USCA Case #17-7035 Document #1669990 Filed: 04/06/2017 Page 1 of 131
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`Appeal Nos. 17-7035
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE DISTRICT OF COLUMBIA CIRCUIT
`
`
`American Society for Testing and Materials; National Fire Protection
`Association, Inc.; American Society of Heating, Refrigerating, and Air-
`Conditioning Engineers, Inc.,
`
`
`
`Appellees,
`
`v.
`
`Public.Resource.Org, Inc.,
`
`
`Appellant.
`
`
`Appeal from the United States District Court for the District of Columbia,
`Hon. Tanya S. Chutkan, Case Nos. 1:13-cv-01215-TSC-DAR
`and 1:14-cv-00857-TSC-DAR (consolidated)
`
`
`UNDERLYING DECISIONS FROM WHICH APPEAL ARISES
`
`
`
`
`
`Andrew P. Bridges
`FENWICK & WEST LLP
`555 California Street, 12th Floor
`San Francisco, CA 94104
`Telephone:
`(415) 875-2300
`Facsimile:
`(415) 281-1350
`
`Attorneys for Respondent
`Public.Resource.Org, Inc.,
`
`
`April 6, 2017
`
`

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`USCA Case #17-7035 Document #1669990 Filed: 04/06/2017 Page 2 of 131
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`Pursuant to the Clerk’s Order of March 7, 2017, Defendant-Appellant
`
`Public.Resource.Org, Inc. seeks review of the following rulings by the Honorable
`
`Tanya S. Chutkan, United States District Judge for the District of Columbia:
`
`A. American Society for Testing and Materials et al. v.
`Public.Resource.Org, Inc., 1:13-cv-01215-TSC-DAR
`
` Dkt. No. 172, Order Denying Motion to Strike Expert Report, entered
`
`September 21, 2016 (attached as Exhibit A).
`
` Dkt. No. 175, Memorandum and Opinion (attached as Exhibit B), and
`
`Dkt. No. 176, Order Granting Plaintiffs’ Motion for Summary
`
`Judgment and Denying Defendant’s Cross-motion for Summary
`
`Judgment (attached as Exhibit C), entered February 2, 2017.
`
` Dkt. No. 182, Amended Order, entered April 3, 2017 (attached as
`
`Exhibit D).
`
`B. American Educational Research Association et al. v.
`Public.Resource.Org, Inc., 1:14-cv-00857-TSC-DAR
`
` Dkt. No. 115, Order Denying Defendant’s Motion to Strike Expert
`
`Declaration, entered September 21, 2016 (attached as Exhibit E).
`
` Dkt. No. 117, Memorandum and Opinion (referenced above as
`
`Exhibit F), and Dkt. No. 118, Order Granting in Part and Denying in
`
`Part Plaintiffs’ Motion for Summary Judgment and Denying
`
`
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`1
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`

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`USCA Case #17-7035 Document #1669990 Filed: 04/06/2017 Page 3 of 131
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`Defendant’s Cross-motion for Summary Judgment (attached as
`
`Exhibit G), entered February 2, 2017.
`
`
`
`Dated: April 6, 2017
`
`
`FENWICK & WEST LLP
`
`By: /s/ Andrew P. Bridges
`Andrew P. Bridges
`
`Attorneys for Respondent
`Public.Resource.Org, Inc.,
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`
`
`
`
`2
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`

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`
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`EXHIBIT A
`
`

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`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLUMBIA
`
`Case No. 13-cv-1215 (TSC)
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`AMERICAN SOCIETY FOR TESTING
`AND MATERIALS, et al.,
`
`Plaintiffs,
`
`v.
`
`PUBLIC.RESOURCE.ORG, INC.,
`
`Defendant.
`
`Defendant Public Resource moves to strike the expert report of John C. Jarosz (“Jarosz
`
`Report”) (ECF No. 118-12, Ex. 1) on the basis that it does not meet the requirements of Federal
`
`Rule of Evidence 702. The Jarosz Report is used primarily to support Plaintiffs’ economic
`
`arguments regarding the harm to their revenue and incentives if the court were to find that
`
`incorporation of their standards by reference into federal regulations revokes or destroys their
`
`copyrights, or Defendant was otherwise allowed to continue posting the standards on its website.
`
`For the reasons stated herein, Defendant’s motion is DENIED.
`
`A district court has “‘broad discretion in determining whether to admit or exclude expert
`
`testimony.’” United States ex rel. Miller v. Bill Harbert Int’l Constr., Inc., 608 F.3d 871, 895
`
`(D.C. Cir. 2010) (quoting United States v. Gatling, 96 F.3d 1511, 1523 (D.C. Cir. 1996)). Under
`
`the Supreme Court’s decision in Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579
`
`(1993), this court is “required to address two questions, first whether the expert’s testimony is
`
`based on ‘scientific knowledge’ and second, whether the testimony ‘will assist the trier of fact to
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`understand or determine a fact in issue.’” Meister v. Med. Eng’g Corp., 267 F.3d 1123, 1126
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`1
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`(D.C. Cir. 2001) (quoting Daubert, 509 U.S. at 592). Trial courts “act as gatekeepers who may
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`only admit expert testimony if it is both relevant and reliable,” Heller v. D.C., 952 F. Supp. 2d
`
`133, 139 (D.D.C. 2013), though this role is “significantly diminished” at the summary judgment
`
`stage, see Window Specialists, Inc. v. Forney Enters., Inc., 47 F. Supp. 3d 53, 60 (D.D.C. 2014).
`
`In determining whether to strike an expert report, the court’s focus is on whether the
`
`expert’s assumptions “amount to ‘rampant speculation’ and should be excluded” or “merely
`
`represent a weak factual basis for his testimony” which could be appropriately challenged on
`
`cross examination at trial. Boyar v. Korean Air Lines Co., Ltd., 954 F. Supp. 4, 7 (D.D.C. 1996).
`
`As the Court in Daubert instructed, “vigorous cross examination, presentation of contrary
`
`evidence, and careful instruction on the burden of proof are the traditional and appropriate means
`
`of attacking shaky but admissible evidence.” 509 U.S. at 596.
`
`Defendant argues that the scope of the Jarosz Report exceeds his expertise and that Jarosz
`
`improperly relied on factual information from Plaintiffs themselves, thus acting “as a
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`mouthpiece.” (Def. Mem. at 6–7). Based on Jarosz’s education, publications, and participation
`
`as an expert in intellectual property infringement in hundreds of other cases, the court finds his
`
`expertise to be well established. While Defendant argues that Jarosz lacks both experience
`
`evaluating standards development organizations and independent knowledge of the development
`
`of those organizations’ standards and the process of incorporation by reference, the court
`
`concludes that such specialized personal knowledge is not required for an expert to be qualified
`
`to opine on the economic impact of copyright infringement. Additionally, based on the extensive
`
`number of deposition transcripts, documents, websites, publications, and data reviewed by
`
`Jarosz, his opinions are sufficiently supported.
`
`Defendant also argues that Jarosz made improper assumptions and failed to apply reliable
`
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`2
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`

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`methodologies to the facts. Specifically, Defendant takes issue with Jarosz’s analysis involving
`
`the impact on revenue from the loss of copyright protection, the differences in harms relating to
`
`the standards in this case versus all of Plaintiffs’ standards generally, the potential impact that
`
`Plaintiffs’ reading rooms have on revenue, and the estimation of lost sales. Ultimately,
`
`Defendant appears to argue simply that different analyses would have resulted in an expert report
`
`more favorable to Defendant’s position. Defendant could have offered a rebuttal expert in
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`response (and was in fact given time to do so by Magistrate Judge Robinson during discovery),
`
`but chose not to. However, the court will not strike an expert report simply because the expert
`
`did not rely on the particular assumptions or data Defendant thought was necessary. Those
`
`issues are more properly addressed through “vigorous cross-examination [and] presentation of
`
`contrary evidence.” Daubert, 509 U.S. at 596.
`
`Plaintiffs have sufficiently established that Jarosz has the experience and education
`
`necessary to be qualified as an expert in this case, and that the content of his testimony—
`
`applying general economic principles to the effects of copyright infringement of Plaintiffs’
`
`standards—may “help the trier of fact.” See Fed. R. Evid. 702; Daubert, 509 U.S. at 588.
`
`Therefore, at this stage, the court will not take the unusual step of striking his report from
`
`consideration.
`
`
`
`Date: September 21, 2016
`
`
`Tanya S. Chutkan
`TANYA S. CHUTKAN
`United States District Judge
`
`
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`3
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`
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`EXHIBIT B
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`

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

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`(“AERA”), American Psychological Association, Inc. (“APA”), and National Council on
`
`Measurement in Education, Inc. (“NCME”) (collectively “AERA Plaintiffs”) also brought
`
`copyright infringement claims against Public Resource under the Copyright Act. Plaintiffs1 in
`
`both cases seek permanent injunctions barring Defendant from continued display of their works.
`
`Plaintiffs moved for summary judgment, and Defendant filed cross-motions for summary
`
`judgment in both cases. The court held a combined oral argument on September 12, 2016 to
`
`consider the motions. Upon consideration of the parties’ filings, the numerous amicus briefs,
`
`and the arguments presented at the motions hearing, and for the reasons stated herein, the ASTM
`
`Plaintiffs’ motion for summary judgment is GRANTED and Defendant’s cross-motion is
`
`DENIED. The AERA Plaintiffs’ motion for summary judgment is GRANTED IN PART AND
`
`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
`
`standards in order to advance public safety, ensure compatibility across products and services,
`
`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
`
`works, product specifications, installation methods, methods for manufacturing or testing
`
`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
`
`

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

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`legal information. (ASTM DSMF ¶¶ 1–2 (ASTM ECF No. 120-3); AERA DSMF ¶¶ 1–2
`
`(AERA ECF No. 68-3)). Its mission is “make the law and other government materials more
`
`widely available so that people, businesses, and organizations can easily read and discuss [the]
`
`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,
`
`Internal Revenue Service records, patent filings, and safety regulations. (ASTM DSMF ¶¶ 3–4;
`
`AERA DSMF ¶¶ 3–4). It does not charge fees to view or download the materials on its website.
`
`(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,
`
`typically develop standards, guidelines, and procedures that set the best practices in a particular
`
`industry.3 Applicable standards are used by entities and individuals in order to self-regulate and
`
`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
`
`application of uniform industrial standards created independent of law, as means of assuring
`
`quality, compatibility, and other highly desired market characteristics.” Peter L. Strauss, Private
`
`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.”).
`
`
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`4
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`

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`Standards are typically developed by standards developing organizations (“SDOs”), like
`
`Plaintiffs, who work to develop “voluntary consensus standards,” such as those here. Voluntary
`
`consensus standards are the ultimate product of many volunteers and association members from
`
`numerous sectors bringing together technical expertise. They are “developed using procedures
`
`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
`
`technical committees with representatives from industry, government, consumers, and technical
`
`experts. (ASTM PSMF ¶¶ 7, 28, 29, 109, 114, 135). These committees conduct open
`
`proceedings, consider comments and suggestions, and provide for appeals, and through
`
`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
`
`considered input from the public in a notice-and-comment process. (AERA PSMF ¶¶ 13–16).
`
`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
`
`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–
`
`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
`
`private sector expertise. See OMB Revised Circular, supra, at 14.
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`5
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`

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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
`
`published[, but] . . . matter reasonably available to the class of persons affected thereby is
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`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
`
`Office of the Federal Register (“OFR”) adopted regulations pursuant to § 552(a)(1) in 1982 and
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`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
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`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. . . .
`
`
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`6
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`

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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
`
`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
`
`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
`
`these reading rooms are “read-only,” meaning they appear as images that may not be printed or
`
`downloaded. (Id.). AERA Plaintiffs sell hardcopy versions of the 1999 Standards, but do not
`
`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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`C. Plaintiffs’ Claims in This Action
`
`1. ASTM et al. v. Public Resource
`
`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
`
`admits that it purchased hard copies of each of the standards at issue, scanned them into PDF
`
`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
`
`online, with text in Hypertext Markup Language (HTML) format and graphics and figures in
`
`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
`
`PSMF ¶ 210). Defendant also uploaded the ASTM Plaintiffs’ standards to the Internet Archive,
`
`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
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`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.
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`2. AERA et al. v. Public Resource
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`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
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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
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`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).
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`Plaintiffs allege that the 1999 Standards are protected original works, and they brought
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`suit claiming copyright infringement and contributory copyright infringement. (AERA Compl.
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`¶¶ 50–63). Defendant counter-sued seeking a declaratory judgment that its conduct does not
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`violate copyright law or trademark law. (AERA Ans. ¶¶ 116–37). Both sides have moved for
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`summary judgment.
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`II.
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`LEGAL STANDARD
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`Summary judgment may be granted if “the movant shows that there is no genuine dispute
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`as to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P.
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`56(a); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247–48 (1986) (“[T]he mere
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`existence of some alleged factual dispute between the parties will not defeat an otherwise
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`properly supported motion for summary judgment; the requirement is that there be no genuine
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`issue of material fact.”) (emphasis in original); Holcomb v. Powell, 433 F.3d 889, 895 (D.C. Cir.
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`2006). Summary judgment may be rendered on a “claim or defense . . . or [a] part of each claim
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`or defense.” Fed. R. Civ. P. 56(a).
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`“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).
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`“A fact is ‘material’ if a dispute over it might affect the outcome of a suit under governing law;
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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.
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`at 248) (citation omitted). The party seeking summary judgment “bears the heavy burden of
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`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).
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`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.
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`at 255; see also Mastro v. Potomac Elec. Power Co., 447 F.3d 843, 850 (D.C. Cir. 2006) (“We
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`view the evidence in the light most favorable to the nonmoving party and draw all inferences in
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`its favor.”). The nonmoving party’s opposition, however, must consist of more than mere
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`unsupported allegations or denials, and must be supported by affidavits, declarations, or other
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`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
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`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).
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`III. ANALYSIS
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`A. Copyright Infringement
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`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
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`the “exclusive right” to reproduce, distribute, or display the copyrighted works as well as prepare
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`derivative works based upon it. Id. § 106(1)–(3), (5). Anyone who violates the exclusive rights
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`of the copyright owner “is an infringer of the copyright or right of the author, as the case may
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`be.” Id. § 501(a). The legal or beneficial owner of that exclusive right may then “institute an
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`action for any infringement.” Id. § 501(b). In order to succeed on their copyright infringement
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`claims, the Plaintiffs must prove both “‘(1) ownership of a valid copyright, and (2) copying of
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`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.
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`340, 361 (1991)).
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`1. Feist Prong 1: Ownership of a Valid Copyright
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`a. Ownership
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`The court must first decide the threshold issue of whether Plaintiffs own the copyrights in
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`part or outright such that they have standing to challenge Defendant’s alleged infringement. The
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`Copyright Act provides that possession of a certificate of registration from the U.S. Copyright
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`Office “made before or within five years after first publication of the work shall constitute prima
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`facie evidence,” creating a rebuttable presumption of ownership of a valid copyright. 17 U.S.C.
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`§ 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
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`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).
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`When a party offers as prima facie evidence a registration certificate for a compilation of
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`individual works that it authored, rather than the registration for a specific individual work, a
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`court may consider this to be similar prima facie evidence of ownership, creating the same
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`rebuttable presumption. See Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283-84 (4th Cir. 2003),
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`abrogated by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010); Morris v. Business
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`Concepts, Inc., 259 F.3d 65, 68 (2d Cir. 2001), abrogated