IP Law Daily, COPYRIGHT—E.D. Pa.: Technical standards incorporated by reference in government code are fair game for copying, (Oct 3, 2024)

By Matthew Hersh, J.D.

Another court finds that the fair use doctrine applies, even for a commercial entity.

A commercial entity that compiles and makes available to its subscribers the text of privately-developed technical standards that are incorporated by reference into government codes makes a fair use of those standards in doing so, the federal court for Philadelphia has held. The court, in aligning itself with a growing consensus over the application of copyright fair use principles to the copying of such standards, also found that the commercial entity could not be found liable for trademark infringement because it made a nominative fair use of the standard-maker’s name in describing the products it offered to consumers (American Society for Testing and Materials v. UpCodes, Inc., No. 2:24-cv-01895-AB (E.D. Pa. Oct. 2, 2024)).

The lawsuit is one of many that have been brought in recent years by the American Society for Testing and Materials (ASTM), a non-profit formed in 1898 to develop technical standards for various industries, products, and materials. Although many local, state, and federal jurisdictions make use of standards developed by ASTM or other organizations, they sometimes incorporate them by reference instead of reprinted them. As a result, the incorporated standard may be enforced against regulated entities without being included in the text of the law itself. When this happens, a regulated entity will not find the text of the standard that details their legal obligations in the official public code—they will have to look elsewhere, and sometimes for a price.

The ASTM took aim in this case at UpCodes Inc., a for-profit startup that offers an online library of building codes and other standards as enacted into law. Users of UpCodes can view and download a copy of any supported jurisdiction’s laws free of charge. Users can also purchase a subscription to access UpCodes’ premium features, including bookmarking, annotating, and automation tools. UpCodes does not display the ASTM logo when it displays standards that are derived from ASTM, but it does identify ASTM as the original publisher of those standards.

ASTM sued UpCodes for copyright infringement, alleging that it reprinted without permission 10 copyrighted technical standards that had been incorporated by reference into the Philadelphia Building Code. In addition to the copyright infringement claim, the complaint also asserted violations of the Digital Millennium Copyright Act as well as trademark infringement, unfair competition, and false designation of origin.

ASTM moved for a preliminary injunction, leading to this opinion.

Copyright fair use. The court denied the motion for preliminary injunction, finding that the ASTM was not likely to prevail on the merits of its copyright infringement claim. Most importantly, the court found, UpCodes’ use of the technical standards made a transformative use of them under the facts of this case. The central issue, the court found, was that UpCodes was not publishing all of ASTM’s building standards, but rather only the ones that were incorporated into the Philadelphia Building Code by reference. In this manner, the court found, UpCodes achieved “the distinct objective of making the law freely accessible and educating the public on the contents of binding laws.” By way of example, nine of the ten building standards at issue in this case had been updated by ASTM since being incorporated by reference into the code—but UpCodes did not publish those updates. “This is because UpCodes seeks to provide access to standards that have been enacted into law—not to provide access to standards that reflect the latest industry best practices,” the court noted. “Thus, UpCodes’ use serves a distinct purpose from ASTM.”

The other factors also support a finding of fair use, the court found. As to the second factor, the court found, technical standards “generally fall at the factual end of the fact-fiction spectrum, which counsels in favor of finding fair use.” As to the third factor, the court noted, UpCodes of course copied the entirety the standards at issue, “but this amount of copying was plainly reasonable in relation to UpCodes’ objective.” As to the fourth factor, effect on the market, different elements of this factor pointed in different directions. On the one hand, the court noted, UpCodes’ copies were indeed in some ways “an effective substitute” for ASTM’s own codes. On the other hand, the court noted, “the countervailing public benefits of UpCodes’ copying are substantial”—especially given that incorporation by reference “creates serious notice and accountability problems when the law is only accessible to those who can afford to pay for it.” On balance, the court found, the four fair use factors pointed in favor of allowing UpCodes’ use.

Trademark infringement. The court rejected ASTM’s trademark claims as well. The reason here was that UpCodes engaged in a “nominative fair use” when it used ASTM’s name in its published materials. Nominative fair use, the court noted, “is a separate defense that arises when the only practical way to refer to something is to use the trademarked term.” That was the case here, the court found. Just as a car mechanic would be able to advertise that he repairs Volkswagen cars, so too could UpCodes advertise that it displayed ASTM codes. “It is hard to see how the [UpCodes] could fulfill its goal of informing the public about the law without identifying the standard by its name—the very name also used in the incorporating law,” the court said.

In light of the finding of nominative fair use, the court found, ASTM could not show that consumers were likely to be confused. Where nominative fair use is present, the court noted, courts engage in a very limited likelihood-of-confusion analysis, considering only the care and attention expected of consumers, the intent of the user, and actual evidence of confusion. Here, the users of building codes were plainly likely to use care in selecting a product, UpCodes’ intent in using the name of ASTM was simply to inform its customers about what codes it offered and not to confuse them about the product’s source, and there was no evidence of actual confusion in the record. Fair use would therefore defeat the trademark infringement claim as well.

Practitioner comments.Joe Gratz, Copyright, Trademark, and Technology Litigation Partner at Morrison Foerster, who represented UpCodes in this case, told IP Law Daily that this decision as “the latest in a series of rulings in which courts have decided, on a variety of different legal theories, that disseminating the law is not copyright infringement.” The Eastern District of Missouri, Southern District of New York, D.C. Circuit, and other courts have issued similar rulings. Last year, the U.S. Court of Appeals for the D.C. Circuit held that the nonprofit organization Public.Resource.Org made fair use of ASTM’s standard. Gratz pointed out that the Eastern District of Pennsylvania in this decision extends the Public Resource holding to a for-profit company providing free access to documents incorporated into law.

“This ruling reaffirms what the Supreme Court said in the Georgia case: ‘No one can own the law,’” Gratz said. “And that’s true no matter whose idea a law was, or who first wrote it down—no private party has the power to decide who is and isn’t allowed to speak the law.”

The Case is No. 2:24-cv-01895-AB.

Judge: Brody, A.

Attorneys: Gabrielle Velkes (DLA Piper LLP) for American Society for Testing and Materials. Joseph C. Gratz and Aditya V. Kamdar (Morrison & Foerster LLP) for UpCodes, Inc.

Companies: American Society Testing and Materials; UpCodes, Inc.

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