307 F.3d 1351

United States Court of Appeals,
Federal Circuit.

John M.J. MADEY, Plaintiff–Appellant,
v.
DUKE UNIVERSITY, Defendant–Appellee.

No. 01–1567.
Oct. 3, 2002.

Attorneys and Law Firms  

Randall M. Roden, Tharrington Smith, L.L.P., of Raleigh, North Carolina, argued for plaintiff-appellant. Of counsel on the brief was James L. Lester, MacCord Mason PLLC, of Greensboro, North Carolina.

John A. Bauer, Fulbright & Jaworski LLP, of New York, New York, argued for defendant-appellee. Of counsel on the brief were John M. Simpson, John E. Lynch, and Caroline M. Mew, of Fulbright & Jaworski LLP, of Washington, DC. Also of counsel on the brief was Jeffrey L. Wilson, of Durham, North Carolina.

Before BRYSON, GAJARSA, and LINN, Circuit Judges.

Opinion

GAJARSA, Circuit Judge.

Dr. John M.J. Madey (“Madey”) appeals from a judgment of the United States District Court for the Middle District of North Carolina. Madey sued Duke University (“Duke”), bringing claims of patent infringement and various other federal and state law claims. Pursuant to a motion filed by Duke under Federal Rule of Civil Procedure (“FRCP”) 12(b)(1), the district court dismissed-in-part certain patent infringement claims and dismissed certain other claims. Madey v. Duke Univ., No. 1:97CV1170, slip op. at 12–14, 38–40 (M.D.N.C. Dec. 1, 1999) (“Dismissal Opinion”). After discovery, the district court granted summary judgment in favor of Duke on the remaining claims. For a first set of alleged infringing acts, it held that the experimental use defense applied to Duke's use of Madey's patented laser technology. For a second set of alleged infringing acts, it held that Duke was not the infringing party because a third-party owned and controlled the allegedly infringing laser equipment. Madey v. Duke Univ., No. 1:97CV1170, slip op. at 12–15, 18, 20 (M.D.N.C. June 15, 2001) (“Summary Judgment Opinion”). The district court erred in its partial dismissal, erred in applying the experimental use defense, but, for the second set of alleged infringing acts, correctly determined that Duke did not infringe because it did not own or control the equipment. Accordingly, we reverse-in-part, affirm-in-part, and remand.

BACKGROUND

In the mid–1980s Madey was a tenured research professor at Stanford University. At Stanford, he had an innovative laser research program, which was highly regarded in the scientific community. An opportunity arose for Madey to consider leaving Stanford and take a tenured position at Duke. Duke recruited Madey, and in 1988 he left Stanford for a position in Duke's physics department. In 1989 Madey moved his free electron laser (“FEL”) research lab from Stanford to Duke. The FEL lab contained substantial equipment, requiring Duke to build an addition to its physics building to house the lab. In addition, during his time at Stanford, Madey had obtained sole ownership of two patents practiced by some of the equipment in the FEL lab.

At Duke, Madey served for almost a decade as director of the FEL lab. During that time the lab continued to achieve success in both research funding and scientific breakthroughs. However, a dispute arose between Madey and Duke. Duke contends that, despite his scientific prowess, Madey ineffectively managed the lab. Madey contends that Duke sought to use the lab's equipment for research areas outside the allocated scope of certain government funding, and that when he objected, Duke sought to remove him as lab director. Duke eventually did remove Madey as director of the lab in 1997. The removal is not at issue in this appeal, however, it is the genesis of this unique patent infringement case. As a result of the removal, Madey resigned from Duke in 1998. Duke, however, continued to operate some of the equipment in the lab. Madey then sued Duke for patent infringement of his two patents, and brought a variety of other claims.

A. The Patents and Infringing Equipment

One of Madey's patents, U.S. Patent No. 4,641,103 (“the ′103 patent”), covers a “Microwave Electron Gun” used in connection with free electron lasers. The other patent, U.S. Patent No. 5,130,994 (“the ′994 patent”), is titled “Free–Electron Laser Oscillator For Simultaneous Narrow Spectral Resolution And Fast Time Resolution Spectroscopy.” The details of these two patents are not material to the issues on appeal. Their use in the lab, however, as embodied in certain equipment, is central to this appeal.

The equipment at the Duke FEL lab that practices the subject matter disclosed and claimed in the patents is set forth in the list below, which first lists the equipment and then the patent(s) it embodies.

The three alleged infringing devices are the Mark III FEL, the Storage Ring FEL, and the Microwave Gun Test Stand. Although it is not clear from the record, perhaps because Duke defended by asserting experimental use and government license defenses, Duke seems to concede that the alleged infringing devices and methods read on the claims of the patents. Although the three devices were housed in Duke's physics facilities, the Microwave Gun Test Stand was not Duke's asset, but rather belonged to North Carolina Central University (“NCCU”).

B. Duke's Relationship with NCCU

Madey and Duke built the Microwave Gun Test Stand as a subcontractor to NCCU after the government awarded NCCU a contract to study microwave guns (the “AFOSR Contract”). Professor Jones of NCCU was the principal investigator under this government project. The Microwave Gun Test Stand was built and housed in the Duke FEL lab. The AFOSR Contract listed the Microwave Gun Test Stand as NCCU's asset.

C. The District Court's Dismissal Opinion

Duke moved to dismiss the infringement claims under the ′103 patent under both FRCP 12(b)(1) for lack of subject matter jurisdiction, and under FRCP 12(b)(6) for failure to state a claim upon which relief can be granted. Dismissal Opinion at 9 n. 2. The district court granted the first motion in part, but denied the second motion. Madey alleges on appeal that the district court erred in its FRCP 12(b)(1) partial dismissal.

Motion to Dismiss under FRCP 12(b)(1)

The district court reasoned that Duke's alleged unauthorized use of the ′ 103 patent fell into two categories: (i) use in furtherance of an Office of Naval Research (“ONR”) grant; and (ii) use that exceeds the authorized scope of the ONR grant. The district court determined that if all the unauthorized use fell in the first category, jurisdiction would lie in the Court of Federal Claims. On the other hand, if all of the unauthorized use fell in the second category, jurisdiction would lie in federal district court. In all probability, however, the use spanned both categories.

To make the determination as to whether dismissal under FRCP 12(b)(1) was proper, the district court relied on 28 U.S.C. § 1498(a), set forth below.

(a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner's remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture ....

For the purposes of this section, the use or manufacture of an invention described in and covered by a patent of the United States by a contractor, a subcontractor, or any person, firm, or corporation for the Government and with the authorization or consent of the Government, shall be construed as use or manufacture for the United States ....

28 U.S.C. § 1498(a) (2000) (emphasis added).

The district court reasoned that under § 1498(a) Madey must sue in the Court of Federal Claims for any use in furtherance of the ONR grant. Dismissal Opinion at 10–11. This reasoning assumes that the ONR grant provides the “authorization or consent” of the government to be sued, and designates Duke's use as “by or for” the United States. The district court did not, however, discuss or analyze the particular statements or aspects of the ONR grant that provided the government's authorization or consent to be sued. Nor did the court discuss or characterize Duke's use or manufacture as “by or for the United States.”

The district court acknowledged that the use at issue was potentially mixed between the two categories, within the scope of the ONR grant, and without. The district court applied Fourth Circuit law, under which the burden of proving subject matter jurisdiction is with the plaintiff. Id. at 11 (quoting Richmond, Fredericksburg & Potomac R.R. Co. v. United States, 945 F.2d 765, 768 (4th Cir.1991)). Thus, even at the pleading stage, according to the district court, the nonmoving party must set forth evidence of specific “jurisdictional” facts to show that a genuine issue of material fact exists; the moving party prevails only if the material jurisdictional facts are not in dispute. Id. (citing Trentacosta v. Frontier Pac. Aircraft Indus., 813 F.2d 1553, 1558 (9th Cir. 1987)).

The district court rejected Duke's contention that even if only some use is for the government, the claim should be dismissed. The court noted that the extent of Duke's “use of the ′103 patent for private purposes is unclear.” Id. at 13. The court acknowledged that discovery would be necessary to determine the nature and extent of Duke's private use. However, for Duke's use of the patents “under the authority of the government research grant,” the district court dismissed Madey's claim without prejudice.[FN1]

D. The District Court's Summary Judgment Opinion

Among Duke's motions for summary judgment, two are relevant on appeal, entitled by the district court as: (i) the “Patent Motion;” and (ii) the “Test Stand Gun Motion.”

The Patent Motion and the Experimental Use Defense

The district court acknowledged a common law “exception” for patent infringement liability for uses that, in the district court's words, are “solely for research, academic or experimental purposes.” Summary Judgment Opinion at 9 (citing Deuterium Corp. v. United States, 19 Cl.Ct. 624, 631, 14 USPQ2d 1636, 1642 (1990); Whittemore v. Cutter, 29 F. Cas. 1120 (C.C.D.Mass.1813) (No. 17,600); and citing two commentators[FN2]). The district court recognized the debate over the scope of the experimental use defense, but cited this court's opinion in Embrex, Inc. v. Service Engineering Corp., 216 F.3d 1343, 1349, 55 USPQ2d 1161, 1163 (Fed. Cir. 2000) to hold that the defense was viable for experimental, non-profit purposes. Summary Judgment Opinion at 9 (citing Embrex, 216 F.3d at 1349, 55 USPQ2d at 1163 (noting that courts should not “construe the experimental use rule so broadly as to allow a violation of the patent laws in the guise of ‘scientific inquiry,’ when that inquiry has definite, cognizable, and not insubstantial commercial purposes” (quoting Roche Prods., Inc. v. Bolar Pharm. Co., 733 F.2d 858, 863, 221 USPQ 937, 940 (Fed.Cir.1984))[FN3])).

After having recognized the experimental use defense, the district court then fashioned the defense for application to Madey in the passage set forth below.

Given this standard [for experimental use], for [Madey] to overcome his burden of establishing actionable infringement in this case, he must establish that [Duke] has not used the equipment at issue “solely for an experimental or other non-profit purpose.” 5 Donald S. Chisum, Chisum on Patents § 16.03[1] (2000). More specifically, [Madey] must sufficiently establish that [Duke's] use of the patent had “definite, cognizable, and not insubstantial commercial purposes.” Roche Prods., Inc. v. Bolar Pharm. Co., 733 F.2d 858, 863 (Fed.Cir.1984), cert. denied, 469 U.S. 856, 105 S.Ct. 183, 83 L.Ed.2d 117 (1984).

Summary Judgment Opinion at 10.

On appeal, Madey attacks this passage as improperly shifting the burden to the plaintiff to allege and prove that the defendant's use was not experimental. Before the district court, Madey argued that Duke's research in its FEL lab was commercial in character and intent. Id. Madey relied on Pitcairn v. United States, 212 Ct.Cl. 168, 547 F.2d 1106, 192 USPQ 612 (1976), where the government used patented rotor structures and control systems for a helicopter to test the “lifting ability” and other attributes of the patented technology. Pitcairn, 547 F.2d at 1125–26, 192 USPQ at 625. The Pitcairn court held that the helicopters were not built solely for experimental purposes because they were also built to benefit the government in its legitimate business. Id. Based on language in Duke's patent policy, Madey argues that Duke is in the business of “obtaining grants and developing possible commercial applications for the fruits of its ‘academic research.’ ” Summary Judgment Opinion at 11.

The district court rejected Madey's argument, relying on another statement in the preamble of the Duke patent policy which stated that Duke was “dedicated to teaching, research, and the expansion of knowledge ... [and] does not undertake research or development work principally for the purpose of developing patents and commercial applications.” Id. The district court reasoned that these statements from the patent policy refute any contention that Duke is “in the business” of developing technology for commercial applications. Id. at 12. According to the district court, Madey's “evidence” was mere speculation,[FN4] and thus Madey did not meet his burden of proof to create a genuine issue of material fact.[FN5] Id. The court went on to state that “[w]ithout more concrete evidence to rebut [Duke's] stated purpose with respect to its research in the FEL lab, Plaintiff has failed to meet its burden of establishing patent infringement by a preponderance of the evidence.” Id. at 13.

Finally, under its discussion of the Patent Motion, the district court reasoned that Duke's argument that “essentially all” uses of the patents were covered by a license to the government was moot given the experimental use holding. Despite its mootness determination, the district court went on to partially analyze the government license issue as set forth in the passage below.[FN6] Id. at 16.

The Court does note, however, as it did previously when ruling upon [Duke's] Motion to Dismiss, that all uses that have been made of the patented devices that are covered by such a license are not subject to infringement liability. Id.

The Test Stand Gun Motion

Under the Test Stand Gun Motion, Duke argued that any use of the patented equipment before June 1997 is not infringement because Madey consented to the manufacture and use of the Microwave Gun Test Stand by Duke and NCCU before this date. The district court agreed, concluding that there was no infringement before such date because Madey approved of such use via his direct involvement. Summary Judgment Opinion at 17. Madey does not appeal this issue.

After June 1997, however, Duke's defense is that no one affiliated with Duke used the Microwave Gun Test Stand. Duke relied on attestations by Dr. Jones, the NCCU professor who was the principal investigator for the AFOSR contract. The district court determined that Dr. Jones was not an agent of Duke. Id. at 19–20. It also determined that Dr. Jones controlled physical access to the Microwave Gun Test Stand because he had the key switch to operate the device. Id. at 18. The district court held any contrary assertions by Madey to be “bald allegations and mere speculation.” Id. at 19.

Given Dr. Jones' attestation that he was unaware of any Duke faculty members or employees using the Microwave Gun Test Stand after June 1997, the district court determined that there was no genuine issue of material fact and awarded summary judgment of no infringement to Duke on this issue. Id. at 20.

Supplemental Jurisdiction of Madey's State Law Claims

At the conclusion of its Summary Judgment Opinion, the district court noted that four state law claims remained in the case: conversion of property, misappropriation of business opportunities, constructive fraud, and breach of contract. Id. at 20 n. 6. Given its determination on the two patent infringement motions, the district court declined to exercise supplemental jurisdiction over the outstanding state law claims and dismissed them without prejudice. Id. at 21.

II. DISCUSSION

A. Standard of Review

We review a district court's grant of summary judgment without deference. Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1378, 53 USPQ2d 1225, 1227 (Fed.Cir.1999). Summary judgment is appropriate when the moving party demonstrates that “there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” FRCP 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322–23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). On summary judgment, the evidence must be viewed in the light most favorable to the party opposing the motion, Poller v. Columbia Broad. Sys., Inc., 368 U.S. 464, 473, 82 S.Ct. 486, 7 L.Ed.2d 458 (1962), with doubts resolved in favor of the nonmovant, Cantor v. Detroit Edison Co., 428 U.S. 579, 96 S.Ct. 3110, 49 L.Ed.2d 1141 (1976); Transmatic, Inc. v. Gulton Indus., Inc., 53 F.3d 1270, 1274, 35 USPQ2d 1035, 1038 (Fed.Cir.1995). Once the moving party has satisfied its initial burden, the opposing party must establish a genuine issue of material fact and cannot rest on mere allegations, but must present actual evidence. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Issues of fact are genuine only “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Id. A disputed fact is material to the outcome of the suit if a finding of that fact is necessary and relevant to the proceeding. Id.; General Mills, Inc. v. Hunt–Wesson, Inc., 103 F.3d 978, 980, 41 USPQ2d 1440, 1442 (Fed.Cir.1997).

We review questions of patent law de novo. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1172 (Fed.Cir.1998) (en banc). The determination of infringement, whether literal or under the doctrine of equivalents, is a question of fact. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353, 48 USPQ2d 1674, 1676 (Fed.Cir.1998). On procedural issues, this Court follows the rule of the regional circuit, unless the issue is unique to patent law and therefore exclusively assigned to the Federal Circuit. See Nat'l Presto v. W. Bend Co., 76 F.3d 1185, 1188 n. 2, 37 USPQ2d 1685, 1686 n. 2 (Fed.Cir.1996). Accordingly:

[w]e apply regional circuit law to procedural issues that are not themselves substantive patent law issues so long as they do not (1) pertain to patent law, Flex–Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1365, 57 USPQ2d 1635, 1637 (Fed.Cir.2001) (“We will apply our own law to both substantive and procedural issues ‘intimately involved in the substance of enforcement of the patent right’ ” (citation omitted)), (2) bear an essential relationship to matters committed to our exclusive control by statute, or (3) clearly implicate the jurisprudential responsibilities of this court in a field within its exclusive jurisdiction. Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 1359, 50 USPQ2d 1672, 1675 (Fed.Cir.1999) (en banc in relevant part).

Int'l Nutrition Co. v. Horphag Research Ltd., 257 F.3d 1324, 1328, 59 USPQ2d 1532, 1535 (Fed.Cir.2001).

Review of the district court's interpretation of the experimental use defense and its proper scope are questions of law and statutory interpretation that are reviewed de novo. Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1381, 49 USPQ2d 1144, 1146 (Fed.Cir.1998). A dismissal for lack of subject matter jurisdiction is a procedural question not unique to patent law, therefore we follow the law of the regional circuit. Molins PLC v. Quigg, 837 F.2d 1064, 1066, 5 USPQ2d 1526, 1527 (Fed.Cir.1988) (explaining that justiciability in the district court does not pertain to patent law and thus follows regional circuit law). The United States Court of Appeals for the Fourth Circuit reviews de novo a dismissal under FRCP 12(b)(1). Evans v. B.F. Perkins Co., 166 F.3d 642, 647 (4th Cir.1999).

B. The District Court's Dismissal Opinion

On appeal, Madey argues that the district court improperly applied 28 U.S.C § 1498(a) by failing to make sufficient supporting determinations. As a result, according to Madey, partial dismissal of the ′103 patent infringement claim for Duke's use under the ONR grant was improper. Specifically, Madey argues that the court did not find that Duke's use was “by or for the United States,” and that the use was with the “authorization or consent” of the United States. Madey makes the distinction that a research grant is different from a contract to acquire property or services for the government. Duke, on the other hand, attacks Madey's distinction as meaningless, arguing that either a grant or a contract can meet the prerequisites of § 1498(a).

Based on the district court's findings, we agree with Madey that the district court erred in granting the partial dismissal. Madey, however, also asserts that a research grant can never meet the requirements of § 1498(a). We disagree with this proposition.

The district court did not clearly identify, discuss or analyze the particular statements or aspects of the ONR grant that may have provided the government's authorization or consent to be sued. The court seems to have assumed that a research grant by a federal agency to a university for financial support of scientific research proposed by the university constitutes activity “for the United States” and provides authorization or consent by the United States for patent infringement liability for any patents used in the course of the research. In addition, the court did not discuss or characterize Duke's use or manufacture of the ′103 patent embodiments as “by or for the United States.”

In general, there are two important features of § 1498(a). It relieves a third party from patent infringement liability, and it acts as a waiver of sovereign immunity and consent to liability by the United States. See Crater Corp. v. Lucent Tech., Inc., 255 F.3d 1361, 1364, 59 USPQ2d 1044, 1045 (Fed.Cir.2001) (“If a patented invention is used or manufactured for the government by a private party, that private party cannot be held liable for patent infringement.”); Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 554–55 & n. 6, 16 USPQ2d 1587, 1595–96 & n. 6 (Fed.Cir.1990) (discussing § 1498(a) in two contexts, when raised by a private party as a defense, in which case it is not jurisdictional, and when invoked in a suit against the United States, in which case it is jurisdictional) (citing for support and discussing Sperry Gyroscope Co. v. Arma Eng'g Co., 271 U.S. 232, 235–36, 46 S.Ct. 505, 70 L.Ed. 922 (1926)). Waivers of sovereign immunity are to be strictly construed. See, e.g., Irwin v. Dep't of Veterans Affairs, 498 U.S. 89, 94, 111 S.Ct. 453, 112 L.Ed.2d 435 (1990); Library of Congress v. Shaw, 478 U.S. 310, 318, 106 S.Ct. 2957, 92 L.Ed.2d 250 (1986). This general mantra influences the application of § 1498(a) between private parties because in such a situation § 1498(a) is an affirmative defense. Manville, 917 F.2d at 555 & n. 6, 16 USPQ2d at 1595–96 & n. 6. As a result, one possible consequence of dismissal based on this defense is a suit against the government in the Court of Federal Claims. Id. at 555 & n. 8, 917 F.2d 544, 16 USPQ2d at 1596 & n. 8. In the sphere of this sovereign immunity influence on the defense, the teachings of Crater and Manville illustrate two errors by the district court in dismissing the claims for Duke's use of the ′103 patent under the ONR grant.

First, the district court relied on the doctrine of jurisdictional facts when, as between private parties, § 1498(a) is not jurisdictional. Id. at 555 & n. 6, 16 USPQ2d at 1595–96 & n. 6. The district court applied the Fourth Circuit's general jurisdictional facts doctrine. This is error because Federal Circuit law provides the applicable interpretation of § 1498(a). Section 1498(a) applies exclusively to patent law, meaning that Federal Circuit law applies. Nat'l Presto, 76 F.3d at 1188 n. 2, 37 USPQ2d at 1686 n. 2. One might counter-argue that § 1498(a) is procedural. However, to the extent that § 1498(a) is procedural, it is unique to patent law, which also indicates that Federal Circuit law applies. Id. Federal Circuit law, under Crater and Manville, teaches that § 1498(a) is an affirmative defense and is not jurisdictional. Crater, 255 F.3d at 1364, 59 USPQ2d at 1045; Manville, 917 F.2d at 555 & n. 6, 16 USPQ2d at 1595–96 & n. 6. Because § 1498(a) is not jurisdictional, the jurisdictional facts doctrine does not apply. Therefore, the basis for the district court's partial dismissal was improper.

Second, by failing to explain or demonstrate precisely how the ONR grant authorizes the government's consent to suit or authorizes Duke to use or manufacture the patented articles for the government, the district court has provided no findings or analysis upon which we can base our review of the issue appealed from the court's Dismissal Opinion. Although a research grant may not meet the requirements of § 1498(a), from the limited record presented by the parties, it cannot be determined whether the ONR grant may authorize the necessary predicates for § 1498(a). However, even if Duke ultimately prevails on its assertion of § 1498(a) as an affirmative defense for its use of the ′103 patent under the ONR grant, that does not mean that the district court's dismissal of the claim was without error. The ultimate factual and liability determinations are issues for the district court to determine initially on remand because in addition to evaluating the ONR grant and making the requisite findings, as it noted in its Dismissal Opinion, it has not yet determined which uses fall within the scope of the ONR grant and which uses are outside that scope. See Dismissal Opinion at 13. This determination, as well, seems necessary to support the dismissal in-part.

C. The District Court's Application of Experimental Use

On appeal, Madey asserts three primary errors related to experimental use. First, Madey claims that the district court improperly shifted the burden to Madey to prove that Duke's use was not experimental. Second, Madey argues that the district court applied an overly broad version of the very narrow experimental use defense inconsistent with our precedent. Third, Madey attacks the supporting evidence relied on by the district court as overly general and not indicative of the specific propositions and findings required by the experimental use defense, and further argues that there is no support in the record before us to allow any court to apply the very narrow experimental use defense to Duke's ongoing FEL lab operation. We substantially agree with Madey on all three points. In addition, Madey makes a threshold argument concerning the continued existence of the experimental use doctrine in any form, which we turn to first. Our precedent, to which we are bound, continues to recognize the judicially created experimental use defense, however, in a very limited form.

The Experimental Use Defense

Citing the concurring opinion in Embrex, Madey contends that the Supreme Court's opinion in Warner–Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997) eliminates the experimental use defense. Embrex, 216 F.3d at 1352–53, 55 USPQ2d at 1166–67 (Rader, J., concurring). The Supreme Court held in Warner–Jenkinson that intent plays no role in the application of the doctrine of equivalents. Warner–Jenkinson, 520 U.S. at 36, 117 S.Ct. 1040. Madey implicitly argues that the experimental use defense necessarily incorporates an intent inquiry, and thus is inconsistent with Warner–Jenkinson. Like the majority in Embrex, we do not view such an inconsistency as inescapable, and conclude the experimental use defense persists albeit in the very narrow form articulated by this court in Embrex, 216 F.3d at 1349, 55 USPQ2d at 1163, and in Roche, 733 F.2d at 863, 221 USPQ at 940.

The District Court Improperly Shifted the Burden to Madey

As a precursor to the burden-shifting issue, Madey argues that the experimental use defense is an affirmative defense that Duke must plead or lose. We disagree. Madey points to no source of authority for its assertion that experimental use is an affirmative defense. Indeed, we have referred to the defense in a variety of ways. See Roche, 733 F.2d at 862, 221 USPQ at 939–40 (referring to experimental use as both an exception and a defense). Given this lack of precise treatment in the precedent, Madey has no basis to support its affirmative defense argument. The district court and the parties in the present case joined the issue during the summary judgment briefing. We see no mandate from our precedent, nor any compelling reason from other considerations, why the opportunity to raise the defense if not raised in the responsive pleading should not also be available at the later stages of a case, within the procedural discretion typically afforded the trial court judge.

The district court held that in order for Madey to overcome his burden to establish actionable infringement, he must establish that Duke did not use the patent-covered free electron laser equipment solely for experimental or other non-profit purposes. Summary Judgment Opinion at 10. Madey argues that this improperly shifts the burden to the patentee and conflates the experimental use defense with the initial infringement inquiry.

We agree with Madey that the district court improperly shifted the burden to him. The district court folded the experimental use defense into the baseline assessment as to whether Duke infringed the patents. Duke characterizes the district court's holding as expressing the following sequence: first, the court recognized that Madey carried his burden of proof on infringement; second, the court held that Duke carried its burden of proof on the experimental use defense; and third, the court held that Madey was unable to marshal sufficient evidence to rebut Duke's shifting of the burden. We disagree with Duke's reading of the district court's opinion. See Summary Judgment Opinion at 8–14. The district court explicitly contradicts Duke's argument by stating that Madey failed to “meet its burden to establish patent infringement by a preponderance of the evidence.” Id. at 13. This statement is an assessment of whether Madey supported his initial infringement claim. It is not an assessment of which party carried or shifted the burden of evidence related to the experimental use defense. Thus, the district court did not conclude that Madey failed to rebut Duke's assertion of the experimental use defense. Instead, it erroneously required Madey to show as a part of his initial claim that Duke's use was not experimental. The defense, if available at all, must be established by Duke.

The District Court's Overly Broad Conception of Experimental Use

Madey argues, and we agree, that the district court had an overly broad conception of the very narrow and strictly limited experimental use defense. The district court stated that the experimental use defense inoculated uses that “were solely for research, academic, or experimental purposes,” and that the defense covered use that “is made for experimental, non-profit purposes only.” Id. at 9. Both formulations are too broad and stand in sharp contrast to our admonitions in Embrex and Roche that the experimental use defense is very narrow and strictly limited. In Embrex, we followed the teachings of Roche and Pitcairn to hold that the defense was very narrow and limited to actions performed “for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry.” Embrex, 216 F.3d at 1349, 55 USPQ2d at 1163. Further, use does not qualify for the experimental use defense when it is undertaken in the “guise of scientific inquiry” but has “definite, cognizable, and not insubstantial commercial purposes.” Id. (quoting Roche, 733 F.2d at 863, 221 USPQ at 941). The concurring opinion in Embrex expresses a similar view: use is disqualified from the defense if it has the “slightest commercial implication.” Id. at 1353, 216 F.3d 1343, 55 USPQ2d at 1166. Moreover, use in keeping with the legitimate business of the alleged infringer does not qualify for the experimental use defense. See Pitcairn, 547 F.2d at 1125–26, 192 USPQ at 625. The district court supported its conclusion with a citation to Ruth v. Stearns–Roger Mfg. Co., 13 F.Supp. 697, 713 (D. Colo. 1935), a case that is not binding precedent for this court.

The Ruth case represents the conceptual dilemma that may have led the district court astray. Cases evaluating the experimental use defense are few, and those involving non-profit, educational alleged infringers are even fewer. In Ruth, the court concluded that a manufacturer of equipment covered by patents was not liable for contributory infringement because the end-user purchaser was the Colorado School of Mines, which used the equipment in furtherance of its educational purpose. Id. Thus, the combination of apparent lack of commerciality, with the non-profit status of an educational institution, prompted the court in Ruth, without any detailed analysis of the character, nature and effect of the use, to hold that the experimental use defense applied. Id. This is not consistent with the binding precedent of our case law postulated by Embrex, Roche and Pitcairn.

Our precedent clearly does not immunize use that is in any way commercial in nature. Similarly, our precedent does not immunize any conduct that is in keeping with the alleged infringer's legitimate business, regardless of commercial implications. For example, major research universities, such as Duke, often sanction and fund research projects with arguably no commercial application whatsoever. However, these projects unmistakably further the institution's legitimate business objectives, including educating and enlightening students and faculty participating in these projects. These projects also serve, for example, to increase the status of the institution and lure lucrative research grants, students and faculty.

In short, regardless of whether a particular institution or entity is engaged in an endeavor for commercial gain, so long as the act is in furtherance of the alleged infringer's legitimate business and is not solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, the act does not qualify for the very narrow and strictly limited experimental use defense. Moreover, the profit or non-profit status of the user is not determinative.

In the present case, the district court attached too great a weight to the non-profit, educational status of Duke, effectively suppressing the fact that Duke's acts appear to be in accordance with any reasonable interpretation of Duke's legitimate business objectives.[FN7] On remand, the district court will have to significantly narrow and limit its conception of the experimental use defense. The correct focus should not be on the non-profit status of Duke but on the legitimate business Duke is involved in and whether or not the use was solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry.

D. The District Court's Analysis of the Test Stand Gun Motion

In contrast to our conclusion that the district court erred in its dismissal-in-part of the alleged ′103 patent infringement and its application of the experimental use defense, we find no error in the court's summary judgment conclusion that there is no genuine issue of material fact concerning Duke's non-use of the NCCU Microwave Gun Test Stand during the relevant time period.

Specifically, the district court found that NCCU, through the subcontractor agreement it had with Duke, owned the Microwave Gun Test Stand, and that Dr. Jones of NCCU controlled the gun with a key switch. Even though the gun was located on Duke's premises, Dr. Jones stated that no Duke faculty member or employee had used the gun during the relevant time period. This evidence of ownership, control, and no known Duke use, is sufficient to shift the summary judgment burden to Madey, who, in the district court's words, offers in response only bare allegations and speculation. Most of the response is testimony by Madey himself.

Madey contends that Duke and Dr. Jones have tacitly admitted to disputed questions of fact concerning whether Duke had any control or benefit over the Microwave Gun Test Stand. In addition, Madey contends that joint publications by Dr. Jones and Duke faculty, as well as research interests held by Duke faculty in areas potentially implicated by the Microwave Gun Test Stand, demonstrate disputed material facts about Duke's benefit and influence over the gun. Like the district court, we do not find that the record supports Madey's contentions, nor do we concur in the inferences in which Madey would have us draw. See Anderson, 477 U.S. at 248, 106 S.Ct. 2505 (explaining that a party cannot create a genuine issue of material fact based on mere allegations, but must present actual evidence); Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1206–07, 18 USPQ2d 1016, 1021 (Fed.Cir.1991) (explaining that the patent-holder's alleged inferences were mere speculation and thus not supportable).

In addition, we note that the record does not indicate that Madey plead any vicarious liability claims, such as alleging that Duke induced NCCU's infringement, or contributory infringement claims. To the extent that this was a strategic decision or tactical choice on Madey's part, he should not be allowed to overcome this choice now by acceptance of allegations and speculation as genuine issues of material fact.

E. Additional Matters

Finally, we note two additional matters in response to the parties' arguments before us and for the district court's attention on remand.

Duke's Assertion of a Government License Defense

Before this court, Duke argued vehemently that even if we did not agree with the district court's application of the experimental use defense that we could affirm the district court's judgment on alternate grounds: that the government had a license to have the patents at issue practiced on its behalf. We disagree with Duke's assertion because it overstates the information contained in the record on appeal. The only concrete evidence Duke cites is the statements on each of the patents noting that the government has rights in the patents. This, however, is insufficient because these short notations on the patents do not define the scope of the government's rights. None of the controlling contracts that would define the scope of such rights are provided in the record nor discussed by Duke in its arguments.

In addition, Duke discusses at length the Bayh–Dole Act, urging that this provides a basis to conclude that the scope of the rights granted to the government encompass Duke's use. Madey, however, notes that the provisions cited by Duke were enacted into law after Madey's two patents issued. Thus, some other provision may have generated the “government rights” notation on the two patents. In sum, this discussion serves to illustrate that the government license issue needs further development before the district court if it is to ultimately provide Duke the defense it seeks.

The District Court's Supplemental Jurisdiction Determination

At the end of its Summary Judgment Opinion, the district court declined to exercise supplemental jurisdiction over four state law claims remaining in the case: conversion of property, misappropriation of business opportunities, constructive fraud, and breach of contract. Summary Judgment Opinion at 20 n. 6. On remand, given our reversal of the district court's application of the experimental use defense, these claims are still initially available to Madey.

III. CONCLUSION

The district court erred in its application of the common law experimental use defense, and, consequently, incorrectly found that there was no genuine issue of material fact upon which Madey could prevail. In addition, the court's dismissal-in-part of Duke's use of the ′103 patent embodiments under the government ONR grant was in error. Due to these errors, further proceedings are necessary. This includes the opportunity for the district court to reevaluate the issues we remand in light of this opinion, for the parties to litigate Duke's asserted government license defense, and for the court to potentially consider the state law claims in accordance with the case's progression. Accordingly, we affirm-in-part and reverse-in-part the district court's decision and remand for additional proceedings consistent with this opinion.

AFFIRMED–IN–PART, REVERSED–IN–PART, AND REMANDED.

Footnotes

[FN1] 1 The district court also ruled on various other motions to dismiss. First, it granted a motion by a number of individual defendants named with Duke to dismiss Madey's claims against them pursuant to FRCP 8, 9(b) and 12(b)(6). Dismissal Opinion at 6. Specifically, without reaching the merits of Rule 9(b) or Rule 12(b)(6), the district court dismissed Madey's claims against the individual defendants under Rule 8 because the claims did not provide sufficient notice to the individual defendants. Id. at 7–8. Madey has not appealed this dismissal.

Second, the district court denied Duke's motions to dismiss Madey's claims for conversion of property, id. at 16, misappropriation of business opportunities, id. at 21, constructive fraud, id. at 33, and breach of contract, id. at 38. However, the court granted Duke's motions to dismiss Madey's age discrimination claims, id. at 27, and civil rights claims, id. at 30. Madey has not appealed the district court's grant of these last two motions.

[FN2] Janice M. Mueller, No “Dilettante Affair”: Rethinking the Experimental Use Exception to Patent Infringement for Biomedical Research Tools, 76 Wash. L.Rev. 1, 17 (2001); 5 Chisum on Patents § 16.03[1] (2000).

[FN3] The accused infringer in Roche sought to assert the experimental use defense to allow early development of a generic drug. After the Roche decision, however, Congress changed the law, overruling Roche in part, but without impacting the experimental use doctrine. Congress provided limited ability for a company to practice a patent in furtherance of a drug approval application. See Deuterium, 19 Cl.Ct. at 632 n. 14, 14 USPQ2d at 1642 n. 14.

[FN4] Madey also argued that Duke's acceptance of funding from the government and private foundations was evidence of developing patented devices with commercial intent. The district court also rejected this proposition. Summary Judgment Opinion at 13 (citing Ruth v. Stearns–Roger Mfg. Co., 13 F.Supp. 697, 713 (D. Colo. 1935) (concluding that the experimental use defense applies when a university uses a patented device in furtherance of its educational purpose); Ronald D. Hartman, Experimental Use as an Exception to Patent Infringement, 67 J. Pat. Off. Soc'y 617, 633 (1985) (concluding that Ruth supports application of the experimental use defense to a university's operations in furtherance of its educational function)).

[FN5] The district court discussed and dismissed in a footnote other evidence suggested by Madey, including the fact that Duke had established (but not yet applied) an hourly fee for industrial users wishing to use the FEL lab's resources, and statements from Duke's website for the FEL lab indicating an interest in corporate partnerships. Id. at 15 n. 2.

[FN6] In a footnote, the district court cites to a section from the Bayh–Dole Act to support its reasoning that the government has a license to have patents practiced on its behalf when the government contributed to the funding of such patents. Id. at 16 n. 3 (citing 35 U.S.C. § 202(c)(4) (2000)). The relevant section is set forth below.

(c) Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following:

...

(4) With respect to any invention in which the contractor elects rights, the Federal agency shall have a nonexclusive, nontransferrable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world ....

35 U.S.C. § 202(c)(4) (2000).

The district court stated that the “funding agreements for the inventions created under the ′994 and ′103 patents expressly provide that the Government retained rights in those inventions.” Id. Thus, the district court reasoned, in light of the Bayh–Dole Act, Duke's use of the patents that has been authorized by the government does not constitute patent infringement. Finally, the district court noted that:

[a]lthough the parties have presented conflicting evidence as to the extent to which the patented devices have been used for a purpose consented to by the Government, because [Madey] has failed to create a genuine issue of material fact as to whether [Duke] has commercially benefited or intends to do so with respect to the patents at issue, the uses that have been made to date with respect to both patents are, at this point, exempt from infringement liability.

Id.

[FN7] Duke's patent and licensing policy may support its primary function as an educational institution. See Duke University Policy on Inventions, Patents, and Technology Transfer (1996), available at http:// www.ors.duke.edu/policies/patpol.htm (last visited Oct. 3, 2002). Duke, however, like other major research institutions of higher learning, is not shy in pursuing an aggressive patent licensing program from which it derives a not insubstantial revenue stream. See id.

Massachusetts Bay Transportation Authority v. Anderson

TRANSCRIPT OF HEARING ON
MOTION FOR TEMPORARY RESTRAINING ORDER
BEFORE THE HONORABLE DOUGLAS P. WOODLOCK
UNITED STATES DISTRICT JUDGE

August 9, 2008

APPEARANCES:

For the plaintiff: Ieuan-Gael Mahony, Esquire Scott Donnelly, Esquire Holland & Knight, LLP 10 St. James Avenue, Suite 12 Boston, MA 02116 617-575-5835 ieuan.mahony@hklaw.com

For MIT: Jeffrey Swope, Esquire Palmer & Dodge, LLP 111 Huntington Avenue Boston, MA 0199-7613 jswope@palmerdodge.com

For individual Defts: Jennifer Stisa Granick, Esq. Marcia Hoffman, Esquire Electronic Frontier Foundation, 454 Shotwell St. San Francisco, CA 94110 415-436-9333 jennifer@eff.org 

COURT CALLED INTO SESSION THE CLERK:

Calling the case of Civil Action 08-11364, Massachusetts Bay Transportation Authority v. Zack Anderson, et al. Will counsel please identify themselves for the record?

MR. MAHONEY: Ieuan Mahony from Holland & Knight for the plaintiff, MBTA.

MR. DONNELLY: Scott Donnelly for the plaintiff, MBTA. I’m also here with MBTA general counsel, Bill Mitchel, MBTA deputy general manager for Systemwide Monitorization, Joe Kelly, and Jack McGlaughlin, who is MBTA project director for Systemwide Monitorization, which deals with the Automated Fare Collection system and the CharlieCard system.

MR. SWOPE: Good morning, Your Honor, Jeffrey Swope from Edwards, Angell, Palmer and Dodge. With me is general counsel for MIT, Gregory Morgan, and other counsel Jay Wilcox.

THE COURT: Now, I understand as well that we have on the phone three attorneys I guess in Las Vegas, Jennifer Granick Opsahl and Marshal Hoffman.

Ms. Granick, are you here?

MS. GRANICK: Yes, Your Honor, good morning. I’m actually in San Francisco right now--

THE COURT: All right.

MS. GRANICK: --and my colleagues are in Las Vegas.

THE COURT: And are you affiliated with a law firm?

MS. GRANICK: We are from the Electronic Frontier Foundation, which is located in San Francisco.

THE COURT: And are you separately representing the individuals?

MS. GRANICK: We are representing them jointly.

THE COURT: All right. And I want to be sure you understand the ground rules here. I understand that you represent that you’re representing all of the individuals here. Do you understand that as a consequence you are their agents and that any order that I enter here would be understood to have provided notice to your clients. Do you understand?

MS. GRANICK: Yes, Your Honor, I understand that. I believe that our clients, Zack Anderson, RJ Ryan and Allesandro Chiesa are on the call listening in from the Las Vegas end of the conversation.

THE COURT: All right. So--

MS. GRANICK: They are listening to the proceedings in this hearing, Your Honor.

THE COURT: All right. So Mr. Anderson, are you present? 

MR. ANDERSON: Yes, I am.

THE COURT: Mr. Ryan, are you present?

MR. RYAN: Yes, I am.

THE COURT: And, Mr. Chiesa, if I pronounce it correctly, are you present? Mr. Chiesa?

UNIDENTIFIED: He stepped out of the room.

THE COURT: Mr. Chiesa?

MS. GRANICK: I think I hear them say he stepped out of the room for a moment.

THE COURT: All right. As soon as he comes back I’d like to have him identify himself, so Mr. Anderson and Mr. Ryan, you’ll tell him to do that when he comes back in the room?

MR. RYAN: Yes, Your Honor.

HE COURT: Do you understand that, Mr. Anderson, Mr. Ryan?

MR. RYAN: Yes, Your Honor.

MR. ANDERSON: Yes, Your Honor.

THE COURT: All right. I’ve been presented this morning with some additional materials filed by the MBTA, in particular a declaration of Mr. Henderson. And in the Declaration of Mr. Henderson at paragraph 15 he states that he received a voice mail from Mr. Anderson at 6:49 p.m. last night stating that his lawyers had advised him not to send the presentation materials in connection with the DEFCON presentation for Sunday.

Is that correct?

MS. GRANICK: Yes, Your Honor. We wanted to, when we realized that the MBTA had filed a lawsuit against our client and wanted to review the materials, we wanted to take an opportunity to go over the materials with our client before providing them to opposing counsel.

THE COURT: Have you done so?

MS. GRANICK: Of course--

THE COURT: Have you done so?

MS. GRANICK: Yes. We have reviewed our materials with our clients and we provided them to opposing counsel late last night by email, and those materials I believe have been attached to Mr. Mahoney’s declaration as Exhibit 7. So I believe they’re currently before the Court as well.

THE COURT: All right. These are the entire materials that you intend for presentation?

MS. GRANICK: Those are the visual materials.

THE COURT: Well, is there anything else that is of substance for the presentation?

MS. GRANICK: No, Your Honor.

THE COURT: There will be nothing beyond what’s shown on these several slides?

MS. GRANICK: No, Your Honor. I think that the slides are visual and do not, they may not completely, I don’t think they’re – the slides are complete, but they do not constitute as many PowerPoint presentations do bullet points of what will be discussed. So, Your Honor, I think what the slides--

THE COURT: Just a moment. Is there anything of substance to the presentation, anticipated for the presentation that is not on the slides?

MS. GRANICK: No, Your Honor.

THE COURT: Mr. Mahony, do you intend to have someone explain what problems, if any, are presented by these slides?

MR. MAHONY: Your Honor, we made numerous requests for these materials.

THE COURT: I don’t want to hear history now.

MR. MAHONY That’s fine. Your Honor, I spoke with Scott Henderson at 6:00 this morning at Logan Airport and with a Daniel Tieran from Shatten Bockman again at 6:00 at Logan Airport before their 8:00 flight to Las Vegas to go over these slides. It was not possible, Your Honor, to obtain any affidavit, declaration for the Court.

THE COURT: What’s the representation?

MR. MAHONY: The representation is I have materials that I can take the Court through on an oral basis and walk through those particular slides that cause concern. I also point out, Your Honor, that my sister has said, and I think this is accurate, that the slides do not provide what will be discussed at the particular presentation.

THE COURT: I don’t believe that’s what she said. What she said, and if you will confirm this for me, Ms. Granick, is that the slides contain the substance of everything that is going to be presented at the hearing, during the presentation of the defendants; is that correct?

MS. GRANICK: Yes, Your Honor, that’s correct. And I can elaborate on that to be more concrete. I want to, Your Honor, you have seen the slides and so as you know many of them are visual depictions which are depictions of what the presentation will contain, but is not a verbatim transcript. That’s the only reason why I’m being a little bit cautious about saying unqualified yet. It’s not a transcript, but those slides are the complete representation of what the talk is about.

THE COURT: Well, and the substance of that talk.

MS. GRANICK: And the substance of that talk, exactly.

MR. MAHONY: Your Honor, if I may as well, just to get assurances, on page 37 of the slides there’s a slide that says demo--

THE COURT: Hold on a second.

MR. MAHONY: Yes.

THE COURT: Okay, go head.

MR. MAHONY: The slide says up at the top, Demo, magcard and reverse engining tool kit. That looks like a demonstration that is outside the four corners of the slides.

THE COURT: All right. So, Ms. Granick?

MR. MAHONY: There’s also a point here, wrote--

THE COURT: Let me do it go step-by-step unless it’s necessary for me to hear more of the various objections you have?

MR. MAHONY: Thank you, Your Honor.

THE COURT: This is the first objection that you

MR. MAHONY: Correct.

THE COURT: That there’s some sort of demo contemplated here?

MR. MAHONY: Correct.

THE COURT: All right, Ms. Granick? What do I make of the demo that suggests can now forge cards?

MS. GRANICK: Yes. I see the slide we’re talking about. It’s entitled Demo Magcard and Reverse Engineering Tool Kit. THE

COURT: So what are they going to do?

MS. GRANICK: They are going to do a demonstration that shows that they had now created a card that is forged. In other words, one that is not issued by MBTA.

THE COURT: All right.

MS. GRANICK: And the important part of this demonstration realizes that this is a demonstration but it is a, the demonstration will be lacking in some critical information which would be required for another person to duplicate this feat and create a card that is a forged card that could be used with MBTA.

So, Your Honor, if I could talk about just terms of these slides, we have provided a declaration by Erik Johanson who is an expert in the field of RFID and transportation security and he has looked at the slides that our clients are intending to present and, so some of his declaration--

MR. MAHONY: Your Honor, if I may--

THE COURT: Just a moment. Mr. Swope, do you have that declaration?

MR. SWOPE: It was sent to Mr. Wilcox with a request that it be printed. MIT is not offering it as its own, but I do have the document which might make this easier.

THE COURT: All right. Mr. Swope is going to pass up to me, Ms. Granick, what I gather was sent along to him which is this declaration, and let me take a look at the declaration first.

MS. GRANICK: Okay. Your Honor, just let me know when you’re ready for me--

THE COURT: Yes.

MS. GRANICK: --to address it.

THE COURT: I will.

PAUSE

MS. HOFFMAN: Your Honor, this is Marcia Hoffman from – [inaudible] - for Alessandro Chiesa.

THE COURT: All right. Mr. Chiesa, are you present? Mr. Chiesa, are you present?

MR. CHIESA: Present.

THE COURT: All right.

PAUSE

THE COURT: All right. I’ve read Mr. Johanson’s  affidavit the purport of which I gather is that the presentation of the defendants has nothing knew to add?

MS. GRANICK: I’m sorry, Your Honor, could you repeat what you said?

THE COURT: Mr. Johanson says the slides do not describe any new techniques for breaking cartography used by the CharlieCard.

MS. GRANICK: That’s correct – I’m sorry.

THE COURT: And he indicates that everything is in the public record, so what’s the need for the presentation?

MS. GRANICK: Well, that’s – Your Honor, the – you are correct. It says that the research techniques are in the public domain with the exception of one piece of information which is, and the part of the research which is novel performed by the students and that is an application of the research technique to the CharlieTicket, and the way that the CharlieTicket, that the techniques were applied to the CharlieTicket is widely known. What the students discovered is that there is not adequate additional security on the CharlieTicket to prevent them from being compromised according to these already widely known technique. The critical piece of information that the students have discovered, but which is not included in the presentation and which the students never intended to include in the presentation is the check sum, and the check sum is a security technique that is employed to ensure that the card is, that a card is not in any way tampered with. The slides show the check sum and that the check sum changes when the ticket is tampered with, but they do not describe how to compute the check sum and an attacker would not be able to replicate the novel portion of their research without knowing how to compute the check sum.

So basically what the presentation is is as many academic pieces of work are, is a collection of the materials that are already known in the relevant field and an application of that research to a specific case study in order to learn a little bit more about how security, about how security is implemented and the ways in which security techniques can fail to protect the fare system.

THE COURT: So does this add or not to sum of human knowledge on this subject?

MS. GRANICK: Your Honor, I believe that it does add. I think that--

THE COURT: So it adds some increment of – just a moment. It adds some increment of information not presently available based upon their accessing aspects of the computer system; is that correct?

MS. GRANICK: No, Your Honor, it is a piece of information that was the subject of their research paper with Professor Rivest at MIT, so the professor considered it to be a valid piece of original research. It was accepted by the DEFCON conference so the conference organizers felt that it was a piece of research that was interesting to the security people that attend that conference. It was not obtained through any kind of unauthorized access to computers. It was research that they performed by applying existing commonly used research technique to the mag, to examine the magnetic stripe card and the data that are stored on those cards. But the, one of the things that the students have discovered but a piece of information which they have not planned to and do not plan to reveal publicly is how to calculate the check sum, and without the check sum, the information that they’re going to present cannot be used by an attacker to make fraudulent cards. Which gets me to Your Honor’s question about the slide relating to the demo and what the importance is of the demo.

The demo allows the student to demonstrate that they have figured out how to calculate the check sum without revealing how they’ve done it to the people who attend the presentation. So it’s a demonstration that the security is weak and needs improvement but without providing a critical ingredient for an attacker. So they have tried to be, by tailoring the presentation this way, they’ve presented the existing information in their academic field that relates to this. They have presented what new information they done, or new research that they’ve done that pushes the envelope of the information that existed before. My advisor in college used to call it standing on the shoulders of giants. So they show how they are standing on the shoulders of giants, but they have responsibly decided to withhold a piece of information that would allow anybody, somebody who doesn’t have, you know, any kind of academic background or interest in the field and is simply an attacker to make a fraudulent fare card. So that is their, that was their intention from the beginning and is what they communicated to MBTA when they had their meeting on, you know, earlier in the week.

THE COURT: Why isn’t the addition of this information with the focus on check sum an additional piece of information that focuses a potential hacker on places to conduct that hackers own research?

MS. GRANICK: I think that if you saw this presentation you would know that the card has a check sum function on it, but I think that these are, this is information that is already widely known. In fact, it is information--

THE COURT: I’m sorry, Ms. Granick, but you keep going back and forth between the idea that it’s already widely known and that it adds something. Now, if it’s already widely known, then there’s no particular reason for them to be making the presentation. If it is adding something, what is it adding? It’s adding some piece of information that makes it possible for others to focus their attention on the way in which you can hack into these collection systems. The very next slide says, are they hackable? Yes. So--

MS. GRANICK Well, Your Honor--

THE COURT: --you know, the short of it is that what they’re doing is providing research, maybe not complete research but research that focuses the attention of those who have an interest in this area who are not all academics on the--

MS. GRANICK: Your Honor, that--

THE COURT: Just a moment, may I finish? Which is part of the concern that’s expressed in the Computer Fraud and Abuse Act, which we’ll get to in a moment, but there’s something additional, right or wrong?

MS. GRANICK: There is something additional in the presentation, but the fundamental point that you are relating to which is that there is insecurity in the, MIFARE payment system, that is implemented by MBTA, that information is not new. That information is widely known. There have been news reports about it in the newspaper and it is widely known in the academic world where the students, that’s part of this research paper. So yes, it’s true that this information, that this presentation discusses something new. That something new is that this system is in fact vulnerable and that the security mechanism that they put in place is not working and that does let people know that it is possible to defeat the security of the system. I believe that was already widely known, but what the report adds or what the presentation adds is that they are, that these students have figured out how to do it. I don’t, I respectively disagree that the fact that much of this information maybe, whatever percentage of it, 90% or 95% of it is already known, means that there’s no reason for the presentation, that is part of, you know, presenting your work is that there, as I called it, standing on the shoulders of giants, is that you talk about research that’s relevant to your field, but I do think that--

THE COURT: It does, however, Ms. Granick, go to the question of balance of harm.

MS. GRANICK: Well, I think--

THE COURT: Just a moment, just a moment. I think I’ve understood the position that you’re expressing concerning this. Now I want to hear from the plaintiff on this. So we have this proposed demo which I understand will not be so much a demo as a report that they could demonstrate if they wanted to.

MR. MAHONY: That’s correct, Your Honor, and I think the fact that this demonstration is, will focus attention on the fact that it’s a viable solution that the card is hackable and that these individuals will be up there stating this is possible to do. Your Honor, as the Court said, this is providing that the research that focuses the attention of those who have the interest in doing this who may not be academics. Your Honor, this is a competitive--

THE COURT: Look it, I’m really not interested in the conclusions.

MR. MAHONY: Yes.

THE COURT: I really want to get to the specifics of where you say there’s a problem and let me, and I’m going to afford them an opportunity to respond.

MR. MAHONY: Your Honor, the demo, if we look down in the next line here, on the same slide 37, wrote python libraries for analyzing mag cards. Python is a programming language, it’s open source and in the announcements the Court may recall that the MIT, the undergrads said that they were going to provide open source software tools to accomplish the hacks. So, this is not simply saying we did it, aren’t we inventive? It’s also providing a tool to help accomplish this. Our understanding is that these would likely be software tools that would make it easier to analyze the cards, and I’ll point the Court to analysis component in just a second, but, Your Honor, in terms of, my sister said that it’s just the presentation, it’s just the four corners here. We’ve seen the demo as something in addition. If the Court takes a look at the first page of this presentation, so it says, anatomy of subway hack, the Court can see in the bottom it says for updated slides and code. My reading of that, our reading of that is that’s software code. See this website.

So, Your Honor, it’s not simply this slide presentation. It’s--

THE COURT: All right. Now, let me focus on that issue. Ms. Granick, what’s the reference to code?

MS. GRANICK: The reference to code, Your Honor, relates to the software tools that the students plan to release with the presentation and those software tools are not tools which are targeted for the MBTA system. They are generalized, generalized tools that are for reading magnetic cards, for analyzing information on cards, and for reading, using software or open source radio software to listen to the signals from RFID cards and those sorts of things. They are not tools that a malicious attacker could come along and automatically use to crack the check sum security system, the check sum on the MBTA check sum.

THE COURT: Let me ask – just a moment.

MS. GARNICK: And the - I’m sorry.

THE COURT: Let me ask two questions. One, is there any place in the slides where this code is identified and referenced?

MS. GRANICK: Let me take a look, Your Honor.

PAUSE

MS. GRANICK: Well, they show, they refer to the code that they created, the Python written code that’s on the slide that we’ve been looking, wrote the Python library to integrate with the reader/writer, and I can go through the slides and see where the other tools they use are mentioned, Your Honor.

I think the important thing if I could give it up, the open source tool book, is that they are not tools which standing alone allow an attacker to make fraudulent fare cards. And I think that the idea that this presentation for these tools are the things that are going to focus an attacker on the weaknesses in the security system is mistaken. There’s already been news reports in the Boston Globe, in the Boston Herald and in on-line magazines about the security weaknesses in the CharlieCard and the cards generally used for the T.

THE COURT: Well, I think we can – just a moment, Ms. Granick, we’ve been over that. This is your difficult position of saying there’s nothing new except what’s new and what’s new isn’t new, and that it seems to me is not something that I find particularly persuasive. So--

MS. GRANICK: Well, the a way--

THE COURT: Just a moment, just a moment. I think I’ve heard what I need to hear with respect to that issue; that is, there is something more that they propose to offer those who attend that are not included in the slides. So what else?

MR. MAHONY: And, Your Honor, I just note the Court had a question of where else is their code in the slides and if the Court were take a look at page 66 and 67, that there’s code mentioned here that is for, you know, that focus.

Your Honor, if I may--

THE COURT: Yes.

MR. MAHONY: --refer the Court to the actual magstripe information just for a minute. It’s on page 29. And, Your Honor, if could just do a short visual because 29 just has a lot of letters and numbers along dark black lines. Your Honor, I’ve got just a standard credit card here and that the black line on the back is the magnetic stripe. That’s the magstripe. I have my own CharlieTicket here and the black stripe on the front is a magnetic stripe as well. This information here, the information that’s on the magnetic stripe is not meant to be seen. There isn’t coding on the strip. If the Court were to take a look at page 30, what the MIT undergrads have done is map out the code so that these different codes now associated with bits of data. The Court can look at the very bottom, right-hand corner to see the phrase check sum and that’s what my sister has been referring in part.

THE COURT: I’m sorry, that’s what?

MR. MAHONY: My sister has been referring to--

THE COURT: Right.

MR. MAHONY: --that check sum data.

THE COURT: Yes.

MR. MAHONY: If the Court were to take a look at the next page, which is 31, there’s the statement forging the CharlieTicket. So forging these magnetic stripe cards and in 32 it has that same data that you just looked and 33 gives another example to show methods for analyzing the data on these magnetic stripes.

Now, Your Honor, let me point to another objection. So in other words, Your Honor, the mapping, the specifics, the details of this particular card are exposed so that if the lead time or the investment time, that saves me. If I’m interested in this investment time to find it out for myself and it’s public.

Your Honor, on page 35 if I could call the Court’s attention to another example of disclosures and activity targeted to the card that, as far as we know, are not in the - well, let me explain what’s going on here. You can see in the left, at least what we understand is going on here, in the left hand side, we have a card that’s got an issued value of $1.25 so that the user here or the hacker here or the attacker here has spent the $1.25 on this particular card. The card is then converted using these forging and counterfeiting techniques that are disclosed into a card that is worth $100. Again, that’s our understanding of what this is illustrating and again, my sister stated that even on the face of the slides, additional verbal explanation is required because the slides are visual. This slide here may require a paragraph or 10 pages worth of textural description to make it clear to an audience. We have no control, idea, assurance, comfort about what will be said in that two minutes, 30 seconds, 20 minutes of text that is needed to explain this particular slide as one example.

Now, Your Honor, there are some additional concerns that are more along the lines of concerns we talked about yesterday.

THE COURT: Anything more from the slides?

MR. MAHONY: Yes, but Your Honor, these are more - potentially the Court could view these as puffing or as advertising. We think in this context it is not a prank. It’s not good fun. It is an enticement. It is providing research that focuses the attention on a particular target, us. So for example, page 4, the individual defendants state you’ll learn, you will learn from this conference, you will learn how to generate these stored value fare cards. The reverse engineer, the magstripes, and that’s the coding that we looked at, to pull out, to map that coding, had attacked the RFID cards, and those are the stored value cards, et cetera. It goes on. To tap into the fare vending network, and we have some concerns about that that I’m going to get to very recently, I mean, in just a minute. And on page 5, Your Honor, the statement is, and this is very illegal. So the following materials for educational use only. Your Honor, that appears quite tongue and cheek, at least to us. And if the Court were to look on page 24, and I apologize because there’s two page 24’s, I was not in my memory I, but it’s the first page 24, is value stored on the card. In other words, can the card be used as the equivalent of cash? And it says, if it is, try a cloning attack. In other words, duplicating the cards, counterfeiting the cards. In other words, it’s like printing cash. And then, Your Honor, on the second page 24, it says if yes, in other words, if it’s a stored value card, then you now have free subway rides for life.

Now, Your Honor, let me point the Court to one last objection, specific objection, which is on page 71, actually it starts on page 70. this is talking about network security and this is hacking the network. This is beyond simply the Fare Media, Your Honor, that the AFC network includes credit card information. Now, it’s encrypted with very strong triple encryption, but it’s there on the network. There’s a lot of data, private data, data proprietary to the T that’s on the network. It’s well beyond these counterfeiting and forging activities. This is tapping into the MBTA’s own network. Now you can see the third point down found unguarded network switches. Now, Your Honor, that phrase, unguarded must be taken with salt.

THE COURT: With what?

MR. MAHONY: With salt, Your Honor. These, the network switches are within alarmed areas, high security. If they access them they must be very tricky but they certainly knew they weren’t supposed to be there. Now, we see on page 71, fiber switches in an unlocked room. Your Honor, this is a network switch. This is a hub of the network. It’s core computer equipment with software and data and now, Your Honor, on page 71 there’s nothing underneath these huge servers. There’s no graphic underneath them, but if the Court takes a look at page 72, the Court will see a graphic there and that graphic says wire shark. What is wire shark? Wire shark is a way to snip a network. It’s a way to surreptitiously monitor all network traffic. Now, network traffic on the T system because it is sensitive is encrypted but even so, Your Honor, this type of equipment, this software can pick up IT addresses, in other words, where the data is originating, where it’s going to, who is talking to whom essentially and where this information goes. This is very, this is monitoring.

Your Honor, that is sufficient for current purposes to give the Court our view again since 4:30 this morning of this particular document.

THE COURT: All right. What I think I’d like to do then is to, we’ll work our way through the statute to understand first the jurisdiction here and precisely what it is that you’re asking for.

Let me start here with the, what I consider to be the jurisdictional issue. I assume you had a copy of Section 1030 in front of you.

Ms. Granick, do you have a copy of Section 1030 in front of you?

MS. GRANICK: Yes, Your Honor.

THE COURT: Okay.

MR. MAHONY: Your Honor, I apologize. I unfortunately left some things at home.

THE COURT: Here’s a copy of the Federal Criminal Code, Title 18.

MR. MAHONY: Thank you.

PAUSE

THE COURT: Okay. As I understand the thrust of the argument, and this a federal question case only on the basis of Section 1030.

MR. MAHONY: Correct.

THE COURT: The diversity, if I don’t have federal jurisdiction, then this case has to be remanded.

MR. MAHONY: Correct.

THE COURT: Okay. 1030(e)(2)(B) seems to be the claim that you’re making; that is, a computer which is used in interstate or foreign commerce. In your memorandum you state that it’s in interstate or foreign commerce because the computers are for example used to provide the MBTA services in Rhode Island and Massachusetts and you cite to paragraph 7 of Mr. Kelley’s declaration. Paragraph 21 of Mr. Kelley’s declaration indicates that it is not being used for MBTA services in Rhode Island, out of state.

MR. MAHONY: Your Honor, I should be clear, I’m almost positive that that paragraph says the CharlieCards are not being used but the computers themselves are used throughout the system.

THE COURT: Well, but we’re talking about this particular use, aren’t we?

MR. MAHONY: Well, there’s CharlieTickets and CharlieCards, Your Honor. So the – let me just get – Yeah, 21, Your Honor, states, although CharlieCards are not currently employed on the MBTA’s, and we distinguish between CharlieTickets and CharlieCards--

THE COURT: We’re are the CharlieTickets shown to be used for commuter rail?

MR. MAHONY: Actually, Your Honor, a simple method for this, and I may have this wrong, but, Scott?

MR. DONNELLY: The commuter rail runs out of Providence, Rhode Island and the CharlieTickets are used.

 THE COURT: And do you use the same computer for both of them?

MR. DONNELLY: Yes, we do.

THE COURT: It’s not a separate computer system?

MR. DONNELLY: No, the same computer system.

THE COURT: Okay. Now, turning then to the suggestions in ways in which there’s damage, I don’t understand how that works. First you allege damage under (a)(5)(B)(i).

MR. MAHONY: Yes.

THE COURT: And that is loss of $5,000. There’s no indication of a loss of $5,000. No indication of loss at all.

MR. MAHONY: Your Honor, what we have done is state that the CharlieTicket and the CharlieCard account for 68% of the weekday traffic.

THE COURT: You may, but that’s not the damage. Damage, you have to show loss to one or more persons during any one year period resulting from a related use in the course of conduct, aggregating at least $5,000 in value. There is no loss at this point, right?

MR. MAHONY: Your Honor, even – the statute says that a loss can include assessment, remedial efforts, all of what--

THE COURT: Look it, we’re going to have to go very specifically--

MR. MAHONY: Yes.

THE COURT: --because it is a criminal statute and the Rule of Lenity applies in civil proceedings in respect of criminal statutes when they’re used as a basis. So you say that the prospect of loss of at least $5,000 brings it within this provision?

MR. MAHONY: That’s correct and--

THE COURT: Okay. So show me where it says that.

MR. MAHONY: In our papers.

THE COURT: Where? If I refer to Mr. Kelley’s declaration, the first paragraph that’s referenced says the procurement and installation of the automatic fare collection system cost in excess of $180 million.

MR. MAHONY: Yes, that’s correct, Your Honor, but to, but later in Mr. Kelley’s affidavit, we have allegations, I’m sorry, statements that pick up the damages as well, Your Honor.

THE COURT: Well, paragraph 19 is the second one that you reference. You talk about 80% of the users using CharlieCard pass, and CharlieCards accounting for approximately $475,000 of the weekday, per weekday revenues which I recall correctly about $700,000.

MR. MAHONY: Yes, that’s correct, Your Honor.

THE COURT: Okay, but again, where’s the loss? Are you saying that prospectively there’s a loss of some amount that is going to be in excess of $5,000; is that what you’re saying?

MR. MAHONY: Correct, Your Honor. And I’m still – I’m looking for the provision in Mr. Kelley’s affidavit just to make sure that I’ve exhausted that point as well.

MS. GRANICK: Your Honor?

THE COURT: Just a moment while I let Mr. Mahony try to locate it.

MS. GRANICK: Thank you.

MR. MAHONY: Thank you, Your Honor.

THE COURT: You’re welcome.

PAUSE

MR. MAHONY: Your Honor, I do not recall a specific allegation with respect to the $5,000 map. The position is it’s implicit in the statements that this information if disclosed will cause substantial harm to the system. Also implicit in the statements quantifying the proportion of overall passenger trips that are attributed to the CharlieTicket and the CharlieCard and that those sums well exceed, substantially exceed the $5,000 amount.

THE COURT: All right. So the argument is that it comes within the (i)?

MR. MAHONY: That is one basis for the damage, yes, correct.

THE COURT: That’s the only basis for the damage, that prospectively you’re going to have more than five, you’re going to face more than $5,000 worth of damages if this permits people to hack in improperly?

MR. MAHONY: Correct. That’s correct.

THE COURT: Okay. Now, turning to the next grounds that you have, you say that it’s a threat to public health or safety.

MR. MAHONY: Yes.

THE COURT: What’s that?

MR. MAHONY: Your Honor, we go through the volume of traffic that’s provided, the volume of commuter transit that’s provided by the system and the system if destabilized--

THE COURT: Destabilized simply means that people are stealing from it and that’s your theory of public health and safety is that if the system can’t run, it’s a threat to public health and safety?

MR. MAHONY: Correct, Your Honor.

THE COURT: That it?

MR. MAHONY: Well, we have felt that declarant, testimony concerning the funds MBTA receives--

THE COURT: Right, that they can’t keep their fisc, you say threatens public safety and security?

MR. MAHONY: Correct. And that riders lose faith, lose confidence in the--

THE COURT: That’s not enough.

MR. MAHONY: --fare collection system.

THE COURT: That’s not enough for physical injury to me personally. So I don’t find that the (iii) be applicable, or (iv), excuse me.

Now, turning to the next one which is damage affecting, (5) damage affecting a computer system used by or for a government entity in furtherance of the administration of justice, national defense and national security. Is this computer system, that is the computer system that deals with the CharlieTicket and the CharlieCard, the computer system that is used by the MBTA in furtherance of the administration of justice, national defense or national security.

MR. MAHONY: The same network that runs AFC also runs the antiterrorism video cameras, and supports the other antiterrorism initiatives at the T, and in paragraph 9 of Mr. Kelley’s affidavit, we point to the Homeland Security investment--

THE COURT: Right. They’ve made an investment. The question is whether or not these computers that we’re concerned about.

MR. MAHONY: Yes.

THE COURT: Oh, you say it’s connected to the network. Can this stand alone? That is, the CharlieCard and CharlieTicket stand alone without it’s networking?

MR. MAHONY: No, it relies on the computer network, Your Honor, to communicate a store value, accept payments, track usage.

 THE COURT: Let me put it differently, can the defense in national security dimensions to the MBTA stand alone without connection to the CharlieCard?

MR. MAHONY: No.

THE COURT: Why? Is there an answer to this?

MR. DONNELLY: No, I can’t say that it can’t, it can’t stand alone. Right now it is interchangeable.

THE COURT: When you say interchangeable, you mean it’s part of a network of some sort?

MR. DONNELLY: It goes on the same network that the vending machines and the CharlieCards system goes to. It’s all in the same network.

THE COURT: But if we take the term computer as describing a data storage facility, which is the way it’s described in (e)(i), or communications facility directly related to or operating in conjunction with such a device, does that describe from your perspective the CharlieCard, CharlieTicket computer? I’m sorry, it’s relation to national security and defense?

MR. DONNELLY: The camera system was funded by Homeland Security grants--

THE COURT: I understand that. Here’s what I, I think I understand that. What I’m focusing on is that there is a definition of the term computer for these purposes. It doesn’t really refer to network, but let me read it to you just so you have a sense of it. It’s in (e)(i). It says, “The term computer means an electronic magnetic optical electrochemical or other high speed data processing device, performing logical or mathematic or storage functions. It includes any data storage facility or communications facility directly relating to or operating in conjunction with such device.”

Now, we’re assuming for present purposes that if you didn’t get money from Homeland Security, didn’t have any national security role, that you’d have a stand alone computer that is the object of the interest of the defendants? The question for me is whether or not I assimilate the national security computer that you have to the CharlieCard, CharlieTicket computer and, if so, how I do that.

MR. MAHONY: Just before you – Jack, are you--

MR. McLAUGHLIN: What we have is settlement--

THE COURT: Just a moment. If you’d just identify yourself for the record.

MR. McLAUGHLIN I’m sorry. I apologize, Your Honor. I’m Jack McLaughlin. I’m the project director.

THE COURT: Right.

MR. McLAUGHLIN: What we have is a subcomputer systems that takes into account all of our gates, fare machines and equipment, all come back into the central computer system, which is encrypted, testimony has heard is encrypted. The video system was installed originally on the equipment and in light of September 11th, we expanded that system with Homeland Security funding and that’s a system that goes to various hubs throughout the system. We have five hubs that can actually take over the system, specific lines in case they go – [inaudible] - so they can switch over. For example, the hub at North Station can run the entire Orange Line if the need be, so in that respect, yes.

THE COURT: All right. So if I understand you you are saying that it includes the communication facility, communications facility that’s directly related to or operates in conjunction with, to the degree that we’re talking about, the--

MR. McLAUGHLIN: Your Honor--

THE COURT: Let me just, so I can work my way through this, to the degree that we’re talking about a computer system used by or for a government agency in furtherance of the administration of justice, national defense and national security. So it’s tied together.

MR. McLAUGHLIN: Yes. We have in fact used the video system now that it’s attached to the system in furtherance of investigation by law enforcement agencies--

THE COURT: You say video system attached to the system, meaning, video system attached to the CharlieCard and CharlieTicket?

 MR. McLAUGHLIN: That’s right – [inaudible].

MR. MAHONY: Your Honor, if could, just in terms of this connection, if the Court could take a look at page 13 of that slide that you looked at before--

THE COURT: Okay.

MR. MAHONY: --it’s the page that says, state of the art surveillance often unattended. This is the surveillance system that – I’m sorry, page 13.

THE COURT: I’ve got it.

MR. MAHONY: This is the surveillance system that both Mr. Kelley and Mr. McLaughlin had testified to. As can be seen by the slides, this is one of the target hacks because it is the same system of the individual defendants.

THE COURT: Okay. All right. I don’t understand what it is that you precisely said they are doing improperly, and I guess we have to at that go to 130(a) because that’s the grounds for injunctive relief under 130(g).

MR. MAHONY: Yes.

THE COURT: So what particular provisions are we talking about?

MR. MAHONY: 5(a)(1), Your Honor. “Knowingly causes the transmission of a program, information code or command and as a result of such conduct, intentionally causes damage without authorization to protected computer.”

THE COURT: That’s the only one?

MR. MAHONY: No, that’s one. So this is a program, information code or command that encompasses what the defendants have done. Item (ii) – I’m sorry, Item (iii) is the other grounds under 5(a) that refers to intentionally accessing a protected computer without authorization and as a result of such conduct causes damage.

So we have discussed how these are protected computers, this is the system that these cards are part of and these are being accessed in order to, the cards are counterfeited and their unauthorized access to obtain funds. So that’s for 5(a), Your Honor, and then 5(b) we’ve gone through in terms of the 5,000 amount, the health or safety, et cetera.

THE COURT: All right. So, Ms. Granick, if you’re going to be the one speaking to this--

MS. GRANICK: Yes, Your Honor.

THE COURT: --it is narrowed down in my mind in any event to prospective loss under 5(d)(1) and a computer system used by a government agency in furtherance of the administration of justice and national defense under 5(b)(v). Is there any question that there is stated here a claim under the act?

MS. GRANICK: Yes, Your Honor.

THE COURT: Okay. Tell me about it.

MS. GRANICK: Okay. The 5, they plaintiff claimed they need to meet the elements under (a)(5)(A).

THE COURT: Right.

MS. GRANICK: (a)(5)(A)(i) says that they need to prove that the defendants have knowingly caused the transmission of a program, information, code or command and as a result intentionally caused damage without authorization for the computer. I have read the complaint and I don’t know what the transmission they are alleging is.

THE COURT: It’s the talk, right now it’s the talk tomorrow.

MS. GRANICK: Okay.

THE COURT: It may also consist of chit chat in a class in which they disclose to others who might be interested in hacking, but the transmission of this information seems to me to be apparent. The question is whether or not it’s going to be broader than it now is.

MS. GRANICK: Your Honor, the term transmission under (5)(A)(i) is referring to transmission of a program, information, code or command to a computer. It is not a general speech regulation that prevents someone from talking about something--

THE COURT: So we turn to page 1 of the proposed slides which offer the opportunity to access their website and obtain code? So prospectively they’re asking for people to use the web for purposes of obtaining and for them to transmit code?

MS. GRANICK: Your Honor, again, the transmission of code there would have to be the distribution or execution of the code on a computer, not the distribution of code to other people. There is another provision--

THE COURT: Wait a minute. Just a moment, it says programmer information, and code or commands. It covers all of those, program, information, code or command. You tell me that you have to execute the entire code? I don’t know if that’s true but certainly the language information is broad enough to cover this.

MS. GRANICK: Well, I think the transmission has to be, as a result of the transmission, it has to cause damage to a protected computer.

THE COURT: Well, let’s start from there. Let me stop on that for a moment. I’m treating this as prospective damage, although there may be damage already in the discussions within the course work or however this was developed under the supervision of an MIT person.

MS. GRANICK: Let’s look at the definition of damage under the statute, Your Honor.

THE COURT: Okay.

MS. GRANICK: It is subdivision (viii) of section (e), so (e)(viii) and the damage that they must prove is any impairment to the integrity or availability of data, of programs, a system or information.

THE COURT: You mean to tell me that if someone is able to compromise the ability to collect revenue that that is not an impairment?

MS. GRANICK: That is correct, Your Honor. That is not an impairment to the integrity or availability of data, a program, a system or information.

THE COURT: Okay. I reject that. Now, do you have another argument?

MS. GRANICK: Well, Your Honor, if I could just refer you to a previous case that discusses this very issue. This is a case of a federal criminal prosecution brought by the Department of Justice, the U.S. Attorney’s Office out of the Central District of California, and that was, in that case, United States v. McDaniel, I was the defense attorney on that case, the government claimed that transmission of information to customers of a messaging system informing them about an insecurity in the messaging system was an impairment to the integrity of that system. On appeal to the Ninth Circuit, the government was forced to admit that that was erroneous, that you can not impair the integrity of a system merely by communicating truthful information about the security status of that system, and the government had to move the Ninth Circuit to dismiss the criminal conviction of the defendant in that case.

THE COURT: Now, that’s not quite this case. So if someone says we have not provided you with free subway rides for life, that that doesn’t constitute an impairment to the system?

MS. GRANICK: If someone provided software for example with the intent to defraud the system, software that was intended to defraud the system, that could be punished under a different provision. If someone provided the means by which you could get free subway tickets, that could be a school that defrauds the system, but the mere transmission of information telling people that it is possible to circumvent the security of the system--

THE COURT: That’s not what we’re talking--

MS. GRANICK: --in showing how one would do it--

THE COURT: --we’re not talking about that. We’re talking about someone who holds themselves out and logs their presentation by saying we’re going to show you how to have a free subway card for life. That’s what their undertakings do, that your view is that that is not covered by (5)(A)(i).

MS. GRANICK: No, Your Honor, it is not.

THE COURT: Okay. I understand the argument. As I say, I reject it. What else?

MS. GRANICK: Once, if they establish damage to the system, program, information or data, then they have to show that that damage has caused loss and the loss element is a separate question from damage--

THE COURT: What do you do in the context of a preliminary injunction? Are you saying that there has to be loss already experienced or is injunctive relief available to protect against the likelihood of loss?

MS. GRANICK: There must already be loss.

THE COURT: And is there a case that says that?

MS. GRANICK: Because the preliminary injunction or TRO standard requires proof that the plaintiff is likely to prevail on the merits, they have to show the likelihood of every element of the tort or crime charged, and one of the elements of a violation of the CFAA is that there is loss. In the absence of loss as defined under the statute the plaintiff cannot prevail.

THE COURT: Okay. Is there a case that says that because it stands on its head, the idea of the availability of injunctive relief? The purpose of injunctive relief is to prevent loss and so what we’re addressing here is whether or not there is a meaningful likelihood of loss in the future if this activity is not restrained. Now, you say there has to be loss, that is to say the horse has to be outside of the barn before the courts can act under the statute. Is that your view?

MS. GRANICK: Yes, Your Honor. They have to--

THE COURT: Okay. Is there a case that says that?

MS. GRANICK: There are cases on defining loss. I would need to take--

THE COURT: No, I talking about cases that deal with the question of injunctive relief?

MS. GRANICK: No, Your Honor, not to my knowledge.

THE COURT: Okay.

MS. GRANICK: But the statute does say that for a violation involving the loss elements of (a)(5)(A), in other words if the claim is that there’s damage to a computer which provides loss, section (g) of 1030 says that damages for a violation involving only conduct described in Section (a)(5)(D)(i), which is the loss provision, are limited to economic damages. So the statute--

THE COURT: That is money damages. We’re not talking about money damages here. We’re talking about equitable, exercise of equitable powers by the Court to prevent this if it is possible. So I just want to understand if there’s anything else on the question of the equitable dimension of this. You’ve suggested that what the statute means is that the damages and the equitable relief are co-extensive, that you have to have had damages before you can have equitable relief. Why would you have equitable relief if we’ve already got damages?

MS. GRANICK: The equitable relief prevents further loss by the--

THE COURT: So we get one bite at the apple is that it?

MS. GRANICK: No, but there has to be a showing that these defendants have caused the damage or loss that the plaintiffs are complaining about and what the, the problem with the way that they’ve alleged the claim here is that there are no claims that these defendants are causing damage to the integrity or availability of the MBTA system. The claim is basically that by providing this information to the public, some member of the public might and a way to use this information, it would focus their attention in a way that they could use this information to help them get free subway rides.

THE COURT: And isn’t that precisely what they’ve offered to do; that is, to aide and abet those who engage in that kind of activity, except we’re going to, here’s how you learn to get a subway pass for life. They may just--

MS. GRANICK: They have not--

THE COURT: Just a moment. They may think that that was cute at the time that they drafted that up but that’s what they undertook to do and they have to accept the consequences of that because as far as I’m concerned if someone does end up doing this, they are aiders and abettors, yet, they have undertaken to provide this information.

MS. GRANICK: I think that that’s, you know, as you said earlier, this is a criminal statute and that is the question, I think, is it aiding and abetting to provide this information? Would it be aiding and abetting another party, because I think that the focus on aiding and abetting says that there is no claim against these defendants. These defendants have not compromised the MBTA system. These defendants are merely--

THE COURT: We don’t know that at the time, at this time. What I see is documentation that shows that they could if they wanted to. The question of whether or not they have improperly used the T by augmenting the sums is I suppose a matter for discovery, but I have to tell you that I’m not sure that they’ve had adequate adult supervision here. You’ve got lawyers who want to test the outer limits of the statute. We have an institution that has had some great difficulties just this year in what its students think of amusing stunts resulting in criminal prosecutions, and I just wonder if someone ought to be counseling them not to become a test case but rather to think more carefully about what their exposure is.

MS. GRANICK: Your Honor--

THE COURT: Just a moment, I think counsel for MIT has, the defendant I should say not MIT, has something to say.

MR. SWOPE: I’m going to object, Your Honor. Your Honor has heard no evidence whatsoever what MIT’s supervision on this matter was. I’d ask you to just suspend judgment--

THE COURT: I haven’t made any judgment about it. It’s not before me except to say, render some anxious concerns about the idea that someone is drawing these kids close to a violation of federal law and for no particular outside purpose. There is at the end of the memorandum of the MBTA a reference to good practices with respect to the disclosure of vulnerabilities. Now, I suppose that everybody is entitled to their 10 or 15 minutes of fame, even in Las Vegas, but the short of it is that the way in which you address these kinds of things, if you’re really interested in maintaining best practices, is to bring it to the attention directly of the vulnerable entity so that the vulnerable entity can deal with it.

MR. SWOPE: Your Honor, I’m not disagreeing with it. I’m saying we don’t have any evidence that tells you that MIT is not always said--

THE COURT: Well, it may have said it. It may have said it. It also may have put in place a set of circumstances in which this kind of exploitation is encouraged--

MR. SWOPE: Your Honor—

THE COURT: Just a moment, is encouraged by the way in which core structures are set up. The short of it is I don’t know why the advisors to these students aren’t bringing home not merely the potential but the actuality of one of these slides involving a student who was prosecuted in East Boston. I’m looking quickly for the slide, to show that they’re aware of the potential illegality.

MR. MAHONY: Page 84, Your Honor.

THE COURT: And we’ll look at page 84 and we recognize that they are aware that they’re running up against the line. So--

MR. SWOPE: I don’t mean to ask Your Honor to not make a judgment before you--

THE COURT: I haven’t made judgment. It’s not before me. I’m making a set of observations which inform my judgment about whether or not somebody else has to exercise some supervision over these kids.

MR. SWOPE: And if there’s evidence that MIT has already done that, then Your Honor should, it should not be presented before our time.

THE COURT: Is there?

MR. SWOPE: Yes.

THE COURT: Sufficient to get them out of making  these kinds of disclosures? Is it MIT’s position that they are not potentially exposing themselves on this?

MR. SWOPE: We don’t have a position about this particular case, Your Honor, but they, I mean, the purpose of an educational institution is to teach. It guarantee their students learn.

 THE COURT: But it may not teach them in a fashion that it encourages a violation of criminal law.

MR. SWOPE: Absolutely, Your Honor.

THE COURT: And so if in the course of its course work it encourages people to develop mechanisms for hacking and then to disclose those mechanisms of hacking, it may have some exposure.

MR. SWOPE: If Your Honor could hear the evidence, which is not before you today and not subject of this hearing, there would be a different set of facts that would resolve that in Your Honor’s--

THE COURT: No. All I’m suggesting is that there is a need apparently to address injunctive relief because of a lack of restraint on the part of the defendants, the individual defendants, that has not been restrained by various, sufficiently adequately restrained by various of their advisors. So the short of it is I have some significant difficulty taking the view that I should not issue injunctive relief here. I’ve listened to the discussions which to some degree seem to me quite airy about the inapplicability of the statute, all of them suggesting that the defendants are prepared to go right up to the edge and perhaps beyond in furtherance of their desire to obtain some publicity for their student undertakings, but--

MS. GRANICK: Your Honor, may I address the issue of the statute and the publicity for a moment?

THE COURT: Yes.

MS. GRANICK: Your Honor, I do not think that the statute – well, let me put it this way. This is not something that is testing the outer limits of the statute or seeking to be a test case. The students did not try to create this litigation or do something that in anyway is considered to be risky or edge behavior the scientific discipline in which they are studying or--

THE COURT: Just a moment, address that issue. Why is it that they’re not making available with a reasonable amount of time to the MBTA the products of their research for purposes of permitting the MBTA to take what steps are necessary to protect itself? Why is it that they want to make disclosure first before a hacker’s convention?

MS. GRANICK: Well, what happened here was that they did contact the MBTA and try to give them information about their presentation in advance of the presentation. So on July 25th before this conference, Mr. Ryan emailed his professor to ask him to help set up a meeting with the MBTA to discuss the research that they did before the DEFCON presentation, and what the complaint alleges is that, and then contacted the professor again, Mr. Ryan contacted the professor again on July 20th, again asked for help in setting up that meeting with the MBTA people, and in those emails the professor said that it was not a good idea to write it, that they needed to contact the people directly so that the letter didn’t get, you know, lost in the mail if they sent it to the address that was put on the MBTA website.

Now, according to the complaint, the vendor contacted the MBTA also on July 30th saying that they had noticed that the DEFCON presentation and that they had some concern. So what ended up happening was that Professor Rivest and the students were contacted by Richard Sullivan, the sergeant detective with the MBTA who said he wanted to meet with the students to discuss the presentation. They set up that meeting and had it on Monday, August 4th. So Monday of this past week, and then at meeting Agent Sullivan brought an FBI agent with him, Agent Schafer, and the students did not know and Professor Rivest did not know that an FBI agent was going to be brought along. They did not have counsel present at the meeting, but they continued with the meeting in any case to provide both Mr. Sullivan and Agent Schafer with information about their presentation.

At the end of that meeting on Monday, August 4th, everyone, including Professor Rivest and our students believed that everything was fine, that the MBTA’s concerns had been addressed and that they were to provide the MBTA with a three-page document summarizing the vulnerabilities that they had located. That was the understanding coming out of the meeting on Monday and that they would provide that information some time before the presentation at DEFCON this weekend.

Now, Professor Rivest sent an email to Mr. Sullivan  and to Agent Schafer following that meeting and in the email that he sent he said, I’m glad that we had a chance to meet. I am glad that, you know, we’re going to be, the student team is going to provide a summary of their findings and recommendations and we all understand and support the idea that the DEFCON presentation will not provide the technical details that this is for others to defeat the security systems in place at the MBTA. They received an email, friendly email back from Agent Schafer, but he did not hear from the MBTA until there was contact between Mr. Kelley and Professor Rivest, and that was on Wednesday, August 6th. And what I understand from that email exchange is that Mr. Kelley said that the MBTA was not interested in pressing charges, but still had concerns about the talk based upon the abstract that was provided on the DEFCON site.

So the students provided, said that they would finish the report before the weekend and provide their phone numbers so that when the report was received, the MBTA people could contact them. So they did, Your Honor, talk to MBTA in advance. They also talked to the FBI in advance and gave them information about the report, about the presentation and felt that that information they had provided was adequate. It wasn’t until on Friday when they heard that this action had been filed, that we believe that the MBTA’s concerns were not addressed at that meeting on that Monday. So the students did do responsible, however, they did talk to the MBTA first and did believe that what the MBTA was concerned about had been addressed.

THE COURT: Anything further? Anything further?

MS. GRANICK: On that issue or--

THE COURT: Or perhaps on the issue of when it was that these set of slides was provided to the MBTA.

MS. GRANICK: We did not realize that the MBTA was still wanting the slides until Friday after this lawsuit had been filed. At the meeting on Monday they had asked for the slides, the FBI agent asked for the slides so that by the end of the meeting, the agreement was that they were going to provide the three-page report and they did not believe that there was any further interest or request for the slides to be provided.

THE COURT: Okay. Well, is there anything further that we haven’t touched on?

MS. GRANICK: Your Honor, I have not touched on one of the most important issues in this case, which is the issue of the First Amendment, and as you know I disagree respectfully with the Court that the statute prohibits the distribution of pure information that is not targeted at a computer system. One of the reasons why I think the statute must be interpreted that way is because to read it otherwise raises severe First Amendment questions.

THE COURT: Let me understand - so we’ll deal with particular language. There’s particular language in the proposed order that enjoins them from providing information, software code or other materials that would assist another in any material way to circumvent or otherwise attack the security of the Fare Media System. You’re saying that’s covered by the First Amendment?

MS. GRANICK: Well, I think we, I’m not sure we’re looking at the same order, so let me just take a moment, Your Honor, and make sure I’m on the same page with you because there was a new proposed order circulated this morning and that’s the one that I’m looking at.

THE COURT: Right. There’s actually two versions, the first provision in one of them is the language I read, it is the second provision in the other.

MS. GRANICK: Okay.

THE COURT: You may assume that that’s the only one that I’m going to consider.

MS. GRANICK: Okay.

THE COURT: That’s the only provision that I’m going  to consider. I’m not going to say that they can’t engage in discussions at DEFCON. I’m not going to say that they are prohibited from indicating that there is some potential or compromise already of the CharlieCard or CharliePass, but I am considering enjoining them in providing information, software code or other materials that would assist another in any material way to circumvent or otherwise attack the security in the Fare Media System, and are you contending that that is a potential First Amendment violation?

MS. GRANICK: My argument is twofold, Your Honor. One is that under some circumstances enjoining that would be a potential First Amendment violation because the First Amendment does protect instructional speech except under certain circumstances. My other argument is--

THE COURT: Circumstances in which somebody says that they’re offering to provide people with the information necessary to get a subway card for life?

MS. GRANICK: Your Honor, as you have said, if the information provided constitutes aiding and abetting under the criminal law, then it is not protected speech. Similarly, speech is not protected if it constitutes conspiracy or some other thing like that. We all know that speech can be a crime.

THE COURT: So in this context with the prospect that that is what is going to happen, put to one side whether or not it’s been demonstrated, but if there is a prospect that that is going to happen, is there any question about the First Amendment?

MS. GRANICK: Yes, Your Honor. The First Amendment protects instructional speech unless it is distributed with the intent that the listener use that speech to commit an offense and the intent here is a research and educational intent, not an intent to have the listener go out and use the information for criminal purposes. And, you know, when you look at the aiding and abetting law, even the, you know, the cases that are about providing information to a co-conspirator or to the principle in that criminal case, it is, the cases do not criminalize the pure distribution of information that is truthful without more.

THE COURT: Okay. Anything else?

MS. GRANICK: Yes, Your Honor, the First Amendment is  also relevant to the Court’s interpretation of the statute. So in the Doctrine of Constitutional Avoidance says that if there are two interpretations of a statute, two reasonable interpretations of a statute, one which leads to constitutional problems or concerns and one which does not, then you interpret the statute in accordance with the meaning that does not raise the First Amendment question. So looking at the interpretation of (a)(5)(A) under the statute, 1030(a)(5)(A)(i), knowingly causes the transmission of a program, information, code or command and as a result intentionally causes damage without authorization to the protected computer. If that provision of the statute is interpreted as criminalizing the pure distribution of information at a conference, two people who are listeners, then it raises First Amendment concerns. It is this information that is truthful, including instructional information, and including computer code, is protected by the First Amendment.

The reason why (a)(5)(A)(i) is not unconstitutional and does not violate the First Amendment is because what the statute is getting at is sending information to a computer that breaks that computer. It is not targeting discussing information in a public context or academic context or on the street corner or in a newspaper or on a mailing list or in any of the numerous legitimate outlets for security information like this communicated. If it did, that would violate the First Amendment or at the very least raise serious First Amendment considerations. As a result, you have to avoid those serious First Amendment problems by interpreting the statute more narrowly as I suggested.

THE COURT: All right. Anything further?

MS. GRANICK: No, Your Honor, I don’t believe so.

THE COURT: Okay. Well, I’m going to enter temporary restraining order here, limited to the proposal made by the plaintiff to prevent providing certain information, and I’ll take the language from Section (a)(5)(A)(i); that is, I’m going to enjoin the defendants from causing the, or from providing information or program, or code, or command that would assist in a material way to circumvent or otherwise attack the security Fare Media System.

I start as I must with the principal issue which is, is there a likelihood of success on the merits here, and we’re dealing, of course with prospective relief. I take no position whether or not there has at this time in loss to the MBTA. The record doesn’t disclose that, it doesn’t yet support it, but there is of course the prospect that even before the DEFCON meeting that the defendants managed to provide otherwise improperly uncompensated access to the services of the MBTA to themselves or to plaintiffs. But that’s not before me.

What is before me is the prospect that they are intent upon and hold themselves as undertaking to provide information that will make it possible to use their very arresting praise, make it possible for people to get a free subway card for life. What that really means is abuse the computer system of the MBTA for revenue maintenance by their manipulation of various kinds and unauthorized access to various kinds of protected computer facilities. This it seems to me is something that if it comes to fruition is properly within the scope of both (5)(A)(i) and (5)(A)(iii). They are without authorization. They are acting in a fashion that has the prospect of damage well in excess of $5,000. They are accessing a computer system which because of its networking, provides access in addition to national security and law enforcement information. And it is apparent that even in the repeated iterations of their intentions that they maintain the desire to attract people to engage in criminal conduct in the form of free access to MBTA services through their computer system. My view is that there is a likelihood of success on the merits if this were to be affective, and the office of an injunction is not host facto to provide damages afterwards. It is prospective to avoid damages that are very hard to calculate under these circumstances and very hard ultimately to be reduced to some form of judgment.

The distribution of information, even incremental information that makes it easier for those who have criminal intent to make use of this information, it seems to me is something that in the absence of the exercise of the judgment and restraint of the defendants, which I have not seen, must be restrained. So, I find that there is a likelihood of success on the merits unless the defendants are restrained in the fashion that I have indicated; that is, restrained from providing information, program, code or command that would assist another in any material way to circumvent or otherwise attack the security of the Fare Media System of the MBTA.

I look at the balance of hardships. On the one hand I have enthusiastic students interested in calling attention to the work that they have done. In ordinary circumstances, that’s not something to be restricted, perhaps even encouraged, but the harm here to them of restricting this distribution of information under these circumstances in which they have called out and solicited people to come to listen to them for purposes of obtaining illegal access to the MBTA through its computer system strikes me as minimal.

I have been presented with information which suggests that there is a set of standards within the computer industry that encourages full disclosure of vulnerabilities to the vendor or the user before there is distribution of the information regarding that vulnerability and offering a reasonable amount of time for the vendor or the user to take steps to protect against the identified vulnerability. I have been informed of a rather elaborate gavotte, a dance that was undertaken among the university, at least one of its professors, the students, the MBTA and the FBI. I do not find that the students provided all of the information necessary for the MBTA to take the steps that are necessary to guard against the vulnerability.

And so I look at the harm to the students and the harm to the students is perhaps restricting to some degree. Their undertaking to call attention to themselves and their research at a major conference in a fashion that the record before and the submissions of the parties indicate is in contravention of best practices, perhaps standard practices within the industry. The short of it is I see no harm to the defendants in the entry of an injunction, temporary restraining order with respect to this information which is at the core of Section 1030.

Then I look to the harm to the defendant. The defendant, of course, is apprehensive, in fact perhaps even embarrassed by its vulnerability and it would have me for example restrict the defendants from indicating that there has been a compromise to the security or integrity of the Fare Media System. I’m not going to do that. That it seems to me is open to fair comment, and so embarrassment about computer or I guess computer vulnerability or security or integrity within its computer system, is not damage that I weigh. But what I do weigh is the prospect that smart people will be able to find a way for at least a period of time to impose substantial loss upon the MBTA, and that is a matter that in the absence of an injunction that is tailored to restrict disclosure of materials that would be in violation of Section 1030 is cognizable and important.

It causes me then to move over to the final  consideration, which is the public interest. It is too much to say that the MBTA because it is a quasi public agency embodies itself in whatever it wants to do as the public interest, but it is fair to say that a compromise which causes loss to the MBTA of revenues which I find would be no less than $5,000 if it were in the hands of the wrong people who would be aided and abetted indeed support it by disclosure at this time of the particulars of the manner in which the defendants have hacked into the system would create costs that are simply unsupportable. I don’t think that I’m unfairly going beyond the record to recognize that the MBTA like most public transportation systems faces real cash issues and someone who opens a mechanism to deprive them wrongfully of their revenues is acting in violation of the public interest and it is in the public interest to enjoin such activity.

So for those reasons I enter this as a temporary restraining order which will last for 10 days. This is not my case. This is Judge O’Toole’s case but in his absence acting as emergency judge I’ve taken it up, but it’ll go back to him, and of course the defendants are free to seek modification even before the end of the 10-day period. I am not going to red pencil the defendants’ presentation to DEFCON if they choose to go forward with it. I’ve stated I think with specificity what it is that they are required to avoid, but they should understand that they face at least three possible avenues of difficulty. The first is because this is a criminal statute the potential for criminal prosecution. The second is that because of their unwillingness to exercise restraint in these areas I’ve outlined they face the prospect of contempt proceedings. And the third, of course is the potential for actual damages for any diversion of revenue from the MBTA as a result of any disclosures that they make in violation of the statute or in violation of this injunction.

I am, where Ms. Granick ended, which I think is a very important point, there are the First Amendment dimensions to this. There is a value in the distribution of research results. There is a value in the distribution of sure information, but there’s a balance that has to be drawn at various points. That balance ultimately reflects a willingness to accept a degree of restraint. A degree of restraint may be reflected in best practices with the industry. It may be reflected in a willingness to avoid hyping a presentation with titillating references to free goods and ways to avoid prosecution with a kind of wink, wink, nod, nod approach. Sometimes we can’t expect people in their early 20’s to have sufficient judgment or experience to avoid causing those clashes of interest between something as broad and as important as the First Amendment and the need to avoid actual criminal conduct of which words are the constituent elements. Words and the transmission and distribution of data are the constituent elements.

We look to others to reinforce and perhaps educate with respect to the exercise of restraint and when that is unsuccessful, whether because the education was insufficient or the defendants, individual defendants were recalcitrant or tenured, then the matter comes to the Court, and on this record I find that there is a likelihood of success on the merits, that there’s no damage cognizable to the defendants, substantial potential damage to the plaintiff and a balance of the public interest, even considering the need and appropriateness for transparency and full dissemination of scholarly materials that justifies the extraordinary intervention under these circumstances to avoid immediate and irreputable harm. And so for those reasons, which I’ve dictated into the record, which is a tape record because of the after hours timing of this making it difficult to bring in anyone but the most diligent of the court employees on a weekend, but I’ve dictated it into the record for the use of the parties and perhaps for Judge O’Toole when the matter comes to him, but the order enters as of 1:30 today and it lasts for 10 days unless further extended by a competent court.

Ms. Granick, yes go ahead.

MS. GRANICK: I’m sorry, Your Honor, for the official record, I would like to just register objections to the state of the language of the TRO. As the Court has enunciated it, the language of the TRO is a prior restraint on speech that does not give the students or the lawyers sufficient information to know what speech or what aspect of the presentation will result in violation of the order and potential contempt sanctions. Your Honor has stated on the record that the concern is the prospect that smart people will be able to use this information to find a way to impose a loss on the MBTA and the students cannot know in advance what information in their potential presentation will be usable by smart people to find a way to impose the law.

That vagueness imposes, and the threat of potential sanctions poses a severe chilling effect and burden on their free speech, one that is substantial enough that as the Court has recognized the reasonable course of action for the students may be to chose not to go forward with the presentation at all, and that is exactly the harm that the First Amendment seeks to avoid.

THE COURT: Well, I think we’ve all been over the relevant discussions here. The language, of course, is drawn from the statute itself and it addresses itself to three individuals who started the issue with a circular that says, “want free subway rides for life?” I suspect that they’re capable of applying the language of the statute and understanding the scope and the injunction, and for that reason I don’t consider it to be vague.

So, your clients, I understand have been listening in, Ms. Granick, but in any event they have now received notice. We’ll reduce the order to a particular writing, but it will be essentially the, it will be the language that I’ve identified here and the parties are free to take whatever steps they consider to be appropriate under the circumstances.

Is there anything further?

MS. GRANICK No, Your Honor.

THE COURT: Okay. I’d ask that the MBTA provide a copy of the draft order so that I can revise it this afternoon. You can send it over by email to--

MR. MAHONY: I think we may be able to send it over.

THE COURT: --Mr. Lovett and get it entered in a written form. All right. We’ll be in recess.

77 S.Ct. 1203

Supreme Court of the United States

Paul M. SWEEZY, Appellant,
v.
STATE OF NEW HAMPSHIRE by Louis C. WYMAN, Attorney General.

No. 175.

Argued March 5, 1957.
Decided June 17, 1957.

Attorneys and Law Firms  

Mr. Thomas I. Emerson, for the appellant.

Mr. Louis C. Wyman, Atty. Gen. of New Hampshire, Manchester, N.H., for the appellee.

Opinion

Mr. Chief Justice WARREN announced the judgment of the Court and delivered an opinion, in which Mr. Justice BLACK, Mr. Justice DOUGLAS, and Mr. Justice BRENNAN join.

This case, like Watkins v. United States, 354 U.S. 178, 77 S.Ct. 1173, brings before us a question concerning the constitutional limits of legislative inquiry. The investigation here was conducted under the aegis of a state legislature, rather than a House of Congress. This places the controversy in a slightly different setting from that in Watkins. The ultimate question here is whether the investigation deprived Sweezy of due process of law under the Fourteenth Amendment. For the reasons to be set out in this opinion, we conclude that the record in this case does not sustain the power of the State to compel the disclosures that the witness refused to make.

This case was brought here as an appeal under 28 U.S.C. s 1257(2), 28 U.S.C.A. s 1257(2). Jurisdiction was alleged to rest upon contentions, rejected by the state courts, that a statute of New Hampshire is repugnant to the Constitution of the United States. We postponed a decision on the question of jurisdiction until consideration of the merits. 352 U.S. 812, 77 S.Ct. 49. The parties neither briefed nor argued the jurisdictional question. The appellant has thus failed to meet his burden of showing that jurisdiction by appeal was properly invoked. The appeal is therefore dismissed. Treating the appeal papers as a petition for writ of certiorari, under 28 U.S.C. s 2103, 28 U.S.C.A. s 2103, the petition is granted. Cf. Union National Bank of Wichita, Kan. v. Lamb, 337 U.S. 38, 39—40, 69 S.Ct. 911, 912, 93 L.Ed. 1190.

The investigation in which petitioner was summoned to testify had its origins in a statute passed by the New Hampshire legislature in 1951.[FN1] It was a comprehensive scheme of regulation of subversive activities. There was a section defining criminal conduct in the nature of sedition. ‘Subversive organizations' were declared unlawful and ordered dissolved. ‘Subversive persons' were made ineligible for employment by the state government. Included in the disability were those employed as teachers or in other capacities by any public educational institution. A loyalty program was instituted to eliminate ‘subversive persons' among government personnel. All present employees, as well as candidates for elective office in the future, were required to make sworn statements that they were not ‘subversive persons.’

In 1953, the legislature adopted a ‘Joint Resolution Relating to the Investigation of Subversive Activities.'[FN2] It was resolved:

‘That the attorney general is hereby authorized and directed to make full and complete investigation with respect to violations of the subversive activities act of 1951 and to determine whether subversive persons as defined in said act are presently located within this state. The attorney general is authorized to act upon his own motion and upon such information as in his judgment may be reasonable or reliable * * *.

‘The attorney general is directed to proceed with criminal prosecutions under the subversive activities act whenever evidence presented to him in the course of the investigation indicates violations thereof, and he shall report to the 1955 session on the first day of its regular session the results of this investigation, together with his recommendations, if any, for necessary legislation.'[FN3]

Under state law, this was construed to constitute the Attorney General as a one-man legislative committee.[FN4] He was given the authority to delegate any part of the investigation to any member of his staff. The legislature conferred upon the Attorney General the further authority to subpoena witnesses or documents. He did not have power to hold witnesses in contempt, however. In the event that coercive or punitive sanctions were needed, the Attorney General could invoke the aid of a State Superior Court which could find recalcitrant witnesses in contempt of court.[FN5]

Petitioner was summoned to appear before the Attorney General on two separate occasions. On January 5, 1954, petitioner testified at length upon his past conduct and associations. He denied that he had ever been a member of the Communist Party or that he had ever been part of any program to overthrow the government by force or violence. The interrogation ranged over many matters, from petitioner's World War II military service with the Office of Strategic Services to his sponsorship, in 1949, of the Scientific and Cultural Conference for World Peace, at which he spoke.

During the course of the inquiry, petitioner declined to answer several questions. His reasons for doing so were given in a statement he read to the Committee at the outset of the hearing.[FN6] He declared he would not answer those questions which were not pertinent to the subject under inquiry as well as those which transgress the limitations of the First Amendment. In keeping with this stand, he refused to disclose his knowledge of the Progressive Party in New Hampshire or of persons with whom he was acquainted in that organization.[FN7] No action was taken by the Attorney General to compel answers to these questions.

The Attorney General again summoned petitioner to testify on June 3, 1954. There was more interrogation about the witness' prior contacts with Communists. The Attorney General lays great stress upon an article which petitioner had co-authored. It deplored the use of violence by the United States and other capitalist countries in attempting to preserve a social order which the writers thought must inevitably fall. This resistance, the article continued, will be met by violence from the oncoming socialism, violence which is to be less condemned morally than that of capitalism since its purpose is to create a ‘truly human society.’ Petitioner affirmed that he styled himself a ‘classical Marxist’ and a ‘socialist’ and that the article expressed his continuing opinion.

Again, at the second hearing, the Attorney General asked, and petitioner refused to answer, questions concerning the Progressive Party, and its predecessor, the Progressive Citizens of America. Those were:

‘Was she, Nancy Sweezy, your wife, active in the formation of the Progressive Citizens of America?’

‘Was Nancy Sweezy then working with individuals who were then members of the Communist Party?’

‘Was Charles Beebe active in forming the Progressive Citizens of America?’

‘Was Charles Beebe active in the Progressive Party in New Hampshire?’

‘Did he work with your present wife—Did Charles Beebe work with your present wife in 1947?’

‘Did it (a meeting at the home of Abraham Walenko in Weare during 1948) have anything to do with the Progressive Party?’

The Attorney General also turned to a subject which had not yet occurred at the time of the first hearing. On March 22, 1954, petitioner had delivered a lecture to a class of 100 students in the humanities course at the University of New Hampshire. This talk was given at the invitation of the faculty teaching that course. Petitioner had addressed the class upon such invitations in the two preceding years as well. He declined to answer the following questions:

‘What was the subject of your lecture?’

‘Didn't you tell the class at the University of New Hampshire on Monday, March 22, 1954, that Socialism was inevitable in this country?’

‘Did you advocate Marxism at that time?’

‘Did you express the opinion, or did you make the statement at that time that Socialism was inevitable in America?’

‘Did you in this last lecture on March 22 or in any of the former lectures espouse the theory of dialectical materialism?’

Distinct from the categories of questions about the Progressive Party and the lectures was one question about petitioner's opinions. He was asked: ‘Do you believe in Communism?’ He had already testified that he had never been a member of the Communist Party, but he refused to answer this or any other question concerning opinion or belief.

Petitioner adhered in this second proceeding to the same reasons for not answering he had given in his statement at the first hearing. He maintained that the questions were not pertinent to the matter under inquiry and that they infringed upon an area protected under the First Amendment.

Following the hearings, the Attorney General petitioned the Superior Court of Merrimack County, New Hampshire, setting forth the circumstances of petitioner's appearance before the Committee and his refusal to answer certain questions.[FN8] The petition prayed that the court propound the questions to the witness. After hearing argument, the court ruled that the questions set out above were pertinent.[FN9] Petitioner was called as a witness by the court and persisted in his refusal to answer for constitutional reasons. The court adjudged him in contempt and ordered him committed to the county jail until purged of the contempt.

The New Hampshire Supreme Court affirmed. 100 N.H. 103, 121 A.2d 783. Its opinion discusses only two classes of questions addressed to the witness: those dealing with the lectures and those about the Progressive Party and the Progressive Citizens of America. No mention is made of the single question concerning petitioner's belief in Communism. In view of what we hold to be the controlling issue of the case, however, it is unnecessary to resolve affirmatively that that particular question was or was not included in the decision by the State Supreme Court.

There is no doubt that legislative investigations, whether on a federal or state level, are capable of encroaching upon the constitutional liberties of individuals. It is particularly important that the exercise of the power of compulsory process be carefully circumscribed when the investigative process tends to impinge upon such highly sensitive areas as freedom of speech or press, freedom of political association, and freedom of communication of ideas, particularly in the academic community. Responsibility for the proper conduct of investigations rests, of course, upon the legislature itself. If that assembly chooses to authorize inquiries on its behalf by a legislatively created committee, that basic responsibility carries forward to include the duty of adequate supervision of the actions of the committee. This safeguard can be nullified when a committee is invested with a broad and ill-defined jurisdiction. The authorizing resolution thus becomes especially significant in that it reveals the amount of discretion that has been conferred upon the committee.

In this case, the investigation is governed by provisions in the New Hampshire Subversive Activities Act of 1951.[FN10] The Attorney General was instructed by the legislature to look into violations of that Act. In addition, he was given the far more sweeping mandate to find out if there were subversive persons, as defined in that Act, present in New Hampshire. That statute, therefore, measures the breadth and scope of the investigation before us.

‘Subversive persons' are defined in many gradations of conduct. Our interest is in the minimal requirements of that definition since they will outline its reach. According to the statute, a person is a ‘subversive person’ if he, by any means, aids in the commission of any act intended to assist in the alteration of the constitutional form of government by force or violence.[FN11] The possible remoteness from armed insurrection of conduct that could satisfy these criteria is obvious from the language. The statute goes well beyond those who are engaged in efforts designed to alter the form of government by force or violence. The statute declares, in effect, that the assistant of an assistant is caught up in the definition. This chain of conduct attains increased significance in light of the lack of a necessary element of guilty knowledge in either stage of assistants. The State Supreme Court has held that the definition encompasses persons engaged in the specified conduct ‘* * * whether or not done ‘knowingly and willfully * * *.‘‘ Nelson v. Wyman, 99 N.H. 33, 39, 105 A.2d 756, 763. The potential sweep of this definition extends to conduct which is only remotely related to actual subversion and which is done completely free of any conscious intent to be a part of such activity.

The statute's definition of ‘subversive organizations' is also broad. An association is said to be any group of persons, whether temporarily or permanently associated together, for joint action or advancement or views on any subject.[FN12] An organization is deemed subversive if it has a purpose to abet, advise or teach activities intended to assist in the alteration of the constitutional form of government by force or violence.

The situation before us is in many respects analogous to that in Wieman v. Updegraff, 344 U.S. 183, 73 S.Ct. 215, 97 L.Ed. 216. The Court held there that a loyalty oath prescribed by the State of Oklahoma for all its officers and employees violated the requirements of the Due Process Clause because it entailed sanctions for membership in subversive organizations without scienter. A State cannot, in attempting to bar disloyal individuals from its employ, exclude persons solely on the basis of organizational membership, regardless of their knowledge concerning the organizations to which they belonged. The Court said:

‘There can be no dispute about the consequences visited upon a person excluded from public employment on disloyalty grounds. In the view of the community, the stain is a deep one; indeed, it has become a badge of infamy. Especially is this so in time of cold war and hot emotions when ‘each man begins to eye his neighbor as a possible enemy.’ Yet under the Oklahoma Act, the fact of association alone determines disloyalty and disqualification; it matters not whether association existed innocently or knowingly. To thus inhibit individual freedom of movement is to stifle the flow of democratic expression and controversy at one of its chief sources.' 344 U.S. at pages 190—191, 73 S.Ct. at page 218.

The sanction emanating from legislative investigations is of a different kind than loss of employment. But the stain of the stamp of disloyalty is just as deep. The inhibiting effect in the flow of democratic expression and controversy upon those directly affected and those touched more subtly is equally grave. Yet here, as in Wieman, the program for the rooting out of subversion is drawn without regard to the presence or absence of guilty knowledge in those affected.

The nature of the investigation which the Attorney General was authorized to conduct is revealed by this case. He delved minutely into the past conduct of petitioner, thereby making his private life a matter of public record. The questioning indicates that the investigators had thoroughly prepared for the interview and were not acquiring new information as much as corroborating data already in their possession. On the great majority of questions, the witness was cooperative, even though he made clear his opinion that the interrogation was unjustified and unconstitutional. Two subjects arose upon which petitioner refused to answer: his lectures at the University of New Hampshire, and his knowledge of the Progressive Party and its adherents.

The state courts upheld the attempt to investigate the academic subject on the ground that it might indicate whether petitioner was a ‘subversive person.’ What he taught the class at a state university was found relevant to the character of the teacher. The State Supreme Court carefully excluded the possibility that the inquiry was sustainable because of the state interest in the state university. There was no warrant in the authorizing resolution for that. 100 N.H. at page 110, 121 A.2d at pages 789, 790. The sole basis for the inquiry was to scrutinize the teacher as a person, and the inquiry must stand or fall on that basis.

The interrogation on the subject of the Progressive Party was deemed to come within the Attorney General's mandate because that party might have been shown to be a ‘subversive organization.’ The State Supreme Court held that the ‘* * * questions called for answers concerning the membership or participation of named persons in the Progressive Party which, if given, would aid the Attorney General in determining whether that party and its predecessor are or were subversive organizations.’ 100 N.H. at page 112, 121 A.2d at page 791.

The New Hampshire court concluded that the ‘* * * right to lecture and the right to associate with others for a common purpose, be it political or otherwise, are individual liberties guaranteed to every citizen by the State and Federal Constitutions but are not absolute rights * * *. The inquiries authorized by the Legislature in connection with this investigation concerning the contents of the lecture and the membership, purposes and activities of the Progressive Party undoubtedly interfered with the defendant's free exercise of those liberties.’ 100 N.H. at page 113, 121 A.2d at pages 791, 792.

The State Supreme Court thus conceded without extended discussion that petitioner's right to lecture and his right to associate with others were constitutionally protected freedoms which had been abridged through this investigation. These conclusions could not be seriously debated. Merely to summon a witness and compel him, against his will, to disclose the nature of his past expressions and associations in a measure of governmental interference in these matters. These are rights which are safeguarded by the Bill of Rights and the Fourteenth Amendment. We believe that there unquestionably was an invasion of petitioner's liberties in the areas of academic freedom and political expression—areas in which government should be extremely reticent to tread.

The essentiality of freedom in the community of American universities is almost self-evident. No one should underestimate the vital role in a democracy that is played by those who guide and train our youth. To impose any strait jacket upon the intellectual leaders in our colleges and universities would imperil the future of our Nation. No field of education is so thoroughly comprehended by man that new discoveries cannot yet be made. Particularly is that true in the social sciences, where few, if any, principles are accepted as absolutes. Scholarship cannot flourish in an atmosphere of suspicion and distrust. Teachers and students must always remain free to inquire, to study and to evaluate, to gain new maturity and understanding; otherwise our civilization will stagnate and die.

Equally manifest as a fundamental principle of a democratic society is political freedom of the individual. Our form of government is built on the premise that every citizen shall have the right to engage in political expression and association. This right was enshrined in the First Amendment of the Bill of Rights. Exercise of these basic freedoms in America has traditionally been through the media of political associations. Any interference with the freedom of a party is simultaneously an interference with the freedom of its adherents. All political ideas cannot and should not be channeled into the programs of our two major parties. History has amply proved the virtue of political activity by minority, dissident groups, who innumerable times have been in the vanguard of democratic thought and whose programs were ultimately accepted. Mere unorthodoxy or dissent from the prevailing mores is not to be condemned. The absence of such voices would be a symptom of grave illness in our society.

Notwithstanding the undeniable importance of freedom in the areas, the Supreme Court of New Hampshire did not consider that the abridgment of petitioner's rights under the Constitution vitiated the investigation. In the view of that court, ‘the answer lies in a determination of whether the object of the legislative investigation under consideration is such as to justify the restriction thereby imposed upon the defendant's liberties.’ 100 N.H. at pages 113—114, 121 A.2d at pages 791, 792. It found such justification in the legislature's judgment, expressed by its authorizing resolution, that there exists a potential menace from those who would overthrow the government by force and violence. That court concluded that the need for the legislature to be informed on so elemental a subject as the self-preservation of government outweighed the deprivation of constitutional rights that occurred in the process.

We do not now conceive of any circumstance wherein a state interest would justify infringement of rights in these fields. But we do not need to reach such fundamental questions of state power to decide this case. The State Supreme Court itself recognized that there was a weakness in its conclusion that the menace of forcible overthrow of the government justified sacrificing constitutional rights. There was a missing link in the chain of reasoning. The syllogism was not complete. There was nothing to connect the questioning of petitioner with this fundamental interest of the State. Petitioner had been interrogated by a one-man legislative committee, not by the legislature itself. The relationship of the committee to the full assembly is vital, therefore, as revealing the relationship of the questioning to the state interest.

In light of this, the state court emphasized a factor in the authorizing resolution which confined the inquiries which the Attorney General might undertake to the object of the investigation. That limitation was thought to stem from the authorizing resolution's condition precedent to the institution of any inquiry. The New Hampshire legislature specified that the Attorney General should act only when he had information which ‘* * * in his judgment may be reasonable or reliable.’ The state court construed this to mean that the Attorney General must have something like probable cause for conducting a particular investigation. It is not likely that this device would prove an adequate safeguard against unwarranted inquiries. The legislature has specified that the determination of the necessity for inquiry shall be left in the judgment of the investigator. In this case, the record does not reveal what reasonable or reliable information led the Attorney General to question petitioner. The state court relied upon the Attorney General's description of prior information that had come into his possession.[FN13]

The respective roles of the legislature and the investigator thus revealed are of considerable significance to the issue before us. It is eminently clear that the basic discretion of determining the direction of the legislative inquiry has been turned over to the investigative agency. The Attorney General has been given such a sweeping and uncertain mandate that it is his decision which picks out the subjects that will be pursued, what witnesses will be summoned and what questions will be asked. In this circumstance, it cannot be stated authoritatively that the legislature asked the Attorney General to gather the kind of facts comprised in the subjects upon which petitioner was interrogated.

Instead of making known the nature of the data it desired, the legislature has insulated itself from those witnesses whose rights may be vitally affected by the investigation. Incorporating by reference provisions from its subversive activities act, it has told the Attorney General, in effect to screen the citizenry of New Hampshire to bring to light anyone who fits into the expansive definitions.

Within the very broad area thus committed to the discretion of the Attorney General there may be many facts which the legislature might find useful. There would also be a great deal of data which that assembly would not want or need. In the classes of information that the legislature might deem to desirable to have, there will be some which it could not validly acquire because of the effect upon the constitutional rights of individual citizens. Separating the wheat from the chaff, from the standpoint of the legislature's object, is the legislature's responsibility because it alone can make that judgment. In this case, the New Hampshire legislature has delegated that task to the Attorney General.

As a result, neither we nor the state courts have any assurance that the questions petitioner refused to answer fall into a category of matters upon which the legislature wanted to be informed when it initiated this inquiry. The judiciary are thus placed in an untenable position. Lacking even the elementary fact that the legislature wants certain questions answered and recognizing that petitioner's constitutional rights are in jeopardy, we are asked to approve or disapprove his incarceration for contempt.

In our view, the answer is clear. No one would deny that the infringement of constitutional rights of individuals would violate the guarantee of due process where no state interest underlies the state action. Thus, if the Attorney General's interrogation of petitioner were in fact wholly unrelated to the object of the legislature in authorizing the inquiry, the Due Process Clause would preclude the endangering of constitutional liberties. We believe that an equivalent situation is presented in this case. The lack of any indications that the legislature wanted the information the Attorney General attempted to elicit from petitioner must be treated as the absence of authority. It follows that the use of the contempt power, notwithstanding the interference with constitutional rights, was not in accordance with the due process requirements of the Fourteenth Amendment.

The conclusion that we have reached in this case is not grounded upon the doctrine of separation of powers. In the Federal Government, it is clear that the Constitution has conferred the powers of government upon three major branches: the Executive, the Legislative and the Judicial. No contention has been made by petitioner that the New Hampshire legislature, by this investigation, arrogated to itself executive or judicial powers. We accept the finding of the State Supreme Court that the employment of the Attorney General as the investigating committee does not alter the legislative nature of the proceedings. Moreover, this Court has held that the concept of separation of powers embodied in the United States Constitution is not mandatory in state governments. Dreyer v. People of State of Illinois, 187 U.S. 71, 23 S.Ct. 28, 47 L.Ed. 79; but cf. Tenney v. Brandhove, 341 U.S. 367, 378, 71 S.Ct. 783, 789, 95 L.Ed. 1019. Our conclusion does rest upon a separation of the power of a state legislature to conduct investigations from the responsibility to direct the use of that power insofar as that separation causes a deprivation of the constitutional rights of individuals and a denial of due process of law.

The judgment of the Supreme Court of New Hampshire is reversed.

Reversed.

Mr. Justice WHITTAKER took no part in the consideration or decision of this case. 

Mr. Justice FRANKFURTER, whom Mr. Justice HARLAN joins, concurring in the result.

For me this is a very different case from Watkins v. United States, 354 U.S. 178, 77 S.Ct. 1173. This case comes to us solely through the limited power to review the action of the States conferred upon the Court by the Fourteenth Amendment. Petitioner claims that respect for liberties guaranteed by the Due Process Clause of that Amendment precludes the State of New Hampshire from compelling him to answer certain questions put to him by the investigating arm of its legislature. Ours is the narrowly circumscribed but exceedingly difficult task of making the final judicial accommodation between the competing weighty claims that underlie all such questions of due process.

In assessing the claim of the State of New Hampshire to the information denied it by petitioner, we cannot concern ourselves with the fact that New Hampshire chose to make its Attorney General in effect a standing committee of its legislature for the purpose of investigating the extent of ‘subversive’ activities within its bounds. The case must be judged as though the whole body of the legislature had demanded the information of petitioner. It would make the deepest inroads upon our federal system for this Court now to hold that it can determine the appropriate distribution of powers and their delegation within the forty-eight States. As the earlier Mr. Justice Harlan said for a unanimous Court in Dreyer v. People of State of Illinois, 187 U.S. 71, 84, 23 S.Ct. 28, 32, 47 L.Ed. 79:

‘Whether the legislative, executive and judicial powers of a State shall be kept altogether distinct and separate, or whether persons or collections of persons belonging to one department may, in respect to some matters, exert powers which, strictly speaking, pertain to another department of government, is for the determination of the State. And its determination one way or the other cannot be an element in the inquiry whether the due process of law prescribed by the Fourteenth Amendment has been respected by the State or its representatives when dealing with matters involving life or liberty.’

Whether the state legislature should operate largely by committees, as does the Congress, or whether committees should be the exception, as is true of the House of Commons, whether the legislature should have two chambers or only one, as in Nebraska, whether the State's chief executive should have the pardoning power, whether the State's judicial branch must provide trial by jury, are all matters beyond the reviewing powers of this Court. Similarly, whether the Attorney General of New Hampshire acted within the scope of the authority given him by the state legislature is a matter for the decision of the courts of that State, as it is for the federal courts to determine whether an agency to which Congress has delegated power has acted within the confines of its mandate. See United States v. Rumely, 345 U.S. 41, 73 S.Ct. 543, 97 L.Ed. 770. Sanction of the delegation rests with the New Hampshire Supreme Court, and its validation in Nelson v. Wyman, 99 N.H. 33, 105 A.2d 756, is binding here.

Pursuant to an investigation of subversive activities authorized by a joint resolution of both houses of the New Hampshire legislature, the State Attorney General subpoenaed petitioner before him on January 8, 1954, for extensive questioning. Among the matters about which petitioner was questioned were: details of his career and personal life, whether he was then or ever had been a member of the Communist Party, whether he had ever attended its meetings, whether he had ever attended meetings that he knew were also attended by Party members, whether he knew any Communists in or out of the State, whether he knew named persons with alleged connections with organizations either on the United States Attorney General's list or cited by the Un-American Activities Committee of the United States House of Representatives or had ever attended meetings with them, whether he had ever taught or supported the overthrow of the State by force or violence or had ever known or assisted any persons or groups that had done so, whether he had ever been connected with organizations on the Attorney General's list, whether he had supported or written in behalf of a variety of allegedly subversive, named causes, conferences, periodicals, petitions, and attempts to raise funds for the legal defense of certain persons, whether he knew about the Progressive Party, what positions he had held in it, whether he had been a candidate for Presidential Elector for that Party, whether certain persons were in that Party, whether Communists had influenced or been members of the Progressive Party, whether he had sponsored activities in behalf of the candidacy of Henry A. Wallace, whether he advocated replacing the capitalist system with another economic system, whether his conception of socialism involved force and violence, whether by his writings and actions he had ever attempted to advance the Soviet Union's ‘propaganda line,’ whether he had ever attended meetings of the Liberal Club at the University of New Hampshire, whether the magazine of which he was co-editor was ‘a Communist-line publication,’ and whether he knew named persons.

Petitioner answered most of these questions, making it very plain that he had never been a Communist, never taught violent overthrow of the Government, never knowingly associated with Communists in the State, but was a socialist believer in peaceful change who had at one time belonged to certain organizations on the list of the United States Attorney General (which did not include the Progressive Party) or cited by the House Un-American Activities Committee. He declined to answer as irrelevant or violative of free speech guaranties certain questions about the Progressive Party and whether he knew particular persons. He stated repeatedly, however, that he had no knowledge of Communists or of Communist influence in the Progressive Party, and he testified that he had been a candidate for that Party, signing the required loyalty oath, and that he did not know whether an alleged Communist leader was active in the Progressive Party.

Despite the exhaustive scope of this inquiry, the Attorney General again subpoenaed petitioner to testify on June 3, 1954, and the interrogation was similarly sweeping. Petitioner again answered virtually all questions, including those concerning the relationship of named persons to the Communist Party or other causes deemed subversive under state laws, alleged Communist influence on all organizations with which he had been connected including the Progressive Party, and his own participation in organizations other than the Progressive Party and its antecedent, the Progressive Citizens of America. He refused, however, to answer certain questions regarding (1) a lecture given by him at the University of New Hampshire, (2) activities of himself and others in the Progressive political organizations, and (3) ‘opinions and beliefs,’ invoking the constitutional guarantees of free speech.

The Attorney General then petitioned the Superior Court to order petitioner to answer questions in these categories. The court ruled that petitioner had to answer those questions pertaining to the lectures and to the Progressive Party and its predecessor but not those otherwise pertaining to ‘opinions and beliefs.’ Upon petitioner's refusal to answer the questions sanctioned by the court, he was found in contempt of court and ordered committed to the county jail until purged of contempt.

The Supreme Court of New Hampshire affirmed the order of the Superior Court. It held that the questions at issue were relevant and that no constitutional provision permitted petitioner to frustrate the State's demands. 100 N.H. 103, 121 A.2d 783.

The questions that petitioner refused to answer regarding the university lecture, the third given by him in three years at the invitation of the faculty for humanities, were:

‘What was the subject of your lecture?’

‘Didn't you tell the class at the University of New Hampshire on Monday, March 22, 1954, that Socialism was inevitable in this country?’

‘Did you advocate Marxism at that time?’

‘Did you express the opinion, or did you make the statement at that time that Socialism was inevitable in America?’

‘Did you in this last lecture on March 22 or in any of the former lectures espouse the theory of dialectical materialism?’

‘I have in the file here a statement from a person who attended your class, and I will read it in part because I don't want you to think I am just fishing. ‘His talk this time was on the inevitability of the Socialist program. It was a glossed-over interpretation of the materialist dialectic.’ Now, again I ask you the original question.'

In response to the first question of this series, petitioner had said at the hearing:

‘I would like to say one thing in this connection, Mr. Wyman. I stated under oath at my last appearance that, and I now repeat it, that I do not advocate or in any way furher the aim of overthrowing constitutional government by force and violence. I did not so advocate in the lecture I gave at the University of New Hampshire. In fact I have never at any time so advocated in a lecture anywhere. Aside from that I have nothing I want to say about the lecture in question.’

The New Hampshire Supreme Court, although recognizing that such inquiries (100 N.H. 113, 114, 121 A.2d 792) ‘undoubtedly interfered with the defendant's free exercise’ of his constitutionally guaranteed right to lecture, justified the interference on the ground that it would occur ‘in a limited area in which the legislative committee may reasonably believe that the overthrow of existing government by force and violence is being or has been taught, advocated or planned, an area in which the interest of the State justifies this intrusion upon civil liberties.’ According to the court, the facts that made reasonable the committee's belief that petitioner had taught violent overthrow in his lecture were that he was a Socialist with a record of affiliation with groups cited by the Attorney General of the United States or the House Un-American Activities Committee and that he was co-editor of an article stating that, although the authors hated violence, it was less to be deplored when used by the Soviet Union than by capitalist countries.

When weighed against the grave harm resulting from governmental intrusion into the intellectual life of a university, such justification for compelling a witness to discuss the contents of his lecture appears grossly inadequate. Particularly is this so where the witness has sworn that neither in the lecture nor at any other time did he ever advocate overthrowing the Government by force and violence.

Progress in the natural sciences is not remotely confined to findings made in the laboratory. Insights into the mysteries of nature are born of hypothesis and speculation. The more so is this true in the pursuit of understanding in the groping endeavors of what are called the social sciences, the concern of which is man and society. The problems that are the respective preoccupations of anthropology, economics, law, psychology, sociology and related areas of scholarship are merely departmentalized dealing, by way of manageable division of analysis, with interpenetrating aspects of holistic perplexities. For society's good—if understanding be an essential need of society—inquiries into these problems, speculations about them, stimulation in others of reflection upon them, must be left as unfettered as possible. Political power must abstain from intrusion into this activity of freedom, pursued in the interest of wise government and the people's well-being, except for reasons that are exigent and obviously compelling.

These pages need not be burdened with proof, based on the testimony of a cloud of impressive witnesses, of the dependence of a free society on free universities. This means the exclusion of governmental intervention in the intellectual life of a university. It matters little whether such intervention occurs avowedly or through action that inevitably tends to check the ardor and fearlessness of scholars, qualities at once so fragile and so indispensable for fruitful academic labor. One need only refer to the address of T. H. Huxley at the opening of Johns Hopkins University, the Annual Reports of President A. Lawrence Lowell of Harvard, the Reports of the University Grants Committee in Great Britain, as illustrative items in a vast body of literature. Suffice it to quote the latest expression on this subject. It is also perhaps the most poignant because its plea on behalf of continuing the free spirit of the open universities of South Africa has gone unheeded.

‘In a university knowledge is its own end, not merely a means to an end. A university ceases to be true to its own nature if it becomes the tool of Church or State or any sectional interest. A university is characterized by the spirit of free inquiry, its ideal being the ideal of Socrates—‘to follow the argument where it leads.’ This implies the right to examine, question, modify or reject traditional ideas and beliefs. Dogma and hypothesis are incompatible, and the concept of an immutable doctrine is repugnant to the spirit of a university. The concern of its scholars is not merely to add and revise facts in relation to an accepted framework, but to be ever examining and modifying the framework itself.

‘Freedom to reason and freedom for disputation on the basis of observation and experiment are the necessary conditions for the advancement of scientific knowledge. A sense of freedom is also necessary for creative work in the arts which, equally with scientific research, is the concern of the university.

‘* * * It is the business of a university to provide that atmosphere which is most conducive to speculation, experiment and creation. It is an atmosphere in which there prevail ‘the four essential freedoms' of a university—to determine for itself on academic grounds who may teach, what may be taught, how it shall be taught, and who may be admitted to study.’

The Open Universities in South Africa 10—12. (A statement of a conference of senior scholars from theUniversity of Cape Town and the University of the Witwatersrand, including A. v. d. S. Centlivres and Richard Feetham, as Chancellors of the respective universities.[CFN1])

I do not suggest that what New Hampshire has here sanctioned bears any resemblance to the policy against which this South African remonsttrance was directed. I do say that in these matters of the spirit inroads on legitimacy must be resisted at their incipiency. This kind of evil grows by what it is allowed to feed on. The admonition of this Court in another context is applicable here. ‘It may be that it is the obnoxious thing in its mildest and least repulsive form; but illegitimate and unconstitutional practices get their first footing in that way, namely, by silent approaches and slight deviations from legal modes of procedure.’ Boyd v. United States, 116 U.S. 616, 635, 6 S.Ct. 524, 535, 29 L.Ed. 746.

Petitioner stated, in response to questions at the hearing, that he did not know of any Communist interest in, connection with, influence over, activity in, or manipulation of the Progressive Party. He refused to answer, despite court order, the following questions on the ground that, by inquiring into the activities of a lawful political organization, they infringed upon the inviolability of the right to privacy in his political thoughts, actions and associations:

‘Was she, Nancy Sweezy, your wife, active in the formation of the Progressive Citizens of America?’

‘Was Nancy Sweezy then working with individuals who were then members of the Communist Party?'[CFN2]

‘Was Charles Beebe active in forming the Progressive Citizens of America?’

‘Did he work with your present wife—Did Charles Beebe work with your present wife in 1947?’

‘Did it (a meeting at the home of one Abraham Walenko) have anything to do with the Progressive Party?’

The Supreme Court of New Hampshire justified this intrusion upon his freedom on the same basis that it upheld questioning about the university lecture, namely, that the restriction was limited to situations where the Committee had reason to believe that violent overthrow of the Government was being advocated or planned. It ruled:

‘* * * That he (the Attorney General) did possess information which was sufficient to reasonably warrant inquiry concerning the Progressive Party is evident from his statement made during the hearings held before him that ‘considerable sworn testimony has been given in this investigation to the effect that the Progressive Party in New Hampshire has been heavily infiltrated by members of the Communist Party and that the policies and purposes of the Progressive Party have been directly influenced by members of the Communist Party.‘‘ (100 N.H. 111, 121 A.2d 790.)

For a citizen to be made to forego even a part of so basic a liberty as his political autonomy, the subordinating interest of the State must be compelling. Inquiry pursued in safeguarding a State's security against threatened force and violence cannot be shut off by mere disclaimer, though of course a relevant claim may be made to the privilege against self-incrimination. (The New Hampshire Constitution guarantees this privilege.) But the inviolability of privacy belonging to a citizen's political loyalties has so overwhelming an importance to the well-being of our kind of society that it cannot be constitutionally encroached upon on the basis of so meagre a countervailing interest of the State as may be argumentatively found in the remote, shadowy threat to the security of New Hampshire allegedly presented in the origins and contributing elements of the Progressive Party and in petitioner's relations to these.

In the political realm, as in the academic, thought and action are presumptively immune from inquisition by political authority. It cannot require argument that inquiry would be barred to ascertain whether a citizen had voted for one or the other of the two major parties either in a state or national election. Until recently, no difference would have been entertained in regard to inquiries about a voter's affiliations with one of the various so-called third parties that have had their day, or longer, in our political history. This is so, even though adequate protection of secrecy by way of the Australian ballot did not come into use till 1888. The implications of the United States Constitution for national elections and ‘the concept of ordered liberty’ implicit in the Due Process Clause of the Fourteenth Amendment as against the States, Palko v. State of Connecticut, 302 U.S. 319, 325, 58 S.Ct. 149, 151, 82 L.Ed. 288, were not frozen as of 1789 or 1868, respectively. While the language of the Constitution does not change, the changing circumstances of a progressive society for which it was designed yield new and fuller import to its meaning. See Hurtado v. People of State of California, 110 U.S. 516, 528—529, 4 S.Ct. 111, 117, 292, 28 L.Ed. 232; McCulloch v. State of Maryland, 4 Wheat. 316, 4 L.Ed. 579. Whatever, on the basis of massive proof and in the light of history, of which this Court may well take judicial notice, be the justification for not regarding the Communist Party as a conventional political party, no such justification has been afforded in regard to the Progressive Party. A foundation in fact and reason would have to be established far weightier than the intimations that appear in the record to warrant such a view of the Progressive Party.[CFN3] This precludes the questioning that petitioner resisted in regard to that Party.

To be sure, this is a conclusion based on a judicial judgment in balancing two contending principles—the right *267 of a citizen to political privacy, as protected by the Fourteenth Amendment, and the right of the State to self-protection. And striking the balance implies the exercise of judgment. This is the inescapable judicial task in giving substantive content, legally enforced, to the Due Process Clause, and it is a task ultimately committed to this Court. It must not be an exercise of whim or will. It must be an overriding judgment founded on something much deeper and more justifiable than personal preference. As far as it lies within human limitations, it must be an impersonal judgment. It must rest on fundamental presuppositions rooted in history to which widespread acceptance may fairly be attributed. Such a judgment must be arrived at in a spirit of humility when it counters the judgment of the State's highest court. But, in the end, judgment cannot be escaped—the judgment of this Court. See concurring opinions in Haley v. State of Ohio, 332 U.S. 596, 601, 68 S.Ct. 302, 304, 92 L.Ed. 224; State of Louisiana ex rel. Francis v. Resweber, 329 U.S. 459, 466, 470—471, 67 S.Ct. 374, 377, 379—380, 91 L.Ed. 422; Malinski v. People of State of New York, 324 U.S. 401, 412, 414—417, 65 S.Ct. 781, 786, 787—789, 89 L.Ed. 1029.

And so I am compelled to conclude that the judgment of the New Hampshire court must be reversed.

Footnotes

[FN1] N.H.Laws 1951, c. 193; now N.H.Rev.Stat.Ann.1955, c. 588, ss 1—16.

[FN2] N.H.Laws 1953, c. 307.

[FN3] The authority of the Attorney General was continued for another two-year period by N.H.Laws 1955, cc. 197, 340.

[FN4] Having determined that an investigation should be conducted concerning a proper subject of action by it, the Legislature's choice of the Attorney General as its investigating committee, instead of a committee of its own members or a special board or commission, was not in and of itself determinative of the nature of the investigation. His position as the chief law enforcement officer of the State did not transform the inquiry which was otherwise legislative into executive action.’ Nelson v. Wyman, 99 N.H. 33, 38, 105 A.2d 756, 762, 763.

The Attorney General of New Hampshire is appointed to office by the Governor and the State Council, a group of five persons who share some of the executive responsibilities in the State Government. The principal duties of the Attorney General are set forth in N.H.Rev.Stat.Ann.1955, c. 7, ss 6—11. He represents the State in all cases before the State Supreme Court. He prosecutes all criminal cases in which the accused is charged with an offense punishable by twenty-five years in prison or more. All other criminal cases are under his general supervision. He gives opinions on questions of law to the legislature, or to state boards, departments, commissions, officers, etc., on questions relating to their official duties.

[FN5] ‘Whenever any official or board is given the power to summon witnesses and take testimony, but has not the power to punish for contempt, and any witness refuses to obey such summons, either as to his appearance or as to the production of things specified in the summons, or refuses to testify or to answer any question, a petition for an order to compel him to testify or his compliance with the summons may be filed in the superior court, or with some justice thereof.’ N.H.Rev.Stat.Ann.1955, c. 491, s 19. ‘Upon such petition the court or justice shall have authority to proceed in the matter as though the original proceeding had been in the court, and may make orders and impose penalties accordingly.’ Id., s 20. See State v. Uphaus, 100 N.H. 1, 116 A.2d 887.

[FN6] ‘Those called to testify before this and other similar investigations can be classified in three categories.

‘First there are Communists and those who have reason to believe that even if they are not Communists they have been accused of being and are in danger of harassment and prosecution.

‘Second, there are those who approve of the purposes and methods of these investigations.

‘Third, there are those who are not Communists and do not believe they are in danger of being prosecuted, but who yet deeply disapprove of the purposes and methods of these investigations.

‘The first group will naturally, and I think wholly justifiably, plead the constitutional privilege of not being witnesses against themselves.

‘The second group will equally naturally be cooperative witnesses.

‘The third group is faced with an extremely difficult dilemma. I know because I belong to this third group, and I have been struggling with its problems for many weeks now. I would like to explain what the nature of that dilemma is. I think it is important that both those conducting these inquiries and the public should understand.

‘It is often said: If a person is not a Communist and has nothing to fear, why should he not answer whatever questions are put to him and be done with it? The answer, of course, is that some of us believe these investigations are evil and dangerous, and we do not want to give our approval to them, either tacitly or otherwise. On the contrary, we want to oppose them to the best of our ability and persuade others to do likewise, with the hope of eventually abolishing them altogether.

‘Our reasons for opposing these investigations are not captious or trivial. They have deep roots in principle and conscience. Let me explain with reference to the present New Hampshire investigation. The official purpose of the inquiry is to uncover and lay the basis for the prosecution of persons who in one way or another promote the forcible overthrow of constitutional forms of government. Leaving aside the question of the constitutionality of the investigation, which is now before the courts, I think it must be plain to any reasonable person who is at all well informed about conditions in New Hampshire today that strict adherence to this purpose would leave little room for investigation. It is obvious enough that there are few radicals or dissenters of any kind in New Hampshire; and if there are any who advocate use of force and violence, they must be isolated crackpots who are no danger to anyone, least of all to the constitutional form of government of state and nation. The Attorney General should be able to check these facts quickly and issue a report satisfying the mandate laid upon him by the legislature.

‘But this is not what he has done. We do not know the whole story, but enough has come out to show that the Attorney General has issued a considerable number of subpoenas and has held hearings in various parts of the state. And so far as the available information allows us to judge, most of those subpoenaed have fallen into one or both of two groups: first professors at Dartmouth and the University of New Hampshire who have gained a reputation for liberal or otherwise unorthodox views, and, second, people who have been active in the Progressive Party. It should be specially noted that whatever may be thought of the Progressive Party in any other respect, it was certainly not devoted to violent overthrow of constitutional forms of government but on the contrary to effecting reforms through the very democratic procedures which are the essence of constitutional forms of government.

‘The pattern I have described is no accident. Whatever their official purpose, these investigations always end up by inquiring into the politics, ideas, and beliefs of people who hold what are, for the time being, unpopular views. The federal House Committee on Un-American Activities, for example, is supposed to investigate various kinds of propaganda and has no other mandate whatever. Over the years, however, it has spent almost no time investigating propaganda and has devoted almost all of its energies to ‘exposing’ people and their ideas, their affiliations, their associations. Similarly, this New Hampshire investigation is supposed to be concerned with violent overthrow of government, but it is actually turning out to be concerned with what few manifestations of political dissent have made themselves felt in the state in recent years.

‘If all this is so, and if the very first principle of the American constitutional form of government is political freedom—which I take to include freedoms of speech, press, assembly, and association—then I do not see how it can be denied that these investigations are a grave danger to all that Americans have always claimed to cherish. No rights are genuine if a person, for exercising them, can be hauled up before some tribunal and forced under penalties of perjury and contempt to account for his ideas and conduct.

‘Let us now return to the problem of the witness who would have nothing to fear from being what is nowadays styled a ‘friendly’ witness, but who feels deeply that to follow such a course would be a betrayal of his principles and repugnant to his conscience. What other courses are open to him?

‘He can claim the privilege not to be a witness against himself and thus avoid a hateful inquisition. I respect the decision of those who elect to take this course. My own reason for rejecting it is that, with public opinion in its present state, the exercise of the privilege is almost certain to be widely misinterpreted. One of the noblest and most precious guarantees of freedom, won in the course of bitter struggles and terrible suffering, has been distorted in our own day to mean a confession of guilt, the more sinister because undefined and indeed undefinable. It is unfortunate, but true, that the public at large has accepted this distortion and will scarcely listen to those who have invoked the privilege.

‘Alternatively, the witness can seek to uphold his principles and maintain his integrity, not by claiming the protection of the Fifth Amendment (or the Fifteenth Article of the New Hampshire Bill of Rights), but by contesting the legitimacy of offensive questions on other constitutional and legal grounds.

‘Just how far the First Amendment limits the right of legislative inquiry has not been settled. The Supreme Court of the United States is at this very moment considering a case (the Emspak case (349 U.S. 190, 75 S.Ct. 687, 99 L.Ed. 997)) which may do much to settle the question. But even before the Court has handed down its decision in the Emspak case, it is quite certain that the First Amendment does place some limitations on the power of investigation, and it is always open to a witness to challenge a question on the ground that it transgresses these limitations and, if necessary, to take the issue to the courts for decision.

‘Moreover, a witness may not be required to answer questions unless they are ‘pertinent to the matter under inquiry’ (the words are those of the United States Supreme Court).

‘What is the ‘matter under inquiry’ in the present investigation? According to the Act of the New Hampshire legislature directing the investigation, its purpose is twofold: (1) ‘to make full and complete investigation with respect to violations of the subversive activities act of 1951,’ and (2) ‘to determine whether subversive persons as defined in said act are presently located within this state.’

‘I have studied the subversive activities act of 1951 with care, and I am glad to volunteer the information that I have absolutely no knowledge of any violations of any of its provisions; further, that I have no knowledge of subversive persons presently located within the state.

‘That these statements may carry full conviction, I am prepared to answer certain questions about myself, though in doing so I do not mean to concede the right to ask them. I am also prepared to discuss my views relating to the use of force and violence to overthrow constitutional forms of government.

‘But I shall respectfully decline to answer questions concerning ideas, beliefs, and associations which could not possibly be pertinent to the matter here under inquiry and/or which seem to me to invade the freedoms guaranteed by the First Amendment to the United States Constitution (which, of course, applies equally to the several states).’

[FN7] The Progressive Party offered a slate of candidates for national office in the 1948 presidential election. Henry A. Wallace, former Vice President of the United States, was the party's selection for the presidency. Glen Taylor, former United States Senator, was the vice-presidential nominee of the party. Nationwide, the party received a popular vote of 1,156,103. Of this total, 1,970 votes for Progressive Party candidates were cast in New Hampshire. Statistics of the Presidential and Congressional Election of November 2, 1948, pp. 24, 48—49.

[FN8] See note 5, supra.

[FN9] The court made a general ruling that questions concerning the opinions or beliefs of the witness were not pertinent. Nevertheless, it did propound to the witness the one question about his belief in Communism.

[FN10] See Note 1, supra.

[FN11] “Subversive person' means any person who commits, attempts to commit, or aids in the commission, or advocates, abets, advises or teaches, by any means any person to commit, attempt to commit, or aid in the commission of any act intended to overthrow, destroy or alter, or to assist in the overthrow, destruction or alteration of, the constitutional form of the government of the United States, or of the state of New Hampshire, or any political subdivision of either of them, by force, or violence; or who is a member of a subversive organization or a foreign subversive organization.' N.H.Rev.Stat.Ann.1955, c. 588, s 1.

[FN12] ‘For the purpose of this chapter ‘organization’ means an organization, corporation, company, partnership, association, trust, foundation, fund, club, society, committee, political party, or any group of persons, whether or not incorporated, permanently or temporarily associated together for joint action or advancement of views on any subject or subjects.

“Subversive organization' means any organization which engages in or advocates, abets, advises, or teachers, or a purpose of which is to engage in or advocate, abet, advise, or teach activities intended to overthrow, destroy or alter, or to assist in the overthrow, destruction or alteration of, the constitutional form of the government of the United States, or of the state of New Hampshire, or of any political subdivision of either of them, by force, or violence.' Ibid.

[FN13] The State Supreme Court illustrated the ‘reasonable or reliable’ information underlying the inquiries on the Progressive Party by quoting from a remark made by the Attorney General at the hearing in answer to petitioner's objection to a line of questions. The Attorney General had declared that he had ‘* * * considerable sworn testimony * * * to the effect that the Progressive Party in New Hampshire has been heavily infiltrated by members of the Communist Party and that the policies and purposes of the Progressive Party have been directly influenced by members of the Communist Party.’ 100 N.H. at page 111, 121 A.2d at pages 790, 791. None of this testimony is a part of the record in this case. Its existence and weight were not independently reviewed by the state courts.

The court did not point to anything that supported the questioning on the subject of the lecture. It stated that the Attorney General could inquire about lectures only if he ‘* * * possesses reasonable or reliable information indicating that the violent overthrow of existing government may have been advocated or taught, either ‘knowingly and wilfully’ or not.' 100 N.H. at page 110, 121 A.2d at pages 789, 790. What, if anything, indicated that petitioner knowingly or innocently advocated or taught violent overthrow of existing government does not appear. At one point in the hearing, the Attorney General said to petitioner: ‘I have in the file here a statement from a person who attended your class, and I will read it in part because I don't want you to think I am just fishing. ‘His talk this time was on the inevitability of the Socialist program. It was a glossed-over interpretation of the materialist dialectic.‘‘ R. 107. The court did not cite this statement.

[CFN1] The Hon. A. v. d. S. Centlivres only recently retired as Chief Justice of South Africa, and the Hon. Richard Feetham is also an eminent, retired South African judge.

[CFN2] Inclusion of this question among the unanswered questions appears to have been an oversight in view of the fact that petitioner attempted to answer it at the hearing by stating that he had never to his knowledge known members of the Communist Party in New Hampshire. In any event, petitioner's brief states that he is willing to repeat the answer to this question if the Attorney General so desires. This is consistent with his demonstrated willingness to answer all inquiries regarding the Communist Party, including its relation to the Progressive Party.

[CFN3] The Progressive Party was on the ballot in forty-four States, including New Hampshire, in 1948, and in twenty-six States in 1952.

[The opinon of Justice Clark (with Justice Burton), dissenting, is omitted in this version.]

162 F.3d 708

United States Court of Appeals,
First Circuit.

In re: Michael A. CUSUMANO and David B. Yoffie
v.
MICROSOFT CORPORATION, Petitioner, Appellant.

No. 98–2133.

Heard Nov. 5, 1998.
Decided Dec. 15, 1998.

Attorneys and Law Firms  

D. Stuart Meiklejohn, with whom John L. Warden, Richard J. Urowsky, Steven J. Holley, Michael E. Swartz, Hilary M. Williams, Sullivan & Cromwell, Thomas J. Sartory, Lynne Alix Morrison, and Goulston & Storrs, P.C. were on brief, for petitioner.

Jeffrey Swope, with whom Palmer & Dodge LLP was on brief, for respondents Michael A. Cusumano and Massachusetts Institute of Technology.

Jonathan M. Albano, with whom Shaun B. Spencer, Bingham Dana LLP, and Kimberly S. Budd, Office of the General Counsel, Harvard University, were on brief, for respondents David B. Yoffie and Harvard University.

Before SELYA, Circuit Judge, COFFIN and BOWNES, Senior Circuit Judges.

Opinion

SELYA, Circuit Judge.

In this appeal, petitioner-appellant Microsoft Corporation (Microsoft) invites us to reverse the district court's denial of its motion to compel production of research materials compiled by two academic investigators. Microsoft wants to use the subpoenaed materials in defending a civil antitrust case, United States v. Microsoft Corp., presently being tried in the United States District Court for the District of Columbia. Mindful that important First Amendment values are at stake, we decline Microsoft's invitation.

I. THE ANTITRUST CASE

We draw our description of the antitrust litigation in large part from the court in which that litigation pends. See United States v. Microsoft Corp., 1998 WL 614485 (D.D.C. 1998).

Microsoft is one of the most profitable companies in the computer industry. It first attained a significant foothold in the production of operating systems for the personal computer (PC) market when a leading computer manufacturer, International Business Machines Corporation, chose Microsoft's “MS–DOS” operating system for its PCs in the early 1980s.  An operating system is the “command center” of a PC. Microsoft, 1998 WL 614485 at *2. It facilitates the integrated use of hardware and software by controlling the interaction between a PC's processor, its memory, and devices like keyboards and disk drives. In relatively short order, Microsoft's operating systems achieved a preeminent market position. Microsoft continued to introduce new operating systems, including its phenomenally successful “Windows” systems, which allow a user to control a PC's operations by manipulating images on the computer screen with a mouse, rather than by typing commands.

The dominance of Microsoft's operating systems has been maintained, in part, because of the symbiotic relationship that exists between software and operating systems. Software programs utilize certain general functions of operating systems and are written to work with particular systems. Since more PCs depend on Windows than on any rival, software creators tend to write products for use on that system. In turn, most PC users want this operating system for their PCs, so that they can access the widest possible range of software programs. To keep this lucrative circle spinning, Microsoft licenses its operating system to PC manufacturers for pre-installation on new computers.

Microsoft's achievements in the operating systems market have encouraged it to spread its corporate wings. It now produces an internet browser product known as “Internet Explorer.” Browsers are software programs that allow computer users to access, manipulate, and display portions of the world-wide web (the Web). The Web is a set of sites that employ graphics, text, and other media to provide information to viewers. Among other things, browsers can be used to translate these sites from the language of their creation into a format intelligible to a user's particular PC. A browser can be purchased individually, acquired as an accessory to a newly purchased PC, or downloaded from internet access providers or other Web sites.

Microsoft's success has not gone unremarked. On May 18, 1998, the United States Department of Justice (DOJ) and several state attorneys general brought suit in the United States District Court for the District of Columbia, charging Microsoft with various antitrust violations. The complaint's main allegations center around Microsoft's accretion of market share for its Internet Explorer product. DOJ asserts that Microsoft, mindful that browsers potentially can be used as platforms on which to run software and thus replace, or at least compete with, operating systems, set out to increase its share of the browser market in a no-holds-barred campaign to safeguard its hegemony in the operating systems market.

In January 1997, Navigator, a competing browser produced by Netscape Communications Corporation (Netscape), boasted an 80% share of the browser market. Explorer enjoyed less than 20%. DOJ charges that Microsoft first essayed to increase its market share by colluding with Netscape. When Netscape rebuffed Microsoft's overtures, DOJ alleges, Microsoft illegally “tied” Explorer to its Windows operating system—refusing to grant computer manufacturers licenses to pre-install Windows for their customers unless the manufacturers agreed to pre-install Explorer and no other browser—and thereby increased its share of the browser market to approximately 50% by May of 1998. Microsoft denies the government's accusations. It avers that it never tried to split the browser market between itself and its competitors or to use monopoly power in the operating systems market to capture a lion's share of the browser market in an illegal fashion. Instead, it attributes its increased share of the browser market to Explorer's superiority.

The district court placed the antitrust litigation on a fast track. Among other things, the court established a tightly compressed schedule for pretrial discovery; shortened the usual time within which parties and non-parties alike might respond to discovery requests; directed that witness lists (to include no more than twelve trial witnesses per side, absent special permission) be submitted no later than August 24, 1998 (just over three months after the government sued); and closed discovery as of October 9, 1998 (save for discovery already underway). After that date, new discovery could be initiated only with leave of court. A bench trial commenced on October 19, 1998. That trial is ongoing.

II. THE RULE 45 PROCEEDINGS

In the course of pretrial discovery in the antitrust case, Microsoft learned about a forthcoming book entitled Competing on Internet Time: Lessons from Netscape and the Battle with Microsoft (Lessons) and obtained a copy of the manuscript. As its title implies, Lessons deals extensively with the “browser war” waged between Microsoft and Netscape. Its authors (respondents-appellees here) are distinguished academicians: Michael A. Cusumano, a tenured full professor at Massachusetts Institute of Technology's Sloan School of Management, and David B. Yoffie, a tenured full professor at Harvard Business School.

As part of their research for Lessons, the respondents interviewed over 40 current and former Netscape employees. Their interview protocol dealt with confidentiality on two levels. First, the respondents signed a nondisclosure agreement with Netscape, in which they agreed not to disclose proprietary information conveyed to them in the course of their investigation except upon court order, and then only after giving Netscape notice and an opportunity to oppose disclosure. Second, the respondents requested and received permission from interview subjects to record their discussions, and, in return, promised that each interviewee would be shown any quotes attributed to him upon completion of the manuscript, so that he would have a chance to correct any errors or to object to quotations selected by the authors for publication.

On September 18, 1998, believing that certain statements from Netscape employees reported in Lessons offered succor for its defense, Microsoft subpoenaed the professors' notes, tape recordings and transcripts of interviews, and correspondence with interview subjects. See Fed. R. Civ. P. 45. The respondents produced some correspondence, but declined to surrender the notes, tapes, or transcripts. Microsoft moved to compel the production of these items on October 1, 1998. Because the documents, if produced at all, would be produced in Cambridge, the subpoenas issued from the United States District Court for the District of Massachusetts and the motion to compel was docketed there as an independent proceeding. See id. (requiring a subpoena commanding only document production to “issue from the court for the district in which the production ... is to be made” and allowing enforcement “pursuant to an order of th[at] court”). On October 7, the respondents filed their oppositions.[FN1]

Following a hearing held the next day, the district court denied the motion to compel ore tenus. The court performed a case-specific balancing analysis, taking into account a myriad of factors. On one hand, it found that Microsoft's need for the information sought by the subpoenas, though real, was not great. Microsoft could have obtained that information directly from the sources revealed by the manuscript, and, in all events, its main thrust likely would be for purposes akin to impeachment. On the other hand, the court found that the respondents had a substantial interest in keeping the subpoenaed information confidential and that significant First Amendment values favored its protection. Balancing these and other elements, the court declined to compel production of the notes, tapes, and transcripts. Withal, the court retained jurisdiction in order to review individual items in camera for materiality on Microsoft's later motion and proclaimed its readiness to order specific material produced upon a showing of particularized need. Microsoft now appeals.

III. APPELLATE JURISDICTION

Federal courts, as courts of limited jurisdiction, may not presume the existence of subject matter jurisdiction, but, rather, must appraise their own authority to hear and determine particular cases. See Viqueira v. First Bank, 140 F.3d 12, 16 (1st Cir.1998). We do so here.

The procedural posture of this case is unusual. Microsoft, a litigant in a court in another district, moved in the District of Massachusetts to compel the respondents (who are not parties to that litigation) to honor subpoenas duces tecum. When the respondents objected, the district court obliged them, but retained jurisdiction to hear particularized claims of need. Meanwhile, the primary action is ongoing—and any appeal therein will go, in the first instance, to the District of Columbia Circuit.

Our customary appellate jurisdiction extends to “final decisions of the district courts.” 28 U.S.C. § 1291. Still, a decision or order can be final in the sense needed to confer appellate jurisdiction even if the proceeding in which it is rendered is ancillary to some other proceeding. Thus, in Horizons Titanium Corp. v. Norton Co., 290 F.2d 421 (1st Cir. 1961), a disappointed patent-seeker subpoenaed documents from a competitor for use in an action challenging the dismissal of its patent application. See id. at 421–22. The subpoenaed firm did not comply, and the patent-seeker moved to compel production in the United States District Court for the District of Massachusetts (although the principal dispute was pending elsewhere). See id. at 421. When the district court refused to order production of the documents, the patent-seeker appealed. In rejecting the subpoenaed firm's assertion that the court of appeals lacked jurisdiction, we explained that “the order of the district court made a final disposition of the only proceedings in its district growing out of a particular controversy, and the only proceeding pending between these particular parties anywhere,” and, thus, was final and appealable. Id. at 424. So it is here.

Nor does the district court's decision to retain jurisdiction detract from the immediate appealability of its order. It is settled law that a court's retention of jurisdiction in order to facilitate the consideration of possible future relief does not undermine the finality of an otherwise appealable order. See FTC v. Standard Fin. Mgmt. Corp., 830 F.2d 404, 407 (1st Cir. 1987); FTC v. Texaco, Inc., 555 F.2d 862, 873 n. 21 (D.C.Cir. 1977); see generally 15B Charles Alan Wright, et al., Federal Practice and Procedure § 3915.3 (2d ed. 1992) (explaining that an order's vulnerability to possible change through subsequent proceedings does not automatically deprive it of finality). Consequently, we have jurisdiction to hear and determine this appeal.

IV. THE MERITS

Microsoft argues that the district court underestimated its need for the subpoenaed information because that information would be useful not only for impeachment purposes, but also as independent evidence of Netscape's business miscalculations. See Fed. R. Evid. 807; see also United States v. American Tel. & Tel. Co., 516 F.Supp. 1237, 1239–42 (D.D.C. 1981) (admitting into evidence in an antitrust prosecution documents authored by agents of defendants' non-party competitors under the residual hearsay exception). Moreover, it had no other feasible way to obtain the information since the accelerated schedule in the antitrust case effectively thwarted direct discovery.[FN2] Turning to the other side of the balance, Microsoft claims that the district court erred in affording substantial protection to the subpoenaed materials because those materials were not confidential and emanated from disclosed sources. In this regard, Microsoft tells us that the only protectable data obtained by the respondents is proprietary information covered by the nondisclosure agreement—an agreement signed with Netscape, not with the individual interviewees.[FN3] Microsoft further asserts that the interviews were not confidential because the authors presented the manuscript, including quotes from interviews, to Netscape executives and outside reviewers prior to showing it to the persons quoted.

The respondents dispute virtually all of Microsoft's assertions. They maintain that Microsoft does not really need the information at all and that it can secure the same data through other, less intrusive avenues. Furthermore, the respondents asseverate that they are sufficiently like journalists for the protection afforded to journalists' materials to be applied here; that the information which they procured is confidential because of their interview protocol; and that forcing them to disclose the contents of the notes, tapes, and transcripts would endanger the values of academic freedom safeguarded by the First Amendment and jeopardize the future information-gathering activities of academic researchers.

A. Standard of Review.

To resolve these issues, we focus first on the applicable standard of review. Discovery orders ordinarily are reviewed for abuse of discretion. See Dykes v. DePuy, Inc.,  140 F.3d 31, 36–37 (1st Cir. 1998); Mack v. Great Atl. & Pac. Tea Co., 871 F.2d 179, 186–87 (1st Cir. 1989). Microsoft seeks to bend this rule and obtain plenary review. It proffers two reasons.

Microsoft's first ground is barren. It points out that the district court did not take testimony, but, rather, decided the case solely on a paper record, assisted by arguments of counsel. Thus, Microsoft contends, there is no occasion to defer since this court is equally well-equipped to evaluate the corpus of evidence upon which the district court based its decision. This line of argument is neither original nor persuasive. It has been tried before, and regularly rejected. See, e.g., United States Liab. Ins. Co. v. Selman, 70 F.3d 684, 688 (1st Cir. 1995); In re Tully, 818 F.2d 106, 108–10 (1st Cir. 1987). We, too, dismiss it.

Microsoft's second ground holds out more promise as a theoretical matter. It asserts that the lower court applied an incorrect legal standard—and ample authority supports the proposition that, whatever the procedural context, pure questions of law warrant de novo review. See, e.g., McCarthy v. Azure, 22 F.3d 351, 354 (1st Cir. 1994); In re Extradition of Howard, 996 F.2d 1320, 1327 (1st Cir. 1993). Here, however, Microsoft's argument fails because, as we explain below, the district court's test, which balanced the need for disclosure against the desirability of confidentiality, is correct as a matter of law. Refined to bare essence, Microsoft's quarrel with the district court's determination concerns the manner in which the court struck the required balance, rather than its selection of a legal rule. Since abuse of discretion is the precise rubric under which an appellate court should review a district court's application of a legal rule to the facts it has found, our review proceeds accordingly.

B. The Analytic Approach.

The discovery rules apply to subpoenas issued under Fed. R. Civ. P. 45. See 9A Wright et al., supra, § 2452. Thus, we start with Fed. R. Civ. P. 26(b)(2), which admonishes generally that:

the ... extent of the use of the discovery methods otherwise permitted under these rules ... shall be limited by the court if it determines that: (i) the discovery sought is unreasonably cumulative or duplicative, or is obtainable from some other source that is more convenient, less burdensome, or less expensive; (ii) the party seeking discovery has had ample opportunity by discovery in the action to obtain the information sought; or (iii) the burden or expense of the proposed discovery outweighs its likely benefit, taking into account the needs of the case, the amount in controversy, the parties' resources, the importance of the issues at stake in the litigation, and the importance of the proposed discovery in resolving the issues.

This admonition forms the backdrop against which a court must consider whether to enforce a subpoena duces tecum issued as an instrument of discovery in a civil case.

From that point forward, our study of the merits of this appeal must proceed in steps. Initially, we must determine whether the respondents' academic research is protected in a manner similar to the work product of journalists. This inquiry entails two aspects: (1) whether the respondents' positions warrant conferral of any special consideration, and (2) whether their research comprises confidential information. If these hurdles are cleared, we next must determine the type and kind of protection that the law affords. Finally, we must assess the district court's application of the law to the facts, and the appropriateness of its order.

C. The Availability of Protection.

1. Who Is Protected? Microsoft acknowledges that the law supplies a measure of protection for materials compiled by journalists. See Bruno & Stillman, Inc. v. Globe Newspaper Co., 633 F.2d 583, 595–98 (1st Cir. 1980). The respondents, however, are academic researchers and commentators, not professional newsmen. We do not think that this makes a dispositive difference in whether special protection vests. Academicians engaged in pre-publication research should be accorded protection commensurate to that which the law provides for journalists.

Courts afford journalists a measure of protection from discovery initiatives in order not to undermine their ability to gather and disseminate information. See United States v. LaRouche Campaign, 841 F.2d 1176, 1181 (1st Cir. 1988). Journalists are the personification of a free press, and to withhold such protection would invite a “chilling effect on speech,” id., and thus destabilize the First Amendment. The same concerns suggest that courts ought to offer similar protection to academicians engaged in scholarly research.  After all, scholars too are information gatherers and disseminators. If their research materials were freely subject to subpoena, their sources likely would refuse to confide in them. As with reporters, a drying-up of sources would sharply curtail the information available to academic researchers and thus would restrict their output. Just as a journalist, stripped of sources, would write fewer, less incisive articles, an academician, stripped of sources, would be able to provide fewer, less cogent analyses. Such similarities of concern and function militate in favor of a similar level of protection for journalists and academic researchers.

Given this mise-en-scène, it is unsurprising that several of our sister circuits have held that the medium an individual uses to provide his investigative reporting to the public does not make a dispositive difference in the degree of protection accorded to his work. See In re Madden, 151 F.3d 125, 128–31 (3d Cir. 1998); Shoen v. Shoen, 5 F.3d 1289, 1293–94 (9th Cir. 1993); von Bulow v. von Bulow, 811 F.2d 136, 142–44 (2d Cir. 1987). Whether the creator of the materials is a member of the media or of the academy, the courts will make a measure of protection available to him as long as he intended “at the inception of the newsgathering process” to use the fruits of his research “to disseminate information to the public.” von Bulow, 811 F.2d at 144.

This case fits neatly into the architecture of these precedents. The sole purpose of the respondents' interviews of Netscape personnel was to gather data so that they could compile, analyze, and report their findings anent management practices in the internet technology industry. Thus, the respondents are within a group whose pre-publication research merits a modicum of protection.

2. What Is Protected? This aspect of the question raises vexing theoretical issues. Leaving confidential sources to one side, the prototypical situation in which a court provides protection from disclosure for a journalist's or researcher's materials involves confidential information. See, e.g, United States v. Cuthbertson, 630 F.2d 139, 146–48 (3d Cir. 1980). When the information cannot fairly be characterized as confidential, the courts are divided as to whether any protection is warranted. Compare Shoen, 5 F.3d at 1295–96  (holding that materials should be afforded protection even if the information contained therein is not confidential) with Gonzales v. National Broad. Co., 155 F.3d 618, 626 (2d Cir. 1998) (disavowing protection for non-confidential information). Although we have not ruled definitively on this issue, we have noted, in a situation involving only nonconfidential information, “a lurking and subtle threat to journalists and their employers if disclosure of outtakes, notes, and other unused information, even if nonconfidential, becomes routine and casually, if not cavalierly, compelled.” LaRouche, 841 F.2d at 1182.

We perceive no need to resolve this unanswered question today. The district court found that the information sought by Microsoft was confidential in character, and the record sufficiently supports this finding. To be sure, confidentiality comes in varying shapes and sizes. The confidentiality agreed upon by the authors and the interviewees in this instance does not ensure the most perfect privacy. The respondents did not offer the interviewees the sort of detailed nondisclosure agreement that they signed with Netscape. Moreover, they conducted the interviews in the presence of a Netscape official, gave Netscape's management a preview of planned quotations prior to showing those statements to the persons who made them, and circulated their manuscript (or portions of it) for pre-publication peer review.

Still, determinations of where particular disclosures fall along the continuum of confidentiality, and related determinations anent the degree of protection that attaches to them, must take into account the totality of the circumstances. When the respondents began their inquiry into Netscape's management practices early in 1997, neither they nor their interview subjects knew (or had any reason to believe) that Microsoft later would be sued for antitrust violations based upon its peregrinations in the browser market. In that environment, handing individual interview subjects complex legal agreements might have made them squeamish (and thus less candid). Instead, the respondents gave each interviewee a personal, albeit verbal, assurance that he would be accorded the opportunity to correct, comment upon, and/or disclaim attributed quotations prior to publication.[FN4] At the very least, this assurance is a species of confidentiality. Microsoft's demand for the full tapes (including outtakes) and transcripts of interviews with all Netscape employees—materials which have not to date been shown to anyone—obviates this assurance. While the level of confidentiality that characterizes a journalist's or researcher's confidential information may, in the end, affect the degree of protection conferred upon that information in a discovery dispute, we agree with the district court that the interviews here fall along the continuum of confidentiality at a point sufficient to justify significant protection.

D. The Degree of Protection.

We turn now to the degree of protection that attaches to the respondents' materials. We begin with Bruno & Stillman, an opinion that had its genesis in a libel suit brought by a commercial boatbuilder against the Boston Globe after one Coughlin, a Globe reporter, wrote an unflattering article. See Bruno & Stillman, 633 F.2d at 584–85. During discovery, the defendants refused to turn over portions of Coughlin's notes, which named confidential sources and outlined information that the sources had supplied. See id. at 585. The district court compelled disclosure of the information, based on a finding that the information was critical to Bruno & Stillman's non-frivolous claim and was unavailable from other sources. See id. at 586. On appeal, without deciding the “semantic[ ]” question of whether the protection afforded to a journalist's sources and research is a type of privilege, id. at 595,  Judge Coffin explained the necessity for attention to First Amendment concerns in such situations, see id. at 595–96. The opinion instructed district courts that when

faced with enforcing requests for the discovery of materials used in the preparation of journalistic reports [they] should be aware of the possibility that the unlimited or unthinking allowance of such requests will impinge upon First Amendment rights. In determining what, if any, limits should accordingly be placed upon the granting of such requests, courts must balance the potential harm to the free flow of information that might result against the asserted need for the requested information.

Id. Eight years later, the court reiterated this instruction. See LaRouche, 841 F.2d at 1181.

We, too, decline to spend our energies on semantics. It suffices to say that, when a subpoena seeks divulgement of confidential information compiled by a journalist or academic researcher in anticipation of publication, courts must apply a balancing test. This test contemplates consideration of a myriad of factors, often uniquely drawn out of the factual circumstances of the particular case. Each party comes to this test holding a burden. See Bruno & Stillman, 633 F.2d at 597. Initially, the movant must make a prima facie showing that his claim of need and relevance is not frivolous. See id. Upon such a showing, the burden shifts to the objector to demonstrate the basis for withholding the information. See id. The court then must place those factors that relate to the movant's need for the information on one pan of the scales and those that reflect the objector's interest in confidentiality and the potential injury to the free flow of information that disclosure portends on the opposite pan. See id. at 597–98.

E. Calibrating the Scales.

We now examine the district court's handiwork in light of this legal framework. Microsoft's need admittedly is substantial in the sense that relevant information likely exists—indeed, the district court specifically found that Microsoft had not embarked on a fishing expedition—and Microsoft has a legitimate use for it.[FN5] The company, after all, is in the throes of defending a complex case of extraordinary importance to its future, and its primary defense is that Netscape suffered a series of self-inflicted wounds that dissipated its dominant position in the browser market. Lessons includes several quotations that suggest missteps by Netscape management during the browser war, and it is reasonable to assume that the notes, tapes, and transcripts include more evidence of this genre. Hence, Microsoft has made a prima facie showing of need and relevance.

The district court discounted this showing somewhat because it found that the same information was otherwise available to Microsoft by direct discovery. We view this finding of fact deferentially, see Ross–Simons of Warwick, Inc. v. Baccarat, Inc., 102 F.3d 12, 16, 19–20 (1st Cir. 1996), and decline to disturb it. Despite the accelerated trial schedule in the antitrust case, Microsoft had the Lessons manuscript while discovery was still open, and the quotations in the book are attributed to named individuals. Microsoft—which deployed no fewer than eight lawyers in the preparation of its brief in this appeal—had enough time, enough knowledge, and enough resources to depose those individuals (or some subset of them), or otherwise obtain discovery from them. This factor must figure in the balance. See Haworth, Inc. v. Herman Miller, Inc., 998 F.2d 975, 978 (Fed.Cir.1993).

The opposite pan of the scale is brim-full. Scholars studying management practices depend upon the voluntary revelations of industry insiders to develop the factual infrastructure upon which theoretical conclusions and practical predictions may rest. These insiders often lack enthusiasm for divulging their management styles and business strategies to academics, who may in turn reveal that information to the public. Yet, pathbreaking work in management science requires gathering data from those companies and individuals operating in the most highly competitive fields of industry, and it is in these cutting-edge areas that the respondents concentrate their efforts. Their time-tested interview protocol, including the execution of a nondisclosure agreement with the corporate entity being studied and the furnishing of personal assurances of confidentiality to the persons being interviewed, gives chary corporate executives a sense of security that greatly facilitates the achievement of agreements to cooperate. Thus, in the Bruno & Stillman taxonomy, the interviews are “carefully bargained-for” communications which deserve significant protection. Bruno & Stillman, 633 F.2d at 597.

Considering these facts, it seems reasonable to conclude—as the respondents' affidavits assert—that allowing Microsoft to obtain the notes, tapes, and transcripts it covets would hamstring not only the respondents' future research efforts but also those of other similarly situated scholars. This loss of theoretical insight into the business world is of concern in and of itself. Even more important, compelling the disclosure of such research materials would infrigidate the free flow of information to the public, thus denigrating a fundamental First Amendment value.

It is also noteworthy that the respondents are strangers to the antitrust litigation; insofar as the record reflects, they have no dog in that fight. Although discovery is by definition invasive, parties to a law suit must accept its travails as a natural concomitant of modern civil litigation. Non-parties have a different set of expectations. Accordingly, concern for the unwanted burden thrust upon non-parties is a factor entitled to special weight in evaluating the balance of competing needs. See Haworth, 998 F.2d at 978; Dart Indus. Co. v. Westwood Chem. Co., 649 F.2d 646, 649 (9th Cir. 1980); Addamax Corp. v. Open Software Found., Inc., 148 F.R.D. 462, 468 (D.Mass. 1993).

We need go no further. The district court used the proper test, balanced the right array of factors, and acted well within its discretion in determining that the scales tipped in favor of preserving confidentiality and against the wholesale disclosure of investigative materials gleaned in the course of pre-publication academic research. Our confidence in the appropriateness of this ruling is fortified by the fact that the district court took pains to protect Microsoft's legitimate interests. After denying the motion to compel, the court announced that it would retain jurisdiction so that, should a material conflict develop between quotations from the book and other evidence, it could review the notes, tapes, and transcripts in camera for purposes of verification and, if necessary, order production. This even-handed ruling treats all parties fairly. We discern no error.

Affirmed.

Footnotes

[FN1] Yoffie simultaneously moved to quash the subpoena directed to him. Because the motion to quash raised no issues that were not properly raised by the respondents' oppositions to Microsoft's motion to compel, we eschew any further reference to it.

[FN2] Microsoft also notes that, when it deposed Richard Schell, a Netscape executive whom the respondents had interviewed, Schell could not recall making a statement attributed to him in Lessons. Based on this experience, Microsoft predicts that additional depositions would not have succeeded in rooting out the information obtained by the respondents.

[FN3] Microsoft assures us that, if production is ordered, Netscape's proprietary information will be safeguarded by the protective order entered in the antitrust case. It points out that many companies, including Netscape and Microsoft, already have supplied highly sensitive information to one another under this ukase, and that, in any event, Netscape has not opposed disclosure of the subpoenaed materials.

[FN4] The record is murky as to whether the interviewees actually were promised—or thought they were getting—veto power, i.e., the ability to prevent the authors from publishing a quoted comment in the face of the speaker's objection. Although the respondents assured us at oral argument that, if they published an attributed quotation to which an objection had been lodged, they would have been “breaking their word,” that response is far from a complete answer.

[FN5] Because the standard for discoverability of information is considerably less rigorous than the standard for admissibility of evidence, see Fed. R. Civ. P. 26(b)(1) (explaining that, to be discoverable, information need only appear to be “reasonably calculated to lead to the discovery of admissible evidence”), we have no occasion to pass on the ultimate admissibility of the subpoenaed information under Fed. R. Evid. 807 or otherwise.

123 S.Ct. 468

Supreme Court of the United States

Terry L. STEWART, Director, Arizona Department of Corrections, et al., petitioners,

v.

Jerry Dean McCOY.

No. 02-20.

Oct. 21, 2002.

Case below, 282 F.3d 626.

Opinion

Motion of respondent for leave to proceed in forma pauperis granted. Petition for writ of certiorari to the United States Court of Appeals for the Ninth Circuit denied.

Statement of Justice STEVENS respecting the denial of the petition for writ of certiorari.

An Arizona jury found respondent guilty of participating in a criminal syndicate, and the trial court sentenced him to a term of 15 years' imprisonment. After his conviction was affirmed by the Arizona Court of Appeals, the Federal District Court granted his petition for a writ of habeas corpus, and the Court of Appeals for the Ninth Circuit affirmed the order releasing him from custody. The harsh sentence for a relatively minor offense provides a permissible justification for this Court's discretionary decision to deny the warden's petition for certiorari. Nevertheless, the issue raised by her petition has sufficient importance to merit comment.

The specific crime committed by respondent was giving advice to members of a street gang. In the words of the relevant Arizona statute, he was guilty of: “Furnishing advice or direction in the conduct, financing or management of a criminal syndicate's affairs with the intent to promote or further the criminal objectives of a criminal syndicate.”[FN1] The evidence showed that he had been a member of a street gang in California before moving to Arizona, and that at two social gatherings he gave several members of a Tucson gang specific advice on how to operate their gang.[FN2] The state appellate court concluded that the evidence was sufficient to prove his knowledge of the Tucson gang's criminal activities and his intent to promote those activities. It also rejected respondent's contention that the statute violated the First Amendment because it prohibited constitutionally protected speech.

The federal courts both concluded, however, that respondent's speech was protected by that Amendment. Relying primarily on Brandenburg v. Ohio, 395 U.S. 444, 89 S.Ct. 1827, 23 L.Ed.2d 430 (1969) (per curiam), and Hess v. Indiana, 414 U.S. 105, 94 S.Ct. 326, 38 L.Ed.2d 303 (1973) (per curiam), the Court of Appeals held that respondent's speech “was mere abstract advocacy” that was not constitutionally proscribable because it did not incite “imminent” lawless action.[FN3] Given the specific character of respondent's advisory comments, that holding is surely debatable. But whether right or wrong, it raises a most important issue concerning the scope of our holding in Brandenburg, for our opinion expressly encompassed nothing more than “mere advocacy,” 395 U.S., at 449, 89 S.Ct. 1827.

The principle identified in our Brandenburg opinion is that “the constitutional guarantees of free speech and free press do not permit a State to forbid or proscribe advocacy of the use of force or of law violation except where such advocacy is directed to inciting or producing imminent lawless action and is likely to incite or produce such action.” Id., at 447, 89 S. Ct. 1827. While the requirement that the consequence be “imminent” is justified with respect to mere advocacy, the same justification does not necessarily adhere to some speech that performs a teaching function. As our cases have long identified, the First Amendment does not prevent restrictions on speech that have “clear support in public danger.” Thomas v. Collins, 323 U.S. 516, 530, 65 S.Ct. 315, 89 L.Ed. 430 (1945). Long range planning of criminal enterprises-which may include oral advice, training exercises, and perhaps the preparation of written materials-involves speech that should not be glibly characterized as mere “advocacy” and certainly may create significant public danger. Our cases have not yet considered whether, and if so to what extent, the First Amendment protects such instructional speech. Our denial of certiorari in this case should not be taken as an endorsement of the reasoning of the Court of Appeals.

Footnotes

[FN1] Ariz. Rev. Stat. Ann. § 13-2308(A)(3) (West 2001).

[FN2] “Appellant moved to Tucson from California, where he had been a member of a gang since the 1980s. In Tucson, he became acquainted with his girlfriend's son and a number of his friends who belonged to a gang called the ‘Bratz.’ Several Bratz members testified that appellant was present at a barbecue at the son's house attended by a number of Bratz members and that he spoke to them about his experiences in the California gang. He advised them to formalize their gang by electing officers, collecting money to establish a bail fund for members, and spray painting more gang graffiti to make their presence known in their territory. He also advised them to ‘jump in’ more loyal members and ‘jump out’ those who were not loyal. There was testimony explaining that ‘jumping’ or ‘courting’ meant initiating a new member or removing a current member by means of a group beating in which a number of members participated in beating or kicking the person ‘jumped’ or ‘courted.’ Finally, he advised them to establish friendly relations with other gangs who would support them.” State v. McCoy, 187 Ariz. 223, 224, 928 P.2d 647, 648 (App.1996).

[FN3] 282 F.3d 626, 631 (C.A.9 2002).

Packingham v. North Carolina
June 19, 2017

Kennedy, J., delivered the opinion of the Court, in which Ginsburg, Breyer, Sotomayor, and Kagan, JJ., joined. Alito, J., filed an opinion concurring in the judgment, in which Roberts, C. J., and Thomas, J., joined. Gorsuch, J., took no part in the consideration or decision of the case.

Opinion

Justice Kennedy delivered the opinion of the Court.

In 2008, North Carolina enacted a statute making it a felony for a registered sex offender to gain access to a number of websites, including commonplace social media websites like Facebook and Twitter. The question presented is whether that law is permissible under the First Amendment’s Free Speech Clause, applicable to theStates under the Due Process Clause of the Fourteenth Amendment.

I

A

North Carolina law makes it a felony for a registered sex offender “to access a commercial social networking Web site where the sex offender knows that the site permits minor children to become members or to create or maintain personal Web pages.” N. C. Gen. Stat. Ann. §§14–202.5(a), (e) (2015). A “commercial social networking Web site” is defined as a website that meets four criteria. First, it “[i]s operated by a person who derives revenue from membership fees, advertising, or other sources related to the operation of the Web site.” §14–202.5(b). Second, it “[f]acilitates the social introduction between two or more persons for the purposes of friendship, meeting other persons, or information exchanges.” Ibid. Third, it “[a]llows users to create Web pages or personal profiles that contain information such as the name or nickname of the user, photographs placed on the personal Web page by the user, other personal information about the user, and links to other personal Web pages on the commercial social networking Web site of friends or associates of the user that may be accessed by other users or visitors to the Web site.” Ibid. And fourth, it “[p]rovides users or visitors . . . mechanisms to communicate with other users, such as a message board, chat room, electronic mail, or instant messenger.” Ibid.

The statute includes two express exemptions. The statutory bar does not extend to websites that “[p]rovid[e] only one of the following discrete services: photo-sharing, electronic mail, instant messenger, or chat room or message board platform.” §14–202.5(c)(1). The law also does not encompass websites that have as their “primary purpose the facilitation of commercial transactions involving goods or services between [their] members or visitors.” §14–202.5(c)(2).

According to sources cited to the Court, §14–202.5 applies to about 20,000 people in North Carolina and the State has prosecuted over 1,000 people for violating it. Brief for Petitioner 6–8.

B

In 2002, petitioner Lester Gerard Packingham—then a 21-year-old college student—had sex with a 13-year-old girl. He pleaded guilty to taking indecent liberties with a child. Because this crime qualifies as “an offense against a minor,” petitioner was required to register as a sex offender—a status that can endure for 30 years or more. See §14–208.6A; see §14–208.7(a). As a registered sex offender, petitioner was barred under §14–202.5 from gaining access to commercial social networking sites.

In 2010, a state court dismissed a traffic ticket against petitioner. In response, he logged on to Facebook.com and posted the following statement on his personal profile:

“Man God is Good! How about I got so much favor they dismissed the ticket before court even started? No fine, no court cost, no nothing spent. . . . . .Praise be to GOD, WOW! Thanks JESUS!” App. 136.

At the time, a member of the Durham Police Department was investigating registered sex offenders who were thought to be violating §14–202.5. The officer noticed that a “ ‘J. R. Gerrard’ ” had posted the statement quoted above. 368 N. C. 380, 381, 777 S. E. 2d 738, 742 (2015). By checking court records, the officer discovered that a traffic citation for petitioner had been dismissed around the time of the post. Evidence obtained by search warrant confirmed the officer’s suspicions that petitioner was J. R. Gerrard.

Petitioner was indicted by a grand jury for violating §14–202.5. The trial court denied his motion to dismiss the indictment on the grounds that the charge against him violated the First Amendment. Petitioner was ultimately convicted and given a suspended prison sentence. At no point during trial or sentencing did the State allege that petitioner contacted a minor—or committed any other illicit act—on the Internet.

Petitioner appealed to the Court of Appeals of North Carolina. That court struck down §14–202.5 on First Amendment grounds, explaining that the law is not narrowly tailored to serve the State’s legitimate interest in protecting minors from sexual abuse. 229 N. C. App. 293, 304, 748 S. E. 2d 146, 154 (2013). Rather, the law “arbitrarily burdens all registered sex offenders by preventing a wide range of communication and expressive activity unrelated to achieving its purported goal.” Ibid. The North Carolina Supreme Court reversed, concluding that the law is “constitutional in all respects.” 368 N. C., at 381, 777 S. E. 2d, at 741. Among other things, the court explained that the law is “carefully tailored . . . to prohibit registered sex offenders from accessing only those Web sites that allow them the opportunity to gather information about minors.” Id., at 389, 777 S. E. 2d, at 747. The court also held that the law leaves open adequate alternative means of communication because it permits petitioner to gain access to websites that the court believed perform the “same or similar” functions as social media, such as the Paula Deen Network and the website for the local NBC affiliate. Id., at 390, 777 S. E. 2d, at 747. Two justices dissented. They stated that the law impermissibly “creates a criminal prohibition of alarming breadth and extends well beyond the evils the State seeks to combat.” Id., at 401, 777 S. E. 2d, at 754 (opinion of Hudson, J.) (alteration, citation, and internal quotation marks omitted).

The Court granted certiorari, 580 U. S. ___ (2016), and now reverses.

II

A fundamental principle of the First Amendment is that all persons have access to places where they can speak and listen, and then, after reflection, speak and listen once more. The Court has sought to protect the right to speak in this spatial context. A basic rule, for example, is that a street or a park is a quintessential forum for the exercise of First Amendment rights. See Ward v. Rock Against Racism, 491 U. S. 781, 796 (1989). Even in the modern era, these places are still essential venues for public gatherings to celebrate some views, to protest others, or simply to learn and inquire.

While in the past there may have been difficulty in identifying the most important places (in a spatial sense) for the exchange of views, today the answer is clear. It is cyberspace—the “vast democratic forums of the Internet” in general, Reno v. American Civil Liberties Union, 521 U. S. 844, 868 (1997), and social media in particular. Seven in ten American adults use at least one Internet social networking service. Brief for Electronic Frontier Foundation et al. as Amici Curiae 5–6. One of the most popular of these sites is Facebook, the site used by petitioner leading to his conviction in this case. According to sources cited to the Court in this case, Facebook has 1.79 billion active users. Id., at 6. This is about three times the population of North America.

Social media offers “relatively unlimited, low-cost capacity for communication of all kinds.” Reno, supra, at 870. On Facebook, for example, users can debate religion and politics with their friends and neighbors or share vacation photos. On LinkedIn, users can look for work, advertise for employees, or review tips on entrepreneurship. And on Twitter, users can petition their elected representatives and otherwise engage with them in a direct manner. Indeed, Governors in all 50 States and almost every Member of Congress have set up accounts for this purpose. See Brief for Electronic Frontier Foundation 15–16. In short, social media users employ these websites to engage in a wide array of protected First Amendment activity on topics “as diverse as human thought.” Reno, supra, at 870 (internal quotation marks omitted).

The nature of a revolution in thought can be that, in its early stages, even its participants may be unaware of it. And when awareness comes, they still may be unable to know or foresee where its changes lead. Cf. D. Hawke, Benjamin Rush: Revolutionary Gadfly 341 (1971) (quoting Rush as observing: “ ‘The American war is over; but this is far from being the case with the American revolution. On the contrary, nothing but the first act of the great drama is closed’ ”). So too here. While we now may be coming to the realization that the Cyber Age is a revolution of historic proportions, we cannot appreciate yet its full dimensions and vast potential to alter how we think, express ourselves, and define who we want to be. The forces and directions of the Internet are so new, so protean, and so far reaching that courts must be conscious that what they say today might be obsolete tomorrow.

This case is one of the first this Court has taken to address the relationship between the First Amendment and the modern Internet. As a result, the Court must exercise extreme caution before suggesting that the First Amendment provides scant protection for access to vast networks in that medium.

III

This background informs the analysis of the North Carolina statute at issue. Even making the assumption that the statute is content neutral and thus subject to intermediate scrutiny, the provision cannot stand. In order to survive intermediate scrutiny, a law must be “narrowly tailored to serve a significant governmental interest.” McCullen v. Coakley, 573 U. S. ___, ___ (2014) (slip op., at 18) (internal quotation marks omitted). In other words, the law must not “burden substantially more speech than is necessary to further the government’s legitimate interests.” Id., at ___ (slip op., at 19) (internal quotation marks omitted).

For centuries now, inventions heralded as advances in human progress have been exploited by the criminal mind. New technologies, all too soon, can become instruments used to commit serious crimes. The railroad is one example, see M. Crichton, The Great Train Robbery, p. xv (1975), and the telephone another, see 18 U. S. C. §1343. So it will be with the Internet and social media.

There is also no doubt that, as this Court has recognized, “[t]he sexual abuse of a child is a most serious crime and an act repugnant to the moral instincts of a decent people.” Ashcroft v. Free Speech Coalition, 535 U. S. 234, 244 (2002). And it is clear that a legislature “may pass valid laws to protect children” and other victims of sexual assault “from abuse.” See id., at 245; accord, New York v. Ferber, 458 U. S. 747, 757 (1982). The government, of course, need not simply stand by and allow these evils to occur. But the assertion of a valid governmental interest “cannot, in every context, be insulated from all constitutional protections.” Stanley v. Georgia, 394 U. S. 557, 563 (1969).

It is necessary to make two assumptions to resolve this case. First, given the broad wording of the North Carolina statute at issue, it might well bar access not only to commonplace social media websites but also to websitesas varied as Amazon.com, Washingtonpost.com, and Webmd.com. See post, at 6–9; see also Brief for Electronic Frontier Foundation 24–27; Brief for Cato Institute et al. as Amici Curiae 10–12, and n. 6. The Court need not decide the precise scope of the statute. It is enough to assume that the law applies (as the State concedes it does) to social networking sites “as commonly understood”—that is, websites like Facebook, LinkedIn, and Twitter. See Brief for Respondent 54; Tr. of Oral Arg. 27.

Second, this opinion should not be interpreted as barring a State from enacting more specific laws than the one at issue. Specific criminal acts are not protected speech even if speech is the means for their commission. See Brandenburg v. Ohio, 395 U. S. 444, 447–449 (1969) ( per curiam). Though the issue is not before the Court, it can be assumed that the First Amendment permits a State to enact specific, narrowly tailored laws that prohibit a sex offender from engaging in conduct that often presages a sexual crime, like contacting a minor or using a website to gather information about a minor. Cf. Brief for Respondent 42–43. Specific laws of that type must be the State’s first resort to ward off the serious harm that sexual crimes inflict. (Of importance, the troubling fact that the law imposes severe restrictions on persons who already have served their sentence and are no longer subject to the supervision of the criminal justice system is also not an issue before the Court.)

Even with these assumptions about the scope of the law and the State’s interest, the statute here enacts a prohibition unprecedented in the scope of First Amendment speech it burdens. Social media allows users to gain access to information and communicate with one another about it on any subject that might come to mind. Supra, at 5. By prohibiting sex offenders from using those websites, North Carolina with one broad stroke bars access to what for many are the principal sources for knowing current events, checking ads for employment, speaking and listening in the modern public square, and otherwise exploring the vast realms of human thought and knowledge. These websites can provide perhaps the most powerful mechanisms available to a private citizen to make his or her voice heard. They allow a person with an Internet connection to “become a town crier with a voice that resonates farther than it could from any soapbox.” Reno, 521 U. S., at 870.

In sum, to foreclose access to social media altogether is to prevent the user from engaging in the legitimate exercise of First Amendment rights. It is unsettling to suggest that only a limited set of websites can be used even by persons who have completed their sentences. Even convicted criminals—and in some instances especially convicted criminals—might receive legitimate benefits from these means for access to the world of ideas, in particular if they seek to reform and to pursue lawful and rewarding lives.

IV

The primary response from the State is that the law must be this broad to serve its preventative purpose of keeping convicted sex offenders away from vulnerable victims. The State has not, however, met its burden to show that this sweeping law is necessary or legitimate to serve that purpose. See McCullen, 573 U. S., at ___ (slip op., at 28).

It is instructive that no case or holding of this Court has approved of a statute as broad in its reach. The closest analogy that the State has cited is Burson v. Freeman, 504 U. S. 191 (1992). There, the Court upheld a prohibition on campaigning within 100 feet of a polling place. That case gives little or no support to the State. The law in Burson was a limited restriction that, in a context consistent with constitutional tradition, was enacted to protect another fundamental right—the right to vote. The restrictions there were far less onerous than those the State seeks to impose here. The law in Burson meant only that the last few seconds before voters entered a polling place were “their own, as free from interference as possible.” Id., at 210. And the Court noted that, were the buffer zone larger than 100 feet, it “could effectively become an impermissible burden” under the First Amendment. Ibid.

The better analogy to this case is Board of Airport Comm’rs of Los Angeles v. Jews for Jesus, Inc., 482 U. S. 569 (1987), where the Court struck down an ordinance prohibiting any “ First Amendment activities” at Los Angeles International Airport because the ordinance covered all manner of protected, nondisruptive behavior including “talking and reading, or the wearing of campaign buttons or symbolic clothing,” id., at 571, 575. If a law prohibiting “all protected expression” at a single airport is not constitutional, id., at 574 (emphasis deleted), it follows with even greater force that the State may not enact this complete bar to the exercise of First Amendment rights on websites integral to the fabric of our modern society and culture.

*  *  *

It is well established that, as a general rule, the Government “may not suppress lawful speech as the means to suppress unlawful speech.” Ashcroft v. Free Speech Coalition, 535 U. S., at 255. That is what North Carolina has done here. Its law must be held invalid.

The judgment of the North Carolina Supreme Court is reversed, and the case is remanded for further proceedings not inconsistent with this opinion.

It is so ordered.

Justice Gorsuch took no part in the consideration or decision of this case

685 F.3d 1

United States Court of Appeals,
First Circuit.

In re REQUEST FROM the UNITED KINGDOM PURSUANT TO the TREATY BETWEEN the GOVERNMENT OF the UNITED STATES of America AND The GOVERNMENT OF the UNITED KINGDOM ON MUTUAL ASSISTANCE IN CRIMINAL MATTERS IN THE MATTER OF DOLOURS PRICE.

United States, Petitioner, Appellee,
v.
Ed Moloney; Anthony McIntyre, Movants, Appellants.

Ed Moloney; Anthony McIntyre, Plaintiffs, Appellants,
v.
Eric H. Holder, Jr., Attorney General; Jack W. Pirozzolo, Commissioner, Defendants, Appellees.

Nos. 11–2511, 12–1159.

Heard April 4, 2012.
Decided July 6, 2012.

Attorneys and Law Firms  

Eamonn Dornan, with whom Dornan & Associates PLLC and James J. Cotter III were on brief, for appellants.

Barbara Healy Smith, Assistant United States Attorney, with whom Carmen M. Ortiz, United States Attorney, and John T. McNeil, Assistant United States Attorney, were on brief, for appellee.

Before LYNCH, Chief Judge, TORRUELLA and BOUDIN, Circuit Judges.

Opinion

LYNCH, Chief Judge.

These consolidated appeals are from the denial, in two cases, of the efforts of two academic researchers to prevent the execution of two sets of subpoenas issued in May and August of 2011. The subpoenas were issued to Boston College (“BC”) by a commissioner appointed pursuant to 18 U.S.C. § 3512 and the “US–UK MLAT,” the mutual legal assistance treaty between the United States and the United Kingdom. The subpoenas are part of an investigation by United Kingdom authorities into the 1972 abduction and death of Jean McConville, who was thought to have acted as an informer for the British authorities on the activities of republicans in Northern Ireland. This appears to be the first court of appeals decision to deal with an MLAT and § 3512.

The May 2011 subpoenas sought oral history recordings and associated documentation from interviews BC researchers had conducted with two former members of the Irish Republican Army (“IRA”): Dolours Price and Brendan Hughes. BC turned over the Hughes materials because he had died and so he had no confidentiality interests at stake. BC moved to quash or modify the Price subpoenas. The second set of subpoenas issued in August 2011 sought any information related to the death or abduction of McConville contained in any of the other interview materials held by BC. BC moved to quash these subpoenas as well.

The district court denied both motions to quash. In re: Request from the U.K., 831 F.Supp.2d 435 (D. Mass. 2011). And after undertaking in camera review of the subpoenaed materials it ordered production. Order, In re: Request from the U.K., No. 11–91078 (D. Mass. Dec. 27, 2011), ECF No. 38 (ordering production of Price interviews pursuant to May subpoenas); Findings and Order, In re: Request from the U.K., No. 11–91078, 2012 WL 194432 (D. Mass. Jan. 20, 2012) (ordering production of other interviews pursuant to August subpoenas). BC has appealed the order regarding the August subpoenas, but that appeal is not before this panel. BC chose not to appeal the order regarding the Price materials sought by the May subpoenas.

The appellants here, Ed Moloney and Anthony McIntyre, who unsuccessfully sought to intervene in BC's case on both sets of subpoenas, pursue in the first appeal a challenge to the district court's denial of their motions to intervene as of right and for permissive intervention. Their intervention complaint largely repeated the claims made by BC and sought declarations that the Attorney General's compliance with the United Kingdom's request violates the US–UK MLAT and injunctive relief or mandamus compelling him to comply with the terms of that treaty. The effect of the relief sought would be to impede the execution of the subpoenas.

Having lost on intervention, Moloney and McIntyre then filed their own original complaint, essentially making the same claims as made in this intervenor complaint. The district court dismissed the complaint, stating that even assuming the two had standing, the reasons it gave in its reported decision for denial of BC's arguments and denial of intervention applied to dismissal of the complaint. See Order of Dismissal, Moloney v. Holder, No. 11–12331 (D. Mass. Jan. 25, 2012), ECF No. 15; Tr. of Mot. Hr'g, Moloney v. Holder, No. 11–12331 (D. Mass. Jan. 24, 2012), ECF No. 18. Appellants freely admit that their complaint “essentially set forth the same claim” as their complaint in intervention. In the second appeal they challenge the dismissal of their separate civil complaint for lack of subject matter jurisdiction and for failure to state a claim.

I.

The factual background for these suits is not disputed.

A. The Belfast Project at Boston College

The Belfast Project (“the Project”) began in 2001 under the sponsorship of BC. An oral history project, its goal was to document in taped interviews the recollections of members of the Provisional Irish Republican Army, the Provisional Sinn Fein, the Ulster Volunteer Force, and other paramilitary and political organizations involved in the “Troubles” in Northern Ireland from 1969 forward. The purpose was to gather and preserve the stories of individual participants and provide insight into those who become personally engaged in violent conflict. The Project is housed at the John J. Burns Library of Rare Books and Special Collections at BC.

The Project was first proposed by appellant Ed Moloney, a journalist and writer. He later contracted with BC to become the Project's director. Before the Project started, Robert K. O'Neill, the Director of the Burns Library, informed Moloney that, although he had not yet conferred with counsel on the point, he could not guarantee that BC “would be in a position to refuse to turn over documents [from the Project] on a court order without being held in contempt.”

Against this background, the Project attempted to guard against unauthorized disclosure. The agreement between Moloney and BC directed him as Project Director to require interviewers and interviewees to sign a confidentiality agreement forbidding them from disclosing the existence or scope of the Project without the permission of BC. The agreement also required the use of a coding system to maintain the anonymity of interviewees and provided that only the Burns Librarian and Moloney would have access to the key identifying the interviewees. Although the interviews were originally going to be stored in Belfast, Northern Ireland, as well as Boston, the Project leadership ultimately decided that the interviews could only be safely stored in the United States. They were eventually stored in the “Treasure Room” of the Burns Library, with extremely limited access.

The agreement between Moloney and BC requires that “[e]ach interviewee is to be given a contract guaranteeing to the extent American law allows the conditions of the interview and the conditions of its deposit at the Burns Library, including terms of an embargo period if it becomes necessary” (emphasis added). The agreement, in this clause, expressly acknowledged that its protections could be limited by American law. The agreement also directs that the Project adopt an “appropriate user model, such as Columbia University's Oral History Research Office Guidelines statement.”[FN1]

The Project employed researchers to interview former members of the Irish Republican Army and the Ulster Volunteer Force. Appellant Anthony McIntyre, himself a former IRA member, was one of those researchers. McIntyre worked for the Project under a contract governed by the terms of the agreement between Moloney and BC. McIntyre's contract required him to transcribe and index the interviews he conducted and to abide by the confidentiality requirements of the Moloney agreement. McIntyre conducted a total of twenty-six interviews of persons associated with the republican side of the conflict for the Project by the time it ended in 2006. In addition, the Project contains interviews with fourteen members of Protestant paramilitary groups and one member of law enforcement. There are a total of forty-one interview series (each series may contain multiple interviews with a single person).

Interviewees entered into donation agreements with BC, which were signed by the interviewees and by O'Neill, the Burns Librarian. The donation agreements transfer possession of the interview recordings and transcripts to BC and assign to the school “absolute title” to the materials, “including whatever copyright” the interviewee may own in their contents. The donation agreements have the following clause regarding access to the interview materials:

Access to the tapes and transcripts shall be restricted until after my death except in those cases where I have provided prior written approval for their use following consultation with the Burns Librarian, Boston College. Due to the sensitivity of content, the ultimate power of release shall rest with me. After my death the Burns Librarian of Boston College may exercise such power exclusively.

This clause does not contain the term “confidentiality” and provides only that access will be restricted. But it does recite that the ultimate power of release belongs to the donor during the donor's lifetime. The donation agreements do not contain the “to the extent American law allows” language that is contained in the agreement between Moloney and BC. A copy of the donation agreement for Brendan Hughes, but not one for Dolours Price, is in the record, but we assume both signed one.[FN2]

In 2010 Moloney published a book and released a documentary, both entitled “Voices from the Grave, Two Men's War in Ireland,” based on Belfast Project interviews with Hughes and with David Ervine, a former member of the Ulster Volunteer Force.[FN3] In addition, news reports in Northern Ireland revealed that Price had been interviewed by academics at a Boston-area university and that she had admitted to being involved in the murder and “disappearances” of four persons targeted by the IRA, including Jean McConville.

B. The US–UK MLAT Subpoenas

On March 30, 2011, the United States submitted an application to the district court ex parte and under seal pursuant to the US–UK MLAT and 18 U.S.C. § 3512, seeking the appointment of an Assistant United States Attorney as commissioner to collect evidence from witnesses and to take such other action as necessary to effectuate a request from law enforcement authorities in the United Kingdom. That application remains under seal. The application resulted from a formal request made by the United Kingdom, pursuant to the US–UK MLAT, for legal assistance in a pending criminal investigation in that country involving the 1972 murder and kidnapping of Jean McConville. The district court granted the government's application on March 31, 2011, and entered a sealed order granting the requested appointment.

The commissioner issued two sets of subpoenas for Belfast Project materials. The first set of subpoenas were received by BC on May 5, 2011, and were directed to the Trustees of Boston College; Robert K. O'Neill, Director of the Burns Library; and Thomas E. Hachey, Professor of History and Executive Director of the Center for Irish Studies at BC. The subpoenas were issued for the purpose of assisting the United Kingdom “regarding an alleged violation of the laws of the United Kingdom,” namely, murder, conspiracy to murder, incitement to murder, aggravated burglary, false imprisonment, kidnapping, and causing grievous bodily harm with intent to cause such harm. The subpoenas did not state the identity of the victim or victims of these crimes, and sought recordings, written documents, written notes, and computer records of interviews made with Brendan Hughes and Dolours Price, to be produced on May 26, 2011.

BC produced responsive materials related to Hughes; the conditions of his donation agreement pertaining to the release of his interviews had terminated with his death. The time to produce the Price materials was extended by agreement with the U.S. Attorney's Office until June 2, 2011.

The second set of subpoenas were received by counsel for BC on August 4, 2011. The August subpoenas sought recordings of “any and all interviews containing information about the abduction and death of Mrs. Jean McConville,” along with related transcripts, records, and other materials. The August subpoenas were directed at the 176 interviews with the remaining 24 republican-associated interviewees who were part of the Project. These subpoenas directed production no later than August 17, 2011.

C. The Litigation Initiated by BC

On June 7, 2011, BC moved to quash the May subpoenas. In the alternative, BC requested that the court allow representatives from BC access to the documents that describe the purposes of the investigation to enable BC to specify with more particularity in what ways the subpoenas were overbroad or that the court conduct such a review in camera. The government opposed the motion. After receiving the August subpoenas, BC filed a new motion to quash addressed to both sets of subpoenas, which the government also opposed.

On August 31, 2011, appellants Moloney and McIntyre filed a motion to intervene as of right and for permissive intervention, see Fed. R. Civ. P. 24, along with their intervention complaint. That pleading tracked the arguments made in BC's motion to quash and also alleged that the Attorney General's compliance with the United Kingdom's request violated the US–UK MLAT and that enforcement of the subpoenas would violate Moloney and McIntyre's First and Fifth Amendment rights. Moloney and McIntyre sought declarations that the Attorney General was in violation of the US–UK MLAT and injunctive relief or mandamus compelling him to comply with the terms of that treaty, the effect of which would be to impede the execution of the subpoenas. The government opposed the motions to intervene.

On December 16, 2011, the district court issued an opinion denying BC's motions to quash the May and August subpoenas for the reasons stated in its opinion. In re: Request from the U.K., 831 F.Supp.2d at 459. As to BC's alternative request, the court ordered BC to produce materials responsive to the two sets of subpoenas for the court to review in camera.[FN4] Id.

The district court also denied Moloney and McIntyre's motion to intervene as of right and their motion for permissive intervention. Id. The court stated that no federal statute gave Moloney and McIntyre an unconditional right to intervene under Rule 24(a)(1), “and the US–UK MLAT prohibits them from challenging the Attorney General's decisions to pursue the MLAT request.”[FN5] Id. at 458. The district court “conclude[d] that Boston College adequately represents any potential interests claimed by the Intervenors. Boston College has already argued ably in favor of protecting Moloney, McIntyre and the interviewees.” Id. The court did not separately analyze permissive intervention. Moloney and McIntyre timely appealed the denial of their motion to intervene on December 29, 2011.

Having reviewed in camera the interviews of Dolours Price sought by the May subpoenas, the district court on December 27, 2011 ordered that the May subpoenas be enforced according to their terms. See Order, In re: Request from the U.K., No. 11–91078 (D. Mass. Dec. 27, 2011), ECF No. 38. BC and the other recipients of the May subpoenas did not appeal this order.[FN6]

Having been denied intervention, Moloney and McIntyre filed a separate civil complaint in the district court on December 29, 2011. The same legal theories were stated in this complaint as had been in the intervention complaint. The government moved to dismiss plaintiffs' separate complaint for lack of subject matter jurisdiction under Rule 12(b)(1) and for failure to state a claim under Rule 12(b)(6).

The district court held a hearing on the motion to dismiss on January 24, 2012, and dismissed the case from the bench. See Tr. of Mot. Hr'g at 11, Moloney v. Holder, No. 11–12331 (D. Mass. Jan. 24, 2012), ECF No. 18. The district court “rule[d] that neither Mr. McIntyre nor Mr. Moloney under the Mutual Legal Assistance Treaty and its adoption by the [S]enate and the treaty materials has standing to bring this particular claim.” Id. The district court also stated:

Beyond that, on the merits, I am satisfied that the Attorney General as [a] matter of law has acted appropriately with respect to the steps he has taken under this treaty, and I can conceive of no different result applying the heightened scrutiny that I think is appropriate for these materials were this case to go forward on the merits.[FN7]

Id. Moloney and McIntyre timely appealed the dismissal of their complaint on January 29, 2012.

As to BC's motion to quash the August subpoenas, on January 20, 2012, the district court ordered BC to produce to the government the full series of interviews and transcripts of five interviewees and two specific interviews (but not the full interview series) with two additional interviewees, along with transcripts and related records.[FN8] See Findings and Order, In re: Request from the U.K., No. 11–91078, 2012 WL 194432 (D. Mass. Jan. 20, 2012). The court determined that the remaining interviews were not within the subpoenas' scope.[FN9] BC has appealed this order, and that appeal is not before this panel. See Appeal No. 12–1236.

The American Civil Liberties Union of Massachusetts (ACLUM) has filed an amicus curiae brief in support of appellants Moloney and McIntyre.[FN10]

II.

Dismissal of the Civil Complaint's Claims Under the US–UK MLAT and 18 U.S.C. § 3512

We review de novo the dismissal of the appellants' complaint. See Abdel–Aleem v. OPK Biotech LLC, 665 F.3d 38, 41 (1st Cir. 2012) (dismissal for lack of subject matter jurisdiction reviewed de novo); Feliciano–Hernández v. Pereira–Castillo, 663 F.3d 527, 532 (1st Cir. 2011) (dismissal for failure to state a claim reviewed de novo), cert. denied, ––– U.S. ––––, 132 S.Ct. 2742, 183 L.Ed.2d 615, 80 U.S.L.W. 3676 (U.S. June 11, 2012). We “accept[ ] as true all well-pleaded facts, analyz[e] those facts in the light most hospitable to the plaintiff's theory, and draw [ ] all reasonable inferences for the plaintiff.” New York v. Amgen Inc., 652 F.3d 103, 109 (1st Cir. 2011) (quoting United States ex rel. Hutcheson v. Blackstone Med., Inc., 647 F.3d 377, 383 (1st Cir. 2011)), cert. dismissed, ––– U.S. ––––, 132 S.Ct. 993, 181 L.Ed.2d 570 (2011). We are not bound by the district court's reasoning but “may affirm an order of dismissal on any basis made apparent from the record.” Cook v. Gates, 528 F.3d 42, 48 (1st Cir. 2008) (quoting McCloskey v. Mueller, 446 F.3d 262, 266 (1st Cir. 2006)).

Moloney and McIntyre essentially make several arguments of statutory error and one constitutional claim. They argue that (1) they state a claim under the US–UK MLAT and 18 U.S.C. § 3512; in any event, (2) they have a claim under the Administrative Procedure Act, 5 U.S.C. § 702, and 28 U.S.C. § 1331; and that, regardless, (3) the district court had residual discretion which it abused in not quashing the subpoenas. They also argue that their claim under the First Amendment of the U.S. Constitution, brought under federal question jurisdiction, 28 U.S.C. § 1331, was improperly dismissed, an argument we address in part III.

Moloney and McIntyre contend they may bring suit on the claims that the Attorney General failed to fulfill his obligations under the US–UK MLAT and that they have a private right of action to seek a writ of mandamus compelling him to comply with the treaty or to seek a declaration from a federal court that he has not complied with the treaty.[FN11]

The appellants' claims under the US–UK MLAT fail because appellants are not able to state a claim that they have private rights that arise under the treaty, and because a federal court has no subject matter jurisdiction to entertain a claim for judicial review of the Attorney General's actions pursuant to the treaty.

A. Explanation of the Treaty and Statutory Scheme

The United States has entered into a number of mutual legal assistance treaties (“MLATs”) which typically provide for bilateral, mutual assistance in the gathering of legal evidence for use by the requesting state in criminal investigations and proceedings. A description of the history and evolution of such MLATs may be found in the Ninth Circuit's decision in In re 840 140th Ave. NE, 634 F.3d 557, 563–64 (9th Cir. 2011).

The MLAT between the United States and the United Kingdom was signed on January 6, 1994, and entered into force on December 2, 1996. See Treaty Between the Government of the United States and the Government of the United Kingdom of Great Britain and Northern Ireland on Mutual Legal Assistance in Criminal Matters, U.S.–U.K., Dec. 2, 1996, S. Treaty Doc. No. 104–2. In 2003, the United States signed a mutual legal assistance treaty with the European Union (“US–EU MLAT”) that made additions and amendments to the US–UK MLAT; the latter is in turn included as an annex to the US–EU MLAT. See Agreement on Mutual Legal Assistance Between the United States of America and the European Union, U.S.–E.U., June 25, 2003, S. Treaty Doc. No. 109–13. Both MLATs are self-executing treaties. S. Treaty Doc. No. 109–13, at vii (“The U.S.-EU Mutual Legal Assistance Agreement and bilateral instruments [including the annexed US–UK MLAT] are regarded as self-executing treaties under U.S. law....”).

Article 1 of the US–UK MLAT provides that the parties to the agreement shall assist one another in taking testimony of persons; providing documents, records, and evidence; serving documents; locating or identifying persons; transferring persons in custody for testimony or other purposes; executing requests for searches and seizures; identifying, tracing, freezing, seizing, and forfeiting the proceeds and instrumentalities of crime; and providing other assistance the parties' representatives may agree upon. See US–UK MLAT, art. 1, ¶ 2.

Importantly, article 1 further states: “This treaty is intended solely for mutual legal assistance between the Parties. The provisions of this Treaty shall not give rise to a right on the part of any private person to obtain, suppress, or exclude any evidence, or to impede the execution of a request.” US–UK MLAT, art. 1, ¶ 3. This treaty expressly prohibits the creation of private rights of action.

Article 2 concerns Central Authorities: each party's representative responsible for making and receiving requests under the US–UK MLAT. US–UK MLAT, art. 2, ¶ 3. The treaty states that the Central Authority for the United States is “the Attorney General or a person or agency designated by him.” US–UK MLAT, art. 2, ¶ 2.

Article 3 sets forth certain conditions under which the Central Authority of the Requested Party may refuse assistance.[FN12] Before the Central Authority of a Requested Party denies assistance for any of the listed reasons, the treaty states that he or she “shall consult with the Central Authority of the Requesting Party to consider whether assistance can be given subject to such conditions as it deems necessary.” US–UK MLAT, art. 3, ¶ 2.

In article 18, entitled “Consultation,” the treaty states that

[t]he Parties, or Central Authorities, shall consult promptly, at the request of either, concerning the implementation of this Treaty either generally or in relation to a particular case. Such consultation may in particular take place if ... either Party has rights or obligations under another bilateral or multilateral agreement relating to the subject matter of this Treaty.

US–UK MLAT, art. 18, ¶ 1.

The requests from the United Kingdom in this case were executed under 18 U.S.C. § 3512, which was enacted as part of the Foreign Evidence Request Efficiency Act of 2009, Pub. L. No. 111–79, 123 Stat. 2086. When the US–UK MLAT was entered into, requests for assistance were to be executed under a different statute, 28 U.S.C. § 1782. See S. Exec. Rep. No. 104–23, at 13 (1996) (report of the Senate Committee on Foreign Relations accompanying the US–UK MLAT). Among other differences, § 3512 provides for a more streamlined process than under § 1782 for executing requests from foreign governments related to the prosecution of criminal offenses.[FN13] Enforcement of similar MLATs under the provisions of § 1782 was the subject of consideration in In re 840 140th Ave. NE, 634 F.3d 557 (9th Cir. 2011); In re Commissioner's Subpoenas, 325 F.3d 1287 (11th Cir. 2003), abrogated in part by Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 124 S.Ct. 2466, 159 L.Ed.2d 355 (2004); and In re Erato, 2 F.3d 11 (2d Cir. 1993).

B. Appellants Have No Enforceable Rights Derived from the US–UK MLAT

Interpretation of the treaty takes place against “the background presumption ... that ‘[i]nternational agreements, even those directly benefitting private persons, generally do not create rights or provide for a private cause of action in domestic courts.’” Medellín v. Texas, 552 U.S. 491, 128 S.Ct. 1346, 1357 n. 3, 170 L.Ed.2d 190 (2008) (alteration in original) (quoting 2 Restatement (Third) of Foreign Relations Law of the United States § 907 cmt. a, at 395 (1986)). The First Circuit and other courts of appeals have held that “treaties do not generally create rights that are privately enforceable in the federal courts.” United States v. Li, 206 F.3d 56, 60 (1st Cir. 2000) (en banc); see also Mora v. New York, 524 F.3d 183, 201 & n. 25 (2d Cir. 2008) (collecting cases from ten circuits holding that there is a presumption that treaties do not create privately enforceable rights in the absence of express language to the contrary). Express language in a treaty creating private rights can overcome this presumption. See Mora, 524 F.3d at 188.

The US–UK MLAT contains no express language creating private rights. To the contrary, the treaty expressly states that it does not give rise to any private rights. Article 1, paragraph 3 of the treaty states, in full: “This treaty is intended solely for mutual legal assistance between the Parties. The provisions of this Treaty shall not give rise to a right on the part of any private person to obtain, suppress, or exclude any evidence, or to impede the execution of a request.” US–UK MLAT, art. 1, ¶ 3. The language of the treaty is clear: a “private person,” such as Moloney or McIntyre here, does not have any right under the treaty to “suppress ... any evidence, or to impede the execution of a request.”

If there were any doubt, and there is none, the report of the Senate Committee on Foreign Relations that accompanied the US–UK MLAT confirms this reading of the treaty's text:

[T]he Treaty is not intended to create any rights to impede execution of requests or to suppress or exclude evidence obtained thereunder. Thus, a person from whom records are sought may not oppose the execution of the request by claiming that it does not comply with the Treaty's formal requirements set out in article 3.

S. Exec. Rep. No. 104–23, at 14.

Other courts considering MLATs containing terms similar to the US–UK MLAT here have uniformly ruled that no such private right exists. See In re Grand Jury Subpoena, 646 F.3d 159, 165 (4th Cir. 2011) (subject of a subpoena issued pursuant to an MLAT with a clause identical to the US–UK MLAT's article 1, paragraph 3 “failed to show that the MLAT gives rise to a private right of action that can be used to restrict the government's conduct”); United States v. Rommy, 506 F.3d 108, 129 (2d Cir. 2007) (defendant who argued that evidence against him was improperly admitted because it was gathered in violation of US–Netherlands MLAT could not “demonstrate that the treaty creates any judicially enforceable right that could be implicated by the government's conduct” in the case); United States v. $734,578.82 in U.S. Currency, 286 F.3d 641, 659 (3d Cir. 2002) (article 1, paragraph 3 of US–UK MLAT barred claimants' argument that seizure and subsequent forfeiture of money violated the treaty); United States v. Chitron Elecs. Co. Ltd., 668 F.Supp.2d 298, 306–07 (D. Mass. 2009) (defendant's argument that service of criminal summons was defective under US–China MLAT, which contained a clause identical to article 1, paragraph 3 of US–UK MLAT, failed because “the MLAT does not create a private right of enforcement of the treaty”).

Moloney and McIntyre attempt to get around the prohibition on the creation of private causes of action with three arguments based on the treaty language. Appellants appear to argue that the text of the US–UK MLAT only covers requests for documents in the possession of the Requested Party but not for documents held by third persons who are merely under the jurisdiction of the government which is the Requested Party. This is clearly wrong. Article 1, paragraph 2 of the treaty states that a form of assistance provided for under the treaty includes “providing documents, records, and evidence.” US–UK MLAT, art. 1, ¶ 2(b). As the Senate report explains, the treaty “permits a State to compel a person in the Requested State to testify and produce documents there.” S. Exec. Rep. No. 104–23, at 7.

Appellants' second argument is that article 1, paragraph 3 applies only to criminal defendants who try to block enforcement. This argument has no support in the text of the treaty. The US–UK MLAT plainly states that the treaty does not “give rise to a right on the part of any private person ... to impede the execution of a request.” US–UK MLAT, art. 1, ¶ 3 (emphasis added). This prohibition by its terms encompasses all private persons, not just criminal defendants.

Appellants finally contend that they do not seek to “obtain, suppress, or exclude any evidence, or to impede the execution of a request,” but instead merely to enforce the treaty requirements before there can be compliance with a subpoena. Their own requests for relief make it clear they are attempting to do exactly what they say they are not.

Because the US–UK MLAT expressly disclaims the existence of any private rights under the treaty, appellants cannot state a claim under the treaty upon which relief can be granted.[FN14]

C. The APA Does Not Provide a Claim for Judicial Review

Appellants attempt to circumvent the US–UK MLAT's prohibition on private rights of action by framing their suit as one of judicial review under the APA.[FN15] See 5 U.S.C. § 702.

It is true that § 702 of the APA provides that “[a] person suffering legal wrong because of agency action, or adversely affected or aggrieved by agency action within the meaning of a relevant statute, is entitled to judicial review thereof.” Id. However, § 701(a)(1)  withdraws the right to judicial review to the extent that “statutes preclude judicial review.” Id. The treaty here by its express language precludes judicial review. Further, “the structure of the statutory scheme, its objectives, its legislative history, and the nature of the administrative action involved” all dictate that no judicial review is available under the APA. Block v. Cmty. Nutrition Inst., 467 U.S. 340, 345, 104 S.Ct. 2450, 81 L.Ed.2d 270 (1984). Section 701(a)(1) thus bars federal court jurisdiction here.[FN16] Accord Comm. of U.S. Citizens Living in Nicar. v. Reagan, 859 F.2d 929, 943 (D.C. Cir. 1988) (“[T]he APA does not grant judicial review of agencies' compliance with a legal norm that is not otherwise an operative part of domestic law.” (citing 5 Davis, Administrative Law Treatise § 28.1, at 256 (2d ed. 1984))).

D. The District Court Did Not Abuse Its Discretion, in Any Event, in Denying Relief

The district court reasoned that it had discretion, under the laws of the United States, particularly 18 U.S.C. § 3512, to quash the subpoenas, and concluded that it would exercise its discretion not to do so. The appellants, accordingly, argue that they may take advantage of that discretion and that the district court abused its discretion in not granting relief.[FN17] The government in this case has chosen not to address the question of whether there is any such discretion, or, if so, the scope of it or who may invoke it. By contrast, in a case under the US–Russia MLAT and 28 U.S.C. § 1782, the government argued that the district court lacked discretion to quash the subpoena. In re 840 140th Ave. NE, 634 F.3d at 565, 568. The Ninth Circuit agreed with the government's position, and noted that at most the statute provides “a procedure for executing requests, but not ... a means for deciding whether or not to grant or deny a request so made.” Id. at 570  (quoting In re Commissioner's Subpoenas, 325 F.3d at 1297) (internal quotation mark omitted). In doing so, it agreed with the Eleventh Circuit in In re Commissioner's Subpoenas.

By contrast, here, for purposes of this appeal, the government has assumed arguendo that the district court had discretion to quash (going beyond the issue of whether the documents were responsive to the terms of the subpoenas) and has argued that the court acted properly within any discretion it may have had. So we have no occasion to pass on these assumptions and caution that we are not deciding any of these issues. The issues before us are more limited.

Even assuming arguendo the district court had such discretion, a question we do not address, we see no basis to upset the decision not to quash. The district court concluded that the balance of interests favored the government. See Order, In re: Request from the U.K.,  No. 11–91078 (D. Mass. Dec. 27, 2011), ECF No. 38; Findings and Order, In re: Request from the U.K., No. 11–91078, 2012 WL 194432 (D. Mass. Jan. 20, 2012). The court's finding that any balancing favored the government was not an abuse of discretion, assuming such discretion existed.

III.

The Constitutional Claims Were Properly Dismissed

Moloney and McIntyre's civil complaint alleged violations of their constitutional rights under the First Amendment.[FN18] We have jurisdiction under 28 U.S.C. § 1331.

It is undisputed that treaty obligations are subject to some constitutional limits. See Am. Ins. Ass'n v. Garamendi, 539 U.S. 396, 417 & n. 9, 123 S.Ct. 2374, 156 L.Ed.2d 376 (2003) (treaty obligations are “subject ... to the Constitution's guarantees of individual rights”). Like the Ninth Circuit in In re 840 140th Ave. NE, we think it clear that the Constitution does not compel the consideration under the treaty of discretionary factors such as those contained in § 1782, although Congress may choose to enact some in statutes. 634 F.3d at 573.

We affirm the dismissal for failure to state a claim, after disposing of some of the government's initial arguments.

A. The Government's Standing Objections

The government attempts to short stop any analysis of whether a claim is stated by arguing that neither appellant has standing under Article III to raise a constitutional claim. Standing has both an Article III component and a prudential component. Katz v. Pershing, LLC, 672 F.3d 64, 71–72 (1st Cir. 2012). If the government's objections went only to prudential standing, they could easily be bypassed in favor of a decision on the merits. Nisselson v. Lernout, 469 F.3d 143, 150 (1st Cir. 2006) (challenges to plaintiff's standing to sue “must be addressed first only if they call into question a federal court's Article III power to hear the case”).

“Standing under Article III of the Constitution requires that an injury be concrete, particularized, and actual or imminent; fairly traceable to the challenged action; and redressable by a favorable ruling.” Monsanto Co. v. Geertson Seed Farms, 561 U.S. 139, 130 S.Ct. 2743, 2752, 177 L.Ed.2d 461 (2010). At this stage, under Iqbal we credit plaintiffs' allegations of threatened harm.[FN19] See Katz, 672 F.3d at 70; Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009). On their face, the pleadings appear to allege the requisite Article III injury that is fairly traceable to the issuance of the subpoenas and redressable by a favorable ruling. To the extent the government asserts that the appellants lack prudential standing, we bypass the arguments.

B. Failure to State a First Amendment Claim

We affirm the dismissal, as we are required to do by Branzburg v. Hayes, 408 U.S. 665, 92 S.Ct. 2646, 33 L.Ed.2d 626 (1972). As framed, the claim is one of violation of appellants' individual “constitutional right to freedom of speech, and in particular their freedom to impart historically important information for the benefit of the American public, without the threat of adverse government reaction.” They support this with an assertion that production of the subpoenaed interviews is contrary to the “confidentiality” they say they promised to the interviewees. They assert an academic research privilege,[FN20] to be evaluated under the same terms as claims of a reporter's privilege. See Cusumano v. Microsoft Corp., 162 F.3d 708, 714 (1st Cir. 1998) (“Academicians engaged in pre-publication research should be accorded protection commensurate to that which the law provides for journalists.”).

Our analysis is controlled by Branzburg, which held that the fact that disclosure of the materials sought by a subpoena in criminal proceedings would result in the breaking of a promise of confidentiality by reporters is not by itself a legally cognizable First Amendment or common law injury. See 408 U.S. at 682, 690–91, 701, 92 S.Ct. 2646. Since Branzburg, the Court has three times affirmed its basic principles in that opinion. See Cohen v. Cowles Media Co., 501 U.S. 663, 111 S.Ct. 2513, 115 L.Ed.2d 586 (1991) (First Amendment does not prohibit a plaintiff from recovering damages, under state promissory estoppel law, if the defendant newspaper breaches its promise of confidentiality); Univ. of Pa. v. EEOC, 493 U.S. 182, 110 S.Ct. 577, 107 L.Ed.2d 571 (1990) (First Amendment does not give a university any privilege to avoid disclosure of its confidential peer review materials pursuant to an EEOC subpoena in a discrimination case); Zurcher v. Stanford Daily, 436 U.S. 547, 98 S.Ct. 1970, 56 L.Ed.2d 525 (1978) (First Amendment does not provide any special protections for newspapers whose offices might be searched pursuant to a search warrant based on probable cause to look for evidence of a crime).

In Branzburg, the Court rejected reporters' claims that the freedoms of the press[FN21] and speech under the First Amendment, or the common law, gave them the right to refuse to testify before grand juries under subpoena with respect to information they learned from their confidential sources. The Court held that the strong interests in law enforcement precluded the creation of a special rule granting reporters a privilege which other citizens do not enjoy:

Fair and effective law enforcement aimed at providing security for the person and property of the individual is a fundamental function of government, and the grand jury plays an important, constitutionally mandated role in this process. On the records now before us, we perceive no basis for holding that the public interest in law enforcement and in ensuring effective grand jury proceedings is insufficient to override the consequential, but uncertain, burden on news gathering that is said to result from insisting that reporters, like other citizens, respond to relevant questions put to them in the course of a valid grand jury investigation or criminal trial.

408 U.S. at 690–91, 92 S.Ct. 2646; accord Cohen, 501 U.S. at 669, 111 S.Ct. 2513. The Branzburg Court “flatly rejected any notion of a general-purpose reporter's privilege for confidential sources, whether by virtue of the First Amendment or of a newly hewn common law privilege.”[FN22] In re Special Proceedings, 373 F.3d 37, 44 (1st Cir. 2004). And as the Court said in Zurcher,

Nor are we convinced, any more than we were in Branzburg, that confidential sources will disappear and that the press will suppress news because of fears of warranted searches. Whatever incremental effect there may be in this regard if search warrants, as well as subpoenas, are permissible in proper circumstances, it does not make a constitutional difference in our judgment.

436 U.S. at 566, 98 S.Ct. 1970 (citation omitted). As in Branzburg, there is no reason to create such a privilege here.

The Court rejected a similar claim of First Amendment privilege in University of Pennsylvania. The claim rejected there was that peer review materials produced in a university setting should not be disclosed in response to an EEOC subpoena in an investigation of possible tenure discrimination. The Court rejected the University's claims of First Amendment and of common law privilege. It also rejected a requirement that there be a judicial finding of particularized relevance beyond a showing of relevance. 493 U.S. at 188, 194, 110 S.Ct. 577.

The issue of defending against court proceedings requiring disclosure of information given under a promise of confidentiality has come up in a variety of circumstances in this circuit. Some cases involved underlying criminal proceedings as in Branzburg. See In re Special Proceedings, 373 F.3d 37 (1st Cir. 2004) (upholding order finding reporter in civil contempt for refusing to reveal to a special prosecutor the identity of the person who leaked a videotape in violation of a protective order entered in a criminal proceeding). One case did not invoke grand jury or government criminal investigations, but rather a request from criminal defendants. United States v. LaRouche Campaign, 841 F.2d 1176 (1st Cir. 1988) (upholding order finding television network in civil contempt for refusing to comply with criminal defendants' subpoena seeking “outtakes” of an interview with a key government witness).[FN23]

Two of our precedents dealt with claims of a non-disclosure privilege in civil cases, in which private parties both sought and opposed disclosure; as a result, the government and public's strong interest in investigation of crime was not an issue. See Cusumano, 162 F.3d 708;[FN24] Bruno & Stillman, Inc. v. Globe Newspaper Co., 633 F.2d 583 (1st Cir. 1980).

This case is closer to Branzburg itself, buttressed by University of Pennsylvania, than any of our circuit precedent. The Branzburg analysis, especially as to the strength of the governmental and public interest in not impeding criminal investigations, guides our outcome.

The fact that a U.S. grand jury did not issue the subpoenas here is not a ground on which to avoid the conclusion that Branzburg controls. The law enforcement interest here—a criminal investigation by a foreign sovereign advanced through treaty obligations—is arguably even stronger than the government's interest in Branzburg itself. Two branches of the federal government, the Executive and the Senate, have expressly decided to assume these treaty obligations. In exchange, this country is provided with valuable reciprocal rights. “The federal interest in cooperating in the criminal proceedings of friendly foreign nations is obvious.” McKevitt v. Pallasch, 339 F.3d 530, 532 (7th Cir. 2003). The strong interests of both the United States government and the requesting foreign government is emphasized by language in the treaty itself, which prohibits private parties from attempting to block enforcement of subpoenas. See US–UK MLAT, art. 1, ¶ 3.

The Supreme Court in Branzburg stressed that “[f]air and effective law enforcement aimed at providing security for the person and property of the individual is a fundamental function of government.” 408 U.S. at 690, 92 S.Ct. 2646. “The preference for anonymity of those confidential informants involved in actual criminal conduct is presumably a product of their desire to escape criminal prosecution, and this preference, while understandable, is hardly deserving of constitutional protection.” Id. at 691, 92 S.Ct. 2646. The court also commented that “it is obvious that agreements to conceal information relevant to commission of crime have very little to recommend them from the standpoint of public policy.” Id. at 696, 92 S.Ct. 2646. In doing so, it relied on legal history, including both English and United States history outlawing concealment of a felony. Id. at 696–97, 92 S.Ct. 2646.

Branzburg weighed the interests against disclosure pursuant to subpoenas and concluded they were so wanting as not to state a claim.[FN25] The opinion discussed the situation, not merely of reporters who promised confidentiality, but also of both informants who had committed crimes and those innocent informants who had information pertinent to the investigation of crimes. The interests in confidentiality of both kinds of informants did not give rise to a First Amendment interest in the reporters to whom they had given the information under a promise of confidentiality. These insufficient interests included the fear, as here, that disclosure might “threaten their job security or personal safety or that it will simply result in dishonor or embarrassment.” Id. at 693, 92 S.Ct. 2646. If the reporters' interests were insufficient in Branzburg, the academic researchers' interests necessarily are insufficient here.

It may be that compliance with the subpoenas in the face of the misleading assurances in the donation agreements could have some chilling effect, as plaintiffs assert. This amounts to an argument that unless confidentiality could be promised and that promise upheld by the courts in defense to criminal subpoenas, the research project will be less effective.[FN26] Branzburg took into account precisely this risk. So did the Court in rejecting the claim in the academic peer review situation in University of Pennsylvania. See 493 U.S. at 188, 194, 110 S.Ct. 577. The choice to investigate criminal activity belongs to the government and is not subject to veto by academic researchers.

We add that this situation was clearly avoidable. It is unfortunate that BC was inconsistent in its application of its recognition of the limits of its ability to promise confidentiality. But that hardly assists the appellants' case. Burns Librarian O'Neill informed Moloney before the project commenced that he could not guarantee that BC “would be in a position to refuse to turn over documents [from the Project] on a court order without being held in contempt.” In keeping with this warning, Moloney's agreement with BC directed that “[e]ach interviewee is to be given a contract guaranteeing to the extent American law allows the conditions of the interview and the conditions of its deposit at the Burns Library, including terms of an embargo period if this becomes necessary” (emphasis added). Despite Moloney's knowledge of these limitations, the donation agreements signed by the interviewees did not contain the limitation required to be in them by Moloney's agreement with BC.

That failure in the donation agreement does not change the fact that any promises of confidentiality were necessarily limited by the principle that “the mere fact that a communication was made in express confidence ... does not create a privilege.... No pledge of privacy nor oath of secrecy can avail against demand for the truth in a court of justice.” Branzburg, 408 U.S. at 682 n. 21, 92 S.Ct. 2646 (quoting 8 Wigmore, Evidence § 2286 (McNaughton rev. 1961)) (internal quotation marks omitted).

To be clear, even if participants had been made aware of the limits of any representation about non-disclosure, Moloney and McIntyre had no First Amendment basis to challenge the subpoenas. Appellants simply have no constitutional claim and so that portion of the complaint was also properly dismissed.[FN27]

IV.

We uphold the denial of the requested relief for the reasons stated and affirm. No costs are awarded.

TORRUELLA, Circuit Judge (Concurring in the judgment only).

I reluctantly concur in the judgment in this case, doing so only because I am compelled to agree that the Supreme Court in Branzburg v. Hayes, 408 U.S. 665, 92 S.Ct. 2646, 33 L.Ed.2d 626 (1972), and subsequent cases has most likely foreclosed the relief that the Appellants in these consolidated appeals seek. I write separately to emphasize my view that, while the effect of Branzburg and its progeny is to forestall the result that the Appellants wish to see occur, none of those cases supports the very different proposition, apparently espoused by the majority, that the First Amendment does not provide some degree of protection to the fruits of the Appellants' investigative labors. Cf. Branzburg, 408 U.S. at 681, 92 S.Ct. 2646. It is one thing to say that the high court has considered competing interests and determined that information gatherers (here, academic researchers) may not refuse to turn over material they acquired upon a premise of confidentiality when these are requested via government subpoena in criminal proceedings. It is entirely another to eagerly fail to recognize that the First Amendment affords the Appellants “a measure of protection ... in order not to undermine their ability to gather and disseminate information.” Cusumano v. Microsoft Corp., 162 F.3d 708, 714 (1st Cir.1998).

“It is firmly established that the First Amendment's aegis extends further than the text's proscription on laws ‘abridging the freedom of speech, or the press,’ and encompasses a range of conduct related to the gathering and dissemination of information.” Glik v. Cunniffe, 655 F.3d 78, 82 (1st Cir. 2011). Confidentiality or anonymity, where prudent, naturally protects those who seek to collect or provide information. Accordingly, it is similarly well-settled that the First Amendment's protections will at times shield “information gatherers and disseminators,” from others' attempts to reveal their identities, unveil their sources, or disclose the fruits of their work. See Cusumano, 162 F.3d at 714; see also McIntyre v. Ohio Elections Comm'n, 514 U.S. 334, 342, 115 S.Ct. 1511, 131 L.Ed.2d 426 (1995) (noting “an author's decision to remain anonymous, like other decisions concerning omissions or additions to the content of a publication, is an aspect of the freedom of speech protected by the First Amendment”); Talley v. California, 362 U.S. 60, 64, 80 S.Ct. 536, 4 L.Ed.2d 559 (1960) (noting City's ordinance banning distribution of handbills lacking names and addresses of authors and distributors “would tend to restrict freedom to distribute information and thereby freedom of expression”); United States v. LaRouche Campaign, 841 F.2d 1176, 1182 (1st Cir. 1988) (“We discern a lurking and subtle threat to journalists ... if disclosure of outtakes, notes, and other unused information, even if nonconfidential, becomes routine and casually, if not cavalierly compelled.”).

The Appellants in these consolidated cases are academic researchers and, as such, axiomatically come within the scope of these protections, as recognized by this Circuit's settled law. See Cusumano, 162 F.3d at 714 (“The same concerns [that advise extending First Amendment protections to journalists] suggest that courts ought to offer similar protection to academicians engaged in scholarly research.”). It is also beyond question that the content of the materials that the government wishes to obtain may properly be characterized as confidential: the Appellants and the Belfast Project's custodians have gone to great lengths to prevent their unsanctioned disclosure. See  Maj. Op. at 4–5. The question then becomes one concerning the degree of protection to which they are entitled. The manner in which this inquiry unfolds necessarily depends on context, not on “semantics”—the “unthinking allowance” of discovery requests in these circumstances, we have warned, will inevitably “impinge upon First Amendment rights.” Cusumano, 162 F.3d at 716 (quoting Bruno & Stillman, Inc. v. Globe Newspaper Co., 633 F.2d 583, 595–96 (1st Cir. 1980)). Consequently, balancing the interests on either side of such a request is both proper and essential. See id. (“[C]ourts must balance the potential harm to the free flow of information that might result against the asserted need for the requested information.” (quoting Bruno & Stillman, Inc., 633 F.2d at 595–96)).

Fortunately for this Court's panel—but unfortunately for the Appellants—the Supreme Court has already done the lion's share of the work for us. Under the mutual legal assistance treaty between the United States and the United Kingdom, the federal government has assumed an obligation to assist the United Kingdom in its prosecution of domestic criminal matters—here, a homicide—to the extent permitted by U.S. law. See UK–MLAT Technical Analysis, S. Exec. Rep. No. 104–23, at 11 (noting “MLATs oblige each country to assist the other to the extent permitted by their laws, and provide a framework for that assistance”).[FN28]

In my view, the Appellants cannot carry the day, not because they lack a cognizable interest under the First Amendment, but because any such interest has been weighed and measured by the Supreme Court and found insufficient to overcome the government's paramount concerns in the present context.

Finally, with regards to the district court's denial of the Appellants' motion to intervene as of right under Rule 24(a), I harbor doubts as to whether Boston College could ever “adequately represent” the interests of academic researchers who have placed their personal reputations on the line, exposing both their livelihoods and well-being to substantial risk in the process. Because, for the reasons explained above, I am constrained to agree that the Appellants are unable to assert a legally-significant protectable interest, as Rule 24(a)  commands, see Donaldson v. United States, 400 U.S. 517, 531, 91 S.Ct. 534, 27 L.Ed.2d 580 (1971), any concerns I may have in that regard are regrettably moot. See Ungar v. Arafat, 634 F.3d 46, 51 (1st Cir. 2011) (“Each of [Rule 24(a)(2)'s] requirements must be fulfilled; failure to satisfy any of them defeats intervention as of right.”).

Footnotes

[FN1] As the district court noted in its opinion, researchers for Columbia University's oral history projects apparently advise interviewees that whatever they say is subject to release under court orders and subpoenas. See In re: Request from the U.K., 831 F.Supp.2d 435, 441 n. 4 (D. Mass. 2011).

[FN2] An affidavit from McIntyre, who interviewed Price, states that Price did sign a donation agreement, which McIntyre states that he witnessed and also signed, and that he sent the donation form to BC. The affidavit from O'Neill, the Burns Librarian, states that a search of the Project's archives for Price's executed donation agreement failed to locate it, but that there is no reason to doubt that Price did in fact execute a donation agreement just like the one executed by Hughes.

[FN3] At the time the book was published, both Hughes and Ervine had died, so under the terms of their donation agreements their interviews could be released to the public.

[FN4] During a hearing held on December 22, 2011, the court explained that it would engage in a two-part analysis, first determining whether the produced materials fell within the scope of the subpoenas, and second engaging in a balancing test. See Tr. of Conf., In re: Request from the U.K., No. 11–91078 (D. Mass. Dec. 22, 2011), ECF No. 35.

[FN5] The district court also mentioned but did not analyze the rule that “[a]n interest that is too contingent or speculative ... cannot furnish a basis for intervention as of right.” In re: Request from the U.K., 831 F.Supp.2d at 458 (quoting Ungar v. Arafat, 634 F.3d 46, 50–51 (1st Cir. 2011)) (internal quotation marks omitted).

[FN6] On December 30, 2011, this court granted Moloney and McIntyre's motion to stay the portion of the district court's order of December 27, 2011 permitting the government to turn over the Price interview materials to the United Kingdom, pending the resolution of this appeal.

[FN7] It is evident from the transcript of the hearing that the district court considered Moloney and McIntyre's constitutional claims as being the same as those raised by BC's motions to quash and that the court dismissed Moloney and McIntyre's claims for the same reasons that it denied BC's motions. Tr. of Mot. Hr'g at 8–11, Moloney v. Holder, No. 11–12331 (D. Mass. Jan. 24, 2012), ECF No. 18.

[FN8] The court made production contingent on the lifting of the stay entered by this court on December 30, 2011.

[FN9] No party raises on appeal any question whether the district court had discretion to review the materials to determine whether they fell within the scope of the subpoenas or acted within any discretion it had.

[FN10] The brief states three interests: support of the First Amendment claim, expression of concern about disclosure of confidential information held by others, and an expression of concern about the government's interpretation of the US–UK MLAT.

[FN11] Appellants assert that the Attorney General's actions violate the US–UK MLAT because it was not reasonable to believe that a prosecution would take place in the underlying case; he failed to take into account certain “essential interests” and “public policy” in deciding whether to comply with a request under the treaty; the crimes under investigation by the United Kingdom were “of a political character;” and he did not consider the implications for the peace process in Northern Ireland of complying with the United Kingdom's request. The federal courts may not review this decision by the Attorney General.

[FN12] Article 3, paragraph one states that

[t]he Central Authority of the Requested Party may refuse assistance if:

(a) the Requested Party is of the opinion that the request, if granted, would impair its sovereignty, security, or other essential interests or would be contrary to important public policy;

(b) the request relates to an offender who, if proceeded against in the Requested Party for the offense for which assistance is requested, would be entitled to be discharged on the grounds of previous acquittal or conviction; or

(c) the request relates to an offense that is regarded by the Requested Party as:

(i) an offense of a political character; or

(ii) an offense under military law of the Requested Party which is not also an offense under the ordinary civilian law of the Requested Party.

US–UK MLAT, art. 3, ¶ 1.

[FN13] Section 1782 effectively requires the Attorney General as Central Authority to respond to requests for evidence from foreign governments by filing requests with the district court in every district in which evidence or a witness may be found. See 155 Cong. Rec. S6810 (daily ed. June 18, 2009) (letter from Acting Assistant Att'y Gen. Burton to Sen. Whitehouse). In practice this requires involving multiple U.S. Attorneys' Offices and district courts in a single case. Id. Section 3512, on the other hand, permits a single Assistant United States Attorney to pursue requests in multiple judicial districts, see 18 U.S.C. § 3512(a)(1); 155 Cong. Rec. S6809 (daily ed. June 18, 2009) (statement of Sen. Whitehouse), and allows individual district court judges to oversee and approve subpoenas and other orders (but not search warrants) in districts other than their own, see 18 U.S.C. § 3512(f).

[FN14] We reject their broader contention that the US–EU MLAT provides a basis for applying U.S. domestic law. That treaty has a provision that reads: “The provisions of this Agreement shall not ... expand or limit rights otherwise available under domestic law.” US–EU MLAT, art. 3, ¶ 5. Not only is appellants' reliance on this provision question begging, it is also misplaced. By its terms the provision applies only to the US–EU MLAT and not to any of the related bilateral agreements, such as the US–UK MLAT at issue in this case.

[FN15] The government argues that Moloney and McIntyre lack prudential standing to bring their claims under the APA because their asserted interests fall outside the zone of interests meant to be protected or regulated by the US–UK MLAT. See Match–E–Be–Nash–She–Wish Band of Pottawatomi Indians v. Patchak, ––– U.S. ––––, 132 S.Ct. 2199, 2210, 183 L.Ed.2d 211 (2012)  (describing the prudential standing test). The zone-of-interests standing question “is an issue of statutory standing,” not Article III standing. Steel Co. v. Citizens for a Better Env't, 523 U.S. 83, 97, 118 S.Ct. 1003, 140 L.Ed.2d 210 (1998). We may and do bypass the question of appellants' statutory standing and resolve the issue of whether the APA provides them with a cause of action on the merits. See id. at 97 & n. 2, 118 S.Ct. 1003 (merits questions may be decided before statutory standing questions).

[FN16] Appellants admit they cannot invoke the Declaratory Judgment Act, 28 U.S.C. § 2201, as an independent basis for jurisdiction over their claims. See Alberto San, Inc. v. Consejo De Titulares Del Condominio San Alberto, 522 F.3d 1, 5 (1st Cir. 2008)  (Declaratory Judgment Act “merely ‘makes available an added anodyne for disputes that come within the federal courts' jurisdiction on some other basis.’ ” (quoting Ernst & Young v. Depositors Econ. Prot. Corp., 45 F.3d 530, 534 (1st Cir. 1995)) (citing Skelly Oil Co. v. Phillips Petroleum Co., 339 U.S. 667, 671, 70 S.Ct. 876, 94 L.Ed. 1194 (1950))).

Nor are appellants entitled to a writ of mandamus under 28 U.S.C. § 1361. “Mandamus is regarded as an extraordinary writ reserved for special situations. Among its ordinary preconditions are that the agency or official have acted (or failed to act) in disregard of a clear legal duty and that there be no adequate conventional means for review.” In re City of Fall River, Mass., 470 F.3d 30, 32 (1st Cir. 2006). Such clear legal duty must be “nondiscretionary.” Eveland v. Dir. of Cent. Intelligence Agency, 843 F.2d 46, 51 (1st Cir. 1988) (per curiam) (quoting Heckler v. Ringer, 466 U.S. 602, 616, 104 S.Ct. 2013, 80 L.Ed.2d 622 (1984)). Here, the plain text of article 1, paragraph 3 of the US–UK MLAT precludes any legal duty—discretionary or nondiscretionary—under the treaty on the part of the Attorney General to any private party.

[FN17] Appellants' reliance on Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 124 S.Ct. 2466, 159 L.Ed.2d 355 (2004), fails. Moloney and McIntyre argue that the district court should have evaluated the subpoenas by applying the discretionary factors set forth in Intel. In that case the Supreme Court set out “factors that bear consideration in ruling on a § 1782(a)  request” for the production of evidence for use in a foreign tribunal. Id. at 264, 124 S.Ct. 2466.

The Intel factors are not applicable in this case for two reasons, whether or not § 3512 provides any residual discretion. The request here was brought under 18 U.S.C. § 3512, not 28 U.S.C. § 1782(a). In addition, the United Kingdom's request was made pursuant to an MLAT. The Court developed the Intel factors to apply to a situation where 28 U.S.C. § 1782(a)  provided the only substantive standards for evaluating a request, but here such substantive standards are provided by the US–UK MLAT. See In re 840 140th Ave. NE, 634 F.3d 557, 571 (9th Cir. 2011) (MLAT requests brought pursuant to § 1782  use that statute's procedural mechanisms “without importing [its] substantive limitations”); Nanda & Pansius, Litigation of International Disputes in U.S. Courts § 17:53 (“The [MLAT] provides at least three advantages: reciprocity; the reduction (if not elimination) of the court's discretion under § 1782; and the streamlining of evidence processes.”).

[FN18] Although the complaint alludes to a Fifth Amendment claim, based on alleged risk to appellants, no such claim is pled or briefed, and it fails. See Marrero–Rodríguez v. Municipality of San Juan, 677 F.3d 497, 501 (1st Cir. 2012) (dismissing as not properly pled a Fourth Amendment claim which was only mentioned on the first page of the complaint, and was not even pled as a claim).

[FN19] We add that the government disputes these allegations of threatened harm to appellants, which also makes any final resolution of the standing issue at this stage inadvisable.

[FN20] The Supreme Court, for First Amendment purposes, has distinguished between “academic freedom” cases, on the one hand, involving government attempts to influence the content of academic speech and direct efforts by government to determine who teaches, from, on the other hand, the question of privilege in the academic setting to protect confidential peer review materials. Univ. of Pa. v. EEOC, 493 U.S. 182, 197–98, 110 S.Ct. 577, 107 L.Ed.2d 571 (1990). We view appellants' claim as falling into the second category. As such, it is far attenuated from the academic freedom issue, and the claimed injury as to academic freedom is speculative. Id. at 200, 110 S.Ct. 577.

[FN21] No claim of freedom of the press is involved here.

[FN22] The Branzburg Court “left open ... the prospect that in certain situations—e.g., a showing of bad faith purpose to harass—First Amendment protections might be invoked by the reporter.” In re Special Proceedings, 373 F.3d 37, 45 (1st Cir. 2004) (citing Branzburg v. Hayes, 408 U.S. 665, 707–08, 92 S.Ct. 2646, 33 L.Ed.2d 626 (1972)). This suit does not fall within that premise. There is no plausible claim here of a bad faith purpose to harass.

[FN23] As the Seventh Circuit recognized in McKevitt v. Pallasch, 339 F.3d 530, 532 (7th Cir. 2003), there is a circuit split on whether under Branzburg there can ever be a reporter's privilege of constitutional or common law dimensions. This circuit has recognized such a possibility in United States v. LaRouche Campaign, 841 F.2d 1176, 1181–82 (1st Cir. 1988).

[FN24] Even if Branzburg left us free, as we think it does not, to engage in an independent balancing utilizing the test articulated in our decision in Cusumano, we would still affirm, for the same reasons.

[FN25] Branzburg also rejected arguments of First Amendment protection based on a notion that the press was being used as an investigative arm of the government, imposing burdens on it. 408 U.S. at 706–07, 92 S.Ct. 2646.

[FN26] McIntyre, but not Moloney, in his affidavit states that neither he nor the people he interviewed would have participated in the Belfast Project had they thought that the interviews would be subject to disclosure before their deaths and without their permission. Burns Librarian O'Neill states in his affidavit that “[h]ad the assurances of confidentiality not been made, it is doubtful that any paramilitary would have participated in this oral history project. Their stories would have died with them, and an opportunity to document and preserve a critical part of the historical record would have been lost forever.”

[FN27] Appellants' intervention complaint raised the same claims as their separate civil complaint. We have affirmed that there is no cause of action under the treaty and under the Constitution, so there is no need for us to consider whether the district court acted within its discretion in denying appellants' motion to intervene. Cf. In re Grand Jury Proceedings, 708 F.2d 1571, 1575 (11th Cir. 1983) (per curiam) (holding that the district court's denial of a petition to intervene was harmless error because the merits of the appellant's claim were eventually considered on appeal).

[FN28] Appellants also claim that the Attorney General's actions are not in compliance with the US–UK–MLAT, among other reasons, because “the crimes under investigation by the United Kingdom were of ‘a political nature.’ ” Pursuant to Article 3, ¶ 1(c)(i) of the treaty the United States may refuse assistance to the United Kingdom's request if it relates to “an offense of a political nature.” Ignoring the underlying and pervasive political nature of the “Troubles,” as the Irish–British controversy has come to be known in Northern Ireland, is simply ignoring one hundred years of a well-documented history of political turmoil. These came into focus when Ireland was partitioned, and six of its Ulster counties were constituted into Northern Ireland as an integral part of the United Kingdom by virtue of the Government of Ireland Act of 1920. See generally Northern Ireland Politics (Arthur Aughley & Duncan Morrow eds.) (1996). That the academic investigations carried out by Appellants in this case, and the evidence sought by the United Kingdom involve “offenses of a political nature” irrespective of how heinous we may consider them, is borne out by the terms of the Belfast Agreement (also known as the “Good Friday Agreement”) entered into by the Government of the United Kingdom and the Irish Republican Army, whereby almost all prisoners were released by the British government, including many who had been convicted of murder. See Karl S. Bottigheirmer & Arthur H. Aughley, Northern Ireland, Encyclopedia Britannica (2007). Unfortunately for Appellants, they are foreclosed from pursuing their claim by virtue of Article 1, ¶ 3 of the treaty, which prohibits private parties from enforcing any rights thereunder.

464 Mass. 517

Supreme Judicial Court of Massachusetts,
Norfolk.

HIPSAVER, INC.
v.
Douglas KIEL.

SJC–11085.

Submitted Nov. 5, 2012.
Decided March 13, 2013.

Attorneys and Law Firms  

Robert LeRoux Hernandez (Mark Booker, Boston, with him) for the plaintiff.

Robert P. Powers, Boston, for the defendant.

Thomas F. Maffei, Scott McConchie, Paul G. Cushing, & Kaitlyn L. Dunn, Boston, for Massachusetts General Hospital & others, amici curiae, submitted a brief.

Present: IRELAND, C.J., SPINA, CORDY, BOTSFORD, GANTS, DUFFLY, & LENK, JJ.

Opinion

SPINA, J.

The present action concerns a claim for commercial disparagement arising from the publication of an article in the Journal of the American Medical Association (JAMA).[FN1] The plaintiff, HipSaver, Inc. (HipSaver), is a Massachusetts corporation engaged in the design, manufacture, and sale of hip protectors, a device that provides protective padding over the wearer's hip bones in order to reduce the risk of hip fractures in the event of a fall. On July 25, 2007, JAMA published an article entitled “Efficacy of a Hip Protector to Prevent Hip Fracture in Nursing Home Residents: The HIP PRO Randomized Controlled Trial” (article). According to the article, the “Hip Impact Protection PROject (HIP PRO) was designed to test the efficacy of a biomechanically tested energy-absorbing/shunting hip protector in reducing hip fracture incidence among nursing home residents.” The article was authored by nine individuals, including the defendant, Dr. Douglas P. Kiel, an associate professor at Harvard Medical School, who conducted the clinical trial that formed the basis for the article and was its lead author. The article described the clinical trial, analyzed the data collected, and concluded, among other things, that the clinical trial “confirm[ed] the growing body of evidence that hip protectors are not effective in nursing home populations.”

On February 15, 2008, HipSaver filed a complaint in the Superior Court against Kiel, alleging that he had disparaged HipSaver's product in the JAMA article and was liable for monetary damages.[FN2] A judge denied Kiel's motion to dismiss the complaint pursuant to Mass. R. Civ. P. 12(b)(6), 365 Mass. 754 (1974). After the completion of discovery, Kiel filed a motion for summary judgment on April 19, 2011, asserting that HipSaver had no reasonable expectation of proving the essential elements of its claim, including falsity and special damages. Following a hearing, the judge allowed the motion and dismissed HipSaver's complaint. We granted HipSaver's application for direct appellate review. Because we conclude that the judge properly entered summary judgment for Kiel where HipSaver failed to demonstrate that it had a reasonable expectation of proving all of the essential elements of a cause of action for commercial disparagement, we affirm.[FN3]

1. Background.

We briefly summarize the undisputed facts contained in the summary judgment record, reserving additional facts for later discussion in conjunction with specific issues.

HipSaver was incorporated in 1995 and is one of at least twenty-three companies that markets hip protectors. There are two varieties of the device, one designed to divert the energy of a fall (hard shell type) and another designed to absorb the energy of a fall (foam type). HipSaver's product is made of “soft pen cell foam.” Its customer base is, and always has been, long-term care facilities, and its largest client is the United States Veterans Administration. HipSaver advertises its product on a national basis, including through its own Internet Web site, and it also markets its product through distributors in eight foreign countries.

Kiel is a licensed physician in Massachusetts who is board certified in internal medicine and geriatric medicine. He has done research on osteoporosis, falls, and related bone fractures; has published over 125 papers in peer-reviewed journals; and is regarded by others as an expert on hip protectors. In February, 2001, the National Institutes of Health awarded Kiel a five-year grant, in the amount of $8,424,636, to study the efficacy of hip protectors in reducing the risk of hip fractures when worn by nursing home residents. The findings of at least twelve earlier studies on the efficacy of hip protectors had produced mixed conclusions.

A clinical trial was conducted between October, 2002, and October, 2004, and involved 1,042 residents of thirty-seven nursing homes in Massachusetts, Missouri, and Maryland. The device that was studied was a hybrid hip protector that contained a plastic sheath embedded in ethylene vinyl acetate (EVA) foam. It was not a HipSaver product. During the clinical trial, nursing home residents wore the pad on one hip, but not on the other hip, so that they could serve as their own control subjects.[FN4] The National Institutes of Health appointed a data and safety monitoring board (DSMB) to oversee the conduct of the trial. Approximately twenty months after its commencement, the DSMB recommended that the trial be terminated “due to lack of efficacy and the low probability of being able to demonstrate efficacy in the remaining years of the study.” The researchers involved with the clinical trial then decided to submit an article to JAMA for publication.

JAMA is a highly respected, peer-reviewed, general medical journal whose key objective is to “promote the science and art of medicine and the betterment of the public health.” It is the most widely circulated medical journal in the world and has been published continuously since 1883. Following submission of the article, JAMA undertook a seven-month peer review process, after which it proceeded with publication. The following statement appeared in the conclusion of the article: “In summary, this large multicenter clinical trial failed to demonstrate a protective effect of a hip protector on hip fracture incidence in nursing home residents despite high adherence, confirming the growing body of evidence that hip protectors are not effective in nursing home populations” (emphasis added). Similarly, the following statements appeared in the abstract summarizing the article: “In this clinical trial of an energy absorbing/shunting hip protector conducted in U.S. nursing homes, we were unable to detect a protective effect on the risk of hip fracture, despite good adherence to protocol. These results add to the increasing body of evidence that hip protectors, as currently designed, are not effective for preventing hip fracture among nursing home residents” (emphasis added).[FN5]

In its action against Kiel for commercial disparagement, HipSaver alleged that, prior to publishing the results of the clinical trial, Kiel knew or had reason to know that the product he had tested had a design that was different from and inferior to HipSaver's product, that persons likely to read and write about the article would be unaware of this distinction, and that these people would believe that the challenged statements, which were false, applied to all hip protectors, including those made by HipSaver. HipSaver further alleged that Kiel published the article with malice and with reckless indifference to the fact that his conduct would injure the company. HipSaver claimed that, as a direct and foreseeable consequence of the article's publication, it has suffered and will continue to suffer severe economic damages, including, but not limited to, the loss of sales and the costs of advertising to mitigate the harm caused by the challenged statements.

In her memorandum of decision and order allowing Kiel's motion for summary judgment, the judge first stated that HipSaver had not introduced any evidence demonstrating the falsity of the challenged statements. Proposed testimony from two expert witnesses that, in their opinions, the design of the clinical trial was flawed did not necessarily mean that its scientific conclusions were false. Therefore, HipSaver had failed to produce evidence to satisfy its burden of proof with regard to this essential element of its claim. Next, the judge pointed out that the issue whether “malice” is a required element of the tort of commercial disparagement has not been decided definitively in Massachusetts. Nonetheless, proceeding on the assumption that it is a required element, see Dulgarian v. Stone, 420 Mass. 843, 852, 652 N.E.2d 603 (1995), the judge concluded that HipSaver had not demonstrated that Kiel published the challenged statements with intentional or reckless disregard for their truth or falsity. Finally, the judge determined that, where HipSaver had failed to introduce evidence to support two essential elements of its claim for commercial disparagement, the judge need not address the remaining arguments presented in Kiel's motion for summary judgment.

2. Standard of review.

Summary judgment is appropriate where there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. See Mass. R. Civ. P. 56(c), as amended, 436 Mass. 1404 (2002). See also Kourouvacilis v. General Motors Corp., 410 Mass. 706, 716, 575 N.E.2d 734 (1991). “[A] party moving for summary judgment in a case in which the opposing party will have the burden of proof at trial is entitled to summary judgment if he demonstrates, by reference to material described in Mass. R. Civ. P. 56(c), unmet by countervailing materials, that the party opposing the motion has no reasonable expectation of proving an essential element of that party's case.” Id. See Flesner v. Technical Communications Corp., 410 Mass. 805, 809, 575 N.E.2d 1107 (1991) (moving party's burden “need not be met by affirmative evidence negating an essential element of the plaintiff's case, but may be satisfied by demonstrating that proof of that element is unlikely to be forthcoming at trial”). We review a decision to grant summary judgment de novo. See Miller v. Cotter, 448 Mass. 671, 676, 863 N.E.2d 537 (2007).

3. Discussion.

An action for commercial disparagement is similar in many respects to an action for defamation, but there are important differences. Both torts seek to impose liability on a defendant for harm sustained by a plaintiff as a result of the publication of a false statement about the plaintiff to others. See White v. Blue Cross & Blue Shield of Mass., Inc., 442 Mass. 64, 66, 809 N.E.2d 1034 (2004); Dulgarian v. Stone, supra. See also Restatement (Second) of Torts § 623A comment g, at 340–341 (1977). A defamation action, which encompasses libel and slander, affords a remedy for damage to the reputation of the injured party. See White v. Blue Cross & Blue Shield of Mass., Inc., supra; Ravnikar v. Bogojavlensky, 438 Mass. 627, 629–630, 782 N.E.2d 508 (2003). See also Restatement (Second) of Torts, supra at § 559. By comparison, an action for commercial disparagement affords a remedy for harm to the economic interests of the injured party that results in pecuniary loss.[FN6] See Dulgarian v. Stone, supra. See also Restatement (Second) of Torts, supra at § 623A comment g. A plaintiff asserting such a claim seeks to recover damages for false disparaging statements about the plaintiff's property, often a product or service being sold. See U.S. Healthcare, Inc. v. Blue Cross of Greater Philadelphia, 898 F.2d 914, 924 (3d Cir.), cert. denied, 498 U.S. 816, 111 S.Ct. 58, 112 L.Ed.2d 33 (1990). See also 2 R.D. Sack, Defamation § 13:1.1, at 13–3 (4th ed. 2012).

In Dulgarian v. Stone, supra, this court adopted the language of the Restatement (Second) of Torts, supra at § 623A, regarding liability for commercial disparagement: “One who publishes a false statement harmful to the interests of another is subject to liability for pecuniary loss resulting to the other if (a) he intends for publication of the statement to result in harm to [the] interests of the other having a pecuniary value, or either recognizes or should recognize that it is likely to do so, and (b) he knows that the statement is false or acts in reckless disregard of its truth or falsity.” Thus, in order to prevail on a claim alleging commercial disparagement, a plaintiff must prove that a defendant: (1) published a false statement to a person other than the plaintiff; (2) “of and concerning” the plaintiff's products or services; (3) with knowledge of the statement's falsity or with reckless disregard of its truth or falsity; (4) where pecuniary harm to the plaintiff's interests was intended or foreseeable; and (5) such publication resulted in special damages in the form of pecuniary loss.[FN7] See Restatement (Second) of Torts, supra at § 651 (setting forth plaintiff's burden of proof in action for injurious falsehood). See also 2 R.D. Sack, Defamation, supra at § 13:1.4[A], at 13–9; W.L. Prosser & W.P. Keeton, Torts § 128, at 967–970 (5th ed. 1984). Given the scarcity of appellate decisions in this Commonwealth analyzing a cause of action for commercial disparagement, we now set forth a framework for doing so. More specifically, we consider whether Kiel demonstrated that HipSaver had no reasonable expectation of proving each essential element of this tort such that the judge properly granted his motion for summary judgment. We recognize that a failure of proof as to even one element would be sufficient to defeat a claim for commercial disparagement.

a. Falsity of the statements.

First, HipSaver has the burden of proving that Kiel published a false statement about HipSaver to a third party. See Dulgarian v. Stone, supra. See also Flotech, Inc. v. E.I. Du Pont de Nemours Co., 627 F.Supp. 358, 365 (D.Mass.1985), aff'd, 814 F.2d 775 (1st Cir.1987) (as matter of common law, plaintiff in commercial disparagement action must prove that offending statements are false). Given that the article was authored by, among others, Kiel, and appeared in the most widely circulated medical journal in the world, the focus of our inquiry is whether HipSaver has established that the challenged statements are false. See W.L. Prosser & W.P. Keeton, Torts, supra at § 128, at 967 (“the plaintiff must carry the burden of proving that the disparaging statement is false, and if he does not do so he has no claim”). HipSaver contends that the challenged statements are false because the design of the clinical trial was flawed.[FN8] We conclude that any purported design defects in the clinical trial were acknowledged by Kiel in the article, and did not necessarily render the challenged statements false. Accordingly, HipSaver has failed to present evidence that would satisfy its burden of proof in this regard.

The genesis of the clinical trial was a recognition that nearly 340,000 hip fractures were occurring each year in the United States, with the highest incidence rates being reported in nursing home residents. In the article, Kiel pointed out that the results of past studies on the efficacy of hip protectors had been conflicting.[FN9] To the authors' knowledge, their clinical trial was the first study of an “energy-absorbing/shunting hip protector” to be conducted in nursing homes in the United States. With regard to the design of the clinical trial, Kiel explained its underlying rationale and stated that “[n]ursing home residents wore a hip protector on [one] hip only so that each participant served as his or her own control.” After describing the study's results, Kiel commented that the authors “were unable to detect a protective effect on the risk of hip fracture, despite successful recruitment, retention, and adherence to the protocol.” He acknowledged that differences between his clinical trial and previous studies “may have resulted from the type of hip protector used,” and he explained several possible limitations of the clinical trial, pointing out that it was intended to be an “efficacy” study and not an “effectiveness” study, particularly given the use of a one-sided hip protector.[FN10] Kiel ended the JAMA article by stating that “[w]ith the development of better pad materials and more thorough testing, future studies should examine new hip protectors using nonclustered randomized designs like [his clinical trial] to avoid many methodological biases.”

HipSaver has taken issue with Kiel's statements that the results of the clinical trial “add[ed] to” or “confirm[ed]” the “growing body of evidence that hip protectors are not effective in nursing home populations.” However, it does not follow from HipSaver's assertion that the design of the clinical trial was flawed that the challenged statements are false. The article plainly acknowledged possible flaws and limitations with the methodology that was used, and it suggested that further studies be conducted to evaluate the efficacy of hip protectors. Irrespective of any design flaws, the results of this particular clinical trial did not show that hip protectors reduced the occurrence of hip fractures in nursing home residents, and HipSaver has not alleged that Kiel inaccurately interpreted or reported the collected data. Given that thirteen studies had been published on the efficacy of hip protectors, more than one-half of which had demonstrated no statistically significant reduction in the number of hip fractures, the challenged statements did, in fact, “add to” or “confirm[ ]” a “growing body of evidence that hip protectors are not effective in nursing home populations.” This is not to say that Kiel's statements are the definitive word on the subject, or that the results of his clinical trial are scientifically conclusive. Nonetheless, HipSaver has failed to present evidence that would satisfy its burden of proving that the challenged statements by Kiel are false.[FN11]

b. Statements “of and concerning” the plaintiff.

Given that a cause of action for commercial disparagement typically seeks to recover damages for pecuniary loss resulting from false statements about a plaintiff's property, HipSaver has the burden of proving that the challenged statements were “of and concerning” HipSaver's product. Until now, this element has arisen in the context of a defamation claim. See Eyal v. Helen Broadcasting Corp., 411 Mass. 426, 429, 583 N.E.2d 228 (1991) (to succeed in defamation action, plaintiff must establish that alleged defamatory statement published by defendant was “of and concerning” plaintiff); New England Tractor–Trailer Training of Conn., Inc. v. Globe Newspaper Co., 395 Mass. 471, 474, 480 N.E.2d 1005 (1985); Driscoll v. Trustees of Milton Academy, 70 Mass.App.Ct. 285, 298, 873 N.E.2d 1177 (2007). See also Restatement (Second) of Torts § 613 & comment d (1977). However, the similarities between the two torts suggest that this element is equally relevant and essential to an action for commercial disparagement. See, e.g., QSP, Inc. v. Aetna Cas. & Sur. Co., 256 Conn. 343, 359–360, 773 A.2d 906 (2001) (treating commercial disparagement like defamation by requiring that alleged damaging statement be “of and concerning” plaintiff). As cogently articulated by the Supreme Court of California, “[t]he ‘of and concerning’ or specific reference requirement limits the right of action for injurious falsehood, granting it to those who are the direct object of criticism and denying it to those who merely complain of nonspecific statements that they believe cause them some hurt. To allow a plaintiff who is not identified, either expressly or by clear implication, to institute such an action poses an unjustifiable threat to society.” Blatty v. New York Times Co., 42 Cal.3d 1033, 1044, 232 Cal.Rptr. 542, 728 P.2d 1177 (1986), cert. denied, 485 U.S. 934, 108 S.Ct. 1107, 99 L.Ed.2d 268 (1988). For example, “the absence of the ‘of and concerning’ requirement ‘could invite any number of vexatious lawsuits and seriously interfere with public discussion of issues, or groups, which are in the public eye.’ ” Id., quoting Michigan United Conservation Clubs v. CBS News, 485 F.Supp. 893, 900 (W.D.Mich.1980), aff'd, 665 F.2d 110 (6th Cir.1981).

“In Massachusetts, the test whether [an alleged defamatory statement] is of and concerning the plaintiff is met by proving either (1) that the defendant intended the words to refer to the plaintiff and that they were so understood or (2) that persons could reasonably interpret the defendant's words to refer to the plaintiff and that the defendant was negligent in publishing them in such a way that they could be so understood.” ELM Med. Lab., Inc. v. RKO Gen., Inc., 403 Mass. 779, 785, 532 N.E.2d 675 (1989). See Eyal v. Helen Broadcasting Corp., supra at 430, 583 N.E.2d 228; New England Tractor–Trailer Training of Conn., Inc. v. Globe Newspaper Co., supra at 483, 480 N.E.2d 1005; Driscoll v. Trustees of Milton Academy, supra. We have said that “if the person is not referred to by name or in such manner as to be readily identifiable from the descriptive matter in the publication, extrinsic facts must be alleged and proved showing that a third person other than the person [defamed] understood it to refer to him.” Brauer v. Globe Newspaper Co., 351 Mass. 53, 56, 217 N.E.2d 736 (1966). Further, in those circumstances where the alleged defamatory statement is directed at a group, rather than a particular person, “an individual member of the defamed class cannot recover for defamation unless ‘the group or class is so small that the matter can reasonably be understood to refer to the member, or ... the circumstances of publication reasonably give rise to the conclusion that there is particular reference to the member.’ ” Eyal v. Helen Broadcasting Corp., supra at 430 n. 6, 583 N.E.2d 228, quoting Restatement (Second) of Torts, supra at § 564A.

Here, HipSaver was not mentioned in the JAMA article, and its product was not the one that was used in the clinical trial. At the time the article was published, the hip protector that was studied was not commercially available, unlike HipSaver's product. The article gave a lengthy, detailed description of the device that was used in the clinical trial, which was a one-sided hybrid hip protector comprised of a hard plastic sheath embedded in EVA foam. HipSaver always has marketed its product as being made entirely of soft pen cell foam, and has distinguished its product from those containing a hard shell. Additionally, HipSaver does not make a product that is designed to cover only one hip.

To the extent that the challenged statements referred to the inefficacy of “hip protectors” in general, this reference was insufficient to give rise to a conclusion that Kiel was specifically discussing HipSaver's product. Although HipSaver has alleged that it is the second largest manufacturer of hip protectors in the United States,[FN12] there are at least twenty-two other companies that make similar products. HipSaver has presented no affidavits from third parties prepared to testify that they understood the article as referring to or being about HipSaver and its product. During his deposition testimony on December 2, 2010, Edward L. Goodwin, the president and chief executive officer of HipSaver, stated that it was unlikely that the hip protector described in the article could be confused with HipSaver's product. Simply put, the article cannot be understood as referring to HipSaver, either expressly or by clear implication. We conclude that HipSaver has failed to present evidence that would satisfy its burden of proving that the challenged statements were “of and concerning” HipSaver's product.

c. Publication of the statements with knowledge of or reckless disregard for their falsity.

Next, HipSaver has the burden of proving that Kiel published the challenged statements with knowledge that they were false, or with reckless disregard for their truth or falsity. See Dulgarian v. Stone, 420 Mass. 843, 852, 652 N.E.2d 603 (1995).

This particular element of a cause of action for commercial disparagement mirrors what has been termed “actual malice” in the defamation context. “Actual malice” is proved by showing that a defendant published a defamatory statement[FN13] “with knowledge that it was false or with reckless disregard of whether it was false or not.” New York Times Co. v. Sullivan, 376 U.S. 254, 280, 84 S.Ct. 710, 11 L.Ed.2d 686 (1964) (New York Times). See King v. Globe Newspaper Co., 400 Mass. 705, 719, 512 N.E.2d 241 (1987), cert. denied, 485 U.S. 940, 108 S.Ct. 1121, 99 L.Ed.2d 281, and 485 U.S. 962, 108 S.Ct. 1227, 99 L.Ed.2d 427 (1988); Stone v. Essex County Newspapers, Inc., 367 Mass. 849, 867–868, 330 N.E.2d 161 (1975). “In the context of defamation, the term ‘actual malice’ does not mean the defendant's dislike of, hatred of, or ill will toward, the plaintiff.” Rotkiewicz v. Sadowsky, 431 Mass. 748, 755, 730 N.E.2d 282 (2000). See Old Dominion Branch No. 496, Nat'l Ass'n of Letter Carriers v. Austin, 418 U.S. 264, 281, 94 S.Ct. 2770, 41 L.Ed.2d 745 (1974) (ill will or bad motives not elements of actual malice as articulated in New York Times, supra ). “The inquiry is a subjective one as to the defendant's attitude toward the truth or falsity of the statement rather than the defendant's attitude toward the plaintiff.” Rotkiewicz v. Sadowsky, supra.

Expounding on the “reckless disregard” aspect of “actual malice,” the United States Supreme Court has said that “reckless conduct is not measured by whether a reasonably prudent man would have published or would have investigated before publishing. There must be sufficient evidence to permit the conclusion that the defendant in fact entertained serious doubts as to the truth of his publication. Publishing with such doubts shows reckless disregard for truth or falsity and demonstrates actual malice.” St. Amant v. Thompson, 390 U.S. 727, 731, 88 S.Ct. 1323, 20 L.Ed.2d 262 (1968). See Garrison v. Louisiana, 379 U.S. 64, 74, 85 S.Ct. 209, 13 L.Ed.2d 125 (1964) (defining “reckless disregard” as “high degree of awareness of ... probable falsity”). See also Murphy v. Boston Herald, Inc., 449 Mass. 42, 48, 865 N.E.2d 746 (2007), and cases cited.

In Vascular Solutions, Inc. v. Marine Polymer Techs., Inc., 590 F.3d 56, 59 (1st Cir.2009) (per curiam), the United States Court of Appeals for the First Circuit noted that “neither the Supreme Court nor this one has decided whether the First Amendment [to the United States Constitution] requires in product disparagement actions the actual malice standard of New York Times Co. v. Sullivan, [376 U.S. 254, 279–280, 84 S.Ct. 710, 11 L.Ed.2d 686 (1964) ].” The court pointed out that “[w]hether Massachusetts courts might independently read such a requirement into its common law cause of action is also unclear.” Id. In Dulgarian v. Stone, supra, this court, although not using the term “actual malice,” adopted the language of the Restatement (Second) of Torts, supra at § 623A, imposing liability for commercial disparagement where a defendant, inter alia, “knows that the statement is false or acts in reckless disregard of its truth or falsity.” Id. This is the applicable standard in a commercial disparagement case, mirroring the “actual malice” standard that has been employed in defamation cases. We see no need formally to adopt the term “actual malice” in this context because the standard as articulated by the Restatement (Second) of Torts, supra, is clear and precise as to what a plaintiff must prove in order to satisfy this element of a commercial disparagement claim.[FN14]

The focus of HipSaver's argument is not that Kiel knew that the challenged statements were false, in the sense that he fabricated the data. Rather, the thrust of HipSaver's argument is that because Kiel purportedly ignored or concealed evidence suggesting that the design of the clinical trial was flawed, he therefore published the challenged statements with reckless disregard for their truth or falsity.[FN15] We disagree.

At the outset, it is important to recognize the scientific oversight that was an integral part of the clinical trial and the subsequent JAMA article. The National Institutes of Health appointed a DSMB to review and secure its members' agreement on the design of the study, to approve the protocol for the clinical trial and the consent forms for participants, and to oversee the conduct of the trial. Four institutional review boards (three at clinical centers and one at a data coordinating center) also assessed the trial protocol and the consent forms to ensure that they satisfied guidelines established by the United States Department of Health and Human Services. As acknowledged in the article, twenty months after the commencement of the clinical trial, the DSMB recommended that it be terminated “due to lack of efficacy and the low probability of being able to demonstrate efficacy in the remaining years of the study.” The researchers involved with the trial then decided to submit an article for publication in JAMA, at which point the article underwent a seven-month peer review process. Where appropriate, the authors made changes to their draft of the article in response to the reviewers' comments and suggestions. Once this process had been completed, JAMA proceeded with publication.

As recognized by Kiel, and acknowledged by HipSaver, prior to this clinical trial, at least twelve studies had been published on hip protectors, and the results of those studies had varied, “some finding hip protectors useful and some finding they were not useful.” Given these conflicting results, Kiel decided to approach his study of hip protectors from a different perspective, designing a clinical trial to address perceived deficiencies and biases in earlier studies. It is generally understood that scientific research is not characterized by perfect theories, flawless studies, and desired results. Rather, the hallmarks of scientific research are continuous inquiry, testing, debate, disagreement, and revision. See generally Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 597, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993) (scientific conclusions “subject to perpetual revision”); Underwager v. Salter, 22 F.3d 730, 736 (7th Cir.), cert. denied, 513 U.S. 943, 115 S.Ct. 351, 130 L.Ed.2d 306 (1994) (“More papers, more discussion, better data, and more satisfactory models—not larger awards of damages—mark the path toward superior understanding of the world around us”); Freyd v. Whitfield, 972 F.Supp. 940, 945 (D.Md.1997) (“A rule requiring scientists and authors to guarantee the ‘truth’ of their hypotheses would inevitably lead to self-censorship and would stifle the very debate that leads to scientific knowledge”).

The challenged statements in the article reflected Kiel's interpretation of the accurately reported data of this particular clinical trial, as it was designed and conducted, including any perceived or actual flaws. That concerns may have been raised about the chosen design does not mean that Kiel entertained serious doubts about the truth of the challenged statements as they were a reflection of the achieved results. Kiel candidly discussed the underlying flaws in and limitations of the clinical trial when he included the following statements, among others, in the article: “[T]he pad we chose, while believed to be the best available at the time of the study based on biomechanical testing, may not have been good enough to prevent hip fractures.... Our study design, while overcoming potential biases ... does not completely generalize to the clinical setting where 2–sided hip protectors are used. Even adherence data for [one]–sided hip protector use may not be generalizable to the setting of [two]–sided hip protector use.... [W]e cannot exclude the possibility that having only [one] hip protected could have modified the propensity to fall to the protected side either because of the mechanical positioning of the pad or because of sensory cues from the pad that altered gait.” We conclude that HipSaver has not presented evidence that would satisfy its burden of proving that Kiel entertained serious doubts about the truth of the challenged statements such that he must be deemed to have published those statements with reckless disregard for their truth or falsity.[FN16]

d. Intent or likelihood that publication will result in pecuniary harm.

As to the next essential element of a cause of action for commercial disparagement, we have said that “[o]ne who publishes a false statement harmful to the interests of another is subject to liability for pecuniary loss resulting to the other if ... he intends for publication of the statement to result in harm to [the] interests of the other having a pecuniary value, or either recognizes or should recognize that it is likely to do so....” Dulgarian v. Stone, 420 Mass. 843, 852, 652 N.E.2d 603 (1995), quoting Restatement (Second) of Torts § 623A. See 3 D.B. Dobbs, P.T. Hayden, & E.M. Bublick, The Law of Torts § 658, at 622 (2d ed. 2011). The Restatement (Second) of Torts, supra at § 623A comment b, at 336, explains that “[t]he publisher ... should as a reasonable man recognize the likelihood that some third person will act in reliance upon his statement, or that it will otherwise cause harm to the pecuniary interests of the other because of the reliance.”

HipSaver contends that Kiel recognized, or should have recognized, that publication of the article was likely to result in pecuniary harm to HipSaver.[FN17] It points to two instances when Kiel purportedly revealed his understanding of the article's potential negative consequences for manufacturers of hip protectors, including HipSaver. First, the name of the particular device that was used in the clinical trial, a FallGard hip protector manufactured by Dr. Stanley L. Weiner, was removed from the article prior to its publication in July, 2007. On September 7, 2005, Wiener had sent an electronic mail message (e-mail) to Kiel in which he said that including the name of his product in the article “might lead us to be involved in costly litigation and loss of market share.” Second, on April 20, 2003, Goodwin sent an e-mail to Kiel in which he said, “From what I am hearing about Fall Guard in the nursing homes ... your study will be just another nail in the coffin of the hip protector product category.” In response, Kiel sent an e-mail to Goodwin in which he stated, “FallGard is superior to your untested product. You are the biggest scam artist. The nail will not be in any coffin but your own.” In HipSaver's view, these communications showed that Kiel recognized and understood that publication of the article likely would cause manufacturers of hip protectors, including HipSaver, pecuniary harm—third parties would rely on the information that was set forth in the article and, as a consequence, decide not to purchase hip protectors. We agree and conclude that, based on the import of these communications, HipSaver had a reasonable expectation of proving this essential element of its claim for commercial disparagement.

e. Special damages.

Finally, we turn to the last essential element of a cause of action for commercial disparagement. HipSaver has the burden of proving that it sustained “special damages” in the form of pecuniary loss as a result of the publication of the challenged statements.

Until now, this court has not had the opportunity to consider the “special damages” element of a claim for commercial disparagement. See Vascular Solutions, Inc. v. Marine Polymer Techs., Inc., 590 F.3d 56, 62 (1st Cir.2009) (pointing out that Massachusetts jurisprudence has not analyzed proof of special damages in commercial disparagement cases, but has followed Restatement with regard to other aspects of tort). It is generally acknowledged that special damages are an essential part of a cause of action for commercial disparagement, see W.L. Prosser & W.P. Keeton, Torts § 128, at 970–971 (5th ed. 1984), and “must always be proved” by the plaintiff. Restatement (Second) of Torts, supra at § 623A comment g, at 341. See Sharratt v. Housing Innovations, Inc., 365 Mass. 141, 148, 310 N.E.2d 343 (1974) (recovery in action alleging intentional falsehood pertaining to professional services is for “specific, actual and proven harm done to the plaintiff's economic interests”); Dooling v. Budget Publ. Co., 144 Mass. 258, 259, 10 N.E. 809 (1887) (“Words relating merely to the quality of articles made, produced, furnished, or sold by a person, though false and malicious, are not actionable without special damage”); Swan v. Tappan, 59 Mass. 104, 5 Cush. 104, 109 (1849). See also Restatement (Second) of Torts, supra at § 651(1)(h) & comment b, at 372–373 (burden of proof on plaintiff to show pecuniary loss resulting from publication). A plaintiff's recovery is limited to the “pecuniary loss that results directly and immediately from the effect of the conduct of third persons” acting in response to the alleged disparagement, and “the expense of measures reasonably necessary to counteract the publication.” Id. at § 633(1)(a), (b).

Typically, to establish special damages in a commercial disparagement action, a plaintiff must show, where feasible, a specific loss of sales to identifiable customers. See id. at § 633(2)(a) & comment c, at 355 (“pecuniary loss may be established by ... proof of the conduct of specific persons.... The most usual manner in which a third person's reliance upon disparaging matter causes pecuniary loss is by preventing a sale to a particular purchaser”); W.L. Prosser & W.P. Keeton, Torts, supra at § 128, at 972 (plaintiff ordinarily “must identify the particular purchasers who have refrained from dealing with him, and specify the transactions of which he claims to have been deprived”); 2 R.D. Sack, Defamation § 13:1.4[F], at 13–20 to 13–23 (4th ed. 2012). See also Amerinet, Inc. v. Xerox Corp., 972 F.2d 1483, 1503 (8th Cir.1992), cert. denied, 506 U.S. 1080, 113 S.Ct. 1048, 122 L.Ed.2d 356 (1993) (plaintiff's business disparagement claims do not survive summary judgment on special damages issue where “[t]he record contains no evidence of specific lost sales or of losses directly attributable to particular false statements by [the defendant]”); Fashion Boutique of Short Hills, Inc. v. Fendi USA, Inc., 75 F.Supp.2d 235, 239–241 (S.D.N.Y.1999), aff'd, 314 F.3d 48 (2d Cir.2002) (rejecting claim for commercial disparagement where plaintiff did not identify specific lost customers when possible to do so).[FN18] The Restatement (Second) of Torts, supra at § 633 comment g, at 356, explains that “[w]hen the loss of a specific sale is relied on to establish pecuniary loss, it must be proved that the publication was a substantial factor influencing the specific, identified purchaser in his decision not to buy.” The plaintiff's burden of proving specific lost sales “ensures that the actual pecuniary harm the tort is designed to remedy did, in fact, occur.” Vascular Solutions, Inc. v. Marine Polymer Techs., Inc., supra at 65 (Lipez, J., concurring in part and dissenting in part).

An exception to the requirement of specific lost sales has been recognized in circumstances where a false statement has been “widely disseminated,” and it would be impossible to identify particular customers who chose not to purchase a plaintiff's goods or services. See Restatement (Second) of Torts, supra at § 633(2)(b) (“pecuniary loss may be established by ... proof that the loss has resulted from the conduct of a number of persons whom it is impossible to identify”). A plaintiff's burden of proof with regard to widely disseminated commercial disparagement may be satisfied “by circumstantial evidence showing that the loss [of the market] has in fact occurred, and eliminating other causes.” Id. at § 633 comment h, at 357.

As explained in the Restatement (Second) of Torts, supra, “[w]idely disseminated [commercial disparagement] may ... cause serious and genuine pecuniary loss by affecting the conduct of a number of persons whom the plaintiff is unable to identify and so depriving him of a market that he would otherwise have found. When this can be shown with reasonable certainty, the rule requiring the identification of specific purchasers is relaxed and recovery is permitted for the loss of the market.” See Rite Aid Corp. v. Lake Shore Investors, 298 Md. 611, 625–626, 471 A.2d 735 (1984) (“Pecuniary loss may be established by proof of the conduct of specific persons, or proof that the loss has resulted from the conduct of a number of persons whom it is impossible to identify”). See also Fashion Boutique of Short Hills, Inc. v. Fendi USA, Inc., supra at 240–241 (where alleged disparaging statements made to nine identifiable customers, no evidence of widespread dissemination necessary to satisfy narrow exception to law of special damages); Charles Atlas, Ltd. v. Time–Life Books, Inc., 570 F.Supp. 150, 155–156 (S.D.N.Y.1983) (plaintiff need not identify specific lost customers where plaintiff sells product only through mail orders, rendering it virtually impossible to identify those who did not order product because of disparaging article). This exception “is most plainly applicable when disparaging remarks appear in a publication that is distributed to a general audience, leaving the plaintiff unable to identify specific customers who were lost or specific individuals who might have become customers, but did not, because of the negative information communicated by the defendant.” Vascular Solutions, Inc. v. Marine Polymer Techs., Inc., supra at 66 (Lipez, J., concurring in part and dissenting in part). See Charles Atlas, Ltd. v. Time–Life Books, Inc., supra.

“The widespread dissemination exception is rooted in principles of fairness, meant to accommodate plaintiffs who lack one-to-one contact with their own customers and are therefore unable to identify individual recipients of the defendant's message.” Vascular Solutions, Inc. v. Marine Polymer Techs., Inc., supra at 68 (Lipez, J., concurring in part and dissenting in part). We now recognize the “widespread dissemination” exception to the general rule that a plaintiff in a commercial disparagement action must prove a specific loss of sales to identifiable customers before the plaintiff can recover for pecuniary loss. Our recognition of this exception does not alter or eliminate the plaintiff's burden of establishing that the disparaging publication was the direct and immediate cause of the pecuniary loss. See Restatement (Second) of Torts, supra at §§ 633(1)(a), 651(1)(h).

HipSaver contends that, as the second largest manufacturer of hip protectors in the United States, it felt the full brunt of the words in the challenged statements that hip protectors “are not effective.” As a consequence, HipSaver suffered special damages because it lost sales and its annual revenues decreased as a result of the article's widespread dissemination, over the Internet and in print, to a large number of individuals who are impossible to identify. Further, HipSaver asserts that it incurred the expense of implementing measures that were reasonably necessary to counteract publication of the article, such as commencing this litigation and paying for advertising to mitigate the perceived harm.

We begin by pointing out that HipSaver has not elicited any information from its customers to determine whether their purchasing decisions were influenced by the article, and Goodwin has been unable to identify any existing or potential customers of HipSaver who decided not to do business with the company as a result of the article's publication. Therefore, because HipSaver has not shown a specific loss of sales to identifiable customers, we focus on the “widespread dissemination” exception to this requirement.

In light of the fact that the article appeared in the most widely circulated medical journal in the world, both in print and on the Internet, it cannot be disputed that there was widespread dissemination of the challenged statements. HipSaver claims that it has lost sales of over four million dollars since the publication of the article. This contention is predicated on the opinions of two experts, Dr. Robert A. Rosenthal, an economics professor, and Deborah M. Salvucci, a certified public accountant. In his answers to Kiel's interrogatories, Goodwin, on behalf of HipSaver, described the expected testimony from these experts. Based on their analyses of facts appearing in Federal income tax returns and sales-related data from records maintained by HipSaver, the experts were expected to testify that, due to a decline in sales revenues, HipSaver lost profits of $578,830 for the period from 2007 to 2009, and would lose profits of $3,716,625 for the period from 2010 to 2014. According to Goodwin, “[t]o determine lost net profits, [the] experts calculated lost revenues by employing the ‘before and after’ method, which invokes a comparison of HipSaver['s] performance” before and after publication of the article. Further, the experts identified five per cent and ten per cent as “reasonable estimates of projected rates of growth of revenues in the years succeeding 2006.” What is significant is that there is no opinion from these experts that such alleged lost profits are a direct and immediate result of the publication of the article, rather than any number of other factors that could have negatively affected the sales of HipSaver's product. In fact, Goodwin testified that no expert ever advised HipSaver that, in the expert's opinion, the publication of the article caused an adverse impact on HipSaver's sales.

Goodwin acknowledged that HipSaver had not examined whether there was any material change in the size of its customer base from before the publication of the article until after its publication. Nonetheless, Goodwin performed his own analysis of monthly sales from 2003 until approximately July of 2009, and he observed a decline in company sales beginning sometime in 2007. In Goodwin's view, it was “obvious” that this decline was attributable to the article because “[i]t's a well-known fact that clinical studies are a major asset to the value and sales of a company and if it's a negative clinical study that's published then it impacts negatively on the company as well.” However, Goodwin presented no evidence to substantiate this “well-known fact.” Prior to the publication of the article, at least twelve other studies had been published on the efficacy of hip protectors, some of which had been positive and others of which had been negative, but Goodwin did not analyze their particular impact on HipSaver's sales. Moreover, Goodwin did not know whether any of HipSaver's competitors had experienced a material change in the size of its customer base as a consequence of the publication of the article, thereby suggesting a causal relationship between the publication of the article and the over-all sales of hip protectors. Goodwin was not aware of any studies on the impact of the article on HipSaver's competitors.

Even assuming that Goodwin's “well-known fact” is true, he has not eliminated other causes for HipSaver's pecuniary loss. Several years prior to the publication of the article, in 2004 and 2005, HipSaver had sued its largest competitor, J.T. Posey Company (Posey), for false advertising in which Posey essentially had asserted that “HipSaver was no good and Posey was great.” Goodwin testified that although HipSaver lost customers as a result of Posey's false advertising, the negative impact on its sales had ended by September, 2005, long before the publication of the article in July, 2007. At the same time, Goodwin acknowledged that, by the end of 2005, HipSaver had been “completely frozen out of every private sector nursing home and health care facility chain and every private distribution chain.” Further, by January of 2007, HipSaver had been “frozen out of all the major catalog distributors and resellers of hip protectors,” and still had “no ability to access the private health care distribution and facility chains.” Based on this evidence, HipSaver has not eliminated the impact of the false advertising by Posey as a cause of its lost sales after publication of the article.[FN19]

In sum, HipSaver had the burden of proving that, as a direct and immediate consequence of the widespread dissemination of the challenged statements, it suffered pecuniary loss that was not attributable to other causes. We conclude that HipSaver has not presented evidence to demonstrate that it had a reasonable expectation of satisfying this burden of proof. It has not established that its purported pecuniary loss necessarily resulted from the publication of the article.[FN20]

4. Conclusion.

HipSaver has failed to demonstrate that it had a reasonable expectation of proving all the essential elements of a cause of action for commercial disparagement. Accordingly, the decision and order of the Superior Court judge granting summary judgment to Kiel is affirmed.

So ordered.

Footnotes

[FN1] The tort of “commercial disparagement” also is known as “injurious falsehood,” “disparagement of property,” “slander of goods,” and “trade libel.” First Act Inc. v. Brook Mays Music Co., 429 F.Supp.2d 429, 432 n. 1 (D.Mass.2006). For purposes of this decision, we use the terms “commercial disparagement” and “injurious falsehood” interchangeably.

[FN2] HipSaver sued only Kiel because, as lead author, he assumed full responsibility for the integrity of the clinical trial and the accuracy of the data.

[FN3] We acknowledge the amicus brief submitted by Massachusetts General Hospital, Brigham and Women's Hospital, McLean Hospital, Spaulding Rehabilitation Hospital, Dana–Farber Cancer Institute, Boston Medical Center, and Massachusetts Eye and Ear Infirmary.

[FN4] According to HipSaver, a “hip protector” provides padding to both hips, and there are no “one-sided” hip protectors on the market. For the sake of simplicity, we shall refer to the one-sided device that was studied in the clinical trial as a “hip protector,” recognizing that such a device has not been designed for single hip usage.

[FN5] We shall refer to these quoted statements from the conclusion of the article and the related abstract, which are the basis of HipSaver's claim for commercial disparagement, as the “challenged statements.”

[FN6] The line between commercial disparagement and defamation often is difficult to draw. See generally 2 R.D. Sack, Defamation § 13:1.4[A], at 13–10 (4th ed. 2012). “The two causes [of action] may merge when a disparaging statement about a product reflects on the reputation of the business that made, distributed, or sold it. If, for example, a statement about the poor quality of a product implies that the seller is fraudulent, then the statement may be actionable under both theories.... [However, c]ourts generally are reluctant to impute a lack of integrity to a corporation merely from a criticism of its product.” Dairy Stores, Inc. v. Sentinel Publ. Co., 104 N.J. 125, 133–134, 516 A.2d 220 (1986). See W.L. Prosser & W.P. Keeton, Torts § 128, at 965 (5th ed. 1984) (“defamation is found only where the imputation fairly implied is that the plaintiff is dishonest or lacking in integrity, or that he is deliberately perpetrating a fraud upon the public by selling a product which he knows to be defective”).

[FN7] Notwithstanding many similarities between the torts of commercial disparagement and defamation, it has been recognized that “[f]rom the beginning, more stringent requirements were imposed upon the plaintiff seeking to recover for [commercial disparagement] in three important respects—falsity of the statement, fault of the defendant and proof of damage.” Restatement (Second) of Torts § 623A comment g, at 341 (1977). See 2 R.D. Sack, Defamation, supra at § 13:1.4[A], at 13–9. For purposes of this opinion, we need not elaborate at length on these particular distinctions, other than to note that as the common law of defamation has become infused with principles of the First Amendment to the United States Constitution, these distinctions have narrowed. See Restatement (Second) of Torts, supra. See also Dairy Stores, Inc. v. Sentinel Publ. Co., supra at 134–135, 516 A.2d 220.

[FN8] HipSaver's contention that the design of the clinical trial was flawed was predicated on the opinions of two experts, Dr. Vivian K. Dullien, a management consultant to the health care industry and quality engineer for clinical studies, and Dr. Paul J. Lupinacci, a statistician with experience designing clinical trials. Dullien was expected to testify that the purported results of the clinical trial were invalid because of, among other things, “the flawed design; a high degree of noncompliance, with the authors failing to account for a clear disposition of all patients enrolled; and the insufficiency of the results based upon actual compliance.” In Dullien's opinion, “[t]he rate of fractures to the padded as opposed to the unpadded [hip] invalidated the study design.” Lupinacci was expected to testify that Kiel improperly and erroneously “extrapolat[ed his clinical results] from the resident population under study (residents using a 1–sided hip pad) to all resident populations (residents wearing hip protectors, which are designed to pad both hips).... The authors could not properly generalize their findings without determining whether placing padding to a single hip would cause additional instability on an aging, posturally [un]stable population.”

[FN9] Kiel stated that, as of the date of the JAMA article (July 25, 2007), the results of thirteen randomized controlled trials had been published. Eight of those thirteen studies, including Kiel's clinical trial, “did not demonstrate a statistically significant reduction in hip fracture incidence” due to the use of hip protectors. In contrast, Kiel continued, data from the other studies “indicated that for residents in institutional care, where hip fracture rates are high, hip protectors appeared to reduce the incidence of hip fractures.”

[FN10] According to Kiel, “[a]n efficacy study uses all available means to test an intervention even if some of these would not be practical in the real world setting. An efficacy study sets out to determine if, under ideal conditions, success would be possible. An effectiveness study, in contrast, tests an intervention under real-world conditions to see if it is effective.”

[FN11] Given our conclusion that HipSaver has not satisfied its burden of proving that the challenged statements are false, we need not also decide whether those statements constituted “fact,” “opinion,” or a combination of both. See Restatement (Second) of Torts § 623A comment e, at 340 (1977) ( “The common law rule has been that the injurious statement might be one of fact or one of opinion”). In the defamation context, an expression of “pure opinion” is not actionable. King v. Globe Newspaper Co., 400 Mass. 705, 708, 512 N.E.2d 241 (1987), cert. denied, 485 U.S. 940, 108 S.Ct. 1121, 99 L.Ed.2d 281, and 485 U.S. 962, 108 S.Ct. 1227, 99 L.Ed.2d 427 (1988). See Gertz v. Robert Welch, Inc., 418 U.S. 323, 339–340, 94 S.Ct. 2997, 41 L.Ed.2d 789 (1974) (“Under the First Amendment there is no such thing as a false idea. However pernicious an opinion may seem, we depend for its correction not on the conscience of judges and juries but on the competition of other ideas”). Similarly, the expression of an opinion based on disclosed, nondefamatory facts is not sufficient to establish a defamation claim. See Howell v. Enterprise Publ. Co., 455 Mass. 641, 671, 920 N.E.2d 1 (2010); Lyons v. Globe Newspaper Co., 415 Mass. 258, 262, 612 N.E.2d 1158 (1993). However, “[a] statement cast in the form of an opinion may imply the existence of undisclosed defamatory facts on which the opinion purports to be based, and thus may be actionable.” King v. Globe Newspaper Co., supra at 713, 512 N.E.2d 241. See Driscoll v. Trustees of Milton Academy, 70 Mass.App.Ct. 285, 297, 873 N.E.2d 1177 (2007). See also Restatement (Second) of Torts, supra at § 566. The question whether the same analysis would apply in the commercial disparagement context is left for another day. See W.L. Prosser & W.P. Keeton, Torts, supra at § 128, at 967 (“It is not entirely clear whether the requirement of a ‘false’ statement excludes liability for mere opinions that imply no misstatement of objectively verifiable fact”).

[FN12] During his deposition testimony on November 24, 2009, Edward L. Goodwin, the president and chief executive officer of HipSaver, stated that HipSaver's largest domestic competitor was J.T. Posey Company, which was approximately twelve times larger than HipSaver. Goodwin estimated that J.T. Posey's share of the domestic market for hip protectors was approximately fifty per cent, whereas HipSaver's share of the same market was approximately thirty-five per cent.

[FN13] “A communication is defamatory if it tends so to harm the reputation of another as to lower him in the estimation of the community or to deter third persons from associating or dealing with him.” Ravnikar v. Bogojavlensky, 438 Mass. 627, 630, 782 N.E.2d 508 (2003), quoting Restatement (Second) of Torts § 559 (1977). “The test whether a publication is defamatory is whether, in the circumstances, the writing discredits the plaintiff ‘in the minds of any considerable and respectable segment in the community.’ ” Draghetti v. Chmielewski, 416 Mass. 808, 811, 626 N.E.2d 862 (1994), quoting Tropeano v. Atlantic Monthly Co., 379 Mass. 745, 751, 400 N.E.2d 847 (1980).

[FN14] In the defamation context, a plaintiff who is shown to be a public official or public figure must prove “actual malice” in order to recover for defamation. See New York Times Co. v. Sullivan, 376 U.S. 254, 279–280, 84 S.Ct. 710, 11 L.Ed.2d 686 (1964). See also Murphy v. Boston Herald, Inc., 449 Mass. 42, 48, 865 N.E.2d 746 (2007); Stone v. Essex County Newspapers, Inc., 367 Mass. 849, 867, 330 N.E.2d 161 (1975); Restatement (Second) of Torts, supra at § 580A. By contrast, a plaintiff who is deemed to be a private figure may recover for defamation by proving the negligent publication of a defamatory falsehood. See Gertz v. Robert Welch, Inc., 418 U.S. 323, 347, 94 S.Ct. 2997, 41 L.Ed.2d 789 (1974). See also Jones v. Taibbi, 400 Mass. 786, 797–799, 512 N.E.2d 260 (1987); Reilly v. Associated Press, 59 Mass.App.Ct. 764, 769 n. 3, 797 N.E.2d 1204 (2003); Restatement (Second) of Torts, supra at § 580B. In Flotech, Inc. v. E.I. Du Pont de Nemours Co., 627 F.Supp. 358, 365 (D.Mass.1985), aff'd, 814 F.2d 775 (1st Cir.1987), the court stated that the elements of the First Amendment's “public figure” doctrine (that is to say, proof of “actual malice”) were equally applicable to a commercial disparagement action. See First Act Inc. v. Brook Mays Music Co., 429 F.Supp.2d 429, 432–433 (D.Mass.2006).

Here, the motion judge determined that HipSaver was a limited public figure for purposes of this case because it had directly injected itself into the debate over the efficacy of hip protectors by advertising its product and sponsoring its own research. See Bowman v. Heller, 420 Mass. 517, 522, 651 N.E.2d 369, cert. denied, 516 U.S. 1032, 116 S.Ct. 682, 133 L.Ed.2d 530 (1995) (whether plaintiff is public figure is question of law). See also Gertz v. Robert Welch, Inc., supra at 345, 94 S.Ct. 2997 (describing three classes of public figures); Bruno & Stillman, Inc. v. Globe Newspaper Co., 633 F.2d 583, 588 (1st Cir.1980). Because HipSaver has not challenged this determination, we take it as conclusive. More broadly, in light of our adoption of the language of the Restatement (Second) of Torts, supra at § 623A, a plaintiff in a commercial disparagement action must show that a defendant “knows that the statement is false or acts in reckless disregard of its truth or falsity,” irrespective of whether the plaintiff is a public or private figure. Id.

[FN15] More specifically, HipSaver has alleged, among other things, that Kiel ignored or failed to disclose information suggesting that the use of a one-sided hip protector in the clinical trial may have caused participants to fall more frequently on the side with the padded hip, that such an outcome raised ethical concerns, and that this perceived design flaw skewed the results of the clinical trial on which the challenged statements were based.

[FN16] We comment briefly on two other arguments presented by HipSaver. First, HipSaver has asserted that because Kiel failed to disclose in the research grant application his financial ties to pharmaceutical companies that manufacture drugs to promote bone density, which purportedly gave rise to a conflict of interest, he must have published the challenged statements with reckless disregard for their truth or falsity. However, HipSaver has not presented any evidence either to show that bone density drugs compete with hip protectors in the marketplace, or to prove that Kiel's research on such drugs biased or otherwise impacted his ability to conduct a clinical trial on hip protectors. Moreover, the clinical trial was not a study on the efficacy of hip protectors as compared to the efficacy of bone density drugs in reducing the incidences of hip fractures in nursing home residents.

Second, HipSaver has asserted that when Kiel responded to an electronic mail message from Goodwin on April 20, 2003, and accused Goodwin of being a “scam artist,” it highlighted Kiel's readiness to make statements without any factual foundation. Although this intemperate personal comment may have reflected Kiel's dislike for Goodwin, it was not evidence of Kiel's attitude toward the truth or falsity of the challenged statements.

[FN17] Kiel has not addressed this element of a commercial disparagement claim.

[FN18] We are aware that a more “modern view” has been recognized in some jurisdictions. This view permits a plaintiff, who can show neither a loss of specific sales nor a widespread dissemination of a false disparaging statement, to prove special damages by showing that he has suffered a general decline in business or lost growth opportunity, also described as the loss of a present or prospective advantage. See Advanced Training Sys., Inc. v. Caswell Equip. Co., 352 N.W.2d 1, 7–8 (Minn.1984); Patel v. Soriano, 369 N.J.Super. 192, 248, 848 A.2d 803 (App.Div.2004). See also Porous Media Corp. v. Pall Corp., 110 F.3d 1329, 1339 (8th Cir.1997). Such a plaintiff must eliminate other possible explanations for the decline, leaving only the defendant's statements to third parties as the reason for the loss. See Advanced Training Sys., Inc. v. Caswell Equip. Co., supra. See also Amerinet, Inc. v. Xerox Corp., 972 F.2d 1483, 1503–1504 (8th Cir.1992), cert. denied, 506 U.S. 1080, 113 S.Ct. 1048, 122 L.Ed.2d 356 (1993); Patel v. Soriano, supra at 249, 848 A.2d 803. This approach has not been espoused in the Restatement (Second) of Torts, supra at § 633. In the circumstances of this case, where HipSaver has not satisfied other essential elements of its cause of action for commercial disparagement, we leave for another day the issue whether this method for determining special damages should be added to our jurisprudence.

[FN19] Goodwin also pointed to a change in Medicare's reimbursement policies to substantiate HipSaver's claim that its loss of sales was attributed to the publication of the article. Beginning around October, 2008, the Medicare program stopped reimbursing acute care hospitals for medical care associated with hip fractures sustained by their patients. HipSaver expected that these hospitals would purchase its hip protectors as a means of preventing hip fractures among their patients and avoiding substantial medical costs that no longer would be reimbursed. Whether the change in Medicare's reimbursement policies would have led to a growth in sales for HipSaver's product is wholly speculative.

[FN20] Although a plaintiff in a commercial disparagement action may recover “the expense of measures reasonably necessary to counteract the publication,” Restatement (Second) of Torts § 633(1)(b) (1977), the plaintiff first must prove all the essential elements of the tort. See Advanced Training Sys., Inc. v. Caswell Equip. Co., 352 N.W.2d 1, 8 (Minn.1984) (“Efforts to mitigate damages in tort are not compensable unless plaintiff proves a tort, and where special damages are an essential element of plaintiff's action, they must be proved before mitigation expenses may be considered”). Because HipSaver has not done that here, it is not entitled to recover mitigation expenses.