in this matter hinges on the
effect of the incorporation by reference of Plaintiffs’ standards, and not on the ownership of those
standards. Moreover, courts have expressed skepticism toward a third party’s assertion of lack of
copyright ownership as a defense to an infringement claim. See, e.g., Law Enforcement Training
& Research Associates v. City & Cnty. of San Francisco, 1991 WL 172416, at *1 (9th Cir. Sept.
4, 1991); Int’l Code Council, Inc. v. Nat’l Fire Protection Assoc., Inc., 2006 WL 850879, at *18
n.33 (N.D. Ill. Mar. 27, 2006) (“There may be some doubt, as a policy matter, about the wisdom of
permitting a non-author to challenge the copyright holder’s right to enforce its copyright.”). In
view of the attenuated relevance, if any, of individual, as-signed release agreements, it would be
unreasonable to force ASHRAE to expend the substantial time and resources described above to
locate, retrieve, review, and copy these documents for Public Resource. 3 See Fed. R. Civ. P.
Again, had Public Resource met and conferred with ASHRAE counsel before bringing its
motion, it would have learned that notwithstanding its objections, ASHRAE is willing to reach a
reasonable compromise with respect to this request. ASHRAE is willing to provide Public
Resource with an affidavit making clear that any individual who participated in the development
process for the three versions of Standard 90.1 at issue has executed the form rights assignment
agreement that ASHRAE has already provided to Public Resource. In light of ASHRAE’s
willingness to arrive at a mutually agreeable resolution, notwithstanding Public Resource’s failure
to discuss its motion with opposing counsel, the overbroad relief requested by Public Resource
should be denied.
ASHRAE Has Already Informed Public Resource That It Does Not Accept Financial
Contributions, Other Than Membership Fees, In The Standards Development Process
For Standard 90.1.
Public Resource seeks documents relating to “financial contributions” received by
ASHRAE in the standards development process for Standard 90.1. Mot. at 7-9. Public Resource
ignores, however, the fact that ASHRAE has already stated, in a sworn interrogatory response, that
“[i]n the development process for Standard 90.1, ASHRAE does not accept any financial
contributions other than general fees it receives for membership in ASHRAE.” See Zee Decl., Ex.
2 at 12 (Response to Interrogatory No. 5). To the extent that Public Resource seeks information
concerning ASHRAE’s general membership fees, ASHRAE is willing to provide Public Resource
In addition, Public Resource’s requested relief is apparently not limited to the as-executed
release agreements themselves, but also includes “all documents constituting, comprising, referring
to, or evidencing” such agreements. Mot. at 7. But Public Resource presents no argument to
justify its broader request for documents referring to, comprising, or evidencing rights assignment
agreements, and instead limits its argument to the actual agreements themselves. It would be
unduly burdensome for ASHRAE to undertake a search for such documents “referring to” a rights
assignment. Ramspeck Decl. ¶ 13.
with a summary of revenues from such fees. Otherwise, ASHRAE receives no financial
contributions in the development process for Standard 90.1, and thus has no documents to provide.
This includes any “direct financial contributions from government entities” that Public Resource
speculates ASHRAE might receive, as well as any financial contribution of the sort that Public
Resource contends would convert Standard 90.1 into a “work for hire with other entities owning
the copyright.” Mot. at 8. There is no basis to grant Public Resource the relief it seeks. 4
ASHRAE Is Willing To Reach A Reasonable Compromise To Search For And
Produce Non-Privileged Documents Relating To This Litigation.
With respect to Public Resource’s Request Nos. 8 and 9, ASHRAE indicated that it was
willing to conduct a search of selected ASHRAE custodians for documents that reference Carl
Malamud or Public Resource, subject to the reasonable condition that it would exclude from its
production documents related to the litigation or the possibility of taking legal action against Public
Resource. Lu Decl., Ex. 15. ASHRAE proposed this condition as a reasonably tailored means of
excluding documents that would plainly be subject to either work-product protection or the
attorney-client privilege. Public Resource rejected this offer, and proposed instead that ASHRAE
search for and produce non-privileged documents that “expressly refer to the name of Public
Resource, Carl Malamud, or any of Public Resource’s representatives” and that “relate to the
matters specifically alleged in the Complaint.” Lu Decl., Ex. 9.
ASHRAE remains willing to conduct a reasonable search for documents that refer to Public
Resource or to Mr. Malamud. From ASHRAE’s perspective, the only issue of potential dispute is
Again, Public Resource presents argument in its motion only as to “financial
contributions” but seeks a broad order compelling production of “all documents relating to
contributions.” Mot., Ex. A (Proposed Order). To the extent that Public Resource seeks relief on
aspects of its discovery requests for which it has failed to present argument (and, again, on which it
has failed to meet and confer), its motion should be denied. In any event, responding to such a
request for “all documents relating to contributions” would impose a substantial burden on
ASHRAE to the point of interfering with its ability to meet its mission. Ramspeck Decl. ¶ 16.
the identity of the ASHRAE custodians whose documents will be searched; to this end, ASHRAE
agreed to provide its current organizational chart to Public Resource. Lu Decl., Ex. 15.
As for Request No. 17, which seeks “[a]ll documents constituting, comprising, or
concerning communications by [ASHRAE] regarding this dispute or litigation,” Lu Decl., Ex. 2,
subject to its objections, ASHRAE searched for and produced the responsive, non-privileged
documents that it located. ASHRAE is willing to discuss expanding the scope of its search and
supplementing its production with any additional responsive, non-privileged documents it locates.
Public Resource’s Request No. 16 seeks “all documents constituting, comprising, or
concerning communications criticizing Your claims, statements, arguments, or positions in this
dispute or litigation.” Lu Decl., Ex. 2. ASHRAE objected on grounds that the term “criticizing” is
vague and ambiguous, and thus renders the Request unduly burdensome. Lu Decl., Ex. 4. For
example, to the extent ASHRAE possesses such communications—and ASHRAE has no reason to
believe it does—they could only be located by close review of the contents of each potentially
responsive communication, a process which would consume substantial ASHRAE resources.
Ramspeck Decl. ¶ 17.
In contrast to this burden is the lack of relevance of any such documents “criticizing”
ASHRAE’s litigation position. As ASHRAE noted in its May 23 correspondence to Public
Resource, there is no conceivable relevance of such documents to this case, and instead the request
seems designed to unearth material that might be perceived as embarrassing to ASHRAE. Lu
Decl., Ex. 15. In its correspondence, Public Resource offered no reason why such documents
would be relevant, stating only that those who participated in the standards development process or
in “lobbying activities” “may also have raised these issues in communications criticizing
Plaintiffs.” Lu Decl., Ex. 9. Public Resource makes no other attempt to explain their relevance in
its motion, assuming any such documents exist. Nonetheless, if Public Resource is willing to
eliminate the inherent ambiguity and subjectivity in the term “criticizing” and to supply a
reasonable number of concrete search terms for ASHRAE to attempt to locate responsive
documents, ASHRAE will consider doing so in a good faith effort to reach compromise on this
ASHRAE Does Not Maintain Comprehensive Information Or Documents Tracking
All Legal Authorities That Have Incorporated Its Standards.
In Public Resource’s Request for Production No. 5, it seeks documents “sufficient to
identify every Legal Authority that incorporates each Work-At-Issue, either expressly or by
reference.” Lu Decl., Ex. 2. In effect, Public Resource wants ASHRAE to scour all laws,
regulations, and ordinances and tell Public Resource all of the laws into which ASHRAE standards
have been incorporated. And Public Resource presses this request despite the fact that its own
website purports to identify the jurisdictions that have incorporated ASHRAE Standard 90.1. See
Public Safety Codes Incorporated By Law, available at https://law.resource.org/pub/us/code
/safety.html (last visited Sep. 30, 2014). Moreover, ASHRAE has already informed Public
Resource that it does not comprehensively track or catalog the statutes, regulations, or laws into
which its standards may be incorporated, such that it may simply provide a database or catalog to
Public Resource. Lu Decl., Ex. 15. ASHRAE stated as much in its response to Public Resource’s
Interrogatory No. 2, and, in addition, provided information regarding the publicly available
databases that ASHRAE relies upon for incorporation information, when the need arises. Zee
Decl., Ex. 2 at 7 (Response to Interrogatory No. 2). To the extent that ASHRAE has any
information or documents bearing on potential incorporation of its standards by various
jurisdictions across the United States, such documents are not centrally maintained, and it would be
unreasonably burdensome to locate and collect this material. Ramspeck Decl. ¶ 18. Further, any
such documents are by no means comprehensive, and would result in a partial and incomplete
compilation of what Public Resource apparently seeks. Id.
Public Resource refuses to accept this response, asserting that ASHRAE is
“unquestionably” in better position to know and identify which jurisdictions incorporate its
standards, citing two purported bases for that assertion. Mot. at 12. First, Public Resource states
that it “is not aware of all laws that incorporate the standards of standards development
organizations.” Id. But, as explained above, neither is ASHRAE aware of all such laws; it instead
relies on the publicly available databases to which it has already directed Public Resource.
Second, Public Resource suggests that ASHRAE can refer to its own communications with
government entities and unspecified “other records.” Id. As to the former, in response to Public
Resource’s Request for Production No. 7, ASHRAE has agreed to produce all non-privileged
written correspondence between ASHRAE and government officials requesting consideration for
the incorporation of Standard 90.1. Lu Decl., Ex. 4. Through those communications, Public
Resource can just as easily research and determine whether a particular jurisdiction has
incorporated Standard 90.1. As to the latter, unspecified “other records,” it is unclear what
“records” Public Resource thinks ASHRAE should reference, particularly since ASHRAE has
already informed Public Resource that it does not maintain an internal catalog of the jurisdictions
that have incorporated its standards by reference.
In short, Public Resource’s unsupported assumption that ASHRAE must know this
information is no basis to compel ASHRAE to respond, particularly when ASHRAE has responded
several times that it does not comprehensively track or catalog the legal jurisdictions in question.
Public Resource’s request to compel production of documents in response to Request No. 5 should
ASHRAE respectfully requests that the Court deny Public Resource’s motion to compel
based on its failure to comply with Local Rule 7(m). In the alternative, the Court should deny
Public Resource’s motion on its merits.
Dated: October 2, 2014
/s/ Kenneth L. Steinthal
Kenneth L. Steinthal admitted pro hac vice)
Joseph R. Wetzel (admitted pro hac vice)
M. Andrew Zee (admitted pro hac vice)
KING & SPALDING, LLP
101 2nd Street, Suite 2300
San Francisco, CA 94105
Jeffrey S. Bucholtz (D.C. Bar: 452385)
KING & SPALDING, LLP
1700 Pennsylvania Avenue, NW, Suite 200
Washington, DC 20006
Counsel for the American Society of
Heating, Refrigerating, and Air
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