By Robert Margolis, J.D.
The federal district court in Washington, D.C., has granted summary judgment to several standards developing organizations ("SDOs") on their claims that Public.Resource.org., Inc., infringed their copyrights and trademarks by publicly disseminating standards developed by the SDOs, which were incorporated by reference into federal law. The court granted the SDOs a permanent injunction, barring Public Resource from "distributing, displaying, reproducing, or creating derivative works in the" standards at issue, and from using the SDO’s trademarks in connection with any postings (American Society for Testing and Materials v. Public.Resource.org, Inc., February 2, 2017, Chutkan, T.).
Consolidated decision. The court’s decision addressed motions and cross-motions for summary judgment brought in two separate but related cases brought by SDOs against Public Resource. In one case, 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") (collectively "ASTM Plaintiffs"), sued Public Resource for both Copyright and Trademark infringement, based on Public Resource’s copying and dissemination of 257 standards developed by the ASTM plaintiffs that have been incorporated by reference into federal law. Public Resource admitted that it purchased hard copies of each standard, scanned them into PDFs, added a cover sheet, and posted them online. Public Resource also retyped the plaintiffs’ standards and posted them online. The summary judgment motion related to nine of the allegedly infringed standards.
In the other case, Plaintiffs American Educational Research Association, Inc. ("AERA"), American Psychological Association, Inc. ("APA"), and National Council on Measurement in Education, Inc. ("NCME") (collectively "AERA Plaintiffs") sued Public Resource for copyright infringement based on similar conduct with respect to one set of standards.
SDOs. The ASTM Plaintiffs are not-for-profit organizations that develop private sector codes and standards to "advance public safety, ensure compatibility across products and services, facilitate training, and spur innovation," according to the court. Similarly, the AERA Plaintiffs are not-for-profit organizations that collaboratively develop the Standards for Educational and Psychological Testing. The SDOs developed the standards at issue in the two cases, all of which were incorporated by reference into federal law. The two cases pitted the SDOs against Public Resource, a not-for-profit entity devoted to publicly disseminating legal information, to make it more "widely available."
The SDOs sell hard copies and PDFs of their standards, which they contend are protected original works. The argued that Public Resource violated their copyrights by copying and disseminating their standards.
The court granted both sets of SDOs summary judgment on their copyright infringement claims. Public Resource contended that the standards cannot be copyrighted because: (1) they are non-copyrightable methods or systems; (2) the standards are in the public domain as "the law"; and (3) the merger and scenes a faire doctrines preclude a finding of infringement. The court found each of these arguments to be unconvincing.
Methods, systems. Public Resource’s first argument "appears to rest only on the fact that the names of the ASTM Plaintiffs’ standards, and their descriptions or advertisements, include the words ‘method’ and ‘procedure,’" the court noted, which the court found to be an insufficient basis to hold the standards uncopyrightable. Nor did the court agree that the standards are "dictated by utility" or just "discovered facts," and lack any creative expressive content, as Public Resource had argued.
Public domain. Next, relying on longstanding law that works authored by government officials or employees cannot be copyrighted, Public Resource argued that Plaintiffs’ standards lost their copyright protections the instant they were incorporated by reference into federal regulations. But the court held that the SDO personnel who authored the standards are not government employees or officials, and that Congress has chosen not to revoke copyright protection for standards that have been incorporated by reference into regulations. "[A]ny further consideration of the issue must be left to Congress for amendment," the court held.
Due process. The court also concluded that affording copyright protection for standards incorporated by reference into federal law does not violate individuals’ due process right to access the text of laws. Acknowledging the "valid public policy concern that citizens benefit from greater access to statutes, regulations, and all materials they must reference in fulfilling their legal obligations," the court again noted that the balance was best addressed by Congress, not the court.
Scenes a faire. Public Resource also contended that the standards are not "copyrightable" as scènes à faire, arguing that they are "shaped by external factors," such as the desire to satisfy regulations and laws and to write what Plaintiffs believe to be the most accurate and clear standards. The court found this doctrine to be "a poor fit for Defendant’s arguments," and rejected it.
Copying, fair use. The court also held that Public Resource’s copying and posting of the standards was not protected "fair use." Scanning and converting the standards to PDFs is not "transformative," the court held. In addition, Public Resource copied the standards in their entirety, and harm to the SDOs commercial interests could be inferred, all mitigating against a fair use finding.
The court thus granted the SDOs’ summary judgment motions as to copyright infringement.
Contributory infringement. The AERA Plaintiffs also sought summary judgment on their contributory copyright infringement claim, asserting that Public Resource contributed to the infringement of their copyright by third parties. But the only evidence of third-party infringement that the AERA Plaintiffs presented was that their standards were "accessed" on Public Resource’s website and the Internet Archive. Such access alone is not evidence of the copying necessary for infringement, the court held. It thus denied AERA’s motion as to this claim.
The ASTM Plaintiffsalso were granted summary judgment on their trademark infringement claims, based on Public Resource’s distribution of standards online bearing Plaintiffs’ registered trademarks and logos. The court found an absence of any material issue of fact as to likelihood of confusion, concluding that "the facts here present nearly as black-and-white a case as possible." A consumer seeking one of the ASTM Plaintiffs’ standards may encounter them on their websites for purchase, or on Public Resource’s website for free download, the court noted, the latter of which is a copy that "is meant to appear identical, including use of Plaintiffs’ trademarks."
The court permanently enjoined Public Resource from violating any of the SDOs exclusive copyrights, "including distributing, displaying, reproducing, or creating derivative works in the nine standards on which ASTM Plaintiffs moved for summary judgment and AERA Plaintiffs’ 1999 Standards," and barred Public Resource from using the ASTM Plaintiffs’ trademarks in connection with the posting of these standards online or elsewhere.
The cases are Nos. 13-cv-1215 (TSC) and 14-cv-0857 (TSC).
Attorneys: Nikia L. Gray (Quarles & Brady, LLP) for American Educational Research Association, Inc. and American Psychological Association, Inc. Jordana Sara Rubel (Morgan, Lewis & Bockius LLP) for American Society for Testing and Materials. Andrew Phillip Bridges (Fenwick & West, LLP) for Public.Resource.org, Inc.
Companies: American Society for Testing and Materials; National Fire Protection Association, Inc.; American Society of Heating, Refrigerating, and Air-Conditioning Engineers; American Educational Research Association, Inc.; American Psychological Association, Inc.; National Council on Measurement in Education, Inc.; Public.Resource.org., Inc.
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