Amicus Curiae Brief — Canadian Standards Association, Petitioner v. P.S. Knight Company, Limited, et al.

Supreme Court briefDec 16, 2024

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No. 24-537

IN THE

Supreme Court of the United States

————

CANADIAN STANDARDS ASSOCIATION, PETITIONER,

P.S. KNIGHT COMPANY, LTD., ET AL., RESPONDENTS.

————

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Fifth Circuit

————

MOTION FOR LEAVE TO FILE AMICUS CURIAE

BRIEF AND BRIEF OF AMICI CURIAE AMERICAN

NATIONAL STANDARDS INSTITUTE,

INCORPORATED, AMERICAN SOCIETY OF

HEATING, REFRIGERATING, AND AIR

CONDITIONING ENGINEERS, AMERICAN

SOCIETY FOR TESTING AND MATERIALS,

AMERICAN SOCIETY OF SAFETY

PROFESSIONALS, INTERNATIONAL

ASSOCIATION OF PLUMBING & MECHANICAL

OFFICIALS, INTERNATIONAL CODE COUNCIL,

INC., INTERNATIONAL ELECTROTECHNICAL

COMMISSION, THE INSTITUTE OF ELECTRICAL

AND ELECTRONICS ENGINEERS,

INCORPORATED, INTERNATIONAL

ORGANIZATION FOR STANDARDIZATION,

NORTH AMERICAN ENERGY STANDARDS

BOARD, NATIONAL ELECTRICAL

MANUFACTURERS ASSOCIATION, STANDARDS

AUSTRALIA LIMITED, TELECOMMUNICATIONS

INDUSTRY ASSOCIATION, ULSE INC., AND X12

INCORPORATED IN SUPPORT OF PETITIONER

————

J. KEVIN FEE

Counsel of Record

STANLEY J. PANIKOWSKI

JANE W. WISE

DLA PIPER LLP (US)

500 Eighth Street, N.W.

Washington, D.C. 20004

(202) 799-4441

kevin.fee@us.dlapiper.com

WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D.C. 20002

MOTION FOR LEAVE TO FILE AMICUS

CURIAE BRIEF IN SUPPORT OF PETITIONER

Pursuant to Rule 21.2(b), amici move this Court to

permit it to file this brief. The Court docketed the

petition for writ of certiorari on November 14, 2024.

Amicus briefs are, therefore, due on December 16,

2024. Amici inadvertently failed to provide the tenday notice to Respondents by December 6, 2024 as

provided by Rule 37.2. Upon realizing the oversight,

Amici provided notice to Respondents’ counsel on

December 13, 2024. Amici sought Respondents’

position regarding the filing of the amicus brief.

Respondents do not consent to this motion. Amici

timely provided notice to Petitioner. Amici respectfully

seek leave from the Court to accept its filing, which will

assist the Court in deciding the petition for certiorari

because it describes the perspectives and experiences of

fourteen standards development organizations in

relation to the question presented.

Respectfully submitted,

J. KEVIN FEE

Counsel of Record

STANLEY J. PANIKOWSKI

JANE W. WISE

DLA PIPER LLP (US)

500 Eighth Street, N.W.

Washington, D.C. 20004

(202) 799-4441

kevin.fee@us.dlapiper.com

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES ................................

INTEREST OF AMICI ........................................

SUMMARY OF ARGUMENT ..................

II.

DEVELOPMENT ......................................

A. Copyright protection fuels the resourceintensive standards development

process ..................................................

B. The public benefits from IBR of

privately developed standards ............

III. THE DECISION BELOW CONTRAVENES THIS COURT’S JURISPRUDENCE AND THREATENS PRIVATE

STANDARDS DEVELOPMENT ..............

A. The Decision Contravenes This Court’s

Holding Regarding the Government

Edicts Doctrine and Increases Uncertainty About Whether SDOs Can Continue to Perform Their Public Work.......

B. The Fifth Circuit’s Decision Ignores

the Weight of Authority Concerning

the Application of the Merger

Doctrine................................................

C. The Fifth Circuit’s Decision Threatens

Continuing and Considerable Harm

To SDOs ...............................................

CONCLUSION ....................................................

(i)

TABLE OF AUTHORITIES

CASES

Page(s)

22nd Century Techs., Inc. v. iLabs, Inc.,

No. 22-2830, 2023 WL 3409063

(3d Cir. May 12, 2023) ..............................

Am. Soc’y for Testing & Materials v.

Public.Resource.Org, Inc.,

896 F.3d 437 (D.C. Cir. 2018) ................. 6, 8, 12

Am. Soc’y for Testing & Materials v.

Public.Resource.Org, Inc.,

No. 13-cv-1215, 2017 WL 473822

(D.D.C. Feb. 2, 2017)................................. 8, 18

Am. Soc’y for Testing & Materials v.

UpCodes, Inc.,

No. 2:24-cv-1895, Dkt. 85 (E.D. Pa.) ........

Apple Comput., Inc. v.

Franklin Comput. Corp.,

714 F.2d 1240 (3d Cir. 1983) .................... 15-16

Baker v. Selden,

101 U.S. 99 (1879) .....................................

BellSouth Advert. & Pub. Corp. v.

Donnelley Info. Pub., Inc.,

999 F.2d 1436 (11th Cir. 1993) .................

Bldg. Officials & Code Adm. v.

Code Tech., Inc.,

628 F.2d 730 (1st Cir. 1980) ..................... 6, 12

Bucklew v. Hawkins, Ash, Baptie & Co., LLP.,

329 F.3d 923 (7th Cir. 2003).....................

Canadian Standards Ass’n v.

P.S. Knight Co., Ltd.,

112 F.4th 298 (5th Cir. 2024) ................. 2, 13, 17

iii

TABLE OF AUTHORITIES—Continued

Page(s)

CCC Info. Servs., Inc. v.

Maclean Hunter Mkt. Rpts, Inc.,

44 F.3d 61 (2d Cir. 1994) .......... 6, 12, 14, 15, 17

Compulife Software, Inc. v. Newman,

111 F.4th 1147 (11th Cir. 2024) ...............

Fox Television Stations, Inc. v.

BarryDriller Content Sys., PLC,

915 F. Supp. 2d 1138 (C.D. Cal. 2012) .....

Georgia v. Public.Resource.Org, Inc.,

590 U.S. 255 (2020) ............................... 2, 12-14

Hall v. United States,

566 U.S. 506 (2012) ...................................

Harper & Row, Publishers, Inc. v.

Nation Enterprises,

471 U.S. 539 (1985) ...................................

John G. Danielson, Inc. v.

Winchester-Conant Properties, Inc.,

322 F.3d 26 (1st Cir. 2003) .......................

Kregos v. Associated Press,

937 F.2d 700 (2d Cir. 1991) ......................

Mazer v. Stein,

347 U.S. 201 (1954) ...................................

MGM Studios, Inc. v. Grokster, Ltd.,

518 F. Supp. 2d 1197 (C.D. Cal. 2007) .....

Nat’l Fire Protection Assn. v. UpCodes,

No. 2:21-cv-05262-SPG-E, Dkt. 230-1

(C.D. Cal. Nov. 4, 2024) ............................ 18, 20

TABLE OF AUTHORITIES—Continued

Page(s)

Oracle Am., Inc. v. Google Inc.,

750 F.3d 1339 (Fed. Cir. 2014) ................. 15, 16

Prac. Mgmt. Info. Corp. v. Am. Med. Ass’n,

121 F.3d 516 (9th Cir. 1997), amended,

133 F.3d 1140 (9th Cir. 1998) ........ 6, 12, 17, 18

Silvertop Assocs. v. Kangaroo Mfg.,

931 F.3d 215 (3d Cir. 2019) ...................... 14-15

Veeck v. S. Bldg. Code Cong. Int’l, Inc.,

293 F.3d 791

(5th Cir. 2002) ................... 2, 6, 9, 12, 15, 17, 22

Warner Bros. Ent. Inc. v. WTV Sys., Inc.,

824 F. Supp. 2d 1003 (C.D. Cal. 2011) .....

Zalewski v. Cicero Builder Dev., Inc.,

754 F.3d 95 (2d Cir. 2014) ........................

CONSTITUTION

U.S. Const. art. I, § 8, cl. 8 ...........................

STATUTES AND REGULATIONS

17 U.S.C. § 302 .............................................

Act of June 5, 1967, Pub. L. 90-23, § 552,

81 Stat. 54, 54, codified at 5 U.S.C. § 552

(1967) .........................................................

American Technology Preeminence Act of

1991, Pub. L. 102-245, 106 Stat. 7 (1992)

Consumer Product Safety Improvement

Act of 1990, § 203, Pub. L. 101–608, 104

Stat. 3110, 3123 ........................................

TABLE OF AUTHORITIES—Continued

Page(s)

National Technology Transfer and Advancement Act of 1995, Pub. L. No. 104-113

§ 12(d), 110 Stat. 775, codified at 15

U.S.C. § 272 (Notes) ..................................

16 C.F.R. Part 1211 - Safety Standard for

Automatic Residential Garage Door

Operators, Direct Final Rule, 89 Fed.

Reg. 18,538 (March 14, 2024) ...................

COURT FILINGS

Brief of the United States as Amicus

Curiae, Google, Inc. v. Oracle Am., Inc.,

No. 14-410 (May 26, 2015) ........................

Brief of the United States as Amicus

Curiae, Google, Inc. v. Oracle Am., Inc.,

No. 18-956 (Feb. 19, 2020) ........................

OTHER AUTHORITIES

Accepted Means of Compliance; Remote

Identification of Unmanned Aircraft;

Correction, 88 Fed. Reg. 77895 (Nov. 14,

2023) ..........................................................

Administrative Conf. of the United States,

44 Fed. Reg. 1357 (Jan. 5, 1979) ..............

Emily S. Bremer, On the Cost of Private

Standards in Public Law, 63 U. KAN. L.

REV. 279 (2015) .........................................

TABLE OF AUTHORITIES—Continued

Page(s)

Emily S. Bremer, Technical Standards

Meet Administrative Law: A Teaching

Guide on Incorporation by Reference, 71

ADMIN. L. REV. 315 (2019) ........................ 9, 10

H.R. REP. NO. 104-390 (1995).......................

Incorporation by Reference, 9 Fed. Reg.

66,267 (Nov. 7, 2014) ................................

National Research Council, Standards,

Conformity Assessment, and Trade Into

the 21st Century (National Academy

Press 1995), available at http://www.nap.

edu/read/4921/chapter/1 ...........................

7, 8

1 Melville B. Nimmer & David Nimmer,

Nimmer on Copyright (2024)....................

4 Melville B. Nimmer & David Nimmer,

Nimmer on Copyright (2024)....................

Off. of Mgmt. & Budg., Exec. Off. of the

President, Issuance of Circular No. A119, Federal Participation in the Development and Use of Voluntary Standards,

47 Fed. Reg. 49,496 (Nov. 1, 1982) ...........

Off. of Mgmt. & Budget, Exec. Off. of the

President, Revised OMB Circular No. A119, 81 FR 4673 (2016), available at

https://www.whitehouse.gov/wp-content/

uploads/2020/07/revised_circular_a-119_

as_of_1_22.pdf ......................................... 7, 8, 11

1 Paul Goldstein, Goldstein on Copyright

(2000). ........................................................

vii

TABLE OF AUTHORITIES—Continued

Page(s)

Underwriters Laboratories, Inc.’s, Standard

for Door, Drapery, Gate, Louver, and

Window Operators and Systems, UL 325

(rev. 7th ed, Feb. 21, 2023) .......................

INTERESTS OF AMICI 1

Amici Curiae include American National Standards

Institute, Incorporated (“ANSI”), a national standards

coordinating institution, along with fourteen standards

development organizations (“SDOs”) that participate

in developing technical and specialized standards.

Amici SDOs are listed in the Appendix to this brief.

Each of the SDO amici invest substantial resources to

produce high-quality standards that are vital to the

functioning and safety of a range of industries,

consumer products, and regulated fields.

I. SUMMARY OF ARGUMENT

This case presents important legal issues whose

resolution below imperils the ability of standards

development organizations (“SDOs”) to continue their

shared missions to advance safety and innovation

through standardization. After Canadian Standards

Association (“CSA”) obtained a judgment in Canada

against Respondents Gordon Knight and his Canadian

company, P.S. Knight Company, Ltd., enjoining them

from infringing CSA’s copyrights in its standards,

Knight opened shop in the United States under the

name P.S. Knight Americas, Inc. and resumed infringing

CSA’s copyrighted works in the United States. The

Fifth Circuit excused Respondents’ conduct, holding

that (1) the government edicts doctrine precluded

enforcement of CSA’s copyrights in the United States

because CSA’s standards had been incorporated by

Pursuant to Supreme Court Rule 37.6, amici affirm that no

counsel for a party authored this brief in whole or in part, and

that no person or entity other than amici curiae, their members,

and their counsel made a monetary contribution intended to fund

the preparation or submission of this brief. Amici notified the

parties of its intent to file this amicus brief.

reference (“IBR’d”) into law in Canada and (2) the

merger doctrine results in CSA’s standards losing

their copyright protection when they were IBR’d.

Canadian Standards Ass’n v. P.S. Knight Co., Ltd., 112

F.4th 298, 305 (5th Cir. 2024) (the “Decision”).

The Decision directly contradicts this Court’s

precedent. In 2020, this Court resolved a longstanding

debate about how the government edicts doctrine

should be applied. It held that the doctrine is a

straightforward rule based on the identity of the

author wherein “officials empowered to speak with the

force of law cannot be the authors of—and therefore

cannot copyright—the works they create in the course

of their official duties.” Georgia v. Public.Resource.Org,

Inc., 590 U.S. 255, 259 (2020) (emphasis added). The

contrapositive is also true: the doctrine “does not

apply . . . to works created by government officials (or

private parties) who lack the authority to make or

interpret the law[.]” Id. at 265.

Despite this straightforward rule, the Fifth Circuit

held that private parties, like Petitioner and amici

SDOs, who create concededly copyrighted works can

have their copyright stripped upon IBR by any governmental entity in the United States or abroad. The

Decision expanded the Fifth Circuit’s prior holding in

Veeck v. S. Bldg. Code Cong. Int’l, Inc., 293 F.3d 791 (5th

Cir. 2002) (en banc) (“Veeck”).

The Decision also contravenes the weight of authority

concerning the merger doctrine, a rare exception to

addresses such a narrow subject matter that it can

only be expressed in one or few ways. Breaking from

the majority of circuits and guidance from the United

States Solicitor General, the Fifth Circuit held that

post-creation facts (i.e. later IBR of a copyrighted

work) can result in the copyrighted work entering the

public domain. 2

These holdings threaten significant harm to SDOs,

like amici, who are non-profit entities that each serve

a public purpose of making the world safer through

standardization and dissemination of best practices

across a vast array of industries. Instead of preserving

doctrine to reward pirates like Respondents. If left

undisturbed, Respondents and other commercial profiteers will exploit the aberrant Decision below for

commercial gain. Such conduct will disrupt the

longstanding public-private partnerships that exist

between SDOs and governments, in which SDOs

supply considerable expertise to advance safety in

every industry and bear the considerable costs

associated with standard development. This Court

should therefore grant the Petition to reverse the Fifth

Circuit’s Decision and restore meaningful copyright

protection for standards. Doing so will ensure that the

congressionally approved public-private standards

partnership can continue to advance public safety and

reduce the burden on government and its citizens.

II. COPYRIGHT PROTECTION IS ESSENTIAL

TO PRIVATE STANDARDS DEVELOPMENT.

The Constitution enshrines the Founders’ goal of

“promot[ing] the Progress of Science,” and empowers

There is an existing circuit split concerning whether the

merger doctrine is treated as a question of copyrightability or an

affirmative defense. 4 Melville B. Nimmer & David Nimmer,

Nimmer on Copyright § 13.03[B][3][e] (2024) (“Nimmer”). In

either circumstance, as addressed infra, Section III(B), the merger

doctrine should be assessed at the time of creation.

Congress to further this goal “by securing for limited

Times to Authors … the exclusive Right to their

respective Writings[.]” U.S. Const. art. 1, § 8, cl. 8. As

this Court has long recognized:

The economic philosophy behind the clause

empowering Congress to grant patents and

copyrights is the conviction that encouragement of individual effort by personal gain is

the best way to advance public welfare through

the talents of authors and inventors in ‘Science

and useful Arts.’ Sacrificial days devoted to

such creative activities deserve rewards

commensurate with the services rendered.

Mazer v. Stein, 347 U.S. 201, 219 (1954). For over a

century, copyright law has fostered the creation of

standards by SDOs.

A. Copyright protection fuels the resourceintensive standards development process.

“Standards” are technical works that describe product specifications, provide methods for manufacturing

and testing, and offer recommended safety practices.

They provide guidance that can range from the broadly

applicable, e.g., International Building Code, to the

esoteric, e.g., ASTM E2311 (Standard Practice for QCM

Measurement of Spacecraft Molecular Contamination in

Space). Standards play a “crucial role . . . in all facets

of daily life,” H.R. Rep. No. 104-390, pt. VII, at 23

(1995). They are used in a wide range of fields, including building safety, consumer products, occupational

safety, electrotechnology, and business processes.

In the United States, standards are principally

developed by private SDOs. Development processes

vary, but most prioritize transparency and inclusiveness, with development processes designed to seek

opinions from a broad spectrum of interested parties.

Accordingly, SDOs typically avoid placing any undue

financial barriers on participation, such as conditioning voting on membership status or allowing a single

interest group to exert disproportionate influence on

the process.

Creating and updating standards is expensive.

While thousands of volunteers provide input, the

SDOs themselves must cover the cost of staff who

oversee the process and assist in drafting the standards’

text. Some SDOs employ technical experts to assist

with standards development. SDOs also pay for

meeting space to accommodate hundreds of participants.

And they incur significant expenses in publishing

various committee reports, collecting public comments,

coordinating outreach and education efforts, and

managing information technology systems used for

standards development. This process is costly. In 2023

alone, the American Society for Testing and Materials

(“ASTM”) spent more than $26.8 million on technical

committee operations, and International Code Council,

Inc. (“ICC”) spent over $4 million on code development

and $1.5 million conducting hearings for its 2024 codecycle. SDOs incur still more costs in publishing the

standards.

Rather than requiring private or governmental

entities to fund the process in advance, many SDOs

rely on a back-loaded funding model through which

SDOs bear the initial costs to develop their standards

and then generate revenue from selling and licensing

their standards to the professionals who use them in

their work. Copyright protection is what makes this

possible. For example, about 70% of ASTM’s revenue

and 49% of ICC’s revenue are derived from the sale

of copyrighted standards. Although SDOs fund their

work through such revenues, many SDOs make IBR’d

standards available for read-only viewing for free and/or

make copies available at minimal cost. Accordingly,

none of the cases addressing the copyright protection

for IBR’d standards has ever identified a single person

who was unable to access the standards at issue.

This funding model is by design. When developing

a standard depends on advance funding, typically

obtained by charging parties to participate in

the standards development process, groups with

limited financial resources—including individuals,

public interest groups, and academics—have little

chance to participate in the process. A back-loaded

funding model, in contrast, encourages broader

participation in the standards development process

because the SDO is not tethered to large funders.

Standards developed through the back-loaded model

thus reflect the consensus of a broader range of

interested parties. That, in turn, makes such standards more likely to gain wide voluntary acceptance

and credibility.

As other Circuits have correctly held, IBR does not

nullify copyright protection. See CCC Info. Servs., Inc.

v. Maclean Hunter Mkt. Rpts, Inc., 44 F.3d 61 (2d Cir.

1994); Prac. Mgmt. Info. Corp. v. Am. Med. Ass’n, 121

F.3d 516 (9th Cir. 1997), amended, 133 F.3d 1140 (9th

Cir. 1998); see also Am. Soc’y for Testing & Materials v.

Public.Resource.Org, Inc., 896 F.3d 437, 441 (D.C. Cir.

2018) (“ASTM I”) (declining to decide issue); Bldg.

Officials & Code Adm. v. Code Tech., Inc., 628 F.2d 730,

736 (1st Cir. 1980) (“BOCA”) (same). Executive agencies

similarly recognized that IBR’d material retain its

Reg. 66,267 (Nov. 7, 2014) (“recent developments in

Federal law, including the Veeck decision … have not

eliminated the availability of copyright protection for

privately developed codes and standards referenced in

or incorporated into federal regulations.”); Off. of

Mgmt. & Budget, Exec. Off. of the President, Revised

OMB Circular No. A-119, 81 FR 4673, 4673-4674

(2016)3 (“A-119”) (“If an agency incorporates by reference

material that is copyrighted … [it should] respect[] the

property.”). That consensus approach is correct.

When Congress enacted the 1976 Copyright Act, it

knew that copyrighted works were routinely incorporated

into federal, state, and local law. Hall v. United States,

566 U.S. 506, 516 (2012) (courts should “assume that

Congress is aware of existing law when it passes

legislation”) (quotation omitted). Ten years earlier,

Congress authorized federal agencies to incorporate

standards into federal regulations—and the agencies

did so. See Act of June 5, 1967, Pub. L. 90-23, § 552, 81

Stat. 54, 54 (codified at 5 U.S.C. § 552) (1967).

In 1992 Congress passed Public Law 102-245,

requesting the National Research Council to conduct a

study on standards development.

See National

Research Council, Standards, Conformity Assessment,

and Trade Into the 21st Century (National Academy

Press 1995), available at http://www.nap.edu/read/49

21/chapter/1. That study contained a detailed overview

of the U.S. standards-development system, and specifically noted that many SDOs “offset expenses and

generate income through sales of standards documents,

to which they hold the copyright. For many SDOs,

publishing is a significant source of operating revenue.”

Id. at 32 (emphasis added). The study concluded that

Available at https://www.whitehouse.gov/wp-content/uploa

ds/2020/07/revised_circular_a-119_as_of_1_22.pdf.

the “U.S. standards development system serves the

national interest well” by “support[ing] efficient and

timely development of product and process standards

that meet economic and public interests.” Id. at 157.

Following the study’s recommendations, Congress

passed the National Technology Transfer and Advancement Act of 1995 (“NTTAA”), Pub. L. No. 104-113

§ 12(d), 110 Stat. 775, codified at 15 U.S.C. § 272

(Notes). Since 1996, Congress has required “all

Federal agencies and departments [to] use technical

standards that are developed or adopted by voluntary

consensus bodies, using such technical standards as

a means to carry out policy objectives or activities.”

Id. This statutory requirement codified longstanding

Executive Branch policy that it is “more efficient[] and

effective[]” for agencies to use voluntary standards

that have been created through a consensus process by

private organizations with “expertise” in an industry

than it is for the government to formulate its own

standard to impose upon an industry. See Administrative Conf. of the United States, 44 Fed. Reg. 1357, 1357

(Jan. 5, 1979); see also Off. of Mgmt. & Budg., Exec.

Off. of the President, Issuance of Circular No. A-119,

Federal Participation in the Development and Use of

Voluntary Standards, 47 Fed. Reg. 49,496 (Nov. 1,

1982) (original OMB Circular A-119); A-119 at 17-18

(2016 revised Circular).

As one court explained, “[i]f Congress intended to

revoke the copyrights of such standards when it

passed the NTTAA, or any time before or since, it

surely would have done so expressly.” Am. Soc’y for

Testing & Materials v. Public.Resource.Org, Inc., No.

13-cv-1215, 2017 WL 473822, at *11 (D.D.C. Feb. 2,

2017) (“ASTM II”), rev’d on other grounds 896 F.3d 437

(D.C. Cir. 2018). It did not.

bulk of their investment in the standards development

process. Without copyright protection, their revenues

would drop precipitously, threatening SDOs’ ability to

continue to develop the highest quality standards and

undermining the century-old, carefully crafted privatepublic partnership.

First, SDOs could be forced to reduce the rigor or

frequency of their development process. That might

mean less public participation, fewer technical experts,

and less comprehensive review. Veeck mistakenly

suggests “it is difficult to imagine an area of creative

endeavor in which the copyright incentive is needed

less.” Veeck, 293 F.3d at 806 (quoting 1 Paul Goldstein,

Goldstein on Copyright § 2.5.2 at 2:51 (2000). This

statement, untethered from any factual basis, was

untrue then and remains untrue today. Amici SDOs

are non-profits. Like most businesses, SDOs make

difficult choices about where to invest their limited

resources. Losing the revenue historically earned from

the sale and licensing of works they create would force

them to alter their business practices to the great

detriment of their mission.

Second, SDOs might be forced to charge or increase

fees to those who wish to participate in standards

development. Currently, SDOs receive and respond to

input from a broad range of interested parties, including individuals and entities who are unlikely to pay

hefty fees to participate in the development process.

Recouping SDOs’ costs through up-front fees would

likely reduce participation from public-interest groups,

academics, and interested members of the public.

Decreased participation would likely lead to a commensurate increase in the power of regulated industries

to influence standard setting. See Emily S. Bremer,

Technical Standards Meet Administrative Law: A

Teaching Guide on Incorporation by Reference, 71

Admin. L. Rev. 315, 329 (2019).

Third, the absence of copyright protection would

threaten the breadth of standard-setting work that

SDOs now engage in. Like many creative industries

that rely on a few copyright “hits” to generate the

revenue needed to support the full range of their

expressive works, SDOs often rely on a few flagship

standards to generate most of their revenues. The sale

and licensing of these standards effectively subsidize

the development of standards that serve narrower

markets and, accordingly, cannot generate enough

revenue to cover the cost of their creation. See id. at

329-30. For example, ASTM generates 80% of its

standards revenue from only about 20% of its standards.

Currently, amici SDOs do not consider whether a

standard will be profitable (or at least self-sustaining)

in deciding whether to develop or update it. If SDOs’

revenues decreased substantially, this approach might

no longer be viable.

B. The public benefits from IBR

privately developed standards.

Federal, state, and local governments have long

benefited from privately developed standards. Rather

than creating a new set of statutes or regulations for

a particular industry or practice, legislatures and

agencies can IBR an existing standard.

IBR’d standards play a critical role in promoting

public health and safety. For example, all fifty states

have IBR’d one or more of ICC’s model codes at the

state or local level.

IBR offers enormous public benefits. Governments

are spared the cost and administrative burden of

assembling the expertise and conducting the processes

necessary to produce and update the standards—

which in turn spares taxpayers from funding the

endeavor. Emily S. Bremer, On the Cost of Private

Standards in Public Law, 63 U. Kan. L. Rev. 279,

294 (2015). Moreover, because standards often dictate

industry norms, incorporation decreases “the burden

of complying with agency regulation.” A-119 (2016) at

14. The prospect of incorporation encourages private

organizations to develop “standards that serve national

needs” and promotes “efficiency, economic competition,

and trade.” Id.

The development and use of privately developed

standards also allow the government to be nimbler in

addressing industry needs and emerging technologies.

For example, ASTM worked with industry, government

officials, safety advocates, and others to develop standards that increase drone and aircraft safety when

drones operate in regulated airspace. The Federal

Aviation Administration (“FAA”) considers compliance

with one of these standards—ASTM F3586-22—as one

way for a drone manufacturer to demonstrate compliance with regulations for remote identification systems.

Accepted Means of Compliance; Remote Identification

of Unmanned Aircraft; Correction, 88 Fed. Reg. 77895

(Nov. 14, 2023).

If SDOs lost copyright protection for their standards,

government institutions might attempt to fill the void

themselves. But it is highly unlikely that they would

possess the capacity to invest the time and resources

that SDOs now invest.

The absence of meaningful nationwide standard

development by SDOs would also threaten uniformity

across jurisdictions. Rather than a single standard,

multiple jurisdictions would likely set out to develop

their own rules for a particular field—especially for

standards that only have relevance locally. The

process would be doubly inefficient, duplicating efforts

on the front end, and requiring industries to meet

multiple jurisdictions’ requirements on the back end.

And, while national SDOs solicit broad input from

leading experts and participants with a wide variety

of interests, an individual jurisdiction would be

unlikely to attract the same intensity or diversity of

views, worsening the resulting regulation it crafted.

III. THE DECISION BELOW CONTRAVENES

THIS COURT’S JURISPRUDENCE AND

THREATENS

PRIVATE

STANDARDS

DEVELOPMENT.

A. The Decision Contravenes This Court’s

Holding Regarding the Government

Edicts Doctrine and Increases Uncertainty About Whether SDOs Can Continue

to Perform Their Public Work.

Prior to 2020, there arguably was a split of authority

as to whether privately authored works that a governmental authority adopts or IBRs lose their copyright

protection under what is called the “government edicts

doctrine.” See ASTM I, 896 F.3d at 441 (“leaving

for another day the far thornier question of whether

standards retain their copyright after they are incorporated by reference into law”); see also Veeck, 293 F.3d

at 804-05; Prac. Mgmt., 121 F.3d at 518-19; CCC,

44 F.3d at 74; BOCA, 628 F.2d at 736.

The Supreme Court resolved this issue in Georgia v.

Public.Resource.Org, Inc. 590 U.S. at 259. The Court

explained that under the “government edicts doctrine,

officials empowered to speak with the force of law

cannot be the authors of—and therefore cannot

official duties.” Id. (emphasis added). Thus, “whatever

work that [a] judge or legislator produces in the course

of his judicial or legislative duties is not copyrightable.” Id. at 276. On the other hand, the Court also

made clear that the government edicts doctrine’s

prohibition on copyright protection does not apply

“to works created by government officials (or private

parties) who lack the authority to make or interpret

the law[.]” Id. at 265 (emphasis added).

The Decision below held that Petitioner’s concededly

copyrighted works “once incorporated into law, [] are

not protected under the Copyright Act.” CSA, 112

F.4th at 305. But this Court rejected this argument in

Georgia, holding that “[r]ather than attempting to

catalog the materials that constitute ‘the law,’ the

doctrine bars the officials responsible for creating the

law from being considered the ‘author[s]’ of ‘whatever

work they perform in their capacity’ as lawmakers.”

Georgia, 590 U.S. at 265-66. Lest there be any confusion on this point, this Court concluded its opinion

by saying:

Instead of examining whether given material

carries “the force of law,” we ask only whether

the author of the work is a judge or a

legislator. If so, then whatever work that

judge or legislator produces in the course of

his judicial or legislative duties is not

copyrightable. That is the framework our

precedents long ago established, and we

adhere to those precedents today.

Georgia, 590 U.S. at 276 (emphasis added).

In the Decision, the Fifth Circuit resurrected

uncertainty that plagued the SDO community prior to

the Georgia decision.

As discussed above, SDOs require incentives to

carry out their public work. It is critical that economic

actors be able to know in advance whether contemplated investments in authorship will be protected.

CCC, 44 F.3d at 69 (“The financial incentives to

authors consist of exclusive rights to their writings,

that may be sold or licensed for money, so that authors

may earn a living from the creations that benefitted

the public.”). The Decision upends that certainty.

Without clear assurances that they will receive “a fair

return for their labors,” potential “contributors to the

store of knowledge” will make the rational choice not

to invest in making those contributions at all. Harper

& Row, Publishers, Inc. v. Nation Enterprises, 471 U.S.

539, 546 (1985).

B. The Fifth Circuit’s Decision Ignores the

Weight of Authority Concerning the

Application of the Merger Doctrine.

Merger is a judicially created doctrine that limits

limited number of ways of expressing an idea (e.g.,

a mathematical equation). 1 Nimmer § 2A.05 (2024)

(discussing the origin of the merger doctrine in the

Supreme Court’s decision in Baker v. Selden, 101 U.S.

99, 103 (1879)). In such situations, the idea is said to

“merge” with the expression, such that it cannot be

protected. See Zalewski v. Cicero Builder Dev., Inc.,

754 F.3d 95, 102-103 (2d Cir. 2014).

Merger is a “rare occurrence” and should only be

found when “there are no or few other ways of

expressing a particular idea.” Silvertop Assocs. v.

Kangaroo Mfg., 931 F.3d 215, 222 (3d Cir. 2019)

(quotation and citation omitted); CCC, 44 F.3d at 70

(explaining that the doctrine is narrowly construed

because “[u]nbridled application of the merger doctrine

would undo the protection the copyright law intends to

accord to compilations.”); see also Veeck, 293 F.3d at

820 (dissent) (challenging the majority’s holding in

part because “[t]he merger doctrine, however, is a

limited exception in copyright law, intended to shelter

only those rare cases in which the ‘idea’ is susceptible

of more than one expression, but the number of

possible expressions is so finite and small as to have

effectively ‘merged’ with the idea.”).

The weight of authority finds that merger should be

assessed at the time the work is created by examining

the options available to the author. Compulife Software,

Inc. v. Newman, 111 F.4th 1147, 1159 (11th Cir. 2024)

(analyzing options available to the author in its use of

radio buttons for certain user selections and finding

merger); Oracle Am., Inc. v. Google Inc., 750 F.3d 1339,

1361 (Fed. Cir. 2014) (holding whether an idea and an

expression merge must be “evaluated at the time of

creation, not at the time of infringement.”); John G.

Danielson, Inc. v. Winchester-Conant Properties, Inc., 322

F.3d 26, 43 (1st Cir. 2003) (analyzing choices available

to the mapmaker at the time the map was drawn);

Bucklew v. Hawkins, Ash, Baptie & Co., LLP., 329 F.3d

923, 928 (7th Cir. 2003) (describing the multitude of

choices available to the author when the form at issue

was created); BellSouth Advert. & Pub. Corp. v.

Donnelley Info. Pub., Inc., 999 F.2d 1436, 1442-43 (11th

Cir. 1993) (analyzing the choices available to the

author of a directory and finding merger because there

were so few ways to express the information); Kregos

v. Associated Press, 937 F.2d 700, 709 (2d Cir. 1991)

(analyzing merger by examining choices available to

the author at the time he created the forms); Apple

Comput., Inc. v. Franklin Comput. Corp., 714 F.2d

1240, 1253 (3d Cir. 1983) (abrogated on other grounds)

(finding that the relevant assessment was the number

of options available to express the copyright holder’s

idea, not the alleged infringer’s commercial objective

of designing competitive or compatible software).

In Oracle v. Google, Oracle asserted that Google

infringed its copyrights in certain application programming interfaces (“APIs”). 750 F.3d at 1347.

Google argued the doctrine of merger applied to

Oracle’s API packages because they had subsequently

become the effective industry standard. Id. at 1372.

The Federal Circuit was “unpersuaded” by this argument and noted that “Google cites no authority for its

suggestion that copyrighted works lose protection

when they become popular, and we have found none.”

Id. Thus, the Federal Circuit concluded:

the district court erred in focusing its merger

analysis on the options available to Google at

the time of copying. It is well-established that

copyrightability and the scope of protectable

activity are to be evaluated at the time of

creation, not at the time of infringement. . . . .

The focus is, therefore, on the options that

were available to Sun/Oracle at the time it

created the API packages.

Id. at 1361 (citations omitted).

The U.S. Solicitor General later confirmed that this

approach was consistent with the statutory scheme of

the Copyright Act. As the Solicitor General explained,

if merger was assessed at some later date, “the copyrightability of a particular work would turn on events

that substantially postdated the work’s creation. That

result is at odds with the Copyright Act’s basic design,

under which copyright protection subsists from the

creation of a work through the prescribed statutory

term.” Brief of the United States as Amicus Curiae at

18 n.2, Google, Inc. v. Oracle Am., Inc., No. 14-410 (May

26, 2015)); accord Brief of the United States as Amicus

Curiae at 12, Google, Inc. v. Oracle Am., Inc., No. 18956 (Feb. 19, 2020) (“Petitioner thus asks the Court to

perform its merger analysis based on the circumstances that existed when petitioner’s copying

occurred. But copyrightability is determined as of the

time when a work is created.”).

Likewise, the Second and Ninth Circuits each reject

merger as a mechanism to remove copyright protection

based on the post-creation fact of IBR. See CCC Info.

Servs., 44 F.3d at 61 (reversing the district court’s

application of merger to the IBR’d work); Prac. Mgmt.

Info. Corp., 121 F.3d at 520 n.8 (rejecting argument

that IBR of a particular standard resulted in merger).

The panel majority below believed it was bound by

the earlier Veeck decision on merger. See CSA, 112

F.4th at 304-305. But Veeck’s merger analysis is an

outlier from the well-reasoned appellate precedents

and the United States Government’s conclusion that

merger must be assessed at the time a work is created.

Veeck rejected the argument that merger was inapplicable because the model codes could be written in a

variety of ways. Veeck, 293 F.3d at 802. Instead, the

Fifth Circuit found that “[model] codes are ‘facts’ under

expression of the ‘idea’ that constitutes local law.”

Veeck, 293 F.3d at 801. The Veeck court ignored the

core analysis: whether the model building code at issue

was capable of being expressed in so few ways at the

time they were created that merger should apply—not

the choices available to the wholesale copier of the

model codes.

Numerous courts have recognized that SDOs’

standards are capable of being expressed in many

ways. See ASTM II, 2017 WL 473822, at *14 (“At the

time they were authored, there were certainly myriad

ways to write and organize the text of the standards”);

Nat’l Fire Protection Assn. v. UpCodes, Inc., No. 2:21cv-05262-SPG-E, Dkt. 230-1 at 19 (C.D. Cal. Nov. 4,

2024) (“NFPA”) (“there are numerous ways to express

the ideas underlying NFPA’s standards.”); Prac. Mgmt.,

121 F.3d at 520 n.8 (finding merger inapplicable

because AMA’s standards did not prevent “competitors

from developing comparative or better coding systems”).

In fact, amici often write entirely different and

competing works concerning the same idea. For example,

both the ICC and the International Association of

Plumbing and Mechanical Officials, Inc. (“IAPMO”)

author and publish competing model plumbing codes.

The organizations’ plumbing codes share the same

ideas both at a high level of abstraction, i.e., to provide

a comprehensive model plumbing code, and at the

more granular level, i.e., each containing chapters on

water heaters and plumbing fixtures. Importantly,

however, the language used by ICC and IAPMO to

express the ideas in their respective model codes

differs significantly. Likewise, a legislature acting in

its capacity as a lawmaker could choose yet another

manner of drafting legislation concerning requirements for installation of water heaters in different

structures—and many do make changes at the state

and local level. As such, the merger doctrine should

not apply to IBR’d standards.

The Fifth Circuit’s departure from well-accepted

merger principles creates deep uncertainty for the SDO

community. Without any approval or action by an

SDO, the copyright in its works can be stripped by any

government in the United States, or (as here) abroad,

if that work is adopted or even referenced in any law.

Although the Copyright Act grants authors decades

of copyright protection for the effort of creating

copyrighted works, 17 U.S.C. § 302, if the Decision

stands, any federal, state, local, or foreign government

can significantly curtail the statutory term for copyright

protection based on the merger doctrine by merely

IBR’ing a standard. This is particularly problematic

because many regulations automatically adopt the

newest version of a standard. For example, a Consumer

Product Safety Commission (“CPSC”) regulation concerning automatic residential garage doors, 16 C.F.R.

Part 1211, IBRs Underwriters Laboratories, Inc.’s

(“UL”) standard UL 325, titled Standard for Door,

Drapery, Gate, Louver, and Window Operators and

Systems (“UL 325”). Subject to CPSC’s review, Section

203 of the Consumer Product Safety Improvement Act of

1990, Public Law 101–608, provides for the automatic

revision of the CPSC rule concerning garage door

operators by IBR’ing the most recent revision of UL

325 upon notice from UL that the standard has been

updated. The most recent revision to the CPSC rule

occurred this year. CPSC’s direct final rule IBR’d the

February 2023 version of UL 325 and became effective

May 13, 2024. 89 Fed. Reg 18,538 (March 14, 2024).

The Fifth Circuit’s application of the merger doctrine

would diminish UL’s copyright term for this standard

from 95 years or more to just over a year. Moreover,

standards can be IBR’d at any time, leaving SDOs

uncertain as to how long they will be able to exercise

their copyright. As SDOs rely so heavily on the

revenue from their copyrighted works to fund the

continued development and publication of their

standards, this uncertainty significantly threatens

future standards development and SDOs’ ability to

ensure their future financial stability.

SDOs also lie at the mercy of unscrupulous actors,

like Respondent, who misapply the merger doctrine to

create a commercially competitive product, often

offered at a price with which non-profit SDOs cannot

compete. As discussed above, the merger doctrine is

intended to be the rare exception to prevent narrow

subject matter like depictions of nature or mathematic

equations from becoming the exclusive property of a

single author. As applied by the Fifth Circuit, the

merger doctrine acts as a cloak for pirates, like

Respondent, and other commercial actors to stand up

competitive businesses.

C. The Fifth Circuit’s Decision Threatens

Continuing and Considerable Harm To

SDOs.

The Decision invites and emboldens pirates, like

Respondents, to create commercially competitive

businesses by reproducing and distributing SDOs’

copyrighted works at a cut rate price or for free. See,

e.g., NFPA, 2:21-cv-05262-SPG-E, Dkt. 230-1 at 10

(UpCodes, Inc., a for-profit enterprise that commercially exploits copyrighted works created by numerous

non-profit SDOs, asserts the government edicts and

merger doctrines among its defenses). This threatens

the continued viability of SDOs’ existing market for

the sale and licensing of their standards. As discussed

above, a considerable portion of the revenue that SDOs

generate is based on the sale and licensing of their works.

At least one other commercial enterprise, UpCodes,

Inc. (“UpCodes”) has already leveraged the Fifth

Circuit’s analysis in the Decision to argue that the

government edicts doctrine and merger apply to strip

SDOs of their copyright protection in their works.

There, defendants argue that not only do IBR’d

standards lose their copyright protection based upon

adoption or IBR, but any standard referenced in an

IBR’d standard likewise loses copyright protection.

See Am. Soc’y for Testing & Materials v. UpCodes,

Inc., No. 2:24-cv-1895, Dkt. 85 (E.D. Pa.) (notice of

supplemental authority concerning the denial of CSA’s

Petition for Rehearing En Banc, No. 23-50081 (5th Cir.

Aug. 14, 2024)).

The Decision will embolden entities like Respondents

and UpCodes to steal the fruits of non-profit SDOs’

labor to build for profit enterprises that directly

compete with the SDOs without incurring any of the

costs associated with standards development. With

every new pirate that takes from SDOs and reaps a

profit from its theft, non-profit SDOs lose critical

resources that would otherwise be used for future

standards development. The risk posed to the SDOs

by Respondents and other pirates is significant. See,

e.g., Warner Bros. Ent. Inc. v. WTV Sys., Inc., 824 F.

Supp. 2d 1003, 1013 (C.D. Cal. 2011) (defendants’

service threatened “to create incorrect but lasting

impressions with consumers about what constitute[d]

lawful video on demand exploitation” of copyrighted

works); MGM Studios, Inc. v. Grokster, Ltd., 518 F.

Supp. 2d 1197, 1215 (C.D. Cal. 2007) (finding loss of

market share irreparable). For example, Standards

Australia Limited (“Standards Australia”) already

suffers from rampant piracy of its standards. Standards

Australia finds unauthorized copies of its standards

made available to download for free. Significant lost

sales diverted to pirates endangers the integrity of the

SDO ecosystem.

Relatedly, the Decision threatens SDOs ability to

maintain and negotiate licensing agreements and

harms the SDOs’ goodwill and relationships with their

licensees. For example, American National Standards

Institute, Inc. (“ANSI”) operates a webstore that

provides access to over 500,000 standards from more

than 130 publishers, including those published by

many of the amici here. Other licensees like MADCAD

or Accuris also provide expansive digital libraries of

standards. As more pirates follow Respondents’ example,

additional pressure is placed on SDOs’ licensees’

businesses, straining SDOs’ relationships with their

licensees. If the Decision stands and becomes adopted

more widely, it will be increasingly difficult to imagine

how any licensee can continue to pay an SDO to

reproduce its copyrighted works while others reproduce

them for free—posing a separate existential threat to

the SDO community. See 22nd Century Techs., Inc. v.

iLabs, Inc., No. 22-2830, 2023 WL 3409063, at *7

(3d Cir. May 12, 2023) (harm to client relationships

is irreparable); Fox Television Stations, Inc. v.

BarryDriller Content Sys., PLC, 915 F. Supp. 2d 1138,

1147 (C.D. Cal. 2012) (discussing clear harm when

revenues from licensing market “are used to fund the

development and acquisition of [new works]” and the

allegedly infringing service “threaten[ed] to damage

Plaintiffs’ ability to negotiate favorable [licenses]”).

Permitting commercial entities to profit from SDOs’

standards, as condoned by the Decision, would be

devastating to the SDO community. Even the Fifth

Circuit previously recognized in Veeck should have

been different if Veeck’s use had a competitive/

commercial character. See Veeck, 293 F.3d at 805

(“the result in this case would have been different if

Veeck had published [the codes] as model codes” in

competition with SBCCI).

The economic harms discussed above threaten

SDOs’ ability to create and update standards and thus

their contributions to overall public safety. If SDOs

cannot fund their public missions, they will be forced

to find alternative models to make up for the lack of

sales and licensing revenue or reduce their current

production. As discussed in Section II(A), whether

SDOs choose to accomplish this by producing fewer

standards, updating their existing standards less

frequently, or altering their funding model to frontload the costs, those changes significantly impair the

important public mission of these organizations. If not

reversed, the economic philosophy motivating copyright

protection is undermined to benefit pirates, like

Respondents.

CONCLUSION

Amici respectfully request the Court grant the

petition for a writ of certiorari.

Respectfully submitted,

J. KEVIN FEE

Counsel of Record

STANLEY J. PANIKOWSKI

JANE W. WISE

DLA PIPER LLP (US)

500 Eighth Street, N.W.

Washington, D.C. 20004

(202) 799-4441

kevin.fee@us.dlapiper.com

Counsel for Amici Curiae

December 16, 2024

APPENDIX

APPENDIX TABLE OF CONTENTS

Page

APPENDIX: List of Amici Curiae .......................

Appendix

American National Standards Institute, Incorporated

The Amici SDOs are:

American Society of Heating, Refrigerating, and Air

Conditioning Engineers

American Society for Testing and Materials d/b/a/

ASTM International

American Society of Safety Professionals

International Association of Plumbing & Mechanical

Officials

International Code Council, Inc.

International Electrotechnical Commission

The Institute of Electrical and Electronics Engineers,

Incorporated

International Organization for Standardization

North American Energy Standards Board

National Electrical Manufacturers Association

Standards Australia Limited

Telecommunications Industry Association

ULSE Inc.

X12 Incorporated.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.