[Corynne McSherry (SBN 221504) corynne@eff.org Matt Zimmerman (SBN 212423) mattz@eff.org ELECTRONIC FRONTIER FOUNDATION 454 Shotwell Street San Francisco, CA 94110 Telephone: (415) 436-9333 Facsimile: (415) 436-9993 David Halperin (pro hac vice pending) 3333 14' Street NW, Suite 205 Washington, DC 20010 Attorneys for Plaintiff PUBLIC.RESOURCE.ORG UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA PUBLIC.RESOURCE.ORG, Plaintiff, V. SHEET METAL AND AIR CONDITIONING NATIONAL ASSOCIATION, INC. Defendant. EUR79 I. Case COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF JURY TRIAL DEMANDED COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF 1 Plaintiff Public.Resource.Org, Inc. ("Public Resource"), by and through its attorneys, brings 2 this action and alleges against Defendant Sheet Metal and Air Conditioning Contractors National 3 Association ("SMACNA"), as follows: 4 5 NATURE OF ACTION AND RELIEF SOUGHT 1. This is a declaratory judgment action to vindicate the right of the public to access, 6 read, speak, and thereby use the law. Specifically, it seeks to vindicate Public Resource's right to 7 post online a technical manual, the 1985 HVAC Air Duct Leakage Test Manual ("the 1985 8 manual"), that has been explicitly incorporated into federal and state law and that articulates 9 specific standards and installation and testing requirements regarding heating, ventilation, and air 10 11 conditioning systems. 2. Public Resource is a non-profit organization dedicated to improving citizens' ability 12 to access the laws and codes that govern their lives. As part of this work, Public Resource acquires 13 and makes readily available to the public various codes and standards that have been incorporated 14 into federal and state laws, such as fire safety codes, pipeline safety standards, and food safety 15 standards. 16 3. By improving public access to governing codes, Public Resource helps enable 17 citizens, businesses, journalists, consumer advocates, researchers, and others to educate themselves 18 regarding rules affecting the public. 19 4. To advance its mission, on or about July 4, 2012, Public Resource posted a copy of 20 the 1985 manual on its website, http://law.resource.org. As set forth below, the 1985 manual has 21 been incorporated into state and federal law. A true and correct copy of the manual as posted is 22 attached hereto as Exhibit A. 23 5. On or about January 10, 2013, Public Resource received a copyright takedown 24 notice from SMACNA's agent, Attributor Corporation of San Mateo, California, pursuant to the 25 Digital Millennium Copyright Act, alleging that the public posting of the 1985 manual on Public 26 Resource's website constituted copyright infringement. Public Resource responded, explaining 27 28 2 COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 that it had not violated copyright law. A true and correct copy of this correspondence is attached hereto as Exhibit B. 6. On February 8, 2013, Public Resource received a letter (dated February 5, 2013) from Jon L. Farnsworth, counsel for SMACNA, asserting that the posting violated SMACNA's copyright and threatening legal action if the posting was not removed by February 14, 2013. On February 9, 2013, Public Resource removed the 1985 manual from its website, left the cover sheet posted, and added at that URL, https://law.resource.org/pub/us/cfr/ibr/005/smaccna.hvac.1985.pdf, the correspondence between representatives of SMACNA and Public Resource. A true and correct copy of the letter from Mr. Farnsworth to Mr. Malamud is attached hereto as Exhibit C. A true and correct copy of the correspondence as posted on Public Resource's website is attached hereto as Exhibit D. 7. Technical manuals like the 1985 manual at issue in this case, explicitly adopted by federal regulation, have the force of law and impose affirmative obligations on citizens. As much as landmark health care acts or Supreme Court civil rights decisions, these technical requirements--for building, electrical, plumbing, transportation--touch the lives of Americans every day. Business owners, workers, and consumers need to know these directives in order to operate their businesses lawfully, to avoid penalties, and to determine whether neighbors, contractors, or competitors are in compliance. 8. Public Resource brings this action for declaratory and injunctive relief to clarify the rights of the parties and to refute SMACNA's assertions of copyright infringement. PARTIES 21 22 23 24 25 26 27 28 9. Plaintiff Public Resource, based in Sebastopol, California, is a California non-profit corporation with its principal place of business at Public.Resource.Org, 1005 Gravenstein Hwy. North, Sebastopol, CA 95472. 10. Defendant Sheet Metal and Air Conditioning Contractors National Association ("SMACNA") is a self-described international association of union contractors and a "standardssetting organization" with its headquarters in at 4201 Lafayette Center Drive, Chantilly, Virginia 3 COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF 1 2 3 20151-1219. According to its website, SMACNA has 1,834 members in 103 chapters throughout the United States, Canada, Australia and Brazil, including eight chapters in California, including three Bay Area Chapters. SMACNA conducts substantial business in California. 4 5 JURISDICTION 11. This action arises under the copyright laws of the United States, 17 U.S.C. ?? 101, 6 et seq. and the United States Constitution. This Court has subject matter jurisdiction over these 7 claims pursuant to 28 U.S.C. ?? 1331 and 1338 and the Declaratory Judgment Act, 28 U.S.C. 8 ? 2201. 9 12. This Court has personal jurisdiction over Defendant SMACNA because SMACNA 10 conducts regular business in California, because SMACNA issued its copyright threat to Public 11 Resource in California, and because its agent for copyright takedowns, Attributor Corporation, is 12 based on California. 13 VENUE AND INTRADISTRICT ASSIGNMENT 14 13. Venue for this action is proper under 28 U.S.C. ?1391(b)(2). 15 14. This is an intellectual property action. Pursuant to Local Rule 3-2(c), it shall be 16 assigned on a district-wide basis. 17 FACTUAL ALLEGATIONS 18 Public Resource 19 20 21 15. Public Resource is a non-profit corporation dedicated to making primary legal materials and other important government records available to the public. 16. Public Resource also helps further the purposes of the Freedom of the Information 22 Act (FOIA), 5 U.S.C. ? 552. Under FOIA, materials, such as standards and technical requirements, 23 that are incorporated by reference into a federal regulation are deemed effectively published only if 24 such directives are "reasonably available to the class of persons affected thereby." 5 U.S.C. 25 ? 552(a)(1), 1 CFR(a)(4). In the age of the Internet, making such directives "reasonably available" 26 means, at a minimum, posting them on the Internet for citizens to readily access without charge. 27 28 4 COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF 1 2 3 4 5 6 7 8 9 10 Sheet Metal and Air Conditioning Contractors' National Association (SMACNA) 17. On information and belief, part of SMACNA's mission is to create industry standards, including technical requirements, and to ensure that they are nationally adopted, particularly through incorporation into government regulations. 18. On information and belief, SMACNA standards address all facets of the sheet metal industry, from duct construction and installation to air pollution control, from energy recovery to roofing. SMACNA's Technical Resources Department fields several thousand technical questions annually from architects, engineers, manufacturers and government personnel. 19. According to the SMACNA Membership Benefits document available on its website at http://www.smacna.org/pdf/about/membership_benefits.pdf: SMACNA is a trade association and an association is made up of people. Association people join together to concentrate their collective efforts on the needs and problems of an industry, society, or cause. By uniting, they combine their talents and resources to address and satisfy needs and seek resolution to problems that they are unable to satisfactorily address individually. By joining together they are able to consolidate their influence and power to affect change. This collective power can be effective in a variety of ways. The most common application of this collective influence for construction associations is in the area of labor relations, most notably collective bargaining and unity, for the express purpose of achieving equitable employment conditions. But the same unity can be used to affect positive impact in business management educational endeavors; legislative influence; industry regulatory conditions, such as code requirements, project specification development, and installation procedures. The application of this collective influence can be initiated at the local, state, regional, national, and international levels. The potential for positive impact in all of these areas and at all of these levels of influence is awesome. 11 12 13 14 15 16 17 18 19 20 21 By coming together to form a local sheet metal contractors association you start down the path of building a power base to influence the environment in which each of you conducts business. In affiliating as a Chapter of SMACNA, you expand your power base to the national level. The flow of power or potential influence runs both ways you increase the power base of SMACNA and SMACNA provides you with expanded power influencers. 22 23 24 25 26 A true and correct copy of the SMACNA Membership Benefits document is attached hereto as 27 Exhibit E. 28 5 COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF 1 20. The voluntary technical standards and manuals developed by SMACNA Contractors have found worldwide acceptance by the construction community, as well as foreign government agencies. ANSI, the American National Standards Institute, has accredited SMACNA as a standardssetting organization. SMACNA does not seek to enforce its standards or provide accreditation for compliance. 2 3 4 5 6 7 8 9 10 11 A true and correct copy of the webpage "About SMACNA" is attached hereto as Exhibit F. 21. "to develop a single set of comprehensive and coordinated national [building] codes" that could be used in all of the United States. According to the paper, linked to on SMACNA's website at http://www.smacna.org/technical/download.cfm?download_file=icc-nfpabuildingcodes2-03.pdf: The ICC Codes benefit SMACNA members & building industry professionals by now assisting them to move into different regions within the U.S. and international environment with a single set of model codes. SMACNA's participation in the ICC code setting process ensured that the SMACNA Standards currently utilized in the HVAC industry would be included as the basis for duct construction. After the three model code organizations united to form the ICC and provided the first and only complete set of building codes for the country, the Department of Defense (DoD) recognized the enormous benefits this simplification could provide to military construction and is working to build its criteria, standards, and guide specifications around commercially developed consensus codes, and bring its design practices more in line with those of the private sector.... 13 14 15 16 17 18 19 SMACNA's support is for a single set of model codes with all relevant code organizations participating in that effort. We believe that by participating in both the ICC and NFPA 5000 Building Code process that we again see the formation of a final product of standards that will serve to enhance the public's confidence in building code officials and keep this nation's competitive edge in the evolving global market. 20 21 22 24 25 26 27 28 On or about February 20, 2003, SMACNA issued a "technical paper" entitled "Building Code Update." The paper discusses the effort by the International Code Council (ICC) 12 23 According to SMACNA's website at http://www.smacna.org/about/: A true and correct copy of the SMACNA Building Code Update is attached hereto as Exhibit G. A description of this technical paper on the SMACNA website http://www.smacna.org/technical/index.cfm?fuseaction=papers) states: This technical paper reviews the Model Building Code process of the International Code Council (ICC) and National Fire Protection Association (NFPA) Building 5000 Code and addresses SMACNA 6 COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF (at National's position with regards to the efforts of the code community to develop a single set of comprehensive and coordinated national codes. SMACNA National has long been involved in the code setting process to ensure that the SMACNA Standards currently utilized by the HVAC industry would be included as the basis for duct construction. 1 2 3 4 5 6 A true and correct copy of this technical paper is attached hereto as Exhibit H. 22. http://www.smacna.org/news/news_preview.cfm?id=5112): The American National Standards Institute (ANSI) announced that SMACNA's "Round Industrial Duct Construction Standards," second edition, has been approved as an American National Standard. 7 8 ANSI recognition increases the potential that SMACNA's standards are internationally adopted for industry and regulatory use. The approval will also encourage wider domestic use of SMACNA's standard by state- and local-code governing bodies as well as the design and engineering community. The new ANSI status will also enhance SMACNA's overall credibility as a standards-developing organization, both domestically and internationally. 9 10 11 12 13 A true and correct copy of this newsletter is attached hereto as Exhibit I. 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 SMACNA stated in its newsletter dated November 7, 2003 (available at Incorporation Into Law of the 1985 Manual 23. The 1985 manual identifies leakage limits for ducts and outlines procedures for testing ducts for conformity with air leakage limits set forth in project specifications. 24. Managing air duct leakage is crucial to energy conservation and is an integral part of model codes such as the International Energy Conservation Code, as well as a key part of the Department of Energy-specified energy conservation efforts that resulted in incorporation by reference of the 1985 manual. 25. The 1985 manual was incorporated into a final regulation issued by the U.S. Department of Energy on October 6, 2000. See 65 Federal Register 60000-01. 26. The incorporation by reference of the 1985 manual, as codified at Title 10 of the Code of Federal Regulations, section 434.403.2.9.3, states, in part: 403.2.9.3 Duct and Plenum Construction. All air-handling ductwork and plenums shall be constructed and erected in accordance with RS-34, RS-35, and RS-36 (incorporated by reference, see ? 434.701 ).... A true and correct copy of 10 CFR section 434.403.2.9.3 is attached hereto as Exhibit J. 7 COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Section 434.701 of Title 10 CFR identifies RS-36 to be: "HVAC Air Duct Leakage Test Manual, 1st edition, 1985, Sheet Metal and Air-Conditioning Contractors' National Association, Inc., 4201 Lafayette Center Drive, Chantilly, VA 20151." A true and correct copy of 10 CFR section 434.701 is attached hereto as Exhibit K. 27. Pursuant to Section 51 of 1 CFR, the Director of the Federal Register is required to approve each instance of incorporation by reference requested by federal agencies. 28. The federal government's incorporation by reference of the 1985 manual was undertaken after assessment by technical experts, publication of a notice in the Federal Register, comments by members of the public and industry and technical experts, followed by a determination by the Department of Energy that Incorporation by Reference was appropriate and necessary and then approval of that incorporation by the Office of the Federal Register. 29. As a standard that has been expressly incorporated by reference into the Code of Federal Regulations, the 1985 HVAC Air Duct Leakage Test Manual is the law of the United States, and compliance with the 1985 manual is mandatory. 30. Title 19 of The New York Code, Rules and Regulations (NYCRR), Part 1240, incorporates by reference the 1985 manual. A true and correct copy of 19 NYCRR 1240.1, which indicates that "a publication entitled Energy Conservation Construction Code of New York State, publication date: August 2010, published by the International Code Council, Inc." is incorporated into Part 1240 by reference, is attached as Exhibit L. A true and correct copy of a page on the website of the International Code Council, Inc., which indicates that the 1985 manual has been incorporated into the New York City Rules and Regulations, Part 1240, is attached hereto as Exhibit M. 31. manual. The Minnesota Energy Code, Chapter 7676, incorporates by reference the 1985 See Section 7676.0400 Subpart 1(H) ("The following standards and references are incorporated by reference... H. HVAC Air Duct Leakage Test Manual, Section 4, 1985 edition, as published by the Sheet Metal and Air Conditioning Contractors National Association, Inc., Vienna, 27 28 8 COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Virginia."). A true and correct copy of the Minnesota Energy Code, Chapter 7676, is attached hereto as Exhibit N. 32. The Washington Administrative Code, WAC 51-11-0503, Section 503.10.1, makes compliance with the 1985 manual mandatory. A true and correct copy of the Washington State Entergy Code, WAC 51-11-0503, Section 503.10.1, is attached hereto as Exhibit O. 33. On information and belief, the United States does not make the 1985 manual available to the general public for free, either online or on request. 34. On information and belief, SMACNA does not make the 1985 manual available to the general public for free, either online or on request. 35. On May 3, 2012, Public Resource purchased a paper copy of the 1985 manual from SMACNA's online store for the sum of $64.00, plus $9.98 shipping, for a total of $73.98. 36. On or about July 4, 2012, Public Resource posted the 1985 manual online in pdf format on its website at https://law.resource.org/pub/us/cfr/ibr/005/smaccna.hvac.1985.pdf. 37. Prepended to the 1985 manual, Public Resource included a cover sheet which stated, in relevant part: By the Authority Vested By Part 5 of the United States Code ? 552(a) and Part 1 of the Code of Regulations ? 51 the attached document has been duly INCORPORATED BY REFERENCE and shall be considered legally binding upon all citizens and residents of the United States of America. 16 17 18 HEED THIS NOTICE: Criminal penalties may apply for noncompliance. 19 20 Document Name: SMACNA: HVAC Air Duct Leakage Test Manual 21 CFR Section(s): 10 CFR 434.403.2.9.3 22 Standards Body: Sheet Metal and Air Conditioning Contractors National Association 23 SMACNA'S Threats and Demands for Removal 24 25 26 38. On January 11, 2013, Eraj Siddiqui of Attributor Corporation sent a "DMCA Notice of Copyright Infringement" by email to Carl Malamud, President of Public Resource, demanding, 27 28 9 COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF 1 2 on behalf of SMACNA, that Public Resource remove the 1985 manual from the Public Resource website. See Exhibit B. 39. 3 4 5 that the publication of the 1985 manual did not infringe copyright because that manual had been incorporated into law. See Exhibit D. 40. 6 7 On January 11, 2013, Carl Malamud replied by email to Mr. Siddiqui explaining On February 8, 2013, attorney Jon L. Farnsworth, representing SMACNA, emailed a letter, dated February 5, 2013, to Carl Malamud, see Exhibit C. The letter stated in part that if 11 the 1985 manual remains on your organization's webpage after February 14, 2013, SMACNA intends to pursue its legal action against your organization to the full extent permitted by law. SMACNA reaffirms its copyright protection in the Publication and reiterates its demand for your organization to immediately remove the infringing material from your website. 12 The letter from Mr. Farnsworth further states (emphasis in original): 8 9 10 13 With that being said, your organization should take comfort in knowing that the public may receive copies of the applicable portions of SMACNA's Publication referenced by the CFR by requesting them directly from the government at no charge. Alternatively, members of the public may purchase SMACNA's educational materials, guides, and other publications at http://smacna.org/bookstore/. 14 15 16 17 18 41. online at http://smacna.org/bookstore/, the SMACNA website cited by Mr. Farnsworth. 19 20 42. On information and belief, The HVAC Air Duct Leakage Test Manual, 2nd Edition, published in 2012, is available for purchase at http://smacna.org/bookstore/ for the price of $104. 21 22 On information and belief, the 1985 manual is no longer available for purchase 43. The 1985 manual remains the document incorporated by reference in federal regulations and thus is the law of the United States. 23 44. the On February 9, 2013, Public Resource removed the 1985 manual from its website, 24 left cover sheet posted, and added at 25 https://law.resource.org/pub/us/cfr/ibr/005/smaccna.hvac.1985.pdf, the correspondence between 26 Mr. Siddiqui, Mr. Malamud, and Mr. Farnsworth. 27 28 10 COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF that URL, FIRST CAUSE OF ACTION 1 2 [Declaratory Relief Pursuant to 28 U.S.C. ? 2201, et seq. (Declaratory Judgment Act) and the Copyright Act (Title 17 of the U.S. Code)] 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 45. Plaintiff incorporates by reference the allegations in each of the preceding paragraphs as if fully set forth in this paragraph. 46. There is a real and actual controversy between Plaintiff and Defendant regarding whether posting the 1985 manual constitutes infringement of a copyright lawfully owned or administered by Defendant. SMACNA's conduct has forced Public Resource to choose between fulfilling its public mission and risking legal liability. The controversy between Public Resource and SMACNA is thus real and substantial and demands specific relief through a decree of a conclusive character, namely that Public Resource may re-post the 1985 manual without legal liability. 47. Public Resource's publication of the 1985 manual, and its proposed republication thereof, was and is lawful, consistent with the Copyright Act of the United States of America, the United States Constitution, and judicial decisions construing such laws, doctrines, and provisions. 48. Public Resource is entitled to declaratory judgment that the publication of the 1985 manual does not violate copyright law. PRAYER FOR RELIEF 18 Wherefore, Plaintiff prays for judgment against the Defendant as follows: 19 20 1. not infringe any copyright interest held by SMACNA; 21 22 2. manual; 24 26 27 28 For an order enjoining SMACNA, its agents, attorneys, and assigns from asserting a copyright claim against Public Resource in connection with publication of the 1985 23 25 For a declaration that Public Resource's publication of the 1985 manual online does 3. For costs of suit incurred herein, including reasonable attorneys' fees; and 4. For such other and further relief as the Court may deem just and proper. Plaintiff requests a jury trial on all issues triable to a jury in this matter. 11 COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF -Dated: February 21, 2013 By: 12 Coiwfiie McSher1y Matthew Zimmerman ELECTRONIC FRONTIER FOUNDATION 454 Shotwell Street San Francisco, CA 941 10 Tel: (415) 436-9333 Fax: (415) 436-9993 mattz@eff.0rg David Halperin 3333 14"' Street NW, Suite 205 Washington, DC 20010 davidha1perindc@gmaiLoom Attorneys for Org COMPLAINT FOR DECLARATORY AND INJUNCTIVE RELIEF