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

Filing 39

Memorandum in opposition to re #33 MOTION to Consolidate Cases Defendant-Counterclaim Public.Resource.Org, Inc.'s Motion to Consolidate for the Purposes of Discovery filed by AMERICAN SOCIETY FOR TESTING AND MATERIALS, AMERICAN SOCIETY OF HEATING, REFRIGERATING, AND AIR-CONDITIONING ENGINEERS, INC., NATIONAL FIRE PROTECTION ASSOCIATION, INC.. (Attachments: #1 Exhibit A, #2 Exhibit B, #3 Exhibit C, #4 Exhibit D)(Fee, J.)

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.,

1:14-cv-00857-TSC-DAR

Plaintiffs/
Counter-Defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/
Counter-Plaintiff.
INTERVENORS’ OPPOSITION TO DEFENDANT-COUNTERCLAIMANT
PUBLIC.RESOURCE.ORG, INC.’S MOTION TO CONSOLIDATE FOR THE
PURPOSES OF DISCOVERY
Intervenors American Society for Testing and Materials d/b/a ASTM International
(“ASTM”), National Fire Protection Association (“NFPA”) and American Society of Heating,
Refrigeration and Air Conditioning Engineers (“ASHRAE”) (collectively, the “Intervenors”)
respectfully submit this Opposition to the Defendant-Counterclaimant Public.Resource.Org,
Inc.’s (“Public Resource”) Motion to Consolidate for the Purpose of Discovery (the “Motion”).
In the Motion, Public Resource seeks to consolidate discovery in this case with discovery in a
case filed nine months earlier and captioned American Society of Testing and Materials, et al. v.
Public.Resource.Org, Inc., Case No. 1:13-cv-01215-TSC (the “Intervenors’ case”). In support
of this Opposition, Intervenors state as follows:

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I.

INTRODUCTION
On December 4, 2014, Judge Chutkan asked counsel for Public Resource if this case

should be consolidated with the Intervenors’ case, and Public Resource’s counsel responded as
follows:
Your Honor, on behalf of Public Resource, we also do not want
them consolidated.
1:13-cv-01215, Dkt. 61 at 4-5.
Inexplicably, less than two months later and on the eve of the close of fact discovery in
the Intervenors’ case, Public Resource filed a motion to consolidate the discovery in the
Intervenors’ case, which was set to close the following day, with the discovery in this case,
which appears to be in its infancy. Given this flip-flop, the Court might have expected Public
Resource to explain how the circumstances changed so dramatically during the intervening
weeks. However, Public Resource has not – and cannot – identify any recent developments that
could possibly explain its 180 degree turn on consolidation. In fact, there is no sound basis for
consolidation. Intervenors’ case has been pending for nine months longer than the AERA case,
and discovery is significantly farther along in Intervenors’ case. And although there are some
(but not all) legal issues in common, the factual issues in the two cases do not significantly
overlap. The only overlap identified by Public Resource is that its president, Carl Malamud, will
be deposed in both cases, but even for that deposition the factual allegations in the two cases are
distinct and there would be little if any redundancy in the depositions.
In fact, the motion to consolidate, especially when considered alongside Public
Resource’s Motion for Extension of Discovery Period, Corresponding Modification of
Scheduling Order, and Leave to Take More than 10 Depositions filed in the Intervenors’ case
(the “Motion to Extend Discovery”), is yet another attempt to prolong discovery and delay a
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resolution on the merits in the Intervenors’ case. Such a delay would significantly prejudice
Intervenors’ rights, and would create little if any efficiencies. Therefore, Public Resource cannot
meet its burden of proving consolidation is appropriate, and the Motion should be denied.
II.

FACTUAL BACKGROUND
Intervenors are standards development organizations (“SDOs”) that provide a significant

public benefit by developing private standards that governments at all levels occasionally
incorporate into statutes and regulations at virtually no cost to taxpayers. On August 6, 2013,
Intervenors sued Public Resource for copying hundreds of their standards and infringing their
trademarks. Notably, none of these standards or trademarks is at issue in the AERA case.
The parties in the Intervenors’ case engaged in extensive discovery up until the close of
fact discovery on January 30, 2015.1 Written discovery in this case is complete, see 1:13-cv1215, Dkt. 71 at 2, and there are no discovery motions pending in this case. The only fact
discovery yet to be completed by the Intervenors are the depositions of Carl Malamud,
individually and the 30(b)(6) deposition of Public Resource. The Intervenors have noticed these
depositions four times but, to this point, Mr. Malamud and Public Resource have refused to
appear for any of the depositions as noticed.
On May 23, 2014, more than nine months after the Intervenors’ case was filed, the
American Educational Research Association (“AERA”), the American Psychological
Association (“APA”), and the National Council on Measurement in Education (“NCME”
(collectively the “AERA Plaintiffs”), filed this separate case for copyright infringement against
Public Resource, Case No. 1:14-cv-00857-TSC-DAR (the “AERA Plaintiffs’ case”). The
copyrighted work-at-issue in the AERA Plaintiffs’ case is not at-issue in the Intervenors’ case. It
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Public Resource has also filed a Motion for Extension of Discovery Period, Corresponding
Modification of Scheduling Order, and Leave to Take More than 10 Depositions in the
Intervenors case on January 29, 2015. The Intervenors are opposing that motion.
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is the Intervenors’ understanding that the AERA Plaintiffs’ case is in the preliminary stages of
discovery, with significant written and oral discovery to come. It is the Intervenors’
understanding that Public Resource has produced only 78 documents in the AERA Plaintiffs’
case to date. Discovery remains open in this case, Dkt. 22, and it appears likely that discovery
might have to be extended beyond the current deadline of March 16, 2015, because the AERA
Plaintiffs currently have a motion to compel discovery that has not been decided. Dkt. 25, 27. It
is Intervenors’ understanding that none of the parties’ depositions have been noticed in the
AERA Plaintiffs’ case at this time.
After engaging in discovery with the Intervenors for a full year and a half, on January 29,
2015, the eve of the fact discovery deadline in the Intervenors’ case, Public Resource filed a
Motion to consolidate the two cases for the purposes of discovery even though the cases are at
different stages in the litigations and none of the hundreds of infringed works are involved in
both cases, and the only alleged overlapping discovery is the deposition of Mr. Malamud in his
individual capacity and as a corporate representative.
III.

ARGUMENT
Federal Rule of Civil Procedure 42(a) provides courts with the discretion to consolidate

actions involving common questions of law or fact. “The moving party bears the burden of
proof on a motion to consolidate.” Borough of Olyphant v. PPL Corp., 153 Fed. Appx. 80 (3d
Cir. 2005); Farahmand v. Rumsfeld, No. Civ. A. 02-1236, 2002 WL 31630709 (E.D. Pa. Nov.
20, 2002) (same).
Courts engage in a balancing test to determine if consolidation is appropriate: “[C]ourts
weigh considerations of convenience and economy against considerations of confusion and
prejudice.” Chang v. United States, 217 F.R.D. 262, 265 (D.D.C. 2003) (citing Stewart v.
O’Neill, 225 F. Supp. 2d 16, 20 (D.D.C. 2002)). Any interest in consolidating matters generally
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dissipates when cases with similar legal or factual issues proceed to very different stages of the
litigation, see Stewart v. O’Neill, 225 F. Supp. 2d 16, 21 (D.D.C. 2002) (denying motion to
consolidate three cases where one had advanced beyond discovery, another had already
completed “substantial discovery,” in which the court had ruled on “various discovery disputes,”
and the last had not yet entered discovery), or where there are few, if any common issues of fact,
see Int’l Controls & Measurements Corp. v. Honeywell Int’l, Inc, 5:12-cv-1766, 2013 WL
4805801, at *19 (N.D.N.Y. Sept. 9, 2013) (finding that movant failed to demonstrate that
consolidation would occur in a proposed transferee forum when the movant identified only a few
specific areas of overlapping evidence). Thus, “[i]f the parties at issue, the procedural posture
and the allegations in each case are different . . . consolidation is not appropriate.” Hanson v.
District of Columbia, 257 F.R.D. 19, 21 (D.D.C. 2009) (citing Stewart v. O’Neill, 225 F. Supp.
2d 16, 21 (D.D.C. 2002)).
Here, Public Resource has not provided any credible reason for consolidating discovery
in these matters. As described in greater detail below, this Court should not consolidate the
Intervenors’ and the AERA Plaintiffs’ cases for at least three reasons: (1) there is little, if any,
factual overlap between the two actions; (2) with the expiration of the fact discovery deadline the
Intervenors’ case has advanced to a very different stage of litigation compared to the AERA
Plaintiffs’ case; and (3) Public Resource’s last-minute delaying tactics have already prolonged
discovery in the ASTM case and prejudiced the Intervenors.
A.

There is Little Overlap in Fact Discovery Between the Intervenors’ Case and
the AERA Plaintiffs’ Case

As an initial matter, Public Resource’s Motion to Consolidate should be denied because
there is little, if any, overlap between the factual issues sought by the Plaintiffs in each case. In
particular, each case involves separate acts undertaken by Public Resource to unlawfully copy
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and disseminate each Plaintiff’s discrete copyrighted standards and each case seeks unique
discovery based on Public Resource’s specific conduct. For example, each of the Intervenors
seeks discovery regarding Public Resource’s infringement of its particular copyrights and
trademarks; Public Resource’s infringement of the AERA Plaintiffs’ intellectual property is of no
relevance in the Intervenors case. Similarly, Public Resource seeks unique discovery from each
Plaintiff in each case. For example, Public Resource has made no attempt to identify any
common discovery that it seeks from the Intervenors that would be relevant in the AERA case
even though it noticed 20 depositions the day after the close of fact discovery. See Ex. A.
Thus, Public Resource’s argument that “consolidation for the purposes of discovery
would ensure the most expeditious resolution” because “many of the facts at issue and some of
the parties that will be deposed are common to both cases,” Dkt. 33, at 5, is patently false. The
only example of a duplicative testimony that Public Resource identifies is its 30(b)(6) deposition
and the deposition of its sole employee, Carl Malamud. In fact, this is the only discovery that
could possibly have some limited overlap. Even with respect to these depositions, there is little,
if any, overlap between the two cases, and any overlap is generally based on common legal
issues in each case, not facts. As discussed above, the Intervenors’ discovery is generally
focused on Mr. Malamud and Public Resource’s infringement of the Intervenors’ intellectual
property and does not concern the copying of the AERA Plaintiffs’ works.
Although Public Resource now feigns concern about duplicative depositions, it claimed
to be willing and able to go forward with these depositions in the Intervenors’ case as late as
January 12, 2015 without demanding that the deposition or other discovery be consolidated. See
Ex. B. However, weeks later, Mr. Malamud and Public Resource refused to appear for their
depositions unless they were consolidated with the AERA Plaintiffs’ case. See Ex. C. Under

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these circumstances, Public Resources’ new-found concern about “redundant depositions,” lacks
credibility, and Public Resource’s assertion that “[c]onsolidating the cases would eliminate
redundant depositions,” is not the reason it seeks consolidation. Dkt. 33, at 5.
Moreover, any minimal overlap in the deposition of Public Resource and its founder does
not compel consolidation of discovery in these two cases, particularly where the Intervenors have
otherwise completed fact discovery and are ready to depose Public Resource and Mr. Malamud
now. Unlike Intervenors, the AERA Plaintiffs apparently are not yet prepared to depose Mr.
Malamud or Public Resource at this time, having received only 78 documents from Public
Resource to date and with a motion to compel still outstanding.
In sum, Public Resource completely failed to demonstrate that there will be significant
overlap in fact discovery and that consolidation of discovery is warranted. Therefore, the Motion
should be denied.
B.

The Fact Discovery Deadline in the Intervenors’ Case has Closed Whereas
Discovery in the AERA Plaintiffs’ Case is in its Infancy

As mentioned above, any interest in consolidating matters generally dissipates when
cases with similar legal or factual issues proceed to very different stages of the litigation. See
Stewart, 225 F. Supp. 2d at 21. The Intervenors’ and AERA Plaintiffs’ cases are at starkly
different points in the proceedings, which indicates that even if consolidation might have been
beneficial at a much earlier stage, it is not appropriate at this late juncture in the Intervenors’
case.
Fact discovery in the Intervenors’ case closed on January 30, 2015, and any remaining
fact discovery issues exist only due to last-minute ploys by Public Resource. Despite ample time
to complete fact discovery, Public Resource filed a Motion to extend the fact discovery period on
the eve of the deadline. Dkt. 71, Case No. 1:13-cv-01215-TSC-DAR. Regardless of the
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outcome of that last-minute motion, the parties have agreed not to engage in further written
discovery, see 13-cv-1215 Dkt. 71 at 3 of 14, and none of the depositions noticed after the close
of fact discovery appear to have any relevance in the AERA Plaintiffs’ case. See Ex B (noticing
20 depositions of employees of ASTM, NFPA and ASHRAE and several third-parties that have
no apparent connection to the AERA Plaintiffs’ case). In addition, there are no outstanding
discovery motions in the Intervenors’ case. To date, the parties in the Intervenors’ case have
each produced hundreds of thousands of pages of documents. The only fact discovery that
remains for Intervenors is to depose Carl Malamud, Public Resource’s sole employee and
30(b)(6) witness, who is the only overlapping fact witness between the Intervenors’ and the
AERA Plaintiffs’ cases. The only reason Mr. Malamud is yet to be deposed by Intervenors is
because he has repeatedly failed to appear for his depositions, which were first noticed prior to
the discovery deadline and then at dates proposed by Public Resource shortly after the close of
discovery. See Ex. C.
Conversely, discovery in the AERA Plaintiffs’ case appears to be in its infancy. Public
Resource has only produced 78 documents in that case. The AERA Plaintiffs are unprepared to
depose Mr. Malamud due to the dearth of information they have received from Public Resource.
Id. Plus, the AERA Plaintiffs currently have a discovery motion pending before the Court and
further disputes are sure to follow given Public Resource’s ominous reference to “the discovery
challenges in the AERA Plaintiffs’ case.” Mot. at 2. Thus, it seems highly unlikely that fact
discovery in the AERA Plaintiffs’ case will be complete by the current deadline of March 16,
2015.
Given the close of fact discovery and the agreement not to serve any more additional
discovery in the Intervenors’ case, there is no merit to Public Resource’s claim in its Motion that

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it will continue to deal with “disparate requests and obligations in two uncoordinated cases.”
Dkt. 33, at 4. But for Public Resource’s last-minute delays and Mr. Malamud’s repeated refusal
to appear at his noticed deposition, fact discovery would be complete in the Intervenors’ case and
Public Resource would only be engaging in further discovery in this case. Public Resource’s
purported concerns about disparate rulings in the two cases is similarly misguided because the
cases already are pending before the same District Judge and Magistrate Judge, and the Court
already demonstrated that it can and will consolidate hearings in these cases when faced with
similar legal issues in both cases. See Ex. D.
In conclusion, in light of the procedural posture in the two cases, there is no risk of Public
Resource dealing with disparate discovery requests or legal obligations going forward.
C.

Consolidating the Cases Would Reward Public Resource’s Last-Minute
Delay Tactics and Prejudice the Intervenors

Public Resource’s sudden interest in consolidation on the eve of the close of fact
discovery in the Intervenors’ case should be seen for what it is – an attempt to delay the progress
of the Intervenors’ case. This is particularly obvious in light of Public Resource’s objection to
consolidation less than two months earlier.
Consolidating the Intervenors’ and AERA Plaintiffs’ cases will unfairly prejudice the
Intervenors, who brought this suit more than 18 months ago to stop Public Resource’s massive
copyright and trademark infringement. Intervenors are ready to move beyond fact discovery as
soon as Public Resource and Mr. Malamud appear for their depositions and want to bring their
case to a resolution as quickly as possible.
On the other hand, Public Resource’s Motion is a bid to delay Intervenors’ case
indefinitely, by putting Intervenors’ case on hold pending the completion of open-ended and
ongoing discovery from an entirely different case. Given the nascent stage of discovery—and
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especially of Public Resource’s document production—in the AERA case, it may be months
before the AERA plaintiffs are prepared to take depositions of Mr. Malamud and Public
Resource. The timing of this Motion itself indicates that the real motivation is delay, not any
supposed efficiency. Rather than moving to consolidate the cases earlier or making a sincere
effort to complete fact discovery by the January 30, 2015 deadline, Public Resource waited until
the last moment to disrupt the schedule ordered by the Court and Intervenors’ efforts to close fact
discovery and proceed to expert discovery.
D.

Public Resource Failed to Meet Its Burden of Proving Consolidation Is
Warranted

As mentioned above, Public Resource bears the burden of proof in connection with this
Motion, and it failed to carry its burden. When Public Resource’s argument is stripped of its
many vague assertions about judicial economy, it rests entirely on the assumption that
consolidation will always conserve judicial resources when the cases involve the same defendant
and the movant alleges that the cases involve similar factual issues. However, Public Resource
completely ignores the different procedural postures of each action and the near complete
absence of factual overlap. Moreover, it fails to provide any plausible reason why consolidation
is a better course of action, as opposed to allowing the two cases to progress separately under the
supervision of the same judge, which vitiates any concern about inconsistent rulings.
In support of its argument, Public Resource does not cite a single opinion granting a
motion to consolidate in which, as here, the cases involved were at very different stages of
litigation. The principal opinion that Public Resource relies upon, for example, is easily
distinguishable from the current dispute. See Blasko v. Washington Metropolitan Area Transit
Authority, 243 F.R.D. 13 (D.D.C. 2007). In Blasko, consolidation of the cases at issue was
appropriate because both cases stemmed from a single incident in which a bus struck and killed
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the two decedents. Id. at 15. Critically, the court found that consolidation would promote
judicial efficiency largely because the two cases were only filed one and a half months apart and
both were in the “nascent stages” of discovery when the court consolidated the cases. Id. at 16.
At the time of consolidation, the most discovery that any plaintiffs had completed was
“exchang[ing] a number of discovery requests” with the common defendant. Id.
Public Resource’s reliance on Blasko ignores that the discovery deadline in the
Intervenors’ case has expired and fact discovery would already be complete but for Public
Resource’s last-minute delay tactics, while the AERA Plaintiffs’ case remains in the “nascent
stages” of discovery. Because these two cases are at very different stages of litigation they are
not aligned such that consolidation would fulfill the interests of convenience and judicial
economy sufficient to warrant prejudicing the Intervenors. See Stewart v. O’Neill, 225 F. Supp.
2d 16, 21 (D.D.C. 2002) (refusing to consolidate cases at very different stages of litigation).
IV.

CONCLUSION
For all the foregoing reasons, Public Resource failed to carry its burden of proving that

consolidation of discovery is appropriate, particularly when the discovery period has closed in
the Intervenors’ case. Accordingly, the Intervenors respectfully request that the Court deny the
Motion.

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Dated: February 17, 2015

Respectfully submitted,
/s/ J. Kevin Fee
Michael F. Clayton (D.C. Bar: 335307)
J. Kevin Fee (D.C. Bar: 494016)
Jordana S. Rubel (D.C. Bar: 988423)
Morgan, Lewis & Bockius LLP
1111 Pennsylvania Ave., N.W.
Washington, D.C. 20004
Telephone: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
[e-mail]
Counsel For American Society For Testing And Materials
d/b/a/ ASTM International
/s/ Anjan Choudhury
Anjan Choudhury (D.C. Bar: 497271)
Munger, Tolles & Olson LLP
355 South Grand Avenue, 35th Floor
Los Angeles, CA 90071
Tel: [phone]
Email: [e-mail]
Kelly M. Klaus
Jonathan H. Blavin
Michael J. Mongan
Munger, Tolles & Olson LLP
560 Mission St., 27th Floor
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
[e-mail]
[e-mail]
Counsel for National Fire Protection Association, Inc.
/s/ Joseph R. Wetzel
Jeffrey S. Bucholtz (D.C. Bar: 452385)
King & Spalding LLP
1700 Pennsylvania Avenue, NW, Ste. 200
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Washington, DC 20006-4707
Tel: [phone]
Email: [e-mail]
Kenneth L. Steinthal
Joseph R. Wetzel
King & Spalding LLP
101 Second Street, Ste. 2300
San Francisco, CA 94105
Tel: [phone]
Email: [e-mail]
[e-mail]
Counsel for American Society of Heating, Refrigerating,
and Air Conditioning Engineers

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CERTIFICATE OF SERVICE
I hereby certify that a true and correct copy of the foregoing Motion for Protective Order
was served this 17th day of February, 2015 via CM/ECF upon the following:
Counsel for National Fire Protection Association, Inc.
Jonathan H. Blavin ([e-mail])
Anjan Choudhury ([e-mail])
Kelly M. Klaus ([e-mail])
Nathan M. Rehn ([e-mail])
Counsel for American Society of Heating, Refrigerating, and Air Conditioning Engineers
Jeffrey S. Bucholtz ([e-mail])
Kenneth L. Steinthal ([e-mail])
Joseph R. Wetzel ([e-mail])
Blake Cunningham ([e-mail])
Counsel for Public.Resource.Org, Inc.
Andrew Bridges ([e-mail])
Kathleen Lu ([e-mail])
David Halperin ([e-mail])
Mitchell L. Stoltz ([e-mail])
Corynne McSherry ([e-mail])
Joseph Gratz ([e-mail])
Mark Lemley ([e-mail])

/s/ J. Kevin Fee

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