Case 1:13-cv-01215-TSC Document 239 Filed 03/31/22 Page 41 of 47
“overlooked.” See Def.’s 2d MSJ at 34 n.14 (conceding that in two instances, Defendant redacted an ASTM logo in certain postings of a law by reference but overlooked it in the HTML version); Pls.’ 2d MSJ at 34 (citing Pls.’ 2d SMF ¶ 23 (NFPA’s National Electrical Code), 24 (ASTM D86-07)).
Third, the court considers whether Defendant’s use of Plaintiffs’ marks suggests that Plaintiffs have sponsored or endorsed Defendant’s posts. As an initial matter, there is no evidence to suggest Defendant has taken any action “in conjunction with the mark,” to imply “sponsorship or endorsement by the trademark holder.” New Kids on the Block, 971 F.2d at 308. Instead, since ASTM I, Defendant has taken steps to distance its reproductions from Plaintiffs.
For example, while “the disclaimers initially used by [Defendant] were quite barebones, the record contains examples of more fulsome disclaimers it later appended to at least some standards.” ASTM, 896 F.3d at 457–58 (citing O’Brien Decl., Ex. 18 (disclaiming, among other things, that [Defendant] “has transformed this specification into [HTML],” that “[a]ny errors in the transformation of th[e] specification should be reported to [PRO],” and that PRO “is not affiliated in any way with any of the organizations named herein”)). Since remand, Defendant has also distanced its reproductions from Plaintiffs by more extensive use of disclaimers, which now take three forms. Each standard Defendant posted in PDF format now has a cover page with a disclaimer identifying Defendant as posting the document and disclaiming any affiliation with, or authorization by, Plaintiffs. See Def.’s 2d SMF ¶ 166. Disclaimers appearing on the Internet Archive website versions state that Defendant posted the document and that Defendant is not affiliated with Plaintiffs, explain Defendant’s process for posting the laws by incorporation, note the possibility of errors, and encourage readers to check with Plaintiffs or governmental authorities “for further information and access to definitive versions of these
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