Standard Practice: The Public Has Right to Copyrighted Material Incorporated Into Law

By on September 28, 2023
Posted In Copyrights

In a case that attracted a slew of amicus curiae participation and was the most recent in the series of American Society for Testing and Materials (ASTM) copyright cases, the US Court of Appeals for the District of Columbia Circuit affirmed the district court’s holding that the noncommercial dissemination of standards, as incorporated by reference into law, constitutes fair use and thus does not support liability for copyright infringement. Am. Soc’y for Testing & Materials v. Public.Resource.Org, Case No. 22-7063 (DC Cir. Sept. 12, 2023) (Henderson, Pillard, Katsas, JJ.)

The ASTM and the other plaintiffs are private organizations that develop and promulgate standards for establishing best practices for their respective industries or products. In 2013, they brought an action for copyright infringement against Public.Resource.Org for posting their copyrighted standards (as they were referenced in agency rulemaking and incorporated into law) on its website, thereby making these materials available to the public at no cost. After the district court initially granted ASTM’s motion for summary judgment of copyright infringement and rejected Public Resource’s fair use defense, the DC Circuit reversed and remanded for further consideration the issue of whether posting the incorporated standards constituted fair use. Subsequently, the district court “found fair use as to the posting of standards incorporated into law and infringement as to the standards not so incorporated.” The plaintiffs appealed.

On appeal, the DC Circuit analyzed the following fact-intensive fair use factors:

  • The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes
  • The nature of the copyrighted work
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole
  • The effect of the use upon the potential market for or value of the copyrighted work.

The DC Circuit concluded that the first three factors strongly favored holding that Public Resource’s posting of the incorporated standards constituted fair use. As to the first factor, the Court explained that in a manner similar to the one discussed by the Supreme Court of the United States in its 2021 Google v. Oracle Am. case, Public Resource’s use was for nonprofit, noncommercial educational purposes. The DC Circuit further found Public Resource’s use transformative in that it served different purposes than ASTM’s use (“provide[ing] the public with a free and comprehensive repository of the law” versus “producing standards reflecting industry or engineering best practices.”)

As to the second factor, the DC Circuit reasoned that the “nature of the copyrighted work” heavily favored fair use because the standards “fall at the factual end of the fact-fiction spectrum” and “have legal force, [such that] they . . . fall ‘at best, at the outer edge of copyright’s protective purposes.’” As to the third factor, the Court found that it strongly supported fair use because the standards had been incorporated and thus had “the force of law.”

With respect to the fourth factor, the DC Circuit recognized that Public Resource’s copying may harm the commercial market for ASTM’s standards. However, the Court concluded that the fourth factor did not “significantly tip the balance one way or the other” because ASTM already made its incorporated standards available to the public in “reading rooms,” and Public Resource was already prohibited from copying unincorporated standards. The Court also recognized that there was an incentive for ASTM’s consumers (i.e., builders and engineers) to rely on up-to-date versions of its standards. As a result, ASTM had incentive to continue to regularly develop and copyright updated versions of its standards, which, until incorporated into law, could not be copied by Public Resource or others without incurring liability. That said, because ASTM was unable to provide any economic evidence to suggest Public Resource’s activity harmed the market for ASTM’s standards, the potential for such harm was insufficient to outweigh the countervailing public benefit of Public Resource’s dissemination of the incorporated standards.

Finally, ASTM appealed the district court’s refusal to enjoin Public Resource’s copying of the unincorporated standards. The DC Circuit reasoned that because Public Resource promptly removed the unincorporated standards from its website and made clear its intention to only post incorporated documents in the future, the district court did not err. Because the plaintiffs were unable to produce any evidence of Public Resource intentionally posting an unincorporated standard not covered by fair use, the Court concluded that an injunction would not serve any useful purpose.

Jake B. Vallen
Jake Vallen focuses his practice on intellectual property litigation matters. Read Jake Vallen's full bio.