Case 1:13-cv-01215-TSC Document 239 Filed 03/31/22 Page 40 of 47
courts additional flexibility where certain factors may be “a bad fit” for the facts presented. See id.
As noted, in ASTM I the court found that there was a likelihood of confusion where Defendant intended its reproductions to appear identical to Plaintiffs’ works by including Plaintiffs’ word and logo marks and disclaimers that did “not mention Defendant’s creation of the reproductions, Plaintiffs’ lack of association or authorization, or that they are even reproductions or transcriptions.” See ASTM, 2017 WL 473822, at *23. The court now supplements that analysis by considering the three nominative fair use factors, and the steps Defendant has taken to reduce that likelihood of confusion.
As to the first nominative fair use factor, the court finds that Defendant’s use of Plaintiffs’ trademarks is necessary to describe Plaintiffs’ works. Indeed, “it is hard to see how [Defendant] could fulfill” its goal of informing the public about the law “without identifying the standard by its name—the very name also used in the incorporating law.” ASTM, 896 F.3d at 457. Plaintiffs’ alternative suggestion, that Defendant identify standards by their incorporating regulation, see Pls.’ Opp’n and Reply at 28, is untenable because regulations commonly incorporate multiple standards at a time. See generally Appendix. Similarly, some standards are incorporated by many provisions. See generally id.
Regarding the second factor, the court finds that Defendant’s use of Plaintiffs’ word marks is reasonably necessary to identify Plaintiffs’ works, but that its use of Plaintiffs’ logos is not. Perhaps recognizing this, Defendant previously stated it was not committed to using Plaintiffs’ logos. See ECF No. 173, Hearing Tr. at 116 (Sept. 12, 2016) (“Public.Resource would take direction from this Court. Logos: yes or no? [Defendant] doesn’t care.”). And following remand, Defendant removed Plaintiffs’ logos from all its postings, save for two that it
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