American Society for Testing v. Public.Resource.Org, Inc. , 896 F.3d 437 ( 2018 )

United States Court of Appeals
FOR THE DISTRICT OF COLUMBIA CIRCUIT
Argued May 14, 2018 Decided July 17, 2018
No. 17-7035
AMERICAN SOCIETY FOR TESTING AND MATERIALS, ET AL.,
APPELLEES
v.
PUBLIC.RESOURCE.ORG, INC.,
APPELLANT
Consolidated with 17-7039
Appeals from the United States District Court
for the District of Columbia
(No. 1:13-cv-01215)
(No. 1:14-cv-00857)
Corynne McSherry argued the cause for appellant. With
her on the briefs were Andrew P. Bridges, Matthew B. Becker,
Mitchell L. Stoltz, and David Halperin.
Adina H. Rosenbaum and Allison M. Zieve were on the
brief for amici curiae Public Citizen, Inc., et al. in support of
appellant.
Charles Duan was on the brief for amici curiae Sixty-Six
Library Associations, et al. in support of appellant.
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Catherine R. Gellis was on the brief for amici curiae
Members of Congress in support of appellant.
Samuel R. Bagenstos was on the brief for amici curiae
Intellectual Property Professors in support of appellant.
Phillip R. Malone and Jeffrey T. Pearlman were on the
brief for amicus curiae Sina Bahram in support of appellant.
Donald B. Verrilli, Jr., argued the cause for appellees.
With him on the brief for appellees American Society for
Testing and Materials, et al. were Allyson N. Ho, Anne Voigts,
Joseph R. Wetzel, J. Blake Cunningham, Kelly M. Klaus, Rose
L. Ehler, and J. Kevin Fee.
John I. Stewart Jr. and Clifton S. Elgarten were on the
brief for appellees American Educational Research
Association, Inc., et al. Jeffrey S. Bucholtz and Michael F.
Clayton entered appearances.
V. Robert Denham, Jr., was on the brief for amicus curiae
American Insurance Association in support of appellees.
Bonnie Y. Hochman Rothell was on the brief for amici
curiae American National Standards Institute, Inc., and Ten
Standards Organizations in support of appellees.
Anthony J. Dreyer was on the brief for amicus curiae
International Trademark Association in support of appellees.
Jack R. Bierig was on the brief for amici curiae American
Medical Association, et al. in support of appellees.
Before: TATEL, WILKINS, and KATSAS, Circuit Judges.
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Opinion for the Court filed by Circuit Judge TATEL.
Concurring opinion filed by Circuit Judge KATSAS.
TATEL, Circuit Judge: 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. Federal, state, and
local governments, however, have incorporated by reference
thousands of these standards into law. The question in this case
is whether private organizations whose standards have been
incorporated by reference can invoke copyright and trademark
law to prevent the unauthorized copying and distribution of
their works. Answering yes, the district court granted partial
summary judgment in favor of the private organizations that
brought this suit and issued injunctions prohibiting all
unauthorized reproduction of their works. In doing so, the court
held that, notwithstanding serious constitutional concerns,
copyright persists in incorporated standards and that the
Copyright Act’s “fair use” defense does not permit wholesale
copying in such situations. The court also concluded that the
use of the private organizations’ trademarks ran afoul of the
Lanham Act and did not satisfy the judicial “nominative fair
use” exception. Because the district court erred in its
application of both fair use doctrines, we reverse and remand,
leaving for another day the far thornier question of whether
standards retain their copyright after they are incorporated by
reference into law.
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I.
Ever operated a tank barge and wondered what power
source you would need for your cargo tank’s liquid overfill
protection system to comply with the law? Probably not. But if
you did, you might consider thumbing through the Code of
Federal Regulations, where you would discover that one option
is to hook up to an off-barge facility, provided that your system
has “a 120-volt, 20-ampere explosion-proof plug that meets . . .
NFPA 70, Articles 406.9 and 501-145.” 46 C.F.R.
§ 39.2009(a)(1)(iii)(B). Dig deeper and you would learn that
NFPA 70 is not some obscure rule or regulation or agency
guidance document but is instead another name for the
“National Electrical Code,” a multi-chapter technical standard
prepared by the National Fire Protection Association (the
eponymous “NFPA”), detailing best practices for “electrical
installations.” Complaint ¶ 66, American Society for Testing &
Materials v. Public.Resource.Org, Inc. (ASTM), No. 1:13-cv-
01215 (D.D.C. Aug. 6, 2013) (“ASTM Compl.”), Dkt. No. 1,
Joint Appendix (J.A.) 86. Parts of NFPA 70 have been
incorporated into the statutes or regulations of at least forty-
seven states and, as we have just seen, the federal government.
American Insurance Ass’n Amicus Br. 5.
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.
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Technical standards are as diverse as they are many,
addressing everything from product specifications and
installation methods to testing protocols and safety guidelines.
Take, for instance, the more than 12,000 standards developed
by the American Society for Testing and Materials (ASTM), a
plaintiff-appellee here. Its standards establish best practices
and specifications in a wide variety of fields, including
consumer products, textiles, medical services, electronics,
construction, aviation, and petroleum products. ASTM Compl.
¶ 48, J.A. 81. Three other plaintiffs-appellees, the American
Educational Research Association, Inc., the American
Psychological Association, Inc., and the National Council on
Measurement in Education, Inc. (collectively, “AERA”), have
collaborated to jointly produce a single volume, “Standards for
Educational and Psychological Testing,” a collection of
standards that aims “to promote the sound and ethical use of
tests and to provide a basis for evaluating the quality of testing
practices.” AERA, Standards for Educational and
Psychological Testing 1 (1999), J.A. 2245.
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. In fact, federal law encourages
precisely this practice. See National Technology Transfer and
Advancement Act of 1995, Pub. L. No. 104-113, § 12, 110 Stat.
775, 782 (1996) (codified as amended at 15 U.S.C. § 272(b)(3))
(authorizing the National Institute of Standards and
Technology “to coordinate the use by Federal agencies of
private sector standards, emphasizing where possible the use of
standards developed by private, consensus organizations”). As
the Office of Management and Budget has explained,
incorporating private standards “eliminate[s] the cost to the
Federal government of developing its own standards” and
“further[s] the reliance upon private sector expertise to supply
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the Federal government with cost-efficient goods and
services.” Office of Mgmt. & Budget, Exec. Office of the
President, OMB Circular A-119: Federal Participation in the
Development and Use of Voluntary Consensus Standards and
in Conformity Assessment Activities 14 (2016), 2016 WL
7664625.
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.
For example, consider the process employed by the federal
government. If an agency wishes to incorporate a standard into
a final rule, it must submit a formal request to the Director of
the Federal Register. 1 C.F.R. § 51.5(b). In that request, the
agency must, among other things, “[d]iscuss . . . the ways that
the [incorporated] materials . . . are reasonably available to
interested parties and how interested parties can obtain the
materials,” id. § 51.5(b)(2), and “[e]nsure that a copy of the
incorporated material is on file at the Office of the Federal
Register,” id. § 51.5(b)(5). Once the Director approves the
incorporation, provided that the “matter [is] reasonably
available to the class of persons affected,” it “is deemed
published in the Federal Register,” 5 U.S.C. § 552(a)(1), and,
“like any other properly issued rule, has the force and effect of
law,” Nat’l Archives & Records Admin., Code of Federal
Regulations Incorporation by Reference, J.A. 1879. Other
jurisdictions have established similar procedures but impose
additional requirements. For instance, the District of Columbia
limits incorporation by reference to circumstances where “[t]he
publication of the document would be impractical due to its
unusual lengthiness,” D.C. Code § 2-552(c)(1), and requires
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that “[a] copy of the document incorporated by reference [be]
available to the public at every public library branch in the
District of Columbia,” id. § 2-552(c)(3).
Just as the incorporation process varies, so too—and this
is central to the issues before us—do the legal consequences of
any given incorporation. This is hardly surprising, given that
federal, state, and local legislatures and agencies have
incorporated by reference thousands of technical standards.
Indeed, by ASTM’s own count, the Code of Federal
Regulations alone has incorporated by reference over 1,200 of
its standards. ASTM Compl. ¶ 57, J.A. 83. This appeal, which
concerns ten standards incorporated by reference into law,
reflects just a sliver of that diversity.
One way in which the incorporated standards vary is how
readily they resemble ordinary, binding law. At one end of this
spectrum lie incorporated standards that define one’s legal
obligations just as much as, say, a local building code—except
that the specific legal requirements are found outside the two
covers of the codebook. The NFPA 70 tank-barge plug
specification discussed above, which the relevant regulation
mentions by name in making compliance mandatory, is one
such example. See 46 C.F.R. § 39.2009(a)(1)(iii)(B) (providing
that the plug must “meet[] . . . NFPA 70”). Another is the
incorporation of ASTM D975-07, the “Standard Specification
for Diesel Fuel Oils,” into the U.S. Code. It provides that a
retailer of certain biofuels need not affix any special labels to
its fuel so long as the fuel “meet[s] ASTM D975 diesel
specifications.” 42 U.S.C. § 17021(b)(1). These laws impose
legally binding requirements indistinguishable from, for
example, a cigarette-labeling obligation, see 15 U.S.C.
§ 1333(a), except that the federal law imposing that obligation
expressly specifies, without reference to an external standard,
exactly what qualifies as a cigarette, see id. § 1332(1).
 8
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. 40 C.F.R. § 86.113-04(a)(1). The regulation
creates only one relevant legal obligation: the regulated entity,
in testing vehicular emissions, must use gasoline that meets
specifications expressly laid out within the regulation itself.
The incorporation of an external standard merely tells the
regulated entity how it can ensure that the gasoline it uses in
fact satisfies the codified requirements.
Of course, between those two poles are countless other
varieties of incorporation. Some standards are incorporated for
the purpose of triggering agency obligations, see, e.g., 42
U.S.C. § 6833(b)(2)(A) (providing that “[w]henever . . . [the
American Society of Heating, Refrigerating, and Air
Conditioning Engineers, Inc., (ASHRAE)] Standard 90.1-
1989,” which provides energy-efficiency guidelines for
commercial buildings, “[is] revised, the Secretary [of Energy]
shall . . . determine whether such revision will improve energy
efficiency in commercial buildings”), or establishing
regulatory floors, see, e.g., id. § 6833(b)(2)(B)(i) (“If the
Secretary makes an affirmative determination,” each state shall
have two years to “certify that it has reviewed and updated the
provisions of its commercial building code regarding energy
efficiency” such that its code “meet[s] or exceed[s] [the]
revised standard.”). Still others, like the “Standards for
Educational and Psychological Testing” mentioned above,
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establish criteria that determine one’s eligibility to apply for
federal educational grants. See 34 C.F.R. §§ 668.141(a),
668.146(b)(6) (providing that a student may be eligible for
Higher Education Act fund grants if he or she passes a test that,
among other things, “[m]eet[s] all standards for test
construction provided in the 1999 edition of the Standards for
Educational and Psychological Testing”).
Put simply, the incorporated standards at issue here vary
considerably in form, substance, and effect. Indeed, even this
limited effort to categorize them is surely underinclusive given
the dearth of record evidence about all the places where even
the ten standards identified in this appeal may have been
incorporated by reference into law at the federal, state, and
local levels. These ten standards, in turn, represent but a
fraction of the heterogeneity of the hundreds of other
incorporated standards not at issue in this appeal.
Defendant-Appellant Public.Resource.Org, Inc. (PRO), is
a non-profit organization whose self-proclaimed mission is “to
make the law and other government materials more widely
available.” Malamud Decl. ¶ 4, ASTM, No. 1:13-cv-01215
(D.D.C. Dec. 21, 2015), Dkt. No. 121-5, J.A. 1070. In
furtherance of that goal, PRO distributed on the internet
technical standards that had been incorporated by reference
into law. To do this, PRO purchased copies of incorporated
standards, which the SDOs make available for between $25 and
$200 per standard, scanned them into digital files, appended
cover sheets explaining PRO’s mission and the source of the
standards, and then posted the documents to a public website.
In some cases, PRO would modify a file so that the text of the
standard could more easily be enlarged, searched, and read
with text-to-speech software.
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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. Around the same
time, AERA discovered that the 1999 edition of the Standards
for Educational and Psychological Testing was also available
on PRO’s website, and so it too filed suit against PRO for
copyright infringement and contributory copyright
infringement. See Complaint ¶ 1, American Educational
Research Ass’n, Inc. v. Public.Resource.Org, Inc., No. 1:14-
cv-00857 (D.D.C. May 23, 2014) (“AERA Compl.”), Dkt.
No. 1, J.A. 2158.
Both sets of plaintiffs moved for summary judgment in
their respective cases: AERA on both its claims as to the 1999
educational standard and ASTM on all of its claims but
contributory copyright infringement as to nine standards
(ASTM D86-07, ASTM D975-07, ASTM D396-98, ASTM
D1217-93(98), the 2011 and 2014 versions of NFPA’s
National Electrical Code, and the 2004, 2007, and 2010
versions of ASHRAE’s Standard 90.1). Although there are no
obvious connections among these standards—chosen from the
hundreds of standards ASTM identified in its complaint—
ASTM explained that it selected “this subset of particularly
important standards . . . to streamline the issues.” Pls.’ Mem.
of Law in Supp. of Mot. for Summ. J. 2, ASTM, No. 1:13-cv-
01215 (D.D.C. Nov. 19, 2015), Dkt. No. 118-1. PRO
responded with cross-motions for summary judgment, as well
as motions to strike two expert reports submitted by the SDOs.
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The district court, after denying the motions to strike,
issued a joint opinion resolving both cases. Granting summary
judgment to the SDOs on their claims of direct copyright
infringement, the district court found that they held valid and
enforceable copyrights in the incorporated standards that PRO
had copied and distributed and that PRO had failed to create a
triable issue of fact that its reproduction qualified as “fair use,”
17 U.S.C. § 107, under the Copyright Act. American Society
for Testing & Materials v. Public.Resource.org, Inc. (ASTM),
No. 1:13-cv-01215 (TSC), 2017 WL 473822, at *18 (D.D.C.
Feb. 2, 2017). The court also concluded that ASTM was
entitled to summary judgment on its trademark infringement
claims because PRO had used copies of ASTM’s marks in
commerce in a manner “likely to cause confusion,” 15 U.S.C.
§ 1114(1), and because PRO’s reproduction of the marks did
not qualify as a nominative fair use. Based on these liability
findings, the court issued permanent injunctions prohibiting
PRO from all unauthorized use of the ten standards identified
in the summary judgment motions and of ASTM’s registered
trademarks.
PRO appeals the district court’s injunctions, and the
underlying partial summary judgment orders. Although “[a]n
order granting partial summary judgment is usually considered
a nonappealable interlocutory order,” because this “order
granted an injunction,” we may consider the entire appeal
“pursuant to 28 U.S.C. § 1292(a)(1).” Gomez v. Turner, 672
F.2d 134, 138 n.5 (D.C. Cir. 1982). “We review the district
court’s grant of summary judgment de novo, applying the same
standards as the district court and drawing all inferences from
the evidence in favor of the non-movant.” Estate of Coll-
Monge v. Inner Peace Movement, 524 F.3d 1341, 1346 (D.C.
Cir. 2008) (internal quotation marks omitted). We consider the
copyright issues in Part II and the trademark issues in Part III.
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II.
Article I, Section 8, Clause 8, of the Constitution
empowers Congress “To promote the Progress of Science and
useful Arts, by securing for limited Times to Authors and
Inventors the exclusive Right to their respective Writings and
Discoveries.” U.S. Const. art. I, § 8, cl. 8. The very first
Congress took up that charge in the Copyright Act of 1790,
which granted authors of certain works “the sole right and
liberty of printing, reprinting, publishing and vending” those
works “for the term of fourteen years.” Act of May 31, 1790,
§ 1, 1 Stat. 124.
In the ensuing two centuries, although the precise contours
of the Act have changed, Congress’s purpose has remained
constant:
The enactment of copyright legislation by
Congress under the terms of the Constitution is
not based upon any natural right that the author
has in his writings . . . but upon the ground that
the welfare of the public will be served and
progress of science and useful arts will be
promoted by securing to authors for limited
periods the exclusive rights to their writings.
H.R. Rep. No. 60-2222, at 7 (1909); see also Sony Corp. of
America v. Universal City Studios, Inc., 464 U.S. 417, 429
(1984) (This “limited grant” is “intended to motivate the
creative activity of authors and inventors by the provision of a
special reward, and to allow the public access to the products
of their genius after the limited period of exclusive control has
expired.”). The challenge with each iteration of the Act, both
for its drafters and its interpreters, has been to strike the
“difficult balance between the interests of authors and
inventors in the control and exploitation of their writings and
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discoveries on the one hand, and society’s competing interest
in the free flow of ideas, information, and commerce on the
other hand.” Sony Corp., 464 U.S. at 429.
Under the current Act, “[c]opyright protection subsists . . .
in original works of authorship fixed in any tangible medium
of expression.” 17 U.S.C. § 102(a). This copyright, which
“vests initially in the author or authors of the work,” id.
§ 201(a), and generally endures for at least “70 years after the
author’s death,” id. § 302(a), endows authors with “exclusive
rights” to use or authorize the use of their work in six statutorily
specified ways, including “reproduc[ing] the copyrighted
work” and “distribut[ing] copies . . . of the copyrighted work
to the public,” id. § 106. “Anyone who violates any of the
exclusive rights of the copyright owner . . . is an infringer of
the copyright,” id. § 501(a), and may be subject to a number of
equitable and legal remedies, id. §§ 502-505. 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.” Sony Corp., 464
U.S. at 433.
By its plain terms, the Copyright Act says nothing about
what, if anything, happens when a copyrighted work is
incorporated by reference into federal, state, or local statutes or
regulations. The SDOs take this statutory silence, along with
the fact that Congress enacted the current version of the Act
just years after it authorized federal agencies to incorporate
works by reference into federal regulations, see Act of June 5,
1967, Pub. L. No. 90-23, 81 Stat. 54, 54 (codified at 5 U.S.C.
§ 552(a)(1)) (providing that material “is deemed published in
the Federal Register when incorporated by reference”), as
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proof positive that Congress intended to establish a
comprehensive copyright regime that contemplates no effect
on copyright when works are incorporated by reference into
law. Accordingly, the SDOs contend that they have a
straightforward claim of copyright infringement: they
registered copyrights to ten ordinary works—the standards at
issue in this appeal—and PRO invaded their exclusive rights
when it reproduced and distributed copies of the works on a
public website. Case closed.
Unsurprisingly, PRO sees it differently. As an initial
matter, PRO argues that there is a triable question as to whether
the standards at issue here were ever validly copyrighted given
the Act’s prohibition on copyrighting “work[s] of the United
States Government,” 17 U.S.C. § 105, and the fact that
government employees may have participated in drafting
certain standards. PRO, however, failed to adequately present
this claim to the district court and has thus forfeited it. See
Keepseagle v. Perdue, 856 F.3d 1039, 1053 (D.C. Cir. 2017)
(explaining that “legal theories not asserted” in the district
court “ordinarily will not be heard on appeal” (quoting District
of Columbia v. Air Florida, Inc., 750 F.2d 1077, 1084 (D.C.
Cir. 1984))). In any event, given PRO submitted no evidence
that specific language in any of the works was “prepared by an
officer or employee of the United States Government as part of
that person’s official duties,” 17 U.S.C. § 101 (defining “work
of the United States Government”), the argument is meritless.
Aside from the government-work issue, PRO advances
two primary challenges to the SDOs’ copyright claim. First, in
contrast to the SDOs’ view that standards remain copyrighted
even after incorporation, PRO contends that incorporation by
reference makes these works a part of the “law,” and the law
can never be copyrighted. Allowing private ownership of the
law, PRO insists, is inconsistent with the First Amendment
15
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.”
PRO and the SDOs each seek a bright-line rule either
prohibiting (the SDOs) or permitting (PRO) all of PRO’s uses
of every standard incorporated by reference into law. The
district court, accepting this undifferentiated view of the
incorporated standards, concluded that incorporation by
reference had no effect on the works’ copyright and that none
of PRO’s copying qualified as fair use.
Were we to conclude, contrary to the district court, that the
SDOs do not prevail as a matter of law on either their reading
of the scope of copyright or the fair use question, we would
have to reverse the grant of summary judgment. Although PRO
raises a serious constitutional concern with permitting private
ownership of standards essential to understanding legal
obligations, we think it best at this juncture to address only the
statutory fair use issue—which may provide a full defense to
some, if not all, of the SDO’s infringement claims in this
case—and leave for another day the question of whether the
Constitution permits copyright to persist in works incorporated
by reference into law. This approach not only allows us to
resolve the appeal within the confines of the Copyright Act but
is also more faithful to our responsibility to avoid “pass[ing] on
questions of constitutionality . . . unless such adjudication is
unavoidable.” Spector Motor Service v. McLaughlin, 323 U.S.
101, 105 (1944). Avoiding the constitutional question is all the
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more pressing here given that the record reveals so little about
the nature of any given incorporation or what a constitutional
ruling would mean for any particular standard. After all, it is
one thing to declare that “the law” cannot be copyrighted but
wholly another to determine whether any one of these
incorporated standards—from the legally binding prerequisite
to a labeling requirement, see 42 U.S.C. § 17021(b)(1), to the
purely discretionary reference procedure, see 40 C.F.R.
§ 86.113-04(a)(1)—actually constitutes “the law.”
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. For instance, we need not determine what happens
when a regulation or statute is revised to incorporate newer
versions of a particular standard. Do the older, now
unincorporated versions regain the copyright they might have
lost with the initial incorporation? Likewise, we need not
resolve what happens when only part of a standard is
incorporated by reference into law. Although copyright law
speaks of “works,” see 17 U.S.C. § 102 (“Copyright protection
subsists . . . in original works . . . .” (emphasis added)), does a
partial incorporation cause the entire work to lose copyright or
just the relevant portions?
To be sure, it may later turn out that PRO and others use
incorporated standards in a manner not encompassed by the fair
use doctrine, thereby again raising the question of whether the
authors of such works can maintain their copyright at all. In our
17
view, however, we ought exhaust all remaining statutory
options and only return to that question, if we must, on a fuller
record. See Communist Party of U.S. v. Subversive Activities
Control Board, 351 U.S. 115, 122–25 (1956) (remanding case
raising constitutional challenges to a federal statute for failure
to consider certain “new evidence” because the “non-
constitutional issue must be met at the outset” and “the case
must be decided on a non-constitutional issue, if the record
calls for it, without reaching constitutional problems,” id. at
122); see also Communist Party of U.S. v. Subversive Activities
Control Board, 367 U.S. 1, 70–72 (1961) (returning, after
remand, to only those constitutional issues “properly before”
the Court, id. at 72).
We turn, then, to the fair use defense, which provides that
“the fair use of a copyrighted work, including such use by
reproduction in copies . . . for purposes such as criticism,
comment, news reporting, teaching (including multiple copies
for classroom use), scholarship, or research, is not an
infringement of copyright.” 17 U.S.C. § 107. When
considering whether a particular use is fair, courts must
consider the following factors:
(1) the purpose and character of the use,
including whether such use is of a commercial
nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion
used in relation to the copyrighted work as a
whole; and
(4) the effect of the use upon the potential
market for or value of the copyrighted work.
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Id. “The factors enumerated in the section are not meant to be
exclusive: ‘[S]ince the doctrine is an equitable rule of reason,
no generally applicable definition is possible, and each case
raising the question must be decided on its own facts.’” Harper
& Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539,
560 (1985) (alteration in original) (quoting H.R. Rep. No. 94-
1476, at 65 (1976), as reprinted in 1976 U.S.C.C.A.N. 5659,
5678). The end of this quotation bears repeating: each case
raising a fair use defense must be decided on its own facts.
In the district court, PRO argued that its distribution of the
incorporated standards was in pursuit of the Act’s enumerated
fair use purposes—to facilitate criticism and comment—and
explained why the statutory fair use factors supported the
conclusion that its reproduction was fair use, especially
because the reproduced works were incorporated by reference
into the law. The district court rejected PRO’s claimed purpose.
Instead, it flatly concluded that PRO’s “distribution of identical
copies of copyrighted works [was] for the direct purpose of
undermining [the SDOs’] ability to raise revenue” and that
“nothing in the Copyright Act or court precedent” suggests that
such use of copyrighted works “can ever be a fair use.” ASTM,
2017 WL 473822, at *18 (emphasis added). Reviewing de
novo, however, we see nothing in the record that supports the
district court’s blanket conclusion that PRO distributed copies
of the incorporated standards solely to “undermin[e] [the
SDOs’] ability to raise revenue.” Id. Rather, by all accounts,
PRO distributed these standards for the purpose of educating
the public about the specifics of governing law. 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
19
legal status of each incorporated work. That is, it failed to
consider each fair use claim “on its own facts.” Harper & Row,
471 U.S. at 560 (internal quotations and citations omitted).
In this section, we review each of the fair use factors, and,
as we shall explain, though there is reason to believe “as a
matter of law” that PRO’s reproduction of certain standards
“qualif[ies] as a fair use of the copyrighted work,” id. (internal
quotations and citations omitted), we ultimately think the better
course is to remand the case for the district court to further
develop the factual record and weigh the factors as applied to
PRO’s use of each standard in the first instance. As we have
emphasized, the standards here and the modes of their
incorporation vary too widely to conclusively tell goose apart
from gander, and the record is just too thin to tell what went
into the sauce. On remand, the district court will need 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 by PRO in
order to resolve this “mixed question of law and fact.” Id. This
is not to say that the district court must analyze each standard
individually. Instead, it might consider directing the parties,
who poorly served the court by treating the standards
interchangeably, to file briefs addressing whether the standards
are susceptible to groupings that are relevant to the fair use
analysis.
The first factor asks courts to consider “the purpose and
character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes.”
17 U.S.C. § 107(1). 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,”
20
Harper & Row, 471 U.S. at 562. 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.” ASTM, 2017
WL 473822, at *16. This, in our view, takes too broad a view
of when a use is commercial rather than nonprofit. To be sure,
one consideration of the fair use inquiry is whether the copy
“may serve as a market substitute for the original,” Campbell
v. Acuff-Rose Music, Inc., 510 U.S. 569, 587 (1994) (discussing
the fourth fair use factor, i.e. market effect), but “[t]he crux of
the profit/nonprofit distinction is . . . whether the user stands to
profit from exploitation of the copyrighted material without
paying the customary price,” Harper & Row, 471 U.S. at 562.
Although PRO’s copies of the technical standards may, in some
cases, serve as a substitute for the SDOs’ versions, little, if
anything, in the record indicates that PRO stands to profit from
its reproduction. Moreover, the district court discounted PRO’s
claimed purpose, reflected in the organization’s mission
statement and summary-judgment submissions to the court,
that it was distributing the standards to facilitate public debate.
On appeal, the SDOs suggest in passing that distributing the
standards is part of PRO’s fundraising appeal, but that hardly
rises to the level of making this a “commercial” use. Thus, at
least as a general matter, PRO’s attempt to freely distribute
standards incorporated by reference into law qualified as a use
that furthered the purposes of the fair use defense.
Of course, “the mere fact that a use is educational and not
for profit does not insulate it from a finding of infringement,
any more than the commercial character of a use bars a finding
of fairness.” Campbell, 510 U.S. at 584. Thus, another facet of
the “purpose and character” factor that courts consider is
whether the use “adds something new, with a further purpose,”
or, put differently, “whether and to what extent the new work
21
is ‘transformative.’” Id. at 578–79 (quoting Pierre N. Leval,
Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1111
(1990)). Although “transformative use is not absolutely
necessary for a finding of fair use, the goal of copyright, to
promote science and the arts, is generally furthered by the
creation of transformative works.” Id. at 579 (citations and
footnotes omitted). On this point, the district court properly
rejected some of PRO’s arguments as to its transformative
use—for instance, that PRO was converting the works into a
format more accessible for the visually impaired or that it was
producing a centralized database of all incorporated standards.
See ASTM, 2017 WL 473822, at *16; see also American
Geophysical Union v. Texaco Inc., 60 F.3d 913, 923–24 (2d
Cir. 1994) (holding that photocopying articles “into a form
more easily used in a laboratory” does not constitute
transformative use but acknowledging “the benefit of a more
usable format”).
The district court, however, failed to adequately consider
whether, in certain circumstances, distributing copies of the
law for purposes of facilitating public access could constitute
transformative use. Indeed, in various circumstances, courts
have recognized that a secondary work “can be transformative
in function or purpose without altering or actually adding to the
original work.” A.V. ex rel. Vanderhye v. iParadigms, LLC, 562
F.3d 630, 639 (4th Cir. 2009). 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.” Swatch Group Management Services Ltd. v.
Bloomberg L.P., 756 F.3d 73, 84 (2d Cir. 2014); see also, e.g.,
iParadigms, 562 F.3d at 639 (producing a digital copy of a
student’s thesis for the purpose of assessing plagiarism).
22
PRO makes precisely this argument: “[p]araphrases,
summaries, and descriptions,” it explains, “do not capture the
precision that is necessary to understand the legal obligations
that governments impose and enforce.” PRO Br. 43. This may
well be the case. Where an incorporated standard provides
information essential to comprehending one’s legal duties, for
example, this factor would weigh heavily in favor of permitting
a nonprofit seeking to inform the public about the law to
reproduce in full the relevant portions of that particular
standard. Of the incorporated standards at issue here, federal
statute’s incorporation of ASTM D975’s diesel specifications
to dictate whether a retailer needs to provide additional fuel
labels, see 42 U.S.C. § 17021(b)(1), likely supports PRO’s
copying. By contrast, the incorporation of ASTM D86-07 as a
reference procedure for determining whether gasoline without
ethanol has an “[e]vaporated initial boiling point” of “75-
95[°F],” see 40 C.F.R. § 86.113-04(a)(1), likely does not.
Homing in on this inquiry may also illuminate which
particular version of a standard may fairly be reproduced.
Recall that a qualifying power source for tank barges must meet
“[National Electrical Code], Articles 406.9 and 501-145.” 46
C.F.R. § 39.2009(a)(1)(iii)(B). This incorporation might justify
reproducing that portion of the 2011 National Electrical Code,
the one incorporated in the power source regulation, see id.
§ 39.1005(h)(1), but not the 2014 edition, also at issue in this
appeal but not so incorporated.
By contrast, where knowing the content of an incorporated
standard might help inform one’s understanding of the law but
is not essential to complying with any legal duty, the nature of
PRO’s use might be less transformative and its wholesale
copying, in turn, less justified. For instance, ASHRAE
Standard 90.1 provides important context for assessing
provisions of state commercial building codes regarding
23
energy efficiency. See 42 U.S.C. § 6833(b). At the same time,
unless a particular provision of Standard 90.1 has been
incorporated into state building codes, PRO’s claim that a
paraphrase or summary would always be inadequate to serve
its purposes seems less persuasive. Of course, PRO might
argue that Standard 90.1 provides key information for debating
the virtues of requiring states to meet the energy efficiency
floor set by that standard but even that justification would apply
only to a version of Standard 90.1 that actually sets such a floor,
and it raises the question of whether PRO can fairly copy the
2004, 2007, and 2010 editions, all of which are at issue here.
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.” Campbell, 510 U.S. at 577. Faithfully
reproducing the relevant text of a technical standard
incorporated by reference for purposes of informing the public
about the law obviously has great value, but whether PRO’s
specific use serves that value must be assessed standard by
standard and use by use.
The second fair use factor, “the nature of the copyrighted
work,” 17 U.S.C. § 107(2), also demands an individual
appraisal of each standard and its incorporation. “This factor,”
the Supreme Court has explained, “calls for recognition that
some works are closer to the core of intended copyright
protection than others, with the consequence that fair use is
more difficult to establish when the former works are copied.”
Campbell, 510 U.S. at 586. 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
24
works than works of fiction or fantasy.” Harper & Row, 471
U.S. at 563.
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. 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 . . . the Copyright Act.” ASTM, 2017 WL
473822, at *17. Were these ordinary technical standards used
for no public purpose, the district court might well be correct.
But the standards at issue here have all, in some capacity, been
incorporated by reference into law, and, as the cases PRO relies
on for its constitutional argument make clear, the express text
of the law falls plainly outside the realm of copyright
protection. See, e.g., Banks v. Manchester, 128 U.S. 244, 253
(1888) (holding that the state court judges may not copyright
their judicial opinions because the “exposition and
interpretation of the law, which, binding every citizen, is free
for publication to all”); Howell v. Miller, 91 F. 129, 137 (6th
Cir. 1898) (Harlan, J.) (“[A]ny person desiring to publish the
statutes of a state may use any copy of such statutes to be found
in any printed book, whether such book be the property of the
state or the property of an individual.”). Given this, we think
that standards incorporated by reference into law are, at best, at
the outer edge of “copyright’s protective purposes.” Campbell,
510 U.S. at 586. Of course, just how close to the edge will,
again, vary standard by standard. Where the consequence of the
incorporation by reference is virtually indistinguishable from a
situation in which the standard had been expressly copied into
law, this factor weighs heavily in favor of fair use. But where
25
the incorporation does not lend to such easy substitution, fair
use is harder to justify.
The third fair use factor asks about “the amount and
substantiality of the portion used in relation to the copyrighted
work as a whole.” 17 U.S.C. § 107(3). The Supreme Court has
explained that “the extent of permissible copying varies with
the purpose and character of the use” and characterized the
relevant inquiry as whether “‘the amount and substantiality of
the portion used[’] . . . are reasonable in relation to the purpose
of the copying.” Campbell, 510 U.S. at 586–87 (quoting 17
U.S.C. § 107(3)). As this language makes clear, this inquiry is
ill-suited to wholesale resolution. Rather, PRO’s copying must
be considered standard by standard in light of its purpose of
informing the public about the specific incorporation at issue.
If PRO limits its copying to only what is required to fairly
describe the standard’s legal import, this factor would weigh
strongly in favor of finding fair use here, especially given that
precision is ten-tenths of the law.
To see why this is so, consider once more the power source
specification referred to in 46 C.F.R. § 39.2009(a). It requires
compliance with “Article 406.9 and 501-145” of the 2011
National Electrical Code. Id. § 39.2009(a)(1)(iii)(B). This
incorporation would likely justify posting the specific text of
only those two provisions of that version of the National
Electrical Code but not, as might have been the case here,
multiple versions of the entire code. By contrast, the labeling
requirement for biodiesel refers more generally to biodiesel
“that meets ASTM D975 diesel specifications,” see 42 U.S.C.
§ 17021(b)(1), suggesting, in that case, that a greater amount
of the standard’s text might be fairly reproduced. And where
the incorporation merely makes reference to an external
standard, but that standard does not govern any conduct,
perhaps the copier’s purpose could be achieved with only a
26
paraphrase or a summary. The district court engaged in no such
analysis, and we lack a sufficient record to do so in the first
instance.
The fourth fair use factor—“the effect of the use upon the
potential market for or value of the copyrighted work,” 17
U.S.C. § 107(4)—“requires courts to consider not only the
extent of market harm caused by the particular actions of the
alleged infringer, but also ‘whether unrestricted and
widespread conduct of the sort engaged in by the defendant . . .
would result in a substantially adverse impact on the potential
market’ for the original.” Campbell, 510 U.S. at 590 (alteration
in original) (quoting 3 Melville B. Nimmer & David Nimmer,
Nimmer on Copyright § 13.05[A][4], at 13–102.61 (1993)
(footnotes omitted)). In evaluating this factor, the court “must
take account not only of harm to the original but also of harm
to the market for derivative works.” Harper & Row, 471 U.S.
at 568.
Letting this factor carry the day, the district court inferred
that “[w]hen [PRO] engages in ‘mere duplication for
commercial purposes,’ as here, a harm to the potential market
for the copyrighted works may be inferred,” and concluded that
PRO’s commercial use precluded its fair use defense. ASTM,
2017 WL 473822, at *18 (quoting Campbell, 510 U.S. at 591).
For the reasons stated above, however, PRO’s use was not for
“commercial purposes,” and so the district court’s inference
cannot be sustained on the basis of undisputed evidence in the
summary judgment record. 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.
27
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. 9. Because the SDOs
presumably do so without entirely cannibalizing sales of their
standards, just how much additional harm does PRO’s
reproduction cause to the market for these standards? Second,
it appears that PRO generally reproduces entire standards. As
we have explained, such wholesale copying may be unjustified
if a law incorporates by reference only a few select provisions
of a much longer standard. In such circumstances, if PRO were
to reproduce only the incorporated provisions, would there still
be a vibrant market for the standards in their entirety? And
third, it is entirely unclear what consequences PRO’s
reproduction has on the market for derivative works. It appears
that the SDOs routinely update these standards and that, in
many cases, the edition PRO posts to the internet—and, indeed,
the one incorporated into the law—is long outdated. Is PRO’s
posting of outdated standards harming the market for updated,
unincorporated editions of the standards? If, as the SDOs
assert, the primary purpose in developing technical standards
is “to have them used by private industry and other non-
governmental users to address technical issues or problems,”
ASTM Br. 4, there is at least some reason to think that the
market demand for the most up-to-date standards would be
resilient. Along these lines, can the SDOs continue to make
money on derivative goods such that they have an adequate
incentive to continue producing these standards? As one amici
notes, even after a sister circuit ruled that an organization that
drafted a model building code adopted into law lost its
copyright, see Veeck v. Southern Building Code Congress
International, Inc., 293 F.3d 791 (5th Cir. 2002), its successor
organization remains profitable both through sales of codes and
of “program services, including consulting, certification, and
28
training.” 66 Libraries Amicus Br. 22 (citing Int’l Code
Council, Annual Report 52 (2015)). In remanding these
questions, we decline PRO’s passing request to reverse the
district court’s admission of expert testimony on economic
harm, as we see no abuse of discretion in the district court’s
careful consideration of the relevant factors. See Kumho Tire
Co. v. Carmichael, 526 U.S. 137, 152 (1999) (directing courts
of appeals to apply an abuse-of-discretion standard when
reviewing admission of expert testimony).
Considering the four fair use factors together, then, we find
that the novel and complex issues raised by this case resolve in
a manner entirely ordinary for our court: reviewing the record
afresh, as our standard of review requires, we conclude—
unlike the district court—that, as to the fair use defense,
genuine issues of material fact preclude summary judgment for
either party. 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.
Rodriguez v. Penrod, 857 F.3d 902, 906 (D.C. Cir. 2017)
(“[F]ederal courts of appeals generally are courts of review, not
first view.”).
III.
The Lanham Act, 15 U.S.C. §§ 1051 et seq., “provide[s]
national protection for trademarks used in interstate and foreign
commerce,” Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469
U.S. 189, 193 (1985). Under the Act, the seller or producer of
a good has the exclusive right to “register” a trademark, 15
U.S.C. § 1052, and to prevent competitors from using the mark,
29
see id. § 1114. The basic premise of trademark law, the
Supreme Court has explained, is that, “by preventing others
from copying a source-identifying mark,” a trademark
“‘reduce[s] the customer’s costs of shopping and making
purchasing decisions,’ for it quickly and easily assures a
potential customer that this item—the item with this mark—is
made by the same producer as other similarly marked items that
he or she liked (or disliked) in the past.” Qualitex Co. v.
Jacobson Products Co., 514 U.S. 159, 163–64 (1995)
(alteration in original) (quoting 1 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 2.01[2]
(3d ed. 1994) (McCarthy)). “At the same time, the law helps
assure a producer that it (and not an imitating competitor) will
reap the financial, reputation-related rewards associated with a
desirable product.” Id. at 164. 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. ASTM Compl. ¶ 61, J.A. 84–85.
Take, for example, ASTM D86-07, referenced in 40 C.F.R
§ 80.47(h)(1). The first page of that standard, part of which we
reproduce below, introduces the name of the work by depicting
the “ASTM International” logo and placing it next to the text
“Designation D 86-07.” ASTM International, Designation: D
86–07 Standard Test Method for Distillation of Petroleum
Products at Atmospheric Pressure 1 (2007), J.A. 278.
30
Each subsequent page of the work includes a header that again
displays the ASTM logo and places it next to the text “D86-
07.” See id. at 2–28, J.A. 279–305. This is typical of the
technical standards at issue in this appeal.
ASTM plaintiffs contend that PRO infringed on their
registered marks when it distributed its copies of the technical
standards because it also reproduced the ASTM marks in
connection with the distribution of those goods. ASTM Compl.
¶¶ 123–24, J.A. 102. ASTM objects to this use of its mark not
simply because PRO copied the marks when it copied the
works as a whole, but because PRO affixed the marks to
versions of the standards that it had modified and, in the
process, introduced errors into. Id. ¶ 130, J.A. 103.
Acknowledging that PRO included disclaimers with its version
of the standards, ASTM reiterates the district court’s finding
that they “‘can hardly be called disclaimers at all,’” ASTM Br.
58 (quoting ASTM, 2017 WL 473822, at *23), because they “do
not mention [PRO’s] creation of the reproductions, [the
SDOs’] lack of association or authorization, or that they are
even reproductions or transcriptions,” ASTM, 2017 WL
473822, at *23. Given this, ASTM contends, consumers are
likely to confuse PRO’s modified version for authentic copies
of ASTM’s works, even though PRO “did not undertake the
same quality control procedures,” ASTM Compl. ¶ 130, J.A.
103, which, in turn, will harm ASTM’s brand identity and
goodwill, id. ¶¶ 133–34, J.A. 104.
As a threshold matter, PRO contends that ASTM’s
trademark claims, which it calls an “attempt to use trademark
law to circumvent the limitations of the Copyright Act,” PRO
31
Br. 52, are precluded by the Supreme Court’s decision in
Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S.
23 (2003). In Dastar, the Supreme Court considered Twentieth
Century Fox Film’s claim that Dastar violated section 43(a) of
the Lanham Act, 15 U.S.C. § 1125 (prohibiting “false
designation of origin”), when it copied large portions of a
television series about General Eisenhower’s campaign in
Europe, which had fallen into the public domain, in Dastar’s
own television program about a similar subject. See Dastar,
539 U.S. at 31. Rejecting this claim, the Court declined to read
the Lanham Act “as creating a cause of action for, in effect,
plagiarism—the use of otherwise unprotected works and
inventions without attribution.” Id. at 36. To permit such
claims, the Court warned, “would create a species of mutant
copyright law that limits the public’s federal right to copy and
to use expired copyrights.” Id. at 34 (internal quotations and
citations omitted).
Were PRO accused of reproducing identical copies of
ASTM’s standards, and assuming that ASTM lacked an
enforceable copyright to those standards, ASTM’s trademark
claim might well have been precluded under Dastar. Here,
however, PRO is not accused of faithfully copying ASTM’s
work without attribution but instead of “creat[ing]
reproductions through scanning and re-typing, with resultant
errors and differences,” ASTM, 2017 WL 473822, at *21, to
which it affixes ASTM’s marks. Consumers who download
copies of the standards from PRO’s website may not only be
misled into thinking that ASTM produced the digital files but
also may attribute any errors to ASTM. This risks precisely the
sort of confusion as to “the producer of the tangible product
sold in the marketplace” that the Supreme Court in Dastar
deemed a cognizable injury under the Lanham Act. Dastar, 539
U.S. at 31. It is perhaps unsurprising, then, that the post-Dastar
cases where courts have found trademark claims foreclosed
32
involved instances of virtually identical copies. See, e.g.,
Phoenix Entertainment Partners, LLC v. Rumsey, 829 F.3d
817, 831 (7th Cir. 2016) (noting that the trademark owner’s
claim failed because, among other things, they “[did] not
affirmatively allege that the defendants’ copies are noticeably
inferior to their patrons”); see also Slep-Tone Entertainment
Corp. v. Wired for Sound Karaoke & DJ Services, LLC, 845
F.3d 1246, 1250 (9th Cir. 2017) (per curiam) (finding no
“alleg[ation of] consumer confusion over the origin of a good
properly cognizable in a claim of trademark infringement”).
Given that ASTM alleges that PRO is distributing
meaningfully inferior versions of the technical standards under
ASTM’s trademark and given trademark law’s concern for
“discourag[ing] 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,” Qualitex, 514 U.S. at 164,
Dastar does not bar ASTM’s trademark claims.
This leaves, then, the merits of the trademark claim. To
establish a trademark infringement claim under the Lanham
Act, ASTM must show that PRO used in commerce, without
ASTM’s consent, a “reproduction, counterfeit, copy, or
colorable imitation of a registered mark in connection with the
sale, offering for sale, distribution, or advertising of any goods
or services on or in connection with which such use is likely to
cause confusion.” 15 U.S.C. § 1114(1)(a). This inquiry boils
down to two questions: (1) does ASTM own “a valid mark
entitled to protection” and (2) is PRO’s “use of it . . . likely to
cause confusion.” Gruner + Jahr USA Publishing v. Meredith
Corp., 991 F.2d 1072, 1075 (2d Cir. 1993).
PRO never challenges the validity of ASTM’s marks, so
this case involves only the second question. Although our court
has yet to opine on the precise factors courts should consider
33
when assessing likelihood of confusion, our sister circuits have
adopted similar multi-factor tests, all of which “owe their
origin to the 1938 Restatement of Torts.” 4 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition
§ 24:30 (5th ed. 2018); see id. (noting that “[t]he [v]arious
[c]ircuit [m]ulti-[f]actor [t]ests are [n]ot [f]undamentally
[d]ifferent”). Factors considered include the strength of the
mark, the similarity of the marks, the proximity of the goods,
the similarity of the parties’ marketing channels, evidence of
actual confusion, the defendant’s intent in adopting the mark,
the quality of the defendant’s product, and the sophistication of
the buyers. See id. §§ 24:31–24:43 (cataloging the factors used
by each circuit and citing, inter alia, AMF, Inc. v. Sleekcraft
Boats, 599 F.2d 341, 348–49 (9th Cir. 1979); Polaroid Corp.
v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.
1961)).
Just as some uses of a copyrighted work do not violate the
Copyright Act, certain uses of a trademark do not run afoul of
the Lanham Act. One such use, known as the “nominative” fair
use of a mark, occurs when “the defendant uses the plaintiff’s
trademark to identify the plaintiff’s own goods and ‘makes it
clear to consumers that the plaintiff, not the defendant, is the
source of the trademarked product or service.’” Rosetta Stone
Ltd. v. Google, Inc., 676 F.3d 144, 154 (4th Cir. 2012) (internal
citations omitted) (quoting Century 21 Real Estate Corp. v.
Lendingtree, Inc., 425 F.3d 211, 220 (3d Cir. 2005)). 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
34
comparison, criticism, point of reference or any other such
purpose without using the mark.” New Kids, 971 F.3d at 306.
In order for a use to qualify as nominative fair use, courts
require that “[1] the product or service in question must be one
not readily identifiable without use of the trademark; [2] only
so much of the mark or marks may be used as is reasonably
necessary to identify the product or service; and [3] the user
must do nothing that would, in conjunction with the mark,
suggest sponsorship or endorsement by the trademark holder.”
Id. at 308 (footnote omitted).
PRO contests neither the enforceability of ASTM’s
trademarks nor the district court’s analysis of the ordinary
likelihood of confusion factors. Rather, it argues only that its
use of ASTM’s trademarks qualified as a nominative use that
should be allowed under the Lanham Act. The district court
rejected this claim, finding instead that because it had “already
determined that consumer confusion as to the source of the
trademarked standards is likely, the nominative fair use defense
is inapplicable and the court need not assess each of the []
factors.” ASTM, 2017 WL 473822, at *23. The district court’s
failure to consider the three nominative fair use factors, as we
shall explain, was error.
Courts of appeals have disagreed about how exactly to
evaluate nominative fair use claims. The Third Circuit, for
instance, treats nominative fair use as an affirmative defense to
infringement. See Century 21, 425 F.3d at 222. The Second and
Ninth Circuits, by contrast, treat nominative fair use as a means
for evaluating, for purposes of determining trademark
infringement, whether there is any likelihood of confusion at
all. See International Information Systems Security
Certification Consortium, Inc. v. Security University, LLC, 823
F.3d 153, 167 (2d Cir. 2016) (IISSC); New Kids, 971 F.2d at
308. And, even the courts of appeals that agree about when to
35
test nominative fair use disagree about how precisely to apply
the factors. On the one hand, the Ninth Circuit has held that the
three nominative fair use factors supplant the ordinary multi-
factor likelihood of confusion test. New Kids, 971 F.3d 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. IISSC, 823 F.3d at 168.
The parties have not briefed, and we need not resolve
today, which approach our court should adopt. What we can
say is that under no formulation can a court ignore the
nominative fair use factors altogether. Where, as here, there is
a claim of nominative fair use, the likelihood of confusion
analysis remains incomplete without at least some discussion
of these factors. Indeed, the particulars of this case show just
how consideration of these factors can provide valuable insight
both into whether trademark infringement has occurred and, if
so, how broad a remedy is needed to address the injury.
Consider the first factor, whether the work is readily
identifiable without use of the mark. Assuming that PRO may
reproduce some of the technical standards under copyright’s
fair use doctrine for the purpose of informing the public about
the law, it is hard to see how PRO could fulfill that goal without
identifying the standard by its name—the very name also used
in the incorporating law.
Likewise, as to the second factor—whether only so much
of the mark is used as is reasonably necessary to identify the
product—it may well be that PRO overstepped when it
reproduced both ASTM’s logo and its word marks but, as it
told the district court, it is not wedded to using the logo. See
Transcript of 9/12/16 Motions Hearing at 116, ASTM, No.
36
13-cv-1215 (TSC) (D.D.C. Oct. 13, 2016), Dkt. No. 173, J.A.
3374 (“Public.Resource would take direction from this Court.
Logos: yes or no? [PRO] doesn’t care.”). Thus, accounting for
this factor may suggest ways of crafting a narrower remedy that
better balances the parties’ competing interests here.
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. Indeed, at oral argument, PRO
suggested that it would be “more than happy to modify the
disclaimers.” Oral Arg. 24:06–19. And although the
disclaimers initially used by PRO were quite barebones, the
record contains examples of more fulsome disclaimers it later
appended to at least some standards. See, e.g., Declaration of
Thomas O’Brien, Jr. and Exhibits ex. 18, ASTM, No. 13-cv-
1215 (TSC) (D.D.C. Nov. 19, 2015), Dkt. No. 118-7, J.A. 345
(disclaiming, among other things, that PRO “has transformed
this specification into [HTML],” that “[a]ny errors in the
transformation of th[e] specification should be reported to
[PRO],” and that PRO “is not affiliated in any way with any of
the organizations named herein”).
As with the copyright fair use issue, it remains for the
district court to consider in the first instance whether PRO’s
use of ASTM’s marks constitutes trademark infringement in
light of the nominative fair use factors. And even if the district
court ultimately concludes that the record supports an
infringement finding, it should consider whether its previous
grant of an injunction barring all unauthorized use is still
warranted or whether it “may order defendants to modify their
use of the mark so that all three factors are satisfied” and a
37
narrower remedy would suffice. Toyota Motor Sales, U.S.A.,
Inc. v. Tabari, 610 F.3d 1171, 1176 (9th Cir. 2010).
IV.
For the foregoing reasons, we vacate the permanent
injunctions, reverse the district court’s partial grant of
summary judgment against PRO, and remand for further
proceedings consistent with this opinion.
So ordered.
KATSAS, Circuit Judge, concurring: The plaintiffs here
claim a copyright over binding legal texts, which would enable
them to prevent anyone from gaining access to that law or
copying it for the public. See 17 U.S.C. § 106. Moreover,
saying what that law is, without plaintiffs’ permission, would
expose an individual to injunctive relief, impoundment,
damages, attorneys’ fees, and potentially even criminal
liability. See id. §§ 502–506. As a matter of common-sense,
this cannot be right: access to the law cannot be conditioned on
the consent of a private party, just as it cannot be conditioned
on the ability to read fine print posted on high walls. See
Suetonius, Gaius Caligula ¶ XLI, in The Lives of the Caesars
(J.C. Rolfe trans., Macmillan Co. 1914) (“he … had the law
posted up, but in a very narrow place and in excessively small
letters, to prevent the making of a copy”).
Not surprisingly, precedent confirms this instinct. In
Banks v. Manchester, 128 U.S. 244 (1888), the Supreme Court
held that judges cannot copyright their opinions, in part
because their work “constitutes the authentic expression and
interpretation of the law, which, binding every citizen, is free
for publication to all.” Id. at 253. Moreover, two courts of
appeals have confirmed that Banks remains good law under the
modern Copyright Act of 1976. In Building Officials & Code
Administrators v. Code Technology, Inc., 628 F.3d 730 (1st
Cir. 1980), the First Circuit vacated a preliminary injunction
that would have enforced the copyright of a model building
code as enacted into Massachusetts law. While not definitively
deciding the question, the court reasoned that enforcement of
the copyright could not be “squared with the right of the public
to know the law to which it is subject.” Id. at 735. Similarly,
in Veeck v. Southern Building Code Congress International,
293 F.3d 791 (5th Cir. 2002) (en banc), the Fifth Circuit held
that “as law,” model rules adopted by a legislative body “enter
the public domain and are not subject to the copyright holder’s
exclusive prerogatives.” Id. at 793.
 2
Today, the Banks rule might rest on at least four possible
grounds: the First Amendment; the Due Process Clause of the
Fifth Amendment; Section 102(b) of the Copyright Act, which
denies copyright protection to “any idea, procedure, process,
system, method of operation, concept, principle, or discovery,”
17 U.S.C. § 102(b); or Section 107 of the Act, which sets forth
the fair-use doctrine, id. § 107. The Court today reasonably
avoids what it correctly regards as “a serious constitutional
concern” under the First and Fifth Amendments. Ante, at 15–
16. And it expressly reserves, in substance though not by
name, the question whether Section 102(b) extends protection
to private standards as enacted into law. Ante, at 14–15.
The Court’s fair-use analysis faithfully recites the
governing four-factor balancing test, yet, in conducting the
balancing, it puts a heavy thumb on the scale in favor of an
unrestrained ability to say what the law is. Thus, when an
incorporated standard sets forth binding legal obligations, and
when the defendant does no more and no less than disseminate
an exact copy of it, three of the four relevant factors—purpose
and character of the use, nature of the copyrighted work, and
amount and substantiality of the copying—are said to weigh
“heavily” or “strongly” in favor of fair use. Ante, at 22, 25.
This analysis closely parallels Banks, which the Court
explicitly invokes in its discussion of factor two. Ante, at 24.
The Court acknowledges the thinness of the record in this case,
and it appropriately flags potentially complicating questions
about how particular standards may be incorporated into law,
and whether such standards, as so incorporated, actually
constitute “the law.” Ante, at 15–16. But, where a particular
standard is incorporated as a binding legal obligation, and
where the defendant has done nothing more than disseminate
it, the Court leaves little doubt that the dissemination amounts
to fair use.
3
With that understanding, and recognizing that the Section
102(b) and constitutional issues remain open in the unlikely
event that disseminating “the law” might be held not to be fair
use, I join the Court’s opinion.