author: WEIS, Circuit Judge.

text:
    SYNTHETIC ORGANIC CHEMICAL MANUFACTURERS ASSOCIATION et al., Petitioners, v. Peter J. BRENNAN, Secretary, Department of Labor, and John H. Stender, Assistant Secretary of Labor for Occupational Safety and Health, Respondents. OIL, CHEMICAL & ATOMIC WORKERS INTERNATIONAL UNION, AFL-CIO, and Health Research Group, Petitioners, v. Peter J. BRENNAN, Secretary United States Department of Labor and John H. Stender, Assistant Secretary Occupational Safety and Health Administration United States Department of Labor, Respondents. POLYURETHANE MANUFACTURERS ASSOCIATION, Petitioner, v. DEPARTMENT OF LABOR et al., Respondents.
    Nos. 74-1129, 74-1149 and 74-1268.
    United States Court of Appeals, Third Circuit.
    Argued Oct. 21, 1974.
    Decided Dec. 17, 1974.
    Certiorari Denied March 17, 1975.
    See 95 S.Ct. 1396.

      Robert C. Barnard, Donald L. Morgan, Charles F. Lettow, Eric Schwartz, Washington, D. C., for petitioners in No. 74— 1129; Cleary, Gottlieb, Steen & Hamilton, Washington, D. C., of counsel.
    Bertram Robert Cottine, Alan B. Morrison, Washington, D. C., for petitioners in No. 74-1149.
    Arvid A. Sather, Michael, Best & Friedrich, Madison, Wis., for petitioner in No. 74-1268.
    Carla A. Hills, Asst. Atty. Gen., New York City, Stephen F. Eilperin, Michael H. Stein, Dept, of Justice, Washington, D. C., for respondents; William J. Kilberg, Sol. of Labor, Benjamin W. Mintz, Associate Sol. for Occupational Safety & Health, Michael H. Levin, Dept, of Labor, Counsel for App. Litigation, Steven F. Witt, Washington, D. C., of counsel.
    Before HASTIE, GIBBONS and WEIS, Circuit Judges.
   OPINION OF THE COURT

WEIS, Circuit Judge.

The important subject of OSHA’s regulations on the usage of a group of chemicals labeled as carcinogens occupies us once again. Although most of the standards are sustained, those as to laboratory practices and medical examinations of employees must be remanded. We also find validity in the objections by one of the appellants that the Secretary of Labor erred in not publishing a proposed regulation after receiving the report from his advisory committee.

These are companion cases to Synthetic Organic Chemical Manufacturers Association v. Brennan, 503 F.2d 1155 (3d Cir. 1974), consisting of appeals from occupational health standards promulgated by the Secretary of Labor. These permanent regulations were issued on January 29, 1974, regulating, inter alia, the exposure of employees to fourteen chemicals found to be carcinogenic. 29 C.F.R. § 1910.93c—p.

Appeals to this court were filed on behalf of employers who utilized four of the chemicals — El, CMME, DCB and MOCA. Another appeal was filed by the Oil Chemical and Atomic Workers Union from the standards applicable to all fourteen substances. The appeal as it pertained to Ethyleneimine (El) was severed, and we held in the prior opinion that the Secretary had made sustainable determinations as to the chemical’s carcinogenicity and proper standards for industrial usage. We concluded, however, that proper notice had not been given before promulgating regulations for the use of El in the laboratory and remanded on that point. Our conclusions as to the legal issues presented by the earlier case likewise apply to the appeals now under consideration and we need not repeat what was said in our prior opinion.

The contentions made here with respect to 3,3'-dichlorobenzidine (DCB) by employers who utilize it are similar to those raised in connection with El — that is, the data derived from tests revealing carcinogenicity in animals were not properly extrapolated to human susceptibility. Nothing in the record permits a differentiation here from our earlier decision on El, and we do not make one. While the scientific data varies, of course, the same legal principle applies and, accordingly, the petitioners’ contention must fail.

The thrust of the opposition to the standard regulating chloromethyl methyl ether (CMME) is aimed at certain studies relied upon by the Secretary. The employers contest the validity of the Van Duuren studies by questioning whether pure CMME was tested or whether, as usually occurs, the substance was contaminated to form bis chloromethyl ether (BCME). Again, the issue is the same as that in the El appeal, and again in this case the Secretary’s determination finds adequate support in the record.

Polyurethane Manufacturers Association (PMA), the employers’ association concerned with the use of 4,4' methylene bis (2-chloroaniline) (MOCA) in various manufacturing processes, presses the same arguments as to carcinogenicity that are advanced for DCB and CMME. Of necessity, the same criteria of review is applied to this chemical as the others in question. The Secretary’s determination is supported by the record and therefore must be sustained.

PMA, however, raises one additional contention not presented in the other appeals. It challenges the procedures followed by the Secretary in promulgating the permanent standards for the industrial use of MOCA. This contention has merit and requires that the case be remanded to the Secretary for compliance with the statutory mandate.

MOCA was subject to the same emergency standard that was issued by the Secretary for the other thirteen chemicals on May 3, 1973 although PMA apparently did not become aware that MOCA was to be included in the group until the emergency standard was published. Thereafter, the Secretary instituted procedures to enact a permanent standard. According to 29 U.S.C. § 655(c)(2) and (3), once an emergency temporary standard is enacted, it is effective until superseded by a permanent standard fashioned in accordance with the procedures prescribed in § 655(b). The emergency standard serves as a proposed rule for that proceeding and the permanent standard must be enacted within six months. The legislative history emphasizes that “upon publication of such an emergency temporary standard, the Secretary must begin a regular standard-setting procedure.” 1970 United States Code Congressional and Administrative News, p. 5184.

We now turn to the requirements of § 655(b). That section provides that the Secretary may request the recommendations of an advisory committee to which he may submit his own proposals as well as pertinent factual and research data. The committee than submits its recommendations to the Secretary within a specified time. Paragraph (2) provides that the Secretary shall publish a proposed rule and that interested parties be given the opportunity to submit written data, comments or objections to the proposal within thirty days. If an advisory committee has been appointed, the Secretary is to publish the proposed rule within sixty days after the submission of the committee’s recommendations. Paragraph (3) provides that, if objections are filed to the proposed rule and a hearing is requested, notice of the hearing shall be given within thirty days of the last date for filing objections.

With these guidelines in mind, it is appropriate to review the chronology of the proceedings here:

May 3, 1973 — The emergency temporary standard was issued.
June 19, 1973 — The Secretary announced the formation of an advisory committee.
July 16, 1973 — The Assistant Secretary of Labor published a notice of “Commencement of rule-making proceeding,” stating that the emergency standard of May 3, 1973 was proposed to be made permanent.
July 27, 1973 — The Assistant Secretary published a revision of the emergency temporary standard.
August 16, 1973 — An amended notice of proposed rule making was published to reflect the revision.
August 27, 1973 — The advisory committee submitted its recommendation to the Secretary.
September 7, 1973 — The committee’s recommendations were published.
September 11 — 14, 1973 — Public hearings were held. Additional comments were received until September 28, 1973.
January 29, 1974 — The permanent standard was published as to MOCA, with separate regulations for the thirteen other substances.

The procedures followed here did not comply with § 655(b). The proposed rule was published before the advisory committee had submitted its report. Consequently, the parties were not given adequate time to submit comments or to prepare for the hearing after the committee’s work was completed. Had § 655(b) been observed, under the most expeditious of circumstances, the hearing could not have been held earlier than thirty days after the advisory committee had submitted its report to the Secretary.

The Secretary contends that this timetable does not apply when an emergency standard has been issued since § 655(c)(3) states that the emergency standard shall serve as a proposed rule for the paragraph (b) proceeding. If no advisory committee is appointed, paragraphs (b) and (c)(3) are consistent but when an advisory committee does function, there is a conflict between the two statutory provisions. It is our conclusion that paragraph (b) must prevail. As we said in Dry Color Manufacturers’ Association v. Department of Labor, 486 F.2d 98, 104-105 n. 9a (3d Cir. 1973):

“The courts should not permit temporary emergency standards to be used as a technique for avoiding the procedural safeguards of public comment and hearings required by subsection 6(b). Especially where the effects of a substance are in sharp dispute, the promulgation of standards under subsection 6(b) is preferable since the procedure for permanent standards is specifically designed to bring out the relevant facts.”

While that comment was made in another context, its underlying philosophy is pertinent.

If we were to hold that paragraph (b) does not apply, then the purpose of convening an advisory committee would be subverted. A rule which the committee was to assist in formulating would have already been published and the committee’s function would be reduced to merely preparing comments to a proposal. This is not compliance with the statutory mandate that the committee shall submit its recommendations “regarding the rule to be promulgated.” Congress did not intend a mere post facto role for the advisory committee because it provided that a proposed rule must be published within sixty days after submission of the committee’s recommendation. § 655(b)(2).

We are not critical of the Secretary’s decision to utilize an advisory committee in this instance. To the contrary, in view of the complexity of the problems, that procedure is highly desirable. See 1 Davis, Administrative Law Treatise § 6.03. However, the value of notice and comment from interested parties in a hearing for rule making was not realized in this case. As an example, the advisory committee was instructed that only one set of standards would be promulgated for all fourteen chemicals, despite the substantial differences in their properties and their industrial and laboratory uses. After the public hearings had been concluded, however, the Secretary issued separate standards for each chemical. Had the proposed rule recited the separate standards, the presentation of pertinent objections, comments and data would have made the public hearings far more valuable to all concerned. Since the procedural requirements of the statute were not observed, the standards relating to MOCA must be remanded to the Secretary for appropriate action to correct the defects.

The Oil Chemical and Atomic Workers Union (OCAW) and the Health Research Group have appealed from the standards established for each of the fourteen chemicals. These petitioners assert that the standards are deficient because:

1. they fail to include a preformance standard mandating no measurable exposure to any of the chemical substances;
2. the Secretary erred in declining to require a permit system as a regulatory device;
3. no monitoring requirements were included in the final regulation; and
4. no specific tests were set forth as part of the requirements for medical examinations.

The first contention, suggesting that a no measurable exposure standard be used, presents the same difficulty in review as that discussed in the El case. There,' we pointed out that by extrapolating the testing on animal species to establish carcinogenicity in man, the Secretary was exercising a policy judgment rather than a purely factual determination.

Here, the Secretary stated that, while a safe level of exposure cannot be established by application of present knowledge, there is respectable opinion that such levels do exist and that a total ban on manufacture is the only complete guarantee of no possible exposure. He recited that the intent of the standards is to reduce exposure of workers to the maximum extent practicable with continued use. The standards applicable to certain of the substances do provide that mixtures containing less than one percent of the chemical would be exempt from regulation and in the other six the level is set at 0.1 percent.

As was aptly stated in Industrial Union Department v. Hodgson, 499 F.2d 467, 474 (D.C. Cir. 1974):

“ . . . some of the questions involved in the promulgation of these standards are on the frontiers of scientific knowledge, and consequently as to them insufficient data is presently available to make a fully informed factual determination. Decision making must in that circumstance depend to a greater extent upon policy judgments and less upon purely factual analysis.”

And in discussing the requirements of feasibility noted in § 655(b)(5), the court said:

“Congress does not appear to have intended to protect employees by putting their employers out of business— either by requiring protective devices unavailable under existing technology or by making financial viability generally impossible.”

We conclude that the action of the Secretary in setting exposure standards is a reasonable exercise of his judgment in the policy making sphere.

While the advisory committee recommendation favored a permit system, the Secretary stated that a decision had been made not to adopt such a system. He wrote:

“The investigations and evaluations of thousands of work situations involving a carcinogen, and the completion of procedures, possibly including hearings, for the granting of permits, would require many years and the diversion of substantial resources, even if available, from other serious occupational safety and health considerations.”

Though there is much to be said for recently expressed concern about undue judicial deference to administrative expertise, this is an appropriate situation for such respect. The OSHA program is a vast one, but to interested parties one particular facet of its operation may understandably appear to be the most critical. The Secretary, however, who has the responsibility for allocation of the not unlimited resources entrusted for OSHA’s operation, may differ. The court should defer to his opinion of what is a practical program which can be administered with some degree of speed and efficiency. We find no error in the Secretary’s choice between methods of enforcement.

No provision for specific techniques of environmental monitoring are contained in the standards and OCAW objects to this omission. But in our view the Secretary has satisfactorily met this objection by requesting NIOSH to develop, on a priority basis, methods for determining amounts of carcinogens in the work place. In effect the Secretary has deferred implementation of monitoring requirements pending further scientific development of methods for doing so. Such a decision is a pragmatic one which will not be disturbed by the court.

Finally, OCAW attacks the provisions for medical examinations because they do not prescribe specific medical protocols and diagnostic tests to be given employees who work with the chemicals. The advisory committee suggested that employers should provide a comprehensive history and physical examination consisting of diagnostic tests and periodicity specific to the carcinogen and in no less detail than guidelines set forth by the Secretary of Labor after consultation with the Secretary of Health, Education and Welfare.

During the rule-making process, evidence was submitted which established that the various carcinogens acted on different bodily organs and that particular tests were required for specific chemicals. This evidence was another instance of the problems engendered by considering all of the substances as a group rather than on an individual basis.

The Secretary gave no reasons for ignoring this recommendation of the advisory committee, nor did he indicate, as he did in connection with monitoring devices, that further information was needed.

29 U.S.C. § 655(b)(7) provides, inter alia:

“In addition, where appropriate, any such standard shall prescribe the type and frequency of medical examinations or other tests which shall be made available, by the employer or at his cost, to employees exposed to such hazards in order to most effectively determine whether the health of such employees is adversely affected by such exposure.”

In contrast to the standards adopted here, certain diagnostic tests are required by the regulations pertaining to asbestos workers, see 29 C.F.R. § 1910.-93a(j)(2) & (3), and some specificity is evident in the medical examination requirements for employees who are exposed to vinyl chloride, 39 Fed.Reg. 35897 (1974).

At oral argument, counsel for the Secretary posited that the existing broad standards could be interpreted to require any specific diagnostic tests which might be necessary. But this approach introduces an element of uncertainty not satisfactory to either employee or employer. It is important that the worker be assured of the benefits of medical procedures that are presently available and that industry be advised of what is expected of it. The regulations can be drafted with ample flexibility to take advantage of expanding medical knowledge in the field. Specific provisions need not discourage improvement or innovation in this critical area.

The failure of the Secretary to explain the lack of specific requirements making the medical examinations effective requires that we remand this aspect of the standards applicable to all of the chemicals.

In summary then, the regulations applicable to 4,4' methylene bis (2-ehloroa-niline) (MOCA) will be remanded for the publication of a proposed standard, to be followed by the required procedures for allowance of comments and hearing. The regulations pertaining to laboratory usage of all the chemicals involved in these appeals are remanded so that appropriate notice may be issued to interested parties and opportunity provided for comment and hearing. The portion of the standards applicable to all of the chemicals referring to medical examinations will be remanded for further proceedings.

      . Van Duuren studied the properties of BCME and CMME and, in 1968, produced the first evidence for the carcinogenicity of these haloethers. His experiments employing both skin applications and subcutaneous injections led to the conclusion that, in the presence of certain other re-agents, and under some circumstances acting alone, CMME and BCME caused lesions in animal subjects. In each instance, Van Duuren verified the purity of the CMME used through I.R. and GLC analysis, showing no BCME content.

      . BCME is a potent chemical which industry concedes is carcinogenic. It appears that at the present time production of pure CMME is not commercially feasible. In industrial usages, it rapidly decomposes in air and aqueous solutions to form BCME and, therefore, there is no widespread usage of pure CMME now.

      . MOCA is the trade name utilized by duPont, although the same chemical is used by other industrial chemical concerns. We use the MOCA trade name because of its simplicity, but it should be understood that we are referring to the chemical, 4,4' methylene bis (2-chloroaniline).

      . On September 6, 1973, PMA sent a telegram to the Assistant Secretary of Labor urging that the hearing set for September 11 be can-celled and requested that a proposed rule be published pursuant to § 655(b)(2) together with an allowance of thirty days to file comments.

      . This schedule assumes that the Secretary published the rule on the same day that he received the recommendations of the advisory committee. Obviously, if he is to give any consideration to the advisory committee report, the period must be longer. In the cases at bar, only four days elapsed between the dates of publication and hearing.

      . Some of the committee members objected to this directive and the Secretary recognized that there was some merit to their position by publishing a revision of the emergency temporary standard on July 27, 1973. 38 Fed.Reg. 20074 (1973). However, this revision did little to solve the problem and the instructions to the committee remained unchanged.

      . Much of the language, however, in the separate standards is merely duplication of that governing all of the other chemicals.

      . PMA, for example, says that the revision of July 27, 1973 permitted it to utilize open vessel processes. However, the report of the advisory committee, whose recommendations had to be geared to cover all fourteen chemicals, permitted only closed vessel operation. The permanent standards prohibited open vessel operation. The Secretary contends that the revised definition of “closed vessels” formulated by the advisory committee and ultimately adopted in the permanent standard does permit certain open vessel operations involving MOCA. PMA questions this and asserts that had it been given the opportunity to meet the issues at a public hearing after being advised of the specific standard later adopted, it would have been able to develop the data to show that the unique properties of MOCA would permit safe operation in open vessels. We do not resolve that factual dispute here and merely point to it as an example of where compliance with the terms of the statute might have provided a regulation and standard more acceptable to all concerned.

      . 39 Fed.Reg. 846 (1974).

      . This section in part provides, “The Secretary . . . shall set the standard which most adequately assures, to the extent feasible, on the basis of the best available evidence, that no employee will suffer material impairment of health . . ”

      . An employer would be required to apply to the agency for a permit before being allowed to use the chemical. The permit would presumably not issue until there was a showing of compliance with appropriate standards. This type of regulation should be contrasted with the one put into effect, that is, permitting usage, but depending for enforcement upon inspections and sanctions for non-compliance.

      . 39 Fed.Reg. 846 (1974).

      . The National Institute for Occupational Safety and Health (NIOSH) was established within the Department of Health, Education and Welfare by 29 U.S.C. § 671.


source: Caselaw Access Project

author: WEIS, Circuit Judge. GIBBONS, Circuit Judge

license: Public Domain

text:
    JONDORA MUSIC PUBLISHING COMPANY et al., Plaintiffs-Appellants, v. MELODY RECORDINGS, INC., et al., Defendants-Appellees.
    No. 74-1241.
    United States Court of Appeals, Third Circuit.
    Argued Oct. 25, 1974.
    Decided Dec. 27, 1974.
    As Amended Jan. 16, 23, 1975.

      Sidney S. Rosdeiteher, Steven B. Rosenfeld, New York City, C. Stephen Barrett, III, Newark, N. J., for plaintiffs-appellants; Daniel J. Kornstein, Paul, Weiss, Rifkind, Wharton & Garrison, New York City, Lum, Biunno & Tompkins, Newark, N. J., of counsel.
    Sheldon A. Weiss, Glauberman & Weiss, Jersey City, N. J., for appellees U. S. Tape, Inc. and George Tucker.
    Hellring, Lindeman & Landau, Newark, N. J., for appellees National Cinematape, Inc., American Cartridge Recording, a division of National Communications Arts, Inc., Alexander Magosci, Jr., Davidow Gellert, Inc., Telecor Industries, Inc., Harold Davidow, Charles Gellert, Grandy, Inc., John French, Audiotape, Inc., Elias Saka, Sunshine Music Corp., Incentives, Inc., Byron Hawley, American Copyright Research, Inc., and Joseph Barone; Joel D. Siegal, Newark, N. J., of counsel; Joshua A. Kalkstein, Newark, N. J., on the brief.
    Before KALODNER, GIBBONS and WEIS, Circuit Judges.
   OPINION OF THE COURT

WEIS, Circuit Judge.

To a schoolboy, “piracy” may mean swashbuckling adventure, lumbering merchantmen, booty, and the Jolly Roger. To a musical composer or a record manufacturer, however, piracy means not doubloons, but dollars, not cutlasses, but cut-rate losses, not the creaking of a ship under way, but the almost imperceptible hum of a reel-to-reel tape, and certainly no jollity about unauthorized copies of a musical work. We conclude here that a composer is not defenseless but, using the guns of the Copyright Act, can force the pirate to heave to in response to an injunctive shot across the bow.

The plaintiffs are publishers who own the copyrights for a number of musical compositions and thus stand in the shoes of the composers of the musical works. The defendants manufacture and sell sound-tape duplications of popular phonograph records.

Suit was brought in the district court on the allegation that the defendants had infringed the rights granted to the composers by the Copyright Act, 17 U.S.C. § 1 et seq. The district court denied relief, holding that the compulsory license provision, 17 U.S.C. § 1(e), serves to insulate the defendants from liability.

This particular provision of the Copyright Act was passed by Congress in 1909 after the Supreme Court in White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1, 28 S.Ct. 819, 52 L.Ed. 655 (1908), had decided that a composer could not copyright a perforated piano roll of his musical work. Although it desired to give protection to the composer, Congress wished to avoid granting a monopoly to a certain company which then held a dominant position in the piano roll manufacturing field. The problem was solved by a legislative compromise which granted the composer protection from unauthorized recording of an unreleased work. If, however, the composer chose to license one manufacturer to make mechanical reproductions, others would be allowed to record the composition upon payment of a specified royalty. The pertinent provision of the statute reads:

“. . . And as a condition of extending the copyright control to such mechanical reproductions, that whenever the owner of a musical copyright has used or permitted or knowingly acquiesced in the use of the copyrighted work upon the parts of instruments serving to reproduce mechanically the musical work, any other person may make similar use of the copyrighted work upon the payment to the copyright proprietor of a royalty of 2 cents on each such part manufactured, to be paid by the manufacturer thereof;

17 U.S.C. § 1(e).

The composer is thus given the right to select the licensee who will originally produce a record of the musical work, but thereafter any other manufacturer can also record the composition pursuant to this compulsory licensing provision. The effect of the statute is to impose three obligations upon those other than the original manufacturer:

1. To pay a royalty of two cents per record;
2. To file a notice of intent to use; and
3. To make a “similar use of the copyrighted work.”

The phrase, “similar use of the copyrighted work,” is the essence of this case.

There has been surprisingly little litigation on the meaning of the phrase, and the few appellate cases interpreting it in terms of the rights of the composer have occurred within recent years.

The first case to construe the language of the amendment of 1909 was Aeolian Co. v. Royal Music Roll Co., 196 F. 926 (W.D.N.Y.1912). The district court there said of “similar use:”

“. . . but the subsequent user does not thereby secure the right to copy the perforated rolls or records. He cannot avail himself of the skill and labor of the original manufacturer of the perforated roll or record by copying or duplicating the same, but must resort to the copyrighted composition or sheet music, and not pirate the work of a competitor who has made an original perforated roll.”

196 F. at 927.

This case has been criticized for the result it reached, and the strength of the interpretation consequently has been questioned.

In the years following the Aeolian case, most of the writers in the field were preoccupied with the problem of copyright for the physical recording itself. Until Congress recently provided otherwise, it was generally conceded that a record as such could not be copyrighted. See Capitol Records v. Mercury Records Corp., 221 F.2d 657 (2d Cir. 1955); Ringer, The Unauthorized Duplication of Sound Recordings, supra. Hence, the efforts of performers and manufacturers to secure relief from record piracy were unavailing under the Copyright Act, and debate continued on the desirability of extending protection to recordings, per se.

Within the past few years, however, record “pirates” or “duplicators,” were confronted by direct challenges of the composers.

In Duchess Music Corp. v. Stern, 458 F.2d 1305 (9th Cir.), cert. denied, 409 U.S. 847, 93 S.Ct. 52, 34 L.Ed.2d 88 (1972), and Edward B. Marks Music Corp. v. Colorado Magnetics, Inc.,. 497 F.2d 285 (10th Cir. 1974), aff’d bn rehearing in banc, cert. denied, - U.S. -, 95 S.Ct. 801, 42 L.Ed.2d 819, (No. 73-2006, Jan. 20, 1975), the Courts of Appeals held for the composers, though not without some voices of dissent. In both instances the majorities held that “similar use” under the compulsory license provision did not apply to those who made duplicates from authorized recordings.

The Duchess court reviewed the legislative history of the 1909 amendment and gave favorable consideration to the language interpretation of Aeolian Co. v. Royal Music Roll Co., supra. The Court of Appeals for the Tenth Circuit, in discussing the phrase, “any other person may make similar use of the copyrighted work,” said:

“This means, to us, that one who complies with royalty payment called for by the statute, though not having any authorization from the copyright owner, may nonetheless then ‘use,’ not a third party’s record, but the copyrighted composition, which has been characterized as the ‘raw material,’ in a manner ‘similar’ to that employed by the recording company which did have authorization from the copyright owner [U]nder the statute [defendants] . . . may ‘use’ the copyrighted composition in a manner ‘similar’ to that made by the licensed recording company ... It does not mean that [defendants] may use the composer’s copyrighted work by duplicating and copying the record of a licensed recording company. Such, in our view, is not a similar use.” 497 F.2d at 288.

We agree with this interpretation of the statute but feel even more strongly that the duplicators or pirates do not “use” the composer’s work in a “similar” fashion — indeed, they do not utilize the composer’s work at all. It is a recording which is used. Rather than permit the use of a recording of the composition, the statute only authorizes the use of the copyrighted work, that is, the written score.

The use to which the original licensee put the composer’s work, i. e., the musical score, was much more elaborate, involving as it did the preparation of an arrangement from the written composition and its performance by musicians and vocalists. The mere duplication of a recording by the pirate is not the same as, or “similar” to, the efforts made by the original licensee in utilizing the characters on a piece of paper as the basic plan for producing harmonious sounds.

The copyright law is enacted for the benefit of the composer in accordance with the constitutional grant of Art. I, § 8, cl. 8:

“The Congress shall have Power .
“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

The amendment of 1909 was intended to protect the creative efforts of the composer, and the compulsory license provision was inserted, not in an effort to penalize him, but to prevent monopolization by manufacturers. The statute should be interpreted in that spirit.

The interest of the composer may be adversely affected by the pirating of licensed recordings. The decision by a manufacturer to make a recording of a musical work necessarily involves consideration of the expense in obtaining outstanding performers and arrangers, as well as the initial cost of the master recording. These factors must be balanced against the anticipated number of copies to be sold. Generally, the life of a popular song recording is a short one. If a record producer can arrange for the happy combination of an outstanding performer and an exceptional song, he will be able to sell enough records to make a profit. Since the pirate’s only initial expense is the purchase of one phonograph record or sound tape, he obviously can sell a duplicate at a substantially lower price. If the market is reduced by these cut-rate copies, the record manufacturer’s incentive to market other hit recordings is necessarily diminished. In turn, this is a detriment to the composer, who may anticipate that his works will be performed in a less costly production and possibly receive less public attention. To this extent, the interests of the composer and manufacturer coincide in combating piracy.

The Supreme Court has not yet spoken on the issue before this court. Its closest approach was in Goldstein v. California, 412 U.S. 546, 93 S.Ct. 2303, 37 L.Ed.2d 163 (1973), where the Court held that recordings, in and of themselves, were not copyrightable until 1971, when Congress amended the Act to permit such protection for producers and performers. The Court decided that since Congress had not made the Act applicable to any recording “fixed” before February 15, 1972, there was no constitutional impediment to state statutés prohibiting piracy of records prepared before the effective date. The duplicators in that case did not argue that there was any direct conflict between the state regulation and the compulsory license provision of § 1(e). Again in Goldstein as in the earlier cases, the issue was focused upon the question of copyrighting the record itself — not on the rights of the composer. We agree with the Marks court and the court below that Goldstein did not pass on the issue here — the nature and extent of the interest of the composer.

When Congress did amend the Copyright Act in 1971 to provide protection for sound recordings, the legislative history reviewed one phase of the problem to be corrected. The district court in its opinion relied upon statements in both the House and Senate Reports to the effect that under the former state of the law, if the “unauthorized” producers paid the statutory royalty, there was no federal remedy available to prevent unauthorized reproduction of the recording. But a court is not bound by a congressional interpretation of a statute passed in a preceding session. The weight to be given a legislative committee’s views on the meaning of a statute enacted in years past is the same as that given to any other commentator — having due regard to whether the subject was specifically addressed and to the objective of the committee work.

Furthermore, we note that, in discussing a proposal for a compulsory license for recordings, the legislative report reads:

“The Senate Committee rejected this proposal on the ground that the two situations are not parallel: the existing compulsory license [under § 1(e)] merely provides access to the copyrighted musical composition, which is the ‘raw material’ of a recording, and the performers, arrangers, and recording artists are needed to produce the finished creative work in the form of a distinctive sound recording.” 1971 U.S.Code Cong. & Admin.News, p. 1569.

It is our conclusion that making an identical copy of a recorded version of a copyrighted musical composition is not a “similar use” as permitted by the compulsory license provisions of § 1(e). Therefore, the judgment of the district court will be vacated, and the case remanded for further proceedings consistent with this opinion.

GIBBONS, Circuit Judge

(dissenting):

The issue of statutory interpretation presented by this case is of limited practical effect because of the combined effects of 17 U.S.C. § 1 et seq., Pub.L. No. 92-140, §§ 1(a), 2, 85 Stat. 391 (Oct. 11, 1971), and the recent decision in Goldstein v. California, 412 U.S. 546, 93 S.Ct. 2303, 37 L.Ed.2d 163 (1973). The new statute creates a limited copyright in sound recordings of musical compositions which were ‘.‘fixed” (first recorded) after February 15, 1972. The Goldstein case holds that the states may afford protection for sound recordings “fixed” at any time under state unfair competition laws. Thus the unwarranted interpretation of the Copyright Act of 1909 will not have widespread economic impact. It is, nevertheless, quite clearly wrong, and the error in construction of the statute cannot be cured by pejorative references to the appellees as “pirates” rather than “licensees.”

Congress first extended federal copyright protection to original musical compositions in 1831. Act of Feb. 3, 1831, eh. 16, 4 Stat. 436. The Copyright holder had the exclusive authority to sell copies (i. e. printed sheet music) of the musical score. However between 1831 and 1909, numerous machines were invented which allowed the composition to be reproduced mechanically. The mounting sale of player piano rolls , and gramophone records detracted from the value of the copyright granted for the musical composition since anyone in possession of such modern innovations had little need for a copy of the sheet music. In response, Congress began in 1905 to consider a thorough revision of the copyright laws. The necessity for legislative revision was highlighted by the decision in White-Smith Music Publishing Co. v. Apollo, 209 U.S. 1, 28 S.Ct. 319, 52 L.Ed. 655 (1908). The Apollo Company had manufactured piano rolls capable of reproducing mechanically, compositions covered by a copyright owned by appellant. Appellant, the assignee of the composer, contended that the piano rolls constituted “copies” of the copyrighted composition, and that their sale, without permission, constituted an infringement of the copyright. The Court held that neither piano rolls nor records were “copies” of the copyrighted composition, within the meaning of the federal copyright statutes, but merely component parts of a machine which executed the composition. 209 U.S. at 18, 28 S.Ct. 319. Despite the fact that the piano rolls employed the creative work of the composer, all protection was denied.

Thereafter Congress determined that the copyright statutes should be revised to insure that composers of original musical works received adequate protection to encourage further artistic and creative effort. The Supreme Court in Goldstein v. California, supra analyzing the historical background to the Act of 1909 admonishes us:

“To interpret accurately Congress’ intended purpose in passing the 1909 Act we must remember that our modern technology differs greatly from that which existed in 1909. The Act and the [House] report should not be read as if they were written today, for to do so would inevitably distort their, intended meaning; rather, we must read them against the background of 1909, in which they were written.” 412 U.S. at 564, 93 S.Ct. at 2313.

Under § 1(e) of the Copyright Act of 1909 records and piano rolls were thereafter to be considered as “copies” of the original composition, and could not be manufactured unless payment was made to the copyright holder of the composition. However the Goldstein decision in analyzing the 1909 Act noted that

“Composers were to have no control over the recordings themselves. Nowhere does the [House] report indicate that Congress considered records as anything but a component part of a machine, capable of reproducing an original composition, or ... as renderings of [an] original artistic performance . . . .” 412 U.S. at 566, 93 S.Ct. at 2314 (emphasis in original).

As enacted in 1909, § 1(e) of the Copyright Act, 17 U.S.C. § 1 et seq. reads in pertinent part:

“Provided . . as a condition of extending the copyright control to such mechanical reproductions, that whenever the owner of a musical copyright has used or permitted or knowingly acquiesced in the use of the copyrighted work upon the parts of instruments serving to reproduce mechanically the musical work, any other person may make similar use of the copyrighted work upon the payment to the copyright proprietor of a royalty of 2 cents on each such part manufactured, to be paid by the manufacturer thereof . . . .”

Section 101(e) of the Copyright Act, 17 U.S.C. § 101(e) provides in pertinent part:

“Interchangeable parts for use in mechanical music-producing machines.— Interchangeable parts, such as discs or tapes for use in mechanical music-producing machines adapted to reproduce copyrighted musical works shall be considered copies of the copyrighted musical works which they serve to reproduce mechanically for the purposes of this section 101 and sections 106 and 109 of this title, and the unauthorized manufacture, use, or sale of such interchangeable parts shall constitute an infringement of the copyrighted work rendering the infringer liable in accordance with all provisions of this title dealing with infringements of copyright and, in a case of willful infringement for profit, to criminal prosecution pursuant to section 104 of this title.”

Thus, under § 1(e), after the owner of the copyright in a musical composition has authorized its use in the manufacture of parts of instruments [i. e. piano rolls, records, tapes] “any other person may make a similar use ...” This is the so-called “compulsory license” provision upon which defendants relied. This provision was added to the Act when, during the course of congressional hearings in 1909, Congress learned that one dominant piano roll company, anticipating the establishment of an exclusive licensing right, had contracted with the leading music publishers for the exclusive right to record all their music. To forestall the danger that one company would acquire a monopoly in the making of piano rolls and records by acquiring the copyrights of musical compositions, the draftsmen adopted the device of the compulsory license. The compulsory license provision precluded the growth of a music monopoly by insuring that once a copyright owner licensed another to produce an original recorded performance of his work, other manufacturers would have access to that composition to make a “similar use” of it.

In construing the parameters of protection afforded to holders of copyrighted musical compositions the trial court recognized the limited nature of the rights granted by Congress. The exclusive right granted by the Act to composers was recognized to be “exclusive” only to the extent that the copyright holder did not permit any recording to be made of his song. However once an original sound recording of that composition had been licens'ed, the owner of the copyright composition lost further control over anyone who made a “similar use” of that composition under the compulsory license provision. The power of the copyright holders to restrict the use of the composition upon its licensing for an original recording from further reproduction by third parties was not envisaged by the Act.

Appellants argue that their claim is not based on a property interest in the recordings, and concede that recordings were not made the subject of copyright protection under the Act. They contend that as the copyright owners in the underlying musical compositions embodied in the original recordings, they have a copyright interest in the composition which extends beyond the original recording. Under this view the protectable interest in the composition is lost through the compulsory license provision only when a third party produces and manufactures his own sound recording from scratch (i.e. from the copyrighted sheet music) rather than from an unauthorized duplication of that composition already embodied in an original sound recording. Rather than the limited extent of copyright protection attributed to the Act by the trial court, the appellants contend they own an exclusive right to determine the use made of their copyrights in the musicial composition.

The crucial and narrow question upon which this appeal turns lies with the construction of the compulsory license provision. The appellants argue that this provision is a limited exception to the copyright owner’s exclusive right, and as a proviso to the copyright interest, it should be construed narrowly. In this regard appellants argue in favor of the construction given the provision in Aeolian Co. v. Royal Music Roll Co., 196 F. 926 (W.D.N.Y.1912) and followed recently in two circuit court decisions: Duchess Music Corp. v. Stern, 458 F.2d 1305 (9th Cir.), cert. denied, 409 U.S. 847, 93 S.Ct. 52, 34 L.Ed.2d 88 (1972); Edward B. Marks Music Corp. v. Colorado Magnetics, Inc., 497 F.2d 285 (10th Cir. 1974), petition for cert. filed, (No. 73—2006, July 10, 1974). See also Fame Publishing Co., Inc. v. S. & S. Distributors, Inc., 363 F.Supp. 984 (N.D.Ala.1973).

In Aeolian, a piano roll manufacturer having a license to use certain copyrighted musical compositions on its perforated rolls sought an injunction against a competitor who was duplicating the rolls. In granting the injunction the court stated

“The provision of the statute (section le) that ‘any other person make similar use of the copyrighted work’ becomes automatically operative by the grant of the license; but the subsequent user does not thereby secure the right to copy the perforated rolls or records. He cannot avail himself of the skill and labor of the original manufacturer of the perforated roll or record by copying or duplicating the same, but must resort to the copyrighted composition or sheet music, and not pirate the work of a competitor who had made an original perforated roll.” 196 F. at 927.

In Duchess Music the Ninth1 Circuit reversed the trial court, and following Aeolian concluded that defendant could not invoke the compulsory license provision as sanction for her activities.

“The statute provides that anyone who properly invokes the license provision ‘may make similar use of the copyrighted work.’ (emphasis supplied). Rosner admits that she duplicates appellants’ copyrighted compositions. She does not make ‘similar use’ of them, she makes exact and identical copies of them. This is clearly outside the scope of the compulsory license scheme.” 458 F.2d at 1310.

Similarly, in Marks Music, the Tenth Circuit in affirming the trial court’s decision stated:

“This means, to us, that one who complies with royalty payment called for by the statute, though not having any authorization from the copyright owner, may nonetheless then ‘use,’ not a third party’s record, but the copyrighted composition, which has been characterized as the ‘raw material,’ in a manner ‘similar’ to that employed by the ■recording company which did have authorization from the copyright owner. There is, of course, nothing in the statute which affirmatively authorizes Magnetics to duplicate and copy the recording of one licensed by the copyright owner to reproduce his composition. However, under the statute Magnetics may ‘use’ the copyright composition in a manner ‘similar’ to that made by the licensed recording company. All of which means, to us, that Magnetics may make its own arrangements, hire its own musicians and artists, and then record. It does not mean that Magnetics may use the composer’s copyrighted work by duplicating and copying the record of a licensed recording company. Such, in our view, is not a similar use.” 497 F.2d at 288.

Judge Lacey concluded that Aeolian and Duchess had been wrongly decided (Marks was decided later). 351 F.Supp. at 578-579. Aeolian was wrongly decided, since the compulsory license provision dictated that there be no exclusive license, and to allow a licensee to sue is incompatible with that provision. The practical effect of the decision is to give the licensee a copyright in his record, something Congress clearly had not intended to do.

Properly analyzed, there are three component parts in an original sound recording:

1. the musical composition
2. the performance
3. the recording itself.

Neither the performance, nor the recording itself were afforded copyright protection under the 1909 Act. As to the musical composition Professor Nimmer, in his leading treatise Copyright has stated:

“Once such a recording has been authorized, thereafter the right to record becomes non-exclusive, subject to the terms and conditions of the compulsory license provision of Sec. 1(e).”

§ 108.3, at 420-21 (1972).

“All of the other elements contained in the original record which he has without authority duplicated are not copyrightable, and hence his use of such other elements does not give rise to an action for copyright infringement.”

§ 108.4621, at 431-32 (1972).

Nimmer thus concludes:

“Assuming such a record pirate duly serves a notice of intent to use, and pays the compulsory license royalties, the somewhat astounding result is that he is not an infringer under the Copyright Act.”

§ 108.4621, at 431 (1972).

This view is reinforced by the Supreme Court’s recent opinion in Goldstein v. California, 412 U.S. 546, 93 S.Ct. 2303, 37 L.Ed.2d 163 (1973), which Judge Lacey considered in his second opinion reported at 362 F.Supp. 488. To fill the void in the federal copyright law, many states had enacted criminal statutes proscribing “pirating” activities. The difficulty with such legislation was its constitutionality under the pre-emption doctrine. The Court, applying a Cooley approach, concluded that the states were free to legislate in the area, since certain subject matter to which the copyright clause of the constitution is addressed, may be of local importance, “and not worthy of national attention or protection.” 412 U.S. at 558, 93 S.Ct. at 2310. Implicit in the Court’s holding is the necessary conclusion that the Copyright Law provided no federal remedy to either the composer or his licensee-manufacturer. If Congress had seen fit to provide a remedy for infringement to the composer or the manufacturer under the 1909 Act, the Court could not consistent with its Cooley analysis, have permitted the states to legislate in the area.

Finally, Judge Lacey’s conclusion is supported by the legislative history behind the Copyright Act’s 1971 Amendment, Pub.L. No. 92—140, §§ 1(a), 2, 85 Stat. 391, 17 U.S.C. § 1 et seq. (October 11, 1971). Proposed revision of the Act began in 1955, and this amendment was designed as an interim measure prior to final revision sometime in 1975. The amendment created a limited copyright in sound recordings of musical compositions which were “fixed” (first recorded) after February 15, 1972. Congress on the basis of lengthy public hearings at which it heard testimony from the various elements in the music industry as well as those governmental agencies charged with the responsibility of administering the Act concluded that under the existing law:

“If the unauthorized producers pay the statutory mechanical royalty required by the Copyright Act for the use of copyrighted music there is no Federal remedy currently available to combat the unauthorized reproduction of the recording . . . ”
1971 U.S.Code Cong. & Admin.News at p. 1567- (emphasis added) (quoted in Jondora, 351 F.Supp. at 582).

Judge Lacey properly considered the language and legislative history of the 1909 Act, the views of the leading text writers, the analysis of the conflicting opinion in the Ninth Circuit (later followed in the Tenth Circuit), the impact of the Goldstein decision, and the remedy afforded by the 1971 Amendment. It is apparent that both the Ninth and Tenth Circuits have attempted to provide a remedy which was not envisaged by the 1909 Act. We should not follow like the children of Hamelin their erroneous piping. The appropriate response to this problem lies in the hands of the Congress when it considers the final revision of the Copyright Law. The judgment below should be affirmed.

      . Some of the songs involved are: “I Believe,” “Raindrops Keep Failin’ on my Head,” and “Blowin’ in the Wind.”

      . Included in this case are recordings by Johnny Cash, Elvis Presley, Bob Dylan, and George Harrison.

      . The opinions of the district court are reported at 351 F.Supp. 572 (D.N.J.1972); 362 F.Supp. 488 (D.N.J.1973); and 362 F.Supp. 494 (D.N.J.1973).

      . We see no need in this case to enter the debate over the contention that the statute would not apply to electronic recording since it was unknown in 1909 (although the use of phonograph records was widespread at the time). See Henn, The Compulsory License Provisions of the U.S. Copyright Law (1956), Studies on Copyright Law Revision For the Subcomm. on Patents, Trademarks, and ’ Copyrights of the Senate Comm, on the Judiciary, 86th Cong., 1st Sess., Study No. 5 at 17 n. 59 (S.Comm. Print 1960).

      . The Aeolian court recognized that music rolls or records were not, per se, subject to copyright but allowed the plaintiff-licensee-manufacturer an injunction as a “party aggrieved” under the Copyright Act. It is this holding that is incorrect. See Note, Piracy on Records, 5 Stan.L.Rev. 433, 443 (1953).

      . E. g„ in the oft cited Ringer, The Unauthorized Duplication of Sound Recordings, Studies on Copyright Law Revision For the Sub-comm. on Patents, Trademarks, and Copyrights of the Senate Comm, on the Judiciary, 86th Cong., 2d Sess., Study No. 26 (S.Comm. Print 1961), the author states preliminarily, “The right of an author to control sound recordings of his work is outside the scope of this paper. What we are concerned with are the rights of performers and record producers to prevent unauthorized duplication of their own contributions to the record.” See also, Chafee, Reflections on the Law of Copyright: II, 45 Colum.L.Rev. 7119 (1945); Kalodner & Vance, The Relation Between Federal and State Protection of Literary and Artistic Property, 72 Harv.L.Rev. 719 (1959); Note, Piracy on Records, 5 Stan.L.Rev. 433 (1953).

      . We use these two words interchangeably with no particular significance attached to the choice. The plaintiffs here prefer the pejorative overtones of “piracy,” and the defendants, understandably, prefer the more innocuous “duplicators.”

      . One reason for these recent cases may be the increased remedies provided to the composers by Pub.L. 92-140, effective October 15, 1971, 17 U.S.C. § 101(e). Before that time, no criminal sanctions were available to the composer for violation of the compulsory license provision, and he was limited to injunctive relief and civil damages not to exceed three times the statutory royalty.

      . Nimmer on Copyright, § 108.4621 (1973 ed.), disagrees with this interpretation, but we are not persuaded by that eminent author’s argument to the contrary.

      . To put the concept in a different setting— the court reporter, who listens to the sound of a witness’s voice, makes notes on a steno-type machine, and then types the words on sheets of paper, makes use of the witness’s oral statements. A person who simply photocopies the transcript does not make the same or a similar use of the witness’s voice sounds.

      . In Note, Record Piracy and Copyright: Present Inadequacies and Future Overkill, 23 Maine L.Rev. 359 (1972), the author points out that not all piracy is concerned with making money on hit records but that some duplicators make possible the preservation of recordings, particularly in the jazz and classical fields, which were not commercially successful and were prematurely withdrawn from the market by profit-conscious manufacturers.

      . While an argument might be made that our interpretation of “similar use” leads to a conclusion that Congress intended to preempt the field of sound recording protections, the thrust of the Goldstein opinion was to give a narrow interpretation to pre-emption in the copyright field. Furthermore, it bears repeating that while the interests in composition and recording at times may track closely, they are separate and distinct — as an example, a duplication of a recording of a musical work in the public domain would not infringe the rights of any composer but might be a real detriment to the performer.

      . See Kurlantzick, The Constitutionality of State Law Protection of Sound Recordings, 5 Conn.L.Rev. 204, 234 n. 102 (1972). For another commentary on the 1971 amendment, see Schrader, Sound Recordings: Protection Under State Law and Under the Recent Amendment to the Copyright Code, 14 Ariz.L.Rev. 689 (1972).


author: TUTTLE, Circuit Judge:

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Sharon Maria NEWELL and Maria del Socorro Franco Guerra, Defendants-Appellants.
    No. 73-2538.
    United States Court of Appeals, Fifth Circuit.
    Jan. 9, 1975.
    Rehearing and Rehearing En Banc Denied March 4, 1975.

      Roberto J. Yzaguirre, Knox Jones, McAllen, Tex., for defendants-appellants.

      Anthony J. P. Farris, U. S. Atty., Edward B. McDonough, Jr., James R. Gough, Mary L. Sinderson, Asst. U. S. Attys., Anna E. Stool, Atty., Dept, of Justice, Houston, Tex., for plaintiff-appellee.
    Before TUTTLE, WISDOM and GOLDBERG, Circuit Judges.
   TUTTLE, Circuit Judge:

Sharon Maria Newell and Maria del Socorro Franco Guerra appeal their convictions for one count each of knowingly and intentionally possessing, with intent to distribute, marijuana, a Schedule I controlled substance, in violation of 21 U.S.C. § 841(a)(1). They contend that the search during which the marijuana was discovered violated their rights under the Fourth Amendment of the United States Constitution.

We agree and therefore reverse their convictions.

I.

“As is usual in the search and seizure area, the particular factual setting is of critical importance to the disposition of this case.” United States v. Bursey, 491 F.2d 531, 532 (5th Cir. 1974). The facts of this case are simple and undisputed.

The appellants were driving a late-model passenger automobile bearing Starr County, Texas, license plates north on Texas Highway 16 in the early evening of March 3, 1973. Agent Jose E. Garza of the United States Border Patrol, who was driving south on Highway 16 at the same time, noticed the appellants’ car a few miles south of Hebronville, Texas, and made a u-turn to pursue it. The Agent lost sight of the appellants’ vehicle in the heavy Saturday evening traffic, but re-sighted it approximately one-half hour later, at 8:30 p. m., at a point four miles north of Hebronville on Highway 16.

Agent Garza stopped the appellants’ vehicle at this point, which is approximately 56 miles north of the Mexican border, to make a “routine immigration check” for illegal aliens. After ascertaining Ms. Newell’s American citizenship, he asked Ms. Newell to open the trunk of the car, which she did. He saw in the trunk a leather suitcase, a metal footlocker and two overnight bags. He felt the footlocker, which, he testified “seemed a little heavier than usual.” He asked Ms. Newell to open the footlocker, but she replied that she did not have the necessary key. He then “cracked” open the footlocker by using tools and detected a “strong odor of marijuana.” Further search produced sixty-three pounds of semi-refined marijuana in brick form.

Prior to trial, the defendants moved to suppress the evidence of the marijuana on the ground that it was discovered during an illegal search, but the motion was denied. The defendants waived trial by jury and were found guilty by the district court.

II.

The appellants argue that the warrantless search that led to their convictions was illegal under Almeida-Sanchez v. United States, 413 U.S. 266, 93 S.Ct. 2535, 37 L.Ed.2d 596 (1973). However, the search in this case occurred on March 3, 1973, and this Court en banc, United States v. Miller, 499 F.2d 1247 (5th Cir. 1974), has held that searches prior to June 21, 1973 (the effective date of Almeida-Sanchez) must be governed by pre-Almeida-Sanchez law. Applying pre-Almeida-Sanchez law as we must then to the facts of this case, we hold that the search was illegal.

Although the extreme parameters of the “border search” doctrine under preAlmeida-Sanchez law have not always been clear, there is virtually no dispute over the basic elements of the doctrine.

“The so-called border search has long been recognized as an exception to both the warrant and probable cause requirements of the Fourth Amendment to the Constitution.” United States v. Diemler, 498 F.2d 1070, 1071 (5th Cir. 1974). United States v. Thompson, 475 F.2d 1359 (5th Cir. 1973); Carroll v. United States, 267 U.S. 132, 45 S.Ct. 280, 69 L.Ed. 543 (1925). However, the exception — which like others in the area is “jealously and carefully drawn,” Jones v. United States, 357 U.S. 493, 499, 78 S.Ct. 1253, 2 L.Ed.2d 1514 (1958); Coolidge v. New Hampshire, 403 U.S. 443, 455, 91 S.Ct. 2022, 29 L.Ed.2d 564 (1971) — does not extinguish the general rule imposed by the Fourth Amendment: the search must still be reasonable. United States v. Diemler, supra; United States v. Rodriguez-Hernandez, 493 F.2d 168 (5th Cir. 1974); United States v. Warner, 441 F.2d 821 (5th Cir. 1971), cert. denied, 404 U.S. 829, 92 S.Ct. 65, 30 L.Ed.2d 58 (1971).

This Court has developed two tests of the reasonableness of “border searches” by “roving patrols”:

1. Border Nexus. “[Sjome connection or contact with the border must be shown, even though the vehicle itself need not have crossed the border.” United States v. Diemler, supra, at 1072. The test may be satisfied by “showing that the vehicle or its passengers have recently crossed the border or been in touch with those who have . . . ” United States v. Storm, 480 F.2d 701, 704, n. 5 (5th Cir. 1973); United States v. Speed, 497 F.2d 546 (5th Cir. 1974). See, also, United States v. Byrd, 494 F.2d 1284 (5th Cir. 1974); United States v. Bursey, supra; United States v. Steinkoenig, 487 F.2d 225 (5th Cir. 1973); Marsh v. United States, 344 F.2d 317 (5th Cir. 1965).

2. Reasonable Suspicion. “Although the probable cause standard of the Fourth Amendment need not be met, the officer conducting the search must have a reasonable suspicion of illegal activity.” United States v. Diemler, supra, 498 F.2d at 1072; United States v. Daly, 493 F.2d 395 (5th Cir. 1974); United States v. Storm, supra; United States v. McDaniel, 463 F.2d 129 (5th Cir. 1972), cert. denied 413 U.S. 919, 93 S.Ct. 3046, 37 L.Ed.2d 1041 (1972); Morales v. United States, 378 F.2d 187 (5th Cir. 1967); Thomas v. United States, 372 F.2d 252 (5th Cir. 1967); Marsh v. United States, supra. This test is circumscribed by the requirement that the suspected illegal activity be not merely any violation of the law, but a violation of the Custom or Immigration law. United States v. Diemler, supra; United States v. McDaniel, supra. See, also United States v. Solis, 469 F.2d 1113, 1114-1115, n. 2 (5th Cir. 1972), cert. denied, 410 U.S. 932, 93 S.Ct. 1375, 35 L.Ed.2d 594 (1973).

The burden is on the Government to prove that both tests are satisfied. United States v. Diemler, supra; United States v. Marsh, supra. See, generally, Coolidge v. New Hampshire, supra, 403 U.S. at 454-455, 91 S.Ct. 2022. Where the Government fails to carry the burden of proving that both tests have been met, “those lawfully within the country, entitled to use the public highways, have a right to free passage without interruption or search.” Carroll v. United States, supra, 267 U.S. at 154, 45 S.Ct. at 285; United States v. Storm, supra, 480 F.2d at 704; Marsh, supra, 344 F.2d at 325.

In the case before us, the Government has failed to meet either test.

A. Border Nexus.

The record clearly demonstrates that the Government introduced absolutely no evidence that either the vehicle or its passengers had any contact with the border or with those who had. Although this failure is enough to require reversal, United States v. Diemler, supra, we proceed to consider the second test as well, because the Government seems to suggest that its evidence of facts amounting to “reasonable suspicion” in this case imply the requisite border nexus.

B. Reasonable Suspicion.

The Government rests its case on the validity of the search entirely on two facts that it argues amount to a reasonable suspicion that the appellants had violated a Customs or Immigration law: 1) that the automobile carried two women travelling alone and at night; and 2) that the automobile bore out-of-county license plates.

A careful examination of the record reveals that the first fact relied upon by the Government is completely without basis. Agent Garza testified that when he first approached the appellants’ vehicle after stopping it he did not know that its occupants were female. It was only when he addressed the driver, Ms. Newell, that he discovered that both parties were women. The Agent’s decision to stop the appellants’ vehicle thus had nothing to do with the fact that the automobile carried two women driving alone at night.

The record does show that the appellants’ automobile bore out-of-county license plates. This fact, argues the Government, brings the case within the ambit of United States v. Thompson, 475 F.2d 1359 (5th Cir. 1973), where this Court found that the same agent (Garza) at almost the same point (one mile north of Hebronville) had reasonable suspicion to stop and search a vehicle because it bore out-of-state license plates (Arkansas) and was following a circuitous route from the border.

The Government’s analogy of Thompson, with an out-of-state car taking a circuitous route, to the case before us, with an in-state car taking a direct route, is obviously imperfect. The analogy loses any merit whatsoever when it is realized that the appellants’ vehicle bore not just any out-of-county license plates but plates denoting Starr County — a county adjacent to Jim Hogg County, where Hebronville is located. In this light, the facts relied upon by the Government to constitute “reasonable suspicion” amount to no more than that a local car occupied by two persons was driving on a direct route north from their adjacent home county. If these facts were allowed to constitute “reasonable suspicion,” then agents would be authorized to stop and search any automobile that was proceeding north on one of the highways in the area and not bearing in-county license plates. This result would render the requirement of “reasonable suspicion” nugatory and make the Fourth Amendment a dead letter. There is simply no basis in the law to support such a sweeping result. We have said time and again that mere proximity to the border does not automatically place the citizenry “within a deconstitutionalized zone.” United States v. McDaniel, supra, 463 F.2d at 132-133; United States v. Diemler, supra, 498 F.2d at 1072; United States v. Speed, supra, 497 F.2d at 548. As the Supreme Court said nearly fifty years ago in a similar context, “It would be intolerable and unreasonable if a prohibition agent were authorized to stop every automobile on the chance of finding liquor and thus subject all persons lawfully using the highways to the inconvenience and indignity of such a search.” Carroll v. United States, supra, 267 U.S. at 153-154, 45 S.Ct. at 285.

In short, the Government has failed completely to produce any facts that would demonstrate that the appellants had any nexus with the border or that the Agent had any grounds to hold reasonable suspicion that the appellants had violated a Customs or Immigration law. This failure makes the search of the appellants’ vehicle illegal, and the judgments of conviction are accordingly reversed.

      . No other description nor any dimensions of the footlocker were put into the record.

      . Our holding therefore makes it unnecessary to await the decision of the Supreme Court in United States v. Ortiz (9th Cir. June 19, 1974), cert. granted, - U.S. -, 95 S.Ct. 40, 42 L.Ed.2d 47 (1974), which raisés the question of the retroactivity of Almeida-Sanchez.

      . Moreover, the Government, doubtless recognizing the insubstantiality of this ground, abandoned it at oral argument.

      . The Court found that the vehicle in Thompson had travelled an indirect route, via State Highway 359, from Laredo toward Freer, rather than the direct route via U.S. Highway 59, and implicitly sanctioned the Agent’s conclusion that it was “unusual that an out-of-state car would travel this roundabout route [Emphasis added].” 475 F.2d at 1363.

      . It must be further noted that Laredo, the western terminus of State Highway 359, is a port-of-entry from Mexico, while Zapata, the southern terminus of U.S. Highway 16, is not. The nearest ports-of-entry to Zapata are Laredo and Roma, 40 and 45 miles away, respectively. Thus the presumption of border contact in Thompson is wholly lacking in the case before us.


author: GEWIN, Circuit Judge:

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Victor F. HILDEBRAND and Kenneth L. Smith, Defendants-Appellants.
    No. 73-3959.
    United States Court of Appeals, Fifth Circuit.
    Jan. 9, 1975.
    Rehearing Denied Feb. 6, 1975.

      James M. Campbell, J. Russell Horns-by, Orlando, Fla., for defendants-appellants.
    Robert V. Williams, Tampa, Fla., (Court-appointed), for Smith.
    John L. Briggs, U. S. Atty., Jacksonville, Fla., Claude H. Tison, D. Frank Winkles, Asst. U. S. Attys., Tampa, Fla., for plaintiff-appellee.
    Before RIVES, GEWIN and GOLDBERG, Circuit Judges.
   GEWIN, Circuit Judge:

Appellants Hildebrand and Smith were found guilty by a jury and convicted on all twelve counts of an indictment charging them with wire and mail fraud. 18 U.S.C. §§ 2, 1341, and 1343. They received three-year concurrent sentences on each count.

They first contend that the evidence adduced at trial is insufficient to support their convictions. An examination of the record, however, belies their claims. Hildebrand and one McDevitt patented the Electro Chef, a commercial cooking unit designed to heat food instantly. The unit consisted of an oven enclosing specially designed containers in which the food was heated. The containers resembled styrofoam cups with two metal strips attached for conducting an electrical current. The inventors claimed the entire unit could be placed on a counter for use in dispensing quick hot meals such as chili, macaroni, and stew.

Hildebrand, McDevitt and Smith embarked upon a business venture to sell franchise rights to the Electro Chef throughout several states in the South. Smith allegedly owned exclusive distribution rights, while Hildebrand and McDevitt were to receive a royalty on each Electro Chef manufactured. In reality, however, Smith issued bogus checks to Hildebrand and McDevitt to evidence his proprietary interest.

As “pitch man” Smith placed advertisements in newspapers from Texas to Georgia seeking “partners” in a “proven distributorship program” with “high profit potential.” Smith met with prospective investors in each city, demonstrated the attributes of the Electro Chef, and delivered his “sales pitch.” In the course of these meetings Smith claimed wide experience in the quick food business and characterized Hildebrand as an electronics “genius”, ensconced in a well-stocked Florida laboratory.

After the demonstrations, investors signed a sales and distribution agreement giving them a share of the Electro Chef franchise within a particular state. They mailed cashier’s checks or telegraphed money orders payable to Hildebrand and McDevitt in payment of their franchise rights. After deducting minimal expenses, Hildebrand, McDevitt and Smith split the funds three ways.

Following Smith’s instructions, many investors rented and redecorated commercial space to house the deep dish cooking units. Smith’s promises notwithstanding, they received no aid in establishing their merchandising operations. When it became apparent ovens and cups were not being shipped as agreed, the investors contacted Hildebrand. He placated them with continual promises to send the needed equipment. He assured them the ovens would gain Underwriters’ Laboratories approval. When investors asked whether the cups would meet Food and Drug Administration standards, Hildebrand gave two conflicting responses: either that they would pass muster or that such approval was unnecessary. One disgruntled investor from a Houston, Texas group visited the alleged seat of operations, only to find that Hildebrand’s “laboratory” consisted of a work bench in his garage. Another unhappy franchisee watched Smith, who had earlier claimed a proficiency at constructing 1800 cups per day, struggle unsuccessfully for some ten minutes to fashion even one appropriately designed container.

In the months following their initial contracts, the investors never received the cups or the ovens. The evidence presented revealed that Hildebrand, McDevitt, and Smith received a total of $20,100 for their efforts, while the victim-investors lost approximately $70,000. The evidence of a fraudulent scheme introduced at trial amply supports their convictions. Glasser v. United States, 315 U.S. 60, 62 S.Ct. 457, 86 L.Ed. 680 (1942).

Appellants base their second contention on the government’s alleged failure to comply with due process standards enunciated in Brady v. Maryland, 373 U.S. 83, 83 S.Ct. 1194, 10 L.Ed.2d 215 (1963). Brady compels the prosecution to disclose material evidence favorable to the accused. That principle has been expanded to include evidence useful for impeachment purposes. Giglio v. United States, 405 U.S. 150, 92 S.Ct. 763, 31 L.Ed.2d 104 (1972); Williams v. Dutton, 400 F.2d 797 (5th Cir. 1968), adhered to sub nom., Evans v. Dutton, 441 F.2d 657 (5th Cir. 1971).

On July 30, 1973 defense attorneys and the United States Attorney participated in a pre-trial Omnibus hearing at which they agreed to reciprocal discovery pursuant to Rule 16, Fed.R.Crim.P. The order required disclosure of all the government’s documentary evidence by August 6, 1973, with supplementation as relevant evidence came into the government’s possession between the time of conference and trial. On August 1 the government delivered thirty documents to the defense, all the prosecuting attorney had in their files.

More than a month following the Omnibus deadline Smith’s counsel interviewed prospective government witnesses who showed him copies of documents they had allegedly given postal inspectors years before. The next Monday defense counsel telephoned the United States Attorney’s office demanding production of the additional documents. Government counsel replied, “We’re xeroxing them now.” The documents government attorneys were reproducing, however, did not emanate from postal inspectors’ files. Rather, they were obtained from various witness-investors in the course of the prosecution’s interviews with the witnesses on the previous Saturday.

At any rate, defense attorneys were notified on Monday, September 10, that additional documents were available for their inspection. Smith’s counsel obtained approximately one hundred new documents on Friday, while Hildebrand’s attorney waited until Sunday. The delay from Monday to Friday in the case of Smith and from Monday to Sunday in Hildebrand’s case is not attributable to the government in any respect. Trial began the next Monday morning, at which time both appellants filed motions to dismiss the indictment with prejudice due to the government’s alleged pre-trial derelictions.

The additional documents consisted of copies of contracts signed by investors in the Electro Chef distribution scheme, as well as some handwritten notes by Smith. The only features distinguishing the second set of contracts from those already in appellants’ possession were the names, dates, and states which were written on the contract forms. The substance of the printed franchising agreements was identical in Georgia, Alabama, Louisiana, and Texas. Nonetheless, appellants asservate that possession of the documents at an earlier date would have enabled them to present a better defense. They also claim the United States Attorney’s office should be held responsible for nondisclosure of documents which they claim were held by postal inspectors for a prolonged period preceding trial.

We cannot agree with appellants’ contention that the government’s conduct in the circumstances violated the prescriptions of Brady. The United States Attorney’s office disgorged all the relevant documents in its possession a week prior to trial. Only the cunctation of defense attorneys prevented earlier digestion of their contents. It is questionable whether documents acquired from witnesses on Saturday could have been made available to the defense earlier than Monday.

The principles of Brady do not apply unless the evidence is material to exculpation or impeachment. United States v. Frick, 490 F.2d 666 (5th Cir. 1973); United States v. Davis, 487 F.2d 1249 (5th Cir. 1973). The fact that the new documents mirrored those already in appellants’ possession evidences their classically cumulative nature. Smith and Hildebrand were themselves signatories to the original contracts, so disclosure of their terms could not have come as a complete surprise. Moreover, the franchise agreements formed much of the basis for inculpating appellants. We therefore entertain serious doubts that these documents were materially exculpatory. In any event, no prejudice occurred as a result of delay in their production. See United States v. James, 495 F.2d 434 (5th Cir. 1974); United States v. Long, 468 F.2d 755 (8th Cir. 1972) ; United States v. Saitta, 443 F.2d 830 (5th Cir. 1971); Adams v. United States, 347 F.2d 665 (5th Cir. 1965).

Nor do we sustain appellants’ correlative contention concerning alleged suppression of evidence in post office files. Neither the arguments of appellants nor the record disclose any harmful error from the alleged failure of the prosecution to deliver certain documents which appellants claim must have been in the possession of some unidentified postal inspectors. If such documents existed, they were not used in evidence against the appellants. The record contains not even a scintilla of evidence to suggest deliberate suppression by prosecutorial officials. See generally United States v. Hauff, 473 F.2d 1350 (7th Cir. 1973) .

It is not claimed that the alleged undisclosed documents differed in any substantial manner from those which the government obtained from the witnesses and proffered to defense counsel a full week before trial. Indeed, the record indicates they were the same form, type and nature of printed contracts which appellants had freely and indiscriminately used throughout their entire operations in several states. Appellants’ reliance on United States v. Bryant, 142 U.S.App.D.C. 132, 439 F.2d 642 (1971), and United States v. Deutsch, 475 F.2d 55 (5th Cir. 1973), is thus misplaced. Those cases dealt with evidence crucial to a determination of the guilt or innocence of the accused. Here appellants simply assert that if the documents they assume existed had been presented to them, their memory of events might have been sharpened and quickened. We refuse to reverse their convictions on such a slender conjectural thread.

Moreover, the evidence of appellants’ guilt is clear and overwhelming. Witness after witness delineated in convincing detail the deceptive and devious practices of the appellants. It is difficult to conceive of the possibility that contracts in printed form which might have been in the possession of some postal inspector at an undisclosed location would have benefitted the appellants in the slightest degree.

Appellants raise other grounds for reversal of the trial court’s judgment, including various evidentiary rulings, re-instruction of the jury, and surplusage in the indictment. We have reviewed their contentions, and they are without merit.

The judgments of conviction are affirmed.

      . Pursuant to a plea bargain, McDevitt pled guilty to one count of the indictment and agreed to testify for the government. On cross-examination defense counsel explored the circumstances surrounding McDevitt’s guilty plea in some detail.

      . Appellants have based their contentions both at trial and on appeal on the assumption that these documents originated in postal inspectors’ files. The record discloses, however, that government attorneys had no knowledge of the additional documents until they were presented by witnesses on Saturday, September 8. Confusion apparently arose over what the prosecuting attorney meant by the phrase “We’re xeroxing them now,” in his telephone conversation with defense counsel. Opposing parties evidently attached different meanings to the word “them.” The United States Attorney presumably referred to documents signed by prospective witness-investors, while Smith’s counsel made reference to relevant documents held by postal officials. This “communications breakdown” continued through appeal. We have no reason, however, to doubt the prosecution’s continued assurances that the documents came from witnesses.

      . Counsel for appellants admitted at oral argument that these documents contained nothing new.

      . In Bryant tape recordings of conversations surrounding the sale of narcotics in a hotel room were lost by agents of the Bureau of Narcotics and Dangerous Drugs. Noting their critical nature, the Court of Appeals for the District of Columbia remanded for further development of facts surrounding their loss. In Deutsch the undisclosed evidence was the personnel file of the prosecution’s principal witness, a post office employee. The government’s entire case rested upon his testimony. This court remanded for an examination of the personnel file to determine whether it would have afforded useful cross-examination.