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

Filing 91

Memorandum in opposition to re #86 Emergency MOTION for Order and Request for Expedited Briefing Schedule filed by PUBLIC.RESOURCE.ORG, INC.. (Attachments: #1 [Public] Declaration of Andrew P. Bridges In Support of Public.Resource.Org, Inc.'s Opposition to Plaintiffs' Emergency Motion for Protective Order and Request for Expedited Briefing Schedule, #2 Exhibit 1 to Bridges Declaration, #3 Exhibit 2 to Bridges Declaration, #4 Exhibit 3 to Bridges Declaration, #5 Exhibit 4 to Bridges Declaration, #6 Exhibit 5 to Bridges Declaration, #7 Exhibit 6 to Bridges Declaration, #8 Exhibit 7 to Bridges Declaration, #9 Exhibit 8 to Bridges Declaration, #10 Exhibit 9 to Bridges Declaration, #11 Exhibit 10 to Bridges Declaration, #12 Exhibit 11 to Bridges Declaration, #13 Exhibit 12 to Bridges Declaration, #14 Exhibit 13 to Bridges Declaration, #15 Exhibit 14 to Bridges Declaration, #16 Exhibit 15 to Bridges Declaration, #17 Exhibit 16 to Bridges Declaration, #18 Text of Proposed Order Denying Plaintiffs' Emergency Motion for Protective Order and Request for Expedited Briefing Schedule)(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

DECLARATION OF ANDREW P.
BRIDGES IN SUPPORT OF
PUBLIC.RESOURCE.ORG, INC.’S
OPPOSITION TO PLAINTIFFS’
EMERGENCY MOTION FOR
PROTECTIVE ORDER AND
REQUEST FOR EXPEDITED
BRIEFING SCHEDULE

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

Complaint Filed: August 6, 2013

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.

PUBLIC REDACTED VERSION

I, ANDREW P. BRIDGES, declare pursuant to 28 U.S.C. § 1746 as follows:
1.

I am an attorney admitted to practice in the State of California and am a partner

with the law firm of Fenwick & West LLP, counsel of record for Defendant/Counterclaimant
Plaintiff Public.Resource.Org, Inc.
2.

Attached as Exhibit 1 is a true and correct copy of Public Resource’s First Set of

Requests for Production of Documents to American Society of Heating, Refrigerating, and
Air-Conditioning Engineers, Inc. (“ASHRAE”) (Nos. ASHRAE-1 through ASHRAE-18), served
electronically via email on February 13, 2014. This included Requests Nos. 2 and 6, which
concern the ownership and assignment of copyright for the works-at-issue in this litigation,
including a request for “[d]ocuments sufficient to establish Complete Chain of Title for each
Work-At-Issue.” The term “Complete Chain of Title” is defined in the Requests to include, at
minimum: “documents sufficient to identify the original creator(s) of the work and all
assignments documenting transfer from the original owner(s) to American Society of Heating,
Refrigerating, and Air-Conditioning Engineers, Inc., including all intermediate transfers, as well
as a copyright registration.”
3.

Attached as Exhibit 2 is a true and correct copy of Public Resource’s First Set of

Requests for Production of Documents to American Society for Testing and Materials d/b/a
ASTM International (“ASTM”) (Nos. ASTM-1 through ASTM-18), served electronically via
email on February 19, 2014. This included Requests Nos. 2 and 6, which concern the ownership
and assignment of copyright for the works-at-issue in this litigation, including a request for
“[d]ocuments sufficient to establish Complete Chain of Title for each Work-At-Issue.” The term
“Complete Chain of Title” is defined in the Requests to include, at minimum: “documents
sufficient to identify the original creator(s) of the work and all assignments documenting transfer

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from the original owner(s) to American Society for Testing and Materials, including all
intermediate transfers, as well as a copyright registration.”
4.

Attached as Exhibit 3 is a true and correct copy of Public Resource’s First Set of

Request for Production of Documents to National Fire Protection Association, Inc. (“NFPA”)
(Nos. NFPA-1 through NFPA-18), served electronically via email on February 13, 2014. This
included Requests Nos. 2 and 6, which concern the ownership and assignment of copyright for
the works-at-issue in this litigation, including a request for “[d]ocuments sufficient to establish
Complete Chain of Title for each Work-At-Issue.” The term “Complete Chain of Title” is
defined in the Requests to include, at minimum: “documents sufficient to identify the original
creator(s) of the work and all assignments documenting transfer from the original owner(s) to
National Fire Protection Association, Inc., including all intermediate transfers, as well as a
copyright registration.”
5.

Attached as Exhibit 4 is a true and correct copy of ASHRAE’s Objections and

Responses to Public Resource’s First Set of Requests for Production of Documents
(Nos. ASHRAE-1 through ASHRAE-18), served March 20, 2014.
6.

Attached as Exhibit 5 is a true and correct copy of ASTM’s Objections and

Responses to Public Resource’s First Set of First Set of Requests for Production of Documents
(Nos. ASTM-1 through ASTM-18), served March 24, 2014.
7.

Attached as Exhibit 6 is a true and correct copy of NFPA’s Objections and

Responses to Public Resource’s First Set of Requests for Production of Documents (Nos. NFPA1 through NFPA-18), served March 20, 2014.
8.

Public Resource met and conferred with Plaintiffs throughout the spring and

summer of 2014 regarding the deficiencies in Plaintiffs’ responses to Public Resource’s

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discovery requests, including Public Resource’s requests for discovery on the issue of copyright
ownership and assignment. This was initiated with a May 2, 2014 letter from myself to
Plaintiffs. On April 21, 2014 and May 7, 2014, counsel for Public Resource engaged in a
telephonic meet and confer session with counsel for Plaintiffs-Counterdefendants in an attempt
to resolve the issues related to their insufficient and incomplete discovery responses. On May
23, 2014 counsel for Plaintiffs sent separate letters responding to Public Resource’s May 2, 2014
letter and summarizing the May 7, 2014 meet and confer session. In these letters, Plaintiffs
summarized their positions that they would only produce “representative samples” and “form”
versions of licensing agreements and assignment of rights agreements. That same day, I sent
counsel for Plaintiffs a letter summarizing the discovery dispute, including issues relating to
Plaintiffs-Counterdefendants’ deficient responses to Public Resource Requests for Production of
Documents, and the issues discussed during the May 7, 2014 meet and confer session. The
parties continued to meet and confer through September 5, 2014, exchanging five additional
letters in the process, as described in greater detail in the Declaration of Kathleen Lu in Support
of Defendant Public.Resource.Org’s Motion to Compel [Dkt. 41, Ex. B].
9.

Attached as Exhibit 7 is a true and correct copy of p. 49 from the transcript of the

hearing before this Court on December 1, 2014, concerning Public Resource’s motion to compel.
At lines 04-12, Thane Rehn, counsel for NFPA, first suggested that an alleged infringer might
not have standing to challenge the validity of copyright assignments.
10.

On November 14, 2014, Public Resource served its first Rule 30(b)(6) deposition

notices and topics on Plaintiffs. Topics 2 and 3 concerned copyright ownership and
assignment issues. True and correct copies of these notices, associated topics, and proof of
service is attached as Exhibit 8.

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11.

Plaintiffs served Public Resource with their objections to Public Resource’s first

Rule 30(b)(6) deposition notices in December 2014. Both ASHRAE and NFPA responded
that they would designate a witness to address the topics concerning copyright ownership
and assignment. True copies of the Plaintiffs’ objections to Public Resource’s first 30(b)(6)
deposition notices to Plaintiffs are attached as Exhibit 9.
12.

On January 30, 2015, Public Resource served amended 30(b)(6) deposition

notices to Plaintiffs, including an additional topic addressing copyright assignment and
ownership. True and correct copies of these amended 30(b)(6) deposition notices to Plaintiffs
are attached as Exhibit 10.
13.

Reviewing the purported copyright “assignment” agreements produced by

Plaintiffs, Public Resource has determined that many of these documents include language
that conveys “nonexclusive” rights. These nonexclusive rights mean that these documents
convey only a nonexclusive license to copyright rights, not an assignment of copyright, and
therefore do not convey on Plaintiffs standing to sue regarding the rights they claim by
those non-assignment documents that they call “assignments.” True examples of these
purported “assignments” produced by Plaintiffs are attached as Exhibit 11 [FILED UNDER
SEAL].
14.

NFPA is aware that the copyright assignments of most standards developers have

been vulnerable and ineffective. In a 2011 memorandum by former NFPA President James
Shannon entitled “The Next Decade at NFPA,” he wrote:

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P. 6, fn. 4 (emphasis added). A true copy of this document is attached
as Exhibit 12 [FILED UNDER SEAL].
15.

Plaintiffs’ process to force members to agree to assign copyrights in the standards

is indeed not water-tight. Membership enrollment forms and renewal forms with boilerplate
language asserting a conveyance of copyright rights in unspecified contributions of
copyrightable works do not meet the requirements for valid assignments under the Copyright
Act. In addition, even with the boilerplate forms, members on occasion circumvent the
boilerplate process by sending in membership requests through informal channels. A true
example of someone renewing membership through informal correspondence produced by
Plaintiffs is attached as Exhibit 13 [FILED UNDER SEAL].
16.

Members often tear off the sections of the membership application that include

assignment or license language and they sent in only their application information. A true
example of a membership application that had the assignment language removed from it that was
produced by Plaintiffs is attached as Exhibit 14 [FILED UNDER SEAL].
17.

Plaintiffs sought consent from individuals who did not personally own the

copyright in their contributions, and these individuals included federal government employees
acting in their official capacities. A true example of these invalid assignments produced by
Plaintiffs is attached as Exhibit 15 [FILED UNDER SEAL].
18.

Plaintiffs also sought consent from employees or third parties to assign copyrights

when they were contributing to the standards as part of their employment. An employee does
not own copyright in a work he or she prepares in the course and scope of the employment; in
those circumstances, the work is a “work made for hire” within the definition of that term in
section 101 of the Copyright Act, 17 U.S.C. § 101, and the employer, not the employee, is the

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copyright owner. A true example of these invalid assignments by employees produced by
Plaintiffs, and a list of committee members many of whom are employed by third parties, are
attached as Exhibit 16 [FILED UNDER SEAL].

I declare under penalty of perjury that the foregoing is true and correct.

Executed this 23rd day of March, 2015.
/s/ Andrew P. Bridges
Andrew P. Bridges

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