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American Society for Testing And Materials v. Public.Resource.Org, Inc.

United States Court of Appeals, District of Columbia Circuit

July 17, 2018

American Society for Testing and Materials, et al., Appellees
Public.Resource.Org, Inc., Appellant

          Argued May 14, 2018

          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.

          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.


          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.


         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.

         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 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.

         When agencies or legislatures incorporate private 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 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).

         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, 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, ...

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