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

Filing 79

Memorandum in opposition to re #74 MOTION to Amend/Correct #1 Complaint,, Exhibit B filed by PUBLIC.RESOURCE.ORG, INC.. (Attachments: #1 Declaration of Andrew P. Bridges In Support of Public.Resource.Org, Inc.'s Opposition to National Fire Protection Association, Inc.'s Motion to Amend Complaint, #2 Exhibit A to Bridges Declaration In Support of Opposition to Motion to Amend Complaint, #3 Text of Proposed Order Denying National Fire Protection Association, Inc.'s Motion to Amend Complaint (Dkt. No. 74))(Bridges, Andrew)

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-DAR
PUBLIC.RESOURCE.ORG, INC.’S
OPPOSITION TO NATIONAL FIRE
PROTECTION ASSOCIATION, INC.’S
MOTION TO AMEND COMPLAINT

Filed:

August 6, 2013

Plaintiffs/Counter-defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/Counterclaimant.

Defendant-Counterclaimant Public.Resource.Org (“Public Resource”) does not oppose
Plaintiff National Fire Protection Association, Inc.’s (“NFPA’s”) untimely attempt to amend the
Complaint so long as Public Resource is afforded sufficient opportunity to conduct discovery on
NFPA’s new claim for infringement of the 2014 National Electric Code (“NEC 2014”). NFPA
filed its belated Motion to Amend Complaint more than two full months after the parties’ agreed
upon deadline to serve written discovery and several days after Plaintiffs’ unilaterally-imposed
deadline to serve deposition notices. To the extent Public Resource is not permitted to conduct
additional discovery, leave to amend the Complaint would result in undue prejudice to Public
Resource and should be denied.

ARGUMENT
Leave to amend is within the trial court’s sound discretion and may be denied in cases of
undue delay or undue prejudice to the opposing party. Becker v. District of Columbia, 258
F.R.D. 182, 184 (D.D.C. 2009). The party opposing leave to amend bears the burden to show
why leave should not be granted. Id.
NFPA’s untimely motion suffers from at least two fatal deficiencies. First, NFPA was
dilatory in filing the motion. NFPA discovered the supposed infringement of the NEC 2014
more than a month before the formal close of discovery (Mot. at 3) but it failed to file its motion
until four days after the close of discovery. See, e.g., Becker, 258 F.R.D. at 185 (waiting on a
motion for leave to amend until after the close of discovery is one form of undue delay). NFPA
makes no effort to explain the delay, except to blame it on Public Resource’s “fail[ure] to
respond.” Mot. at 3. What NFPA’s motion fails to acknowledge, however, is that NFPA first
raised the issue in the midst of the winter holidays and made no attempt to follow up on its
request until two days before the close of discovery. That delay demonstrated apathy toward the
claim rather than any diligent effort to amend. See Declaration of Andrew P. Bridges ¶ 2, Ex. A
(Jan. 29, 2015 Email Exchange re Amendment to Complaint).
Second and more fundamentally, Public Resource will suffer undue prejudice if NFPA is
permitted to amend its claims without allowing Public Resource to conduct any additional
discovery. “In evaluating the possibility of prejudice to the nonmoving party, one significant
factor is whether the amendment will require additional discovery.” Becker 285 F.R.D. at 185.
“The D.C. Circuit has ‘given weight to whether amendment of a complaint would require
additional discovery.’” Heller v. District of Columbia, 290 F.R.D.1, 4 (D.D.C. 2013) (citation
omitted).

2

NFPA did not raise the issue with Public Resource until December 30, 2014—more than
a month after the parties’ agreed deadline to serve written discovery. See Consent Motion to
Extend Time for Discovery and Case Schedule, Dkt. No. 56 at 2 (Nov. 24, 2014) (“[T]he parties
agree that no party shall serve any further written discovery . . . .”). Thus, even if NFPA had
acted diligently to amend the Complaint, which it did not, Public Resource would still have
suffered prejudice as a result of its inability to serve written discovery regarding the new claim.
The prejudice to Public Resource is further compounded by NFPA’s failure to seek leave
to amend before Plaintiffs’ arbitrary and unilateral deadline to serve deposition notices. The
current scheduling order called for fact discovery to close on January 30, 2015. The parties
agreed on the need to schedule depositions after January 30, 2015 owing, in large part, to the
sheer number of documents Plaintiffs produced in the final month of discovery. Nevertheless,
NFPA and the other Plaintiffs insisted that all deposition notices, including any depositions
pursuant to Rule 30(b)(6), be issued by January 30, 2015, interpreting the “close of fact
discovery” in an arbitrary fashion.1 Thus, without a further Order by this Court, NFPA and the
other Plaintiffs will refuse to provide witnesses who may be important regarding the new claim
but who may have been less important to the earlier claims. NFPA and the other Plaintiffs will
likely refuse to recognize an amendment to the Rule 30(b)(6) deposition notice to NFPA to
include topics specifically related to the new claim or to respond to written discovery requests
regarding the new claim. In short, NFPA’s statement that Public Resource “is free to conduct
investigation into the 2014 NEC to the same degree as every other standard referenced in the

1

See generally Public Resource’s Motion for Extension of Discovery Period, Corresponding
Modification of Scheduling Order, and Leave to Take More Than 10 Deposition, Dkt. No. 71
(Jan. 29, 2015). NFPA filed an opposition to Public Resource’s motion (Dkt. No. 76) but did not
address whether a discovery extension is appropriate in light of NFPA’s motion for leave to
amend.
3

Complaint” (Mot. at 3) is demonstrably false.
NFPA’s motion tries to sidestep the prejudice to Public Resource by arguing that “[t]he
legal and factual issues raised by the 2014 NEC are the same as the legal and factual issues
raised by the 2011 NEC.” Mot. at 3. This, too, is erroneous. As NFPA itself concedes, it
adopted the 2014 NEC after filing this lawsuit. See id. at 2. Public Resource believes that the
2014 NEC reflects not just a normal update to an earlier code, but a strategic change in the
design of the code in a vain attempt to cure fatal deficiencies in the copyrightability of earlier
versions. More fundamentally, Public Resource deserves additional discovery unique to the
2014 NEC, including but not limited to who authored the standard and whether any such persons
validly assigned their copyright (if any) to NFPA. On the evening before this opposition was
due, NFPA served a supplemental response to an earlier interrogatory by Public Resource with a
cover note stating that NFPA’s supplemental response pertained to the NEC 2014. This was a
transparent effort to limit Public Resource’s ability to determine for itself what discovery it
wants to target to the new code. In short, to the extent NFPA wishes to put the 2014 NEC at
issue, Public Resource is entitled to full discovery regarding the claim. See Morales v. Landis
Const. Corp., 715 F. Supp. 2d 86, 91 (D.D.C. 2010) (permitting additional discovery would
ameliorate any prejudice resulting from leave to amend following the close of discovery).
CONCLUSION
For the reasons above, Public Resource respectfully requests that the Court deny NFPA
leave to amend the Complaint unless the Court affords Public Resource discovery on the new
claim.

4

Dated: February 20, 2015

Respectfully submitted,
/s/ Andrew P. Bridges
Andrew P. Bridges (admitted)
[e-mail]
Kathleen Lu (pro hac vice)
[e-mail]
Matthew B. Becker (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 (pro hac vice)
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

5