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

Filing 82

REPLY to opposition to motion re #71 MOTION for Extension of Time to Complete Discovery Defendant-Counterclaimant Public.Resource.Org, Inc.'s Motion for Extension of Discovery Period, Corresponding Modification of Scheduling Order, and Leave to Take More Than 10 Depositions [PUBLIC REDACTED VERSION] filed by PUBLIC.RESOURCE.ORG, INC.. (Attachments: #1 PUBLIC REDACTED VERSION of Reply Declaration of Andrew P. Bridges In Support of Defendant-Counterclaimant Public.Resource.Org, Inc.s Reply In Support of Motion for Extension of Discovery Period, Corresponding Modification of Scheduling Order, and Leave to Take More Than 10 Depositions, #2 Exhibit A to Bridges Reply Declaration In Support, #3 Exhibit B to Bridges Reply Declaration In Support, #4 Exhibit C to Bridges Reply Declaration In Support, #5 Exhibit D to Bridges Reply Declaration In Support, #6 Exhibit E to Bridges Reply Declaration In Support, #7 Exhibit F to Bridges Reply Declaration In Support)(Bridges, Andrew)

EXHIBIT A

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-EGS

Plaintiffs/
Counter-Defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/
Counter-Plaintiff.
PLAINTIFF/COUNTER-DEFENDANT NATIONAL FIRE PROTECTION
ASSOCIATION, INC.’S INITIAL DISCLOSURES PURSUANT TO RULE 26(A)(1)
Pursuant to Rule 26(a)(1) of the Federal Rules of Civil Procedure, Plaintiff/CounterDefendant National Fire Protection Association, Inc. (“NFPA”), by and through undersigned
counsel, hereby makes the following initial disclosures:
GENERAL STATEMENT
1.

NFPA’s investigation and discovery in this action is continuing, and these

disclosures reflect only the current status of its investigation and discovery. NFPA reserves the
right to supplement or amend these disclosures as additional information becomes known to it,
although it undertakes no affirmative obligation to do so beyond any obligations imposed by law.
In making these disclosures, NFPA does not represent that it has yet identified every document,

information, fact, person, witness, or entity required by Rule 26(a)(1). Rather, NFPA’s
disclosures herein are based on its current knowledge, information, and belief.
2.

NFPA construes the requirements of Rule 26(a)(1) not to require the production

or disclosure of any information or documents protected by the attorney-client privilege, the
attorney work-product doctrine, or any other applicable privilege or protection from disclosure.
NFPA intends to and does assert a privilege and/or right not to produce with respect to all such
information and documents. Inadvertent disclosure shall not constitute a waiver of any such
privilege or other legal protection.
3.

These initial disclosures are made without waiving (a) the right to object to the

admission or discoverability of any materials or testimony on any proper ground, (b) the right to
object to the use of any information, for any purpose, in whole or in part, in any subsequent
proceeding in this action or in any other action, or (c) the right to object on any and all proper
grounds, at any time, to any discovery request or proceeding involving or relating to the subject
matter of these disclosures.
4.

This General Statement is incorporated in its entirety into each of the following

disclosures. It shall be deemed continuing as to each such disclosure, and it is not waived, or in
any way limited, by the following disclosures.

2

INITIAL DISCLOSURES
A.

Individuals (Rule 26(a)(1)(A)(i))
NFPA provides the following list of individuals who are likely to have discoverable

information that NFPA may use to support its claims or defenses, other than solely for
impeachment.
Name

Subject(s) of Information

Location

Christian Dubay
Vice President
Codes & Standards,
NFPA

The origin and purpose of NFPA’s copyrighted
standards; NFPA’s process of creating its
copyrighted standards; the public benefits of
NFPA’s copyrighted standards; government
incorporation of NFPA’s copyrighted standards
by reference; NFPA’s policies and procedures
regarding free public access to NFPA’s
copyrighted standards

May be contacted
through NFPA’s
counsel

Bruce Mullen
Executive Vice
President and Chief
Financial Officer,
NFPA

The costs and revenues associated with NFPA’s
development and issuance of its copyrighted
standards

May be contacted
through NFPA’s
counsel

Dennis Berry
Secretary of the
Corporation and
Director of
Licensing,
NFPA

NFPA’s ownership of registered copyrights for
standards identified in Exhibit B of the
Complaint; NFPA’s ownership, use, and
enforcement of the U.S. trademark registrations
for the registered marks referenced in paragraph
79 of the Complaint

May be contacted
through NFPA’s
counsel

3

Name

Subject(s) of Information

Location

Carl Malamud

The website with the url public.resource.org; the
website with the url law.resource.org; the claims
asserted by Defendant Public.Resource.Org
(“Public Resource”) in this litigation; Public
Resource’s purchase or acquisition of NFPA’s
copyrighted standards; Public Resource’s
unauthorized copying, reproduction, display, and
distribution of NFPA’s copyrighted standards;
Public Resource’s efforts to reformat NFPA’s
copyrighted standards and to contribute to others
making unauthorized copies and derivative works
of NFPA’s copyrighted standards; Public
Resource’s unauthorized use of NFPA’s
trademarks

1005 Gravenstein
Hwy. North,
Sebastopol, CA
95472

B.

Documents and Location of Documents (Rule 26(a)(1)(A)(ii))
The categories of documents, electronically stored information, and tangible things that

NFPA may use to support its claims or defenses, other than solely for impeachment, are set forth
below. NFPA provides this list without conceding the discoverability of any particular category
of information or documents.
Documents

Location

The copyrighted NFPA standards identified in
Exhibit B of the Complaint

These documents are believed to be principally
located at NFPA’s offices in Quincy,
Massachusetts

Registration certificates for the copyrighted
NFPA standards identified in Exhibit B of the
Complaint

These documents are believed to be principally
located at NFPA’s offices in Quincy,
Massachusetts

Documents regarding the process for creating
NFPA standards

These documents are believed to be principally
located at NFPA’s offices in Quincy,
Massachusetts

Documents regarding the costs and revenues
These documents are believed to be principally
associated with the creation of NFPA standards located at NFPA’s offices in Quincy,
Massachusetts

4

Documents

Location

Documents regarding the public benefits of
NFPA standards

These documents are believed to be principally
located at NFPA’s offices in Quincy,
Massachusetts

Documents regarding the incorporation of
NFPA’s standards by reference in statutes,
regulations, or ordinances

These documents are believed to be publicly
available and/or located at NFPA’s offices in
Quincy, Massachusetts

Government documents regarding privatesector standards and the incorporation of
private-sector standards by reference

These documents are believed to be publicly
available

Contents of the NFPA website, including, but
not limited to, web pages offering free access
to NFPA standards and various other forms of
access to NFPA standards

These documents are located on NFPA’s
website, at http://www.nfpa.org

Registration certificates for NFPA’s federally
registered trademarks listed in Paragraph 79 of
the Complaint

These documents are believed to be principally
located at NFPA’s offices in Quincy,
Massachusetts

All current and past web pages and attached
content related to NFPA’s copyrighted
standards from the website with the url
public.resource.org

Public Resource

All current and past web pages and attached
content related to NFPA’s copyrighted
standards from the website with the url
law.resource.org

Public Resource

Documents regarding Public Resource’s
acquisition of NFPA’s copyrighted standards

Public Resource

Documents regarding Public Resource’s
unauthorized copying, reproduction, display,
and distribution of NFPA’s copyrighted
standards

Public Resource

Documents regarding Public Resource’s efforts Public Resource
to reformat NFPA’s copyrighted standards and
to contribute to others making unauthorized
copies and derivative works of NFPA’s
copyrighted standards
Documents regarding Public Resource’s
unauthorized use of NFPA’s trademarks

Public Resource

5

C.

Damages (Rule 26(a)(1)(A)(iii))
NFPA is not seeking damages from Public Resource. Rule 26(a)(1)(A)(iv) is therefore

not applicable.
D.

Insurance (Rule 26(a)(1)(A)(iv))
NFPA is not aware of any insurance agreement under which an insurance business may

be liable to satisfy all or part of a possible judgment in this action or to indemnify or reimburse
for payments made to satisfy the judgment.
Dated: January 17, 2014

Respectfully submitted,
By:

/s/ Michael J. Mongan
Michael J. Mongan

Kelly M. Klaus
Jonathan H. Blavin
Michael J. Mongan
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.

6

CERTIFICATE OF SERVICE
I hereby certify that on January 17, 2014, a true and correct copy of the foregoing
PLAINTIFF/COUNTER-DEFENDANT NATIONAL FIRE PROTECTION
ASSOCIATION, INC.’S INITIAL DISCLOSURES PURSUANT TO RULE 26(A)(1) was
served via email upon the following:
Counsel for American Society for Testing and Materials d/b/a ASTM International
Michael F. Clayton ([e-mail])
J. Kevin Fee ([e-mail])
Jordana S. Rubel ([e-mail])
Counsel for American Society of Heating, Refrigerating, and Air Conditioning Engineers
Jeffrey S. Bucholtz ([e-mail])
Kenneth L. Steinthal ([e-mail])
Joseph R. Wetzel ([e-mail])
Andrew Zee ([e-mail])
Counsel for Public.Resource.Org, Inc.
Andrew Bridges ([e-mail])
Kathleen Lu ([e-mail])
David Halperin ([e-mail])
Mitchell L. Stoltz ([e-mail])
Corynne McSherry ([e-mail])
Joseph Gratz ([e-mail])
Mark Lemley ([e-mail])

/s/ Michael J. Mongan
Michael J. Mongan

7

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-EGS

Plaintiffs/
Counter-Defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/
Counter-Plaintiff.
INITIAL DISCLOSURES PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE
26(a) OF PLAINTIFF/COUNTER-DEFENDANT AMERICAN SOCIETY FOR TESTING
AND MATERIALS d/b/a ASTM INTERNATIONAL
Pursuant to Federal Rule of Civil Procedure 26(a), American Society for Testing and
Materials d/b/a ASTM International (“ASTM”), by and through undersigned counsel, makes the
following disclosures. These Initial Disclosures may identify potentially discoverable
information related to ASTM’s claims against Public.Resource.Org, Inc. (“Public Resource”)
and Public Resource’s counterclaims against ASTM based on ASTM’s current knowledge,
information, and belief. ASTM reserves the right to further amend, modify, or supplement these
disclosures as additional evidence, discovery, and information become available. Also, in
making these disclosures, ASTM does not represent that it has yet identified every document,
information, fact, person, witness, or entity required by Rule 26(a)(1). Rather, ASTM’s
disclosures herein are based on its current knowledge, information, and belief.

In making these disclosures, ASTM in no way concedes the relevance or admissibility of
any of the below disclosed information and does not waive any attorney-client privilege or the
attorney work product doctrine, or any other applicable privilege, doctrine, or immunity.
ASTM also submits these disclosures subject to and without waiving its right to
protection from the disclosure of confidential information.
I.

Individuals Likely to Have Discoverable Information Relating to ASTM’s Claims
and Defenses
Based upon ASTM’s current understanding of the scope of this action, the persons

identified below are the individuals who are likely to have discoverable information that ASTM
may use to support its claims and defenses, other than for impeachment purposes:
1.

James A. Thomas
President
ASTM International
Mr. Thomas should be contacted only through the undersigned counsel.
Mr. Thomas is likely to have information related to the process and costs
associated with the creation of ASTM’s standards, the ready and
reasonable availability of ASTM’s standards incorporated by reference
into statutes and regulations, and the harm Public Resource’s conduct has
caused and is likely to cause ASTM. He also is likely to have information
related to ASTM’s use of its trademark in commerce and why Public
Resource’s actions are likely to cause confusion.

2.

Thomas B. O’Brien Jr.
Vice-President & General Counsel
ASTM International
Mr. O’Brien should be contacted only through the undersigned counsel.
Mr. O’Brien is likely to have information related to the process associated
with the creation of ASTM’s standards, the ready and reasonable
availability of ASTM’s standards incorporated by reference into statutes
and regulations, and the harm Public Resource’s conduct has caused and is
likely to cause ASTM. He also is likely to have information related
ASTM’s ownership of the asserted copyrights and trademarks and the
registrations for the same.

3.

Carl Malamud
President
Public.Resource.Org, Inc.

2

Mr. Malamud is likely to have information about Public Resource’s
purchase, copying, altering, and posting online of standards owned by
ASTM and Public Resource’s infringement of ASTM’s trademarks.
4.

Randy Jennings
State of Tennessee Consumer and Industry Services, Director of Program
Operations
ASTM Member and former Director
Mr. Jennings should be contacted only through the undersigned counsel.
Mr. Jennings is likely to have information related to the ready and
reasonable availability of ASTM’s standards incorporated by reference
into statutes and regulations, the process by which standards are
incorporated by reference into regulations, the efforts (or lack thereof) by
ASTM to have its standards incorporated by reference, and the harm
Public Resource’s conduct has caused and is likely to cause ASTM. Mr.
Jennings is also likely to have information related to the process and costs
associated with the creation and revision of certain ASTM’s standards
which are at issue in the litigation, the use of ASTM standards, and the
presence (or absence) of government resources to perform develop
technical standards.

5.

Steve Cramer
Vice-Provost for Teaching and Learning and Professor of Civil and
Environmental Engineering, University of Wisconsin-Madison
ASTM Member and Director (term expiring December 31, 2014)
Mr. Cramer should be contacted only through the undersigned counsel.
Mr. Cramer is likely to have information related to the process associated
with the creation of ASTM’s standards, the ready and reasonable
availability of ASTM’s standards incorporated by reference into statutes
and regulations, the use of ASTM standards, and the harm Public
Resource’s conduct has caused and is likely to cause ASTM.

6.

Jeff Grove
Vice-President, Global Policy and Industry Affairs
ASTM International
Mr. Grove should be contacted only through the undersigned counsel.
Mr. Grove is likely to have information related to the process and costs
associated with the creation of ASTM’s standards, the ready and
reasonable availability of ASTM’s standards incorporated by reference
into statutes and regulations, and the harm Public Resource’s conduct has
caused and is likely to cause ASTM. He also is likely to have information
related to ASTM’s use of its trademark in commerce and why Public
Resource’s actions are likely to cause confusion.

7.

Nicole Baldini
Business Analyst
ASTM International
Ms. Baldini should be contacted only through the undersigned counsel.

3

Ms. Baldini is likely to have information related creation and revision of
ASTM’s standards.
II.

Documents That May Bear On ASTM’s Claims or Defenses
Categories of documents, electronically stored information, and tangible things that

ASTM may use to support its claims or defenses in this matter include the following:
1. Documents regarding the process and costs associated with the creation of
ASTM’s standards.
2. ASTM’s copyright registrations for ASTM’s standards.
3. Documents regarding ASTM’s use of the ASTM trademarks.
4. ASTM’s trademark registrations.
5. Documents regarding the incorporation of ASTM’s standards into statutes and
regulations.
6. Documents regarding the federal government’s policy relating to incorporation by
reference.
7. Documents regarding the ready and reasonable availability of ASTM’s standards
incorporated by reference into statutes and regulations.
8. Documents regarding the reading room on ASTM’s website.
9. Documents regarding the unauthorized copying of ASTM’s standards by Public
Resource.
10. Documents regarding Public Resource’s encouragement of others to make
unauthorized copies and derivative works of ASTM’s standards.
11. Documents regarding Public Resource’s infringement of ASTM’s trademarks.
12. Documents regarding the harm ASTM has suffered and/or is likely to suffer as a
result of Public Resource’s actions.
The above documents are maintained at ASTM’s offices in West Conshohocken, PA
and/or at Morgan Lewis’ offices in Washington, DC.
III.

Computation of Damages
ASTM has not claimed damages in connection with this action.

4

IV.

Insurance Coverage
ASTM currently is unaware of any applicable insurance agreements to satisfy or

indemnify against any judgment.
ASTM’s investigation of the claims and defenses in this matter is ongoing, and ASTM
hereby reserves the right to supplement these Initial Disclosures and to rely on and to offer as
evidence at trial additional documents or testimony from additional witnesses not identified
herein but subsequently made known to the other parties during the discovery process or in
writing.
Respectfully submitted,
/s/ J. Kevin Fee
J. Kevin Fee (D.C. Bar: 494016)
Michael F. Clayton (D.C. Bar: 335307)
Edwin O. Childs Jr. (D.C. Bar: 992954)
Jordana S. Rubel (D.C. Bar: 988423)
Morgan, Lewis & Bockius LLP
1111 Pennsylvania Ave., N.W.
Washington, D.C. 20004
Telephone: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
[e-mail]
Counsel For American Society For Testing And
Materials d/b/a/ ASTM International

5

CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing Amended Rule 26(a) Initial
Disclosures of American Society for Testing and Materials was served this 14th day of January,
2015 via email upon the following:
Counsel for National Fire Protection Association, Inc.
Jonathan H. Blavin ([e-mail])
Anjan Choudhury ([e-mail])
Kelly M. Klaus ([e-mail])
Nathan M. Rehn ([e-mail])
Counsel for American Society of Heating, Refrigerating, and Air Conditioning Engineers
Jeffrey S. Bucholtz ([e-mail])
Kenneth L. Steinthal ([e-mail])
Joseph R. Wetzel ([e-mail])
Blake Cunningham ([e-mail])
Counsel for Public.Resource.Org, Inc.
Andrew Bridges ([e-mail])
Kathleen Lu ([e-mail])
David Halperin ([e-mail])
Mitchell L. Stoltz ([e-mail])
Corynne McSherry ([e-mail])
Joseph Gratz ([e-mail])
Mark Lemley ([e-mail])

/s/ Edwin O. Childs
Edwin O. Childs

DB1/ 81608284.3

6

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
__________________________________________
)
AMERICAN SOCIETY FOR TESTING AND
)
MATERIALS d/b/a ASTM
)
INTERNATIONAL, et al.
)
)
Plaintiffs,
) Civil Action No. 1:13-cv-01215-EGS
)
v.
)
)
PUBLIC.RESOURCE.ORG, INC.,
)
)
Defendant.
)
__________________________________________)
)
PUBLIC.RESOURCE.ORG, INC.,
)
)
Counter Claimant,
)
)
v.
)
)
AMERICAN SOCIETY FOR TESTING AND
)
MATERIALS d/b/a ASTM
)
INTERNATIONAL, et al.
)
)
Counter Defendants.
)
__________________________________________)
PLAINTIFF THE AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND
AIR-CONDITIONING ENGINEERS, INC.’S AMENDED INITIAL DISCLOSURES
PURSUANT TO FEDERAL RULE OF CIVIL PROCEDURE 26(a)(1)
Pursuant to Federal Rule of Civil Procedure 26(a)(1), Plaintiff The American Society of
Heating, Refrigerating, and Air-Conditioning Engineers, Inc. (“ASHRAE”), makes the following
initial disclosures. ASHRAE makes these disclosures based on information currently and
reasonably available to ASHRAE, and without waiver of attorney-client privilege, work-product
1

protection, nor any applicable privilege or protection. ASHRAE’s investigation is ongoing and
ASHRAE expressly reserves the right to amend or to supplement these disclosures in accordance
with Federal Rule of Civil Procedure 26(e) based on additional information obtained through
formal discovery, continued investigation, or other means. In particular, and without limitation,
ASHRAE reserves the right to identify additional individuals and to identify and produce
additional documents and other such information as they become known or available and to
include individuals not identified in these initial disclosures in ASHRAE’s list of trial witnesses.
By making these disclosures, ASHRAE does not represent that it is identifying every
document, tangible thing, or witness possibly relevant to this lawsuit, nor does ASHRAE
concede the relevance of such information identified herein. ASHRAE’s disclosures are made
without in any way waiving any of the following rights: (1) the right to object on the grounds of
competency, privilege, the work product doctrine, relevance and materiality, undue burden,
hearsay, or any other proper ground to the production or use of any such information, for any
purpose, in whole or in part, in this action or any other action; (2) the right to object on any and
all grounds, at any time, to any other discovery request or proceeding involving or relating to the
subject matter of these disclosures; and (3) the right to seek protection under a suitable protective
order agreed to by the parties or issued by the Court pursuant to Rule 26(c) of any information to
be provided in discovery in this case. ASHRAE further reserves the right to object on any
applicable basis to the production of documents and things from the categories identified herein
or to the obtaining of testimony from witnesses identified herein.
Subject to the foregoing objections and qualifications, ASHRAE provides the following
information and disclosures in accordance with subsections (i) through (iv) of Rule 26(a)(1)(A):
I.

Individuals Likely to Have Discoverable Information

2

Based on the allegations in the Complaint and Counterclaim and the information
currently available to ASHRAE after reasonable investigation, and upon information and belief,
the following entities and individuals are likely to have discoverable information that ASHRAE
may use to support its claims or defenses in this action. ASHRAE reserves the right to identify
and to call additional witnesses, including whomever Defendant or any other Plaintiff may
designate as witnesses, representative witnesses appearing pursuant to Federal Rule of Civil
Procedure 30(b)(6), rebuttal and impeachment witnesses, and any additional witnesses that may
become known as additional facts and issues are identified during the course of ASHRAE’s
ongoing factual investigation and discovery. Further, by indicating the general subject matter of
information these individuals may possess, ASHRAE is in no way limiting the right to call any
individual listed to testify concerning other subjects. Moreover, identification of the individuals
listed below should not be construed as consent by any individual to submit to the jurisdiction of
this Court. Please note that all current and former ASHRAE employees should be contacted only
through ASHRAE’s undersigned counsel at King & Spalding.
Individual
Carl Malamud
President, Public.Resource.Org, Inc.
1005 Gravenstein Hwy. North,
Sebastopol, CA 95472

Subject(s) of Information
Public Resource’s purchase and unauthorized
copying, display, rekeying, and distribution of
standards owned by ASHRAE. Public
Resource’s unauthorized use of ASHRAE’s
trademarks. Public Resource’s encouragement
of others to make unauthorized copies and
derivative works of ASHRAE’s standards.

Jeff Littleton
Executive Vice President, ASHRAE, Inc.
[contact only through undersigned counsel]

Resources devoted to the creation of
ASHRAE’s standards. Harm to ASHRAE,
partner organizations and entities, and the
public caused and likely to be caused by Public
Resource’s unauthorized conduct. Information
regarding revenues derived from ASHRAE’s
standards, including loss of revenue due to
Public Resource’s unauthorized conduct.

3

Claire Ramspeck
Director of Technology, ASHRAE, Inc.
[contact only through undersigned counsel]

Process of developing ASHRAE’s standards
and the history of ASHRAE’s standards.
ASHRAE’s role in the American National
Standards Institute and International Standards
Organization. Harm to ASHRAE, partner
organizations and entities, and the public
caused and likely to be caused by Public
Resource’s unauthorized conduct.

Steve Comstock
Director of Publications and Education,
ASHRAE, Inc.
[contact only through undersigned counsel]

Management of ASHRAE’s intellectual
property rights, trademarks, website, and
publishing and marketing of standards.
ASHRAE’s financial investment in
maintaining and protecting its copyrights.
ASHRAE’s marketing of its standards and
related products. Reasonable online
availability of ASHRAE’s standards
incorporated by reference.

Stephanie Reiniche
Manager of Standards
ASHRAE, Inc.
[contact only through undersigned counsel]

The process of developing ASHRAE’s
standards and the history of ASHRAE’s
standards.

In addition to the above individuals, ASHRAE notes that there may be other individuals
associated with its co-Plaintiffs who may have knowledge of relevant facts. ASHRAE may seek
information from such persons to support its claims and defenses. ASHRAE reserves its right to
supplement these Initial Disclosures by identifying additional witnesses as they are uncovered
through further investigation, discovery requests, or otherwise.
II.

Documents
ASHRAE discloses and describes by category the following documents, reasonably

accessible electronically-stored information, and tangible things that are or
may be in the possession, custody, or control of ASHRAE and that ASHRAE currently and
reasonably believes it may use to support its claims or defenses (unless such use likely would be

4

solely for impeachment). ASHRAE reserves the right to identify or rely upon additional
documents, categories of documents, data compilations, and tangible things as they are located
and as additional facts and issues are identified during the course of investigation, discovery, and
trial preparation.

1.

Documents regarding the purchase and unauthorized copying, display, rekeying,
and distribution of ASHRAE’s standards by Public Resource.

2.

Documents regarding Public Resource’s encouragement of others to make
unauthorized copies and derivative works of ASHRAE’s standards.

3.

Documents regarding Public Resource’s unauthorized use of ASHRAE’s
trademarks.

4.

Documents regarding the harm ASHRAE has suffered and is likely to suffer as a
result of Public Resource’s conduct.

5.

Documents regarding the process and costs associated with the creation of
ASHRAE’s standards.

6.

ASHRAE’s copyright registrations for ASHRAE’s standards.

7.

Documents regarding ASHRAE’s use of the ASHRAE trademarks.

8.

ASHRAE’s trademark registrations.

9.

Documents regarding the incorporation of ASHRAE’s standards into statutes and
regulations.

10.

Documents regarding the federal government’s policy relating to incorporation by
reference.

11.

Documents regarding the ready and reasonable availability of ASHRAE’s
standards incorporated by reference.

12.

Documents regarding the availability of ASHRAE’s standards for viewing on the
ASHRAE website.

The above documents are maintained at ASHRAE’s offices, either in paper form or
electronically on internal systems, in Atlanta, Georgia and Washington, DC.
ASHRAE reserves the right to object to the production of documents, electronically
stored information, or tangible things on any basis, including that the information sought: (i) is

5

not relevant; (ii) is protected from disclosure by an applicable privilege, doctrine, or immunity;
(iii) would be unduly burdensome or expensive to produce; (iv) contains third-party confidential
information and cannot be produced without that party’s notification and consent; or (v)
constitutes proprietary or trade secret information that should not be produced before an
appropriate protective order has been entered.
ASHRAE’s investigation for discoverable information that it may use to support its
claims or defenses in this litigation is ongoing. ASHRAE also may rely on documents that are
produced by any party to this litigation as well as by any third parties.
III.

Computation of Damages
ASHRAE has not asserted any claim for damages in this matter, and therefore Rule

26(a)(1)(A)(iii) does not apply. ASHRAE reserves the right to seek to recover attorney’s fees
and other costs incurred in defending this action. The amounts of such fees and costs cannot be
computed or calculated until such time as ASHRAE’s entitlement to such an award has been
determined.
IV.

Insurance Agreements
ASHRAE represents that it is not presently aware of any insurance agreement under

which an insurance business may be liable to satisfy all or part of a possible judgment in the
action or to indemnify or reimburse for payments made to satisfy the judgment.

Dated: January 30, 2015

Respectfully submitted,
/s/Kenneth L. Steinthal
Kenneth L. Steinthal (admitted pro hac vice)
Joseph R. Wetzel (admitted pro hac vice)
KING & SPALDING, LLP
101 2nd Street, Suite 2300
San Francisco, CA 94105
6

[phone]
[e-mail]
[e-mail]
Jeffrey S. Bucholtz (D.C. Bar: 452385)
KING & SPALDING LLP
1700 Pennsylvania Avenue, NW, Suite 200
Washington, DC 20006
[phone]
[e-mail]
Attorneys for The American Society of
Heating, Refrigerating, and AirConditioning Engineers, Inc.

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PROOF OF SERVICE
On January 30, 2015, I served the following documents in the manner described below:
PLAINTIFF THE AMERICAN SOCIETY OF HEATING,
REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC.’S
AMENDED INITIAL DISCLOSURES PURSUANT TO FEDERAL RULE
OF CIVIL PROCEDURE 26(A)(1)


BY U.S. MAIL: I am personally and readily familiar with the business practice of King
& Spalding for collection and processing of correspondence for mailing with the United
States Parcel Service, and I caused such envelope(s) with postage thereon fully prepaid
to be placed in the United States Postal Service at San Francisco, California.



BY MESSENGER SERVICE: by consigning the document(s) to an authorized courier
and/or process server for hand delivery on this date.



BY FACSIMILE: I am personally and readily familiar with the business practice of
King & Spalding for collection and processing of document(s) to be transmitted by
facsimile and I caused such document(s) on this date to be transmitted by facsimile to
the offices of addressee(s) at the numbers listed below.



BY OVERNIGHT MAIL: I am personally and readily familiar with the business
practice of King & Spalding for collection and processing of correspondence for
overnight delivery, and I caused such document(s) described herein to be deposited for
delivery to a facility regularly maintained by Federal Express for overnight delivery.



BY ELECTRONIC SERVICE: By electronically mailing a true and correct copy
through King & Spalding’s electronic mail system from [e-mail] to the
email addresses set forth below.



BY PERSONAL DELIVERY: I caused such envelope to be delivered by hand to the
offices of each addressee below.

On the following parties in this action:

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Michael F. Clayton (D.C. Bar No. 335307)
[e-mail]
J. Kevin Fee (D.C. Bar: 494016)
[e-mail]
Jordana S. Rubel (D.C. Bar No. 988423)
[e-mail]
Morgan, Lewis & Bockius LLP
1111 Pennsylvania Ave., N.W.
Washington, D.C. 20004
Telephone: [phone]

Counsel For American Society For Testing
And Materials d/b/a/ ASTM International 

Anjan Choudhury (D.C. Bar No. 497271)
[e-mail]
Munger, Tolles & Olson LLP
355 South Grand Avenue, 35th Floor
Los Angeles, CA 90071
Tel: [phone]

Counsel For National Fire Protection
Association, Inc. 

Kelly M. Klaus
[e-mail]
Jonathan H. Blavin
[e-mail]
Michael J. Mongan
[e-mail]
Munger, Tolles & Olson LLP
560 Mission St., 27th Floor
San Francisco, CA 94105
Tel: [phone]
Andrew P. Bridges
[e-mail]
Kathleen Lu
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Telephone: [phone]

Counsel for Defendant Public.Resource.Org,
Inc.

Mitchell L. Stoltz (D.C. Bar No. 978149)
[e-mail]
Corynne McSherry
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
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Telephone: [phone]
Facsimile: [phone]
David Halperin
[e-mail]
1530 P Street NW
Washington, DC 20005
Mark A. Lemley
[e-mail]
Joseph C. Gratz
[e-mail]
DURIE TANGRI LLP
217 Leidesdorff St.
San Francisco, CA 94111
Telephone: [phone]

I declare under penalty of perjury under the laws of the United States of America that the
foregoing is true and correct. Executed on January 30, 2015, at San Francisco, California.

/s/ Blake Cunningham,
J. Blake Cunningham

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