896 F.3d 437
D.C. Cir.2018Background
- Private Standards Developing Organizations (SDOs) create and copyright technical standards; many are incorporated by reference into federal, state, or local law.
- Public.Resource.Org (PRO) scanned and posted online copies of numerous standards that had been incorporated by reference; some copies were modified for accessibility.
- Plaintiffs (ASTM, NFPA, ASHRAE, AERA, etc.) sued PRO for copyright and trademark infringement; the district court granted partial summary judgment to plaintiffs and issued permanent injunctions against PRO.
- On appeal, the D.C. Circuit reviewed copyright fair-use and Lanham Act issues, vacated the injunctions, reversed the partial summary judgment, and remanded for further factual development.
- The court expressly avoided resolving the constitutional question whether works incorporated by reference into law lose copyright; it limited decision to fair use and nominative trademark defenses.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether copyrights persist in standards once incorporated by reference into law | Copyright survives incorporation; PRO infringed by reproducing registered works | Incorporation makes the text "the law," which cannot be privately owned; alternatively fair use applies | Court avoided deciding copyright-persistence; remanded on fair use grounds (genuine fact issues) |
| Whether PRO's reproduction was fair use under 17 U.S.C. § 107 | Wholesale copying not fair use; harms market for standards | Distribution furthers public access and discussion of law; many uses are transformative or noncommercial | Court held material factual disputes exist; fair use may apply in many circumstances and remanded for case-by-case analysis |
| Scope of "purpose and character" and "transformative" inquiry where works are incorporated into law | Standards are expressive works deserving full protection | Reproducing legal text to inform public can be transformative even if verbatim | Court: factor analysis depends on how each standard is incorporated and whether full text is essential; remand required |
| Trademark claims and nominative fair use (Lanham Act) | PRO's reproduction of logos and marks likely causes confusion and misattributes errors to SDOs | Use of marks is nominative (identification of standards); disclaimers or limited use can avoid confusion | Court: Dastar does not bar claims here because PRO’s copies allegedly introduced errors; district court erred by not applying nominative fair use factors; remand to assess factors and narrow remedies |
Key Cases Cited
- Banks v. Manchester, 128 U.S. 244 (1888) (judicial opinions as authoritative statements of law are free for publication)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) (Lanham Act does not create a cause of action for uncredited copying of public-domain works where origin of tangible goods is at issue)
- Campbell v. Acuff‑Rose Music, Inc., 510 U.S. 569 (1994) (four-factor fair use framework; transformative use central)
- Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539 (1985) (fair use factors and limits on copying unpublished material)
- Veeck v. Southern Building Code Congress Int'l, Inc., 293 F.3d 791 (5th Cir. 2002) (model codes adopted into law enter the public domain)
- Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984) (copyright’s limited grant and public-domain considerations)
- Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999) (abuse-of-discretion standard for expert testimony admission)