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American Society for Testing and Materials v. Public.Resource.Org, Inc.

United States District Court, District of Columbia

February 2, 2017



          TANYA S. CHUTKAN United States District Judge.

         Before the court are motions and cross-motions for summary judgment in two related cases. Because there is significant factual and legal overlap between the two cases, the court issues this consolidated opinion to be filed in both cases.

         Plaintiffs American Society for Testing and Materials (“ASTM”), National Fire Protection Association, Inc. (“NFPA”), and American Society of Heating, Refrigerating, and Air-Conditioning Engineers (“ASHRAE”) (collectively “ASTM Plaintiffs”) brought suit against Defendant, Inc. (“Public Resource”) under the Copyright Act (17 U.S.C. § 101 et seq.) and the Lanham Act (15 U.S.C. § 1051 et seq.), alleging copyright infringement and trademark infringement. Plaintiffs American Educational Research Association, Inc. (“AERA”), American Psychological Association, Inc. (“APA”), and National Council on Measurement in Education, Inc. (“NCME”) (collectively “AERA Plaintiffs”) also brought copyright infringement claims against Public Resource under the Copyright Act. Plaintiffs[1] in both cases seek permanent injunctions barring Defendant from continued display of their works. Plaintiffs moved for summary judgment, and Defendant filed cross-motions for summary judgment in both cases. The court held a combined oral argument on September 12, 2016 to consider the motions. Upon consideration of the parties' filings, the numerous amicus briefs, and the arguments presented at the motions hearing, and for the reasons stated herein, the ASTM Plaintiffs' motion for summary judgment is GRANTED and Defendant's cross-motion is DENIED. The AERA Plaintiffs' motion for summary judgment is GRANTED IN PART AND DENIED IN PART, and Defendant's cross-motion is DENIED.


         A. The Parties

         1. ASTM Plaintiffs

         ASTM Plaintiffs are not-for-profit organizations that develop private sector codes and standards in order to advance public safety, ensure compatibility across products and services, facilitate training, and spur innovation. (See ASTM Pls. Statement of Material Facts (“PSMF”) ¶¶ 9, 13, 14, 86, 87, 129, 130 (ASTM ECF No. 118-2)).[2] These standards include technical works, product specifications, installation methods, methods for manufacturing or testing materials, safety practices, and other best practices or guidelines. (Id. ¶ 1). ASTM has developed over 12, 000 standards that are used in a wide range of fields, including consumer products, iron and steel products, rubber, paints, plastics, textiles, medical services and devices, electronics, construction, energy, water, and petroleum products, and are the combined efforts of over 23, 000 technical members, representing producers, users, consumers, government, and academia. (Id. ¶¶ 13, 28, 41). NFPA has developed over 300 standards in the areas of fire, electrical, and building safety, with the goal of reducing the risk of death, injury, and property and economic loss due to fire, electrical, and related hazards. (Id. ¶¶ 86, 87, 92). NFPA's most well-known standard is the National Electrical Code, first published in 1897 and most recently in 2014. (Id. ¶¶ 93-94). Finally, ASHRAE has published over 100 standards for a variety of construction-related fields, including energy efficiency, indoor air quality, refrigeration, and sustainability. (Id. ¶ 130).

         2. AERA Plaintiffs

         AERA Plaintiffs are not-for-profit organizations that collaboratively develop the Standards for Educational and Psychological Testing, including the 1999 edition at issue in this case (“the 1999 Standards”). (AERA PSMF ¶¶ 1, 5, 13 (AERA ECF No. 60-2)). AERA is a national scientific society whose mission is “to advance knowledge about education, to encourage scholarly inquiry related to education, and to promote the use of research to improve education.” (Id. ¶ 2). APA is the world's largest association of psychologists, and its mission is “to advance the creation, communication, and application of psychological knowledge.” (Id. ¶ 3). Finally, NCME is a professional organization “for individuals involved in assessment, evaluation, testing, and other aspects of educational measurement.” (Id. ¶ 4).

         3. Public Resource

         Defendant Public Resource is a not-for-profit entity devoted to publicly disseminating legal information. (ASTM DSMF ¶¶ 1-2 (ASTM ECF No. 120-3); AERA DSMF ¶¶ 1-2 (AERA ECF No. 68-3)). Its mission is “make the law and other government materials more widely available so that people, businesses, and organizations can easily read and discuss [the] laws and the operations of government.” (ASTM DSMF ¶ 2; AERA DSMF ¶ 2). Public Resource has posted government-authored materials on its website, including judicial opinions, Internal Revenue Service records, patent filings, and safety regulations. (ASTM DSMF ¶¶ 3-4; AERA DSMF ¶¶ 3-4). It does not charge fees to view or download the materials on its website. (ASTM DSMF ¶ 5; AERA DSMF ¶ 5).

         B. Incorporation by Reference of Industry Standards

         In the United States, a complex public-private partnership has developed over the last century in which private industry groups or associations, rather than government agencies, typically develop standards, guidelines, and procedures that set the best practices in a particular industry.[3] Applicable standards are used by entities and individuals in order to self-regulate and conform to the best practices of that industry. Professor Peter Strauss has noted that “manufacturing and markets are greatly aided, and consumers offered protection, by the application of uniform industrial standards created independent of law, as means of assuring quality, compatibility, and other highly desired market characteristics.” Peter L. Strauss, Private Standards Organizations and Public Law, 22 Wm. & Mary Bill Rts. J. 497, 499 (2013).

         Standards are typically developed by standards developing organizations (“SDOs”), like Plaintiffs, who work to develop “voluntary consensus standards, ” such as those here. Voluntary consensus standards are the ultimate product of many volunteers and association members from numerous sectors bringing together technical expertise. They are “developed using procedures whose breadth of reach and interactive characteristics resemble governmental rulemaking, with adoption requiring an elaborate process of development, reaching a monitored consensus among those responsible within the SDO.” Id. at 501. ASTM Plaintiffs develop their standards using technical committees with representatives from industry, government, consumers, and technical experts. (ASTM PSMF ¶¶ 7, 28, 29, 109, 114, 135). These committees conduct open proceedings, consider comments and suggestions, and provide for appeals, and through subcommittees, draft new standards, which the full committees vote on. (Id. ¶¶ 31-37, 109, 136, 139). The AERA Plaintiffs developed the 1999 Standards through a Joint Committee which considered input from the public in a notice-and-comment process. (AERA PSMF ¶¶ 13-16).

         Pursuant to 5 U.S.C. § 552, federal agencies may incorporate voluntary consensus standards-as well as, for example, state regulations, government-authored documents, and product service manuals-into federal regulations by reference. See Emily S. Bremer, Incorporation by Reference in an Open-Government Age, 36 Harv. J.L. & Pub. Pol'y 131, 145- 47 (2013) (providing a general overview of the federal government's incorporation of materials by reference). The federal government's practice of incorporation by reference of voluntary consensus standards is intended to achieve several goals, including eliminating the cost to the federal government of developing its own standards, encouraging long-term growth for U.S. enterprises, promoting efficiency, competition, and trade, and furthering the reliance upon private sector expertise. See OMB Revised Circular, supra, at 14.

         Section 552(a)(1) provides that “a person may not in any manner be required to resort to, or be adversely affected by, a matter required to be published in the Federal Register and not so published[, but] . . . matter reasonably available to the class of persons affected thereby is deemed published in the Federal Register when incorporated by reference therein with the approval of the Director of the Federal Register.” 5 U.S.C. § 552(a)(1) (emphasis added). The Office of the Federal Register (“OFR”) adopted regulations pursuant to § 552(a)(1) in 1982 and issued revised regulations in 2014. See Approval Procedures for Incorporation by Reference, 47 Fed. Reg. 34, 107 (Aug. 6, 1982) (codified at 1 C.F.R. § 51.1 et seq.); 79 Fed. Reg. 66, 267 (Nov. 7, 2014). These regulations specify that a “publication is eligible for incorporation by reference” if it is “published data, criteria, standards, specifications, techniques, illustrations, or similar material; and [d]oes not detract from the usefulness of the Federal Register publication system.” 1 C.F.R. § 51.7(a)(2). To determine whether the material is “reasonably available” as required by the statute, OFR will consider “[t]he completeness and ease of handling of the publication” and “[w]hether it is bound, numbered, and organized, as applicable.” Id. § 51.7(a)(3). All the standards at issue in this case have been incorporated by reference into federal law. (ASTM DSMF ¶ 22; 34 C.F.R. § 668.146 (incorporating AERA Plaintiffs' 1999 Standards).

         Standards that are incorporated by reference are available in person at the OFR in Washington, DC and/or with the incorporating agency. See 1 C.F.R. § 51.3(b)(4). Federal regulations that incorporate standards by reference typically direct interested individuals or entities to location(s) where they may view the incorporated documents in person. For example, the Environmental Protection Agency's (“EPA”) regulation, 40 C.F.R. § 60.17(a), which incorporates numerous standards at issue here, states that:

Certain material is incorporated by reference into this part with the approval of the Director of the Federal Register under 5 U.S.C. § 552(a) and 1 CFR part 51. . . . All approved material is available for inspection at the EPA Docket Center, Public Reading Room, EPA WJC West, Room 3334, 1301 Constitution Ave. NW, Washington, DC, telephone number 202-566-1744, and is available from the sources listed below. It is also available for inspection at the National Archives and Records Administration (NARA). For information on the availability of this material at NARA, call (202) 741-6030 or go to federalregister/codeoffederalregulations/ibrlocations.html.

         The EPA regulation further specifies that, for example, the 206 ASTM standards incorporated by reference by the EPA (some of which are involved in this suit) are “available for purchase from ASTM International, 100 Barr Harbor Drive, P.O. Box CB700, West Conshohocken, Pennsylvania 19428-2959, (800) 262-1373,” 40 C.F.R. § 60.17(h). The U.S. Department of Education incorporated the AERA Plaintiffs' 1999 Standards by reference at 34 C.F.R. § 668.146(b)(6), which states that the standards are:

on file at the Department of Education, Federal Student Aid, room 113E2, 830 First Street, NE, Washington, DC 20002, phone (202) 377-4026, and at the National Archives and Records Administration (NARA). For information on the availability of this material at NARA, call 1-866-272-6272, or to go: federal-register/code-of-federal-regulations/ibr-locations.html. The document may also be obtained from the American Educational Research Association.

         ASTM Plaintiffs sell PDF and hard copy versions of their standards, including those that have been incorporated by reference into law. (ASTM PSMF ¶¶ 57, 99, 157). The prices for the standards in this case range from $25 to $200. (Id. ¶¶ 58, 99, 158). The ASTM Plaintiffs also maintain “reading rooms” on their websites that allow interested parties to view Plaintiffs' standards that have been incorporated by reference. (Id. ¶¶ 63-64, 100, 161). The standards in these reading rooms are “read-only, ” meaning they appear as images that may not be printed or downloaded. (Id.). AERA Plaintiffs sell hardcopy versions of the 1999 Standards, but do not sell digital or PDF versions. (AERA PSMF ¶¶ 30, 33). The prices for the 1999 Standards have ranged from $25.95 to $49.95 per copy, and they were sold continuously from 2000 through 2014, except for a nearly two-year period. (Id. ¶¶ 34-35).

         C. Plaintiffs' Claims in This Action

         1. ASTM et al. v. Public Resource

         This case involves 257 of ASTM Plaintiffs' standards that have been incorporated by reference into federal law. (See ASTM Compl. Ex. A-C; ASTM DSMF ¶ 22). Defendant admits that it purchased hard copies of each of the standards at issue, scanned them into PDF files, added a cover sheet, and posted them online. (ASTM DSMF ¶¶ 173-74, 177-78; ASTM PSMF ¶¶ 182-87). Defendant re-typed some of ASTM Plaintiffs' standards and posted them online, with text in Hypertext Markup Language (HTML) format and graphics and figures in Mathematics Markup Language and Scalable Vector Graphics formats. (ASTM DSMF ¶¶ 83, 175). The copies posted on Defendant's website all bore ASTM Plaintiffs' trademarks. (ASTM PSMF ¶ 210). Defendant also uploaded the ASTM Plaintiffs' standards to the Internet Archive, a separate independent website. (Id. ¶ 185).

         The ASTM Plaintiffs allege that their standards are original works protected from copyright infringement, and brought claims of copyright infringement, contributory copyright infringement, trademark infringement, unfair competition and false designation, and trademark infringement under common law. (ASTM Compl. ¶¶ 142-95). Defendant counter-sued, seeking a declaratory judgment that its conduct does not violate copyright law or trademark law. (ASTM Ans. ¶¶ 174-205). Both sides have filed motions for summary judgment.

         2. AERA et al. v. Public Resource

         This case involves the 1999 Standards, which AERA Plaintiffs have sold since 2000. (AERA PSMF ¶¶ 34-35). In May 2012, Public Resource purchased a paper copy of the 1999 Standards, disassembled it, scanned the pages, created a PDF file, attached a cover sheet, and, without authorization from the AERA Plaintiffs, posted the PDF file to Public Resource's website and the Internet Archive. (AERA DSMF ¶ 28; AERA PSMF ¶¶ 69-80). Public Resource posted a read-only version of the 1999 Standards to its website, unlike many of the ASTM Plaintiffs' standards, which had undergone optical character recognition (“OCR”) processing to be text-searchable. (Id. ¶ 73). OCR processing uses a machine to recognize letters and words in a PDF and translate them into letters or words that can be searched and used by text-to-speech software for individuals who are blind or visually impaired. (Id. ¶¶ 73-75).

         Plaintiffs allege that the 1999 Standards are protected original works, and they brought suit claiming copyright infringement and contributory copyright infringement. (AERA Compl. ¶¶ 50-63). Defendant counter-sued seeking a declaratory judgment that its conduct does not violate copyright law or trademark law. (AERA Ans. ¶¶ 116-37). Both sides have moved for summary judgment.


         Summary judgment may be granted if “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); see also Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986) (“[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact.”) (emphasis in original); Holcomb v. Powell, 433 F.3d 889, 895 (D.C. Cir. 2006). Summary judgment may be rendered on a “claim or defense . . . or [a] part of each claim or defense.” Fed.R.Civ.P. 56(a).

         “A party asserting that a fact cannot be or is genuinely disputed must support the assertion by . . . citing to particular parts of materials in the record.” Fed.R.Civ.P. 56(c)(1)(A). “A fact is ‘material' if a dispute over it might affect the outcome of a suit under governing law; factual disputes that are ‘irrelevant or unnecessary' do not affect the summary judgment determination. An issue is ‘genuine' if ‘the evidence is such that a reasonable jury could return a verdict for the nonmoving party.'” Holcomb, 433 F.3d at 895 (quoting Liberty Lobby, 477 U.S. at 248) (citation omitted). The party seeking summary judgment “bears the heavy burden of establishing that the merits of his case are so clear that expedited action is justified.” Taxpayers Watchdog, Inc. v. Stanley, 819 F.2d 294, 297 (D.C. Cir. 1987).

         In considering a motion for summary judgment, “[t]he evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.” Liberty Lobby, 477 U.S. at 255; see also Mastro v. Potomac Elec. Power Co., 447 F.3d 843, 850 (D.C. Cir. 2006) (“We view the evidence in the light most favorable to the nonmoving party and draw all inferences in its favor.”). The nonmoving party's opposition, however, must consist of more than mere unsupported allegations or denials, and must be supported by affidavits, declarations, or other competent evidence setting forth specific facts showing that there is a genuine issue for trial. See Fed. R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 324 (1986). The non-movant “is required to provide evidence that would permit a reasonable jury to find [in his favor].” Laningham v. U.S. Navy, 813 F.2d 1236, 1242 (D.C. Cir. 1987).

         III. ANALYSIS

         A. Copyright Infringement

         Under the Copyright Act, copyright in a work vests initially in the author(s) of that work. 17 U.S.C. § 201(a). Ownership can be transferred in whole or in part, and the exclusive rights of copyright ownership may also be transferred. Id. § 201(d). An owner of a valid copyright has the “exclusive right” to reproduce, distribute, or display the copyrighted works as well as prepare derivative works based upon it. Id. § 106(1)-(3), (5). Anyone who violates the exclusive rights of the copyright owner “is an infringer of the copyright or right of the author, as the case may be.” Id. § 501(a). The legal or beneficial owner of that exclusive right may then “institute an action for any infringement.” Id. § 501(b). In order to succeed on their copyright infringement claims, the Plaintiffs must prove both “‘(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.'” Stenograph, LLC v. Bossard Assoc., Inc., 144 F.3d 96, 99 (D.C. Cir. 1998) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)).

         1. Feist Prong 1: Ownership of a Valid Copyright

         a. Ownership

         The court must first decide the threshold issue of whether Plaintiffs own the copyrights in part or outright such that they have standing to challenge Defendant's alleged infringement. The Copyright Act provides that possession of a certificate of registration from the U.S. Copyright Office “made before or within five years after first publication of the work shall constitute prima facie evidence, ” creating a rebuttable presumption of ownership of a valid copyright. 17 U.S.C. § 410(c); see also MOB Music Publ'g. v. Zanzibar on the Waterfront, LLC, 698 F.Supp.2d 197, 202 (D.D.C. 2010). If the copyright was registered more than five years after the work was published, then the “evidentiary weight to be accorded . . . shall be within the discretion of the court.” 17 U.S.C. § 410(c).

         When a party offers as prima facie evidence a registration certificate for a compilation of individual works that it authored, rather than the registration for a specific individual work, a court may consider this to be similar prima facie evidence of ownership, creating the same rebuttable presumption. See Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283-84 (4th Cir. 2003), abrogated by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010); Morris v. Business Concepts, Inc., 259 F.3d 65, 68 (2d Cir. 2001), abrogated on other grounds by Muchnick, 559 U.S. 154 (2010). Moreover, the registration certificate is sufficient prima facie evidence for the individual works within the compilation if the compilation is deemed to be a “single work.” Federal regulations provide that “all copyrightable elements that are otherwise recognizable as self-contained works, that are included in a single unit of publication, and in which the copyright claimant is the same” constitute a “single work, ” such that they are validly registered under a single registration certificate 37 C.F.R. § 202.3(b)(4)(A); Kay Berry, Inc. v. Taylor Gifts, Inc., 4221 F.3d 199, 205-06 (3d Cir. 2005); Yurman Studio, Inc. v. Castaneda, 591 F.Supp.2d 471, 483 (S.D.N.Y. 2008).

         Once a copyright holder has proffered this prima facie evidence, the alleged infringer “challenging the validity of the copyright has the burden to prove the contrary.” Hamil Am., Inc. v. GFI, Inc., 193 F.3d 92, 98 (2d Cir. 1999); United Fabrics Int'l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 2011) (infringer “has the burden of rebutting the facts set forth in the copyright certificate”). The defendant-infringer might argue that the plaintiff-copyright holder had some defect in the record-keeping submitted to establish ownership. However, this “skips a step, ” as the defendant must first “set forth facts that rebut the presumption of validity to which [the plaintiff's] copyright is entitled” before attacking the sufficiency of a plaintiff's evidence of ownership. United Fabrics, 630 F.3d at 1257. The infringer must use “other evidence in the record [to] cast[] doubt on” the validity of the ownership. Fonar Corp. v. Domenick, 105 F.3d 99, 104 (2d Cir. 1997) (emphasis in original). The court in Fonar noted that defendant-infringers have overcome the presumption of validity with evidence that the work has been copied from the public domain and evidence that the work was non-copyrightable. Id. (citing Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 763-64 (2d Cir. 1991); Carol Barnhart, Inc. v. Economy Cover Corp., 773 F.2d 411, 414 (2d Cir. 1985)). Parties challenging the validity of copyright registrations must therefore do more than simply point out potential errors in the certificate. See 2 Nimmer on Copyright § 7.20(b)(1) (“a misstatement . . . in the registration application, if unaccompanied by fraud, should neither invalidate the copyright nor render the registration certificate incapable of supporting an infringement action”).

         The ASTM Plaintiffs produced copyright certificates for each of the nine standards at issue, and each of these certificates list the ASTM Plaintiffs as the authors of the works.[4] The AERA Plaintiffs also produced the copyright certificates for the 1999 Standards, listing the AERA Plaintiffs as authors.[5] Two of ASTM's standards-D86-07 and D975-07-were registered more than five years after they were published. The court accords these the same evidentiary weight as if they had been registered within five years. See 17 U.S.C. § 410(c) (court has discretion over evidentiary weight). Moreover, the court finds that the registration certificate for the 1999 Book of Standards sufficiently establishes prima facie evidence of ASTM's ownership of D396-98 and D1217-93(98). Therefore, the ASTM Plaintiffs and AERA Plaintiffs have established their ownership of the works at issue with prima facie evidence.

         The burden to offer evidence disproving ownership thus shifts in both cases to Defendant. See Zanzibar, 698 F.Supp.2d at 202; Roeslin v. District of Columbia, 921 F.Supp. 793, 797 (D.D.C. 1995) (finding that because the copyright registration listed plaintiff as the author, the “burden is thus on the defendant to establish” that plaintiff was not the author). To rebut the presumption of validity, in both cases Defendant pointed to the fact that the certificates state that the standards were “works for hire”-i.e., that Plaintiffs acquired authorship and ownership rights because their employees or anyone who signed a work-for-hire agreement wrote the standards-and the certificates further state that Plaintiffs are the authors of the “entire text[s], ” when Plaintiffs have said that the standards are drafted by hundreds or thousands of volunteer contributors. Defendant contends that the certificates must list all of these hundreds or thousands of authors in order to be accurate, and that the failure to do so is a material error which strips Plaintiffs of the presumption of ownership. However, Defendant offers scant support for this argument.

         Moreover, Defendant failed to meet its initial burden, since it did not adduce any additional evidence disproving Plaintiffs' authorship. Instead, Defendant points to weaknesses in the additional evidence that Plaintiffs proffered to establish their ownership, including questioning whether every one of the hundreds of Plaintiffs' members who contributed to the standards at issue signed an agreement with appropriate language transferring or assigning copyright ownership to Plaintiffs. Because Plaintiffs may have standing to bring this infringement suit even as part owners of the copyrights, it is not clear why Defendant asserts that Plaintiffs must prove outright ownership of their copyrights. Beyond showing that Plaintiffs' recordkeeping could perhaps be more thorough, Defendant has not identified any evidence that either the ASTM Plaintiffs or AERA Plaintiffs do not own the copyrights of the standards, in whole or in part. The court therefore concludes that the ASTM Plaintiffs and AERA Plaintiffs are the owners of the copyrights at issue and have standing to bring their claims.[6]

         b. Valid Copyrights

         Defendant also argues that Plaintiffs do not own “valid” copyrights under Feist because the standards either were never copyrightable or lost their copyright protection upon incorporation by reference into federal regulations. Defendant argues that the standards cannot be copyrighted because: (1) they are methods or systems, which are not entitled to protection under 17 U.S.C. § 102(b); (2) the standards are in the public domain as “the law”; and (3) the merger and scènes à faire doctrines preclude a finding of infringement.

         (i). Methods or Systems under Copyright Act § 102(b)

         Section 102(b) of the Copyright Act specifies eight types of works that are not protected by copyright: “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b). Though these eight types of works are not further defined in the statute, the legislative history accompanying the Copyright Act of 1976 offers some starting guidance: “Section 102(b) in no way enlarges or contracts the scope of copyright protection under the present law. Its purpose is to restate, in the context of the new single Federal system of copyright, that the basic dichotomy between expression and idea remains unchanged.” H.R. Rep. No. 94-1476, at 57, reprinted in 1976 U.S.C.C.A.N. 5659, 5670 (Sept. 3, 1976); S. Rep. No. 94-473 (Nov. 20, 1975); see also 1-2A Nimmer on Copyright § 2A.06(a)(1) (summarizing legislative history). The “basic dichotomy” refers to the well-established principle that ideas cannot be copyrighted, but expression of those ideas can be. See 1-2A Nimmer on Copyright § 2A.06(a)(2)(b) (a work “is to be denied protection only if that protection would be tantamount to protecting an excluded category (e.g., idea or method of operation) without regard to the fact that the excluded subject matter is expressed or embodied in expression”).

         This section of the Copyright Act codifies the Supreme Court's 1879 decision in Baker v. Selden, 101 U.S. 99 (1897), which denied copyright protection for systems, methods, processes, and ideas. Baker evaluated a copyright claim by the author of a manual describing “a peculiar system of book-keeping” against a defendant who published a similar guide to book-keeping using “a similar plan so far as results are concerned[, ] but mak[ing] a different arrangement of the columns, and us[ing] different headings.” Id. at 100. The Court defined the question as “whether the exclusive property in a system of book-keeping can be claimed, under the law or copyright, by means of a book in which that system is explained.” Id. at 101. In answering this question, the Court offered as an example that “[t]he copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds, or to the diagrams which he employs to explain them, so as to prevent an engineer from using them whenever occasion requires.” Id. at 103. This distinction between the actual method or system described by a work, which cannot be copyrighted, and the written words describing it, which can, is fundamental to understanding the Copyright Act's modern limitations to copyright protection in § 102(b).

         Defendant primarily argues that the Plaintiffs' standards are completely devoid of creative expression and are merely recitations of processes or procedures that a person or entity would follow. Part of this argument appears to rest only on the fact that the names of the ASTM Plaintiffs' standards, and their descriptions or advertisements, include the words “method” and “procedure.” See, e.g., ASTM D86-07 Standard Test Method for Distillation of Petroleum Products at Atmospheric Pressure, Ex. 6 to Decl. of Thomas O'Brien (“O'Brien Decl.”) (ASTM ECF No. 118-7 at 107)); ASTM D1217-93(98) Standard Test Method for Density and Relative Density (Specific Gravity) of Liquids by Bingham Pycnometer, Ex. 9 to O'Brien Decl. (ASTM ECF No. 118-7 at 136). Additionally, the AERA Plaintiffs' Rule 30(b)(6) representative noted that the 1999 Standards “describe procedures, statistical procedures, research procedures . . . how to design a test, how to collect evidence of validity, [and] how to calculate the reliability of tests.” (Def. Br. at 32 (citing AERA DSMF ¶ 77)). However, simply calling a work a “procedure” or a “method” does not revoke its copyright protection under the Copyright Act. This argument misunderstands or ignores the expression/idea dichotomy rooted in Baker and codified in § 102(b).

         Defendant also emphasizes that because the Plaintiffs' standards are highly technical, complex, and precise, and because testimony shows that the ASTM Plaintiffs attempt to create the “best” standards, then the standards are “dictated by utility” or just “discovered facts, ” and lack any creative expressive content. However, the court rejects the argument that voluntary consensus standards, such as those here, are analogous to a list of ingredients or basic instructions in a recipe, or a series of yoga poses, as in the cases cited by Defendant. Not only is there a vast gulf between the simplicity of an ingredient list and the complexity of the standards, but, more importantly, the standards plainly contain expressive content.[7] As one example, ASTM D1217-93 lists under the heading “Significance and Use”: “Although [the standard] is no longer employed extensively for the purpose, this test method is useful whenever accurate densities of pure hydrocarbons or petroleum fractions with boiling points between 90 and 110°C are required.” (ASTM ECF No. 118-7 at 136).

         The standards in these cases contain expression that is certainly technical but that still bears markings of creativity. As the Supreme Court instructed in Feist, “the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, ‘no matter how crude, humble or obvious' it might be.” 499 U.S. at 345 (quoting 1 M. Nimmer & D. Nimmer, Copyright § 1.08(C)(1) (1990)). Moreover, as Defendant conceded, there are many possible forms of expression through which the technical material in the standards could be conveyed, and the volunteer and association members who collectively author the standards “debate wording in the standards.” (Def. Br. at 32 (ASTM ECF No. 121)). Thus, however “humble” or “obvious” Defendant finds the Plaintiffs' creative choices, the standards still bear at least the “extremely low” amount of creativity required by the Supreme Court. Moreover, the undisputed record evidence also shows that other parties have written different standards on the same exact subject matter as ASTM Plaintiffs' standards, undermining the argument that the standards are so technical and precise there can be only one possible expression. (ASTM PSMF ¶¶ 38, 133).

         Importantly, Baker and § 102(b) bar Plaintiffs from attempting to copyright the system or method itself, not the written work explaining or describing that method. Here, the copyright protections held by the Plaintiffs do not prevent any person or entity from using or applying the procedures described in the standards, only from copying their written descriptions of those standards. Defendant presented no evidence that the Plaintiffs have sought to block an entity or person from using the procedures described in the standards. In fact, use of the procedures described is the entire purpose of ...

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