Case 1:13-cv-01215-TSC Document 239 Filed 03/31/22 Page 6 of 47
(Third) of Unfair Competition § 21 cmt. j (1995)), and that its reproduction of the marks did not qualify as a nominative fair use, id. at *23.
Defendant appealed, challenging the court’s ruling as to both copyright and trademark infringement.
The D.C. Circuit first rejected Defendant’s arguments as to copyright ownership. Defendant had argued that the participation of federal government employees in the creation of certain standards rendered them noncopyrightable works of the U.S. Government. ASTM, 896 F.3d at 446. The Circuit found that Defendant “forfeited” this argument by not adequately presenting it to the district court, and that such a claim was, in any event, “meritless,” because Defendant “submitted no evidence that specific language in any of the works was ‘prepared by an officer or employee of the United States Government as part of that person’s official duties.’” Id. (quoting 17 U.S.C. § 101).
Aside from its government-work argument, Defendant primarily advanced two arguments upon which the Circuit focused. First, Defendant argued that incorporation by reference makes the standards “part of the ‘law,’ and the law can never be copyrighted.” Id. The Circuit reasoned that Defendant’s argument presented a “serious constitutional concern with permitting private ownership of standards essential to understanding legal obligations,” but opted to save this “thorn[y]” constitutional question “for another day.” Id. at 441, 447. It explained that it could resolve the appeal within the confines of the Copyright Act without addressing the constitutional question, a course that was particularly prudent because the record revealed little about how the challenged standards were incorporated. Id. at 447. For example, “it is one thing to declare that ‘the law’ cannot be copyrighted but wholly another to determine whether any one of these incorporated standards—from the legally binding prerequisite to a labeling requirement,
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