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Case l:13-cv-01215-TSC Document 195 Filed 08/06/19 Page 1 of 5 


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, 

Plaintiffs/Counter-Defendants, 


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

OPPOSITION TO ASTM PLAINTIFFS 
MOTION TO STAY ALL DEADLINES 
PENDING DECISION OF UNITED 
STATES SUPREME COURT, 
GEORGIA V. 

PUBLIC.RESOURCE.ORG, INC. 
ACTION 

Filed: August 6, 2013 


PUBLIC.RESOURCE.ORG, INC., 


Defendant/Counter-Plaintiff. 


Public Resource opposes a stay. The Supreme Court’s decision in Georgia et al. v. 
Public.Resource.Org is unlikely to affect significantly the questions immediately before this 
Court, namely fair use and copyright ownership determinations based on the facts of this case. 

Plaintiffs filed this action exactly six years ago claiming existential, urgent harms to their 
operations from Public Resource’s activities. Plaintiffs previously objected to extensions of the 
deadlines in this case, urging that they would be harmed by any postponement of the resolution 
they seek. Now they want to delay resolution because another case, focused on rather different 
legal issues, could possibly shed light on this one. That is not an appropriate basis for a stay. 

A timely resolution of this case, including the copyright and trademark fair use defenses 
that are at issue on remand, will allow Public Resource to decide how best to fulfill its mission 


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going forward. Public Resource has had to postpone these decisions while the legal status of its 
use of standards incorporated by reference into law (IBR standards) remains unresolved. 

No party to this case can predict with any certainty whether the Supreme Court’s 
consideration of Georgia et al. v. Public.Resource. Org, No. 18-1150, will influence the outcome 
of this case. To promote efficiency and certainty, this case should proceed to briefing and cross 
summary judgment motions on the ownership and fair use issues that are ripe for decision after 
the remand by the D.C. Circuit. 

“In considering whether to delay its proceedings by way of a stay ... a court must 
ascertain ‘the true value that would follow prior completion of the related [] proceedings.” 
Painters’ Pension Tr. Fund of Washington, D.C. & Vicinity v. Manganaro Corp., Maryland, 693 
F. Supp. 1222, 1224 (D.D.C. 1988) (quoting Rohr Industries v. Washington Metropolitan Area 
Transit Authority, 720 F.2d 1319, 1325 (D.C. Cir. 1983)). Here, that value is highly uncertain. 

While the Georgia case also concerns the enforceability of copyright in laws, there are 
significant differences between the cases in their respective postures. The Georgia case concerns 
Georgia’s official legislative code that the state publishes only as the “Official Code of Georgia 
Annotated” with annotations that the state has designated as “official.” While a Georgia statute 
states that the annotations “do not constitute part of the law,” O.C.G.A. § 1-1-7, the Eleventh 
Circuit held that those annotations “are part and parcel of the law” and are thus government 
edicts not subject to copyright. See Code Revision Commission v. Public.Resource.Org, 906 F.3d 
1229, 1233, 1244 (11th Cir. 2018). 

As the Court knows, this case concerns standards and code documents that federal and 
state governments incorporated into federal and state laws and regulations by reference, a 
process that explicitly gives them the force of law. 5 U.S.C. §552(a)(l); 1 C.F.R. §§ 51.1-51.11. 


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Because of this factual distinction, the Supreme Court’s decision in the Georgia case may not 
affect the outcome of this case. 

More importantly, however, the Supreme Court’s decision is unlikely to affect the issue 
that the D.C. Circuit remanded the case for this Court to consider, namely whether PRO’S 
posting of standards incorporated by reference was fair use. The fair use doctrine was not the 
basis of the Eleventh Circuit’s opinion in the Georgia case and is not before the Supreme Court. 
To be sure, the status of those standards under copyright law and the government edicts doctrine 
are highly important to the fair use inquiry. But fair use analysis also includes, among other 
things, an inquiry into the purpose and character of the use—here, Public Resource’s use of IBR 
standards to infonn and educate the public about the law, which the D.C. Circuit characterized as 
favoring a finding of fair use “as a general matter.” Am. Soc'y for Testing & Materials, et al. v. 
Public.Resource.Org, Inc., 896 F.3d 437, 449 (D.C. Cir. 2018). The Georgia case does not put 
the purpose and character of Public Resource’s incorporated-standards project at issue. And even 
if the Supreme Court were to rule against Public Resource in the Georgia case, Public Resource 
could still prevail in this case on fair use or ownership grounds. All parties will benefit from 
timely resolution of the factual and legal issues raised by Public Resource’s defense of fair use as 
well as resolution of the ownership issues that the D.C. Circuit ruled were not properly before it 
in the earlier appeal. 

The issues before the Supreme Court in the Georgia case will come to the fore in this 
case if Public Resource loses its fair use defense and the ASTM plaintiffs prevail on their 
ownership claims that are inconsistent with their copyright registrations, at which point this 
Court could reach the constitutional questions that Public Resource raised. This Court’s decision 
on fair use and copyright ownership is likely to occur at about the same time as the Supreme 


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Court’s decision in the Georgia case. If the fair use or ownership grounds do not conclude this 
case in Public Resource’s favor, this Court will be able to apply the decision in the Georgia case 
to revisit the more fundamental issues of copyrightability of the standards as laws. Thus it is 
most efficient for this Court to continue on its current path. 

Finally, Plaintiffs’ request for a stay is inconsistent with their earlier statements to this 
Court. In February of this year, while asking the Court to proceed to summary judgment without 
supplemental discovery, Plaintiffs argued that taking several months to augment the factual 
record “will unfairly prejudice Plaintiffs who seek to put this matter behind them . . . Defendant 
should not be permitted to delay this Court’s final resolution of the narrow issue of fair use while 
it continues to post Plaintiffs’ copyrighted works online in the interim.” Scheduling Motion at 5, 
ECF No. 188. Now that discovery is nearly complete, they argue for a delay of up to ten months 
on the mere possibility that the Supreme Court’s decision in the Georgia case might influence 
this case. 

Public Resource opposes a stay for the same reason it did not oppose the grant of 
certiorari in the Georgia case: because Public Resource seeks timely and decisive resolution of 
all the hotly contested issues in these cases, to further its mission while conforming its conduct to 
the law as the courts determine it. 

Additionally, the plaintiffs in the other action before this Court, American Education 
Research Association, Inc. et al. v. Public.Resource.Org, Inc., l:14-cv-00857-TSC-DAR, have 
not requested a stay, and they did not join in the ASTM Plaintiffs’ motion. Public Resource 
believes that neither case should be stayed, for the reasons it stated above. If it stays one case 
(ASTM) and not the other (AERA), this Court would likely have to do double the work with the 


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Case l:13-cv-01215-TSC Document 195 Filed 08/06/19 Page 5 of 5 


cases on different timetables, and it would significantly increase the burdens on Public Resource 
and its pro bono counsel. There would be no efficiency, and only burdens, from such a stay. 

If the Court were to grant the stay that the ASTM plaintiffs seek, the Court should 
similarly stay the proceedings in the AERA case, but for all the reasons discussed above, Public 
Resource respectfully requests that the Court deny the ASTM Plaintiffs’ motion for a stay. 


Dated: August 6, 2019 


Respectfully submitted, 


/s/ Andrew P. Brids.es _ 

Mitchell L. Stoltz (admitted) 
mitch@eff.org 

Corynne Me Sherry (admitted pro hac vice) 
corynne@eff.org 

ELECTRONIC FRONTIER FOUNDATION 

815 Eddy Street 

San Francisco, CA 94109 

Telephone: (415)436-9333 

Facsimile: (415)436-9993 

Andrew P. Bridges (admitted) 

abridges@fenwick.com 

Matthew B. Becker (admitted 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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