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 B

December 26, 2014

ANDREW P. BRIDGES

EMAIL [e-mail]
Direct Dial [phone]

BY E-MAIL
Kelly Klaus
[e-mail]
Jonathan H. Blavin
[e-mail]
Nathan M. Rehn
[e-mail]
Munger, Tolles & Olson LLP
560 Mission St., 27th Floor
San Francisco, CA 94105
Re:

ASTM et al v. Public.Resource.Org – 30(b)(6) Topics Served on NFPA

Dear Counsel:
As I stated during our telephone call with Jonathan and Thane on December 23, Public
Resource finds troubling the objections that NFPA has made to Public Resource’s 30(b)(6)
deposition notice, in particular NFPA’s repeated assertion that it will provide deponents who
have only general knowledge of the topics that Public Resource identified in its notice. Public
Resource is entitled to obtain a range of specific information, not mere generalities, including the
specifics of the creation of the standards at issue and related copyright assignments among other
topics it identified in the notice.
During our call, you assured us that the individuals that NFPA has designated for
deposition were those most qualified to testify about the issues in the notice. Public Resource
has serious concerns that these individuals will not offer sufficiently specific testimony. Public
Resource perceives the need to seek intervention of the Court to the extent we cannot close the
gaps. At this point, Public Resource intends to proceed with the Rule 30(b)(6) deposition so long
as NFPA agrees that Public Resource has preserved its rights to seek further testimony if the
designated individuals lack the necessary knowledge or refuse to testify on the precise topics in
the Rule 30(b)(6) deposition notice.
I highlight the following topics of discussion during our call.
General matters:
•

I asked for the number of microfilms and boxes of documents that NFPA plans to provide
for inspection. You lacked precise information and will send more detail when it is

December 26, 2014
Page 2
available. I also inquired as to why NFPA cannot simply obtain copies of the microfilms
and ship them to us.
•

We want to have a reproduction service scan NFPA’s paper documents offsite, rather
than incurring additional charges to bring equipment on-site. You said you do not see a
problem and will confirm that.

•

We requested an opportunity to review NFPA’s documents on December 26 or 29. You
stated NFPA was not open on December 26 and is evaluating whether it can have
documents ready by December 29.

30(b)(6) notice topics:
•

Topic 1: “The process and activities of developing the Works-At-Issue, including the
participation of government and private sector personnel in standards development.” I
said Public Resource needs to depose someone who has knowledge of specific events in
the development process for the works at issue, and who likewise has authority to testify
as to this process for each standard. You asserted that Chris Dubay knows the most
regarding this topic, although you are not certain which standard development
committees Mr. Dubay has served on. You will check on that point and get back to us.

•

Topic 2: “All elements of the Chain of Title of copyright ownership, including copyright
authorship and ownership of component parts of the Works-At-Issue in this case.” Public
Resource needs to depose someone who can speak with knowledge and authority
regarding the complete chain of title of the works at issue and who can walk through the
various steps necessary for NFPA to show that it indeed owns the complete copyright
rights for each work at issue. General practices do not suffice to show ownership of
particular standards. Nor does copyright registration. I also inquired who at NFPA is
responsible for assuring the completeness of copyright assignments. You asserted that
Chris Dubay is the most knowledgeable person here, although you are uncertain who at
NFPA is responsible for assuring completeness of copyright assignments. You would not
agree to inquire as to who is responsible for assuring completeness of copyright
assignments and stated that Public Resource could ask Chris Dubay that question at the
time of deposition, and if necessary conduct a further deposition of that named person.

•

Topic 3: “The authority of persons executing copyright assignment forms in favor of You
to convey the copyright rights in their works or expression, including but not limited to
evidence of authority of employees to assign copyrights they do not own individually.”
You stated that NFPA is not providing anyone to speak on this topic, as you consider it to
be third-party discovery. Public Resource disagrees. Presumably NFPA has information
concerning the authority of particular individuals or entities to execute copyright

December 26, 2014
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assignments in its favor, or at least NFPA’s understanding of their authority to do so, and
Public Resource is entitled to depose someone from NFPA on this subject.
•

Topic 4: “The availability of Standards that You claim to own for reading, study,
commentary, evaluation, criticism, annotation, and comparison to other Standards and
documents by the public.” You said NFPA will have a witness available to testify
generally on this topic. Public Resource believes it is entitled to know each way that
NFPA standards are made available to the public.

•

Topic 5: “The terms (including but not limited to financial terms, other requirements,
conditions, restrictions, limitations, exclusions, and exceptions) of access to the Standards
that You claim to own for reading, study, research, commentary, evaluation, criticism,
bookmarking, other annotation, reproduction, personal use, place shifting, space shifting,
data mining, and comparison to other versions, Standards, and documents, by the public.”
P.R.O. will require detailed information about all the various terms that apply. You
indicated that you had provided all the terms in written discovery and that a witness will
testify about the use of those terms.

•

Topic 6: “Communications between any one or more Plaintiffs, or of American National
Standards Institute, on the one hand, and governments, government agencies, government
officials (including elected officials), and government employees, on the other hand,
regarding the benefits, creation, revision, editing, approval (whether by vote or
consensus), dissemination or distribution, public availability, use, or incorporation into
laws or regulations of the Works-At-Issue in this case.” You indicated that Don Bliss
will testify about this topic and that there is no NFPA representative more knowledgeable
than he on the topic.

•

Topic 7: “All revenue You received from governments and government agencies in
connection with the Standards, including but not limited to the sale or licensing of
Standards.” Public Resource wants to know what financial relationships exist between
NFPA and government agencies. NFPA asserted that no financial relationship exists
other than the sale of standards and that Bruce Mullen will testify as to the amount of
revenue from sale of standards to government agencies. We will want information about
individual government agencies.

•

Topics 8-10: “Your sources of revenue, the proportion of revenue received from each
source, and changes in revenue sources over the relevant time period.” “Your sources
and types of revenue other than the sale of copies of or access to the Works-At-Issue.”
“Your receipt of grants, funding, other financial Contribution, or in-kind Contribution for
work pertaining to Standards from any government agency, other entity, or person,

December 26, 2014
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whether directly or indirectly through another organization.” You said that Bruce Mullen
will testify on all of these topics.
•

Topic 11: “Your efforts to influence the procedures and requirements imposed by federal
and state governments or their officers, agencies, or subdivisions, including but not
limited to the Office of Management and Budget, the Office of the Federal Register, and
state code commissions for the incorporation of standards by reference into law or
regulation.” You indicated that Don Bliss will testify on this subject and has the most
knowledge at NFPA on this topic.

•

Topic 12: “Your awareness of any consumer confusion, mistake, or deception caused by
Public Resource’s posting of the Works-At-Issue or by the appearance of the Works-AtIssue that Public Resource has posted.” I made it clear that Public Resource wants
specific information about this topic, not information about general allegations of harm.
You indicated that Bruce Mullen can testify on this topic.

•

Topic 13: “Sales of each Work-At-Issue and of each predecessor to each Work-At-Issue,
by unit volume and by dollar volume, for each month or quarter since 2010.” You said
that Bruce Mullen will testify on this subject. I indicated that we do expect monthly or
quarterly sales volume and revenue information about each work at issue, not general
financial information. You said you would need to get back to me on this.

•

Topic 14: “All harms (financial and otherwise) to You arising from the facts that You
have alleged in the complaint and from any other acts, omissions, or operations of Public
Resource.” You said Bruce Mullen will testify on this topic.

•

Topic 15: “All changes to the standards development processes or activities that You
have made because of the activities of Public Resource at issue in this case.” NFPA has
refused to testify as to this topic. Public Resource believes that NFPA has no good
reason to withhold testimony on this topic. If no changes have occurred because of the
activities of Public Resource, then a witness may say so. If changes have occurred,
Public Resource has a right to know about them.

•

Topic 16: “The original creative expression in each of the Works-At-Issue.” Public
Resource needs to know about the originality (or derivative status) and the creative
choices in the expression that the underlying authors made that would qualify the works
at issue for copyright protection. NFPA contends that these issues fall also within Topic
1. If the witness on topic 1 will testify about the creative expression and the choices of
creative expression in the course of testimony on topic no. 1, then that may suffice, but
Public Resource must obtain testimony on the originality, the creative expression, and the

December 26, 2014
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choices in the process of creative expression. You said that NFPA will provide a witness
who can testify about these matters.
•

Topic 17: “The creativity pertaining to the expressions in the Works-At-Issue in this
case.” Public Resource raises similar concerns to those noted for Topic no. 16. NFPA
has objected to this topic, but states that to the extent that the subject matter falls within
Topic 1. The discussion of topic 16 applied to this topic as well.

•

Topic 18: “All communications with any person or entity regarding lost sales or lost
licenses, or regarding an intention not to buy or license, with respect to the Works-AtIssue attributable to the activities of Public Resource at issue in this case.” Public
Resource stated that, in order to proceed with a deposition on this topic, it needs to know
if there have been any such communications, and receive copies of those
communications. You stated NFPA is in the process of preparing a production that may
include such communications. If there have been no such communications, Public
Resource will require an NFPA witness to testify to that fact.

•

Topic 19: “Your nonprivileged communications about any litigation or potential litigation
against Public Resource, or Plaintiffs’ policies and practices for responding to copyright
infringement, including but not limited to communications by those persons concerning
positions taken by some or all Plaintiffs in this case.” NFPA has refused to provide
someone to testify on this topic, and it contends that those communications are
overwhelmingly privileged. I responded that the deposition notice on the topic explicitly
states that it seeks only nonprivileged communications, such as (but not limited to) with
third parties. You stated that a witness might not know about all communications, and
you suggested that Public Resource might need to depose a number of persons to learn
about all the communications. I responded that the individual testifying for NFPA must
confer with relevant personnel at NFPA so that he or she may testify competently and
fully on this topic.

•

Topic 20: “Your communications with federal, state, or local government agencies and
legislatures, including but not limited to the National Institute of Standards and
Technology, Department of Agriculture (including the Rural Utility Service), Department
of Homeland Security (including US Coast Guard), Department of Energy, Nuclear
Regulatory Commission, Consumer Product Safety Commission, Department of Housing
and Urban Development, Department of Labor (including the Occupational Safety and
Health Administration, the Mine Safety and Health Administration), National Archives
and Records Administration, Veterans Administration, Environmental Protection
Administration, Department of Health and Human Services, Department of
Transportation (including the Pipeline and Hazardous Materials Safety Administration),
state code commissions, state fire marshals, municipal and county fire departments, state

December 26, 2014
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building commissions, state fire commissions, and state departments of labor, regarding
the incorporation of Standards into law or regulation.” You indicated that Don Bliss will
be the witness on this topic and that, while he could not testify regarding specific
communications with all the entities in the topic from memory, he would be able to
testify about relevant documents bearing on these topics at the deposition.
•

Topic 21: “Your communications with state government officials regarding state energy
standards.” NFPA has refused to designate someone on this topic, stating that the topic is
vague. I indicated that I would discuss this topic with Public Resource to determine
whether further specificity is appropriate.

With depositions set to begin very soon, Public Resource looks forward to a prompt
response on the outstanding issues in this letter, no later than this coming week.

Yours very truly,
FENWICK & WEST LLP
Andrew P. Bridges
Andrew P. Bridges