American Soc. for Testing & Materials v. Public.Resource.Org, Inc., No. 13-cv-1215 (D.D.C. Feb. 2, 2017)
The copyrightability/fair use issues are serious and arguable here, but I’m going to focus on the trademark analysis, because unlike the copyright analysis it’s incoherently wrong. Public Resource made copies of ASTM standards incorporated into various laws. ASTM sued for copyright infringement and trademark infringement; the court granted summary judgment to ASTM on both claims.
PR argued that posting the standards infringed ASTM’s trademark. The court thought Dastar didn’t bar this because there was an “independent” basis for the infringement claim: “Defendant distributed standards online bearing Plaintiffs’ registered trademarks and logos,” confusing people as to the origin of the copies. But that doesn’t work. Compare the Slep-Tone cases in the 7th and 9th Circuits: you can’t get around Dastar by incorporating a trademark into your copyrighted work, because that would create a perpetual copyright over the unmutilated work. The presence of the Universal “roaring lion” at the beginning of a movie cannot keep Universal movies out of the public domain; likewise, ASTM’s trademark interest in its name and logo cannot prevent it from being correctly identified as the producer of a work on which it uses that name and logo. (Also, depending on the circuit, mere distribution on the internet might not be “use in commerce,” contrary to the court’s conclusion here.)
The court also rejected PR’s first sale argument because these were copies, and “Defendant’s quality control standards in reproducing Plaintiffs’ standards were outside of Plaintiffs’ control and below that sufficient to deem the standards it distributed ‘genuine.’” ASTM didn’t have to show a defect in the copies, only that it couldn’t exercise quality control. PR’s quality control “resulted in missing or inverted pages and typographical errors in numerical values or formulas.”
Then, the court found confusion likely on the theories that (1) ASTM authorized PR’s posting, and (2) ASTM produced the PDF and HTML versions of the standards PR posted. PR argued that, under Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924), its disclaimer was enough to inform consumers that it repackaged or changed the original. But “the disclaimer in that case stated clearly that the distributor was not connected with the producer and that the producer’s product was merely a constituent part of the distributor’s new product,” whereas PR’s initial disclaimer was:
In order to promote public education and public safety, equal justice for all, a better informed citizenry, the rule of law, world trade and world peace, this legal document is hereby made available on a noncommercial basis, as it is the right of all humans to know and speak the laws that govern them.
The court found that this didn’t mention PR’s creation of the reproductions, PR’s lack of authorization, that the reproductions were reproductions (what else would they be?), “and can hardly be called disclaimers at all.” Even if the PDFs looked like scans, that wouldn’t help a consumer determine whether PR or ASTM created the scan. (Why on earth would they care?) PR’s later disclaimer was instituted after the litigation began and the court didn’t analyze whether it would avoid confusion.
Although there was no evidence of actual confusion, the court found this “nearly as black-and-white a case as possible” because PR “intentionally created a copy that is meant to appear identical, including use of Plaintiffs’ trademarks.” A consumer might download that standard for free from PR “without knowing that it is not created by the Plaintiffs and may contain missing pages or typographical errors leading to inaccurate values for measurements.” And here’s the problem: that “it.” What is the “it” at issue? The court clearly cares about the similarity of the content, not the source identification, but trademark law is not about content, and Dastar should make it impossible to argue that trademark infringement occurs merely from correctly copying content.
The court then rejected PR’s nominative fair use defense by taking a “one from column A, one from column B” approach to the different circuits’ tests. It started with the 9th Circuit version, requiring PR to show “that its use of Plaintiffs’ trademarks was necessary to describe their standards; that it only used as much of the marks as was reasonably necessary to identify the standards; and that it has not done anything to suggest sponsorship or endorsement by the Plaintiffs or to inaccurately describe the relationship between the parties’ products.” (citing Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 154 (4th Cir. 2012)). But then: “Nominative fair use by a defendant makes it ‘clear to consumers that the plaintiff, not the defendant, is the source of the trademarked product or service’” (citing Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 220 (3d Cir. 2005)), a case that adopts a different version of the test).
And finally, “if Defendant’s use is nominative fair use, it would not create ‘confusion about the source of [the] defendant’s product’” (citing Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 102 (2d Cir. 2010) (alteration in original), a case that doesn’t actually apply any particular test, just announces a conclusion that means that nominative fair use isn’t a defense or a separate test: You don’t need a defense if your use doesn’t cause confusion; outside of the Second Circuit the nominative fair use test therefore substitutes for the usual confusion factors, because those factors work really badly in cases of referential use (e.g., similarity of the marks will always be identical if there’s a reference). Just to confirm that the court isn’t treating nominative fair use as a defense, it concludes “because the court has already determined that consumer confusion as to the source of the trademarked standards is likely, the nominative fair use defense is inapplicable and the court need not assess each of the Rosetta Stone factors” (emphasis added) That is, of course, exactly why nominative fair uses need to be treated differently. Even in the Second Circuit version, there's a need to consider the nominative fair use elements along with the other factors!