IP Law Daily, TOP STORY—D.D.C.: Copying, posting industry standards incorporated into law was ‘fair use’, (Apr 1, 2022)

By Thomas Long, J.D.

However, a nonprofit organization infringed copyrights in other privately authored standards that differed substantively from those incorporated into law.

Nonprofit organization Public.Resource.Org (“Public Resource”) engaged in noninfringing fair use when it copied the text of 184 industry standards documents, incorporated them into PDF files, and made the files freely available to the public online, the federal district court in Washington, D.C., has concluded in the latest round of a nearly decade-long battle between the nonprofit and the standards development organizations (SDOs) that produced the original documents. Those 184 standards had either been incorporated by reference into law or were identical in text to standards incorporated by reference into law. The court rejected, however, the copyright fair use defense with respect to 32 standards that differed in substantive ways from those incorporated by reference into law. The court issued a mixed fair use ruling with respect to one standard. The court also determined that Public Resource’s use of the SDOs’ logo trademarks was not protected by the nominative fair use doctrine and it permanently enjoined Public Resource from using the logos. It did not, however, enjoin Public Resource from future reproduction of the 32 standards found to have been infringed, concluding that the SDOs did not establish that they would sustain irreparable harm without injunctive relief (American Society For Testing and Materials v. Public.Resource.Org, Inc., March 31, 2022, Chutkan, T.).

SDOs. The SDO plaintiffs—the American Society for Testing and Materials, National Fire Protection Association, Inc., and American Society of Heating, Refrigerating, and Air-Conditioning Engineers—worked in a public-private partnership to develop private sector codes and standards aimed at advancing public safety, ensuring compatibility across products and services, facilitating training, and spurring innovation. The standards—developed by industry volunteers and association members—included technical works, product specifications, installation methods, methods for manufacturing or testing materials, safety practices, and other best practices or guidelines. Although the standards ordinarily served as voluntary guidelines for self-regulation, federal, state, and local governments had incorporated by reference thousands of them into law. The SDOs sold copies of their work product in both PDF and hard copy form. At issue in this case were 217 separate standards authored by the various SDO plaintiffs.

Public Resource. Public Resource is a not-for-profit entity devoted to disseminating legal information, without charge to the public. Public Resource routinely publishes government-authored materials on its website, including judicial opinions and other official documents. Between 2012 and 2014, Public Resource obtained copies of the standards at issue scanned them into PDF files, added a cover sheet, and posted them online. The posted copies contained the SDOs trademarks.

Copyright and trademark infringement claims. In 2013, the SDOs sued Public Resource for copyright and trademark infringement. In February 2017, the court granted summary judgment in favor of the SDOs and issued a permanent injunction. Public Resource appealed to the D.C. Circuit, which reversed and remanded. The appellate court held that the district court failed to properly apply both the copyright fair use doctrine and the trademark nominative fair use doctrine.

Copyright fair use. On remand, the district court noted that it was undisputed that Public Resource reproduced the 217 standards and posted them online. Public Resource’s sole remaining defense was that it had engaged in fair use. It its fair use analysis, the court distinguished between standards that had and had not been incorporated by reference into law. The court then considered the four Section 107 fair use standards: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

The court considered each of the 217 standards individually in an appendix. The appendix divides the standards into three categories: (1) standards that Public Resource had shown to be incorporated by reference into law; (2) standards that are identical in text to standards incorporated by reference into law; and (3) standards for which Public Resource provided a regulation that incorporated a different substantive version of the standard than the one Public Resource posted.

Purpose and character of the use. Although Public Resources’ copies of the technical standards might, in some cases, serve as a market substitute for the SDOs’ standards, in the court’s view the more pertinent inquiry was whether Public Resource stood to profit from its reproductions. Little if anything in the record indicated that Public Resource profited from copying and posting the standards, and the evidence backed Public Resource’s contention that it distributed the standards to facilitate public debate. The court then turned to the question of whether Public Resource’s use was “transformative”—that is, whether distributing copies of the law for purposes of facilitating public access added “something new” to the works.

Nature of the copyrighted work. With respect to this factor, the court again distinguished “between text that is incorporated by reference into law in a manner akin to copying all of the standard’s text into law, and text that is incorporated into law in a more nuanced way, such that the standard’s text is not an easy substitute for what is incorporated into law.”

Amount of copyrighted work used. The court noted that most of the standards had been incorporated by reference into regulations that did not specify that only certain provisions of the standards were incorporated by reference into law. Nor did the regulations indicate which specific provisions of the standards relate to regulatory compliance, suggesting that “a greater amount of the standard’s text might be fairly reproduced.”

Effect on value or market. Because Public Resource’s use of the standards was noncommercial, the SDOs had the burden of showing that some meaningful harm to the market for their standards was likely. The court noted that the SDOs made copies of many of their standards freely available online in controlled (read-only) “reading rooms.” According to the court, the plaintiff failed to establish that Public Resource’s posting of the standards would reduce the SDOs’ sales or would facilitate for-profit infringement of them by others. The SDOs also failed to present support for the contention that Public Resource’s reproductions would harm the market for derivative works.

The court also noted that several years had passed since an expert witness opined that Public Resource’s activities would harm the market for the original works. “One can reasonably expect that if over the last four years market harm was occurring, or was likely to occur, Plaintiffs could provide economic data and analysis showing that to be the case.” However, no such evidence had been put into the record. Accordingly, this factor supported the fair use defense for each of the 217 standards at issue.

Conclusion on copyright fair use. The court decided that the fair use doctrine did not permit Public Resource to copy, reproduce, or distribute 32 standards that differed in substantive ways from those incorporated by reference into law. However, it could copy, reproduce, or distribute 184 standards in their entirety, and may copy, reproduce, or distribute specified portions of one standard. Accordingly, the court issued a mixed order of summary judgment based on this breakdown.

Trademark—nominative fair use. A nominative fair use applies when a defendant uses a plaintiff’s trademark to identify the plaintiff’s own goods and makes it clear to consumers that the plaintiff, not the defendant, is the source of the trademarked product or service. In the earlier district court decision, the court rejected Public Resource’s nominative fair use defense on the ground that likelihood of confusion had already been established. The D.C. Circuit rejected this reasoning and directed the district court to conduct a more thorough analysis. The court found that use of the SDOs’ word marks was necessary to describe the SDOs’ works; it would be difficult to identify the standards without using their names. However, use of the SDOs’ logos was not necessary for this purpose. Indeed, following remand, Public Resource had removed the logos from its postings (except for one or two which it claimed to have overlooked). Finally, the court determined that disclaimers added to its postings adequately mitigated against the likelihood that consumers would make an association between the SDOs and Public Resource’s posts. The disclaimers clearly indicated that the Public Resource posts were not affiliated with or authorized by the SDOs. Accordingly, the court concluded that inclusion of the word marks was nominative fair use, but not inclusion of the logos.

Permanent injunction. Although the court decided that 32 standards did not qualify for the copyright fair use defense, the court declined to grant the SDOs’ request for a permanent injunction. In particular, the court noted that the SDOs provided “meager” evidence of irreparable harm and the standards could be incorporated into law at a later date. However, the court permanently barred Public Resource from using the SDOs’ logos.

The case is No. 1:13-cv-01215-TSC.

Attorneys: 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; Public.Resource.Org, Inc.

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