AMERICAN EDUCATIONAL RESEARCH ASSOCIATION, INC. et al v. PUBLIC.RESOURCE.ORG, INC.

Filing 105

REDACTED DOCUMENT- to #69 MOTION for Summary Judgment and Opposition to Plaintiffs' Motion for Summary Judgment and Permanent Injunction, Order on Motion for Leave to File by PUBLIC.RESOURCE.ORG, INC. (td)

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EXHIBIT 1

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UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA

AMERICAN EDUCATIONAL RESEARCH
ASSOCIATION, INC., AMERICAN
PSYCHOLOGICAL ASSOCIATION, INC., and
NATIONAL COUNCIL ON MEASUREMENT IN
EDUCATION, INC.,
Plaintiffs,
v.
PUBLIC.RESOURCE.ORG,
Defendant.

Case No. 1:14-CV-00857-TSC-DAR
MEMORANDUM OF POINTS AND
AUTHORITIES IN SUPPORT OF
DEFENDANT-COUNTERCLAIMANT
PUBLIC.RESOURCE.ORG’S MOTION
FOR SUMMARY JUDGMENT AND
OPPOSITION TO PLAINTIFFS’
MOTION FOR SUMMARY
JUDGMENT AND PERMANENT
INJUNCTION
Action Filed: May 23, 2014

[REDACTED VERSION]

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TABLE OF CONTENTS
Page
INTRODUCTION ...........................................................................................................................1
FACTUAL BACKGROUND ..........................................................................................................3
A.

Public Resource Is A Non-Profit Committed to Educating the Public
About the Law..........................................................................................................3

B.

Volunteers from Many Sectors Authored the Plaintiffs’ 1999
Standards, But Plaintiffs Claim Copyright Ownership Because of
Their Facilitating Role. ............................................................................................3

C.

The Federal Government Has Incorporated by Reference the 1999
Standards Into Law. .................................................................................................5

D.

Public Resource Began Making Standards Incorporated by Reference
Freely Available Online In Accessible Formats. .....................................................8

E.

Plaintiffs Removed the 1999 Standards From Sale and Are Unaffected
By the Availability of the Incorporated Standards Appearing Freely
On Public Resource’s Website.................................................................................9

ARGUMENT .................................................................................................................................10
I.

SUMMARY JUDGMENT STANDARD..........................................................................10

II.

PLAINTIFFS CANNOT HOLD A STATUTORY MONOPOLY OVER THE
LAW. .................................................................................................................................11
A.

The Law Is Not Subject to Copyright. ...................................................................11
1.

2.

The Plain Text of the Copyright Act Reinforces this
Understanding. ...........................................................................................12

3.
B.

An unbroken line of case law holds that the law is excluded
from copyright, and the Copyright Office recognizes that
exclusion. ...................................................................................................11

A Statutory Monopoly In the Law Would Conflict with
Fundamental Constitutional Protections. ...................................................13

Incorporated Standards Are Laws and Cannot be Subject to a Statutory
Monopoly. ..............................................................................................................15
1.

The leading cases recognize that standards development
organizations cannot restrict access to the law. .........................................15
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TABLE OF CONTENTS
(Continued)
Page
2.

Incorporated Standards, As Law, Are Also Uncopyrightable
Facts, Ideas, Principles, Systems, Processes, and Procedures. ..................18

3.

No court has ever found that government edicts are
copyrightable..............................................................................................19

C.

Plaintiffs Have Actively Encouraged Transformation of Their
Standards Into Law and Cannot Now Complain of a “Taking.” ...........................22

D.

Public Policy Favors Promoting Public Access to the Law. ..................................24
1.
2.

E.
III.

Plaintiffs do not make the law reasonably accessible. ...............................24
The Plaintiffs do not need a copyright statutory monopoly and
copyright incentives in order to develop standards....................................26

Plaintiffs Misinterpret the Copyright Act. .............................................................30

EVEN BEFORE INCORPORATION, THE STANDARDS ARE PRIMARILY
UNCOPYRIGHTABLE SYSTEMS, DISCOVERIES, PROCESSES,
PROCEDURES, AND SCÈNES À FAIRE. .......................................................................31
A.
B.

IV.

The 1999 Standards Are Procedures, Systems, and Principles..............................32
The Incorporated Standards Are Scènes à Faire. ..................................................34

PUBLIC RESOURCE’S POSTING IS A LAWFUL FAIR USE. ....................................35
A.

Public Resource’s Posting of the Legally Binding 1999 Standards Is
Transformative, Is Noncommercial, and Is for Beneficial Public
Purposes. ................................................................................................................35
1.

Expanding access to the law is a transformative purpose. .........................36

2.

Providing new information about the law by enabling softwarebased analysis is a transformative and publicly beneficial
purpose. ......................................................................................................38

3.

Providing access for people with print disabilities is a legally
favored fair use purpose. ............................................................................40

4.

Public Resource’s use of the 1999 Standards is noncommercial. ................................................................................................42

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TABLE OF CONTENTS
(Continued)
Page
B.

The 1999 Standards Are a Factual Document. ......................................................42

C.

Public Resource Uses No More of the Standards than Necessary. ........................43

D.

Public Resource’s Use of the 1999 Standards Has Not Caused, and
Will Not Cause, Harm in Any Relevant Market. ...................................................44
1.
2.

Only the 1999 Standards are relevant to the fair use inquiry;
Public Resource has not posted the 2014 edition and will not
do so unless it becomes law. ......................................................................46

3.
V.

Plaintiffs themselves have shut down the market for the
1999 Standards. ..........................................................................................45

There is no proper market for the exclusive right to control
access to, and dissemination of, the law. ...................................................47

PUBLIC RESOURCE IS NOT SECONDARILY LIABLE FOR COPYRIGHT
INFRINGEMENT..............................................................................................................49
A.
B.

VI.

Plaintiffs Cannot Prove Direct Infringement by Third Parties. .............................50
Plaintiffs Cannot Establish Intent to Infringe or Even Knowledge of
Any Infringement. ..................................................................................................52

DEFENDANTS HAVE NOT JUSTIFIED, AND CANNOT JUSTIFY, A
PERMANENT INJUNCTION. .........................................................................................55
A.

Plaintiffs Have Experienced No Irreparable Injury to Any Valid Legal
Interest....................................................................................................................55
1.

Plaintiffs have no competent evidence of future harm. .............................56

2.

“Loss of control” without actual business injury does not
authorize an injunction. ..............................................................................57

A.

An Injunction Would Harm Public Resource’s Ability to Serve the
Public Interest. .......................................................................................................57

C.

The Public Interest Favors Access to Laws, Edicts, and Records of
Government............................................................................................................57

CONCLUSION ..............................................................................................................................59

iii

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TABLE OF AUTHORITIES
Page(s)
CASES
*A.V. ex rel. Vanderhye v. iParadigms, LLC,
562 F.3d 630 (4th Cir. 2009) .......................................................................................36, 38, 40
Am. Inst. of Physics v. Schwegman, Lundberg & Woessner, P.A.,
No. 12-528, 2013 WL 4666330 (D. Minn. Aug. 30, 2013) .....................................................37
Am. Inst. of Physics v. Winstead PC,
No. 3:12-CV-1230-M, 2013 WL 6242843 (N.D. Tex. Dec. 3, 2013) .....................................37
Amoco Prod. Co. v. Vill. of Gambell, AK,
480 U.S. 531 (1987) .................................................................................................................55
Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986) .................................................................................................................10
Apple, Inc. v. Samsung Electronics Co.,
678 F.3d 1314 (Fed. Cir. 2012)................................................................................................55
ATC Distrib. Grp., Inc. v. Whatever It Takes Transmission & Parts, Inc.,
402 F.3d 700 (6th Cir. 2005) ...................................................................................................34
*Authors Guild, Inc. v. HathiTrust,
755 F.3d 87 (2d Cir. 2014)...........................................................................................38, 40, 41
*Authors Guild v. Google, Inc.,
804 F.3d 202 (2d Cir. 2015)...................................................................................36, 38, 43, 44
Banks v. Manchester,
128 U.S. 244 (1888) ...........................................................................................................11, 12
Bateman v. Mnemonics, Inc.,
79 F.3d 1532 (11th Cir. 1996) .................................................................................................35
BellSouth Advert. & Publ’g Corp. v. Donnelley Info. Publ’g, Inc,
999 F.2d 1436 (11th Cir. 1993) ...............................................................................................34
*Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC,
803 F.3d 1032 (9th Cir. 2015) .................................................................................................33
*Bill Graham Archives v. Dorling Kindersley Ltd.,
448 F.3d 605 (2d Cir. 2006).....................................................................................................38

iv

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TABLE OF AUTHORITIES
(Continued)
Page(s)
Blanch v. Koons,
467 F.3d 244 (2d Cir. 2006)...............................................................................................45, 46
Bond v. Blum,
317 F.3d 385 (4th Cir. 2003) ...................................................................................................37
*Building Officials & Code Administrators v. Code Technology, Inc.,
628 F.2d 730 (1st Cir. 1980) ....................................................................................................16
*Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) ......................................................................................................... passim
Cartoon Network LP v. CSC Holdings, Inc.,
536 F.3d 121 (2d Cir. 2008)...............................................................................................51, 52
CCC Information Services Inc. v. McLean Hunter Market Reports, Inc.,
44 F.3d 61 (2d Cir. 1994) ..................................................................................................19, 20
Celotex Corp. v. Catrett,
477 U.S. 317 (1986) .................................................................................................................10
Computer Assocs. Int’l, Inc. v. Altai, Inc.,
982 F.2d 693 (2d Cir. 1992).....................................................................................................34
Concrete Mach. Co. v. Classic Lawn Ornaments, Inc.,
843 F.2d 600 (1st Cir. 1988) ....................................................................................................18
Connecticut v. Massachusetts,
282 U.S. 660 (1931) .................................................................................................................57
*Consumers Union of U.S., Inc. v. Gen. Signal Corp.,
724 F.2d 1044 (2d Cir. 1983).......................................................................................42, 43, 46
Costar Grp. Inc. v. Loopnet, Inc.,
164 F. Supp. 2d 688 (D. Md. 2001) aff’d, 373 F.3d 544 (4th Cir. 2004) ................................53
*eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388 (2006) .....................................................................................................55, 57, 58
*Feist Publ’ns, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340 (1991) .................................................................................................................32
Field v. Google Inc.,
412 F. Supp. 2d 1106 (D. Nev. 2006) ......................................................................................46
v

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TABLE OF AUTHORITIES
(Continued)
Page(s)
Fox News Network, LLC v. TVEyes, Inc.,
43 F. Supp. 3d 379, 395 (S.D.N.Y. 2014)................................................................................44
Fox v. Washington,
236 U.S. 273 (1915) .................................................................................................................15
Garcia v. Google, Inc.,
786 F.3d 733 (9th Cir. 2015) (en banc) ...................................................................................49
Globe Newspaper Co. v. Superior Court for Norfolk Cty.,
457 U.S. 596 (1982) .................................................................................................................14
Golan v. Holder,
132 S. Ct. 873 (2012) ...............................................................................................................13
Grayned v. City of Rockford,
408 U.S. 104 (1972) .................................................................................................................15
Greene v. Dalton,
164 F.3d 671 (D.C. Cir. 1999) .....................................................................................10, 26, 28
Harding v. Gray,
9 F.3d 150 (D.C. Cir. 1993) .....................................................................................................10
Harper & Row Publ’rs., Inc. v. Nation Enters.,
471 U.S. 539 (1985) .................................................................................................................42
Healthcare Advocates Inc. v. Harding, Earley, Follmer & Frailey,
497 F. Supp. 2d 627 (E.D. Pa. 2007) .......................................................................................37
*Howell v. Miller,
91 F. 129 (6th Cir. 1898) (Harlan, J.) ......................................................................................12
Katz v. Google Inc.,
802 F.3d 1178 (11th Cir. 2015) .........................................................................................45, 49
*Kern River Gas Transmission Co. v. Coastal Corp.,
899 F.2d 1458 (5th Cir. 1990), cert. denied, 498 U.S. 952 (1990) ....................................18, 19
Lenz v. Universal Music Corp,
801 F.3d 1126 (9th Cir. 2015) .................................................................................................35
*Lexmark Int’l, Inc. v. Static Control Components, Inc.,
387 F.3d 522 (6th Cir. 2004) .................................................................................34, 37, 38, 43
vi

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TABLE OF AUTHORITIES
(Continued)
Page(s)
Mattel, Inc. v. Walking Mountain Prods.,
353 F.3d 792 (9th Cir. 2003) ...................................................................................................46
*Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,
545 U.S. 913 (2005) ...............................................................................................49, 50, 52, 53
Mills v. Alabama,
384 U.S. 214 (1966) .................................................................................................................14
Musser v. Utah,
333 U.S. 95 (1948) ...................................................................................................................14
Newborn v. Yahoo!, Inc.,
391 F. Supp. 2d 181 (D.D.C. 2005) ...................................................................................49, 54
Newport-Mesa Unified Sch. Dist. v. California Dep’t of Educ.,
371 F. Supp. 2d 1170 (C.D. Cal. 2005) ...................................................................................41
Nieman v. VersusLaw, Inc.,
512 Fed. App’x. 635, 2013 WL 1150277 (7th Cir. Mar. 19, 2013).........................................14
Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc.,
166 F.3d 65 (2d Cir. 1999).......................................................................................................32
Nuñez v. Caribbean Int’l News Corp.,
235 F.3d 18 (1st Cir. 2000) ................................................................................................44, 47
Nuzzo v. FBI,
No. 95–cv–1708, 1996 WL 741587 (D.D.C. Oct. 8, 1996) .....................................................11
O’Shea v. Littleton,
414 U.S. 488 (1974) .................................................................................................................55
*Online Policy Grp. v. Diebold, Inc.,
337 F. Supp. 2d 1195 (N.D. Cal. 2004) .................................................................38, 45, 47, 48
*Perfect 10, Inc. v. Amazon.com, Inc.,
508 F.3d 1146 (9th Cir. 2007) ......................................................................................... passim
Practice Management Information Corp. v. American Medical Ass’n,
121 F.3d 516 (9th Cir. 1997) .......................................................................................19, 20, 21
Pub. Warehousing Co. K.S.C. v. Def. Supply Ctr. Phila.,
489 F. Supp. 2d 30 (D.D.C. 2007) ...........................................................................................55
vii

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TABLE OF AUTHORITIES
(Continued)
Page(s)
R.W. Beck v. E3 Consulting,
577 F.3d 1133 (10th Cir. 2009) ...............................................................................................13
Rains v. Cascade Indus., Inc.,
402 F.2d 241 (3d Cir. 1968).....................................................................................................11
Religious Tech. Ctr. v. Netcom On-Line Commc’n Servs., Inc.,
907 F. Supp. 1361 (N.D. Cal. 1995) ........................................................................................53
Righthaven, LCC v. Jama,
No. 2:10-CV-1322, 2011 WL 1541613 (D. Nev. Apr. 22, 2011) ................................46, 48, 49
Silvers v. Sony Pictures Entm’t, Inc.,
402 F.3d 881 (9th Cir. 2005) .............................................................................................13, 43
*Sony Corp. of Am. v. Universal City Studios, Inc.,
464 U.S. 417 (1984) ......................................................................................................... passim
Sturdza v. United Arab Emirates,
281 F.3d 1287 (D.C. Cir. 2002) ...............................................................................................32
Subafilms, Ltd. v. MGM-Pathe Commc’ns Co.,
24 F.3d 1088 (9th Cir. 1994) ...................................................................................................50
Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P.,
756 F.3d 73 (2d Cir. 2014).................................................................................................41, 43
U.S. v Jefferson County,
380 F. 2d 385 (5th Cir. 1967) ..................................................................................................26
United States v. Aina–Marshall,
336 F.3d 167 (2d Cir. 2003).....................................................................................................54
*United States v. Myers,
553 F.3d 328 (4th Cir. 2009) ...................................................................................................17
*Veeck v. S. Bldg. Code Cong. Int’l, Inc.,
293 F.3d 791 (5th Cir. 2002) (en banc) ........................................................................... passim
Viacom Int’l Inc. v. YouTube, Inc.,
940 F. Supp. 2d 110 (S.D.N.Y. 2013)......................................................................................54
*Wheaton v. Peters,
33 U.S. (8 Pet.) 591 (1834) ......................................................................................................11
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TABLE OF AUTHORITIES
(Continued)
Page(s)
Winter v. Nat. Res. Def. Council, Inc.,
555 U.S. 7 (2008) .....................................................................................................................58
REGULATIONS
1 C.F.R. part 51 ..............................................................................................................................17
*1 C.F.R. § 51.1, et seq. ...........................................................................................................17, 48
34 C.F.R. Part 668, Subpart F ..........................................................................................................8
34 C.F.R. § 668.141 .......................................................................................................................58
*34 C.F.R. § 668.146 .............................................................................................5, 6, 7, 11, 16, 58
34 C.F.R. § 668.148 .........................................................................................................................7
50 Fed. Reg. 40895 ........................................................................................................................20
50 Fed. Reg. 40897 ........................................................................................................................20
75 Fed. Reg. 66923 ..........................................................................................................................7
78 Fed. Reg. 17598 ........................................................................................................................16
FEDERAL STATUTES AND MATERIALS
*5 U.S.C. § 552 ....................................................................................................................5, 17, 19
*17 U.S.C. § 101 (Copyright Act of 1976) ............................................................................ passim
*17 U.S.C. § 102(b) (Copyright Act, Section 102(b)) ........................................................... passim
17 U.S.C. § 105 (Copyright Act, Section 105) ..............................................................................13
*17 U.S.C. § 106 (Copyright Act, Section 106) ................................................................35, 51, 52
*17 U.S.C. § 107 ..........................................................................................................35, 38, 39, 46
17 U.S.C. § 201(a) .........................................................................................................................31
H.R. Rep. No. 94–1476 (1976), 1976 U.S.C.C.A.N. 5659 ............................................................40
*U.S. Const. art. I § 8, cl. 8..................................................................................................2, 18, 49

ix

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TABLE OF AUTHORITIES
(Continued)
Page(s)
RULES
Fed. R. Civ. P. 30(b)(6)........................................................................................................4, 29, 30
Fed. R. Civ. P. 56(c) ......................................................................................................................10
STATE LAW
Md. Admin. Rule 09.12.26.04 .......................................................................................................17
Md. Admin. Rule 09.12.26.06 .................................................................................................11, 17
Minn. Admin. Rule 4761.2460, Subp. 2(C).............................................................................11, 17
N.Y. Comp. Codes R. & Regs. tit. 11, § 216.7 ..............................................................................20
OTHER AUTHORITIES
1 Goldstein on Copyright § 2.49 n.45.2 ...................................................................................16, 19
1 Goldstein on Copyright § 2.5.2, at 2:51 ......................................................................................27
4 Nimmer on Copyright § 13.03[B][3] ....................................................................................19, 34
4 Nimmer on Copyright § 14.06[C][1][a]......................................................................................32
Ashley, Kevin D. & Stefanie Brüninghaus, Computer Models for
Legal Prediction.......................................................................................................................39
Code of the District of Columbia, http://dccode.org/simple/ .........................................................39
D.C. Municipal Regulations and D.C. Register, http://www.dcregs.dc.gov/ ................................39
Kasunic, Robert, Is that All There Is? Reflections on the Nature of the
Second Fair Use Factor, 31 Colum. J.L. & Arts 529 (2008) ..................................................43
Lastres, Steven A., Rebooting Legal Research in a Digital Age, LLRX
(Aug. 10, 2013), https://www.llrx.com/files/rebootinglegalresearch.pdf ................................40
*Leval, Pierre N., Toward A Fair Use Standard,
103 Harv. L. Rev. 1105 (1990) ..........................................................................................38, 39
Li, William, et al., Law Is Code: A Software Engineering Approach to Analyzing
the United States Code, 10 J. Bus. & Tech. L. 297 (2015) ......................................................39

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TABLE OF AUTHORITIES
(Continued)
Page(s)
*Samuelson, Pamela, Questioning Copyrights in Standards,
48 B.C. L. Rev 193 (2007) .......................................................................................................27
Smith, Thomas A., The Web of Law, 44 San Diego L. Rev. 309 (2007) .......................................39
*Strauss, Peter L., Private Standards Organizations and Public Law 16
(Columbia Pub. Law Research, Paper No. 13-334, 2013),
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2194210 ................................................22
U.S. Copyright Office, Compendium of Copyright Office Practices
§ 313.6(c)(2) (3d ed. 2014) ......................................................................................................12

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INTRODUCTION
Public Resource deserves summary judgment in its favor on multiple independent but
related grounds. The core issue here is simple: the 1999 Standards for Educational and
Psychological Testing have been incorporated into law. They have become enforceable as law,
and the public has a fundamental due process right to access, disseminate, and comment on them
(including by annotations) at will. For more than 200 years, our courts and legislatures have
recognized that it would be profoundly unjust to allow any person to claim a monopoly property
right in the law, whether that law takes the form of legal opinions, statutes, or regulations. No
matter who holds the pen, as a matter of law and policy in our democratic system, the citizens are
the true authors and owners of the law.
In the closely analogous case of Veeck v. Southern Building Code Congress
International, the Fifth Circuit Court of Appeals confirmed that this fundamental principle does
not change just because our government has chosen to outsource the crafting of some regulations
to private organizations and then incorporate those regulations by reference into law. Once
incorporated, those rules are binding law. For example, under the Higher Education Act, states
must comply with Department of Education rules that include the 1999 Standards or risk losing
federal funds for education. As a result, millions of parents and students are affected by the
legally binding standards, and they may wish to review, share, and comment on them. Journalists
and education advocates share the same interest.
To be clear, this case does not concern Public Resource’s right to speak or share
standards as private standards. It concerns the public’s right to speak, share, and comment upon
the law. Public Resource does not post standards that have not been incorporated into law, such
as the 2014 edition of the Standards for Educational and Psychological Testing. The sole
document at issue in this case, the 1999 Standards, is current law but obsolete as a standard.
1

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Indeed, Plaintiffs stopped distributing the 1999 Standards altogether for almost a year, resuming
sales only for purposes of this case, and subject to a variety of practical barriers.
Plaintiffs’ copyright claim—which they claim includes the right to shut down most public
access altogether—is fundamentally incompatible with the purposes of copyright and with the
public’s practical and constitutional interest in knowing the law that governs important aspects of
their daily lives. Moreover, the law, as a public fact, system, process, and procedure, is excluded
from the statutory monopoly under traditional copyright law doctrines. No one may claim a
“right to exclude” others from using the law, and the Court should grant summary judgment to
Public Resource on this ground alone.
But that issue is only the first flaw in Plaintiffs’ case. The Plaintiffs’ claims also fail, in
whole or in part, for several other reasons: (1) even apart from their status as law, the 1999
Standards are largely systems, processes, and procedures, which the Copyright Act specifically
excludes from copyright protection; (2) Public Resource’s posting of the 1999 Standards is a
lawful fair use; and (3) Plaintiffs have not established, and cannot establish conclusively, direct
infringement by any third parties, which is a precondition for summary judgment on their
contributory infringement claim.1
As the Court may surmise, the flaws in Plaintiffs’ case share a common theme. Plaintiffs
wish to stretch copyright law beyond its statutory borders and distort the very purposes of
copyright law. Copyright is intended “to promote the Progress of Science and useful Arts,” by
encouraging creative expression, to the benefit of the public. See U.S. Const. art. I § 8, cl. 8.
Copyright incentives are neither needed nor appropriate to encourage lawmaking or
standardization of industry practices. Those who write the laws—whether elected or unelected
1

Public Resource also disputes Plaintiffs’ claim of ownership of the 1999 Standards but does not
seek summary judgment on that issue at this time.
2

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(like lobbyists)—do not need and should not have control over others’ access to the law, whether
to exercise raw political power or extract lucre.
Public Resource respectfully urges the Court to recognize the limits of copyright, and to
protect due process, by granting summary judgment to Public Resource.
FACTUAL BACKGROUND
Public Resource posts many forms of law on its website. This includes statutes,
regulations, and standards that have been incorporated by reference into law.
A.

Public Resource Is A Non-Profit Committed to Educating the Public About
the Law.

Public.Resource.org is a non-profit corporation whose mission is to maintain public
works projects on the Internet, including the dissemination of statutes, regulations, and other
material that constitutes the law. (Public Resource’s Statement of Material Facts (“SMF”)
¶¶ 1-2.) Public Resource maintains an archive of laws and other government authored materials
on several domains under the public.resource.org website. (Id. ¶ 3.) Public Resource has made
judicial opinions, Internal Revenue Service records, patent filings, and safety regulations
accessible on the Internet. (Id. ¶ 4). It does not charge for access to this archive or accept
donations or gifts that are tied to the posting of specific standards or groups of standards.
(Id. ¶ 5–6.) Its operating income is not based on the amount of traffic its websites receive.
(Id. ¶ 7.)
B.

Volunteers from Many Sectors Authored the Plaintiffs’ 1999 Standards, But
Plaintiffs Claim Copyright Ownership Because of Their Facilitating Role.

The 1999 Standards that Plaintiffs published were developed by unpaid volunteers.
(SMF ¶ 8.) Plaintiffs highlight the work of the 17 volunteer Joint Committee members who
helped develop the 1999 Standards, but these are just a subset of all contributors to the 1999
Standards. Hundreds of individuals, organizations, and government entities provided proposed
3

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text and comments for 1999 Standards. (Id. ¶ 9.) The volunteers draft the standards to achieve a
consensus of best practices in the areas covered by the 1999 Standards. (Id. ¶ 10.)
In December 1999, one of the Plaintiffs, AERA, sought and obtained a copyright
registration claiming to be the sole author of the 1999 Standards. (Id. ¶ 11.) Fourteen years later,
in February 2014, Plaintiffs obtained a supplemental copyright registration that listed all the
Plaintiff organizations as authors and copyright owners of the 1999 Standards, ostensibly “to
correct an error in the listing of copyright ownership in the prior registration.” (Id. ¶ 12.) Yet in
February 2014, at the time of that corrective filing, Plaintiffs did not have any copyright
assignments from the persons who actually authored the 1999 Standards. (Id. ¶ 13.) It was not
until April 2014 and throughout the rest of that year that Plaintiffs began to obtain certain forms2
from some of these individuals. (Id.) Plaintiffs now claim to be “joint owners” of the standards.
(Plaintiffs’ Memorandum of Points and Authorities, ECF 60-1 (“Pls. Mem.”) at 12.) Plaintiffs’
staffs provide facilitative and administrative functions, but they do not author the standards or
control the final content. (SMF ¶ 17.) Plaintiffs have not sought or obtained assignments from
the many hundreds of individuals and organizations that participated in the development of the
1999 Standards. (Id. ¶ 18.). Nor have Plaintiffs done anything to ensure that the alleged assignors
had authority to assign copyrights to the Plaintiffs. (Id. ¶ 19.)

2

In their motion, Plaintiffs refer to these as “work made-for-hire letters,” as well as “posthumous
assignments” from alleged heirs. The description of them “work made-for-hire letters” is
inconsistent with AERA’s Rule 30(b)(6) representative’s characterization of them as
“assignments” at deposition. The documents were signed a decade and a half after the fact, and
Plaintiffs did not compensate the people who developed the 1999 Standards for their work. (SMF
¶ 14.) The “posthumous assignments” were also made without any consideration having been
delivered to the alleged heirs who signed them. (Id. ¶ 15.) There is a genuine dispute regarding
whether these are valid copyright assignments.
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C.

The Federal Government Has Incorporated by Reference the 1999 Standards
Into Law.

The federal government has incorporated by reference the 1999 Standards into law at
34 C.F.R. § 668.146. (Id. ¶ 20; Pls. Mem. 13.) Plaintiffs have actively encouraged—and indeed
lobbied—the government to adopt the 1999 Standards as law. (SMF ¶ 52–56.)
The federal government incorporates standards into law following a rigorous notice and
comment period. Generally, an agency responsible for regulating an industry will publish a
notice in the Federal Register concerning the agency’s intent to incorporate a standard into law
and will ask the public to submit comments. (Id. ¶ 22–24.)
At the end of the notice and comment process, the agency will determine whether to
incorporate the standard by reference. (Id. ¶ 24.) If the agency incorporates the standard by
reference, the Director of the Federal Register then approves the incorporation by reference.
5 U.S.C. § 552(a). The federal government expressly encourages agencies to incorporate
standards by reference, as opposed to reprinting the entire text of the standards, to limit the
length of the Code of Federal Regulations. (Id. ¶ 26.) The standard then becomes the law of the
United States. Standards are also incorporated by reference into state and local laws (Id. ¶ 21.)
Plaintiffs benefit from the incorporation of their standards into law. (Id. ¶ 30.) When a
standard is incorporated by reference into the Code of Federal Regulations, the code itself
informs readers that they may obtain a copy of the standards from the Office of the Federal
Register (“OFR”) or from the SDO that published the standard. E.g., 34 C.F.R. § 668.146. The
OFR directs people who want to read incorporated standards to “contact the standards
organization that developed the material.” (Id. ¶ 27.) Alternatively, one may submit a written
request to the OFR to inspect (and make limited photocopies of) an incorporated standard at an
office in Washington, D.C. (Id.)

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The Higher Education Act requires states to comply with the 1999 Standards in
developing and administering a variety of tests in order to receive federal aid. (Id. ¶ 33.) Federal
aid to students under the Department of Education’s Title IV program totals some $150 billion
annually3, and for-profit colleges in 2009 were taking in as much as $32 billion of that amount.4
(Id.)
One specific example of the effect of the 1999 Standards’ incorporation into law is their
role in the so-called “ability to benefit” (ATB) program. This program allows access to federal
aid for students who lack a high school diploma or a GED certificate if they either (1) complete
at least 6 credit hours in a post-secondary school; or (2) pass an independently administered
Department of Education approved ability to benefit test.5 (Id. ¶ 34.) In a 2009 report, the U.S.
Government Accountability Office raised concerns that some for-profit colleges were helping
students cheat on the ability to benefit test or falsifying test results.6 (Id.)
The Department of Educations responded by issuing new regulations for ATB tests,
codified at 34 C.F.R. 668.146, with specific requirements to enhance the quality and integrity of
the tests. (Id. ¶ 35.) To be approved by the Secretary of Education, an ATB test must “Meet all
standards for test construction provided in the 1999 edition of the Standards for Educational and
3

Title IV programs include Federal Perkins Loans, Direct Loans (including Stafford and PLUS
loans), Pell Grants, and Federal Work Study, representing the majority of federal student aid.
http://federalstudentaid.ed.gov/site/front2back/programs/programs/fb_03_01_0030.htm.
4

See Senate Health Education Labor & Pensions Committee report, For Profit Higher Education:
The Failure to Safeguard the Federal Investment and Ensure Student Success
http://www.help.senate.gov/imo/media/for_profit_report/Contents.pdf.

5

Congress abolished the ability to benefit program in 2012 but restored it in 2014. See
Department of Education letter, DCL ID: GEN-15-09, “Title IV Eligibility for Students Without
a Valid High School Diploma Who Are Enrolled in Eligible Career Pathway Programs,”
https://ifap.ed.gov/dpcletters/GEN1509.html.
6

GAO, PROPRIETARY SCHOOLS: Stronger Department of Education Oversight Needed to
Help Ensure Only Eligible Students Receive Federal Student Aid, August 2009.
http://www.gao.gov/new.items/d09600.pdf.
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Psychological Testing,” i.e. the 1999 Standards.7 (Id.) The Department made one specific change
to its final version of the 2010 Rule, codified at § 668.146(b)(6), in response to a comment
pointing out that the Department’s proposed rule used outdated language present in the 1985
AERA Standards, but revised in the 1999 Standards.8 (Id. ¶ 36.) Thus, Department officials
deliberately shaped the regulation to harmonize its printed provisions with those provisions that
were incorporated by reference, i.e. the 1999 Standards. (Id.)
A wide range of parties might want access to the 1999 Standards in order to determine
whether a given ATB test was in compliance with those regulation. These parties include:
Test publishers in the business of devising ATB tests, and states devising ATB tests
for students in their state—both wanting to ensure their products are compliant with
the law;
Federal and state law enforcement and education oversight agencies, seeking to
ensure the integrity of higher education programs;
Students, and potentially lawyers for students, assessing whether a test was compliant
in order to contest denial of ATB benefits or, alternatively, to seek loan forgiveness
on the grounds that the school acted improperly;
Journalists and advocacy organizations evaluating the quality and integrity of higher
education programs in which federal money—and student futures—are invested; and
Schools, whether large and small; for-profit, non-profit, or state; seeking to ensure
that the tests they use comply with federal ATB rules in order to receive aid and to
7

34 C.F.R. § 668.146(b)(6). The 1999 Standards are referenced again with respect to tests
conducted in foreign languages for non-native speakers of English, 34 C.F.R.
§ 668.148(a)(1)(iv), for test modifications to accommodate students with disabilities, 34 C.F.R.
§ 668.148(a)(2)(i), and for specific requirements for computer-based tests.
34 C.F.R. § 668.148(a)(3)(i)
8

75 F.R. 66923
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avoid potential liability. The Department of Education also can cut off Title IV
money and impose civil fines if it concludes that a college has made “a substantial
misrepresentation about the nature of its educational program, its financial charges, or
the employability of its graduates.” 34 C.F.R. Part 668, Subpart F. Thus, if a school
represented the test it used as compliant with the 1999 Standards, but in fact it was
not, it could face serious penalties.
Public Resource’s work makes this incorporated law accessible to all of these affected citizens.
D.

Public Resource Began Making Standards Incorporated by Reference Freely
Available Online In Accessible Formats.

Beginning in 2008, Public Resource began posting state safety regulations and statutes
online, including portions of the incorporated standards in this case. (Id. ¶ 37.) Public Resource
purchased paper copies of the codes and scanned them into PDF files. (Id.) Public Resource then
applied metadata and optical character recognition (“OCR”) to the PDF files. (Id.) Public
Resource also placed a cover sheet on each document to make it clear that Public Resource was
posting the document because it had been incorporated by reference into law. (Id.) Public
Resource improved this process over time and began posting some of the standards in HTML
format, which included converting formulas and graphics into appropriate formats. (Id.)
In 2012, Public Resource began to post on its website copies of standards incorporated by
reference into law. Public Resource began by purchasing paper copies of 73 standards, copying
them and placing a cover sheet and notice of incorporation on each one, and sending the copies
and additional material to government officials and ten standards organizations. (Id. ¶ 38.) Then
Public Resource president Carl Malamud began searching for copies of additional incorporated
standards, many of which were not available from the standards organizations, often because the

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version incorporated into law had been superseded by a later version of the standard. (Id. ¶ 38.)
Public Resource makes the standards it posts freely available on its website. (Id. ¶ 5.)
E.

Plaintiffs Removed the 1999 Standards From Sale and Are Unaffected By the
Availability of the Incorporated Standards Appearing Freely On Public
Resource’s Website.

In May 2014, Plaintiffs sued Public Resource for posting on its website and the Internet
Archive website the 1999 Standards. (Compl. ECF No. 1.) Subsequently, so as to ensure a full
record, in June 2014 Public Resource agreed to take down the versions of the 1999 Standards
that it had posted on its website and on the Internet Archive website, pending the resolution of
this case. (SMF ¶ 39.) Shortly thereafter, in August 2014, Plaintiffs published the new 2014
edition of the Standards for Educational and Psychological Testing (“the 2014 Standards”), and
then subsequently removed the 1999 Standards from sale. (SMF ¶ 40.) This is in keeping with
Plaintiffs’ past practice of taking prior editions of the Standards off sale once the new edition is
published. (SMF ¶ 41–42.) Plaintiffs only put the 1999 Standards on sale once more in July 2015
after the issue was brought to their attention at deposition in April and May of that year. (SMF
¶ 43.)

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Plaintiffs included an unsealed complete version of the 1999 Standards in their Motion
for Summary Judgment filing (ECF No. 60-25–26; SMF ¶ 48), which is now available for
download to the public for a $6 fee, and may also be available on RECAP (a service that
provides PACER documents for free) now or in the future. (SMF ¶ 49.) Other than this, Plaintiffs
have never made an electronic version of the 1999 Standards available to the public, nor do they
plan to, and they have not published any other versions of the 1999 Standards that would be
accessible to people who are blind or visually disabled. (SMF ¶ 50.)
ARGUMENT
I.

SUMMARY JUDGMENT STANDARD
A court must grant summary judgment if it determines that “there is no genuine issue as

to any material fact and that the moving party is entitled to judgment on the undisputed facts as a
matter of law.” Fed. R. Civ. P. 56(c). See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986). A movant has the burden to make an initial showing of the absence of any genuine issues
of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). If that burden is met, the
movant is entitled to a judgment as a matter of law if the non-moving party “fails to make a
showing sufficient to establish the existence of an element essential to that party’s case, and on
which that party will bear the burden of proof at trial.” Celotex, 477 U.S. at 322. That showing
may not rely solely on allegations or conclusory statements. Greene v. Dalton, 164 F.3d 671, 675
(D.C. Cir. 1999); Harding v. Gray, 9 F.3d 150, 154 (D.C. Cir. 1993). Instead, the nonmoving
party must present specific facts that would enable a reasonable jury to find in its favor. Greene,
164 F.3d at 675. If the evidence “is merely colorable, or is not significantly probative, summary
judgment may be granted.” Anderson, 477 U.S. at 249–50 (internal citations omitted).

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Where, as here, parties file cross-motions for summary judgment, each must carry its own
burden under the applicable legal standard. See Rains v. Cascade Indus., Inc., 402 F.2d 241, 245
(3d Cir. 1968); Nuzzo v. FBI, No. 95–cv–1708, 1996 WL 741587, at *1 (D.D.C. Oct. 8, 1996).
II.

PLAINTIFFS CANNOT HOLD A STATUTORY MONOPOLY OVER THE LAW.
No copyright exists in the law itself. This is true for the United States Code and the Code

of Federal Regulations. It is true for every state’s codes and for local ordinances. It is equally
true where the law was drafted by volunteers and then made into law by a legislature or agency.
In this case, the 1999 Standards have become law through incorporation by reference into
various federal and state regulations. See, e.g., 34 C.F.R. § 668.146(b)(6); Md. Admin. Rule
09.12.26.06(E)(1)(c)(i); Minn. Admin. Rule 4761.2460, Subp. 2(C). As a result, they are outside
the copyright statutory monopoly.
A.

The Law Is Not Subject to Copyright.
1.

An unbroken line of case law holds that the law is excluded from
copyright, and the Copyright Office recognizes that exclusion.

For nearly two centuries it has been a fundamental principle of American jurisprudence
that the texts that make up the law are in the public domain and cannot be under private control.
Indeed, the Supreme Court’s first copyright decision, Wheaton v. Peters, 33 U.S. (8 Pet.) 591
(1834) established this principle. In that case, one of the Court’s own official reporters claimed
copyright in his annotated collections of the Court’s opinions. The Court declared that it was
“unanimously of opinion that no reporter has or can have any copyright in the written opinions
delivered by this Court.” Id. at 668. Similarly, in Banks v. Manchester, 128 U.S. 244 (1888), the
Court rejected a copyright claim by a court reporter for a collection of the opinions of the Ohio
Supreme Court. “The whole work done by the judges constitutes the authentic exposition and
interpretation of the law, which, binding every citizen, is free for publication to all, whether it is

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a declaration of unwritten law, or an interpretation of a constitution or a statute.” Id. at 253. In
1898, the Sixth Circuit observed that “any person desiring to publish the statutes of a state may
use any copy of such statutes to be found in any printed book, whether such book be the property
of the state or the property of an individual.” Howell v. Miller, 91 F. 129, 137 (6th Cir. 1898)
(Harlan, J.).
Decisions such as Banks “represent[] a continuous understanding that ‘the law,’ whether
articulated in judicial opinions or legislative acts or ordinances, is in the public domain and thus
not amenable to copyright.” Veeck v. S. Bldg. Code Cong. Int’l, Inc., 293 F.3d 791, 796 (5th Cir.
2002) (en banc). The U.S. Copyright Office has expanded on this fundamental principle with
respect to all forms of law from all sources, not merely U.S. Government works:
As a matter of longstanding public policy, the U.S. Copyright Office will not
register a government edict that has been issued by any state, local, or territorial
government, including legislative enactments, judicial decisions, administrative
rulings, public ordinances, or similar types of official legal materials. Likewise,
the Office will not register a government edict issued by any foreign government.
U.S. Copyright Office, Compendium of Copyright Office Practices § 313.6(c)(2) (3d ed. 2014)
(emphasis added).
2.

The Plain Text of the Copyright Act Reinforces this Understanding.

The exclusion of the law from the copyright statutory monopoly long predates the 1976
Copyright Act, but the Act reinforces the principle in two ways. Section 102(b) of the Copyright
Act, 17 U.S.C. § 102(b), precludes copyright for “any idea, procedure, process, system, method
of operation, concept, principle, or discovery, regardless of the form in which it is described,
explained, illustrated, or embodied in such work.” Law is a “system of rules that a particular
country or community recognizes as regulating the actions of its members and may enforce by

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the imposition of penalties.”9 As a system, the law itself and particular laws are excluded from
copyright pursuant to the terms of the Copyright Act itself.
Section 102(b) helps ensure that “courts do not unwittingly grant protection to an idea by
granting exclusive rights in the only, or one of only a few, means of expressing that idea.”
R.W. Beck v. E3 Consulting, 577 F.3d 1133, 1145 (10th Cir. 2009) (citation omitted). The only
way to express codified laws, or law that is incorporated by reference from other sources, is to
use the language of the law itself. Once incorporated in to law, standards become “the unique,
unalterable expression of the ‘idea’ that constitutes local law.” Veeck, 293 F.3d at 801. Under
Section 102(b), they cannot be subject to copyright restrictions.
Moreover, section 105 of the Copyright Act, 17 U.S.C. § 105, denies copyright for any
work of the U.S. Government. When Congress enacts a bill that was drafted by a private
lobbyist, the resulting law is still a U.S. government work. So too for a regulation enacted by an
agency by incorporating by reference a pre-existing standard.
3.

A Statutory Monopoly In the Law Would Conflict with Fundamental
Constitutional Protections.

In Golan v. Holder, 132 S. Ct. 873, 890 (2012), the Supreme Court recognized the
potential tension between the First Amendment and copyright, and it identified the exclusion of
ideas, which Section 102(b) codifies, as essential to balancing copyright and free speech
protections. Id. at 889–91. Copyright, while authorized by the Constitution, is a statutory right.
Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881, 883–84 (9th Cir. 2005). It cannot trump
fundamental constitutional rights.

9

See “Law,” Oxford English Dictionary, https://www.oxforddictionaries.com/us/definition
/american_english/law.
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Section 102(b) plays that vital balancing role with respect to the law. Communication
about the law is a core speech interest. See, e.g., Nieman v. VersusLaw, Inc., 512 Fed. App’x.
635, 2013 WL 1150277, at *2 (7th Cir. Mar. 19, 2013). As the Supreme Court noted in striking
down a statute that would close criminal trials, “‘a major purpose of [the First] Amendment was
to protect the free discussion of governmental affairs.’ [This] serves to ensure that the individual
citizen can effectively participate in and contribute to our republican system of selfgovernment.” Globe Newspaper Co. v. Superior Court for Norfolk Cty., 457 U.S. 596, 604
(1982) (quoting Mills v. Alabama, 384 U.S. 214, 218 (1966)).
Accordingly, copyright restrictions on communicating the law could put the Copyright
Act in conflict with the First Amendment. Section 102(b)’s exclusion of laws from
copyrightability helps resolve that conflict, ensuring that copyright does not interfere with the
public’s ability to access, share, and discuss the law.
Equal protection of the laws and due process are also jeopardized if some citizens can
afford convenient access to the laws that all are bound to obey (with potential penalties for noncompliance), but others cannot. As Thomas Paine observed, “Every man is a proprietor in
government, and considers it a necessary part of his business to understand . . . . The
government of a free country, properly speaking, is not in the persons, but in the laws.” Thomas
Paine, Rights of Man 39 (1791). A law that is vague “may run afoul of the Due Process Clause
because it fails to give adequate guidance to those who would be law-abiding, to advise
defendants of the nature of the offense with which they are charged, or to guide courts in trying
those who are accused.” Musser v. Utah, 333 U.S. 95, 97 (1948). Similarly, the Supreme Court
has stated:

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Vague laws offend several important values. First, because we assume that man is
free to steer between lawful and unlawful conduct, we insist that laws give the
person of ordinary intelligence a reasonable opportunity to know what is
prohibited, so that he may act accordingly. Vague laws may trap the innocent by
not providing fair warning.
Grayned v. City of Rockford, 408 U.S. 104, 108 (1972).
A law that a citizen cannot access is the vaguest of vague laws. Allowing any entity to
restrict access to the law would thwart the essential democratic requirement of notice. See Fox v.
Washington, 236 U.S. 273, 277 (1915) (courts should avoid construing statutes in ways that raise
constitutional concerns). The public must be able to review and understand the rules we live by,
so that they do not become traps for the unwary.
B.

Incorporated Standards Are Laws and Cannot be Subject to a Statutory
Monopoly.

The fundamental right to access and share the law does not disappear when the law in
question is a technical standard that has become law through incorporation by reference.
1.

The leading cases recognize that standards development organizations
cannot restrict access to the law.

As the Fifth Circuit concluded in Veeck, once a standard is incorporated into the law, the
people become the owner of that law. In that case, Peter Veeck, a Texas resident who hosted a
noncommercial website collecting information about north Texas, purchased and then posted
online model building codes that had been incorporated into the law of two Texas towns. 293
F.3d at 793. The private organization that initially developed the codes accused Veeck of
copyright infringement. Sitting en banc, the Fifth Circuit rejected the claim:
Lawmaking bodies in this country enact rules and regulations only with the
consent of the governed. The very process of lawmaking demands and
incorporates contributions by “the people,” in an infinite variety of individual and
organizational capacities. Even when a governmental body consciously decides to
enact proposed model building codes, it does so based on various legislative
considerations, the sum of which produce its version of “the law.” In performing

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their function, the lawmakers represent the public will, and the public are the final
“authors” of the law.
...
. . . [P]ublic ownership of the law means precisely that “the law” is in the “public
domain” for whatever use the citizens choose to make of it. Citizens may
reproduce copies of the law for many purposes, not only to guide their actions but
to influence future legislation, educate their neighborhood association, or simply
to amuse.
293 F.3d at 799.
The Fifth Circuit’s reasoning in Veeck echoes that of the First Circuit in Building
Officials & Code Administrators v. Code Technology, Inc., 628 F.2d 730 (1st Cir. 1980). In that
case, the First Circuit vacated a preliminary injunction obtained by the creator and copyright
holder of a model building code that Massachusetts had adopted into law. Id. at 731. The Court
remanded for further proceedings, observing:
The citizens are the authors of the law, and therefore its owners, regardless of who
actually drafts the provisions, because the law derives its authority from the
consent of the public, expressed through the democratic process.
. . . [C]itizens must have free access to the laws which govern them.
....
[I]t is hard to see how the public’s essential due process right of free access to the
law (including a necessary right freely to copy and circulate all or part of a given
law for various purposes), can be reconciled with the exclusivity afforded a
private copyright holder . . . .
Id. at 734, 736.
To be clear, “copyrighted works do not ‘become law’ merely because a statute refers to
them.” See Veeck, 293 F.3d at 805 (citing 1 Goldstein on Copyright § 2.49 n.45.2). In this case,
however, the material in question has not merely been cited by a government agency. Instead, it
has been expressly adopted as the law of the land through the incorporation by reference process,
as part of a set of regulations “for improving integrity” in education. 78 Fed. Reg. 17598; 34
C.F.R. § 668.146. The regulations state that “[i]ncorporation by reference of this document [the
1999 Standards] has been approved by the Director of the Office of the Federal Register pursuant

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to the Director’s authority under 5 U.S.C. 552(a) and 1 C.F.R. part 51.” Id. Because they are
incorporated by reference, the 1999 Standards are “deemed published in the Federal Register”
and have the same legal import as if they had been reproduced word for word there. 5 U.S.C.
§ 552(a).10
As the Office of the Federal Register has explained, material incorporated by reference,
“like any other properly issued rule, has the force and effect of law.” (SMF ¶ 31.); see also
United States v. Myers, 553 F.3d 328, 331 (4th Cir. 2009) (material incorporated by reference
has the same force of law as the incorporating regulation itself). The only reason the federal
government instead incorporates some regulations by reference instead of reproducing them
word for word is to limit the (already considerable) length of the Code of Federal Regulations.
(Id.) That goal, however laudable, cannot be read as a reason to grant a private entity ownership
and control over regulations that bind the public. As much as landmark health care acts or
Supreme Court civil rights decisions, the 1999 Standards are a legal mandate.

Like the plaintiffs in the ASTM v. Public.Resource.Org case, Plaintiffs here try to
distinguish Veeck by characterizing the incorporated standards at issue here as “extrinsic
standards,” rather than texts that have been adopted into law. (Pls. Mem. 38.) That distinction
does not hold because the standard at issue here has been adopted into law through the
incorporation process of 5 U.S.C. § 552 and 1 C.F.R. § 51.1 et seq. As with the building codes at

10

Likewise, several states have explicitly incorporated the 1999 Standards by reference into their
laws. In Maryland, the 1999 Standards are part of the state regulations that govern tests to license
crane operators. Md. Admin. Rule 09.12.26.04(A)–(B), 09.12.26.06(E)(1)(c)(i). In Minnesota,
they are part of the regulations for Health Department licensing of lead supervisors, lead
inspectors, and lead risk assessors. Minn. Admin. Rule 4761.2460.
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issue in Veeck, the 1999 Standards were subject to “wholesale adoption,” not mere “reference[s]”
Veeck, 293 F.3d at 804.
2.

Incorporated Standards, As Law, Are Also Uncopyrightable Facts,
Ideas, Principles, Systems, Processes, and Procedures.

As the Fifth Circuit noted in Veeck, once adopted into law, “codes are ‘facts’ under
copyright law. They are the unique, unalterable expression of the ‘idea’ that constitutes local
law.” 293 F.3d at 801. In other words, by virtue of government action the idea and the expression
have merged. And “[w]hen there is essentially only one way to express an idea, the idea and
expression are inseparable, and copyright is no bar to copying that expression.” Concrete Mach.
Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606 (1st Cir. 1988). The Fifth Circuit also
expressly rejected the notion that some laws might be “less factual” than others: “It should be
obvious that for copyright purposes, laws are ‘facts’: the U.S. Constitution is a fact; the Federal
Tax Code and its regulations are facts; the Texas Uniform Commercial Code is a fact. Surely, in
principle, the building codes of rural Texas hamlets are no less ‘facts’ than the products of more
august legislative or regulatory bodies.” Id.
The process of incorporation by reference is analogous to the process discussed in Kern
River Gas Transmission Co. v. Coastal Corp., 899 F.2d 1458 (5th Cir. 1990), cert. denied, 498
U.S. 952 (1990). There the plaintiff took a United States Geographical Survey topographical map
and added lines and mile markings where it proposed to locate a natural gas pipeline. The
Federal Energy Regulatory Commission expressly approved that route. The defendant then
copied that map to prepare a competing bid. The court concluded that “the idea of the location of
the pipeline and its expression embodied in [the map] are inseparable and not subject to
protection.” Id. at 1463–64. “To extend protection to the lines would be to grant Kern River a

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monopoly of the idea for locating a proposed pipeline in the chosen corridor, a foreclosure of
competition that Congress could not have intended to sanction through copyright law.” Id.
The merger doctrine exists “precisely to avoid such absurd results as conferring on the
first planner of a pipeline a ‘copyright’ over its proposed location in a given corridor . . . .”
4 Nimmer on Copyright § 13.03[B][3]. Merger helped avoid similarly absurd results in Veeck
(conferring the drafters of a code copyright over that law), and it does the same work here. As in
Kern, in this case, after the initial creation, government officials gave legal effect to the
Plaintiffs’ document. At the point of incorporation into law, the idea (the law) and the expression
(the 1999 Standards) became inseparable and therefore not subject to copyright.
3.

No court has ever found that government edicts are copyrightable.

Attempting to avoid the plain meaning of the Copyright Act, settled law, and the
Constitution, Plaintiffs invoke CCC Information Services Inc. v. McLean Hunter Market
Reports, Inc., 44 F.3d 61, 74 (2d Cir. 1994), and Practice Management Information Corp. v.
American Medical Ass’n, 121 F.3d 516 (9th Cir. 1997). (Pls. Mem. 39–40.) But those cases,
unlike Veeck, did not address whether government edicts could be copyrighted. Instead, as the
Veeck court and a leading treatise note, they ‘involved compilations of data that had received
governmental approval, not content that had been enacted into positive law’.” Veeck, 293 F.3d at
805, citing 1 Goldstein on Copyright § 2.49 n.45.2.
In CCC, for example, the defendant argued that the Red Book, a compilation of
automobile valuations, was not copyrightable because state regulations included it as one
possible metric for valuing cars. 44 F.3d at 73. The Red Book was neither a government edict
nor a set of rules; it was simply an approved reference. As noted, while mere reference to a
document in a regulation might not transform the document into a law, applying the procedure of
5 U.S.C. § 552 and its implementing regulations explicitly does. For example, while the
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Minnesota Health Department regulations state that “The [1999] APA standards are incorporated
by reference,” one of the regulations at issue in CCC merely said “[m]anuals approved for use
are . . . The Redbook. . . .,” without any mention of incorporation. N.Y. Comp. Codes R. & Regs.
tit. 11, § 216.7.
Practice Management also presented different circumstances. See Veeck, 293 F.3d at 804.
In that case, the American Medical Association (“AMA”) had created and copyrighted a list of
code numbers, the Physician’s Current Procedural Terminology (“CPT”), for physicians to report
their services. Practice Mgmt., 121 F.3d at 517. The AMA granted the federal Health Care
Financing Administration (“HCFA”) a non-exclusive, royalty-free license to use the CPT in
exchange for HFCA’s promise that it would not use any other set of code numbers. Id. at 517–
18. HCFA later created its own coding system for Medicare and Medicaid claims, the HCFA
common procedure coding system (“HCPCS”), that included the AMA code numbers but added
new information that HFCA developed. See Veeck, 293 F.3d at 805 (citing 50 Fed. Reg. 40895,
40897). Practice Management (“PMI”), a publisher of medical books, sought from the AMA a
discount to use the AMA’s code numbers (not the government’s HCPCS system). When the
AMA refused to provide the discount, PMI sought a declaratory judgment that the AMA’s
copyright was unenforceable. Practice Mgmt., 121 F.3d at 518. Under those facts, the Ninth
Circuit concluded that the AMA’s copyright in the CPT coding lists was, in theory, enforceable
against PMI. Id. at 520–21. (Nevertheless, the court ultimately refused to enforce the AMA’s
copyright, concluding that the AMA had abused its copyright by extracting HCFA’s agreement
not to adopt any coding system besides the CPT. Id. at 521.)
The factual, legal and policy issues here are distinct First, the plaintiff in Practice
Management was seeking to invalidate the copyright on the AMA coding lists only (the CPT),

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not the government’s own document (the HCPCS) and the two documents were not identical. As
the Fifth Circuit noted in Veeck:
[U]nlike Veeck, Practice Management Information Corporation, a commercial
publisher of medical textbooks, was not trying to publish its own version of the
HCPCS. Practice Management desired to sell a cheaper edition of the AMA’s
code, which was also used by insurance companies and had other nongovernmental uses. It is not clear how the Ninth Circuit would have decided the
case if Practice Management had published a copy of the HCPCS.
293 F.3d at 805 (emphasis added). In other words, what had become the law was quite different
from the original coding lists, and it appeared that the plaintiff was not interested in publishing
the law. In this case, by contrast, as in Veeck, Public Resource wishes to post online only what
has been expressly adopted as law.
Second, in contrast to the coding lists (tables with descriptions of medical procedures
matched to numbers) at issue in Practice Management, the 1999 Standards read and function as
rules. In Practice Management the medical codes were never themselves law, even if regulations
required persons to refer to the codes. Here, as with the text of the model building code in Veeck,
the incorporated standards are part of the law itself, imposing numerous specific requirements
and technical specifications.
Third, the concern expressed by the court in Practice Management, that depriving
privately created materials of copyright might undermine the economic incentive to create them,
121 F.3d at 518–19, cannot apply to the incorporated standards in this case. The 1999 Standards
have been superseded by the 2014 Standards and are therefore obsolete as an industry standard.
(SMF ¶ 40, 51.) Thus, its continuing value now is as law. Any economic incentive for creating

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them has run its course.11 As for future standards, as discussed below at pages 45–46, Plaintiffs
have ample incentives to continue their work.
C.

Plaintiffs Have Actively Encouraged Transformation of Their Standards Into
Law and Cannot Now Complain of a “Taking.”

Plaintiffs suggest that depriving them of a statutory monopoly in the law might qualify as
a taking and that the doctrine of constitutional avoidance counsels against it. (Pls. Mem. 28).
That argument fundamentally misconstrues that doctrine, which simply means that a statute
should be interpreted so as to avoid placing its constitutionality in doubt. Plaintiffs’ farfetched
public policy argument that they could be entitled to file “takings” claims against governments
that incorporated their standards into law, even if true, does not create a constitutional conflict. If
a taking occurred, Plaintiffs might be entitled to compensation from the government, but that
would not make the Copyright Act unconstitutional.
Even on its own terms, Plaintiffs’ takings argument fails. Plaintiffs admit that they have
never asked any government official to refrain from incorporating the 1999 Standard into
regulations and never protested after the fact—even after the Veeck decision put them on notice
that their copyrights were invalid as to standards incorporated into law. (Pls. Answer ¶¶ 72–74,
78–80 (ECF No. 14)). And they actively sought to have the 1999 Standards incorporated into
law. For example, Plaintiff AERA specifically urged federal regulators to hold off on a new set
of regulations until the 1999 Standards were completed. (SMF ¶ 52.).

11

Even if the documents were available for purchase, to charge for access to them would be
inappropriate “monopoly pricing of law, not copyright pricing to the market for voluntary
consensus standards.” Peter L. Strauss, Private Standards Organizations and Public Law 16
(Columbia Pub. Law Research, Paper No. 13-334, 2013),
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2194210.
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There is a good reason the Plaintiffs strive to have the standards they help develop
become law. Adoption gives the 1999 Standards “authoritative value.” (SMF ¶ 54.) Moreover if,
as Plaintiffs claim, their standards ensure the most “defensible” and “accurate” testing results,
regulations requiring compliance with a common standard support Plaintiffs’ respective missions
of advancing research, knowledge and effective “high-stakes” testing. (Pls. Mem. 3, 7.)

12

Plaintiffs now try to claim this letter was never sent—but their internal memo says otherwise.
(SMF ¶ 56.) Indeed, Ms. Ernesto’s statement in her declaration suggesting that it is “likely” the
letter was never sent is contradicted by this memo, written in 2002 and reflecting on activity by
APA’s lobbyists in 2001, as well as by her own statements.
(Id.)
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The government did not “take” the 1999 Standards. Plaintiffs gave them to the public
freely and deliberately, and with an eye to their own advantage.
D.

Public Policy Favors Promoting Public Access to the Law.

The principle that the law must be public and available to citizens to read and speak has
its roots in the concept of the rule of law itself. “The law must be accessible . . . the successful
conduct of trade, investment and business generally is promoted by a body of accessible legal
rules governing commercial rights and obligations.” See Thomas Henry Bingham, The Rule of
Law 37–38 (Penguin Press 2011). Citizens are expected to obey the law, but they cannot do so
effectively if they do not know it. “Citizens are subject only to the law, not to the arbitrary will
or judgment of another who wields coercive government power. This entails that the laws be
declared publicly in clear terms in advance.” Brian Z. Tamanaha, On the Rule of Law: History,
Politics, Theory 34 (Cambridge Univ. Press 2004).
1.

Plaintiffs do not make the law reasonably accessible.

Today, one can access and share judicial opinions, statutes, and most codified regulations
online, almost instantly, for free, through a variety of databases. Absent Public Resource’s
efforts, however, the situation is strikingly different for just one important category of law:
incorporated standards. For example, the law permits parents to review testing protocols. In order
to exercise that right, however, they must make their way to the Washington, D.C. reading room
of the Department of Education, or the National Archives (https://www.law.cornell.edu/cfr/
text/34/668.146) (SMF ¶ 27.) If they cannot afford travel to D.C., the alternative is to go to
Plaintiff AERA directly and pay a fee for access. As Plaintiffs admit, that fee can run as high as
$50. (Pls. Mem. 10).
But even that that assumes that Plaintiffs are willing to sell access of a copy of the
Standards. Plaintiffs have repeatedly emphasized their firm belief that they should be able to
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control access to the 1999 Standards—including the right not to make the 1999 Standards
available at all. (SMF ¶ 58.) Indeed, Plaintiffs discontinued sales of the 1999 Standards in order
to stimulate sales of the 2014 edition. (Pls. Mem. 11.) But the 2014 edition is not the edition
incorporated into law. As an apparent strategic move in light of this litigation, Plaintiffs resumed
sales of the 1999 edition in July 2015. (SMF ¶ 59–60.) But Plaintiffs claim the power to suppress
access to the standards at their whim. Indeed, they are likely to do so as soon as this litigation
ends, given that Plaintiffs believe the availability of a superseded standard to be harmful. (SMF
¶ 97.) Indeed, AERA’s representative explicitly stated that they would one day discontinue sales
of the 1999 Standards again. (SMF ¶ 58.) Access to the law should never be subject to the
marketing whims of a publisher or the political whims of a lobbying group.
Even after they made the 1999 Standards available for purchase again, Plaintiffs imposed
significant barriers to access. In July 2015, shortly after Public Resource raised the issue of
future sales of the 1999 Standards in depositions, AERA placed a single link to the 1999
Standards from the page from which it sells the 2014 edition of the Standards.13 The linked page
advises users that Plaintiffs “recommend use of the 2014 Standards as the authoritative source of
testing standards.”14 The 1999 edition does not appear in the “Complete List of AERA Books”
on AERA’s website.15 And the 1999 Edition is not available for purchase through AERA’s
online bookstore. (SMF ¶ 59.) Instead, a purchaser must fill out a separate “Mail or Fax Order
Form” for the 1999 edition. (SMF ¶ 59.)

13

See http://www.aera.net/Publications/Books/StandardsforEducationalPsychological
Testing%28NewEdition%29/tabid/15578/Default.aspx.

14

See http://www.aera.net/Publications/Books/Standards%281999Ed%29/tabid/16144/
Default.aspx.

15

See http://www.aera.net/Publications/tabid/10067/Default.aspx; http://www.aera.net
/Publications/Books/AERABooksList/tabid/13233/Default.aspx.
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As for Plaintiffs APA and NCME, they maintain pages on their websites to advertise the
Testing Standards and direct visitors to the AERA store to purchase the 2014 edition.16 Neither
of these pages links to the 1999 edition. (SMF ¶ 60.)
Finally, like the Plaintiffs in ASTM, the Plaintiffs here make no effort to provide access
for print-disabled people. Plaintiffs admit that neither the 1999 nor the 2014 Standards have ever
been available in a format that is accessible to individuals who are blind. (SMF ¶ 50.)
All evidence suggests that, other than as a strategic ploy in this litigation, Plaintiffs
actively oppose public access to the 1999 Standards, which they consider not “authoritative”
despite their authoritative status as law. As ten states noted in an amicus brief filed in support of
Peter Veeck, the Roman emperor Caligula famously published his tax laws only in narrow
places, in excessively small letters, to prevent practical access to them. Declaration of Matthew
Becker, Ex. 74 (Amici Brief filed in Veeck litigation) (citing U.S. v Jefferson County, 380 F. 2d
385, 410–11 (5th Cir. 1967). A statutory monopoly in the law confers similar power on a
standards organization. That burden on the people’s ability to access and know the law is no
more tolerable as a revenue strategy of standards development organizations than as the whim of
a cruel and dissolute Roman emperor.
2.

The Plaintiffs do not need a copyright statutory monopoly and
copyright incentives in order to develop standards.

Plaintiffs’ self-serving threat to stop developing testing standards if they cannot retain
their statutory monopoly when their standards are incorporated into law is not plausible.
Greene v. Dalton, 164 F.3d 671, 675 (D.C. Cir. 1999) (allegations or conclusory statements
insufficient to raise fact issue on summary judgment). Standards development organizations, and

16

See http://www.apa.org/science/programs/testing/standards.aspx;
http://www.ncme.org/ncme/NCME/Publication/NCME/Publication/Testing_Standards.aspx.
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the thousands of volunteers upon whom they rely, have ample non-copyright rewards and
incentives to continue that work.
As the court in Veeck observed: “[I]t is difficult to imagine an area of creative endeavor
in which the copyright incentive is needed less. Trade organizations have powerful reasons
stemming from industry standardization, quality control, and self-regulation to produce these
model codes; it is unlikely that, without copyright, they will cease producing them.” 293 F.3d at
806 (quoting 1 Goldstein on Copyright § 2.5.2, at 2:51).
The same is true here. The 1999 Standards reflected the contributions of “scientific,
professional, trade and advocacy groups, credentialing boards, state and federal government
agencies, test publishers and developers, and academic institutions.” (Pls. Mem. 6.) All of these
volunteers rely on the standards (or realize they will be required to comply with them) and,
therefore, have every incentive to help shape them, as do the committee members who controlled
the final production. Indeed, Plaintiffs’ own expert testified that participants contribute to the
standard for three reasons: to “[c]ontribute back to the field, to contribute to the standards, and to
serve the associations.” (SMF ¶ 61.) None of those reasons would change if the Plaintiffs lost a
statutory monopoly on those contributions when they become law.
For these reasons the argument that these Plaintiffs require copyright incentives in order
to carry out their mission strains credulity. As one prominent scholar has observed, copyrighting
standards actually creates perverse incentives that conflict with those overarching goals:
The long-term credibility of [standards development organizations] depends on
their ability not only to produce sound standards but also to produce standards in
which the [standards development organizations] do not have such a strong
financial interest that they succumb to the temptation to abuse the standards
process by making their standards into a cash cow that must be purchased by
anyone affected by the standard.
Pamela Samuelson, Questioning Copyrights in Standards, 48 B.C. L. Rev 193, 223–24 (2007).

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The only basis for the Plaintiffs’ claim that they would cease developing standards absent
the promise of copyright royalties is a set of self-serving assertions. (Pls. Mem. 12.) Those
assertions fail the sniff test. According to the Plaintiffs themselves, their own members benefit
from the testing standards they develop, because they create a common set of rules for the
development, use and evaluation of tests. (Pl. Mem. 6.) Plaintiffs, for example, admit that they
benefits from the standards. (SMF ¶ 62.) Indeed, Plaintiffs’ own expert stated that NCME
naturally “cares a lot” about the standards. (SMF ¶ 63.) AERA’s representative admitted that the
1999 Standards are “integral” to AERA’s mission of “serving the public good through sound
research, which includes sound methods and practices.” (SMF ¶ 64.)
Further, while Plaintiffs may shoulder some expenses associated with producing the
standards (though volunteers and their employers likely bear the majority of them (SMF ¶ 65.)),
Plaintiffs have many other means of earning revenue, including selling other standards that are
not incorporated into law, charging membership dues and conference fees, and obtaining
government research grants, all of which are current sources of income for Plaintiffs. (SMF
¶ 66.) Indeed, Plaintiff APA’s annual revenues in 2012 alone were approximately $119 million.
(SMF ¶ 67.) Given that the standards development process depends on the effort of countless
unpaid volunteers (who (or whose employers) require no copyright rewards for their volunteer
work), Plaintiffs’ statement that they will no longer manage standards development if they
cannot count on a statutory monopoly if the output becomes law is simply an unsupported selfserving threat. See Greene, 164 F.3d at 675.
Finally, the Plaintiffs have no evidence that lack of a statutory monopoly would affect
sales of the 1999 Standards. The best evidence they can muster is a misleading reference to a
drop in sales within the 2-year period that Public Resource posted the 1999 Standards. But

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Plaintiffs’ annual revenue charts for the 1999 Standards show that sales were declining faster in
the year before Public Resource posted the 1999 Standards than in the year after the Standards
were posted. (SMF ¶ 44.)
Year
FY 2000
FY 2001
FY 2002
FY 2003
FY 2004
FY 2005
FY 2006
FY 2007[1]
FY 2008
FY 2009
FY 2010
FY 2011
FY 2012
FY 2013
FY 2014

Revenue

% Change Units Sold % Change
3,797
3,755
-1.11%
5,592
48.92%
3,310
-40.81%
3,218
-2.78%
3,803
18.18%
3,888
2.24%
3,077
-20.86%
3,358
9.13%
2,590
-22.87%
3,043
17.49%
2,132
-29.94%
1,649
-22.65%
1,732
5.03%
855
-50.64%

(SMF ¶ 44.) Indeed, sales actually increased in 2013 over 2012. (SMF ¶ 44, 47.) According to

(SMF ¶ 45).

(SMF ¶ 45).

[1]

Public Resource was unable to determine a
continuous annual sales trend because Plaintiff did not produce monthly sales
information. (SMF ¶ 44.) The data, however, does not suggest
would affect the analysis.
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(SMF ¶ 46).
(Id.) In fact, they did. (SMF ¶
47.)

(SMF ¶ 47.)17

Moreover, even if it were relevant, Plaintiffs have not shown that copyright is necessary
to their revenue stream. Many publishers sell compilations of statutes and codes without the
benefit of copyright; people will still pay for the convenience of having a physical book of codes
on their shelf. (SMF ¶ 68–72.) And numerous other standards development organizations
function effectively without claiming copyright in standards incorporated into law.
E.

Plaintiffs Misinterpret the Copyright Act.

Plaintiffs’ remaining arguments against the public’s right to access and share the law
deserve swift rejection.

17

Plaintiffs also imply that only Public Resource’s posting of the standard could have caused a
“precipitous drop” instead of a “gradual decline in sales year-over-year.” (Pls. Mem. 25.)
However, their only source for this speculation was Dr. Geisinger, who invoked his experience
publishing several books, none of which was a standard or had later versions that could affect
demand, as with the 1999 Standards. (Defendant’s Mot. to Strike Geisinger at 4–5).
Dr. Geisinger is not competent to opine as to the causation of any change in Plaintiffs’ sales. In
contrast, AERA’s Dr. Levine testified that “there would be demand for a new version of the
standards because of the large number of persons knowing that the new standards are under
revision and waiting to buy the new standard.” (SMF ¶ 45) (emphasis added).
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First, Plaintiffs wrongly claim that 17 U.S.C. § 201(a) and the absence of a specific
statutory provision addressing incorporation by reference support their view of the law. (Pls.
Mem. 20.) The principle that the law cannot be copyrighted long predates the 1976 Copyright
Act, and nothing in the Act suggests any intent to contravene it. Section 201(a) merely vests
copyright initially in the author; that section is consistent with Public Resource’s interpretation.
(There is a substantial question whether Plaintiffs—as opposed to the countless volunteers who
actually drafted the 1999 Standards—were the authors, but Public Resource does not press that
issue here.) How a copyright vests does not affect its scope or whether Plaintiffs may enforce a
statutory monopoly to control access to the law.
Second, Plaintiffs argue that Public Resource’s interpretation would permit involuntary
transfers of their alleged copyrights (Pls. Mem. 40), but there is no question of a transfer of
copyright here. Whatever copyright the 1999 Standards may enjoy as private standards, as law
they are not under copyright, and therefore there is nothing to transfer.
Third, the various studies and statutes Plaintiffs cite, recommending that federal agencies
take advantage of voluntary consensus standards, say nothing about what happens when such
standards became laws. The opinions of various executive branch agencies, including the Office
of Management and Budget, are not the conclusions of copyright or constitutional experts, much
less legal precedents.
III.

EVEN BEFORE INCORPORATION, THE STANDARDS ARE PRIMARILY
UNCOPYRIGHTABLE SYSTEMS, DISCOVERIES, PROCESSES,
PROCEDURES, AND SCÈNES À FAIRE.
Plaintiffs have challenged, and seek an injunction against, Public Resource’s posting of

the 1999 Standards. But a claim of infringement, and any relief, must be confined to the use of
copyrightable expression. “To prevail on a copyright claim, a plaintiff must prove both
ownership of a valid copyright and that the defendant copied original or ‘protectible’ aspects of
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the copyrighted work.” Sturdza v. United Arab Emirates, 281 F.3d 1287, 1295 (D.C. Cir. 2002)
(citing Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 348, 361 (1991)). “The scope of
[an] injunction . . . should generally be no broader than the infringement; courts should modify
injunctions that impinge on non-copyrightable expression.” 4 Nimmer on Copyright
§ 14.06[C][1][a] ( (citations omitted). See also Nihon Keizai Shimbun, Inc. v. Comline Bus. Data,
Inc., 166 F.3d 65, 75 (2d Cir. 1999).
Much of the 1999 Standards are non-copyrightable. Plaintiffs repeatedly stress, and
Public Resource does not dispute, that the 1999 Standards were the product of substantial time
and effort by the volunteers who developed them. (Pls. Mem. 5.) But investment and effort are
not a basis for copyright. Original creative expression is necessary. Feist, 499 U.S. at 346, 353
(rejecting the argument that “sweat of the brow” is sufficient to confer benefits of copyright).
As the Supreme Court explained: “the first person to find and report a particular fact has
not created the fact; he or she has merely discovered its existence.” Id. at 347. The standards at
issue here summarize of the “discoveries” of thousands of volunteers and government employees
who, through experience and research, have determined the optimal principles, practices, and
procedures for testing. Those discoveries are no doubt valuable. But they are not copyrightable.
A.

The 1999 Standards Are Procedures, Systems, and Principles.

As noted, Section 102(b) excludes ideas, procedures, systems, and principles (among
other things) from copyright. The 1999 Standards are procedures, systems and principles for
production of fair and valid tests.
As Plaintiffs’ own representative stated, the standards

(SMF ¶ 77.) Plaintiffs define the 1999 Standards as
“Technical Recommendations” or “principles and guidelines to improve professional practice.”
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(Pls. Mem. 4, 6.) They are the product of “intensive labor” and “expertise,” (Pls. Mem. 5), that
summarize and reinforce “technical, professional and operational norms.” (Pls. Mem. 8.)
The design of the 1999 Standards resulted from a technical committee’s review of the
relevant research, public input, and committee expertise, all of which aimed to create the best
rule based on available evidence. The developers’
(SMF ¶ 78.) The goal is to
(SMF ¶ 79.), in order to ensure accurate and defensible testing protocols. Indeed,
Plaintiffs do not believe that the standards can be expressed another way. For example,
Plaintiffs’ own witness stated
(SMF ¶ 81.)
Id. ¶ 82.)
Nor do the incorporated standards qualify as creative compilations, because their utility
dictates their organization. Guidance on this point is in the recent Ninth Circuit decision in
Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC, 803 F.3d 1032 (9th Cir. 2015). In
that case, the plaintiff claimed that the order and sequence of certain yoga poses (the
“Sequence”) was copyrightable. The court rejected that argument because “the medical and
functional considerations at the heart of the Sequence compel the very selection and arrangement
of poses and breathing exercises for which [plaintiff] claims copyright protection.” Id. at 1042.
The court concluded: “The Sequence’s composition renders it more effective as a process or
system, but not any more suitable for copyright protection as an original work of authorship.” Id.
The same is true here. Plaintiffs optimize for enforceable clarity, not creativity. While
they may have made choices about how to organize the 1999 Standards, the relevant inquiry is
not whether one could imagine some other, less useful, method of arrangement. See Bikram’s

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Yoga, 803 F.3d at 1042; BellSouth Advert. & Publ’g Corp. v. Donnelley Info. Publ’g, Inc., 999
F.2d 1436, 1443 (11th Cir. 1993); see also ATC Distrib. Grp., Inc. v. Whatever It Takes
Transmission & Parts, Inc., 402 F.3d 700, 712 (6th Cir. 2005) (fact that publisher “could have
arranged the parts information in other ways that were potentially less clear or useful . . . is
insufficient to demonstrate the creativity necessary for copyright protection”). Instead, it is
whether, as here, the Plaintiffs made the optimal choice to render their system more effective as
such. See also 4 Nimmer on Copyright § 13.03[B][3].
B.

The Incorporated Standards Are Scènes à Faire.

The compilations are also uncopyrightable scènes à faire. The scènes à faire doctrine
excludes from protection those elements of a work that necessarily result from factors “external
to the author’s creativity.” 4 Nimmer on Copyright § 13.03[F][3]; see also Computer Assocs.
Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 709–10 (2d Cir. 1992).
Here, Plaintiffs admit that their standards are dictated by external factors: specifically, the
current state of technical information on test development and use. (SMF ¶ 83.) For example, the
1999 Standards were intended to remedy technical deficiencies in the prior 1985 standards, as
there were definitions and statements that “more recent research had suggested were incorrect or
outdated.” (SMF ¶ 84.) The choices in development of the Standards were also dictated by
practical requirements and industry demands, as the industry participants voiced them in the
development process. (Pl. Memo. at 6; SMF ¶ 85.) Thus, they are like the elements of a software
program that are dictated by practical realities rather than creative design and therefore excluded
from copyright. See, e.g., Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522,
535 (6th Cir. 2004) (content primarily shaped by extrinsic factors such as hardware standards
and mechanical specifications may not obtain copyright).

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IV.

PUBLIC RESOURCE’S POSTING IS A LAWFUL FAIR USE.
Even if the Court were to find that Plaintiffs can exercise a statutory monopoly over a

portion of the law, the statutory monopoly does not prohibit fair uses. The rights of a copyright
owner, in section 106 of the Copyright Act, are expressly “[s]ubject to . . . section[] 107.” See 17
U.S.C. § 106 (initial wording). The fair use of a work is not, as Plaintiffs contend, an
“infringement [that] can be excused.” (Pls. Mem. 28.) The statute is clearly to the contrary:
“Notwithstanding the provisions of section[] 106 . . . , the fair use of a copyrighted work . . . is
not an infringement of copyright.” Fair use is “a right granted by the Copyright Act of
1976 . . . [and] not an infringement.” Lenz v. Universal Music Corp, 801 F.3d 1126, 1133 (9th
Cir. 2015) (quoting Bateman v. Mnemonics, Inc., 79 F.3d 1532, 1542 n.22 (11th Cir. 1996)).
The fair use doctrine has four non-exclusive statutory factors: “(1) the purpose and
character of the use, including whether such use is of a commercial nature or is for non-profit
educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of
the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon
the potential market for or value of the copyrighted work.” 17 U.S.C. § 107. The Court must
evaluate these factors “in light of the purposes of copyright,” which are “[t]o promote the
Progress of Science and useful Arts, and to serve the welfare of the public.” Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d 1146, 1163 (9th Cir. 2007) (citations and internal quotations
omitted). All four statutory factors support fair use here, as does the Constitutional purpose of
copyright.
A.

Public Resource’s Posting of the Legally Binding 1999 Standards Is
Transformative, Is Noncommercial, and Is for Beneficial Public Purposes.

Public Resource posted the 1999 Standards for several purposes, all of which support a
finding of fair use. Public Resource’s interest in the 1999 Standards is solely in publicizing the

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law and making it available to all. Public Resource has enabled access to the law for all those
affected by it, and in particular for those who are blind or have other disabilities with respect to
printed books. And by posting the 1999 Standards in a form that can be read by computer
software, Public Resource has enabled new ways of learning about and interacting with the law.
Moreover, Public Resource’s purpose is noncommercial, a fact that Plaintiffs do not dispute. (See
Plaintiffs’ Statement of Undisputed Material Facts ¶¶ 48, 52.)
1.

Expanding access to the law is a transformative purpose.

The first fair use factor favors transformative purposes and uses. Campbell v. Acuff-Rose
Music, Inc., 510 U.S. 569, 578–79 (1994). A transformative use is one “that communicates
something new and different from the original or expands its utility, thus serving copyright’s
overall objective of contributing to public knowledge.” Authors Guild v. Google, Inc., 804 F.3d
202, 214 (2d Cir. 2015) (citing Campbell, 510 U.S. at 579); see also A.V. ex rel. Vanderhye v.
iParadigms, LLC, 562 F.3d 630, 639 (4th Cir. 2009) (a fair use “can be transformative in
function or purpose”).
Incorporation by reference into law transformed the 1999 Standards even before Public
Resource obtained it, by turning it from a statement of best practices into the law of the land.
Incorporation into law gave the 1999 Standards “a further purpose or different character.”
Campbell, 510 U.S. at 579. Public Resource’s posting of the 1999 Standards built on that initial
transformation and is itself transformative.
Plaintiffs sold print copies of the 1999 Standards as a guide to test designers and
administrators, and a statement of best practices for assessment professionals. (SMF ¶ 86.) The
Plaintiffs seek to provide answers to questions like “How do I design a test that can accurately
diagnose psychological dysfunctions,” or “How do I administer a test fairly to non-native
English speakers?”
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Public Resource has had a very different purpose for posting the 1999 Standards. Public
Resource provides access to standards incorporated into law as part of an online archive of laws
and other government documents, so that citizens are able to read, speak, and engage critically
with the laws that govern them. (SMF ¶ 2.) Posting the 1999 Standards was part of that mission.
The Public Resource websites answer different questions, such as “What is the law governing
tests that determine eligibility for government benefits,” and “Does the test my child took comply
with the law?”
Public Resource’s use of the 1999 Standards is “indifferent” to any copyrightable
expression it allegedly contains. See Am. Inst. of Physics v. Schwegman, Lundberg & Woessner,
P.A., No. 12-528, 2013 WL 4666330, at *12 (D. Minn. Aug. 30, 2013). For Public Resource’s
purpose, it matters only that the standards it posts are legal requirements that the public must
obey. Thus, Public Resource transformed the 1999 Standards “from an item of expressive
content to evidence of the facts within it.” Am. Inst. of Physics v. Winstead PC, No. 3:12-CV1230-M, 2013 WL 6242843, at *5 (N.D. Tex. Dec. 3, 2013). Public Resource’s use of standards
incorporated by reference into law is akin to copying and displaying documents in the process of
fulfilling a legal requirement, or in the course of judicial and administrative proceedings. Bond v.
Blum, 317 F.3d 385, 394–97 (4th Cir. 2003) (copying and submission of copyrighted manuscript
in child custody proceeding as evidence of the admissions it contained was fair use); Healthcare
Advocates Inc. v. Harding, Earley, Follmer & Frailey, 497 F. Supp. 2d 627, 639 (E.D. Pa. 2007)
(copying images from website to gather facts for the defense of an earlier copyright infringement
suit was fair use). Like such uses, posting an incorporated standard to communicate the legal
facts it embodies does not “seek[] to exploit or unjustly benefit from any creative energy that
[Plaintiffs] devoted to writing” the Standards. See Lexmark, 387 F.3d at 544.

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Even for source material other than legal texts, copying for a new and different purpose
indifferent to any creative expression is transformative. See Bill Graham Archives v. Dorling
Kindersley Ltd., 448 F.3d 605, 608–09 (2d Cir. 2006) (use of concert poster images as “historical
artifacts” on a timeline in a book rather than for “artistic expression and promotion” was
transformative); Online Policy Grp. v. Diebold, Inc., 337 F. Supp. 2d 1195, 1203 (N.D. Cal.
2004) (posting corporation’s emails on the Internet to inform the public of defects in electronic
voting machines was transformative); see also Lexmark, 387 F.3d at 544 (using a copyrighted
computer program in a competing product as a password that unlocked the functionality of a
printer rather than for the program’s intrinsic use was transformative). Public Resource’s purpose
of informing the public about the rules it must follow falls into that rubric. The purpose is a form
of news reporting, a paradigmatic example of fair use in 17 U.S.C. § 107.
2.

Providing new information about the law by enabling software-based
analysis is a transformative and publicly beneficial purpose.

Public Resource’s use is also transformative because it enables citizens to engage with
this portion of the law in new ways that “provide otherwise unavailable information.” Authors
Guild, 804 F.3d at 215; see also Authors Guild, Inc. v. HathiTrust, 755 F.3d 87, 97–98 (2d Cir.
2014); Vanderhye, 562 F.3d at 638–640 (digital reproduction of student manuscripts in their
entirety to detect plagiarism is transformative); Perfect 10, 508 F.3d at 1165 (search engine
reproducing small images of copyrighted photos to aid in finding them is transformative); see
also Pierre N. Leval, Toward A Fair Use Standard, 103 Harv. L. Rev. 1105, 1111 (1990) (fair
use protects a use that creates “new information . . . new insights and understandings.”).
Public Resource posted the 1999 Standards to its website in Portable Document Format
(PDF), which is readable by numerous devices and software programs. Widely available optical
character recognition (OCR) software can transform PDF files into text that can be read by an

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even greater variety of software. The version that Public Resource posted to the Internet Archive
underwent OCR and was converted into a variety of file formats. (SMF ¶ 37). Public Resource’s
regular practice is to further convert the standards it posts into standard Hypertext Markup
Language (HTML) to make them still more accessible. It intended to do so for the 1999
Standards but the filing of this lawsuit interrupted that work. (SMF ¶ 38.) Public Resource also
works to ensure that standards incorporated by reference into law, along with the other legal
materials it posts, are indexed and represented accurately by search engines. (Id.)
Plaintiffs try to dismiss Public Resource’s work as “merely converting printed text to
digital format.” (Pls. Mem. 45.) Plaintiffs miss the point. Once a legal text like the 1999
Standards is available in new formats, software-based searching and analysis can reveal new
information about the source material. See Thomas A. Smith, The Web of Law, 44 San Diego L.
Rev. 309, 312–14 (2007) (describing computer analysis of citations in judicial opinions); Kevin
D. Ashley & Stefanie Brüninghaus, Computer Models for Legal Prediction, 46 Jurimetrics 309,
312 (2006) (“To apply such prediction tools, the case data must be amenable to computer
processing.”); William Li et al., Law Is Code: A Software Engineering Approach to Analyzing
the United States Code, 10 J. Bus. & Tech. L. 297, 309 (2015) (describing how comprehensive
software analysis of the U.S. Code is made possible by the Code’s availability in Extensible
Markup Language format). This enabling of criticism, comment, scholarship, and research are
additional paradigmatic examples of fair use in 17 U.S.C. § 107.
In the United States, nearly all statutes, regulations, and reported judicial opinions are
available on the Internet, in standard formats readable by software, for free. See, e.g., Legal
Information Institute, https://www.law.cornell.edu/; Google Scholar, https://scholar.google.com/;
Code of the District of Columbia, http://dccode.org/simple/; D.C. Municipal Regulations and

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D.C. Register, http://www.dcregs.dc.gov/. This new availability has transformed legal practice
and scholarship and vastly increased public access. See Steven A. Lastres, Rebooting Legal
Research in a Digital Age, LLRX (Aug. 10, 2013), https://www.llrx.com/files/rebootinglegal
research.pdf.
In contrast, although Plaintiff AERA conceded that

the Plaintiffs in this case provide the legally binding 1999 Standards
only in print while suppressing attempts to access and use the Standards in electronic formats.
(SMF¶ 87–88.) Public Resource’s posting of the 1999 Standards enabled the same powerful
search and analysis tools that can be used for most other state and federal laws. As several courts
have found, enabling search and analysis is highly transformative and favors a finding of fair
use. See HathiTrust, 755 F.3d at 97; Vanderhye, 562 F.3d at 638–40; Perfect 10, 508 F.3d at
1165.
3.

Providing access for people with print disabilities is a legally favored
fair use purpose.

Additionally, Public Resource enables blind and other print-disabled individuals to access
the law. Accessibility for the disabled is a well-established fair use purpose. “Making a copy of a
copyrighted work for the convenience of a blind person is expressly identified by the House
Committee Report as an example of fair use, with no suggestion that anything more than a
purpose to entertain or to inform need motivate the copying.” Sony Corp. of Am. v. Universal
City Studios, Inc., 464 U.S. 417, 455 n.40 (1984); see also HathiTrust, 755 F.3d at 103 (purpose
of promoting accessibility by the disabled favored finding of fair use). The drafters of the
Copyright Act of 1976 identified accessibility as a “special instance illustrating the application of
the fair use doctrine.” H.R. Rep. No. 94–1476, at 73 (1976), 1976 U.S.C.C.A.N. 5659, 5686.

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Access to the 1999 Standards is particularly important for people with print disabilities
because the Standards contain the legal requirements for tests used to determine students’
eligibility for federal grants, including whether those tests are fair to students with disabilities.
(SMF ¶ 89.)18 Federal and state statutes concerning access to testing protocols have been held to
support a finding of fair use. “[A] school giving parents of special education students copies of
their children’s test protocols when requested under [state law] is a fair use.” Newport-Mesa
Unified Sch. Dist. v. California Dep’t of Educ., 371 F. Supp. 2d 1170, 1179 (C.D. Cal. 2005).
Public Resource made the 1999 Standards accessible to print-disabled readers by
scanning a print copy to create a digital version and making that version available online in a
standard format. (SMF ¶ 37–38). James Fruchterman, Public Resource’s expert on accessibility,
concluded that “a person who is blind or print disabled would have been able to locate a version
of the 1999 Standards on the Public.Resource.Org website when it was still hosted there” and
would be able to “perform[] optical character recognition on the Public.Resource.Org image file”
containing the 1999 Standards. (SMF ¶ 90.) The reader would then “be able to perform all of the
functional tasks: reading the entire standard, navigating to a specific place in the standard, or
searching on key terms.” (SMF ¶ 90.) The version that Public Resource posted to the Internet
Archive website had optical character recognition performed on it, so it was immediately
readable by people who are blind or have visual disabilities. (SMF ¶ 90.)
Plaintiffs, in contrast, provide the 1999 Standards only in print. (SMF ¶ 88.)
Mr. Fruchterman could not locate the 1999 Standards on the Internet from any source, Public
18

Plaintiffs make much of the Second Circuit’s statement in HathiTrust that “providing
expanded access to the print disabled is not ‘transformative.’” 755 F.3d at 101. (See also Pls.
Mem. 45.) They neglect to mention that the Second Circuit nonetheless found that providing
such access supported a finding of fair use under Supreme Court precedent. Id. at 102. The
“transformative use” designation does not end the first factor inquiry. Swatch Grp. Mgmt. Servs.
Ltd. v. Bloomberg L.P., 756 F.3d 73, 84 (2d Cir. 2014) (quoting Campbell, 510 U.S. at 579)).
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Resource having disabled access to the Standards through its website and the Internet Archive
during this litigation. (SMF ¶ 91.) Nor is the document available through any of the main
libraries that serve people with print disabilities, and Plaintiffs state that they have not given
permission for any braille versions to be created. (SMF ¶¶ 92–93.) Mr. Fruchterman noted that,
while print copies of the 1999 Standards may be available, “most blind people themselves do not
have the ability to convert books” and would require that “their employer, educational
institution, or a specialized library for the blind create [an accessible copy].” (SMF ¶ 94.) Thus,
only Public Resource has enabled print-disabled citizens to access this portion of the law
independently.
4.

Public Resource’s use of the 1999 Standards is non-commercial.

Public Resource’s use of the 1999 standards is non-commercial, which supports fair use.
See Campbell, 510 U.S. at 584. Public Resource is a non-profit organization funded entirely by
donations, contributions and grants. (SMF ¶ 1.) It does not charge for access to the 1999
Standards or any other information on its website. (SMF ¶ 5.) The Plaintiffs have not asserted
that Public Resource’s use of the 1999 Standards is commercial.
B.

The 1999 Standards Are a Factual Document.

“The law [of fair use] recognizes a greater need to disseminate factual works than works
of fiction or fantasy.” Harper & Row Publ’rs., Inc. v. Nation Enters., 471 U.S. 539, 563 (1985).
“Since the risk of restraining the free flow of information is more significant with informational
work, the scope of permissible fair use is greater.” Consumers Union of U.S., Inc. v. Gen. Signal
Corp., 724 F.2d 1044, 1049 (2d Cir. 1983).
The 1999 Standards fall squarely on the factual end of the spectrum. As a part of the law,
the text of the Standards is a legal fact. In addition, Plaintiffs concede that the 1999 Standards are
procedures. As such, if they are not entirely excluded from copyright by 17 U.S.C. § 102(b),
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their nature supports a determination of fair use.19 Consumers Union, 724 F.2d at 1049; see
pages 32–34, above.
Plaintiffs dismiss this factor as unimportant. (Pls. Mem. 46.) Copyright experts would
beg to differ. See Robert Kasunic, Is that All There Is? Reflections on the Nature of the Second
Fair Use Factor, 31 Colum. J.L. & Arts 529, 554–55 (2008). Important or not, the factor favors a
conclusion of fair use.
C.

Public Resource Uses No More of the Standards than Necessary.

The third statutory factor favors fair use where the amount of the original work used is
“reasonable in relation to the purpose of the copying.” Authors Guild, 804 F.3d at 221; see also
Campbell, 510 U.S. at 586–87. The copying of entire works is fair use when it reasonably fulfills
the user’s purpose. See, e.g., Sony, 464 U.S. at 449–50 (copying of entire television programs for
time-shifting is fair use); Lexmark, 387 F.3d at 544 (copying of entire computer program as
required for compatibility with printer is fair use); Swatch Grp. Mgmt. Servs. Ltd. v. Bloomberg
L.P., 756 F.3d 73, 90 (2d Cir. 2014) (copying and dissemination of entire recordings of press
conferences was “reasonable in light of its purpose of disseminating important financial
information to investors and analysts.”).
There can be no serious dispute that the purpose for which Public Resource posted the
1999 Standards requires posting the complete document that the law has incorporated. There is
no portion or excerpt short of the entirety that would fully inform the public of its rights and
obligations under the law. Partial access could even create the false impression that a test that
complied with only part of the Standards would fulfill Department of Education or state law

19

The Second Circuit’s recent Authors Guild decision does not alter this conclusion. That court
did not impose a different meaning on the second statutory factor but simply downplayed its
importance. 804 F.3d at 220.
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requirements. Plaintiffs themselves forbid reprinting of individual sections of the Standards
because “the standards are regarded as a unitary document.” (SMF ¶ 95.)
Because Public Resource’s use of the 1999 Standards is transformative, copying that is
“literally necessary” or “reasonably appropriate” to that use tilts the third factor in favor of fair
use. Authors Guild, 804 F.3d at 221. Plaintiffs’ recitation of cases in which the party accused of
infringement used technological measures to limit copying of the work at issue is not relevant
here, where “to copy any less than” the entire work “would have made the [work] useless” for
the fair use purpose. Nuñez v. Caribbean Int’l News Corp., 235 F.3d 18, 24 (1st Cir. 2000); (see
Pls. Mem. 49–51.)
D.

Public Resource’s Use of the 1999 Standards Has Not Caused, and Will Not
Cause, Harm in Any Relevant Market.

The fourth fair use factor concerns “meaningful or significant effect ‘upon the potential
market for or value of the copyrighted work.’” Authors Guild, 804 F.3d at 224 (citation omitted).
Where a use is highly transformative, only a strong showing of harm will weigh against fair use.
“Market harm is a matter of degree, and the importance of this factor will vary, not only with the
amount of harm, but also with the relative strength of the showing on other factors.” Fox News
Network, LLC v. TVEyes, Inc., 43 F. Supp. 3d 379, 395 (S.D.N.Y. 2014) (quoting Campbell, 510
U.S. at 590 n. 21). And market effects that “occur in relation to interests that are not protected by
the copyright” are not relevant to the fourth factor inquiry. Authors Guild, 804 F.3d at 224.
As discussed above, at pages 28–30, Plaintiffs provided no competent evidence that
Public Resource’s activities harmed sales of the 1999 Standards.
Looking ahead, the undisputed facts show that Plaintiffs themselves shut down the
market for the 1999 edition of the standards, the only work at issue in this case. And copyright

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law does not protect a market for the right to control “the conditions under which the public may
use” public law. (Pls. Answer ¶14 (ECF No. 14)). The fourth factor favors fair use.
1.

Plaintiffs themselves have shut down the market for the
1999 Standards.

Where there is no actual or potential market for the work at issue, the fourth factor
inclines towards fair use. Katz v. Google Inc., 802 F.3d 1178, 1184 (11th Cir. 2015); see also
Blanch v. Koons, 467 F.3d 244, 258 (2d Cir. 2006); Online Policy Grp. v. Diebold, Inc., 337 F.
Supp. 2d 1195, 1203 (N.D. Cal. 2004). The only document at issue in this lawsuit is the legally
binding 1999 edition of the Standards. Plaintiffs, by their own admissions and actions, have little
interest in revenue from sales of the 1999 edition. On the contrary, they seek to restrict access to
it and deter sales. Thus, there is no actual or potential market for copies of the 1999 Standards
that Public Resource could affect.
Plaintiffs halted all sales of the 1999 edition after publishing the 2014 Standards in
August 2014, mere months after filing this lawsuit. (SMF ¶ 40).

(SMF ¶ 96.)
,
(SMF ¶ 97.), even though the 1999 edition remains the law of the land. Plaintiffs resumed sales
in 2015 but, as noted in above, they have made it difficult to find, much less purchase, the 1999
Standards through Plaintiffs’ normal channels.
Plaintiffs now sell the 2014 edition of the Standards, and they promote and market only
the 2014 edition.
(SMF ¶ 41–42.)

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as only Plaintiff AERA published and sold new copies of the 1999
Standards. (SMF ¶ 42.) Nor are Plaintiffs seeking any royalty or other revenue from Public
Resource for its use of the 1999 Standards. (Complaint 13–14 (ECF No. 1)).
The inescapable conclusion from these facts is that Plaintiffs have no interest in any
market for the legally binding 1999 edition. The single link to a mail order form on a single page
buried within AERA’s website cannot overcome that conclusion. Plaintiffs have “failed to allege
that a ‘market’ exists for [their] copyright at all,” and the Court should “decline[] to simply
presume the existence of a market.” Righthaven, LCC v. Jama, No. 2:10-CV-1322, 2011 WL
1541613, at *5 (D. Nev. Apr. 22, 2011).
Because “there is no likely market for the challenged use of the plaintiff’s work[], the
fourth fair use factor favors the defendant.” Field v. Google Inc., 412 F. Supp. 2d 1106, 1121 n.9
(D. Nev. 2006) (citing Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 805–06 (9th Cir.
2003)); see also Blanch v. Koons, 467 F.3d 244, 258 (2d Cir. 2006) (fourth factor favored fair
use where plaintiff had ceased to publish or license her photograph).
2.

Only the 1999 Standards are relevant to the fair use inquiry; Public
Resource has not posted the 2014 edition and will not do so unless it
becomes law.

Plaintiffs’ argument that Public Resource will harm the market for the 2014 edition of the
Standards and “future Standards” if it succeeds in this litigation is both legally and factually
incorrect. As a matter of law, only harms to the potential market for “the copyrighted work” at
issue are relevant to the fair use inquiry. 17 U.S.C. § 107 (emphasis added); see Consumers
Union of United States, Inc. v. Gen. Signal Corp., 724 F.2d 1044, 1051 (2d Cir. 1983) (refusing
to consider impact of actual copying on plaintiff’s future works); Campbell, 510 U.S. at 574
(fourth factor is concerned with the “potential market for the original.”) (emphasis added).

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Plaintiffs have not claimed infringement of the 2014 edition, let alone “future Standards”
they have not yet written. Allegations concerning the “overall impact to [Plaintiffs’] business”—
apart from “the market for the reproduced [work]”—are “irrelevant to a finding of fair use.”
Nuñez v. Caribbean Int’l News Corp., 235 F.3d 18, 24 (1st Cir. 2000).
Public Resource has not posted the 2014 edition of the Standards anywhere. (SMF ¶ 40.)
It is undisputed that Public Resource posts only those standards that have become law.
Consistent with this policy, Mr. Malamud testified that he would consider posting the 2014
edition only “[i]f the federal government did a deliberate and explicit incorporation by
reference,” and only after determining “if that was an area that I wanted to continue to invest
resources in.” (Id.)20 Public Resource does not (and need not) contest Plaintiffs’ claim of
copyright in the 2014 edition or their ability to control its distribution. Thus, even if the market
for the 2014 edition were legally relevant to the fair use analysis, Plaintiffs cannot show any
imminent effect on that market.
3.

There is no proper market for the exclusive right to control access to,
and dissemination of, the law.

Plaintiffs claim “the power to determine the conditions under which Public Resource and
others may access, reproduce, publish, translate, reformat or annotate the [1999] Standards,”
despite the Standards’ status as binding law. (Pls. Answer to Counterclaims ¶ 14, ECF No. 14.)
But when a work is informational and public access to the information is vital, facilitating access
to the work does not, as a matter of law, harm its “market” or “value.” See Diebold, 337 F. Supp.

20

Plaintiffs mischaracterize this testimony as stating that Mr. Malamud “intends” to post the
2014 edition “if successful in this litigation.” (Pls. Mem. 48.) In fact, the very testimony they cite
makes clear that Mr. Malamud would consider doing so only if the 2014 edition is deliberately
incorporated by reference. (SMF ¶ 40.)
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2d at 1203; Righthaven, 2011 WL 1541613, at *4–*5 (“using the work for informational
purposes” does not create market harm).
Although Plaintiffs assert that no one apart from historians should use the 1999
Standards, they acknowledge that many people “believe they still may be held accountable to the
guidance of the 1999 Standards.” (Pls. Mem. 11.) That belief is accurate. The 1999 Standards,
not the 2014 Standards, form part of the Department of Education’s regulations for the design of
tests. “Incorporation by reference of a publication is limited to the edition of the publication that
is approved.” 1 C.F.R. § 51.1(f). The public has a compelling need to access, discuss, and
communicate the 1999 Standards as law. Plaintiffs have never had a legitimate right to prevent
people from using and distributing the 1999 Standards as law, and therefore cannot claim they
will suffer harm from losing that purported right.
Given that copyright does not protect the ability to suppress distribution of information of
public importance, especially where the claimant seeks no financial benefit from its distribution,
the opinion in Worldwide Church of God v. Philadelphia Church of God, Inc. does not apply
here. 227 F.3d 1110 (9th Cir. 2001). In that case, one church copied and used another church’s
“core” liturgy for “the very purposes for which [plaintiff] created [it]” and as a “marketing
device.” Id. at 1118–20. The court held marketing value to be a form of “compensation” that the
defendant acquired from its copying of the document. Id. at 1119. There was no indication that
the broader public had any interest in the document, and the court emphasized that “[t]his is not a
case of abuse of the copyright owner’s monopoly as an instrument to suppress facts.” Id. at 1116
(citation omitted).
Here, in contrast, the public importance of the 1999 Standards as law is undisputed, and it
overcomes Plaintiffs’ desire to suppress access to them. See Diebold, 337 F. Supp. 2d at 1203;

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Righthaven, 2011 WL 1541613, at *4 (distinguishing Worldwide Church of God). Public
Resource has never sought benefit or compensation from its posting of the 1999 Standards and
has never used it as a marketing device. (SMF ¶ 5.) In addition, Public Resource’s use is highly
transformative. The Ninth Circuit has distinguished Worldwide Church of God from instances
where the challenged use was highly transformative and market harm “may not be so readily
inferred.” Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146, 1165, 1168 (9th Cir. 2007).
Finally, the Ninth Circuit and other courts have since rejected the rationale in Worldwide Church
of God that copyright protects against harms to “reputation.” Garcia v. Google, Inc., 786 F.3d
733, 745 (9th Cir. 2015) (en banc); see also Katz v. Google Inc., 802 F.3d 1178, 1184 (11th Cir.
2015) (per curiam).
Public Resource’s use of the 1999 Standards furthers the purpose of copyright law by
improving access to vital knowledge, promoting the “Progress of Science.” U.S. Const. art. I § 8
cl. 8. All four factors of the fair use analysis favor Public Resource, and the Court should grant
summary judgment to Public Resource on this additional ground.
V.

PUBLIC RESOURCE IS NOT SECONDARILY LIABLE FOR COPYRIGHT
INFRINGEMENT.
Contributory liability requires introducing facts proving that a party “intentionally

induc[ed] or encourage[ed] direct infringement.” Metro-Goldwyn-Mayer Studios Inc. v.
Grokster, Ltd., 545 U.S. 913, 930 (2005). This Court has identified three elements: “(1) direct
infringement by a third party, (2) knowledge by the defendant that the third parties were directly
infringing, and (3) substantial participation by the defendant in the infringing activities.”
Newborn v. Yahoo!, Inc., 391 F. Supp. 2d 181, 186 (D.D.C. 2005) (citation omitted). The first
element demands that plaintiff show “what materials are being infringed and that the plaintiff
owns the copyright for those materials.” Newborn v. Yahoo!, Inc., 391 F. Supp. 2d 181, 187

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(D.D.C. 2005). If plaintiff sufficiently supports these allegations, a defendant may defeat
summary judgment by introducing evidence raising a genuine issue of fact as to whether the
alleged infringement was actually fair use. Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146,
1158 (9th Cir. 2007) (citing Campbell v. Acuff–Rose Music, Inc., 510 U.S. 569, 590 (1994)).
Plaintiffs’ claim fails as a matter of law at the first and second elements.
A.

Plaintiffs Cannot Prove Direct Infringement by Third Parties.

In order to show that Public Resource is liable for contributing to infringement by third
parties, Plaintiffs must first prove that third parties actually infringed. There can be no liability
for contributory infringement “unless the authorized or otherwise encouraged activity itself could
amount to infringement.” Subafilms, Ltd. v. MGM-Pathe Commc’ns Co., 24 F.3d 1088, 1092
(9th Cir. 1994); see also Grokster, 545 U.S. at 940 (“[T]he inducement theory of course requires
evidence of actual infringement . . . .”).
Moreover, where a colorable claim of fair use exists, the plaintiff must prove that the
third parties’ use was not fair. In Sony Corp. of Am. v. Universal City Studios, Inc., for example,
rightsholders sought to hold a manufacturer of videocassette recorders liable for alleged
infringements by its customers. 464 U.S. 417 (1984). After the manufacturer asserted that
customers’ use of the recorders for “time-shifting” was fair use, the Supreme Court adopted “an
interpretation of the concept of ‘fair use’ that requires the copyright holder to demonstrate some
likelihood of harm.” Id. at 454. “What is necessary,” the Court wrote, “is a showing by a
preponderance of the evidence that some meaningful likelihood of future harm exists.” Id. at 451.
Here, even if the 1999 Standards could be subject to copyright, using them as law is a fair
use, as described above. The purpose of Public Resource’s websites is to enable access to legally
incorporated standards as laws so that the public can know and share the law. Because sharing

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the law is a “substantial noninfringing use” of the material posted on the websites, it defeats a
claim of contributory infringement. Sony, 464 U.S. at 442.
Plaintiffs’ contributory infringement claim has a second fatal flaw: Plaintiffs have not
produced evidence that anyone other than Public Resource and Mr. Malamud has reproduced the
1999 Standards. Plaintiffs merely state that the 1999 Standards “were accessed” from Public
Resource’s website and the Internet Archive. (Pls. Mem. 23, 34.)
“Access” to a document does not imply a reproduction, or any other potentially infringing
act under 17 U.S.C. § 106. The evidence Plaintiffs proffered with respect to third party conduct
is Public Resource’s Amended Interrogatory Responses and Mr. Malamud’s deposition
testimony. (Pls. Mem. 34.) Plaintiffs’ Interrogatory No. 5 requested “the number of visitors who
viewed and/or accessed the 1999 Standards” on the Public Resource website. (ECF No. 60-23
[Hudis Decl. Exh. T, at 7].) After conferring on the issue, the parties agreed that “accessed”
means “to digitally retrieve or open an electronic file or data,” and “viewed” means “the act of
seeing or examining.” (Id. at 8.) Mr. Malamud gave a similar definition at deposition.
“[A]ccess,” he testified, “implies that a computer, not necessarily a human being, but a computer
has requested some data from another computer, and that request was successful and the data
was transferred.” (SMF ¶ 98.) Plaintiffs have proposed no other meaning for the words
“accessed” and “viewed.”
By any definition, “accessing” a document from a website does not imply that a
reproduction was made for purposes of copyright law. Reproduction requires the making of a
copy “for a period of more than transitory duration.” Cartoon Network LP v. CSC Holdings, Inc.,
536 F.3d 121, 127 (2d Cir. 2008). A copy is a “material object,” such as a computer hard drive
containing a digital file. 17 U.S.C. § 101. “Accessing” or “viewing” alone does not result in a

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reproduction, even if data passes through a buffer during its journey across the Internet. Cartoon
Network, 536 F.3d at 129–30. The Copyright Act does not grant a right to control “access” or
“viewing.” See 17 U.S.C. § 106. And Plaintiffs have made no attempt to show that any access to
the Standards on Public Resource’s website or the Internet Archive actually resulted in a
reproduction or any distribution by any person.
Access does not even imply an act of human volition, as required for a claim of direct
copyright infringement. The “accesses” Plaintiffs’ rely on were simply transmissions of data
from one computer to another, which can be initiated by software acting autonomously. Plaintiffs
made no effort to show (through expert testimony or otherwise) that any accesses to the 1999
Standards were a result of human volition rather than a mere byproduct of the activities of
automated systems. See Cartoon Network, 536 F.3d at 131–32 (technology that “automatically
obeys commands” does not give rise to direct copyright infringement).
In short, Plaintiffs have shown only that some number of human beings or automated
systems arrived at the 1999 Standards on Public Resource’s website and the Internet Archive, not
that any reproductions were made or copies were distributed. Because Plaintiffs have proved no
act of infringement by others, they cannot show contributory infringement by Public Resource.
B.

Plaintiffs Cannot Establish Intent to Infringe or Even Knowledge of Any
Infringement.

Just as Plaintiffs have not shown that any third party infringed upon the 1999 Standards
after accessing it from Public Resource’s website, they have not shown that Public Resource
intended or even knew of any such infringement. Contributory liability requires “an affirmative
intent that the product be used to infringe.” Grokster, 545 U.S. at 936. “Grokster tells us that
“contribution to infringement must be intentional for liability to arise.” Amazon, 508 F.3d at

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1170, citing Grokster, 545 U.S. at 930. “‘[M]ere knowledge of infringing potential or of actual
infringing uses would not be enough[.]” Grokster, 545 U.S. at 937, citing Sony, 464 U.S. at 439.
As to specific instances of alleged infringement, which Plaintiffs have presented no
evidence of, when a website operator “cannot reasonably verify a claim of infringement . . .
because of a possible fair use defense,” the operator’s “lack of knowledge will be found
reasonable,” defeating any claim that the operator intended to induce infringement. Religious
Tech. Ctr. v. Netcom On-Line Commc’n Servs., Inc., 907 F. Supp. 1361, 1374 (N.D. Cal. 1995);
see also Costar Grp. Inc. v. Loopnet, Inc., 164 F. Supp. 2d 688, 698 (D. Md. 2001) aff’d, 373
F.3d 544 (4th Cir. 2004) (the theory of “knowledge giving rise to liability only exists when there
is no colorable claim of users’ noninfringment.”).
Here, there is clearly at least a colorable claim that users who share the 1999 standards, if
such user existed, were not infringing copyright, for the same reasons that Public Resource’s
own use of the Standards was noninfringing. This reasonable belief means that Public Resource
did not intend for website visitors to infringe copyright in the Standards.
In addition, Plaintiffs have not even established that Public Resource knew or could know
of any infringing reproductions, as opposed to mere viewing of the 1999 Standards. The operator
of a website can observe and log instances where a device on the Internet accesses data on the
website. (SMF ¶ 99.) Public Resource kept such logs during this litigation with respect to the
1999 Standards. (ECF No. 60-23 [Hudis Decl. Exh. T, at 7].) However, a website operator has no
way of knowing whether any access to data resulted in a reproduction being made (or why), just
as a library has no way of knowing whether a patron made photocopies of a book while
borrowing it (and if they did, whether it was a fair or otherwise permitted use). (SMF ¶ 100.)

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Plaintiffs cite no evidence to the contrary. Instead, they apparently assume that
knowledge about third-party access to the 1999 Standards implies knowledge that reproductions
occurred. (See Pls. Mem. 35.) It does not. Nor did AERA Vice President John Nelkirk’s email to
Mr. Malamud put Public Resource on notice of any third-party reproductions, as Plaintiffs
represent. The email said only that the 1999 Standards were posted to the Public Resource
website and that AERA believed that posting to be “unlawful.” (ECF No. 60-45 [Hudis Decl. Ex.
JJ].) It did not mention any reproduction or other infringement by third parties. See Newborn v.
Yahoo!, Inc., 391 F. Supp. 2d 181, 189 (D.D.C. 2005) (dismissing claim of contributory
infringement where plaintiff “provided the defendants with only scant information to which they
can evaluate the claims against them”).
Finally, Plaintiffs have not shown that Public Resource engaged in “willful blindness” as
to any third-party reproduction of the 1999 Standards. Willful blindness applies only when a
person “was aware of a high probability of the fact in dispute and consciously avoided
confirming that fact.” Viacom Int’l Inc. v. YouTube, Inc., 940 F. Supp. 2d 110, 115 (S.D.N.Y.
2013) (quoting United States v. Aina–Marshall, 336 F.3d 167, 170 (2d Cir. 2003)). As it is
simply not possible for Public Resource, as a website operator, to know whether any visitor to
the website made a copy of the 1999 Standards as opposed to simply viewing them online,
Public Resource could not have “consciously avoided” that knowledge. And none of the
measures Plaintiffs suggest Public Resource could have taken, such as placing “restrictions on an
Internet user’s ability to download” the 1999 Standards, or applying “Digital Rights
Management,” could have given Public Resource any knowledge of infringement by third
parties. (Pls. Mem. 35.) Even if such measures were effective at preventing copying—and

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Plaintiffs have not shown this—the measures could not have informed Public Resource that
copies were made.
In summary, Plaintiffs have not shown either direct infringement by others or Public
Resource’s knowledge of any direct infringement. The claim of contributory infringement fails.
VI.

DEFENDANTS HAVE NOT JUSTIFIED, AND CANNOT JUSTIFY, A
PERMANENT INJUNCTION.
Plaintiffs cannot satisfy the first requirement for a permanent injunction: actual success

on the merits of their infringement claims. Amoco Prod. Co. v. Vill. of Gambell, AK, 480 U.S.
531, 546 n.12 (1987); see also Pub. Warehousing Co. K.S.C. v. Def. Supply Ctr. Phila., 489 F.
Supp. 2d 30, 35 (D.D.C. 2007) (“If a plaintiff has no likelihood of success on the merits, inquiry
into the remaining factors is unnecessary.”).
Moreover, as an equitable remedy, an injunction does not follow automatically from
success on the merits. Plaintiffs must prove all four elements: “(1) that [they have] suffered an
irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate
to compensate for that injury; (3) that, considering the balance of hardships between the
plaintiff[s] and defendant, a remedy in equity is warranted; and (4) that the public interest would
not be disserved by a permanent injunction.” eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388,
391 (2006). These factors provide separate and independent grounds for denying an injunction.
A.

Plaintiffs Have Experienced No Irreparable Injury to Any Valid Legal
Interest.

Irreparable injury cannot be presumed. Plaintiffs must prove a “likelihood of substantial
and immediate irreparable injury.” Apple, Inc. v. Samsung Electronics Co., 678 F.3d 1314, 1325
(Fed. Cir. 2012) (quoting O’Shea v. Littleton, 414 U.S. 488, 502 (1974)). They cannot prove
irreparable injury here.

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1.

Plaintiffs have no competent evidence of future harm.

As described above with respect to fair use, Plaintiffs have not shown that Public
Resource’s posting of the 1999 Standards caused them financial harm. Plaintiffs use revenues
from sales of the current edition of the Testing Standards to fund development of the next
edition. (SMF ¶ 101.) Once they publish a new edition, Plaintiffs do not market old, superseded
editions. (SMF ¶ 102.) They recall unfilled orders for old editions, destroy unsold copies, and
post warnings that prior editions should not be used. (SMF ¶ 103.) Thus, Plaintiffs are not
seeking any “business opportunities” with respect to the 1999 Standards.
Moreover, the development of the 2014 edition was fully funded more than three times
over at the time of its publication. Plaintiffs spent approximately $400,000 to develop the 2014
Standards (SMF ¶ 104.)

SMF ¶ 105.)

(Id.)
The 2014 edition has not become law to Public Resource’s knowledge. Unless that event
occurs, Public Resource will not consider posting the 2014 edition online. (SMF ¶ 40.) Plaintiffs’
claim of copyright in the 2014 edition remains unchallenged for the indefinite future.
In light of these facts, Plaintiffs’ claim that Public Resource’s posting “jeopardizes”
continued development of the Standards, (Pls. Mem. 56), depends on a chain of false or
unsupported suppositions: that Plaintiffs are depending on future revenues from the sale of the
1999 Standards to fund future development (which they are not); that the 2014 edition will soon
be incorporated into law (which is speculative and could be discouraged by Plaintiffs); that
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Public Resource will post it soon after that (which depends on its future priorities, see SMF ¶
40); that the posting will have a significant effect on sales (which is contradicted by Plaintiffs’
sales data to date); and that all of this will happen before Plaintiffs have funded the development
of the next edition (which has likely occurred already). Alleged harm that is “merely feared as
liable to occur at some indefinite time in the future” does not justify an injunction. Connecticut v.
Massachusetts, 282 U.S. 660, 674 (1931).
2.

“Loss of control” without actual business injury does not authorize an
injunction.

Plaintiffs claim a “right to determine how [the 1999 Standard] is distributed to the
public.” (SMF¶ 58, 96.) As a matter of law, claiming a “statutory right to exclude” alone does
not entitle a party to permanent injunctive relief, because “the creation of a right is distinct from
the provision of remedies for violations of that right,” and the equitable remedy of injunction
requires a full equitable analysis rather than “broad classifications.” eBay Inc. v. MercExchange,
L.L.C., 547 U.S. 388, 392–93 (2006). Having shown no real and non-speculative prospect of
future business harm, Plaintiffs cannot rest their claim for an injunction on an alleged “loss of
control,” as this would amount to a forbidden presumption in favor of an injunction. See id.
A.

An Injunction Would Harm Public Resource’s Ability to Serve the Public
Interest.

While Plaintiffs have shown no likelihood of experiencing irreparable harm, by contrast a
permanent injunction will harm Public Resource’s mission of providing the public with access to
the full universe of government edicts.
C.

The Public Interest Favors Access to Laws, Edicts, and Records of
Government.

Plaintiffs have expressed an intention to restrict access to and distribution of the 1999
Standards despite their status as binding law, and they claim a right to do so. (SMF ¶ 58.) Given

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that intention, enjoining Public Resource from facilitating access to the 1999 Standards would be
particularly detrimental to the public interest. For example, by law, the 1999 Standards (not the
2014 edition) govern the design of widely used tests that determine eligibility for most federal
student financial aid for those without high school diplomas. 34 C.F.R. §§ 668.141(a)(1),
668.146(b)(6). Students, parents, teachers, researchers, and new entrants in the market for
government-approved tests all have an interest in knowing the full scope of the government’s
requirements for such tests and in communicating those requirements to others. If Plaintiffs are
able to enjoin Public Resource and others from reproducing and communicating the 1999
Standards, those with an interest in the law of testing will need to search for the few remaining
publicly available paper copies or to ferret out the obscure single link on AERA’s website
(assuming that AERA maintains it) that leads to an order form, pay $45.95, and wait for a
physical delivery. (SMF ¶ 59.)
In contrast to the gauntlet that Plaintiffs impose on those who need or want access to the
law of testing, nearly all other binding laws and regulations in the nation are no farther away than
a smartphone, tablet, or the Internet terminal in a public library, and they can be accessed,
printed, transmitted, excerpted, and annotated for free. Giving Plaintiffs the ability to limit or
withhold access to an important piece of state and federal law does not serve the public interest.
Plaintiffs ignore the importance of public access to the law, arguing that only “upholding
copyright protection” can satisfy the public interest test for an injunction. (Pls. Mem. 58.) The
Supreme Court has long since rejected any approach that would collapse the public interest
inquiry into the merits. Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 26–27, 32 (2008)
(“[t]he balance of equities and consideration of the public interest . . . are pertinent in assessing
the propriety of any injunctive relief.”); eBay, 547 U.S. at 393 (forbidding “broad classifications”

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in place of equitable analysis). And, as described above, Plaintiffs’ self-serving threat that they
will “cease” to develop testing standards without the power to withhold access to older versions
is contradicted by their own sales data.
Copyright exists primarily to advance the public good, not private financial reward:
The monopoly privileges that Congress may authorize are neither unlimited nor
primarily designed to provide a special private benefit. Rather, the limited grant is
a means by which an important public purpose may be achieved. It is intended to
motivate the creative activity of authors and inventors by the provision of a
special reward, and to allow the public access to the products of their genius after
the limited period of exclusive control has expired.
Sony, 464 U.S. at 429. The development of “recommended best practices for testing design and
administration,” (Pls. Mem. 57), is not at stake here. Public access is at stake. The public interest
strongly favors denying an injunction.
CONCLUSION
The various legal authorities and arguments of Public Resource above provide
independent pathways to the same inescapable result: the 1999 Standards are law, and the AERA
Plaintiffs cannot stop Public Resource from sharing the law. On each of these bases, the Court
should grant summary judgment to Public Resource and deny Plaintiffs’ motion for injunction.

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Dated:

January 21, 2016

Respectfully submitted,
/s/ Andrew P. Bridges
Andrew P. Bridges (admitted)
[e-mail]
Sebastian E. Kaplan (pro hac vice pending)
[e-mail]
Matthew Becker (admitted)
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Telephone: [phone]
Facsimile: [phone]
Corynne McSherry (admitted pro hac vice)
[e-mail]
Mitchell L. Stoltz (D.C. Bar No. 978149)
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
Facsimile: [phone]
David Halperin (D.C. Bar No. 426078)
[e-mail]
1530 P Street NW
Washington, DC 20005
Telephone: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

SF/5546626.14

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EXHIBIT 2

Case 1:14-cv-00857-TSC Document 103-3 Filed 03/15/16 Page 2 of 26

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA

AMERICAN EDUCATIONAL RESEARCH
ASSOCIATION, INC., AMERICAN
PSYCHOLOGICAL ASSOCIATION, INC., and
NATIONAL COUNCIL ON MEASUREMENT IN
EDUCATION, INC.,
Plaintiffs,
v.
PUBLIC.RESOURCE.ORG,
Defendant.

Case No. 1:14-CV-00857-TSC-DAR
STATEMENT OF MATERIAL FACTS
IN SUPPORT OF DEFENDANTCOUNTERCLAIMANT
PUBLIC.RESOURCE.ORG, INC.’S
MOTION FOR SUMMARY
JUDGMENT AND OPPOSITION TO
PLAINTIFFS’ MOTION FOR
SUMMARY JUDGMENT AND
PERMANENT INJUNCTION
Action Filed: May 23, 2014

[REDACTED VERSION]
Pursuant to the Local Civil Rule 7(h), Defendant-Counterclaimant Public.Resource.Org,
Inc. (“Public Resource”) contends that there are no genuine disputes as to the following facts.
Each of the following facts supports Public Resource’s Motion for Summary Judgment:
Short Form Citation

Document Title

C. Malamud Decl.

Declaration of Carl Malamud, dated
January 21, 2016

M. Becker Decl.

Declaration of Matthew Becker, dated
January 21, 2016

Request for Judicial Notice

Public Resource’s Request for Judicial Notice,
dated January 21, 2016

Butler Dep.

Deposition of Christopher Butler, Internet
Archive, dated December 2, 2014

Butler Ex.

Exhibit marked in the deposition of
Christopher Butler, Internet Archive, dated
December 2, 2014

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Case 1:14-cv-00857-TSC Document 103-3 Filed 03/15/16 Page 3 of 26

Short Form Citation

Document Title

Camara Dep.

Deposition of Wayne Camara, dated May 1,
2015.

Camara Ex.

Exhibit marked in the deposition of Wayne
Camara, dated May 1, 2015.

Ernesto Dep.

deposition of Marianne Ernesto, dated April
29, 2015

Ernesto Ex.

Exhibit marked in the deposition of Marianne
Ernesto, dated April 29, 2015

Fruchterman Rep.

Expert Report of James Fruchterman, dated
June 13, 2015

Geisinger Dep.

Deposition of Kurt F. Geisinger, dated
September 10, 2015

Geisinger Ex.

Exhibit marked in the deposition of Kurt F.
Geisinger, dated September 10, 2015

Levine Dep.

Deposition of Felice Levine, dated May 4,
2015

Levine Ex.

Exhibit marked in the deposition of Felice
Levine, dated May 4, 2015

Malamud Dep.

Deposition of Carl Malamud, dated May 12,
2015

Malamud Ex.

Exhibit marked in the deposition of Carl
Malamud, dated May 12, 2015

Schneider Dep.

Deposition of Diane L. Schneider, dated April
23, 2015

Schneider Ex.

Exhibit marked in the deposition of Diane L.
Schneider, dated April 23, 2015

Wise Dep.

Deposition of Lauress Wise, dated May 11,
2015

Wise Ex.

Exhibit marked in the deposition of Lauress
Wise, dated May 11, 2015

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Case 1:14-cv-00857-TSC Document 103-3 Filed 03/15/16 Page 4 of 26

STATEMENT OF MATERIAL FACTS
I.

FACTUAL BACKGROUND
1.

Public.Resource.org is a nonprofit corporation, funded entirely by donations,

contributions, and grants. January 21, 2015 Declaration of Carl Malamud in support of Public
Resource’s Motion for Summary Judgment and Opposition to Plaintiffs’ Motion for Summary
Judgment (“C. Malamud Decl.”) ¶ 3, 30.
2.

Public Resource’s core mission is to make the law and other government

materials more widely available so that people, businesses, and organizations can easily read and
discuss our laws and the operations of government. This involves maintaining public works
projects on the Internet, including the publication of statutes, regulations, and other material that
constitutes the law. C. Malamud Decl. ¶ 4, Ex. 1.
3.

Public Resource maintains an archive of laws and other government authored

materials on several domains under the public.resource.org website. C. Malamud Decl. ¶ 9–14.
4.

Public Resource has made judicial opinions, Internal Revenue Service records,

patent filings, and safety regulations accessible on the Internet. C. Malamud Decl. ¶ 10.
5.

Public Resource does not charge for access to the archive of laws and other

government authored materials on several domains under the public.resource.org website. C.
Malamud Decl. ¶ 24. Public Resource has never sought benefit or compensation from its posting
of the 1999 Standards and has never used it as a marketing device. Id. ¶ 31.
6.

Public Resource does not accept donations or gifts that are tied to the posting of

specific standards or groups of standards. C. Malamud Decl. ¶ 30.

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7.

Public Resource’s operating income is not based on the amount of traffic its

websites receive, and Public Resource does not advertise on its websites. C. Malamud Decl.
¶ 30.
8.

The 1999 Standards that Plaintiffs published were developed by unpaid

volunteers. Plaintiffs’ Statement of Material Facts (“Pls. SMF”) ¶ 10; Index of Consolidated
Exhibits (“ICE”) Ex. 2 (Schneider Dep. 90:5–10).
9.

Plaintiffs highlight the work of the 17 volunteer Joint Committee members who

helped develop the 1999 Standards, but these are just a subset of all contributors to the 1999
Standards. Hundreds of individuals, organizations, and government entities provided proposed
text and comments for 1999 Standards. Listed in the preface to the 1999 Standards alongside the
Joint Committee members are sponsoring associations, scientific and professional membership
organizations, credentialing boards, government and federal agencies, test publishers, and
academic institutions. The preface states: “Draft versions of the Standards were widely
distributed for public review and comment three times during this revision effort, providing the
Committee with a total of nearly 8,000 pages of comments. Organizations who submitted
comments on drafts are listed below. Many individuals contributed to the input from each
organization . . . .” ICE Ex. 3 (Ernesto Dep. 147:25–148:08; 149:12–150:24); ICE Ex. 29
(Ernesto Ex. 1105, Preface to 1999 Standards listing contributors).
10.

The volunteers draft the standards to achieve a consensus of best practices in the

areas covered by the 1999 Standard. ICE Ex. 2 (Schneider Dep. 176:23–177:06.)
11.

In December 1999, one of the plaintiffs, AERA, sought and obtained a copyright

registration claiming to be the sole author of the 1999 Standards. Ex. 3 (Ernesto Dep. 32:07–25);
ICE Ex. 10 (Ernesto Ex. 1064, Copyright Right Office TX Form).

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12.

In February 2014, Plaintiffs obtained a supplemental copyright registration that

listed each plaintiff organization as an author and owner of the 1999 Standards. ICE Ex. 3
(Ernesto Dep. 32:07–34:01; 122:23–124:08); ICE Ex. 28 (Ernesto Ex. 1104, Copyright
Registration).
13.

In February 2014, Plaintiffs did not yet have any alleged copyright assignments

from the people who authored the 1999 Standards. It was not until two months later, in April of
2014 and throughout the rest of that year, that Plaintiffs began to obtain alleged copyright
assignments from some of these individuals. ICE Ex. 3 (Ernesto Dep. 42:11–22; 124:12–127:12;
141:25–13); ICE Exs. 11 (Ernesto Ex. 1065), 13 (Ernesto Ex. 1069), 14 (Ernesto Ex. 1070), 15
(Ernesto Ex. 1071), 16 (Ernesto Ex. 1072), 17 (Ernesto Ex. 1075), 18 (Ernesto Ex. 1078), 19
(Ernesto Ex. 1082), 20 (Ernesto Ex. 1085), 21 (Ernesto Ex. 1086), 22 (Ernesto Ex. 1089), 23
(Ernesto Ex. 1090), 24 (Ernesto Ex. 1091), 25 (Ernesto Ex. 1094), 26 (Ernesto Ex. 1097).
14.

In their motion, Plaintiffs refer to 13 of these alleged assignments as “work made-

for-hire letters.” These documents were signed a decade-and-a-half after completion of the 1999
Standards, and no work for hire agreements existed prior to 2014. ICE Ex. 3 (Ernesto Dep.
141:25–142:13). At deposition, Plaintiffs’ Rule 30(b)(6) designee on the subject of copyright
ownership identified these documents as “assignments,” rather than work made-for-hire letters.
ICE Ex. 3 (Ernesto Dep. 44:22–09).
15.

In their motion, Plaintiffs refer to two of these alleged assignments as

“posthumous assignments.” These alleged posthumous assignments were made without
Plaintiffs providing any consideration to the assignees, despite the assignment claiming that
“good and valuable consideration” had been delivered to the alleged heirs who signed them. ICE
Ex. 3 (Ernesto Dep. 81:03–82:14; 85:19–87:03).

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16.

Plaintiffs now claim to be “joint owners” of the standards. (Plaintiffs’

Memorandum of Points and Authorities, ECF 60-1 (“Pls. Mem.”) at 12.)
17.

Plaintiffs’ staffs provide facilitative and administrative functions towards the

development of the 1999 Standards, but they do not author the standards or control the final
content. ICE Ex. 3 (Ernesto Dep. 34:02–40:07).
18.

Plaintiffs have not sought or obtained assignments from the many hundreds of

individuals and organizations that participated in the development of the 1999 Standards. ICE
Ex. 3 (Ernesto Dep. 147:25–151:25).
19.

Plaintiffs have not taken any steps to ensure that the alleged assignors had

authority to assign copyrights to the Plaintiffs. Plaintiffs simply assumed that the assignors had
ownership of the copyrights at issue and were able to grant them to Plaintiffs through the alleged
assignments. ICE Ex. 3 (Ernesto Dep. 152:02–154:20).
20.

The 1999 Standards are incorporated by reference into federal law at 34 C.F.R.

§ 668.146. Plaintiffs acknowledge that the 1999 Standards have been incorporated by reference
into the law. Pls. Mem. at 13–14.
21.

The 1999 Standards are also incorporated into state law. See, e.g., Md. Admin.

Rule 09.12.26.06(E)(1)(c)(i); Minn. Admin. Rule 4761.2460, Subp. 2(C).
22.

In order to enact rules, a federal agency must follow minimum procedures to

guarantee adequate public notice and opportunity to comment. 5 U.S.C. §553.
23.

A federal agency must publish proposed rule changes in the Federal Register,

including changes to a standard incorporated by reference into the Code of Federal Regulations.
5 U.S.C. §553(b); 1 C.F.R. § 51.11(a) (2015).

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24.

A standard incorporated by reference into the Code of Federal Regulations must

be a “proposed rule” or “final rule” of a federal agency. 1 C.F.R. §51.5(a)-(b) (2015).
25.

Before the federal government incorporates a standard by reference into law as a

final rule, it must be approved by the Director of the Federal Register. 1 C.F.R. § 51.3 (2015).
26.

Standards are incorporated by reference—as opposed to reprinting the entire text

of the standards—to limit the length of the Code of Federal Regulations. Request for Judicial
Notice (“RJN”) ¶ 1, ICE Ex. 65 (“Incorporation by Reference” webpage of the Office of the
Federal Register, http://www.archives.gov/federal-register/cfr/ibr-locations.html).
27.

Standards incorporated by reference into the Code of Federal Regulations are

made available in the Washington D.C. reading room of the Office of the Federal Register, or for
purchase from the Plaintiffs. The Office of the Federal Register directs people who want to read
incorporated standards to “contact the standards organization that developed the material.”
Alternatively, one may submit a written request to the Office of the Federal Register to inspect
(and make limited photocopies of) an incorporated standard in Washington, D.C. RJN ¶ 1, ICE
Ex. 65.
28.

Public Resource posted versions of the 1999 Standards on its website and on the

Internet Archive website. C. Malamud Decl. ¶ 25.
29.

The 1999 Standards were promulgated as private industry standards for over 11

years before being incorporated into law by the Department of Education on July 1, 2011. RJN
¶ 8, ICE Ex. 72 (“Program Integrity Issues,” Federal Register, available at: https://www.federal
register.gov/articles/2010/10/29/2010-26531/program-integrity-issues#h-4).
30.

The Plaintiffs have acknowledged that individuals would want to read the 1999

Standards because people “believe they still may be held accountable” to them. Pls. Mem. 1, 11.

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31.

The Office of the Federal Register states: “The legal effect of incorporation by

reference is that the material is treated as if it were published in the Federal Register and CFR.
This material, like any other properly issued rule, has the force and effect of law. Congress
authorized incorporation by reference in the Freedom of Information Act to reduce the volume of
material published in the Federal Register and CFR.” RJN ¶ 1, ICE Ex. 65.
32.

The Office of the Federal Register is required to maintain a copy of each

incorporated standard. It makes a copy of each standard available for public viewing, upon
written request for an appointment, at its Washington, D.C. reading room. RJN ¶ 1, ICE Ex. 65.
33.

Failure to comply with the standards incorporated by law may result in penalties.

Under 34 C.F.R. § 668.146, the Higher Education Act requires states to comply with the 1999
Standards in developing and administering a variety of tests in order to receive federal aid.
Federal aid to students under the Department of Education’s Title IV program totals
approximately $150 billion annually. RJN ¶ 2, ICE Ex. 66 (New York Times, “Putting a Number
on Federal Education Spending”); RJN ¶ 3, ICE Ex. 67 (“Federal Pell Grant Program—Funding
Status”). Title IV programs include Federal Perkins Loans, Direct Loans (including Stafford and
PLUS loans), Pell Grants, and Federal Work Study, representing the majority of federal student
aid. RJN ¶ 4, ICE Ex. 68 (“What are Title IV Programs?”). For-profit colleges in 2009 were
taking in as much as $32 billion of that amount. RJN ¶ 5, ICE Ex. 69 (Senate Health Education
Labor & Pensions Committee report, For Profit Higher Education: The Failure to Safeguard the
Federal Investment and Ensure Student Success”).
34.

One specific example of the effect of the 1999 Standards’ incorporation into law

is their role in the so-called “ability to benefit” (ATB) program. This program allows access to
federal aid for students who lack a high school diploma or a GED certificate if they either (1)

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Case 1:14-cv-00857-TSC Document 103-3 Filed 03/15/16 Page 10 of 26

complete at least 6 credit hours in a post-secondary school; or (2) pass an independently
administered Department of Education approved ability to benefit test. Congress abolished the
ability to benefit program in 2012 but restored it in 2014. RJN ¶ 6, ICE Ex. 70 (Department of
Education letter, DCL ID: GEN-15-09, “Title IV Eligibility for Students Without a Valid High
School Diploma Who Are Enrolled in Eligible Career Pathway Programs”). In a 2009 report, the
U.S. Government Accountability Office raised concerns that some for-profit colleges were
helping students cheat on the ability to benefit test or falsifying test results. RJN ¶ 7, ICE Ex. 71
(GAO, PROPRIETARY SCHOOLS: Stronger Department of Education Oversight Needed to
Help Ensure Only Eligible Students Receive Federal Student Aid, August 2009).
35.

The Department of Educations responded by issuing new regulations for ATB

tests, codified at 34 CFR 668.146, with specific requirements to enhance the quality and integrity
of the tests. To be approved by the Secretary of Education, an ATB test must “Meet all standards
for test construction provided in the 1999 edition of the Standards for Educational and
Psychological Testing,” i.e. the 1999 Standards. 34 C.F.R. § 668.146(b)(6). The 1999 Standards
are referenced again with respect to tests conducted in foreign languages for non-native speakers
of English, 34 C.F.R. § 668.148(a)(1)(iv), for test modifications to accommodate students with
disabilities, 34 C.F.R. § 668.148(a)(2)(i), and for specific requirements for computer-based tests.
34 C.F.R. § 668.148(a)(3)(i)
36.

The Department made one specific change to its final version of the 2010 Rule,

codified at § 668.146(b)(6), in response to a comment pointing out that the Department’s
proposed rule used outdated language present in the 1985 AERA Standards, but revised in the
1999 Standards. 75 F.R. 66923. Department officials deliberately shaped the regulation to
harmonize its printed provisions with those provisions that were incorporated by reference, i.e.

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Case 1:14-cv-00857-TSC Document 103-3 Filed 03/15/16 Page 11 of 26

the 1999 Standards.
37.

Beginning in 2008, Public Resource began posting state safety regulations and

statutes online, including portions of the incorporated standards in this case. Public Resource
purchased paper copies of the codes and scanned them into PDF files. Public Resource then
applied metadata and optical character recognition (“OCR”) to the PDF files. Public Resource
also placed a cover sheet on each document to make it clear that Public Resource was posting the
document because it had been incorporated by reference into law. Public Resource improved this
process over time and began posting some of the standards in HTML format, which included
converting formulas and graphics into appropriate formats. C. Malamud Decl. ¶¶ 16–17. The
version of the 1999 Standards that Public Resource posted to the Internet Archive underwent
OCR and was converted into a variety of file formats. Becker Decl. ¶ 51, Ex. 51 (Fruchterman
Rep. 11–12).
38.

In 2012, Public Resource began to post copies of standards incorporated by

reference into law on its website. Public Resource began by purchasing paper copies of 73
standards, copying them and placing a cover sheet and notice of incorporation on each one, and
sending the copies and additional material to government officials and ten SDOs. Then, Public
Resource began searching for copies of additional incorporated standards, many of which were
not available from the SDOs, likely because the version incorporated into law had been
superseded by a later version of the standard. C. Malamud Decl. ¶¶ 20–23. Public Resource’s
regular practice is to further convert the standards it posts into standard Hypertext Markup
Language (HTML) to make them still more accessible. It intended to do so for the 1999
Standards but the filing of this lawsuit interrupted that work. Id. ¶ 25. Public Resource also

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Case 1:14-cv-00857-TSC Document 103-3 Filed 03/15/16 Page 12 of 26

works to ensure that standards incorporated by reference into law, along with the other legal
materials it posts, are indexed and represented accurately by search engines. Id. ¶ 29.
39.

In May 2014, Plaintiffs sued Public Resource for posting on its website and the

Internet Archive website the 1999 Standards. Compl. ECF No. 1. Subsequently, so as to ensure
a full record, in June 2014 Public Resource agreed to take down the versions of the 1999
Standards that it had posted on its website and on the Internet Archive website, pending the
resolution of this case. C. Malamud Decl. ¶ 25; ICE Ex. 9 (Malamud Ex. 43).
40.

Shortly thereafter, in August 2014, Plaintiffs published the new 2014 edition of

the Standards for Educational and Psychological Testing (“the 2014 Standards”), and then
subsequently removed the 1999 Standards from sale. Plfs. SMF ¶ 35; ICE Ex. 5 (Levine Dep.
42:12–23; 43:09–24). Public Resource has not posted the 2014 edition of the Standards
anywhere. C. Malamud Decl. ¶ 33. Public Resource would only consider posting an electronic
copy of the 2014 edition of the Standards if it were incorporated into law. Id.; ICE Ex. 7
(Malamud Depo 308:7–9, 308:23–309:2).
41.

In the past, Plaintiffs have ceased selling the prior edition of the Standards for

Educational and Psychological Testing when a new edition is published. ICE Ex. 8 (Geisinger
Dep. 101:15–19).
42.

After the 1999 Standards were published, Plaintiffs ceased selling the prior 1985

edition of the Standards. ICE Ex. 3 (Ernesto Dep. 212:16–21). In year 2000, Plaintiffs recalled
copies of the 1985 Standards, and stated that the old stock of Standards was supposed to be
destroyed. This is Plaintiffs’ practice following the publication of a new edition of the Standards.
ICE Ex. 5 (Levine Dep. 79:23–84:11; 84:15–88:22; 90:21–92:07; 97:17–99:24); ICE Ex. 35
(1197); ICE Ex. 36 (Levine Ex. 1198); ICE Ex.37 (Levine Ex. 1200). This is despite the fact that

11

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the1985 Standards were incorporated by reference into law under 34 C.F.R. 668.146 from July 1,
1996 until they were replaced by the 1999 Standards in 2011. See 60 Federal Register 61830–
61844, Vol. 60, No. 231, Dec. 1, 1995, available at https://www.gpo.gov/fdsys/pkg/FR-1995-1201/pdf/95-29125.pdf.

ICE Ex. 3 (Ernesto Dep. 206:14–208:4).
43.

Plaintiffs only put the 1999 Standards on sale once more in July 2015 after the

issue was brought to their attention at deposition in April and May of that year. Plfs. Mem. at
11; ICE Ex. 3 (Ernesto Dep. 1, 203:15–207:10, 208:20–209:11); ICE Ex. 5 (Levine Dep. 1,
42:12–23).
44.

ICE Ex. 38 (Levine Ex. 1205); ICE Ex. 39 (Levine Ex. 1207); ICE Ex. 40 (Levine
Ex. 1208); ICE Ex. 41 (Levine Ex. 1211); ICE Ex. 5 (Levine Dep. 120:06–121:18; 148:02–
149:05). Plaintiffs’ financial data provides the following image of sales oscillation for the 1999
Standards:
Year
FY 2000
FY 2001
FY 2002
FY 2003
FY 2004
FY 2005
FY 2006

Revenue

% Change Units Sold % Change
3,797
3,755
-1.11%
5,592
48.92%
3,310
-40.81%
3,218
-2.78%
3,803
18.18%
3,888
2.24%

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Year
FY 2007[1]
FY 2008
FY 2009
FY 2010
FY 2011
FY 2012
FY 2013
FY 2014
45.

Revenue

% Change Units Sold % Change
3,077
-20.86%
3,358
9.13%
2,590
-22.87%
3,043
17.49%
2,132
-29.94%
1,649
-22.65%
1,732
5.03%
855
-50.64%

Dr. Levine attributed the

ICE Ex. 5 (Levine Dep. 141:19–142:08).

ICE Ex. 5 (Levine Dep. 114:9–17).
46.

Plaintiffs’ expert,

ECF No.
60-88 (Geisinger Decl. ¶ 25); ICE Ex. 8 (Geisinger Dep. 93:20–97:04).

ICE Ex. 8 (Geisinger Dep. 93:20–94:7; 95:6–21).

[1]

Public Resource was unable to determine a
continuous annual sales trend because Plaintiff did not produce monthly sales information.
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ICE Ex. 8 (Geisinger Dep. 94:2–7).
47.

ICE Ex. 38 (Levine Ex. 1205); ICE Ex. 39 (Levine Ex.
1207); ICE Ex. 40 (Levine Ex. 1208); ICE Ex. 41 (Levine Ex. 1211); ICE Ex. 5 (Levine Dep.
120:06–121:18; 135:11–137:03; 138:08–140:18; 148:02–149:05).
48.

In their Motion for Summary Judgment filing, Plaintiffs included an unsealed,

complete version of the 1999 Standards, split into two documents and totaling 100 pages or more
in each document. (ECF No. 60-25–60-26.) Because the document was not sealed or otherwise
designated as confidential, it is now available to the public to download. PACER charges $0.10
per page, but caps charges at $3.00 per document, so it would cost $6.00 to download a complete
version of the 1999 Standards from PACER. See “Electronic Public Access Fee Schedule,”
Pacer.gov, Dec. 1, 2013, at https://www.pacer.gov/documents/epa_feesched.pdf.
49.

RECAP is a service created by the Center for Information Technology Policy at

Princeton University and Free Law Project, through which member of the public can access
PACER documents for free. Once an individual who has RECAP installed on her computer
accesses a document on PACER, RECAP uploads the document to its system and makes it

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available to the public for free, through the RECAP website or browser plugin. See “About,”
RECAP the Law, at https://www.recapthelaw.org/about/. If someone who has the RECAP
browser plugin installed accesses Plaintiffs’ summary judgment filing on PACER, RECAP will
upload it and the public will be able to access the 1999 Standards for free.
50.

At deposition this past spring, Plaintiffs’ corporate designee asserted that they

have never made an electronic version of the 1999 Standards available to the public, nor do they
plan to. ICE Ex. 3 (Ernesto Dep. 207:11–208:04); ICE Ex. 5 (Levine Dep. 59:22–60:14).
Plaintiffs also asserted that they have not published any other versions of the 1999 Standards or
2014 Standards that would be accessible to people who are blind or visually disabled, including
braille formats. ICE Ex. 3 (Ernesto Dep. 208:05–19); ICE Ex. 5 (Levine Dep. 65:13–20, 79:09–
19).
II.

PLAINTIFFS CANNOT HOLD A STATUTORY MONOPOLY OVER THE LAW
51.

The 1999 Standards have been superseded by the 2014 Standards and are

therefore obsolete as an industry standard. Plaintiffs themselves express concern about the
continued use of the 1999 Standards, claiming that it would harm the public, and state that the
2014 Standards should be used instead. ECF No. 60-88 (Geisinger Decl. ¶ 28); ICE Ex. 8
(Geisinger Dep. 105:25–109:13, 245:22–249:14); ICE Ex. 4 (Camara Dep. 295:14–296:13); ICE
Ex. 6 (Wise Dep. 332:11–333:8).
52.

According to Wayne Camara, Plaintiffs’ Rule 30(b)(6) witness on the subject of

Plaintiffs’ efforts to influence the requirements imposed by federal and state governments
regarding incorporation by reference,
See ICE Ex. 52 (Wayne
Camara, “OCR Issues Draft Guide on Disparate Impact in Educational Testing,” Society for
Industrial and Organizational Psychology, October 1999); ICE Ex. 4 (Camara Dep. 43:16–18).
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Case 1:14-cv-00857-TSC Document 103-3 Filed 03/15/16 Page 17 of 26

53.

Plaintiff APA spends millions on lobbying every year, and that work has included

calling attention to the 1999 Standards in order “to inform particular individuals about best
practices as it relates to testing and assessment, as they might have been formulating legislation.”
ICE Ex. 3 (Ernesto Dep. 174:11–175:14); ICE Ex. 30 (Ernesto Ex. 1112).
54.

ICE Ex. 33 (Ernesto Ex. 1121); ICE
Ex. 3 (Ernesto Dep. 209:15–22). Adoption into law gives the Standards “authoritative value.”
ICE Ex. 3 (Ernesto Dep. 176:14–23).
55.
ICE Ex. 44 (Levine Ex. 1217); ICE Ex. 45 (Levine Ex. 1218); ICE Ex. 46 (Levine Ex.
1219); ICE Ex. 5 (Levine Dep. 176:22–177:01; 178:14–179:15; 179:19–180:04).
56.

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57.

The law permits parents to review testing protocols, but in order to exercise that

right, they must make their way to the Washington, D.C. reading room of the Department of
Education, or the National Archives. See 34 C.F.R. § 668.146.
58.

Plaintiffs have repeatedly emphasized their firm belief that they should be able to

control access to the 1999 Standards—including the right not to make the 1999 Standards
available at all. ICE Ex. 3 (Ernesto Dep. 222:2–223:5); ECF No. 14 (Pls. Answer ¶¶14, 19).
AERA’s representative stated that they could one day discontinue sales of the 1999 Standards
again. ICE Ex. 5 (Levine Dep. 55:09–56:10)..
59.

In July 2015, shortly after Public Resource raised the issue of future sales of the

1999 Standards in depositions, AERA placed a single link to the 1999 Standards from the page at
which it sells the 2014 edition of the Standards. “Standards for Educational & Psychological
Testing (2014 Edition),” AERA, at http://www.aera.net/Publications/Books/Standardsfor
EducationalPsychologicalTesting%28NewEdition%29/tabid/15578/Default.aspx. The linked
page advises users that Plaintiffs “recommend use of the 2014 Standards as the authoritative
source of testing standards.” “1999 Standards,” AERA, at http://www.aera.net/Publications/
Books/Standards%281999Ed%29/tabid/16144/Default.aspx. The 1999 edition does not appear
in the “Complete List of AERA Books” on AERA’s website. “Publications,” AERA, at
http://www.aera.net/Publications/tabid/10067/Default.aspx; “AERA Books List,” AERA,

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http://www.aera.net/Publications/Books/AERABooksList/tabid/13233/Default.aspx. And the
1999 Edition is not available for purchase through AERA’s online bookstore. Id. Instead, a
purchaser must print and fill out a “Mail or Fax Order Form” for the 1999 edition. “AERA Book
Order Form,” AERA, at http://www.aera.net/Portals/38/docs/Publications/Official%20AERA
%20Book%20Order%20Form.pdf.
60.

Plaintiffs APA and NCME maintain pages on their websites to advertise the

Testing Standards and direct visitors to the AERA store to purchase the 2014 edition but neither
of these pages links to the 1999 edition. “The Standards for Educational and Psychological
Testing,” APA, at http://www.apa.org/science/programs/testing/standards.aspx; “Testing
Standards,” NCME, at http://www.ncme.org/ncme/NCME/Publication/NCME/Publication
/Testing_Standards.aspx.
61.

Participants contribute to the Standards for three principal reasons: to
” ICE

Ex. 8 (Geisinger Dep. 219:1–5).
62.

APA benefits from the Standards. ICE Ex. 6 (Wise Dep. 89:15–17).

63.

As an organization dedicated to measurement in testing, the NCME’s mission is

closely tied to the 1999 Standards.

ICE Ex. 8

(Geisinger Dep. 191:2).
64.

ICE Ex. 5 (Levine Dep. 36:19–37:18; 39:11–18).
65.
ICE Ex. 8 (Geisinger Dep. 159:1–161:17).

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66.

Plaintiffs have many other means of earning revenue, including selling other

standards that are not incorporated into law, charging membership dues and conference fees, and
obtaining government research grants, all of which are current sources of income for Plaintiffs.
See, e.g., ICE Ex. 53 (AERA “Membership Benefits”); ICE Ex. 54 (APA “Member” Webpage).
67.

Plaintiff APA’s annual revenues in 2012 alone were approximately $119 million.

ICE Ex. 8 (Geisinger Dep. 176:2–12).
68.

Matthew Bender/LexisNexis sells the District of Columbia Official Code for

$849.00. ICE Ex. 55 (LexisNexis Store webpage).
69.

Matthew Bender/LexisNexis sells the “Criminal Jury Instructions for the District

of Columbia, Fifth Edition” for $186.00. ICE Ex. 56 (LexisNexis Store webpage).
70.

Thomson Reuters/WestLaw sells “District of Columbia Rules of Court – District,

2015 ed. (Vol. 1, District of Columbia Court Rules)” for $167. ICE Ex. 57 (WestLaw Store
Webpage).
71.

Barnes & Noble sells “Moby Dick” for $8.99 in paperback as part of its Barnes &

Noble Classics Series. Barnes & Noble includes additional interpretive material such as “new
introductions,” “chronologies of contemporary historical, biographical, and cultural events,”
“study questions,” etc.” Barnes & Noble further states that the book is “beautifully designed and
[]printed to superior specifications.” ICE Ex. 58 (Barnes & Noble Store Webpage).
72.

Barnes & Noble sells “The Adventures of Tom Sawyer” for $6.25 in paperback as

part of its Barnes & Noble Classics Series. Barnes & Noble includes additional interpretive
material such as “new introductions,” “chronologies of contemporary historical, biographical,
and cultural events,” “study questions,” etc.” Barnes & Noble further states that the book is
“beautifully designed and []printed to superior specifications.” ICE Ex. 59 (Barnes & Noble

19

Case 1:14-cv-00857-TSC Document 103-3 Filed 03/15/16 Page 21 of 26

Store Webpage). Barnes & Noble promotes its Barnes & Noble Classics by calling attention to
the “original ancillary materials included in each edition.” ICE Ex. 60 (“About Barnes & Noble
Classics” Webpage).
73.
74.

[INTENTIONALLY BLANK]

75.

[INTENTIONALLY BLANK]

76.
III.

[INTENTIONALLY BLANK]

[INTENTIONALLY BLANK]

EVEN BEFORE INCORPORATION, THE STANDARDS ARE PRIMARILY
UNCOPYRIGHTABLE SYSTEMS, DISCOVERIES, PROCESSES,
PROCEDURES, AND SCENES A FAIRE.
77.

The standards “describe procedures, statistical procedures, research

procedures . . . how to design a test, how to collect evidence of its validity, how to calculate the
reliability of the tests.” ICE Ex. 4 (Camara Dep. 166:8–22).
78.

Plaintiffs desired the Joint Committee developing the standards to
ICE Ex. 4 (Camara Dep. 98:6–16).

79.

Plaintiffs goal in developing the Standards is to
in order to ensure accurate and defensible testing

protocols. ICE Ex. 4 (Camara Dep. 62:4–18).
80.

The Standards cannot be expressed in a different way. See Paragraphs 81 and 82

81.

Rephrasing the Standards would risk making the Standards unclear. ICE Ex. 2

below.

(Schneider Dep. 136:18–21).
82.
ICE Ex. 2 (Schneider Dep. 136:11–137:15).

20

Case 1:14-cv-00857-TSC Document 103-3 Filed 03/15/16 Page 22 of 26

83.

The expression of the Standards are dicated by the current state of technical

information on test development and use. ICE Ex. 4 (Camara Dep. 23:4–14, 62:2–18); ICE Ex.
34 (Camara Dep. Ex. 1157).
84.

Plaintiffs intended the 1999 Standards to remedy technical deficiencies in the

prior 1985 standards, as there were definitions and statements that
” ICE Ex. 4 (Camara Dep. 131:25–132:11).
85.

The choices in development of the Standards were also dictated by practical

requirements and industry demands, as the industry participants voiced them in the development
process. E.g., ICE Ex. 6 (Wise Dep. 82:13–20).
IV.

PUBLIC RESOURCE’S POSTING IS A LAWFUL FAIR USE.
86.

Plaintiffs sold print copies of the 1999 Standards as a guide to test designers and

administrators, and a statement of best practices for assessment professionals. ECF No. 60-25
(Hudis Decl. Ex. V at 86 (“the Standards are directed to test providers, and not to test takers.”)).
87.
. ICE Ex. 5 (Levine Dep.
50:20–23).
88.

Plaintiffs do not make the 1999 Standards available for sale in electronic formats,

only in print. Pls. Mem. 10.
89.

The Standards contain the legal requirements for tests used to determine students’

eligibility for federal grants, including whether those tests are fair to students with disabilities.
ICE Ex. 51 (Fruchterman Rep. 6); ECF No. 60-25 (Hudis Decl. Ex. V at 101–106).
90.

James Fruchterman, Public Resource’s expert on accessibility, concluded that “a

person who is blind or print disabled would have been able to locate a version of the 1999
Standards on the Public.Resource.Org website when it was still hosted there” and would be able
21

Case 1:14-cv-00857-TSC Document 103-3 Filed 03/15/16 Page 23 of 26

to “perform[] optical character recognition on the Public.Resource.Org image file” containing
the 1999 Standards. ICE Ex. 51 (Fruchterman Rep. 11–12.). The reader would then “be able to
perform all of the functional tasks: reading the entire standard, navigating to a specific place in
the standard, or searching on key terms.” Id. The version that Public Resource posted to the
Internet Archive website had optical character recognition performed on it, so it was immediately
readable by people who are blind or have visual disabilities. Id.
91.

Mr. Fruchterman could not locate the 1999 Standards on the Internet from any

source, Public Resource having disabled access to the Standards through its website and the
Internet Archive during this litigation. ICE Ex. 51 (Fruchterman Rep. 5).
92.

The 1999 Standards are not available through any of the main libraries that serve

people with print disabilities. ICE Ex. 51 (Fruchterman Rep. 5.).
93.
. ICE Ex. 5 (Levine Dep. 79:9–19).
94.

While print copies of the 1999 Standards may be available, most blind people

themselves do not have the ability to convert books and would require that their employer,
educational institution, or a specialized library for the blind create an accessible copy. ICE Ex.
51 (Fruchterman Rep. 8).
95.
ICE Ex. 43 (Levine Ex. 1214); ICE Ex. 5 (Levine
Dep. 164:6–169:4).
96.
. ICE Ex. 5 (Levine Dep.
49:17–50:8); ICE Ex. 8 (Geisinger Dep. 110:5–110:21).

22

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97.
Ex. 4 (Camara Dep. 295:9–296:7); ICE Ex. 8 (Geisinger Dep. 110:5–
110:21); ICE Ex. 6 (Wise 332:16–333:8).
V.

PUBLIC RESOURCE IS NOT SECONDARILY LIABLE.
98.

Mr. Malamud defined access to imply that a computer, not necessarily a human

being, but a computer has requested some data from another computer, and that request was
successful and the data was transferred. ICE Ex. 7 (Malamud Dep. 146:19–147:4).
99.

The operator of a website can observe and log instances where a device on the

Internet accesses data on the website. ICE Ex. 7 (Malamud Dep. 328:17–329:16).
100.

A website operator has no way of knowing whether any access to data resulted in

a reproduction being made, just as a library has no way of knowing whether a patron made
photocopies of a book while borrowing it. ICE Ex. 73 at § 4.3 (“Internet Engineering Task Force
Request for Comments 7231, "Hypertext Transfer Protocol (HTTP/1.1): Semantics and Content"
(June 2014).”). Therefore, Public Resource did not have any way of knowing whether visitors to
its sites were making copies.
VI.

DEFENDANTS HAVE NOT JUSTIFIED, AND CANNOT JUSTIFY, A
PERMANENT INJUNCTION.
101.

Plaintiffs use revenues from sales of the current edition of the Testing Standards

to fund development of the next edition. ICE Ex. 5 (Levine Dep. 82:05–14).
102.

Once Plaintiffs publish a new edition of the standards, they cease marketing the

old, superseded editions. See Paragraphs 41–42, supra.
103.

Once Plaintiffs publish a new edition of the standards, they recall unfilled orders

for old editions, destroy unsold copies, and post warnings that prior editions should not be used.
See Paragraphs 41–42, supra.

23

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104.

Plaintiffs spent approximately $400,000 to develop the 2014 Standards. ICE Ex. 8

(Geisinger Dep. 200:05–201:22.).
105.

As of December 31, 2014, just after the 2014 Standards were published,

ICE Ex. 38 (Levine Ex. 1205); ICE Ex. 42 (Levine Ex. 1212); ICE Ex. 5 (Levine Dep. 134:05–
135:07; 160:04–22); ICE Ex. 8 (Geisinger Dep. 310:20–311:03); ICE Ex. 50 (Geisinger Ex.
1263).

24

Case 1:14-cv-00857-TSC Document 103-3 Filed 03/15/16 Page 26 of 26

Dated:

January 21, 2016

Respectfully submitted,
/s/ Andrew P. Bridges
Andrew P. Bridges (admitted)
[e-mail]
Sebastian E. Kaplan (pro hac vice pending)
[e-mail]
Matthew Becker (admitted)
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Telephone: [phone]
Facsimile: [phone]
Corynne McSherry (admitted pro hac vice)
[e-mail]
Mitchell L. Stoltz (D.C. Bar No. 978149)
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
Facsimile: [phone]
David Halperin (D.C. Bar No. 426078)
[e-mail]
1530 P Street NW
Washington, DC 20005
Telephone: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

SF/5546532.5

25

Case 1:14-cv-00857-TSC Document 103-4 Filed 03/15/16 Page 1 of 48

EXHIBIT 3

Case 1:14-cv-00857-TSC Document 103-4 Filed 03/15/16 Page 2 of 48

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA

AMERICAN EDUCATIONAL RESEARCH
ASSOCIATION, INC., AMERICAN
PSYCHOLOGICAL ASSOCIATION, INC., and
NATIONAL COUNCIL ON MEASUREMENT IN
EDUCATION, INC.,
Plaintiffs,
v.
PUBLIC.RESOURCE.ORG,

Case No. 1:14-CV-00857-TSC-DAR
DEFENDANT-COUNTERCLAIMANT
PUBLIC.RESOURCE.ORG, INC.’S
STATEMENT OF DISPUTED FACTS
IN OPPOSITION TO PLAINTIFFS’
MOTION FOR SUMMARY
JUDGMENT AND PERMANENT
INJUNCTION
Action Filed: May 23, 2014

Defendant.
[REDACTED VERSION]
Pursuant to the Local Civil Rule 7(h), Defendant-Counterclaimant Public.Resource.Org
(“Public Resource”) submits in support of its Motion for Summary Judgment and in Opposition
to Plaintiffs’ Motion for Summary Judgment and Permanent Injunction, a Statement of Disputed
Facts to be tried, as follows:
Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

1. Plaintiffs, AERA, APA, and NCME, are
District of Columbia not-for-profit corporations
(Levine Decl., ¶ 4; Ernesto Decl., ¶ 3; Wise
Decl., ¶ 3).

Undisputed.

2. AERA is the major national scientific society
for research on education and learning. AERA’s
mission is to advance knowledge about
education, to encourage scholarly inquiry
related to education, and to promote the use of
research to improve education and serve the
public good (Levine Decl., ¶ 5).

Undisputed.

1

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

3. APA is the largest scientific and professional
organization representing psychology in the
United States. APA is the world’s largest
association of psychologists and counts a vast
number of researchers, educators, clinicians,
consultants and students among its members.
APA’s mission is to advance the creation,
communication, and application of
psychological knowledge to benefit society and
improve people’s lives (Ernesto Decl., ¶ 4).

Undisputed.

4. NCME is a professional organization for
individuals involved in assessment, evaluation,
testing, and other aspects of educational
measurement. NCME’s members are involved
in the construction and use of standardized
tests; new forms of assessment, including
performance-based assessment; program
design; and program evaluation (Wise Decl.,
¶ 4).

Undisputed.

5. Plaintiffs have been preparing and publishing
versions of the Standards for Educational and
Psychological Testing for over fifty years. In
1954, Plaintiff APA prepared and published the
“Technical Recommendations for Psychological
Tests and Diagnostic Techniques” (Camara
Decl., ¶ 7; Ernesto Decl., ¶ 5).

Plaintiffs have failed to adduce admissible
evidence in support of this fact.
Disputed to the extent that Plaintiffs imply that
they developed any portion of the 1999
Standards. The evidence shows that volunteers
and members of the public developed the 1999
Standards, not the Plaintiffs. (SMF ¶ 8-9, 1718.)
Plaintiffs refused to provide evidence or
testimony concerning any edition of the
Standards other than the 1999 Edition, and
they redacted documents that included
information concerning other editions of the
Standards. Plaintiffs should be precluded from
using claimed evidence that they refused to
provide during discovery.
See ICE Ex. 62 (Plaintiffs/counterclaimdefendants’ Objections and Answers to
Defendant/counterclaim-plaintiff’s First Set of
Interrogatories (Nos. 1–10) (objecting to
production of documents concerning any
publications other than the 1999 Standards and

2

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response
stating that such documents are irrelevant));
ICE Ex. Ex. 63 (correspondence PRO counsel
identifying earlier versions and redactions as
issues in discovery).

6. In 1955, Plaintiffs AERA and NCME
prepared and published a companion document
entitled, “Technical Recommendations for
Achievement Tests” (Levine Decl., ¶ 6; Camara
Decl., ¶ 7; Wise Decl., ¶ 5).

Plaintiffs have failed to adduce admissible
evidence in support of this fact.
Disputed to the extent that Plaintiffs imply that
they developed any portion of the 1999
Standards. Volunteers and members of the
public developed the 1999 Standards, not the
Plaintiffs. (SMF ¶ 8-9, 17-18.)
Disputed to the extent that Plaintiffs refused to
provide evidence or testimony concerning any
edition of the Standards other than the 1999
Edition, and redacted documents that included
information concerning other editions of the
Standards. Plaintiffs should not be allowed to
now testify on matters they refused to allow
discovery into. See ICE Ex. 62
(Plaintiffs/counterclaim-defendants’
Objections and Answers to
Defendant/counterclaim-plaintiff’s First Set of
Interrogatories (Nos. 1–10) (objecting to
production of documents concerning any
publications other than the 1999 Standards and
stating that such documents are irrelevant));
ICE Ex. Ex. 63 (correspondence PRO counsel
identifying earlier versions and redactions as
issues in discovery).

7. Subsequently, a joint committee of the three
organizations modified, revised, and
consolidated the two documents into the first
Joint Standards. Beginning with the 1966
revision, the three organizations (AERA, APA
and NCME – collectively, the “Sponsoring
Organizations”) collaborated in developing the
“Joint Standards” (or simply, the “Standards”).
Each subsequent revision of the Standards has
been careful to note that it is a revision and
update of the prior version (Levine Decl., ¶ 6;
Camara Decl., ¶ 7; Ernesto Decl., ¶ 6; Wise

Plaintiffs have failed to adduce admissible
evidence in support of these facts.
Disputed to the extent that Plaintiffs imply that
they developed any portion of the 1999
Standards. Volunteers and members of the
public developed the 1999 Standards, not the
Plaintiffs. (SMF ¶ 8-9, 17-18.)
Disputed to the extent that Plaintiffs refused to
provide evidence or testimony concerning any
edition of the Standards other than the 1999
Edition, and redacted documents that included

3

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

Decl., ¶ 6).

information concerning other editions of the
Standards. Plaintiffs should not be allowed to
now testify on matters they refused to allow
discovery into. See ICE Ex. 62
(Plaintiffs/counterclaim-defendants’
Objections and Answers to
Defendant/counterclaim-plaintiff’s First Set of
Interrogatories (Nos. 1–10) (objecting to
production of documents concerning any
publications other than the 1999 Standards and
stating that such documents are irrelevant));
ICE Ex. 63 (correspondence PRO counsel
identifying earlier versions and redactions as
issues in discovery).

8. Beginning in the mid-1950s, the Sponsoring
Organizations formed and periodically
reconstituted a committee of highly trained and
experienced experts in psychological and
educational assessment, charged with the initial
development of the Technical
Recommendations and then each subsequent
revision of the (renamed) Standards. These
committees were formed by the Sponsoring
Organizations’ Presidents (or their designees),
who would meet and jointly agree on the
membership. Often a chair or co-chairs of these
committees were selected by joint agreement.
Beginning with the 1966 version of the
Standards, this committee became referred to as
the “Joint Committee” (Levine Decl., ¶ 7;
Camara Decl., ¶ 8; Ernesto Decl., ¶ 7; Wise
Decl., ¶ 7).

Plaintiffs have failed to adduce admissible
evidence in support of these facts.

9. Financial and operational oversight for the
Standards’ revisions, promotion, distribution,

Undisputed but immaterial.

Disputed to the extent that Plaintiffs imply that
they developed any portion of the 1999
Standards. Volunteers and members of the
public developed the 1999 Standards, not the
Plaintiffs. (SMF ¶ 8-9, 17-18.)
Disputed to the extent that Plaintiffs refused to
provide evidence or testimony concerning any
edition of the Standards other than the 1999
Edition, and redacted documents that included
information concerning other editions of the
Standards. Plaintiffs should not be allowed to
now testify on matters they refused to allow
discovery into. See ICE Ex. 62
(Plaintiffs/counterclaim-defendants’
Objections and Answers to
Defendant/counterclaim-plaintiff’s First Set of
Interrogatories (Nos. 1–10) (objecting to
production of documents concerning any
publications other than the 1999 Standards and
stating that such documents are irrelevant));
ICE Ex. 63 (correspondence PRO counsel
identifying earlier versions and redactions as
issues in discovery).

4

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

and for the sale of the 1999 and 2014 Standards
has been undertaken by a periodically
reconstituted Management Committee,
comprised of the designees of the three
Sponsoring Organizations (Levine Decl., ¶ 8;
Camara Decl., ¶ 9; Schneider Decl., ¶ 4;
Ernesto Decl., ¶ 8; Wise Decl., ¶ 8).
10. All members of the Joint Committee(s) and
the Management Committee(s) are unpaid
volunteers. The expenses associated with the
ongoing development and publication of the
Standards include travel and lodging expenses
(for the Joint Committee and Management
Committee members), support staff time,
printing and shipment of bound volumes, and
advertising costs (Levine Decl., ¶ 9; Camara
Decl., ¶ 10; Schneider Decl., ¶ 5; Ernesto Decl.,
¶ 9; Wise Decl., ¶ 9).

Undisputed. Second sentence immaterial.

11. Many different fields of endeavor rely on
assessments. The Sponsoring Organizations
have ensured that the range of these fields of
endeavor is represented in the Joint
Committees’ membership – e.g., admissions,
achievement, clinical counseling, educational,
licensing-credentialing, employment, policy,
and program evaluation. Similarly, the Joint
Committee’s members, who are unpaid
volunteers, represent expertise across major
functional assessment areas – e.g., validity,
equating, reliability, test development, scoring,
reporting, interpretation, and large scale
interpolation (Levine Decl., ¶ 10; Ernesto Decl.,
¶ 10; Wise Decl., ¶ 10).

Undisputed.

12. From the time of their initial creation to the
present, the preparation of and periodic
revisions to the Standards entail intensive labor
and considerable cross-disciplinary expertise.
Each time the Standards are revised, the
Sponsoring Organizations select and arrange for
meetings of the leading authorities in
psychological and educational assessments

Undisputed but immaterial.

5

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

(known as the Joint Committee). During these
meetings, certain Standards are combined,
pared down, and/or augmented, others are
deleted altogether, and some are created as
whole new individual Standards. The 1999
version of the Standards is nearly 200 pages,
took more than five years to complete (Levine
Decl., ¶ 11; Ernesto Decl., ¶ 11; Camara Decl.,
¶ 11).
13. The 1999 Standards is the result of work put
in by the Joint Committee to generate a set of
best practices on educational and psychological
testing that are respected and relied upon by
leaders in their fields (Camara Decl., ¶ 11; Wise
Decl., ¶ 11).

Undisputed.

14. Draft revisions of the 1985 Standards, for
Undisputed.
what became the 1999 Standards, were widely
distributed for public review and comment three
times during this revision effort to gauge
whether the testing community believed the
revised drafts to be current and inclusive of the
topics at issue (Schneider Decl., ¶ 6).
15. The Joint Committee received thousands of
pages of comments and proposed text revisions
from: the membership of the Sponsoring
Organizations, scientific, professional, trade and
advocacy groups, credentialing boards, state
and federal government agencies, test
publishers and developers, and academic
institutions. While the Joint Committee
reviewed and took under advisement these
helpful comments, the final language of the
1999 Standards was a product of the Joint
Committee members (Camara Decl., ¶ 12;
Schneider Decl., ¶ 7).

6

Disputed. Many of the thousands of pages of
comments and proposed text revisions from
members of the public and government were in
fact incorporated into the 1999 Standards. See
SMF ¶ 9;

Case 1:14-cv-00857-TSC Document 103-4 Filed 03/15/16 Page 8 of 48

Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

16. When the 1985 Standards were revised,
more than half the content of the 1999
Standards resulted from newly written prose of
the Joint Committee (Camara Decl., ¶ 12).

Disputed to the extent that Plaintiffs imply that
all of this text was original to the Joint
Committee, when much of it was in fact taken
from proposed text submitted by members of
the public and government. See SMF ¶ 9;

17. The Standards originally were created as
principles and guidelines – a set of best
practices to improve professional practice in
testing and assessment across multiple settings,
including education and various areas of
psychology. The Standards can and should be
used as a recommended course of action in the
sound and ethical development and use of tests,
and also to evaluate the quality of tests and
testing practices. Additionally, an essential
component of responsible professional practice
is maintaining technical competence. Many
professional associations also have developed
standards and principles of technical practice in
assessment. The Sponsoring Organizations’
Standards have been and still are used for this
purpose (Geisinger Decl., ¶ 18; Camara Decl.,
¶ 13; Wise Decl., ¶ 12).

Undisputed.

18. The Standards, however, are not simply
Disputed to the extent that Plaintiffs imply that
intended for members of the Sponsoring
the 1999 Standards are not enforceable as law.
Organizations, AERA, APA, and NCME. The
intended audience of the Standards is broad and
cuts across audiences with varying backgrounds
and different training. For example, the
Standards also are intended to guide test
developers, sponsors, publishers, and users by
providing criteria for the evaluation of tests,
testing practices, and the effects of test use. Test
user standards refer to those standards that help
test users decide how to choose certain tests,
interpret scores, or make decisions based on

7

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

tests results. Test users include clinical or
industrial psychologists, research directors,
school psychologists, counselors, employment
supervisors, teachers, and various
administrators who select or interpret tests for
their organizations. There is no mechanism,
however, to enforce compliance with the
Standards on the part of the test developer or
test user. The Standards, moreover, do not
attempt to provide psychometric answers to
policy or legal questions (Camara Decl., ¶ 14;
Wise Decl., ¶ 13; Geisinger Decl., ¶ 19; Ernesto
Decl., ¶ 12).
19. The Standards promote the development of
high quality tests and the sound use of results
from such tests. Without such high quality
standards, tests might produce scores that are
not defensible or accurate, not an adequate
reflection of the characteristic they were
intended to measure, and not fair to the person
tested. Consequently, decisions about
individuals made with such test scores would be
no better, or even worse, than those made with
no test score information at all. Thus, the
Standards help to ensure that measures of
student achievement are relevant, that
admissions decisions are fair, that employment
hiring and professional credentialing result in
qualified individuals being selected, and
patients with psychological needs are diagnosed
properly and treated accordingly. Quality tests
protect the public from harmful decision
making and provide opportunities for education
and employment that are fair to all who seek
them (Camara Decl., ¶ 15; Wise Decl., ¶ 14).

8

Disputed to the extent Plaintiffs seek to
establish copyrightability of the Standards.
Plaintiffs have failed to adduce admissible
evidence in support of these facts. These are
not facts but opinions. Plaintiffs provide no
source other than Mr. Camara and Mr. Wise’s
conjectures to support these statements.
Neither of them are qualified as experts.

Case 1:14-cv-00857-TSC Document 103-4 Filed 03/15/16 Page 10 of 48

Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

20. The Standards apply broadly to a wide
range of standardized instruments and
procedures that sample an individual’s
behavior, including tests, assessments,
inventories, scales, and other testing vehicles.
The Standards apply equally to standardized
multiple-choice tests, performance assessments
(including tests comprised of only open-ended
essays), and hands-on assessments or
simulations. The main exceptions are that the
Standards do not apply to unstandardized
questionnaires (e.g., unstructured behavioral
checklists or observational forms), teachermade tests, and subjective decision processes
(e.g., a teacher’s evaluation of students’
classroom participation over the course of a
semester) (Camara Decl., ¶ 16; Wise Decl.,
¶ 15; Geisinger Decl., ¶ 20; Ernesto Decl.,
¶ 13).

Undisputed.

Undisputed.
21. The Standards have been used to develop
testing guidelines for such activities as college
admissions, personnel selection, test
translations, test user qualifications, and
computer-based testing. The Standards also
have been widely cited to address technical,
professional, and operational norms for all
forms of assessments that are professionally
developed and used in a variety of settings. The
Standards additionally provide a valuable public
service to state and federal governments as they
voluntarily choose to use them. For instance,
each testing company, when submitting
proposals for testing administration, instead of
relying on a patchwork of local, or even
individual and proprietary, testing design and
implementation criteria, may rely instead on the
Sponsoring Organizations’ Standards to afford
the best guidance for testing and assessment
practices (Camara Decl., ¶ 17; Wise Decl., ¶ 16;
Geisinger Decl., ¶ 21; Ernesto Decl., ¶ 14).

9

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

22. The Standards were not created or updated
to serve as a legally binding document, in
response to an expressed governmental or
regulatory need, nor in response to any
legislative action or judicial decision. However,
the Standards have been cited in judicial
decisions related to the proper use and evidence
for assessment, as well as by state and federal
legislators. These citations in judicial decisions
and during legislative deliberations occurred
without any lobbying by the Plaintiffs (Levine
Decl., ¶ 12; Camara Decl., ¶ 18; Ernesto Decl.,
¶ 15; Wise Decl., ¶ 17).

Disputed. Plaintiffs have failed to adduce
admissible evidence in support of these facts.
Plaintiffs cite no evidence concerning the
purposes for the creation or revision of the
1999 Standards, and they could not establish
the purposes behind every contribution from
the thousands of people and entities who
contributed to the development and revision of
the Standards. This is particularly the case for
contributions by governmental entities. The
APA lobbied for the 1999 Standards to be
mandated in legislation that was deliberated by
Congress. (SMF ¶ 52-56; ICE Exs. 31,

23. During the discovery phase of this litigation, Undisputed.
however, Plaintiff APA located in its archives
correspondence relating to APA’s support for
proposed legislation sought to be introduced in
2001 by Senator Paul Wellstone (D-MN) on
Fairness and Accuracy in High Stakes
Educational Decisions for Students – a
suggested amendment to the Elementary and
Secondary Education Act (“No Child Left
Behind Act”) 147 Cong. Rec. S. 4,644 (daily
ed. May 9, 2001) (Ernesto Decl., ¶¶ 16-22,
Exhs. NN-SS).
24. Some of APA’s letters are unsigned and are
not printed on APA letterhead. Therefore, in
accordance with APA practices and protocols, it
is likely that the unsigned letters (not printed on
letterhead) were internal discussion drafts that
were never sent (Ernesto Decl., ¶ 23).

10

Disputed. Plaintiffs have failed to adduce
admissible evidence in support of these alleged
“facts,” which are actually opinions. Plaintiffs
provide no source other than Ms. Ernesto’s
conjectures to support these statements, have
not provided any proof of “APA practices and
protocols” as they concern letters sent by
APA’s lobbyists, and Ms. Ernesto’s statements
in her declaration are contradicted by her

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response
statements at deposition. At deposition,

However, a document produced by APA
proves that at least one such lobbying letter
was sent: Exhibit SS to Ms. Ernesto’s
declaration is a 2002 memorandum APA
produced titled “Highlights of APA’s
Involvement in Educational Testing Provisions
of the ‘No Child Left Behind Act,’” that
describes APA’s lobbying work at the time.
This memorandum includes the full text of a
letter that APA sent on May 7, 2001 to U.S.
Senators lobbying for the mandating of the
1999 Standards through an amendment by
Senator Wellstone. At deposition,

25. Regarding the signed letters that were
printed on APA letterhead, they relate to
Senator Wellstone’s proposed legislation that
tests and assessments administered by the states
are of high quality and used appropriately for
the benefit of test administrators and test takers.
These are goals that are consistent with APA
policy as then reflected in the 1999 Standards.
Even though Senator Wellstone’s amendments
sought, in part, to mandate states’ compliance
with the Standards, none of the Sponsoring
Organizations actively advocated for this – and
in any event Senator Wellstone’s proposed
amendment including this language was never
enacted into law (Ernesto Decl., ¶ 24, Exh. TT).

11

Disputed. Plaintiffs have failed to adduce
admissible evidence in support of these facts.
Plaintiffs have no evidence to support their
statement that “none of the Sponsoring
Organizations actively advocated for
[legislation mandating the 1999 Standards],”
other than Ms. Ernesto’s conjecture in her
declaration ¶ 24, which is contradicted by her
deposition testimony and by the documents she
attaches as Exhibits QQ and SS to her
declaration. At deposition,

Case 1:14-cv-00857-TSC Document 103-4 Filed 03/15/16 Page 13 of 48

Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

owever, a document produced by
APA proves that at least one such lobbying
letter was sent: Exhibit SS to Ms. Ernesto’s
declaration is a 2002 memorandum APA
produced titled “Highlights of APA’s
Involvement in Educational Testing Provisions
of the ‘No Child Left Behind Act,’” that
describes APA’s lobbying work at the time.
This memorandum includes the full text of a
letter that APA sent on May 7, 2001 to U.S.
Senators lobbying for the mandating of the
1999 Standards through an amendment by
Senator Wellstone. At deposition,

26. APA’s search of its records did not disclose
any further communications with Congress
relating to the Standards and, to the best of
APA’s knowledge, it has not engaged in
communications with Congress regarding
citation of the Standards in legislation since
2001 (Ernesto Decl., ¶ 25).

Disputed. The documents produced by
Plaintiffs

. More recently, all three plaintiff
organizations put on an event at the Russell
Senate Office Building on Capitol Hill about
the 2014 Standards. ICE Exs. 47-49, and
27. Moreover, neither AERA nor NCME has
ever communicated with Congress for the
purpose of encouraging the enactment of the
Standards into law (Levine Decl., ¶¶ 12-13;
Wise Decl., ¶ 18).

Disputed. Plaintiffs have no evidence to
support this statement other than the conjecture
of Dr. Levine and Dr. Wise. Moreover, all
three plaintiff organizations organized and
participated in an event at the Russell Senate
Office Building on Capitol Hill about the 2014
Standards. ICE Exs. 47-49, and

12

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

28. None of the Sponsoring Organizations has
solicited any government agency to incorporate
the Standards into the Code of Federal
Regulations or other rules of Federal or State
agencies (Levine Decl., ¶ 13; Ernesto Decl.,
¶ 26; Wise Decl., ¶ 19).

Disputed. Plaintiffs have failed to adduce
admissible evidence in support of these facts.
Plaintiffs have no evidence to support this
statement other than the conjecture of
Dr. Levine, Ms. Ernesto, and Dr. Wise. At
deposition,

29. Rather, in the policymaking arena, the
Sponsoring Organizations believe the Standards
should be treated as guidelines informing the
enactment of legislation and regulations
consistent with best practices in the
development and use of tests – to insure that
they are valid, reliable and fair (Wise Decl.,
¶ 20; Ernesto Decl., ¶ 27).

Plaintiffs’ self-serving profession of “belief” is
not a material fact. Moreover, disputed to the
extent that Plaintiffs do not specify a time
frame for this belief. They may believe this
now, but in the past

Plaintiffs also organized
an event on Capitol Hill about the 2014
Standards as recently as September 2014. ICE
Exs. 47-49,
30. Plaintiffs promote and sell copies of the
Standards via referrals to the AERA website, at
annual meetings, in public offerings to students,
and to educational institution faculty.
Advertisements promoting the Standards have
appeared in meeting brochures, in scholarly
journals, and in the hallways at professional
meetings (Levine Decl., ¶ 14, Exh. NNN;
Ernesto Decl., ¶ 28, Exh. UU; Wise Decl., ¶ 21,
Exh. KKK).

13

Disputed to the extent that Plaintiffs did not
sell copies of the 1999 Standards for
approximately one year during this litigation,
they do not promote the 1999 Standards or
earlier editions, and they do not sell earlier
editions of the Standards. Plfs Mem. at 11;
SMF ¶¶ 40, 43.

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

31. All copies of the Standards bear a copyright
notice (Levine Decl., ¶ 15, 28, Exh. TTT).

Disputed to the extent that Plaintiffs refer to
any edition of the Standards other than the
1999 edition, which is the only edition that
Plaintiffs have provided evidence as to the
placement of a copyright notice. Moreover,
the 1999 edition is the only edition at issue in
this litigation, and Plaintiffs have refused to
allow discovery into other editions of the
Standards. See ICE Ex. 62
(Plaintiffs/counterclaim-defendants’
Objections and Answers to
Defendant/counterclaim-plaintiff’s First Set of
Interrogatories (Nos. 1–10) (objecting to
production of documents concerning any
publications other than the 1999 Standards and
stating that such documents are irrelevant));
ICE Ex. 63 (correspondence PRO counsel
identifying earlier versions and redactions as
issues in discovery).

32. Distribution of the Standards is closely
Disputed. Distribution of the Standards is not
monitored by the Sponsoring Organizations.
closely monitored by the Sponsoring
AERA, the designated publisher of the
Organizations. At deposition,
Standards, sometimes does provide promotional
complementary print copies to students or
professors. Except for these few complementary
print copies, however, the Standards are not
given away for free; and certainly they are not
made available to the public by any of the three
organizations for anyone to copy free of charge
.
(Levine Decl., ¶ 16; Ernesto Decl., ¶ 29; Wise
Decl., ¶ 22).
33. To date, Plaintiffs have never posted, or
authorized the posting of, a digitized copy of
the 1999 Standards on any publicly accessible
website (Levine Decl., ¶ 16; Ernesto Decl.,
¶ 30; Wise Decl., ¶ 23).

Undisputed.

34. The 1999 Standards have been sold at
modest retail prices ranging from $25.95 to
$49.95 per copy. From 2000 to 2014, except for
the near two-year period during which Public
Resource posted unauthorized copies online and

Disputed to the extent that sales of the 1999
Standards peaked in 2002 and have been
declining since then, and declined more rapidly
in the year prior to when Public Resource
posted the 1999 Standards than they did

14

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

sales diminished significantly, income
generated from sales of the 1999 Standards, on
average, had been approximately in excess of
$127,000 per year (Levine Decl., ¶¶ 17-18
Exh. OOO).

subsequent to Public Resource’s actions.
Additionally, sales of the 1999 Standards
increased in the year after Public Resource
posted the 1999 Standards. (SMF ¶ 44, 47.)
The characterization of the retail prices of the
1999 Standards as “modest” is an opinion, not
a fact, and Dr. Levine is not qualified as an
expert on the subject of the reasonableness of
pricing for access to the law.

35. After the 2014 Standards were published in
the late summer of 2014, AERA for a time
discontinued sales of the 1999 Standards. This
was to encourage sales of the newly-revised
edition – the 2014 Standards (Levine Decl.,
¶ 19, Exh. PPP). However, so long as
purchasers are made aware that it is no longer
the current edition, the 1999 Standards do have
an enduring value for those in the testing and
assessment profession who (i) need to know the
state of best testing practices as they existed
between 1999 and 2014, (ii) believe they still
may be held accountable to the guidance of the
1999 Standards even now, and/or (iii) study the
changes in best testing and assessment practices
over time. For these reasons, in the summer of
2015 AERA resumed sales of the 1999
Standards (Levine Decl., ¶ 20, Exh. QQQ).

Disputed that Plaintiffs resumed sale of the
1999 Standards in 2015 because of the reasons
asserted. Plaintiffs appear to have resumed
selling the 1999 Standards to support their
position in this litigation. This is evident first
because Plaintiffs have not resumed the sale of
any other edition of the Standards, even though
every edition would qualify under the factors
that Plaintiffs cite for their decision to resume
selling the 1999 edition. Note also that the
1985 Standards were incorporated by reference
into 34 CFR § 668.148 from 1995 until 2010,

15

Moreover, although AERA states
that it has made the 1999 Standards available
for purchase once more, unlike the 2014
Standards and AERA’s other publications, the
1999 Standards are not available for purchase
through AERA’s online store; instead,
prospective purchasers are required to fill out a
special book order form and deliver the form
to AERA for processing. (SMF ¶ 59.)

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

36. The Sponsoring Organizations do not keep
any of the proceeds generated from the sales of
the Standards. Rather, the income from these
sales is used by the Sponsoring Organizations
to offset their development and production costs
and to generate funds for subsequent revisions.
This allows the Sponsoring Organizations to
develop up-to-date, high quality Standards that
otherwise would not be developed due to the
time and effort that goes into producing them
(Levine Decl., ¶ 21; Geisinger Decl., ¶ 22;
Camara Decl., ¶ 19; Ernesto Decl., ¶ 31).

Disputed to the extent that Plaintiffs assert that
the development of the Standards would not
have occurred but for the particular revenue
model that Plaintiffs employ. This is an
opinion, not a fact. Plaintiffs have no evidence
to support this assertion other than the
conjecture of their witnesses. Dr. Levine,
Mr. Camara, and Ms. Ernesto are not qualified
as experts to opine on this subject.
Dr. Geisinger is not an expert on revenue
models or standards development, and is not
qualified to opine on this subject. See Public
Resource’s Motion to Strike the Declaration of
Dr. Geisinger, Dkt 67.

37. Without receiving at least some moderate
income from the sales of the Standards to offset
their production costs and to allow for further
revisions, it is very likely that the Sponsoring
Organizations would no longer undertake to
periodically update them, and it is unknown
who else would (Levine Decl., ¶ 22; Ernesto
Decl., ¶ 32; Wise Decl., ¶ 24; Geisinger Decl.,
¶ 22).

Disputed. Plaintiffs have failed to adduce
admissible evidence in support of these alleged
“facts.” These are opinions, not facts.
Dr. Levine, Mr. Camara, and Ms. Ernesto are
not qualified as experts to opine on this
subject. Dr. Geisinger is not an expert on
revenue models or standards development, and
is not qualified to opine on this subject. See
Public Resource’s Motion to Strike the
Declaration of Dr. Geisinger, Dkt. 67.
Moreover, the 2014 Standards are not
implicated by this litigation, and Plaintiffs
voluntarily stopped selling the 1999 Standards,
the only edition at issue. Plaintiffs have
provided no evidence as to how Public
Resource’s posting of the 1999 Standards
could harm Plaintiffs’ income from the 2014
Standards, far from reducing revenue from the
2014 Standards to less that “some moderate
income.”

16

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

38. At one time, funding for the Standards
revision process from third party sources (e.g.,
governmental agencies, foundations, other
associations interested in testing and assessment
issues, etc.) was considered. However, this
option was not seriously considered as the
difficulty and/or potential conflicts of interest in
doing so left the Sponsoring Organizations to
conclude that financial support for the
Standards revisions should be self-funding –
that is, from the sale of prior editions of the
Standards (Levine Decl., ¶ 23; Camara Decl.,
¶ 20).

Undisputed but immaterial.

39. Due to the small membership size of
Plaintiff NCME, and the relative minor portion
of the membership of Plaintiffs AERA and
APA who devote their careers to testing and
assessment, it is highly unlikely that the
members of the Sponsoring Organizations will
vote for a dues increase to fund future
Standards revision efforts if Public Resource
successfully defends this case and is allowed to
post the Standards online for the public to
download or print for free. As a result, the
Sponsoring Organizations would likely abandon
their practice of periodically updating the
Standards (Levine Decl., ¶ 24; Camara Decl.,
¶ 24; Geisinger Decl., ¶ 23; Ernesto Decl.,
¶ 33).

Disputed but immaterial. Plaintiffs have failed
to adduce admissible evidence in support of
these alleged “facts.” These are opinions, not
facts. Dr. Levine, Mr. Camara, and Ms.
Ernesto are not qualified as experts to opine on
this subject. Dr. Geisinger is not an expert on
revenue models or standards development, and
is not qualified to opine on this subject. See
Public Resource’s Motion to Strike the
Declaration of Dr. Geisinger, Dkt. 67.
Moreover, the 2014 Standards are not
implicated by this litigation, and Plaintiffs
voluntarily stopped selling the 1999 Standards,
the only edition at issue. (SMF ¶ 40; Plfs Mem.
at 11.) Plaintiffs have provided no evidence as
to how Public Resource’s posting of the 1999
Standards could harm Plaintiffs’ income from
the 2014 Standards.

17

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

40. The Plaintiffs are joint owners of the
copyright in and to the Standards. The
Standards were registered with the U.S.
Register of Copyrights under Registration
Number TX 5-100-196, having an effective date
of December 8, 1999 (Levine Decl., ¶ 25,
Exh. RRR).

Disputed to the extent that Plaintiffs claim to
be joint owners of the copyright to the 1999
Standards. The copyright registration is false,
as Plaintiffs have admitted, because it does not
list the names of the claimed other joint
authors of the 1999 Standards: both the first
registration, obtained in December 1999, and
the supplementary registration, obtained in
February 2014, list either AERA or all three
Plaintiffs as the sole authors and owners of the
1999 Standards, but only months later did
Plaintiffs obtain their first alleged copyright
assignment (in April 2014). ICE Ex. 3 (Ernesto
Dep. 122:23–127:12). Plaintiffs have
additional faults in their ownership claims.
The Joint Committee for the 1999 Standards
comprised 17 members, not 16 as Plaintiffs
suggest below, and Plaintiffs only allege to
have assignments from 15 of those individuals.
Compare Plfs SMF ¶ 42 with ICE Exs. 12 and
3 (Ernesto Dep. 103:22–105:07). Additionally,
Plaintiffs do not have assignments from any of
the hundreds of other individuals,
organizations, and other entities that
participated in the development of the 1999
Standards in collaboration with the Joint
Committee members. ICE Ex. 2 (Schneider
Dep. 177:18–178:02). Moreover, the effect of
the alleged assignments and “posthumous
assignments” (for which there was no
consideration) is a legal issue in dispute.

ven if the
assignments were in proper form, Plaintiffs
have not established that the individuals who
signed them had ownership of, and the right to
transfer, the copyrights that they purport to

18

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response
transfer; many of the members of the Joint
Committee were employed by entities that
have not executed assignments.

41. A supplementary copyright registration for
the Standards was issued by the U.S. Register
of Copyrights under Supplementary
Registration Number TX 6-434-609, having an
effective date of February 25, 2014 (Levine
Decl., ¶ 26, Exh. SSS).

Undisputed.

42. The Joint Committee that authored the 1999
Standards comprised 16 members (Levine
Decl., ¶¶ 27-28, Exh. TTT). Except for Manfred
Meier (who could not be located, nor could his
heirs), work made-for-hire letters were signed
by 13 Joint Committee Members, and
posthumous assignments were signed by the
heirs of 2 deceased Joint Committee Members,
vesting ownership of the copyright to the 1999
Standards in the Sponsoring Organizations
(Ernesto Decl., ¶ 34, Exhs. VV-HHH).

Disputed. The Joint Committee for the 1999
Standards comprised 17 members, not 16. ICE
Exs. 12 and 3 (Ernesto Dep. 103:22–105:07)
Additionally, Plaintiffs fail to mention that
hundreds of individuals, organizations, and
other entities participated in the authorship of
the 1999 Standards along with the Joint
Committee members. ICE Ex. 2 (Schneider
Dep. 177:18–178:02); see SMF ¶ 9. Moreover,
the effect of the alleged “work made-for-hire
letters” and “posthumous assignments” is a
legal issue in dispute, on which Ms. Ernesto’s
opinion is not determinative, and it is
inconsistent with Plaintiffs’ claimed “joint
authorship.”

19

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

43. Government agencies also use standards,
including by incorporating them by reference in
statutes and regulations. The National
Technology Transfer and Advancement Act of
1995 (“NTTAA”), for example, requires federal
agencies to use privately developed standards
whenever possible. Pub. L. No. 104-113 § 12,
110 Stat. 775, 782-83 (1996), codified at
15 U.S.C. § 272.

Undisputed.

44. In alignment with the NTTAA, the
Department of Education used privately
developed standards in Section 668.146 of
Title 34 of the Code of Federal Regulations,
Subtitle B: Regulations of the Offices of the
Department of Education, Chapter VI: Office of
Postsecondary Education, Department of
Education Part 668: Student Assistance General
Provisions, Subpart J: Approval of
Independently Administered Tests;
Specification of Passing Score; Approval of
State Process (the “Department of Education
Regulations”), in relevant part, provides:

Undisputed.

(a) Except as provided in § 668.148, the
Secretary approves a test under this subpart
if –
(1) The test meets the criteria set forth in
paragraph (b) of this section ...
(b) To be approved under this subpart, a test
must –
...
(6) Meet all standards for test construction
provided in the 1999 edition of the
Standards for Educational and
Psychological Testing, prepared by a joint
committee of the American Educational
Research Association, the American
Psychological Association, and the National
Council on Measurement in Education
incorporated by reference in this section.
Incorporation by reference of this document
has been approved by the Director of the
20

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

Office of the Federal Register pursuant to
the Director’s authority under 5 U.S.C.
552(a) and 1 CFR part 51. The incorporated
document is on file at the Department of
Education, Federal Student Aid, room
113E2, 830 First Street, NE., Washington,
DC 20002, phone [phone], and at
the National Archives and Records
Administration (NARA). For information
on the availability of this material at NARA,
call 1-866-272-6272, or go to:
http://www.archives.gov/federalregister/code-of-federal-regulations/ibrlocations.html. The document also may be
obtained from the American Educational
Research Association at:
http://www.aera.net ....
45. It is notable that Plaintiff’s’ 1999 Standards
are referred to by way of citation in the U.S.
Department of Education Regulations.
However, the text of Plaintiffs’ Standards is not
integrated word-for-word, in whole or in part,
into those regulations. Therefore, no one could,
or should, interpret the Standards as “the law.”

Disputed to the extent it states facts; legal
argument is not factual. The 1999 Standards
are formally incorporated by reference into the
U.S Department of Education Regulations in
full, and compliance with all of the 1999
Standards is thereby mandated by law – it is
not simply “referred to by way of citation,” as
Plaintiffs claim. The Office of the Federal
Register states: “The legal effect of
incorporation by reference is that the material
is treated as if it were published in the Federal
Register and CFR. This material, like any other
properly issued rule, has the force and effect of
law. Congress authorized incorporation by
reference in the Freedom of Information Act to
reduce the volume of material published in the
Federal Register and CFR.” (SMF ¶ 31.)
Plaintiffs’ statement that “no one could, or
should, interpret the Standards as ‘the law’” is
not a fact, it is an opinion (and in part a legal
conclusion), and Plaintiffs do not cite any
evidence to support this claim.

46. On the other hand, the Department of
Education Regulations are in compliance with
Federal law – which requires that materials

Nonfactual legal argument; disputed. The
1999 Standards are not reasonably available to
the class of persons affected. The regulations

21

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

incorporated by reference in the Federal
Register must be “reasonably available to the
class of persons affected.” 5 U.S.C. § 552(a)(1);
1 C.F.R. § 51.7(a)(3).

specify that the 1999 Standards are available to
read by written appointment at the National
Archives in Washington D.C., or alternatively
can be purchased from the Plaintiffs. (SMF
¶ 27.) But after Plaintiffs succeeded in
convincing Public Resource to take down the
version of the 1999 Standards it had posted on
the Internet (pending the outcome of this
litigation), Plaintiffs proceeded to take the
1999 Standards off sale – leaving citizens who
needed access to the law to either track down a
second-hand copy, or make a written
appointment with the National Archives and
travel to Washington D.C. (See SMF ¶ 27, 3943.) Although Plaintiffs put the 1999
Standards on sale once more after the issue
was raised at deposition, Plaintiffs assert that
they expect to eventually take the 1999
Standards off sale at some undefined point in
the future. ICE Ex. 5 (Levine Dep. 55:09–
56:10). Moreover, the 1999 Standards are not
reasonably available to individuals who are
blind or visually disabled, and who cannot
perceive paper copies of this document. ICE
Ex. 51 (Fruchterman Report) pp.5-6. Because
sections of the 1999 Standards apply
particularly to fair testing of individuals with
disabilities, it is especially important that these
citizens have access to the 1999 Standards to
ensure that the testing they encounter is in
compliance with the law. ICE Ex. 51
(Fruchterman Report) p. 6.

47. Thus, it is required that (i) a copy of the
incorporated material must be on file with the
Office of the Federal Register and (ii) the
regulations incorporating such material must
state the ways those incorporated materials are
reasonably available to interested parties.
1 C.F.R. §§ 51.3, 51.5. There is no requirement
that such materials be available to the public at
no cost.

Nonfactual legal argument; disputed. The
contours of the requirement that materials
incorporated by reference be “reasonably
available to the class of persons affected” is a
legal question in dispute and has not been
defined by any court. Plaintiffs’ assertion that
“[t]here is no requirement that [materials
incorporated by reference into the law] be
available to the public at no cost” is an
erroneous legal conclusion – United States law
must be free and available to citizens to read

22

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response
and speak. See Public Resource’s
Memorandum of Points and Authorities.

48. Defendant Public Resource is a California
non-profit corporation founded in 2007 by
Mr. Carl Malamud (“Malamud”), with the aim
of making government information more
accessible with particular emphasis on the law
(Hudis Decl., ¶ 2, Exh. A, pp. 77, 93-94, 163164).

Undisputed.

49. The identified purpose and objective of
Public Resource is to create and maintain socalled informational “public works projects for
the Internet” (Hudis Decl., ¶ 2, Exh. A, pp. 9495, 105-109, ¶ 3, Exh. B, Section II.B., ¶ 4,
Exh. C. Section 2.1).

Undisputed.

50. In actuality, Public Resource maintains an
assortment of seemingly random websites,
which contain materials ranging from technical
projects in which Malamud has been involved,
to his commentary on government databases
and entities (e.g., PACER, EDGAR, the
Government Printing Office and the
Smithsonian), to myriad collections of
legislative, regulatory, and case law materials
(Hudis Decl., ¶ 2, Exh. A, pp. 78-84, 96-102,
111-113, ¶ 5, Exh. D).

Disputed. Plaintiffs’ derogatory
characterization of Public Resource is a nonfactual opinion, and Plaintiffs’ counsel
Mr. Hudis is not qualified as an expert to opine
on this matter. Public Resource’s website is
structured for navigation by search engines and
for bulk access. Data are organized by country
(e.g., /pub/us/) then by type of data, such as
standards incorporated by reference
(/pub/us/cfr/ibr/). Malamud Decl. ¶ 29. The
Court is invited to view Public Resource’s
website at https://law.resource.org.

51. Of particular interest for this litigation is
Public Resource’s website titled
https://law.resource.org, on which Public
Resource posted the infringing digital copy of
the Sponsoring Organizations’ 1999 Standards
(Hudis Decl., ¶¶ 2, Exh. A, pp. 83-88, 234).

Nonfactual legal argument and opinion;
disputed to the extent that Plaintiffs assert
Public Resource posted an “infringing digital
copy of the Sponsoring Organizations’ 1999
Standards.” Public Resource posted a version
of the 1999 Standards on its website, but there
is a legal dispute as to whether the version the
Public Resource posted was infringing, as well
as whether Plaintiffs own rights to the 1999
Standards. Moreover, what Public Resource
posted was not a “copy” in the legal sense. As
defined by the 1976 Copyright Act, “‘copies’
are material objects, other than phonorecords,

23

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response
in which a work is fixed by any method now
known or later developed, and from which the
work can be perceived, reproduced, or
otherwise communicated, either directly or
with the aid of a machine or device.” 17 U.S.C.
§ 101. The Copyright Act provides for
exclusive rights that apply to “copies” (17
U.S.C. § 106 (1) and (3)), as well as exclusive
rights that do not implicate “copies” (17
U.S.C. § 106 (2) and (4)–(6)). The electronic
version of the 1999 Standards that Public
Resource posted was not a material object, and
therefore not a “copy” under the Copyright
Act.

52. Public Resource does not provide any other
services, and does not sell any products (Hudis
Decl., ¶ 2, Exh. A, pp. 102-103, 127).

Undisputed.

53. Malamud has worked in the computer
science, computer networks, and information
technology fields since 1980. Although he has
no formal education on these subjects,
Malamud has written many books and articles
on, and taught classes in, these areas (Hudis
Decl., ¶ 2, Exh. A, pp. 22-77, ¶ 6, Exh. E).

Undisputed.

54. On behalf of Public Resource, Malamud
spends his time operating its varied websites,
giving speeches, sending letters and FOIA
requests to government officials, and attending
to the company’s finances (Hudis Decl., ¶ 2,
Exh. A, pp. 78-79, 88-90).

Undisputed.

55. While Public Resource does have a Board
of Directors to whom Malamud reports, the
company has no other officers, employees or
members (Hudis Decl., ¶ 2, Exh. A, pp. 90,
120-123, Exh. E).

Undisputed.

24

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

56. In short, except for the retention of
independent contractors here and there (Hudis
Decl., ¶ 2, Exh. A, pp. 135-136), Malamud is
Public Resource.

Denied. Public Resource is a not-for-profit
organization founded by Mr. Malamud, and
operated under the direction of a board of
trustees that includes Tim Stanley, CEO of
Justia and affiliate with the Stanford
University Copyright and Fair Use Center, as
well as Ed Walters, CEO of Fastcase and
Adjunct Professor at the Georgetown
University Law Center. See
https://public.resource.org/about/index.html

57. Public Resource obtains its funding and/or
outside legal assistance from a cadre of law
firms, foundations and Internet companies (e.g.,
Google and Creative Commons) (Hudis Decl.,
¶ 2, Exh. A, pp. 135-136, ¶ 5, Exh. D).

Disputed to the extent that Plaintiffs
characterize Public Resource’s funding and
legal assistance as coming from a “cadre” of
law firms, foundations and Internet companies.
A listing of donors who permit their names to
be publicly listed appears on Public Resource’s
“About” page.
https://public.resource.org/about/index.html

58. In 2013, Malamud used a Kickstarter
crowd-funding campaign to raise between
$100,000 and $1.2 million in order to finance
Public Resource’s infringing operation of retyping (or “double-keying”) third-party
standards, and publishing them to the
https://law.resource.org website. However, this
Kickstarter effort was unsuccessful (Hudis
Decl., ¶ 2, Exh. A, pp. 82-83, 206-212, ¶ 7,
Exh. F).

Immaterial. Disputed to the extent that
Plaintiffs assert that Public Resource’s
activities are infringing, which is the subject of
this litigation. Disputed also to the extent that
Plaintiffs characterize Public Resource’s
activities as “publishing,” as the term is not
used according to the meaning in the 1976
Copyright Act, which defines “publication” as
“the distribution of copies or phonorecords of a
work to the public by sale or other transfer of
ownership, or by rental, lease, or lending. . . A
public performance or display of a work does
not itself constitute publication.” 17 U.S.C.
§ 101 (emphasis added). As defined by the
1976 Copyright Act, “‘copies’ are material
objects, other than phonorecords, in which a
work is fixed by any method now known or
later developed, and from which the work can
be perceived, reproduced, or otherwise
communicated, either directly or with the aid
of a machine or device.” 17 U.S.C. § 101. The
Copyright Act provides for exclusive rights
that apply to “copies” (17 U.S.C. § 106 (1) and

25

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response
(3)), as well as exclusive rights that do not
implicate “copies” (17 U.S.C. § 106 (2) and
(4)–(6)). The electronic version of the 1999
Standards that Public Resource posted was not
a material object, and therefore not a “copy”
under the Copyright Act.

59. In Malamud’s view, “standards” are a set of
best practices that the organization publishing
them believes should be widely adopted. An
example given by Malamud are the best
practice standards for computer networking
promulgated by the Internet Engineering Task
Force (Hudis Decl., ¶ 2, Exh. A, pp. 59-60).
Public.Resource.Org spent [funds] ...
buying privately-produced ... standards ....
These ... standards govern and protect a
wide range of activity .... We have started
copying those ... standards despite the fact
they are festooned with copyright warnings,
shrinkwrap agreements and other dire
warnings. (Deleted material referring to
“technical public safety standards”).
***
We know from all the copyright warnings,
terms of use, scary shrink wrap agreements,
and other red-hot rhetoric that accompanies
these documents that the producers continue
to believe that copies may not be made
under any circumstances.
(Hudis Decl., ¶ 2, Exh. A, pp. 181-184, ¶ 9,
Exh. H (Malamud, C., Liberating America’s
Secret, For-Pay Laws, boingboing,
March 19, 2012), production
pp. AERA_APA_NCME_31764-31765).

26

Disputed. Plaintiffs provide no evidence for
their claim as to what Mr. Malamud considers
a “standard” to be and it is not clear how they
arrive at such a characterization. The cited
deposition testimony simply describes
Mr. Malamud’s participation in the
development of Internet Engineering Task
Force standards, and does not describe how
Mr. Malamud defines a “standard” generally.
Disputed. Plaintiffs lack evidence for their
assertions and mischaracterize Mr. Malamud’s
statements in his 1993 book “Exploring the
Internet: a Technical Travelogue.” This
chapter, which is taken out of context,
describes Mr. Malamud’s work with the
International Telecommunication Union
(“ITU”) to convert ITU specifications to a
digital format and post them online, with the
support of the ITU (including the blessing of
the secretary general of the ITU, as described
in the book). This project was called “Bruno,”
and in the chapter “Geneva” Mr. Malamud
uses the phrase “baby killer” as a joking way
to refer to the organization’s decisions as to
how it should prioritize resources (not a “codename” for the project, as Plaintiffs assert).
This chapter does not support Plaintiffs’
accusation that Mr. Malamud “knew that
copying and widely disseminating standards,
for free and without permission . . . would
adversely impact the revenues of the
organizations that published authorized copies
of those standards,” not least of which because
Mr. Malamud had the permission of ITU for its
activities, and also because the chapter
describes how Mr. Malamud endeavored to

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response
convey to officials within the ITU that the
digitization project would result in a net
revenue benefit to the ITU. ICE Ex. 7
(Malamud Dep. 159:14–21); Hudis Decl. Exh.
G. The project was very successful and today
the ITU makes all of its standards freely
available on the Internet. Malamud Decl. ¶ 5.
Although Plaintiffs appear to have mistakenly
cited paragraph nine of Mr. Hudis’s
declaration, rather than paragraph eight,
Plaintiffs lack evidentiary support for their
erroneous claims regardless of which
paragraph is cited.
Disputed. Plaintiffs lack evidence for their
claims, as the cited text does not support the
statement that Mr. Malamud “clearly knew that
the copying of others’ copyrighted standards to
its website constituted copyright
infringement.” In fact, the cited article says
just the opposite, and Plaintiffs have quoted
selectively. In the second sentence after the
quoted passage, Mr. Malamud states “. . . we
strongly believe that the documents are not
entitled to copyright protection . . . .” Indeed,
in the portion that Plaintiffs quote,
Mr. Malamud simply states that some
standards include copyright notices;
Mr. Malamud does not state that these
copyright claims are valid. Dkt. 60-11, Hudis
Decl. Exh. H. Moreover, Plaintiffs’ statement
includes a legal conclusion regarding a matter
that is in dispute in this litigation: whether the
posting of standards incorporated by reference
into the law constitutes copyright
infringement.

62. It is nonetheless Malamud’s unwavering
belief that, once a governmental entity
incorporates a standard by reference into a
statute or a regulation, the standard becomes
“the law” and as such loses its copyright
protection (Hudis Decl., ¶ 2, Exh. A, pp. 17273, 218-219, 257, 358-61).

Undisputed.

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63. According to Malamud’s line of thinking,
once standards lose their copyright protection in
this manner, anyone can copy them, convert
them to digital form, post them on the Internet
and allow others to download or print them at
will and for free (Hudis Decl., ¶ 2, Exh. A, pp.
187-88).

Undisputed.

64. Malamud further believes that it is perfectly
acceptable for standards development
organizations, such as Plaintiffs, to lose their
copyright in standards incorporated by
reference – and with it the economic value that
copyright brings. According to Malamud,
though knowing very little about the
Sponsoring Organizations’ operations, finances,
policies or practices for updating their
Standards (Hudis Dec., ¶ 2, Exh. A, pp. 192-93,
199-201, 223-232), in such circumstances
Plaintiffs (and similarly situated standards
development organizations) should simply
change their business model(s) by finding other
ways to finance updates to their Standards, or
making the government pay for the updates:

Disputed. Plaintiffs’ characterization is not
supported by the quoted text, and is
controverted by Mr. Malamud’s deposition
testimony that Plaintiffs cite, in which
Mr. Malamud states that he disagrees with
Plaintiffs’ counsel’s characterization and
points out that even if the law is made freely
available to the public, it does not preclude
standards organizations from selling copies of
those standards (particularly authenticated
copies, redlines, or versions with commentary
or annotations). ICE Ex. 7 (Malamud Dep.
177:20–178:14). Plaintiff’s selective quotation
of the On the Media transcript omits a sentence
(where Plaintiffs have inserted an ellipses) in
which Mr. Malamud explains that the vast
majority of standards that standard
organizations publish are not law (meaning
that the vast majority of revenues would be
unaffected for these organizations). Plaintiffs
also omit further explanation by Mr. Malamud
that there are many ancillary benefits to
standards organizations and their members that
come from having standards incorporated by
reference into the law, which offset any
hypothetical loss to income. Dkt 60-12, Hudis
Decl. Exh. I.

BOB GARFIELD (Interviewer): There is
an expense attached to developing and
codifying these standards. If we take the
revenue away from those who do this work,
then what happens?
CARL MALAMUD: Well, there’s two
answers to that. One is that the non-profits
that develop these standards have a lot of
different revenue streams. They do
conferences, they do certification. They
develop standards that aren’t law. ... And so,
maybe they need to adjust their business
model, particularly given the fact they are a
non-profit public charity. Answer number
two is that government has shirked its
responsibilities. It said, gee, we can just
incorporate these privately developed
standards in the law, and we won’t have to
pay anything. And the only people that get

28

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

screwed up by this are the citizens that need
to read the law.
(Hudis Decl., ¶ 2, Exh. A, pp. 173-180, ¶ 10,
Exh. I (Garfield, B., Making Laws More Public
Transcript - On The Media, interview of Carl
Malamud, The Media, April 13, 2012),
production p. AERA_APA_NCME_32076)
(emphasis added).
65. In March 2012, Public Resource began
copying standards incorporated by reference
into the Code of Federal Regulations, and
providing the copies of these standards to
others. In May 2012, Public Resource began the
process of posting copies [sic] these standards
to its website. By May 2015, Public Resource
had posted PDF copies of over 1,000 standards
to its website (Hudis Decl., ¶ 2, Exh. A,
pp. 216-218).

Disputed to the extent that Plaintiffs
mischaracterize Public Resource’s activities.
In March 2012, Public Resource made 25
photocopies of 73 public safety standards that
had been incorporated by reference into U.S.
federal law and were sent to seven U.S.
government offices (including the White
House, Senate, House of Representatives,
National Archives, Administrative Conference
of the United States, Federal Trade
Commission, and the Copyright Office), ten
standards organizations, and to attorneys,
journalists, and Harvard Law School. The
1999 Standards were not among this group of
standards, nor were Plaintiffs recipients of
these photocopies. See Plaintiffs’ Exh. H. In
May 2012 Public Resource began the process
of posting electronic versions of standards
incorporated by reference on the Public
Resource website – not “copies,” which are
defined as material objects under the 1976
Copyright Act. See SMF ¶ 38, 17 U.S.C. §
101.

66. To demonstrate the depth and breadth of
Public Resource’s activities, Defendant has
published to its website https://law.resource.org,
inter alia, numerous state and municipal codes,
public safety codes, and technical standards –
see, e.g.,
https://law.resource.org/pub/us/code/safety.html
and
https://law.resource.org/pub/us/cfr/manifest.us.
html (Hudis Decl., ¶¶ 11-12, Exhs. J-K).

Disputed to the extent that Plaintiffs assert
Public Resource has “published” documents to
its website, as the term is not used according to
the meaning in the 1976 Copyright Act, which
defines “publication” as “the distribution of
copies or phonorecords of a work to the public
by sale or other transfer of ownership, or by
rental, lease, or lending. . . A public
performance or display of a work does not
itself constitute publication.” 17 U.S.C. § 101

29

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response
(emphasis added). As defined by the 1976
Copyright Act, “‘copies’ are material objects,
other than phonorecords, in which a work is
fixed by any method now known or later
developed, and from which the work can be
perceived, reproduced, or otherwise
communicated, either directly or with the aid
of a machine or device.” 17 U.S.C. § 101. The
Copyright Act provides for exclusive rights
that apply to “copies” (17 U.S.C. § 106 (1) and
(3)), as well as exclusive rights that do not
implicate “copies” (17 U.S.C. § 106 (2) and
(4)–(6)). The electronic version of the 1999
Standards that Public Resource posted was not
a material object, and therefore not a “copy”
under the Copyright Act. Undisputed to the
extent that Public Resource has posted
identified materials to its website.

67. Several of the codes and standards that
Public Resource publishes on the
https://law.resource.org website are subject to
U.S. copyright protection (Hudis Decl., ¶¶ 1320, Exhs. L-S), and it is believed that Public
Resource publishes these codes and standards to
the https://law.resource.org website without
obtaining the permission of the copyright
owners of these works – for example: the Safety
Standard for Belt Manlifts: ASME A90.1-2003;
the Guidelines for the definition of onshore gas
gathering lines, the Classification in Mental
Retardation (1983 revision), the Official
methods of analysis of the Association of
Official Analytical Chemists, the Glazing
Manual (1990 edition), Mobile and Locomotive
Cranes: ASME B30.5-2004, Drinking water
system components: health effects: American
national standard/NSF international standard for
drinking water additives : ANSI/INSF 61-2001,
and the Minimum design loads for buildings
and other structures (Special ed. 2003).

30

Nonfactual legal argument; disputed. The
question of whether standards incorporated by
reference into law are “subject to U.S.
copyright protection” is a legal issue in dispute
in this litigation. Additionally, Plaintiffs have
not provided admissible evidence to support
their assertion that copyrights for these
standards are owned by the third party
organizations as Plaintiffs claim, as online
abstracts of copyright registrations are not
official registrations, nor are they proof of
copyright ownership, and Plaintiffs have not
obtained any statements from these third party
organizations to that effect.

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

68. In early 2012, Malamud was perusing
through the Code of Federal Regulations,
looking for various standards purportedly
incorporated by reference therein, when he
came upon a reference to the Sponsoring
Organizations’ 1999 Standards (Hudis Decl.,
¶ 2, Exh. A, pp. 232- 233).

Immaterial; disputed. In the cited deposition
testimony, Mr. Malamud states that the 1999
Standards came to his attention because they
were specified as having been incorporated by
reference under the Code of Federal
Regulations. Mr. Malamud does not say that
he was “perusing through the Code of Federal
Regulations, looking for various standards
purportedly incorporated by reference therein,
when he came upon a reference to the . . . 1999
Standards.” ICE Ex. 7 (Malamud Dep. 232:09–
25).

69. On May 17, 2012, Public Resource
purchased a used copy of the 1999 Standards
from an Amazon re-seller, “The Book Grove”
(Hudis Decl., ¶ 2, Exh. A, pp. 232-240, ¶ 21,
Exh. T, Int. Ans. 1, ¶¶ 22-23, Exhs. U and V).

Undisputed.

70. Public Resource only paid for the 1999
Standards, however, after a failed attempt in
2009 of procuring them for free (or at least at a
reduced cost) from the National Archives
pursuant to a Freedom of Information Act
request and accompanying “fee waiver” (Hudis
Decl., ¶ 2, Exh. A, pp. 240-51, ¶ 24, Exh. W
(production pp. AERA_APA_NCME_1015357 and 10167) and ¶ 25, Exh. X).

Immaterial; disputed to the extent that
Plaintiffs characterize Public Resource’s 2009
Freedom of Information Act (“FOIA”) request
as an attempt to procure the 1999 Standards for
free. Mr. Malamud stated at deposition that he
was not certain if there would have been a
charge to Public Resource by the National
Archives and Records Administration for
making the information it requested available.
This FOIA request was for approximately
2,000 standards that have been incorporated by
reference into law, of which the 1999
Standards were one of the listed standards.
Public Resource requested a fee waiver, and in
the alternative, requested that if no fees were
waived, the National Archives should provide
a partial response up to $5,000 of charges
(which may or may not have included the 1999
Standards). Dkt. 60-27, Hudis Decl. Exh. W.

31

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

71. Upon receipt of the purchased paper copy of
the 1999 Standards, Malamud disassembled the
book, removed the spine, trimmed the pages to
give them an even border, scanned the pages to
create a PDF (Acrobat Reader) file using a
Xerox scanner, and named the PDF file “aera.
standards.1999.pdf.” Malamud then appended a
cover sheet, or self-made “Certificate,” to the
front of the PDF file giving a false semblance of
governmental approval or permission to the
unauthorized copying and online posting of the
1999 Standards (Hudis Decl., ¶ 2, Exh. A,
pp. 257-259, 261-264, ¶ 21, Exh. T, Int. Anss.
3-4, ¶ 26, Exh. Y):

Disputed to the extent that Plaintiffs assert that
Public Resource’s cover sheets “giv[e] a false
semblance of governmental approval or
permission to the unauthorized copying and
online posting of the 1999 Standards.”
Plaintiffs have failed to adduce admissible
evidence in support of this alleged “fact,” and
this is opinion, not fact. Plaintiffs’ counsel
Mr. Hudis is not qualified as an expert to opine
on this matter.

72. Next, Malamud claims he post-processed
Public Resource’s PDF file of the scanned 1999
Standards to generate Optical Character
Recognition (“OCR”) on the text (Hudis Decl.,
¶ 2, Exh. A, p. 260, ¶ 21, Exh. T, Int.
Anss. 3-4).

Undisputed.

32

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

73. However, according to Public Resource’s
expert, James Fruchterman, Malamud never
OCR-processed the PDF file, so all Malamud
and Public Resource posted to the Internet was
an image-only document (Hudis Decl., ¶ 27,
Exh. Z, pp. 309-310, ¶ 28, Exh. AA, p. 9 (and
sub-Exh. B thereto)).

Disputed. Public Resource posted two versions
of the 1999 Standards online: one version on
the Public Resource website, and the other on
the Internet Archive website. The version
posted on the Internet Archive website did
undergo OCR and was available in various text
formats that were immediately accessible to
people who are blind or visually impaired
through use of screen reading programs. ICE
Ex. 51 (Fruchterman Report) p. 11–12.

74. OCR is the process of having a machine
recognize letters and words, generally from
documents, and translate those into letter or
word equivalents (Hudis Decl., ¶ 27, Exh. Z,
pp. 29-30).

Undisputed.

75. Without OCR-processing, Public
Resource’s unauthorized copying and posting of
the 1999 Standards provided no additional
technical value, such as for word-searching,
online identification, or text-to-speech
utilization for the blind and visually impaired
(Hudis Decl., ¶ 27, Exh. Z, pp. 30, 122, 200-01,
206, 271-72, 315-16).

Disputed. Plaintiffs have failed to adduce
admissible evidence in support of this alleged
“fact,” and this is opinion, not fact. Plaintiffs’
counsel Mr. Hudis is not qualified as an expert
to opine on this matter.

33

Public Resource posted two versions of the
1999 Standards online: one version on the
Public Resource website, and the other on the
Internet Archive website. The version posted
on the Internet Archive website did undergo
OCR and was available in various text formats
that were immediately accessible to people
who are blind or visually impaired through use
of screen reading programs. ICE Ex. 51
(Fruchterman Report) p. 11–12. The electronic
version of the 1999 Standards that Public
Resource posted on the Public Resource
website that did not undergo OCR is still
valuable to people who are blind or visually
disabled because it is relatively trivial for such
a person to perform OCR on the document.
What is not trivial for a person who is blind or
visually disabled is to obtain a paper copy of
the 1999 Standards, scan each page, and
produce an electronic version that can then
have OCR performed on it, as this requires

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response
equipment that most people who are blind do
not own, and takes hours of work. The nonOCR version that Public Resource posted on
the Public Resource website is therefore a
valuable contribution to making the 1999
Standards available to people who are blind or
visually disabled. ICE Ex. 51 (Fruchterman
Report) p. 8–9.

76. In the final step of the process, Malamud
claims he stamped metadata into the headers of
the PDF file, posted the file (the entirety of
Plaintiffs’ 1999 Standards) to Public Resource’s
https://law.resource.org website as well as the
website of the Internet Archive
(https://archive.org) (Answer & Counterclaim,
Court Dkt. 12, ¶¶ 7, 55; Hudis Decl., ¶ 2,
Exh. A, pp. 233-34, 271-72; ¶ 2 1, Exh. T, Int.
Ans. No. 2).

Undisputed.

77. In Defendant’s interrogatory answers
(verified by Malamud), Public Resource
describes a detailed quality control process
attendant to the unlawful digital copying of the
Sponsoring Organizations’ 1999 Standards.
During deposition questioning, however,
Malamud was unsure whether he followed
those quality control procedures at all (Hudis
Decl., ¶ 2, Exh. A, pp. 260-61, 267-68, 274275, ¶ 21, Exh. T, Int. Anss. 3-4, ¶ 35,
Exh. HH, Admission No. 2).

Disputed. Plaintiffs have not provided
evidence to support this assertion. At
deposition, Plaintiffs’ counsel asked if
Mr. Malamud had checked the quality of the
OCR process for accuracy for the 1999
Standards, and Mr. Malamud responded that
he did not, because that was not a part of
Public Resource’s normal workflow. ICE Ex. 7
(Malamud Dep. 267:06–268:02).

78. The Internet Archive is a nonprofit
Undisputed.
organization whose mission is to build and
maintain a digital library of the Internet. The
Internet Archive builds this Internet library –
which it makes available for public use – by
scanning, digitally capturing, and saving the
electronically scanned and captured third-party
websites, and by receiving content submissions
from third parties who have access to do so by
the establishment of user accounts (Hudis Decl.,
¶ 29, Exh. BB, pp. 31-41).

34

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

79. Malamud has such user account access
(Hudis Decl., ¶ 29, Exh. BB, pp. 51-56),
through which he uploaded the entirety of the
1999 Standards to the Internet Archive’s
website on May 26-27, 2012 (Hudis Decl., ¶ 29,
Exh. BB, pp. 59-112, ¶ 30, Exh. CC (¶¶ 3-18
therein), ¶ 32, Exh. EE, ¶ 33, Exh. FF).

Undisputed.

80. Public Resource posted Plaintiffs’ 1999
Standards to its website and the Internet
Archive website without the permission or
authorization of any of the Sponsoring
Organizations (Hudis Decl., ¶ 35, Exh. HH,
Admission Nos. 4-5; Levine Decl., ¶ 29;
Ernesto Decl., ¶ 35; Wise Decl., ¶ 26).

Undisputed.

81. By uploading the 1999 Standards to the
Internet Archive, Public Resource violated the
Internet Archive’s Terms of Use in effect at the
time of Public Resource’s infringement, which
in relevant part states:

Denied. This is a legal opinion, not a fact.
The legal question of whether posting
standards that have been incorporated by
reference into the law is noninfringing or fair
use is at issue in this litigation.

This terms of use agreement (the
“Agreement”) governs your use of the
collection of Web pages and other digital
content (the “Collections”) available
through the Internet Archive (the
“Archive”). When accessing an archived
page, you will be presented with the terms
of use agreement. If you do not agree to
these terms, please do not use the Archive’s
Collections or its Web site (the “Site”).
***
Some of the content available through the
Archive may be governed by local, national,
and/or international laws and regulations ...
You agree to abide by all applicable laws
and regulations, including intellectual
property laws, in connection with your use
of the Archive. In particular, you certify that
your use of any part of the Archive’s
Collections will be ... limited to
noninfringing or fair use under copyright
law. In using the Archive’s site, Collections,

35

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

and/or services, you further agree ... (b) not
to act in any way that might give rise to civil
or criminal liability, [and] ... (e) not to
infringe any copyright, trademark, patent,
or other proprietary rights of any person, ...
(Hudis Decl., ¶ 29, Exh. BB, pp. 41-45, ¶ 31,
Exh. DD) (emphasis added).
82. The unauthorized copy of the Sponsoring
Organizations’ 1999 Standards that Malamud
published to the Internet Archive at
https://archive.org/details/gov.law.aera.standard
s.1999 was in the exact same format, using the
same cover sheet or “Certificate” employed by
Public Resource in the posting of the
Sponsoring Organizations’ 1999 Standards to
Defendant’s own website. All of the
surrounding text associated with the posting to
the Internet Archive website was inserted by
Malamud – including the insertion of “Creative
Commons License: CC0 1.0 Universal,”
indicating that no rights are being asserted over
the item (Hudis Decl., ¶ 2, Exh. A, pp. 275-284,
¶ 29, Exh. BB, pp. 57-63, ¶ 30, Exh. CC (¶ 2
therein), ¶ 34, Exh. GG):

36

Nonfactual legal argument in part. Disputed to
the extent that the version of the 1999
Standards that Public Resource posted to the
Internet Archive underwent additional
processing by the Internet Archive systems,
performing OCR and creating a variety of
different electronic formats that are thereby
more accessible to people who are blind or
visually disabled, and therefore not “the exact
same format” as the version on the Public
Resource website, as Plaintiffs suggest. ICE
Ex. 51 (Fruchterman Report) p. 11–12.
Disputed also to the extent that Plaintiffs assert
that Public Resource has “published” the 1999
Standards to the Internet Archive website, as
the term is not used according to the meaning
in the 1976 Copyright Act, which defines
“publication” as “the distribution of copies or
phonorecords of a work to the public by sale or
other transfer of ownership, or by rental, lease,
or lending. . . A public performance or display
of a work does not itself constitute
publication.” 17 U.S.C. § 101 (emphasis
added). As defined by the 1976 Copyright
Act, “‘copies’ are material objects, other than
phonorecords, in which a work is fixed by any
method now known or later developed, and
from which the work can be perceived,
reproduced, or otherwise communicated, either
directly or with the aid of a machine or
device.” 17 U.S.C. § 101. The Copyright Act
provides for exclusive rights that apply to
“copies” (17 U.S.C. § 106 (1) and (3)), as well
as exclusive rights that do not implicate
“copies” (17 U.S.C. § 106 (2) and (4)–(6)).

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response
The electronic version of the 1999 Standards
that Public Resource posted was not a material
object, and therefore not a “copy” under the
Copyright Act.

83. Public Resource claims the Sponsoring
Organizations’ 1999 Standards were posted to
Public Resource’s https://law.resource.org
website and to the Internet Archive
https://archive.org website from July 11, 2012
to June 10, 2014 (Hudis Decl., ¶ 21, Ex. T, Int.
Ans. 2).

Undisputed.

84. As previously noted, Public Resource
actually uploaded the 1999 Standards to
Internet Archive’s website on May 26-27, 2012.
The Sponsoring Organizations have no ability
to verify when Public Resource uploaded the
1999 Standards to its own website, because
neither the “file creation date” nor user access
logs were produced during discovery,
notwithstanding production requests for this
documentation and an accompanying discovery
motion demanding production that in relevant
part was denied (Hudis Decl., ¶ 36).

Disputed. Plaintiffs have not adduced
admissible evidence to support this fact.
Public Resource produced the version of the
1999 Standards that it had posted on the Public
Resource website, complete with the file
creation date in its metadata. As Mr. Malamud
stated at deposition, Public Resource does not
have logs documenting the date on which the
1999 Standards were posted to the Public
Resource website. ICE Ex. 7 (Malamud Dep.
273:20–274:03).

85. Although based on incomplete reporting
because Public Resource destroyed some of its
records (Hudis Decl., ¶ 2, Exh. A, pp. 272-74,
328-336), during the near two year period that
the Sponsoring Organizations’ 1999 Standards
were posted on Public Resource’s
https://law.resource.org website, they were
accessed at least 4,164 times (Hudis Decl.,
¶ 21, Exh. T, Int. Ans. 2 and Amended Ans. 5
(labeled 6)).

Disputed. Plaintiffs’ accusation that Public
Resource destroyed some of its records is
unfounded, and Plaintiffs fail to adduce
evidence to support their claim. In the cited
deposition testimony, Mr. Malamud stated that
when Public Resource agreed to take the 1999
Standards offline pending the outcome of this
litigation, the act of taking the standards
offline changed metadata on one of the files
that might otherwise have been used to
determine the original posting date. Plaintiffs
also cite Public Resource’s statement at
deposition that Public Resource previously had
a 2-week retention policy for server logs until
litigation commenced in the ASTM v.
Public.Resource.Org case in August 2013, at
which time the server logs have been retained
permanently (nine months prior to when the

37

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response
AERA Plaintiffs filed suit). Plaintiffs’ claims
as to the number of accesses of the 1999
Standards on the Public Resource website is
also incorrect, as their calculation appears to
include access figures for a stub page that
replaced the 1999 Standards on the Public
Resource website in June 2014, when Public
Resource had taken down the 1999 Standards
pending the resolution of this litigation. See
Dkt. 60-23, Hudis Decl. Exh. T. Plaintiffs also
fail to explain that the number of “accesses”
means the number of access requests from a
computer to the Public Resource server, and
does not necessarily mean accesses by human
beings, but could instead be accesses by
webcrawlers, bots, or other automated
programs. Dkt. 60-23, Hudis Decl. Exh. T, at
7–8.

86. During that same period, the Sponsoring
Organizations’ 1999 Standards were accessed
on the Internet Archive https://archive.org
website 1,290 times (Hudis Decl., ¶ 29,
Exh. BB, pp. 124-132, ¶ 37, Exh. II).

Disputed to the extent that the time period
pertinent to the access figures that Plaintiffs
cite as Exh. II is not established in the
documents Plaintiffs cite. Plaintiffs also fail to
explain that the number of “accesses” means
the number of access requests from a computer
to the Public Resource server, and does not
necessarily mean accesses by human beings,
but could instead be accesses by webcrawlers,
bots, or other automated programs. Dkt. 6023, Hudis Decl. Exh. T, at 7–8.

87. The Internet Archive’s website is open to
the public and does not restrict an Internet
user’s ability to download or print the
Sponsoring Organizations’ 1999 Standards.
Public Resource also placed no such restrictions
on its website (Hudis Decl., ¶ 2, Exh. A, pp.
347-48), as Defendant’s expert,
Mr. Fruchterman, confirmed (Hudis Decl., ¶ 27,
Exh. Z, pp. 327-28).

Undisputed.

88. Mr. Fruchterman also confirmed that there
were no sign-up procedures to enter Public
Resource’s https://law.resource.org website, nor

Disputed to the extent that Plaintiffs imply that
DRM technology should be used to restrict
access to the law.

38

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

was there any Digital Rights Management (or
“DRM”) plan to protect against wide-spread
copying of the files accessed from Public
Resource’s site (Hudis Decl., ¶ 27, Exh. Z, pp.
324-27, 167-173).
89. The parties and the Court can only speculate
on the number of further electronic copies of
the 1999 Standards that were made and
distributed to others by the original Internet
users who accessed the unauthorized copies that
Public Resource posted to its site and the
Internet Archive site.

Undisputed that the Plaintiffs’ statement
indicates a lack of any evidence about the
making or distribution of copies by any
persons. Nonfactual statement. Otherwise
disputed. Plaintiffs have not adduced
admissible evidence to support this contention.
This is opinion, not a fact, and Plaintiffs do not
cite any evidence or individual who holds this
opinion. Plaintiffs have the burden of proof
for establishing harm, and should not invite the
Court to “speculate” as to downstream copying
or distribution of which Plaintiffs have failed
to find any evidence. Notably, after Public
Resource took down the 1999 Standards
pending the outcome of this litigation,
Mr. Fruchterman looked for an electronic
version of the 1999 Standards online and could
not find one. ICE Ex. 51 (Fruchterman Expert
Report), p. 5–6.

90. There simply is no way for Plaintiffs to
calculate with any degree of certainty the
number of university/college professors,
students, testing companies and others who
would have purchased Plaintiffs’ Standards but
for their wholesale posting on Defendant’s
https://law.resource.org website and the Internet
Archive http://archive.org website. (Levine
Decl., ¶ 30; Geisinger Decl., ¶ 24).

Undisputed that there is no evidence of any
lost sales of the 1999 Standards as a
consequence of Defendant’s postings of the
1999 Standards. Otherwise disputed.
Plaintiffs have not adduced admissible
evidence to support this contention. This is
opinion, not a fact. Dr. Levine is not qualified
as an expert, and Dr. Geisinger is not qualified
as an expert on the subject of economic
substitution. See Public Resource’s Motion to
Strike the Declaration of Dr. Geisinger, Dkt.
67. Plaintiffs have the burden of proof for
establishing harm, cannot shrug off this burden
after failing to find evidence of any individual
who would have purchased the 1999 Standards
but for Public Resource’s posting, and
similarly failing to retain an expert witness
with expertise in economic substitution.

39

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Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

91. In late 2013 and early 2014, the Sponsoring
Organizations became aware that the 1999
Standards had been posted on the Internet
without their authorization, and that students
were obtaining free copies from the posting
source. Upon further investigation, the
Sponsoring Organizations discovered that
Public Resource was the source of the online
posting (Camara Decl., ¶ 21, Exh. MMM; Wise
Decl., ¶¶ 27-28, Exh. LLL).

Disputed. Plaintiffs have not adduced
admissible evidence to support their contention
that students obtained free copies of the 1999
Standards from Public Resource.

92. In December 2013, Plaintiff AERA
requested in writing that Public Resource
remove the 1999 Standards from its online
postings (Levine Decl., ¶ 31, Exh. UUU).
Defendant flatly refused (Hudis Decl., ¶ 2,
Exh. A, pp. 310-19, ¶ 38, Exh. JJ, ¶ 39,
Exh. KK). Once this lawsuit was filed and the
Sponsoring Organizations threatened to file a
motion for a preliminary injunction, Public
Resource agreed in June 2014 to remove its
postings of the 1999 Standards from its
https://law.resource.org website and from
Internet Archive’s https://archive.org website –
pending a resolution of this litigation on the
merits. Public Resource’s undertaking included
the promise not to post any revision of the 1999
Standards (i.e., the 2014 Standards) pending the
outcome of this litigation (Hudis Decl., ¶ 2,
Exh. A, pp. 322-28, ¶ 40, Exh. LL, ¶ 41,
Exh. MM).

Undisputed.

93. Had Public Resource not made, and
followed through with, these promises, the
Sponsoring Organizations would have filed a
preliminary injunction motion and were
seriously contemplating delaying publication of
the 2014 Standards (Levine Decl., ¶ 32).

Undisputed.

94. By June 2014, when Public Resource finally
removed its online postings of the 1999
Standards, the damage already had been done.
In Fiscal Year (“FY”) 2011 to FY 2012, as
compared to FY 2011, the Sponsoring

Disputed. There was not a 34% drop in sales
in in FY 2012 compared to the prior year.
What Plaintiffs present as “sales” data is
actually gross revenue data, not the number of
copies sold.

40

Case 1:14-cv-00857-TSC Document 103-4 Filed 03/15/16 Page 42 of 48

Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

Organizations experienced a 34% drop in sales
of the 1999 Standards. In FY 2013, sales of the
1999 Standards remained at their low level from
the prior fiscal year (Levine Decl., ¶¶ 18, 33,
Exh. OOO).

Disputed also regarding Plaintiffs’
characterization that “when Public Resource
finally removed its online postings of the 1999
Standards, the damage already had been done.”
Plaintiffs fail to explain

Plaintiffs have not demonstrated any
relationship between Public Resource’s
posting and the sale of the 1999 Standards.
ICE Exs. 39, 41. Moreover,
is consistent with Plaintiffs’ expert
Dr. Geisinger’s prediction that if sales of the
1999 Standards were affected by widespread
knowledge that the new edition of the
Standards were forthcoming, he expected that
the decline would start in 2010 or 2011. Dkt.
60-88 (Geisinger Decl.) ¶ 25; ICE Ex. 8
(Geisinger Dep. 93:20-97:04).
95. The timing of the drop in sales is notable,
given that Public Resource posted the Standards
to the Internet in 2012-2013, and that the

41

Disputed. Dr. Levine stated

Case 1:14-cv-00857-TSC Document 103-4 Filed 03/15/16 Page 43 of 48

Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

Sponsoring Organizations’ updated Standards
were not published until the summer of 2014
(Levine Decl., ¶ 34).

is consistent
with Plaintiffs’ expert Dr. Geisinger’s
prediction that if sales of the 1999 Standards
were affected by widespread knowledge that
the new edition of the Standards were
forthcoming, he expected that the decline
would start in 2010 or 2011. Dkt. 60-88
(Geisinger Decl.) ¶ 25; ICE Ex. 8 (Geisinger
Dep. 93:20-97:04).
96. For a publication with the longevity of the
1999 Standards, one otherwise would expect to
see a gradual decline in sales year-over-year;
not the precipitous drop in sales experienced by
the 1999 Standards in 2012 and 2013 (Geisinger
Decl., ¶ 25).

42

Disputed. This is not a fact, it is an opinion,
and Dr. Geisinger is not qualified as an expert
in the subject of economic substitution. See
Public Resource’s Motion to Strike the
Declaration of Dr. Geisinger, Dkt. 67. There
was not a “precipitous drop in sales
experienced by the 1999 Standards in 2012 and

Case 1:14-cv-00857-TSC Document 103-4 Filed 03/15/16 Page 44 of 48

Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

consistent with Plaintiffs’ expert
Dr. Geisinger’s prediction that if sales of the
1999 Standards were affected by widespread
knowledge that the new edition of the
Standards were forthcoming, he expected that
the decline would start in 2010 or 2011. Dkt.
60-88 (Geisinger Decl.) ¶ 25; ICE Ex. 8
(Geisinger Dep. 93:20-97:04).

97. Past harm from Public Resource’s
infringing activities includes misuse of
Plaintiffs’ intellectual property without
permission (Ernesto Decl., ¶ 36; Geisinger
Decl., ¶ 26), lost sales that cannot be totally
accounted for – due to potentially infinite
Internet distribution, for example by
psychometrics students (Wise Decl., ¶¶ 27-28,
Exh. LLL; Levine Decl., ¶ 35; Geisinger Decl.,
¶ 26).

Disputed. Plaintiffs have failed to adduce
admissible evidence in support of these alleged
“facts.” Plaintiffs have not articulated how the
use of standards incorporated into the law that
Plaintiffs voluntarily took off sale could
constitute “harm” to Plaintiffs, short of
conclusory statements by Ms. Ernesto and
Dr. Geisinger, neither of which are qualified as
experts on the subject of harm. See Public
Resource’s Motion to Strike the Declaration of
Dr. Geisinger, Dkt. 67. The question of
whether such use is “misuse” is legal issue in
dispute in this litigation. Plaintiffs have failed
to adduce admissible evidence to support their

43

Case 1:14-cv-00857-TSC Document 103-4 Filed 03/15/16 Page 45 of 48

Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response
claim that there are any lost sales attributable
to Public Resource’s posting, nor that any such
lost sales cannot be totally accounted for, nor
their speculation on “potentially infinite
Internet distribution.” Neither Dr. Wise nor
Dr. Geisinger are qualified as experts on the
subject of economic substitution or Internet
distribution. See Public Resource’s Motion to
Strike the Declaration of Dr. Geisinger, Dkt.
67.

98. The harm also includes lack of funding that
otherwise would have been available for the
update of the Sponsoring Organizations’
Standards from the 1999 to the 2014 versions
(Levine Decl., ¶ 35; Camara Decl., ¶ 22;
Geisinger Decl., ¶ 26).

Disputed. Plaintiffs have failed to adduce
admissible evidence in support of this alleged
“fact.”

Therefore,
Plaintiffs had many times the amount of
funding necessary for the development of the
2014 Standards, and the Test Standards
Development Fund is over twelve times as
large as it was shortly after the publishing of
the 1999 Standards.
99. Should Public Resource’s infringement be
allowed to continue, the harm to the Sponsoring
Organizations, and public at large who rely on

44

Disputed. Plaintiffs have failed to adduce
admissible evidence in support of these alleged
“facts.” These are opinions, not facts, and

Case 1:14-cv-00857-TSC Document 103-4 Filed 03/15/16 Page 46 of 48

Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

the preparation and administration of valid, fair
and reliable tests, includes: (i) uncontrolled
publication of the 1999 Standards without any
notice that those guidelines have been replaced
by the 2014 Standards; (ii) future unquantifiable
loss of revenue from sales of authorized copies
of the 1999 Standards (with proper notice that
they are no longer the current version) and the
2014 Standards; and (iii) lack of funding for
future revisions of the 2014 Standards and
beyond (Levine Decl., ¶ 36; Camara Decl.,
¶ 23; Ernesto Decl., ¶ 37; Geisinger Decl.,
¶ 27).

Dr. Levine, Mr. Camara, Ms. Ernesto, and
Dr. Geisinger are not qualified as experts on
the subjects of economic substitution or harm.
See Public Resource’s Motion to Strike the
Declaration of Dr. Geisinger, Dkt. 67.

100. Without the sales revenue from prior
Standards versions (because – if Public
Resource succeeds in this litigation – this
publication will be made freely available
online), it is very unlikely that future updates to
the Standards will be undertaken. This is
because NCME is too small an organization to
financially support periodic updates of the
Standards, AERA does not have the budget for
it, and an insufficient number of
psychometricians are members of APA for it to
justify the ongoing expenditures. Charging
extra membership fees to fund ongoing updates
to the Standards would never happen, because
the governing bodies of AERA, APA and
NCME would not vote for it. If these
Sponsoring Organizations ceased updating the
Standards, it is unlikely that other organizations
would step in and continue the effort (Geisinger
Decl., ¶ 23).

Disputed. Plaintiffs have failed to adduce
admissible evidence in support of this alleged
“fact.” These are opinions, not facts, and
Dr. Geisinger is not qualified as experts on the
subjects of economic substitution or harm. See
Public Resource’s Motion to Strike the
Declaration of Dr. Geisinger, Dkt. 67.
Plaintiffs assume, contrary to evidence, that
availability of the 1999 Standards on the
Internet will mean that no copies of the 1999
Standards will be sold, when sales continued
even when Public Resource had posted the
1999 Standards online. See, e.g., ICE Ex. 41.
Moreover, Plaintiffs have no basis for claiming
that the organizations cannot fund the
per-member annual cost of financing the
development of the Standards, as described in
¶ 39, above.

101. The harm caused to the public by out-ofdate Standards will be significant, because the
testing and assessment fields are constantly
changing, given updates in testing technology
and ever-evolving collective thought on the
validity, reliability and fairness of tests.
Members of the public who would be harmed
by discontinued update of the Standards include
psychometrics professors, students and

Disputed. Plaintiffs have failed to adduce
admissible evidence in support of this alleged
“fact.” This statement is conclusory as to harm,
which has not been proven, and Plaintiffs have
no evidence that people will be confused in
relying on outdated standard as if it were the
most recent edition. Moreover, Plaintiffs’
expert Dr. Geisinger stated at deposition

45

Case 1:14-cv-00857-TSC Document 103-4 Filed 03/15/16 Page 47 of 48

Plaintiffs’ Statement of Material Facts

Defendant Public Resource’s Response

professionals, as well as test developers,
administrators and test takers (Geisinger Decl.,
¶ 28).
102. Notwithstanding the harm it has caused,
and could potentially continue to cause, Public
Resource’s intentions are crystal clear.
Although not now publicly available pending
the outcome of this litigation, Public Resource
still has an unauthorized copy of the Sponsoring
Organizations’ 1999 Standards on its server
(Hudis Decl., ¶ 2, Exh. A, pp. 273, 309); as
does the Internet Archive (Hudis Decl., ¶ 29,
Exh. BB, pp. 116-17).

Disputed that Public Resource has caused any
harm. Public Resource does not dispute that it
has a version of the 1999 Standards on its
server. Disputed as to whether Public
Resource’s copy is “unauthorized” because
that is a legal conclusion and Public Resource
does not accept that Plaintiffs have any right to
authorize or deauthorize copies of the law.
Undisputed that Public Resource’s intentions
of making the law available to and accessible
by the public is crystal clear.

103. It would be very simple for Public
Resource to re-post the 1999 Standards to
Public Resource’s website with little effort
(Hudis Decl., ¶ 2, Exh. A, pp. 306-07).

Undisputed.

104. Moreover, should Public Resource
successfully defend this lawsuit, it has every
intention of similarly posting the Sponsoring
Organizations’ 2014 Standards to the Internet in
the same manner it posted Plaintiffs’ 1999
Standards (Hudis Decl., ¶ 2, Exh. A,
pp. 308-09).

Disputed. Public Resource has never posted
the 2014 edition of the Standards anywhere,
and Public Resource has never stated an
intention to post the 2014 Standards. To Public
Resource’s knowledge, the 2014 Standards
have not been incorporated by reference into
law. Malamud Decl. ¶ 33. It is undisputed that
Public Resource posts only those standards that
have become law. See SMF ¶ 40; Malamud
Decl. ¶ 33. Consistent with this policy,
Mr. Malamud testified that he would consider
posting the 2014 edition only “[i]f the federal
government did a deliberate and explicit
incorporation by reference,” and only after
determining “if that was an area that I wanted
to continue to invest resources in.” ICE Ex. 7
(Malamud Dep. 307:17–309:03).

46

Case 1:14-cv-00857-TSC Document 103-4 Filed 03/15/16 Page 48 of 48

Dated: January 21, 2016

Respectfully submitted,
/s/ Andrew P. Bridges
Andrew P. Bridges (admitted)
[e-mail]
Sebastian E. Kaplan (pro hac vice pending)
[e-mail]
Matthew Becker (admitted)
[e-mail]
FENWICK & WEST LLP
555 California Street, 12th Floor
San Francisco, CA 94104
Telephone: [phone]
Facsimile: [phone]
Corynne McSherry (admitted pro hac vice)
[e-mail]
Mitchell L. Stoltz (D.C. Bar No. 978149)
[e-mail]
ELECTRONIC FRONTIER FOUNDATION
815 Eddy Street
San Francisco, CA 94109
Telephone: [phone]
Facsimile: [phone]
David Halperin (D.C. Bar No. 426078)
[e-mail]
1530 P Street NW
Washington, DC 20005
Telephone: [phone]
Attorneys for Defendant-Counterclaimant
Public.Resource.Org, Inc.

SF/5546470.7

47

Case 1:14-cv-00857-TSC Document 103-5 Filed 03/15/16 Page 1 of 4

EXHIBIT 4

Case 1:14-cv-00857-TSC Document 103-5 Filed 03/15/16 Page 2 of 4

CORRECTIONS TO MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT
OF DEFENDANT-COUNTERCLAIMANT PUBLIC.RESOURCES.ORG’S MOTION
FOR SUMMARY JUDGMENT AND OPPOSITION TO PLAINTIFFS’ MOTION FOR
SUMMARY JUDGMENT AND PERMANENT INJUNCTION (ECF NOS. 68-2 (UNDER
SEAL) AND 69-1 (REDACTED))
FILED:
COURT:
Page No.
3
25
25
25
25
26
27
28
28
28
28
28
28
30
30
33
33
33
33
34
34
34
36
40
41
41
41
41
41
42
42
42
44
45

January 21, 2016
USDC
Line No.
14
7-8
9
18
19
3
15
6
7
9
11
14-15
16
3
6
6
7
10
11
14
17
19
21
9
4
14
16
18
19
2
4
7
2
16

Case No. 1:14-cv-00857-TSC-DAR

Original Incorrect Citation
Id. ¶ 2
SMF ¶ 59
SMF ¶ 59 (Id.)
SMF ¶ 59 (Id.)
SMF ¶ 60
SMF ¶ 61
SMF ¶ 62
SMF ¶ 63
SMF ¶ 64
SMF ¶ 65
SMF ¶ 66
SMF ¶ 67
SMF ¶ 68
SMF ¶ 46 (Id.)
SMF ¶ 46 (Id.)
SMF ¶ 76
SMF ¶ 78
SMF ¶ 79
Id. ¶ 80
SMF ¶ 81
SMF ¶ 82
SMF ¶ 83
SMF ¶ 84
SMF ¶ 85–86
SMF ¶ 87
SMF ¶ 88
SMF ¶ 90 (Id.)
SMF ¶ 90 (Id.)
SMF ¶ 86
SMF ¶ 89
SMF ¶¶ 90–91
SMF ¶ 92
SMF ¶ 93
SMF ¶ 94

1

Corrected Citation
Id. ¶ 3
SMF ¶ 97
SMF ¶ 58
SMF ¶ 59
SMF ¶ 59
SMF ¶ 60
SMF ¶ 61
SMF ¶ 62
SMF ¶ 63
SMF ¶ 64
SMF ¶ 65
SMF ¶ 66
SMF ¶ 67
SMF ¶ 47
SMF ¶ 47
SMF ¶ 78
SMF ¶ 79
SMF ¶ 81
Id. ¶ 82
SMF ¶ 83
SMF ¶ 84
SMF ¶ 85
SMF ¶ 86
SMF¶ 87–88
SMF ¶ 89
SMF ¶ 90
SMF ¶ 90
SMF ¶ 90
SMF ¶ 88
SMF ¶ 91
SMF ¶¶ 92–93
SMF ¶ 94
SMF ¶ 95
SMF ¶ 96

Case 1:14-cv-00857-TSC Document 103-5 Filed 03/15/16 Page 3 of 4

Page No.
45
53
57

Line No.
18
22
1-2

Original Incorrect Citation
SMF ¶ 95
SMF ¶ 98
SMF ¶ 38

Corrected Citation
SMF ¶ 97
SMF ¶ 100
SMF ¶ 40

CORRECTIONS TO STATEMENT OF MATERIAL FACTS IN SUPPORT OF
DEFENDANT-COUNTERCLAIMANT PUBLIC.RESOURCE.ORG, INC.’S MOTION
FOR SUMMARY JUDGMENT AND OPPOSITION TO PLAINTIFFS’ MOTION FOR
SUMMARY JUDGMENT AND PERMANENT INJUNCTION (ECF NOS. 68-3 (UNDER
SEAL) AND 69-2 (REDACTED))
Paragraph Number Original Incorrect Citation
PARAGRAPH 26
PARAGRAPH 27
PARAGRAPH 29
PARAGRAPH 31
PARAGRAPH 32
PARAGRAPH 33
PARAGRAPH 33
PARAGRAPH 33
PARAGRAPH 33
PARAGRAPH 34
PARAGRAPH 34
PARAGRAPH 52
PARAGRAPH 66
PARAGRAPH 66
PARAGRAPH 68
PARAGRAPH 69
PARAGRAPH 70
PARAGRAPH 71
PARAGRAPH 72
PARAGRAPH 72

ICE Ex. 64
ICE Ex. 64
ICE Ex. 71
ICE Ex. 64
ICE Ex. 64
ICE Ex. 65
ICE Ex. 66
ICE Ex. 67
ICE Ex. 68
ICE Ex. 69
ICE Ex. 70
ICE Ex. 53
ICE Ex. 54
ICE Ex. 55
ICE Ex. 56
ICE Ex. 57
ICE Ex. 58
ICE Ex. 59
ICE Ex. 60
ICE Ex. 61

Corrected Citation
ICE Ex. 65
ICE Ex. 65
ICE Ex. 72
ICE Ex. 65
ICE Ex. 65
ICE Ex. 66
ICE Ex. 67
ICE Ex. 68
ICE Ex. 69
ICE Ex. 70
ICE Ex. 71
ICE Ex. 52
ICE Ex. 53
ICE Ex. 54
ICE Ex. 55
ICE Ex. 56
ICE Ex. 57
ICE Ex. 58
ICE Ex. 59
ICE Ex. 60

2

Case 1:14-cv-00857-TSC Document 103-5 Filed 03/15/16 Page 4 of 4

CORRECTIONS TO DEFENDANT-COUNTERCLAIMANT
PUBLIC.RESOURCE.ORG, INC.’S STATEMENT OF DISPUTED FACTS IN
OPPOSITION TO PLAINTIFFS’ MOTION FOR SUMMARY JUDGMENT AND
PERMANENT INJUNCTION (ECF NOS. 68-4 (UNDER SEAL) AND 69-3 (REDACTED))
Paragraph Number Original Incorrect Citation

Corrected Citation

PARAGRAPH 5
PARAGRAPH 5
PARAGRAPH 6
PARAGRAPH 6
PARAGRAPH 7
PARAGRAPH 7
PARAGRAPH 8
PARAGRAPH 8
PARAGRAPH 22
PARAGRAPH 31
PARAGRAPH 31
PARAGRAPH 35

ICE Ex. 62
ICE Ex. 63
ICE Ex. 62
ICE Ex. 63
ICE Ex. 62
ICE Ex. 63
ICE Ex. 62
ICE Ex. 63
ICE Ex. 52-56
ICE Ex. 62
ICE Ex. 63
ICE Ex. 59

ICE Ex. 63
ICE Ex. 62
ICE Ex. 63
ICE Ex. 62
ICE Ex. 63
ICE Ex. 62
ICE Ex. 63
ICE Ex. 62
ICE Ex. 52-55
ICE Ex. 63
ICE Ex. 62
ICE Ex. 60

3