ASTM v. PublicResource.org: Trademark

American Society for Testing and Materials v. Public.Resource.Org, Inc., No. 17-7035 (D.C. Cir. Jul. 17, 2018)

Trademark: This was where the district court went very, very wrong—I consider the copyright issues difficult though I have a preferred outcome; the trademark issues should not have been.

ASTM has registrations for ASTM word marks and stylized ASTM logos, which they place on the cover pages of their technical standards. The first page of a standard introduces the name of the work by depicting the “ASTM International” logo and placing it next to the text.  Each subsequent page of the work includes a header that again displays the ASTM logo and places it next to text indicating a short title.

PRO copied these, which ASTM alleged constituted trademark infringement.  The district court found that PRO’s disclaimers didn’t work because they “do not mention [PRO’s] creation of the reproductions, [the SDOs’] lack of association or authorization, or that they are even reproductions or transcriptions.”  Thus, consumers would be confused about whether these were authentic copies of ASTM’s works, even though PRO “did not undertake the same quality control procedures,” which, in turn, would harm ASTM’s brand identity and goodwill.

Although Dastar was itself about the creation of an unauthorized derivative work, the court of appeals said that Dastar might well preclude a claim based on reproduction of identical copies of the standards, but that allegations of creation of unfaithful copies “through scanning and re-typing, with resultant errors and differences,” didn’t fall within Dastar.  The reason was that consumers who downloaded copies from PRO’s website might attribute the digital files, and their errors, to ASTM, risking confusion about “the tangible product sold in the marketplace.” Thus, the court of appeals reasoned, “post-Dastar cases where courts have found trademark claims foreclosed involved instances of virtually identical copies,” which is descriptively untrue as well as failing to account for the facts of Dastar.  [The court’s flawed distinction does highlight the difficulty Dastar poses when the copying is of material that (allegedly) has secondary meaning—it’s notable that what’s missing in the identical copy situation, in the court’s reasoning, is not the confusion, which could well be unabated; it’s just the harm to ASTM’s goodwill from the confusion.  And in an alternate scenario where the defendant was selling copies, there could well be substitutionary harm, as there could well have been in Dastar itself, since some consumers will not be like my son and will buy only one series about WWII campaigns in Europe.  If we let plaintiffs plead around Dastar by alleging confusion over the source of the copies, then Dastar becomes a dead letter.  The better solution would be to say that when the alleged confusion stems from the content itself, error-filled or otherwise, Dastar is triggered.]

The question then was the relevant likelihood of confusion test, which is usually the multifactor test. However, nominative fair use accommodates situations where it would be “virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark.” The district court declined to consider nominative fair use because it had already found that consumer confusion was likely; this was error.

There is a robust split about how to evaluate nominative fair use—as a substitute for the usual confusion test, an affirmative defense, or [ugh] as add-on factors—but the panel didn’t make a decision today for the DC Circuit. “Where, as here, there is a claim of nominative fair use, the likelihood of confusion analysis remains incomplete without at least some discussion of these factors.”  Given that PRO can reproduce some of the standards under copyright fair use, “it is hard to see how PRO could fulfill that goal without identifying the standard by its name—the very name also used in the incorporating law.”  And as for whether only so much was used as reasonably necessary, “it may well be that PRO overstepped when it reproduced both ASTM’s logo and its word marks but, as it told the district court, it is not wedded to using the logo.”  So this might point to a narrower remedy. 

And as to whether the user suggested sponsorship or endorsement, PRO’s disclaimers “may well fail to adequately eliminate the possibility a consumer would assume sponsorship or endorsement by ASTM, but that hardly means that no disclaimer could cure that risk.”  [Of course, case after case in the 9^th Circuit (and some elsewhere) has held that disclaimers aren’t required; the question under nominative fair use is whether the defendant has done anything else affirmatively, other than use the mark, to suggest sponsorship.  I also have some words I could say about the DC Circuit’s attitude towards disclaimers generally, but I shall resist.]  PRO had already modified the disclaimers to disclose that it’s the one doing the scanning, that errors are its own, and that it wasn’t affiliated with any organizations. “[E]ven if the district court ultimately concludes that the record supports an infringement finding, it should consider whether its previous grant of an injunction barring all unauthorized use is still warranted or whether it ‘may order defendants to modify their use of the mark so that all three factors are satisfied’ and a narrower remedy would suffice.”