United States Court of Appeals
For the First Circuit
No. 00-2425
PHILIP MORRIS, INCORPORATED, ET AL.,
Plaintiffs, Appellees,
v.
THOMAS F. REILLY,
ATTORNEY GENERAL OF MASSACHUSETTS, ET AL.,
Defendants, Appellants.
No. 00-2449
UNITED STATES TOBACCO COMPANY, ET AL.,
Plaintiffs, Appellees,
v.
THOMAS F. REILLY,
ATTORNEY GENERAL OF MASSACHUSETTS, ET AL.,
Defendants, Appellants.
APPEALS FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. George A. O'Toole, Jr., U.S. District Judge]
Before
Torruella, Selya and Lipez,
Circuit Judges.
William W. Porter, Assistant Attorney General, with whom
Thomas A. Barnico, Assistant Attorney General, and Thomas F.
Reilly, Attorney General, were on brief for appellants.
Douglas N. Letter, Appellate Litigation Counsel, Civil
Division, Department of Justice, for amicus United States.
Henry C. Dinger, P.C., with whom Goodwin Procter LLP, John H.
Henn, Foley, Hoag & Eliot LLP, John Connarton, Connarton, Wood &
Callahan, Richard M. Zielinski, Hill & Barlow, Clausen Ely, Jr.,
Patricia A. Barald, and Covington & Burling, were on brief for
appellees Philip Morris, Inc., et al.
John L. Oberdorfer, with whom Patton Boggs LLP, A. Hugh Scott,
Choate, Hall & Stewart, Peter J. McKenna, Eric S. Sarner, and
Skadden, Arps, Slate, Meagher & Flom LLP, were on brief for
appellees United States Tobacco Company, et al.
December 2, 2002
EN BANC OPINION
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TORRUELLA, Circuit Judge. Unquestionably, tobacco is
subject to heavy regulation by federal and state governments. This
case concerns one attempt, by Massachusetts, to further regulate
tobacco products by requiring tobacco companies to submit to
Massachusetts the ingredient lists for all cigarettes, snuffs, and
chewing tobaccos sold in the state. For each brand, the
manufacturer must list, by relative amount, all ingredients besides
tobacco, water, or reconstituted tobacco sheet. Mass. Gen. Laws
ch. 94, § 307B (2002). Currently, the appellees, a group of
tobacco companies, treat these ingredient lists as trade secrets
and either do not disclose brand-specific information at all or do
not disclose it without some guarantee of confidentiality.
The tobacco companies brought suit claiming that the
Massachusetts statute, which allows the public disclosure of these
ingredient lists whenever such disclosure "could reduce risks to
public health," Mass. Gen. Laws ch. 94, § 307B, creates an
unconstitutional taking. Appellees also argued that the
Massachusetts statute violates their Due Process rights by
effecting a taking of their property without first providing a
meaningful opportunity to be heard. The district court concurred
and granted summary judgment in favor of the tobacco companies.
A divided panel of this Court rejected appellees' arguments and
reversed the district court's judgment. After en banc review,
however, Judge Selya and I agree with the district court and,
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therefore, affirm its grant of summary judgment and award of
injunctive and declaratory relief in favor of plaintiffs-appellees.
I.
Factual Background
Appellees are various manufacturers of cigarettes and
smokeless tobacco products.1 They all currently sell their
products in Massachusetts and are potentially subject to the
requirements of Mass. Gen. Laws ch. 94, § 307B ("Disclosure Act").
Defendants-appellants are the Attorney General of
Massachusetts and the Massachusetts Commissioner of Public Health.
A. The Ingredient Lists
All of the tobacco products manufactured by appellees
include a variety of additives (in addition to tobacco, water, and
reconstituted tobacco sheet). For example, common ingredients
include sugars, glycerin, propylene glycol, cocoa, and licorice.
These various additives are used as solvents, processing aids, pH
modifiers, formulation aids for reconstituted tobacco,
preservatives, humectants, tobacco protection aids, "plasticizing"
agents, and, perhaps most importantly, flavorings. It is
undisputed that appellees have spent millions of dollars developing
1
The cigarette manufacturers joined in this case are Philip
Morris Inc., R.J. Reynolds Tobacco Co., Brown & Williamson Tobacco
Corp., and Lorillard Tobacco Co. The smokeless tobacco companies
are U.S. Smokeless Tobacco Co., Brown & Williamson Tobacco Corp.,
National Tobacco Co., Pinkerton Tobacco Co., and Swisher
International, Inc.
-4-
formulas for their different brands, and when successful, those
brands are worth billions of dollars. A major factor of each
brand's success is its distinctive flavor, taste, and aroma.
While appellants argue that the added ingredients are
neither pre-approved by regulators nor tested for safety, it is
undisputed that most of the added ingredients are approved for
consumption in food or "Generally Recognized As Safe" by the Food
and Drug Administration. The one additive not found on either list
is denatured alcohol, and this has been approved by the Bureau of
Alcohol, Tobacco, and Firearms for use in the manufacture of
tobacco products.
Each of the appellees closely guards its valuable
ingredient lists. For example, within each company, only a few
individuals are privy to the entire formula for any one brand.
Suppliers are subject to confidentiality agreements and ship their
products in packages which disguise their contents.
It is true that some ingredients of particular brands are
known, and all ingredients used in any tobacco product are publicly
available. However, this does not mean that complete brand-
specific ingredient information can be obtained. In fact, various
appellees have tried to "reverse engineer" the formulas of their
competitors, but these attempts have been unsuccessful.
Apparently, they have been able to determine the chemical
composition of the various brands, but this information does not
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translate into a formula to recreate the product. Appellees
assert, however, that if they were able to combine the chemical
composition derived from this "reverse engineering" with a list of
specific ingredients, arranged by relative amount, it would be much
easier to discover a competitor's formula. Therefore, the tobacco
companies argue that publication of their ingredient lists,
organized by relative amount, on a brand-by-brand basis would
likely destroy the secrecy of their formulas. This contention is
not disputed by appellants.
B. Current Federal and State Disclosure Requirements
Tobacco companies currently have to disclose their
ingredient lists to both the federal government and at least two
state governments.
The federal government requires only that an aggregate
list of all ingredients used in cigarettes and smokeless tobacco
products be provided to the Department of Health and Human
Services. 15 U.S.C. § 1335a(a). These lists, each of which
contains hundreds of ingredients, neither identify the ingredients
in any particular brand nor reveal which ingredients are used by
which manufacturer. Id. The Department of Health and Human
Services can study and report to Congress on the health effects of
tobacco additives, including information on specific ingredients
which may pose a health risk to consumers. Id. at § 1335a(b)
(1)(A)-(B). However, without further legislation and disclosure,
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the federal government has no ability to warn consumers of the use
of harmful additives in specific brands.
Two states, besides Massachusetts, require some
disclosure of additives to tobacco products. Minnesota mandates
that tobacco companies report only the use of several targeted
additives in their products. Minn. Stat. § 461.17 (Supp. 1997).
Texas requires that the tobacco companies report brand-specific
ingredient information, in descending quantities. Tex. Health &
Safety Code Ann. §§ 161.351-55 (West Supp. 2001). While this
scheme superficially looks like the challenged Massachusetts
legislation, Texas protects the ingredient lists by prohibiting
public disclosure when those lists would be considered trade
secrets under either federal or state law. Id. at § 161.254(c).
The tobacco companies have complied and continue to comply with
these disclosure requirements and have never challenged their
validity.
C. The Disclosure Act
In 1996, Massachusetts enacted the Disclosure Act,
ostensibly to promote public health. Citing the fact that various
tobacco product additives may have adverse health effects when
burned, either alone or in combination with other additives,
Massachusetts expressed an interest in being able to study more
accurately the health effects of tobacco products on consumers.
Massachusetts was also concerned that certain additives may
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increase nicotine delivery and that those additives might be used
in cigarettes advertised as having a lower nicotine content.
In Massachusetts’ view, previous disclosure requirements
did not allow it to investigate adequately these public health
concerns. For example, the publicly available ingredient lists do
not identify additives according to brand or manufacturer.
Therefore, Massachusetts could not study the interaction of
additives and know whether those additives are actually combined.
Nor could Massachusetts study the additives used in more popular
brands and those brands targeted to younger consumers. No one
disputes that these suggested studies are laudable and within the
health and safety realm of the state's traditional police powers.
Massachusetts, however, has an additional goal to be
realized through the Disclosure Act: it hopes to publicize the
ingredient lists of various brands. This information,
Massachusetts believes, will help consumers make more informed
choices about the tobacco products they choose to consume. The
envisioned effect is greater public awareness about the potential
health effects of tobacco additives.
With these considerations in mind, Massachusetts enacted
the Disclosure Act, which reads, in relevant part:
For the purpose of protecting the public
health, any manufacturer of cigarettes, snuff
or chewing tobacco sold in the commonwealth
shall provide the department of public health
with an annual report, in a form and at a time
specified by that department, which lists for
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each brand of such product sold the following
information:
(a) The identity of any added
constituent other than tobacco, water
or reconstituted tobacco sheet made
wholly from tobacco, to be listed in
descending order according to weight,
measure, or numerical count; and
. . . [Any] information in the annual reports
with respect to which the department
determines that there is a reasonable
scientific basis for concluding that the
availability of such information could reduce
risks to public health, shall be public
records; provided, however, that before any
public disclosure of such information the
department shall request the advice of the
attorney general whether such disclosure would
constitute an unconstitutional taking of
property, and shall not disclose such
information unless and until the attorney
general advises that such disclosure would not
constitute an unconstitutional taking.2
Mass. Gen. Laws § 307B (emphasis added). Therefore, the Disclosure
Act establishes two threshold requirements before an ingredient
list "shall" be made public: (1) there must be a finding that
publication "could reduce risks to public health;" and (2) the
Massachusetts Attorney General must find that disclosure would not
be an unconstitutional taking. Id.
2
The Disclosure Act also requires the tobacco companies to
disclose the nicotine yield ratings for each brand. Mass. Gen.
Laws § 307B. This information may also be made public, according
to the same guidelines governing the disclosure of the ingredient
lists. The tobacco companies have not challenged this element of
the Disclosure Act and, in fact, have been complying with it.
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Some further requirements have been established by
regulations enacted under the Disclosure Act. Mass. Regs. Code
tit. 105, § 660.200. These regulations require the Massachusetts
Department of Public Health ("DPH") to provide sixty days' notice
to the manufacturer before the proposed disclosure. Id. at
§ 660.200(E). To prevent disclosure, the manufacturer may remove
its product from Massachusetts or reformulate it. Id. at § 660.200
(F). An amendment to the regulations also allows the manufacturer
to suspend disclosure by filing a lawsuit. Id. at § 660.200(G).
Finally, until all requirements of the Disclosure Act and its
enabling regulations have been met, the regulations provide that
the DPH will keep the tobacco companies' ingredient lists
confidential. Id. at § 660.200(G)(2).
II.
Procedural Background
The various tobacco companies filed this action in 1996,
shortly after the Disclosure Act was enacted.3 Their complaint
alleges that the Disclosure Act violates various provisions of the
United States Constitution: the Commerce, Takings, and Due Process
Clauses. U.S. Const. art. I, § 8, cl. 3, amend. V; amend. XIV.
A threshold issue arose as to whether the Disclosure Act
is preempted by either the Federal Cigarette Labeling and
3
The cigarette and smokeless tobacco manufacturers originally
filed two separate suits. They were consolidated for trial and on
appeal.
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Advertising Act, 15 U.S.C. § 1331-41, or the Comprehensive
Smokeless Tobacco Health Education Act of 1986, 15 U.S.C. § 4401-
08. The district court held that there was no preemption, and we
affirmed. Philip Morris, Inc. v. Harshbarger, 122 F.3d 58 (1st
Cir. 1997) [hereinafter Philip Morris I].
Thereafter, the tobacco companies moved for a preliminary
injunction based on their constitutional claims. On December 10,
1997, the district court entered an order that preliminarily
enjoined appellants from enforcing the ingredient-reporting
provisions of the Disclosure Act until further order of the court.
On an interlocutory appeal, we again affirmed. Philip Morris, Inc.
v. Harshbarger, 159 F.3d 670 (1st Cir. 1998) [hereinafter Philip
Morris II]. We found that the district court had neither
"committed a clear error of law [nor] an abuse of discretion" in
finding that the tobacco companies showed a reasonable likelihood
of success on their claim that the Disclosure Act violates the
Takings Clause. Id. at 680.
Following this affirmance, all parties filed motions for
summary judgment. On September 7, 2000, the district court entered
a Memorandum and Order granting the tobacco companies' motions and
denying appellants' motion for summary judgment. Philip Morris,
Inc. v. Reilly, 113 F. Supp. 2d 129 (D. Mass. 2000) [hereinafter
Philip Morris III]. The court found that the Disclosure Act
violates the Takings, Due Process, and Commerce Clauses and issued
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a permanent injunction forbidding Massachusetts from requiring the
disclosure of brand-specific ingredient information from the
tobacco companies. Id. at 151.
Appellants filed timely appeals in which they challenged
the district court's findings on the constitutional claims.
Additionally, they argued that the tobacco companies' claims are
not ripe because the Disclosure Act does not mandate publication of
the submitted ingredient lists. In an opinion which has
subsequently been withdrawn, a divided panel of this Court
reversed. It found that the tobacco companies' claims are ripe,
but agreed with appellants that the Disclosure Act does not violate
the Takings, Due Process, or Commerce Clauses. The dissent agreed
that the claims are ripe and the Disclosure Act does not contravene
the Commerce Clause. However, it found violations of both the
Takings and Due Process Clauses.
After a timely petition, we granted en banc review as to
whether the Disclosure Act violates either the Takings or Due
Process Clauses. Our review does not include revisiting the issues
of whether the tobacco companies' claims are ripe or whether the
Disclosure Act violates the Commerce Clause.
III.
Standard of Review
Because this case reaches us on appeal from a grant of
summary judgment, I review the district court's judgment de novo.
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Euromotion, Inc. v. BMW of N. Am., Inc., 136 F.3d 866, 869 (1st
Cir. 1998).
IV.
Takings Analysis
The tobacco companies allege, and the district court
found, that the Disclosure Act unconstitutionally takes the tobacco
companies' property when it requires the tobacco companies to
disclose their ingredient lists to Massachusetts, which may, in
turn, publish those lists. To support this claim, the tobacco
companies first argue that their ingredient lists are trade secrets
and, as such, are property protected by the Takings Clause.
Second, they argue that the public disclosure of these trade
secrets destroys their value, thereby effecting a taking.
Appellants counter with two separate arguments. First, they claim
that the tobacco companies' interest in keeping their ingredient
lists secret does not defeat the state's ability to require public
disclosure where, as here, the requirement is "rationally related
to a legitimate governmental interest." Ruckelshaus v. Monsanto
Co., 467 U.S. 986, 1007 (1984). The asserted legitimate
governmental interest is the health and safety of its citizens.
Second, appellants dispute that Massachusetts law creates a
property interest in trade secrets that are required by law to be
disclosed to public agencies. I begin with analysis of the
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question of whether Massachusetts law protects the tobacco
companies' ingredient lists as trade secrets.
A. Trade Secret Protection in Massachusetts
In most states, trade secrets are property protected by
the Takings Clause, see Monsanto, 467 U.S. at 1003-04 (holding that
Missouri law, which follows the Restatement of Torts, creates
cognizable property right in trade secrets), and neither side
disputes that Massachusetts has long recognized and protected trade
secrets. See Jet Spray Cooler, Inc. v. Crampton, 385 N.E.2d 1349,
1354 (Mass. 1972) (noting that Massachusetts has protected trade
secrets based on public policy principles since at least 1868).
Also, neither side suggests that Massachusetts treats trade secrets
differently from other states or argues that the district court's
application of the Restatement (First) of Torts was incorrect. See
Philip Morris III, 113 F. Supp. at 135-36. Finally, appellants do
not contest that the tobacco companies' ingredient lists are trade
secrets.4
Rather, appellants make a more subtle, but nonetheless
ultimately ineffective, argument. Despite recognizing that
Massachusetts' laws provide a remedy for misappropriation of trade
4
In regard to the ripeness issue, which is not currently before
us, appellants did claim that elements of the ingredient lists are
not trade secrets as certain ingredients are widely known and
published by the tobacco companies, themselves. However,
appellants did not argue before the en banc court that the
ingredient lists, in their entirety, are other than trade secrets.
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secrets by private actors, see Junker v. Plummer, 67 N.E.2d 667,
669-70 (Mass. 1946), appellants argue that Massachusetts has long
established that it can require public disclosure of trade secrets
to advance public health and safety.
In support of this argument, appellants first point to
the Restatement (First) of Torts which says that the law may
require the disclosure of a trade secret to "promote some public
interest." § 757, cmt. d (1939). Certainly, courts have long
recognized that trade secrets generally can be subject to
disclosure under certain limited circumstances. See, e.g., Corn
Prods. Ref. Co. v. Eddy, 249 U.S. 427, 431-32 (1919) (upholding
required disclosure of ingredient lists to prevent consumer fraud)
[hereinafter Corn Prods. II]. However, the fact that the public
interest can sometimes override private property interests does not
establish that the tobacco companies have no cognizable property
interest when a state decides that publication of their trade
secrets will further public health. In fact, Massachusetts
continues to protect the integrity of many trade secrets despite
the potentially valuable impact on the public interest if those
trade secrets were to be placed in the public sphere. See, e.g.,
Gen. Chem. Corp. v. Dep't of Env't Quality Eng'g, 474 N.E.2d 183,
185 (Mass. App. Ct. 1985) (discussing Massachusetts statute which
specifically guarantees confidentiality of trade secrets belonging
to hazardous waste industries and submitted pursuant to
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regulations). Instead, the potential for mandated disclosure in
the public interest forms part of the inquiry as to whether a
particular disclosure requirement is constitutional. See Penn
Cent. Transp. Co. v. City of New York, 438 U.S. 104, 124 (1978)
(establishing reasonable investment-backed expectations as one
prong of the regulatory takings inquiry) [hereinafter Penn
Central]. Finally, the Supreme Court specifically found that
jurisdictions which follow the Restatement create a cognizable
property interest in trade secrets. Monsanto, 467 U.S. at 1003-04.
Second, appellants argue that General Chemical Corp.
establishes that the state may generally seize trade secrets in the
public interest. That case established no such proposition.
Rather, the court only assumed, arguendo, that the state
legislature could deprive hazardous waste industries of certain
trade secrets in the context of regulating those industries. Id.
at 185. Therefore, the case provides no notice that trade secrets
are subject to disclosure.
Third, appellants point to the Massachusetts public
records law which establishes that when a law requires trade secret
information to be filed with a state agency, nothing requires those
trade secrets to be treated as confidential. In fact, the public
records law makes such information publicly available. See Mass.
Gen. Laws ch. 4, § 7, cl. 26 (providing trade secret protection
only when the information is submitted voluntarily, to further
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public policy development, and with a guarantee of
confidentiality). Therefore, appellants argue that the tobacco
companies have no property interest in their ingredient lists once
a law requires them to submit that information to the state.
Whether Massachusetts guarantees the confidentiality of trade
secrets once they have been submitted to a state agency has no
bearing on whether Massachusetts creates a property interest in
trade secrets that is protected by the Takings Clause. Holders of
trade secrets can always voluntarily submit their information to a
state, consequently losing their property right. See, e.g.,
Monsanto, 467 U.S. at 1006-07 (noting that Monsanto had voluntarily
submitted its trade secrets information, knowing it was subject to
public disclosure, as part of a regulatory scheme). The question
is not whether trade secrets can be lost but whether trade secrets
are a protected property interest in Massachusetts.
And the answer to that question is clear. Massachusetts
protects trade secrets, Gen. Chem. Corp., 474 N.E.2d at 185 ("The
words 'trade secret' are commonly thought to carry a connotation of
a property interest."), and appellants fail to identify any
background principles of state law that successfully obviate
appellees' property interest in their trade secrets. The fact that
trade secrets are potentially subject to disclosure does not
destroy the tobacco companies' interest because trade secrets still
enjoy general protection. See Palazzolo v. Rhode Island, 533 U.S.
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606, 630 (2001) ("A regulation or common-law rule cannot be a
background principle for some owners but not for others. The
determination whether an existing, general law can limit all
economic use of property must turn on objective factors . . . ").
Specific laws simply cannot destroy property interests. In fact,
this is precisely what the Takings Clause is designed to prevent:
"a State, by ipse dixit, may not transform private property into
public property without compensation. . . . This is the very kind
of thing that the Taking Clause of the Fifth Amendment was meant to
prevent. That clause stands as a shield against the arbitrary use
of governmental power." Webb's Fabulous Pharmacies, Inc. v.
Beckwith, 449 U.S. 155, 164 (1980). Massachusetts cannot provide
trade secret protection to some parties and then refuse others the
same protections. Therefore, it is clear that the tobacco
companies have a property interest in their trade secrets that is
implicated by the Disclosure Act. In light of this, I turn to the
question of whether the Disclosure Act violates the Takings Clause.
B. The Takings Clause
The Supreme Court has distinguished between two branches
of Takings Clause cases: physical takings and regulatory takings.
See Tahoe-Sierra Pres. Council, Inc. v. Tahoe Reg'l Planning
Agency, 122 S. Ct. 1465, 1479 (2002) (distinguishing "between
acquisitions of property for public uses . . . and regulations
prohibiting private uses") [hereinafter Tahoe-Sierra]; see also Yee
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v. City of Escondido, 503 U.S. 519, 522 (1992) (delineating between
claims of physical occupation and mere regulation). A physical
taking occurs either when there is a condemnation or a physical
appropriation of property. Tahoe-Sierra, 122 S. Ct. at 1478.
Generally, courts apply "straightforward" per se rules when
addressing physical takings. Id. A regulatory taking transpires
when some significant restriction is placed upon an owner's use of
his property for which "justice and fairness" require that
compensation be given. Goldbatt v. Hempstead, 369 U.S. 590, 594
(1962); accord Penn. Coal Co. v. Mahon, 260 U.S. 393, 415 (1922)
("The general rule at least is that while property may be regulated
to a certain extent, if that regulation goes too far it will be
recognized as a taking."). For the most part, courts apply a
three-part "ad hoc, factual inquiry" to evaluate whether a
regulatory taking has occurred: (1) what is the economic impact of
the regulation; (2) whether the government action interferes with
reasonable investment-backed expectations; and (3) what is the
character of the government action. Penn Central, 438 U.S. at 124.
However, the Supreme Court has developed at least one per se rule
in the regulatory takings sphere. See Tahoe-Sierra, 122 S. Ct. at
1480. When a regulation denies all economically beneficial or
productive uses of land, it is a taking. Lucas v. S.C. Coastal
Council, 505 U.S. 1003, 1015 (1992).
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Here, there is an alleged taking of intellectual property
-- trade secrets. The Supreme Court has addressed an alleged
taking of trade secrets only once, in Monsanto. There, the Court
simply applied the multi-factored regulatory takings analysis
enunciated in Penn Central. Monsanto, 467 U.S. at 1004-06.5 It
5
The concurrence argues that the Supreme Court's application of
the Penn Central factors essentially created a special rule for
trade secrets that when "a trade secret holder has a reasonable
investment-backed expectation that its trade secrets will remain
secret, the sovereign's use or divulgement of that information
constitutes a taking." Infra pp. 50-51. This reading of Monsanto
is too broad. First, the Supreme court has frequently found that
one of the Penn Central factors is dispositive. See, e.g., Hodel
v. Irving, 481 U.S. 704, 716 (1987) (finding that the character of
the government action involved determined the issues). This does
not transform the inquiry for all subsequent cases which bear a
close resemblance. Penn Central still provides the relevant
inquiry. Second, the concurrence's reading of Monsanto needlessly
calls into question the legitimacy of a whole host of statutes that
mandate disclosure of private trade secret information under
certain limited circumstances. See, e.g., 15 U.S.C. § 2613(a)(3)
(providing that the EPA shall disclose confidential business
information if "necessary to protect health of the environment
against an unreasonable risk of injury to health or the
environment.").
The concurrence attempts to argue that the broad reading of
Monsanto does not call into question the legitimacy of many
regulatory regimes. Unfortunately, the concurrence's argument is
simply not persuasive. Section 2613(a)(3) provides for disclosures
of data submitted under the Toxic Substances Control Act. 15
U.S.C. § 2601-92. Under this act, manufacturers of chemical
substances are frequently required to submit data. For example,
anyone who is going to manufacture or process a new chemical
substance "is required to submit test data for [that] substance."
15 U.S.C. § 2604(b)(1)(A). The act provides no exemption for trade
secret information, either in terms of required submissions or
possible disclosures. As will be discussed more thoroughly below,
Monsanto clearly establishes that a manufacturer who submits trade
secret information under this provision will lose the right to
subsequently claim an unconstitutional taking. 467 U.S. at 1006-07
(continued...)
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5
(...continued)
(holding that when a manufacturer chose to submit trade secrets
under statutes which allowed for future publication of that data,
no taking occurred). This, however, does not mean that a
manufacturer could not challenge the data submission and disclosure
provisions before complying. That fact scenario is actually
analogous to the current case.
The tobacco companies are challenging the Disclosure Act
before complying with its provisions. They point to general laws
protecting trade secrets as evidence of a reasonable investment-
backed expectation that those trade secrets will remain protected
property. The concurrence then wants to take that reasonable
investment-backed expectation and say that Massachusetts can never
override the tobacco companies' property interest without violating
the Takings Clause:
[A]ctions speak louder than words. Once the Monsanto
Court found that the trade secret holder possessed a
reasonable investment-backed expectation in its trade
secrets, the Court determined that such a taking, if not
justly compensated, would be unconstitutional. Monsanto,
467 U.S. at 1013-14. This treatment mirrors a per se
takings analysis.
Infra p.57 n.26. This means that a chemical manufacturer could
claim that it has a reasonable investment-backed expectation under
state law and, therefore, the federal government may not require
submission and possible publication of its trade secrets. The
situation is indistinguishable from the current case, and the
concurrence's per se test leaves no room to consider the
government's substantial interests in disclosure (protecting public
health and the environment) or if the chemical manufacturer
receives a valuable government benefit in return.
The concurrence asserts an additional distinction between the
Disclosure Act and various federal statutes: "the statute provides
fair warning, and the trade secret holder can assess for itself the
likelihood that the government will reveal submitted information."
Infra p. 51 n.23. At its heart, this argument boils down to a
timing issue. The federal statutes are not new, and trade secret
holders know that their trade secrets are potentially subject to
disclosure. In contrast, the Disclosure Act is new, and the
tobacco companies invested in and developed their trade secrets
long before they became subject to disclosure. This, however is
(continued...)
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failed to address any physical takings cases, id.,6 and therefore
failed to resolve whether trade secrets can be the subjects of
physical takings. Since the Supreme Court has previously limited
5
(...continued)
not a valid grounds on which to distinguish the Disclosure Act. In
Palazzolo, the Court held that the fact a property owner acquired
title to his land after the enactment of a regulation did not bar
his claim that the regulation worked an unconstitutional taking.
"It suffices to say that a regulation that otherwise would be
unconstitutional absent compensation is not transformed into a
background principle of the State's law by mere virtue of the
passage of title." Id. at 629-30. Similarly, the fact that some
statutes have been on the books for years cannot make those
statutes constitutional and invalidate new statutes.
There is simply no persuasive distinction between many
existing regulatory regimes and the Disclosure Act when they are
analyzed only according to the trade secret holders' reasonable
investment-backed expectations. A more nuanced inquiry is needed.
6
At the time Monsanto was decided, the most recent Supreme Court
decision addressing the Takings Clause was Loretto v. Teleprompter
Manhattan CATV Corp., 458 U.S. 419 (1982). Loretto has often been
cited as a paradigmatic physical takings case. See, e.g., Yee, 503
U.S. at 522. Therefore, the fact that Monsanto failed to consider
the implications of Loretto could be read as a decision that trade
secrets may never be the subjects of physical takings. However, I
decline to adopt that interpretation. First, Loretto is factually
inapposite to Monsanto, making its decision of little import to the
result in Monsanto. Second, Loretto itself applied the Penn
Central framework which Monsanto relied upon. Loretto, 458 U.S. at
426. So, it was unclear whether Loretto should be considered as
belonging to a separate line of cases. The Supreme Court only
later clarified the distinctions between Loretto and Penn Central.
See Yee, 503 U.S. at 522 (articulating that there are, in fact, two
lines of Takings Clause cases). Third, the Supreme Court has never
said that intellectual property cannot be the subject of physical
takings, and I decline to read such a broad statement into the
failure of one case to speak to that issue.
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its analysis to the regulatory takings sphere, I choose to begin
there.7
Before proceeding to the Penn Central analysis, I note
that the tobacco companies argue that the Lucas per se rule governs
this case.8 The decision in and reasoning behind Lucas certainly
raise some interesting questions about the constitutionality of the
Disclosure Act. However, I am uncomfortable with the suggestion
that we simply import that per se rule into this case. Lucas dealt
with real, not personal, property, and the Court cautioned that the
value of personal property could be wiped out without triggering
the strictures of the Takings Clause. 505 U.S. at 1027-28. This
is not to say that Lucas is not relevant to the disposition of this
7
I note that the tobacco companies raise a physical takings claim
when they argue that the Disclosure Act deprives them of the right
to exclude others from their property, namely, their trade secrets.
In Kaiser Aetna v. United States, 444 U.S. 164 (1979), the Supreme
Court stated that "the 'right to exclude,' so universally held to
be a fundamental element of the property right, falls within this
category of interests that the Government cannot take without
compensation." Id. at 179-80. Because the Disclosure Act gives
Massachusetts the right to publish the ingredient lists, the
tobacco companies say they have lost the ability to exclude others
from their property. This, they claim, is a per se taking.
8
As noted above, Lucas states that there is a per se taking
whenever regulation destroys all beneficial uses of land. 505 U.S.
at 1015. Because they have lost the ability to exclude others from
using their trade secrets, the tobacco companies argue that their
property has lost all value. As support for their argument, the
tobacco companies cite Monsanto which holds that the main value of
trade secrets lies in the ability to exclude others. 467 U.S. at
1012. Once a trade secret is disclosed to another who is under no
obligation to protect the information, its value is gone. Id.
Therefore, according to the tobacco companies, the Disclosure Act
works a per se taking.
-23-
case. Cf. Nixon v. United States, 978 F.2d 1269, 1284-85 (D.C.
Cir. 1992) (arguing that there is no compelling distinction between
real and personal property as to make the application of per se
rules inappropriate in regard to personal property). Rather, I
simply choose to address these arguments while also considering the
Penn Central factors.
Furthermore, I note that applying the Penn Central
regulatory takings framework is not practically different from
utilizing per se rules. Functionally, these per se rules are
simply shortcuts. See Tahoe-Sierra, 122 S. Ct. at 1478 n.17
(explaining that the same premise underlies both regulatory and
physical takings cases but that the analysis is simply more complex
for regulatory takings). An example of this principle is Loretto,
a case which announced a per se rule in a physical takings context.
See Tahoe-Sierra, 122 S. Ct. at 1478-79 (identifying the situation
in Loretto as one which categorically requires compensation).
There, the Court recited the Penn Central factors but then held
that "when a physical intrusion reaches the extreme form of a
permanent physical occupation, a taking has occurred." Loretto,
458 U.S. at 426. The character of the government action was the
dispositive factor, and the Court bypassed the remaining Penn
Central factors. Id. at 435. Similarly, in some regulatory
takings cases, one factor is frequently dispositive. See Hodel,
481 U.S. at 717 (focusing on the character of the government
-24-
action); see also Monsanto, 467 U.S. at 1005 (finding the
interference with reasonable investment-backed expectations to be
dispositive). There is, of course, one stark difference: once a
per se rule has been announced, future courts do not have the
luxury to consider the public interest, reasonable investment-
backed expectations, or economic impact. Were I to import a per se
rule into this case, either in a physical or regulatory takings
context, I would ignore those Penn Central factors. However,
whether I apply a regulatory takings analysis or a per se rule
should not impact the ultimate decision. If the Disclosure Act's
provisions are so "extraordinary," Hodel, 481 U.S. at 716, as to
make it properly subject to a per se rule, the considerations that
led to adoption of that rule will also counsel me to find a taking
under the Penn Central framework. Therefore, the concerns of Lucas
will continue to inform my analysis.
As a final point before considering the Penn Central
factors as they apply to this case, I would like to address the
heavy charge leveled by the concurrence: that application of the
Penn Central framework to this case ignores principles of stare
decisis. See infra p. 51. I emphatically disagree with this
characterization and am of the view that such a conclusion is only
possible by the use of a self-serving definition of the term stare
decisis.
-25-
As noted by the concurrence, the jurisprudence in this
area is convoluted and subject to various interpretations. The
fact that the concurrence and I understand Monsanto differently is
not surprising. What is surprising is that the concurrence takes
that understandable difference in opinion and translates it into an
accusation that I am ignoring stare decisis. The heart of our
disagreement lies with our conflicting interpretations of Monsanto,
particularly as to the Court's discussion of the second scheme.
See infra pp. 26-31, 35-43, 45-47. The concurrence finds that this
discussion disposes of our current case and I simply do not agree,
for reasons explained elsewhere. I do not think that Monsanto
established a per se rule that once a trade secret holder
establishes a reasonable investment-backed expectation the
government may not require disclosure without triggering the
protections of the Takings Clause. Since I interpret Monsanto to
require courts to apply the Penn Central framework in cases like
ours, I now proceed with that analysis.
i. Reasonable Investment-Backed Expectations
Despite the importance of reasonable investment-backed
expectations under the Penn Central framework, the courts have
struggled to adequately define this term. See generally R.S.
Radford & J. David Breemer, Great Expectations: Will Palazzolo v.
Rhode Island Clarify the Murky Doctrine of Investment-Backed
Expectations in Regulatory Takings Law?, 99 N.Y.U. Envtl. L.J. 449,
-26-
449-50 (2001). Some very general contours are clear. Courts
protect only reasonable expectations. Ideally, the relevant
inquiry should recognize that not every investment deserves
protection and that some investors inevitably will be disappointed.
See Frank I. Michelman, Property, Utility, and Fairness: Comments
on the Ethical Foundations of "Just Compensation" Law, 80 Harv. L.
Rev. 1165, 1213 (1967). However, beyond the general landscape,
there is a paucity of clear landmarks that can be used to navigate
the terrain. Some recent decisions have added specific details,
see, e.g., Palazzolo, 533 U.S. at 627 (holding that whether
property is acquired before or after a regulation is enacted does
not completely determine the owner's reasonable investment-backed
expectations), but many areas are still uncharted. As I proceed
into this quagmire, the first guidepost is Monsanto.
Monsanto answered a challenge to disclosures by the EPA
of data which had been submitted under the Federal Insecticide,
Fungicide, and Rodenticide Act ("FIFRA"). 7 U.S.C. §§ 136-136y.
FIFRA was enacted in 1947, amended in 1972, and amended again in
1978, each time offering different protections to submitted data.
Monsanto challenged disclosures of data which had been submitted
under each of these schemes, and the Court looked at the
protections provided by each scheme to determine whether applicants
had a reasonable investment-backed expectation that their trade
secrets would remain secret. Following the Supreme Court's lead,
-27-
I recount the provisions of each scheme and the Court's
corresponding concerns.
In the period between 1947 and 1972, "FIFRA was primarily
a licensing and labeling statute," Monsanto, 467 U.S. at 991, and
it failed to specify the government's ability to use and disclose
data submitted by pesticide manufacturers. Id. at 1008.
Therefore, manufacturers like Monsanto had no guarantee that their
data would be treated confidentially, nor did the government have
specific authority to disclose such data. Id. The Court concluded
that without a guarantee of confidentiality, Monsanto had no
reasonable investment-backed expectation that its submitted data
would remain secret. Id. Therefore, any disclosures of this data
by the government did not constitute an unconstitutional taking of
property.
The 1972 amendments transformed FIFRA from a labeling
statute to a "comprehensive regulatory statute." Id. at 991.
Additional requirements were imposed on pesticides submitted for
registration, and the EPA, as the administrative agency in charge
of such regulations, gained additional enforcement powers. Id. at
991-92. Congress also amended FIFRA to provide for certain public
disclosures of data, but it explicitly prohibited the EPA from
disclosing information which was deemed to be a trade secret. Id.
at 992. Another addition was a "mandatory data-licensing scheme."
Id. This allowed the EPA to use data submitted by one registrant
-28-
when considering subsequent applications as long as those later
applicants agreed to compensate the original registrant. Id.
It was this second scheme that raised possible
constitutional problems. Id. at 1010-14. The difference arose
because there was an "explicit governmental guarantee [which]
formed the basis of a reasonable investment-backed expectation"
that submitted data, designated as trade secrets, would be kept
confidential. Id. at 1011. A trade secret's value lies in the
"right to exclude others." Id. If others are given the trade
secret, the "holder of the trade secret has lost his property
interest." Id. Therefore, if the government discloses the data
that Monsanto submitted during this second period, a taking
potentially occurs because the disclosure destroys the value of
Monsanto's trade secrets. Id. at 1013-14. Whether such a taking
is unconstitutional hinges on whether Monsanto received adequate
compensation, a question not before the Court. Id.
The final amendments relevant to Monsanto occurred in
1978. They provided that any data submitted could be cited and
considered by subsequent applications for fifteen years, so long as
the original submitter is compensated. Id. at 994. Finally, any
qualified person could request that all health, safety, and
environmental data be disclosed, regardless of whether such
-29-
information had been designated a trade secret.9 Here, it was
dispositive that Monsanto knew that the government might disclose
any confidential data:
If, despite the data-consideration and data-
disclosure provisions in the statute, Monsanto
chose to submit the requisite data in order to
receive a registration, it can hardly argue
that its reasonable investment-backed
expectations are disturbed when EPA acts to
use or disclose the data in a manner that was
authorized by law at the time of the
submission.
Id. at 1006-07. This notice negated any reasonable investment-
backed expectations and, consequently, Monsanto's argument that a
taking had occurred.
Despite appellants' arguments to the contrary, neither
the first nor the third regime presented in Monsanto is directly
analogous to the Disclosure Act. One stark difference sets them
both apart and undermines their usefulness in this case. Monsanto
complained about current and future disclosures of already
submitted data. Monsanto, 467 U.S. at 1004 ("Having determined
that Monsanto has a property interest in the data it has submitted
to EPA, we confront the difficult question whether a 'taking' will
9
The 1978 amendments did provide some exclusions, including
whether disclosure "would reveal 'manufacturing or quality control
processes' or certain details about deliberately added inert
ingredients." Monsanto, 467 U.S. at 996 (quoting 7 U.S.C. § 136h
(d)(1)(A)). However, even these prohibitions can be overridden if
it is determined that "'disclosure is necessary to protect against
an unreasonable risk of injury to health or environment.'" Id.
(quoting 7 U.S.C. § 136h(d)(1)).
-30-
occur when EPA discloses those data. . . ." (emphasis added)). In
answering that challenge, the Court measured Monsanto's reasonable
investment-backed expectations at the time it submitted the data.
Because there was no promise by the government under these two
schemes to keep the data confidential, Monsanto had no basis on
which to expect that its data would remain secret. In essence,
Monsanto had "constructive notice" that its trade secrets might
later be made public. Here, the tobacco companies challenge the
ability of Massachusetts to compel future submissions of data which
would be subject to disclosure. The tobacco companies have not
voluntarily provided their ingredient lists. Therefore, their
situation is fundamentally different from two of the scenarios that
confronted Monsanto.10
The second scheme addressed by the Monsanto Court does
shed some light on the current case, but it is not entirely
dispositive. There, FIFRA provided Monsanto with an explicit
guarantee of confidentiality. This guarantee established a
reasonable investment-backed expectation that Monsanto's trade
10
There is one element of the third Monsanto scheme which does not
suffer from the same timing problem. 467 U.S. at 1007-08
(addressing Monsanto's argument that the final statutory scheme
created an unconstitutional condition). I will return to this when
I discuss whether the Disclosure Act is constitutional because it
offers the tobacco companies a "valuable government benefit" in
exchange for the submission of the ingredient lists. Nollan v.
Cal. Coastal Comm'n, 483 U.S. 825, 833 n.2 (1987). Here, I simply
note that this holding in Monsanto did not address Monsanto's
reasonable investment-backed expectations. Monsanto, 467 U.S. at
1008.
-31-
secrets would remain protected. When the Court decided that the
government could not disclose submitted data which had been
guaranteed confidentiality, the Court simply enforced the terms of
the statute. Here, Massachusetts only generally protects trade
secrets, establishing a right to recovery when a third party
discloses or uses a trade secret without permission, Jet Spray
Cooler, 385 N.E.2d at 1354, and the Disclosure Act only provides
for publication of submitted data. It explicitly disclaims any
long-term confidentiality.11 This distinction is important because
a trade secret is lost if its holder gives the trade secret to
another without extracting a guarantee of confidentiality.
Monsanto, 467 U.S. at 1002. Monsanto preserved its trade secrets
because there was a promise of confidentiality. The tobacco
companies will lose their trade secrets because there is no similar
promise here. Therefore, a slightly different question is posed by
the current case. In Monsanto, the question was whether the
government could disclose trade secrets it had previously agreed to
11
As the concurrence correctly notes, the tobacco companies are
hardly in a position to force the Massachusetts legislature to
guarantee confidentiality to submitted trade secrets. Furthermore,
as this opinion addresses later, the tobacco companies are
currently placed in the untenable position of having to choose
between relinquishing their valuable trade secrets or pulling their
products out of Massachusetts. This is an unconstitutional
condition. However, the fact that Massachusetts is creating an
unconstitutional condition has little, if anything, to do with
whether the tobacco companies have a reasonable investment-backed
expectation that their trade secrets will remain protected.
-32-
keep secret. Here, the question is whether Massachusetts can force
the tobacco companies to cede their trade secrets.
To answer that question I must look at the tobacco
companies' reasonable investment-backed expectations that they can
maintain the integrity of their trade secrets. The fact that the
Disclosure Act has been enacted is not dispositive because, as
discussed above, Massachusetts cannot simply redefine property
rights without regard to previously existing protections. See
Webb's Fabulous Pharmacies, Inc., 449 U.S. at 164; cf. Palazzolo,
533 U.S. at 627 (holding that enactment of a regulation inhibiting
development before a purchaser acquires his property does not alone
negate the purchaser's reasonable investment-backed expectations
because otherwise "[a] State would be allowed, in effect, to put an
expiration date on the Takings Clause"). I must examine the
tobacco companies' reasonable investment-backed expectations "in
light of the whole of our legal tradition," Lucas, 505 U.S. at 1035
(Kennedy, J., concurring), not just in light of the provisions of
the Disclosure Act.
To understand that legal tradition, I begin with a
Supreme Court case from the early twentieth century which arguably
provides constructive notice that ingredient lists are not
inviolable. In Corn Products II, the Court considered whether it
was a taking to require a manufacturer to disclose its ingredient
list. In a tersely worded decision, the Court simply said:
-33-
And it is too plain for argument that a
manufacturer or vendor has no constitutional
right to sell goods without giving to the
purchaser fair information of what it is that
is being sold. The right of a manufacturer to
maintain secrecy as to his compounds and
processes must be held subject to the right of
the state, in the exercise of its police power
and in promotion of fair dealing, to require
that the nature of the product be fairly set
forth.
249 U.S. at 431-32 (emphasis added). While this language can be
read to suggest that ingredient lists are subject to full
disclosure, it refers only to "fair information." Such "fair
information" could be something short of complete disclosure of all
additives. For example, if Massachusetts found that the addition
of one or more ingredients to tobacco products presented a health
risk, disclosing when those specific ingredients are used might
constitute "fair information." Cf. Minn. Stat. § 461.17 (requiring
manufacturers to report the use of ammonia, arsenic, cadmium,
formaldehyde, and lead in tobacco products and making such
information public record).
This second interpretation gains credence from a closer
reading of Corn Products II. The Court was addressing not a public
health statute but a statute to prevent consumer deception. Corn
Prods. II, 249 U.S. at 431 ("Evidently the purpose of the
[labeling] requirement is to secure freedom from adulteration and
misbranding. . . ."). To prevent deception, it might make sense to
require a complete list of ingredients. Only requiring a partial
list could, in fact, increase consumer deception. In contrast,
-34-
there is no evidence in the record that publication of only those
ingredients which create health risks undermines the goal of
promoting public health. In fact, such partial lists seem closest
to the "fair information" referred to in the Corn Products II
decision.12
More recent regulation, of both tobacco and other
products, supports the idea that "fair information" is not always
a complete ingredient list. While the federal government and other
states worry about the health effects of tobacco additives, none of
their regimes requires the publication of brand-specific ingredient
12
I also note that the factual and procedural history of this case
cautions me against a broad interpretation of its language. Corn
Products II reached the Court on appeal from a decision of the
Kansas Supreme Court. Corn Prods. Ref. Co. v. Eddy, 163 P. 615
(Kan. 1916) [hereinafter Corn Prods. I]. The Kansas court had held
that its State Board of Health could enforce the state labeling
laws against the plaintiff, Corn Products. The plaintiff was
selling a syrup called "Mary Jane" which failed to comply with
Kansas law in two relevant respects: the label failed to identify
"Mary Jane" as a compound and to specify its place of manufacture.
Id. at 615. The label did list the product's ingredients, in order
of relative amount. Id. When the case reached the Supreme Court,
the plaintiff raised its claim that the Kansas statute, which
required ingredients to be listed in order of relative amount,
constituted an unconstitutional taking. Corn Prods. II, 249 U.S.
at 431. It was then that the Supreme Court held that a state may
require accurate labeling of products. Id. However, this argument
and, consequently, its result, is a little confusing. The formula
for "Mary Jane" was not a secret. It was clearly published on the
label. See Corn Prods. I, 163 P. at 615. It had also been
registered with the Patent Office. See id. The dispute with
Kansas centered not on the requirement that ingredients be listed,
but on the need to add the word "compound" and the place of
manufacture to the label. Therefore, the claim that a state could
not require disclosure of a secret formula was not a well-developed
controversy.
-35-
lists. They either do not require brand-specific disclosures, or
they grant the tobacco companies protections against public
disclosure of ingredient lists submitted to the states.
Furthermore, regulations governing other products recognize the
difference between requiring accurate labeling and protecting
secret formulas. For example, the Food, Drug, and Cosmetic Act
allows additives to be grouped as "spices, flavoring, and coloring"
without specifically identifying the individual ingredients. 21
U.S.C. § 343(i)(2). This allows many manufacturers to maintain
their secret formulas.
Given this complex background and the fact that
Massachusetts has long protected trade secrets, see Jet Spray
Cooler, 385 N.E.2d at 1354, I cannot hold that the tobacco
companies have no reasonable investment-backed expectation that
their ingredient lists will remain secret. Therefore, I proceed to
the other elements of the Penn Central inquiry.
ii. Economic Impact
In contrast to reasonable investment-backed expectations,
the law regarding economic impact is fairly straightforward. The
inquiry is whether the regulation "impair[s] the value or use of
[the] property" according to the owners' general use of their
property. Pruneyard Shopping Ctr., 447 U.S. at 83. Not only is
the use to which the property owner puts her property important,
but the economic impact needs to be considered in the context of
-36-
other laws and regulatory schemes. See Connolly v. Pension Benefit
Guar. Corp., 475 U.S. 211, 225-26 (1986) (evaluating economic
impact of imposing withdrawal fees on employers who leave pension
funds within context of entire ERISA scheme).
The evidence presented here is similarly straightforward.
The appellees' have spent millions of dollars developing the
formulas for different brands. The evidence shows that public
disclosure of the appellees' ingredient lists, even in part, will
make it much easier to reverse engineer those formulas. If
competitors can obtain these formulas, they can replicate
appellees' products, undermining the value of appellees' brands.
Some of those brands, such as Marlboro, are worth billions of
dollars. While it is impossible to predict the exact economic
impact that the Disclosure Act will have, it is potentially
tremendous.
iii. Character of the Government Action
In this last section, I delve into how the Disclosure Act
regulates and what that regulation does to the tobacco companies'
trade secrets. See Hodel, 481 U.S. at 716 (examining the effect of
the escheat provisions of the Indian Land Consolidation Act of
1983). As mentioned above, the tobacco companies believe that the
Disclosure Act regulations are so egregious that they rise to the
level of a per se taking. They ground this claim on the fact that
the Disclosure Act gives Massachusetts the right to publish the
-37-
ingredient lists. The Act, in essence, prevents the tobacco
companies from excluding others from their trade secrets,
destroying their essential attribute. It also, allegedly, destroys
the entire value of the trade secrets. I now address those
arguments in full. However, I will also balance the effects of the
Disclosure Act against Massachusetts' interests. See Keystone
Bituminous Coal Ass'n v. DeBenedictis, 480 U.S. 470, 488 (1987)
(considering the state's asserted interests in "health, the
environment, and the fiscal integrity of the area") [hereinafter
Keystone]. Here, the asserted state interest is the promotion of
public health.
I begin with the tobacco companies' argument that they
will lose the right to exclude others from their trade secrets and,
consequently, their trade secrets will lose all value. It appears
paradigmatic that these assertions are true. In Monsanto, the
Supreme Court recognized that, "[i]f an individual discloses his
trade secret to others who are under no obligation to protect the
confidentiality of the information, or otherwise publicly discloses
the secret, his property right is extinguished." 467 U.S. at 1002.
That is exactly what happens here. The Disclosure Act requires the
tobacco companies to share their trade secrets with Massachusetts,
which is under no obligation to keep the information secret.13 In
13
The dissent argues that there is indeed "an unambiguous promise
of confidentiality" given to the tobacco companies. In support of
this proposition, the dissent correctly notes that the tobacco
-38-
fact, the Disclosure Act spells out the terms under which
Massachusetts will publish those trade secrets. It, thus, provides
specific notice to the tobacco companies that Massachusetts need
not respect their property rights. Therefore, if the tobacco
companies comply with the requirements of the Disclosure Act, their
property right will be extinguished. In the future, should a
companies are promised confidentiality until the requirements for
disclosure are met. Mass. Regs. Code tit. 105 § 660.200(G)(2). As
previously identified, those requirements are simply (1) that
Massachusetts finds that disclosure "could reduce risks to public
health" and (2) that the Massachusetts Attorney General finds that
such disclosure would not constitute an unconstitutional taking.
Mass. Gen. Laws § 307B. The enabling regulations also promise that
the confidentiality of the ingredient lists will be maintained
during any litigation challenging specific disclosures. Mass.
Regs. Code tit. 105 § 660.200(G)(2). While the dissent correctly
describes the law, this does not undermine my point. Essentially,
Massachusetts only promises confidentiality until it finds that
disclosure "could" benefit public health. As discussed in the
text, it is this low burden that is problematic. Should the
tobacco companies comply with the Disclosure Act and Massachusetts
decide to publish some information from the submitted ingredient
lists because such publication "could" benefit public health, the
tobacco companies cannot complain that this standard is too low.
That is exactly the situation that confronted Monsanto, and the
Supreme Court held that Monsanto was bound by the terms of the
statute in effect when its data had been submitted. Monsanto, 467
U.S. 1006-07. Nothing distinguishes that situation from the one
that the dissent contemplates.
The dissent also finds that third parties will be unable to
compel disclosure of the ingredient lists under the public records
statute. Materials or data that are "specifically or by necessary
implication exempted from disclosure by statute" are clearly
exempted from the definition of a public record. Mass. Gen. Laws
ch. 4, § 7, cl. 26(g). However, whether the Disclosure Act
provides such a specific or necessary implication of exemption is
a question for the Massachusetts courts, not this court. Until the
lower courts decide this question in the affirmative, the tobacco
companies risk publication of their ingredient lists by complying
with the Disclosure Act.
-39-
competitor use published data, the tobacco companies will have no
ability to enforce their rights. See Jet Spray Cooler, 385 N.E.2d
at 1354 ("The essence of an action for the wrongful use of trade
secrets is the breach of the duty not to disclose or to use without
permission confidential information acquired from another.").
Similarly, the value of the trade secrets will be lost because
their value lies in the ability of the tobacco companies to exclude
others. See Monsanto, 467 U.S. at 1012. The Disclosure Act
essentially destroys the tobacco companies' trade secrets.
This fact may very well prove to be dispositive in this
case. In Armstrong v. United States, 364 U.S. 40 (1960), the
Supreme Court considered the implications of a government action
which, as a secondary effect, destroyed a private party's lien.
The Court held that this was a taking and "not a mere
'consequential incidence' of a valid regulatory measure." Id. at
48. The Court then continued: "Before the liens were destroyed,
the lienholders admittedly had compensable property. Immediately
afterwards, they had none. This was not because their property
vanished into thin air. It was because the Government for its own
advantage destroyed the value of the liens." Id. The Disclosure
Act creates a similar situation. The tobacco companies have a
-40-
protected property interest which the Disclosure Act will
completely destroy.14
On the other hand, in Andrus v. Allard, 444 U.S. 51
(1979), the Supreme Court made it clear that regulation can
severely undermine the economic value of personal property and not
rise to the level of a taking. Id. at 66. There, the federal
government had banned sales of all items containing eagle parts.
Id. at 56. The end result was that some people who had artifacts
made of lawfully acquired eagle parts could not sell their
products. Id. at 62-63. Consequently, the artifacts lost
essentially all of their economic value. Id. at 66 (positing that
some value could be extracted by displaying the artifacts for an
admissions charge). While this was a "significant restriction,"
the Court held that this "destruction of one 'strand' of the
14
One might acknowledge that the Disclosure Act destroys the
tobacco companies' trade secrets but argue that because those trade
secrets are inexorably tied to the underlying formulas, their
destruction does not constitute an unconstitutional taking. In one
case, the Supreme Court suggested that certain property interests
can be completely extinguished so long as they are attendant to
other property rights. Keystone, 480 U.S. at 501 (upholding a law
which entirely destroyed the support estate because it "has value
only insofar as it protects or enhances the value of the estate
with which it is associated."). That result simply is not
applicable here. Keystone confronted an idiosyncratic regime which
separated the support estate from the surface estate. Id. at 500.
This odd scenario, alone, is probably sufficient to confine
Keystone to its facts. Additionally, the Supreme Court has held
that trade secrets are entitled to their own protections under the
Takings Clause. Monsanto, 467 U.S. at 1001-04. Therefore, it is
clear that the tobacco companies' trade secrets are not attendant
rights which can be destroyed, at least, so long as the tobacco
companies can continue to use their formulas.
-41-
bundle" of property rights did not constitute a taking. Id.
Rather, the substantial state interest in preserving eagles
justified the regulation. Id. at 58 (discussing policy rationale
behind the regulation) and 66-68 (upholding the regulation despite
the burden it places on lawful property owners).
The end result reached in Andrus, however, must be
compared with the result in Hodel.15 In Hodel, the Supreme Court
addressed whether the Indian Land Consolidation Act of 1983 created
an unconstitutional taking when it destroyed the rights of descent
and devise which had previously attached to undivided fractional
interests in land. 481 U.S. at 706-10. Congress had enacted this
legislation to attempt to revise an "administratively unworkable
and economically wasteful" system of administering Indian lands.
Id. at 707. To further that goal, the statute destroyed the rights
of descent and devise for small fractional interests of land and,
instead, had those interests escheat to the tribe. Id. at 709.
This, in fact, was such an "extraordinary" government action as to
make it a taking, despite the indeterminancy of the other Penn
15
Whether these two cases can actually be reconciled is unclear.
When Hodel was decided, the Court split on the implications that
its decision had on the precedential value of Andrus. Compare
Hodel, 481 U.S. at 719 (Scalia, J., concurring) (suggesting that
Hodel limits Andrus to its facts) with id. at 718 (Brennan, J.,
concurring) (suggesting that Hodel is a unique case which should be
limited to its facts). Both these concurrences imply that Hodel
and Andrus cannot be fully reconciled, that one must be limited to
its facts. Fortunately, that case does not force us to address the
conflict that lies at the heart of this controversy.
-42-
Central factors and the "serious public problem" which the
regulation addressed. Id. at 714-18.
The question then arises as to which line of cases
governs here. The simple loss of economic value, alone, is
probably not enough. See Lucas, 505 U.S. at 1027-28 (noting that
regulations can constitutionally render personal property
"economically worthless"). "[G]overnment regulation--by
definition--involves the adjustment of rights for the public good.
Often this adjustment curtails some potential for the use or
economic exploitation of private property. To require compensation
in all such circumstances would effectively compel the government
to regulate by purchase." Andrus, 444 U.S. at 65. There is a
point, however, at which compensation is due, see Penn. Coal Co.,
260 U.S. at 415, and this is not simply a case where the tobacco
companies' property has been rendered worthless. Their property
right has been "extinguished." Monsanto, 467 U.S. at 1002.
Consequently, it appears unconstitutional.
Appellants urge us, however, to consider the asserted
state interest, promoting public health, as a counterbalance.16 I
16
The concurrence argues that the state's interest in disclosure
should not play a factor in the decision because Monsanto simply
looked to the reasonable investment-backed expectations despite
public health concerns. See infra pp. 54-55. However, Monsanto
presented a different problem, as discussed above. In enacting the
second scheme, Congress made an up-front decision to protect the
integrity of submitted trade secrets and promised confidentiality.
The government could not later decide that public health concerns
overrode that explicit government promise. Here, there is no
-43-
recognize that appellants have asserted a significant, perhaps
compelling, state interest: a right for Massachusetts to protect
and promote the health of its citizens. If I was convinced that
this regulation was tailored to promote health and was the best
strategy to do so, I might reconsider our analysis. Numerous cases
show that a crucial part of the regulatory takings equation is the
government interest. See, e.g., Keystone, 480 U.S. at 488 ("[T]he
nature of the State's interest is a critical factor in determining
whether a taking has occurred."). However, the cases also show
that the means should bear some reasonable relationship to the
ends. See id. at 487 n.16 (noting that Pennsylvania Coal Co.
rejected the legislature's proffered goal in enacting the
regulation when it found an unconstitutional taking).
I simply am not convinced that the Disclosure Act,
particularly the provisions about which the tobacco companies
complain, really helps to promote public health. The Disclosure
Act allows for full disclosure of the ingredient lists when doing
so "could" further public health. This places an extremely low
burden on Massachusetts. Frankly, for a state to be able to
completely destroy valuable trade secrets, it should be required to
show more than a possible beneficial effect. Cf. Keystone, 480
U.S. at 485-93 (explaining that courts should balance the public
explicit government promise of confidentiality, and the Supreme
Court has factored the public interest into the Penn Central
framework.
-44-
and private interests when evaluating regulatory takings claims).
The tremendous individual loss is simply not justified by such a
speculative public gain. Furthermore, it is not at all clear that
protecting the overall integrity of the tobacco companies'
ingredient lists will interfere with Massachusetts' goal of
promoting public health. See Hodel, 481 U.S. at 717-18 ("The
difference in this case is the fact that both descent and devise
are completely abolished; indeed they are abolished even in
circumstances when the governmental purpose sought to be advanced,
consolidation of ownership of Indian lands, does not conflict with
the further descent of the property."). I note that the tobacco
companies comply, without complaint, with regimes which require
them to make confidential disclosure of brand-specific, ingredient
information, see Tex. Health & Safety Code Ann. §§ 161.351-55, or
which require public disclosures when specific ingredients are
used, see Minn. Stat. § 461.17. There is no evidence that suggests
that regimes similar to those adopted by Texas and Minnesota, or
some combination thereof, would not achieve the goals which
appellants claim underlie the requirements of the Disclosure Act.17
17
In fact, the regime adopted by Massachusetts may actually be
less effective at promoting public health. If entire ingredient
lists are published, those ingredients which might pose a danger to
health may very well be buried in the middle or end of lengthy
lists. It appears from a lay perspective that making targeted
disclosures of certain ingredients and ingredient groupings might
be a more effective public health strategy.
-45-
Because this is a crucial point, I wish to further
clarify what I have just concluded above. I am not requiring
Massachusetts to adopt the narrowest regulation possible to address
its laudable goals. Rather, the tobacco companies complain about
a specific element of the Disclosure Act, namely, that
Massachusetts can publish their entire ingredient lists if doing so
"could" further public health. A prior holding, which is not
currently before us, decided that under this standard,
Massachusetts will publish the tobacco companies' ingredient
lists.18 Philip Morris III, 113 F. Supp. 2d 129. I simply find
that this actual publication, or right to publish, under the
minimal standard set forth, has not been shown to further the
stated goal of promoting public health in such a way as to
counterbalance the tremendous private loss involved. Therefore, it
is clear that the character of the government action weighs heavily
against sustaining the Disclosure Act.
iv. Conclusion -- Regulatory takings analysis
As I conclude my analysis of the Penn Central factors, I
first note that there is no formula as to how to weigh the
importance of the various factors. As has been clear from the
18
Under Monsanto, if the tobacco companies were to submit their
trade secret information without any guarantee of confidentiality,
they would lose all right to complain later about disclosure. 467
U.S. at 1006-07. Therefore, it is not actually dispositive that
Massachusetts will disclose these lists. It is sufficient that the
tobacco companies are on constructive notice that if they comply
with the Disclosure Act, their trade secrets may not remain secret.
-46-
preceding discussion, different factors can be dispositive. See,
e.g., Hodel, 481 U.S. at 716 (resting on the character of the
government regulation which the Court found to be "extraordinary");
Monsanto, 467 U.S. at 1005 (finding the lack of reasonable
investment-backed expectations to be dispositive).
Here, the tobacco companies have at least some reasonable
investment-backed expectation that their trade secrets will remain
secret and the economic impact of revelation is likely to be great.
These factors, alone, may not be sufficient to raise this case to
the level of an unconstitutional taking. However, the character of
the government action determines the case. The Disclosure Act
causes the tobacco companies to lose their trade secrets, entirely,
and appellants advance no convincing public policy rationale to
justify the taking itself. Instead, they point to a general,
laudable goal which cannot justify the specific action of which the
tobacco companies complain. Therefore, I find that the Disclosure
Act violates the Takings Clause by taking appellees' property
without just compensation.
This, unfortunately, does not completely end the inquiry.
I must turn briefly to the doctrine of unconstitutional conditions.
C. Unconstitutional Conditions
The Disclosure Act is unlike some other challenged
government actions because the tobacco companies do not need to
cede their ingredient lists to Massachusetts. They can opt out
-47-
entirely, simply by not selling their products in Massachusetts.19
Therefore, their claim is really that Massachusetts has placed an
unconstitutional condition on their right to sell their products in
Massachusetts. If the Disclosure Act simply required the tobacco
companies to submit their ingredient lists for possible
publication, it would be unconstitutional. The question then is
whether Massachusetts can constitutionally condition the right to
sell tobacco products in Massachusetts on submission to this
scheme.
The doctrine of unconstitutional conditions is fairly
well-developed. "[T]he government may not require a person to give
up a constitutional right--here the right to receive just
compensation when property is taken for public use--in exchange for
discretionary benefit conferred by the government where the benefit
sought has little or no relationship to the property." Dolan v.
City of Tigard, 512 U.S. 374, 385 (1994). Beyond these general
contours, different inquiries have developed which apply to
19
Apparently when faced with disclosure regulations previously,
some tobacco companies have simply withdrawn from those markets or
reformulated the brands sold within those jurisdictions so as to
avoid disclosures of certain ingredients. See Robert K. Hur,
Takings, Trade Secrets, and Tobacco: Mountain or Molehill?, 53
Stan. L. Rev. 447, 488 (2000) (discussing the reaction of various
tobacco companies to regulations imposed by Canada).
-48-
different types of property. In the case of intellectual property,
Monsanto provides the relevant standard.20
In the final element of Monsanto, the Court addressed
whether the government could require pesticide manufacturers to
submit trade secrets which could then be disclosed to other
parties. Monsanto claimed that these data disclosure provisions
created an unconstitutional condition. Monsanto, 467 U.S. at 1007.
In respect to this claim, the Court said "as long as Monsanto is
aware of the conditions under which the data are submitted, and the
conditions are rationally related to a legitimate Government
interest, a voluntary submission of data by an applicant in
exchange for the economic advantages of a registration can hardly
be called a taking." Id. This holding depended on the fact that
Monsanto submitted its data in exchange for a valuable government
benefit: a registration. See Nollan v. Cal. Coastal Comm’n, 483
U.S. 825, 833 n.2 (1987) ("[W]e found merely that the Takings
Clause was not violated by giving effect to the Government's
announcement that application for 'the right to [the] valuable
20
The tobacco companies argue that there must be a "rough
proportionality" between means and ends, a standard which has
previously been used in evaluating unconstitutional conditions
claims in the Takings Clause sphere. Dolan, 512 U.S. at 391.
However, the Supreme Court has only applied this standard in cases
where the state requires land to be dedicated to public use in
exchange for permits to develop other portions of the property.
City of Monterey v. Del Monte Dunes at Monterey, Ltd., 526 U.S.
687, 702 (1999). Therefore, I elect to follow the path laid out in
Monsanto, which is, factually, fairly analogous to the current
case.
-49-
Government benefit,' of obtaining registration of an insecticide
would confer upon the Government a license to use and disclose the
trade secrets contained in the application." (citations omitted)).21
Therefore, as part of a regulatory scheme which confers some
government benefit upon a manufacturer, Monsanto establishes that
the government may require that manufacturer to relinquish its
rights to a trade secret.
Appellants argue that this holding governs here. I
disagree. They claim that Massachusetts has a "legitimate
Government interest" in protecting the health and safety of its
citizens. I agree that this is indeed a legitimate state interest.
My disagreement lies, rather, with the other side of the equation.
The state must offer a valuable government benefit. Id. The right
offered here is the right to sell tobacco products in
Massachusetts. In Nollan, the Supreme Court considered what
constitutes such a benefit with regard to land. The Court held
that the right to build upon one's land is not such a benefit that
21
When the panel addressed this question, the panel majority
ignored the Court's directive in Nollan. The majority justified
their approach by noting that Nollan quotes a portion of the
Monsanto opinion, which is actually a quotation from appellee
Monsanto's brief. See Nollan, 483 U.S. at 833 n.2; see also
Monsanto, 467 U.S. at 1007. This is an insufficient ground on
which to ignore the Supreme Court's later clarification of the
Monsanto holding. Just because the Supreme Court decides to adopt
a party's terminology does not mean that the Court's reasoning is
non-binding on this Court. We must still follow the lead of the
Supreme Court whether the Justices blaze their own path or adopt a
well-reasoned argument presented to them.
-50-
would allow a state to require a landowner to grant a public
easement across his property. Id. at 833 n.2. In contrast, in
Monsanto, the government granted a license, created a de jure data-
licensing scheme, and established a period of exclusive use for new
ingredients in exchange for the right to disclose some trade
secrets. 467 U.S. at 994. Applying these two precedents to our
case, I conclude that allowing a manufacturer to simply sell its
legal product is more similar to building on one's land than to the
complex regulatory scheme in Monsanto. Therefore, Massachusetts
cannot condition the right to sell tobacco on the forfeiture of any
constitutional protections the appellees have to their trade
secrets. As a result, the Disclosure Act is invalid because it
creates an unconstitutional taking of the tobacco companies'
products.
V.
Due Process Analysis
Because I find that the Disclosure Act is invalid under
the Takings Clause, I will not address the question of whether it
also violates the Due Process Clause.
-51-
VI.
Conclusion
For the reasons discussed above, I find that the
Disclosure Act violates the Takings Clause. Therefore, I affirm
the district court's judgment.22
Affirmed.
"Concurrence follows"
22
I note that normally injunctive relief is not available under
the Takings Clause. "Equitable relief is not available to enjoin
an alleged taking of private property for public use, duly
authorized by law, when a suit for compensation can be brought
against the sovereign subsequent to the taking." Monsanto, 467
U.S. at 1016. However, appellants failed to object to the
appropriateness of injunctive relief before this Court. Therefore,
they have waived this argument, see García-Ayala v. Lederle
Parenterals, Inc., 212 F.3d 638, 645 (1st Cir. 2000) (holding that
failure to brief an argument constitutes waiver), and the
injunction stands.
-52-
SELYA, Circuit Judge (Concurring in the judgment). I
agree with the ultimate conclusion reached by Judge Torruella in
the lead opinion: the Disclosure Act (section 307B) works a
regulatory taking of the tobacco companies' trade secrets and, in
the bargain, places an unconstitutional condition on their right to
conduct business in the Commonwealth of Massachusetts. I write
separately, however, because of my doubts about the analysis that
the lead opinion uses to reach that result.
I.
Judge Torruella and I start on common ground: both of us
acknowledge the primacy of the Supreme Court's treatment of trade
secret takings in Ruckelshaus v. Monsanto Co., 467 U.S. 986 (1984).
At that point, we part company. The lead opinion uses Monsanto
primarily as a stepping stone for applying the regulatory takings
analysis derived in Penn Central Transportation Co. v. New York
City, 438 U.S. 104, 124 (1978). With respect, I think that this
approach unnecessarily complicates the matter.
Having articulated my complete position on the relevance
of Monsanto to the resolution of this case in Philip Morris, Inc.
v. Harshbarger, 159 F.3d 670 (1st Cir. 1998) (Philip Morris II), no
useful purpose would be served by rehearsing that position here.
I do need to point out, however, that after discussing trade secret
protection in Massachusetts and concluding (persuasively, in my
view) not only that Massachusetts protects trade secrets but also
-53-
that the Disclosure Act implicates the tobacco companies' property
interests in their trade secrets, the lead opinion misses the turn
that the Monsanto Court took to shorten traditional regulatory
takings analysis in the trade secret context. The Monsanto Court
specifically found that investment-backed expectations ancillary to
safeguarded trade secrets so "overwhelm[ed]" the other customarily
considered factors as to "dispose[] of the taking question
regarding those data." 467 U.S. at 1005. The Court then
concluded, without addressing either the character of the
governmental action or its economic impact, that the government's
use or disclosure of data in which a trade secret holder had a
reasonable investment-backed expectation of continued
confidentiality constituted a taking that would offend the
Constitution absent adequate compensation. Id. at 1013-14.
In light of this express guidance, I am at a loss as to
why the lead opinion does not simply stop after concluding that
"the tobacco companies have at least some reasonable investment-
backed expectation that their trade secrets will remain secret."
Lead Op. at 47. Instead, that opinion proceeds to undertake a full
Penn Central analysis, makes a series of unnecessary sub-holdings,
and concludes (erroneously, in my view) that the tobacco companies'
reasonable investment-backed expectations, even when coupled with
the likelihood of great economic impact, "may not be sufficient to
raise this case to the level of an unconstitutional taking." Id.
-54-
Although the lead opinion then reaches the right result by finding
the character of the governmental action to be determinative, id.
at 47, I cannot reconcile this reasoning with Monsanto (which
teaches that as long as a trade secret holder has a reasonable
investment-backed expectation that its trade secrets will remain
secret, the sovereign's use or divulgement of that information
constitutes a taking for which the Constitution requires just
compensation).23
I might add that the lead opinion seems to assume that
when Penn Central applies, stare decisis does not. Id. at 20 n.5.
I disagree. In general -- the exceptions are inapposite here --
that doctrine obliges us to follow the most current Supreme Court
precedent. The lead opinion's application of Penn Central ignores
the manner in which the Monsanto Court treated those factors in a
materially indistinguishable situation. Stare decisis does not
allow such hopscotching.
23
Contrary to the lead opinion's assertion, Lead Op. at 20 n.5,
this reading of Monsanto does not call into question the
constitutionality of regulations such as 15 U.S.C. § 2613(a)(3).
According to the Monsanto formulation, an entity subject to such a
regulatory scheme would not have a reasonable investment-backed
expectation that its trade secrets would remain secret if it
submitted the information under circumstances meeting the statutory
criteria for government divulgence. Monsanto, 467 U.S. at 1006.
In such instances, the statute provides fair warning, and the trade
secret holder can assess for itself the likelihood that the
government will reveal submitted information. The tobacco
companies, however, are not subject to a scheme of this type, nor
does the Commonwealth argue that it presently publishes such
statutory or regulatory notice.
-55-
To be sure, the lead opinion purports to distinguish
Monsanto on the ground that the Disclosure Act offers no promise of
long-term confidentiality whereas FIFRA -- the federal statutory
scheme at issue in Monsanto -- contained such a guarantee. The
lead opinion then concludes that FIFRA's explicit guarantee
"established a reasonable investment-backed expectation that
Monsanto's trade secrets would remain protected." Lead Op. at 31-
32. This reads Monsanto out of context. Although the "explicit
governmental guarantee formed the basis of a reasonable investment-
backed expectation" anent "trade secrets [already] submitted under
the statutory regime in force," Monsanto, 467 U.S. at 1011, state
property law established those expectations with respect to trade
secrets generally, see id. at 1001. Thus, "to the extent that
Monsanto ha[d] an interest in its health, safety, and environmental
data cognizable as a trade-secret property right under Missouri
law, that property right [wa]s protected by the Taking Clause of
the Fifth Amendment." Id. at 1003-04 (emphasis supplied). The
promise in Monsanto was dispositive because it preserved the trade
secret status, protected under state law, of data Monsanto had
routinely submitted to the government throughout the relevant
period. See id. at 1010-11. In contrast, the tobacco companies
have not submitted their protected trade secrets to the
Commonwealth. Were they to do so without extracting a guarantee of
-56-
confidentiality,24 they would have no trade secrets (and, thus, no
takings claim).
Viewed from this perspective, it is plain that Monsanto's
trade secrets were its to lose, regardless of how the FIFRA was
written. This is why the Court found no taking with respect to the
periods during which "Monsanto [wa]s aware of the conditions under
which the data [we]re submitted," yet submitted the data anyway.
Id. at 1007. The question in Monsanto, therefore, was not simply
"whether the government could disclose trade secrets it had
previously agreed to keep secret." Lead Op. at 32-33. More aptly
phrased, the question was whether the data Monsanto turned over to
the government were, in fact, still trade secrets in which Monsanto
had a property interest protected by the Takings Clause. See
Monsanto, 467 U.S. at 1000. The Court answered this query
affirmatively with respect to the data submitted during the 1972-78
regime.25 See id. at 1013-14.
24
As a practical matter, the tobacco companies cannot extract a
promise of confidentiality from the Massachusetts legislature.
They can only challenge the constitutionality of the laws passed by
that august body.
25
Consistent with this holding, Monsanto was not entitled to
compensation for the pre-1972 period. The data revealed during
that time frame did not fit the definition of a trade secret under
state law because "the owner of the secret [did not] protect[] his
interest from disclosure to others." Monsanto, 467 U.S. at 1002.
As to the post-1978 period, the government's use of submitted data
"in a manner that was authorized by law at the time of the
submission" was not unconstitutional because it was justly
compensated; Monsanto was fully aware of the conditions attendant
to submitting the data and nonetheless did so voluntarily "in
-57-
Reading this record in light of Monsanto, I conclude,
without serious question, that the tobacco companies have a
reasonable investment-backed expectation that their trade secrets
will remain secret before submission to the Commonwealth. After
all, a secret remains a secret when not divulged, and there is no
law that forces the tobacco companies to reveal their trade secrets
to the Commonwealth if they decide to withdraw from the
Massachusetts market. In the end, the tobacco companies are left
with a Hobson's choice: either comply with the Disclosure Act and
forfeit your valuable trade secrets or withdraw from the lucrative
Massachusetts market. This constitutes an unconstitutional
condition on the tobacco companies' right to sell their products in
the Commonwealth, see Philip Morris II, 159 F.3d at 678-79, and
they challenge the Disclosure Act under that theory. The tobacco
companies apparently understand that they will no longer have a
reasonable investment-backed expectation of continued
confidentiality once they knuckle under and submit to the statutory
regime. For that reason, they seek a preliminary injunction under
the theory that enforcement of the statute will constitute a
taking.
exchange for the economic advantages of a registration." Id. at
1007. Thus, it was Monsanto's own actions, silhouetted against the
backdrop of state property law, that determined whether it
maintained a reasonable investment-backed expectation of continued
trade secret confidentiality.
-58-
It is possible, of course, that the lead opinion is
asking whether the owner of any trade secret that raises public
health and safety concerns has a reasonable investment-backed
expectation of continued secrecy in the absence of regulatory or
statutory notice. If so, the answer is "yes" -- according to no
less an authority than Monsanto. Unlike the lead opinion, Lead Op.
at 43-46, the Monsanto Court did not weigh the character of the
government action to determine if it was tailored to achieve a
laudable goal. Instead, the Court, even after acknowledging the
"mounting public concern about the safety" of the products at
issue, 467 U.S. at 991, found that government revelation of a trade
secret in which the owner had a reasonable investment-backed
expectation of continued confidentiality would be a taking (absent
just compensation), id. at 1013-14. In the last analysis,
Massachusetts is free to pursue its praiseworthy goals in any
lawful manner -- but if it chooses to enforce the Disclosure Act in
its present form, it will have to compensate the tobacco companies
for expropriating their trade secrets. See id.
II.
I have another doubt about the lead opinion's approach.
That opinion gives short shrift to the possibility that the
Disclosure Act works a per se taking. See Lead Op. at 23-26. But
per se takings analysis warrants very serious consideration in
regard to the expropriation of trade secrets.
-59-
I need not wax longiloquent here, preferring instead, in
the interest of brevity, to reiterate what I said in my dissent to
the original panel opinion (now withdrawn). See Philip Morris,
Inc. v. Reilly, Nos. 00-2425, 00-2449, slip op. at 50-56 (1st Cir.
2001) (Selya, J., dissenting), available at 2001 WL 1215365.
Simply put, I see no principled reason to refrain from extending
per se takings analysis to alleged takings of trade secrets.
Indeed, the Supreme Court hinted at this result when it observed
that the term "property" in the Takings Clause is meant in its
"more accurate sense to denote the group of rights inhering in the
citizen's relation to the physical thing" as opposed to its "vulgar
and untechnical sense of the physical thing" itself. Monsanto, 467
U.S. at 1003 (quoting United States v. Gen. Motors Corp., 323 U.S.
373, 377-78 (1945)).
The Court further elucidated the conceptual nature of
rights in physical property in Tahoe-Sierra Preservation Council,
Inc. v. Tahoe Regional Planning Agency, 122 S. Ct. 1465 (2002).
There, the Court reasoned that an "interest in real property is
defined by the metes and bounds that describe its geographic
dimensions and the term of years that describes the temporal aspect
of the owner's interest." Id. at 1484. Realistically, however,
such "property" exists principally in the minds of legal theorists;
to the archetypical landowner, such concepts are meaningless unless
and until the integrity of her rights are challenged. In my view,
-60-
this illustrates that property rights, in general, consist largely
of legal fictions, and exist only to the extent that they are
recognized and enforceable in court -- and that verity holds true
whether the subject matter they encompass is corporeal or
conceptual.
This point is further supported by comparing the
valuation of real and intellectual property. The basis of value
for both is the owner's right to exclude (relative to others'
demand for access). For example, it is obvious that, other things
being equal, ten acres of undeveloped land in rural Maine is not as
valuable as ten acres of undeveloped land in midtown Manhattan. If
the physical thing itself were the basis of value, these tracts of
equal size and topographical characteristics should be worth the
same. The value differential results from the fact that people are
willing to pay a higher price for access to Manhattan. Cf. The
Executive's Book of Quotations 168 (Oxford Univ. Press 1994)
(citing the "[l]ong-standing real estate principle" of "[l]ocation,
location, location"). So too trade secrets: if I have a secret
formula for, say, prune juice, people presumably will not be
willing to pay as high a price for the secret as they would for a
secret recipe for making Marlboro cigarettes.
In short, the value of trade secrets, like the value of
land, is inextricably tied to both the demand of others for access
and the legal enforceability of the owner's right to exclude. In
-61-
either case, if the right to exclude is diminished, the value
decreases. And in either case, if the sovereign effectively
deprives the owner of the right to exclude, the value is destroyed
-- and the Constitution requires just compensation. Limiting per
se takings analysis to cases involving real property is a crude
boundary with no compelling basis in the law. We should not be
hesitant to take the next logical step when justice demands it.26
III.
I need go no further. Even the most laconic observer of
the Supreme Court's Takings Clause jurisprudence knows that the
"question of what constitutes a 'taking' is one with which th[e]
Court has wrestled on many occasions." Monsanto, 467 U.S. at 1004.
Against that chiaroscuro backdrop, it should be no surprise if
jurists who agree on a conclusion disagree on the best route to get
there. Although our reasoning differs, I welcome Judge Torruella's
arrival at our common destination and gladly concur in the
judgment.
"Dissent follows"
26
The lead opinion reads Monsanto as confining its analysis to
regulatory takings rather than extending per se rules to trade
secrets. Lead Op. at 20-23. But actions speak louder than words.
Once the Monsanto Court found that the trade secret holder
possessed a reasonable investment-backed expectation in its trade
secrets, the Court determined that such a taking, if not justly
compensated, would be unconstitutional. Monsanto, 467 U.S. at
1013-14. This treatment mirrors a per se takings analysis.
-62-
LIPEZ, Circuit Judge (Dissenting). This case requires us
to address the difficult doctrine of regulatory takings. I agree
with much of the reasoning in Judge Torruella's opinion. However,
I believe that reasoning compels the conclusion that the Disclosure
Act is not unconstitutional on its face. Accordingly, I
respectfully dissent.
I. TAKINGS CLAUSE
The tobacco companies mount only a facial challenge to
the Disclosure Act. See Philip Morris, Inc. v. Reilly, 113 F.
Supp. 2d 129, 132 (D. Mass. 2000) [hereinafter Philip Morris III].
Thus, they must show that the "mere enactment of the [Disclosure
Act] constituted a taking." Tahoe-Sierra Pres. Council, Inc. v.
Tahoe Reg'l Planning Agency, 535 U.S. __, 122 S. Ct. 1465, 1476
(2002). The test is a stringent one, and the tobacco companies
"'face an uphill battle.'" Id. at 1477 (quoting Keystone
Bituminous Coal Assn. v. DeBenedictis, 480 U.S. 470, 495 (1987)).
"A facial challenge to a legislative Act is . . . the most
difficult challenge to mount successfully, since the challenger
must establish that no set of circumstances exists under which the
Act would be valid." Pharm. Research & Mfrs. of Am. v. Concannon,
249 F.3d 66, 77 (1st Cir. 2001) (internal quotation marks omitted);
see also Yee v. City of Escondido, 503 U.S. 519, 534 (1992)
(explaining that a facial takings challenge must show that the law
in question "does not substantially advance a legitimate state
-63-
interest no matter how it is applied" (internal quotation marks
omitted)).
The tobacco companies have not met that burden here. As
Judge Torruella's opinion indicates, the constitutionality of any
given disclosure under the Act depends on how much -- and what sort
of -- ingredient information is made public. The question of what
information will be publicized cannot be answered by reference to
the terms of the Act and its implementing regulations, which
indicate only that Massachusetts may disclose some of the
information it receives. Thus, there is nothing unconstitutional
about the Act itself. What matters is how it is applied in each
individual case.
A.
Judge Torruella reasons that publication of the tobacco
companies' "entire ingredient lists" constitutes a taking under the
ad hoc balancing test mandated by Penn Central Transportation Co.
v. City of New York, 438 U.S. 104 (1978). Although I do not
believe we need to decide that question here, I agree that
disclosure of the tobacco companies' entire ingredient lists almost
certainly would "go[] too far," Penn. Coal Co. v. Mahon, 260 U.S.
393, 415 (1922), and therefore would rise to the level of a taking.
Such a disclosure would come at an enormous cost, as it would
"completely destroy" the secrecy of the companies' brand-specific
formulas. On the other side of the equation, "it is not at all
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clear that protecting the overall integrity of the tobacco
companies' ingredient lists" -- by publicizing only certain
ingredients, for example -- would "interfere with Massachusetts'
goal of promoting public health." Accordingly, it seems reasonable
to conclude, as Judge Torruella does, that disclosure of the
tobacco companies' entire ingredient lists would constitute a
taking for which compensation is due.
Judge Torruella recognizes, however, that a more limited
disclosure likely would not suffer from the same constitutional
infirmities. Thus, he acknowledges that the tobacco companies
"comply, without complaint, with regimes which require them to make
confidential disclosures of brand-specific, ingredient information,
see Tex. Health & Safety Code Ann. §§ 161.351-55, or which require
public disclosures when specific ingredients are used, see Minn.
Stat. § 461.17." Judge Torruella observes that ingredient-specific
disclosure, such as that required under Minnesota law, not only
adequately serves the state's interest in protecting public health,
but actually does so more effectively than the across-the-board
disclosure permitted under the Disclosure Act.
Implicit in Judge Torruella's opinion, therefore, is the
view that the outcome of the Penn Central analysis depends on
whether Massachusetts publicizes the tobacco companies' entire
ingredient lists, or whether it engages in a more limited
disclosure. I agree. If Massachusetts were to disclose only
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certain harmful ingredients, the economic burden on the companies
would be significantly reduced. Although the fact that brand X
contains ingredient Y may be a secret, the tobacco companies do not
allege that the disclosure of such limited information would permit
their competitors to discover and recreate brand-specific formulas.
They reserve that charge for a disclosure of their entire
ingredient lists, organized by relative amount on a brand-by-brand
basis.
Moreover, a more limited disclosure undeniably would
serve the state's goal of protecting public health. Under current
law, the federal Department of Health and Human Services "can study
and report to Congress on the health effects of tobacco additives,
including information on specific ingredients which may pose a
health risk to consumers." However, neither the federal government
nor -- as of yet -- most states, can inform consumers about the
presence of harmful ingredients in specific brands. As Judge
Torruella recognizes, Massachusetts has a "significant" interest in
promoting the health of its citizens, and its desire to help
consumers make informed choices about tobacco products is
"laudable." If Massachusetts were to pursue those ends by
disclosing brand-specific information about certain harmful
ingredients, I believe the force of the state's interests would
outweigh the costs to the tobacco companies in the balance of
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factors. See Keystone Bituminous Coal Ass'n, 480 U.S. at 488.
Nothing in Judge Torruella's opinion suggests otherwise.
B.
Thus, under Judge Torruella's own reasoning, the
Disclosure Act will effect an unconstitutional taking only if
Massachusetts discloses the tobacco companies' entire ingredient
lists. It follows that, in order to hold that the Disclosure Act
is unconstitutional on its face, we would have to conclude that it
mandates such broad disclosure in every case, or at least a "large
fraction" of them. Planned Parenthood v. Casey, 505 U.S. 833, 895
(1992). However, the Act does not require disclosure of the entire
ingredient lists. It says only that Massachusetts "shall" make
public certain "information" contained in those lists if the State
Department of Health determines that publicizing "such information"
could reduce risks to public health. Mass. Gen. Laws ch. 94,
§ 307B (2002).
Notwithstanding the express terms of the Act, Judge
Torruella proceeds on the assumption that Massachusetts necessarily
will disclose the tobacco companies' entire ingredient lists. He
justifies that assumption by reference to the district court's
opinion, stating that "[a] prior holding, which is not currently
before us, decided that under [the Disclosure Act], Massachusetts
will publish the tobacco companies' ingredient lists." The
district court decided no such thing. To the contrary, the court
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explicitly acknowledged Massachusetts's argument that "the DPH may
determine that the public health will be served by disclosure of
only some of the ingredients on a list, not a whole list."27 Philip
Morris III, 113 F. Supp. 2d at 139 n.27. It held only that
Massachusetts was bound to disclose some of the information in the
tobacco companies' ingredient lists.
Perhaps recognizing the limited nature of the district
court's holding, Judge Torruella emphasizes that the Act "allows
for" disclosure of the full ingredient lists. But the mere
possibility of such broad disclosure is not enough to render the
Act facially invalid. See Agins v. Tiburon, 447 U.S. 255, 259-60
(1980) (rejecting, in the context of a facial challenge, the
argument that the zoning ordinance at issue could be applied to
prohibit all development, where the terms of the ordinance
27
Although the district court did not question the accuracy of
that argument, it rejected Massachusetts's claim that the
possibility of partial disclosure rendered the tobacco companies'
takings claims unripe. See Philip Morris III, 113 F. Supp. 2d at
139 n.27. I agree that those claims are ripe for review. Indeed,
the Supreme Court has explained that a facial challenge such as
this one typically is ripe "the moment the challenged regulation or
ordinance is passed." Suitum v. Tahoe Reg'l Planning Agency, 520
U.S. 725, 736 n.10 (1997). Accordingly, I agree that the tobacco
companies' facial challenge is properly before us. As I explain in
the text, however, I think that challenge fails on the merits. See
Yee, 503 U.S. at 534 (concluding that facial, but not as-applied,
takings challenge was ripe, and rejecting it on the merits); Hodel
v. Va. Surface Mining & Reclamation Ass'n, Inc., 452 U.S. 264, 295-
97 (1981) (same); Agins v. City of Tiburon, 447 U.S. 225, 260
(1980) (same); see also Kines v. Day, 754 F.2d 28, 29-31 (1st Cir.
1985) (same, with respect to facial and as-applied challenges under
the First Amendment (citing similar cases)).
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permitted appellants to construct up to five residences on their
property); see also United States v. Salerno, 481 U.S. 739, 745
(1987) ("The fact that [a legislative act] might operate
unconstitutionally under some conceivable set of circumstances is
insufficient to render it wholly invalid . . . ."). Rather, the
fact that the Disclosure Act may result in a taking in certain
circumstances -- if Massachusetts decides to publish the tobacco
companies' entire ingredient lists, for example -- means only that
the companies might well succeed in as-applied challenges to the
Act. See Tahoe-Sierra, 122 S. Ct. at 1485 ("[I]f petitioners had
challenged the application of the moratoria to their individual
parcels, instead of making a facial challenge, some of them might
have prevailed under a Penn Central analysis."); see also McGuire
v. Reilly, 260 F.3d 36, 47 (1st Cir. 1999) ("If, as the plaintiffs
predict, experience shows that clinic staffers in fact are
utilizing the exemption as a means either of proselytizing or of
engaging in preferential pro-choice advocacy, the plaintiffs remain
free to challenge the Act, as applied, in a concrete factual
setting.").
C.
Judge Torruella also suggests that the fact that
Massachusetts has the right to publish the entire ingredient lists
renders the Act facially invalid because the mere possibility of
disclosure is enough to put the companies on "constructive notice
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that if they comply with the Disclosure Act, their trade secrets
may not remain secret." Since the Act makes clear that the state
might disclose trade secret information, the argument goes, the
companies cannot submit their information to the state and then
later claim that any proposed public dissemination is
unconstitutional. On that view, if the tobacco companies choose to
run the risk of such public dissemination in order to continue
doing business in the state, they "can hardly argue that [their]
reasonable investment-backed expectations are disturbed when
[Massachusetts] acts to . . . disclose the data in a manner that
was authorized by law at the time of submission." Ruckelshaus v.
Monsanto Co., 467 U.S. 986, 1006-07 (1984).
I do not think the choice is so stark. Unlike the
regulatory scheme at issue in Monsanto, the Disclosure Act contains
mechanisms by which the tobacco companies can protect their trade
secrets from public dissemination even after submitting them to the
state. If Massachusetts proposes to publicize any or all of the
information contained in a tobacco company's annual report, the
company can stay disclosure by filing an as-applied challenge in a
court of competent jurisdiction. See Mass. Regs. Code tit. 105,
§ 660.200(G) (1999). In the alternative -- or in the event such a
challenge fails -- the company can withdraw its products from the
Massachusetts market. See id. § 660.200(F).
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Nor do I agree that future as-applied challenges
necessarily will fail because the tobacco companies' right to
protect the confidentiality of their trade secrets will dissolve
the moment they submit those secrets to the state. Under the Act
and its implementing regulations, a public disclosure is
"authorized by law," Monsanto, 467 U.S. at 1007, only if the
tobacco companies do not exercise their right to stay disclosure by
filing a timely challenge in court. See Mass. Regs. Code tit. 105,
§ 660.200(G)(2). Indeed, the regulations state explicitly that
Massachusetts "shall treat [the ingredient lists] as confidential
unless and until . . . a determination to release the information
has been made in accordance with [the Disclosure Act] . . . and no
complaint has been filed in a court of competent jurisdiction
challenging disclosure of the information on the grounds that
disclosure would make available to the public a trade secret." Id.
Thus, Massachusetts's ability to disclose the tobacco companies'
trade secrets is expressly conditioned on the companies' right to
resist any such disclosure through an as-applied challenge. It
would border on the absurd to reject such a challenge on the ground
that the tobacco companies had "implicitly consented" to the very
disclosure being resisted. Monsanto, 467 U.S. at 1021 (O'Connor,
J., concurring in part).
In sum, I disagree with Judge Torruella's conclusion that
the Disclosure Act is facially unconstitutional because it requires
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tobacco companies to submit their trade secrets to the state
without any guarantees of confidentiality. The implementing
regulations contain an unambiguous promise of confidentiality.
Therefore, the initial act of submission to the state is not enough
to destroy the value of the trade secrets. It is only when those
secrets actually are made available to the public that the tobacco
companies' property interest dissolves. That, of course, brings us
back to where we began: the relevant event for purposes of the
Takings Clause is the actual (or imminent) disclosure of the
tobacco companies' trade secrets. As I explained above -- and as
Judge Torruella appears to recognize -- the constitutionality of
any given disclosure depends on how much, and what sort of,
information Massachusetts proposes to make public. Accordingly,
the Act is not unconstitutional in every application, and the
tobacco companies' facial challenge should fail.
II. DUE PROCESS
The tobacco companies also argue that the Disclosure Act
denies them due process of law by permitting the state to destroy
the value of their trade secrets without an adequate pre-
deprivation hearing. I agree that the Disclosure Act authorizes
the state to deprive the tobacco companies of a protected property
interest in their trade secrets. However, I find no merit in the
tobacco companies' contention that the Act fails to meet the
standards of the Due Process Clause.
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As explained above, Massachusetts has enacted several
regulations that contain important procedural safeguards. Under
the regulations, Massachusetts must provide the tobacco companies
sixty days' written notice prior to publicizing any information in
the ingredient lists. Mass. Regs. Code tit. 105, § 660.200(E).
During that period, the tobacco companies may comment on
Massachusetts's decision to disseminate the information. Id. at
§ 660.200(A). Moreover, the tobacco companies may forestall any
threatened disclosure by filing a lawsuit in a court of competent
jurisdiction. Id. at § 660.200(G)(2).
Notwithstanding the unambiguous language of the
regulations, the tobacco companies complain that the Act fails to
"provide a meaningful opportunity for judicial review before
valuable trade secrets concededly worth millions of dollars are
disclosed and destroyed." In a footnote, they add that the
protections provided in § 660.200(G) -- which delays any proposed
disclosure until the completion of the sixty day notice period
and/or any timely-filed lawsuit28 -- are inadequate because "[t]he
28
The regulations state, in pertinent part:
(G) The Department shall treat information submitted
pursuant to 105 CMR 660.101 as confidential unless and
until:
...
(2) a determination to release the information is
made in accordance with 105 CMR 660.200(A) through (E),
the 60 day period referred to in 105 CMR 660.200(E) has
elapsed, and no complaint has been filed in a court of
competent jurisdiction challenging disclosure of the
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Act itself states that ingredient information 'shall be' a public
record after the statutory determinations are made, and as such its
production may be compelled by third parties regardless of the
'pull back' option." That is plainly incorrect. Although reports
submitted by the tobacco companies become public records by the
terms of the Disclosure Act, that same Act states that "before any
public disclosure," the department must undertake certain
procedures to ensure that the information being released to the
public will not violate the Takings Clause. These procedures are
described both in the statute and in the regulations enacted
pursuant to it. The department must abide by these procedures in
considering its own disclosure under the Disclosure Act or in
information on the grounds that disclosure would make
available to the public a trade secret; [or]
(3) disclosure of the information is authorized by
judicial decision and the time for appeal in a court of
competent jurisdiction has passed;
...
(H) In the event that a manufacturer files a complaint in
a court of competent jurisdiction within the 60 day
notice period specified in 105 CMR 660.200(E),
challenging a proposed disclosure of information by the
Department on the grounds that disclosure would make
available to the public a trade secret, the Department
shall not disclose any of the information in question
unless and until:
(1) the parties agree in writing to disclosure; or
(2) the court renders a decision authorizing
disclosure; and
(3) the time has passed for filing an appeal of the
decision in a court of competent jurisdiction.
Mass. Regs. Code tit. 105, § 660.200.
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responding to requests for information from third parties under the
public records law, Mass. Gen. Laws, ch. 66, § 10(b).
The tobacco companies argue that the regulatory
amendments setting forth the "pull-back" option, § 660.200(G)(2),
will not preclude a third party from compelling inspection under
the public records law because the regulations contravene the terms
of the Disclosure Act. That is not so. "An administrative agency
has jurisdiction to establish regulations that bear a rational
relation to the statutory purpose." Globe News. Co. v. Beacon Hill
Architectural Comm., 659 N.E.2d 710, 717 (Mass. 1996). Although
the Disclosure Act contemplates the possibility that information
submitted by the companies may be disclosed to the public, it also
contains provisions intended to protect the state from engaging in
unconstitutional activity. The statute requires the department to
"request the advice of the attorney general" on whether the
intended disclosure "would constitute an unconstitutional taking of
property." Mass. Gen. Laws ch. 94 § 307B. The "pull-back"
regulations provide an extra layer of protection by allowing the
tobacco companies to seek a judicial determination of the same
question before there is any disclosure. The Legislature's intent
in addressing the takings issue is apparent -- at no point should
the department engage in any action that would violate the Takings
Clause. Instead of contradicting the statute, as the companies
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argue, the regulations actually serve the unmistakable intent of
the Legislature.29
Therefore, it simply is not true that, notwithstanding
the regulations, "third parties" will be able to compel disclosure
of the tobacco companies' trade secrets under Massachusetts's
public records statute. As the Commonwealth argued in its briefs,
"the Disclosure Act actually limits the pre-existing reach of the
public records law, by providing that tobacco ingredients can be
made public only if the Act's conditions are met." Thus, the
tobacco companies will have an opportunity for "meaningful judicial
review" prior to any threatened deprivation. Their due process
challenge fails on its own terms.
For the foregoing reasons, I respectfully dissent.
29
Although the Disclosure Act explicitly states that the annual
reports submitted by the tobacco companies pursuant to the Act are
public records, the additional provisions of the Act and the
supplemental regulations barring disclosure until there is
compliance with certain procedures produces a result that is
comparable to the result contemplated by Mass. Gen. Laws ch. 4,
§ 7, cl. 26(a) of the public records law. Under that subsection,
materials or data "specifically or by necessary implication
exempted from disclosure by statute" will not be considered public
records, and therefore, are not open to inspection by the public.
See Ottaway News. Inc. v. Appeals Court, 362 N.E.2d 1189, 1193-94
(Mass. 1977) (exempting from the definition of "public records"
bank examination reports collected pursuant to a statute providing
for their confidentiality).
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