United States Court of Appeals, District of Columbia Circuit
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.
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.
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.
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.
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
Robert Denham, Jr., was on the brief for amicus curiae
American Insurance Association in support of appellees.
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.
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.
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.
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.
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
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.
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.
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).
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.
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).
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.
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
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