82 F.4th 1262
D.C. Cir.2023Background
- Plaintiffs (ASTM, ASHRAE, NFPA) are standard-developing organizations that copyright technical standards and sell access; many of their standards are incorporated by reference (IBR) into federal and state regulations, giving them the "force and effect of law."
- Public.Resource.Org (Public Resource), a nonprofit that posts legal materials for free, posted hundreds of standards that had been incorporated by reference so the public could view/download them without charge.
- Plaintiffs sued for copyright infringement; the district court initially enjoined Public Resource, this Court reversed and remanded for a fact-specific fair-use analysis (ASTM II), and the case returned to the district court.
- On remand the district court analyzed 217 standards and held Public Resource’s posting of 184 incorporated standards was fair use, 32 unincorporated standards infringed, and one was partly fair use; it denied injunctive relief as to the 32 unincorporated standards because Public Resource removed them and said it would post only incorporated materials.
- The D.C. Circuit affirmed: noncommercial posting of standards that have been validly incorporated by reference into law is a fair use; the court upheld the district court’s exercise of discretion in denying an injunction as to the unincorporated standards.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether posting privately copyrighted standards incorporated by reference into law is fair use | Plaintiffs: IBR does not extinguish their copyrights; they may charge for access and posting harms their markets | Public Resource: posting is nonprofit, transformative (publishing the law), and necessary for public access to legal materials | Posting incorporated standards for noncommercial public access is fair use |
| Role of the first three §107 factors (purpose/character; nature; amount) | Plaintiffs: whole-work copying and factual nature still favor plaintiffs; must distinguish "essential" vs background material | Public Resource: nonprofit, transformative purpose and factual/legal character of incorporated text favor fair use; reproducing the whole is reasonable to show the law | First three factors strongly favor Public Resource when the standard is incorporated into law |
| Market effect (§107(4)) — does free posting substantially harm plaintiffs’ market? | Plaintiffs: free identical copies will reduce demand and revenue | Public Resource: plaintiffs update standards frequently; no quantifiable evidence of harm; public benefit of access to law offsets market concerns | Fourth factor is equivocal: record does not show substantial, quantifiable market harm and public benefits are significant |
| Whether an injunction was proper for standards found not to be incorporated | Plaintiffs: infringement finding for 32 standards calls for injunctive relief | Public Resource: promptly removed unincorporated items and intends to post only incorporated texts, so injunction is unnecessary | District court did not abuse discretion in denying injunction given Public Resource’s conduct and intent |
Key Cases Cited
- Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (originality required for copyright; elements of infringement)
- Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985) (fair use factors and context-sensitive analysis)
- Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) (purpose and amount considerations in fair use)
- Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (1984) (whole-work copying can be fair when reasonably related to purpose)
- Google LLC v. Oracle Am., Inc., 141 S. Ct. 1183 (2021) (noncommercial character favors fair use)
- Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 143 S. Ct. 1258 (2023) (focus on whether secondary use has different purpose/character)
- eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006) (injunctive relief in intellectual-property cases requires equitable discretion)
- Georgia v. Public.Resource.Org., Inc., 140 S. Ct. 1498 (2020) (access to the law and public interest in knowing legal text)
- American Soc'y for Testing & Materials v. Public.Resource.Org, Inc., 896 F.3d 437 (D.C. Cir. 2018) (prior D.C. Circuit opinion directing remand for fact development on fair use)