American Society for Testing & Materials v. UPCODES Inc

U.S. COURT OF APPEALS FOR THE THIRD

CIRCUIT

No. 24-2965

AMERICAN SOCIETY FOR TESTING & MATERIALS,

d/b/a ASTM International,

Appellant

v.

UPCODES, INC.; GARRETT REYNOLDS; SCOTT

REYNOLDS

_____________________________

Appeal from the U.S. District Court, E.D. Pa.

Judge Anita B. Brody, No. 2:24-cv-01895

Before: RESTREPO, MCKEE, and SMITH, Circuit Judges

Argued Sep. 17, 2025; Decided Apr. 7, 2026

_____________________________

OPINION OF THE COURT

RESTREPO, Circuit Judge. American Society for

Testing and Materials d/b/a ASTM International (“ASTM”) is

a non-profit organization that publishes technical standards for

a variety of industries. Legislatures and administrative

agencies frequently incorporate ASTM’s standards into

statutes and regulations. UpCodes, Inc. (“UpCodes”) is an

online research platform that offers a searchable database of

building codes. UpCodes publishes on its website several

copyrighted ASTM standards that are referenced in the

International Building Code, which has been adopted by

Philadelphia and other jurisdictions. ASTM sued UpCodes for

copyright infringement and moved for a preliminary

injunction. The District Court denied the motion, reasoning

that ASTM was unlikely to succeed on the merits because

UpCodes’ copying constitutes fair use. ASTM challenges the

denial and argues that UpCodes directly replicates ASTM’s

standards for a commercial purpose, which cannot constitute

fair use. We agree with the District Court that UpCodes is

likely to succeed on the merits of its fair use defense. Thus, we

will affirm the denial of the preliminary injunction.

I. FACTS & PROCEDURAL HISTORY

A. Factual Background

ASTM is a non-profit organization and a recognized

leader in the standard development industry. It develops and

publishes technical standards that prescribe best practices,

methods, and product specifications for a variety of industries.

Industry professionals—such as manufacturers, tradespeople,

engineers, architects, and construction experts—use these

standards to bolster safety and performance in their work.

ASTM aims to develop technical standards that “positively

impact[] public health and safety, consumer confidence, and

overall quality of life.” JA270. All ASTM standards undergo

multiple rounds of voting and peer review before they are

2

officially approved. Standards are reviewed on a five-year

schedule and are either reapproved, revised, or withdrawn.

ASTM funds its operations by selling and licensing its

standards as individual documents or by subscription. It sells

a subscription package titled ASTM Standards in Building

Codes (“SIBC”) that contains over 2,300 construction

standards referenced in building codes, including the standards

at issue in this case. Sales of ASTM’s standards account for

about 70% of its total revenue.

ASTM standards are frequently incorporated by

reference into federal, state, and local law. When a legislature

incorporates a standard by reference, it references the standard

by name in the text of a law but does not reproduce the

standard’s content. Incorporation by reference saves

significant government resources and infuses laws and

regulations with valuable subject-matter expertise. It can also

cause notice and accountability issues. Regulated entities may

face repercussions for violating a technical standard

incorporated by reference, even though the text of the standard

cannot be found in the public code.

Governments can also indirectly incorporate ASTM’s

standards into law. “Indirect” incorporation by reference, or

“third-party reference,” occurs when a law incorporates or

adopts another publication, such as a model building code, that

3

in turn incorporates a standard by reference.1 In this scenario,

the law does not directly reference, much less reproduce, the

standard.

UpCodes is a for-profit startup founded in 2016. Its

mission is to “help members of the public access and comply

with the laws that govern their built environment.” JA1667.

UpCodes provides a searchable online library of building

codes, including technical standards that, in UpCodes’ view,

have been incorporated into law.

UpCodes users can search for laws by jurisdiction or for

incorporated standards by original publisher. If users take the

latter approach, they are shown a list of jurisdictions that have

incorporated a given standard; to view the standard, they must

choose a jurisdiction and view that jurisdiction’s incorporated

version of the standard. If a jurisdiction has amended a

technical standard, UpCodes displays the amended version on

its website, not the original version. If a publisher updates a

standard after it has been incorporated into law, UpCodes

displays the historical version that is incorporated into law, not

the updated version. Pursuant to its policy to publish only the

law, UpCodes does not publish unincorporated standards.

UpCodes uses a “freemium” business model. Any user

who makes an account on UpCodes’ website can view and

1

We use the term “incorporated” throughout this opinion to

refer to both direct and indirect incorporation by reference.

4

copy building codes and incorporated standards for free.

UpCodes also offers an optional paid subscription that

provides access to bookmarking, annotation, automation, and

artificial intelligence tools.

In April 2024, UpCodes began publishing copyrighted

ASTM standards on its website without securing a license to

do so. UpCodes’ online library includes ten copyrighted

ASTM standards related to steel and aluminum used in

construction (the “Works”). Each of the Works contains

“mandatory” text that outlines technical requirements and

“non-mandatory” or supplemental text, such as explanatory

notes, supplemental materials, appendices, and annexes.

UpCodes publishes the entirety of the Works on its website,

including the mandatory and non-mandatory portions.

The International Building Code (“IBC”)—a

copyrighted work published by the International Code

Council—incorporates by reference all ten Works at issue in

this appeal. IBC Chapter 35 instructs that standards referenced

in the IBC “are part of this code to the extent of the reference

to the standard.” JA1298.

Numerous jurisdictions, including the City of

Philadelphia, have adopted the IBC as governing law. The

Philadelphia Building Code provides that “[t]he ‘2018

International Building Code’ . . . is hereby adopted as the

Philadelphia Building Code.” Phila. Code ch. 4-200 § B-1.1.

Neither the Philadelphia Building Code, nor the IBC, have

amended the Works.

5

For nine of the ten Works, ASTM has published

updated versions of the standards at issue since the Works were

incorporated into the 2018 IBC. UpCodes displays the

versions of these nine standards that were incorporated into the

IBC, not the newer, current versions.

B. Procedural History

ASTM sued UpCodes for copyright and trademark

infringement2 in the Eastern District of Pennsylvania. ASTM

moved for a preliminary injunction, asking the District Court

to enjoin UpCodes from posting ASTM’s copyrighted

standards on its website. After limited discovery and a

hearing, the District Court denied the motion. It reasoned that

ASTM could not show a likelihood of success on the merits of

its copyright infringement claim because UpCodes was likely

to succeed in proving the affirmative defense of fair use.

ASTM timely appealed.

II. JURISDICTION

The District Court had jurisdiction under 28 U.S.C.

§§ 1331 and 1338(a). We have jurisdiction under 28 U.S.C.

§ 1292(a)(1).

2

ASTM’s trademark infringement claims are not at issue on

appeal.

6

III. STANDARD OF REVIEW

We apply a “tripartite standard of review” to the denial

of a preliminary injunction. Del. Strong Fams. v. Att’y Gen. of

Del., 793 F.3d 304, 308 (3d Cir. 2015) (quoting K.A. ex rel.

Ayers v. Pocono Mountain Sch. Dist., 710 F.3d 99, 105 (3d Cir.

2013)). We review the District Court’s findings of facts for

clear error, its legal conclusions de novo, and the decision to

grant or deny an injunction for abuse of discretion. Id. “At

this early stage, we review deferentially because the ‘denial of

a preliminary injunction is almost always based on an

abbreviated set of facts, requiring a delicate balancing that is

the responsibility of the district judge.’” Del. State

Sportsmen’s Ass’n, Inc. v. Del. Dep’t of Safety & Homeland

Sec., 108 F.4th 194, 198 (3d Cir. 2024) (quoting Marxe v.

Jackson, 833 F.2d 1121, 1125 (3d Cir. 1987)).

“Fair use is a mixed question of law and fact.” Harper

& Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560

(1985). Reviewing courts must endeavor to “break such a

question into its separate factual and legal parts, reviewing

each according to the appropriate legal standard.” Google LLC

v. Oracle Am., Inc., 593 U.S. 1, 24 (2021). The ultimate

question of whether copying amounts to fair use is a legal

question to be decided de novo. Id.

IV. ANALYSIS

This appeal concerns only the first prerequisite for a

preliminary injunction: whether the movant can show “a

reasonable probability of eventual success in the litigation.”

7

Reilly v. City of Harrisburg, 858 F.3d 173, 176 (3d Cir. 2017)

(quoting Del. River Port Auth. v. Transamerican Trailer

Transp., Inc., 501 F.2d 917, 919–20 (3d Cir. 1974)). The sole

issue is whether the District Court erred in ruling that ASTM

was not likely to succeed on the merits of its copyright

infringement claim because UpCodes’ copying likely

constitutes fair use.

Article I of the Constitution grants Congress the power

to enact copyright laws “[t]o promote the Progress of Science

and useful Arts.” U.S. Const. art. I, § 8, cl.8. In line with this

goal, the Copyright Act of 1976 entitles copyright owners to

certain exclusive rights related to their works, including the

rights to “reproduce the copyrighted work,” “prepare

derivative works,” and “distribute copies . . . to the public by

sale.” 17 U.S.C. § 106. To establish a prima facie case of

copyright infringement under the Copyright Act, a plaintiff

must demonstrate ownership of a valid copyright and copying

of original elements of the plaintiff’s work. Whelan Assocs.,

Inc. v. Jaslow Dental Lab’y, Inc., 797 F.2d 1222, 1231 (3d Cir.

1986); see In re McGraw-Hill Glob. Educ. Holdings LLC, 909

F.3d 48, 66–67 (3d Cir. 2018) (clarifying the elements of a

prima facie claim for copyright infringement). The District

Court found that ASTM could establish a prima facie case, but

Upcodes was likely to succeed in showing fair use.

The fair use doctrine is “an ‘equitable rule of reason’

that ‘permits courts to avoid rigid application of the copyright

statute when, on occasion, it would stifle the very creativity

which that law is designed to foster.’” Google, 593 U.S. at 18

8

(quoting Stewart v. Abend, 495 U.S. 207, 236 (1990)). As

codified at 17 U.S.C. § 107, “the fair use of a copyrighted work

. . . for purposes such as criticism, comment, news reporting,

teaching . . . , scholarship, or research, is not an infringement

of copyright.” Fair use is an affirmative defense, and the party

asserting it bears the burden of proof. Video Pipeline, Inc. v.

Buena Vista Home Ent., Inc., 342 F.3d 191, 197 (3d Cir. 2003),

abrogated on other grounds by TD Bank N.A. v. Hill, 928 F.3d

259 (3d Cir. 2019).3

The Copyright Act provides four nonexclusive factors

that courts must consider when deciding whether a particular

use is “fair.” 17 U.S.C. § 107; Harper & Row, 471 U.S. at

560–61. These factors are:

(1) the purpose and character of the

use, including whether such use is

of a commercial nature or is for

nonprofit educational purposes;

(2) the nature of the copyrighted

work;

(3) the amount and substantiality

of the portion used in relation to

the copyrighted work as a whole;

and

3

Burdens at the preliminary injunction stage track the burdens

at trial. Gonzales v. O Centro Espirita Beneficente Uniao do

Vegetal, 546 U.S. 418, 429 (2006).

9

(4) the effect of the use upon the

potential market for or value of the

copyrighted work.

17 U.S.C. § 107.

All factors “are to be explored, and the results weighed

together, in light of the purposes of copyright.” Murphy v.

Millennium Radio Grp. LLC, 650 F.3d 295, 306 (3d Cir. 2011)

(quoting Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569,

578 (1994)). Fair use is highly fact dependent, and “its

application may well vary depending upon context.” Google,

593 U.S. at 20. As the Supreme Court has cautioned, “[t]he

task is not to be simplified with bright-line rules.” Campbell,

510 U.S. at 577 (citing Harper & Row, 471 U.S. at 560).

We analyze the four factors in turn and determine that

the District Court did not err in holding that UpCodes is likely

to succeed in showing fair use.4

A. The Purpose and Character of the Use

The first fair use factor considers “the reasons for, and

nature of, the copier’s use of an original work.” Andy Warhol

Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S. 508,

4

Because the issue of fair use is dispositive of this appeal, we

do not address UpCodes’ alternative grounds for affirmance.

10

528 (2023); see 17 U.S.C. § 107(1). We ask “whether the new

work merely ‘supersede[s] the objects’ of the original creation

. . . or instead adds something new, with a further purpose or

different character.” Warhol, 598 U.S. at 528 (quoting

Campbell, 510 U.S. at 579); see Video Pipeline, 342 F.3d at

198; Murphy, 650 F.3d at 306. This is an “objective inquiry

into what use was made, i.e., what the user does with the

original work” and is not dependent on subjective intent.

Warhol, 598 U.S. at 545. A use with a further purpose or

different character is described as “transformative.” Id. at 529;

see Google, 593 U.S. at 29. Transformativeness is a “matter of

degree.” Warhol, 598 U.S. at 529. The “degree of difference

must be weighed against other considerations” under the first

factor, like the extent to which the use is commercial or

nonprofit. Id. at 525; see 17 U.S.C. § 107(1) (requiring courts

to consider whether a copy “is of a commercial nature or is for

nonprofit educational purposes”).

In Warhol, the Supreme Court emphasized that the first

factor, with its focus on purpose, necessarily relates to the

“justification” for the use. 598 U.S. at 531. Broadly, a use

with a distinct purpose is “justified” because it is more likely

to further the goals of copyright without lessening the incentive

to create. Id. More narrowly, whether a use has a compelling

“independent justification” for copying—like needing to

mimic a song to create a parody—is relevant under the first

factor, particularly when the original and the copy “share the

same or highly similar purposes.” Id. at 532 (citing Campbell,

510 U.S. at 580).

11

1. Transformative Use

The District Court correctly concluded that UpCodes’

use is transformative because it “achieves the distinct objective

of making the law freely accessible and educating the public

on the contents of binding laws.” JA22. To reach this

conclusion, the District Court looked to the recent and factually

similar D.C. Circuit decision in ASTM v. Public.Resource.Org,

Inc., 82 F.4th 1262 (D.C. Cir. 2023) (“ASTM II”).5 There,

ASTM and two other standard development organizations sued

Public.Resource.Org (“Public Resource”), a non-profit group

that disseminates legal materials, for copyright infringement.

82 F.4th at 1266. Public Resource had posted on its website

hundreds of copyrighted technical standards. Id. On cross-

5

In the D.C. Circuit litigation, the district court initially entered

summary judgment in favor of ASTM and issued a permanent

injunction against Public Resource. ASTM v.

Public.Resource.Org, Inc., No. 13-cv-1215, 2017 WL 473822

(D.D.C. Feb. 2, 2017). The D.C. Circuit reversed and

remanded for consideration of the fair use defense on a fuller

factual record. ASTM v. Public.Resource.Org., Inc., 896 F.3d

437 (D.C. Cir. 2018) (“ASTM I”). On remand, the district court

held that posting incorporated standards was fair use and

entered summary judgment in Public Resource’s favor as to

those standards. ASTM v. Public.Resource.Org, Inc., 597 F.

Supp. 3d 213 (D.D.C. 2022). ASTM appealed, resulting in

ASTM II.

12

motions for summary judgment, the district court held that it

was fair use for Public Resource to copy 184 standards that

were directly incorporated by reference into law. Id. ASTM

appealed, and the D.C. Circuit affirmed. As to the first factor,

the D.C. Circuit reasoned that Public Resource’s use was

transformative because it “serve[d] a different purpose than the

plaintiffs’ works.” Id. at 1267. Whereas plaintiffs sought “to

advance science and industry by producing standards reflecting

industry or engineering best practices,” Public Resource’s

mission was “very different—to provide the public with a free

and comprehensive repository of the law.” Id. at 1268. Public

Resource’s distinct purpose was evident in how it “publishe[d]

only what the law is,” including incorporated standards that

had been superseded or withdrawn by the standard

development organizations. Id.

Like the District Court, we find the D.C. Circuit’s

reasoning persuasive and apply it here. UpCodes’ use has a

different purpose than ASTM’s. ASTM publishes technical

standards to “positively impact[] public health and safety,

consumer confidence, and overall quality of life.” JA270. Its

rigorous standard development process and five-year review

schedule—as well as the fact that it has updated nine of the ten

Works since they were incorporated into the IBC—

demonstrate its commitment to publishing standards that

reflect current industry consensus and best practices.

UpCodes’ stated mission, on the other hand, is to “help

members of the public access and comply with the laws that

govern their built environment.” JA1667. In line with this

13

mission, UpCodes only publishes versions of standards that

have been incorporated into law, even if those versions have

been superseded by newer versions. It displays standards

under the headings of the building codes in which they are

incorporated, asking users to choose a jurisdiction to view a

standard and integrating jurisdiction-specific amendments

when applicable. And, unlike ASTM, UpCodes makes the

standards available for free.

Although UpCodes is not a nonprofit with a purely

educational mission, it mirrors Public Resource in this key

respect: it publishes ASTM’s works to convey “only what the

law is,” not to inform industry professionals of “current best

practices.” ASTM II, 82 F.4th at 1268. This “fundamental”

distinction renders UpCodes’ use transformative. Id. Our

conclusion rests not on UpCodes’ subjective intent, but on an

objective inquiry into what it actually “does with the original

work.” Warhol, 598 U.S. at 545 (emphasis added). UpCodes’

company practices demonstrate that it publishes the Works as

law, not as technical standards.

ASTM’s arguments to the contrary are not convincing.

ASTM asserts that UpCodes’ use cannot be transformative

because it republishes the Works without alteration. This

position overlooks the first factor’s focus on purpose, not

merely expressive similarity. See Warhol, 593 U.S. at 542

(stating that “whether the new use serve[s] a purpose distinct

from the original, or instead supersede[s] its objects. . . . is[]

the ‘central’ question under the first factor” (quoting Campbell,

510 U.S. at 579)); 4 Melville B. Nimmer & David Nimmer,

14

Nimmer on Copyright § 13F.05[B][2] (2026). To that end, we

agree with our sister circuits that a secondary work “can be

transformative in function or purpose without altering or

actually adding to the original work.” ASTM II, 82 F.4th at

1268 (quoting ASTM I, 896 F.3d at 450); Swatch Grp. Mgmt.

Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 84 (2d Cir. 2014);

A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630, 639

(4th Cir. 2009).

For similar reasons, the degree of transformation in

UpCodes’ use goes beyond that required to qualify as a

derivative. See Warhol, 598 U.S. at 529. The Copyright Act

defines “derivative work” as “a work based upon one or more

preexisting works, such as a translation, musical arrangement,

dramatization . . . or any other form in which a work may be

recast, transformed, or adapted.” 17 U.S.C. § 101; Warhol, 598

U.S. at 529. While a derivative work may be a “transformed”

version of the original, the degree of difference is not sufficient

to render it “transformative.” See Warhol, 598 U.S. at 529.

ASTM relies on Hachette Book Group, Inc. v. Internet

Archive, which involved a “paradigmatic” example of a

derivative work. 115 F.4th 163, 181 (2d Cir. 2024) (quoting

Authors Guild v. Google, Inc., 804 F.3d 202, 215 (2d Cir.

2015)). In that case, Internet Archive (“IA”) provided free

digital copies of publishers’ copyrighted books and marketed

itself as a free alternative to print books and eBook licenses.

Id. at 175–76. The Second Circuit held that this use was

derivative, not transformative, because “IA’s digital books

serve[d] the same exact purpose as the originals: making

15

authors’ works available to read.” Id. at 181. Although

digitizing copies of written works involved a change in

medium, it was not accompanied by a corresponding change in

purpose and character. Id. We cannot say the same here.

Whereas IA’s purpose was limited to the publishers’ original

purpose, UpCodes’ use has a distinct purpose: to disseminate

the law.

To be sure, both ASTM and UpCodes make the Works

available to architecture, engineering, and construction

professionals interested in compliance.6 ASTM sells the SIBC

publication, which includes the copyrighted standards at issue

here. But we are mindful that “‘transformativeness’ is a matter

of degree.” Warhol, 598 U.S. at 529. We have never held that

some overlap in audience or general aim is necessarily fatal to

a fair use defense. Our analysis requires “go[ing] further and

examin[ing] the copying’s more specifically described

‘purpose[s]’ and ‘character.’” Google, 593 U.S. at 30 (quoting

6

ASTM argues that both parties share an identical purpose of

making the Works available to the public on a subscription

basis. This characterization is not supported by the record.

First, ASTM does not make the Works available to the public;

it makes them available to those who pay for them. Second,

UpCodes does not make the Works available on a subscription

basis; it makes the Works available to all users, regardless of

subscription status, and offers a paid subscription for advanced

features.

16

17 U.S.C. § 107(1)) (holding that challenged use was

transformative while acknowledging that Google copied

portions of Sun Java’s code “in part for the same reason that

Sun created those portions, namely, to enable programmers to

call up implementing programs that would accomplish

particular tasks”). On this record, UpCodes’ use is

7

transformative.

7

As for the SIBC publication, we lack information on this

record to determine whether UpCodes’ use shares the same

purpose as the publication and is likely to “substitute for, or

‘supplan[t]’” it. Warhol, 598 U.S. at 528 (quoting Campbell,

510 U.S. at 579). The parties have not detailed the content and

format of the SIBC publication, including whether it (1)

contains the versions of ASTM standards incorporated into

building codes, even if outdated; and (2) is formatted to situate

the standards within the context of the building codes in which

they are incorporated. Although ASTM describes the SIBC

publication as containing the “Works,” record evidence

describes it as containing “[t]he latest versions of 2,300+

ASTM construction standards,” JA1465 (emphasis added),

which presumably would not include the nine outdated Works

at issue here. Other evidence suggests that some but not all

SIBC subscribers have access to historical standards. See

JA1455 (stating that “online basic users have access only to

active ASTM standards” but “online plus users have access to

17

Moreover, this analysis of UpCodes’ purpose reveals

two ways that its use may be “justified.” Warhol, 598 U.S. at

531. First, by having a transformative purpose, UpCodes’ use

has the capacity to further the goals of copyright—including

advancing public knowledge—without diminishing ASTM’s

incentive to create. See id. We return to this question of

diminished incentives when analyzing the fourth factor.

Second, UpCodes has a particularly compelling independent

justification for copying. See id. at 532 (citing Campbell, 510

U.S. at 580–81). It cannot achieve its purpose of disseminating

the law without copying the law itself, which, as discussed in

more detail under the third factor, includes standards

incorporated by reference. These conclusions also counsel in

favor of fair use.

2. Commercial Nature

Another element of the first statutory factor is the

commercial nature of the work. “If a new work is used

commercially rather than for a nonprofit purpose, its use will

less likely qualify as fair.” Video Pipeline, 342 F.3d at 198.

The “crux” of this distinction “is not whether the sole motive

of the use is monetary gain but whether the user stands to profit

from exploitation of the copyrighted material without paying

all available ASTM standards documents, including . . .

historical and withdrawn standards”).

18

the customary price.” Harper & Row, 471 U.S. at 562.

Commerciality is only one consideration under the first factor

and does not alone determine whether a use is fair. Campbell,

510 U.S. at 584–85; Video Pipeline, 342 F.3d at 198. While “a

finding that copying was not commercial in nature tips the

scales in favor of fair use[,] . . . the inverse is not necessarily

true.” Google, 593 U.S. at 32. “[M]any common fair uses are

indisputably commercial.” Id.

The District Court considered that UpCodes makes the

Works available for free; receives no “direct monetary profit”

from publishing the Works but may derive “tangential

benefits”; and is a commercial actor rather than a non-profit.

JA21–22. Based on these facts, it construed UpCodes’ use as

“largely noncommercial” and weighed this element in favor of

fair use. Id. We conclude that the commerciality inquiry does

little to help either party.

Contrary to ASTM’s assertion, the District Court did

not clearly err in finding that UpCodes “derives no direct

monetary profit” from publishing the Works. JA22 (emphasis

added). UpCodes does not charge users for access to the

Works. Any internet user who opens an account on UpCodes’

website can access the Works for free. In this way, UpCodes’

use differs from that in Video Pipeline, where we held that the

defendant’s use was commercial because it charged a fee to

stream the plaintiff’s works. 342 F.3d at 198.

Yet unlike Public Resource, the defendant in ASTM II,

UpCodes is a for-profit entity. See ASTM II, 82 F.4th at 1266.

19

It derives revenue from its paid subscription tier, which grants

users access to premium features and automation tools.

Although the commerciality inquiry concerns the specific

“use” at issue, see 17 U.S.C. § 107(1), we agree with ASTM

that a party’s for-profit status is relevant to discerning the

commercial or noncommercial nature of the use, see Am.

Geophysical Union v. Texaco, Inc., 60 F.3d 913, 921–22 (2d

Cir. 1994) (considering defendant’s for-profit status as relevant

to the fair use analysis because doing otherwise would be

“overly simplistic”). It is not dispositive, however. See, e.g.,

Bouchat v. Balt. Ravens Ltd. P’ship, 619 F.3d 301, 314 (4th

Cir. 2010) (holding that a for-profit sports team’s use of a

former logo in its corporate headquarters had “no clear-cut

commercial purpose”). Here, the significance of UpCodes’

for-profit status is moderated by the fact that users pay for

access to UpCodes’ proprietary tools and technology, not for

access to the Works.

We also consider that UpCodes may reap “tangential

benefits” from copying that could indirectly bolster the

company’s commercial performance. JA22. Such indirect

commercial advantage is also relevant to assessing

commerciality, but it carries less weight than evidence of direct

profit. See Texaco, 60 F.3d at 921 (distinguishing between “a

direct commercial use” and a “more indirect relation to

commercial activity”); Sony Comput. Ent., Inc. v. Connectix

Corp., 203 F.3d 596, 607 (9th Cir. 2000) (holding that the first

factor favored fair use where the commercial use “was an

intermediate one, and thus was only indirect or derivative”

20

(citation modified)); Hachette, 115 F.4th at 185 (declining to

characterize defendant’s use as commercial based only on an

“attenuated” link between copying and commercial profit).

Common sense supports that UpCodes reaps some

commercial benefit from copying, but the manner and extent

of that benefit remain unclear. ASTM argues that UpCodes’

“freemium” business model inherently relies on free access to

the Works to attract customers to its site and grow its paid user

base.8 It also points to an email exchange that shows UpCodes’

interest in a paying customer’s need for certain ASTM

standards. While such evidence suggests that copying may

lead to increased website traffic or improved customer

8

ASTM relies on factual findings from National Fire

Protection Ass’n v. UpCodes, Inc., where the court found that

UpCodes “generates revenue by attracting users to its website,

offering some content for free to funnel prospective customers

to its platform, and monetizing a portion of its free-tier users

by converting them to paying customers.” 753 F. Supp. 3d

933, 961 (C.D. Cal. 2024). However, ASTM provides no

insight into the evidentiary basis for these findings. Further,

that case involved a different plaintiff and set of technical

standards, and it addressed UpCodes’ motion for summary

judgment on the issue of fair use. Id. at 942–44. Therefore,

unlike here, the district court was construing the evidence and

drawing all reasonable inferences in the plaintiff’s favor. Id. at

945.

21

satisfaction, which could in turn increase sales, the record is far

from definitive.

Although UpCodes’ use has commercial and

noncommercial elements, it does not amount, at this juncture,

to “exploitation” for commercial profit. Harper & Row, 471

at 562. Therefore, the District Court reached the correct

conclusion under the first factor. Regardless of whether the

commerciality inquiry weighs minimally in favor of or against

fair use, the commercial elements of UpCodes’ use do not

outweigh its transformative nature. The first factor favors

UpCodes.

B. The Nature of the Work

The second fair use factor concerns the “nature of the

copyrighted work.” 17 U.S.C. § 107(2). This factor

“recogni[zes] that some works are closer to the core of intended

copyright protection than others.” Campbell, 510 U.S. at 586.

“Fictional, creative works come closer to this core than do

primarily factual works.” Video Pipeline, 342 F.3d at 200

(citing Harper & Row, 471 U.S. at 563). Thus, fair use is easier

to establish for primarily factual works. See Campbell, 510

U.S. at 586.

The District Court properly concluded that this factor

strongly supports fair use. The Works constitute technical

standards related to steel and construction. As the D.C. Circuit

reasoned, technical standards “fall at the factual end of the fact-

fiction spectrum, which counsels in favor of finding fair use.”

22

ASTM II, 82 F.4th at 1268 (quoting ASTM I, 896 F.3d at 451).

Furthermore, it is fair to say that once the Works were

incorporated by reference into law—which occurred before

UpCodes’ copying—they moved even further to the periphery

of copyright’s core protection. ASTM fails to explain why the

fact that the Works are indirectly incorporated by reference

into building codes, as opposed to directly, should change this

outcome.

C. The Amount and Substantiality of the Portion Used

Next, courts consider “the amount and substantiality of

the portion used in relation to the copyrighted work as a

whole.” 17 U.S.C. § 107(3). This factor asks whether the

extent of copying is “reasonable in relation to the purpose of

the copying.” Campbell, 510 U.S. at 586.

We agree with the District Court that this factor also

favors fair use. UpCodes reproduced the entirety of the Works,

which would ordinarily “militat[e] against a finding of fair

use.” Sony Corp. of Am. v. Univ. City Studios, Inc., 464 U.S.

417, 450 (1984). But the third factor relates back to the first

factor—it will “generally weigh in favor of fair use where . . .

the amount of copying was tethered to a valid, and

transformative, purpose.” Google, 593 U.S. at 34. Applying

these principles, the D.C Circuit reasoned in ASTM II that “[i]f

an agency has given legal effect to an entire standard, then its

entire reproduction is reasonable in relation to the purpose of

the copying, which is to provide the public with a free and

comprehensive repository of the law.” 82 F.4th at 1269.

23

Similar reasoning applies here. The IBC specifies that

referenced standards are incorporated into the code “to the

extent of the reference.” JA1298. UpCodes argues through

example that the IBC incorporates the Works in their entirety.

It points to IBC § 1810.3.2.3, which provides that “[s]teel pipe

piles shall conform to the material requirements in ASTM

A252.” JA346. As the District Court reasoned, the IBC neither

specifies that only certain provisions of the standard are

incorporated, nor identifies the specific provisions that are

related to compliance. See also ASTM v. Public.Resource.Org,

Inc., 597 F. Supp. 3d at 237. To identify the material

requirements in A252 and how to comply with them, one needs

access to the entire standard. Philadelphia and other

jurisdictions adopt the IBC as governing law, see Phila. Code.

ch. 4-200 § B-1.1, thereby giving legal effect—via indirect

incorporation by reference—to the entirety of A252. To the

extent a similar analysis applies to the rest of the Works (which

ASTM makes little effort to dispute), UpCodes reasonably

copied the entirety of the Works. It cannot fulfill its purpose

of disseminating the law without copying standards that have

been incorporated in full into the law.9

9

We do not suggest that it would be permissible for UpCodes

to copy the entirety of any technical standard “merely

referenced” in the IBC. Br. for Am. Nat’l Standards Inst. et al.

as Amici Curiae Supp. Appellants (“ANSI Br.”) 8, Dkt. No.

41. The scope of the reference controls the extent of

24

It makes no difference that UpCodes copied “non-

mandatory” portions of incorporated Works. In arguing that

UpCodes has not justified copying non-mandatory portions,

ASTM relies on a passage from ASTM I stating that the third

factor “would weigh strongly in favor of finding fair use” if

Public Resource limited its copying to material of “legal

import,” as opposed to material that “does not govern any

conduct.” 896 F.3d at 452. But the D.C. Circuit did not hold

that copying the latter type of material was antithetical to fair

use. See ASTM II, 82 F.4th at 1269. In ASTM II, it clarified

that “the most important question is what material counts as

‘law,’” and “because law is interpreted contextually, even

explanatory and background material” in an incorporated

standard “will aid in understanding and interpreting legal

duties.” Id. (citation modified); cf. Georgia v.

Public.Resource.Org, Inc., 590 U.S. 255, 274 (2020)

(“Georgia minimizes the [state code] annotations as non-

binding and non-authoritative, but that description undersells

their practical significance.”).

Standard A252 illustrates this point. The mandatory

portion of the standard provides that “wall thickness shall not

be more than 12.5% under the specified nominal wall

thickness.” JA477. But to actually determine the minimum

permissible wall thickness based on various nominal wall

incorporation into the IBC, and thus the extent of incorporation

into a building code that adopts the IBC.

25

thicknesses, one consults a “non-mandatory” table in the

standard’s appendix. JA501. It is reasonable for UpCodes to

copy non-mandatory portions of a standard incorporated in

full, as such portions still have legal effect and may prove

integral to understanding the standard’s material requirements.

A contrary ruling would be blind to the realities of how people

interpret and use law.

D. The Effect on the Market for the Copyrighted Work

The fourth statutory factor examines “the effect of the

use upon the potential market for or value of the copyrighted

work.” 17 U.S.C. § 107(4). This factor “must take [into]

account not only . . . harm to the original but also . . . harm to

the market for derivative works.” Video Pipeline, 342 F.3d at

202 (quoting Campbell, 510 U.S. at 590). Courts must

consider “the extent of market harm caused by the particular

actions of the alleged infringer,” as well as the potential market

ramifications of “unrestricted and widespread conduct of the

sort engaged in by the defendant.” Campbell, 510 U.S. at 590

(citation modified). “But a potential loss of revenue is not the

whole story.” Google, 593 U.S. at 35. When relevant, courts

should also examine “the source of the [economic] loss” and

“the public benefits the copying will likely produce.” Id. The

Supreme Court has cautioned that “[s]ince fair use is an

affirmative defense, its proponent [will] have difficulty

carrying the burden of demonstrating fair use without

favorable evidence about relevant markets.” Campbell, 510

U.S. at 590.

26

The District Court viewed the fourth factor as

equivocal. On one hand, it found that UpCodes’ copies are “an

effective substitute” for the Works, and it is “plain to see” how

UpCodes’ copying will affect the market for the Works. JA34–

35 (citation modified). On the other hand, it reasoned that

ASTM may have other incentives to create technical standards

even if some incorporated standards lose copyright protection,

and “the countervailing public benefits of UpCodes’ copying

are substantial.” Id. at 35–36. Thus, “the fourth factor ‘[did]

not significantly tip the balance one way or the other.’” Id. at

37 (quoting ASTM II, 82 F.4th at 1272).

The District Court correctly concluded that the fourth

factor is equivocal, but we reach this outcome for different

reasons. In assessing market harm, the relevant market is that

in which ASTM operates and sells the Works—the market for

technical standards—and the relevant source of the loss is

substitution. See Campbell, 510 U.S. at 591 (describing

“cognizable” market harm as “affect[ing] the market for the

original . . . by acting as a substitute for it”); Hachette, 115

F.4th at 189 (“We ask not whether the second work would

damage the market . . . but whether it usurps the market.”

(citation modified)).

Under this framework, it is significant that UpCodes

makes the entirety of the Works available on its website for

free. As the District Court found, “if the [Works] can be

obtained for free from UpCodes, consumers will be less

incentivized to purchase the [Works] from ASTM for a fee.”

JA34–35. Such loss from substitution is the exact type of loss

27

cognizable under the fourth factor. This led the District Court

to conclude that UpCodes’ copies are effective substitutes for

and likely to affect the market for the Works. But contrary to

ASTM’s assertion, the analysis does not end there.10

First, accepting that it is plain to see how UpCodes’

copying will affect the market for the Works, the potential

harm to the broader market for technical standards appears

limited.11 See Google, 593 U.S. at 36 (considering the “likely

10

To the extent ASTM argues that we should presume

significant market harm without further inquiry, we reject that

argument. In Campbell, the Supreme Court clarified that “[n]o

‘presumption’ or inference of market harm . . . is applicable to

a case involving something beyond mere duplication for

commercial purpose.” 510 U.S. at 591. It reasoned that “when

a commercial use amounts to mere duplication of the entirety

of an original, it clearly supersedes the objects.” Id. (citation

modified). “But when, on the contrary, the second use is

transformative, market substitution is at least less certain, and

market harm may not be so readily inferred.” Id. (emphasis

added). We have already determined that UpCodes’ use is

transformative and thus will not presume significant harm to

ASTM’s market for technical standards.

11

Although the District Court did not delve into the record to

examine the extent of market harm, “we may affirm on any

28

amount of loss” under the fourth factor); ASTM II, 82 F.4th at

1271 (holding that the fourth factor was equivocal in part

because the record evidence “cast[ed] doubt on the plaintiffs’

claims of significant market injury” (emphasis added)). As to

the amount of substitution, ASTM points to evidence showing

that a modest number of users who accessed the Works on the

UpCodes website were known ASTM subscribers or shared the

same email domain as known subscribers. Such data indicates

that some ASTM subscribers have accessed UpCodes’ copies,

but it says nothing about the number of subscribers who have

subsequently canceled their ASTM subscriptions. As for lost

revenue, ASTM emphasizes that it derives 70% of its revenue

from sales of technical standards, but we have no insight into

what percentage of revenue derives from sales of standards

incorporated into law.

UpCodes identifies evidence that calls into question the

robustness of the market for standards incorporated into law.

If the Works are any indication, many standards incorporated

into law are outdated. Record evidence shows that PDF sales

of the individual Works decreased significantly after the

relevant standards were updated. While we do not discount

that demand may exist for outdated technical standards, it

appears dim in comparison to the demand for current

standards. Without more information about the demand for

ground supported by the record.” Laurel Gardens, LLC v.

Mckenna, 948 F.3d 105, 116 (3d Cir. 2020).

29

each category of standards, and the percentage of incorporated

standards within each category, we cannot predict significant

market harm based on UpCodes’ copying, even if it becomes

widespread.12 In other words, because the technical standard

industry outpaces legislators, it is possible that this case

presents an atypical scenario where copies may be effective

substitutes for the Works (as found by the District Court)

without necessarily usurping the relevant market.

Second, it is necessary to consider the likely public

benefits of UpCodes’ copying as part of the fourth factor

analysis in this case. See Google, 593 U.S. at 35–36. We do

not suggest that assessing public benefits is always required

under the fourth factor, even where copying enhances public

access to a copyrighted work. See id. at 36 (“We do not say

that these questions are always relevant to the application of

fair use . . . .”). But it is pertinent in a case implicating public

access to the law, which all citizens are “presumed to know.”

Georgia, 590 U.S. at 265 (citation modified). We assess how

likely public benefits balance against likely economic harm,

paying special attention to implications for copyright’s core

concern with “the creative production of new expression.”

Google, 593 U.S. at 35. In ASTM II, the D.C. Circuit noted the

12

While it may be significant that ASTM generates substantial

subscription revenues from the SIBC publication, this issue

would benefit from additional factual development. See supra

Section IV.A.1.

30

“substantial public benefits of free and easy access to the law.”

82 F.4th at 1271. The District Court followed suit, noting that

UpCodes’ copying would mitigate notice and accountability

problems associated with incorporation by reference and

provide “practical value” to journalists, union members, and

legal organizations. JA36.

Enhanced public access to the law is a clear and

significant public benefit. In this context, enhanced access

benefits not only regulated entities that must comply with a

building code, but also building residents protected by the

code, government entities enforcing its requirements, press

members reporting on such enforcement, and members of the

public who wish to debate or change the law. See Br. Reporters

Comm. Freedom Press as Amicus Curiae Supp. Appellees 5–

13, Dkt. No. 64-1; Br. Admin. L. Professors as Amici Curiae

Supp. Appellees 15–19, Dkt. No. 60.13

But an accurate assessment of the potential public

benefits of UpCodes’ copying must account for the other side

13

ASTM reiterates that it will provide a standard for free to

anyone who cannot afford to purchase it. But the process for

requesting a free standard appears opaque, and there is no

evidence in the record that anyone has used it to access the

Works at issue. The mere possibility of obtaining a free

technical standard does not nullify the public benefits

associated with enhanced access to law.

31

of the same coin—potential public harm. See Hachette, 115

F.4th at 195 (considering, under the fourth factor, that

disseminating digital books for free would result in “little

motivation to produce new works,” which would “negatively

impact the public”). It is not lost on us that this dispute only

exists because ASTM and other standard development

organizations also serve an important public purpose. They

develop cutting-edge standards that promote safety and

efficacy across industries, and they save the government

substantial resources by providing the technical content for

many laws. See Br. Am. Med. Assoc. & Am. Dental Assoc. as

Amici Curiae Supp. Appellant 5–7, Dkt. No. 35; ANSI Br. 10–

12.

Should unfettered copying cause significant economic

loss to ASTM, it could threaten ASTM’s ability to develop

technical standards, which would undermine copyright’s

“ultimate aim” of promoting creativity for the public good.

Sony Corp., 464 U.S at 432 (quoting Twentieth Century Music

Corp. v. Aiken, 422 U.S. 151, 156 (1975)); see ANSI Br. 13–

15 (describing how loss of revenue could cause standard

development organizations to publish fewer or lower quality

standards). Because we lack sufficient information to assess

the likelihood of significant market harm to ASTM, we also

cannot assess the likelihood of this threat and the weight that

should be afforded to it. The District Court’s tentative finding

that ASTM “may have other incentives to continue developing

technical standards” provides some reason to question the

32

vulnerability of ASTM’s standard development business, but it

surely does not settle the issue. JA35 (emphasis added).14

On the current record, the likely market harm from

UpCodes’ copying appears limited. Nonetheless, many

important questions remain unanswered, and we view the

fourth factor as equivocal.

E. Overall Assessment

The District Court properly concluded that UpCodes

has met its burden to show likely success on the merits of its

fair use defense. Three of the four statutory factors weigh in

favor of fair use, and the fourth factor is equivocal. On

balance, the factors favor fair use. The District Court did not

14

The District Court construed its assessment of ASTM’s

incentives to continue developing technical standards as

relevant to whether ASTM will have “more economic power

than is necessary to achieve the incentive to create” and thus

whether enforcing ASTM’s copyright will “interfere with . . .

copyright’s basic creativity objectives.” JA35 (quoting

Google, 593 U.S. at 21, 39). We think the discussion of

ASTM’s incentives is more simply and appropriately situated

within an analysis of the potential public benefit (and harm) of

copying, which is also relevant to whether copying serves the

creativity objectives of copyright. See Google, 593 U.S. at 35

(asking whether public benefits are “related to copyright’s

concern for the creative production of new expression”).

33

abuse discretion in denying ASTM’s motion for a preliminary

injunction.

*****

For the foregoing reasons, we will AFFIRM the District

Court’s October 2, 2024 Order denying ASTM’s motion for a

preliminary injunction.

Counsel for Appellant

J. Kevin Fee [ARGUED]

Stanley Panikowski

Jane W. Wise

DLA PIPER

Counsel for Amicus Appellant

Linda Steinman

DAVIS WRIGHT TREMAINE

Jack R. Beirig

ARENTFOX SCHIFF

Rachel Miller-Ziegler

MUNGER TOLLES & OLSON

Counsel for Appellee

Joseph R. Palmore [ARGUED]

Joseph C. Gratz

Hannah Jiam

Aditya V. Kamdar

Brian R. Matsui

Joel F. Wacks

34

MORRISON & FOERSTER

Counsel for Amicus Appellee

Samuel W. Silver

WELSH & RECKER

Adina H. Rosenbaum

PUBLIC CITIZEN LITIGATION GROUP

Paula K. Burke

REPORTERS COMMITTEE FOR FREEDOM OF THE PRESS

35