Cite as 896 F.3d 437 (D.C. Cir. 2018)
court’s inference cannot be sustained on the basis of undisputed evidence in the summary judgment record. That said, the SDOs are right to suggest that there may be some adverse impact on the market for the copyrighted works PRO reproduced on its website. But it remains unclear from this record just how serious that impact is.
In our view, when developing a fuller record on this issue on remand, the district court should consider at least three questions. First, the SDOs, by their own admission, make copies of their standards freely available online in controlled reading rooms. See ASTM Br. 8. Because the SDOs presumably do so without entirely cannibalizing sales of their standards, just how much additional harm does PRO’s reproduction cause to the market for these standards? Second, it appears that PRO generally reproduces entire standards. As we have explained, such wholesale copying may be unjustified if a law incorporated by reference only a few select provisions of a much longer standard. In such circumstances, if PRO were to reproduce only the incorporated provisions, would there still be a vibrant market for the standards in their entirety? And third, it is entirely unclear what consequences PRO’s reproduction has one the market for derivate works. It appears that the SDOs routinely update these standards and that, in many cases, the edition PRO posts to the internet—and, indeed, the one incorporated into the law—is long outdated. Is PRO’s posting of outdated standards harming the market for updated, unincorporated editions of the standards? If, as the SDOs assert, the primary purpose in developing technical standards is “to have them used by private industry and other non-governmental users to address technical issues or problems,” ASTM Br. 4, there is at least some reason to think that the market demand for the most up-to-date standards would be resilient. Along these lines, can the SDOs continue to make money on derivative goods such that they have an adequate incentive to continue producing these standards? As one amici notes, even after a sister circuit ruled that an organization that drafted a model building code adopted into law lost its copyright, see Veeck v. Southern Building Code Congress International, Inc., 293 F.3d 791 (5th Cir. 2002), its successor organization remains profitable both through sales of codes and of “program services, including consulting, certification, and training.” 66 Libraries Amicus Br. 22 (citing Int’l Code Council, Annual Report 52 (2015)). In remanding these questions, we decline PRO’s passing request to reverse the district court’s admission of expert testimony on economic harm, as we see no abuse of discretion in the district court’s careful consideration of the relevant factors. See Kumho Tire Co. v. Carmichael, 526 U.S. 137, 152, 119 S.Ct. 1167, 143 L.Ed.2d 238 (1999) (directing courts of appeals to apply an abuse-of-discretion standard when reviewing admission of expert testimony).
Considering the four fair use factors together, then, we find that the novel and complex issues raised by this case resolve in a manner entirely ordinary for our court: reviewing the record afresh, as our standard of review requires, we conclude—unlike the district court—that, as to the fair use defense, genuine issues of material fact preclude summary judgment for either party. To be sure, as we have explained, a proper accounting of the variation among these incorporated standards and of the fact that several are essential to understanding one’s legal obligations suggests that, in many cases, it may be fair use for PRO to reproduce part or all of a technical standard in order to inform the public about the law. In the end, however, whether PRO’s use as to each standard at issue in this appeal qualifies as a fair use remains for the district court to determine. Rodriguez v. Penrod, 857 F.3d 902, 906
