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Case l:13-cv-01215-TSC Document 190 Filed 02/14/19 Page 1 of 13 


UNITED STATES DISTRICT COURT 
FOR THE DISTRICT OF COLUMBIA 


AMERICAN SOCIETY FOR TESTING AND 
MATERIALS d/b/a/ASTM INTERNATIONAL; 

NATIONAL FIRE PROTECTION 
ASSOCIATION, INC.; and 

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


Case No. l:13-cv-01215-TSC-DAR 


PUBLIC RESOURCE’S OPPOSITION 
TO THE ASTM PLAINTIFFS’ 
MOTION TO ENTER SCHEDULING 
ORDER [DKT. 188]; REQUEST FOR 
STATUS CONFERENCE 


Plaintiffs/Counter-Defendants, 


v. 


PUBLIC.RESOURCE.ORG, INC., 


Defendant/Counter-Plaintiff. 


Defendant Public.Resource.Org, Inc. (“Public Resource”) agrees with Plaintiffs that, under 
the Court of Appeals’ mandate, this Court should restore the case to the active docket and enter a 
scheduling order. However, Plaintiffs’ proposal ignores the core theme of the Court of Appeals’ 
decision, which directed the parties to supplement the factual record. Public Resource therefore 
requests that the Court conduct a status conference to discuss the reopening of discovery in a 
focused manner and creation of a consolidated summary judgment briefing schedule that will 
allow the parties to satisfy the Court of Appeals’ instructions. In accordance with Local Rule 7(m), 
Public Resource has met and conferred with Plaintiffs, who do not agree that further discovery is 
required by the D.C. Circuit’s order, as they have stated in their motion [Dkt. 188]. 

The Court of Appeals’ Instructions to Develop Further the Factual Record 
On July 17, 2019, the Court of Appeals for the District of Columbia Circuit vacated the 
summary judgment and the pennanent injunction that this Court granted. 1 American Society for 


1 On August 28, 2018 Public Resource began reposting the standards at issue. 



Case l:13-cv-01215-TSC Document 190 Filed 02/14/19 Page 2 of 13 


Testing and Materials v. Public.Resource. Org, 896 F.3d 437 (D.C. Cir. 2018). Although the Court 
of Appeals stated that Public Resource presented “a serious constitutional concern with permitting 
private ownership of standards essential to understanding legal obligations,” it ultimately focused 
solely on the question of fair use so as “to avoid ‘passing] on questions of constitutionality . . . 
unless such adjudication is unavoidable.’” Id. at 447 (quoting Spector Motor Service v. 
McLaughlin, 323 U.S. 101, 105 (1944)). 

The Court of Appeals ruled that this Court had misapplied the fair use standard, and it 

remanded the case for further proceedings on the question of whether Public Resource’s posting of 

standards was non-infringing fair use. The Court of Appeals specifically called for further 

development of the factual record, as Public Resource discusses below. The Court of Appeals 

deferred the “far thornier question” of whether standards that have been incorporated by reference 

necessarily enter the public domain, leaving that issue for consideration on a later appeal if 

necessary. Id. at 441, 447, 459. The Court of Appeals also declined to address the question of 

ownership generally, ruling only that Public Resource had not sufficiently argued below that the 

standards were “works of the United States Government” due to the participation of government 

employees in developing the standards. Id. at 446. 

The Court of Appeals’ opinion stressed the importance of a more detailed fair use analysis 

and called for further development of the factual record. The Court of Appeals stated that: 

though there is reason to believe “as a matter of law” that PRO’S reproduction of certain 
standards “qualif[ies] as a fair use of the copyrighted work,” id. (internal quotations and 
citations omitted), we ultimately think the better course is to remand the case for the 
district court to further develop the factual record and weigh the factors as applied to 
PRO’S use of each standard in the first instance. As we have emphasized, the standards 
here and the modes of their incorporation vary too widely to conclusively tell goose apart 
from gander, and the record is just too thin to tell what went into the sauce. On remand, the 
district court will need to develop a fuller record regarding the nature of each of the 
standards at issue, the way in which they are incorporated, and the manner and extent to 
which they were copied by PRO in order to resolve this “ mixed question of law and fact." 


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Id. This is not to say that the district court must analyze each standard individually. 

Instead, it might consider directing the parties, who poorly served the court by treating the 
standards interchangeably, to file briefs addressing whether the standards are susceptible to 
groupings that are relevant to the fair use analysis. 

896 F.3d at 448-49 (emphasis added). 

The Court of Appeals offered additional legal guidance regarding the specific fair use 

factors. Regarding the first factor, the Court of Appeals observed that, on the record, Public 

Resource’s use appeared to be noncommercial and that 

in various circumstances, courts have recognized that a secondary work “can be 
transformative in function or purpose without altering or actually adding to the original 
work.” . . . Where an incorporated standard provides infonnation essential to 
comprehending one’s legal duties, for example, this factor would weigh heavily in favor of 
pennitting a nonprofit seeking to inform the public about the law to reproduce in full the 
relevant portions of that particular standard. ... By contrast, where knowing the content of 
an incorporated standard might help inform one’s understanding of the law but is not 
essential to complying with any legal duty, the nature of PRO’S use might be less 
transformative and its wholesale copying, in turn, less justified. 

896 F.3d at 450. With respect to the second factor, the Court of Appeals noted that, “where the 

consequence of the incorporation by reference is virtually indistinguishable from a situation in 

which the standard had been expressly copied into law, this factor weighs heavily in favor of fair 

use.” Id. at 452. 

On the fourth factor, the Court of Appeals held: 

PRO’S use was not for “commercial purposes,” and so the district court’s inference cannot 
be sustained on the basis of undisputed evidence in the summary judgment record. That 
said, the SDOs are right to suggest that there may be some adverse impact on the market 
for the copyrighted works PRO reproduced on its website. But it remains unclear from this 
record just how serious that impact is. 

Id. at 452-53 (emphasis added). 

Taken together, the Court of Appeals’ decision and remand order call for further 
development of the factual record. To provide the Court all the relevant facts, including new facts 
that have unfolded in the years since the earlier proceedings, Public Resource seeks further 


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discovery relevant to its fair use defense. This is particularly necessary for the fourth fair use 
factor (the effect of the use on the potential market), which the Court of Appeals singled out as 
being insufficiently developed. Id. Because the full scope of financial infonnation available at the 
close of discovery was included in the record on appeal, it seems impossible to satisfy the Court of 
Appeals’ mandate by simply recharacterizing the same information already presented. Additional 
factual material is necessary. 

There is now information relevant to the fourth fair use factor that was not available at the 
close of fact discovery and which is necessary for the Court to make a sound decision. Plaintiffs 
argue that Public Resource should be restricted to the discovery of four years ago as a matter of 
diligence (Mot. at 2, 4-5), but a great deal of the material Public Resource requests did not exist at 
that time. Finally, focused fact discovery will not unfairly prejudice Plaintiffs, who waited over 
half a year before addressing with this Court the remand order issued in July 2018. 

One crucial category of information that was not previously available is updated sales 
figures for the standards at issue. Those standards have been on sale for three and a half years 
since the close of fact discovery in 2015, encompassing both multiple years in which Public 
Resource had taken down the standards and nearly six months during which Public Resource has 
again displayed the standards. The sales figures during that period and up until the present are 
necessary to determine what effect, if any, Public Resource’s use has on the market for the 
standards. Data from the years in which Public Resource had ceased to provide the standards and 
from the six months after Public Resource restored the standards will give a needed comparison to 
the earlier evidence. 

Similarly, the ASTM Plaintiffs have released later versions of many of the standards at 
issue since the close of fact discovery. Because it is likely that many persons seeking standards 


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Case l:13-cv-01215-TSC Document 190 Filed 02/14/19 Page 5 of 13 


will choose a newer, non-incorporated version over an older incorporated version, comparison of 
the sales of new and old versions is necessary to show a “cannibalizing” effect, which likely 
accounts for sales trends that Plaintiffs ascribe to Public Resource’s actions. Likewise, the number 
of visitors to Plaintiffs’ online reading rooms and the number of views of the relevant standards 
will show whether those online reading rooms are “cannibalizing sales” of the standards at issue, a 
question the Court of Appeals raised explicitly with respect to the fourth fair use factor. 896 F.3d 
at 453. Sales figures of materials and services that Plaintiffs have sold in conjunction with the 
standards will show whether Plaintiffs have used the incorporation by reference of the standards 
into law in order to create a larger market for related products and services. 

Finally, depositions of three or four key government officials who have knowledge of the 
incorporation of the standards at issue, as well as updated document discovery concerning the 
promotion of incorporation by reference, is necessary to inform the Court regarding the way in 
which these standards were incorporated, which the Court of Appeals stated required further 
factual development. See 896 F.3d at 442 (“The process for incorporation by reference varies 
widely by jurisdiction.”). 

Public Resource Has Good Cause to Request Focused Discovery Into Plaintiffs’ 

“Joint Ownership” Theory 

Public Resource also seeks further discovery regarding ownership of the standards at issue. 
While Public Resource intends to move for summary judgment on its fair use defense, it remains 
Plaintiffs’ burden to establish ownership to prevail on any future summary judgment motion. 

Plaintiffs again oppose discovery on their ownership claims, just as they had earlier in the 
case. Plaintiffs originally relied upon copyright registrations that identified their works as “works 
made for hire.” When Public Resource showed that the volunteers who wrote the standards were 


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Case l:13-cv-01215-TSC Document 190 Filed 02/14/19 Page 6 of 13 


not Plaintiffs’ employees, undermining the presumed basis for Plaintiffs’ registrations, Plaintiffs 
abandoned that theory and instead argued that they had valid assignments from the volunteers. 
When Public Resource sought discovery into those assignments, Plaintiffs fought to prevent any 
discovery, arguing that alleged infringers had no standing to challenge ownership assertions. Dkt. 
86. The Court granted discovery on ownership, which showed that Plaintiffs could not produce a 
single assignment for the vast majority of standards at issue, and that many of the supposed 
“assignments” were actually licenses (which do not convey standing to sue). 

On summary judgment Plaintiffs argued that the standards were “joint works” - i.e. 
copyrights jointly owned with each volunteer author (of which there were thousands), with 
proceeds to be split equally. See Plaintiffs Memorandum in Support of Summary Judgement, Dkt. 

118-1 at 16. Because some of these alleged “joint authors” were U.S. Government employees 
acting in the course of their official duties, Plaintiffs’ new theory suggested there was an 
additional public interest in the works, potentially affecting the analysis of both ownership 
(pursuant to 17 U.S.C. § 105) and fair use. But because Plaintiffs pivoted to rely on this theory in 
their summary judgment briefing, Public Resource did not have the opportunity to test that theory 
in discovery. Public Resource needs that opportunity now. 

To forestall that opportunity, Plaintiffs argue that Public Resource forfeited the issue of 
ownership under a “law of the case” theory, stating both that this Court’s summary judgment 
decision as to copyright ownership stands and that Public Resource failed to raise all of its 
ownership arguments on appeal. Mot. at 2-4. Both of Plaintiffs’ arguments are incorrect. 

First, the Court of Appeals did not decide any ownership issue on appeal; it held that 
Public Resource had not sufficiently presented the “joint U.S. Government works” argument 
below. 896 F.3d at 446 (citing Keepseagle v. Perdue, 856 F.3d 1039, 1053 (D.C. Cir. 2017) for the 


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Case l:13-cv-01215-TSC Document 190 Filed 02/14/19 Page 7 of 13 


proposition that ‘“legal theories not asserted’ in the district court ‘ordinarily will not be heard on 
appeal’”). Remanded to this Court, with the summary judgment decision vacated in its entirety, 
Plaintiffs once again have the burden of proving copyright ownership, which Public Resource may 
rebut. 

Second, Plaintiffs are also mistaken in claiming that Public Resource raised only the 
question of U.S. Government involvement in the context of ownership on appeal. In its opening 
brief, Public Resource explicitly raised all ownership issues before the Court of Appeals, including 
that Plaintiffs did not author the standards over which they claim copyright ownership (Opening 
Br. at 10-12); Plaintiffs initially relied on a faulty “work made for hire” argument to improperly 
obtain copyright registrations that were based on false information (Opening Br. at 12); Plaintiffs 
did not obtain or produce evidence of proper assignments for the standards at issue (Opening Br. 
at 12-13); and that Plaintiffs fell back on an argument of joint ownership of the standards, 
implicating joint ownership with U.S. Government employees (Opening Br. at 13-14). Public 
Resource requested that the Court of Appeals remand for reconsideration all of these ownership 
issues. Opening Br. at 50-52 (“Even if the Court affirms the decision below on all other issues, it 
should vacate and remand to the district court to analyze the ownership issues, particularly the 
U.S. government participation in creating all the works.”) (emphasis added). 

The Court of Appeals vacated this Court’s summary judgment decision and remanded to 
reconsider the fair use factors in light of the appellate opinion. 896 F.3d at 441. The only decision 
that could have been “law of the case” was this Court’s summary judgment decision, which the 
Court of Appeals completely vacated. When Plaintiffs move again for summary judgment, they 
will have the burden of proving every element, including ownership. Accordingly, Public 
Resource seeks additional discovery pertaining to Plaintiffs’ 11th hour “joint ownership” theory. 


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Case l:13-cv-01215-TSC Document 190 Filed 02/14/19 Page 8 of 13 


Public Resource’s Proposal for Focused Discovery 

Following the guidance of the Court of Appeals, but mindful as well of the need to 
expedite resolution of this case, Public Resource requests the Court re-open discovery focused on 
the following: 

Fair Use 

1. Sales data updated to the present day, addressing: 

a. The standards at issue; 

b. Later versions of the standards at issue; and 

c. Supplemental materials and services such as guides and training relating to 
the versions at issue and later versions of the standards at issue. 

2. Depositions of the plaintiffs under Fed. R. Civ. P. 30(b)(6), limited to questions 
about sales data; 

3. Information about usage of plaintiffs’ online reading rooms for the standards at 

issue. 

4. Document discovery regarding communications by or with government officials 
regarding incorporation into law of, or enforcement of, standards by government. 

5. Depositions of three or four key current or former government employees involved 
in the incorporation into law of Plaintiffs’ standards and the coordination between Plaintiffs and 
government bodies regarding incorporation of standards into law. 

Ownership 

Further document discovery on the participation of U.S. Government employees in standards 
development, as volunteers on committees preparing, editing, updating or voting on standards; 
members of committee hierarchies with authority over the preparation of standards; members of 


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SDO boards or committees liaising with government agencies; attendees at meetings to discuss 
promotion of standards-as-laws or adoption of standards by governments; and instructions or 
commentary from government officials regarding standards. 

General 

Depositions of any declarants that the parties will rely on in a summary judgment motions 
who were not previously deposed, or who will be providing declarations that address subject 
matters on which they were not previously deposed. 

Public Resource believes that discovery can be completed within 9 months, at which point 
the parties would submit renewed motions for summary judgment, focusing on four issues: (1) 
whether the Plaintiffs have met their burden to establish ownership of rights in the standards at 
issue; (2) if so, whether Public Resource’s use of the standards is a lawful fair use; (3) whether 
Public Resource’s use of the Plaintiffs’ marks is a nominative fair use; and, (4) whether (and, if so, 
what) injunctive relief is appropriate. Public Resource notes that the Court of Appeals expressly 
decided to “leave for another day the question of whether the Constitution pennits copyright to 
persist in works incorporated by reference into law.” 896 F.3d at 447. It did not address the 
questions of copyrightability under 17 U.S.C. § 102(b) and the merger doctrine, and the 
concurring opinion of Judge Katsas specifically stated that those issues “remain open in the 
unlikely event that disseminating ‘the law’ might be held not to be fair use.” Id. at 459. Public 
Resource wishes to preserve those issues and related arguments that it previously addressed. It 
believes that the Court can focus on the fair use, ownership, and injunction issues in new cross¬ 
motions while allowing the parties to incorporate by reference their arguments on the other earlier 
issues; any further decision by the Court should maintain those earlier issues for review by the 
Court of Appeals. 


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Case l:13-cv-01215-TSC Document 190 Filed 02/14/19 Page 10 of 13 


Public Resource’s Proposal for Scheduling Summary Judgment Briefing 

As Plaintiffs correctly stated, the parties agree that the fair use questions are amenable to 
summary judgment. Public Resource suggests briefing both this case and the AERA case in 
parallel as a matter of judicial economy and to prevent conflicting decisions. The Court of Appeals 
suggested that the standards at issue in both cases should be grouped in some manner to allow for 
a more holistic determination by the Court, and allowing the AERA case to proceed ahead of this 
case would make it difficult or impossible to factor the standards at issue in both cases into a 
single categorization structure, particularly if discovery has not yet concluded in this action. 
Although the facts of the cases may differ, most of the underlying legal principles and ultimate 
factors that the Court must weigh are identical. Similarly, if the Court of Appeals again faces these 
cases on a subsequent appeal, it will likely want to address them simultaneously and in 
consolidated fashion. 

For these reasons, Public Resource suggests that the Court consolidate the summary 
judgment briefing for both the AERA and ASTM cases, or at the very least to coordinate the 
briefing. 

If the Court consolidates the summary judgment briefing, Public Resource requests that 
opening cross-motions be filed 60 days after the close of discovery, with amicus briefs due 30 
days after the date for opening cross-motions, opposition briefs due 45 days after opening cross¬ 
motions, and reply briefs due 14 days thereafter. 

If the Court does not consolidate the summary judgment briefing, Public Resource requests 
that the Court stagger briefing in the two cases using the same schedule that the Court set in the 
prior summary judgment briefing three years ago, with the opening motion by the ASTM 
Plaintiffs due 30 days after the close of discovery. Public Resource’s joint opening and opposition 


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Case l:13-cv-01215-TSC Document 190 Filed 02/14/19 Page 11 of 13 


brief in ASTM would be due 30 days later, and the AERA Plaintiffs’ opening motion would be due 
that same day. Thirty days later, the ASTM Plaintiffs will file their joint reply and opposition, and 
Public Resource will file its joint opening and opposition brief in the AERA case on that same 
day. Fourteen days later, Public Resource will file its reply in the ASTM case and a further 14 days 
thereafter the AERA Plaintiffs will file their joint opposition and reply. Public Resource’s reply in 
the AERA case will be due a final 14 days thereafter. Amicus briefs in each respective case will be 
due 14 days after Public Resource’s joint opening/opposition brief in each case. 

CONCLUSION 

For the foregoing reasons, Public Resource requests that the Court conduct a status 
conference to address these issues, reopen discovery on a limited basis, and set a briefing schedule 
that will allow the parties to satisfy the Court of Appeals’ requests concerning development of the 
record and grouping of the standards at issue. 


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Case l:13-cv-01215-TSC Document 190 Filed 02/14/19 Page 12 of 13 


Dated: February 14, 2019 


Respectfully submitted, 


/s/ Andrew P. Bridges _ 

Corynne McSherry (pro hac vice) 
corynne@eff.org 

Mitchell L. Stoltz (D.C. Bar No. 978149) 
mitch@eff.org 

ELECTRONIC FRONTIER FOUNDATION 

815 Eddy Street 

San Francisco, CA 94109 

Telephone: (415)436-9333 

Facsimile: (415)436-999 

Andrew R Bridges (admitted) 
abridges@fenwick.com 
Matthew B. Becker (pro hac vice) 
mbecker@fenwick.com 
FENWICK & WEST LLP 
555 California Street, 12th Floor 
San Francisco, CA 94104 
Telephone: (415) 875-2300 
Facsimile: (415)281-1350 

David Halperin (D.C. Bar No. 426078) 
davidhalperindc@gmail.com 
1530 P Street NW 
Washington, DC 20005 
Telephone: (202) 905-3434 

Attorneys for Defendant/Counter-Plaintiff 
Public.Resource. Org, Inc. 


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Case l:13-cv-01215-TSC Document 190 Filed 02/14/19 Page 13 of 13 


CERTIFICATE OF SERVICE 


In accordance with LCvR 5.3,1 hereby certify that on February 14, 2019,1 caused a true 
and correct copy of the foregoing Joint Status Report to be served on all counsel of record through 
the Courts CM/ECF. 


/s/Andrew P. Bridges _ 

Andrew R Bridges (admitted) 


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