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`Case No. 13-cv-1215 (TSC)
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`Case No. 14-cv-0857 (TSC)
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`PUBLIC.RESOURCE.ORG, INC.,
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`
`Defendant.
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`AMERICAN EDUCATIONAL
`RESEARCH ASSOCIATION, INC. et al.,
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`Plaintiffs,
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`PUBLIC.RESOURCE.ORG, INC.,
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`v.
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`Defendant.
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`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 1 of 55
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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLUMBIA
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`
`
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`AMERICAN SOCIETY FOR TESTING
`AND MATERIALS, et al.,
`
`
`Plaintiffs,
`
`
`v.
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`
`MEMORANDUM OPINION
`
`Before the court are motions and cross-motions for summary judgment in two related
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`cases. Because there is significant factual and legal overlap between the two cases, the court
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`issues this consolidated opinion to be filed in both cases.
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`Plaintiffs American Society for Testing and Materials (“ASTM”), National Fire
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`Protection Association, Inc. (“NFPA”), and American Society of Heating, Refrigerating, and
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`Air-Conditioning Engineers (“ASHRAE”) (collectively “ASTM Plaintiffs”) brought suit against
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`Defendant Public.Resource.org, Inc. (“Public Resource”) under the Copyright Act (17 U.S.C.
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`§ 101 et seq.) and the Lanham Act (15 U.S.C. § 1051 et seq.), alleging copyright infringement
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`and trademark infringement. Plaintiffs American Educational Research Association, Inc.
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`
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`1
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`

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`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 2 of 55
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`(“AERA”), American Psychological Association, Inc. (“APA”), and National Council on
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`Measurement in Education, Inc. (“NCME”) (collectively “AERA Plaintiffs”) also brought
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`copyright infringement claims against Public Resource under the Copyright Act. Plaintiffs1 in
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`both cases seek permanent injunctions barring Defendant from continued display of their works.
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`Plaintiffs moved for summary judgment, and Defendant filed cross-motions for summary
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`judgment in both cases. The court held a combined oral argument on September 12, 2016 to
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`consider the motions. Upon consideration of the parties’ filings, the numerous amicus briefs,
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`and the arguments presented at the motions hearing, and for the reasons stated herein, the ASTM
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`Plaintiffs’ motion for summary judgment is GRANTED and Defendant’s cross-motion is
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`DENIED. The AERA Plaintiffs’ motion for summary judgment is GRANTED IN PART AND
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`DENIED IN PART, and Defendant’s cross-motion is DENIED.
`
`I.
`
`FACTUAL BACKGROUND
`
`A. The Parties
`
`1. ASTM Plaintiffs
`
`ASTM Plaintiffs are not-for-profit organizations that develop private sector codes and
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`standards in order to advance public safety, ensure compatibility across products and services,
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`facilitate training, and spur innovation. (See ASTM Pls. Statement of Material Facts (“PSMF”)
`
`¶¶ 9, 13, 14, 86, 87, 129, 130 (ASTM ECF No. 118-2)).2 These standards include technical
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`works, product specifications, installation methods, methods for manufacturing or testing
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`materials, safety practices, and other best practices or guidelines. (Id. ¶ 1). ASTM has
`
`
`1 For simplicity, the court’s use of “Plaintiffs” refers collectively to the ASTM Plaintiffs and
`AERA Plaintiffs.
`2 All initial citations to the record in this Opinion will include the docket number as “ASTM
`ECF” or “AERA ECF.”
`
`
`
`2
`
`

`

`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 3 of 55
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`developed over 12,000 standards that are used in a wide range of fields, including consumer
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`products, iron and steel products, rubber, paints, plastics, textiles, medical services and devices,
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`electronics, construction, energy, water, and petroleum products, and are the combined efforts of
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`over 23,000 technical members, representing producers, users, consumers, government, and
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`academia. (Id. ¶¶ 13, 28, 41). NFPA has developed over 300 standards in the areas of fire,
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`electrical, and building safety, with the goal of reducing the risk of death, injury, and property
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`and economic loss due to fire, electrical, and related hazards. (Id. ¶¶ 86, 87, 92). NFPA’s most
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`well-known standard is the National Electrical Code, first published in 1897 and most recently in
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`2014. (Id. ¶¶ 93–94). Finally, ASHRAE has published over 100 standards for a variety of
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`construction-related fields, including energy efficiency, indoor air quality, refrigeration, and
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`sustainability. (Id. ¶ 130).
`
`2. AERA Plaintiffs
`
`AERA Plaintiffs are not-for-profit organizations that collaboratively develop the
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`Standards for Educational and Psychological Testing, including the 1999 edition at issue in this
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`case (“the 1999 Standards”). (AERA PSMF ¶¶ 1, 5, 13 (AERA ECF No. 60-2)). AERA is a
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`national scientific society whose mission is “to advance knowledge about education, to
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`encourage scholarly inquiry related to education, and to promote the use of research to improve
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`education.” (Id. ¶ 2). APA is the world’s largest association of psychologists, and its mission is
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`“to advance the creation, communication, and application of psychological knowledge.” (Id.
`
`¶ 3). Finally, NCME is a professional organization “for individuals involved in assessment,
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`evaluation, testing, and other aspects of educational measurement.” (Id. ¶ 4).
`
`3.
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`Public Resource
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`Defendant Public Resource is a not-for-profit entity devoted to publicly disseminating
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`
`
`3
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`

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`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 4 of 55
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`legal information. (ASTM DSMF ¶¶ 1–2 (ASTM ECF No. 120-3); AERA DSMF ¶¶ 1–2
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`(AERA ECF No. 68-3)). Its mission is “make the law and other government materials more
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`widely available so that people, businesses, and organizations can easily read and discuss [the]
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`laws and the operations of government.” (ASTM DSMF ¶ 2; AERA DSMF ¶ 2). Public
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`Resource has posted government-authored materials on its website, including judicial opinions,
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`Internal Revenue Service records, patent filings, and safety regulations. (ASTM DSMF ¶¶ 3–4;
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`AERA DSMF ¶¶ 3–4). It does not charge fees to view or download the materials on its website.
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`(ASTM DSMF ¶ 5; AERA DSMF ¶ 5).
`
`B.
`
`Incorporation by Reference of Industry Standards
`
`In the United States, a complex public-private partnership has developed over the last
`
`century in which private industry groups or associations, rather than government agencies,
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`typically develop standards, guidelines, and procedures that set the best practices in a particular
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`industry.3 Applicable standards are used by entities and individuals in order to self-regulate and
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`conform to the best practices of that industry. Professor Peter Strauss has noted that
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`“manufacturing and markets are greatly aided, and consumers offered protection, by the
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`application of uniform industrial standards created independent of law, as means of assuring
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`quality, compatibility, and other highly desired market characteristics.” Peter L. Strauss, Private
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`Standards Organizations and Public Law, 22 Wm. & Mary Bill Rts. J. 497, 499 (2013).
`
`
`3 See U.S. Office of Management and Budget, Revised Circular No. A-119,
`https://obamawhitehouse.archives.gov/sites/default/files/omb/inforeg/revised_circular_a-
`119_as_of_1_22.pdf (“OMB Revised Circular”) at 1 (Jan. 27, 2016) (“The vibrancy and
`effectiveness of the U.S. standards system in enabling innovation depends on continued private
`sector leadership and engagement. Our approach—reliance on private sector leadership,
`supplemented by Federal government contributions to discrete standardization processes as
`outlined in OMB Circular A-119—remains the primary strategy for government engagement in
`standards development.”).
`
`
`
`4
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`

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`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 5 of 55
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`Standards are typically developed by standards developing organizations (“SDOs”), like
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`Plaintiffs, who work to develop “voluntary consensus standards,” such as those here. Voluntary
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`consensus standards are the ultimate product of many volunteers and association members from
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`numerous sectors bringing together technical expertise. They are “developed using procedures
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`whose breadth of reach and interactive characteristics resemble governmental rulemaking, with
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`adoption requiring an elaborate process of development, reaching a monitored consensus among
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`those responsible within the SDO.” Id. at 501. ASTM Plaintiffs develop their standards using
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`technical committees with representatives from industry, government, consumers, and technical
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`experts. (ASTM PSMF ¶¶ 7, 28, 29, 109, 114, 135). These committees conduct open
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`proceedings, consider comments and suggestions, and provide for appeals, and through
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`subcommittees, draft new standards, which the full committees vote on. (Id. ¶¶ 31–37, 109, 136,
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`139). The AERA Plaintiffs developed the 1999 Standards through a Joint Committee which
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`considered input from the public in a notice-and-comment process. (AERA PSMF ¶¶ 13–16).
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`Pursuant to 5 U.S.C. § 552, federal agencies may incorporate voluntary consensus
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`standards—as well as, for example, state regulations, government-authored documents, and
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`product service manuals—into federal regulations by reference. See Emily S. Bremer,
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`Incorporation by Reference in an Open-Government Age, 36 Harv. J.L. & Pub. Pol’y 131, 145–
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`47 (2013) (providing a general overview of the federal government’s incorporation of materials
`
`by reference). The federal government’s practice of incorporation by reference of voluntary
`
`consensus standards is intended to achieve several goals, including eliminating the cost to the
`
`federal government of developing its own standards, encouraging long-term growth for U.S.
`
`enterprises, promoting efficiency, competition, and trade, and furthering the reliance upon
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`private sector expertise. See OMB Revised Circular, supra, at 14.
`
`
`
`5
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`

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`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 6 of 55
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`Section 552(a)(1) provides that “a person may not in any manner be required to resort to,
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`or be adversely affected by, a matter required to be published in the Federal Register and not so
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`published[, but] . . . matter reasonably available to the class of persons affected thereby is
`
`deemed published in the Federal Register when incorporated by reference therein with the
`
`approval of the Director of the Federal Register.” 5 U.S.C. § 552(a)(1) (emphasis added). The
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`Office of the Federal Register (“OFR”) adopted regulations pursuant to § 552(a)(1) in 1982 and
`
`issued revised regulations in 2014. See Approval Procedures for Incorporation by Reference, 47
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`Fed. Reg. 34,107 (Aug. 6, 1982) (codified at 1 C.F.R. § 51.1 et seq.); 79 Fed. Reg. 66,267 (Nov.
`
`7, 2014). These regulations specify that a “publication is eligible for incorporation by reference”
`
`if it is “published data, criteria, standards, specifications, techniques, illustrations, or similar
`
`material; and [d]oes not detract from the usefulness of the Federal Register publication system.”
`
`1 C.F.R. § 51.7(a)(2). To determine whether the material is “reasonably available” as required
`
`by the statute, OFR will consider “[t]he completeness and ease of handling of the publication”
`
`and “[w]hether it is bound, numbered, and organized, as applicable.” Id. § 51.7(a)(3). All the
`
`standards at issue in this case have been incorporated by reference into federal law. (ASTM
`
`DSMF ¶ 22; 34 C.F.R. § 668.146 (incorporating AERA Plaintiffs’ 1999 Standards).
`
`Standards that are incorporated by reference are available in person at the OFR in
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`Washington, DC and/or with the incorporating agency. See 1 C.F.R. § 51.3(b)(4). Federal
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`regulations that incorporate standards by reference typically direct interested individuals or
`
`entities to location(s) where they may view the incorporated documents in person. For example,
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`the Environmental Protection Agency’s (“EPA”) regulation, 40 C.F.R. § 60.17(a), which
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`incorporates numerous standards at issue here, states that:
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`Certain material is incorporated by reference into this part with the approval of the
`Director of the Federal Register under 5 U.S.C. § 552(a) and 1 CFR part 51. . . .
`
`
`
`6
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`

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`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 7 of 55
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`All approved material is available for inspection at the EPA Docket Center, Public
`Reading Room, EPA WJC West, Room 3334, 1301 Constitution Ave. NW,
`Washington, DC, telephone number 202-566-1744, and is available from the
`sources listed below. It is also available for inspection at the National Archives and
`Records Administration (NARA). For information on the availability of this
`material at NARA, call (202) 741-6030 or go to http://www.archives.gov/
`federal_register/code_of_federal_regulations/ibr_locations.html.
`
`The EPA regulation further specifies that, for example, the 206 ASTM standards incorporated by
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`reference by the EPA (some of which are involved in this suit) are “available for purchase from
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`ASTM International, 100 Barr Harbor Drive, P.O. Box CB700, West Conshohocken,
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`Pennsylvania 19428-2959, (800) 262-1373, http://www.astm.org.” 40 C.F.R. § 60.17(h). The
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`U.S. Department of Education incorporated the AERA Plaintiffs’ 1999 Standards by reference at
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`34 C.F.R. § 668.146(b)(6), which states that the standards are:
`
`on file at the Department of Education, Federal Student Aid, room 113E2, 830 First
`Street, NE, Washington, DC 20002, phone (202) 377-4026, and at the National
`Archives and Records Administration (NARA). For information on the availability
`of this material at NARA, call 1-866-272-6272, or to go: http://www.archives.gov/
`federal-register/code-of-federal-regulations/ibr-locations.html. The document may
`also be obtained from the American Educational Research Association.
`
`ASTM Plaintiffs sell PDF and hard copy versions of their standards, including those that
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`have been incorporated by reference into law. (ASTM PSMF ¶¶ 57, 99, 157). The prices for the
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`standards in this case range from $25 to $200. (Id. ¶¶ 58, 99, 158). The ASTM Plaintiffs also
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`maintain “reading rooms” on their websites that allow interested parties to view Plaintiffs’
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`standards that have been incorporated by reference. (Id. ¶¶ 63–64, 100, 161). The standards in
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`these reading rooms are “read-only,” meaning they appear as images that may not be printed or
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`downloaded. (Id.). AERA Plaintiffs sell hardcopy versions of the 1999 Standards, but do not
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`sell digital or PDF versions. (AERA PSMF ¶¶ 30, 33). The prices for the 1999 Standards have
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`ranged from $25.95 to $49.95 per copy, and they were sold continuously from 2000 through
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`2014, except for a nearly two-year period. (Id. ¶¶ 34–35).
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`
`
`7
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`

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`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 8 of 55
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`C. Plaintiffs’ Claims in This Action
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`1. ASTM et al. v. Public Resource
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`This case involves 257 of ASTM Plaintiffs’ standards that have been incorporated by
`
`reference into federal law. (See ASTM Compl. Ex. A–C; ASTM DSMF ¶ 22). Defendant
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`admits that it purchased hard copies of each of the standards at issue, scanned them into PDF
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`files, added a cover sheet, and posted them online. (ASTM DSMF ¶¶ 173–74, 177–78; ASTM
`
`PSMF ¶¶ 182–87). Defendant re-typed some of ASTM Plaintiffs’ standards and posted them
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`online, with text in Hypertext Markup Language (HTML) format and graphics and figures in
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`Mathematics Markup Language and Scalable Vector Graphics formats. (ASTM DSMF ¶¶ 83,
`
`175). The copies posted on Defendant’s website all bore ASTM Plaintiffs’ trademarks. (ASTM
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`PSMF ¶ 210). Defendant also uploaded the ASTM Plaintiffs’ standards to the Internet Archive,
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`a separate independent website. (Id. ¶ 185).
`
`The ASTM Plaintiffs allege that their standards are original works protected from
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`copyright infringement, and brought claims of copyright infringement, contributory copyright
`
`infringement, trademark infringement, unfair competition and false designation, and trademark
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`infringement under common law. (ASTM Compl. ¶¶ 142–95). Defendant counter-sued, seeking
`
`a declaratory judgment that its conduct does not violate copyright law or trademark law. (ASTM
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`Ans. ¶¶ 174–205). Both sides have filed motions for summary judgment.
`
`2. AERA et al. v. Public Resource
`
`This case involves the 1999 Standards, which AERA Plaintiffs have sold since 2000.
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`(AERA PSMF ¶¶ 34–35). In May 2012, Public Resource purchased a paper copy of the 1999
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`Standards, disassembled it, scanned the pages, created a PDF file, attached a cover sheet, and,
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`without authorization from the AERA Plaintiffs, posted the PDF file to Public Resource’s
`
`
`
`8
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`

`

`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 9 of 55
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`website and the Internet Archive. (AERA DSMF ¶ 28; AERA PSMF ¶¶ 69–80). Public
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`Resource posted a read-only version of the 1999 Standards to its website, unlike many of the
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`ASTM Plaintiffs’ standards, which had undergone optical character recognition (“OCR”)
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`processing to be text-searchable. (Id. ¶ 73). OCR processing uses a machine to recognize letters
`
`and words in a PDF and translate them into letters or words that can be searched and used by
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`text-to-speech software for individuals who are blind or visually impaired. (Id. ¶¶ 73–75).
`
`Plaintiffs allege that the 1999 Standards are protected original works, and they brought
`
`suit claiming copyright infringement and contributory copyright infringement. (AERA Compl.
`
`¶¶ 50–63). Defendant counter-sued seeking a declaratory judgment that its conduct does not
`
`violate copyright law or trademark law. (AERA Ans. ¶¶ 116–37). Both sides have moved for
`
`summary judgment.
`
`II.
`
`LEGAL STANDARD
`
`Summary judgment may be granted if “the movant shows that there is no genuine dispute
`
`as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
`
`56(a); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247–48 (1986) (“[T]he mere
`
`existence of some alleged factual dispute between the parties will not defeat an otherwise
`
`properly supported motion for summary judgment; the requirement is that there be no genuine
`
`issue of material fact.”) (emphasis in original); Holcomb v. Powell, 433 F.3d 889, 895 (D.C. Cir.
`
`2006). Summary judgment may be rendered on a “claim or defense . . . or [a] part of each claim
`
`or defense.” Fed. R. Civ. P. 56(a).
`
`“A party asserting that a fact cannot be or is genuinely disputed must support the
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`assertion by . . . citing to particular parts of materials in the record.” Fed. R. Civ. P. 56(c)(1)(A).
`
`“A fact is ‘material’ if a dispute over it might affect the outcome of a suit under governing law;
`
`
`
`9
`
`

`

`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 10 of 55
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`factual disputes that are ‘irrelevant or unnecessary’ do not affect the summary judgment
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`determination. An issue is ‘genuine’ if ‘the evidence is such that a reasonable jury could return a
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`verdict for the nonmoving party.’” Holcomb, 433 F.3d at 895 (quoting Liberty Lobby, 477 U.S.
`
`at 248) (citation omitted). The party seeking summary judgment “bears the heavy burden of
`
`establishing that the merits of his case are so clear that expedited action is justified.” Taxpayers
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`Watchdog, Inc. v. Stanley, 819 F.2d 294, 297 (D.C. Cir. 1987).
`
`In considering a motion for summary judgment, “[t]he evidence of the non-movant is to
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`be believed, and all justifiable inferences are to be drawn in his favor.” Liberty Lobby, 477 U.S.
`
`at 255; see also Mastro v. Potomac Elec. Power Co., 447 F.3d 843, 850 (D.C. Cir. 2006) (“We
`
`view the evidence in the light most favorable to the nonmoving party and draw all inferences in
`
`its favor.”). The nonmoving party’s opposition, however, must consist of more than mere
`
`unsupported allegations or denials, and must be supported by affidavits, declarations, or other
`
`competent evidence setting forth specific facts showing that there is a genuine issue for trial. See
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`Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986). The non-movant “is
`
`required to provide evidence that would permit a reasonable jury to find [in his favor].”
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`Laningham v. U.S. Navy, 813 F.2d 1236, 1242 (D.C. Cir. 1987).
`
`III. ANALYSIS
`
`A. Copyright Infringement
`
`Under the Copyright Act, copyright in a work vests initially in the author(s) of that work.
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`17 U.S.C. § 201(a). Ownership can be transferred in whole or in part, and the exclusive rights of
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`copyright ownership may also be transferred. Id. § 201(d). An owner of a valid copyright has
`
`the “exclusive right” to reproduce, distribute, or display the copyrighted works as well as prepare
`
`derivative works based upon it. Id. § 106(1)–(3), (5). Anyone who violates the exclusive rights
`
`
`
`10
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`

`

`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 11 of 55
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`of the copyright owner “is an infringer of the copyright or right of the author, as the case may
`
`be.” Id. § 501(a). The legal or beneficial owner of that exclusive right may then “institute an
`
`action for any infringement.” Id. § 501(b). In order to succeed on their copyright infringement
`
`claims, the Plaintiffs must prove both “‘(1) ownership of a valid copyright, and (2) copying of
`
`constituent elements of the work that are original.’” Stenograph, LLC v. Bossard Assoc., Inc.,
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`144 F.3d 96, 99 (D.C. Cir. 1998) (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S.
`
`340, 361 (1991)).
`
`1. Feist Prong 1: Ownership of a Valid Copyright
`
`a. Ownership
`
`The court must first decide the threshold issue of whether Plaintiffs own the copyrights in
`
`part or outright such that they have standing to challenge Defendant’s alleged infringement. The
`
`Copyright Act provides that possession of a certificate of registration from the U.S. Copyright
`
`Office “made before or within five years after first publication of the work shall constitute prima
`
`facie evidence,” creating a rebuttable presumption of ownership of a valid copyright. 17 U.S.C.
`
`§ 410(c); see also MOB Music Publ’g. v. Zanzibar on the Waterfront, LLC, 698 F. Supp. 2d 197,
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`202 (D.D.C. 2010). If the copyright was registered more than five years after the work was
`
`published, then the “evidentiary weight to be accorded . . . shall be within the discretion of the
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`court.” 17 U.S.C. § 410(c).
`
`When a party offers as prima facie evidence a registration certificate for a compilation of
`
`individual works that it authored, rather than the registration for a specific individual work, a
`
`court may consider this to be similar prima facie evidence of ownership, creating the same
`
`rebuttable presumption. See Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283-84 (4th Cir. 2003),
`
`abrogated by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010); Morris v. Business
`
`
`
`11
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`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 12 of 55
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`Concepts, Inc., 259 F.3d 65, 68 (2d Cir. 2001), abrogated on other grounds by Muchnick, 559
`
`U.S. 154 (2010). Moreover, the registration certificate is sufficient prima facie evidence for the
`
`individual works within the compilation if the compilation is deemed to be a “single work.”
`
`Federal regulations provide that “all copyrightable elements that are otherwise recognizable as
`
`self-contained works, that are included in a single unit of publication, and in which the copyright
`
`claimant is the same” constitute a “single work,” such that they are validly registered under a
`
`single registration certificate 37 C.F.R. § 202.3(b)(4)(A); Kay Berry, Inc. v. Taylor Gifts, Inc.,
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`4221 F.3d 199, 205–06 (3d Cir. 2005); Yurman Studio, Inc. v. Castaneda, 591 F. Supp. 2d 471,
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`483 (S.D.N.Y. 2008).
`
`Once a copyright holder has proffered this prima facie evidence, the alleged infringer
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`“challenging the validity of the copyright has the burden to prove the contrary.” Hamil Am., Inc.
`
`v. GFI, Inc., 193 F.3d 92, 98 (2d Cir. 1999); United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630
`
`F.3d 1255, 1257 (9th Cir. 2011) (infringer “has the burden of rebutting the facts set forth in the
`
`copyright certificate”). The defendant-infringer might argue that the plaintiff-copyright holder
`
`had some defect in the record-keeping submitted to establish ownership. However, this “skips a
`
`step,” as the defendant must first “set forth facts that rebut the presumption of validity to which
`
`[the plaintiff’s] copyright is entitled” before attacking the sufficiency of a plaintiff’s evidence of
`
`ownership. United Fabrics, 630 F.3d at 1257. The infringer must use “other evidence in the
`
`record [to] cast[] doubt on” the validity of the ownership. Fonar Corp. v. Domenick, 105 F.3d
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`99, 104 (2d Cir. 1997) (emphasis in original). The court in Fonar noted that defendant-infringers
`
`have overcome the presumption of validity with evidence that the work has been copied from the
`
`public domain and evidence that the work was non-copyrightable. Id. (citing Folio Impressions,
`
`Inc. v. Byer Cal., 937 F.2d 759, 763–64 (2d Cir. 1991); Carol Barnhart, Inc. v. Economy Cover
`
`
`
`12
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`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 13 of 55
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`Corp., 773 F.2d 411, 414 (2d Cir. 1985)). Parties challenging the validity of copyright
`
`registrations must therefore do more than simply point out potential errors in the certificate. See
`
`2 Nimmer on Copyright § 7.20(b)(1) (“a misstatement . . . in the registration application, if
`
`unaccompanied by fraud, should neither invalidate the copyright nor render the registration
`
`certificate incapable of supporting an infringement action”).
`
`The ASTM Plaintiffs produced copyright certificates for each of the nine standards at
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`issue, and each of these certificates list the ASTM Plaintiffs as the authors of the works.4 The
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`AERA Plaintiffs also produced the copyright certificates for the 1999 Standards, listing the
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`AERA Plaintiffs as authors.5 Two of ASTM’s standards—D86-07 and D975-07—were
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`registered more than five years after they were published. The court accords these the same
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`evidentiary weight as if they had been registered within five years. See 17 U.S.C. § 410(c) (court
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`has discretion over evidentiary weight). Moreover, the court finds that the registration certificate
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`for the 1999 Book of Standards sufficiently establishes prima facie evidence of ASTM’s
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`ownership of D396-98 and D1217-93(98). Therefore, the ASTM Plaintiffs and AERA Plaintiffs
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`have established their ownership of the works at issue with prima facie evidence.
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`4 The nine copyright registrations are provided in the record here:
` ASTM: Ex. 1 to O’Brien Decl. (ASTM D86-07) (ASTM ECF No. 118-7, p. 13); Ex. 2 to
`O’Brien Decl. (ASTM D975-07) (ASTM ECF No. 118-7, p. 16); Ex. 4 to O’Brien Decl.
`(1999 Annual Book of ASTM Standards) (ASTM ECF No. 118-7, p. 23); Ex. 3 to O’Brien
`Decl. (listing ASTM D396-98 and ASTM D1217-93(98) as standards included in the 1999
`Annual Book of ASTM Standards) (ASTM ECF No. 118-7, pp. 20–21).
` NFPA: Ex. A to Berry Decl. (National Electrical Code, 2011 ed.) (ASTM ECF No. 118-3,
`p. 6); Ex. B to Berry Decl. (2014 ed.) (ASTM ECF No. 118-3, p. 8).
` ASHRAE: Ex. 3 to Reiniche Decl. (Standard 90.1, 2004 ed.) (ASTM ECF No. 118-10,
`page 16); Ex. 4 to Reiniche Decl. (2007 ed.) (ASTM ECF No. 118-10, page 19); Ex. 5 to
`Reiniche Decl. (2010 ed.) (ASTM ECF No. 118-10, page 22).
`5 Ex. RRR to Levine Decl. (original copyright registration) (AERA ECF No. 60-83); Ex. SSS to
`Levine Decl. (2014 corrected registration) (AERA ECF No. 60-84).
`13
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`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 14 of 55
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`The burden to offer evidence disproving ownership thus shifts in both cases to Defendant.
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`See Zanzibar, 698 F. Supp. 2d at 202; Roeslin v. District of Columbia, 921 F. Supp. 793, 797
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`(D.D.C. 1995) (finding that because the copyright registration listed plaintiff as the author, the
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`“burden is thus on the defendant to establish” that plaintiff was not the author). To rebut the
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`presumption of validity, in both cases Defendant pointed to the fact that the certificates state that
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`the standards were “works for hire”—i.e., that Plaintiffs acquired authorship and ownership
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`rights because their employees or anyone who signed a work-for-hire agreement wrote the
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`standards—and the certificates further state that Plaintiffs are the authors of the “entire text[s],”
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`when Plaintiffs have said that the standards are drafted by hundreds or thousands of volunteer
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`contributors. Defendant contends that the certificates must list all of these hundreds or thousands
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`of authors in order to be accurate, and that the failure to do so is a material error which strips
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`Plaintiffs of the presumption of ownership. However, Defendant offers scant support for this
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`argument.
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`Moreover, Defendant failed to meet its initial burden, since it did not adduce any
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`additional evidence disproving Plaintiffs’ authorship. Instead, Defendant points to weaknesses
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`in the additional evidence that Plaintiffs proffered to establish their ownership, including
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`questioning whether every one of the hundreds of Plaintiffs’ members who contributed to the
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`standards at issue signed an agreement with appropriate language transferring or assigning
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`copyright ownership to Plaintiffs. Because Plaintiffs may have standing to bring this
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`infringement suit even as part owners of the copyrights, it is not clear why Defendant asserts that
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`Plaintiffs must prove outright ownership of their copyrights. Beyond showing that Plaintiffs’
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`recordkeeping could perhaps be more thorough, Defendant has not identified any evidence that
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`either the ASTM Plaintiffs or AERA Plaintiffs do not own the copyrights of the standards, in
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`
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`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 15 of 55
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`whole or in part. The court therefore concludes that the ASTM Plaintiffs and AERA Plaintiffs
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`are the owners of the copyrights at issue and have standing to bring their claims.6
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`b. Valid Copyrights
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`Defendant also argues that Plaintiffs do not own “valid” copyrights under Feist because
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`the standards either were never copyrightable or lost their copyright protection upon
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`incorporation by reference into federal regulations. Defendant argues that the standards cannot
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`be copyrighted because: (1) they are methods or systems, which are not entitled to protection
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`under 17 U.S.C. § 102(b); (2) the standards are in the public domain as “the law”; and (3) the
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`merger and scènes à faire doctrines preclude a finding of infringement.
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`(i). Methods or Systems under Copyright Act § 102(b)
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`Section 102(b) of the Copyright Act specifies eight types of works that are not protected
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`by copyright: “In no case does copyright protection for an original work of authorship extend to
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`any idea, procedure, process, system, method of operation, concept, principle, or discovery,
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`regardless of the form in which it is described, explained, illustrated, or embodied in such work.”
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`17 U.S.C. § 102(b). Though these eight types of works are not further defined in the statute, the
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`legislative history accompanying the Copyright Act of 1976 offers some starting guidance:
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`“Section 102(b) in no way enlarges or contracts the scope of copyright protection under the
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`present law. Its purpose is to restate, in the context of the new single Federal system of
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`copyright, that the basic dichotomy between expression and idea remains unchanged.” H.R.
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`6 Defendant did not dispute that “ASTM has copyright registrations that cover each of the
`standards at issue in this litigation” except as to one standard, ASTM D323-58(68). (See Def.
`Statement of Disputed Facts ¶ 70 (ASTM ECF No. 121-3)). Therefore, unless Defendant
`presents evidence disproving ownership, the court is likely to conclude, based on these copyright
`registrations, that the ASTM Plaintiffs are the owners of the remaining standards at issue in this
`litigation, with the exception of D323-58(68). As to this standard, ASTM will need to present
`additional evidence establishing ownership.
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`
`
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`Case 1:14-cv-00857-TSC Document 117 Filed 02/02/17 Page 16 of 55
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`Rep. No. 94-1476, at 57, reprinted in 1976 U.S.C.C.A.N. 5659, 5670 (Sept. 3, 1976); S. Rep.
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`No. 94-473 (Nov. 20, 1975); see also 1-2A Nimmer on Copyright § 2A.06(a)(1) (summarizing
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`legislative history). The “basic d