Am. Soc'y for Testing & Materials v. Public.Resource.Org, Inc.
| Decision Date | 31 March 2022 |
| Docket Number | Case No. 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 |
Jordana Sara Rubel, Jane W. Wise, Michael Franck Clayton, J. Kevin Fee, Morgan, Lewis & Bockius LLP, Washington, DC, for Plaintiff American Society for Testing and Materials.
Rachel G. Miller-Ziegler, Munger, Tolles & Olson LLP, Washington, DC, Michael Franck Clayton, J. Kevin Fee, Morgan, Lewis & Bockius LLP, Washington, DC, Rose Leda Ehler, Pro Hac Vice, Jonathan H. Blavin, Pro Hac Vice, Kelly Klaus, Pro Hac Vice, Munger, Tolles & Olson LLP, San Francisco, CA, Anjan Choudhury, Munger, Tolles & Olson LLP, Los Angeles, CA, for Plaintiff National Fire Protection Association, Inc.
Antonio E. Lewis, Pro Hac Vice, Jason Blake Cunningham, Pro Hac Vice, King & Spalding LLP, Charlotte, NC, Jeffrey S. Bucholtz, King & Spalding LLP, Washington, DC, Michael Franck Clayton, J. Kevin Fee, Morgan, Lewis & Bockius LLP, Washington, DC, Katherine E. Merk, Pro Hac Vice, Kenneth L. Steinthal, Pro Hac Vice, King & Spalding, LLP, San Francisco, CA, for Plaintiff American Society of Heating, Refrigerating, and Air-Conditioning Engineers, Inc.
Andrew Phillip Bridges, Matthew B. Becker, Pro Hac Vice, Fenwick & West, LLP, Mountain View, CA, Mitchell L. Stoltz, Corynne McSherry, Pro Hac Vice, Electronic Frontier Foundation, San Francisco, CA, Sebastian E. Kaplan, Pro Hac Vice, Fenwick & West LLP, San Francisco, CA, David Elliot Halperin, Washington, DC, for Defendant.
Bonnie Y. Hochman Rothell, Morris, Manning & Martin, LLP, Washington, DC, Gerald W. Griffin, Pro Hac Vice, Carter, Ledyard & Milburn LLP, New York, NY, for Amicus American National Standards Institute, Inc.
Meegan F. Hollywood, Robins Kaplan LLP, New York, NY, for Amicus American Insurance Association.
Jeffrey T. Pearlman, Mills Legal Clinic at Stanford Law School, Stanford, CA, for Amicus Sina Bahram.
Anthony A. Onorato, FisherBroyles LLP, New York, NY, Alan S. Wernick, Pro Hac Vice, Wernick & Associates, Ltd., Northbrook, IL, for Amicus International Code Council, Inc.
Charles Duan, Washington, DC, for Amici Public Knowledge, Knowlege Ecology International, American Library Association.
Catherine R. Gellis, Sausalito, CA, Marcia Clare Hofmann, Zeitgeist Law PC, San Francisco, CA, for Amicus Law Scholars.
Bruce D. Brown, Reporters Committee for Freedom of the Press, Washington, DC, for Amicus Reporters Committee for Freedom of the Press.
TANYA S. CHUTKAN, United States District Judge Plaintiffs are three non-profit organizations that develop and publish industry standards to guide professionals working in a variety of commercial trades. They allege that Defendant, a non-profit organization devoted to publicly disseminating legal information, violated copyright and trademark laws by copying and republishing some of Plaintiffs’ written works onto its website. In 2017, the court granted summary judgment to Plaintiffs on their copyright and trademark claims. In 2018, the D.C. Circuit reversed the court's decision and remanded with instructions to further develop the factual record. The parties have since supplemented the record, each filing new statements of fact and motions for summary judgment that are now pending before the court. For the reasons explained below, the court will GRANT IN PART and DENY IN PART Plaintiffs’ motion for summary judgment and for a permanent injunction, and GRANT IN PART and DENY IN PART Defendant's cross-motion for summary judgment.
In the United States, a complex public-private partnership has developed over the last century in which private industry groups or associations, rather than government agencies, develop standards, guidelines, and procedures that set the best practices in particular industries. Plaintiffs—the American Society for Testing and Materials ("ASTM"), National Fire Protection Association, Inc. ("NFPA"), and American Society of Heating, Refrigerating, and Air-Conditioning Engineers ("ASHRAE")—each participate in such a public-private partnership.1 Each Plaintiff relies on volunteers and association members from numerous sectors with technical expertise to develop private sector codes and standards aimed at advancing public safety, ensuring compatibility across products and services, facilitating training, and spurring innovation. See ECF No. 118-2, Pls.’ Statement of Material Facts ( ) ¶¶ 9, 13, 14, 86, 87, 129, 130. These standards include technical works, product specifications, installation methods, methods for manufacturing or testing materials, safety practices, and other best practices or guidelines. Id. ¶ 1. For example, ASTM has developed over 12,000 standards that are used in a wide range of fields, including consumer products, iron and steel products, rubber, paints, plastics, textiles, medical services and devices, electronics, construction, energy, water, and petroleum products, and are a result of the combined efforts of over 23,000 technical members. Id. ¶¶ 13, 28, 41. NFPA has developed over 300 standards in the areas of fire, electrical, and building safety, including the National Electrical Code, first published in 1897 and most recently in 2020. Id. ¶¶ 86, 87, 92-94. And ASHRAE has published over 100 standards for a variety of construction-related fields, including energy efficiency, indoor air quality, refrigeration, and sustainability. Id. ¶ 130.
The standards Plaintiffs develop comprise the technical expertise of many volunteers and association members from numerous sectors, who develop the standards "using procedures whose breadth of reach and interactive characteristics resemble governmental rulemaking, with adoption requiring an elaborate process of development, reaching a monitored consensus among those responsible within the [standard development organizations]." Peter L. Strauss, Private Standards Organizations and Public Law , 22 Wm. & Mary Bill Rts. J. 497, 501 (2013). ASTM Plaintiffs develop their standards using technical committees with representatives from industry, government, consumers, and technical experts. Pls.’ SMF ¶¶ 7, 28, 29, 109, 114, 135. These committees conduct open proceedings, consider comments and suggestions, provide for appeals, and through subcommittees, draft new standards, which the full committees vote on. Id. ¶¶ 31–37, 109, 136, 139.
The standards ordinarily serve as voluntary guidelines for self-regulation. However, federal, state, and local governments have incorporated by reference thousands of these standards into law. Pursuant to 5 U.S.C. § 552, federal agencies may incorporate voluntary consensus standards—as well as, for example, state regulations, government-authored documents, and product service manuals—into federal regulations by reference. See Emily S. Bremer, Incorporation by Reference in an Open-Government Age , 36 Harv. J.L. & Pub. Pol'y 131, 145–47 (2013) (providing a general overview of the federal government's incorporation of materials by reference). The federal government's practice of incorporating voluntary consensus standards by reference is intended to achieve several goals, including eliminating the cost to the federal government of developing its own standards, encouraging long-term growth for U.S. enterprises, promoting efficiency, competition, and trade, and furthering the reliance on private sector expertise. See ASTM , 2017 WL 473822, at *2-4 (); Am. Soc'y for Testing & Materials v. Public.Resource.Org, Inc. , 896 F.3d 437, 442 (D.C. Cir. 2018) (same).
Plaintiffs recoup the cost of creating their standards the way that copyright owners generally do—they sell copies of their work product in both PDF and hard copy form to the public. See ASTM , 2017 WL 473822, at *4, *10-11 ; Pls.’ SMF ¶¶ 45-47, 106-08, 153-54. Plaintiffs also maintain "reading rooms" on their websites that allow interested parties to view the standards that have been incorporated by reference into law as images. Id. ¶¶ 63–64, 100, 161. Those standards may not, however, be printed or downloaded in that format. Id.
Defendant Public.Resource.Org, Inc. ("PRO") is a not-for-profit organization whose mission is to "make the law and other government materials more widely available so that people, businesses, and organizations can easily read and discuss [the] laws and the operations of government." ECF No. 213-20, Pls.’ Statement of Disputed Facts ( ) ¶ 2. For example, Defendant posts government-authored materials on its website, including judicial opinions, Internal Revenue Service records, patent filings, and safety regulations. Id. ¶¶ 3–4. It does not charge fees to view or download these materials. Id. ¶ 5.
Between 2012 and 2014, Defendant purchased hard copies of each of the standards at issue, scanned them into PDF files, added a cover sheet, and posted them online. ASTM , 896 F.3d at 444. In some instances, Defendant modified the files so that the text of the standards could more easily be enlarged, searched, and read with text-to-speech software. Id. The copies that Defendant posted to its website all bore Plaintiffs’ trademarks. Pls.’ SMF ¶ 210. Defendant also uploaded Plaintiffs’ standards to the Internet Archive, a separate independent website. Pls.’ SDF ¶ 185.
In 2013, Plaintiffs sued Defendant for copyright and trademark infringement, contributory copyright infringement, unfair competition, and false designation of origin as to 257 standards. See ECF No. 1, Compl. ¶¶ 142–195. Defendant counter-sued, seeking a declaratory judgment that its conduct does not violate copyright law or trademark law. See ECF No. 21, Answer ¶¶ 174–205. Plaintiffs moved for summary judgment on all but their contributory copyright infringement claim and limited their motion to nine of the 257 standards, contending that the court's guidance on those nine standards, a ...
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