Many current building codes incorporate AAMA or ASTM standards into the code sections relating to windows and doors. For example, the 2009 IRC Section R612.3 states that windows with fall prevention devices and window guards “shall comply with the requirements of ASTM F 2090.” But the ASTM standard is referenced only, not quoted, so to figure out just what are requirements of ASTM F 2090, the user must purchase the standard from ASTM. That is just one example of many industry-generated consensus standards that have gained the force of law by their incorporation into adopted building codes.

Not everyone thinks it fair that the referenced standard must be separately purchased, including Public.Resource.Org (PRO), a non-profit organization whose stated purpose is to make more widely available the law and other government materials. PRO furthers this goal by posting on the Internet technical standards incorporated by reference into a law so they can be accessed for free. Several organizations, including ASTM, sued PRO for this practice asserting claims including copyright and trademark infringement. American Society for Testing and Materials, et al. v. Public.Resource.Org., Inc., U.S. District Court for District of Columbia, Case No 1:13-cv-01215-TSC.

PRO appealed a decision of the lower court finding in favor of the ASTM plaintiffs and, in July 2018, the Court of Appeals for the District of Columbia weighed in with its perspective on whether consensus standards adopted by code must be freely available to the public. American Society for Testing and Materials v. Public.Resource.Org., Inc., 896 F.3d 437 (D.C. Cir. 2018). The main difference between the decisions of the two courts is the lower court’s “all or nothing” approach versus the appellate court’s “carve it out” approach.

The question on appeal was specific, but of importance to the fenestration industry where standards and building codes are routinely interconnected: “Whether private organizations whose standards have been incorporated by reference can invoke copyright and trademark law to prevent the unauthorized copying and distribution of their works.”

PRO argued that even if the works are copyrighted, posting the standards is a fair use because it “facilitates public discussion about the law” which is a use within the public domain. After recognizing that the Copyright Act does not contemplate a situation in which a copyrighted work is incorporated by reference into a law, the court then analyzed the issue under the fair use defense which provides that use of a copyrighted work for certain purposes, including research, is not an infringement of copyright. The appellate court emphasized that application of the factors is fact-specific and is done on a case-by-case basis.

The court then discussed each of the fair use factors in detail and, in doing so, basically gives PRO a road map of how it can meet the exception. It noted that the fair use exception can be met if the standards disseminated by PRO are incorporated into law by reference but the requirements of the standard that must be met for compliance are not found in the text of the law itself. The court then tried to limit the amount of material freely distributed by stating that PRO may only post portions of the standard needed for a reader to know how to comply with the law into which the specific

standard is incorporated (e.g., if ASTM F 2090-10 were referenced, only the relevant portions of the 2010 edition could be disseminated).

The appellate court also addressed an alleged trademark violation claim under the Lanham Act. One of the plaintiffs claimed its trademark was infringed upon because PRO changed the trademark when it reproduced and posted some of the standards. The appellate court sent the case back to the lower court with instructions to consider whether the fair use exception also applied to this issue. Basically, the lower court will need to address whether reproduction of the trademark is allowed when the defendant uses the trademark to identify the goods but makes it clear to consumers that the plaintiff is the source of the trademark, not the defendant. Importantly, the appellate court stated that even if the district court finds trademark infringement and the exception was not met, it should reconsider its previous injunction barring all unauthorized use and see whether it can instead order defendants to modify use of the mark to meet the exception.

The case was returned to the lower court and motions for summary judgment on the copyright and trademark fair use issues are due for filing this Fall. The opinion’s text suggests that the appellate court is hopeful the lower court will find a way for PRO to publish portions of standards that are incorporated into law. That outcome, however, will depend on the willingness of the lower court to reconsider its prior decision that very clearly was in favor of the ASTM plaintiffs. With the number of incorporated standards within legislatively enacted buildings codes increasing, this is an important issue that will impact the fenestration industry for years to come.