Cite as 896 F.3d 437 (D.C. Cir. 2018)
undifferentiated view of the incorporated standards, concluded that incorporation by reference had no effect on the works’ copyright and that none of PRO’s copying qualified as fair use.
Were we to conclude, contrary to the district court, that the SDOs do not prevail as a matter of law on either their reading of the scope of copyright or the fair use question, we would have to reverse the grant of summary judgment. Although PRO raises a serious constitutional concern with permitting private ownership of standards essential to understanding legal obligations, we think it best at this juncture to address only the statutory fair use issue—which may provide a full defense to some, if not all, of the SDO’s infringement claims in this case—and leave for another day the question of whether the Constitution permits copyright to persist in works incorporated by reference into law. This approach not only allows us to resolve the appeal within the confines of the Copyright act but is also more faithful to our responsibility to avoid “pass[ing] on questions of constitutionality … unless such adjudication is unavoidable.” Spector Motor Service v. McLaughlin, 323 U.S. 101, 105, 65 S.Ct. 152, 89 L.Ed. 101 (1944). Avoiding the constitutional question is all the more pressing here given that the record reveals so little about the nature of any given incorporation or what a constitutional ruling would mean for any particular standard. After all, it is one thing to declare that “the law” cannot be copyrighted but wholly another to determine whether any one of these incorporated standards—from the legally binding prerequisite to a labeling requirement, see 42 U.S.C. § 17021(b)(1), to the purely discretionary reference procedure, see 40 C.F.R. § 86.113-04(a)(1)—actually constitutes “the law.”
Our narrower approach, focusing on fair use, has two additional virtues. First, it limits the economic consequences that might result from the SDOs losing copyright—which they repeatedly emphasize would jeopardize the continued development of high-quality standards, see ASTM Br. 6–8, 22, AERA Br. 6, 13—by allowing copying only where it serves a public end rather than permitting competitors to merely sell duplicates at a lower cost. Second, it avoids creating a number of sui generis caveats to copyright law for incorporated standards. For instance, we need not determine what happens when a regulation or statute is revised to incorporate newer versions of a particular standard. Do the older, now unincorporated versions regain the copyright they might have lost with the initial incorporation? Likewise, we need not resolve what happens when only part of a standard is incorporated by reference into law. Although copyright law speaks of “works,” see 17 U.S.C. § 102 (“Copyright protection subsists … in original works ….” (emphasis added)), does a partial incorporation cause the entire work to lose copyright or just the relevant portions?
To be sure, it may later turn out that PRO and others use incorporated standards in a manner not encompassed by the fair use doctrine, thereby again raising the question of whether the authors of such works can maintain their copyright at all. In our view, however, we ought exhaust all remaining statutory options and only return to that question, if we must, on a fuller record. See Communist Party of U.S. v. Subversive Activities Control Board, 351 U.S, 115, 122–25, 76 S.Ct. 663, 100 L.Ed. 1008 (1956) (remanding case raising constitutional challenges to a federal statute for failure to consider certain “new evidence” because the “non-constitutional issue must be met at the outset” and “the case must be decided on a non-constitutional issue, if the record calls for it, without reaching constitutional problems,”
