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

Filing 74

MOTION to Amend/Correct #1 Complaint,, Exhibit B by NATIONAL FIRE PROTECTION ASSOCIATION, INC. (Attachments: #1 Exhibit Amended Exhibit B to Complaint, #2 Text of Proposed Order [Proposed] Order Granting Motion to Amend)(Rehn, Nathan)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
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,

Case No. 1:13-cv-01215-TSC

Plaintiffs/
Counter-Defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/
Counter-Plaintiff.
PLAINTIFF NATIONAL FIRE PROTECTION ASSOCIATION, INC.’S MOTION
TO AMEND COMPLAINT

Pursuant to Federal Rule of Civil Procedure 15(a), Plaintiff National Fire Protection
Association, Inc. (“NFPA”) moves to amend the Complaint in this case. As set forth in the
Complaint, Plaintiffs are three not-for-profit organizations that develop private-sector standards
to advance public safety, ensure compatibility across products and services, facilitate training,
and spur innovation. Dkt. 1 ¶ 1. The standards developed by Plaintiffs are original works
protected from infringement under the Copyright Act. The process of developing standards is
costly, and Plaintiffs rely on revenues from the sales and licensing of their copyrighted standards
to help underwrite those costs. Id. ¶ 136. Plaintiffs brought this copyright and trademark action
to stop Defendant Public.Resource.Org (“Public Resource”) from copying Plaintiffs’ copyrighted
standards and posting the entire standards on its public website. Id. ¶ 3. This motion seeks to
add the most recent edition of one of the standards already identified in the Complaint to the list
of works infringed by Public Resource.
Exhibit B to the Complaint is a list of certain NFPA copyrighted works that Public
Resource has infringed. Id. ¶ 78 and Ex. B. One of the standards identified in Exhibit B is
NFPA’s National Electrical Code (“ NEC”). The NEC is updated every three years through a
substantive review process. NFPA issues a new edition of the NEC every three years at the
conclusion of this process. At the time the Complaint was filed, the most recent NEC was the
2011 edition, and the Complaint identifies the 1999, 2002, 2005, 2008, and 2011 editions of the
NEC as among the works infringed by Public Resource. Since filing the complaint, NFPA has
published the 2014 edition of the NEC, and NFPA has learned that Public Resource has
continued and expanded its infringing activities by posting a copy of this standard on its website
as well. In this motion, NFPA seeks to add the 2014 NEC to the list of copyrighted works that
Public Resource has infringed. Attached hereto is the proposed Amended Exhibit B to the

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Complaint, which is identical to the existing Exhibit B to the Complaint except for the addition
of the 2014 NEC to the list of NFPA standards infringed by Public Resource.
The other Plaintiffs have consented to this amendment, but Defendant Public Resource
has not consented. The Court should allow NFPA to file the amended complaint because there is
good cause for the amendment and permitting the amendment would not result in any prejudice
to Public Resource.
ARGUMENT
Rule 15(a) provides that leave to amend shall be freely given when justice so requires.
“Leave to amend a complaint should be freely given in the absence of undue delay, bad faith,
undue prejudice to the opposing party, repeated failure to cure deficiencies, or futility.”
Richardson v. United States, 193 F.3d 545, 548-49 (D.C. Cir. 1999). The burden is on the party
opposing the motion “to show prejudice sufficient to justify a denial of leave to amend,” such as
through a showing “that it was unfairly disadvantaged or deprived of the opportunity to present
facts or evidence.” In re Vitamins Antitrust Litig., 217 F.R.D. 30, 32 (D.D.C. 2003).
Here, NFPA simply seeks to update the list of copyrighted standards infringed by Public
Resource to include the latest edition of a standard already identified in the Complaint. NFPA
could not have included the 2014 edition of the NEC in the original Complaint, because this
edition had not yet been published and Public Resource had not yet posted a copy of this edition
on its website. It is common in copyright cases for a plaintiff to discover additional works
infringed by the defendant in the course of the litigation, especially when the newly infringed
work was not yet published or registered when the complaint was filed. Courts routinely
recognized that it is proper to amend the complaint in these circumstances. See Lennon v.
Seaman, 84 F. Supp. 2d 522, 524 (S.D.N.Y. 2000) (“It is well settled that a plaintiff may amend

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an infringement complaint to include allegations regarding items discovered subsequent to the
filing of the complaint.”).
Public Resource is fully aware of the existence of the 2014 NEC and its relevance to this
case, as it has chosen to post a copy of the 2014 NEC on its website during the pendency of this
case. Upon discovering Public Resource’s conduct, and more than a month before the close of
discovery, NFPA notified Public Resource of NFPA’s intent to amend the Complaint and asked
if Public Resource had any objection to the Amendment. Public Resource had ample
opportunity to identify any reason why the Complaint should not be amended and did not do so.
After failing to respond to NFPA’s request for a full month, and after a repeated request
from NFPA, Public Resource notified NFPA on January 29 that it would not consent to the
amendment. But Public Resource did not identify any prejudice that would arise from this
amendment. There is none. NFPA has already produced the same categories of documents for
the 2014 NEC that it has produced for the standards identified in Exhibit B to the Complaint.
The legal and factual issues raised by the 2014 NEC are the same as the legal and factual issues
raised by the 2011 NEC. And Public Resource has yet to conduct even a single deposition of
any NFPA witness, so it is free to conduct investigation into the 2014 NEC to the same degree as
every other standard referenced in the Complaint.
In summary, following the filing of this action, Public Resource decided to continue and
expand its infringing activities by posting the 2014 edition of the NEC on its website. And yet
Public Resource now opposes NFPA’s request to add that edition of the standard to the list of
infringed works, while never identifying any prejudice from its inclusion. The Court should
grant leave to amend.

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Dated: February 3, 2015

Respectfully submitted,

/s/ Kelly Klaus
Anjan Choudhury (D.C. Bar: 497271)
Munger, Tolles & Olson LLP
355 South Grand Avenue, 35th Floor
Los Angeles, CA 90071
Tel: [phone]
Email: [e-mail]
Kelly M. Klaus
Jonathan H. Blavin
Nathan M. Rehn
Munger, Tolles & Olson LLP
560 Mission St., 27th Floor
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
Counsel for National Fire Protection Association, Inc.

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CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing Motion to Amend was
served this 30th day of January, 2015 via CM/ECF upon the following:
Counsel for Public.Resource.Org, Inc.:
Andrew Bridges
Kathleen Lu
David Halperin
Mitchell L. Stoltz
Corynne McSherry
Joseph Gratz
Mark Lemley
Counsel for American Society for Testing and Materials d/b/a ASTM International:
Michael F. Clayton
J. Kevin Fee
Jordana S. Rubel
Counsel for American Society of Heating, Refrigerating, and Air Conditioning Engineers:
Jeffrey Bucholtz
Kenneth Steinthal
Joseph Wetzel

/s/ Thane Rehn
Nathan Rehn