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Case l:13-cv-01215-TSC Document 196 Filed 08/20/19 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, 


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


Plaintiffs/ 

Counter-Defendants, 


v. 

PUBLIC.RESOURCE.ORG, INC., 

Defendant/ 

Counter-Plaintiff. 


REPLY IN SUPPORT OF MOTION TO STAY PENDING DECISION OF UNITED 
STATES SUPREME COURT IN GEORGIA V PUBLIC.RESOURCE.ORG, INC. 

The balance of efficiencies and prejudice weigh strongly in favor of staying this litigation 
pending the Supreme Court’s decision in Public.Resource.Org, Inc.’s (“PRO”) case against 
Georgia. PRO will not suffer any prejudice as a result. 

PRO asserts that “[n]o party to this case can predict with any certainty whether the 
Supreme Court’s [decision] . . . will influence the outcome of this case,” and that Georgia v. 
PRO is “unlikely to affect [this case] significantly.” Opp. at 1-2. But when PRO urged the 
Supreme Court to grant certiorari in the Georgia v. PRO case—notwithstanding the fact that 
PRO won in the Eleventh Circuit—PRO argued that “all parties,” i.e., “all” parties in PRO’S 
various litigation efforts, including this case, “would benefit from [the Supreme] Court’s earliest 
guidance,” see discussion at Mot. at 2 (quoting PRO Br. in Opp. 14 (U.S. No. 18-1150)). PRO’S 


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Case l:13-cv-01215-TSC Document 196 Filed 08/20/19 Page 2 of 5 


merits brief in the Supreme Court is due October 9, 2019. PRO does not deny that it is going to 
use at least part of that brief to swing for the fences, and to ask the Court to declare that any 
standard incorporated by reference loses copyright protection. Likewise, PRO’S own opposition 
brief contends that, for example, the “government edicts doctrine” is “highly important to the fair 
use inquiry.” Opp. at 3. Whether or not Plaintiffs agree (they do not), the point is that PRO is 
going to make the same arguments in both this Court and the Supreme Court and there is simply 
no reason for this Court to guess as to how they will be decided. 1 

Even the case that PRO relies on here, Painters’ Pension Trust Fund of Washington, D.C. 
& Vicinity v. Manganaro Corp., Maryland, 693 F. Supp. 1222 (D.D.C. 1988), makes clear that 
where another pending case “might illuminate or resolve matters also confronting [this] court,” 
equity favors granting a stay. Id. at 1224. PRO’S disingenuous contention that it views Georgia 
v. PRO as “rather different” is inconsistent with its prior statements and barred by judicial 
estoppel. See New Hampshire v. Maine, 532 U.S. 742, 750 (2001) (“judicial estoppel prevents 
parties from ‘playing ‘fast and loose with the courts”” (citation omitted)). 

Plaintiffs will suffer prejudice if this case is not stayed. While Georgia v. PRO does 
involve different factual and legal issues (as Plaintiffs will explain in an amicus brief they intend 
to fde at the Supreme Court), the Supreme Court has not weighed in on these sorts of issues, like 
the government edicts doctrine, for over a hundred years. Plaintiffs may want to accommodate 


1 PRO’S discovery efforts also reveal that it plans to make many of the same arguments it made 
in Georgia v. PRO at the summary judgment stage. For example, just yesterday, PRO took the 
deposition of Mia Marvelli, Executive Director of the California Building Standards Commission 
and asked her a number of questions regarding California’s claim of copyright in the California 
Electric Code. 


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Case l:13-cv-01215-TSC Document 196 Filed 08/20/19 Page 3 of 5 


PRO’S arguments in appeal and the Supreme Court’s ultimate decision in Georgia v. PRO in 
their presentation of facts and law on fair use here. 2 

In contrast, PRO does not stand to suffer prejudice at all. PRO asserts the elusive harm 
of having “to postpone . . . decisions” of “how best to fulfill its mission” while the case is 
pending. Opp. at 1-2. It does not point to anything in particular it has done or would do 
differently if this motion were resolved in its favor (or against it). Indeed, PRO has reposted 
Plaintiffs’ standards to the Internet Archive following remand from the Court of Appeals—it is 
plainly not deferring action until a judgment from this Court. And while PRO attempts to fault 
Plaintiffs for their earlier statements reflecting the ongoing harm they suffer as long as PRO 
engages in its infringing conduct, Opp. at 4, it is completely consistent for Plaintiffs to both be 
outraged and harmed by PRO’S conduct and yet not want to expend the parties’ and judicial 
resources rushing to litigate this matter while the Supreme Court may be about to address the 
scope of the “government edicts government” for the first time in a century. 

Finally, the burden on the Court and parties is real—discovery will close soon, but PRO 
continues to notice third party depositions of government officials, including noticing a 
deposition of the U.S. Department of Labor for September 3rd and of the National Archives and 
Records Administration for September 9th. Summary judgment briefing is no small exercise and 
will occupy the parties from October through December. See Scheduling Order, entered 
5/21/2019). PRO says it will be inefficient if the American Education Research Association, Inc. 


2 PRO once again attempts to resuscitate its challenges to Plaintiffs’ ownership of their 
copyrighted works, suggesting that is an issue for summary judgment, when those issues are now 
foreclosed by law-of-the case. Trout v. Garrett, 780 F. Supp. 1396, 1425 (D.D.C. 1991) (“A 
defendant cannot forego its opportunity to challenge a claim (and thereby deprive the plaintiffs 
of their opportunity to rebut the challenge) only to reopen the issue much later when it might 
choose to do so.”); see also Dkt. 188 (citing cases). 


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Case l:13-cv-01215-TSC Document 196 Filed 08/20/19 Page 4 of 5 


et al. v. Public.Resource.Org, Inc., No. 1:14-cv-00857-TSC-DAR case is not also stayed, but the 
AERA Plaintiffs have not opposed this Motion and the Court has discretion to stay that case too. 

For the foregoing reasons, Plaintiffs respectfully request that this Court grant a stay of 
this action and suspend all deadlines pending the Supreme Court’s decision in Georgia, v. PRO. 


Dated: August 20, 2019 Respectfully submitted, 

/s/ J. Kevin Fee _ 

J. Kevin Fee (D.C. Bar: 494016) 

Jane Wise (D.C. Bar: 1027769) 

Morgan, Lewis & Bockius LLP 
1111 Pennsylvania Ave., N.W. 

Washington, D.C. 20004 
Telephone: 202.739.5353 
Email: kevin.fee@morganlewis.com 
jane.wise@morganlewis.com 

Counsel for American Society For Testing And Materials 
d/b/a/ ASTM International 

/s/ Kelly M. Klaus _ 

Kelly M. Klaus (pro hac vice ) 

Rose Leda. Ehler (pro hac vice) 

Munger, Tolies & Olson LLP 
560 Mission St., 27th Floor 
San Francisco, CA 94105 
Tel: 415.512.4000 
Email: Kelly.Klaus@mto.com 
Rose.Ehler@mto.com 

Rachel G. Miller-Ziegler (D.C. Bar: 229956) 

Munger, Tolies & Olson LLP 
1155 F St. NW, 7th Floor 
Washington, DC 20004 
Tel: 202.220.1100 

Email: Rachel.Miller-Ziegler@mto.com 

Counsel for National Fire Protection Association, Inc. 


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Case l:13-cv-01215-TSC Document 196 Filed 08/20/19 Page 5 of 5 


/s/ J. Blake Cunningham _ 

J. Blake Cunningham 

King & Spalding LLP 

101 Second Street, Ste. 2300 

San Francisco, CA 94105 

Tel: 415.318.1211 

Email: bcunningham@kslaw.com 

Jeffrey S. Bucholtz (D.C. Bar: 452385) 

King & Spalding LLP 

1700 Pennsylvania Avenue, NW, Ste. 200 

Washington, DC 20006-4707 

Tel: 202.737.0500 

Email: jbucholtz@kslaw.com 

Counsel for American Society of Heating, Refrigerating, 
and Air Conditioning Engineers 


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