least some standards. See, e.g., Declaration of Thomas O’Brien, Jr. and Exhibits ex. 18, ASTM, No. 13-cv-1215 (TSC) (D.D.C. Nov. 19, 2015), Dkt. No. 118-7, J.A. 345 (disclaiming, among other things, that PRO “has transformed this specification into [HTML],” that “[a]ny errors in the transformation of th[e] specification should be reported to [PRO],” and that PRO “is not affiliated in any way with any of the organizations named herein”).
As with the copyright fair use issue, it remains for the district court to consider in the first instance whether PRO’s use of ASTM’s marks constitutes trademark infringement in light of the nominative fair use factors. And even if the district court ultimately concludes that the record supports an infringement finding, it should consider whether its previous grant of an injunction barring all unauthorized use is still warranted or whether it “may order defendants to modify their use of the mark so that all three factors are satisfied” and a narrower remedy would suffice. Toyota Motor Sales, U.S.A, Inc. v. Tabari, 610 F.3d 1171, 1176 (9th Cir. 2010).
IV.
For the foregoing reasons, we vacate the permanent injunctions, reverse the district court’s partial grant of summary judgment against PRO, and remand for further proceedings consistent with this opinion.
So ordered.
Katsas, Circuit Judge, concurring:
The plaintiffs here claim a copyright over binding legal texts, which would enable them to prevent anyone from gaining access to that law or copying it for the public. See 17 U.S.C. § 106. Moreover, saying what that law is, without plaintiffs’ permission, would expose an individual to injunctive relief, impoundment, damages, attorneys’ fees, and potentially even criminal liability. See id. §§ 502–506. As a matter of common-sense, this cannot be right: access to the law cannot be conditioned on the consent of a private party, just as it cannot be conditioned on the ability to read fine print posted on high walls. See Suetonius, Gaius Caligula ¶ XLI, in The Lives of the Caesars (J.C. Rolfe trans. Macmillan Co. 1914) (“he … had the law posted up, but in a very narrow place and in excessively small letters, to prevent the making of a copy”).
Not surprisingly, precedent confirms this instinct. In Banks v. Manchester, 128 U.S. 244, 9 S.Ct. 36, 32 L.Ed. 425 (1888), the Supreme Court held that judges cannot copyright their opinions, in part because their work “constitutes the authentic expression and interpretation of the law, which, binding every citizen, is free for publication to all.” Id. at 253, 9 S.Ct. 36. Moreover, two courts of appeals have confirmed that Banks remains good law under the modern Copyright Act of 1976. In Building Officials & Code Administrators v. Code Technology, Inc., 628 F.2d 730 (1st Cir. 1980), the First Circuit vacated a preliminary injunction that would have enforced the copyright of a model building code as enacted into Massachusetts law. While not definitively deciding the question, the court reasoned that enforcement of the copyright could not be “squared with the right of the public to know the law to which it is subject.” Id. at 735. Similarly, in Veeck v. Southern Building Code Congress International, 293 F.3d 791 (5th Cir. 2002) (en banc), the Fifth Circuit held that “as law,” model rules adopted by a legislative body “enter the public domain nd are not subject to the copyright holder’s exclusive prerogatives.” Id. at 793.
Today, the Banks rule might rest on at least four possible grounds: the First Amendment; the Due Process Clause of the Fifth Amendment; Section 102(b) of the Copyright Act, which denies copyright
