Defendant-Appellant Public.Resource.Org, Inc. (PRO), is a non-profit organization whose self-proclaimed mission is “to make the law and other government materials more widely available.” Malamud Decl. ¶ 4, ASTM, No. 1:13-cv-01215 (D.D.C. Dec. 21, 2015), Dkt. No. 121-5, J.A. 1070. In furtherance of that goal, PRO distributed on the internet technical standards that had been incorporated by reference into law. To do this, PRO purchased copies of incorporated standards, which the SDOs make available for between $25 and $200 per standard, scanned them into digital files, appended cover sheets explaining PRO’s mission and the source of the standards, and then posted the documents to a public website. In some cases, PRO would modify a file so that the text of the standard could more easily be enlarged, searched, and read with text-to-speech software.
Between 2012 and 2014, PRO uploaded hundreds of technical standards, which, collectively, were downloaded tens of thousands of times. In mid-2013, several SDOs, including ASTM, discovered that their standards were freely available on PRO’s website. After PRO refused to take their standards off the internet, ASTM, along with NFPA and ASHRAE (collectively, “ASTM”), sued PRO, asserting claims of copyright and trademark infringement, contributory copyright infringement, unfair competition, and false designation of origin as to nearly 300 technical standards. Around the same time, AERA discovered that the 1999 edition of the Standards for Educational and Psychological Testing was also available on PRO’s website, and so it too filed suit against PRO for copyright infringement and contributory copyright infringement. See Complaint ¶ 1, American Educational Research Ass’n, Inc. v. Public.Resource.Org, Inc., No. 1:14-cv-00857 (D.D.C. May 23, 2014) (“AERA Compl.”), Dkt. No. 1, J.A. 2158.
Both sets of plaintiffs moved for summary judgment in their respective cases: AERA on both its claims as to the 1999 educational standard and ASTM on all of its claims but contributory copyright infringement as to nine standards (ASTM D86-07, ASTM D975-07, ASTM D396-98, ASTM D1217-93(98), the 2011 and 2014 versions of NFPA’s National Electrical Code, and the 2004, 2007, and 2010 versions of ASHRAE’s Standard 90.1). Although there are no obvious connections among these standards—chosen from the hundreds of standards ASTM identified in its complaint—ASTM explained that it selected “this subset of particularly important standards … to streamline the issues.” Pls’ Mem. of Law in Supp. of Mot. for Summ. J. 2, ASTM, No. 1:13-cv-01215 (D.D.C. Nov. 19, 2015), Dkt. No. 118-1. PRO responded with cross-motions for summary judgment, as well as motions to strike two expert reports submitted by the SDOs.
The district court, after denying the motions to strike, issued a joint opinion resolving both cases. Granting summary judgment to the SDOs on their claims of direct copyright infringement, the district court found that they held valid and enforceable copyrights in the incorporated standards that PRO had copied and distributed and that PRO had failed to create a triable issue of fact that its reproduction qualified as “fair use,” 17 U.S.C. § 107, under the Copyright Act. American Society for Testing & Materials v. Public.Resource.org, Inc. (ASTM), No. 1:13-cv-01215 (TSC), 2017 WL 473822, at *18 (D.D.C. Feb. 2, 2017). The court also concluded that ASTM was entitled to summary judgment on its trademark infringement claims because PRO had used copies of ASTM’s marks in commerce in a manner “likely to cause confusion,” 15 U.S.C. § 1114(1), and because PRO’s reproduction of the marks did not qualify as a nominative fair use.
