The trademark part of ASTM v.

American Soc. for Testing & Materials v.
Public.Resource.Org, Inc., No. 13-cv-1215 (D.D.C. Feb. 2, 2017)
The copyrightability/fair use issues are serious and
arguable here, but I’m going to focus on the trademark analysis, because unlike
the copyright analysis it’s incoherently wrong.  Public Resource made copies of ASTM standards
incorporated into various laws.  ASTM
sued for copyright infringement and trademark infringement; the court granted
summary judgment to ASTM on both claims.
PR argued that posting the standards infringed PR’s
trademark. The court thought Dastar
didn’t bar this because there was an “independent” basis for the infringement
claim: “Defendant distributed standards online bearing Plaintiffs’ registered
trademarks and logos,” confusing people as to the origin of the copies.  But that doesn’t work.  Compare the Slep-Tone cases in the 7th and 9th Circuits:
you can’t get around Dastar by
incorporating a trademark into your copyrighted work, because that would create
a perpetual copyright over the unmutilated work. The presence of the Universal
“roaring lion” at the beginning of a movie cannot keep Universal movies out of
the public domain; likewise, ASTM’s trademark interest in its name and logo cannot
prevent it from being correctly identified as the producer of a work on which it uses that name and logo.  (Also, depending on the circuit, mere
distribution on the internet might not be “use in commerce,” contrary to the
court’s conclusion here.) 
The court also rejected PR’s first sale argument because
these were copies, and “Defendant’s quality control standards in reproducing
Plaintiffs’ standards were outside of Plaintiffs’ control and below that
sufficient to deem the standards it distributed ‘genuine.’”  ASTM didn’t have to show a defect in the
copies, only that it couldn’t exercise quality control.  PR’s quality control “resulted in missing or
inverted pages and typographical errors in numerical values or formulas.”
Then, the court found confusion likely on the theories that
(1) ASTM authorized PR’s posting, and (2) ASTM produced the PDF and HTML
versions of the standards PR posted.  PR
argued that, under Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924), its
disclaimer was enough to inform consumers that it repackaged or changed the
original.  But “the disclaimer in that
case stated clearly that the distributor was not connected with the producer
and that the producer’s product was merely a constituent part of the
distributor’s new product,” whereas PR’s initial disclaimer was:
In order to promote public
education and public safety, equal justice for all, a better informed
citizenry, the rule of law, world trade and world peace, this legal document is
hereby made available on a noncommercial basis, as it is the right of all
humans to know and speak the laws that govern them.
The court found that this didn’t mention PR’s creation of
the reproductions, PR’s lack of authorization, that the reproductions were reproductions (what else would they
be?), “and can hardly be called disclaimers at all.”  Even if the PDFs looked like scans, that
wouldn’t help a consumer determine whether PR or ASTM created the scan.  (Why on earth would they care?)  PR’s later disclaimer was instituted after
the litigation began and the court didn’t analyze whether it would avoid
Although there was no evidence of actual confusion, the
court found this “nearly as black-and-white a case as possible” because PR “intentionally
created a copy that is meant to appear identical, including use of Plaintiffs’
trademarks.” A consumer might download that standard for free from PR “without
knowing that it is not created by the Plaintiffs and may contain missing pages
or typographical errors leading to inaccurate values for measurements.”  And here’s the problem: that “it.”  What is the “it” at issue?   The
court clearly cares about the similarity of the content, not the source
identification, but trademark law is not about content, and Dastar should make it impossible to
argue that trademark infringement occurs merely from correctly copying content.

The court then rejected PR’s nominative fair use defense by taking a “one from
column A, one from column B” approach to the different circuits’ tests.  It started with the 9th Circuit
version, requiring PR to show “that its use of Plaintiffs’ trademarks was
necessary to describe their standards; that it only used as much of the marks
as was reasonably necessary to identify the standards; and that it has not done
anything to suggest sponsorship or endorsement by the Plaintiffs or to
inaccurately describe the relationship between the parties’ products.”  (citing  Rosetta Stone Ltd. v. Google, Inc., 676 F.3d
144, 154 (4th Cir. 2012)). But then: “Nominative fair use by a defendant makes
it ‘clear to consumers that the plaintiff, not the defendant, is the source of
the trademarked product or service’” (citing Century 21 Real Estate Corp. v.
Lendingtree, Inc., 425 F.3d 211, 220 (3d Cir. 2005)), a case that adopts a
different version of the test).  

And finally, “if Defendant’s use is nominative fair use, it
would not create ‘confusion about the source of [the] defendant’s product’”
(citing Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 102 (2d Cir. 2010)
(alteration in original), a case that doesn’t actually apply any particular
test, just announces a conclusion that means that nominative fair use isn’t a defense
or a separate test: You don’t
need a defense if your use doesn’t cause confusion; outside of the Second
Circuit the nominative fair use test therefore substitutes
for the usual confusion factors, because those factors work really badly in
cases of referential use (e.g., similarity of the marks will always be
identical if there’s a reference).  Just
to confirm that the court isn’t treating nominative fair use as a defense, it
concludes “because the court has
already determined that consumer confusion as to the source of the trademarked
standards is likely, the nominative fair use defense is inapplicable and the
court need not assess each of the Rosetta
factors” (emphasis added)  That
is, of course, exactly why nominative fair uses need to be treated differently.  Even in the Second Circuit version, there’s a need to consider the nominative fair use elements along with the other factors!

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