Am. Soc'y for Testing & Materials v. Public.Resource.Org, Inc.

82 F.4th 1262

AMERICAN SOCIETY FOR TESTING AND MATERIALS, et al., Appellants v. PUBLIC.RESOURCE.ORG, INC., Appellee

No. 22-7063

United States Court of Appeals, District of Columbia Circuit

Argued March 20, 2023

Decided September 12, 2023

Appeal from the United States District Court for the District of Columbia (No. 1:13-cv-01215)

Kelly M. Klaus argued the cause for appellants. With him on the briefs were J. Kevin Fee, Jane W. Wise, Stanley J. Panikowski, Donald B. Verrilli, Jr., Rachel G. Miller-Ziegler, Jeffrey S. Bucholtz, David P. Mattern, Kenneth L. Steinthal, and Rose Leda Ehler. Alexandra C. Lim entered an appearance.

Gary D. Sesser was on the brief for amici curiae American National Standards Institute and Six Standards Organizations in support of appellants.

Jack R. Bierig was on the brief for amici curiae American Medical Association, et al. in support of appellants.

Nancy E. Wolff and Scott J. Sholder were on the brief for amicus curiae Copyright Alliance in support of appellants. Brian A. Coleman entered an appearance.

Corynne McSherry argued the cause for appellee. With her on the brief were Andrew P. Bridges, Matthew B. Becker, Mitchell L. Stoltz, and David E. Halperin.

Charles Duan was on the brief for amici curiae Former Government Publishing Officials Raymond A. Mosley and Robert C. Tapella in support of appellee.

Blake E. Reid was on the brief for amicus curiae Prime Access Consulting, Inc., in support of appellee.

Harold Feld was on the brief for amici curiae Library Futures Institute, et al., in support of appellee.

Erik Stallman and Jennifer M. Urban were on the brief for amici curiae Intellectual Property Law Professors in support of appellee.

Gabriel Rottman, Bruce D. Brown, and Katie Townsend were on the brief for amici curiae Reporters Committee for Freedom of the Press and 11 Media Organizations in support of appellee.

Joseph C. Gratz was on the brief for amicus curiae County of Sonoma in support of appellee.

Jef Pearlman was on the brief for amicus curiae Congresswoman Zoe Lofgren in support of appellee.

Jacob M. Karr was on the brief for amicus curiae National Association for the Advancement of Colored People in support of appellee.

Nina Srejovic, Rebecca Chambers, and Teague Paterson were on the brief for amicus curiae American Federation of State, County and Municipal Employees in support of appellee.

Before: Henderson, Pillard, and Katsas, Circuit Judges.

Katsas, Circuit Judge:

Many private organizations develop and copyright suggested technical standards for an industry, product, or problem. Federal and state governments often incorporate such standards into law. This case presents the question whether third parties may make the incorporated standards available for free online. We hold that the non-commercial dissemination of such standards, as incorporated by reference into law, constitutes fair use and thus cannot support liability for copyright infringement.

I

Three standard-developing organizations raised copyright infringement claims against a defendant for posting online their copyrighted standards, as incorporated into law. The district court granted summary judgment to the organizations, but we reversed and remanded for further factual development. Am. Soc'y for Testing & Materials v. Public.Resource.Org, Inc., 896 F.3d 437 (D.C. Cir. 2018) (ASTM II). On remand, the district court held that the non-commercial posting of standards incorporated by reference into law is fair use.

ASTM II gave detailed background information on standard-developing organizations, incorporation by reference, and the genesis of this dispute. 896 F.3d at 440-45. We give only a brief overview here.

A

Various private organizations promulgate standards establishing best practices for their respective industries or products. These organizations copyright their standards and generate revenue by selling copies. For example, the National Fire Protection Association (NFPA), one plaintiff in this suit, develops standards addressing the prevention of fire, electrical, and related hazards. One such standard, NFPA 10, addresses the design, inspection, maintenance, and testing of portable fire extinguishers. The NFPA sells hard copies of its standards as well as a subscription service that allows digital access.

Federal agencies may incorporate privately developed standards into law by referencing them in agency rulemaking. Incorporation by reference (IBR) in a published rule allows agencies to satisfy the requirement to publish rules in the Federal Register without reproducing the standards themselves. 5 U.S.C. § 552(a)(1). The Code of Federal Regulations contains more than 27,000 incorporations of privately developed standards by reference. See Standards Incorporated by Reference Database, Nat'l Inst. of Safety & Tech., https://sibr.nist.gov [perma.cc/W4BN-HLZG] (last visited Aug. 30, 2023). For example, 29 C.F.R. § 1915.507(b)(1) requires shipyard operators to select, maintain, and test portable fire extinguishers in accordance with NFPA 10, which is incorporated by reference in 29 C.F.R. § 1915.5(i)(6). States and municipalities also have incorporated thousands of standards by reference into their regulations.

Congress has authorized and encouraged the use of IBR because it allows agencies to avoid duplication of effort and helps conform legal standards to industry best practices. See, e.g., National Technology Transfer and Advancement Act of 1995, Pub. L. No. 104-113, § 12(d)(1), 110 Stat. 775, 783. The Office of the Federal Register has promulgated regulations and guidance governing the IBR process. See 1 C.F.R. §§ 51.1-11. As its IBR Handbook explains, "the legal effect of IBR is that the referenced material is treated as if it were published in the Federal Register and the CFR. When IBRed, this material has the force and effect of law." J.A. 9511 (cleaned up).

B

The plaintiffs in this case are three standard-developing organizations: the American Society for Testing and Materials (ASTM), the American Society of Heating, Refrigerating, and Air-Conditioning Engineers (ASHRAE), and the NFPA. The defendant, Public.Resource.Org, is a nonprofit group that disseminates legal and other materials. It has posted on its websites copies of hundreds of incorporated standards—including standards produced and copyrighted by the plaintiffs. As a result, any internet user may view, download, or print these standards for free.

In 2013, the plaintiffs sued Public Resource for copyright infringement. The plaintiffs moved for summary judgment on their claims as to nine of the disputed standards. The district court granted the motion and enjoined Public Resource from posting these standards. The court rejected a defense that posting incorporated standards constitutes fair use. ASTM v. Public.Resource.Org, Inc., No. 13-cv-1215, 2017 WL 473822 (D.D.C. Feb. 2, 2017) (ASTM I).

This Court reversed and remanded for further consideration of the fair-use defense. We faulted the parties for failing to distinguish among the disputed standards in conducting the fair-use analysis, and we instructed the parties on remand to "develop a fuller record regarding the nature of each of the standards at issue, the way in which they are incorporated, and the manner and extent to which they were copied." ASTM II, 896 F.3d at 449. We provided several guideposts for the fair-use analysis, three of which tended to favor the defense. See id. at 448-54. But given the differences among the disputed standards and the thinness of the record before us, we thought it prudent "to remand the case for the district court to further develop the factual record and weigh the factors as applied to [Public Resource's] use of each standard in the first instance." Id. at 448-49.

On remand, the parties developed more information about 217 incorporated standards. Each of them has been superseded as a recommended industry standard, yet most remain incorporated into law. On cross-motions for summary judgment, the district court held that the posting of 184 standards was fair use, the posting of 32 standards was not fair use, and the posting of one standard was fair use in part. ASTM v. Public.Resource.Org, Inc., 597 F. Supp. 3d 213 (D.D.C. 2022) (ASTM III). In a nutshell, the court found fair use as to the posting of standards incorporated into law and infringement as to the standards not so incorporated. Id. at 232-41. The court's opinion included a 187-page, single-spaced appendix separately analyzing each of the disputed standards. Despite finding infringement as to the unincorporated standards, the court denied injunctive relief based on its finding that Public Resource intends to post only incorporated standards and thus would voluntarily take down unincorporated ones in response to an infringement determination. Id. at 245-47.

The plaintiffs appealed, but Public Resource did not. We have jurisdiction under 28 U.S.C. § 1292(a)(1). We review the grant of summary judgment de novo, ASTM II, 896 F.3d at 445, and the denial of injunctive relief for abuse of discretion, Doe v. Mattis, 889 F.3d 745, 751 (D.C. Cir. 2018).

II

The Copyright Act protects "original works of authorship fixed in any tangible medium of expression." 17 U.S.C. § 102(a). The owner of a valid copyright has the exclusive right to reproduce, distribute, or display the copyrighted work. Id. § 106. To prove infringement, a plaintiff must show (1) its ownership of a valid copyright and (2) the defendant's copying of original elements of the work. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).

Fair use is an affirmative defense to a claim of copyright infringement. Originally a creature of common law, it is now codified at 17 U.S.C. § 107, which provides:

[T]he fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of

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