Case 1:13-cv-01215-TSC Document 239 Filed 03/31/22 Page 5 of 47
also uploaded Plaintiffs’ standards to the Internet Archive, a separate independent website. Pls.’ SDF ¶ 185.
- A. ASTM I
In 2013, Plaintiffs sued Defendant for copyright and trademark infringement, contributory copyright infringement, unfair competition, and false designation of origin as to 257 standards. See ECF No. 1, Compl. ¶¶ 142–195. Defendant counter-sued, seeking a declaratory judgment that its conduct does not violate copyright law or trademark law. See ECF No. 21, Answer ¶¶ 174–205. Plaintiffs moved for summary judgment on all but their contributory copyright infringement claim and limited their motion to nine of the 257 standards, contending that the court’s guidance on those nine standards, a “subset of particularly important standards,” would allow the parties “to resolve any remaining dispute with respect to the other works in suit.” ECF No. 118-1, Pls.’ First Mot. for Summ. J. (“Pls.’ First MSJ”) at 2 & n.1.[1] Defendant responded with its own cross-motion for summary judgment.
The court denied Defendant’s motion and granted summary judgment to Plaintiffs on their direct copyright infringement and trademark infringement claims. The court found that Plaintiffs held valid and enforceable copyrights in the incorporated standards that Defendant had copied and distributed, and that Defendant failed to create a triable issue of fact that its reproduction qualified as “fair use.” ASTM, 2017 WL 473822, at *18. As to ASTM’s trademark infringement claims, the court held that Defendant had used copies of ASTM’s marks in commerce in a manner “likely to cause confusion,” id. at *20, *22–23 (citing Restatement
- ↑ In ASTM I, the nine standards were: ASTM D86-07, ASTM D975-07, ASTM D396-98, ASTM D1217-93 (98), the 2011 and 2014 versions of NFPA’s National Electrical Code, and the 2004, 2007 and 2010 versions of ASHRAE’s Standard 90.1. Pls.’ First MSJ at 2.
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