Thursday, February 23, 2017

Copyrightability of private standards in federal regulations

Originally published by Susan Ross (US).

On February 2, 2017, a federal trial court judge in Washington, D.C. ruled, in a 55-page opinion, that private standards developing organizations (“SDOs”) do not lose their copyright or trademark protection if a federal regulation adopts their standards.


This case, American Society for Testing and Materials v. Public.Resource.Org, Inc., Case. No. 13-cv-1215 (TSC) (D.D.C. Feb. 2, 2017), is actually a consolidation of two cases brought by six private SDOs:

  • American Education Research Association Inc.
  • American Psychological Association Inc.
  • American Society of Heating, Refrigerating and Air-Conditioning Engineers
  • American Society for Testing and Materials
  • National Council on Measurement in Education, Inc. and
  • National Fire Protection Association Inc.

These SDOs develop private-sector standards for different industries including e.g. educational and psychological testing standards, product specifications, methods for manufacturing and testing materials, safety practices, and other best practices or guidelines.

5 U.S.C. § 552 permits federal agencies to incorporate “voluntary consensus standards” into federal regulations by reference. In 1995, Congress directed federal agencies to use privately developed technical voluntary consensus standards, in the National Technology Transfer and Advancement Act of 1994 (“NTTAA”).  As a result, the standards created by the SDOs were incorporated into various federal regulations.

The defendant, Public Resource, is a not-for-profit entity whose stated mission is to “make the law and other government materials more widely available so that people . . . can easily read and discuss laws and the operations of government.” Public Resource obtained copies of the SDOs’ standards that were incorporated into federal requirements. Public Resource then scanned those photocopies into searchable, electronic-reader-friendly versions and made them available free of charge on the Public Resource website.

SDOs typically make these incorporated standards publicly available on a “read only” basis (which sometimes means no printing or downloading), and will offer downloadable copies for sale.  The incorporated standards are also available to the public via an in-person visit to the Office of the Federal Register in Washington, D.C., or by visiting the agency that incorporated the standards.

The six SDOs sued Public Resource, claiming both copyright infringement and trademark infringement. Public Resource responded by raising a host of issues, none of which were successful.

The Ruling

A.  Copyright Matters

Public Resource first alleged the private standards were not eligible for copyright protection because they were technical standards. The judge ruled that, although the standards were technical, they still contained “markings of creativity,” making them eligible for copyright registration.  The court also pointed out that copyright protection did not prevent anyone from using/implementing the standards, only from copying the written documents.

Public Resource next argued that the works went into the public domain when they were incorporated into federal regulations. The court rejected this argument, ruling that § 105 of the Copyright Act applied only to works prepared by an officer or employee of the U.S. government as part of that person’s official duties.  All other works were to be evaluated on a case-by-case basis.  Because 5 U.S.C. § 552 was enacted 10 years prior to the current version of § 105 of the Copyright Act, the court found that Congress had  “carefully weighed the competing policy goals of making incorporated works publicly available while also preserving the incentive and protection granted by copyright, and it weighed in favor of preserving the copyright system.”  Congress also required that works incorporated by reference be “publicly available,” which federal regulations define to include being available in hard copy at the Office of Federal Register and/or the incorporating agency.  Congress does not require that “publicly available” documents be available without charge.  The court found that if “Congress intended to revoke the copyrights of such standards when it passed the NTTAA, or at any time before or since, it surely would have done so expressly.”

Public Resource then raised the affirmative defense of fair use. The court ruled against Public Resource on all four factors of faire use under § 107 of the Copyright Act:

  • Purpose and Character of the Defendant’s Use. Public Resource claimed that its use was transformative by (1) “providing free access to ‘the Law’”; (2) “enabling others to use software to analyze the standards”; and (3) “enabling those with visual impairments to use text-to-speech software.”  With respect to point (1), the court ruled that Public Resource was not making copies in order to comply with legal requirements and, although Public Resource did not earn any revenues directly from displaying the standards, “its activity still bears ‘commercial’ elements given that it actively engaged in distributing identical standards online in the same consumer market.”  With respect to points (2) and (3), the court found Public Resource’s simple repackaging was not transformative.
  • Nature of the Copyrighted Work. As described above, the court found that the standards, although technical, had elements of creativity.  The court stated:  “Plaintiffs’ standards are vital to the advancement of scientific progress in the U.S. and exactly the type of expressive work that merits full protection under the Constitution and the Copyright Act.”
  • Amount and Substantiality of the Portions Used. Everyone agreed that Public Resource used 100% of the copied standards.
  • Effect on the Potential Market. The court first found that the defendant engaged in “mere duplication” for commercial purposes and therefore harm to the SDOs could be inferred.  In this case, the court also found that inference especially appropriate because consumers were presented with the option to purchase a copy of the standards from plaintiffs or to download a PDF at no cost from the defendant.  Therefore, the defendant did not meet its burden to establish that its conduct could not even potentially harm the market.

With respect to the claim of contributory copyright infringement, the court denied the summary judgment motions from each party. The court found that, although the website with the Public Resource copy of the standards was accessed 4,164 times, “there is no basis for the court to determine that accessing a website is equivalent to copying or violating any of the exclusive rights under § 106” of the Copyright Act.

B.  Trademark Matters

Some of the SDOs had federally registered their trademarks and logos, which were included in Public Resource’s copies of the standards. The court found that consumer confusion as to the source of the standards was likely, so Public Resource’s defense of nominative fair use did not apply.

C.  Relief

The court found injunctive relief appropriate in this case. Public Resource was permanently enjoined from violating plaintiffs’ copyrights and from using plaintiffs’ trademarks in connection with the posting of the standards online or elsewhere.


Public Resource has stated that it will appeal the court’s ruling, so we will monitor the progress of the case.

The post Copyrightability of private standards in federal regulations appeared first on The Brand Protection Blog.

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