Many private organizations develop and copyright technical standards for specific industries, and then generate revenue by selling copies. For example, the National Fire Protection Association (NFPA) develops standards addressing the prevention of fire, electrical, and related hazards. One such standard, NFPA 10, addresses the design, inspection, maintenance, and testing of portable fire extinguishers. The NFPA sells hard copies of its standards as well as a subscription service that allows digital access.

Federal agencies sometimes may incorporate privately developed standards into law by referencing them in agency rulemaking. Incorporation by reference (“IBR”) in a published rule allows agencies to satisfy the requirement to publish rules in the Federal Register without reproducing the standards themselves. 5 U.S.C. § 552(a)(1). The Code of Federal Regulations contains more than 27,000 incorporations of privately developed standards by reference. See Standards Incorporated by Reference Database, Nat'l Inst. of Safety & Tech., https://sibr.nist.gov [perma.cc/W4BN-HLZG] (last visited Aug. 30, 2023).

Fair Use

The D.C. Circuit recently held that “the non-commercial dissemination of [industry] standards, as incorporated by reference into law, constitutes fair use and thus cannot support liability for copyright infringement.” Am. Soc'y for Testing & Materials v. Public.Resource.Org Inc., No. 22-7063, — F.4th — (D.C. Cir. Sept. 12, 2023).

The fair use defense to copyright infringement is codified at 17 U.S.C. § 107, which provides:

[T]he fair use of a copyrighted work … for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

(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.

These four enumerated factors are not exclusive. Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985).

First Fair Use Factor

The first fair-use factor “focuses on whether an allegedly infringing use has a further purpose or different character, which is a matter of degree, and the degree of difference must be weighed against other considerations, like commercialism.” Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 143 S. Ct. 1258, 1273 (2023).

The D.C. Circuit found that Public Resource's non-profit and educational mission in republishing industry standards was “to provide the public with a free and comprehensive repository of the law” was very different from the plaintiffs' commercial purpose in producing standards reflecting industry or engineering best practices.

This distinction is fundamental: Public Resource publishes only what the law is, not what industry groups may regard as current best practices. And although the standards at issue have been superseded or withdrawn as private standards, they remain important to someone trying to figure out what the law is (or, in the case of standards prospectively repealed or amended as law, what law governs disputes about past conduct).

            The distinction between standards as best practices and standards as law matters even though Public Resource does not alter or add to the standards. As we explained in ASTM II, “a secondary work can be transformative in function or purpose without altering or actually adding to the original work.” 896 F.3d at 450 (cleaned up). Consider news reporters, who must “faithfully reproduce an original work without alteration.” Id. (cleaned up). As one court has explained, a reporter's message (“this is what they said”) is very different from the original message (“this is what you should believe”). Swatch Grp. Mgmt. Servs. v. Bloomberg LP, 756 F.3d 73, 85 (2d Cir. 2014). The same principle applies here: Public Resource's message (“this is the law”) is very different from the plaintiffs' message (“these are current best practices for the engineering of buildings and products”).

Thus, the D.C. Circuit held that the first factor supported the fair use defense.

Second Fair Use Factor

The second fair-use factor “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 v. Acuff-Rose Music, Inc., 510 U.S. 569, 586 (1994). Application of this factor often depends on whether the work is factual or fictional, for “the law generally recognizes a greater need to disseminate factual works than works of fiction or fantasy.” Harper & Row, 471 U.S. at 563.

The Court held that this factor strongly supports a finding of fair use. Standards fall at the factual end of the fact-fiction spectrum, which counsels in favor of finding fair use; and legal text falls plainly outside the realm of copyright protection. “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.” ASTM II, 896 F.3d at 452.

Third Fair Use Factor

The third fair-use factor turns on whether the extent of the copying is “reasonable in relation to the purpose of the copying.” Campbell, 510 U.S. at 586.

Public Resource posts standards that government agencies have incorporated into law—no more and no less. If an agency has given legal effect to an entire standard, then its entire reproduction is reasonable in relation to the purpose of the copying, which is to provide the public with a free and comprehensive repository of the law. Given the “nature” of the works at issue, “the fact that the entire work is reproduced does not have its ordinary effect of militating against a finding of fair use.” Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 449–50 (1984) (cleaned up).

Thus, the Court held that this factor strongly supports fair use because the standards at issue have been incorporated into the law.

Third Fair Use Factor

The fourth fair-use factor about market harm “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 (cleaned up).

The Court found that the record was equivocal and unclear about the extent of any market harm.

[E]ven if Public Resource's postings were likely to lower demand for the plaintiffs' standards, we would also have to consider the substantial public benefits of free and easy access to the law. As the Supreme Court recently confirmed: “Every citizen is presumed to know the law, and it needs no argument to show that all should have free access” to it. Georgia v. Public.Resource.Org., Inc., 140 S. Ct. 1498, 1507 (2020) (cleaned up).

The Court concluded that the fourth fair-use factor does not significantly tip the balance one way or the other. While “[c]ommon sense suggests that free online access to many of the plaintiffs' standards would tamp down the demand for their works”; there was not strong support in the record evidence, and “the countervailing public benefits are substantial.”

Because the first three factors under Section 107 strongly favor fair use, and the fourth is equivocal, the D.C. Circuit held that “Public Resource's non-commercial posting of incorporated standards is fair use.”

The attorneys at Thomas P. Howard, LLC litigate copyright cases nationwide including in Colorado.