The District of Columbia Court of Appeals’ Recent Significant Legal Precedent Carries Implications for Standards Organizations

In American Society for Testing and Materials (ASTM), et al. v. Public.Resource.Org, Inc. (PRO), 82 F.4th 1262 (D.C. Cir. 2023), the plaintiffs, ASTM, National Fire Protection Association (NFPA), and American Society of Heating, Refrigerating and Air Conditioning Engineers (ASHRAE), are standards development organizations that create and own copyrights for technical standards that establish best practices for various industries and products, including fire safety, electrical systems, and HVAC technologies. These standards often become legally binding when incorporated by reference into federal regulations. However, they are not always easily accessible by the public, as they are not reproduced in the Code of Federal Regulations (CFR). Defendant PRO, a nonprofit organization with a mission to make government records and legal materials more accessible to the public, posted copies of hundreds of these regulation-incorporated standards on its website, allowing free public access. This action led to the plaintiffs suing PRO for copyright infringement in 2013.  PRO’s primary defense was based on “fair use,” which allows for unauthorized copying when the four factors codified at 17 U.S.C. § 107 weigh in favor of finding the defendant’s copying to be “fair.”

After years of legal proceedings, the District Court initially ruled in favor of the plaintiffs, finding that PRO had infringed nine standards and rejecting PRO's fair use defense. However, the DC Circuit reversed this decision in 2018, leading to further examination of PRO’s fair use defense. The DC Circuit’s recent opinion ultimately affirmed that PRO’s posting of standards incorporated by reference into law constituted fair use.

Here are key takeaways for standards development organizations (“standards organizations”):

• The Purpose and Character of the Use; Whether it is Transformative: The court first found that PRO’s use was for nonprofit, educational purposes.  It then determined that PRO’s use of these standards was transformative because it served a different purpose than that of the standards organizations. While the plaintiffs aimed to advance industry best practices, PRO’s mission was to provide free and comprehensive access to the law. This transformative aspect favored a finding of fair use.
• Nature of the Copyrighted Work: The court emphasized that standards fall on the factual end of the “fact-fiction” spectrum, which favors fair use.  Moreover, standards that are incorporated by reference into law without modification become virtually indistinguishable from the situation where the text of the standard was copied into the law.  Because government documents (.e.g. laws) are not protected by copyright, this factor heavily favored PRO’s fair use argument.
• Amount and Substantiality of Use: Despite PRO’s copying the entirety of the plaintiffs’ standards, the court considered this reasonable because it aligned with PRO's purpose of informing the public about standards that have been incorporated into law. This factor also favored fair use.
• Effect on Potential Market: The court found the evidence regarding the potential market harm to be equivocal. It noted that frequent updates by standards organizations and less frequent updates by lawmakers meant that the free copies provided by PRO might not be adequate substitutes for current standards. Additionally, no significant economic analysis was presented to demonstrate harm to the market. The court also recognized the substantial public benefits of free access to the law.

The Court concluded that when technical standards are incorporated into law, their status effectively shifts from private to public. For standards organizations, this poses several implications:

• Financial Impact: Standards organizations that rely on copyright licensing fees to fund their organization’s activities, or whose non-public standards, and access thereto, are the major driving force behind membership may face a reduction in revenue if circumstances result in free public access to their specifications.
• Updates and Timeliness: When public-access versions of standards are not published in coordination with the standards organization, such versions of standards could be out of sync with a standards organization’s most current non-public standards, or errata. This could influence the adoption, implementation, relevance, and reliability of standards.
• Incentives for Contribution: The ruling may reduce incentives for standards organizations and the participants in standards organizations to invest in the development of standards and overall standardization efforts, as they could lose control over their creations when deemed “required under law or regulation.”

The ASTM opinion raises the specter that when standards are incorporated into law, the risk of them being freely accessible to the public increases significantly. Standards organizations should carefully consider the legal implications and potential strategies to adapt to this changing landscape.

Questions and Answers that might be of interest to Standards Organizations

1. Under what conditions are technology standards that are published by standards organizations likely to be subject to the public’s right to freely access them?

In light of the ASTM decision, technology standards published by standards organizations are more likely to become accessible to the public when certain conditions are met.  A crucial factor is whether the standards are of such a nature that they could form the basis for legally binding regulation.  This should be a consideration when standard organizations are defining their ultimate mission, and the actions they take to ensure adoption of their standards.  While the plaintiffs in ASTM all establish standards that relate to public safety, not all organizations do so.  Nonetheless, the ASTM decision could be broadened in future litigation.  For example, if an entity, like Public.Resource.Org, provides access to standards for nonprofit, educational purposes, it might argue that there is another basis – other than providing access to the law – for finding that access should be considered to be transformative.

2. If standards organizations would like to prevent their technology standards from being subject to US fair use rights, what steps can be taken to, for example, prevent references by the government in laws or regulations?

To safeguard their technology standards from becoming freely accessible and reproducible under the fair use doctrine, standards organizations may consider taking proactive measures. One strategy would involve minimizing government references to their standards. If a standard is not expressly required by law or regulation and is not extensively cited by government agencies, under ASTM it becomes less susceptible to being treated as a public document. By keeping standards free of government mandates, organizations can maintain greater control over their copyrighted works and potentially limit free public access. In addition, standards organizations could take additional precautions to ensure that their non-public specifications are kept confidential by their membership, including adding a personalized watermark to their specifications or restricting access terms within their membership.

3. What does it mean for a Technology Standard to be required under the law or regulation?

When a technology standard is deemed "required under the law or regulation," it signifies that the standard is an integral part of legal or regulatory frameworks. In essence, compliance with the standard becomes mandatory for individuals, businesses, or entities operating within the relevant jurisdiction. This requirement may manifest in various forms, such as explicitly specifying the standard in legal texts, regulations, or ordinances. When a standard achieves this status, it blurs the line between a private, copyrighted work and a public requirement, making it more susceptible to being freely distributed and diminishing the standards organization's control over its distribution.

Conclusion

The recent ruling, where standards organizations may lose control of their copyrighted works if determined to be "required under law or regulation," poses several significant dangers. First, it potentially impacts the financial sustainability of organizations that rely on copyright license fees to fund their organization’s activities or that list access to non-public specifications as a member benefit. With free public access being a possibility, their revenue streams could be severely affected. Second, there is a risk of standards being non-uniformly applied, particularly where there is a conflict between an updated standard and the legally mandated, and publicly accessible, standard. Last, this ruling could discourage standards organizations from contributing to industry advancement, as their incentive to invest in research, development, and standardization efforts may diminish when they lose control over their creations.