WORLD COLOR PRESS, INC., d/b/a CROSSROADS PRESS
OSHRC Docket No. 76-2005
Occupational Safety and Health Review Commission
November 15, 1977
[*1]
Before CLEARY, Chairman; and BARNAKO, Commissioner.
COUNSEL:
Baruch A. Fellner, Office of the Solicitor, USDOL
Herman Grant Regional Solicitor
Michael D. Freeborn, for the employer
OPINION:
DECISION
BY THE COMMISSION:
In this case, the Commission members are divided on whether the Judge erred in his disposition. In order to fulfill the statutory purpose of expeditious adjudication, however, and in light of the absence of a third member since April 28, 1977, the members agree to resolve their impasse by affirming the Judge's order. The Judge's decision nonetheless is accorded only the precedential value of an unreviewed Judge's decision because of the disagreement between the members. See Life Science Products Co., No. 14910 (November 11, 1977). The individual views of the members are stated separately below.
Accordingly, the Judge's order is affirmed.
BARNAKO, Commissioner:
World Color prints popular magazines at its plant in Effingham, Illinois. On April 12, 1976, the Secretary, following an inspection of the plant by three OSHA compliance officers, n1 issued World Color a nonserious citation alleging violations of 29 C.F.R. 1910.95(b)(1) and (b)(3). n2 Specifically, the citation [*2] charged World Color with a failure to provide feasible administrative or engineering controls where noise levels exceeded permissible levels and a failure to administer an effective hearing conservation program.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n1 Section 8(a) of the Occupational Safety and Health Act of 1970 authorizes the Secretary to inspect work areas for violations of the Act, 29 U.S.C. 651 et seq.
n2 Section 1910.95(b)(1) states:
When employees are subjected to sound exceeding those listed in Table G-16, feasible administrative or engineering controls shall be utilized. If such controls fail to reduce sound levels within the levels of Table G-16, personal protective equipment shall be provided and used to reduce sound levels within the levels of the table.
Table G-16 entitled "Permissible Noise Exposures" includes the following:
|
|
Sound level dBA |
|
Duration per day, hours |
slow response |
|
8 |
90 |
|
6 |
92 |
|
4 |
95 |
|
3 |
97 |
|
2 |
100 |
|
1 1/2 |
102 |
|
1 |
105 |
|
1/2 |
110 |
|
1/4 |
115 |
Section 1910.95(b)(3) states:
In all cases where the sound levels exceed the values shown herein, a continuing, effective hearing conservation program shall be administered.
[*3]
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
World Color contested the citation, and on May 25, 1976, the Secretary filed a complaint seeking affirmance only of the Section 1910.95(b)(1) charge. On September 3, 1976, pursuant to Rules 34 and 37 of the Federal Rules of Civil Procedure, the Secretary filed a motion to require World Color to permit entry of an "outside" expert in acoustical engineering, i.e., an expert not employed by the Federal government. n3 The stated purpose of the inspection was to discover further facts regarding the feasibility of implementing engineering controls to reduce allegedly excessive noise levels in the press room. World Color opposed the Secretary's motion essentially on the grounds that entry by outside consultants would endanger the confidentiality of World Color's trade secrets.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n3 The Commission's rules of procedure do not cover discovery by entry upon land, and the discovery rules of the Federal Rules of Civil Procedure therefore apply. 29 C.F.R. 2200.2(b). See Reynolds Metals Co., 3 BNA 1749, 1975-76 CCH OSHD para. 20,214 (No. 4385, 1975). Fed. R. Civ. P. 34, in pertinent part, states:
(a) Scope. Any party may serve on any other party a request . . . to permit entry upon designated land or other property in possession or control of the party upon whom the request is served for the purpose of inspection and measuring, surveying, photographing, testing, or sampling the property or any designated object or operation thereon. . . .
Fed. R. Civ. P. 37, in pertinent part, states:
(a) Motion for Order Compelling Discovery. . . . (2) Motion. . . . if a party, in response to a request for inspection submitted under Rule 34, fails to respond that inspection will be permitted as requested, the discovering party may move for . . . an order compelling inspection in accordance with the request.
[*4]
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
At a pretrial conference on October 14, 1976, Judge Wienman granted the Secretary's motion for entry but limited entry and inspection to federal employees subject to the provisions of 18 U.S.C. 1905. n4 Nevertheless, in a related action the Secretary, on January 25, 1977, filed a motion for leave to serve World Color with interrogatories relating to the extent and validity of its trade secrete claim.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n4 18 U.S.C. 1905 provides for criminal sanctions for any federal employee who makes unauthorized disclosures of trade secrets he learns of in the course of his employment.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
The Secretary also filed a Statement of Position in which he claimed an inability to proceed because the federal employee restriction prevented him from securing a qualified noise expert, and this restriction so severely prejudiced him that no useful purpose would be served by having the case proceed to trial.
Judge Wienman, in response to the Secretary's Statement of [*5] Position, ordered a separate hearing on four specific discovery issues, including whether inspection of World Color's workplace was likely to reveal the existence of trade secrets. Three weeks prior to the hearing the Judge denied the Secretary's motion for leave to serve interrogatories on the grounds that the information sought was not relevant to the subject matter of the case nor reasonably calculated to lead to the discovery of admissible evidence. He ruled that, to the contrary, the information the Secretary sought was relevant only to the ancillary procedural matter of whether World Color was entitled to a limited protective order. For the same reasons, at the hearing the Judge quashed the Secretary's subpoena for documents relating to trade secrets.
Following the hearing, Judge Wienman issued an order in which he found that a discovery inspection of World Color's plant was likely to reveal the existence of trade secrets, and that record failed to show good cause for the Secretary to employ nonfederal experts in a discovery inspection of World Color's workplace. The Judge further declined to modify his October 14, 1976 restrictive order, and in light of the Secretary's [*6] Statement of Position, dismissed the complaint and vacated the citation. Chairman Cleary granted the Secretary's petition for review, and both Commission members granted World Color's motion for an expedited proceeding. n5
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n5 Rule 101(a) of the Commission's Rules of Procedure states:
Upon application of any party or intervenor, or upon his own motion, any Commissioner may order an expedited proceeding.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
On review the Secretary contends that Judge Wienman abused his discretion in denying the Secretary's motion for leave to serve interrogatories and in quashing a subpoena, both of which were attempts to obtain discovery regarding World Color's trade secret claim. He argues that these rulings denied him a meaningful opportunity to try the issue and were inconsistent with the Judge's ordering a hearing on whether an inspection was likely to reveal trade secrets.
The thrust of the Secretary's argument on review, however, is that the Commission wrongly decided Reynolds Metals Co., 3 BNA OSHC 1749, 1975-76 CCH OSHD [*7] para. 20,214 (No. 4385, 1975). The Secretary admits, however, that, in limiting inspection to federal employees, Judge Wienman was constrained by the Reynolds decision.
In Reynolds the Secretary sought entry by outside experts into Reynolds' plant for the purpose of discovering facts regarding whether feasible engineering controls existed to reduce noise in Reynolds' facility. Reynolds objected on several grounds, including that such a procedure would endanger the confidentiality of its trade secrets. In the lead opinion, I noted that a resolution of the issue required the Commission to balance the Secretary's need to inspect Reynolds' plant against the latter's legitimate interest in preserving the secrecy of its processes. I concluded that while the Secretary was entitled to discovery, he should be restricted to the use of federal experts because he had not shown good cause why it was necessary to use outside experts. n6 In doing so I believed that the Secretary could locate a qualified federal expert in noise control who, as a federal employee, would be subject to the sanctions of 18 U.S.C. 1905 for the unlawful disclosure of confidential information. The case was [*8] than remanded for further proceedings. n7
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n6 Former Commissioner Moran, in a concurring opinion, stated that he agreed to an order of remand, allowing the Secretary to use a federal employee to conduct a discovery inspection, in order to enable the Commission to enter a majority ruling. He also stated, however, that when the Secretary issues a citation following an inspection of a workplace, he should not be permitted to make a further discovery inspection without showing that the citation was issued as a result of an adequate first inspection. Thus, he took a more restrictive view of the Secretary's right to conduct a discovery inspection than was expressed in the lead opinion.
n7 Following the remand in Reynolds the Secretary conducted a search of federal agencies for a qualified noise expert and reported to the judge that he could find no available federal expert equivalent in education and experience to the average outside expert he previously used. The judge refused to vacate his order limiting entry to a federal employee, and dismissed the case upon the Secretary's contention that he was therefore unable to proceed. The Commission directed review on the issue of whether the judge, constrained by precedent, erred in sustaining a claim of privilege on a mere allegation of trade secrets and in restricting the Secretary to a federal expert.
[*9]
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
The Secretary contends that he should be permitted, as a matter of right, to have an outside expert conduct the discovery inspection. He asserts that the confidentiality of any privileged information revealed to an outside expert can be adequately safeguarded through the use of protective orders and independent judicial remedies. Finally, he states that the federal expert restriction has drastically hampered his ability to enforce critical health and safety standards.
I would affirm the Judge's decision on the basis of Reynolds Metals Co., supra. The Secretary raises here essentially the same arguments that were rejected in Reynolds.
As a threshold matter, whether trade secrets exist is a factual determination, and Judge Wienman made such a finding following a hearing on the issue. Although the Secretary, in his petition for discretionary review, took exception to this finding on the basis that World Color had "waived any claim of the existence of trade secrets by its prior failure to take measures to protect such 'secrets'," he did not cite any evidence or authority in support of this [*10] assertion and does not pursue the matter in his brief. In any event, the Judge's finding that World Color had trade secrets to protect is amply supported by the record.
Moreover, unlike Reynolds, the Secretary has not made a serious attempt to locate a federal noise expert with particular expertise regarding noise control in printing facilities. Instead, the Secretary relies on the survey he made of federal agencies in Reynolds. Therefore, the Secretary has not shown good cause why it is necessary to use an outside expert to conduct an inspection.
I also reject the Secretary's contention, also raised in Reynolds, that assuming trade secrets exist, they are adequately protected by a protective order prohibiting unauthorized disclosure by the Secretary's expert. A protective order cannot provide for criminal sanctions for violations of the order; a federal employee is subject to criminal sanctions for the unlawful disclosure of confidential information. Supra note 4. Moreover, the Commission has no contempt power with which to enforce a protective order.
Finally, I do not reach the question whether the Judge erred in denying the Secretary's request for further discovery [*11] on the trade secrets issue. The Secretary, although claiming the Judge abused his discretion in this regard, does not request that the Commission remand to allow further discovery on the issue. Rather, he alludes to the denial in arguing for the reversal of Reynolds.
CLEARY, Chairman:
The Judge's decision and order should be reversed and the case remanded for three primary reasons: member Barnako's opinion in Reynolds Metals Corp., supra 1, on which the Judge relied, is fundamentally incorrect; the Judge abused his discretion in not granting the Secretary's motion to propound a set of interrogatories related to respondent's trade secret claim; and the Judge's decision is not adequately supported by findings of fact.
I. REYNOLDS METALS CORP. WAS DECIDED INCORRECTLY
In Reynolds Metals Corp., supra, member Barnako stated that a discovery inspection may be conducted only by federal government employees when an employer asserts that trade secrets may be revealed to the inspector, unless the Secretary can show "good cause" for using an outside (non-federal employee) expert. What is meant by "good cause" is not specifically explained in the opinion, but it includes [*12] at least a showing that the Secretary is unable to locate an expert among employees working for federal agencies that deal with noise control. I dissented from that opinion, and for additional reasons I disagree with the application of the opinion to the facts of this case. As I said in General Electric Company, 75 OSAHRC 50/A2, 3 BNA OSHC 1031, 1074-75 CCH OSHD para. 19,567 (No. 2739, 1975), reversed on other grounds, 540 F.2d 67 (2d Cir. 1976):
Stare decisis is a principle of policy and not a mechanical formula of adherence to the latest decision when adherence involves collision with an approach that is intrinsically sounder and verified by experience.
With the adoption of the discovery rules, Federal Rules of Civil Procedure, Rules 26 through 37, Title 28 of the U.S. Code, the previous "sporting" theory of litigation was replaced with the theory that each party's access to information held by the other party would result in greater justice by fostering better presentation of facts and more soundly reasoned arguments. In keeping with this approach, the discovery rules have been interpreted liberally to permit broad discovery. See generally 8 Wright [*13] and Miller, Federal Practice and Procedure: Civil § 2201 (1970). The Commission has applied the Federal Rules of Civil Procedure except when a different rule has been adopted specifically by the Commission. See footnote 3 infra. This is what the Act requires. 29 U.S.C. § 661(f). n1 No different rule of the Commission replaces the Federal Rules dealing with on-site discovery inspections, although rules relating to depositions, interrogatories, requests for admissions, and subpoenas have been adopted. 29 CFR Part 2200, Subpart D.
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n1 Rule 2(b) provides:
In the absence of a specific provision, procedure shall be in accordance with the Federal Rules of Civil Procedure.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
Rules 26 n2 and 34 n3 create an integrated scheme governing, among other things, a party's right to enter upon the land of another party to inspect, test, and sample matter. Generally, if the information sought is unprivileged and relevant to the subject of the proceeding, it is discoverable. Fed. R. Civ. P. 26(b); See e.g., In re [*14] Penn Central Commercial Paper Litigation, 61 FRD 453 (1973). Amendments in 1970 eased the burden of the party seeking to enter the land of another by eliminating the requirement of showing "good cause" for entry primarily because of the difficulty of defining and applying the concept. Fed. R. Civ. P. 34, 28 U.S.C. Rule 34 (Notes of Advisory Committee on Rules, Subdivision (a)). This, of course, does not necessarily mean that unrestricted entry is permitted upon a showing that the information sought is relevant and necessary. Upon a showing of good cause, as set out in Rule 26(c), by a party seeking to restrict the scope and/or manner of discovery, a Judge may issue a protective order. In keeping with the goal of assuring broad discovery, a particularized, factual showing is required in part so that any protective order issued by the Judge will be no more restrictive than necessary. See, e.g., Neonex Intern. Limited v. Norris Grain Co., 338 F.Supp. 845, 853-4 (D.C. N.Y. 1972).
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n2 The pertinent part of Rule 26 for our purposes is subsection (c)(7), which provides:
Rule 26. GENERAL PROVISIONS GOVERNING DISCOVERY.
* * *
(c) Protective orders. Upon motion by a party or by the person from whom discovery is sought, and for good cause shown, the court in which the action is pending or alternatively, on matters relating to a disposition, the court in the district where the deposition is to be taken may make any order which justice requires to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the following: . . . (7) that a trade secret or other confidential research, development, or commercial information not be disclosed or be disclosed only in a designated way . . .
If the motion for a protective order is denied in whole or in part, the court may, on such terms and conditions as are just, order that any party or person provide or permit discovery.
n3 The pertinent parts of Rule 34 are subsections (a) and (b), which provide:
RULE 34. PRODUCTION OF DOCUMENTS AND THINGS AND ENTRY UPON LAND FOR INSPECTION AND OTHER PURPOSES
(a) Scope. Any party may serve on any other party a request (1) to produce and permit the party making the request, or someone acting on his behalf, to inspect and copy, any designated documents (including writings, drawings, graphs, charts, photographs, phono-records, and other data compilations from which information can be obtained, translated, if necessary, by the respondent through detection devices into reasonably usable form), or to inspect and copy, test, or sample any tangible things which constitute or contain matters within the scope of Rule 26(b) and which are in the possession, custody or control of the party upon whom the request is served; or (2) to permit entry upon designated land or other property in the possession or control of the party upon whom the request is served for the purpose of inspection and measuring, surveying, photographing, testing, or sampling the property or any designated object or operation thereon, within the scope of Rule 26(b).
(b) Procedure. The request may, without leave of court, be served upon the plaintiff after commencement of the action and upon any other party with or after service of the summons and complaint upon that party.
[*15]
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
The burden on the party seeking to restrict a discovery inspection on the ground that it will reveal trade secrets is three-fold. The existence of a trade secret must be established. see, e.g., Singer Mfg. Co. v. Brother International Corp., 191 F.Supp. 322 (D.C. N.Y. 1960). The party must also prove that the secret is likely to be uncovered by the expert if discovery is conducted. Johnson Foils Inc. v. Huyck Corp., 61 F.R.D. 405, 409-410 (1969). The party seeking a protective order must also show that the secrets may be revealed to those who may use the secrets to the financial detriment of the party. U.S. v. International Business Machine Corp., 67 F.R.D. 40 (D.C. N.Y. 1975). If this burden is met, a Judge must determine the scope of a protective order by accommodating and balancing the conflicting interests of the parties. See Carter Products, Inc. v. Eversharp, Inc., 360 F.2d 868 (7th Cir. 1966).
I suggest that member Barnako's opinion in Reynolds Metals Corp., supra, and the Judge's decision under review that relies upon it are in conflict with the liberal [*16] construction to be accorded federal discovery rules. For instance, as I noted in my dissent in Reynolds, Mr. Barnako would create presumptions on matters about which the discovery rules require specific findings of fact. For instance, neither in Reynolds nor in this case has a finding been made that the asserted trade secrets may be divulged to competitors of the parties seeking to restrict discovery. In the instant case, Judge Wienman found only that
[a] discovery inspection of Respondent's workplace at Route 45 South, Effingham, Illinois, is likely to reveal the existence of trade secrets to persons conducting said inspection.
Protective orders often include provisions that protect the confidentiality of trade secrets while permitting discovery, for example by restricting the use of trade secrets to the litigation in which the secrets are disclosed, restricting the use of experts to those who are not used by competitors of the party claiming the trade secret, and requiring an expert to sign a non-disclosure agreement. See cases cited in my dissent in Reynolds Metals Corp. The presumption suggested by member Barnako and used by Judge Wienman, however, eliminates [*17] the use of such protective orders.
Requiring the Secretary to prove the need for using outside experts conflicts with Federal Rules 26 and 34. As noted above, the Secretary need only prove that the information sought is necessary and relevant to the subject matter of the proceeding. The "good cause" requirement that had been included in Rule 34 was eliminated in 1970. Rule 26(c) requires that a party from whom discovery is sought show good cause for the issuance of protective order.
Contrary to an argument raised by respondent, I find no authority in the Act to the effect that the Commission has a duty distinguishable from that created by other statutes and the Federal Rules of Civil Procedure to issue protective orders under rules different from those required by the Federal Rules. Section 15 n4 of the Occupational Safety & Health Act ["the Act"], which is reflected in Commission Rule of Procedure 11(a), 29 C.F.R. § 2200.11(a), n5 directs us to issue protective orders where appropriate to protect the confidentiality of trade secrets as that term is used by 18 U.S.C. § 1905. n6 Section 15 was plainly modeled after pre-existing trade secret provisions in other federal statutes. [*18] See 42 U.S.C.A. § 185 f-6(b) (motor vehicle emission standards); 15 U.S.C.A. § 1193 (flammable fabrics standards); 42 U.S.C.A. § 185 7c-9(c) (air pollution); 21 U.S.C.A. § 331(j) (Food, Drug and Cosmetics Act). In Ditlow v. Volpe, 362 F.Supp. 1321 (D.C. Cir. 1973), the court considered the trade secrets provision in the National Highway Traffic Safety Act, 15 U.S.C.A. § 1401(e), n7 which is identical in pertinent part to section 15 of the Act, in evaluating a request under the Freedom of Information Act, 5 U.S.C. § 552. Plaintiffs sought, among other things, disclosure of certain correspondence between the National Highway Traffic Safety Administration ("NHTSA") and automobile manufacturers regarding pending safety defect investigations. Defendant NHTSA resisted in part on the ground that the information was exempt from disclosure by 5 U.S.C. § 552(b)(3), which protects matters "specifically exempted from disclosure by statute." NHTSA argued that § 1401(e) constituted an exemption. The court rejected the defendant's analysis, holding that § 1401(e) was not intended to create any greater protection for trade secrets than that already provided by 18 U.S.C. § 1905. Nor [*19] does § 1905 create any exemptions from discovery under the Federal Rules of Civil Procedure. Exchange National Bank of Chicago v. Abramson, 295 F. Supp. 87, 92 (D. Minn. 1969); Pleasant Hill Bank v. United States, 58 F.R.D. 97, 98 at n.1 (W.D. Mo. 1973).
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n4 Section 15 provides:
CONFIDENTIALLY OF TRADE SECRETS
All information reported to or otherwise obtained by the Secretary or his representative in connection with any inspection or proceeding under this Act which contains or which might reveal a trade secret referred to in section 1905 of Title 18 of the United States Code shall be considered confidential for the purpose of that section, except that such information may be disclosed to other officers of employees concerned with carrying out this Act or when relevant in any proceeding under this Act. In any such proceeding the Secretary, the Commission, or the court shall issue such orders as may be appropriate to protect the confidentiality of trade secrets.
n5 Rule 11(a) provides:
PROTECTION OF TRADE SECRETS AND OTHER CONFIDENTIAL INFORMATION
Upon application by any person, in a proceeding where trade secrets or other matters may be divulged, the confidentiality of which is protected by 18 U.S.C. § 1905, the Judge shall issue such orders as may be appropriate to protect the confidentiality of such matters.
n6 This section provides:
DISCLOSURE OF CONFIDENTIAL INFORMATION GENERALLY
Whoever, being an officer or employee of the United States or of any department or agency thereof, publishes, divulges, discloses, or makes known in any manner or to any extent not authorized by law any information coming to him in the course of his employment or official duties or by reason of any examination or investigation made by, or return, report or record made to or filed with, such department or agency of officer or employee thereof, which information concerns or relates to the trade secrets, processes, operations, style of work, or apparatus, or to the identity, confidential statis-losses, or expenditures of any person, firm, partnership, corporation, or association; or permits any income return or copy thereof or any book containing any abstract or particulars thereof to be seen examined by any person except as provided by law; shall be fined not more than $1,000, or imprisoned not more than one year, or both; and shall be removed from office or employment.
n7 This section provides:
All information reported to or otherwise obtained by the Secretary or his representative pursuant to subsection (b) or (c) of this section which information contains or relates to a trade secret or other matter referred to in section 1905 of Title 18, shall be considered confidential for the purpose of that section, except that such information may be disclosed to other officers or employees concerned with carrying out this subchapter. Nothing in this section shall authorize the withholding of information by the Secretary or any officer or employee under his control, from the duly authorized committees of the Congress.
[*20]
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
By way of contrast, Congress has seen fit to create an absolute trade secrets privilege in other statutory schemes. See, e.g., 42 U.S.C. § 1857d(j)(1) (auto emissions reports). An absolute privilege was in fact proposed for the Act, but it was rejected. See Legislative History of the Occupational Safety and Health Act, S.2193, P.L. 91-596, Committee Print, Senate Committee on Labor and Public Welfare, 92nd Cong., 1st Sess., June, 1971, at 14, 53, 112, 197, 265, 564-5, 612, 642, 667, 701-2, 744, 887, 957, 1036, 1170, 1193.
By requiring the Secretary to prove "good cause" in order to be permitted to use an outside expert, Reynolds requires the assumption of a duty eliminated from the Federal Rules of Civil Procedure by amendment shortly before the promulgation of the Act. By fashioning a protective order without making specific factual findings, there is an omission of considerations required by the federal discovery rules. This matter should be remanded to the Judge for further consideration.
II. THE JUDGE SHOULD HAVE GRANTED THE SECRETARY'S MOTION TO SERVE INTERROGATORIES [*21]
In my view, the Secretary persuasively argues that Judge Wienman erred by failing to grant the motion to propound interrogatories in preparation of the hearing on respondent's trade secret claim. Also, I consider unconvincing my colleague's conclusion that the Commission need not address the issue because the Secretary failed to request a specific form of relief. When a party argues on review that a Judge abused his discretion, as in this case, the Commission should address the issue and grant relief if appropriate.
The Secretary argues that in light of the restrictions on discovery imposed by the Commission in Reynolds Metals Corp., supra, it is imperative that any protective order be limited to the narrowest possible scope. The Secretary further argues that to achieve this end the Commission should require strict proof of the existence of asserted trade secrets and of the need to prevent the disclosure of the secrets to private consultants. As noted above, additional factual inquiries should be made before deciding upon the need and scope of a protective order. A hearing on these matters serves no useful purpose if the Secretary is unable to prepare for it, as occurred [*22] in this case. Here, the Secretary should not have been denied the right to prepare adequately for the hearing on respondent's trade secret claim by being precluded from propounding interrogatories. The Judge denied the Secretary's motion to serve interrogatories relevant to the issues raised by the trade secret claim on the ground that the hearing was on a "mere ancillary procedural matter." Commission Rule of Procedure Rule 53(a), 29 CFR § 2200.53(a), provides:
Except by special order of the Commission or the Judge, discovery depositions of parties, intervenors, or witnesses, and interrogatories directed to parties, intervenors, or witnesses shall not be allowed.
The Commission Rule differs from Federal Rule 33, which permits service of interrogatories without leave of court. Our Rule necessarily gives considerable discretion to a Judge. The Commission has not addressed the question of the scope of a Judge's discretion in applying Rule 53(a), but I conclude that it is evident that the Judge abused his discretion by denying the motion to propound interrogatories on the ground that the motion and respondent's trade secret claim are ancillary matters unrelated to the substance [*23] of the citation.
That the subject matter of the hearing was ancillary does not alter the fact that both parties considered resolution of the issues vital to their interests. Respondent has gone to great expense in supporting the assertion that inspection by an outside expert would cause respondent financial harm. The Secretary has filed a document stating that it cannot proceed unless an outside acoustics expert is permitted to inspect respondent's plant. If the Judge considered the factual matters sufficiently complex to require a hearing before resolving the issues involved, he should have assured that the parties would be able to develop fully the facts. Discovery rules are intended in part to make available information that would be otherwise unavailable. Virtually all of the facts relevant to respondent's claim of trade secrets were peculiarly within the respondent's knowledge.
The practice under the Federal Rules of Civil Procedure is instructive. The Supreme Court stated in Hickman v. Taylor, 329 U.S. 495 (1947):
Where relevant and non-privileged facts remain hidden in an attorney's file and where production of these facts is essential to the preparation of one's [*24] case, discovery may properly be had. Such written statements and documents . . . might be useful for purposes of impeachment or corroboration (emphasis added). 392 U.S. at 511
In the class action of Stavrides v. Mellon National Bank & Trust Co., 60 F.R.D. 634 (1973), the Court, over Stavrides' claim of irrelevancy, permitted discovery on the matter of how the class was formed. The Court reasoned that if the class was formed by Stavrides' attorney in an unethical manner, the attorney's ability to represent the entire class fairly might be impaired, requiring dissolution of the class and dismissal of the action. Such "ancillary procedural matters" as venue and jurisdiction may be proper subjects for discovery and should be decided on all actual available facts where the matter is factually complex. See, e.g., Haleiwa Theatre Co. v. Forman, 37 F.R.D. 62, 66 (1965). The importance and complexity of the trade secrets issue warrants remanding to the Administrative Law Judge with the direction that the Secretary be permitted to propound interrogatories relevant to the trade secret claim.
III. THE JUDGE INADEQUATELY SUPPORTED HIS DECISION
In ruling on the discovery [*25] inspection sought by the Secretary and on respondent's trade secret claim, the Judge stated as follows:
Now, the undersigned Judge being advised in the premises and having considered the entire record including the sworn testimony, exhibits, affidavits, and briefs submitted by the parties does find:
(1) A discovery inspection of Respondent's workplace at Route 45 South, Effingham, Illinois, is likely to reveal the existence of trade secrets to persons conducting said inspection, and
(2) The record fails to establish the existence of good cause for Complainant [the Secretary] to employ outside experts (non-federal employees) in a discovery inspection of the workplace.
Contrary to section 557(c)(A) of the Administrative Procedure Act, 5 U.S.C. § 551 et seq., n8 this decision vacating the citation fails to include a statement of findings and conclusions, and the bases therefor, on all material issues presented on the record. For example, the Judge does not explain what is meant by "good cause." In addition, it is unclear whether the Judge concluded that the federal government employs a federal acoustics expert in one of its hundreds of agencies, or whether the Judge decided [*26] that the inspection could be conducted by persons who have no expertise in noise control of printing operations, or whether he decided that the Secretary had not made a sufficiently intensive search for an expert among federal employees. Similarly, the Judge did not consider, as the law of discovery requires, whether any trade secrets that might be revealed to an inspector might then be revealed to respondent's competitors. Finally, while there is no reason to doubt that Judge Wienman considered all the relevant evidence and documents before rendering his decision, the decision must show on its face what evidence has been considered, how it has been evaluated, and why the decision was made as it was. See Anglo-Canadian Shipping Co. v. Federal Maritime Commission, 310 F.2d 606, 617 (9th Cir. 1962).
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -
n8 Section 10(c) of the Act and Commission Rule 72, 29 CFR § 2200.72, require the application of this section of the Administrative Procedure Act to our proceedings.
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -
The Commission has not, and cannot in the posture [*27] of this case, cure these flaws on review. For each of the reasons stated above, this case should be remanded for further proceedings.