Lee Gesmer and Andrew Updegrove
In 2023, we wrote about the D.C. Circuit’s decision in American Society for Testing and Materials v. Public.Resource.Org (ASTM II), which held that a nonprofit organization’s free online publication of technical standards incorporated by reference (IBR) into law constituted copyright fair use. We expressed concern that the decision underestimated the threat to the delicate symbiotic relationship between standards development organizations (SDOs) and the governments that rely on their work, and we called for a legislative solution. Since then, the legal landscape has shifted further, and not in the SDOs’ favor. A new court decision and pending federal legislation have brought this issue to a head, and we think it’s time for an update.
The central issue that we discussed in 2023, and that remains unresolved today, is this: private standards development organizations invest enormous resources creating a broad range of technical standards, such as building, safety, and electrical codes, that federal, state, and local governments routinely incorporate into law by reference. The traditional SDOs that are most likely to develop such standards usually fund their work largely through the sale and licensing of their standards. When a government body incorporates a standard into law by reference – IBR – the public gains a legitimate interest in reading the law it is required to obey, but the SDO retains a legitimate interest in the copyright that sustains its operations. The question courts have struggled with is whether the act of incorporation by reference, and the public’s right of access to the law, overrides that copyright protection. As we discuss below, courts have increasingly answered that question in ways that threaten the financial foundations of the organizations whose work we all depend on.
The Case Law
The courts have addressed this issue in a series of decisions that have moved consistently, and for SDOs, alarmingly, in one direction. In 2020, the Supreme Court held in Georgia v. Public.Resource.Org that government officials who “speak with the force of law” cannot claim copyright in works created in their official capacities, though the Court left open the broader question of privately-developed standards incorporated by reference.
The D.C. Circuit addressed the issue in ASTM I (2018), remanding for further consideration of fair use. In ASTM II (2023) the court held, on a fact-specific record, that a nonprofit’s manner of providing access to incorporated standards constituted fair use. We were critical of ASTM II when it was decided, noting that the court had underestimated the economic consequences for SDOs and flagging the risk that the reasoning would not remain confined to nonprofit actors. That risk has now materialized.
In April 2026, the Third Circuit decided American Society for Testing and Materials v. UpCodes, Inc., extending the fair use reasoning of ASTM II to a for-profit commercial platform. Taken together, these decisions have created a body of case law that leaves SDO copyrights in incorporated standards increasingly difficult to enforce, even against commercial actors.
Crucial to these cases is the legal doctrine of “fair use,” which provides that certain uses can be made of copyrighted works without the consent of the copyright owner.
The UpCodes case is notable for two reasons: first, in applying the standard four-factor fair use test, the Third Circuit held that UpCodes’ use was “transformative” despite the fact that it reproduced the standards without alteration, reasoning that UpCodes’ purpose – disseminating the law – was fundamentally different from ASTM’s purpose of advancing industry best practices. Second, the court was not convinced that the SDO had suffered material economic harm, while acknowledging the substantial public benefit of free access to the law.
The practical takeaway is significant: after UpCodes a for-profit company may be able to publish incorporated standards online, build a commercial business around them, and still prevail against a copyright infringement claim on fair use grounds.
An important caveat: the UpCodes decision is not a final judgment on the merits. It arose in the context of ASTM’s motion for a preliminary injunction, which required the court to assess only whether ASTM was likely to succeed at trial, a lower and more provisional threshold than a final merits determination. The court itself acknowledged that the record was incomplete, particularly on the critical question of market harm, noting that key facts – including what percentage of ASTM’s revenue derives specifically from incorporated standards, and how many ASTM subscribers have canceled in response to UpCodes’ free publication – remain undeveloped. The parties will have the opportunity to return to court and litigate these questions on a fuller factual record. It is possible, though far from certain, that a more complete record on market harm could shift the fourth factor in ASTM’s favor. For now, however, the preliminary injunction ruling leaves UpCodes free to continue publishing ASTM’s incorporated standards, and sends an unmistakable signal to other commercial actors that the fair use argument is very much available to them.
The Pro Codes Legislation
Against this backdrop, many SDOs have been urging Congress to provide a legislative solution. The Pro Codes Act – formally titled the Protecting and Enhancing Public Access to Codes Act – has been introduced in both the House (H.R. 4072) and the Senate (S. 4145), with bipartisan support in both chambers. The bill addresses the problem by conditioning copyright retention on a straightforward quid pro quo: SDOs that make their incorporated standards freely available online – in a searchable, accessible format, at no cost to the user – retain full copyright protection in those standards, notwithstanding their incorporation into law.
We supported an earlier version of this legislation when we wrote in 2023, and we continue to support it. The public reading room approach it codifies is sensible, fair, and already reflects what many responsible SDOs have voluntarily put in place. However, the bill has a significant gap that, in our view, must be addressed before it can accomplish its central purpose. The bill amends Title 17 of the United States Code – the Copyright Act – by adding a new section confirming that incorporated standards retain copyright protection if the SDO meets the posting requirements. What it does not do is address the fair use defense under Section 107 of the Copyright Act. That omission, we believe, may prove fatal to the bill’s effectiveness.
The UpCodes decision, following closely after ASTM II, confirms that the courts are not going to solve this problem in the SDOs’ favor. Two circuits have now addressed IBR-related copying, and the fair use defense has prevailed each time. The Pro Codes Act is a necessary and welcome step, and we hope Congress moves quickly to enact it. But as currently drafted, the bill leaves the fair use door wide open. A defendant copying an incorporated standard can concede that the SDO’s copyright is valid, and then may still prevail based on fair use, as UpCodes did.
To close that gap, the bill needs express language providing that where an SDO has complied with the public posting requirements, the fair use doctrine shall not constitute a defense to infringement based on copying in connection with incorporation by reference. Such a limitation would raise important policy and potentially constitutional questions, but without it, the statute risks being largely ineffective
The stakes are high: the voluntary consensus standards system has served the public extraordinarily well for more than a century, producing essential safety and technical standards at no cost to taxpayers. Preserving the financial model that sustains it, while ensuring genuine public access to the law, is a goal worth getting right.