Case 1:13-cv-01215-TSC Document 239 Filed 03/31/22 Page 8 of 47
regarding the nature of each of the standards at issue, the way in which they are incorporated, and the manner and extent to which they were copied by [Defendant].” Id. at 449. At the same time, the court need not consider each standard individually where, as here, the standards are susceptible to groupings relevant to the fair use analysis. Id.
On Plaintiffs’ trademark infringement claims, the Circuit directed the court to reconsider Defendant’s affirmative defense of nominative fair use, reasoning that “it may well be that [Defendant] overstepped when it reproduced both ASTM’s logo and its word marks,” but that the district court’s analysis of that defense would “provide valuable insight both into whether trademark infringement has occurred and, if so, how broad a remedy is needed to address the injury.” Id. at 457.
- B. Fact Development on Remand and Second Motions for Summary Judgment
Following remand, Defendant reposted its versions of Plaintiffs’ standards to the Internet Archive website. ECF No. 199-2, Pls.’ Second Statement of Material Facts (“Pls.’ 2d SMF”) ¶ 11; ECF No. 204-1, Def.’s Statement of Disputed Facts (“Def.’s SDF”) ¶ 11. In doing so, it largely redacted Plaintiffs’ logos. See Pls.’ 2d SMF ¶¶ 21–25; Def.’s SDF ¶¶ 21–25. Plaintiffs, however, point to instances where Defendant did not redact the ASTM logo and word mark, and the NEC logo. See Pls.’ 2d SMF ¶¶ 23–25.
Defendant also changed the disclaimers it includes with each of Plaintiffs’ works that it posts. Those disclaimers take three forms. The first appears on the cover page of posted PDF copies of Plaintiffs’ works. Pls.’ 2d SMF ¶ 26; Def.’s SDF ¶ 26. The second appears on the Internet Archive webpage below the PDF copy. Pls.’ 2d SMF ¶ 27; Def.’s SDF ¶ 27. The third appears as a “preamble” to Defendant’s HTML-format copies of Plaintiffs’ standards available for download on the Internet Archive website. Pls.’ 2d SMF ¶ 28; Def.’s SDF ¶ 28.
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