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

Filing 98

REPLY to Opposition re #86 MOTION for Protective Order filed by AMERICAN SOCIETY FOR TESTING AND MATERIALS. (Attachments: #1 Declaration of Jordana S. Rubel, #2 Exhibit 1, #3 Exhibit 2 [UNDER SEAL], #4 Exhibit 3, #5 Exhibit 4, #6 Exhibit 5, #7 Exhibit 6 [UNDER SEAL])(Fee, J.) Modified event title on 4/3/2015 (znmw, ).

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

Plaintiffs/
Counter-Defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/
Counter-Plaintiff.
PLAINTIFFS’ REPLY IN SUPPORT OF THEIR MOTION FOR PROTECTIVE ORDER

TABLE OF CONTENTS
Page
I.

Defendant Does Not Have Standing to Raise Issues About Any Aspect of the
Validity of the Assignments of the Copyrights to Plaintiffs ..............................................2
A.

A Party With No Claim to Ownership of the Copyrights Does Not Have
Standing to Challenge the Presumption of Ownership When Plaintiff
Claims Ownership By Assignment ........................................................................3

B.

Contributors to Plaintiffs’ Standards Assign Their Copyrights to Plaintiffs..........6

II.

Preparing a Witness to Be Deposed on These Topics Would Be Unduly
Burdensome for ASTM ......................................................................................................8

III.

Plaintiffs’ Motion is Procedurally Proper.........................................................................12

CONCLUSION ............................................................................................................................13

-i-

TABLE OF AUTHORITIES
Page(s)
CASES
Barefoot Architect, Inc. v. Bunge,
632 F. 3d 822 (3d Cir. 2011) .................................................................................................4, 6
Billy-Bob Teeth, Inc. v. Novelty, Inc.,
329 F.3d 586 (7th Cir. 2003) .....................................................................................................6
DSMC, Inc. v. Convera Corp.,
479 F. Supp. 2d 68 (D.D.C. 2007).............................................................................................9
Eden Toys, Inc. v. Florelee Undergarment Co.,
697 F.2d 27 (2nd Cir. 1982) ..................................................................................................4, 6
Hart v. Sampley,
No. CIV. A. 91-3068(CRR), 1992 WL 336496 (D.D.C. June 24, 1992)..........................1, 3, 6
Imperial Residential Design, Inc. v. Palms Dev. Grp., Inc.,
70 F.3d 96 (11th Cir. 1995) ...................................................................................................3, 6
In re Napster Copyright Litig.,
191 F. Supp. 2d 1087 (N.D. Cal. 2002).....................................................................................4
International Code Council, Inc. v. National Fire Protection Association,
No. 02 C 5610, 2006 WL 850879 (N.D. Ill. Mar. 27, 2006).................................................4, 5
M&T Mortg., U.S. ex. rel. Fago v. M&T Mortg. Corp.,
235 F.R.D. 11 (D.D.C. 2006) ....................................................................................................9
Minden Pictures, Inc. v. Pearson Educ., Inc.,
929 F. Supp. 2d 962 (N.D. Cal. 2013).......................................................................................5
Mob Music Publ’g v. Zanzibar on the Waterfront, LLC,
698 F. Supp. 2d 197 (D.D.C. 2010)...........................................................................................9
Swatch Group Mgmt. Servs. Ltd. v. Bloomberg L.P.,
861 F. Supp. 2d 336 (S.D.N.Y. 2012) .....................................................................................11
T-Peg, Inc. v. Vermont Timber Works, Inc.,
No. 03–CV–462–SM, 2008 WL 879730 (D.N.H. Mar. 28, 2008)............................................5
T-Peg, Inc. v. Vermont Timber Works, Inc.,
No. Civil No. 03–cv–462–SM, 2009 WL 839524 (D.N.H. Mar. 27, 2009)..............................5
Viesti Assocs., Inc. v. Pearson Educ., Inc.,
No. 11–cv–0 1687–PAB–DW, 2014 WL 1053772 (D. Colo. Mar. 19, 2014)..........................5

TABLE OF AUTHORITIES
(Continued)
STATUTES
17 U.S.C. § 204 .......................................................................................................................3, 4, 6
17 U.S.C. § 410(c) ...........................................................................................................................2
17 U.S.C. § 501(b)...........................................................................................................................2

iii

Plaintiffs’ Motion is premised on a straightforward legal proposition. When a federally
registered copyright owner brings an infringement claim against a defendant who does not claim
that it has any copyright ownership in the work, the accused infringer does not have standing to
challenge the validity of any transfers or assignments between the registered copyright owner
and other third parties. As this Court has held, “even if, as defendants suggest, the transfer was
in some way defective, the defendants would not have standing to challenge the validity of the
transfer because they were not parties to the agreement.” Hart v. Sampley, No. CIV. A. 913068(CRR), 1992 WL 336496, at *1 (D.D.C. June 24, 1992). Defendant does not provide any
authority to the contrary, nor does it seriously dispute that the discovery it seeks relates to its
claims about supposed defects in the way that other parties assigned copyrights to plaintiffs.
That suffices to resolve this Motion.
Defendant argues that it needs discovery to pursue the following theories through which
it could show that third parties and not Plaintiffs own the copyrights in portions of the works at
issue: (1) some of the purported assignments are actually non-exclusive licenses, (2) some of the
assignments are not signed, (3) the copyright could not be assigned because the author might be
an employee without the authority to assign his/her copyright, (4) some of the assignments might
be missing or non-existent, or (5) the copyright could not be assigned because the author might
be an employee of the federal government. Opp’n at 10. The first four of these theories are
unquestionably attempts by Defendant to inquire into the transfers between Plaintiffs and various
third parties, and the law is clear that Defendant lacks standing to raise these theories. And the
fifth theory is about the role that government employees play in the standards development
process and is not covered by this Motion. To the contrary, that theory is the subject of a
separate 30(b)(6) topic on which all Plaintiffs have provided a witness. See Topic 1 of Exs. A,

1

B, C to Opening Mem. (“[t]he process and activities of developing the Works-At-Issue,
including the participation of government and private sector personnel in standards
development.”).1 Thus, the Motion should be granted.
I.

Defendant Does Not Have Standing to Raise Issues About Any Aspect of the
Validity of the Assignments of the Copyrights to Plaintiffs.
The parties agree that, pursuant to 17 U.S.C. § 501(b), “[i]n order to maintain an action

for copyright infringement, plaintiffs must demonstrate that they own the copyrights for the
works in question.” Plaintiffs have satisfied the requirements of section 501(b) by providing
proof of copyright ownership in the form of certificates of copyright registration. 17 U.S.C. §
410(c) (the certificate of registration “shall constitute prima facie evidence of the validity of the
copyright and of the facts stated in the certificate”). To the extent Defendant seeks to rebut the
presumption of Plaintiffs’ ownership by alleging that the assignments of copyright by individual
members who authored components of the works were somehow improper, including that they
were not signed, that the person who signed the agreement was not authorized to assign the
copyright, or that there is a defect in the language used in the assignments, it does not have
standing to do so.

1

Plaintiffs’ standard development procedures include the participation of federal government
employees, as federal regulators provide an important perspective on the standards. Defendant’s
pursuit of discovery regarding whether any federal employee authored a piece of any of the
standards at issue such that Plaintiffs do not own the copyright in that piece of a standard is a
classic fishing expedition. Defendant copied Plaintiffs’ entire standards. There is no basis for
asserting, and Defendant offers no evidence to suggest, that any federal government employee
authored the entire text or substantially the entirety of any standard. For example, ASTM’s
technical committees are made up of over 30,000 individuals, representing manufacturers,
retailers, consumers, academics, researchers and government agencies. Federal employees make
up a small percentage of the membership. And even if a federal employee drafted some part of
any standard at issue, that would not be a defense to Defendant’s wholesale copying of the
entirety of the standard.
2

Defendant apparently concedes that the case law precludes a third party from making
“technical challenges” to the validity of an assignment and argues instead that these cases do not
address whether a defendant in an infringement action has standing to raise issues regarding
whether an assignment actually occurred or was intended. Opp’n at 8-9. Defendant’s invented
distinction between “technical challenges” and other types of challenges finds no support in the
case law. As discussed below, the cases cited by Plaintiffs unambiguously state that a third party
infringer does not have standing to challenge the validity of an assignment under section 204 on
any basis. And in any event, the documents produced in the case show that the contributors to
Plaintiffs’ standards intended to assign their copyrights to Plaintiffs and actually made the
assignments.
A.

A Party With No Claim to Ownership of the Copyrights Does Not Have
Standing to Challenge the Presumption of Ownership When Plaintiff Claims
Ownership By Assignment.

17 U.S.C. § 204 provides that “[a] transfer of copyright ownership, other than by
operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of
the transfer is in writing and signed by the owner of the rights conveyed or such owner’s duly
authorized agent.” Thus, Section 204 discusses the requirements of a writing transferring
copyright ownership, a signature, and whether the signature is by the owner or the owner’s
authorized agent.
As discussed in Plaintiffs’ opening memorandum, courts consistently hold, and this Court
has previously held, that if there is no dispute between the copyright owner and transferee about
the ownership of the copyright, then a copyright infringement defendant lacks standing to
challenge the validity of an assignment. Hart, 1992 WL 336496, at *1 (citing Imperial
Residential Design, Inc. v. Palms Dev. Grp., Inc., 70 F.3d 96, 99 (11th Cir. 1995) (“the chief
3

purpose of section 204(a), (like the Statute of Frauds) is to resolve disputes between copyright
owners and transferees …. It would be unusual and unwarranted to permit a third-party infringer
to invoke section 204(a) to avoid suit for copyright infringement.”); Eden Toys, Inc. v. Florelee
Undergarment Co., 697 F.2d 27 (2nd Cir. 1982)).2 Even the cases cited by Defendant make this
point clearly. See, e.g., In re Napster Copyright Litig., 191 F. Supp. 2d 1087, 1097 (N.D. Cal.
2002) (“The cases hold that a third party does not have standing to challenge the presumption of
ownership when plaintiffs claim ownership by assignment.”).
As the Third Circuit explained, the rationale behind precluding a copyright infringer from
raising issues regarding the validity of an assignment is that ultimately such issues relate only to
whose copyright has been infringed and not whether the defendant is liable for infringement.
Barefoot Architect, Inc. v. Bunge, 632 F. 3d 822, 829-30 (3d Cir. 2011) (holding that third party
infringer did not have standing to raise issues relating to the validity of the assignment because
“[a]ll of [the defendants] knew or should have known that they were at least potentially
infringing someone's copyright — even if they perhaps could not be precisely sure whose.”). As
a result, Defendant cannot escape liability for its infringement by arguing that it infringed
someone’s copyrights but not Plaintiffs’ copyrights.
The cases on which Defendant relies to argue that a third-party infringement defendant
may attack the validity of an assignment simply provide no support for its position. Defendant
discusses International Code Council, Inc. v. National Fire Protection Association, No. 02 C
5610, 2006 WL 850879 (N.D. Ill. Mar. 27, 2006), at length, but Defendant wrongly suggests that
the court actually ruled on the defendant’s standing in that unpublished order. Rather, the court

2

Although these cases involved works authored by a single author, none of the courts relied on
that fact in concluding that defendants cannot defend their copyright infringement by challenging
the validity of the assignment to the plaintiff.
4

discussed the issue only in passing in a footnote, in which it expressly acknowledged that the
issue was not raised by the parties. Id. at *18 n. 33 (“ICC has not challenged NFPA’s standing to
voice this challenge.”).
Similarly, the remaining district court cases that Defendant cites do not establish that a
third party infringer can challenge the validity of an assignment. See Viesti Assocs., Inc. v.
Pearson Educ., Inc., No. 11–cv–0 1687–PAB–DW, 2014 WL 1053772 (D. Colo. Mar. 19,
2014); Minden Pictures, Inc. v. Pearson Educ., Inc., 929 F. Supp. 2d 962 (N.D. Cal. 2013); TPeg, Inc. v. Vermont Timber Works, Inc., No. 03–CV–462–SM, 2008 WL 879730 (D.N.H. Mar.
28, 2008). In Viesti and Minden, the plaintiffs were not listed on the copyright certificates as
owners and were therefore not entitled to a presumption of ownership based on registration. See
Viesti, 2014 WL 1053772, at *10-14; Minden, 929 F. Supp. 2d at 968-70. No one disputes that
when a copyright plaintiff lacks a registration certificate, the plaintiff must present some other
evidence that it has an ownership interest in the copyright. Here, by contrast, the certificates of
registration list Plaintiffs as the owners of the copyrights.
In T-Peg, an unpublished opinion from the District of New Hampshire, the court did not
hold that the defendant had standing to challenge the assignment, but simply ordered
supplemental briefing on the question of plaintiff’s ownership. 2008 WL 879730 at *3.
Ultimately, after supplemental briefing, the court decided that the plaintiff owned the copyright
even if there were technical problems with the registration certificate and did not rule on the
question of whether defendant had standing to challenge the assignments. See T-Peg, Inc. v.
Vermont Timber Works, Inc., No. Civil No. 03–cv–462–SM, 2009 WL 839524 (D.N.H. Mar. 27,
2009).

5

In contrast to the isolated district court opinions identified by Defendant, none of which
actually directly addressed the question at issue here, Plaintiffs have identified multiple cases
from several Courts of Appeal, which have held uniformly that third party infringers do not have
standing to raise any issues about the validity of a transfer even when there was no
contemporaneous writing documenting the transfer at all. See, e.g., Barefoot Architect, 632 F. 3d
at 829-30; Billy-Bob Teeth, Inc. v. Novelty, Inc., 329 F.3d 586 (7th Cir. 2003); Imperial
Residential Design, 70 F.3d at 99; Eden Toys, 697 F.2d at 36. If a third party is not permitted to
challenge whether the assignment complied with the requirements of Section 204 when there
was no writing, it defies logic to argue that a copyright infringer should be permitted to challenge
whether a specific writing complied with the requirements of Section 204, including whether
there is a defect in the wording of the assignment, if the assignment was signed, or if the person
who signed has the authority to enter into the assignment. Indeed, this Court has held that a third
party defendant does not have standing to argue that the assignment of a copyright was “in some
way defective.” Hart, 1992 WL 336496, at *1.
B.

Contributors to Plaintiffs’ Standards Assign Their Copyrights to Plaintiffs.

Although Plaintiffs reject the notion that they should be required to provide discovery on
the assignment topics when Defendant does not have standing to challenge the assignments, the
Defendant’s assertions are baseless in any event. The documents produced in this case
demonstrate that contributors to Plaintiffs’ standards intend to and actually assign their
copyrights to Plaintiffs. Defendant’s assertion that “for many, perhaps most, of the
copyrightable contributions at issue in this case, there have been no copyright assignments at
all,” Opp’n at 10, is entirely without foundation.

6

For example, ASTM standards are drafted, edited, and revised by a combination of staff
employees and committee members.3 When specific language is proposed for use in a standard,
the person making the proposal, whether a committee member or a non-member, agrees to the
following language: “I hereby grant and assign to ASTM International all and full intellectual
property rights, including copyright, in the proposed draft standard/text and any contributions I
make to ASTM International in connection with this proposal” and “By submitting this form, I
acknowledge that all copyrights to this document, as a draft and an approved ASTM standard,
are the sole and exclusive property of ASTM, in accordance with the Intellectual Property
policies of the Society.” See Declaration of Jordana S. Rubel (“Rubel Decl.”) ¶ 3, Ex. 2.
When the ASTM committee and staff complete a draft of the standard, the standard goes
through a rigorous review process before the final version of the standard is approved by ASTM.
The final version of each standard is published with ASTM’s trademarks on it and with a
copyright notice identifying ASTM as the copyright owner. See, e.g., Rubel Decl. ¶ 4, Ex. 3.
In addition to the assignments of any copyright in proposed language that a member
submits for possible inclusion in a standard, new members and members renewing their
memberships online to ASTM also must agree to the following language: “I agree, by my
participation in ASTM and enjoyment of the benefits of my annual membership, to have
transferred and assigned any and all interest I possess or may possess, including copyright, in the
development or creation of ASTM standards or ASTM IP to ASTM.” Rubel Decl. ¶ 5-6, Exs. 4,
5. Some members renew their memberships using paper forms that contain substantially the
3

This section focuses on the procedures of ASTM because, after the Motion was filed, the Court
ordered Defendant to take the remaining 30(b)(6) depositions of NFPA and ASHRAE witnesses
by no later than April 2, 2015. See Mar. 23, 2015 Minute Order. Because NFPA and ASHRAE
were already going to have 30(b)(6) witnesses testify on certain related subjects, NFPA and
ASHRAE also made these witnesses available to testify on the subjects that are the issue of the
Motion and made reasonable efforts to prepare their witnesses to testify on these subjects.
7

same language. Rubel Decl. ¶ 7, Ex. 6. To the extent that there is any possibility that a
contributor to a standard did not assign his/her copyrights to ASTM when he/she submitted the
proposal, the language in the membership renewal forms clearly indicates that the person
intended to assign such rights to ASTM previously and completes the assignment if it had not
already been completed.
Thus, ASTM’s routine procedures provide a “belt and suspenders” approach to ensuring
that any copyrights are assigned by their members to ASTM consisting of multiple layers of
forms. Defendant has pointed to one example in which a member renewed his membership by
email instead of signing a renewal form and one example of a member who tore off the piece of
the renewal form that includes the assignment language before sending it in. Even if Defendant
could demonstrate that these two individuals actually contributed language that was used in the
final version of any ASTM standard, which it has not done, Defendant ignores the fact that the
assignment language in the membership renewal forms is only one of several ways in which
contributors to the standards assign their copyrights to ASTM. Even if, so to speak, the
suspenders could be missing, the belt will still do the job.
II.

Preparing a Witness to Be Deposed on These Topics Would Be Unduly Burdensome
for ASTM.
Even though Defendant cannot defend its infringement by alleging that the assignments

to Plaintiffs were somehow defective, Plaintiffs produced certain documents and forms related to
the assignments during the course of this litigation. But requiring Plaintiffs to prepare witnesses
on the 30(b)(6) topics that are the subject of this Motion would be unduly burdensome for
Plaintiffs, particularly given the irrelevance of the subject matter of those topics.
One of the deposition topics at issue calls for a witness to testify about the “Bates
numbers of at least one instance of every form of assignment with which [Plaintiffs] claim a
8

person assigned any copyright in the Works-At-Issue to [Plaintiffs].” See Topic 24 of Ex. A;
Topic 25 of Ex. B; Topic 26 of Ex. C to Opening Memo. It is not reasonable to expect a
deponent to educate him/herself about a topic this specific, which would require a witness to
memorize information about hundreds of assignments. See M&T Mortg., U.S. ex. rel. Fago v.
M&T Mortg. Corp., 235 F.R.D. 11, 25 (D.D.C. 2006) (holding that it was unreasonable to expect
30(b)(6) witness to testify about loan numbers for 63 different loans). The Court should not
require Plaintiffs to designate a witness on this topic for this reason alone.
The extreme breadth of the two other topics at issue would make it exceptionally
burdensome for ASTM to prepare a witness to testify about them. Defendant’s assertion that
Plaintiffs bear the burden regarding their assertions of ownership of the standards in this case is
false. See Opp’n at 17. In fact, because Plaintiffs came forward with copyright registrations that
list Plaintiffs as the owners of the copyrights in each of the standards at issue, Defendant has the
burden of proving that Plaintiffs’ copyright registrations are not valid. See, e.g., Mob Music
Publ’g v. Zanzibar on the Waterfront, LLC, 698 F. Supp. 2d 197, 202 (D.D.C. 2010) (a
certificate of copyright registration constitutes prima facie evidence of the validity of the
registration and the facts stated in the registration and shifts the burden to the defendant to
controvert the copyright owner’s chain of title); DSMC, Inc. v. Convera Corp., 479 F. Supp. 2d
68, 82 (D.D.C. 2007) (a certificate of registration “shall constitute prima facie evidence of the
validity of the copyright and of the facts stated in the certificate”).
Furthermore, given the broad scope of the deposition topics, Defendant’s suggestion that
preparing a witness to testify on these topics is not unduly burdensome because Plaintiffs have
already produced documents concerning copyright assignments and therefore must be familiar
with their content unfairly minimizes the scope of the topics. Defendant does not simply seek to

9

ask questions about the general processes through which its standards are developed and the
copyrights are transferred to Plaintiffs. Defendant wants ASTM to prepare a witness to be able
to testify, for example, about “all elements of Chain of Title” of 229 ASTM standards at issue in
this case, which Defendant defines as “at a minimum: initial creation and authorship of any
component of a work, documents sufficient to identify the original creator(s) and author(s) of the
work and all assignments documenting transfer from the author(s) to [Plaintiffs], including all
intermediate transfers, as well as a copyright registration.” See Topic 2 and Definitions of Exs.
A, B, C to Opening Memo. This topic is so broad that no witness could reasonably be expected
to be able to testify about it.
Similarly, the remaining topic would require witnesses to testify about the authority of
each person who executed a copyright assignment to Plaintiffs to convey that copyright. See
Topic 3 of Exs. A, B, C. Not only does this topic call for testimony regarding detailed
information about hundreds or thousands of assignments, it is not even limited to copyrights in
language that was actually included in the final version of a standard or to assignments that were
made in connection with the works at issue in this litigation.
Essentially, Defendant seeks to shift the burden onto Plaintiffs to sift through voluminous
documents discussing the creation of the standards at issue and the assignment forms and be able
to provide witnesses who can demonstrate that no contributor of copyrightable expression
retained any ownership interest. Just because Plaintiffs produced documents that relate to these
issues does not mean that they have performed the monumental task of determining which
committee members and others may have drafted which language in a standard and then
matching up the names of those people with their copyright assignment records. If Defendant
wants to pursue this fishing expedition, it can review the documents and discern whether any

10

language that appears in the standards at issue was actually drafted by any individuals who could
not or did not assign their copyrights to Plaintiffs. The Court should not require Plaintiffs to do
this extensive work for Defendant simply because Defendant designated a deposition topic that
calls for a witness to testify on these issues, particularly where Defendant bears the burden of
proving that Plaintiffs’ copyrights are not valid and Defendant does not have standing to
challenge the validity of the assignments.
Defendant’s argument that it may be able to show that so much of the language in
Plaintiffs’ standards was drafted by such individuals that the portions of the standards that
remain could be so thin that Defendant’s copying would be a fair use rests on the faulty premise
that the standards at issue are “riddled with uncopyrightable elements” and that the copyrightable
elements within the standards are minimal. See Opp’n at 11. Unlike in Feist Publications, Inc.
v. Rural Telephone Services Co., Plaintiffs’ standards are not factual compilations in which they
only claim protection in the selection and arrangement of the content. See 499 U.S. 340, 350-51
(1991) (holding that a telephone book containing basic subscriber information arranged in
alphabetical order was not protectable by copyright because it did not require even a minimal
degree of originality). Similarly, the standards at issue differ considerably from the recording of
a telephone conference whose purpose was to present information about the plaintiff’s financial
condition and business performance to a group of analysts that was found to have only a “thin”
copyright. See Swatch Group Mgmt. Servs. Ltd. v. Bloomberg L.P., 861 F. Supp. 2d 336
(S.D.N.Y. 2012).
Plaintiffs’ standards do not consist of bare facts. For example, ASTM’s standards are the
product of intense collaboration and compromise between sophisticated committee members
representing different constituencies who work together to define and establish common

11

foundations to ensure quality and consistency and to enable seamless interoperability between
and across products and systems. Plaintiffs’ standards unquestionably have sufficient originality
to be protectable by copyright. Indeed, the president and sole employee of Defendant has
himself acknowledged that the standards have a “strong copyright interest” before they are
incorporated by reference into regulations. Rubel Decl. ¶ 2, Ex. 1. Not only is it pure conjecture
for Defendant to suggest that removing certain portions from the standards that could potentially
not be owned by Plaintiffs would render the copyright in the remainder of the standard “thin,” it
also reveals a profound misunderstanding of the substance of Plaintiffs’ standards.
III.

Plaintiffs’ Motion is Procedurally Proper.
Plaintiffs’ Motion is procedurally proper. First, Plaintiffs styled their Motion as an

emergency motion because they wanted the Court to rule on it prior to the dates for which their
depositions had been noticed. Subsequently, the Court made it clear that Plaintiffs were not
required to produce witnesses on the topics that are the subject of Plaintiffs’ motion unless and
until the Court denied the motion. As a result, there is no need for the Court to consider this
motion on an emergency basis.
Defendant’s assertion that Plaintiffs should have raised this issue in a motion to strike
Defendant’s defense that Plaintiffs do not own the copyright in the standards at issue is baseless.
Plaintiffs argue only that Defendant does not have standing to raise issues related to the validity
of the assignments made by their members, not that Defendant would not have standing to raise
other types of arguments related to lack of ownership of a valid copyright. Defendant’s
affirmative defense of lack of ownership does not specify that the alleged lack of ownership is
due to invalid assignments or that third parties owned the copyrights at issue. See Dkt. 21 at 48.
Thus, there was no reason for Plaintiffs to move to strike that affirmative defense.

12

Finally, this is not a motion for reconsideration of an earlier ruling by the magistrate
judge. This Motion specifically deals with the scope of three 30(b)(6) deposition notice topics,
which has not been addressed by the parties or the Court previously. As Defendant notes in its
description of the procedural history of this case, Opp’n at 3, although Plaintiffs raised this issue
in connection with Defendant’s Motion to Compel, Plaintiffs ultimately agreed to produce
certain assignment documentation and there was never a ruling on this issue. It is appropriate for
the magistrate judge to hear this motion because it relates to the permissible scope of discovery.
If Defendant is not satisfied with the magistrate judge’s ruling on the issue, it can seek
reconsideration by the district court judge.
Thus, there are no procedural grounds for denying Plaintiffs’ motion.
CONCLUSION
For all of the foregoing reasons and the reasons discussed in their opening memorandum,
Plaintiffs respectfully request that the Court grant their Motion to enter a protective order.

13

Dated: April 2, 2015

Respectfully submitted,
/s/ J. Kevin Fee
Michael F. Clayton (D.C. Bar: 335307)
J. Kevin Fee (D.C. Bar: 494016)
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]
Counsel For American Society For Testing And Materials
d/b/a/ ASTM International
/s/ Anjan Choudhury
Anjan Choudhury (D.C. Bar: 497271)
Munger, Tolles & Olson LLP
355 South Grand Avenue, 35th Floor
Los Angeles, CA 90071
Tel: [phone]
Email: [e-mail]
Kelly M. Klaus
Jonathan H. Blavin
Nathan M. Rehn
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.
/s/ Joseph R. Wetzel
Jeffrey S. Bucholtz (D.C. Bar: 452385)
King & Spalding LLP
1700 Pennsylvania Avenue, NW, Ste. 200
Washington, DC 20006-4707
14

Tel: [phone]
Email: [e-mail]
Kenneth L. Steinthal
Joseph R. Wetzel
Blake Cunningham
King & Spalding LLP
101 Second Street, Ste. 2300
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
Counsel for American Society of Heating, Refrigerating,
and Air Conditioning Engineers

15

CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing Reply in Support of Motion
for Protective Order was served this 2nd day of April, 2015 via CM/ECF 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/ Jordana Rubel
Jordana Rubel

16