USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 1 of 40
`
`
`United States Court of Appeals
`FOR THE DISTRICT OF COLUMBIA CIRCUIT
`
`
`
`Decided July 17, 2018
`
`Argued May 14, 2018
`
`
`No. 17-7035
`
`AMERICAN SOCIETY FOR TESTING AND MATERIALS, ET AL.,
`APPELLEES
`
`v.
`
`PUBLIC.RESOURCE.ORG, INC.,
`APPELLANT
`
`
`Consolidated with 17-7039
`
`
`Appeals from the United States District Court
`for the District of Columbia
`(No. 1:13-cv-01215)
`(No. 1:14-cv-00857)
`
`
`Corynne McSherry argued the cause for appellant. With
`her on the briefs were Andrew P. Bridges, Matthew B. Becker,
`Mitchell L. Stoltz, and David Halperin.
`
`
`Adina H. Rosenbaum and Allison M. Zieve were on the
`brief for amici curiae Public Citizen, Inc., et al. in support of
`appellant.
`
`
`Charles Duan was on the brief for amici curiae Sixty-Six
`Library Associations, et al. in support of appellant.
`
`
`
`

`

`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 2 of 40
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`2
`
`
`
`Catherine R. Gellis was on the brief for amici curiae
`Members of Congress in support of appellant.
`
`
`Samuel R. Bagenstos was on the brief for amici curiae
`Intellectual Property Professors in support of appellant.
`
`
`Phillip R. Malone and Jeffrey T. Pearlman were on the
`brief for amicus curiae Sina Bahram in support of appellant.
`
`Donald B. Verrilli, Jr., argued the cause for appellees.
`With him on the brief for appellees American Society for
`Testing and Materials, et al. were Allyson N. Ho, Anne Voigts,
`Joseph R. Wetzel, J. Blake Cunningham, Kelly M. Klaus, Rose
`L. Ehler, and J. Kevin Fee.
`
`
`John I. Stewart Jr. and Clifton S. Elgarten were on the
`brief
`for
`appellees American Educational Research
`Association, Inc., et al. Jeffrey S. Bucholtz and Michael F.
`Clayton entered appearances.
`
`
`V. Robert Denham, Jr., was on the brief for amicus curiae
`American Insurance Association in support of appellees.
`
`
`Bonnie Y. Hochman Rothell was on the brief for amici
`curiae American National Standards Institute, Inc., and Ten
`Standards Organizations in support of appellees.
`
`
`Anthony J. Dreyer was on the brief for amicus curiae
`International Trademark Association in support of appellees.
`
`Jack R. Bierig was on the brief for amici curiae American
`Medical Association, et al. in support of appellees.
`
`
`Before: TATEL, WILKINS, and KATSAS, Circuit Judges.
`
`
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`

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`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 3 of 40
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`3
`Opinion for the Court filed by Circuit Judge TATEL.
`
`Concurring opinion filed by Circuit Judge KATSAS.
`
`TATEL, Circuit Judge: Across a diverse array of
`commercial and industrial endeavors, from paving roads to
`building the Internet of Things, private organizations have
`developed written standards to resolve technical problems,
`ensure compatibility across products, and promote public
`safety. These technical works, which authoring organizations
`copyright upon publication, are typically distributed as
`voluntary guidelines for self-regulation. Federal, state, and
`local governments, however, have incorporated by reference
`thousands of these standards into law. The question in this case
`is whether private organizations whose standards have been
`incorporated by reference can invoke copyright and trademark
`law to prevent the unauthorized copying and distribution of
`their works. Answering yes, the district court granted partial
`summary judgment in favor of the private organizations that
`brought this suit and issued injunctions prohibiting all
`unauthorized reproduction of their works. In doing so, the court
`held that, notwithstanding serious constitutional concerns,
`copyright persists in incorporated standards and that the
`Copyright Act’s “fair use” defense does not permit wholesale
`copying in such situations. The court also concluded that the
`use of the private organizations’ trademarks ran afoul of the
`Lanham Act and did not satisfy the judicial “nominative fair
`use” exception. Because the district court erred in its
`application of both fair use doctrines, we reverse and remand,
`leaving for another day the far thornier question of whether
`standards retain their copyright after they are incorporated by
`reference into law.
`
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`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 4 of 40
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`4
`I.
`Ever operated a tank barge and wondered what power
`
`source you would need for your cargo tank’s liquid overfill
`protection system to comply with the law? Probably not. But if
`you did, you might consider thumbing through the Code of
`Federal Regulations, where you would discover that one option
`is to hook up to an off-barge facility, provided that your system
`has “a 120-volt, 20-ampere explosion-proof plug that meets . . .
`NFPA 70, Articles 406.9 and 501-145.” 46 C.F.R.
`§ 39.2009(a)(1)(iii)(B). Dig deeper and you would learn that
`NFPA 70 is not some obscure rule or regulation or agency
`guidance document but is instead another name for the
`“National Electrical Code,” a multi-chapter technical standard
`prepared by the National Fire Protection Association (the
`eponymous “NFPA”), detailing best practices for “electrical
`installations.” Complaint ¶ 66, American Society for Testing &
`Materials v. Public.Resource.Org, Inc. (ASTM), No. 1:13-cv-
`01215 (D.D.C. Aug. 6, 2013) (“ASTM Compl.”), Dkt. No. 1,
`Joint Appendix (J.A.) 86. Parts of NFPA 70 have been
`incorporated into the statutes or regulations of at least forty-
`seven states and, as we have just seen, the federal government.
`American Insurance Ass’n Amicus Br. 5.
`
`NFPA 70 is one of thousands of standards developed by
`so-called Standards Developing Organizations (SDOs), six of
`whom are plaintiffs-appellees here. The typical SDO operates
`through volunteer committees that focus on narrow technical
`issues. Comprised of industry representatives, academics,
`technical experts, and government employees,
`these
`committees meet regularly to debate best practices in their
`areas of expertise and to issue new technical standards or
`update existing ones. Once a committee decides on a standard,
`the SDO publishes the standard and secures a copyright
`registration.
`
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`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 5 of 40
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`5
`Technical standards are as diverse as they are many,
`
`addressing everything from product specifications and
`installation methods to testing protocols and safety guidelines.
`Take, for instance, the more than 12,000 standards developed
`by the American Society for Testing and Materials (ASTM), a
`plaintiff-appellee here. Its standards establish best practices
`and specifications in a wide variety of fields, including
`consumer products, textiles, medical services, electronics,
`construction, aviation, and petroleum products. ASTM Compl.
`¶ 48, J.A. 81. Three other plaintiffs-appellees, the American
`Educational Research Association,
`Inc.,
`the American
`Psychological Association, Inc., and the National Council on
`Measurement in Education, Inc. (collectively, “AERA”), have
`collaborated to jointly produce a single volume, “Standards for
`Educational and Psychological Testing,” a collection of
`standards that aims “to promote the sound and ethical use of
`tests and to provide a basis for evaluating the quality of testing
`practices.” AERA, Standards
`for Educational and
`Psychological Testing 1 (1999), J.A. 2245.
`
`Industry compliance with technical standards developed
`
`by private organizations is entirely voluntary. In some cases,
`however, federal, state, or local governments have incorporated
`technical standards into law. In fact, federal law encourages
`precisely this practice. See National Technology Transfer and
`Advancement Act of 1995, Pub. L. No. 104-113, § 12, 110 Stat.
`775, 782 (1996) (codified as amended at 15 U.S.C. § 272(b)(3))
`(authorizing
`the National
`Institute of Standards and
`Technology “to coordinate the use by Federal agencies of
`private sector standards, emphasizing where possible the use of
`standards developed by private, consensus organizations”). As
`the Office of Management and Budget has explained,
`incorporating private standards “eliminate[s] the cost to the
`Federal government of developing its own standards” and
`“further[s] the reliance upon private sector expertise to supply
`
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`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 6 of 40
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`the Federal government with cost-efficient goods and
`services.” Office of Mgmt. & Budget, Exec. Office of the
`President, OMB Circular A-119: Federal Participation in the
`Development and Use of Voluntary Consensus Standards and
`in Conformity Assessment Activities 14 (2016), 2016 WL
`7664625.
`
`incorporate private
`legislatures
` When agencies or
`standards into law, they often do so by reference—that is,
`instead of spelling out the requirements of a standard within
`legislative or regulatory text, they reference the standard being
`incorporated and direct interested parties to consult that
`standard in order to understand their obligations. The process
`for incorporation by reference varies widely by jurisdiction.
`For example, consider the process employed by the federal
`government. If an agency wishes to incorporate a standard into
`a final rule, it must submit a formal request to the Director of
`the Federal Register. 1 C.F.R. § 51.5(b). In that request, the
`agency must, among other things, “[d]iscuss . . . the ways that
`the [incorporated] materials . . . are reasonably available to
`interested parties and how interested parties can obtain the
`materials,” id. § 51.5(b)(2), and “[e]nsure that a copy of the
`incorporated material is on file at the Office of the Federal
`Register,” id. § 51.5(b)(5). Once the Director approves the
`incorporation, provided that the “matter [is] reasonably
`available to the class of persons affected,” it “is deemed
`published in the Federal Register,” 5 U.S.C. § 552(a)(1), and,
`“like any other properly issued rule, has the force and effect of
`law,” Nat’l Archives & Records Admin., Code of Federal
`Regulations Incorporation by Reference, J.A. 1879. Other
`jurisdictions have established similar procedures but impose
`additional requirements. For instance, the District of Columbia
`limits incorporation by reference to circumstances where “[t]he
`publication of the document would be impractical due to its
`unusual lengthiness,” D.C. Code § 2-552(c)(1), and requires
`
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`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 7 of 40
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`that “[a] copy of the document incorporated by reference [be]
`available to the public at every public library branch in the
`District of Columbia,” id. § 2-552(c)(3).
`
`Just as the incorporation process varies, so too—and this
`
`is central to the issues before us—do the legal consequences of
`any given incorporation. This is hardly surprising, given that
`federal, state, and local legislatures and agencies have
`incorporated by reference thousands of technical standards.
`Indeed, by ASTM’s own count, the Code of Federal
`Regulations alone has incorporated by reference over 1,200 of
`its standards. ASTM Compl. ¶ 57, J.A. 83. This appeal, which
`concerns ten standards incorporated by reference into law,
`reflects just a sliver of that diversity.
`
`One way in which the incorporated standards vary is how
`
`readily they resemble ordinary, binding law. At one end of this
`spectrum lie incorporated standards that define one’s legal
`obligations just as much as, say, a local building code—except
`that the specific legal requirements are found outside the two
`covers of the codebook. The NFPA 70 tank-barge plug
`specification discussed above, which the relevant regulation
`mentions by name in making compliance mandatory, is one
`such example. See 46 C.F.R. § 39.2009(a)(1)(iii)(B) (providing
`that the plug must “meet[] . . . NFPA 70”). Another is the
`incorporation of ASTM D975-07, the “Standard Specification
`for Diesel Fuel Oils,” into the U.S. Code. It provides that a
`retailer of certain biofuels need not affix any special labels to
`its fuel so long as the fuel “meet[s] ASTM D975 diesel
`specifications.” 42 U.S.C. § 17021(b)(1). These laws impose
`legally binding requirements indistinguishable from, for
`example, a cigarette-labeling obligation, see 15 U.S.C.
`§ 1333(a), except that the federal law imposing that obligation
`expressly specifies, without reference to an external standard,
`exactly what qualifies as a cigarette, see id. § 1332(1).
`
`
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`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 8 of 40
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`At the other end of the spectrum lie standards that serve as
`mere references but have no direct legal effect on any private
`party’s conduct. One example is the incorporation of ASTM
`D86-07, the “Standard Test Method for Distillation of
`Petroleum Products and Liquid Fuels at Atmospheric
`Pressure,” which a federal regulation describes as a
`“[r]eference procedure” used by the Environmental Protection
`Agency and
`regulated motor-vehicle manufacturers
`to
`determine whether the boiling point for certain gasoline used
`for “exhaust and evaporative emission testing” falls within a
`permissible range. 40 C.F.R. § 86.113-04(a)(1). The regulation
`creates only one relevant legal obligation: the regulated entity,
`in testing vehicular emissions, must use gasoline that meets
`specifications expressly laid out within the regulation itself.
`The incorporation of an external standard merely tells the
`regulated entity how it can ensure that the gasoline it uses in
`fact satisfies the codified requirements.
`
`Of course, between those two poles are countless other
`
`varieties of incorporation. Some standards are incorporated for
`the purpose of triggering agency obligations, see, e.g., 42
`U.S.C. § 6833(b)(2)(A) (providing that “[w]henever . . . [the
`American Society of Heating, Refrigerating, and Air
`Conditioning Engineers, Inc., (ASHRAE)] Standard 90.1-
`1989,” which provides energy-efficiency guidelines for
`commercial buildings, “[is] revised, the Secretary [of Energy]
`shall . . . determine whether such revision will improve energy
`efficiency
`in commercial buildings”), or establishing
`regulatory floors, see, e.g., id. § 6833(b)(2)(B)(i) (“If the
`Secretary makes an affirmative determination,” each state shall
`have two years to “certify that it has reviewed and updated the
`provisions of its commercial building code regarding energy
`efficiency” such that its code “meet[s] or exceed[s] [the]
`revised standard.”). Still others, like the “Standards for
`Educational and Psychological Testing” mentioned above,
`
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`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 9 of 40
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`9
`establish criteria that determine one’s eligibility to apply for
`federal educational grants. See 34 C.F.R. §§ 668.141(a),
`668.146(b)(6) (providing that a student may be eligible for
`Higher Education Act fund grants if he or she passes a test that,
`among other
`things, “[m]eet[s] all standards for
`test
`construction provided in the 1999 edition of the Standards for
`Educational and Psychological Testing”).
`
`Put simply, the incorporated standards at issue here vary
`considerably in form, substance, and effect. Indeed, even this
`limited effort to categorize them is surely underinclusive given
`the dearth of record evidence about all the places where even
`the ten standards identified in this appeal may have been
`incorporated by reference into law at the federal, state, and
`local levels. These ten standards, in turn, represent but a
`fraction of the heterogeneity of the hundreds of other
`incorporated standards not at issue in this appeal.
`
`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.
`
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`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 10 of 40
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`10
`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.
`
`
`
`

`

`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 11 of 40
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`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. Based on these liability
`findings, the court issued permanent injunctions prohibiting
`PRO from all unauthorized use of the ten standards identified
`in the summary judgment motions and of ASTM’s registered
`trademarks.
`
`PRO appeals the district court’s injunctions, and the
`underlying partial summary judgment orders. Although “[a]n
`order granting partial summary judgment is usually considered
`a nonappealable interlocutory order,” because this “order
`granted an injunction,” we may consider the entire appeal
`“pursuant to 28 U.S.C. § 1292(a)(1).” Gomez v. Turner, 672
`F.2d 134, 138 n.5 (D.C. Cir. 1982). “We review the district
`court’s grant of summary judgment de novo, applying the same
`standards as the district court and drawing all inferences from
`the evidence in favor of the non-movant.” Estate of Coll-
`Monge v. Inner Peace Movement, 524 F.3d 1341, 1346 (D.C.
`Cir. 2008) (internal quotation marks omitted). We consider the
`copyright issues in Part II and the trademark issues in Part III.
`
`
`
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`

`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 12 of 40
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`II.
`Article I, Section 8, Clause 8, of the Constitution
`
`empowers Congress “To promote the Progress of Science and
`useful Arts, by securing for limited Times to Authors and
`Inventors the exclusive Right to their respective Writings and
`Discoveries.” U.S. Const. art. I, § 8, cl. 8. The very first
`Congress took up that charge in the Copyright Act of 1790,
`which granted authors of certain works “the sole right and
`liberty of printing, reprinting, publishing and vending” those
`works “for the term of fourteen years.” Act of May 31, 1790,
`§ 1, 1 Stat. 124.
`
`In the ensuing two centuries, although the precise contours
`of the Act have changed, Congress’s purpose has remained
`constant:
`
`The enactment of copyright legislation by
`Congress under the terms of the Constitution is
`not based upon any natural right that the author
`has in his writings . . . but upon the ground that
`the welfare of the public will be served and
`progress of science and useful arts will be
`promoted by securing to authors for limited
`periods the exclusive rights to their writings.
`
`H.R. Rep. No. 60-2222, at 7 (1909); see also Sony Corp. of
`America v. Universal City Studios, Inc., 464 U.S. 417, 429
`(1984) (This “limited grant” is “intended to motivate the
`creative activity of authors and inventors by the provision of a
`special reward, and to allow the public access to the products
`of their genius after the limited period of exclusive control has
`expired.”). The challenge with each iteration of the Act, both
`for its drafters and its interpreters, has been to strike the
`“difficult balance between the interests of authors and
`inventors in the control and exploitation of their writings and
`
`
`
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`

`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 13 of 40
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`discoveries on the one hand, and society’s competing interest
`in the free flow of ideas, information, and commerce on the
`other hand.” Sony Corp., 464 U.S. at 429.
`
`Under the current Act, “[c]opyright protection subsists . . .
`
`in original works of authorship fixed in any tangible medium
`of expression.” 17 U.S.C. § 102(a). This copyright, which
`“vests initially in the author or authors of the work,” id.
`§ 201(a), and generally endures for at least “70 years after the
`author’s death,” id. § 302(a), endows authors with “exclusive
`rights” to use or authorize the use of their work in six statutorily
`specified ways, including “reproduc[ing] the copyrighted
`work” and “distribut[ing] copies . . . of the copyrighted work
`to the public,” id. § 106. “Anyone who violates any of the
`exclusive rights of the copyright owner . . . is an infringer of
`the copyright,” id. § 501(a), and may be subject to a number of
`equitable and legal remedies, id. §§ 502-505. Reflecting
`copyright’s balance between private ownership and public
`welfare, the Act has long recognized that certain “fair use[s]”
`of a copyrighted work do not constitute infringement. Id. § 107.
`Not all uses of a copyrighted work are “within the exclusive
`domain of the copyright owner,” the Supreme Court has
`explained, “some are in the public domain.” Sony Corp., 464
`U.S. at 433.
`
`By its plain terms, the Copyright Act says nothing about
`
`what, if anything, happens when a copyrighted work is
`incorporated by reference into federal, state, or local statutes or
`regulations. The SDOs take this statutory silence, along with
`the fact that Congress enacted the current version of the Act
`just years after it authorized federal agencies to incorporate
`works by reference into federal regulations, see Act of June 5,
`1967, Pub. L. No. 90-23, 81 Stat. 54, 54 (codified at 5 U.S.C.
`§ 552(a)(1)) (providing that material “is deemed published in
`the Federal Register when incorporated by reference”), as
`
`
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`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 14 of 40
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`14
`to establish a
`intended
`that Congress
`proof positive
`comprehensive copyright regime that contemplates no effect
`on copyright when works are incorporated by reference into
`law. Accordingly, the SDOs contend that they have a
`straightforward claim of copyright
`infringement:
`they
`registered copyrights to ten ordinary works—the standards at
`issue in this appeal—and PRO invaded their exclusive rights
`when it reproduced and distributed copies of the works on a
`public website. Case closed.
`
`Unsurprisingly, PRO sees it differently. As an initial
`matter, PRO argues that there is a triable question as to whether
`the standards at issue here were ever validly copyrighted given
`the Act’s prohibition on copyrighting “work[s] of the United
`States Government,” 17 U.S.C. § 105, and the fact that
`government employees may have participated in drafting
`certain standards. PRO, however, failed to adequately present
`this claim to the district court and has thus forfeited it. See
`Keepseagle v. Perdue, 856 F.3d 1039, 1053 (D.C. Cir. 2017)
`(explaining that “legal theories not asserted” in the district
`court “ordinarily will not be heard on appeal” (quoting District
`of Columbia v. Air Florida, Inc., 750 F.2d 1077, 1084 (D.C.
`Cir. 1984))). In any event, given PRO submitted no evidence
`that specific language in any of the works was “prepared by an
`officer or employee of the United States Government as part of
`that person’s official duties,” 17 U.S.C. § 101 (defining “work
`of the United States Government”), the argument is meritless.
`
`Aside from the government-work issue, PRO advances
`
`two primary challenges to the SDOs’ copyright claim. First, in
`contrast to the SDOs’ view that standards remain copyrighted
`even after incorporation, PRO contends that incorporation by
`reference makes these works a part of the “law,” and the law
`can never be copyrighted. Allowing private ownership of the
`law, PRO insists, is inconsistent with the First Amendment
`
`
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`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 15 of 40
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`principle that citizens should be able to freely discuss the law
`and a due process notion that citizens must have free access to
`the law. PRO also maintains that the Copyright Act itself, when
`viewed through the lens of these constitutional concerns, also
`supports extinguishing copyright. Second, PRO argues that,
`even assuming the incorporated standards remain copyrighted,
`PRO’s copying qualifies as a fair use because it facilitates
`public discussion about the law—a use within the “public
`domain.”
`
`PRO and the SDOs each seek a bright-line rule either
`prohibiting (the SDOs) or permitting (PRO) all of PRO’s uses
`of every standard incorporated by reference into law. The
`district court, accepting this undifferentiated view of the
`incorporated standards, concluded that incorporation by
`reference had no effect on the works’ copyright and that none
`of PRO’s copying qualified as fair use.
`
`Were we to conclude, contrary to the district court, that the
`SDOs do not prevail as a matter of law on either their reading
`of the scope of copyright or the fair use question, we would
`have to reverse the grant of summary judgment. Although PRO
`raises a serious constitutional concern with permitting private
`ownership of standards essential to understanding legal
`obligations, we think it best at this juncture to address only the
`statutory fair use issue—which may provide a full defense to
`some, if not all, of the SDO’s infringement claims in this
`case—and leave for another day the question of whether the
`Constitution permits copyright to persist in works incorporated
`by reference into law. This approach not only allows us to
`resolve the appeal within the confines of the Copyright Act but
`is also more faithful to our responsibility to avoid “pass[ing] on
`questions of constitutionality . . . unless such adjudication is
`unavoidable.” Spector Motor Service v. McLaughlin, 323 U.S.
`101, 105 (1944). Avoiding the constitutional question is all the
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`more pressing here given that the record reveals so little about
`the nature of any given incorporation or what a constitutional
`ruling would mean for any particular standard. After all, it is
`one thing to declare that “the law” cannot be copyrighted but
`wholly another to determine whether any one of these
`incorporated standards—from the legally binding prerequisite
`to a labeling requirement, see 42 U.S.C. § 17021(b)(1), to the
`purely discretionary reference procedure, see 40 C.F.R.
`§ 86.113-04(a)(1)—actually constitutes “the law.”
`
`Our narrower approach, focusing on fair use, has two
`additional virtues. First, it limits the economic consequences
`that might result from the SDOs losing copyright—which they
`repeatedly emphasize would
`jeopardize
`the continued
`development of high-quality standards, see ASTM Br. 6–8, 22,
`AERA Br. 6, 13—by allowing copying only where it serves a
`public end rather than permitting competitors to merely sell
`duplicates at a lower cost. Second, it avoids creating a number
`of sui generis caveats to copyright law for incorporated
`standards. For instance, we need not determine what happens
`when a regulation or statute is revised to incorporate newer
`versions of a particular standard. Do
`the older, now
`unincorporated versions regain the copyright they might have
`lost with the initial incorporation? Likewise, we need not
`resolve what happens when only part of a standard is
`incorporated by reference into law. Although copyright law
`speaks of “works,” see 17 U.S.C. § 102 (“Copyright protection
`subsists . . . in original works . . . .” (emphasis added)), does a
`partial incorporation cause the entire work to lose copyright or
`just the relevant portions?
`
`To be sure, it may later turn out that PRO and others use
`incorporated standards in a manner not encompassed by the fair
`use doctrine, thereby again raising the question of whether the
`authors of such works can maintain their copyright at all. In our
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`USCA Case #17-7035 Document #1740942 Filed: 07/17/2018 Page 17 of 40
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`view, however, we ought exhaust all remaining statutory
`options and only return to that question, if we must, on a fuller
`record. See Communist Party of U.S. v. Subversive Activities
`Control Board, 351 U.S. 115, 122–25 (1956) (remanding case
`raising constitutional challenges to a federal statute for failure
`to consider certain “new evidence” because the “non-
`constitutional issue must be met at the outset” and “the case
`must be decided on a non-constitutional issue, if the record
`calls for it, without reaching constitutional problems,” id. at
`122); see also Communist Party of U.S. v. Subversive Activities
`Control Board, 367 U.S. 1, 70–72 (1961) (returning, after
`remand, to only those constitutional issues “properly before”
`the Court, id. at 72).
`
` We turn, then, to the fair use defense, which provides that
`“the fair use of a copyrighted work, including such use by
`reproduction in copies . . . for purposes such as criticism,
`comment, news reporting, teaching (including multiple copies
`for classroom use), scholarship, or research, is not an
`infringement of copyright.” 17 U.S.C. § 107. When
`considering whether a particular use is fair, courts must
`consider the following factors:
`
`(1) the purpose and character of the use,
`including whether such use is of a commercial
`nature or is for nonprofit educational purposes;
`
`(2) the nature of the copyrighted work;
`
`(3) the amount and substantiality of the portion
`used in relation to the copyrighted work as a
`whole; and
`
`(4) the effect of the use upon the potential
`market for or value of the copyrighted work.
`
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`USCA Case #17-7035 Document #1740942