Am. Soc'y for Testing & Materials v. Public.Res.Org

• Decision Date: 31 March 2022
• Docket Number: 13-cv-1215 (TSC)
• Parties: AMERICAN SOCIETY FOR TESTING AND MATERIALS, et al., Plaintiffs, v. PUBLIC.RESOURCE.ORG, INC., Defendant.
• Court: U.S. District Court — District of Columbia

AMERICAN SOCIETY FOR TESTING AND MATERIALS, et al., Plaintiffs,
v.
PUBLIC.RESOURCE.ORG, INC., Defendant.

No. 13-cv-1215 (TSC)

United States District Court, District of Columbia

March 31, 2022

APPENDIX

TANYA S. CHUTKAN United States District Judge

I. Group 1: Standards That Have Been Incorporated by Reference into Law.

1. ASTM D2036 (1998):

o Defendant identifies 40 C.F.R. § 136.3(a), Table IB (2003) as the incorporating by reference regulation. See Becker Decl. ¶ 57, Ex. 90 at 50. Section 136.3(a) states that the “full text of the referenced test procedures are incorporated by reference” into Table IB. 40 C.F.R. § 136.3(a). Table IB references ASTM D2036 (1998) (A) and (B), an apparent reference to Test Methods A and B, set forth in the standard. See ECF No. 199-4, Exhibit 149 Part 2 to Declaration of Jane W. Wise at 250-68. Table IB does not reference portions of the standard describing Test Methods C or D. Accordingly, the standard’s text pertaining to Test Methods C and D have not been incorporated by reference into law. Moreover, it does not appear that the text of those portions-Test Methods C and D-are relevant for regulatory compliance. The standard also includes background sections defining the standard’s scope, referenced documents, terminology, significance and use, purity of reagents, and sampling, as well as an appendix, none of which are explicitly incorporated into law. See id.

o First Factor: There is no indication that Defendant stands to profit from republishing this standard; Defendant’s apparent purpose is to inform the public about the law and facilitate public debate. See ASTM, 896 F.3d at 449; Def’s 2d Mot. at 16. Defendant’s “attempt to freely distribute standards incorporated by reference into law qualifie[s] as a use that further[s] the purposes of the fair use defense.” ASTM, 896 F.3d at 449. Further, the incorporated standard provides information essential for a private entity to comprehend its legal duties regarding Test Methods A and B, which weighs heavily in favor of permitting Defendant’s reproduction. See ASTM, 896 F.3d at 450.

o Second Factor: The “express text of the law falls plainly outside the realm of copyright protection.” ASTM, 896 F.3d at 451. Here, the standard is incorporated into law only

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With regard to the text of Test Methods A and B, and not With regard to Test Methods C and D, or the standard’s general provisions pertaining to the standard’s scope, referenced documents, terminology, significance and use, purity of reagents, and sampling, as well as an appendix. Because only portions of the standard are incorporated into law, Defendant’s wholesale reproduction is “harder to justify.” Id.

o Third Factor: The incorporating regulation specifies that only specific portions of the standard are incorporated by reference into law. While that incorporation justifies posting the specific text of those provisions-the text of Test Methods A and B-it does not justify posting the entire standard. Id.

o Fourth Factor: Defendant’s reproductions have not had a “substantially adverse impact on the potential market for the originals,” nor have Plaintiffs shown by a preponderance of the evidence that there is a meaningful likelihood of future harm.” Memo Op. at 30– 36 (internal quotation and citation marks omitted).

o Conclusion: Defendant may fairly reproduce the text of Test Methods A and B, but may not fairly reproduce the standard’s remaining portions absent some change in the incorporating language.

2. ASHRAE 90.1 (2004):

o Defendant identifies 10 C.F.R. § 433.3 (2013) as the incorporating by reference regulation, see Becker Decl. ¶ 57, Ex. 89, which incorporates the standard into §§ 433.2, 433.4, 433.5. Section 433.4 requires that all federal agencies shall design new Federal buildings that are commercial and multi-family high-rise residential buildings, for which design for construction began on or after January 3, 2007, but before August 10, 2012, to . . . “[m]eet ASHRAE 90.1–2004.” 10 C.F.R. § 433.4(a)(1)(i). Section 433.5 requires federal agencies in certain circumstances “to determine energy consumption levels for both the ASHRAE Baseline Building 2004 and proposed building by using the Performance Rating Method found in appendix G of ASHRAE 90.1–2004.” Id. § 433.5(a)(1). An “ASHRAE Baseline Building 2004” is defined as “a building that is otherwise identical to the proposed building but is designed to meet, but not exceed, the energy efficiency specifications in” ASHRAE 90.1–2004. Id. § 433.2.

o First Factor: There is no indication that Defendant stands to profit from republishing this standard; Defendant’s apparent purpose is to inform the public about the law and facilitate public debate. See ASTM, 896 F.3d at 449; Def’s 2d Mot. at 16. Defendant’s “attempt to freely distribute standards incorporated by reference into law qualifie[s] as a use that further[s] the purposes of the fair use defense.” ASTM, 896 F.3d at 449. With regard to transformative use, the regulation does not incorporate the standard in a manner that requires a private entity to comprehend the standard to comply with its legal duties. Rather, the applicable regulation pertains only to federal agencies. Allowing public access to ASHRAE 90.1 (2010) facilitates public debate on certain energy efficiency requirements imposed on federal buildings. See Id. at 451.

o Second Factor: The “express text of the law falls plainly outside the realm of copyright protection.” ASTM, 896 F.3d at 451. Here, the standard is incorporated into law without limitation such that “the consequence of the incorporation by reference is

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virtually indistinguishable from a situation in which the standard had been expressly copied into law.” Id. at 452. Accordingly, “this factor weighs heavily in favor of fair use.” Id.

o Third Factor: The incorporating regulation does not specify that only certain provisions of this standard are incorporated by reference into law, nor does it indicate which specific provisions of the standard are relevant for regulatory compliance, suggesting that “a greater amount of the standard’s text might be fairly reproduced.” Id.

o Fourth Factor: Defendant’s reproductions have not had a “substantially adverse impact on the potential market for the originals,” nor have Plaintiffs shown by a preponderance of the evidence that there is a meaningful likelihood of future harm.” Memo Op. at 30– 36 (internal quotation and citation marks omitted).

o Conclusion: Defendant may fairly reproduce this incorporated standard in its entirety.

3. ASHRAE 90.1 (2007):

o Defendant identifies 10 C.F.R. § 433.3 (2013) as the incorporating by reference regulation, see Becker Decl. ¶ 57, Ex. 89, which incorporates the standard into §§ 433.2, 433.4, 433.5. Section 433.4 requires that all federal agencies shall design new Federal buildings that are commercial and multi-family high-rise residential buildings, for which design for construction began on or after January 3, 2007, but before August 10, 2012, to . . . “[m]eet ASHRAE 90.1–2004.” 10 C.F.R. § 433.4(a)(1)(ii). Section 433.5 requires federal agencies in certain circumstances “to determine energy consumption levels for both the ASHRAE Baseline Building 2007 and proposed building by using the Performance Rating Method found in appendix G of ASHRAE 90.1–2007.” Id. § 433.5(a)(2). An “ASHRAE Baseline Building 2007” is defined as “a building that is otherwise identical to the proposed building but is designed to meet, but not exceed, the energy efficiency specifications in” ASHRAE 90.1–2007. Id. § 433.2.

o First Factor: There is no indication that Defendant stands to profit from republishing this standard; Defendant’s apparent purpose is to inform the public about the law and facilitate public debate. See ASTM, 896 F.3d at 449; Def’s 2d Mot. at 16. Defendant’s “attempt to freely distribute standards incorporated by reference into law qualifie[s] as a use that further[s] the purposes of the fair use defense.” ASTM, 896 F.3d at 449. With regard to transformative use, the regulation does not incorporate the standard in a manner that requires a private entity to comprehend the standard to comply with its legal duties. Rather, the applicable regulation pertains only to federal agencies. Allowing public access to ASHRAE 90.1 (2010) facilitates public debate on the virtues of certain energy efficiency requirements imposed on federal buildings. See Id. at 451.

o Second Factor: The “express text of the law falls plainly outside the realm of copyright protection.” ASTM, 896 F.3d at 451. Here, the standard is incorporated into law without limitation such that “the consequence of the incorporation by reference is virtually indistinguishable from a situation in which the standard had been expressly copied into law.” Id. at 452. Accordingly, “this factor weighs heavily in favor of fair use.” Id.

o Third Factor: The incorporating regulation does not specify that only certain provisions

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of this standard are incorporated by reference into law, nor does it indicate which specific provisions of the standard are relevant for regulatory compliance, suggesting that “a greater amount of the standard’s text might be fairly reproduced.” Id.

o Fourth Factor: Defendant’s reproductions have not had a “substantially adverse impact on the potential market for the originals,” nor have Plaintiffs shown by a preponderance of the evidence that there is a meaningful likelihood of future harm.” Memo Op. at 30– 36 (internal quotation and citation marks omitted).

o Conclusion: Defendant may fairly reproduce this incorporated standard in its entirety.

4. ASHRAE 90.1 (2010):

o Defendant identifies 24 C.F.R. § 905.110 (2015) as the incorporating by reference regulation, see Becker Decl. ¶ 57, Ex. 89, which incorporates the standard into §§ 905.200(b) and 905.312(b). Section 905.200 provides that “[a]ctivities...