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

Filing 51

REPLY to opposition to motion re #41 MOTION to Compel Discovery filed by PUBLIC.RESOURCE.ORG, INC.. (Attachments: #1 Declaration of Andrew P. Bridges in Support of Defendant's Reply re Motion to Compel Discovery, #2 Exhibit 1 to Declaration of Andrew Bridges, #3 Errata 2 to Declaration of Andrew Bridges)(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
REPLY IN SUPPORT OF MOTION TO COMPEL DISCOVERY

Table of Contents
Page
I. 

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

II. 

ARGUMENT ...................................................................................................................... 2 
A. 

Public Resource Complied with the Substance of Local Rule 7(m), as It Met and
Conferred Extensively with Plaintiffs Concerning the Documents It Seeks......... 2 

B. 

Plaintiffs Must Produce All Individual and Executed License Agreements (RFP
No. 18). .................................................................................................................. 4 
1. 

Individual, Executed License Agreements Are Highly Relevant to Several
Issues, Including Plaintiffs’ Revenues and Public Resource’s Affirmative
Defenses. ..................................................................................................... 4 

2. 

Plaintiffs Have Not Shown that Providing the Requested Discovery Would
Be Unduly Burdensome. ............................................................................. 6 

C. 

Plaintiffs Must Produce Individual Assignment of Rights Agreements (RFP Nos.
2 and 6). ................................................................................................................. 8 

D. 

Plaintiffs Must Produce Documents Relating to Financial Contributions (RFP
Nos. 4, 12, 13, 14, 15). ........................................................................................ 11 
1. 

2. 
E. 

Documents Relating to Financial Contributions Are Relevant to the
Incentives, Financial Burdens, and Investments Pertaining to Creation of
the Works At Issue, and to Plaintiffs’ Claim of Harms to Their Licensing
Model Flowing from Expanded Free Public Access to Their Standards. . 11 
Plaintiffs Have Failed To Make An Adequate Showing of Burden. ........ 12 

Documents Relating to this Litigation Represent the Core of Relevant
Documents (RFP Nos. 8, 9, 17 and 18). .............................................................. 13 
1. 

2. 
F. 

Plaintiffs Have Offered No Valid Reason Categorically to Exclude All
Documents Relating to the Litigation, Where Public Resource Does Not
Seek Privileged Documents. ..................................................................... 13 
Plaintiffs Have Failed to Make an Adequate Showing of Burden. ........... 15 

Plaintiffs Must Produce Documents Relating to Legal Authority Incorporating
Plaintiffs’ Standards (RFP No. 5)........................................................................ 15 
1. 

Plaintiffs Are in a Superior Position to Search For and to Produce
Documents Relating to Legal Authority Incorporating Their Standards. . 15 

i

2. 
3. 
G. 
III. 

Plaintiffs’ Assertions that Public Resource Can Otherwise Identify
Incorporating Legal Authority Are False. ................................................. 16 
Plaintiffs Have Failed To Make An Adequate Showing of Burden. ........ 16 

Plaintiff NFPA’s ROP/ROC’s Are Not Responsive to Numerous of Public
Resource’s Requests (RFP Nos. 2, 4, 12, 13, and 15). ........................................ 17 

CONCLUSION ................................................................................................................. 18 

ii

Table of Authorities
Page(s)
CASES
Arista Records LLC v. Lime Grp. LLC,
06 CV 5936 KMW, 2011 WL 813481 (S.D.N.Y. Feb. 28, 2011) ...........................................13
Arthrex, Inc. v. Parcus Med., LLC,
2:11-CV-694-FTM-29, 2012 WL 5382050 (M.D. Fla. Nov. 1, 2012) ......................................7
Cable & Computer Tech. v. Lockheed Sanders, Inc.,
175 F.R.D. 646 (C.D. Cal. 1997) ...............................................................................................6
Christopher Phelps & Associates, LLC v. Galloway,
492 F.3d 532 (4th Cir. 2007) .....................................................................................................5
Davis v. Blige,
505 F.3d 90 (2d Cir. 2007).......................................................................................................10
eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388 (2006) ...............................................................................................................5, 6
GFL Advantage Fund, Ltd. v. Colkitt,
216 F.R.D. 189 (D.D.C. 2003)...................................................................................................4
Herb Reed Enters., LLC v. Fla. Entm’t Mgmt., Inc.,
736 F.3d 1239 (9th Cir. 2013) ...................................................................................................6
In re Imperial Corp. of Am.,
174 F.R.D. 475 (S.D. Cal. 1997) .............................................................................................14
Int’l Code Council v. Nat’l Fire Prot. Ass’n,
79 U.S.P.Q.2D 1651 (N.D. Ill.Mar. 27, 2006) ...........................................................................9
Law Enforcement Training & Research Assocs. v. City & Cnty. of San Francisco,
90-15482, 1991 WL 172416 (9th Cir. Sept. 4, 1991) ..............................................................10
S.E.C. v. Thrasher,
92 CIV. 6987 (JFK), 1996 WL 125661 (S.D.N.Y. Mar. 20, 1996) .........................................13
U.S. ex rel. Fisher v. Network Software Associates,
217 F.R.D. 240 (D.D.C. 2003)...................................................................................................7
OTHER AUTHORITIES
Federal Rule of Civil Procedure 37(a)(2) ........................................................................................4
Local Rule 7(m) ...........................................................................................................................2, 4
iii

I.

INTRODUCTION
In its opening papers [Dkt. No. 41], Defendant Public.Resource.Org, Inc. demonstrated

that Plaintiffs American Society For Testing and Materials (“ASTM”), National Fire Protection
Association, Inc. (“NFPA”) and American Society Of Heating, Refrigerating And Air
Conditioning Engineers (“ASHRAE”) have improperly refused to produce all responsive
documents in five separate categories: (1) executed license agreements; (2) executed
assignment-of-rights agreements; (3) documents concerning financial contributions to Plaintiffs;
(4) non-privileged documents concerning Plaintiffs’ decision to pursue legal action against
Public Resource; and (5) documents concerning laws that incorporate the Standards at issue in
this lawsuit.
Plaintiffs’ opposition briefs [Dkt. Nos. 46-48] fail to rebut Public Resource’s showing.
Plaintiffs do not seriously dispute that the documents and information sought by Public Resource
is relevant to this lawsuit. Instead, Plaintiffs argue that they should get to cherry-pick the
documents they produce, and to include only those documents they deem the most relevant and
useful with respect to the claims and defenses in this action. Plaintiffs have no right to cherrypick what subset of responsive documents they must provide. They have no right to preempt
Public Resource’s determination of what documents they think are probative and important.
Plaintiffs argue that it would be unduly burdensome to require them to fully respond to
Public Resource’s disputed requests, but Plaintiffs have furnished no factual support to show that
they face any unusual burden in this case that they chose to bring. Indeed, the little information
they have revealed about the ostensible burden suggests that it is typical. Their problem is that
the core fact underlying their entire case, namely that they own the copyrights at issue by virtue
of assignments from many persons who volunteered in the standards creation process, depends
upon numerous documents. Only examination of a complete set of those documents will suffice
1

to test the fundamental element of their claim. Moreover, another critical aspect of Plaintiffs’
claims, namely that by empowering the public to study and work with standards, incorporated
into law, that Plaintiffs have organized, Public Resource is wrongfully depriving them of critical
license revenue that Plaintiffs have a right to extract, and do extract, from persons wanting
access to their standards, requires full examination of all of the license agreements Plaintiffs
have made. Because Plaintiffs have completely failed to justify their resistance to the discovery
sought, the Court should grant Public Resources’ motion to compel in its entirety.
II.

ARGUMENT
A.

Public Resource Complied with the Substance of Local Rule 7(m), as It Met
and Conferred Extensively with Plaintiffs Concerning the Documents It
Seeks.

Plaintiffs ask the Court to deny the Motion to Compel because Public Resource did not
include the certification that Local Rule 7(m) requires. As Public Resource explains below,
Plaintiffs argument for delaying resolution of this motion fails to account for the undeniable fact
that Public Resource extensively met-and-conferred with Plaintiffs over a period of months
concerning the discovery requests that are the subject of the Motion to Compel, and Public
Resource’s mere technical noncompliance with Rule 7(m)’s certification provision does not
warrant denial of Public Resource’s Motion to Compel.
Local Rule 7(m) imposes a meet-and-confer requirement in connection with
nondispositive motions. The rule provides that“[b]efore 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,” and it requires the moving party to include in its motion a
certification of compliance with the rule. As the documents that Public Resource filed in support
of its opening brief establish, Public Resource indisputably complied with the substance of Local
2

Rule 7(m)’s meet-and-confer requirement. Before filing its Motion, Public Resource met and
conferred extensively with Plaintiffs concerning the deficiencies in their discovery responses,
document production, and the scope of discovery. That extensive meet and confer process,
beginning in May 2014, involved two lengthy telephone conferences among counsel for all
parties. See Lu Decl., ¶ 12. Public Resource also exchanged numerous letters to follow up on
those conferences between May and September. See Lu Decl., ¶¶ Exs. 7-15.
Through those lengthy conferences and exchanges, Public Resource set out in great detail
the deficiencies in Plaintiffs’ discovery responses and Public Resource’s position concerning
each category of documents it seeks. Public Resource also offered numerous compromises on
areas of dispute. Notwithstanding those efforts, in September 2014, Public Resource reasonably
concluded that the parties were at an impasse as to the categories of documents that are the
subject of this Motion, and with the close of discovery fast approaching, Public Resource filed its
Motion to Compel. Although Plaintiffs claim to be surprised by the filing of this Motion, there
can be no dispute that Public Resource engaged in extensive meet-and-confer efforts with
Plaintiffs and that further meet-and-confer discussions were not likely to eliminate the need for
this Motion—indeed, Plaintiffs’ opposition briefs make clear that Plaintiffs remain unwilling to
provide full and complete responses to Public Resource’s discovery requests, and a motion to
compel was inevitable. Plaintiffs’ posture appears to be that, before filing a motion, Public
Resource needed to say “hey, we really mean it, and now we’re going to court.” The filing of a
motion was an obvious consequence of a clear impasse on numerous points in the conferences
and correspondence.

3

Finally, although the certification in the Motion to Compel1 (see Motion at 14) did not
specifically state “that the required discussion occurred” and “whether the motion is opposed,”
as required by Local Rule 7(m), that technical non-compliance does not warrant denial of this
Motion, particularly given the significance of the discovery at issue and Plaintiffs’ continued,
strenuous opposition to the relief sought by Public Resource. See, e.g., GFL Advantage Fund,
Ltd. v. Colkitt, 216 F.R.D. 189, 194 (D.D.C. 2003)(granting motion to compel despite missing
Local Rule 7(m) certification, where moving party attempted to meet and confer to gauge nonmoving party’s intention to comply with subpoena and where non-moving party did in fact
oppose the motion).
B.

Plaintiffs Must Produce All Individual and Executed License Agreements
(RFP No. 18).
1.

Individual, Executed License Agreements Are Highly Relevant to
Several Issues, Including Plaintiffs’ Revenues and Public Resource’s
Affirmative Defenses.

As Public Resource detailed in its opening papers, license agreements are relevant to
numerous issues in this litigation, including but not limited to (i) Plaintiffs revenues and the
allegations of harm as a result of lost sales and licensing opportunities; (ii) whether Plaintiffs
deserve injunctive relief; (iii) the market-harm analysis of the fair use defense; (iv) whether and
on what terms Plaintiffs authorize government entities to incorporate their works into law or
otherwise use them; (v) whether Plaintiffs have assented to any such uses; and (vi) whether
Plaintiffs license their works in a manner that violates public policy. See Motion at 5.
Plaintiffs do not dispute that their license agreements are relevant, but they wrongly
contend that their cherry-picking of “form” license agreements and “representative examples”

1

Public Resource’s Motion does contain a certification, pursuant to Federal Rule of Civil
Procedure 37(a)(2), that Public Resource’s counsel made a good faith effort to confer with
Plaintiffs in an attempt to resolve the dispute. See Motion at 14.
4

fully accommodates Public Resource’s need for discovery into their license agreements. ASTM
Opp. at 7-9; NFPA Opp. at 5; ASHRAE Opp. at 5-7.2 ASTM assumes that Public Resource can
obtain all relevant information by reference to ASTM’s overall revenues and mere examples of
license agreements. But documents regarding general revenues lack basic and relevant
information that Public Resource needs to understand Plaintiffs’ specific licensing activities
regarding the standards at issue, including the price of each license. In addition, ASTM notably
does not claim that all of its licenses are identical to the form versions, including permission
requests from third parties to use standards in publications, presentations, and for other noncommercial purposes.3 ASTM Opp. at 6. Public Resource is entitled to discovery concerning
the complete scope of Plaintiffs’ licensing activities, and Plaintiffs’ offers to provide selfselected “examples” is manifestly insufficient.
Moreover, contrary to ASTM’s assertions (ASTM Opp. at 7-8), individual licenses are
relevant to a market harm analysis and to Plaintiffs’ claims of irreparable injury for purposes of a
permanent injunction.4 Public Resource must have access to the individual licenses in order to

2

While meeting and conferring, in the spirit of compromise, Public Resource proposed that,
for form agreements where there were no changes to the agreements from the form, Plaintiffs
may produce one form agreement plus a list of signatories, reserving its right to request the
production of the executed agreement for any particular signatories. See, e.g., Lu Decl., ¶ 20
and Ex. 14, at 2. Public Resource remains willing to accept such a production.

3

ASTM argues that Public Resource has not identified any individual license it needs to
review in connection with Public Resource’s copyright or trademark misuse claims, but this
is putting the cart before the horse. Indeed, Public Resource cannot make this determination
without reviewing them first and knowing that they exist.

4

Irreparable injury is no longer presumed for purposes of a permanent injunction, and
Plaintiffs are therefore required to show how their licensing activities will be irreparably
harmed as a result of Public Resource’s actions. See eBay Inc. v. MercExchange, L.L.C., 547
U.S. 388, 391 (2006) (holding that plaintiff seeking a permanent injunction must make a
showing “that it has suffered an irreparable injury”); Christopher Phelps & Associates, LLC
v. Galloway, 492 F.3d 532, 543 (4th Cir. 2007) (holding that eBay’s requirement of a
showing of irreparable harm in the context of a permanent injunction applies in any type of
5

form a complete understanding of the “market” alleged to have been harmed, the financial and
other terms of licenses in the market, and to rebut Plaintiffs’ characterization of the market. It
cannot glean that information from form licenses. Additionally, whether Plaintiffs have given
non-revenue licenses, or have used licenses to assert improper control over the law itself, is
extremely relevant to the public interest portion of the permanent injunction analysis.
For the same reasons, the Court should not permit NFPA to produce only “current
versions” of its licenses and ASHRAE to produce only “representative sample” licenses and
“current versions” of distribution agreements. Public Resource requires all versions of these
documents, including all licenses that are still in effect, whether or not they are the “current
version.”
In sum, the Court should not ratify Plaintiffs’ improper attempt to cherry-pick the
licensing information that they provide to Public Resource, because a limited production would
deprive Public Resource of essential information it needs to understand the full range of
circumstances of Plaintiffs’ licensing activities.
2.

Plaintiffs Have Not Shown that Providing the Requested Discovery
Would Be Unduly Burdensome.

Plaintiffs also argue that it would be unduly burdensome to require them to produce all
responsive license agreements. ASTM Opp. at 5-7; NFPA Opp. at 4-5; ASHRAE Opp. at 6. It is
black-letter law that Plaintiffs, as the parties opposing discovery, bear the burden of showing
why they should not be required to produce relevant and responsive documents. “The 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
case, including a copyright case). Herb Reed Enters., LLC v. Fla. Entm’t Mgmt., Inc., 736
F.3d 1239, 1249 (9th Cir. 2013) (stating that, after eBay, a showing of irreparable harm is
required to obtain injunction in copyright or trademark infringement actions). Individual
licenses showing the terms of each are highly relevant to that analysis.
6

Sanders, Inc., 175 F.R.D. 646, 650 (C.D. Cal. 1997). Plaintiffs’ showing fails to meet that
burden: Plaintiffs offer only vague, conclusory assertions concerning the burden associated with
producing their license agreements, and they fail provide Public Resource and the Court any
meaningful specifics about the amount of time or the cost associated with such searches. See,
e.g., U.S. ex rel. Fisher v. Network Software Associates, 217 F.R.D. 240, 246 (D.D.C. 2003)(a
party does not meet its burden of showing why production would be burdensome by “merely
stat[ing], in conclusory fashion, that the requests are unduly burdensome.”); see also Arthrex,
Inc. v. Parcus Med., LLC, 2:11-CV-694-FTM-29, 2012 WL 5382050 (M.D. Fla. Nov. 1,
2012)(granting motion to compel where plaintiff “has not demonstrated any reason . . . that
makes these requests burdensome, overbroad, and/or oppressive.”).
ASTM, for example, merely states that obtaining responsive documents “would require
significant work by ASTM’s IT department, which would impose a significant burden on
ASTM,” and that “[i]t would be extremely burdensome for ASTM to search for and review each
communication relating to a permission request for over 200 standards at issue.” See Declaration
of Norma Jane Hair in Support of ASTM’s Opposition (“Hair Decl.”), ¶¶ 5-6. But ASTM’s
papers avoid providing any details that would permit the Court to evaluate ASTM’s claims of
burden. NFPA’s and ASHRAE’s briefs make similarly vague and unsupported burden
arguments, and the few specifics that they provide plainly do not demonstrate that producing all
relevant and responsive license agreements would be unduly burdensome. NFPA provides no
information regarding the total amount of time and cost necessary to search for copyright
permission letters. NFPA only states that it will take 1-2 hours, per standard, to search for
licenses from the 2000-2006 time period. See Declaration of Dennis J. Berry in Support of
NFPA’s Opposition (“Berry Decl.”), ¶ 4. NFPA has only asserted 17 standards from that time

7

period. See Compl., Ex. B. As to older copyright permission letters, NFPA states it could take
“as much as 3 – 4 hours per year to review, identify, track and organize a response, for each of
the years 2000 – 2013 . . . .” See Berry Decl., ¶ 7. ASHRAE similarly states that it would be
“unduly burdensome” to require it to produce network- and personal-use licenses, but it makes
no attempt to quantify that claimed burden.5 What little detail the Plaintiffs have provided in fact
undermines their claim of an undue burden.
C.

Plaintiffs Must Produce Individual Assignment of Rights Agreements (RFP
Nos. 2 and 6).

Individual assignment of rights agreements are relevant to authorship and ownership of
the works at Issue and to Plaintiffs’ standing to bring infringement claims. Assignment of rights
agreements are relevant to several issues, not least of which is Plaintiffs’ claims of ownership
over the standards at issue.6 Because the standards at issue were the work of many authors,
including both government and private-sector employees, acting on behalf of their employers but
participating on a volunteer basis in the standards development process, each individual
assignment is relevant to show whether a contributor to a standard actually assigned his or her
rights in that standard to a Plaintiff and to each Plaintiff’s knowledge of the ownership of the
standards at issue at the time those works became incorporated into law. The individual,
executed assignments are necessary to show the completeness of each assignment, whether each

5

Moreover, as Plaintiffs in this action, ASTM, NFPA and ASHRAE controlled the scope of
their claims against Public Resource. ASTM, for example, chose to assert over 200
standards against Public Resource. Thus, even if Plaintiffs could make an adequate showing
of burden, which they have not done, that burden would stem from the scope of their claims
against Public Resource.

6

ASTM’s apparent reliance on the fact that Public Resource “has never once discussed
ownership of copyrights as a genuine issue of dispute” has no bearing as to whether it is an
issue in this dispute. ASTM Opp. at 9. Indeed, Public Resource has asserted “lack of
ownership” as an affirmative defense, and the discovery sought is necessary to further
develop that defense.
8

assignment was valid, whether any modifications were made to the standard form agreements by
assignors, and, to the extent any assignments were effectuated by means of a “click wrap”
assignment, whether any such purported assignments were valid.
Contrary to Plaintiffs’ assertions, the case law cited by each in their oppositions actually
demonstrates that Public Resource may challenge Plaintiffs’ copyright ownership of the
standards at issue. See Int’l Code Council v. Nat’l Fire Prot. Ass’n, 79 U.S.P.Q.2D 1651, 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.
[h]owever . . . the case law does appear to recognize an alleged infringer’s right to mount such a
challenge.”) (citing M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1490 (11th Cir.
1990) (allowing the work-for-hire issue to be raised by a third-party defendant against an
infringement claim)).
NFPA’s argument that Public Resource has not shown that any of the persons who
contributed to the standards at issue have objected to NFPA’s claim of copyright ownership
(NFPA Opp. at 7) is not relevant. Public Resource raised Plaintiffs’ lack of ownership as an
affirmative defense. See Answer and Counterclaim of Public.Resource.Org [Dkt. No. 21], at 48.
Public Resource has no way of ascertaining at this point what objections contributors have made
to Plaintiffs’ claimed ownership of the standards, but, in any event, the absence of objections
would not confer copyright protection on works which NFPA does not validly own. Rather, any
lack of title is fatal to NFPA’s claim, as it would not have standing to sue for infringement. The
unpublished Ninth Circuit case cited by NFPA lacks relevance here, as nothing in that case
suggests that a party facing suit for infringement may not challenge the plaintiff’s copyright

9

ownership. Law Enforcement Training & Research Assocs. v. City & Cnty. of San Francisco,
90-15482, 1991 WL 172416, at *1 (9th Cir. Sept. 4, 1991).7
Given the clear relevance of executed and individual assignments, Plaintiffs should not
exclude them from production by producing only form assignments.8 NFPA states that
assignment of rights agreements are “invariably executed via a standard form . . . with extremely
isolated exceptions.”9 But NFPA’s express acknowledgement that there are “exceptions” itself
compels the conclusion that production of only the form agreements is insufficient and supports
Public Resource’s position that the production of individual assignments is necessary. NFPA
further asserts that its “Reports on Proposals,” or “ROPs,” and “Reports on Comments,” or
“ROCs,” suffice to provide Public Resource with information regarding assignments. NFPA
Opp. at 6. But these documents do not provide the terms of any assignment agreements. Finally,
ASHRAE in its opposition offers to provide Public Resource with an affidavit attesting to the
fact that any individual who participated in the development process for its standards executed

7

ASTM also cites to Davis v. Blige, 505 F.3d 90, 99 (2d Cir. 2007) for the proposition that
only one of its members who participated in drafting a standard need assign its rights for
ASTM to become a joint owner. But even if Plaintiffs could demonstrate standing to sue
based on an assignment of rights from fewer than all of the contributors to a standard, as
explained above, all of Plaintiffs’ assignment of rights agreements are nevertheless relevant
to additional issues in this case, including to what other parties (including any federal
government employees) may claim some copyright ownership in the standards at issue.

8

Though ASTM in its opposition states that it made paper versions of assignments available to
Public Resource for inspection and review, it has since stepped back from this position and
notified Public Resource it will deliver these documents electronically in a few days.

9

The Declaration of Christian Dubay, NFPA’s Chief Engineer and Vice President of Codes
and Standards notes at least one instance in which an individual contributor did not use the
standard form to assign his rights to NFPA. See Declaration of Christian Dubay ISO NFPA’s
Opposition (“Dubay Decl.”), ¶ 4. There may be other instances, of which Mr. Dubay is
unaware, where a contributor assigned his or her rights to NFPA without use of the standard
assignments forms.
10

the form “rights assignment agreement.” ASHRAE Opp. at 7. But it is far from clear how
ASHRAE can attest that each person executed a valid assignment without itself reviewing every
assignment, which it has claimed to be too burdensome.

D.

Plaintiffs Must Produce Documents Relating to Financial Contributions
(RFP Nos. 4, 12, 13, 14, 15).
1.

Documents Relating to Financial Contributions Are Relevant to the
Incentives, Financial Burdens, and Investments Pertaining to
Creation of the Works At Issue, and to Plaintiffs’ Claim of Harms to
Their Licensing Model Flowing from Expanded Free Public Access to
Their Standards.

Plaintiffs have failed to show why documents relating to financial contributions are not
relevant. As Public Resource explained in its Motion, financial contributions are relevant to a
myriad of issues, including: (i) Plaintiffs’ speculative allegations that they will suffer financial
harm unless they can enforce copyright protection over their standards and whether they will
suffer the harm they allege; (ii) Plaintiffs’ incentives to develop standards; (iii) whether Plaintiffs
receive direct financial contributions from government entities that incorporate their standards;
(iv) ownership over the asserted standards and whether any standards are works made for hire;
(v) whether Plaintiffs are entitled to injunctive relief; and (vi) the market harm prong of the fair
use analysis. See Motion at __.
For instance, ASTM in its opposition states that it “incurs substantial costs for the
infrastructure it has developed to assist with the development of the standards”. See ASTM
Opp. at 13, Compl., ¶ 51. Thus, documents relating to financial contributions are relevant to
show how ASTM covers these costs and whether and to what extent Plaintiffs will be harmed by
the alleged loss of licensing revenue. Other issues to which financial contributions are relevant
include contributions from government entities and the ownership of Plaintiffs’ standards.
Further, if Plaintiffs receive financial contributions, or contributions of labor that have a financial
11

equivalent, from persons or organizations that seek to promote public interest in the development
of standards, instead of contributing to a profit-making licensing enterprise, the existence of
those contributions will lead to important evidence on various issues, including Plaintiffs’ claims
of ownership and authorship, allegations of harm stemming from Public Resource’s activities,
and whether an injunction would in fact serve the public interest.10
Given the numerous relevant issues upon which financial contributions touch, ASTM’s
offer to produce only documents relating to licensing income and NFPA’s offer to produce only
annual, year-end financial reports are insufficient. Such documents do not provide essential
information relating to financial contributions, such as contribution amounts and the identity of
financial contributors.
2.

Plaintiffs Have Failed To Make An Adequate Showing of Burden.

While ASTM and NFPA argue that searching for and producing documents relating to
financial contributions is burdensome, they offer no specifics regarding that claimed burden, and
the Court should therefore reject Plaintiffs’ showing as insufficient. Unable to demonstrate any
actual undue burden from producing the requested information on financial contributions, ASTM
instead resorts to mischaracterizing Public Resource’s requests. ASTM wrongly claims that
Public Resource seeks every financial expenditure made by ASTM or any other individual.
ASTM Opp. at 12. But nothing in Public Resource’s request for documents concerning financial
contributions to ASTM relating to the standards at issue can conceivably be read as requesting
documents concerning all of ASTM’s own expenditures. Thus, because Plaintiffs have provided

10

Plaintiff ASHRAE asserts that it does not accept financial contributions “other than general
fees it receives for membership in ASHRAE.” See ASHRAE Opp. at 9-10. To the extent
these are the only documents relating to financial contributions in ASHRAE’s possession,
custody or control, they should be produced.
12

this Court with no specific information regarding burden, they have failed to meet their burden of
showing why responsive documents should be withheld.
E.

Documents Relating to this Litigation Represent the Core of Relevant
Documents (RFP Nos. 8, 9, 17 and 18).
1.

Plaintiffs Have Offered No Valid Reason Categorically to Exclude All
Documents Relating to the Litigation, Where Public Resource Does
Not Seek Privileged Documents.

As Plaintiffs fail to acknowledge, Public Resource does not seek the production of
privileged documents and communications. Instead, it seeks only non-privileged documents
relating to this litigation or the possibility of taking legal action against Public Resource or its
principal Carl Malamud. Responsive, non-privileged documents are likely to include
communications between or among Plaintiffs and third parties, as well as documents and
communications not prepared in anticipation of litigation. Notably, Plaintiffs have never
represented that responsive, non-privileged documents relating to this litigation do not exist. To
the contrary, Public Resource is aware of evidence suggesting that there are non-privileged
documents relating to this litigation.11
Plaintiffs rely upon inapposite case law involving discovery requests specifically aimed
at obtaining privileged documents in arguing categorically to exclude all documents relating to
this litigation or the possibility of taking legal action. See S.E.C. v. Thrasher, 92 CIV. 6987
(JFK), 1996 WL 125661, at *1-2 (S.D.N.Y. Mar. 20, 1996) (limiting production of documents
concerning internal communications, where requesting party sought production of all
communications between defense counsel concerning the lawsuit); Arista Records LLC v. Lime

11

In its September 5, 2014 letter to NFPA, Public Resource notified NFPA of its belief that
Maureen Brodoff, NFPA’s former general counsel (and a custodian which NFPA seeks to
exclude) is likely to have non-privileged documents that are relevant to Public Resource’s
counterclaims and defenses, as Ms. Brodoff has regularly made public statements regarding
the effect on NFPA’s business model of free access to its standards. See Lu Decl., Ex 14 at 2.
13

Grp. LLC, 06 CV 5936 KMW, 2011 WL 813481, at *4-6 (S.D.N.Y. Feb. 28, 2011) (requested
documents concerned communications between party’s counsel, internal communications during
the course of litigation, in anticipation of litigation and concerning related litigation); In re
Imperial Corp. of Am., 174 F.R.D. 475, 476 (S.D. Cal. 1997) (concerning whether plaintiffs were
required to provide a document by document privilege log as to those documents withheld on
privilege grounds.).
Despite Plaintiffs’ claims, there was no confusion regarding their stated positions before
Public Resource brought this Motion. ASTM claims that it had “explicitly agreed to search for
documents that relate to this litigation.” See ASTM Opp. at 15. But in both its May 23, 2013
and August 22, 2013 letters to Public Resource, it explicitly stated that it would exclude
documents relating to this litigation, as well as documents in possession of its general counsel
Thomas O’Brien. See Lu Decl., Exs. 8, 10. NFPA states that Public Resource’s motion to
compel was brought prematurely. See NFPA Opp. at 9. But NFPA made clear in its August 22,
2013 letter that it would categorically exclude documents relating to the litigation and documents
in possession of its former general counsel, Maureen Brodoff, and its current General Counsel,
Sally Everett. See Lu Decl., Ex. 12. ASHRAE also seeks to withhold documents relating to this
litigation or the possibility of taking legal action against Public Resource. ASHRAE Opp. at 10.
Contrary to Plaintiff’s assertions, the parties are unquestionably at an impasse on this issue.
Finally, ASTM has proposed that the parties should not have to log privileged documents
and communications created after January 1, 2013. Public Resource has proposed that the
parties need not log documents that post-date the filing of the Complaint, which did not occur
until eight months later. ASTM’s proposed date is too early, especially given that nonprivileged documents and communications that post-date January 1, 2013 are likely to exist.

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2.

Plaintiffs Have Failed to Make an Adequate Showing of Burden.

It is Plaintiffs’ burden to show why responsive, non-privileged documents should be
categorically withheld. However, Plaintiffs have offered no evidence regarding the burden on
them of searching for and producing responsive documents. Thus, the Court should not permit
Plaintiffs to categorically exclude documents relating to this litigation or the possibility of taking
legal action against Public Resource or its principal.
F.

Plaintiffs Must Produce Documents Relating to Legal Authority Incorporating
Plaintiffs’ Standards (RFP No. 5).
1.

Plaintiffs Are in a Superior Position to Search For and to Produce
Documents Relating to Legal Authority Incorporating Their Standards.

Contrary to Plaintiffs’ assertions, Public Resource’s discovery requests relating to
incorporating Legal Authority do not purport to require Plaintiffs to conduct research to
determine what jurisdictions have incorporated the standards at issue into law. Rather, Public
Resource asks only that Plaintiffs produce documents already in their possession concerning
incorporation of the standards at issue. Compared to Public Resource, Plaintiffs are in a superior
position to search for and produce documents relating to the Legal Authority that incorporates
their standards. Responsive documents are highly relevant and are already likely to be in
Plaintiffs’ possession, custody and control. Indeed, NFPA admits that it has a database which
tracks such information, NFPA Opp. at 10, and ASTM and ASHRAE admit to communications
with government officials relating to the incorporation of their standards. ASTM Opp. at 18;
ASHRAE Opp. at 13.
Because Public Resource can rely only upon publicly available information, its list of
incorporating Legal Authority may be incomplete. Where Plaintiffs have more complete and
handy access to this information, they should produce it. This ensures that the parties are on
equal footing and have access to the same documents and information.

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2.

Plaintiffs’ Assertions that Public Resource Can Otherwise Identify
Incorporating Legal Authority Are False.

Plaintiffs assert that Public Resource can ascertain incorporating Legal Authority by
referring to publicly available information, such as that provided by the National Institute of
Standards and Technology (“NIST”) database. ASTM Opp. at 18; NFPA Opp. at 10. But, as
ASTM notes, the NIST database maintains only information about standards that federal
regulations reference; it will have no information relating to non-federal regulations, including
state, county, or municipal regulations. ASTM Opp. at 18.
As an alternative to producing responsive documents, ASTM and ASHRAE state that
they need produce only communications between certain identified custodians and government
employees that contain “specific terms relating to the incorporation by reference of ASTM’s
standards”. ASTM Opp. at 18; ASHRAE Opp. at 13. These communications are insufficient for
several reasons. First, there is no guarantee that the communications are complete or exhaustive
regarding incorporating Legal Authority. Second, additional relevant information may be in the
possession of custodians for whom ASTM will not produce documents. Third, applying search
terms “relating to incorporation by reference” does not guarantee that Public Resource will
receive complete information regarding all incorporating Legal Authority.
3.

Plaintiffs Have Failed To Make An Adequate Showing of Burden.

Plaintiffs fail to make an adequate showing as to why the production of documents
relating to incorporating Legal Authority would constitute an undue burden. ASTM merely
argues that it does not “keep track” of incorporated standards. ASTM Opp. at 18. ASHRAE
similarly contends that documents regarding incorporating Legal Authority are “not centrally
maintained.” ASHRAE Opp. at 12. ASTM and ASHRAE have not stated that they have no way
of determining what relevant documents they possess, despite reasonable searches. They have

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not offered any specific information about the burden they would face. Given the absence of
justification to resist the discovery, the Court should order them to search for and produce
documents that are in their possession, custody or control.
G.

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

NFPA contends that its production of ROPs and ROCs sufficiently responds to several of
Public Resource’s requests because they function as comprehensive records of the standards
development process, compile and reproduce every proposal and every comment that is received
when the standards are being developed, and identify members of each committee that worked
on the proposals and detail the votes of the committees on each proposal. See Dubay Decl., ¶¶ 912. For several reasons, however, the ROPs and ROCs still do not sufficiently respond to several
of Public Resource’s requests.
For instance, Public Resource’s Request No. 10 calls for actual communications,
including meeting and conference call minutes and notes. As described by NFPA, the ROPs and
ROCs do not contain all of these actual communications, as they only represent or reproduce
comments and proposals. Further, Public Resource seeks NFPA’s meeting and conference call
minutes and notes. It is unclear whether the ROPs and ROCs provide a comprehensive or
complete record of this information, as NFPA merely states that ROPs and ROCs are “generally
duplicative” of agendas, minutes, sign in sheets, and materials distributed at the meetings.
Moreover, ROPs and ROCs do not provide information relating to financial contributions, as
Requests Nos. 4, 12, 13 and 15 sought. NFPA does not respond to or refute this point in its
opposition, and it provides no evidence to the contrary.

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III.

CONCLUSION
For all of these reasons and those in its opening brief, Public Resource asks that the

Court grant its Motion to Compel in its entirety.
Dated: October 13, 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.

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