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

Filing 54

STATUS REPORT Joint Status Report and [Proposed] Order On Defendant's Motion to Compel Discovery by PUBLIC.RESOURCE.ORG, INC.. (Bridges, Andrew)

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

STATUS REPORT AND [PROPOSED]
ORDER ON DEFENDANT’S MOTION
TO COMPEL DISCOVERY

AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR-CONDITIONING
ENGINEERS, INC.
Plaintiffs,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant.
PUBLIC.RESOURCE.ORG, INC.,
Counterclaimant,
v.
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
ENGINEERS, INC.
Counterdefendants.

25036185.1

Filed: November 4, 2013

STATUS REPORT AND [PROPOSED] ORDER
Plaintiffs American Society for Testing and Materials d/b/a ASTM International
(“ASTM”), National Fire Protection Association, Inc. (“NFPA”), and American Society of
Heating, Refrigerating, and Air-Conditioning Engineers, Inc. (“ASHRAE”) and Defendant
Public.Resource.Org, Inc., jointly submit this proposed order in response to the Court’s direction
at the last hearing. They have resolved some, but not all, of the issues that Defendant presented
in its motion to compel. This proposed order reflects their representations, agreements, and the
outstanding issues.
Counsel for Plaintiffs have authorized counsel for Defendant to file this without their
signatures but with their express permission.
STATUS OF DISPUTES
I.

LICENSING AND PERMISSION DOCUMENTS
a. Documents pertaining to licenses: moot as to ASHRAE and NFPA, not as to
ASTM. The parties have carved out documents relating to permissions, which
they describe in subsection b. below.
i. ASTM: this issue remains unresolved.
ii. ASHRAE: ASHRAE represents that, in its October 17 and 30, 2014,
productions, ASHRAE provided copies of all license agreements for
Standard 90.1 and sales data, including customer lists, for single-use
and network-use licenses of the 2004, 2007, and 2010 versions of the
standard in its possession.
iii. NFPA agrees to conduct a reasonable search for, and produce, license

B9620/00403/DOCS/3530837.1

contracts in its possession, custody, or control for the standards at
issue operative at any time after January 1, 2013.
b. Documents pertaining to permissions: moot as to all plaintiffs.
i. ASTM will produce permission requests and grants within the
possession, custody, or control of the ASTM employee most likely to
maintain such documents. ASTM represents that the employee is
unaware of any permissions from which she has been excluded, and its
General Counsel will confirm that he is unaware of any permissions
from which she has been excluded.
ii. ASHRAE agrees to search two email accounts most likely to contain
permission requests, and the email account of the individual ASHRAE
employee with primary responsibility for those accounts, for
permission grants and requests related to Standard 90.1. ASHRAE
will produce to Public Resource the responsive, non-privileged
documents resulting from the search.
iii. NFPA agrees to produce permission documents for the standards at
issue that it maintains in its designated Sharepoint database.
II.

DOCUMENTS PERTAINING TO ASSIGNMENTS OF RIGHTS: moot as to
ASTM only, not as to ASHRAE and NFPA.
a. ASTM:

ASTM will produce .tif images of assignments in paper form that it

has been able to locate through a reasonable search. ASTM represents that
since approximately 2007 ASTM has required persons and entities to assign
materials through its online membership application and renewal process and
has produced form copies of documents which include these assignments.
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ASTM will also produce one spreadsheet listing individuals and one
spreadsheet listing organizations which have completed these online
processes. Those spreadsheets will contain affiliation (e.g. employer) and
contact information that was collected as part of the membership application
and renewal process. On the basis of these representations, this aspect of the
motion is moot as to ASTM.
b. ASHRAE: this issue remains unresolved.
c. NFPA: this issue remains unresolved.
III.

FINANCIAL CONTRIBUTIONS: moot as to all Plaintiffs.
All Plaintiffs have represented that, apart from their general membership revenue,
they receive no financial contributions regarding either their general standards
development function or the development of the particular standards at issue in
this case.
ASHRAE represents that, in its October 17, 2014, production, it has furnished a
summary of revenues from general membership fees.
NFPA agrees to provide five years of annual, year-end audited financial
statements.
Defendant needs to determine whether Plaintiffs have sufficiently provided other
financial documents and reserves its right to seek further general financial
documents, but for present purposes, on the basis of these representations, it
considers this aspect of the motion to be moot as to all plaintiffs.

IV.

DOCUMENTS RELATING TO THIS LITIGATION: moot as to ASTM and
ASHRAE, not as to NFPA.
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a. ASTM agrees to the production of documents with the following limitation:
With respect to emails in the possession, custody, or control of ASTM’s
general counsel, ASTM represents that it will search and produce unprivileged
emails from January 1, 2013 to the present relating to the litigation. ASTM
will not produce a privilege log for those emails for which privilege is claimed
except for communications that include a third party that is neither a party to
this litigation nor representing parties in this litigation. On the basis of these
representations, this aspect of the motion is moot as to ASTM.
b. ASHRAE agrees to conduct a reasonable search for, and to produce,
responsive non-privileged documents. It will confer with Defendant regarding
custodians and search terms. On the basis of this representation, this aspect of
the motion is moot as to ASHRAE.
c. NFPA: this issue remains unresolved.
V.

DOCUMENTS RELATING TO INCORPORATION OF STANDARDS INTO
LAWS OR REGULATIONS: moot as to all Plaintiffs.
a. ASTM agrees that it will produce documents in its possession, custody, or
control that relate to which of the standards at issue in the litigation have been
incorporated by reference by any governmental entity and which have been
identified through the use of search terms agreed to by the parties. ASTM
represents that it does not maintain a database concerning which of its
standards have been incorporated by reference by any governmental entity.
b. ASHRAE has represented that it does not possess reasonably available
documents identifying laws or regulations that have incorporated ASHRAE
standards by reference, and that instead it relies on publicly available

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databases for this information, which it has identified to Defendant.
c. NFPA agrees to produce the NFPA database that contains information about
jurisdictions that have incorporated its standards at issue by reference. NFPA
does not represent that this necessarily captures all jurisdictions, is up to date,
or is free from errors and omissions, and it will not perform additional
research to identify any additional such jurisdictions.
On the basis of these representations, this aspect of the motion is moot as to all
Plaintiffs.
VI.

NFPA’S REPORTS ON PROPOSALS/REPORTS ON COMMENTS AS
EVIDENCING STANDARDS DEVELOPMENT PROCESS
Public Resource agrees that NFPA’s Reports on Proposals and Reports on
Comments, along with the other documents that NFPA has agreed to produce,
provide sufficient information regarding the issues raised by this section of the
Motion to Compel. This aspect of the motion is moot as to all Plaintiffs.

November 4, 2014

Respectfully submitted,
/s/ Andrew P. Bridges
Andrew P. Bridges (Dist. Ct. Bar. No. AR0002)
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Telephone: [phone]
Facsimile: [phone]
Counsel for Defendant (with express permission of
counsel for all Plaintiffs)

6

[PROPOSED] ORDER
In light of the representations and agreements of the parties, the Court hereby
orders as follows:
1. The Court dismisses as moot the motion as to all Plaintiffs with respect to the
following issues:
a. Documents and communications relating to financial contributions to
Plaintiffs-Counterdefendants (RFPs 4, 12, 13, 14, 15) (third bullet on page 2
of Defendant’s opening brief);
b. Documents concerning the laws that incorporate relating to incorporation of
standards (RFP 5) (fifth bullet on page 2 of Defendant’s opening brief); and
c. The sufficiency of NFPA’s Reports on Proposals and Reports on Comments
(pages 12-13 of Defendant’s opening brief).
2. The Court dismisses as moot other portions of the motions as to certain Plaintiffs as
follows:
a. Executed license agreements (RFP 18)(first bullet on page 2 of Defendant’s
opening brief) only as to ASHRAE and NFPA;
b. Executed assignment of rights agreements (RPF 2, 6) (second bullet on page 2
of Defendant’s opening brief) only as to ASTM; and
c. Documents and communications concerning the litigation or PlaintiffsCounterdefendants’ decision to take legal action against Public Resource or its

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principal (RFPs 8, 9, 161, 17) (fourth bullet on page 2 of Defendant’s opening
brief) only as to ASTM and ASHRAE.
3. The following issues remain unresolved:
a. Documents as to licenses, as to ASTM;
b. Documents pertaining to assignments of rights, as to ASHRAE and NFPA;
and
c. Documents relating to this litigation, as to NFPA.
IT IS SO ORDERED, this ___ day of November, 2014.
________________________
Hon. Deborah A. Robinson
United States Magistrate Judge

1

In the opening brief Defendant erroneously referred to RFPs 8, 9, 17, and 18 instead of 8, 9, 16,
and 17.
8