author: COFFIN, Chief Judge. LEVIN H. CAMPBELL,

text:
    In re UNION NACIONAL de TRABAJADORES et al., Petitioners.
    No. 74-1073 Original.
    United States Court of Appeals, First Circuit.
    Aug. 14, 1974.
    Levin H. Campbell, Circuit Judge, filed a dissenting opinion.

      Mark L. Amsterdam, David Scribner, New York City, Ismael Delgado Gonzalez, Emilio Soler Mari, Rio Piedras, P. R., Elizabeth M. Schneider, Nancy Stearns, New York City, and Juan Mari Bras, Rio Piedras, P. R., on petition and briefs for petitioners.
    Julio Morales-Sanchez, U. S. Atty., and Ignacio Rivera Cordero, Asst. U. S. Atty., on brief for United States.

      Marvin Roth, Deputy Asst. Gen. Counsel, Peter G. Nash, Gen. Counsel, John S. Irving, Deputy Gen. Counsel, and Gerald Brissman, Associate Gen. Counsel, on brief for National Labor Relations Board.
    Frank J. Donner, Robert Z. Lewis, James G. Mauro, Jr., Winn Newman, Washington, D. C., Ruth Weyland, Harold I. Cammer, New York City, Norman Leonard, San Francisco, Cal., John G. Ratcliff, Martha Bergmark, Elliot An-dahman, Hattiesburg, Miss., Eugene G. Eisner, I. Philip Sipser, and Stephen L. Fine, New York City, on brief for United Electrical, Radio and Machine‘Workers of America (UE) and others, Union, amici curiae.
    Lance Compa, Newtonville, Mass., Claudia Conway, Warren Leiden, Joann Margulies, Emily Novick, Ellen Schmidt, Bobby Solet, Boston National Lawyers’ Guild, George B. Washington, and Kathleen Weremuik Segal, Cambridge, Mass., on brief for the Labor Committee of the National Lawyers Guild, amici curiae.
    Before COFFIN, Chief Judge, and Mc-ENTEE and CAMPBELL, Circuit Judges.
   COFFIN, Chief Judge.

Petitioners, a union and its officers, cited for criminal contempt arising out of alleged violations of an injunction granted pending decision on an unfair labor practice charge, sought mandamus to compel the holding of the trial in Spanish and before a jury. We denied extraordinary relief as to the language issue and asked for briefs as to the jury trial issue. The petitioners, the National Labor Relations Board, the United States Attorney, and two amici have submitted briefs.

The present issue is whether this court should grant a writ of mandamus to compel the district court to grant a jury trial to the Union Nacional de Tra-bajadores and its officers (hereinafter UNT) on an alleged criminal contempt. The alleged contempt arose out of a district court order, pursuant to section 10(j) of the National Labor Relations Act (hereinafter NLRA), 29 U.S.C. § 160(j), enjoining the UNT from striking against Construcciones Werl, Inc., without complying with the notice and waiting requirements of section 8(d) of the NLRA. The order was entered on August 30, 1973, and on September 18 the NLRB and the U.S. Attorney requested the court to institute criminal contempt proceedings against UNT for violating the order. UNT moved for a jury trial and the district court denied the motion. UNT subsequently filed the instant petition for a writ of mandamus in this court.

The Supreme Court, in Will v. United States, 389 U.S. 90, 88 S.Ct. 269, 19 L.Ed.2d 305 (1967), has set restrictive general guidelines on the use of mandamus:

“The peremptory writ of mandamus has traditionally been used in the federal courts only ‘to confine an inferior court to a lawful exercise of its prescribed jurisdiction or to compel it to exercise its authority when it is its duty to do so.’ . . . While the courts have never confined themselves to an arbitrary and technical definition of ‘jurisdiction,’ it is clear that only exceptional circumstances amounting to a judicial ‘usurpation of power’ will justify the invocation of this extraordinary remedy.” 389 U.S. at 95, 88 S.Ct. at 273. (Citations omitted.)

This is in substantial agreement with the Court’s previous statements indicating that the petitioner for mandamus has “the burden of showing that its right to issuance of the writ is ‘clear and undisputable.’ ” Bankers Life & Casualty Co. v. Holland, 346 U.S. 379, 384, 74 S.Ct. 145, 149, 98 L.Ed. 106 (1953).

There seems to be some relaxation of this requirement when the petitioner seeks enforcement of a right to a jury trial. In a civil case, there is no doubt that mandamus is appropriate if a jury trial is being wrongfully denied, even, it would appear, when the decision whether such right exists is a close or complicated one. Beacon Theaters, Inc. v. Westover, 359 U.S. 500, 511, 79 S.Ct. 948, 3 L.Ed.2d 988 (1959); Dairy Queen, Inc. v. Wood, 369 U.S. 469, 82 S.Ct. 894, 8 L.Ed.2d 44 (1962); Filmon Process Corp. v. Sirica, 126 U.S.App.D.C. 395, 379 F.2d 449, 451 (1967). As the court emphasized in Will, however, in a criminal case the general policy against piecemeal appeals takes on added weight because “the defendant is entitled to a speedy resolution of the charges against him.” 389 U.S. at 96, 88 S.Ct. at 273. In this case defendants are seeking the mandamus and hence can be seen as waiving, to a limited extent, their right to a speedy trial.

We take the position that mandamus would be appropriate if a jury trial were required, and any denial of mandamus should be made only if either the case has not been adequately presented or there is no such right to a jury trial. Since the issue has been adequately raised, and fully briefed, we shall rest decision on our view of the merits.

It is clear that UNT has no constitutional right to a jury trial. The district court has stated that in any event none of the defendants in the contempt case will be sentenced to more than six months imprisonment or fined in excess of $500. This court has adopted the maximum penalty rule in the context of contempt for disobeying a labor injunction, In re Puerto Rico Newspaper Guild Local 225, 476 F.2d 856 (1st Cir. 1973). Whether, therefore, the charged contempt is a major or petty offense must be considered to be a function of what the maximum penalties may be rather than, as the National Lawyers Guild, as amicus curiae, argues, a function of the importance of the defendant’s charged behavior on some external scale of values. Offenses punishable by no more than six months imprisonment or a $500 fine may be considered petty offenses, for purposes of determining whether a constitutional right to a jury trial attaches. Frank v. United States, 395 U.S. 147, 149-150, 89 S.Ct. 1503, 23 L.Ed.2d 162 (1969); In re Puerto Rico Newspaper Guild, supra.

The central issue in this case is whether UNT is guaranteed a right to a jury trial because of 18 U.S.C. § 3692. Up to 1948 the statute requiring jury trials in labor injunction contempt cases was § 11 of the Norris-LaGuardia Act, 29 U.S.C. § 111. It was limited to contempt proceedings arising under the Norris-LaGuardia Act. Up to this time only private employers could, under the very restrictive provisions of that Act, 29 U.S.C. §§ 101-115, obtain injunctive relief against a union and its officers. Then in 1947, with the passage of the Taft-Hartley Act the National Labor Relations Board was also empowered to seek injunctive relief to stop the commission of alleged unfair labor practices pending final decision under sections 10(h) and 10(j) of NLRA. At the same time section 10(h) of NLRA, which provided that “the jurisdiction of courts sitting in equity shall not be limited by [sections 1-15 of the Norris-LaGuardia Act, 29 U.S.C. §§ 101-115].” was made applicable to the newly authorized Board-requested injunctions. In the following year, 18 U.S.C. § 3692 replaced 29 U.S.C. § 111. While part of a general recodification, section 3692 dropped the language of specific reference to Norris-LaGuardia Act contempt proceedings, and was relocated under Title 18, “Crimes and Criminal Procedure”. It reads:

“In all cases of contempt arising under the laws of the United States governing the issuance of injunctions or restraining orders in any case involving or growing out of a labor dispute, the accused shall enjoy the right to a speedy and public trial by an impartial jury of the State and district wherein the contempt shall have been committed . . . . ”

It is our task to try to interpret section 3692. In so doing we shall need to determine whether it carries a broader meaning than the old section 111, and if so, whether section 10(h) in turn narrows the impact of any such broader coverage. We are not helped to any substantial degree by legislative history or by decided cases.

Two cases are in point. In Madden v. Grain Elevator, Flour and Feed Mill Workers, ILA, Local 418, 334 F.2d 1014, 1020 (7th Cir. 1964), the court, without extensive consideration of alternatives, summarily concluded:

“Section 3692 covers matters formerly found in § 11 of the Norris-La-Guardia Act. It is inapplicable to a proceeding under the National Labor Management Relations Act [i. e., NLRA]. This inapplicability is evidenced by § 10(h) (29 U.S.C.A. § 160 (h)), of said Act which excludes such proceedings as injunction and enforcement from the limitations of the Norris-LaGuardia Act.” (Citations omitted.)

The court in Hoffman v. International Longshoremen’s & Warehousemen’s Union, Local No. 10, 492 F.2d 929 (9th Cir. 1974), spoke to the same end, stressing the difference in purposes served by the Norris-LaGuardia Act and NLRA:

“The purposes of the Norris-La-Guardia Act to limit and restrict the equitable powers of the courts to intervene in labor disputes between private employers and unions are not the same as the powers involved in the administrative scheme of the Labor Management Relations Act [NLRA] and its amendments. There is no reason to believe that Congress intended its grant of equitable powers to district courts as embodied in section 10(0 of the Act, 29 U.S.C. § 160(0, to be repealed by the recodification of section 11 of the Norris-LaGuardia Act, 29 U.S.C. § 111, into 18 U.S.C. § 3692 . . . .” (Citations omitted.) 492 F.2d at 934.

Neither case, in our opinion, revealed sufficient analysis underlying the conclusion to be preclusive or persuasive. Madden simply states a conclusion, while, as we note below, Hoffman’s fear of any limitation on the Board’s equitable powers is misplaced.

Addressing first the reach of § 3692, we find it extremely difficult to ignore the natural meaning of ordinary words. Our first inquiry is the meaning of “injunctions or restraining orders in any case involving or growing out of a labor dispute.” The instant contempt proceeding arises out of a temporary injunction issued pursuant to section 10(j) of the NLRA, 29 U.S.C. § 160(j). Section 10 (j) grants the district courts jurisdiction to issue injunctions, upon petition by the NLRB, in cases involving an alleged unfair labor practice as defined in 29 U.S.C. § 158. A facial reading of § 3692 would therefore make it apply to many contempt proceedings under section 10 (j) injunctions, since many cases involving an unfair labor practice arise out of a “labor dispute”. In the instant case, the ground on which the Board’s regional attorney sought an injunction was UNT’s failure to comply with the notice and waiting requirements of sections 8(d)(3) and (4) of NLRA prior to engaging in a strike arising from contract negotiations. This would seem to be clearly a controversy concerning representation in negotiating terms or conditions of employment. Indeed, section 8(d)(3) requires that the Federal Mediation and Conciliation Service be given notice of the existence of a “dispute.”

That the language of § 3692 would facially apply to many NLRA injunction situations, such as this one, is borne out by the source of the language itself, apparently section 1 of the Norris-La-Guardia Act, 29 U.S.C. § 101. That section applies to cases “involving or growing out of a labor dispute.” If that language did not apply to at least some NLRA situations, there would be no reason for Congress to include a provision stating that section 1 did not apply to certain parts of the NLRA. Yet of course Congress did include such a provision in section 10(h) of the NLRA, 29 U.S.C. § 160(h), which specifically exempted the jurisdiction of courts “sitting in equity” under section 10 of the NLRA, 29 U.S.C. § 160, from the limitations of Norris-LaGuardia.

Our second inquiry is directed to the words “In all cases of contempt arising under the laws of the United States”. Section 3692 is directly derived from section 11 of the Norris-LaGuardia Act, formerly 29 U.S.C. § 111 (1940 ed.). It was recodified in 1948 into 18 U.S.C. § 3692. Prior to the recodification, it applied, in terms, only to injunctions issued pursuant to the Norris-LaGuardia Act. At the time of recodification, its specific reference to Norris-LaGuardia was deleted and it was made to apply to “all cases of contempt arising under the laws of the United States governing the issuance of injunctions or restraining orders in any case involving or growing out of a labor dispute.” Aside from the change in the language itself there was no contemporaneous manifestation of congressional intent to broaden the coverage of the section. The new language, moreover, tracks almost verbatim the language of section 1 of the Norris-La-Guardia Act, 29 U.S.C. § 101, and although a specific reference to that act would have been clearer, it is obvious that the language of § 3692 was primarily intended to cover the Norris-La-Guardia Act. On the other hand, the re-codification was enacted as positive law, placed in another title, and the original section 111 of 29 U.S.C. was repealed. If this were an ordinary statute such a clear change in language from a restrictive phrasing to a broader one would negate any inference that the restrictive phrasing was still to be applied.

This is, however, not an ordinary statute, but one infused with a national policy arrived at after a painful and lengthy period of strife and debate. Absent any contemporary and significant legislative history, it seems to us entirely plausible that the Congress recognized that the conditions which led it to grant authority to the Board to petition for injunctive relief would also lead to its not infrequent use. This has, of course proven to be the ease, with Board-requested injunctions now being far more common than those requested by employers. So viewing this newly created device, the Congress might reasonably have seen fit to apply to it the same jury trial requirement as had previously attached to Norris-LaGuardia contempt proceedings. Indeed, were § 3692 to be read as identical in coverage with its predecessor section, the Congress in 1947 and 1948 would have worked the irony of creating a new and more easily obtained kind of labor injunction while, for practical purposes, confining the old jury trial protections to an obsolescing kind of injunction.

We therefore read § 3692 as carrying the plain meaning of its words and as including “all cases of contempt arising under the laws of the United States governing the issuance of injunctions ... in any case involving or growing out of a labor dispute. . . . ” (Emphasis supplied.)

This, however, does not settle the question before us. For we have to deal with section 10 of the Taft-Hartley Act as amended the year before § 3692 took its present form, by the same Congress. Section 10(h) of the NLRB, 29 U.S.C. § 160(h), unchanged in the current statute, stated that in granting or enforcing Board-requested injunctive relief in connection with alleged unfair labor practices, “the jurisdiction of courts sitting in equity shall not be limited by [the provisions of Norris-LaGuardia].” After the section was amended in 1947, this exemption provision was made to apply to the new section 10(j) under which the present injunction was issued. In the final House Conference Report No. 510, on H.R. 3020, Labor-Management Relations Act, 1947, (Taft-Hartley Act), 80th Cong., 1st Sess., the Committee described the exemption provision as follows:

“Sections 10(g), (h), and (i) of the present act, concerning the effect upon the Board’s orders of enforeement and review proceedings, making inapplicable the provisions of the Norris-LaGuardia Act in proceedings before the courts, were unchanged ff

The Board argues that section 10(h) “Thus expressly excludes judicial proceedings under the NLRA, both injunction and enforcement, from the limitations, of the Norris-LaGuardia Act”. It also claims that the entire regulatory scheme created for Board supervision of labor-management relations would be aborted if the Board had to commit “to a panel of untrained laymen, a jury, the final enforcement step of the Act.” This seems to us to overstate the problem, to ignore the policy considerations bearing on a criminal contempt proceeding and, in the light of the policy considerations, to read section 10(h) as carving out an exemption broader than its language suggests.

It is of course clear that courts must have.the power to enforce injunctive orders by civil contempt proceedings. Alleged unfair labor practices may be halted, with full recourse to coercive sanctions necessary to enforce compliance with court orders. What we are dealing with in this case is the question of punishment after the event, not a proceeding which will interrupt or delay enforcement of injuctions. This involves nothing of the kind of expertise which is supplied by the Board in determining whether or not an act constitutes an unfair labor practice. It involves only the determination whether individuals or groups did in fact disobey, with requisite knowledge and intent, a court order so as to impose criminal sanctions. The fact situations and evidence involved in such determinations are ordinary grist for the judgments of juries. Indeed, since a section 10(h) injunction may be obtained without the high threshold of a showing of harm re-quired by a Norris-LaGuardia injunction, 29 U.S.C. § 107, we fail to see why need for a jury to decide criminal contempt issues arising out of such proceedings is diminished. That the threat of criminal contempt proceedings is a real deterrent to flagrant violation is shown by the rarity of the proceedings themselves. Moreover, while jury participation seems as appropriate as ever in criminal contempt proceedings, reposing sole dispositive power in the judge seems as inappropriate as ever. The Judge, who granted the injunction at the request of the Board, would be asked to mete out punishment if he finds that his order has been deliberately flouted. Appropriateness is not enhanced by the judge predetermining, before the extent or seriousness of the disobedience can be fully known, the maximum fines or sentences to be imposed in order to decide whether a jury trial is mandated by the constitution.

Finally, it seems to us that section 10(h) cannot comfortably be read as insulating criminal contempt proceedings following the issuance of a Board-requested injunction from the requirement of a jury trial. In the first place, at least in this context, it may be doubted whether the vindication or punishment function served by criminal contempt proceedings can be said to be embraced within the section 10(h) language of “granting ... a restraining order, or enforcing, modifying, and enforcing as so modified, or setting aside ... an order”. Whether or not this is so, because of the deeply ingrained Norris-LaGuardia policy of requiring jury trials in criminal contempt cases, because of the appropriateness of jury decision in such cases, and because of the effect, marginal if any, on Board oversight of labor relations, we read narrowly the critical words “the jurisdiction of courts sitting in equity.”

We find it difficult to think of a court sitting to mete out punishment for past offenses as a court “sitting in equity”. Criminal contempt proceedings can arise from proceedings begun in either law or equity. While “contempt” generically may “sound in” equity, a criminal contempt proceeding really stems from the inherent power of a court, not merely a chancellor, to vindicate its authority. It is sui generis. United States v. Barnett, 346 F.2d 99 (5th Qir. 1965). The very fact that section 3692 is now placed under Title 18, Crimes and Criminal Procedure, adds to our conviction that proceedings thereunder cannot be equated with proceedings before a court specifically described as “sitting in equity”.

But we have more direct authority. The Supreme Court in Michaelson v. United States, 266 U.S. 42, 45 S.Ct. 18, 69 L.Ed. 162 (1924), faced the question whether the predecessor of 18 U.S.C. § 3691, providing for a jury trial in contempt proceedings, following a Clayton Act injunction, should, though in terms not limited to criminal contempts, be so interpreted. The Court stated that if the proceeding contemplated by the statute be for a criminal contempt

“• — since the proceeding for criminal contempt, unlike that for civil contempt, is between the public and the defendant, is an independent proceeding at law, and no part of the original cause, (Gompers v. Buck’s Stove & Range Co., 221 U.S. 418, 444-446, 451, 31 S.Ct. 492, 55 L.Ed. 797, 34 L.R.A. [N.S.] 874) — we are at once relieved of the doubt which might otherwise arise in respect of the authority of Congress to set aside the settled rule that a suit in equity is to be tried by the chancellor without a jury unless he choose to call one as purely advisory.”

While the Court was dealing with criminal contempts which were also, independently, criminal offenses, we think its observations support our conclusion that any exemption from a jury trial requirement in criminal contempt proceedings is not adequately accomplished by confining the exemption to courts sitting in equity.

Finally, we cannot refrain from observing that, had Congress wished to exempt NLRA completely from Norris-LaGuardia it knew how to do so. 29 U. 5. C. § 178(b), in dealing with a new power given district courts to issue injunctions in certain circumstances involving a peril to the national health or safety, states “[i]n any case, the provisions of sections 101-115 of this title [i.e., Norris-LaGuardia], shall not be applicable”. Yet it left section 10(h) referring only to the jurisdiction of a court sitting in equity when it reenacted it as part of the same statute.

Our conclusion, that § 3692 requires criminal contempt proceedings stemming from alleged violations of a NLRA injunction to be tried before a jury is, we feel, an appropriate accommodation of the polices which inform the NLRA and § 3692. It leaves to the Board full power to request temporary relief and, in the event of noncompliance, to coerce obedience through civil contempt proceedings, without delay or interposition of a jury. But it also leaves available, for the rare case when punitive measures are after the fact deemed necessary, the historic protection of a jury trial. In short, the literal interpretations we have given both section 3692 and section 10(h) result in giving some meaningful effect to both provisions. “Our duty . . . is to seek out that accommodation of the two which will give the fullest possible effect to the central purposes of both.” Sinclair Refining Co. v. Atkinson, 370 U.S. 195, 216, 82 S.Ct. 1328, 1340, 8 L.Ed.2d 440 (1962) (dissenting opinion, relied upon by the Court in Boys Markets v. Clerks Union, 398 U.S. 235, 249, 90 S.Ct. 1583, 26 L.Ed.2d 199 (1970)).

So ordered.

LEVIN H. CAMPBELL,

Circuit Judge (dissenting).

I reluctantly dissent because I am unable to accept the broad interpretation placed upon 18 U.S.C. § 3692. In the absence of contemporaneous legislative history, it seems strained to impute to legislators working on a recodification of the criminal law an intention to broaden in such a significant way the reach of section 11 of the Norris-La-Guardia Act. The recodification occurred one year after the passage of the Taft-Hartley Act in a setting foreign to substantive revision of the labor law. While the language of the recodification is somewhat more broad than formerly, most of the earlier language was tracked, and it seems most likely to me that a draftsman, perhaps unsophisticated in labor law, was merely trying to carry forward the old statute in a new setting.

In any event, for more than twenty years, the NLRB has construed the statute not to require jury trials. The Supreme Court has stated that “[w]hen faced with a problem of statutory construction, this Court shows great deference to the interpretation given the statute by the officers or agency charged with its administration.” Udall v. Tallman, 380 U.S. 1, 16, 85 S.Ct. 792, 801, 13 L.Ed.2d 616 (1965). Ten years ago a federal circuit court supported the agency’s position. Madden v. Grain Elevator, Flour and Feed Mill Workers, ILA, Local 418, 334 F.2d 1014 (7th Cir. 1964), cert. denied, 379 U.S. 967, 85 S. Ct. 661, 13 L.Ed.2d 560 (1965). If the statute had been passed recently, I might have found it easier to join the court’s position. But it is not a new section, and the agency is not advancing a novel or unreasonable construction. Any change in the interpretation of the law should, in my judgment, come only from Congress.

The fact that in 29 U.S.C. § 160(h) Congress specifically exempted the jurisdiction of courts “sitting in equity” from the limitations of the Norris-LaGuardia Act does not necessarily mean that it must have intended the NorrisLaGuardia Act to apply in some cases. Its language does not become mere surplusage unless it intended to connect the two acts in some instances; rather Congress may have been stressing their differences. Cf. United States v. Giordano, 416 U.S. 505, 94 S.Ct. 1820, 1832, 40 L.Ed.2d 341 (1974).

If a literal reading of section 3692 is adopted to justify extending coverage to the Taft-Hartley Act, further problems arise. When the plain meaning of the words are analyzed, it is logically difficult to interpret “all cases of contempt” as limited to all cases of criminal contempt. The majority reasons that when courts enforce injunctive orders by civil contempt, they are “acting in equity” and, thus, 29 U.S.C. § 160(h) precludes the application of the Norris-LaGuardia provisions. However, if section 3692 is interpreted not as a rewriting of section 11 of the Norris-LaGuardia Act but as a new expression of congressional attitude toward labor contempt proceedings, it would have to be independent of the Norris-LaGuardia Act. If it is so independent, then it is not an application of the Norris-LaGuardia Act and arguably not precluded by section 160 (h). I agree, however, with the majority that such a radical revision was certainly not intended.

To the extent that the opinion distinguishes between civil and criminal contempt on the basis of policy considerations underlying jury trials in criminal contempt proceedings, I would prefer to rest solely on the lines of distinction drawn by the Constitution. The Supreme Court’s sensitivity to the rights of alleged contemnors, cf. Codispoti v. Pennsylvania, 418 U.S. 506, 94 S.Ct. 2687, 41 L.Ed.2d 912 (1974), is sufficient protection against the agency’s undercutting fundamental policy considerations. Jury trials take more time and cost more money, and they are not ideally geared to this sort of procedure. I see no reason to add one more burden to an already overburdened system when, so far as appears, there is no need to do so.

      . The cited cases involve a constitutional jury trial right, while the instant case involves at best a statutory right to a jury trial. See infra. It would appear that the lower court would be equally unlawful, however, in denying either a constitutional or a statutory right to a jury trial, see United States v. Igoe, 331 F.2d 766 (7th Cir. 1964), cert. denied, 380 U.S. 942, 85 S.Ct. 1020, 13 L.Ed.2d 961 (1965), at least insofar as it would influence a decision to grant mandamus.

      . The Board points to Xi.Rep.No.304, 80th Cong., 1st Sess., p. A 30, where it is said that “changes in phraseology” in the new Title 18 did not affect the “meaning or substance” of the old Section 11 of the old Norris-LaGuardia. Yet this statement was part of the explanatory note regarding the recod-ification of §§ 1, 21, and 24 of the Clayton Act (old 18 U.S.C. §§ 386, 387, 389 and 390) to § 402 of Title 18, in which there were clearly no changes in substance or meaning. Xo such statement is contained in § 3692.

      . The cases cited by Madden and Hoffman merely deal with the question of the jurisdiction of the courts to issue injunctions, not the scope and applicability of § 3692. See, e. g., Building and Construction Trades Council v. Alpert, 302 F.2d 594, 598 (1st Cir. 1962).

      . Given the broad definition of “labor dispute” in both 29 U.S.C. § 113(c) (Norris-LaGuardia Act) and 29 U.S.C. § 152(9) (NLRA), both of which definitions include, inter alia, “any controversy . . . concerning the association or representation of persons in negotiating . . . terms or conditions of employment”, many controversies concerning unfair labor practices would by definition involve or grow out of labor disputes.
      We distinguish oases arising out of unfair labor practices from those arising under statutes vesting the government with authority to enforce compliance with more sharply defined federal standards which are not subject to bargaining as in Mitchell v. Barbee Lumber Co., 35 F.R.D. 544 (S.D. Miss.1964) and In re Piccinini, 35 F.R.D. 548 (W.D.Pa.1964) [Fair Labor Standards Act].

      . The issues at this contempt trial would seem to revolve about whether defendants continued to strike after the injunction, whether they failed to instruct members not to strike, whether defendants made certain public statements and threats, and took part in demonstrations.

      . See also National Labor Relations Bd. v. Hopwood Retinning Co., 104 F.2d 302, 305 (2d Cir. 1939) : “As a proceeding for civil contempt, this is therefore properly a continuance of the earlier action in this court and is a step in the enforcement of our previous judgment.” [Emphasis supplied.]


source: Caselaw Access Project

author: WINTER, Circuit Judge:

license: Public Domain

text:
    Mary Helen SEARS, Appellant, v. Robert GOTTSCHALK, Commissioner of Patents, Appellee.
    No. 73-1699.
    United States Court of Appeals, Fourth Circuit.
    Argued March 6, 1974.
    Decided Aug. 14, 1974.

      Edward S. Irons, Washington, D. C., for appellant.
    Thomas G. Wilson, Atty., U. S. Dept, of Justice (Irving Jaffe, Acting Asst. Atty. Gen., Brian P. Gettings, U. S. Atty., Leonard Schaitman and Barbara L. Herwig, Attys., U. S. Dept, of Justice, on brief), for appellees.
    Before WINTER, BUTZNER and FIELD, Circuit Judges.
   WINTER, Circuit Judge:

Suing under the Freedom of Information Act, 5 U.S.C. § 552 (FOIA), plaintiff, a patent attorney, sought to enjoin defendant from withholding “abandoned U. S. patent applications” from her and the public. The suit was instituted because plaintiff’s request to make available to her “all existing abandoned U.S. patent applications” had been denied by the defendant on the ground that the matters sought were barred from disclosure by 35 U.S.C. § 122 (1970). The disti’ict court concluded that the documents sought were exempt from compelled disclosure on the alternate grounds that they were “specifically exempted from disclosure by statute,” as provided in 5 U.S.C. § 552(b)(3), and that they contained “trade secrets and commercial or financial information obtained from a person and privileged or confidential,” as provided in 5 U.S.C. § 552(b)(4). We conclude that the district court was correct in its conclusion that abandoned patent applications are statutorily exempt from the necessity of disclosux-e under FOIA. We perceive no constitutional obstacle to this conclusion, and we do not think that a three-judge court was required in order to reach it. We affirm the order of the district court.

I.

A patent application is, of course, an application for the grant.of a patent under the provisions of 35 U.S.C. § 1 et seq. Patent applications fall into three categories: (a) those in the process of consideration by the patent office— “pending applications,” (b) those denied by the patent office as to which the applicant has not sought judicial review, and those abandoned by foi'mal relinquishment or mere default, before the patent office has taken final action —“abandoned applications,” and (c) applications which have ripened into the grant of a patent — “matured or granted applications.” Plaintiff makes no claim that “pending applications” should be available for public inspection; indeed, she readily concedes their confidentiality under 35 U.S.C. § 122. When applications mature into the grant of a patent, a copy of the specification and drawing of the patent are annexed to the patent, 35 U.S.C. § 154, and they are open to the public for inspection and copying. Thus, plaintiff’s request was to have access to and examine only those falling into the second category— “abandoned applications,” and only those are the subject of suit.

The patent office denies access to or inspection of both pending applications and abandoned applications. As to the latter, indices of abandoned applications are maintained, and the applications themselves or a microfilm thereof have been preserved. While the record does not reflect the fact with certainty, it appears that most, if not all, abandoned applications are extant, although, as might be expected, not all could be produced without some inconvenience and expense. The record indicates that some portions of abandoned applications contain trade secrets. But it is argued that the evidence on this fact was received ex fiarte and we should conclude that the Commissioner of Patents has failed to satisfy the burden of proof to enable him to claim the “trade secret” exemption to disclosure. We need not concern ourselves with this contention, however, because we do not reach the district court’s alternative holding that the trade secret exemption of FOIA is applicable.

II.

The legal dispute between the parties arises from two statutes. The first is FOIA, which requires each agency “on request for identifiable records . [to] make the records promptly available to any person.” (Emphasis added.) 5 U.S.C. § 552(a)(3). Among the exceptions to this mandate are records “specifically exempted from disclosure by statute,” § 552(b)(3). The second statute from which the dispute arises is the provision of the patent title, 35 U.S. C. § 122, which states:

Applications for patents shall be kept in confidence by the Patent Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of any Act of Congress or in such special circumstances as may be determined by the Commissioner.

On the merits of the ultimate question, plaintiff contends that the § 122 rule of confidentiality applies only to pending applications and not to abandoned applications, and therefore the § 552(b)(3) exception to the mandate of § 552(a)(3) does not apply. Preliminarily, she asserts that § 122 is not the type of statute to qualify for the § 552(b)(3) exception, because it authorizes the Commissioner to disclose matters required to be kept confidential if he determines that disclosure is justified.

Defendant argues that plaintiff’s request to inspect “all existing abandoned U.S. patent applications” is not a request for “identifiable records” within the meaning of § 552(a)(3), and plaintiff’s suit should be dismissed on that basis. On the merits, defendant contends that the rule of confidentiality embodied in § 122 applies to abandoned applications as well as pending applications, and that § 122 is a statute of the kind contemplated by § 552(b)(3), so that plaintiff’s request is defeated by § 552(b)(3).

III.

We are not persuaded by defendant’s argument that plaintiff’s request to inspect was so lacking in specificity that the records sought were not “identifiable records” within the meaning of § 552(a)(3). The purpose of the “identifiability” requirement is to generate a “reasonable description enabling the Government employee to locate the requested records.” Bristol-Myers Co. v. F. T. C., 138 U.S.App.D.C. 22, 424 F.2d 935, 938 (1970) (quoting S.Rept.No. 813, 89th Cong., 1st Sess. at 8). Although plaintiff’s request was far reaching, that purpose was met. Aside from the sheer bulk of the material to which access was sought and the accompanying expense and inconvenience of making it available for inspection, defendant makes no claim that he does not know what plaintiff wishes to see or where to locate it. The case is thus different from Irons v. Schuyler, 151 U.S. App.D.C. 23, 465 F.2d 608 (1972), where access was sought to “all unpublished manuscript decisions of the Patent Office” and where it appeared that there were more than 4,780,000 files, “any of which may contain one or more manuscript decisions.” In that case, inspection was denied, but the decision turned on the.difficulty of locating the requested records rather than the categorical nature of the request; we, therefore, do not deem it controlling here. If otherwise locatable, the rule in this circuit is that equitable considerations of the costs, in time and money, of making records available for examination do not supply an excuse for non-production. Ethyl Corp. v. Environmental Protection Agency, 478 F.2d 47 (4 Cir. 1973); Wellford v. Hardin, 315 F.Supp. 175 (D.Md.1970), aff’d 444 F.2d 21 (4 Cir. 1971). See also National Cable Television Ass’n, Inc. v. F. C. C., 156 U.S.App.D.C. 91, 479 F.2d 183 (1973); Getman v. N. L. R. B., 146 U.S.App.D.C. 209, 450 F.2d 670 (1971).

IV.

Nor do we see merit in plaintiff’s argument that, since the Commissioner may disclose patent applications “in such special circumstances as may be determined by the Commissioner,” § 122 is not the sort of statute contemplated by the (b) (3) exception to the disclosure requirement of FOIA. The question of whether a statute which confers discretion to determine whether to make records of his agency publicly available “specifically exempts from disclosure” the material over which the administrator has discretion is not without difficulty. Professor Davis resolves this question in favor of the availability of the exception. He reasons that the specific intent of Congress to maintain in secret that which the administrator determines should be so maintained should not be overridden by the more general provisions of the FOIA.

We are aware of only two cases which bear directly on this question. In Evans v. Dept, of Trans., 446 F.2d 821 (5 Cir. 1971), the Fifth Circuit, in an alternative holding said that the (b)(3) exception was available for matters which a statute authorized an administrator to withhold if he found that

disclosure of such information would adversely affect the interests of such person [he who provided the information to the administrator] and is not required in the interest of the public.

It is noteworthy that the Congress had provided some standards for the exercise of discretion in the statute under consideration in Evans.

A recent Third Circuit case, drawn to our attention by post-argument memo-randa, emphasizes the absence of statutory guidelines for the exercise of discretion in holding that 42 U.S.C. § 1306(a), which reads

No disclosure of any ... report . . . obtained at any time by the Secretary ... or employee of the Department in the course of discharging their respective duties under this chapter [the chapter on social security] shall be made except as the Secretary . may by regulations prescribe * * • 7

will not support the (b) (3) exception. Stretch v. Weinberger, 495 F.2d 639, (3 Cir., 1974). However, in Stretch, the court placed equal emphasis on the lack of specificity in the phrase “any record”— the definition of the matters to be kept confidential within the Secretary’s discretion. The court stated the rule to be that

“matters are . . . specifically exempted from disclosure by statute” only if a statute either identifies some class or category of items that Congress considers appropriate for exemption or, at least, sets out legislatively prescribed standards or guidelines that the Secretary must follow in determining what matter shall be exempted from disclosure. (Emphasis added).

From this language, we infer that the Third Circuit would be satisfied that the phrase “applications for patents” sufficiently identifies the class of items Congress deems appropriate for exemption so that the absence of guidelines in § 122 for the exercise of the Commissioner’s discretion would not be determinative.

Plaintiff, of course, argues that, where the administrator has unbridled discretion to disclose or not disclose a class of items, the (b)(3) exception should be unavailable regardless of how carefully such class is identified. But we are persuaded of the correctness of the Third Circuit view. The presence of guidelines for the exercise of discretion to withhold or disclose qualifies a statute to be the basis of a (b)(3) exception. The phrase “such special circumstances as may be determined by the Commissioner” is such a standard. It incorporates the then existing administrative standards for disclosure of patent applications embodied in Rule 14(a) and (b). In turn, the standards found in Rule 14 are sufficiently specific that they meet the “specifically exempting” requirement of the (b) (3) exception. Since the legislative history is clear that § 122 was intended to codify the Patent Office rule of secrecy, whatever it may have been, we see no insuperable barrier to reading the guidelines for the exercise of the Commissioner’s discretion to disclose back into the statute. We therefore hold that § 122 “specifically exempts” applications for patents from disclosure within the meaning of § 552(b)(3).

V.

Thus, we are brought to the ultimate question of how, in this case, to apply 5 U.S.C. § 552(a)(3) in the light of 5 U. S.C. § 552(b)(3) and 35 U.S.C. § 122. We begin by recognizing that in Kewa-nee Oil Company v. Bicron Corporation, 416 U.S. 470, 485, 94 S.Ct. 1879, 1888, 40 L.Ed.2d 315 (1974), the Supreme Court has recently stated:

The mere filing of applications doomed to be turned down by the Patent Office will bring forth no new public knowledge or enlightenment, since under federal suavute and regulation patent applications and abandoned patent applications are held by the Patent Office in confidence and are not open to public inspection. 35 U.S.C. § 122; 37 C.F.R. § 1.14(b).

While at first blush this sentence may seem to decide the instant case, we are persuaded that it has not, and that the issue is before us for initial adjudication.

Kewanee was a diversity action in which a manufacturer of synthetic crystals sought injunctive relief and damages under Ohio law against certain former employees and the corporation that they caused to be organized on the ground that defendants had misappropriated plaintiff’s trade secrets. The district court, applying Ohio law, granted relief, but the Court of Appeals reversed on the ground that Ohio’s trade secret law conflicted with, and hence was preempted by, the federal patent laws. The Supreme Court reversed the judgment of the Court of Appeals and reinstated that of the district court. The principal discussion in its-.opinion was about whether there was a conflict between the provisions and purposes of the federal patent laws and the Ohio law of trade secrets. It was with regard to a trade secret known not to be patentable that the Supreme Court made the statement quoted to demonstrate that the Ohio law which protected such a trade secret did not conflict with federal patent law.

There is nothing in the opinion in Ke-wanee to indicate that the legality of suppressing all information contained in abandoned applications was either litigated or decided. The quoted statement appears to be nothing more than a factual recitation of the surface provisions of the existing statute and regulation. Indeed, the statement is not neeessárily even one that § 122 prescribes a rule of confidence for abandoned patents. This is so because the statement speaks of both “patent applications” and “abandoned patent applications,” citing § 122 and 37 C.F.R. § 1.14(b) — which relates only to abandoned patent applications— but not 37 C.F.R. § 1.14(a) — which relates to pending patent applications. It follows that the statement may be read to invoke only § 1.14(b) of the regulations, and not § 122 of the statute, as support for its comment about the confidentiality of abandoned patent applications. Hence, we feel free to deal with the case on the merits as presenting a question of first impression; and, as we will show, we conclude that the statement in Kewanee is indeed the law with respect to abandoned applications.

VI.

In Ethyl Corp. v. Environmental Protection Agency, 478 F.2d 47, 48-49 (4 Cir. 1973), affirming our prior decision in Wellford v. Hardin, 444 F.2d 21, 25 (4 Cir. 1971), we said:

The Freedom of Information Act was intended to express in statutory form the firm obligation of governmental agencies to make disclosure to “any person” of identifiable information and facts in their possession, limited only by certain specific exemptions. Specifically, it denied the federal agency any right to “refuse disclosure of materials covered by the Act for any reason other than one contained in the exclusionary section of the legislation. The legislative history of the Act makes it clear that the obligation to produce thereby mandated is to be construed broadly and the exemptions from such obligation narrowly. In short, the Act makes disclosure the rule and secrecy the exception. (Emphasis in original.)

This is the spirit in which we approach the main question and this is why, in order for a failure to disclose to be sustained under § 552(b)(3), there must be strict compliance with its requirement that a matter be “specifically exempted” from disclosure by statute.

The language in § 122 creating confidentiality speaks of “Applications for patents.” The language is broad enough to include all categories of applications —pending, abandoned and granted — and that would appear to be the legislative intent of Congress. Especially is this so when the adjective of qualification — “pending”—could so easily have been employed had Congress intended the operative effect of § 122 to be limited to pending applications for patents as plaintiff contends. Moreover, the concept of an abandoned application for a patent is a flexible one. Both 35 U.S.C. § 133 and 37 C.F.R. § 1.137 permit the revival of an abandoned application under certain circumstances. Thus, what may be an abandoned application, which plaintiff claims the right to inspect, may subsequently resume being a pending application, which plaintiff concedes is immune to inspection. When an “abandoned” application does not necessarily remain abandoned, it is difficult to give the language of § 122 the discriminating effect urged by plaintiff.

Lest the language of § 122 be not itself sufficient “specifically” to clothe abandoned patent applications with confidentiality, we turn to its legislative history. The enactment of § 122 was part of the overall revision and reenactment of the patent laws in 1952. Both the House and Senate reports state that “[sjeetion 122 incorporates into the title the rule of secrecy of patent applications which has existed in the Patent Office for generations.” (Emphasis added.) H. Report No. 1923, 82d Cong., 2d Sess. at 7 (1952); S. Report No. 1979, 82d Cong. 2d Sess. at 6 (1952), U.S.Code Cong. & Admin.News, p. 2400. The fact is that, while the regulations of the Patent Office have spoken of pending and abandoned applications on a parity as to secrecy only since 1952, for ninety years prior thereto, and hence for the “generations” referred to in the legislative history of § 122, the practice of the Patent Office has been to treat them alike.

The text of the Patent Office rule in effect in 1952 (and also in effect at the present) is set forth in the margin. It will be noted that subsection (a), with an exception not pertinent, states that “pending patent applications are preserved in secrecy,” and subsection (b) states that “abandoned patent applications are likewise not open to public inspection” (emphasis added) except those referred to in a patent. The rule was promulgated December 31, 1948, to become effective March 1,1949. Prior to 1949, pending and abandoned applications were usually the subjects of separate rules but they were, for practical purposes, treated alike. Pending applications have always been afforded secrecy; abandoned applications were not given formal secrecy until 1949, although access to them was restricted after 1879, when the Patent Office

abandoned the practice of citing abandoned applications as references in the examination of pending applications. The degree of restriction is highly significant. An examination of the opinions of the Supreme Court of the District of Columbia and the opinions of the Commissioner of Patents fairly demonstrate that, aside from an interference proceeding in the patent office, only a defendant in an infringement suit could obtain inspection of one or more specific abandoned applications, but then only if they were applications of the plaintiff who sued him for infringement and the defendant could allege that they contained material relevant to his defense. See U. S. ex rel. Pollok v. Hall, 48 O.G. 1263 (Sup.Ct.D.C. 1888); Ex parte Fowler and Fowler, 49 O.G. 562 (1889) aff’d sub nom., U. S. ex rel. Fowler v. Commissioner, 62 O.G. 1968 (Sup.Ct.D. C. 1890); U. S. ex rel. Bulkley v. Butter-worth, 81 O.G. 505 (Sup.Ct.D.C. 1897); Ex parte Warner, 96 O.G. 1238 (1901); In re Dyer, 106 O.G. 1508 (1903); In re Ashtabula Telephone Company, 110 O.G. 860 (1904); In re Buck, 113 O.G. 1418 (1904); In re Taupenot, 113 O.G. 1418 (1904).

Thus, it appears that while the Patent Office had, for generations, maintained separate rules limiting public access to pending and abandoned applications respectively, the practical effect of the two rules was identical. Since we look to substance rather than form, we think the difference in nomenclature preserved by the Patent Office for many years is of little significance and thus we conclude that the legislative history of § 122 only reenforces the facial breadth of the legislative command that abandoned as well as pending patent applications are protected from general public disclosure. Notwithstanding FOIA’s strong policy of disclosure, we hold that mandatory disclosure of abandoned patent applications is foreclosed by § 122.

VII.

As a constitutional barrier to the conclusion we reach, plaintiff argues that § 122 and 37 C.F.R. §§ 1.14(b) and 1.108 are unconstitutional. The claim that 37 C.F.R. §§ 1.14(b) and 1.108 are invalid is derivative of the claim that § 122 is invalid insofar as it exempts abandoned applications from public disclosure, and plaintiff advances three distinct theories to arrive at that conclusion. A related argument is that the district judge should have convened a three-judge court to pass upon plaintiff’s constitutional contentions rather than to have decided them himself. We agree with the district court that plaintiff’s constitutional contentions are lacking in merit, and indeed are so insubstantial that it was unnecessary to convene a three-judge court pursuant to 28 U.S.C. § 2282 to reject them. We turn to plaintiff’s several arguments.

First, plaintiff relies upon Supreme Court decisions which say that the Patent Clause of Art. I is at once a conferral of power and a limitation upon the power conferred. Plaintiff contends that abandoned patent applications are evidence of the nature and scope of prior art and the level of ordinary skill therein, particularly when the Patent Office has rejected an application as not representing a significant advance over the prior state of the art at the time of the invention; and therefore a rule denying public access to abandoned patent applications prevents the efficient use of evidence material to the resolution of questions of patentability in the constitutional sense. It is argued that since the rule of secrecy is likely to lead to unconstitutional adjudications that extend patent protection to inventions that are not patentable constitutionally, the secrecy rule is itself unconstitutional.

We do not agree. If Congress, in purported exercise of the Patent Power, attempts to extend patent protection to an item that is not a “discovery” within the meaning of the Patent Clause, such exercise of power would probably be unconstitutional. Although the Supreme Court does not appear to have invalidated any patent legislation on this theory, it seems clear that the Court believes that patentability standards such as nonobviousness — the requirement that the invention be “unobvious to one of ordinary skill in the art at the time it was made” — have a constitutional dimension. But there are several answers to the contention. In the first place, 35 U.S.C. § 102 which specifies the type of prior art which will prevent issuance of a patent, or render an issued patent invalid, does not specify abandoned applications as “prior art.” Brown v. Guild (the Corn Planter Patent), 23 Wall. 181, 210, 211, 90 U.S. 181, 210, 211, 23 L.Ed. 161 (1874), holds that an abandoned application, per se cannot be the basis for holding a patent invalid because the application represents nothing more than an abandoned experiment. See also 1 Deller’s Walker on Patents, 309 (1964). The rule has been criticized but not modified. Milburn Co. v. Davis Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651 (1926). But, where the concept of an abandoned application has been published or practiced so as to become “prior art,” § 122 would not prevent a litigant in a suit over the validity of a patent from discovering any relevant and material abandoned patent applications. The exception in § 122 seems to be designed to meet this purpose. At best, full disclosure of abandoned patent applications would only facilitate the marshalling of evidence relevant to patentability that may be found in abandoned patent applications. Public disclosure of abandoned applications would probably permit the patent bar to develop expertise concerning what is contained in the mass of abandoned patents; patent attorneys might more readily be able to develop knowledge of what to look for and where to look for it under a system of public disclosure, in contrast to the present secrecy system where they must, indeed, start from scratch in their discovery in each case. But we doubt that the increased likelihood of correctness in adjudications about the validity of patents would be substantial. Furthermore, we do not think that a statute can be unconstitutional for no other reason than that it has some tendency to hamper the correct resolution of constitutional issues before the courts for adjudication.

Plaintiff’s second constitutional theory relies upon the substantive due process clause of the fifth amendment. It is conceded that one of the purposes of the secrecy rule is to obviate the risk that, through publication, an applicant for a patent may lose rights arising under state trade secret law. Plaintiff says it is likely that many of the trade secrets embodied in abandoned patent applications are constitutionally unpatentable; and, if that be so, for the state to extend monopoly protection under its trade secret law to such inventions violates substantive due process.

The short answer to this argument is the recent decision in Kewanee Oil Co. v. Bicron Corp., supra. That case extended the holding in Goldstein v. California, 412 U.S. 546, 93 S.Ct. 2303, 37 L.Ed.2d 163 (1973), that the power of Congress to protect writings by granting copyrights was not exclusive and that the states were not forbidden to encourage and protect the writings of those within their borders, to intellectual property in inventions, i. e., trade secrets. Kewanee held that “[sjtates may hold diverse viewpoints in protecting intellectual property relating to invention as they do in protecting the intellectual property relating to the subject matter of copyright. The only limitation on the States is that in regulating the area of patents and copyrights they do not conflict with the operation of the laws in this area passed by Congress • • • 416 U.S. at 479, 94 S.Ct. at 1885. Thus, the states may protect trade secrets, and we perceive no violation of the fifth amendment in federal forebearance to permit that power to be exercised.

Finally, plaintiff argues that neither Congress nor the Commissioner may validly assist patent applicants to preserve their state created trade secret rights in unpatentable ideas because of the Patent Clause of the Constitution. Again, the argument is that the states may not create trade secret rights in unpatentable ideas and that therefore Congress and the Commissioner may not assist private persons to maintain any such rights. Again the answer is Kewanee. The only possible constitutional bar to such state action stems, not from the Patent Clause, but from the Supremacy Clause. Any preemption of state authority is to be looked for, not in the constitutional grant of the Patent Power to Congress, but in the exercise of that power ; and Kewanee holds that Title 35 does not of itself preempt state regulation and protection.

Since plaintiff’s constitutional arguments are so insubstantial, we are satisfied that the district court had power, as a single judge, to decide her constitutional claims.

Affirmed.

      . The right to judicial review of the denial of a patent is found in 35 U.S.C. §§ 141 and 145.

      . 37 C.F.R. §§ 1.138, 1.139.

      . 35 U.S.C. § 133; 37 C.F.R. § 1.135. Patent applications abandoned by default may be revived, however, by a verified statement satisfying the Commissioner of Patents that “the delay was unavoidable.” 37 C.F.R. § 1.137.

      . By 35 U.S.C. § 112, the “specification” of a patent application is “a written description of the invention, and of the manner and process of making and using it . . . and [it] shall set forth the best mode contemplated by the inventor of carrying out his invention.” The completeness of the disclosure is thus manifest.

      . 5 U.S.C. § 552(a) (3) permits an agency to exact “fees to the extent authorized by statute” as a condition precedent to making records promptly available to any person. In the instant case, it has been stipulated that plaintiff’s request for inspection was “made in accordance with published rules stating the time, place, fees to the extent authorized by statute, and procedure to be followed” in compliance with § 552(a)(3).

      . Plaintiff makes other contentions which we need not describe, discuss or decide in the view that we take of a proper disposition of the case.

      . See the factual statements in Irons v. Schuyler, 151 U.S.App.D.C. 23, 465 F.2d 608, 611 (1972), cert. den., 409 U.S. 1076, 93 S.Ct. 682, 34 L.Ed.2d 664 (1972).

      . If tliis argument prevails, FOIA plaintiffs will be able to compel public disclosure of all applications both pending and abandoned, notwithstanding plaintiff’s concession that pending applications are protected from disclosure.

      . Davis, Administrative Law, § 3A.18 (1970 Supp.).

      . 49 U.S.C. § 1504 (1970).

      . At 640.

      . 37 C.F.R. § 114(a), (b).

      . Ethyl Corp. was decided after Environmental Protection Agency v. Mink, 410 U.S. 73, 93 S.Ct. 827, 35 L.Ed.2d 119 (1973). That it is in accord with controlling precedents is demonstrated by the characterization in the later decision of Renegotiation Board v. Bannercraft Clothing Co., Inc., 415 U.S. 1, 19, 94 S.Ct. 1028, 1038, 39 L.Ed. 2d 123 (February 19, 1974) — “The broad language of the FOIA, with its obvious emphasis on disclosure and with its exemptions carefully delineated as exceptions . . . ”— in reaching the holding that FOIA does not limit the inherent powers of an equity court to grant relief.

      . The disclosure of the essential portions of the applications for a patent when the patent is granted results from the provisions of 35 U.S.C. §§ 112 and 154 and not from the provisions of § 122.

      . 37 C.F.R. § 1.14. Patent applications preserved in secrecy

      (a) Except as provided in § 1.11(b) pending patent applications are preserved in secrecy. No information will be given by the Office respecting the filing by any particular person of an application for a patent, the pendency of any particular case before it, or the subject matter of any particular application, nor will access be given to or copies furnished of any pending application or papers relating thereto, without written authority in that particular application from the applicant or his assignee or attorney or agent of record, unless it shall be necessary to the proper conduct of business before the office or as provided by this part.
      (b) Except as provided in § 1.11(b) abandoned patent applications are likewise not open to public inspection, except that if an application referred to in a U. S. patent is abandoned and is available, it may be inspected or copies obtained by any person on written request without notice to the applicant. Abandoned applications may be destroyed after 20 years from their filing date, except those to which particular attention has been called and which have been marked for preservation. Abandoned applications will not be returned.

      . Until 1879, the Patent Office, in the examination of pending applications, cited abandoned applications as references. This practice was discontinued in 1879. The current practice of not citing abandoned applications as references is set forth in 37 C.F. E. § 1.108.

      . 13 Fed.Reg. 9577 (1948).

      . A brief history of the rules granting secrecy to pending applications follows :
      The first rule appeared in 1854, and it provided:
      Aside from the caveats, which are required by law to be kept secret, all pending applications are, as far as practicable, preserved in like secrecy. No information will therefore be given to those inquiring whether any particular patent is before the office, or whether any particular person has applied for a patent.
      With renumbering and inconsequential editorial change, the 1854 rule continued until 1879. In that year, the rule was revised twice, the latter version being :
      Caveats and pending applications are preserved in secrecy. No information will be given without authority . . . unless it shall be necessary to the proper conduct of the business before the office, as provided by Rules . .
      In 1897, the rule was revised in a manner creating an apparent dichotomy of treatment of pending and abandoned applications. The 1897 rule read:
      Ajiplications will be preserved in secrecy, except as provided in the interference rules; but copies of abandoned applications, upon petition therefor, for sufficient cause . . . will be furnished by the Commissioner.

        The next revision occurred in 1916 and, except for a right of inspection of pending applications by the military for inventions having value in the prosecution of World War I, it continued unchanged until the present rule became effective in 1949. The essence of the 1916 rule read :
      Pending applications are preserved in secrecy. No information will be given without authority . . . unless it shall be necessary to the proper conduct of business before the office, as provided by Rules

      . Prior to 1879, the rules of the Patent Office made abandoned patent applications freely available to the public. The first rule relating to inspection of abandoned applications was adopted in 1879, and it provided:
      Certified copies of the files in cases of rejected or abandoned applications may be furnished to applicants or to other persons when specifically ordered, but no inspection of such files, except by the applicants or their duly authorized attorneys, will be permitted.
      This rule continued until 1946, when it was revised into the following form:
      Copies of the files of forfeited and abandoned applications may be furnished when ordered by the Commissioner. The requests for such copies must be presented in the form of a petition properly verified as to all matters not appearing of record in the Patent Office. (See Form -).
      The 1946 revision continued until it was supplanted by 37 C.F.R. § 1.14(b).

      . Our conclusion is in accord with the views of an authoritative commentator on the meaning and effect of § 122. The statement in the House and Senate Reports on H.R. 7794 that § 122 would codify “the rule of secrecy of patent applications which has existed in the Patent Office for generations” was undoubtedly derived from the testimony of Mr. Federico in the hearings on H.R. 3760, a prior version of H.R. 7794. Section 122 of H.R. 3760 is identical to § 122 of H.R. 7794, which was enacted as the present patent title. Mr. Federico had long been an examiner in the Patent Office and had assisted the committee staff in drafting H.R. 3760. Thus, it is significant that after the enactment of present § 122, Mr. Federico wrote that § 122 “makes no distinction between pending applications and abandoned applications . . .” Federico, Commentary on the New Patent Act, 35 U. S.O.A. § 1, pp. 1, 36.
      Although entitled to less weight, we note also the pendency in Congress of proposals to abolish the secrecy rule as to both pending and abandoned patent applications. Proposed legislative abolition of the rule may well stem from the legislative understanding that the rule exists. See H.R. 7111, § 122, 92d Cong., 1st Sess., 119 Cong.Rec.No.61 at H2877 (April 17, 1973); S. 1321, § 122, 93d Cong., 1st Sess., 119 Cong.Rec.No.45 at S. 5373 (March 22, 1973).

      . Ex parte Poresky, 290 U.S. 30, 54 S.Ct. 3, 78 L.Ed. 152 (1930); Bailey v. Patterson, 369 U.S. 31, 82 S.Ct. 549, 7 L.Ed.2d 512 (1962); Rosado v. Wyman, 397 U.S. 397, 90 S.Ct. 1207, 25 L.Ed.2d 442 (1970); Maryland Citizens for A Rep. Gen. A. v. Governor of Md., 429 F.2d 606 (4 Cir. 1970).

      . Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Anderson’s Black Rock v. Pavement Salvage Co., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969).


author: ROSENN, Circuit Judge.

text:
    WINE HOBBY USA, INC. v. UNITED STATES INTERNAL REVENUE SERVICE. Appeal of UNITED STATES BUREAU OF ALCOHOL, TOBACCO AND FIREARMS.
    No. 73-2072.
    United States Court of Appeals, Third Circuit.
    Submitted May 30, 1974.
    Decided Aug. 19, 1974.

      Irving Jaffe, Acting Asst. Atty. Gen., Robert E. J. Curran, U. S. Atty., David M. Cohen, Meyer Rothwacks, Scott P. Crampton, Appellate Section, Tax Div., U. S. Dept, of Justice, Washington, D. C., for appellant.
    James G. Watt, Butz, Hudders & Tail-man, Allentown, Pa., for appellee.
    Before KALODNER, ROSENN and HUNTER, Circuit Judges.
   OPINION OF THE COURT

ROSENN, Circuit Judge.

This appeal requires us to consider the “invasion of privacy” exemption to the Freedom of Information Act, 5 U.S. C. § 552. Plaintiff, Wine Hobby USA, Inc. (Wine Hobby), a Pennsylvania corporation, brought suit to obtain the names and addresses of all persons who have registered with the United States Bureau of Alcohol, Tobacco and Firearms to produce wine for family use in the Mid-Atlantic region. The district court ordered that the names and addresses be disclosed. The Government appeals, contending

(1) that the material sought is exempt from compulsory disclosure under Exemption (6) to the Act, § 552(b) (6), which excludes from the Act’s coverage “personnel and medical files and similar files the disclosure of which would constitute a clearly unwarranted invasion of personal privacy,” and

(2) alternatively, that the district court possesses equitable jurisdiction to decline to order disclosure in the circumstances of this case.

Under the Internal Revenue Code and the Federal Alcohol Administration Act, persons who produce wine are subject to certain permit, bonding, and tax requirements. Criminal penalties are provided for noncompliance. An exception to these requirements is provided by statute in the case of a “duly registered head of any family” who produces “for family use and not for sale an amount of wine not exceeding 200 gallons per annum.”

Pursuant to regulations, registration under the statutory exception is effected by filing Form 1541 with the Bureau of Alcohol, Tobacco and Firearms. Upon determination that the person is qualified, Form 1541 is stamped, one copy is returned to the registrant and the remaining copy is placed in the Bureau’s files. Records of the Bureau indicate that in fiscal year 1973, 64,756 Forms 1541 were filed, including 2,846 in the Mid-Atlantic region. In fiscal year 1974, as of February 1974, 41,585 Forms 1541 were on file, including 4,000 in the Mid-Atlantic region.

Wine Hobby is engaged in the business. of selling and distributing amateur winemaking equipment and supplies to amateur winemakers through franchises, wholly owned retail stores, and by mail order. Wine Hobby has stipulated in the district court that its purpose in obtaining the names and addresses of the Form 1541 registrants is “to enable plaintiff to forward catalogues and other announcements to these persons regarding equipment and supplies that the plaintiff offers for sale.”

We begin with the recognition that the Freedom of Information Act, enacted to remedy the inadequacies of its predecessor, section 3 of the Administrative Procedure Act, 5 U.S.C. § 1002 (1964):

is broadly conceived. It seeks to permit access to official information long shielded unnecessarily from public view and attempts to create a judicially enforceable public right to secure such information from possibly unwilling official hands.

Environmental Protection Agency v. Mink, 410 U.S. 73, 80, 93 S.Ct. 827, 35 L.Ed.2d 119 (1973). The Act was intended to provide “the necessary machinery to assure the availability of Government information necessary to an informed electorate.” An integral part of the Act, however, is the nine enumerated exceptions. As the Senate Committee pointed out in its report:

At the same time that a broad philosophy of “freedom of information” is enacted into law, it is necessary to protect certain equally important rights of privacy with respect to certain information in Government files, such as medical and personnel records. It is also necessary for the very operation of our Government to allow it to keep confidential certain material, such as the investigatory files of the Federal Bureau of Investigation.

Senate Report No. 813, 89th Cong., 1st Sess. 3 (1965) (hereinafter "S.Rep.”).

The Government relies on Exemption (6) as the basis for refusing to supply the information requested by Wine Hobby. The district court reluctantly concluded that despite the potential for abuse, the names and addresses sought here were not subject to this exemption as an invasion of privacy. The court also held that it had no power to exercise its equitable discretion to withhold and no alternative but to grant the request. We hold that the names and addresses sought are within the exemption and we therefore reverse.

To qualify under Exemption (6), the requested information must consist of “personnel, medical or similar files,” and the disclosure of the material must constitute a “clearly unwarranted invasion of personal privacy.”

We believe that the list of names and addresses is a “file” within the meaning of Exemption (6). A broad interpretation of the statutory term to include names and addresses is necessary to avoid a denial of statutory protection in a case where release of requested materials would result in a clearly unwarranted invasion of personal privacy. Since the thrust of the exemption is to avoid unwarranted invasions of privacy, the term “files” should not be given an interpretation that would often preclude inquiry into this more crucial question.

Furthermore, we believe the list of names and addresses is a file “similar” to the personnel and medical files specifically referred to in the exemption. The common denominator in “personnel and medical and similar files” is the personal quality of information in the file, the disclosure of which may constitute a clearly unwarranted invasion of personal privacy. We do not believe that the use of the term “similar” was intended to narrow the exemption from disclosure and permit the release of files which would otherwise be exempt because of the resultant invasion of privacy.

We now turn to the Government’s contention that disclosure of the names and addresses to Wine Hobby would result in a “clearly unwarranted invasion of personal privacy.” Because of an apparent conflict in the circuits, we must first consider whether the statutory language, which clearly demands an examination of the invasion of privacy, also requires inquiry into the interest in disclosure.

Our examination of the statute and its legislative history leads us .to conclude, in the language of the District of Columbia Circuit, that “Exemption (6) necessarily requires the court to balance a public interest purpose for disclosure of personal information against the potential invasion of individual privacy.” Getman v. N.L.R.B., 450 F.2d at 677 n. 24 (1971). On its face, the statute, by the use of term “unwarranted,” compels a balancing of interests. The interpretation, moreover, is supported by the legislative history.

We disagree with the view of the Fourth Circuit that the language of § 552(a)(3) precludes a balancing of interests to determine the application of Exemption (6). That paragraph which amended a provision of section 3 of the Administrative Procedure Act which required that the plaintiff be “properly and directly concerned,” authorizes release of information to “any person.” The Fourth Circuit apparently construed the amendment to prevent an inquiry into the purpose asserted by an individual plaintiff. Significantly, however, the paragraph applies only to matters not within any of the exemptions enumerated in § 552(b). Thus it is only non-exempt material that must be made available to “any person.” We see nothing in § 552(a)(3) therefore that precludes balancing to determine whether particular information is within a statutory exemption.

To apply the balancing test to the facts of this case we must determine whether release of the names and addresses would constitute an invasion of personal privacy and, if so, balance the seriousness of that invasion with the purpose asserted for release. Getman v. N.L.R.B., supra. Turning to the first consideration, we conclude that disclosure would involve an invasion of privacy. As the Government points out in its brief, there are few things which pertain to an individual in which his privacy has traditionally been more respected than his own home. Mr. Chief Justice Burger recently stated:

The ancient concept that “a man’s home is his castle” into which “not even the king may enter” has lost none of its vitality. .

Rowan v. United States Post Office Dept., 397 U.S. 728, 737, 90 S.Ct. 1484, 1491, 25 L.Ed.2d 736 (1970). Disclosure of the requested lists would involve a release of each registrant’s home address, information that the individual may fervently wish to remain confidential or only selectively released. One consequence of this disclosure is that a registrant will be subjected to unsolicited and possibly unwanted mail from Wine Hobby and perhaps offensive mail from others. Moreover, information concerning personal activities within the home, namely wine-making, is revealed by disclosure. Similarly, disclosure reveals information concerning the family status of the registrant, including the fact that he is not living alone and that he exercises family control or responsibility in the household. Disclosure of these facts concerning the home and private activities within it constitutes an “invasion of personal privacy.”

We must now balance the seriousness of this invasion of privacy against the

public interest purpose asserted by the plaintiff. As noted, the sole purpose for which Wine Hobby has stipulated that it seeks the information is for private commercial exploitation. Wine Hobby advanced no direct or indirect public interest purpose in disclosure of these lists and indeed, we can conceive of none. The disclosure of names of potential customers for commercial business is wholly unrelated to the purposes behind the Freedom of Information Act and was never contemplated by Congress in enacting the Act. In light of this failure by Wine Hobby to assert a public interest purpose for disclosure, we conclude that the invasion of privacy caused by disclosure would be “clearly unwarranted,” even though the invasion of privacy in this case is not as serious as that considered by the court in other cases, see, e. g., Rose v. Dept. of the Air Force, 495 F.2d 261 (2d Cir. 1974). On balance, therefore, we believe that the list of names and addresses of the Form 1541 registrants is exempted from disclosure under § 552(b)(6) in the circumstances of this case.

Because we believe that the information requested by Wine Hobby is exempted from disclosure under a specific statutory exemption, we need not reach the question of whether, were the material not specifically exempted, the district court possesses equitable jurisdiction to decline to order disclosure.

The judgment of the district court will be reversed.

      . The parties have stipulated in the district court that Wine Hobby lias exhausted its administrative remedies.

      . The district court’s opinion is reported at 363 F.Supp. 231 (E.D.Pa.1973). The court stayed its disclosure order pending this appeal.

      . 26 U.S.C. §§ 5041(a), (d) ; 5043(a), (b) ; 27 U.S.C. § 203(b) (1).

      . 26 U.S.C. §§ 5661(a), 5687 ; 27 U.S.C. § 207.

      . 26 U.S.C. § 5042(a)(2).

      . 26 C.F.R. §§ 240.540-543. The regulation provide that an individual is deemed to be the head of a family “only if he exercises family control or responsibility over one or more individuals closely connected with him by blood relationship, relationship by marriage, or by adoption, and who are living with him in one household.” The exemption does not apply to, inter alia, “wine produced by a single person unless he is the head of a family” or “wine produced by a married man living apart from his family.”

      . Wine Hobby has declined to participate in this appeal, either in filing briefs or participating in oral argument.

      . H.Rep.No.1497, 89th Cong. 2d Sess. (1966), reproduced, 1966 U.S.Code, Cong. & Admin. News, pp. 2418, 2429 (Hereinafter “H.Rep.”).

      . For example, were purchasers of contraceptives required to register with the Government, and were a plaintiff to request disclosure of the names and addresses of such registrants, a narrow construction of “files” would require disclosure by preventing inquiry into the invasion of privacy which would result from disclosure.

      . Compare Getman v. N.L.R.B., 146 U.S. App.D.C. 209, 450 F.2d 670 (1971), and Rose v. Dept. of the Air Force, 495 F.2d 261 (2d Cir. 1974), with Robles v. Environmental Protection Agency, 484 F.2d 843 (4th Cir. 1973). See also Note, Invasion of Privacy and the Freedom of Information Act: Getman v. N.L.R.B., 40 Geo.Wash.L. Rev. 527 (1972).

      . In Getman, the court considered the application of Exemption (6) to a request by two labor law professors for the lists of names and home addresses of employees eligible to vote in representation elections. The professors were engaged in a study of N.L.R.B. representation election rules and intended to use the employee lists to facilitate the scheduling of interviews with affected employees. The court held the employee lists disclosable, finding that disclosure for the purpose of the professors’ study was “if anything . . . clearly warranted.”

      . The Senate Report provides (at 9) :
      The phrase “clearly unwarranted invasion of personal privacy” enunciates a policy that will involve a balancing of interests between the protection of an individual’s private affairs from unnecessary public scrutiny, and the preservation of the public’s right to governmental information. The application of this policy should lend itself particularly to those Government agencies where persons are required to submit vast amounts of personal data usually for limited purposes.
      [Emphasis supplied.]

      . Robles v. Environmental Protection Agency, 484 F.2d 843 (4th Cir. 1973).
      In Robles, plaintiffs sought the names and addresses of persons who occupied buildings which had been monitored by the E.P.A. for radiation levels and possible radioactive emissions. The court held Exemption (6) inapplicable and ordered disclosure.

      . The Senate Report provides (at 5-6) :
      [The proposed Act] eliminates the test of who shall have the right to different information. For the great majority of different records, the public as a whole has a right to know what its Government is doing. There is, of course, a certain need for confidentiality in some aspects of Government operations and these are protected specifically; but outside these limited areas, all citizens have a right to know.

      [Emphasis supplied.]

      . That society recognizes the individual's interest in keeping his address private is indicated in such practices as non-listing of telephone numbers and the renting of post office boxes.

      . As Chief Justice Burger stated in Rowan, supra:

      [TJhe right of every person “to be let alone” must be placed in the scales with the right of others to communicate.
      In today’s complex society we are inescapably captive audiences for many purposes, but a sufficient measure of individual autonomy must survive to permit every house holder to exercise control over unwanted mail .... It places no strain on the doctrine of judicial notice to observe that whether measured by pieces or pounds, Everyman’s mail today is made up overwhelmingly of material he did not seek from persons he does not know. And all too often it is matter he finds offensive. 397 U.S. 728, 736, 90 S.Ct. 1484, 1490, 25 L. Ed.2d 736 (1970).
      In Rowan, the Court upheld the constitutionality of a statute that authorized tho Postmaster General, at the request of an addressee who objected to advertisements as “erotically arousing or sexually provocative,” to direct a sender to remove the addressee’s name from his mailing list.

      . Denial of the lists, moreover, would impose no private hardship as Wine Hobby may accomplish its stated purpose, advertising, through the general media without specific mailings.

      . The court in Rose refused to permit disclosure of case summaries of military honor code adjudications if such disclosure would reveal the identity of the cadets involved.

      . Compare General Services Administration v. Benson, 415 F.2d 878, 880 (9th Cir. 1969), aff'g 289 F.Supp. 590 (W.D.Wash.1968), with Getman v. N.L.R.B., 146 U.S.App.D.C. 209, 450 F.2d 670, 677-80 (1971) and Robles v. Environmental Protection Agency, 484 F.2d 843, 847 (4th Cir. 1973). See also, Renegotiation Board v. Bannercraft Clothing Co., 415 U.S. 1, 94 S.Ct. 1028, 39 L.Ed.2d 123 (February 19, 1974).