Appeals Court Tells Lower Court To Consider If Standards 'Incorporated Into Law' Are Fair Use; Could Have Done More

from the 102(b)-or-not-102(b),-that-was-the-question dept

Carl Malamud published the law on his website. And for that he got sued. The problem was, in posting the Code of Federal Regulations he also included the various enforceable standards included as part of those Regulations. This displeased the organizations which had developed those standards (SDOs) and who claimed a copyright in them. So they sued Public Resource for infringement, and in a terrible decision last year Public Resource lost. Public Resource then appealed, and this week Malamud’s organization won a reversal of the district court decision.

The decision by the D.C. Circuit in American Society for Testing and Materials v. stands as a win for those who would choose to republish the law, even when their doing so may involve republishing standards created by non-governmental SDOs that were then incorporated by reference into controlling law. Although one can never presume to read the tea leaves at oral argument, it did seem as though the court was extremely uncomfortable with the idea that someone could be punished for having published the law. But the particular way the court addressed the copyright and trademark claims brought against Public Resource for it having done so is still worth further discussion. Disclosure: I helped file an amicus brief on behalf of members of Congress supporting Public Resource’s defense, and amicus briefs on behalf of law professors at the district court.

On the copyright front, it is important to first note how the court did NOT resolve the question of whether republishing standards incorporated into law constituted copyright infringement. A threshold question in any copyright infringement case is whether there’s any copyright that could have been infringed at all, because no copyright = no infringement, and with no infringement the case goes away. One way there might not be a copyright is if employees of the federal government had worked on developing the standards, like the ones at issue in this case, since under § 105 of the copyright statute, works by federal government employees are ineligible for copyright protection. But in its decision the D.C. Circuit dismissed this argument, finding that Public Resource had effectively waived it at the district court below.

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. [p. 14]

Another way there might not be copyright in the standards Public Resource published is that, by being published as a factual representation of what the law is, that factual nature would preclude there being a copyright in what was republished, since, per § 102(b) of the copyright statute, purely factual works are also not eligible for copyright protection. This consideration was kicked around by the judges during oral argument because it’s a complicated issue with some interesting implications. First, there’s the question of whether the standards themselves are too factual to be copyrighted, but for the sake of this case the court generally assumed they could be. But even if they are copyrightable, the next question is what happens when the standards have now become a factual representation of the law governing people’s behavior? Does that incorporation cause them to lose their copyright? And what would it mean for SDOs and the development of future standards by third parties if that were the case?

The court, however, chose to avoid these questions. It gave several reasons for this avoidance, including that a ruling on the copyrightability of incorporated standards could have a significant economic effect on those SDOs, [p. 16], and also that it’s generally considered better practice for courts to decide cases on grounds other than constitutional ones [p. 15]. (As Public Resource and amici pointed out, not being able to post the law for people governed by it to read raises significant First Amendment and due process concerns, which would mean that the question of if the law could be copyrighted may be a constitutional one.) [p. 14-15].

Avoiding the constitutional question is all the 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.? [p. 15-16]

Instead the court chose to find for Public Resource on fair use grounds. [p.17] Or at least put Public Resource in a position to ultimately prevail on those grounds. Although the court lifted the injunctions the district court had placed on it ? injunctions that had forced Public Resource to remove from its site actual, operative, mandatory law binding on the public ? the case still needs to go back to the district court because the appeals court didn’t think it had a sufficiently developed record before it to itself fully perform its own fair use analysis. It did, however, give the district court a head start, with enough instruction of how to perform that analysis to make it likely to yield a favorable result for Public Resource on remand.

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. [p. 19]

Overall, this is a good result for Public Resource. And far be it for me to rain on Carl Malamud and his legal team’s well-deserved parade, it’s still important to point out why, although this D.C. Circuit decision is a good one, it could have been better.

For one thing, the parties have already litigated a lengthy trial. And their prize for finally winning the pie eating contest now is more pie. That litigating fair use is so arduous, even for as well-counseled a defendant as Public Resource, is a significant problem. As Lawrence Lessig has observed, “Fair use is only the right to hire a lawyer.” Fair use is of little value for worthy defendants who might ultimately win infringement cases on those grounds if they can get obliterated by the litigation defending themselves along the way. Which is one reason why the D.C. Circuit’s refusal to evaluate the core copyrightability grounds is a troubling one, because while Public Resource may ultimately prevail, what about anyone else who similarly decides to publish the law that also incorporates standards?

Furthermore, while the court’s interest in ensuring that Public Resource could survive a subsequent fair use inquiry is great for Public Resource, and there is nothing in the decision to suggest that it is only Public Resource that should get to, it won’t be helpful if the way the court framed each of the fair use factors in order to ensure it could reach Public Resource can’t be of use to other defendants not exactly like Public Resource but with their own plausible fair use defenses. Certain language in particular does give some pause, such as the hostility towards some of Public Resource’s transformative uses.

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. [p. 21 (citing American Geophysical Union v. Texaco Inc., 60 F.3d 913, 923?24 (2d Cir. 1994)]

On the other hand, much of its reasoning is necessarily flexible enough to reach other defendants so that they, too, can have the four factors balanced in their favor. For the same reasons the court found the idea distasteful that Public Resource should be prevented from sharing the law, it would be similarly distasteful if others were similarly prevented. In addition, should another defendant have difficulty showing its use is fair, the court also left open the possibility that the underlying copyrightability of the standards incorporated into law could still be challenged.

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. [p. 16]

The concurrence by Judge Katsas provides additional reassurance. First, he reiterated that the Section 102(b) and Constitutional questions raised by someone claiming copyright over parts of published law remain unresolved and may yet be resolved in a way that dispels these claims. [Katsas concurrence p. 3]. He also provided some additional framing for the fair use analysis, noting that “it puts a heavy thumb on the scale in favor of an unrestrained ability to say what the law is.” [Katsas concurrence p. 2]

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. [?] 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.? 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. [Katas concurrence p. 2]

In other words, despite the above concerns, the decision will still make it harder for future plaintiffs to try to lock people out of sharing the law on copyright grounds, as it is not something that, at least in the D.C. Circuit, will be looked upon with a friendly eye.

Meanwhile, there is also some additional good news from this case on the trademark front. Public Resource had included the trademarks of the SDOs behind the incorporated standards, and the SDOs (and district court) believed this use of the marks to be infringing. The D.C. Circuit disagreed, however, and found it possible that Public Resource’s use of the trademarks could qualify as nominative fair use, which “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.?? [p. 33-34] This issue, too, was remanded back to the trial court, although with the admonition that if the trial court should again find Public Resource’s use to be infringing, it should potentially refrain from issuing another injunction barring all use of the trademark and instead consider whether merely modifying the use would be an adequate remedy. [p.36-37].

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Comments on “Appeals Court Tells Lower Court To Consider If Standards 'Incorporated Into Law' Are Fair Use; Could Have Done More”

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That One Guy (profile) says:

Re: Re:

That they’d be done more in the open, which is a good thing for everyone involved, except the parasites of course.

Alternatively they could shift from licensing till the end of time/new standards are created and the old ones are swapped out to one-off, ‘single payment and that’s it’ jobs, where they are hired to develop the standards, they are paid for development, and the government now owns them and as such they are free for anyone to access and/or post because they are part of the law.

In such a scenario if they want to get more money down the line then they’ll have to do more work to get it, just like basically everyone else, with no more locking up legally binding standards and demanding a toll for access.

Tanner Andrews (profile) says:

Re: Any nonpublished law is invalid

Not very helpful. All of the standards producing groups publish their standards. You can buy copies from them, for a price.

A much more helpful approach would be that anyone seeking to have their standards incorporated into law must place them into the public domain. This would be similar to the position of legislatures, who place their laws into the public domain. Howell v. Miller, 91 F. 129 (US 7th Cir. 1898).

K`Tetch (profile) says:

A clear sign of the court abrogating its responsibilities

“The court, however, chose to avoid these questions. It gave several reasons for this avoidance, including that a ruling on the copyrightability of incorporated standards could have a significant economic effect on those SDOs, [p. 16]”

Just to reiterate this.
A court refused to look into a specific question of law of core relevance to a case, partly because it was afraid that doing so might result in a ruling that would then deprive a lobby group its revenue stream.


In other words, a court said that justice, facts, and the law are not as important as those groups being able to make money.

If I do a crime, can I get the judges to ignore any arguments that might lead to a verdict that could have a significant economic impact on me? No? So what’s special about them?

That One Guy (profile) says:

Re: A clear sign of the court abrogating its responsibilities

Yeah, that was absolutely a WTF moment. It’s not their job to worry about the financial viability of companies that might be impacted just because something might be removed from being covered under copyright.

If a ruling means that those companies can no longer demand tolls for access to the law then too damn bad, it’s not up to the state or courts to prop them up to the detriment of the public.

Anonymous Coward says:

Re: Re: A clear sign of the court abrogating its responsibilities

Yeah, that was absolutely a WTF moment. It’s not their job to worry about the financial viability of companies that might be impacted just because something might be removed from being covered under copyright.

Maybe half a decade ago, that might have got a "WTF" out of me. Now the most it gets out of me is a half-assed roll of the eyes.

Copyright law has become so fucking entrenched, it is constantly brought up in areas where copyright doesn’t actually apply. Cheating in videogames. Company secrets. Reputation management.

Considering that murder and rape are regularly brought up as lesser crimes in comparison to copyright infringement, if not on par, I imagine that lawyers in the future will start filing charges against such crimes by claiming "copyright infringement on someone else’s body". Because if some magic "open sesame" phrase will probably get the judge to pity you and grant you infinite oversight, why the hell not?

And arson will be described as "infringement on the copyright of a house’s design" – because that’s already happened.

That Anonymous Coward (profile) says:

Programs get your programs here, you won;t know who to root for without a program!!!

The home team, elected officials giving a private company an income stream by letting them lock parts of the law behind a paywall.

The visiting team, Congress for allowing copyright to become a weapon of mass distruction. Ignoring the actual harms to make sure a fscking cartoon mouse is pleased & that the promise of a vibrant public domain remains a barren dead plain, b/c a corporation needs another 75 years to figure out if they can get another penny out of content made in the 1940s.

Andrew D. Todd (user link) says:


Well, as I pointed out several years ago, the simplest approach is to recognize that legislative or regulatory incorporation is a “taking for public use,” for which the proprietor is entitled to compensation.

To address a point which “special-interesting” made at the time, in a subsequ3ent comment, thee is an existing body of law pertaining to takings, and taking of patents and copyrights is unlikely to raise many legal issues which have not already been addressed. Apart from the taking of real estate, for roads and such purposes, the government has from time to time commandeered ships and airplane, in wartime. Some cases under the agricultural price support system during the Great Depression also had a strong flavor of “taking” about them, though they were processed as regulatory cases. One of the classics involved a farmer who had sold all the grain he was allowed to sell, at a government supported price, but he still had more grain, and he wanted to feed it to his chickens, and sell the chickens. That would have defeated the whole purpose of the law, restricting production in exchange for government subsides., and was disallowed.

Another case involved a department store chain and mail-order vendor, Montgomery-Ward, being seized for picking a fight with labor unions during the Second World War, in violation of the No Strike Pledge agreement which the government had reached with the unions. The unions had agreed to work full speed on war materiel, provided that businesses were not allowed to attack them. There are funny pictures of two soldiers carrying the boss of Montgomery-Ward, Mr. Sewell Avery, in his office chair, out of the building. and onto the sidewalk. I had thought that there was just one picture, but, consulting Google, I find that there are many different pictures. Of course, it was a more or less staged public event, with the full press corps invited, and different photographers got their pictures at different moments, in different stages of Avery’s progress from the executive suite to the curb.

To get the process rolling, the standard proprietor would need to file, I suppose, in the U.S.Court of Claims, for a declaration that the Federal Code of Regulations not merely infringed their copyright, but effectively confiscated it.

Anonymous Coward says:

Re: Takings

Well, as I pointed out several years ago, the simplest approach is to recognize that legislative or regulatory incorporation is a "taking for public use," for which the proprietor is entitled to compensation.

We’d have to determine appropriate compensation… simpler still, and cheaper, is to declare that it’s fair use, which has never been considered "taking" and doesn’t require compensation. "Taking" is hardly an appropriate term anyway, when the "proprietor" wrote the rules with the intent they become law.

Anonymous Coward says:

Re: Takings

Or – a smart business person might look at the situation and conclude it would be smart to donate said “standards” toward the greater good, potentially creating a write off and certainly creating a bit of good public relations .. and at what cost – it is dollars under the bridge – no?

Anonymous Coward says:

This whole situation is troubling on a number of fronts.

Historically 19th century

There were no standards – each manufactures location did its own thing.
For electric power there was DC, 12.5 cycle (old term, new term hertz), 25 cycle, 50 cycle, 60 cycle, 100 cycle et electric power plants operating at any number of line voltage and power capacities and stabilites.

To say the least this was bad for light bulbs and any other electrical device.

20 Century
In the early part of the century organizations were formed to standardize manufactured products. By 1950 the US had settled on two standards. The big one covered the east coast at 60 hertz and 120 volt for consumer usage. The smaller one on the west coast was 50 hertz at 120 volts. By 1970 because of standards the west coast was converted to 60 hertz.

The point is these standards were developed by private companies for usage in their products and are continuously updated, modified, and tested by private means.

Later a large number of cities, counties, and states adopted these standards into their laws without any input in time and money into their development, usage, or update. The sale of copies of these standards and firm donations is what maintains their existence.

Now we have a court decision that basically guts the funding of the standards organizations because some one does not wish to pay for their usage under the belief that because a government decides to incorporate outsider’s standards into its laws the standards should be free.

At best this is apportion of someone’s property in the form of civil asset forfeiture.


Anonymous Coward says:

Re: Re:

I disagree. The company I work for is heavily involved with several standards groups. I am directly involved in one of these. We contribute our expertise and time for 2 reasons. 1) it’s a form of giving back 2) it directly benefits us since we are involved in writing the standards we will have to follow.

I’m I don’t see why you consider a standard to be like a physical good that I can be deprived of. If some one else uses a standard I worked on that’s a good thing. that’s the whole point of it anyway.

Anonymous Coward says:

View from Europe

There is a cost in developing and maintaining standards. If no-one in the US will be willing to pay this, due to no copyright being enforceable in standards, then the European standards will become the norm, as they will be maintained and the US ones will not be.

As these will be entirely metric, and be scaled to print on A4 paper, will this finally force the US to go metric and use sensible paper sizes?

Well, I can hope!

Anonymous Coward says:

Re: View from Europe

If no-one in the US will be willing to pay this, due to no copyright being enforceable in standards,

If you are relying on copyright to pay for the development of standards, then you are doing it wrong. The value of standards is not what you can sell them for, but rather the benefits that they bring to an industry.

The Wanderer (profile) says:

Re: Re: View from Europe

And paying to develop them yourself, rather than waiting for others to come up with them, has the benefit of making it more likely that you’ll be able to to standardize on the way you think things should be done – which is probably the way you’re already doing things – rather than have to change your practices to match the new standards.

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