United States Court of Appeals, District of Columbia Circuit

“ 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. ”

“ 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. ”

“ Allowing private ownership of the law, PRO insists, is inconsistent with the First Amendment 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.” ”

“ 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.” ”

“ Even our brief consideration of just a few of the standards at issue in this appeal reveals that it will not always be easy to test whether the purpose and character of each of PRO’s uses weigh in favor of finding fair use but, as the Supreme Court has remarked, “ [t] he task is not to be simplified with bright-line rules, for the statute, like the doctrine it recognizes, calls for case-by-case analysis.” ”

“ To be sure, as we have explained, a proper accounting of the variation among these incorporated standards and of the fact that several are essential to understanding one’s legal obligations suggests that, in many cases, it may be fair use for PRO to reproduce part or all of a technical standard in order to inform the public about the law. In the end, however, whether PRO’s use as to each standard at issue in this appeal qualifies as a fair use remains for the district court to determine. ”

“ See PRO Br. 43 (explaining that “ [t] here is no better way to teach the law to the public than to provide the public with the law”) ; ASTM Br. 34 (“PRO’s purpose is to enable members of the public to obtain copies of [the standards] .”) . More fundamentally, the district court failed to account for the variation among the standards at issue and afford due consideration to the particular legal status of each incorporated work. That is, it failed to consider each fair use claim “on its own facts.” ”

“ 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. ”

“ 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. ”

“ 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. ”

“ And, even the courts of appeals that agree about when to test nominative fair use disagree about how precisely to apply the factors. On the one hand, the Ninth Circuit had held that the three nominative fair use factors supplant the ordinary multi-factor likelihood of confusion test. New Kids, 971 F.2d at 308. On the other, the Second Circuit, although “recogniz [ing] that many of the [likelihood of confusion] factors are a bad fit” for nominative fair use cases, has held that the three factors should be considered in addition to the ordinary likelihood of confusion factors. ”

“ 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. ”

“ A prototypical example of nominative fair use would be where “an automobile repair shop specializing in foreign vehicles runs an advertisement using the trademarked names of various makes and models to highlight the kind of cars it repairs.” Id. (citing New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306–07 (9th Cir. 1992) ) . Permitting such use accommodates situations where it would be “virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark.” ”

“ 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. ”

“ Mindful of the statute’s stated goal to protect such “purposes such as criticism [and] comment,” id. § 107, the Supreme Court has explained that the fact that an infringing “publication was commercial as opposed to nonprofit ... tends to weigh against a finding of fair use,” Harper & Row, 471 U.S. at 562, 105 S.Ct. 2218. The district court found that even though PRO “did not earn revenue directly from the display of the standards, its activity still bears ‘commercial’ elements given that it actively engaged in distributing identical standards online in the same consumer market.” ”

“ Courts often reduce this inquiry to the question of whether the work is factual or fictional, as “ [t] he law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy.” ”

“ Finally, as to the third factor—whether the user has suggested sponsorship or endorsement by the trademark holder—the disclaimers PRO appends to many of its copies of the standards may well fail to adequately eliminate the possibility a consumer would assume sponsorship or endorsement by ASTM, but that hardly means that no disclaimer could cure that risk. ”

“ All of the works at issue here fall at the factual end of the fact–fiction spectrum, which counsels in favor of finding fair use. But, of course, the factual or fictional nature of a work is just one heuristic for assessing whether the work “falls within the core of ... copyright’s protective purposes.” Campbell, 510 U.S. at 586, 114 S.Ct. 1164. Focusing on that deeper question, the district court concluded that because technical standards “are vital to the advancement of scientific progress in the U.S.,” they are “exactly the type of expressive work that warrants full protection under ... ”

“ For instance, “ [i] n the context of news reporting and analogous activities ... the need to convey information to the public accurately may in some instances make it desirable and consonant with copyright law for a defendant to faithfully reproduce an original work without alteration.” ”

“ Put simply, trademarks “‘encourage [ ] the production of quality products,’ and simultaneously discourage [ ] those who hope to sell inferior products by capitalizing on a consumer's inability quickly to evaluate the quality of an item offered for sale.” Id. (quoting McCarthy § 2.01 [2] ) .
The SDOs who brought the ASTM litigation have registered numerous trademarks, including the “ASTM word mark,” “the ASTM INTERNATIONAL word mark,” and two stylized ASTM logos, which they place on the cover pages of their technical standards. ”

“ That said, the SDOs are right to suggest that there may be some adverse impact on the market for the copyrighted works PRO reproduced on its website. But it remains unclear from this record just how serious that impact is.
In our view, when developing a fuller record on this issue on remand, the district court should consider at least three questions. First, the SDOs, by their own admission, make copies of their standards freely available online in controlled reading rooms. See ASTM Br. 8. ”