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)

EXHIBIT 3

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-EGS

NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and

DEFENDANT-COUNTERCLAIMANT
PUBLIC.RESOURCE.ORG, INC.’S
FIRST SET OF REQUESTS FOR
PRODUCTION OF DOCUMENTS TO
NATIONAL FIRE PROTECTION
ASSOCIATION, INC. (NOS. NFRA-1
THROUGH NFRA-18)

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

Filed:

PUBLIC.RESOURCE.ORG, INC.,
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.

August 6, 2013

PROPOUNDING PARTY:

Defendant-Counterclaimant Public.Resource.Org, Inc.

RESPONDING PARTIES:

Plaintiff-Counterdefendant National Fire Protection
Association, Inc.

SET NUMBER:

One (Nos. NFPA-1 through NFPA-18)

Pursuant to Federal Rules of Civil Procedure 26 and 34, Defendant-Counterclaimant
Public.Resource.Org, Inc. requests that Plaintiff-Counterdefendant National Fire Protection
Association, Inc. produce the following documents within thirty (30) days from the date of
service, at the offices of Fenwick & West LLP, 801 California Street, Mountain View, CA 94041.
DEFINITIONS
1.

The following definitions shall apply to each of the Requests. Terms without

specific definitions below shall have their ordinary and usual meanings.
2.

“Person” includes any individual, trust, estate, entity (including but not limited to

sole proprietorship, partnership, joint venture, company, or corporation), organization,
association, group, government, or governmental body (including but not limited to any
governmental agent, representative, agency, bureau, department, committee, or commission).
3.

“You,” “Your,” or “NFPA” means National Fire Protection Association, Inc., its

predecessors, affiliates, officers, employees, agents, attorneys, and any Person NFPA believes to
be an agent of NFPA or was otherwise acting on its behalf.
4.

“Public Resource” and “PRO” mean Public.Resource.org, Inc.

5.

The terms “Work-At-Issue” and “Works-At-Issue” mean any and all works in

which You assert copyright, which copyright You claim that PRO has infringed, directly or
indirectly.
6.

The term “Complete Chain of Title” includes, at a 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.

1

7.

The term “Standard” refers to any standard, code, safety code, model code, model

law, or set of rules, whether or not any jurisdiction has incorporated it into law.
8.

The term “Incorporated Standard” refers to any Standard that any jurisdiction has

incorporated into law, including incorporation by reference.
9.

“Legal Authority” means any governmental edict, rule, regulation, law, or other

binding authority or expression.
10.

“Standards Process” means development, creation, drafting, revision, editing,

transmission, publication, distribution, display, or dissemination of a standard.
11.

“Contribution” means assistance, advice, financial support, labor, effort, or

expenditure of time.
12.

“Document” means any items described in Federal Rule of Civil Procedure 34(a)

and any “writings” within the meaning of Federal Rule of Evidence 1001, and all preliminary
and final drafts of any such items.
13.

“Concerning” or “regarding” means “pertaining to, referring to, relating to,

mentioning, or reflecting.”
14.

The terms “or” and “and” mean both the conjunctive and the disjunctive.

15.

The terms “any” or “each” include and encompass “all.”

16.

The use of a verb in any tense includes the use of the verb in all other tenses.

17.

The singular form of any word includes the plural. The plural form of any word

includes the singular.
18.

The term “all” means any and all.
INSTRUCTIONS

1.

In responding to the following requests, furnish all available information

including information in the possession, custody, or control of any of Your attorneys, directors,
officers, agents, employees, representatives, associates, investigators or division affiliates,
partnerships, parents or subsidiaries, and Persons under Your control.
2.

In selecting Documents from files and other sources and numbering of such

2

Documents for production, do so in a manner that allows determination of the source and order
of each Document.
3.

Produce file folders with tabs or labels or directories of files identifying

Documents intact with such Documents.
4.

Do not separate Documents attached to each other.

5.

Produce Documents with control numbers permitting identification of particular

documents by their assigned number.
6.

Where there is a claim of privilege to responding to any of these requests:

a. the party or attorney asserting the privilege shall in the response or objection to the
discovery request identify the nature of the privilege (including work product) it
claims, and if the privilege concerns a claim or defense that state law governs,
indicate which state’s privilege rule it invokes;
b. provide the following information in the response or objection: (i) date of the
Document or, if no date is indicated, an estimate of that date; (ii) type of Document;
(iii) subject matter; (iv) the name and address of each person who prepared it; (v) the
name and address of each person to whom it was sent; (vi) the name and address of
each person for whom it was prepared; (vii) the name and address of each person who
received or reviewed it, if any; (viii) the name and address of each person in
possession of it; and (ix) the particular request to which such Document is responsive.
7.

If Your response to a particular Document request is a statement that You lack the

ability to comply with that request, You must specify whether the inability to comply is because
the particular Document or category of information never existed, has been destroyed, has been
lost, misplaced, or stolen, or has never been, or is no longer, in Your possession, custody, or
control, in which case identify the name and address of any person or entity known or believed
by You to have possession, custody, or control of that Document or category of information.
8.

If You contend certain Document requests require disclosure of trade secret or

other confidential research, development, or commercial information, please mark them as such

3

or as a protective order in this action directs.
9.

If you contend that you have previously produced any Document that these

requests call for, identify the production number and file directory location of that Document.
Your obligation to respond to these requests is continuing and You are to supplement your
responses to include subsequently acquired information in accordance with the requirements of
Rule 26(e) of the Federal Rules of Civil Procedure.
REQUESTS FOR PRODUCTION
REQUEST FOR PRODUCTION NO. 1:
Documents sufficient to identify each Work-At-Issue.
REQUEST FOR PRODUCTION NO. 2:
Documents sufficient to establish Complete Chain of Title for each Work-At-Issue.
REQUEST FOR PRODUCTION NO. 3:
Documents sufficient to identify all Persons who participated in the Standards Process of
each Work-At-Issue.
REQUEST FOR PRODUCTION NO. 4:
Documents sufficient to identify all Contributions in support of the Standards Process of
each Work-At-Issue.
REQUEST FOR PRODUCTION NO. 5:
Documents sufficient to identify every Legal Authority that incorporates each Work-AtIssue, either expressly or by reference.
REQUEST FOR PRODUCTION NO. 6:
All documents constituting, comprising, referring to, or evidencing agreements between
You and any Person who participated in the Standards Process of each Work-At-Issue.
REQUEST FOR PRODUCTION NO. 7:
All documents constituting, comprising, or concerning communications with any
government employee, official, or entity regarding incorporation (whether actual, proposed,
desired, or considered) of any Standard in which You claim rights into any Legal Authority.

4

REQUEST FOR PRODUCTION NO. 8:
All documents regarding Carl Malamud.
REQUEST FOR PRODUCTION NO. 9:
All documents regarding Public Resource or its representatives (other than Carl
Malamud), including its legal representatives.
REQUEST FOR PRODUCTION NO. 10:
All documents constituting or concerning communications among Persons who
participated in the Standards Process of each Work-At-Issue, including but not limited to meeting
and conference call minutes and notes.
REQUEST FOR PRODUCTION NO. 11:
All documents concerning revenue or profit expectations by You or any other Person
regarding the availability, publication, sale, distribution, display, or other dissemination of any
Standard in which You claim rights.
REQUEST FOR PRODUCTION NO. 12:
All documents concerning any Contributions You have received from any governmental
entity in connection with the Standards Process of each Work-At-Issue.
REQUEST FOR PRODUCTION NO. 13:
All documents concerning any Contributions You have received from any not-for-profit
entity (other than a governmental entity) in connection with the Standards Process of each WorkAt-Issue.
REQUEST FOR PRODUCTION NO. 14:
All documents constituting, comprising, or concerning communications requesting
Contributions of any form from any Person in connection with the Standards Process of each
Work-At-Issue.
REQUEST FOR PRODUCTION NO. 15:
All documents concerning offers of Contributions from any Person in connection with the
Standards Process of each Work-At-Issue.

5

REQUEST FOR PRODUCTION NO. 16:
All documents constituting, comprising, or concerning communications criticizing Your
claims, statements, arguments, or positions in this dispute or litigation.
REQUEST FOR PRODUCTION NO. 17:
All documents constituting, comprising, or concerning communications by You regarding
this dispute or litigation.
REQUEST FOR PRODUCTION NO. 18:
All documents constituting, comprising, or concerning licenses with respect to any WorkAt-Issue.

6

Dated: February 13, 2014

Respectfully submitted,
/s/ Andrew P. Bridges
Andrew P. Bridges (admitted)
abridges @fenwick.com
Kathleen Lu (admitted)
[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 (admitted)
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
Facsimile: [phone]
Joseph C. Gratz
[e-mail]
Mark A. Lemley
[e-mail]
DURIE TANGRI LLP
217 Leidesdorff Street
San Francisco, CA 94111
Telephone: [phone]
Facsimile: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

7

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-EGS

NATIONAL FIRE PROTECTION
ASSOCIATION, INC.; and

PROOF OF SERVICE

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

Filed:

PUBLIC.RESOURCE.ORG, INC.,
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.

August 6, 2013

The undersigned declares as follows:
I am a citizen of the United States and employed in San Francisco County, State of
California. I am over the age of eighteen years and not a party to the within-entitled action. My
business address is Fenwick & West LLP, 555 California Street, 12th Floor, San Francisco, CA
94104.
On the dates set forth below, I served a copy of the following documents:
1. DEFENDANT-COUNTERCLAIMANT PUBLIC.RESOURCE.ORG, INC.’S FIRST
REQUEST TO NATIONAL FIRE PROTECTION ASSOCIATION, INC. FOR
ADMISSION (NO. NFPA-1);
2. DEFENDANT-COUNTERCLAIMANT PUBLIC.RESOURCE.ORG, INC.’S FIRST
SET OF INTERROGATORIES TO NATIONAL FIRE PROTECTION
ASSOCIATION, INC. (NOS. NFPA-1 THROUGH NFPA-7);
3. DEFENDANT-COUNTERCLAIMANT PUBLIC.RESOURCE.ORG, INC.’S FIRST
SET OF REQUESTS FOR PRODUCTION OF DOCUMENTS TO NATIONAL
FIRE PROTECTION ASSOCIATION, INC. (NOS. NFRA-1 THROUGH NFRA-18);
and
on the interested parties in the subject action by placing a true copy thereof as indicated below,
addressed as follows:

X

BY E-MAIL ON FEBRUARY 13, 2014: by causing to be transmitted via e-mail the
documents listed above to the addressee at the email addresses listed below:

Counsel for National Fire Protection
Association, Inc.

Counsel for National Fire Protection
Association, Inc.

Anjan Choudhury
MUNGER, TOLLES & OLSON LLP
355 South Grand Avenue, 35th Floor
Los Angeles, CA 90071
[e-mail]

Kelly M. Klaus
Jonathan H. Blavin
Michael J. Mongan
MUNGER, TOLLES & OLSON LLP
560 Mission St., 27th Floor
San Francisco, CA 94105
[e-mail]
[e-mail]
[e-mail]

5466573.1

Counsel for American Society of Heating,
Refrigerating, and Air-Conditioning
Engineers, Inc.

Counsel for American Society of Heating,
Refrigerating, and Air-Conditioning
Engineers, Inc.

Kenneth L. Steinthal
Joseph R. Wetzel
KING & SPALDING LLP
101 2nd Street, Suite 2300
San Francisco, CA 94105
[e-mail]
[e-mail]

Jeffrey S. Bucholtz
KING & SPALDING LLP
1700 Pennsylvania Avenue, NW, Suite 200
Washington, DC 20006
[e-mail]

Counsel for Public.Resource.Org, Inc

Counsel for Public.Resource.Org, Inc

Mitchell L. Stoltz
Corynne McSherry
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
[e-mail]
[e-mail]

David Halperin
1530 P Street NW
Washington, DC 20005
[e-mail]

3

5466573.1

X

BY E-MAIL ON FEBRUARY 19, 2014: by causing to be transmitted via e-mail the
documents listed above to the addressee at the email addresses listed below:

Counsel for American Society for Testing and
Materials dba ASTM International, Inc.
J. Kevin Fee
Michael Franck Clayton
MORGAN, LEWIS & BOCKUS LLP
1111 Pennsylvania Avenue, N.W.
Washington, DC 20004
[e-mail]
[e-mail]
I declare under penalty of perjury under the laws of the State of California and the United
States that the above is true and correct.

Date: February 19, 2014

/s/ Raymond F. Pelayo
Raymond F. Pelayo

4

5466573.1