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

Filing 89

REPLY to opposition to motion re #69 MOTION for Summary Judgment and Opposition to Plaintiffs' Motion for Summary Judgment and Permanent Injunction, #60 MOTION for Summary Judgment Filed MOTION for Permanent Injunction (Plaintiffs' Reply in Further Support of Plaintiffs' Motion for Summary Judgment and Permanent Injunction and Opposition to Defendant's Motion for Summary Judgment) filed by AMERICAN EDUCATIONAL RESEARCH ASSOCIATION, INC., AMERICAN PSYCHOLOGICAL ASSOCIATION, INC., NATIONAL COUNCIL ON MEASUREMENT IN EDUCATION, INC.. (Attachments: #1 Plaintiffs' Statement of Material Facts in Opposition to Defendant's Motion for Summary Judgment, #2 Plaintiffs' Reply to Defendants' Statement of Disputed Facts, #3 Plaintiffs' Response to Defendant's Objections to Plaintiffs' Evidence, #4 Declaration of Nikia L. Gray, #5 Exhibit VVV, #6 Exhibit WWW, #7 Exhibit XXX, #8 Exhibit YYY, #9 Exhibit ZZZ, #10 Exhibit AAAA, #11 Exhibit BBBB, #12 Exhibit CCCC, #13 Exhibit DDDD, #14 Exhibit EEEE, #15 Exhibit FFFF, #16 Exhibit GGGG, #17 Exhibit HHHH, #18 Exhibit IIII, #19 Exhibit JJJJ, #20 Exhibit KKKK, #21 Exhibit LLLL, #22 Exhibit MMMM, #23 Exhibit NNNN, #24 Exhibit OOOO, #25 Exhibit PPPP, #26 Exhibit QQQQ, #27 Exhibit RRRR, #28 Exhibit SSSS, #29 Exhibit TTTT, #30 Exhibit UUUU, #31 Exhibit VVVV, #32 Exhibit WWWW, #33 Exhibit XXXX, #34 Exhibit YYYY, #35 Exhibit ZZZZ, #36 Exhibit AAAAA, #37 Exhibit BBBBB, #38 Exhibit CCCCC, #39 Exhibit DDDDD, #40 Exhibit EEEEE, #41 Exhibit FFFFF, #42 Exhibit GGGGG, #43 Exhibit HHHHH, #44 Exhibit IIIII, #45 Exhibit JJJJJ, #46 Exhibit KKKKK, #47 Exhibit LLLLL, #48 Exhibit MMMMM, #49 Exhibit NNNNN, #50 Exhibit OOOOO, #51 Exhibit PPPPP, #52 Exhibit QQQQQ, #53 Exhibit RRRRR, #54 Exhibit SSSSS, #55 Exhibit TTTTT, #56 Exhibit UUUUU, #57 Exhibit VVVVV, #58 Exhibit WWWWW, #59 Exhibit XXXXX, #60 Exhibit YYYYY, #61 Exhibit ZZZZZ, #62 Exhibit AAAAAA, #63 Declaration of Wayne Camara, #64 Plaintiffs' Objections to Defendant's Evidence, #65 Certificate of Service)(Hudis, Jonathan)

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/Counterclaim-Defendants,
v.
PUBLIC.RESOURCE.ORG, INC.,
Defendant/Counterclaim-Plaintiff.

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Civil Action No. 1:14-cv-00857-TSC-DAR
PLAINTIFFS’ REPLY IN FURTHER
SUPPORT OF ITS MOTION FOR
SUMMARY JUDGMENT AND
PERMANENT INJUNCTION AND
OPPOSITION TO DEFENDANT’S
MOTION FOR SUMMARY
JUDGMENT

Respectfully submitted,
Jonathan Hudis (DC Bar # 418872)
Nikia L. Gray (pro hac vice)
Jonathan P. Labukas (DC Bar # 998662)
QUARLES & BRADY LLP
1700 K Street NW, Suite 825
Washington, DC 20006-3825
Tel. [phone]
Fax [phone]
E-Mail [e-mail]
E-Mail Nikia [e-mail]
E-Mail [e-mail]
Counsel for Plaintiffs American Educational
Research Association, Inc., American
Psychological Association, Inc., and
National Council on Measurement in
Education, Inc.

TABLE OF CONTENTS
TABLE OF AUTHORITIES .................................................................................................v
INTRODUCTION .................................................................................................................1
ARGUMENT .........................................................................................................................2
I.

PLAINTIFFS’ UNREBUTTED PROOF WARRANTS SUMMARY JUDGMENT IN
THEIR FAVOR AND DENIAL OF DEFENDANT’S CROSS-MOTION ...................2
A.

The Parties’ Respective Burdens on Cross-Motion For Summary Judgment ......2

B.

Plaintiffs’ Unrebutted Proof of Defendants’ Direct Infringement .......................3

C.

Plaintiffs’ Unrebutted Proof of Defendant’s Liability For Contributory
Infringement .........................................................................................................5

II.

ENTRY OF SUMMARY JUDGMENT ON DEFENDANT’S AFFIRMATIVE
DEFENSES IS WARRANTED FOR PUBLIC RESOURCE’S FAILURE OF PROOF
OR ARGUMENT IN OPPOSITION ............................................................................7

III.

DEFENDANT’S DEFENSES ASSERTED FOR THE FIRST TIME ON SUMMARY
JUDGMENT SHOULD BE DISMISSED FOR FAILURE TO RAISE THEM AB
INITIO IN PUBLIC RESOURCE’S ANSWER ............................................................8
A.

Defenses Not Raised in Defendant’s Answer Cannot be Raised for the First
Time on Summary Judgment ...............................................................................8

B.

In Any Event, the Systems, Processes, Procedures Bar of the Copyright Act
Does Not Render Plaintiffs’ 1999 Standards Uncopyrightable ...........................10

C.

Moreover, the Idea / Expression Merger Doctrine Does Not Render Plaintiffs’
1999 Standards Uncopyrightable ..........................................................................12

D.

Additionally, the Scenes a Faire Doctrine Does Not Render Plaintiffs’ 1999
Standards Uncopyrightable ..................................................................................15

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IV.

WHETHER VOLUNTARILY PROMULGATED STANDARDS MAINTAIN THEIR
COPYRIGHT PROTECTION AFTER BEING PURPORTEDLY INCORPORATED
BY REFERENCE INTO REGULATION(S) IS A POLICY DECISION RESERVED
TO CONGRESS, NOT THE COURTS........................................................................18
A.

B.

The Cases Relied Upon by Defendant, Denying Copyright Protection to
Governmental Works, are Inapposite; None of The Cases Involve Voluntarily
Promulgated Standards ........................................................................................23

C.

If the Views of Defendant Adopted, the Loss of Copyright Protection via
Government Incorporation by Reference of Voluntarily Promulgated Standards
Would Amount to an Unconstitutional Taking Without Just Compensation .......26

D.

V.

The Copyright Act Does Not Provide for the Loss of Protection of a Work
Allegedly Incorporated by Reference into Regulation(s) ....................................19

Even if the Court were Inclined to Consider Defendant’s Policy Arguments,
They are Unsound ................................................................................................28

DEFENDANT’S DIGITAL COPYING AND POSTING PLAINTIFFS’ STANDARDS
TO THE INTERNET IS NOT FAIR USE ...................................................................30
A.
B.

Public Resource’s Actions Do Not Fall Under the Exception for Reproductions
for People with Disabilities..................................................................................34

C.

The 1999 Standards are Not a Factual Work; They are a Collective Set of
Opinions to Serve as Guidance for Best Testing Practices ..................................37

D.

Defendant Took the Entirety of the Sponsoring Organizations’ Work - Well More
Than Necessary Even Under Defendant’s Theory...............................................37

E.

VI.

Nothing Public Resource did with the 1999 Standards was Transformative .......31

Defendant’s Activities Harmed the Market for the 1999 Standards and its
Threatened Activities Will Harm the Market for the 2014 Standards .................38

PLAINTIFFS ARE ENTITLED TO A PERMANENT INJUNCTION……………..41
A.

Plaintiffs’ Established Success on the Merits for a Permanent Injunction ..........41

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B.

Plaintiffs Will Suffer Irreparable Injury Without a Permanent Injunction ..........43

C.

The Balance of Hardships Weighs in Favor of an Injunction ..............................45

D.

The Public Interest Will Be Served by an Injunction ..........................................46

E.

Remedies Available at Law Are inadequate ........................................................47

VII. DEFENDANT’S AMICI MERELY RESTATE DEFENDANT’S ARGUMENTS AND
FAIL FOR THE SAME REASONS .............................................................................47
VIII. CONCLUSION .............................................................................................................50

-iv-

TABLE OF AUTHORITIES
Cases
Aalmuhammed v. Lee, 202 F.3d 1227 (9th Cir. 2000) .................................................................... 4
AARP v. Sycle, 991 F. Supp. 2d 224 (D.D.C. 2013) .................................................................... 41
Arista Records LLC v. Lime Wire LLC, No. 06 Civ. 05936, 2010 WL 10031251 (S.D.N.Y. Aug.
9, 2010 ....................................................................................................................................... 45
Armstrong v. United States, 364 U.S. 40 (1960) .......................................................................... 27
Atari Games Corp v. Oman, 888 F.2d 878 (D.C. Cir. 1989) ........................................................ 16
Authors Guild, Inc. v. HathiTrust, 755 F.3d 87 (2d Cir. 2014) .............................................. 32, 36
Banks v. Manchester, 128 U.S. 244 (1888) .................................................................................. 24
Bikram's Yoga College of India L.P. v. Evolution Yoga, LLC, 803 F.3d 1032 (9th Cir. 2015) ... 11,
12
Billy-Bob Teeth, Inc. v. Novelty, Inc., 329 F.3d 586 (7th Cir. 2003) .............................................. 3
Breaking the Chain Found., Inc. v. Capitol Educ. Support, Inc., 589 F. Supp. 2d 25 (D.D.C.
2008).......................................................................................................................................... 42
*BUC Intern. Corp. v. Int’l Yacht Council Ltd., 489 F.3d 1129 (11th Cir. 2007).................. 13, 14
Building Officials & Code Adm. v. Code Technology, Inc., 628 F.2d 730 (1st Cir. 1980) .......... 25
Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) ..................................................... 31, 38
*Castle Rock Entm’t, Inc. v. Carol Pub. Group Inc., 150 F.3d 132 (1998) ................................. 40
*CCC Info. V. Servs., Inc. v. Maclean Hunter Mkt. Reports., Inc., 44 F.3d 61 (2d. Cir. 1994) ... 26
Celotex Corp. v. Catrett, 477 U.S. 317 (1986) ............................................................................... 8
Clarke v. United States, 915 F.2d 699 (D.C. Cir. 1990) .............................................................. 43

-v-

Code Revision Comm. V. Public.Resource.org, 1:15-CV-02594-MHC (N.D.Ga. Jan. 15, 2016) . 6
Comm’n of Internal Rev. v. Asphalt Prods. Co., Inc., 482 U.S. 117 (1987) ................................ 21
Consumer Prod. Safety Comm. v. GTE Sylvania Inc., 447 U.S. 102 (1980) ................................ 21
CoStar Realty Info., Inc. v. Field, 737 F.Supp.2d 496 (D. Md. 2010)........................................ 4, 6
Davis v. Blige, 505 F.3d 90 (2d. Cir. 2007) .................................................................................... 4
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006)...................................................... 41, 47
*Educational Testing Services v. Katzman, 793 F.2d 533 (3d Cir. 1986) .............................. 13, 14
Enterprise Mngm’t Ltd., Inc. v. Warrick, 717 F.3d 1112 (10th Cir. 2013)................................... 12
Fay v. Perles, 59 F.Supp.3d 128 (D.D.C. 2014) ............................................................................. 2
*Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) .............................. 3, 16, 17
Fox Television Stations, Inc. v. FilmOn X LLC, 966 F. Supp. 2d 30 (D.D.C. 2013)................... 46
Gilbert v. Napolitano, 670 F.3d 258 (D.C. Cir. 2012)......................................................... 8, 9, 10
Grayned v. City of Rockford, 408 U.S. 104 (1972)....................................................................... 29
Greene v. Brown, 104 F. Supp. 3d 12 (D.D.C. 2015) .................................................................. 41
*Hanley-Wood LLC v. Hanley Wood LLC, 783 F. Supp. 2d 147 (D.D.C. 2011) ......................... 42
Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985) .................................... 39
Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197 (9th Cir. 1989).................................. 16
Harris v. Sec’y, U.S. Dep’t of Veterans Affairs, 126 F.3d 339 (D.C. Cir. 1997)..................... 9, 10
Horne v. Dept. of Agriculture, 135 S.Ct. 2419 (2015).................................................................. 26
Howell v. Miller., 91 F. 129 (6th Cir. 1898) ................................................................................. 24

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Hustler Mag. Inc. v. Moral Majority Inc., 796 F.2d 1148 (9th Cir. 1986) ................................... 30
Imperial Residential Design, Inc. v. Palms Dev. Grp., Inc., 70 F.3d 96 (11th Cir. 1995) ............. 3
James v. Campbell, 104 U.S. 356 (1882) .................................................................................... 28
Jin v. Ministry of State Sec., 557 F. Supp. 2d 131 (D.D.C. 2008) ................................................ 47
Jones v. United States, 934 F. Supp. 2d 284 (D.D.C. 2013)........................................................... 5
Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199 (3d Cir. 2005)............................................... 12
*Kepner-Tregoe, Inc. v. Leadership Software, Inc., 12 F.3d 527 (5th Cir. 1994) ........................ 11
Kern River Gas Transmission Co. v. Coastal Corp., 899 F.2d 1458 (5th Cir. 1990)................... 25
Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir. 2004) ........... 5, 17
Lingle v. Chevron U.S.A. Inc., 544 U.S. 528 (2005)..................................................................... 27
*Lucas v. S. Carolina Coastal Council, 505 U.S. 1003 (1992) .............................................. 27, 28
Mai Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511 (9th Cir. 1993)....................................... 4, 6
Marcus v. Rowley, 695 F.2d 1171 (9th Cir. 1983)....................................................................... 38
Matthews v. Freedman, 157 F.3d 25 (1st Cir.1998) .................................................................... 16
Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197 (C.D. Cal. 2007) . 45
Minasian v. Standard Chartered Bank, PLC, 109 F.3d 1212 (7th Cir. 1997) .............................. 37
Murphy v. Hunt, 455 U.S. 478, 102 S.Ct. 1181, 71 L.Ed.2d 353 (1982) ..................................... 43
Music v. Gonzalez, 430 F.3d 888 (7th Cir. 2005) ......................................................................... 40
Natural Res. Defense Council v. U.S. Envtl. Prot. Agency, 915 F.2d 1314 (9th Cir. 1990) ........ 21
*North Jersey Media Group, Inc. v. Jeanine Pirro and Fox News Network, LLC, 74 F.Supp.3d
605 (S.D.N.Y. 2015) ........................................................................................................... 31, 33
-vii-

Peter Letterese and Assoc., Inc. v. World Inst. of Scientology Enter., 533 F.3d 1287 (11th Cir.
2008).......................................................................................................................................... 41
Practice Mgmt. Info. Corp. v. Am. Medical Ass’n, 121 F.3d 516 (9th Cir. 1997) ........................ 26
Pruneyard Shopping Center v. Robins, 447 U.S. 74 (1980) ......................................................... 26
Rafeedie v. I.N.S., 795 F. Supp. 13 (D.D.C. 1992) ...................................................................... 29
Rains v. Cascade Indus., Inc., 402 F.2d 241 (3d Cir.1968) ............................................................ 2
Regions Hosp. v. Shalala, 522 U.S. 448, 118 S.Ct. 909 (1998) ................................................... 35
Rundquist v. Vapiano SE, 798 F. Supp. 2d 102 (D.D.C. 2011) ...................................................... 5
*Schnapper v. Foley, 471 F.Supp. 426 (D.D.C. 1979) ................................................................ 29
*Situation Mngt. Sys., Inc. v. ASP. Consulting LLC, 560 F.3d 53 (1st Cir. 2009) ................. 10, 37
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984) ..................................... 35
*Sturdza v. United Arab Emirates, 281 F.3d 1287 (D.C. Cir. 2002)............................................ 16
TechnoMarine SA v. Giftports, Inc., 758 F.3d 493 (2d Cir. 2014) ............................................... 42
Ticketmaster LLC v. RMG Tech., Inc., 507 F.Supp.2d 1096 (C.D.Cal. 2007) ............................... 6
Tisdale v. Gravitt, 51 F.Supp.3d 1378 (N.D.Ga 2014) ................................................................... 2
Veeck v. Southern Bldg. Code Congress Intern., Inc., 293 F.3d 791 (5th Cir. 2002)................... 24
Washington Mkt. Co. v. Hoffman, 101 U.S. 112 (1879) ............................................................... 35
Wheaton v. Peters, 33 U.S. 591 (1834)........................................................................................ 23
Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008) ...................................................... 47
Worldwide Church of Good v. Phila. Church of God, Inc., 227 F.3d 1110 (9th Cir. 2000) ....... 41

-viii-

Statutes
17 U.S.C. § 101 ............................................................................................................................... 4
17 U.S.C. § 102(b) ............................................................................................................ 10, 22, 37
17 U.S.C. § 105 ................................................................................................................. 22, 23, 24
17 U.S.C. § 106 ............................................................................................................................. 28
17 U.S.C. § 106 (1) ......................................................................................................................... 4
17 U.S.C. § 106 (2) ......................................................................................................................... 4
17 U.S.C. § 106 (3) ......................................................................................................................... 4
17 U.S.C. § 106 (5) ......................................................................................................................... 4
17 U.S.C. § 106(2) ........................................................................................................................ 39
17 U.S.C. § 107(4) .................................................................................................................. 38, 39
17 U.S.C. § 121 ...................................................................................................................... passim
17 U.S.C. § 410(c) ...................................................................................................................... 3, 4
17 U.S.C. §§ 102 ........................................................................................................................... 21
Rules
Fed. R. Civ. P. 56(a) ....................................................................................................................... 2
Fed. R. Civ. P. 8(c) ......................................................................................................................... 8
Fed. R. Evid. 701 .......................................................................................................................... 15
MD. Admin. Rule 09.12.26.06(AE)(1)(c)(i)................................................................................. 20
Minn. Admin. Rule 4761.2460(2)................................................................................................. 20

-ix-

Other Authorities
*H.R. Rpt. 94-1476, 58, 1976 U.S.C.C.A.N. 5659 (1976) ............................................... 23, 24, 30
Regulations
34 C.F.R. § 668.146(b)(6)............................................................................................................. 20

-x-

INTRODUCTION
Plaintiffs/Counterclaim-Defendants, American Educational Research Association, Inc.,
American Psychological Association, Inc., and National Council on Measurement in Education,
Inc. (collectively, “Plaintiffs” or the “Sponsoring Organizations”), file this combined Reply in
support of its Motion for Summary Judgment [Dkt. 60] (“Plfs. Mtn.”) and Opposition to
Defendant/Counterclaim-Plaintiff’s,

Public.Resource.Org,

Inc.

(Defendant

or

“Public

Resource”), Cross-Motion for Summary Judgment [Dkt. 69] (“Dft. Mtn.”). Public Resource has
failed to rebut Plaintiffs’ prima facie case establishing the basis for Plaintiffs entitlement to
summary judgment. Public Resource directly and contributorily infringed Plaintiffs’ copyright
in the “Standards for Educational and Psychological Testing (1999 ed.)” (the “1999 Standards”).
Accordingly, summary judgment in Plaintiffs’ favor is warranted.
Public Resource does not dispute, and in fact admits, generating an unauthorized copy of
the 1999 Standards and posting that copy to the Internet where it was accessed by the public.
Without dispute, Public Resource has directly and contributorily infringed Plaintiffs’ copyright.
Its defense amounts to three arguments: (1) the incorporation of the 1999 Standards by reference
into administrative regulations turned the 1999 Standards into the “Law,” resulting in the loss of
any copyright protection; (2) irrespective of its status as the “Law,” the 1999 Standards is not
entitled to copyright protection; and (3) Public Resource’s unauthorized copying is fair use.
These defenses are without merit.
Public Resource’s public policy arguments: 1) involve issues that are within the exclusive
province of Congress to address, and 2) if accepted would result in serious Constitutional issues.
Public Resource’s arguments on the merits fail because Defendant ignores that the 1999
Standards is a book containing more than just the standards that were incorporated by reference.

-1-

Public Resource indiscriminately copied and encouraged further unlawful access to the entire
1999 Standards. Thus, even if all of Public Resource’s arguments are accepted - and they should
not be - there still remains copyrightable expression within the 1999 Standards that is not the
“Law” and which Public Resource infringed.
ARGUMENT
I.

PLAINTIFFS’ UNREBUTTED PROOF WARRANTS SUMMARY JUDGMENT
IN THEIR FAVOR AND DENIAL OF DEFENDANT’S CROSS-MOTION
A.

The Parties’ Respective Burdens on Cross-Motion for Summary Judgment

The Court may only grant summary judgment if “the movant shows that there is no
genuine dispute as to any material fact and the movant is entitled to judgment as a matter of
law.” Fed. R. Civ. P. 56(a). Where the parties have made cross-motions for summary judgment,
that fact itself does not establish that there are no genuine issues for trial. Fay v. Perles, 59
F.Supp.3d 128, 132 (D.D.C. 2014). Rather, each cross-motion must be considered separately
and each party bears its own burden to establish that it is entitled to summary judgment.
Tinsdale v. Gravitt, 51 F.Supp.3d 1378, 1387 (D.D.C. 2014); Rains v. Cascade Indus., Inc., 402
F.2d 241, 245 (3d Cir.1968) (“Cross-motions are no more than a claim by each side that it alone
is entitled to summary judgment, and the making of such inherently contradictory claims does
not constitute an agreement that if one is rejected the other is necessarily justified....”).
Plaintiffs moved for summary judgment on their claims of direct and contributory
copyright infringement. (See generally Plfs. Mtn. [Dkt. 60]). Public Resource crossed-moved
for summary judgment that the 1999 Standards are (allegedly) not entitled to copyright
protection or, in the alternative, that Defendant’s actions constituted fair use. (See generally Dft.
Mtn. [Dkt. 69]). Public Resource’s arguments are without merit and fail to raise a genuine issue
of material fact in response to the Sponsoring Organizations’ motion. Thus, Plaintiffs alone are
-2-

entitled to summary judgment in their favor. Public Resource’s cross-motion must be denied.
B.

Plaintiffs’ Unrebutted Proof of Defendants’ Direct Infringement

To prevail on their claim of direct copyright infringement, Plaintiffs are only required to
prove (1) ownership of a valid copyright and (2) copying of elements of the work that are
original. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). Public Resource
does not dispute that the 1999 Standards were registered with the U.S. Register of Copyrights
and that Plaintiffs obtained assignments or work made-for-hire (“WMFH”) agreements from 15
of the Joint Committee authors. (Dft. State. of Disputed Facts in Opp. to Plfs. Mtn. for S.J.
(“Dft. SDF”) ¶¶ 40-41 [Dkt. 69-3]; Levine SJ Decl., ¶¶ 25, 26, Exh. RRR, Exh. SSS).
Public Resource incorrectly suggests that Plaintiffs’ must further prove that those
assignments/WMFH agreements were effective. However, Defendant expressly does not seek
summary judgment on Plaintiffs’ copyright ownership. (Dft. Memo. in Support of its Mtn. for
S.J. (“Dft. Memo.”) at 2, n.1 [Dkt. 69-1]). Moreover, Plaintiffs’ copyright registrations (Levine
SJ Decl., ¶ 25, Exh. RRR, ¶ 26, Exh. SSS) are prima facie evidence of Plaintiffs’ ownership, see
17 U.S.C. § 410(c).

Thus, ownership is established for purposes of summary judgment.

Regardless, Public Resource cannot challenge Plaintiffs’ assignments/WMFH. None of the
parties to those documents dispute the transfers, and as a third-party infringer Public Resource
lacks standing to question their effectiveness. Billy-Bob Teeth, Inc. v. Novelty, Inc., 329 F.3d
586, 592-93 (7th Cir. 2003) (if there is “no dispute between the copyright owner and the
transferee about the status of the copyright,” it is “unwarranted to permit a third-party infringer
to invoke section 204(a) to avoid suit for copyright infringement”); Imperial Residential Design,
Inc. v. Palms Dev. Grp., Inc., 70 F.3d 96, 99 (11th Cir. 1995) (same). 1
1

Public Resource’s assertion that Plaintiffs were required to seek assignments from individuals
who commented on or assisted with the development of the 1999 Standards is incorrect.
-3-

Regarding the second element of Plaintiffs’ infringement claim, Public Resource admits
that it purchased a used copy of the 1999 Standards and, upon receipt, disassembled it and
scanned the entire book to a PDF file (Dft. SDF at ¶ 76 [Dkt. 69-3]; Hudis SJ Decl., ¶ 2, Exh. A,
pp. 257-259, 261-264, ¶ 21, Exh. T, Int. Ans. 3-4, ¶ 26, Exh. Y). Public Resource further admits
that it posted the resulting PDF file (i.e., the entire 1999 Standards) to the Internet (Dft. SDF at ¶
76) [Dkt. 69-3]; Dft. Ans. ¶¶ 7, 55 [Dkt. 12]; Hudis SJ Decl., ¶ 2, Exh. A, pp. 233-34, 271-72; ¶
2 1, Exh. T, Int. Ans. No. 2). Public Resource also does not dispute that it undertook these
actions without Plaintiffs’ permission (Dft. SDF at ¶ 80 [Dkt. 69-3]; Hudis SJ Decl., ¶ 35, Exh.
HH, Admission Nos. 4-5; Levine SJ Decl., ¶ 29; Ernesto SJ Decl., ¶ 35; Wise SJ Decl., ¶ 26).
Therefore, there is no genuine issue of material fact that Public Resource copied the 1999
Standards, 2 created derivative works thereof, distributed copies, and displayed the work in
violation of Plaintiffs’ rights under 17 U.S.C. § 106 (1), (2), (3), and (5).
Accordingly, the only remaining matter is the validity of copyright in the 1999 Standards.
As the Sponsoring Organizations’ registrations are also prima facie evidence of validity, see 17
U.S.C. § 410(c), Public Resource shoulders the burden of rebutting that presumption. Lexmark

Editorial or scholarly assistance, without more, does not result in joint-authorship.
Aalmuhammed v. Lee, 202 F.3d 1227, 1235 (9th Cir. 2000) (providing “substantial and valuable
contributions,” including technical, scholarly, creative, and editorial assistance, does not result in
joint authorship unless the contribution was independently copyrightable and the authors
intended to create a joint work). Regardless, Plaintiffs are only required to have co-ownership of
the copyright in order to bring an action for infringement, not sole ownership. Davis v. Blige,
505 F.3d 90, 98 (2d. Cir. 2007).
2
In its Statement of Disputed Facts, Public Resource contends that a “copy” for the purposes of
the Copyright Act is limited to physical objects and thus Defendant did not make a “copy” of the
1999 Standards in the “legal sense.” (See e.g. Dft. SDF ¶ 51, 58, 66, 82 [Dkt. 69-3]). This
simply is false. Courts have long held that electronic copies of works saved in a computer’s
memory are “copies” under 17 U.S.C. § 101. See e.g., CoStar Realty Info., Inc. v. Field, 737
F.Supp.2d 496, 507 (D. Md. 2010) (temporary electronic copy of a work stored in a computer’s
RAM constitutes an infringing “copy”); Mai Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511,
518 (9th Cir. 1993) (same).
-4-

Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522, 533-34 (6th Cir. 2004). Public
Resource has not done so.
C.

Plaintiffs’ Unrebutted Proof of Defendant’s Liability for Contributory
Infringement

There is no genuine issue of material fact that Public Resource’s actions also constitute
contributory infringement. Plaintiffs have shown (1) direct infringement by third parties, (2)
knowledge by Public Resource that third parties were directly infringing, and (3) substantial
participation by Public Resource in the infringing activities. Rundquist v. Vapiano SE, 798 F.
Supp. 2d 102, 126 (D.D.C. 2011). Summary judgment in Plaintiffs’ favor is thus warranted.
Direct Infringement by Third Parties. Public Resource admits that the unauthorized PDF
copies it posted to the Internet were repeatedly accessed by members of the public (Dft. SDF ¶¶
85-86 [Dkt. 69-3]; Hudis SJ Decl.,¶¶ 21, 29, Exh. T, Int. Ans. 2 and Amended Ans. 5 (labeled 6),
Exh. BB, pp. 124-132, ¶ 37, Exh. II). It also does not dispute that neither its nor the Internet
Archive’s website has restrictions in place to prevent individuals from downloading or printing
additional copies of the 1999 Standards. (Dft. SDF ¶¶ 87-88 [Dkt. 69-3]; Hudis SJ Decl., ¶¶ 2,
27, Exh. A, pp. 347-48, Exh. Z, pp. 324-28, 167-173). Public Resource’s only challenge is that
Plaintiffs’ evidence that students were obtaining free copies is allegedly inadmissible. 3 (Dft.
SDF at ¶ 91 [Dkt. 69-3]; Camara Decl., ¶ 21, Exh. MMM; Wise Decl., ¶¶ 27-28, Exh. LLL). On
summary judgment a court may consider evidence that is inadmissible if it can be converted at
trial. Jones v. United States, 934 F. Supp. 2d 284, 289 (D.D.C. 2013) (“At the summary
judgment stage, a party is not required to produce evidence in a form that is admissible, but the
3

Plaintiffs have no ability to verify when Public Resource uploaded the 1999 Standards to its
own website, nor to identify who accessed the document published there, 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, and some of Defendant’s logs were destroyed (Def.
SDF ¶¶ 84-85; Hudis SJ Decl., ¶¶ 21, 36, Exh. T, Int. Ans. 2 and Amended Ans. 5 (labeled 6)).
-5-

evidence must be capable of being converted into admissible evidence at trial.”).
In this instance Plaintiffs sufficiently established third-party access to the infringed
copies of the 1999 Standards over the Internet. 4 “[W]hen a person browses a website, and by
doing so displays copyrighted material, a copy of the work is made in the computer’s random
access memory (RAM), to permit viewing of the material. In making a copy, even a temporary
one, the person who browsed infringes the copyright.” CoStar Realty Info., Inc. 737 F.Supp.2d
at 507 (D. Md. 2010); Mai Sys. Corp., 991 F.2d at 518 (9th Cir. 1993) (temporary storage of a
copy of a program in RAM constituted copyright infringement); Ticketmaster LLC v. RMG
Tech., Inc., 507 F.Supp.2d 1096, 1105 (C.D.Cal. 2007) (a cache copy of a webpage, which is
stored in RAM upon viewing, constitutes copyright infringement).
Defendant’s Knowledge. Public Resource also does not dispute that Internet users were
accessing the unauthorized PDF copies of the 1999 Standards Defendant published online.
Public Resource further admits that its purpose was to make the 1999 Standards available for
free to any and all (Dft. SDF ¶¶ 49, 62, 63 [Dkt. 69-3]; Hudis SJ Decl., ¶ 2, Exh. A, pp. 94-95,
105-109, 172-73, 187-88, 218-219, 257, 358-61, ¶ 3, Exh. B, Section II.B., ¶ 4, Exh. C. Section
2.1). In fact, just last month in a companion case, Public Resource stipulated to facts admitting
that the electronic nature of the copies it posts to the Internet and their availability on the Internet
“magnifies the ease and speed with which they may be copied and distributed to others” (Plfs.
SDF ¶ 4; Gray Decl. ¶ 54, Ex. UUUUU, Stip. Of Facts, Code Revision Comm. V.
Public.Resource.org, 1:15-CV-02594-MHC at ¶¶ 48, 54, 58 (N.D.Ga. Jan. 15, 2016)). Public
Resource additionally stipulated that it posts material to the Internet “for the purpose of
facilitating, enabling, encouraging and inducing others to view, download, print, copy, and
4

That Public Resource argues over the exact number of times access and downloading occurred
is immaterial; a single act of contributory infringement is sufficient to establish liability.
-6-

distribute those volumes…” (Id. (emphasis added)). Moreover, Public Resource admits that,
after Plaintiffs informed it of specific infringing uses by third parties, it refused to remove the
unauthorized copies from the Internet until Plaintiffs filed suit and threatened to move for a
preliminary injunction. (Dft. SDF ¶¶ 92-93; (Levine Decl., ¶ 31, Exh. UUU; Hudis Decl., ¶ 2,
Exh. A, pp. 310-28, ¶ 38, Exh. JJ, ¶ 39, Exh. KK, ¶ 40, Exh. LL, ¶ 41, Exh. MM). Thus, the
“knowledge” element of the Sponsoring Organizations’ contributory infringement claim is met.
Willful Blindness. As Public Resource admits that neither its nor the Internet Archive’s
websites had restrictions to prevent downloading or printing of the 1999 Standards, it is
undisputed that, even if Public Resource had no direct knowledge of third-party infringement, it
was willfully blind to the infringement and took no steps to prevent it (Dft. SDF at ¶¶ 87-88
[Dkt. 69-3]; Hudis SJ Decl., ¶¶ 2, 27, Exh. A, pp. 347-48, Exh. Z, pp. 324-28, 167-173).).
Substantial Participation. Finally, the unauthorized copies Public Resource posted to the
Internet were appended with self-made “Certificates” implying that the act of publication was
authorized by law. (Dft. SDF at ¶¶ 71, 82; Hudis SJ Decl. ¶ 2, Exh. A, p. 257-259, 261-264, 275284, ¶¶ 21, 29, Exh. T, Int. Ans. 2, Int. Ans. 3-4, ¶ 26, Exh. Y, Exh. BB, pp. 57-63, ¶ 30, Exh.
CC (¶ 2 therein), ¶ 34, Exh. GG). With the copy posted on the Internet Archives’ website, Public
Resource also admits to adding a statement that the 1999 Standards was subject to a Creative
Commons license (which allows for free distribution of otherwise copyrightable work) and that
no rights were asserted to it. (Id.).
II.

ENTRY OF SUMMARY JUDGMENT ON DEFENDANT’S AFFIRMATIVE
DEFENSES IS WARRANTED FOR PUBLIC RESOURCE’S FAILURE OF
PROOF OR ARGUMENT IN OPPOSITION
In their Motion, Plaintiffs contended there was no support for Public Resource’s

affirmative defenses of unclean hands, copyright misuse, waiver, and estoppel. (Plfs. Memo. in
Support of its Mtn. for S.J. (“Plfs. Memo.”) at 51-53 [Dkt. 60-1]). Public Resource conceded the
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issue by failing to offer proof or argument in rebuttal, and therefore there are no material facts in
dispute. (See generally Def. Memo. [Dkt. 69-1]). See Celotex Corp. v. Catrett, 477 U.S. 317,
323 (1986) (there is no “genuine issue of material fact” where there has been “a complete failure
of proof concerning an essential element of the nonmoving party’s case,” as the failure
“necessarily renders all other facts immaterial”). As Public Resource had the burden of proof,
entry of summary judgment in Plaintiffs’ favor is warranted. Id. at 322. (“the plain language of
Rule 56(c) mandates the entry of summary judgment…against a party who 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”).
III.

DEFENDANT’S DEFENSES ASSERTED FOR THE FIRST TIME ON
SUMMARY JUDGMENT SHOULD BE DISMISSED FOR FAILURE TO RAISE
THEM AB INITIO IN PUBLIC RESOURCE’S ANSWER
Public Resource raises for the first time several affirmative defenses that are not plead in
its Answer [Dkt. 12], including (1) the systems, processes, procedures bar, (2) the
idea/expression merger doctrine, and (3) the scenes a faire doctrine. Such circumvention of Fed.
R. Civ. P. 8(c) is improper. Under D.C. Circuit precedent these affirmative defenses must be
deemed waived and precluded from the Court’s consideration. Further, even if the Court is
inclined to consider them, these defenses are without merit and are not supported by evidence, let
alone undisputed material facts.
A.

Defenses Not Raised in Defendant’s Answer Cannot be Raised for the First
Time on Summary Judgment

Under Rule 8(c), failure to raise an affirmative defense in a party’s responsive pleading
constitutes waiver. Fed. R. Civ. P. 8(c) (“In responding to a pleading, a party must affirmatively
state any avoidance or affirmative defense[.]”); Gilbert v. Napolitano, 670 F.3d 258, 261 (D.C.
Cir. 2012) (holding that the court was precluded from considering an affirmative defense that
-8-

was first raised in a motion to dismiss, the defense having been forfeited for failure to plead it in
the defendant’s answer); Harris v. Sec’y, U.S. Dep’t of Veterans Affairs, 126 F.3d 339, 341 (D.C.
Cir. 1997) (holding that the District Court “should not…have considered” an affirmative defense
that was raised for the first time in a motion for summary judgment).
The D.C. Circuit follows a strict application of Rule 8(c) and rejects the allowance of
affirmative defenses that are raised for the first time in a dispositive motion even where there is
no prejudice. Harris, 126 F.3d at 344-45 (reviewing the application of Rule 8(c) in various
circuits and declining to follow those circuits that permit parties to raise affirmative defenses for
the first time in dispositive motions where no prejudice is shown, stating “we hold that Rule 8(c)
means what it says: a party must first raise its affirmative defenses in a responsive pleading
before it can raise them in a dispositive motion.”). Thus, a court is precluded from considering
affirmative defenses that are not identified in a responsive pleading. Gilbert, 670 F.3d at 261.
In its cross-motion, Public Resource challenges the validity of Plaintiffs’ copyright in the
1999 Standards under (1) the systems, processes, procedures bar, (2) the idea/expression merger
doctrine, and (3) the scenes a faire doctrine (Dft. Memo. at 31-34). These are all affirmative
defenses and thus under Fed. R. Civ. P. 8(c) Public Resource was required to be plead them in its
Answer. Public Resource failed to do so (Dft. Dft. Ans. at 24-25 [Dkt. 12]). Therefore, all three
defenses are waived. Gilbert, 670 F.3d at 261; Harris, 126 F.3d at 345.
To be clear, while Public Resource’s counterclaim does reference a “doctrine of merger”
regarding Defendant’s theory that the 1999 Standards are uncopyrightable “Law” (Dft. Dft. Ans.
at ¶ 125 [Dkt. 12]), that is not the same as the affirmative defense asserted on page 33 of Public
Resource’s brief supporting its summary judgment cross-motion. The “doctrine of merger”
raised in Public Resource’s counterclaim is argued separately on pages 18-19 of its brief. The

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theory argued there is that: 1) “the law” is not copyrightable, and 2) when private standards are
incorporated by reference into a regulation, that material “merges” with and becomes “the law”.
(Dft. Ans. at ¶¶ 116-125 [Dkt. 12]).
Separately, Public Resource for the first time asserts the idea/expression merger doctrine
as an affirmative defense on page 33 of its brief, arguing that even if the 1999 Standards is not
the “Law,” it is still allegedly uncopyrightable because the idea of each standard purportedly can
only be expressed in one way. (See Dft. Memo. at 33 (“Plaintiffs do not believe that the
standards can be expressed any other way.”). This defense was not plead in Public Resource’s
Answer and is therefore waived. (Dft. Dft. Ans. at 24-25 [Dkt. 12]).
Accordingly, Public Resource’s defenses of (1) the systems, processes, procedures bar,
(2) the idea/expression merger doctrine, and (3) the scenes a faire doctrine are forfeited and the
Court should not consider them. Gilbert, 670 F.3d at 261; Harris, 126 F.3d at 345.
B.

In Any Event, the Systems, Processes, Procedures Bar of the Copyright Act
Does Not Render Plaintiffs’ 1999 Standards Uncopyrightable

Public Resource argues that, regardless of the 1999 Standards’ status as the “Law,” it is
uncopyrightable under 17 U.S.C. § 102(b)’s systems, processes, and procedures bar. Defendant’s
argument is based on a flawed premise that has twice been rejected judicially. Specifically,
Public Resource contends that the 1999 Standards is uncopyrightable because it “describe[s]
procedures, statistical procedures, research procedures … how to design a test, how to collect
evidence of its validity, how to calculate the reliability of the test.” (Dft. Memo. at 32 (quoting
Plaintiffs’ 30(b)(6) witness, emphasis added)). Even if true, descriptions are copyrightable
expression even when they describe a process or system that itself is not copyrightable. See
Situation Mngt. Sys., Inc. v. ASP. Consulting LLC, 560 F.3d 53, 61 (1st Cir. 2009) (finding the
district court erred in holding that a work describing processes and ideas uncopyrightable
-10-

because “[t]he fact that [plaintiff’s] works describe processes or systems does not make their
expression noncopyrightable”) (emphasis original). Kepner-Tregoe, Inc. v. Leadership Software,
Inc., 12 F.3d 527, 534 (5th Cir. 1994) (“even if [the work] conveys unprotectable ideas, the
specific words phrases, and sentences selected to convey those ideas are protectable
expression.”) (emphasis original).

The creative choices made by the authors of the 1999

Standards in describing those procedures and processes are without question subject to copyright
protection.
Public Resource’s argument that the 1999 Standards does not qualify as a creative
compilation also is without merit. First, Public Resource provides no evidence to support its
contention that the utility of the 1999 Standards dictates its organization. Moreover, its reliance
on Bikram’s Yoga College of India L.P. v. Evolution Yoga, LLC is misplaced. (See Dft. Memo.
at 33). That case involved the determination of whether the copyright for a book describing the
specific yoga poses and breathing exercises referred to as the Bikram Yoga Sequence extended
to the Sequence itself such that the defendant infringed by offering a similar type of yoga. 803
F.3d 1032, 1035-36 (9th Cir. 2015). In finding for the defendant, the Ninth Circuit expressly
stated that it was not determining the validity of the copyright in the book but rather its scope.
Id. at 1039. Use of the standards described in Plaintiffs’ book, however, is not at issue. Public
Resource admits that it made an unauthorized copy of the entire 1999 Standards - a copyrighted
book - and posted that copy to the Internet (Dft. SDF at ¶¶ 69, 71, 76, 78-80, 83).
Second, Public Resource’s argument, if it had any support, incorrectly presumes that the
1999 Standards is nothing more than a list of standards. The 1999 Standards is a book. In
addition to the 279 individual standards, in fifteen different categories, the 1999 Standards
includes other expressive content, such as a preface and lengthy introduction ((Plfs. SMF, ¶¶ 12,

-11-

31 [Dkt. 60-2]; Levine SJ Decl., ¶¶ 11, 15, 28, Exh. TTT [Dkt. 60-78]). Additionally, each
chapter of the 1999 Standards includes an expansive background portion and comments are
provided after the recitation of each standard (Id.).
Even if, arguendo, the individual standards were uncopyrightable facts whose
organization was dictated by utility, Public Resource would still infringe as it posted the entire
book to its website, including the preface, introduction, chapter backgrounds, and comments, all
of which is undisputedly original expression entitled to copyright protection (Dft. SDF at ¶¶ 71,
76 [Dkt. 69-3]; Dft. Ans. ¶¶ 7, 55 [Dkt. 12]; Hudis SJ Decl., ¶ 2, Exh. A, pp. 232-240, 257-259,
261-264, 271-72, ¶ 21, Exh. T, Int. Ans. 2-4 ¶ 23, Exh. V, ¶ 26, Exh. Y).
C.

Moreover, the Idea / Expression Merger Doctrine Does Not Render
Plaintiffs’ 1999 Standards Uncopyrightable

Public Resource asserts a cursory argument that the 1999 Standards cannot be articulated
any other way than as written, meaning that, regardless of the 1999 Standards’ status as the
“Law,” the 1999 Standards is, allegedly, still uncopyrightable under the idea/expression merger
doctrine. (Dft. Memo. at 33 (“Indeed, Plaintiffs do not believe the standards can be expressed
any other way.”). This argument is without merit.
As explained, under the idea/expression merger doctrine, when a work expresses an idea
the only way it can be expressed, that expression is denied copyright protection under the
“idea/expression merger doctrine’ to avoid giving the author a monopoly over the underlying
idea. Enterprise Mngm’t Ltd., Inc. v. Warrick, 717 F.3d 1112, 1118 (10th Cir. 2013). “Merger is
rare, however, and is generally found in works with a utilitarian function.” Kay Berry, Inc. v.
Taylor Gifts, Inc., 421 F.3d 199, 209 (3d Cir. 2005).
Where an idea may be expressed in a few ways - even if the number is limited - copyright
may still exist, though its protection may be “thin” and limited to virtual identical coping.
-12-

Educational Testing Services v. Katzman, 793 F.2d 533, 539 (3d Cir. 1986) (“While the limited
number of ways a concept can be addressed may be relevant to the extent of copying permitted,
it does not render an original expression per se incapable of copyright … If other methods of
expressing the idea are not foreclosed as a practical matter, then there is no merger.”).
Not surprisingly it has been remarked that “[a]t the margins, the distinction between idea
and expression can be subtle and difficult.” BUC Intern. Corp. v. Int’l Yacht Council Ltd., 489
F.3d 1129, 1143 (11th Cir. 2007). Application of the doctrine therefore must be done with care
to avoid frustrating the goal of the Copyright Act in providing protection for original expressions
of authorship. Id. The inquiry starts with a careful and deliberate determination of precisely
what the “idea” and its “expression” are. Id. This articulation “is not merely an exercise in
semantics; it is a policy decision that must be carefully drawn.” Id. at 1114. An “idea” that is
defined too narrowly will improperly skew the analysis to a finding of merger. Id. (“By defining
the idea around the contours of the chosen expression, MLS Solutions attempts to cast the idea
and the expression as one. This type of analysis would swallow up the idea-expression
dichotomy, and the merger doctrine would become the rule instead of the exception.”). Only
then, once the idea is properly defined, is it examined to determine if the idea can be expressed in
only one way - namely the work at issue - or in multiple ways (even if the number of different
ways is limited). Id.; Educational Testing Services, 793 F.2d at 539.
Public Resource’s cursory and deficient analysis fails to establish that the 1999 Standards
is uncopyrightable under the idea/expression merger doctrine. Public Resource neither identifies
what it defines the “idea” to be nor what its “expression” is. (See generally Dft. Memo. at 34).
One can surmise from the little presented that Public Resource is attempting to define the “idea”
separately for each specific standard, with an eye towards how they each are presently expressed

-13-

- in other words, the exact fallacy BUC Intern. Corp. v. Int’l Yacht Council Ltd. warned against.
489 F.3d at 1143. The “idea” of the 1999 Standards is more appropriately stated as an outline of
best practices in the development and evaluation of tests across multiple settings. (Plfs. SDF ¶
83; ICE Ex. 4 (Camara Dep., p. 23); Plfs. SJ Declarations, Camara Decl., ¶ 13).
The sole basis for Public Resource’s claim is certain cherry-picked testimony from Diane
Schneider concerning a rephrasing of one specific standard in the 1999 Standards (Dft. Memo. at
33 (citing Dft. Statement of Material Fact (“Dft. SMF”) 80-82 5 [Dkt. 69-2], emphasis added).
First, Dr. Schneider’s testimony is being misrepresented.

Dr. Schneider was asked

hypothetically if is there a risk that rephrasing a standard might change the meaning. (Plfs. SDF
¶ 81 ICE Ex. 2 (Schneider Dep. 136:18–21) She answered the hypothetical question accordingly,
responding that there’s a chance rephrasing could make anything unclear (Id.).

This is

irrelevant. The Copyright Act does not require absolute surety that the meaning of an “idea” will
not be altered if the “expression” changes. Rather, all that is required is that other means of
expression remain available. Educational Testing Services, 793 F.2d at 539 (3d Cir. 1986) (“If
other methods of expressing the idea are not foreclosed as a practical matter, then there is no
merger.”).
Second, Dr. Schneider’s personal ability to rephrase Standard 4.4 of the 1999 Standards
is irrelevant. Not only was Dr. Schneider not one of the authors of the 1999 Standards and the
least qualified of Plaintiffs’ witnesses to answer the question, but the question was an improper
hypothetical calling for expert testimony.

(Plfs. SDF ¶ 82; Gray Reply Decl., ¶ 58, Exh.

YYYYY, Schneider Dep. Tr. pp. 18-20; 27-31, 37-39). Her response is therefore inadmissible.

5

Plaintiffs believe there are numbering errors in Public Resource’s citations to its Statement of
Material Facts, and therefore Plaintiffs’ Opposition responds to those Statement of Material
Facts Plaintiffs believes Public Resource intended to cite.
-14-

Fed. R. Evid. 701 (if a witness is not testifying as an expert, opinion testimony is limited to
opinions that are rationally based on perception, helpful, and not based on scientific, technical or
other specialized knowledge).
Further, Plaintiffs have provided a Reply Declaration of Wayne Camara, Senior Vice
President of Research of ACT, Inc., and one of Management Committee members for the 1999
Standards, rephrasing not only Standard 4.4 but also Standards 3.3, 5.2, and 5.3. (Plfs. SDF ¶ 82
Camara’s Reply Declaration at ¶¶ 5-15). Accordingly, if Public Resource’s unpled affirmative
defenses are not deemed waived, there are disputed material facts whether the merger doctrine
even applies here.
Finally, Public Resource copied the entire 1999 Standards, and the 1999 Standards is a
book containing the standards as well as other expressive content. (See generally Hudis SJ Decl.,
¶ 23, Exh. V). Even if, arguendo, Standard 4.4 (or any of the standards) was not copyrightable,
Public Resource still infringed because it posted the entire book to the Internet, including all the
expressive content that is undisputedly copyrightable. (Dft. SDF at ¶¶ 71, 76 [Dkt. 69-3]; Dft.
Ans. ¶¶ 7, 55 [Dkt. 12]; Hudis SJ Decl., ¶ 2, Exh. A, pp. 232-240, 257-259, 261-264, 271-72, ¶
21, Exh. T, Int. Ans. 2-4 ¶ 23, Exh. V, ¶ 26, Exh. Y).
D.

Additionally, the Scenes a Faire Doctrine Does Not Render Plaintiffs’ 1999
Standards Uncopyrightable

Public Resource’s argument that the scenes a faire doctrine renders Plaintiffs’ 1999
Standards uncopyrightable is equally without merit. Not only has Public Resource misapplied
the doctrine, but, even if it did apply (which it does not) this would not help Public Resource
evade liability for its blatant infringement.
Specifically, Public Resource argues that the 1999 Standards are dictated by the current
state of technical information on test development and use, practical requirements, and industry
-15-

demands and thus, being scenes a faire, are not entitled to protection. (Dft. Memo. at 34 [Dkt.
69-1]). This, however, is an over-simplification of scenes a faire doctrine. The term “scenes a
faire” refers to stereotyped expressions, “incidents, characters, or settings which are as a
practical matter indispensable, or at least standard, in the treatment of a given topic.” Atari
Games Corp v. Oman, 888 F.2d 878, 886 (D.C. Cir. 1989). Though copyright protection does
not extend to scenes a faire, deeming something scenes a faire is not the end of the inquiry nor
does it per se render the associated work uncopyrightable and free to the world for copying.
While elements that are scenes a faire may not be protected, the creative expression of
those ideas or facts may still be. Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,
348 (1991); Sturdza v. United Arab Emirate, 281 F.3d 1287, 1296 (D.C. Cir. 2002) (“protectable
expression may arise through the ways in which artists combine even unprotectable elements”).
As explained by the First Circuit, “the underlying idea (e.g., the travails of two star-crossed
lovers), even if original, cannot be removed from the public realm; but its expression in the form
of a play script (such as William Shakespeare's Romeo and Juliet ) can be protected. Needless to
say, the line is a blurry one.” Matthews v. Freedman, 157 F.3d 25, 27 (1st Cir.1998).
Thus, even works composed entirely of scenes a faire or other unprotectable material
may still include some protectable expression. See Harper House, Inc. v. Thomas Nelson, Inc.,
889 F.2d 197, 204 (9th Cir. 1989) (“A copyrightable compilation can consist mainly or entirely
of uncopyrightable elements.”). In such cases, the work may merit only a “thin” copyright that
protects against virtual identical copying, but the work is still copyrightable. Id. See also Feist,
499 U.S. at 349 (“[t]he copyright in a factual compilation is thin.”).
Public Resource’s cursory treatment of Plaintiff’s work is insufficient to show that the
scenes a faire doctrine applies and, even if it did, that the 1999 Standards as a whole is not

-16-

entitled to copyright protection. First, although Public Resource states that the “standards”
constitute scenes a faire, it fails to provide any analysis of the doctrine whatsoever. (Dft. Memo.
at 34). Merely stating something is unprotectable scenes a faire does not make it so, and such an
inadequate analysis is insufficient to support summary judgment in Defendant’s favor.
Second, Public Resource’s “support” is a few cherry-picked statements from witnesses.
Dr. Camara’s testimony merely constituted reading descriptions of the 1985 version of the
standards (Plfs. SDF ¶ 84; ICE Ex. 4 (Camara Dep. 131:25–132:11)). Dr. Wise was merely
asked to speculate on the purpose of a letter written by Dr. Camara to the Commission of
Education for Alaska asking for the designation of someone to serve as a point of contact within
the state department of education. (Plfs. SDF ¶ 85; ICE Ex. 6 (Wise Dep. 82:13–20)). Beyond
being hearsay, she in no way testified that the expression of the 1999 Standards would be
dictated by comments received from the individual. (Id.) Indeed, the vast majority of comments
solicited during the development of the 1999 Standards were disregarded in their entirety. (Dft.
SDF ¶ 15-16 [Dkt. 69-3]; Camara Decl., ¶ 12; Schneider Decl., ¶ 7).
Nor does Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522 (6th Cir.
2004), help Public Resource. (See generally Dft. Memo. at 34). There, the Sixth Circuit found
that a toner loading program was uncopyrightable under the scenes a faire doctrine, but it’s
reasoning was highly fact specific. In Lexmark, the printer that downloaded and executed the
code sequence only understood a single programming language composed of eight simple
commands. 387 F.3d 522, 539-40 (6th Cir. 2004). The code sequence was restricted to being no
larger than 55 bytes - a tiny amount - because that was all the printer could download. Id. This,
in effect, meant that a programmer had no choice but to use the copyrighted code to calculate the
toner levels as those restrictions dictated the literal words that could be used. Id.

-17-

Here, the 1999 Standards is a treatment of best practices in the development and
evaluation of tests and assessments. (Plfs. SDF ¶ 10; ICE Ex. 2 (Schneider Dep. 176:23–
177:06). That concept is not dictated word-for-word by external factors any more than a new
play about star-crossed lovers is dictated by Romeo and Juliet. Nor is that concept constrained
by any requirement preventing the text from being expressed more verbosely or succinctly than
in the 1999 Standards, in different words, or even in another language.
Finally, there is no dispute that Public Resource copied the 1999 Standards in its entirety,
a book that includes expressive content in addition to the standards. (Dft. SDF at ¶¶ 71, 76 [Dkt.
69-3]; Dft. Ans. ¶¶ 7, 55 [Dkt. 12]; Hudis SJ Decl., ¶ 2, Exh. A, pp. 232-240, 257-259, 261-264,
271-72, ¶ 21, Exh. T, Int. Ans. 2-4 ¶ 23, Exh. V, ¶ 26, Exh. Y). Public Resource has presented
no evidence or argument suggesting, for example, that the introduction or chapter backgrounds
are “dictated by external factors” or by “practical requirements and industry demands” or that
they are in any way not entitled to copyright protection (See generally Id.). While inconvenient
for Public Resource’s position, these portions of the 1999 Standards cannot be ignored.
Accordingly, even if the Court considers Public Resource’s untimely affirmative
defenses, Defendant fails to show that there is a dispute of material fact that its copying of the
1999 Standard constituted infringement. Summary judgment in Plaintiffs’ favor is warranted.
IV.

WHETHER VOLUNTARILY PROMULGATED STANDARDS MAINTAIN
THEIR COPYRIGHT PROTECTION AFTER BEING PURPORTEDLY
INCORPORATED BY REFERENCE INTO REGULATION(S) IS A POLICY
DECISION RESERVED TO CONGRESS, NOT THE COURTS
Public Resource asks this Court to create a new doctrine of copyright law not contained
in the Copyright Act and not supported by the case law. In short, Defendant asks this Court to
“legislate from the bench,” which it cannot do. Whether a voluntarily promulgated standard that

is incorporated into a statute or regulation loses its copyright protection is a policy decision that
-18-

is reserved solely to Congress. To change the law, as Defendant urges, would usurp the power of
the elected branch of government and damages appropriate role of the judiciary.
Under Public Resource’s position, the government could adopt any portion of a private
copyrighted work for any purpose at any time, and the copyright would be invalidated. Such a
scenario would have a complete chilling effect upon standard development organizations
(“SDOs”), which would have no incentive to spend enormous sums and time on the research and
development required to produce standards. The public also would suffer, as the government
would be required to invest vast tax dollars to research areas which in the past the government
has had the ability to rely on the private sector to develop. Thus, any public policy benefits
Public Resource might assert, are offset by considerable countervailing considerations. The
ultimate result would be antithetical to the interests otherwise protected by the Copyright Act and
raise substantial problems under the Taking Clause of the Constitution. Accordingly, Public
Resource’s position must be rejected.
A.

The Copyright Act Does Not Provide for the Loss of Protection of a Work
Allegedly Incorporated by Reference into Regulation(s)

Public Resource asks this Court, on the basis of nothing more than policy arguments, to
create an exception to the Copyright Act that simply does not exist — and then to apply that
exception in a manner that defies reason. The Court must reject Defendant’s invitation. The
Copyright Act neither provides for the loss of copyright protection when a private work is
allegedly incorporated by reference into the “Law,” nor is it susceptible of being so interpreted.
As a preliminary matter, Public Resource has not proven that the 1999 Standards have
been incorporated into the “Law.” Nowhere does Public Resource argue that the 1999 Standards
have been incorporated into federal or State statutes. All that has been asserted is the alleged
incorporation by reference of standards in the 1999 Standards into a set of U.S. Department of
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Education’s regulations and to state regulations. (Dft. Mtn. at 5-8 [Dkt. 63-1].
1.

Defendant Copied the Entirety of the 1999 Standards, but the Entirety of
the 1999 Standards was Not Incorporated by Reference

The whole premise of Public Resource’s defense repeatedly fails on this point: the 1999
Standards is a book containing protectable expression other than the standards, including the
preface, introduction, chapter backgrounds, and comments. The regulations citing the 1999
Standards are clear that it is the individual standards contained in the 1999 Standards and not the
entire book that is referenced. 6 Indeed, it would be absurd to interpret any of these regulations as
requiring compliance with the preface or introduction of the 1999 Standards.
Thus, even if, arguendo, Public Resource was correct that the Copyright Act allows a
private work to be rendered uncopyrightable when incorporated by reference into the “Law,” that
principle would only apply to the individual standards recited in the 1999 Standards. Public
Resource has not articulated any theory that would support the notion that the additional
copyrightable expression within the 1999 Standards - which Public Resource copied - lost its
protection. Accordingly, under any theory elucidated to date, Public Resource is liable for
copyright infringement even if the Court accepts its erroneous construction of the Copyright Act.
2.

Statutory Construction of the Copyright Act

Analysis of the Copyright Act, as all statutory construction, must begin with the Act itself
and the plain meaning of the sections upon which Public Resource relies. Consumer Prod.

6

34 C.F.R. § 668.146(b)(6) (for a test to be approved, it must “[m]eet all standards for test
construction provided in the 1999 edition of the Standards for Educational and Psychological
Testing…”) (emphasis added); Minn. Admin. Rule 4761.2460(2) (applications must include
documentation that “the examination meets the validity standards for educational and
psychological testing specified in American Psychological Association (APA), Standards for
Educational and Psychological Testing Association (1999)) (emphasis added); MD. Admin. Rule
09.12.26.06(AE)(1)(c)(i)) (“The written and practical tests shall be administered under
circumstances approved by the auditor as meeting nationally recognized auditing standards.”).
-20-

Safety Comm. v. GTE Sylvania Inc., 447 U.S. 102, 108 (1980) (“We begin with the familiar
canon of statutory construction that the starting point for interpreting a statute is the language of
the statute itself. Absent a clearly expressed legislative intention to the contrary, that language
must ordinarily be regarded as conclusive.”).
To begin, the Copyright Act is explicit in providing when a work is ineligible for or loses
protection. See e.g., 17 U.S.C. §§ 102 (Subject matter of copyright: in general), 103 (Subject of
copyright: compilations and derivative works), 105 (Subject matter of copyright: United States
Government works), 107-112, 117, 119 (Limitations on exclusive rights, including: fair use,
reproduction by libraries and archives, effect of transfer of a particular copy or phonorecord,
exemption of certain performances and displays, secondary transmissions, ephemeral recordings,
computer programs, secondary transmission, reproductions for the blind or other people with
disabilities), 113-115, 118, 120 (Scope of exclusive rights in pictorial, graphic, and sculptural
works, sound recordings, nondramatic musical works, certain works in connection with
noncommercial broadcasting, and architectural works), and 302-303 (Duration of copyright).
That Congress took such great pains to methodically detail the boundaries of the
Copyright Act merits pausing. “The ordinary presumption is that Congress’ drafting of [] text is
deliberate.” Natural Res. Defense Council v. U.S. Envtl. Prot. Agency, 915 F.2d 1314, 1321 (9th
Cir. 1990). “Judicial perception that a particular result would be unreasonable may enter into the
construction of ambiguous provisions, but cannot justify disregard of what Congress has plainly
and intentionally provided.” Comm’n of Internal Rev. v. Asphalt Prods. Co., Inc., 482 U.S. 117,
121 (1987). The Copyright Act represents intentional and deliberate policy choices made by
Congress to maintain strong protections for works of authorship and to set forth clear lines at
where those protections end. Nowhere in the extensive detailing of the subject matter, scope,

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and limitation of rights under the Copyright Act is there a provision providing for the loss of
protection through the incorporation by reference of a work into a statutory or regulatory
provision. The clear inference is that Congress set forth those limitations on copyright that it
intended the Act to have, and that it acted purposefully in not including further limitations.
Public Resource further argues that Sections 102 and 105 of the Copyright Act
specifically support its contention that the “Law” is excluded from copyright protection by virtue
that copyright is precluded for ideas, processes, and systems (17 U.S.C. § 102(b)) and for works
of the U.S. Government (17 U.S.C. § 105). (Dft. Memo. at 12-13 [Dkt. 69-1]).
Section 102(b), in its entirety, states that “[i]n no case does copyright protection for an
original work of authorship extend to 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.” 17 U.S.C. § 102(b). Notably absent is a clear statement
that a work can be transmuted into any of the statutorily prohibited categories by actions taken
by a third party (here, the federal or a state government) after the fact.
Again, the analysis of Public Resource’s lofty policy argument must at each stage return
to the specific facts of this case. The 1999 Standards is a privately created work of authorship
that contains not only the standards but other copyrightable content. Public Resource’s argument
- as applied to this case - is that an administrative body can thrust a privately held property right
into the public domain by referring to all or a portion of it as an administrative procedure,
process, or system.

The language of Section 102(b) simply does not say this, nor can it

reasonably interpreted this way.
Nor does Section 105 lead Public Resource to the exception it asks this Court to
recognize. Nothing in Section 105 refers to works created by private citizens. See 17 U.S. C. §

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105. 7 The basic premise of Section 105 is that “works produced for the U.S. Government by its
officers and employees should not be subject to copyright.” H.R. Rpt. 94-1476, 58, 1976
U.S.C.C.A.N. 5659, 5671 (1976) (emphasis added). Indeed, in enacting Section 105, Congress
in fact considered that there may be situations where the public interest is best served by denying
a private citizen copyright but expressly declined to provide the exception Public Resource asks
for, believing it is best addressed by direct legislation or contract:
The bill deliberately avoids making any sort of outright, unqualified prohibition
against copyright in works prepared under Government contract or grant. There
may well be cases where it would be in the public interest to deny copyright in the
writings … However, there are almost certainly many other cases where the
denial of copyright protection would be unfair or would hamper the production
and publication of important works. Where, under the particular circumstances,
Congress or the agency involved finds that the need to have a work freely
available outweighs the need of the private author to secure copyright, the
problem can be dealt with by specific legislation, agency regulations, or
contractual restrictions.
Id. at 59, 1976 U.S.C.C.A.N. at 5672. No legislation directly addresses the incorporation by
reference of a private work and no contract exists between Plaintiffs and any government body
concerning the copyright in the 1999 Standards. Accordingly, it was Congress’ clear intent that
copyright for the 1999 Standards remain vested in the Sponsoring Organizations.
B.

The Cases Relied Upon by Defendant, Denying Copyright Protection to
Governmental Works, are Inapposite; None of The Cases Involve
Voluntarily Promulgated Standards

All of the cases relied upon by Public Resource are distinguishable: Wheaton v. Peters,
Banks v. Manchester, and Howell v. Miller (Dft. Memo. at 11-12 [Dkt. 69-1]) each addressed the
copyrightability of judicial opinions or statutes, not voluntarily promulgated standards or other
privately created works. See Wheaton v. Peters, 33 U.S. 591, 668 (1834) (addressing the
7

“Copyright protection under this title is not available for any work of the United States
Government, but the United States Government is not precluded from receiving and holding
copyrights transferred to it by assignment, bequest, or otherwise.” 17 U.S.C. § 105
-23-

copyrightability of Supreme Court decisions); Banks v. Manchester, 128 U.S. 244, 253-254
(1888) (addressing the copyrightability of Ohio Supreme Court decisions); Howell v. Miller., 91
F. 129, 137 (6th Cir. 1898) (addressing the copyrightability of state statutes). Further, these
cases predate the 1976 Copyright Act and simply recite the principle that ultimately was codified
in Section 105 that works by U.S. Government officers and employees are not subject to
copyright. See 17 U.S.C. § 105. Again, in enacting Section 105, Congress made explicitly clear
its intent that, where the public needs free access to a privately created work, that need is to be
addressed by specific legislation or contract, and not by the Copyright Act generally or judicially
made exceptions. H.R. Rpt. 94-1476, 59, 1976 U.S.C.C.A.N. 5659, 5672 (1976).
Public Resource’s heavy reliance on Veeck v. S. Bldg. Code Congress Intern., Inc., is
also misplaced. (See Dft. Memo. at 12 [Dkt. 69-1]). In that case, faced with deciding the
copyrightability of model building codes that had been adopted by a municipality, the Fifth
Circuit took great pains to distinguish its analysis from cases concerning extrinsic standards that
had been incorporated by reference into statutes, recognizing that, for the purposes of copyright,
the latter are inherently different:
This case does not involve references to extrinsic standards. Instead, it concerns
the wholesale adoption of a model code promoted by its author, SBCCI, precisely
for use as legislation. Caselaw that derives from official incorporation of extrinsic
standards is distinguishable in reasoning and result.
…
If a statute refers to [an extrinsic standard such as] the Red Book or to specific
school books, the law requires citizens to consult or use a copyrighted work in the
process of fulfilling their obligations. The copyrighted works do not “become
law” merely because a statute refers to them.
Veeck v. Southern Bldg. Code Congress Intern., Inc., 293 F.3d 791, 804-05 (5th Cir. 2002)
(internal citation omitted, emphasis added). Accordingly, Veeck recognized the exact opposite of

-24-

what Public Resource asks this Court to find - the 1999 Standards - an extrinsic standard - did
not become the “Law” by mere reference in an agency regulation.
Building Officials & Code Adm. v. Code Tech. Inc., does not get Public Resource any
further than Veeck. (See Dft. Memo. at 16 [Dkt. 69-1]). Like Veeck, Building Officials & Code
Adm. addressed self-executing model codes that had been adopted word-for-word. Building
Officials & Code Adm. v. Code Technology, Inc., 628 F.2d 730 (1st Cir. 1980). Moreover, the
First Circuit did not hold definitively that model codes enter the public domain when they are
adopted by government bodies, let alone an extrinsic standard incorporated by reference, instead
declining to rule on that issue based on the limited record before it, and merely vacating the
district court's preliminary injunction. Id. at 736.
Finally, Public Resource misunderstands the holding of Kern River Gas Transmission
Co. v. Coastal Corp. (See Dft. Memo. at 18 [Dkt. 69-1]). The Fifth Circuit did not hold, as
Public Resource contends, that because a regulatory commission approved the plaintiff’s
proposed location for a natural gas pipeline, the lines and mile markers expressing the location of
the pipeline merged with the idea of the location. (See Id.). Rather, the Fifth Circuit recognized
that the expression of the pipeline’s proposed location as markings as on the map was not
copyrightable irrespective of whether that location was approved: “[s]uch map markings are
certainly the only effective way to convey the idea of the proposed location of the pipeline across
1,000 miles of terrain.” Kern River Gas Transmission Co. v. Coastal Corp., 899 F.2d 1458,
1464 (5th Cir. 1990) (emphasis added). In other words, the location of a physical object and the
representation of that location on a map always merge under the idea / expression merger
doctrine because there is only one way to accurately express that location on a map, regardless of
whether the location has been given official approval. Unlike Kern River’s map markings, which

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were never copyrightable under the merger doctrine, the 1999 Standards was (and continues to
be) copyrightable expression prior to its incorporation by reference.
Notably, no case cited by Public Resource addresses the incorporation by reference of a
portion of a work. It would be unreasonable for the Court to extend a holding such as, for
example Veeck, addressing enactment of an entire model code word-for-word, to a privately held
work containing both material incorporated by reference into an administrative regulation and
material that was not. Indeed, it is reasonable to conclude that had any of the foregoing Courts
addressed that situation, their analysis would have been different.

Rather, as set forth in

Plaintiffs’ opening brief, this case is most properly guided by CCC Info. V. Servs., Inc. v.
Maclean Hunter Mkt. Reports., Inc., 44 F.3d 61 (2d. Cir. 1994) and Practice Mgmt. Info. Corp.
v. Am. Medical Ass’n, 121 F.3d 516 (9th Cir. 1997). (See Plfs. Memo. at 39-40 [Dkt. 60-1]).
C.

If the Views of Defendant Adopted, the Loss of Copyright Protection via
Government Incorporation by Reference of Voluntarily Promulgated
Standards would amount to an Unconstitutional Taking Without Just
Compensation

Public Resource’s arguments also must be rejected as raising serious constitutional
concerns. An interest in copyright, like any other property right, is protected by the due process
and just compensation clauses of the U.S. Constitution. Horne v. Dept. of Agriculture, 135 S.Ct.
2419, 2426 (2015) (the Takings Clause “protects ‘private property’ without any distinction
between different types”); Pruneyard Shopping Center v. Robins, 447 U.S. 74, 82 n. 6 (1980). If
Public Resource’s position is accepted, the incorporation by reference of voluntarily promulgated
standards, such as the 1999 Standards, would amount to a full-scale taking of thousands of
copyrighted works by the government, subjecting the government to millions of dollars in claims
for just compensation awards. The spectre of constitutional issues raised by Public Resource’s
argument counsels against its adoption.
-26-

The Fifth Amendment prohibits the taking of private property for public use without just
compensation.

U.S. Const. Amend. V.

A “regulatory taking” occurs when a government

regulation is “so onerous that its effect is tantamount to a direct appropriation or ouster.” Lingle
v. Chevron U.S.A. Inc., 544 U.S. 528, 537 (2005). Such takings are deemed “per se” where the
regulation-in-question completely deprives an owner of “all economically beneficial us[e]” of
her property and are compensable without specific inquiry into the public interest advanced in
support of the regulation. Lucas v. S. Carolina Coastal Council, 505 U.S. 1003, 1015, 1019
(1992). Where the regulatory interference does not rise to the level of being per se, the taking
can nevertheless still be actionable where the magnitude of the regulation’s economic impact and
the degree to which it interferes with legitimate property interests goes “too far.” Lingle v.
Chevron U.S.A., Inc., 544 U.S. 528, 537 (2005).
There is no serious question that a government regulation directly abrogating a private
citizen’s copyright would constitute a per se regulatory taking. Such a regulation would result,
in effect, in the owner being “called upon to sacrifice all economically beneficial uses in the
name of the common good” and therefore to “suffer[] a taking.” Lucas, 505 U.S. at 1019.
The result is no different if this Court holds that the government’s incorporation by
reference of a privately developed and held standard results in that copyright holder losing all
protection for the work. In either case, the Sponsoring Organizations specifically would be
forced to “sacrifice all economically beneficial uses” of the 1999 Standards that might otherwise
be available from copyright ownership “in the name of the common good.”

Without

compensation for the Sponsoring Organizations' loss, that taking would be unconstitutional.
Armstrong v. United States, 364 U.S. 40, 49 (1960) (the “Fifth Amendment’s guarantee…[is]
designed to bar Government from forcing some people alone to bear public burdens which, in all

-27-

fairness and justice, should be borne by the public as a whole”).
To the extent Public Resource claims that some economic benefits to the 1999 Standards
would still exist even without copyright protection or that Plaintiffs have voluntarily shut down
the market, both arguments are without merit. Severing the 1999 Standards from its copyright
would deprive Plaintiffs of the most economically profitable aspect of the Standards - the power
to control its distribution. 17 U.S.C. § 106. The issue .also must be analyzed at the time the
taking occurred - here the enactment of the regulations incorporating the 1999 Standards by
reference - at which point the 2014 Standards had not been released. See Lucas v. S. Carolina
Coastal Council, 505 U.S. 1003, 1010-12 (1992) (analyzing a taking claim at the time the taking
occurred).]

Thus, Plaintiffs - and any other similarly situated standards development

organization - would suffer severe economic harm.
Further, the unconstitutional nature of a taking does not change even where the taking
was purportedly encouraged by the property owner.

Plaintiffs’ have not encouraged any

government entity to incorporate the 1999 Standards into any regulation, but even had they done
so, the economic impact of the government taking would not change. A copyright confers upon
the holder an exclusive property right in the work which cannot be appropriated or used by the
government without just compensation.

James v. Campbell, 104 U.S. 356, 358 (1882)

(addressing the unconstitutional taking of a patent right).
D.

Even if the Court were Inclined to Consider Defendant’s Policy Arguments,
They are Unsound

Public Resource's various policy arguments must be rejected as unsound. The premise
that maintaining copyright protection in the 1999 Standards renders the regulations incorporating
it by reference vague and therefore in violation of the Due Process Clause is a non sequitur. (See
generally Dft. Memo. at 14 [Dkt. 69-1]). The remedy for an enactment that is unconstitutionally
-28-

vague is invalidation of the enactment, not the uncompensated taking of a private property right.
Grayned v. City of Rockford, 408 U.S. 104, 108 (1972) (“an enactment is void for vagueness if
its prohibitions are not clearly defined”); See also Rafeedie v. I.N.S., 795 F. Supp. 13, 23 (D.D.C.
1992) (“The void-for-vagueness doctrine requires that if a statute’s provisions are not clearly
defined, they must be invalidated.”).
Nor is enforcing the protections provided by the Copyright Act in conflict with the First
Amendment. Schnapper v. Foley, 471 F.Supp. 426, 428 (D.D.C. 1979) (“it is well established
that there is no conflict between the First Amendment and the copyright laws”); (see generally
Dft. Memo. at 14 [Dkt. 69-1]). The public still has the ability to access, share, and discuss
regulations incorporating the 1999 Standards by reference; the Copyright Act simply demands
that they utilize a lawfully purchased copy of the 1999 Standards when doing so.
Public Resource’s contention that Plaintiffs do not make the 1999 Standards sufficiently
accessible is without merit. (See generally Dft. Memo. at 24-26 [Dkt. 69-1]). In addition to
copies which can be purchased from Plaintiffs, the 1999 Standards are available at numerous
libraries throughout the country. (Plfs. SDF ¶ 57; Gray Reply Decl. at ¶¶ 3-53, Ex. VVVTTTTT; Hudis Reply Decl. at ¶ 3, Geisinger Dep. Tr. at 112:21-24; 243:16-24). With its Reply,
Plaintiffs have provided evidence that over one thousand libraries include catalog entries for the
1999 Standards, including a copy of the specific catalog entry for fifty of those libraries. (Id.).
While the law must be available, there is no unilateral right that it be provided on the Internet,
and there is certainly no unilateral right that a voluntarily promulgated standard be provided
without consideration of its copyright protection.
Finally, Public Resource’s argument that the law must be available to the blind and printdisabled is addressed by the Chafee Amendment, 17 U.S.C. § 121. (See generally Dft. Memo. at

-29-

26 [Dkt. 69-1]). As discussed subsequently in detail, Congress has carved out an exception to
the Copyright Act for copying of works for the exclusive use of the blind and disabled subject to
specific requirements. Public Resource does not claim that it complies with those requirements,
nor that it attempted to do so.
Again, the policy arguments raised by Public Resource are all within the exclusive
province of Congress to address, not this Court. As Congress has not seen fit to do so, and has
expressed an explicit intent that such issues be dealt with through direct legislation or contract
(H.R. Rpt. 94-1476, 59, 1976 U.S.C.C.A.N. 5659, 5672 (1976)), this Court must decline the
invitation to make sweeping policy changes to copyright law and policy from the bench.
V.

DEFENDANT’S DIGITAL COPYING AND POSTING
STANDARDS TO THE INTERNET IS NOT FAIR USE

PLAINTIFFS’

Public Resource’s fair use defense is without merit. Although fair use is a mixed
question of law and fact, “[i]f there are no genuine issues of material fact, or if, even after
resolving all issues in favor of the opposing party, a reasonable trier of fact can reach only one
conclusion, a court may conclude as a matter of law whether the challenged use qualifies as a fair
use of the copyrighted work.” Hustler Mag. Inc. v. Moral Majority Inc., 796 F.2d 1148, 1150-51
(9th Cir. 1986) (citing Harper & Row, 417 U.S. 539).
Here, Public Resource's arguments are premised on the Court first finding the 1999
Standards constitute the “Law.” As that argument fails and Public Resource has not set forth an
alternate fair use defense, summary judgment should be entered in Plaintiffs’ favor. Even
considered on the merits, Public Resource’s arguments do not set forth a disputed issue of
material fact that would alter the fair use analysis. As the first, third, and fourth fair use factors
favor Plaintiffs while the second is neutral, summary judgment in Plaintiffs’ favor is warranted.

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A.

Nothing Public Resource did with the 1999 Standards was Transformative

Public Resource’s fair use argument turns on its claimed noble crusade to publicize the
“Law.”

Public Resource’s activities, however, merely supplanted Plaintiffs’ original work.

Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-579 (1994) (The justification for the fair
use defense turns upon “whether and to what extent the new work is ‘transformative’.” Where
the new work “merely supersede[s] the objects’ of the original creation, (supplanting the
original)” it is not fair use.).
Public Resource’s primary defense is the theory that digitization of the 1999 Standards
enabled others to interact with the “Law” in new ways that may provide new information and
enable criticism, comment, and the like. (Dft. Memo. at 38-39 [Dkt. 69-1]). There is a critical
flaw in this argument. It matters little what others may do with the work as they are not
defendants in this case; and it is undisputed that Public Resource itself did not add any new
information or criticize or comment on the work. (Dft. SDF at ¶¶ 71, 76 [Dkt. 69-3]; Dft. Ans.
¶¶ 7, 55 [Dkt. 12]; Hudis SJ Decl., ¶ 2, Exh. A, pp. 232-240, 257-259, 261-264, 271-72, ¶ 21,
Exh. T, Int. Ans. 2-4 ¶ 23, Exh. V, ¶ 26, Exh. Y).
In fact, far from being a “paradigmatic example[] of fair use” (Id. at 39), last year the
Southern District of New York expressly rejected this same theory. In North Jersey Media
Group Inc. v. Jeanine Pirro and Fox News Network, LLC., Fox News was sued for copyright
infringement after a producer posted a copy of an iconic 9/11 photograph to the cable provider’s
Facebook page as part of a 9/11 anniversary tribute. 74 F.Supp.3d 605, 609-611 (S.D.N.Y.
2015). Using a lower resolution copy of the photograph, it was cropped and juxtaposed against
the classic World War II photo of four U.S. Marines raising the American flag on Iwo Jima with
the caption “#never forget.” Id. at 610-11. Finding infringement, the Court rejected Fox News’
argument that posting to social media was by its very nature transformative, because the posts
-31-

promoted comment and criticism. Id. at 615-16. The same should be found here.
Nor does Public Resource’s alleged enabling of search and analysis of the 1999
Standards excuse its infringement. Public Resource concedes that the first copy posted on its
own website was not enabled with Optical Character Recognition (“OCR”). (Dft. SDF ¶ 73
[Dkt. 69-3]; Hudis SJ Decl., ¶ 27, Exh. Z, pp. 309-310, ¶ 28, Exh. AA, p. 9 (and sub-Exh. B
thereto)). Without OCR-processing, word searching, online identification, and text-to-speech
technology for assistance to the blind and print disabled was not enabled for that copy. (Dft.
SDF ¶ 75 [Dkt. 69-3]; Hudis SJ Decl., ¶ 27, Exh. Z, pp. 30, 122, 200-01, 206, 271-72, 315-16).
Therefore, Public Resource's use of that copy was neither transformative nor fair.
Regarding the second copy, Public Resource alleges that that copy underwent OCRprocessing when it was uploaded to the Internet Archive. If true, it was not by any action Public
Resource took; the OCR-processing was done automatically by the upload process available at
the Internet Archive (Plfs. SDF ¶ 37; Hudis SJ Decl., ¶ 29, Exh. BB, p. 87, 92; ¶ 33, Exh. FF).
Regardless, “[a]dded value or utility is not the test: a transformative work is one that serves a
new and different function from the original work and is not a substitute for it.” Authors Guild,
Inc. v. HathiTrust, 755 F.3d 87, 96 (2d Cir. 2014).
Indeed, Public Resource’s reliance on Authors Guild, Inc. v. HathiTrust is misplaced. In
holding that the defendant’s searchable database was fair use, the Second Circuit found highly
important that users were presented with only the page number the search term was located on
and were not allowed to view the books they were searching. Id. at 97. As a result, the Second
Circuit Court found it compelling that no new, human-readable copies of any books were put
into circulation and there was little to no discernible resemblance between the original work and
the database. Id. In contrast, Public Resource posted exact copies of the 1999 Standards to the

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Internet that were identical to the original, and constituted infringing, human-readable copies.
Public Resource also claims that the mere act of posting the 1999 Standards to its website
was transformative because its website had a different purpose than Plaintiffs’ book, namely to
answer questions concerning what is the “Law” governing testing versus how to conduct testing.
This argument is an exercise in tortured semantics. Informing the public about the “Law” of
testing is hardly an “entirely different aesthetic” from informing them on how to conduct testing.
North Jersey Media Group, 74 F.Supp.3d at 617 (holding minimal alterations to the content and
purpose was not transformative as it did not constitute an “entirely different aesthetic”).
Moreover, this argument fails because Public Resource copied and posted to the internet the
entire 1999 Standards, including the preface, introduction, chapter backgrounds, and comments,
which are superfluous to the claimed purpose of informing the public of the “Law.”
Finally, the argument that Public Resource’s conduct is akin to copying and displaying
works while fulfilling a legal requirement or during a judicial proceeding is a non sequitur. (See
Dft. Memo. at 37 [Dkt. 69-1]). There was no legal requirement that Public Resource copy and
post a privately developed standard to the Internet, whether or not it constituted the “Law,” nor
was Public Resource participating in a judicial proceeding when it did so.
That Public Resource’s copying was “indifferent” to the copyrightable expression of the
1999 Standards (Dft. Mtn. at 37) is obvious and does not further Public Resource’s defense. If
mere “indifference” were all that is needed, there would never be infringement; the fair use
defense would supersede all protections of Copyright Act as every infringer would be said to act
fairly. In sum, Public Resource’s copying was not transformative, having merely usurped the
1999 Standards. The first fair use factor strongly favors the Sponsoring Organizations.

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B.

Public Resource’s Actions Do Not Fall Under the Exception for
Reproductions for People with Disabilities

Public Resource’s actions are not exempted from liability merely because it claims to
have enabled print-disabled individuals to access the “Law.” First, Public Resource notably
ignores the Chafee Amendment, which provides the parameters of the exception. Compare Dft.
Memo. at 40 [Dkt. 69-1] with 17 U.S.C. § 121. Section 121 is specific regarding the limitations
and requirements of the exception: the entity providing the copy must be an “authorized entity”
whose primary mission is to provide specialized services relating to individuals with disabilities
and the copies must (1) be in a specialized format exclusively for use by the blind or other
disabled persons, (2) bear a notice that further reproduction or distribution in any format other
than a specialized format is infringement, (3) include a copyright notice identifying the copyright
owner and date of the original publication. 17 U.S.C. § 121.
Public Resource clearly did not comply with any of these requirements (Cite to
Fruchterman's depo transcript and Phillips' expert's report).

Public Resource is not an

“authorized entity” and the only notice included with the unauthorized copies it made of the
1999 Standards was a false “Certificate” giving a false semblance of governmental approval or
permission to the unauthorized copying and online posting of the 1999 Standards . (Dft. SDF at
¶ 49, 82 [Dkt. 69-3]; Hudis SJ Decl., ¶ 2, Exh. A, pp. 94-95, 105-109, 275-284 ¶¶ 3, 29, Exh. B,
Section II.B., ¶ 4, Exh. C. Section 2.1, Exh. BB, pp. 57-63, ¶ 30, Exh. CC (¶ 2 therein), ¶ 34,
Exh. GG).

Further, the copies Public Resource posted to the Internet were not for the

“exclusive” use of print disabled individuals. Nor were any security measures in place on either
Public Resource’s or the Internet Archive’s website to prevent access by individuals who do not
qualify as disabled under the definition in 17 U.S.C. § 121(d)(1). (Dft. SDF at ¶ 87-88 [Dkt. 693]; Hudis SJ Decl., ¶¶ 2, 27, Exh. A, pp. 347-48, Exh. Z, pp. 324-28, 167-173).
-34-

If Congress intended access for the print disabled to constitute fair use without complying
with the requirements of 17 U.S.C. § 121, it could have said so, but such a holding by this Court
now would improperly render the requirements set forth in the Chafee Amendment superfluous.
See Regions Hosp. v. Shalala, 522 U.S. 448, 118 S.Ct. 909, 920 (1998) (Scalia, J., dissenting)
(“It is a cardinal rule of statutory construction that significance and effect shall, if possible, be
accorded to every word. As early as in Bacon's Abridgment, sect. 2, it was said that ‘a statute
ought, upon the whole, to be so construed that, if it can be prevented, no clause, sentence, or
word shall be superfluous, void, or insignificant.’ ”) (quoting Washington Mkt. Co. v. Hoffman,
101 U.S. 112, 115–16 (1879)). Indeed, if Public Resource was correct, any digitization of a
tangible book would qualify as fair use on the premise that all such conversions theoretically
provide better access for the print disabled.
Second, none of the authorities relied upon by Public Resource support a finding that its
actions constituted fair use. The Chafee Amendment was enacted in 1996, after both the House
Report No. 94-1476 (1973) and Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417
(1984) and therefore supersedes them on this issue. Pub. L. 104-197, Title III, § 316(a) (Sept.
16, 1996). Moreover, the Supreme Court’s brief mention of access for the blind in Sony v.
Universal is dicta and merely references the House Report identification of access as an example
of fair use - again, a Report that has been superseded. 464 U.S. at 455 n.40. In enacting 17
U.S.C. § 121, Congress clearly set forth the scope and the requirements for providing the blind
and disabled access to copyrightable materials. Public Resource complied with none of them.
The Second Circuit’s decision in Authors Guild, Inc. v. HathiTrust does not suggest that
the requirements of 17 U.S.C. § 121 can be ignored when fair use is premised on access for the
disabled.

While the HathiTrust court analyzed the defendant’s conduct under the fair use

-35-

doctrine, the question at issue was the scope of the access the defendant had provided for the
print-disabled, which included full access to separate text and image copies of the copyrighted
work. HathiTrust, 755 F.3d at 101-02.

Notably, the defendant had complied with the

requirements of the Chafee Amendment, requiring certification of an individual’s disability from
a qualified expert before allowing access and including security measures to prevent further
unauthorized distribution. HathiTrust, 755 F.3d at 91, 100, 101. Accordingly, Public Resource
is not exempted from liability because it claims to have enabled access for the print-disabled.
Finally, James Fruchterman’s report [Dkt. 70-50] on access to the 1999 Standards for the
blind is both irrelevant to the central issue of this case and misleading in its omissions. First, the
question to be answered in this case is whether Public Resource utilized appropriate procedures
for making a copyrighted work accessible to individuals with print disabilities. As set forth
above, it did not.
Second, Mr. Fruchterman ignores Public Resource's failure to take any security measures
to prevent abuse by the sighted public, dismissing the use of sign-up procedures as having the
effect of preventing individual’s with disabilities from accessing websites. (Plfs. SDF at ¶ 94;
Gray Reply Decl., ¶ 55, Exh. VVVVV, Phillips Rebuttal Report ¶¶ 34, 48, 49). This is notable
as Mr. Fruchterman’s own company, Benetech, takes great effort to prevent such abuse through
its website, Bookshare.org, including the deployment of a detailed verification procedure before
the blind are granted access to Bookshare.org’s collection. Mr. Fruchterman's glaring omission
of his own company's policies and procedures thus undermines the reliability of his opinion (Id.)
Third, Mr. Fruchterman failed to consider any additional ways that the blind could have
accessed the 1999 Standards without making the 1999 Standards generally accessible online,
such as by using the very same security procedures in place on Bookshare.org (Plfs. SDF at ¶ 94;

-36-

Gray Reply Decl., ¶ 55, Exh. VVVVV, Phillips Rebuttal Report ¶¶ 35, 51, 53, 54; ¶59, Exh.
ZZZZZ, Screen Captures from BookShare website). Accordingly, Mr. Fruchterman’s report is
marred by significant omissions and serves no purpose but to restate Public Resource’s
argument. Minasian v. Standard Chartered Bank, PLC, 109 F.3d 1212, 1216 (7th Cir. 1997) (it
is “vital [] that judges not be deceived by the assertions of experts who offer credentials rather
than analysis”).
C.

The 1999 Standards are Not a Factual Work; They are a Collective Set of
Opinions to Serve as Guidance for Best Testing Practices

Public Resource has not shown that the second fair use factor, the nature of the
copyrighted work, should be decided in its favor. Public Resource’s fair use argument that the
1999 Standards is a factual work fails for the same reason as does its earlier arguments: the 1999
Standards is copyrightable expression. The 1999 Standards is a collective set of opinions on the
best practices for testing, which do not fall under the prohibitions of 17 U.S.C. § 102(b).
Situation Mngt. Sys., 560 F.3d at 61 (“[t]he fact that [plaintiff’s] works describe processes or
systems does not make their expression noncopyrightable”).

Nor was the 1999 Standards

transmuted into the “Law” for the reasons set forth above. Further, even if the individual
standards were facts, the 1999 Standards is a book containing additional expression by way of
the preface, introduction, chapter backgrounds, and comments, all of which is not “Law” nor fact
and all of which was copied by Public Resource. Accordingly, while the 1999 Standards is not a
work of fiction or fantasy, even in a light most favorable to Public Resource, it cannot be said to
be a mere recitation of facts as a matter of law. The second fair use factor then is at best neutral.
D.

Defendant Took the Entirety of the Sponsoring Organizations’ Work - Well
More Than Necessary Even Under Defendant’s Theory

The third fair use factor substantially favors Plaintiffs. Public Resource does not dispute
that it copied the entire 1999 Standards. (Dft. SDF at ¶¶ 71, 76 [Dkt. 69-3]; Dft. Ans. ¶¶ 7, 55
-37-

[Dkt. 12]; Hudis SJ Decl., ¶ 2, Exh. A, pp. 232-240, 257-259, 261-264, 271-72, ¶ 21, Exh. T, Int.
Ans. 2-4 ¶ 23, Exh. V, ¶ 26, Exh. Y). Rather, it argues that its purpose in informing the public of
the “Law” required copying the entire book. (Dft. Memo. at 43 [Dkt. 69-1]). This argument
fails. Even under Defendant's premise that the standards are the “Law,” the other expressive
portions of the 1999 Standards are not. No regulation, for example, requires test providers to
comply with the preface, introduction or comments of the 1999 Standards and any statutory
interpretation otherwise would be ludicrous. See Section IV(A), supra. Thus under any of
Public Resource’s flawed theories articulated to date, its wholesale copying of the 1999
Standards far exceeded the bounds of fair use. Sony, 464 U.S. at 450 (reproduction of an entire
copyrighted work ordinarily “militat[es] against a finding of fair use”); Marcus v. Rowley, 695
F.2d 1171, 1176 (9th Cir. 1983) (“wholesale copying of copyrighted material precludes
application of the fair use doctrine”).
E.

Defendant’s Activities Harmed the Market for the 1999 Standards and its
Threatened Activities Will Harm the Market for the 2014 Standards

Public Resource has not rebutted the fact that the fourth factor favors Plaintiffs. Its
contention that the market for the 1999 Standards has not been harmed is incorrect, as is its
argument that the analysis is limited to the 1999 Standards. First, the fourth factor focuses on the
effect the copying has on the value of the copyrighted work, which includes the market for
derivative works. 17 U.S.C. § 107(4); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 571
(“The fourth factor requires courts also to consider the potential market for derivative works.”).
It is undisputed that the 2014 Standards is a derivative of the 1999 Standards (See Dft.
SDF ¶ 92 [Dkt. 69-3]; Hudis SJ Decl., ¶ 2, Exh. A, pp. 322-28, ¶ 40, Exh. LL, ¶ 41, Exh. MM)
(undisputed that the 2014 Standards are a “revision of the 1999 Standards”)). One of the
exclusive rights of a copyright owner is the right to prepare and to authorize any derivative
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works based upon the original copyrighted work. 17 U.S.C. § 106(2). Therefore, it would be
improper to exclude consideration of the effect Public Resource’s activities will have on the
market for the 2014 Standards.
Second, while actual harm is one consideration under the fourth factor, of equal
importance is the effect of the copying on potential markets. 17 U.S.C. § 107(4). “[T]o negate
fair use one need only show that if the challenged use ‘should become widespread, it would
adversely affect the potential market for the copyrighted work’.” Harper & Row, Publishers, Inc.
v. Nation Enters., 471 U.S. 539, 568 (1985).
Public Resource does not dispute that if the 2014 Standards was copied in its entirety, as
was the 1999 Standards, it would devastate the market for that derivative, completely
supplanting it (Dft. Memo. at 46-47 [Dkt. 69-1]). That alone tilts the fourth factor in favor of
Plaintiffs. 8 But, additionally, uncontrolled publication of the 1999 Standards will usurp the 2014
Standards because individuals will obtain free copies of the older standards from Public
Resource without knowing that they have been superseded (Dft. SDF ¶ 99 [Dkt. 69-3]; Levine SJ
Decl., ¶ 36; Camara SJ Decl., ¶ 23; Ernesto SJ Decl., ¶ 37; Geisinger SJ Decl., ¶ 27). It will also
usurp the market for future derivatives because, without the revenue from the 2014 Standards,
the funding for such works will be unavailable (Dft. SDF. at ¶¶ 10, 100 [Dkt. 69-3]; Levine SJ
Decl., ¶ 9; Camara SJ Decl., ¶ 10; Schneider SJ Decl., ¶ 5; Ernesto SJ Decl., ¶ 9; Wise SJ Decl.,
¶ 9, Geisinger SJ Decl., ¶ 23).
Third, the unauthorized copying of the 1999 Standards has harmed the value of that

8

The tacit representation that Public Resource has no intention to post the 2014 Standards to the
Internet is entitled to no credit; Mr. Malamud has testified that he will consider doing so if the
2014 Standards are incorporated by reference into any regulation (See Dft. SDF ¶ 104 [Dkt. 693]). Regardless, the inquiry asks the Court to consider what harm would occur if the use
becomes widespread, not just what harm has occurred today. Harper & Row, 471 U.S. at 568.
-39-

work. Public Resource does not dispute that sales of the 1999 Standards decreased remarkably
during the near 2-year period its illicit copies were on the Internet (2012-2014). (Dft. SDF ¶ 94
[Dkt. 69-3]; Levine SJ Decl., ¶¶ 18, 33, Exh. OOO). While 2011 sales of the 1999 Standards
may have decreased in anticipation of the 2014 Standards, the vast majority of annual purchasers
are students taking courses in which the 1999 Standards is required reading and who thus cannot
delay in purchasing the book. (Plfs. SDF ¶ 45; Hudis Reply Decl., ¶ 3, Ex. 1, Geisinger Dep. Tr.
at 235:16-24; 237:12-23; 239:14-25; 244:4-13). Sales to these students should have remained
constant year-after-year until at least the release of the 2014 Standards. (Id., See also Hudis
Reply Decl., ¶ 3, Ex. 1, Geisinger Dep. Tr. at 93:9-94:9; 99:8-18).
Yet, undisputed by Public Resource, sales of the 1999 Standards decreased further in
2012 when Public Resource posted copies to the Internet and remained suppressed in 2013 (Dft.
SDF ¶ 94 [Dkt. 69-3]; Levine SJ Decl., ¶¶ 18, 33, Exh. OOO). This second drop cannot be
explained merely by professionals waiting for the next release, but instead suggests that students
were obtaining copies from Public Resource’s postings, consistent with how Plaintiffs learned of
Public Resource’s infringement (Dft. SDF ¶ 91 [Dkt. 69-3]; Camara SJ Decl., ¶ 21, Exh. MMM;
Wise SJ Decl., ¶¶ 27-28, Exh. LLL). See e.g., Music v. Gonzalez, 430 F.3d 888, 890 (7th Cir.
2005) (“Music downloaded for free from the Internet is a close substitute for purchased music;
many people are bound to keep the downloaded files without buying the originals.”).
Finally, Plaintiffs’ preference to promote the 2014 Standards over the 1999 Standards
does not make Public Resource’s unauthorized copying fair. As the copyright holder, that is a
decision for Plaintiffs to make. Castle Rock Entm’t, Inc. v. Carol Pub. Group Inc., 150 F.3d 132,
145-146 (1998) (“Although [the plaintiff] has evidenced little if any interest in exploiting this
market for derivative works based on Seinfeld … the copyright law must respect that creative

-40-

and economic choice.); Peter Letterese and Assoc., Inc. v. World Inst. of Scientology Enter., 533
F.3d 1287, 1317 (11th Cir. 2008) (the copyright holder’s concession that it failed to develop a
market for the original work and will not do so in the future “falls short of establishing that the
intrinsic value of the copyright is zero … first, because the relevant consideration [is] the
‘potential market’ and, second, because he has the right to change his mind”) (citing Worldwide
Church of Good v. Phila. Church of God, Inc., 227 F.3d 1110, 1119 (9th Cir. 2000)). The fourth
factor therefore favors the Sponsoring Organizations.
VI.

PLAINTIFFS ARE ENTITLED TO A PERMANENT INJUNCTION
A permanent injunction is the appropriate remedy here. Not only do Plaintiffs succeed

on the merits, but all four factors in eBay Inc. v. MercExchange, L.L.C. weigh in favor of a
permanent injunction. 9
A.

Plaintiffs’ Established Success on the Merits for a Permanent Injunction

A plaintiff succeeds on the merits for a permanent injunction where a plaintiff establishes
that there is a reasonable likelihood that the wrong will be repeated. AARP v. Sycle, 991 F. Supp.
2d 224, 230 (D.D.C. 2013) (“Plaintiff has succeeded, by default, on the merits of the instant
action. . . . Defendant’s continuing disregard for Plaintiff’s rights demonstrates that Defendant
will continue to infringe on Plaintiff’s rights, absent an injunction. This finding alone entitles
Plaintiff to a permanent injunction.”) (internal citations omitted, emphasis added); see also
Greene v. Brown, 104 F. Supp. 3d 12, 20 (D.D.C. 2015) (“When a copyright plaintiff has
established a threat of continuing infringement, he is entitled to an injunction.”) (internal

9

eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006) (“According to well-established
principles of equity, a plaintiff seeking a permanent injunction must . . . demonstrate: (1) that it
has 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 and defendant, a remedy in equity is warranted; and (4) that the public
interest would not be disserved by a permanent injunction.”).
-41-

citations omitted, emphasis original). “[T]he critical question for a district court in deciding
whether to issue a permanent injunction is whether there is a reasonable likelihood that the
wrong will be repeated.” TechnoMarine SA v. Giftports, Inc., 758 F.3d 493, 504 (2d Cir. 2014)
(internal citations omitted).
Even after eBay, courts have consistently found an injunction warranted where, absent
one, the defendant is likely to continue its infringement. See, e.g., Hanley-Wood LLC v. Hanley
Wood LLC, 783 F. Supp. 2d 147, 151 (D.D.C. 2011) (“The Court further agrees that Defendants’
continuing disregard for Plaintiff’s rights demonstrates that Defendants will continue to infringe
on Plaintiff’s rights absent an injunction. This finding alone entitles Plaintiff to a permanent
injunction.”); Breaking the Chain Found., Inc. v. Capitol Educ. Support, Inc., 589 F. Supp. 2d
25, 30 (D.D.C. 2008) (same).
Mr. Malamud admits that he created PDF copies of the 1999 Standards and posted them
to the Internet. (Dft. SMF at ¶ 28 [Dkt. 68-3]; Malamud Decl. ¶¶ 20, 23, 25). He also admits
that he took down the 1999 Standards solely as a result of this lawsuit and only pending
resolution of the case. (Dft. SMF at ¶ 39 [Dkt. 68-3]; Malamud Decl. ¶¶ 25). Further, it is
Public Resource’s stated goal and mission to publicly post standards incorporated by reference
into federal and state law. (Dft. SMF at ¶ 2 [Dkt. 68-3]; Malamud Decl. ¶ 34). Thus absent the
issuance of a permanent injunction, Public Resource will continue to disseminate the 1999
Standards without authorization. Mr. Malamud further admits he will strongly consider posting
the 2014 Standards to the Internet if they are incorporated by reference into law. (Plfs. SDF at ¶
40; Hudis SJ Decl., Ex. A, Malamud Dep. 308:23-309:2). As Plaintiffs have established that
there is a reasonable likelihood that Public Resource will continue to copy and disseminate the
1999 Standards without authorization, Plaintiffs are entitled to a permanent injunction.

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Additionally, because there is a reasonable likelihood that Public Resource will continue
to copy and disseminate the 1999 Standards (and the 2014 Standards once incorporated by
reference) without authorization, this case is not moot. The mootness doctrine includes an
exception when the harm is “capable of repetition yet evading review.” Clarke v. United States,
915 F.2d 699, 704 (D.C. Cir. 1990) (en banc). The exception applies where “(1) the challenged
action is in its duration too short to be fully litigated prior to its cessation or expiration, and (2)
there [is] a reasonable expectation that the same complaining party would be subjected to the
same action again.” Id. at 704 (quoting Murphy v. Hunt, 455 U.S. 478, 482, 102 S.Ct. 1181, 71
L.Ed.2d 353 (1982)).
Plaintiffs established a reasonable likelihood that, absent the issuance of a permanent
injunction, Public Resource will continue to disseminate the 1999 Standards (and the 2014
Standards once incorporated by reference) without authorization. Additionally, because Public
Resource can post and take down the 1999 Standards based on the existence of a lawsuit,
Defendant’s challenged activities are too short in duration to be fully litigated prior to its
cessation or expiration. As a result, the exception to the mootness doctrine applies. Plaintiffs are
entitled to a permanent injunction.
B.

Plaintiffs Will Suffer Irreparable Injury Without a Permanent Injunction

Plaintiffs presented testimony of the dire economic harm they will face if Public
Resource’s infringement continues. (Plfs. SMF at ¶¶ 94-100). Not only have Plaintiffs already
experienced a 34% drop in sales of the 1999 Standards after Public Resource began copying and
widely disseminating the 1999 Standards, Plaintiffs expect, without a permanent injunction, a
future loss of revenue from sales of authorized copies (Dft. SDF at ¶¶ 65, 94-95, 99 [Dkt. 68-3];
Plfs. SDF 44, 51). Plaintiffs presented evidence that the extent of damage cannot be easily
quantified because it is impossible to determine who has made copies of the PDFs Public
-43-

Resource posted online and what those individuals have done with such copies (Dft. SDF at ¶¶
89-90 [Dkt. 68-3]; Plfs. SDF at ¶ 51). Additionally, because Public Resource’s dissemination of
the 1999 Standards does not provide notice that they have been replaced by the 2014 Standards,
Plaintiffs expect a loss of revenue from sales of authorized copies of the 2014 Standards, and
harm to the public due to the sale of outdated standards (Dft. SDF at ¶ 99 [Dkt. 68-3]; Plfs. SDF
at ¶ 51; Geisinger Decl. ¶¶ 25-29). Additionally, Plaintiffs presented evidence and case law
concerning the irreparable injury that results from Plaintiffs losing the ability to prevent the
unwanted use and rampant dissemination of their work—a consideration that is particularly apt
where, as here, a defendant places works online for copying and redistribution by numerous third
parties. (Plfs. Mtn. at 53-54 [Dkt. 60-1].) Public Resource did not rebut this evidence.
Despite Public Resource’s uncorroborated statements to the contrary, Plaintiffs continue
to actively sell the 1999 Standards. (Plfs. SDF at ¶¶ 40-41; Levine Decl., ¶ 20, Exh. QQQ).
Public Resource’s allegation that Plaintiffs do not seek any business opportunities with respect to
the 1999 Standards is wholly unsupported (See Dft. Mtn. at 56). Sales revenue from prior
versions of Plaintiffs’ standards are vital to Plaintiffs’ financing of future updates (Plfs. SDF at
¶¶ 51, 66). A loss of revenue from selling the 1999 Standards would result in a lack of funding
for future revisions of the 2014 Standards and beyond (Plfs. SDF at ¶ 51).
The consideration of widespread future infringement is particularly pressing in situations,
like this one, involving digital distribution of a plaintiff’s work that can start a potential chainreaction of infringement. “When digital works are distributed via the Internet, every downloader
who receives one of the copyrighted works is in turn capable of also [re]transmitting perfect
copies of the work[]. Accordingly, the process is potentially exponential rather than linear,
threatening virtually unstoppable infringement of the copyright.” Metro-Goldwyn-Mayer Studios,

-44-

Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1218 (C.D. Cal. 2007) (citations and internal
alterations omitted) (issuing permanent injunction).
Public Resource’s publication of the 1999 Standards on the Internet enabled anyone with
computer access to copy-paste and disseminate digitally (or even print, publish and resell) those
standards (Dft. SDF at ¶¶ 83, 87 [Dkt. 68-3]). As noted in Plaintiffs’ Motion for Summary
Judgment, this concern is not hypothetical. In late 2013 and early 2014, Plaintiffs became aware
that students had obtained copies of the 1999 Standards for free through Public Resource’s
website (Dft. SDF at ¶ 91 [Dkt. 68-3]). Public Resource does not dispute that its actions enabled
the public to have free access (Dft. SDF at ¶¶ 83, 87 [Dkt. 68-3].), nor does it offer any response
to the fact that its infringement enables limitless further infringement by third parties.
This constitutes a cognizable harm to Plaintiffs’ copyright interests because “Plaintiffs’
copyrighted works can be unstoppably and near-instantaneously infringed throughout the
computer-literate world with the files obtained by [Public Resource’s] endusers.” Grokster, 518
F. Supp. 2d at 1218-19. Where the digital impact of infringement leads to an immeasurable level
of copyright infringement and, therefore, immeasurable economic interference, it amounts to
irreparable harm. Id. at 1219; see also Arista Records LLC v. Lime Wire LLC, No. 06 Civ.
05936, 2010 WL 10031251, at *4 (S.D.N.Y. Aug. 9, 2010) (entering permanent injunction
because “damages cannot address this continued vulnerability” of future dissemination). An
injunction is fully justified here.
C.

The Balance of Hardships Weighs in Favor of an Injunction

In contrast to the hardship that will befall Plaintiffs as a result of continued infringement,
Public Resource claims that it receives no income based on its posting of the 1999 Standards and
will suffer no harm if an injunction issues. (Plfs. SDF at ¶¶ 5, 17; Malamud Decl. ¶¶ 30-31 [Dkt.
69-5]). Moreover, a defendant cannot claim an equitable interest in continuing to infringe a
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plaintiff’s copyrights “and thus cannot complain of the harm it will suffer if ordered to cease
doing so.” Fox Television Stations, Inc. v. FilmOn X LLC, 966 F. Supp. 2d 30, 51 (D.D.C.
2013). The balance of hardships cannot weigh in Public Resource’s favor where it admittedly
will suffer no legally recognizable harm.
D.

The Public Interest Will Be Served by an Injunction

Unquestionably, the 1999 Standards serve an important public function. The 1999
Standards improve professional practice in testing and assessment across multiple settings for the
ethical development and use of tests and the evaluation of the quality of tests and testing
practices (Dft. SDF at ¶ 17 [Dkt. 68-3]; Geisinger SJ Decl., ¶ 18; Camara SJ Decl., ¶ 13; Wise SJ
Decl., ¶ 12). Without Plaintiffs’ Standards, government agencies would lose important tools on
which they rely in fulfilling their regulatory duties, shifting the burden to the public sector and
taxpayers.
The 1999 Standards are intended to guide test developers, sponsors, publishers, clinical
or industrial psychologists, research directors, school psychologists, counselors, employment
supervisors, teachers, and various administrators who select or interpret tests for their
organizations. (Dft. SDF at ¶ 18 [Dkt. 68-3]; Geisinger Decl. ¶ 19). Without identifying any
specifically harmed individuals, Public Resource bemoans a lack of instantaneous access of the
1999 Standards to students, parents, and teachers on their smartphones, tablets, and Internet
terminals. (Dft. Mtn. at 58 [Dkt. 68-2]). The adverse impact on Plaintiffs’ ability to continue
creating these important standards outweighs a speculative need for the general public’s
immediate access to them.
The public interest also is served through protecting and encouraging creativity by
“upholding copyright protections and correspondingly, preventing the misappropriation” of
Plaintiffs’ work. Fox Television Stations, 966 F. Supp. 2d at 51. Indeed, Fox confirms that the
-46-

Winter and eBay cases did not foreclose judicial consideration of the impact of infringement on
fostering future creativity. See eBay, 547 U.S. at 392-93; Winter v. Natural Res. Def. Council,
Inc., 555 U.S. 7 (2008). This is especially important here, where fostering continued creation of
standards by Plaintiffs serves important public functions.
E.

Remedies Available at Law Are Inadequate

Defendant concedes the inadequacy of money damages by refusing to address the issue in
its opposition brief. Moreover, the damage that Defendant causes is difficult if not impossible to
quantify (Dft. SDF at ¶¶ 89-90 [Dkt. 68-3]). Defendant’s posting of the 1999 Standards to the
Internet results in their immeasurable distribution, and thus an immeasurable amount of harm
that cannot be adequately compensated through money damages. See Grokster, 518 F. Supp. 2d
at 1218-19. Further, distribution of the 1999 Standards without notice that they have been
superseded immeasurably harms both Plaintiffs and the public who large who rely on the
preparation and administration of valid, fair and reliable tests (Plfs. Mtn. at 25-26 [Dkt. 60-1];
Levine Decl., ¶ 36; Camara Decl., ¶ 23; Ernesto Decl., ¶ 37; Geisinger Decl., ¶ 27).
VII.

DEFENDANT’S AMICI MERELY RESTATE DEFENDANT’S ARGUMENTS
AND FAIL FOR THE SAME REASONS
The four amicus curiae briefs filed in support of Public Resource can be disposed of with

a few remarks. With little exception, the amici merely restate the Public Resource’s arguments,
relying on the same law and analysis. That is not the purpose of amicus briefs. See Jin v.
Ministry of State Sec., 557 F. Supp. 2d 131, 137 (D.D.C. 2008) (the purpose of an amicus brief is
to provide “unique information or perspective that can help the court beyond the help that the
lawyers for the parties are able to provide”). Those arguments are addressed above.
The amicus curiae arguments share the same flaw does Public Resource’s: they ignore
that the 1999 Standards is a book containing expressive material in addition to the standards.
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The regulations that cite the 1999 Standards incorporate by reference the individual standards.
They do not require compliance with the additional portions of the book. Not a single theory
articulated to date justifies the Court invalidating the copyright in the entire 1999 Standards.
The amici all share other flaws as well.

All fail to recognize the significant

Constitutional issues if the government is allowed to seize voluntarily promulgated standards and
abolish their copyright protection, simply because it is more convenient to incorporate existing
standards than independently develop them. All amici additionally parrot Public Resource’s
contention that the 1999 Standards are not sufficiently accessible while likewise ignoring that
copies of the book are available in hundreds of libraries throughout the country.
The Law Scholars’ amicus curiae brief [Dkt. 78-1] essentially is a second brief by Public
Resource’s counsel and is therefore improper. Pamela Samuelson and Jonathan Zittrain, two of
the law scholars submitting the brief, are attorneys and board members of the Electronic Frontier
Foundation (“EFF”), which represents Public Resource in this matter.

(See Law Scholars

Amicus Curiae Brief at 2, n.3). Regardless of Ms. Samuelson’s and Mr. Zittrain’s representation
that they join the brief “solely as individuals,” as attorneys and managing members of the EFF,
they are bound by the same principle of loyalty to clients as all attorneys in a “firm” are, and are
imputed to have knowledge of this case. D.C. Rules of Prof. Conduct, Rule 1.10, Comm. 1, 4
(“a firm of lawyers is essentially one lawyer for purposes of the Rules governing loyalty to the
client, or from the premise that each lawyer is vicariously bound by the obligation of loyalty
owed by each lawyer with whom the lawyer is associated”). Defense counsel cannot circumvent
the Court’s page limits and briefing schedule under the guise of filing amicus curiae briefs. The
brief should be disregarded.
The fundamental premise of the Law Scholars’ arguments analysis also is incorrect:

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Plaintiffs are not voluntary “contributors” to a law and the 1999 Standards is not a “model code.”
(See generally Law Scholars Amicus Curiae Brief, passim). Plaintiffs independently developed
1999 Standards as a guide of best practices for the educational and psychological testing fields,
not as a “private contribution to government law.” (Dft. SDF ¶ 13 [Dkt. 69-3]; Camara Decl., ¶
11; Wise Decl., ¶ 11). The government took the standards recited in the 1999 Standards after the
fact and incorporated them into administrative regulations. The Law Scholars pointedly ignore
the serious Fifth Amendment issues raised by their position.
Public Knowledge’s contention that Plaintiffs’ have other means of funding development
of the standards is addressed in Plaintiffs’ opening brief (Compare Public Knowledge Amicus
Curiae Brief at 2-4 [Dkt. 81] with Plfs. Memo. at 53-56 (Dkt. 60-1]). The examples it gives of
standard-setting bodies that do not rely on copyright royalties are not analogous. Each are
substantially larger organizations, with larger membership pools and greater membership fees.
(See Public Knowledge Amicus Curiae Brief at 2-3 [Dkt. 81]).

The World Wide Web

Consortium for example charges membership fees of up to $77,000 per year! See World Wide
Web

Consortium,

Fee

Table

for

the

United

https://www.w3.org/Consortium/fees?countryCode=US&quarter=01-01&year=2016

States,
(accessed

Feb. 13, 2016).
The Reporters Committee contends that maintaining copyright in voluntarily
promulgated standards inhibits the news media’s ability to report on the law (See Public
Knowledge Amicus Curiae Brief at 2 [Dkt. 77]). This argument fails to acknowledge that news
reporting is one of the explicitly stated fair use categories and given substantial protection. 17
U.S.C. § 107 (“the fair use of a copyrighted work…for purposes such as criticism, comment,
news reporting….is not an infringement of copyright”); Harper & Row, 471 U.S. at 561 (“News

-49-

reporting is one of the examples enumerated in § 107…”).
Mr. Bahram’s argument regarding accessibility for the blind overlooks that Congress has
already provided for such access through the Chafee Amendment, 17 U.S.C. § 121. If additional
concessions are needed, that is an issue to be addressed by Congress, not by this Court. The
issue here is that Public Resource failed to comply with the requirements of that exception and
deliberately posted unauthorized copies of the 1999 Standards in a manner that promoted abuse
by the sighted public. (Plfs. SDF ¶ 4; Gray Decl. ¶ 54, Ex. UUUUU, Stip. Of Facts, Code
Revision Comm. v. Public.Resource.org, 1:15-CV-02594-MHC at ¶¶ 48, 54, 58 (N.D.Ga. Jan.
15, 2016)).

Further, Mr. Bahram is mistaken that Public Resource post-processes the

unauthorized copies of standards it creates so that they are accessible to the blind.

It is

undisputed that Public Resource did not do so with the unauthorized copies of the 1999
Standards it created (Dft. SDF ¶ 73 [Dkt. 69-3]; Hudis SJ Decl., ¶ 27, Exh. Z, pp. 309-310, ¶ 28,
Exh. AA, p. 9 (and sub-Exh. B thereto)).
The amicus curiae briefs supporting Public Resource add nothing beyond what is argued
by Public Resource, and suffer from the same flaws as do Public Resource’s arguments. The
legal and policy arguments set forth by all fail on the same fundamental issues
VIII.

CONCLUSION
For the reasons set forth in Plaintiffs Summary Judgment Motion [Dkt. 50-1] and above,
Plaintiffs respectfully request that the Court enter summary judgment in their favor, finding
Public Resource to have directly and contributorily infringed Plaintiffs’ copyright in the 1999
Standards, issue an injunction, and deny Public Resource’s Cross-Motion [Dkt. 69-1].

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Respectfully submitted,
QUARLES & BRADY LLP
Dated: February 18, 2016
By:

/s/ Jonathan Hudis
Jonathan Hudis (DC Bar # 418872)
Nikia L. Gray (pro hac vice)
Jonathan P. Labukas (DC Bar # 998662)
1700 K Street NW, Suite 825
Washington, DC 20006-3825
Tel. [phone]
Fax [phone]
E-Mail [e-mail]
E-Mail [e-mail]
E-Mail [e-mail]
Counsel for Plaintiffs American Educational
Research Association, Inc., American
Psychological Association, Inc., and
National Council on Measurement in
Education, Inc.

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